Wednesday, February 29, 2012

Architect can falsely claim to have designed buildings, court rules

M. Arthur Gensler, Jr. & Associates, Inc. v. Strabala, 2012 WL 600679 (N.D. Ill.)
Gensler sued Strabala for trademark infringement and false advertising under state and federal law.  The court granted Strabala’s motion to dismiss.  Gensler employed Strabala as a Design Director (architect) in Gensler’s architecture business from 2006-2010.  In that capacity, Strabala worked on and participated in the design of several buildings, including the Shanghai Tower, Hess Tower, Houston Ballet Center, Three Eldridge Place in West Houston, Texas and Tesoro Corporation's headquarters.  
When Strabala left Gensler, he began doing business under the name 2DEFINE Architecture, with offices in Chicago, Illinois, Shanghai, China and Seoul, South Korea, using the website and a Flickr page. On the former, Strabala claimed to have designed the Burj Khalifa in Dubai, United Arab Emirates; the Nanjing Greenland Financial Center in Nanjing, China; and the Shanghai Tower in Shanghai, China.  On Flickr, Strabala said he designed works such as the Houston Ballet Center for Dance, Three Eldridge Place, Hess Tower, and the headquarters of the Tesoro Corporation.
Gensler argued that these claims constituted false designations of origin, but Dastar says otherwise.  “Origin” means origin of the physical goods, not the creator or author.  (Since we are dealing with original buildings, rather than copies, is this rationale fully applicable?  Also, this seems like the best case for fighting my lost battle over false advertising where competition and materiality are established—why wouldn’t an architectural client want to know what buildings an architect previously designed, and why wouldn’t deception of the client market harm consumers in precisely the way false advertising generally does?  Of course, even given only Gensler's allegations, Strabala might win; the court doesn't specify whether Gensler alleged that Strabala didn't in fact work on the Dubai, UAE, or Nanjing projects, but if he did, then the question would be whether he "designed" them.  Courts might not want to make tough allocations of credit, but there are tough factual issues all over, and there are ways to give advertisers leeway without cutting off the availability of a false advertising claim entirely.)
Many courts have dismissed trademark claims based on false authorship because authorship is the proper subject matter of copyright law, and the court here followed those precedents.  The false advertising claim also failed because “origin of goods” means the same thing in §43(a)(1)(B), so “the Lanham Act does not provide a cause of action for false advertising where the claim is based on the authorship of a creative work.”
The state law claims “rise and fall” with the federal ones (which arguably raises important questions about conflict preemption that this court, like everyone else including the litigants, is uninterested in, despite the fact that this is really Sears/Compco preemption like we haven’t seen done explicitly on a state-law TM/false advertising statute in decades).
Comment: Yeah, I know the caption's extreme, but consider: would alleging intentional falsity make any difference?  What if Strabala were in fact entirely uninvolved with the firm that did the designs at issue?  The Dastar ruling means it doesn't matter: there's still no cause of action when a different architect, not part of these projects at all, claims to have designed them.  If you think that would be different because that's fraud, why, if at all, could a common-law fraud action succeed when the claims here failed?  We know that intent elements don't constitute extra elements for purposes of 301 preemption.  Should they do so for conflict preemption?  (And of course Lanham Act plaintiffs routinely allege intentional deception.)

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