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United States District Court, S.D. New York

August 5, 2005.


The opinion of the court was delivered by: CHARLES HAIGHT, District Judge


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.

I. Background

  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.

  II. Discussion

  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 (1986).

  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 Cir. 1968)).


[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 claim.

  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.

  III. Conclusion

  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 trial.


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