Misrepresentation Claim over Song in DVD Is Dismissed

Judge Jackson then found: “The defendants did not mention the origin of plaintiffs' song or reference the origin of song in the advertising or on the packaging of defendants' video. Plaintiffs argue that, by failing to do so, the defendants implicitly represented that the song was defendants' original work and thereby misrepresented the nature and characteristics, i.e., the originality, of plaintiffs' song and the content of defendants' video. The plaintiffs' novel misrepresentation-by-implication theory is an impermissible workaround of the holding in Dastar. The [Supreme] Court ruled that 'no Lanham Act liability attaches to [defendant]' for merely saying that it was the producer of the video.”

The Dutch Jackson plaintiffs had also alleged a claim of waste under Missouri law. But the district court emphasized that the “plaintiff has not cited ' and the Court is unaware of ' any case under Missouri law allowing recovery for diminution of value to intangible property. Even if such a claim were to exist, the Court finds it to be preempted by the Copyright Act as qualitatively equivalent to plaintiffs' [copyright] infringement claims.”

The U.S. District Court for the Eastern District of Missouri dismissed an unusual “misrepresentation-by-implication” claim brought under the Lanham Act. Dutch Jackson IATG LLC v. The Basketball Marketing Co., 4:11-CV-227. In the case, the plaintiffs' composition “I Am the Greatest” had been included in the defendants' DVD AND1' Mixtape' X.

In Dastar Corp. v. Twentieth Century Fox Film Corp. , 539 U.S. 23 (2003), the U.S. Supreme Court held ' in a Lanham Act case alleging false designation of origin for failure to credit a plaintiff in a product ' that “the phrase 'origin of goods' in the Lanham Act ' refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.”

In Dutch Jackson, District Judge Carol E. Jackson first noted: “This is not an instance of defendants repackaging a 'good' made by plaintiffs as their own because the 'goods' at issue ' defendants' mixtape 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.'”

Judge Jackson then found: “The defendants did not mention the origin of plaintiffs' song or reference the origin of song in the advertising or on the packaging of defendants' video. Plaintiffs argue that, by failing to do so, the defendants implicitly represented that the song was defendants' original work and thereby misrepresented the nature and characteristics, i.e., the originality, of plaintiffs' song and the content of defendants' video. The plaintiffs' novel misrepresentation-by-implication theory is an impermissible workaround of the holding in Dastar. The [Supreme] Court ruled that 'no Lanham Act liability attaches to [defendant]' for merely saying that it was the producer of the video.”

The Dutch Jackson plaintiffs had also alleged a claim of waste under Missouri law. But the district court emphasized that the “plaintiff has not cited ' and the Court is unaware of ' any case under Missouri law allowing recovery for diminution of value to intangible property. Even if such a claim were to exist, the Court finds it to be preempted by the Copyright Act as qualitatively equivalent to plaintiffs' [copyright] infringement claims.”