Opinion
Civil Action File No. 1:01-CV-3026-TWT.
December 29, 2004
ORDER
This is an action for copyright infringement and breach of contract. It is before the Court on the Defendants' Supplemental Motion for Partial Summary Judgment [Doc. 111]. For the reasons set forth below, the Court GRANTS the Defendants' motion.
I. BACKGROUND
Plaintiff Hustlers, Inc. ("Hustlers") is a Georgia corporation engaged in the music industry as a music publisher. Hustlers acquires and then licenses copyrights on musical compositions. Defendant Justice Writers Publishing, Inc. ("Justice Writers") is a Florida corporation also engaged in the music industry as a music publisher. Justice Writers was formed by Defendant Hugh Thomasson and his wife, Mary Thomasson, in March of 1999. Thomasson is a songwriter and recording artist. He was the principal songwriter for The Outlaws, and is the author or co-author of dozens of songs recorded and released by the group since 1968. In 1996, Thomasson joined the Lynyrd Skynyrd band as a guitarist and vocalist. He has authored or coauthored numerous songs for the band since 1997.
The relationship between Hustlers and Thomasson began in 1974 when they executed the first in a series of music publishing agreements. Through additional written agreements, the relationship between Hustlers and Thomasson continued through June 1999. Pursuant to those agreements, Thomasson conveyed to Hustlers the rights (including copyrights) to all songs he authored or co-authored during the contractual period. In March 1999, more than two months before his agreement with Hustlers expired, Thomasson sent a letter to Sanctuary, a record company which licensed some of Thomasson's songs. The letter notified Sanctuary that Thomasson's publishing company had been changed to Justice Writers. The letter further provided that the change was to become effective immediately, beginning with Thomasson's current project and including all future projects. Hustlers contends that Thomasson's actions led Sanctuary to list Justice Writers as the publisher for songs when Hustlers actually owned the copyrights. Therefore, Hustlers alleges that the Defendants are liable under section 43 of the Lanham Act, 15 U.S.C. § 1125(a), for falsely designating the origin of copyright ownership of those songs.
In April 2003, the Defendants moved for summary judgment on the Lanham Act claim based on lack of evidence of likelihood of confusion. On March 12, 2004, the Court denied summary judgment on this claim. On June 2, 2003, subsequent to the deadlines for filing summary judgment motions in this case, the United States Supreme Court issued its decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). In Dastar, the Supreme Court addressed the scope of liability for claims of false designation of origin under the Lanham Act. The Defendants requested, and the Court granted, leave to file a supplemental motion for partial summary judgment based upon the change in the law.
II. SUMMARY JUDGMENT STANDARD
Summary judgment is appropriate only when the pleadings, depositions, and affidavits submitted by the parties show that no genuine issue of material fact exists and that the movant is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). The court should view the evidence and any inferences that may be drawn in the light most favorable to the nonmovant. Adickes v. S.H. Kress Co., 398 U.S. 144, 158-59 (1970). The party seeking summary judgment must first identify grounds that show the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). The burden then shifts to the nonmovant, who must go beyond the pleadings and present affirmative evidence to show that a genuine issue of material fact does exist. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 257 (1986).
III. DISCUSSION
In its Complaint, Hustlers claims that the Defendants incorrectly attributed the ownership of the copyrights for certain songs, in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). In light of the Supreme Court's decision inDastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), the Defendants argue that the claim fails because Hustlers is not the "origin of goods" for purposes of Lanham Act liability. Two types of activities are prohibited by section 43(a) of the Lanham Act: (1) false advertising and "palming off" when the defendant misrepresents its product as coming from the plaintiff, Del Monte Fresh Produce Co. v. Dole Food Co., Inc., 136 F. Supp. 2d 1271, 1284 (S.D. Fla. 2001); and (2) "reverse palming off" when the defendant misrepresents the plaintiff's product as its own, Dastar, 539 U.S. at 27 n. 1; Montgomery v. Noga, 168 F.3d 1282, 1298 n. 26 (11th Cir. 1999). In order to establish a claim of reverse palming off, a plaintiff must prove: (1) that the goods at issue originated with the plaintiff; (2) that the origin of the product was falsely designated by the defendant; (3) that the false designation of origin was likely to cause consumer confusion; and (4) that the plaintiff was harmed by the defendant's false designation of origin. Del Monte Fresh Produce Co., 136 F. Supp. 2d at 1289-90; see also Societe Des Hotels Meridien v. LaSalle Hotel Operating Partnership, L.P., 380 F.3d 126, 131 (2nd Cir. 2004).
Section 43(a) creates a federal remedy against a person who employs "a false designation of origin, or any false description or representation" in connection with "any goods or services." 15 U.S.C. § 1125(a); Dastar, 539 U.S. at 29. However, the Lanham Act "does not have boundless application as a remedy for unfair trade practices." Id. (quoting Alfred Dunhill Ltd. v. Interstate Cigar Co., Inc., 499 F.2d 232, 237 (2nd Cir. 1974)). Therefore, in defining the protection of the Lanham Act inDastar, the Supreme Court strictly construed the terms "origin" and "goods." Referring to dictionary definitions, the Court stated that "origin" refers to "that from which anything primarily proceeds; source," and "goods" are "wares; merchandise." Id. at 31. Thus, the Court held that "origin of goods" refers only 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." Id. at 37. Accordingly, a false designation of origin claim will only be viable if a defendant obtains the plaintiff's products and merely repackages them as its own. Id. at 31. Only then would the plaintiff be the actual producer of the physical products at issue.
Although Dastar addressed a false designation of origin claim in the context of a previously copyrighted work that had entered the public domain, the Court gave no indication that its holding would be affected by the presence of a viable copyright. See Dastar, 539 U.S. at 37-38. Thus, the Court's interpretation of "origin" does not depend on the copyright status of the plaintiff's creative material. See Williams v. UMG Recordings, Inc., 281 F. Supp. 2d 1177, 1185 (C.D. Cal. 2003); 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 27:77.1 (4th ed.).
Hustlers's false designation of origin claim is not based on an allegation that the Defendants repackaged a physical album produced by Hustlers and then passed it off as their own product. Rather, the claim is based solely on the allegation that the ownership of the copyrights to certain musical compositions was incorrectly attributed to Justice Writers. Thus, the alleged misrepresentations concern the copyrights, intangible property interests, and not any tangible product. A copyright is not a "good," as defined in Dastar. Cf. digiGAN, Inc. v. iValidate, Inc., No. 02 Civ. 420(RCC), 2004 WL 203010, *5 (S.D.N.Y. Feb. 3, 2004) (patent not a "good or service" for purposes of Lanham Act). Thus, Hustlers's false designation of origin claim fails as a matter of law, and summary judgment for the Defendants is warranted.
Furthermore, Hustlers is not the "origin" of any good or service in this case. "Origin" refers only to the producer or manufacturer of a physical product, not the originator of the ideas or communications that a good embodies or contains.Dastar, 539 U.S. at 32. The creator is protected by the laws of copyright and patent rather than the Lanham Act. Id. at 33-34. Hustlers concedes that Thomasson, as the author of the works, would be unable to state a claim for false designation of origin under Dastar. (Pl.'s Resp. to Defs.' Supplemental Mot. for Summ. J., at 6.) However, Hustlers argues that a publisher differs from the originator of ideas or communications. According to Hustlers, the publisher has "the right and obligation to publish and market such works to the public and offer them for sale," and it is, therefore, the origin of the musical compositions. (Id. at 7.) However, the right to publish a work indicates nothing more than that the publisher owns the copyright. Thus, there is no distinction between the publisher as the copyright holder and the author as the copyright holder. Neither has produced nor manufactured a physical product to be sold to consumers. By acquiring the copyright interests from the creator, the publisher is simply one step removed from the actual creation of the ideas or communications. Merely failing to attribute copyright ownership to the proper party is not actionable under the Lanham Act. Cf. Boston Intern. Music, Inc. v. Austin, No. Civ.A. 02-12148-GAO, 2003 WL 22119228, *2 (D. Mass. Sept. 12, 2003) (author of copyrighted song is not origin of product and not entitled to Lanham Act protection); Williams v. UMG Recordings, Inc., 281 F. Supp. 2d 1177, 1183-85 (C.D. Cal. 2003) (failure to credit writer/director of motion picture not actionable under Lanham Act). Thus, summary judgment for the Defendants is proper.
IV. CONCLUSION
For the reasons set forth above, the Defendants' Supplemental Motion for Partial Summary Judgment [Doc. 111] is GRANTED.
SO ORDERED.