Williams v. UMG Recordings, Inc.
281 F. Supp. 2d 1177 (2003)
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Rule of Law:
The Lanham Act's prohibition on false designation of "origin of goods" applies to the producer of the tangible physical goods offered for sale, not to the author of the creative ideas, concepts, or communications contained within those goods. Claims for misattribution of creative authorship fall under copyright law, not the Lanham Act's "reverse passing off" doctrine.
Facts:
- Kelvin Williams, a film director, writer, and editor, collaborated with Jeffrey Panzer and Cash Money Records on a documentary in February 2000.
- Following a compensation dispute from the first project, Williams began post-production work on a second film with Panzer and Cash Money Records titled 'Bailer Blockin'' around March 2000.
- Williams alleges he was contracted to restructure the entire film, which involved re-editing, re-scoring, and writing a copyrighted narration script.
- After 'Bailer Blockin'' was released on DVD and home video, Williams discovered his name was omitted from the film's credits.
- The credits for 'story/screenplay' and 'editing' were attributed to others, not Williams.
Procedural Posture:
- Kelvin Williams filed a complaint against UMG Recordings, Inc., Cash Money Records, Inc., and others in the U.S. District Court (a federal trial court).
- Williams later filed a First Amended Complaint alleging twelve claims, including copyright infringement and unfair competition under the Lanham Act.
- Defendants filed motions for summary judgment on several claims.
- The district court granted summary judgment for defendants on several state law claims but denied it for the copyright and Lanham Act claims, allowing them to proceed to trial.
- After this ruling, the U.S. Supreme Court issued its decision in Dastar v. Twentieth Century Fox, which established new, relevant precedent.
- Based on the new Dastar decision, Defendants filed a Motion for Reconsideration, asking the district court to dismiss the remaining Lanham Act claim.
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Issue:
Does a defendant's failure to credit a plaintiff for creative contributions to a film, such as writing and editing, constitute a 'reverse passing off' violation under the Lanham Act?
Opinions:
Majority - Tevrizian, District Judge.
No, a defendant's failure to credit a plaintiff for creative contributions does not constitute a 'reverse passing off' violation under the Lanham Act. The court's reasoning is governed by the intervening Supreme Court decision in Dastar v. Twentieth Century Fox, which held that the term 'origin of goods' in the Lanham Act refers to the producer of the tangible goods themselves, not the creator of the intellectual content embodied within those goods. The court rejected Williams's argument that his claim survived because he provided 'services,' stating that Dastar makes clear that failing to credit someone who contributed ideas, communications, or services to a defendant's product is not actionable under the Lanham Act. To allow such a claim would cause the Lanham Act to conflict with copyright law, which is the specific area of law designed to protect creative authorship. Williams's proper remedy for misattribution of his creative work lies in his copyright infringement claim, not in trademark law.
Analysis:
This decision illustrates the direct and dispositive impact of a new Supreme Court precedent on pending lower court litigation. It reinforces the bright-line distinction between copyright and trademark law, clarifying that copyright protects creative expression while the Lanham Act protects the source identification of physical products. The ruling significantly narrows the scope of 'reverse passing off' claims under the Lanham Act, limiting them to cases where a party repackages another's tangible goods. Consequently, creative contributors like writers, editors, and directors must rely on copyright and contract law, rather than trademark law, to ensure they receive proper credit for their work.
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