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Rudovsky v. West Publishing Corp.

July 15, 2010

DAVID RUDOVSKY AND LEONARD SOSNOV
v.
WEST PUBLISHING CORPORATION, WEST SERVICES INC., AND THOMSON LEGAL AND REGULATORY INC. T/A THOMSON WEST



The opinion of the court was delivered by: Fullam, Sr. J.

MEMORANDUM

Plaintiffs are two law professors; the defendants, together, constitute an entity which publishes law books. In 1987, plaintiffs authored, and defendants published, a two-volume treatise on Pennsylvania criminal procedure, with annual updates ("pocket parts") sent to subscribers.

In 2000, the parties contracted for a second edition of the treatise, which was published in 2001 and for which plaintiffs again provided annual pocket parts. In 2007, the parties entered into a separate, stand-alone agreement covering the 2007 pocket part.

In 2008, however, the parties were unable to come to terms on the compensation to be paid plaintiffs. Thereupon, defendants proceeded to prepare, with their own staff, what purported to be a 2008-2009 pocket part, and the cover of which listed the authors as:

DAVID RUDOVSKY

Member of the Pennsylvania Bar Senior Fellow, University of Pennsylvania Law School

LEONARD SOSNOV

Member of the Pennsylvania Bar Professor of Law, Widener University School of Law and

THE PUBLISHER'S STAFF

Complaint Ex. B. The treatise as updated also was published on the Westlaw database, apparently without the reference to "The Publisher's Staff." Plaintiffs, who had no part in the preparation of the pocket part in question, contend that it is largely a reprint of the pocket part for the previous year, and does not reflect changes which had occurred in Pennsylvania criminal procedural law.

Plaintiffs filed this action, alleging violations of the Lanham Act, 15 U.S.C. § 1125, and state-law claims for unauthorized use of name, defamation, and invasion of privacy. After suit was filed, defendants notified subscribers that plaintiffs had not "participated in any manner in this pocket part and they have discontinued their involvement in the publication," noted this change on the Westlaw database, and prepared and shipped a new pocket part that both revised the substance of the pocket part and did not list plaintiffs as authors. Now before the Court is defendants' motion for summary judgment.

The claims under the Lanham Act, for false advertising and false endorsement, are precluded by the Supreme Court's decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 36-37 (2003), in which the Court held that "communicative products," such as books, were not "goods" for the purposes of the Lanham Act. The Court recognized that "[t]he purchaser of a novel is interested not merely, if at all, in the identity of the producer of the physical tome (the publisher), but also, and indeed primarily, in the identity of the creator of the story it conveys (the author)." Id. at 33. However, to accord "special treatment" to "communicative products" -- that is, to read the word "origin" in the Lanham Act to cover the authors of communicative products -- would "cause[ ] the Lanham Act to conflict with the law of copyright, which addresses that subject specifically." Id. The Court held that:

Another practical difficulty of adopting a special definition of "origin" for communicative products is that it places the manufacturers of those products in a difficult position. On the one hand, they would face Lanham Act liability for failing to credit the creator of a work on which their lawful copies are based; and on the other hand they could face Lanham Act liability for crediting the creator if that should be regarded as implying the creator's "sponsorship or approval" of the copy, 15 U.S.C. § 1125(a)(1)(A).

Dastar, 539 U.S. at 36. The defendants here would be placed in precisely this position if the Lanham Act claims, particularly the false endorsement claim, were permitted to go forward. See Antidote Intern. Films, Inc. v. Bloomsbury Pub., PLC, 467 F. Supp. 2d 394, 398 (S.D.N.Y. 2006) ("Dastar holds that a claim for false designation origin is unavailable where the "origin" in question is the authorship of a communicative work. This holding necessarily applies with equal force to any claim for "false... representation[s]" with respect to the "affiliation... of [one] person with another person," where, as here, one person is the publisher of ...


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