Dastar bars Lanham Act claims against unauthorized copying of photo for album cover

Patterson v. Diggs, No. 18-CV-03142 (NSR), 2019 WL 3996493 (S.D.N.Y. Aug. 23, 2019)

Patterson is “an internationally known photographer” who took photos of “a nickel-silver casing created by nonparty Moroccan company Yahya Creation” without a written contract and without being paid, spending over 80 hours doing so. The relevant photo was registered in 2017, though the metadata referred to 2013.  This casing, as far as I can tell, is the cover of the unique copy of the Wu-Tang Clan album “Once Upon a Time in Shaolin,” although the complaint alleged that the album uses Patterson’s work as cover art, so I'm a bit confused.  He sued the Wu-Tang Clan and others for using the work as cover art, advertising the album for sale [though the album is famously not available for ordinary sale], and using the work to market and advertise musical concerts and tours.

The copyright claims survived, but not Lanham Act claims.  CMI removal claims also survived because Patterson alleged that defendants, without authorization, “intentionally remov[ed] and/or alter[ed] the copyright information, in the form of metadata, on the copy of at least Plaintiff’s copyrighted photograph, and distribut[ed] copyright management information with knowledge that the copyright management information had been removed or altered ... and distributed and publicly displayed the material, knowing that copyright management information had been removed or altered.” This was supported with an exhibit purporting to show the alleged metadata included in one photograph, which lists Patterson as the author of the photograph, marks the status of the photograph as “Copyrighted,” contains a “Copyright Notice” that reads, “image © 2013 Warren Wesley Patterson,” and includes a “Copyright Info URL” box listing Patterson’s website.  [If it’s metadata, how is it supposed to persist in analog copies? I can also imagine some other courts being pickier about alleging which defendants did what given 1202's nested knowledge requirements. This issue may instead be the subject of targeted summary judgment, if the case gets that far.]

Likewise, vicarious copyright infringement claims survived because Patterson alleged the right and ability to supervise plus direct financial benefit, “including without limitation [through] revenue sharing and/or royalty payments for each infringing version [of the Album] sold.” It was at least arguable that Patterson’s work, “which is prominently featured in advertisements for the Album and in entertainment articles describing the Album, has played a role in the Album’s marketability, reaping Defendants direct financial benefits in the form of album sales.”  [Unless I misunderstand what’s going on with the album entirely, this allegation seems misleading, since there’s only one copy, now in the hands of the government, whose marketability is focused on its uniqueness in an age of mechanical reproduction.] 

Contributory infringement claims were also sufficiently pled. Defendants allegedly “induced, caused, and/or materially contributed to the direct infringement of Plaintiffs’ [W]ork ... by, among other things, commissioning and/or licensing the electronic versions of the Plaintiff’s photograph, and providing galley proofs or similar high-quality source material for rendition into electronic format.” Though allegations of constructive or actual knowledge were “a legal conclusion not entitled to a presumption of truth,” there were sufficient allegations related to knowledge—Patterson provided email exchanges between himself and one of the defendants related to the work and referring to the Album. [Which sounds like there’s going to be a strong implied license defense for at least some uses.]  “[D]rawing all reasonable inferences in Plaintiff’s favor, it is plausible that the remaining Defendants, as the recording artists and distributors of the Album, would have reason to know of the infringing use of Plaintiff’s Work on the Album cover.”  [FWIW, many of the members of Wu-Tang  ultimately said, apparently even before this lawsuit, that they didn’t even know their contributions were going to be worked into an album.  I also learned that at least one of the 120 members of the venire who said they couldn’t give Martin Shkreli a fair trial explained that it was because  “He disrespected the Wu-Tang.”]

Lanham Act claims: Patterson alleged both source/endorsement confusion and false advertising.  For the former, Patterson alleged that using the cover misrepresented the origin of the art.  “However, the author of a photograph that is reproduced in tangible products or goods such as a musical album cover is not the ‘origin of goods’ within the meaning of the Lanham Act.” Shepard v. European Pressphoto Agency, 291 F. Supp. 3d 465 (S.D.N.Y. 2017), [wrongly] held that the author of a “communicative product” such as a photograph who is also the producer of tangible goods offered for sale may assert a Lanham Act claim for false designation of origin. This case was distinguishable because Patterson didn’t allege that he advertised or sold any of his photos, even though he alleged that the parties’ “products and services” target the “exact same consumers.” Anyway, the underlying theory was “meritless, as the Amended Complaint clearly states that Defendants created the Album, and consumers who purchased the Album were not falsely informed about the origins of the Album because Defendants did in fact produce it.”

And you can’t restyle the exact same Dastar-barred facts as false advertising to avoid Dastar. Allegations that defendants gave the false impression that Patterson authorized the reproduction and distribution of the work didn’t allege a misrepresentation of “the nature, characteristics, qualities, or geographic origin” of defendants’ goods. “The import of Dastar that an author’s recourse for unauthorized use is in copyright cannot be avoided by shoe-horning a claim into section 43(a)(1)(B) rather than 43(a)(1)(A).”