In an opinion today, Judge Furman dismissed a class action brought by a company called Meltech, which owns the rights to certain pictures of an adult movie actor known professionally as Melissa Midwest, against against Match.com and various affiliated dating websites. Meltech alleged that Match and the other websites used photos of Ms. Midwest without authorization to make fake dating profiles. Meltech withdrew its copyright claims because it had not actually registered any copyrights for the photos, and Judge Furman found that Meltech could not use the Lanham Act as an “end-run” around the copyright laws:
Meltech first alleges that Match.com violated [the Lanham Act] by “using [Meltech’s] photographs in [its] web site profiles and advertisements,” thus engaging in “reverse passing or palming off” of Meltech’s photographs. (TAC ¶ 69). A Section 1125(a)(1)(A) claim based on “reverse passing off” lies when a “producer misrepresents someone else’s goods or services as his own, ” Agence France Presse v. Morel, 769 F. Supp. 2d 295, 307 (S.D.N.Y. 2011) (internal quotation marks omitted), which Meltech alleges Defendants did through its “unauthorized use and publication” of Meltech’s photographs. (Pl.’s Mem. 14 ¶ 34; see also id. at 10 ¶ 25). Nevertheless, the Supreme Court made clear in Dastar Corp. v. Twentieth Century Fox Film Corp. that the Lanham Act was “not designed to protect originality or creativity.” 539 U.S. 23, 37 (2003). That is, it does not “creat[e] a cause of action for, in effect, plagiarism — the use of otherwise unprotected works and inventions without attribution,” as doing so would “create a species of mutant copyright law that limits the public’s federal right to copy and to use expired copyrights.” Id. at 34, 36 (internal quotation marks omitted). In attempting to plead a Lanham Act claim based on Defendants’ unauthorized use of its photographs, for which Meltech does not own copyrights (Baker Decl., Exs. 1-4), Meltech attempts to achieve precisely what Dastar prohibits: an end run around copyright law.
Judge Furman also dismissed Meltech’s false advertising claims because it had not plausibly pleaded that the fake profiles caused it damages:
[E]ven assuming arguendo that misrepresentations on Defendants’ dating websites constitute “advertising” — a premise that the Court highly doubts, but need not reach — Meltech has not adequately pleaded any harm to its commercial interests proximately caused by Defendants’ alleged misrepresentations. Meltech claims that by “falsely designating that Melissa Midwest was and is a member of [its] web sites,” Match.com has caused “consumer confusion for thousands if not millions of consumers, resulting in the devaluation of the intellectual property owned by [Meltech].” (TAC ¶ 69). As a result, it asserts, Meltech has lost millions of dollars in revenue in the past few years. (Id. ¶¶ 67, 69). The Complaint, however, provides no factual support for that conclusory allegation of harm to Meltech. In fact, if the misrepresentations that Meltech alleges in the Complaint harmed anyone, it would arguably be Defendants themselves, not Meltech (or even Harrington). (Compare id., Ex. O at 1, 5 (complaints on ConsumerAffairs.com warn other consumers to “NEVER SUBSCRIBE [to Match.com]!”; to “[s]tay away from Match.com,” and to “not go to [Match.com] for any reason”) with id., Ex. G (website ScamDigger.com instructs viewers that fraudulent photographs on dating websites, including Harrington’s, are “STOLEN FROM INNOCENT THIRD PARTIES” and that “[p]eople on the pictures are not associated with scammers in any way, they are just victims of identity theft”)). In any event, even if Meltech could establish that it was harmed, it fails to allege a plausible causal connection between that harm and Defendants’ actions. That is, Meltech has to allege not only that consumers were deceived by the fraudulent photographs of Harrington on Defendants’ websites, but also that that deception — believing that Midwest was a member of Defendants’ dating websites when she was not, and consequently discovering otherwise— led consumers to “withhold trade” from Meltech by, for example, visiting its websites less often. See Lexmark, 134 S. Ct. at 1391. Meltech does not particularly try, and certainly does not come close to, doing so plausibly.