The National Academy of Television Arts and Sciences v. Multimedia System Design

Background

The National Academy of Television Arts and Sciences, Inc. and Academy of Television Arts & Sciences, referred to collectively as the Television Academies, alleged that they co-own copyrights and trademarks for the Emmy Statuette design. Multimedia System Design, Inc., doing business as “Crowdsource the Truth,” used an image of the Emmy Statuette holding an illustration of the COVID-19 virus in a video and related promotional posts for its “Crony Awards.” The image appeared during the video’s opening ten seconds and was also used as the video’s thumbnail.

The Television Academies asserted claims for copyright infringement, federal and New York trademark dilution, federal and New York trademark infringement, false designation of origin, passing off, unfair competition, and libel. Multimedia System Design and Jason Goodman asserted counterclaims for declaratory relief, violation of New York’s anti-SLAPP law, and abuse of the Digital Millennium Copyright Act. The parties filed cross-motions to dismiss. George Sweigert separately moved to intervene or appear as a friend of the court.

Copyright and trademark claims

Judge Caproni denied Multimedia System Design’s partial motion to dismiss. The court held that the copying was not trivial because the altered image was prominent, in focus, occupied much of the screen, and served as the video’s thumbnail.

The court also held that fair use could not be established as a matter of law at the pleading stage. It concluded that the altered image retained the dominant and essential aesthetic elements of the Emmy Statuette, was used to promote another award show, and was not a parody because it did not comment on the Emmy Statuette or the Television Academies. The court found that the four fair-use factors weighed against fair use at that stage, although it recognized that the parties’ primary markets did not meaningfully overlap.

For the trademark claims, the court concluded that the Television Academies plausibly alleged a likelihood of consumer confusion. The court emphasized the strength and near-identity of the marks, the use of the image in connection with another award show, and the presumption of bad faith arising from intentional copying. The court also held that the fair-use exception did not defeat the trademark-dilution claims at the pleading stage.

Counterclaims and intervention

The court granted the Television Academies’ motion to dismiss the counterclaims. It dismissed the requests for declaratory judgments because they duplicated affirmative defenses and mirrored the Television Academies’ copyright and libel claims. It dismissed the anti-SLAPP counterclaim because New York’s “substantial basis” standard conflicts with the standards in the Federal Rules of Civil Procedure and therefore does not apply in federal court. It dismissed the Digital Millennium Copyright Act counterclaim because the allegations did not support an inference that the Television Academies knowingly made a material misrepresentation to YouTube.

The court denied George Sweigert’s motion to intervene or, alternatively, to appear as a friend of the court. It found that he had no legally protectable interest in the dispute and that his participation would inject unrelated disputes with Jason Goodman into the case. The court also denied leave to amend the counterclaims because amendment would be futile. The opinion does not state that the counterclaim dismissals were with or without prejudice.

Disposition

The court denied Multimedia System Design’s partial motion to dismiss or, alternatively, for judgment on the pleadings. It separately denied the request for a declaration that the Crony Graphic was trivial or fair use, granted the Television Academies’ motion to dismiss the counterclaims, denied George Sweigert’s motion to intervene, and ordered the parties to report on discovery by September 3, 2021.