Gayle v. Hearst Communications Inc.

Background

IToffee R. Gayle, proceeding without a lawyer and without paying filing fees, sued Hearst Communications, Inc. He asserted copyright claims under 17 U.S.C. § 504; trademark-infringement and unfair-competition claims under §§ 1114 and 1125(a) of the federal trademark statute; and related New York common-law claims.

Hearst owns ELLE magazine. The August 2017 U.S. edition included a photograph by Terry Tsolis of model Lameka Fox posing on a rock displaying the phrase “Art We All One.” Gayle alleged that he owned a trademark in “Art We All” and copyrights connected to works appearing on that magazine page. The records cited by the court identified one registered photograph and a group of 13 photographs, but Gayle did not provide the specific original works used for those registrations.

Hearst moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which permits dismissal when a complaint does not state a legally sufficient claim. The court considered the complaint and materials incorporated into or relied upon by it, as well as facts raised consistently in Gayle’s opposition papers because he was representing himself.

Copyright claims

The court held that Gayle’s copyright claim did not identify the specific original works that Hearst allegedly copied. Gayle acknowledged that he did not take the magazine photograph, did not identify the copyrighted visual material allegedly copied, did not explain which elements Hearst copied or incorporated, and did not explain how the photograph resembled his work. Merely citing two copyright-registration numbers was insufficient.

The court also stated that the phrase “Art We All” itself was not copyrightable because words, short phrases, titles, and slogans generally are not protected by copyright, even when they may be protected as trademarks. The court therefore granted the motion insofar as it sought dismissal of the copyright claim.

Federal trademark and unfair-competition claims

For the federal trademark claims, Gayle needed to allege facts showing, among other things, a valid protected mark, Hearst’s use of the mark in commerce in connection with goods or services, lack of consent, and a likelihood that customers would be confused about the source, sponsorship, affiliation, or approval of the goods or services.

The court recognized that Gayle’s trademark registration created a presumption that the mark was valid. It nevertheless found that the complaint did not plausibly allege likely customer confusion. Apart from alleging that ELLE reached more than 29 million people across platforms, Gayle provided no facts showing that consumers had encountered his mark, that it had significance to consumers, or that his purported business competed with ELLE or shared customers with it.

The court rejected Gayle’s additional arguments based on similarity, relatedness of the products, and bad faith. His allegations that both expressions were graffiti-like and that Hearst used the actual mark were conclusory and did not explain how consumers would be confused. His allegation that he registered the mark before Hearst’s alleged copying also did not, by itself, show bad faith. The court therefore granted the motion insofar as it sought dismissal of the federal trademark-infringement and unfair-competition claims.

New York claims

The court exercised supplemental jurisdiction, meaning jurisdiction over related state-law claims connected to the federal claims. It explained that New York common-law unfair competition requires the elements of a federal unfair-competition claim plus bad faith. Because Gayle failed to plead essential elements of the federal claims and failed to plead bad faith, the court concluded that he also failed to state viable New York unfair-competition and trademark claims. It granted the motion insofar as it sought dismissal of those state-law claims.

Disposition

The court granted Hearst’s motion to dismiss the complaint. It denied leave to amend because Gayle had not requested permission to amend or indicated that he could plead facts curing the identified defects. The complaint was dismissed with prejudice. The court also certified that an appeal would not be taken in good faith and denied Gayle permission to proceed without paying the appeal fees. The Clerk was directed to enter judgment and close the case.