Gayle v. Allee

Background

Gayle proceeded without a lawyer and alleged that he owned trademark and copyright rights in “ART WE ALL.” He claimed that David S. Allee and Morgan Lehman Gallery infringed those rights by exhibiting and offering for sale a photograph of two buildings that included, in a small lower corner, a construction barrier marked with graffiti reading “ART WE ALL ONE.” Allee titled the photograph “Art We All One,” and it was displayed in the Gallery in 2017 as part of Allee’s solo exhibition, “Chasing Firefly.”

Gayle’s amended complaint asserted federal trademark infringement and unfair competition under Sections 32 and 43(a) of the Lanham Act, federal copyright infringement, and New York trademark claims. He attached a trademark registration for “ART WE ALL” covering retail store services featuring works of art and referred to two copyright registrations containing photographs. Defendants moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which allows dismissal when a complaint does not state a legally sufficient claim.

Federal Trademark and Unfair-Competition Claims

The court held that Gayle did not plausibly allege a likelihood of consumer confusion, which is required for both of his Lanham Act claims. The court considered the factors commonly used in the Second Circuit, including the strength and similarity of the marks, the relationship between the parties’ products, actual confusion, bad faith, and the sophistication of consumers.

The court found that Gayle’s allegation that the defendants’ use caused “great confusion” was conclusory. His other allegations addressed, at most, similarity and alleged bad faith, but did not explain how consumers would be confused about the photograph’s source, sponsorship, affiliation, or connection with Gayle. The court also noted that the defendants used “ART WE ALL ONE,” not the identical phrase “ART WE ALL,” and that the graffiti was small and not immediately visible in the photograph. Gayle did not adequately allege the relevant market, competition between the parties, plans to enter the defendants’ market, or consumer sophistication. Prior registration of the mark and alleged knowledge of it also did not, by themselves, establish bad faith.

The court separately held that the First Amendment protected defendants’ use of the phrase. Applying the test for artistic works, the court found that the use was artistically relevant because the graffiti depicted the photographed location and the title reflected text appearing in the photograph. The use was also not explicitly misleading: nothing in the photograph or title indicated that Gayle endorsed, sponsored, created, or was associated with the photograph.

Copyright Claim

The court held that Gayle had not adequately pleaded copyright infringement. A copyright plaintiff must identify the specific copyrighted works, allege ownership and registration, and describe what acts infringed the works. Gayle identified two registrations containing multiple photographs but did not specify which images were allegedly infringed. Instead, his allegations appeared to treat the words “ART WE ALL” and “ARTWEALL” as copyrightable on their own.

The court ruled that words, short phrases, titles, and slogans are not protected by copyright merely because they may be protected as trademarks. It also considered whether Gayle had presented the phrase in an original artistic design but found no protected elements in the materials before it. The court concluded that the graffiti in the photograph and Gayle’s copyrighted works were not substantially similar as a matter of law because their common elements were not copyrightable.

The court additionally ruled that any alleged copying was de minimis, meaning too trivial to qualify as actionable infringement. The graffiti appeared in small print in the bottom corner of a photograph dominated by apartment buildings and other objects, and the photograph was displayed only at one exhibition in 2017. The court therefore concluded that the alleged copying was insufficient in both amount and expressive significance to support a copyright claim. The court did not reach defendants’ separate fair-use argument.

State Trademark Claims and Disposition

The court exercised supplemental jurisdiction over Gayle’s state trademark claims because the standards for those claims did not materially differ from the standards for his Lanham Act claims. It dismissed the state claims for the same reasons it dismissed the federal trademark claims.

The court granted defendants’ motion to dismiss and dismissed Gayle’s amended complaint with prejudice. The Clerk of Court was directed to terminate the motion at Docket Number 56 and close the case.