Dastar bars TM claim based on unlicensed copying of footage

Fioranelli v. CBS Broadcasting Inc., No. 15-CV-952, 2017 WL
1400119, — F. Supp. 3d – (S.D.N.Y.  Jan.
19, 2017)
Fioranelli, a photojournalist who was one of four reporters
allowed to enter the World Trade Center site on September 11, 2001, sued for
copyright infringement and related claims. 
In 2014, he registered copyrights on both his own commercially available
documentary of the events, as well as raw footage of the photographs he took
that day.  In 2002, he settled a previous
lawsuit with CBS and granted a limited, nonexclusive license to CBS to use his
work “in all regularly-scheduled and breaking news programming and all news
magazine programs … and in the advertising, publicity and promotions therefor,
produced by CBS owned television stations and CBS News.”  In 2005-2006, allegedly in violation of the
License Agreement, CBS allegedly sublicensed some or all of the 9/11 Material
to at least fifteen companies.
The court first found that Fioranelli stated a claim for
copyright infringement, not just breach of a license agreement, given that the
acts alleged went outside the license. “[I]f ‘a license is limited in scope and
the licensee acts outside the scope, the licensor can bring an action for
copyright infringement.’ ”  The
allegations here were “wholly outside the scope of the License Agreement.” Inducement
claims against many of the defendants were, however, dismissed for want of
The court also got rid of Fioranelli’s Lanham Act and
state-law claims on Dastar and
preemption grounds.  Fioranelli argued
that he was allowed to bring a Lanham Act claim “to address the activity of
Defendants that directly affected his business and not just his copyright
rights,” that he had a registration and the plaintiff in Dastar didn’t, and that he produced a tangible good—his footage—not
just an idea.
Dastar applies to
copyrighted and public domain material alike. 
The allegations that “CBS has engaged in false designation of origin and
false descriptions of fact regarding Plaintiff and his work” and that the other
defendants “individually published [the 9/11 Material] as part of their own
media products,” and thereby “have caused or are likely to cause confusion, to
cause mistake, or to deceive as to the origin of Plaintiff’s Work among the
public” stated “the exact type of claim that the holding in Dastar prohibits.”
Consumers who viewed the 9/11 Material as part of
defendants’ programs were “not falsely informed about the origins of the
[material] because [Defendants] did in fact produce” it. Just like the creator
of the footage in Dastar, Fioranelli
was the originator, not the “producer of tangible goods” protected by the
Lanham Act.

The state-law claims fared similarly. The only extra element Fioranelli could
identify was that his claims were based on “damage to his business,” but he
didn’t explain how the alleged damage to his business was the result of
anything other than defendants’ unauthorized copying.

Because the infringing acts alleged commenced before
Fioranelli secured copyright registrations, he was not entitled to statutory
damages or attorney’s fees (though the court declined to address at this time
the argument that the court’s inherent supervisory power allowed it to award
attorney’s fees regardless). 

from Blogger http://ift.tt/2oDWyeH

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