`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA372327
`ESTTA Tracking number:
`10/08/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91174345
`Defendant
`Toytrackerz LLC
`
`TOYTRACKERZ LLC
`302 SOUTH LOWMAN STREET
`FORT SCOTT, KS 66701
`UNITED STATES
`toylaw@classicnet.net
`Other Motions/Papers
`Terri Lynn Coop
`circlexranch@sbcglobal.net
`/Terri Lynn Coop/
`10/08/2010
`ShowCauseResponse100810.pdf ( 2 pages )(16551 bytes )
`HerronTTABLetter100410.pdf ( 1 page )(120492 bytes )
`TTZJudgment.pdf ( 1 page )(36159 bytes )
`NCCJudgment.pdf ( 1 page )(44789 bytes )
`KSReconsiderDeny.pdf ( 27 pages )(81699 bytes )
`KSSumJudgment.pdf ( 14 pages )(46414 bytes )
`KSTrademarkDismiss.pdf ( 32 pages )(97895 bytes )
`KSAPEDismiss.pdf ( 1 page )(11295 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`AMERICAN PLASTIC EQUIPMENT, INC.
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`
`A Florida Corporation
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`v.
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`TOYTRACKERZ LLC
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`A Kansas Limited Liability Company
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`Opp. No. 91174345
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`Consolidated With:
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`Opp. No. 91174438
`Can. No. 92046541
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`RESPONSE TO ORDER OF INTERLOCUTORY ATTORNEY
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`COMES NOW, Toytrackerz LLC, the Opposition Respondent and the
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`
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`Cancellation Petitioner, with its response to the inquiry of the Interlocutory Attorney as to
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`the status of the civil case between the parties.
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`
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`
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`District of Kansas case 2:07-cv-2253-DJW, styled:
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`American Plastic Equipment, Inc. vs. Toytrackerz LLC
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`Has been fully resolved with judgment in favor of Toytrackerz LLC on all trademarks
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`and copyright counts. The case was terminated on April 1, 2010 and the appeal period
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`has passed.
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`
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`David E. Herron II, filed a letter with the TTAB on October 4, 2010 saying this
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`case was still pending (Ex. 1). This is misleading and not the truth. Attached are the
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`following documents:
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`Ex. 2 Judgment in a Civil Action in favor of Toytrackerz LLC, filed 04/01/2010
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`Ex. 3 Judgment in a Civil Action in favor of Noah C. Coop, filed 03/31/2010
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`Ex. 4 Memorandum and Order denying American’s motion for reconsideration, filed
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`03/31/2010
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`Ex. 5 Memorandum and Order granting Toytrackerz’ motion for summary judgment
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`against American on Count I: Copyright, filed 03/31/2010
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`Ex. 6 Memorandum and Order granting Toytrackerz’ motion to dismiss Counts II – IX:
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`Trademarks, filed 03/31/2008.
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`
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`In a companion case before the District of Kansas, 2:08-cv-02297-GLR, the court
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`found no jurisdiction over American Plastic Equipment and granted Mr. Herron’s motion
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`to dismiss as to American on May 6, 2009. (Ex. 7: Docket Text Only).
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`
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`Consequently, all civil litigation between Toytrackerz LLC and American Plastic
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`Equipment, Inc. is resolved and there is no reason for the matters pending before the
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`Board not proceed.
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`Submitted the 8th day of October 2010
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`Sincerely,
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`/Terri L. Coop/
`
`Owner – Toytrackerz LLC
`10 N. National Avenue
`Fort Scott KS 66701
`(620) 215-3512
`circlexranch@sbcglobal.net
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`Case 2:07-cv-02253-DJW Document 85 Filed 04/01/09 Page 1 of 1
`
`AO 450 (Rev. 01/09) Judgment in a Civil Action
`
`UNITED STATES DISTRICT COURT
`for the
`District of Kansas
`__________ District of __________
`
`Civil Action No.
`
`07-2253-DJW
`
`) ) ) ) )
`
`AMERICAN PLASTIC EQUIPMENT, INC.
`
`Plaintiff
`v.
`TOYTRACKERZ, LLC et al.
`Defendant
`
`JUDGMENT IN A CIVIL ACTION
`
`The court has ordered that (check one):
`
`u the plaintiff (name)
`defendant (name)
`
`interest at the rate of
`
`dollars ($
`%, plus postjudgment interest at the rate of
`
`recover from the
`the amount of
`), which includes prejudgment
`%, along with costs.
`
`u the plaintiff recover nothing, the action be dismissed on the merits, and the defendant (name)
`recover costs from the plaintiff (name)
`.
`
`✔
`u other:
`
`Defendant Toytrackerz, LLC’s Motion for Summary Judgment (doc. 50) is granted.
`
`This action was (check one):
`
`u tried by a jury with Judge
`rendered a verdict.
`
`u tried by Judge
`was reached.
`✔
`u decided by Judge
`
`.
`
`presiding, and the jury has
`
`without a jury and the above decision
`
`David J. Waxse
`
`on a motion for
`
`Summary Judgment.
`
`Date:
`
`04/01/09
`
`TIMOTHY M. O'BRIEN
`CLERK OF COURT
`
`s/ Marla Gonzales
`Signature of Clerk or Deputy Clerk
`
`
`
`Case 2:07-cv-02253-DJW Document 99 Filed 03/31/10 Page 1 of 1
`
`AD 450
`
`UNITED STATES DISTRICT COURT
`for
`District of Kansas
`
`)
`)
`)
`)
`)
`
`Civil Action No. 07-2253-DJW
`
`JUDGMENT IN
`
`CIVIL ACTION
`
`American
`
`Plaintiff
`v.
`
`Noah
`Defendant
`
`The
`
`ordered that (check
`
`o the plaintiff (name)
`defendant (name)
`
`interest
`o the plaintiff recover nothing,
`
`- - - -
`
`- - - - - - - - - - - -
`
`%, plus
`
`judgment interest at
`
`recover
`
`dismissed on
`plaintiff (name)
`
`- - - -
`
`defendant (name)
`
`dollars ($
`
`"
`
`Defendant Noah
`of
`
`judgment on Plaintiffs copyright
`
`This
`
`(check
`
`o tried
`rendered
`o tried
`was
`
`"
`
`S.
`[84] Summary
`Order
`
`Date:
`
`03/31/2010
`
`presiding, and
`
`jury has
`
`without a
`
`on
`
`motion for
`
`[88]
`
`O'BRIEN
`TIMOTHY
`CLERK OF COURT
`
`
`
`Case 2:07-cv-02253-DJW Document 97 Filed 03/31/10 Page 1 of 27
`
`DJW/1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF KANSAS
`
`AMERICAN PLASTIC EQUIPMENT, INC.,
`
`Plaintiff,
`
`v.
`
`TOYTRACKERZ, LLC, et al.,
`
`Civil Action
`
` No. 07-2253-DJW
`
`
`
`
`
`
`Defendants.
`
`MEMORANDUM AND ORDER
`
`Pending before the Court is Plaintiff American Plastic, Inc.’s “Request for Reconsideration
`
`of Memorandum and Order of March 31, 2009 Pursuant to Local Rule § 7.3 and F.R.C.P. § 60”
`
`(doc. 94). The Memorandum and Order at issue granted Defendant Toytrackerz, LLC’s Motion for
`
`Summary Judgment on Plaintiff’s remaining claims for copyright infringement. Plaintiff moves for
`
`reconsideration “in light of . . . new evidence and relevant case law.”1 For the reasons set forth
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`below, Plaintiff’s motion is denied.
`
`I.
`
`Procedural Background
`
`This action was originally filed in the Western District of Missouri on March 9, 2007. The
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`case was transferred to this District on June 13, 2007. On March 31, 2008, the Court dismissed all
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`counts of Plaintiff’s Complaint, except for Count I, which alleged copyright infringement.2 In Count
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`I, Plaintiff alleged, inter alia, that it “is the valid owner of the copyrights in and to the Marx Action
`
`1Pl.’s Req. for Recons. of Mem. & Order of March 31, 2009 Pursuant to Local Rule § 7.3
`& F.R.C.P. § 60 (“Pl.’s Mot. for Recons.”) (doc. 94) at 3.
`
`2See March 31, 2008 Mem. & Order (doc. 44) at 32; see also March 31, 2008 Mem. & Order
`(doc. 45) at 8.
`
`
`
`Case 2:07-cv-02253-DJW Document 97 Filed 03/31/10 Page 2 of 27
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`Figures and Other Marx Toys.”3 Plaintiff further alleged that it “owns all the intellectual property
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`rights of Louis Marx & Co. as purchased from the Chemical Bank of New York in June of 1988, as
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`successor in interest to Louis Marx & Co.”4
`
`The Court denied without prejudice Defendants’ Motion to Dismiss Count I and allowed
`
`Plaintiff leave to amend Count I to cure certain procedural pleading deficiencies.5 Plaintiff filed its
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`First Amended Complaint on April 9, 2008, amending its claims for copyright infringement and
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`reasserting that it was the owner of the copyrights at issue.6 Subsequently, Defendant Toytrackerz,
`
`LLC (“Toytrackerz”) moved for summary judgment on Count I, arguing that it was entitled to
`
`judgment because Plaintiff could not establish ownership of the copyrights, which was an essential
`
`element of Plaintiff’s copyright infringement claims.7 Plaintiff responded to Toytrackerz’ motion,8
`
`relying on the declaration of Jay Horowitz, its President, sole shareholder, and director, signed June
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`3Compl. (doc. 1) ¶ 25.
`
`4Id.
`
`5See March 31, 2008 Mem. & Order (doc. 45) at 8. The Court held in its Order that because
`Plaintiff had failed to allege that the works at issue were registered in compliance with the copyright
`laws, Plaintiff’s copyright infringement claims failed to state a claim upon which relief could be
`granted. The Court granted Plaintiff leave to amend its copyright infringement claims by alleging
`that the works had been registered. Id. at 5.
`
`6First Am. Compl. (doc. 49) ¶ 35.
`
`7Toytrackerz’ Mem. in Supp. of Mot. for Summ. J. (doc. 51) at 4-55.
`
`8See Pl.’s Resp. to Toytrackerz’ Mot. for Summ. J. (doc. 55); Pl.’s Mem. in Opp’n to
`Toytrackerz’ Mot. for Summ. J. (doc. 56).
`
`2
`
`
`
`Case 2:07-cv-02253-DJW Document 97 Filed 03/31/10 Page 3 of 27
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`11, 2008.9 On March 31, 2009, the Court granted Toytrackerz’ Motion for Summary Judgment.10
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` Judgment in favor of Toytrackerz was entered the following day, on April 1, 2009.11
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`In its March 31, 2009 Memorandum and Order, the Court explained that to recover for
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`copyright infringement, a plaintiff must prove ownership of the copyright.12 To establish ownership,
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`the plaintiff must show a chain of title proving transfer of ownership from the original author of the
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`copyrighted work.13 As the Court recognized, 17 U.S.C. § 204(a) requires a transfer of copyright
`
`ownership to be set forth in a writing signed by the copyright owner.14 It provides: “A transfer of
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`copyright ownership, other than by operation of law, is not valid unless an instrument of
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`conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the
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`rights conveyed or such owner’s duly authorized agent.”15 There is no requirement that the writing
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`contain any particular language; however, “[i]t must clearly show an agreement to transfer the rights
`
`in the copyright.”16
`
`9See Horowitz Decl., attached as Ex. 1 to Pl.’s Resp. to Toytrackerz’ Mot. for Summ. J. (doc.
`55) (“First Horowitz Decl.”).
`
`10See March 31, 2009 Mem. & Order (doc. 84).
`
`11See April 1, 2010 Judgment (doc. 85).
`
`12March 31, 2009 Mem. & Order (doc. 84) at 10-11.
`
`13Id. at 10. The Court noted: “If a plaintiff who is not the author of the copyrighted work
`sues for infringement, he or she must establish a proprietary right through the chain of title in order
`to support a valid claim to the copyright.” Id. (citations omitted).
`
`14Id. at 10 (citing 17 U.S.C. § 204(a)).
`
`1517 U.S.C. § 204(a).
`
`16March 31, 2009 Mem. & Order (doc. 84) at 11.
`
`3
`
`
`
`Case 2:07-cv-02253-DJW Document 97 Filed 03/31/10 Page 4 of 27
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`The Court identified two breaks in the chain of title, either one of which proved fatal to
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`Plaintiff’s copyright infringement claims. The most recent break was in the alleged transfer of rights
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`from the dissolved Marx Toys, Inc. to Plaintiff in 2003.17 The Court found that there was no written
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`document in the record memorializing the alleged assignment of the copyrights from Marx Toys,
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`Inc. to Plaintiff.18 Thus, the Court held that Plaintiff did not meet its burden to show that Marx Toys,
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`Inc. had transferred the rights to Plaintiff in 2003.19
`
`The Court also found an earlier break in the chain of title with respect to Chemical Bank’s
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`ownership of the copyrights.20 The record contained a 1988 Bill of Sale signed by Chemical Bank
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`transferring to Plaintiff “whatever rights, if any, it had in the copyrights formerly owned by Louis
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`Marx & Co.”21 The record, however, contained no signed writing by Louis Marx & Co. transferring
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`the copyrights to Chemical Bank, and, thus, there was no evidence that Chemical Bank owned the
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`particular copyrights at issue when it transferred to Plaintiff “whatever rights, if any” it possessed.
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`The Court therefore held that Plaintiff did not meet its burden to establish that Chemical Bank
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`owned the copyrights that Plaintiff claimed it received from Chemical Bank in 1988.22
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`After finding two breaks in the chain of title, the Court concluded:
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`Without that unbroken chain of title, Plaintiff cannot establish its ultimate ownership
`of the copyrights. Ownership is an essential element of Plaintiff’s copyright
`
`17Id. at 12.
`
`18Id.
`
`19Id.
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`20Id. at 13.
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`21Id. at 6-7.
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`22Id. at 13.
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`4
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`
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`Case 2:07-cv-02253-DJW Document 97 Filed 03/31/10 Page 5 of 27
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`infringement claims, and Plaintiff’s failure to establish the chain of title is fatal to its
`ability to recover for copyright infringement. The Court will therefore enter
`summary judgment in favor of Toytrackerz.23
`
`II.
`
`The Relief Requested by Plaintiff
`
`As a threshold matter, the Court must determine what rule governs Plaintiff’s motion.
`
`Plaintiff styles its motion as a “Request for Reconsideration . . . Pursuant to Local Rule § 7.3 and
`
`F.R.C.P. § 60.”24 In the body of its motion (which Plaintiff has combined with its supporting brief),
`
`Plaintiff asks the Court to “reconsider” its Memorandum and Order and, upon reconsideration, deny
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`Defendant’s Motion for Summary Judgment.25
`
`D. Kan. Rule 7.3 governs motions to reconsider. Rule 7.3 makes it clear, however, that it
`
`does not apply to reconsideration of dispositive orders or judgments. The Rule states: “Motions
`
`seeking reconsideration of dispositive orders or judgments must be filed pursuant to Fed. R. Civ. P.
`
`59(e) or 60. Reconsideration of such an order or judgment will not be granted under this rule.”26
`
`
`
`The Federal Rules of Civil Procedure do not recognize motions to reconsider.27 As a result,
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`this Court typically construes any self-styled motion to reconsider a dispositive order or judgment
`
`as either a Rule 59(e) motion to alter or amend the judgment or a Rule 60(b) motion for relief from
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`judgment or order.28 Under the Federal Rules of Civil Procedure in effect at the time Plaintiff filed
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`23Id.
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`24Pl.’s Mot. for Recons. (doc. 94) at i.
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`25Id. at 1, 10.
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`26D. Kan. Rule 7.3(a).
`
`27Hatfield v. Bd. of County Comm’rs for Converse County, 52 F.3d 858, 861 (10th Cir. 1995).
`
`28Johnson v. Gilchrist, No. 09-3063-SAC, 2010 WL 750256, at *1 (D. Kan. Mar. 2, 2010)
`(continued...)
`
`5
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`
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`Case 2:07-cv-02253-DJW Document 97 Filed 03/31/10 Page 6 of 27
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`its motion, a Rule 59(e) motion to alter or amend judgment could only be filed within ten days of
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`the judgment.29 A Rule 60(b) motion, on the other hand, “must be made within a reasonable time,”
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`and if the motion is brought under subsections (b)(1), (2) or (3), no more than a year after the entry
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`of the judgment or order.30 Under the Federal Rules of Civil Procedure in effect at the time Plaintiff
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`filed its motion,31 if a motion to reconsider a dispositive order or judgment is filed within ten days
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`of the entry of judgment, this Court will treat it as a Rule 59(e) motion to alter or amend the
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`judgment.32 If the motion to reconsider is filed more than ten days after entry of the dispositive
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`order or judgment, it is treated as a Rule 60(b) motion for relief from judgment or order.33
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` Here, Plaintiff seeks “reconsideration” of the Court’s Order granting Toytrackerz’ Motion
`
`for Summary Judgment. Because that order was a dispositive one, D. Kan. Rule 7.3 is inapplicable,
`
`and either Federal Rule 59(e) or 60(b) governs. Which of those two rules applies depends on when
`
`Plaintiff filed its motion. Plaintiff filed its motion on May 22, 2009, approximately two months after
`
`28(...continued)
`(citing Hawkins v. Evans, 64 F.3d 543, 546 (10th Cir. 1995)).
`
`29See Fed. R. Civ. P. 59(e) (“A motion to alter or amend a judgment must be filed no later
`than 10 days after the entry of the judgment.”). Effective December 1, 2009, Rule 59(e) was
`amended so that motions to alter or amend a judgment may be filed within 28 days after the entry
`of judgment. This change does not apply to Plaintiff’s Motion, which was filed six months prior to
`the amendment’s effective date.
`
`30Fed. R. Civ. P. 60(c).
`
`31On December 1, 2009, several amendments to the Federal Rules of Civil Procedure went
`into effect. Because Plaintiff’s motion was filed six months before the effective date of these
`amendments, the Court will apply the rules as they were written prior to the December 1, 2009
`amendments.
`
`32Johnson, 2010 WL 750256, at *1 (citing Hawkins, 64 F.3d at 546). Under the 2009
`amendment, the Court would treat it as Rule 59(e) motion to alter or amend if the motion was
`brought within 28 days of the entry of judgment.
`
`33Id. (citing Hawkins, 64 F.3d at 546).
`
`6
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`
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`Case 2:07-cv-02253-DJW Document 97 Filed 03/31/10 Page 7 of 27
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`the Court entered its March 31, 2009 Memorandum and Order. Thus, Rule 60(b) provides the only
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`relief available to Plaintiff. Accordingly, the Court will construe Plaintiff’s motion as a Rule 60(b)
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`motion for relief from judgment or order.
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`III.
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`Legal Standard for a Rule 60(b) Motion for Relief from Judgment or Order
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`Rule 60(b) provides that “on motion and just terms” the court may relieve a party from a
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`final judgment or order for the following reasons:
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`(1) mistake, inadvertence, surprise, or excusable neglect;
`(2) newly discovered evidence that, with reasonable diligence, could not have been
`discovered in time to move for a new trial under Rule 59(b);
`(3) fraud (whether previously called intrinsic or extrinsic), misrepresentation, or
`misconduct by an opposing party;
`(4) the judgment is void;
`(5) the judgment has been satisfied, released or discharged; it is based on an earlier
`judgment that has been reversed or vacated; or applying it prospectively is no longer
`equitable; or
`(6) any other reason that justifies relief.34
`
`The Tenth Circuit has held that Rule 60(b) relief is “is extraordinary and may only be granted
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`in exceptional circumstances.”35 A litigant shows “exceptional circumstances” by satisfying one or
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`more of the grounds listed in Rule 60(b).36 A party who seeks relief under Rule 60(b) has a high
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`hurdle to overcome because such a motion is not a substitute for an appeal.37 Whether to grant Rule
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`60(b) relief lies within the “substantial discretion” of the district court.38
`
`34Fed. R. Civ. P. 60(b).
`
`35Zurich v. N. Am. v. Matrix Serv., Inc., 426 F.3d 1281, 1289 (10th Cir. 2005) (quoting
`Servants of Paraclete v. Does, 204 F.3d 1005, 1009 (10th Cir. 2000)).
`
`36Van Skiver v. U.S., 952 F.2d 1241, 1243-44 (10th Cir. 1991).
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`37Davis v. Kan. Dep’t of Corr., 507 F.3d 1246, 1247 (10th Cir. 2007).
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`38Pelican Prod. Corp. v. Marino, 893 F.2d 1143, 1146 (10th Cir. 1990).
`
`7
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`Case 2:07-cv-02253-DJW Document 97 Filed 03/31/10 Page 8 of 27
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`The purpose of Rule 60(b) is not to allow the court to revisit issues it has already addressed
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`in the underlying order.39 Nor is it intended as a vehicle for the losing party to “advance new
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`arguments or supporting facts which were otherwise available for presentation” in the underlying
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`proceedings.40 Moreover, Rule 60(b) does not offer a party the opportunity to re-litigate its case
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`after the court has rendered a decision.41 In other words, a motion for relief from judgment “is not
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`a second opportunity for the losing party to make its strongest case, to rehash arguments, or to dress
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`up arguments that previously failed.”42
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`IV.
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`Analysis
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`Plaintiff’s motion focuses on the Court’s ruling that the chain of title was broken due to
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`Plaintiff’s failure to present evidence of: (1) a signed written document establishing that Chemical
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`Bank owned the copyrights when Chemical Bank purportedly transferred those rights to Plaintiff
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`in 1988; and (2) a signed written document memorializing the alleged 2003 assignment of the
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`copyrights by the dissolved Marx Toys, Inc. to Plaintiff. Plaintiff asserts that “[t]he documents and
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`declarations being presented in connection with this request for reconsideration complete the
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`disputed chains of title in accordance with § 204 of the Copyright Act and relevant case law.”43
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`39Palmer v. McKune, No. 07-3007-SAC, 2008 WL 2051096, at *3 (D. Kan. May 13, 2008)
`(quoting Van Skiver, 952 F.2d at 1243).
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`40Id. (citing Van Skiver, 952 F.2d at 1243).
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`41Id. (citing Servants, 204 F.3d at 1012).
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`42Id. (citing Voelkel v. Gen. Motors Corp., 846 F.Supp. 1482, 1483 (D. Kan.), aff’d, 43 F.3d
`1484 (10th Cir. 1994)).
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`43Pl.’s Mot. for Recons. (doc. 94) at 2.
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`8
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`Case 2:07-cv-02253-DJW Document 97 Filed 03/31/10 Page 9 of 27
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`A.
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`The Transfer of Copyrights from Louis Marx & Co. to Chemical Bank in 1982
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`1.
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`Additional background information
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`The copyrights at issue in this case were originally owned by Louis Marx & Company.
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`Plaintiff claims that it obtained its rights to the copyrights from Chemical Bank through one or more
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`bills of sale (“Bills of Sale”).44 The Bills of Sale stated, inter alia, that “CHEMICAL BANK
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`(“Seller”) does hereby sell and transfer to AMERICAN PLASTIC EQUIPMENT, INC. (“Buyer”),
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`Seller’s interest, if any, in all of the . . . copyrights and related goodwill formerly owned by Louis
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`Marx & Co. . . .”45 Plaintiff alleged in its First Amended Complaint that Louis Marx & Co. filed for
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`bankruptcy in 1980 in the Southern District of New York and “[i]n these bankruptcy proceedings,
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`Chemical Bank . . . acquired the assets of [Louis Marx & Co.] because of its status as a preferred
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`creditor.”46
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`Toytrackerz argued in its Motion for Summary Judgment that there was no legal instrument
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`assigning the copyrights to Chemical Bank in the bankruptcy action nor any written transfer of the
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`copyrights from Louis Marx & Co. to Chemical Bank outside of the bankruptcy proceedings.47
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`Given the “if any” language in the Bill of Sale, it remained unclear whether Chemical Bank actually
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`possessed any interest in the copyrights at issue in this case. Thus, Toytrackerz maintained that
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`Plaintiff could not show an unbroken chain of title through Chemical Bank, and Toytrackerz was
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`therefore entitled to summary judgment.
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`44First Am. Compl. (doc. 49) ¶ 12; Pl.’s Resp. to Toytrackerz’ Mot. for Summ. J. (doc. 55)
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`at 3.
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`45April 12, 1988 Bill of Sale and June 2, 1988 Bill of Sale, attached as Exs. A & C to Mem.
`in Supp. of Toytrackerz’ Mot. for Summ. J. (doc. 51) (emphasis added).
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`46First Am. Compl. (doc. 49) ¶ 10.
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`47Toytrackerz’ Mem. in Supp. of Mot. for Summ. J. (doc. 51) at 9.
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`9
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`Case 2:07-cv-02253-DJW Document 97 Filed 03/31/10 Page 10 of 27
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`In responding to the Motion for Summary Judgment, Plaintiff never provided any evidence
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`to show that Chemical Bank actually owned any of the copyrights at issue such that it could transfer
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`those copyrights to Plaintiff through the Bill of Sale. Indeed, although Plaintiff had alleged in both
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`its Complaint and First Amended Complaint that Chemical Bank acquired the copyrights from Louis
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`Marx & Co. through the 1980’s bankruptcy proceedings and its preferred creditor status, Plaintiff
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`never asserted that in response to the Motion for Summary Judgment. Rather, Plaintiff seemingly
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`contradicted its earlier allegation and stated in response to Toytrackerz’ Statement of
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`Uncontroverted Fact No. 7: “[T]he record in the bankruptcy court is void of any mention of the
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`ownership of copyrights that are at issue in this case.”48 Thus, because Plaintiff failed to present any
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`competent evidence that Louis Marx & Co ever transferred the copyrights to Chemical Bank––either
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`through the bankruptcy proceedings or through a signed writing––the Court ruled that Plaintiff had
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`failed to establish an unbroken chain of title through Chemical Bank. Plaintiff’s failure to do so
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`rendered it unable to prove an essential element of its copyright claims, and, thus, the Court entered
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`summary judgment in favor of Toytrackerz.
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`2.
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`Plaintiff’s grounds for relief under Rule 60(b)
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`As noted above, Plaintiff requests reconsideration “in light of . . . new evidence and relevant
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`case law.”49 Plaintiff’s “new evidence” consists of certain bankruptcy records from the 1980
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`bankruptcy filing of Louis Marx & Co and the declarations of Jay Horowitz, Barry Piels, and
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`Howard Strauss, along with various documents that are attached to those declaration.
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`48Pl.’s Resp. to Toytrackerz’ Mot. for Summ. J. (doc. 55) at 3.
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`49Pl.’s Mot. for Recons. (doc. 94) at 1.
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`10
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`Case 2:07-cv-02253-DJW Document 97 Filed 03/31/10 Page 11 of 27
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`Plaintiff states that “given the Court’s March 31, 2009 Order, Plaintiff retained new
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`intellectual property counsel who recently located the S.D.N.Y. bankruptcy files for In re Louis
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`Marx Co., Inc., Case No. 80 B 10150 (S.D.N.Y. 1980).”50 Plaintiff explains that in those files its
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`new counsel found an “Order Approving Agreement with Chemical Bank” (“Bankruptcy Court
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`Order”).51 Plaintiff has submitted a certified copy of the Bankruptcy Court Order, which is file-
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`stamped April 15, 1982, and states that the Bankruptcy Court is approving a March 1982 letter
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`agreement between the debtor Louis Marx & Co. and Chemical Bank. Attached to the Bankruptcy
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`Court Order is Louis Marx & Co.’s Application for Order Approving Agreement with Chemical
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`Bank, in which Louis Marx & Co. states that under the reorganization plan, it “is to transfer all of
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`its rights, title and interest in and to all of its assets, both personal and real, to Chemical Bank . . .
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`in satisfaction of Chemical’s secured claim against Marx.”52 The letter agreement is attached to the
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`Application, and sets forth Louis Marx & Co.’s agreement to transfer to Chemical Bank “all of its
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`rights, title and interest in all of its tangible assets . . . and all of its intangible assets.”53
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`Plaintiff argues that these bankruptcy documents establish that Chemical Bank owned the
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`copyrights that it transferred to Plaintiff. More specifically, Plaintiff contends that the Bankruptcy
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`Court Order shows that the copyrights were transferred to Chemical Bank “by operation of law.”
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`Therefore, Plaintiff did not have to satisfy the written instrument requirement of 17 U.S.C. § 204(a).
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`As noted above, § 204(a) provides that “[a] transfer of copyright ownership, other than by operation
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`of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer,
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`50Id. at 2.
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`51See Bankruptcy Court Order, attached as Ex. 1 to Decl. of Barry Piels (doc. 94-2).
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`52Id.
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`53Id.
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`11
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`Case 2:07-cv-02253-DJW Document 97 Filed 03/31/10 Page 12 of 27
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`is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized
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`agent.”54 Plaintiff also appears to argue that the letter agreement would satisfy the written
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`instrument requirement of § 204(a).
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`Plaintiff asserts that it is entitled to reconsideration because “[a]t the time Plaintiff filed its
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`response to Defendant’s motion for summary judgment, it did not have copies of the bankruptcy
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`records within its possession.”55 Plaintiff states that “[f]or over twenty five (25) years, no one had
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`ever called into question the Bill of Sale evidencing the assignment of IP rights from Chemical Bank
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`to [Plaintiff] since Chemical Bank, founded in 1823, was a well-established and respected financial
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`institution.”56
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`Plaintiff also provides the declarations of Jay Horowitz,57 Barry Piels,58 and Robert Strauss,59
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`all of which were signed in May 2009 and expressly state they are being filed in support of
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`Plaintiff’s motion. Plaintiff contends that these declarations and their attached documents are
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`additional “new evidence” that entitle it to reconsideration.
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`The first declaration is that of Mr. Horowitz, who is, as noted above, is the President, sole
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`shareholder, and director of Plaintiff. He states in his declaration: “I am aware that as a secured
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`creditor, Chemical Bank was awarded all assets of Louis Marx Co., Inc. by the bankruptcy court in
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`5417 U.S.C. § 204(a) (emphasis added).
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`55Pl.s’ Mot. for Recons. (doc. 94) at 1.
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`56Id. at 1-2.
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`57Horowitz Decl., attached as Ex. 3 to Pl.’s Mot. for Recons. (doc. 94-3) (“Second Horowitz
`Declaration”).
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`58Piels Decl., attached as Ex. 2 to Pl’s Mot. for Recons. (doc. 94-2) (“Piels Decl.”).
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`59Strauss Decl., attached as Ex. 1 to Pl.’s Mot. for Recons. (doc. 94-1) (“Strauss Decl.”).
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`12
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`Case 2:07-cv-02253-DJW Document 97 Filed 03/31/10 Page 13 of 27
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`In re Louis Marx Co. Inc., Case No. 80-B 10150 (S.D. N.Y. 1980).”60 Attached to Mr. Horowitz’
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`declaration are a number of documents, including (1) a handwritten sales agreement between
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`Plaintiff and David Strauss & Co., Inc., the company retained by Chemical Bank to appraise and
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`liquidate Louis Marx & Co.’s assets in 1982, for the sale of equipment and molds;61 (2) a 1984 letter
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`from the Vice-President of Chemical Bank to Plaintiff, in which Chemical Bank confirms that it had
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`assigned molds and equipment to Plaintiff and that Chemical Bank would not “assert any patent or
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`copyright rights it had as a successor to Louis Marx & Co., Inc. or its affiliated companies to object
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`to your use of those molds and dies or the sale of products made from them”;62 and (3) a June 1988
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`letter to Mr. Horowitz from Chemical Bank enclosing three bills of sale which state that Chemical
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`Bank is transferring to Plaintiff Chemical Bank’s “interest, if any, in all of the trademarks, patents,
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`copyrights and related goodwill formerly owned by Louis Marx & Co.” to Plaintiff.63
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`The second declaration is that of Barry Piels, who states that he was general counsel to Louis
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`Marx & Co. from 1978 to June 1982.64 Mr. Piels states that Chemical Bank became the owner of
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`Louis Marx & Co.’s intellectual property assets through the Louis Marx & Co. bankruptcy
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`proceedings and that Chemical Bank had the power and authority to transfer or assign those rights.65
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`Attached to Mr. Piels’ declaration are the Bankruptcy Court Order and the other bankruptcy
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`60Second Horowitz Decl., ¶ 4.
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`61See Second Horowitz Decl., Ex. 1.
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`62See Second Horowitz Decl., Ex. 2.
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`63See Second Horowitz Decl., Ex. 3.
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`64Piels Decl., ¶ 4.
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`65Id., ¶¶ 5-7.
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`13
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`Case 2:07-cv-02253-DJW Document 97 Filed 03/31/10 Page 14 of 27
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`documents discussed above.66 Plaintiff provides Mr. Piels’ declaration to authenticate the
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`bankruptcy documents and to provide further support for its position that Chemical Bank did in fact
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`acquire the copyrights from Louis Marx & Co. through the bankruptcy proceedings and through the
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`letter agreement attached to the April 15, 1982 Bankruptcy Court Order.
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`The third declaration is that of Robert Strauss, who indicates that he is president of David
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`Strauss & Co., Inc., the company which was retained by Chemical Bank in 1982 to appraise and
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`liquidate Louis Marx & Co.’s assets.67 Mr. Strauss states in his declaration that David Strauss & Co.
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`sold Louis Marx & Co.’s “production molds” to Plaintiff in October 1982 and that the sale “was
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`made under authority of and approved by Chemical Bank.”68 Attached to Mr. Strauss’ declaration
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`is “a hand-written invoice from [David Strauss & Co., Inc.] to American Plastic on the date of the
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`sale in October, 1983 signed by my father.”69 Plaintiff asserts that this invoice is “a hand-written
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`assignment from Strauss to American Plastic . . . which