Fischer v. Forrest, 14 Civ. 1304 (PAE) (AJP), 14 Civ. 1307 (PAE) (AJP)

• Decision Date: 16 February 2018
• Docket Number: 14 Civ. 1304 (PAE) (AJP), 14 Civ. 1307 (PAE) (AJP)
• Citation: 286 F.Supp.3d 590
• Parties: James H. FISCHER, Plaintiff, v. Stephen T. FORREST, Jr., Sandra F. Forrest, Shane R. Gebauer, and Brushy Mountain Bee Farm, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

286 F.Supp.3d 590

James H. FISCHER, Plaintiff,

v.Stephen T. FORREST, Jr., Sandra F. Forrest, Shane R. Gebauer, and Brushy Mountain Bee Farm, Inc., Defendants.

14 Civ. 1304 (PAE) (AJP), 14 Civ. 1307 (PAE) (AJP)

United States District Court, S.D. New York.

Signed February 16, 2018

Oscar Michelen, Cuomo LLC, Mineola, NY, Christopher Joseph Gioia, Cuomo LLC, New York, NY, for Plaintiff.

Daniel Kenneth Cahn, Law Offices of Cahn & Cahn, P.C., Huntington, NY, Seth Hudson, Clements Bernard PLLC, Charlotte, NC, for Defendants.

OPINION & ORDER

Paul A. Engelmayer, United States District Judge

These consolidated cases arise out of the termination of a longstanding business relationship between plaintiff James H. Fischer and defendants Stephen T. Forrest, Jr., Sandra F. Forrest, Shane R. Gebauer, and Brushy Mountain Bee Farm, Inc. ("Brushy" and collectively, "Defendants"). Fischer alleges that the Defendants used his likeness and proprietary text and images to promote their own competing knock-off version of his product, Bee–Quick, a honey harvesting aid. He brings claims under the Copyright Act, 17 U.S.C. § 101 et seq. , the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 1201 et seq. , and the Lanham Act, 15 U.S.C. § 1051 et seq. , along with a claim under New York law for unfair competition.

Pending now are Brushy's motions for summary judgment. In a thorough and persuasive Report and Recommendation, the Honorable Andrew J. Peck, United States Magistrate Judge, has recommended granting these motion. For the reasons that follow, the Court agrees, and grants these motions in their entirety.

I. Background¹

A. Facts

1. The Parties

Since 1999, Fischer, an apiarist, has successfully sold the product Bee–Quick. TAC 04 ¶ 26.² Fischer promotes "Bee–Quick" as a unique "honey harvesting aid" that it is "food-safe, non-toxic, not foul smelling, and effective." Id.

In 2000, Fischer began using the following four phrases, among others, in conjunction with the sale of Bee–Quick on his website:

1. "Are you tired of your spouse making you sleep in the garage after using Butyric Anhydride?"

2. "Are you tired of using hazardous products on the bees you love?"

3. "Fischer's Bee–Quick is a safe, gentle, and pleasant way to harvest your honey."

4. "A Natural, Non–Toxic Blend of Oils and Herbal Extracts."

See SAC 04 Ex. 5. Fischer has created non-website advertisements for Bee–Quick using some of the above phrases. See, e.g. , id.

Stephen and Sandra Forrest ("the Forrests") are the founders of Brushy Mountain Bee Farm Inc. ("Brushy"). Dkt. 175 ("Stephen Forrest Decl.") ¶ 2. Brushy is a mail-order business that primarily deals in bee-keeping supplies. Id. ¶¶ 2–3. In 2007, the Forrests hired Shane Gebauer, Brushy's current President. Dkt. 173 ("Gebauer Decl.") ¶ 1; Dkt. 180, Ex. B ("Gebauer Dep.") at 6.

According to Gebauer, between 2008 and 2013, he worked collaboratively with the Forrests on the Brushy catalogue and website. Gebauer Dep. at 24, 26–29; Dkt. 180, Ex. D ("Sandra Forrest Dep. 2") at 6–7. This collaboration entailed, among other things, selecting photographs and text for the products Brushy sold online and through its catalogue. Gebauer Dep. at 27–31. To that end, Gebauer attests, Brushy "would draft its own copy [and] describe the products that it had purchased from other vendors that it was reselling." Id. at 29. Today, Gebauer works with others "to review and approve the Brushy Mountain Bee Farm catalogue." Id. at 31.

The Forrests attest that, around 2009, they largely stopped working on the Brushy catalogue. Dkt. 180 Ex. C ("Stephen Forrest Dep. 2") at 26–27, Sandra Forrest Dep. 2 at 5; Dkt. 176 Ex. C ("Sandra Forrest Dep. 1") at 17. When they did work on the catalogue, however, they generally did so in the manner described by Gebauer. See Sandra Forrest Dep. 2 at 6 ("We would read what the supplier had to say and then we would write it up in a way that we thought would be best to describe the product to our customers."); id. Stephen Forrest Dep. 2 at 12 ("I believe we wrote [product descriptions] when Sandy and I were doing it.").

As of 2014, the Forrests "ceased having any equity interest in Brushy Mountain Bee Farm, Inc." Gebauer Dep. at 9. Brushy Mountain Bee Farm Holdings, Inc. obtained the Forrests' equity in Brushy. Id. at 8.

2. The Fischer–Brushy Relationship

In 2002, Brushy began selling Bee–Quick. Dkt. 174 ("Sandra Forrest Decl.") ¶ 2; Stephen Forrest Decl. ¶¶ 4–5. At that point, Fischer alleges, Brushy became an "Authorized Dealer" of the product. TAC 04 ¶ 32. Stephen Forrest denies this. He attests that Fisher and Brushy never had a written contract. Stephen Forrest Decl. ¶ 4; see also Dkt. 176 Ex. A ("Fischer Dep.") at 9; Gebauer Decl. ¶ 3.

From 2002 onwards, Brushy used the following words (or ones similar to it) to promote Bee–Quick in advertisements:

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 garage after using Bee Go? Are you tired of using a hazardous product on the bees you love? Then this is the product for you!

Sandra Forrest Decl. ¶ 3; Gebauer Decl. ¶ 14 & Ex. F. Sandra Forrest claims that she wrote the above text, although she and Stephen Forrest recalled with certainty only that they wrote the phrase: "Are you tired of your spouse making you sleep in the garage?" Sandra Forrest Dep. 1 at 8–9; Dkt. 176 Ex. D ("Stephen Forrest Dep. 1") at 19. Fischer attests that the Forrests did not author this text. See Dkt. 180 Ex. E ("Fischer Aff.") at 1.

3. Termination of the Fischer–Brushy Relationship

Around 2010, Brushy allegedly began having trouble obtaining Bee–Quick and decided to sell its own version of the product, Natural Honey Harvester, which it obtains from a third-party vendor. Gebauer Dep. at 54–56, 71; Stephen Forrest Dep. 2 at 36. As a result, on December 10, 2010, a Brushy employee sent Fischer an email stating that Brushy would not be selling Bee–Quick in its 2011 catalogue and asking for an address to which it could ship back its remaining Bee–Quick supply. See SAC 04 Ex. 3b (December 10, 2010 Email).

Fischer asserts that, as a result of the December 10, 2010 email, "Defendants immediately lost any right, license, or permission to use any of [his] intellectual property, as all such use was permitted solely in the selling of Plaintiff's product." See TAC 04 ¶ 35; TAC 07 ¶ 47. Defendants accept this proposition in their motions for summary judgment. On the bases of the parties' common attestations, the Court, for purposes of this lawsuit, assumes that as of December 10, 2010, Brushy no longer had any "right," "license," or "permission" to use Fischer's intellectual property.

Fischer did not, however, communicate to Brushy that it no longer had such permission to use his intellectual property until April 2011, when Fischer sent a cease and desist letter, alleging, inter alia , that Brushy was engaged in "copyright infringement." See Gebauer Decl. Ex. D. In a letter dated April 14, 2011, Gebauer replied that "there [did] not seem to be grounds for [Fischer's] request," and that Brushy would "review" Fischer's concerns if he was more "specific." Gebauer Decl. Ex. E. Fischer does not appear to have responded.

After Brushy's December 10, 2010 email, Brushy did not immediately remove Bee–Quick from its website. Gebauer Decl. ¶¶ 13–14 & Ex. F. On December 26, 2010, Bee–Quick was still listed for sale there. See id. And photos of Bee–Quick remained on Brushy's website until at least January 28, 2011, at which point they appeared to have been replaced by photos of Natural Honey Harvester. Gebauer Decl. ¶ 15. Further, Fischer has adduced exhibits indicating that an image of Bee–Quick remained on Brushy's website until at least March 3, 2014. See SAC 04 Exs. 9–12; see also Fischer Aff. at 10 (attesting that links to images of Bee–Quick on Brushy website were still operable as of May 8, 2017).

On January 21, 2011, Brushy shipped its 2011 catalogue advertising Natural Honey Harvester. Def. Br. Ex. 6 at 2–3; Def. Br. Ex. 7 ("Twete Aff.") ¶¶ 3–4 & Exs. A–B. The text in the 2011 catalogue was as follows:

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 100% Natural, non-toxic blend of oils and herb extracts works just like Bee Go® and it smells good! Natural Honey Harvester™ is a safe, gentle, and pleasant way to harvest your honey. Are you tired of your spouse making you sleep in the garage after using Bee Go®? Are you tired of using hazardous products on the bees you love? Then this is the product for you!

Def. Br. Ex. 6 at 3. Gebauer attests that Stephen Forrest came up with the name "Natural Honey Harvester" and that he and Stephen Forrest collaborated on the catalogue text. Gebauer Dep. at 55, 23. In contrast, Stephen Forrest attests that Gebauer came up with this wording. Stephen Forrest Dep. 1 at 37. Between 2012 and 2014, the above text remained largely unchanged in Brushy's catalogues, see SAC 07 Ex. 20 (excerpts from Brushy's catalogues), and it remained online until at least December 28, 2011, id. Ex. 8. Two of Brushy's third-party vendors, The Honey Hole and C & T Bee Supply, used this advertisement in 2012 and 2014. See SAC 07 Exs. 21–22.

On February 7, 2011, Fischer filed a copyright registration for the "text and images of [his] Bee–Quick.com website." TAC 04 ¶ 41; Def. Br. Ex. 4.

According to Fischer, Defendants removed Copyright Management Information ("CMI") from his photographs and other unspecified copyrighted works. Fischer Dep. at 133, 137. As to the photographs, Fischer claims that Defendants removed metadata from a Bee–Quick photo he provided them, Fischer Dep. at 137, and put their own watermark over his photo, TAC ¶ 141. With respect to non-photographic materials, although Fischer's claims as to the precise...