Case Document 101 Filed 08/09/18 Page 1 Of 35

 

 

 

 

 

 

 

 

 

 

USDC SDNY
UNITED STATES DISTRICT COURT i: i ii 
SOUTHERN DISTRICT OF NEW YORK FEED
DOC a: 
DISNEY ENTERPRISES, INC, 0 9 2018
MARVEL CHARACTERS, INC., 
LUCASEILM LTD. LLC, and LUCASEILM -
ENTERTAINMENT COMPANY LTD. LLC,
. . MEMORANDUM DECISION
Plaintiffs,
AND ORDER
-against- 16 Civ. 2340 (GBD)
NICK SARELLI, a/k/a Avi Lieberman, and
CHARACTERS FOR HIRE, LLC,
Defendants. .


GEORGE B. DANIELS, United States District Judge:

Plaintiffs Disney Enterprises, Inc. (?Disney?), Marvel Characters, Inc. (?Marvel?), LucasFilm
Ltd. LLC, and LucasFilm Entertainment Company Ltd. LLC (together with LucasFilm Ltd. LLC,
?LucasFilm?) bring this copyright and trademark infringement action against Defendant Characters for
Hire, LLC and its principal, Defendant Nick Sarelli. (See 2d Am. Compl. ECF No.
51.) Plaintiffs assert multiple claims against Defendants under federal and New York common law,
principally alleging that Defendants infringed on Plaintiffs? intellectual property rights by marketing
and operating a party services and entertainment business that uses Plaintiffs? copyrighted works and
trademarks without authorization. (SAC 1, 33?37, 39?42, 44?47, 49?52, 54?57, 59-64.)

Plaintiffs move pursuant to Rule 56 of the Federal Rules Of Civil Procedure seeking partial
summary judgment with respect tO their federal claims for copyright and trademark infringement, as
well as their claim for trademark dilution under Section 360?1 of New York?s General Business Law. I
(See Pls.? Mot. for Summ. J. Mot?), ECF NO. 59, at l; Pls.? Mem. in Supp. Of Mot. for Summ.
J. Mom. in Supp?), ECF NO. 60, at 13 n4.) In addition, Plaintiffs seek summary judgment on

the issue Of willfulness. (See Pls.? Mot. at Defendants also move under Rule 56, seeking summary

 

Case Document 101 Filed 08/09/18 Page 2 of 35

judgment dismissing all claims asserted in the SAC. (See Defs.? Mot. for Summ. J. Mot?),
ECF No. 66, at 1.) They argue, among other things, that Plaintiffs? alleged copyrighted works are
based on prior works that are part of the public domain and that their use of Plaintiffs? trademarks is
protected by the nominative fair use defense. (See Defs.? Mem. in Supp. of Summ. J. (?Defs.? 
ECF No. 67, at 5?6, 

Defendants? motion for summary judgment dismissing Plaintiffs? claims for trademark
infringement, (ii) unfair competition, and false designation of origin is GRANTED. However,
Defendants? motion for summary judgment dismissing Plaintiffs? claims for trademark dilution, and
(ii) copyright infringement is DENIED. Plaintiffs? motion for partial summary judgment on its claims
of trademark infringement, (ii) copyright infringement, and trademark dilution is similarly
DENIED.

I. FACTUAL BACKGROUND1
A. The Parties

Plaintiffs are large, related entertainment companies responsible for creating and bringing to
life popular characters through comic books, animated series, motion picture ?lms, video games, and
theme parks. (Pls.? 56.1 Stmt, ECF No. 61, 1.) Plaintiffs claim intellectual property rights with
respect to these characters, as well as their brands, titles, and properties, and those of its affiliates. (Id.
1] 4.) Disney claims that it is the owner of federally-registered trademarks and copyrights in the
?Mickey Mouse? and ?Minnie Mouse? characters, among others, as well as the ?Elsa? and ?Anna?

characters featured in the Disney motion picture film ?Frozen.?2 (Id. 18?25, 41?47.) Marvel claims

 

1 The following facts and allegations are undisputed, unless otherwise indicated.

2 Defendants move, pursuant to Rule 37 of the Federal Rules of Civil Procedure, to preclude certain documents
purportedly proving Plaintiffs? ownership of several of the trademark and copyright registrations at issue in this
case. (See Defs.? Mot. to Preclude, ECF No. 92.) Defendants argue that the documents should be precluded
because Plaintiffs failed to produce them during discovery. (Defs.? Mem. in Supp. of Mot. to Precludeundisputed, however, that either the documents themselves, or at least the relevant facts

2

 

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ownership of federally?registered trademarks and copyrights in the ?Avengers? characters, including
?Captain America,? ?Hulk,? and ?Iron Man.? (Id. 26?32, 48456.) LucasFilm claims that it owns
federally-registered trademarks and copyrights in several characters featured in the ?Star Wars? motion
picture ?lms, including the ?Stormtrooper,? ?Darth Vader,? ?Darth Maul,? ?Chewbacca,? ?Luke
Skywalker,? ?Princess Leia,? ?Han Solo,? ?Obi-Wan Kenobi,? and ?Yoda? characters.3 (Id 33?40,
57?62.) Although Plaintiffs and their affiliates engage in licensed merchandising of their intellectual
property, they maintain quality and other controls over authorized uses of those rights. (Id. 4, 9.)
Such authorized uses include live appearances and meet-and?greet opportunities with Plaintiffs?
characters at theme parks located in Florida and California, among other places. (Id. ?l 10.)
Defendant CFH is in the business of advertising, promoting, producing, and selling themed
entertainment party services for private parties and corporate events. (Id. 11 12; Defs.? 56.1 Stmt, ECF
No. 71, ?ll 2-.) Defendant Nick Sarelli, who uses the pseudonym ?Avi Lieberman,? is sole owner

and managing director. (Pls.? 56.1 Stmt. 11 15.) As part of its business, CFH provides its customers

 

contained in those documents, are publicly available through the U.S. Patent and Trademark Of?ce 
or the U.S. Copyright Office Accordingly, preclusion is not warranted. See Bey v. City of New ork,
No. 99 Civ. 3873 (LMM) (RLE), 2010 WL 3910231, at *4 (S.D.N.Y. Sept. 21, 2010) (denying Rule 37 motion
where the chalienged evidence was ?publicly and equally available to all and collecting cases), 
454 F. App?x 1 (2d Cir. 2011). In any event, this Court is entitled to take judicial notice of Plaintiffs? ownership
of the relevant trademarks and copyrights from the publicly ?led certificates of registration and ?le wrappers.
See PaySys Inc. v. Atos Se, Worldline SA, Atos IT Servs. Ltd, 226 F. Supp. 3d 206, 215 (S.D.N.Y. 2016)
certi?cate of registration from the United States Register of Copyrights constitutes prima facie evidence
of the valid ownership of a copyright?) (citation omitted); see also Island SofMare (8: Computer Sena, Inc. v.
Microso? Corp, 413 F.3d 257, 261 (2d Cir. 2005) (taking notice of copyright registrations published in the
copyright registry); Goodman Universal Beaug) Prod. Inc, No. 17 Civ. 1716 (KBF), 2018 WL
1274855, at *5 (S.D.N.Y. Mar. 9, 2018) (same); ch'a Ins. Serva, Inc. v. Shame Enterprises, Inc, No. 14 Civ.
2423 (KIM) (AC), 2016 WL 1267999, at *1 (ED. Cal. Mar. 31, 2016) (taking notice of file wrappers, and
collecting cases).

3 Plaintiffs have registered copyrights for model sheets, drawings, style guides, and motion picture ?lms
depicting the above-mentioned characters. (See Pls.? 56.1 Strut. 41?62.)

3

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with a wide variety of costumed characters for entertainment purposes.? (Defs.? 56.1 Stmt. 11 2.) CFH
promotes its business through its own website, as well as on several social media accounts. (Id. it 3.)
B. Alleged Infringing Conduct

Plaintiffs allege that CFH copied and used the images, likenesses, personas, and names of
Plaintiffs? characters, as well as Plaintiffs? trademarks, to promote and advertise its services online.
(Pis.? 56.1 Stmt. 13, 63.) For instance, Plaintiffs claim that promotional videos on website
and YouTube and acebook pages depict costumed individuals portraying Disney?s Mickey and
Minnie Mouse characters. (Id 64?66.) Plaintiffs also claim that CFH advertised ?Frozen Theme[d]
Parties? on their website and social media sites, offering ?Anna and Elsa [to] delight your children as
they sing their favorite songs.? (Id. 11 67 see also Decl. of Louis S. Ederer dated Oct. 13, 2017 (?Ederer
Ex. T, ECF No. 62~31, at The advertisements contained videos and/or
hyperlinks to videos of costumed actors portraying the Elsa and Anna characters singing songs from
the Disney motion picture ?lm Frozen. (Pls.? 56.1 Stmt. 68, 72; see also Ederer Decl., EX. at
DE1000093 67.) One such advertisement included the caption ?Delight your children as they watch the
Frozen Snow Queen Elsa and her sister, Princess Anna[,] tell their story in this professional adaptation.?
(Pls.? 56.1 Stmt. fl 73.) Another read, ?Frozen themed kids party entertainment: Bring these
professional musical theatre performers to your next kids [sic] birthday party as they retell the story of
two sisters.? (Id. 74.) Plaintiffs claim that CFH posted photographs on its Facebook page of costumed
actors dressed in full costume as the Elsa and Anna characters. (Id. 75.)

Plaintiffs claim that website also advertised ?Avenging Team? themed parties, with

images of several costumed actors portraying the Marvel franchise?s Captain America, Hulk, and Iron

 

4 Defendants claim that CFH purchases the character costumes at its customers? requests and only from
authorized vendors selling legitimate merchandise. (Defs.? 56.1 Stmt. 1W 2, 7w8.) They further assert that the
vendors from whom CFH purchases costumes have not indicated that there are restrictions limiting how the
costumes may be used. (Id. 1] 9.)

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Man characters described as ?The Soldier,? ?Man of Iron,? and ?Big Green Guy,? respectively. (Id
1111 77?49.) One such advertisement offers ?the most amazing premium entertainment? featuring ?high
?ying action and incredible acrobatic stunts.? (Id. 11 77.) Another notes that actors ?are very
authentic and remain in character throughout [the] event? and that ?[s]orne of s] actors have even
been trained by the actual Avengers stunt team.? (Id 11 79.)

website similarly advertised ?Star Battles? events, with images of characters from the
Star Wars motion picture series, as well as images of costumed actors portraying LucasFilm?s
characters such as Luke Skywalker (?Young Luke?), Darth Vader (?The Dark Lord?), Chewbacca
(?Smugglers Co Pilot and Princess Leia (?The Princess?), and Obi-Wan Kenobi (?Old Ben?).
(Id. 1111 87?88; see also Ederer Decl., Ex. A, ECF No. 624, at 4.) In addition, website featured
a video entitled ?Star Wars Episode VII Themed Birthday Party,? which portrayed various Star Wars
characters dressed in full costume and ?Special Effects, Robotics, and Lighting? design services.
(P1s.? 56.1 Stmt. 11 89.) CFH also posted promotional videos on its Yelp, YouTuhe, Facebook, and
Instagram webpages featuring actors depicting various Marvel and LucasFilm characters.5 (Id.
1111 80-86, 90?96.)

Plaintiffs assert that Defendants infringed their trademarks and copyrights not only with respect
to advertising and marketing materials, but also by providing customers with the live costumed
actors portraying Plaintiffs? copyrighted and trademarked characters. (Id. 1111 101?210.) To support

this claim, Plaintiffs point to several dozen, largely unsigned CFH event contracts offering various

 

5 Defendants claim that advertising and promotional materials do not state that CFH is associated with,
or otherwise sponsored, endorsed, or licensed by Plaintiffs. (Defs.? 56.1 Stmt. 11 4.) Defendants also dispute the
accuracy of some the images of website submitted in Plaintiffs? motion papers. (See Defs.? Resp. to Pls.?
56.1 Stmt., ECF No. 80, 11 67; see also Dec]. of Nicholas Sarelli dated Nov. 10, 2017 (?Sarelli ECF No.
82. 11 7.)

 

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?party packages.?6 (See Ederer Dec1., Exs. One such contract purports to book an event at
which CFH was to provide the ?Captain America, Iron Man, [and] Hulk? characters, among others,
who would perform an ?Avengers Stage Combat Stunt Show? and run an ?Avengers Camp.? (Id. EX.
0 at CFH000194.) Another contract requires CFH to provide the ?Darth Vader? and ?Luke Skywalker?
characters for a ?Meet and Greet Plus? party, with CF providing ?Jedi Training, [an] Interactive Stage
Show, [and] Darth Vader Combat? services. (Id, EX. at A different event contract
had CFH providing the ?Captain America? and ?Iron man [sic]? characters for an ?Interactive
Theatrical Performance,? (id, Ex. 0 at CFH000198), while another purports to book an event with
CFH providing the ?Princess Anna? and ?Snow Queen? characters for a ?Meet and Greet with 3 songs.?
(Id, EX. at CFH000232.)

Plaintiffs? claim that evidence of Defendants? bad faith and willful infringement can be inferred
from the standard form language in event contracts. They cite, for example, language added to
contracts in or about November 2013 stating that, or copyright reasons, costumes may vary
from design, pattern color will not be the same exact costume seen on the internet, movies[,] or
other media format (Pls.? 56.1 Stmt. 1] 218 (quoting Ederer Decl., Ex. 0 at In or
about March 2014, the contracts were amended to add, does not and will not use trademarked or
licensed characters.? (Pls.? 56.1 Stmt. 1[ 219 (quoting Ederer Decl., Ex. at CFH
amended the form language in their event contracts yet again in or about January 2015 to state the

following:

 

5 Defendants object to the admissibility of the event contracts, arguing they have not been properly authenticated.
(See Defs.? Resp. to Pls.? 56.1 Stmt. 1W 101~210.)

7 Because these documents contain con?dential information pertaining to customers, they have been ?led
under seal pursuant to a stipulated protective order. (See Protective Order dated Feb. 21, 2017, ECF No. 47.)

6

 

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Client understands that costumed characters are generic/inspired and are NOT
affiliated, licensed or associated with any copyright or trademark. It is not our
intention to violate any copyright laws. The characters that we offer are NOT
name brand copyrighted characters, and Characters for Hire, LLC costumed
characters are named of our own creation. Any resemblance to nationally known
copyrighted characters is strictly coincidental. We DO NOT offer nor do we
present any licensed and/or copyrighted characters.8

(Pls.? 56.1 Stmt. 1] 220 (quoting Ederer Decl., EX. at 

Notwithstanding these disclaimers, Plaintiffs claim that customers remained confused
as to whether the services CFH offers are sponsored, endorsed, or otherwise af?liated with Disney,
Marvel, and/ or LucasFilms. For instance, Plaintiffs point to customer reviews posted on website
that reference Plaintiffs? characters by their real, trademarked names rather than the fake, generic ones
used by CFH. (See Pls.? 56.1 Stmt. 224?29.) Plaintiffs? claim that this confusion is detrimental to
their brands because of allegedly poor reputation. They note, for example, that three customer
complaints have been filed with the Better Business Bureau against CFH since 2014, resulting
in the giving CFH an rating. (Id. 231.) In addition, Plaintiffs claim, CFH has at least
seventeen unfavorable reviews on its Yelp webpage commenting on Defendants? allegedly rude and
unprofessional treatment of its customers.9 (Id. 111] 232?39.)

C. Plaintiffs? Cease?and-Desist Letters

On November 24, 2015, Plaintiffs mailed Defendants a cease?and-desist letter. (Id. it 212; see
also Ederer Decl., EX. F?l, ECF No. 61-7, at 3.) The letter, addressed to Sarelli, advised that CFH was
?engaged in selling and offering for sale live party entertainment services featuring . . . . character

impersonations as well as themed movie and television . . . characters that reproduce? Plaintiffs?

 

3 In or about June 2015, the amended language was incorporated into a separate section of event contracts,
entitled ?Policy on Trademarked Characters.? (See, Ederer Decl., Ex. at Similar language
was also added as a disclaimer on the ?About Us? section of website. (See id, Ex. Y, ECF No. 62-36, at


9 All of the comments on own website that are cited by Plaintiffs, however, appear to re?ect positively
on Defendants? services and reputation. (See Pls.? 56.1 224?29.)

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intellectual property. (Ederer Decl., EX. F?l at 4.) Accordingly, Plaintiffs demanded that CFH
?immediately cease and desist all sale, advertising, marketing, premotion[,] and/or provision? of the
infringing services, as well as remove any infringing marketing materials from its website and other
online platforms. (Id. at 

Plaintiffs? letter attached various printouts from website containing the allegedly
infringing images and videos and asked for a response from Defendants within seven days. (See I'd. at
5??16; Ederer Decl., EX. ECF No. 61-8, at 1?16; Ederer Decl., EX. F-3, ECF No. 61?9, at 
When no response came, Plaintiffs sent Defendants a second cease?and?desist letter on December 9,
2015. (Pls.? 56.1 1[ 213; Ederer Decl., EX. G?l, ECF No. 6l~10, at 3.) Plaintiffs advised that if
they did not receive a response within five days, they would take further action, including filing a
lawsuit in federal court to enforce their intellectual property rights. (Ederer Decl., EX. G?l at 3.)

On December 10, 2015, Plaintiffs? counsel received an email signed by ?Avi Lieberman,?
indicating that ?all images . . . pertaining to? Plaintiffs? intellectual property were removed from 
website. (Pls.? 56.1 Stmt. 1] 214; Ederer Decl., EX. H, ECF No. 61?14, at 3.) The email further stated
that CFH did not ?inten[d] to disregard [Plaintiffs?] intellectual property rights . . . and meant no harm
in doing so.? (Ederer Decl., Ex H, at 3.) However, on January 28, 2016, Plaintiffs sent a third cease-
and?desist letter stating that not all infringing materials were removed from website and
demanding that Defendants completely disable access to the website accordingly. (See Ederer Decl.,
EX. 1?1, ECF No. 62-15, at When Defendants failed to do so, Plaintiffs filed this action, asserting
claims against Defendants under federal and New York law for trademark infringement and copyright
infringement, unfair competition and false designation of origin, and trademark dilution.10 (See SAC

1111 33-37, 39?42, 4447, 49452, 54?57, 59?64.)

 

1? Defendants maintain that CFH made every effort in good faith to ?nd and remove from its website any
infringing videos or images identi?ed by Plaintiffs. (See Sarelli Dec]. 11 9.)

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Plaintiffs now seek summary judgment on their federal trademark and copyright infringement
claims, as well as their claim under New York law for trademark dilution. (P1s.? Mot. at 1.) In addition,
Plaintiffs seek summary judgment on the issue of willfulness. (Id) Defendants also move for summary
judgment, seeking to have the entire lawsuit dismissed. (Defs.? Mot. at 1.)

II. LEGAL STANDARDS

Summary judgment is appropriate when there is no genuine issue of material fact and the
moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). ?An issue of fact is
?genuine? if ?the evidence is such that a reasonable jury could return a verdict for the nonmoving
party.? Gayle v. Gonyea, 313 F.3d 677, 682 (2d Cir. 2002) (quoting Anderson v. Liberty Lobby, Inc,
477 U.S. 242, 248 (1986)). A fact is material when ?it ?might affect the outcome of the suit under the
governing law.? Gayle, 313 F.3d at 682 (quoting Anderson, 477 U.S. at 248).

The party seeking summary judgment has the burden of demonstrating that no genuine issue of
material fact exists. See Marvel Characters, Inc. 12. Simon, 310 F.3d 280, 286 (2d Cir. 2002). In turn,
to defeat a motion for summary judgment, the non-moving party must raise a genuine issue of material
fact. To do so, the non?moving party ?must do more than simply show that there is some metaphysical
doubt as to the material facts,? Calderola v. Calabrese, 298 F.3d 156, 160 (2d Cir. 2002) (quoting
Matsushita Elec. Indus. Co. v. Zenith Radio Corp, 475 U.S. 574, 586 (1986)), and it ?may not rely on
conclusory allegations or unsubstantiated speculation,? Figiitsu Ltd. 12. Fed. Express Corp, 247 F.3d
423, 428 (2d Cir. 2001) (quoting Seorto v. Almenas, 143 F.3d 105, 114 (2d Cir. 1998)). Rather, the
non-moving party must produce admissible evidence that supports its pleadings. See First Na: 7 Bank
of Ariz. 12. Cities Serv. Co., 391 U.S. 253, 289?90 (1968). In this regard, ?[t]he ?mere existence of a
scintilla of evidence? supporting the non-movant?s case is also insuf?cient to defeat summary
judgment.? Niagara Mohawk Power Corp. v. Jones Chem, Inc, 315 F.3d 171, 175 (2d Cir. 2003)

(quoting Anderson, 477 U.S. at 252).

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In determining whether a genuine issue of material fact exists, the court must ?construe[] the
evidence in the light most favorable to the non?moving party? and ?draw[] all inferences in [that
party?s] favor. See Niagara, 315 F.3d at 175. The court?s task is not to ?weigh the evidence and
determine the truth of the matter but to determine whether there is a genuine issue for tria Anderson,
477 U.S. at 249. Summary judgment is therefore ?improper if there is any evidence in the record that
could reasonably support a jury?s verdict for the non-moving party.? Marvel, 310 F.3d at 286.

CLAIMS

Plaintiffs? SAC asserts federal claims for trademark infringement, copyright infringement, and
unfair competition and false designation of origin. Plaintiffs? also assert claims under New York law
for trademark infringement, unfair competition, and trademark dilution. Although Plaintiffs seek
summary judgment on only some of its claims, Defendants seek summary judgment with respect to all
claims asserted in the SAC. Accordingly, this Court addresses each of Plaintiffs? claims as alleged.

A. Trademark Infringement, Unfair Competition and False Designation of Origin

Plaintiffs? federal trademark infringement claims arise under Section 32 of the Lanham Act.11
(See SAC 39?42.) Under Section 32, ?the owner of a mark registered with the Patent and Trademark
Of?ce can bring a civil action against a person alleged to have used the mark without the owner?s
consent.? ITC Ltd. v. Inc, 482 F.3d 135, 146 (2d Cir. 2007). To prevail on a claim for
trademark infringement under the Lanham Act, a plaintiff must show that (1) the ?mark is entitled to
protection,? and (2) ?the defendant?s use of the mark is likely to cause consumers confusion as to the

origin or sponsorship of the defendant?s goods.? Tyj?any (NJ) Inc. v. eBay Inc. 600 F.3d 93, 102 (2d

 

11 Section 32 of the Lanham Act provides, in pertinent part, that ?[a]ny person who shall, without the consent of
the registrant . . . use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered
mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in
connection with which such use is likely to cause confusion, or to cause mistake, or to deceive . . . shall be liable
in a civil action by the registrant.? 15 U.S.C. 1114.

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Cir. 2010); see also Int 7 Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC, 823 F.3d
153, 161 (2d Cir. 2016) modern test of infringement is whether the defendant?s use [is] likely
to cause confusion not just as to source, but also as to sponsorship, af?liation or connection?) (citation
omitted), cert. denied, 137 S. Ct. 624 (2017).
Where the marks in question are registered, as here, their entitlement to protection is presumed.

See Slep-T one Entm?t Corp. 12. Golf 600 Inc, 193 F. Supp. 3d 292, 297 (S.D.N.Y. 2016); see also
Patsy ?5 Italian Rest, Inc. v. Banas, 658 F.3d 254, 266 (2d Cir. 2011) of a federal mark
confers upon the owner of the mark a presumption that the owner has the exclusive right to use the
mark nationwide?) (citing 15 U.S.C. 1115(a)). To determine whether a defendant?s use of the mark
is likely to cause consumer confusion, courts apply the non?exclusive, eight?factor balancing test set
forth in Polaroid Corp. v. Polarad Elecs. Corp, 287 F.2d 492 (2d Cir. 1961). See Int 7 Info. Sys, 823
F.3d at 160. Those factors include:

(1) strength of the trademark; (2) similarity of the marks; (3) proximity of the

products and their competitiveness with one another; (4) evidence that the senior

user may ?bridge the gap? by developing a product for sale in the market of the

alleged infringer?s product; (5) evidence of actual consumer confusion; (6)

evidence that the imitative mark was adopted in bad faith; (7) respective quality

of the products; and (8) sophistication of consumers in the relevant market.
Starbucks Corp. v. Wolfe ?s Borough Co?ee, Inc, 588 F.3d 97, 115 (2d Cir. 2009) (citation omitted).
?The application of the Polaroid test is not mechanical, but rather, focuses on the ultimate question of
whether, looking at the products in their totality, consumers are likely to be confused.? Int?l Info. Sys,
823 F.3d at 160 (quoting Kelly?Brown v. Win?ey, 717 F.3d 295, 307 (2d Cir. 2013). The same
standards govern claims for unfair competition and false designation of origin under the Lanharn Act,
as well as trademark infringement and unfair competition under New York law. See Ti?any, 600 F.3d

at 101 11.6; LVL Inc. v. Louis Vuitton Malletier SA, 209 F. Supp. 3d 612, 649 (S.D.N.Y.

2016), a ?d sub nom. LVL Brands, Inc. v. Louis Vaitton Malletier SA, 720 F. App?x 24 (2d Cir.

11

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2017); Pque Creations, Inc. v. Vesture Grp., Inc. 154 F. Supp. 3d 48, 54 (S.D.N.Y. 2015); Van Praagh
v. Grafton, 993 F. Supp. 2d 293, 301 (E.D.N.Y. 2014).

Plaintiffs assert that use of Plaintiffs? marks to advertise and promote its business, as
well as its provision of live costumed actors pretending to be Plaintiffs? characters, are likely to cause
consumer confusion as to the origin, source, and/or sponsorship of unlicensed services.
(Pls.? Mem. in Supp. at 6, 13?16.) Defendants, however, contend that there is no likelihood of
consumer confusion and that their use of Plaintiffs? marks is a non-infringing, fair use under Section
33(b) of the Lanham Act insofar as they only use Plaintiffs? marks to describe the goods and services
they offer their customers. (See Defs.? Mem. at 6-8; Defs.? Mem. in Opp?n to Pls.? Mot. for Summ. J.
(?Defs.? Opp?n?), ECF No. 85, at 9?10, Defendants also argue that their use of Plaintiffs?
marks is protected by the doctrine of nominative fair use, which they claim permits them to use the
names of Plaintiffs? characters to identify the services CFH provides. (Defs.? Mem. at 8?9; Defs.?
Opp?n at 11413.)

Neither of Defendants? fair use defenses have merit.

1. Descriptive Fair Use

Section 33(b) of the Lanham Act provides an af?rmative defense to a claim of trademark
infringement where ?the use of the name[] . . . charged to be an infringement is a use, otherwise than
as a mark, . . . which is descriptive of and used fairly and in good faith only to describe the goods or
services of such party, or-their geographic origin.? 15 U.S.C. 1115(b)(4). Thus, to prevail on such a
defense, the defendant must prove three elements: ?that the use was made (1) other than as a mark, (2)
in a descriptive sense, and (3) in good faith.? Kelly?Brown, 717 F.3d at 308 (citations omitted). The
purpose of the fair use defense is to ?permit[] others to use a protected mark to describe aspects of their

own goods.? Merck Co. v. Medzplan Heaith Consulting, Inc, 425 F. Supp. 2d 402, 412 (S.D.N.Y.

12

 

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2006) (emphasis added) (quoting Nikon Keizai Shimbnn, Inc. v. Comline Bus. Data, Inc, 166 F.3d 65,
73 (2d Cir. 1999)).

Here, promotional materials do not use Plaintiffs? marks like ?Frozen,? the ?Avengers,?
or ?Star Wars,? in a descriptive sense at all. To be sure, the use of a mark can be ?descriptive? without
actually describing physical characteristics of the good. See Cosmetically Sealed Indus, Inc. v.
Chesebrough-Pond?s USA Co., 125 F.3d 28, 30 (2d Cir. 1997) (the phrase ?Seal it with a Kiss? was
used in a descriptive sense when it appeared in a lipstick advertisement because it ?describe[d] an
action that the sellers hope[d] consumers [would] take, using their product?); Car?Freshner Corp. v.
S. C. Johnson Son, Inc. 70 F.3d 267, 270 (2d Cir. 1995) (pine?tree shape of defendant?s product was
fair use because ?the use of the pine-tree shape refers to the Christmas season,? during which the
allegedly infringing product was sold); Sales Assocs. v. Daro?d?c Sons, Inc, 421 F.2d 352,
354 (2d Cir. 1970) (the phrase ?Come on Strong? was used in a descriptive sense when it appeared in
an advertisement for men?s clothing because it ?describ[ed] a presumably desirable effect? of the
clothing). In this case, however, Defendants? advertising efforts were speci?cally designed to evoke
in consumers? minds Plainti?fr renowned marks and characters in an effort to trade on their popularity
and goodwill.

Defendants argue incorrectly that this case is on all fours with Naked Cowboy v. CBS, 844 F.
Supp. 2d 510 (S.D.N.Y. 2012). (Defs.? Mem. at There, a street performer known as ?The Naked
Cowboy,? who plays the guitar dressed only in his briefs, cowboy boots, and a cowboy hat, brought
suit for trademark infringement against defendant CBS after it posted a video on its YouTube channel
titled ?The Bold and the BeautifulegNaked Cowboy.? Naked Cowboy, 844 F. Supp. 2d at 513?14.
The video was taken from an episode of the daytime television series ?The Bold and the Beautiful,?
which featured a character who, for several seconds, appeared only in his briefs, cowboy boots, and a

cowboy hat, while singing and playing the guitar. Id. at 513. The court held, however, that the
13

 

Case Document 101 Filed 08/09/18 Page 14 of 35

reference to the ?Naked Cowboy? in the video?s title was a non-infringing fair use under Section
33(b)(4) of the Lanham Act because the defendant ?used the phrase in an effort to describe the contents
of the video clip, not as a mark to identify the source of the video clips.? Id. at 515. As the court noted,
?[t]he fair use defense permits use of protected marks in descriptive ways, but not as marks identifying
the user?s own product.? Id. (citing Car-Freshner Corp, 70 F.3d at 270). Here, by contrast,
Defendants do not use Plaintiffs? marks to describe aspects or features of their services, but rather to
identify their service offerings.

Moreover, whereas a reasonable consumer could View the video in Naked Cowboy and
understand the clip to be depicting a nearly naked man pretending to be a cowboy?independent of the
street performer known as The Naked Cowboy?ma reasonable consumer viewing 
advertisements offering, for example, a ?Frozen Themed Party? would understand the nature of the
services being offered only by reference to Plaintiffs? marks. See Car?Freshner Corp, 70 F.3d at 269
(?What matters [for purposes of the fair use defense] is whether the defendant is using the protected
word or image descriptively, and not as a mark?) (emphasis added). Thus, Defendants have failed to
meet their burden of demonstrating, under Section 33(b) of the Lanham Act, that CFH uses Plaintiffs?
marks in a ?descriptive sense.?12 Id.

2. Nominative Fair Use
?[N]ominative fair use occurs when plaintiff?s mark is used to describe [the] plaintiff? own

product.? Jackson v. Odenat, 9 F. Supp. 3d 342, 360 (S.D.N.Y. 2014) (citing Cairns v. Frankiin Mint

 

12 Defendants? fair use defense also fails because advertisements across multiple platforms consistently
used Plaintiffs? recognizable marks as marks ?to attract public attention.? JA Apparel Corp. v. Abboud,
568 F.3d 390, 400 (2d Cir. 2009) (internal quotation marks and citation omitted); 2 McCarthy on Trademarks
and Unfair Competition 11:46 (5th ed.) (?Often, an infringing trademark usage of the challenged term is
evidenced by its employment as an attention?getting symbol?) (internal quotation marks and citations omitted);
see also Kelly-Brown, 717 F.3d at 310 (rejecting fair use defense where ?defendants . . . tr[ied] to create, through
repetition across various forms of media, a similar association between? the plaintiff?s mark and the defendants?
products).

14

 

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Co, 292 F.3d 1139, 1151 (9th Cir. 2002)). As the Second Circuit has observed, is called
?nominative? use because it ?names? the real owner of the mark.? 1m"! Info. Syn, 823 F.3d at 165
(internal quotation marks and citation omitted). Under the doctrine of nominative fair use, a defendant
is permitted to ?use a plaintiffs trademark where doing so is necessary to describe the plaintiff 3
product and does not imply a false af?liation or endorsement by the plaintiff of the defendant.? Ti?icmy,
600 F.3d at 102?03 (internal quotation marks and citation omitted).

Plaintiffs argue persuasively that the nominative fair use defense is inapposite to facts presented
here. Among other things, Plaintiffs point out that Defendants use Plaintiffs? marks to identify
Defendants? character?for-hire services, rather than any of Plaintiffs? goods or services. (Pls.? Mem.
in Opp?n to Mot. for Summ. ., ECF No. 77, at 19?20; Pls.? Reply, ECF No. 87, at 6.) Yet, as the
Second Circuit has explained, the nominative fair use defense exists to protect the ?use of another?s
trademark to identify, not the defendant ?5 goods or services, but the plaintiff is goods or services.? In! 7
Info. Syn, 823 F.3d at 165 (emphases added) (internal quotation marks and citations omitted).
Accordingly, Defendants? reliance on the nominative fair use defense is misplaced.13

3. Likelihood of Consumer Confusion

The touchstone of a meritorious trademark infringement claim is likelihood of consumer
confusion. Kelly?Brown, 717 F.3d at 307 (citations omitted). As noted, courts in this Circuit assess
the likelihood of consumer confusion by balancing the Poiaroid factors. Id. Indeed, ?it is incumbent
upon the district judge to engage in a deliberate review of each factor, and, if a factor is inapplicable to

a case, to explain why.? Nat. Organics, Inc. v. Nutmceut'ical Corp, 426 F.3d 576, 579 (2d Cir. 2005)

 

13 Ti??any, upon which Defendants rely, (Defs.? Mom. at 8-9; Defs.? Opp?n at 11-l2), is not to the contrary.
There, the court held it was fair use for the defendant, eBay, to use Tiffany?s mark to describe genuine Tiffany
goods offered for sale on its e?commerce website because ?none of eBay?s uses of the mark suggested that
Tiffany affiliated itself with eBay or endorsed the sale of its products through eBay?s website.? i?any, 600
F.3d at 103. Here, by contrast, Defendants use Plaintiffs? marks to identify or describe their own character?for?
hire services, and not any good or service offered by Plaintiffs.

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Case Document 101 Filed 08/09/18 Page 16 of 35

(internal quotation marks and citation omitted). However, that one or more factors may weigh in one
party?s favor does not preclude summary judgment in the other?s favor with respect to likelihood of
confusion. See LVL Brands, 209 F. Supp. 3d at 687?88; Advance Magazine Publishers, Inc. v.
Norris, 627 F. Supp. 2d 103, 113 (S.D.N.Y. 2008); O?Keefe v. Ogilvy Mather Worldwide, Inc, 590
F. Supp. 2d 500, 526 (S.D.N.Y. 2008).

An application of the Polaroid factors to the present facts readily demonstrates that Plaintiffs
have not shown a likelihood of consumer confusion as to the origin, source, and/or sponsorship of
Defendants? character-for?hire services.

a. Strength of Plaintiffs? Marks

?[T]he strength of a mark depends ultimately on its distinctiveness, or its ?origin-indicating?
quality, in the eyes of the purchasing public.? Savin Corp. v. Savin Grp., 391 F.3d 439, 457 (2d Cir.
2004) (citation omitted). Courts considering this factor typically ?look[] at the mark?s tendency to
identify the goods or services sold under the mark as emanating from a particular[] . . . source.? Mr.
Water Heater Enters, Inc. v. I ?800~H0t Water Heater, LLC, 648 F. Supp. 2d 576, 584 (S.D.N.Y. 2009)
(internal quotation marks and citation omitted). In addition, courts consider ?both the mark?s inherent
distinctiveness, based on the characteristics of the mark itself, and its acquired distinctiveness, based
on associations the mark has gained through use in commerce.? Akiro LLC 12. House of Cheatham,
Inc. 946 F. Supp. 2d 324, 333 (S.D.N.Y. 2013); see also TCPIP Holding Co. v. Haar Commc ?ns Inc. 
244 F.3d 88, 100 (2d Cir. 2001) (discussing the concepts of inherent and acquired distinctiveness).

Plaintiffs claim that their marks ?are some of the most recognizable . . . in the world of
entertainment.? (Pls.? Mem. in Supp. at 15.) Defendants do not contest this point, nor could they given
the ubiquity of Plaintiffs? well?known and highly popularized marks. Accordingly, the first Polaroid

factor weighs in Plaintiffs? favor.

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b. Similarity of the Marks

?When comparing two marks, courts consider their ?overall impression,? including ?the context
in which they are found and the totality of factors that could cause confusion among prospective
purchasers.? Advance Magazine, 627 F. Supp. 2d at 117 (quoting Gruner Jahr USA Pub, a Div. of
Graner Jahr Printing (fa Pub. Co. v. Meredith Corp, 991 F.2d 1072, 1078 (2d Cir. 1993); see also
Akiro, 946 F. Supp. 2d at 334 (?Similarity is a holistic consideration that turns on the marks? sight,
sound, and overall commercial impression under the totality of the circumstances?). Thus, ?[i]nstead
of merely conducting a side by side comparison [of the marks], a court must assess whether a customer
who is somewhat familiar with the plaintiff 3 mark would likely be confused when presented with the
defendant?s mark alone.? Cozy Inc. v. Excell Brands, LLC, 277 F. Supp. 3d 425, 446 (S.D.N.Y. 2017)
(internal quotation marks and citations omitted).

Plaintiffs argue this factor weighs in their favor because the costumed characters that CFH
advertises and supplies its customers ?are either identical or virtually identical to Plaintiffs? characters
in image, costume, name, and/or total ?look and feel[.] (Pls.? Mem. in Supp. at 15 (citation omitted).)
Defendants do not contest this point, and their fair use arguments concede the use of Plaintiffs? exact
marks to identify Defendants? services. This factor thus appears to favor Plaintiffs. See Audi AG 12.
Sholcan Coachworlcs, Inc, 592 F. Supp. 2d 246, 273 (N.D.N.Y. 2008) (?Where marks are ?essentially
identical[,] the second factor of the Polaroid analysis weighs in favor of the plaintiff?) (quoting Lois
Sportswear, USA, Inc. v. Levi Strauss C0., 799 F.2d 867, 873 (2d Cir. 1986)).

On the other hand, however, few, if any, of Plaintiffs? marks are used in advertisements
in their original fonts, styles, and colors. See MetLife, Inc. v. Metro. Nai?l Bank, 388 F. Supp. 2d 223,
230 (S.D.N.Y. 2005) (?Typefaces are relevant considerations when evaluating marks? similarities?);
LaPine v. Seinfeld, No. 08 Civ. 128 (LTS) (RLE), 2009 WL 2902584, at 14 (S.D.N.Y. Sept. 10, 2009)

(?The difference in overall colors, cover layout, patterns[,] and font [may] reduce[] any similarity of

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the appearance of the marks?), 375 F. rapp?x 81 (2d Cir. 2010). Moreover, many of the costumed
characters Defendants offer are identi?ed on website using facetious names that are clearly
distinct from Plaintiffs? marks. (See, e. g. Ederer Decl, Ex. A at 3?4 (offering characters such as ?Big
Green Guy,? ?The Soldier,? ?Beauty,? ?Indian Princess,? ?The Dark Lord,? and ?Smugglers Co Pilot
Therefore, the totality of circumstances surrounding advertisements and the type of
services it offers customers are not likely to suggest to the ordinary, reasonable consumer any af?liation
with, or sponsorship by, Plaintiffs. Accordingly, the second Polaroid factor weighs only if at
all, in Plaintiffs? favor.
0. Competitive Proximity and Bridging the Gap

The third and fourth Polaroid factors, respectively, address the proximity of the goods or
services at issue and the possibility that the senior user will ?bridge the gap,? or expand the scope of
its business and enter the market of the junior user. See Alciro, 946 F. Supp. 2d at 335; US. Polo Ass ?rz,
Inc. v. PRL USA Holdings, Inc, 800 F. Supp. 2d 515, 531 (S.D.N.Y. 2011), 511 F. App?x 81 (2d
Cir. 2013). Thus, these two distinct but related factors ?focus on the degree to which the [parties?]
products currently compete with each other or are likely to compete with each other in the future.?
Medici Classics Prods, LLC v. Medici Grp., LLC, 683 F. Supp. 2d 304, 311-12 (S.D.N.Y. 2010).

Courts analyzing these factors take into account ?whether and to what extent the [parties?]
products compete with each as well as ?the nature of the products themselves and the structure
of the relevant market.? Joules Ltd. v. Macy?s Merck. Grp., Inc, 695 F. App?x 633, 636 (2d Cir. 2017)
(internal quotation marks and citations omitted). ?The purpose of the inquiry, which considers both
market proximity and geographic proximity, is ?to determine whether the two products have an
overlapping client base that creates a potential for confusion.? Classic Liquor Imps, Ltd. v. Spirits
Int?l B.V., 201 F. Supp. 3d 428, 447 (S.D.N.Y. 2016) (quoting Brennan Inc. v. Brennan ?s Rest,

L.L. C. 360 F.3d 125, 134 (2d Cir. 2004)); see also Morningside Grp. Ltd. v. Morningside Capital Grp.,
18

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LL. C. 182 F.3d 133, 140 (2d Cir. 1999) (?When [the parties] provide essentially the same service to
the same customer base, their services are related and proximate?) (internal quotation marks omitted).

Plaintiffs argue that the third and fourth Polaroid factors weigh in their favor because they
present their fictional characters ?in live form at Plaintiffs? themed amusement parks? and thus engage
in the ?exact same business? as CFH. (Pls.? Mem. in Supp. at 15.) Defendants, however, assert that
unlike Plaintiffs, CFH markets and offers entertainment at private birthday parties and corporate events.
(Defs.? Opp?n at 13.) In response, Plaintiffs argue that even if they do not actually provide live
costumed characters at private parties, ordinary consumers, particularly children, would reasonable
perceive that they could provide such services. (Pls.? Reply at 7.)

These factors both tip in Defendants? favor. Although Plaintiffs present their trademarked
characters in costume at theme parks located in Florida and California, there is no evidence that they
currently, or are likely to at any point in the future, compete with CF by offering character-for-hire
services for private entertainment purposes. Nor is there any evidence that Plaintiffs? theme parks and
marketing and provision of character?for?hire services have an overlapping customer base
suf?cient to create a potential for confusion. For instance, it is plain that theme park guests are in a
different market altogether from those looking to hire a costumed character to appear at a child?s
birthday party or a corporate event.

In addition, Plaintiffs cite no evidence to support their conclusory assertion that it is reasonable
for ordinary customers to perceive that Plaintiffs could or are likely to expand their offerings into
providing costumed character services at private events. Moreover, Plaintiffs offer no basis in fact,
law, or logic to believe that the relevant market for CF H?s party and entertainment services are children;
adults, not children, plan parties. Indeed, CF H?s advertisements exclusively target parents and other
adults, not children. (See, Ederer Decl., Ex. S-l, ECF No. 61-29, at DEI00009377 (?Bring the

excitement of winter to your next Frozen themed event. Let Ana [sic] and Elsa delight your children

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as they sing their favorite songs?); id, Ex. D?l, ECF No. 61?4 at 4 (?Unleash these mighty heroes at
your next kids [sic] birthday party or corporate 

Accordingly, the third and fourth Polaroid factors weigh in Defendants? favor.

d. Evidence of Actual Confusion

The ?fth Polaroid factor asks courts to consider the evidence that consumers are actually
confused as to the origin of a particular product or service or as to whether the junior user of a mark is
sponsored by or af?liated with the senior user. Although actual confusion need not be demonstrated
to prevail on a claim for trademark infringement, Guthrie HeaZtheare Sys. v. ContextMedz?a, Inc, 826
F.3d 27, 45 (2d Cir. 2016), ?there can be no more positive or substantial proof of the likelihood of
confusion than proof of actual confusion.? Flushing Bank v. Green Dot Corp, 138 F. Supp. 3d 561,
589 (S.D.N.Y. 2015); see also Guthrie, 826 F.3d at 44 (?Instances of actual confusion resulting from
a junior user?s use of a mark similar to a senior user?s can be powerful evidence supporting a likelihood
of confusion?); Gross v. Bare Escentuals Beauly, Inc, 641 F. Supp. 2d 175, 187 (S.D.N.Y. 2008)
of actual confusion is given particular weight? in the Poiaroid analysis).

Such evidence ?may consist of anecdotal or survey evidencef? LVL Brands, 209 F. Supp.
3d at 672 (internal quotation marks and citation omitted). With respect to anecdotal evidence, a
plaintiff must show ?a probability of confusion . . . affecting numerous ordinary prudent purchasers.?
O?Keefe, 590 F. Supp. 2d at 523 (emphasis added) (internal quotation marks and citations omitted).
Accordingly, minimis evidence of actual confusion does not establish the existence of a genuine
issue of material fact regarding the likelihood of confusion.? Nora Beverages, Inc. v. Perrier Grp. of
Am, Inc, 269 F.3d 114, 124 (2d Cir. 2001) (citation omitted). Moreover, the anecdotal evidence of
confusion ?must be of a type that ?could in?ict commercial injury on the plaintiff in the form of either
a diversion of sales, damage to goodwill, or loss of control over reputation.? LVL Brands, 209 F.

Supp. 3d at 672 (quoting Lang v. Rel. Living Pub. Co., Inc, 949 F.2d 576, 583 (2d Cir. 1991)). In

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addition, although statistical evidence is not strictly required, ?the absence of surveys is evidence that
actual confusion cannot be The Sports Auth, Inc. v. Prime Hosp. Corp, 89 F.3d 955, 964
(2d Cir. 1996); see also 0 ?Keefe, 590 F. Supp. 2d at 523 lack of survey evidence counts against
?nding actual confusion?) (internal quotation marks and citations omitted).

Here, there is no evidence of actual consumer confusion. The only anecdotal ?evidence?
Plaintiffs can muster are a handful of instances where customers referred to the actual names of
Plaintiffs? characters in online reviews rather than using the names provided for such characters on
website.? (See Pls.? Mem. in Supp. at 16 (citing Pls.? 56.1 Stmt. 233?30); Pls.? Reply at 7
Yet, none of the customer reviews suggest the slightest sign of confusion as to the origin,
source, af?liation, or sponsorship of services, much less confusion likely to produce ?a
diversion of sales, damage to goodwill, or loss of control over reputation.? LVL Brands, 209 F.
Supp. 3d at 672 (internal quotation marks and citation omitted). Plaintiffs also fail to offer statistical
surveys showing any instances of consumer confusion despite CFH providing character-for?hire .
services using Plaintiffs" trademarked characters since at least 2012. (See, Ederer Decl., Ex. 0 at
CFH000115, CFH000121, id, Ex. at That Plaintiffs and Defendants
have used similar marks over a substantial period of time without ever producing a single recorded
instance of consumer confusion shows that there is no likelihood of consumer confusion. See Guthrie,
826 F.3d at 44.

Accordingly, this factor, too, weighs in Defendants? favor.

 

1" One such review, for example, noted that the customer?s son ?was thrilled to battle Darth Vader? but ?afraid
to battle Darth (Pls.? 56.1 Stmt. 1i 226.) Plaintiffs argue that this and similar reviews demonstrate
actual customer confusion because ?customers hire CFH to impersonate Plaintiffs? characters and convince
children that they are interacting with their favorite characters . . . and that is what young customers
believe.? (Pls.? Reply at 7.) However, given that customers are adults, rather than children, it is of little
signi?cance to the likelihood of consumer confusion analysis that children may mistake costumed actors
for Plaintiffs? ?ctional characters.

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e. Defendant?s intent and Evidence of Bad Faith

The sixth Polaroid factor focuses on ?whether the defendant adopted [the plaintiff s] mark with
the intention of capitalizing on plaintiff reputation and goodwill and any confusion between his and
the senior user?s product.? Bath Body Works Brand Mgmt., Inc. v. Summit Entm LLC, 7 F. Supp.
3d 385, 397 (S.D.N.Y. 2014) (quoting Long, 949 F.2d at 583). ?Where there is ?no evidence that the
defendant acted in bad faith . . . by deceiving customers into believing that its products were related to?
the plaintiff, this factor favors defendant.? Malletier v. Dooney Bourke, Inc, 561 F. Supp. 2d 368,
388 (S.D.N.Y. 2008) (quoting N. Y. Stock Exch, Inc. v. New York, New York Hotel LLC, 293 F.3d 550,
556 n.1 (2d Cir. 2002)).

As evidence of Defendants? bad faith, Plaintiffs? point to: the disclaimer in event
contracts that any similarity between their character costumes and Plaintiffs? characters is coincidental;
(2) use of altered character names that nevertheless remain recognizable? as Plaintiffs?
characters; (3) surreptitious removal of Plaintiffs? characters? names from its own customers?
online reviews; (4) and Sarelli?s false representation to Plaintiffs? counsel that CFH would cease its
infringing activity in response to Plaintiffs? cease and desist letters. (Pls.? Mem. in Supp. at 16.)
Plaintiffs also claim that Defendants? bad faith can be inferred from the fact that CFH knew of
Plaintiffs? marks but nevertheless decided to copy them to further its business. (Id)

Plaintiffs? claimed evidence of Defendants? bad faith misses the mark. event contract
disclaimer, the use of altered character names? from those of Plaintiffs? characters, and edits
of customer reviews are not evidence of bad faith at all. To the contrary, they are more likely to put
customers on notice that services were not sponsored or af?liated by Plaintiffs, and if anything,
signify efforts to avoid ?deceiving customers into believing that its products were related to? Plaintiffs.?
Dooney Bourke, 561 F. Supp. 2d at 388. Defendants? failure to comply with Plaintiffs? cease and

desist letters also cannot reasonably be interpreted as evidence of bad faith . See 0 ?Keefe, 590 F. Supp.

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2d at 525 (?If a defendant reasonably believes its mark does not infringe plaintiffs, she does not act
with the requisite intention of capitalizing on plaintiff?s reputation and goodwill?) (internal quotation
marks and citation omitted); Strange Music, Inc. 12. Strange Music, Inc, 326 F. Supp. 2d 481, 494
(S.D.N.Y. 2004) (?Evidence of a failure to discontinue [after receiving a cease and desist letter] does
not per se establish defendants? bad faith?). Nor can Defendants? mere prior knowledge of Plaintiffs?
marks be used to infer an intent to ?promote confusion between the products or appropriate [Plaintiffs?]
good will.? W. W. W. Pharm. Co. v. Gillette Co, 984 F.2d 567, 575 (2d Cir. 1993); see also Lang, 949
F.2d at 584 (rejecting argument that prior knowledge of another?s mark gives rise to an inference of
bad faith).

Absent evidence that Defendants acted to deceive customers into believing their character-for-
hire services were related to Plaintiffs, this factor also weighs in Defendants? favor.

f. Quality of Defendant?s Products

The seventh Polaroid factor?the quality of the defendant?s products?involves two concepts
seemingly at odds with each other. On the one hand, where ?the quality of a junior user?s product or
service is low compared to the senior user, ?there is an increased chance of actual injury when there is
confusion.? Flushing Bank, 138 F. Supp. 3d at 591 (quoting Savin, 391 F.3d at 461). On the other
hand, marked difference in quality[] . . . actually tends to reduce the likelihood of confusion in the
first instance, because buyers will be less likely to assume that the senior user whose product is high?
quality will have produced the lesser-quality products of the junior user.? Savin, 391 F.3d at 461.

Plaintiffs argue that this factor weighs in their favor because substandard operations
present a serious risk of devaluing or tarnishing Plaintiffs? reputation for providing high quality goods
and services.? (Pls.? Mem. in Supp. at 16.) For example, they point to the three customer complaints
lodged with the and a number of ?not currently recommended? reviews posted on Yelp

webpage. (Pls.? 56.1 Stmt. 23 1?3 9.) Yet, the evidence in the record demonstrates that CFH receives

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many positive reviews for its services, as well. (See id. 224?29.) Moreover, none of the reviews
cited in the record betray any sign of consumer confusion as to the source, sponsorship, or affiliation
of products or services. Nor do they suggest that Plaintiffs? reputations are being tainted as a
result of being confused with Defendants? allegedly inferior services. To the contrary, in light of
Plaintiffs? well established and highly regarded reputations in the entertainment industry, (see, 6. g. id.
1W 5MB), if Defendants? services are in fact of a lesser quality, it is likely that ordinary consumers will
assume Plaintiffs are not responsible for them.

Accordingly, this factor tips in Defendants? favor.

g. Consumer Sophistication

The final Polaroid factor considers the sophistication of the consumers purchasing the goods
or services in question. Generally, ?[t]he more sophisticated or discriminating the purchaser, the lower
the likelihood of confusion[]? since ?a discriminating purchaser will examine the product or service
carefully, dispelling any initial questions as to the origin or association of the product.? lashing Bank,
138 F. Supp. 3d at 591?92 (internal citation omitted); see also Savin, 391 F.3d at 461 more
sophisticated the purchaser, the less likely he or she will be confused by the presence of similar marks
in the marketplace?).

Courts analyzing this factor typically ?consider[] the general impression of the ordinary
purchaser, buying under the normally prevalent conditions of the market and giving the attention such
purchasers usually give in buying that class of goods.? Star Indus, Inc. v. Bacardi Co. Ltd, 412
F.3d 373, 390 (2d Cir. 2005) (internal quotation marks and citation omitted). As with actual confusion,
?[c]onsumer sophisticatiOn may be proved by direct evidence such as expert opinions or surveys.? Id.
In some cases, however, courts may ?reach a conclusion about consumer sophistication based solely
on the nature of the product or its price.? Id; see, ag, Patsy ?5 Brand, Inc. v. I 0. B. Reahy, Inc, 317

F.3d 209, 219 (2d Cir. 2003) (noting that consumer sophistication is generally low in dealing with

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cheaper products sold in the supermarket); LVL Brands, 209 F. Supp. 3d at 676 (inferring the
sophistication of the plaintiff consumers ?from the high price point of its sneakers?).

Plaintiffs argue in conclusory fashion that this factor weighs in their favor because ?[t]he target
audience for costumed characters is often times unsophisticated children . . . who are likely to
believe that they are being entertained by genuine Disney/Marvel/Lucas?lm [sic] characters.?15
(Pls.? Mem. in Supp. at 16.) However, they cite no evidence to support that proposition, either by way
of an expert opinion or consumer surveys. Cf. Warner Bros., Inc. 12. Gay Toys, Inc, 658 F.2d 76, 79
(2d Cir. 1981) (relying on a consumer survey which showed that eight in ten children surveyed
responded immediately to the ?Dixie Racer? as being the ?General Lee? or ?The Dukes of Hazzard
Car?). Nor is there adequate independent evidence about the sophistication of Defendants? clients or
the relative prices charged for Defendants? services.

This factor therefore tips in Defendants? favor, as well.

h. Balancing the Polaroid Factors

On balance, the PoZaroz'd factors weigh in Defendants? favor and against a ?nding of likelihood
of consumer confusion. Although ?the Polaroid inquiry is not a mere mechanical counting 
Cozy, 277 F. Supp. 3d at 456 (internal quotation marks and citation omitted), just two factors?the
strength and similarity of the marks?favor Plaintiffs. The majority of factors, however, including
competitive proximity, whether Plaintiffs are likely to ?bridge the gap,? evidence of actual confusion,
Defendants? intent in adopting the mark, the quality of Defendants? marks, and consumer sophistication

all point in Defendants? direction. Based on the relevant factors, this Court concludes that no

reasonable jury could find a likelihood of consumer confusion as to the origin, source, and/or

 

15 As noted, while the target audience for costumed characters may be children, the targeted purchasers
were, in fact, adults. Accordingly, children are not the relevant consumers for purposes of this factor. See
Nabisco, Inc. v. PF Brands, Inc, 191 F.3d 208, 220 (2d Cir. 1999) (?White children may be the primary ultimate
consumers of [the plaintiff?s product], they are generally not the purchasers?).

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sponsorship of Defendants? character-for?hire services. Summary judgment for Defendants is therefore
appropriate.

Accordingly, Plaintiffs? motion for summary judgment on their federal trademark infringement
claim is DENIED, while Defendants? motion for summary judgment dismissing Plaintiffs? claims
under federal and New York law for trademark infringement, unfair competition, and false designation
of origin is GRANTED.

B. Trademark Dilution

Plaintiffs? SAC asserts a claim for trademark dilution under Section 360?1 of New York?s
General Business Law. (SAC 59a64.) Section 360-1 provides protection against an ?injury to
business reputation or of dilution of the distinctive quality of a mark or trade name.? N.Y. Gen. Bus.
Law 360?1. Trademark dilution claims are principally concerned with ?the gradual whittling away of
a [plaintiff s] distinctive [mark],? Alfied Maint. Conn. v. Allied Mach. Trades, Inc, 369 1162,
1166 (N .Y. 1977), and the resulting ?injury to the mark?s selling Clinique Labs, Inc. v. Dep
Corp, 945 F. Supp. 547, 562 (S.D.N.Y. 1996).

Unlike claims for trademark infringement, no proof of ?competition between the parties or
. . . confusion as to the source of goods or services? is required. N.Y. Gen. Bus. Law 360-1. Anti?
dilution laws are instead focused on protecting associations ?between a product or service and its
corresponding quality, brand, reputation, or origin? from being diluted through the use of another?s
trademark. Louis Vuitton Malietier, SA. v. My Other Bag, Inc, 156 F. Supp. 3d 425, 432 (S.D.N.Y.)
(emphasis added), aff?d, 674 F. App?x 16 (2d Cir. 2016). To prevail on a claim for trademark dilution
under Section 360-1, a plaintiff must show:

(1) that it possesses a strong mark, one which has a distinctive quality or has
acquired a secondary meaning such that the trade name has become so associated
in the public?s mind with the plaintiff that it identifies goods sold by that entity as

distinguished from goods sold by others, and (2) a likelihood of dilution by either
blurring or tarnishrnent.

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Gucci Am, Inc. 12. Guess?, Inc, 868 F. Supp. 2d 207, 241 (S.D.N.Y. 2012) (citation omitted).

Here, it is undisputed that Plaintiffs? trademarks are strong. (See supra Section llI.A.3 .21.) Thus,
Plaintiffs? trademark dilution claim turns on whether there is a likelihood of dilution. Plaintiffs contend
that Defendants? use of their marks in connection with the provision of character-for-hire services
creates a likelihood of dilution by both blurring and tarnishment. (Pls.? Mem. in Supp. at 17ml 8.) The
record evidence does not support a cause of action for trademark dilution based a theory of blurring.
However, a genuine issue of fact exists with respect to whether use of Plaintiffs? marks in
connection with its character~for~hire business tarnishes Plaintiffs? marks. Accordingly, summary
judgment on Plaintiffs? trademark dilution claim is inappropriate.

1 . Blurring

?Blurring occurs where the defendant uses or modi?es the plaintiff?s trademark to identify the
defendant?s goods and services, raising the possibility that the mark will lose its ability to serve as a
unique identi?er of the plaintiff 5 product.? N. Y. Stock Exch. 293 F.3d at 558 (internal quotation marks
and citation omitted). ?The classic case of dilution by blurring involves an unrelated product coopting
a famous name or trademark as its own? like ?Dupont shoes, Buick aspirin tablets, Schlitz varnish,
Kodak pianos, Bulova gowns, and so forth.? Louis Vuitton, 156 F. Supp. 3d at 433 (internal quotation
marks and citation omitted).

In determining whether a likelihood of blurring exists, courts typically consider six factors?a
many of which mirror the Polaroid factors described above??including: the similarity of the marks;
(ii) the similarity of the products covered; the sophistication of the consumers; (iv) the existence
of predatory intent; the renown of the senior mark; and (vi) the renown of the junior mark.? Id. at
434 (citation omitted). The factors, however, are merely guideposts; ?[t]he ultimate question under

New York law is whether there is a likelihood that the capacity of the senior owner?s mark to serve as

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a unique identi?er of its source will be diminished.? Cozy, 277 F. Supp. 3d at 459 (internal quotation
marks and citations omitted).

As an initial matter, Plaintiffs do not allege that Defendants coopt their marks in connection
with unrelated products, like ?Frozen Snow Boots? or ?Avengers Chewing Gum.? Rather, they claim
Defendants use Plaintiffs? marks in connection with the provision of character-for-hire services in a
manner that speci?cally evokes Plaintiffs? characters. Accordingly, Plaintiffs have not shown that their
marks ?will lose [their] ability to serve as a unique identi?er of [their] product[s]? as a result of
Defendants? conduct. N. Y. Stock Exch, 293 F.3d at 558.

Moreover, the relevant factors con?rm that no reasonable jury could find a likelihood of
dilution by blurring based on these facts. Plaintiffs? marks clearly have renown. However, as already
discussed, there is some measure of difference in the way Defendants use and present Plaintiffs? marks,
and a substantial dissimilarity between the types of goods and services offered by Plaintiffs and
Defendants.

In addition, as discussed, there is no evidence regarding the sophistication level of the relevant
consumers, nor is there any evidence in this record of predatory intent. As in the trademark
infringement context, ?[p]redatory intent involves more than mere knowledge of the senior markwit
requires a showing that the junior user adopted its mark hoping to bene?t commercially from
association with the senior mark.? Mead Data Cent, Inc. v. Toyota Motor Sales, Inc, 875 F.2d 1026,
1037 (2d Cir. 1989) (Sweet, ., concurring). Here, Plaintiffs point to no evidence that Defendants
adopted Plaintiffs? marks with the intent of profiting from an association with their strong marks. To
the contrary, the record evinces an effort on Defendants? part to avoid any such association in the minds
of consumers.

Finally, although there is no evidence as to Defendants? renown, it seems improbable

Defendants? marks? will ?become so famous that [they] will overwhelm? Plaintiffs? mark and cause

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Plaintiffs? ?consumers to draw the associations identi?ed wit Defendants? marks. Landscape Forms,
Inc. v. Columbia. Cascade Ca, 117 F. Supp. 2d 360, 370 (S.D.N.Y. 2000).

Thus, on balance, the relevant factors militate against a ?nding of likelihood of dilution by
blurring.

2. Tarnishment

?[D]ilution by tamishment ?arises when the plaintiff? trademark is linked to pro ducts of shoddy
quality, or is portrayed in an unwholesome or unsavory context likely to evoke un?attering thoughts
about the owner?s product.?? Cozy, 277 F. Supp. 3d at 460 (quoting Deere Co. v. MT Prods, Inc,
41 F.3d 39, 43 (2d Cir. 1994)). ?The sine qua non of tarnishment is a ?nding that plaintiff?s mark will
suffer negative associations through defendant?s use.? Hormel Foods Corp. v. Jim Henson Prods,
Inc, 73 F.3d 497, 507 (2d Cir. 1996); see also Deere Ca, 41 F.3d at 43 (tarnishment occurs when
the ?trademark?s reputation and commercial value might be diminished because the public will
associate the lack of quality or lack of prestige in the defendant?s goods with the plaintiff?s unrelated
goods?).

Plaintiffs do not contend that Defendants present their marks in an ?unwholesome or unsavory
Co ty, 277 F. Supp. 3d at 460. Rather, Plaintiffs claim that CFH ?has a reputation for shoddy
services that is inimical to Plaintiffs? stellar reputation for customer care.? (Pls.? Mem. in Supp. at 19.)
They again point to customer complaints ?led with the and negative reviews of services
posted on social media. (See id.) Yet, as explained above, the evidence in the record is inconclusive
as to Defendants? reputation in the marketplace. (See supra Section 

If character-for-hire services are of a markedly poor quality, a jury could reasonably
?nd that Plaintiffs? marks may suffer from the negative associations formed as a result of Defendants?
conduct. C002, 277 .3d at 460 (?nding tarnishment where the plaintiff presented evidence of the

inferiority of the defendant?s products). Accordingly, as Defendants concede, a genuine issue of

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material fact exists as to whether Defendants? use of Plaintiffs? mark is likely to cause a diminution in
the reputation or value of Plaintiffs? marks. (See Defs.? Opp?n at 15.)

Plaintiffs? and Defendants? motions for summary judgment on Plaintiffs? trademark dilution
claim are therefore DENIED.

C. Copyright Infringement

Plaintiffs? copyright infringement claims arise under the federal Copyright Act of 1976,
17 U.S.C. 101 et seq. (See SAC 33?37.) The Copyright Act provides the owner of a copyrighted
work with ?the exclusive right to . . . reproduce, perform publicly, display publicly, prepare derivative
works of, and distribute copies of, his copyrighted work.? Arista Records, LLC v. Doe 3, 604 F.3d
110, 117 (2d Cir. 2010) (citing l7 U.S.C. 106). A party who violates those exclusive rights is liable
for damages. Warren v. John Wiley Sons, Inc, 952 F. Supp. 2d 610, 616 (S.D.N.Y. 2013). To
prevail on a claim for copyright infringement, the plaintiff must prove: ownership of a valid
copyright, and (2) copying of constituent elements of the work that are origina MulZer v. Twentieth
Century Fox Film Corp, 794 F. Supp. 2d 429, 439 (S.D.N.Y. 2011) (quoting Feisz? Pub! ?115, Inc. v.
Rural Tel. Serv. Ca, 499 US. 340, 361, (1991)), aff?d sub nom. Muller v. Anderson, 501 F. App?x 81
(2d Cir. 2012).

1. Ownership ofa Valid Copyright

It is well settled that certificates of copyright registration constitute prima facie evidence of
copyright ownership. See Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir. 1997). Here, Plaintiffs
have submitted certificates copyrighting their highly popularized ?ctional characters in different
manifestations, including model sheets, licensing kits, drawing sheets, style guides, and motion
pictures. (See Decl. ofMarsha L. Reed dated Oct. 11, 2017, ECF No. 76, Exs. D.l; Decl. of
Carol Pinkus dated Oct. 9, 2017, ECF N0. 64, Exs. B. 1-B.4.) Although not all of the certificates were

initially registered in Plaintiffs? names, Plaintiffs have submitted evidence showing that they are, in

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fact, the current owners of the copyrights. (See Decl. of Marsha Reed dated Dec. 8, 2017, ECF N0. 88,
Decl. of Carol Pinkus dated Dec. 8, 2017, ECF No. 89, Schedules and
accompanying exhibits.) Accordingly, Plaintiffs have satis?ed this element of their claims for
copyright infringement.
2. Activity

To prove the second element of a copyright claim, Plaintiffs must show that Defendants
?actually copied [their] work, and that such copying was illegal because a substantial similarity? exists
between the allegedly infringing work . . . and the protectable elements of the copyrighted 
Porto v. Guirgt?s, 659 F. Supp. 2d 597, 608 (S.D.N.Y. 2009) (citing KntMaves, Inc. v. Lollytogs Ltd.
(Inc. 71 F.3d 996, 1002 (2d Cir. 1995)). Absent proof of direct copying, a plaintiff ?may establish
copying circumstantially by demonstrating that the person who composed the defendant?s work had
access to the copyrighted material and that there are similarities between the two works that are
probative of copying.? Jorgensen v. Epic/Sony Records, 351 F.3d 46, 51 (2d Cir. 2003) (internal
quotation marks and citations omitted). Probative similarity turns on ?whether an average lay observer
would recognize the alleged copy as having been appropriated from the copyrighted work.? Blakeman
v. The Walt Disney Co., 613 F. Supp. 2d 288, 304 (E.D.N.Y. 2009) (quoting Warner Bros. Inc. v. Am.
Broad. Cos, Inc, 654 F.2d 204, 208 (2d Cir. 1981)).

The substantial similarity inquiry is also governed by an ?ordinary observer test.? Porto, 659
F. Supp. 2d at 609. Courts assessing whether two works are substantially similar consider ?whether
the ordinary observer, unless he set out to detect the disparities [between the works], would be disposed
to overlook them, and regard their aesthetic appeal as the same.? Folio Impressions, Inc. v. Byer Cat. 
937 F.2d 759, 765 (2d Cir. 1991) (internal quotation marks and citation omitted). Although
?dissimilarity between some aspects of the works will not automatically relieve the infringer of

liability,? Williams v. Crichton, 84 F.3d 581, 588 (2d Cir. 1996), ?numerous differences tend to

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undercut substantial similarity.? Am. Broad. 720 F.2d at 241 (citation omitted). Where ?no reasonable
trier of fact could find the works substantially similar, summary judgment is appropriate.? Crichton,
84 F.3d at 587 (internal quotation marks and citation omitted).

Plaintiffs claim that CFH reproduced and publicly displayed Plaintiffs? copyrighted characters
by ?upload[ing] still and video images of those characters? on website and other social media
sites. (Pls.? Mem. in Supp. at 22.) Plaintiffs also claim that CFH publicly performed their copyrighted
characters, including the characters? ?personas and story lines,? by providing live costumed actors to
perform as Plaintiffs? characters at themed entertainment events and by making videos and images of
such performances available on its website and other social media sites. (Id)

Defendants dispute that they have reproduced, copied, displayed, or performed any of
Plaintiffs? copyrighted characters. (See Defs.? Opp?n at 7.) Defendants also dispute the accuracy of
some images of website that Plaintiffs submitted in support of their motion. (See Defs.? Resp.
to Pls.? 56.1 1[ 67; see also Sarelli Decl. 1[ 7.) In addition, Defendants contend that their use of
I characters from Norse mythology and ?centuries?old fairy tales and folk tales? do not infringe on any
original expression Plaintiffs have added to these ?public domain characters.? (Defs.? Mem. at 6.)

Based on the current record, this Court cannot conclude that Defendants have infringed
Plaintiffs? copyrighted characters because Plaintiffs do not point to any admissible evidence
demonstrating that Defendants have engaged in the alleged infringing conduct. See Presbyterian
Church ofSudan v. Talisman Energy, Inc, 582 F.3d 244, 264 (2d Cir. 2009) admissible
evidence need be considered by the trial court in ruling on a motion for summary judgment?) (internal
quotation marks and citation omitted). For instance, Plaintiffs rely on various poor quality screenshots
of website and other social media sites, including screenshots of older versions of the websites
preserved by the Internet Archive, as well as several videos allegedly captured from website

and other social media sites. (See, Pls.? 56.1 64?66, 68?75, 78~86, 87?96.)

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The screenshots and videos, however, have not been properly authenticated and are submitted
to this Court through an attorney declaration, which claims in boilerplate fashion that it is ?based upon
[the attorney?s] personal knowledge of matters detailed [t]herein.? Such evidence is not admissible
and cannot be considered in deciding the instant motions for summary judgment. Cf United States v.
Gasperz?nz?, No. l7?2479-cr, 2018 WL 3213005, at *5 (2d Cir. July 2, 2018) (archived screenshots were
admissible where the proponent ?presented testimony from the office manager of the Internet Archive,
who explained how the Archive captures and preserves evidence of the contents of the internet at a
given time. . . compared the screenshots sought to be admitted with true and accurate copies of the
same websites maintained in the Internet Archive, and testified that the screenshots were authentic and
accurate copies of the Archive?s records?); Universal Church, Inc. v. Universal Life Church/ULC
Monastery, No. 14 Civ. 5213 (NRB), 2017 WL 3669625, at *3 (S.D.N.Y. Aug. 8, 2017) (archived
screenshots were admissible on summary judgment motion where accompanied by af?davit from
employee of the archive service); see also Speeht v. Google, Inc, 747 F.3d 929, 933 (7th Cir. 2014)
(exclusion of archived screenshots on summary judgment motion was appropriate absent
?authentication by someone with personal knowledge of reliability of the archive service from which
the screenshots were retrieved?). In addition, the evidence Plaintiffs rely on as proof of the public
performances of their copyrighted characters consists almost exclusively of event contracts, most of
which are unsigned, and none of which are properly authenticated. (See Pls.? 56.1 101?210.) Even
if such evidence were admissible, it at most represents contracts for the provision of future services
rather than proof of actual infringement of Plaintiffs? copyrights.

At any rate, issues of material fact exist with reSpect to whether the images and videos on 
website and the alleged public performances by Defendants? costumed characters are substantially
similar to Plaintiffs? characters, their personas, and their ?story lines.? Summary judgment on

Plaintiffs? claims for copyright infringement is therefore inappropriate.

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Accordingly, Plaintiffs? and Defendants? motions for summary judgment on Plaintiffs?

copyright infringement claim are DENIED. I
D. Willfulness

Plaintiffs seek a determination that there is no dispute of material fact that Defendants? conduct
was willful. (Pls.? Mem. at 24.) A ?nding of willful infringement would entitle Plaintiffs to an
enhanced award of statutory damages. See Shamz?r v. Anchor?Int 7 outed, Inc. No. 10 Civ. 725 (PGG),
2013 WL 4008635, at *10 (S.D.N.Y. July 30, 2013) (?If the court ?nds willful infringement, . . . the
award can be as high as $150,000; if the court ?nds that the infringement was ?innocent,? damages can
be as low as 

?To prove ?willfulness? under the Copyright Act, the plaintiff must show (1) that the defendant
was actually aware of the infringing activity, or (2) that the defendant?s actions were the result of
?reckless disregard? for, or ?willful blindness? to, the copyright holder?s rights.? Istand Software, 413
F.3d at 263. ?[K]knowledge . . . . need not be proven directly but may be inferred from the defendant?s
conduct.? MAS. Imp, Corp. v. Chenson Enters, Inc, 968 F.2d 250, 252 (2d Cir. 1992). ?Reckless
disregard for the possibility of infringement may be found when the infringer should have known?mfor
instance, by virtue of his occupationmthat the particular acts would constitute infringement.?
Innovation Ventures, LLC v. Ultimate One Corp, 176 F. Supp. 3d 137, 164 (E.D.N.Y. 2016)
(quotation marks and citation omitted).

Since summary judgment is denied with respect to Plaintiffs? claims for copyright infringement,
a determination at this stage that Defendants? infringement was willful is premature. In any event,
?summary judgment is not a tool well suited to determining willfulness, especially when it turns on
?[d]eterminations of credibility,? which ?are within the province of the jury.?? CZose?Up Int?l, Inc. v.
Berov, 382 F. App?x 113, 117 (2d Cir. 2010) (quoting Lipton 12. Nature Co. 71 F.3d 464, 472 (2d Cir.

1995)). Defendant Sarelli has submitted an af?davit in which he claims that CFH made good faith
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efforts to find and remove the videos and images that Plaintiffs requested it take down in their various
cease?and?desist letters. (Sarelli Decl. fl 9.) Sarelli, who is not a lawyer, further claims that he was
unrepresented when Plaintiffs contacted him and that he modified the language in event
contracts and on website in a good faith attempt to resolve the dispute with Plaintiffs.
(Id. jj 12.) The record evidence, including the copyright and trademark disclaimers on website
and in its putative event contracts, (Pls.? 56.1 Stmt. 218?221; Ederer Decl., EX. at DE100009311),
corroborate Sarelli?s contentions and rebut Plaintiffs? claims of willful infringement. Thus, at a
minimum, there are issues of material fact concerning Sarelli?s state of mind, rendering summary
judgment on the question of willfulness improper. See Lipton, 71 F.3d at 472.
IV. CONCLUSION

Defendants? motion for summary judgment, (ECF N0. 66), dismissing Plaintiffs? claims for 
trademark infringement, (ii) unfair competition, and false designation of origin is GRANTED.
However, Defendants? motion for summary judgment dismissing Plaintiffs? claims for trademark
dilution, and (ii) copyright infringement is DENIED. Plaintiffs? motion for partial summary judgment
on its claims of trademark infringement, (ii) copyright infringement, and trademark dilution,
(ECF No. 59), is similarly DENIED.

Dated: August 9, 2018
New York, New York

SO ORDERED.

<8 9m

(SEOR B. DANIELS
ited tates District Judge

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