Summary
dismissing a reverse-passing-off claim against the defendant for failing to attribute credit to the plaintiff for creating a portion of a song
Summary of this case from Larkin Group, Inc. v. Aquatic Design Consultants, Inc.Opinion
CIVIL ACTION NO. 02-12148-GAO
September 12, 2003
MEMORANDUM AND ORDER
In this action, the plaintiffs, Boston International Music, Inc. ("Boston International") and Michael Johnson ("Johnson"), allege that the defendants copied a distinctive part of the plaintiffs' musical composition, used that part in another song, and released the song to the public without plaintiffs' permission and without attributing any credit to plaintiffs. Count I of the complaint alleges a cause of action for copyright infringement against all defendants, and Count II of the complaint alleges a cause of action for false designation of origin in violation of § 43(a) of the Lanham Act against defendants Dallas Austin ("Austin"), Gary White ("White"), Samuel L. Bush ("Sammie"), Freeworld Entertainment LLC ("Freeworld"), and Capitol Records, Inc. ("Capitol"). The defendants have moved, pursuant to Fed.R.Civ.P. 12(b)(6), to dismiss certain claims asserted in the complaint. In their complaint, the plaintiffs allege that Johnson co-authored a musical composition entitled "Pack Jam (look out for the OVC)" (the "Composition") and Boston International subsequently registered a United States copyright in the Composition. The plaintiffs also allege that Johnson's music group, the Jonzun Crew, made a sound recording of the Composition (the "Sound Recording"), that a non-party to the litigation, Tommy Boy Music, Inc. ("Tommy Boy") registered a copyright in the Sound Recording, and that Tommy Boy subsequently "assigned its rights to enforce its copyrights [in the Sound Recording] to the Plaintiffs." (Compl. ¶ 12). The plaintiffs claim that they are the beneficial owners of the copyright in the Sound Recording, but concede that specific facts regarding this beneficial interest are not currently set forth in the complaint.
The motion to dismiss was filed on behalf of all of the defendants except defendant Samuel L. Bush.
In support of their claims, the plaintiffs allege that defendants Austin, White and DARP, Inc. ("DARP") copied, without permission, distinctive portions of the Composition or lifted a sample from the Sound Recording into a song written by defendants Austin and White entitled "I Like It." Austin and DARP produced "I Like It" and the song was released under defendant Sammie's name by Freeworld and Capitol, without identifying Johnson as an author or contributor to "I Like It." Defendants EMI-Blackwood Music, Inc., Cyptron Music, Inc., and Soundtron Tunes, Inc. allegedly licensed the copying and public performance of "I Like It."
The defendants move to dismiss so much of Count I as alleges infringement of the copyright in the Sound Recording. The defendants contend that the plaintiffs lack standing to bring this copyright infringement claim because they do not allege that they are either the owners or the exclusive licensees of the copyright in the Sound Recording. In addition, the defendants move to dismiss Count II in its entirety as duplicative of Count I because it fails to allege an "extra element" which makes it qualitatively different from Count I (Mem. Supp. Mot. Dismiss at 6-7).
After consideration of the papers submitted, oral argument, and upon further review of the United States Supreme Court's recent decision inDastar Corp. v. Twentieth Century Fox Film Corp., ___ U.S. ___, 123 S.Ct. 2041 (2003), I conclude that the plaintiffs should be granted leave to amend the complaint to allege facts which may demonstrate that they have standing to assert their claim of copyright infringement of the Sound Recording in Count I. However, Count II of the complaint must be dismissed because the plaintiffs' claims are sufficiently covered by the law of copyright, and I decline to construe § 43(a) of the Lanham Act to require attribution to plaintiff Johnson for "I Like It," where the defendants here are the "origin" of the product they recorded, produced, and sold on their own, and there is therefore no false designation of origin within the meaning of the Lanham Act. See Dastar, 123 S.Ct. at 2050 (finding that the phrase "origin of goods," as used in § 43(a) of 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.").
Accordingly, the defendants' motion to dismiss is GRANTED with leave to amend as to Count I of the complaint, and is GRANTED as to Count II. Plaintiffs have twenty-one days from the date of entry of this Order to file an amended complaint, and defendants shall have twenty-one days to respond to the plaintiffs' amended complaint.
It is SO ORDERED.