THE NATIONAL ACADEMY OF TELEVISION ARTS AND SCIENCES, INC. and ACADEMY OF TELEVISION ARTS & SCIENCES, Plaintiffs, -against- MULTIMEDIA SYSTEM DESIGN, INC. d/b/a “CROWDSOURCE THE TRUTH“, Defendant. MULTIMEDIA SYSTEM DESIGN, INC. d/b/a “CROWDSOURCE THE TRUTH“, and JASON GOODMAN Counterclaim Plaintiffs, -against- THE NATIONAL ACADEMY OF TELEVISION ARTS AND SCIENCES, INC. and ACADEMY OF TELEVISION ARTS & SCIENCES, Counterclaim Defendants
20-CV-7269 (VEC)
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK
July 30, 2021
VALERIE CAPRONI, United States District
OPINION AND ORDER
VALERIE CAPRONI, United States District Judge:
Multimedia System Design, Inc. d/b/a “Crowdsource the Truth” (“MSDI“) produces video content that, inter alia, traffics in wild conspiracy theories. In June 2020, MSDI used an image of the Emmy Award Statuette holding a model of the COVID-19 virus as part of a video honoring countries that downplayed the seriousness of the COVID-19 pandemic. Plaintiffs, The National Academy of Television Arts and Sciences, Inc. (“NATAS“) and Academy of Television Arts & Sciences (“ATAS“) (collectively, the “Television Academies“), owners of the Emmy Statuette design, took exception and sued. Am. Compl., Dkt. 62 (“Am. Compl.“). MSDI and its owner, Counterclaimant Jason Goodman (“Mr. Goodman“) (collectively, “Counterclaimants“), apparently believing the best defense is a poorly thought out offense, asserted counterclaims for declaratory relief, violation of New York‘s anti-SLAPP law, and abuse of the Digital Millennium Copyright Act (“DMCA“). Am. Answer, Dkt. 45. (“Am. Answer“). The parties have filed cross-motions to dismiss. Dkts. 24, 38. For the following reasons, Defendant‘s partial motion to dismiss the Amended Complaint is DENIED.1
BACKGROUND2
Since 1949, the Television Academies have presented the Emmy Award to members of television casts, crews, and executives at annual award shows in recognition of excellence and achievement in television programming. Am. Compl. ¶¶ 2, 10. The Emmy Award is a gold statuette molded in the shape of a winged figure holding an atom (the “Emmy Statuette“). Id. ¶ 11. The Television Academies co-own valid and subsisting trademarks and registered copyrights for the Emmy Statuette. Id. ¶¶ 18, 22.
MSDI is a corporation owned by Mr. Goodman. Id. ¶¶ 7, 26. MSDI produces and disseminates social and political commentary through its video series “Crowdsource the Truth,” as well as through various social media accounts. Id. ¶ 25. MSDI syndicates paid content through Patreon.com and SubscribeStar.com, and advertises, markets, and promotes that content through its social media accounts. Id. ¶ 27.
On June 12, 2020, Defendant posted a nine-minute-long video (the “Video“) on YouTube and other platforms as part of its so-called “Crony Awards,” an award show that honored countries that downplayed the COVID-19 pandemic. Id. ¶ 29. As shown in the image below, the Video displays an image of the Emmy Statuette holding an illustration of the COVID-19 virus (the “Crony Graphic“). Id. ¶ 30. The Crony Graphic appears for the opening ten seconds of the Video, and it is used as the Video‘s YouTube thumbnail image. See Video at 00:00 to 00:10. Defendant also used the Crony Graphic in social media posts promoting its Crony Awards. Am. Compl. ¶ 30; Pls.’ Motion for Judicial Notice, Dkt. 37-1, Ex. 1.
Plaintiffs assert claims for: (1) copyright infringement under
DISCUSSION
To survive a motion to dismiss for failure to state a claim upon which relief can be granted, “a complaint must allege sufficient facts, taken as true, to state a plausible claim for relief.” Johnson v. Priceline.com, Inc., 711 F.3d 271, 275 (2d Cir. 2013) (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555-56 (2007)). A complaint need not “contain detailed or elaborate factual allegations, but only allegations sufficient to raise an entitlement to relief above the
I. Defendant‘s Partial Motion to Dismiss is Denied5
A. Copyright Infringement Claim
To prevail on a claim of copyright infringement, “a plaintiff with a valid copyright must demonstrate that: (1) the defendant has actually copied the plaintiff‘s work; and (2) the copying is illegal because a substantial similarity exists between the defendant‘s work and the protectible elements of [the] plaintiff‘s.” Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 63 (2d Cir. 2010) (citation omitted). To establish substantial similarity, a plaintiff must show, inter alia, that the copying is “more than de minimis.” Tufenkian Imp./Exp. Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 131 (2d Cir. 2003).
Defendant does not dispute that the Television Academies have valid copyrights for the Emmy Statuette or that Defendant copied the Emmy Statuette. Def. Opp., Dkt. 50 at 2. Instead, Defendant argues that its use of the Emmy Statuette is not actionable because the use was either de minimis or fair use. The Court disagrees.
1. Defendant‘s Infringement Was Not De Minimis
To establish that the infringement of a copyright is de minimis, a defendant must show that its copying of protected material is “so trivial” as to “fall below the quantitative threshold of substantial similarity.” Ringgold v. Black Ent. Television, Inc., 126 F.3d 70, 74 (2d Cir. 1997). In cases involving visual works, such as the instant case, whether the defendant‘s copying is de minimis depends on the “observability” of the copied work, including “the length of time the copied work is observable in the allegedly infringing work and such factors as focus, lighting, camera angles, and prominence.” Id. at 75. The assessment is to be made from the viewpoint of an “average lay observer.” Sandoval v. New Line Cinema Corp., 147 F.3d 215, 218 (2d Cir. 1998).
Here, the Crony Graphic appears prominently for the opening ten seconds of Defendant‘s Video. The Crony Graphic is in clear focus in the foreground of the Video and occupies much of the screen. See Video at 00:00 to 00:10. The Crony Graphic is also used as the thumbnail image for the Video, making the Crony Graphic perpetually visible even before a user plays the video. See Video at 00:00; Am. Answer at 3 ¶ 4. Accordingly, Defendant‘s infringement was not de minimis. See On Davis v. The Gap, Inc., 246 F.3d 152, 173 (2d Cir. 2001) (holding that defendant‘s infringement was
2. Defendant‘s Use of the Emmy Statuette Is Not Fair Use
Fair use is a statutory exception to copyright infringement. Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 608 (2d Cir. 2006). As codified in the Copyright Act, “the fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching . . . , scholarship, or research, is not an infringement of copyright.”
a. Purpose and Character of the Use
The heart of the fair use inquiry is the purpose and character of the use. Blanch v. Koons, 467 F.3d 244, 251 (2d Cir. 2006). This includes two considerations: (i) the transformative nature of the work, and (ii) whether the “use is of a commercial nature or is for nonprofit educational
i. Transformative Use
To determine whether a secondary use is transformative, the Court must consider “whether the new work merely supersede[s] the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” Bill Graham, 448 F.3d at 608 (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994)). To be transformative, “the secondary work itself must reasonably be perceived as embodying an entirely distinct artistic purpose, one that conveys a ‘new meaning or message’ entirely separate from its source material.” Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 992 F.3d 99, 113 (2d Cir. 2021) (emphasis added). Put differently, although the primary work may still be recognizable within the secondary work, “the secondary work‘s use of its source material” must be “in service of a ‘fundamentally different and new’ artistic purpose and character, such that the secondary work stands apart from the ‘raw material’ used to create it.” Id. at 114. Paradigmatic examples of transformative uses include parody, criticism, comment, news reporting, teaching, scholarship, and research. Id. at 110.
Defendant argues that its use of the Emmy Statuette is transformative because the Crony Graphic changed the Emmy Statuette‘s meaning “by having a symbol of the television industry holding up a depiction of the COVID virus,” resulting in “a unique and startling image that invites interpretation.” Def. Mem. of Law, Dkt. 25 at 10. The Court disagrees. Defendant has made no substantial alterations to the Emmy Statuette; the Crony Graphic is identical to the Emmy Statuette save the replacement of the atom with an image of the COVID-19 virus. Put differently, a simple side-by-side comparison of the Emmy Statuette and the Crony Graphic confirms that the Crony Graphic retains the dominant and essential aesthetic elements of the Emmy Statuette. Cariou v. Prince, 714 F.3d 694, 711 (2d Cir. 2013) (finding that secondary works that made only “minimal alterations,” so that the secondary works remained “similar [to the original] in key aesthetic ways,” were not transformative). The Crony Graphic is nothing more than the “imposition of another artist‘s style on the primary work such that the secondary work remains both recognizably deriving from, and retaining the essential elements of, its source material.” Warhol, 992 F.3d at 114. Accordingly, Defendant‘s use of the Emmy Statuette is not transformative. See Graham v. Prince, 265 F. Supp. 3d at 381 (rejecting fair use defense where the secondary work “simply reproduce[d] the entirety of [the original]” so that the “unobstructed and unaltered” original remained “the dominant image in [the secondary work]“); N. Jersey Media Grp. Inc. v. Pirro, 74 F. Supp. 3d 605, 615 (S.D.N.Y. 2015) (finding that a secondary work, which juxtaposed the plaintiff‘s work with an iconic World War II photograph, was not transformative because the plaintiff‘s work remained “the clearly predominant feature of the [c]ombined [i]mage“).
Defendant‘s assertion that the Crony Graphic was created “to promote a serious discussion” of the COVID-19 pandemic is insufficient to establish transformativeness. Def. Mem. of Law, Dkt. 25 at 10. At the outset, whether a secondary work is transformative does not turn on the stated or perceived intent of its creator. See Warhol, 992 F.3d at 113 (noting that “where a
Finally, Defendant‘s argument that its use of the Emmy Statuette constitutes parody is unavailing. See Am. Answer at 26-28 ¶¶ 22, 24, 27. “To constitute a parody, a work must be directed, at least in part, at the original, and its ‘commentary [must have] critical bearing on the substance or style of the original.‘” Abilene Music, Inc. v. Sony Music Ent., Inc., 320 F. Supp. 2d 84, 91 (S.D.N.Y. 2003) (quoting Campbell, 510 U.S. at 580-81); see also Warhol, 992 F.3d at 110 (noting that “parody [ ] needs to mimic an original to make its point“). A secondary work that simply appropriates material from an existing work without directing its criticism at the copied work itself is not parody. Abilene Music, Inc., 320 F. Supp. 2d at 91. Defendant admits that “[n]either the Emmy statuette nor the Television Academies were mentioned in the broadcast.” Def. Mem. of Law, Dkt. 25 at 7; see also Pls.’ Motion for Judicial Notice, Dkt. 37-1, Ex. 4, at 10:30 to 11:00 (stating that the Television Academies “narcissistically think [the Crony Awards] was referring to them“). Accordingly, the Crony Graphic is not parody.
ii. Commercial Use
In evaluating the purpose and character of the use, the Court must also consider “whether such use is of a commercial nature or is for nonprofit educational purposes.”
Defendant argues that its use of the Emmy Statuette is not commercial because Mr. Goodman derives no income from his YouTube broadcasts. Def. Mem. of Law, Dkt. 25 at 11. While Defendant may not derive direct income from its YouTube content, Defendant‘s Video included links to Patreon and SubscribeStar, through which consumers pay for Defendant‘s content.8 Accordingly, Plaintiffs have adequately alleged that the Crony Graphic was used commercially. See Hirsch v. Complex Media, Inc., No. 18-CV-5488, 2018 WL 6985227, at *6 (S.D.N.Y. Dec. 10, 2018) (finding that defendant‘s copying “for commercial purposes . . . adjacent to advertisements” gave rise to “inferences of commercial use and bad faith“).
In sum, the first factor weighs against a finding of fair use.
b. Nature of the Copyrighted Work
The second fair use factor considers: “(1) whether the work is expressive or creative, . . . with a greater leeway being allowed to a claim of fair use where the work is factual or informational, and (2) whether the work is published or unpublished, with the scope for fair use involving unpublished works being considerably narrower.” Cariou, 714 F.3d at 709-10.
Because Defendant concedes that the Emmy Statuette is “arguably creative,” Def. Mem. of Law, Dkt. 25 at 11, this factor weighs against a finding of fair use.
c. Amount and Substantiality of the Portion Used
The third fair use factor considers whether “the quantity and value of the materials used[ ] are reasonable in relation to the purpose of the copying.” Campbell, 510 U.S. at 586. In general, “the more of a copyrighted work that is taken, the less likely the use is to be fair.” Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 89 (2d Cir. 2014).
As noted supra, the Crony Graphic copies nearly all of the Emmy Statuette; the two images are identical other than the replacement of the atom with the COVID-19 virus. See Hirsch v. CBS Broad. Inc., 2017 WL 3393845, at *7 (rejecting fair use defense where the defendant “simply reproduced a substantial proportion of the [original]” and then “insert[ed] it into a broadcast“). Moreover, the Court agrees with Plaintiffs that Defendant‘s use of the Emmy Statuette was unreasonable in relation to its purpose. Even assuming that Defendant needed to use an image of an award to promote its Crony Awards, Defendant has not shown that it was necessary to use the Emmy Statuette. See TCA Television Corp., 839 F.3d at 185 (finding that wholesale borrowing of copyrighted comedy routine was not reasonable where “defendants offer[ed] no persuasive justification” for its use).
Accordingly, the third factor weighs against a finding of fair use.
d. Effect of the Use Upon the Market for or Value of the Original
The final fair use factor considers “the effect of the use upon the potential market for or value of the copyrighted work.”
The Court agrees with Defendant that the primary markets for the Emmy Awards and Defendant‘s video series do not meaningfully overlap. Nevertheless, Plaintiffs have adequately alleged that they suffered actual and reputational harm through Defendant‘s association of the Emmy Statuette with dangerous misinformation about the COVID-19 pandemic. See Am. Compl. ¶¶ 31, 49, 58, 61. Defendant has alleged no facts to support its conclusory assertion that its use of the Crony Graphic had “[no] impact whatsoever” upon the market value of the Emmy Statuette. See Campbell, 510 U.S. at 590 (“Since fair use is an affirmative defense, its proponent would have difficulty carrying the burden of demonstrating fair use without favorable evidence about relevant markets.“).
In sum, this factor weighs slightly against a finding of fair use.
e. Balance of the Factors
For the foregoing reasons, the Court concludes that the balance of the fair use factors weighs against a finding of fair use at this stage. Therefore, Defendant‘s motion to dismiss Plaintiffs’ copyright infringement claim is denied because Defendant‘s use was not, as a matter of law, either de minimis or fair use.
B. Trademark Dilution Claims
To allege a trademark dilution claim under federal law, a plaintiff must prove (1) that the trademark is truly distinctive or has acquired secondary meaning, and (2) a likelihood of dilution as a result of blurring or tarnishment.
Dilution by blurring is an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.”
Dilution by tarnishment is an “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.”
Like the Copyright Act, the Trademark Dilution Act includes a fair use exception, which provides that certain types of uses are not actionable as dilution by blurring or dilution by tarnishment, including:
Any fair use . . . of a famous mark by another person other than as a designation of source for the person‘s own goods or services, including use in connection with . . . identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.
Here, Defendant argues that the fair use exception applies because its use of the Crony Graphic was parody or social commentary. The Court disagrees. The parody exception does not apply when the purported parody “makes no comment” on the original mark, and “simply uses it somewhat humorously to promote [its] own products and services.” Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806, 813 (2d Cir. 1999). As noted supra, Defendant concedes that its Video does not mention either the Emmy Statuette or the Television Academies, see Def. Mem. of Law, Dkt. 25 at 7, and nothing about its use of the Crony Graphic pokes fun at or comments on the Television Academies. Accordingly, the parody exception does not apply. Louis Vuitton Malletier, S.A. v. Hyundai Motor Am., No. 10-CV-1611, 2012 WL 1022247, at *19 (S.D.N.Y. Mar. 22, 2012) (finding parody exception inapplicable when defendant acknowledged its “overall intent was not to comment directly on [the trademark holder]“). Similarly, although Defendant argues that its use of the Crony Graphic “qualifies as social commentary on the television industry and its role in creating public perceptions,” Def. Mem. of Law, Dkt. 25 at 14, the fair use exception does not apply to “expansive social criticism, as opposed to a targeted comment or parody of the original.” Hyundai Motor Am., 2012 WL 1022247, at *19.
In sum, the fair use exception does not, as a matter of law, defeat Plaintiffs’ trademark dilution claims.11
C. Trademark Infringement Claims
To state a claim for trademark infringement under the Lanham Act, a plaintiff must allege sufficient facts to establish: (1) that the plaintiff‘s mark is entitled to protection, and (2) that the defendant‘s “use of its mark is likely to cause consumers confusion as to the origin or sponsorship of [its] goods.” Guthrie Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27, 37 (2d Cir. 2016).12 A certificate of registration with the Patent and Trademark Office is prima facie evidence that the mark is entitled to protection. Id.
“Likelihood of confusion includes confusion of any kind, including confusion as to source, sponsorship, affiliation, connection, or identification.” Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 383 (2d Cir. 2005) (citation omitted). In assessing whether a likelihood of confusion exists, courts apply the well-known eight-factor balancing test announced in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). The eight factors include: (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) the sophistication of consumers in the relevant market. Starbucks Corp. v. Wolfe‘s Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009). The application of the Polaroid test is not “mechanical,” and no single factor is dispositive. Guthrie Healthcare Sys., 826 F.3d at 37. Rather, a court must focus on whether the plaintiff has plausibly alleged a “probability of confusion.” Id.; see also Paddington Corp. v. Attiki Imps. & Distribs., Inc., 996 F.2d 577, 584 (2d Cir. 1993).
Defendant does not dispute that Plaintiffs’ mark is registered and entitled to protection. Instead, Defendant argues that its use of Plaintiffs’ mark was unlikely to cause consumer confusion.
1. Strength of Trademark
“A mark‘s strength is a function of its distinctiveness, whether inherent or whether acquired in the marketplace.” Classic Liquor Importers, Ltd. v. Spirits Int‘l B.V., 201 F. Supp. 3d 428, 442 (S.D.N.Y. 2016). Because Defendant concedes that the Emmy Statuette is a strong trademark, Def. Mem. of Law, Dkt. 25 at 16, the first factor weighs in favor of the Television Academies. See Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 503 (2d Cir. 1996) (“[A]n undeniably strong mark [is] a factor favoring the trademark plaintiff.“).
2. Similarity of the Marks
“In applying this factor, courts consider whether the similarity of the marks is likely to cause confusion among potential customers.” Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 394 (2d Cir. 1995). “The more unusual and distinctive the design of a trademark logo, the greater the likelihood that such an astonishing degree of similarity will evoke an assumption that the senior and junior user are affiliated.” Guthrie Healthcare Sys., 826 F.3d at 38.
As noted supra, the Emmy Statuette and the Crony Graphic are nearly identical; the Crony Graphic depicts the same winged figure holding a globe-shaped object in the same dimensions, proportions, and colors as the Emmy Statuette. Indeed, Defendant admits to using “the entire” Emmy Statuette in the Crony Graphic. Def. Mem. of Law, Dkt. 25 at 12. As such, the second factor favors the Plaintiffs.
“The proximity inquiry asks to what extent the two products compete with each other.” Brennan‘s, Inc. v. Brennan‘s Rest., L.L.C., 360 F.3d 125, 134 (2d Cir. 2004). The purpose of the inquiry, which considers both market proximity and geographic proximity, is “to determine whether the two products have an overlapping client base that creates a potential for confusion.” Id. In considering commercial proximity, courts also consider how “the respective products are marketed” and made available to consumers. Star Indus., Inc., 412 F.3d at 387.
Here, the parties are engaged in distinct commercial activities. The Television Academies present the Emmy Awards while Defendant produces and disseminates “political and social commentary” on YouTube and other social media platforms. Nonetheless, Defendant also hosts and promotes at least one award show; as noted supra, the title of Defendant‘s Video explicitly references its “Crony Awards.” Accordingly, Plaintiffs have adequately alleged that the Crony Graphic is used in a similar way to the Emmy Statuette such that there is some potential for confusion. As such, on balance, at the motion to dismiss stage, the third factor is neutral or weighs slightly in favor of the Plaintiffs.
4. Bridging the Gap
“‘Bridging the gap’ refers to the likelihood that the senior user will enter the junior user‘s market in the future, or that consumers will perceive the senior user as likely to do so.” Star Indus., Inc., 412 F.3d at 387.
Plaintiffs allege no facts to support the inference that they have any intention of entering Defendant‘s market or that consumers would reasonably believe that the Television Academies would be likely to engage with Defendant‘s YouTube platform. Accordingly, the fourth factor favors the Defendant.
5. Actual Confusion
“It is black letter law that actual confusion need not be shown to prevail on a trademark infringement claim, since actual confusion is very difficult to prove.” Guthrie Healthcare Sys., 826 F.3d at 45 (citation omitted). Accordingly, Plaintiffs need only show “a likelihood of confusion.”
Plaintiffs have adequately alleged that, based on the Crony Graphic‘s striking similarity to the Emmy Statuette and its use in connection with Defendant‘s Crony Awards, the Crony Graphic is “likely to cause confusion, mistake, and deception as to the source or origin of the Television Academies’ products and services” and may “falsely suggest a sponsorship, connection, or association between Defendant, its products, its services, and/or its commercial activities with the Television Academies and/or their corporate identity.” Am. Compl. ¶¶ 48, 65, 67.
Accordingly, the fourth factor favors the Plaintiffs.
6. Bad Faith
In determining whether a defendant acted in bad faith, the Court “considers whether the defendant adopted its mark with the intention of capitalizing on the plaintiff‘s reputation and goodwill and on any confusion between his and the senior user‘s product.” Savin Corp. v. Savin Grp., 391 F.3d 439, 460 (2d Cir. 2004) (citation and internal alterations omitted). A presumption of bad faith may arise where a defendant intentionally copies a plaintiff‘s mark for its own purposes. Heritage of Pride, Inc. v. Matinee NYC, Inc., No. 14-CV-4165, 2014 WL 12783866, at *11 (S.D.N.Y. June 20, 2014) (citing Paddington Corp., 996 F.2d at 586 (“Where a second-comer acts in bad faith and intentionally copies a trademark . . . a presumption arises that the copier has succeeded in causing confusion.“)); see also Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 258 (2d Cir. 1987) (“Intentional copying gives rise to a presumption of a likelihood of confusion.“).
Because Defendant does not dispute that it copied the entire Emmy Statuette to create the Crony Graphic, see Def. Mem. of Law, Dkt. 25 at 12, the Court finds a presumption of bad faith to be appropriate here. See Paddington Corp., 996 F.2d at 587 (“Where [actual knowledge of the prior user‘s mark] is accompanied by similarities so strong that it seems plain that deliberate copying has occurred, we have upheld findings of bad faith.“).
The sixth factor favors the Plaintiffs.
7. Differences in Relative Quality
Differences in relative quality between a senior and a junior user‘s goods or services can harm the senior user‘s reputation and affect the likelihood of consumer confusion. Guthrie Healthcare Sys., 826 F.3d at 44. Because Plaintiffs have not alleged what, if any, quality differences exist between the two images, the Court is unable to draw any conclusions as to the respective quality of the products. Accordingly, this factor is neutral.
8. Consumer Sophistication
The more sophisticated the consumers of a product are, “the less likely it is that similarities in . . . trade marks will result in confusion concerning the source or sponsorship of the product.” Paddington Corp., 996 F.2d at 587 (citation omitted). Where potential consumers lack a sophisticated knowledge of the overall market, however, “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.” Guthrie Healthcare Sys., 826 F.3d at 43.
Although Defendant claims that its audience is “highly intelligent and sophisticated” and would therefore not confuse the Crony Graphic with the Emmy Statuette, Def. Mem. of Law, Dkt. 25 at 16, at this stage, Plaintiffs have adequately alleged that a member of the general online public “might see the EMMY Statuette Design as used by Defendant and mistakenly believe that there is a link between Plaintiffs and Defendant or find the association offensive, thus tarnishing the mark.” Pls.’ Opp., Dkt. 37 at 24; see also Am. Compl. ¶¶ 48, 67, 69. Accordingly, the eighth factor favors Plaintiffs.
In sum, considering the eight Polaroid factors together, the Court concludes that Plaintiffs have plausibly alleged a probability of confusion. Accordingly, Defendant‘s motion to dismiss the trademark infringement claims is denied.
II. Plaintiffs’ Motion to Dismiss the Counterclaims is Granted
A. Declaratory Judgment Claims
Counterclaimants seek a declaratory judgment that the Crony Graphic was fair use and that Mr. Goodman‘s commentary about Mr. Sharp and his father was not defamatory.13 Neither is an appropriate basis for a declaratory judgment.
“The Declaratory Judgment Act . . . vests a district court with discretion
Counterclaimants’ request for a declaration that the Crony Graphic was fair use, Am. Answer at 43-44 ¶¶ 74-83, is entirely duplicative of Defendant‘s affirmative defense of fair use. See, e.g., Arista Recs. LLC, 2008 WL 4974823, at *5 (dismissing counterclaims seeking a declaration of non-infringement that “serve no purpose because they mirror the issues raised in Plaintiffs’ Complaint, constitute no affirmative cause of action, and are duplicative of [Defendant‘s] affirmative defenses“). Counterclaimants’ claim seeking a declaration that Mr. Goodman‘s commentary regarding the Sharps was non-libelous protected speech, Am. Answer at 45 ¶¶ 84-89, is similarly duplicative of Defendant‘s affirmative defense and mirrors Plaintiffs’ libel claim.
Because both requests are improper, the counterclaims for declaratory judgments are dismissed.14 See, e.g., Gorfinkel v. Ralf Vayntrub, Invar Consulting Ltd., No. 11-CV-5802, 2014 WL 4175914, at *6 (E.D.N.Y. Aug. 20, 2014) (holding that “where a declaratory judgment claim is redundant of a primary claim raised by a party to a lawsuit, it is properly dismissed as duplicative“); Interscope Recs. v. Kimmel, No. 307-CV-0108, 2007 WL 1756383, at *5 (N.D.N.Y. June 18, 2007) (stating that when a counterclaim is merely a “mirror image” of the complaint, the counterclaim serves no purpose and may be dismissed).
B. Anti-SLAPP Claim
New York State, like many other states, has enacted legislation designed to combat so-called Strategic Lawsuits Against Public Participation (“SLAPP“). New York‘s law, commonly known as an “anti-SLAPP” law is “aimed at broadening the protection of citizens facing litigation arising from their public petition and participation.” Mable Assets, LLC v. Rachmanov, 192 A.D.3d 998 (2d Dep‘t 2021).
On November 10, 2020, New York amended its existing anti-SLAPP law “to broaden the scope of the law and provide greater protections to defendants.” Sweigert v. Goodman, No. 18-CV-08653, 2021 WL 1578097, at *1 (S.D.N.Y. Apr. 22, 2021) (citing
Plaintiffs argue, inter alia, that
Pursuant to the Erie doctrine, if a Federal Rule of Civil Procedure answers the same question as a state law, the Federal Rule governs in federal court, unless the rule at issue violates the Rules Enabling Act. La Liberte v. Reid, 966 F.3d 79, 87 (2d Cir. 2020); see also Shady Grove Orthopedic Assocs., P.A. v. Allstate Ins. Co., 559 U.S. 393, 398-99 (2010); Hanna v. Plumer, 380 U.S. 460, 463-64 (1965). Circuits around the country have grappled with whether various states’ anti-SLAPP laws apply in federal court.17 The Second Circuit‘s recent decision in Reid all but resolves the question presented in this case. In Reid, the Circuit considered whether the special motion-to-strike provision of California‘s anti-SLAPP statute, which requires outright dismissal unless the plaintiff can “establish[ ] a probability that he or she will prevail on the claim,” could apply in federal court. Reid, 966 F.3d at 87. The Circuit held that the statute could not apply in federal court because the provision‘s “probability of success” standard conflicts with
Applying the Second Circuit‘s reasoning in Reid, the Court concludes that the “substantial basis” standard articulated in New York‘s anti-SLAPP law similarly conflicts with the standards under
In sum, because
C. Abuse of the Digital Millennium Copyright Act (“DMCA“)
The DMCA governs the means by which copyright holders can notify online service providers that their sites are hosting or providing access to allegedly infringing material. Hosseinzadeh v. Klein, 276 F. Supp. 3d 34, 43 (S.D.N.Y. 2017). As is relevant here,
Plaintiffs argue that Counterclaimants have failed to allege any facts to support an inference that the Television
In short, Counterclaimants fail to allege any facts from which the Court can reasonably infer that the Television Academies made a knowing and material misrepresentation as required by the DMCA. Accordingly, Counterclaimants have not stated a claim for abuse of DMCA.
CONCLUSION
For the foregoing reasons, Defendant‘s partial motion to dismiss or in the alternative for judgment on the pleadings is DENIED. Defendant‘s request for an order declaring that Defendant‘s use of the Crony Graphic was de minimis or fair use is also DENIED. Plaintiffs’ motion to dismiss the counterclaims is GRANTED.20 George Sweigert‘s motion to intervene is DENIED.
No later than September 3, 2021, the parties must submit a joint letter on the status of discovery.
The Clerk of Court is respectfully directed to close the open motions at docket entries 11, 24, 46, 84.
SO ORDERED.
Date: July 30, 2021 VALERIE CAPRONI
New York, New York United States District Judge