Gayle v. Villamarin
| Decision Date | 07 July 2021 |
| Docket Number | 18 Civ. 6025 (GBD) (GWG) |
| Parties | ITOFFEE R. GAYLE, Plaintiff, v. ANGIE VILLAMARIN, Defendant. |
| Court | U.S. District Court — Southern District of New York |
REPORT & RECOMMENDATION
Itoffee R. Gayle, a visual artist in New York City, brings this copyright and trademark infringement action against Angie Villamarin, another artist, claiming Villamarin sold hats containing a stylized phrase, “Art We All” in violation of the Copyright Act, 17 U.S.C. § 101 et seq. and New York common law. Villamarin now moves for summary judgment on both claims.[1] For the reasons stated below Villamarin's motion should be granted.
The following facts are presented in the light most favorable to Gayle as he is the nonmoving party on this motion for summary judgment.
Gayle is a visual artist living and operating in New York City. Gayle Decl. ¶ 2. In 2012 Gayle developed “the mark ‘Art We All' as a play on the words, and the idea, that we are all one.” Id. ¶ 7. In creating this “mark, ” Gayle was inspired by graffiti artist, Jim Joe, whose “scrawled, child-like and gritty nature” inspires his own style. Id. ¶ 6. Gayle utilizes this mark in graffiti as well as in visual art. Id. ¶ 7.
Since 2012, Gayle's work has been present in New York City, “on social media, and through online profiles [he] . . . created to promote [his] work.” Gayle Decl. ¶ 9. Since 2012 Gayle has also been selling products featuring the “Art We All” mark including “hats, buttons, t-shirts, artworks, prints, stickers and stamps . . . through in-person sales, pop-up stores, trade shows and online.” Id. ¶ 12. In 2016, Gayle directed “nine pieces of artwork” to be submitted “to the United States Copyright Office [(“USCO”)] for registration, ” id. ¶ 14, each piece containing the words “Art We All” with variations as to color and, in some instances, with another word added to the phrase “Art We All, ” see Exh. B of Gayle Decl. (“Deposited Images”). Gayle obtained a copyright for these nine pieces under registration number VA 2-006958 (“‘958 copyright”). Gayle Decl. ¶ 15; see Exh. A of Copyright Letter (“‘958 Copyright Images”); Exh. 6 of Chua Decl. (“‘958 Certificate of Registration”). Only one of the nine images is relevant to Gayle's copyright claim as follows (Figure 1):
Image Omitted
Villamarin is “an artist, fashion designer, and small business owner” also based in New York City. Villamarin Decl. ¶ 2. Villamarin is the founder of the company GreedySouls, id., whose mission is to create products with positive slogans, see id. ¶¶ 3-4. Villamarin came up with the idea for an “ARTWEALL” mark while attending an art festival in Miami in late 2014. Id. ¶ 5. Villamarin was inspired by “the idea of sharing and promoting art of all and for all” and felt “the term ARTWEALL described [her] mission to share and spread opportunities of art for all young aspiring artists.” Id. ¶ 6. Villamarin designed her “ARTWEALL” mark in the summer of 2015 using font from the cover of a music album by popular artist Drake. Id. ¶ 7. She then had this design placed on hats, id. ¶ 8, and began selling and giving away the hats in the fall of 2015 to help promote her mission, id. ¶ 10. Villamarin alleges she had never heard or seen the phrase “Art We All” prior to her own creation. Id. ¶ 11. Villamarin's mark is shown here (Figure 2):
Image Omitted
Gayle alleges Villamarin's hats infringe on his ‘958 copyright and his common law trademark rights in his “Art We All” mark. See First Amended Complaint, filed August 25, 2020 (Docket # 76) ¶¶ 16-21 (“Am. Comp.”). After Gayle became aware of Villamarin, Gayle sent messages to Villamarin and her friends through social media “threatening action for [their] purported violations of his intellectual property rights.” Villamarin Decl. ¶ 16. Gayle Gayle's use of her social media pictures, Villamarin “temporarily ceased selling hats bearing” the “ARTWEALL” mark. Id.
On July 2, 2018, Gayle filed the complaint (Docket # 2) (“Comp.”) in this action, originally proceeding pro se. The original complaint included claims under the Lanham Act for federal trademark infringement and unfair competition. See Comp. ¶ I.A. The parties proceeded with discovery, and Gayle obtained volunteer counsel, see Notice of Appearance, filed January 17, 2020 (Docket # 58); Notice of Appearance, filed January 17, 2020 (Docket # 59). On August 25, 2020, Gayle amended the complaint to state only causes of action for copyright infringement under “17 U.S.C. § 504, ”[2]and trademark infringement under New York common law. See Am. Comp. In other words, the amended complaint no longer asserted any claims under the Lanham Act. Villamarin's answer included counterclaims. See Answer, filed September 8, 2020 (Docket # 77) Counterclaims ¶¶ 27-48 (“Answer”).
Rule 56(a) of the Federal Rules of Civil Procedure provides that a court shall grant summary judgment when “the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). A genuine issue of material fact exists “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In determining whether a genuine issue of material fact exists, “[t]he evidence of the non-movant is to be believed” and the court must draw “all justifiable inferences” in favor of the nonmoving party. Id. at 255 (citing Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59 (1970)); accord Morales v. Quintel Ent., Inc., 249 F.3d 115, 121 (2d Cir. 2001) ().
Once the moving party has shown that there is no genuine issue as to any material fact and that it is entitled to a judgment as a matter of law, “the nonmoving party must come forward with ‘specific facts showing that there is a genuine issue for trial, '” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (emphasis in original) (quoting Fed.R.Civ.P. 56(e)), and “may not rely on conclusory allegations or unsubstantiated speculation, ” Scotto v. Almenas, 143 F.3d 105, 114 (2d Cir. 1998) (citing cases). In other words, the nonmovant must offer “concrete evidence from which a reasonable juror could return a verdict in his favor.” Anderson, 477 U.S. at 256. Where “the nonmoving party bears the burden of proof at trial, summary judgment is warranted if the nonmovant fails to make a showing sufficient to establish the existence of an element essential to its case.” Nebraska v. Wyoming, 507 U.S. 584, 590 (1993) (punctuation omitted). Thus, “[a] defendant moving for summary judgment must prevail if the plaintiff fails to come forward with enough evidence to create a genuine factual issue to be tried with respect to an element essential to its case.” Allen v. Cuomo, 100 F.3d 253, 258 (2d Cir. 1996) (citing Anderson, 477 U.S. at 247-48).
Gayle alleges federal copyright infringement and common law trademark infringement under New York law. See Am. Comp. ¶¶ 16-21. Villamarin seeks summary judgment on both of Gayle's claims. See SJ Mot. We address each claim next.
“In a copyright infringement case, the plaintiff must show: (i) ownership of a valid copyright; and (ii) unauthorized copying of the copyrighted work.” Jorgensen v. Epic/Sony Records, 351 F.3d 46, 51 (2d Cir. 2003) (). A “certification of registration . . . constitute[s] prima facie evidence of the validity of the copyright.” 17 U.S.C. § 410(c). However “the alleged infringer may rebut [this] presumption.” Scholz Design, Inc. v. Sard Custom Homes, LLC, 691 F.3d 182, 186 (2d Cir. 2012). “To demonstrate unauthorized copying, the plaintiff must first show that his work was actually copied; second, he must establish substantial similarity or that the copying amounts to an improper or unlawful appropriation . . . .” Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 131 (2d Cir. 2003) (punctuation omitted). While Gayle's ‘958 copyright includes nine images, see ‘958 Copyright Images, Gayle is alleging copyright infringement only for one of the images, which is reproduced in Section I.A.1 above. See Pl. Opp. at 10.[3]
1. Validity of the Copyright
As Gayle has submitted a certified copy of the ‘958 copyright from the USCO, see ‘958 Certified Images; see also ‘958 Certificate of Registration, he is entitled to the presumption of validity. However, Villamarin argues that Gayle's “Art We All” image is not copyrightable on the ground that it does not “meet[] the minimum level of creativity necessary for copyright protection, ” noting in particular that short phrases and typefaces are not eligible for copyright protection. Def. Reply Mem. at 4.
The USCO has promulgated a regulation that specifically states that “[w]ords and short phrases such as slogans” and “mere variations of typographic ornamentation [and] lettering” are not subject to copyright. 37 C.F.R. § 202.1(a). Nonetheless, “there is no mechanical rule stating how long a phrase must be to enjoy copyright protection, and even the shortest of phrases may merit protection if particularly creative.” Fischer v. Forrest, 2017 WL 2992663, at *9 (S.D.N.Y. July 14, 2017) (citing Heim v....
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