A federal judge from the Eastern District of Missouri has dismissed the lawsuit of a rapper, who alleged that ESPN Enterprises Inc., ESPN Home Media, ESPN Inc., and The Basketball Marketing Company profited from the unauthorized use of his copyrighted musical work titled “I am the Greatest.”
In his complaint, plaintiff Michael “Dutch” Jackson alleged that the defendants used his song as part of the sound track to a basketball DVD, produced and sold by the defendants, titled “AND1® Mixtape® X.” Jackson claimed that the song was originally written and performed in November 2006, and that the defendants improperly obtained a copy of the song, which had not been published prior to the release of the defendants’ video in 2008.
Jackson ultimately registered the song with the United States Copyright Office on May 10, 2010. He sued in February of 2011, alleging violations of the Copyright Act, Lanham Act, and various state laws.
In its analysis of the federal claims, the court looked first at the Lanham Act Claim.
“Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), creates a federal remedy against the use in commerce of ‘a false designation of origin, or any false description or representation’ in connection with ‘any goods or services.’”
The plaintiff relied heavily on Dastar Corp v. Twentieth Century Fox Film Corp., 539 U.S. 23, 30-37, 123 S. Ct. 2041, 156 L. Ed. 2d 18 (2003) for his arguments.
But the court was unmoved by the plaintiff’s first argument “that the defendants used an exact copy of (his) song on the soundtrack to their video, and thus, merely repackaged (his) song as their own… . This is not an instance of the defendants repackaging a ‘good’ made by (the plaintiff) as their own because the ‘goods’ at issue—the defendants’ mixtape DVDs—were undisputedly created and manufactured by the defendants. The 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.’”
The plaintiff’s second argument – that the defendants “implicitly represented that the song was the defendants’ original work and thereby misrepresented the nature and characteristics, i.e. the originality, of the plaintiff’s song and the content of the defendants’ video” – failed as well. “The plaintiff’s novel misrepresentation-by-implication theory is an impermissible workaround of the holding in Dastar. The Court ruled that ‘no Lanham Act liability attaches to the defendant’ for merely saying that it was the producer of the video. Dastar, 539 U.S. at 38. This statement holds true whether (the plaintiff brings his claim) under the ‘confusion … as to the origin’ provision of § 43(a)(1)(A) or the ‘misrepresents the nature, characteristics or qualities’ provision of § 43(a)(1)(B). Because in either instance, allowing the plaintiff’s Lanham Act claim to proceed would impose an affirmative duty on defendants, thereby creating the ‘species of perpetual patent and copyright’ rejected in Dastar. 539 U.S. 23, 123 S. Ct. 2041, 156 L. Ed. 2d 18.
“The plaintiff’s Lanham Act claim is indistinguishable from the claim that failed in Dastar. Id. As such, Count IV of the complaint fails to state a claim and will be dismissed.”
Dutch Jackson IATG, LLC, et al. v. The Basketball Marketing Company, et al., , E.D. Mo.; No. 4:11-CV-227 (CEJ), 2012 U.S. Dist. LEXIS 4959; 1/17/12
Attorneys of Record: (for plaintiff) Charles S. Kramer, Riezman Berger, P.C., Clayton, MO. (for defendant Basketball Marketing Company, doing business as AND1, ESPN Inc., ESPN Enterprises, Inc., ESPN Home Media) James F. Bennett, Robert F. Epperson, Jr., Lead Attorneys, Dowd Bennett, LLP, Clayton, MO. (for defendant Amazon.com) B. Scott Eidson, Jennifer E. Hoekel, Lead Attorneys, Armstrong Teasdale, LLP, St. Louis, MO. (for defendant Hastings Entertainment, Inc., also known as goHastings.com) Jordan T. Ault, Lead Attorney, Husch Blackwell, LLP, St. Louis, MO.
