What Dastar took, does 1202 give back?

Another older case found in my year-end roundup.

Pilla v. Gilat, 2020 WL 1309086, No. 19-CV-2255 (KMK) (S.D.N.Y. Mar. 19, 2020)

Pilla provides “professional architectural services to various construction projects.” Defendants own a “luxury construction project” at 324–326 West 108th Street in New York City involving the renovations of two existing five-story buildings and a sixth-story addition to the buildings. Pilla provided architectural services to defendants for the project and registered two sets of architectural drawings therefor. Pilla alleged that defendants began unlawfully copying the designs, including by submitting unauthorized copies to the NYC Department of Buildings, representing that the submitted drawings were their own, and Gilat “intentionally removed [Plaintiff’s] name and [the] notice of copyright” from the original designs.

The court couldn’t resolve the substantial similarity issues on a motion to dismiss, even given that the existing building constrained the designs. Defendants’ arguments, such as that similarities were attributable to the codes of the Landmark Preservation Commission, had to await summary judgment. Even for architecture, dismissal on a motion to dismiss required an “utter lack of similarity,” not present here.

Of more interest: Dastar barred the false designation of origin claim. The “copying of creative content like [architectural drawings] is not protected by the origin of work provision of the Lanham Act ... precisely because this sort of claim falls within the purview of copyright law.” (Dismissed without prejudice in case plaintiff could allege the presentation of a “tangible good[ ] ... offered for sale.”  The court gets a bit confused: it suggests that allegations of copying “with no revisions or changes” could state a false designation of origin claim, but copying to create a derivative work couldn’t; this is just wrong because of the “tangible good” issue.)

DMCA §1202: The court refuses to dismiss the claim for CMI removal/alteration. Courts in general have not always taken 1202 seriously by its own terms, perhaps because it seems very limited if they were to do so. By its own terms, 1202 treats “removing” CMI differently from “distributing copies that have had the CMI removed.” But, as the court here does, courts often collapse those two together. On a motion to dismiss, Pilla sufficiently alleged the necessary double intent, “albeit barely.” It alleged that there was CMI on its designs: its logo, name, and seal, as well as a note stating, “[t]he entire contents of this document ... and all copyrights therein[ ] are and shall remain the sole and exclusive property of [Plaintiff]. The documents and their contents may not be used, photocopied[,] or reproduced digitally, electronically[,] or in any other manner without the express written consent of [Plaintiff].”

It wasn’t necessary to allege how, when, or where the CMI removal occurred, and Pilla sufficiently alleged that this was intentional. And Pilla alleged that defendants copied the designs and submitted derivative designs to NYC. [Note that the court doesn’t require explanation or allegation of how this removal induced, enabled, etc. infringement—would fewer copies have been created if they’d left this information on?] The court signalled that it would be open to the argument that infringing derivative works (that is, nonexact copies) can’t violate §1202, but reserved this issue for later development. And Pilla seemed to state a claim for provision of false CMI, for the same reasons.