Inside the Archie v. Penders Pre-Trial Report

Inside the Archie v. Penders Pre-Trial Report

by February 13, 2012

A Who’s Who of Sonic Comic Past Planned for Penders’s Defense

Should Archie v. Penders ever actually reach a trial, the more than forty page proposed pre-trial order filed in December and obtained recently by TSSZ afford, even in short excerpts, a good roadmap as to what both sides will argue in supporting their case to a jury.

We also learn some details about the case that weren’t necessarily clear before; among them, Penders allegedly began filing for copyright protection regarding many of the works he created while working as an independent contractor for Archie in 2009.  (We should note that Ian Flynn took over Ken’s writing duties beginning with issues published in 2006.) It also turns out Penders allegedly filed more than the 135 copyright registrations we first found when this first came to light; Archie claims “at least one-hundred-seventy-one” copyrights were filed between 2009 and 2010.

When those registrations were made final in 2010, Penders’s counsel allegedly sent notice to Archie several days before Penders made it public via his website, and alleged the company was infringing on his copyright.

“After written correspondence was exchanged for several months, Penders continued his charge of infringement and threats of filing a lawsuit,” said partial remarks in the report supporting the plaintiff’s claims.  “It became clear that unless ACP acquiesced to Penders demands, that he would file suit against ACP. ACP feared they would be unfairly sued for copyright infringement.”

We also learn in the report that a claim against Penders was dropped by Archie, in light of Sega renewing its deal with the company to continue publishing the comics.  Archie had previously alleged “intentional interference with contractual relations” on Penders’s part, but has withdrawn that claim due to the successful renewal.  Two counts seeking relief for breach of contract remain.  One claim seeking a declaratory judgment that the contracts in question “are valid and enforceable, and that ACP does not infringe the Works or registrations asserted by Penders in his threats of suit” also remains.  A second claim seeking a second declaratory judgment also remains.  This claim seeks a court order for all copyright registrations in question to be canceled.

“Penders’ acts and conduct were in derogation of the contractual terms of the ACP-Penders Agreements, and he made false statements in the applications, claiming to have written transfer agreements with co-authors, when in fact he did not,” says the plaintiff’s claim in part, perhaps referring to several co-authorships made on several of those copyright registrations.

The defense has claims of its own, however.  Penders is seeking a declaratory judgment that says the works he copyright do not infringe on the rights Archie may have, and that Archie’s use of them in of itself constitute copyright infringement.  From there, the second claim asks for relief on “direct infringement” of those rights, assuming they hold up.  The third are fourth claim are the interesting ones, as they appear to factor in Archie’s republication of classic issues to newsstands and digital media.  They seek relief for both “vicarious” and “contributory” infringement by Archie as it relates to alleged direct infringement by  several companies that have their hand in the Sonic comics, one way or the other.  Those companies include Apple, Sony, Archie Comic app maker iVerse Media, and in the case of the “vicarious” claim, Toys ‘R’ Us, Barnes and Noble, Jazwares, and Kablenews, among others.

Though Archie claims to have documents on the record that show Penders signed work-for-hire agreement, with an alleged signature in tow, the defense still argues among several other legal intricacies that those documents are not authentic–and plans to call several witnesses to prove it:

Despite ACP’s current argument and the language of the proffered documents, it was not common practice at ACP during this time to require Penders nor any other of the SONIC Freelancers to sign such documents. In fact, several of Penders’ witnesses are similarly situated freelance employees who worked on SONIC, and will state, like Penders, that they all worked as freelancers without contracts for many years, and overlapping with the time that Penders worked on Sonic.

Those freelancers are familiar names to longtime Sonic comic fans.  Past Sonic editors Scott Fulop, Justin Gabrie, and Daryl Edelman plan to testify for the defense that either Archie did not send contracts out to freelancers like Penders when it came to the Sonic series, and/or they themselves as freelancers were not asked to sign a work-for-hire agreement while they worked on the comic.  Other names, like former artists Scott Shaw and Jim Valentino, and former writers Mike Kanterovich and Karl Bollers are also on the defense’s witness list, as they too are expected to testify they never signed a work-for-hire agreement with Archie.  In the case of Shaw, the report notes, he was allegedly not under a contract from 1993 through 1996.  Former Archie VP of Finance Ed Spallone was scheduled to be a defense witness, but as we reported last week, a surprise affidavit from Spallone was included in Archie’s motion for summary judgment.

Another planned defense witness, Elliot S. Maggin, will be challenged by Archie over rules governing expert testimony.  A representative from the US Copyright office, William Briganti, is also expected to testify for the defense; he is expected to, according to the report, “offer evidence which refutes Plaintiff’s allegations of Defendant’s fraud.”

Archie has witnesses they expect to testify as well, and strange as it may sound, it includes Penders himself.  Given what, according to the report, plaintiff’s attorneys intend to grill him on–and in particular the pieces we’ve bolded–it may be a rough go:

Mr. Penders is expected to testify about, among other things, allegations and issues raised by Plaintiff in the Complaint; allegations and issued raised by Defendant in the Amended Answer, Affirmative Defenses, and Counterclaims, and purported copyright registrations and alleged infringement thereof; Defendant’s work for ACP; his bankruptcy; his execution of the ACP-Penders Agreements; his work for ACP; his request for royalties in 1997 which was refused by ACP; his silence while working for ACP and never placing ACP on notice of his claim to any rights in the work commissioned by ACP; ACP’s payment for all work provided to it by Penders; the purported registrations at issue; his communications with the Copyright Office; his statements under oath that he had a written transfer agreement from co-authors named in applications, when in fact he did not; his work as compared to the published product; and his silence about his claim to own rights in the works he provided to ACP for more than 15 years, and his admission to receipt of documents from ACP and signing a work made for hire agreement in an email from December 2008.

With any document as voluminous as this, many of the finer details, and the opinions that may come from them, are hard to hammer down without a good read of your own.  However, because personally identifying details are included in the report, TSSZ has elected not to publish the report cited in full.  Of course, all of this may be for naught if the matter never makes it to trial.  Archie filed its motion for summary judgment last week and if granted, it would in effect end the case with the comic giant prevailing.  Penders and his legal team have until early March to respond.