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 ...