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.

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