you can't plead false advertising to get around Dastar

Focal Point Films, LLC v. Sandhu, 2019 WL 7020209, No. 19-cv-02898-JCS (N.D. Cal. Dec. 20, 2019) (magistrate, by consent)

Focal Point/Gibel sought a declaratory judgment that Gibel was the sole author of a documentary film called Sign My Name to Freedom about “a 94-year old African American woman who entered the public spotlight when she became the oldest National Park Ranger serving in the United States.” Defendant Arjot Sandhu, who met Gibel at a documentary filmmaker workshop and asked to assist with the project, also worked on the film. Sandhu counterclaimed for a declaratory judgment that she was a co-author and related counterclaims.

Gibel alleged that Sandhu worked “as an extra camera operator during a handful of shoots, always under Gibel’s supervision and with the understanding that Sandhu would be compensated on partially deferred basis.” She also helped with fundraising. Gibel allegedly offered Sandhu an “Associate Producer” credit for this work, but the parties were unable to reach agreement on a written contract setting forth their arrangement. Sandhu allegedly snuck unauthorized co-director and co-editor credits for herself into a “pitch deck” for the film, and even after Gibel told Sandhu he was terminating her services she allegedly continued to hold herself out as an authorized representative of the film.

Sandhu disputed Gibel’s account and alleged that her authorship included, among other things, “conception, creative direction, content selection, directing scenes, overseeing the Film’s production, supervising the work of editors, filming scenes, editing footage, pitching the Film at film festivals, and collaborating on all other aspects of the Film’s creation and promotion, including the overall arc and direction of the Film.” Gibel allegedly publicly represented that she was a coequal partner in correspondence with third parties and promotional materials until the fall of 2018, when Gibel blocked her access to the film’s social media, to key documents, and to grant funds jointly raised and awarded to the project. Sandhu counterclaimed for declaratory judgment of authorship, unjust enrichment, intentional interference with prospective economic advantage, and false advertising and unfair competition under the Lanham Act and the UCL.

Under Dastar and Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008), the Lanham Act claims failed. Dastar barred a reverse passing off claim, and Sybersound said that misrepresentations about authorship aren’t actionable under §43(a)(1)(B). Sandhu argued that §43(a)(1)(B) claims are still available when they’re based on something more than failure to provide credit, and that her ownership of the film by virtue of “sweat equity” was an actionable “characteristic” of the relevant good, the film. She argued that Sybersound held merely that the licensing status of a work wasn’t a “characteristic” for these purposes, and that statements Gibel made to potential funders of the film about Sandhu damaged her reputation in the Bay Area documentary filmmaking community. None of that helped: this was a claim based on an alleged failure to give her appropriate credit. Authorship, like licensing status, is not a “characteristic” of a good.

Nor could Sandhu state a claim based on alleged injury to her reputation under Lexmark. The specific facts she alleged made clear that the alleged harm was the result of [both explicit and implicit] representations by Gibel about her role as a coauthor of the film. “While it may be possible to amend this claim to allege injury to a commercial interest in reputation that is not a result of representations about Sandhu’s authorship of the Film, she has not done so.” 

Note that this holding, while stemming rather naturally from existing cases, also hits on a pressure point in Dastar, which was about reverse passing off rather than passing off. When the defendant does mention the plaintiff—what in trademark would be passing off, and in false advertising would be a falsely negative statement about the plaintiff as opposed to a falsely positive statement about the defendant—matters are arguably different enough to demand different treatment. On the other hand, and as the court recognized here, often enough there is no coherent way to distinguish explicit from implicit statements about the plaintiff, especially when the defendant is describing its own product (here, the film). The situation for trademark can be the same, where the defendant has the right to, e.g., reproduce a work in the public domain but the plaintiff claims trademark rights in aspects of the public domain work such as the characters. To be effective, Dastar sometimes has to be indifferent to whether the alleged falsehood is explicit or implicit.

The UCL claim also failed. The “unlawful” claim failed to the extent it was based on alleged Lanham Act violations; state law unfair competition is “substantially congruent” to the Lanham Act. And as for “unfair,” Sandhu didn’t allege any “incipient violation of an antitrust law, or [conduct that] violates the spirit or policy of those laws because its effects are comparable to or the same as a violation of the law, or otherwise significantly threatens or harms competition.’ ” It was not enough to allege that Gibel’s conduct has “misled...potential investors in the Film and members of the documentary filmmaking community.”

Sandhu also failed to state a claim as to the counterclaim for intentional interference with prospective economic relations because she couldn’t identify an independent wrong other than the above.