Dastar-barred claims can't be repled as false advertising claims

Friedman v. Zimmer, No. 15-502 (C.D. Cal. Jul. 10, 2015)

 

Richard Friedman sued Hans Zimmer and others, alleging that the score to 12 Years a Slave infringed his copyright to a composition, To Our Fallen.  Friedman also alleged violation of the Lanham Act through misrepresentation of the score’s authorship in advertising and promotion.  He further asserted claims for violation of his moral rights under the German Copyright Statute of 1965, which provides that an “author shall have the right of recognition of his authorship of the work,” and under the French Code of Intellectual Property of 1992, which provides “the right of respect for the name of the author.”

 

The court first rejected defendants’ argument that the complaint wasn’t specific enough about who did what in terms of copyright infringement, alleging that they all “produced and distributed” the Film “in the United States and throughout the world,” even though the Copyright Act does not apply extraterritorially and even though some of the defendants might not have made reproductions of or distributed the score. “Before discovery, Plaintiff has no reasonable means of determining the roles that the Moving Defendants played in producing and distributing the Film.”  If some of the defendants lacked a role in reproducing/distributing the score, they could put that in their answers and the issue could be resolved on summary judgment.

 

The Lanham Act claim, however, failed.  Friedman alleged that defendants falsely advertised the film as featuring “Music by Hans Zimmer.” This claim would plainly be Dastar-barred had it been brought under §43(a)(1)(A), and you can’t get around that bar, which is based on concern for avoiding a perpetual copyright/patent, by pleading a violation of §43(a)(1)(B) instead but based on the same operative facts.

 

Yes, the Supreme Court mentioned §43(a)(1)(B) in dicta, hypothesizing that a producer who gave consumers “the impression that the video was quite different from [the other] series” might be guilty of false advertising.  But that just means that a misrepresentation that led consumers “to believe they were buying one product when they were really buying another” could be actionable. “[G]iven the Court’s concerns about creating overlap between the Lanham Act and other intellectual property regimes, it would have made little sense for the Supreme Court to reject the Dastar plaintiff’s claim under 15 U.S.C. § 1125(a)(1)(A) but permit the same sort of claim to be asserted under a different prong of the same statute.”

 

The Ninth Circuit already reasoned this way in Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008), which held that alleged misrepresentations about the licensing status of karaoke songs didn’t implicate the “nature, characteristics, or qualities” of the products, which would have to be “characteristics of the good itself, such as the original song and artist of the karaoke recording, and the quality of its audio and visual effects.”  Friedman argued that Sybersound’s reference to the “artist” made his claim viable, but that wouldn’t avoid the Lanham/Copyright Act overlap.  The court elaborated: Sybersound’s discussion

 

means only that a seller cannot falsely advertise a recording as being performed by one artist when it is really performed by another.  For instance, a seller cannot advertise a CD as containing “All Along the Watchtower” sung by Jimi Hendrix when it actually contains a recording of Bob Dylan singing the same song.  That would give consumers the impression that the CD they were buying was “quite different” from what it actually was, which would be a misrepresentation of the nature, characteristics, or qualities of the good.  Those are not the facts alleged here. 

 

Query: Suppose Friedman really did write the full score and the CD says Zimmer did.  Nonetheless, the score itself is the same—it’s just the attribution that’s wrong.  But if the performer is different, the court seems to be saying, the performance is different too, and therefore the proper subject of a false advertising claim.  But what if this had been a Milli Vanilli type lawsuit, where some performer alleged that he was the stunt double voice for the performer whose name is on the record?  I think this court would have wanted to kick that claim out too.  Is it because the performance would be no different, it’s just got the wrong name on it?  Is it because of materiality?

 

Friedman argued that the Ninth Circuit approved a similar claim in Photomedex, Inc. v. Irwin, 601 F.3d 919 (9th Cir. 2010), in which the plaintiff alleged that the defendants violated the Lanham Act and California unfair competition laws by representing that one of the defendants invented a medical device when he had not.   The Ninth Circuit found that the defendant was not the sole inventor, and thus held that the claim might have been misleading. However, the Dastar issue wasn’t raised either at the district court or on appeal, which explains why the court didn’t cite or discuss Dastar or Sybersound—the court was only asked about misleadingness and didn’t assess “whether [the] statement, misleading or not, related to a nature, characteristic, or quality of a good.”  To the extent that Photomedex allowed a Dastar claim under §43(a)(1)(B), it was inconsistent with Dastar and Sybersound and not controlling.

The court also dismissed claims relating to moral rights under German and French law.  Friedman might be able to assert those rights with respect to infringing conduct that occurred in France or Germany, but US courts aren’t compelled to entertain such claims.  The court here wasn’t going to do so given the fact that moral rights had “no clear parallel” in US law. There is also authority for declining jurisdiction.  “American courts should be reluctant to enter the bramble bush of ascertaining and applying foreign law without an urgent reason to do so”:

 

Enforcing foreign laws that are materially different from U.S. laws raises public policy and separation of powers concerns.  These concerns are particularly salient in the context of moral rights.  When Congress enacted the Berne Convention Implementation Act of 1988, it had the opportunity to broadly grant authors the same moral rights that they would enjoy in any other nation in accordance with the terms of the treaty. But faced with “an avalanche of opposition to moral rights” from even “the bill’s most vociferous advocates,” Congress expressly declined to enact that aspect of the treaty.    We think it prudent to decline to exercise supplemental jurisdiction where Plaintiff seeks to enforce rights that Congress has clearly and deliberately decided not to provide under U.S. law.

 

Also, judicial economy favored declining supplemental jurisdiction, since a US court would have to consume far more resources figuring out moral rights law than French or German courts, familiar with those rights, would.  Also, “the significant risk of jury confusion in a trial involving both domestic and foreign law copyright claims may require us to conduct a separate trial for Plaintiff’s moral rights claims.”  So the court kicked them out instead.