District Court finds that brief appearance of graffiti in one background television scene was de minimis as matter of law, and dismisses graffiti artist’s copyright and trademark claims against HBO.

Plaintiff Itoffee R. Gayle, proceeding pro se, filed a lawsuit against Home Box Office, Inc., alleging copyright and trademark infringement after his graffiti art was featured in the background of one scene in an episode of HBO’s television series “Vinyl.” The scene depicts a woman wearing a red dress walking down a street in New York City and walking past a dumpster allegedly tagged with Gayle’s graffiti that reads “art we all.” According to Gayle, HBO exhibited the graffiti “without permission, compensation, or attribution” and infringed his copyright and trademark rights under both federal and state law.

The district court granted HBO’s motion to dismiss in its entirety, without leave to amend. In so doing, the court compared Gayle’s claim to the court’s 2008 decision in Gottlieb Dev. LLC v. Paramount Pictures Corp., in which the court dismissed a claim of copyright and trademark infringement based on the depiction of a pinball machine in one scene of the film “What Women Want.” Gayle’s claims are similarly based on the “fleeting” depiction of his graffiti in the background of one scene lasting barely two to three seconds. Moreover, the court found that the graffiti, which was barely noticeable, was not featured “by itself or in a close-up” and did not play a “role in the plot.” In fact, the camera is focused on a well-lit actress wearing a bright red dress, whereas the graffiti is difficult to notice and depicted in “low, uneven light such that it is ‘never fully visible,’ let alone legible.” The court ultimately found that the average viewer would not be confused as to whether Gayle’s graffiti was sponsored or approved by HBO, or vice versa, due to how difficult it would be for a viewer to pick out Gayle’s alleged trademark.

The court rejected Gayle’s reliance on a message from an anonymous Instagram user with the moniker “Goldpoo_,” who congratulated Gayle on the appearance of the graffiti in the episode, finding that the user does not represent the “average lay observer” relevant to the copyright inquiry, or the “ordinary prudent consumer” relevant to the trademark inquiry. The court also rejected Gayle’s reliance on alleged statements by HBO production team members as to the importance of graffiti in recreating the 1970s New York City theme of “Vinyl,” explaining that, where the use is de minimis, copying is not actionable, even where the work was chosen to be in the background for some thematic relevance.

The court also dismissed Gayle’s state law claims for unfair competition and trademark infringement based on the same reasons the Lanham Act claims were dismissed. It also took the unusual step of certifying that any appeal of the court’s order “would not be taken in good faith,” and that Gayle would therefore not be entitled to in forma pauperis status on appeal, which would have allowed him to avoid paying certain court filing fees.