Case 7:09-cv-01252-GTS-DEP Document 43 Filed 09/28/11 Page 1 of 23
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF NEW YORK
`______________________________________
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`CAR-FRESHNER CORP.; and
`JULIUS SAMANN, LTD.,
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`v.
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`Plaintiffs,
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`7:09-CV-1252
`(GTS/GHL)
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`GETTY IMAGES, INC.; and
`GETTY IMAGES (US), INC.,
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`Defendants,
`_______________________________________
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`APPEARANCES:
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`OF COUNSEL:
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`MACKENZIE HUGHES, LLP
` Counsel for Plaintiffs
`101 South Salina Street
`PO Box 4967
`Syracuse, NY 13221-4967
`
`OBLON, SPIVAK McCLELLAND,
`MAIER & NEUSTADT, LLP
` Co-Counsel for Plaintiffs
`1940 Duke Street
`Alexandria, VA 22314
`
`DAVIS WRIGHT & TREMAINE, LLP
` Counsel for Defendants
`1633 Broadway
`27th Floor
`New York, NY 10019-4315
`
`HISCOCK & BARCLAY, LLP
` Co-Counsel for Defendants
`One Park Place
`300 South State Street
`Syracuse, NY 13202-2078
`
`NANCY L. PONTIUS, ESQ.
`
`JONATHAN HUDIS, ESQ.
`ROBERTA S. BREN, ESQ.
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`CHRISTOPHER J. ROBINSON, ESQ.
`JAMES E. ROSENFELD, ESQ.
`
`DOUGAS J. NASH, ESQ.
`
`HON. GLENN T. SUDDABY, United States District Judge
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`

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`Case 7:09-cv-01252-GTS-DEP Document 43 Filed 09/28/11 Page 2 of 23
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`MEMORANDUM-DECISION and ORDER
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`Currently before the Court, in this trademark and unfair competition action filed by
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`Car-Freshner Corporation (“CFC”) and Julius Sämann Ltd. (“JSL”) (collectively "Plaintiffs")
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`against Getty Images, Inc. and Getty Images (U.S.) Inc. ("Defendants"), are the following two
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`motions: (1) Defendants’ motion to dismiss Plaintiffs’ Amended Complaint for failure to state a
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`claim upon which relief can be granted pursuant to Fed. R. Civ. P. 12(b)(6) or, in the alternative,
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`for summary judgment pursuant to Fed. R. Civ. P. 56 (Dkt. No. 14); and (2) Plaintiffs’ cross-
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`motion requesting that the Court reserve its decision on Defendants’ motion pending Plaintiffs’
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`receipt of further discovery, and/or their ability to further brief the issues, pursuant to Fed. R.
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`Civ. P. 56(d) (Dkt. No. 16).1 For the reasons set forth below, Defendants’ motion is granted in
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`part and denied in part; and Plaintiffs’ cross-motion is granted in part and denied in part.
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`Accompanying Plaintiffs’ cross-motion for discovery was a motion to add as a
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`Defendant in this action Getty-US. (Dkt. No. 16.) On September 30, 2010, United States
`Magistrate Judge George H. Lowe issued an Order that (1) granted in part, and otherwise
`deferred, Plaintiffs’ cross-motion for discovery, and (2) granted Plaintiffs’ motion to add as a
`Defendant in this action Getty-US, directing Plaintiffs’ to so amend their Complaint. (Dkt. No.
`25.) On October 7, 2010, following Plaintiffs’ filing of an Amended Complaint, Defendants
`submitted a letter-brief confirming their understanding that the Court would consider the pending
`motion to dismiss or for summary judgment (filed by Defendant Getty Images, Inc., against
`Plaintiffs) to have been filed by both Defendants, and to apply to Plaintiffs’ Amended
`Complaint. (Dkt. No. 30.) Neither Plaintiffs nor Magistrate Judge Lowe filed any document
`indicating a contrary understanding. Subsequently, Magistrate Judge Lowe issued further
`rulings on the deferred portion of his Order of September 30, 2010. (See generally Docket
`Sheet.) As a result, the Court deems the motion to dismiss or for summary judgment to have
`been filed by both Defendants, and to apply to Plaintiffs’ Amended Complaint. In addition, the
`Court considers only that portion of Plaintiffs’ cross-motion requesting that the Court reserve its
`decision on Defendants’ motion pending Plaintiffs’ receipt of further discovery, and/or their
`ability to further brief the issues.
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`2
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`Case 7:09-cv-01252-GTS-DEP Document 43 Filed 09/28/11 Page 3 of 23
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`I.
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`RELEVANT BACKGROUND
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`A.
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`Plaintiffs’ Claims
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`Generally, liberally construed, Plaintiffs’ Amended Complaint alleges as follows.
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`Plaintiffs are engaged in the business of manufacturing and marketing products, such as
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`air fresheners, using distinctive Tree designs as trademarks and corporate identifiers. (Dkt. No.
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`28 at ¶ 14 [Plfs.’ Am. Compl.].) In addition to owning federal registrations for the famous Tree
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`design Marks (collectively the “Tree Marks”), Plaintiffs have common law trademark rights to
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`the famous Tree Marks, which are used in commerce in connection with various goods. (Id. at
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`¶¶15-18, 21.)
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`Defendants are engaged in the business of licensing digital media through their website
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`to customers. (Id. at ¶ 9.) Defendants have infringed on Plaintiffs’ Tree Marks by “promoting
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`and licensing digital media for commercial use through [their] Web Site(s) that included one or
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`more tree designs which are identical to, virtually indistinguishable from and/or confusingly
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`similar to Plaintiffs’ distinctive Tree . . . Marks.” (Id. at ¶ 23.) In addition, “Defendants engaged
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`in their unauthorized and complained of conduct with full knowledge of the value and fame of
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`the Tree . . . Marks, and long after the Tree . . . Marks had become famous.” (Id. at ¶ 26.)
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`Based on these (and other) factual allegations, Plaintiffs’ Amended Complaint asserts the
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`following eight claims: (1) federal trademark infringement; (2) federal false designation of
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`origin; (3) common law trademark infringement; (4) common law unfair competition; (5)
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`contributory trademark infringement, unfair competition and dilution; (6) vicarious trademark
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`infringement, unfair competition and dilution; (7) federal dilution; and (8) dilution under New
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`York State law. (Id. at ¶¶ 43-75.)
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`3
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`Case 7:09-cv-01252-GTS-DEP Document 43 Filed 09/28/11 Page 4 of 23
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`Familiarity with the remaining factual allegations supporting these claims in Plaintiffs’
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`Amended Complaint is assumed in this Decision and Order, which is intended primarily for
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`review by the parties. (Id.)
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`B.
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`Defendants’ Motion and Plaintiffs’ Opposition/Cross-Motion
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`Generally, in support of their motion to dismiss for failure to state a claim or, in the
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`alternative, for summary judgment, Defendants asserts the following three arguments: (1)
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`Plaintiffs have not alleged facts plausibly suggesting, or adduced admissible record evidence
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`establishing, that Defendants have “used” the Tree Marks as trademarks to identify their source
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`or sell their own goods (through their descriptive and expressive fair use of those Tree Marks);
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`(2) even assuming that Plaintiffs have alleged such facts and adduced such evidence, Defendants
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`are protected from liability as a matter of law by the “nominative fair use” doctrine essentially
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`because Defendants are not capitalizing on consumer confusion (through their incidental and
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`purely descriptive use of the Tree Marks); and (3) even assuming that Defendants are not so
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`protected, Plaintiffs’ claims of contributory infringement and vicarious liability must be
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`dismissed, because they have not alleged facts plausibly suggesting, or adduced admissible
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`record evidence establishing, a claim for either contributory infringement or vicarious liability.
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`(See generally Dkt. No. 14, Attach. 1 [Defs.’ Memo. of Law].)
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`Generally, in opposition to Defendants’ motion, and in support of their cross-motion
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`pursuant to Fed. R. Civ. P. 56(d),2 Plaintiffs argue as follows: (1) Defendants’ motion to dismiss
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`for failure to state a claim should be denied, because Plaintiffs have adequately pled each of their
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`At the time Plaintiffs’ filed their cross-motion on February 23, 2010, the
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`subdivision of Fed. R. Civ. P. 56 that permitted cross-motions for discovery (in opposition to a
`motion for summary judgment) was subdivision (f). However, Fed. R. Civ. P. 56 was amended
`on April 28, 2010. Pursuant to the amendments, subdivision (d) carried forward without
`substantial change the provisions of former subdivision (f).
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`4
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`Case 7:09-cv-01252-GTS-DEP Document 43 Filed 09/28/11 Page 5 of 23
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`eight claims; (2) in the alternative, Defendants’ motion to dismiss for failure to state a claim
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`should be denied, because each of the factually based defenses asserted by Defendants (i.e., the
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`defenses of non-trademark use, descriptive fair use, expressive fair use, and nominative fair use)
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`rely on record evidence (i.e., facts and materials asserted through Defendants’ counsel’s
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`affidavit), which may not be considered by the Court without treating Defendants’ motion as one
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`for summary judgment; and (3) the Court should reserve its decision on Defendants’ alternative
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`motion for summary judgment pending Plaintiffs’ receipt of further discovery, and/or their
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`ability to further brief the issues. (See generally Dkt. No. 16, Attach. 6 [Plfs.’ Response Memo.
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`of Law].)3
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`Generally, in their reply to Plaintiffs’ response, in addition to reiterating previously
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`advanced arguments, Defendants argue that the Court may fairly decide (and grant) their
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`alternative motion for summary judgment without affording Plaintiffs an opportunity to conduct
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`discovery, because Plaintiffs have not submitted an affidavit showing (1) what facts are sought
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`to resist the motion and how they are to be obtained, (2) how those facts are reasonably expected
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`to create a genuine issue of material fact, (3) what effort Plaintiffs have made to obtain them, and
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`(4) why Plaintiffs have been unsuccessful in those efforts. (Dkt. No. 17.)4
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`In their motion, Plaintiffs also requested joinder of Getty Images (US), Inc., as a
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`Defendant pursuant to Fed. R. Civ. P. 19 and 20. As explained above in note 1 of this Decision
`and Order, that request was granted by Magistrate Judge Lowe on September 30, 2010.
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`Defendant Getty Images, Inc., also states that it “has no objection to the addition
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`of [Getty-US] as a [D]efendant[,]” but asserts that “Getty Images (US), Inc. should be substituted
`for [Defendant Getty Images, Inc., because it] has no involvement in the matters at issue.” (Dkt.
`No. 18.)
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`Case 7:09-cv-01252-GTS-DEP Document 43 Filed 09/28/11 Page 6 of 23
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`II.
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`RELEVANT LEGAL STANDARDS
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`A.
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`Legal Standard Governing Motions to Dismiss for Failure to State a Claim
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`Because the parties to this action have demonstrated, in their memoranda of law, an
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`accurate understanding of the legal standard governing motions to dismiss, the Court will not
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`recite that well-known legal standard in this Decision and Order, but will direct the reader to the
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`Court’s recent decision in Bridgeforth v. Popovics, 09-CV-0545, 2011 WL 2133661, at *2-4
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`(N.D.N.Y. May 25, 2011) (Suddaby, J.), which accurately recites that legal standard.
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`However, a few words are appropriate regarding what documents are considered on a
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`motion to dismiss for failure to state a claim upon which relief can be granted, pursuant to Fed.
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`R. Civ. P. 12(b)(6). Generally, when contemplating a dismissal pursuant to Fed. R. Civ. P.
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`12(b)(6) or Fed. R. Civ. P. 12(c), a court may consider the following matters outside the four
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`corners of the complaint without triggering the standard governing a motion for summary
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`judgment: (1) documents attached as an exhibit to the complaint or answer, (2) documents
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`incorporated by reference in the complaint (and provided by the parties), (3) documents that,
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`although not incorporated by reference in the complaint, are “integral” to the complaint (and are
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`provided by the parties), or (4) any matter of which the court can take judicial notice for the
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`factual background of the case.5
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`See Fed. R. Civ. P. 10(c) (“A copy of any written instrument which is an exhibit
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`to a pleading is a part thereof for all purposes.”); Chambers v. Time Warner, Inc., 282 F.3d 147,
`152 (2d Cir. 2009) (“The complaint is deemed to include any written instrument attached to it as
`an exhibit or any statements or documents incorporated in it by reference.”) (internal quotation
`marks and citations omitted); Int'l Audiotext Network, Inc. v. Am. Tel. & Tel. Co., 62 F.3d 69, 72
`(2d Cir. 1995) (per curiam) (“[W]hen a plaintiff chooses not to attach to the complaint or
`incorporate by reference a [document] upon which it solely relies and which is integral to the
`complaint,” the court may nevertheless take the document into consideration in deciding [a]
`defendant's motion to dismiss, without converting the proceeding to one for summary
`judgment.”) (internal quotation marks and citation omitted); L-7 Designs, Inc. v. Old Navy, LLC,
`No. 10-573, 2011 WL 2135734, at *1 (2d Cir. June 1, 2011) (explaining that conversion from a
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`Case 7:09-cv-01252-GTS-DEP Document 43 Filed 09/28/11 Page 7 of 23
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`B.
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`Legal Standard Governing Motions for Summary Judgment
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`Rule 12(d) of the Federal Rules of Civil Procedure provides that, “[i]f, on a motion under
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`Rule 12(b)(6) or 12(c), matters outside the pleadings are presented to and not excluded by the
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`court, the motion must be treated as one for summary judgment under Rule 56[, and] [a]ll parties
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`must be given a reasonable opportunity to present all the material that is pertinent to the motion.”
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`Fed. R. Civ. P. 12(d). “[T]he conversion of a Rule 12(b)(6) motion into one for summary
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`judgment under Rule 56 when the court considers matters outside the pleadings is strictly
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`enforced and mandatory.” Global Network Commc’ns, Inc., 458 F.3d at 155. Ordinarily, before
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`converting a motion to dismiss under Fed. R. Civ. P. 12(b)(6) into one for summary judgment
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`under Fed. R. Civ. P. 56, formal notice is not required where a party “should reasonably have
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`recognized the possibility that the motion might be converted into one for summary judgment
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`[and] was [neither] taken by surprise [nor] deprived of a reasonable opportunity to meet facts
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`outside the pleadings.” Villante v. Dep't of Corr. of City of New York, 786 F.2d 516, 521 (2d Cir.
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`1986) (internal quotation marks and citation omitted).
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`C.
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`Legal Standard Governing a Cross-Motion for Discovery, in Opposition to a
`Motion for Summary Judgment Motion, Under Fed. R. Civ. P. 56(d)
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`Rule 56(d) of the Federal Rules of Civil Procedure provides as follows:
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`If a nonmovant shows by affidavit or declaration that, for specified
`reasons, it cannot present facts essential to justify its opposition, the
`court may: (1) defer considering the motion or deny it; (2) allow time
`to obtain affidavits or declarations or to take discovery; or (3) issue
`any other appropriate order.
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`motion to dismiss for failure to state a claim to a motion for summary judgment is not necessary
`under Fed. R. Civ. P. 12[d] if the “matters outside the pleadings” in consist of [1] documents
`attached to the complaint or answer, [2] documents incorporated by reference in the complaint
`(and provided by the parties), [3] documents that, although not incorporated by reference, are
`“integral” to the complaint, or [4] any matter of which the court can take judicial notice for the
`factual background of the case).
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`Case 7:09-cv-01252-GTS-DEP Document 43 Filed 09/28/11 Page 8 of 23
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`Fed. R. Civ. P. 56(d). This rule has been appropriately characterized as providing as “a narrow
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`exception to the availability of summary judgment in instances where a party cannot fairly
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`respond to a summary judgment motion because of the inability, through no fault of that party, to
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`acquire evidence which is available and would preclude the entry of summary judgment.”
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`Steptoe v. City of Syracuse, 09-CV-1132, 2010 WL 5174998, at *4 (N.D.N.Y. Oct 5, 2010)
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`(Peebles, M.J.), adopted by 2010 WL 5185809 (N.D.N.Y. Dec. 15, 2010) (Mordue, C.J.).6 To
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`obtain relief under Fed. R. Civ. P. 56(d), a litigant must submit an affidavit showing “(1) what
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`facts are sought to resist the motion and how they are to be obtained, (2) how those facts are
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`reasonably expected to create a genuine issue of material fact, (3) what effort the affiant has
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`made to obtain them, and (4) why the affiant has been unsuccessful in those efforts.” Miller v.
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`Wolpoff & Abramson, L.L.P., 321 F.3d 292, 303 (2d Cir. 2003).7
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`III. ANALYSIS
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`After carefully considering the parties’ briefing on Plaintiffs’ cross-motion (requesting
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`that the Court reserve its decision on Defendants’ motion pending Plaintiffs’ receipt of further
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`discovery, and/or their ability to further brief the issue), the Court finds as follows: (1) some of
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`the documents on which Defendants rely in asserting their alternative motion for summary
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`Accord, Gill v. Calescibetta, 00-CV-1553, 2009 WL 890661, at *7 (N.D.N.Y.
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`March 31, 2009) (Report-Recommendation by Peebles, M.J., adopted by Suddaby, J.); Gill v.
`Hoadley, 261 F. Supp.2d 113, 132 (N.D.N.Y. 2003) (Peebles, M.J.), adopted by Memorandum-
`Decision and Order (N.D.N.Y. filed Jan. 9, 2004) (Scullin, C.J.).
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`Accord, Gurary v. Winehouse, 190 F.3d 37, 43 (2d Cir. 1999); Meloff v. N.Y. Life
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`Ins. Co., 51 F.3d 372, 375 (2d Cir. 1995); Paddington Partners v. Bouchard, 34 F.3d 1132, 1138
`(2d Cir. 1994); Hudson River Sloop Clearwater, Inc. v. Dep’t of Navy, 891 F.2d 414, 422 (2d
`Cir. 1989); Burlington Coat Factory Warehouse Corp. v. Esprit De Corp., 769 F.2d 919, 926 (2d
`Cir. 1985); Capital Imaging Assoc., P.C. v. Mohawk Valley Medical Assoc., Inc., 725 F. Supp.
`669, 680 (N.D.N.Y. 1989) (McCurn, C.J.), aff’d, 996 F.2d 537 (2d Cir. 1993).
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`Case 7:09-cv-01252-GTS-DEP Document 43 Filed 09/28/11 Page 9 of 23
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`judgment are considered by the Court in Defendants’ motion to dismiss for failure to state a
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`claim;8 (2) generally, Plaintiffs’ counsel’s affidavit does show [a] what facts are sought to resist
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`the motion and how they are to be obtained, [b] how those facts are reasonably expected to
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`create a genuine issue of material fact, [c] what effort counsel has made to obtain them, and [d]
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`why counsel has been unsuccessful in those efforts;9 and (3) while Magistrate Judge Lowe
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`directed Defendants to respond to Plaintiffs’ proposed interrogatories and document request by
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`November 1, 2010, the paper discovery he directed was provided to Plaintiffs some eight months
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`after the expiration of the deadline for Plaintiffs’ response to Defendants’ alternative motion for
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`summary judgment.10
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`For all of these reasons, the Court agrees with Plaintiffs that Defendants’ alternative
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`motion for summary judgment is not ripe for decision. However, rather than staying its decision
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`on that alternative motion pending Plaintiffs’ receipt of further discovery, and/or their ability to
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`further brief the issues, the Court finds it more appropriate to simply deny that alternative motion
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`without prejudice, given the nature of the briefing that has occurred thus far. In this regard,
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`Plaintiff’s cross-motion is granted in part and denied in part. This proceeding shall return to
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`Magistrate Judge Lowe for, inter alia, the supervision of the conducting of discovery.
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`Turning to an analysis of Defendants’ alternative motion to dismiss for failure to state a
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`claim pursuant to Fed. R. Civ. P. 12(b)(6), and what documents the Court may consider (in
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`(Compare Dkt. No. 28, Attach. 1 [attaching 11 images with no accompanying
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`text] with Dkt. No. 14, Attach. 5-10 [attaching 11 images with accompanying text, license
`agreements and releases].)
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`(Dkt. No. 16, Attach. 1, at ¶¶ 6, 8-17; Dkt. No. 16, Attachs. 3-5 [attaching Exs. B-
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`D to Decl. of Jonathan Hudis].)
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`(Compare Text Order dated Jan. 22, 2010 [setting response deadline as March 1,
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`2010] with Dkt. No. 25, at 4 [setting deadline for limited paper discovery as Nov. 1, 2010]).
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`Case 7:09-cv-01252-GTS-DEP Document 43 Filed 09/28/11 Page 10 of 23
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`addition to the four-corners of the Amended Complaint) in deciding that motion, the Court
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`begins by noting that the parties do not focus on whether the Court may consider the eleven
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`“representative” images contained in Exhibit A to Plaintiff’s Amended Complaint. Rather, the
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`parties focus on whether the Court may consider (1) the documents attached as exhibits to the
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`declaration of Defendants’ counsel (i.e., the text accompanying the eleven images at issue on
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`Defendants’ website, as well as the license agreements and releases that may be accessed
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`through internet links contained in that accompanying text), and (2) the sworn factual assertions
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`contained in the affidavit of Defendants’ counsel.11
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`The Court need not linger on the latter type of information described (i.e., the sworn
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`factual assertions contained in the affidavit of Defendants’ counsel): the Court finds that it may
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`not properly consider that information on a motion to dismiss for failure to state a claim.12
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`A closer question is presented by the former type of information described (i.e., the
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`documents attached as exhibits to the declaration of Defendants’ counsel). If it was undisputed
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`(Compare Dkt. No. 14, Attach. 3, ¶¶ 4-9 [Affid. of James Rosenfeld, essentially
`11
`arguing that Plaintiffs have incorporated by reference in their operative pleading the text
`accompanying the images on Defendants’ website, as well as the license agreements and releases
`that may be accessed through internet links contained in that accompanying text] with Dkt. No.
`16, Attach. 6, at 20 [attaching page “12” of Plfs.’ Opp. Memo. of Law, essentially arguing that
`Plaintiffs have not incorporated by reference in their operative pleading the documents at issue,
`because the genuineness of those documents, and the fact of whether they are available to
`visitors on Defendants’ website, hinges on sworn statements made in Defendants’ counsel’s
`affidavit, which may not be properly considered on a motion to dismiss for failure to state a
`claim].)
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`See Degrosiellier v. Solomon & Solomon, P.C., 00-CV-1065, 2001 WL 1217181,
`12
`at *2 (N.D.N.Y. Sept. 27, 2001) (Mordue, J.) (“declin[ing] to consider any factual averments
`contained in defense counsel's supporting affidavit in connection with [defendant’s motion to
`dismiss for failure to state a claim upon which relief can be granted]”); cf. Anderson v. Cnty. of
`Nassau, 297 F. Supp.2d 540, 545 (E.D.N.Y. 2004) (declining to take judicial notice of purported
`facts stated in attorney affidavit in deciding motion to dismiss for failure to state claim even
`though court did not “doubt the reliability of the facts in th[e] affidavit” because the court had
`“no documentation to verify the accuracy of the[] statements”).
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`Case 7:09-cv-01252-GTS-DEP Document 43 Filed 09/28/11 Page 11 of 23
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`that the documents provided by Defendants’ counsel came from Defendants’ website, and were
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`viewed by visitors, during the time period referenced in Plaintiffs’ Amended Complaint, the
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`Court would have some difficulty excluding them from consideration, because most of them
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`would appear incorporated by reference in and/or integral to Plaintiffs’ Amended Complaint.
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`However, Plaintiff sufficiently dispute the genuineness and/or accessibility those documents.
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`(Dkt. No. 16, Attach. 6, at 20 [attaching page “12” of Plfs.’ Opp. Memo. of Law].) Simply
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`stated, the Court is not confident that the documents provided by Defendants are the documents
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`that are in fact incorporated by reference in and/or integral to Plaintiffs’ Amended Complaint.13
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`As a result, in deciding Defendants’ alternative motion to dismiss for failure to state a
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`claim, the Court will consider only the four corners of Plaintiffs’ Amended Complaint, and the
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`eleven “representative” images contained in Exhibit A to that Amended Complaint. Having
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`decided this issue, the Court will now address the arguments raised by the parties on Defendants’
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`alternative motion to dismiss for failure to state a claim.
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`A.
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`Whether Defendants Have “Used” the Tree Marks as Trademarks
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`As stated above in Part I.B. of this Decision and Order, Defendants seek the dismissal of
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`Plaintiffs’ claims based on Defendants’ argument that they have not “used” Plaintiffs’ Tree
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`See Faulkner v. Beer, 463 F.3d 130, 134 (2d Cir. 2006) (explaining that “it must
`13
`be clear on the record that no dispute exists regarding the authenticity or accuracy of the
`document” before document outside of the complaint may be considered on a motion to dismiss
`for failure to state a claim); Barberan v. Nationpoint, 706 F. Supp.2d 408, 415-16 (S.D.N.Y.
`2010) (“The Court will not [on a motion to dismiss for failure to state a claim] consider those
`documents submitted by Defendants that are not subject to judicial notice because there are
`disputes, even if of questionable viability, regarding the authenticity of these documents.”);
`Brown v. DeFrank, 06-CV-2235, 2006 WL 3313821, at *22 (S.D.N.Y. Nov. 15, 2006) (stating
`that the court could not consider certain exhibits on a motion to dismiss for failure to state a
`claim, because the plaintiff disputed the accuracy of those exhibits); cf. Cellular Tech. Servs.
`Co., Inc. v. TruePosition, Inc., 609 F. Supp.2d 223, 227 (D. Conn. 2009) (considering documents
`integral to the complaint when “no dispute exists regarding their authenticity or accuracy”).
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`Case 7:09-cv-01252-GTS-DEP Document 43 Filed 09/28/11 Page 12 of 23
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`Marks as trademarks to identify their source or sell their own goods (through their descriptive
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`and expressive fair use of those Tree Marks).
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`As an initial matter, to consider Defendants’ argument regarding their use of Plaintiffs’
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`Tree Marks, the Court must consider the images from Defendants’ website that Plaintiffs claim
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`infringe on their Tree Marks. As explained above in the introduction to Part III of this Decision
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`and Order, the Court may, and will, do so because those images are incorporated by reference in,
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`and attached to, the Amended Complaint. (Dkt. No. 28 & Attach. 1.)
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`Turning to the issue of whether Defendants have “used” the Tree Marks in commerce,
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`Defendants argue that their “use” of Plaintiffs’ Tree Marks constitutes “fair use” (and therefore
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`they have not “used” the Tree Marks as trademarks), because the Tree Marks are being “used”
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`by Defendants only in “their primary descriptive sense.” The Fair Use Doctrine, which is
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`codified in the Lanham Act at 15 United States Code § 1115(b), refers to use “otherwise than as
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`a mark . . . which is descriptive of and used fairly and in good faith only to describe the goods or
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`services of such party, or their geographic origin.” 15 U.S.C. § 1159(b)(4). “To come within the
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`fair use defense, Defendants must have made use of Plaintiffs’ Tree Mark “(1) other than as a
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`mark, (2) in a descriptive sense, and (3) in good faith.” EMI Catalogue P’ship v. Hill, Holliday,
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`Connors, Cosmopulos Inc. and Spalding Sports Worldwide, 228 F.3d 56, 64 (2d Cir. 2000).
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`With regard to the first prong of the fair use defense, the Court finds that Plaintiffs have
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`alleged facts plausibly suggesting that Defendants use the Tree Marks (or “tree designs which
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`are identical to, virtually indistinguishable from and/or confusingly similar to Plaintiffs’
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`distinctive Tree . . . Marks”) in commerce as trademarks. Moreover, after examining the images
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`sold on Defendants’ website containing the Tree Marks, the Court finds that Plaintiffs have
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`alleged facts plausibly suggesting that Defendants use Plaintiffs’ Tree Marks in the pictures in
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`Case 7:09-cv-01252-GTS-DEP Document 43 Filed 09/28/11 Page 13 of 23
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`which the Tree Marks are depicted to sell the pictures. In other words, the Court finds that
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`Plaintiffs have sufficiently alleged that Defendants use Plaintiffs’ Tree Marks in commerce as
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`trademarks. See 15 U.S.C. § 1127 (defining “use in commerce” to occur when a mark is “placed
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`in any manner on the goods” or “used or displayed in the sale or advertising of services,” and
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`similarly defining the terms “trademark” and “service mark” as “any word, name, symbol, or
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`device, or any combination thereof” that is “used by a person . . . to identify and distinguish his
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`or her goods [or services]”).
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`For example, one of the images on Defendants’ website is of a Tree Mark bearing the
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`words “Car-Freshner” and “‘Royal Pine,’” with its shadow. (Dkt. No. 28, Attach. 1, at 4.) A
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`second image depicts a red Tree Mark bearing the words “Fresh Scent,” resting in green grass, at
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`the forefront of an open field, with the out-of-focus background consisting of grass and trees.
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`(Id. at 2.) A third image depicts a Tree Mark hanging from the armpit of a man who has his shirt
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`unbuttoned, plausibly suggesting that it is an odor fighter (as is Plaintiffs’ product). (Id. at 3.)
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`A fourth images depicts approximately ten Tree Marks hanging from the lid of a garbage can,
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`again plausibly suggesting that it is an odor fighter. (Id. at 2.) Four more images depict a Tree
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`Mark hanging from the rear view mirror of an automobile (as Plaintiffs’ product often hangs).
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`(Id. at 2-4.)14
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`As a result, the Court denies Defendants’ motion to dismiss Plaintiffs’ claims based on
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`Defendants’ argument that their “use” of Plaintiffs’ Tree Marks constitutes fair use.
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`At this stage of the proceeding, the Court declines to apply the Rogers balancing
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`test, set forth in Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989), which requires courts to
`construe the Lanham Act “to apply to artistic works only where the public interest in avoiding
`consumer confusion outweighs the public interest in free expression.” See World Championship
`Wrestling v. Titan Sports, Inc., 46 F. Supp.2d 118, 123 (D. Conn. 1999) (declining to apply the
`Rogers balancing test, noting that the test “ involves factual and legal issues which cannot be
`disposed of at [the pleading] stage [of] the case”); cf. Pirone v. MacMillan, Inc., 894 F.2d 579,
`584 (2d Cir. 1990) (noting that “[n]ormally, the likelihood of confusion is a factual question”
`[citing Am. Int'l Group, Inc. v. London Am. Int'l Corp., 664 F.2d 348, 351 (2d Cir. 1981)]).
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`Case 7:09-cv-01252-GTS-DEP Document 43 Filed 09/28/11 Page 14 of 23
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`B.
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`Whether Defendants’ “Use” of Plaintiffs’ Tree Marks Constitutes
`Nominative Fair Use
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`As stated above in Part I.B. of this Decision and Order, Defendants seek the dismissal of
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`Plaintiffs’ claims based on Defendants’ argument that, even assuming that Plaintiffs have alleged
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`facts plausibly suggesting that Defendants have “used” the Tree Marks as trademarks,
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`Defendants are protected from liability as a matter of law by the “nominative fair use” doctrine
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`essentially because Defendants are not capitalizing on consumer confusion (through their
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`incidental and purely descriptive use of the Tree Marks).
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`As an initial matter, the Second Circuit has never expressly adopted the doctrine of
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`nominative fair use as a viable defense in a trademark infringement action. See Tiffany (NJ) Inc.
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`v. eBay Inc., 600 F.3d 93, 102 (2d Cir. 2010) (noting that “[w]e have referred to the doctrine,
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`albeit without adopting or rejecting it,” and declining to “address the viability of the doctrine [of
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`nominative fair use] to resolve Tiffany's claim”). However, a number of district courts within
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`the Second Circuit have applied this doctrine when considering claims of trademark
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`infringement,15 and in fact, on at least one occasion, the Second Circuit has implicitly affirmed
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`the application.16 As a result, the Court assumes, for purposes of deciding the instant motion,
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`that the doctrine is applicable.
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`See Audi AG v. Shokan Coachworks, Inc., 592 F. Supp.2d 246, 269-270
`15
`(N.D.N.Y. 2008) (McCurn, J.) (acknowledging application of nominative fair use doctrine
`among numerous district courts within the Second Circuit) (collecting cases).
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`See Chambers v. Time Warner, Inc., 282 F.3d 147, 156 (2d Cir. 2002)
`16
`(acknowledging district court’s application of “nominative” fair use doctrine as grounds for
`dismissal, noting that, “[w]hile th[e] example [in the Amended Complaint] may constitute a fair
`use, the Amended Complaint's allegations extend beyond this one instance of allegedly
`infringing conduct. . . . [and therefore] the District Court erred by dismissing the claim on the
`basis of the listed example without considering the other conduct raised by plaintiffs'
`allegations”).
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`Case 7:09-cv-01252-GTS-DEP Document 43 Filed 09/28/11 Page 15 of 23
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`As the Second Circuit noted in Tiffany (NJ) Inc., “the doctrine of nominative fair use
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`allows ‘[a] defendant [to] use a plaintiff's trademark to identify the plaintiff's goods so long as
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`there is no likelihood of confusion about the source of [the] defendant's product or the
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`mark-holder's sponsorship or affiliation.’” Tiffany (NJ) Inc., 600 F.3d at102 (quoting Merck &
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`Co. v. Mediplan Health Consulting, Inc., 425 F. Supp.2d 402, 413 [S.D.N.Y. 2006]); see also
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`Playboy Enters., Inc. v. Welles, 279 F.3d 796, 806 (9th Cir. 2002) (holding that an assertion of
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`nominative fair use gives rise to a modified likelihood of confusion analysis). “To fall within the
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`protection, according to the Ninth Circuit Court who carved out the doctrine,
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`[f]irst, the