Plaintiff Itoffee R. Gayle, proceeding pro se, brings this action against Home Box Office, Inc. ("HBO") alleging copyright and trademark infringement. Gayle's claims derive from the brief depiction of graffiti in the background of one scene in an episode of the HBO television series Vinyl. (Docket No. 19 ("Am. Compl."), at ¶ 1). In the scene, a woman is shown walking down a New York City street and passing a dumpster tagged with graffiti stating "art we all" that Gayle claims is his intellectual property. (Id. ¶¶ 1-2). Gayle alleges that HBO depicted the graffiti "without permission, compensation, or attribution" and thus infringed his copyright and trademark rights. (Id. ¶ 1). He contends that HBO's infringement was "calculated & coordinated" and occurred without the company's ever "attempt[ing] to contact [him], hire [him] or pay the licensing fee(s) to [him]." (Id. ¶¶ 2-3). Gayle also maintains that HBO "exploited & capitalized" on the "brand name recognition" of his trademark "art we all" in order to make their television show seem "more authentic to viewers." (Id. ¶ 4). On the basis of these allegations, he brings claims of copyright infringement; unfair competition under the Lanham Act, 15 U.S.C. § 1125(a); and unspecified "unfair competition & trademark infringement under related state laws." (Am. Compl. ¶ 5). He seeks $1,500,000 plus fees. (Id. ¶ 7).
HBO now moves, pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, to dismiss Gayle's claims. When reviewing a motion to dismiss, a court "must accept all allegations in the complaint as true and draw all inferences in the non-moving party's favor." LaFaro v. N.Y. Cardiothoracic Grp., PLLC, 570 F.3d 471, 475 (2d Cir. 2009) (internal quotation marks omitted). To survive such a motion, however, the plaintiff must plead sufficient facts "to state a claim to relief that is plausible on its face." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). A claim is facially plausible "when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Twombly, 550 U.S. at 556); see Twombly, 550 U.S. at 555 (noting that a complaint that offers only "labels and conclusions" or "a formulaic recitation of the elements of a cause of action will not do"). Where, as here, a plaintiff proceeds pro se, his pleadings "must be held to less stringent standards than formal pleadings drafted by lawyers." Erickson v. Pardus, 551 U.S. 89, 94 (2007) (internal quotation marks omitted). "Nonetheless, a pro se litigant must still state a plausible claim for relief. Put another way, the Court's duty to liberally construe a plaintiff's complaint is not the equivalent of a duty to re-write it." Thomas v. N.Y.C. Dep't of Educ., No. 15-CV-8934 (JMF), 2016 WL 4544066, at *2 (S.D.N.Y. Aug. 31, 2016) (internal quotation marks, citation, and alterations omitted).
To prevail on his claim of copyright infringement, Gayle "must prove that (1) unauthorized copying of the copyrighted work occurred, and (2) the infringing work is substantially similar." Gottlieb Dev. LLC v. Paramount Pictures Corp., 590 F. Supp. 2d 625, 631 (S.D.N.Y. 2008) (citing Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc.,338 F.3d 127, 131 (2d Cir. 2003)). Significantly, demonstrating substantial similarity requires showing both that work copied was "protected expression" and "that the amount that was copied is more than de minimis." Tufenkian, 338 F.3d at 131 (internal quotation marks omitted) . In the copyright arena, de minimis can "mean[] what it means in most legal contexts: a technical violation of a right so trivial that the law will not impose legal consequences," or it can mean "that copying has occurred to such a trivial extent as to fall below the quantitative threshold of substantial similarity, which is always a required element of actionable copying." Ringgold v. Black Entm't Television, Inc., 126 F.3d 70, 74 (2d Cir. 1997). In analyzing similarity, courts assess "the extent to which the copyrighted work is copied in the allegedly infringing work," with a work's "observability" being paramount. Gottlieb, 590 F. Supp. 2d at 632. Observability turns on "the length of time the copyrighted work is observable as well as factors such as focus, lighting, camera angles, and prominence." Id. (citing Sandoval v. New Line Cinema Corp., 147 F.3d 215, 217 (2d Cir. 1998); Ringgold, 126 F.3d at 75)). The assessment is to be made from the viewpoint of an "average lay observer." Sandoval, 147 F.3d at 218.
To succeed in a Lanham Act suit for unfair competition or trademark infringement, "a plaintiff has two obstacles to overcome: the plaintiff must prove that its mark is entitled to protection and, even more important, that the defendant's use of its own mark will likely cause confusion with plaintiff's mark." Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 381 (2d Cir. 2005) (quoting Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1074 (2d Cir. 1993)); see 15 U.S.C. §§ 1114, 1125(a)(1)(A); see also Fed. Express Corp. v. Fed. Espresso, Inc., 201 F.3d 168, 174 (2d Cir. 2000). To prevail in such an action, a plaintiff must show "'a probability of confusion, not a mere possibility,' affecting 'numerous ordinary prudent purchasers.'" Star Indus., Inc., 412 F.3d at 383 (quoting Gruner + Jahr, 991 F.2d at 1077)."Likelihood of confusion includes confusion of any kind, including confusion as to source, sponsorship, affiliation, connection, or identification." Id. (quoting Guinness United Distillers & Vintners B.V. v. Anheuser-Bush, Inc., 64 U.S.P.Q.2d 1039, 1041 (S.D.N.Y. 2002)). But to state a "cognizable claim in trademark cases, the plaintiff must raise 'a serious question' as to the likelihood of confusion." Gottlieb, 590 F. Supp. 2d at 634 (quoting Am. Cyanamid v. Campagna per le Farmacie in Italia, S.P.A., 847 F.2d 53, 55 (2d Cir. 1988)). Thus, where "it would be difficult for even a keen observer to pick out" the allegedly infringed mark, a plaintiff cannot plausibly establish that "ordinarily prudent consumers" would be confused "as to the sponsorship or affiliation" and his trademark claims would fall short. Id. at 634-35.
Then-District Judge Chin's decision in Gottlieb provides a helpful illustration of how these principles apply to claims of the sort at issue here. In that case, the plaintiff claimed that the defendant had infringed his copyright and trademark in a pinball machine by depicting it in the movie What Women Want starring Mel Gibson. Judge Chin dismissed the copyright claim on the ground that the defendant's use of the pinball machine "was de minimis as a matter of law." 590 F. Supp. 2d at 630-32. He explained:
The scene in question lasts only three-and-a-half minutes, and the [machine] appears in the scene sporadically, for no more than a few seconds at a time. More importantly, the pinball machine is always in the background; it is never seen in the foreground. It never appears by itself or in a close-up. It is never mentioned and plays no role in the plot. It is almost always partially obscured (by Gibson and pieces of furniture), and is fully visible for only a few seconds during the entire scene. The Designs (on the backglass and playfield of the pinball machine) are never fully visible and are either out of focus or obscured. Indeed, an average observer would not recognize the Designs as anything other than generic designs in a pinball machine.
Id. at 632-33. For similar reasons, Judge Chin found the plaintiff's trademark claim wanting as well. "On a viewing of the Film," he reasoned, "it would be difficult for even a keen observer to pick out Gottlieb's trademark, as it appears in the background of the scene. The trademark isvisible at various places on the pinball machine, but it occupies only a minute fraction [of] the frame for three segments lasting approximately three seconds each." Id. at 634-35. "In these circumstances," he concluded, "Gottlieb's assertion that the appearance of its trademark in the Film would confuse ordinarily prudent consumers as to the sponsorship or affiliation of its pinball machines is simply not plausible." Id. at 635.
If Gottlieb's claims were implausible, Gayle's border on frivolous. Whereas Gottlieb's claims were based on three-and-a-half minutes of film, Gayle's claims are premised on a fleeting shot of barely visible graffiti painted on what appears to be a dumpster in the background of a single scene.1 The overall scene is brief, and the graffiti at issue appears on screen for no more than two to three seconds. (See Video at 46:21-46:24). Moreover, the graffiti is never pictured "by itself or in a close-up," and it plays absolutely no "role in the plot." Gottlieb, 590 F. Supp. 2d at 632. Instead, the camera is focused on the actress in the foreground, who is well-lit and depicted in an eye-catching bright-red dress. By contrast, the graffiti is, at best, shown in the background at an oblique angle and in low, uneven light such that it is "never fully visible," let alone legible. Id. In fact, the graffiti is hard enough to notice when the video is paused at the critical moment. (See Am. Compl. 8). It is next to impossible to notice when viewing the episode in real time. In short, the graffiti "was filmed in such a manner and appears so fleetingly that . . . there is no plausible claim for copyright infringement here." Gottlieb, 590 F. Supp. 2d at 634; see also Sandoval, 147 F.3d at 218 ("Because [the plaintiff's] photographs appear fleetingly and are obscured, severely out of focus, and virtually unidentifiable, we find the use of thosephotographs to be de minimis.")...
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