Use of P’s photos to advertise D’s goods must be challenged via copyright, not Lanham Act, under Dastar

Barn Light Electric Company, LLC v. Barnlight Originals,
Inc., 2016 WL 7135076, No.14–cv–1955 (M.D. Fla. Sept. 28, 2016)
Plaintiff BLE, owned by the Scotts, sells light fixtures to
consumers over the internet. Defendant Hi–Lite, owned by the Ohais, makes light
fixtures and sells to distributors, not to end users. In 2008, BLE became a
retail distributor for Hi–Lite and bought lighting components from Hi–Lite.
Hi–Lite provided BLE with photographs, line drawings, and other depictions of
its products, providing BLE a license to use its copyrighted photographs.
Hi–Lite designates its products by parts numbers.
BLE decided to begin making its own light fixtures patterned
after the fixtures sold by Hi–Lite. In 2012, Hi–Lite had a sales rep use BLE’s
website to order the “Barn Light ‘The Original’ Warehouse Shade” and the “Barn
Light Warehouse Pendent Shade.” The BLE website showed the products with the
parts numbers H–15116 and H–15116G, corresponding to Hi–Lite’s parts numbers,
and they were accompanied by pictures from Hi–Lite’s catalog. But BLE shipped
light fixtures bearing BLE’s logo that were actually manufactured by BLE. The
order confirmation for the sale included the Hi-Lite parts numbers.  Hi-Lite terminated the parties’ business
relationship and asked BLE to remove all photos and drawings of Hi-Lite
fixtures from BLE’s website.
After the relationship ended, defendant Ohai created defendant
Barnlight Originals, Inc., a retail seller of light fixtures. BLO sells Hi–Lite
the domain name, and a logo with the United States
Patent and Trademark Office.  Hi-Lite
also sent BLE a C&D charging infringement of a pending patent application.
Hi-Lite counterclaimed for trade dress infringement of the
design of twelve of its light fixtures. Product design trade dress requires a
“high degree of proof” to show secondary meaning.  Hi-Lite lacked survey evidence, and the
representative of a Hi-Lite marketer couldn’t identify the source after being
shown thirty images of products from Hi–Lite (including those at issue), BLE,
and other third parties. For all of the fixtures he was shown, he testified
that there were multiple manufacturers that made the same or very similar
designs.  A previous BLE employee who now
operates his own retail company and sells Hi–Lite products likewise testified
that although he recognized photos of Hi–Lite’s alleged trade dress from its
catalogs, he would not be able to identify the products as manufactured by
Hi–Lite unless he looked at the hidden backing plate with Hi–Lite’s name
embossed on it.
Hi-Lite argued that BLE’s intentional copying and use of its
sales and advertising efforts showed secondary meaning. It also claimed use for
7-12 years and sales of thousands to tens of thousands of units, plus
“considerable” advertising expenses in its catalogs, in magazines, on the
internet, at trade shows, and in show rooms.  Intentional copying isn’t enough to show
secondary meaning, given the other possible motivations for copying and the
perfect acceptability of copying public domain designs. Nor do extensive sales
and advertising show secondary meaning, which requires the effective creation
of consumer recognition.  The court found
that Hi-Lite couldn’t show secondary meaning and granted summary judgment on
the trade dress claims.
Other Lanham Act claims: Hi–Lite alleged that BLE used
Hi–Lite’s photographs and parts numbers to sell BLE products on its own website,
violating the Lanham Act. BLE responded, “Dastar,”
and the court agreed.  Uncredited use of
another’s photos in connection with the sale of goods or services “must be
pursued as copyright claims.” Hi-Lite’s false designation of origin claim was “directed
to the same conduct that underlies its copyright infringement claims,” which
wouldn’t do.  Moreover, Hi-Lite’s claim
would only work if the images themselves were “source-identifying marks” for
Hi-Lite’s products, but the photos merely depicted Hi-Lite’s light fixtures,
thus requiring a protectable trade dress rights in the design and appearance of
the light fixtures, which Hi-Lite lacked. 
Similarly, Hi-Lite didn’t show that its parts numbers functioned as
False advertising: To the extent that this was merely a
restatement of the false designation of origin claim, it failed.  Even without Dastar, Hi-Lite lacked enough evidence to prevail on the
merits.  It failed to show that the
alleged deception—advertising Hi-Lite fixtures but delivering BLE fixtures—was
material.  The only evidence was the
Hi-Lite-induced purchase from the BLE site, but the sales rep wasn’t acting as
a consumer but rather as an agent on behalf of Hi–Lite. BLE’s
misrepresentations “could not have made a difference in his purchasing decision,”
and he wasn’t an expert qualified to opine on likely consumer confusion.

However, claims based on BLE’s alleged use of the BARN LIGHT
ORIGINALS word mark survived.

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