MEMORANDUM AND ORDER
INTRODUCTION
Plaintiff Photographic Illustrators Corporation (PIC), a Massachusetts. corporation specializing in commercial photography, took photographs of lighting fixtures manufactured, by Osram Sylvania (OSI), not party to this suit. Defendants- Orgill, Inc. and Farm & City Supply,- LLC are distributors of OSI products. PIC filed suit against the defendants alleging copyright infringement under 17 U.S.C. § 501 (Count I); mishandling of copyright management information under the Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 1202 (Count II); and false designation of origin and false advertising under the Lanham Act, 15 Ú.S.C. § 1125(a) (Count III). The defendants seek summary judgment on all counts (Docket No. 54). PIC filed an opposition (Docket No. 58). After a review of the record arid hearing/the defendants’ motion for summary judgment is DENIED in part and ALLOWED in part as to Count I and ALLOWED in full as to Counts II and III.
STATEMENT OF UNDISPUTED FACTS
The following facts are undisputed except where otherwise stated. All reasonable inferences are drawn in favor of PIC, the non-moving party.
A. PIC’s Copyright License with OSI
This case is about'photographic images that Paul Picone, a photographer for- PIC, took of OSI’s light fixtures. Five of the images- have Copyright Registration Certificates; twenty-nine were the subject of applications received by the United- States Copyright Office between 2012 and 2013. PIC provide^ OSI with photographs of OSI products for use in sale and marketing. To this end, PIC had a licensing agreement with OSI, which gave OSI -
a non-exclusive, worldwide license in and to all the Images and the copyrights thereto to freely -Use, sublicense Use, .and-permit Use,, in its sole and absolute discretion, in perpetuity, anywhere in the world. Notwithstanding the foregoing, OSI may not sub-license images in exchange for valuable consideration such as a fee (e.g., as stock photography).
Docket No. 56, DeJaco Aff., Ex. 1. The term “Use” is to be given the broadest possible interpretation, and includes, but is not limited to, the right to “copy, edit, modify, prepare derivative works, reproduce, transmit, display, broadcast, print, publish, use in connection with any media ... and store in a database.” Id. The licensing agreemerit also provided: “To the extent reasonably possible and practical, OSI shall ... include a copyright notice indicating PIC as the copyright owner and/or include proper attribution indicating,Paul Picone as the photographer for Images Used by OSI.” Id.
B. OSI’s Copyright Sublicense Agreement with Orgill
Defendant Orgill, a wholesale distributor for OSI, maintains a network of retail dealers who sell hardware, home improvement supplies, and'building materials. Orgill’s inventory includes numerous OSI products, and Orgill uses product information and images from OSI in its electronic and
For the past five years, OSI has conducted twiee-yearly reviews of its product images as they appear in'Orgill’s advertisements. OSI has never challenged the Way that OSI images appear in Orgill’s catalogue or on its website.
On July 23, 2014 — after PIC filed suit— OSI and Orgill executed a confirmatory copyright sublicense agreement, effective nunc pro tunc as of June 1, 2006. Under the sublicensing agreement, OSI “confirm[ed]-that it previously granted permission to Orgill to Use and to sublicense the right to Use the Images to its dealers in accordance with the terms of this Agreement.” Docket No. 56, Ex. 2. Those terms stated that OSI
is authorized to sublicense and permit Use ... of certain photographs taken by Photographic Illustrators Corporation ... [and] has permitted and sublicensed to Orgill to Use the Images ... in connection' with any media, including but not limited to advertising, packaging,' promotional and collateral materials, and to sublicense that right to Use the Images to Orgill’s dealers.... Orgill covenants to include (and instruct its sublicensees/dealers to include), to the extent reasonably possible and practical with respect to size, prominence, aesthetics, 'and Use, a copyright notice indicating PIC as the copyright owner of the Images.
Docket No. 56, Éx. 2. This agreement further stated,
Id. Specifically, the sublicensing agreement noted, “Orgill and its dealers/subli-censees shall include such copyright notice and/or attribution as a side note or footnote for Images appearing on websites and in catalogues.” Id. Orgill finally covenanted “on its behalf and on behalf of its sublicensees/dealers that it will not remove any copyright notice from Images prodded to Orgill from OSI before distributing any Images to its sublicensees/dealers.” Id.
C. Farm & City Supply
Defendant Farm & City Supply is one of Orgill’s dealers. Orgill provides its dealers with an e-commerce platform known as ProShip. Through ProShip, Orgill populates an online store with products that dealers then brand and publish with their own names. ,To access ProShip, dealers must pay a $750 flat set-up fee as well as a subsequent monthly fee. Dealers can oh-tain pictures from the platform, including • the PIC images. However, it is disputed whether these fees cover the pictures. Or-gill also has a library of product information in a separate FTP (file transfer protocol) server. The dealer may download product ‘images and other data after receiving a secure log-in to access the server. Orgill does not charge its dealers any additional fee to obtain pictures from the FTP server.
On April 11, 2014, PIC filed suit against Orgill and Farm & City under the Copyright Act, the DMCA, and the Lanham Act, seeking permanent injunctive relief against any and all further infringement, the recall and destruction of all infringing copies made of the PIC images, and payment of actual damages, attorney’s fees, and costs.
STANDARD OF REVIEW
Summary judgment is appropriate when there is “no genuine issue as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R.Civ.P. 56(a). To succeed on a motion for summary judgment, the moving party must demonstrate that there is an “absence of evidence supporting the non-moving party’s case.” Sands v. Ridefilm Corp.,
The burden then shifts to the non-moving party to set forth specific facts showing that there is a genuine issue of material fact for trial. Quinones v. Buick,
“If the evidence is merely colorable or is not significantly probative, summary judgment may be granted.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249-50,
DISCUSSION
I, Copyright Infringement
A. Implied License
Pursuant to 17 U.S.C. § 501, anyone who violates the “exclusive rights” of a copyright owner infringes the copyright. However, a copyright owner may transfer a nonexclusive right to use the copyrighted material by means of a written license. Estate of Hevia v. Portrio Corp.,
As PIC conceded at the hearing, the defendants have borne their burden of showing that OSI impliedly licensed Or-gill’s use of the images. In accordance with longstanding business practice, Dennis Sills has obtained product images from OSI since 1998
Since the- defendants have shown that they received an implied license from OSI, the burden shifts to PIC to demonstrate that Orgill’s use of the challenged images exceeded the scope of that license. Bourne,
Orgill initially argued that the sublicens-ing agreement
Accordingly, the licensing agreement between PIC and OSI—not the sub-licensing agreement between OSI and Or-gill—provides the relevant benchmark for
i Fee
PIC submitted evidence that Orgill sub-licensee! the images to Farm & City for a fee. Orgill charged its dealers' both ah initial flat fee of $750 and a subsequent monthly fee to access the ProShip platform, which allowed dealers to obtain product images and various other e-commerce services. Orgill also offered product' information and images to its dealers by means of an FTP server, for which Orgill charged no fee. It is undisputed that Farm & City obtained images from both the ProShip platform and the FTP server. Farm & City uploaded images from the FTP-server to internet marketplaces like eBay and Amazon, and used images from the ProShip platform to populate its internal website.
The defendants. contend that Orgill did not violate the licensing agreement’s prohibition against sublicensing, the images “in exchange for valuable consideration” because product images were available free of charge from the FTP server as well as for a fee from the ProShip platform. Docket No. 56-1, DeJaco Aff., Ex. A. But simply because Orgill provided product images for free in one forum does not diminish the fact that those images were available in another forum only following an initial payment. Orgill argues that,, because the fees it charged for access to ProShip did not depend on how many images its customers downloaded or whether they downloaded any images at all, customers paid not for product images but for the ability to use the entire website platform. However, PIC presented evidence that Orgill required its clients to pay money in exchange for certain services and the images in question, and that Farm & City paid the fee to avail itself of this bundle. While the defendants’ argument may impact the amount of damages, the record does not support summary judgment in their favor because there is no evidence that the flat fee is only attributable to
ii Attribution
PIC also submitted evidence that the defendants’ conduct was out of step with the attribution requirements in ¶ 10 of the licensing agreement. At the hearing, the defendants acknowledged that they were bound by these requirements, but now contend that it would not have been “reasonably possible and practical” to include attribution on the images. In service of this argument, Orgill points to the testimony of its employee, David Pinson, who stated that Orgill typically “crop[s]” product images “for tighter fit.” Docket No. 68, Ex. 1, Brown Aff., Ex. B at 19-21. On this basis, Orgill maintains that it could not reasonably have included PIC’s copyright information given its need to “resize” images “as necessary to fit ... product media.” Id.
This is a low-watt argument. Orgill admitted at the hearing that, since the lawsuit, Orgill does include some attribution on OSI images in the form of a “sidenote or footnote for images appearing on websites and in catalogs.” Docket No. 89, Hrg. Tr. at 15-16. While it may not be practical for the defendants to include PIC’s full-sized copyright notice, PIC need not demonstrate as much to defeat a motion for summary judgment. PIC is only obliged. to present evidence&emdash;as it has done&emdash;that the defendants failed to. ,us.e any attribution whatsoever prior to suit but have apparently been able to include at least some attribution since learning of PIC’s copyright interest in the images.
PIC has provided sufficient evidence that Orgill sublicensed the images to Farm & City for a fee by means of the ProShip platform and that both defendants failed to attribute the images to PIC as requiréd by the initial licensing agreement. Moreover, there are issues of fact as to whether Orgill knew of PIC’s , existence and its copyright interest in the .images prior to this lawsuit. Since the defendants have not shown that they are entitled to judgment on PIC’s copyright infringement claim as a matter of law, their motion for summary judgment is DENIED as to Count I.
B. Innocent Infringement
The defendants also contend that any infringement was inadvertent and therefore innocent under 17 U.S.C. § 504(c)(2). Pursuant to this section, if the court finds that an infringer “was not aware and had no reason to believe that his or her acts constituted an infringement of copyright,” it may “reduce the award of statutory damages to a sum of not less than $200.”
Factual disputes as to whether Or-gill knew of PIC’s copyright interest in the images preclude summary judgment on this point as well. On the one hand, Orgill submitted evidence that it had never heard of PIC until the onset of this lawsuit and that, at all relevant times, it believed its use of the images was licensed. Dennis Sills stated that he only obtained OSI product images from OSI itself in accordance with Orgül’s company policy, and that.none of the images he received contained any copyright information. Orgill also.averred that was aware of no limitations on its use of the images.
But, as PIC points out; Orgill’s testimony contradicts the terms of the sublicens-ing agreement. That agreement purportedly codified the- terms of a pre-existing agreement between Orgill and OSI, “confirming] that [OSI] previously ¡granted permission to Orgill .to Use the Images ... in accordance with the terms of this Agreement.” Docket No. 56, Crockett Aff., Ex. 2, Pursuant to one such term, Orgill covenanted to include “a copyright
In light of these issues of fact, I DENY the motion for summary judgment as to whether any infringement by Orgill was innocent within the meaning of the Copyright Act. “As a general rule, a party’s state of mind (such as knowledge or intent) is- a question of fact for the factfinder, to be determined after trial.” Chanel, Inc. v. Italian Activewear of Fla., Inc.,
However, Farm & City is another story. Farm & City submitted undisputed evidence that it did not know PIC existed until this lawsuit was filed, that it obtained all of the images at issue from Orgill free of copyright markings, and that Orgill never advised it of any limitations on its use of the images. Moreover, since Farm & City was not party to the sublicensing agreement between OSI and Orgill, there is no indication whatsoever that it might have been aware of its duty to attribute the images to PIC. Accordingly, I ALLOW the motion for summary judgment as to the innocence of any infringement by Farm & City.
II. Integrity of Copyright Management Information
PIC also alleges violations of the Digital Millennium Copyright Act (DMCA), 17 U.S.C. § 1202. The DMCA provides that “[n]o person shall knowingly and with the intent to induce, enable, facilitate, or conceal infringement ... provide copyright management information that is false.” 17 U.S.C. § 1202(a). Section 1202(b) further states that
[n]o person shall, without the authority of the copyright owner or the law—(1) intentionally remove or alter any copyright management information, (2) distribute or import for distribution copyright management information knowing that the copyright management information has been removed or altered without authority of the copyright owner or the law ... knowing ... that it will induce, enable, facilitate, or conceal an infringement of any right under this title.
17 U.S.C. § 1202(b). Copyright management information (CMI) includes, among other things, the title of the work, the author of the work, the name of the copyright owner, or other information set forth in a copyright notice. 17 U.S.C. § 1202(c). A cause of action under § 1202 may lie whenever copyright management information, “conveyed in connection with copies ... of a work ... including in digital form,” is falsified or removed. Murphy v. Millennium Radio Grp. LLC,
According to PIC, Defendant Farm & City contravened § 1202(a) by adding a watermark reading “farmandcitysupply” to certain images acquired from OSI for use in its eBay storefront. PIC further contends that both defendants removed or
A. Addition of false CMI
PIC first claims that Farm & City added false CMI when it placed a watermark reading “farmandcitysupply” on those images appearing in its eBay storefront. Farm & City contends that it lacked the requisite intent to support liability under the DMCA.
Farm & City prevails as a matter of law on this issue. To be liable for adding false CMI under § 1202(a), a defendant must intend to “induce, enable, facilitate, or conceal infringement.” 17 U.S.C. § 1202(a). PIC points to the testimony of Jeret Koenig, a Farm & City employee, who explained that the watermark “allows whoever is buying the product to know that they’re buying it from Farm & City Supply,” thus helping to “differentiate yourself from other sellers” and “increase your sales and make money.” Docket No. 56, DeJaco Aff., Ex. F. at 91, 116. On the basis of this testimony, PIC maintains that Farm & City used its watermark to indicate authorial ownership of the images. But this argument is beside the point. Even if Farm & City sought to do more than affiliate itself with the OSI products for sale, Farm & City did not intend to “induce, enable, facilitate, or conceal infringement,” since it did not know of PIC’s existence until this lawsuit was filed and was unaware that it had any attribution obligations. I ALLOW the defendant’s motion for summary judgment on this issue.
B. Removal of CMI
Nor did PIC submit any evidence to support its claim that the defendants removed indicia of its authorship from the images. Indeed, there is no evidence that either defendant ever received any images containing copyright attribution information or any marks indicating PIC’s proprietary interest in the first place. Orgill’s employee testified that he had “never seen the copyright imaqe on anything” and that “it’s just never been discussed.” Docket No. 56, DeJaco Aff., Ex. C at 92-93. On the contrary, the record suggests that the defendants only received unmarked images and were never instructed to include attribution.
PIC responds that Paul Picone submitted an affidavit stating that every image he gave to OSI had the PIC copyright attribution on it and that the Court should infer, on this basis alone, that the absence of that attribution on the images as displayed by the defendants means that the defendants removed the CMI. PIC attempts to marshal Boatman v. U.S. Racquetball Ass’n,
III. False Designation of Origin
Finally, PIC alleges that Farm & City violated Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), by placing the “far-mandcitysupply” watermark on the images. Section 43(a) provides that
(1) Any person who, on or in connection with any goods and services, or any container for goods, used in commerce ... any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which — (A) is likely to cause confusion, or to cause mistake, or to deceive as to the 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, shall -be liable in a civil action by any person who believes that he or she is or is likely to be damaged’by such act.
15 U.'S.C. § 1125(a). The Lanham Act was intended to make “actionable the deceptive and misleading use of marks” and to “protect persons engaged in ... commerce against unfair competition.” However, the Supreme Court has been “careful to caution against misuse or over-extension of trademark and related protections into areas traditionally occupied by patent or copyright.” TrafFix Devices, Inc. v. Marketing Displays, Inc.,
Dastar involved an old television series about World War II that had fallen into the public domain- after its copyright expired. Id. at 26-27,
The Supreme Court held that Section 43(a) did not support Fox’s argument. Id.
The Court rejected the notion that the “origin” of communicative products, like books or videos, could include “not merely the producer of the physical item ... but also the creator of the content,that the physical item conveys.” Id. at 33,
A. Section í3(a)(1)(A) — False Designation of Origin
In light of Dastar; the defendants contend that PIC cannot proceed under Section 43(a)(1)(A) of the Lanham Act since the “tangible goods” at issue were OSI’s lightbulbs, not PIC’s photographs. PIC responds that the defendants’ conduct lies squarely within Dastar’s exception: when one party “merely repackages” the goods of another as its own. By adding its watermark without otherwise changing .the images, PIC contends, Farm & City “merely repackaged” the images in just the fashion the Dastar court had envisioned.
Courts are split as to whether the Lan-ham Act encompasses the false designation of the origin of a photograph, not itself a “good” for sale to the public, used to advertise the object actually for sale. Some courts have held that parties who misrepresent the author of a photograph may be liable under the Lanham Act even when the photograph is not the good for sale. In Cable v. Agence France Presse,
But other courts to address the question suggest that because “photographs are 'communicative products’ protected by copyright, false designation of their authorship is not cognizable under section 43(a)(1)(a) [of the Lanham Act] after Dastar.” Agence France Presse v. Morel,
Although both positions have merit, I find the latter line of cases more persuasive, and conclude that PIC is not entitled to proceed under Section 43(a)(1)(A) of Lanham Act as a matter of law. The Dastar Court held that the phrase “origin of goods” refers to “the producer of the tangible goods that are offered for sale.”
PIC alleges that Farm & City displayed its photographs with false attribution — the watermark — and, in doing so, misrepresented the “origin and nature” of those photographs. But after Dastar, the phrase “origin of goods” applies only to the producer of the tangible product sold in the marketplace. Dastar,
[t]he consumer who buys a branded product does not automatically assume that the brand-name company is the same entity that came up with the idea for the product, or designed the product — and typically does not care whether it is. The words of the Lanham Act should not be stretched to cover matters that are typically of no consequence to consumers.
PIC also attempts to slot its claim into Section 43(a)(1)(B) of the Lanham Act, which prohibits the misrepresentation of the “nature, characteristics, qualities, or geographic origin of ... goods” in connection with “commercial advertising or promotion.” 15 U.S.C. 1125(a)(1)(B). This argument fails. For one thing, this argument was scarcely briefed, and neither party raised it at the hearing. “[I]ssues adverted to in a perfunctory manner, unaccompanied by some effort at developed argumentation, are deemed waived.” United States v. Zannino,
Moreover, “[t]he import of Dastar ... cannot be avoided by shoe-horning a claim into section 43(a)(1)(B) rather than 43(a)(1)(A).” Morel,
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.
Antidote Int’l Films, Inc. v. Bloomsbury Pub., PLC,
Accordingly, the defendants’ motion for summary judgment on Count III as to subsection (B) is ALLOWED.
ORDER
For the foregoing reasons, Defendants’ Motion for Summary Judgment (Docket No. 54) is DENIED in part and ALLOWED in part as to Count I but ALLOWED in full as to Counts II and III.
Notes
. It is not clear whether a dealér who has not already paid the $750 fee may nevertheless obtain access to the FTP server.
. Sills began, working at Orgill in 1998, and testified that Orgill had been using OSI product images since long before that date.
. PIC maintains that we should not consider the sublicensing agreement because it imper-missibly purports to be retroactive. While there is not much case law on the subject, the Second Circuit has held that "retroactive transfers [of copyright ownership] violate basic principles of tort and contract law, and undermine the policies embedded in the Copyright Act.” Davis v. Blige,
. In their reply brief, the defendants argued that any applicable attribution requirements were merely covenants rather than conditions precedent to use of the images. See Graham v. James,
. Farm & City also protests that, as a matter of law, its watermark does not constitute CMI, Because Farm & City is entitled to summary judgment on the basis of its intent argument, I need not address this separate theory.