It's Dastar day: another overreaching plaintiff gets mostly kicked out of court

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.