Dutch Jackson IATG, LLC v. Basketball Marketing Co., 2012 WL
124579 (E.D. Mo.)
Plaintiffs sued ESPN and others for unauthorized use of
plaintiffs’ musical work, “I Am the Greatest.”
They alleged that the work was used on a basketball DVD, “AND1® Mixtape®
X,” released in 2008, though the song hadn’t been published at that time.
As you’d expect, defendants argued that Dastar barred the Lanham Act claim.
The court agreed; there was neither physical repackaging nor false
advertising pled to allow the plaintiff to escape Dastar’s reach. Using an
exact copy is not repackaging—which some courts haven’t understood in the
context of internet uses—because the “goods,” here the DVDs, were “undisputedly
created and manufactured by defendants. Plaintiffs’ song, whether an exact copy
or not, is not a distinct tangible good in this instance, but rather an ‘idea,
concept, or communication embodied in [defendants'] goods.’”
There was no false advertising because defendants didn’t
mention the origin of the song in advertising or packaging. Plaintiffs argued that this was an implicit
misrepresentation that the song was defendants’ original work. This was an “impermissible workaround” of Dastar, which ruled that there could be
no Lanham Act liability based on Dastar’s (truthful) statement that it was the
producer of the video it sold. This conclusion
applied both to §43(a)(1)(A) and §43(a)(1)(B).
Allowing a Lanham Act claim to proceed under either head of liability
would “impose an affirmative duty on defendants, thereby creating the ‘species
of perpetual patent and copyright’ rejected in Dastar.”
Likewise, plaintiffs’ claims for waste under Missouri common
law, tortious interference with future business relationships, and civil
conspiracy were preempted by §301 of the Copyright Act. So was “tortious interference with the right
of publicity,” a new one on me, based on failure to credit the true songwriter.
Plaintiffs also alleged a violation of the Missouri
Merchandising Practices Act. Defendants
argued that plaintiffs lacked Article III standing, continuing the annoying trend
of stuffing every objection to the substance of a claim into a constitutional
standing argument. The MMPA allows a
civil action by “[a]ny person who purchases or leases merchandise primarily for
personal, family or household purposes and thereby suffers an ascertainable
loss of money or property, real or personal, as a result of the use or
employment by another person of a method, act or practice declared unlawful.” This isn’t an Article III standing problem—plaintiffs
plainly have an alleged injury to themselves to complain about—it’s that this
particular statute doesn’t provide a remedy for
them. The court concluded that they
lacked standing under the MMPA, which at least didn’t endorse the idea that
there was some kind of constitutional problem here.
Defendants also won dismissal of claims for statutory
damages and attorneys’ fees, since the work at issue was registered in 2010,
long after the DVD came out, leaving only claims for actual damages from
copyright infringement. As anyone could
have predicted. Query whether a
defendant who receives a complaint like this is likely to offer a lower
settlement amount than a complaint simply alleging copyright infringement,
since the complaint indicates an unwillingness to engage with copyright law.
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