When an author’s name isn’t CMI

Fischer v. Forrest, Nos. 14 Civ. 1304, 1307, 2018 WL 948758
(S.D.N.Y. Feb. 16, 2018)
This very outdoorsily named and themed litigation arose out
of the termination of a longstanding business relationship between plaintiff
Fischer and defendants, including Brushy Mountain Bee Farm, alleging that they
used his likeness and proprietary text and images to promote their own
competing knock-off version of his product, Bee-Quick, a honey harvesting aid.  He sued for copyright infringement, 1202 CMI
violations, and false advertising/NY unfair competition. (Previous
discussion of report & recommendation here
.)  The court adopted and elaborated on the “thorough
and persuasive Report and Recommendation.”
Fischer began using certain phrases in advertising on his
website in 2000. From 2002 onwards, Brushy used similar words to promote
Bee-Quick in advertisements. The parties disputed who wrote the ad copy. Around 2010, Brushy decided to sell its own version of the product,
Natural Honey Harvester, obtained from a third-party vendor. For purposes of
this lawsuit, the court then accepted that Brushy at that point no longer had any “right,”
“license,” or “permission” to use Fischer’s intellectual property, but Fischer
didn’t say that until April 2011, when he sent a C&D complaining about
copyright infringement.  Brushy responded
that “there [did] not seem to be grounds for [Fischer’s] request,” and that
Brushy would “review” Fischer’s concerns if he was more “specific.”
Photos of Bee-Quick remained on Brushy’s website until at
least January 2011, and images of Bee-Quick may have remained available on
Brushy’s website much longer (though it’s not clear whether any full pages used
those images).
In 2011, Brushy introduced its Natural Honey Harvester
product, using much the same language as before but with a different name, with
the intro “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.” Fischer alleged that defendants removed CMI and that defendants’
alteration of their online and print advertisements altered CMI by replacing,
inter alia, the term “Fischer’s Bee-Quick” with “Natural Honey Harvester” in a
sentence describing the product.
Copyright: Fischer’s statutory damages claim failed as a
matter of law because his registration postdated the uncontested date of first
use of the allegedly infringing work. 
Fischer tried to get around this by arguing that Brushy didn’t lose its rights to use his works
when it announced to him its cessation of sales of Bee-Quick, but only until he
sent the C&D (which was after his registration).  But this argument wasn’t available at this
late date, when Fischer’s complaint pled directly contrary to that theory, and
it was too wasteful to allow a fully briefed and decided issue to be completely
changed now; “[a] proceeding before a magistrate judge is not a meaningless
dress rehearsal.”  The changed theory
would be even more wasteful because to decide it, the court would have to
figure out whether Brushy exceeded the scope of its license by using Fischer’s
material to promote Natural Honey Harvester, and thus infringed, before
2012.  And, the court noted, Fischer had
consistently contended that these acts by Brushy were unauthorized; the court
had already found it highly improbable “that Fischer[’s license] [would] allow[
] a competitor to repurpose original works he had created, copyrighted, and
continued to use to promote and sell his own product.”
Likewise, Fischer couldn’t claim statutory damages based on
secondary infringement based on the acts of third-party vendors. These
infringements were “part of a series of related infringements by defendants and
the [third parties] of the same copyrighted work” that predated Fischer’s
registration of his copyright. The fact that Fischer filed two separate
lawsuits, rather than consolidating his claims against Brushy into a single
lawsuit, didn’t change anything.
DMCA 1202: Fischer argued that Brushy removed CMI in
violation of § 1202 when, in revising its ads from promoting Bee-Quick to
promoting Natural Honey Harvester, it substituted, in a sentence, the term
“Natural Honey Harvester” for the term “Fischer’s Bee-Quick.”  CMI includes the name of the author or
copyright owner and can be “contained in the body of a work,” so “Fischer’s”
was capable of constituting CMI.  “But,
to qualify, the word or words said to constitute CMI must also be ‘conveyed in
connection with copies … of a work … or displays of a work ….’” and “[a]n
action for removal of copyright management information requires the information
to be removed from a plaintiff’s product or original work.” 
The works Fischer identified didn’t qualify.  Even assuming that the works Fischer
submitted in conjunction with his copyright registration were covered, no CMI
was removed from those or exact copies/displays of of them; instead, four
discrete phrases were allegedly copied.  
“In those cases where claims of removal of CMI have been held viable,
the underlying work has been substantially or entirely reproduced.” An ad “based
upon an earlier advertisement which in turn drew upon various materials Fischer
sent Brushy” is a kind of “composite” work not covered by 1202.  The four phrases themselves also couldn’t form
the basis of a DMCA claim.  “CMI exists
to inform the public that a work is copyrighted and by whom.” But the four
phrases weren’t CMI; only one even mentioned Fischer, and no reader would find
that “Fischer’s” as used in the phrase “Fischer’s Bee-Quick is a safe, gentle,
and pleasant way to harvest your honey” “speaks to copyright ownership” of that
phrase or the others:
Imagine that the back cover of the
Ian Fleming novel Dr. No. contained the following encomium: “In Ian Fleming’s
Dr. No, Fleming shows his mastery of Cold War spycraft.” Imagine then that a
person lifted language from that review to promote a different thriller,
writing: “In John Le Carré’s Tinker, Tailor, Soldier, Spy, Le Carré shows his
mastery of Cold War spycraft.” Whatever the other legal implications of such
conduct might be, it is inconceivable that a DMCA claim would lie from the
elimination of Fleming’s name. The expression at issue does not connote
Fleming’s copyright ownership of anything, much less the language common to the
two book-promoting blurbs. Fischer’s name—whose deletion Fischer’s DMCA claim
challenges—similarly has no CMI relevance as used in Defendants’ advertisement.
It neither informs the reader that Fischer wrote either the phrase to which
“Fischer’s” is attached or the surrounding text.
False endorsement: Fischer argued that defendants violated
the Lanham Act by including his name in the post-domain path of URLs that
linked to Defendants’ Natural Honey Harvester, e.g., http://brushymountainbeefarm.com/images/799fischers.jpg.  As a matter of law, Fischer couldn’t show
confusion. There was no evidence of actual confusion.  Fischer pointed to a review from Brushy’s
website stating that an later shipment of a product was not as good as an
earlier shipment, but there was no evidence that these were the parties’ respectively.  Fischer also failed to show that the
post-domain path names were the cause of Google search results, and his
evidence showed that Google provided mostly results for his product, which
would indicate that consumers wouldn’t be led astray.  His claims of initial interest confusion were
“factually threadbare” and failed to show intentional deception, which is
important online because consumers can so easily click back.
Bad faith: There was no evidence that the use of his name in
the post-domain URL was knowing; the use of existing URLs was inadvertent,
according to Brushy.  Although two
archived links on the website contain Fischer’s name, they don’t appear on any
webpage advertising Brushy’s products, and were retained to avoid spoliation
concerns.
Consumer sophistication: As the report indicated, “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.”  Plus, precedent indicates that post-domain
paths usually don’t signify source. 
Fischer argued that the continued use of a mark after the
termination of a licensing agreement should be a factor in his favor. Courts in
this district have indeed held that “[w]hen an ex-licensee continues to use a
mark after its license expires, likelihood of confusion is established as a
matter of law.” But here, Brushy hadn’t been using Fischer’s name as a
mark.  The per se rule of the former
licensee cases was inapplicable.
False advertising: Fischer argued that the “Come out with
our own” claim was false because Brushy bought its product from a third
party.   This statement wasn’t literally
false; it didn’t “unavoidably signify that the product offered by Brushy was
created in the first instance by Brushy.” Nor was there evidence of deliberate
deception or consumer confusion.

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