797 F. Supp. 2d 896
N.D. Ill.2011Background
- DSI licensed its photographs to the defendants for marketing the properties and to require attribution.
- Defendants sometimes credited DSI and sometimes omitted attribution in republications and on their website.
- DSI asserted claims under the DMCA, Lanham Act, Copyright Act, and Illinois consumer protection laws regarding attribution and credit omissions.
- Defendants moved to dismiss some counts under Fed. R. Civ. P. 12(b)(6) and sought a more definite statement under Rule 12(e).
- The court addressed preemption under the Copyright Act and the sufficiency of pleadings for various counts, denying some motions and granting others.
- The court denied a motion for a more definite statement for Counts I and VI, and denied a motion to dismiss Counts II, VIII, and IX while granting dismissal of Counts III–V.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Lanham Act preemption of Count II | DSI argues Lanham Act claim is not preempted by copyright. | Defendants contend Dastar preempts the Lanham Act claim. | Lanham Act claim not preempted; circumstances fit Cable exception. |
| Preemption of Counts III–V by Copyright Act | DSI seeks state-law remedies alongside copyright claims. | Counts III–V are duplicative of copyright claim and preempted. | Counts III–V preempted by the Copyright Act. |
| Need for a more definite statement for Counts I and VI | Different licenses per photograph require clarification to respond. | Defendant needs mapping of works to contracts and dates. | No, the record allows matching works to contracts; denial of motion. |
| Whether Counts VIII and IX are improperly pled | Requests for injunctive relief, fees, and punitive damages are properly pled. | Requests for remedies should be tied to substantive counts. | Denied; requests may remain, subject to merits. |
Key Cases Cited
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (U.S. 2003) (Lanham Act preemption governed by copyright in public-domain context)
- Cable News Network, Inc. v. Agence France Presse, 728 F. Supp. 2d 977 (N.D. Ill. 2010) (Lanham Act claim exceptional under Dastar framework)
- Natkin v. Winfrey, 111 F. Supp. 2d 1003 (N.D. Ill. 2000) (state-law claims preempted as re-allegations of copyright claims)
- Chicago Style Productions, Inc. v. Chicago Sun-Times, Inc., 728 N.E.2d 1204 (Ill. App. Ct. 2000) (state-law claims preempted by federal copyright law)