photos can be false by necessary implication

Veve v. Corporan, No. 12–1073 (GAG), 2013 WL 5603263 (D.P.R.| Oct. 11, 2013)

Plaintiffs Veve and his business Batey Zipline Adventure sued defendants, Corporan and Atabey Eco Tours, for trademark infringement, trade dress infringement, false advertisement, and product disparagement.  They moved for default judgment and then summary judgment; the court granted summary judgment except as to the trade dress claim.

Batey Zipline Adventure offers eco-tour services: hiking and sightseeing tours in which customers learn about the natural ecosystems of the Tanamá region.  Plaintiffs spent about $90,000 in advertising and marketing the Batey brand, since 2008 including via the internet, the most effective advertising source with a worldwide reach.  Atabey began in late 2010, offering competing eco-tour services and using advertising banners in the same places Batey did and also using the internet. 

Plaintiffs received phone calls from confused prospective customers, and often had to explain that Batey and Atabey were different.  One witness stated that she constantly had to instruct customers to follow Batey road signs and not Atabey road signs, which confused many customers because they were often found side-by-side; customers complained of the phonetic similarity.  A Facebook chat documented a prospective customer’s confusion.  Atabey’s former half-owner stated that he often received calls at the Atabey phone number from customers asking about Batey services.  One witness stated that she questioned Corporan about the similarity of the names, but Corporan ignored her concerns.

On the Atabey webiste and Facebook page, there are various pictures of the region and of Atabey expeditions, but some images are purportedly of the property of Perez, a person associated with Batey, most noticeably a suspension bridge. Perez told Corpran that she couldn’t enter his property or use photos of his property to advertise her business; he permits other eco-tourism companies to do business on his property. 

Corporan also issued a “press release” regarding Batey and Perez personally, claiming that Batey was in violation of Puerto Rico law because Perez was responsible for cutting down an endemic species of plant, the caoba bush, and that she called the Natural Resources Department of Puerto Rico on him.  Perez denied the cutting and Corporan offered no proof . Corporan also falsely claimed that Batey operated without a business license and that it did not pay taxes.

Given the default, there’s not much to say here about the trademark claims, though the court was careful in running through the factors even without the defendant’s participation.  On the trade dress claims, default was not enough.  Because the claimed trade dress was unregistered, the burden was on plaintiffs to show distinctiveness and nonfunctionality.  The claimed trade dress was “an arrangement of elements that include: the suspension bridge, caves, hiking paths, a sustainable or eco-friendly farming system, forest and hills, and a network of platforms interconnected by zip lines (or canopies).”   But these elements were inherently functional: the suspension bridge, pathways, and ziplines all served a purpose, specifically movement from one place to another.  Since plaintiffs didn’t meet their burden of showing nonfunctionality, the court didn’t address distinctiveness or confusion.

The court also found false advertising based on the use of photos depicting plaintiffs’ property: pictures of the suspension bridge and caves located on their land.  These pictures constituted false statements of fact. Though they didn’t explicitly state that the bridge and caves were part of the Atabey experience, the necessary implication was that they comprised part of it.  That was also material because it depicted “attractive elements of the eco-tour experience,” which would likely influence purchasing decisions.  A statement that defendants were “the only certified sustainable operation endorsed by the Puerto Rico Tourism Company in the region” was also false because it was unsubstantiated by any evidence.

The court likewise found for plaintiffs on the commercial disparagement, defamation, and trespass claims.  For the former, the relevant statements were commercial speech because made with the intent to influence potential customers, and attacked an essential part of the quality of Batey’s services—safety and commitment to environmental protection.