Norris v. Goldner

Background

Alexander Norris, a visual artist behind the “Webcomic Name” series and its character Blob, sued Marc Goldner, Golden Bell Entertainment, LLC, and Golden Bell Studios, LLC. The dispute centered on an August 2017 collaboration agreement concerning a planned “Webcomic Name Game” and “Webcomic Name Stuffed Animals.” The agreement assigned defendants specified copyright and trademark rights in those works and provided for payments to Norris, including a $3,125 advance after delivery of the game’s “final files” and an additional $2,500 after delivery of specified print-ready files.

The parties disagreed about the agreement’s scope. Norris argued that it covered only the planned game, stuffed animals, and related commercial developments. Defendants argued that it transferred rights in all of Norris’s work featuring Blob. After the agreement, GB Entertainment submitted trademark applications containing screenshots and other images from Norris’s social-media accounts and website. It obtained a registration for “Webcomic Name” covering board games, toys, and related goods. Norris also alleged that defendants failed to pay the contract advances. The parties filed cross-motions for summary judgment, asking the court to resolve the claims without a trial.

Rulings on the Report and Recommendation

Judge Engelmayer reviewed objections to Magistrate Judge Sarah Netburn’s Report and Recommendation. He adopted the Report in substantial part but changed its recommended result on the false-designation-of-origin claim. The order’s dispositions were:

- Count One—copyright infringement: The court granted Norris’s motion for summary judgment. It held that defendants’ use of Norris’s artwork in the trademark applications was unauthorized. The agreement was limited to the identified game and stuffed-animal works and did not transfer Norris’s ownership of his existing brand and artwork. The provision concerning future works required Norris to submit such works for possible acquisition; it did not automatically transfer rights in every future work using Blob or other characters. The court also held that access to Norris’s social-media accounts did not itself transfer ownership or create a license. Defendants did not identify sufficient evidence that Norris separately authorized the uses.

- Count Two—false designation of origin: The court granted defendants’ cross-motion for summary judgment and therefore denied Norris’s motion on this claim. False designation of origin requires, among other things, use of the relevant mark “in commerce.” Norris relied only on defendants’ trademark applications and the artwork submitted with them. The court held that filing a trademark application is not use in commerce because it merely seeks to reserve rights in a mark. Norris provided no evidence of defendants’ use of the marks in other commercial contexts.

- Count Three—cancellation of the ‘281 Mark: The court granted Norris’s motion for summary judgment and ordered cancellation of GB Entertainment’s “Webcomic Name” registration. The court concluded that defendants’ ownership rights extended, at most, to stuffed animals, not the broader group of goods listed in the registration. But the record showed that defendants had not sold stuffed animals using the mark. Promotion of a sample plush toy in anticipation of a future release was not enough to establish use in commerce. The registration therefore could not be cured by narrowing it to stuffed animals, and defendants could not amend it to cover board games because they did not own the mark for those goods.

- Count Four—breach of contract: The court denied both parties’ motions for summary judgment. Norris claimed defendants breached by failing to pay the $3,125 advance after receiving the final files. Norris said he delivered those files on October 2, 2018; Goldner said he did not. The court also found that the record did not establish how the agreement’s undefined term “final” applied to the files Norris allegedly delivered. This factual dispute prevented judgment for either side.

- Count Five—declaratory judgment: The court denied both parties’ motions for summary judgment and adopted the Report’s recommendation on this count after finding no clear error. The claim seeks a declaration that Norris validly terminated the agreement.

Result

The case will proceed to trial on the two remaining claims: breach of contract and declaratory judgment. The court directed the parties to submit a joint pretrial order and any motions in limine by September 20, 2023.