Gayle v. Larko et al
Filing
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OPINION AND ORDER re: 30 MOTION to Dismiss Plaintiff's Amended Complaint Pursuant to Rule 12(b)(6). filed by Valerie Larko, 29 MOTION to Dismiss notice of motion. filed by Lyons Wier Gallery. In sum, Defenda nts' motions to dismiss are GRANTED. Docs. 2930. The Court certifies, pursuant to 28 U.S.C. § 1915(a)(3), that any appeal from this Order should be taken in good faith, and therefore in forma pauperis status is denied for the purpose of an appeal. Moreover, the Court declines sua sponte to grant Gayle leave to amend his complaint. Although leave to amend a complaint should be freely given "when justice so requires," Fed. R. Civ. P. 15(a)(2), "it is within the so und discretion of the district court to grant or deny leave to amend." McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 200 (2d Cir. 2007). Here, leave is unwarranted because the problem with Gayle's claims is "substantive" and , thus, "better pleading will not cure it." Cuoco v. Moritsugu, 222 F.3d 99, 112 (2d Cir. 2000). Finally, Gayle has already been given permission to amend his complaint once, and he has not requested permission to file another amended co mplaint or given any indication that he is in possession of facts that would cure the problems identified in the instant motions to dismiss. Reynolds v. City of Mount Vernon, No. 14-CV-1481(JMF),2015 U.S. Dist. LEXIS 43061, 2015 WL 1514894, at * 5 (S.D.N.Y. Apr. 1, 2015). The Clerk of the Court is respectfully directed to send a copy of this order to the Plaintiff, addressed to Itoffee R. Gayle 2010 Powell Ave. Apt. 2F Bronx, NY 10472. The Clerk is further directed to terminate the motions, Docs. 29-30, and close the case. SO ORDERED. (Signed by Judge Edgardo Ramos on 9/17/2019) (ks) Transmission to Orders and Judgments Clerk for processing.
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
ITOFFEE R. GAYLE,
Plaintiff,
OPINION AND ORDER
18 Civ. 3773 (ER)
– against –
VALERIE LARKO and LYONS WIER
GALLERY,
Defendants.
Ramos, D.J.:
Pro se plaintiff Itoffee R. Gayle (“Plaintiff” or “Gayle”) brings claims of trademark and
copyright infringement against artist Valerie Larko (“Larko”) and Lyons Wier Gallery (“Lyons
Gallery”) (collectively, “Defendants”), for exhibiting a painting that included the phrase “Art
We All One.” Gayle claims ownership of a trademark and two copyrights for the phrase “Art
We All.” Defendants filed two separate motions to dismiss contending that Gayle has failed to
plead sufficient facts to support his infringement claims. For the reasons set forth below, the
motions to dismiss are GRANTED.
I.
BACKGROUND
From October 15 to October 30, 2015, Lyons Gallery showcased Larko’s oil-based
painting, “Graffiti Camper, Boston Road,” in an exhibit called “Location, Location, Location,” in
Chelsea, New York. Doc. 6, 5. The painting depicted a streetscape including existing graffiti on
portions of dilapidated walls and objects along a street in the Bronx, New York. Doc. 35, Ex. A.
The focal point of the painting is a camper that is surrounded by concrete road blocks,
dumpsters, and a long, rectangular structure behind the camper; all of these surfaces are covered
in an assortment of graffiti in varying styles. Among the clutter of graffiti on the structure,
which stands behind the camper, the phrase “Art We All One” is written twice in all caps and
small red lettering. While “Graffiti Camper, Boston Road” was part of the Lyons Gallery
exhibit, Gayle makes no assertion that any point Larko or Lyons Gallery used the phrases “Art
We All” or “Art We All One” in connection with advertising the exhibit. Id. at Ex. 1 ¶ 10.
Gayle brought this lawsuit against Larko and Lyons Gallery on April 27, 2018,
proceeding in forma pauperis. Doc. 2. He amended his complaint on July 2, 2018. Doc. 6.
Gayle asserts that Larko and Lyons Gallery infringed his copyright registrations VA2006958 and
VA2088822, and his trademark registration No. 5108721, for the phrase “Art We All.” Doc. 6,
5. Lyons Gallery provided the Court with a copy of a trademark registration certificate
(“Trademark Certificate”) owned by Gayle for the mark “ART WE ALL” (“the Mark”), which
consists of standard characters without claim to any particular font style, size, or color. Doc. 35,
Ex. B. The Mark was registered on December 27, 2016 as a Class 35 registration for retail store
services featuring works of art. Id. The dates of the copyright registrations are not provided.
Gayle brings claims pursuant to federal trademark infringement laws 15 U.S.C. §§ 114(a) and
1125(a), for related state trademark infringement laws, and for copyright infringement pursuant
to 17 U.S.C. § 504. 1 Doc. 6, 5–7.
II.
LEGAL STANDARD
When ruling on a motion to dismiss pursuant to Fed. R. Civ. Pro. 12(b)(6), district courts
are required to accept as true all factual allegations in the complaint and to draw all reasonable
inferences in plaintiff’s favor. Walker v. Schult, 717 F.3d 119, 124 (2d Cir. 2013). However,
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Some of these allegations appear in filings other than the amended complaint; specifically, this opinion relies on
allegations in the original complaint and Gayle’s opposition to the motion to dismiss. “[I]n cases where a pro se
plaintiff is faced with a motion to dismiss, it is appropriate for the court to consider materials outside of the
complaint to the extent they are consistent with the allegations in the complaint.” Donhauser v. Goord, 314 F. Supp.
2d 119, 121 (N.D.N.Y. 2004) (quotation marks omitted) (collecting district court cases); see also Gill v. Mooney,
824 F.2d 192, 195 (2d Cir. 1987) (considering allegations in pro se plaintiff’s opposition to motion to dismiss).
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this requirement does not apply to legal conclusions, bare assertions, or conclusory allegations.
Ashcroft v. Iqbal, 556 U.S. 662, 678, 681, 686 (2009) (citing Bell Atl. Corp. v. Twombly, 550
U.S. 544, 555 (2007)). A plaintiff is required to support his claims with sufficient factual
allegations to show “more than a sheer possibility that a defendant has acted unlawfully.” Id. If
the plaintiff has not “nudged [his] claims across the line from conceivable to plausible, [the]
complaint must be dismissed.” In re Express Scripts Holding Co. Sees, Litig., No. 16 Civ. 3338
(ER), 2018 WL 2324065, *6 (S.D.N.Y. May 22, 2018) (quoting Twombly, 550 U.S. at 570).
Moreover, while a pro se plaintiff is permitted certain leeway, a court will “still require that he
plead facts sufficient to ‘state a claim to relief that is plausible on its face.’” Teichmann v. New
York, 769 F. 3d 821, 825 (2d Cir. 2014) (citing Iqbal, 556 U.S. at 678).
III.
DISCUSSION
A.
Trademark Infringement
Gayle has not plead any facts to support his federal, and related state law, trademark
infringement claims. But even if he had, the Lanham Act would not apply to Larko’s use of the
Mark. The Lanham Act, 15 U.S.C. § 1051 et seq., governs trademarks, service marks, and unfair
competition. New York common law claims for trademark infringement and unfair competition
mirror the Lanham Act. Gym Door Repairs, Inc. v. Young Equip. Sales, Inc., 206 F. Supp. 3d
869, 901 (S.D.N.Y. 2016). To prevail in an infringement action a plaintiff must demonstrate:
(1) “that it has a valid mark entitled to protection” and (2) “that the defendant’s use of that mark
is likely to cause confusion.” Juicy Couture v. Bella Intern. Ltd., 930 F. Supp. 2d 489, 498
(S.D.N.Y. 2013) (quoting Time, Inc. v. Petersen Publ’g Co. LLC, 173 F.3d 113, 117 (2d Cir.
1999)). A mark is entitled to protection when it is inherently distinctive. Times, Inc., 173 F.3d at
117; see also Lewinson v. Henry Holt & Co., LLC, 659 F. Supp. 2d 547, 569 (S.D.N.Y. 2009)
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(declining to find short, ordinary phrase as distinctive for copyright purposes). Gayle has failed
to plead a single fact that shows the Mark is inherently distinctive.
But even if he did, Larko’s use of the phrase “Art We All One” is protected free
expression under the Lanham Act and the First Amendment. See Rogers v. Grimaldi, 875 F.2d
994, 999 (2d Cir. 1989) (construing that Lanham Act should “apply to artistic works only where
the public interest in avoiding consumer confusion outweighs the public interest in free
expression” due to First Amendment considerations); see also Silverman v. CBS Inc., 870 F.2d
40, 48 (2d Cir. 1989) (“In the area of artistic speech…enforcement of trademark rights carries a
risk of inhibiting free expression….”). A defendant’s use of a mark in an artistic work comports
with the Lanham Act when the mark is (1) artistically relevant to the underlying work, and (2)
not explicitly misleading as to the source or content of the work. Rogers, 875 F.2d at 1006.
Artistic relevance is satisfied unless the use of the trademark has no artistic relevance whatsoever
to the underlying work; it is a low threshold. Louis Vuitton Malletier v. Warner Bros. Entm’t.,
868 F. Supp. 2d 172, 178 (S.D.N.Y. 2012). A mark is misleading if it induces members of the
public to believe the work was prepared or otherwise authorized by the plaintiff. Id. at 179.
Here, the phrase “Art We All One” was in the background among many other cluttered
examples of graffiti in a painting titled “Graffiti Camper, Boston Road,” and so the Mark is
artistically relevant to the painting depicting a graffiti-covered streetscape including an
abandoned camper, among other structures and vehicles, as opposed to arbitrarily chosen to
exploit the publicity value of the Mark. Id. at 178 (citing Rogers, 875 F.2d at 1001). This use
also does not raise questions of authorization from plaintiff as the exhibition was promoted as a
painting made by Larko. Doc. 34, 9. Gayle submitted Instagram hashtag captions and website
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screenshots, which show that the phrase “Art We All” was not used to promote the paining, but
instead Defendants used phrases like “#graffiti” and “#streetart.” Doc. 30, 10.
Similarly, Gayle has not demonstrated confusion to the public. The proper inquiry when
deciding a claim of consumer confusion is whether it is likely that an appreciable number of
ordinarily prudent consumers would be misled about the source or sponsorship of the service in
question. Chambers v. Time Warner, Inc., 282 F.3d 147, 155 (2d Cir. 2002). Here, Gayle
alleges that Defendants capitalized on the Mark’s brand name recognition in relation to
promoting art gallery services. Doc. 6, 6. But he does not plead that it would cause confusion as
to the source of the Mark. These are conclusory allegations that fail to raise a “serious question”
as to a likelihood of confusion. Gottlieb Dev. LLC v. Paramount Pictures Corp., 590 F. Supp. 2d
625, 631 (S.D.N.Y. 2008).
Furthermore, where it would be difficult for even a keen observer to pick out the
allegedly infringed mark, for example, such as when it appears in the background of a film
scene, a plaintiff cannot plausibly establish confusion. Id. at 634–35. Here, Larko’s sole use of
the phrase “Art We All One” was in small red lettering in the background of a single painting.
Doc. 30, 10. No art gallery attendee would consider whether Gayle or Defendants sponsored the
writing on the wall, surrounded by other graffiti, depicted in the painting. Gottlieb, 590 F. Supp.
2d at 635. Lastly, Gayle makes no claims to style, font, or color in his Mark, thus his allegation
that Larko mimicked those features exactly is unavailing. Doc. 6, 5; Doc. 35, Ex. B. See
Museum of Modern Art v. MOMACHA IP LLC, 339 F. Supp. 3d 361, 379 (S.D.N.Y. 2018)
(describing example of actual confusion when person wrote museum to confirm logo’s affiliation
because font and style were similar to allegedly infringed mark). Accordingly, Gayle’s
trademark infringement claim fails.
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B.
Copyright Infringement
Gayle’s claim of copyright infringement also fails because he has not plead sufficient
facts to support it. To establish copyright infringement, a plaintiff must demonstrate “(1)
ownership of a valid copyright, and (2) copying of constituent elements of the work that are
original.” Kwan v. Schlein, 634 F.3d 224, 229 (2d Cir. 2011) (quoting Feist Publ’ns, Inc. v.
Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991)). Courts in the Southern District of New
York have held that to meet the requirements of Rule 8(a), a complaint must plead with
specificity the acts by which a defendant has committed copyright infringement. See e.g.,
Marvullo v. Gruner & Jahr, 105 F. Supp. 2d 225, 230 (S.D.N.Y. 2000). Specifically, a plaintiff
must allege (1) which specific original works are the subject of the copyright claim; (2) that the
plaintiff owns the copyrights in those works; (3) that the copyrights have been registered in
accordance with the statute; and (4) by what acts during what time the defendant infringed the
copyright. Kelly v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992), aff'd sub nom. Kelly v. L.L.
Cool J, 23 F.3d 398 (2d Cir. 1994) (citing Franklin Elec. Publishers v. Unisonic Prod. Corp.,
763 F. Supp. 1, 4 (S.D.N.Y. 1991)).
Gayle has not met any part of the copyright infringement standard. First, while in his
opposition to the motion he alleges that the phrase “Art We All” is subject to the two copyright
registrations he owns, he does not provide the specific original works he used to register the
copyrights. Doc. 31, 3. At best, Gayle included a picture titled “The Original,” which depicted a
camper in front of a rectangular structure, covered in graffiti including and with the phrase “Art
We All One” written on the structure. Doc. 2. However, this image contains no date or
indication of how it is connected to the copyright registrations. Doc. 30, 8. Thus, the Court has
no original works to compare Larko’s use of the phrase to or determine whether Gayle owns
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copyrights for. Next, Gayle has not shown that the copyrights were registered in accordance
with the statute. On its face, the phrase is not copyrightable. Moody v. Morris, 608 F. Supp 2d
575, 579 (S.D.N.Y. 2009) (“[I]t is axiomatic that words, short phrases, titles and slogans are not
subject to copyright, even if they are trademarked.”); see also 37 C.F.R. §202.1(a) (listing
examples of works not subject to copyright like “[w]ords and short phrases such as names, titles,
and slogans”). Lastly, Gayle has not plead the date he obtained the copyright registrations and so
the Court cannot properly assess whether Defendants’ alleged use of the disputed phrase
infringed the copyright.
Even if assuming arguendo Gayle did plead sufficient facts to satisfy the elements of
copyright infringement, his claim would still fail because including a short phrase in an
expressive piece of art is de minimis use which does not rise to the level of infringement. See
Gayle v. HBO, 2018 U.S. Dist. LEXIS 73254, at *3–4 (S.D.N.Y. 2018) (discussing similar
trademark and copyright claims brought by Gayle for the phrase “Art We All”). In the copyright
context, de minimis use applies to (1) technical violations so trivial the law will not impose
consequences on it, or (2) to copying that occurred to such a trivial extent that it falls below the
qualitative standard of substantial similarity with the allegedly infringed copyright. Id.
Defendants’ limited use of the phrase in the background of the painting is de minimis. It was
displayed on just one occasion at the Lyons Gallery exhibition. Doc. 30, 10. Thus, Gayle’s
copyright infringement claim fails.
IV.
CONCLUSION
In sum, Defendants’ motions to dismiss are GRANTED. Docs. 29–30. The Court
certifies, pursuant to 28 U.S.C. § 1915(a)(3), that any appeal from this Order should be taken in
good faith, and therefore in forma pauperis status is denied for the purpose of an appeal.
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