Reverse passing off claim for copying wrongly survives Dastar

Cable v. Agence France Presse, No. 09 C 8031 (N.D. Ill. July 20, 2010)

A blatant misunderstanding of Dastar mars this case, which concerns alleged copying and removal of copyright management information by AFP of Cable’s photos of the Obamas’ house in Illinois. Cable had licensed these photos for limited use on a website that included a credit line/copyright notice identifying Cable/Selfmadephoto.com as the creator, along with a link to Cable’s own site. AFP allegedly displayed copies on its website ImageForum and purported to license and sublicense the photos, along with removing Cable’s photo credit and copyright notice.

The court found that Cable had stated a claim for violation of the DMCA’s CMI provisions, rejecting authority that only CMI that is part of an automated management system counts. This seems clearly correct to me.

But then, the court turned to the Lanham Act claim for reverse passing off: passing off Cable’s photos as those of AFP. Quoting Dastar’s statement that a §43(a) claim “would undoubtedly be sustained if Dastar had bought some of New Line's Crusade videotapes and merely repackaged them as its own,” the court found that this was exactly what Cable alleged. I can only speculate that the court intended to distinguish between pure copying and the creation of derivative works, only the latter of which it thought was covered by Dastar.

To the contrary, Cable alleged passing off with respect to (infringing) reproductions, exactly the situation addressed in Dastar, which most assuredly did not limit its holding to derivative works, as I think every other subsequent case has recognized. The Dastar Court’s focus on physical origin, which is the source of its holding as well as of the quoted limitation (which is about the physical videotapes, not the content on those videotapes), is completely inconsistent with the court’s ruling here. In fact, Dastar rejected precisely the distinction on which the court here apparently relied—it resolved a split between the circuits about whether reverse passing off could be alleged only when copying was essentially wholesale (as here), or whether the right was broader, by adopting a narrower view that excluded both theories of liability.

To the extent that the copies offered/displayed/sold by AFP have a physical origin, it is with AFP, because AFP made or authorized those copies. Any other interpretation would, as Dastar feared, create a species of perpetual copyright—if in this case only limited to pure reproductions. Victor Hugo wanted a copyright law something like that, as Deven Desai has written, but we most certainly don’t have it in the US.

Anyway, because the Lanham Act claim survived, so did the state law deceptive practices and common-law unfair competition claims.

Given the CMI/copyright aspects, I wouldn’t be surprised if the case settled, but this deeply erroneous holding bugs me nonetheless.