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`MEMORANDUM & ORDER
`18-CV-06637 (KAM)
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
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`EASTER UNLIMITED, INC. d/b/a FUN
`WORLD,
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`Plaintiff,
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`TERRY ROZIER,
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`Defendant.
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` KIYO A. MATSUMOTO, United States District Judge:
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`Plaintiff Easter Unlimited, Inc. d/b/a Fun World
`(“Plaintiff” or “Easter”) commenced this action alleging that
`Defendant Terry Rozier (“Defendant” or “Mr. Rozier”) unlawfully
`produced merchandise bearing a design in violation of
`Plaintiff’s copyright and trademark rights. Plaintiff asserts
`six claims pursuant to the Copyright Act, 17 U.S.C. § 501 et
`seq., and the Lanham Act, 15 U.S.C. § 1114, including the
`following: direct copyright infringement (Count I), contributory
`copyright infringement (Count II), vicarious copyright
`infringement (Count III), trademark infringement (Count IV),
`federal trademark counterfeiting (Count V), and dilution by
`blurring (Count VI). (See generally ECF No. 13, Amended
`Complaint (“Am. Compl.”).) Plaintiff seeks statutory damages
`under the Copyright Act, actual damages under the Lanham Act,
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`MEMORANDUM & ORDER
`18-CV-06637 (KAM)
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
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`EASTER UNLIMITED, INC. d/b/a FUN
`WORLD,
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`Plaintiff,
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`-against-
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`TERRY ROZIER,
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`Defendant.
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` KIYO A. MATSUMOTO, United States District Judge:
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`Plaintiff Easter Unlimited, Inc. d/b/a Fun World
`(“Plaintiff” or “Easter”) commenced this action alleging that
`Defendant Terry Rozier (“Defendant” or “Mr. Rozier”) unlawfully
`produced merchandise bearing a design in violation of
`Plaintiff’s copyright and trademark rights. Plaintiff asserts
`six claims pursuant to the Copyright Act, 17 U.S.C. § 501 et
`seq., and the Lanham Act, 15 U.S.C. § 1114, including the
`following: direct copyright infringement (Count I), contributory
`copyright infringement (Count II), vicarious copyright
`infringement (Count III), trademark infringement (Count IV),
`federal trademark counterfeiting (Count V), and dilution by
`blurring (Count VI). (See generally ECF No. 13, Amended
`Complaint (“Am. Compl.”).) Plaintiff seeks statutory damages
`under the Copyright Act, actual damages under the Lanham Act,
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`permanent injunctive relief, and attorneys’ fees and costs.
`(Id. at 11-12.)
`Pending before this Court are a motion for partial
`summary judgment filed by Plaintiff and a cross-motion for
`summary judgment filed by Defendant. Plaintiff moves for
`partial summary judgment on its claims against Defendant as to
`Counts II-IV for contributory copyright infringement, vicarious
`copyright infringement, and trademark infringement. (See ECF
`No. 49-5, Memorandum of Law in Support of Plaintiff’s Motion for
`Partial Summary Judgment (“Pl. Summ. J. Mem.”).) Defendant
`moves for summary judgment on all six/ of Plaintiff’s claims.
`(See ECF No. 52-22, Memorandum of Law in Support of Defendant’s
`Motion for Summary Judgment (“Def. Summ. J. Mem.”).) For the
`reasons set forth below, Plaintiff’s motion for partial summary
`judgment is DENIED in its entirety. Defendant’s cross-motion
`for summary judgment is GRANTED.
`BACKGROUND
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`Factual Background1
`I.
`A. The Parties
`Plaintiff Easter Unlimited, Inc., is a business that
`designs, manufactures, and supplies costumes, masks, holiday
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`1 The following facts are taken primarily from the parties’ respective
`Statements of Material Facts pursuant to Local Civil Rule 56.1 (“56.1
`statement”), and have not been specifically or directly disputed with
`admissible evidence unless otherwise noted.
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`items, and novelty gifts. (Pl. 56.1 Statement (“56.1”) ¶ 2.)
`Among these products is a ghost face mask with shroud (“Ghost
`Face Mask”) for which Easter Unlimited holds a copyright
`registration, effective as of February 23, 1993. (Id. at ¶ 19;
`ECF No. 14-1, Am. Compl. Ex. 2, Certificate of Registration VA
`552 798.) The Certificate of Registration states the “nature of
`this work” as “sculpture,” and the title as “ghost mask with
`shroud” and “Glow in Dark & Fluorescent – Item #9206/9207.”
`(ECF No. 14-1, Am. Compl. Ex. 2, Certificate of Registration VA
`552 798, p. 2.) The certificate of registration for the
`supplementary registration is dated June 21, 1999, and states
`the title of the work is “‘Ghost Face’ Mask with Shroud.” (Id.
`at p. 4.) The parties dispute the identity of the original
`author the Ghost Face Mask; Plaintiff presents a declaration
`stating that Hong Kong-based sculptor Fok Lee created the mask
`for Easter Unlimited as part of a work-for-hire relationship,
`while Defendant presents a declaration stating that Alterian
`Studios originally created the mask called the “Wailer” in early
`1991. (See ECF No. 49-2, Declaration of Alan Geller (“Geller
`Decl.”) ¶¶ 14-18; see also ECF No. 52-2, Gardner Decl. ¶¶ 17-
`22.)
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`Easter Unlimited also holds a trademark registration
`under registration number 4,256.208, most recently updated and
`registered as of December 11, 2012. (See Pl. 56.1 at ¶¶ 30-31;
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`see also ECF No. 14-2, Am. Compl., Ex. 3; Geller Decl. ¶¶ 9-10.)
`The United States Patent and Trademark Office (“USPTO”)
`describes the trademark as follows:
`The mark consists of a stylized
`representation of a ghost outlined in red
`with a white face, black eyes, nose and
`mouth, a black cloak and holding a black and
`gray knife in its left hand. The stylized
`wording “Ghost Face” appears in shades of
`gray to white below the ghost design with a
`red drop hanging off the letter “F” in
`“Face”. The Black rectangle represents
`background only and is not part of the mark.
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`(ECF No. 14-2, Am. Compl. Ex. 3, USPTO Reg. No. 4,256,208, at p.
`1.) The mark in the USPTO registration is depicted below:
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`(Id.)
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`Defendant Terry Rozier is a professional basketball
`player in the National Basketball Association (“NBA”) who
`currently plays for the Charlotte Hornets. (Def. 56.1 ¶ 1.)
`Mr. Rozier began his NBA career when he was drafted in the first
`round of the 2015 NBA draft by the Boston Celtics. (Id. at ¶
`2.) In 2018, Mr. Rozier, a backup guard, filled in when
`Celtics’ star point guard Kyrie Irving (“Mr. Irving”) was
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`injured; this was Mr. Rozier’s first start after appearing in
`more than 160 regular season games. (Def. 56.1 ¶ 3; Pl. 56.1 ¶
`33.) Mr. Rozier became the first NBA player since the 1970-71
`season to earn a triple-double in his first career start. (Pl.
`56.1 at ¶ 34.)
`B. Events Giving Rise to the Complaint
`Plaintiff alleges that the Ghost Face Mask for which
`it holds a copyright registration, appears as follows:
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`(ECF No. 1-1, Compl., Ex. 1.)2 In or about 1996, Easter
`Unlimited granted Dimension Films a license to use the Ghost
`Face Mask in the 1996 film Scream. (Pl. 56.1 at ¶¶ 23-24.)
`Scream was “a wildly successful box office sensation,” and the
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`2 Plaintiff submitted Exhibit 1 as part of its original Complaint. (ECF No.
`1, Compl.) Plaintiff subsequently filed an Amended Complaint, and though it
`continued to reference this same Exhibit 1, Plaintiff failed to attach
`Exhibit 1 to its Amended Complaint. (See ECF No. 13, Am. Compl., at ¶ 18
`(“Plaintiff is the original designer of the Ghost Face Mask, as set forth in
`Exhibit ‘1’ which is annexed hereto and incorporated in its entirety
`herein.”)
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`success of the film led to three sequels. (Id. at ¶ 25.) The
`Ghost Face Mask became “widely famous” as a result of its
`appearance in the Scream movies. (Id. at ¶ 26.)
`In 2018, after filling in for Mr. Irving, Mr. Rozier
`acquired a reputation with Celtics fans and around the league as
`a “dangerous scorer” and “fearless shooter,” and Celtics fans as
`well as sports media began calling him “Scary Terry.” (Pl. 56.1
`at ¶ 33; Def. 56.1 at ¶¶ 4-5.) The nickname was intended to
`humorously invoke the fear that Mr. Rozier’s “dangerous” ability
`to score supposedly instilled in his opponents. (Def. 56.1 at ¶
`6.) Defendant also stated in his declaration in support of his
`cross-motion for summary judgment that by accepting the “Scary
`Terry” nickname, he wanted to engage with his fans and share
`personal aspects of himself, like “[his] love for scary movies,
`and what they meant for [his] own story.” (ECF No. 52-12, Decl.
`of Terry Rozier (“Rozier Decl.”) at ¶ 6.)
`Defendant adopted the Scary Terry persona, and decided
`to market a line of t-shirts and hooded sweatshirts to celebrate
`the persona and capitalize on his growing celebrity status.
`(Def. 56.1 at ¶ 7.) Defendant determined that the clothing line
`would feature the name “Scary Terry” and a cartoon depiction of
`Mr. Rozier wearing a mask associated with a serial killer from
`popular horror. (Id. at 8.) Mr. Rozier selected a “serial
`killer mask” to humorously associate his Scary Terry persona
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`with the common practice of “referring to professional athletes—
`especially hot-shooting point guards—as ‘killers.’” (Id. at ¶
`9.) In order to underscore the humor implicit in the Scary
`Terry persona, Mr. Rozier and his management team wanted to have
`the designs reflect a children’s cartoon rather than an actually
`scary or sinister image. (Id. at ¶ 10.) Defendant and his
`management team hired Glen Infante, a popular mural artist, to
`draw the designs for the clothing, and the original design
`depicted a cartoon drawing of Mr. Rozier in his Celtics jersey
`wearing a hockey mask like the villain “Jason” from the horror
`movie Friday the 13th. (Id. at ¶¶ 11-13.) In response to
`seeing the “Jason” design, Mr. Rozier has been quoted as saying,
`“We need to get the Scream mask on there,” and “Nah, we’re using
`Scream.” (Pl. 56.1 ¶¶ 37-38.)
`Mr. Rozier subsequently specifically asked for a
`version of his cartoon character wearing the mask from the movie
`Scream. (Def. 56.1 at 14; Pl. 56.1 ¶¶ 37-38.) Mr. Rozier made
`this request for sentimental reasons, including the affection he
`had for the film as a child, as “its mix of violence and humor
`provided solace and escapism in a childhood surrounded by
`violence.” (Def. 56.1 ¶¶ 15-16.) The “Scary Terry” clothing
`line incorporated Mr. Rozier’s suggestion, and the design at
`issue in this lawsuit was created: a cartoon image of Rozier in
`his Celtics uniform wearing a Scream mask over the words “Scary
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`Terry.” (Def. 56.1 at ¶ 19.) Mr. Rozier posted a picture of
`himself wearing the t-shirt design at issue in this lawsuit to
`his Instagram account on February 15, 2018, depicted immediately
`below.
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`(Id. at 19.)
`Initially, Mr. Rozier had approximately 500 Scary
`Terry shirts and hoodies made, including an undisclosed number
`featuring the design with him wearing the Scream mask, and
`marketed them through his social media and a dedicated website.
`(Def. 56.1 ¶¶ 20-21.) Thereafter, Mr. Rozier enjoyed continued
`success on the court during the 2017-2018 season and helped lead
`the Celtics on a surprising playoff run, which in turn led to a
`surge in popularity for the Scary Terry persona. (Id. at ¶ 23.)
`Mr. Rozier had more Scary Terry apparel produced in order to
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`capitalize on this surge in popularity. (Id. at ¶ 24.) Both
`the Scary Terry phenomenon and clothing line received coverage
`in multiple media publications, and Mr. Rozier authorized
`Barstool Sports, I Love Boston Sports, and ISlide USA to sell
`Scary Terry merchandise. (Id. at ¶¶ 24-31.) The Scary Terry
`clothing was not affiliated with the movie Scream, and was not
`marketed as affiliated with the movie. (Id. at ¶ 37.) The
`Scary Terry clothing was also not marketed as being affiliated
`with or authorized by Easter Unlimited. (Id. at ¶ 38.)
`Plaintiff Easter Unlimited did not authorize any use by
`Defendant Mr. Rozier of the Ghost Face mask. (Pl. 56.1 at ¶
`42.) Mr. Rozier received approximately $150,000 in gross sales
`revenue from the sale of the Scary Terry clothing. (Def. 56.1
`at ¶ 40.)
`II.
`Procedural History
`Plaintiff filed the original complaint in the present
`action on November 20, 2018. (ECF No. 1, Compl.) Plaintiff
`filed an amended complaint on March 14, 2019. (ECF No. 13, Am.
`Compl.) Defendant Barstool Sports, Inc., was dismissed as a
`party on September 19, 2019, making Mr. Rozier the sole
`Defendant. (Sept. 19, 2019, Docket Order.) Discovery was
`completed and closed in this case as of June 2, 2020. (June 2,
`2020, Scheduling Order.)
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`Plaintiff filed a motion for partial summary judgment,
`including a Rule 56.1 Statement. (See ECF No. 49, Pl. Notice of
`Summ. J. Mot.; see also ECF No. 49-1, Pl. 56.1.) Defendant
`filed a memorandum in opposition to Plaintiff’s motion for
`summary judgment, including a counter-Rule 56.1 Statement. (See
`ECF No. 50, Def. Mem. in Opp.; see also ECF No. 50-1, Def. Resp.
`56.1.) Plaintiff filed a reply in support of its motion for
`summary judgment. (See ECF No. 51, Pl. Reply in Supp.)
`Defendant filed a cross-motion for summary judgment on all six
`counts alleged by Plaintiff, and filed a separate Rule 56.1
`Statement along with his cross-motion. (See ECF No. 52, Def.
`Notice of Summ J. Mot.; see also ECF No. 52-1, Def. 56.1.)
`Plaintiff filed a response in opposition to Defendant’s motion
`for summary judgment, including a counter-Rule 56.1 Statement.
`(See ECF No. 53, Pl. Resp. in Opp.; see also ECF No. 53-1, Pl.
`Resp. 56.1.) Finally, Defendant filed a reply in support of his
`motion for summary judgment, including a response to Plaintiff’s
`counter-Rule 56.1 Statement. (See ECF No. 54, Def. Reply in
`Supp.; see also ECF No. 54-1, Def. Reply to Pl. Resp. 56.1) The
`parties’ fully briefed summary judgment motions were deemed
`filed as of September 4, 2020, by court order. (Sept. 8, 2020,
`Order.) On July 6, 2021, this case was reassigned to the
`undersigned judge.
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`III.
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`Discovery Issues Raised by Parties
`As a preliminary matter, the discovery issues raised
`by the parties are not timely or properly before the Court.
`Discovery has been closed since June 2, 2020. Defendant now
`disputes whether Plaintiff may properly present evidence in the
`summary judgment record based on Plaintiff’s failure to provide
`the evidence in response to Defendant’s discovery requests.
`Defendant filed a motion to compel discovery responses (see ECF
`No. 34, Def. Letter Mot. to Compel), which Plaintiff opposed
`(see ECF No. 35, Pl. Resp. to Def. Letter Mot. to Compel), and
`which was denied without prejudice to renew on February 13,
`2020. (See ECF No. 36, Feb. 13, 2020, Order.) Defendant had an
`opportunity to raise any remaining discovery issues in the
`nearly four months that followed the denial of its initial
`motion to compel before the close of discovery June 2, 2020.
`Defendant attempted to confer with Plaintiff’s counsel, who
`failed to do so. (See ECF No. 52-20, Declaration of Patrick S.
`Kabat (“Kabat Decl.”), at ¶¶ 4-13.) Defendant requested, but
`was not provided, documents of Plaintiff’s authorship of the
`Ghost Face Mask or documents of Plaintiff’s use of the
`Plaintiff’s registered mark in relation to Plaintiff’s brand.
`Thus, Defendant asserts that Plaintiff should be precluded from
`using related evidence to defeat summary judgment because of
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`Plaintiff’s alleged wholesale nondisclosure during discovery.
`(See Def. Memo. in Supp. at pp. 9-10.)
`Defense counsel’s declaration (see ECF No. 52-20,
`Kabat Decl. at ¶¶ 4-13) asserts that Plaintiff refused to meet
`and confer as to the parties’ discovery disputes, including
`Plaintiff’s failure to provide discovery responses, including
`documents to the Defendant, and that Plaintiff failed to timely
`provide requested documents, constituting a violation of
`discovery rules pursuant to Federal Rule of Civil Procedure 37.
`See Charles v. Cty. of Nassau, 116 F. Supp. 3d 107, 121
`(E.D.N.Y. 2015) (citing Kam Hing Enters., Inc. v. Wal–Mart
`Stores, Inc., 359 Fed. Appx. 235, 237–38 (2d Cir. 2010)
`(“Failure to timely produce documents during the discovery
`period is a violation of discovery rules, subject to sanctions
`pursuant to Rule 37.”). Under Rule 37, “if a party fails to
`provide information [...] the party may not use that information
`or witness to ‘supply evidence on a motion, at a hearing, or at
`trial, unless the failure was substantially justified or is
`harmless.’” Charles, 116 F. Supp. 3d at 120–21 (citing Fed. R.
`Civ. P. 37; Matheson v. Kitchen, 515 Fed. Appx. 21, 23 (2d Cir.
`2013) (internal citations omitted)). District courts have
`discretion to impose sanctions other than preclusion for
`discovery violations under Rule 37. See Charles, 116 F. Supp. 3d
`at 121 (internal citations omitted).
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`Though Defendant should have sought further relief
`from the Magistrate Judge, the Plaintiff should not benefit from
`withholding evidence until summary judgment. The Court, in its
`discretion, will nonetheless consider the full extent of the
`submissions made by the parties. Plaintiff’s registrations are a
`matter of public record and are not in dispute as registered
`copyrights and trademarks. See Hutson v. Notorious B.I.G., LLC,
`No. 14-cv-2307 (RJS), 2015 WL 9450623, at *3 (S.D.N.Y. Dec. 22,
`2015) (citing Island Software & Comput. Serv., Inc. v. Microsoft
`Corp., 413 F.3d 257, 261 (2d Cir. 2005) (noting that a court can
`take judicial notice of a federal copyright registration, and
`taking judicial notice of trademark registrations published in
`Patent and Trademark Office’s registry)) (internal citations
`omitted).
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`The Court also rejects Plaintiff’s argument that the
`testimony of Tony Gardner (“Gardner Declaration”) should be
`precluded under Federal Rule of Civil Procedure 37(c)(1) because
`Defendant’s non-disclosure under Rule 26(a)(1) was an attempt
`“to conduct a trial by ambush.” (See ECF No. 53, Response in
`Opposition for Summary Judgment filed by Terry Rozier (“Pl.
`Resp.”) at 12-13.) Rule 26(a)(1) requires parties to disclose
`the name of “each individual likely to have discoverable
`information—along with the subjects of that information—that the
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`disclosing party may use to support its claims or defenses.”
`Fed. R. Civ. P. 26(a)(1). Rule 37(c)(1) states that:
`[a] party that without substantial
`justification fails to disclose information
`required by Rule 26(a) . . . is not, unless
`such failure is harmless, permitted to use
`as evidence at a trial, at a hearing, or on
`a motion any witness or information not so
`disclosed.
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`Fed. R. Civ. P. 37(c)(1) (emphasis added). “Failure to comply
`with the mandate of [Rule 26] is harmless when there is no
`prejudice to the party entitled to the disclosure.” Aboeid v.
`Saudi Arabian Airlines Corp., No. 10-cv-2518 (SJ), 2011 WL
`5117733, at *2 (E.D.N.Y. Sept. 6, 2011) (internal quotation
`omitted); see also Izzo v. ING Life Ins. & Annuity Co., 235
`F.R.D. 177, 186 (E.D.N.Y. 2005) (quoting Update Art, Inc. v.
`Modiin Publishing, Ltd., 843 F.2d 67, 71 (2d Cir. 1988))
`(“[p]reclusion of evidence ... [is a] harsh remedy and should be
`imposed only in rare situations[.]”).
`The Court finds Defendant’s nondisclosure was
`harmless. Defendant’s discovery requests put Plaintiff on
`notice of the existence of both Tony Gardner (“Mr. Gardner”) and
`his company Alterian Studios (“Alterian”), as well as
`Defendant’s intent to argue that Plaintiff did not hold a valid
`copyright based on Mr. Gardner’s and Alterian’s prior ownership.
`In Defendant’s initial request for production of documents on
`October 22, 2019, Defendant asked for “all documents and
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`communications that refer or relate to any third party
`questioning, challenging, or addressing your ownership or the
`viability of any rights claimed by you in the Image, the Mask or
`Your IP . . .” and further explicitly named Mr. Gardner and
`Alterian as third parties. (ECF No. 34-2, Motion to Compel
`Discovery Responses, Ex. B at ¶ 5.) Defendants then asked
`Plaintiff for the following:
`All documents, communications, materials and
`records that refer or relate to your
`awareness, attendance, or participation in
`trade shows between 1989 and 1991, including
`any trade show or public exhibition at which
`Alterian Studios, Inc. or the Alterian Ghost
`Factory attended, participated, or exhibited
`the Ghost Maker line of products.
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`(Id.) Defendant’s Sixth Interrogatory then requested Plaintiff
`“[l]ist, describe, and explain any responses made by [Plaintiff]
`or its employees to any and all public statements denying its
`original authorship of the Mask, or denying Alan Geller’s
`original authorship of the Mask, including statements made by
`Tony Gardner . . .” (ECF No. 34-5, Ex. E, at p. 7.) Based on
`the foregoing, the Court rejects Plaintiff’s argument that
`“Gardner’s first appearance in this case was as a declarant in
`support of Defendant’s motion for summary judgment.” (ECF No.
`53-3, Decl. of Craig B. Sanders in Opp. (“Sanders Decl.”) at ¶
`11.) The Court finds that Plaintiff had notice of the potential
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`I.
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`relevance of Mr. Gardner and that nondisclosure was harmless
`and, therefore, declines to preclude the Gardner Declaration.
`LEGAL STANDARD
`Summary Judgment Standard
`“Summary judgment is appropriate where there is no
`genuine dispute as to any material fact and the record as a
`whole indicates that no rational factfinder could find in favor
`of the non-moving party.” Graves v. Finch Pruyn & Co., 353 F.
`App’x 558, 560 (2d Cir. 2009) (internal citation omitted). “In
`ruling on a summary judgment motion, the district court must
`resolve all ambiguities, and credit all factual inferences that
`could rationally be drawn, in favor of the party opposing
`summary judgment and determine whether there is a genuine
`dispute as to a material fact, raising an issue for trial.”
`McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 202 (2d Cir.
`2007) (quotation marks omitted). “A fact is material when it
`might affect the outcome of the suit under governing law.” Id.
`(internal quotation marks omitted). Moreover, an issue of fact
`is genuine only if “the evidence is such that a reasonable jury
`could return a verdict for the nonmoving party.” Anderson v.
`Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
`“In order to defeat a motion for summary judgment
`supported by proof of facts that would entitle the movant to
`judgment as a matter of law, the nonmoving party is required
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`under Rule 56(e) to set forth specific facts showing that there
`is a genuine issue of material fact to be tried.” Ying Jing Gan
`v. City of New York, 996 F.2d 522, 532 (2d Cir. 1993) (citations
`omitted). “[O]nly disputes over facts that might affect the
`outcome of the suit under the governing law will properly
`preclude entry of summary judgment.” Anderson, 477 U.S. at 248.
`The nonmoving party may not, however, “rely simply on conclusory
`statements or on contentions that the affidavits supporting the
`motion are not credible, or upon the mere allegations or denials
`of the nonmoving party’s pleading.” Ying Jing Gan, 996 F.2d at
`532–33 (citations and quotation marks omitted).
`The standard for summary judgment remains the same
`when cross motions for summary judgment are being considered.
`See Morales v. Quintel Entm’t, Inc., 249 F.3d 115, 121 (2d Cir.
`2001); Eschmann v. White Plains Crane Serv., Inc., No. 11-cv-
`5881, 2014 WL 1224247, at *3 (E.D.N.Y. Mar. 24, 2014). The
`court must examine each party’s motion independently, and “in
`each case all reasonable inferences must be drawn against the
`party whose motion is under consideration.” Morales, 249 F.3d
`at 115 (citation omitted).
`DISCUSSION
`As noted, Plaintiff moves for partial summary judgment
`on three of its claims (Counts II-IV), while Defendant moves for
`summary judgment on all six of Plaintiff’s claims (Counts I-VI).
`
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`Accordingly, where appropriate, the Court will draw inferences
`in Plaintiff’s favor with respect to Defendant’s motion, and
`draw inferences in Defendant’s favor with respect to Plaintiff’s
`motion.
`I.
`Plaintiff’s Copyright Claims
`Plaintiff contends that Defendant committed direct,
`contributory, and vicarious copyright infringement (Counts I-
`III) when, allegedly, “Defendants, without permission or
`authorization from Plaintiff, actively copied, stored, modified,
`and/or displayed Plaintiff’s intellectual property and engaged
`in this misconduct knowingly and in violation of the United
`States copyright . . . laws.” (Am. Compl. at ¶ 6.)
`To establish copyright infringement, a plaintiff must
`prove “(1) ownership of a valid copyright, and (2) copying of
`constituent elements of the work that are original.” Feist
`Publ’n, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)
`(internal citation omitted). Copyright infringement is a strict
`liability offense, meaning “intent or knowledge is not an
`element of infringement.” Fitzgerald Publ’g. Co. v. Baylor
`Publ’g. Co., 807 F.2d 1110, 1113 (2d Cir. 1986). Further, it is
`well-established that one may be vicariously liable for
`copyright infringement despite not having directly committed an
`infringing act. For example, a person who has promoted or
`induced the infringing acts of the performer has been held
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`jointly and severally liable as a ‘vicarious’ infringer, even
`though he has no actual knowledge that copyright monopoly is
`being impaired.” Gershwin Pub. Corp. v. Columbia Artists Mgmt.,
`Inc., 443 F.2d 1159, 1161–62 (2d Cir. 1971) (citing Shapiro,
`Bernstein & Co. v. H. L. Green Co., 316 F.2d 304 (2d Cir.
`1963)). Similarly, with respect to contributory copyright
`infringement, “one who, with knowledge of the infringing
`activity, induces, causes or materially contributes to the
`infringing conduct of another, may be held liable as a
`‘contributory’ infringer.” Faulkner v. Nat'l Geographic
`Enterprises Inc., 409 F.3d 26, 40 (2d Cir. 2005) (internal
`citation and footnote omitted).
`A. Plaintiff’s Ownership of a Valid Copyright
`Plaintiff presented evidence that it holds a copyright
`
`
`registration certificate for the Ghost Face Mask under
`registration number VA 983 747. (Pl. 56.1 at ¶ 20.) Defendant
`argues that Plaintiff does not, in fact, own any valid
`copyrights in the Ghost Face Mask, and argues that Plaintiff is
`not the original author of the mask, as Plaintiff copied the
`original design from Alterian Studios. (See ECF No. 50, Def.
`Mem. in Opp., at pp. 4-5.)
`The “production of a certificate of registration made
`before or within five years after first publication of the work
`constitutes prima facie evidence of the validity of the
`
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`copyright[,]” and “[t]he evidentiary weight to be accorded the
`certificate of a registration made thereafter shall be within
`the discretion of the court.” See 17 U.S.C.A. § 410 (c); see
`also Urbont v. Sony Music Ent., 831 F.3d 80, 88–89 (2d Cir.
`2016) (quoting 17 U.S.C. § 410(c)). Even though, “[a]
`certificate of copyright registration is prima facie evidence of
`ownership of a valid copyright [...] the alleged infringer may
`rebut that presumption.” Scholz Design, Inc. v. Sard Custom
`Homes, LLC, 691 F.3d 182, 186 (2d Cir. 2012) (internal citations
`omitted); see also Estate of Burne Hogarth v. Edgar Rice
`Burroughs, Inc., 342 F.3d 149, 166 (2d Cir. 2003) (internal
`quotation marks and citation omitted) (“[A] certificate of
`registration creates no irrebuttable presumption of copyright
`validity,” and “where other evidence in the record casts doubt
`on the question, validity will not be assumed.”); Fonar Corp. v.
`Domenick, 105 F.3d 99, 104 (2d Cir.1997) (noting the presumption
`of validity may be rebutted by evidence that clearly
`demonstrates that plaintiff’s design lacks originality). Here,
`Plaintiff filed with the Court copies of its copyright
`registration and its supplementary copyright registration for
`the Ghost Face Mask. (See ECF No. 14-1, Am. Compl. Ex. 2,
`Certificate of Registration VA 552 798.) The initial copyright
`registration states that the first publication of the work was
`December 4, 1991, and that the registration date was February
`
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`23, 1993, which constitutes “registration made before or within
`five years after first publication of the work.” (See ECF No.
`14-1, Am. Compl. Exhibit 2, Certificate of Registration VA 552
`798, p. 2); see also 17 U.S.C. § 410(c).3 Thus, absent evidence
`to the contrary, the court will presume Plaintiff’s ownership of
`and the validity of the copyright.
`Plaintiff’s proffer of its certificate of copyright
`registration shifts the burden of overcoming the presumption of
`validity of the copyright to Defendant, where the burden remains
`unless the presumption is rebutted. See Hasbro Bradley, Inc. v.
`Sparkle Toys, Inc., 780 F.2d 189, 192 (2d Cir. 1985); see also
`Fonar Corp., 105 F.3d at 104 (quoting Durham Indus., Inc. v.
`Tomy Corp., 630 F.2d 905, 908 (2d Cir. 1980)) (“Generally
`speaking, the presumption of validity may be rebutted ‘[w]here
`other evidence in the record casts doubt on the question.’”).
`Defendant attempts to meet this burden by arguing that the mask
`in question was originally created by Mr. Gardner and Alterian,
`and not by Easter Unlimited. (See ECF No. 50, Def. Mem. in
`Opp., at pp. 4-5; ECF No. 52-22, Def. Summ. J. Mem., at pp. 7-
`8.) Plaintiff primarily opposes Defendant’s argument regarding
`
`
`3 The original registration provides the title of the work as “ghost mask with
`shroud” and “Glow in Dark & Fluorescent – Item #9206/9207.” (ECF No. 14-1,
`Am. Compl. Ex. 2, Certificate of Registration VA 552 798, p. 2.) The
`certificate of registration for the supplementary registration is dated June
`21, 1999, and clarifies the title of the originally registered work by
`removing references to “glow in the dark” and “fluorescent,” so that the new
`title is simply: “‘Ghost Face’ Mask with Shroud.” (Id. at p. 4.)
`
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`Mr. Gardner and Alterian by asserting that the Court should not
`consider the Gardner Declaration because Gardner was an
`undisclosed witness. For the reasons discussed supra, the Court
`declines to preclude consideration of the Gardner Declaration.
`As a threshold matter, Mr. Gardner, a third party to
`this case, would be time-barred from challenging Plaintiff’s
`copyright interests under the applicable statute of limitations,
`and Defendant cannot now take refuge in Gardner’s time-barred
`position as to any rights Gardner may have once been able to
`assert. See 17 U.S.C. § 507(b) (the Copyright Act of 1976
`provides that “[n]o civil action shall be maintained under the
`provisions of this title unless it is commenced within three
`years after the claim accrued.”). A cause of action accrues
`when a plaintiff knows or has reason to know of the injury upon
`which the claim is premised. Merch. v. Levy, 92 F.3d 51, 56 (2d
`Cir. 1996) (citing Stone v. Williams, 970 F.2d 1043, 1048 (2d
`Cir.1992)); see also Latin Am. Music Co. v. Spanish Broad. Sys.,
`Inc., 738 F. App’x 722 (2d Cir. 2018) (quoting Kwan v. Schlein,
`634 F.3d 224, 228 (2d Cir. 2011) (A claim of ownership accrues
`“only once, when a reasonably diligent plaintiff would have been
`put on inquiry as to the existence of a right[.]”) (internal
`alterations omitted).
`The Gardner Declaration concludes that Mr. Gardner was
`aware that the Ghost Face Mask appeared in Scream potentially as
`
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`early as 1996. (See ECF No. 52-2, Gardner Decl. at ¶
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