Easter Unlimited, Inc. v. Rozier, 18-CV-06637 (KAM)

CourtUnited States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
PartiesEASTER UNLIMITED, INC. d/b/a F WORLD, Plaintiff, v. TERRY ROZIER, Defendant.
Docket Number18-CV-06637 (KAM)
Decision Date27 September 2021


TERRY ROZIER, Defendant.

No. 18-CV-06637 (KAM)

United States District Court, E.D. New York

September 27, 2021



Plaintiff Easter Unlimited, Inc. d/b/a Fun World (“Plaintiff” or “Easter”) commenced this action alleging that Defendant Terry Rozier (“Defendant” or “Mr. Rozier”) unlawfully produced merchandise bearing a design in violation of Plaintiff's copyright and trademark rights. Plaintiff asserts six claims pursuant to the Copyright Act, 17 U.S.C. § 501 et seq., and the Lanham Act, 15 U.S.C. § 1114, including the following: direct copyright infringement (Count I), contributory copyright infringement (Count II), vicarious copyright infringement (Count III), trademark infringement (Count IV), federal trademark counterfeiting (Count V), and dilution by blurring (Count VI). (See generally ECF No. 13, Amended Complaint (“Am. Compl.”).) Plaintiff seeks statutory damages under the Copyright Act, actual damages under the Lanham Act,


permanent injunctive relief, and attorneys' fees and costs. (Id. at 11-12.)

Pending before this Court are a motion for partial summary judgment filed by Plaintiff and a cross-motion for summary judgment filed by Defendant. Plaintiff moves for partial summary judgment on its claims against Defendant as to Counts II-IV for contributory copyright infringement, vicarious copyright infringement, and trademark infringement. (See ECF No. 49-5, Memorandum of Law in Support of Plaintiff's Motion for Partial Summary Judgment (“Pl. Summ. J. Mem.”).) Defendant moves for summary judgment on all six/ of Plaintiff's claims. (See ECF No. 52-22, Memorandum of Law in Support of Defendant's Motion for Summary Judgment (“Def. Summ. J. Mem.”).) For the reasons set forth below, Plaintiff's motion for partial summary judgment is DENIED in its entirety. Defendant's cross-motion for summary judgment is GRANTED.


I. Factual Background[1]

A. The Parties

Plaintiff Easter Unlimited, Inc., is a business that designs, manufactures, and supplies costumes, masks, holiday


items, and novelty gifts. (Pl. 56.1 Statement (“56.1”) ¶ 2.) Among these products is a ghost face mask with shroud (“Ghost Face Mask”) for which Easter Unlimited holds a copyright registration, effective as of February 23, 1993. (Id. at ¶ 19; ECF No. 14-1, Am. Compl. Ex. 2, Certificate of Registration VA 552 798.) The Certificate of Registration states the “nature of this work” as “sculpture, ” and the title as “ghost mask with shroud” and “Glow in Dark & Fluorescent - Item #9206/9207.” (ECF No. 14-1, Am. Compl. Ex. 2, Certificate of Registration VA 552 798, p. 2.) The certificate of registration for the supplementary registration is dated June 21, 1999, and states the title of the work is “‘Ghost Face' Mask with Shroud.” (Id. at p. 4.) The parties dispute the identity of the original author the Ghost Face Mask; Plaintiff presents a declaration stating that Hong Kong-based sculptor Fok Lee created the mask for Easter Unlimited as part of a work-for-hire relationship, while Defendant presents a declaration stating that Alterian Studios originally created the mask called the “Wailer” in early 1991. (See ECF No. 49-2, Declaration of Alan Geller (“Geller Decl.”) ¶¶ 14-18; see also ECF No. 52-2, Gardner Decl. ¶¶ 17-22.)

Easter Unlimited also holds a trademark registration under registration number 4, 256.208, most recently updated and registered as of December 11, 2012. (See Pl. 56.1 at ¶¶ 30-31;


see also ECF No. 14-2, Am. Compl., Ex. 3; Geller Decl. 8181 9-10.) The United States Patent and Trademark Office ("USPTO") describes the trademark as follows:

The mark consists of a stylized representation of a ghost outlined in red with a white face, black eyes, nose and mouth, a black cloak and holding a black and gray knife in its left hand. The stylized wording "Ghost Face" appears in shades of gray to white below the ghost design with a red drop hanging off the letter "F" in "Face". The Black rectangle represents background only and is not part of the mark

(ECF No. 14-2, Am. Compl. Ex. 3, USPTO Reg. No. 4, 256, 208, at p. 1.) The mark in the USPTO registration is depicted below:

(Image Omitted)


Defendant Terry Rozier is a professional basketball player in the National Basketball Association ("NBA") who currently plays for the Charlotte Hornets. (Def. 56.1 ¶ 1.) Mr. Rozier began his NBA career when he was drafted in the first round of the 2015 NBA draft by the Boston Celtics. (Id. at ¶ 2.) In 2018, Mr. Rozier, a backup guard, filled in when Celtics' star point guard Kyrie Irving ("Mr. Irving") was


injured; this was Mr. Rozier's first start after appearing in more than 160 regular season games. (Def. 56.1 ¶ 3; PI. 56.1 ¶ 33.) Mr. Rozier became the first NBA player since the 1970-71 season to earn a triple-double in his first career start. (Pl. 56.1 at ¶ 34.)

B. Events Giving Rise to the Complaint

Plaintiff alleges that the Ghost Face Mask for which it holds a copyright registration, appears as follows:

(Image Omitted)

(ECF No. 1-1, Compl., Ex. I.)[2] In or about 1996, Easter Unlimited granted Dimension Films a license to use the Ghost Face Mask in the 1996 film Scream. (Pl. 56.1 at SI SI 23-24.) Scream was "a wildly successful box office sensation," and the


success of the film led to three sequels. (Id. at ¶ 25.) The Ghost Face Mask became “widely famous” as a result of its appearance in the Scream movies. (Id. at ¶ 26.)

In 2018, after filling in for Mr. Irving, Mr. Rozier acquired a reputation with Celtics fans and around the league as a “dangerous scorer” and “fearless shooter, ” and Celtics fans as well as sports media began calling him “Scary Terry.” (Pl. 56.1 at ¶ 33; Def. 56.1 at ¶¶ 4-5.) The nickname was intended to humorously invoke the fear that Mr. Rozier's “dangerous” ability to score supposedly instilled in his opponents. (Def. 56.1 at ¶ 6.) Defendant also stated in his declaration in support of his cross-motion for summary judgment that by accepting the “Scary Terry” nickname, he wanted to engage with his fans and share personal aspects of himself, like “[his] love for scary movies, and what they meant for [his] own story.” (ECF No. 52-12, Decl. of Terry Rozier (“Rozier Decl.”) at ¶ 6.)

Defendant adopted the Scary Terry persona, and decided to market a line of t-shirts and hooded sweatshirts to celebrate the persona and capitalize on his growing celebrity status. (Def. 56.1 at ¶ 7.) Defendant determined that the clothing line would feature the name “Scary Terry” and a cartoon depiction of Mr. Rozier wearing a mask associated with a serial killer from popular horror. (Id. at 8.) Mr. Rozier selected a “serial killer mask” to humorously associate his Scary Terry persona


with the common practice of “referring to professional athletes— especially hot-shooting point guards—as ‘killers.'” (Id. at ¶ 9.) In order to underscore the humor implicit in the Scary Terry persona, Mr. Rozier and his management team wanted to have the designs reflect a children's cartoon rather than an actually scary or sinister image. (Id. at ¶ 10.) Defendant and his management team hired Glen Infante, a popular mural artist, to draw the designs for the clothing, and the original design depicted a cartoon drawing of Mr. Rozier in his Celtics jersey wearing a hockey mask like the villain “Jason” from the horror movie Friday the 13th. (Id. at ¶¶ 11-13.) In response to seeing the “Jason” design, Mr. Rozier has been quoted as saying, “We need to get the Scream mask on there, ” and “Nah, we're using Scream.” (Pl. 56.1 ¶¶ 37-38.)

Mr. Rozier subsequently specifically asked for a version of his cartoon character wearing the mask from the movie Scream. (Def. 56.1 at 14; Pl. 56.1 ¶¶ 37-38.) Mr. Rozier made this request for sentimental reasons, including the affection he had for the film as a child, as “its mix of violence and humor provided solace and escapism in a childhood surrounded by violence.” (Def. 56.1 ¶¶ 15-16.) The “Scary Terry” clothing line incorporated Mr. Rozier's suggestion, and the design at issue in this lawsuit was created: a cartoon image of Rozier in his Celtics uniform wearing a Scream mask over the words “Scary


Terry." (Def. 56.1 at ¶ 19.) Mr. Rozier posted a picture of himself wearing the t-shirt design at issue in this lawsuit to his Instagram account on February 15, 2018, depicted immediately below.

(Image Omitted)

(Id. at 19.)

Initially, Mr. Rozier had approximately 500 Scary Terry shirts and hoodies made, including an undisclosed number featuring the design with him wearing the Scream mask, and marketed them through his social media and a dedicated website. (Def. 56.1 ¶¶ 20-21.) Thereafter, Mr. Rozier enjoyed continued success on the court during the 2017-2018 season and helped lead the Celtics on a surprising playoff run, which in turn led to a surge in popularity for the Scary Terry persona. (Id. at ¶ 23.) Mr. Rozier had more Scary Terry apparel produced in order to


capitalize on this surge in popularity. (Id. at ¶ 24.) Both the Scary Terry phenomenon and clothing line received coverage in multiple media publications, and Mr. Rozier authorized Barstool Sports, I Love Boston Sports, and ISlide USA to sell Scary Terry merchandise. (Id. at ¶¶ 24-31.) The Scary Terry clothing was not affiliated with the movie Scream, and was not marketed as affiliated with the movie. (Id. at ¶ 37.) The Scary Terry clothing was also not marketed as being affiliated with or authorized by Easter Unlimited. (Id. at ¶ 38.) Plaintiff Easter Unlimited did not authorize any use by Defendant Mr. Rozier of the Ghost Face mask. (Pl. 56.1 at ¶ 42.) Mr. Rozier received approximately $150, 000 in gross sales revenue from the sale of the Scary Terry clothing. (Def. 56.1 at ¶ 40.)

II. Procedural History

Plaintiff filed...

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