Fischer v. Forrest

Filing 45

OPINION& ORDER #105140: re (51 in 1:14-cv-01307-PAE) MOTION to Dismiss Pursuant to Rule 12(b)(6). filed by Stephen T. Forrest, Jr., Stephen T Forrest, Sandra F. Forrest, (45 in 1:14-cv-01307-PAE) MOTION to Dismiss Complaint in 14cv1307 filed on February 27, 2014 pursuant to FRCP 12(b)(6). filed by Stephen T Forrest, (30 in 1:14-cv-01304-PAE) MOTION to Dismiss Amended Complaint in 14cv1304 filed on May 27, 2014 pursuant to FRCP 12(b)(6). filed by Stephen T. Forrest, Sand ra F. Forrest. For the foregoing reasons, Forrest's motion to dismiss is denied in its entirety. An order regarding next steps in this litigation will issue shortly. The Clerk of Court is directed to terminate the motions pending at 14 Civ. 1304, Dkt. 30; 14 Civ. 1307, Dkt. 45; and 14 Civ. 1307, Dkt. 51. (Signed by Judge Paul A. Engelmayer on 1/13/2015) (djc) Modified on 1/14/2015 (ca).

USNC SDNY

DOCUI\ÍENT

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

EI-ECT'RONIC¡\LLY

X

T

ILED

DOC #:

DATtr FII,ED: I/I3

I2OIâ,

JAMES H. FISCHER,
14 Civ. 1304 (PAE)

Plaintiff,
14 Civ. 1307 (PAE)

-vOPINION & ORDER
STEPHEN T. FORREST and SANDRA F. FORREST,
Defendants.

X
PAUL A. ENGELMAYER, District Judge:
Plaintiff James H. Fischer ("Fischer"), proceedingpro se, filed these two nearly identical
ooForrest"). Fischer, the
actions against Stephen T. Fonest and Sandra F. Forrest (collectively,

creator of a popular honey harvesting product called Fischer's Bee-Quick, alleges that Forrest
used his proprietary text, images, and names to sell a knock-off product, thereby violating the

federal Copyright Act,17 U.S.C. $ 101 er seq.;the Digital Millennium Copyright Act

("DMCA"),

17 U.S.C. $ 1201 et seq.; and the Lanham

also brings claims under New York state

Act,

15 U.S,C. $ 1051 et

law-for violation of his right

seq' Fischer

of publicity, unfair

competition, unfair business practices, breach of contract, and unjust enrichment. Forrest now
moves to dismiss both complaints in their entirety. For the following reasons, the Court denies

Forrest's motion.

-

I.

Background

A.

Factual Backgroundl

In 1999, Fischer invented

and began producingooa new honey harvesting aid for

beekeepers" that he named Fischer's Bee-Quick. Am. Compl.

Il24;

Am, Compl. II T 35.

Fischer promoted his product as "unique" in that it is "a food-safe, non-toxic, not foul-smelling,
and effective substance that beekeepers can trust to use with their honey and their bees." Am.

Compl.

Il24;Am.

Compl. II fl 35; see also, e.g,, Am. Compl. I Ex. 5 (Bee-Quick brochure);

Am. Compl. II Ex. 5 (same). Fischer's Bee-Quick "quickly became one of the most in-demand
products in beekeeping." Am. Compl.

I\26;

Am. Compl. II

I40.

On December 11, 2001,

Fischer formally registered the "Bee-Quick" mark with the U.S. Patent and Trademark Office.

Am. Compl. I '11 28, Ex.2 (trademark registration certificate).
In2002, Fischer authorized Brushy Mountain Bee Farm-a mail-order business owned
and operated by Stephen and Sandra

Forest-to

sell Bee-Quick. Am. Compl. I flfl 8-10, 30;

Am. Compl. II,I.[I 7-9,42. In connection with this agreement, Fischer authorized Brushy
Mountain to use the trademarked name of his product, images he had created, and text he had
written to sell Bee-Quick through Brushy Mountain's website and print catalogues' Am. Compl.

I TI 31,46; Am. Compl. II lTI 21,43,63-67.
On December 10, 2010, Brushy Mountain unilaterally terminated the parties' business

relationship. Am. Compl.

Il32;

Am. Compl. II

ï 23. Specifically,

a

Brushy Mountain

employee sent Fischer an email that stated:

I These facts are drawn from the Amended Complaints filed in these two cases and the exhibits
attached thereto. See 14 Civ. 1304, Dkt. 23 ("4m. Compl. I"); 14 Civ. 1307, Dkt. 50 ("4m.
Compl. II"). For the purpose of resolving the motion to dismiss, the Court assumes all well-pled
facts to be true and draws all reasonable inferences in favor of the plaintiff. See Koch v.
Christie's Int'l PLC,699 F.3d 141, 145 (2dCit.2012),
2

am the messenger informing you (per Steve fForrest] & Shane
fGebauer]) that we are retufning the BEE QUICK . . . . I was not informed that we
were discontinuing the Bee-Quick in our 201 | catalog, nor previously requested to
cancel my order with you. Please provide the address you need to have the BeeQuick sent to.
Regretfully,

I

Am. Compl. I Ex. 3(b); Am. Compl. II Ex. 3(b).
Soon after, on February 7,2011, Fischer registered the text and images displayed on his

website with the U.S. Copyright Office. Am. Compl. I'1T1[39,

l2l,Ex.4

(copyright registration

certificate); Am. Compl. II IT 37, 61, Ex. 4 (same). He also renewed his trademark registration
for the Bee-Quick mark. Am. Compl.In29, Ex. 2 (trademark registration certificate).

At some point in early 2011, Brushy Mountain began selling a'oknock-off product" called
Natural Honey Harvester. Am. Compl. I T 53; Am. Compl. II

lT

24, Inconnection with

sales

of

that product, Brushy Mountain used text and images that Fischer had created to promote Bee-

Quick. Am. Compl. I TIT 53-58; Am. Compl. II llT 73-77. For example, until 2010, Brushy
Mountain had, with Fischer's authorization, used the following text to describe Bee-Quick:
This 100% natural, non-toxic blend of oils and herb extracts works just like Bee Go
and it smells good! Fischer's Bee Quick is a safe, gentle, and pleasant way to
harvest your honey. Are you tired of your spouse making you sleep in the garcge
after using Bee Go? Are you tired of using ahazardous product on the bees you
love? Then this is the product for you!

Am. Compl. I Ex. 7 (2010 website); Am. Compl. II Ex. 20 (2005,2006,2009, and 2010
catalogues). This description was excerpted from a longer text that originally appeared on
Fischer's website.2 Am. Compl. n

I67.

Starting in 2011, Brushy Mountain used much of this

text, verbatim, to describe Natural Honey Harvester. Both the website and print catalogue stated:
For years we have promoted the use of a natural product to harvest honey but an
unreliable supply of such a product has forced us to come out with our own. This
l00o natural, non-toxic btend of oils and herb extracts works just like Bee Go
and it smells good! Natural Honey Harvester is a safe, gentle, and pleasant way

2

Fischer's website is http://bee-quick.com.
J

to harvest your honey. Are you tired of your spouse making you sleep in the
garage after using Bee Go? Are you tired of usingahazardous product on the
bees you love? Then this is the product for you!
Am. Compl. I Ex.

S

(2011 website) (emphasis added); Am. Compl. II Ex. 20 (2011 through 2014

catalogues) (emphasis added). Brushy Mountain's actions led other dealers of beekeeping
products to use identical text to describe Natural Honey Harvester on their websites. See Am.

Compl.

Il7z;Am.

Compl. II

fil 32,49-57,82-89,F;x.21(The

Honey Hole website),F;x.22

(C&T Bee Supply website).
Brushy Mountain also used a photograph of a Bee-Quick bottle on a webpage on which
consumers could purchase Natural Honey Harvester. Am. Compl. I Ex. 11, Ex.

image, the words

ooFischer's Bee-Quick" are legible, and distinctive elements of the Bee-Quick

trade dress-including the bottle shape, cartoon bee mascot, and red

Compl.

l\

12' In the

text-are visible. Am.

144. Both the text quoted above and this image were stripped of the copyright

management information ("CMI") that had previously accompanied them. Am. Compl. I T'1T90-

92; Am. Compl. II TT 119-2L
Brushy Mountain also retained the name "Fischer's Bee-Quick" in the URL for

a

Natural

Honey Harvester product page. Am. Compl. IEx.12, Ex. 13. As a result, consumers who
searched for Fischer's Bee-Quick through internet search engines may have been misdirected to
a webpage selling

Natural Honey Harvester. Am. Compl. I ll 136.

Fischer never authorized Brushy Mountain's use of his copyrighted works and protected
mark to sell a competing, knock-off product. Am. Compl' I

78. Accordingly, on April 5,2011, Fischer sent Forrest

I'1T

33,59; Am. Compl. II tTf 25,71,

a cease-and-desist letter, which notified

Forrest of Fischer's registered copyright and trademark and demanded that Forrest terminate use

of the name Bee-Quick, Fischer's copyrighted works, and the trade secrets disclosed in the

4

course of the parties' business relationship. Am. Compl. I1J70, Ex. 15; Am. Compl. II'u 33, Ex.

15. In response, Brushy Mountain's General Manager Shane Gebauer sent Fischer a letter
asserting that "[a]fter careful review by our attorney, there does not seem to [be] grounds for

your request." Am. Compl. I Ex. 16; Am, Compl. II Ex. 16. As recently as May 2l,2014,the
Brushy Mountain website continued to feature Fischer's proprietary text, images, and mark on a
webpage selling Natural Honey Harvester. Am' Compl. I TT 133,I44,151, 158.

B.

Procedural History

On February 27,2014, Fischer filed two actions against Stephen Forrest. 14 Civ. 1304,

Dkt.

1 ("Compl.

I");

14 Civ. 1307,

Dkt.2 ("Compl.

II"). On April 1 I,2074, Forrest moved to

dismiss the first complaint. 14 Civ. 1304, Dkt. 8. In response, on May 27,2014, Fischer filed an

Amended Complaint against both Stephen and Sandra Forrest. Id. Dkt,23 ("Am. Compl' I").

Initially, Forest did not appear in the second action or answer the second complaint' In
early April 2014, Fischer obtained a clerk's certificate of default and moved for default judgment

in the second action. 14 Civ. 1307, Dkt. 5-10. Pursuant to orders issued by the Court, Forrest
appeared on

April 17,2014, id. Dkt. 12, andresponded to Fischer's motion on April 25,2014,

Dl<t.Ig-2\

On June 16,2074,after full briefing, the Court denied Fischer's motion for default

id.

judgment and granted Forrest's motion to vacate the entry of default. Id. Dl<t.35. The Court
held that the default was not willful, that denying the motion for default judgment would not

prejudice Fischer, and that Forrest had potentially meritorious defenses. See id.
On June 19,2014, the Court informed the parties that it was inclined to consolidate the

two actions and directed the parties to notify the Court if they objected to consolidation. Id. Dkt.

37. Forrest did not object. Id. Dkt.40. Fischer, by contrast, argued that consolidation would
prejudice him by preventing him from recovering statutory damages for both direct and

5

secondary infringement. Id. Dkt.

41. The Court therefore agreed to maintain two separate

actions, at least for the time being, but it set a unified schedule for briefing Forrest's anticipated

motion to dismiss. Id. Dl<t.44.
On July 9,2074, Forrest moved to dismiss the second complaint. Id.

Dkt.45. In

response, on August 3,2074, Fischer filed an Amended Complaint against both Stephen and
Sandra Forrest. Id.

Dkt.50 ("4m. Compl.

II"). On August 25,2074,the two defendants jointly

filed a motion to dismiss both Amended Complaints, 14 Civ. 1304, Dkt. 30; 14 Civ. 1307, Dkt.
51, along with a supporting memorandum of law, 14 Civ. 1304, Dkt. 32; 14 Civ. 1307, Dkt. 53

("Def. Br."). On September 23,2014, Fischer submitted his opposition. 14 Civ. 1304, Dkt. 34,
35; 14 Civ. 1307, Dkt. 54, 55 ("P1.

Br."). On October 6,2014, defendants filed their reply.

14

Civ. 1304, Dkt. 36,37;14 Civ. 1307, Dkt. 56,57 ("Def. Reply"). On October 8,2014, Fischer
sought leave to file a sur-reply and attached a proposed brief. 14 Civ. 1304, Dkt. 38, 39;14 Civ.
1307, Dkt. 58, 59 ("P1. Sur-Reply"). On October 15,2014, the Court agreed to consider the sur-

reply to the extent it is consistent with Fischer's prior submission. 14 Civ. 1304, Dkt. 42; 14

Civ. 1307,Dkt. 62.

II.

Discussion

A.

Applicable Legal Standards

To survive a motion to dismiss under Rule 12(b)(6), a complaint must pleadooenough
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 will only have "facial plausibility when the plaintiff pleads factual
content that allows the court to draw the reasonable inference that the defendant is liable for the
misconduct alleged." Ashcro/t v. Iqbal,556 U.S. 662,678 (2009). A complaint is properly
dismissed where, as a matter of law, "the allegations in a complaint, howevet true, could not

6

raise a claim of entitlement to relief." Twombly,550 U.S. at 558. Although a district court must
accept as true all well-pled factual allegations in the complaint and draw all reasonable

inferences in the plaintiffls favor, Steginslry v. Xcelera Inc.,74l F.3d 365, 365 (2d Cir. 2014),
that tenet "is inapplicable to legal conclusions," Iqbal,556 U.S. at 678.

Pro se complaints'o'must be construed liberally and interpreted to raise the strongest
arguments that they suggest."' Sykes v. Bank of Am,,723 F.3d399, 403 (2d Cir. 2013) (quoting

Triestmanv. Fed. Bureau of Prisons,470 F.3d 47I,474 (2d Cir. 2006)); see also Ericlcsonv.
Pardus,551 U.S. 89,94 (2007) ("4 documerú.filedpro se is to be liberally construed, andapro
se complaint, however

inartfully pleaded, must be held to less stringent standards than formal

pleadings drafted by lawyers." (citations omitted)). Courts may not, however, readirúo pro se
submissions claims inconsistent with thepro se litigant's allegations, see Phillips v, Girdich,408

F.3d I24, 127 (2d Cir. 2005), or arguments that the submissions themselves do not suggest,

Walkerv.Schult,717F.3dll9,l24(2dCir.2013)(citationomitted).

Prosestatuso'doesnot

exempt aparty from compliance with relevant rules of procedural and substantive law." Traguth
v. Zuck,

7

l0 F .2d 90, 95 (2d Cir. 983) (citation omitted).

B.

1

Individual LiabilitY

As a threshold matter, Forrest argues that the allegedty infringing catalogue and website
at issue are not owned by Stephen and Sandra Forrest individually, but are'oowned and

maintained by Brushy Mountain Bee Farm,

Inc." Def. Br. 8.

Because Fischer has not "set forth

any allegations with respect to any individual acts," Forrest argues, Stephen and Sandra Forrest
cannot be held personally liable for any infringing material that may have appeared on Brushy

Mountain's website or in its catalogues.

.Id.

7

It is well-settled that "[a]ll persons and corporations who participate in, exercise control
over, or benefit from the infringement are jointly and severally liable as copyright infringers."
Sygma Photo News, Inc. v.

High

lnc.,778 F.2d 89, 92 (2d Cir. 1985) (citing

Soc. Magazine,

Shapiro, Bernstein & Co. v. H.L. Green Co.,316F.2d 304, 308-09 (2dCir.1963)); see also,

e,g,,Arista Records LLC v. Lime Grp. LLC,784 F. Supp. 2d398,437 (S.D.N.Y.2011) (same).
The allegations in the Amended Complaints-taken as true, as they must be in resolving a

motion to dismiss-are more than sufficient to support a finding of individual liability. Fischer
alleges that Stephen and Sandra Forrest are

oothe

sole officers and shareholders" of Brushy

Mountain; they therefore "exert[] extensive direct day-to day control over all Brushy activities"
and have

o'a

direct and obvious financial interest in Brushy." Am. Compl. I flfl 8-10; Am.

Compl. II llt] 7-9; see also Am. Compl. I Tfl 16-19,67, 131; Am. Compl. II ll]J 14-19. Discovery

will reveal whether

one or both of the individual defendants personally created or were otherwise

responsible for the infringing webpages and catalogue entries. Either way, the Amended

Complaints clearly allege that Stephen and Sandra Forrest had control over Brushy Mountain's
publications and personally benefited from sales of Brushy Mountain's products, including
Natural Honey Harvester.
The allegations in Amended Complaints undoubtedly state claims against Brushy

Mountain as well as the individual defendants
Fischer, as the

oomaster

.

See Sygma Photo News,

Lnc.,778 F .2d at 92. But

of his complaint," has the right to choose which persons or corporations

to name as defendants, Metro Found. Contractors, Inc. v. Arch Ins. Co.,498 F. App'x 98,102

(2d Cir,2012) (summary order). His decision to name only Stephen and Sandra Forrest, and not
also Brushy Mountain, although strategically curious, does not prevent him from pursuing claims
against the two individuals.

8

C.

Copyright Infringement

Fischer brings five counts of direct copyright infringement, see Am. Compl. I T1[74*88,
and four counts of secondary copyright infringement, see Am. Compl.

II

TT

90-lI7 . In briet

Fischer alleges that the Brushy Mountain website and print catalogues misappropriated text and
images that Fischer had created and copyrighted to promote Bee-Quick in order to instead

promote Brushy Mountain's competing, knock-off product, Natural Honey Harvester. See, e.g.,

Am. Compl. II Ex. 20 (text); Am. Compl. I Ex. 10-12 (photo). Fischer also alleges that Brushy
Mountain's conduct led to further,

i. e,

, secondary infringement by other sellers of beekeeping

products, who posted the same description of Natural Honey Harvester on their websites. See,

e.g., Am. Compl. II Ex. 2I-22.
Specifically, the first four counts of direct infringement allege that Forrest displayed
o'verbatim and without any permission" on the Brushy
Fischer's copyrighted written work

Mountain website. Am. Compl. I ItT 74-85. Each of these four counts pertains to a different
phrase.3 The four counts of secondary infringement parallel the first four counts of direct

infringement: They allege that Forrest deliberately induced andlor profited from third-party
dealers' infringement of the same four phrases. See Am. Compl. II IlT 90*117' The fifth and

final count of direct infringement alleges that Forrest displayed Fischer's copyrighted
photograph of a bottle of Bee-Quick on the Brushy Mountain website, again "verbatim and

without any permission." Am. Compl. I llf 86-88.

The four phrases are: (l) "[a]re you tired of your spouse making you sleep in the garage?," 4m.
Compl. In-75; (2) "la]re you tired of using ahazardous product on the bees you love?," id. n78;
(3) "[u] safe, gentle, and pleasant way to harvest your honey ," id. n 81; and (4) "[a] natural, nontoxic blend of oils and herbal extracts," id. n 84.
3

9

1.

Fischer Has Adequately Alleged Possession of a Valid Copyright

Fischer has a registered copyright for the "text and images of the Bee-Quick.com

website." Am. Compl. I, Ex. 4 (copyright registration). As alleged in the Amended Complaints,
this copyright covers the four phrases and the image that Brushy Mountain used without
permission. See Am. Compl. II T 67 (text); Am. Compl. I, Ex. 10-12 (photo).
Forrest argues that Fischer's text is not protectable under the copyright laws because it
consists of "short phrases" that "fail[] to embody a minimal quantum of creative authorship."

Def. Br. 5. Fischer's response is thorough and conclusive. See Pl. Br. 14-22. The dozen cases
cited in Fischer's brief establish that brevity does not preclude copyright protection. See, e'g.,

Bridgeport Music, Inc. v. Dimension Films,4l0 F.3d 792,796-97 (6th Cir. 2005) (unauthorized
sampling of a single chord could be actionable); Life Music, Inc. v. Wonderland Music

Co',24I

F. Supp. 653,656 (S,D.N.Y. 1965) (unauthorized copying of a single neologism could be
actionable). Although "a cliché or an ordinary word-combination" may not qualify for copyright
protection, Salinger v. Røndom House, Inc.,8l1 F.2d 90, 98 (2d Cir.) opinion supplemented on
denial of reh'g, 818 F,2d252 (2d Cir. 1987), the text at issue here is not by any means
commonplace. Forrest appears to have copied a 66-word passage that includes a unique
combination of descriptive terms, carefully phrased assurances, and an idiosyncratic joke. It is
safe to assume that no earlier marketing material has asked readers

spouse making you sleep in the garage after using Bee

brief, is therefore protectable

.

See

if they are o'tired of your

Go." Fischer's work, though relatively

Heim v. (Jniversal Pictures Co,, 754 F.2d 480, 488 n'8 (2d

Cfu.1946) ("There may be wrongful copying, though small quantitatively," for example,'oif
someone were to copy the words, 'Euclid alone has looked on Beauty bare,' or

the slithy toves."').

10

oTwas

brillig

and

To be sure, Forrest's motion to dismiss may point to a separate limitation on Fischer's

ability to recover, that Fischer may recover only one award of statutory damages per work
infringed. See Twin Pealcs Prods., Inc. v. Publ'n Int'1, Ltd.,996F.2d 1366, 1381 (2d Cir. 1993).

It is by no means clear that Fischer's copyrighted phrases and photograph qualify

as more than

one work and, therefore, whether multiple copyright claims arise from the infringement alleged

in the Amended Complaints

.

See, e.g., Bryant v. Media Right Prods.,

Inc., 603 F.3d 135, 141

&,

n,6 (2dCir. 2010) (citing, with approval, cases holding that only a single award of statutory
damages was warranted where infringement was of a music album with multiple songs, a

software package containing many pieces of clip art, and a catalogue featuring various separately

copyrighted photographs). The Court has no occasion now to resolve this issue, which the
parties have not briefed. The Court

will invite briefing on it following discovery, at the summary

judgment stage.

2.

Fischer Has Adequately Alleged Direct Copyright Infringement

"In order to establish 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 itlegal because a substantial similarity exists between the defendant's work and the
protectable elements of plaintiff

s."'

Peter F. Gaito Architecture v. Simone Dev.,602 F.3d 57,

63 (2dCir. 2010) (quoting Hamil Am. Inc. v. GFI,193 F.3d 92,99 (2dCit,1999)). As to the

first element, "[i]n the absence of direct evidence, 'a plaintiff may establish copying
circumstantially by demonstrating that the person who composed the defendant's work had
access to the copyrighted material, and that there are similarities between the two works that are

probative of copying

,"'

LaChapelle v. Fenty,812 F. Supp. 2d 434,440 (S,D.N'Y. 201 1)

(quoting Jorgensen v. Epic/Sony Records, 35 1 F'3d 46,

11

5I (2d Cir. 2003)).

oosmoking gun"
Although Fischer has not submitted direct evidence of copying, such as a

email confessing to the misdeed, the circumstantial evidence, as alleged in the Amended
Complaints, is compelling: Forrest had access to Fischer's publicly available website and to
brochures and flyers Fischer had provided during the parties' eight-year business relationship.
See, e,g.,

Am. Compl. I T 30. The exhibits attached to the Amended Complaints strongly support

the inference that, after terminating Brushy Mountain's agreement with Fischer in December
2010, Forrest retained the text and image used to sell Bee-Quick but swapped out the product

name so as to promote Natural Honey Harvester instead. See, e.g.o Am. Compl. II Ex. 20 (text);

Am. Compl. I Ex. 10-12 (photo). And Forest's work is not merely "substantially similar" to
Fischer's. Apart from the name of the product being marketed, the text and image in Brushy
Mountain's website and catalogue are literally identical to the text and image in Fischer's
protected work. See, e.g., Hoehling v, (Jniversal City Studios, Inc., 618 F.2d 972,980 (2d Cir.
1980) ("A verbatim reproduction of another work, of course, even in the realm of nonfiction, is
actionable as copyright infringement,"). Accordingly, the Amended Complaint in the first action
states a claim for direct copyright infringement.

Forrest argues that he was explicitly authorizedto use Fischer's copyrighted work, and
Fischer never revoked that permission. Def. Br. 5, 7. Fischer acknowledges that he had allowed
Forrest to use the text and image at issue in Forrest's capacity as an authorized Bee-Quick

vendor. Am. Compl. I

1l1T

31,46; Am. Compl. II tll] 21,43,63-67. Fischer alleges, however, that

"sush use was permitted solely in the selling of Plaintiff s product." Am. Compl. I1[33; see also

Am. Compl. II Tlt 25,71, 78. That allegation, at the motion to dismiss stage, is enough to sustain
Fischer's claim. In any event, the inference that Forrest asks the Court to draw-that Fischer
allowed a competitor to repurpose original works he had created, copyrighted, and continued to

l2

use to promote and sell his own

product-is highly improbable. Forrest is, of

course, at liberty

to seek in discovery to adduce evidence that Fischer permitted his competitor to replicate his
marketing materials so as to undercut his business. But based on the facts alleged in the
Amended Complaints, a plausible inference is that Foruest brazenly exceeded the scope

of

Fischer's authorization when he used the copyrighted materials to sell a competing, knock-off

product. And "[i]t is black-letter law that aclaim for copyright infringement lies when
use of copyrighted material exceeds the scope of its license." John Wiley
P ho

to,

99 8

a

party's

& Sons, Inc. v, DRK

F. Supp. 2d 262, 287 (S.D.N .Y . 201 4) (citation omitted).

3.

Fischer Has Adequately Alleged Secondary Copyright Infringement

To establish a claim of secondary copyright infringement, a plaintiff must prove thatooa
defendant contributed to or benefitted from a third party's infringement such that it is 'just' to

hold the defendant accountable for the infringing activity." Capitol Records, LLC v. ReDigi Inc.,

934F. Supp. 2d640,656 (S.D.N.Y. 2013) (quoting Sony Corp. of Am. v. Universal City Studios,
1nc.,464 U.S. 417, 435 (19S4)). Here, Fischer alleges, at least two non-party companies, The
Honey Hole and C &.T Bee Supply, included the same allegedly infringing text as Brushy
Mountain on their webpages that sold Natural Honey Harvester. See Am. Compl. II Ex. 21-22.
The Amended Complaint in the second action alleges that Forrest owns Brushy Mountain and

profits from sales of Brushy Mountain products by other dealers. This supplies
holding defendants liable for secondary infringement. See Am. Compl. II

lT'1Ì

a

viable basis for

7-9.

Alternatively,

the facts alleged permit the plausible inference that Forrest contributed to the third-party

infringement, such as by making the copyrighted material available to those companies or asking
them to use Fischer's text to promote Natural Honey Harvester. See Am. Compl.

IInn32,49-

57,82-89. On either theory, the Amended Complaint in the second action therefore adequately

13

alleges that Forrest benefited from or contributed to infringing conduct by at least two third

parties. As such, it states a claim for secondary copyright infringement'

D.

Removal of Copyright Management Information

Fischer brings nine counts under the
1l1T

DMCA-five

94-118, and four in the second, see Am. Compl. II

1l1T

(.'CMI')

in the first action, see Am. Compl. I

124-55. These claims parallel the nine

claims of copyright infringement in that they pertain to the four phrases and one photograph used
by Brushy Mountain, and the four phrases used by third parties.
"The DMCA prohibits, among other things, 'intentionally removfing] or alter[ing] any
copyright management information,' such as the familiar O copyright notice." Zalewski

v.

Cicero Builder Dev., hnc.,754F.3d95,107 (2dCit.2014) (quoting 17 U.S.C' $ 1202(b)
(alteration in the original). CMI includes "[t]he title and other information identifying the work,"
and

"[t]he name of, and other identifying information about, the author of a work."

17 U.S.C.

the
$ 1202(c).a To state a claim for removal of CMI, Fischer must adequately allege "(1)
existence of CMI on the [materials at issue]; (2) removal and/or alteration of that information;
and (3) that the removal andlor alteration was done intentionally," BanxCorp v' Costco

Wholesale Corp., 723 F. Supp. 2d 596,609 (S.D.N'Y. 2010)'

o'automated copyright management systems functioning
Forrest argues that CMI includes only
within a computer network environment." Def. Br. 10. To support this claim, Forrest cites one
District of New Jersey case,IQ Group Ltd. V. lliesner Pub, LLC,409 F. Supp' 2d 587 (D'N.J.
2006),which was later rejected by the Third Circuit, see Murphy v. Millennium Radio Grp.,650
F.3d295,305 (3d Cir.2011). Other judges in this District have also declined to follow the
narrow construction of the DMCA adopted in IQ Group. See Agence France Presse v. Morel,
769 F. Supp. 2d295,306 (S.D.N .Y .2017); Associated Press v. All Headline News Corp.,608 F.
Supp. Z¿ +iq, 461-62 (S.D.N.Y. 2009). The Court agrees that IQ Group's crimped definition of
CMI "is directly at odds with the broad definition set forth in the statutory text itself," Agence
France Presse,769 F. Supp. 2d af 306, and that "'fw]hen a statute's language is clear, our only
role is to enforce that language according to its terms," Associated Press,608 F. Supp. 2d at 461
(quoting Arciniaga v, General Motors Corp., 460 F.3d 231,235 (2d Cir. 2006).
4

t4

As to the first element, the Amended Complaints indicate that the copyrighted materials
contained three forms of

CMI. First, the Bee-Quick brochure

attached to the complaints states

"copyright (c) 2000, James H. Fischer, All Rights Reserved." Am. Compl. I Ex. 5; Am. Compl.

II Ex. 5.5 Second, the original text at issue contained the name 'oFischer." Am. Compl. II Ex. 20.
Specifically, it stated that "Fischer's Bee-QuickrM is a safe, gentle, and pleasant way to harvest
your honey."

Id.

Fischer's name, although used to describe the product, also serves to identify

the author of the work and therefore qualifies as CMI under the statute. See 17 U.S.C. $ 1202(c)

(defining CMI to include "[t]he name of . . . the author of a work"); see also, e.g., Murphy,650
F.3d at 305 (holding that plaintiff s name constitutes CMI); Agence France Presse,769 F. Supp.

2d at306 (same). Third, Fischer alleges that the flyers and brochures he provided to Forrest in
the course of their business relationship contained embedded metadatathat included copyright

notices. Am. Compl. I fl 90; Am. Compl. II

ï

119. Forrest is at liberty to test that claim in

discovery, but, for the purpose of resolving the motion to dismiss, the Court must accept it as

true, See Koch,699 F.3d at 145. The metadata therefore provides a third source of CMI.

See,

*6 (S.D.
e.g., Gardner v. CafePress Inc,,No. 13 Civ. 110S (GPC) (JLB), 2014WL 4792958, at
Cal. Sept. 25,2014) (finding viable DCMA claim based on copyright notices contained in
metadata); McClatchey v. The Associated Press,No. 05 Civ. 145 (TFM), 2007 WL776103, at*5

(Vi.D. Pa. Mar. 9, 2007) (same).
As to the second element, the exhibits attached to the Amended Complaints reflect that
Brushy Mountain's website and catalogues omitted the copyright notice that Fischer had
included in his brochure and on his website. See Am. Compl. I Ex. 8 (2011Brushy Mountain

The Bee-Quick website, similarly, states "Entire V/ebsite Copyright @ 2000-2011 James
Fischer, All Rights Reserved,"
s

15

website); Am. Compl. II Ex. 20 (2011 through 2014 Brushy Mountain catalogues). Moreover,
these exhibits show that Brushy Mountain replaced the textual reference to

ooFischer's

Bee-

Quick" with the words "Natural Honey Harvester." See id. The exhibits therefore supply ample
basis to state a claim under the DMCA

. Cf, BanxCorp v. Costco

Wholesale Corp.,723 F. Supp.

2d 596,610 (S.D.N.Y. 2010) (denying motion to dismiss DMCA claim where plaintiff provided
ooan

actual example of the allegedly infringing ad" with altered CMÐ. In any event, Fischer also

alleges that Forrest removed the CMI embedded in the metadata, Am. Compl. I1[91; Am.

Compl. II ll 121, which supplies an alternative basis for liability.
Finally, as to the third element, Fischer asserts that Forrest intentionally removed the

CMI to facilitate his acts of copyright infringement. Am. Compl.

I\92; Am. Compl. II T 121'

Specifically, Forrest is alleged to have removed multiple forms of CMI from Fischer's
documents and repeatedly published materials stripped of CMI, both online and in print, over a

period of more than three years. This conduct continued even after Forrest received Fischer's
cease-and-desist letter in March 2011. Am. Compl. I

Ex. 15-16 Am. Compl. II Ex' 15-16.

Further, as alleged, Forrest removed Fischer's CMI to enable him to use Fischer's copyrighted

work to sell his owïì competing, knock-off product. See, e.g., Am. Compl. I fl 53; Am. Compl. II

J[73. These allegations supply
intentionally.

a solid basis on which to infer that Foruest removed the

See Agence France

CMI

Presse,769F. Supp. 2dat306 (quoting Inre DDAVP Direct

purchaser Antitrust Litig.,585 F.3d 677,693 (2d Cir,2009) ("[c]ourts must be 'lenient in

allowing scienter issues . . . to survive motions to dismiss."')).

E.

Lanham Act Claims

Fischer's first complaint asserts six claims under the Lanham Act. Counts Eleven,
Twelve, Thirteen, and Fourteen allege that Forrest used a counterfeit mark in three photographs

t6

and two URLs that appeared on the Brushy Mountain website, in violation of Section 32 of the

Lanham Act. See Am. Compl. I

T1T

138-61. Count Fifteen alleges that Forrest used Fischer's

protected mark to falsely suggest that Fischer endorsed or was affiliated with Forrest's product in

violation of Section 43(a) of the Lanham Act. Id. TT 179-S8. Finally, Count Eighteen alleges
that Forrest engaged in false advertising by, inter alia, disparaging Fischer's product, violating
Section a3@). Id. nn 207 -20.
Forrest argues that Fischer's Lanham Act claims duplicate his copyright claims in that
each is based on the claim that Forrest misappropriated Fischer's copyrighted words. Def. Br.

12. It is correct that "Lanham Act claims arising from the alleged copying of creative work" are
o'clearly foreclosed.

" Hl,tdson v. (Jniversal Studios,ln c. , No. 04 Civ. 6997 (GEL), 2008 WL

4701488,at *8 (S.D.N.Y.2008), aff'd369F.

App'x 2gI (zdcir.2010) (citation omitted);see

also Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23,29 (2009)' Here, however,

Fischer's claims are distinct: The Court understands his copyright claims to arise from the
alleged copying of his original text and photograph, and his Lanham Act claims to arise from the
alleged unauthorized use of his trademarked brand name. These claims are distinct and may

permissibly co-exist. See, e.g., Twin Peaks Prods., 996 F .2d at 1370 (copyright claims did not
preclude trademark claims despite common factual basis).

1.

Counts Eleven Through Fourteen: Section 32

"Under Section 32 of the Lanham Act, the owner of a mark registered with the Patent and
Trademark Office can seek civil damages against aparty who uses the mark without the owner's
consent in a manner

'likely to cause confusion, or to cause mistake, or to deceive."' Lottis

Vuitton Malletier S.A. v. LY \JSA, Inc., 472 F. App'x 19,21 (2d Cir. 2012) (summary order)

(quoting 15 U.S.C. g I 1 1a(1)(a)). "V/e analyze such a claim under a familiar two-prong test.

17

The test looks first to whether the plaintiff s mark is entitled to protection, and second to whether
the defendant's use of the mark is likely to cause consumers confusion as to the origin or
sponsorship of the defendant's goods." Tiffany (NJ) Inc. v. eBay únc.,600 F.3d 93, I02 (2d Cir.

(citation omitted).

201 0)

Fischer's mark, "Bee-Quick," is protected by a valid trademark issued by the Patent and
Trademark Offrce. Am. Compl. I Ex. 2 (trademark registration certificate). Forrest concedes as

much.

See

Def. Br. 31. Accordingly, the decisive issue is whether Fischer has adequately

alleged that Forrest used his mark in a way that was likely to cause consumer confusion'
To evaluate whether plaintiffs have shown a likelihood of confusion, courts in this Circuit
consider the eight factors set out in Polaroid Corp. v. Polarad Elecs. Corp.,287 F,2d 492 (2d

Cir. 1961).

See, e.g.,

Kelly-Brownv, ílinfrey,7I7 F.3d295,307 (2dCir.2013) (discussing the

"Polaroid factors").6 In resolving

a

motion to dismiss, however, it is unnecessary to undertake

that fact-intensive analysis. See, e.g., Merck & Co. v. Medipløn Health Consulting, lnc.,425 F,
Supp.

2d 402,412 (S.D.N.Y. 2006) (citing Cooper v. Parsþ,140 F.3d 433,440 (2d Cir. 1998));

*
Hearts on Fire Co., v. L C Int'l Corp. , No. 04 Civ . 2536 (LTS) (MHD), 2004 WL 1724932, at 4

(S.D.N.Y. July 30, 2004) (citing Courtenay Commc'ns Corp. v. Hall,334 F.3d 210,213 (2dCir.

2003)). A complaint can survive a motion to dismiss as long as it alleges, in general terms, that
defendants' infringing conduct caused consumer confusion. See, e.g., Merck,425 F, Supp. 2d at
412 (allegation that "[p]urchasers and potential purchasers are

likely to believe in error that such

Those factors are: "'(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;
(6) evidence that the imitative mark was adopted in
1S) widenci of actual consumer confusion;
bad faith; (7) respective quality of the products; and (8) sophistication of consumers in the
relevant market.n Kelly-Brown, 7 77 F.3d at 307 (quotin g Starbucks Corp. v. Wolfe's Borough
Coffee, Inc., 588 F .3d 97 , 1 15 (2d Cir. 2009)).
6

18

products . . . are approved by or are distributed by or under the authorization or sponsorship of

Merck" was sufficient to plead consumer confusion).
Here, Fischer alleges that Forrest "used the counterfeit marks in a manner likely to
confuse consumers," Am. Compl. I T 135, "create[d] initial interest confusion for customers," id.

n ß2, and is "still actively creating actual confusion," id..n 133. These allegations alone suffice
to state a claim under Section 32. And Fischer goes beyond what is required by articulating a

highly plausible theory of consumer confusion: He alleges that Forrest's use of the Bee-Quick
name in URLs would make consumers "victims of a bait-and-switch" by leading individuals
searching for Bee-Quick to a webpage selling Natural Honey Harvester. Id. n 136. Forrest

further confused consumers, according to Fischer, by using a photograph of Fischer's Bee-Quick
ooFischer's Bee-Quick," orr awebpage selling the
bottle, including a label with the words

competing, knock-off product. Id.fln

13941,14446. Fischer has, therefore,

stated a claim for

trademark infringement under the Lanham Act'

2,

Counts Fifteen and Eighteen: Section a3(a)

"'section 43(a) is a broad federal unfair competition provision,"' Audenlars Piguet
*21
HotrÌing s.A. v. swiss watch Int'\, Inc., No. 12 Civ. 5423 (HB), 2014 WL 47 465, at

(S.D.N.Y. .Ian. 6, 2014) (quoting Chambers v, Time l4/arner, lnc,,282F.3d147,155 (2d Cit.

2002)). [t creates

a federal cause

ofaction against:

Any person who, on or in connection with any goods or services, or any container
for gòods, uses in commefce any word, term, name, symbol, or device, or any
combination thereofì or any false designation of origin, fulse or misleading
description of fäct, or false or misleading representation of fàct, whichcause confusion, or to cause mistake, or to deceive as to the
afïliation, connection, or association of such person with another person, or as to
the origin, sponsorship, or approval of his or her goods, services, or commercial
activities by another person, or

(A) is likely to

t9

(B) in

commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another person's
goods, services,

01'

commercial activities.

15 U.S.C. $ 1125. As the case law reflects, Section 43(a) may be violatecl by a range
See, e.g,, WalcÌman

of concluct.

Publ'g Corp. v. Landoll, Inc,, 43 F.3d 775,780 (2d Cir. 1994) ("passing of'f'

one person's goods as another's); Vilteroy & Boch Keramische Werke K.G. v. THC Sys., Inc',
999 F,2d 619, 620 (2d Cir. 1993) (trade dress infringement); Beastie Boys v. Monster Energy

co., No. 12 Civ.6065 (PAE),2014 WL 6845860, at*20-21 (S.D.N.Y. Dec. 4,2014) (false
endorsement); Gordon

<9

ßreach

Sci. Publishers, S.A, v.

American Inst. oJ'Physics,859 F. Supp.

1521, 1530 (S.D.N.Y. 1994) (trade libel and product disparagement).
Fischer styles Count Fifteen as a false endorsement claim. See Arn. Cornpl. I T1l 179-88.

To state a claim for false endorsement, a plaintiff must adequately allege that "the defendant,
(1) iri commerce, (2) made a false or misleading representation of fact (3) in connection with
goods or services (4) that is likely to cause consumer confusion as to the origin, sponsorship, or

approval of the goods or services." Burckv. Mãrs, Inc,,57l F. Supp' 2d446,455 (S.D.N'Y.

2008). As allegecl, Forrest used the phrase 'oFischer's Bee-Quick" on a webpage selling Nattrral
Honey Harvester, thereby falsely implying that Fischer endorsed or was somehow associated

witlr Brushy Mountain's product. Cf , e,g., Parlrs v. LaFace Records,329 F.3d 437,447
Cir. 2003) (use of civil rights icon's name in

a rap song

(6tl:r

could suggest association); Abdul'

,Iahbar v. Gen. Motors Corp.,85 F.3d 407,409-10 (9th Cir. 1996) (use of profèssional
basketball player's name in car commercials could suggest association). This purportedly
misleacling representation of fact appeared in commerce in connection with goods, again, on a
webpage that promotes and sells Natural Honey Harvester. And, fbr the reasons set out earlier,

20

Fischer has adequately alleged a likelihood of consumer confusion as to the origin or sponsorship

ofForrest's goods.
Fischer characterizes Count Eighteen as a false advertising claim. Am. Compl. I1TI207-

20. "'llwo diff'erent theories of recovery

are available to a plaintiff who brings a f'alse advertising

action under $ a3(a) of the L,anham Act. First, the plaintiff can demonstrate that the challenged
advertisement is literally false, i,e., faLse on its face. . .

.

Alternatively,

a

plaintiff can show that

the advertisement, while not literally false, is nevertheless likely to rnislead or confuse

consumers." Time Wctrner Cable, Inc. v. DIRECTV, Lnc.,497 F.3d144,I53 (2d Cir.2007). As
notecl, Fischer has adequately alleged that Forrest's advertisement contained a misrepresentation

that was likely to mislead consumers. Fischer also alleges that Forrest's advertisement oontained
a

literal f'alsity: It stated that "[f]or years we have promoted the use of

a natural product to

harvest honey but an unreliable supply of such a product has forced us to come out with our

own.'o Am. Compl. I Ex. 8 (2011 website); Am. Compl. II Ex. 20 (2011 through 2014
catalogues). In fact, the Amended Complaint I alleges that Bee-Quick was reliably produced
quarterly, and "defendants merely needed to pre-pay to get delivery at any time they pleased'"

Id, n208, This allegation, if proven, would make Forrest's description of Fischer's supply false.
Under either theory, then, Fischer has stated a claim for false advertising under the Lanham Act'

F.

State-Law Claims

Counts Sixteen, Seventeen, and Nineteen thnough'fwenty-One of Amended Complaint I
assert state-law causes

of action. See Am. Compl. I li1l 139-206,22146. Forrest contends that

the Lanham Act preempts some of these claims. Def. Br. 16-17. That is wrong. The Lanham

Act, unlike the Copyright Act, does not preempt state law. See, e.g., Transcience Corp. v. Big

*7 (S.D.N.Y. Sept' 23,2014);
Time Toys,.LI-C, No. l3 Civ. 6642 (ER), 2014WL 4827878, at

2l

Medisim Ltd. v. IlestMed LLC,910 F. Supp. 2d591,619 &.n,164 (S.D.N.Y. 2012).
Accordingly, to the extent these claims rely on allegations of trademark infiingement, they are
not preempted. The Court now turns to the merits of each state-law claim.

1.

Count Sixteen: Right of Publicity

The New York

Civil Rights Law ("NYCRL") provides

a private

right of action for "[a]ny

person whose name, portrait, picture, or voice is usecl within this state for advertising purposes or

fbr the purposes of trade without . . . written consent fìrst obtained," NYCRL $ 51. To state a
claim under this section, a plaintifïmust adequately allege that the defendant: "(1) used her
name, poftrait, picture, or voice, (2) for advertising or trade pu{poses, (3) without her written

consent," Allisonv. Clos-ette 7"oo, LLC,No. 14 Civ. 1618 (LAK) (JCF), 2014WL 4996358,at
* I 1 (S.D.N.Y. Sept.

15,2014), Fischer alleges that Forrest used his personal name for

advertising or trade purposes without his consent. Am. Courpl. I.

'11

190. The exhibits Fischer

provided support this allegation: They reproduce Brushy Mountain webpages prornoting and
selling Natural Honey l{arvester, with Fissher's name appearing in the URI- and in a photograph.
See Am. Compl. I Exs. 12*13 (URL), Exs, 10-12 (photo). Fischer has therefore stated a claim
under Section 51.7

2,

Count Seventeen: Unfair Competition

The elements of an unfair competition claim under New York common lawooclosely

parallel the elements of unfair competition under the Lanham Act." Medisim,9l0 F' Supp. 2d at

606. To state a claim under the Lanham Act, aplaintiff must adequately allege that the

Forrest contends that "plaintiff does not even identify what 'valuable name' was used by
on Forrest's use
defendants." Def. Br. 33-35. The Court understands Fischer to base this claim ooBee-Quick,"
ooFischer," as opposed to the trademarked name of his product,
of his last name,
and sustains Fischer's claim on that premise.
7

22

defendant "'(1) in commerce, (2) made a false or misleading representation of fact (3) in
connection with goods or services (4) that is likely to cause consumer confusion as to the origin,
sponsorship, or approval of the goods or services

."'

Naked Cowboy v, CBS,844 F. Supp' 2d

510,516 (S.D.N.Y.2012) (quoting Burck,571 F. Supp.2dar.455. Forthereasonsdiscussedat
pages 17-20, supra, Fischer has satisfied all of these elements.
To prevail on an unfair competition claim under New York common law, a plaintiff must
also make

ooosome

showing of bad faith' on the part of the defendants." Medisim, 910 F. Supp.

2dat606 (quoting

Sly Magazine,

LLC v. Weider Publ'ns LLC,346 F. App'x 721,723 (2dCit'

2009) (summary order)); see also, e,g.,C:Holdings B,V, v, Asiarim Corp',992F. Supp'2d223,
244 (S.D.N.Y. 2013) ("An unfair competition claim under New York common law requires all
the elements of a Lanham Act unfair competition claim plus a showing of bad faith."). Forrest's
bad faith is readily inferred from Fischer's allegations that Forrest intentionally copied his
protected mark in order to sell a competing product, Am. Compl. I'1Ì 53; that in the course

of

promoting the knock-off product, Forrest disparaged Fischer by implying that he was
"unreliable ," id. Ex. 8; and that Forrest persisted in this course of conduct even after receiving

Fischer's cease-and-desist letter, id. Ex. 15. Cf , e.g.,Int'l Diamond Imps., Inc, v, Oriental
*16 (S.D.N.Y. Nov.24,
Gemco (N.Y,),Inc.,No. 14 Civ.3506 (SAS),2014WL6682622,at
2014) (plaintiffs adequately pled bad faith where they alleged that defendants knowingly used

plaintiffs' trade dress to sell knock-offjewelry). Fischer

has therefore stated a claim

for unfair

competition under New York law.

3.

Count Nineteen: Unfair Business PractÍces

To state a claim under New York General Business Law $ 349,"a plaintiff 'mllst prove
three elements: f,rrst, that the challenged act or practice was consumer-oriented; second, that

23

it

was misleading in a material way; and third, that the plaintifT suffèred injury as a result of the

deceptive act.'oo Crawþrd v. Franklin Credit Mgmt, Corp., 758 F.3d 473, 490 (2d Cir.2014)
(quoting Stutman v. Chemical Bank,95 N.Y.2d 24,29 (2000)). A deceptive act alone does not
haveooa broacler impact on consumers at

large." Int'l Diamond Imps.,2014WL

6682622, at *10 (quoting Shapiro v. Berkshire Ltfe Ins.

Co.,2I2F.3d l2I,126 (2dCit.2000));

suflce; it must

see also,

e.

g., Securitron Magnalock Corp. v. Schnabolk, 65 F .3d 256, 264 (2d Cir. 1 995)

("[C]orporate competitors now have standing to bring a claim under this fstatute] . . . so long
some harm to the

public allarge is at issue."). It must "threaten the public interest, such

as

as

potential danger to public health or safety." Int'I Diamond Imps.,2014WL 6682622, aI*10; see
also id. at * 10 n.I32-33 (collecting cases).
Although the gravamen of Fischer's complaint is private hatm, he provides sufficient
allegations of a potential public impact to survive a motion to dismis. See Am. Compl.

Inn221-

30. Fischer alleges that abeekeeper duped into purchasing Natural Honey Harvester-believing
it to be Bee-Quick, or associated with Bee-Quick, or interchangeable with Bee-Quick-could
face "drastic consequences" including: (a) health problems resulting from use of a product made

with an "unknown mix of chemicals having unknown vaporization/evaporation/volatility
properties," (b) "inedible and unsalable" honey harvests caused by use of a product that is not
food safe or FDA approved, and (c) loss of organic certification from using a product that is not

organic. .Id, Consumers, in turn, could be misled into purchasing substandard or tainted honey.
Id. n224. These claims plausibly allege the necessary adverse impact on the public.
Fischer has also adequately pled the other two elements of a Section 349 claim. Forrest's
alleged use of Fischer's personal and trademarked names on a webpage selling Natural Honey
Harvester, as alleged, was misleading in amaÍerial way because it would tend to mislead

24

consumers to mistake Natural Honey Harvester for Bee-Quick or to believe that the two products

were associated, See pages 19-20, supra. Fischer has also alleged injury to himself as a
producer, who would suffer if consumers lost trust in his "food safe" and 'oorganic" labels, and
also as a consumer, in the event he inadvertently purchased substandard honey

1n227. Fischer has therefore

4.

.

See Am' Compl.

stated a claim for unfair business practices.

Count Twenty: Breach of Contract

'oTo state a claim for breach of contract uncler New

York law, aplaintiff must allege

'(1) the existence of an agreement, (2) adequate performance of the contract by the plaintif f,
(3) breach of contract by the defendant, and (4) damages."' Hudson & Broad, Inc. v. ,1.C.
Penney Corp,, 553 F. App'x 37,38 (2dCir.2014) (surnrnary order) (quoting Harsco Corp.
Segui,

gl F,3d 337,348 (2d Cir. 1996)).

v.

Fischer has clearly pled the fìrst, second, and fourth

elements: He alleges that the parties had an agreement under which Brushy Mountain was an
authorized dealer of Bee-Quick, Am. Compl. I l]ll 8-10, 30, that he performed his obligations
under that agreement, see id.nn3I,208,and that he suffered harm after the agreement ceased to
be in force, including spoiled product and lost profits, see id.

nn4.

As to the third element, breach, the Amended Complaint is far less clear. It supplies little

information about the substance of the parties' agreement, and it does not clearly state what
conduct by Forrest constituted a breach. Nevertheless, drawing every inference in Fischer's

favor, as the Court must at this stage, and construinghis pro se claims liberally, the Court reads
Fischer to allege that Forrest breached the parties' agreement in three ways: First, Fischer
alleges that Forrest failed to provide reasonable notice before terminating the contract, id'

the UCC,
11232-33;the Court infers that the parties, either expressly or by implication through

25

agreed to provide such notice before terminating the agreement.s

,See

UCC $ 2'309

("Termination of a contract by one party except on the happening of an agreed event requires
that reasonable notification be received by the other party."). Second, Fischer alleges that
Forrest cancelled an order after accepting shipment and opening the goods, Am.

Compl.I\234;

the Court infers that this action breached an express or implied provision of the parties'
agreement, See UCC ç 2-607 ("Acceptance of goods by the buyer precludes rejection of the
goods accepted."). Third, Fischer alleges that he authorized Forrest to use his copyrighted text
and photograph and his trademarked name for the sole purpose of selling Bee-Quick' Am.

Compl. I TI31 ,33,46,59. The Court can therefore reasonably infer that Forrest's use of those
materials to sell Natural Honey Harvester violated either the sales contract or a separate licensing
agreement that existed between the parties.e Accordingly, this count, too, states a claim under

New York law.

5.
o'Under
a benefit

Count Twenty-One: Unjust Enrichment

New York law, an unjust enrichment claim lies when 'the defendant has obtained

whicli in equity

ancl good conscience should be paicl to the

plaintiff."'

Rose v' Rahfco

*7 (S.D.N'Y. Dec. 15,2014)
Mgmt. Grp., LLC,No. 13 Civ.5804 (VB), 2014WL 7389900, at
(quoting Corsello v, Verizon N.Y., Inc.,18 N.Y.3d 777 ,790 (2012)). 'oA claim fur unjust
enrichment requires that the '(1) clefendant was enrichecl, (2) atplaintiff's expense, and

Because Fischer alleges that the contract was terminable at will, Am. Compl. In232, the Court
cannot reasonably infer that the termination itself breached the parties' contract.
s

Conceivably, the parties' contract included an exclusivity or non-compete agreement and was
therefore breached when Forrest introduced his "directly competing cheap knock-off product,"
Am. Compl. I T 235, The complaint, however, does not allege or imply that the agreement
included such ä provision. The Court, therefore, does not sustain the breach of contract claim on
this theory of breach.
e

26

(3) equity and good conscience militate against permitting defendant to retain what plaintiff is
seeking to recover."' Prickett v. N.Y. Life Ins, Co.,896 F. Supp. 2d236,249 (S.D.N.Y .2012)

(qnoting Diesel Props S,r.l, v. Greystone Bus. Credit II LLC,63l F.3d 42, 55 (2d Cir. 201 1)).
Because'ounjust enrichment is an alternative to [a] contract claim," it "requires the absence of an
enfurceable agreement.

" Podlin v. Ghermeziøzl, No. 13 Civ. 41 17 (WHP),2014 WI. 2601416, at

*6 (S.D.N.Y. May 28,2014) (citing Mid-Hudson Catskill Rural Migrant Ministry, Inc, v. Fine

Ílost Corp., 418 F.3d 168,175

(2c1

Cir. 2005)).

Fischer alleges that Forrest was enriched through sales of Natural Honey Harvester. Ses

Am. Compl. I ffi 8-9. Fischer also alleges that these profits were garnered at his expense, to wit,
by using his trademarked brand natre and personal name to trick buyers into mistaking Natural
Honey Harvester for Bee-Quick. Id.

tT

136. For the purpose of resolving the motion to dismiss,

the Court assumes that it would be unjust to permit Forrest to retain the deceitfully obtained
proceeds fi.orn Natural Honey Harvester sales. Accordingly,

if Fischer's breach of contract claim

fails, he may pursue an unjust enrichment claim.

CONCLUSION
For the fbregoing reasons, Forrest's motion to clismiss is denied in its entirety' An order
regarding next steps in this litigation will issue shortly.
The Clerk of Court is clirected to terminate the motions pending at 14 Civ. 1304, Dkt. 30;
14

Civ. 1307, Dkt. 45;

and 14

Civ. 1307, Dkt. 51'

27

SO ORDERED

t^l (.
Paul A. Engelmayer
United States District Judge

Dated: January 13,2015
New York, New York

28