Don't try to make a Lanham Act case out of a copyright case

Lieb v. Korangy Pub’g, Inc., 2016 WL 8711195, No. 15-CV-40 (E.D.N.Y. Sept. 30, 2016)

The Second Circuit isn’t a good place to try to plead around Dastar.  Lieb sued Korangy for copyright infringement and deceptive business practices based on alleged infringement of the article “10 Surprises When Inheriting Real Estate.” Lieb, a HuffPo blogger, alleged that Korangy infringed by copying and promoting its contents in a separate article, “Watch for These 10 Surprises When Inheriting Real Estate,” published on therealdeal.com, and engaged in unlawful business practices by advertising the infringing work on the Real Deal, social media websites, and other outlets.  Korangy allegedly harmed consumers by linking to the infringing work “which, in turn, distorts information contained in the Copyrighted Work and thereby misleads and consequently harms consumers.” The fact that the infringing work linked to the original work allegedly “wrongfully suggests … that the Infringing Work was published with the apparent authority to hold itself out as of equal value to the Copyrighted Work” and that “the Infringing Work was published with the authorization of Plaintiff.”  Korangy’s ads for the article were allegedly deceptive because the infringing work “was falsely advertised as a wholly original work and it was falsely advertised to have been authored by a non-party.” Korangy allegedly did this with lots of different articles online.

Lieb sought to amend his complaint to add Lanham Act claims, alleging that “Defendant engaged in the systematic practice of misappropriating others’ articles and altering them so that they are no longer representative of the authors’ works, while simultaneously attributing them to the original authors[.]”  The proposed complaint also alleged false advertising “by copying and/or summarizing and/or removing information from the Copyrighted Work, thereby distorting the intended meaning of the Copyrighted Work.”

At this point in the case, an amended complaint required a showing of good cause under Rule 16(b), which requires that a movant have exercised diligence but still failed to meet the Court’s deadline despite such efforts.  The court found that Lieb had not done so; allegedly newly discovered evidence of Korangy’s “systematic practice” of summarizing articles as Lieb’s had been summarized could and should have been known before; indeed, the opearative complaint alleged “numerous” examples of such articles.  Anyway, nothing about Lieb’s own Lanham Act claim required evidence of intent to deceive, which was what Lieb contended he’d newly unearthed in the deposition testimony of Korangy employees.

Also, even with good cause, amendment would be futile because of Dastar.  Allegedly falsely designating the infringing work as having been authored by someone else is not actionable, nor was allegedly passing off the infringing work as having been authored by Lieb.  As for the false advertising claim, Dastar’s interpretation of “origin” “necessarily implies that the words ‘nature, characteristics, and qualities’ in 43(a)(1)(B) cannot be read to refer to authorship.” Thus, “a failure to attribute authorship to Plaintiff does not amount to misrepresentation of ‘the nature, characteristics, qualities, or geographic origin of ... Defendant’s goods.’ ”