Bee aggressive: Copied ad leads to grab bag of claims

Fischer v. Forrest, 2017 WL 2992663, -- F. Supp. 3d –, 14 Civ. 1307 (S.D.N.Y. Jul. 14, 2017) (report and recommendation)

Fischer invented Fischer’s Bee-Quick, a product used to facilitate honey harvesting, and marketed it using, among other things, the following four phrases:

a) “Are you tired of your spouse making you sleep in the garage after using Butyric Anhydride?”

b) “Are you tired of using a hazardous product on the bees you love?”

c) “Fischer’s Bee-Quick is a safe, gentle, and pleasant way to harvest your honey”

d) “A Natural, Non-Toxic Blend Of Oils and Herbal Extracts”

Defendants were in some way involved with Brushy Mountain Bee Farm, which initially resold Fischer’s product, using the text (whose authorship was disputed):

This 100% Natural, non-toxic blend of oils and herb extracts works just like Bee Go and it smells good! Fischer’s Bee Quick is a safe, gentle, and pleasant way to harvest your honey. Are you tired of your spouse making you sleep in the garage after using Bee Go? Are you tired of using a hazardous product on the bees you love? Then this is the product for you!

Around 2010, Brushy Mountain decided to sell a comparable product that performed the same function; Brushy Mountan bought a third party product and labeled it as “Natural Honey Harvester,” but continued to use nearly the same promotional text.  A 2011 Brushy Mountain catalog used the phrases as follows:

For years we have promoted the use of a natural product to harvest honey but an unreliable supply of such a product has forced us to come out with our own. This 100% Natural, non-toxic blend of oils and herb extracts works just like Bee Go® and it smells good! Natural Honey Harvester™ is a safe, gentle, and pleasant way to harvest your honey. Are you tired of your spouse making you sleep in the garage after using Bee Go®? Are you tired of using hazardous products on the bees you love? Then this is the product for you!

Fischer also alleged that defendants intentionally removed copyright management information (“CMI”) from Fischer’s promotional brochure and the Fischer’s Bee-Quick bottle photos. Defendants changed the textual reference in one of the phrases from “Fischer’s Bee-Quick” to “Natural Honey Harvester,” and allegedly also stripped the metadata from Fischer’s original Fischer’s Bee-Quick bottle photo displayed on Brushy Mountain’s website, and overlaid the photo with a watermark of the Brushy Mountain Bee Farm logo.

There were lots of factual disputes; the magistrate recommended not granting summary judgment on the ground that Fischer’s copyright registration was invalid, even though the first submission (of several) to the Copyright Office didn’t contain the brochure at the heart of the case.  The magistrate also recommended finding the brochure as a whole copyrightable, and concluded that the relevant portions evinced enough originality to be protected, at least as a whole. The “rhetorical questions that play on the worries of beekeepers” were unique and the whole of the brochure was greater than the sum of its parts, although the phrase “A Natural, Non-Toxic Blend Of Oils and Herbal Extracts” was merely descriptive of the product ingredients. Even in isolation, though, most if not all of the rhetorical questions were long enough for copyright protection, particularly the “sleep in the garage” bit.

Unfortunately for Fischer, the copyright claim still had fatal problems.  (1) He did not register before the infringement began, so he was not eligible for statutory damages or attorneys’ fees.  (As an aside, the magistrate analyzed the relevance of secondary liability to the rule that infringements that continue past the date of registration don’t provide eligibility for statutory damages—although two of the vendors for  which Brushy Mountain was allegedly secondarily liable began their infringing activities after the registration, their infringements were republications of the initial ad, and thus part of an ongoing series of infringing acts that didn’t restart the clock.)  (2) Fischer elected statutory damages and declined to submit evidence of actual damages (which probably would have been hard to prove; this is not the type of work for which there is a licensing market in which money changes hands).  (3) Defendants agreed to remove the challenged text, mooting the claim for injunctive relief.  With nothing left for a court to do, the magistrate recommended granting summary judgment to defendants on the copyright claim.

DMCA claim:  Fischer alleged that defendants stripped the metadata from Fischer’s original Fischer’s Bee-Quick bottle photo displayed on Brushy Mountain’s website, but the magistrate recommended rejecting that argument because he submitted no evidence that the metadata included CMI; not all metadata is CMI. Fischer also argued that the allegedly infringing ad had CMI stripped from it because defendants changed the phrase, “Fischer’s Bee-Quick™ is a safe, gentle, and pleasant way to harvest your honey,” by replacing “Fischer’s Bee-Quick™” with “Natural Honey Harvester”:

  

side by side comparison

Fischer argued that the product’s name, because it had Fischer’s name in it, was CMI.  To prevail on a §1202 claim, Fischer had to show that defendants “intentionally remove[d]” CMI that was “conveyed in connection with copies ... of [his] work or ... displays of [his] work.” The relevant “work” here was the the brochure, while defendants created derivative works of the brochure. The creation of infringing derivative works didn’t qualify as the “removal” of CMI from the original work. 

The magistrate was also skeptical that even more direct “extraction” of phrases from a larger work could constitute “removal” of CMI, since the statute contemplates “copies” of a work and extraction of “distinct elements” of a work doesn’t constitute a “copy.” 

If, for example, someone extracted and reproduced several sentences from a copyrighted Sherlock Holmes story, without crediting the Conan Doyle Estate, it would stretch the definition of “removal” to say that CMI had been “removed” from the copyrighted “work.” It might be copyright infringement, but it would not be a DMCA violation.

This conclusion makes total sense—otherwise Blurred Lines should also have been the basis of a §1202 claim—but it requires a bit of fancy footwork to reconcile with the idea that substantial similarity can constitute a violation of the reproduction right, further strengthening my view that the derivative works right should be where such claims live.

Even assuming that the relevant “work” was the four key phrases collectively, Fischer didn’t show that the phrases contained CMI.  “The DMCA’s expansive definition of CMI cannot trigger liability any time a person’s name is contained in a copyrighted work without reference to how that information was used and displayed on the work itself.”  The name of the product discussed in the work is not CMI for the work; such a name, even if includes the author’s name, “does not have any CMI significance—it simply is part of the product’s name (just like Kellogg’s Corn Flakes or Wrigley’s Chewing Gum).”

Fischer didn’t plead a trademark infringement claim, the magistrate reasoned, because he consistently alleged only “counterfeiting,” even when represented by counsel. 

Fischer’s §43(a) false endorsement claim also failed.  This claim was based on Brushy Mountain’s use of URLs that, even after they switched products, still contained “fischer” as part of the address string, e.g., http://brushymountainbeefarm.com/Fume-Pad-w_-Fischers-Bee-Quick/productinfo/777F/

 

page for Fischer replacement, with Fischer's name still in URL post-domain path

The judge applied the multifactor confusion test, and found that the claimed strength of the mark, mark similarity, and product similarity all favored Fischer.  But there was no evidence of actual confusion or bad faith, which the judge found to be the most significant under these circumstances.  This wasn’t a domain name case; the use of “Fischers.com” or “Fischersbeequick.com” to sell a competing product would support a false endorsement claim. But a name “buried in the post-domain paths of the Brushy Mountain web pages” wasn’t likely to confuse consumers about Fischer’s endorsement or approval. “No consumers are likely to believe that Fischer has somehow endorsed or approved Natural Honey Harvester when viewing the post-domain portion of the URL, if they even see it at all.”  Likewise, consumer sophistication favored defendants.  “Whether defined as the typical consumer of beekeeping products, or internet users writ large, no ordinary consumer is likely to see Fischer’s name in the post-domain path of the URL and wonder if that signified his endorsement of a completely different product in the accompanying web page.”  Nor did Fischer provide evidence that, as he contended, the use of his name in the address led Brushy Mountain’s pages to appear higher in search results, or that, even if that were true, that fact would have any bearing on consumer confusion..

Fischer’s only evidence of actual confusion was an undated review on the Brushy Mountain website complaining: “The first bottle I bought last year worked well but this new stuff was a complete waste of time and money.” But there was no evidence that the commenter ever bought Fischer’s product, as opposed to two different bottles of the replacement product; defendants submitted an affidavit stating that the review was posted two and a half years after Brushy Mountain stopped selling Fischer’s product.

The New York unfair competition claim is like a §43(a) claim, but requires “‘either actual confusion or a likelihood of confusion, and there must be ‘some showing of bad faith’ on the part of the defendants.” So that was a no-go too.

Note: why not a right of publicity claim?  Would the court’s CMI reasoning “this is a product name, not an author name” also apply there?  Would there be any other defense?

The magistrate also recommended tossing out Fischer’s false advertising claim, which was based on the statement, “For years we have promoted the use of a natural product to harvest honey but an unreliable supply of such a product has forced us to come out with our own. This 100% Natural, non-toxic blend of oils and herb extracts works just like Bee Go® and it smells good!”  Fischer primarily argued that “our own” was false, because they bought a third-party product, though he also claimed that “the third-party manufacturer makes nothing but cleaning products, calling into question if the product is even food-grade, let alone ‘100% Natural”’  Furthermore, the only thing one defendant said about whether the product was “actually natural” in deposition was “I assume so.”  Given where the burden of proof lies in a private false advertising claim, this wasn’t enough to proceed on the 100% natural claim, even though it was material.

As for “our own,” that wasn’t literally false; while it could mean that defendants selected the ingredients and personally created the product, but “another reasonable interpretation is that defendants marketed a natural honey harvesting product, from whatever source, under their brand name,” which was true. There was no evidence of consumer deception, even though Fischer testified that unnamed competitors had responded to the ad by making their own knockoffs—even if knockoffs emerged, that didn’t mean the ad caused them, or that consumers were deceived.