I really have no time tonight (damn!), but I'll pass quickly only through the Lanham Act part of Getty's memorandum. I'm too curious, so might as well do it in writing, if you wanna read that.
Fair note: this is, in my opinion, a difficult part of Carol's claims, one of the few where Getty
might have a point, so I want to see how well Getty treats it, if it does. I'm limiting myself to only this particular part, for now.
The memorandum has 3 parts (from my perspective):
(1) Getty's take on
copyright v public domain issue;
(2) Getty's answer to Lanham Act claims;
(3) Getty's answer to state law claims.
I'm dealing with (2) in this post.
Although the narrative of Plaintiffs’ FAC is long and wide-ranging, Plaintiffs’ four claims against Getty Images – two federal law claims and two state law claims – are all an attempt to regain some measure of legal protection for the Highsmith Photos that Plaintiff Highsmith relinquished years ago.
Yeah, so Getty sets the stage from the start:
(a) it says that the works are in the public domain; and
(b) it follows Dastar style, asking to dismiss them because they'd be ALL some sort of hidden copyright claims.
On false or misleading representations of facts, false affiliation claims 43(a)(1)(A)In Count IV, Plaintiffs assert a claim against Getty Images under Section 43(a) of the Lanham Act. Section 43(a) proscribes “any false designation of origin, false or misleading description of fact, or false or misleading representation of fact” that:
(A) is likely to cause confusion, or to cause mistake, or to deceive as to affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services or commercial activities.
15 U.S.C. § 1125(a)(1)(A)-(B).
Right.
In essence, Plaintiffs claim that Getty Images violated the Lanham Act by falsely holding itself out as an author of the Highsmith Photos or as the author’s agent with exclusive rights to license the photos. That type of Lanham Act claim, whether styled as unfair competition under 43(a)(1)(A) or false advertising under 43(a)(1)(B), is clearly foreclosed by Dastar and its progeny.
Is it? Saying so doesn't make it so. The second - fraudulent claim of being author's agent - doesn't seem foreclosed... Getty *IS* holding itself out as the agent with exclusive rights to license the photos. That reflects on the author, in a way that isn't strictly copyright-like...
[... stuff from Dastar...]
The Court made clear that, as a matter of copyright law, “[t]he right to copy, and to copy without attribution, once a copyright has expired . . . passes to the public.” 539 U.S. at 33 (quotation marks omitted). Thus, “[a]ssuming for the sake of argument that [the defendant’s] representation of itself as the ‘Producer’ of its videos amounted to a representation that it originated the creative work conveyed by the videos, allowing a cause of action under Section 43(a) for that representation would create a species of mutant copyright law that limits the public’s ‘federal right to copy and to use’ expired copyrights.” Id. at 34. The Court noted that “[w]hen Congress has wished to create such an addition to the law of copyright, it has done so with much more specificity than the Lanham’s Act’s ambiguous use of ‘origin.’” Id. (noting that 17 U.S.C. § 106A provides an “express right of attribution” that is “carefully limited and focused.”).
Yes. But I'm not sure this addresses yet the complaint. (the first amended complaint didn't say "reverse passing off", did it? I thought it didn't)
Thus, the Court held that the phrase “origin” of “goods” in the Lanham Act “refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.” Id. at 37.B.
Yes. But I'm not so sure it's all applicable; we seem to forget that here we actually don't even have a "buyenlarge" or even Getty as producer of the tangible goods, if the tangible goods would be ANYTHING, anything at all, different from Highsmith's photos. You know, in Dastar we actually had a film producer making a derivative work of the older work in question, and saying it's the source of the goods. It was also the author (of the derivative), but that's a different concern than 43(a). In this case, all we have are digital copies. To be sure, they're tangible goods, but they're NO DIFFERENT than the original goods. Like, not at all, in substance.
“because photographs are ‘communicative products’ protected by copyright, false designation of their authorship is not cognizable under Section 43(a)(1)(A) after Dastar.” Morel, 769 F. Supp. 2d at 307.
Morel also had a Lanham Act claim? I forgot. I didn't follow Morel too much, though I know it.
Anyway, Getty seems right on this one. The issue is that you can't create another right, meaning basically the same and infringed by the same actions that would infringe copyright, with 43(a). That was my understanding of Dastar.
I'm not so sure about the agency issue though: what we have here is an entity that exposes Carol Highsmith's name in public as one of the authors represented by them, wrongfully, implying an right given by the person when none was given. That seems different to me.
Although Dastar concerned a misrepresentation of origin claim, this Court has held that Dastar’s reasoning applies with equal force to bar claims for false representation of “affiliation” between the author and a distributor of the communicative product. Antidote, 467 F. Supp. 2d at 399 (holding that Dastar applies to “affiliation” claims “where, as here, one person is the publisher of a novel and the other is the author of the novel, because the holding of Dastar would be meaningless if a false authorship claim could be recast in this manner.”); Morel, 769 F. Supp. 2d at 307. Accordingly, it does not matter whether Plaintiffs style their Section 43(a)(1)(A) claim as a false assertion of authorship or a false assertion of affiliation. Either way, Dastar forecloses the claim.
This one doesn't seem right. It can't be that I can claim affiliation and/or endorsement of the author, when I do not have permission from them, only because - lets say - the author can't prevent me via copyright. What exactly would be the leftover meaning of 43(a) affiliation claim, if it lives or dies via copyright alone? Then we can remove the section from the Lanham Act, and make all of them things into things to be dealt only with the copyright act.
Maybe it's just me, but on this point, I don't get what Getty wants to say. There are public domain works out there (I'm NOT saying Highsmith's photos are, but just take a hypothetical for public domain works), like
SQLite. I bet I can't go around claiming I'm affiliated or endorsed by Hwaci, the company where most its developers work, or that I'm Hwaci's agent, when I'm not.
That's NOT a copyright issue, it's - I think - indeed a Lanham Act issue. (and probably some state laws)
On false advertising, 43(a)(1)(B)In an apparent attempt to circumvent Dastar, Plaintiffs also assert a false advertising claim under section 43(a)(1)(B). FAC 223-225. Plaintiffs rely on language in Dastar in which the Supreme Court presented a hypothetical and stated it “might” give rise to “a cause of action . . . for misrepresentation under the ‘misrepresents the nature, characteristics [or] qualities’ provision of § 43(a)(1)(B).” 539 U.S. at 38; see FAC 222. However, this Court has already considered this precise passage from Dastar and rejected any attempt to use it as an end run around Dastar’s bar on misrepresentation of authorship claims:
While this language might be read to suggest that the Supreme Court was leaving open the possibility of a claim arising from a misrepresentation going to the substance of a work, rather than the work’s authorship, in the instant case, with respect to claims that sound in false authorship, the holding in Dastar that the word “origin” in § 43(a)(1)(A) refers to producers, rather than authors, necessarily implies that the words “nature, characteristics, [and] qualities” in § 43(a)(1)(B) cannot be read to refer to authorship. If authorship were a “characteristic[ ]” or “qualit[y]” of a work, then the very claim Dastar rejected under § 43(a)(1)(A) would have been available under § 43(a)(1)(B). Antidote, 467 F. Supp. 2d at 399-400
I remember this from the first amended complaint. I didn't write on it, but yeah, it did seem disputable to me that authorship-related or copyright-rights-related claims can be about the "nature, characteristics, qualities" of the work. We'll see, does Team Highsmith have some caselaw to back their interpretation? I don't know much Lanham Act jurisprudence, so I can't say on this one.
There's another problem for Getty though. Authorship is not the only thing here. There's also misrepresentation regarding the status of the works, the threats to pay up because the works are supposedly under a copyright "infringed" by the users. So far Getty seems to be answering to only one, clearly Getty loves how Dastar bans hidden authorship/credit claims so it tries to make it all about authorship.
But I'm not sure it would work for copyright rights either, tbh. When I hear false advertising I think about material falsity, I mean physical...
According to Plaintiffs, Getty Images is “advertising and promoting a ‘rights managed’ license fee” for the photos, even though “Getty has no exclusive rights” to the photos and “therefore, has nothing to ‘license.’” FAC 223. But even if true, the “license status” of creative works such as these does not concern “the nature, characteristics, qualities, or geographic origin” of the works, and thus is not cognizable under Section 43(A)(1)(B)
Ah, there it is. So, about the "license status", yeah. I think Getty has a point. As noted, I don't really know history on this (Lanham Act). It's just hard, from the point of view of a copyright nerd, to understand why false licensing would be false advertising of a product. "Advertising and promoting a 'rights managed' license fee" (if this is indeed the expression in the complaint) doesn't really sound like advertising
of a product, does it? (Then again, my problem still is, how do you call it then, when it *is* misleading people, and threatening them with 'rights' to sue they do not own? It seems like racketeering, of sorts.)
Anyway this is a matter of correct Lanham Act interpretation (which I do *not* even try to do), and we'll see what caselaw Team Highsmith will bring to the table.
TriviaGetty's memorandum conveniently quotes some decision made by Rakoff. I didn't check it out, just think that in general it's not a bad idea.
You know, there's even a startup in legal tech area, which attempts to offer insights into how court cases work, based on... counting previous wins or losses of particular lawyers in front of particular judges:
http://premonition.ai/news/ Conclusions Too early for conclusions actually, but I want to reiterate the main things I take away from this particular issue with Lanham Act:
- My impression on Getty's answer on this point is that it's not bad, at a cursory reading. It was easy to be pretty good, mind you; hey even I expected it, because Dastar is crystal clear and amazing, and indeed doesn't accept authorship claims disguised as some kind of false designation of origin, and we have an uneasy overlap here.
- However, the points Getty brings on agent/endorsement/affiliation issue don't seem convincing to me. I'm not sure, I would need to check all this, I'm just unconvinced Dastar bars affiliation claims, or that it should. I hope we shall see more on that one. Remember LCS *did* explicitly hold itself as agent of the copyright holder/author in its pursuing of Carol herself. This is NOT some implicit authorship claim on the work, regardless whether there were also such pretenses, it's something else entirely.
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