Le Book Publishing, Inc. v. Black Book Photography, Inc.

17 Citing cases

  1. Mintz v. Subaru of Am., Inc.

    Case No. 16-cv-03384-MMC (N.D. Cal. Oct. 11, 2016)   1 Legal Analyses

    See, e.g., id. In some instances, however, the question of whether a likelihood of confusion exists can be determined at the pleading stage and based on a consideration of less than all of the factors, such as where the parties "have obviously dissimilar marks," see Le Book Publishing, Inc. v. Black Book Photography, Inc., 418 F. Supp. 2d 305, 311 (S.D. N.Y. 2005), or where the "goods" or "services" of the parties are "unrelated," see Murray, 86 F.3d at 86-61. The Court finds the instant case is one in which such a determination can be made at the pleading stage.

  2. PSI Marine, Inc. v. Seahorse Docking LLC

    3:24-CV-163 (SVN) (D. Conn. Nov. 26, 2024)

    Another articulation of this principle is that a plaintiff's complaint will not survive a motion to dismiss where the marks are obviously dissimilar. See Le Book Pub., Inc. v. Black Book Photography, Inc., 418 F.Supp.2d 305, 311 (S.D.N.Y. 2005).

  3. Facebook, Inc. v. Teachbook.Com LLC

    819 F. Supp. 2d 764 (N.D. Ill. 2011)   Cited 44 times
    Refusing to dismiss trademark infringement claim despite differences in coloration and font because obvious textual and aural similarities would likely stand out more while a consumer was browsing the internet

    (Mem. at 11.) Teachbook also relies heavily on a case from the Southern District of New York, Le Book Publishing, Inc. v. Black Book Photography, Inc., 418 F.Supp.2d 305 (S.D.N.Y.2005), in support of its position that the mere overlap of the word BOOK between two marks cannot give rise to a trademark infringement claim. (Mem. at 8–9.)

  4. Peter F. Gaito Architecture, LLC v. Simone Development Corp.

    602 F.3d 57 (2d Cir. 2010)   Cited 458 times   2 Legal Analyses
    Holding that "generalized notions of where to place functional elements" are insufficient to establish substantial similarity of protected expression

    Gal v. Viacom Int'l, Inc., 403 F.Supp.2d 294, 305 (S.D.N.Y. 2005). See, e.g., Blakeman v. Walt Disney Co., 613 F.Supp.2d 288, 298 (E.D.N.Y. 2009) (explaining that "many courts have, after comparing the works at issue, dismissed infringement claims for failure to state a claim where substantial similarity between the works cannot be found"); Gottlieb Dev.LLC v. Paramount Pictures Corp., 590 F.Supp.2d 625, 629 n. 1, 632 (S.D.N.Y. 2008) (granting Rule 12(b)(6) motion to dismiss and holding that the two works in question, which the court deemed incorporated into the complaint by reference, were not substantially similar); Adams v. Warner Bros. Pictures Network, No. 05 Civ. 5211, 2007 WL 1959022, 2007 U.S. Dist. LEXIS 47448 (E.D.N.Y. June 29, 2007) (same); Le Book Publ'g, Inc. v. Black Book Photography, Inc., 418 F.Supp.2d 305 (S.D.N.Y. 2005) (same); Bell v. Blaze Magazine, No. 99 Civ. 12342, 2001 WL 262718, 2001 U.S. Dist. LEXIS 2783 (S.D.N.Y. Mar. 16, 2001) (same); Boyle v. Stephens, Inc., No. 97 Civ. 1351, 1998 WL 80175, 1998 U.S. Dist. LEXIS 1968 (S.D.N.Y. Feb. 25, 1998) (same); Buckman v. Citicorp, No. 95 Civ. 0773, 1996 WL 34158, 1996 U.S. Dist. LEXIS 891 (S.D.N.Y. Jan. 30, 1996) (same). Several of our sister circuits have likewise endorsed the practice of considering the question of substantial similarity on a motion to dismiss.

  5. Bliss Collection, LLC v. Latham Cos.

    Civil Action No. 5:20-CV-217-CHB (E.D. Ky. Jun. 28, 2021)   Cited 1 times

    Id. at 14 n. 3 (quoting 6 McCarthy on Trademarks and Unfair Competition § 32:121.75 (5th ed.)). The Court also cited to Le Book Pub., Inc. v. Black Book Photography, Inc., 418 F.Supp.2d 305, 311 (S.D.N.Y. 2005) where the district court granted defendant's motion to dismiss, explaining that “the ‘degree of similarity' element” in the likelihood of confusion analysis “overwhelms any possibility of confusion.” The parties' had “obviously dissimilar marks, ” and so the “plaintiff's claim for trademark infringement fail[ed] as a matter of law.” Id. at 311-12.

  6. Int'l Council of Shopping Ctrs., Inc. v. Reconcre, LLC

    Civil Action No.: 20-2551 (RC) (D.D.C. Jan. 14, 2021)   Cited 5 times

    Cf. Facebook, Inc. v. Teachbook.com LLC, 819 F. Supp. 2d 764, 781 (N.D. Ill. 2011) (refusing to dismiss trademark infringement claim despite differences in coloration and font because obvious textual and aural similarities would likely stand out more while a consumer was browsing the internet). Contrast Le Book Pub., Inc. v. Black Book Photography, Inc., 418 F. Supp. 2d 305, 311 (S.D.N.Y. 2005) (dismissing trademark infringement claim because otherwise "physically and visually distinct" marks shared only the word "book" in common). In addition, facts in ICSC's complaint indicate that the parties' products are related.

  7. Lopez v. Adidas Am., Inc.

    19-cv-7631 (LJL) (S.D.N.Y. May. 19, 2020)   Cited 18 times
    Taking judicial notice of federal trademark registrations on motion to dismiss

    PUMA is correct that there is precedent for dismissing a trademark infringement claim at the motion to dismiss stage based on this factor. See Le Book Pub., Inc. v. Black Book Photography, Inc., 418 F. Supp. 2d 305, 311 (S.D.N.Y. 2005) (concluding that "the 'degree of similarity' element . . . overwhelms any possibility of confusion"). PUMA is also correct that courts have dismissed trademark infringement claims where the only similarity was a common word or phrase.

  8. Scotch & Soda B.V. v. Scotch & Iron LLC

    1:17-cv-04561 (ALC) (S.D.N.Y. May. 15, 2018)   Cited 5 times

    In Le Book, the court dismissed plaintiff's trademark infringement claim because looking at the directories at issue cumulatively, the only similarity in the marks was the generic term "book", whereas here, the issue is the use of term "SCOTCH" followed by an ampersand followed by another term as a name for a clothing brand. Le Book Pub., Inc. v. Black Book Photography, Inc., 418 F. Supp. 2d 305, 312 (S.D.N.Y. 2005); see also Energy Intelligence Grp., Inc. v. UBS Fin. Servs., Inc., No. 08 CIV. 1497 (DAB), 2009 WL 1490603, at *7 (S.D.N.Y. May 22, 2009) (dismissing trademark infringement claim where the plaintiff's mark was generic and defendant's prominent use its well-known name, UBS, significantly reduced the likelihood of consumer confusion) (quotations omitted)

  9. Hord v. Jackson

    281 F. Supp. 3d 417 (S.D.N.Y. 2017)   Cited 3 times

    " Id. at 64 (internal citation omitted); see also id. ("If, in making that evaluation, the district court determines that the two works are not substantially similar as a matter of law, ... the district court can properly conclude that the plaintiff's complaint, together with the works incorporated therein, do not plausibly give rise to an entitlement to relief." (internal citations omitted)); Gottlieb Dev. LLC v. Paramount Pictures Corp., 590 F.Supp.2d 625, 632 (S.D.N.Y. 2008) (granting Rule 12(b)(6) motion to dismiss and holding that two works in question, which the court deemed incorporated into the complaint by reference, were not substantially similar); Le Book Publ'g, Inc. v. Black Book Photography, Inc., 418 F.Supp.2d 305 (S.D.N.Y. 2005) (same).Accordingly, this Court has examined the Dangerous script and viewed Power.

  10. Hirsch v. CBS Broad. Inc.

    17 Civ. 1860 (PAE) (S.D.N.Y. Aug. 4, 2017)   Cited 11 times
    Holding that defendant's infringement was not de minimis because defendant "display[ed] a substantial proportion" of the allegedly infringing photo, "occup[ying] much, although not all, of the screen"

    When visual works are at issue and (as here) are attached to the pleadings or otherwise cognizable on a motion to dismiss, the Court must determine whether a reasonable jury could find substantial similarity based upon a comparison of the two works; on this point, "no discovery or fact-finding is typically necessary." Id.; see also Gottlieb, 590 F. Supp. 2d at 632; Le Book Publ'g, Inc. v. Black Book Photography, Inc., 418 F. Supp. 2d 305, 309-10 (S.D.N.Y. 2005). When no reasonable jury could find substantial similarity, the claim must be dismissed, because the copying claimed by the plaintiff would not "plausibly give rise to an entitlement to relief," Iqbal, 556 U.S. at 679.