IP Law Daily Copyright suit over beekeeping product ad can’t fly; infringement occurred before registration
Wednesday, August 5, 2020

Copyright suit over beekeeping product ad can’t fly; infringement occurred before registration

By Robert B. Barnett Jr., J.D.

17 U.S.C. §412 precluded developer of honey harvesting aid from seeking statutory damages for mail-order seller’s copying of advertising text in catalogue.

The suit by the developer of a honey harvesting aid used by beekeepers alleging that a mail-order business infringed his copyright in advertising copy for the device was properly dismissed because the first allegedly infringing act occurred before the product was registered, U.S. Court of Appeals in New York City has ruled, affirming a lower court’s grant of summary judgment to the mail-order business. The Second Circuit also affirmed the lower court’s dismissal of the developer’s Digital Millennium Copyright Act (DMCA) claim because removing the developer’s name from advertising copy did not qualify as the removal of copyright management information (CMI) that the DMCA sought to prevent (Fischer v. Forrest, August 4, 2020, Parker, B.).

James Fischer is an apiarist who developed a product known as Fischer’s Bee-Quick, which is a honey harvesting aid that, unlike its predecessors, did not use toxic chemicals that produced offensive odors. Sandra Forrest and Stephen Forrest own and operate Brushy Mountain Bee Farm, Inc., which runs a website and a catalogue that sells products to beekeepers. In 2002, Brushy Mountain began featuring Fischer’s Bee-Quick in its catalogue.

Around 2010, Brushy Mountain determined that Fischer’s supply of Bee-Quick was unreliable, and it stopped offering it. Instead, in its place Brushy Mountain started offering its own similar product, called Natural Honey Harvester. In its January 2011 catalogue, it described its own product using the same advertising copy that it had used to sell Fischer’s Bee-Quick. The only difference was that the names were changed. On February 11, 2011, the Copyright Office issued Fischer a registration for his product.

The inventor later sued Brushy Mountain and three individuals in New York City federal court, alleging that the substitution of the names in the advertising copy constituted copyright infringement and the unlawful removal of CMI in violation of DMCA. The district court granted summary judgment to the mail-order business, ruling that the infringement predated the copyright registration and that the DMCA did not apply to the change in the names. The inventor appealed the decision to the Second Circuit.

Copyright infringement. The inventor sought statutory damages and attorney fees under 17 U.S.C. § 504(a). 17 U.S.C. §412, however, precludes statutory damages or attorney fees for "any infringement of copyright commenced after first publication of the work and before the effective date of its registration." The allegedly offending catalog was mailed out on January 21, 2011. The inventor obtained registration on February 7, 2011. The inventor tried to argue that no pre-registration infringements occurred, but the court refused to accept that argument because the complaint repeatedly stated that the catalogue was the source of his claims. In addition, the same text was on the mail-order business’s website as early as December 26, 2010.

While still before the trial court, faced with certain defeat, the inventor abruptly changed course. He argued late in the game that no pre-registration infringement occurred because the mail-order business had been operating under a license from the inventor. The lower court had refused to allow the inventor to change course so late in the case, and the appellate court affirmed that decision. The appellate court went on to add, however, that even if the court were to allow that argument, the argument would fail because of the absence of any evidence of a license. The inventor also tried to argue that the catalogue could have been delayed in its shipping beyond the date of the registration, but he was unable to produce any evidence supporting that theory. As a result, Section 412 barred the inventor’s recovery of statutory damages and attorney fees.

DMCA. The DMCA prohibits the removal of CMI from copyrighted works (17 U.S.C. § 1202(c)). CMI is described as information such as the author, title, and other identifying data about the copyright holder. The inventor alleged that his name was the CMI, a position that both the lower court and the appellate court rejected because "it misunderstands what constitutes CMI." While an author’s name can constitute CMI, the court said, not every mention of the name does. In this case, the name "Fischer" used in the advertising copy was part of a product name. It was not a reference to him as the copyright owner. What was removed, therefore, was not Fischer’s name as the copyright holder but "Fischer’s" as part of the actual product name. As a result, "Fischer’s" in "Fischer’s Bee-Quick" was not being used for "managing" copyright information. Consequently, the DMCA did not apply.

The Second Circuit, therefore, affirmed the lower court’s dismissal of both counts of the complaint.

This case is Nos. 18-2955-cv and 18-2959-cv.

Attorneys: Gregory Keenan (Digital Justice Foundation) for James H. Fischer. Daniel K. Cahn (Law Offices of Cahn & Cahn) for Sandra F. Forrest.

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