2002 U.S. Dist. LEXIS 17531,
*
SCHOLASTIC, INC., J.K. ROWLING,
and TIME WARNER ENTERTAINMENT COMPANY, L.P.,
Plaintiffs/Counterclaim Defendants,
-against- NANCY STOUFFER,
Defendant/Counterclaim and
Crossclaim Plaintiff, -against- ABC CORPORATIONS
(1 through 99), Crossclaim
Defendants.
UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
September 17, 2002, Decided
September 17, 2002, Filed
DISPOSITION:
Plaintiffs' motion for summary judgment granted.
Stouffer's counterclaims and
crossclaims dismissed with prejudice.
Plaintiffs' motion for sanctions
granted in amount of $ 50,000.
SCHWARTZ, Allen G., District
Judge.
This action involves intellectual
property rights related to the Harry
Potter series of books, which
were written, published, and marketed by
plaintiffs/counterclaim defendants
("plaintiffs"). Plaintiffs
Scholastic, Inc. ("Scholastic"),
J.K. Rowling ("Rowling"), and Time Warner
Entertainment Company, L.P.
("TWE") seek (i) a declaratory judgment that
they have not infringed and
are not infringing any of defendant/counterclaim
plaintiff Nancy Stouffer's
("Stouffer's") copyrights or trademarks; and (ii)
injunctive relief barring Stouffer
from continuing to claim that plaintiffs
have violated her copyrights
or trademarks. Stouffer asserts counterclaims
and crossclaims (referred to
herein as "counterclaims") for federal and
state trademark infringement,
false designation of origin, unfair
competition, dilution, and
copyright infringement.
Before the Court are plaintiffs'
motions for summary judgment pursuant to
Fed.R.Civ.P. 56 and for sanctions.
For the reasons set forth below, the
motions for summary judgment
and for sanctions are granted.
I. Background
Unless otherwise noted, the
following facts are undisputed.
A. Plaintiffs/Counterclaim
Defendants and the Harry Potter Series
Scholastic is a New York corporation
with its principal place of business in
New York; Rowling is an individual
residing in Edinburgh, Scotland; and TWE
is a Delaware limited partnership with its principal place of
business in New York. (Complaint
PP 2-4). Rowling is the author of the four
books in the Harry Potter series
and is the owner of all copyrights,
trademarks, and service marks
associated with the series. (Id. PP 12-14; see
also Plaintiffs' Statement
Pursuant to Local Rule 56.1 ("Pl. 56.1") P 1.)
Scholastic is the U.S. publisher
and distributor of the Harry Potter books.
(Complaint PP 11-12). TWE owns
the film rights to at least two of the books
in the series, and also owns
trademarks related to its Harry Potter film and
merchandising projects. (Id.
P 15). n1
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n1 Crossclaim defendants ABC
Corporations (1 through 99) are as yet unnamed
corporations which have contracted
with plaintiffs to produce and distribute
merchandise related to the
Harry Potter books and films.
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The Harry Potter books tell
the story of a young orphan who discovers that
he has magical powers and who
attends a school for wizards called "Hogwarts
School of Witchcraft and Wizardry."
(Pl 56.1 PP 10, 17). Harry's
parents, James and Lily Potter,
also had magical powers but were killed when
Harry was a baby. (Id. P 15).
After his parents' death, Harry is dropped off
at the home of his aunt, uncle,
and cousin, all of whom are "muggles" --
i.e. ordinary human beings
who do not have magical powers. (Id. P 13). On
Harry's eleventh birthday,
a friendly giant named "Rubeus Hagrid," who is
the "Keeper of Keys and Grounds"
at Hogwarts, delivers a letter inviting
Harry to attend the Hogwarts
school. (Id. P 17). Hagrid also informs Harry
that his parents did not die
in a car crash, as Harry had been told, but
were in fact killed by an evil
wizard named "Lord Voldemort." (Id. P 18).
Hagrid takes Harry to "Diagon
Alley," a place with many magical shops where
Harry buys supplies for his
studies at Hogwarts. (Id. P 19). At one of the
shops, Hagrid buys Harry a
pet owl because owls are used by wizards to
deliver mail. (Id.; see also
Declaration of Jennifer D. Choe ("Choe Decl."),
Exh. 1 at 51-52, 61-62, 81,
87). Later, on his way to Hogwarts, Harry meets
other students from the school,
including a hapless boy named Neville
Longbottom. (Id. PP 19-21).
While at Hogwarts, Harry plays
"Quidditch," a game played
on flying broomsticks, and is also given his own
flying broomstick, the "Nimbus
2000," by one of his teachers.(Id. P 25).
Harry also stumbles across
an enchanted mirror called the "Mirror of
Erised." (Choe Decl., Exh.
1 at 207-09, 212-14). Those who look into this
mirror can see visions of their
deepest desires; for example, when Harry
looks at the mirror he sees
his deceased parents standing behind him. (Id.).
The first Harry Potter book,
Harry Potter and the Philosopher's Stone, was
published in the United Kingdom
by Bloomsbury Publishing PLC in 1997. (Pl.
56.1 P 6). In October 1998,
Scholastic published this book in the United
States under the title Harry
Potter and the Sorcerer's Stone. Since then
Scholastic has published three
other Harry Potter books: Harry Potter and
the Chamber of Secrets, published
in June 1999; Harry Potter and the
Prisoner of Azkaban, published
in October 1999; and Harry Potter and the
Goblet of Fire, published in
July 2000. (Id. P 26). All of the books in the
Harry Potter series have enjoyed
tremendous commercial success. (Id. P 29).
The covers of all four books
contain illustrations by Mary GrandPre, an
illustrator hired by Scholastic.
GrandPre also created illustrations for the
chapter headings in all four
books, as well as for the September 20, 1999
issue of Time magazine, which
contained a cover story about Harry Potter.
(See Declaration of Mary GrandPre
PP 2, 3). Though the four cover
illustrations differ, in all
of them Harry is depicted as a young boy with
dark brown or black hair and
black-framed eyeglasses with circular lenses.
(See Choe Decl., Exh. 1-4).
In all of the illustrations Harry has a scar in
the shape of a lightning bolt
on his forehead, and is engaged in some kind
of action (e.g. flying on a
broomstick, or raising his magic wand in the
air.) (Id.).
B. Defendant/Counterclaim Plaintiff
and Her Works (Prior to 1999)
In 1986, Stouffer, together
with a group of friends and family, founded Ande
Publishing Company ("Ande")
in Camp Hill, Pennsylvania. (Id. P 32). Ande
sought to publish a series
of children's books, collectively referred to as
The Baker's Dozen. (Id. P 33).
The series was to consist of ten titles, each
of which would be published in monthly installments; each installment
would include a story booklet,
an activity booklet, and a coloring booklet.
(Id. PP 34, 35). However, Ande
did not produce all of the booklets for its
planned series, and filed for
bankruptcy in September 1987. (Id. P 41).
While in operation the company
produced only one monthly installment
(consisting of a story booklet,
coloring booklet, and activity booklet) for
two of its titles, specifically
Rah and Myn and Memory Mountain ("Myn").
(Id. P 37, 38). It is undisputed
that Ande never sold any of its booklets in
the United States or elsewhere
(Id. P 43) and never sold any merchandise
related to the two booklets
it produced. (Id. P 44).
The Rah booklet tells the story
of the "Muggles," who are tiny, n2 hairless
creatures with elongated heads,
narrow limbs, and plump bellies, and who
"understand all languages,
even those of the animals." (See Choe Decl., Exh.
7). Muggles live in the ruins
of land called "Aura," which was ravaged by
war and has been in darkness
for many years. (Id.) Aura is rejuvenated,
however, when two human babies,
carried by a lily pad, arrive on its
shores. (Id.). The two babies
had been sent away from their own war-torn
home by their mother, and upon
their arrival sunlight returns to Aura and
the Muggles are given "the
gift of new life." (Id.; see also Second Amended
Answer and Counterclaims ("SAAC"),
Exh. 9).
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n2 The text of the Rah booklet
is unclear with respect to the size of the
Muggles. At one point in the
story the reader is told that "the average
height of a Muggle is about
18 inches tall. Some are smaller, but none are
ever taller than 20 inches."
(Choe Decl., Exh. 7). Later in the booklet,
however, Muggles are seen riding
on the backs of ants and bees, an activity
that would require the Muggles
to be significantly smaller than 18 inches.
Despite this lack of clarity
as to the Muggles' size, it is undisputed that
Muggles are significantly smaller
than human beings.
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To promote the Rah booklet,
Ande placed an advertisement in the March 1987
issue of Playthings magazine.
(See Choe Decl, Exh. 23). The
advertisement contained a drawing
of several Muggles and the accompanying
text also mentioned Muggles.
(Id.). Stouffer refers to this advertisement in
her counterclaims (within a
section entitled "Stouffer's Trademark Rights"),
and also attached a copy of
the advertisement as an exhibit to the
counterclaims. (SAAC P 83,
Exh. 12). However, in that copy, unlike in the
actual advertisement that appeared
in Playthings, the words "Muggle's TM
>From RAH TM" appear in
large type below the drawing of the Muggles.
>(SAAC,
Exh. 12). Plaintiffs assert
that the additional phrase was recently added by
Stouffer in order to bolster
her assertion that she holds trademark rights
in the term "Muggles." (See
Pl. Memorandum in Support of the Motion for
Sanctions at 15). Stouffer
concedes that the copy attached to her
counterclaims differs from
the version of the advertisement that actually
ran in Playthings. (See Def.
Memo in Opposition to the Motion for Sanctions
at 4). However, she maintains
that she attached the altered copy to her
counterclaims in the good faith
belief that "it accurately depicted the ad
as run in March of 1987." (Id.)
Stouffer does not offer a specific
explanation as to how the additional phrase appeared, but maintains
that Ande's art department
routinely modified copies of prior advertisements
for later use. Therefore, she
asserts that it is possible, if not likely,
that "Muggle's TM From RAH
TM" was "added by Ande's art department at some
time during the late 1980's."
(Id.)
In connection with this litigation,
Stouffer has produced booklets entitled
The Legend of Rah and the Muggles
that were allegedly created by Ande in the
1980's. (See Choe Decl., Exh.
17-19). However, plaintiffs have submitted
expert testimony indicating
that the words "The Legend of" and the words
"and the Muggles," which appear
on the title pages of these booklets, could
not have been printed prior
to 1991. (See Pl. 56.1 PP 67-71). According to
plaintiffs' expert witness--whose
testimony Stouffer does not rebut--the
printing technology employed
in the application of those words to the title
pages was invented in 1985;
however, because the specific printer used to
print those words was between
six and ten years old at the time the words
were printed, "The Legend of"
and "and the Muggles" could not have been
placed on the title pages before
1991 (i.e. four years after Ande's
bankrputcy). Stouffer concedes
that these additional words were added to the
title pages of the booklets
after the booklets were originally printed,
although she does not know
exactly when the words were added or by what
printing method. (Defendant's
Statement Pursuant to Local Rule 56.1 ("Def.
56.1") P 65, 67).
Ande's Myn booklet tells the
story of creatures called "Myn," who have very
large ears and live on a volcanic
island off the coast of Australia. (Choe
Decl., Exh. 10). The island
is known as "Circle Island" because of the
"ball-like projectiles" called
"REM" that are released from the island's
volcano. (Id.) REM throw off
information as they fly through the air,
although they can only be seen
by the Myn and by visitors to the island who
drink from the Well of Desire.
(Id.) The Well of Desire is located on the
north side of the island on
a mountainous ridge called Memory Mountain and
is fed by water from Diamond
Falls. (Id.) Those who drink from the well are
able to answer any question
or problem easily. (Id.)
Stouffer maintains that in
addition to the Rah and Myn booklets, Ande also
created a coloring book version
of a third title, Larry Potter and
His Best Friend Lilly (Def.
56.1 P 37-38), although a completed version of
this booklet has not been produced
in this litigation. (Pl. 56.1 PP 108,
109). Stouffer has produced
a "printer's proof," which was purportedly the
basis for Larry Potter and
His Best Friend Lilly (Id.; Choe Decl., Exh. 27),
although the printer's proof
has no title page and contains only one
reference to "Larry Potter."
(Choe Decl., Exh. 27). (Throughout the rest of
the printer's proof the main
character is referred to simply as "Larry."
(Id.)) Plaintiffs have produced
evidence indicating that the one paragraph
referring to "Larry Potter"
was printed using fonts that were not available
until 1993. Thus, plaintiffs
contend that this part of the printer's proof
could not have been created
before Ande ceased operations in 1987 and was in
fact created by Stouffer to
give the false impression that she had published
a "Larry Potter" book prior
to this litigation. (See Pl. 56.1 PP 114-118;
Pl. Reply Memorandum in Support
of the Motion for Sanctions at 10). Stouffer
does not dispute plaintiffs'
evidence regarding the fonts used in the
printer's proof but contends
that the document was not altered in
connection with this litigation.
She maintains that because she continued to
revise Larry Potter and His
Best Friend Lilly into the early 1990's, the
printer's proof that she initially
claimed to have been printed by Ande in
the 1980's may have actually
been printed later. (See Def. Memorandum in
Opposition to Motion the for
Sanctions at 12).
The story contained in the
printer's proof describes a once happy boy named
Larry who has become sad. (See
Choe Decl., Exh. 27 at 2, 4). His best friend
Lilly does not know why Larry
is sad and tries to cheer him up by bringing
him gifts and singing to him,
but none of her efforts raise Larry's spirits.
(Id. at 6-10). Finally, Lilly
decides to throw a party for Larry and gathers
all of his friends together
in a park. (Id. at 14). When Larry arrives,
Lilly and the others are surprised
to see that Larry is wearing eyeglasses.
Apparently, he had been sad
because he was having trouble seeing and was
fearful of how he would be
treated once he started wearing glasses. (Id. at
18-22).
After Ande's bankruptcy, Stouffer
formed a new publishing venture called
Book Cook, Inc. ("BCI"). (Pl. 56.1 P 122). Although the parties
dispute whether BCI was formally
incorporated (Id. P 123; Def. 56.1 P 123),
it is undisputed that BCI only
existed for a brief period of time and ceased
operations in October 1988.
(Pl. 56.1 P 124). While in operation BCI printed
at least five booklets: (i)
Lilly; (ii) Myn; (iii) Silver Linings; (iv) The
Land of the Nother-One; and
(v) The Fat Frog. (Id. P 128). The Silver
Linings booklet contains a
character named "Nimbus," a brave warrior who
becomes prime minister of the
imaginary land of "Troposonia." (See Choe
Decl., Exh 31). The drawings
of Nimbus depict him as an adult human male,
although he and the other characters
in the booklet are referred to as
"cloud people." (Id.) Nimbus
travels through the clouds on horseback
accompanied by his dog, Thor.
(Id.)
The parties disagree as to
whether BCI also printed a version of Larry
Potter and His Best Friend
Lilly. (Pl. 56.1 PP 144-161; Def. 56.1 P 161,
205). Stouffer has not produced
any original versions of a booklet with this
title, although she has produced
two color photocopies of a booklet
entitled Larry Potter and His
Best Friend Lilly that was purportedly
published by BCI in 1988. (Pl.
56.1 P 147). Plaintiffs have produced
evidence indicating that the
original documents from which these photocopies
were produced could themselves
not have been created before 1993. (Id. PP
148, 154). Also, as with the
Ande printer's proof of Larry Potter and His
Best Friend Lilly (see supra),
these photocopies contain only one paragraph
referring to "Larry Potter."
(See Choe Decl., Exh. 24. 25). Plaintiffs have
produced evidence indicating
that the one "Larry Potter" paragraph is
printed in a different typeface
from the rest of the story and was created
using printing technology unavailable
during BCI's existence. (Pl. 56.1 PP
151-53). Stouffer attributes
this discrepancy in typeface to the fact that
she continued to revise the
story into the 1990's. (See Memorandum in
Opposition to the Motion for
Sanctions at 12).
The photocopied versions of
Larry Potter and His Best Friend Lilly allegedly
created by BCI also contain
illustrations of the Larry character. (See Choe
Decl., 24-26). These illustrations
depict a young boy with brown or
orange hair (depending on the
particular illustration) and eyeglasses. (Id.)
The lenses of the boy's glasses
are rounded (though not circular) and the
frames are speckled with different
colors (including yellow, orange, and
brown). (Id.) In the illustrations,
Larry is either standing or sitting, but
is not shown in any active
pose; his facial expression is either a smile or
a frown, depending on the particular
illustration. (Id.)
The parties disagree as to
whether BCI also printed a booklet entitled The
Legend of Rah and the Muggles.
(Id. PP 130-143; Def. 56.1 PP 142-43, 198).
Stouffer has not produced an
original version of such a booklet and people
who were associated with BCI
in the late 1980's have testified that BCI
never published a booklet with
that title. (Pl. 56.1 PP 131, 132). Stouffer
has produced a photocopy of
The Legend of Rah and the Muggles that was
purportedly published by BCI
in 1988, although plaintiffs have produced
evidence indicating that this
copy contains a type of printing that was not
available until the 1990's.
(Id. 134-38; Choe Decl. Exh. 20). Plaintiffs
have also submitted testimony
from former BCI employees and
associates who do not recall
the company ever publishing a booklet with
"Muggles" in the title. (Declaration
of Ann Fitzpatrick PP 17-21;
Declaration of Gerald Alpert
PP 6-7; Deposition of William O'Brian at 35:11
to 36:7; Deposition of J. Glenn
Ebersole, Jr., at 65:23 to 66:8).
Notwithstanding such testimony,
Stouffer maintains that BCI did publish a
booklet entitled The Legend
of Rah and the Muggles. (Def. 56. PP 128-29).
And though she does not dispute
plaintiffs' evidence regarding the printing
used in the copy submitted
to the Court, she maintains that she continued to
revise the booklet after BCI's
demise and thus the printing in that copy
could date from the early 1990's.
(See Memorandum in Opposition to the
Motion for Sanctions at 9).
In April 1988, Stouffer obtained
copyright registration for a screenplay
based on the Rah storyline.
The screenplay was entitled "RAH The Light,"
although the accompanying application
for copyright registration listed the
title as "RAH The Movie." (See
Choe Decl., Exh. 16). Stouffer included a
copy of the screenplay as an
exhibit to her counterclaims, although the
cover page of that copy bears
the title "The Legend of RAH the Light
and the Muggles." (See SAAC
P 92, Exh. 18). Plaintiffs assert that the copy
attached to Stouffer's counterclaims
was altered by Stouffer in order to
strengthen her assertion of
trademark rights in the term "Muggles." (Pl 56.1
P 177). Stouffer maintains
that the change in the screenplay's title was
made long before this action
was filed and that such change was made to keep
the screenplay "consistent
with the title to the series of books as it
evolved." (Declaration of Nancy
K. Stouffer ("Stouffer Decl.") P 33).
Stouffer also claims that she
created a version of The Legend of Rah and the
Muggles that was published
in 1997 by ALCD, a company owned by her husband,
David Stouffer. (SAAC P 60).
Stouffer has submitted a photocopy of the
"limited edition promotional
copy" that was produced by ALCD. (Id., Exh. 1).
In the ALCD book, which is
significantly longer than the earlier Rah booklet
created by Ande, each Muggle
has a job to do on Aura, and the Muggles wear
emblems on their chests to
identify the kind of work they do. n3 (Id. at
50). The two human babies that
arrive in Aura on the lily pad are given the
names "Rah" and "Zyn" by the
Muggles. (Id. at 34-35). Rah is
intelligent and kind and becomes
a leader of the Muggles. (Id. at 115-121).
Zyn is jealous of his brother's
intelligence and success (id.), and develops
a small following of Muggles,
called Nevils, with whom he leaves Aura for a
dark and rocky island called
Dezra. (Id. at 139-47). Once on Dezra, the
Nevils' bodies adapt to their
new environment: their eyes become "catlike,"
enabling them to see in the
dark; hair grows on their arms and legs; their
fingernails grow long and resemble
tiger claws; and their hands and feet
become webbed. (Id. at 160).
The Nevils kidnap Rah from Aura, although he is
later rescued by the Muggles.
(Id. at 168-92). One of the characters in the
ALCD book is Seymour, a talking
albino hawk; Seymour is used as a scout by
Rah to observe the Nevils on
Dezra, and also delivers food to Dezra. (Id. at
149-54, 191).
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n3 A Muggle who works as a
"Keeper of the Garden" wears a flower emblem; one
who works as a "Keeper of the
Children" wears a bell emblem; one who works
as a "Keeper of the Mills"
wears a wheel emblem; one who works as a "Keeper
of the Light" wears a candle
emblem; one who works as a "Keeper of the Food"
wears a four-leafed clover
emblem; and those who work as "Craftsmen" wear a
scissors emblem. (SAAC, Exh.
1 at 50).
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C. Stouffer's Activities Since
1999
In September 1999, Stouffer
wrote to Scholastic regarding Harry Potter and
the Sorcerer's Stone. (Complaint
P 22; Choe Decl., Exh. 45). In that letter,
Stouffer stated that the Harry
Potter book violated her copyrights and
trademarks, specifically her
trademark rights in the term "Muggle(s)." (Id.)
The letter did not mention
any infringement by plaintiffs upon Stouffer's
intellectual property rights
in the "Larry Potter" character or Larry Potter
and His Best Friend Lilly.
(Id.) In November 1999, after further
communication between Scholastic
and Stouffer failed to resolve the parties'
differences, plaintiffs filed
this action for declaratory and injunctive
relief. (Pl. 56.1 P 191). Stouffer
filed her counterclaims on January 4,
2001. (Id. P 192).
In the spring of 2001, The
Legend of Rah and the Muggles was published by
Thurman House, LLC, a Maryland
publishing company. (Pl 56.1 P 198). This
version of the book is similar,
though not identical, to the earlier version
of The Legend of Rah and the
Muggles created by ALCD. (See Choe Decl., Exh
43). In the Thurman House version, Muggles have an average height of
three and one-half feet (Id.
at xv). The jobs performed by the Muggles in
the Thurman House version include
four of the "Keeper" jobs listed in the
ALCD version (see n.2, supra),
well as "Keeper of the Beaches"; "Keeper of
the Villages"; "Keeper of the
Aviary"; and "Keeper of the Bees." (Id. at
98). Finally, the Thurman House
version contains more detailed descriptions
of the Nevils (the evil Muggles
who flee to Dezra with Zyn). (Id. at
190-93).
II. Motion for Summary Judgment
A. Legal Standard
A district court may grant
summary judgment only if it is satisfied that
"there is no genuine issue
as to any material fact and ... the moving party
is entitled to a judgment as
a matter of law." Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248, 91
L. Ed. 2d 202, 106 S. Ct. 2505 (1986). All
inferences and ambiguities
are resolved in the non-movant's favor. Gallo v.
Prudential Residential Servs.,
Ltd. Partnership, 22 F.3d 1219, 1223 (2d
Cir.1994) (citations omitted).
The burden rests on the moving party to
demonstrate the absence of
a genuine issue of material fact. See Goenaga v.
March of Dimes Birth Defects
Found., 51 F.3d 1418 (2d Cir.1995).
If
the moving party meets its
burden, the opposing party must produce
evidentiary proof in admissible
form sufficient to raise a material question
of fact to defeat the motion
for summary judgment, or in the alternative,
demonstrate an acceptable excuse
for its failure to meet this requirement.
See AGV Prods. v. Metro-Goldwyn-Mayer,
Inc., 115 F. Supp.2d 378, 386
(S.D.N.Y.2000) (citation omitted).
When reasonable minds could not differ as
to the import of the proffered
evidence, then summary judgment is proper.
See Anderson, 477 U.S. at 250-52;
Bryant v. Maffucci, 923 F.2d 979, 982 (2d
Cir.1991). Moreover, "conclusory
allegations, speculation or conjecture will
not avail a party resisting
summary judgment." Cifarelli v. Village of
Babylon, 93 F.3d 47, 51 (2d
Cir.1996). On cross-motions for summary
judgment, the rule governing
inferences and burden of proof is the same as
for unilateral summary judgment
motions. That is, each cross-movant must
present sufficient evidence
to satisfy its burden of proof on all material
facts. See AGV Prods., 115
F. Supp.2d at 386.
B. Discussion
Plaintiffs have moved for summary judgment with respect to their
claims for declaratory judgment
and injunctive relief, as well as with
respect to Stouffer's counterclaims
and crossclaims. However, granting the
relief sought by plaintiffs
in their claims (i.e. declaring that plaintiffs
have not violated Stouffer's
intellectual property rights) necessitates the
dismissal of Stouffer's counterclaims
(which are for violations of those
same rights). Accordingly,
the Court considers both sides' claims together,
and, as the parties have done
in their briefs, analyzes plaintiffs' motion
for summary judgment by assessing
each of Stouffer's counterclaims.
1. Trademark Infringement,
False Designation of Origin, and Unfair
Competition
Stouffer's first four counterclaims
are for (i) trademark infringement in
violation of the Lanham Act,
15 U.S.C. § 1125 (SAAC PP 119-32); (ii)
trademark infringement in violation
of New York law (SAAC PP 133-37); (iii)
false designation of origin
in violation of the Lanham Act (SAAC PP 138-51);
and (iv) unfair competition
in violation of New York law. (SAAC PP 152-58).
To prevail on any of these
claims Stouffer must show that plaintiffs have
used the intellectual property
at issue in a manner likely to cause
consumer confusion. See, e.g.,
Paco Sport, Ltd. v. Paco Rabanne Parfums, 86
F. Supp.2d 305, 309-10 (S.D.N.Y.
2000) (claims of trademark infringement and
false designation of origin
under the Lanham Act require plaintiffs to show
likelihood of confusion); see
also Waldman Publi'g. Corp. v. Landoll, Inc.,
43 F.3d 775, 781-85 (2d Cir.
1994) (likelihood of consumer confusion is a
necessary element of false
designation of origin claim alleging "reverse
passing off"); Horn's, Inc.
v. Sanofi Beaute, Inc., 963 F. Supp. 318, 328
(S.D.N.Y 1997) (where there
is no likelihood of confusion for purposes of
Lanham Act claim, common law
trademark infringement claim also fails); Girl
Scouts of the Unites States
of Am. v. Bantam Doubledaly Dell Pul'g. Group,
Inc., 808 F. Supp. 1112, 1131
(S.D.N.Y. 1992) (state law unfair competition
claim failed where plaintiffs
failed to show likelihood of confusion),
aff'd, 996 F.2d 1477 (2d Cir.
1993).
When assessing the likelihood
of consumer confusion, courts in this district
look to the eight factors identified by the Second Circuit in
Polaroid v. Polarad Elecs.
Corp., 287 F.2d 492, 495 (2d Cir. 1961). Those
factors are (i) the strength
of the claimant's mark; (ii) the degree of
similarity between the claimant
and defendant's marks; (iii) the proximity
of the products; (iv) the likelihood
that either party will "bridge the gap"
and use the mark on products
closer to the other's areas of commerce; (v)
the sophistication of the buyers;
(vi) the quality of the defendant's
product; (vii) actual confusion;
and (vii) the defendant's good or bad
faith. See Time, Inc. v. Petersen
Publ'g Co. L.L.C., 173 F.3d 113, 117 (2d
Cir.1999) (citing Polaroid).
However, while all of these factors are
relevant, the application of
the Polaroid test is not a mechanical process
"where the party with the greatest
number of factors weighing in its favor
wins." Physicians Formula Cosmetics
Inc. v. West Cabot Cosmetics, Inc., 857
F.2d 80, 85 (2d Cir. 1988).
Rather, a court should focus on the ultimate
question of whether consumers
are likely to be confused as to the source of
the two parties' merchandise.
See Lang v. Retirement Living Publishing Co.,
949 F.2d 576, 580 (2d Cir.1991). In this case the Court need not
address each of the Polaroid
factors individually in order to answer the
ultimate question regarding
likelihood of confusion. Rather, by simply
comparing the Harry Potter
books to Stouffer's works, and by examining the
supposed similarities between
the works cited by Stouffer in her briefs, the
Court is able to conclude that
no reasonable juror could find a likelihood
of confusion as to the source
of the two parties' works.
Stouffer's claims are based
on several attributes of the Harry Potter books.
First, she claims that plaintiffs'
use of the terms "muggle" and "muggles"
are likely to cause consumer
confusion. n4 (SAAC PP 123, 126, 128). However,
plaintiffs have not used either
of these terms as trademarks. Rather,
plaintiffs have used "muggles"
to refer to certain characters in the Harry
Potter books, and such use
is markedly different from Stouffer's use of
"muggles" in her various Rah
books. In Harry Potter, a "muggle" is simply
the term used for ordinary
human beings, i.e those who do not have magical
powers. In Stouffer's works,
"Muggles" are tiny, hairless creatures with
elongated heads who live in
a fictional, post-apocalyptic land
called Aura. Stouffer's Muggles
may have the basic physical characteristics
of human beings, but their
diminutive size (see n.1, supra) and distorted
physical features (see Choe
Decl., Exhs. 7, 43 (at xiv-xv), 67 (at 3))
clearly indicate that they
are not human beings. Also, while Stouffer's
Muggles may not have magical
powers, they do have the superhuman ability to
talk to animals. (See Choe
Decl., Exh. 43 at xv, 120). Stouffer has not
produced any evidence indicating
that there has been actual confusion
between the two uses, n5 nor
is there any evidence in the record indicating
bad faith on plaintiffs' part.
Accordingly, the Court finds that there is no
likelihood of confusion between
plaintiffs' use of "muggle(s)" and
Stouffer's use of "Muggles."
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n4 Because the Court finds
that Stouffer cannot satisfy the other necessary
component of her trademark
claims, i.e. likelihood of confusion, the issue
of whether Stouffer's use of
"Muggle" and "Muggles" entitles her to
trademark protection need not
be reached. However, given the meager sales
and minimal business activities
of Ande, BCI, and Thurman House, the Court
has serious reservations as
to whether Stouffer has any trademark rights
with respect to "Muggle" or
"Muggles."
n5 Stouffer maintains that
actual confusion has occurred and in support of
that assertion points to her
"receipt of numerous e-mails and letters
accusing her of trying to 'steal'
or capitalize on marks associated with
Harry Potter." (See Souffer
Surreply Memorandum at 5-6 (emphasis in
original)). However, there
is nothing in the record, beyond Stouffer's
conclusory allegations, which
indicates that Stouffer ever received such
letters, since neither the
letters nor printouts of the electronic mail
messages have been produced.
Stouffer did attach printouts of several
electronic mail messages to
her Second Amended Answer and Counterclaims
(SAAC, Exh. 31). However, those
messages were sent to Stouffer by fans of
the Harry Potter series who
were upset by the position she has taken in this
litigation and do not indicate
actual confusion. To the contrary, the
authors of those e-mails clearly
recognize that Harry Potter and The Legend
of Rah and the Muggles come
from two separate sources. (Id.)
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Similarly, the plaintiffs'
use of "Harry Potter" as a character in the Harry
Potter books
is not likely to cause confusion with Stouffer's use of
"Larry Potter." As an initial
matter, the evidence in the record does not
conclusively establish that
Stouffer even used the words "Larry Potter" in
any books published prior to
the commencement of this litigation. Those
words appear only in a single
paragraph of the Ande "printer's proof," and
on the title page and in one
paragraph of the Larry Potter and His Best
Friend Lilly booklet allegedly
created by BCI. (See supra.) The undisputed
evidence produced by plaintiffs
indicates that the paragraphs containing the
words "Larry Potter" were printed
utilizing technology that was not
available while Ande and BCI
were in existence. (See Pl. 56.1 PP 106-119,
144-153). And the photocopies
of the BCI booklet submitted by Stouffer also
could not have been created
while BCI was operating. (Pl. 56.1 PP 154-157).
In fact, the only evidence
in the record indicating that Stouffer actually
created a booklet containing
the words "Larry Potter" prior to 1999 is the
testimony of her nephew, William
O'Brian and two of her friends. (See
Declaration of William J. O'Brian
PP 6-7; Declaration of Carla M. Palese P
7; Declaration of Robert Sgringoli, Jr. PP 5-6). These three persons
all claim that Stouffer gave
them individual copies of BCI's Larry Potter
and His Best Friend Lilly during
the early to mid-1990's. (Id.).
However, even assuming, arguendo,
that Stouffer had used "Larry Potter" in
her works prior to this litigation,
plaintiffs' use of "Harry Potter" does
not create a likelihood of
confusion. Stouffer's "Larry Potter" appears in
an 11-page booklet about a
boy who is sad because he has to wear eyeglasses.
"Larry" has brown or orange
hair and glasses with non-circular lenses and
speckled brown frames. (See
Choe Decl, Exh. 25). In contrast, "Harry Potter"
is a young orphan boy with
dark brown or black hair, a scar in the shape of
a lightning bolt on his forehead,
and distinctive eyeglasses with black
frames and circular lenses.
(See Choe Decl., Exh. 1-4). After discovering
that he has magical powers
and enrolling at a school for young wizards,
Harry has many adventures,
which are described throughout the course of the
four Harry Potter books, each
of which is several hundred pages in length.
(Id.) Aside from the similar,
though not identical, names of the main
characters and the fact that both "Larry" and "Harry" are boys with
glasses, Stouffer's booklet
and plaintiffs' books, along with their
accompanying illustrations,
have almost nothing in common. (See infra).
Accordingly, no reasonable
juror could find a likelihood of confusion
between "Larry Potter" and
"Harry Potter." n6
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n6 In her counterclaims, Stouffer
refers to her use of a character named
"Lilly Potter" and asserts
that plaintiffs use of a character named "Lily
Potter" is likely to cause
confusion. (SAAC PP 142, 143). However, in the
papers submitted by Stouffer
in connection with the instant motions, she
does not mention her use of
"Lilly Potter" as a basis for confusion with
plaintiffs' works. (See Declaration
of Thomas McNamara PP 13-26). Also, none
of the evidence in the record
indicates that Stouffer has ever used the name
"Lilly Potter" in her books.
(The "Lilly" character in Larry Potter and and
His Best Friend Lilly has no
last name and, as the title indicates, she is a
friend of Larry Potter's, not
a relative). (See Choe Decl., Exh, 25).
Accordingly, plaintiffs' use
of "Lily Potter" could not create a likelihood
of confusion.
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Stouffer also argues that there
is a likelihood of confusion based on her
use of "Nevils" and plaintiffs'
use of a character named "Neville
Longbottom." However, Stouffer's
Nevils are a group of Muggles whose
original non-human appearance
becomes even more distorted during the course
of The Legend of Rah and the
Muggles. (See Choe Decl., Exh 67 (at 130-31,
160). Neville Longbottom, on
the other hand, is a young boy who is one of
Harry Potter's classmates at
the Hogwarts school. Neville is a
"half-and-half" since his mother
was a witch and his father was a muggle.
(See Choe Decl., Exh. 1 at
125). However, despite Neville's status as a
"half-Muggle," he does not
share any of the physical attributes of
Stouffer's Nevils, nor are
his actions at all similar to those of the
Nevils. Stouffer's Nevils are
villainous, whereas Neville Longbottom is
merely hapless. There is, of
course, some similarity between the word
"Nevils" and the name "Neville,"
but, as plaintiffs point out, "Neville" is
simply a common British name.
Accordingly, the mere similarity of the words
"Nevils" and "Neville" does
not create a likelihood of confusion between
plaintiffs' and Stouffer's
works.
Similarly, the appearance of the word "Nimbus" in both the Harry
Potter books and in Stouffer's
Myn booklet is not likely to cause confusion.
First, the Court takes judicial
notice of the fact that the word "nimbus"
can be found in the dictionary
and does not represent a fanciful creation of
either Stouffer or plaintiffs.
n7 Secondly, the two parties use the word in
completely different ways.
Stouffer's "Nimbus" is a warrior and prime
minister of the cloud people
of "Troposonia," and is depicted as an adult
male with shoulder-length hair.
(See Choe Decl., Exh 31). In Harry Potter,
the "Nimbus 2000" is a flying
broomstick ridden by Harry during games of
Quidditch. (See Choe Decl.,
Exh. 1 at 165-70). Both parties works use the
word "Nimbus" as a noun, but
no reasonable juror could find a likelihood of
confusion between the works
based on such a superficial similarity.
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- -
n7 A "nimbus" is defined as
either "a cloudy radiance said to surround a
deity when on earth," or "a
uniformly gray rain cloud that extends over the
sky." (See American Heritage
Dictionary (2d College Ed. 1982) at 842).
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-
Stouffer also asserts that
plaintiffs' use of messenger owls in the Harry
Potter books could create confusion
between Harry Potter and The Legend of
Rah and the Muggles. However,
Stouffer's work does not contain owls who
deliver mail; rather, it contains
an albino hawk named Seymour who acts as a
scout for the leader of the
Muggles and who delivers food to the Nevils on
the island of Dezra. (See Choe
Decl., Exh. 67 at 149-54, 191). No reasonable
juror could find a likelihood
of confusion between the two parties' works
based simply on the fact that
both contain birds who are employed to carry
an object from one place to
another. Similarly, the "Mirror of Erised" in
the Harry Potter books and
the "Well of Desire" in Stouffer's Myn are not
similar enough to give rise
to a likelihood of confusion. The Mirror of
Erised is a mirror that allows
those who look into it to see visions of
their deepest desires. (See
Choe Decl., Exh. 1 at 207-09, 214). In contrast,
the Well of Desire gives those
who drink from it the ability to solve any
question or problem easily.
(Choe Decl., Exh. 10). Although the Mirror of
Erised and the Well of Desire
are both magical objects that contain some form of
the word "desire" in their name, they are hardly similar enough
to create a likelihood of confusion
since they are completely different
objects which perform dissimilar
functions.
Finally, the fact that Harry
Potter contains a character whose job title is
"Keeper of the Keys and Grounds"
does not give rise to a likelihood of
confusion with The Legend of
Rah and the Muggles, in which each Muggle works
as a "Keeper of" various objects.
(SAAC, Exh. 1; Choe Decl., Exh. 43 at 98).
"Keeper" is a commonly used
word and is often used to describe a particular
job; the mere fact that both
parties' works use that word to describe
characters' job titles is not
likely to cause confusion. And because there
are no additional similarities
between the characters who perform these
"Keeper" roles, there can be
no likelihood of confusion based on the usage
of the words "Keeper of" in
both works.
In sum, the similarities between
Stouffer's books and the Harry Potter
series are minimal and superficial,
and even when considered altogether they
could not give rise to a likelihood
of confusion. And because likelihood of
confusion is a necessary element
of Stouffer's first four counterclaims,
she cannot maintain any of
those claims. Accordingly, plaintiffs'
motion for summary judgment
seeking to dismiss those claims is granted.
2. Dilution and Tarnishment
In her fifth counterclaim,
Stouffer asserts a claim for injury to business
reputation (tarnishment) and
dilution (blurring) under New York General
Business Law § 360-1. (SAAC
PP 159-66). However, a prerequisite for
asserting a claim under this
statute is the ownership of "an extremely
strong mark" that is either
"distinctive" or has acquired secondary meaning.
Sally Gee, Inc. v. Myra Hogan,
Inc., 699 F.2d 621, 625 (2d Cir.1983); Allied
Maintenance v. Allied Mechanical
Trades, 42 N.Y.2d 538, 542-46, 399 N.Y.S.2d
628, 632, 369 N.E.2d 1162 (1977).
Thus, to merit protection under the New
York dilution statute, a plaintiff
cannot simply show that she possesses
trademark rig