Plaintiff Christopher G. Weber claims that his former bandmates, after
joining the music group "Guns N' Roses," wrongly excluded him from the
proceeds of two musical compositions he had co-written with them years
earlier. Plaintiff presses a federal Lanham Act cause of action and state
law causes of action for an accounting of profits, unjust enrichment, and
unfair competition. Defendants have moved to dismiss. For the reasons
given below, defendants' motions to dismiss are granted in their entirety
and this action is dismissed.
A. History of the Disputed Musical Compositions
Mr. Weber alleges that in 1983 he co-authored two original musical
compositions: "Back Off Bitch" ("First Composition"), co-authored by Mr.
Weber and defendant W. Axl Rose; and "Shadow of Your Love" ("Second
Composition"), coauthored by Mr. Weber, Mr. Rose, and defendant Jeffrey
Isbell p/k/a "Izzy Stradlin." Compl. ¶¶ 11-12.*fn1 At the time, Mr.
Weber, Mr. Rose, and Mr. Isbell composed and performed music together as
the music group "Hollywood Rose." Spiro Aff., Ex. C, ¶ 3 (October
19, 1989 complaint ("1989 Complaint") by Mr. Weber in prior federal
lawsuit ("1989 Action")).
By the mid-1980s, Mr. Weber had parted ways with Mr. Rose and Mr.
Isbell. In 1986, along with defendant Michael "Duff" McKagan, non-party
Saul "Slash" Hudson, and non-party Steven Adler-but without Mr. Weber
— Mr. Rose and Mr. Isbell formed the music group "Guns N' Roses"
("GNR"). Spiro Aff., Ex. C, ¶ 7 (1989 Complaint). In its heyday
during the late 1980s and early 1990s, GNR enjoyed worldwide commercial
success, with performances and sales of albums, packaged box sets,
videocassettes, sheet music, etc., in the United States, Europe, Japan,
and Australia. Compl. ¶¶ 15-33.
During this period, Mr. Weber alleges, GNR used the two Compositions in
multiple GNR recordings without giving Mr. Weber co-authorship
attribution. Beginning in September 1991, a song entitled "Back Off
Bitch" ("First Song") appeared on various GNR recordings, including an
album entitled "Use Your Illusion I" that was distributed throughout the
United States and worldwide. Compl. ¶¶ 15-25. Mr. Weber did not learn
of the First Song until March 1992, he claims, when he saw the First Song
on "Use Your Illusion I" in a record store. Compl. ¶ 34; Weber
Decl. ¶ 3. Beginning in June 1987, a song entitled "Shadow of Your
Love" ("Second Song") appeared on various GNR recordings distributed
outside the United States. Compl. ¶¶ 28-34. Mr. Weber did not learn
of the Second Song until January 1997 because of its exclusively foreign
distribution, he claims. Compl. ¶ 34. Each of the two Songs
allegedly "contains a large portion of the . . . Composition" of the same
name. Compl. ¶¶ 16, 31.
B. Mr. Weber's Pursuit of Co-Authorship Rights
While GNR never paid Mr. Weber for its alleged use of the
Compositions, it did not expressly refuse to pay until December 1997,
Mr. Weber claims. Compl. ¶¶ 35-36; Weber Decl. ¶¶ 5, 10; Ehrlich
Decl. ¶ 11. Upon learning of the First Song, Mr. Weber "did not
immediately seek legal intervention and instead waited for such
accounting and for the correction of the misattribution of [his] work in
that Composition which was given to others." Weber Decl. ¶ 3. Mr.
Weber expected recognition and an accounting from GNR because he thought
that, based on the then-settled 1989 Action he had filed against GNR for
other co-authorship claims, GNR "knew to account to [him] for [his]
co-authorship." Weber Decl. ¶ 3; Spiro Aff. ¶ 4.
Eventually, hearing nothing from GNR regarding the First Composition,
Mr. Weber had an agent attempt negotiations with GNR from fall 1994 to
December 1997. Weber Decl. ¶ 4; Ehrlich Decl. ¶ 2. During the
negotiation efforts, Mr. Weber's agent reports that he received from GNR
"continual promises that plaintiff would be paid some amount to be
negotiated for his contribution to the Composition `Back Off Bitch' and
that the misattribution of authorship would be corrected." Ehrlich Decl.
¶ 2; Weber Decl. ¶ 4. Published books of GNR sheet music during
this period did list Mr. Weber as a coauthor, strengthening his belief in
GNR's promises to recognize his co-authorship rights. Weber Decl. ¶
5; Ehrlich Decl. ¶ 2, 4-8.
Upon learning of the Second Song in January 1997, Mr. Weber's agent
broadened his negotiation efforts to include recognition and an
accounting from GNR for the Second Composition. During that phase of
negotiations, GNR's purported promises to pay Mr. Weber and to recognize
his co-authorship extended identically to both the First and Second
Compositions. Weber Decl. ¶¶ 8-9; Ehrlich Decl. ¶¶ 9-10.
C. Copyright Registrations
Mr. Weber claims that "[a]t all times, [he] has been co-owner of all
right, title and interest, including, but not limited to, all rights of
copyright, pertaining to the Compositions." Compl. ¶ 13. Mr. Weber
did not apply for registration of the Compositions with the United States
Copyright Office, however, until he filed the complaint in this action.
Compl. ¶ 14.
The First and Second Songs are copyrighted as the creations and the
property of various GNR members. The First Song was registered on December
16, 1991, initially listing Mr. Rose, Mr. Hudson, and non-party Paul Huge
as the sole authors, but amended on August 8, 1994 to add Mr. McKagan and
Mr. Stradlin as co-authors. Spiro Aff. ¶ 17, Ex. E. The Second Song
was registered on August 7, 1987, listing Mr. Rose, Mr. Hudson, Mr. Adler
as the sole authors. Spiro Aff. ¶ 15, Ex. D. Mr. Weber asserts that
he did not know of the GNR copyright registrations for either the First
or Second Song until after this litigation ensued. Weber Decl. ¶¶ 6,
11. In the 1989 Action, Mr. Weber made similar claims to co-authorship
rights for three different songs. The GNR members' copyright to one of
those songs, "Reckless Life," was registered on the same August 7, 1987
copyright registration statement as the Second Song in this action,
"Shadow of Your Love." Spiro Aff. ¶¶ 5-6, Ex. D.
Since amending his complaint, plaintiff does not press a formal
Copyright Act cause of action, but does press the following four:,
accounting of profits under state law; false designation of origin under
the Lanham act, 15 U.S.C. § 1125(a); unfair competition under state
law; and unjust enrichment under state law. All four causes of action,
however, are premised on plaintiffs claim to co-ownership of defendants'
copyrighted musical compositions.
See, e.g., Compl. ¶ 38 (alleging, in accounting claim, that "At all
times, plaintiff has been a co-owner of all rights and privileges in and
to the copyright of the Compositions."). The Copyright Act limits
plaintiffs present claims in three ways. First, it preempts any state law
claim that would be too similar to a copyright claim. Second, it prevents
any Lanham Act claim that would be too similar to a copyright claim.
Third, it imposes a time bar on any claim premised on what would be a
timebarred challenge to a copyright.
A. Preemption of State Law Claims Based on Copyrights
"Congress carefully designed the statutory framework of federal,
copyright preemption . . . to insure that the enforcement of these rights
remains solely within the federal domain." Computer Assocs. Int'l v.
Altai, Inc., 982 F.2d 693, 716 (2d Cir. 1992). The Copyright Act
expressly preempts "all legal or equitable rights that are equivalent to
any of the exclusive rights within the general scope of copyright as
specified by section 106 in works of authorship," 17 U.S.C. § 301(a),
with the proviso that "[n]othing in this title annuls or limits any
rights or remedies under . . . State [law] with respect to . . .
activities violating legal or equitable rights that are not equivalent to
any of the exclusive rights within the general scope of copyright as
specified by section 106," 17 U.S.C. § 301(b)(3). The referenced
"scope of copyright," 17 U.S.C. § 106, "affords a copyright owner the
exclusive right to: (1) reproduce the copyrighted work; (2) prepare
derivative works; (3) distribute copies of the work by sale or
otherwise; and, with respect to certain artistic works, (4) perform the
work publicly; and (5) display the work publicly." Computer Assocs.
Int'l, 982 F.2d at 716.
Whether a state law claim is preempted depends on whether it is
derivative of a copyright claim or is based on an "extra element" beyond
those of a copyright claim.
A state cause of action is preempted by federal
copyright laws if the subject matter of the state-law
right falls within the subject matter of the copyright
laws and the state-law right asserted is equivalent to
the exclusive rights protected by federal copyright
law. . . . A state law claim is not preempted if the
"extra element" changes the "nature of the action so
that it is qualitatively different from a copyright
Kregos v. Associated Press, 3 F.3d 656, 666 (2d Cir. 1993) ("Kregos
(1993)") (quoting Computer Assocs. Int'l, 982 F.2d at 716) (other
citations omitted). Each of plaintiff's three state law claims not only
is based on a copyright claim, but also lacks any extra element making it
sufficiently different from a copyright claim to escape preemption.
"Courts have generally concluded that the theory of unjust enrichment
protects rights that are essentially `equivalent' to rights protected by
the Copyright Act; thus, unjust enrichment claims relating to the use of
copyrighted material are generally preempted." Netzer v. Continuity
Graphic Assocs., Inc., 963 F. Supp. 1308, 1322 (S.D.N.Y. 1997). Netzer
held that the claims of unjust enrichment and for an accounting of
profits were preempted in an action based on allegations that the
plaintiff created Ms. Mystic, a comic book character that the defendants
copyrighted and exploited.
Here, the gravamen of the unjust enrichment claim is
unauthorized exploitation of Ms. Mystic without
providing an accounting. Any "enrichment" of the
Defendants as a result of the exploitation of Ms.
Mystic is "unjust" only by virtue of Netzer's
co-authorship interest under federal Copyright law,
under which he is entitled to an accounting, precisely
the remedy he seeks in this claim. Thus, Netzer's
unjust enrichment . . . claims seek vindication for
the violation of essentially identical rights
and are therefore preempted by Federal Copyright law.
The rationale for preemption in Netzer also applies here, and not only
to the unjust enrichment claim. Regardless of the title of each cause of
action, plaintiff's basic claim is that because he is a co-author of the
copyrighted material and a co-owner of the copyrights, defendants'
copyrights should not entitle them to the full bundle of privileges that
attach to copyright ownership. It is only through this basic claim that
any enrichment is unjust, that any competition is unfair, or that anyone
profiting must account to plaintiff. Accordingly, the Copyright Act
preempts plaintiff's three state law claims: accounting, unfair
competition, and unjust enrichment. See, e.g., Kregos (1993), 3 F.3d at
666 (unfair competition claims); Richard Feiner & Co. v. HR. Indus.,
Inc., 10 F. Supp.2d 310, 316 (S.D.N.Y. 1998) (accounting and unfair
competition claims); Netzer, 963 F. Supp. at 1322 (unjust enrichment
claims); Douglas v. Kimberly-Clark Corp., No. Civ.A. 96-2428, 1997 WL
180315, at *3 (E.D.Pa. Apr. 11, 1997) (unfair competition claims); Arden
v. Columbia Pictures Indus., Inc., 908 F. Supp. 1248, 1264 (S.D.N.Y.
1995) (accounting, unfair competition, and unjust enrichment claims).
B. Applicability of Lanham Act to Copyright Claims
Section 43 of the Lanham Act, 15 U.S.C. § 1125, "prohibits any
misrepresentation likely to cause confusion as to the source or the
manufacturer of a product." Lipton v. The Nature Co., 71 F.3d 464, 472
(2d Cir. 1995). In claiming that defendants falsely attributed authorship
of the two Songs by excluding his name, plaintiff alleges "a practice
termed `reverse passing off in which `A' sells `B's' product under `A's'
name." Waldman Publ'g Corp. v. Landoll, Inc., 43 F.3d 775, 780 (2d Cir.
1994). The elements of a reverse passing off claim are: "(1) that the
work at issue originated with the plaintiff; (2) that origin of the work
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."
Lipton, 71 F.3d at 472. Although a "typical reverse passing off case
involves a manufactured product rather than a written work[,] . . . [i]n
the context of written works, the Lanham Act may be used to prevent `the
misappropriation of credit properly belonging to the original creator.'"
Waldman Publ'g Corp., 43 F.3d at 780-81 (quoting Restatement (Third) of
Unfair Competition § 5, cmt. (c)).
Aware that nearly every copyright-based claim involves a charge of
improper failure to credit a purported author, the Second Circuit has
limited the extent to which a copyright-based claim may support a Lanham
Act claim, repeatedly cautioning that "`we reject . . . attempt[s] to
convert all copyright claims into Lanham Act violations.'" Lipton, 71
F.3d at 473 (quoting Kregos v. Associated Press, 937 F.2d 700, 711 (2d
Cir. 1991) ("Kregos (1991)")). Lipton held that "as a matter of law, a
false copyright notice alone cannot constitute a false designation of
origin within the meaning of § 43(a) of the Lanham Act." 71 F.3d at
473. This holds even where a plaintiff is successful on the copyright
claim. See Kregos (1991), 937 F.2d at 710-11.
For the Lanham Act to apply to a copyright-based claim, an aggrieved
author must show more than a violation of the author's
copyright-protected right to credit and profit from a creation. The
author must make a greater showing that the designation of origin was
false, was harmful, and stemmed from "some affirmative act whereby
[defendant] falsely represented itself as the owner." Lipton, 71 F.3d at
473-474 (quoting Cognotec Servs., Ltd., v. Morgan Guar. Trust Co.,
862 F. Supp. 45, 51 (S.D.N.Y. 1994)). Campare, e.g., Cognotec Servs.,
Ltd., 862 F. Supp. at 51 (finding no § 43(a) liability based on
copyright infringement alone),
with Eden Toys v. Florelee Undergarment Co., 697 F.2d 27, 37 (2d Cir.
1982) (finding § 43(a) liability where copyright notice not only was
false but also asserted that product was "original"). This rule is
analogous to the preemption rule that a state law claim requires an
"extra element," beyond those tracing to any copyright, that "changes the
`nature of the action so that it is qualitatively different from a
copyright infringement claim,'" Kregos (1993), 3 F.3d at 666 (quoting
Computer Assocs. Int'l., 982 F.2d at 716).
Just as plaintiffs state claims are preempted for their lack of any
such "extra element," plaintiffs Lanham Act claim is impermissible
because it would essentially duplicate a Copyright Act claim. Plaintiffs
allegations are those of a standard copyright violation. As support for a
Lanham Act claim, they do not show the requisite affirmative action of
falsely claiming originality beyond that implicit in any allegedly false
copyright. Any copyright falsity here, compared to a garden-variety
copyright violation, was not an especially egregious false claim of
originality; plaintiff alleges only co-ownership, not sole ownership, and
only partial use of his coauthored Compositions in defendants' Songs.
Accordingly, the complaint's Lanham Act claim must be dismissed "as
duplicative of its copyright claim," Richard Feiner & Co. v. H.R.
Indus., Inc., 10 F. Supp.2d 310, 316 (S.D.N.Y. 1998), which underlies all
four causes of action despite plaintiff's choice to omit any explicit
Copyright Act cause of action from his complaint.
C. Statutes of Limitations
No cause of action, whether or not brought under the Copyright Act, may
be premised on a time-barred challenge to a copyright. Margo v. Weiss,
No. 96 Civ. 3842(MBM), 1998 WL 2558, at *9 (S.D.N.Y. Jan. 5, 1998), so
held in rejecting various non-copyright claims.
[P]laintiffs' claims for breach of fiduciary duty are
based on the assumption that the parties have been
deemed co-authors. However, plaintiffs' claim of
coauthorship is barred under federal law. . . . [T]he
only duty that exists between co-authors is the duty
to account for profits. However, the duty to account
for profits presupposes a relationship as co-owners of
the copyright, a relationship plaintiffs are
time-barred from asserting.
1998 WL 2558, at *9. This court agrees that "[i]t would be anomalous to
hold that plaintiffs are precluded from seeking a declaration of
co-authorship and, at the same time, that they are permitted to claim a
breach of the duties that co-authorship might impose." Accordingly,
plaintiff cannot state a claim with any non-copyright cause of action that
depends on a copyright claim that would be time-barred under the