Full opinion text
ORDER GRANTING DEFENDANTS’ MOTION FOR RECONSIDERATION LARSON, District Judge. This case is the latest chapter in the continuing saga over who owns the copyright to “Superboy,” the youthful persona of the iconic comic book super hero “Superman,” spanning from the golden age of print media comics to the present-day revolution in digital media. Like the entire spectrum of graphics media technology, the law governing ownership rights to copyrights has changed dramatically, and it is precisely these changes in the law that bring this case to this Court. Although the story of how Superman and later Superboy came into being has become the stuff of legend among comic book fans, the Court will recite it once more for those unfamiliar with the tale. Jerome Siegel and Joseph Shuster are Superman’s creators. In 1933, Siegel conceived of the idea of a comic strip featuring a character who is sent to Earth from a distant planet and, with superhuman powers, performs daring feats for the public good. Siegel named his character “Superman.” Siegel discussed his idea with Shuster, an artist, and together they crafted a comic strip consisting of several weeks worth of material (both dialogue and artwork, some of the latter being completely “inked in” and ready for publication, and some consisting of no more than black-and-white pencil drawings) suitable for newspaper syndication embodying that idea. The two shopped the character around for a number of years to numerous publishers but were unsuccessful in having it published. In the meantime, Siegel and Shuster penned other comic book strips at their artist studio in Cleveland, Ohio, and sold them for publication, most notably “Slam Bradley” and “The Spy” to Nicholson Publishing Co., who purchased their material for resale to Detective Comics. When Nicholson folded shop in 1937, Detective Comics acquired some of its magazine properties, including the comic book strips penned by Siegel and Shuster. The two entered into an agreement with Detective Comics on December 4, 1937, whereby they agreed to furnish some of the existing comic strips for the next two years and further agreed “that all of these products and work done by [them] for [Detective Comics] during said period of employment shall be and become the sole and exclusive property of [Detective Comics] and [Detective Comics] shall be deemed the sole creator thereof....” The agreement further provided that any new or additional features by Siegel and Shus-ter were to be submitted first to Detective Comics, who was given the initial option (to be exercised within sixty days after submission) to publish the material. Soon thereafter Detective Comics became interested in publishing Siegel and Shuster’s now well-traveled Superman idea (but in an expanded 13-page comic book format), the interest eventually culminating with Superman’s release in April, 1938, in the first volume of Action Comics, a new comic magazine issued by Detective Comics. The Superman comic strip became an instant success and Superman’s popularity continues to endure to this day as his depiction has been transferred to varying media formats. On March 1, 1938, before Superman’s publication, Siegel and Shuster assigned to Detective Comics “all [the] good will attached ... and exclusive right[s]” to Superman in exchange for $130. This assignment in ownership rights was later confirmed in a September, 22, 1938, employment agreement in which Siegel and Shuster acknowledged that Detective Comics was “the exclusive owners” of not only the other comic strips they had penned earlier for Nicholson (and continued to pen for Detective Comics) but Superman as well; that they would continue to supply the art work and storyline (or in the parlance of the trade, the “continuity”) for said comics at varying per page rates depending upon the comic in question (Superman being paid at the highest rate offered of $10 per page) for the next five years; that Detective Comics had the “right to reasonably supervise the editorial matter” of those existing comic strips; that Siegel and Shuster would not furnish “any art or copy ... containing the ... characters or continuity thereof or in any wise similar” to said comic strips to a third party; and Detective Comics would have the right of first refusal (to be exercised within a six week period after the comic’s submission) with respect to any future comic strip creations conceived by Siegel or Shuster: In the event you shall do or make any other art work or continuity suitable for use as comics or comic strips, you shall first give us the right to first refusal thereof by submitting said copy and continuity ideas to us. We shall have the right to exercise that option for six weeks after submission to us at a price no greater than offered to you by any other party. Not long thereafter, on November 30, 1938, Siegel pitched the idea to Detective Comics of serializing a comic concerning the exploits of Superman as a young man. Siegel called his character “Superboy.” As Siegel explained the synopsis for the new comic strip: Superboy ... would relate the adventures of Superman as a youth.... I’d like the strip to have a large number of pages, such as 13 so that I could develop it as well as Superman.... Tho the strip would feature super-strength, it would be very much different from the Superman strip inasmuch as Superboy would be a child and the type of adventures very much different. There’d be lots of humor, action, and the characters would be mainly children of about 12-years rather than adults. Also, inasmuch as this strip will probably be used as a newspaper feature, I should think that you would want to own all rights to it by having it first appear in your magazine. Detective Comics, by a letter dated December 2,1938, effectively declined to publish Siegel’s proposed Superboy comic. Siegel later re-pitched the idea in December, 1940, through the submission of a lengthy script containing the storyline and dialogue for the proposed comic strip’s first release or releases that fleshed out in greater detail the outlines of the Superboy story arch. Detective Comics again effectively declined to publish Superboy. Siegel entered the United States Army in July, 1943, to serve his country during World War II. In December, 1944, while Siegel was stationed abroad, Detective Comics published, without notice to Siegel and without his consent, an illustrated five-page comic strip entitled “Superboy” appearing as one among many other comics strips in the body of volume 101 of its magazine More Fun Comics. The illustrations for the first Superboy comic strip were done by Shuster at the direction of Detective Comics. When Detective Comics published volume 101 to More Fun Comics it also secured a copyright in all the contents of the same under Copyright Registration No. B653651. Thereafter Detective Comics continued to publish (and Shuster for a period of time continued to illustrate) “Superboy” comic strips, first in its serialized magazine More Fun Comics, then in Adventure Comics, and eventually as a stand-alone feature in the self-titled comic book Superboy. Detective Comics’ publication of Super-boy increased an already growing rift between the parties predicated largely upon Siegel and Shuster’s conclusion that Detective Comics had not paid them their fair share of profits generated from the exploitation of their Superman creation, as well as the profits generated from characters like Superboy, which had his roots in the original Superman character. As a result, in 1947, Siegel and Shuster brought an action against Detective Comics’ successor, National Periodical Publications, Inc., in New York Supreme Court, Westchester County, seeking to annul and rescind their previous agreements with Detective Comics as void for lack of mutuality and consideration. As part of the suit Siegel argued that Detective Comics had no right to publish his “Superboy” creation. Towards that end, the third cause of action in the New York state court complaint asserted that the release of the Su-perboy comic strip in More Fun Comics, no. 101, “was based entirely upon the synopsis submitted” by Siegel to Detective Comics, “and contained in detail the same characters, incidents and plot” in the synopsis. (Defs’ App. of Docs, in Supp. Mot. Recons., Ex. 7 at ¶ 30). The complaint further alleged that Detective Comics’ publication of Superboy was done “without the consent of’ and without payment to Siegel. (Defs’ App. of Docs, in Supp. Mot. Recons., Ex. 7 ¶¶ 31, 33). These points were important as the third cause of action averred that Siegel’s Superboy submissions belonged to him alone in light of Detective Comics’ failure to exercise its right of first refusal under the parties’ September, 1938, contract. (Defs’ App. of Docs, in Supp. Mot. Recons., Ex. 7 ¶¶ 28-29). Essentially, the third cause of action pled that Detective Comics had stolen Sie-gel’s Superboy idea. (Defs’ App. of Docs, in Supp. Mot. Recons., Ex. 7 ¶ 31 (averring that Detective Comics’ publication of Su-perboy “use[d] and was based upon the conception and idea as submitted in writing and detail by the plaintiff, SIEGEL”)). In the alternative, the fourth cause of action in the complaint alleged that the “plot, conception and incidents” contained in Detective Comics’ Superboy publication “were based upon and copied from the plot, conception and incidents” of Siegel and Shuster’s Superman character, and that such misassociation between Siegel’s Superman creation and Detective Comics’ Superboy was exacerbated by Detective Comics affixing, without Siegel’s consent, his name as the author to each of the Superboy releases. (Defs’ App. of Docs, in Supp. Mot. Recons., Ex. 7 ¶¶ 36, 37). In so publishing Superboy, it was alleged Detective Comics had “deceived the public” into believing that Siegel “was the author of the continuity dialogue and action of each of the individual releases” when in fact he “was not the author.” (Defs’ App. of Docs, in Supp. Mot. Recons., Ex. 7 ¶ 36). Labeling such publication as “wrongful,” the fourth cause of action alleged that such unauthorized misassociation between the two was “injurious” to Siegel’s reputation. (Defs’ App. of Docs, in Supp. Mot. Recons., Ex. 7 ¶ 38). The complaint sought an accounting of the profits generated from Superboy’s publication and that further publication of Superboy be enjoined. (Defs’ App. of Docs, in Supp. Mot. Recons., Ex. 7 at page 29-30). After a trial, official referee J. Addison Young, in an opinion dated November 21, 1947, concluded that the March 1, 1938, assignment of the rights to Superman to Detective Comics was valid and supported by consideration, and that, therefore, Detective Comics was the exclusive owner of “all” the rights to Superman. (Defs’ App. of Docs, in Supp. Mot. Recons., Ex. 8 at 371). With respect to Superboy, the referee found that it was solely Siegel’s creation; that Superboy was a work distinct from Superman (thus falling within the right of first refusal provision contained in the parties’ September 22, 1938, agreement); and that, on account of Detective Comics’ failure to exercise its option to publish Superboy when first presented with the idea, the rights to Superboy belonged to Siegel. As explained by the referee: It is quite clear to me, however, that in publishing Superboy the Detective Comics, Inc. acted illegally. I cannot accept defendants view that Superboy was in reality Superman. I think Superboy was a separate and distinct entity. In having published Superboy without right, plaintiffs are entitled to an injunction preventing such publication and under the circumstances I believe the defendants should account as to the income received from such publication and that plaintiffs should be given an opportunity to prove any damages they have sustained on account thereof. (Decl. Marc Toberoff, Ex. N at 323-24). Shortly thereafter, on April 12, 1948, the referee signed a thirty-six page findings of fact and conclusions of law expanding upon the statements contained in the opinion he had tendered earlier. The factual findings pertinent to Superboy were as follows: 156. On or about November 30, 1938, the plaintiff SIEGEL, in writing and by mail, submitted to DETECTIVE COMICS, INC. for its consideration and acceptance or rejection, for publication, under the terms of the contract dated September 12, 1938, ... a synopsis or summary of the idea and conception and plan of a new comic strip to be known as SUPERBOY[, which would narrate the adventures of SUPERMAN as a youth]. 157. On December 2, 1938, DETECTIVE COMICS, INC. deferred consideration of a SUPERBOY comic strip until some future time. 158. DETECTIVE COMICS, INC. did not within six weeks indicate its election to publish the said new comic strip SU-PERBOY. 159. DETECTIVE COMICS, INC. on or about December 2, 1938, by its letter in writing to the plaintiff SIEGEL did elect not to publish the said comic strip SUPERBOY under the terms of the contract dated September 22, 1938,.... 160. During the month of December, 1940, the plaintiff SIEGEL submitted to DETECTIVE COMICS, INC. for its further consideration a complete script or scenario, containing the continuity, plan and dialogue for the first “release” or “releases” of the proposed new comic strip SUPERBOY, and that the said synopsis contained within itself the entire plan for the future publication of the said comic strip SUPERBOY and the conception of the character SUPER-BOY, all set forth with detail and particularity. 162. DETECTIVE COMICS, INC. did not within six weeks after the submission of the said script or scenario indicate its election to publish the said comic strip SUPERBOY. 163. Thereafter and during December of 1944 DETECTIVE COMICS, INC. did publish a certain comic strip release entitled SUPERBOY in a magazine entitled “More Fun Comics.” 164. The said comic strip release entitled SUPERBOY embodied and was based upon the idea, plan and conception contained in the plaintiffs, SIEGEL’s letter to DETECTIVE COMICS, INC. dated November 30,1938.... 165. The said release of the said comic strip SUPERBOY published in December of 1944 embodied and was based upon the idea, conception and plan contained in the script or scenario submitted by the plaintiff SIEGEL to DETECTIVE COMICS, INC. in December of 1940.... 166. Said first thirteen pages of SUPERMAN material [in Action Comics no. 1] did not contain the plan, scheme, idea or conception of the comic strip SUPERBOY as it was later submitted by the plaintiff SIEGEL to DETECTIVE COMICS, INC. [in the 1938 pitch or the later 1940 script], 167. Said first thirteen pages of SUPERMAN material [in Action Comics no. 1] did not contain the plan, scheme, idea or conception of the comic strip SUPERBOY as published by DETECTIVE COMICS, INC .... from December, 1944, until the date of the trial herein. 168. The said publication was without the permission of the plaintiff SIEGEL. 171. All of the comic strip material published under the title SUPERBOY was based upon the idea, plan, conception and direction outlined in the [1938 pitch]. 172. All of the comic strip material published under the title SUPERBOY was based upon the idea, plan, conception and direction contained in the scenario or script ... submitted by the plaintiff SIEGEL to DETECTIVE COMICS, INC. [in 1940]. 173. The publication of all comic strip material entitled SUPERBOY was at all times without the permission of the plaintiff SIEGEL. 174. Plaintiff SIEGEL has received no payment on account of the publication of any of the material entitled SUPER-BOY. 175. All publications of SUPERBOY by DETECTIVE COMICS, INC. from April, 1945 until ... the date of the trial herein, contained affixed thereto the name of the plaintiffs SIEGEL and SHUSTER. 176. The use of the name of the plaintiff SIEGEL ... was without the consent of the plaintiff SIEGEL. 179. Defendant INDEPENDENT NEWS CO., INC. knowing of the rights of the plaintiff SIEGEL, under the [September 22, 1938, contracts], sold and distributed to newsdealers for resale to the public throughout the United States, magazines containing the material entitled SUPERBOY as hereinafter described and set forth. 180. All the art work for the SUPER-BOY releases was prepared by plaintiff SHUSTER under the direction of DETECTIVE COMICS, INC. 181. Plaintiff SHUSTER was paid in full by DETECTIVE COMICS, INC. or defendant NATIONAL COMICS PUBLICATIONS, INC. for all the art work furnished by him in connection with said SUPERBOY comic strip releases. 182. At the time that publication of the SUPERBOY comic strip was commenced, plaintiff SIEGEL was unavailable to furnish any of the continuity therefor being absent in military service. 183. Upon the return of plaintiff SIE-GEL to civilian status in January, 1946, DETECTIVE COMICS, INC. entered into negotiations with him regarding SUPERBOY, proposing certain payments to him and affording him the opportunity of supplying the continuity for SUPERBOY releases. 184. No agreement was reached between Detective COMICS, INC. and plaintiff SIEGEL as a result of the aforesaid negotiations; however, defendant NATIONAL COMICS PUBLICATIONS, INC. has offered to pay plaintiff SIEGEL for SUPERBOY releases heretofore published, the same rate as he was paid for SUPERMAN magazine releases for which he did not furnish the continuity, i.e., at the rate of $200 per release of standard length of thirteen pages. (Decl. Marc Toberoff, Ex. 0 at 355-58). In conjunction therewith, the referee also made the following conclusions of law: “Plaintiff Siegel is the originator and the sole owner of the comic strip feature SU-PERBOY, and ... that the defendants ... are perpetually enjoined and restrained from creating, publishing, selling or distributing any comic strip material of the nature now and heretofore sold under the title SUPERBOY.... Plaintiff Siegel, as the originator and owner of the comic strip feature SUPERBOY has the sole and exclusive right to create, sell and distribute comic strip material under the title SU-PERBOY.” (Id. at 365-66). Thereafter both sides filed an appeal from the referee’s findings of fact and conclusions of law. (Decl. Marc Toberoff, Ex. Q at 379). While the matter was still on appeal, the parties reached a settlement on May 19, 1948, and signed a stipulation which called for the payment of over $94,000 to Siegel and Shuster. In addition, the stipulation provided that the referee’s findings were to be vacated in all respects; reiterated the referee’s earlier determination that Detective Comics owned the rights to Superman; and contained the following proviso concerning the ownership rights to Superboy: “Defendant NATIONAL COMICS PUBLICATION, INC. is the sole and exclusive owner of and has the sole and exclusive right to the use of the title SU-PERBOY and to create, publish, sell and distribute and to cause to be created, published, sold and distributed cartoon or other comic strip material containing the character SUPERBOY....” (Decl. Marc Toberoff, Ex. P at 374). Two days later, on May 21, 1948, the referee entered a final consent judgment that, among other things, vacated the referee’s findings of fact and conclusions of law entered on April 12,1948, and expressly acknowledged that Detective Comics is the “sole and exclusive owner of and has the sole and exclusive right to the use of the title SUPERBOY.” (Decl. Marc To-beroff, Ex. Q at 379, 382). The expiration of the initial copyright term for Superman in the mid-1960s led to another round of litigation between the parties. In 1969 Siegel and Shuster filed suit in federal district court in New York seeking a declaration that they, and not Detective Comics’ successor, National Periodical Publications, Inc., were the owners of the copyright renewal rights to Superman. See Siegel v. National Periodical Publications, Inc., 364 F.Supp. 1032 (S.D.N.Y.1973), aff'd by, 508 F.2d 909 (2nd Cir.1974). In the process of analyzing their claim, both the federal district court and later the Second Circuit made mention of both the referee’s April, 1948, vacated findings as well as the parties’ May, 1948, final consent judgment. See 364 F.Supp. at 1035, 508 F.2d at 912-13. The courts, however, diverged as to which of the various court documents coming out of the Westchester action should have binding effect. The district court found both the referee’s vacated findings as well as the final consent judgment to be binding upon it, see 364 F.Supp. at 1035 (“we note that the findings of the State Supreme Court in the Westchester action are binding upon us here. The terms of the stipulation of settlement in that action, and the consent judgment are also binding”), whereas the Second Circuit only made mention of the binding effect that the final consent judgment had on the case. See 508 F.2d at 913 (“There is no doubt that the [May 21, 1948,] judgment of the state court is binding in this subsequent federal action”). Both courts, however, concluded, in conformity with Supreme Court precedent at the time, see Fred Fisher Music Co. v. M. Witmark & Sons, 318 U.S. 643, 656-59, 63 S.Ct. 773, 87 L.Ed. 1055 (1943) (holding that renewal rights were assignable by an author during the initial copyright term, before the renewal right vested), that, in transferring “all their rights” to Superman to Detective Comics pursuant to the final consent judgment, Siegel and Shuster had assigned not only Superman’s initial copyright term but the renewal term as well, even though those renewal rights had yet to vest when the consent judgment was entered. See 364 F.Supp. at 1037-38, 508 F.2d at 913-14. Thus ended the tale of the battle over the ownership to the copyrights to Superman and, by extension, Superboy. Or at least that was what everyone believed at the conclusion of the Second Circuit litigation. With the passage of the Copyright Act of 1976 (the “1976 Act”), Congress changed the legal landscape concerning author’s transfers of their copyrights in their creations. The 1976 Act expanded the duration of the renewal period for existing works already in their renewal term at the time of the Act for an additional nineteen years, see 17 U.S.C. § 304(b), and, more importantly for this case, gave authors the ability to terminate any prior grants of the rights to their creations that were executed before January 1, 1978, irrespective of the terms contained in such assignments, e.g., that all the rights (the initial and renewal) belonged exclusively to the publisher. Specifically, section 304(c) to the Act provides that, “[i]n the case of any copyright subsisting in either its first or renewal term on January 1, 1978, other than a copyright in a work made for hire, the exclusive or nonexclusive grant of a transfer or license of the renewal copyright or any right under it, executed before January 1, 1978, ... is subject to termination .... notwithstanding any agreement to the contrary....” It is this right to termination that Joanne Siegel, Jerome Siegel’s widow, and Laura Siegel Larson, his daughter, now seek to employ in this case. In November, 2002, they served a notice of termination to defendants directed solely at works featuring Superboy, claiming to undo as of November 17, 2004, any grant provided by Jerome Siegel to defendants’ predecessors in interest contained in the May 19, 1948, stipulation. The present suit by Joanne Siegel and Laura Siegel Larson seeks a declaration from this Court that the Su-perboy termination notice is valid and that they have recaptured all of the copyright to Superboy since the effective date of the termination. This question — the validity of the termination notice — was addressed in a March 24, 2006, Order, by the Honorable Ronald S.W. Lew of this Court, which held: (1) The referee’s findings from the 1948 West-chester action were binding, notwithstanding their vacatur; (2) the referee’s findings conclusively determined certain unique and exclusive copyright issues, namely, that Siegel’s Superboy submissions were later “published” (as that term is used in copyright law) in Detective Comics’ Afore Fun Comics # 101, and that the Superboy submissions were neither a “work for hire,” a “derivative work” of Superman, or a “joint work” between Siegel and Shuster; and (3) the termination notice was otherwise valid pursuant to the terms of the 1976 Act and the regulations promulgated thereunder. The end result of the March 24, 2006, Order was that Joanne Siegel and Laura Siegel Larson had recaptured the copyright to Superboy, leaving for trial whether defendants (notably, by producing and broadcasting the successful WB television series Smallville) had infringed Su-perboy’s copyright since the effective termination date and the scope of accounting for the profits defendants had reaped in exploiting the copyright subsequent to the termination date. Thereafter, defendants’ request to certify the Order for an interlocutory appeal was denied. On October 30, 2006, the matter was reassigned to the present judicial officer, and defendants promptly sought reconsideration of the March 24, 2006, Order, and the decision to deny certifying the matter for an interlocutory appeal. For the reasons set forth below, the Court GRANTS defendants’ motion for reconsideration of the March 24, 2006, Order. The legal questions at stake in the present motion are two-fold: (1) Whether the referee’s vacated findings from the Westchester action have any binding effect in this case as a matter of judicial or collateral estoppel; and, (2) If they do have a preclusive effect, whether those findings foreclose further consideration of or otherwise impact, certain questions at issue in this case that are unique to copyright law. More to the point, the issue focuses on whether the referee’s findings preclude further litigation on whether, as a matter of copyright law, (a) Siegel’s submissions outlining the idea (and indeed the storyline and dialogue) for Superboy were later “published” in volume 101 of More Fun Comics; (b) the submissions were done under the auspices of a “work for hire”; (c) the submissions are nothing more than a derivative work based upon Superman .with no original copyrightable elements contained therein; and (d) Siegel is the sole author of the work or whether the work is a “joint work” containing Siegel’s storyline and Shuster’s illustrations. Ultimately, the Court concludes that, in conformity with the March 24, 2006, Order, the referee’s findings must be given pre-clusive effect, but as a matter of collateral estoppel rather than judicial estoppel; however, contrary to the March 24, 2006, Order, those findings are not necessarily determinative of all the issues specified above, but require independent application of the governing body of copyright law to those findings to render a decision about the same. I. ARE THE REFEREE’S VACATED FINDINGS BINDING AS A MATTER OF JUDICIAL ESTOPPEL? In the process of passing on the plaintiffs’ motion for partial summary judgment, the Court’s March 24, 2006, Order held that the referee’s vacated findings should be given preclusive effect on account of defendants’ predecessors taking an inconsistent position as to those findings’ binding nature during the 1970s Superman litigation in the Second Circuit: Defendants’ current argument that Judge Young’s findings are not binding contradicts the position taken by their predecessors in interest in the 1973 litigation and the 1974 Second Circuit appeal regarding Superman. In applying the doctrine of res judicata in favor of defendants, Judge Lasker precluded, and the Second Circuit affirmed, plaintiffs from litigating the issue of ownership of the renewal period of the Superman copyrights. Having relied on Judge Young’s findings for previous favorable determinations regarding Superman, defendants now take the inconsistent position that this Court is not bound by the state court findings, as they relate to Super-boy. Defendants attempt to raise genuine issues of material fact, where the facts were clearly determined by Judge Young after the opportunity to take evidence and hear testimony on that evidence from the parties directly involved in creating this relationship. Contrary to defendants’ assertions now, both the Southern District of New York and the Second Circuit looked directly to, even citing to, Judge Young’s findings of fact. This Court holds that it is consistent to continue this position and will look to Judge Young’s findings as binding where relevant. (Decl. Marc Toberoff, Ex. A at 9-10). Although not explicitly using the term, the Court’s March 24, 2006, Order clearly invoked the doctrine of judicial estoppel. The Order specifically pointed to the fact that defendants’ predecessor had sought to utilize the preclusive effect of the referee’s vacated findings in connection with the 1970s Superman litigation and noted that such a position is fundamentally inconsistent with their present position that those same findings have no preclusive effect with respect to Superboy. Such a concern — preventing parties from seeking to take inconsistent legal positions in subsequent proceedings from those taken in earlier ones — is the hallmark feature of judicial estoppel. See New Hampshire v. Maine, 532 U.S. 742, 749-750, 121 S.Ct. 1808, 149 L.Ed.2d 968 (2001); Rissetto v. Plumbers & Steamfitters Local 343, 94 F.3d 597, 600 (9th Cir.1996). As one respected treatise noted, “Judicial estoppel is an equitable concept intended to prevent the perversion of the judicial process. It is to be applied where intentional self-contradiction is being used as a means of obtaining unfair advantage.” 18 James Wm. Moore, Moore’s Federal Practice § 134.30 at 134-63 to 134-64 (3rd ed.2006) (internal quotation marks and citations omitted). That the doctrine is equitable in nature does not mean its application is unlimited. The Supreme Court has set out three questions to guide a court’s decision whether to apply the doctrine in a given case: (1) Is the party’s later position clearly inconsistent with its earlier position?; (2) Did the party succeed in persuading a court to accept its earlier position?; and (3) Would the party derive an unfair advantage or impose an unfair detriment on the opposing party were the court to allow it to pursue its now inconsistent position? New Hampshire, 532 U.S. at 750-51, 121 S.Ct. 1808. Applying this test here, the Court readily finds that defendants’ present position is clearly inconsistent with the one taken in the 1970s Superman litigation. Defendants unquestionably sought to have the federal courts in that litigation bar Siegel and Shuster’s claim to the renewal rights to the Superman copyright by reference, in part, to the referee’s vacated findings. Now they argue that those very findings have no preclusive effect. The first factor, therefore, weighs in favor of application of judicial estoppel. The second factor, whether defendants succeeded in having those courts accept their position, is more problematic. Although at least one of those courts did conclude that the referee’s vacated findings were binding, see 364 F.Supp. at 1035; the difficulty lies in the fact that this particular legal point was not material to the outcome in the case. Given that the referee’s vacated findings and the parties’ final consent judgment were consistent with one another as to the ownership of Superman, the federal courts during the 1970s Superman litigation were not called upon to take a position, one way or the other, over the legally binding nature of the referee’s vacated findings separate and apart from the parties’ final consent judgment. Both the findings and the consent judgment supported those courts’ decisions that defendants were the owners of the renewal term to the Superman copyright. Here, in contrast, the separate legally binding nature of the referee’s vacated findings is very much in dispute because those findings are in direct conflict with the parties’ final consent judgment over the ownership rights to Superboy. In light of the fact that the federal courts in the earlier Superman litigation did not have to accept (and one in fact did not accept) defendants’ earlier inconsistent position in order to rule in defendants’ favor in the manner in which they did, it is hard to fathom how allowing defendants to now take a contrary position in this litigation somehow operates to create the perception that either of the courts deciding the 1970s Superman litigation, or this Court for that matter, have been misled through defendants inconsistent positions. See New Hampshire, 532 U.S. at 750,121 S.Ct. 1808 (noting that result sought to be avoided by second factor is the creation of “the perception that either the first or the second court was misled”). As one court explained: [J]udicial estoppel is an “extraordinary remed[y] to be invoked when a party’s inconsistent behavior will otherwise result in a miscarriage of justice.” It is not meant to be a technical defense for litigants seeking to derail potentially meritorious claims, especially when the alleged inconsistency is insignificant at best and there is no evidence of intent to manipulate or mislead the courts. Judicial estoppel is not a sword to be wielded by adversaries unless such tactics are necessary to “secure substantial equity.” Ryan Operations G.P. v. Santiam-Midwest Lumber Co., 81 F.3d 355, 365 (3rd Cir.1996). The third factor weighs against application of judicial estoppel for much the same reason. No miscarriage of justice or substantial inequity would take place from allowing defendants to now take a position inconsistent with that taken during the 1970s Superman litigation precisely because the prior contrary position was itself immaterial to the outcome in those prior proceedings. See New Hampshire, 532 U.S. at 750-51, 121 S.Ct. 1808 (“Absent success in a prior proceeding, a party’s later inconsistent position introduces no ‘risk of inconsistent court determinations’ and thus poses little threat to judicial integrity”). No matter how the federal courts in the Superman litigation parsed the matter, be it pursuant to the referee’s vacated findings, the parties’ final consent judgment, or both, the conclusion reached would be the same: Defendants were the owners to the renewal term to the Superman copyright. It is not inequitable to allow defendants to now take a position inconsistent with one taken in a prior litigation if the conclusion reached in that prior litigation would have been the same regardless of the defendants’ advocated position. Judicial estoppel is guided by pragmatic considerations geared towards “the facts of the particular dispute in mind”; it is not meant as “a set of hard and fast rules that might be circumvented by a clever litigant, on the one hand, or serve as a trap for an unwary litigant, on the other.” 18 James Wm. Moore, Moore’s Federal Practice § 134.31 at 134-72 (3rd ed.2006). Just because defendants took an inconsistent position in the past on a point that was not material to the outcome of that litigation does not mean they are bound to that position forevermore. Accordingly, the Court finds the March 24, 2006, Order’s reliance on the doctrine of judicial estoppel is misplaced. II. ARE THE REFEREE’S VACATED FINDINGS BINDING AS A MATTER OF COLLATERAL ESTOP-PEL? This leaves whether the referee’s vacated findings are binding through operation of collateral estoppel. Federal courts must give a state court judgment the same preclusive effect as would be given to that judgment “under the law of the State in which the judgment was rendered.” Migra v. Warren City Sch. Dist. Bd. of Ed., 465 U.S. 75, 81, 104 S.Ct. 892, 79 L.Ed.2d 56 (1984); see also Marrese v. American Academy of Orthopaedic Surgeons, 470 U.S. 373, 380, 105 S.Ct. 1327, 84 L.Ed.2d 274 (1985) (“a federal court should determine the preclusive effect of a [earlier] state court judgment [through reference] to the law of the State in which judgment was rendered”); Pension Trust Fund v. Triple A Mach. Shop, 942 F.2d 1457, 1460 (9th Cir.1991) (examining California law for purposes of determining res judicata effect of an earlier California state court judgment). Thus, in determining the preclusive effect of the vacated findings from the 1948 Westches-ter action, the Court must look to.New York law. Under New York law, collateral es-toppel applies when (1) the identical issue was raised in a previous proceeding; (2) the issue was actually litigated and decided in the previous proceeding; (3) the party had a full and fair opportunity to litigate the issue; and (4) the resolution of the issue was necessary to support a valid and final judgment on the merits. See Mercantile & General Reinsurance Co. v. Colonial Assurance Co., 147 Misc.2d 804, 805-806, 556 N.Y.S.2d 183 (N.Y.Sup.Ct.1989) (“Collateral estoppel ... requires that there have been a final, binding determination in a prior action in which there was a full and fair opportunity to litigate the issue involved”); see also Marvel, 310 F.3d at 288-89 (setting forth the above elements for collateral estoppel under New York law). The result achieved through invocation of collateral estoppel is to prevent parties or their privies, such as defendants in this case, from re-litigating in a subsequent action an issue of fact or law that was fully and fairly litigated in a prior proceeding. Defendants position on this point is fairiy straightforward: The referee’s findings were vacated by the parties’ May, 19, 1948, stipulation and the subsequent entry of the final consent judgment; with this vacatur, so too lapsed the binding effect of the referee’s findings because no final judgment was left in place to enforce. Defendants correctly note that, under New York law, a judgment that has been vacated loses its preclusive effect. See Ruben v. American and Foreign Ins. Co., 185 A.D.2d 63, 592 N.Y.S.2d 167, 169 (N.Y.App.Div.1992) (“Because the judgment was vacated, the jury verdict lacks finality and cannot be given collateral es-toppel effect”); Church v. New York State Thruway Authority, 16 A.D.3d 808, 791 N.Y.S.2d 676, 679 (N.Y.App.Div.2005) (“when the judgment is subsequently vacated, collateral estoppel is inapplicable”); see also Universal City Studios, Inc. v. Nintendo Co., 578 F.Supp. 911, 919 (S.D.N.Y.1983) (“A judgment that has been vacated, reversed, or set aside on appeal is thereby deprived of all conclusive effect, both as res judicata and as collateral es-toppel”). That said, courts outside of New York have recognized an exception to this rule and have given preclusive effect to vacated judgments if those judgments were the product of a trial and there is a significant lapse of time between the proceedings. See Aetna Casualty & Surety Co. v. Jeppesen & Co., 440 F.Supp. 394, 405 (D.Nev. 1977); Angstrohm Precision, Inc. v. Vi- shay Intertechnology, Inc., 567 F.Supp. 537, 541 (E.D.N.Y.1982) (construing Virginia law); see also Ringsby Truck Lines v. Western Conference of Teamsters, 686 F.2d 720, 722 (9th Cir.1982) (noting that the answer to whether to give preclusive effect to a trial court’s judgment after the parties settle the case while the matter is on appeal “may be different in different cases as equities and hardships vary the balance between the competing values of right to relitigate and finality of judgment” citing Restatement (Second) of Judgments § 28 (1982)). There appears to be no authority conclusively determining whether such an exception exists under New York law. In one New York state case, Mercantile & General Reinsurance Co. v. Colonial Assurance Co., 147 Misc.2d 804, 556 N.Y.S.2d 183 (N.Y.Sup.Ct.1989), the court did, however, make mention of the possibility of giving such preclusive effect to vacated judgments in circumstances not all that different from those in this case. Then Justice (now federal district court judge) Harold Baer, Jr., issued a comprehensive ruling examining the very question now in dispute in this case. In Mercantile, a reinsurer sought a declaratory judgment that it was not bound to provide reinsurance with respect to certain insurance policies. Id. at 805, 556 N.Y.S.2d 183. The reinsurer’s obligations had been previously litigated in a prior New York state court action involving the same insurance and reinsurance contracts, which resulted in the grant of partial summary judgment against it. Id. While the matter was on appeal the parties settled. Id. As an element of the settlement, the trial court issued an order vacating the judgment and sealing the record. Id. The question before Justice Baer was whether the vacated judgment from the prior action collaterally estopped the rein-surer from seeking to relitigate those issues in the case before him. He began his analysis by noting the general rule that “a judgment that has been vacated will not provide a basis for collateral estoppel.” Id. at 806, 556 N.Y.S.2d 183. The court then noted that some courts outside of New York, while recognizing this general rule, had recognized that it may not “apply when the vacatur has occurred after ‘the expenditure of the court’s resources in a jury trial.’ ” Id. at 807, 556 N.Y.S.2d 183. Although the expenditure of such judicial resources had not occurred in the case before him, Justice Baer nonetheless chose to address the question, explaining that it appeared to be one of “first impression” under New York law. Id. In examining this question Justice Baer recognized that competing considerations affected the analysis. On the one hand, weighing in favor of continuing to afford preclusive effect to the vacated judgment, was the public’s interest in the conservation of judicial resources. The more “resources of a hard-pressed judicial system [are] expended in resolving a matter,” the more significant this factor becomes in preserving the results generated by that system. Id. at 808, 556 N.Y.S.2d 183. On the other hand, weighing against giving preclusive effect to a vacated judgment, is not only the private interest expressed by the parties themselves not to be bound by that judgment, but the court’s similar conclusion in the prior action as well. As Justice Baer observed, “[h]ad the judge wished to allow preclusion, he could have dismissed [the case] rather than vacating the findings as well].” Id. at 808, 556 N.Y.S.2d 183. Additionally, there is the public interest in facilitating settlement by the parties, an interest which would be undermined if the effects of such settlement (notably, the agreement to vacate earlier court orders) was negated. Id. at 809, 556 N.Y.S.2d 183 (“There M & G gave up its appeal on the basis of the settlement. It did so in reasonable reliance on the basic principle that a vacated judgment is of no effect”). The negative result of undermining the ability of parties to effectively settle their disputes would also spill over into parties litigating every possible issue in any “case in which there was any chance of a later suit.” Every move possible and every counter-move imaginable would become imperative. Every appealable ruling would have to be appealed. The system — and therefore the public interest — would suffer from this increase in the volume and ferocity of litigation. Id. at 809, 556 N.Y.S.2d 183. In the end, Justice Baer returned to where he began his analysis, finding that none of the “exceptional circumstances” that may weigh in favor of giving preclu-sive effect to a vacated judgment existed in the case before him. The expenditure of judicial resources in the prior action was limited, as the prior judgment was entered as a result of a partial summary judgment motion, not a trial. Id. at 809-810, 556 N.Y.S.2d 183. Moreover, given the relatively short gap in time between the two proceedings, critical evidence (be it testimonial or documentary) still remained available. Id. For these reasons Justice Baer left it for another occasion whether to “carve out an exception to the rule that the vacatur of a judgment is not a meaningless act for the purposes of issue preclusion.” Id. at 809, 556 N.Y.S.2d 183. Despite defendants’ protestations to the contrary, Justice Baer did not find that under no set of circumstances could the general rule against affording preclusive effect to vacated judgments give way. Justice Baer expressly left open the possibility that an exception may exist where certain circumstances were present. Id. at 810, 556 N.Y.S.2d 183. The Mercantile court’s decision not to categorically foreclose application of collateral estoppel to vacated judgments is consistent with the recognition in New York law that application of collateral estoppel is not a rigid and inflexible concept, but one which produces varied results in different cases based on how particular circumstances in those cases tilt the equities and/or hardships. See Juan C. v. Cortines, 89 N.Y.2d 659, 667, 657 N.Y.S.2d 581, 679 N.E.2d 1061 (1997) (describing collateral estoppel as a “equitable doctrine” that is “grounded on concepts of fairness and should not be rigidly or mechanically applied”). Such recognition is reflected by a long line of New York cases citing approvingly to section 28 of the Restatement (Second) of Judgments which allows courts to avoid applying the collateral estoppel doctrine when it would otherwise be warranted if special circumstances exist. This is the very section that the Ninth Circuit in Ringsby described as epitomizing the principal under collateral estoppel that the “answer may be different in different cases as equities and hardships vary the balance between the competing values of right to relitigate and finality of judgment.” 686 F.2d at 722. Thus, after Mercantile, there remains the possibility that a vacated judgment could be afforded preclusive effect if exceptional circumstances are present to warrant it. See Mercantile, 147 Misc.2d at 810, 556 N.Y.S.2d 183 (observing that whether such an exception should apply in a future case “may well require consideration of factors that the parties have not briefed or discussed and that might necessitate reflection not available to me as this trial approaches” (citing Ringsby)). The exceptional circumstances noted in Mercantile are present here. Mercantile approvingly noted the district court decisions in Aetna and Angstrohm as worthy exemplars of when application of such an exception is warranted. In both cases, a judgment was entered after a trial, the judgment was later vacated by the court after the parties reached a settlement, and, at least in Aetna, a significant period of time (more than eight years) then passed before a separate proceeding was instituted where the preclusive effect of the earlier vacated judgment became an issue. Here, the vacated referee’s findings were made following a trial that was conducted more than sixty years ago; all of the material witnesses to the transactions in question are now deceased; and some of the documents from that time are now lost. These facts fundamentally alter the balance of interests observed in Mercantile. Failure to give preclusive effect to the referee’s vacated findings here would seriously compromise the conservation and efficient use of judicial resources. The referee’s findings were tendered after that court’s expenditure of numerous resources in conducting a trial, listening to testimony, parsing over the record, and then rendering a judgment. All of those hard-pressed resources will simply be squandered were the Court not to afford those findings preclusive effect. This by itself, however, would probably not be enough to give preclusive effect to the referee’s findings. See Ruben, 592 N.Y.S.2d at 171 (refusing to afford collateral estoppel effect to a vacated judgment that had been tendered following a trial and a verdict returned by a jury). But there is more: Absent reliance on the referee’s vacated findings, the lengthy passage of time since the trial and decision would seriously threaten the reliability of any judgment handed down in the present case. To believe that the factual issues actually litigated before the referee in the 1947 West-chester action could be relitigated in the present proceeding without a significant degradation of the reliability of the conclusions reached in this proceeding would give this Court and the parties’ counsel too much credit. Here, all the Court has is some, but not all, the documents from the relevant period; additionally, there are no witnesses who could testify to give life and context to those documents still in existence. Some of the copyright questions under examination in this proceeding will require much more understanding than a partial paper trial could provide. Understanding the meaning of a document is oftentimes the product of much more than simply looking at its words; live witness testimony provides color, understanding, and context of the document’s existence and meaning. The only court with the opportunity to assess the credibility of such live testimony in connection with this legal dispute was presided over by the referee in the Westchester action. To refuse to afford the findings the referee made after consulting all the documents, and hearing all the live testimony on the topic would to be to deprive the record of the permutations, nuances, and subtleties those witnesses’ recollections placed on the meaning of those documents now brought before this Court to examine. If the eight-year gap in Aetna was sufficient to warrant a finding that exceptional circumstances existed to give preclusive effect to a vacated judgment due to the “dimmed” memories of those witnesses who could still be found and the loss of documents that occurred in the interim, 440 F.Supp. at 405, a sixty-year gap certainly suffices. All that defendants can point to in rebuttal is that the parties bargained for wiping the evidentiary slate clear, replacing it with their settlement agreement and the final consent judgment. Admittedly, this fact does weigh against giving preclu-sive effect to the referee’s findings, but the significance of the parties’ expectations is diminished by the particular concerns implicated in this case. To fail to give pre-clusive effect to the referee’s findings in a case with such a lengthy gap between proceedings may very well make it extremely difficult, if not impossible, to create any reliable findings in the present litigation over plaintiffs’ attempt to terminate the grants conferred to defendants shortly after those referee’s findings were made. See Aetna, 440 F.Supp. at 405. Focusing solely on the parties’ expressed intent as the lodestar for deciding whether collateral estoppel applies or not in this case would be to place the thumb too heavily on the side of the scale against preclusion without sufficiently taking account of the serious concerns that have arisen weighing in favor of preclusion due to the passage of time since the Westchester action took place. This leads to another significant issue: The scope of the parties’ private interest. Although it is undoubtedly true that the parties sought to avoid giving the referee’s vacated findings preclusive effect, it must be remembered the context in which that private interest was expressed. The parties’ sought to bar the further relitigation of claims relating to the scope of the grant itself to Superman’s and Superboy’s copyright (the ownership question); the stipulation and consent judgment served to end further debate on that point. See Siegel, 508 F.2d at 913 (noting that effect of parties’ stipulation and final consent judgment was to “finally determine[ ] that Detective ... owned all rights to Superman without limitation”). Neither side, however, had any inkling of the existence of the current copyright claim at issue in this case— namely, the 1976 Act’s creation of the right to terminate grants to copyrights. Reference to the private parties’ interest as a means to defeat giving preclusive effect to the referee’s vacated findings in this case, therefore, would be to stretch the parties’ intentions to cover the litigation of issues in a cause of action (the termination of ownership) they themselves had no idea would exist or that they even sought to safeguard against. Cf. Marvel, 310 F.3d at 288 (refusing to afford res judicata to parties’ earlier pre-1976 Act settlement agreement concerning nature of grant of copyright in subsequent suit seeking to litigate termination of that grant). Undoubtedly some of the factual questions considered in the present effort to terminate the grant of rights to the Super-boy copyright will touch upon the same facts as litigated in the state action over ownership to that same copyright. Nonetheless, the point remains that those issues are brought in the context of a legal right that was not conferred until decades later in the 1976 Act. Without giving preclusive effect to the referee’s vacated findings in this case, the right Congress sought to give to artists and their heirs would be seriously (if not, fatally) undermined simply through the passage of time, leaving in its wake nothing but a partial documentary record, uncolored or given context by live testimony, concerning factual questions critical in exercising that right to terminate prior grants. Again, there are no detailed findings contained in the parties’ stipulation or final consent judgment to which the Court could otherwise defer, leaving the evidentiary slate clean in this case save for the referee’s vacated findings. Indeed, the concern with the passage of time is invariably present with the exercise of the termination rights conferred by the 1976 Act; through passage of section 304 Congress effectively resurrected ownership to copyrights that had otherwise long ago been thought to belong to the publisher since the Supreme Court’s 1943 decision in Fred Fisher Music. Here, concerns with the effectiveness of the 1976 Act termination remedy are alleviated to some extent with the presence of the referee’s vacated findings. Those findings essentially encapsulate the perception and recollection of the key participants to many of the factual questions now at issue in this case. This point is important to keep in mind as it further diminishes the weight of the interest against giving preclusive effect to the referee’s findings. When the private interest of the parties from the Westchester action is compared to the substantial concerns weighing in favor of continuing to give preclusive effect to the referee’s vacated findings— preventing the loss of the considerable judicial resources expended in the West-chester action that will otherwise not be effectively replicated in the present proceeding with as much assurance as the prior proceeding due to the loss of critical witnesses and documents over the ensuing sixty year period — it is clear to this Court that exceptional circumstances exist to give continuing preclusive effect to the referee’s findings despite their later vaca-tur. III. INTERSECTION OF COLLATERAL ESTOPPEL DOCTRINE WITH CONCEPTS UNIQUE TO COPYRIGHT LAW Although the vacatur of the referee’s findings does not, ipso facto, defeat treating those findings as an estoppel, there remains a complicating wrinkle that affects the scope and contours of the estoppel effect of those findings — the longstanding Congressional grant of exclusive jurisdiction over copyright to the federal courts. See 28 U.S.C. § 1338(a) (“The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to ... copyrights.... Such jurisdiction shall be exclusive of the courts of the states in ... copyright cases”); see also 28 U.S.C. §§ 41(7), 371(5) (repealed). This legal reality is important to this case as a number of the issues that must be addressed in determining the validity of the Superboy termination notice are unique to federal copyright- — specifically, whether the copyrightable material, if any, contained in Siegel’s Superboy submissions was ever “published,” done as a “work for hire,” done as a “joint work” with Shuster, or as “derivative work” of Superman. To begin, there is little question that state law matters are inextricably intertwined with many of the issues that arise in copyright disputes, whether it be matters involving the interpretation of contracts or concerns with the legal effects flowing from the formation of various business associations. It is well-established in the case law that state courts can determine matters of state law, the subject of which is a copyright, and federal courts must afford preclusive effect to those findings, even if giving such preclusive effect impacts, in whole or in part, consideration of matters peculiar to copyright law. See Vanderveer v. Erie Malleable Iron Co., 288 F.2d 510, 513 (3rd Cir.1956) (“Although the bringing of actions arising under the patent laws is admittedly restricted to the federal courts, it has long been established that actions brought to enforce contracts of which a patent is the subject [may] ... be brought in the state courts. The Supreme Court has held that a state court is empowered to determine questions, as distinguished from eases, arising under the patent laws, ... and the court has given no indication that the conclusive effect between the parties of the determination of these questions is to be limited to the state courts”); T.B. Harms Co. v. Eliscu, 339 F.2d 823, 826 (2nd Cir.1964) (“copyright has not been thought to infuse with any national interest a dispute as to ownership ... turning on the facts or on ordinary principles of contract law”); Knickerbocker Toy Co. v. Faultless Starch Co., 59 C.C.P.A. 1300, 467 F.2d 501, 509 (1972) (“Although 28 U.S.C. § 1338(a) provides that the federal district courts’ original jurisdiction over copyright actions ‘shall be exclusive of the courts of the states,’ the state courts clearly may pass on the validity of a copyright ... in the course of deciding a case over which they do have jurisdiction”); Murphy v. Gallagher, 761 F.2d 878, 886 (2nd Cir.1985) (giving preclu-sive effect to state court resolution of the dissolution of a corporation even though such resolution conclusively determined later federal securities fraud claim); Jasper v. Bovina Music, Inc., 314 F.3d 42, 46 (2nd Cir.2002) (“if the case concerns a dispute as to ownership of a copyright, and the issue of ownership turns on the interpretation of a contract, the case presents only a state law issue”); see also Note, The Collateral Estoppel Effect of Prior State Court Findings in Cases Within Exclusive Federal Jurisdiction, 91 Harv. L.Rev. 1281, 1285 (1978) (noting that exclusiveness of federal jurisdiction does not upset “the interests of the state courts in the integrity of their findings on matters of state law within the normal sphere of their competence”). That said, a state court’s direct findings on matters peculiar to copyright law itself would not be entitled to preclu-sive effect, either because such findings are not necessary to the resolution of the case before it or, if necessary, then the state court’s finding exceeds its jurisdiction. See Note, 91 Harv. L.Rev. at 1287 (“[F]ederal courts should give preclusive effect to state determinations of state questions pleaded in the complaint, even if such issues arise in a subsequent action within exclusive federal jurisdiction. No preclusive effect, however, should be given to state court determinations of federal [questions] arising under laws whose enforcement is within the exclusive jurisdiction of the federal courts”). Nor should a state court’s findings on matters of state law be neatly and uncritically translated verbatim as a finding on a legal concept unique to copyright law simply because it used the same phrase as the concept in question. See Music Sales Corp. v. Morris, 73 F.Supp.2d 364, 377-78 (S.D.N.Y.