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August 29, 2000


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, Ex. I.

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. 2505.

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. § 213(8).*fn7

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 ...

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