Case 1:16-cv-02340-GBD-GWG Document 67 Filed 10/13/17 Page 1 of 15

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
DISNEY ENTERPRISES, INC.,
MARVEL CHARACTERS, INC.,
LUCASFILM LTD. LLC, and
LUCASFILM ENTERTAINMENT
COMPANY LTD. LLC

Plaintiffs,
Civil Action No. 1:16-CV-02340-(GBD)
-against-

CHARACTERS FOR HIRE, LLC.; NICK

SARELLI a/k/a Avi Lieberman, d/b/a
Characters for Hire, LLC., and ABC
CORPORATIONS 1-10 (individual
fictitious corporate entities whose identities
are presently unknown),

Defendants.

DEFENDANTS MEMORANDUM OF LAW IN SUPPORT

OF MOTION FOR SUMMARY JUDGMENT

Feldman Law Group, P.C.

220 E. 42nd Street, Suite 3304
New York, New York 10017
(212) 532-8585
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TABLE OF CONTENTS

PRELIMINARY STATEMENT .................................................................................................... 1

FACTUAL BACKGROUND ......................................................................................................... 2

ARGUMENT .................................................................................................................................. 4

I. DEFENDANTS HAVE NOT INFRINGED PLAINTIFFS COPYRIGHTS AT

ISSUE IN THIS ACTION .................................................................................................. 4

II. DEFENDANTS DESCRIPTIVE USES OF PLAINTIFFS CLAIMED

TRADEMARKS ARE PERMISSIBLE .......................................................................... 6

CONCLUSION ............................................................................................................................. 11

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TABLE OF AUTHORITIES

Page(s)
Cases
Caterpillar, Inc. v. The Walt Disney Co., 287 F. Supp.2d 913 (C.D. Ill. 2003) ............................. 9

Disney Enterprises, Inc. v. Tarano, 2013 WL 12156455 (M.D. Fla. Jun. 24, 2013) ..................... 4

Diticco v. Riordan, 496 Fed. Appx. 126 (2nd Cir. 2012)................................................................. 5

Effie Film, LLC v. Pomerance, 909 F. Supp. 2d 273 (S.D.N.Y. 2012) .......................................... 5

Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 111 S. Ct. 1282 (1991)................. 4

Galiano v. Harrah's Operating Co., Inc., 2004 WL 1057552 (E.D. La. May 10, 2004) ............... 5

Jacobs v. Carnival Corp., 2009 WL 856637 (S.D.N.Y. Mar. 25, 2009) ........................................ 4

Kelly v. L.L. Cool J., 145 F.R.D. 32 (S.D.N.Y.1992), aff'd, 23 F.3d 398 (2d Cir.1994),
cert. denied, 513 U.S. 950 (1994) .............................................................................................. 4

Naked Cowboy v. CBS, 844 F. Supp.2d 510 (S.D.N.Y. 2012) ....................................................... 7

Paramount Pictures Corporation v. Romulan Invasions, 7 U.S.P.Q. 1897,

1988 WL 252376 (Trademark Tr. & App. Bd. Mar. 31, 1988) ............................................... 10

Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) ............................................................. 9

Tiffany (NJ) Inc. v. eBay, Inc., 576 F. Supp. 2d 463 (S.D.N.Y. 2008) ........................................... 9
Statutes
15 U.S.C.A. 1115(b)(4)................................................................................................................ 7

17 U.S.C. 109 ............................................................................................................................... 5

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PRELIMINARY STATEMENT

Defendant Characters For Hire LLC. (CFH) provides costumed entertainment services

for private parties and events, such as kids birthday parties. In doing so, CFH offers literally

hundreds of different characters to its customers, including, prior to the commencement of this

action, several characters in which plaintiffs Disney Enterprises, Inc. (Disney), Marvel

Characters, Inc. (Marvel), and Lucasfilm Limited LLC and Lucasfilm Entertainment Company,

Ltd. LLC (together, Luscasfilm) (collectively Plaintiffs) claim to have intellectual property

rights. In a transparent attempt to stifle CFHs business, Plaintiffs commenced this action asserting

various copyright and trademark claims. However, as shown below, CFHs activities complained

of in this action simply do not infringe upon any of those alleged copyrights or trademarks.

Accordingly, Defendants now move, pursuant to Rule 56 of the Federal Rules of Civil Procedure,

for summary judgment, dismissing each of Plaintiffs claims asserted in this action with prejudice.

First, Plaintiffs assert that Defendants advertisements and promotional materials somehow

infringe specified copyright registrations identified in the Complaint. But, CFHs advertising and

promotional materials do not copy, reproduce, distribute or display any of the two-dimensional

artwork that is the subject of those copyright registrations. Accordingly, it is respectfully

submitted that the copyright infringement claim asserted in this action must be dismissed as a

matter of law.

Next, Plaintiffs assert various Federal and Common Law trademark claims. Each of these

claims likewise fail, since the essential element of confusion is lacking. CFHs alleged uses of

Plaintiffs claimed trademarks merely describe the services being offered. As a matter of law,

such descriptive uses are non-actionable given that there is no confusion as to the source of CFHs

services, or as to Plaintiffs endorsement, sponsorship or licensing of those services. Thus,

Defendants respectfully submit, each of the trademark claims should likewise be dismissed.

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FACTUAL BACKGROUND

CFH is engaged in the business of providing costumed entertainment services for private

parties and corporate events. Declaration of Nicholas Sarelli dated October 13, 2017 (Sarelli

Dec.) 2. As part of its business, CFH provides individuals in character costumes, as requested

by the customer, to appear at events. CFHs services provide hundreds of different characters,

from historical figures, to fairytale princesses, to 1920s era mobsters. Sarelli Dec. 2.

CFH operates a website, as well as various online accounts on social media, such as

Facebook, to promote its business. Sarelli Dec. 3. Nowhere on its website or any of its social

media platforms, or in any other advertising, does CFH state that it is in any way associated with,

sponsored by, endorsed by, licensed by, or affiliated with any of the plaintiffs in this action. Sarelli

Dec. 4. To the extent that the names of characters to which Plaintiffs claim rights in this action

appear on CFHs website and in its advertising, they are solely used in a descriptive manner to

describe the product offered by CFH. Sarelli Dec., 4. In fact, Plaintiffs admit that they do not

have any evidence of actual confusion arising from CFH providing its costumed entertainment

services. Declaration of Jonathan J. Ross dated October 13, 2017 (Ross Dec.), 5, and Ex C

(Plaintiffs Responses and Objections to Defendants First Set of Requests for Admission,

Response No. 13.)

As part of its business, CFH also from time to time purchases costumes of the requested

characters. Sarelli Dec., 5. CFH purchases the costumes from authorized vendors selling

legitimate merchandise. Sarelli Dec. 5. None of the vendors from whom CFH purchased its

costumes advised that there were any restrictions on how CFH could use the costume. Sarelli Dec.

5.

On July 10, 2017, Plaintiffs filed the Second Amended Complaint in this action (the

SAC), asserting claims for copyright infringement and several Federal and state law trademark

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claims. [Docket Entry 51]; Ross Dec., 3, Ex A. The SAC identifies specific copyright

registrations that are the subject of the copyright infringement claim asserted in this action. SAC

33, and Exhibit A to the SAC. Ross Dec., 6, Ex. D. Those copyright registrations cover

specific style guides licensing kits, and other specific textual and visual materials. Ross Dec.

7-9, & Exs. E. through G. None of the materials that are the subject of the copyright registrations

at issue in this action were copied, reproduced or displayed on CFHs website, or in any of its

social media accounts or advertising. SAC, Exs. C, D, E, F and G; Ross Dec. 7-9, Exs E through

G.

Numerous characters to which Plaintiffs claim rights in this action, namely Rapunzel,

Sleeping Beauty, Cinderella, Aladdin, Beauty (of Beauty and the Beast), Snow White, the Little

Mermaid, Thor, Loki, and Princess Aurora, originally appeared in fairy tales, folk tales and other

works hundreds, and in some instances thousands of years ago. Declaration of Steven M. Crosby

dated October 13, 2017, 3-8, and Exs. A-F.

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ARGUMENT

I. DEFENDANTS HAVE NOT INFRINGED PLAINTIFFS COPYRIGHTS AT

ISSUE IN THIS ACTION

To prevail on a claim for copyright infringement, a plaintiff must establish: (1) ownership

of a valid copyright, and (2) copying of constituent elements of the work that are original. Feist

Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S. Ct. 1282, 1296, 113 L. Ed. 2d

358 (1991). Moreover, a Complaint for copyright infringement must specify: (1) which specific

original works are the subject of the copyright claim, (2) that plaintiff owns the copyrights in those

works, (3) that the copyrights have been registered in accordance with Copyright Act, and (4) by

what acts and during what time the defendant infringed the copyright. Jacobs v. Carnival Corp.,

2009 WL 856637, at *4 (S.D.N.Y. Mar. 25, 2009), citing, Kelly v. L.L. Cool J., 145 F.R.D. 32, 35

(S.D.N.Y.1992), aff'd, 23 F.3d 398 (2d Cir.1994), cert. denied, 513 U.S. 950 (1994); See, Disney

Enterprises, Inc. v. Tarano, 2013 WL 12156455 (M.D. Fla. Jun. 24, 2013) (denying motion for

default judgment noting that Complaint must identify the specific copyright registration alleged to

be infringed).

The Second Amended Complaint in this action identifies specific registered copyrights that

Plaintiffs claim have been infringed by Defendants, which largely consist of licensing kits, style

guides, posters, and other materials containing specific images and textual matter that are the

subject of those registrations. See Ross Dec., 7-9, Exs E through G. The SAC then alleges that

CFHs website, and other advertising for its services, somehow infringe those copyrights:

Defendants have made unauthorized commercial uses, including, without

limitation, unauthorized reproductions and/or copies, distribution, and
public displays of Plaintiffs CharactersRepresentative images of
Defendants advertisements and marketing materials making such
unauthorized use of Plaintiffs Characters are attached as Exhibit C through
G.

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SAC, 35. Notwithstanding this allegation, however, none of the images or textual material that

is the subject of the copyright registrations at issue in this action (see Ross Dec., Exs. E through

G) are reproduced, copied, distributed or displayed in any of the materials annexed as Exhibits C

through G of the SAC [Docket Entries 51-3 through 51-7]. Accordingly, there has simply been

no infringement of the copyrights at issue in this action.1

Moreover, many of Plaintiffs alleged copyrights at issue in this action are based upon prior

works that have long since passed into the public domain such as, Cinderella, Snow White,

Rapunzel, Sleeping Beauty, Aladdin, Princess Aurora, Beauty and the Beast, the Little Mermaid,

Thor and Loki. Crosby Dec. 3-8, and Exhs A-F.2 Accordingly, to the extent Plaintiffs have

any valid copyrights therein, their rights only extend to any original expression added to these pre-

existing works contained in the materials that are the subject of the copyright registrations at issue

in this action. See e.g. Diticco v. Riordan, 496 Fed. Appx. 126, 128 (2nd Cir. 2012) (noting that

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To the extent that Plaintiffs may attempt to claim that the costumes used by CFH in
providing its services somehow infringe the Plaintiffs copyrights at issue in this action, any such
claim would fail for two independent reasons. First, costumes, as useful articles, are not subject
to copyright protection, and thus two-dimensional images or sketches of clothing cannot prohibit
the wearing of the garments depicted in those images. See, Galiano v. Harrah's Operating Co.,
Inc., 2004 WL 1057552, at *9 (E.D. La. May 10, 2004) (holding that a copyright of the Collection
of Artwork for Wearing Apparel does not extend to the designs for the wearing apparel depicted
in the illustrations and thus defendants casino uniforms held non-infringing). Next, even if
plaintiffs could somehow be deemed to have copyright rights in the costumes, any copyright claim
in connection therewith was extinguished by the first sale doctrine under section 109(a) of the U.S.
Copyright Act, which provides that the owner of a particular copy of a copyrighted work is entitled
to sell, transfer or publicly display that copy. 17 U.S.C. 109(a) & (c). Here, CFH has lawfully
purchased costumes that it is thus free to use, including publicly displaying those costumes as part
of its services. Sarelli Dec. 5.
2
The Court may take judicial notice of these ancient publications. See, Effie Film, LLC v.
Pomerance, 909 F. Supp. 2d 273, 299 (S.D.N.Y. 2012) (courts may take judicial notice of facts
that various newspapers, magazines, and books were published solely as an indication of
information in the public realm at the time).

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characters and settings derived from Greek mythology have entered the public domain and are not

protectable, in holding that the Disney motion picture Percy Jackson and the Olympians did not

infringe upon any protectible elements in the plaintiffs books). Here, CFHs use of characters

from Norse mythology, such as Thor and Loki, or centuries-old fairy tales and folk tales, like

Cinderella, Snow White, Rapunzel, Aladdin and Princess Aurora (see e.g. Exhibits C through G

of the SAC) do not infringe upon any original expression added by Plaintiffs to these public domain

characters.

Accordingly, Defendants respectfully request that summary judgment be granted in favor

of Defendants on Plaintiffs copyright infringement claim.

II. DEFENDANTS DESCRIPTIVE USES OF PLAINTIFFS CLAIMED

TRADEMARKS ARE PERMISSIBLE

Counts II though VI of the SAC assert various claims alleging trademark infringement and

unfair competition under Federal and State Law. Each of these claims fail for essentially the

same reason -- there is simply no likelihood of confusion that arises from CFHs activities as to

the source or sponsorship of the costumed entertainment services that CFH provides.

Accordingly, CFHs descriptive, non-trademark, uses of fictional names and personas do not

constitute trademark infringement or unfair competition.

First, the Lanham Act expressly includes an exception for the exact type of use CFH makes

of plaintiffs alleged trademarks in connection with the effect of, and limits placed upon,

incontestable registered trademarks:

(b) Incontestability; defenses.

To the extent that the right to use the registered mark has become
incontestable under section 1065 of this title, the registration shall be
conclusive evidence of the registrant's exclusive right to use the
registered mark in commerce. Such conclusive evidence of the right to
use the registered mark shall be subject to proof of infringement as defined

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in section 1114 of this title, and shall be subject to the following defenses
or defects:

* * *

(4) That the use of the name, term, or device charged to be an infringement
is a use, otherwise than as a mark, of the party's individual name in his own
business, or of the individual name of anyone in privity with such party, or
of a term or device which is descriptive of and used fairly and in good
faith only to describe the goods or services of such party, or their
geographic origin;

15 U.S.C.A. 1115(b)(4) (emphasis supplied).

This defense to a claim of trademark infringement, permitting descriptive uses of the mark,

precisely describes the manner in which CFH makes use of Plaintiffs alleged marks i.e., solely

to describe the costumed services that it provides. There is no attempt or intention on the part of

CFH to use the words in a trademark sense, or to otherwise deceive the public into believing that

Plaintiffs, and not CFH, are the source of the services being provided. To the contrary, it is

abundantly clear that the services are being provided by Characters for Hire LLC.

The instant situation is akin to a recent decision in this Court concerning the registered

mark The Naked Cowboy, owned by the Times Square street performer who rose to fame

playing guitar in nothing but his underwear and a large cowboy hat. Naked Cowboy v. CBS, 844

F. Supp.2d 510 (S.D.N.Y. 2012). CBS, the producer of the popular soap opera, The Bold and the

Beautiful included in one of its episodes a scene in which one of its characters played guitar in a

Naked Cowboy costume very similar in appearance to plaintiffs fictional persona of the Naked

Cowboy. While the words Naked Cowboy were not actually used in the scene itself, the

producers of the show then posted a YouTube clip of the episode, entitled, and advertised as, The

Bold and the Beautiful Naked Cowboy, and sold advertising in connection with the performance

and display of the clip. Id. at 513-514. Notwithstanding, the commercial nature of that use, the

District Court found it to be a non-actionable, descriptive use of the term Naked Cowboy:

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Not every unauthorized use of a protected mark is actionable. Section

33(b)(4) of the Lanham Act provides an affirmative defense to an
infringement claim where the use of the mark is a use, otherwise than as a
mark, ... which is descriptive of and used fairly and in good faith only to
describe the goods ... of such party[.] 15 U.S.C. 1115(b)(4). The fair use
defense permits use of protected marks in descriptive ways, but not as marks
identifying the user's own product. ... If it cannot be proven that the
unauthorized use serves to identify the source of the defendant's product,
such use is not protectable as a trademark

Here, the challenged phrase Naked Cowboy is an example of non-

trademark use. It is clear that CBS used the phrase in an effort to describe
the contents of the video clip, not as a mark to identify the source of the
video clips.

Naked Cowboy, 844 F. Supp. 2d at 515 (internal citations omitted). Similarly, to the extent CFH

uses the names of princesses or other fictional personas that are the subject of Plaintiffs trademark

registrations, CFH merely uses them to describe the costumed entertainment services that CFH

provides. Id. In another recent decision of this Court, it was likewise held that eBays use of the

TIFFANY trademark was not actionable:

Under trademark law, trademark owners cannot prevent others from making
a descriptive use of their trademark. While a trademark conveys an
exclusive right to the use of a mark in commerce in the area reserved, that
right generally does not prevent one who trades a branded product from
accurately describing it by its brand name, so long as the trader does not
create confusion by implying an affiliation with the owner of the product.
Dow Jones, 451 F.3d at 308. This type of descriptive use of a trademark is
protected under the doctrine of nominative fair use. Such nominative
use of a markwhere the only word reasonably available to describe a
particular thing is pressed into servicelies outside the strictures of
trademark law. New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d
302, 308 (9th Cir.1992) (emphasis omitted) .

* * *

The Court concludes that eBay's use of the TIFFANY Marks was protected
under the nominative fair use doctrine. ... Indeed, were eBay precluded from
using the term Tiffany to describe Tiffany jewelry, eBay would be forced
into absurd circumlocutions. To identify Tiffany jewelry without using the
term Tiffanyperhaps by describing it as silver jewelry from a prestigious
New York company where Audrey Hepburn once liked to breakfast, or

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jewelry bearing the same name as a 1980s pop starwould be both

impractical and ineffectual in identifying the type of silver jewelry available
on eBay. Accordingly, the Court finds that the product or service in question
is not readily identifiable without use of the TIFFANY Marks.

* * *

Finally, eBay has shown that it did not do anything that would suggest
sponsorship or endorsement by the trademark holder. See New Kids on the
Block, 971 F.2d at 308. Clearly, a use is not nominative if it creates a
likelihood of confusion about the mark-holder's affiliation or sponsorship.
Chambers v. Time Warner, No. 00 Civ. 2839(JSR), 2003 U.S. Dist. LEXIS
3065, at *10, 2003 WL 749422, at *3, (S.D.N.Y. Mar. 5, 2003)
However, the mere use of a trademarked term to describe something is not
enough to suggest sponsorship or endorsement.

Tiffany (NJ) Inc. v. eBay, Inc., 576 F. Supp. 2d 463, 49697 (S.D.N.Y. 2008), aff'd in part, rev'd

in part, 600 F.3d 93 (2d Cir. 2010). On appeal, while the Second Circuit declined to formally

adopt or reject the viability of the nominative fair use defense, the Court nevertheless held that

eBays conduct was non-actionable:

We need not address the viability of the doctrine to resolve Tiffany's claim,
however. We have recognized that a defendant may lawfully use a plaintiff's
trademark where doing so is necessary to describe the plaintiff's product and
does not imply a false affiliation or endorsement by the plaintiff of the
defendant
We agree with the district court that eBay's use of Tiffany's mark on its
website and in sponsored links was lawful.

Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 10203 (2d Cir. 2010).

Indeed, Plaintiff Disney is well aware of the limits of trademark enforceability having

successfully defended a claim brought against them for using the famous Caterpillar trademark

for construction trucks in one of their films. See Caterpillar, Inc. v. The Walt Disney Co., 287 F.

Supp.2d 913 (C.D. Ill. 2003) (on motion for temporary restraining Order seeking to enjoin the

animated movie George of the Jungle 2, in which Caterpillar trucks bearing the Caterpillar marks

are depicted, the Court held that there was no likelihood of confusion that Caterpillar endorsed or

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otherwise sponsored the film arising from such creative use of the mark). Id. at 920.

Accordingly, the manner in which CFH uses the character names at issue in this action

simply does not constitute the improper use of any valid enforceable trademark rights of Plaintiff,

rather the names are merely used to correctly identify the service provided. See Paramount

Pictures Corporation v. Romulan Invasions, 7 U.S.P.Q. 1897, 1988 WL 252376 (Trademark Tr.

& App. Bd. Mar. 31, 1988) (notwithstanding that the Romulans were well-known characters in

the Star Trek franchise, a musical group was permitted to use the name Romulan Invasions

because the Romulan characters in the Star Trek works were not used as a mark to identify

and distinguish the source of any products or services).

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CONCLUSION

For all of the foregoing reasons, Defendants respectfully request that the instant motion for

summary judgment be granted in its entirety, and that Defendants be granted such other and further

relief that the Court deems necessary, just and proper.

Dated: October 13, 2017

New York, New York
Respectfully submitted,

FELDMAN LAW GROUP, P.C.

By: /S/ Jonathan J. Ross

Steven E. Feldman
Steven M. Crosby
Jonathan J. Ross
sfeldman@feldman-law.com
smcrosby@feldman-law.com
jross@feldman-law.com
220 East 42nd Street, Suite 3304
New York, New York 10017
(212) 532-8585
Attorneys for Defendants
Characters for Hire, LLC and
Nick Sarelli

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CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true and correct copy of the foregoing

DEFENDANTS MEMORANDUM OF LAW IN SUPPORT OF MOTION FOR

SUMMARY JUDGMENT, was served upon the following attorneys of record for Plaintiff

through the Courts ECF electronic filing system this 13th day of October 2017:

Louis S. Ederer
louis.ederer@aporter.com
Matthew T. Salzmann
matthew.salzmann@aporter.com
ARNOLD & PORTER LLP
399 Park Avenue
New York, New York 10022
Phone (212) 715-1000
Fax (212) 715-1399

Michael W.O. Holihan (pro hac vice)

michael.holihan@holihanlaw.com
HOLIHAN LAW
1101 North Lake Destiny Road, Suite 275
Maitland, Florida 32751
Phone (407) 660-8575
Fax (407) 660-0510
Attorneys for Plaintiff

/S/ Jonathan J. Ross

Jonathan J. Ross

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