OPINION AND ORDER
Plaintiff Michael Ward, doing business as Brainteaser Publications (“Plaintiff’), brings this action against Barnes & Noble, Inc., Sterling Publishing Co., Inc. (“Sterling”), Francis Heaney, and Patrick Blin-dauer (collectively, “Defendants”), alleging copyright infringement in violation of Title 17, United States Code, Sections 101 et seq.; trade dress infringement in violation of the Lanham Act, Title 15, United States Code, Section 1125(a); and common law claims of unfair competition and unjust enrichment. The parties’ dispute concerns their respective versions of a well-known game that allegedly dates back to the reign of Queen Victoria — namely, Hangman. Defendants now move for summary judgment. For the reasons stated below, Defendants’ motion is GRANTED in part and DENIED in part.
BACKGROUND
Barnes & Noble, Inc. is the largest book retailer in the United States. (Defs.’ Statement Undisputed Material Facts Pursuant Local Civ. R. 56.1 (Docket No. 22) (“Defs.’ Rule 56.1 Statement”) ¶ 1). Ster
Plaintiff, doing business as Brainteaser Publications, is a citizen of New Zealand. (Defs.’ Rule 56.1 Statement ¶ 5). In 1994, Plaintiff filed a provisional patent application in New Zealand’s patent office, seeking protection for an invention he titled “Scratch Hangman.” (Id. ¶ 6). “Scratch Hangman,” Plaintiff asserted in his provisional patent application, was a “novel system,” involving a variant on the game Hangman, that would ultimately “pro-ducen a book entitled ‘Scratch Hangman.’ ” (Ederer Deck, Ex. 2, at 3). In the traditional version of Hangman — which, according to Plaintiff, originated during Queen Victoria’s reign (Id., Ex. 4 (Depo. Michael Ward (“Ward* Depo.”)) 74:17-20) — one player thinks of a word or phrase for a second player to guess, and draws out dashes corresponding to each letter in the phrase. The second player proceeds to call out letters that he or she suspects are in the word or phrase; if the player guesses correctly, the first player fills in the corresponding letters, but if the player guesses a letter that does not appear in the phrase, the first player fills in one body part of a stick figure hanging from a gallows drawn to the side. The goal of the game is for the second player to complete the phrase before the first player draws the entire stick figure and “hangs” the man. (See generally id., Ex. 34).
The game described and diagrammed in Plaintiffs provisional patent application proceeds from the same idea, but is made for one player instead of two. That is, instead of calling out letters for another player to fill in, the player scratches off circles corresponding to each letter of the alphabet, which reveal either a number indicating where in the phrase a letter is located, or a cross indicating that the player guessed incorrectly (and must fill in a body part of a dotted “hangman” to the side). (Defs.’ Rule 56.1 Statement ¶ 6; Ederer Deck, Ex. 2; Ward Depo. 74:14-23). Plaintiff was issued a provisional patent, which lasted for twelve months. (Ward Depo. 81:20-23, 86:4-17). Upon the advice of an attorney, however, Plaintiff decided not to further pursue the patent application, and hence was never issued a full patent. (Defs.’ Rule 56.1 Statement ¶7; Ward Depo. 86:18-87:7). Shortly thereafter, Plaintiff published a “Scratch Hangman” series with New Zealand distributor Gordon and Gotch; the series sold well throughout New Zealand, particularly in supermarket chains, and within four years became a “mass market publication.” (Deck Barry Janay Opp’n Defs.’ Mot. Summ. J. (Docket No. 32) (“Janay Deck”), Ex. A). In 2000, Plaintiff published a book in New Zealand titled “Scratch Hangman Puzzle Book” (the “New Zealand Book”), with game boards resembling the diagram presented in Plaintiffs provisional patent application. (Defs.’ Rule 56.1 Statement ¶¶ 6, 8-9; Ederer Deck, Ex. 3).
In the summer of 2004, Plaintiff contacted Sterling about bringing the “Scratch Hangman” series to the United States. (Defs.’ Rule 56.1 Statement ¶ 13; Ederer
On February • 16, 2005, Sterling sent Plaintiff preliminary versions of the first four books in what was now named the “Scratch and Solve” series, including the instructions and game board. - (Defs.’ Rule 56.1 Statement ¶ 24; Ederer Decl. Ex. 12). When Plaintiff responded, he noted that “the whole concept of the game has been changed; now players only have 5 chances before being hung, instead of the original 10.” (Defs.’ Rule 56.1 Statement ¶ 25; Ederer Deck, Ex. 13 at 3). After some additional back-and-forth (Ederer Decl. Ex. 13), Sterling published Scratch & Solve Hangman # 1 on September 1, 2005. (Defs.’ Rule 56.1 Statement ¶ 26; Ederer Decl. Ex. 14). In the years thereafter, Plaintiff and Sterling entered into several extensions of the 2004 Agreement, all providing for the publication of additional books in the “Scratch and Solve” series. (Defs.’ Rule 56.1 Statement ¶ 28; Ederer Decl. Ex. 16). In 2012 and 2013, Plaintiff and Sterling entered into two new publishing agreements (the “2012 Agreement” and the “2013 Agreement”), each covering two new books to be published by Sterling. (Defs.’ Rule 56.1 Statement ¶¶ 30, 33; Ed-erer Deck, Exs. 17-18). Both agreements described the forthcoming books as either a specified number of “new and original puzzle words to fill 96 pages” (Ederer Decl., Ex. 17 at 1, ¶ 1(b); PL’s Rule 56.1 Counterstatement ¶ 31) or “sufficient list of words and phrases to fill 96 pages” (Ederer Decl., Ex. 18 at 1, ¶ 1(b); Pl.’s Rule 56.1 Counterstatement. ¶ 34). During that time, Sterling obtained copyright registrations in Plaintiffs name for the books covered by the various Publishing Agreements and extensions.
Before entering into the 2012 Agreement, Plaintiff learned that Andrew McMeel Publishing (“AMP”) had released a series of books titled “Pocket Posh Hangman.” (Janay Decl., Ex. R; see Ed-erer Decl., Ex. 17). In an e-mail to Sterling on September 13, 2011, Plaintiff alleged that twenty'' percent of the solutions in AMP’s series had previously appeared in the “Scratch and Solve” series. (Janay Decl., Ex. R at 2). On October 26, 2012, Plaintiff — but not Sterling — filed a lawsuit against AMP, alleging copyright infringement, .trade dress infringement, and unfair competition, which was assigned to the Honorable Paul A. Crotty, a United States District Judge in this District. See Ward v. Andrews McMeel Publ’g, LLC, No. 12-CY-7987 (S.D.N.Y.). AMP filed a motion
In late 2011 and early 2012, Plaintiff learned that Sterling had published additional books in the “Scratch and Solve” series that did not identify him as an author: one, titled Trivia Hangman, was authored by Heaney and published in October 2010; the other, titled Hollywood Hangman, was authored by Blindauer and published in November 2011. (Defs.’ Rule 56.1 Statement ¶¶ 37, 39, 42, 44; Janay Decl., Ex. Q). Additionally, in February 2013, Sterling published three more books in the “Scratch and Solve” series under the pseudonym “Jack Ketch”: Science Hangman, Geography Hangman, and Spelling Bee Hangman. (Defs.’ Rule 56.1 Statement ¶ 46; Ederer Deck, Exs. 25-27). In April 2013, Plaintiff notified Sterling that he believed those books (collectively, the “Challenged Books”) infringed his copyrights (Janay Decl., Ex. N at 3), but he indicated that he nevertheless wished to continue his business relationship with Sterling. (Id., Ex. O at 1). Sterling then sent Plaintiff new publishing agreements, intended to cover the publication of two new “Scratch and Solve” books — Scratch and Solve Prime Time Hangman and Scratch and Solve Underwater Hangman. (Id., Ex. P at 3; id., Ex. I). Plaintiff refused to sign the publishing agreements because they contained provisions that Plaintiff deemed “unacceptable,” including a release form accompanying the agreements that would have barred Plaintiff from bringing suit against Sterling for copyright infringement or related claims. (Id., Ex. P at 2; id., Ex. I at 1).. On November 3, 2013, Plaintiff filed this lawsuit, claiming that he had “c[o]me up with the concept and created the unique style of the ‘Scratch-Hangman series of books’ ” (Compl. ¶ 12) and that the publication of additional “Scratch and Solve” books under different authors’ names infringed Plaintiffs copyrights and trade dress. (Id. ¶¶ 23-40). As noted, Plaintiff also alleges claims of unfair competition and unjust enrichment. (Compl. ¶¶ 41 — 53).
THE SUMMARY JUDGMENT STANDARD
Summary judgment is appropriate where the admissible evidence and the pleadings demonstrate “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); see also Johnson v. Killian,
In ruling on a motion for summary judgment, all evidence must be viewed “in the light most favorable to the non-moving party,” Overton v. N.Y. State Div. of Military & Naval Affairs,
DISCUSSION
As noted, Plaintiff brings claims for copyright infringement, trade dress infringement, unfair competition and unjust enrichment. The Court addresses each claim in turn.
A. Copyright Infringement Claims
The Copyright Act gives the owner of a copyright certain “exclusive rights,” 17 U.S.C. § 106, to protect “original works of authorship,” 17 U.S.C. § 102(a). Significantly, however, not all elements of a work are eligible for copyright protection. For example, a copyright “does not protect an idea, but only the expression of an idea.” Kregos v. Associated Press,
“On occasion,” however, the Court of Appeals has “noted that when faced with works that have both protectible and un-protectible elements,” the analysis “must be more discerning,” and that a court “must attempt to extract the unprotectible elements from ... consideration and ask whether the protectible elements, standing alone, are substantially similar.” Id. (internal quotation marks and citations omitted); accord DiTocco v. Riordan,
1. Plaintiffs Claim That Defendants Infringed His New Zealand Copyright
With the above standards in mind, the Court turns first to Plaintiffs claim that Defendants infringed his copyright in the New Zealand Book. (Pl.’s Mem. Law Opp’n Defs.’ Mot. Summ. J. (Docket No. 34) (“Pl.’s Mem.”) 4-9). The parties dispute whether Plaintiff even has a valid New Zealand copyright (compare Defs.’ Mem. Law Supp. Mot. Summ. J. (Docket No. 20) (“Defs.’ Mem.”) 9, with PL’s Mem. 6), but the Court need not address that question because, even if he does, his claim fails as a matter of law because he cannot show that “a substantial similarity exists between the defendant’s work and the pro-tectible elements of plaintiffs.” Peter F. Gaito Architecture,
The artwork for Plaintiffs hangman and gallows, meanwhile, arguably flows directly from the unprotectable idea with which the figures are virtually synonymous: a game that, Plaintiff himself asserts, has existed since “Queen Victoria’s reign.” (Ward Depo. at 74:17-20). “The rendering of such an idea is not in itself protectable; only the particularized expression of that idea, for example, the particular form created by the decision to accentuate certain [parts of a figure], can be protected.” Mattel, Inc. v. Azrak-Hamway Int’l, Inc.,
In any event, even if Plaintiffs representation of the hangman and gallows were a sufficiently particularized expression of the underlying concept — and possessed “the minimal degree of creativity” required to confer copyright protection, Feist,
Finally, in evaluating substantial similarity, the Court is mindful that it must not “lose sight of the forest for the trees” by “factoring out similarities based on non-copyrightable elements.” Softel,
2. Plaintiff’s Claim That Defendants Infringed His U.S. Copyrights
The Court turns next to Plaintiffs claim that Defendants infringed the U.S. copyrights Sterling registered in his name. (PL’s Mem. 9-15; Ederer Decl., Ex. 20). As a threshold matter, Defendants argue that the Court should not even consider the claim because, in his deposition, Plaintiff testified that his cause of action for copyright infringement was based only on the copyright in his New Zealand book, not on any registered U.S. copyrights. (Ward Depo. at 11:17-25; 16:25-17:20). Defendants argue that Plaintiff should not be permitted to revive the claim in opposing summary judgment, lest the “process become[] a sham.” (Defs.’ Reply Mem. Law Further Supp. Mot. Summ. J. (Docket No. 35) (“Defs.’ Reply Mem.”) 3). In making that argument, Defendants rely heavily on Carter v. Ford Motor Co.,
As the Carter court made clear, however, “the question [is] whether [a defendant] had adequate notice of the charges it was defending,” an inquiry that “necessarily proceeds on a case-by-case basis.” Id. at 568. Here, Defendants themselves admit that before Plaintiffs deposition on March 20, 2014 — more than three months after the Court approved the parties’ case management plan setting the scope of discovery and related deadlines (Docket No. 11) — “Defendants had assumed ... that Plaintiff was asserting an ownership inter
Turning to the merits, Plaintiff first claims that, because he “supplied the original template and reviewed and gave his approval of all elements in the [‘Scratch and Solve’ books] prior to them being published” (Pl.’s Mem. 13), the copyrights Sterling registered on his behalf extend to the “Scratch and Solve” interior game boards and artwork. (Id. at 10-14). That argument, however, is belied by the language of the copyright registrations themselves. All of the copyright registrations submitted in this case that include an “authorship” section list only “text” or “entire text” as the extent of Plaintiffs authorship of the Scratch and Solve books in question (Ederer Deck, Ex. 20); because “[i]n general, the nature of authorship defines the scope of the registration,” that section “represents an important copyright fact.” Axelrod & Cherveny Architects, P.C. v. Winmar Homes, No. 05-CV-711 (ENV)(ETB),
In the alternative, Plaintiff appears to argue that he is entitled to copyright protection for the “Scratch and Solve” artwork because Sterling had published the “Scratch and Solve” series under license from Plaintiff, rendering the series subject to his prior copyright in the New Zealand Book. (Ederer Deck, Ex. 21; Pl.’s Mem. 10-12; see also Pl.’s Mem. 22). That argument, however, is belied by the plain language of the 2004 Publishing Agreement, which (like the later agreements) does not contemplate Plaintiff retaining any vested copyrights in the series other than the copyrights to be obtained by Sterling in his name. Indeed, Plaintiff expressly “grant[ed] and assigned] to [Sterling], during the full term of copyright and any renewals thereof, the exclusive rights to manufacture [and] publish” the series, “together with all ancillary and additional rights pertaining to the Works. ” (Ederer Decl., Ex. 11 at 1 ¶ 1 (emphasis added)). Moreover, by its terms, the 2004 Publishing Agreement (like the subsequent agree
Although Plaintiff has no infringement claim with respect to the “Scratch and Solve” illustrations, his claim based on the “Scratch and Solve” instructions cannot be dismissed. That is, while the plain language of Plaintiffs U.S. copyright registrations does not protect the “Scratch and Solve” illustrations, it does protect the “Scratch and Solve” instructions insofar as the instructions constitute the “text” of the books. (Ederer Deck, Ex. 20). And while “the ‘idea’ upon which a game is based cannot be copyrighted ... ‘the wording of instructions for the playing of a game is itself copyrightable so as to prevent a literal or closely paraphrased copying.’ ” Milligan v. Worldwide Tupperware, Inc.,
B. The Trade Dress Infringement Claim
Plaintiff next brings a claim for trade dress infringement under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). (Compl. ¶¶ 35-40). To succeed on such a claim, “a plaintiff must prove (1) that the mark or dress is distinctive as to the source of the good or service at issue, and (2) that there is the likelihood of confusion between the plaintiffs good or service and that of the defendant.” ITC Ltd. v. Punchgini, Inc.,
To that end, “a product’s design is distinctive, and therefore protecti-ble, only upon a showing of secondary meaning” among consumers. Wal-Mart Stores, Inc. v. Samara Bros.,
In this case, Plaintiffs claim fails as a matter of law because he adduces no evidence that his trade dress has acquired secondary meaning — the only way of establishing distinctiveness in a trade dress claim based on product design. See Wal-Mart,
C. State-Law Claims
Finally, Plaintiff claims that Defendants’ publication of the Challenged Books “amount[s] to unfair competition and unjust enrichment,” in violation of New York law. (Pl.’s Mem. 20). Defendants contend that both claims are preempted by the Copyright Act. (Defs.’ Mem. 24-25). The Copyright Act “exclusively governs a claim when: (1) the particular work to which the claim is being applied falls within the type of works protected by the Copyright Act under 17 U.S.C. §§ 102 and 103, and (2) the claim seeks to vindicate legal or equitable rights that are equivalent to one of the bundle of exclusive rights already protected by copyright law under 17 U.S.C. § 106.” Briarpatch Ltd., L.P v. Phoenix Pictures, Inc.,
A state-law claim falls within the “general scope” of the Copyright Act only if the state-created right “may be abridged by an act which, in and of itself, would infringe one of the exclusive rights provided by federal copyright law.” Id. (internal quotation marks omitted). To do so, the claim must involve “acts of reproduction, performance, distribution or display.” Barclays Capital Inc. v. Theflyonthewall.com, Inc.,
Applying those principles here, Plaintiffs unjust enrichment claim is plainly preempted by the Copyright Act, as it is based wholly on Defendants’ “unauthorized” copying “of the ‘Scratch-Hangman’ series or confusingly similar works, the rights of which belong to the Plaintiff,” (Compl. ¶ 50) — a claim that falls within the ambit of rights already protected by the Copyright Act. See Briarpatch Ltd.,
Nevertheless, no reasonable jury could find for Plaintiff on his unfair competition claim for other reasons. “The essence of unfair competition under New York common law is the bad faith misappropriation of the labors and expenditures of another, likely to cause confusion or to deceive purchasers as to the origin of the goods.” Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc.,
CONCLUSION
For the foregoing reasons, Defendants’ summary judgment motion is GRANTED in part and DENIED in part. Specifical
Within thirty days of this Opinion and Order, the parties shall submit to the Court for its approval a Joint Pretrial Order prepared in accordance with the Court’s Individual Rules and Practices and Fed.R.Civ.P. 26(a)(3). The parties shall also follow Paragraph 5 of the Court’s Individual Rules and Practices, which identifies submissions that must be made at or before the time of the Joint Pretrial Order, including any motions in limine.
If this action is to be tried before a jury, joint requests to charge, joint proposed verdict forms, and joint proposed voir dire questions shall be filed on or before the Joint Pretrial Order due date in accordance with the Court’s Individual Rules and Practices. Jury instructions may not be submitted after the Joint Pretrial Order due date, unless they meet the standard of Fed.R.Civ.P. 51(a)(2)(A). If this action is to be tried to the Court, proposed findings of fact and conclusions of law shall be filed on or before the Joint Pretrial Order due date in accordance with the Court’s Individual Rules and Practices. Unless the Court orders otherwise for good cause shown, the parties shall be ready for trial two weeks after the Joint Pretrial Order is filed.
Finally, if the parties are interested in a referral to Magistrate Judge Maas for settlement purposes, they shall so advise the Court by joint letter as soon as possible.
The Clerk of Court is directed to terminate Docket No. 19.
SO ORDERED.
Notes
. Plaintiff's claim arguably fails for another reason: He did not articulate the specific elements of his trade dress until his opposition to summary judgment. (Pl.’s Mem. 17 (describing "many unique characteristics” of the New Zealand Book, features that were then extended to the "Scratch & Solve” series). He did not do so, for example, in the Complaint, merely stating that his "trade dress is distinctive and unique in the industry.” (Compl. ¶ 36). Nor did he do so in his deposition, indicating that his trade dress consisted of the "format ... of the scratch style Hangman game” (Ward Depo., at 158:5— 11), "the name Scratch Hangman” {id. at 159:7-11), and the "look and feel of the whole book” {id. at 166:11-16). In fact, up until his opposition to the present motion, the most specific description of his trade dress that Plaintiff had given was, in a response to Defendants’ interrogatory, "the characteristics of the visual appearance of the works, including but not limited to the design, shape, packaging, and product configuration” and "each and every design element of the works and the combination thereof that serves as a source identifier for the works.” (Ederer Deck, Ex. 7 at 5). Some courts have refused to consider trade dress elements that were not articulated, as here, until the summary judgment stage). See, e.g., Hammerton, Inc. v. Heisterman, No. 06-CV-00806 (TS),