`
`DOCUMENT
`
`EELECTRONICALLY FILED
`DDc#
`DATE FILED: 5 m
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 1 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed h-ym-é—‘mum—a.-- _
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`JUAN PABLO CHAVEZ,
`
`Plaintiff,
`
`17cv9572 (JGK)
`
`- against -
`
`MEMORANDUM OPINION
`AND ORDER
`
`THE BRITISH BROADCASTING CORP. et
`
`al.,
`
`Defendants.
`
`JOHN G. KOELTL, District Judge:
`
`The plaintiff, Juan Pablo Chavez,1 brings this action pro se
`
`under 17 U.S.C. §§ 101 & 106A, 15 U.S.C.
`
`§ 1125(a), and New York
`
`General Business Law § 360—1 against The British Broadcasting
`
`Corporation (“the BBC”) and its employees Craig Fancy, Anna
`
`Bressanin, and Ilya Shnitser. The plaintiff alleges claims of
`
`copyright infringement, violation of the Visual Arts Rights Act,
`
`trademark infringement, unfair competition (under both the
`
`Lanham Act and New York law),
`
`trademark dilution under New York
`
`law, and false designation of origin under New York law. The
`
`plaintiff's Claims arise from the defendants' use of music
`
`composed and performed by the plaintiff in a short documentary.
`
`The defendants move to dismiss the plaintiff’s amended complaint
`
`The plaintiff asserts that the real party in interest in this case is
`1
`one of his companies, TSE Management LLC.
`(§§eert. No. 40 at i 21.) However,
`TSE Management is not a piaintiff in this case, and a corporation cannot be
`
`represented pro se in federal court. U.S. v. Twenty Miljam—BSO IED Jammers,
`669 F.3d 78,
`91
`(2d Cir. 2011).
`
`
`
`
`
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 2 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 2 of 17
`
`under Federal Rule of Civil Procedure 12(b)(6), arguing that
`
`(1)
`
`the plaintiff does not own a valid copyright registration for
`
`the music,
`
`(2)
`
`their use of the music was nominative fair use,
`
`(3)
`
`the unfair competition and false designation of origin
`
`claims are redundant, and (4)
`
`the plaintiff’s brand is not
`
`strong enough to be diluted.2
`
`For the reasons explained below,
`
`the defendants’ motion to
`
`dismiss is granted.
`
`I.
`
`In deciding a motion to dismiss pursuant to Federal Rule of
`
`Civil Procedure 12(b)(6),
`
`the allegations in the complaint are
`
`accepted as true, and all reasonable inferences must be drawn in
`
`the plaintiff’s favor. McCarthy v. Dun & Bradstreet Corp., 482
`
`F.3d 184, 191 (2d Cir. 2007). The Court’s function on
`
`a motion to dismiss is “not to weigh the evidence that might be
`
`presented at a trial but merely to determine whether the
`
`complaint itself is legally sufficient.” Goldman v. Belden, 754
`
`F.2d 1059, 1067 (2d Cir. 1985). The Court should not dismiss the
`
`complaint if the plaintiff has stated “enough facts to state a
`
`The plaintiff initially failed to respond to the defendants’ motion to
`2
`dismiss his amended complaint.
`In an August 10, 2018, Order,
`the Court
`extended the plaintiff's time to respond to the motion and indicated that if
`no response was filed the Court would decide the motion on the papers that
`had already been submitted.
`(Dkt. No. 38.) Although the plaintiff submitted
`two additional letters, both documents merely repeat the plaintiff’s prior
`allegations.
`(Dkt. Nos. 39—40.) The Court construes these papers as
`Opposition to the defendants’ motion to dismiss.
`
`
`
`
`
`
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 3 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 3 of 17
`
`claim to relief that is plausible on its face." Bell Atl. Corp.
`
`v. Twombly, 550 U.S. 544, 570 (2007).
`
`“A claim has facial
`
`plausibility 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).
`
`While courts should construe the factual allegations in the
`
`light most favorable to the plaintiff, “the tenet that a court
`
`must accept as true all of the allegations contained in the
`
`complaint is inapplicable to legal conclusions.” gg; A court may
`
`also consider documents incorporated by reference in the
`
`complaint as well as documents the plaintiff either had in the
`
`plaintiff’s possession or had knowledge of and upon which the
`
`plaintiff relied in bringing suit. gee Cortec Indus.,
`
`Inc. v.
`
`Sum Holding L.P., 949 F.2d 42,
`
`48
`
`(2d Cir. 1991).
`
`Courts are to afford pro se litigants “special solicitude,”
`
`Ruotolo V. I.R.S., 28 F.3d 6,
`
`8
`
`(2d Cir. 1994)
`
`(per curiam), by
`
`construing their pleadings liberally “to raise the strongest
`
`
`arguments that they suggest,” Triestman v. Fed. Bureau of
`
`Prisons, 470 F.3d 471, 472 (2d Cir. 2006)
`
`(per curiam)
`
`(quotation marks omitted). Accordingly, courts apply a more
`
`flexible standard when evaluating the sufficiency of a pro se
`
`litigant’s complaint
`
`than when reviewing a complaint submitted
`
`by counsel. Perez v. City of N.Y., No. 14cv7502, 2015 WL
`
`
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 4 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 4 of 17
`
`3652511, at *2
`
`(S.D.N.Y. June 11, 2015). This liberal pleading
`
`standard, however, “does not excuse a pro se plaintiff from
`
`providing sufficient factual allegations that state a plausible
`
`claim.” Tyler v. Argo, No. 14cv2049, 2014 WL 5374248, at *2
`
`(S.D.N.Y. Oct. 10, 2014). A pro se plaintiff’s complaint may be
`
`dismissed for failing to state a claim upon which relief can be
`
`granted.
`
`Id.
`
`II.
`
`The following facts are taken from.the amended complaint
`
`and are accepted as true for purposes of the motion to dismiss.
`
`The plaintiff, who also goes by the stage name Johnny Arco,
`
`is a violinist and performer.
`
`(Am. Compl. T 16.) The plaintiff
`
`claims to be the “owner and/or exclusive United States licensee
`
`of the rights in sound recordings, visual arts works, service—
`
`marks and audio—visual works embodying such recordings and
`
`works.” (lg; T 2.) The plaintiff has used various entities to
`
`sell and license his work,
`
`including Johnny Arco LLC, TSE
`
`Management LLC, and GRBK Music Group.
`
`(Ed; T 6.)
`
`In December
`
`2012,
`
`the defendants produced a short documentary video entitled
`
`“Seanna Sharpe on the Art of the Death—Defying Stunt” (“the
`
`Video”).3 (Am. Compl. T 17(a); Declaration of Jason M. Joyal
`
`Defendant Anna Bressanin produced the Video and defendant Ilya Shnitser
`3
`was the cameraman for the Video.
`(Joyal Decl. Ex. A.) Defendant Craig Fancy,
`who is Vice President of Technology at BBC's corporate affiliate in New York,
`
`4
`
`
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 5 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 5 of 17
`
`(“Joyal Decl.”) Ex. A.) The Video featured an aerial performance
`
`by Seanna Sharpe on New York’s Williamsburg Bridge and featured
`
`music composed and performed by the plaintiff.
`
`(Joyal Decl. Ex.
`
`A.) The plaintiff is also seen performing in the Video on aerial
`
`silks.
`
`(Am. Compl.
`
`fl 17(C).)
`
`On December 1, 2012,
`
`two days before the Video aired,
`
`the
`
`plaintiff sent the defendants a clip of his music to be used in
`
`the Video.
`
`(lg; T 17(b)
`
`& Ex. C.)4 The plaintiff now claims that
`
`the defendants used his music in the Video without his
`
`permission. The Video includes a credit reading, “music by
`
`Johnny Arco,” (id; T 17(d)), and the defendants do not dispute
`
`that they used the plaintiff’s music in the Video. The
`
`defendants published the Video on a BBC News website on December
`
`3, 2012, and the Video was broadcast on the BBC World News
`
`television channel.
`
`(1d; T 27; Joyal Decl. Ex. A.)
`
`The plaintiff claims to be the owner and exclusive “U.S.
`
`licensee” of certain copyrights.
`
`(Am. Compl. 1 25.) He does not
`
`clearly state what copyrights he is referring to or whether the
`
`music used in the Video was copyrighted. The plaintiff does
`
`is not referenced in the Video or the Video’s credit lines and is not alleged
`to have any involvement in the creation or production of the Video.
`(Id.)
`
`The plaintiff attached as an exhibit a screenshot of an email dated
`4
`December 1, 2012,
`from johnnyarco@gmail.com to annbress@gmail.com and
`ilya.sama@gmail.com.
`(Am. Compl. Ex. C.) The email appears to attach an mp3
`file labelled “ThisIsGoingToKillMeRnd4." (lg;) The plaintiff claims that the
`defendants used music from “ThisIsGoingToKillMeRnd4” in the Video.
`(lg;
`fl l7(b).}
`
`
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 6 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 6 of 17
`
`attach an exhibit that appears to be screenshots of emails from
`
`the “Copyright Office" noting that the plaintiff submitted
`
`registration claims.
`
`(lg; Ex. D.)
`
`In 2015,
`
`the plaintiff’s three corporations, Johnny Arco
`
`LLC, TSE Management LLC, and GRBK Music Group, filed a lawsuit
`
`based on the same underlying events as alleged in this case.
`
`Johnny Arco LLC v. British Broad. Corp., No. 15cv9530 (S.D.N.Y.
`
`Mar. 18, 2016). That case was dismissed because the corporations
`
`were not represented by counsel. Ed;, Dkt. No. 3. The plaintiff
`
`subsequently filed this lawsuit against.the same defendants.
`
`III.
`
`The plaintiff claims that the defendants committed
`
`copyright
`
`infringement by using his music and performance in the
`
`Video. The defendants argue that the plaintiff cannot succeed on
`
`a copyright
`
`infringement claim because the plaintiff has failed
`
`to allege that he has a valid copyright. The defendants are
`
`correct.
`
`To withstand a motion to dismiss, a copyright infringement
`
`claim must allege: “(1) which original works are the subject of
`
`the copyright claim;
`
`(2} that the plaintiff owns the copyrights
`
`in those works;
`
`(3)
`
`that the copyrights have been registered in
`
`accordance with the statute; and (4) by what acts during what
`
`time the defendant infringed the copyright.” Carell v. Shubert
`
`
`
`
`
`
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 7 of 17
`Case 1:17-cv—09572-JGK Document 63 Filed 05/23/19 Page 7 of 17
`
`Org., Inc., 104 F. Supp. 2d 236, 250 (S.D.N.Y. 2000)
`
`(quotation
`
`marks omitted).
`
`In this case,
`
`the plaintiff does not allege that the music
`
`used in the Video or his performance in the Video are
`
`copyrighted. The plaintiff does attach copies of emails showing
`
`that he filed a copyright application for his music on February
`
`12, 2018, after this lawsuit was filed.
`
`(Am. Compi. EX. D.)5
`
`However,
`
`the Supreme Court recently clarified that an
`
`application for registration of a copyright is not enough; a
`
`plaintiff may not bring a.suit for copyright infringement until
`
`“the Copyright Office grants registration.” Fourth Estate Pub.
`
`
`Benefit Corp. V. Wall—Street.com, LLC, 139 S. Ct. 881, 888
`
`(2019); id; at 886—87
`
`(“[R]egistration occurs, and a copyright
`
`claimant may commence an infringement suit, when the Copyright
`
`Office registers a copyright.”). Because the plaintiff has
`
`failed to allege that he owns a valid, fully registered
`
`copyright over the allegedly infringed music and his performance
`
`in the Video, his copyright claim fails.
`
`the plaintiff filed a
`After the briefing on this motion was complete,
`5
`request for the Court to take judicial notice of a “copyright registration.”
`(Dkt. No. 52.) However,
`the plaintiff did not file a copyright registration;
`he filed a document directing the Court to the docket of a case in the
`Northern District of Georgia where the plaintiff sued various other
`defendants.
`(2g; (citing 19cv119).) The docket entry from that court’s docket
`that the plaintiff points to —— docket number
`7 ~~ does not contain a
`copyright registration.
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 8 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 8 of 17
`
`The defendant’s motion to dismiss the plaintiff’s claim for
`
`copyright infringement is granted and that claim is dismissed.
`
`IV.
`
`The plaintiff appears to claim that the defendants’ use of
`
`his performance in the Video violated the Visual Artists Rights
`
`Act
`
`(“VARA”). 17 U.S.C.
`
`§ 106A.
`
`VARA protects only visual art, not music or performing art.
`
`Carter v. Helmsley—Spear, Inc., 71 F.3d 77, 84
`
`(2d Cir. 1995).
`
`“VARA defines a Work of visual art as ‘a painting, drawing,
`
`print, or sculpture, existing in a single copy.’”,£d; The
`
`plaintiff does not allege that the defendants used a painting,
`
`drawing, print, or sculpture that belonged to him. Therefore,
`
`the plaintiff’s VARA claim is dismissed.
`
`V.
`
`The plaintiff pleads additional federal claims for
`
`trademark infringement, unfair competition, and false
`
`designation of origin, as well as for unfair competition and
`
`trademark dilution under New York state law.
`
`(Am. Compl. 11 45,
`
`51, 54, 57, 61.)
`
`A.
`
`The plaintiff alleges that the defendants infringed his
`
`“Johnny Arco” trademark under the Lanham Act by crediting his
`
`music in the Video to Johnny Arco, his stage name. The
`
`defendants argue that their use of Johnny Arco to credit the
`
`
`
`
`
`
`
`
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 9 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 9 of 17
`
`plaintiff’s work in the Video does not give rise to a claim for
`
`trademark infringement based on the doctrine of nominative fair
`
`use.
`
`In order to establish a claim for trademark infringement
`
`under section 43 of the Lanham Act,6 “a plaintiff must establish
`
`that
`
`(1)
`
`{he] has a valid mark that is entitled to protection
`
`under the Lanham Act; and that
`
`(2)
`
`the defendant used the mark,
`
`(3)
`
`in commerce,
`
`(4)
`
`in connection with the sale .
`
`.
`
`. or
`
`advertising of goods or services,
`
`(5), without
`
`the plaintiff’s
`
`. consent.” 1—800 Contacts,
`
`Inc. v. WhenU.Com, Inc., 414 F.3d 400,
`
`406707 (2d Cir. 2005).
`
`In addition, “the plaintiff must show
`
`that defendant’s use of that mark is likely to cause confusion
`
`as to the affiliation, connection, or association of
`
`[the
`
`defendant] with [the plaintiff], or as to the origin,
`
`sponsorship, or approval of
`
`[the defendant’s] goods, services,
`
`or commercial activities by [the plaintiff].” Id; at 407
`
`(quotation marks omitted).
`
`The plaintiff does not allege that the “Johnny Arco” mark is a
`5
`federally registered trademark. Therefore,
`the Court construes the
`plaintiff’s claim as falling under section 43 of the Lanham Act, 15 U.S.C.
`§ 1125, which “allows suits by any person who believes that he or she is or
`is likely to be damaged” by the defendants’ use of the plaintiff’s mark even
`if the mark is not federally registered. Fed. Treasury Enter.
`(citing
`Sojuzplodoimport v. SPI Spirits Ltd., 726 F.3d 62, 72 (2d Cir. 2013)
`15 U.S.C.
`§ 1125(a)(1)). The defendants conducted a Search of the United
`States Patent and Trademark Office (USPTO) Trademark Electronic Search System
`(TESS) and did not find any application or registration for the trademark
`Johnny Arco.
`(Joyal Decl.
`% 3.)
`
`
`
`
`
`
`
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 10 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 10 of 17
`
`However,
`
`the doctrine of “nominative fair use” allows a
`
`defendant to use a plaintiff’s trademark to identify the
`
`plaintiff’s goods or services “so long as there is no likelihood
`
`of confusion about
`
`the source of the defendant’s product or the
`
`mark—holder’s sponsorship or affiliation.” Int’l Info. Sys. Sec.
`
`Certification Consortium,
`
`Inc. v. Sec. Univ., LLC, 823 F.3d 153,
`
`165 (2d Cir. 2016)
`
`(quotation marks omitted). Courts in the
`
`Second Circuit consider two sets of factors in nominative fair
`
`use cases. Id. at 168. First,
`
`the factors set out in Polaroid
`
`Corp. v. Polarad Electronics Corp.:
`
`(1) strength of the trademark;
`of
`the marks;
`(3) proximity of
`
`(2) similarity
`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.7
`
`Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97,
`
`115 (2d Cir. 2009)
`
`(citing Polaroid Corp. v. Polarad Elecs.
`
`the Second Circuit Court of
`In International Information Systems,
`7
`Appeals stated “that many of the Polaroid factors are a bad fit” in the
`nominative use analysis. 823 F.3d at 168. However,
`the Court stated that
`those nonexclusive factors should still be considered in nominative fair use
`cases. Id.
`
`10
`
`
`
`
`
`
`
`
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 11 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 11 of 17
`
`
`Corp., 287 F.2d 492 (2d Cir. 1961)). And second,
`
`the factors
`
`adopted in International Information Systems:
`
`(1) whether the use of the plaintiff’s mark is
`necessary’
`to describe both the plaintiff’s
`product or service and the defendant’s product
`or service,
`that
`is, whether
`the product or
`
`service is not readily identifiable without
`use of
`the mark;
`(2) whether
`the defendant
`
`uses only so much of the plaintiff’s mark as
`is necessary to identify the product
`or
`service;
`and (3) whether
`the defendant did
`
`in conjunction with the
`anything that would,
`mark,
`suggest sponsorship or endorsement by
`the plaintiff holder,
`that
`is, whether
`the
`defendant’s conduct or
`language reflects the
`true
`or
`accurate
`relationship
`between
`
`.plaintiff’s
`services.
`
`and
`
`defendant’s
`
`products
`
`or
`
`823 F.3d at 168.
`
`Typically,
`
`the nominative fair use analysis involves
`
`questions of law and fact and determination on a motion to
`
`dismiss is premature. Int’l Council of Shopping Ctrs.,
`
`Inc. v.
`
`Info Quarter, LLC, No. 17cv5526, 2018 WL 4284279, at *5
`
`(S.D.N.Y. Sept. 7, 2018). However, “nominative fair use can
`
`support a motion to dismiss[] if the pleadings fail to allege a
`
`mark use beyond nominative fair use.” Gibson Brands,
`
`Inc. v.
`
`John Hornby Skewes & Co., No. 14cv609, 2015 WL 4651250, at *4
`
`(C.D. Cal. Aug. 4, 2015)
`
`(quotation marks and emphasis omitted).
`
`In this case,
`
`the description of the Video read “music by
`
`Johnny Arco” and was cited in the bottom right hand corner of
`
`the webpage featuring the Video. This is plainly a fair use of
`
`11
`
`
`
`
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 12 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 12 of 17
`
`the mark. There is no risk of confusion about the mark because
`
`the defendants simply used the plaintiff's stage name
`
`descriptively to attribute the music to the plaintiff. The
`
`defendants’ use of the mark was in good faith because the
`
`
`
`
`
`defendants only used the mark to give the plaintiff credit for
`
`his violin music, which he himself had provided. Use of the mark
`
`was necessary to identify the plaintiff’s work ~— indeed it
`
`would have been difficult to credit the plaintiff’s music
`
`without referencing his name —— and the defendants did not use
`
`the mark in an excessive manner. Stevo Design,
`
`Inc. v. SBR Mktg.
`
`Ltd;, 919 F. Supp. 2d 1112, 1124 (D. Nev. 2013)
`
`(holding that
`
`nominative fair use barred the plaintiffs trademark infringement
`
`claims where the trademarks were the plaintiffs’ names and the
`
`defendant used the plaintiff’s names to identify the
`
`plaintiffs); see also Tiffany (NJ)
`
`Inc. v. eBay, Inc., 576 F.
`
`Supp. 2d 463, 497 (S.D.N.Y. 2008)(“[T]he mere use of a
`
`trademarked term to describe something is not enough to suggest
`
`sponsorship or endorsement.”),
`
`remanded in part on other
`
`grounds, 600 F.3d 93 (2d Cir. 2010).
`
`In short, it would be manifestly unfair to allow the
`
`plaintiff to pursue his claim for trademark infringement because
`
`the defendants gave him proper credit for his music. The
`
`defendants’ use of the plaintiff’s mark was a nominative fair
`
`12
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 13 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 13 of 17
`
`use, and the plaintiff’s trademark infringement claim is
`
`dismissed.
`
`B.
`
`The plaintiff also asserts claims for unfair competition
`
`and false designation of origin under Section 43(a) of the
`
`Lanham Act and for unfair competition under New York State law.
`
`The defendants argue that these claims should be dismissed
`
`because they are duplicative of the plaintiff’s trademark
`
`infringement claim.
`
`The plaintiff’s claims for state and federal unfair.
`
`competition and false designation of origin require the same
`
`elements of proof as the plaintiff’s trademark infringement
`
`claim, except that unfair competition under New York law
`
`requires evidence of bad faith. Tiffany, 576 F. Supp. 2d at 519
`(“[T]o prevail on a claim for unfair competition under New York
`
`common law, a plaintiff must couple its evidence supporting
`
`liability under the Lanham Act with additional evidence
`
`demonstrating the defendant’s bad faith.” (quotation marks
`
`omitted)).
`
`In this case,
`
`the plaintiff alleges the same facts in
`
`support of these claims as he did in support of his trademark
`
`infringement claim. Therefore,
`
`the fate of the plaintiff’s
`
`claims for trademark infringement, state and federal unfair
`
`competition, and false designation of origin are interconnected.
`
`13
`
`
`
`
`
`
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 14 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 14 of 17
`
`And, as explained above,
`
`the plaintiff’s trademark infringement
`
`claim fails because the defendants’ use of the mark was a
`
`nominative fair use. Therefore,
`
`the plaintiff’s claims for state
`
`and federal unfair competition, and for federal false
`
`designation of origin also fail. §ee Tiffany, 576 F. Supp. 2d at
`
`519 (holding that the plaintiff's federal and New York state
`
`unfair competition claims failed because the defendant’s use of
`
`the mark was a nominal fair use).
`
`Accordingly,
`
`the plaintiff’s claims for unfair competition
`
`and false designation of origin under section 43(a) of the
`
`Lanham Act and for unfair competition under New York State law
`
`are dismissed.
`
`VI.
`
`Finally,
`
`the plaintiff alleges a claim for trademark
`
`dilution under New York General Business Law § 360—1. He argues
`
`that the defendants’ use of his “Johnny Arco” mark “diluted
`
`[its] distinctive quality.” (Am. Compl. l 54.) The defendants
`
`argue that the plaintiff does not allege any facts that
`
`establish that “Johnny Arco" is a strong enough mark to be
`
`diluted.
`
`Where fair use has been established for purposes of federal
`
`law, it also applies to related state law claims. Louis Vuitton
`
`
`Malletier, S.A. v. My Other Bag, Inc., 156 F. Supp. 3d 425, 434
`
`n.3 (S.D.N.Y. 2016). As explained above,
`
`the defendants’ use of
`
`14
`
`
`
`
`
`
`
`
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 15 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 15 of 17
`
`the “Johnny Arco” mark to credit the plaintiff’s work is a
`
`nominative fair use.
`
`Moreover,
`
`the plaintiff has failed to plead a trademark
`
`dilution claim under New York law. To succeed on a claim for
`
`trademark dilution under New York law,
`
`the plaintiff must show
`
`“(1)
`
`that it possesses a strong mark —— one which has a
`
`distinctive quality or has acquired a secondary meaning
`
`and (2) a likelihood of dilution by either blurring or
`
`tarnishment.” Kaplan,
`
`Inc. v. Yun, 16 F. Supp. 3d 341, 352
`
`(S.D.N.Y. 2014)
`
`(quoting Fireman's Ass’n of State of New York v.
`
`French Am. Sch. of New York, 839 N.Y.S.2d 238, 242 (2007)).8
`
`The plaintiff has not alleged any facts regarding the
`
`distinctiveness of his “Johnny Arco” mark. The plaintiff states
`
`only that because of his “long, continuous and exclusive use of
`
`the mark .
`
`.
`
`.
`
`the mark [has] gained wide public acceptance and
`
`association with {the] plaintiff.” (Am. Compl.
`
`T 34.) The
`
`plaintiff does not plead any other facts to support his claim.
`
`These conclusory statements are insufficient to plead a claim
`
`for trademark dilution. Alzheimer’s Found. of Am.,
`
`Inc. v.
`
`Alzheimer's Disease and Related Disorders Assoc., Inc., No.
`
`lOcv33l4, 2018 WL 2084168, at *8
`
`(S.D.N.Y. May 1, 2018)
`
`Unlike federal trademark dilution law, New York’s trademark dilution
`3
`law does not require a mark to be “famous” for protection against dilution to
`apply. Starbucks Corp. v. Wolfe’s Borough Coffee,
`Inc., 588 F.3d 97, 114 (2d
`Cir. 2009)
`
`15
`
`
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 16 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 16 of 17
`
`(“Conclusory allegations that a .
`
`.
`
`. mark is distinctive,
`
`devoid of any factual support, are insufficient to state a
`
`dilution claim under New York law.”); see also SMJ Grp.,
`
`Inc. v.
`
`417 Lafayette Rest. LLC, No. O6cvl774, 2006 WL 2516519, at *4
`
`(S.D.N.Y. Aug. 30, 2006)
`
`(“Plaintiffs' allegations regarding
`
`continuity of use .
`
`.
`
`. or association do not establish the
`
`requisite level of distinctiveness in the general public.”).
`
`Therefore,
`
`the plaintiff’s claim for trademark dilution under
`
`New York General Business Law § 360—1 is dismissed.
`
`CONCLUSION
`
`The Court has considered all of the arguments raised by the
`
`parties.To the extent not Specifically addressed,
`
`the arguments
`
`are either moot or without merit. For the reasons explained
`
`above,
`
`the plaintiff’s amended complaint is dismissed. The Clerk
`
`is directed to close docket numbers 16 and 52.
`
`The plaintiff previously requested leave to file another
`
`amended complaint.
`
`(Dkt. No. 47.) It is unclear how the
`
`plaintiff could cure the deficiencies explained in this Order in
`
`a second amended complaint. However, if the plaintiff chooses
`
`l6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 17 of 17
`Case 1:17-cv-09572-JGK Document 63 Filed 05/23/19 Page 17 of 17
`
`to file a second amended complaint, any such amended complaint
`
`May 23, 2019
`
`must be filed by June 23, 2019.
`
`SO ORDERED.
`
`Dated:
`
`New York, New York
`
`John G. Koeltl
`x“
`United States District Judge
`
`
`
`
`
`l7
`
`