Case 1:17-cv-05867-JMF Document 35 Filed 05/01/18 Page 1 of 9

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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:
ITOFFEE R. GAYLE,
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:
Plaintiff,
:
:
-v:
:
HOME BOX OFFICE, INC.,
:
:
Defendant.
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:
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05/01/2018

17-CV-5867 (JMF)
MEMORANDUM OPINION
AND ORDER

JESSE M. FURMAN, United States District Judge:
Plaintiff Itoffee R. Gayle, proceeding pro se, brings this action against Home Box Office,
Inc. (“HBO”) alleging copyright and trademark infringement. Gayle’s claims derive from the
brief depiction of graffiti in the background of one scene in an episode of the HBO television
series Vinyl. (Docket No. 19 (“Am. Compl.”), at ¶ 1). In the scene, a woman is shown walking
down a New York City street and passing a dumpster tagged with graffiti stating “art we all” that
Gayle claims is his intellectual property. (Id. ¶¶ 1-2). Gayle alleges that HBO depicted the
graffiti “without permission, compensation, or attribution” and thus infringed his copyright and
trademark rights. (Id. ¶ 1). He contends that HBO’s infringement was “calculated &
coordinated” and occurred without the company’s ever “attempt[ing] to contact [him], hire [him]
or pay the licensing fee(s) to [him].” (Id. ¶¶ 2-3). Gayle also maintains that HBO “exploited &
capitalized” on the “brand name recognition” of his trademark “art we all” in order to make their
television show seem “more authentic to viewers.” (Id. ¶ 4). On the basis of these allegations,
he brings claims of copyright infringement; unfair competition under the Lanham Act, 15 U.S.C.

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§ 1125(a); and unspecified “unfair competition & trademark infringement under related state
laws.” (Am. Compl. ¶ 5). He seeks $1,500,000 plus fees. (Id. ¶ 7).
HBO now moves, pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, to
dismiss Gayle’s claims. When reviewing a motion to dismiss, a court “must accept all
allegations in the complaint as true and draw all inferences in the non-moving party’s favor.”
LaFaro v. N.Y. Cardiothoracic Grp., PLLC, 570 F.3d 471, 475 (2d Cir. 2009) (internal quotation
marks omitted). To survive such a motion, however, the plaintiff must plead sufficient facts “to
state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
(2007). A claim is facially plausible “when the plaintiff pleads 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, 678 (2009) (citing Twombly, 550 U.S. at 556); see Twombly, 550
U.S. at 555 (noting that a complaint that offers only “labels and conclusions” or “a formulaic
recitation of the elements of a cause of action will not do”). Where, as here, a plaintiff proceeds
pro se, his pleadings “must be held to less stringent standards than formal pleadings drafted by
lawyers.” Erickson v. Pardus, 551 U.S. 89, 94 (2007) (internal quotation marks omitted).
“Nonetheless, a pro se litigant must still state a plausible claim for relief. Put another way, the
Court’s duty to liberally construe a plaintiff’s complaint is not the equivalent of a duty to re-write
it.” Thomas v. N.Y.C. Dep’t of Educ., No. 15-CV-8934 (JMF), 2016 WL 4544066, at *2
(S.D.N.Y. Aug. 31, 2016) (internal quotation marks, citation, and alterations omitted).
To prevail on his claim of copyright infringement, Gayle “must prove that (1)
unauthorized copying of the copyrighted work occurred, and (2) the infringing work is
substantially similar.” Gottlieb Dev. LLC v. Paramount Pictures Corp., 590 F. Supp. 2d 625,
631 (S.D.N.Y. 2008) (citing Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc.,

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338 F.3d 127, 131 (2d Cir. 2003)). Significantly, demonstrating substantial similarity requires
showing both that work copied was “protected expression” and “that the amount that was copied
is more than de minimis.” Tufenkian, 338 F.3d at 131 (internal quotation marks omitted) . In the
copyright arena, de minimis can “mean[] what it means in most legal contexts: a technical
violation of a right so trivial that the law will not impose legal consequences,” or it can mean
“that copying has occurred to such a trivial extent as to fall below the quantitative threshold of
substantial similarity, which is always a required element of actionable copying.” Ringgold v.
Black Entm’t Television, Inc., 126 F.3d 70, 74 (2d Cir. 1997). In analyzing similarity, courts
assess “the extent to which the copyrighted work is copied in the allegedly infringing work,”
with a work’s “observability” being paramount. Gottlieb, 590 F. Supp. 2d at 632. Observability
turns on “the length of time the copyrighted work is observable as well as factors such as focus,
lighting, camera angles, and prominence.” Id. (citing Sandoval v. New Line Cinema Corp., 147
F.3d 215, 217 (2d Cir. 1998); Ringgold, 126 F.3d at 75)). The assessment is to be made from the
viewpoint of an “average lay observer.” Sandoval, 147 F.3d at 218.
To succeed in a Lanham Act suit for unfair competition or trademark infringement, “a
plaintiff has two obstacles to overcome: the plaintiff must prove that its mark is entitled to
protection and, even more important, that the defendant’s use of its own mark will likely cause
confusion with plaintiff’s mark.” Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 381 (2d Cir.
2005) (quoting Gruner + Jahr USA Publ’g v. Meredith Corp., 991 F.2d 1072, 1074 (2d Cir.
1993)); see 15 U.S.C. §§ 1114, 1125(a)(1)(A); see also Fed. Express Corp. v. Fed. Espresso,
Inc., 201 F.3d 168, 174 (2d Cir. 2000). To prevail in such an action, a plaintiff must show “‘a
probability of confusion, not a mere possibility,’ affecting ‘numerous ordinary prudent
purchasers.’” Star Indus., Inc., 412 F.3d at 383 (quoting Gruner + Jahr, 991 F.2d at 1077).

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“Likelihood of confusion includes confusion of any kind, including confusion as to source,
sponsorship, affiliation, connection, or identification.” Id. (quoting Guinness United Distillers &
Vintners B.V. v. Anheuser-Bush, Inc., 64 U.S.P.Q.2d 1039, 1041 (S.D.N.Y. 2002)). But to state a
“cognizable claim in trademark cases, the plaintiff must raise ‘a serious question’ as to the
likelihood of confusion.” Gottlieb, 590 F. Supp. 2d at 634 (quoting Am. Cyanamid v. Campagna
per le Farmacie in Italia, S.P.A., 847 F.2d 53, 55 (2d Cir. 1988)). Thus, where “it would be
difficult for even a keen observer to pick out” the allegedly infringed mark, a plaintiff cannot
plausibly establish that “ordinarily prudent consumers” would be confused “as to the sponsorship
or affiliation” and his trademark claims would fall short. Id. at 634-35.
Then-District Judge Chin’s decision in Gottlieb provides a helpful illustration of how
these principles apply to claims of the sort at issue here. In that case, the plaintiff claimed that
the defendant had infringed his copyright and trademark in a pinball machine by depicting it in
the movie What Women Want starring Mel Gibson. Judge Chin dismissed the copyright claim on
the ground that the defendant’s use of the pinball machine “was de minimis as a matter of law.”
590 F. Supp. 2d at 630-32. He explained:
The scene in question lasts only three-and-a-half minutes, and the [machine]
appears in the scene sporadically, for no more than a few seconds at a time. More
importantly, the pinball machine is always in the background; it is never seen in
the foreground. It never appears by itself or in a close-up. It is never mentioned
and plays no role in the plot. It is almost always partially obscured (by Gibson
and pieces of furniture), and is fully visible for only a few seconds during the
entire scene. The Designs (on the backglass and playfield of the pinball machine)
are never fully visible and are either out of focus or obscured. Indeed, an average
observer would not recognize the Designs as anything other than generic designs
in a pinball machine.
Id. at 632-33. For similar reasons, Judge Chin found the plaintiff’s trademark claim wanting as
well. “On a viewing of the Film,” he reasoned, “it would be difficult for even a keen observer to
pick out Gottlieb’s trademark, as it appears in the background of the scene. The trademark is
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visible at various places on the pinball machine, but it occupies only a minute fraction [of] the
frame for three segments lasting approximately three seconds each.” Id. at 634-35. “In these
circumstances,” he concluded, “Gottlieb’s assertion that the appearance of its trademark in the
Film would confuse ordinarily prudent consumers as to the sponsorship or affiliation of its
pinball machines is simply not plausible.” Id. at 635.
If Gottlieb’s claims were implausible, Gayle’s border on frivolous. Whereas Gottlieb’s
claims were based on three-and-a-half minutes of film, Gayle’s claims are premised on a fleeting
shot of barely visible graffiti painted on what appears to be a dumpster in the background of a
single scene. 1 The overall scene is brief, and the graffiti at issue appears on screen for no more
than two to three seconds. (See Video at 46:21-46:24). Moreover, the graffiti is never pictured
“by itself or in a close-up,” and it plays absolutely no “role in the plot.” Gottlieb, 590 F. Supp.
2d at 632. Instead, the camera is focused on the actress in the foreground, who is well-lit and
depicted in an eye-catching bright-red dress. By contrast, the graffiti is, at best, shown in the
background at an oblique angle and in low, uneven light such that it is “never fully visible,” let
alone legible. Id. In fact, the graffiti is hard enough to notice when the video is paused at the
critical moment. (See Am. Compl. 8). It is next to impossible to notice when viewing the
episode in real time. In short, the graffiti “was filmed in such a manner and appears so fleetingly
that . . . there is no plausible claim for copyright infringement here.” Gottlieb, 590 F. Supp. 2d at
634; see also Sandoval, 147 F.3d at 218 (“Because [the plaintiff’s] photographs appear fleetingly
and are obscured, severely out of focus, and virtually unidentifiable, we find the use of those
1

The Court may consider the episode — a video copy of which was submitted on DVD as
Exhibit A to the Declaration of Rachel F. Strom (Docket No. 11 (“Video”)) — as it is
incorporated by reference in Gayle’s complaint and central to his claims. See, e.g., Blue Tree
Hotels Inv. (Can.), Ltd. v. Starwood Hotels & Resorts Worldwide, Inc., 369 F.3d 212, 217 (2d
Cir. 2004); Gottlieb, 590 F. Supp. 2d at 629 n.1.
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photographs to be de minimis.”). And given how “difficult” it would be “for even a keen
observer to pick out” Gayle’s trademark (if, indeed, it even qualifies as such), “no viewer” of the
episode “would consider whether [HBO] sponsored the [graffiti] or [Gayle] sponsored the
[episode].” Gottlieb, 590 F. Supp. 2d at 635-36; see also Louis Vuitton Malletier S.A. v. Warner
Bros. Enter. Inc., 868 F. Supp. 2d 172, 184 n.19 (S.D.N.Y. 2012) (finding “the possibility of
sponsorship confusion” was “unlikely”).
As evidence that his graffiti was “visible & observable to average lay viewers,” Gayle
points to an Instagram message from a user named “Goldpoo_” congratulating him on the
appearance of the graffiti in the episode of Vinyl. (See Docket No. 26 (“Gayle Decl.”), ¶ 4; see
also Am. Compl. 9). But the anonymous “Goldpoo_” is hardly a stand-in for the “average lay
observer” relevant to the copyright inquiry, Sandoval, 147 F.3d at 218, or the “ordinary prudent
purchasers” relevant to the trademark inquiry, Star Indus., Inc., 412 F.3d at 383 (internal
quotation marks omitted). Citing a YouTube video featuring “members of the series’ [sic]
production team detailing the importance of graffiti” in “recreat[ing] . . . the 1970s New York
City theme,” Gayle also asserts that HBO’s use of his graffiti cannot be deemed de minimis
because it was “certainly deliberate” and “very much consequential.” (Gayle Decl. ¶ 4). But
putting aside whether the Court can even consider such extrinsic evidence at this stage of the
litigation, HBO’s motive in depicting the graffiti is irrelevant to the de minimis inquiry. “[W]here
the use is de minimis,” as here, “the copying will not be actionable, even where the work was
chosen to be in the background for some thematic relevance.” Gottlieb, 590 F. Supp. 2d at 634;
see id. (dismissing a copyright claim as de minimis even though the copied work was
“undoubtedly . . . chosen by the production staff because it fit in with the ‘sporty’ theme of the
background in the scene”); see also Sandoval, 147 F.3d at 218 (deeming the use of copyrighted

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photographs in the background of a film set de minimis because, “though selected by production
staff for thematic relevance, or at least for [their] decorative value, [the photographs were] filmed
at such distance and so out of focus that a typical program viewer would not discern any
decorative effect that the work of art contributes to the set” (citation omitted)).
Accordingly, Gayle’s copyright and trademark claims must be and are dismissed, leaving
only his state-law “unfair competition & trademark infringement” claims. (See Am. Compl. ¶ 5).
In general, where a court dismisses all of a plaintiff’s federal claims before trial, as here, it
should decline to exercise supplemental jurisdiction and dismiss his state-law claims “as well.”
Marcus v. AT&T Corp., 138 F.3d 46, 57 (2d Cir. 1998); accord Carnegie-Mellon Univ. v. Cohill,
484 U.S. 343, 350 n.7 (1988). Despite that general presumption, however, the Court concludes
that, in the interest of judicial economy, it should exercise supplemental jurisdiction over the
state-law claims here. That is because, for purposes of this case, there are no material
differences between the standards that apply to Lanham Act claims and the standards that apply
to New York trademark and unfair competition claims. See, e.g., Coach, Inc. v. Horizon Trading
USA Inc., 908 F. Supp. 2d 426, 435 (S.D.N.Y. 2012) (“[T]he standards for trademark
infringement . . . under New York common law are essentially the same as under the Lanham
Act.”); Gottlieb, 590 F. Supp. 2d at 637 (dismissing state-law unfair competition and trademark
claims under similar circumstances). Given that, and the Court’s decision on Gayle’s Lanham
Act claims, it would be the height of inefficiency, and risk inconsistency, to defer a decision on
his state-law claims to a state court; instead, those claims are dismissed for the reasons his
Lanham Act claims were dismissed. See, e.g., Williams v. N.Y.C. Dep’t of Health & Mental
Hygiene, No. 16-CV-3691 (JMF), 2018 WL 1276872, at *6 (S.D.N.Y. Mar. 12, 2018)

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(dismissing state-law claims for similar reasons); Nunez v. N.Y. State Dep’t of Corr., No. 14-CV6647 (JMF), 2017 WL 3475494, at *4 (S.D.N.Y. Aug. 11, 2017) (same).
For the foregoing reasons, HBO’s motion to dismiss is granted, and Gayle’s Amended
Complaint is dismissed in its entirety. 2 Moreover, the Court declines sua sponte to grant Gayle
leave to amend his complaint. Although leave to amend a complaint should be freely given
“when justice so requires,” Fed. R. Civ. P. 15(a)(2), “it is within the sound discretion of the
district court to grant or deny leave to amend,” McCarthy v. Dun & Bradstreet Corp., 482 F.3d
184, 200 (2d Cir. 2007). Here, leave is unwarranted for several reasons. First, the problem with
Gayle’s claims is “substantive” and, thus, “better pleading will not cure it.” Cuoco v. Moritsugu,
222 F.3d 99, 112 (2d Cir. 2000). Second, Gayle was already given a prior opportunity to amend
and was warned that he would “not be given any further opportunity to amend the complaint to
address issues raised by the motion to dismiss.” (Docket No. 17, at 1-2). Finally, Gayle “has not
requested permission to file a [further] Amended Complaint, nor has [he] given any indication
that [he] is in possession of facts that would cure the problems identified in the instant motion to
dismiss.” Reynolds v. City of Mount Vernon, No. 14-CV-1481 (JMF), 2015 WL 1514894, at *5
(S.D.N.Y. Apr. 1, 2015) (internal quotation marks omitted).
Further, this Court certifies pursuant to Title 28, United States Code, Section 1915(a)(3)
that any appeal from this Memorandum Opinion and Order would not be taken in good faith, and
in forma pauperis status is thus denied. See Coppedge v. United States, 369 U.S. 438, 444-45

2

Gayle names three other Defendants in his Amended Complaint — Strom, Adam Lazier,
and Steve Sapienza — but he never sought summonses for them, let alone served them. (See
Am. Compl.; Docket No. 21 (“Def.’s Mem.”), at 4 n.2). In addition, the Amended Complaint
includes no allegations with respect to them. In any event, as the defects in Gayle’s claims are
not specific to HBO, his claims are dismissed against the other Defendants as well.
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(1962). The Clerk of Court is directed to terminate Docket No. 20, to mail a copy of this
Memorandum Opinion and Order to Gayle, and to close the case. 3

SO ORDERED.
Date: May 1, 2018
New York, New York

3

On April 27, 2018, Gayle filed a letter requesting permission to submit a copyright
registration "as an additional exhibit." (Docket No. 34). In light of the dismissal of Gayle's
claims on other grounds, the request is denied as moot.
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