Shapiro Arato Bach Wins Motion to Dismiss in Trademark Infringement Lawsuit

On June 3, 2019, Southern District Judge Alvin K. Hellerstein ruled for Shapiro Arato Bach clients Univision Communications Inc. and Gizmodo Media Group, LLC and dismissed a trademark-infringement lawsuit brought by Ebony Magazine over an article published by “The Root,” a digital magazine and online platform operated by Gizmodo.

The article, Dear Ebony Magazine: FU, Pay Your Writers!, criticized Ebony for failing to pay its contributing writers while purporting to be a champion of the African-American community.  The article was accompanied by a mock, parody cover of Ebony Magazine, which included the trademarked Ebony name and logo and fictitious headlines like “Special Deadbeat Edition: #EbonyStillOwes” and “Cheat your black writers by not paying? Ebony owners Michael Gibson & Willard Jackson show us how!”  The article’s author asked readers to show their support for the unpaid writers by sharing the parody cover on social media and asking that the writers be paid.

Ebony Media Operations, LLC filed suit alleging that The Root’s use of the Ebony logo infringed Ebony’s trademarks, constituted false advertising and trademark dilution under the Lanham Act, and violated various state laws.

Shapiro Arato Bach filed a motion to dismiss on behalf of Univision and Gizmodo arguing, among other things, that the parody cover constituted protected speech under the First Amendment and that the substantial public interest in free expression outweighed any claimed risk of confusion as a matter of law.

The Court agreed, finding that the “central fact” that the parody cover’s “primary purpose” was “to criticize [Ebony] Magazine” was “fatal” to each of Ebony’s Lanham Act claims.  As the motion had argued, the Court held “[i]t is difficult to imagine any reader experiencing confusion as to whether” Ebony “sponsored or endorsed” the parody cover, given that it was “harshly and unambiguously critical” of Ebony.  The Court also agreed with Defendants that the parody cover was not actionable as trademark dilution because it “easily” constituted “news reporting,” “parody[],” and “critici[sm]”—all of which fall outside the scope of the Lanham Act’s dilution provision.  Finally, the Court rejected Ebony’s argument that the parody cover was an advertisement for the Root, reasoning that it was “made by a professional writer” and its “central message . . . is simply that [Ebony] should pay its writers in a timely fashion,” which the Court characterized as “an issue of public importance.”

The motion also sought dismissal of Ebony’s state-law claims pursuant to the Texas Citizens Participation Act (“TCPA”), an anti-SLAAP statute.  Like many anti-SLAPP statutes, the TCPA allows defendants to obtain early dismissal of lawsuits brought against them based on their exercise of free-speech rights related to a matter of public concern.  Because Ebony is based in Texas, the motion argued that New York choice-of-law rules required the application of Texas law—including the Texas anti-SLAPP law—to Plaintiff’s state-law claims.  The motion contended that Texas had the greatest interest in remedying its corporate citizens’ alleged injuries and policing its citizens’ attempts to curb free-speech rights through vexatious litigation.  In this case, the Court dismissed the state law claims under Rule 12(b)(6) without reaching the anti-SLAPP issue.

You can read more about the case in an article published by The Root after the victory here.

The Motion to Dismiss and Reply papers can be read here and here.
The Court’s full opinion and order can be read here.