Student Lifeline-Decision Re_partial Summary Judgment_change Venue

UNITED STATES DISTRICT COURTEASTERN DISTRICT OF NEW YORK-----------------------------------XSTUDENT LIFELINE, INC.,

Plaintiff,

-against- MEMORANDUM & ORDER04-CV-5484(JS)(JO)

THE SENATE OF THE STATE OF NEW YORK, JOSEPH L. BRUNO, JIM ALESI, MICHAELA.L. BALBONI, JOHN A. DEFRANCISCO, CHARLES J. FUSCHILLO, KENNETH P.LAVALLE, JOSEPH E. ROBACH, MARY LOU RATH, STEPHEN M. SALAND, MARTIN J.GOLDEN, JOHN J. FLANAGAN, KEMP HANNON,and NEW YORK STATE SENATORS, “JOHN DOE” and “JANE DOE,” being the fictitious names of other Senate members, presentlyunknown to claimant, all individually and in their respective capacities asNew York State Senators,

Defendants.------------------------------------X

Appearances:For Plaintiff: John A. Dalley, Esq.

225 Broadway, Suite 3800New York, New York 10007

For Defendants: Dorothy O. Nese, Esq.Attorney General of the State of New York200 Old Country Road, Suite 460Mineola, New York 11501

SEYBERT, District Judge:

INTRODUCTION

Pending before the Court is Plaintiff’s motion for

summary judgment on its copyright infringement claim and

Defendants’ motion for consolidation and a change of venue. For

the reasons below, the Court grants in part Defendants’ motion and

DENIES in its entirety Plaintiff’s motion.

Case 2:04-cv-05484-JS -JO Document 192 Filed 02/07/07 Page 1 of 22

2

BACKGROUND

The relevant facts are taken from the parties Rule 56.1

statements. Plaintiff is the author, owner, and copyright claimant

of a work titled “Private Children’s ID Record” (“ID Record”).

(Plaintiff’s Rule 56.1 Statement (“Pl.’s Stmt.”) ¶ 1.) The ID

Record is also known as the “National Child ID Kit” and has

copyright registration number TX 6-029-829. (Id. at ¶ 1.)

Although the copyright registration was effective on October 13,

2004, the ID Record was created in 2001 and first published in the

United States in July, 2002. (Id. at ¶¶ 2-3.)

At least as early as August 2003, Defendants possessed

copies of the ID Record. (Id. at ¶ 4.) Plaintiff claims that

Defendants copied the ID Record to distribute for their own

purposes. (Id. at ¶ 5.) Defendants claim they did not copy the ID

Record, but they also argue that Plaintiff does not have a

protectible copyright in the ID Record because it is not original

and subsists in the public domain. (Defendants’ Rule 56.1 Counter-

Statement (“Defs.’ Stmt.”) ¶ F.)

PROCEDURAL BACKGROUND

On December 16, 2004, Plaintiff commenced this action,

claiming copyright and trademark infringement. On March 8, 2006,

Plaintiff filed an action in the Southern District of New York

against former New York State Senator Guy Vellella. On August 2,

2006, Plaintiff filed another action in the Eastern District,


3

naming an additional seven Defendants. On August 3, 2006,

Plaintiff filed a second complaint in the Southern District of New

York against an additional six Senators. And on August 10, 2006,

Plaintiff commenced an action against an additional ten Senators in

the Northern District of New York. Plaintiff also filed an action

against the New York State Senate in New York State’s Court of

Claims. (Defs.’ Mem. 1-4.) Lastly, Defendants and the New York

State Senate as an institution commenced an opposition proceeding

in the U.S. Patent & Trademark Office to oppose Plaintiff’s

registration of the ID Record and its accompanying logo, the Hand.

(Pl.’s Opp. 7-8.)

DISCUSSION

I. MOTION TO CONSOLIDATE AND CHANGE VENUE

The Court notes at the outset that Plaintiff does not

oppose consolidation of the two Eastern District actions.

Plaintiff, however, opposes that these actions be transferred to

the Northern District of New York. Because Plaintiff does not

oppose consolidation, the Court consolidates the two Eastern

District actions into one. The two matters with docket numbers

04-5484 and 06-3781 are consolidated, and the lead case shall be

04-5484.

The Court also notes that both parties would like this

Court to consolidate the actions brought in the Southern and

Northern districts with those actions in this district. However,


4

any motions to consolidate and change venues for the non-Eastern

District actions must be brought in their respective districts.

The Court cannot consolidate or change the venues of actions not

before this Court. Thus, this Order deals solely with the two

Eastern District actions before the Court and whether venue

properly lies in this District. Accordingly, the Court now turns

to Defendants’ motion to transfer these two cases to the Northern

District of New York.

A. Applicable Law For A Change In Venue

28 U.S.C. § 1404 governs when a court can transfer

actions to a different venue.

(a) For the convenience of parties and witnesses, in theinterest of justice, a district court may transfer anycivil action to any other district or division where itmight have been brought.(b) Upon motion, consent or stipulation of all parties,any action, suit or proceeding of a civil nature or anymotion or hearing thereof, may be transferred, in thediscretion of the court, from the division in whichpending to any other division in the same district.

28 U.S.C. § 1404.

The goal of the above-cited statute “is to prevent waste

of time, energy and money and to protect litigants, witnesses and

the public against unnecessary inconvenience and expense.” Laumann

Mfg. Corp. v. Castings USA, Inc., 913 F. Supp. 712, 720 (E.D.N.Y.

1996) (citing Van Dusen v. Barrack, 376 U.S. 612, 11 L. Ed. 2d 945,

84 S. Ct. 805 (1964)). The Court must first decide if the actions

could have been brought in the Northern District of New York. If


5

it could be validly brought in the Northern District, then the

court must next decide whether “the convenience of the parties and

witnesses” and “the interest of justice” weigh in favor of

transferring to the proposed district. Id. at 720.

The moving party has the “burden to clearly establish

that a transfer is appropriate and that the motion should be

granted.” Id. “The moving party must support the motion with an

affidavit containing detailed factual statements explaining why the

transferee forum is more convenient, including the potential

principal witnesses expected to be called and a general statement

of the substance of their testimony.” Id. (quoting Modern Computer

Corp. v. Hsi Ma, 862 F. Supp. 938, 947-48 (E.D.N.Y. 1994)).

A court must also review a number of factors before

transferring a case to another district. None individually are

dispositive, however. A court should not change a plaintiff’s

choice of forum unless the following factors weigh heavily in

defendant’s favor:

(1) convenience of the parties, (2) convenience of thewitnesses, (3) relative means of the parties, (4) locusof operative facts and relative ease of access to sourcesof proof, (5) attendance of witnesses, (6) weightaccorded a plaintiff’s choice of forum, (7) calendarcongestion, (8) desirability of having case tried by aforum familiar with the substantive law to be applied,(9) practical difficulties, and (10) how best to servethe interest of justice, based on an assessment of thetotality of circumstances.

Id. (quoting Modern Computer Corp., 862 F. Supp. at 948).

B. Application


6

The Court begins its change-of-venue analysis with the

premise that the Plaintiff’s choice of forum should not be

disturbed unless the factor analysis weighs in Defendants’ favor.

Plaintiff is a small, closely held corporation organized in New

York State. (Declaration of Richard Signarino (“Signarino Decl.”)

¶ 3.) Plaintiff’s president and sole shareholder is Mr. Richard J.

Signarino. (Signarino Decl. ¶ 1.) Mr. Signarino also authored the

creative work at issue in this action and is a resident of the

Eastern District. (Pl.’s Opp. 5.) Accordingly, the Court finds

that the forum is convenient to Plaintiff.

As for whether Plaintiffs could have brought these two

actions in the Northern District, Defendants point out that all

Defendants in both actions sit as New York State Senators with

offices in Albany in the Northern District. Plaintiff does not

contest the validity of the alternative forum and has brought suit

in both the Northern and Southern Districts. Accordingly, the

Court finds that Plaintiff could have brought these two Eastern

District actions in the Northern District as well.

The Court thus moves to the factor analysis. In this

action, Plaintiff sues the Senate as well as twelve individual

Senators. In the related Eastern District action, an additional

seven Senators were sued for a total of nineteen individual

Senators being sued in the Eastern District. With this in mind,

the Court now turns to the list of factors annunciated in Laumann.


7

1. Convenience Of The Parties

The Court has already established that the Eastern

District is convenient to Plaintiff. Plaintiff’s sole shareholder

and president and author of the creative work is a resident of the

Eastern District. While defense counsel points out in her

affidavit that all nineteen Eastern District Defendants have

offices in the Northern District, only six of the Defendants can

claim that the Eastern District is an inappropriate venue. (Nese

Aff. ¶ 3.) The Eastern District thus is the most convenient venue

for Plaintiff and for most of the Defendants. Accordingly, the

Court finds that this factor weighs in favor of Plaintiff.

2. Convenience Of Witnesses

Defendants next claim that the Northern District is most

convenient for the non-party witnesses because the “overwhelming

majority of the non-party witnesses live, work and/or are employed”

in the Northern District. (Nese Aff. ¶ 3.) Some witnesses,

however, also reside in this District. (Id. ¶ 8.) And those non-

party witnesses have already been deposed. (Id.) Furthermore,

Defendants have not stated which of these witnesses would be

potential principal witnesses or what would be the substance of

their testimony. Laumann requires Defendants to provide this

information. See Laumann Mfg. Corp., 913 F. Supp. at 720.

Defense counsel merely anticipates that “many, if not

most of the as-yet unidentified, non-party witnesses who are or


8

were staff members of the seven Senator-Defendants in the related

case before this Court, may have relevant and material information

about these claims and/or defenses.” (Nese Aff. ¶ 10.) Plaintiff

does not indicate which of the seventeen witnesses already deposed

would be their “potential principal witnesses.” Laumann Mfg.

Corp., 913 F. Supp. at 720. Defendants also state only what these

witnesses “may” testify about. (Nese Aff. ¶ 8.)

Without more information, the Court cannot say that the

Eastern District is less or more convenient for the non-party

witnesses. The Court cannot discern how many of the seventeen

witnesses would be required at a trial or for how long - nor should

the Court have to - the burden is on Defendants to establish that

the Northern District is the appropriate venue. Accordingly, the

Court finds that this factor does not weigh in favor of Defendants

or Plaintiffs.

3. Relative Means Of The Parties

Defendants claim that New York State taxpayers are paying

to defend this action. (Defs.’ Mem. 14.) Defendants argue that

keeping these two actions in this District would strain the public

fisc much more than transferring them to the Northern District.

Litigation in just one district would result in less of a financial

strain on the state fisc. (Nese Aff. ¶ 11.) However, this problem

can also be avoided if the two actions in the Northern and Southern

districts were transferred to the Eastern District.


9

The Court also must consider Plaintiff’s financial means.

Plaintiff is a small, closely held corporation with gross annual

revenue of approximately 1.5 million dollars for the last five

years. This amount of revenue is not exactly small; Plaintiff,

however, has demonstrated that its sole shareholder has incurred

personal debt through his life insurance policy, home equity loans,

and other personal resources. (Signarino Aff. ¶ 4; Ex. A.)

Plaintiff has also shown willingness to forego the

actions in the Northern District if it means keeping the venue in

the Eastern District. If the Court transferred these actions to

the Northern District, the cost to Plaintiff would be so high that

Plaintiff would likely not be able to afford the litigation costs

in the Northern District. To avoid such a result, Plaintiff is

willing to discontinue the Northern District action to avoid

transfer of these actions to that District. (Pl.’s Opp. 8.)

Accordingly, the Court finds that the relative means of

the parties weighs in favor of Plaintiff litigating these two

actions in the Eastern District.

4. Locus Of Operative Facts And Relative Ease OfAccess To Sources Of Proof

As for the locus of operative facts and access to sources

of proof, Defendants claim that most of the infringing activities

took place in Albany in the Northern District. (Nese Aff. ¶ 12.)

Senate employees designed and revised the Senate’s child

identification brochures in Albany. Printing, shipping, and


10

processing of orders occurred in Albany. And many of the documents

at issue are stored in the Senate’s print shop in Albany.

Notwithstanding, this factor does not appear to weigh

heavily in Defendants’ favor. While some of the infringing conduct

occurred in Albany, Plaintiff contends that Defendants distributed

the infringing kits throughout all three districts. Moreover, most

of the Defendants that had prior agreements with Plaintiff are in

this District. (Pl.’s Opp. 6-7.) Lastly, the “subject matter is

creative work –- intellectual property –- and so the suit itself

has less natural connection to any particular forum, leaving the

convenience of the parties to be the primary consideration.” Gross

v. BBC, 386 F.3d 224, 233 (2d Cir. 2004).

5. Attendance Of Witnesses

Defendants again point out that the overwhelming majority

of Defendants and witnesses maintain residences and work in the

Northern District. Defendants also point out that most of the

depositions in this case have taken place in Albany. Thus, a trial

in the Northern District would be least burdensome on the

Defendants and witnesses.

But the Court fails to see how this will prohibit the

attendance of the witnesses. While it may be inconvenient,

burdensome, or expensive, Defendants do not indicate that they or

any witnesses will be physically unable to attend a trial in the

Eastern District. And as we are dealing only with the Defendants


11

in the Eastern District actions, most of those Defendants are

located within the district. This seems to weigh more heavily in

favor of the Eastern District as the most appropriate venue.

6. Weight Accorded A Plaintiff’s Choice Of Forum

As already established, the Court gives great weight to

Plaintiff’s choice of forum. Plaintiff’s choice of forum should

not be disturbed unless this factor analysis weighs heavily in

Defendants’ favor. Further, the Court already pointed out that

Plaintiff is a corporation whose sole shareholder and owner resides

in the Eastern District. This district is most convenient for

Plaintiff. The Court has already addressed Defendants’ arguments

in this regard and rejects them again.

7. Calendar Congestion

Calendar congestion is not an issue in this Court and the

Eastern District. In fact, discovery is scheduled to be completed

by January 31, 2007. All discovery has been conducted under the

guidance of Magistrate Judge James Orenstein, sitting in the

Eastern District. On the other hand, a trial would not occur in

the Northern District for at least another year. (Defs.’ Mem. 15.)

Accordingly, the Court finds that this factor does not weigh

heavily in favor of Defendants.

8. Desirability Of Having Case Tried By A ForumFamiliar With The Substantive Law To Be Applied

The Court finds that this factor weighs more heavily in

favor of the Eastern District. Defendants simply conclude that


12

this factor weighs equally among all the different districts.

However, this Court and Magistrate Judge Orenstein have handled

this case from the beginning. As pointed out earlier, the

Magistrate has overseen most of the discovery, which is to be

completed at the end of January 2007. Not only is the Eastern

District familiar with the substantive law to be applied, it is

quite familiar with the parties and the facts of this case.

9. Practical Difficulties

Defendants reiterate the same issues for this factor as

for the others. Litigating five separate actions in three

different districts is formidable: the cost to transport numerous

Defendants, witnesses, and documents to the Eastern District will

be prohibitive.

The Court, however, has already suggested that the

parties move to transfer the other actions to this District in

which discovery is about to close. Thus, only this district will

be involved. Further, Plaintiff is willing to forego the action in

the Northern District. As for the cost of transporting people and

documents, Defendants have not indicated which of the witnesses are

their primary witnesses that will have to be transported.

Accordingly, the Court finds this factor does not weigh in favor of

Defendants.

10. How Best To Serve The Interest Of Justice, Based OnAn Assessment Of The Totality Of Circumstances

Defendants state the same arguments already rejected by


13

this Court. Accordingly, the Court finds this factor does not

weigh in favor of Defendants. For the reasons stated above, the

Court consolidates the two Eastern District actions and REJECTS

Defendants’ motion to transfer venue of these actions to the

Northern District of New York.

II. PLAINTIFF’S MOTION FOR PARTIAL SUMMARY JUDGMENT

A. Standard Of Review

A district court may properly grant summary judgment only

“if the pleadings, depositions, answers to interrogatories, and

admissions on file, together with any 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). The burden of proof is on the moving party to show

no genuine issue of material fact exists. See Gallo v. Prudential

Residential Servs., L.P., 22 F.3d 1219, 1223 (2d Cir. 1994)(citing

Heyman v. Commerce & Indus. Ins. Co., 524 F.2d 1317, 1320 (2d Cir.

1975)). “[A]ll ambiguities must be resolved and all inferences

drawn in favor of the party against whom summary judgment is

sought.” Id. (citing Eastway Constr. Corp. v. City of New York,

762 F.2d 243, 249 (2d Cir. 1985)).

Although the court must construe all evidence in the non-

moving party’s favor, a party opposing summary judgment may not

rely on conclusory allegations or unsubstantiated speculation. See

Fujitsu Ltd. v. Federal Express Corp., 247 F.3d 423, 428 (2d Cir.


14

2001). To defeat a motion for summary judgment, the non-moving

party must show a “‘genuine issue for trial.’” Anderson v. Liberty

Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 91 L. Ed. 2d 202

(1986)(quoting First Nat’l Bank v. Cities Serv. Co., 391 U.S. 253,

288, S. Ct. 1575, 20 L. Ed. 2d 569 (1968)). Within this framework,

the Court addresses the present summary judgment motion.

B. Plaintiff’s Motion For Summary Judgment OnIts Copyright Infringement Claim

Plaintiff argues that it is entitled to summary judgment

as a matter of law on its copyright infringement claim under the

Copyright Act of 1976 (“Copyright Act”). The Copyright Act gives

copyright owners a bundle of exclusive rights, such as the right to

“reproduce the copyrighted work in copies” and “to prepare

derivative works based upon the copyright work.” 17 U.S.C. § 106.

To establish a prima facie case of copyright infringement, a

plaintiff must prove “(1) ownership of a valid copyright, and (2)

copying of constituent elements of the work that are original.”

Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340,

361, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991).

The second element of a copyright infringement claim

requires that a plaintiff show (a) that his work was actually

copied and (b) that the copying is an “improper and unlawful

appropriation.” Castle Rock Entm’t, Inc. v. Carol Publ’g Group,

Inc., 150 F.3d 132, 137 (2d Cir. 1998). Actual copying is

established by either “direct evidence of copying or . . . indirect


15

evidence, including access to the copyrighted work, similarities

that are probative of copying between the works, and expert

testimony.” Id. (citations and internal quotation marks omitted).

A plaintiff then must demonstrate “the copying was improper or

unlawful by showing that the second works bears substantial

similarity to protected expression in the earlier work.” Id.

1. Valid Copyright

Plaintiff claims that its copyright registration

certificate issued by the Copyright Office is prima facie evidence

of a valid copyright. Defendants, however, argue that they have

rebutted any presumption of a valid copyright because they claim

that Plaintiff never obtained a valid copyright for the

identification forms. They also question the originality of

Plaintiff’s product.

“A certificate of registration from the United States

Register of Copyrights [is] prima facie evidence of the valid

ownership of a copyright.” Jorgenson v. Epic/Sony Records, 351

F.3d 46, 51 (2d Cir. 2003) (citing 17 U.S.C. § 410(c)). The

certificate creates a “rebuttable presumption that the work in

question is copyrightable.” Fonar Corp. v. Domenick, 105 F.3d 99,

104 (2d Cir. 1997) (citations and internal quotation marks

omitted). When a plaintiff proffers a certificate of copyright

registration, the burden is on the defendants to prove the

invalidity of the copyright. See id.


16

Defendants’ first argument is that Plaintiff never

sought and received copyright protection for the i.d. form, only

for the front and back covers of the Kit. In response, Plaintiff

has presented a certificate from the U.S. Copyright Office with a

color photocopy of what is deposited there. The work is entitled

“Private Children’s ID Record,” and the Copyright Office has

stamped the second and third pages of the ID Record - not just the

front and back covers of the ID Record. (Signarino Reply Decl. Ex.

B.) The Court finds that this evidence suffices to reject

Defendants’ argument that only the front and back covers of the Kit

are protected under a valid copyright.

This evidence also suffices for this Court to reject

Defendants’ argument that Plaintiff cannot claim the ID Record is

a derivative work of its Coloring Book, which is copyright

protected. The ID Record has its own copyright registration

number: TX 6-029-829. (Id.) The Coloring Book has its own

copyright registration number: TX 3-632-327. (Defs. Opp. 10.)

Each of these documents has its own valid copyright registration

certificate. Accordingly, the Court rejects Defendants’ first

argument.

Defendants’ second argument is that questions of fact

exist about the actual creation and ownership of Plaintiff’s

copyright registration. (Defs.’ Opp. 11-13.) Defendants argue

that Plaintiff rapidly submitted documents to the U.S. Copyright


17

Office and knowingly and purposefully omitted the name of the

author of Plaintiff’s student identification form. However, on

October 13, 2004, Plaintiff registered the ID Record and indicated

that Student Lifeline, Inc. was the author and the work was “work

made for hire.” Subsequent documents indicated that the work was

not work for hire and that Signarino was the author of the work.

Defendants also raise issue with the fact that Signarino

testified in a deposition that Mr. Louis Refano (“Refano”) assisted

him in the creation of the child identification form. Defendants

contend that this creates an issue of fact as to who actually

authored the work. Lastly, Defendants claim that Signarino gave

inconsistent testimony as to the exact dates of creation and first

publication for the ID Record.

Defendants can rebut the presumption of the validity of

Plaintiff’s copyright registration when “other evidence in the

record casts doubt on the question,” in instances of fraud on the

Copyright Office, when work has been “copied from the public

domain,” or when the work is a “non-copyrightable utilitarian

article.” Fonar Corp., 105 F.3d at 104-05. In instances of fraud,

a defendant must present “proof of deliberate misrepresentation.”

Id.

The Court cannot say that the misstatements Defendants

point out are acts of fraud that rebut the presumption of validity

for Plaintiff’s copyright registration. First, Plaintiff remedied


18

the omission of the author of the ID Record when it registered the

ID Record in October 2004, listing Student Lifeline, Inc., as

author. Second, Defendants do not present any proof that Plaintiff

intentionally misrepresented that the work was for hire or not for

hire. Third, the fact that subsequent documents list Richard

Signarino as the author is immaterial in light of the fact that

Signarino is Plaintiff’s owner and sole shareholder. Fourth,

Refano submitted an affidavit, indicating that he is one of

Plaintiff’s employees and his discretion in designing the ID Record

was “minimal.” (Refano Decl. ¶¶ 1, 7.) Furthermore, Refano does

not claim to be an author of the work; the Court fails to see why

Defendants should raise the issue.

Lastly, Defendants doubt the validity of Plaintiff’s

copyright registration because Signarino inconsistently testified

as to when exactly he created and first published the ID Record.

Defendants cite to Exhibit B, entitled “Signarino Deposition.”

However, a review of Defendants’ Exhibit does not present any

inconsistent testimony as to when Signarino first created the ID

Record or when it was first published. If anything, Signarino

indicates that he came up with the idea for the ID Record while he

was working for the FBI and designed it in the latter part of 2001.

(Defs. Opp. Ex. B, Signarino Dep. 622-25, 638.) The Court fails to

see any inconsistencies, or more importantly, any relevant or

material inconsistencies.


19

Thus, the Court finds that Defendants’ second argument

does not rebut the presumption of validly attached to Plaintiff’s

copyright registration certificate. Plaintiff has established the

first element of its prima facie case of copyright infringement.

Plaintiff has a valid copyright.

2. Originality

The third argument Defendants raise in regard to

Plaintiff’s copyright surrounds the originality of Plaintiff’s

product. (Defs.’ Opp. 13-15.) Defendants contend that Signarino

saw several identification kits before creating his own; Defendants

claim that Plaintiff copied from the public domain. Signarino,

however, could not identify all of the kits he was inspired by when

he created his own ID kit. Signarino apparently examined other

kits in the marketplace to see how he may improve his own kit.

Lastly, Defendants argue that Brochure 190 and Brochure 267 are so

familiar that it renders nonsensical Plaintiff’s contention that

only Brochure 267 infringes upon Plaintiff’s copyright.

The sine qua non of copyright is originality. To qualifyfor copyright protection, a work must be original to theauthor. Original, as the term is used in copyright,means only that the work was independently created by theauthor (as opposed to copied from other works), and thatit possesses at least some minimal degree of creativity.To be sure, the requisite level of creativity isextremely low; even a slight amount will suffice. Thevast majority of works make the grade quite easily, asthey possess some creative spark, no matter how crude,humble or obvious it might be. Originality does notsignify novelty; a work may be original even though itclosely resembles other works so long as the similarityis fortuitous, not the result of copying. . . .


20

Originality is a constitutional requirement. . . . Themere fact that a work is copyrighted does not mean thatevery element of the work may be protected. . . .[A]ccordingly, copyright protection may extend only tothose components of a work that are original to theauthor.

Feist Publ’ns, 499 U.S. at 345-46, 348 (citations and internal

quotations marks omitted).

“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). On a

summary judgment motion, this Court cannot conclude from competing

evidence whether a work is original or not. “A reasonable

factfinder, presented with these materials, could find either the

presence or absence of the degree of originality required to confer

copyrightability.” Id. (quoting Ulloa v. Universal Music & Video

Distrib. Corp., 303 F. Supp. 2d 409, 413-13 (S.D.N.Y. 2004).

Plaintiff contends that it has many original aspects of

the ID Record that are protected: the way Plaintiff has selected

and arranged the data categories in the ID Record, its textual and

graphical elements, and certain language located on the rear cover

of the ID Record. (Pl.’s Mem. 16-17.) In support, Plaintiff

submits various children’s identification kits created by

Plaintiff’s competitors. (Signarino Decl. Exs. D-I.)

Defendants argue that questions of fact exist as to the

originality of Plaintiff’s ID Record. Signarino testified that he

saw other kits and wanted to improve upon them. Defendants also


21

argue that one of the supposed “original” components of Plaintiff’s

work is the section on children’s favorites. But Defendants claim

that is not original at all. Defendants also claim that none of

the elements of the ID Record are original; most were copied from

the public domain and/or other kits available in the marketplace.

In Vargas, the defendants made a similar argument. The

Vargas defendants argued that many works existed that were very

similar to the plaintiffs’ work, and so plaintiff’s work could not

be original. The Vargas plaintiffs countered that their work was

not similar to other works and was independently created. The

Vargas court noted that “a work may be original even though it

closely resembles other works so long as the similarity is

fortuitous, not the result of copying.” Vargas, 418 F. Supp. 2d at

373 (quoting Ulloa, 303 F. Supp. 2d 409). Notwithstanding, the

Vargas court passed on the question of originality because it found

that a question of fact existed. See id.

After reviewing the competing kits, the ID Record, and

the Defendants’ brochures, this Court cannot decide as a matter of

law whether Plaintiff’s ID Record was original. This is a question

of fact for a jury to decide. Competing evidence exists - albeit

barely - as to whether the ID Record is original to Plaintiff or

whether Plaintiff’s work is copied from other kits in the

marketplace. Accordingly, the Court must DENY Plaintiff’s motion

for summary judgment as it cannot decide as a matter of law whether


22

Plaintiff’s ID Record had originality. The Court need not address

the other elements of the copyright infringement claim.

CONCLUSION

Based on the above, the Court GRANTS in part and DENIES

in part Defendants’ motion for consolidation and change of venue.

The Court consolidates the two Eastern District cases and finds the

Eastern District to be the appropriate venue for those two cases.

The Court DENIES Plaintiff’s motion for summary judgment on its

copyright infringement claim. Upon the Magistrate’s approval of

the joint pre-trial order, the parties are to request a pre-trial

conference before this Court.

SO ORDERED.

/s/ JOANNA SEYBERT Joanna Seybert, U.S.D.J.

Dated: Central Islip, New YorkFebruary 7, 2007


Documents

Student Lifeline-Decision Re_partial Summary Judgment_change Venue