Dastar bars Lanham Act claims against unauthorized copying of photo for album cover

Patterson v. Diggs, No. 18-CV-03142 (NSR), 2019 WL 3996493
(S.D.N.Y. Aug. 23, 2019)
Patterson is “an internationally known photographer” who
took photos of “a nickel-silver casing created by nonparty Moroccan company
Yahya Creation” without a written contract and without being paid, spending
over 80 hours doing so. The relevant photo was registered in 2017, though the
metadata referred to 2013.  This casing,
as far as I can tell, is the cover of the unique copy of the Wu-Tang Clan album
“Once Upon a Time in Shaolin,” although the complaint alleged that the album
uses Patterson’s work as cover art, so I’m a bit confused.  He
sued the Wu-Tang Clan and others for using the work as cover art, advertising
the album for sale [though the album is famously not available for ordinary
sale], and using the work to market and advertise musical concerts and tours.
The copyright claims survived, but not Lanham Act claims.  CMI removal claims also survived because
Patterson alleged that defendants, without authorization, “intentionally
remov[ed] and/or alter[ed] the copyright information, in the form of metadata,
on the copy of at least Plaintiff’s copyrighted photograph, and distribut[ed]
copyright management information with knowledge that the copyright management
information had been removed or altered … and distributed and publicly
displayed the material, knowing that copyright management information had been
removed or altered.” This was supported with an exhibit purporting to show the
alleged metadata included in one photograph, which lists Patterson as the
author of the photograph, marks the status of the photograph as “Copyrighted,”
contains a “Copyright Notice” that reads, “image © 2013 Warren Wesley Patterson,”
and includes a “Copyright Info URL” box listing Patterson’s website.  [If it’s metadata, how is it supposed to
persist in analog copies? I can also imagine some other courts being pickier
about alleging which defendants did what given 1202’s nested knowledge requirements. This issue may instead be the subject
of targeted summary judgment, if the case gets that far.]
Likewise, vicarious copyright infringement claims survived
because Patterson alleged the right and ability to supervise plus direct
financial benefit, “including without limitation [through] revenue sharing
and/or royalty payments for each infringing version [of the Album] sold.” It
was at least arguable that Patterson’s work, “which is prominently featured in
advertisements for the Album and in entertainment articles describing the
Album, has played a role in the Album’s marketability, reaping Defendants
direct financial benefits in the form of album sales.”  [Unless I misunderstand what’s going on with
the album entirely, this allegation seems misleading, since there’s only one
copy, now
in the hands of the government
, whose marketability is focused on its
uniqueness in an age of mechanical reproduction.] 
Contributory infringement claims were also sufficiently
pled. Defendants allegedly “induced, caused, and/or materially contributed to
the direct infringement of Plaintiffs’ [W]ork … by, among other things,
commissioning and/or licensing the electronic versions of the Plaintiff’s
photograph, and providing galley proofs or similar high-quality source material
for rendition into electronic format.” Though allegations of constructive or
actual knowledge were “a legal conclusion not entitled to a presumption of
truth,” there were sufficient allegations related to knowledge—Patterson
provided email exchanges between himself and one of the defendants related to
the work and referring to the Album. [Which sounds like there’s going to be a
strong implied license defense for at least some uses.]  “[D]rawing all reasonable inferences in
Plaintiff’s favor, it is plausible that the remaining Defendants, as the
recording artists and distributors of the Album, would have reason to know of
the infringing use of Plaintiff’s Work on the Album cover.”  [FWIW, many of the members of Wu-Tang  ultimately said, apparently even before this lawsuit, that they didn’t even know their contributions were going to be worked into an
album.  I also learned that at least one
of the 120 members of the venire who said they couldn’t give Martin Shkreli a
fair trial explained
that it was because  “He disrespected the
Wu-Tang.”
]
Lanham Act claims: Patterson alleged both source/endorsement
confusion and false advertising.  For the
former, Patterson alleged that using the cover misrepresented the origin of the
art.  “However, the author of a
photograph that is reproduced in tangible products or goods such as a musical
album cover is not the ‘origin of goods’ within the meaning of the Lanham Act.”
Shepard v. European Pressphoto Agency, 291 F. Supp. 3d 465 (S.D.N.Y. 2017), [wrongly]
held that the author of a “communicative product” such as a photograph who is
also the producer of tangible goods offered for sale may assert a Lanham Act
claim for false designation of origin. This case was distinguishable because
Patterson didn’t allege that he advertised or sold any of his photos, even
though he alleged that the parties’ “products and services” target the “exact
same consumers.” Anyway, the underlying theory was “meritless, as the Amended
Complaint clearly states that Defendants created the Album, and consumers who
purchased the Album were not falsely informed about the origins of the Album
because Defendants did in fact produce it.”
And you can’t restyle the exact same Dastar-barred
facts as false advertising to avoid Dastar. Allegations that
defendants gave the false impression that Patterson authorized the reproduction
and distribution of the work didn’t allege a misrepresentation of “the nature,
characteristics, qualities, or geographic origin” of defendants’ goods. “The
import of Dastar that an author’s recourse for unauthorized use is in copyright
cannot be avoided by shoe-horning a claim into section 43(a)(1)(B) rather than
43(a)(1)(A).”

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