Fischer v. Stephen T. Forrest, Jr., Sandra F. Forrest, Shane R. Gebauer, & Brushy Mountain Bee Farm, Inc., 14 Civ. 1304 (PAE) (AJP)
| Decision Date | 14 July 2017 |
| Docket Number | 14 Civ. 1304 (PAE) (AJP),14 Civ. 1307 (PAE) (AJP) |
| 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 |
REPORT & RECOMMENDATION
Plaintiff James Fischer brought these two related copyright and trademark infringement actions against defendants. Presently before the Court are defendants' summary judgment motions in both actions. (14 Civ. 1304, Dkt. No. 170; 14 Civ. 1307, Dkt. No. 172.)1 For the reasons set forth below, the motions should be GRANTED in their entirety.
Fischer is the inventor of Fischer's Bee-Quick, a product used to facilitate honey harvesting. (Compare 14 Civ. 1307, Dkt. No. 111: 3d Am. Compl. ¶ 6, with 14 Civ. 1307, Dkt. No. 148: Brushy Mtn. Answer ¶ 6.)2 Beginning in 2000, Fischer marketed Fischer's Bee-Quick on hiswebsite using, inter alia, the following four phrases ("the Phrases"):
(Dkt. No. 177: Def. Br. Ex. 10: 9/23/11 Submission at 27; Def. Br. Ex. 15; 14 Civ. 1304, Dkt. No. 50: 2d Am. Compl. Ex. 5.)3 Fischer created derivative promotional materials that used the Phrases, including a brochure. (14 Civ. 1304, 2d Am. Compl. Ex. 5.)
Defendants Stephen and Sandra Forrest were the owners of Brushy Mountain Bee Farm (Dkt. No. 175: Stephen Forrest Aff. ¶ 2), and in 2007 hired defendant Shane Gebauer, Brushy Mountain's current president (Dkt. No. 173: Gebauer Aff. ¶ 1; Dkt. No. 180: Michelen Aff. Ex. B: Gebauer Dep. at 6). In 2014, Brushy Mountain Bee Farm Holdings, Inc. obtained equity in Brushy Mountain Bee Farm and the Forrests "ceased having any equity interest in Brushy Mountain Bee Farm, Inc." (Gebauer Dep. at 14, 19.) According to Gebauer, from approximately 2008 through 2013, he and the Forrests collaborated to design Brushy Mountain's catalogs and website by selecting the images used in each advertisement and drafting "the text that was used to describe the various products." (Gebauer Dep. at 24, 26-31, 86; Michelen Aff. Ex. D: Sandra Forrest Dep. at 6.) Brushy Mountain "would draft its own copy [and] describe the products that it had purchased fromother vendors that it was reselling." (Gebauer Dep. at 29.) Gebauer continues to collaborate with others at Brushy Mountain "to review and approve the Brushy Mountain Bee Farm catalog," the content of which generally mirrors the website. (Id. at 31, 86.) The Forrests claim that they helped assemble the Brushy Mountain catalog and website until approximately 2009—two years after Gebauer's hire—at which time Gebauer assumed full control over the catalog and website content. (Michelen Aff. Ex. C: Stephen Forrest Dep. at 26-27; Dkt. No. 176: Hudson Aff. Ex. C: Sandra Forrest Dep. at 17.)
In 2002, Brushy Mountain began purchasing Fischer's Bee-Quick from Fischer or his distributor; Brushy Mountain re-sold it through its annual catalog and website. (Dkt. No. 174: Sandra Forrest Aff. ¶ 2; Stephen Forrest Aff. ¶¶ 4-5.) The Fischer's Bee-Quick advertisement (with some variation throughout the years) stated:
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 Aff. ¶ 3; Gebauer Aff. ¶ 14 & Ex. F; see also 14 Civ. 1307, Dkt. No. 70: 2d Am. Compl. Ex. 20.) Sandra Forrest states that she wrote the Fischer's Bee-Quick text advertisement, as defendants did with the other products sold through Brushy Mountain's catalog. (Hudson Aff. Ex. C: Sandra Forrest Dep. at 8.) The Forrests further claim that they created the phrase, "Are you tired of your spouse making you sleep in the garage?" but could not recall whether or not they created the remaining phrases that Fischer alleges he created and later copyrighted. (Sandra Forrest Dep. at 8-9; Hudson Aff. Ex. D: Stephen Forrest Dep. at 16-17, 19; see pages 1-2 above.)
Around 2010, Brushy Mountain allegedly was unable to obtain additional shipments of Fischer's Bee-Quick, and defendants decided to sell a comparable product that performed the same function. (Gebauer Dep. at 54-55; Stephen Forrest Dep. at 36.) Defendants purchased the product through a third-party and branded it "Natural Honey Harvester." (Gebauer Dep. at 55-56, 71; Stephen Forrest Dep. at 36.) Gebauer claims that Stephen Forrest created the name "Natural Honey Harvester" and that the product description used in Brushy Mountain's catalog was the product of defendants' collaborative effort. (Gebauer Dep. at 55, 71.) Stephen Forrest, in contrast, claims that Gebauer "wrote the product description himself" as well as "the text that actually appears on the label of Natural Honey Harvester." (Hudson Aff. Ex. D: Stephen Forrest Dep. at 37.)
On December 10, 2010, a Brushy Mountain employee informed Fischer that it was discontinuing the sale of Fischer's Bee-Quick, at which point defendants lost any right to distribute or display Fischer's products. (4 By no later than April 2011, Fischer discovered that Brushy Mountain was selling Natural Honey Harvester, the advertisement for which allegedly infringed on his Fischer's Bee-Quick mark and copyright, and that Brushy Mountain otherwise allegedly was infringing on Fischer's intellectual property in the Brushy Mountain catalog and website. (Gebauer Aff. Ex. D: 4/5/11 Letter.) On April 5, 2011, Fischer wrote to Stephen Forrest demanding that defendants cease their alleged copyright and trademark infringement. (Id.) In an April 14, 2011 response letter, Gebauer, Brushy Mountain's then General Manager, wrote: (Gebauer Aff. Ex. E: 4/14/11 Letter.)
Gebauer concedes that, "[o]n December 10, 2010, Brushy Mountain did not immediately remove the Bee-Quick ad from its website" where it remained until at least December 26, 2010. (Gebauer Aff. ¶¶ 13-14 & Ex. F.) Brushy Mountain's 2011 catalog, mailed to consumers on January 21, 2011, included the following ad for Natural Honey Harvester that used the Phrases:
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: 2011 Catalog at 2; Def. Br. Ex. 7: Twete Aff. ¶¶ 3-4.) Brushy Mountain used the same or a substantially similar advertisement for Natural Honey Harvester in its 2012 through 2014 catalogs (14 Civ. 1307, 2d Am. Compl. Ex. 20), and on its website until at least December 28, 2011 ( ). This advertisement was used by two of Brushy Mountain's third party vendors, The Honey Hole and C&T Bee Supply, in 2012 and 2014. (14 Civ. 1307, 2d Am. Compl. Exs. 21-22.)
Moreover, Gebauer admits that photos of Fischer's Bee-Quick remained on Brushy Mountain's website until January 28, 2011, when they were replaced with images of Natural Honey Harvester. (Gebauer Aff. ¶ 15.) Fischer's exhibits, however, purportedly show an image of Fischer's Bee-Quick on Brushy Mountain's website as late as March 3, 2014. (See 14 Civ. 1304, 2d Am. Compl. Exs. 9-12.)
Fischer also alleges that defendants intentionally removed copyright management information ("CMI") from Fischer's promotional brochure and the Fischer's Bee-Quick bottle photos. Fischer's brochures that he used on the Fischer's Bee-Quick website and provided to defendants contained the Fischer's Bee-Quick logo, the four copyrighted Phrases, other information and a copyright notice. (14 Civ. 1304, 2d Am. Compl. Ex. 5; Fischer Dep. at 131-32, 137, 183-84.)5 When defendants continued using the copyrighted Phrases in their ads for Natural Honey Harvester after their relationship with Fischer terminated, defendants changed the textual reference in one of the Phrases from "Fischer's Bee-Quick" to "Natural Honey Harvester." (Fischer Dep. at 132-33, 137-38; Fischer Aff. at 6; 14 Civ. 1307, 2d Am. Compl. Ex. 20); see also Fischer v. Forrest, 14 Civ. 1304, 2015 WL 195822 at *8 (S.D.N.Y. Jan. 13, 2015) (Engelmayer, D.J.) ( ). Fischer alleges that defendants also stripped the metadata from Fischer's original Fischer's Bee-Quick bottle photo displayed on Brushy Mountain's website (Fischer Dep. at 137-38; 14 Civ. 1304, 2d Am. Compl. Ex. 9), and overlaid the photo with a watermark of the Brushy Mountain Bee Farm logo ( ...
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