Kings of passing off?

Wilchcombe v. Teevee Toons, Inc., 2006 WL 1553939 (N.D. Ga.)

Plaintiff sued defendants for copyright infringement, false advertising under the Lanham Act, and breach of fiduciary duty, alleging that they unlawfully used the musical work and sound recording of the song “Tha Weedman” on the album Kings of Crunk by Lil Jon and the Eastside Boyz.

The court dismissed the fiduciary duty claims because plaintiff didn’t allege any actual fiduciary or confidential relationship in his complaint. The copyright claims survived despite plaintiff’s initial claims in his cease-and-desist letters that he was a coauthor with Lil John. Rather than treating the letters as an admission at this stage of the case, the court allowed plaintiff’s claims to proceed. (Side note: plaintiff claims to be sole author, with no intent to be a joint author with Lil John. He is trying to make the rigid and possibly unfair rule about joint authorship – without the primary author’s intent to create a joint work, a contributor isn’t an author no matter how substantial her contribution – work for him, so that Lil John could have played a big role in creating the work and still lack any copyright interest in it. This shows one of the serious problems with intent-based joint authorship doctrine: How do we pick the primary author whose intent controls in the first place?)

It may be that the plaintiff didn’t understand the legal implications of coauthorship: He’d just be entitled to a share of whatever profits there were and wouldn’t be able to prevent his coauthor from licensing the work, even for a nominal sum. This could present special problems of allocation in the context of one song on an album; the recording contract probably didn’t say much of relevance about individual songs, and “Tha Weedman” was not a successful single.

Defendants moved to dismiss plaintiff’s false advertising claim as barred by Dastar. Plaintiff’s basic allegation is that, by claiming defendants as the sole authors and performers, defendants misrepresented “the nature, characteristics, qualities, or geographic origin” of their goods. The court said that this was not necessarily the same as a “passing off” claim barred by Dastar and refused to dismiss the claim. Most publicly available post-Dastar decisions have not allowed these types of claims to proceed, but the ability to plead around Dastar was always there and perhaps plaintiffs are finally learning to do so.

Several issues: Is putting Sammie Norris and Lil John’s names on the credit line for the song “commercial advertising or promotion,” as required for false advertising? This is a narrower standard than mere “use in commerce,” which will suffice for traditional passing off. I would think it would at least matter whether the credit is given on the inside of the jewel box, where it can only be seen post-purchase, or on the outside. No authorship credit for individual songs is available on internet sites like Amazon, so there’s no advertising or promotion there. However, plaintiff did allege that defendants advertised Sammie Norris and Lil John as the authors of the song, and Lil John and the Eastside Boyz as the performers of the song, in promotional material and advertising, as well as in materials distributed with the album.

Even if plaintiff alleged materiality and deception, can he possibly prove that a reasonable consumer would care that a composer/performer was omitted from the credits? The question is not whether consumers would have refused to buy the CD if they knew that Lil John was misrepresenting his authorship of one song (the Milli Vanilli problem), but whether they would have still bought the CD if they knew that plaintiff was the author. The fact that Amazon and similar sites don’t even bother to ID songwriters or individual performers may also be relevant evidence of nonmateriality. Given how many albums are sold by groups in all genres that do not do their own songwriting and do not perform all the instruments, I find it difficult to imagine plaintiff defeating a motion for summary judgment.