Photographic Illustrators Corporation v. Orgill, Inc. et al

Filing 92

Chief Judge Patti B. Saris: MEMORANDUM and ORDER entered. For the foregoing reasons, Defendants' Motion for SummaryJudgment Docket 54 is DENIED in part and ALLOWED in part as to Count I but ALLOWED in full as to Counts II and III. (Geraldino-Karasek, Clarilde)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
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) Civil Action No. 14-11818-PBS
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PHOTOGRAPHIC ILLUSTRATORS
CORPORATION,
Plaintiff,
v.
ORGILL, INC. and FARM & CITY
SUPPLY, LLC,
Defendants.

MEMORANDUM AND ORDER
July 29, 2015
Saris, U.S.D.J.
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 U.S.C. §

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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 and 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 provides 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
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works, reproduce, transmit, display, broadcast, print, publish,
use in connection with any media . . . and store in a database.”
Id. The licensing agreement 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 paper catalogues. Over the
past decade, Orgill employee Dennis Sills has been the sole
person responsible for procuring and managing OSI product images,
including the images in question. Sills generally obtains these
images from e-mail, Dropbox, OSI’s external website, or OSI’s
internal web server. However, none of Orgill’s employees
specifically recalls the images at issue or how they were
procured. It is disputed whether Orgill knew about the copyright
license PIC had granted to OSI.
For the past five years, OSI has conducted twice-yearly
reviews of its product images as they appear in Orgill’s
advertisements. OSI has never challenged the way that OSI images

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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 . . . .
Docket No. 56, Ex. 2. This agreement further stated,
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.
Id. Specifically, the sublicensing agreement noted, “Orgill and
its dealers/sublicensees 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 provided to Orgill from OSI before distributing any
Images to its sublicensees/dealers.” Id.
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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 obtain pictures
from the platform, including the PIC images. However, it is
disputed whether these fees cover the pictures. Orgill 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.1 Farm & City obtained the images in
question from both the FTP server and the ProShip platform.
In order to market and sell Orgill’s products, Farm & City
has a commercial website and an eBay “storefront.” Farm & City
fills both the site and the store with product images and
information obtained from Orgill’s online resources. For a time,
Farm & City placed a watermark reading “farmandcitysupply” across
the images appearing on its eBay storefront. Eventually, Farm &
City stopped adding its watermark to the images.

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It is not clear whether a dealer who has not already paid
the $750 fee may nevertheless obtain access to the FTP server.
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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., 212 F.3d 657,
660 (1st Cir. 2000) (citing Celotex Corp. v. Catrett, 477 U.S.
317, 325 (1986)).
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. Houser Buick, 436 F.3d 284, 289 (1st
Cir. 2006). A genuine issue exists where the evidence is
“sufficiently open-ended to permit a rational factfinder to
resolve the issue in favor of either side.” Nat’l Amusements,
Inc. v. Town of Dedham, 43 F.3d 731, 735 (1st Cir. 1995). A
material fact is “one that has the potential of affecting the
outcome of the case.” Calero-Cerezo v. U.S. Dep’t of Justice, 355

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F.3d 6, 19 (1st Cir. 2004).
“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 (1986) (internal citations
omitted). Summary judgment may also be appropriate “even in cases
where elusive concepts such as motive or intent are at issue if
the non-moving party rests merely upon conclusory allegations,
improbable inferences, and unsupported speculation.” Fennell v.
First Step Designs, Ltd., 83 F.3d 526, 535 (1st Cir. 1996)
(quotation marks, alterations, and ellipsis omitted). In its
review of the evidence, the Court must examine the facts in the
light most favorable to the nonmoving party and draw all
reasonable inferences in its favor. Sands, 212 F.3d at 661.
Ultimately, the Court is required to “determine if there is
sufficient evidence favoring the nonmoving party for a jury to
return a verdict for that party.” Id. (quotation marks omitted).
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., 602 F.3d 34, 40-41 (1st Cir.
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2010). Such a transfer may also “occur without any particular
formality, as by conduct manifesting the other’s intent.” Id.
(pointing out that implied licenses are of limited scope,
permitting use of copyrighted work only in a particular manner).
“Uses of the copyrighted work that stay within the scope of a
nonexclusive license are immunized from infringement suits.” John
G. Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d
26, 40 (1st Cir. 2003). The burden of proving the existence of
such a license lies with the party claiming its protection. Id.
If the licensee makes out the existence of any license, the
burden shifts to the licensor to show that the licensee’s use
exceeded the scope of that license. Bourne v. Walt Disney Co., 68
F.3d 621, 630 (2d Cir. 1995).
As PIC conceded at the hearing, the defendants have borne
their burden of showing that OSI impliedly licensed Orgill’s use
of the images. In accordance with longstanding business practice,
Dennis Sills has obtained product images from OSI since 19982
“either by talking to [OSI’s] rep” on the telephone, “calling
customer service and talking to whoever is there,” or searching
OSI’s external website. Docket No. 56-3, Sills Aff. at 22-23, 26.
Orgill then uses these materials (which include the images in
question) to advertise and sell OSI products through dealers like

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Sills began working at Orgill in 1998, and testified that
Orgill had been using OSI product images since long before that
date.
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Farm & City. Although Sills does not recall receiving explicit
permission from OSI to use the images, he stated that such
permission had “been implied in more ways than I count,” since
“it’s understood in our business that . . . I’m using their
pictures to sell their products.” Id. at 62-63. Moreover, Orgill
has reviewed Orgill’s catalogues twice a year for the past five
years, and has never objected to the way that Orgill displays the
images.
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, 68 F.3d at 30. As all parties now agree,
OSI could not give Orgill rights that went beyond those it in
fact had, since a “grantor may not convey greater rights than it
owns.” Gilliam v. Am. Broad. Cos., 538 F.2d 14, 20-21 (2d Cir.
1976). Accordingly, the defendants’ use of the images must be
measured against the terms of the original licensing agreement
between PIC and OSI. OSI’s subsequent implied license to Orgill
cannot give Orgill more expansive rights than those PIC had
previously granted to OSI. Id.
Orgill initially argued that the sublicensing agreement3

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PIC maintains that we should not consider the sublicensing
agreement because it impermissibly 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
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governed its conduct even insofar as it afforded Orgill greater
freedom to use the images than OSI had under the licensing
agreement. Orgill alleged that the attribution requirements of ¶
10 did not apply to OSI’s ability to sublicense under ¶ 9, and
maintained accordingly that OSI was entitled to sublicense rights
to use not limited by the provisions of ¶ 10. Docket No. 89, Hrg.
Tr. at 47-48. But both defendants conceded at the hearing that
OSI could not validly sublicense a right to use the images that
was larger in scope than its own. Id. at 10-11.
Accordingly, the licensing agreement between PIC and OSI –
not the sublicensing agreement between OSI and Orgill – provides
the relevant benchmark for the defendants’ conduct. The licensing
agreement 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.” Docket No. 56, DeJaco Aff., Ex. 1.
The agreement limited this license in two respects. First, “OSI
may not sub-license images in exchange for valuable consideration
such as a fee (e.g., as stock photography).” Id. Moreover, OSI
had certain obligations to display the images in question with
proper attribution. “To the extent reasonably possible and
practical,” the Agreement reads, “OSI shall . . . include a

undermine the policies embedded in the Copyright Act.” Davis v.
Blige, 505 F.2d 90, 97-98 (2d Cir. 1976). However, I decline to
address this issue because, in any event, the sublicensing
agreement lacks force to the extent that it exceeds the scope of
the licensing agreement between PIC and OSI.
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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.4 Since these terms
governed OSI’s right to use the images, they establish, in turn,
the minimum limitations on the defendants’ use of the images.
There are fact disputes as to fee, attribution, and the nature of
the implied license OSI granted Orgill. Summary judgment on
infringement is inappropriate.
i.

Fee

PIC submitted evidence that Orgill sublicensed the images to
Farm & City for a fee. Orgill charged its dealers both an 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

4

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.
Jones, 144 F.3d 229, 237 (2d Cir. 1998) (construing a licensing
agreement under New York law). While the provisions of the
confirmatory sublicensing agreement are explicitly labeled
covenants, it is the licensing agreement that governs the
defendants’ conduct, and that agreement does not term its
attribution requirements “covenants.” Moreover, this complex area
of the law was poorly briefed, and the Court declines to address
it. See HSBC Realty Credit Corp. (USA) v. O’Neill, 745 F.3d 564,
577 (1st Cir. 2014) (arguments “not developed in a party’s
opening brief are waived”).
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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 products or
services apart from the pictures.
ii.

Attribution

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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 – as it has done – that the
defendants failed to use 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.

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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 required 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 Orgill 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 Orgill’s

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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 sublicensing agreement. That agreement purportedly
codified the terms of a pre-existing agreement between Orgill and
OSI, “confirm[ing] 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 notice
indicating PIC as the copyright owner of the Images.” Id. Since
the terms of the sublicensing agreement reference PIC’s copyright
interest in the images, PIC argues, Orgill must have been aware
of PIC’s existence prior to suit, and thus known that any failure
to attribute the images to PIC might constitute infringement.
This evidence creates a factual dispute. Orgill cannot have its
lightbulb and eat it, too – either it always knew that PIC
existed and that there were certain limitations on its use of the
images, or else Orgill did not then, and does not now, know of
any such limitations.
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

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question of fact for the factfinder, to be determined after
trial.” Chanel, Inc. v. Italian Activewear of Fla., Inc., 931
F.2d 1472, 1476 (11th Cir. 1991) (issues of fact regarding
defendants’ knowledge precluded summary judgment in trademark
infringement suit).
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
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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, 650 F.3d 295, 301
(3rd Cir. 2011) (holding that removal of author’s name in “gutter
credit” near image fell within protection of § 1202).
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 altered
PIC’s CMI in violation of § 1202(b) before distributing the
images. Farm & City argues that the watermark did not constitute
CMI as courts have defined that term and that, in any event, it
lacked the requisite intent to induce, enable, facilitate, or
conceal infringement. Both defendants maintain that they did not
remove any CMI belonging to PIC from the images in question.
A.

Addition of false CMI

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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.5
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

5

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.
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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, 33 F.
Supp. 3d 1264, 1275-76 (D. Colo. 2014), in service of this
argument. In Boatman, the plaintiff asserted that certain images
he gave to the defendant included CMI. When the defendant
reproduced those photographs without CMI, the court concluded
that “it was reasonable to infer that the Defendant . . . removed
. . . [CMI].” Id. But Boatman is not on all fours with the

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present case. Here, in contrast, PIC gave the images to OSI, who
in turn provided them to Orgill. Given the existence of a third
party that has not been deposed and is otherwise absent from the
case, it would be too speculative to infer that Orgill removed
CMI simply because Picone avers that OSI received images
containing copyright information. Such an inference is even less
warranted as to Farm & City. In short, there is no basis in the
record to conclude that either defendant removed CMI from the
images. Accordingly, summary judgment on this point is ALLOWED.
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
“farmandcitysupply” 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
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“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.,
532 U.S. 23, 29 (2001). PIC first argues, under Section
43(a)(1)(A), that Farm & City placed its watermark across the
images appearing on its eBay site and thus falsely designated the
origin of those images. PIC also contends that the watermark
constituted a misrepresentation of the nature, characteristics,
or qualities of the images under Section 43(a)(1)(B). Farm & City
responds that PIC’s Lanham Act claims both fail as a matter of
law under the Supreme Court’s decision in Dastar Corp. v.
Twentieth Century Fox Film Corp., 539 U.S. 23 (2003).
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. Dastar obtained videotapes of the original
series, copied them, and produced a new series based on the
original, editing the material down to half of its original
length and inserting a new opening sequence, chapter title
sequences, and narrated chapter instructions. Id. Dastar also
created new packaging for its series and gave it a different
title. Id. at 27. Dastar then sold its altered and refurbished
series without crediting the original television show. Id.

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Twentieth Century Fox, which owned the copyright to the original
series, argued that Dastar’s conduct constituted “reverse passing
off” under Section 43(a) of the Lanham Act – that is,
misrepresenting another’s goods as one’s own. Id. at 27-28.
The Supreme Court held that Section 43(a) did not support
Fox’s argument. Id. at 31-32. In the Court’s view, “the most
natural understanding of the ‘origin’ of ‘goods’ – the source of
wares – is the producer of the tangible product sold in the
marketplace.” Id. at 31. The phrase “origin of goods” was,
however, “incapable of connoting the person or entity that
originated the ideas or communication that ‘goods’ embody or
contain.” Id. at 32. Accordingly, the Court concluded that the
“origin of goods . . . 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. Since Dastar was undoubtedly the manufacturer of the physical
goods sold to the public – namely, the new, repackaged videotapes
– it would “stretch the text” of the Lanham Act to afford Fox
relief under Section 43(a). Id. at 32.
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. To afford communicative works such “special treatment,” the

22

Court concluded, would “cause[] the Lanham Act to conflict with
the law of copyright,” which specifically addresses itself to
such works. Id. However, the Court made clear that Fox’s interest
in the creative concept underlying Dastar’s video series “is not
left without protection,” id. at 38, noting that Fox’s claim
“would undoubtedly be sustained if Dastar had bought some of [the
original series] videotapes and merely repackaged them as its
own.” Id. at 31.
A.

Section 43(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 Lanham 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

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Cable v. Agent France Presse, 728 F. Supp. 2d 977, 981 (N.D. Ill.
2010), for example, a photographer sued a real estate firm that
displayed his photographs of properties without proper
attribution on its website. The court declined to dismiss the
plaintiff’s Lanham Act claim, concluding that defendants who
“took the plaintiff’s photos and repackaged them as their own
without revision” could be liable under Dastar even where the
good for sale was the subject of the photograph (the properties)
and not the photograph itself. Id.; see also Defined Space, Inc.
v. Lakeshore East, LLC, 797 F. Supp. 2d 896, 901 (N.D. Ill. 2011)
(reaching same conclusion on identical facts); Gen. Sci. Corp. v.
Sheervision, Inc., 2011 WL 3880489 at *3 (E.D. Mich. Sept. 2,
2011) (Lanham Act applicable to misrepresentation of “origin and
nature of media used in marketing” where defendant used
plaintiff’s images to advertise surgical products without proper
attribution). Cf. Levine v. Landy, 832 F. Supp. 2d 176, 181, 191
(N.D.N.Y. 2011) (defendant published plaintiff’s photographs of
Woodstock festival in a book without proper attribution; court
concluded plaintiff sufficiently alleged false designation of
origin under Lanham Act but did not address Dastar).
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

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Dastar.” Agent France Presse v. Morel, 769 F. Supp. 2d 295, 307
(S.D.N.Y. 2011); see also Masck v. Sports Illustrated, 5 F. Supp.
3d 881, 886 (E.D. Mich. 2014) (Lanham Act not applicable where
magazine published photographer’s image of famous athlete without
attribution); Michael Grecco Photography, Inc. v. Everett
Collection, Inc., 589 F. Supp. 2d 375, 387 (S.D.N.Y. 2008)
(vacated in part on other grounds) (Lanham Act not applicable
where Hollywood studios displayed photographer’s images of
celebrities on website without attribution); Maule v. Phila.
Media Holdings, LLC, 710 F. Supp. 2d 511, 514 (E.D. Pa. 2008)
(Lanham Act not applicable where newspaper removed plaintiff’s
watermark from photographs before using photographs in newspaper
ads, since newspaper was the “good” for sale).
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.” 539 U.S. at 37. Although the Court also noted that the
plaintiff’s “claim would undoubtedly be sustained if Dastar had
bought some of [the original] videotapes and merely repackaged
them as its own,” id. at 31, nothing in this language suggests
that the Lanham Act provides a cause of action even where the
misrepresentation in question did not concern the source of a

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tangible good for sale to the public.
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,
539 U.S. at 31. Here, that product is OSI’s lightbulbs. While the
defendant’s failure to attribute the images to PIC is actionable
under the Copyright Act, as discussed above, “it would be out of
accord with the history and purpose of the Lanham Act” to afford
PIC relief under trademark law as well. Id. at 32. As the Court
stated in 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.
539 U.S. at 32-33. Just so here. Customers shopping on Farm &
City’s eBay storefront were interested in the lightbulbs they
sought to purchase, not the author of the product images they
viewed. There is no record evidence that any consumer believed
that Farm & City’s watermark indicated ownership of the
photographs that depicted the lightbulbs. Accordingly, I ALLOW
the defendants’ motion for summary judgment on Count III as to
Section 43(a)(1)(A).

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B.

Section 43(a)(1)(B) – False Advertising
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, 895 F.2d 1, 17 (1st
Cir. 1990); Delaney v. Mass. Bay Transp. Auth., 24 F. Supp. 3d
121, 125 n.7 (D. Mass. 2014) (declining to consider issue not
developed in opposition to summary judgment motion).
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, 769 F. Supp. 2d at 308. While the First
Circuit has noted that Dastar “left open the possibility that
some false authorship claims could be vindicated” under
subsection (B), Zyla v. Wadsworth, 360 F.3d 243, 252 n.8 (1st
Cir. 2004), it did not resolve that question, and other courts
have held that authorship does not constitute part of the nature,
characteristics, or qualities of a good for sale. As one court
concluded,
the holding in Dastar that the word “origin” in §
43(a)(1)(A) refers to producers, rather than authors,
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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, 467 F. Supp.
2d 394, 400 (S.D.N.Y. 2006); see also Baden Sports, Inc. v.
Molten USA, Inc., 556 F.3d 1300, 1307 (Fed Cir. 2009) (false
authorship claims not actionable under subsection (B));
Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137, 1144 (9th
Cir. 2008) (licensing status of copyrighted recording not a
“characteristic” under subsection (B)); Blake v. Prof’l Coin
Grading Serv., 898 F. Supp. 2d 365, 384 (D. Mass. 2012)
(authorship of coin grading system did not bear on “nature,
characteristics, or qualities” of graded coins); Gary Friedrich
Enters., LLC v. Marvel Enters., Inc., 713 F. Supp. 2d 215, 234
(S.D.N.Y. 2010) (misrepresentation of authorship not cognizable
under subsection (B)); Robert Bosch LLC v. Pylon Mfg. Corp., 632
F. Supp. 2d 362, 366 n.4 (D. Del. 2009) (“false advertising
claims for false designation of authorship would create an
overlap between the Lanham and Patent Acts”). But see Clauson v.
Eslinger, 455 F. Supp. 2d 256, 261-62 (S.D.N.Y. 2006) (Subsection
(B) applicable where plaintiff alleged that film’s promotional
materials wrongly credit defendant as producer).
Accordingly, the defendants’ motion for summary judgment on
Count III as to subsection (B) is ALLOWED.
ORDER

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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.

/s/ PATTI B. SARIS
PATTI B. SARIS
United States District Judge

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