Saturday, July 11, 2009

Setback for DeVore as court refuses to dismiss Lanham Act and 17200 claims in Don Henley's suit over 'parody' campaign videos

A federal judge has refused to dismiss singer Don Henley's claims that California GOP Senate candidate Chuck DeVore violated the Lanham Act and California's unfair competition law by making "parody" videos allegedly suggesting that the liberal entertainer had endorsed or was affiliated with the conservative Irvine Assemblyman's campaign.

Order Denying Chuck Devore's Motion to Dismiss

The lawsuit, filed April 17, alleges that DeVore and his campaign's Director of New Media and Internet Strategies, Justin Hart, committed direct, contributory, and vicarious copyright infringement by using "The Boys of Summer" in what DeVore has termed a "parody" that substitutes new lyrics attacking his opponent, Sen. Barbara Boxer. The suit also alleges that the use of "The Boys of Summer" and "All She Wants to Do Is Dance" violated Section 43 of the Lanham Act and California Business & Professions Code section 17200 by confusing the public into believing that Henley supports DeVore and his campaign.

In his July 8 ruling, Judge James Selna rejected DeVore's argument that the Lanham Act only applies to commercial -- as opposed to political -- speech, relying heavily on the Ninth Circuit's decision in Committee for Idaho's High Desert Inc. v. Yost, 92 F.3d 814 (9th Cir. 1996) and the Second Circuit's in United We Stand America, Inc. v. United We Stand, America New York, Inc., 128 F.3d 86 (2d Cir. 1997). While acknowledging that the issue was "unclear," the court determined that Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005), which held that "the noncommercial use of a trademark as the domain name of a website ... does not constitute infringement under the Lanham Act," does not apply to false endorsement claims like Henley's. The court also held that the Supreme Court's Dastar decision, which warned against allowing Lanham Act claims to become a "species of mutant copyright law," does not bar Henley's claims because Dastar involved a "reverse passing off" theory not at issue here.

On the section 17200 claim, the court held that a "claim based on Henley’s persona or identity would not be preempted" by the Copyright Act. The court appears to be confused as to whether Henley is claiming copyright as to "All She Wants to Do Is Dance." I think it's fairly clear from the complaint that he is not. Henley (and co-plaintiff Mike Campbell) claim ownership in the composition for "Summer" (and infringement of that work), but the only claims in the complaint regarding "Dance" are by Henley only, for false endorsement/association. The order (and the motion it addressed) does not concern Henley and Campbell's copyright claims regarding "Summer." The entire case now goes forward.

Devore's motion is here; Henley's opposition here.

(Headline updated.)


  1. I'm not really seeing how the Court's decision squares with "parody fair use", unless the video in question explicitly said "DONATE MONEY TO CANDIDATE XYZ" or "VOTE FOR CANDIDATE XYZ" in which case it constitutes actual fundraising or advertising activity. But then, if it were fundraising or advertising, then Henley et al should be arguing a simple trademark- or copyright-violation case. I just don't see where "misrepresentation" enters into it. I'd argue that many of the people hearing the ad thought that the song was done by The Ataris!

  2. The defendants did not raise a fair use defense in this motion to dismiss. They can still do so at later stages of the litigation.

  3. The only thing "unclear" to me is how the words "in connection with any goods or services...uses in commerce..." makes in unclear to the court whether the Lanham Act only applies to commercial, as opposed to political, speech.

    This case seems to be on a very dangerous path of reasoning. Giving all artists Trademark rights in songs they record is the beginning of a very dark place and surely NOT the intention of the Lanham Act.

  4. @Anonymous 12:12:

    As the court in Bosley said:

    "'Use in commerce' is simply a jurisdictional predicate to any law passed by Congress under the Commerce Clause. See Steele v. Bulova Watch Co., 344 U.S. 280, 283, 73 S.Ct. 252, 97 L.Ed. 319 (1952); OBH, Inc. v. Spotlight Magazine, Inc., 86 F.Supp.2d 176, 185 (W.D.N.Y.2000)."

    I agree with you that there are troubling implications of giving performers/songwriters trademark-like protection over uses of their works in which they do not own copyright.


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