Dastar bars implicit misrepresentation theory

Dutch Jackson IATG, LLC v. Basketball Marketing Co., 846 F. Supp. 2d 1044 (E.D. Mo. 2012)

Plaintiffs bring multiple causes of action in the hopes that one will slip through; often enough this just creates extra work for courts.  Here, plaintiffs sought damages and an injunction against defendants’ unauthorized use of a musical work, “I am the Greatest,” allegedly used by defendants as part of the sound track to a basketball DVD, AND1 Mixtape X.  The song was allegedly written and performed by Michael “Dutch” Jackson in 2006, but not published prior to the release of the DVD in 2008.  The song was registered in 2010.  Defendants moved to dismiss the non-copyright and statutory damages/attorneys’ fees claims.

On the Lanham Act, defendants argued that Dastar bars the claim for false designation of origin/ownership of the work.  Dastar means that “incorporating a creative work of another into a product without crediting the creator does not give rise to a claim under the Lanham Act.”  (Left unresolved: what happens when the creator alleges secondary meaning?)  Plaintiffs argued that their situation fell into Dastar’s hypotheticals of (1) defendant buying plaintiff’s videotapes and repackaging them as its own, and (2) a producer of a copied video giving purchasers the impression that the video was quite different from the copied series, constituting false advertising.  Neither of these two examples were implicated by the complaint.  The goods at issue, the DVDs, were “undisputedly created and manufactured by defendants.”  Even an exact copy of the song isn’t a distinct tangible good, but rather a communication embodied in the goods. 

Nor was there false advertising: defendants didn’t mention the origin of the song or reference its origin in advertising or packaging.  Plaintiffs argued that this very omission implicitly represented that the song was defendants’ original work.  Mark McKenna might like this: “The plaintiffs' novel misrepresentation-by-implication theory is an impermissible work-around of the holding in  Dastar.”  Dastar says that no Lanham Act liability attaches when a defendant merely truthfully says that it made a video.  That’s true for §43(a)(1)(A) and (B).  Allowing such a claim would impermissibly impose an affirmative duty on defendants.

Next, defendants argued that the state law claims were preempted.  What we’re looking for here is any extra element that would allow the claim to escape preemption.  First, waste: even if state law did recognize a claim allowing recovery for diminution of value to intangible property, instead of real or personal property, it would be preempted as qualitatively equivalent to infringement.

Tortious interference with business expectancy: this claim isn’t preempted when based on allegations that the defendant induced a third party to breach a contract with the plaintiff, but it is preempted when based on the creation of allegedly infringing material.  Awareness and intent aren’t extra elements for these purposes.  Since the claim was based solely on defendants’ copying and sale of plaintiffs’ song, it was also preempted.

Missouri Merchandising Practices Act: Standing requires injury, which under the MMPA has to come by way of a loss to a person who buys (or leases) merchandise primarily for personal, family or household purposes.  Plaintiffs weren’t alleging injury to themselves as a result of purchase, nor did they allege an injury the law was intended to address; they also failed to allege facts sufficient to assert rights held by third-party DVD purchasers.  No claim.

Civil conspiracy: Plaintiffs allege that defendants conspired to use plaintiffs' song to their commercial advantage.  Absent conspiracy to commit an underlying tort or wrong other than copyright infringement, this is preempted; copyright already recognizes contributory and vicarious infringement.

Tortious interference with right of publicity: the idea here was that failure to attribute the song to Jackson interfered with his expected right to publicity and goodwill, a species of tortious interference with business expectancy.  But that’s preempted.  And because defendants didn’t use plaintiffs’ names in connection with the DVD, there was no claim for “interference with publicity.”

Statutory damages/attorneys’ fees: Plaintiffs argued that the infringement continued after their registration, so they were entitled to statutory damages and possible fees.  Not so!  For §412, infringement commences when the first act of infringement in an ongoing series occurs.  Plaintiffs can’t get around that by limiting their claims to post-registration infringement.