Cable v. Agence France Presse

District court holds that a photographer adequately pled violations of the Digital Millennium Copyright Act’s provision regarding the removal of copyright management information and the Lanham Act by alleging that the defendant took a copyrighted photograph off of a website, removed the photographer’s name, website and copyright notice, and redisplayed the photograph on its own website.

Plaintiff Wayne Cable is a professional photographer who concentrates his work in the portrayal of people and architectural subject matters. Plaintiff does business as selfmadephoto.com and uses this title in identifying his work. In September 2009, plaintiff was hired to take photographs of a house for sale in Chicago, Illinois, along with photographs of neighboring homes. Among the homes depicted in plaintiff’s photographs was the home of President Barack Obama. The homeowner agreed that the photographs would be displayed on a website and used solely to market the homeowner’s property. The photographs appeared on the homeowner’s website along with a credit line and copyright notice: “Photos©2009 wayne cable, selfmadephoto.com.” The notice also served as a hotlink to plaintiff’s website.

Defendant Agence France-Presse (“AFP”) is a news agency that owns and operates an online database of photographs entitled ImageForum-Diffusion. AFP licenses and markets these images to an extensive range of customers. Plaintiff alleges that AFP displayed plaintiff’s photographs on its website without the copyright notice or link to the plaintiff’s website and distributed the photographs. Defendant also sublicensed sales of the photograph without plaintiff’s permission.

Plaintiff sued the AFP for violations of the Digital Millennium Copyright Act, the Lanham Act, the Copyright Act, and various state-law consumer fraud statutes, and for unfair competition. Defendant moved to dismiss each of plaintiff’s claims.

First, defendant argued that the DMCA did not apply to its removal of a copyright notice from the photograph. Defendants cited IQ Group, Ltd. V. Wiesner Pub., LLC, 409 F. Supp. 2d 587 (D.N.J. 2006) for the proposition that the DMCA only protected copyright management performed by the technological measures of automated systems, not copyright management performed by people. The court declined to follow IQ Group, noting that other courts had rejected the IQ Group court’s interpretation of the DMCA, which relied on legislative history. The court found that stautory interpretation begins with the plain language of the statute, not legislative history, and under the plain language of the DMCA, the plaintiff’s name and hotlink fall within the definition of “copyright management information.” Accordingly, the court denied defendant’s motion to dismiss plaintiff’s DMCA claim.

Second, defendant argued that its removal of the copyright notice did not give rise to a Lanham Act claim for misrepresenting the origin of the photograph because such claim is preempted by the Copyright Act. The Supreme Court held in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) that, under the Lanham Act, the “origin” of a good means the producer of the product, not the originator of the concept or idea. However, the court noted that the Dastar decision did not preclude a Lanham Act claim where a defendant has allegedly taken the plaintiff’s photographs and passed them off as its own. The court noted that the Dastar court limited its ruling in an important way when it stated that a claim under§43(a) “would undoubtedly be sustained if Dastar had bought some of New Line’s Crusade videotapes and merely repackaged them as its own.” Accordingly, plaintiff’s Lanham Act claim survived defendant’s motion to dismiss.

The court additionally found defendant’s arguments with respect to the remaining claims to be without merit and denied defendant’s motion to dismiss in its entirety.