Fox Battles '12 Years a Slave' Soundtrack Lawsuit

Hans Zimmer Score Still - H 2015
Matt Schrader

Hans Zimmer Score Still - H 2015

On Thursday, Hans Zimmer, Twentieth Century Fox, Sony Music and others filed a motion to dismiss many of the claims made by composer Richard Friedman, who in January, filed a lawsuit alleging that his 2004 composition titled "To Our Fallen" was improperly used to create the main theme to the Oscar-winning film 12 Years a Slave.

Friedman has a reputable attorney by his side and has come forward with a variety of claims including copyright infringement and violation of his moral rights. In the motion to dismiss, the defendants argue the copyright allegations fail without more specificity while objecting to the moral rights claims on the basis that German and French laws hold no sway in this case.

Maybe the most interesting and significant debate between the parties arises from a claim that wasn't in the original lawsuit. On March 23, Friedman brought an amended lawsuit that among other things, added a claim that the defendants had committed a misrepresentation under the Lanham Act by advertising and promoting "music by Hans Zimmer" rather than "music by Richard Friedman."

In doing so, Friedman stepped on an area of law that's important in an industry where attribution and credit means so much. It's also from time to time sparked interesting legal disputes.

Forty years ago, for example, ABC acquired rights to broadcast the Monty Python series, but members of the comedy troupe demanded that the episodes be broadcast in full. The network, concerned with offensive matter, planned an altered version, which led Terry Gilliam and his colleagues to run to court "appalled" at the "mutilation" of their work. They claimed ABC's edits violated the Lanham Act with misrepresentations about the "origin" of the work — enough to injure their reputations. The 2nd Circuit Court of Appeals ordered a federal judge to issue an injunction.

Did Congress really create a backdoor form of moral rights where screenwriters, film directors, composers and other artists could claim a right of attribution?

Not so fast.

In 2003, the U.S. Supreme Court weighed in with a landmark decision, Dastar Corp. v. Twentieth Century Fox Film, which, in the years since, has become shorthand for the proposition that trademarks can't be used as perpetual swords to counter copyrighted work falling into the public domain. But the opinion from Supreme Court justice Antonin Scalia also addresses the question above.

In the dispute, Fox looked to protect a 1949 series about World War II that was based on a book by Dwight D. Eisenhower. The copyright to the series had slipped into the public domain thanks to a lapsed copyright registration. After Dastar purchased videotapes of the series and repackaged them World War II Campaigns in Europe, litigation erupted over, among other things, whether Dastar's acts violated Fox's rights under the Lanham Act. That was the question brought to the Supreme Court.

Scalia, along with the other justices, worried how reading "origin" to require attribution would create practical problems especially for works in the public domain. He wrote, "A video of the MGM film Carmen Jones, after its copyright has expired, would presumably require attribution not just to MGM, but to Oscar Hammerstein II (who wrote the musical on which the film was based), to Georges Bizet (who wrote the opera on which the musical was based) and to Prosper Merimee (who wrote the novel on which the opera was based)."

And so Scalia's solution to "no discernable limits" of a disguised plagiarism claim was to read the phrase "origin of goods" in the Lanham Act to apply 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.

In response to Friedman's claim of misrepresentation by having 12 Years a Slave music credited to Zimmer, the defendants — represented by Robert Klieger and Bert Deixler at Kendall Brill & Klieger — are citing this portion of Scalia's ruling in an attempt to knock out the claim. Yes, Fox is now relying upon precedent from one of its most famous legal losses.

Here's the rub and why this lawsuit is probably worth following: In Dastar, Scalia was mostly addressing a claim that Dastar had confused the origin of the World War II series. Scalia went on in his opinion to note that if a producer substantially copied Fox's 1949 series "in advertising or promotion, to give purchasers the impression that the video was quite different from that series, then [Fox] might have a cause of action — not for reverse passing off ... but for misrepresentation."

And that's exactly the claim that Friedman is attempting to make.

Yes, but the defendants in the 12 Years a Slave music lawsuit cite a litany of cases since Dastar (this one, that one, don't forget me) that have supposedly closed the door on invoking "false advertising as an end run around the copyright laws."

Friedman, represented by Maxwell Blecher, is now set up to argue otherwise.

Twitter: @eriqgardner