Sadhu Singh Hamdad Trust v. Ajit Newspaper Adv.

• Decision Date: 14 August 2007
• Docket Number: No. 04 CV 3503(CLP).,04 CV 3503(CLP).
• Citation: 503 F.Supp.2d 577
• Parties: SADHU SINGH HAMDAD TRUST, Plaintiff, v. AJIT NEWSPAPER ADVERTISING, MARKETING AND COMMUNICATIONS, INC., et al., Defendants.
• Court: U.S. District Court — Eastern District of New York

503 F.Supp.2d 577

SADHU SINGH HAMDAD TRUST, Plaintiff, v. AJIT NEWSPAPER ADVERTISING, MARKETING AND COMMUNICATIONS, INC., et al., Defendants.

No. 04 CV 3503(CLP).

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

August 14, 2007.

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James K. Haney, Wong & Fleming, Princeton, NJ, for Plaintiff.

Jason M. Drangel, Robert L. Epstein, Epstein Drangel Bazerman & James, LLP, New York, NY, for Defendants.

MEMORANDUM AND ORDER

CHERYL L. POLLAK, United States Magistrate Judge.

On August 12, 2004, plaintiff Sadhu Singh Hamdad Trust (the "Trust") filed this action, alleging claims of trademark and copyright infringement by defendants Ajit Newspaper Advertising, Marketing and Communications, Inc.,¹ and Darshan Singh Bains,² in violation of the Lanham Act, 15 U.S.C. §§ 1051 et seq.; the Paris Convention for the Protection of Industrial Property; the Copyright Act of 1976, 17 U.S.C. §§ 101-810, 1001-1010; the Berne Convention for the Protection of Literary and Artistic Works (the "Berne Convention"); and various state law statutory provisions.

On March 30, 2007, this Court issued a Memorandum and Order ("Order"), denying plaintiffs motion for summary judgment on its trademark and state law claims, and granting defendants' motion for summary judgment on all claims except for plaintiffs claim of copyright infringement. That claim was denied without prejudice pending the submission of supplemental paperwork addressing plaintiffs claimed copyright ownership under the laws of India. Having now received the parties' additional submissions, the Court denies both plaintiff's and defendants' cross-motions for summary judgment on plaintiffs sole remaining claim of copyright infringement.

FACTUAL BACKGROUND

The underlying facts are set forth in this Court's earlier Memorandum' and Order, dated March 30, 2007 ("March Order"). For purposes of this motion, the salient facts are as follows:

In the Punjab region of India, plaintiff Trust publishes and owns a daily newspaper, the Ajit Daily. (Pl.'s 56 Stmnt ¶ 1; Defs.' Resp. at 2). The parties do not dispute that the Ajit Daily began publication in India on November 1, 1955, registered its name "Ajit" in accordance with Indian newspaper law, and has continued to publish to date' without interruption. (PL's 56 Stmnt ¶ 5; Defs.' Resp. at 3).

Indeed, defendants concede that there is evidence that when plaintiff began operations in 1955, it filed a registration in India pursuant to the Press & Registration Books Act, 1867, and the Press & Regulation of Newspapers (Central) Rules of 1956. (Defs.' Resp. at 8; PL's 56 Stmnt ¶ 14). Although the Trust argues that this registration was sufficient to protect its copyrights from infringement, defendants disagree, contending that this registration is not the equivalent of a copyright registration, and noting that plaintiff only recently complied with the requirements of copyright registration in India. (Defs.' Resp. at 8).

Defendant Naysun publishes a free weekly newspaper called the Ajit Weekly, which is distributed in the United States, Canada, the United Kingdom and Europe, where there are substantial expatriot Punjabi populations. (Pl.'s 56 Stmnt ¶¶ 25, 42; Defs.' 56 Stmnt ¶¶ 2, 4, 8, 12). Defendants began in 1997 to distribute the Ajit Weekly in New York, New Jersey and Connecticut, followed by California in 1998. (Defs.' 56 Stmnt ¶¶ 4-6; Pl.'s 56 Stmnt ¶¶ 35, 39; Defs.' Resp. at 16-17). On November 23, 1999, defendants obtained U.S. Registration No. 2,294,117 for the trademark "The Ajit," in stylized letters, for "newspapers printed in Indian regional language." (Defs.' 56 Stmnt ¶ 13).

The Trust alleges that defendants deliberately copied the Ajit Daily's name and masthead logo, including a similar color scheme, in order to reap the benefits of an unwarranted and false association with the Ajit Daily. (Pl.'s 56 Stmnt' If 28). Plaintiff claims that the term "Ajit," which was the name of a famous Sikh warrior, was chosen specifically to represent the purpose and nature of the newspaper and is otherwise not typically associated with newspapers or printing in. general. (Id. ¶ 12). Plaintiff also claims that the Ajit Daily has always published under a distinct masthead with a particular logo identified by Punjabi readers as associated with the newspaper. (Id. ¶ 11). Plaintiff alleges that the current masthead and logo, in use since 1984³ (id. ¶¶ 11, 13; Defs.' Resp. at 7-8), consists of two distinct features: (1) the top hook of the word "Ajit" in the logo is flattened and extends further to the left of the other characters than in standard Punjabi script; and (2) the bottom hook on the right-hand corner of the word "Ajit" is cut off to form a flatter, lower edge than is standard. (Pl.'s 56 Stmnt ¶ 13). Plaintiff alleges that because the Ajit Weekly bears the same name and logo as the Ajit Daily, Punjabi readers have in fact confused the Ajit Weekly with the Ajit Daily and believe that the Ajit Daily has shifted its views because the Ajit Weekly prints items considered offensive in the. Sikh religion and Punjabi culture. (Id. ¶¶ 47-48, 51-53).⁴

Defendants dispute plaintiffs claim that the term "Ajit" is unique, noting that many other Indian newspapers are associated with the name and indeed, the word is not only a common personal name and surname, but is used to sell other products. (Defs.' 56 Stmnt ¶¶ 23-26, 28; Defs.' Resp. at 6-7). Defendants, also dispute that the logo is unique or distinctive (Defs.' Reap. at 7-8), suggesting that it is nearly identical to standard Punjabi fonts with "two slight modifications." (Id. at 6, 8).

PROCEDURAL BACKGROUND

On February 22, 2006, plaintiff filed a motion for summary judgment on its claims under the Lanham Act, the Copyright Act, New York's Anti — Dilution Law, and New York's Anti — Deceptive Trade Practices Law. Defendants cross-moved, arguing that plaintiff was not entitled to either trademark or copyright protection for its logo in the United States, and that in absence of proof of ownership of a distinctive mark, plaintiff could not demonstrate a violation of New York state law.

By Memorandum and Order dated March 30, 2007 ("March Order"), this Court granted defendants' motion for summary judgment, dismissing plaintiffs trademark and state law claims. The parties' cross-motions for summary judgment on the claims of copyright infringement were denied without prejudice pending the submission of supplemental paperwork addressing plaintiffs claimed copyright ownership under the laws of India. The parties thereafter submitted supplemental paperwork⁵ addressing plaintiffs sole remaining claim of copyright infringement.

For the reasons set forth below, both plaintiffs and defendants' motions for summary judgment on the copyright infringement claim are denied.⁶

DISCUSSION

A. Motion for Summary Judgment

1) Standards

As noted in the Court's March Order, the burden of establishing that there is no genuine issue of material fact in dispute rests with the moving party, see Fed. R.Civ.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Ford v. Reynolds, 316 F.3d 351, 354 (2d Cir.2003); Thompson v. Gjivoje, 896 F.2d 716, 720 (2d Cir.1990), and the. Court should not grant summary judgment unless "it appears beyond doubt that the plaintiff can. prove no set of facts in support of his claim which would entitle him to relief." Egelston v. State Univ. Coll. at Geneseo, 535 F.2d 752, 754 (2d Cir.1976) (internal citations omitted); see also Auletta v. Tully, 576 F.Supp. 191, 194-95 (N.D.NX.1983), aff'd, 732 F.2d 142 (2d Cir.1984) (stating that summary judgment should be granted only if "it is clear that the requirements of Fed.R.Civ.P. 56 have been satisfied"). Once the moving party discharges its burden of proof under Rule 56(c), the party opposing summary judgment "has the burden of coming forward with `specific facts showing that there is a genuine issue for trial.'" Phillips v. Kidder, Peabody & Co., 782 F.Supp. 854, 858 (S.D.N.Y.1991) (quoting Fed. R.Civ.P. 56(e)). Any "`inferences to be drawn from the underlying facts ... must be viewed in the light most favorable to the party opposing the motion." Matsushita Elec. Indus., Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587-88, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (quoting United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962)).

B. Plaintiffs Copyright Claim

Plaintiff alleges that defendants have infringed on plaintiffs rights and violated copyright law by copying and using the Daily Ajit masthead and logo without authorization. (PL's Mem.⁷ at 13).

Section 501(a) of the Copyright Act, 17 U.S.C. §§ 101-1101 (1997) (the "Act"), proscribes the unauthorized copying of original works of authorship that belong to an owner holding exclusive copyright to such work. 17 U.S.C. §§ 501(a); see Fitzgerald Publ'g Co. v. Baylor Publ'g Co., 807 F.2d 1110, 1113 (2d Cir.1986). To prove a violation of the Act, the plaintiff must establish: (1) that it owns a valid copyright, and (2) that defendants have engaged in the unauthorized copying of that protected work. See Island Software and Computer Service, Inc. v. Microsoft Corp., 413 F.3d 257, 260 (2d Cir.2005); Rmar Corp. v. Domenick, 105 F.3d 99, 103-04 (2d Cir.), cert. denied, 522 U.S. 908, 118 S.Ct. 265, 139 L.Ed.2d 191 (1997); Whimsicality, Inc. v. Rubie's Costume Co., Inc., 891 F.2d 452, 455 (2d Cir.1989); Eckes v. Card Prices Update, 736 F.2d 859, 861 (2d Cir.1984).

Plaintiff relies on Article 5 of the Berne Convention to support its argument that although it has not registered its logo in the United States, it is nonetheless entitled to the same protections in the United States because it legally registered its masthead logo in India. (Id.) The exclusive source of protection for foreign works in the United States is the Copyright Act. See Bridgeman Art Library, Ltd. v. Corel Corp.,...