Even default can't give plaintiff a win on Dastar-barred claim

Mahmoodian v. Pirnia, 2012 WL 4458160 (W.D. Va.)

Plaintiff, who registered a copyright in 2010 for “Historical Works of Dr. Saeed Mahmoodian,” secured a default judgment against defendants for infringement of portions of those works in a book, “Kayhan, From Nada to the Milky Way.”  Mahmoodian alleged copyright infringement and violation of the Lanham Act, and sought statutory damages and attorneys’ fees as well as an injunction barring defendants from using his copyrights and barring them from making false or defamatory statements about Mahmoodian or his family.  

Because of the default, the court treated the copyright infringement as established.  The evidence showed, however, that the infringing book was published before the registration occurred, precluding statutory damages and attorneys’ fees.

And the Lanham Act dilution/false advertising claims just didn’t work.  Mahmoodian alleged that defendants’ copying created a likelihood of confusion as to the original source of Mahmoodian’s writing and diluted the distinctive quality of Mahmoodian’s writings.  Dastar precluded any claim based on confusion about the author of ideas or representations within defendants’ book.  Mahmoodian focused on alleged misrepresentation in advertising, or a §43(a)(1)(B) claim: the alleged falsehood was that defendant Pernia was the sole author of the book, which was false because portions of three different pages out of several hundred were written by Mahmoodian.  He did not, however, provide any evidence of a tendency to deceive audiences, materiality, or injury either by direct sales diversion or lessened goodwill.

The court rejected this “tenuous” claim.  It wasn’t surprising that Mahmoodian failed to explain his theory of deception, because it was “practically impossible to imagine how they could have been misled simply by virtue of the fact that Ms. Pirnia, who published the book, claims to be the sole author.”  The court wasn’t impressed by the idea that an authorship claim is a claim to be the original and unique source of everything in a book.  This was “nothing more than a claim for plagiarism,” and Dastar stands for the proposition that §43(a) doesn’t cover plagiarism.

Even if Mahmoodian had a valid claim, the court would still have denied disgorgement of profits, which is an equitable remedy taking into account defendant’s intent, sales diversion, adequacy of other remedies, etc.  Here, there was no evidence of intent to confuse or of sales diversion.

Similarly, the court denied disgorgement of profits under the Copyright Act.  Profits of the infringer are recoverable only if they can be attributed to the infringement itself.  In the Fourth Circuit, a defendant can defeat a plaintiff’s profits claim if “either (1) there exists no conceivable connection between the infringement and [the defendant's] revenues; or (2) despite the existence of a conceivable connection, [the plaintiff] offered only speculation as to the existence of a causal link between the infringement and the revenues.”  Here, Mahmoodian failed to show a conceivable connection between the infringement and the profits defendants derived from selling the book.  It wasn’t even clear they’d made a profit—their own statements showed losses.  But even if they had, Mahmoodian failed to show how that profit could be attributed to their use of his copyrighted works on three pages of an over 300-page work.  And even assuming there was a conceivable connection, Mahmoodian didn’t offer even speculation about a causal link between the infringement and the profits.

Likewise, even if the court had sustained the Lanham Act claim, it ruled, Mahmoodian still wouldn’t be entitled to fees because this wasn’t an exceptional case.  (Based on the facts in the opinion, it seems to me that in the absence of a default defendants would have had a good case for getting their own fees paid.)

Mahmoodian was entitled to an injunction, since he didn’t get statutory damages and failed to allege actual damages.  Defendants were ordered to cease publication and sale of their book so long as it contained excerpts from Mahmoodian’s historical works.  But it wasn’t necessary to order impoundment and destruction of books already sold or otherwise disseminated.  (Would the court have such broad authority anyway?  Surely if I owned a copy, the court couldn’t order it impounded, though perhaps the court is thinking about copies shipped to bookstores.)  That would go too far, given that the inclusion of Mahmoodian’s work on three pages “does not merit the destruction of all copies of a work that was otherwise authored exclusively by Ms. Pirnia after years of her own research and effort. Moreover, such a remedy would represent a disservice to the public as the myriad histories, ideas, photographs, and other depictions found within the Kayhan book that are not a product of Plaintiff's copyright would be unnecessarily removed from the public sphere.”

The requested anti-defamation injunction was also denied.  Mahmoodian hadn’t even remotely pled libel or defamation, and the court wasn’t about to order a prior restraint on defendants’ free speech rights, especially since Mahmoodian’s general complaints seemed to concern historical disputes about his ancestors unrelated to the copied portion of the book.