UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

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FILM CHEST MEDIA GROUP, INC.,
Plaintiff,
-against-
LISA MICHELLE HYDE and LMH
ENTERTAINMENT,
Defendants.
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14 Civ. 0368 (LAK) (AJP)
REPORT AND RECOMMENDATION
ANDREW J. PECK, United States Magistrate Judge:
To the Honorable Lewis A. Kaplan, United States District Judge:
Plaintiff Film Chest Media Group, Inc. brings this declaratory judgment action
against Lisa Michelle Hyde and her alter ego LMH Entertainment. (Dkt. No 37: Am. Compl.) In
a dispute arising out of Film Chest' s licensing to Turner Entertainment Networks, Inc. ("Turner")
of a 1970s film named The Candy Snatchers for television broadcast, Film Chest alleges that Hyde
does not own the film's copyright because it has fallen into the public domain. (Am. Compl. 24-
28.) In the alternative, Film Chest argues both that the original copyright holder for The Candy
Snatchers, Marmot Productions, did not validly convey its rights to Hyde (Am. Compl. 33-37),
and that Hyde cannot assert Marmot's rights because Marmot is a suspended corporation under
California law (Am. Compl. 30-31). Hyde counterclaims for copyright infringement on the
ground that Film Chest licensed the film to Turner for broadcast on cable television without her
permission. (Dkt No. 30: Am. Ans. 83-92.)
Presently before the Court are the parties' cross-motions for summary judgment.
(Dkt. No. 39: Film Chest Motion for Partial Summary Judgment; Dkt. No. 46: Hyde Motion for
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Summary Judgment.) For the reasons set forth below, Film Chest's motion for summary judgment
should DENIED in part but GRANTED to the extent that Hyde's counterclaim for copyright
infringement should be DISMISSED without prejudice for lack of a copyright registration. Hyde's
motion for summary judgment should be DENIED for lack of a copyright registration.
FACTS
The History of The Candy Snatchers
The Candy Snatchers is a low-budget feature length 1970s "exploitation" film. (Dkt.
No. 48: Def. 56.1 Stmt. 1; Dkt. No. 73: Pl. 56.1 Counter-Stmt 1.) The film was written and
produced by Hyde's cousin, Bryan Gindoff, and directed by Guerdon Trueblood. (Def. 56.1 Stmt.
& Pl. 56.1 Counter-Stmt. 2.) Hyde's maternal grandfather, Robert Misrach, was the film's
executive producer and her father also worked on the film. (Def. 56.1 Stmt. & Pl. 56.1 Counter-
Stmt. 4.)
Gindoff, Trueblood and Kenneth Goldman formed Marmot Productions, Inc. to
produce the film; Marmot was incorporated on or about September 15, 1972. (Def. 56.1 Stmt. &
Pl. 56.1 Counter-Stmt. 3; Dkt. No. 45: Pl. 56.1 Stmt. 16; Dkt. No. 66: Def. 56.1 Counter-Stmt.
16.) Gindoff, Goldman and Trueblood named themselves as Marmot's incorporators and directors.
(Def. 56.1 Stmt. & Pl. 56.1 Counter-Stmt. 3; Dkt. No. 56: Trueblood Aff. 3 & Ex. A at 6-8.)
1
On November 1, 1974, Marmot was suspended pursuant to California law and
remains suspended to the present day. (Pl. 56.1 Stmt. & Def. 56.1 Counter-Stmt. 17.) Trueblood
remains a shareholder and director of Marmot. (Trueblood Aff. 3.)
The parties dispute when The Candy Snatchers first appeared in theaters. Film Chest
1/
Citations to exhibits to affidavits cite to the page numbers assigned by the ECF system.
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claims that the film debuted in May 1972, based on statements in a 2005 copyright renewal
application on Hyde's behalf, discussed at pages 4-5 below. (Pl. 56.1 Stmt. 5; see Dkt. No. 40:
Sioris Aff. Exs. B & C: at 2005 copyright Application & Addendum.)
Hyde maintains that the film debuted in June 1973 and that the date on the 2005
copyright application was an error. (Def. 56.1 Stmt. 6; Dkt. No. 49: Hyde Aff. 8.) Misrach's
ex-wife stated that The Candy Snatchers debuted in Miami, Florida in June 1973. (Dkt. No. 50:
Charnas Aff. 1-5.) Trueblood submitted an early cut of the film to the Motion Picture
Association of America in February 1973 and attending the film's debut in Miami, Florida later that
year. (Def. 56.1 Stmt. 5, 6; Trueblood Aff. 5, 6.) According to Trueblood, the final theatrical
version of the The Candy Snatchers bore a notice stating that it was copyright "MCMLXXIII by
MARMOT PRODUCTIONS, INC." (Trueblood Aff. 5 & Ex. C at 72: Screen capture from the
film showing copyright notice.) Online film databases identify 1973 at the release date for The
Candy Snatchers, as do online promotional materials from both Film Chest and Turner. (Dkt. No.
64: Self Aff. Ex. A at 3-15; Self. Aff. Ex. B at 4-19.) Newspaper clippings of movie listings that
Hyde claims date to 1973 refer repeatedly to The Candy Snatchers. (Self Aff. Ex. C at 7-11.)
Finally, the August 22, 2013 letter agreement in which Film Chest purported to license The Candy
Snatchers to Turner for television broadcast identifies 1973 as the film's release date. (Self Aff.
6 & Ex. D at 3.)
Film Chest disputes Hyde's claims to a 1973 date on the grounds that "no documents
substantiate the claim that the picture was submitted to the Motion Picture Association of America
in 1973," that Hyde's claims contradict the 2005 copyright renewal application, and that much of
Hyde's evidence (e.g., newspaper clippings) is inadmissible hearsay. (Pl. 56.1 Counter-Stmt. 5,
6.)
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The Candy Snatchers first appeared on home video in 2005, when Hyde's mother
licensed DVD rights to Subversive Cinema, Inc.; Film Chest disputes however, whether Hyde's
mother was empowered to do so. (Pl. 56.1 Stmt. & Def. 56.1 Counter-Stmt. 21, 23; Def. 56.1
Stmt. & Pl. 56.1 Counter-Stmt. 8-11.) Packaging for the DVD of The Candy Snatchers released
by Subversive in 2005, as well as the DVD itself, contain a copyright notice stating that the film is
copyright "2005 LMH," with "[a]rtwork and design" copyright "2005 Subversive Cinema, Inc."
(Dkt. No. 71: Stevens Aff. Ex. BB at 8-9.)
Attempted Registration of the Film's Copyright and Transfer to Hyde
While The Candy Snatchers DVD was in production, Hyde sought to register the film
with the United States Copyright Office. (Dkt. No. 48: Def. 56.1 Stmt. 13; Dkt. No. 73: Pl. 56.1
Counter-Stmt. 13.) Hyde's application to the Copyright Office for copyright renewal for The
Candy Snatchers named Hyde as the renewal claimant/owner. (Dkt. No. 45: Pl. 56.1 Stmt. 5; Dkt.
No. 66: Def. Counter-Stmt. 5; Dkt. No. 40: Sioris Aff. Exs. B-C: Copyright Applications; Def.
56.1 Stmt. & Pl. 56.1 Counter-Stmt. 13-15; Dkt. No. 49: Hyde Aff. 6-7.) The application and
addendum state that the film was first published on May 6, 1972. (Pl. 56.1 Stmt. & Def. Counter-
Stmt. 5-6; Sioris Aff. Exs. B-C: Copyright Application & Addendum; Dkt. No. 51: Hill Aff.
5-7.) Hyde asserts that the May 1972 date was "incorrect" and the result of "inadvertent error."
(Hyde Aff. 8.)
In August 2005, Trueblood verbally affirmed that Marmot was transferring copyright
ownership of the film to Hyde. (Def. 56.1 Stmt. 16; Hyde Aff. 3, 7; Dkt. No. 56: Trueblood
Aff. 18.) Film Chest disputes whether Marmot, as a suspended corporation, could transfer rights.
(Pl. 56.1 Counter-Stmt. 16.) In January 2014, Trueblood signed a written assignment, effective
as of August 11, 2005, that retroactively memorialized the transfer of ownership of the film's
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copyright to Hyde. (Def. 56.1 Stmt. & Pl. 56.1 Counter-Stmt. 48, 49; Hyde Aff. 11 & Ex. B:
Marmot Assignment; Trueblood Aff. 9 & Ex. D: Marmot Assignment.)
While processing Hyde's 2005 application, the Copyright Office sent correspondence
to an outdated mailing address for Norman Hill of Subversive Cinema, rather than to the address
listed for Hyde's attorney on her application. (Def. 56.1 Stmt. & Pl. 56.1 Counter-Stmt. 45.) The
Copyright Office denied Hyde's application and closed its file in June 2007 after having received
no response from her. (Def. 56.1 Stmt. & Pl. 56.1 Counter-Stmt. 46.) Hyde did not learn of the
Copyright Office's action until late December 2013. (Def. 56.1 Stmt. & Pl. 56.1 Counter-Stmt.
45.)
Hyde submitted a new copyright registration application in January 2014. (Def. 56.1
Stmt. & Pl. 56.1 Counter-Stmt. 47.) On July 9, 2014 the Copyright Office rejected Hyde's
application on the ground that "the DVD sent as the deposit does not contain a copyright notice" and
therefore "it appears that this work was first published without the required copyright notice." (Def.
56.1 Stmt. & Pl. 56.1 Counter-Stmt. 50; Pl. 56.1 Stmt. & Def. Counter-Stmt. 10; Dkt. No. 64:
Self Aff. 6 & Ex. E.) Hyde sought reconsideration, and her attorney replied in writing to the
Copyright Office to point out exactly where in the film the copyright notice appears. (Def. 56.1
Stmt. & Pl. 56.1 Counter-Stmt. 51; Self Aff. 6 & Ex. F.) Hyde claims that her application
remains pending before the Copyright Office; Film Chest disputes this on the ground that the record
contains no statements by any person at the Copyright Office to substantiate her claim. (Def. 56.1
Stmt. 54; Pl. 56.1 Counter-Stmt. 54; Dkt. No. 64: Self Aff. 8.)
Film Chest Licenses the Film to Turner
Film Chest's business consists of distributing motion pictures for broadcast in a
variety of media, including cable television. (Dkt. No. 45: Pl. 56.1 Stmt. 1, 2; Dkt. No. 66: Def.
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Counter-Stmt. 1, 2.) In spring 2013 and again in July 2013, Film Chest's then-president Phillip
Hopkins contacted Norman Hill of Subversive Cinema to express interest in releasing The Candy
Snatchers on DVD. (Dkt. 48: Def. 56.1 Stmt. 20; Dkt. No. 73: Pl. 56.1 Counter-Stmt. 20.) On
August 22, 2013, Film Chest entered into a letter agreement with Turner authorizing Turner to
broadcast The Candy Snatchers for a term of ten years. (Def. 56.1 Stmt. & Pl. 56.1 Counter-Stmt.
21; Pl. 56.1 Stmt. & Def. Counter-Stmt. 24.)
On September 24, 2013, Hill informed Film Chest by email that Hyde had chosen
not to move forward with licensing The Candy Snatchers for a DVD release by Film Chest. (Def.
56.1 Stmt. & Pl. 56.1 Counter-Stmt. 27.) Film Chest continued to express interest in licensing
the film for broadcast by Turner. (Def. 56.1 Stmt. & Pl. 56.1 Counter-Stmt. 28.) On September
25, 2013, Hill informed Film Chest that Hyde also had chosen not to license the film for broadcast
by Turner. (Def. 56.1 Stmt. & Pl. 56.1 Counter-Stmt. 30, 31.) Film Chest nevertheless delivered
a broadcast-grade master of The Candy Snatchers to Turner. (Def. 56.1 Stmt. & Pl. 56.1 Counter-
Stmt. 32.)
Turner advertised that it would broadcast the film on its Turner Classic Movies
channel on November 23, 2013. (Def. 56.1 Stmt. & Pl. 56.1 Counter-Stmt. 33.) On October 17,
2013, Hyde sent a cease and desist letter to Film Chest, but Film Chest "refused to back down."
(Def. 56.1 Stmt. & Pl. 56.1 Counter-Stmt. 34, 35.) On November 22, 2013, Tuner canceled the
planned broadcast after being contacted directly by Hyde's attorney. (Def. 56.1 Stmt. & Pl. 56.1
Counter-Stmt. 36, 37.) The Candy Snatchers eventually appeared on Turner's Turner Classic
Movies channel on April 26, 2014. (Def. 56.1 Stmt. & Pl. 56.1 Counter-Stmt. 43; Dkt. No. 49:
Hyde Aff. 14.)
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ANALYSIS
I. SUMMARY JUDGMENT STANDARD
Rule 56 of the Federal Rules of Civil Procedure provides that the "court shall grant
summary judgment if the movant shows that there is no genuine dispute as to any material fact and
the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a); see also, e.g., Celotex
Corp. v. Catrett, 477 U.S. 317, 322, 106 S. Ct. 2548, 2552 (1986); Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 247, 106 S. Ct. 2505, 2509-10 (1986); Humphreys v. Cablevision Sys. Corp., 533 F.
App'x 13, 14 (2d Cir. 2014); Connolly v. Calvanese, 515 F. App'x 62, 62 (2d Cir. 2013); Lang v.
Ret. Living Publ'g Co., 949 F.2d 576, 580 (2d Cir. 1991).
The burden of showing that no genuine factual dispute exists rests on the party
seeking summary judgment. See, e.g., Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S. Ct.
1598, 1608 (1970); Alzawahra v. Albany Med. Ctr., 546 F. App'x 53, 54 (2d Cir. 2013); Chambers
v. TRM Copy Ctrs. Corp., 43 F.3d 29, 36 (2d Cir. 1994); Gallo v. Prudential Residential Servs., Ltd.
P'ship, 22 F.3d 1219, 1223 (2d Cir. 1994). The movant may discharge this burden by demonstrating
to the Court that there is an absence of evidence to support the non-moving party's case on an issue
on which the non-movant has the burden of proof. See, e.g., Celotex Corp. v. Catrett, 477 U.S. at
323, 106 S. Ct. at 2552-53; Dolan v. Cassella, 543 F. App'x 90, 90 (2d Cir. 2013).
To defeat a summary judgment motion, the non-moving party "'must do more than
simply show that there is some metaphysical doubt as to the material facts.'" Scott v. Harris, 550
U.S. 372, 380, 127 S. Ct. 1769, 1776 (2007) (quoting Matsushita Elec. Indus. Co. v. Zenith Radio
Corp., 475 U.S. 574, 586, 106 S. Ct. 1348, 1356 (1986)). Instead, the non-moving party must "cit[e]
to particular parts of materials in the record" to show that "a fact . . . is genuinely disputed." Fed.
R. Civ. P. 56(c)(1); see, e.g., Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. at 587,
Case 1:14-cv-00368-LAK-AJP Document 78 Filed 10/22/14 Page 7 of 17
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106 S. Ct. at 1356; Alzawahra v. Albany Med. Ctr., 2013 WL 6284286 at *1; Weinstock v.
Columbia Univ., 224 F.3d 33, 41 (2d Cir. 2000) (at summary judgment, "[t]he time has come . . .
'to put up or shut up'"), cert. denied, 540 U.S. 811, 124 S. Ct. 53 (2003).
In evaluating the record to determine whether there is a genuine issue as to any
material fact, "[t]he evidence of the non-movant is to be believed, and all justifiable inferences are
to be drawn in his favor." Anderson v. Liberty Lobby, Inc., 477 U.S. at 255, 106 S. Ct. at 2513.
2

The Court draws all inferences in favor of the non-moving party only after determining that such
inferences are reasonable, considering all the evidence presented. See, e.g., Apex Oil Co. v.
DiMauro, 822 F.2d 246, 252 (2d Cir.), cert. denied, 484 U.S. 977, 108 S. Ct. 489 (1987). "If, as to
the issue on which summary judgment is sought, there is any evidence in the record from any source
from which a reasonable inference could be drawn in favor of the nonmoving party, summary
judgment is improper." Chambers v. TRM Copy Ctrs. Corp., 43 F.3d at 37.
In considering a motion for summary judgment, the Court is not to resolve contested
issues of fact, but rather is to determine whether there exists any disputed issue of material fact. See,
e.g., Donahue v. Windsor Locks Bd. of Fire Comm'rs, 834 F.2d 54, 58 (2d Cir. 1987); Knight v.
U.S. Fire Ins. Co., 804 F.2d 9, 11 (2d Cir. 1986), cert. denied, 480 U.S. 932, 107 S. Ct. 1570 (1987).
To evaluate a fact's materiality, the substantive law determines which facts are critical and which
facts are irrelevant. See, e.g., Anderson v. Liberty Lobby, Inc., 477 U.S. at 248, 106 S. Ct. at 2510.
While "disputes over facts that might affect the outcome of the suit under the governing law will
2/
See also, e.g., Crown Castle NG E. Inc. v. Town of Greenburgh, N.Y., No. 13-2921-cv, ---
F. App'x ----, 2014 WL 185012 at *2 (2d Cir. Jan. 17, 2014); Alzawahra v. Albany Med.
Ctr., 2013 WL 6284286 at *1; Feingold v. New York, 366 F.3d 138, 148 (2d Cir. 2004);
Chambers v. TRM Copy Ctrs. Corp., 43 F.3d at 36; Gallo v. Prudential Residential Servs.,
Ltd. P'ship, 22 F.3d at 1223.
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properly preclude the entry of summary judgment[,] [f]actual disputes that are irrelevant or
unnecessary will not be counted." Id. at 248, 106 S. Ct. at 2510 (citations omitted); see also, e.g.,
Knight v. U.S. Fire Ins. Co., 804 F.2d at 11-12.
When there are cross-motions for summary judgment:
The same standard applies where, as here, the parties filed cross-motions for
summary judgment . . . . Moreover, even when both parties move for summary
judgment, asserting the absence of any genuine issues of material fact, a court need
not enter judgment for either party. Rather, each party's motion must be examined
on its own merits, and in each case all reasonable inferences must be drawn against
the party whose motion is under consideration.
Morales v. Quintel Entm't, Inc., 249 F.3d 115, 121 (2d Cir. 2001) (citation omitted).
3
II. THE COPYRIGHT ACT OF 1909 APPLIES
The Copyright Act of 1909 (the "1909 Act") governs works published prior to the
January 1, 1978 effective date of the 1976 Copyright Act (the "1976 Act"), which is non-retroactive.
See, e.g., Martha Graham School & Dance Found., Inc. v. Martha Graham Ctr. of Contemporary
Dance, Inc., 380 F.3d 624, 631-33 (2d Cir. 2004) (applying 1909 Act to works published prior to
1978), cert. denied, 544 U.S. 1060, 125 S. Ct. 2518 (2005); Kepner-Tregoe, Inc. v. Vroom, 186 F.3d
3/
Accord, e.g., Parent v. New York, 485 F. App'x 500, 503 (2d Cir.), cert. denied, 133 S. Ct.
652 (2012); Chandok v. Klessig, 632 F.3d 803, 812 (2d Cir. 2011); Law Debenture Trust Co.
v. Maverick Tube Corp., 595 F.3d 458, 468 (2d Cir. 2010); Bronx Household of Faith v. Bd.
of Educ. of N.Y., 492 F.3d 89, 96 (2d Cir. 2007), cert. denied, 132 S. Ct. 816 (2011);
Barhold v. Rodriguez, 863 F.2d 233, 236 (2d Cir. 1988); Eastman Mach. Co. v. United
States, 841 F.2d 469, 473-74 (2d Cir. 1988); Echevvaria v. Diversified Consultants, Inc., 13
Civ. 4980, 2014 WL 929275 at *3 (S.D.N.Y. Feb. 28, 2014) (Peck, M.J.); Charron v.
Sallyport Global Holdings, Inc., 12 Civ. 6837, 2014 WL 464649 at *2 (S.D.N.Y. Feb. 3,
2014); BMCThe Benchmark Mgmt. Co. v. V3 231, LLC, 12 Civ. 7921, 2013 WL 5420982
at *4 (S.D.N.Y. Sept. 27, 2013); Bodur v. Palisades Collection, LLC, 829 F. Supp. 2d 246,
250-51 (S.D.N.Y. 2011) (Peck, M.J.); Aristocrat Leisure Ltd. v. Deutsche Bank Trust Co.
Ams., 618 F. Supp. 2d 280, 291 (S.D.N.Y. 2009); Alfano v. CIGNA Life Ins. Co., 07 Civ.
9661, 2009 WL 222351 at *13 (S.D.N.Y. Jan. 30, 2009) (Lynch, D.J.); Revlon Consumer
Prods. Corp. v. Estee Lauder Cos., 00 Civ. 5960, 2003 WL 21751833 at *7 (S.D.N.Y. July
30, 2003) (Peck, M.J.).
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283, 287-88 (2d Cir. 1999) (applying 1909 Act to work first published in 1971); Roth v. Pritikin,
710 F.2d 934, 937-40 (2d Cir.) (1976 Act is non-retroactive based on legislative history and fact that
statute was passed in 1976 with an effective date of January 1978), cert. denied, 464 U.S. 961, 104
S. Ct. 394 (1983); 3 Patry on Copyright 6:9 (2013) ("The 1909 Act governs the question of
publication for works first published between March 4, 1909 and December 31, 1977."). Neither
party disputes the applicability of the 1909 Act to The Candy Snatchers. (Dkt. No. 44: Film Chest
Br. at 15; Dkt. No. 65: Hyde Reply Br. at 2.)
"Under the 1909 Act, the publication of a work, with a proper notice, secured
statutory copyright protection." Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586, 590
(2d Cir.), cert. denied, 527 U.S. 1033, 119 S. Ct. 2399 (1999); see 17 U.S.C. 10 (repealed effective
1978), reprinted at 8 Nimmer on Copyright app. 6 (2014) ("Any person entitled thereto by this title
may secure copyright for his work by publication thereof with the notice of copyright required by
this title; and such notice shall be affixed to each copy thereof published or offered for sale in the
United States by authority of the copyright proprietor."); 2 Nimmer on Copyright 7.02[C][1]
(2014) ("Under the 1909 Act, a work had to bear a valid copyright notice upon publication in order
to secure copyright protection."); 3 Patry on Copyright 6:29 ("The 1909 Act made major changes
in U.S. copyright law. Instead of copyright vesting upon filing title of the work with the Library of
Congress, statutory copyright generally came into being upon publication of the work with a proper
notice."). "[I]n the case of motion pictures the notice might appear either at the end of the film, or
as part of the credits at the beginning." 2 Nimmer on Copyright 7.10[B] (fns. omitted).
Under the 1909 Act, failure to attach a proper notice at the time of publication caused
a work to become public domain. Stewart v. Abend, 495 U.S. 207, 233, 110 S. Ct. 1750, 1766 (1990)
("Under the 1909 Act, it was necessary to publish the work with proper notice to obtain copyright.
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Publication of a work without proper notice automatically sent a work into the public domain."); 2
Nimmer on Copyright 7.02[C][1] ("Works with defective notice were injected into the public
domain immediately upon publication."). The name of the copyright owner was required to be
included in the copyright notice; under the 1909 Act a notice that failed to name the owner was
ineffective even against one with actual knowledge of the owner's identity. See, e.g., Krafft v.
Cohen, 117 F.2d 579, 580 (3d Cir. 1941) ("The first copies of the Brochure . . . lacked the name of
the proprietor. This notice was clearly defective because it did not comply with the statute . . . .
Publication without the proper notice is ineffective to secure to the publisher a copyright."); Ross
Prods., Inc. v. N.Y. Merch. Co., 233 F. Supp. 260, 264 (S.D.N.Y. 1964) ("[I]t is clear that where there
is a substantial variation in the form of such notice, and surely where there is no notice whatsoever,
the fact that the defendant knew that there was a copyright will not prevent the item from falling into
the public domain."); 2 Nimmer on Copyright 7.09[A] ("The name of the copyright owner must be
included in the copyright notice. It was held under the 1909 Act that a notice defective in this respect
would not be effective even as against one who had actual knowledge of the identity of the copyright
proprietor.").
The 1909 Act did not require the owner of a work to register it with the United States
Copyright Office in order to obtain statutory protection. See 17 U.S.C. 11 (repealed effective
1978), reprinted at 8 Nimmer on Copyright app. 6 ("Such person may obtain registration of his claim
to copyright by complying with the provisions of this title, including the deposit of copies, and upon
such compliance the Register of Copyrights shall issue to him the certificates . . . " (emphasis
added)); Washingtonian Publ'g Co. v. Pearson, 306 U.S. 30, 39, 59 S. Ct. 397, 402 (1939)
("Petitioner's claim of copyright came to fruition immediately upon publication."); 2 Nimmer on
Copyright 7.16[A][2][b] ("Pre-1978 works could have obtained statutory copyright under the 1909
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Act, without the necessity of registration, simply by the act of publishing copies of the work bearing
a proper copyright notice. As to such works, registration did not create the copyright, but merely
recorded it.").
The 1909 Act, however, made registration with the Copyright Office a condition
precedent to filing a suit for copyright infringement. See 17 U.S.C. 13 (repealed effective 1978),
reprinted at 8 Nimmer on Copyright app. 6 ("No action or proceeding shall be maintained for
infringement of copyright in any work until the provisions of this title with respect to the deposit of
copies and registration of such work shall have been complied with."); see also, e.g.., Lumiere v.
Pathe Exch., 275 F. 428, 430 (2d Cir. 1921) ("Deposit of copies and registration is each a condition
precedent of the right to maintain an action for infringement."); Loomskill Inc. v. Rubine Levine &
Co., 68 Civ. 4301, 1968 WL 8430 at *1 (S.D.N.Y. Nov. 7, 1968); Rosedale v. News Syndicate Co.,
39 F. Supp. 357, 357 (S.D.N.Y. 1941) ("[T]he decisions are that the deposit of two copies . . . and
registration . . . are conditions precedent to the right to maintain an action of this character."); 3 Patry
on Copyright 6:29 ("Deposit and registration where required [under the 1909 Act] as a prerequisite
to the maintenance of an infringement action . . . ").
To fulfill the 1909 Act's registration requirement, a plaintiff must have successfully
obtained a registration certificate from the Copyright Office. See, e.g., Vacheron & Constantin-Le
Coultre Watches, Inc. v. Benrus Watch Co., 260 F.2d 637, 640-41 (2d Cir. 1958) (because the deposit
requirement of the 1909 Act is satisfied by submitting an application and paying the required fee, the
condition imposed by the registration requirement must be "acceptance by the Register"); Loomskill
Inc. v. Rubine Levine & Co., 1968 WL 8430 at *1 ("In order to complete registration, it is necessary
for the plaintiff to obtain a registration certificate from the copyright office."); Algonquin Music, Inc.
v. Mills Music, Inc., 93 F. Supp. 268, 268 (S.D.N.Y. 1950) ("The procural of [a certificate of
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registration] is a prerequisite for the maintenance of this action."); 2 Nimmer on Copyright
7.16[B][6][a] ("The 1909 Act set up the scheme in which registration was a condition precedent to
the filing of an infringement action, which is still generally followed today. As under current law,
that requirement applied whether the infringement predated or followed the registration . . . . Under
the 1909 Act, failure to obtain a registration certificate from the Copyright Office was fatal." (fns.
omitted)).
III. BOTH PARTIES' MOTIONS FOR SUMMARY JUDGMENT SHOULD BE DENIED
BECAUSE THERE IS A GENUINE FACTUAL DISPUTE AS TO WHEN THE
CANDY SNATCHERS WAS FIRST PUBLISHED
The crux of Film Chest's motion is its argument that The Candy Snatchers is not
protected by copyright because "[a]s a result of being published [in May 1972] without the corporate
claimant Marmot being in existence on the . . . publication [date] the picture lost its common law
copyright and was dedicated to the public for failing to comply with the strictures of the 1909 Act."
(Dkt No. 44: Film Chest Br. at 16.) Film Chest points to Hyde's 2005 copyright renewal application
and addendum, which state that The Candy Snatchers was first published on May 6, 1972, before
Marmot was incorporated in September 1972. (Film Chest Br. at 9, 16; see page 4 above.)
According to Film Chest, "[l]acking an existing claimant on its date of publication, the picture fell
into the public domain on May 6, 1972 as a result of its divestive, general publication." (Film Chest
Br. at 17.)
Hyde does not deny that her 2005 copyright renewal application and addendum
identified the initial publication date of The Candy Snatchers as May 6, 1972. (See pages 3-4 above.)
Hyde however, claims that the 1972 date was an inadvertent error and is contradicted by extensive
Case 1:14-cv-00368-LAK-AJP Document 78 Filed 10/22/14 Page 13 of 17
14
other evidence. (Dkt. No. 47: Hyde Br. at 17-18; see pages 3-4 above.)
4
If "there is any evidence in the record from any source from which a reasonable
inference could be drawn in favor of the nonmoving party, summary judgment is improper."
Chambers v. TRM Copy Ctrs. Corp., 43 F.3d 29, 37 (2d Cir. 1994) (emphasis added); see cases cited
at pages 8-9 above. The record contains substantial evidence, including Trueblood's testimony, that
The Candy Snatchers was first "published", i.e., exhibited, in June 1973. (See page 3 above.)
However, the record also contains evidence, in the form of Hyde's 2005 copyright renewal
application and addendum, that The Candy Snatchers debuted in May 1972, prior to Marmot's
incorporation. (See page 4 above.) Notwithstanding Hyde's claim that the 1972 date is an error
(see pages 3-4 above), there is a material factual dispute that cannot be resolved on summary
judgment.
5

Finally, Film Chest argues that "[i]f the defendants' publication claims are true, they
were nonetheless remiss, doing nothing to correct or to amend the 2005 renewal filings within five
years pursuant to 17 U.S.C. 405(a)" and that "[a]lternatively, under 17 U.S.C. 21 (repealed)
4/
Hyde further argues that even if The Candy Snatchers had been published in May 1972,
"Film Chest provides no authority whatsoeverstatutory or otherwisefor its ipso facto
assumption that the picture must therefore have immediately entered the public domain" and
"has failed to provide . . . any legal support for their dubious proposition that, under the
Copyright Act of 1909, ownership of a work was automatically forfeited by operation of law
if the authoring corporation were to file its Articles of Incorporation just a few months after
the work's initial publication." (Hyde Br. at 19.) The 1909 Act required publication with
proper notice, including the name of the work's owner, to prevent a work falling into the
public domain. (See cases cited at pages 10-11 above.) Hyde has presented no law to
support her argument that Marmot could have been the copyright owner for The Candy
Snatchers even if the film were first published prior to Marmot's incorporation. The Court
therefore declines to find that the disputed fact of The Candy Snatchers' first publication date
is immaterial.
5/
The Court believes that Hyde's evidence is likely to prevail at trial on this issue, but the
Court cannot resolve the factual dispute on this summary judgment motion.
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15
defendants never 'sought to comply' with the notice provisions of the 1909 Act" because "[t]he
registration attempt of January 2014 was made in disregard of the 2005 renewal filings." (Dkt. No.
74: Film Chest Reply Br. at 12.) The 1909 Act, however, did not require registration, only that the
work include a copyright notice. (See pages 10-12 above.) Film Chest has provided no evidence that
The Candy Snatchers was published without notice. In contrast, Trueblood testified that the film
contained the requisite copyright notice, which is supported by the screen shot from the film
containing the copyright notice. (See page 3 above.)
Both parties should be denied summary judgment with respect to whether the The
Candy Snatchers fell into the public domain at the time of its publication.
IV. HYDE'S COUNTERCLAIM FOR COPYRIGHT INFRINGEMENT SHOULD BE
DISMISSED WITHOUT PREJUDICE BECAUSE HYDE HAS NOT MET THE
REGISTRATION REQUIREMENT OF THE 1909 ACT

Under the 1909 Act, obtaining a registration certificate from the Copyright Office is
a condition precedent to an infringement action. (See pages 12-13 above.) Hyde's 2005 application
to register The Candy Snatchers was denied, as was her 2014 application, although her request for
reconsideration is pending. (See page 5 above.) Hyde has not fulfilled the 1909 Act's registration
requirement.
Hyde nonetheless has made good-faith efforts to comply with the registration
requirement. Hyde's 2005 application appears to have been denied as a result of the Copyright
Office's mailing error. (See page 5 above.) Similarly, the Copyright Office initially denied Hyde's
2014 application on the ground that the DVD she submitted did not contain a copyright notice, but
evidence in the record supports Hyde's claim that this too is an error by the Copyright Office. (See
page 5 above.) Nevertheless, Hyde still does not have a copyright registration. Hyde's counterclaim
for copyright infringement therefore should be dismissed without prejudice to her right to commence
Case 1:14-cv-00368-LAK-AJP Document 78 Filed 10/22/14 Page 15 of 17
16
a new action if she obtains a copyright registration certificate.
6
See, e.g., Lumiere v. Pathe Exch.,
275 F. 428, 430 (2d Cir. 1921) (affirming district court's dismissal without prejudice of plaintiff's
copyright infringement claim where plaintiff lacked copyright registration); Loomskill Inc. v. Rubine
Levine & Co., 68 Civ. 4301, 1968 WL 8430 at *1 (S.D.N.Y. Nov. 7, 1968) (dismissing plaintiff's
claim for copyright infringement for failure to obtain registration certificate); Algonquin Music, Inc.
v. Mills Music, Inc., 93 F. Supp. 268, 268 (S.D.N.Y. 1950) (dismissing complaint without prejudice
for failure to obtain registration certificate); Rosedale v. News Syndicate Co., 39 F. Supp. 357, 358
(S.D.N.Y. 1941) ("In view of the plaintiff's apparent efforts to comply with the statute, I will dismiss
the complaint without costs, and without prejudice, as was done in the Lumiere case . . . .").
7
CONCLUSION
For the reasons set forth above, Film Chest's motion for summary judgment (Dkt. No.
39) should DENIED in part but GRANTED to the extent that Hyde's counterclaim for copyright
infringement should be DISMISSED without prejudice for lack of copyright registration. Hyde's
motion for summary judgment (Dkt. No. 46) also should be DENIED for lack of copyright
registration.
The Joint PTO, in accordance with Judge Kaplan's Individual Practices, is due by
November 21, 2014.
6/
That Hyde cannot now maintain her counterclaim does not mean that The Candy Snatchers
is in the public domain.
7/
Because Hyde cannot yet bring a copyright infringement claim even assuming arguendo that
Marmot was able to assign the copyright for The Candy Snatchers to her, it is not necessary
for the Court to rule on Film Chest's argument that the assignment was invalid under
California law because Marmot was a suspended corporation when it occurred. (Compare
Dkt. No. 44: Film Chest Br. at 20-23; Dkt. No. 74: Film Chest Opp. Br. at 6-10; with Dkt.
No. 47: Hyde Br. at 9-13; Dkt. No. 65: Hyde Opp. Br. at 8-14.)
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FILING OF OBJECTIONS TO THIS REPORT AND RECOMMENDATION
Pursuant to 28 U.S.C. 636(b)(1) and Rule 72(b) of the Federal Rules of Civil
Procedure, the parties shall have fourteen (14) days from service of this Report to file written
objections. See also Fed. R. Civ. P. 6. Such objections (and any responses to objections) shall be
filed with the Clerk of the Court, with courtesy copies delivered to the chambers of the Honorable
Lewis A. Kaplan, 500 Pearl Street, Room 2240, and to my chambers, 500 Pearl Street, Room 1370.
Any requests for an extension of time for filing objections must be directed to Judge Kaplan (with
a courtesy copy to my chambers). Failure to file objections will result in a waiver of those objections
for purposes of appeal. Thomas v. Arn, 474 U.S. 140, 106 S. Ct. 466 (1985); Ingram v. Herrick, 475
F. App'x 793, 793 (2d Cir. 2012); IUE AFL-CIO Pension Fund v. Herrmann, 9 F.3d 1049, 1054 (2d
Cir. 1993), cert. denied, 513 U.S. 822, 115 S. Ct. 86 (1994); Frank v. Johnson, 968 F.2d 298, 300 (2d
Cir. 1992), cert. denied, 506 U.S. 1038, 113 S. Ct. 825 (1992); Small v. Sec'y of Health & Human
Servs., 892 F.2d 15, 16 (2d Cir. 1989); Wesolek v. Canadair Ltd., 838 F.2d 55, 57-59 (2d Cir. 1988);
McCarthy v. Manson, 714 F.2d 234, 237-38 (2d Cir. 1983).
Dated: New York, New York
October 21, 2014
Respectfully submitted,
_______________________________
Andrew J. Peck
United States Magistrate Judge
Copies ECF to: All Counsel
Judge Lewis A. Kaplan
Case 1:14-cv-00368-LAK-AJP Document 78 Filed 10/22/14 Page 17 of 17