Antidote International Films, Inc. v. Bloomsbury Publishing, PLC, -- F.Supp.2d --, 2006 WL 3822484 (S.D.N.Y.)
This case has juicy facts because of its connection to debates about authenticity in memoirs and in fiction. But it’s really an important case about Dastar.
Plaintiff Antidote International Films, Inc. is an independent film production company. Defendant Bloomsbury is a London publisher, which in 2000 published a novel, Sarah. Sarah tells the story of a 12-year-old male prostitute in competition with his mother for tricks. Laura Albert wrote Sarah under the name J.T. Leroy, a persona she created. Other defendants are the corporation created to handle J.T. Leroy’s business interests and a woman who acted as a manager for Leroy, the corporation, and Albert. Though Sarah was published as fiction, defendants allegedly made a number of public statements strongly suggesting that it was based on J.T. Leroy’s own experiences (e.g., calling the book “semi-autobiographical”). These statements appeared in press releases, on a website, in book blurbs, and in other advertising. Albert also pretended to be J.T. Leroy in communications by fax, email, and telephone. For public appearances, Albert appered as “Speedie,” Leroy’s “keeper,” and the role of Leroy was played by a confederate, a woman in dark sunglasses and a wig.
Plaintiff’s founder believed in the authenticity of Sarah’s narrative and, based on his belief that the novel “was an aesthetic response to a horrific, real-life set of experiences,” decided to develop a film based on the story. He, like others, was impressed by Leroy’s ability to use art to overcome horrific personal circumstances, and had greater sympathy for the novel’s protagonist because he thought the protagonist was based on Leroy himself.
As a result, plaintiff negotiated for an option on the film rights for three years at $15,000 per year. Defendants allegedly took further steps during and after the negotiations to convince plaintiff that Leroy was real, for example by providing plaintiff with a false IRS form W-9 signed by Leroy.
In 2005, New York Magazine published an article claiming that Leroy was a mirage, and Albert was quickly exposed as Sarah’s author. Plaintiff stopped working on the film adaptation. Plaintiff alleged that, because of defendants’ fraud, no distributor or financier would invest in a project based on Sarah, whose value was predicated on the connection between Leroy, his experiences, and the novel; the book is now a joke (like Opal Mehta, or A Million Little Pieces).
Defendants moved to dismiss plaintiff’s Lanham Act claims. First, plaintiff argued that defendants’ representations constituted false designations of origin. Under Dastar, however, “origin” means the producer of the physical book, not the source of the expression therein. Plaintiff tried to argue around Dastar on the theory that Dastar came out the way it did because of the potential copyright-trademark conflict, which isn’t present here. The court concluded, however, that the rule laid down by Dastar applies regardless of whether a copyright claim is available.
Plaintiff also tried a more plausible distinction – it argued that defendants’ false representations were likely to cause confusion not just over the “origin” of Sarah, but also over “the affiliation, connection, or association of [Bloomsbury] with another person,” to wit, “J.T. Leroy.” Unfortunately, the complaint only mentioned “origin,” and plaintiff failed to cure this defect by amendment. The court went on to hold that, even if the complaint had properly alleged such confusion, it would simply restate the false designation of origin claims and would still be barred by Dastar.
I think that last conclusion is wrong, though it’s unlikely that the Supreme Court will tell us more about what Dastar means any time soon. A false affiliation claim doesn’t pose the Catch-22 problem in Dastar, where the defendant would have gotten sued for whatever it said. There is no cause of action for failing to disclose an affiliation or connection (setting aside possible false advertising claims under §43(a)(1)(B), which the Court left available in Dastar – though see below). Thus, only false affirmative claims about affiliation would be actionable under plaintiff’s theory. I have taught my trademark classes that claims such as those in Gilliam v. ABC probably survive Dastar precisely because of this distinction – the problem in Gilliam was that ABC explicitly identified Monty Python as the author of the mutilated works. Likewise, under the court’s rule, it seems that one could promote a movie as Stephen King’s Lawnmower Man with impunity, even if Stephen King’s closest connection to the film was that he once visited Hollywood. See Jane Ginsburg’s article on Dastar for more.
More broadly, you can’t apply “origin means physical origin” to “affiliation, connection, or association” claims without writing the latter out of the statute entirely. The basic claim of affiliation is precisely that someone other than the producer of the physical object endorsed, sponsored, or otherwise approved of the product or service.
Reading the decision narrowly, the court is holding that a claim of “authorship” is not equivalent to a claim of “affiliation, connection, or association” and must instead be brought under the (precluded) head of “origin.” But that’s hardly required by Dastar, given the absence of the policy considerations driving the Court’s interpretation of “origin.” The court says its extension of Dastar is necessary to avoid making Dastar “meaningless,” but the result in Dastar would be the same under my proposed rule, because Dastar didn’t make any affirmative claim of affiliation with Fox.
One might say this extra rule is necessary so that, when a well-known work enters the public domain -- if one ever does again -- the author’s heirs/former owner won’t be able to claim trademark rights to block free publication. Yet there would be nothing false about a claim that the author wrote the work in those circumstances, and almost any court would recognize that – and, one would hope, would award the defendants in such cases their attorneys’ fees. I’m not always a fan of leaving the limiting constructions for cases in which they’re needed, because courts sometimes forget that they’re needed, but here I’m willing to trust judicial good sense.
There is a policy problem present in this case: I can see a good argument that people shouldn’t be able to sue under the Lanham Act when books weren’t written by their supposed authors, or their supposed authors didn’t have the experiences they claimed to have, because (a) ghostwriting and exaggeration are standard publishing practices and (b) standard trademark analysis is insensitive to the First Amendment considerations involved. I’m sympathetic, but a rule crafted to address this doesn’t and shouldn’t come out of Dastar but rather out of the Rogers v. Grimaldi line of cases creating separate rules for expressive works. The Rogers line, not incidentally, takes exactly the opposite tack of Dastar, crafting medium-specific rules rather than defining words in the Lanham Act to cover all products and services. Rogers also left open the possibility of liability for explicit falsehoods in titles, like Ginger Rogers: My Story, whereas the court’s ruling here would preclude such liability.
Plaintiff separately alleged false advertising. The obvious problem is that defendants were plaintiff’s suppliers, not its competitors, which should be the end of it. But the court, again interpreting Dastar expansively, ruled that no Lanham Act claim could be brought based on a false authorship theory. Dastar’s reference to possible false advertising claims, the court said, was limited to representations about the substance of a work, rather than representations about the work’s authorship. Dastar’s holding that “origin” refers to producers, not authors, “necessarily implies” that §43(a)(1)(B)’s use of the terms “nature, characteristics, [and] qualities” excludes authorship.
The court’s ruling on false affiliation was shaky, but this one is worse. Pragmatically: Authorship and substance interpenetrate. Words written by one person (a president, a Holocaust survivor, a white man) mean something different than words written by another person who was formed by different experiences.
Doctrinally: Lanham Act false advertising claims have, along with the judicially imposed standing requirement and the requirement that false statements be made in “advertising or promotion,” a materiality requirement that again largely avoids the policy problems that the Supreme Court used to guide its interpretation of “origin.” Contrary to what the court here said, Fox wouldn’t have had a false advertising claim against Dastar, because it’s ludicrous to think that the omission of Fox’s name from Dastar’s advertising would be material to consumers, much less misleading. (At the heart of the problem in Dastar, I’m tempted to argue, is that the trademark half of the Lanham Act lacks a materiality requirement.)
Plaintiff also brought fraud claims. The elements of common law fraud are “a material, false representation, an intent to defraud thereby, and reasonable reliance on the representation, causing damage to the plaintiff.” The court found that plaintiff had adequately alleged all these elements.
The result raises another difficulty, again noted by scholars before me -- see Tom Bell’s Misunderestimating Dastar. If Dastar’s interpretation of “origin” is necessary to avoid conflict with copyright law and possible constitutional invalidity, then shouldn’t coordinate state-law claims based on false representations of authorship also be preempted? (Given plaintiff's preservation of state law claims, it should probably have added a state consumer protection claim, which replicates the Lanham Act false advertising claim without being controlled by Dastar.) On these facts, there is no conflict with copyright law, however, which suggests that more sensitive rules for avoiding copyright-trademark conflicts could be crafted than Dastar provided.
Dastar’s effects, it seems, keep widening like a stone thrown into the murky Lanham Act waters. When will we see the last ripple?
Happy New Year, all.
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