551 F.Supp.3d 408
S.D.N.Y.2021Background
- Plaintiffs The National Academy of Television Arts and Sciences and the Academy of Television Arts & Sciences (the Television Academies) own registered copyright and trademark rights in the Emmy Statuette design.
- Defendant Multimedia System Design, Inc. (MSDI), owner Jason Goodman, posted a "Crony Awards" video whose thumbnail and opening 10 seconds showed a graphic of the Emmy Statuette holding a COVID-19 image (the "Crony Graphic").
- Plaintiffs sent a DMCA takedown to YouTube; YouTube removed the video; Defendant submitted a DMCA counter-notice and publicly attacked NATAS’s CEO.
- Plaintiffs sued for copyright infringement, federal and state trademark dilution/infringement, and libel; Defendant asserted counterclaims for declaratory relief (fair use and non-defamation), New York anti-SLAPP protection, and DMCA §512(f) abuse.
- The Court denied Defendant’s motion to dismiss (holding Plaintiffs plausibly alleged copyright and trademark claims and that fair use/de minimis were not established on the face of the complaint) and granted Plaintiffs’ motion to dismiss all counterclaims (declaratory relief duplicative, anti-SLAPP inapplicable in federal court, and §512(f) not pleaded).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Copyright: de minimis copying | Emmy image was copied and is protectible; use was substantial | Use was de minimis because brief and not central | Not de minimis — Crony Graphic was prominent (thumbnail/opening 10s) and clearly observable |
| Copyright: fair use | Plaintiffs argue use not transformative, commercial, and harms market/reputation | Defendant says use was transformative commentary/parody and noncommercial | Fair use not established on pleadings — factors (purpose, nature, amount, market effect) weigh against fair use |
| Trademark dilution/infringement | Use tarnishes/blurs famous Emmy mark and creates likelihood of confusion | Defendant claims parody/commentary fair use and no confusion | Dilution fair-use/parody exception inapplicable; Plaintiffs plausibly alleged dilution/tarnishment and likelihood of confusion |
| Declaratory relief counterclaims | — | Seeks declaration that use was fair and statements non-defamatory | Dismissed as duplicative of affirmative defenses and Plaintiffs’ claims |
| New York anti-SLAPP and DMCA §512(f) counterclaims | — | Anti-SLAPP §70-a applies; Plaintiffs knowingly misrepresented copyright to YouTube | Anti-SLAPP §70-a inapplicable in federal court (conflicts with FRCP 12/56); §512(f) claim dismissed for failure to allege knowing, material misrepresentation |
Key Cases Cited
- Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57 (2d Cir. 2010) (elements for copyright infringement)
- Ringgold v. Black Ent. Television, Inc., 126 F.3d 70 (2d Cir. 1997) (de minimis visual-copying/observability factors)
- Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (transformative use and commercialism in fair use analysis)
- Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) (application of fair use factors)
- Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013) (minimal alterations and transformativeness)
- Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 992 F.3d 99 (2d Cir. 2021) (secondary work must convey a new meaning or message)
- TCA Television Corp. v. McCollum, 839 F.3d 168 (2d Cir. 2016) (dismissal appropriate when fair use clearly established on the face of the complaint)
- Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015) (market-harm focus in fair use fourth factor)
- La Liberte v. Reid, 966 F.3d 79 (2d Cir. 2020) (state anti-SLAPP provisions that conflict with Federal Rules cannot be applied in federal court)