Advertising a phone with an unauthorized screenshot of an app doesn't violate the Lanham Act under Dastar

Appjigger GmbH v. BLU Products, Inc., 2016 WL 4119720, No. 15–22313 (S.D. Fla. Mar. 7, 2016)

Appjigger makes apps, and has an exclusive license for the WP CLOCK software app, which is available both to end users and also for licensing and pre-purchase installation by retailers.  BLU Products’ mobile device allegedly came pre-equipped with the WP CLOCK. BLU Products also allegedly advertised its mobile devices “with screens which are substantially indistinguishable from the screenshots of android smart phones using Plaintiffs’ WP CLOCK.”

This motion to dismiss didn’t challenge the copyright claim, but dealt with unjust enrichment/unfair competition/false advertising.  Appjigger argued that “[t]he misrepresentation of fact made by Defendants is that they are the origin of the software that is prominently displayed in their advertising,” but they weren’t.  However, passing off under Dastar requires the producer to misrepresent his own goods or services as someone else’s.  There was no suggestion that BLU was passing off its mobile devices as Appjigger’s; Appjigger doesn’t make mobile devices.  Appjigger alleged that it created “some of the software, ideas, or concepts embodied in Defendants’ devices,” but not the devices themselves. 

Appjigger argued that it was the “origin” of the software while BLU was the origin of the devices, but the court did not accept that “a single tangible good protected by the Lanham Act may have multiple origins,” given Dastar’s focus on the producer of the tangible good.  [Query: would allegations of false endorsement have mattered? Here, I find it rather implausible that consumers would think that app makers endorse any device on which their apps may be found.]  Courts have therefore easily dismissed claims that unlawful sales of copies of a plaintiff’s works, with the defendant identified as the creator of the physical objects, violate the Lanham Act.  This case was Dastar, except with a valid underlying copyright [as, indeed, the 9^th Circuit found to be the case on remand in Dastar].

The Lanham Act false advertising claim failed because Appjigger didn’t identify any misrepresentation about the “nature, characteristics, qualities, or geographic origin” of BLU’s phones.  Authorship isn’t a “nature, characteristic, or quality” under the Lanham Act, to avoid pleading around Dastar. “A defendant does not violate the Lanham Act’s false advertising provisions by promoting its product while failing to properly attribute the source of the underlying technology embodied in the product.”  Nor could the allegations be re-interpreted as a trade dress claim, because plaintiffs didn’t plead anything about non-functionality or distinctiveness.

The coordinate state and common law claims for unjust enrichment and violation of Florida’s Deceptive & Unfair Trade Practices Act were preempted.  Appjigger argued that the necessary extra element to avoid preemption was supplied by “the advertising and promotion of Defendants’ mobile phones showing the unauthorized image of the Appjigger WP Clock software home screen.” But “showing the unauthorized image” was nothing other than an “act[ ] of reproduction, performance, distribution or display.” Nor was intent to profit an extra element.

Query: If the copies of the app actually on the BLU phones, assuming such copies were there, were properly purchased, can the use in ads be anything other than fair use?