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July 15, 2004.


The opinion of the court was delivered by: RICHARD HOLWELL, District Judge


This is an action asserting claims of copyright infringement under the Copyright Act, 17 U.S.C. § 501 et seq., and trademark infringement under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and alternatively asserting state law claims for common law idea misappropriation, deceptive business practices, and false advertising, based on defendants' alleged unlawful copying of plaintiff's cartoon drawing of a purported squirrel-rat hybrid she calls "Sqrat." Defendants move for summary judgment as to all of plaintiff's claims. For the reasons set forth below, the motion is granted and plaintiff's complaint is dismissed in its entirety. BACKGROUND

Unless otherwise noted, the following facts are not in dispute.*fn1 Plaintiff Ivy Silberstein ("Silberstein" or "plaintiff"), who also goes by the name of "Ivy Supersonic," is a self-styled promoter and publicist, as well as a designer of whimsical hats that have been worn by celebrities. (Silberstein Decl. ¶¶ 1-3.) In or around May 1999, Silberstein embarked on a new enterprise after having been inspired by the sight of an animal in a New York City park that appeared to be a cross between a squirrel and a rat. (Id. at ¶ 5.) Imagining that an animated version of such a creature had significant commercial potential (Id. at ¶ 6), she dubbed the as-yet purely notional character "Sqrat." Silberstein was not the first person to develop the concept of a squirrel-rat hybrid, or to use the word "sqrat," a composite of the words "squirrel" and "rat," to signify such a creature. (Zavin Reply Decl. Ex. N.) However, Silberstein appears to have been the first to take steps to secure legal protection for the name by filing an application with the U.S. Patent and Trademark Office ("PTO") for a word mark registration for "Sqrat" (Id. at ¶ 8; Zavin Decl. Ex. I). The "Sqrat" word mark was published for opposition by the PTO in December 1999, and received no opposition before the PTO deemed the mark abandoned in March 2001.*fn2 (Silberstein Decl. ¶ 9; Zavin Decl. Ex. L.) During the period of Sqrat's development in mid-1999, Silberstein, through an intermediary, commissioned an artist to create a prototype cartoon drawing of Sqrat that contained the word "SQRAT" and the World Wide Web address "" ("Sqrat logo"). (Silberstein Decl. ¶ 10, Zavin Decl. Ex. D at 43:14-21.) A copy of the Sqrat logo is appended to this opinion as Exhibit A. Silberstein took some further steps to generate interest in her Sqrat, including attending a trade show for buyers and sellers of new animated characters (Silberstein Decl. ¶¶ 11-12), and distributing a single-page "media alert" that included, inter alia, a drawing of a creature different from the Sqrat logo and the query, "What is Mayor Giuliani doing about the infiltration of SQRATTM in New York City ???" (Zavin Reply Decl. Ex. J, 118:9-121:13; Ex. Q). The Sqrat logo later graced promotional items produced and distributed by Silberstein, including T-shirts, stickers, and a banner that hung, at various times, at the back of the stage of an outdoor rock concert attended by several thousand people in Wantagh, New York in or around June 1999; at a June 1999 promotional party in Manhattan attended by entertainment industry executives; at a comic, art and toy expo in New York City held in November 1999; and at a film festival in New York City in February 2000. (Silberstein Decl. ¶¶ 17-20, 60, 66.) Silberstein cites several other events at which she promoted her "Sqrat," and numerous individuals to whom she "pitched" the Sqrat character; the record shows that Silberstein's promotional efforts generated some attention from the media, including mentions in various magazines and a recurring segment on CNN that was also broadcast during Continental Airlines' in-flight programming. (Silberstein Decl. ¶¶ 28-30, 34-36, 78-83.) Further, Silberstein and an associate collaborated on a proposed script for an animated series featuring Sqrat that was submitted to and accepted as an official entry in the New York International Film and Video Festival. (Silberstein Decl. Ex. E.) Silberstein also created one or more websites devoted to Sqrat, although there is conflicting evidence as to when the site or sites actually became operational. (Silberstein Decl. ¶ 10; Zavin Reply Decl. Exs. F, G, H.)

  During the period in which Silberstein began to promote her Sqrat, Twentieth Century Fox Film Corporation ("Fox") was in the early stages of production on an animated feature film called Ice Age. (Defs.' 56.1 ¶¶ 1-3.) Blue Sky Studios, Inc. ("Blue Sky"), an animation company, was engaged to create the animation for the film. (Id. at ¶ 2.) The film's creators strove to portray the historical period in which the film's events took place — the onset of the Ice Age — with some historical accuracy (as evidenced by visits by members of Blue Sky's creative team to the Museum of Natural History and the Bronx Zoo, and reviewing books and magazines containing pictures of prehistoric animals, Defs.' 56.1 ¶ 5). Although the three main characters in the film were based on animals that had actually existed during the Ice Age, one character prominently featured in the film was based on a prehistoric creature, the leptictidium, that predated the Ice Age by several million years. (White Decl. ¶¶ 5, 24.) This character was known as "Scrat," a rodential being with bulging eyes, a long snout, saber teeth, a raccoon-like striped tail, and an anxious mien. His was a modest part, serving as a plot device and comic relief; but his hilarious antics in the theater release of the film received greater exposure in the home DVD release of Ice Age, which contained a short film called "Scrat's Missing Adventure." (Wedge Decl. Ex. 5.) An image of Scrat from Ice Age is appended to this opinion as Exhibit B.

  Silberstein initiated this lawsuit upon learning of the film Ice Age and the Scrat character, which she alleges was a knockoff of her own Sqrat. The Corrected Third Amended Complaint alleges violations of the federal Copyright Act, 17 U.S.C. § 101 et seq.; of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); §§ 349 and 350 of the New York General Business Law; and the New York common-law proscription of idea misappropriation. The defendants in her action include the creators and producers of the film, as well as Jakks Pacific, Inc., who allegedly manufactured and sold "Scrat" toys; Ubi Soft Entertainment, Inc., who allegedly created a video game featuring Scrat; and HarperCollins Publishers, Inc., who allegedly published a novel based on Ice Age. (Zavin Reply Decl. Ex. D, ¶ 34.) Silberstein moved for a preliminary injunction in February 2002, seeking to enjoin defendants from distributing, exhibiting, displaying, performing or copying those portions of Ice Age which featured or referred to Scrat, and from manufacturing, marketing, distributing, selling or licensing any products or merchandise featuring or referring to Scrat. However, Silberstein's preliminary injunction motion was withdrawn soon thereafter, evidently at the insistence of defendants' counsel, who informed Silberstein's lawyers that they had just learned that her Sqrat was "copied virtually in its entirety from an image created, owned and published by . . . a company in the business of creating and distributing `clip art' drawings." (Cane Decl. Ex. A.) Defendants asserted that, as a consequence, Silberstein had "no rights in the underlying image which she calls `Sqrat' and cannot sue for copyright infringement based on that image." (Id.)

  Indeed, Silberstein's Sqrat was virtually a dead ringer for "Beaver Cartoon #2," ("the Beaver"), a copyrighted image then available on a CD-ROM and in a book both created by Smart Designs, a company in Tempe, Arizona. (Id.; Zavin Decl. Ex. A, 78:18-24.) A copy of the Beaver is appended to this opinion as Exhibit C. The Beaver was altered by the artist hired by Silberstein to create the Sqrat logo in a few respects: the beaver's tail was replaced with a tail that the artist intended to be a squirrel's tail (Zavin Decl. Ex. A, 82:24-83:2); the ears were made rounder; whiskers were added; the artist allegedly "played with the teeth a little" (Id. at 81:20) (though the buckteeth of the Beaver and those of Sqrat logo are not discernibly different); and Sqrat holds a sign reading "SQRAT."

  Silberstein undisputedly did not know and was not told by her artist that his rendering of Sqrat was based on a clip-art drawing until after the fact was uncovered by counsel for defendants. (Cane Decl. Ex. B, 188:8-23; Silberstein Decl. ¶ 92.) After the derivative nature of Sqrat came to light, however, the need to nail down the intellectual property rights at stake in the Sqrat/Scrat skirmish engendered a flurry of activity on both sides of this dispute. In or around March 2002, Fox entered into a written agreement with Digital Art Solutions, Inc. ("DAS"), the successor in interest to Smart Designs, which warranted that it was the sole owner of the copyright in and to the Beaver and transferred and assigned its rights, title and interest in and to the Beaver to Fox, retroactive to the date of the Beaver's creation. (Cane Decl. Ex. C.)*fn3 It was soon revealed, however, that DAS might have transferred more rights than it had, since the Beaver, once thought to have been created as a work-for-hire by an employee of Smart Designs, was actually drawn by an artist named Ron Szafarczyk, an independent contractor. (Id., Ex. D at 50:6-14, 108:14-22.) The ensuing dispute between DAS and Szafarczyk went to arbitration, and after a hearing on the issue, on July 1, 2003, the arbitrator awarded an undivided one-half ownership of the Beaver copyright to each party, effective July 27, 1999. (Cane Decl. Ex. E; Bogin Decl. Ex. A.) The final award, which by its terms legally bound the assignees of both parties (Cane Decl. Ex. E), was confirmed by an Arizona Superior Court judge (Zavin Decl. Ex. C). Subsequently, in or around July 2003, Silberstein purchased Szafarczyk's rights in and to the Beaver, retroactive to the date of the Beaver's creation in July 1994. (Silberstein Decl. Ex. K.) Further, in or around September 2003, Fox and DAS entered into a second agreement that superseded and voided the March 2002 agreement based on the fact that the parties had, at the time of that prior agreement, lacked knowledge as to the ownership of the Beaver copyright. Under the new agreement, Fox gained a non-exclusive license, retroactive to July 27, 1994 and continuing in perpetuity, to use and exploit the Beaver in connection with Fox's Scrat. (Bogin Decl. Ex. A.) The new agreement also contains a release from liability for any future use Fox might make of the Beaver. (Id.)

  In spite of this scramble to assert ownership of the Beaver copyright, defendants are not contending that they based their Scrat on the Beaver. Rather, they base their motion for summary judgment on five primary fronts. First, they argue that their license to use the Beaver cartoon operates to preclude a copyright infringement claim as to any features of plaintiff's Sqrat that were in the original Beaver cartoon.*fn4 Second, they claim that Silberstein has failed to present evidence that the creators of the Ice Age Scrat ever had access to the Sqrat logo, as would be necessary for her to prove that copying had taken place. Third, they maintain that the evidence of independent creation of Scrat defeats any claim of actual copying of Sqrat. Fourth, they contend that Scrat is not substantially similar to the protectible elements of the Sqrat logo. Fifth, they argue that the evidence does not support a claim of trademark infringement because (1) Silberstein has not used the word "Sqrat" or the Sqrat logo in commerce; (2) "Sqrat" is a descriptive term, thus necessitating a showing that the term had secondary meaning, and Silberstein has failed to put in evidence of secondary meaning; and (3) the evidence cannot support a claim of likelihood of confusion. Defendants also contend that the evidence cannot support plaintiff's state law claims.


  I. Summary Judgment Rule 56 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 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." Fed.R.Civ.P. 56(c). In reviewing the record, the district court must assess the evidence in "a light most favorable to the nonmoving party" and resolve all ambiguities and "draw all reasonable inferences" in its favor. LaBounty v. Coughlin, 137 F.3d 68, 73 (2d Cir. 1998); see Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

  An alleged factual dispute between the parties will not by itself defeat a motion for summary judgment, since "the requirement is that there be no genuine issue of material fact." Anderson, 477 U.S. at 247-48 (emphasis in original). In order to defeat such a motion, the non-moving party must affirmatively set forth facts showing that there is a genuine issue for trial. Id. at 256; Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). "A fact issue is `genuine' if `the evidence is such that a reasonable jury could return a verdict for the nonmoving party.'" Mack v. Otis Elevator Co., 326 F.3d 116, 120 (2d Cir. 2003) (quoting Anderson, 477 U.S. at 248). "A fact is `material' for these purposes if it `might affect the outcome of the suit under governing law.'" Kinsella v. Rumsfeld, 320 F.3d 309, 311 (2d Cir. 2003) (quoting Anderson, 477 U.S. at 248).

  II. Federal Intellectual Property Claims

  While graphic representations of characters such as Sqrat are often protected both by copyright law and by trademark law, see Museum Boutique Intercontinental, Ltd. v. Picasso, 880 F. Supp. 153, 167 (S.D.N.Y. 1995), the purpose and scope of the ...

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