What Dastar took, does 1202 give back?

Another older case found in my year-end roundup.

Pilla v. Gilat, 2020
WL 1309086, No. 19-CV-2255 (KMK) (S.D.N.Y. Mar. 19, 2020)

Pilla provides
“professional architectural services to various construction projects.” Defendants
own a “luxury construction project” at 324–326 West 108th Street in New York
City involving the renovations of two existing five-story buildings and a
sixth-story addition to the buildings. Pilla provided architectural services to
defendants for the project and registered two sets of architectural drawings
therefor. Pilla alleged that defendants began unlawfully copying the designs,
including by submitting unauthorized copies to the NYC Department of Buildings,
representing that the submitted drawings were their own, and Gilat
“intentionally removed [Plaintiff’s] name and [the] notice of copyright” from
the original designs.

The court couldn’t
resolve the substantial similarity issues on a motion to dismiss, even given
that the existing building constrained the designs. Defendants’ arguments, such
as that similarities were attributable to the codes of the Landmark
Preservation Commission, had to await summary judgment. Even for architecture,
dismissal on a motion to dismiss required an “utter lack of similarity,” not
present here.

Of more interest: Dastar
barred the false designation of origin claim. The “copying of creative content
like [architectural drawings] is not protected by the origin of work provision
of the Lanham Act … precisely because this sort of claim falls within the
purview of copyright law.” (Dismissed without prejudice in case plaintiff could
allege the presentation of a “tangible good[ ] … offered for sale.”  The court gets a bit confused: it suggests
that allegations of copying “with no revisions or changes” could state a false
designation of origin claim, but copying to create a derivative work couldn’t;
this is just wrong because of the “tangible good” issue.)

DMCA §1202: The
court refuses to dismiss the claim for CMI removal/alteration. Courts in
general have not always taken 1202 seriously by its own terms, perhaps because
it seems very limited if they were to do so. By its own terms, 1202 treats
“removing” CMI differently from “distributing copies that have had the CMI
removed.” But, as the court here does, courts often collapse those two together.
On a motion to dismiss, Pilla sufficiently alleged the necessary double intent,
“albeit barely.” It alleged that there was CMI on its designs: its logo, name,
and seal, as well as a note stating, “[t]he entire contents of this document
… and all copyrights therein[ ] are and shall remain the sole and exclusive
property of [Plaintiff]. The documents and their contents may not be used,
photocopied[,] or reproduced digitally, electronically[,] or in any other
manner without the express written consent of [Plaintiff].”

It wasn’t necessary
to allege how, when, or where the CMI removal occurred, and Pilla sufficiently
alleged that this was intentional. And Pilla alleged that defendants copied the
designs and submitted derivative designs to NYC. [Note that the court doesn’t
require explanation or allegation of how this removal induced, enabled, etc. infringement—would
fewer copies have been created if they’d left this information on?] The court
signalled that it would be open to the argument that infringing derivative
works (that is, nonexact copies) can’t violate §1202, but reserved this issue
for later development. And Pilla seemed to state a claim for provision of false
CMI, for the same reasons.

from Blogger https://ift.tt/2WegtnJ

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