Shepard v. European Pressphoto Agency
291 F. Supp. 3d 465
S.D. Ill.2017Background
- Plaintiffs Andrea and Shirley Shepard are courtroom artists who create pastel drawings, register copyrights, and sell originals/copies.
- European Pressphoto Agency (EPA) licensed certain Shepard works for one day but allegedly published/distributed them after the license expired.
- Alamy Limited and Alamy, Inc. published Shepard images without licensing, affixed an Alamy watermark, and labeled some images "royalty-free."
- Plaintiffs asserted four claims: copyright infringement; false designation of origin under the Lanham Act; breach of contract (against EPA); and New York unfair competition.
- Defendants moved under Fed. R. Civ. P. 12(b)(6) to dismiss the Lanham Act, breach of contract, and unfair competition claims as preempted by the Copyright Act; the court granted the motion in part and denied in part.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Lanham Act false designation (source confusion) | Shepards: defendants misrepresented source of tangible artworks (watermark/network listings) causing confusion | Defendants: Dastar bars Lanham claims that are essentially copyright claims about authorship | Denied dismissal — Lanham claim survives: Shepards sell tangible goods and allege source misrepresentation (distinct from pure authorship claim) |
| Breach of contract (EPA licensed for one day) | Shepards: EPA breached its promise not to use works beyond the one-day license — promise supplies an "extra element" | Defendants: Contract claim merely alleges acts (reproduction/distribution/display) that are equivalent to copyright infringement and thus preempted | Granted dismissal — breach claim preempted because it seeks to vindicate exclusive rights protected by Copyright Act and the promise mirrors copyright duties |
| Unfair competition (misappropriation/reverse passing off) | Shepards: defendants misappropriated their labor and passed off works as defendants' own (bad faith) | Defendants: unfair competition claims that rest on copying or reverse passing off are preempted by the Copyright Act | Granted dismissal — claim alleged reverse passing off (copying and selling under another's name) and is preempted; pure "passing off" would not be preempted but was not pleaded here |
Key Cases Cited
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (Sup. Ct. 2003) (Lanham Act "origin" refers to producer of tangible goods, distinguishing authorship vs. product-source claims)
- Briarpatch Ltd. v. Phoenix Pictures, 373 F.3d 296 (2d Cir. 2004) (preemption test: subject-matter and general-scope; extra-element analysis for qualitative difference)
- Canal+ Image UK Ltd. v. Lutvak, 773 F. Supp. 2d 419 (S.D.N.Y. 2011) (contract preemption depends on the specific contractual promise; rights that simply mirror copyright are preempted)
- Am. Movie Classics Co. v. Turner Entm't Co., 922 F. Supp. 926 (S.D.N.Y. 1996) (breach of contract preempted when complaint alleges only acts reserved to copyright)
- Architectronics, Inc. v. Control Sys., 935 F. Supp. 425 (S.D.N.Y. 1996) (contrasting view: a contractual promise can be an extra element avoiding preemption)