United States District Court, S.D. New York
August 5, 2005.
GARY PRICE STUDIOS, INC., and GARY PRICE, Plaintiffs,
RANDOLPH ROSE COLLECTION, INC., RANDOLPH ROSE, ELLEN ROSE, JORDAN ROSE, FAR EASTERN ANTIQUES & ARTS, INC., STEPHEN GANO, and JOHN AND JANE DOES, DOE ENTITIES 1 THROUGH 5, Defendants.
The opinion of the court was delivered by: CHARLES HAIGHT, District Judge
MEMORANDUM OPINION AND ORDER
The captioned matter is before the Court on the motion of
defendants Randolph Rose Collection, Inc., Randolph Rose, Ellen
Rose, Jordan Rose, Far Eastern Antiques & Arts, Inc., Stephen
Gano, and John and Jane Does and Doe Entities 1 through 5
(collectively, "defendants") for partial summary judgment on
plaintiffs Gary Price Studios, Inc. and Gary Price's
("plaintiffs") Fifth Claim for unfair competition. Based upon the
averments in the pleadings, this Court has jurisdiction over this
matter pursuant to 28 U.S.C. § 1331 and § 1338(a) and (b) as it
arises under the laws of the United States, specifically, the
Copyright Act of 1976, 17 U.S.C. §§ 101 et seq., and the
Trademark Act of 1946, 15 U.S.C. §§ 1051 et seq.
Plaintiff Gary Lee Price is a Utah-based sculptor and principal
of plaintiff corporation Gary Price Studios ("GPS") which he
established to "reproduce, market, and sell his works of
sculpture." Amended Compl. at ¶¶ 1-2, 21. Between 1993 and 2001,
Price created a series of copyrighted bronze sculptures which depict children at play. Four
of these sculptures, in particular, lie at the heart of this
dispute: (i) "Kite Boy," created in 1993 and copyrighted in 1996;
(ii) "Bookworm," created in 1993 and copyrighted in 1996; (iii)
"Circle of Peace," created in 1998 and copyrighted in 1999; and
(iv) "Cartwheel Boy (Two Hands Down)," created in 2001 and
copyrighted in 2003. Id. at ¶¶ 24, 26, 31, 33, 38, 40, 45 and
47. Price granted GPS the exclusive license to sell limited
edition reproductions of each of these sculptures. Id. at ¶¶
27, 34, 41 and 48.
Defendant Randolph Rose is the sole shareholder and CEO of
defendant Randolph Rose Collection, Inc. ("RRC"), of which
defendant Ellen Rose is an officer and defendant Jordan Rose an
employee. Answer at ¶ 56. Defendant Stephen Gano is the sole
shareholder, sole officer and sole director of defendant Far
Eastern Antiques & Arts, Inc. ("FEAA"). Id. at ¶ 57.*fn1
FEAA and RRC are closely integrated corporations and each has its
principal place of business at the same location in Yonkers, New
York. Id. at ¶ 54. FEAA imports statues which are then sold by
RRC. Id. at ¶ 53. Included in the statues sold by RRC are four
which plaintiffs allege "are probatively, substantially, and
strikingly similar to Plaintiffs' copyrighted works" and, in
consequence, infringe those copyrights: (i) "Skip," (ii) "Boy
Reading Stack of Books," (iii) "Ring Around A Rosy," and (iv)
"Handstand Boy." Amended Compl. at ¶¶ 71, 73, 85, 87, 99, 101,
113 and 115.
Plaintiffs' First Cause of Action avers that defendants'
sculpture entitled "Skip" infringes on plaintiffs' copyright for
their sculpture entitled "Kite Boy." Id. at ¶¶ 63-76.
Plaintiffs' Second Cause of Action avers that defendants'
sculpture entitled "Boy Reading Stack of Books" infringes on
plaintiffs' copyright for their sculpture entitled "Bookworm."
Id. at 77-90. Plaintiffs' Third Cause of Action avers that
defendants' sculpture entitled "Ring Around A Rosy" infringes on plaintiffs' copyright for their sculpture
entitled "Circle of Peace." Id. at ¶¶ 91-104. Plaintiffs'
Fourth Cause of Action avers that defendants' sculpture entitled
"Handstand Boy" infringes on plaintiffs' copyright for their
sculpture entitled "Cartwheel Boy (Two Hands Down)." Id. at ¶¶
105-118. Plaintiffs' Fifth Cause of Action for unfair
competition pursuant to 15 U.S.C. § 1125(a)(1)(A) is the target
of the present motion for partial summary judgment.
The Fifth Cause of Action is apparently*fn2 premised on
statements made by defendants during a 2002 phone call with an
employee of GPS. In March 2002, Lantz Allen, formerly GPS'
gallery director, received information that RRC "was selling
bronze sculptures similar to those produced by Gary Price."
Affidavit of Lantz Allen at ¶¶ 3-4. After receiving RRC's
catalogue, Allen called RRC and, without identifying himself as
an employee of GPS, inquired about RRC's bronze sculptures.
According to Allen, the phone was answered by a woman by the name
of "`Ellen' or `Lillian'" who
stated that the Randolph Rose Collection sells
sculptures similar to various artists, including
Gary Price. She stated that Randolph Rose Collection
prices are approximately one-third the price of the
originals. She then informed me of a new piece
based on Gary Price's "Circle of Friends" was
expected in the next couple of months.
Id. at ¶ 5 (emphasis added). According to plaintiffs,
defendants' use, during this phone call, of Gary Price's name to
market and sell their competing bronze statues is a "false
designation of origin, false or misleading description of fact,
or false or misleading representation of fact" in contravention
of 15 U.S.C. § 1125(a)(1) and the common law. Plaintiffs'
Memorandum in Opposition at 1-2. Defendants move for summary judgment on defendants' Fifth Cause
of Action. They first assert that plaintiffs have failed to
demonstrate that defendants ever used the alleged trademarks
"Gary Price" or "Gary Price Studios," or that those marks have
acquired secondary meaning that would entitle them to protection.
I need not reach either of these arguments, however, because I
agree with defendants' second argument; namely that defendants'
alleged use of "Gary Price" or "Gary Price Studios" is not
prohibited by the provisions of 15 U.S.C. § 1125(a)(1). Therefore
I grant defendants' motion for summary judgment on plaintiffs'
Fifth Cause of Action.
A. Standard of Review on Motion for Summary Judgment Pursuant
to Rule 56
Rule 56 of the Federal Rules of Civil Procedure provides that a
court shall grant a motion for summary judgment "if the
pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any, show
that there is no genuine issue of material fact and that the
moving party is entitled to a judgment as a matter of law."
Fed.R.Civ.P. 56(c); see also Celotex Corp. v. Catrett,
477 U.S. 317 (1986). "The party seeking summary judgment bears the burden
of establishing that no genuine issue of material fact exists and
that the undisputed facts establish her right to judgment as a
matter of law." Rodriguez v. City of New York, 72 F.3d 1051,
1060-61 (2d Cir. 1995). The substantive law governing the case
will identify those facts which are material and "only disputes
over facts that might affect the outcome of the suit under
governing law will properly preclude the entry of summary
judgment." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
In determining whether a genuine issue of material fact exists,
a court must resolve all ambiguities and draw all reasonable
inferences against the moving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). If
there is "any evidence in the record from any source from which a
reasonable inference could be drawn in favor of the non-moving
party," then summary judgment should be denied. Chambers v. TRM
Copy Centers Corp., 43 F.3d 29, 37 (2d. Cir. 1994).
B. Defendants' Alleged Use of the Unregistered Marks "Gary
Price" or "Gary Price Studios is a Non-Infringing Use
Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) makes
actionable false or misleading statements which are likely to
cause confusion regarding the origin, affiliation, or endorsement
of a trademarked product. The Act provides in pertinent part:
(1) Any person who, on or in connection with any
goods . . . uses in commerce any word, term, name,
symbol, or device, or any combination thereof, or any
false designation of origin, false or misleading
description of fact, or false or misleading
representation of fact, which (A) is likely to
cause confusion, or to cause mistake, or to deceive
as to the affiliation, connection, or association of
such person with another person, or as to the origin,
sponsorship, or approval of his or her goods,
services, or commercial activities by another person
. . . shall be liable in a civil action by any person
who believes that he or she is or is likely to be
damaged by such act.
15 U.S.C. § 1125(a); see generally Yale Elec. Corp. v.
Robertson, 26 F.2d 972, 974 (2d Cir. 1928) ("The law of unfair
trade comes down very nearly to this . . . one merchant shall not
divert customers from another by representing what he sells as
emanating from the second.") (L. Hand, J.).
The touchstone of an action commenced under § 1125(a)(1) is
that the use of another's trademark must be likely to confuse
consumers. Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co.,
799 F.2d 867, 871 (2d Cir. 1986) (citing Thompson Medical Co.,
Inc. v. Pfizer, Inc., 753 F.2d 208, 213 (2d Cir. 1985), cert.
denied, 439 U.S. 1116 (1979)) ("The ultimate inquiry in most
actions for false designation of origin, as with actions for
trademark infringement, is whether there exists a likelihood that
an appreciable number of ordinarily prudent purchasers [will] be misled, or indeed simply confused, as to the source of the goods
in question.") (internal quotations omitted)); Berlitz Schools
of Languages of America, Inc. v. Everest House, 619 F.2d 211,
215 (2d Cir. 1980) ("The sine qua non of an action for
. . . unfair competition is a showing by the plaintiff of the
likelihood of confusion as to the origin of the goods in issue at
the consumer level."). However, "the confusion requirement should
not be read too narrowly." Weight Watchers Intern., Inc. v.
Stouffer Corp., 744 F.Supp. 1259, 1269 (S.D.N.Y. 1990). "The
public's belief that the mark's owner sponsored or otherwise
approved the use of the trademark satisfies the confusion
requirement." Dallas Cowboys Cheerleaders, Inc. v. Pussycat
Cinema, Ltd., 604 F.2d 200, 204-05 (2d Cir. 1979).
As should be clear from the foregoing, the Lanham Act does not
prohibit all unauthorized uses of trademarks. For example,
"[t]rademarks of a rival company can be used in competitive
advertising, so long as the advertising `does not contain
misrepresentations or create a reasonable likelihood that
purchasers will be confused as to the source, identity, or
sponsorship of the advertiser's product.'" Cuisinarts, Inc. v.
Robot-Coupe Intern. Corp., 509 F.Supp. 1036, 1042 (S.D.N.Y.
1981) (quoting Smith v. Chanel, Inc. 402 F.2d 562, 563-64 (9th
[A] competitor may use another's trademark when
providing information about the substitutability of
products because by doing so the "supplier engages in
fair competition based on those aspects for
example, price in which the products differ."
American Home Products v. Barr Laboratories,
656 F.Supp. 1058, 1068 (D.N.J.), aff'd, 834 F.2d 368
(3d Cir. 1987).
Weight Watchers Intern., Inc., 744 F.Supp. at 1269.
Plaintiffs aver that defendants' assertions in the 2002 phone
call that RRC's statues are "similar" to those of Gary Price, but
at "one-third the price" and that RRC expected to release "a new
piece based on Gary Price's `Circle of Friends' . . . in the next
couple of months," violated the quoted provisions of
15 U.S.C. § 1125(a)(1). Affidavit of Lantz Allen at ¶ 5. I do not agree. Even resolving all ambiguities and drawing all reasonable
inferences against defendants,*fn3 as I must on their
summary judgment motion, the contents of this phone call are
simply insufficient to support plaintiffs' unfair competition
Section 1125(a)(1) prohibits, inter alia, the use of any
word, term or name, or any misleading statement, that is likely
to confuse reasonable purchasers as to (i) the origin of a
product (origin), (ii) whether a certain party endorses a product
(sponsorship), or (iii) the relationship between competing
products or manufacturers (affiliation). See Pirone v.
MacMillan, Inc., 894 F.2d 579, 584 (2d Cir. 1990). Defendants'
statements do not violate any of § 1125(a)'s prohibitions. In
fact, taken together, the statements imply that the origin of
defendants' bronze statues is not the plaintiffs, but rather is
a competitor of the plaintiffs, namely defendants. Furthermore,
no ordinarily prudent purchaser would interpret defendants'
statements as indicating that Gary Price or GPS sponsored, or is
otherwise affiliated with RRC or its statues. Rather, defendants'
statements are a form of competitive advertising, in which they
employed the putative marks "Gary Price" and GPS to assert the
"substitutability" of their statues, by highlighting an area
here, price in which the products differ. Weight Watchers
Intern., 744 F.Supp. at 1269.*fn4 In short, there is no genuine issue of material fact:
defendants' statements would not mislead any reasonable purchaser
about the origin of defendants' bronze statues, the relationship
between the parties, or whether plaintiffs otherwise sponsored or
endorsed defendants' statues.
In these circumstances, and based upon the foregoing,
defendants' motion for summary judgment on plaintiffs' Fifth
Cause of Action for unfair competition is granted.
In the light of this ruling, counsel for the parties are
directed to send letters to the Court, with copies to each other,
not later than September 6, 2005, advising (1) whether any
further pretrial discovery is required; (2) if so, the nature and
extent of that discovery; and (3) if the case is now trial ready,
the estimated time each party will require for the presentation
of its case in chief. In the latter eventuality, the Court will
then enter its final pretrial order and schedule the case for
It is SO ORDERED.