Monday, February 26, 2018

When an author's name isn't CMI

Fischer v. Forrest, Nos. 14 Civ. 1304, 1307, 2018 WL 948758 (S.D.N.Y. Feb. 16, 2018)

This very outdoorsily named and themed litigation arose out of the termination of a longstanding business relationship between plaintiff Fischer and defendants, including Brushy Mountain Bee Farm, alleging that they used his likeness and proprietary text and images to promote their own competing knock-off version of his product, Bee-Quick, a honey harvesting aid.  He sued for copyright infringement, 1202 CMI violations, and false advertising/NY unfair competition. (Previous discussion of report & recommendation here.)  The court adopted and elaborated on the “thorough and persuasive Report and Recommendation.”

Fischer began using certain phrases in advertising on his website in 2000. From 2002 onwards, Brushy used similar words to promote Bee-Quick in advertisements. The parties disputed who wrote the ad copy. Around 2010, Brushy decided to sell its own version of the product, Natural Honey Harvester, obtained from a third-party vendor. For purposes of this lawsuit, the court then accepted that Brushy at that point no longer had any “right,” “license,” or “permission” to use Fischer’s intellectual property, but Fischer didn’t say that until April 2011, when he sent a C&D complaining about copyright infringement.  Brushy responded that “there [did] not seem to be grounds for [Fischer’s] request,” and that Brushy would “review” Fischer’s concerns if he was more “specific.”

Photos of Bee-Quick remained on Brushy’s website until at least January 2011, and images of Bee-Quick may have remained available on Brushy’s website much longer (though it’s not clear whether any full pages used those images).

In 2011, Brushy introduced its Natural Honey Harvester product, using much the same language as before but with a different name, with the intro “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.” Fischer alleged that defendants removed CMI and that defendants’ alteration of their online and print advertisements altered CMI by replacing, inter alia, the term “Fischer’s Bee-Quick” with “Natural Honey Harvester” in a sentence describing the product.

Copyright: Fischer’s statutory damages claim failed as a matter of law because his registration postdated the uncontested date of first use of the allegedly infringing work.  Fischer tried to get around this by arguing that Brushy didn’t lose its rights to use his works when it announced to him its cessation of sales of Bee-Quick, but only until he sent the C&D (which was after his registration).  But this argument wasn’t available at this late date, when Fischer’s complaint pled directly contrary to that theory, and it was too wasteful to allow a fully briefed and decided issue to be completely changed now; “[a] proceeding before a magistrate judge is not a meaningless dress rehearsal.”  The changed theory would be even more wasteful because to decide it, the court would have to figure out whether Brushy exceeded the scope of its license by using Fischer’s material to promote Natural Honey Harvester, and thus infringed, before 2012.  And, the court noted, Fischer had consistently contended that these acts by Brushy were unauthorized; the court had already found it highly improbable “that Fischer[’s license] [would] allow[ ] a competitor to repurpose original works he had created, copyrighted, and continued to use to promote and sell his own product.”

Likewise, Fischer couldn’t claim statutory damages based on secondary infringement based on the acts of third-party vendors. These infringements were “part of a series of related infringements by defendants and the [third parties] of the same copyrighted work” that predated Fischer’s registration of his copyright. The fact that Fischer filed two separate lawsuits, rather than consolidating his claims against Brushy into a single lawsuit, didn’t change anything.

DMCA 1202: Fischer argued that Brushy removed CMI in violation of § 1202 when, in revising its ads from promoting Bee-Quick to promoting Natural Honey Harvester, it substituted, in a sentence, the term “Natural Honey Harvester” for the term “Fischer’s Bee-Quick.”  CMI includes the name of the author or copyright owner and can be “contained in the body of a work,” so “Fischer’s” was capable of constituting CMI.  “But, to qualify, the word or words said to constitute CMI must also be ‘conveyed in connection with copies ... of a work ... or displays of a work ....’” and “[a]n action for removal of copyright management information requires the information to be removed from a plaintiff’s product or original work.” 

The works Fischer identified didn’t qualify.  Even assuming that the works Fischer submitted in conjunction with his copyright registration were covered, no CMI was removed from those or exact copies/displays of of them; instead, four discrete phrases were allegedly copied.   “In those cases where claims of removal of CMI have been held viable, the underlying work has been substantially or entirely reproduced.” An ad “based upon an earlier advertisement which in turn drew upon various materials Fischer sent Brushy” is a kind of “composite” work not covered by 1202.  The four phrases themselves also couldn’t form the basis of a DMCA claim.  “CMI exists to inform the public that a work is copyrighted and by whom.” But the four phrases weren’t CMI; only one even mentioned Fischer, and no reader would find that “Fischer’s” as used in the phrase “Fischer’s Bee-Quick is a safe, gentle, and pleasant way to harvest your honey” “speaks to copyright ownership” of that phrase or the others:

Imagine that the back cover of the Ian Fleming novel Dr. No. contained the following encomium: “In Ian Fleming’s Dr. No, Fleming shows his mastery of Cold War spycraft.” Imagine then that a person lifted language from that review to promote a different thriller, writing: “In John Le CarrĂ©’s Tinker, Tailor, Soldier, Spy, Le CarrĂ© shows his mastery of Cold War spycraft.” Whatever the other legal implications of such conduct might be, it is inconceivable that a DMCA claim would lie from the elimination of Fleming’s name. The expression at issue does not connote Fleming’s copyright ownership of anything, much less the language common to the two book-promoting blurbs. Fischer’s name—whose deletion Fischer’s DMCA claim challenges—similarly has no CMI relevance as used in Defendants’ advertisement. It neither informs the reader that Fischer wrote either the phrase to which “Fischer’s” is attached or the surrounding text.

False endorsement: Fischer argued that defendants violated the Lanham Act by including his name in the post-domain path of URLs that linked to Defendants’ Natural Honey Harvester, e.g.,  As a matter of law, Fischer couldn’t show confusion. There was no evidence of actual confusion.  Fischer pointed to a review from Brushy’s website stating that an later shipment of a product was not as good as an earlier shipment, but there was no evidence that these were the parties’ respectively.  Fischer also failed to show that the post-domain path names were the cause of Google search results, and his evidence showed that Google provided mostly results for his product, which would indicate that consumers wouldn’t be led astray.  His claims of initial interest confusion were “factually threadbare” and failed to show intentional deception, which is important online because consumers can so easily click back.

Bad faith: There was no evidence that the use of his name in the post-domain URL was knowing; the use of existing URLs was inadvertent, according to Brushy.  Although two archived links on the website contain Fischer’s name, they don’t appear on any webpage advertising Brushy’s products, and were retained to avoid spoliation concerns.

Consumer sophistication: As the report indicated, “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.”  Plus, precedent indicates that post-domain paths usually don’t signify source. 

Fischer argued that the continued use of a mark after the termination of a licensing agreement should be a factor in his favor. Courts in this district have indeed held that “[w]hen an ex-licensee continues to use a mark after its license expires, likelihood of confusion is established as a matter of law.” But here, Brushy hadn’t been using Fischer’s name as a mark.  The per se rule of the former licensee cases was inapplicable.

False advertising: Fischer argued that the “Come out with our own” claim was false because Brushy bought its product from a third party.   This statement wasn’t literally false; it didn’t “unavoidably signify that the product offered by Brushy was created in the first instance by Brushy.” Nor was there evidence of deliberate deception or consumer confusion.

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