Markham Concepts, Inc. v. Hasbro, Inc.

RESPONSE In Opposition to 241 MOTION to Amend/Correct 240 Findings of Fact & Conclusions of Law

D.R.I.March 8, 2019

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF RHODE ISLAND MARKHAM CONCEPTS, INC., SUSAN GARRETSON, and LORRAINE MARKHAM, individually and in her capacity as Trustee of the Bill and Lorraine Markham Exemption Trust and the Lorraine Markham Family Trust, Plaintiffs, v. HASBRO, INC., REUBEN KLAMER, DAWN LINKLETTER GRIFFIN, SHARON LINKLETTER, MICHAEL LINKLETTER, LAURA LINKLETTER RICH, DENNIS LINKLETTER, THOMAS FEIMAN, in his capacity as co-trustee of the Irvin S. and Ida Mae Atkins Family Trust, ROBERT MILLER, in his capacity as co-trustee of the Irvin S. and Ida Mae Atkins Family Trust, and MAX CANDIOTTY, in his capacity as co-trustee of the Irvin S. and Ida Mae Atkins Family Trust. Defendants. Case No. 1:15-cv-419-S-PAS REUBEN KLAMER, Counterclaim Plaintiff, v. MARKHAM CONCEPTS, INC., SUSAN GARRETSON and LORRAINE MARKHAM, Counterclaim-Defendants. REUBEN KLAMER’S OPPOSITION TO PLAINTIFFS’ MOTION TO AMEND THE COURT’S JANUARY 25, 2019 FINDINGS OF FACT AND CONCLUSIONS OF LAW Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 1 of 20 PageID #: 8372 [i] TABLE OF CONTENTS Page I. INTRODUCTION ...............................................................................................................1 II. ARGUMENT .......................................................................................................................3 A. Plaintiffs Have Not Established Any “Extraordinary Circumstances” That Would Warrant Amendment Or Reversal Of The Court’s January 25, 2019 Findings Of Fact And Conclusions Of Law ............................................................3 1. Relief Under Federal Rules Of Civil Procedure 52(b) And 59(e) Is An Extraordinary Remedy ...........................................................................3 2. The Court Properly Followed Binding First Circuit Precedent In Applying The Instance-And-Expense Test ..................................................4 3. The Court Considered Plaintiffs’ CCNV-related arguments .......................8 B. The Decision Should Not Be Made Appealable ....................................................10 1. Entry Of Final Judgment Under Fed. R. Civ. P. 54(b) Is Inappropriate Given The Equities, Including Mr. Klamer’s Advanced Age And Declining Health .......................................................10 2. The Decision Should Not Be Certified For Interlocutory Appeal Under 28 U.S.C. § 1292(b) ........................................................................12 III. CONCLUSION ..................................................................................................................14 Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 2 of 20 PageID #: 8373 [ii] TABLE OF AUTHORITIES Page(s) Cases Atrion Networking Corp. v. Marble Play, LLC, 31 F. Supp. 3d 357 (D.R.I. 2014) ............................................................................................13 Bank of New York v. Hoyt, 108 F.R.D. 184 (D.R.I. 1985) ............................................................................................10, 11 Brattleboro Publishing Co. v. Winmill Publishing Corp., 369 F.2d 565 (2d Cir. 1966).......................................................................................................6 Camacho v. Puerto Rico Ports Auth., 369 F.3d 570 (1st Cir. 2004) ....................................................................................................13 Caraballo-Seda v. Municipality of Hormigueros, 395 F.3d 7 (1st Cir. 2005) ........................................................................................................13 Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave., 284 F.3d 302 (1st Cir. 2002) ....................................................................................................12 Castro v. United States, C.A. No. 06-393 S, 2007 WL 2955638 (D.R.I. Oct. 9, 2007) ...................................................4 Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989) ......................................................................................................... passim Curtiss–Wright Corp. v. Gen. Elec. Co., 446 U.S. 1 (1980) .....................................................................................................................10 Easter Seal Soc. for Crippled Children and Adults of La., Inc. v. Playboy Ent., 815 F.2d 323 (5th Cir. 1987) .....................................................................................................7 Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149 (2d Cir. 2003)...............................................................................................6, 7, 8 Feliciano-Hernandez v. Pereira-Castillo, 663 F.3d 527 (1st Cir. 2011) ..................................................................................................3, 8 Forward v. Thorogood, 985 F.2d 604 (1st Cir. 1993) ............................................................................................ passim Gonzalez Figueroa v. J.C. Penney Puerto Rico, Inc., 568 F.3d 313 (1st Cir. 2009) ....................................................................................................10 Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 3 of 20 PageID #: 8374 [iii] Green Tree Servicing, LLC v. United States, 783 F. Supp. 2d 243 (D.N.H. 2011) .......................................................................................1, 6 John’s Insulation, Inc. v. L. Addison & Assocs. Inc., 156 F.3d 101 (1st Cir. 1998) ....................................................................................................12 Kersey v. Dennison Mfg. Co., 3 F.3d 482 (1st Cir. 1993) ........................................................................................................10 Loinaz v. EG & G, Inc., 910 F.2d 1 (1st Cir. 1990) ........................................................................................................11 M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486 (11th Cir. 1990) .......................................................................................7, 8, 13 Murray v. Gelderman, 566 F.2d 1307 (5th Cir. 1978) ...................................................................................................6 Nat’l Ctr. for Jewish Film v. Goldman, 943 F. Supp. 113 (D. Mass. 1996) .......................................................................................5, 13 Nat’l Metal Finishing Co. v. Barclays American/Commercial, Inc., 899 F.2d 119 (1st Cir. 1990) ......................................................................................................4 Palandjian v. Pahlavi, 782 F.2d 313 (1st Cir. 1986) ....................................................................................................13 Palmer v. Champion Mortg., 465 F.3d 24 (1st Cir. 2006) ....................................................................................................3, 4 Panichella v. Pa. R.R. Co., 252 F.2d 452 (3d Cir. 1958)...............................................................................................10, 11 Picture Music, Inc. v. Bourne, Inc., 457 F. 2d 1213 (2d Cir. 1972)....................................................................................................7 Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549 (2d Cir. 1995).........................................................................................................7 Pona v. Wall, No. C.A. 13-491 S, 2015 WL 792700 (D.R.I. Feb. 25, 2015) ...................................................3 Quinn v. City of Boston, 325 F.3d 18 (1st Cir. 2003) ................................................................................................10, 12 Ruiz v. Rhode Island, No. CV 16-507 WES, 2018 WL 3647204 (D.R.I. Aug. 1, 2018) ..........................................3, 4 Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 4 of 20 PageID #: 8375 [iv] Sasnett v. Convergent Media Sys, Inc., No. C.A. 95–12262–NG, 1997 WL 33142149 (D. Mass. Aug. 29, 1997) ..........................5, 13 Shrader v. CSX Transp. Co., 70 F.3d 255 (2d Cir. 1995).........................................................................................................9 Siegel v. Nat’l Periodical Publ’n, Inc., 508 F.2d 909 (2d Cir. 1974).......................................................................................................4 Spiegel v. Trustees of Tufts Coll., 843 F.2d 38 (1st Cir. 1988) ..........................................................................................10, 11, 12 Twentieth Century Fox Film Corp. v. Entertainment Distributing, 429 F.3d 869 (9th Cir. 2005) .................................................................................................7, 8 Village West Assocs. v. Rhode Island Hous. & Mortg. Fin. Corp., 641 F. Supp. 2d 135 (D.R.I. 2009)...........................................................................................10 Walden v. City of Providence, 450 F. Supp. 2d 172 (D.R.I. 2006)...........................................................................................10 Statutes 17 U.S.C. § 101 ................................................................................................................................5 28 U.S.C. § 1292(b) .............................................................................................................2, 12, 13 1909 Copyright Act......................................................................................................................4, 8 1976 Copyright Act..............................................................................................................1, 5, 6, 7 Other Authorities 3 Nimmer & Nimmer, § 9.03[D] .....................................................................................................8 8A C. Wright & A. Miller, Federal Practice and Procedure § 2142 (1970) ................................11 Federal Rule of Civil Procedure 52(b) ...............................................................................2, 3, 4, 10 Federal Rule of Civil Procedure 54(b) ...........................................................................2, 10, 11, 12 Federal Rule of Civil Procedure 59(e) ...................................................................................3, 4, 10 Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 5 of 20 PageID #: 8376 [1] Defendant and Counterclaim Plaintiff Reuben Klamer (“Klamer”) respectfully submits his opposition to the February 22, 2019, Motion (“Motion”) by Plaintiffs and Counterclaim- Defendants Markham Concepts, Inc., Susan Garretson, and Lorraine Markham (collectively, the “Markham Parties” or “Plaintiffs”) to Amend the Court’s January 25, 2019 Findings of Fact and Conclusions of Law (Dkt. No. 241). I. INTRODUCTION Plaintiffs have not established any “extraordinary circumstances” that would warrant amendment or reversal of the Court’s January 25, 2019 Findings of Fact and Conclusions of Law (“Decision”). Indeed, the Court properly followed binding First Circuit precedent in applying the instance-and-expense test, and the Decision makes plain that the Court considered and rejected Plaintiffs’ CCNV-related arguments—which Plaintiffs themselves acknowledge making “throughout the litigation.” Motion at 1. The Court did not commit any legal error, much less manifest error, when it followed the binding precedent of Forward v. Thorogood, 985 F.2d 604 (1st Cir. 1993). See, e.g., Green Tree Servicing, LLC v. United States, 783 F. Supp. 2d 243, 258 (D.N.H. 2011) (“This court is bound to follow controlling circuit precedent, regardless of what it … thinks of it, and it certainly cannot be a ‘manifest error of law’ to do so.”) The heart of Plaintiffs’ argument is based on a misreading of Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989) (“CCNV”). That case, unlike this one, dealt with the definition of an “employee” under the 1976 Copyright Act. Unfortunately for Plaintiffs, the Forward instance-and-expense test is and remains controlling law in the First Circuit. Plaintiffs cite no post-CCNV cases from within this Circuit that have declined to apply the instance-and- expense test under the 1909 Act and Klamer is unaware of any such decision. Plaintiffs also fail to cite a single First Circuit decision holding that CCNV abrogated the instance-and-expense test for cases arising under the 1909 Act. (There is none.) Plaintiffs’ citation to out-of-Circuit authority cannot establish that the Court committed a manifest error of law by rejecting Plaintiffs’ CCNV-related arguments and applying the instance-and-expense test. Accordingly, no extraordinary circumstances are present here that would support the granting of relief under Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 6 of 20 PageID #: 8377 [2] Federal Rules of Civil Procedure 52(b) or 59(e). Plaintiffs also have not established that circumstances exist such that the Court should ignore the “strong judicial policy disfavoring piecemeal appellate review” by entering final judgment pursuant to Federal Rule of Civil Procedure 54(b). To the contrary, there is just reason for delaying entry of final judgment so that the parties may conduct a trial of the remaining claims with live testimony from Mr. Klamer. Mr. Klamer is 96 years old and of declining health. It is a long-established principle that testimony by deposition is less desirable than live, oral testimony. The remaining claims can be set for trial within a matter of months, as there is little discovery left to conduct regarding those claims. Mr. Klamer is available to testify in person now, but that may not remain true if the Court directs entry of judgment and proceedings are stayed pending resolution of appeal as Plaintiffs request. Finally, Plaintiffs have not established any “exceptional circumstances” that would justify interlocutory certification under 28 U.S.C. § 1292(b). There is no “substantial ground for a difference of opinion” as to whether the “instance-and-expense” test applies to determine copyright ownership under the 1909 Act. The First Circuit so held in Forward, and district courts in this Circuit have recognized that the instance-and-expense test has been adhered to by the First Circuit. Additionally, the Second and Ninth Circuits both agree that the instance-and-expense test under the 1909 Act was not abrogated by CCNV and, contrary to Plaintiffs’ contention, the Eleventh Circuit has rendered no opinion as to the proper test under the 1909 Act. For these reasons, Klamer respectfully requests that the Court deny Plaintiffs’ Motion to amend the January 25, 2019, Findings of Fact and Conclusions of Law, and also deny Plaintiffs’ request for an early appeal. Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 7 of 20 PageID #: 8378 [3] II. ARGUMENT A. Plaintiffs Have Not Established Any “Extraordinary Circumstances” That Would Warrant Amendment Or Reversal Of The Court’s January 25, 2019 Findings Of Fact And Conclusions Of Law Plaintiffs’ Motion seeks amendment or reversal of the Court’s January 25, 2019 Findings of Fact and Conclusions of Law (“Decision”) based on an alleged “manifest error of law” under Federal Rules of Civil Procedure 52(b) and 59(e). According to Plaintiffs, the Court 1) incorrectly applied the instance-and-expense test in determining whether the Game of Life was a work-for-hire, and 2) did not address Plaintiffs’ argument that CCNV has effectively abrogated the instance-and-expense test. Motion at 6. Plaintiffs are wrong in both respects. The Court properly followed binding First Circuit precedent in applying the instance-and-expense test, and the Decision makes plain that the Court considered and rejected Plaintiffs’ CCNV-related arguments—which Plaintiffs acknowledge making “throughout the litigation.” Motion at 1. No extraordinary circumstances are present here that would support the granting of relief under Rule 52(b) or Rule 59(e). 1. Relief Under Federal Rules Of Civil Procedure 52(b) And 59(e) Is An Extraordinary Remedy Rules 52(b) and 59(e) share a “close relationship” and are analyzed similarly because the district court’s power is nearly identical under both provisions. Feliciano-Hernandez v. Pereira- Castillo, 663 F.3d 527, 536-37 (1st Cir. 2011)). This Court repeatedly has held that the “granting of a motion for reconsideration [under Rule 59(e)] is ‘an extraordinary remedy which should be used sparingly.’” Ruiz v. Rhode Island, No. CV 16-507 WES, 2018 WL 3647204, at *3 (D.R.I. Aug. 1, 2018) (Smith, J.) (quoting Palmer v. Champion Mortg., 465 F.3d 24, 30 (1st Cir. 2006)); Pona v. Wall, No. C.A. 13-491 S, 2015 WL 792700, at *1 (D.R.I. Feb. 25, 2015) (Smith, J.) (prevailing under Rule 59(e) “is an uphill battle; relief is available only in limited and rather extraordinary circumstances”). Further, “a Rule 59(e) motion is ‘not a promising vehicle for revisiting a party’s case and Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 8 of 20 PageID #: 8379 [4] rearguing theories previously advanced and rejected.’ Palmer, 465 F.3d at 30 (denying a plaintiff’s motion to reconsider that reiterated the same arguments and claimed the court ‘overlooked’ them). Ruiz, 2018 WL 3647204, at *3; see also Castro v. United States, C.A. No. 06-393 S, 2007 WL 2955638, at *1 (D.R.I. Oct. 9, 2007) (Smith, J.) (“[a] Rule 59(e) motion to amend or alter the judgment may not be used as a vehicle to re-litigate or rehash matters already decided by a court”) (citing Nat’l Metal Finishing Co. v. Barclays American/Commercial, Inc., 899 F.2d 119, 123 (1st Cir. 1990)). As Plaintiffs acknowledge, “Neither Rule [52(b) nor Rule 59(e)] allows parties to simply repeat arguments that were ‘considered and rejected’ in the initial findings.” Motion at 2. But that is exactly what Plaintiffs’ Motion does. It reiterates the same CCNV-related arguments that Plaintiffs made throughout the case, which the Court considered and rejected in the Decision. The Court should deny Plaintiffs’ request for extraordinary relief under Rules 52(b) and 59(e). 2. The Court Properly Followed Binding First Circuit Precedent In Applying The Instance-And-Expense Test The Court did not commit any legal error, much less manifest error, when it followed binding precedent and applied the First Circuit’s “instance-and-expense” test to determine whether the Game of Life was a work-for-hire under the 1909 Copyright Act. Forward v. Thorogood, 985 F.2d 604, 606 (1st Cir. 1993) (under the 1909 Copyright Act, a court will presume “copyright ownership in the commissioning party at whose ‘instance and expense’ the work was done”); see also Siegel v. Nat’l Periodical Publ’n, Inc., 508 F.2d 909, 914 (2d Cir. 1974) (the work-for-hire doctrine “is applicable … when the employee’s work is produced at the instance and expense of the employer … or, in other words, when the ‘motivating factor in producing the work was the employer who induced the creation ….’”). The heart of Plaintiffs’ argument is based on a misreading of the Supreme Court’s opinion in CCNV as holding that the instance-and-expense test is no longer good law under the 1909 Copyright Act. See Motion at 8. CCNV made no such holding. As explained in CCNV, under Section 62 of the 1909 Act, an “author” was defined to “include an employer in the case of Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 9 of 20 PageID #: 8380 [5] works made for hire.” CCNV, 490 U.S. at 743–744. “Because the 1909 Act did not define ‘employer’ or ‘works made for hire,’ the task of shaping these terms fell to the courts.” Id., at 744. Against this backdrop, lower courts developed tests such as the instance-and-expense test to determine the work-for-hire question. Id. In CCNV, however, the Supreme Court was presented with the question of the definition of an “employee” under the 1976 Copyright Act. Id., at 738. That Act, unlike the 1909 Act, provides two explicit definitions of a work for hire in 17 U.S.C. § 101 after Congress made extensive revisions to copyright law. Id. The Courts of Appeal had, pre-CCNV, recognized four different approaches to this question under the 1976 Act. Id., at 738– 739. The Supreme Court ultimately concluded that “the term ‘employee’ should be understood in light of the general common law of agency” and rejected the competing lower-court standards. Id., at 741. This holding applies only to the 1976 Act. The Supreme Court explicitly interpreted Section 101 of the Copyright Code—a provision that exists only in the 1976 Act. Id., at 739 (“The starting point for our interpretation of a statute is always its language.”). It was guided by Congress’s inclusion of new terms such as “scope of employment”—a term that does not appear in the 1909 Act—as suggestive of congressional “intent to incorporate the agency law definition.” Id., at 740. And it made extensive reference to the legislative history of the 1976 Act. Id., at 743–745 (acknowledging that the 1976 Act “almost completely revised existing copyright law”). Legislative history related to the 1976 Act has nothing to do with interpretation of the 1909 Act, enacted over six decades earlier. The reasoning underpinning the Supreme Court’s opinion on the 1976 Act in CCNV cannot be extrapolated to retroactively upend settled law related to the 1909 Act. The Forward instance-and-expense test is and remains controlling law in the First Circuit. Nat’l Ctr. for Jewish Film v. Goldman, 943 F. Supp. 113, 117 (D. Mass. 1996) (“The ‘instance and expense’ test has been adopted and adhered to by the First Circuit...”) (citing Forward); Sasnett v. Convergent Media Sys, Inc., No. C.A. 95–12262–NG, 1997 WL 33142149 at *8 n.12 (D. Mass. Aug. 29, 1997) (same). Indeed, Plaintiffs’ Motion cites no post-CCNV cases Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 10 of 20 PageID #: 8381 [6] from within this Circuit that have declined to apply the instance-and-expense test under the 1909 Act and Klamer is unaware of any such decision. Plaintiffs argue that the Court should have ignored the First Circuit’s binding, post-CCNV holding in Forward because the First Circuit allegedly did not consider or rule on the “impact of CCNV on the instance and expense test,” eliminating Forward’s precedential value. Motion at 10. Plaintiffs are wrong. See, e.g., Green Tree Servicing, 783 F. Supp. 2d at 258 (“This court is bound to follow controlling circuit precedent, regardless of what it . . . thinks of it, and it certainly cannot be a ‘manifest error of law’ to do so.”). That the First Circuit did not expressly discuss in Forward whether CCNV abrogated the instance-and-expense test does not support Plaintiffs’ argument that Forward lacks precedential value. The First Circuit was well aware of the CCNV decision when it adopted the instance-and- expense test four years later in Forward. Indeed, Forward cited CCNV in a footnote recognizing the difference in jurisprudence between the 1909 and 1976 acts: The Copyright Act of 1976 altered the works for hire doctrine so that only certain types of commissioned works qualify as works for hire, and then only if the parties have agreed in writing to treat it as such. See Community for Creative Non-Violence, 490 U.S. at 738, 109 S.Ct. at 2171. The [1976] Act’s provisions on works for hire operate prospectively and do not govern this case. Forward, 985 F.2d at 606, n.2. It was not this Court’s role to second-guess the First Circuit’s decision to adopt the instance-and-expense test in Forward, and the Court certainly did not commit “manifest error” by following First Circuit precedent—particularly when Forward is far from being an outlier. As the Court noted in its Decision (Dkt. No. 240 at 17), the First Circuit borrowed the instance-and-expense test from the Fifth and Second Circuits. See Forward, 985 F.2d at 606 (citing Murray v. Gelderman, 566 F.2d 1307 (5th Cir. 1978), and Brattleboro Publishing Co. v. Winmill Publishing Corp., 369 F.2d 565 (2d Cir. 1966)). Subsequently, the Second and Ninth Circuits expressly held that the instance-and-expense test is still good law under the 1909 Act. In Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149 (2d Cir. 2003), the Second Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 11 of 20 PageID #: 8382 [7] Circuit considered an identical argument to that made by the Markham Parties, i.e., that CCNV abrogated existing case law relating to the work-for-hire doctrine under the 1909 Act. The court declined to depart from its preexisting 1909 Act precedents and characterized CCNV thusly: Although the content of a Supreme Court opinion can provide a basis that permits us to reject a precedent of this Court without the need for in banc reconsideration, we conclude that the language in CCNV is an insufficient basis to warrant a panel’s disregard of two clear holdings of this court. CCNV was not concerned with the status of commissioned works under the 1909 Act. The language that mentions such works is a brief historical account. … In sum, because we agree with Judge Gee’s observation in [Easter Seal Soc. for Crippled Children and Adults of La., Inc. v. Playboy Ent., 815 F.2d 323, 330 n.13 (5th Cir. 1987)], we conclude that the historical review in CCNV, if dictum at all, is dictum of a weak variety, and not grounds to relieve us from our obligation to follow [Picture Music, Inc. v. Bourne, Inc., 457 F. 2d 1213 (2d Cir. 1972)] and [Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549 (2d Cir. 1995)]. Id., at 162–163 (citations omitted and emphasis added). The court in Hogarth proceeded to apply the instance-and-expense test to the facts at hand. The Ninth Circuit independently agreed. Twentieth Century Fox Film Corp. v. Entertainment Distributing, 429 F.3d 869, 878 (9th Cir. 2005) (“Second, the CCNV Court considered the meaning of ‘work-for-hire’ only under the 1976 Copyright Act. … No part of its decision rests on the meaning of the work-for-hire provision in the 1909 Act, rendering its commentary non-binding dicta.”) (emphasis added). The sole contrary case Plaintiffs cite does not support their argument regarding CCNV. In M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486 (11th Cir. 1990), the Eleventh Circuit directly addressed authorship of a work under the 1976 Copyright Act, not the 1909 Act. The Court there explicitly acknowledged that CCNV “defined the ‘work for hire’ doctrine under the 1976 Act” and “held that the ‘literal’ approach to the ‘work-for-hire’ doctrine was correct under the 1976 Act.” Id., at 1490–91 (emphasis added). The Eleventh Circuit rendered no opinion as to the proper test under the 1909 Act; rather, the Court reversed the district court’s reliance on the instance-and-expense test1 under the 1976 Act, as abrogated by CCNV and by statutory 1 M.G.B. refers to this test as the “insistence and expense” test.” Id., at 1490. Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 12 of 20 PageID #: 8383 [8] amendments to the Copyright Act. Id., at 1490. Plaintiffs’ citation to the Nimmer treatise is similarly unhelpful. Nimmer’s section on the work-for-hire concept includes an acknowledgment that “CCNV construed the 1976 Act” and, more specifically, “only the word ‘employee’ in the 1976 Act.” 3 Nimmer & Nimmer, § 9.03[D] at 9-32. When considering CCNV’s impact on 1909 Act jurisprudence, Nimmer opines on a theoretical application of CCNV to the particular facts of Hogarth. Nimmer concedes, however, that the Second Circuit in Hogarth ultimately disagreed with his perspective and upheld use of the instance-and-expense test to cases arising under the 1909 Act—as did the Ninth Circuit in Twentieth Century Fox Film Corp., 429 F.3d at 878). 3 Nimmer & Nimmer, § 9.03[D] at 9-33 to 9-34. In determining whether the Game of Life was a work-for-hire under the 1909 Copyright Act, this Court was (and is) obligated to follow First Circuit precedent. The First Circuit adopted the instance-and-expense test in Forward, and in the ensuing 26 years never has held that CCNV abrogated that test for cases arising under the 1909 Act. Plaintiffs’ citation to out-of-Circuit authority cannot establish that the Court committed a manifest error of law by applying the instance-and-expense test. 3. The Court Considered Plaintiffs’ CCNV-related arguments Plaintiffs argue that the Court failed to consider their argument that the instance-and- expense test is bad law. Motion at 7–8, but the record shows that Plaintiffs repeatedly presented this issue to the Court. A district court acts properly within its discretion “in refusing to reconsider arguments that the plaintiff had already made” in denying a motion to amend a judgment. Feliciano-Hernandez, 663 F.3d at 537. As Plaintiff acknowledge (Motion at 1, 7), they repeatedly argued “throughout this litigation” that the “instance and expense” test is not the proper test for determining whether a work is a work-for-hire under the Copyright Act of 1909 because it was abrogated by CCNV. See, e.g., Plaintiffs’ Pretrial Memorandum (Dkt. No. 152) at 10-11; Plaintiffs’ Posttrial Memorandum (Dkt. No. 218) at 9; Plaintiffs’ Response to Defendants’ Post Trial Memoranda, Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 13 of 20 PageID #: 8384 [9] (Dkt No. 229) at 18–19; Plaintiffs’ Final Conclusions of Law (Dkt. No. 231) at ¶¶ 39-43. Plaintiffs’ counsel brought the issue to the Court’s attention in closing argument at trial, and argued repeatedly—on largely the same grounds articulated in the Motion—that the instance- and-expense test no longer applied. See Trial Transcript Vol. V, 58:7–20, 60:2–10; 152:25– 153:15. Plaintiffs interpret the lack of direct reference to their CCNV-related arguments in the Decision as a failure by the Court to consider the issue. Not so. The Court cited binding First Circuit precedent extensively as it explained the applicability of the instance-and-expense test. See Dkt. No. 240 at 16-18. The Court also cited the Supreme Court’s decision in CCNV when it said that the instance-and-expense test originally arose because “[w]ithout definitional guidance from the statute, courts have had the task of tracing the term’s 1909 Act contours.” Id., at 17 (citing CCNV, 490 U.S. at 744). The Decision evidences that the Court did not fail to consider Plaintiffs’ CCNV-related arguments, but rather rejected them wholesale. Plaintiffs’ reliance on Shrader v. CSX Transp. Co., 70 F.3d 255 (2d Cir. 1995), is misplaced. In that case, the Second Circuit held that reconsideration may be warranted where “the moving party can point to controlling decisions … that the court overlooked—matters, in other words, that might reasonably be expected to alter the conclusion reached by the court.” Id., at 257 (emphasis added). Plaintiffs point to no controlling authority to support their CCNV- related arguments, such as a post-CCNV Supreme Court decision or First Circuit decision.2 The Second Circuit affirmed a district court’s discretionary decision to amend its judgment in Shrader because the moving party had introduced “additional relevant case law and substantial legislative history,” a measure by which Plaintiffs have fallen far short. Id. (emphasis added). Plaintiffs’ Motion is an attempt to receive a second (or third or fourth) bite at the apple on arguments that have already been considered and rejected by the Court. For all the above 2 Nor can Markham argue that the Court overlooked CCNV itself as controlling authority, as the Court cited CCNV in its conclusions of law. Dkt. No. 240 at 17. Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 14 of 20 PageID #: 8385 [10] reasons, the Court should deny Plaintiffs’ request to amend or reverse the Decision under Federal Rules of Civil Procedure 52(b) and 59(e). B. The Decision Should Not Be Made Appealable 1. Entry Of Final Judgment Under Fed. R. Civ. P. 54(b) Is Inappropriate Given The Equities, Including Mr. Klamer’s Advanced Age And Declining Health Under Federal Rule of Civil Procedure 54(b), “when multiple parties are involved, the court may direct entry of a final judgment as to one or more, but fewer than all, claims or parties only if the court expressly determines that there is no just reason for delay.” Fed. R. Civ. P. 54(b) (emphasis added). “In its critical role as the Rule 54(b) ‘dispatcher’ … the district court is to consider the strong judicial policy disfavoring piecemeal appellate review.” Kersey v. Dennison Mfg. Co., 3 F.3d 482, 487 (1st Cir. 1993); see also Spiegel v. Trustees of Tufts Coll., 843 F.2d 38, 42 (1st Cir. 1988) (“there is a long-settled and prudential policy against the scattershot disposition of litigation”). Entry of judgment under Rule 54(b) “is the exception, not the rule.” Village West Assocs. v. Rhode Island Hous. & Mortg. Fin. Corp., 641 F. Supp. 2d 135, 136 (D.R.I. 2009) (Smith, J.). Directing entry of judgment requires more than a “rote recital of Rule 54(b)’s talismanic phrase,” Quinn v. City of Boston, 325 F.3d 18, 26 (1st Cir. 2003), and should be “employed with great circumspection” given the disfavored view of piecemeal appeals. Gonzalez Figueroa v. J.C. Penney Puerto Rico, Inc., 568 F.3d 313, 318 n.3 (1st Cir. 2009). As this Court held in Walden v. City of Providence, 450 F. Supp. 2d 172 (D.R.I. 2006) (Smith, J.), Rule 54(b) “is designed to be used where the problem and circumstances are of an ‘exceptional nature,’ … in order to avoid some perceptible ‘danger of hardship or injustice though delay which would be alleviated by immediate appeal.’” Bank of New York [v. Hoyt], 108 F.R.D. [184,] 187 [(D.R.I. 1985)] (citations omitted). Moreover, “[i]t has been widely recognized that orders under Fed. R. Civ. P. 54(b) ‘should not be entered routinely or as a courtesy or accommodation to counsel.’” Bank of New York, 108 F.R.D. at 187 (citing Panichella v. Pa. R.R. Co., 252 F.2d 452, 455 (3d Cir. 1958); see also Curtiss–Wright Corp. v. Gen. Elec. Co., 446 U.S. 1, 10, 100 S.Ct. 1460, 64 L.Ed.2d 1 (1980)) (“Plainly, sound judicial administration does not require that Rule 54(b) requests be granted Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 15 of 20 PageID #: 8386 [11] routinely.”). Rather, Rule 54(b) “should be used only ‘in the infrequent harsh case.’” Panichella, 252 F.2d at 455. Id., at 174. In deciding whether there is “just reason” for delay, a court has wide discretion to conduct an “assessment of the equities.” Spiegel, 843 F.2d at 43. For at least three reasons, the equities here dictate that this matter should proceed at the district court level until all claims as to all parties have been resolved. First, Mr. Klamer is 96 years old and of declining health. Tactfully, it is a simple matter of expediency that the Court should prioritize preservation of the record by allowing testimony from the chief surviving percipient witness on the remaining claims. The Court has already had to go to great lengths to accommodate the advanced age of Mr. Klamer and other witnesses, such as by graciously agreeing to hold trial in Los Angeles.3 The Court’s ability to render a complete final judgment while the principal personal defendant is alive is more assured when the proceedings are allowed to continue rather than pausing for an appeal that realistically could take years. “The Federal Rules of Civil Procedure that allow the use of deposition testimony in place of live testimony ‘have not changed the long established principle that testimony by deposition is less desirable than oral testimony and should ordinarily be used as a substitute only if the witness is not available to testify in person.’ 8A C. Wright & A. Miller, Federal Practice and Procedure § 2142 (1970). “Judge Learned Hand proclaimed the deposition to be ‘second best, not to be used when the original is at hand.’ If possible, it is always better if the jury can observe the witness firsthand to judge his or her demeanor.” Loinaz v. EG & G, Inc., 910 F.2d 1, 8 (1st Cir. 1990). Mr. Klamer is available to testify in person now, but that may not remain true if the Court directs entry of judgment and proceedings are stayed pending resolution of appeal as Plaintiffs request. See Motion at 13. Second, Plaintiffs have not demonstrated any “danger of hardship or injustice though delay which would be alleviated by immediate appeal.” Bank of New York, 108 F.R.D. at 187. 3 Unfortunately, one of the witnesses at trial, Leonard Israel, has since passed away. Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 16 of 20 PageID #: 8387 [12] The parties’ dispute has been ongoing for decades. Plaintiffs will not be prejudiced if they must wait several months to appeal until all remaining claims have been resolved by settlement or trial. Indeed, the general principle is that “an appeal must await the entry of a final judgment … that fully disposes of all claims asserted in the action.” Quinn, 325 F.3d at 26. As Plaintiffs acknowledge, the remaining claims require re-opening discovery only on “a limited scale.” Motion at 12. The remaining claims can be set for trial within a matter of months, maximizing the likelihood that Mr. Klamer will be able to provide live testimony on those claims. The only real danger of hardship or injustice here is that Mr. Klamer may be unable testify at trial on the remaining claims if the Court enters judgment under Rule 54(b) and stays district court proceedings in the interim.4 Third, Plaintiffs do not (and cannot) dispute that, notwithstanding the Decision, the action remains pending for trial in this court as to all of the parties. “This circumstance alone counsels hesitation in the use of Rule 54(b). … It will be a rare case where Rule 54(b) can appropriately be applied when the contestants on appeal remain, simultaneously, contestants below.” Spiegel, 843 F.2d at 44. This is not a case in which the Court should ignore the “strong judicial policy disfavoring piecemeal appellate review.” There is just reason for delaying entry of final judgment so that the parties may conduct a trial of the remaining claims with live testimony from Mr. Klamer. 2. The Decision Should Not Be Certified For Interlocutory Appeal Under 28 U.S.C. § 1292(b) Interlocutory appeals under § 1292(b) require an order (1) “involv[ing] a controlling 4 If Plaintiffs wish to have a final judgment from which they can immediately appeal, there is a solution that avoids prejudice to Mr. Klamer: Plaintiffs can voluntarily dismiss their remaining claims and appeal from the adverse judgment (including the Decision). Ordinarily, a party may not appeal a voluntary dismissal with prejudice, “because there is no involuntary or adverse judgment against him.” Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave., 284 F.3d 302, 308 (1st Cir. 2002). However, a narrow exception exists in the First Circuit for cases in which “the dismissal was sought to expedite review of a prejudicial interlocutory ruling.” Id. (citing John’s Insulation, Inc. v. L. Addison & Assocs. Inc., 156 F.3d 101, 107 (1st Cir. 1998)). Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 17 of 20 PageID #: 8388 [13] question of law,” (2) “as to which there is substantial ground for difference of opinion,” and (3) for which “an immediate appeal from the order may materially advance the ultimate termination of the litigation.” 28 U.S.C. § 1292(b). The First Circuit repeatedly has emphasized “that ‘interlocutory certification under 28 U.S.C. § 1292(b) should be used sparingly and only in exceptional circumstances, and where the proposed intermediate appeal presents one or more difficult and pivotal questions of law not settled by controlling authority.’” Caraballo-Seda v. Municipality of Hormigueros, 395 F.3d 7, 9 (1st Cir. 2005) (quoting Palandjian v. Pahlavi, 782 F.2d 313, 314 (1st Cir. 1986)); see also Camacho v. Puerto Rico Ports Auth., 369 F.3d 570, 573 (1st Cir. 2004) (“Section 1292(b) is meant to be used sparingly, and appeals under it are, accordingly, hen’s-teeth rare”). As this Court has explained, This makes sense. District courts are often called upon to issue rulings on controlling issues of law where the outcome is significant (if not dispositive) to the resolution of the case and where reasonable minds could disagree as to the correct result. The unbridled right of a losing party to seek interlocutory relief in such circumstances would result in the inundation of the courts of appeals, delay the pace of litigation and drastically increase its costs, all to the detriment of the judicial process. Atrion Networking Corp. v. Marble Play, LLC, 31 F. Supp. 3d 357, 359 (D.R.I. 2014) (Smith, J). This case does not present an exceptional circumstance where the proposed intermediate appeal presents a difficult and pivotal question of law not settled by controlling authority. As explained above, there is no “substantial ground for a difference of opinion” as to whether the “instance-and-expense” test applies to determine copyright ownership under the 1909 Act. The First Circuit so held in Forward, 985 F.2d at 606, and district courts in this Circuit uniformly have recognized that the instance-and-expense test has been adhered to by the First Circuit. Nat’l Ctr. for Jewish Film, 943 F. Supp. at 117; Sasnett, 1997 WL 33142149 at *8 n.12. Additionally, the Second and Ninth Circuits both agree that the instance-and-expense test under the 1909 Act was not abrogated by CCNV and the Eleventh Circuit rendered no opinion in M.G.B. Homes as to the proper test under the 1909 Act. Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 18 of 20 PageID #: 8389 [14] III. CONCLUSION For the foregoing reasons, Klamer respectfully requests that the Court deny Plaintiffs’ Motion to amend the January 25, 2019, Findings of Fact and Conclusions of Law, and also deny Plaintiffs’ request for an early appeal. Respectfully submitted, REUBEN KLAMER By his attorneys, /s/ Eric E. Renner Eric E. Renner (#7481) RENNER LAW LLC 50 South Main St., Suite 202 Providence, RI 02903 Phone: 401-404-5251 Fax: 401-404-5285 erenner@rennerlawllc.com Patricia L. Glaser (admitted pro hac vice) Thomas P. Burke, Jr. (admitted pro hac vice) GLASER WEIL FINK HOWARD AVCHEN & SHAPIRO LLP 10250 Constellation Blvd., 19th Flr. Los Angeles, California 90067 Phone: 310-553-3000 Fax: 310-556-2920 pglaser@glaserweil.com tburke@glaserweil.com Erica J. Van Loon (admitted pro hac vice) LATHROP GAGE, LLP 1888 Century Park East, Suite 1000 Los Angeles, California 90067 Phone: 310-789-4659 Fax: 310-789-4601 evanloon@lathropgage.com Attorneys for Defendant and Counterclaim Plaintiff Reuben Klamer DATED: March 8, 2019 Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 19 of 20 PageID #: 8390 CERTIFICATE OF SERVICE I hereby certify that on the 8th day of March, 2019, this document, filed through the CM- ECF system, will be sent electronically to the registered participants as identified on the Notice of Electronic Filing (NEF), and paper copies will be sent to those indicated as non-registered participants. /s/ Eric E. Renner Case 1:15-cv-00419-WES-PAS Document 242 Filed 03/08/19 Page 20 of 20 PageID #: 8391