Bee aggressive: Copied ad leads to grab bag of claims

Fischer v. Forrest, 2017
WL 2992663, — F. Supp. 3d –, 14 Civ. 1307 (S.D.N.Y. Jul. 14, 2017) (report and
recommendation)
Fischer invented
Fischer’s Bee-Quick, a product used to facilitate honey harvesting, and
marketed it using, among other things, the following four phrases:
a) “Are you tired of your spouse making you sleep in the garage after
using Butyric Anhydride?”
b) “Are you tired of using a hazardous product on the bees you love?”
c) “Fischer’s Bee-Quick is a safe, gentle, and pleasant way to harvest
your honey”
d) “A Natural, Non-Toxic Blend Of Oils and Herbal Extracts”
Defendants were in
some way involved with Brushy Mountain Bee Farm, which initially resold
Fischer’s product, using the text (whose authorship was disputed):
This 100% Natural, non-toxic blend of oils and herb extracts works just
like Bee Go and it smells good! Fischer’s Bee Quick is a safe, gentle, and
pleasant way to harvest your honey. Are you tired of your spouse making you
sleep in the garage after using Bee Go? Are you tired of using a hazardous
product on the bees you love? Then this is the product for you!
Around 2010, Brushy
Mountain decided to sell a comparable product that performed the same function;
Brushy Mountan bought a third party product and labeled it as “Natural Honey
Harvester,” but continued to use nearly the same promotional text.  A 2011 Brushy Mountain catalog used the
phrases as follows:
For years we have promoted the use of a natural product to harvest
honey but an unreliable supply of such a product has forced us to come out with
our own. This 100% Natural, non-toxic blend of oils and herb extracts works
just like Bee Go® and it smells good! Natural Honey Harvester™ is a safe,
gentle, and pleasant way to harvest your honey. Are you tired of your spouse making
you sleep in the garage after using Bee Go®? Are you tired of using hazardous
products on the bees you love? Then this is the product for you!
Fischer also alleged
that defendants intentionally removed copyright management information (“CMI”)
from Fischer’s promotional brochure and the Fischer’s Bee-Quick bottle photos. Defendants
changed the textual reference in one of the phrases from “Fischer’s Bee-Quick”
to “Natural Honey Harvester,” and allegedly also stripped the metadata from
Fischer’s original Fischer’s Bee-Quick bottle photo displayed on Brushy
Mountain’s website, and overlaid the photo with a watermark of the Brushy
Mountain Bee Farm logo.
There were lots of
factual disputes; the magistrate recommended not granting summary judgment on
the ground that Fischer’s copyright registration was invalid, even though the
first submission (of several) to the Copyright Office didn’t contain the
brochure at the heart of the case.  The
magistrate also recommended finding the brochure as a whole copyrightable, and
concluded that the relevant portions evinced enough originality to be
protected, at least as a whole. The “rhetorical questions that play on the
worries of beekeepers” were unique and the whole of the brochure was greater
than the sum of its parts, although the phrase “A Natural, Non-Toxic Blend Of
Oils and Herbal Extracts” was merely descriptive of the product ingredients. Even
in isolation, though, most if not all of the rhetorical questions were long enough for copyright protection, particularly the “sleep in the garage” bit.
Unfortunately for
Fischer, the copyright claim still had fatal problems.  (1) He did not register before the
infringement began, so he was not eligible for statutory damages or attorneys’
fees.  (As an aside, the magistrate
analyzed the relevance of secondary liability to the rule that infringements
that continue past the date of registration don’t provide eligibility for
statutory damages—although two of the vendors for  which Brushy Mountain was allegedly
secondarily liable began their infringing activities after the registration,
their infringements were republications of the initial ad, and thus part of an
ongoing series of infringing acts that didn’t restart the clock.)  (2) Fischer elected statutory damages and
declined to submit evidence of actual damages (which probably would have been
hard to prove; this is not the type of work for which there is a licensing
market in which money changes hands). 
(3) Defendants agreed to remove the challenged text, mooting the claim
for injunctive relief.  With nothing left
for a court to do, the magistrate recommended granting summary judgment to
defendants on the copyright claim.
DMCA claim:  Fischer alleged that defendants stripped the
metadata from Fischer’s original Fischer’s Bee-Quick bottle photo displayed on
Brushy Mountain’s website, but the magistrate recommended rejecting that
argument because he submitted no evidence that the metadata included CMI; not
all metadata is CMI. Fischer also argued that the allegedly infringing ad had
CMI stripped from it because defendants changed the phrase, “Fischer’s
Bee-Quick™ is a safe, gentle, and pleasant way to harvest your honey,” by
replacing “Fischer’s Bee-Quick™” with “Natural Honey Harvester”:
  
side by side comparison
Fischer argued that the
product’s name, because it had Fischer’s name in it, was CMI.  To prevail on a §1202 claim, Fischer had to
show that defendants “intentionally remove[d]” CMI that was “conveyed in
connection with copies … of [his] work or … displays of [his] work.” The
relevant “work” here was the the brochure, while defendants created derivative
works of the brochure. The creation of infringing derivative works didn’t
qualify as the “removal” of CMI from the original work. 
The magistrate was
also skeptical that even more direct “extraction” of phrases from a larger work
could constitute “removal” of CMI, since the statute contemplates “copies” of a
work and extraction of “distinct elements” of a work doesn’t constitute a “copy.” 
If, for example, someone extracted and reproduced several sentences
from a copyrighted Sherlock Holmes story, without crediting the Conan Doyle
Estate, it would stretch the definition of “removal” to say that CMI had been
“removed” from the copyrighted “work.” It might be copyright infringement, but
it would not be a DMCA violation.
This conclusion
makes total sense—otherwise Blurred Lines
should also have been the basis of a §1202 claim—but it requires a bit of fancy
footwork to reconcile with the idea that substantial similarity can constitute
a violation of the reproduction right, further strengthening my view that the
derivative works right should be where such claims live.
Even assuming that
the relevant “work” was the four key phrases collectively, Fischer didn’t show
that the phrases contained CMI.  “The
DMCA’s expansive definition of CMI cannot trigger liability any time a person’s
name is contained in a copyrighted work without reference to how that
information was used and displayed on the work itself.”  The name of the product discussed in the work
is not CMI for the work; such a name, even if includes the author’s name, “does
not have any CMI significance—it simply is part of the product’s name (just
like Kellogg’s Corn Flakes or Wrigley’s Chewing Gum).”
Fischer didn’t plead
a trademark infringement claim, the magistrate reasoned, because he
consistently alleged only “counterfeiting,” even when represented by
counsel. 
Fischer’s §43(a)
false endorsement claim also failed. 
This claim was based on Brushy Mountain’s use of URLs that, even after
they switched products, still contained “fischer” as part of the address
string, e.g., http://ift.tt/2vxXJjD
 

page for Fischer replacement, with Fischer’s name still in URL post-domain path
The judge applied
the multifactor confusion test, and found that the claimed strength of the
mark, mark similarity, and product similarity all favored Fischer.  But there was no evidence of actual confusion
or bad faith, which the judge found to be the most significant under these circumstances.  This wasn’t a domain name case; the use of “Fischers.com”
or “Fischersbeequick.com” to sell a competing product would support a false
endorsement claim. But a name “buried in the post-domain paths of the Brushy
Mountain web pages” wasn’t likely to confuse consumers about Fischer’s
endorsement or approval. “No consumers are likely to believe that Fischer has
somehow endorsed or approved Natural Honey Harvester when viewing the
post-domain portion of the URL, if they even see it at all.”  Likewise, consumer sophistication favored
defendants.  “Whether defined as the
typical consumer of beekeeping products, or internet users writ large, no
ordinary consumer is likely to see Fischer’s name in the post-domain path of
the URL and wonder if that signified his endorsement of a completely different
product in the accompanying web page.” 
Nor did Fischer provide evidence that, as he contended, the use of his
name in the address led Brushy Mountain’s pages to appear higher in search
results, or that, even if that were true, that fact would have any bearing on
consumer confusion..
Fischer’s only
evidence of actual confusion was an undated review on the Brushy Mountain
website complaining: “The first bottle I bought last year worked well but this
new stuff was a complete waste of time and money.” But there was no evidence
that the commenter ever bought Fischer’s product, as opposed to two different
bottles of the replacement product; defendants submitted an affidavit stating
that the review was posted two and a half years after Brushy Mountain stopped
selling Fischer’s product.
The New York unfair
competition claim is like a §43(a) claim, but requires “‘either actual
confusion or a likelihood of confusion, and there must be ‘some showing of bad
faith’ on the part of the defendants.” So that was a no-go too.
Note: why not a
right of publicity claim?  Would the
court’s CMI reasoning “this is a product name, not an author name” also apply
there?  Would there be any other defense?
The magistrate also
recommended tossing out Fischer’s false advertising claim, which was based on
the statement, “For years we have promoted the use of a natural product to
harvest honey but an unreliable supply of such a product has forced us to come
out with our own. This 100% Natural, non-toxic blend of oils and herb extracts
works just like Bee Go® and it smells good!”  Fischer primarily argued that “our own” was
false, because they bought a third-party product, though he also claimed that “the
third-party manufacturer makes nothing but cleaning products, calling into
question if the product is even food-grade, let alone ‘100% Natural”’  Furthermore, the only thing one defendant said
about whether the product was “actually natural” in deposition was “I assume
so.”  Given where the burden of proof
lies in a private false advertising claim, this wasn’t enough to proceed on the
100% natural claim, even though it was material.
As for “our own,”
that wasn’t literally false; while it could mean that defendants selected the
ingredients and personally created the product, but “another reasonable
interpretation is that defendants marketed a natural honey harvesting product,
from whatever source, under their brand name,” which was true. There was no
evidence of consumer deception, even though Fischer testified that unnamed
competitors had responded to the ad by making their own knockoffs—even if
knockoffs emerged, that didn’t mean the ad caused them, or that consumers were
deceived.

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