Is a domain name CMI?

Personal Keepsakes, Inc. v. Personalizationmall.com, Inc., No. 11 C 5177 (N.D. Ill. Feb. 8, 2012)

Plaintiff PKI, which runs a website selling personalized gifts and knickknacks, sued defendants and competitors Pmall, Techny, and Abernook, LLC, alleging that they took PKI’s copyrighted poems and put them on their own products.  Defendants answered the copyright infringement claim but moved to dismiss the Lanham Act, DMCA CMI, and state-law claims.  The court granted almost all of the motion to dismiss.

PKI’s poems are incorporated into personalized gift items, given to commemorate baptism (“On Your Baptism Day”) or the services of a young ring-bearer.  Pmall sells a “Walk With Jesus© Baptism Keepsake” that uses nearly identical text, though with different line breaks.  PKI:

PKI’s text:

You are a precious gift to us

sent from God above.

He placed you in our loving arms and

blessed us with your love.

May you always walk with Jesus -

Live your faith in all you do.

Treasuring God’s love -

the way we treasure

the priceless gift of you.

Pmall:

Pmall’s text:

You are a precious gift to me sent from God above.  He placed you in my loving arms and blessed me with your love.  May you always walk with Jesus - live your faith in all that you do.  Treasuring God’s love the way I treasure the priceless gift of you.
PKI's ring bearer gift:

PKI’s text for its ring bearer gift:

How lucky we are to have a ring bearer who’s so cute in every way.

Someone who knows how to walk down an aisle

and steal everyone’s heart away.

So thank you for being our ring bearer,

and helping to lead the way.

But thank you most of all for helping

to make ours a perfect wedding day.

Techny's ring bearer gift:

Techny’s text:

How lucky we are to have a ring bearer

who’s so cute in every way.

Someone who knows how to walk

down the aisle

stealing everyone’s heart away.

Thank you for being our ring bearer,

and helping in a special way.

But thank you most of all for helping

to make ours a perfect wedding day.

Abernook’s text is the same. Abernook's gift:

Dastar barred the §43(a)(1)(A) claim for false designation of origin.  Defendants sell different products than PKI does; they don’t repackage PKI’s tangible products and PKI isn’t the origin of defendants’ products. The court wasn’t impressed by the few cases that have misunderstood Dastar somehow to allow a remaining cause of action for pure copying, though rather than explaining that these cases were just wrong the court said that they were distinguishable because of allegedly wholesale copying of photographs.  I don’t know what makes copying a photo different from copying a poem—special treatment for images strikes again—but the court thought it made a difference that the poems here were incorporated into products instead of sold on their own.  PKI also said that Dastar was about public domain works, but of course it’s about the definition of “origin” in the Lanham Act.

Then PKI tried §43(a)(1)(B), and the court followed the majority caselaw that reads Dastar’s preservation of a false advertising cause of action out of existence.  The identity of the author of a poem, the court concluded, was not a “nature,” a “characteristic,” or a “quality.”  Ignoring the competition and materiality aspects of the false advertising cause of action, the court concluded that it would be wrong to preserve a false advertising claim because then the same claim rejected in Dastar would be available against any product that was “commercially advertised (as most products are).”  The overriding concern of the Dastar Court was to avoid effectively expanding copyright protection, so no claim could be allowed here.  (Which doesn’t explain why there wouldn’t be a cause of action against someone who falsely advertised to have found a new Shakespeare play, but at this point I should probably give up.)

The DMCA bans distributing false CMI, removing or altering CMI, or distributing works knowing the CMI has been removed or altered (in a way that facilitates copyright infringement, but the court doesn’t mention that part).  CMI is information “conveyed in connection with copies” of the work.   PKI argued that defendants removed the CMI conveyed with the poems when it copied the poems, and then provided false CMI on the pages selling the infringing products and in their general website terms and conditions, which make various statements about copyrights on the website.

PKI argued that the poetrygift.com domain name, the titles of the works (“Baptism Gifts”/“On Your Baptism Day” and “Ring Bearer Gift”/“To Our Ring Bearer”), and the copyright notice on every page of the website were CMI.  But poetrygift.com couldn’t be CMI, because PKI, not poetrygift.com, was the copyright owner.  The domain name was at best an indicator of the seller, “which says nothing about the copyright status of the product; in the same way, Amazon.com does not suggest that Amazon owns copyrights with respect to every product it sells.”  The titles weren’t CMI because the copyright registrations didn’t list those titles as they appeared on PKI’s site, but rather “Personal Keepsakes VI” and “Personal Keepsakes X.” Calling the titles CMI wouldn’t assist in informing the public that the works were copyrighted, which is the point of CMI.  “Put another way, if someone saw the poem, and then searched its title to see if it was copyrighted, the search would come up empty because the title of the work is not ‘On Your Baptism Day’ or ‘Baptism Gifts’ for purposes of copyright.  Allowing a plaintiff to make out a DMCA claim based on alleged CMI that does not link up in any way to the copyright registration is an invitation to unfair litigation against parties who have tried to tread carefully to avoid copyright infringment.”  (Of course, on the other side, titles are not copyrightable, and there are numerous different works with the same title.)

PKI alleged that each page of its website had a copyright notice, but its exhibits—the first pages of website printouts—didn’t show such notices and thus PKI didn’t state a plausible DMCA claim. As of the date of the court’s order, the court’s own browsing determined that PKI’s notice read “Web Site and Original Verses - © (1991-2012).”  The court found it “plausible” that the notice referred to the poems at issue if it appeared on the pages shown by the exhibits.

As for false CMI, PKI alleged that Pmall used false CMI when it put the copyright “©” in the name of its “Walk With Jesus© Baptism Keepsake.”  Because the © follows a line in the poem that forms the title “Walk With Jesus,” the court found it plausible that the © could refer to the poem, and not the product as a whole, and thus PKI stated a DMCA claim as to Pmall.  Abernook and Techny, however, didn’t use a copyright symbol in connection with a line from the poem, so PKI couldn’t state a claim as to them.  

PKI also argued that defendants made statements on their website terms and conditions pages claiming to own the poems.   Pmall’s website said:

The Website contains intellectual property rights owned by Pmall and any unauthorized use of the Website may violate or infringe upon the intellectual property rights of Pmall or a third party.

Techny’s website giftsforyounow.com said:

All content included on this site, such as text, graphics, logos, button icons, images, audio clips, digital downloads, data compilations, and software, is the property of this site’s owner or its content suppliers and protected by United States and international copyright laws.

Abernook’s statement was similar to Techny’s.

As to Pmall, the court found that the T&Cs only said that Pmall owns at least some IP rights on its site, and, in the absence of any allegations to the contrary, that statement was true.  The other statements were in absolute terms, but the court found that they weren’t CMI.  They weren’t close to the poem, but on a different page.  Other courts have found that a defendant must remove the CMI from the body of the work or at least from the “area around” the work to be subject to the DMCA, and the court applied the same rule in reverse to false CMI.  “[A]s a matter of law, if a general copyright notice appears on an entirely different webpage than the work at issue, then that CMI is not ‘conveyed’ with the work and no claim will lie under the DMCA.”

PKI could, however, replead its dismissed DMCA claims about its copyright notice if consistent with the court’s opinion.

PKI’s state law claims were for statutory and common-law unfair competition/deceptive trade practices.  These were just restated copyright claims and thus preempted.  “[E]very copyright claim inherently involves the notions of unfair competition and consumer confusion and deception, because it is fundamentally not fair competition and confusing to customers to rip off another’s protected work.”  (This is of course untrue in a variety of ways, as copyright infringement may be carried out by noncompetitors and consumers may not be in any sense confused about anything, even in our world of infinite licensing.  But that doesn’t mean the conclusion about preemption is wrong, since in these circumstances the idea of confusion is based on the same theory rejected in Dastar.)