Gayle v. HBO, Inc. - No. 17-CV-5867 (JMF), 2018 U.S. Dist. LEXIS 73254 (S.D.N.Y. May 1, 2018)

Rule:

To prevail on his claim of copyright infringement, Gayle "must prove that (1) unauthorized copying of the copyrighted work occurred, and (2) the infringing work is substantially similar." Significantly, demonstrating substantial similarity requires showing both that work copied was "protected expression" and "that the amount that was copied is more than de minimis." To succeed in a Lanham Act suit for unfair competition or trademark infringement, "a plaintiff has two obstacles to overcome: the plaintiff must prove that its mark is entitled to protection and, even more important, that the defendant's use of its own mark will likely cause confusion with plaintiff's mark." To prevail in such an action, a plaintiff must show "'a probability of confusion, not a mere possibility,' affecting 'numerous ordinary prudent purchasers.'"

Facts:

Plaintiff Itoffee R. Gayle, proceeding pro se, brought the present action against Home Box Office, Inc. ("HBO") alleging copyright and trademark infringement. Plaintiff's claims derived from the brief depiction of graffiti in the background of one scene in an episode of one HBO television series. In the scene, a woman was shown walking down a New York City street and passing a dumpster tagged with graffiti stating "art we all" that plaintiff claimed was his intellectual property. Plaintiff alleged that HBO depicted the graffiti without permission, compensation, or attribution, and thus, infringed his copyright and trademark rights. Pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, HBO moved to dismiss plaintiff’s claims.

Issue:

Did HBO infringe plaintiff’s copyright and trademark rights, thereby warranting the dismissal of HBO’s motion to dismiss?

Answer:

No.

Conclusion:

The court noted that in order to prevail on his claim of copyright infringement, plaintiff must prove that an unauthorized copying of the copyrighted work occurred, and the infringing work was substantially similar. On the other hand, in order to succeed in a Lanham Act suit for unfair competition or trademark infringement, the plaintiff must prove that its mark was entitled to protection and, even more important, that the defendant's use of its own mark will likely cause confusion with plaintiff's mark. To state a cognizable claim in trademark cases, the plaintiff must raise a serious question as to the likelihood of confusion. In this case, the court held that the graffiti in question was filmed in such a manner and appeared so fleetingly that there was no plausible claim for copyright infringement.