Trombetta v. Novocin

• Decision Date: 02 October 2019
• Docket Number: No. 18-CV-993 (RA),18-CV-993 (RA)
• Citation: 414 F.Supp.3d 625
• Parties: Annamarie TROMBETTA, Plaintiff, v. Norb NOVOCIN, Marie Novocin, Estate Auctions, Inc., Defendant.
• Court: U.S. District Court — Southern District of New York

414 F.Supp.3d 625

Annamarie TROMBETTA, Plaintiff,

v.Norb NOVOCIN, Marie Novocin, Estate Auctions, Inc., Defendant.

No. 18-CV-993 (RA)

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

Signed October 2, 2019

Annamarie Trombetta, New York, NY, pro se.

Anderson Josiah Duff, Revision Legal, PLLC, New York, NY, for Defendant.

MEMORANDUM OPINION & ORDER

RONNIE ABRAMS, United States District Judge:

Plaintiff Annamarie Trombetta, appearing pro se , commenced this action against Defendants Norb Novocin, Marie Novocin, and Estate Auctions, Inc., (together, "Defendants"), asserting claims under the Lanham Act, the Copyright Act, and the Visual Artist Rights Act, as well as state law claims under the New York Civil Rights Law and the New York's Artist's Authorship Rights Act. In a nutshell, Trombetta seeks damages from Defendants for purportedly selling a low-quality painting online, that they falsely advertised as having been created by Trombetta, and which allegedly caused her to lose sales of her own artwork, in addition to pain and suffering. Before the Court is Defendants' motion to dismiss. For the following reasons, it is granted in part and denied in part.

BACKGROUND¹

Trombetta is an artist who exhibits her works, which include paintings, in New York City. In August 2015, Trombetta discovered on the website Worthpoint.com, which catalogs advertisements and sales of art, that Defendant Estate Auctions, Inc. ("Estate") had advertised and sold an oil painting on eBay entitled "Man with a Red Umbrella" ("the painting"). Estate's eBay advertisement, as re-posted on Worthpoint.com, described the painting as "shabby chic" and noted that the canvas had a tear 5/8 inches long. Compl. ¶ 4. The advertisement further asserted that the painting was "signed on the bottom but on the back it has written in red on the stretcher, Annamarie Trombetta ‘Gifted’ 1977, Painted 1972." Id. The advertisement also included a copy of Trombetta's biography from her personal website. Worthpoint.com indicated that the painting was sold on December 1, 2012, for $181.50.

According to Trombetta, in 1972, she "was nine years old and was not painting at all." Id. ¶ 3. In fact, she "did not paint in oil until 1981." Id. ¶ 4. She thus alleges that Estate, which is owned and operated by the individual defendants, falsely attributed her as the creator of the painting, and that she "never gave" Estate "the right to use [her] name nor to use the content of [her] biography." Id. ¶ 8.

Upon her discovery of the Worthpoint.com post, Trombetta informed an employee of Worthpoint.com that she was not the artist that created the painting. Another Worthpoint.com employee subsequently gave Trombetta a "removal ticket" and the website post eventually disappeared. Id. ¶ 16. In December 2016, however, the post re-appeared on the website. This time, Trombetta contacted Estate, and left a voicemail with Defendant Marie Novocin ("Ms. Novocin"). When Defendant Norb Novocin ("Mr. Novocin") returned her call, Trombetta told him that she did not create the painting. Trombetta alleges that Mr. Novocin responded that if she wanted to hire an attorney she should "GO FOR IT." Id. ¶ 17. In January 2017, Trombetta contacted the CEO of Worthpoint.com to have the second posting removed from the website.

Trombetta then arranged for an attorney to send Defendants a letter for settlement purposes in August or September of 2017. Ms. Novocin acknowledged receipt of the letter but did not respond to it. In October 2017, Trombetta sent a complaint to the Delaware Better Business Bureau about her experiences with Defendants. Trombetta alleges that Ms. Novocin responded to the complaint by letter, stating that Defendants' attorney had "assured [them] that [they] did nothing wrong," that they should "not ... respond to the demand letter," and that Trombetta's "contention that we used information from her website is incorrect." Id. ¶ 20.

On February 5, 2018, Trombetta filed a Complaint against Defendants asserting federal claims under the Lanham Act, the Copyright Act, and the Visual Artist Rights Act, as well as state law claims under the New York Civil Rights Law and the New York Artist's Authorship Rights Act. She also seeks a declaration that she did not create the painting and that the "photo signature is NOT by [her] hand." Id. at 16. Trombetta asserts that the purportedly false attribution contained in Estate's advertisement—that she was the author of the painting—injured her economically; indeed, she proclaims to know "for certain" that the "Estate Auction Inc. posting ... cost [her] one definite sale" valued at $8,000. Id. at 15-16. She states that the process of figuring out "who posted this listing" caused her "[m]onths of [s]tress," "[l]oss of [i]ncome and [t]ime," and that her "[d]isappointment and [f]rustration" required her to return to an orthopedic specialist, and to seek physical therapy from "[t]he end of 2015 and [for] most of 2016." Id. She demands $76,000 in damages against Defendants.

On May 22, 2018, Defendants filed the instant motion to dismiss. On January 17, 2019, Trombetta filed a letter attaching a certificate of registration of her website from the U.S. Copyright Office. The Court thereafter held a status conference after which it stayed the case pending the parties' settlement efforts. A settlement conference was held on April 25, 2019, which was unsuccessful. Prior to the settlement conference, Trombetta filed a supplemental letter in further opposition to Defendants' motion to dismiss to which Defendants did not respond.

STANDARD OF REVIEW

To survive a motion to dismiss under Rule 12(b)(6), "a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face’ " Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Bell Atl. Corp. v. Twombly , 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ). A claim is plausible "when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Id. "Where, as here, the complaint was filed pro se , it must be construed liberally with ‘special solicitude’ and interpreted to raise the strongest claims that it suggests." Hogan v. Fischer , 738 F.3d 509, 515 (2d Cir. 2013) (quoting Hill v. Curcione , 657 F.3d 116, 122 (2d Cir. 2011) ). "Nonetheless, a pro se complaint must state a plausible claim for relief." Id. (citing Harris v. Mills , 572 F.3d 66, 73 (2d Cir. 2009) ).

DISCUSSION

As an initial matter, Defendants contend that Trombetta has not alleged that they had any control or influence over the listings on Worthpoint.com. But Trombetta's claims are premised on Defendants' alleged conduct in creating the eBay advertisement that she discovered in its re-posting on Worthpoint.com. See Complaint at 6–8. Thus, even if the Court concluded that Defendants had no control or influence over Worthpoint.com, this would not dispose of her claims.

A. Trademark Infringement

Trombetta argues that Defendants' use of her name in connection with the painting states a claim for false designation of origin under the Section 43 of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A). The Court disagrees.

To prevail on a claim under Section 43(a) of the Lanham Act, "a plaintiff must show that[ ] (1) it has a valid trademark or trade name entitled to protection, and (2) the defendant's use of a similar name is likely to cause confusion among consumers as to the origin of the goods or services." Morgans Grp. LLC v. John Doe Co. , No. 10 CV 5225 KMW HBP, 2012 WL 1098276, at *4 (S.D.N.Y. Mar. 31, 2012) (citing Malletier v. Dooney & Bourke, Inc. , 454 F.3d 108, 115 (2d Cir. 2006) ).² Here, Trombetta fails to demonstrate that her name is a valid trademark or is otherwise entitled to trademark protection.

A trademark is protectable with respect to a § 43 claim if it is "either validly registered or a qualifying unregistered trademark." Prof'l Sound Servs., Inc. v. Guzzi , 349 F. Supp. 2d 722, 730 (S.D.N.Y. 2004), aff'd , 159 F. App'x 270 (2d Cir. 2005). Because Trombetta does not allege that her name is a registered trademark, she must plausibly allege that her name qualifies as an unregistered trademark. An unregistered mark is protectable if it would qualify for protection as a registered trademark under § 2 of the Lanham Act, 15 U.S.C. § 1052(b). See Van Praagh v. Gratton , 993 F. Supp. 2d 293, 301–302 (E.D.N.Y. 2014). To determine whether a putative mark qualifies as such, courts will first classify the mark as generic, descriptive, suggestive, arbitrary, or fanciful. See Lane Capital Mgt., Inc. v. Lane Capital Mgt., Inc. , 192 F. 3d 337, 346 (2d Cir. 1999). As Trombetta's purported trademark is a personal name, the Court considers it to be a descriptive mark. See Yarmuth-Dion, Inc. v. D'ion Furs, Inc. , 835 F.2d 990, 993 (2d Cir. 1987) ("a personal name[ ] is a descriptive mark") (citing cases). And a descriptive mark is protectable only "when it [has] acquire[d] secondary meaning," which refers to "the power of a name ... to symbolize a particular business, product, or company." Patrizzi v. Bourne In Time, Inc. , No. 11 Civ. 2386(PAE), 2013 WL 3975948, at *4 (S.D.N.Y. Aug. 5, 2013). The party seeking to establish secondary meaning of a descriptive mark must show that "an ordinary buyer associates the mark in question with a single source, though that source may be anonymous." Rockland Exposition, Inc. v. Alliance of Automotive Serv. Providers of New Jersey , 894 F. Supp. 2d 288, 315 (S.D.N.Y. 2012). The following six factors are relevant to this analysis: "(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark's use." Id.

Although "determining whether a descriptive mark has acquired secondary meaning is a fact-intensive inquiry,"...