Narrative Ark Entertainment LLC v. Archie Comic Publications, Inc. et al

REPLY MEMORANDUM OF LAW in Support re: 130 MOTION for Summary Judgment . & in Opposition to Cross-Motion for Summary Judgment 136 . Document

S.D.N.Y.February 7, 2019

Edmund J. Ferdinand, III (EF 9885) Alexander R. Malbin (AM 9385) John F. Olsen (JO 8553) 450 Seventh Avenue Suite 1300 New York, NY 10123 Phone: (212) 220-0523 Fax: (212) 905-6747 jferdinand@24iplg.com amalbin@24iplg.com jolsen@24iplg.com UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK NARRATIVE ARK ENTERTAINMENT, LLC, Plaintiff, -against - ARCHIE COMIC PUBLICATIONS, INC., Defendant. __________________________________________ ARCHIE COMIC PUBLICATIONS, INC., Counterclaim Plaintiff and Third Party Plaintiff, -against- NARRATIVE ARK ENTERTAINMENT, LLC, Counterclaim Defendant, SCOTT D. FULOP, Third Party Defendant. Civil Action No. 7:16-cv-06109-VB COMBINED REPLY MEMORANDUM OF LAW IN FURTHER SUPPORT OF DEFENDANT ARCHIE COMIC PUBLICATIONS, INC.’S MOTION FOR SUMMARY JUDGMENT AND MEMORANDUM OF LAW IN OPPOSITION TO CROSS-MOTION FOR SUMMARY JUDGMENT Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 1 of 25 ii TABLE OF CONTENTS TABLE OF AUTHORITIES .......................................................................................................... iv REPLY MEMORANDUM OF LAW IN FURTHER SUPPORT OF ACP’S MSJ ....................... 1 I. Introduction ............................................................................................................. 1 II. Petrella Does Not Affect ACP’s Statute-of-Limitations or Estoppel Defenses ...... 1 A. Petrella Governs Copyright Infringement Claims, Not Ownership Claims .......................................................................................................... 1 B. Petrella Affirmed Estoppel as a Viable Defense to Copyright Infringement ................................................................................................ 2 III. Narrative’s Ownership Claims & Attendant Infringement Claims are Time-Barred ............................................................................................................. 2 IV. Narrative’s Arguments Against Application of Estoppel Fail ................................. 4 V. Narrative Fails to Defeat Summary Judgment on ACP’s License Defense ............ 5 A. Narrative Does Not Genuinely Dispute that a License Exists ..................... 5 B. Narrative Cannot Show Use Beyond Scope of License .............................. 7 VI. “Unclean Hands” Does Not Foreclose ACP’s Defenses ......................................... 8 VII. Narrative Fails to Rebut Bar on Statutory Damages & Attorney Fees .................... 8 VIII. Narrative Cannot Recover on Claims Based on Penders-Co-Owned Works ........ 10 IX. Conclusion ............................................................................................................. 10 OPPOSITION MEMORANDUM OF LAW IN RESPONSE TO NARRATIVE’S/FULOP’S CROSS-MSJ ..................................................................................... 11 I. ACP Has Standing As Beneficial Owner to Assert Declaratory Judgment Claim ................................................................................. 11 II. Factual Disputes Preclude Summary Judgment on ACP’s Slander-of-Title Claim ........................................................................................... 12 A. ACP Has Standing as Beneficial Owner to Assert Slander of Title ................ 12 B. Fulop Falsely Represented Ownership of the Narrative Registered Works Knowingly Or With Reckless Disregard for the Truth .......................................... 13 Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 2 of 25 iii 1. Copyright Office’s Issuance of Registrations No Basis for “Good Faith Belief” of Copyright Ownership ...................................................... 13 2. Evidence of Prior Transfer of Rights Supports Falsity of Fulop’s Ownership Representation & Reckless Disregard for the Truth ............... 15 III. Conclusion ............................................................................................................. 16 Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 3 of 25 iv TABLE OF AUTHORITIES Cases: Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) ...................................................................................................................... 12 Big East Entm’t, Inc. v. Zomba Enters., Inc, 453 F.Supp.2d 788 (S.D.N.Y. 2006) ............................................................................................... 4 Black Box Royalties, Inc. v. Univ. Music Publ’g, Inc., No. 1:15-CV-04013-ELR, 2017 WL 3508727 (N.D. Ga. Feb. 21, 2017) ....................................... 2 Bourne v. Walt Disney Co., 68 F.3d 621 (2d Cir. 1995), cert. denied, 517 U.S. 1240 (1996) ..................................................... 7 Broadcast Music, Inc. v. Hearst/ABC Viacom Entm’t Svcs., 746 F.Supp. 320 (S.D.N.Y. 1990) ................................................................................................... 8 Carell v. Shubert Org., Inc., 104 F.Supp.2d 236 (S.D.N.Y. 2000) ........................................................................................... 3, 4 Consumer Health Info. Corp. v. Amylin Pharms., Inc., 819 F.3d 992 (7th Cir. 2016) ............................................................................................................ 2 Davis v. Blige, 505 F.3d 90 (2d Cir. 2007) ........................................................................................................ 5, 10 DeCarlo v. Archie Comic Publ’ns., Inc., 127 F. Supp. 2d 497 (S.D.N.Y. 2001), aff’d, 11 Fed.Appx. 26 (2d Cir. 2001) ............................... 5 Donofrio-Ferrezza v. Nier, No, 04 Civ. 1162(PKC), 2005 WL 2312477 (S.D.N.Y. Sept. 21, 2005) ...................................... 13 Fink v. Shawangunk Conservancy, Inc., 15 A.D.3d 754 (N.Y. App.Div. 3d Dept. 2005) ...................................................................... 13, 16 Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 80 F.Supp.3d 535 (S.D.N.Y. 2015) ................................................................................................. 3 Garrett v. Commonwealth Mortg. Corp. of Am., 938 F.3d 591 (5th Cir. 1991) ............................................................................................................ 6 Graham v. James, 144 F.3d 236 (2d Cir. 1998) ........................................................................................................ 5, 7 Guillot-Vogt Assoc., Inc. v. Holly & Smth, 848 F.Supp. 682 (E.D. La. 1994) ............................................................................................... 9, 10 Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 4 of 25 v Jacob Maxwell, Inc. v. Veeck, 110 F.3d 749 (11th Cir. 1997) .......................................................................................................... 7 John W. Lovell Co. v. Houghton, 116 N.Y. 520 (1889) ...................................................................................................................... 13 Karedes v. Ackerley Grp., Inc., 423 F.3d 107 (2d Cir. 2005) .......................................................................................................... 13 Kessler v. Westchester Cnty. Dep’t of Soc. Svcs., 461 F.3d 199 (2d Cir. 2006) .......................................................................................................... 12 Korman v. HBC Florida, Inc., 182 F.3d 1291 (11th Cir. 1997) ........................................................................................................ 7 Latin Am. Music Co., Inc. v. Spanish Broadcasting Sys., Inc., 738 Fed.Appx. 722 (2d Cir. 2018) ................................................................................................... 2 Mahan v Roc Nation, LLC, 634 Fed.Appx. 329 (2d Cir. 2016) ................................................................................................... 2 Markowitz v. Republic Nat’l Bank of New York, 651 F.2d 825 (2d Cir. 1981) .......................................................................................................... 16 Maurizio v. Goldsmith, 84 F.Supp.2d 455 (S.D.N.Y. 2000) ............................................................................................. 3, 4 Nials v. Bank of Am., No. 13 Civ. 5720(AJN), 2014 WL 2465289 (S.D.N.Y. May 30, 2014) ....................................... 13 Peterson v. Kolodin, No. 13 Civ. 793(JSR), 2013 WL 5226114 (S.D.N.Y. Sept. 10, 2013) .......................................... 15 Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014) ............................................................................................................ 1, 2, 3, 5 Psihoyos v. Pearson Educ., Inc., 855 F.Supp.2d 103 (S.D.N.Y. 2012) ................................................................................... 6, 12, 16 Sanchez v. Hacienda Records & Recording Studio, Inc., 42 F.Supp.3d 845 (S.D. Tex. 2014) ................................................................................................. 2 Sapon v. DC Comics, No. 00 Civ. 889992(WHP), 2002 WL 485730 (S.D.N.Y. Mar. 29, 2002) .................................... 15 Secunda v. Time Warner Cable of New York City, No. 95 Civ. 0671(SAS), 1995 WL 675464 (S.D.N.Y. Nov. 14, 1995) ........................................... 9 Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 5 of 25 vi SHL Imaging, Inc. v. Artisan House, Inc., 117 F.Supp.2d 301 (S.D.N.Y. 2000) ............................................................................................... 7 Sid Bernstein Presents, LLC v. Apple Corps Ltd., No. 16 Civ. 7084(GBD), 2017 WL 4640149 (S.D.N.Y. Jul 26, 2017) ........................................... 2 Simmons v. Stanberry, 810 F.3d 114 (2d Cir. 2016) ................................................................................................ 2, 11, 12 Solid Oak Sketches, LLC v. 2K Games, Inc., No. 16CV724-LTS, 2016 WL 4126543 (S.D.N.Y. Aug. 2, 2016) .................................................. 9 T.B. Harms Co. v. Eliscu, 339 F.2d 823 (2d Cir. 1964) ............................................................................................................ 5 Tolliver v. McCants, No. 05 Civ. 10840(JFK), 2009 WL 804114 (S.D.N.Y. Mar. 25, 2009) .......................................... 3 Troll Co. v. Uneeda Dolls Co., 483 F.3d 150 (2d Cir 2007) ............................................................................................................. 9 Urbont v. Sony Music Entm’t, 831 F.3d 80 (2d Cir. 2016) .............................................................................................................. 3 Walker v. Carter, 210 F.Supp.3d 487 (S.D.N.Y. 2016) ..................................................................................... 3, 9, 10 Wells v. John Wiley & Sons, Inc., No. 14 Civ. 6745(AT)(AJP), 2016 WL 889786 (S.D.N.Y. Feb. 17, 2016) .................................... 8 Wu v. John Wiley & Sons, Inc., No. 14 Civ. 6746(AK)(AJP), 2015 WL 5254885 (S.D.N.Y. Sept. 10, 2015) ............................. 6, 9 Wu v. Pearson Educ., Inc., No. 10 Civ. 6537(KBF), 2013 WL 145666 (S.D.N.Y. Jan. 11, 2013) ............................................ 5 Zuill v. Shanahan, 80 F.3d 1366 (9th Cir. 1996) ........................................................................................................... 3 Statutes, Rules, & Other Authorities: 17 U.S.C. § 106 ......................................................................................................................... 9, 10 17 U.S.C. § 201 ............................................................................................................................. 11 17 U.S.C. § 410 ............................................................................................................................. 14 Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 6 of 25 vii 17 U.S.C. § 412 ............................................................................................................................... 9 Fed. R. Civ. P. 12 ............................................................................................................................. 6 Fed. R. Civ. P. 56 ............................................................................................................................. 6 Compendium of U.S. Copyright Practices, Third Edition § 602.4 ................................................ 14 Compendium of U.S. Copyright Practices, Third Edition § 1808 ................................................. 14 3 Melville B. Nimmer and David Nimmer, Nimmer on Copyright § 12.05[C][3] (Matthew Bender, Rev. Ed.) ............................................................................................................ 3 Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 7 of 25 1 Defendant, Archie Comic Publications, Inc. (“ACP”), respectfully submits this combined Reply Memorandum of Law in further support of its Motion for Summary Judgment (Dkt. 130- 134) (“ACP’s MSJ”)1, and Memorandum of Law in Opposition to the Cross-Motion for Summary Judgment of Plaintiff, Narrative Ark Entertainment, LLC (“Narrative”), and Third Party Defendant, Scott D. Fulop (Dkt. 136 p. 26-33) (“Narrative’s/Fulop’s MSJ”). REPLY MEMORANDUM OF LAW IN FURTHER SUPPORT OF ACP’S MSJ I. Introduction Narrative fails to dispute the outcome-determinative facts that: (i) Fulop remained silent about his claim to own the Narrative Registered Works for decades while ACP used them with his knowledge; (ii) the disputed ownership of the works between Narrative and Sega is the crux of this case based on Narrative’s own allegations; and (iii) Narrative admits Fulop granted ACP a license and cannot prove that ACP exceeded its scope. Instead, Narrative seeks to sidetrack the Court by misrepresenting the U.S. Supreme Court’s decision in Petrella v. Metro-Goldwyn- Mayer, Inc., 572 U.S. 663 (2014), raising extraneous issues, and distorting the record. In short, Narrative has not shown genuine issues of material fact to sustain its claims for copyright infringement or declaratory relief. ACP is entitled to judgment as a matter of law. II. Petrella Does Not Affect ACP’s Statute-of-Limitations or Estoppel Defenses Narrative’s heavy reliance on Petrella in opposing ACP’s defenses to liability is misplaced. Petrella clarified application of the copyright statute of limitations to infringement claims – not underlying ownership claims; and limited the doctrine of laches – not estoppel. A. Petrella Governs Copyright Infringement Claims, Not Ownership Claims Petrella affirmed the “separate-accrual” rule, that successive infringing acts restart the limitations period for each act of infringement – not for underlying ownership claims. Id. at 671. 1 Capitalized terms used herein have the same meanings attributed to them in ACP’s MSJ. Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 8 of 25 2 Since that decision, not a single court has found Petrella to have any impact on untimely copyright ownership claims. This includes rulings from the Second Circuit – see Latin Am. Music Co., Inc. v. Spanish Broad. Sys., Inc., 738 Fed.Appx. 722 (2d Cir. 2018) (affirming dismissal of infringement claims based on time-barred ownership claims); Mahan v. Roc Nation LLC, 634 Fed.Appx. 329 (2d Cir. 2016) (same); Simmons v. Stanberry, 810 F.3d 114 (2d Cir. 2016) (same); this District – see Sid Bernstein Presents, LLC v. Apple Corps Ltd., No. 16 Civ. 7084(GBD), 2017 WL 4640149, *5 (S.D.N.Y. Jul 26, 2017) (“Petrella only addressed the timeliness of infringement (as opposed to ownership) claims”); and other federal courts.2 Narrative’s argument that Petrella spares its copyright ownership claims has been rejected by every court to consider the question. It should be rejected here as well. B. Petrella Affirmed Estoppel as a Viable Defense to Copyright Infringement Narrative’s claim that Petrella bars ACP’s estoppel defense (Dkt. 136 p. 2) also fails. Petrella held that laches, not estoppel, cannot be invoked to bar claims within the limitations period, and affirmed that estoppel remains a viable defense to copyright claims. Id. at 679, 684. III. Narrative’s Ownership Claims & Attendant Infringement Claims are Time-Barred Narrative claims the “overwhelming focus” of its pleading is infringement and only alleges ownership as an element of infringement (Dkt. 136 p. 12, 15-16). In fact, Narrative makes many allegations of ACP’s/Sega’s contrary ownership claims (see Dkt. 131 p. 8-9), which clearly show a dispute over copyright ownership independent of its infringement claim.3 Narrative also argues that the gravamen of this case is not ownership because ACP itself 2 See Consumer Health Info. Corp. v. Amylin Pharms., Inc., 819 F.3d 992, 997 (7th Cir. 2016); Sanchez v. Hacienda Records & Recording Studio, Inc., 42 F.Supp.3d 845, 853 (S.D. Tex. 2014) (citations omitted); Black Box Royalties, Inc. v. Univ. Music Publ’g, Inc., No. 1:15-CV-04013-ELR, 2017 WL 3508727, *6 (N.D. Ga. Feb. 21, 2017). 3 As further evidence, Narrative brought a declaratory judgment claim seeking a declaration of invalidity of copyright registrations filed by ACP and naming Sega as copyright claimant for certain works encompassing the Narrative Registered Works, on the ground that “portions [of] the materials being claimed as exclusively owned by Defendants were created and owned by [Narrative] and [Narrative’s] predecessor in title” (Dkt. 38 ¶ 128). Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 9 of 25 3 does not claim ownership (Dkt. 136 p. 11-12).4 However, courts have consistently rejected this argument. See, e.g., Walker v. Carter, 210 F.Supp.3d 487, 507 (S.D.N.Y. 2016) (ownership is gravamen “[w]hether Defendants dispute Plaintiff’s ownership on their own behalf or on the behalf of non-parties”),5 citing Urbont v. Sony Music Entm’t, 831 F.3d 80, 84-85 (2d Cir. 2016). Sega has acted and held itself out as owner of the Narrative Registered Works since they were first published in 1996-1998; indeed, the only copyright notices in the Sonic Comic Series name Sega as copyright owner (SMF ¶ 25). Narrative argues these copyright notices are not true ownership assertions because “Sega never owned the copyrights” (Dkt. 136 p. 14-15), but this circular reasoning only confirms ownership is disputed. Moreover, Narrative fails to contest any of the other grounds for accrual of its ownership claims identified in ACP’s moving brief (see Dkt. 131 p. 12-15), essentially conceding accrual more than three years before this action. Finally, its position that a finding of “bona fide” ownership precludes barring an ownership claim on limitations grounds (Dkt. 136 p. 11) would effectively eliminate the bar on untimely ownership claims repeatedly affirmed post-Petrella.6 Narrative’s argument should be rejected. The decisions cited by Narrative that permit infringement claims to continue despite time-barred ownership claims are distinguishable and lend no support.7 4 As set forth at pp. 11-12 infra, ACP was Sega’s exclusive licensee for the Sonic Comic Series at all relevant times, from 1992 to 2010, which gives ACP standing to assert claims as a matter of law. 5 Narrative’s reliance upon Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 80 F.Supp.3d 535 (S.D.N.Y. 2015), is misplaced. As explained in Walker, that case’s inquiry into whether the defendant asserted ownership was “aimed at determining if there is an actual dispute of ownership, more so than if the defendant owns the copyright”. 210 F.Supp.3d at 507. Narrative also falsely represents Flo & Eddie to be a binding Second Circuit decision (see Dkt. 136 p. 9, 16), when it is in fact a district-level ruling. 6 Narrative’s position also stretches the bounds of logic. In any ownership dispute, one party will be found the “bona fide” owner; that this is true cannot preclude barring ownership claims not brought in a timely manner, even by a “bona fide” owner. To this end, it has been recognized that the time-bar on ownership claims “creates ‘something like adverse possession to copyright ownership’”. Tolliver v. McCants, No. 05 Civ. 10840(JFK), 2009 WL 804114, *11 (S.D.N.Y. Mar. 25, 2009), quoting Zuill v. Shanahan, 80 F.3d 1366, 1370 (9th Cir. 1996). 7 These decisions have been criticized by a leading copyright scholar as outliers inconsistent with the prevailing approach. See 3 Melville B. Nimmer and David Nimmer, Nimmer on Copyright § 12.05[C][3] (Matthew Bender, Rev. Ed.) (“The result [in Maurizio] is potentially bizarre” … “[I]t is submitted that Carell’s distinction [between ownership and infringement claims] does not hold” … “It was … anomalous to allow [Carell] to proceed”). Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 10 of 25 4 Maurizio v. Goldsmith, 84 F.Supp.2d 455 (S.D.N.Y. 2000), is inapposite because the plaintiff’s ownership claim, asserting joint ownership of a book to which she contributed, did not impact her claims for infringement of her contributions to the book, as to which ownership was not disputed. Here, the allegedly-infringed works are the works for which ownership is disputed. In Carell v. Shubert Org., Inc., the court allowed the plaintiff’s infringement claim to survive a motion to dismiss because that claim was “not dependent upon [its ownership] claims”, and so “the plaintiff has a clear right to assert it as a claim separate from the claim of ownership”. 104 F.Supp.2d 236, 254-55 (S.D.N.Y. 2000).8 Here, as Narrative concedes, its infringement claims are “based upon [its] claims of copyright ownership” (see Dkt. 136 p. 16). Cf. Big East Entm’t, Inc. v. Zomba Enters., Inc, 453 F.Supp.2d 788, 796 (S.D.N.Y. 2006) (dismissing infringement claim based on time-barred ownership claim, and distinguishing Carell, where the plaintiff “based its infringement claim entirety upon its alleged ownership”). Like in Big East and the litany of cases cited in ACP’s moving brief, Narrative’s infringement claims depend on its ownership of the Narrative Registered Works. Because its ownership claims accrued more than three years before this action, Narrative’s ownership claims and infringement claims dependent upon its ownership are time-barred, and should be dismissed. IV. Narrative’s Arguments Against Application of Estoppel Fail Narrative’s argument that ACP has not shown “wrongdoing and overt misleading” by Fulop (Dkt. 136 p. 17) is contradicted by the record. In fact, the record shows wrongdoing by Fulop: he decided not to contest ACP’s use of his works despite knowing of ACP’s activities for decades; he misled ACP into believing he had no intention to ever assert a claim; and, thus, he induced ACP to continue its use of the works (Dkt. 131 p. 17-18). ACP’s estoppel defense centers not on “mere delay” as Narrative claims (Dkt. 136 p. 17), but on ACP’s reliance upon 8 Carell is another district-level case Narrative misrepresents as a binding Second Circuit ruling (see Dkt. 136 p. 13). Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 11 of 25 5 Fulop’s inaction. Fulop’s knowledge of ACP’s conduct and failure to act induced ACP to rely on his inaction. These undisputed facts support dismissal of Narrative’s claims on estoppel grounds. DeCarlo v. Archie Comic Publ’ns., Inc., 127 F. Supp.2d 497, 510 (S.D.N.Y. 2001) (“[s]ilence or inaction in the face of an explicit contrary assumption by the opposing party may be sufficient to induce justifiable reliance by a defendant that a plaintiff will not later assert a claim”), aff’d, 11 Fed.Appx. 26 (2d Cir. 2001).9 Narrative’s other arguments against estoppel fail to raise genuine disputes. Copyright Office correspondence cited by Narrative to show that ACP knew of Fulop’s claims (Dkt. 136 p. 17), refers to filings by a different individual who later sued ACP, Ken Penders, not Fulop (Dkt. 136-8). Fulop’s declaration in the ACP-Penders lawsuit cited by Narrative as reflecting an ownership assertion by Fulop (Dkt. 136 p. 17), does not contain any statement of copyright ownership and, thus, cannot be construed to put ACP on notice (Ferdinand Decl. Ex. 21).10 Finally, Narrative claim that ACP knew it had to obtain rights from Fulop under its agreement with Sega (Dkt. 136 p. 17), mischaracterizes the cited contract language and, even if true, is irrelevant since the issue is ACP’s ignorance that Fulop claimed rights to the works, and ACP’s reliance on Fulop’s silence. On that point, the record is undisputed. V. Narrative Fails to Defeat Summary Judgment on ACP’s License Defense A. Narrative Does Not Genuinely Dispute that a License Exists A license exists where a copyright owner authorizes use of its work.11 Here, Narrative 9 Narrative’s argument that DeCarlo is no longer good law because “laches … is not applicable in copyright cases after Petrella” (Dkt. 136 p. 3) is meritless given Petrella’s reaffirmation of estoppel as a viable copyright defense. 10 Fulop’s declaration supports estoppel. Fulop made that declaration in March 2012, but never made a claim to ACP until Narrative’s October 2015 demand letter. Fulop was on notice of Penders’ claims against ACP, and participated in the litigation, but chose not to assert claims until years later. ACP justifiably relied upon his silence. 11 See, e.g., Wu v. Pearson Educ., Inc., No. 10 Civ. 6537(KBF), 2013 WL 145666, *4 (S.D.N.Y. Jan. 11, 2013) (“A claim for infringement will fail if the challenged use of the copyrighted work is authorized by a license”), citing Graham v. James, 144 F.3d 236 (2d Cir. 1998); Davis v. Blige, 505 F.3d 90, 98 (2d Cir. 2007) (“Owners may license others to exercise [their § 106] rights or assign the rights to others”), citing T.B. Harms Co. v. Eliscu, 339 F.2d 823 (2d Cir. 1964). Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 12 of 25 6 contradicts itself – it admits in its Counterstatement of Undisputed Facts that Fulop authorized ACP to use the Narrative Registered Works (see Dkt. 136-10 ¶ 47), yet contends in its opposition brief that “[t]he record fails to establish that a license was ever granted to ACP” (Dkt. 136 p. 18). A review of the record, including Narrative’s pleadings and testimony, confirm that there is no genuine dispute that Fulop granted a license to ACP to use the works. Narrative claims its pleading denies a license was granted and that its allegations must be accepted and construed in its favor (Dkt. 136 p. 4, 18), but that is the wrong standard, applicable to Fed. R. Civ. P. 12 motions to dismiss.12 Under Fed. R. Civ. P. 56, a non-moving party “may not rely on ‘conclusory allegations or unsubstantiated speculation’ … Rather, [it] must set forth significant, probative evidence on which a reasonable fact-finder could decide in its favor”. Psihoyos v. Pearson Educ. Inc., 855 F.Supp.2d 103, 112 (S.D.N.Y. 2012) (citations omitted). Narrative next argues that “Fulop’s deposition testimony dispute[s] granting any such license” (Dkt. 136 p. 19), but fails to identify any such testimony; and to the contrary, Fulop testified he does not understand the term “license” (see Ferdinand Decl. ¶ 3, Ex. 17, 112:11-12; 140:11-12). Given his testimony that he intended ACP to pay him for his work “and then to use it in Sonic the Hedgehog publications” (id. at 110:14-111:6) and that he understood “I gave [ACP] rights … to publish my stories in a Sonic Hedgehog publication” (id. at 233:4-8), Fulop’s purported denial, undermined by his own admissions, fail to genuinely dispute that a license exists. Narrative then claims that Fulop testified there was no “meeting of the minds” to find a license exists (Dkt. 136 p. 4). But, Fulop testified – and Narrative does not dispute (see Dkt. 136-10 ¶¶ 47, 53) – that he authorized ACP to publish the Narrative Registered Works, and 12 The decision cited by Narrative, Garrett v. Commonwealth Mortg. Corp. of Am., 938 F.3d 591, 593 (5th Cir. 1991), sets forth the standard for a Rule 12(b)(6) motion to dismiss, not a Rule 56 summary judgment motion. In any event, Narrative’s allegations do not even support its contention – they do not dispute the existence of a license, but rather allege that the scope of authorization excludes ACP’s accused uses (Dkt. 38 ¶¶ 49-50). Other allegations – that ACP paid Fulop and, in exchange, received rights to publish his works (id. ¶ 27) – concede the existence of a license, an admission to which Narrative is bound. Wu v. John Wiley & Sons, Inc., No. 14 Civ. 6746(AK)(AJP), 2015 WL 5254885, *16 (S.D.N.Y. Sept. 10, 2015) (citation omitted). Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 13 of 25 7 intended ACP to use, copy, and distribute them, in the Sonic Comic Series. Narrative’s cite to SHL Imaging, Inc. v. Artisan House, Inc., 117 F.Supp.2d 301 (S.D.N.Y. 2000), lends no support. In that case, the plaintiff created photographs and sold them to the defendant, but never expressed intention that the defendant could reproduce them. When the defendant used the photos in a catalog, the plaintiff claimed infringement. Explaining a license exists where an owner intends another to use its work “for a specific purpose,” the court refused to find a license for use of the photos in a catalog. Id. at 317-18. Here, it is undisputed that Fulop intended ACP to publish his works in the Sonic Comic Series (SMF ¶¶ 47, 53).13 Finally, Narrative argues a license is not valid if “the licensee uses the copyright beyond the scope of the license” (Dkt. 136 p. 19). But as Graham explains: “[W]hen the contested issue is the scope of a license, rather than the existence of one, the copyright owner bears the burden of proving that the defendant’s copying was unauthorized under the license”. 144 F.3d at 236, citing Bourne v. Walt Disney Co., 68 F.3d 621 (2d Cir. 1995), cert. denied, 517 U.S. 1240 (1996) As discussed supra, Narrative has not met its burden. B. Narrative Cannot Show Use Beyond Scope of License Narrative has not and cannot meet its burden to prove unauthorized use by ACP beyond the scope of the license Fulop granted. Narrative argues the “terms and scope of [the] license are a fact intensive finding” and that ACP lacks evidence of “a meeting of the minds as to the terms” or permission to engage in its accused uses (Dkt. 136 p. 4, 8, 19), but these arguments do not satisfy its burden. Under Graham and Bourne, since a license indisputably exists, Narrative must prove that ACP’s uses exceeded its scope. Narrative concedes it has no evidence to meet 13 Two cases cited favorably in SHL Imaging further support that a license exists. In Jacob Maxwell, Inc. v. Veeck, 110 F.3d 749 (11th Cir. 1997) and Korman v. HBC Florida, Inc., 182 F.3d 1291 (11th Cir. 1997), the plaintiffs gave works to the defendants with the intent that they use them; the courts found the plaintiffs “cannot reasonably deny” granting a license. 110 F.3d at 753; 182 F.3d at 1293. Likewise, as Fulop gave ACP his works intending that it publish them in the Sonic Comic Series (SMF ¶¶ 51-53), Fulop cannot “reasonably deny” granting a license. Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 14 of 25 8 its burden (SMF ¶¶ 54-58). Instead, Narrative relies on allegations from its pleadings (Dkt. 136 pp. 9, 18, 19) and unsupported, conclusory assertions15 – which fail to meet its burden to proffer admissible evidence of the scope of Fulop’s license. Wells v. John Wiley & Sons, Inc., No. 14 Civ. 6745(AT)(AJP), 2016 WL 889786, *2-3, 6 (S.D.N.Y. Feb. 17, 2016) (citations omitted). Because Fulop indisputably granted ACP a license and Narrative cannot prove infringing use beyond its scope by ACP, Narrative’s infringement claims should be dismissed. Id. at *6. VI. “Unclean Hands” Does Not Foreclose ACP’s Defenses Narrative’s claim that ACP’s MSJ should be barred on the basis of “unclean hands” (Dkt. 136 p. 22) is unsupported by any legal authority – not surprising, as unclean hands is a defense to liability. Cf. Broadcast Music, Inc. v. Hearst/ABC Viacom Entm’t Svcs., 746 F.Supp. 320, 329 (S.D.N.Y. 1990) (unclean hands may be invoked against “a plaintiff otherwise entitled to relief”) (citation omitted). Narrative’s untenable unclean hands argument should be disregarded. VII. Narrative Fails to Rebut Bar on Statutory Damages & Attorney Fees Narrative fails to refute that statutory damages and attorney fee awards are barred for at least eight of the Narrative Registrations.16 Narrative does not deny pre-registration use, but claims that “long gaps between … infringements” and “new types of infringements” permit statutory damages and attorney fee recovery (Dkt. 136 p. 24). These arguments are unavailing. Narrative’s argument of “long gaps between periods of infringements” (id. p. 24) finds no support in the record or the law. As confirmed in the very case cited by Narrative on this issue, 15 Narrative’s claims that ACP’s accused uses “were clearly beyond the scope of any such license” (Dkt. 136 p. 8-9), that “[i]t is … beyond dispute that there was no implied license concerning the new uses made by ACP” (id. p. 19), and that “[a]t most, Fulop[] … gave ACP permission to include his works in the initial publication of the original ‘Sonic the Hedgehog’ comic books in North America” (id., p. 19), are all unsupported by any citation to evidence. 16 Contrary to Narrative’s claim that ACP “admits” it is entitled to statutory damages for the three Narrative Registrations not at issue in this section of ACP’s MSJ (see Dkt. 136, p. 23 ¶ 3 lines 3-4), ACP intends to contest statutory damages under all of the Narrative Registrations should this case proceed to trial. ACP contends no genuine dispute requires trial that statutory damages are barred for eight of the Narrative Registrations; if ACP’s MSJ is not granted in full, it will seek to bar statutory damages under all of the Narrative Registrations at trial. Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 15 of 25 9 this District bars statutory damages in cases of any pre-registration use. See Solid Oak Sketches, LLC v. 2K Games, Inc., No. 16CV724-LTS, 2016 WL 4126543, *2-3 (S.D.N.Y. Aug. 2, 2016) (citations omitted) (“finding such a bright-line rule preferable to case-by-case analyses of whether a series of infringements ‘has stopped sufficiently such that the restart constitutes a new set of infringements’”).17 Narrative cannot escape this bright-line rule by alleging “long gaps” between uses; even if these gaps existed, its argument still fails as a matter of law. Additionally, even if these “long gaps” were relevant, they were never proven. Narrative has not proven (or even alleged) the length of these gaps, nor why they are of a sufficient length of time to find a new series of infringements. Walker, 210 F.Supp.3d at 498 (“[T]he non-moving party must ‘designate specific facts showing that there is a genuine issue for trial,’ and these facts must be ‘admissible in evidence’”). Indeed, Narrative’s own allegations foreclose finding any such time gap – its allegations of pre-registration use all include the allegation “Continued Sales and Infringements” (see Supplemental Statement of Undisputed Material Facts submitted herewith [“Supp. SMF”] at ¶ 107), plainly showing it alleges these uses to be continuing, not ceased pre-registration. Narrative is bound to its allegations. Wu, 2015 WL 5254885 at *16. Narrative’s argument of “new types of infringement” is likewise unsupported. Narrative relies on a single ruling from the Eastern District of Louisiana, Guillot-Vogt Assoc., Inc. v. Holly & Smth, 848 F.Supp. 682 (E.D. La. 1994), without disclosing that a court in this District rejected Guillot-Vogt as unpersuasive18 – and which does not even support its position. That court declined to dismiss a statutory damages claim where post-registration uses implicated different exclusive rights under 17 U.S.C. § 106 than pre-registration uses. Id. at 690 (“GVA argues that the distinct exclusive rights relating to distribution and preparation of derivative works were not 17 The Solid Oak court held that the other case cited by Narrative, Troll Co. v. Uneeda Dolls Co., 483 F.3d 150 (2d Cir 2007), “does not enable [Plaintiff] to avoid the bright-line stricture of Section 412”. 2016 WL 4126543 at *3. 18 Secunda v. Time Warner Cable of New York City, No. 95 Civ. 0671(SAS), 1995 WL 675464, *2 (S.D.N.Y. Nov. 14, 1995) (“in Guillot-Vogt, the court explicitly said that no case supported this novel proposition”). Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 16 of 25 10 infringed prior to registration”). Its allusion to different “types” of infringement is to infringement of different Section 106 exclusive rights – not, as Narrative argues, different types of publications, media, or formats (see Dkt. 136 p. 24). As Narrative does not argue that pre- and post-registration uses involve different exclusive rights, Guillot-Vogt lends no support. In addition, Narrative does not cite to any evidence of “new types of infringements” post- registration, nor explain how they are sufficiently different from pre-registration uses to justify statutory damages, thus failing to raise a genuine dispute. Walker, 210 F.Supp.3d at 498. VIII. Narrative Cannot Recover on Claims Based on Penders-Co-Owned Works Narrative’s argument that the ACP-Penders Agreement’s settlement of claims does not waive its claims as co-owner misconstrues ACP’s position (Dkt. 136 p. 21). ACP contends that Narrative is barred from asserting claims for uses authorized under that Agreement (Dkt. 131 p. 23-24). While ACP agrees that a co-owner’s settlement does not affect other co-owners’ claims, it is also settled law that a co-owner’s authorization bars infringement claims by other co-owners for authorized use. Davis, 505 F.3d at 100 (citations omitted). Penders’ release under the Agreement covers claims up to the date of the Agreement (Ferdinand Decl. Ex. 22 Section 4.2). The Agreement also requires ACP to pay Penders royalties for future use of his works (id., Article I). Thus, Penders did not settle post-Agreement use, but rather authorized ACP’s future uses in exchange for royalty payments. Because the ACP-Penders Agreement authorized ACP’s use of works co-owned by Penders and Fulop (later Narrative) at the time of the Agreement, Narrative’s claims based on post-Agreement use of those works fail as a matter of law and should be dismissed. Id. at 100. IX. Conclusion For the foregoing reasons, ACP respectfully requests that the Court grant ACP’s MSJ in full, and dismiss Narrative’s Amended Complaint in its entirety with prejudice. Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 17 of 25 11 OPPOSITION MEMORANDUM OF LAW IN RESPONSE TO NARRATIVE’S/FULOP’S CROSS-MSJ I. ACP Has Standing As Beneficial Owner to Assert Declaratory Judgment Claim Narrative asserts a single basis for summary judgment on ACP’s declaratory judgment counterclaim: that ACP lacks standing to assert the claim, as neither a legal nor beneficial owner (Dkt. 136 p. 27-28). Narrative concedes that a beneficial owner of a copyrighted work has standing to bring suit, but contends that the January 1, 2011 license agreement between ACP and Sega is not an exclusive license – a point on which ACP agrees. However, evidence produced in this action establishes that ACP does hold rights under an exclusive license with Sega with respect to the Narrative Registered Works. Specifically, Sega granted ACP exclusive rights to use its Sonic the Hedgehog properties under the June 11, 1992 license agreement between ACP and Sega. (See Supplemental Declaration of William E. Mooar, dated February 6, 2019 [“Supp. Mooar Decl.”], ¶¶ 3-5, Ex. A; Supp. SMF ¶ 110). Importantly, this agreement covered ACP’s creation and publication of the Sonic Comic Series during the period of 1996 to 1998 (Supp. Mooar Decl., ¶ 4; Supp. SMF ¶ 109) – the period of Fulop’s engagement as an ACP freelancer, when he created the Narrative Registered Works (SMF ¶¶ 16, 21-22). Accordingly, ACP possesses beneficial rights under its exclusive license agreement with Sega with respect to the Narrative Registered Works, and thus standing to institute a declaratory judgment counterclaim with respect to those works. Simmons, 810 F.3d at 116 (“exclusive licensees stand in the shoes of creators for enforcement purposes”), citing 17 U.S.C. § 201(d). Narrative also argues that ACP and its counsel have “admitted” that ACP “never had ownership rights” – however, as set forth in ACP’s Counterstatement to Narrative’s L.R. 56.1 Statement submitted herewith (see Nos. 96-97), Narrative misrepresents ACP and its counsel’s statements. ACP’s corporate representative and counsel stated that ACP does not presently own the copyrights in the Narrative Registered Works, a statement which does not concede that Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 18 of 25 12 Narrative owns the copyrights, but rather that, as ACP’s representative repeatedly testified (see Supplemental Declaration of Edmund J Ferdinand, III, dated February 6, 2019 [“Supp. Ferdinand Decl.”], ¶ 3, Ex. 6 at 49:14-50:14, 91:13-25, 94:4-8), ACP transferred the rights to Sega pursuant to their license agreements, making Sega – not Narrative – the copyright owner. In light of the 1992 exclusive licensing agreement between ACP and Sega, ACP has shown that it does indeed possess exclusive rights to the Narrative Registered Works, making it a beneficial owner with standing to bring suit with respect to those works. Simmons, 810 F.3d at 116. At the very least, this evidence and testimony establishes a genuine factual dispute on this issue for trial, meriting denial of summary judgment. Psihoyos, 855 F.Supp.2d at 112 (“To avoid summary judgment, all that is required of the non-moving party is a showing of sufficient evidence supporting the claimed factual dispute as to require a judge or jury’s resolution of the parties’ differing versions of the truth”), citing Kessler v. Westchester Cnty. Dep’t of Soc. Svcs., 461 F.3d 199, 206 (2d Cir. 2006) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-49 (1986)). II. Factual Disputes Preclude Summary Judgment on ACP’s Slander-of-Title Claim Summary judgment dismissal of ACP’s slander of title cause of action should be denied due to genuine factual disputes concerning the grounds of the claim. A. ACP Has Standing as Beneficial Owner to Assert Slander of Title Fulop first argues that ACP lacks standing to assert its slander of title claim because it is not the legal or beneficial owner of the Narrative Registered Works (Dkt. 136 p. 27-30). However, as discussed supra, ACP has presented evidence that it is beneficial owner of the Narrative Registered Works pursuant to its exclusive license agreement with Sega. For the same reasons it has standing to assert its declaratory judgment claim against Narrative (see p. 11-12 supra), ACP has standing as Sega’s exclusive licensee to assert its slander of title claim against Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 19 of 25 13 Fulop. Summary judgment on ACP’s slander of title claim for lack of standing should be denied. B. Fulop Falsely Represented Ownership of the Narrative Registered Works Knowingly Or With Reckless Disregard for the Truth Fulop also argues that ACP has not presented evidence that Fulop’s statement was false, or that Fulop made the statement with malice (Dkt. 136 p. 30-32). However, the record supports a finding that Fulop assigned his purported copyrights to some or all of the Narrative Registered Works to Ken Penders prior to his assignment to Narrative, and that his representation of owning the copyrights to the Narrative Registered Works in assigning them to Narrative was done with reckless disregard for the truth. In light of genuine factual disputes as to the veracity of Fulop’s copyright-ownership representation as well as his reckless disregard for the truth of his representation, summary judgment should be denied. As set forth in cases cited by Narrative, proof of either knowledge of a statement’s falsity or reckless disregard for the truth or falsity of a statement19 can satisfy the “malice” element of a slander of title claim.20 See, e.g., Donofrio-Ferrezza v. Nier, No, 04 Civ. 1162(PKC), 2005 WL 2312477, *5-7 (S.D.N.Y. Sept. 21, 2005) (“Malice is defined as either a reckless disregard for the truth, or a motivation arising from spite or ill will”). The record supports that Fulop communicated with reckless disregard for the truth of his representation of owning the Narrative Registered Works. 1. Copyright Office’s Issuance of Registrations No Basis for “Good Faith Belief” of Copyright Ownership The only ground identified by Fulop as giving “probable cause” to his claim of owning of 19 The 1889 decision of the New York Court of Appeals in John W. Lovell Co. v. Houghton, 116 N.Y. 520 (1889), cited by Narrative as requiring knowledge of falsity (see Dkt. 136 p. 31), is not in line with recent cases – including those cited by Narrative – providing that knowledge or reckless disregard can meet the malice element of a slander of title claim. See, e.g., Fink v. Shawangunk Conservancy, Inc., 15 A.D.3d 754, 756 (N.Y. App.Div. 3d Dept. 2005); Nials v. Bank of Am., No. 13 Civ. 5720(AJN), 2014 WL 2465289, *4 (S.D.N.Y. May 30, 2014) (to prove slander of title, “New York law also requires that Plaintiff demonstrate that the statements are made with ‘malice’ or ‘at least a reckless disregard for their truth or falsity’”) (citations omitted). 20 One of the cases cited by Narrative recites the heightened “actual malice” requirement of a claim for defamation against a public figure, not slander of title. See Karedes v. Ackerley Grp., Inc., 423 F.3d 107, 113 (2d Cir. 2005). Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 20 of 25 14 the Narrative Registered Works is that he “was entitled to believe in good faith that he was the owner of the copyrights as evidenced by the grant to him by the U.S. Copyright Office of the eleven copyright registrations” (Dkt. 136 p. 32). However, Copyright Office written authority makes clear that its issuance of a copyright registration does not constitute an imprimatur of an asserted copyright claim. As explained in the Compendium of U.S. Copyright Practices, Third Edition, the Copyright Office registers a copyright claim so long that an application meets the statutory and regulatory requirements on its face, accepting the facts stated in an application unless contradicted elsewhere in the registration materials or the Office’s records, and without conducting investigation or making findings of fact as to statements made in an application. Id. § 602.4(B)-(C). The Copyright Office does not adjudicate disputes involving claims to copyrights, but rather will register adverse claims to the same work if both applications meet the statutory and regulatory requirements. Id. § 1808.21 Since the Copyright Office relies upon and accepts statements in copyright applications and issues registration so long as an application meets the statutory requirements, Fulop’s argument amounts to having relied upon his own statements in his copyright filings.22 Reliance upon one’s own statements alone certainly cannot support good faith or probable cause to claim title. Moreover, if the Copyright Office’s issuance of a registration does speak to the merits of the registered copyright claim, then the issuance of numerous registrations to ACP, naming Sega as copyright claimant – not Fulop or Narrative – for the same works covered by the Narrative 21 Copyright Office correspondence relied upon by Narrative (Dkt. 136-8 p. 2) specifically provides as such: “[T]he Copyright Office is an office of record and does not have the authority to adjudicate adverse or conflicting claims submitted for registration. Each claim is examined to determine whether it complies with statutory and regulatory requirements; if it does, it is registered. Where conflicting claims are received, the Office may put both claims on record if each is acceptable on its own merits.” 22 Also worth noting, because the Narrative Registered Works were each first published more than five years before the effective dates of their respective Narrative Registrations (SMF ¶ 41), the Narrative Registrations are afforded no presumption of the validity of their copyright ownership representations. 17 U.S.C. § 410(c). Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 21 of 25 15 Registrations (see SMF ¶¶ 80-84), would support a finding of Sega’s copyright ownership. To the extent Fulop claims “good faith” probable cause to believe his copyright claims had merit based on obtaining copyright registrations in his name, the registrations naming Sega as claimant of the same works refutes any such belief. Cf. Peterson v. Kolodin, No. 13 Civ. 793(JSR), 2013 WL 5226114 (S.D.N.Y. Sept. 10, 2013) (where both parties obtained copyright registrations for different versions of same work, “any evidentiary weight that might be due one registration is counterbalanced by the other, leaving no presumption on either side”) (citations omitted); Sapon v. DC Comics, No. 00 Civ. 889992(WHP), 2002 WL 485730, *6 (S.D.N.Y. Mar. 29, 2002) (“the Copyright Office does not adjudicate competing claims for the same work. Instead, the Office issues certificates to both parties and the question of validity is left to the courts”). The correct analysis on this point is that, as the Copyright Office issues registrations based only on an application’s compliance with statutory and regulatory requirements, without any determination of the merits of the registered claim, its issuance of registrations to Fulop does not, in and of itself, support any “good faith” belief of copyright ownership. 2. Evidence of Prior Transfer of Rights Supports Falsity of Fulop’s Ownership Representation & Reckless Disregard for the Truth Contrary to Fulop’s purported “good faith” belief, evidence in this case strongly indicates that Fulop does not own the copyrights to all of the Narrative Registered Works, as he represented in his copyright assignment to Narrative. ACP has produced evidence that Fulop assigned his interests in multiple specific stories he created as an ACP freelancer to Ken Penders prior to his purported copyright assignment to Narrative (see Supp. Ferdinand Decl., ¶ 3, Ex. 3).23 In his deposition, Fulop did not deny this, but rather testified that he does not recall what copyrights he assigned to Penders (see Supp. Ferdinand Decl., ¶ 3, Ex. 5 at 252:17-253:25, 23 Penders testified that he received an email from Fulop listing specific stories for which Fulop transferred his interests to Penders (see Supp. Ferdinand Decl., ¶ 3, Ex. 4 at 202:12-203:7). Fulop did not produce that email in discovery. Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 22 of 25 16 255:21-256:4). As such, the record reflects that Fulop does not own – and importantly, does not know whether he owns – the copyrights to all of the Narrative Registered Works. The evidence that Fulop assigned certain unspecified stories to Penders, along with Fulop’s testimony that he does not recall what stories he assigned to Penders, supports the conclusion that Fulop’s representation of owning all eleven Narrative Registered Works in his copyright assignment to Narrative was not made “under an honest impression of its truth” (Markowitz v. Republic Nat’l Bank of New York, 651 F.2d 825, 828 [2d Cir. 1981] [citation omitted]), but rather, “with a reckless disregard for [its] truth or falsity” (Fink, 15 A.D.3d at 756). At minimum, factual disputes as to the falsity of Fulop’s representation of owning all of the Narrative Registered Works at the time of his assignment to Narrative, and to the malicious nature – that is, the reckless disregard for the truth – of that representation, preclude summary judgment. Cf. Markowitz, 651 F.2d at 828 (dismissing slander of title claim “[i]n the absence of any showing of bad faith or malice on the part of defendant”). Because ACP has proffered specific facts and supporting evidence that Fulop’s communication was false and done with reckless disregard for the truth, summary judgment on ACP’s slander of title claim should be denied. Psihoyos, 855 F.Supp.2d at 122. IV. Conclusion For the foregoing reasons, ACP respectfully requests that the Court deny Narrative’s/Fulop’s MSJ in its entirety, or grant such other or further relief that the Court deems just and proper. Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 23 of 25 Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 24 of 25 CERTIFICATE OF ELECTRONIC FILING I hereby certify that on February 7, 2019, the foregoing COMBINED REPLY MEMORANDUM OF LAW IN FURTHER SUPPORT OF DEFENDANT ARCHIE COMIC PUBLICATIONS, INC.’S MOTION FOR SUMMARY JUDGMENT AND MEMORANDUM OF LAW IN OPPOSITION TO CROSS-MOTION FOR SUMMARY JUDGMENT was filed electronically. Notice of this filing will be sent to all parties by operation of the Court’s electronic filing system. Parties may access this filing through the Court’s system. ___s/ Alexander Malbin _______________ Case 7:16-cv-06109-VB-LMS Document 139 Filed 02/07/19 Page 25 of 25