The opinion of the court was delivered by: Buchwald, District Judge.
Plaintiff Charles Atlas, Ltd. ("plaintiff' or "Atlas") brings
this trademark infringement action against defendant DC Comics,
Inc. ("defendant" or "DC"). Specifically, Atlas alleges that DC
violated the unfair competition and trademark dilution provisions
of the federal Lanham Act,*fn1 New York's anti-dilution
statute,*fn2 New York's deceptive trade practices statute,*fn3
and state unfair competition common law, by using portions of a
well known advertisement for Atlas's bodybuilding courses in
several of DC's comic books. Now pending is defendant's motion
for summary judgment pursuant to Fed.R.Civ.P. 56. Oral argument
was held on June 6, 2000. For the reasons set forth below,
defendant's motion for summary judgment is granted.
Plaintiff has been in the business of selling bodybuilding
courses for over 70 years. Amended Complaint ("Comp.") ¶ 10. Over
the years, advertisements for Atlas's bodybuilding courses have
included a one-page comic strip story titled "The Insult that
Made a Man out of Mac" ("plaintiff's comic ad"). In the
storyline: (1) a bully kicks sand in Mac's face at the beach; (2)
after taking the Atlas course, the skinny Mac develops a muscular
physique; (3) Mac finds the bully, again on the beach, and
punches him, for which he receives newfound respect, particularly
from his female companion; (4) in the final panel, the phrase
"HERO OF THE BEACH" appears as a halo-like formation hovering
over Mac's head. Affidavit of Jeffrey C. Hogue, dated Mar. 22,
2000 ("Hogue Aff.") Ex. A.*fn4 Plaintiff owns no copyright in
plaintiff's comic ad. Plaintiff's comic ad is well known and has
repeatedly appeared in DC comic books. Comp. ¶ 13.
Defendant is a creator and publisher of numerous comic books
and magazines. Among DC's best-known characters are Superman and
Batman. Declaration of William Godfrey, dated February 24, 2000
("Godfrey Decl.") ¶ 3. In February 1991, DC published and
distributed a comic magazine entitled Doom Patrol No. 42,
subtitled "The Sensational Character Find of 1991 . . . FLEX
MENTALLO." Godfrey Decl. ¶ 7, Ex. 1. A story within Doom Patrol
No. 42, entitled "Musclebound — The Secret Origin of Flex
Mentallo," explains how the character Flex Mentallo came to be
imbued with superior strength. Like Mac in plaintiff's comic ad,
Flex Mentallo was a scrawny weakling who had sand kicked in his
face by a bully. After meeting a stranger who encourages him to
obtain the booklet "Muscle Mystery for You," Flex Mentallo
returns to the beach with his newly acquired muscular physique,
and like Mac in the Atlas comic ad, he beats up the bully and
becomes "the Hero of the beach."
The storyline of "Musclebound — The Secret Origin of Flex
Mentallo" until this point explicitly mirrors the storyline of
plaintiff's comic ad. The obvious visual resemblance between
plaintiff's comic ad and "Musclebound — The Secret Origin of Flex
Mentallo" is indisputable. The artwork and dialogue in Doom
Patrol No. 42 replicate key elements of the artwork and dialogue
from plaintiff's comic ad, including, inter alia, the look and
placement of Mac, of the bully, of the women on the beach, and of
various objects such as the beach ball and umbrella. Flex
Mentallo also wears leopard skin trunks like the photograph of
Charles Atlas that often appears along with plaintiff's comic ad,
and is often depicted with the "Hero of the beach" halo around
his head. The words spoken by the characters are precisely those
used in plaintiff's comic ad. Godfrey Decl. Ex. 1; Hogue Aff. Ex.
A. Plaintiff alleges that defendant's blatant imitation of the
well-known Atlas comic ad infringes on its trademark.
However, unlike Mac in plaintiff's comic ad, after Flex
Mentallo acquires his powers, he beats up the woman he had been
with by smashing her in the face and proclaims "I don't need a
tramp like you anymore!" Godfrey Decl. Ex. 1. Plaintiff contends
that this sexist and vulgar portrayal of the character tarnishes
the trademark Atlas developed and imbued with goodwill over
nearly 70 years. Hogue Aff. ¶ 29. Doom Patrol No. 42 has not
been republished or redistributed since 1991. Godfrey Decl. ¶ 7.
The Flex Mentallo character subsequently appeared in the
interior of issues 43 and 44 of Doom Patrol and was included in
defendant's 1992 compendium of it comic book characters, Who's
Who In The DC Universe. Godfrey Decl. Exs. 8,9; Hogue Aff. ¶ 37,
In 1996, DC published and distributed a four issue miniseries
entitled Flex Mentallo. Flex Mentallo No. 1 contains, among
twenty-four comic pages containing 130 panels, two individual
panels using the phrase "Hero of the beach." Godfrey Decl. Ex. 2.
(p. 5). Flex Mentallo No. 4 contains, among twenty-four comic
pages containing 118 panels, one panel including the phrase "Hero
of the beach" and one panel including the phrase "Gamble a stamp.
I can show you how to be a real man." Godfrey Decl. Ex. 5 (pp.
17-18). The phrases "Hero of the beach" and "Gamble a stamp"
appear in plaintiff's comic ad and are an integral part of its
concept. Hogue Aff. Ex. A. Although no artwork from plaintiff's
comic ad appears in any of the issues of the Flex Mentallo
miniseries, id., plaintiff maintains that numerous panels of
all four issues of Flex Mentallo contain the infringing
trademark image of Charles Atlas. Plaintiff's Counter-Statement
Pursuant to Local Rule 56.1 ("Pl.56.1") ¶ 13.*fn5 All four
issues of Flex Mentallo were published, offered for sale and
distributed nationwide in the Spring and Summer of 1996. DC has
not reissued any issues of the Flex Mentallo series since their
original distribution. Godfrey Decl. ¶¶ 8-9.
DC did not conceal the publication of Doom Patrol No. 42 or
of the four issues in the Flex Mentallo miniseries. Each of
these publications was publicly available for sale in stores.
Godfrey Decl. ¶¶ 7-8. Defendant's "DC" trademark, as well as the
marks DOOM PATROL or FLEX MENTALLO, clearly appear on the cover
of each of those publications. Godfrey Decl. Exs. 1-9. In
addition, none of the allegedly copied artwork or dialogue from
plaintiff's comic ad has appeared in any advertisements for DC's
products, nor did they appear on cover pages of any of the DC
comic magazines. Godfrey Decl. Exs. 1-9. The only arguably
infringing material to appear on any of the covers or in any of
the ads is the image of Flex Mentallo himself. Id.
Plaintiff contends that it was unaware of DC's trademark
infringement until January 6, 1998, when it received an e-mail
from an unknown individual named Ken Kneisel who informed
plaintiff that "he heard about Charles Atlas from reading DC
Comics' Flex Mentallo series." Hogue Aff. ¶ 30; Pl. 56.1 ¶
27.*fn6 Plaintiff's counsel then sent a cease and desist letter
to DC at plaintiff's direction on January 14, 1998. Hogue Aff.
Ex. H. Since then, DC has not utilized the Flex Mentallo
character in any of its publications and "has no present plans to
reprint or redistribute any of the Doom Patrol issues including
Flex Mentallo or any issues in the Flex Mentallo series."
Godfrey Decl. ¶¶ 11-12; Hogue Aff. ¶ 33. See also Hogue Aff. ¶
42; Pl. Mem. at 17 (reciting that DC "aborted" a 1998 trade
paperback that would have included the Flex Mentallo character
once DC had received Atlas's cease and desist letter).
Plaintiff commenced this action in June of 1999, alleging that
defendant infringed on its trademark by misappropriating its
comic ad. Plaintiff maintains that its long history of
advertising in defendant's comic books, using the very comic ad
allegedly infringed upon by DC, renders the confusion of
association between Atlas and DC more likely. Now pending is
defendant's motion for summary judgment pursuant to Fed.R.Civ.P.
56. Defendant maintains that plaintiff's claims are: (a) time
barred by the statute of limitations inasmuch as they arise from
the publication of Doom Patrol No. 42; (b) legally insufficient
in that defendant's use of plaintiff's alleged trademark does not
meet the prerequisite requirement of having been used "in
commerce;" and (c) contrary to the First Amendment protections
accorded to trademark material used in parody.
A. Summary Judgment Standard
Rule 56(c) of the Federal Rules of Civil Procedure provides
that summary judgment "shall be rendered forthwith if the
pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any, show
that there is no genuine issue as to any material fact and that
the moving party is entitled to a judgment as a matter of law."
Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106
S.Ct. 2548, 91 L.Ed.2d 265 (1986). The party seeking summary
judgment "bears the initial responsibility of informing the
district court of the basis for its motion," and identifying
which materials "it believes demonstrate the absence of a genuine
issue of material fact." Celotex, 477 U.S. at 323, 106 S.Ct.
2548. Once a motion for summary judgment is properly made, the
burden shifts to the nonmoving party, which "`must set forth
specific facts showing that there is a genuine issue for trial.'"
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct.
2505, 91 L.Ed.2d 202 (1986) (quoting Fed.R.Civ.P. 56(e)). The
mere existence of some alleged factual dispute between the
parties will not defeat an otherwise properly supported motion
for summary judgment. Anderson, 477 U.S. at 247, 106 S.Ct.
B. Statute of Limitations
Defendant maintains that plaintiff's claims arising from Doom
Patrol No. 42, which was published over eight years before
plaintiff filed this Complaint, are time barred by a six-year
statute of limitations. The Lanham Act established no specific
limitations period for unfair competition and false advertising
claims. 15 U.S.C. § 1125(a). Therefore, in determining the
applicable statute of limitations in an action for unfair
competition under the Lanham Act, courts have looked to the most
analogous state statute of limitations: the six-year statute of
limitations for fraud claims. Conopco, Inc. v. Campbell Soup
Co., 95 F.3d 187, 192 (2d Cir. 1996). The limitations period for
fraud claims runs for six years from the time plaintiff
discovered the fraud or could with reasonable diligence have
discovered it. Id.; Fourth Toro Family Ltd. Partnership v. PV
Bakery, Inc., 88 F. Supp.2d 188 (S.D.N.Y. 2000); N.Y.C.P.L.R. §
As in comparable cases involving publications, a plaintiff's
claim generally accrues upon publication of the work in question.
See, e.g., Shamley v. ITT Corp., 869 F.2d 167, 172 (2d Cir.
1989) ("A cause of action for defamation accrues when the
material is published."); Rostropovich v. Koch Int'l Corp., No.
94 Civ. 2674, 1995 WL 104123, *7 (S.D.N.Y. Mar. 7, 1995) (finding
that a claim for improper use of person's name or likeness under
New York law accrues "at the time the allegedly offending
publication was placed on sale to the public, and no later");
Olsen v. Newsday, Inc., No. CV-87-2283, 1988 WL 69866, *1
(E.D.N.Y. June 6, 1988) (holding that the statute of limitations
for an action under 42 U.S.C. § 1983 stemming from the
publication of allegedly prejudicial material in a newspaper
accrued "the date of publication of the article"); Cain v. A.P.
Govoni, No. 80 Civ. 1531, 1980 U.S. Dist. LEXIS 14775, *4
(S.D.N.Y. Nov. 6, 1980) (finding that a "cause of action based on
publication of an allegedly defamatory article in a periodical of
mass circulation accrues on the date publication was officially
released or went on sale at newsstands.") (citing Zuck v.
Interstate Pub. Corp., 317 F.2d 727 (2d Cir. 1963)).
Doom Patrol No. 42 was openly and notoriously published in
1991, over eight years prior to the commencement of this action.
Plaintiff could have, with reasonable diligence, discovered the
alleged infringement upon its publication or shortly thereafter.
Therefore, all of plaintiff's claims based on Doom Patrol No.
42 are barred under all applicable statutes of limitations.
Plaintiff, citing to the case Netzer v. Continuity Graphic
Associates, Inc., 963 F. Supp. 1308, 1323 (S.D.N.Y. 1997), argues
that the statute of limitations should only begin to toll "when
plaintiff first learned of the wrong." Under that theory, Atlas
argues that the statute of limitations should have commenced in
January, 1998 when plaintiff received the e-mail from Ken Kneisel
allegedly informing plaintiff of the infringement. However,
plaintiff's reliance on Netzer is unavailing.
In Netzer, the plaintiff was an individual person who "left
the United States for the Middle East" in 1981, "suffered a
number of personal difficulties," and "returned to the United
States in 1990." Id. at 1313-14. The publication that was
alleged to have infringed his copyright and trademark rights was
a comic book published by a small independent publisher that
folded within ten years. Id. at 1312. The court found that
under these circumstances, the two-year delay between ...