Dastar bars TM claim based on unlicensed copying of footage

Fioranelli v. CBS Broadcasting Inc., No. 15-CV-952, 2017 WL 1400119, -- F. Supp. 3d – (S.D.N.Y.  Jan. 19, 2017)

Fioranelli, a photojournalist who was one of four reporters allowed to enter the World Trade Center site on September 11, 2001, sued for copyright infringement and related claims.  In 2014, he registered copyrights on both his own commercially available documentary of the events, as well as raw footage of the photographs he took that day.  In 2002, he settled a previous lawsuit with CBS and granted a limited, nonexclusive license to CBS to use his work “in all regularly-scheduled and breaking news programming and all news magazine programs … and in the advertising, publicity and promotions therefor, produced by CBS owned television stations and CBS News.”  In 2005-2006, allegedly in violation of the License Agreement, CBS allegedly sublicensed some or all of the 9/11 Material to at least fifteen companies.

The court first found that Fioranelli stated a claim for copyright infringement, not just breach of a license agreement, given that the acts alleged went outside the license. “[I]f ‘a license is limited in scope and the licensee acts outside the scope, the licensor can bring an action for copyright infringement.’ ”  The allegations here were “wholly outside the scope of the License Agreement.” Inducement claims against many of the defendants were, however, dismissed for want of specifics.

The court also got rid of Fioranelli’s Lanham Act and state-law claims on Dastar and preemption grounds.  Fioranelli argued that he was allowed to bring a Lanham Act claim “to address the activity of Defendants that directly affected his business and not just his copyright rights,” that he had a registration and the plaintiff in Dastar didn’t, and that he produced a tangible good—his footage—not just an idea.

Dastar applies to copyrighted and public domain material alike.  The allegations that “CBS has engaged in false designation of origin and false descriptions of fact regarding Plaintiff and his work” and that the other defendants “individually published [the 9/11 Material] as part of their own media products,” and thereby “have caused or are likely to cause confusion, to cause mistake, or to deceive as to the origin of Plaintiff’s Work among the public” stated “the exact type of claim that the holding in Dastar prohibits.”

Consumers who viewed the 9/11 Material as part of defendants’ programs were “not falsely informed about the origins of the [material] because [Defendants] did in fact produce” it. Just like the creator of the footage in Dastar, Fioranelli was the originator, not the “producer of tangible goods” protected by the Lanham Act.

The state-law claims fared similarly. The only extra element Fioranelli could identify was that his claims were based on “damage to his business,” but he didn’t explain how the alleged damage to his business was the result of anything other than defendants’ unauthorized copying.

Because the infringing acts alleged commenced before Fioranelli secured copyright registrations, he was not entitled to statutory damages or attorney’s fees (though the court declined to address at this time the argument that the court’s inherent supervisory power allowed it to award attorney’s fees regardless).