United States District Court, S.D. New York
JAMES H. FISCHER, Plaintiff,
STEPHEN T. FORREST, JR., SANDRA F. FORREST, SHANE R. GEBAUER, and BRUSHY MOUNTAIN BEE FARM, INC., Defendants.
OPINION & ORDER
A. Engelmayer United States District Judge
consolidated cases arise out of the termination of a
longstanding business relationship between plaintiff James H.
Fischer and defendants Stephen T. Forrest, Jr., Sandra F.
Forrest, Shane R. Gebauer, and Brushy Mountain Bee Farm, Inc.
("Brushy" and collectively,
"Defendants"). Fischer alleges that the Defendants
used his likeness and proprietary text and images to promote
their own competing knock-off version of his product,
Bee-Quick, a honey harvesting aid. He brings claims under the
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., along with a claim under
New York law for unfair competition.
now are Brushy's motions for summary judgment. In a
thorough and persuasive Report and Recommendation, the
Honorable Andrew J. Peck, United States Magistrate Judge, has
recommended granting these motion. For the reasons that
follow, the Court agrees, and grants these motions in their
1999, Fischer, an apiarist, has successfully sold the product
Bee-Quick. TAC 04 ¶ 26. Fischer promotes
"Bee-Quick" as a unique "honey harvesting
aid" that it is "food-safe, non-toxic, not foul
smelling, and effective." Id.
2000, Fischer began using the following four phrases, among
others, in conjunction with the sale of Bee-Quick on his
1. "Are you tired of your spouse making you sleep in the
garage after using Butyric Anhydride?"
2. "Are you tired of using hazardous products on the
bees you love?"
3. "Fischer's Bee-Quick is a safe, gentle, and
pleasant way to harvest your honey."
4. "A Natural, Non-Toxic Blend of Oils and Herbal
See SAC 04 Ex. 5. Fischer has created non-website
advertisements for Bee-Quick using some of the above phrases.
See, e.g., id.
and Sandra Forrest ("the Forrests") are the
founders of Brushy Mountain Bee Farm Inc.
("Brushy"). Dkt. 175 ("Stephen Forrest
Decl.") ¶ 2. Brushy is a mail-order business that
primarily deals in bee-keeping supplies. Id.
¶¶ 2-3. In 2007, the Forrests hired Shane Gebauer,
Brushy's current President. Dkt. 173 ("Gebauer
Decl.") ¶ 1; Dkt. 180, Ex. B ("Gebauer
Dep.") at 6.
to Gebauer, between 2008 and 2013, he worked collaboratively
with the Forrests on the Brushy catalogue and website.
Gebauer Dep. at 24, 26-29; Dkt. 180, Ex. D ("Sandra
Forrest Dep. 2") at 6-7. This collaboration entailed,
among other things, selecting photographs and text for the
products Brushy sold online and through its catalogue.
Gebauer Dep. at 27-31. To that end, Gebauer attests, Brushy
"would draft its own copy [and] describe the products
that it had purchased from other vendors that it was
reselling." Id. at 29. Today, Gebauer works
with others "to review and approve the Brushy Mountain
Bee Farm catalogue." Id. at 31.
Forrests attest that, around 2009, they largely stopped
working on the Brushy catalogue. Dkt. 180 Ex. C
("Stephen Forrest Dep. 2") at 26-27, Sandra Forrest
Dep. 2 at 5; Dkt. 176 Ex. C ("Sandra Forrest Dep.
1") at 17. When they did work on the catalogue, however,
they generally did so in the manner described by Gebauer.
See Sandra Forrest Dep. 2 at 6 ("We would read
what the supplier had to say and then we would write it up in
a way that we thought would be best to describe the product
to our customers."); id. Stephen Forrest Dep. 2
at 12 ("I believe we wrote [product descriptions] when
Sandy and I were doing it.").
2014, the Forrests "ceased having any equity interest in
Brushy Mountain Bee Farm, Inc." Gebauer Dep. at 9.
Brushy Mountain Bee Farm Holdings, Inc. obtained the
Forrests' equity in Brushy. Id. at 8.
The Fischer-Brushy Relationship
2002, Brushy began selling Bee-Quick. Dkt. 174 ("Sandra
Forrest Decl") ¶ 2; Stephen Forrest Decl.
¶¶ 4-5. At that point, Fischer alleges, Brushy
became an "Authorized Dealer" of the product. TAC
04 ¶ 32. Stephen Forrest denies this. He attests that
Fisher and Brushy never had a written contract. Stephen
Forrest Decl. ¶ 4; see also Dkt. 176 Ex. A
("Fischer Dep.") at 9; Gebauer Decl. ¶ 3.
2002 onwards, Brushy used the following words (or ones
similar to it) to promote Bee-Quick in advertisements:
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
Forrest Decl. ¶ 3; Gebauer Decl. ¶ 14 & Ex. F.
Sandra Forrest claims that she wrote the above text, although
she and Stephen Forrest recalled with certainty only that
they wrote the phrase: "Are you tired of your spouse
making you sleep in the garage?" Sandra Forrest Dep. 1
at 8-9; Dkt. 176 Ex. D ("Stephen Forrest Dep. 1")
at 19. Fischer attests that the Forrests did not author this
text. See Dkt. 180 Ex. E ("Fischer Aff.")
Termination of the Fischer-Brushy Relationship
2010, Brushy allegedly began having trouble obtaining
Bee-Quick and decided to sell its own version of the product,
Natural Honey Harvester, which it obtains from a third-party
vendor. Gebauer Dep. at 54-56, 71; Stephen Forrest Dep. 2 at
36. As a result, on December 10, 2010, a Brushy employee sent
Fischer an email stating that Brushy would not be selling
Bee-Quick in its 2011 catalogue and asking for an address to
which it could ship back its remaining Bee-Quick supply.
See SAC 04 Ex. 3b (December 10, 2010 Email).
asserts that, as a result of the December 10, 2010 email,
"Defendants immediately lost any right, license, or
permission to use any of [his] intellectual property, as all
such use was permitted solely in the selling of Plaintiff s
product." See TAC 04 ¶ 35; TAC 07 ¶
47. Defendants accept this proposition in their motions for
summary judgment. On the bases of the parties' common
attestations, the Court, for purposes of this lawsuit,
assumes that as of December 10, 2010, Brushy no longer had
any "right, " "license, " or
"permission" to use Fischer's intellectual
did not, however, communicate to Brushy that it no longer had
such permission to use his intellectual property until April
2011, when Fischer sent a cease and desist letter, alleging,
inter alia, that Brushy was engaged in
"copyright infringement." See Gebauer
Decl. Ex. D. In a letter dated April 14, 2011, Gebauer
replied that "there [did] not seem to be grounds for
[Fischer's] request, " and that Brushy would
"review" Fischer's concerns if he was more
"specific." Gebauer Decl. Ex. E. Fischer does not
appear to have responded.
Brushy's December 10, 2010 email, Brushy did not
immediately remove Bee-Quick from its website. Gebauer Decl.
¶¶ 13-14 & Ex. F. On December 26, 2010,
Bee-Quick was still listed for sale there. See Id.
And photos of Bee-Quick remained on Brushy's website
until at least January 28, 2011, at which point they appeared
to have been replaced by photos of Natural Honey Harvester.
Gebauer Decl. ¶ 15. Further, Fischer has adduced
exhibits indicating that an image of Bee-Quick remained on
Brushy's website until at least March 3, 2014.
See SAC 04 Exs. 9-12; see also Fischer Aff.
at 10 (attesting that links to images of Bee-Quick on Brushy
website were still operable as of May 8, 2017).
January 21, 2011, Brushy shipped its 2011 catalogue
advertising Natural Honey Harvester. Def Br. Ex. 6 at 2-3;
Def. Br. Ex. 7 ("Twete Aff") ¶¶ 3-4 &
Exs. A-B. The text in the 2011 catalogue was as follows:
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 hazardous products
on the bees you love? Then this is the product for you!
Def. Br. Ex. 6 at 3. Gebauer attests that Stephen Forrest
came up with the name "Natural Honey Harvester" and
that he and Stephen Forrest collaborated on the catalogue
text. Gebauer Dep. at 55, 23. In contrast, Stephen Forrest
attests that Gebauer came up with this wording. Stephen
Forrest Dep. 1 at 37. Between 2012 and 2014, the above text
remained largely unchanged in Brushy's catalogues,
see SAC 07 Ex. 20 (excerpts from Brushy's
catalogues), and it remained online until at least December
28, 2011, id. Ex. 8. Two of Brushy's third-party
vendors, The Honey Hole and C&T Bee Supply, used this
advertisement in 2012 and 2014. See SAC 07
February 7, 2011, Fischer filed a copyright registration for
the "text and images of [his] Bee-Quick.com
website." TAC 04 ¶ 41; Def. Br. Ex. 4.
to Fischer, Defendants removed Copyright Management
Information ("CMI") from his photographs and other
unspecified copyrighted works. Fischer Dep. at 133, 137. As
to the photographs, Fischer claims that Defendants removed
metadata from a Bee-Quick photo he provided them, Fischer
Dep. at 137, and put their own watermark over his photo, TAC
respect to non-photographic materials, although Fischer's
claims as to the precise source of the CMI at issue are
elusive,  Fischer alleges that when Defendants began
selling Natural Honey Harvester, they altered their online
and print advertisements by replacing, inter alia,
the term "Fischer's Bee-Quick" with
"Natural Honey Harvester" in a sentence describing
the product. See Fischer Dep. at 131-33, 137;
Fischer Aff. at 6; see also Fischer v. Forrest, 14
Civ. 1304, 2015 WL 195822 at *8 (S.D.N.Y. Jan. 13, 2015)
("[T]he Bee-Quick brochure attached to the complaints .
. . stated that 'Fischer's Bee-Quick is a safe,
gentle, and pleasant way to harvest your honey.' . . .
Brushy Mountain replaced the textual reference to
'Fischer's Bee-Quick' with the words 'Natural
Honey Harvester.'"). Fischer argues that these acts
constitute unlawful CMI removal. Defendants deny ever
removing any CMI or metadata. Gebauer Deck ¶ 8; Sandra
Forrest Decl. ¶ 8; Stephen Forrest Deck ¶ 9.
9, 2014, defendants Stephen and Sandra Forrest moved to
dismiss Fischer's pro se complaints. In a
decision issued January 13, 2015, the Court denied those
motions. 14 Civ. 1304, Dkt. 45; 14 Civ. 1307, Dkt. 65
(collectively, "First MTD"). On December 28, 2015,
Fischer filed a Third Amended Complaint in each action.
See TAC 04; TAC 07. After Defendants moved to
dismiss various claims, see 14 Civ. 1304, Dkts.
102-110; 14 Civ. 1307, Dkts. 123-129, the Court referred the
motions to dismiss to the Honorable Henry Pitman, United
States Magistrate Judge, for a Report and Recommendation,
having earlier referred the cases to Judge Pitman for general
pretrial supervision. On December 15, 2016, these referrals
were reassigned to Judge Peck.
January 13, 2017, Judge Peck issued a Report and
Recommendation, 14 Civ. 1304, Dkt. 132; 14 Civ. 1307, Dkt.
147 ("R&R 1"), as to the pending motions to
dismiss. On January 27, 2017, Fischer filed objections to
R&R 1, 14 Civ. 1304, Dkt. 137; 14 Civ. 1307, Dkt. 150,
and on February 10, 2017, Defendants filed responses to these
objections, 14 Civ. 1304, Dkt. 141; 14 Civ. 1307, Dkt. 151.
On March 21, 2017, this Court adopted the entirety of R&R
1 in a written opinion. 14 Civ. 1304, Dkt. 153; 14 Civ. 1307,
Dkt. 161. The Court thereby dismissed Fischer's trademark
infringement claims and his New York right of publicity claim
against all defendants. The Court also dismissed
Fischer's copyright infringement claims against Gebauer
that had accrued before February 3, 2012 and those against
Brushy that had accrued before December 28, 2012.
Defendants' Motions for Summary Judgment
April 19, 2017, following discovery, Defendants filed motions
for summary judgment, 14 Civ. 1304, Dkt. 170; 14 Civ. 1307,
Dkt. 172, as well as memoranda of law in support, 14 Civ.
1304, Dkt. 175; 14 Civ. 1307, Dkt. 177 ("Def.
Br."). On May 8, 2017, Fischer filed memoranda in
opposition. 14 Civ. 1304, Dkt. 178; 14 Civ. 1307, Dkt. 179
("PL Br."). On May 15, 2017, Defendants filed reply
memoranda. 14 Civ. 1304, Dkt. 180; 14 Civ. 1307, Dkt. 181
("Def. Reply Mem.").
14, 2017, Judge Peck issued a thorough (59-page) Report and
Recommendation on the motions for summary judgment. 14 Civ.
1304, Dkt. 184; 14 Civ. 1307, Dkt. 185 ("R&R 2"
or "the Report"). The Report recommends granting
these motions in their entirety. On August 11, 2017, Fischer
filed objections. 14 Civ. 1304, Dkt. 191; 14 Civ. 1307, Dkt.
188 ("Obj."). On August 25, 2017, Defendants filed
a response. 14 Civ. 1304 Dkt. 193; 14 Civ. 1307, Dkt. 189
("Def. Obj. Resp."). On September 12, 2017, Fischer
filed a reply. 14 Civ. 1304, Dkt. 196; 14 Civ. 1307, Dkt. 192
("Pl. Obj. Reply").
Reports and Recommendations
magistrate judge has issued a Report and Recommendation, a
district court may "accept, reject, or modify, in whole
or in part, the findings or recommendations made by the
magistrate judge." 28 U.S.C. § 636(b)(1). To accept
the portions of a report to which no timely objection has
been made, "a district court need only satisfy itself
that there is no clear error on the face of the record."
Acevedo v. Lempke, No. 10 Civ. 5285 (PAE) (HBP),
2014 WL 4651904, at *3 (S.D.N.Y. Sept. 17, 2014) (quoting
King v. Greiner, No. 02 Civ. 5810 (DLC), 2009 WL
2001439, at *4 (S.D.N.Y. July 8, 2009)). When a timely and
specific objection has been made, the court is obligated to
review the contested issues de novo. See id.; Fed.
R. Civ. P. 72(b)(3); Hynes v. Squillace, 143 F.3d
653, 656 (2d Cir. 1998). But when the objections simply
reiterate previous arguments or make only conclusory
statements, the court should review the Report and
Recommendation for clear error. Dickerson v. Conway,
No. 08 Civ. 8024 (PAE) (FM), 2013 WL 3199094, at *1 (S.D.N.Y.
June 25, 2013); see also Kirk v. Burge, 646
F.Supp.2d 534, 538 (S.D.N.Y. 2009) (collecting cases).
Further, "[c]ourts generally do not consider new
evidence raised in objections to a magistrate judge's
report and recommendation." Tavares v. City of New
York, No. 08 Civ. 3782 (PAE), 2011 WL 5877548, at *2
(S.D.N.Y. Nov. 23, 2011); see also Pan Am. World Airways
v. Int'l Bhd. of Teamsters, 894 F.2d 36, 40 n.3 (2d
Cir. 1990) ("A district judge is not required to hear or
rehear any witness, and Pan Am had no right to present
further testimony when it offered no justification for not
offering the testimony at the hearing before the
Motions for Summary Judgment
prevail on a motion for summary judgment, the movant must
"show . . . that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a
matter of law." Fed.R.Civ.P. 56(a). The movant bears the
burden of demonstrating the absence of a question of material
fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322
the movant has properly supported its motion with evidentiary
materials, the opposing party must establish a genuine issue
of fact by "citing to particular parts of materials in
the record." Fed.R.Civ.P. 56(c)(1); see also Wright
v. Goord, 554 F.3d 255, 266 (2d Cir. 2009). An issue of
fact is "genuine" if the evidence is such that a
reasonable jury could return a verdict for the non-moving
party. SCR Joint Venture L.P. v. Warshawsky, 559
F.3d 133, 137 (2d Cir. 2009). "[A] party may not rely on
mere speculation or conjecture as to the true nature of the
facts to overcome a motion for summary judgment."
Hicks v. Baines, 593 F.3d 159, 166 (2d Cir. 2010)
(internal quotation marks and citation omitted). "Only
disputes over facts that might affect the outcome of the suit
under the governing law" will preclude a grant of
summary judgment. Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248 (1986). In determining whether there are
genuine issues of material fact, the Court is "required
to resolve all ambiguities and draw all permissible factual
inferences in favor of the party against whom summary
judgment is sought." Johnson v. Killian, 680
F.3d 234, 236 (2d Cir. 2012) (quoting Terry v.
Ashcroft, 336 F.3d 128, 137 (2d Cir. 2003)).
makes several objections to the Report. See Obj. at
Fischer's Claim for Statutory Damages for Direct
objects on two grounds to the Report's recommendation
that he cannot obtain statutory damages for direct copyright
infringement. First, he argues that Judge Peck, in
determining the date of Brushy's first infringing act,
wrongly relied on an affidavit that should have been
excluded. Obj. at 2-4. Second, he argues that the
Report is wrong that he cannot recover statutory damages
because Brushy's first infringing act predated
Fischer's copyright registration. Id. at 4-6.
The Court reviews these arguments in turn, after first
reviewing the background legal standards.
Applicable Legal Standards
the Copyright Act, a copyright infringer can be held
accountable for either actual damages and profits of the
infringer or statutory damages." Solid Oak Sketches,
LLC v. 2K Games, Inc., No. 16 Civ. 724 (LTS), 2016 WL
4126543, at *2 (S.D.N.Y. Aug. 2, 2016) (citing 17 U.S.C.
§ 504(a)). Statutory damages under the Act are designed
to "discourage wrongful conduct, " as well as to
provide "reparation for injury." F. W.
Woolworth Co. v. Contemporary Arts, Inc., 344 U.S. 228,
order to obtain statutory damages and attorneys' fees, a
plaintiff must have registered its copyright prior to the
alleged infringement." Solid Oak Sketches, LLC,
2016 WL 4126543 at *2 (citing 17 U.S.C. § 412 and
Knitwaves, Inc. v. Lollytogs Ltd.,71 F.3d 996, 1012
(2d Cir. 1995)). "Courts in this district have held that
Section 412 of the Copyright Act imposes a bright-line rule
that precludes recovery of statutory damages and
attorneys' fees where the first act ...