Ward v. Andrews Mcmeel Publ'g, LLC

963 F.Supp.2d 222

Michael WARD d/b/a Brainteaser Publications, Plaintiff,

v.ANDREWS McMEEL PUBLISHING, LLC, Defendant.

No. 12 Civ. 07987(PAC).

United States District Court, S.D. New York.

Aug. 1, 2013.

Barry Eran Janay, Law Office of Barry E. Janay, P.C., Eleanor Martine Lackman, Joshua Scott Wolkoff, Cowan, Debaets, Abrahams & Sheppard LLP, New York, NY, for Plaintiff.

Robert Penchina, Levine, Sullivan, Koch & Schulz, LLP, New York, NY, for Defendant.

OPINION & ORDER

PAUL A. CROTTY, District Judge:

Plaintiff Michael Ward (“Ward”) brought this action against Andrews McMeel Publishing, LLC (“AMP”) on October 26, 2012, asserting claims of copyright infringement, trade dress infringement, and common law unfair competition. On February 2, 2013, AMP moved to dismiss pursuant to Fed.R.Civ.P. 12(b)(6). For the reasons discussed below, the Court GRANTS AMP's motion to dismiss the trade dress claim, with leave to replead, and DENIES AMP's motion to dismiss the copyright and unfair competition claims.

BACKGROUND¹

Ward, doing business as Brainteaser Publications, has been publishing a highly successful series of “Scratch & Solve Hangman” books (the “S & S Books”) for approximately twenty years. In the most basic form of the classic hangman word game, one player thinks of a word or phrase, which a second player is required to determine. The word or phrase is initially represented by a fixed number of dashes, which corresponds to the number of letters that it contains. As the second player guesses individual letters, the first player either fills them in above the dash corresponding to where that letter appears in the word or phrase, or draws one element of a man hanging from a scaffold if the letter does not appear anywhere. The game ends either when a diagram depicting a stick-figure hanging from the gallows is completed, or when the second player has correctly determined the entire word or phrase. The exact nature of the diagram may vary, with some players choosing to draw the gallows before the game begins, while others may draw individual elements of the gallows as part of the game or draw a more detailed stick figure in order to provide more chances to guess letters. ( See generally Ex. 1.) Since the books provide the puzzles, they are designed to be played solely by one player. Thus, “[w]hen you play the game ..., either you win or you die. There is no middle ground.” George R.R. Martin, A Game of Thrones 488 (1996).

The S & S Books were initially published in Australia and New Zealand. They were introduced into the United States market in 2005 and are subject to registered copyrights. To date, nearly two million copies have been sold. In or around 2008, AMP began publishing books based on the hangman game as part of its “Pocket Posh” book series (the “PP Books”). Ward alleges that the PP Books “incorporate the entire concept, feel, and design of the S & S ... Books” (Compl. ¶ 18), taking their “overall appearance and trade dress,” “lift [ing] their layout and style of the text ... and even the appearance of the typefaces,” “misappropriate[ing] the style and appearance of the hanging-man drawing” ( id. at ¶ 19), and “copy[ing] a substantial number of the answers.” ( Id. at ¶ 20.) Copies of both PP Books and S & S Books have been provided to the Court, and the Complaint included an exhibit reproducing puzzles from an S & S and PP Book, reproduced below. The first image is of Plaintiff's puzzle, and the latter is Defendant's:

IMAGE

DISCUSSION

Since this is a motion to dismiss, the Court “accept[s] as true all of the factual allegations contained in the complaint” and construes it in the light most favorable to the plaintiff. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 572, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). The Court only “assess[es] the legally feasibility of the complaint;” it does not “assay the weight of the evidence which might be offered in support thereof.” Levitt v. Bear Stearns & Co., 340 F.3d 94, 101 (2d Cir.2003). To state a facially plausible claim, a plaintiff must plead “factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 677, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009). “A pleading that offers ‘labels and conclusions' or ‘a formulaic recitation of the elements of a cause of action will not do.’ Nor does a complaint suffice if it tenders ‘naked assertion[s]’ devoid of ‘further factual enhancement.’ ” Id. (quoting Twombly, 550 U.S. at 557, 127 S.Ct. 1955).

I. CopyrightA. Standard

“Before asking a court to consider the question of infringement, a party must demonstrate the existence and the validity of its copyright, for in the absence of copyright,” works that “are in the public domain ... may be freely copied.” Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir.1980). “The sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author,” which “means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.” Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).

Two limitations on copyright protection are at issue. First, “[i]t is an axiom of copyright law that the protection granted to a copyrightable work extends only to the particular expression of an idea and never to the idea itself.” Reyher v. Children's Television Workshop, 533 F.2d 87, 90 (2d Cir.1976). The idea-expression dichotomy “has produced a corollary maxim that even expression is not protected in those instances where there is only one or so few ways of expressing an idea that protection of the expression would effectively accord protection to the idea itself.” Kregos v. Assoc. Press, 937 F.2d 700, 705 (2d Cir.1991). “Concededly, despite the importance of this dichotomy in delineating the scope of protection to be afforded a copyrighted work, it is a difficult task ... to distill the nonprotected idea from protected expression,” as “often the determination is a matter of degree” and “[d]ecisions must therefore inevitably be ad hoc.” Durham, 630 F.2d at 912 (internal quotations omitted). Second, an “equally important limitation on the scope of copyright protection” is that “[j]ust as copyright protection extends to expression but not ideas, copyright protection extends only to the artistic aspects, but not the mechanical or utilitarian features, of a protected work.” Id. at 913.

Once the validity of a copyright has been established, the plaintiff must next prove infringement by demonstrating that “ ‘(1) the defendant has actually copied the plaintiff's work; and (2) the copying is illegal because a substantial similarity exists between the defendant's work and the protectable elements of plaintiff's.’ ” Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 63 (2d Cir.2010) (quoting Hamil Am., Inc. v. GFI, 193 F.3d 92, 99 (2d Cir.1999)). “The standard test for substantial similarity between two items is whether an ‘ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the same.’ ” Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 111 (2d Cir.2001) (quoting Hamil Am., 193 F.3d at 100). Where works have both protectable and unprotectable elements, however, courts “ ‘must attempt to extract the unprotectable elements from [their] consideration and ask whether the protectable elements, standing alone, are substantially similar.’ ” Gaito Architecture, 602 F.3d at 66 (quoting Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir.1995)). In doing so, however,the Second Circuit has also “disavowed any notion that we are required to dissect [the works] into their separate components and compare only those elements which are in themselves copyrightable,” because courts are still “principally guided by comparing the contested design's total concept and overall feel with that of the allegedly infringed work, as instructed by our good eyes and common sense.” Id. (internal quotations omitted). As the Second Circuit has explained,

This is so because the defendant may infringe on the plaintiff's work not only through literal copying of a portion of it, but also by parroting properties that are apparent only when numerous aesthetic decisions embodied in the plaintiff's work of art—the excerpting, modifying, and arranging of unprotectable elements—are considered in relation to one another. Thus, in the end, our inquiry necessarily focuses on whether the alleged infringer has misappropriated the original way in which the author has selected, coordinated, and arranged the elements of his or her work.

Id. (internal quotations omitted). “Courts have noted the apparent tension” between these tests, Gordon v. McGinley, No. 11 Civ. 1001, 2011 WL 3648606, at *2 (S.D.N.Y. Aug. 18, 2011), though they may be reconciled by interpreting them together to mean “ ‘that, while the infringement analysis must begin by dissecting the copyrighted work into its component parts in order to clarify precisely what is not original, infringement analysis is not simply a matter of ascertaining similarity between components viewed in isolation.’ ” Canal+ Image UK Ltd. v. Lutvak, 773 F.Supp.2d 419, 429 (S.D.N.Y.2011) (quoting Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 134 (2d Cir.2003)).

“[Q]uestions of non-infringement have traditionally been reserved for the trier of fact” because “the question of substantial similarity typically presents an extremely close question of fact,” though courts may “resolve that question as a matter of law” where “ ‘the similarity between two works concerns only non-copyrightable elements of the plaintiff's work, or [where] no reasonable jury, properly instructed, could find that...