Wednesday, July 21, 2010

Dastar precludes false advertising claim against explicit misattribution

Rudovsky v. West Publishing Corp., 2010 WL 2804844 (E.D. Pa.)

Add another to the list of Dastar-defeated attribution claimants. Plaintiffs, two law professors, wrote a two-volume treatise, published by West in 1987, on Pennsylvania criminal procedure, with annual pocket parts. (I remember filing the pocket parts in my mother’s office when I was a kid; a good job for a kid, really.) In 2000, the parties contracted for a second edition, published in 2001, with annual pocket parts. In 2007, they entered into a standalone agreement for the 2007 pocket part. In 2008, things fell apart. West staff prepared a 2008-2009 pocket part. The cover listed the authors as:


Member of the Pennsylvania Bar

Senior Fellow, University of Pennsylvania Law School


Member of the Pennsylvania Bar

Professor of Law, Widener University School of Law



The treatise as updated was published in the Westlaw database, apparently without reference to the publisher’s staff. Plaintiffs argued that the pocket part was largely a reprint of the previous year’s pocket part, and didn’t reflect legal changes that had occurred in the interim.

Plaintiffs sued for violation of the Lanham Act and for unauthorized use of name, defamation, and invasion of privacy under state law. At that point, West notified subscribers that plaintiffs had not “participated in any manner in this pocket part and they have discontinued their involvement in the publication,” noted the same on the Westlaw database, and sent out a new pocket part that both revised the substance of the pocket part and took plaintiffs’ name off.

The court held that the Lanham Act claims for false advertising and false endorsement were barred by Dastar, though bizarrely the court misstated Dastar’s holding as being that “‘communicative products,’ such as books, were not ‘goods’ for the purposes of the Lanham Act,” because that would create a conflict with the Copyright Act. In fact, the Court’s ruling turned on the meaning of “origin,” and books are of course goods for the purposes of the Lanham Act without a necessary conflict with copyright law. Anyway, allowing the claim to proceed would force publishers to navigate the Scylla of false endorsement and the Charybdis of failure to attribute.

This is an extension of Dastar, though a reasonably natural one. Dastar solved the problem by removing Charybdis, leaving the possibility of retaining Scylla. Note the strangeness of the outcome, compared to our otherwise bloated law of false endorsement: plaintiffs can’t recover even if, as they allege, their reputations were harmed by being falsely identified as the authors of an inferior product; the estate of John Facenda, by contrast, can recover because his voice was sampled for a few seconds in a promotional movie about an NFL-based video game, because that’s somehow a false endorsement. In other cases, Dastar has been extended (more properly, I think) beyond communicative goods based on the Supreme Court’s interpretation of “origin.” Put that together with this reasoning, and would there be anything left of a false endorsement cause of action?

Note also that, while the copyright preclusion argument has some force applied to this situation, it also implies the existence of copyright conflict preemption for the state law claims. The question is not one of an extra element (§301 preemption), but, if a federal law with an extra element/aimed at preventing deception can’t impinge on the sphere regulated by copyright, then must it not necessarily follow that state law purporting to do the same thing conflicts with the objects of Congress? (This is why conflict preclusion/preemption makes the most sense for failure to attribute claims; the implications of applying Dastar to false affirmative ascription of authorship just don’t work very well, at least when you try to make the Supreme Court’s interpretation of “origin” apply also to the alternate terms like “description of fact” or “endorsement” that appear in the statute.)

But never mind! To the extent that Dastar left open the possibility of §43(a)(1)(B) claims, they require “commercial advertising or promotion.” The cover page of the pocket part was not such.

The court denied summary judgment on West’s argument that the 2000 contract between the parties barred any tort claims.

Likewise with West’s defenses that everything it published was substantially true and that plaintiffs didn’t suffer any harm. It was true that plaintiffs authored most of the 2008-2009 pocket part: that’s “precisely the problem.” “By its very nature, a pocket part is presumed to be current as of its publication date, and so the alleged harm comes from the possibility that a subscriber could interpret the pocket part as a representation by plaintiffs that the pocket part is an accurate analysis of Pennsylvania criminal law and procedure as of December 2008.” A jury could accept that the pocket part communicated that purported experts had provided outdated and incomplete information, knowing that readers would rely on it, and find that the pocket part constituted defamation per se by ascribing to plaintiffs conduct that would adversely affect their fitness for proper conduct of their lawful business. Plaintiffs only needed proof of general damages—harm to reputation or humiliation—and they’d provided sufficient evidence of personal humiliation to avoid summary judgment.

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