IP Law Daily, COPYRIGHT—S.D.N.Y.: Copyright Act barred claims against dating websites’ for unauthorized use of photos in fake profile, (Nov 4, 2014)

By Jody Coultas, J.D.

Claims filed by Meltech Inc. against a number of dating websites that used photographs owned by Meltech without authorization to create fake profiles were dismissed by the federal district court in New York City (Avalos v. IAC/Interactivecorp, October 30, 2014, Furman, J.).

Meltech, a web design and modeling company, owned the rights to photographs of a model named Melissa Harrington. IAC/Interactivecorp, which has subsidiary companies that operate online dating websites, Match.com LLC, and Humor Rainbow, Inc. allegedly used and published photographs of Harrington in fraudulent profiles posted on the dating websites.

False endorsement. Section 1125(a)(1)(A) of the Lanham Act prohibits practices likely to mislead consumers about the affiliation, connection, or association of one person with another person, or about the origin, sponsorship, or approval of one’s goods, services, or commercial activities by another person. The Supreme Court has made clear that the Lanham Act was “not designed to protect originality or creativity.”

Meltech’s Lanham Act claims were merely an end run around copyright law and dismissed by the court. Because Meltech did not own a copyright on the photographs at issue, it sought to use the Lanham Act to protect against unauthorized use of those photographs. However, the Lanham Act does not provide a cause of action for such use. Although the complaint could be read to plead a claim for false endorsement on the theory that the defendants falsely created the impression that Harrington was a user of the dating websites and that Harrington approved of the goods and services provided, Meltech could not assert such a claim because it did not own Harrington’s right of publicity.

False advertising. Section 1125(a)(1)(B) creates a cause of action for false advertising where the plaintiff suffered an injury to a commercial interest in sales or business reputation due to the defendant’s misrepresentations.

Meltech failed to adequately plead that the alleged misrepresentations caused harm to its commercial interests, according to the court. At the outset, the court noted that it was unlikely that the use of the photographs on fake dating profiles constituted advertising. Meltech alleged that it lost millions of dollars in revenue in the past few years due to the use of Harrington’s photographs on the websites. However, Meltech was unable to actually prove any harm. Meltech also could not prove that any such harm was caused by use of the photographs.

Civil RICO. Although Meltech submits numerous examples of fraudulent profiles that used Harrington’s picture, its claim that Match.com in fact created such profiles was conclusory at best. The allegations failed to establish proximate cause for the purposes of a civil RICO action, because “when factors other than the defendant’s fraud are an intervening direct cause of a plaintiff’s injury, that same injury cannot be said to have occurred by reason of the defendant’s actions.”

State law claims. The court also dismissed Meltech’s claims for unjust enrichment and conversion as preempted by the Copyright Act. The Copyright Act exclusively governs a claim when the work falls within the type of works protected by the Copyright Act, and the claim seeks to vindicate rights already protected by copyright law. The unjust enrichment and conversion claims were preempted by the Copyright Act as they were based entirely on the unauthorized commercial use of the photographs. The complaint failed to state a claim for aiding and abetting fraud.

The case is No. 13-CV-8351 (JMF).

Attorneys: Evan Spencer (Evan Spencer Attorney At Law) for Yuliana Avalos, and Meltech Inc. Daniel L. Brown (Sheppard, Mullin, Richter & Hampton, LLP) for IAC/interactiveCorp., Match.com LLC, People Media, LLC, and Humor Rainbow, Inc.

Companies: Meltech Inc.; IAC/Interactivecorp; Match.com LLC; Humor Rainbow, Inc.

Cases: Copyright PublicityRights NewYorkNews