Cite as 896 F.3d 437 (D.C. Cir. 2018)
ASTM, 2017 WL 473822, at *23. Given this, ASTM contends, consumers are likely to confuse PRO’s modified version for authentic copies of ASTM’s works, even though PRO “did not undertake the same quality control procedures,” ASTM Compl. ¶ 130, J.A. 103, which, in turn, will harm ASTM’s brand identity and goodwill, id. ¶¶ 133–34, J.A. 104.
As a threshold matter, PRO contends that ASTM’s trademark claims, which it calls an “attempt to use trademark law to circumvent the limitations of the Copyright Act,” PRO Br. 52, are precluded by the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041, 156 L.Ed.2d 18 (2003). In Dastar, the Supreme Court considered Twentieth Century Fox Film’s claim that Dastar violated section 43(a) of the Lanham Act, 15 U.S.C. § 1125 (prohibiting “false designation of origin”), when it copied large portions of a television series about General Eisenhower’s campaign in Europe, which had fallen into the public domain, in Dastar’s own television program about a similar subject. See Dastar, 539 U.S. at 82, 123 S.Ct. 2041. Rejecting this claim, the Court declined to read the Lanham Act “as creating a cause of action for, in effect, plagiarism—the use of otherwise unprotected works and inventions without attribution.” Id. at 36, 123 S.Ct. 2041. To permit such claims, the Court warned, “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, 123 S.Ct. 2041 (internal quotations and citations omitted).
Were PRO accused of reproducing identical copies of ASTM’s standards, and assuming that ASTM lacked an enforceable copyright to those standards, ASTM’s trademark claim might well have been precluded under Dastar. Here, however, PRO is not accused of faithfully copying ASTM’s work without attribution but instead of “creat[ing] reproductions through scanning and re-typing, with resultant errors and differences,” ASTM, 2017 WL 473822, at *21, to which it affixes ASTM’s marks. Consumers who download copies of the standards from PRO’s website may not only be misled into thinking that ASTM produced the digital files but also may attribute any errors to ASTM. This risks precisely the sort of confusion as to “the producer of the tangible product sold in the marketplace” that the Supreme Court in Dastar deemed a cognizable injury under the Lanham Act. Dastar, 539 U.S. at 31, 128 S.Ct. 2041. It is perhaps unsurprising, then, that the post-Dastar cases where courts have found trademark claims foreclosed involved instances of virtually identical copies. See, e.g., Phoenix Entertainment Partners, LLC v. Rumsey, 829 F.3d 817, 831 (7th Cir. 2016) (noting that the trademark owner’s claim failed because, among other things, they “[did] not affirmatively allege that the defendants’ copies are noticeably inferior to their patrons”); see also Slep-Tone Entertainment Corp. v. Wired for Sound Karaoke & DJ Services, LLC, 845 F.3d 1246, 1250 (9th Cir. 2017) (per curiam) (finding no “alleg[ation of] consumer confusion over the origin of a good properly cognizable in a claim of trademark infringement”).
Given that ASTM alleges that PRO is distributing meaningfully inferior versions of the technical standards under ASTM’s trademark and given trademark law’s concern for “discourag[ing] those who hope to sell inferior products by capitalizing on a consumer’s inability quickly to evaluate the quality of an item offered for sale,” Qualitex, 514 U.S. at 164, 115 S.Ct. 1300, Dastar does not bar ASTM’s trademark claims.
This leaves, then, the merits of the trademark claim. To establish a trademark infringement claim under the Lanham Act, ASTM must show that PRO used
