Opposition to Motion for Summary Judgment (Invalidity)
United States District Court, [district].
[name of Plaintiff], Plaintiff,
v.
[name of Defendant], Defendant.
No. [case number].
[date].
Plaintiff’s Memorandum of Law in Opposition to Defendant’s Second Motion for Summary Judgment of Copyright Invalidity
[names and addresses of Counsel for Plaintiff]
Attorneys for Plaintiff
TABLE OF CONTENTS
Preliminary Statement
Statement of Facts
Argument
Point I: The Standard for Summary Judgment
Point II: Judge [name of Judge]’s Order Is the Law of The Case
Point III: Defendant’s “New’ Evidence Is Not Sufficient to Disturb the Law of The Case by Revisiting the Issue of Originality
A.	The Rejection Form Letter Issued to Defendant Rejecting Copyright Registration for the Infringing Defendant Product
1. The Rejection Form Letter Issued to Defendant is Inadmissible
2.	The Rejection Form Letter is Insufficient to Disturb the Law of the Case
B. The Copyright Collection Form Letter Concerning the Collection
1.	The Copyright Collection Form Letter is Inadmissible and Should be Stricken
2.	The Copyright Collection Form Letter is Insufficient to Disturb the Law of the Case
Point IV: The Plaintiff Product Is Original
A. Originality in Copyright Context Requires Simply Independent Creation
B. The Plaintiff Product Cannot Be Judged in Terms of Its Component Parts
C. The Plaintiff Product is a Creative Combination of Elements
D.	A Product Purportedly Manufactured in [year] Has No Relevance to The Originality of the Plaintiff Product
1.	The Plaintiff Product Was Created in [year] and Pre-Dates a [year] Product
2.	Even a Co-existing Ring Would Not Preclude Copyright for the Plaintiff Product
POINT V: Plaintiff’s Copyright Is Presumed Valid 	
Conclusion
TABLE OF AUTHORITIES
FEDERAL CASES
Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951)
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986)
Bank Brussels Lambert v. Credit Lyonnais (Suisse) S.A., 93 Civ. 6876, 94 Civ. 2713, 2001 U.S. Dist. LEXIS 4233, at *10 (S.D.N.Y. April 6, 2001)
Barnhart v. Federated Dep’t Stores, Inc., 4 Civ. 3668 75 U.S.P.Q. 2d 1184, 2005 U.S. Dist. LEXIS 3631 (S.D.N.Y. Mar. 5, 2005)
Cruden v. Bank of New York, 957 F.2d 961 (2d Cir. 1992)
Cumisky v. James River Corp., No. 93-CV-1975 (DGT), 1995 U.S. Dist. LEXIS 22002 (E.D.N.Y. Aug. 17, 1995)
DBC of New York, Inc. v. Merit Diamond Corp., 768 F. Supp. 414 (S.D.N.Y. 1991)
DBC New York, Inc. v. Merit Diamond Corp., 768 F. Supp. 414 (S.D.N.Y. 1991)
Diamond Direct, LLC, v. Star Diamond Group, Inc., 116 F. Supp. 2d 525 (S.D.N.Y. 2000)
Doe v. New York City Dep’t of Social Servs., 709 F.2d 782 (2d Cir. 1983)
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (U.S. 1991)
Gaste v. Kaiserman, 863 F.2d 1061 (2d Cir. 1988)
Gibson Tex, Inc. v. Sears Roebuck & Co., 11 F. Supp. 2d 439 (S.D.N.Y. 1998)
Gorman-Bakos v. Cornell Coop. Extension, 252 F.3d 545 (2d Cir. 2001)
Grant Thornton v. Syracuse Sav. Bank, 961 F.2d 1042, 1046 (2d Cir. 1992)
Heyman v. Salle, 743 F. Supp. 190, 192 (S.D.N.Y. 1989)
Hub Floral Corp. v. Royal Brass Corp., 454 F.2d 1226 (2d Cir. 1972)
Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980)
L-3 Commnc’ns Corp. v. OSI Sys., No. 02 Civ. 9144 (PAC), 2007 U.S. Dist. LEXIS 12701 (2d Cir. 2008)
Major League Baseball Properties, Inc. v. Salvino, 542 F.3d 290 (2d Cir. 2008)
Morin v. Trupin, 809 F. Supp. 1081 (S.D.N.Y. 1993)
Morris v. Business Concepts, Inc., 259 F.3d 65 (2d Cir. 2001)
Nicholls v. Tufenkian Import/Export Ventures, Inc., 04 Civ. 2110 2004 U.S. Dist. LEXIS 11403, 71 U.S.P.Q. 2d (BNA) 1478 (S.D.N.Y. June 23, 2004)
In re PCH Associate, 949 F. 2d 585 (2d Cir. 1991)
Price v. Fox Entertainment Group, Inc., 499 F. Supp. 2d 382 (S.D.N.Y. 2007)
Re-Alco Industrial, Inc. v. National Ctr. for Health Education, Inc., 812 F. Supp. 387 (S.D.N.Y. 1993)
Repp v. Webber, 132 F.3d 882 (2d Cir. 1997)
Rodriguez v. City of New York, 72 F.3d 1051 (2d Cir. 1995)
Rule v. Brine, Inc., 85 F.3d 1002 (2d Cir. 1996)
Sango v. New York, 83 CV 5177, 1989 U.S. Dist, LEXIS 18214 (E.D.N.Y. June 16, 1989)
Selam Selah, 04 Civ. 3273, 2006 U.S. Dist. LEXIS 51051 (S.D.N.Y. July 24, 2006)
Selam Selah v. N, Y. State Department of Correctional Services Commissioner, 04 Civ. 3273, 2006 U.S. Dist. LEXIS 51051 (S.D.N.Y. July 24, 2006)
Slotkin v. Citizens Casualty Co., 614 F.2d 301 (2d Cir. 1979)
Sprint/United Management Co. v. Mendelsohn, 128 S. Ct. 1140 (2008)
Tin Pan Apple, Inc. v. Miller Brewing Co., Inc., No. 88 Civ. 4085 (CSH), 1994 U.S. Dist. LEXIS 2178 (S.D.N.Y. Feb. 24, 1994)
United States v. Portrait of Wally, 99 Civ. 9940 2009 U.S. Dist. LEXIS 91464 (S.D.N.Y. Sept. 30, 2009)
Van Cleef & Arpels Logistics, S.A. v. Landau Jewelry, 547F. Supp. 2d 356 (S.D.N.Y. 2008)
Vargas v. Pfizer, Inc., 418 F. Supp. 2d 369 (S.D.N.Y. 2005)
Virgin Atlantic Airways, Ltd. v. National Mediation Board, 956 F.2d 1245 (2d Cir. 1992)
Weindling Int’l, Corp. v. Kobi Katz, Inc., 00-C 2000 U.S. Dist. LEXIS 14255 (S.D.N.Y. Sept. 29, 2000)
Wright v. Cayan, 817 F.2d 999 (2d Cir. 1987)
Yurman Design, Inc. v. Golden Treasure Imports, Inc., 275 F. Supp. 2d 506 (S.D.N.Y. 2003)
Yurman Design, Inc. v. PAJ, Inc., 93 F. Supp. 2d 449, 457
Yurman v. PAJ, Inc., 262 F.3d at 110
Yurman v. Castaneda, 591 F. Supp. 2d at 484
FEDERAL STATUTES
17 U.S.C. § 404
17 U.S.C. §§ 410(a), 411(a)
17 U.S.C. § 410(c)
Administrative Procedure Act, 5 U.S.C. §701-706
Fed. R. Civ. P. 56(c)
17 U.S.C. § 506(e)
PRELIMINARY STATEMENT
This memorandum of law, together with the accompanying Declaration of [name of Declarant], dated [date] (the “Declaration”) and Exhibits thereto, is submitted by [name of Plaintiff] (“Plaintiff”) in opposition to [name of Defendant]’s (“Defendant”) Second Motion for Summary Judgment.
STATEMENT OF FACTS
On [date], Plaintiff filed a complaint against Defendant in the United States District Court, [district] for copyright infringement. Plaintiff became aware in [year] that Defendant had copied a [description of product] designed by Plaintiff (the “Plaintiff Product”) and was selling its knock off products (the “Defendant Products”) throughout the United States (see Declaration, Ex. [exhibit number]). The Plaintiff Product was part of a collection of related [description of product] designs created, manufactured and sold by Plaintiff titled “[name of Collection]” (the “Collection”) and marketed and sold collectively to [name of Buyer] (“Buyer”). In [year], the Register of Copyrights issued to Plaintiff a Certificate of Copyright Registration [registration number] (the “Registration”) for the Collection. (See Declaration)
Plaintiff is a small family owned business founded by [name of Plaintiff Owner] (“Plaintiff Owner”). Working closely with Plaintiff Owner, Plaintiff designs, creates, manufactures and sells [description of products]. The Plaintiff Product was first conceived and created by Plaintiff Owner on or about [year]. The first drawings and physical Product were completed sometime in the [year], at which time one or two Products were made. Plaintiff Owner met with [name of Distribution Company], one of the largest leading chain stores in [country] as early as [date] in order to sell her the Plaintiff Product. Ultimately, Plaintiff Owner was unsuccessful in selling the Product to Distributing Company. Plaintiff first sold the Plaintiff Product on or about [year].
Originally, Plaintiff’s business was mainly with individual and mom and pop stores. However, the business eventually began to expand. In [year], as the business expanded, Plaintiff began to sell the Plaintiff Product to large national chain stores and to manufacture the Plaintiff Product for mass production for high volume sales. The process for manufacturing [description of product] for mass production is different than it is for creating [description of product] for individual sales.
Plaintiff Owner created the Plaintiff Product by carefully designing and crafting a product that combined various design elements. The Plaintiff Product is an original Product created by the Plaintiff. [Name of Designer], the designer for Defendant, a graduate of one of the two premiere institutes of design in [country], and purportedly well versed in [description of product category], admits that in [year], she was not aware of any comparable Product. (See Declaration). Similarly, [name of sales person], a salesperson for Defendant, well versed in [description of product category], claims he had never before seen a Product like the Product at issue before he began selling the Defendant Products for Defendant. [Name of Buyer VP], Senior Vice President of Buyer, and a [number] plus years veteran of Buyer, a giant in the [description of product category] business, also testified that no one was promoting a Product similar to the Plaintiff Product at the time he purchased the Plaintiff Product from Plaintiff. (See Declaration, Ex. 1). In fact, [Name of Buyer VP] was not aware of another manufacturer besides Plaintiff, and subsequently Defendant, that made [description of product]. (See Declaration). His testimony corroborated that the Plaintiff Product, is NOT a basic Product. (See Declaration). He further testified that the use of [description of product characteristics] gradually became a phenomenon over time sometime after [year]. Accordingly, it is clear that when the Plaintiff Product was created by Plaintiff Owner in [year], there was no comparable Product using such [description of product characteristics].
Plaintiff first discovered that Defendant placed its knock offs of the Plaintiff Product in Buyer in [year]. After visiting the corporate office in [city, state] to discuss business, Plaintiff Owner visited a Buyer retail store and saw for the first time that the Buyer was displaying the infringing Defendant Products. Defendant purports to have created its Product in [year], a date which post-dates the [year] creation of the Plaintiff Product, and which gave Defendant sufficient opportunity to copy the Product to which it had access through Buyer and other clients Plaintiff and Defendant had in common.
Plaintiff filed this suit in [year], asserting a single count for Copyright Infringement against Defendant. Defendant filed an answer and counterclaims on [date] and a first amended answer and counterclaims on [date]. On [date], Defendant filed a motion for summary judgment as to, among other things, copyright invalidity. By memorandum opinion and order dated [date] (the “Order”) Judge [name of Judge] denied summary judgment. (See Declaration, Ex. [exhibit number]). Defendant is now moving for summary judgment as to copyright invalidity for the second time.
ARGUMENT
POINT I
THE STANDARD FOR SUMMARY JUDGMENT
Pursuant to Federal Rule of Civil Procedure 56(c), summary judgment is only appropriate if “the pleadings, the discovery and disclosure materials on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c); Heyman v. Salle, 743 F. Supp. 190, 192 (S.D.N.Y. 1989) (summary judgment of copyright claim was precluded due to genuine issues of material fact). The moving party has the initial burden of demonstrating the absence of a genuine issue of material fact, and all inferences and ambiguities are resolved in favor of the party against whom summary judgment is sought. Grant Thornton v. Syracuse Savings Bank, 961 F.2d 1042, 1046 (2d Cir. 1992). “An issue of fact is genuine if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. A fact is material when it might affect the outcome of the suit under the governing law.” Price v. Fox Entertainment Group, Inc., 499 F. Supp. 2d 382, 385 (S.D.N.Y. 2007).
The “duty of a court on a motion for summary judgment is to determine whether there are any genuine issues of material fact to be resolved by trial and not to decide factual issues. In this regard, the court’s task is issue identification, not issue resolution.” Repp v. Webber, 132 F.3d 882, 890 (2d Cir. 1997) (reversing summary judgment where district court resolved material issues of fact rather identifying those facts and leaving them for trial). “In performing this task, [the court] must assume the truth of the non-movant” evidence.” Id. All inferences drawn from the materials submitted are viewed in a light most favorable to the party opposing the motion and the non-movant receives the benefit of the doubt when its assertions conflict with those of the movant. Cruden v. Bank of New York, 957 F.2d 961, 975 (2d Cir. 1992); see also Gibson Tex, Inc. v. Sears Roebuck & Co., 11 F. Supp. 2d 439, 441 (S.D.N.Y. 1998).
Defendant is now moving for summary judgment a second time as to copyright invalidity but has failed to discharge its burden as it has presented inadmissible evidence to support its contentions and has failed to show the absence of a genuine issue of material fact. As Judge [name of Judge] previously determined, Plaintiff’s evidence would allow a reasonable fact-finder to find in favor of Plaintiff. The evidence shows that Plaintiff has a valid copyright, and that the Plaintiff Product is original. At best, the evidence and arguments presented by Defendant on its motion for summary judgment merely highlight the genuine issues of material fact which exist and which must be left to the trier of fact.
POINT II
JUDGE’S ORDER IS THE LAW OF THE CASE
As a preliminary matter, we note that while Defendant has filed a “motion for summary judgment of copyright invalidity,” the arguments presented by Defendant concern the specific issue of the originality of the individual Product at issue, not the broader issue of the validity of the copyright.
 In any event, based on the law-of-the-case doctrine, Plaintiff respectfully urges this Court to refrain from determining issues of law which have previously been decided by [name of Judge] in the Order. In his Order, Judge [name of Judge] denied summary judgment, ruling that there were genuine issues of material fact as to the validity of the Registration and as to the originality of the Plaintiff Product. Because denial of summary judgment constitutes the law of the case, Wright v. Cayan, 817 F.2d 999, 1002 (2d Cir. 1987), Judge [name of Judge]’s denial of summary judgment is entitled to deference.
“Under the law of the case doctrine, a decision on an issue of law becomes binding precedent in subsequent stages of the same litigation.” Selam Selah v. N.Y. State Dep’t of Corr. Servs. Comm’r, 04 Civ. 3273 (DC), 2006 U.S. Dist. LEXIS 51051, 6-7 (S.D.N.Y. July 24, 2006) (citing In re PCH Assoc., 949 F.2d 585, 592 (2d Cir. 1991)). The law of the case doctrine “expresses the general practice of refusing to reopen what has been decided.” Slotkin v. Citizens Casualty Co., 614 F.2d 301, 312 (2d Cir. 1979). “[W]here litigants have once battled for the court’s decision, they should neither be required, nor without good reason permitted, to battle for it again.” Virgin Atl. Airways, Ltd. v. Nat’l Mediation Bd., 956 F.2d 1245,1249 (2d Cir. 1992)(internal citation omitted). “This is particularly true in a case, such as this, in which the presiding judge has changed.” United States v, Portrait of Wally, 99 Civ. 9940 (LAP), 2009 U.S. Dist. LEXIS 91464, *119 (S.D.N.Y. Sept. 30, 2009) (citing L-3 Commnc‘ns Corp. v. OSI Sys., No. 02 Civ. 9144 (PAC), 2007 U.S. Dist. LEXIS 12701, at *15-16 (S.D.N.Y. Feb. 23, 2007) (“When... the judges in a case are switched mid-stream...successor judge may not reconsider his predecessor’s rulings with the same freedom that he may consider his own rulings.”), rev’d in part on other grounds, 283 Fed. Appx. 830 (2d Cir. 2008)); McAnaney v. Astoria Fin. Corp., No. 04-CV-1101(JFB)(WDW), 2007 U.S. Dist. LEXIS 67552, 47-48, n. 18 (E.D.N.Y. Sept. 12, 2007).
Specifically, the issue of originality, reargued by Defendant in its second motion for summary judgment, has already been clearly determined by Judge [name of Judge] and is the law of the case. Judge [name of Judge] stated in his opinion “Plaintiff has presented sufficient evidence to create a genuine issue of material fact as to whether the Plaintiff Product possesses the requisite originality. A review of the case law reveals that the ‘quantum of originality necessary to invoke copyright protection is very small.”’ [citation]. Judge [name of Judge]’s decision on originality is entitled to particular deference because typically, when “the originality of a copyrighted work is at issue, it becomes a question of fact for the jury to resolve.” Vargas v. Pfizer, Inc., 418 F. Supp. 2d 369, 372 (S.D.N.Y. 2005) (citing Tin Pan Apple, Inc. v. Miller Brewing Co., Inc., No. 88 Civ. 4085 (CSH), 1994 U.S. Dist. LEXIS 2178 (S.D.N.Y. Feb. 24, 1994)); Nicholls v. Tufenkian Import/Export Ventures, Inc., 04 Civ. 2110 (WHP), 2004 U.S. Dist. LEXIS 11403, at *6, 71 U.S.P.Q.2d (BNA) 1478 (S.D.N.Y. June 23, 2004) (“argument that design lacks originality raises factual issues that are best left for trial”). Based on the foregoing, Defendant’s arguments regarding the legal requirements for originality, and the purported uncopyrightability of the Product “on its face,” as discussed in Section III of Defendant’s memorandum (see Def.’s Memo, pp. 10 -20) and its anticipated “reply” in Section IV.A. (see Def.’s Memo, pp. 22-23), should be completely disregarded.
A Court “‘should be loathe to [revisit an issue] in the absence of extraordinary circumstances such as where the initial decision was clearly erroneous and would work a manifest injustice.” Portrait of Wally, 99 Civ. 9940 (LAP), 2009 U.S. Dist. LEXIS 91464, 118-119 (internal citations omitted). Departure from a prior ruling is only acceptable where “there has been an intervening change of controlling law, new evidence becomes available, or there is a ‘need to correct a clear error or prevent manifest injustice.” Selam Selah, 04 Civ. 3273 (DC), 2006 U.S. Dist. LEXIS 51051, 7 (S.D.N.Y. July 24, 2006) (citing Virgin Atl., 956 F.2d at 1255); see also Sango v. New York, 83 CV 5177(JMM), 1989 U.S. Dist. LEXIS 18214, 16-17 (E.D.N.Y. June 16, 1989) (citing Doe v. New York City Department of Social Services, 709 F.2d 782, 789 (2d Cir. 1983)).
Here, Defendant has presented no “extraordinary circumstances” to justify revisiting the issue of originality. In fact, while Defendant had ample opportunity to request reconsideration, it advised Judge [name of Judge] that it had decided not to move for reconsideration. (See Declaration, Ex. [exhibit number]). Moreover, Defendant does not present a change in controlling law. Instead, Defendant purports to present “new evidence.” However, as discussed below, Defendant’s “new” evidence is insufficient to justify revisiting the issue of originality.
POINT III
DEFENDANT’S “NEW” EVIDENCE IS NOT SUFFICIENT TO DISTURB THE LAW OF THE CASE BY REVISITING THE ISSUE OF ORIGINALITY
“Questions of fact are “primary examples” of issues “particularly unsuited to reconsideration,” at least “absent significant new evidence.” Sango, 83 CV 5177(JMM), 1989 U.S. Dist. LEXIS 18214 at 16-17. Defendant’s “new” evidence consists of nothing more than: (1) a [date] form letter issued to Defendant declining registration of the Defendant Products, noting that Defendant did not independently create the Product (the “Rejection Form Letter”); and (2) a form letter from the Copyright Office dated [date], generally issued by the copyright office to all registrants for a [description of product category] (the “Copyright Collection Form Letter”), which did not specifically identify or address any individual product within the Collection. Defendant treats the letters as affirmative Copyright Office decisions specific to the Plaintiff Product (see Def’s Memo, p. [page number]), but this is a gross mischaracterization. The letters have no bearing on the Plaintiff Product.
The “new” evidence simply does not meet the standards required to justify revisiting issues that are law of the case. The party moving for reconsideration of an interlocutory decision based on the newly discovered evidence must show that (1) the proffered evidence was unavailable despite the exercise of due diligence by the movant in procuring evidentiary support, and (2) manifest injustice will result if the court opts not to reconsider its earlier decision. In re Rezulin Prods. Liab. Litig., 224 F.R.D. 346, 349-350 (S.D.N.Y. 2004). Other courts have similarly stated that “[w]here a party seeks to avoid the law of the case by reopening factual issues based upon new evidence, it is appropriate for the court to apply the standards of Rule 60(b)(2)...” Morin v. Trupin, 809 F. Supp. 1081, 1086 (S.D.N.Y. 1993). Rule 60(b)(2) requires that evidence: (1) be newly discovered; (2) could not, with due diligence, have been discovered earlier; (3) is not merely cumulative of impeaching; (4) is material to the issues; and (5) would probably produce a different result. Id.
As discussed in more detail below, the new evidence presented by Defendants could have been discovered sooner with due diligence, is not material to the issues, and would not produce a different result than was reached by the Order. It would not result in manifest injustice if the court opts not to reconsider the earlier decision. Accordingly, the “new” evidence, which is not material, has no probative value, and is otherwise inadmissible is insufficient to disturb Judge [name of Judge]’s decision. Cumisky v. James River Corp., No. 93-CV-1975 (DGT), 1995 U.S. Dist. LEXIS 22002, at *20 (E.D.N.Y. Aug. 17, 1995).
A. The Rejection Form Letter Issued to Defendant Rejecting Copyright Registration for the Infringing Defendant Ring
In [year], more than [number] years after this Action was filed, Defendant committed fraud upon the Copyright Office by filing an application for copyright registration of the infringing product at issue, knowing full well that those products infringe upon the Plaintiff Product covered by the Registration. Section 4 of the Copyright Application filed by Defendant (see Exhibit [exhibit number]), fails to note that the products sought to be registered were “previously registered, previously published, or not owned by this claimant.” This is a blatant omission of the truth and is criminal. Under 17 U.S.C. § 506(e), “any person who knowingly makes a false representation of a material fact in the application for copyright registration...” is guilty of a crime and “shall be fined not more than $ 2,500.” 17 U.S.C. § 506(e); Barnhart v. Federated Dep’t Stores, Inc., 04 Civ. 3668 (JGK), 75 U.S.P.Q.2D (BNA) 1184, 2005 U.S. Dist. LEXIS 3631, at *27 (S.D.N.Y. Mar. 5, 2005). In response to the fraudulent application, the Copyright Office denied Defendant a copyright registration as reflected in the Rejection Form Letter.
1. The Rejection Form Letter Issued to Defendant is Inadmissible
As discussed in the memorandum of law in support of Plaintiff’s concomitant cross-motion to strike Defendant’s exhibits, the Rejection Form Letter is incompetent and inadmissible evidence. See Major League Baseball Properties, Inc. v. Salvino, 542 F.3d 290, 309 (2d Cir. 2008).
Certain points raised in the cross-motion to strike bear repeating. First, the Rejection Form Letter produced by Defendant has no probative value as it is a form letter issued by the Copyright Office when rejecting applications for copyright. (See Declaration, [exhibit number]). It contains nothing but generalized form language relating to general issues of copyright law.
Second, the Rejection Form Letter has no probative value because it does not relate to an application for registration of the Plaintiff Product. Instead, it relates to the application for copyright of the Defendant Ring. Among other things, based on the language in the Rejection Form Letter, it can be inferred that Defendant was denied registration because Defendant, the named applicant, did not independently create the [description of product category]. It is true that Defendant did not independently create the product, as Plaintiff has maintained all along, because Defendant copied the Plaintiff Product. This is further corroborated by the fact that the application for copyright of the Defendant product was filed approximately [number] years after Plaintiff copyrighted the Plaintiff Product as part of the Collection. While Defendant argues that the Copyright Office does not conduct prior art searches, the section in the Copyright Office’s Compendium II at section 108.03 cited by Defendant states that the Copyright Office does not generally make comparisons, not that it never makes comparisons. Moreover, it is not clear how the Copyright Office could ever reach a determination as to whether a work is original, not copied, and is otherwise copyrightable if it always operated in a complete vacuum as Defendant suggests. Defendant’s argument that Plaintiff’s prior creation of the Plaintiff Product could not have been a factor is untenable.
Third, the copyright rejection has little probative value as the rejection could have been appealed, but was not. Defendant has conceded that “no appeal or request for consideration or other correspondence occurred or existed or exists.” (See Declaration, Ex. [exhibit number]). This is particularly true as Copyright rejections can be set aside and a final decision by the Copyright Office can be reviewed by the District Court as part of an infringement action. See 17 U.S.C. §§ 410(a), 411(a); 701(e); Administrative Procedure Act, 5 U.S.C. §701-706; DBC of New York, Inc. v. Merit Diamond Corp., 768 F. Supp. 414, 416 (S.D.N.Y. 1991).
Clearly, Defendant had no interest in pursuing an appeal of the examiner’s decision as it knew its application was fraudulent and a successful appeal would weaken the point it now tries to make. Accordingly, its lackluster efforts to register the Product should not be given any weight and should not be permitted to prejudice the Plaintiff or confuse the issue of the copyrightability/originality of the Defendant Product, which is a copy of the pre-existing Plaintiff Product, with the issue of the copyrightability/originality of the Plaintiff Product. For the foregoing reasons, the Rejection Form Letter is inadmissible pursuant to FRE 401, 402 and 403.
Moreover, the Rejection Form Letter should be precluded because Defendant and its counsel engaged in bad faith, criminal conduct by attempting to fraudulently register a copyright.
2. The Rejection Form Letter is Insufficient to Disturb the Law of the Case
Even if deemed admissible, the Rejection Form Letter does not meet the standards sufficient to disturb the law of the case. Specifically, the Rejection Form Letter could have, with more due diligence, been discovered before the filing on [date] of its motion for summary judgment. As the complaint in this action was filed on [date], Defendant had over [number] months within which to file a copyright registration application for its product and obtain an earlier Rejection Form Letter.
Moreover, for the reasons noted in section above, the Rejection Form Letter is simply not material to the issues and would not command a different result than that commanded by the Order.
B. The Copyright Collection Form Letter Concerning the Collection
1. The Copyright Collection Form Letter is Inadmissible and Should be Stricken
The Copyright Office’s letter is merely a form letter issued to registrants for a collection. (See Declaration, Ex. [exhibit number]). In any event, the Copyright Collection Form Letter, despite its boilerplate language, entitles the copyright holder to the presumption of copyright validity. See e.g., Yurman Studio, Inc. v. Castaneda, 591 F. Supp. 2d 471, 492 n.118. (S.D.N.Y. 2008) (copyright validity sustained, citing form letters from the Copyright Office warning that “[s]ome of the works, if considered separately, would not support an independent claim”).
The Copyright Collection Form Letter has very little probative value because besides being a boilerplate form, it did not specifically identify the Plaintiff Product as a work not supporting an independent claim to copyright. The Copyright Collection Form Letter merely states that “[s]ome of the individual works, if considered separately, would not support an independent claim and would not be protected by copyright.” (Emphasis added). Significantly, the letter does not identify any specific pieces that would not support an independent claim for copyright protection, much less specifically identify or suggest the Plaintiff Product may not be entitled to independent copyright protection. In fact, the form letter indicates that not all of the [description of product category] were individually examined as it notes “some of the individual works if considered separately...” (See Declaration, [exhibit number]). Accordingly, the letter suggests that as one or more pieces would be entitled to independent copyright protection, the Plaintiff Product could very well be entitled to independent copyright protection.
As the Copyright Collection Form Letter is a form letter using boilerplate language, and does not specifically identify the Plaintiff Product as not entitled to independent copyright protection, the Copyright Collection Form Letter does not make the existence of originality/copyrightability of the Plaintiff Product more probable or less probable and is inadmissible pursuant to Rule 402. Even if the Copyright Collection Form Letter were deemed to be relevant, it should be stricken pursuant to FRE 403 because its probative value is substantially outweighed by the fact that it is unfair prejudicial evidence. See, e.g., Sprint/United Management Co. v. Mendelsohn, 128 S.Ct. 1140 (2008). In this case, to the extent the Court deems the Rejection Form Letter has any probative value, it would be minimally probative, for the reasons outlined above (i.e., it is a form letter which does not specifically identify any individual product), and is outweighed by the danger of unfair prejudice or confusion of the issues (i.e., copyrightability unidentified product versus copyrightability of specific Product in question) as has clearly arisen in this case.
2. The Copyright Collection Form Letter is Insufficient to Disturb the Law of the Case
The Copyright Collection Form Letter could certainly have been discovered earlier with due diligence as the records are publicly available. The fact that Plaintiff did not have this letter in its records and therefore could not make the letter available to Defendant did not preclude Defendant from obtaining a copy of the file sooner. Ultimately, Defendant obtained a copy of the record, which it acknowledges is publicly available (see Def’s Memo, p. [page number]) without any obstacles. Accordingly, Defendant could have obtained a copy of the letter during the first year before it filed the first motion for summary judgment. Moreover, the Copyright Office’s letter is not material to the issues, because, as discussed above, it provides no proof that the Plaintiff Product is not entitled to copyright protection.
POINT IV
THE PLAINTIFF PRODUCT IS ORIGINAL
In the event Your Honor deems Defendant’s “new” evidence sufficient cause to revisit Judge [name of Judge]’s prior ruling on originality and denying the motion for summary judgment, we revisit Plaintiffs prior arguments and address Defendant’s arguments below.
A. Originality in Copyright Context Requires Simply Independent Creation
Defendant argues the Plaintiff Product is uncopyrightable on its face because it is a simplistic and basic Product containing no individually copyrightable elements and is lacking in originality. However, Defendant loses sight of the fact that “original,” as the term is used in copyright, “means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity... the requisite level of creativity is extremely low; even a slight amount will suffice,”’ Yurman Design, Inc. v. PAJ. Inc., 262 F.3d 101, 109 (2d Cir. 2001) (citing Feist Publ’ns, Inc. v. Rural Tel. Serv, Co., 499 U.S. 340, 345 (U.S. 1991)). The “‘vast majority of works mak[e] the grade quite easily’ as long as they possess ‘some creative spark, no mater how crude, humble or obvious.”’ Van Cleef & Arpels Logistics, S.A. v. Landau Jewelry, 547 F. Supp. 2d 356, 361 (S.D.N.Y. 2008) (citing Feist, 499 U.S. at 345-46).
Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying.” Feist, 499 U.S. at 345-46. “Although novelty, uniqueness and ingenuity are not required, independent creation is. Independent creation, in turn, means that a work must not consist of actual copying. This test of originality, which has been aptly characterized as ‘modest,’ ‘minimal,’ and as establishing a ‘low threshold,’ is the sine qua non of copyrightability.” Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 910 (2d Cir. 1980) (internal citations omitted). “Similarity to prior works will not, in and of itself, affect the validity of a particular work’s copyright.” Key Publications, Inc. v. Chinatown Today Pub., 945 F.2d 509 (2d Cir. 1991). “No matter how poor the ‘author’s’ addition, it is enough if it be his own.” Although slavish copying involving no artistic skill whatsoever does not qualify, a showing of virtually any independent creativity will do.” Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir. 1988) (internal citations omitted).
B. The Plaintiff Product Cannot Be Judged in Terms of Its Component Parts
The Second Circuit has “rejected arguments that the combination of elements commonly found in jewelry into a unique original design cannot be copyrighted.” Yurman Design, Inc. v. Golden Treasure Imports, Inc., 275 F. Supp. 2d 506, 515 (S.D.N.Y. 2003). By arguing that the concept of a [description of product characteristics] is commonplace in the industry, Defendant is ignoring the principle that a [description of product category] cannot be judged “simply in terms of its component parts.” Weindling Int’l, Corp. v. Kobi Katz, Inc., 00-CV-2022(JSR), 2000 U.S. Dist. LEXIS 14255, at *6 (S.D.N.Y. Sept. 29, 2000). Analyzing a Product “simply in terms of its component parts effectively begs the question, because the copyright here asserted is not for the components but for their combination into an original design that has its overall distinctive ‘feel.”’ Id. To accept the argument that the Plaintiff Product is “merely unprotectable agglomerations of basic design elements already within the public domain would be akin to accepting the position that every song is merely a collection of basic notes, every painting a derivative work of color and stroke, and every novel merely an unprotected jumble of words.” Yurman Design, Inc. v. PAJ, Inc., 93 F. Supp. 2d 449, 457, affd in part, reversed in part on other grounds by Yurman, 262 F.3d 101. In fact, [description of product category] may qualify for copyright protection based on originality in selection, coordination, or arrangement of elements. Yurman, 262 F.3d 101 (Copyright law may protect a combination of elements that are unoriginal in themselves); Van Cleef & Arpels, 547 F. Supp. 2d at 361 (S.D.N.Y. 2008)( “copyright law may protect a combination of elements that are unoriginal in themselves [][;] in cases involving design, it is difficult to discern when a combination of unoriginal component parts is itself original so as to merit copyright protection... In particular, [description of product category] designs, as derivative works “based upon one or more preexisting works,” have presented courts with this difficulty”); S&R Designs, Inc. v. B.H. Multi Com Corp., No. 04 Civ. 223 (LTS)(HBP), 2007 U.S. Dist. LEXIS 87449, 2-3 (S.D.N.Y. Nov. 27, 2007) (denying summary judgment where there was evidence of creative choice, despite defendant’s argument that designs were merely common geometric shapes and familiar symbols) (citing Yurman v. Paj, 262 F.3d at 110; Yurman v. Golden Treasure, 275 F. Supp. 2d at 515-16 (a combination of common design elements is eligible for copyright protection, even where the common design elements by themselves are not)).
As one court discussed:
[T]he quantum of originality necessary to invoke copyright protection is very small... “[i]t would be a dangerous undertaking for persons trained only to the law to constitute themselves the final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.” [T]he principle applies to works of applied art such as jewelry designs. So the level of creativity necessary to support copyright is modest indeed. While no precise verbal formulation can capture it, there is some irreducible minimum beneath which a work is insufficiently original to find protection. It therefore is necessary to examine precisely what is at issue here a court cannot assess the originality of a work solely from the originality of the individual component parts.
Diamond Direct, LLC v. Star Diamond Group, Inc., 116 F. Supp. 2d 525, 528-29 (S.D.N.Y. 2000) (internal citations omitted).
While Defendant cites to DBC New York, Inc. v. Merit Diamond Corp., 768 F. Supp. 414 (S.D.N.Y. 1991) for the proposition that the Plaintiff Product is an unoriginal Product because it is composed of old elements, the DBC case is easily distinguishable. DBC was limited to the context of a request to reverse the Register of Copyright’s refusal to register the products at issue, which had twice been rejected for protection. The standard of review used by the court was whether the Register had made an error, but Plaintiff presented no evidence of error. Moreover, the DBC court treated the products as utilitarian articles. Though subsequent decisions have, in any event, rejected the notion that [description of product] are utilitarian articles, the DBC court’s allusion to utilitarian articles may be limited to the specific facts before it wherein the [description of product] at issue were made from ready-made castings (see DBC, 768 F. Supp. at 415). This is distinguishable from the present case wherein Plaintiff sought to copyright a Product it designed and created (from initial sketch through manufacture).
C. The Plaintiff Product is a Creative Combination of Elements
Plaintiff Owner’s choices in creating the Plaintiff Product were “determined in material respects by consideration of design.” Weindling, 2000 U.S. Dist. LEXIS 14255, *2. Traditionally, the Product used [description of product characteristics]. The Plaintiff Product, on the other hand, alternates different [description of product characteristics]. In fact, the use of [description of product characteristics] became a phenomenon after [year] (see Declaration, Ex. [exhibit number]), some time after the Plaintiff Product was created. It may be that the Plaintiff Product was one of the first, if not the first, to use [description of product characteristics]. (See Declaration, Ex. [exhibit number]). Even if adjudged to be more akin to a “flickering match” of creativity, juxtaposing [description of product characteristics] with [description of product characteristics], combined with the other elements chosen by Plaintiff Owner is a protectable expression of the idea of a [description of product characteristics] Product as it is sufficiently and substantially original.
In fact, as noted above in the statement of facts, Defendant’s own testimony supports Plaintiff’s contention that the Plaintiff Product design is original. [Name of Designer], the designer for Defendant, and [name of Sales Person], a sales person for Defendant, testified they had never seen products like the products at issue before the Defendant Products in [year]. (See Declaration, Ex. [exhibit number]). Accordingly, it is clear that when the Plaintiff Product was created by Plaintiff Owner in [year], there was no comparable product.
None of the Exhibits produced by Defendant (which are, in any event, inadmissible as discussed in Plaintiff’s cross-motion to strike), with the exception of Exhibit [exhibit number] (which is an unclear photograph and which post-dates the creation of the Plaintiff Product, and is thus irrelevant) even purports to present a pProduct with [description of product characteristics]. Accordingly, Defendant has presented no evidence to contradict Plaintiffs assertion that the Plaintiff Product, created in [year], is an original creation by Plaintiff. Moreover, although the products in Defendant’s exhibits cannot be fully discerned, there are other distinguishing features which exist between the Plaintiff Product and those products such as [description of product characteristics]. See Van Cleef & Arpels, 547 F. Supp. 2d at 364 (noting that comparator pieces lacked a beaded metal frame, corner prongs, and that the dimensions of the clover shape are different from that of the copyrighted design). While Defendant continues to cling to the pre-existence of a [description of product characteristics] (a fact is argued in its first motion for summary judgment), a [description of product characteristics] is not at issue in this lawsuit, it is the particular expression of [description of product characteristics] of the Product that is at issue.
D. A Product Purportedly Manufactured in [year] Has No Relevance to the Originality of the Plaintiff Product
1. The Plaintiff Product was Created in [year] and Pre-dates a [year] Product
We note that while Defendant is fixated on the alleged existence of a Product with an [description of product characteristic] allegedly sold by [name of Seller] in [year], the purported [name of publication] ad presented at Exhibit [exhibit number] post-dates the [year] creation date of the Plaintiff Product.
Contrary to Defendant’s mischaracterization of the evidence, Plaintiff testified to a [year] creation date long before the [name of publication] ad was every produced by Defendant on [date]. Specifically, on [date], Plaintiff Owner testified as to a creation sometime around [year] (see Declaration, Ex. [exhibit number]), and a first sale sometime on or about [year] (see Declaration, Ex. [exhibit number]). Accordingly, any suggestion that Plaintiff’s creation date of the Plaintiff Product should be relegated to a [year] or [year] date to conveniently post-date the [name of publication] ad is simply untenable. Defendant is simply trying to reconstruct history to fit the facts most favorable to it.
Any confusion by Defendant as to the record can be explained by the fact that the term “creation” was never precisely defined in this litigation. In fact, Defendant uses varying terms such as “date of first creation,” and “earliest date... that anyone...first created a drawing, prototype, other model or in any way fixed in permanent form...the product...” As such, Plaintiff Owner provided sworn testimony in his [year] declaration stating that the creation date was [year]. However, this date merely referred to the manufacturing of the Product for mass production to retail chain stores and was not meant to refer to date of first design and first creation. Prior to this sworn declaration, Plaintiff Owner testified to creation of the Plaintiff Product in [year], first sale to individual stores on or about [year], inclusion in the Plaintiff design book in [year], and first sale to a major chain store in [year].
Because Plaintiff has since clarified the distinction between original creation date and subsequent mass production manufacturing creation date, and has corroborated its original testimony, it has properly clarified any unclear statement. Rule v. Brine, Inc., 85 F.3d 1002, 1011 (2d Cir. 1996) (non-movant can amplify and explain); Hub Floral Corp. v. Royal Brass Corp., 454 F.2d 1226,1229 (2d Cir. 1972); Bank Brussels Lambert v. Credit Lyonnais (Suisse) S.A., 93 Civ. 6876,94 Civ. 2713, 2001 U.S. Dist. LEXIS 4233, at *10 (S.D.N.Y. April 6, 2001).
To the extent evidence on the record could be construed as conflicting, the resolution of conflicting testimony and evidence is not appropriate on summary judgment. As noted above, in ruling on a motion for summary judgment, the district court is required to draw all factual inferences in favor of, and take all factual assertions in the light most favorable to, the party opposing summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986); Rodriguez v. City of New York, 72 F.3d 1051,1061 (2d Cir. 1995). The function of the district court in considering the motion for summary judgment is not to resolve disputed issues of fact. Rule v. Brine, Inc., 85 F.3d at 1011. Assessments of credibility and choices between conflicting versions of the events are matters for the jury, not for the court on summary judgment. Id. Any weighing of the evidence is the prerogative of the finder of fact, not an exercise for the court on summary judgment. Gorman-Bakos v. Cornell Coop. Extension, 252 F.3d 545, 558 (2d Cir. 2001). Accordingly, the [name of publication] ad cannot establish at the summary judgment stage that a [description of product] sold in [year], and for which there is no knowledge as to origin of the design or creation date, somehow predated the Plaintiff Product which was first created in [year].
2. Even a Co-existing Product Would Not Preclude Copyright for the Plaintiff Product
In any event, even assuming arguendo a [description of product characteristic] Product was created in [year], and that the Plaintiff Product post-dated the [name of publication] ad, this would not preclude copyrightability of the Plaintiff Product, because even where two designers create identical works, the identical works are equally copyrightable. Feist. 499 U. S. at 345-46 (“To illustrate, assume that two poets, each ignorant of the other, compose identical poems. Neither work is novel, yet both are original and, hence, copyrightable”). Moreover, even if a similar Product were in the public domain when Plaintiff created the Plaintiff Product, even a distinguishable variation of a public domain work would be sufficient to sustain a finding of sufficient originality. Re-Alco Indus., Inc. v. Nat’l Ctr. for Health Educ., Inc., 812 F. Supp. 387, 393 (S.D.N.Y. 1993) (citation omitted); see also Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102-103 (2d Cir. 1951) (“[A] copy of something in the public domain will support a copyright if it is a distinguishable variation.”).
Because the picture of the Product sold by [name of seller] is not clear, the Product’s elements are not easily discernable. (See Declaration, Ex. [exhibit number]). However, the Product sold by [name of Seller] seems to have a different [description of product characteristics] than the Plaintiff Product.
POINT V
PLAINTIFF’S COPYRIGHT IS PRESUMED VALID
As noted above, Defendant’s summary judgment motion, though titled Motion for Summary Judgment of Copyright Invalidity, does not address questions of validity. Instead, it addresses the originality of the individual Plaintiff Product. Nevertheless, we address the validity issue briefly below.
In [year], the Register of Copyrights issued the Registration to Plaintiff for the Collection which was published within [number] years of the Registration. Accordingly, the certificate of copyright registration for the Collection in this case constitutes “prima facie evidence of the validity of the copyright.” 17 U.S.C. § 410(c). Therefore, as a matter of law, Plaintiff’s Registration is presumed valid.
A plaintiff’s “proffer of its certificate of copyright registration [s]hifts to the defendant the burden of proving the invalidity of the copyright and there the burden rests, unless the presumptions are rebutted.” Yurman v. Castaneda, 591 F. Supp. 2d at 484. Accordingly, Defendant has the burden to prove that Plaintiff’s copyright is invalid. Yurman v. PAJ, Inc., 262 F.3d at 109. Defendant must present “evidence in the record that casts doubt on the question.” Yurman v. Castaneda, 591 F. Supp. 2d at 484. Because at issue is the registration for a collective work, as discussed in Plaintiff’s opposition to the first motion for summary judgment, the validity of the Registration must be examined based on whether the requirements for the registration of a collection were met, and not based on the copyrightability of the individual product.
Defendant’s motion does not address or seek to disturb Judge [name of Judge]’s prior ruling on the issue of whether the requirements for registration of a collection were met. Defendant does not specifically raise any issues concerning validity of the Registration for the Collection. As such, Defendant has pointed to no evidence in the record to cast doubt on the question of the copyright’s validity and has failed to meet its burden to rebut the presumption of prima facie validity.
Moreover, as discussed in the opposition memorandum to the first motion for summary judgment, the law in the Second Circuit is clear that a copyright infringement action for individual pre-existing works within a registered collection/compilation can be brought based on the registration for the whole. Accordingly, Plaintiff is entitled to protection of the individual Plaintiff Product pursuant to the Registration for the collection. “Where the owner of a copyright for a collective work also owns the copyright for a constituent part of that work, registration of the collective work is sufficient to permit an infringement action under § 411(a) for the constituent part.” Morris v. Business Concepts, Inc., 259 F.3d 65, 68 (2d Cir. 2001); see also 17 U.S.C. § 404. As such, even though Plaintiff did not register a separate copyright for the Plaintiff Product, it may sue for copyright infringement of the Plaintiff Product based on the prima facie valid copyright registration for the collective work.
CONCLUSION
For all of the foregoing reasons, including law of the case, inadmissibility of Defendant’s exhibits, the existence of numerous disputed issues of material fact, and Defendant’s failure to show any entitlement as a matter of law to summary judgment, Defendant’s second motion for summary judgment should be denied.
Dated: [date]
Respectfully submitted,
[names and addresses of Counsel for Plaintiff]
Attorneys for Plaintiff [name of Plaintiff]