False Designation of Origin under §1125
E-mail comments to -
False Designation of Origin:
Johnson v. Jones, 149 F.3d 47
(6th Cir. 1998)
Back to Main Page (Resets All Frames)
- The plaintiff (Johnson), an architect, had been requested to design and remodel to build the "dream home" of one of the defendants (Jones).
- The plaintiff's demolition drawings, addition drawings and site plans were all submitted for municipal approval by the plaintiff Jones.
- No agreement as to their ownership was ever reached with the defendant Johnson.
- Defendant Jones and the plaintiff were never able to agree on contract terms and the plaintiff was terminated from the project.
- One of the architects who was subsequently retained, another of the defendants (Tosch), was informed by a city inspector that approvals would come much more slowly if there were changes from the drawings and specifications which had been submitted earlier by the plaintiff.
- Upon assurances from another architect defendant (Uznis) that the risk of copyright infringement would be assessed by an attorney, defendant Tosch replaced the plaintiff's seal on the drawings in question with his own and resubmitted them to the city inspector.
- Defendant Tosch claimed to have been told prior to switching the seals by the attorney who was to make the assessment that "preliminary research" showed doing so posed no risk of copyright infringement.
- The plaintiff subsequently visited the construction sight, saw the mislabeled drawings and filed a claim under §1125(a).
- A §1125(a) claim for false designation of origin has three elements:
- A false designation of origin;
- The false designation of origin has a substantial effect on interstate commerce; and
- The false designation of origin creates a likelihood of confusion among the consuming public.
- The multi-state nature of the architecture business of the plaintiff and the distribution of his plans under a false attribution of source to contractors and subcontractors who did business in a number of states satisfied the second of the above elements.
- Because of the purely substitutional nature of the false designation in this case, the appeals court agreed that the first and third elements above had been satisfied without examining issues related to distinctiveness or secondary meaning.
- These concepts are frequently addressed in false designation of origin cases.
- If plaintiff's own designation is involved, it must be distinctive for the required likelihood of confusion to exist.
- Because of what it saw as the clearly intentional nature of the false designation in this case, the Circuit Court upheld an award of attorneys fees to the plaintiff under §1117.
- Under it, attorneys fees may be awarded in "exceptional cases".
- The court saw defendant Tosch's stated reliance on "preliminary research" from an attorney on copyright issues as unreasonable for a party of his knowledge and experience.
- Disgorgement of profits and breach of implied contract damages were also awarded to the plaintiff in this case.
- The former were under the Copyright Act, with a similar award under the Trademark Act having been seen as duplicative.
Back to Section 1125(a) of the Overview
Nothing in this site is intended in any way to constitute legal advice or to create an attorney-client relationship. The author, Jay M. Tyndall, shall not be liable for any damages of any type, whether actual or consequential, which may arise from the use or reliance of any reader on the content of this site or any site to which it links. No guarantee or assurance is made that any information transmitted to or via any unsecure portion of this site will remain confidential.
Copyright ｩ 1997, 2000, 2001 Jay M. Tyndall (Unless Indicated Otherwise)