Whimsicality, Inc. v. Rubie's Costume Co., Inc.

• Decision Date: 04 November 1993
• Docket Number: No. 89-CV-1720 (RJD).,89-CV-1720 (RJD).
• Citation: 836 F. Supp. 112
• Parties: WHIMSICALITY, INC., Plaintiff, v. RUBIE'S COSTUME COMPANY, INC., Defendant.
• Court: U.S. District Court — Eastern District of New York

836 F. Supp. 112

WHIMSICALITY, INC., Plaintiff, v. RUBIE'S COSTUME COMPANY, INC., Defendant.

No. 89-CV-1720 (RJD).

United States District Court, E.D. New York.

November 4, 1993.

COPYRIGHT MATERIAL OMITTED

Virginia R. Richard, Kane, Dalsimer, Sullivan, Kurucz Levy, Eisele and Richard, New York City, for plaintiff.

Andrew S. Langsam, Levisohn, Lerner & Berger, New York City, for defendant.

MEMORANDUM AND ORDER

DEARIE, District Judge.

Plaintiff Whimsicality, Inc. ("Whimsicality") has moved this Court pursuant to Fed. R.Civ.P. 60(b) to vacate the judgment of September 11, 1989 finding the six costumes manufactured by Whimsicality, and allegedly infringed by costumes manufactured by defendant Rubie's Costume Co., Inc. ("Rubie's"), unprotectable by copyright. For the reasons outlined below, the motion is granted.

Background

The relevant facts have been presented in this Court's prior opinion, reported at 721 F.Supp. 1566, and in the Second Circuit's decision, reported at 891 F.2d 452. Whimsicality, a manufacturer of adult and children's costumes, brought this action for alleged copyright infringement of six of Whimsicality's designs for children's costumes. In 1988 and 1989, Whimsicality received copyright registration for these six creations. In applying for copyright registration Whimsicality described its creations as "soft sculptures," and sent to the copyright examiner photographs of the costumes in question.

After consolidating a motion for injunctive relief with a hearing on the merits of the copyright claim, this Court granted summary judgment in favor of Rubie's, holding that the costumes at issue, although registered with the Copyright Office, were not copyrightable. The Second Circuit affirmed the dismissal of the copyright claim, but on grounds other than those relied upon by this Court. The Circuit found instead that, "Whimsicality obtained its copyright registration by misrepresentation of its costumes to the United States Copyright Office," and that no action for infringement could be maintained absent proper registration.

Upon Whimsicality's petition for rehearing, the Court of Appeals declined to consider the accompanying affidavit of the Copyright Office Examiner Frank Vitalos, Section Head of the Visual Arts Section of the United States Copyright Office, noting that, "... because an appellate court may not consider evidence external to the record on appeal, we refused to permit Whimsicality to insert additional testimony into the record." Order of Jan. 24, 1990 (Denying Motion to Supplement Petition for Rehearing). In his affidavit Examiner Vitalos explains that he issued the six registrations in question on an expedited basis due to imminent litigation and that upon examination of the photographs submitted with Whimsicality's registration application, he knew that the items were children's costumes. He further attests that the use of the term "soft sculpture" on the registration applications was within the practice routinely allowed by the Copyright Office, and that he decided to issue the registrations after finding separable artistic content in the works. Specifically, Vitalos declares that the "description of the works as soft sculpture did not and does not constitute a representation to the Copyright Office that the works in question have no useful function," Vitalos Aff., at ¶ 11, further observing that an application is not required to identify the uncopyrightable elements of a work, but instead requires the examiners to perform a separability analysis of the work in question to determine if any protectable elements exist.

He also explains that he was familiar with the registrations at issue in the case of National Theme Productions Inc. v. Jerry B. Beck, Inc., 696 F.Supp. 1348 (S.D.Cal.1988), where the applications acknowledged the creations were costumes, but requested registration only for those features it considered separable, and therefore copyrightable. Vitalos states that the express qualification was appropriate in the National Theme matter in part because of the volume of items submitted together and is not normally expected or required by the Copyright Office.

On appeal, without the Vitalos Affidavit, the Second Circuit held that because Whimsicality had described its deposits as "soft sculpture," had not sent photographs of the items being worn by children,¹ and did not expressly limit its applications to separable elements found in the costumes, the practice approved of in the National Theme case, Whimsicality's registration was unenforceable due to inequitable conduct.² Because the Circuit also found bad faith on the part of Whimsicality in its registration attempts, it vacated that part of the judgment denying an award of attorney's fees to Rubie's. The action was then remanded for consideration of the attorney's fees issue.

With this Rule 60(b) motion, Whimsicality challenges the determination of the Court of Appeals and requests that this Court consider evidence offered to the Court of Appeals in several unsuccessful post-mandate motions. Specifically, Whimsicality now moves to reopen the record to submit the Vitalos affidavit, arguing that this new evidence unquestionably demonstrates that Whimsicality perpetrated no fraud on the Copyright Office in connection with the registration of the six costumes and that no deceit was intended.

Discussion

Whimsicality argues that vacatur is proper under several provisions of Rule 60(b): newly discovered evidence pursuant to section (b)(2), misrepresentations of law and fact by Rubie's pursuant to section (b)(3), and the interests of justice pursuant to (b)(6). Rule 60(b) should be broadly construed to do substantial justice. E.g., Music Deli & Groceries, Inc. v. I.R.S., 781 F.Supp. 992, 995 (S.D.N.Y.1991) (quotation omitted). Motions made pursuant to Rule 60(b) are addressed to the sound discretion of the district court, Nemaizer v. Baker, 793 F.2d 58, 61 (2d Cir. 1986), and this discretion is especially broad under section (b)(6), In re Emergency Beacon Corp., 666 F.2d 754, 760 (2d Cir.1981) (citing International Controls Corp. v. Vesco, 556 F.2d 665, 670 (2d Cir.1977)), which provides relief "in the interests of justice" if the asserted grounds for relief are not encompassed within sections (1)-(5). Id. at 758 (citing United States v. Cirami, 563 F.2d 26 (2d Cir.1977)).³ Initially, Rubie's raises the "law of the case" doctrine to argue that in light of the Court of Appeals' finding of fraud on the Copyright Office, this Court is without power to consider Whimsicality's 60(b) request to reopen the record to submit new evidence on this issue. This argument is unconvincing. The doctrine of the law of the case generally prevents a district court on remand from deviating from a mandate issued by an appellate court, see In re Ivan F. Boesky Securities Litigation, 957 F.2d 65, 69 (2d Cir.1992), and covers issues "explicitly or implicitly decided on appeal." Day v. Moscow, 955 F.2d 807, 812 (2d Cir.), cert. denied, ___ U.S. ___, 113 S.Ct. 71, 121 L.Ed.2d 37 (1992). However, the doctrine is limited by discretion and should be discarded for a "compelling reason" such as "an intervening change of law, significant new evidence, or the need to correct a clear error of law or manifest injustice." United States v. Salerno, 932 F.2d 117, 121 (2d Cir.1991). More significantly, these criteria interlock with the requirements of Rule 60(b) affording a party, in similar limited circumstances, relief from the effect of a judgment. "Like the original district court judgment, the appellate mandate relates to the record and issues then before the court, and does not purport to deal with later events. Hence, the district court is not flouting the mandate by acting on the Rule 60(b) motion." Standard Oil Co. of Cal. v. United States, 429 U.S. 17, 18, 97 S.Ct. 31, 32, 50 L.Ed.2d 21 (1976) (no requirement for leave from appellate court before moving to vacate judgment in district court after appeal). Otherwise stated, if a party meets the requirements of any of the subsections of Rule 60(b), particularly on the basis of facts or other evidence not part of the record before either the district or appellate court, a district court may vacate the judgment even though the appellate court previously reached the merits of the issue to be reopened. See Dardaganis v. Grace Capital, Inc., 755 F.Supp. 85, 88 (S.D.N.Y.1991); see also Travelers Indem. Co. v. Sarkisian, 794 F.2d 754, 757 & n. 4 (2d Cir.), cert. denied, 479 U.S. 885, 107 S.Ct. 277, 93 L.Ed.2d 253 (1986); Acha v. Beame, 438 F.Supp. 70, 74-75 (S.D.N.Y.1977), aff'd on other grounds, 570 F.2d 57 (2d Cir.1978). As neither this Court nor the appellate court considered the Vitalos Affidavit in rendering a decision in this case, the "law of the case" doctrine does not prevent this Court from considering the present 60(b) request. Whimsicality's motion should be granted if its submissions satisfy any of the subsections of 60(b) or any combination thereof. Ultimately then the law of the case requires this Court to consider the attorney's fees question in light of the observations of the Circuit Court; it does not, however, require the Court to do so within an artificially frozen record beyond the ameliorating reach of Rule 60(b), the availability of which is now considered.

Section (b)(3)

Whimsicality's assertions of fraud or other misbehavior by Rubie's as a basis to re-open the record are without merit. Rubie's position before this Court was that costumes are clothing, a subset of useful objects, and therefore not copyrightable absent physically or conceptually separate artistic elements beyond the overall shape of the items. As discussed more infra, Rubie's also raised the point that Whimsicality's use of the term "soft sculpture" on the registration applications was an attempt to mislead the Copyright Office. Rubie's contrasted this use with the use of the term "sculpture" for masks. The...