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O'Keefe v. Ogilvy & Mather Worldwide

December 4, 2008


The opinion of the court was delivered by: Sidney H. Stein, U.S. District Judge


Plaintiff Thomas O'Keefe brings this action for copyright and trademark infringement and related state-law torts against defendants Ogilvy & Mather Worldwide, Inc. ("Ogilvy"), Digitas, Inc. ("Digitas"), and the American Express Company ("Amex"). The lawsuit arises out of the well known "My Life. My Card." advertising campaign used to promote Amex credit cards and other products from 2004 to 2006. Amex hired advertising agencies Ogilvy and Digitas to develop the campaign.

In his complaint, O'Keefe charges defendants with appropriating copyrighted features of his use in the advertising campaign. In addition, O'Keefe asserts that the "My Life. My Card." tagline creates trademark confusion with his "My Card. My Work." mark. O'Keefe also brings state common law claims of unfair competition, misappropriation, breach of implied contract, and unjust enrichment. The Court has previously dismissed O'Keefe's claims of misappropriation and unjust enrichment against all defendants as well as his claims of trademark infringement, false designation of origin, and unfair competition against defendants Ogilvy and Digitas.

Following discovery, defendants now move for summary judgment dismissing the remaining claims: copyright infringement and breach of implied contract against all defendants and trademark infringement, false designation of origin, and unfair competition against Amex. Plaintiff cross-moves for partial summary judgment as to his claims of trademark infringement and false designation of origin against Amex.*fn1 Because there are no genuine issues of material fact and defendants are entitled to judgment as a matter of law, summary judgment is granted to all defendants and plaintiff's motion for partial summary judgment in his favor is denied.


Viewing the evidence in the light most favorable to plaintiff on defendants' motion for summary judgment and resolving all factual disputes in his favor, the following facts are relevant to the present motions.

A. "My Card. My Work"

In the spring of 2003, plaintiff Thomas O'Keefe, an art director and graphic designer, received notice from his employer that it was closing the office in which he worked. (Local Rule 56.1 Statement of Undisputed Facts by Defs. Amex and Ogilvy in Support of Defs.' Mot. for Summary Judgment dated Jan. 14, 2008 ("Defs.' 56.1") ¶ 49; Pl.'s Response to Defs.' 56.1 dated Feb. 4, 2008 ("Pl.'s Counter 56.1") ¶ 49; Decl. of Thomas O'Keefe in Support of Pl.'s Mot. for Partial Summary Judgment dated Jan. 3, 2008 ("O'Keefe Decl.") ¶ 1.) O'Keefe then went into business for himself providing advertising, branding, and graphic and web design services. (O'Keefe Decl. ¶¶ 1-3.)

O'Keefe named his business "My Card. My Work." (Id. ¶¶ 3-4.)*fn2

In relation to his business, O'Keefe uses the phrase "My Card. My Work." in a number of ways. For example, he uses the email address "" for work-related emails. (Id. ¶¶ 17-18.) When O'Keefe bills his clients or sends proposals for projects, his paperwork contains "My Card. My Work." in the header. (Id. ¶¶ 20, 26 and Exs. 6, 12.) When O'Keefe seeks to generate business through various design-related websites and internet message boards, he uses the name "My Card. My Work." (Id. ¶ 25 and Ex. 11.) On federal income tax forms, O'Keefe identifies his business as "MYCARDMYWORK." (Id. ¶¶ 27-28 and Ex. 13.) In addition, O'Keefe adduced testimony from several of his clients and colleagues that his business is known as "My Card. My Work." and not by any other name. (See, e.g., Dep. of Jonathan Burns dated Oct. 2, 2007 ("Burns Dep.") at 38; Dep. of David Galper dated Oct. 3, 2007 ("Galper Dep.") at 71; Dep. of Lars Perkins dated Oct. 4, 2007 ("Perkins Dep.") at 10:21-11:2; Dep. of Thomas Mahoney dated Sept. 21, 2007 ("Mahoney Dep.") at 180:3-14; Dep. of Benjamin Cantlon dated Sept. 13, 2007 ("Cantlon Dep.") at 156:2-4; see also Pl.'s Local Rule 56.1 Statement of Facts in Support of Pl.'s Mot. for Partial Summary Judgment dated Jan. 11, 2008 ("Pl.'s 56.1") ¶ 27.)

In support of his business, O'Keefe developed a website that includes his resume and contact information, samples of websites and advertising materials that he created for his clients, and a client list. (O'Keefe Decl. ¶ 10 & Ex. 2.) O'Keefe registered the domain name "" on May 28, 2003 and posted an active version of the site later that summer. (Pl.'s 56.1 ¶¶ 9-10; Response of Defs. Amex and Ogilvy to Pl.'s 56.1 dated Feb. 4, 2008 ("Defs.' Counter 56.1") at 4 ¶ 9; O'Keefe Decl. ¶¶ 9, 11.) The pages that make up the site have not changed since the summer of 2003. (O'Keefe Decl. ¶ 10.)

Visitors to the website are first presented with a page reading: my card. my work.

if you want to continue, this site requires the flash6 player go if you've had it up to "here" with these silly flash sites and want to cut to the chase view resume (Deposition of Thomas O'Keefe dated Sept. 27, 2007 ("O'Keefe Dep.") at 69:18-25; Defs.' 56.1 ¶ 51; see also (last visited Nov. 24, 2008).)

If a visitor clicks "go," she enters the main area of the site, but if she clicks "view resume," she is presented with O'Keefe's resume and does not access the main area of the site. (O'Keefe Dep. at 69:18-72:11; (last visited Nov. 24, 2008).) The main area of the site is made up of approximately fifteen pages with a common layout. Each page consists of a white, horizontally-aligned rectangle with the words "THOMAS O'KEEFE" and "ART DIRECTOR" along the top border, as well as navigable links labeled "MY CARD | MY RESUME | MY WORK | MY CLIENT LIST," "CLIENT ACCESS," and "DOWNLOAD RESUME" along the bottom border. (O'Keefe Decl. Ex. 2.) Each page has a large space for text and graphic elements in the middle. (Id.)

The initial page of the main area of the site prominently displays the text "My Card" and "My Work" in a font style that simulates handwriting, along with arrows that point away from the text toward graphic elements-namely, a depiction of O'Keefe's business card and a depiction of cards containing the names of some of O'Keefe's clients-that appear to "bleed off the page" (i.e., that are drawn so that portions of the business cards appear to be cut off by the page border). (Id.; Pl.'s 56.1 ¶¶ 14-15, 65; Defs.' Counter 56.1 at 5 ¶¶ 14-15, 13 ¶ 65.) O'Keefe refers to the arrangement of text, arrows and graphic elements as a "link[ing]" of the words "My Card. My Work." to "real world objects (rather than drawn objects)." (Pl.'s Mem. in Opposition to Defs.' Mot. for Summary Judgment dated Feb. 4, 2008 ("Pl.'s Opp. Mem.") at 14.) The text and arrows do not materialize on the page all at once, but are animated to appear as if being written. (O'Keefe Decl. Ex. 2; Pl.'s 56.1 ¶¶ 14, 64; Defs.' Counter 56.1 at 5 ¶ 14, 13 ¶ 64.) A user may click on the graphic elements to navigate to other pages on the site. (O'Keefe Decl. Ex. 2; see also (last visited Nov. 24, 2008).)

The other pages on the site consist of contact information for O'Keefe, his resume, and samples of work created for his clients-specifically, screen shots of two commercial websites and an image of a billboard. (O'Keefe Decl. Ex. 2.) Some of these pages contain animated, seemingly handwritten text and arrows pointing to graphic elements that, as on the initial page, appear to "bleed off the page." (Id.) O'Keefe subsequently obtained a registered copyright for the compilation of text and graphic elements displayed on the pages making up the website. (Defs.' 56.1 ¶¶ 46-47; Pl.'s Counter 56.1 ¶¶ 46-47; Certificate of Copyright Registration dated Apr. 28, 2006 ("Copyright Registration Certificate"), Ex. 26 to Decl. of Marc J. Rachman in Support of Defs.' Mot. for Summary Judgment dated Jan. 14, 2008 ("Rachman Decl.").)*fn3 O'Keefe has not sought trademark registration for the phrase "My Card. My Work."

B. Defendants' Alleged Access to Plaintiff's Work

In the summer of 2003, O'Keefe sought to obtain employment with several large advertising agencies. (Compl. ¶¶ 28-30.) Believing that employment applications submitted to the human resources departments of these agencies would "just . . . get . . . thrown in a folder if not thrown in [the] trash," O'Keefe instead sought to apply directly to "creative director[s] or [persons] within . . . creative department[s]." (O'Keefe Dep. at 187:12-16.) O'Keefe attempted to contact those persons with an unsolicited email that introduced him as an experienced art director possessing "key qualifications for a position you may offer." (Ex. 16 to O'Keefe Decl. at 1.) After describing his qualifications, the email concluded: "Below are links to my teaser site, resume and case studies and samples. If you have any questions please feel free to contact me." (Id.) After O'Keefe's signature line, the email read:

Visit my site: Download my Resume: Case Studies and Samples:


Client Access: (Id. at 2.)

O'Keefe claims that in the early summer of 2003, shortly after the website was activated, he sent this email to individuals at large advertising agencies including Brian Collins, who was then the Executive Creative Director of defendant Ogilvy's Brand Integration Group, a department that concentrated on graphic design. (O'Keefe Decl. ¶ 30; Dep. of Brian Collins dated Sept. 18, 2007 ("Collins Dep.") at 31-32.) O'Keefe asserts that he "personalized" the email sent to Collins but does not specify how it differed from the generic template in the record. (O'Keefe Decl. ¶ 32.) Although O'Keefe has not presented a copy of the email allegedly sent to Collins or records showing that he transmitted any message whatsoever to Collins, he explains that he is unable to provide such evidence because his email server was "hacked," causing the loss of the relevant data. (Id.; see also Electronic Communication Exchange Between O'Keefe and iValueHost, LLC dated Feb. 15, 2005, Ex. 18 to O'Keefe Decl.) Instead, as documentary evidence of the emailing, O'Keefe proffers a list of contact information- including email addresses-for individuals at several advertising agencies in New York, including Brian Collins. (Ex. 14 to O'Keefe Decl.) O'Keefe also offers a printout of certain computer files that appear to show that the contact list has existed in its present form since the summer of 2003. (O'Keefe Decl. ¶ 30 & Ex. 15.) O'Keefe claims that in the summer of 2003, he emailed all of the persons on the contact list. (O'Keefe Decl. ¶ 30.) He testified that he did not receive a bounce-back email from Brian Collins and that "[a]s far as I know, [Collins] . . . reviewed my email." (O'Keefe Dep. at 187:20-22.)

O'Keefe asserts that he sent the email from the address "" (Id.)*fn4

For his part, Collins testified that he does not recall receiving any email from O'Keefe in 2003 (Dep. of Brian Collins dated Sept. 18, 2007 at 149:3-10), that it was uncommon for him to receive emails from people looking for work, and that he would "pretty much automatically dismiss . . . [a]nything [he] thought was a mass mailing" (id. at 143:11-21, 144:18-45:2). Collins testified that he would not have forwarded the email or any of its contents to anyone else (id. at 145:25-46:11, 149:20-24, 168:13-71:2), and that he had never visited the website (id. at 149:11-16).

Even if he had been exposed to O'Keefe's work, the parties dispute the extent to which Collins would have been able to influence the development of Amex's "My Life. My Card." advertising campaign. According to defendants, the Brand Integration Group in which Collins worked had little to do with creating the advertising campaign, which was handled chiefly by other Ogilvy personnel in the New York office. (Defs.' 56.1 ¶ 23.) On the other hand, O'Keefe points out that Brand Integration Group personnel who worked directly with Collins also assisted in a "branding exercise" for Amex "to come up with some kind of an icon that signs off the campaign." (Dep. of Nancy Boyd dated Jun. 19, 2007 ("Boyd Dep.") at 37:24-38:11; see also Decl. of David Israel in Support of Defs.' Mot. for Summary Judgment dated Jan. 12, 2008 ("Israel Decl.") ¶ 3; Email From John Seifert to Tony Wright dated May 19, 2004, Ex. 1 to Decl. of Brad Newberg in Opposition to Defs.' Mot. for Summary Judgment ("Second Newberg Decl.").) Collins also had working relationships with many of the Ogilvy personnel who contributed to the creation of the advertising campaign. (Collins Dep. at 88:13-90:24.)

C. The American Express "My Life. My Card." Advertising Campaign 1. The Early Developmental Stages

Around May 2004, nearly a year after O'Keefe allegedly sent the above-described email to Brian Collins, Amex engaged Ogilvy to develop an advertising campaign. (Defs.' 56.1 ¶¶ 1-3; Pl.'s Counter 56.1 ¶¶ 1-3; Pl.'s 56.1 ¶ 38.) Over the following two months, Ogilvy presented several proposals to Amex for approval. (Defs.' 56.1 ¶ 4; Pl.'s 56.1 ¶ 4.) Several "themes" for the campaign were being considered, such as "Do You Know Me," "How To," "Interesting Lives" and "Long Live Dreams." (Id.) "My Life. My Card." was not one of the themes presented to Amex during this period. (Pl.'s 56.1 ¶¶ 40-41.) Some of the ideas that were presented to Amex were rejected because they "didn't create the magic that everybody was looking for." (Boyd Dep. at 60:11-61:6.) As of mid-July 2004, Ogilvy's top contenders for the campaign theme were (1) an update of a campaign Amex had used many years prior called "Do You Know Me?" and (2) a new campaign called "How To." (Pl.'s 56.1 ¶ 45; Defs.' Counter 56.1 at 12 ¶ 45.)

Unsatisfied with these options, John Hayes, the Chief Marketing Officer of Amex, asked Ogilvy to come up with a "challenger" campaign to "Do You Know Me?" (Pl.'s 56.1 ¶ 48; Defs.' 56.1 ¶ 48; Email from Nancy Boyd to Chris Mitton et al. dated July 20, 2004, Ex. 33 to Decl. of Brad Newberg in Support of Pl.'s Mot. for Partial Summary Judgment ("First Newberg Decl.").) Although the parties vigorously dispute whether it was the product of independent creation or whether it was derived from O'Keefe's work, it is undisputed that the American Express "My Life. My Card." campaign was born shortly after Hayes' request. (Defs.' 56.1 ¶¶ 6-11; Pl.'s Counter 56.1 ¶¶ 6-11.)

According to defendants, within the following weeks, Ogilvy's Chris Mitton, Tom Drymalski, and Jon Koffler invented the "My Life. My Card." tagline and campaign theme. (Defs.' 56.1 ¶¶ 6-8.) Mitton, Drymalski, and Koffler all deny that they had heard of O'Keefe or his business or that they had viewed his website at any time prior to the initiation of this lawsuit. (Decl. of Chris Mitton in Support of Defs.' Mot. for Summary Judgment dated Jan. 10, 2008 ("Mitton Decl.") ¶ 11; Decl. of Thomas Drymalski in Support of Deft's' Mot. for Summary Judgment dated Jan. 8, 2008 ("Drymalski Decl.") ¶¶ 12, 15, 17; Decl. of Jonathan Koffler in Support of Defs.' Mot. for Summary Judgment dated Jan. 10, 2008 ("Koffler Decl.") ¶ 9.) They also deny having had any contact with Brian Collins regarding the development of the advertising campaign. (Id.)

After an initial brainstorming session, Drymalski and Koffler created several sample print advertisements (the "mock print ads") that were, according to Drymalski, "never intended to be used on final ads, but were just mock ups to allow people to see how the [My Life. My Card.] concept could work in print." (Defs.' 56.1 ¶¶ 8-11; Pl.'s Counter 56.1 ¶¶ 8-11; Drymalski Decl. ¶ 10 & Ex. E.) O'Keefe maintains that the mock print ads are similar to his own work on the website. Each mock print ad is laid out on a horizontally aligned rectangle and features a celebrity's photograph. (Ex. E to Drymalski Decl.) Most of the ads also contain the handwritten words "My Life" and "My Card" as well as hand drawn arrows pointing from the words to graphic elements. (Id.) Specifically, in most of the mock ads, an arrow points from "My Life" to a collage of images that appear to be from the celebrity's personal life, and another arrow points from "My Card" to the American Express "blue box" logo and what appears to be the celebrity's signature. (Id.) Some of the graphic elements and images in the mock print ads appear to "bleed off the page." (Id.)

The mock print ads and other sample advertisements were shown to Amex in August 2004. (Pl.'s 56.1 ¶¶ 52-53; Defs.' Counter 56.1 at 12 ¶¶ 52-53.) Amex was pleased with the presentation and the company authorized the "My Life. My Card." tagline and campaign, which was developed over the following months for release to the public beginning in November 2004. (Pl.'s 56.1 ¶¶ 53, 55; Defs.' Counter 56.1 at 12 ¶¶ 53, 55.) Amex hired ...

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