M. ARTHUR GENSLER JR. & ASSOCIATES, INC., Plaintiff-Appellant,
JAY MARSHALL STRABALA, Defendant-Appellee
Argued September 12, 2013
Appeal from the United States District Court for the Northern District of Illinois, Eastern Division. No. 11 C 3945 -- Ronald A. Guzmá n, Judge.
For M. Arthur Gensler, Jr. And Associates Incorporated, Plaintiff - Appellant: Susan Baker Manning, Attorney, Bingham Mccutchen Llp, Washington, DC; Jane M. McFetridge, Attorney, Jackson Lewis P.C., Chicago, IL.
For JAY MARSHALL STRABALA, individually and doing business as: 2DEFINE ARCHITECTURE, Defendant - Appellee: Thomas D. Rosenwein, Attorney, Glickman, Flesch & Rosenwein, Chicago, IL.
Before POSNER, EASTERBROOK, and SYKES, Circuit Judges.
Easterbrook, Circuit Judge.
After leaving Gensler, an architectural firm with projects throughout the world, where he had been a Design Director, Jay Marshall Strabala opened his own firm, 2Define Architecture. Strabala stated on its web site (http://www.define-arch.com/en/featured), on his personal Flickr site, or both, that he had designed five projects for which Gensler is the architect of record: Shanghai Tower, Hess Tower, Three Eldridge Place, the Houston Ballet Center for Dance, and the headquarters of Tesoro Corporation. Gensler contends that Strabala's statements, a form of " reverse passing off" in the argot of this field, violate § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). But the district judge dismissed the complaint, ruling that, because Strabala did not say that he built or sold these structures, he could not have violated § 43(a).
(N.D.Ill. Feb. 21, 2012). The court then dismissed Gensler's state-law claims,
relying on its concession that the outcome of its federal-law claim controls the
The district court read Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041, 156 L.Ed.2d 18 (2003), to limit § 43(a) to false designations of goods' origin--and since Gensler's claim concerns services rather than goods, the court held that Gensler cannot invoke the Lanham Act. That conclusion misreads Dastar. True enough, it held that the absence of a false or misleading designation of goods' origin nixed a Lanham Act claim, but that was because the suit involved only goods. The Supreme Court did not read " services" out of the Lanham Act. Nor did it hold that a false claim of origin is the only way to violate § 43(a). If it had done that, then POM Wonderful LLC v. Coca-Cola Co., 134 S.Ct. 2228, 189 L.Ed.2d 141 (2014), could not have come out as it did, for there was no dispute about who made what, as opposed to whether one
seller was trying to deceive consumers about what its product contained.
Dastar held that a copyright can't be extended by using the Lanham Act. Dastar, the defendant, copied and sold some videos after the copyright expired. Dastar correctly identified itself as the producer of the physical objects that embodied the intellectual property; doing so satisfied both statutes, the Court held. Twentieth Century Fox, which had owned the copyright before its expiration, did not contend that Dastar had falsely identified itself as the videos' creator, wrongly imputed the newly made copies to Twentieth Century Fox, or made any other false claim. Because the origin of goods had been correctly designated, and no false statement made, the Court held that § 43(a) did not supply a claim for relief. Gensler, by contrast, does assert there has been a false claim of origin--though of services rather than goods. Gensler maintains that Strabala falsely claims to have been the creator of intellectual property (the designs of the five buildings). Architects' success in winning clients depends on what they have accomplished; Gensler has a strong interest in defending its reputation for creativity and preventing a false claim that someone else did the design work.
Section 43(a)(1) reads:
Any person who, on or in connection with any goods or services, ... uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of ...