Walker Manufacturing, Inc. v. Hoffmann, Inc. (261 F. Supp. 2d 1054, 2003)

MEMORANDUM OPINION AND ORDER REGARDING DEFENDANT HOFFMANN’S SECOND MOTION FOR PARTIAL SUMMARY JUDGMENT

BENNETT, Chief Judge.

TABLE OF CONTENTS

I. INTRODUCTION.1057

A. Procedural Background.1057

B. Factual Background.1059

II. LEGAL ANALYSIS. 1061

A. Standards For Summarg Judgment 1061

B. De Minimis Conduct.1062

1. Arguments of the parties.1062

2. The de minimis doctrine in copyright and Lanham Act law.1063

3. Was Hoffmann’s conduct de minimis?.1065

C. “Reverse Palming Off”.1068

1. Arguments of the parties.1068

2. Source and nature of the Lanham Act’s prohibition .1068

3. “Copying” as “reverse palming off’.1070

a. Cognizability in light of elements of the claim.1070

b. Cognizability in light of Pioneer Hi-Bred.1070

c. Cognizability in light of Waldman Publishing.1072

d. Cognizability in light of Montgomery and Roho.1075

4. Conclusion .1077

D. Actual Consumer Confusion .1077

1. Arguments of the parties.1077

2. Analysis.1077

E. Permanent Injunctive Relief.1078

F. Scope Of Misappropriation Of Trade Secrets Claim .1078

1. Arguments of the parties.1078

2. Analysis.1079

a. Elements of misappropriation of “trade secrets” .1079

b. Definition of a “trade secret”.1079

c. “Reverse engineering”.1080

d. Walker’s additional trade secrets.1082

G. Money Damages For Misappropriation Of Trade Secrets .1084

1. Arguments of the parties.:.1084

2. Analysis.1085

a. Olson.1085

b. Winston Research Corp.1087

c. Application of cases .1087

III. CONCLUSION.1088

Renewing its attempts to whittle away at the plaintiffs various claims of interference with the plaintiffs intellectual property rights related to self-propelled crop sprayers and its business of designing and selling such equipment, the principal defendant in this case has filed its second motion for partial summary judgment. In the present motion, the defendant mounts what it claims are new and different challenges to the plaintiffs copyright, unfair competition, and trade secrets claims. The plaintiff, however, contends that the issues presented by the defendant’s second motion for partial summary judgment have already been decided by the court, in its disposition of the defendant’s first motion for partial summary judgment, or are subject to genuine issues of material fact that can only be resolved by a trial on the merits.

I. INTRODUCTION

A. Procedural Background

In this lawsuit, filed June 28, 2000, plaintiff Walker Manufacturing, Inc., originally asserted numerous claims against only one defendant, Hoffmann, Inc., arising from Hoffmann’s alleged interference with Walker’s intellectual property rights relating to self-propelled crop sprayers and Walker’s business of designing and selling such sprayers. By order dated August 11, 2000, and clarified on August 28, 2000, Judge Melloy, who has since been elevated to the Eighth Circuit Court of Appeals, granted Walker’s application for a preliminary injunction and enjoined Hoffmann from selling, marketing, or displaying to any third party Hoffmann’s self-propelled, high-clearance agricultural sprayer, which allegedly incorporated trade secrets and intellectual property misappropriated by Hoffmann from Walker.

On November 9, 2000, Walker filed an Amended Complaint adding defendants Larry Emmert, Marty Sixt, and “Jan Rule dba J.R. Sales and Advantage Sprayers.” Walker filed a Second Amended Complaint on June 27, 2001, identifying the last defendant as “J.R. Sales and Machinery Service, Inc.” The Second Amended Complaint is the one presently before the court. Count I of the Second Amended Complaint asserts claims under the Racketeer Influenced and Corrupt Organizations (RICO) statute, 18 U.S.C. § 1962(c), and the Iowa Ongoing Criminal Conduct Act (IOCCA), Iowa Code § 706A.2(l)(c) against defendants Hoffmann, Emmert, Sixt, and J.R. Sales; Count II alleges “false designation of origin,” elsewhere described as “reverse passing off’ or “reverse palming off,” in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), against defendant Hoffmann only; Count III alleges copyright infringement in violation of 17 U.S.C. § 106 against defendant Hoffmann only; Count IV alleges misappropriation of trade secrets in violation of Iowa Code § 550 against defendants Hoffmann and Sixt; Count V alleges a state-law correlate of the “reverse palming off’ claim in Count II, this time identified as “unfair competition,” against defendants Hoffmann and J.R. Sales; Count VI alleges breach of contract against defendant Hoffmann; Count VII alleges fraudulent non-disclosure against defendant Hoffmann; Count VIII alleges breach of fiduciary duty against defendant Hoffmann; Count IX alleges interference with prospective business advantage against defendants Hoff-mann and J.R. Sales; and Count X alleges breach of a non-competition agreement against defendant Sixt. However, prior to the filing of the Second Amended Complaint, by order dated April 25, 2001, Judge Melloy had already dismissed Count I, the RICO claim, on a motion to dismiss by defendants Hoffmann and Emmert. See Walker Mfg., Inc. v. Hoffmann, Inc., 157 F.Supp.2d 1012 (N.D.Iowa 2001) (Walker I).

Hoffmann filed its first motion for partial summary judgment on February 21, 2002, and this court granted that motion in part and denied it in part by order dated September 13, 2002. See Walker Mfg., Inc. v. Hoffmann, Inc., 220 F.Supp.2d 1024 (N.D.Iowa 2002) ('Walker II). Somewhat more specifically, the court granted summary judgment in favor of the defendants on Walker’s prayer for statutory damages or a permanent injunction on Walker’s copyright infringement claim in Count III, but otherwise denied summary judgment on Counts II and V (reverse palming off/unfair competition), III (copyright infringement), and VIII (breach of fiduciary duty).

This matter comes before the court pursuant to Hoffmann’s second Motion For Partial Summary Judgment, filed on January 31, 2003. Hoffman contends that the present motion for partial summary judgment “is not a motion for reconsideration of its previous motion for partial summary judgment,” but is instead “based on evidence procured since the filing of the previous motion and presents arguments for partial summary judgment not yet raised.” Defendant Hoffmann’s Memorandum Supporting [Second] Motion For Partial Summary Judgment, 3 n. 1. The present motion seeks summary judgment in Hoffmann’s favor on claims or discrete issues in Counts II and V (reverse palming offiunfair competition), III (copyright infringement), and IV (misappropriation of trade secrets). Walker resisted Hoff-mann’s second motion for partial summary judgment on February 18, 2003, asserting that at least some of the issues presented by the motion have been previously decided by the court, in its disposition of Hoff-mann’s first motion for partial summary judgment, and that summary judgment is not appropriate on other issues. Hoff-mann filed a reply in further support of its second motion for partial summary judgment on February 26, 2003.

On February 27, 2003, defendant J.R. Sales and Machinery Services, Inc., filed a joinder in the portions of Hoffmann’s second motion for partial summary judgment pertaining to the “unfair competition” claim in Count V, which is the only count in dispute in Hoffmann’s motion that is also brought against J.R. Sales. J.R. Sales did not separately brief its joinder or supplement in any way Hoffmann’s appendix, nor did Walker find it necessary to file a separate response to J.R. Sales’s joinder.

The parties did not request oral arguments on Hoffmann’s second motion for partial summary judgment and the court has likewise concluded that oral arguments are unnecessary. Therefore, Hoffmann’s second motion for partial summary judgment is fully submitted on the parties’ written submissions.

B. Factual Background

Whether or not a party is entitled to summary judgment ordinarily turns on whether or not there are genuine issues of material fact for trial. See, e.g., Quick v. Donaldson Co., 90 F.3d 1372, 1376-77 (8th Cir.1996). Nevertheless, the court will not attempt here a comprehensive review of the undisputed and disputed facts in the record. Rather, the court will present here only sufficient factual background to put in context the parties’ arguments for and against summary judgment on Walker’s copyright, reverse palming offiunfair competition, and trade secrets claims or issues pertinent to those claims. More attention will be given to specific factual disputes, where necessary, in the court’s legal analysis.

The court has twice presented the factual background to Walker’s claims in rulings on dispositive motions, once in response to a motion to dismiss Count I of Walker’s Amended Complaint, see Walker I, 157 F.Supp.2d at 1014-15, and once in response to Hoffmann’s first motion for partial summary judgment, which, like the present motion, sought judgment in Hoff-mann’s favor on Walker’s reverse palming off/unfair competition and copyright claims (in Counts II, V, and III, respectively), as well as on Walker’s breach-of-fiduciary-duty claim (Count VIII), which is not at issue here. See Walker II, 220 F.Supp.2d at 1033-35. Therefore, the court need only summarize its prior statements of the factual background, with particular emphasis on facts pertinent to the claims at issue in the present motion for partial summary judgment, and add a statement of those “new facts” upon which Hoffmann now relies.

The pertinent factual background actually begins with the business relationship between a company known .as R J Manufacturing, Inc. (RJM), and defendant Hoff-mann. RJM, like Walker, was in the business of producing self-propelled, high-clearance crop sprayers. In January 1998, RJM contracted with Hoffmann for Hoff-mann to fabricate parts to be used in RJM’s crop sprayers. Pursuant to that contract, RJM supplied Hoffmann with certain design drawings and specifications, in both paper and electronic formats, each of which was clearly marked with a reservation of proprietary rights to the drawing and data shown therein. However, neither RJM nor Walker, when it acquired RJM’s intellectual property rights, registered a copyright in the drawings or other design materials at issue. During 1998 and 1999, Hoffmann fabricated parts for RJM. When RJM became delinquent on payments under the contract with Hoffmann, RJM transferred ownership of two used crop sprayers to Hoffmann in partial payment of some of its debt to Hoffmann. However, RJM never recovered from its financial woes and, at some point in 2000, the fabrication contract was terminated. Walker purchased nearly all of RJM’s assets in May 2000 and succeeded to its interest in the intellectual property at issue here either then or subsequently, by an assignment of rights. This court determined, in Walker II, that Walker is the “real party in interest” for claims arising from RJM’s relationship with Hoffmann. See Walker II, 220 F.Supp.2d at 1033.

In late 1999, before the failure of RJM, Hoffmann decided to manufacture and sell its own crop sprayer, dubbed the “Silver Hawk.” In early 2000, Hoffmann hired defendant Marty Sixt, a former design engineer at RJM, to assist Hoffmann with the design of Hoffmann’s own sprayer, allegedly in violation of Sixt’s non-competition agreement with RJM. As this court noted in its ruling on Hoffmann’s first motion for partial summary judgment, although it is undisputed that Hoffmann used RJM’s designs and specifications to some degree in the design of the Hoffmann sprayer, the parties hotly dispute the extent to which Hoffmann did so. See Walker II, 220 F.Supp.2d at 1038. The court now notes that the parties also hotly dispute the extent to which Sixt drew upon his knowledge of RJM’s (or Walker’s) trade secrets in the development of the Hoffmann sprayer. Walker contends that Hoffmann used the RJM drawings and specifications for the “L & S leg” and Air Bag Suspension System (ABSS) of Hoffmann’s own crop sprayer. On the other hand, Hoffmann contends that Sixt independently developed a “conceptually similar” ABSS for the Hoffmann sprayer and contends that the “L & S leg” was in the public domain. The parties also dispute the extent to which Hoffmann could have “reverse engineered” Walker sprayers to discover matters disclosed in the proprietary drawings and specifications that RJM provided to Hoffmann.

The parties agree that Hoffmann has never sold a Silver Hawk sprayer, but Walker denies Hoffmann’s contention that Hoffmann never entered into a distributorship agreement with any person or business to do so. Walker contends that Hoffmann and J.R. Sales either reached a distributorship agreement or some other kind of agreement for J.R. Sales to “partner” with Hoffmann in the sale of Hoff-mann crop sprayers. The parties apparently agree that Hoffmann only assembled one prototype of the Silver Hawk sprayer, which was never completely field tested. They also agree that a second Silver Hawk sprayer was under construction at the time that the preliminary injunction was entered in this ease. However, the preliminary injunction put a hold on Hoff-mann’s development, manufacture, and marketing of the Silver Hawk sprayer. Hoffmann contends that, prior to the preliminary injunction, Jan Rule, of J.R. Sales, had only one “discussion” with a potential customer for the Silver Hawk, during which he showed the prospective customer an artist’s rendering of the sprayer, but Hoffmann contends that Rule had no product information to accompany the artist’s rendering, while Walker contends that Rule admitted in deposition testimony that he had discussed the Silver Hawk with “many people” and had sent numerous letters to potential customers promoting the Silver Hawk, at least by reference to specific features of that sprayer, if not by name. Walker also contends, and Hoffmann disputes, that associates of Mr. Rule, named Ralph McClure and Mike Fay, spoke with potential customers about the Silver Hawk sprayer. However, it is undisputed that Walker has not identified any person or entity that decided not to buy a Walker sprayer as a result of Hoffmann’s conduct and Walker admits that it knows of no instance of actual consumer confusion between the Hoffmann and Walker sprayers.

Walker itself also apparently ran into financial difficulties and it is undisputed that Walker ultimately transferred substantially all of its assets to Hawkeye State Bank, including intellectual property rights and all assets acquired by Walker from RJM. However, Walker contends that it retained the rights to pursue the present litigation.

II. LEGAL ANALYSIS

A. Standards For Summary Judgment

As this court has explained on a number of occasions, applying the standards of Rule 56 of the Federal Rules of Civil Procedure providing for summary judgment, the trial judge’s function at the summary judgment stage of the proceedings is not to weigh the evidence and determine the truth of the matter, but to determine whether there are genuine issues for trial. Quick v. Donaldson Co., 90 F.3d 1372, 1376-77 (8th Cir.1996); Johnson v. Enron Corp., 906 F.2d 1234, 1237 (8th Cir.1990). In reviewing the record, the court must view all the facts in the light most favorable to the nonmoving party and give that party the benefit of all reasonable inferences that can be drawn from the facts. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct.. 1348, 89 L.Ed.2d 538 (1986); Quick, 90 F.3d at 1377 (same). Procedurally, the moving party bears “the initial responsibility of informing the district court of the basis for its motion and identifying those portions of the record which show lack of a genuine issue.” Hartnagel v. Norman, 953 F.2d 394, 395 (8th Cir.1992) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)); see also Rose-Maston v. NME Hosps., Inc., 133 F.3d 1104, 1107 (8th Cir.1998); Reed v. Woodruff County, Ark., 7 F.3d 808, 810 (8th Cir.1993). When a moving party has carried its burden under Rule 56(c), the party opposing summary judgment is required under Rule 56(e) to go beyond the pleadings, and by affidavits, or by the “depositions, answers to interrogatories, and admissions on file,” designate “specific facts showing that there is a genuine issue for trial.” Fed. R. Civ. P. 56(e); Celotex, 477 U.S. at 324, 106 S.Ct. 2548; Rabushka ex. rel. United States v. Crane Co., 122 F.3d 559, 562 (8th Cir.1997), cert. denied, 523 U.S. 1040, 118 S.Ct. 1336, 140 L.Ed.2d 498 (1998); McLaughlin v. Esselte Pendaflex Corp., 50 F.3d 507, 511 (8th Cir.1995); Beyerbach v. Sears, 49 F.3d 1324, 1325 (8th Cir.1995). An issue of material fact is “genuine” if it has a real basis in the record. Hartnagel, 953 F.2d at 394 (citing Matsushita Elec. Indus. Co., 475 U.S. at 586-87, 106 S.Ct. 1348). “Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment,” i.e., are “material.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Beyerbach, 49 F.3d at 1326; Hartnagel, 953 F.2d at 394. If a party fails to make a sufficient showing of an essential element of a claim with respect to which that party has the burden of proof, then the opposing party is “entitled to judgment as a matter of law.” Celotex Corp., 477 U.S. at 323, 106 S.Ct. 2548; In re Temporomandibular Joint (TMJ) Implants Prod. Liab. Litig., 113 F.3d 1484, 1492 (8th Cir.1997). Ultimately, the necessary proof that the nonmoving party must produce is not precisely measurable, but the evidence must be “such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Allison v. Flexway Trucking, Inc., 28 F.3d 64, 66 (8th Cir.1994). The court will apply these standards to Hoffmann’s motion for partial summary judgment on issues related to Walker’s copyright, reverse palming off/unfair competition, and trade secrets claims. The court deems it appropriate to take a “thematic” approach to the issues on Hoffmann’s motion for partial summary judgment, much as the parties have done, rather than a claim-by-claim approach, which might be more appropriate under other circumstances.

B. De Minimis Conduct

1. Arguments of the parties

Hoffmann’s first contention, in its second motion for partial summary judgment, is that any copyright infringement or “reverse palming off’ in violation of the Lanham Act that it may have engaged in was de minimis, so that the law is not concerned with such trifles and would bar Walker from recovering on Counts II, III, and V. Hoffmann invokes the doctrine of de minimis non curat lex as applicable to “reverse palming off’ claims generally, and to Walker’s claims in particular, because Hoffmann contends that it is undisputed that Hoffmann never sold a Silver Hawk sprayer; Hoffmann never entered into a distributorship agreement with any party concerning the Silver Hawk sprayer; Hoffmann assembled only one prototype of the machine, which was never field tested; at most Hoffmann’s representatives had only general discussions about the Silver Hawk sprayer, or something like it, with potential customers; no one ever approached Ralph McClure or Mike Fay regarding purchase of a Silver Hawk sprayer; Hoffmann took steps to maintain the secrecy and confidentiality of its project to develop the Silver Hawk sprayer; and Walker has not identified any individuals to whom Hoffmann marketed the sprayer or any potential customers who decided not to purchase a Walker sprayer as a result of Hoffmann’s conduct. Hoffmann relies principally on Knickerbocker Toy Co. v. Azrak-Hamway International, Inc., 668 F.2d 699 (2d Cir.1982), and Swisher Mower & Machine Co. v. Haban Manufacturing, Inc., 931 F.Supp. 645 (W.D.Mo.1996), in support of its contentions that its conduct was de minimis.

In response, Walker contends that neither Hoffmann’s campaign to plunder Walker’s (or RJM’s) research and development nor Hoffmann’s “reverse palming off’ conduct was de minimis. Walker contends that Hoffmann’s broad “scheme” included obstructing RJM’s possible financial recovery, for example, by withholding parts needed for production, changing agreed upon conditions of payment, and terminating RJM’s fabricating contract in bad faith; using RJM’s drawings despite admitted expressions of concern about doing so by those charged with using the drawings for Hoffmann’s own purposes; hiring RJM’s head engineer in violation of his confidentiality agreement; making false representations to the United States Patent and Trademark Office concerning purported invention by Sixt and ownership by Sixt and Hoffmann of patents on Hoff-mann’s sprayer, when the purported inventions were actually derived from stolen trade secrets; otherwise attempting to destroy Walker’s base of vendors and customers; and threatening Walker employees. Walker also contends that this court has previously held that there were genuine issues of material fact precluding summary judgment in Hoffmann’s favor on Walker’s copyright and reverse palming offiunfair competition claims.

In reply, Hoffmann asserts that Walker has failed either to address the cases cited by Hoffmann or to generate any authority of its own contrary to the application of the doctrine of de minimis non curat lex in the circumstances presented here. Hoffmann also argues that Walker has failed to identify any record evidence generating a genuine issue of material fact on the issue of whether or not Hoffmann’s infringing conduct was de minimis.

2. The de minimis doctrine in copyright and Lanham Act law

The court finds that the doctrine of de minimis non curat lex has been expressly applied in cases involving both copyright and trademark — or at least, trade dress — ■ infringement. Judge Leval of the Second Circuit Court of Appeals recently explained the general applicability of the doctrine of de minimis non curat lex in the context of copyright infringement as follows:

The de minimis doctrine essentially provides that where unauthorized copying is sufficiently trivial, “the law will not impose legal consequences.” Ring-gold [v. Black Entertainment Television], 126 F.3d [70,] 74 [ (2d Cir.1997) ]. See also Knickerbocker Toy Co. v. Azrakr-Hamway Int’l, Inc., 668 F.2d 699, 703 (2d Cir.1982) (denying relief under de minimis doctrine where defendant had made a copy of plaintiffs work, but copy was never used); American Geophysical Union v. Texaco, Inc., 60 F.3d 913, 916 (2d Cir.1994) (suggesting that if photocopying for individual use in research is de minimis, it would not constitute an infringement); Pierre N. Leval, Nimmer Lecture: Fair Use Rescued, 44 U.C.L.A. L.Rev. 1449, 1457-58 (1997).

The de minimis doctrine is rarely discussed in copyright opinions because suits are rarely brought over trivial instances of copying. Nonetheless, it is an important aspect of the law of copyright. Trivial copying is a significant part of modern life. Most honest citizens in the modern world frequently engage, without hesitation, in trivial copying that, but for the de minimis doctrine, would technically constitute a violation of law. We do not hesitate to make a photocopy of a letter from a friend to show to another friend, or of a favorite cartoon to post on the refrigerator. Parents in Central Park photograph their children perched on José de Creeft’s Alice in Wonderland sculpture. We record television programs aired while we are out, so as to watch them at a more convenient hour. Waiters at a restaurant sing “Happy Birthday” at a patron’s table. When we do such things, it is not that we are breaking the law but unlikely to be sued given the high cost of litigation. Because of the de minimis doctrine, in trivial instances of copying, we are in fact not breaking the law. If a copyright owner were to sue the makers of trivial copies, judgment would be for the defendants. The case would be dismissed because trivial copying is not an infringement.

On Davis v. The Gap, Inc., 246 F.3d 152, 172-73 (2d Cir.2001) (footnote omitted).

In On Davis, Judge Leval rejected The Gap’s contention that the doctrine was applicable to its use of Davis’s eyeglasses and jewelry in an advertisement for Gap clothing emblazoned with the word “fast,” and hence described as “the ‘fast’ advertising”:

The Gap seeks to avail itself of the de minimis rule. It argues that even in advertising, it is a trivial matter for persons to be shown wearing their eyeglasses or wristwatches.

The Gap’s argument may well be valid in other circumstances, but does not fit these facts. Here, the combination of circumstances convinces us that the de minimis doctrine is not applicable. In the “fast” advertisement, the infringing item is highly noticeable. This is in part because Davis’s design and concept are strikingly bizarre; it is startling to see the wearer peering at us over his Onocu-lii. Because eyes are naturally a focal point of attention, and because the wearer is at the center of the group — the apex of the V formation — the viewer’s gaze is powerfully drawn to Davis’s creation. The impression created, furthermore, is that the models posing in the ad have been outfitted from top to bottom, including eyewear, with Gap merchandise. All this leads us to conclude that the Gap’s use of Davis’s jewelry cannot be considered a de minimis act of copying to which the law attaches no consequence.

On Davis, 246 F.3d at 173. Thus, what persuaded Judge Leval that the de minim-is doctrine was not applicable to this incident of alleged copyright infringement was “the combination of circumstances,” including the fact that the copying was “highly noticeable,” and the implication from the advertising that everything that the models in the advertisement were wearing was Gap merchandise, including the eyewear, which was actually Davis’s creation, i.e., an implication of a false designation of origin of the eyewear. However, Judge Leval did not consider whether or not The Gap gained anything by its copying or how many times it. copied Davis’s copyrighted wares.

In Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70 (2d Cir.1997), upon which Judge Leval later relied in On Davis, Judge Jon 0. Newman identified more specifically three meanings of “de minimis ” in the copyright context. See Ringgold, 126 F.3d at 74-75. Those specific meanings are (1) “what [de minimis ] means in most legal contexts: a technical violation of a right so trivial that the law will not impose legal consequences” (“technical” trivial violation); (2) “that copying has occurred to such a trivial extent as to fall below the quantitative threshold of substantial similarity, which is always a required element of actionable copying” (copying to a trivial extent); and (3) as relevant to “fair use,” in the sense of “ ‘the amount and substantiality of the portion used in relation to the copyrighted work as a whole’ ” (triviality of the copied portion of the copyrighted work). Id. at 74-75 (quoting 17 U.S.C. § 107(3), with emphasis added in Ringgold)-, see also Bridgeport Music, Inc. v. Dimension Films, 230 F.Supp.2d 830, 839-42 (M.D.Tenn.2002) (considering application of the de minimis doctrine in copyright as “a derivation of substantial similarity, where a defendant argues that the literal copying of a small and insignificant portion of the copyrighted work should be allowed,” i.e., copying to a trivial extent). However, Judge Newman suggested that the de minimis concept was properly applied in the first two senses, but not in the third, where a more elaborate examination of factors to determine “fair use” was appropriate. Id. at 75-76.

Continuing a reverse chronological survey of applications of the de minimis doctrine by federal courts, the court notes that Hoffmann relies on Knickerbocker Toy Company, Inc. v. Azrakr-Hamway International, Inc., 668 F.2d 699 (2d Cir.1982). In Knickerbocker Toy, Judge Pierce considered a copyright infringement claim concerning use of a photograph of the plaintiffs toy in the defendant’s “blister card,” which the court explained “is a cardboard display card on which is printed promotional copy and illustrations of the product [which] is treated to accept a plastic ‘blister’ in which the product itself is contained for sale at retail.” Knickerbocker Toy, 668 F.2d at 701 n. 1. The defendant’s vice president of merchandising and operations testified that the blister card on which the plaintiffs claim was based was simply a sample that the defendant produced in order to position the artwork, and that a totally different illustration would be used for the production run of the card. Id. at 702. The district judge dismissed the copyright claim as to the blister card stating that “ ‘the short answer is that (the blister card) was only an office copy which was never used.’ ” Id. (quoting the court below). The appellate court’s analysis was equally brief: The appellate court concluded that “on the record herein, the copyright claim with respect to the blister card falls squarely within the principle of de minimis non curat lex, and the dismissal of that claim is affirmed.” Id. at 703. Similarly, in Swisher Mower & Machine Company, Inc. v. Haban Manufacturing, Inc., 931 F.Supp. 645 (W.D.Mo.1996), upon which Hoffmann also relies, the court concluded that the doctrine of de minimis non curat lex was also applicable to the defendant’s technical infringement of trade dress in violation of § 43(a) of the Lanham Act, where the defendant produced only one infringing prototype, which was never sold. Swisher Mower, 931 F.Supp. at 648.

However, the district court in Repp v. Webber, 914 F.Supp. 80 (S.D.N.Y.1996), rejected the defendant’s argument that, because the gross receipts from the sale of products containing an infringing song within the limitations period totalled only $75.87, the de minimis doctrine applied to the defendant’s alleged copyright infringement. See Repp, 914 F.Supp. at 83. The district court distinguished Knickerbocker Toy on the ground that, in the case before it, “substantial public sales, rather than mere internal distribution, occurred within the Limitations Period,” reasoning that “[t]he law recognizes no exemption for commercially unsuccessful or unprofitable infringements.” Id. at 84. “Whatever the ultimate scope of Knickerbocker,” the court wrote, “it is clear that it was not meant to cover cases like the present one where significant sales occurred and a party received royalties for the public distribution of an allegedly infringing product.” Id.

3. Was Hoffmann’s conduct de min-imis?

The court agrees with Hoffmann that much of Walker’s response to Hoffmann’s de minimis argument is not, in fact, responsive. Even if Hoffmann’s composite misconduct toward Walker (and RJM) was not de minimis, as Walker contends, the scale of the composite misconduct is not the issue. Instead, what is at issue on Walker’s claims under the Copyñght Act and the Lanham Act is whether copying of Walker’s designs was only de minimis. See On Davis, 246 F.3d at 172-73 (examining application of the doctrine to copying of proprietary designs); Ringgold, 126 F.3d at 74-75 (same). Nevertheless, this conclusion about the focus for application of the de minimis doctrine does not mean that Hoffmann is entitled to summary judgment on Walker’s copyright and reverse palming off/unfair competition claims under the de minimis doctrine. Rather, the question is whether Walker has generated genuine issues of material fact on the issue of the scope of Hoffmann’s copying. In that context, the court notes that it has already concluded that there are genuine issues of material fact on Walker’s copyright and reverse palming off/unfair competition claims, as Walker contends. Specifically, in Walker II, this court concluded “that the extent to which Hoffmann used the RJMTWalker designs and specifications in the Hoffmann sprayer is hotly contested.” Walker II, 220 F.Supp.2d at 1038. In essence, then, this court has already concluded that there are genuine issues of material fact as to whether or not Hoff-mann’s conduct was sufficient to state a cognizable claim under the Copyright Act and the Lanham Act.

Nevertheless, to the extent that application of the de minimis doctrine is a “new” ground for summary judgment, it appears that Hoffmann’s argument, from the terse application of the de minimis doctrine in Knickerbocker Toy, is that Hoffmann’s copying, if any, falls within the de minimis doctrine, because “the Silver Hawk sprayer was the equivalent of an ‘office copy which was never used.’ ” Defendant Hoff-mann’s Memorandum Supporting [Second] Motion For Partial Summary Judgment at 7 (quoting Knickerbocker Toy, 668 F.2d at 702). Similarly, from the equally abbreviated treatment of the de minimis conduct issue in Swisher Mower, Hoffmann argues that the de minimis doctrine applies here, because “ ‘only one [Silver Hawk sprayer prototype] was ever manufactured and it was never sold.’ ” Id. (quoting Swisher Mower, 931 F.Supp. at 648). However, the court does not agree that the de min-imis doctrine is properly applicable on the present record — at the very least, the court concludes that there is a genuine issue of material fact as to whether or not application of the doctrine would be proper in the circumstances presented here.

First, on the record presented here, this case is not analogous to Knickerbocker Toy. The Hoffmann Silver Hawk sprayer was not merely “an office copy,” but a prototype of a sprayer intended for production and sale. Compare Knickerbocker Toy, 668 F.2d at 702 (the only evidence in the record concerning the defendant’s use of the “blister card” was that it was “a sample ... produced in order to position the artwork, and that a totally different illustration would be used for the production run of the card”). Certainly, Walker has generated a genuine issue of material fact as to whether or not Hoff-mann, through J.R. Sales, for example, was attempting to market the Silver Hawk sprayer even before the sprayer was field tested. Moreover, on the record before the court, the only reason such sales were not pursued was that such sales were enjoined on the application of the plaintiff here, which effectively distinguishes this case from both Knickerbocker Toy, where the defendant never intended to make more than an “in-house” copy improperly using a photograph of the plaintiffs product, and from Swisher Mower, where the defendant itself decided not to pursue manufacture of the prototype. See Swisher Mower, 931 F.Supp. at 647 (the defendant did not manufacture any more mowers of the particular design of the prototype, but instead made several changes to the design resulting in a production model).

Second, as the district court in jRepp recognized, “[t]he law recognizes no exemption for commercially unsuccessful or unprofitable infringements.” Repp, 914 F.Supp. at 84. Thus, the fact that Hoffmann never managed to make a sale of its allegedly infringing sprayer, before it was prevented from making comprehensive attempts to do so, does not seem to the court to be the issue in application of the, de minimis doctrine. Whatever the ultimate scope of Knickerbocker Top, it seems clear to this court that the de minimis doctrine was not meant to cover cases in which there is record evidence that the defendant made a concerted effort to copy the design of a competitor for the purpose of producing a marketable product on which the defendant intended to make significant sales. Cf. Repp, 914 F.Supp. at 84 (“Whatever the ultimate scope of Knickerbocker, ... it is clear that it was not meant to cover cases like the present one where significant sales occurred and a party received royalties for the public distribution of an allegedly infringing product.”).

To the extent that Swisher Mower might support a different result — because in that case, the defendant also offered a prototype for sale, but discontinued the prototype design after failing to make any sales at a trade show, see Swisher Mower, 931 F.Supp. at 647 — this court must respectfully disagree with the court in Swisher Mower and, indeed, with the focus in Knickerbocker Toy. It appears to this court that the “wrong” addressed by the Copyright Act and the Lanham Act, and measured by the de minimis doctrine, is in the copying of the idea or design of another with intent to use the copied material for an improper purpose, not in the infringer’s degree of commercial success with the copied design. See On Davis, 246 F.3d at 172-73; Ringgold, 126 F.3d at 74-75; accord Repp, 914 F.Supp. at 84. For example, on the present record, the copying at issue here is nothing like making a photocopy of a letter from a friend to show to another friend, or of a favorite cartoon to post on the refrigerator; photographing one’s children on a sculpture that is the creation of another; recording television programs aired while one is out, so as to watch them at a more convenient hour; or waiters at a restaurant singing “Happy Birthday” at a patron’s table. See On Davis, 246 F.3d at 173 (giving these examples of de minimis copying that simply do not violate the Copyright Act). There are, at the very least, genuine issues of material fact that Hoffmann set out to copy components of a commercial product of another, knowing those components were deemed proprietary by the owner, with the intent of producing a competing product. To put it another way, the copying at issue here is simply not — or at least there are genuine issues of material fact that it was not — “a technical violation of a right so trivial that the law will not impose legal consequences,” i.e., a “technical” violation, see Ringgold, 126 F.3d at 74-75 (first meaning of “de minimis ” for purposes of copyright law), but a purposeful copying of components with commercial value with the intention of exploiting their commercial value. Nor, on the present record, did Hoffmann’s conduct involve only “copying ... to such a trivial extent as to fall below the quantitative threshold of substantial similarity, which is always a required element of actionable copying,” ie., copying only to a trivial extent, see Ringgold, 126 F.3d at 74-75 (second meaning of “de min-imis ” for purposes of copyright law), but complete appropriation of proprietary design features for purposes of incorporating those specific features, or at least “substantially similar” ones, into a competing product.

Hoffmann is not entitled to summary judgment on Walker’s copyright and reverse palming off/unfair competition claims on the ground that Hoffmann’s conduct was purportedly only de minimis.

C. “Reverse Palming Off”

1. Arguments of the parties

Hoffmann next contends that there is no genuine issue of material fact that it did not engage in “reverse passing off’ or “reverse palming off’ in violation of the Lanham Act or state law. Hoffmann argues that this case does not involve Hoffmann’s purchase of Walker’s goods, removal of Walker’s marks, and reselling of Walker’s goods, nor does it involve Hoffmann’s purchase of Walker’s goods, slight modification of those goods, removal of Walker’s marks, and then reselling of the goods. Hoffmann also argues that this case does not involve Hoffmann’s marketing as its own goods that were actually manufactured, produced, or supplied by Walker. Instead, Hoffmann contends that this case involves alleged copying by Hoffmann of certain components of Walker’s sprayer design, which Hoffmann then manufactured, produced, and supplied as part of the development of the Silver Hawk sprayer. However, Hoffmann contends that these allegations of “copying” do not support a “reverse palming off’ claim. This is so, Hoffmann argues, because courts have recognized that a party has the right to copy unpatented products, or even to incorporate unpatented products or elements of another’s product into its own product, then manufacture its own “new” product. Hoffmann relies primarily on Roho, Inc. v. Marquis, 902 F.2d 356 (5th Cir.1990), in support of this contention.

Walker, however, contends that “reverse palming off’ cases also bar the sort of “copying” at issue here. Relying principally on Pioneer Hi-Bred v. Holden Foundation Seeds, 35 F.3d 1226 (8th Cir.1994), Walker contends that the Lanham Act proscribes selling as one’s own a product that is necessarily derived from the intellectual property of another without acknowledging the proper source of the intellectual property — i.e., taking credit for someone else’s work. Walker contends that there are, at least, genuine issues of material fact that Hoffmann used Walker’s intellectual property in the Silver Hawk sprayer without attribution of the incorporated designs to Walker or RJM.

In reply, Hoffmann contends that the commentator upon whom both parties have relied, John T. Cross, Giving Credit Where Credit Is Due: Revisiting the Doctrine of Reverse Passing Off in Trademark Law, 72 WASH. L. REV. 709 (July 1997), actually opposes reading the Lan-ham Act to proscribe the sort of “copying” upon which Walker’s claim relies. Hoff-mann also contends that the decision in Pioneer Hi-Bred is distinguishable, because it did not involve copying, but instead involved a slight modification and relabeling by the defendant of genetic material acquired from Pioneer. How, exactly, such a distinction works to Hoffmann’s benefit, however, is not clear from Hoff-mann’s brief.

2. Source and nature of the Lanham Act’s prohibition

In Walker II, this court provided the following general discussion of “reverse palming off’ or “reverse passing off’ claims:

The applicable portion of the Lanham Act provides:

(1) Any person who, on or in connection with any goods or services, or any container for goods, 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 fact, or false or misleading representation of fact, which—

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C. § 1125(a) (emphasis added).

False designation of origin falls within the practice known as “reverse passing off’ or “reverse palming off,” described by the Eighth Circuit Court of Appeals in Pioneer Hi-Bred International v. Holden Foundation Seeds, Inc., 35 F.3d 1226 (8th Cir.1994), as follows:

The typical Lanham Act claim involves one of two factual patterns: (1) a defendant’s false advertising of its goods or services; or (2) the selling or “palming off’ by a defendant of its goods by use of a competitor’s name. Lamothe v. Atlantic Recording Corp., 847 F.2d 1403, 1406 (9th Cir.1988). The statute, however, extends beyond these isolated patterns, reaching those situations which are “economically equivalent to palming off.” Smith v. Montoro, 648 F.2d 602, 605 (9th Cir.1981) (internal quotation omitted)....

Reverse palming off is essentially the defendant’s unauthorized removal of plaintiffs product’s identifying marks before reselling the goods. [Footnote omitted.] Montoro, 648 F.2d at 605; Web Printing Controls Co. v. Oxy-Dry Corp., 906 F.2d 1202, 1203 n. 1 (7th Cir.1990). The doctrine includes situations in which a defendant markets another’s product that has been only slightly modified and then relabeled. See Roho, Inc. v. Marquis, 902 F.2d 356, 359 (5th Cir.1990); Arrow United Indus., Inc. v. Hugh Richards, Inc., 678 F.2d 410, 412, 415 (2d Cir.1982).

Pioneer Hi-Bred, 35 F.3d at 1241.

Walker II, 220 F.Supp.2d at 1037 (emphasis in the original); see also Woodke v. Dahm, 873 F.Supp. 179, 189-92 (N.D.Iowa 1995) (discussing various permutations of the prohibition on “palming off’ and “reverse palming off’ under the Lanham Act), aff'd, 70 F.3d 983 (8th Cir.1995).

Thus, while “palming off’ (or “passing off’) involves “A” selling its product under “B’s” name, “reverse palming off’ (or “reverse passing off’) involves “A” selling “B’s” product under “A’s” name. See, e.g., Attia v. Society of New York Hosp., 201 F.3d 50, 59 (2d Cir.1999) (citing Waldman Publ’g Corp. v. Landoll, Inc., 43 F.3d 775, 780 (2d Cir.1994), and Restatement (ThiRd) of Unfair CompetitioN § 5 (1995)), cert. denied, 531 U.S. 843, 121 S.Ct. 109, 148 L.Ed.2d 67 (2000). In order to prove a “false designation of origin” claim premised on “reverse palming off,” the plaintiff must prove (1) that the work, product, or design at issue originated with the plaintiff; (2) that the origin of the work, product, or design was falsely designated by the defendant; (3) that the false designation of origin was likely to cause consumer confusion; and (4) that the plaintiff was harmed by the defendant’s false designation of origin. See Softel, Inc. v. Dragon Medical and Scientific Communications, Inc., 118 F.3d 955, 970 (2d Cir.1997) (citing Lipton v. Nature Co., 71 F.3d 464, 473 (2d Cir.1995), in turn citing Waldman Publ'g, 43 F.3d at 781-85), cert. denied, 523 U.S. 1020, 118 S.Ct. 1300, 140 L.Ed.2d 466 (1998); see also 15 U.S.C. § 1125(a)(1)(A) (statutory prohibition on false designation of origin cast in terms that track these elements).

3. “Copying” as “reverse palming off”

a. Cognizability in light of elements of the claim

The court rejects Hoffmann’s contention that Walker’s claim is not a cognizable claim of “reverse palming off.” First, the court concludes that Walker’s claim of “reverse palming off’ in this case is cognizable under the elements of a “reverse palming off’ claim as defined, for example, in Softel, Lipton, and Walman: Walker alleges (1) that the design for certain components at issue originated with Walker, in the form of drawings of components, clearly marked as proprietary, that RJM provided to Hoffmann so that Hoffmann could fabricate the components for RJM to incorporate into RJM’s own sprayer; (2) that the origin of the design of the components was falsely designated by Hoffmann, in the sense that Hoffmann then used the components in its own sprayer without attribution to Walker or RJM; (3) that the false designation of origin was likely to cause consumer confusion; and (4) that Walker was harmed by Hoffmann’s false designation of origin. See Softel, Inc., 118 F.3d at 970; Lipton, 71 F.3d at 473; Waldman Publ’g, 43 F.3d at 781-85; see also 15 U.S.C. § 1125(a)(1)(A).

Moreover, the court finds that other courts have also recognized “reverse palming off’ claims in circumstances sufficiently similar to those presented here to justify consideration of Walker’s “reverse palming off’ claim. The court will, therefore, survey some of those key cases.

b. Cognizability in light of Pioneer Hi-Bred

The first such case is the one upon which Walker relies, the decision of our own Circuit Court of Appeals in Pioneer Hi-Bred International v. Holden Foundation Seeds, Inc., 35 F.3d 1226 (8th Cir.1994). In Pioneer Hi-Bred, the court explained that “[rjeverse palming off is essentially the defendant’s unauthorized removal of plaintiffs product’s identifying marks before reselling the goods,” and that “[t]he doctrine includes situations in which a defendant markets another’s product that has been only slightly modified and then relabeled.” Pioneer Hi-Bred, 35 F.3d at 1241. The appellate court in Pioneer Hi-Bred then concluded that the district court’s finding that the defendant, Holden, possessed plaintiff Pioneer’s seed corn hybrid, H3H/H43SZ7, in the form of a seed corn hybrid identified as LH38-39-40, was not clearly erroneous. Id. The appellate court also noted certain additional findings by the district court:

The district court found that Holden held out during all relevant times, “and still does now, that LH38 and LH39 were developed solely by Holden by use of L120.” Slip op. at 70 (emphasis in the original). The court cited testimony indicating that Holden marketed LH38 x B73, for example, by displaying it alongside Pioneer’s 3541. According to the court, “[t]he obvious intended message” was that Holden possessed its “own corn as good or better than Pioneeres].” Id.

Pioneer Hi-Bred, 35 F.3d at 1241 n. 46. The appellate court then upheld the district court’s finding of “reverse palming off,” as follows:

Neither [Holden’s] advertising nor its registration under the Plant Variety Protection Act referred to the existence of Pioneer’s genetic material in its pedigree. This misrepresentation as to the origin of LH38-39-40 implicates several concerns protected by the Lanham Act’s prohibition on reverse palming off. For instance, Holden’s claims of independent development denied Pioneer “the advertising value of its name and of the goodwill that otherwise would stem from public knowledge of the true source of the satisfactory product.” Smith [v. Montoro], 648 F.2d [602,] 607 [ (9th Cir. 1981) ]. “The ultimate purchaser is harmed as well by the loss of knowledge of and possible deception regarding the true source of the product or service.” Roho, 902 F.2d at 359. In light of these concerns and on the facts before it, the district court did not err in concluding that Holden violated the Lanham Act by reverse palming off Pioneer’s genetic material as its own.

Pioneer Hi-Bred, 35 F.3d at 1241-42. Similarly, here, Walker contends — and has generated genuine issues of material fact — that Hoffmann misappropriated its design drawings; subsequently developed and attempted to market a sprayer incorporating Walker’s designs, and attempted to patent as its own designs derived from the Walker designs; and did so without referring to the existence of Walker’s designs in the “pedigree” of the Hoffmann sprayer or patent applications. Id. at 1241; see also Softel, Inc., 118 F.3d at 970 (“origination” and “false designation of origin” elements of a “reverse palming off’ claim). Walker also alleges that potential customers are likely to be confused about the “originator” of the designs in question, with the resulting harm to Walker resulting from loss of the advertising value of its name and the goodwill that would stem from public knowledge of the true source of the satisfactory design elements. Id. at 1242; see also Softel, Inc., 118 F.3d at 970 (“consumer confusion” and “harm” elements).

Hoffmann’s attempt to distinguish Pioneer Hi-Bred is both confusing and unpersuasive. First, it is not clear how it benefits Hoffmann that Pioneer Hi-Bred is purportedly distinguishable on the basis that Pioneer Hi-Bred did not involve copying, but instead involved a slight modification and relabeling by the defendant of genetic material acquired from Pioneer. See Defendant Hoffmann’s Reply To Walker Manufacturing’s Resistance To Motion For Partial Summary Judgment at 3. The court believes that the conduct at issue here is analogous to the conduct at issue in Pioneer Hi-Bred, whether or not the conduct is described as “copying.” In both Pioneer Hi-Bred and the present case, the plaintiffs proprietary matter was at least alleged to be the “genesis” for a product ultimately produced by the defendant, without attribution to the plaintiff. If anything, it would be reasonable to find from the record that Hoffmann’s “realization” of Walker’s drawings and the incorporation of the “realized” components into the Hoff-mann sprayer was analogous to the “slight modification and relabeling” of genetic material obtained by the defendant from the plaintiff, and the reselling of the relabeled material as the defendant’s own, which was at issue in Pioneer Hi-Bred.

'Under Pioneer Hi-Bred, therefore, Hoffmann is not entitled to summary judgment on the ground that its conduct does not fall within the Lanham Act’s prohibition on “reverse palming off.” Moreover, the court finds that there are genuine issues of material fact on the elements of such a “reverse palming off’ claim, as defined in Pioneer Hi-Bred, because the extent of the “copying” or “modification and relabeling” of RJM’s designs is hotly disputed. See Walker II, 220 F.Supp.2d at 1038 (“It is readily apparent from the parties’ summary judgment papers that the extent to which Hoffmann used the RJM/Walker designs and specifications in the Hoffmann sprayer is hotly contested.”).

c. Cognizability in light of Waldman Publishing

The court also finds that Waldman Publishing Corp. v. Landoll, Inc., 43 F.3d 775 (2d Cir.1994), supports the viability of Walker’s “reverse palming off’ claim. In Waldman, the court explained what “reverse palming off’ ordinarily means in the context of manufactured products and written works, as follows:

The typical reverse passing off case involves a manufactured product rather than a written work. For example, the defendant, Richards, in Arrow United Industries v. Hugh Richards, Inc., 678 F.2d 410 (2d Cir.1982), used a product (an industrial damper) manufactured by the plaintiff, Arrow, reduced it slightly, affixed its own identifying marks, and represented to a customer that the product was its own. Id. at 412, 415. The court held that this activity constituted “affixing” a “false designation of origin” in violation of the Lanham Act. Id. at 415. The designation was false because Arrow was the true manufacturer of the product, and by affixing its name, Richards misappropriated Arrow’s manufacturing talents. Id.; see also Roho, 902 F.2d at 359 (“[traditional and reverse palming off activities have both been recognized as wrongful because they involve attempts to misappropriate another’s talents”). This was true even though Richards had modified the product slightly. Arrow, 678 F.2d at 415.

Reverse passing off as applied to a written work involves somewhat different concepts. In the context of written works, the Lanham Act may be used to prevent “the misappropriation of credit properly belonging to the original creator” of the work. Restatement § 5, cmt. (c); see also 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright (“Nimmer on Copyright”) § 8.21[E] (1994) (an author may claim violation of section 43(a) if his work is published without his name). In this context, the Lanham Act prohibits not only, as Landoll suggests, the relabeling of a printed work, as by tearing the cover off a book and selling it with a false cover, but also the reproduction of a work with a false representation as to its creator. The misappropriation is of the artistic talent required to create the work, not of the manufacturing talent required for publication.

Waldman Publ’g, 43 F.3d at 780-81.

In Waldman, the court first concluded that the plaintiffs works, even though they were adaptations of classic tales in the public domain, were sufficiently “original” to be protected, because “[t]he selection of which episodes in the classics to include in the books, the redrafting of the text to tailor the books to young readers and the illustrations add more than a quantum of originality to the original works.” Id. at 782. The court next concluded that the books of the alleged copyist were “substantially similar” to the plaintiffs books, so that the copyist’s failure to credit the plaintiff constituted false designation of origin. Id. at 782-83. In reaching this conclusion, the court noted the following:

We find this [substantial similarity] standard is an appropriate one for determining false origin under the Lanham Act. A second work can be said to have the same origin as a first if the second was copied from the first. When the two works are identical, copying can almost always be assumed. When the works are somewhat different, copying can be established as it is in copyright infringement.

Waldman Publ’g, 43 F.3d at 783. The court also accepted the district court’s conclusion that the alleged copyist’s books were copied from the plaintiffs books, and thus had a common origin, because they were “substantially similar.” Id. at 783. For example, the court found that the copyist had “ample access” to the plaintiffs books, because they had been on the market for many years; the principal of the copyist company had distributed the plaintiffs books before he created his own, allegedly copied, books; the alleged copies were similar in structure, text, and illustration to the plaintiffs books; and the similarities between the books extended beyond the underlying story, which was in the public domain, to selection of episodes, scenes to illustrate, and what chapter headings to use. Therefore, “absent a showing of independent creation, the inference is that Landoll falsely designated the origin of its books by indicating its own authors as the source of the adaptations.” Id. Carrying the analysis beyond the point at which the district court stopped, the appellate court considered that “[fjalse designation of origin, as applied to written work, deals with false designation of the creator of the work; the ‘origin’ of the work is its author.” Id. However, the district court had not determined who the author or authors of the plaintiffs books were, and hence, had not determined who should be credited on the copyist’s books. Id. The issue on this prong of the analysis in Waldman, therefore, was whether or not the plaintiffs works were created as “works for hire,” which would have made the plaintiff, rather than the individual authors working for the plaintiff, the source of the works. Id. at 783-84.

As to the “likelihood of consumer confusion” element of a “reverse palming off’ claim based on “copying,” the court in Waldman determined that “a likelihood of consumer confusion” could be shown by demonstrating that consumers will be led to believe falsely that the defendant, not the plaintiff, was the source of the works, where the purported copies are “substantially similar” to the plaintiffs works; the court rejected the Ninth Circuit standard, which required “bodily appropriation” of the originals to establish consumer confusion, as an unnecessary bright-line rule. Id. (rejecting, for example, Cleary v. News Corp., 30 F.3d 1255, 1261 (9th Cir.1994), and Shaw v. Lindheim, 919 F.2d 1353, 1364 (9th Cir.1990)).

Finally, as to the element of “harm” to the plaintiff, the court in Waldman — like the Eighth Circuit Court of Appeals in Pioneer Hi-Bred, as mentioned above— identified the harm from reverse palming off as depriving the originator of the misidentified product of the advertising value of its name and of the goodwill that otherwise would stem from public knowledge of the true source of the satisfactory product, citing Smith v. Montoro, 648 F.2d 602, 607 (9th Cir.1981), and the resulting “diversion of trade” from the party seeking relief, citing Restatement of UnfaiR Competition § 5, cmt. (c). Waldman Publ’g, 43 F.3d at 785. However, the court rejected the district court’s finding that harm should be based on sales made by the defendant, which would have been made by the plaintiff, if the defendant’s alternative had not been available. Id. Rather, the court concluded that the proper “harm” to consider in a “reverse palming off’ case is the harm arising from the false designation of origin, not whether there was harm from sales of the alternative, because the defendant ultimately could not be prohibited from selling its alternative, only from doing so with a false representation as to the source of its alternative. Id.

This case, admittedly, falls somewhere between reverse palming off of a manufactured product, in the form of slightly modifying the product of another, then relabeling and reselling it as one’s own, and copying a written work, then publishing