Don't send a trademark to do a copyright's job, forestry edition

Munro v. Lucy Activewear, Inc., No. 16-4483 (8th Cir. Aug. 9, 2018)

Munro is an artist best known for his works “Field of Light” and “Forest of Light”—“large-scale, immersive, light-based installations, and exhibitions.” Lucy allegedly proposed a Lucy advertising and promotional campaign featuring Munro’s work.  Relying on a promise of confidentiality, Munro allegedly shared additional information with Lucy about his prior work and disclosed that he was in talks with public officials in Boston about creating a public exhibition in the city. In October 2013, Lucy launched a light exhibition and advertising campaign for Lucy in Boston. “Light Forest” was an interactive light installation that responded to the participants’ movements. Munro sued for infringement of trademark and trade dress and usurpation of a prospective business opportunity.

The trade dress claim failed because of Dastar (and Wal-Mart).  Munro’s allegation that Lucy created a “knockoff” light installation that basically plagiarized his creative designs sounded in copyright, not trademark. “Munro’s installation is not a ‘mark’ that the Lanham Act was attempting to protect. Rather, the installation is the product itself.”

Munro’s fraud claim failed because allegations that Lucy didn’t keep its promises weren’t enough to make it plausible that Lucy didn’t intend to keep those promises when it made them, as required for fraud. The tortious interference claim was based on the theory that Lucy gave Boston an alternative to his project in reproducing works similar to his sculptures, and was therefore preempted by the Copyright Act.

Trademark infringement: this one survives, though for how long is an open question.  Dastar didn’t bar the claim that Lucy’s use of the name “Light Forest” was a confusingly similar and colorable imitation of his “Forest of Light” and “Field of Light” trademarks. “[A]n artist is considered the producer of the creative ideas of his work, but if the artist also makes and sells his artwork himself, then he is considered the producer of that good or service as well and is ‘able to assert a Lanham Act claim for false designation of origin.’” Munro sufficiently alleged that he was the producer and promoter of the underlying goods, which doesn’t quite get at what the court of appeals described as the district court’s conclusion: that Munro didn’t allege facts suggesting that the names served a source-identifying function.  It’s not definitionally true that, as the court of appeals concluded, “[b]ecause Munro produces these installations, he is the ‘origin of goods’ or ‘source’ that the names identify, which entitles him to bring an action under the Lanham Act.”  In addition, the names themselves must be distinctive.  Given the underlying works, the names here seem highly descriptive.  That doesn’t rule out acquired distinctiveness, but I wonder about the proof there.