A recent decision from the District of Massachusetts demonstrates the difficulties that can arise when attempting to protect copyrighted works displayed on the internet.  The July 29, 2015 order issued by the Honorable Patti B. Saris, granted defendants Orgill, Inc. (“Orgill”) and Farm & City Supply, LLC (“FSC”) a split ruling on their summary judgment motions, disposing of many of the asserted claims.  The plaintiff, Photographic Illustrators Corporation (“PIC”) asserted three chief claims against the defendants, including: (a) copyright infringement under 17 USC § 501, (b) mishandling of copyright management information under the Digital Millennium Copyright Act (“DMCA”), and (c) false designation of origin and false advertising under the Lanham Act.

At issue was the defendants’ use of photographs taken by a PIC photographer and licensed to a third party, Osram Sylvania (“OSI”).  PIC alleged that the defendants, Orgill and FCS, improperly used pictures of OSI lighting fixtures without authority and without properly attributing ownership of the photographs to PIC.  According to PIC, the defendants exploited PIC’s copyrighted images to advertise and sell OSI’s products via online merchants such as Amazon and eBay.  The Court allowed both defendants’ motions for summary judgment with regard to the DMCA and Lanham Act claims and allowed summary judgment for FCS on PSI’s copyright infringement claim, leaving PSI with only its copyright infringement claim against Orgill.

Central to the Court’s decisions on the copyright infringement allegations was a license agreement between PIC and third-party OSI in which PIC gave OSI, among other things, “a non-exclusive, worldwide license in and to all the Images and copyrights thereto to freely Use, sub-license Use, and permit Use, in its sole and absolute discretion, in perpetuity, anywhere in the world.”  The license further provided, however, that “OSI may not sub-license images in exchange for valuable consideration such as a fee.”  In evaluating the effect of this license agreement, the Court denied Orgill’s motion for summary judgment with respect to PIC’s infringement claims because Orgill covenanted to OSI to “include ‘a copyright notice indicating PIC as the copyright owner,’” and because there were genuine issues of fact with regard to (a) whether Orgill had paid a “fee” to OSI in contravention of the license agreement, and (b) whether Orgill had complied with the attribution requirements in its agreement with OSI.

With regard to FCS, however, the Court noted there was no evidence of any reference to PIC in any license agreement between FCS and Orgill, and the Court found that “there is no indication whatsoever that [FCS] might have been aware of its duty to attribute the images to PIC.”  The Court thus allowed summary judgment of no copyright infringement with regard to FCS.

Turning to the DMCA and Lanham Act claims, the Court allowed summary judgment on all claims against both defendants.  Specifically with regard to the DMCA claims, the Court held that FCS’s addition of a watermark reading “farmandcitysupply” to the photographs could not support a DMCA claim where there was no genuine issue that FCS did not know PIC existed prior to the filing of the suit and thus did not know of the attribution requirement.  The Court also found that PIC failed to show any genuine issue of fact concerning whether FCS or Orgill “removed indicia of its authorship” where the record suggested that the “defendants only received unmarked images [from OSI] and were never instructed [by OSI] to include attribution.”  Thus, the Court effectively held that because the images were passed through the third-party OSI pursuant to the terms of a license agreement before being altered and posted by the defendants, the defendants could not be liable for altering the copyright management information of the photographs.

Finally, the Court granted summary judgment for both defendants with regard to the Lanham Act claims.  In allowing the motions, the Court found that the protections of the Lanham Act, as interpreted by the Supreme Court’s 2003 decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, do not provide a cause of action where, as here, the alleged false designation pertains to the origin of a photograph instead of the false designation of “the producer of the tangible goods that are offered for sale.”  Rather, the Court held that “[w]hile the defendant’s failure to attribute the images to PIC is actionable under the Copyright Act . . . ‘it would be out of accord with the history and purpose of the Lanham Act’ to afford PIC relief under trademark law as well.”

The order should serve as a guide for plaintiffs seeking to recover for infringement in cases where copyrighted works are used without permission in online marketing.

The case is Photographic Illustrators Corp. v. Orgill, Inc., et al, 14-cv-11818 in the District of Massachusetts.  A copy of the Court’s Orders are available here.