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March 31, 2003


The opinion of the court was delivered by: Lewis A. Kaplan, United States District Judge


Plaintiff Archie Comic Publications, Inc. ("ACP") is a publisher of comic books including the well-known Archie, Josie, Sabrina the Teenage Witch, and Cheryl Blossom publications. The late Daniel S. DeCarlo was a comic book artist who did freelance work for ACP beginning in the early 1950s, contributed to the Josie, Sabrina and Cheryl Blossom properties, and in recent years began claiming ownership rights in those properties. ACP seeks declaratory and injunctive relief, essentially to quiet its title to these properties against recent claims by DeCarlo's estate.

The matter now is before the Court on plaintiff's motion for summary judgment on its first through fifth claims for relief.*fn1

I. Facts

A. Defendant's Failure to Comply With Local Civ.R. 56.1

There is a preliminary matter that must be addressed before getting to the pertinent facts.

On a motion for summary judgment, the moving party bears the burden of demonstrating that there is no genuine issue of material fact and that it is entitled to judgment as a matter of law.*fn2 In considering such a motion, all facts and inferences reasonably drawn therefrom are construed in favor of the nonmoving party.*fn3

Local Civil Rule 56.1 of this Court, which is substantially similar to antecedents that have been in effect for many years, provides in relevant part as follows:

"(a) Upon any motion for summary judgment . . ., there shall be annexed to the notice of motion a separate, short and concise statement of the material facts as to which the moving party contends there is no genuine issue to be tried. Failure to submit such a statement may constitute grounds for denial of the motion.
"(b) The papers opposing a motion for summary judgment shall include a separate, short and concise statement of the material facts as to which it is contended that there exists a genuine issue to be tried.
"(c) All material facts set forth in the statement required to be served by the moving party will be deemed to be admitted unless controverted by the statement required to be served by the opposing party.
"(d) Each statement of material fact by a movant or opponent must be followed by citation to evidence which would be admissible, set forth as required by Federal Rule of Civil Procedure 56(e)."
The purpose of the rule "is to assist the Court in understanding the scope of the summary judgment motion by highlighting those facts which the parties contend are in dispute."*fn4 In the absence of the required statements, "the Court is forced to scour the record on its own in a search for evidence which may support that party's contention that a certain fact is not in dispute."*fn5

In order for a Rule 56.1 statement in opposition to a motion for summary judgment to serve this purpose, it must respond appropriately to the movant's statement. Thus, "[a] proper Rule 56.1 statement submitted by a non-movant should consist of a paragraph-by-paragraph response to the movant's 56.1 statement, much like an answer to a complaint" and must cite admissible evidence in support of the non-movant's contention that there is admissible evidence creating a genuine issue for trial.*fn6 And while it "is permissible for the non-movant to provide a separate statement, apart from this paragraph-by-paragraph response, in which it lists other facts it claims to be in dispute . . . [,] this separate statement is not a substitute for the paragraph-by-paragraph response. The non-movant, particularly if represented by counsel, should not leave it to the Court to cull from this separate statement the pieces of evidence which would support the contentions of the non-movant asserted in its paragraph-by-paragraph response without citation."*fn7

Defendant has ignored these requirements. Plaintiff submitted a detailed, 238-paragraph Rule 56.1 statement, each and every paragraph containing citations to the evidence upon which plaintiff relies for the asserted proposition. Defendant's responding statement, however, leaves the Court at sea as to the basis for defendant's contentions that there are genuine issues of material fact.

The section of defendant's Rule 56.1 statement that responds to ACP's statement contains three parts. The first lists the numbers of the paragraphs of ACP's statement that plaintiff does not dispute, which is entirely appropriate. The second is a list of 109 paragraph numbers which defendant disputes "on the grounds that they are variously inaccurate, misleading, irrelevant, hearsay, argumentative and/or incomplete."*fn8 It is utterly unsupported by any citations to the record, instead referring the Court to all of the transcripts and other sources cited by ACP "for an accurate presentation of the facts" although it must be noted that defendant's Rule 56.1 statement contains also a section, not directly responsive to ACP's statement, in which she asserts that certain enumerated propositions — many of which are conclusions of law and not factual assertions at all*fn9 — are disputed and includes some record citations. The third lists 78 paragraphs which, defendant contends, she cannot admit or deny "because they relate to transactions and discussions conducted out of [DeCarlo's] presence, without any participation, knowledge or consent on his part."*fn10

This response is utterly insufficient.*fn11 To the extent that defendant denies the assertions of plaintiff's Rule 56.1 statement, she has declined to provide citations to the record supporting her claim that certain of the movant's statements of allegedly undisputed facts actually are disputed. She instead has left the Court to "scour the record on its own in a search for evidence . . . that a certain fact is in dispute" and to seek "to cull from [her] separate statement the pieces of evidence which would support the contentions . . . asserted in [her] paragraph-by-paragraph response without citation."*fn12 In substance, the Court is asked "to peruse a haystack looking for needles."*fn13 To the extent she denies the ability to admit or deny those assertions, her response also is insufficient because alleged inability to admit or deny is no excuse, at least in the absence of a sufficent Rule 56(f) affidavit, and none has been submitted here.*fn14

As defendant has not submitted a sufficient Rule 56.1 statement, the facts set forth in ACP's statement are deemed established. In any case, the Court has reviewed the record and finds that the facts set forth below are undisputed, which is not surprising in view of the fact that defendant has submitted in opposition to the motion only two brief declarations by percipient witnesses and one by her attorney. Thus, the result here would be the same even if the Court disregarded entirely the defendant's failure to comply with Rule 56.1.

B. The Josie Property and the Prior Litigation

On March 8, 2000, DeCarlo sued ACP for a declaration that he owned the Josie property, including the related Pepper and Melody characters and, during the pendency of that action, sought in other ways to assert ownership of the Josie property.*fn15 On January 22, 2001, this Court ruled that DeCarlo's ownership claim arose under the Copyright Act, that it was barred by the statute of limitations, and that "DeCarlo is equitably estopped from claiming that ACP has violated his rights in the Josie property and characters, whether those claim are couched in terms of copyright, contract or some other legal theory."*fn16 The decision was affirmed on appeal.*fn17 It therefore is unnecessary to set out the facts upon which it was based, although they are set forth in detail in the Court's prior opinion.*fn18 Nevertheless, DeCarlo has come forward with some new evidence which, he implicitly claims, avoids the issue preclusive effect of the prior decision with respect to equitable estoppel and demonstrates the existence of at least one genuine issue of material fact as to ACP's equitable estoppel theory as it relates to all the properties involved in this case. As the Court rejects this contention below, it is unnecessary to go into the facts concerning the Josie property.

C. The Sabrina Characters

The concept of a teenage witch character was conceived of by current ACP co-owner Richard Goldwater ("Goldwater"), the son of ACP founder John Goldwater, in or before 1962.*fn19 According to Goldwater, he contacted a freelance writer, George Gladir, and asked him to write a story about "an attractive teenage witch."*fn20 Gladir obliged and was paid for the story. According to DeCarlo, this story was laid out in storyboard format like a rough sketch of a comic book story. The dialogue was written in balloons above the heads of stick figures drawn to represent the characters.*fn21 The story written by Gladir contained instructions as to how the story should be illustrated. It contained the character Sabrina (the teenage witch), as well as her "familiar," Salem, and the witch head Della.*fn22

The first Sabrina-related artwork that DeCarlo turned in to Goldwater was published as the "Sabrina the Teen-Age Witch" story contained within Madhouse #22.*fn23 The copyright notice in Madhouse #22 read "Copyright 1962 by Archie Comic Publication, Inc."*fn24 Sabrina stories appeared in ACP's Madhouse comics from July 1962 until August 1969.*fn25 During these years, Sabrina stories were separate from the Archie stories, that is, the characters did not interact and were not depicted as knowing each other.*fn26 Some of the Sabrina stories that were published in Madhouse were illustrated by DeCarlo, but ACP assigned the illustration work for many of them to other artists.*fn27

On September 30, 1969, ACP introduced a new comic book series, Archie's TV Laugh-Out Starring Sabrina the Teen-Age Witch ("Laugh-Out"), that featured various ACP characters that then were appearing on the animated television series being produced by ACP and Filmation Enterprises.*fn28 Unlike the Madhouse stories, the television show featured Sabrina living with her aunts Hilda and Zelda and attending Riverdale High School with the Archie characters.*fn29 In consequence, John Goldwater instructed the artists hired by ACP to draw the Sabrina stories for Laugh-Out that they should feature Sabrina living with her aunts and as a classmate of the Archie characters.*fn30 The first issue of Laugh-Out featured two Sabrina stories, neither of which was illustrated by DeCarlo.*fn31

In 1971, ACP began another new series, this one entitled Sabrina the Teen-Age Witch.*fn32 ACP published Sabrina stories in issues one through seventy seven of this series.*fn33 The "character likenesses" used in this series were "the same as those used in Laugh-Out and the Filmation cartoons."*fn34 DeCarlo was not one of the artists who regularly was assigned stories for the series.*fn35

ACP created several other lines of Sabrina stories and published them in various series of comic books.*fn36 DeCarlo admits that he never wrote any of the Sabrina stories, had no authority to add or drop characters from Sabrina stories, and had no editorial control over the content of the stories.*fn37 He further admits that many artists other than himself were assigned to illustrate Sabrina stories and that he never contested this practice.*fn38

In August 1994, ACP sold Viacom Productions, Inc. ("Viacom") an option on the live action theatrical and television motion picture rights, live action television and mini-series rights, and allied and ancillary rights in the "Sabrina series of characters as they currently appear in the comics published by [ACP], including, without limitation, the characters `Sabrina,' `Aunt Hilda,' and `Aunt Zelda,' together with all content, titles, plots, story-lines, themes, concepts, `look' and all other visual and print materials contained therein (collectively, `the Work')."*fn39 ACP represented and warranted that it was the sole owner of the Work and that it was the sole and exclusive owner of all of the granted rights.

DeCarlo was not consulted in ACP's decision to enter into the agreement with Viacom, but he admits that he knew about the movie and made no attempts to find out what the movie said regarding ownership of the Sabrina properties because he was not "interested in it."*fn40 He explained that "[ACP] did other things before on this same thing and never told me about it, so this is not an exception."*fn41 He learned about the Sabrina live action television series before it was broadcast when, in July 1996, he prepared artwork for the cover of a new Sabrina the Teenage Witch comic book that incorporated a picture of the actress who was to play Sabrina on the series.*fn42 He admits also to watching the premiere of the series.*fn43 DeCarlo took no steps to assert his ownership rights after learning of the television show.*fn44 He further admits that he never asked ACP for a royalty on sales of Sabrina comic books or merchandise.*fn45

As of his deposition on December 8, 2000, DeCarlo had never registered or renewed the copyrights in any works that included any of the Sabrina characters.*fn46

D. The Cheryl Blossom Property

Within the Archie universe, an eternal triangle involving Archie, Betty and Veronica has played itself out since the 1940s.*fn47 In 1982, Cheryl Blossom, "Riverdale's Newest Bombshell" was added to the mix.*fn48 Cheryl and her brother Jason were introduced in an Archie story titled "Dare to be Bare" that was published in Betty and Veronica #320.*fn49 Over the next two years, Cheryl, Jason, their parents and Cheryl's classmates at Pembroke Academy were written into stories that were published in various issues of several of ACP's comic book series.*fn50 Cheryl and her friends were portrayed as private school snobs who looked down on the Archie characters who attended public high school. These characters then disappeared for ten years. They were resurrected in 1994 ...

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