Use of P's photos to advertise D's goods must be challenged via copyright, not Lanham Act, under Dastar

Barn Light Electric Company, LLC v. Barnlight Originals, Inc., 2016 WL 7135076, No.14–cv–1955 (M.D. Fla. Sept. 28, 2016)

Plaintiff BLE, owned by the Scotts, sells light fixtures to consumers over the internet. Defendant Hi–Lite, owned by the Ohais, makes light fixtures and sells to distributors, not to end users. In 2008, BLE became a retail distributor for Hi–Lite and bought lighting components from Hi–Lite. Hi–Lite provided BLE with photographs, line drawings, and other depictions of its products, providing BLE a license to use its copyrighted photographs. Hi–Lite designates its products by parts numbers.

BLE decided to begin making its own light fixtures patterned after the fixtures sold by Hi–Lite. In 2012, Hi–Lite had a sales rep use BLE’s website to order the “Barn Light ‘The Original’ Warehouse Shade” and the “Barn Light Warehouse Pendent Shade.” The BLE website showed the products with the parts numbers H–15116 and H–15116G, corresponding to Hi–Lite’s parts numbers, and they were accompanied by pictures from Hi–Lite’s catalog. But BLE shipped light fixtures bearing BLE’s logo that were actually manufactured by BLE. The order confirmation for the sale included the Hi-Lite parts numbers.  Hi-Lite terminated the parties’ business relationship and asked BLE to remove all photos and drawings of Hi-Lite fixtures from BLE’s website.

After the relationship ended, defendant Ohai created defendant Barnlight Originals, Inc., a retail seller of light fixtures. BLO sells Hi–Lite fixtures. Ohai registered BARNLIGHT ORIGINALS and BARNLIGHT ORIGINALS, INC., the domain name www.barnlightoriginal.com, and a logo with the United States Patent and Trademark Office.  Hi-Lite also sent BLE a C&D charging infringement of a pending patent application.

Hi-Lite counterclaimed for trade dress infringement of the design of twelve of its light fixtures. Product design trade dress requires a “high degree of proof” to show secondary meaning.  Hi-Lite lacked survey evidence, and the representative of a Hi-Lite marketer couldn’t identify the source after being shown thirty images of products from Hi–Lite (including those at issue), BLE, and other third parties. For all of the fixtures he was shown, he testified that there were multiple manufacturers that made the same or very similar designs.  A previous BLE employee who now operates his own retail company and sells Hi–Lite products likewise testified that although he recognized photos of Hi–Lite’s alleged trade dress from its catalogs, he would not be able to identify the products as manufactured by Hi–Lite unless he looked at the hidden backing plate with Hi–Lite’s name embossed on it.

Hi-Lite argued that BLE’s intentional copying and use of its sales and advertising efforts showed secondary meaning. It also claimed use for 7-12 years and sales of thousands to tens of thousands of units, plus “considerable” advertising expenses in its catalogs, in magazines, on the internet, at trade shows, and in show rooms.  Intentional copying isn’t enough to show secondary meaning, given the other possible motivations for copying and the perfect acceptability of copying public domain designs. Nor do extensive sales and advertising show secondary meaning, which requires the effective creation of consumer recognition.  The court found that Hi-Lite couldn’t show secondary meaning and granted summary judgment on the trade dress claims.

Other Lanham Act claims: Hi–Lite alleged that BLE used Hi–Lite’s photographs and parts numbers to sell BLE products on its own website, violating the Lanham Act. BLE responded, “Dastar,” and the court agreed.  Uncredited use of another’s photos in connection with the sale of goods or services “must be pursued as copyright claims.” Hi-Lite’s false designation of origin claim was “directed to the same conduct that underlies its copyright infringement claims,” which wouldn’t do.  Moreover, Hi-Lite’s claim would only work if the images themselves were “source-identifying marks” for Hi-Lite’s products, but the photos merely depicted Hi-Lite’s light fixtures, thus requiring a protectable trade dress rights in the design and appearance of the light fixtures, which Hi-Lite lacked.  Similarly, Hi-Lite didn’t show that its parts numbers functioned as marks.

False advertising: To the extent that this was merely a restatement of the false designation of origin claim, it failed.  Even without Dastar, Hi-Lite lacked enough evidence to prevail on the merits.  It failed to show that the alleged deception—advertising Hi-Lite fixtures but delivering BLE fixtures—was material.  The only evidence was the Hi-Lite-induced purchase from the BLE site, but the sales rep wasn’t acting as a consumer but rather as an agent on behalf of Hi–Lite. BLE’s misrepresentations “could not have made a difference in his purchasing decision,” and he wasn’t an expert qualified to opine on likely consumer confusion.

However, claims based on BLE’s alleged use of the BARN LIGHT ORIGINALS word mark survived.