Another API (c) case with false advertising and contract claims too

Trackman, Inc. v. GSP Golf AB, 2024 WL 4276497, No. 23 Civ. 598 (NRB) (S.D.N.Y. Sept. 24, 2024)

Trackman makes the golf simulator game Perfect Golf, which offers users the ability to virtually play some of the most famous golf courses in the world. Defendants allegedly copied key components of Trackman’s copyrighted software and falsely suggested, in promotions and advertisements, that defendants were authorized to use the well-known courses in their game.

Although the court dismissed a contract claim, copyright and false advertising claims survived.

Plaintiff’s Perfect Golf simulator allows users to design golf courses; has “an API4 for external tournament sites to be able to fully integrate into Perfect Golf for online real-time scoring and tracking”; and allows users to play each other on courses designed in the simulator. Using a combination of radars and cameras, plaintiff’s launch monitors track the full trajectory of a golf shot. Launch monitors incorporated into plaintiff’s simulator technology, which allows users to play golf indoors using real clubs and balls in front of an “impact screen” that displays the simulation and keeps golf balls from ricocheting back at the player after they are hit.

Perfect Golf has a EULA that bans reverse engineering.

Although Perfect Golf used to be compatible with third-party launch monitors, as of August 2020, Perfect Golf users had to buy plaintiff’s launch monitors to play the game.

Defendant saw the compatibility-breaking as an opportunity to replace Perfect Golf and be compatible across a number of launch monitors.

This first required developing golf simulator software, eventually called GSPro. GSPro allegedly copied Perfect Golf’s course-creating code as well as copied Perfect Golf’s ‘combine’ feature,” which “enables golfers to identify strengths and weaknesses in their game.” Defendants also allegedly developed an online platform to host tournament play by GSPro users that copied Perfect Golf’s API data structures for simulating golf competitions. And they allegedly copied golf courses created on Perfect Golf’s course design platform.

In addition, defendants allegedly claimed that course selection included “iconic, branded courses like St. Andrews in Scotland and various PGA Tour Tournament Players Club courses throughout the United States” without having the licenses “required” to offer those courses, while plaintiff had “diligently sought and obtained permission[ ], including trademark licenses, from the owners of branded golf courses,” including St. Andrews and various PGA Tour courses. “Eventually, in 2023, the trademark owners of the St. Andrews and PGA Tour courses sent cease-and-desist letters to defendants, after which defendants ‘removed, disabled access to, or renamed the St. Andrews and PGA Tour courses,’” but plaintiffs argued that the damage had been done.

The court refused to hold on a motion to dismiss that the API data structures at the center of the dispute (which sound like they’re needed for interoperability) were not copyrightable, relying on the Federal Circuit’s decision in Google v. Oracle. The structures at issue include “shared naming conventions that allows a simulated golf tournament site … both to communicate with [client] software … and to process data, like how many shots it takes for a player to complete a hole in the golf simulation.”

The court found that plaintiff sufficiently pled the “modest” requirements of originality by alleging that it spent “years” developing the program, which provides, among other things, “an immersive experience centered on high-resolution visuals” and “hyper-realistic gameplay.” (Why does this make the API protectable?) It also alleged that it “built” an API. (That very verb signals the issue.) But: “Such allegations, at this stage, are more than sufficient to demonstrate that Perfect Parallel both independently developed the subject API structures and made numerous creative decisions in doing so.” Anyway, questions of originality are generally inappropriate for determination on a motion to dismiss. Likewise, whether plaintiff’s API structures were a protectable process or method of operation couldn’t be determined on a motion to dismiss.

Estoppel/license defenses were also premature, and the complaint satisfied the discovery rule on its face for statute of limitations purposes.

However, the court dismissed the breach of contract claim, finding the EULA’s anti-reverse engineering provisions preempted by copyright law. “Put simply, plaintiff claims that defendants breached the [reverse engineering] Provision by ‘studying and analyzing’ plaintiff’s software as part of its efforts to develop its own competing golf simulator software that would be compatible with Course Forge courses and third-party hardware.”

The disputed work was clearly within the scope of copyright—software/literary work. For express preemption to apply, “the state law claim must involve acts of reproduction, adaptation, performance, distribution, or display.” That was true here. But a claim isn’t preempted if it has an extra element that makes it qualitatively different. Unlike other circuits, the Second Circuit has instructed that the “extra element” inquiry is not “mechanical” but instead “requires a holistic evaluation of the nature of the rights sought to be enforced, and a determination whether the state law action is qualitatively different from a copyright infringement claim.”

While some courts have held that the promise element of a contract claim suffices, categorically exempting contract claims from preemption, the Second Circuit hasn’t. (And in an age of unavoidable contracts of adhesion, saying that as a matter of law there’s an actual “promise” and then that the promise avoids preemption seems wrong.) In the Second Circuit, “a breach of contract claim is preempted if it is merely based on allegations that the defendant did something that the copyright laws reserve exclusively to the plaintiff (such as unauthorized reproduction, performance, distribution, or display).”

Plaintiff argued that its contract claim was distinguishable because it is specifically (and carefully) “directed to the non-copying acts of studying and analyzing copyrighted works.” But, evaluating the nature of the rights sought to be enforced “holistically” showed that the contract claim was centrally about copying (or studying) in order to create competing works. Defendants’ “studying and analyzing” were “part and parcel of their broader infringing conduct that is at the heart of plaintiff’s copyright claims (i.e., unlawfully developing, producing, and distributing plaintiff’s software).”

Then, in a footnote revealing a fundamental misunderstanding, the court noted the strategic reasons for a breach of a contract claim, if the API structures turn out not to be copyrightable—in that case plaintiff would be “wholly or partly without a remedy.” Thus, the court dismissed the contract claim without prejudice if there are “substantial changes in the law.” This is a flat-out mistake about 301’s scope, which doesn’t just apply when there are valid © claims. It applies when the subject matter is the same as ©’s subject matter, whether or not the material at issue is protectable. That’s why you can’t use state law to protect works whose copyright has expired, or the facts in a work. If it’s a claim whose gravamen is copying a fixed work, then the unprotectability of the copied material doesn’t matter.

And then the court upheld a false advertising claim that seems quite problematic to me. Plaintiff alleged that defendants “sought to commercially advertise and promote the availability of iconic branded golf courses for simulator play on the SGT platform,” which misleadingly suggested that they were “authorized to offer genuine, trademarked courses,” when, in reality, defendants “lacked the rights to offer these branded courses.” The court agreed that plaintiff didn’t allege literal falsity, but found that implied falsity was plausible.

The claims weren’t literally false because “iconic, branded golf courses” were available for play. But they might have falsely implied licensing/endorsement, and plaintiff didn’t need to provide extrinsic evidence of deception at this stage. Also (ugh), intentional deception might obviate the need for evidence of confusion, and the facts here might allow that theory: Defendants allegedly

(1)  knew that they did not have the requisite authorization to make available the trademarked courses; (2) made a litany of statements on social media and elsewhere suggesting that they had such authorization; and (3) made these statements with the intention of influencing “a significant number of users” to purchase SGT subscriptions and GSPro downloads on the basis that they could play “at some of the most coveted courses around the world.”

Even though (3) was true, that was enough for the court.

What about materiality? It was plausible that consumers would care about whether the courses endorsed defendants, because the courses are official partners of plaintiff, which was plausibly related to plaintiff’s success.

What about Dastar? Some courts have rejected Lanham Act claims premised upon false representations of licensing status.” E.g., Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008), rejected the plaintiff’s argument that “the licensing status of each work is part of the nature, characteristics, or qualities of the karaoke products” because they weren’t characteristics of the goods themselves. But the court found this line of cases to be irrelevant to the false advertising claim here. “Dastar and the like are concerned about impermissibly blurring the lines between trademark and copyright law.” The claims here were “based solely on the SGT Defendants’ misleading statements regarding the licensing of trademarked courses, not the licensing of expressive copyrighted (or copyrightable) material…. [T]he misrepresentations at issue have nothing to do with claims of authorship of an expressive work or creation of an invention.” Plaintiff wasn’t suing over copying the simulated version of the course.

This is a little weird given that the representations of the courses were copyrightable representations—the license was a license to represent the courses, not to play on them or replicate them in the physical world. More to the point, though, the analysis does not fit well with today’s textualism. Dastar says that is about the meaning of “origin” in the Lanham Act, even if that interpretation was motivated in significant part by avoiding a TM/© conflict. Dastar says that “origin” does not include the origin of intangible content—including who “stands behind” that intangible content. It specifically addresses the argument that intangible origin could well matter to consumers for “communicative” goods. You can get there textually by saying that “nature, characteristics or qualities” is broader than “origin,” for sure. But I think these days you have to take that step.

It’s also worth noting that the TM claim here is based on the representation of golf courses in the game, which shouldn’t require permission any more than a book about the golf courses would—there are pretty significant Rogers issues as well, and the trademark claimants aren’t even actually here to make their claims.

false "patented/proprietary/exclusive" claims can be actionable despite Dastar

Crocs, Inc. v. Effervescent, Inc., No. 2022-2160 (Fed. Cir. Oct. 3, 2024)

Crocs sued competitors for patent infringement; defendant Dawgs counterclaimed for false advertising about the characteristics of the primary material Crocs uses to make its footwear products, a material it promoted as the “patented,” “proprietary,” and “exclusive” “Croslite.” Dawgs alleged that none of this was true, but that Crocs misled current and potential customers to believe that “Crocs’ molded footwear is made of a material that is different than any other footwear.” The district court, relying on the Federal Circuit’s Baden decision interpreting Dastar, tossed out the claims, reasoning that these terms were Dastar-barred claims of inventorship rather than claims about the nature of Crocs’ products. The court of appeals reversed.

Baden found that claims to have “innovative” technology were Dastar-barred. Baden had argued that Molten’s advertisements were false “precisely because Molten was not the source of the innovation,” i.e., not the author. But “authorship, like licensing status, is not a nature, characteristic, or quality, as those terms are used in Section 43(a)(1)(B) of the Lanham Act.” By contrast, “here, the false claim that a product is patented does not stand alone. Dawgs presents allegations and evidence that the falsity of Crocs’ promotional statements is rooted in the nature, characteristics, or qualities of Crocs’ products.”

Specifically, “[a] claim that a product is constructed of ‘patented’ material is not solely an expression of innovation and, hence, authorship.” In Baden, there weren’t ads “linking such claims to a product’s tangible nature, characteristics, or qualities.” But here, Dawgs alleged promotional statements by Crocs that a patent covers Croslite, paired with statements that “Croslite has numerous tangible benefits.” Thus, the claim “patented” “was used by Crocs to ascribe characteristics that go to the nature and qualities of Croslite.” This plausibly alleged that consumers would be misled about the “nature, characteristics, or qualities” of Crocs’ product.

using results from one product to tout another isn't passing off, but could be false advertising

Ortho-Tain, Inc. v. Colorado Vivos Therapeutics, Inc., 2024 WL 3925408, No. 20 C 4301 (N.D. Ill. Aug. 23, 2024)

Ortho-Tain sued defendants (including a bunch of former employees); I’ll focus only on the Lanham Act claims alleging that they falsely took credit for favorable results achieved by Ortho-Tain’s orthodontic appliance products used to treat various conditions such as sleep disordered breathing. Basically, dentists working as paid presenters showcased case studies of several pediatric patients who had achieved favorable results using Ortho-Tain’s orthodontic appliances. Defendant Vivos sponsored similar presentations, as well as a “parent webinar,” using the same exact case studies. The slides displayed the name “Vivos” and the presenters attributed the favorable results to Vivos’ products, not Ortho-Tain.

This could not be brought as a §43(a)(1)(A) claim because of Dastar. There was neither forward nor reverse passing off of the devices themselves, only of the results: “the connection between the favorable results and appliances is an intangible idea or concept.” It wasn’t about the source of the tangible good sold in the marketplace.

But (a)(1)(B) also exists! The presentations were plausibly “commercial advertising or promotion” even if described as “seminars” and “continuing education courses.” The Seventh Circuit has said that face to face communication isn’t “commercial advertising or promotion” [though query whether that makes any sense if there’s a repeated script]. It sufficed at the pleading stage for Ortho-Tain to allege that the Vivos “course” was presented via online broadcast and live to in-person attendees on at least 26 occasions; another event was a multi-date online recorded presentation that thousands of medical professionals registered for; and the parent webinar was made available online.

And Ortho-Tain plausibly alleged falsity, or at least misleadingness. “If not explicit, the clear inference to be drawn by attendees was that the case studies showed results achieved by Vivos’ products.” In addition, and more controversially, Vivos statements about creating “revolutionary technology” and the “first-ever hope for a lasting solution to the problem of sleep apnea” were not “mere puffery.” “In the context of a scientific field made of up highly educated individuals, it is reasonable to infer at the pleading stage that ‘revolutionary’ and ‘first-ever’ carry specific meanings as to the novel nature or method of the appliance being described.”

Trademark law and LinkedIn resumes: watch out?

Portkey Tech. PTE Ltd v. Venkateswaran, 2024 WL 3487735, No. 23-CV-5074 (JPO) (S.D.N.Y. Jul. 19, 2024)

Another case that starkly shows the effects of trademark’s abandonment of any harm requirement, not to its benefit, where false advertising claims fail because alleged misstatements about the extent of the defendant’s past involvement with a company don’t do it any identifiable harm, but trademark claims succeed because something something affiliation. (Maybe companies can resurrect noncompetes by prohibiting uses of their trademarks in former employees’ resumes! This is a joke, but that doesn’t mean it won’t happen.)

Portkey sued for unfair competition/reverse passing off, false advertising, and trademark infringement under the Lanham Act, as well as related state-law claims. It alleged that plaintiff Vignesh Sundaresan is the founder and sole proprietor of Portkey, a “software and technology company that operates many of Sundaresan’s blockchain, NFT, and Web3 projects.” Venkateswaran allegedly worked as an independent contractor for Portkey from 2017 to 2022, during which Venkateswaran performed work in areas like “communications and public relations,” “management of social media platforms,” and “attending and representing in conferences.” Sundaresan allegedly directed Venkateswaran and others at the company to adopt the alias “TWOBADOUR” when communicating with the public, and to “assist in the operation of METAPURSE,” which is “a fund utilized for the acquisition of digital art NFTs and virtual land NDTs, and other Web3-related investments.”

In 2022, the relationship dissolved; Portkey objected to Venkateswaran’s alleged references to Portkey and its asserted trademarks since 2022. “Venkateswaran publicly lists his former work at Portkey—including use of the TWOBADOUR alias and involvement with METAPURSE—on his ‘bios’ on Twitter and LinkedIn and has allegedly continued to associate himself with those projects in his public and private statements.”

This is the Second Circuit, so nominative fair use is just a set of considerations to put into the hopper, and it’s almost impossibly difficult to kick out an infringement claim on a motion to dismiss without something like “clear parody or a total absence of proximity between the marks.”

Here, the marks in question were used at the top of Venkateswaran’s public profiles, directly proximate to his current business ventures. Sometimes Venkateswaran noted a past affiliation with TWOBADOUR and METAPURSE, but other times he did not. And sometimes he used terms that may still lend themselves to confusion (such as abbreviating “Former” into “Fmr”). For example, the First Amended Complaint alleges that Venkateswaran included on LinkedIn that he was the “Fmr Steward of Metapurse,” but then simply “Creator of the @Twobadour pseudonym.” Even if Venkateswaran is correct that an indication of former affiliation is not likely confusing as a matter of law, that would not shield the alleged reference to the TWOBADOUR mark, which at least on LinkedIn lacks an indication that the affiliation had ended.

Anyway, you can’t use “any indication of non-affiliation” to avoid an infringement claim, per JDI. “It still may be that some disclaimers or other explicit indications of non-affiliation will be enough to render consumer confusion unlikely, but whether that is true in this case will depend on facts not yet before the Court.” This bore on the similarity factor: “arguments about explicit indications of non-affiliation go to similarity.” And because the text of the alleged marks was similar (which will always be the case in any truthful reporting of former employment), and there was a disputed issue of fact about whether “former” and the like mattered, similarity weighed in favor of confusion.  

The court specifically noted that actual confusion was not plausibly alleged because the allegations were conclusory, but that didn’t matter. By contrast, allegations that defendant had “actual knowledge that Plaintiffs own all rights, title, and interest in the trademark METAPURSE,” that such references “have been willful, wanton, and in bad faith, and with intent to misrepresent Plaintiff’s business operations and successes as that of his own,” and that Venkateswaran “is attempting to exploit Plaintiff’s reputations and intellectual property to intentionally cause confusion among investors, artists, artist estates, trade conference organizers and organizations, scholars, publishers, and other market participants, hoping people choose to do business with him and his associated businesses, mistakenly believing that ... he remains associated with Plaintiffs and their business” plausibly alleged bad faith. What’s the difference?

The NFU factors didn’t help because they were “often heavily factual and thus ill-suited for the motion-to-dismiss stage.” Most notably, “the third element of the nominative fair use defenses requires that the use of the trademark not create a likelihood of confusion as to the mark-holder’s sponsorship, endorsement, or affiliation ... the existence of [which] necessitates focusing on ‘the minds of the relevant purchasers—an analysis based on a factual inquiry inappropriate to a motion to dismiss.’ ”

There was also “use in commerce” because Venkateswaran was promoting himself and his business ventures on LinkedIn.  

Reverse passing off claims, however, failed. Plaintiffs alleged that Venkateswaran represented to the public that he was more involved with the creation and management of TWOBADOUR and METAPURSE than he actually was, thus “passing off” the goods and services sold under those marks as his own. Under Dastar, prior involvement in the creation and promotion of a trademark is not “origin” of tangible goods or services, and thus misrepresentations as to same aren’t misrepresentations of “origin.”

False advertising: Plaintiffs didn’t plausibly allege “economic or reputational injury flowing directly from the deception wrought by the defendant’s advertising,” which usually occurs when “deception of consumers causes them to withhold trade from the plaintiff.” Where there is no allegation of a comparative advertisement, §43(a)(1)(B) requires “some affirmative indication of actual injury and causation.” There were no allegations of literal falsity, only “a subjective disagreement among the parties concerning the degree of Venkateswaran’s prior involvement with the business.” Nor did plaintiffs allege reputational damage.

State law consumer protection claims also failed because they didn’t allege harm to consumers; trademark confusion isn’t sufficient.

Puzzlingly, the court did find state law dilution plausibly pled because plaintiffs alleged that “Venkateswaran acted with hostility to Sundaresan’s and Portkey’s marks” and thus had predatory intent.

Slow fashion: checkerboard design plausibly infringes another checkerboard design

Hian v. Louis Vuitton USA Inc, 2024 WL 3237591, No. 22-3742 (E.D. Pa. Jun. 28, 2024)

The court tosses out most of an independent fashion designer’s claims against LVMH, while preserving one copyright infringement claim based on a distorted checkerboard pattern. I can’t say I think that one is likely to survive summary judgment, but it still puts LVMH at some risk given the accused items, which include some marketing materials.

 [Hian] sent cold solicitations to a top executive at the fashion conglomerate with hopes of a collaboration. The solicitations included original clothing designs, lookbooks, and other promotional material meant to highlight the designer’s international acclaim in the fashion industry. Ultimately, the fashion conglomerate did not make time to meet with the designer or decide to work with her. But several years later, she saw marketing campaigns and products by the fashion conglomerate that looked like three of her original designs.

Lanham Act claims failed because she didn’t allege secondary meaning, and reverse passing off in these circumstances flunks Dastar. Likewise, state unfair competition/unjust enrichment was preempted by §301, even as related to a design she hadn’t registered.  

There was no claim for copyright infringement of Green Raffia because Hian didn’t plead a registered copyright.

Plaintiff's Green Raffia design and LVMH's accused design

For the two registered designs, Hian successfully pled access: Hian’s representative emailed the Ombre design to a top executive within the LVMH conglomerate who had “access to all divisions, groups, owned companies, brands, and/or teams within LVMH and including ... any and all designers and stylists.” His assistant also physically printed the email and its attachments, including the Ombre design, and placed it on his desk. The second design, Plaque D’egout, wasn’t included in the email, but it was plausibly alleged that someone at LVMH looked up plaintiffs on the internet after plaintiffs’ work was brought to LVMH’s attention, found their Plaque D’egout design, and copied it. “We needn’t check our common sense at the door when evaluating a complaint.” Given what happened to Ombre and other promotional materials, it followed that LMVH designers had a “reasonable opportunity” to investigate plaintiffs and their work further. In addition, Hian pled that she and LMVH use the same textile manufacturers in France, and that it is common for French textile manufacturers to show off designers’ works to other designers.

Substantial similarity: plausible for Plaque D’egout, not for Ombre.

possibly the only accused LVMH clothes above; the rest seems to be marketing

accused design J is bottom right: wavy/distorted LV bag in classic LV colors

accused design M is top right: blue checkerboard top

Plaque D’egout “looks like what one might describe as an irregularly warped black-and-white checkerboard pattern.” A lay observer “might not readily find aesthetic differences between Plaque D’egout and some of the accused LVMH designs,” which shared “a number of aesthetic details in common with Plaque D’egout, including a warped black and white checkerboard pattern with similarly sized boxes.” LVMH argued that the distortions on their checkerboard designs were very different based on the shape and size of the squares in each. “Those may be significant contrasts, but we don’t think that this is necessarily the kind of thing that a lay observer who has not set out to scour the images for differences would notice.” [This is where the “prior art” inquiry/expert testimony would likely focus on summary judgment, if it gets that far.] “And the overall aesthetic feel and total concept of the designs is rather similar.” The fact that the checkerboard design is commonplace might matter, but not at the pleadings stage.

But two accused designs, J and M, weren’t substantially similar as a matter of law because of the “stark differences” between the designs “that would be obvious to even a lay observer who has not set out to look for disparities. Accused design J looks nothing like Plaque D’egout in size, shape, color, or overall aesthetic feel. And accused design M does feature a warped checkerboard design but has an overall aesthetic feel different from Plaque D’egout owing to its different color scheme.”

Note: "Ombre" is apparently a collection of Hian's, so there are two designs shown at the top of this image that she alleged were infringed.

Ombre: “We are sensitive to the factual nature of substantial similarity, but this is not even close. Ombre features horizontal transitions of color broken up by jagged lines with clearly defined edges. In contrast, the accused designs feature softly blended color transitions in various directions. And accused design D has no color transition at all.” Though some designs had similar color schemes, “random similarities are insufficient to establish substantial similarity.”

One thing that the court didn't address is: what exactly does Hian own a copyright to? The design of the original outfit?  The checkerboard fabric? The answer may affect the scope of Hian's rights. If part of the creativity of the design is how the checkerboard is placed on the human body, it seems like the marketing claims are unlikely to be valid, since they aren't replicating anything sculptural in the design. Ah, Star Athletica, screwing things up even when you aren't mentioned.

Tiktok's other, smaller legal problem

Beijing Meishe Network Technology Co. v. Tiktok Inc., 2024 WL 1772833, No. 23-cv-06012-SI (N.D. Cal. Apr. 23, 2024)

Skipping the copyright and trade secrets part of the case. (In brief: Meishe argued that Tiktok copied its code via an employee who departed. The court found aspects of the copyright/§1202 claims claim insufficiently specifically pled and granted leave to amend, including to add sufficient detail to establish that the works at issue were not US works and thus exempt from the pre-suit registration requirement. The trade secret claims were likewise dismissed with leave to amend, including to specify what acts in furtherance of the offense were committed in the US.)

False designation of origin: Meishe alleged that “TikTok informs users that it owns and has proper rights to the code it uses in its applications”; defendants “have represented that they value intellectual property and would not infringe others’ intellectual property, but have done so as described in this Complaint” and defendants “willfully continued to represent the software as their own, not credited Meishe with being the owners or author of portions of Defendants’ products or code, and not stopped distributing infringing and misappropriated code.” This was classic Dastar. As stated in Luxul Technology Inc. v. Nectarlux, LLC, 78 F. Supp. 3d 1156 (N.D. Cal. 2015) “in this circuit, a reverse passing off claim requires the alteration of a product and a subsequent sale.”

False advertising: Meishe pointed to statements defendants made in their copyright notice at tiktok.com, in the ByteDance Code of Conduct, in TikTok’s Intellectual Property Policy, and in TikTok’s terms of service. But it wasn’t clear that any of these statements were made on the context of “commercial advertising or promotion” or how these statements were likely to influence purchasing decisions by consumers. The court granted leave to amend, but it’s hard to imagine how this gets plausible under the Lanham Act.

 

 

Measuring device (c)able under Star Athletica; ignoring Dastar, court also allows false advertising claim

Leszczynski v. Kitchen Cube LLC, 2024 WL 1829620, No. 8-23-cv-01698-MEMF-ADS (C.D. Cal. Apr. 17, 2024)

Leszczynski invented a measuring cube that combines various measuring volumes into a single cubical structure. He posted the Cube design and 3D print files on Thingiverse.com, the largest site for 3D print objects. The Cube file was provided under a Creative Commons, non-commercial, no derivatives license.

Thingiverse cube

Kitchen Cube made and sold copies of the Cube. It advertised “This device was one of the most popular items on a popular 3D printing website with over 20,000 unique downloads” on its website, at a time when Leszczynski’s Thingiverse page displayed that his Cube had been downloaded 20,000 times. Kitchen Cube also stated on its website that “we designed and manufactured every kitchen measuring device in one easy to use gadget.” Kitchen Cube filed a patent application for the Cube. Other defendants manufactured and sold the Cube with their unique branding through Kitchen Cube’s affiliate program.

Kitchen Cube cube

Leszczynski sued for (1) copyright infringement; (2) violation of Creative Commons license terms; and (3) false advertising and misrepresentation.

After dealing with jurisdiction/proof of service, the court dismissed the copyright infringement claim because no registration had yet been received.

The breach of contract claim survived. Kitchen Cube argued that mutual consent and consideration were missing, but defendants’ act of downloading or utilizing the Cube file from Leszczynski’s Thingiverse page could constitute acceptance. Consideration was also alleged because the design conferred benefits to defendants, and Leszczynski received reputational benefits as a result of making the design available.

Even though the copyright was unregistered, Leszczynski could still have one. The court also found, at this stage, separability under Star Athletica, essentially because it was a 3D object (and thus could be made at a scale that would make it useless as a measuring device). I still don’t think that can be the test; that isn’t in fact imagining the design separately from the useful article, just imagining the useful article at a useless scale, like a skyscraper-sized shovel.

At this stage, Leszczynski sufficiently alleged that manufacturing and selling the Cube constituted commercial use of the Cube, and was prohibited under the Creative Commons license. He pled that his actual damages from the breach and/or the copyright infringement can be measured by multiplying the number of units sold by each defendant by $10 per unit, which sufficed. He could seek a remedy other than termination of the license, since the license didn’t exclude the right to seek damages.

False advertising: Only ok against Kitchen Cube. At this stage, Leszczynski sufficiently alleged that “Kitchen Cube’s behavior misleads the public regarding the Cube’s origin which affects Leszczynski’s market.” This claim of reputational injury seems to require secondary meaning, which seems like it would only be allowed under §(a)(1)(A), which would then generate a pretty significant Dastar problem—even under (B), the “origin” here is not physical origin.

The alleged falsehoods: (1) that Kitchen Cube “designed and manufactured” the Cube; and (2) that Kitchen Cube filed a patent application on the Cube. Kitchen Cube argued that Leszczynski admits that the alleged first false statements are true, as his copyright infringement claim is about Kitchen Cube’s manufacturing of the Cube, and that Kitchen Cube made a change to the original Cube design.

But he clearly alleged that the statement Kitchen Cube “designed and manufactured [the Cube]” was misleading because Kitchen Cube did not design it, but rather used Leszczynski’s design without authorization, even if it also made changes. (Somebody really needs to mention Dastar.) He also properly alleged a misstatement in the patent application because Kitchen Cube falsely claimed to have invented the Cube (which is not in “commercial advertising or promotion”). The court also didn’t discuss materiality (further suggesting this is really a §43(a)(1)(A) claim).

Dastar bars false advertising claim against "first of its kind" ads

 Vericool World LLC v. Igloo Prods. Corp., 2023 WL 8634803, No. 22-cv-02440-HSG (N.D. Cal. Dec. 13, 2023)

Vericool alleged that Igloo falsely claimed that its “Recool” biodegradable cooler was the first of its kind. The court found this Dastar-barred, since the alleged misstatements do not go to the “nature, characteristics, or qualities” of the cooler as required under the Lanham Act. The court rejected arguments that the materiality of the claim distinguished it from Dastar-barred claims, and that “first of its kind” doesn’t necessarily imply anything about patent/IP status.

Dastar explicitly stated that the Lanham Act “does not exist to reward manufacturers for their innovation in creating a particular device” and that the Act’s “common law foundations ... were not designed to protect originality or creativity.” “Yet that is precisely what Plaintiff seeks to protect in this case: the originality and novelty of its own cooler design.” There was no meaningful distinction between claims of being the “first” and claims of inventorship. “Plaintiff may not directly challenge the Recool as infringing its patents, but just as in Dastar and Sybersound, it is trying to protect its intellectual property rights through the Lanham Act.”

Vericool didn’t help its claim by stating in its papers that “[t]o vigorously defend its patent, Vericool World had to bring this claim.” But “[t]he rights of a patentee or copyright holder are part of a ‘carefully crafted bargain,’ ” and for whatever reason, it didn’t bring a patent infringement claim.

Zobmondo Ent. LLC v. Imagination Int’l Corp., No. CV 09-02235 ABC PLAX, 2009 WL 8714439, at *1 (C.D. Cal. June 23, 2009), found that the use of “original” to describe a board game was actionable because it was about first physical manufacture, not creation of the idea. The court here disagreed. The ad at issue wasn’t about physical manufacture, just used the word “original.” “Yet the Supreme Court has stated that patent law, and not the Lanham Act, offers protections for a manufacturer’s ‘originality’ and ‘creativity.’” Plus, Zobmondo didn’t explain why date of manufacture was a quality or characteristic of the game itself. “Although when a product was manufactured may have implications for patentability, such as whether it is considered novel or non-obvious, in the Court’s view it does not alter the nature of the product or a user’s experience with it.” In Sybersound, the Ninth Circuit explained that the “nature, characteristics, and qualities” of the karaoke recording referred to things like the “quality of its audio and visual effects.” “Such attributes would affect the consumer’s experience rather than the rights of third parties.” (Comment: “First printing” might therefore be different.)

Blue Spike, LLC v. Texas Instruments, Inc., No. 6:12-CV-499, 2014 WL 11848751, (E.D. Tex. July 25, 2014), report and recommendation adopted, No. 6:12-CV-499, 2014 WL 11829325 (E.D. Tex. Aug. 15, 2014), involved allegations that the defendants falsely claimed on their websites that they were the “first to create content fingerprinting technology,” and that competitors are using “borrowed” technology. Here too, the decision didn’t explain how being the first to use a specific kind of technology goes to the “nature, characteristics, and qualities” of the good itself as opposed to the innovation of the technology at issue.

This reasoning also disposed of the UCL claim.

Dastar bars false marking claims brought under Lanham Act (dubitante)

Urban Dollz LLC v. Lashify, Inc., 2023 WL 8292459, No. CV 23-1427-GW-AFMx (C.D. Cal. Oct. 17, 2023)

Super-interesting holding that, while there’s no patent field preemption against bringing false patent marking claims under the Lanham Act, Dastar (as expansively interpreted to cover false advertising claims) does preclude such claims, possibly only because of party argument.

Urban Doll sued Lashify for Lanham Act false advertising and false patent marking, alleging that Lashify made false statements on social media that certain of its products were patented and innovative.

A party pleading false marking claim under 35 U.S.C. § 292 must show: (1) an unpatented article; (2) an intent to deceive the public; and (3) a competitive injury. The court found that, to satisfy Rule 9(b), Urban Doll needed to allege competitive injury in more detail, and dismissed with leave to amend. (The element of knowledge of falsity was satisfied by pleading, among other things, that defendants asserted their patent rights many times; that defendants claimed that defendant Lotti was the inventor, and that they have posted on social media that “falsely claiming patents or patent pending is illegal and false marketing.” “These factual allegations support Plaintiff’s allegation that Defendants are sophisticated, which in turn supports alleged intent to deceive.”)

A competitive injury is an injury that: (1) “results from competition,” and (2) is “caused by the alleged false marking.” It wasn’t enough to allege lost sales without alleging specific facts to support the claim that it was the false statements that led to the lost sales. Defendants argued that all but one of the allegations on which Plaintiff relies “predate[s] Urban Doll’s founding,” or was made “shortly thereafter.” The court agreed that Urban Doll needed to plead either that it was a current competitor in the same market at the relevant time, or that it was a potential competitor with both the intent and action of entering the market.

Likewise, Urban Doll needed more specific instances of competitive injury such as lost sales or deterred market entry causally traceable to the false marketing.  It wasn’t enough to allege that defendants “repeatedly labeled its competitors as “infringers, copycats, and counterfeits,” “with the express purpose of driving sales away from those competitors,” and that “Defendants’ customers believe and rely on Defendants’ representation when deciding what products to purchase.” Dismissed with leave to amend.

False advertising: First, the Patent Act can’t “preempt” the Lanham Act, but to harmonize them, courts have required Lanham Act claims based on false advertising of a patent to allege bad faith, which isn’t usually required. (Honestly, it sounds like disparagement could be a better false advertising claim here, depending on what exactly was said.)

But, though no one has noticed it before, even bad faith isn’t enough because of Dastar. In Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008), “to avoid overlap between the Lanham and Copyright Acts,” the court interpreted “the nature, characteristics, and qualities of karaoke recordings under the Lanham Act ... to mean characteristics of the good itself, such as the original song and artist of the karaoke recording, and the quality of its audio and visual effects.” Misrepresentations about licensing status/compliance with copyright were not, therefore, actionable. Baden Sports, Inc. v. Molten USA, Inc., 556 F.3d 1300 (Fed. Cir. 2009), applied Sybersound to an alleged misrepresentation of inventorship. So, “authorship, like licensing status, is not a nature, characteristic, or quality, as those terms are used in Section 43(a)(1)(B) of the Lanham Act.” And that also applied to inventorship (or at least the plaintiff didn’t seem to dispute that claims only based on inventorship were barred).

The court noted that Baden wasn’t binding on it and was not immune from critique. One could read Sybersound to be about barring circumvention of patent/copyright rules by bringing a Lanham Act claim (e.g., expired patent, non-owner of IP right), not that one could never bring suit over statements about the IP status of a good. Here, at least with a bad faith add-in, the two statutes didn’t clash—the court doesn’t say this, but the logical extension is to say that the Lanham Act is precluded in false marking claims only to the extent that it’s strict liability.  

Claims about physical qualities, like “lashes are so light they literally stick to your lashes and melt within your lash line,” were not actually pled as false advertising, though the court granted leave to amend to make non-inventorship false advertising claims. Ad claims to use a “revolutionary method,” or to be the “worlds [sic] only” or “worlds [sic] first DIY lash extension system” “could reasonably be construed as being about the nature of the goods themselves (e.g., that they employed a new or unique technique or one that is superior to other products),” so the court wouldn’t construe them as only about inventorship. But the court cautioned that some of this was puffery.

too much complaining about copying triggers Dastar/preemption for other claims

Design Gaps, Inc. v. Hall, 2023 WL 8103156, No. 3:23-cv-186-MOC (W.D.N.C. Nov. 21, 2023)

Design Gaps produces custom cabinetry for high-end homes; Hall is a former employee of Design Gaps who signed a nonsolicitation/noncompete clause but went to work for a design studio that was part of Design Gaps’ main competition, Peters. Peters allegedly subsequently constructed homes with interior designs “substantially similar” to building components depicted in Design Gaps’ technical drawings. Design Gaps had in the past conducted projects for Peters Custom Homes including the design and construction of residential cabinetry in homes referred to as “Quail Hollow North” and “Lake Wylie.” Defendants allegedly promoted the kitchen and other areas of the residences designed and constructed by Design Gaps as their own designs and trade dress.

Design Gaps brought trade secret, tortious interference, and state and federal false advertising/false designation of origin claims against defendants.

Defendants moved to dismiss the Lanham Act claims as preempted by copyright. (It’s preclusion, really, but the court says that preemption principles are implemented by Dastar.) And the complaint was full of references to Design Gaps’ copyrighted designs and defendants’ “copying.” Here there was no extra element rendering the claims qualitatively different from copyright claims. Instead, plaintiffs alleged that the alleged substantial similarity itself constituted a misrepresentation of origin. This was just Dastar: “Design Gaps does not allege that the kitchens and cabinets cited in the Amended Complaint were actually sold in commerce by anyone other than the Peters Defendants.” So too for the state law claims.

(c) infringement and false advertising claims against addiction treatment competitor survive, in part

New Directions Program v. Sierra Health & Wellness Centers LLC, 2023 WL 7284797, No. 2:22-cv-01090-DAD-JDP (E.D. Cal. Nov. 1, 2023)

Plaintiff Gust is the “principal and owner” of plaintiff New Directions and “has been an expert in the field of treatment of addiction and intoxication for decades.” Gust allegedly “developed an outpatient treatment model based on the principle of addiction as a pathological relationship to intoxication rather than as a preference [for] a specific drug.”

One of Gust’s students was Daily, the founder of defendant RHCS (now owned by Sierra); when he passed away, his wife—also a defendant—took over. Plaintiffs allege that defendants falsely claimed credit for the “Gust method,” and infringed the copyright in Gust’s book Effective Outpatient Treatment for Adolescents by using copies with clients, copying two appendices for a recorded presentation, and copying the book in a brochure listing six stages of recovery that are identical to those described in the book.

The court first found that the Lanham Act claim was grounded in fraud and had to satisfy Rule 9(b).

Challenged statement: “Jon Daily’s legacy will continue as [Sierra Health and Wellness] will keep all of their intensive outpatient program with the name Recovery Happens and his model of care.” This was allegedly false because “Jon Daily had no model of care” and used the Gust model. (Those two statements are arguably in some tension.) The “when” was insufficiently alleged, so the court didn’t inquire further.

Challenged statement: “Sierra Health and Wellness and New Start Recovery Solutions are proud ... to offer the compassionate, insightful and whole person outpatient addiction treatment philosophy founded by Jon Daily.” The court found plaintiffs plausibly alleged that the addiction treatment philosophy at issue was not, in fact, founded by Daily, and that consumers would have no reason to doubt this claim. Materiality was also sufficiently pled; the court credited plaintiffs’ argument that being connected to “the legacy of an innovator in the field” makes it more likely that a product will be chosen by consumers and makes defendants seem “more substantial, credible and credentialed.” Plus, plaintiff Gust “practices in the same building as [the moving defendants],” so “even minor perceived differences between the two practices could plausibly influence consumers’ decisions.”

You may be wondering: what about Dastar and Sybersound’s extension of that reasoning, which is binding on this court? So is the court! It wasn’t going to evaluate the issue sua sponte, but it suggested that plaintiffs be prepared to address the Dastar issues if they amended the complaint. (Presumably it should feature in the answer as well.)

Challenged statement: in a section titled “the relevance of Jon Daily,” defendants’ websites state: “ ‘ADDICTION is a PATHOLOGICAL RELATIONSHIP to INTOXICATION.’ ” But Gust allegedly “developed the concept of ‘addiction to intoxication’ years before Jon Daily even entered the field.” Plaintiffs plausibly alleged misleadingness in giving Daily credit for that idea, and materiality for the reasons noted above.

 Challenged statement: Daily “believed that individuals become addicted to INTOXICATION as a way of dealing with life issues. If you remove the drug—the individual who is still addicted to intoxication will find another way to get high. For example, by using another substance or activity such as sex or gambling.”  Plaintiffs alleged that these “are all words that David Gust taught for many years” and that “[a]ttribution to Jon Daily is false and misleading ....” This wasn’t sufficiently alleged to constitute deceptive attribution to Daily as innovator.

Challenged material: a video in which Daily “uses the Gust phrase ‘Addiction to Intoxication’ ”; Gust’s book “can be seen on the video”; Daily “makes a statement that ... is clearly just [Chapter 1 from plaintiff Gust’s book, “How to Help Your Child Become Drug Free”], repurposed”; and Daily had “taken verbatim” plaintiff Gust’s “old series of projector slides” to use as his own PowerPoint slide headers without attribution. Again, plaintiffs didn’t sufficiently allege deception/that Daily claimed to have created the ideas.

Other statements dismissed as puffery: “ ‘Exceed the expectations of our clients’, ‘World Class’ and ‘Unlike any other in Northern California.’ ” as well as statements that defendants use “evidence based methods.”

Copyright: For the book, plaintiffs didn’t allege facts indicating that defendants engaged in direct copying or unlawful appropriation.  It was not enough to allege conclusorily that “defendants have copied portions of this Book and have used and published copies of portions of this book including copying and using treatment documents with clients ....”

DVD: The question was whether plaintiffs sufficiently alleged probative similarity between defendant’s DVD and two appendices to the book, “the core of the intervention phase of the Gust model.” Plaintiffs alleged that Gust’s book “describes the main topics explored in [the Gust] process as, ‘School, Family Relationship, Motivation, Legal Issues, Friendship and Social life, Employment, Finances, Physical health, self image/self respect/emotions, Additional examples’ ” And the DVD allegedly uses a slide that reads “ ‘self inventory: where to explore in the process’ ” and lists the following categories: “ ‘Family, Money, School, Sports, Legal Issue, Health, Mental Health, Friends, Self, Spirituality, Sexuality, Additional Examples.’ ” This allowed a reasonable inference that there wasn’t independent creation. “These similarities and unusual features are not de minimis and permit the court to draw the reasonable inference that the two lists are substantially similar under the extrinsic test. The court need not engage in the application of the intrinsic test in considering a motion to dismiss.”

A similar result on the brochure, where the overlap was in describing the six stages of recovery: Recognition, Admission, Petition, Acceptance, Volition, Conversion. I really can’t believe that should be sufficient, but I recognize that in the Ninth Circuit there is essentially no minimum boundary for actionable copying before, at least, summary judgment if a factfinder could actually see the similarity.

 

TM co-owner can't challenge uses authorized by other co-owners (bonus Lexmark reasoning)

Reed v. Marshall, 2023 WL 6963661, No. H-21-3942 (S.D. Tex. Oct. 20, 2023)

In 1991, Reed and defendants Marshall and Harris formed the recording group Jade, and in 1992 they signed an exclusive recording agreement with a now-defunct label, Giant. The Giant agreement provided that the service mark “JADE” would be held exclusively by the Jade Group, that at no time would more than one member of the Jade Group appear on a non-Jade Group recording, and that no additional members would be added to the Jade Group without Giant’s consent. The three principals registered JADE for “entertainment services, namely live performances by a musical group,” identifying the owner as “JADE,” a California “partnership,” “composed of Joi Marshall, Deyelle Reed and Tonya Harris.” In 1995, Harris decided to stop performing with Jade, and the members pursued individual careers.

In 2013, Marshall and Harris posted a video to YouTube.com titled “Jade — Continuum,” which included vintage footage of Jade, including Reed, from the 1990s, and promotional material for a new recording featuring Holloway under the name “JADE.” Reed objected, claiming to own “equal ownership and rights” to the Jade name and also claiming violation of her right of publicity. In 2014, Marshall and Harris appeared together at the Judge Mablean Ephraim Foundation red carpet where they identified themselves as “Jade.”

In 2018, in anticipation of a reunion tour, the three filed an application to register the service mark “JADE” for “Entertainment services in the nature of live musical performances” and related services. Marshall and Harris later entered into an agreement with defendant Holloway, pursuant to which Holloway would “create/contribute to live performances and promotions ... as ‘work for hire.’” When Reed learned that Marshall and Harris had hired Holloway to sing in her place at a “90’s Kickback Concert” tour using the Jade mark, she objected again.

Defendants admitted that they performed as Jade at a “90’s Kickback Concert” held in three different locations in 2021; they did not account to Reed for any profits.

Reed alleged that Holloway was violating §32 of the Lanham Act. Marshall and Harris responded that they, as co-owners, consented to her use (while performing with them), and no agreement with Reed barred them from doing so. The court agreed with defendants. Although Reed was clearly within the statute’s zone of interests, there was no evidence that her injuries were proximately caused by a violation of the statute. There was no argument or authority that, by performing under the mark with Marshall and Harris, Holloway infringed Reed’s rights. This is why co-ownership is disfavored in trademark—but co-ownership is not prohibited. Courts have uniformly held that federal claims for infringement cannot be maintained against co-owners because “[c]o-owners of trademarks hold ‘equal and unfettered rights of use.’ ” As one court explained, “[b]ecause co-owners are naturally associated with the same source, … use by a co-owner cannot create confusion as to the source among consumers.” Although a co-owner might be entitled to an accounting, that was not a federal claim. It follows that “a valid licensee of one co-owner of a trademark cannot be liable to another co-owner for infringement.” This reasoning also disposed of contributory/vicarious infringement claims against Marshall and Harris.

§43(a) false designation of origin/false advertising: Lexmark applied to both, and Reed failed to present evidence that she suffered an injury to a commercial interest in sales or business reputation proximately caused by the defendants’ misrepresentations. There was no evidence that Reed marketed services under the mark such that its single source identifying value had been fractured or undermined. And there was no authority that Marshall and Harris needed her authorization to use the mark in commerce. Although joint ownership might potentially lead to confusion, there was still no commercial injury to Reed’s business reputation or sales. Reed didn’t identify evidence that defendants used Reed’s likeness or voice in advertising materials, or credited Holloway instead of Reed for her performances/recordings (also Dastar-barred, by the way; the court discusses a lot of pre-Dastar 9^th Circuit precedent that can’t be valid any more).

Dilution also failed. “[F]ederal claims for dilution — like claims for infringement — cannot be maintained against co-owners.”

The court declined to exercise supplemental jurisdiction over the Texas dilution and ROP claims. (I would expect they’re preempted.)

A&E's (c) and TM claims survive against former producer's new version of cop show

A&E Television Networks, LLC v. Big Fish Entertainment, LLC, 2023 WL 4053871, No. 22 Civ. 7411 (KPF) (S.D.N.Y. Jun. 16, 2023)

The court refused to dismiss copyright and trademark claims based on copying of a TV show format, including the hosts.

A&E owns a trademark (for entertainment services) and registered copyrights for Live PD, “which for four years featured live feeds of law enforcement activity across America, along with live narration and commentary from host Dan Abrams and others.” It developed the show with Big Fish, but the parties agreed that A&E would have exclusive ownership of the rights in Live PD. “In 2020, as America reckoned with police brutality after the death of George Floyd, the show was taken off the air.”

Two years later, defendants launched “On Patrol: Live,” which was allegedly virtually identical to Live PD.

The complaint alleged that Live PD

followed several police departments from across the country in real time as they patrolled their communities, while hosts Dan Abrams, Sergeant Sean “Sticks” Larkin, and a third host, discussed the footage from a studio. This type of documentary-style series — combining carefully selected live footage from cameras mounted on police dashboards with in-studio commentary — was the first and only series to feature the work of law enforcement in real time over a sustained period.

Slicing the numbers: Live PD was the number one program (excluding sports programs) in the key demographic of adults aged 25-54 twenty-eight times in 2018; was the most watched program on ad-supported cable television during prime time on Friday and Saturday nights in 2019; and rose to among the top spots in all of cable, drawing approximately three million viewers per weekend in 2020. A&E also greenlit spinoffs: Live PD: Rewind, Live PD: Police Patrol, Live PD: Roll Call, Live PD Presents: Women on Patrol, Live PD Presents: PD Cam, Live Rescue, Live PD Presents: Top Ten Police Vehicles, and Live PD: Wanted.

Defendants allegedly launched an ad blitz proclaiming “the return,” “relaunch,” and “revival” of Live PD on REELZ, a competitor network to A&E. On Patrol: Live used the same two hosts and also features Curtis Wilson, who previously featured as a contributor on Live PD. REELZ allegedly told advertisers that the “working title” of the show was “PD Live,” and went so far as to announce that “REELZ ADDS #1 TV SHOW TO OUR PROGRAMS LINEUP” with “ALL NEW LIVE EPISODES.” A&E alleged that the new title “On Patrol: Live” was already associated with the Live PD spinoff Live PD: Police Patrol.

On June 8, 2022, multiple articles were allegedly released announcing — erroneously — that Live PD was making its return on REELZ, including a Wall Street Journal article declaring “Live PD is coming back this summer as ‘On Patrol: Live’ ” and an Atlanta Journal-Constitution article proclaiming that Live PD would “soon be live once again” as On Patrol: Live on the REELZ network. Former Live PD host and current On Patrol: Live host and executive producer Dan Abrams tweeted “somewhat misleadingly” on that day that “Live PD is coming back” while thanking “the #livepdnation” for its “patience.” One month later, he announced a promotional tour for On Patrol: Live in a manner that allegedly suggested a continuation of the Live PD series, noting that it was “hard to believe we are almost back!!” and linked a New York Post article stating that “Live PD [was] back as On Patrol: Live two years after being canceled”

An executive producer of both shows allegedly perpetuated the continuation theory by telling Entertainment Weekly that REELZ believed in the Live PD show in its original format and did not seek to bring it back in a completely different manner. REELZ’s official Twitter account retweeted the various articles discussed above and issued a press release announcing the purportedly “new” series “from the producers of Live PD,” and quoting Abrams as being “thrilled” that the “team is finally back together.” A Facebook fan page with nearly 137,000 members changed its name from “A&E LIVE PD” to “Reelz — On Patrol Live.”

The new show was allegedly “virtually indistinguishable from Live PD,” following police and sheriff’s departments in real time across the country (including some of the same departments previously featured on Live PD), while the hosts (described above) comment on the action from a studio. 

Media critics allegedly readily observed that the new show was “a clone of A&E’s Live PD,” and that “On Patrol: Live is Live PD.” Fan reactions on social media included “Ok. I’m confused. Is Live PD back on the air? If so, how do I watch?”; “Dan Abrams really got Live PD back on the air disguised under a new name and on a new channel.”; “Watching Live PD. Yeah, yeah ok. On Patrol whatever! @danabrams, this is the best Friday night in years! Glad to have you back!”; “So awesome to be spending Friday & Saturday nights watching Live PD again. I missed it!” (Query: what percentage of social media comments about On Patrol: Live does this represent? Is that a good measure of confusion? Confusion about what, exactly?)

The new show was a hit for REELZ.

Copyright: infringement can occur when someone else  copies “the author’s original contributions” to the subject work — that is, “the original way in which the author has ‘selected, coordinated, and arranged’ the elements of his or her work,” even if those elements, standing on their own, are not protectable. (So, one thing that distinguishes this case from several other plaintiff-sues-original-author cases like Fogerty v. Fantasy is that the creators are part of a corporation and so the work began life as work for hire. Nonetheless, it doesn’t seem that shocking that people who made a work before will do something similar when hired to make another. The key question is, of course, how far copyright will go to interfere with that artistic continuity.)

At this stage, the court held that Live PD was comprised of original expressions of non-protectable elements, and applied the more discerning ordinary observer test. Unprotectable elements/scènes à faire: the idea of an unscripted police show is not itself copyrightable, police department footage, disclaimer banners, segments about missing children or wanted lists, a three-host format, a view toggling between live footage and in-studio hosts, and red and blue lights.

Of note, the court declined to find that the show’s “Missing” segment, “Wanted” segment, and “Crime of the Week” segment, along with the show’s segments before and after commercial breaks, were copyrightable in themselves. “In light of the thin degree of originality that inheres in Live PD as a whole, the Court will not find that each segment, on its own, is entitled to similar protection.”

Nonetheless, A&E successfully alleged infringement of its thin copyright: “Plaintiff and Defendants are uniquely situated in that the two shows are nearly identical and use the same creative arrangement of the same hosts, lighting, guests, camera angles, screen toggling, and other stock elements, and it is that combination of identical elements that creates two works that are virtually indistinguishable.”

The following similarities, taken together, plausibly alleged infringement:

• Both shows begin with nearly-identical percussive, fast-paced music playing while a black screen displays an introductory disclaimer in white letters with nearly identical language, and such music and display appears each time the show returns from commercial;

• Both shows toggle between footage of live or pre-packaged police patrol action and studio commentary by the show’s hosts discussing the unfolding action;

• Dan Abrams is the primary host, and Sgt. Larkin the co-host, of both shows;

• Each show features a third host, which, for On Patrol: Live is Deputy Sheriff Curtis Wilson of the Richland County Police Department, a former recurring participant on multiple episodes of Live PD;

• In both shows, the three hosts are dressed similarly and situated around a table with Abrams on the left, Larkin in the middle, and the third host on the right;

 

• The studio in which the hosts sit features large TV screens on the walls and blue and red lights behind the screens;

• Abrams narrates the action on screen in both shows and uses the exact same catchphrases such as “What’s the theory here?” and “Let’s take a good look at [the missing person]”;

• Both shows feature several of the same law enforcement departments and On Patrol: Live even brings back some of the same individual officers from those counties;

• Both shows include “Crime of the Week” and “Missing” segments, with the latter segments for both shows cutting to Angeline Hartmann of the National Center for Missing and Exploited Children for a description of the circumstances behind the missing person;

 

• Both shows include a segment featuring footage of a previously committed crime while one of the hosts explains the crime and describes the suspect for whom police officers are looking;

• Both shows display the location of the law enforcement action in a rectangular box at the lower left-hand corner of the screen and, when officers speak to the camera, the shows both flash the officer’s name and department;

• Both shows feature descriptions of the events in the lower left-hand corner (e.g., “traffic stop”) with the location of the event beneath the description;

 

• Both shows display the exact same “earlier in” tagline on the top corner of the screen when airing pre-recorded footage;

• Both shows at times utilize dual screens, particularly during car chases, with footage of the road displayed in a larger screen in the upper-right-hand corner and middle of the TV screen and a smaller, overlapping screen in the lower-left-hand corner displaying the officer in the car;

• When introducing footage for the first time from a specific location, both shows display a similar U.S. map on the screen that shows the viewer where the event is taking place;

• Both shows also use the same or nearly identical camera angles, motion theory (i.e., how the graphics are zoomed in and out), process to settle on and highlight a location, and palette when featuring the U.S. map (including color choices, how the colors are used, and the relationship between the chosen colors);

• Both shows use strikingly similar logos that draw on the same marks and iconographies;

• When transitioning from one location to another, both shows first flash a screen with the city or county and state of the second location before cutting to law enforcement footage;

• Both shows end virtually identically, with footage of law enforcement action playing in a rectangular box in the middle of the screen while the credits flash beneath the footage in white letters and police lights flash on dark pavement in the background; and

• The time slots (and thus the time period covered by the live action) of both shows are the same — 9:00 p.m. to 12:00 a.m. on Friday and Saturday nights. [Um, is that even something you can count in copyright? I’m dubious about whether airtime is an element of the work. Although the court is quite careful, this does seem to be TM/market analysis creeping into copyright.]

The court found that this situation “presents the rare instance of ‘very close copying’ of Plaintiff’s original expression of elements that is nearly indistinguishable from the infringing work.” None of the elements alone would suffice, but the total look & feel was the same. Although “one cannot own a copyright in an individual, like host Dan Abrams … the Court may consider a host’s identity as part of the substantial similarity analysis. Thus the relevant inquiry is not the fact that Dan Abrams and Sgt. Larkin appear in both shows, but rather that they are used in the same fashion, around virtually identical desks with virtually identical mugs, and surrounded by nearly all of the same elements across both works.”

Big Fish didn’t identify sufficient differences to avoid infringement—the hosts wore suits on Live PD while they wore polo shirts on On Patrol: Live; they didn’t always sit in the same positions; and the textual iconographies of “Crime of the Week” differed. “A slight change of clothes, fonts, or seat positions does not engender substantial enough differences to stop an average lay observer from recognizing that the work, assessed as a whole, was copied from Plaintiff’s work, even if the individual segments on their own are not substantially similar.”

Other cases rejecting infringement claims involved “substantial differences” in “concept, feel, and theme.” E.g., American Runway was distinguishable from Project Runway because, inter alia, American Runway “is much more populist and inclusive; the viewer has a powerful voice in the outcome of the show, and the program caters to engaging the fashion sensibilities of its ‘real American’ audience.”

Trademark/unfair competition: A&E smartly relied on its LIVE PD registered trademark, rather than any elements of the show, which would create serious Dastar/functionality problems. It successfully pled confusion based on the facts about the pre-launch and post-launch advertising/social media reactions alleged above. A&E plausibly pled that its mark was strong. On similarity, the court declined to consider the working title PD Live; there was no authority that advertisers should be treated as consumers for purposes of likely confusion, and there was no evidence that they were confused or confusable consumers.

“LIVE PD and On Patrol: Live are plainly dissimilar,” and “that the two share the word ‘Live’ is insufficient, on the facts alleged in the Complaint, to suggest that a consumer would plausibly confuse the two.” Indeed, A&E itself argued that defendants “deliberately fostered the misperception that On Patrol: Live was a continuation of Live PD by repeatedly using the LIVE PD mark to promote their new show,” suggesting that it didn’t think that consumers would confuse the two standing on their own. So too with “patrol.” “Both On Patrol: Live and Live PD: Police Patrol feature the words ‘live’ and ‘patrol,’ but these words are commonplace in describing the activity of police departments and a show with live action. On this record, the Court does not find that such marks, without any indication as to the two marks’ shared appearance or other contextual factors, would be likely to confuse customers as to the nature of the mark.”

Competitive proximity: Though the two shows never aired on cable simultaneously, both parties’ YouTube channels feature clips related to their respective shows. So they’re in the same online video market.

Anecdotal evidence of actual confusion on social media was also alleged. (Was the source of the confusion the use of the name, or the use of elements for which A&E lacks trademark protection? The court notes that the tweets were not dispositive, but still found that they weighed in A&E’s favor at this stage.)

Bad faith was plausibly alleged. Defendants plausibly used the LIVE PD mark to exploit the show’s good will and reputation, including by REELZ’s retweeting of various articles and headlines informing the public that Live PD would be “returning” on REELZ and issuing a press release touting the series as the “de facto” successor to Live PD. The quotes from Dan Abrams in its press release that he was “thrilled” that the “team is finally back together,” when viewed in conjunction with Abrams’s repeated tweets about Live PD’s supposed return, suggested that defendants were “capitalizing on Live PD’s reputation and recognition (and that of its host) for their own gain.” (But does “that of its host” have a separate TM existence, and what should future employers be able to say about the host? I think the court expects nominative fair use to take care of this, and that’s plenty defensible.) It was exploiting the goodwill and reputation of Live PD to tell advertisers that “REELZ ADDS #1 TV SHOW TO OUR PROGRAMS LINEUP” with “ALL NEW LIVE EPISODES” (id. ¶¶ 48, 131), and making no effort to distinguish the two shows. (Suppose all the REELZ promotions said "a new show from the producers and stars of Live PD." Sufficient to avoid a problem? Does REELZ have to avoid retweeting anyone who doesn't include that detail? Are the retweets a plausible source of causation of confusion?)

What about nominative fair use? In the Second Circuit, you add the factors to the Polaroid factors and weigh them somehow. It’s true that you can’t reasonably talk about the new work from the producers of Live PD without saying that, so this factor weighed in favor of nominative fair use. But A&E plausibly alleged that defendants used too much, making the LIVE PD mark the “centerpiece of their deceptive marketing campaign.” Defendants responded that A&E’s claims centered around third-party articles and retweets that they promoted, rather than their own words. Defendants’ only alleged statements regarding Live PD were in a press release, wherein REELZ announced the “new” series as “from the producers of Live PD.” The court noted defendants’ point, but, “at least at the motion to dismiss stage, Defendants’ retweets — i.e., their public endorsements — of news articles claiming that Live PD was making its return, and REELZ’s press release quoting Dan Abrams’s statement that he was ‘thrilled’ the ‘team is finally back together’ (especially in light of Abrams’s continued tweets indicating that the Live PD show was back), were unnecessary to identify the new show, and therefore excessive for purposes of this factor.”

So too with the third NFU factor. It was plausible that defendants acted "willfully and intentionally to confuse the public as to the affiliation and sponsorship of the work.”           

Pandemic art kit didn't infringe artist's rights

 Keck v. Mix Creative Learning Center, LLC, No. 4:21-CV-00430, 2022 WL 19691177 (S.D. Tex. Dec. 19, 2022)

Technically, the trademark analysis here is weird (the parties agreed that the copyright fair use analysis would determine the trademark fair use analysis; the plaintiff’s lawyer is Higbee, FWIW), but the trademark claim is so clearly Dastar-barred and parasitic on the copyright claims that it’s hard to object.

Keck is a mixed-media artist who registered a trademark in her name (the court doesn’t specify for what, which is an indication of the level of attention given the trademark claims). Defendants used a couple of pictures of her Dog Art work as an example of a style that kids using its art kits could emulate. The court found that this was fair use and granted summary judgment to defendants.

During the pandemic, defendants (a local art studio and its principal) began selling art kits online “so that the students could learn about media, styles and techniques that world-renowned and lesser-known artists use, as inspiration for the students to create their own works of art.” According to Defendants, “[t]he artist’s biography and a sample of the artist’s style of work was included in each kit to recognize the artist and to document and teach the particular art style, as well as recognize such works as part of historic scholarship, promote discussion and criticism, and to inspire each student to create their own masterpiece works.” The kits included slides “with publicly available images of the artist’s works along with historical and biographical information about the artist from, for example, the artist’s publicly available website.” Defendants provided zoom art classes to accompany the kits. As part of these lessons, the individual defendant described the artists and their techniques. Several artists featured in the kits applauded and even reposted the children’s work on their Instagram accounts.

One such kit was the “Michel Keck inspired dog masterpiece kit.” The kit consisted of pictures of six pieces of Plaintiff’s art, biographical slides, and materials such as paint, paint brushes, and collage-style puzzle pieces “so that the students would have the necessary materials to create their own masterpieces in the form of mosaics and/or completely new artworks.” The copies of Keck’s work were made by right-clicking Google images. 

defendant's ad for art kit

Defendants sold only six of these kits—including two sold to Keck—for gross revenue of $240. Once they received notice of the lawsuit, they removed all art kits from the website. Plaintiff continued to demand $150,000 per work, which can’t have helped the optics.

The use was commercial but transformative. “While Defendants made no alterations to the works, they included the pictures in a kit with tools to allow students to create their own art. Defendants also prepared slides with biographical information on the artists.” Unlike in Warhol v. Goldsmith, the purpose and character was “not to create commercial visual art but to teach children about different artistic styles…. [T]he use of source material, accompanied by biographical information or other scholarship or lessons, transforms art into an educational tool.”

The court noted that defendants weren’t “in the business of selling artistic reproductions and did not sell these kits as works of art themselves. Defendants did not include Keck’s art in the kit for their inherent decorative value but to demonstrate a specific style of art.” The educational purpose didn’t need to be “as rigorous as that provided in a museum exhibit or university art history course.” Defendants also acted in good faith. “They had no warning before this of Plaintiff’s—or any other artist’s—displeasure.”

Interestingly, this all only tilted factor one “slightly” in favor of defendants.

Nature of the work: favored plaintiff, but least important.

Amount/substantiality: not important; six pieces of art were used (the court doesn’t discuss size or resolution).

Market effect: The proper market is not “licensing of any kind” or “merchandising.” “Conceptualizing a defendant’s conduct too broadly would render any unauthorized as harmful to the market for an artist’s work, calling into question the usefulness of this fourth factor.” The proper market was licensing for art kits that use the art as “an example of a particular art style and inspiration for students.” This didn't show market harm. Moreover, “[t]he widespread use of Plaintiff’s art for educational lessons would likely, if anything, increase her name recognition and commercial value.”