Opinion
18 Civ. 6025 (GBD) (GWG)
07-07-2021
ITOFFEE R. GAYLE, Plaintiff, v. ANGIE VILLAMARIN, Defendant.
REPORT & RECOMMENDATION
GABRIEL W. GORENSTEIN, United States Magistrate Judge:
Itoffee R. Gayle, a visual artist in New York City, brings this copyright and trademark infringement action against Angie Villamarin, another artist, claiming Villamarin sold hats containing a stylized phrase, “Art We All” in violation of the Copyright Act, 17 U.S.C. § 101 et seq. and New York common law. Villamarin now moves for summary judgment on both claims. For the reasons stated below, Villamarin's motion should be granted.
Motion for Summary Judgment, filed September 25, 2020 (Docket # 81) (“SJ Mot.”); Memorandum of Law in Support of Summary Judgment, filed September 25, 2020 (Docket # 82) (“Def. Mem.”); Defendant Local Rule 56.1 Statement, filed September 25, 2020 (Docket # 83); Declaration of Angie Villamarin in Support of Summary Judgment, filed September 25, 2020 (Docket # 84) (“Villamarin Decl.”); Declaration of Lance W. Shapiro in Support of Summary Judgment, filed September 25, 2020 (Docket # 85); Amended Notice of Motion for Summary Judgment, filed September 28, 2020 (Docket # 87); Memorandum of Law in Opposition to Summary Judgment, filed October 13, 2020 (Docket # 89) (“Pl. Opp.”); Plaintiff Counter Statement to Defendant Rule 56.1 Statement, filed October 13, 2020 (Docket # 90); Declaration of Itoffee R. Gayle in Opposition to Summary Judgment, filed October 13, 2020 (Docket # 91) (“Gayle Decl.”); Declaration of You Zhi Theodore Chua in Opposition to Summary Judgment, filed October 13, 2020 (Docket # 92) (“Chua Decl.”); Declaration of Maeve E. Wilson in Opposition to Summary Judgment, filed October 13, 2020 (Docket # 93); Reply Memorandum of Law in Support of Summary Judgment, filed October 23, 2020 (Docket # 96) (“Def. Reply Mem.”); Rule 56.1 Statement, filed October 23, 2020 (Docket # 97); Letter from You Zhi Theodore Chua, filed October 29, 2020 (Docket # 99) (“Copyright Letter”); Letter from Lance W. Shapiro, filed January 14, 2021 (Docket # 101) (“Shapiro Jan. 14 Let.”); Letter from Lance W. Shapiro, filed January 29, 2021 (Docket # 102); Letter from You Zhi Theodore Chua, filed February 1, 2021 (Docket # 103).
I. BACKGROUND
A. Facts
The following facts are presented in the light most favorable to Gayle as he is the nonmoving party on this motion for summary judgment.
1. The Parties
Gayle is a visual artist living and operating in New York City. Gayle Decl. ¶ 2. In 2012 Gayle developed “the mark ‘Art We All' as a play on the words, and the idea, that we are all one.” Id. ¶ 7. In creating this “mark, ” Gayle was inspired by graffiti artist, Jim Joe, whose “scrawled, child-like and gritty nature” inspires his own style. Id. ¶ 6. Gayle utilizes this mark in graffiti as well as in visual art. Id. ¶ 7.
Since 2012, Gayle's work has been present in New York City, “on social media, and through online profiles [he] . . . created to promote [his] work.” Gayle Decl. ¶ 9. Since 2012 Gayle has also been selling products featuring the “Art We All” mark including “hats, buttons, t-shirts, artworks, prints, stickers and stamps . . . through in-person sales, pop-up stores, trade shows and online.” Id. ¶ 12. In 2016, Gayle directed “nine pieces of artwork” to be submitted “to the United States Copyright Office [(“USCO”)] for registration, ” id. ¶ 14, each piece containing the words “Art We All” with variations as to color and, in some instances, with another word added to the phrase “Art We All, ” see Exh. B of Gayle Decl. (“Deposited Images”). Gayle obtained a copyright for these nine pieces under registration number VA 2-006958 (“‘958 copyright”). Gayle Decl. ¶ 15; see Exh. A of Copyright Letter (“‘958 Copyright Images”); Exh. 6 of Chua Decl. (“‘958 Certificate of Registration”). Only one of the nine images is relevant to Gayle's copyright claim as follows (Figure 1):
Image Omitted
Villamarin is “an artist, fashion designer, and small business owner” also based in New York City. Villamarin Decl. ¶ 2. Villamarin is the founder of the company GreedySouls, id., whose mission is to create products with positive slogans, see id. ¶¶ 3-4. Villamarin came up with the idea for an “ARTWEALL” mark while attending an art festival in Miami in late 2014. Id. ¶ 5. Villamarin was inspired by “the idea of sharing and promoting art of all and for all” and felt “the term ARTWEALL described [her] mission to share and spread opportunities of art for all young aspiring artists.” Id. ¶ 6. Villamarin designed her “ARTWEALL” mark in the summer of 2015 using font from the cover of a music album by popular artist Drake. Id. ¶ 7. She then had this design placed on hats, id. ¶ 8, and began selling and giving away the hats in the fall of 2015 to help promote her mission, id. ¶ 10. Villamarin alleges she had never heard or seen the phrase “Art We All” prior to her own creation. Id. ¶ 11. Villamarin's mark is shown here (Figure 2):
Image Omitted
2. The Alleged Infringing Conduct
Gayle alleges Villamarin's hats infringe on his ‘958 copyright and his common law trademark rights in his “Art We All” mark. See First Amended Complaint, filed August 25, 2020 (Docket # 76) ¶¶ 16-21 (“Am. Comp.”). After Gayle became aware of Villamarin, Gayle sent messages to Villamarin and her friends through social media “threatening action for [their] purported violations of his intellectual property rights.” Villamarin Decl. ¶ 16. Gayle “also posted pictures on his social media pages that he took from [Villamarin] and [her] friends. Due to these threats and” Gayle's use of her social media pictures, Villamarin “temporarily ceased selling hats bearing” the “ARTWEALL” mark. Id.
B. Procedural Posture
On July 2, 2018, Gayle filed the complaint (Docket # 2) (“Comp.”) in this action, originally proceeding pro se. The original complaint included claims under the Lanham Act for federal trademark infringement and unfair competition. See Comp. ¶ I.A. The parties proceeded with discovery, and Gayle obtained volunteer counsel, see Notice of Appearance, filed January 17, 2020 (Docket # 58); Notice of Appearance, filed January 17, 2020 (Docket # 59). On August 25, 2020, Gayle amended the complaint to state only causes of action for copyright infringement under “17 U.S.C. § 504, ”and trademark infringement under New York common law. See Am. Comp. In other words, the amended complaint no longer asserted any claims under the Lanham Act. Villamarin's answer included counterclaims. See Answer, filed September 8, 2020 (Docket # 77) Counterclaims ¶¶ 27-48 (“Answer”).
This provision relates only to damages and we thus interpret the suit as being brought under 17 U.S.C. § 501.
II. SUMMARY JUDGMENT STANDARD
Rule 56(a) of the Federal Rules of Civil Procedure provides that a court shall grant summary judgment when “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). A genuine issue of material fact exists “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In determining whether a genuine issue of material fact exists, “[t]he evidence of the non-movant is to be believed” and the court must draw “all justifiable inferences” in favor of the nonmoving party. Id. at 255 (citing Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59 (1970)); accord Morales v. Quintel Ent., Inc., 249 F.3d 115, 121 (2d Cir. 2001) (“[A]ll reasonable inferences must be drawn against the party whose motion is under consideration.”).
Once the moving party has shown that there is no genuine issue as to any material fact and that it is entitled to a judgment as a matter of law, “the nonmoving party must come forward with ‘specific facts showing that there is a genuine issue for trial, '” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (emphasis in original) (quoting Fed.R.Civ.P. 56(e)), and “may not rely on conclusory allegations or unsubstantiated speculation, ” Scotto v. Almenas, 143 F.3d 105, 114 (2d Cir. 1998) (citing cases). In other words, the nonmovant must offer “concrete evidence from which a reasonable juror could return a verdict in his favor.” Anderson, 477 U.S. at 256. Where “the nonmoving party bears the burden of proof at trial, summary judgment is warranted if the nonmovant fails to make a showing sufficient to establish the existence of an element essential to its case.” Nebraska v. Wyoming, 507 U.S. 584, 590 (1993) (punctuation omitted). Thus, “[a] defendant moving for summary judgment must prevail if the plaintiff fails to come forward with enough evidence to create a genuine factual issue to be tried with respect to an element essential to its case.” Allen v. Cuomo, 100 F.3d 253, 258 (2d Cir. 1996) (citing Anderson, 477 U.S. at 247-48).
III. DISCUSSION
Gayle alleges federal copyright infringement and common law trademark infringement under New York law. See Am. Comp. ¶¶ 16-21. Villamarin seeks summary judgment on both of Gayle's claims. See SJ Mot. We address each claim next.
A. Copyright Infringement
“In a copyright infringement case, the plaintiff must show: (i) ownership of a valid copyright; and (ii) unauthorized copying of the copyrighted work.” Jorgensen v. Epic/Sony Records, 351 F.3d 46, 51 (2d Cir. 2003) (citing Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) and Castle Rock Entm't, Inc. v. Carol Publ'g Group, Inc., 150 F.3d 132, 137 (2d Cir. 1998)). A “certification of registration . . . constitute[s] prima facie evidence of the validity of the copyright.” 17 U.S.C. § 410(c). However “the alleged infringer may rebut [this] presumption.” Scholz Design, Inc. v. Sard Custom Homes, LLC, 691 F.3d 182, 186 (2d Cir. 2012). “To demonstrate unauthorized copying, the plaintiff must first show that his work was actually copied; second, he must establish substantial similarity or that the copying amounts to an improper or unlawful appropriation . . . .” Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 131 (2d Cir. 2003) (punctuation omitted). While Gayle's ‘958 copyright includes nine images, see ‘958 Copyright Images, Gayle is alleging copyright infringement only for one of the images, which is reproduced in Section I.A.1 above. See Pl. Opp. at 10.
During the course of briefing on this motion, Gayle failed to submit a complete certified copy of the subject of the ‘958 copyright from the USCO and thus Villamarin questioned whether the depiction of the allegedly infringed work submitted by Gayle, see Deposited Images, was genuine. See Def. Mem. at 10-14; Def. Reply Mem. at 2-3. After the completion of briefing, Gayle filed a certified copy of the image at issue (among other images), see Copyright Letter, and Villamarin no longer contests its genuineness, see Shapiro Jan. 14 Let.
1. Validity of the Copyright
As Gayle has submitted a certified copy of the ‘958 copyright from the USCO, see ‘958 Certified Images; see also ‘958 Certificate of Registration, he is entitled to the presumption of validity. However, Villamarin argues that Gayle's “Art We All” image is not copyrightable on the ground that it does not “meet[] the minimum level of creativity necessary for copyright protection, ” noting in particular that short phrases and typefaces are not eligible for copyright protection. Def. Reply Mem. at 4.
The USCO has promulgated a regulation that specifically states that “[w]ords and short phrases such as . . . slogans” and “mere variations of typographic ornamentation [and] lettering” are not subject to copyright. 37 C.F.R. § 202.1(a). Nonetheless, “there is no mechanical rule stating how long a phrase must be to enjoy copyright protection, and even the shortest of phrases may merit protection if particularly creative.” Fischer v. Forrest, 2017 WL 2992663, at *9 (S.D.N.Y. July 14, 2017) (citing Heim v. Universal Pictures Co., 154 F.2d 480, 487 n.8 (2d Cir. 1946)), adopted by, 286 F.Supp.3d 590 (S.D.N.Y. 2018). “[T]he requisite level of creativity” to qualify for a copyright “is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, no matter how crude, humble or obvious it might be.” Feist Publ'ns, Inc., 499 U.S. at 345 (punctuation omitted).
Multiple courts in this district have found the phrase “Art We All” is not copyrightable. See Gayle v. Allee, 2021 WL 120063, at *9 (S.D.N.Y. Jan. 13, 2021) (“The Court first considers whether the phrase ‘ART WE ALL' is copyrightable, and concludes that it is not.”); Gayle v. Larko, 2019 WL 4450551, at *3 (S.D.N.Y. Sept. 17, 2019) (finding the phrase “Art We All” “[o]n its face . . . is not copyrightable”); Gayle v. Larko, 2018 WL 10669645, at *3 (S.D.N.Y. June 28, 2018) (“copyright protection is not available for the phrase ‘Art We All' itself because a short phrase generally does not exhibit the minimal creativity required for copyright protection”); Gayle v. Hoffman, 2018 WL 11016521, at *2 (S.D.N.Y. June 25, 2018) (“But even if that phrase [i.e., ‘Art We All'] could be trademarked - a question the Court addresses in the negative below - this phrase itself may not be copyrighted, even if it could be trademarked.”). We agree with these courts that the phrase “Art We All” alone does not meet the minimum level of creativity to qualify for copyright protection. Neither does Gayle's use of a certain typeface alone change this conclusion. See 37 C.F.R. § 202.1(a).
While the phrase “Art We All” alone is not copyrightable, Gayle's work is not the phrase “Art We All” alone. Rather, as Gayle concedes, the ‘958 copyright “covers not only the words, ‘Art We All,' but the artwork as a whole, including the design and style of the words.” Gayle Decl. ¶ 16. Considering Gayle's work as a whole --- that is, Figure 1 above --- it meets the minimum level of creativity to be copyrightable. Gayle's work is a combination of a number of design decisions including the font, the mix of upper and lower case letters, and the slant of the letters. See Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1003-04 (2d Cir. 1995) (“[A] work may be copyrightable even though it is entirely a compilation of unprotectible elements. What is protectible then is the author's original contributions.”) (citation and punctuation omitted); Fischer, 2017 WL 2992663, at *10 (finding a brochure advertisement to be protectible despite short phrases and unoriginal aspects because “the whole of the brochure advertisement is greater than the sum of its parts”). Having found Gayle owns a valid copyright in the particular image for which he seeks protection, we turn next to whether Villamarin copied Gayle's work.
2. Actual Copying
“Because direct evidence of copying is seldom available, a plaintiff may establish copying circumstantially by demonstrating that the person who composed the defendant's work had access to the copyrighted material.” Jorgensen, 351 F.3d at 51 (punctuation omitted). “‘Access' means that the alleged infringer had a reasonable opportunity to observe or copy plaintiff's work.” Silberstein v. Fox Ent. Group, Inc., 424 F.Supp.2d 616, 624 (S.D.N.Y. 2004) (citing Tisi v. Patrick, 97 F.Supp.2d 539, 547 (S.D.N.Y. 2000)), aff'd, 242 Fed.Appx. 720 (2d Cir. 2007). “‘As proof of access, a plaintiff may show that (1) the infringed work has been widely disseminated or (2) a particular chain of events exists by which the defendants might have gained access to the work.'” O'Keefe v. Ogilvy & Mather Worldwide, Inc., 590 F.Supp.2d 500, 515 (S.D.N.Y. 2008) (quoting Tomasini v. Walt Disney Co., 84 F.Supp.2d 516, 519 (S.D.N.Y. 2000)). But “[a]ccess must be more than a bare possibility and may not be inferred through speculation or conjecture.” Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir. 1988). Instead, “[i]n order to support a claim of access, a plaintiff must offer ‘significant, affirmative and probative evidence.'” Jorgensen, 351 F.3d at 51 (quoting Scott v. Paramount Pictures Corp., 449 F.Supp. 518, 520 (D.D.C. 1978), aff'd, 607 F.2d 494 (D.C. Cir. 1979), cert. denied, 449 U.S. 849 (1980)).
Villamarin argues that there is no evidence she had access to Gayle's work, see Def. Mem. at 14; Def. Reply Mem. at 4-7, and provides a sworn statement that she “had never [before] heard of or seen the phrase ‘Art We All' or any version of the phrase, ” Villamarin Decl. ¶ 11. Gayle argues there is evidence Villamarin had access because he “has produced documents probative of the prominence of his work throughout in [sic] New York City, ” Pl. Opp. at 6; Villamarin could have viewed his graffiti while walking around New York City, see id. at 5-6; and he has “provided evidence of his appearances at art exhibitions, ” id. at 6. It thus appears that he argues that his work has been “widely disseminated.” Boisson v. Banian, Ltd., 273 F.3d 262, 270 (2d Cir. 2001) (“[a]ccess may be established directly or inferred from the fact that a work was widely disseminated”).
But no reasonable jury could find Gayle's work has been widely disseminated. “A work is ‘widely disseminated' when it has had ‘considerable commercial success' or is ‘readily available on the market.'” Webb v. Stallone, 910 F.Supp.2d 681, 686 (S.D.N.Y. 2012) (quoting Silberstein, 424 F.Supp.2d at 627), affd on other grounds, 555 Fed.Appx. 31 (2d Cir. 2014). Gayle asserts that “[s]ince 2012, [his] work . . . has proliferated across New York City, on social media, and through online profiles, ” that he is “known and recognized in New York City as an artist as ‘Art We All' itself, ” Gayle Decl. ¶ 9, and that he has made appearances at art exhibitions, see id. (“I . . . have been featured in exhibitions under [the] name” Art We All). Gayle also submits posts from social media, mostly of graffiti, that he alleges to be his, Gayle Decl. ¶ 10; Exh. A of Gayle Decl. (“Art We All Posts”), none of which are the specific “Art We All” work at issue here.
None of the screenshots submitted by Gayle from social media were authenticated and are therefore inadmissible. The screenshots were attached to either Gayle or his attorney's declaration and give no indication of who created the screenshots, from whose social media these screenshots were created (other than the usernames that are included in the screenshots), or when the screenshots were created, see Art We All Posts; Exhs. 2-3 of Chua Decl. See Disney Enterprises, Inc. v. Sarelli, 322 F.Supp.3d 413, 443 (S.D.N.Y. 2018) (rejecting screenshots of a “website and other social media sites” where they were “submitted to th[e] Court through an attorney declaration, which claim[ed] in boilerplate fashion that it [was] based upon the attorney's personal knowledge of matters detailed therein”) (punctuation omitted), reconsideration denied, 2018 WL 5019745 (S.D.N.Y. Sept. 26, 2018).
The most obvious flaw in Gayle's presentation is that he provides literally no evidence that the specific work at issue, reflected in Figure 1 - as opposed to just the words “Art We All” - has been widely disseminated. His declaration, which is essentially the only admissible evidence on the issue of dissemination, refers repeatedly to the words “Art We All” generically - not to the work that was copyrighted, Gayle Decl. ¶¶ 7, 9-10, except for one instance, see Id. ¶ 16. None of the images he attaches to his declaration as examples of dissemination match the copyrighted image at issue. In the absence of dissemination of the copyrighted image at issue, no jury could find that Villamarin had access to the copyrighted work, and thus could not find that she actually copied it.
Gayle has therefore failed to offer anything other “than conjecture and speculation as evidence” that Villamarin had access to Gayle's work, “which fails to establish an essential element of his claim of copyright infringement.” Tomasini, 84 F.Supp.2d at 522 (punctuation omitted).
Even if we found that the words “Art We All” by themselves were copyrighted, a reasonable jury could not find that there had been “wide dissemination” of this work. Gayle's evidence is conclusory and vague on critical points. He claims dissemination through graffiti in only vaguely described locations, features in art exhibitions that are unnamed except in one instance, dissemination through social media without any explanation of numbers of views, and vague descriptions of commercial sales. Gayle Decl. ¶¶ 9-12. None of this reflects “considerable commercial success” or that the work is “readily available on the market.” Silberstein, 424 F.Supp.2d at 627. “Access . . . may be inferred when the defendant has had a ‘reasonable opportunity to view' plaintiff's work.” Arica Inst., Inc. v. Palmer, 770 F.Supp. 188, 190 (S.D.N.Y. 1991) (quoting Gaste, 863 F.2d at 1067), aff'd, 970 F.2d 1067 (2d Cir. 1992). However “a reasonable possibility of access” must still be shown, “not a bare possibility.” Id. at 191 (punctuation omitted).
Because no reasonable jury could find that Villamarin had access to Gayle's ‘958 copyrighted image, Villamarin is entitled to summary judgment dismissing Gayle's claim of copyright infringement.
Villamarin seeks dismissal of the New York common law trademark claim on the ground that the federal claim must be dismissed. See Def. Mem. at 23-24. 28 U.S.C. § 1367(a) provides that “in any civil action of which the district courts have original jurisdiction, the district courts shall have supplemental jurisdiction over all other claims that are so related to claims in the action within [the court's] original jurisdiction that they form part of the same case or controversy.” However, 28 U.S.C. § 1367(c)(3), provides that a district court may decline to exercise supplemental jurisdiction if “the district court has dismissed all claims over which it has original jurisdiction.” The Second Circuit has ruled that in such a situation, “a district court should not decline to exercise supplemental jurisdiction unless it also determines that doing so would not promote the values articulated in [United Mine Workers of America v. Gibbs, 383 U.S. 715, 726 (1966)]: economy, convenience, fairness, and comity.” Jones v. Ford Motor Credit Co., 358 F.3d 205, 214 (2d Cir. 2004); accord Shahriar v. Smith & Wollensky Rest. Grp., Inc., 659 F.3d 234, 245 (2d Cir. 2011). Dismissal of the trademark infringement claim would promote the values in Gibbs except for the fact that Villamarin has interposed a Lanham Act counterclaim that potentially raises factual issues identical to the issues in Gayle's common law trademark claim, see Answer ¶¶ 27-34. It would be inefficient and inconvenient to have these two related claims decided in two separate fora.
1. Law Governing New York Common Law Trademark Infringement
“[U]nder New York state law, a mark owner may maintain a . . . common law action against a party who engages in unauthorized use of the mark.” ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 146 (2d Cir. 2007), cert. denied, 552 U.S. 827 (2007). “In order to prove a claim for trademark infringement under New York common law, plaintiff must show that its mark is valid and legally protectible and that another's use of a similar mark is likely to create confusion as to the origin of the product.” Victorinox AG v. B & F System, Inc., 114 F.Supp.3d 132, 141 (S.D.N.Y. 2015) (punctuation omitted), affd, 709 Fed.Appx. 44 (2d Cir. 2017), as amended (Oct. 4, 2017). Additionally, the plaintiff must establish that it is the senior user of the mark. See Woodstock Ventures LC v. Woodstock Roots, LLC, 387 F.Supp.3d 306, 315 (S.D.N.Y. 2019) (“the user who first appropriates the mark obtains an enforceable right to exclude others from using it”) (punctuation omitted), aff'd, 837 Fed.Appx. 837 (2d Cir. 2021). “The elements of a successful New York common law claim of trademark infringement parallel the elements required for a Lanham Act trademark infringement claim.” AM General LLC v. Activision Blizzard, Inc., 450 F.Supp.3d 467, 479 (S.D.N.Y. 2020); accord Kid Car NY, LLC v. Kidmoto Techs. LLC, 2021 WL 466975, at *6 (S.D.N.Y. Feb. 9, 2021). Thus, we will cite to federal case law governing the Lanham Act, 15 U.S.C. § 1125(a) in our analysis.
2. The Mark at Issue
Gayle's complaint alleges that he has acquired trademark rights under New York common law for his “Art We All” mark and that Villamarin infringed on this mark with her “unauthorized use of the trademark in commerce.” Am. Comp. ¶¶ 20-21. Gayle has supplied social media posts, mostly of graffiti, that he claims as his work, see Gayle Decl. ¶ 10, which include graffiti with different variations of the phrase “Art We All” including “Art We All NYC, ” “Art We All One, ” and “Art We All Ink, ” in different styles and with different capitalizations, see Art We All Posts. Gayle argues that “each variation of the ‘Art We All' mark . . . carries trade significance, ” and that “the combination of the mark with suffixes such as ‘One' or [‘]NYC' does not diminish [his] common-law rights in the mark itself.” Pl. Opp. at 11. In brief, “Gayle has . . . identified the specific mark [as] ‘Art We All' itself.” Id.
“A mark is entitled to protection when it is inherently distinctive.” Time, Inc. v. Petersen Pub. Co. L.L.C., 173 F.3d 113, 117 (2d Cir. 1999). Because, as described below, Gayle's claims fail for other reasons, we will assume arguendo that the mark is inherently distinctive.
3. Use in Commerce
The relevant provision of the Lanham Act protects only a mark that is “use[d] in commerce.” 15 U.S.C. § 1125(a). “The term ‘use in commerce' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127. Thus, “[a] fundamental principle of trademark law is that trademark rights arise solely from use of a mark in commerce to represent the goodwill of an [ongoing] business.” Jim Henson Prods., Inc. v. John T. Brady & Assocs., Inc., 867 F.Supp. 175, 182 (S.D.N.Y. 1994); see also Berni v. Int'l Gourmet Restaurants of Am., Inc., 838 F.2d 642, 646 (2d Cir. 1988) (“The extent of any trademark right is defined by its actual use in the marketplace.”). “A mark is used in commerce when it is employed to identify goods or services sold to consumers in a given market.” Cross Commerce Media, Inc. v. Collective, Inc., 841 F.3d 155, 167 (2d Cir. 2016) (punctuation omitted). Or, as the Second Circuit succinctly put it, “there can be no trademark absent goods sold.” American Express Co. v. Goetz, 515 F.3d 156, 161 (2d Cir. 2008) (per curiam), cert. denied, 555 U.S. 827 (2008).
Gayle's evidence of his use of the mark in commerce is virtually non-existent inasmuch as it consists exclusively of conclusory testimony, see Gayle Decl. ¶ 12; three emails allegedly showing Gayle purchased items from suppliers in order to manufacture his own products, see Exh. 15 of Chua Decl.; and receipts for three hats sold in 2017, submitted as part of Gayle's responses to Villamarin's document requests, see Exhs. A-C of Plaintiffs Responses to Document Requests, filed August 12, 2019 (Docket # 41).
“Trademark rights . . . do not arise from ‘sporadic, casual, and nominal shipments of goods bearing a mark.'” Lopez v. Gap, Inc., 883 F.Supp.2d 400, 417 (S.D.N.Y. 2012) (quoting LaSociete Anonyme des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1274 (2d Cir. 1974)). Nonetheless, we will assume arguendo Gayle has made this showing inasmuch as it is clear that he has not submitted evidence that would allow a jury to conclude that Villamarin's use of the mark is likely to cause consumer confusion.
4. Likelihood of Consumer Confusion
“The likelihood-of-confusion prong turns on whether ordinary consumers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of the junior user's mark.” Guthrie Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27, 37 (2d Cir. 2016) (punctuation omitted). “[T]he mere possibility of confusion is not enough. To prevail in a trademark infringement action, a plaintiff must prove ‘a probability of confusion affecting numerous ordinary prudent purchasers.'” Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74, 84 (2d Cir. 2020) (emphasis in original) (punctuation omitted) (quoting Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 383 (2d Cir. 2005), cert. denied, 547 U.S. 1019 (2006)).
Courts in this district use the factors first laid out in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961), to determine the likelihood of consumer confusion. New York courts also examine the Polaroid factors to determine whether there is a likelihood of confusion in common law trademark cases. See, e.g., JJFM Corp. v. Mannino's Bagel Bakery, 70 Misc.3d 171, 174 (N.Y. Sup. Ct. 2020).
The factors are:
(1) strength of the trademark; (2) similarity of the marks; (3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer's product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) respective quality of the products; and (8) sophistication of consumers in the relevant market.Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009). In analyzing consumer confusion, “[c]ourts should not treat any one factor as dispositive, ” Guthrie Healthcare Sys., 826 F.3d at 37, instead considering “the ultimate question of whether consumers are likely to be confused, ” Tiffany & Co., 971 F.3d at 85. “Furthermore, ‘depending on the complexity of the issues, the court may have to take still other variables into account.'” Hypnotic Hats, Ltd. v. Wintermantel Enterprises, LLC, 335 F.Supp.3d 566, 582 (S.D.N.Y. 2018) (punctuation omitted) (quoting Savin Corp. v. Savin Group, 391 F.3d 439, 456 (2d Cir. 2004) (citing Polaroid, 287 F.2d at 495), cert. denied, 546 U.S. 866 (2005)).
a. Strength of the Mark
“The strength of a mark is its tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous, source.” Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 479 (2d Cir. 1996) (punctuation omitted). This “factor is analyzed based on two components: ‘(1) the degree to which the mark is inherently distinctive; and (2) the degree to which it is distinctive in the marketplace.'” Car-Freshner Corp. v. American Covers, LLC, 980 F.3d 314, 329 (2d Cir. 2020) (punctuation omitted) (quoting W.W.W. Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993)).
“Inherent distinctiveness is assessed on a continuum from least to most distinctive, with the aid of categories usually called (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful, with marks in the last category considered the strongest.” Car-Freshner Corp., 980 F.3d at 329. We will assume arguendo that the mark is arbitrary or fanciful as there is no evidence that the mark is “distinctive in the marketplace.”
“‘In determining whether a mark has acquired [commercial] distinctiveness, courts consider a number of non-exhaustive factors: (1) advertising expenditures; (2) sales success; (3) unsolicited media coverage of the product; (4) attempts to plagiarize the mark; (5) the length and exclusivity of the mark's use; and (6) consumer studies linking the name to the source.'” Woodstock Ventures LC, 387 F.Supp.3d at 315 (alteration in original) (quoting Juicy Couture, Inc. v. Bella Int'l Ltd., 930 F.Supp.2d 489, 499 (S.D.N.Y. 2013)); accord Mr. Water Heater Enterprises, Inc. v. 1-800-Hot Water Heater LLC, 648 F.Supp.2d 576, 585 (S.D.N.Y. 2009), reconsideration denied, 2010 WL 286683 (S.D.N.Y. Jan. 20, 2010). Gayle provides virtually no evidence on any of these factors and does not even address the issue of distinctiveness in the marketplace in his brief. The only evidence Gayle has supplied relevant to this inquiry is his claim that he has been using the “Art We All” mark since 2012. See Gayle Decl. ¶¶ 7-9, 12. This alone is not particularly probative of commercial strength. Other than vague and conclusory statements, Gayle supplies no admissible evidence of advertising expenditures, dollar value or number of sales, unsolicited media coverage of the product, attempts to plagiarize the mark in a commercial context or any consumer studies. Contrary to what Gayle apparently believes, “‘[e]ven an inherently distinctive mark can, in its commercial context, lack strength as a mark.'” Saxon Glass Techs., Inc. v. Apple Inc., 393 F.Supp.3d 270, 302 (W.D.N.Y. 2019) (quoting Nora Beverages, Inc. v. Perrier Group of America, Inc., 269 F.3d 114, 123 (2d Cir. 2001)), affd, 824 Fed.Appx. 75 (2d Cir. 2020). While we assume Gayle's mark to be inherently distinctive, “it is a relatively weak mark when examined against the likelihood of confusion in the relevant market” given that it has not resulted in any proven commercial success. Mr. Water Heater Enterprises, Inc., 648 F.Supp.2d at 586. This factor therefore weighs in Villamarin's favor.
b. Similarity of the Marks
In determining the degree of similarity between the marks, “[t]he fact that . . . two marks appear similar is not dispositive. Rather, the question is whether such similarity is more likely than not to cause consumer confusion.” Brennan's, Inc. v. Brennan's Rest., L.L.C., 360 F.3d 125, 133 (2d Cir. 2004). Gayle points out that Villamarin uses words identical to the words in his mark. Pl. Opp. at 16. But the problem for Gayle is that, because he has provided no evidence of commercial distinctiveness and, indeed, has failed to supply an admissible image of the specific “Art We All” mark on any product that he sells in the marketplace, it would be impossible for a jury to find that a consumer would perceive the mark used by Villamarin to be similar to the mark used by Gayle. This factor therefore weighs in Villamarin's favor.
c. Competitive Proximity and Bridging the Gap
“The third and fourth Polaroid factors, respectively, address the proximity of the goods or services and the possibility that the senior user will ‘bridge the gap,' or expand the scope of its business and enter the market of the junior user.” Sarelli, 322 F.Supp.3d at 434. “The proximity factor can apply to both the subject matter of the commerce in which the two parties engage and the geographic areas in which they operate.” Guthrie Healthcare Sys., 826 F.3d at 39. “Both elements seek to elucidate whether the two products or services in question have the same client base.” Flushing Bank v. Green Dot Corp., 138 F.Supp.3d 561, 588 (S.D.N.Y. 2015).
Once again, Gayle's failure to provide any meaningful evidence of the commercial sales of products bearing the mark - or even any indication of the market for these goods - means that he has not shown that these factors should be applied in his favor. Indeed, his brief does not even argue that these factors weigh in his favor.
d. Consumer Confusion
This factor “asks courts to consider the evidence that consumers are actually confused as to the origin of a particular product or service or as to whether the junior user of a mark is sponsored by or affiliated with the senior user.” Sarelli, 322 F.Supp.3d at 435. “Evidence of actual confusion may consist of anecdotal or survey evidence, ” but “the confusion must be of a type that could inflict commercial injury on the plaintiff in the form of either a diversion of sales, damage to goodwill, or loss of control over reputation.” LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A., 209 F.Supp.3d 612, 672 (S.D.N.Y. 2016) (punctuation omitted), aff'd, 720 Fed.Appx. 24 (2d Cir. 2017). Where evidence is anecdotal, “a plaintiff must show ‘a probability of confusion affecting numerous ordinary prudent purchasers.'” Sarelli, 322 F.Supp.3d at 435 (emphasis in original) (punctuation omitted) (quoting O'Keefe, 590 F.Supp.2d at 523).
As Villamarin argues, see Def. Mem. at 22, there is no evidence of actual confusion, nor does Gayle claim that there is. Instead, Gayle asserts that, because both Gayle and Villamarin sold hats with an “Art We All” mark, there is a “‘question of fact as to the probable or actual actions and reactions of prospective purchasers of the goods.'” See Pl. Opp. at 16-17 (quoting American Int'l Group, Inc. v. London American Int'l Corp. Ltd., 664 F.2d 348, 351 (2d Cir. 1981)). We reject this argument. First, the Second Circuit has disavowed the view that likelihood of confusion is a “question of fact” and has instead identified it as a “question of law.” Car-Freshner Corp., 980 F.3d at 326 n.4. In any event, there is no doubt as to how any factual dispute regarding consumer confusion would have to be resolved by a jury when the party with the burden of proof - here Gayle - fails to supply any evidence that would allow a jury to find the relevant facts in his favor. Gayle marshals literally no evidence on the question of confusion other than to speculate that someone seeing “Art We All” on Villamarin's hats might believe it to be Gayle because “Gayle is himself identified as an artist as ‘Art We All.'” Pl. Opp. at 17. Obviously, this does nothing to show that there is “a probability of confusion affecting numerous ordinary prudent purchasers, ” Sarelli, 322 F.Supp.3d at 435. This factor therefore favors Villamarin.
e. Bad Faith
Bad faith exists where the defendant attempts “to exploit the good will and reputation of a senior user by adopting the mark with the intent to sow confusion between the two companies' products.” Tiffany & Co., 971 F.3d at 88. Gayle points to no evidence that Villamarin had such intent. Nor does he point to evidence allowing a reasonable inference of such intent. Instead, Gayle argues that bad faith is demonstrated merely by the fact that Villamarin continued to sell her “ARTWEALL” hats after receiving Gayle's messages insisting she stop. See Pl. Opp. at 17. In light of the lack of evidence that Gayle was even selling products - and no indication that he provided Villamarin with such evidence - any sales by Villamarin could not demonstrate intent to “sow confusion between the two companies' products.” Tiffany & Co., 971 F.3d at 88.
“Where there is ‘no evidence that the defendant acted in bad faith . . . by deceiving customers into believing that its products were related to' the plaintiff, this factor favors defendant.” Malletier v. Dooney & Bourke, Inc., 561 F.Supp.2d 368, 388 (S.D.N.Y. 2008) (punctuation omitted) (quoting N.Y. Stock Exch., Inc. v. New York, New York Hotel LLC, 293 F.3d 550, 556 n.1 (2d Cir. 2002)).
f. Quality of Defendant's Products
“This factor requires the court to ‘consider whether the senior user's reputation could be tarnished by the inferior merchandise of the junior user.'” Juicy Couture, Inc., 930 F.Supp.2d at 502 (punctuation omitted) (quoting Cadbury Beverages, 73 F.3d at 483). Gayle has submitted no evidence on this question and indeed did not argue the applicability of this factor in his brief. Thus this factor does not favor Gayle.
g. Sophistication of the Consumer
“The sophistication factor can have a significant bearing on likelihood of confusion.” Guthrie Healthcare Sys., 826 F.3d at 43. Where consumers “have a high degree of familiarity and sophistication concerning the market in which the senior user operates, it may be obvious to them, notwithstanding similarity of trademarks, that a junior user's activities have no relationship to those of the senior user.” Id. Where consumers “do not have a sophisticated knowledge of the overall market, the likelihood is higher that similarity of trademarks may lead them to believe that a junior user's activities are affiliated with those of the senior user.” Id.
Gayle has submitted no evidence on this question and thus this factor does not favor him. See Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141, 151 (2d Cir. 2003) (agreeing with the district court that this factor is neutral where neither side had submitted any evidence).
h. Balancing the Factors
“The evaluation of the Polaroid factors is not a mechanical process where the party with the greatest number of factors weighing in its favor wins.” Tiffany & Co., 971 F.3d at 85 (punctuation omitted). Courts instead must consider “the ultimate question of whether consumers are likely to be confused.” Id. Here, none of the factors weigh in Gayle's favor and most weigh decidedly against him. No reasonable jury could use the evidence presented by Gayle to find there was a likelihood of consumer confusion - that is, a belief by consumers that Gayle was the origin of Villamarin's hats. Because Gayle was required to prove likelihood of confusion to prevail on his common law trademark claim, Villamarin's motion for summary judgment dismissing Gayle's trademark infringement claim should be granted.
IV. CONCLUSION
For the foregoing reasons, Villamarin's motion for summary judgment (Docket # 81) should be granted and the amended complaint should be dismissed. The case continues, however, because Villamarin's counterclaim under the Lanham Act remains.
PROCEDURE FOR FILING 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 have fourteen (14) days (including weekends and holidays) from service of this Report and Recommendation to file any objections. See also Fed.R.Civ.P. 6(a), (b), (d). A party may respond to any objections within 14 days after being served. Any objections and responses shall be filed with the Clerk of the Court. Any request for an extension of time to file objections or responses must be directed to Judge Daniels. If a party fails to file timely objections, that party will not be permitted to raise any objections to this Report and Recommendation on appeal. See Thomas v. Arn, 474 U.S. 140 (1985); Wagner & Wagner, LLP v. Atkinson, Haskins, Nellis, Brittingham, Gladd & Carwile, P.C., 596 F.3d 84, 92 (2d Cir. 2010).