Dastar and CMI

Agence France Presse v. Morel, 2011 WL 147718 (S.D.N.Y.)

AFP copied photos of the aftermath of the earthquake in Haiti from someone who did not in fact take them. Morel did take them and was not best pleased. AFP sued for a declaratory judgment of noninfringement, and Morel counterclaimed for infringement, violation of the DMCA’s CMI provisions, and violation of the Lanham Act. Venkat Balasubramani and Eric Goldman cover the decision in good detail here. 

The court ruled that Dastar barred all Lanham Act claims. Even though Dastar was about “origin,” “its reasoning applies with equal force to bar claims, also brought under section 43(a)(1)(A), for false representation of ‘affiliation’ between the author and a distributor of communicative products.” Thus, falsely crediting Morel turns out to be different than falsely invoking a celebrity identity as endorser; query whether this is really required by Dastar (and whether it leaves Gilliam good law; I’ve always thought that affirmative misrepresentations of authorship should survive Dastar or else authors get treated worse than random celebrities, but there is obviously disagreement on this).

Dastar also barred the false advertising claim (apparently I’m the only one who remembers that the Dastar Court explicitly left open this prospect). False statements that the counterclaim defendants were authorized to distribute the images, and that another person was the author, did not concern the “nature, characteristics, qualities, or geographic origin" of the photographs. Anyway, the allegations supporting the false advertising claim were identical to those supporting the false representation claim. “The import of Dastar that an author's recourse for unauthorized use is in copyright cannot be avoided by shoe-horning a claim into section 43(a)(1)(B) rather than 43(a)(1)(A).”

But what Morel lost in the Lanham Act he gained back in the court’s broad reading of CMI, such that copying the pictures without copying the authorship information beside them could violate the DMCA. I agree with Balasubramani and Goldman that there’s some concern in reading the definition of CMI broadly that we get a backdoor right of attribution claim rejected in Dastar. However, in many cases, there will be no plausible connection to copyright infringement (e.g., the defendant’s product incudes components produced by the plaintiff but doesn’t disclose this). In other cases, though it might be possible to plead intent to induce/facilitate/etc. copyright infringement (depending on how the judge at issue applies Iqbal and Twombly), it will end up being very difficult producing sufficient evidence of intent to survive summary judgment. This isn’t insignificant—the difference between a motion to dismiss and a summary judgment motion can be a lot of money and time—but it is a limit.

Here, with respect to falsifying CMI, Morel alleged that AFP mislabeled his photos with credit lines wrongfully crediting someone else or wrongfully suggesting that AFP had the right to license them. (Notably, AFP didn’t contest that the credit lines it applied to the photos were CMI—something that hurts it here, but helps it elsewhere, so the issue was not necessarily litigated with the vigor we would see from someone who doesn’t expect to be more routinely a plaintiff than a defendant in such cases.) The court then found that Morel had sufficiently pled a factual basis for alleging that AFP knew the CMI was false and intended to facilitate infringement. “Morel alleges that an AFP photo editor viewed his photos before asking about identical photos on Suero's Twitpic page, and that when Morel failed to respond to the editor's email, AFP downloaded the pictures from Suero.” Given that Morel alleged that he was a well-known photographer, and that AFP had no reason to think Suero took the pictures, that was enough to allege knowledge of falsity.

With respect to removing CMI, the court found it implausible that a viewer would not understand the designations “Morel” and “by photomorel” appearing next to Morel’s images on TwitPic to refer to authorship. While the location of CMI may go to intent, that couldn’t be resolved on a motion to dismiss. Morel was able to plead intent and knowledge because he alleged that the counterclaim defendants contacted him about his photos and then still copied and distributed them without permission.

So someone might argue that a broad reading of CMI does much more of what we would want a right of attribution to do, should we want such a thing, than the cause of action under §1125 rejected in Dastar did.

Final note: I don’t really understand how tumblr works. But as best as I can tell, tumblr makes photo attribution very difficult, or maybe it’s the culture of tumblr users that does. Either way, it seems like a massive CMI-stripping machine.