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Fischer v. Forrest

United States District Court, S.D. New York

January 13, 2015

JAMES H. FISCHER, Plaintiff,
v.
STEPHEN T. FORREST and SANDRA F. FORREST, Defendants.

OPINION & ORDER

PAUL A. ENGELMAYER, District Judge.

Plaintiff James H. Fischer ("Fischer"), proceeding pro se, filed these two nearly identical actions against Stephen T. Forrest and Sandra F. Forrest (collectively, "Forrest"). Fischer, the creator of a popular honey harvesting product called Fischer's Bee-Quick, alleges that Forrest used his proprietary text, images, and names to sell a knock-off product, thereby violating the federal Copyright Act, 17 U.S.C. § 101 et seq.; the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 1201 et seq.; and the Lanham Act, 15 U.S.C. § 1051 et seq. Fischer also brings claims under New York state law-for violation of his right of publicity, unfair competition, unfair business practices, breach of contract, and unjust enrichment. Forrest now moves to dismiss both complaints in their entirety. For the following reasons, the Court denies Forrest's motion.

I. Background

A. Factual Background[1]

In 1999, Fischer invented and began producing "a new honey harvesting aid for beekeepers" that he named Fischer's Bee-Quick. Am. Compl. I ¶ 24; Am. Compl. II ¶ 35. Fischer promoted his product as "unique" in that it is "a food-safe, non-toxic, not foul-smelling, and effective substance that beekeepers can trust to use with their honey and their bees." Am. Compl. I ¶ 24; Am. Compl. II ¶ 35; see also, e.g., Am. Compl. I Ex. 5 (Bee-Quick brochure); Am. Compl. II Ex. 5 (same). Fischer's Bee-Quick "quickly became one of the most in-demand products in beekeeping." Am. Compl. I ¶ 26; Am. Compl. II ¶ 40. On December 11, 2001, Fischer formally registered the "Bee-Quick" mark with the U.S. Patent and Trademark Office. Am. Compl. I ¶ 28, Ex. 2 (trademark registration certificate).

In 2002, Fischer authorized Brushy Mountain Bee Farm-a mail-order business owned and operated by Stephen and Sandra Forrest-to sell Bee-Quick. Am. Compl. I ¶¶ 8-10, 30; Am. Compl. II ¶¶ 7-9, 42. In connection with this agreement, Fischer authorized Brushy Mountain to use the trademarked name of his product, images he had created, and text he had written to sell Bee-Quick through Brushy Mountain's website and print catalogues. Am. Compl. I ¶¶ 31, 46; Am. Compl. ¶¶ 21, 43, 63-67.

On December 10, 2010, Brushy Mountain unilaterally terminated the parties' business relationship. Am. Compl. I ¶ 32; Am. Compl. II ¶ 23. Specifically, a Brushy Mountain employee sent Fischer an email that stated:

Regretfully, I am the messenger informing you (per Steve [Forrest] & Shane [Gebauer]) that we are returning the BEE QUICK.... I was not informed that we were discontinuing the Bee-Quick in our 2011 catalog, nor previously requested to cancel my order with you. Please provide the address you need to have the Bee-Quick sent to.

Am. Compl. I Ex. 3(b); Am. Compl. II Ex. 3(b).

Soon after, on February 7, 2011, Fischer registered the text and images displayed on his website with the U.S. Copyright Office. Am. Compl. I ¶¶ 39, 121, Ex. 4 (copyright registration certificate); Am. Compl. II ¶¶ 37, 61, Ex. 4 (same). He also renewed his trademark registration for the Bee-Quick mark. Am. Compl. I ¶ 29, Ex, 2 (trademark registration certificate).

At some point in early 2011, Brushy Mountain began selling a "knock-off product" called Natural Honey Harvester. Am. Compl. I ¶ 53; Am. Compl. II ¶ 24. In connection with sales of that product, Brushy Mountain used text and images that Fischer had created to promote Bee-Quick. Am. Compl. I ¶¶ 53-58; Am, Compl. ¶¶ 73-77. For example, until 2010, Brushy Mountain had, with Fischer's authorization, used the following text to describe Bee-Quick:

This 100% natural, non-toxic blend of oils and herb extracts works just like Bee Go and it smells good! Fischer's Bee Quick is a safe, gentle, and pleasant way to harvest your honey. Are you tired of your spouse making you sleep in the garage after using Bee Go? Are you tired of using a hazardous product on the bees you love? Then this is the product for you!

Am. Compl. I Ex. 7 (2010 website); Am. Compl. II Ex. 20 (2005, 2006, 2009, and 2010 catalogues). This description was excerpted from a longer text that originally appeared on Fischer's website.[2] Am. Compl. II ¶ 67. Starting in 2011, Brushy Mountain used much of this text, verbatim, to describe Natural Honey Harvester. Both the website and print catalogue stated:

For years we have promoted the use of a natural product to harvest honey but an unreliable supply of such a product has forced us to come out with our own. This 100% natural, non-toxic blend of oils and herb extracts works just like Bee Go and it smells good! Natural Honey Harvester is a safe, gentle, and pleasant way to harvest your honey. Are you tired of your spouse making you sleep in the garage after using Bee Go? Are you tired of using a hazardous product on the bees you love? Then this is the product for you!

Am. Compl. I Ex. 8 (2011 website) (emphasis added); Am. Compl. II Ex. 20 (2011 through 2014 catalogues) (emphasis added). Brushy Mountain's actions led other dealers of beekeeping products to use identical text to describe Natural Honey Harvester on their websites. See Am. Compl. I ¶ 72; Am. Compl. II ¶¶ 32, 49-57, 82-89, Ex. 21 (The Honey Hole website), Ex. 22 (C&T Bee Supply website).

Brushy Mountain also used a photograph of a Bee-Quick bottle on a webpage on which consumers could purchase Natural Honey Harvester. Am. Compl. I Ex. 11, Ex. 12. In the image, the words "Fischer's Bee-Quick" are legible, and distinctive elements of the Bee-Quick trade dress-including the bottle shape, cartoon bee mascot, and red text-are visible. Am. Compl. I ¶ 144. Both the text quoted above and this image were stripped of the copyright management information ("CMI") that had previously accompanied them. Am. Compl. I ¶¶ 90-92; Am. Compl. II ¶¶ 119-21.

Brushy Mountain also retained the name "Fischer's Bee-Quick" in the URL for a Natural Honey Harvester product page. Am. Compl. I Ex. 12, Ex. 13. As a result, consumers who searched for Fischer's Bee-Quick through internet search engines may have been misdirected to a webpage selling Natural Honey Harvester. Am. Compl. I ¶ 136.

Fischer never authorized Brushy Mountain's use of his copyrighted works and protected mark to sell a competing, knock-off product. Am. Compl. I ¶¶ 33, 59; Am. Compl. II ¶¶ 25, 71, 78. Accordingly, on April 5, 2011, Fischer sent Forrest a cease-and-desist letter, which notified Forrest of Fischer's registered copyright and trademark and demanded that Forrest terminate use of the name Bee-Quick, Fischer's copyrighted works, and the trade secrets disclosed in the course of the parties' business relationship. Am. Compl. ¶ 70, Ex. 15; Am. Compl. II ¶ 33, Ex. 15. In response, Brushy Mountain's General Manager Shane Gebauer sent Fischer a letter asserting that "[a]fter careful review by our attorney, there does not seem to [be] grounds for your request." Am. Compl. I Ex. 16; Am. Compl. II Ex. 16. As recently as May 21, 2014, the Brushy Mountain website continued to feature Fischer's proprietary text, images, and mark on a webpage selling Natural Honey Harvester. Am. Compl. I ¶¶ 133, 144, 151, 158.

B. Procedural History

On February 27, 2014, Fischer filed two actions against Stephen Forrest. 14 Civ. 1304, Dkt. 1 ("Compl. I"); 14 Civ. 1307, Dkt. 2 ("Compl. II"). On April 11, 2014, Forrest moved to dismiss the first complaint. 14 Civ. 1304, Dkt. 8. In response, on May 27, 2014, Fischer filed an Amended Complaint against both Stephen and Sandra Forrest. Id. Dkt. 23 ("Am. Compl. I").

Initially, Forrest did not appear in the second action or answer the second complaint. In early April 2014, Fischer obtained a clerk's certificate of default and moved for default judgment in the second action. 14 Civ. 1307, Dkt. 5-10. Pursuant to orders issued by the Court, Forrest appeared on April 17, 2014, id. Dkt. 12, and responded to Fischer's motion on April 25, 2014, id. Dkt. 19-24. On June 16, 2014, after full briefing, the Court denied Fischer's motion for default judgment and granted Forrest's motion to vacate the entry of default. Id. Dkt. 35. The Court held that the default was not willful, that denying the motion for default judgment would not prejudice Fischer, and that Forrest had potentially meritorious defenses. See id.

On June 19, 2014, the Court informed the parties that it was inclined to consolidate the two actions and directed the parties to notify the Court if they objected to consolidation. Id. Dkt. 37. Forrest did not object. Id. Dkt. 40, Fischer, by contrast, argued that consolidation would prejudice him by preventing him from recovering statutory damages for both direct and secondary infringement. Id. Dkt. 41. The Court therefore agreed to maintain two separate actions, at least for the time being, but it set a unified schedule for briefing Forrest's anticipated motion to dismiss. Id. Dkt. 44.

On July 9, 2014, Forrest moved to dismiss the second complaint. Id. Dkt. 45. In response, on August 3, 2014, Fischer filed an Amended Complaint against both Stephen and Sandra Forrest. Id. Dkt. 50 ("Am. Compl. II"). On August 25, 2014, the two defendants jointly filed a motion to dismiss both Amended Complaints, 14 Civ. 1304, Dkt. 30; 14 Civ. 1307, Dkt. 51, along with a supporting memorandum of law, 14 Civ. 1304, Dkt. 32; 14 Civ. 1307, Dkt. 53 ("Def. Br."). On September 23, 2014, Fischer submitted his opposition. 14 Civ, 1304, Dkt. 34, 35; 14 Civ. 1307, Dkt. 54, 55 ("Pl. Br."). On October 6, 2014, defendants filed their reply. 14 Civ. 1304, Dkt. 36, 37; 14 Civ. 1307, Dkt. 56, 57 ("Def. Reply"). On October 8, 2014, Fischer sought leave to file a sur-reply and attached a proposed brief, 14 Civ. 1304, Dkt. 38, 39; 14 Civ. 1307, Dkt. 58, 59 ("Pl. Sur-Reply"). On October 15, 2014, the Court agreed to consider the sur-reply to the extent it is consistent with Fischer's prior submission. 14 Civ. 1304, Dkt. 42; 14 Civ. 1307, Dkt. 62.

II. Discussion

A. Applicable Legal ...


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