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Ward v. Barnes & Noble, Inc.

United States District Court, S.D. New York

February 23, 2015

BARNES & NOBLE, INC., et al., Defendants

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[Copyrighted Material Omitted]

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For Michael Ward, doing business as Brainteaser Publications, Plaintiff: Barry Eran Janay, Law Office of Barry E. Janay, P.C., New York, NY.

For Barnes & Noble, Inc., Sterling Publishing Co., Inc., Francis Heaney, Patrick Blindauer, Defendants: Louis Sherman Ederer, LEAD ATTORNEY, Matthew Thomas Salzmann, Arnold & Porter, LLP, New York, NY.

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JESSE M. FURMAN, United States District Judge.

Plaintiff Michael Ward, doing business as Brainteaser Publications (" Plaintiff), brings this action against Barnes & Noble, Inc., Sterling Publishing Co., Inc. (" Sterling" ), Francis Heaney, and Patrick Blindauer (collectively, " Defendants" ), alleging copyright infringement in violation of Title 17, United States Code, Sections 101 et seq. ; trade dress infringement in violation of the Lanham Act, Title 15, United States Code, Section 1125(a); and common law claims of unfair competition and unjust enrichment. The parties' dispute concerns their respective versions of a well-known game that allegedly dates back to the reign of Queen Victoria -- namely, Hangman. Defendants now move for summary judgment. For the reasons stated below, Defendants' motion is GRANTED in part and DENIED in part.


Barnes & Noble, Inc. is the largest book retailer in the United States. (Defs.' Statement Undisputed Material Facts Pursuant Local Civ. R. 56.1 (Docket No. 22) (" Defs.' Rule 56.1 Statement" ) ¶ 1). Sterling,

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acquired by Barnes & Noble in 2003, is a publishing company with over 5,000 book titles in print in various categories, including puzzles and games. (Counterstatement Material Facts Pursuant Local R. 56.1(b) Opp'n Defs.' Mot. Summ. J. (Docket No. 33) (" Pl.'s Rule 56.1 Counterstatement" ) ¶ 2). Francis Heaney and Patrick Blindauer, both Sterling employees, authored books published by Sterling as part of a " Scratch and Solve" series incorporating elements of the traditional Hangman game: Heaney authored " Trivia Hangman," published in 2010, and Blindauer authored " Hollywood Hangman," published in 2011. (Defs.' Rule 56.1 Statement ¶ ¶ 3, 4; Decl. Louis S. Ederer Supp. Defs.' Mot. Summ. J. (Docket No. 21) (" Ederer Decl." ), Exs. 21, 23).

Plaintiff, doing business as Brainteaser Publications, is a citizen of New Zealand. (Defs.' Rule 56.1 Statement ¶ 5). In 1994, Plaintiff filed a provisional patent application in New Zealand's patent office, seeking protection for an invention he titled " Scratch Hangman." ( Id. ¶ 6). " Scratch Hangman," Plaintiff asserted in his provisional patent application, was a " novel system," involving a variant on the game Hangman, that would ultimately " produce[] a book entitled " Scratch Hangman.'" (Ederer Decl., Ex. 2, at 3). In the traditional version of Hangman -- which, according to Plaintiff, originated during Queen Victoria's reign ( Id.., Ex. 4 (Depo. Michael Ward (" Ward Depo." )) 74:17-20) -- one player thinks of a word or phrase for a second player to guess, and draws out dashes corresponding to each letter in the phrase. The second player proceeds to call out letters that he or she suspects are in the word or phrase; if the player guesses correctly, the first player fills in the corresponding letters, but if the player guesses a letter that does not appear in the phrase, the first player fills in one body part of a stick figure hanging from a gallows drawn to the side. The goal of the game is for the second player to complete the phrase before the first player draws the entire stick figure and " hangs" the man. ( See generally id., Ex. 34).

The game described and diagrammed in Plaintiff's provisional patent application proceeds from the same idea, but is made for one player instead of two. That is, instead of calling out letters for another player to fill in, the player scratches off circles corresponding to each letter of the alphabet, which reveal either a number indicating where in the phrase a letter is located, or a cross indicating that the player guessed incorrectly (and must fill in a body part of a dotted " hangman" to the side). (Defs.' Rule 56.1 Statement ¶ 6; Ederer Decl., Ex. 2; Ward Depo. 74:14-23). Plaintiff was issued a provisional patent, which lasted for twelve months. (Ward Depo. 81:20-23, 86:4-17). Upon the advice of an attorney, however, Plaintiff decided not to further pursue the patent application, and hence was never issued a full patent. (Defs.' Rule 56.1 Statement ¶ 7; Ward Depo. 86:18-87:7). Shortly thereafter, Plaintiff published a " Scratch Hangman" series with New Zealand distributor Gordon and Gotch; the series sold well throughout New Zealand, particularly in supermarket chains, and within four years became a " mass market publication." (Decl. Barry Janay Opp'n Defs.' Mot. Summ. J. (Docket No. 32) (" Janay Decl." ), Ex. A). In 2000, Plaintiff published a book in New Zealand titled " Scratch Hangman Puzzle Book" (the " New Zealand Book" ), with game boards resembling the diagram presented in Plaintiff's provisional patent application. (Defs.' Rule 56.1 Statement ¶ ¶ 6, 8-9; Ederer Decl., Ex. 3).

In the summer of 2004, Plaintiff contacted Sterling about bringing the " Scratch Hangman" series to the United States. (Defs.' Rule 56.1 Statement ¶ 13; Ederer

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Decl., Ex. 9 at 1-2, 6). In an e-mail to a staff member at Sterling, Plaintiff represented that he held " the world rights to this style of publication through patent & copyright protection" and indicated that he was willing to " either sell the publishing rights, or to arrange for the publishing of this title to be carried out under license in the U.S." (Ederer Decl., Ex. 9 at 2). On October 14, 2004, Plaintiff and Sterling entered into their first publishing agreement (the " 2004 Agreement" ). (Defs.' Rule 56.1 Statement ¶ 19; Ederer Decl., Ex. 11). The 2004 Agreement provided that Sterling would publish a series of six " Scratch Hangman" books, with the option of publishing two more every six months. (Ederer Decl., Ex. 11 at 1). It further specified that Sterling " shall copyright the Work in the United States in the name of [Ward]," but indicated that if Sterling " supplies material for the Work (such as illustrations)," Sterling " may copyright such material in its own name or in the name of its owner." ( Id.). The 2004 Agreement also contained a merger clause, providing that it " contains the entire understanding between the parties, supersedes all previous oral or written representations or agreements with respect to the Work, and may not be changed, modified, or discharged orally." ( Id. at 5; Defs.' Rule 56.1 Statement ¶ 23).

On February 16, 2005, Sterling sent Plaintiff preliminary versions of the first four books in what was now named the " Scratch and Solve" series, including the instructions and game board. (Defs.' Rule 56.1 Statement ¶ 24; Ederer Decl. Ex. 12). When Plaintiff responded, he noted that " the whole concept of the game has been changed; now players only have 5 chances before being hung, instead of the original 10." (Defs.' Rule 56.1 Statement ¶ 25; Ederer Decl., Ex. 13 at 3). After some additional back-and-forth (Ederer Decl. Ex. 13), Sterling published Scratch & Solve Hangman #1 on September 1, 2005. (Defs.' Rule 56.1 Statement ¶ 26; Ederer Decl. Ex. 14). In the years thereafter, Plaintiff and Sterling entered into several extensions of the 2004 Agreement, all providing for the publication of additional books in the " Scratch and Solve" series. (Defs.' Rule 56.1 Statement ¶ 28; Ederer Decl. Ex. 16). In 2012 and 2013, Plaintiff and Sterling entered into two new publishing agreements (the " 2012 Agreement" and the " 2013 Agreement" ), each covering two new books to be published by Sterling. (Defs.' Rule 56.1 Statement ¶ ¶ 30, 33; Ederer Decl., Exs. 17-18). Both agreements described the forthcoming books as either a specified number of " new and original puzzle words to fill 96 pages" (Ederer Decl., Ex. 17 at 1, ¶ 1(b); Pl.'s Rule 56.1 Counterstatement ¶ 31) or " sufficient list of words and phrases to fill 96 pages" (Ederer Decl., Ex. 18 at 1, ¶ 1(b); Pl.'s Rule 56.1 Counterstatement ¶ 34). During that time, Sterling obtained copyright registrations in Plaintiff's name for the books covered by the various Publishing Agreements and extensions.

Before entering into the 2012 Agreement, Plaintiff learned that Andrew McMeel Publishing (" AMP" ) had released a series of books titled " Pocket Posh Hangman." (Janay Decl., Ex. R; see Ederer Decl., Ex. 17). In an e-mail to Sterling on September 13, 2011, Plaintiff alleged that twenty percent of the solutions in AMP's series had previously appeared in the " Scratch and Solve" series. (Janay Decl., Ex. R at 2). On October 26, 2012, Plaintiff -- but not Sterling -- filed a lawsuit against AMP, alleging copyright infringement, trade dress infringement, and unfair competition, which was assigned to the Honorable Paul A. Crotty, a United States District Judge in this District. See Ward v. Andrews McMeel Publ'g, LLC, No. 12-CV-7987 (S.D.N.Y.). AMP filed a motion

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to dismiss Plaintiff's claims on February 2, 2013 ( see Janay Decl., Ex. BB at 1), which Judge Crotty granted as to Plaintiff's trade dress infringement claim, but denied as to Plaintiff's remaining claims. See Ward v. Andrews McMeel Publ'g, LLC, 963 F.Supp.2d 222 (S.D.N.Y. 2013). Shortly thereafter, Plaintiff and AMP settled and the case was dismissed. ( See Janay Decl., Ex. P at 2; 12-CV-7987 Docket No. 35).

In late 2011 and early 2012, Plaintiff learned that Sterling had published additional books in the " Scratch and Solve" series that did not identify him as an author: one, titled Trivia Hangman, was authored by Heaney and published in October 2010; the other, titled Hollywood Hangman, was authored by Blindauer and published in November 2011. (Defs.' Rule 56.1 Statement ¶ ¶ 37, 39, 42, 44; Janay Decl., Ex. Q). Additionally, in February 2013, Sterling published three more books in the " Scratch and Solve" series under the pseudonym " Jack Ketch" : Science Hangman, Geography Hangman, and Spelling Bee Hangman. (Defs.' Rule 56.1 Statement ¶ 46; Ederer Decl., Exs. 25-27). In April 2013, Plaintiff notified Sterling that he believed those books (collectively, the " Challenged Books" ) infringed his copyrights (Janay Decl., Ex. N at 3), but he indicated that he nevertheless wished to continue his business relationship with Sterling. ( Id., Ex. O at 1). Sterling then sent Plaintiff new publishing agreements, intended to cover the publication of two new " Scratch and Solve" books -- Scratch and Solve Prime Time Hangman and Scratch and Solve Underwater Hangman. ( Id., Ex. P at 3; id., Ex. I). Plaintiff refused to sign the publishing agreements because they contained provisions that Plaintiff deemed " unacceptable," including a release form accompanying the agreements that would have barred Plaintiff from bringing suit against Sterling for copyright infringement or related claims. ( Id., Ex. P at 2; id., Ex. I at 1). On November 3, 2013, Plaintiff filed this lawsuit, claiming that he had " c[o]me up with the concept and created the unique style of the " ...

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