Case 1:15-cv-10167-RA Document 62 Filed 01/24/17 Page 1 of 19
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`USDC-SDNY
`DOCUMENT
`ELECTRO NI CALLY FILED
`DOC#:
`DATE FILED: 1/24/2017
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`No. 15-CV-10167 (RA)
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`ORDER & OPINION
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`SHOSHANA ROBERTS,
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`Plaintiff,
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`v.
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`ROB BLISS, ROB BLISS CREATIVE, LLC,
`and TGI FRIDAY'S INC.,
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`Defendants.
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`RONNIE ABRAMS, United States District Judge:
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`Plaintiff Shoshana Roberts, an actress, starred in a video highlighting street harassment of
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`women that went "viral" and has been seen over 41 million times on the internet. Without her
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`knowledge or consent, the video was licensed by the maker of the video, Defendants Rob Bliss
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`and Rob Bliss Creative, LLC (collectively "Bliss"), to an advertisement agency, which used it to
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`create an advertisement for Defendant TGI Friday's Inc. to promote its appetizers (hereinafter the
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`"advertisement" or "ad"). The ad superimposes graphic images of life-sized appetizers over
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`Plaintiff's entire image in the video. The appetizers are seen moving through the streets of New
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`York City, with men shouting things like "Nice!" and "How you doing?" at the food, as they did
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`to Roberts in the original video. The ads' message: "Nobody likes a catcaller ... But who can
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`blame someone for #Appcalling?"
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`Roberts, "humiliate[ ed]" by the ad that "belittled women and the very cause which Plaintiff
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`was promoting," Am. Compl. if 6, brings this action against Defendants for misleadingly implying
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`1
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`that she endorsed the TGI Friday's advertisement and its appetizers in violation of Section 43(a)
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`of the Lanham Act, along with various state law claims. Defendants have moved to dismiss the
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`Amended Complaint for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6).
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`The Court agrees with Defendants that Plaintiff has failed to state a claim for false endorsement
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`under the Lanham Act because she has not plausibly alleged that the advertisement contains a
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`misleading representation that she endorsed a product, or that the ad is likely to cause consumer
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`confusion as to her sponsorship of it. Because the Court dismisses all claims over which it has
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`original jurisdiction, it declines to exercise supplemental jurisdiction over Plaintiffs remaining
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`state law claims.
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`I.
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`BACKGROUND 1
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`Roberts is a professional actress residing in Queens, New York. Am. Compl. ,-r 8. She is
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`the subject of"lO Hours Walking in NYC as a Woman," a video that "went viral" on the internet
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`in October 2014. Am. Compl. ,-r 22 (citing Rob Bliss Creative, JO Hours of Walking in NYC as a
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`Woman, YouTube
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`(Oct 28, 2014), https://www.youtube.com/watch?v=blXGPvbWnOA)
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`(hereinafter "10 Hours")). Roberts became involved in the project by responding to a solicitation
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`posted by Bliss on Craigslist searching for an actress to appear in a public service announcement
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`regarding street harassment of women. Am. Com pl. ,-r 17.
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`10 Hours follows Roberts as she walks the New York City streets in black jeans and a black
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`crew neck t-shirt. Am. Compl. ,-i 17, 21. Bliss used a hidden camera to film the comments, or
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`"catcalls," directed at Roberts by strangers on the street between September 29 and October 1,
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`1 The Court draws the following facts from the Amended Complaint, Dkt. 34, all of which it assumes to be
`true for purposes of this motion. See, e.g., Fahs Constr. Grp., Inc. v. Gray, 725 F.3d 289, 290 (2d Cir. 2013).
`2
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`2014. Arn. Cornpl. if 21. Roberts asserts that she "actively assisted Bliss in deciding how and
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`where to walk, and how to film without the camera being noticed. Plaintiff at all times used her
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`skills as an actress to create a realistic impression of an ordinary woman walking through the
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`streets of New York." Arn. Cornpl. if 20. After the filming, Bliss returned to his home in Michigan,
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`and with a friend, edited the footage to create a one minute and fifty-six second video. Arn. Cornpl.
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`if 9, 22. Bliss posted 10 Hours on YouTube on or about October 27, 2014. Arn. Cornpl. if 22. 10
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`Hours ends with a solicitation for contributions to Hollaback!,2 which Roberts alleges she was
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`unaware would be included. Arn. Cornpl. if 22. The video also "prominently features" Bliss' name
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`and third-party advertising placed by YouTube, for which Bliss receives 30% of the advertising
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`revenue. Arn. Cornpl. if 31.
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`The video has been viewed over 41 million times on Bliss' Y ouTube channel alone, and
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`according to Roberts it made her "a public figure and celebrity virtually overnight." Arn. Cornpl.
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`if 30. "Plaintiff was inundated with requests for comment by the mainstream media. Plaintiff
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`quickly became widely known throughout the United States and world because of the Video."
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`Arn. Cornpl. if 24. Plaintiff participated in interviews even though she received death and rape
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`threats. Arn. Cornpl. if 29.
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`Roberts alleges that she was falsely told that "nobody was being paid" for their work on
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`the video and that she was "induced" to "participate in the project with no guaranteed
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`compensation." Arn. Corn pl. if 1, 19. Plaintiff also alleges that Bliss told her that "he hoped the
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`2 Hollaback! is a not-for-profit organization involved in efforts to fight street harassment. Am. Compl. iJ 28.
`Claims against Hollaback! Inc., which was originally a defendant in this action, have been voluntarily dismissed.
`Dkt. 58.
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`video would 'make it big' on the Internet and that, if it did, he would be able to compensate her."
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`Am. Com pl. iJ 19. Bliss did not tell Plaintiff that he intended to use her image on his website to
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`advertise his business or to sell or license the video for commercial purposes. Am. Compl. iJ 19.
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`On November 19, 2014, Plaintiff sent an e-mail to Bliss noting that "we didn't have a written
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`contract, but I do remember you saying that you hoped this video would make it big and that you
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`could pay me." Am. Compl. iJ 26. Roberts asked Bliss to "use [his] judgment to determine what
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`[he] thought was fair" compensation. Am. Compl. iJ 26. Bliss refused to pay Plaintiff anything
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`and responded that only he should "get the revenue." Am. Compl. iJ 26. Hollaback! sent Roberts
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`a check for $200 for a "PSA" on November 26, 2014. Am. Compl. iJ 27. Roberts had not requested
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`the check and did not intend to accept it as full compensation. Am. Compl. iJ 27.
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`In February 2015, without Roberts' knowledge, Bliss licensed 10 Hours to Made
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`Movement, an advertising agency based in Colorado, which used the video to create an
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`advertisement for TG I Friday's, a New York corporation with its principal place of business in
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`Texas. Am. Compl. iii! 12, 13, 33. The license agreement "represented that [Bliss] had the 'sole
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`right and authority' to grant all rights to the Video, including the right to use all images in it." Am.
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`Compl. iii! 33, 34. Made Movement created a fifteen-second version and a thirty-second version
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`of the advertisement. See Am. Compl. iJ 34 (incorporating by reference Laura Stampler, People
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`Are Not Happy About TGI Friday's Viral Catcalling Parody, Time (March 13, 2015),
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`http://time.com/3744418/tgi-fridays-catcalling-parody/); Deel. of Craig B. Whitney, Ex. A. The
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`advertisement uses parts of the 10 Hours video, including background images of New York City
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`streets, and the catcalls that were directed at Roberts. The ad covers Plaintiffs image with digital
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`renditions of oversized Friday's appetizers, including mozzarella sticks, potato skins, and pot
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`stickers.
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`A few screen shots of stills from the videos show the comparison between I 0 hours and
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`the advertisement:
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`5
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`Case 1:15-cv-10167-RA Document 62 Filed 01/24/17 Page 6 of 19
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`you this morning?
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`»»u;a~o-m»«»...~—»—‘..a.»».s...>.»w».»...-<.-a
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`»»-,m...».»»«»»»m«.
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`Case 1:15-cv-10167-RA Document 62 Filed 01/24/17 Page 7 of 19
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`Plaintiff alleges that although she "was happy to promote the original video and its
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`message, all of that changed when she suddenly learned that Bliss, Made Movement and TGI
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`Friday's had modified her image by superimposing French fries and mozzarella sticks over her
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`face and using her creation to advertise appetizers in a way that belittled women and the very cause
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`which Plaintiff was promoting." Am. Compl. if 32. Roberts further alleges that "a very substantial
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`number of consumers were led to believe or understood that plaintiff had authorized TGI Friday's
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`to use her persona and creative content to advertise their appetizers, that she approved of the
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`message contained in the ads and that she implicitly endorsed TGI Friday's appetizers." Am.
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`Compl. if 35.
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`II.
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`STANDARD OF REVIEW
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`To survive a motion to dismiss, a plaintiff must plead "factual content [that] allows the
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`court to draw the reasonable inference that the defendant is liable for the misconduct alleged."
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`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). "[O]nly a complaint that states a plausible claim for
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`relief survives a motion to dismiss." Id. at 679. Although a Court must accept a complaint's
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`allegations as true, "[a] pleading that offers 'labels and conclusions' or 'a formulaic recitation of
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`the elements of a cause of action will not do."' Id. at 678 (quoting Bell At!. Corp. v. Twombly, 550
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`U.S. 544, 545 (2007)).
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`"[T]he complaint is deemed to include any written instrument attached to it as an exhibit
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`or any statements or documents incorporated in it by reference." Int 'l Audiotext Network, Inc. v.
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`Am. Tel. & Tel. Co., 62 F.3d 69, 72 (2d Cir. 1995) (quotation marks omitted). "If a document
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`relied on in the complaint contradicts allegations in the complaint, the document, not the
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`allegations, control, and the court need not accept the allegations in the complaint as true."
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`Poindexter v. EM! Record Grp. Inc., No. 11 CIV. 559, 2012 WL 1027639, at *2 (S.D.N.Y. Mar.
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`27, 2012); see Int'! Audiotext Network, Inc, 62 F.3d at 72. The Complaint incorporates 10 Hours,
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`Am Compl. if 22, the advertisement, Am. Compl. if 34, and the video license agreement between
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`Bliss, Made Movement, and TGI Friday's, Am. Compl. Ex. A, and the Court considers them on
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`this motion.
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`III.
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`DISCUSSION
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`A. Lanham Act Claim: Section 43(a)
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`Roberts alleges that "TGI Friday's advertisements depicted Plaintiffs persona and
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`conveyed the false impression to a substantial group of viewers thereof that she had participated
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`in, authorized or endorsed the advertisements. Plaintiff did not license her identity and persona
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`for the use in the TGI Friday's advertisements and would never have done so as she disagrees with
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`their objectionable content." Am. Compl. if 46. Plaintiff's Lanham Act claim fails because neither
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`she, nor any representation of her, her image, or her persona, appear in the TGI Friday's
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`advertisement, and the ad contains no false or misleading statement suggesting that she endorsed
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`TGI Friday's or its appetizers. Roberts' claim also fails because she does not plausibly allege that
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`consumers would be likely to be confused as to her sponsorship; the advertisement is a clear parody
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`of 10 Hours, and in no way suggests that Roberts was championing the product used to mock the
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`video for its own commercial benefit.
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`The Lanham Act prohibits:
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`uses in commerce [of] any word, term, name, symbol, or device, or any combination
`thereof, or any false designation of origin, false or misleading description of fact, or false
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`or misleading representation of fact, which-
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`(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,
`connection, or association of such person with another person, or as to the origin,
`sponsorship, or approval of his or her goods, services, or commercial activities by another
`person, or
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`(B) in commercial advertising or promotion, misrepresents the nature, characteristics,
`qualities, or geographic origin of his or her or another person's goods, services, or
`commercial activities[.]
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`15 U.S.C. § 1125(a)(l).
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`"The elements of a false endorsement claim under the Lanham Act are that the defendant,
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`(1) in commerce, (2) made a false or misleading representation of fact (3) in connection with goods
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`or services (4) that is likely to cause consumer confusion as to the origin, sponsorship, or approval
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`of the goods or services." Burck v. Mars, Inc., 571 F. Supp. 2d 446, 455 (S.D.N.Y. 2008). The
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`false or misleading representation of fact, in the context of a false endorsement claim, may involve
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`the misleading implication that a celebrity or public figure endorses a product, when she does not.
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`See Beastie Boys v. Monster Energy Co., 66 F. Supp. 3d 424, 448 (S.D.N.Y. 2014); Allen v. Nat'!
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`Video, Inc., 610 F. Supp. 612, 626 (S.D.N.Y. 1985) ("The Act's prohibitions ... have been held
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`to apply to misleading statements that a product or service has been endorsed by a public figure.").
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`An entity can make the false or misleading representation that a celebrity endorses a product by
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`using that celebrity's image or persona. See e.g., Bruce Lee Enterprises, LLC v. A. V.E.L.A., Inc.,
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`No. 10 CIV. 2333, 2011WL1327137, at *4 (S.D.N.Y. Mar. 31, 2011) ("Courts have recognized
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`false endorsement claims under§ 43(a) of the Lanham Act where a celebrity's image or persona
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`is used in association with a product so as to imply that the celebrity endorses the product."
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`(quotation marks omitted)).
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`1. False or Misleading Representation of Fact
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`Roberts claims that her image or persona is used in the advertisement to falsely imply that
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`she endorsed TGI Friday's and its appetizers. Although the ad may well call to a viewer's mind
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`the 10 Hours video, and perhaps even Roberts because of her role in it, the ad does not use Roberts'
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`image or persona, nor suggest in any way that Roberts herself endorsed the product advertised.
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`Plaintiff describes the video as including "her identifiable image (albeit masked)," Pl.' s
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`Opp. to Made Movement & TGI Friday's at 10, her "moving image," id., and her "in a costume,"
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`id. at 5. Those allegations are belied by the advertisement itself, which is incorporated by reference
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`into the Complaint, and the Court does not accept them as true. See Poindexter, 2012 WL
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`1027639, at *2. The Court finds that Plaintiffs image is not used, as the superimposed renderings
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`of appetizers cover her entire body. 3
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`Whether Plaintiff plausibly alleges that her "persona" is used by the advertisement is a
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`somewhat more complicated question. A "persona" includes more than an individual's image.
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`"Persona" is defined as "the aspect of a person's character that is displayed to or perceived by
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`others."
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`OED
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`Online,
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`Oxford
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`University
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`Press
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`(Dec.
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`2016),
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`http://www.oed.com/view/Entry/141478?redirectedFrom=persona;
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`see
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`also Merriam-
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`Webster.com, Merriam-Webster
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`(last visited
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`Jan.
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`19, 2017), https://www.merriam-
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`3 For the first time, Plaintiffs counsel alleges in the opposition papers that he has personal knowledge that
`in other versions of the advertisement, Roberts' "feet and hands were actually visible," Pl.'s Opp. to Made
`Movement & TGI Friday's at 6 n.2. Even ifthe Court were to accept this fact as true, it would not change the
`analysis. Plaintiffs request for leave to amend the complaint to allege this fact is thus denied, as the proposed
`amendment would be futile. Health-Chem Corp. v. Baker, 915 F.2d 805, 810 (2d Cir. 1990).
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`webster.com/dictionary/persona (defining "persona" as "the personality that a person (as an actor
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`or politician) projects in public"). Courts have held that "persona" includes an artist's distinctive
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`voice and style, see Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1111 (9th Cir. 1992), and an
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`individual's style and stance in the context that made her famous, White v. Samsung Elecs. Am.,
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`Inc., 971F.2d1395, 1396, 1401 (9th Cir. 1992), as amended (Aug. 19, 1992). But see Oliveira v.
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`Frito-Lay, Inc., 251 F.3d 56, 62 (2d Cir. 2001) ("The use of [plaintiffs] recorded song has not
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`taken her persona.").
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`The use of a representation of a celebrity's image or persona, even if the celebrity herself
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`is not captured, may be enough to state a claim because "even if the public does not believe that
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`plaintiff actually appeared ... it may be led to believe by the intentional reference to plaintiff that
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`he is somehow involved in or approves of their product. This broader standard is justified since
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`the Lanham Act seeks to protect not just plaintiff's property interest in his face, but the public's
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`interest in avoiding deception." Allen, 610 F. Supp. at 628-29. "[T]here are instances in which
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`courts have protected the 'persona' of an artist against false implication of endorsement generally
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`resulting from use oflook-alikes or sound-alikes." Oliveira, 251 F.3d at 62. For example, in White
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`v. Samsung Electronics America, Inc., the Ninth Circuit held that a robot, dressed in a wig, gown,
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`and jewelry designed to resemble Vanna White's hair and dress, which was posed in a stance for
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`which White is famous, next to a game board recognizable as the Wheel of Fortune game show
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`set, stated a claim for false endorsement. See White, 971 F.2d at 1396, 1401; see also Burck, 571
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`F. Supp. 2d at 456 (finding it was plausibly alleged that a blue cartoon M & M dressed like
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`plaintiff's street performance character, The Naked Cowboy, implied, falsely, that The Naked
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`Cowboy endorsed the M & M product.).
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`It may also be that the use of an individual's distinctive movements replicated in the context
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`that made her famous could form the basis of a false endorsement claim, as distinctive movements,
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`such as Michael Jackson's moonwalk, like a distinctive voice, may convey an individual's persona.
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`Cf Pesina v. Midway Mfg. Co., 948 F. Supp. 40, 41--42 (N.D. Ill. 1996) (granting summary
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`judgment to game manufacturers who used videotape of the movements of plaintiff martial artist
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`to create game character because his movements were extensively altered). But Roberts has not
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`stated such a claim because she does not plausibly allege that her movements are so distinctive
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`that she is identified by them.
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`Indeed, the 10 Hours video appears designed to highlight the
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`unsolicited attention received not by any one woman in particular but by women generally.
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`Nor does the video contain any other suggestion that Roberts endorsed the ad. Because of
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`the superimposition of the giant appetizers, Roberts is not pictured or represented in the ad at all.
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`Whether or not the ad evokes Roberts in some way, it is insufficient to state a Lanham Act claim;
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`it is simply not plausible that an advertisement that does not contain even a reference to an
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`identifiable characteristic of Roberts nonetheless conveys that she was "somehow involved in or
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`approve[d] of' it. Allen, 610 F. Supp. at 629.
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`To the extent Plaintiff relies on an allegation that she is so associated with her
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`"performance" in 10 Hours, which she "helped to create," Pl.'s Opp. to Made Movement & TGI
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`Friday's at 10, that the ad's use of the video itself falsely implies that she endorsed the product in
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`the ad, her claim fails for the additional reason that the Second Circuit has rejected the contention
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`that a "signature performance" can state a Lanham Act claim. See Oliveira, 251 F.3d at 62. In
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`Oliveira v. Frito-Lay, Inc., the Court explained that a "signature performance" is that which a
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`"widespread audience associates with the performing artist," and observed that "[ m ]any famous
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`artists have recorded such signature performances that their audiences identify with the
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`performer." Id. But the Circuit there declined to extend trademark protection to artists for their
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`signature performances, concluding that it "would be profoundly disruptive to commerce" because
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`it would "upset[] reasonable commercial expectations" of entities that had paid "bona fide license
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`fees to all known holders of rights." Id. at 63; see EM! Catalogue P'ship v. Hill, Holliday,
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`Connors, Cosmopulos Inc., 228 F.3d 56, 63 (2d Cir. 2000) (Trademark law "does not protect the
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`content of a creative work of artistic expression as a trademark for itself. Copyright law protects
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`the artist's right in an abstract design or other creative work.").
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`In Oliveira, defendants paid more than $200,000 to purchase a license to use the master
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`recording of Oliveira's (who is professionally known as Astrud Gilberto) world-renowned 1964
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`recording of "The Girl from Ipanema," for which she won a Grammy award. 251 F.3d at 58-59.
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`Oliveira argued that "she has become known as The Girl from Ipanema and is identified by the
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`public with the 1964 Recording," so the use of the song in an advertisement for Baked Lays chips
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`falsely implied that she endorsed that product. Id. at 59. As noted above, the Circuit rejected that
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`claim. Like Oliveira, Plaintiff here argues that "many viewers of the ad" would identify her from
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`the performance for which she is best known-the 10 Hours video. See Pl.'s Opp. to Made
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`Movement & TGI Friday's at 10-11. In addition, like the defendant in Oliveira, Made Movement
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`and TGI Friday's purchased a license from Bliss to use the 10 Hours video. See Am. Compl. Ex.
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`A. To the extent Roberts is thus arguing that her endorsement is falsely implied by the use of the
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`10 Hours video in the ad, she cannot state such a claim under the Lanham Act. See Oliveira, 25 l
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`F.3d at 62.
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`2. Likelihood of Consumer Confusion
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`Roberts' Lanham Act claim also fails because she does not plausibly allege that consumers
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`are likely to be confused or misled into thinking that she endorsed TGI Friday's or its appetizers.
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`"Normally, the likelihood of confusion is a factual question, centering on the probable reactions
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`of prospective purchasers of the parties' goods." Pirone v. MacMillan, Inc., 894 F.2d 579, 584
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`(2d Cir. 1990). But where Plaintiff "cannot possibly show confusion as to source or sponsorship"
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`claims can be dismissed as a matter of law.
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`Id. at 585 (holding that "an ordinarily prudent
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`purchaser would have no difficulty discerning that [the use of Babe Ruth's photographs in a
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`calendar] are merely the subject matter of the calendar and do not in any way indicate sponsorship.
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`No reasonable jury could find likelihood of confusion."); see also Universal City Studios, Inc. v.
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`Nintendo Co., 746 F.2d 112, 116 (2d Cir. 1984) ("[C]ourts retain an important authority to monitor
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`the outer limits of substantial similarity within which a jury is permitted to make the factual
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`determination whether there is a likelihood of confusion." (quotation marks omitted)). "In the
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`context of a motion to dismiss, courts have disposed of trademark claims where simply looking at
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`the work itself, and the context in which it appears, demonstrates how implausible it is that a viewer
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`will be confused into believing that the plaintiff endorsed the defendant's work." Louis Vuitton
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`Malletier S.A. v. Warner Bros. Entm 't Inc., 868 F. Supp. 2d 172, 183 (S.D.N.Y. 2012); see also
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`Gottlieb Dev. LLC v. Paramount Pictures Corp., 590 F. Supp. 2d 625, 635 (S.D.N.Y. 2008)
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`(granting motion to dismiss because it is "simply not plausible" that the appearance of plaintiffs
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`"trademark in the Film would confuse ordinarily prudent consumers as to the sponsorship or
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`affiliation of its pinball machines").
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`"That a trademark is being parodied may be 'clear enough to result in no confusion under
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`the statutory likelihood of confusion analysis."' Burck, 571 F. Supp. 2d at 455 (quoting Tommy
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`Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 416 (S.D.N.Y.2002)). In the
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`context of trademark law, "'parody' is a way of arguing that there will be no trademark
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`infringement because there will be no likelihood of confusion. The parodist argues that the
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`ordinary viewer will not be deceived or confused: she will see that the defendant's use is just
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`making fun of the plaintiff's trademark or its owner." 6 McCarthy on Trademarks and Unfair
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`Competition§ 31:153 (4th ed. Dec. 2016) (hereinafter McCarthy). When a parody is clear, "the
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`parodist is not trading on the good will of the trademark owner to market its own goods; the
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`parodist's sole purpose for using the mark is the parody itself, and precisely for that reason, the
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`risk of consumer confusion is at its lowest." Tommy Hilfiger Licensing, Inc., 221 F. Supp. 2d at
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`414 (granting summary judgment to maker of parody pet cologne "Timmy Holedigger" because
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`the "obvious parody or pun, readily so perceived, [is] unlikely to cause confusion among
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`consumers"). "When satire or parody is taken to a certain degree therefore, it becomes clear that
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`the owner of the trademark was not involved in the manufacture or sponsorship of the defendant's
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`product." Schieffelin & Co. v. Jack Co. of Boca, 725 F. Supp. 1314, 1324 (S.D.N.Y. 1989); see
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`also Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 505 (2d Cir. 1996) (holding
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`that the Muppet puppet "Spa' am" was an obvious parody of the luncheon meat SPAM and thus
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`not likely to cause consumer confusion).
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`Case 1:15-cv-10167-RA Document 62 Filed 01/24/17 Page 16 of 19
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`Although a parody may necessarily call to mind the original work, that is insufficient to
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`state a Lanham Act claim because "'[c]onfusion' and '[c]all to [m]ind' [a]re [d]ifferent [m]ental
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`[s]tates." McCarthy§ 23:9; see Cliffe Notes, Inc. v. Bantam Doubleday Dell Pub. Grp., Inc., 886
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`F.2d 490, 494 (2d Cir. 1989) ("A parody must convey two simultaneous-and contradictory(cid:173)
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`messages: that it is the original, but also that it is not the original and is instead a parody.");
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`Application of Ferrero, 479 F.2d 1395, 1397 (C.C.P.A. 1973) ("The fact that one mark may bring
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`another mark to mind does not in itself establish likelihood of confusion as to source. The very
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`fact of calling to mind may indicate that the mind is distinguishing, rather than being confused by,
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`two marks." (citation omitted)). In NY Stock Exchange, Inc. v. NY, NY Hotel LLC, for example,
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`the Second Circuit affirmed the granting of summary judgment for defendants where "[t]he
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`Casino's Internet web site and brochures exhibit versions ofNYSE's marks that are so obviously
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`modified that any viewer would understand that the Casino was engaged in a parody or humorous
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`play on words." 293 F.3d 550, 555 (2d Cir. 2002). In contrast, in Schieffelin & Co. v. Jack Co. of
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`Boca, the court concluded that consumer confusion was plausibly alleged because defendant's
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`product, "Dom Popignon" popcorn, "is not so outlandish as to distinguish itself from plaintiffs
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`[Dom Perignon] champagne" where popcorn was packaged in a champagne bottle of similar
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`proportions, with a label of identical shape and color, to Dom Perignon. 725 F. Supp. at 1316,
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`1324.
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`Plaintiff here has not plausibly alleged that the advertisement creates consumer confusion
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`because any viewer would understand the ad to be engaged in a parody of 10 Hours. While the
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`advertisement does "call to mind" 10 Hours, the supplantation of Roberts with large gimmicky
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`Case 1:15-cv-10167-RA Document 62 Filed 01/24/17 Page 17 of 19
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`images of appetizers is an "obvious[] modification" of, NY Stock Exch., Inc., 293 F.3d at 555,
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`and a "conscious departure" from, Louis Vuitton Malletier, SA. v. My Other Bag, Inc., 2016 WL
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`7436489, at *1 (2d Cir. Dec. 22, 2016), the original work. This modification, moreover, is
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`outlandish, not subtle. See Burnett v. Twentieth Century Fox Film Corp., 491 F. Supp. 2d 962,
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`972 (C.D. Cal. 2007) ("[T]he more distasteful and bizarre the parody, the less likely the public is
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`to mistakenly think that the trademark owner has sponsored or approved it."). The ad replaces
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`Roberts-the object of the harassing men's attention in the 10 Hours video-with the appetizers.
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`They are now the subject of the men's desire. That, together with the play on words between
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`"appcalling" and "catcalling," is what makes it a parody. And because the parody is obvious, the
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`"risk of consumer confusion is at its lowest." Tommy Hilfiger Licensing, Inc., 221 F. Supp. 2d at
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`414. The ad uses the fact that it is both similar to 10 Hours in some respects and completely
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`different from it in others, in an apparent attempt-successful or not-at humor. See McCarthy
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`§ 31: 153 ("If the difference in wording or appearance of the accused ... together with the context
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`and overall setting is such as to convey to the ordinary viewer that this is a joke, not the real thing,
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`then confusion as to source, sponsorship, affiliation, or connection is unlikely."). That Roberts, of
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`course, looks nothing like the overblown images of walking food, and that an online video
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`designed to highlight a societal ill and a chain restaurant attempting to promote its appetizers
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`occupy distinct merchandising markets, reinforces the conclusion that it is implausible that a
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`viewer of the ad would be confused about whether Roberts endorsed it.
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`Courts in the Second Circuit are generally guided by the non-exclusive eight-factor
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`Polaroid test in determining whether there is a likelihood of confusion between marks. See
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`Case 1:15-cv-10167-RA Document 62 Filed 01/24/17 Page 18 of 19
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`Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961); see also NY Stock
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`Exch., Inc., 293 F.3d at 555. But even when applying the Polaroid factors, "a court should focus
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`on the ultimate question of whether consumers are likely to be confused." Nora Beverages, Inc.
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`v. Perrier Grp. of Am., Inc., 269 F.3d 114, 119 (2d Cir. 2001) (quotation marks omitted). For the
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`reasons stated above, the Court finds that it is implausible that a viewer would be confused as to
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`whether Roberts endorsed the ad, and it thus need not "slavishly recite the litany of all eight
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`Polaroid factors." Orient Exp. Trading Co. v. Federated Dep 't Stores, Inc., 842 F.2d 650, 654 (2d
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`Cir. 1988).4
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`B. State Law Claims
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`Plaintiff also brings claims under New York State law for breach of contract and covenant
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`of good faith and fair dealing, violation of NY Civil Rights Law Sections 50-51, violation of the
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`right of publicity, quantum meruit, and unjust enrichment. Am. Compl. 11-16. Because the only
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`federal law claim justifying federal jurisdiction is dismissed, the Court declines to exercise
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`supplemental jurisdiction over Plaintiffs state law claims at this early stage in the case, where
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`there has been no significant activity aside from the Court's consideration of the instant motions
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`4 Courts differ as to whether it is even appropriate to consider the Polaroid factors on a motions to dismiss.
`Compare E!iya, Inc. v. Kohl's Dep 't Stores, No. 06 CIV. 195, 2006 WL 2645196, at *3 n.2 (S.D.N.Y. Sept. 13, 2006)
`("[A ]n application of the so-called Polaroid factors on [a] motion to dismiss" will ordinarily "be inappropriate because
`it would involve premature factfinding," especially given that "[t]here is no requirement that a plaintiff address the
`Polaroid factors in its pleading"), with Cintas Corp. v. Unite Here, 355 F. App'x 508, 510 (2d Cir. 2009) (affirming
`district court's decision to grant motion to dismiss to defendant after considering the Polaroid factors because
`"plaintiffs' allegations were insufficient to assert a plausible claim that defendant's use of [Cintas's] mark is likely to
`cause confusion" (quotation marks omitted)), and de Vere Grp. GmbH v. Opinion Corp., 877 F. Supp. 2d 67, 69, 73
`(E.D.N.Y. 2012) (granting motion to dismiss after applying the Polaroid factors because "there is no likelihood that
`a consumer visiting PissedConsumer.com would mistakenly believe t