Norris v. Goldner

Docket Number19 Civ. 5491 (PAE) (SN)
Decision Date24 August 2023
PartiesALEXANDER NORRIS, Plaintiff, v. MARC GOLDNER, et al, Defendants.
CourtU.S. District Court — Southern District of New York



MARC GOLDNER, et al, Defendants.

No. 19 Civ. 5491 (PAE) (SN)

United States District Court, S.D. New York

August 24, 2023



This copyright and trademark action arises out of the breakdown of a business relationship between plaintiff Alexander Norris, a visual artist behind a popular webcomic series, and defendants Marc Goldner and his companies, which manufacture toys, games, and books. Norris's best-known character is "Blob." In each comic strip, Blob suffers one of life's banal misfortunes and exclaims its catchphrase, "Oh no." A representative example appears below:

(Image Omitted)

Dkt. 119, Ex. 3 at 4.

The dispute between Norris and Goldner centers on their contract. In Norris's view, their contract is of only limited scope, giving Goldner copyright rights with respect only to a planned Blob-themed boardgame and stuffed animal. In Goldner's view, the contract is far broader, conveying rights not just to the planned boardgame and its derivatives, but also to all of Norris's work featuring Blob. In this action, Norris brings a range of claims against Goldner and his


companies, arising from Goldner's (1) registering trademarks derived from Norris's webcomics and (2) failing to pay Norris under their contract. Whether those claims are viable turns in large part on how the contract is read.

Pending now are cross-motions for summary judgment. In a thorough and perceptive Report and Recommendation (the "Report"), the Hon. Sarah Netburn, United States Magistrate Judge, adopted the narrower construction of the parties' contract urged by Norris. Her Report recommends granting Norris's motion in part and denying defendants' motion in full. The Court agrees with Judge Netburn's interpretation of the contract and adopts the Report in substantial part. The Court enters summary judgment for Norris as to the copyright and trademark-cancellation claims. However, as to Norris's trademark-infringement claim, because the evidence cannot establish that defendants ever "use[d]" the relevant mark "in commerce," 15 U.S.C. § 1125, the Court departs from the Report, and enters partial summary judgment for defendants.

I. Background[1]

A. Facts

1.The Parties and Their Agreements


In 2015, Norris first used Blob in a webcomic. PI. 56.1 ¶¶ 1-3; see also Norris Decl.¶5; Norris Decl., Ex. 1 at 1 (screenshots of Blob's first comics).[2] Blob, inNorris's words, "tap[s] into the current internet Zeitgeist of self-conscious pessimism to hilarious and heartbreaking effect." Norris Decl. ¶ 4. In 2016, buoyed by Blob's success, Norris launched "Webcomic Name," a weekly comic strip based on Blob, and acquired the associated domain, PI. 56.1 ¶¶ 6-8; see also Norris Decl. ¶ 6. That same year, Norris set up an online shop, "The 'Oh No' Shop," which sold merchandise that featured Blob and its catchphrase, "Oh no." PI. 56.1 ¶ 9; see also Norris Decl., Ex. 1 at 2-4. Although "Webcomic Name" began as the name of just a comic strip, it soon became Norris's overarching brand for "illustrations, literary works, and workshops." PI. 56.1 ¶ 8; see also Norris Decl. ¶¶ 6-7.

Enter boardgame designer Jason Wiseman. By early 2017, Wiseman and Norris had embarked upon two collaborations. The first related to Wiseman's tabletop card game, “Pretending to Grownup,” which had, in late 2016, received 6,000 orders on a crowdfunding platform and was about to enter its first printing. See Goldner Dep. Tr. at 17-19. The game featured a “bonus card,” illustrated by Norris, that depicted Blob and its catchphrase. See Goldner Decl. ¶ 2. In a separate agreement, Norris “g[a]ve . . . full ownership of the single guest illustration” to Wiseman and “any successors or assigns . . . for any future use.” Id., Ex. 2 at 2


("Norris and Wiseman Agreement"). The second collaboration related to a proposed tabletop card game that would "incorporate the style, concept, and characters of 'Webcomic Name.'" Norris Decl.¶12; see also PI. 56.1¶12. Wiseman told Norris he was considering an external boardgame publisher, Marc Goldner, to publish and distribute that game. Norris Decl. ¶¶ 9-10; see also VX. 56.1 ¶ 14-

On February 6, 2017, Wiseman emailed Goldner, with whom he had worked in the past, to discuss, among other things, Pretending to Grownup and the as-yet-untitled Webcomic Name card game. See Goldner Dep. Tr. at 17-18; Goldner Decl., Ex. 1 at 2. Goldner and his companies, Golden Bell Entertainment, LLC ("GB Entertainment") and Golden Bell Studios, LLC ("GB Studios"), work with "writers, artists, designers, and other creators" to publish and distribute toys, games, and books. Def. Br. at 2. In the email, Wiseman told Goldner that he had "100% free reign [sic]" over both properties and proposed that Wiseman and Goldner work together "to reduce [Wiseman's] workload." Goldner Decl., Ex. 1 at 2; see also Goldner Dep. Tr. at 19-22.

From there, things moved quickly. That same week, on February 12, GB Entertainment entered into a contract with Wiseman. In it, GB Entertainment agreed to publish, print, and market several of Wiseman's board games, including "the properties tentatively entitled 'Pretending to Grownup' . . . and 'Webcomic Name Game.'" Dkt. 131, Ex. 1 at 1 ("Wiseman and GB Entertainment Agreement"). In exchange, Wiseman agreed to transfer "100% of the copyright and 100% of the trademark" of both works to GB Entertainment, to split the profits of future sales, and to have the same terms apply to "[a]ll future derivative works." Id. at 1-3. Norris was not a party to this contract; instead, Wiseman and Norris appear to have had a


separate, informal agreement to split the proceeds of Webcomic Name Game. See Goldner Decl.,Ex. 3 at 2.

A few months later, Goldner decided that he should have a direct relationship with Norris, rather than only working with Norris through Wiseman. See Goldner Dep. Tr. 38. On June 26, Goldner emailed Norris to introduce himself, and suggested that Norris sign a contract with GB Entertainment "so its [sic] all official and you're getting half the payment as promised and complimentary games." Goldner Decl., Ex. 3 at 2. In the same email, Goldner expressed his enthusiasm for the "derivative merchandise" that would accompany the Webcomic Name Game, including "the cutest Stuffed Plush ever," and noted that the "potential[] for a stand alone comic, a children's book, or something else." Id.

On July 1, Goldner sent Norris a proposed contract. See Goldner Decl., Ex. 4 at 3. A few days later, on July 3, Norris replied, expressing concerns. See Id. at 1. Norris wrote: "I will be working with publishers on a book .... I want to make it clear that in no way does Golden Bell take ownership of any of the characters, images or story content except in its application in a tabletop game." Id. On July 11, to reassure Norris, Goldner sent an edited draft of the contract that "specified its [sic] for game and stuffed animal." Id. Goldner explained that Wiseman "had agreed to us purchasing the rights for the [Webcomic Name] game already and that part of the deal was already done." Id. "You are obviously in the free and clear," Goldner wrote, "to work on your property outside of the context of our contract." Id.

On August 10, Goldner and Norris executed the amended contract. PI. 56.1 ¶ 27; Def 56.1 If 5. By its terms, the agreement was "with respect to the production of the properties tentatively entitled 'Webcomic Name Game' and 'Webcomic Name Stuffed Animals' (the 'WORKS') . . . and any tie-ins, spinoffs, or other commercial development of the WORKS such


as Sequels, Prequels, Reboots, Remakes, and Expansions." Collaboration Agreement at 2. In short, GB Entertainment was to receive "100% of the copyright, 100% of the trademark, . . . and 95% of the net sales of [the] WORKS," and Norris was to receive a "$3,125 upfront advance against net sales royalties within 30 days of [GB Entertainment] receiving the final files ... for 'Webcomic Name Game'" and "an additional $2,500 . . . upon delivery to [GB Entertainment] of the final print-ready files, the PSD files, the AI files, the In Design Files, and any other files pertaining to the [Webcomic Name Game]." Id. Other clauses governed future works. See Id. at 4.

Two months later, on October 31, Norris entered into an agreement with Andrews McMeel Universal, a book publisher, to publish a book of Norris's Blob-themed comic strips. See Goldner Decl., Ex. 14 at 2.

2.The Parties' Competing Trademark Applications

After their contract was signed, GB Entertainment filed several trademark applications related to Norris's illustrations and their proposed Blob-themed game. First, on November 30, 2017, GB Entertainment filed an application to register "Webcomic Name" as a trademark in International Class ("IC") 28 for "Board games; Card games; Game cards; Party games; Plush dolls; Plush toys; Stuffed dolls and animals; Stuffed toy animals; Tabletop games; Soft sculpture plush toys; Stuffed and plush toys."[3] Norris Decl., Ex. 7 (the "First Application") at 1-2. The


U.S. Patent and Trademark Office ("USPTO") approved GB Entertainment's application as Registration No. 5,629,281 (the '"281 Mark"). See Norris Decl., Ex. 8 at 1.

Second, on October 9, 2018, GB Entertainment filed an application to register "Webcomic Name" as a trademark in IC 16 for "Comic books; Comic strips; Comic strips' comic features; Comics; Newspaper comic strips," and in IC 25 for "T-shirts." Norris Decl., Ex. 9 (the "Second Application") at 1-2. As part of this application, Goldner filed specimens to show his use of the mark in commerce, including screenshots of Norris's social-media platforms that include cartoons of Blob. See Id. at 7-9. This application has since been abandoned.[4]

Third, on November 8, 2018, GB Entertainment filed an application to...

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