Gayle v. Allee

ITOFFEE R. GAYLE, Plaintiff, v. DAVID S. ALLEE and MORGAN LEHMAN GALLERY, Defendants.

18 Civ. 3774 (JPC)

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

January 13, 2021

OPINION AND ORDER

JOHN P. CRONAN, United States District Judge:

This case is one of several lawsuits Itoffee R. Gayle, proceeding pro se, has brought in this District alleging violations of his asserted intellectual property for the phrase "Art We All." At issue before this Court are Gayle's claims of trademark and copyright infringement against photographer David Allee and the Morgan Lehman Gallery (collectively, "Defendants") for exhibiting and offering for sale a photograph that depicted graffiti tagged with the words "ART WE ALL ONE" and for similarly titling that photograph "Art We All One." Dkt. 55 ("Amended Complaint" or "Am. Compl."). Defendants have moved to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure. See Dkts. 56, 57 ("Motion to Dismiss."). For the reasons set forth below, the Motion to Dismiss is granted, and Gayle's Amended Complaint is dismissed in its entirety.

I. BACKGROUND

The following factual allegations are taken from the Amended Complaint. In the present posture, the Court accepts Gayle's allegations as true and draws all reasonable inferences in his favor. See Harris v. Mills, 572 F.3d 66, 71 (2d Cir. 2009). The Court at this stage may also consider statements or documents incorporated into the Amended Complaint by reference. See Kleinman v. Elan Corp., 706 F.3d 145, 152 (2d Cir. 2013).

Gayle's claims relate to a photograph that David Allee took of two buildings in New York City (the "Photograph"). See Am. Compl. at 1, 8. Viewable in the bottom right corner of the Photograph is a small construction barrier tagged with graffiti reading, "ART WE ALL ONE." See id. at 8. The Photograph—which Allee titled "Art We All One"—was displayed for sale in the Morgan Lehman Gallery in 2017 as part of Allee's solo exhibition, "Chasing Firefly." See id. at 1, 8.

The Amended Complaint seeks relief "for the unauthorized use and damages caused as a result of unfair competition, trademark infringement under the Lanham Act and state law as well as copyright infringement under federal law." Id. at 3.¹ As to his trademark claims, Gayle alleges that he created the graffiti on the construction barrier, see Opp. at 1,² and that by using "ART WE ALL ONE" in the image and title of the photo, Defendants have violated his trademark on the words "ART WE ALL" (the "Mark"), Am. Compl. at 1.³ Gayle attaches to his Amended Complaint a Trademark Certificate with Registration Number 5,108,721 for a service mark for "ART WE ALL" for "retail store services featuring works of art." See id. at 29. In support of his copyright claim, Gayle alleges that he holds a valid copyright relating to the phrase "ART WE ALL" through Registration Numbers VA-2-006-958 and VA 2-088-822, id. at 1, and that he is the "author, exclusive licensee, and owner of the registrations for the copyrightable works associated with 'ART WE ALL'/ 'ARTWEALL' and its variations," id. at 2. Gayle further contends that the copyright "is for visual material not a short phrase and is therefore copyrightable visual art." Id. at 2; see also id. ("It is this artistic design that comprises the copyrighted material, not the words by themselves . . . .").

II. PROCEDURAL HISTORY

The Court has taken great efforts to provide Gayle with time and resources to prosecute his case. Gayle brought this suit on April 27, 2018, proceeding pro se and in forma pauperis. See Dkts. 1 (the "Initial Complaint"), 2, 3. This case was originally assigned to the Honorable Ronnie Abrams, United States District Judge for the Southern District of New York. On June 13, 2018, Defendants moved to dismiss the Initial Complaint. See Dkts. 8, 9 (the "First Motion to Dismiss"). On January 25, 2019, after Gayle had filed his brief in opposition to the First Motion to Dismiss, Dkt. 18, and Defendants had filed their reply brief, Dkt. 22, the Court directed the Clerk of the Court to attempt to find Gayle representation for the purpose of opposing Defendants' First Motion to Dismiss, see Dkt. 28. After David P. Turchi, Esq., agreed to represent Gayle on a pro bono basis for that limited purpose, see Dkt. 30, the Court granted Mr. Turchi additional time to oppose Defendants' First Motion to Dismiss, see Dkt. 31. Mr. Turchi submitted an additional memorandum opposing the motion. Dkt. 36.

During a telephone conference on April 10, 2020, Judge Abrams granted Defendants' First Motion to Dismiss. Dkt. 49 ("4/10/20 Tr."). During that conference, the Court determined that Gayle had not alleged a trademark infringement claim based on the factors outlined in Polaroid Corp. v. Polaroid Electrics Corp., 287 F.2d 492 (2d Cir. 1961). Specifically, the Court concluded that Gayle had not sufficiently alleged how the use of "ART WE ALL ONE" in the photograph would likely cause confusion with Gayle's trademark or how its use even infringed on his trademark. 4/10/20 Tr. at 3. The Court further noted that Gayle had not alleged sufficient facts, such as the scope of the relevant comparison market, to allow the Court to meaningfully apply many of the Polaroid factors. Id. at 4. The Court also concluded that Gayle had not adequately alleged a copyright claim because he failed to plead what images were covered by the copyright and how any infringement was more than "de minimis." Id. 4-5. The Court nonetheless gave Gayle leave to file an amended complaint. Id. at 5. Mr. Turchi, who was representing Gayle only for the limited purpose of opposing the First Motion to Dismiss, stated that he was unable to continue representing Gayle in this case. Id. at 6-7. Accordingly, the Court provided Gayle with 60 days to amend his Complaint, and further stated that it would endeavor to find him new pro bono counsel. Id. at 7-8; see also Dkt. 48.

On July 14, 2020, Gayle, pro se, filed his Amended Complaint. Dkt. 55. On July 28, 2020, Defendants moved to dismiss the Amended Complaint, contending that it had failed to cure the deficiencies identified by Judge Abrams in her April 10, 2020 ruling. Dkt. 56. On August 24, 2020, Gayle submitted his Opposition, Dkt. 59, and on August 31, 2020, Defendants submitted their reply brief, Dkt. 60. On September 25, 2020, Judge Abrams issued an Order notifying the parties that she had been informed that pro bono counsel was interested in representing Gayle, and that Gayle would have 60 days from counsel's filing of a notice of appearance to supplement his briefing. Dkt. 63. That Order nonetheless made clear that, "[i]n the event that counsel has not filed a notice of appearance by October 30, 2020, the motion pending at Dkt. 56 will be deemed fully briefed." Id.

This case was then reassigned to the undersigned. See Dkt. 64. On November 12, 2020, after no counsel filed a notice of appearance on behalf of Gayle, the Court informed the parties that the Motion to Dismiss the Amended Complaint was deemed fully briefed and that the Court would enter an opinion in due course. Dkt. 65.

III. DISCUSSION

When reviewing a motion to dismiss, a court "must accept all allegations in the complaint as true and draw all inferences in the non-moving party's favor." LaFaro v. N.Y. Cardiothoracic Grp., PLLC, 570 F.3d 471, 475 (2d Cir. 2009) (quoting Miller v. Wolpoff & Abramson, L.L.P., 321 F.3d 292, 300 (2d Cir. 2003)). A plaintiff is required to plead sufficient factual allegations to show "more than a sheer possibility that a defendant has acted unlawfully," Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009), in order to "allow[] the court to draw the reasonable inference that the defendant is liable for the misconduct alleged," id. (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556 (2007)). Although this Court must "liberally construe" a pro se plaintiff's complaint, Triestman v. Fed. Bureau of Prisons, 470 F.3d 471, 474 (2d Cir. 2006), a "pro se litigant must still state a plausible claim for relief," Thomas v. N.Y.C. Dep't of Educ., No. 15 Civ. 8934 (JMF), 2016 WL 4544066, at *2 (S.D.N.Y. Aug. 31, 2016). "Put another way, the Court's 'duty to liberally construe a plaintiff's complaint is not the equivalent of a duty to re-write it.'" Id. (quoting Geldzahler v. N.Y. Med. Coll., 663 F. Supp. 2d 379, 287 (S.D.N.Y. 2009)).

A. Gayle Has Not Pleaded a Plausible Claim of Federal Trademark Infringement or Unfair Competition Under the Lanham Act

Defendants moved to dismiss Gayle's federal trademark infringement and unfair competition claims pursuant to Rule 12(b)(6) for failure to state a claim, on the basis that (1) Gayle has not alleged sufficient facts to establish that Defendants' use of the alleged trademark is likely to confuse consumers and (2) the claims are barred by the First Amendment. The Court addresses each contention in turn.

1. Gayle Has Not Alleged That the Photograph Is Likely to Cause Confusion

In his Amended Complaint, Gayle brings claims for federal "trademark infringement" and "unfair competition." Am. Compl. at 2. Section 32 of the Lanham Act prohibits any person from "us[ing] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114(a). Similarly, Section 43(a) of the Lanham Act—which is the statute's unfair competition provision—prohibits, as relevant here, a person from "us[ing] in commerce any word, term, name, symbol, or device, or any combination thereof . . . which . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods." Id. § 1125(a). Claims under both Sections of the Lanham Act are considered trademark infringement and are assessed under the same analysis. Louis Vuitton Malletier S.A. v. Dooney & Bourke...