Britt v. Durham et al

Filing 72

OPINION AND ORDER. The Court GRANTS Durham and the Corporate Defendants' 41 and 53 Motions and DISMISSES the Lanham Act claim WITH PREJUDICE and the other federal claims WITHOUT PREJUDICE. The Court DISMISSES WITHOUT PREJUDICE all remaining state law claims for lack of subject matter jurisdiction. The Court DIRECTS the Clerk to close this case. Signed by Judge Michael L. Brown on this 7th day of March, 2025. (pdt) Modified on 3/7/2025 (pdt).

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
Jamal Britt,
Plaintiff,

Case No. 1:24-cv-118-MLB

v.
Chandler Durham, et al.,
Defendants.
________________________________/
OPINION & ORDER
For the reasons explained, the Court GRANTS Defendants’ Rule
12(b)(6) Motions to Dismiss (Dkts. 41 and 53), DISMISSES Plaintiff’s
federal claims for failure to state a claim, and DISMISSES Plaintiff’s
state law claims for lack of subject matter jurisdiction.
I.

Background
The Court—as it must at this stage—accepts all well-pleaded

factual allegations as true. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
Those facts establish that, in 2017, Plaintiff Jamal Britt and Defendant
Chandler Durham (professionally known as “Turbo the Great” or
“Turbo”) created and co-authored Afghanistan, a hip-hop song. (Dkt. 70

¶¶ 23, 35.) Britt wrote and sung the lyrics, while Durham produced the
beat and engineered the song.

(Id.)

Afghanistan included an

introductory tag—“Run that back Turbo”—which has become iconic in
the hip-hop industry. (Id.) Later that year, the two jointly registered a
copyright for Afghanistan. (Id. ¶ 34; Ex. 2.)1 At some unknown time,
Durham trademarked the introductory tag. (Dkt. 70 ¶ 106.)
Durham has since risen to “critical success,” signing a co-publishing
agreement with Defendant Warner-Chappell Music, Inc. (Id. ¶¶ 36–37.)
Durham and Warner-Chappell licensed Afghanistan (and by extension
the introductory tag “Run that back Turbo”) to third parties, mostly
artists, production companies, and recording studios. (Id. ¶¶ 30, 39–40.)
Durham

and

the

other

entities

(referred

to

by

Britt

as

“the Corporate Defendants”) included the introductory tag in other songs
without Britt’s consent and without paying him anything for using the
line he originally wrote. (Id. ¶ 38.) Some of those songs received critical

1 After Defendants moved to dismiss, Britt moved to amend his complaint

solely to correct “misnomers and/or misidentifications of certain
corporate Defendants.” (Dkt. 68 at 1.) Defendants did not object, and the
Court granted that motion. (Dkts. 69, October 23, 2024 Docket Entry.)
The Court thus cites only the second amended complaint.
2

acclaim and generated millions of dollars in revenue. (Id. at 11–20, ¶ 66.)
Durham,

for

example,

helped

produce

Drip

Too

Hard,

Grammy-nominated song that sold “over 10 million copies.”

a
(Id.

¶¶ 41–42.) In the complaint, Britt identifies 82 songs that he claims
arose from Durham’s efforts with the Corporate Defendants and that he
collectively refers to as the “Infringing Works.” (Id. ¶ 38.) The Court
refers to them as the subsequent songs.
On January 9, 2024, Britt sued Durham, various fictitious parties,
and the Corporate Defendants. (Dkt. 1.) The second amended complaint
contains eight counts: (1) declaratory judgment on joint authorship,
(2) accounting, (3) copyright infringement, (4) vicarious infringement,
(5) false designation of origin, (6) fraud, (7) unjust enrichment, and
(8) Georgia common law right of publicity. (Dkt. 70.) Britt also organizes
his claims into three groups: claims against all Defendants, claims
against Durham, and claims against the Corporate Defendants. (Id.)
Counts One through Five arise under federal law and Counts Six through
Eight arise under Georgia state law.
Durham and the Corporate Defendants moved to dismiss all counts.
(Dkts. 41, 53.) Britt opposes. (Dkts. 45, 64.)

3

II.

Discussion2
“Under Federal Rule of Civil Procedure 8(a)(2), a pleading must

contain ‘a short and plain statement of the claim showing that the
pleader is entitled to relief.’” Ashcroft v. Iqbal, 556 U.S. 662, 677–78
(2009) (quoting Fed. R. Civ. P. 8(a)(2)). The Court, however, may dismiss
a pleading for “failure to state a claim upon which relief can be granted.”
Fed. R. Civ. P. 12(b)(6). “To survive a motion to dismiss, a complaint
must contain sufficient factual matter, accepted as true, to ‘state a claim
that is plausible on its face.’” Iqbal, 556 U.S. at 678 (quoting Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 570 (2007)).

“A claim has facial

2 The Court has tried its best to understand Britt’s theories of liability,

but his complaint is challenging. Each count, for instance, “incorporates”
indiscriminately every preceding allegation. (See, e.g., Dkt. 70 ¶ 119.)
The final count—right of publicity—is the most egregious example,
spanning 121 allegations for a single claim. (Id.) The Eleventh Circuit
strongly disfavors this “shotgun pleading” practice. See Barmapov v.
Amuial, 986 F.3d 1321, 1324–26 (11th Cir. 2021) (defining a shotgun
pleading as a pleading “containing multiple counts where each count
adopts the allegations of all preceding counts”). Based on Durham’s and
the Corporate Defendants’ motions to dismiss, it appears they have (or
believe they have) adequate notice of the claims against them. See Yeyille
v. Mia. Dade Cnty. Pub. Sch., 643 F. App’x 882, 884 (11th Cir. 2016). So
the Court will not dismiss the complaint as a shotgun pleading and has
painstakingly tried to make sense of Britt’s theories. To the extent the
Court misunderstands anything, the fault lies with Britt.
4

plausibility when the plaintiff pleads factual content that allows the
court to draw the reasonable inference that the defendant is liable for the
misconduct alleged.” Id. (citing Twombly, 550 U.S. at 556). At the
motion-to-dismiss stage, “all well-pleaded facts are accepted as true, and
the reasonable inferences therefrom are construed in the light most
favorable to the plaintiff.” Bryant v. Avado Brands, Inc., 187 F.3d 1271,
1273 n.1 (11th Cir. 1999).

A complaint offering mere “labels and

conclusions” or “a formulaic recitation of the elements of a cause of
action,” however, does not satisfy this standard. Iqbal, 556 U.S. at 678
(quoting Twombly, 550 U.S. at 555).
A.

Count One: Federal Declaratory Judgment Action
Against Durham and the Corporate Defendants

Britt brings a joint-authorship claim under the Declaratory
Judgment Act, 28 U.S.C. § 2201 et seq., and the Copyright Act, 17 U.S.C.
§ 101 et seq. He seeks a declaration that, because he initially wrote the
line “Run that back Turbo,” he is a joint author of all 82 subsequent songs
that incorporate the line and “owns an undivided share” in each song.
(Dkt. 70 ¶ 76.)
Durham and the Corporate Defendants disagree. Durham claims
most of Britt’s claims against the subsequent songs are time-barred and
5

Britt is not a co-author of any of the subsequent songs. (Dkt. 41-1 at 26,
17.)

Durham further argues that (1) he exercised his rights as

Afghanistan’s co-author to license the work and create derivative works;
(2) the subsequent songs are, at most, derivative works; (3) Britt acquired
no rights in the subsequent songs; and (4) Britt fails to allege properly
that Britt and the other supposed authors of the subsequent songs
intended to create joint work with Plaintiff.

(Id. at 17–26.)

The

Corporate Defendants contend all of Britt’s claims are time-barred and,
regardless, Britt failed to allege properly the intent of all parties to
become joint authors of the subsequent songs with him. (Dkt. 53-1 at
7–8, 12.) As part of this, they argue Britt cannot acquire ownership
rights in the subsequent songs simply because he co-authored
Afghanistan. (Id. at 14–16.) Finally, they say they are immune from
liability as lawful licensees. (Id. at 16–18.)
1.

Statute of Limitations

“The Copyright Act provides that ‘[n]o civil action shall be
maintained . . . unless it is commenced within three years after the claim
accrued.’”

Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663, 667

(2014) (quoting 17 U.S.C. § 507(b)). Typically, claims “accrue[]” whenever

6

“the plaintiff has a complete and present cause of action.” Corner Post,
Inc. v. Bd. of Governors of Fed. Rsrv. Sys., 144 S. Ct. 2440, 2451 (2024)
(quoting Gabelli v. SEC, 568 U.S. 442, 448 (2013)). Britt’s claim for
declaratory relief under the Copyright Act arises from his supposed
joint-authorship of the subsequent songs. When “the ‘gravamen’ of a
copyright claim is ownership, the discovery rule dictates when a
copyright plaintiff’s claim accrues.” Nealy v. Warner-Chappell Music,
Inc., 60 F.4th 1325, 1330 (11th Cir. 2023) (quoting Webster v. Dean
Guitars, 955 F.3d 1270, 1276 (11th Cir. 2020)). “Under the discovery
rule, a copyright ownership claim accrues, and therefore the limitations
period starts, ‘when the plaintiff learns, or should as a reasonable person
have learned, that the defendant was violating his ownership rights.’” Id.
“‘A Rule 12(b)(6) dismissal on statute of limitations grounds is
appropriate only if it is apparent from the face of the complaint that the
claim is time barred’ because ‘[a] statute of limitations bar is an
affirmative defense, and . . . plaintiff[s] [are] not required to negate an
affirmative defense in [their] complaint.’” Fulton Cnty. v. Wells Fargo &
Co., 2022 WL 846903, at *4 (N.D. Ga. Mar. 22, 2022) (quoting La Grasta
v. First Union Sec., Inc., 358 F.3d 840, 845 (11th Cir. 2004)). “In other

7

words, ‘[a]t the motion-to-dismiss stage, a complaint may be dismissed
on the basis of a statute-of-limitations defense only if it appears beyond
a doubt that plaintiffs can prove no set of facts that toll the statute.’”
Lindley v. City of Birmingham, 515 F. App’x 813, 815 (11th Cir. 2013)
(quoting Tello v. Dean Witter Reynolds, Inc., 410 F.3d 1275, 1288 n.13
(11th Cir. 2005), abrogated on other grounds as recognized by Walter v.
Avellino, 564 F. App’x 464, 466 (11th Cir. 2014)).3
Durham argues that—under the discovery rule—the statute of
limitations for Britt’s claim began to run on the date each song was
released without acknowledging Britt’s ownership. (Dkt. 41-1 at 27.)
Since Britt filed his original complaint on January 9, 2024, Durham
claims the statute of limitations bars any claims for songs released before
January 9, 2021 (Id. at 28.) In the second amended complaint, Britt
identifies the release dates for eight of the songs at issue in this case.
(Dkt. 70 ¶¶ 41, 44, 47, 50, 53, 56, 59, 62.) He says each song was released

The Court recognizes Lindley is unpublished and not binding. The
Court cites it and other unpublished cases nevertheless as instructive.
See Searcy v. R.J. Reynolds Tobacco Co., 902 F.3d 1342, 1355 n.5 (11th
Cir. 2018) (“Unpublished cases do not constitute binding authority and
may be relied on only to the extent they are persuasive.”).

3

8

between September 2018 and May 2020. (Id.) Britt did not allege the
release dates for the other 74 subsequent songs. (Id. ¶ 65.) For them,
Durham attaches documents (mostly Wikipedia pages) showing that each
song was released before January 9, 2021. (Dkts. 41-3; 41-4; 41-5.) He
says the Court can rely on those documents in considering his statute of
limitations argument. (Dkt. 41-1 at 28.)
“In ruling upon a motion to dismiss, the district court may consider
an extrinsic document if it is (1) central to the plaintiff’s claim, and (2) its
authenticity is not challenged”—the so-called “incorporation by
reference” doctrine. SFM Holdings, Ltd. v. Banc of Am. Sec., LLC, 600
F.3d 1334, 1337 (11th Cir. 2010) (citing Day v. Taylor, 400 F.3d 1272,
1276 (11th Cir. 2005)). Federal Rule of Evidence 201(b) also “provides for
taking judicial notice of facts that are not subject to reasonable dispute
because they are capable of accurate and ready determination by resort
to sources whose accuracy cannot reasonably be questioned.” Bryant, 187
F.3d at 1278.
The Court rejects Durham’s argument.

The Wikipedia pages

satisfy neither avenue for supplementing the facts at the motion to
dismiss stage. Contrary to Durham’s contention, the second amended

9

complaint’s mere reference to the subsequent songs does not incorporate
by reference the release dates for each song. Adamson v. Poorter, 2007
WL 2900576, at *3 (11th Cir. Oct. 4, 2007) (“A document is not ‘central’
merely because it is directly responsive to a factual allegation.”). Nothing
in the second amended complaint incorporates those dates, let alone the
Wikipedia pages.

In other words, the second amended complaint’s

reference to the general subject matter of the subsequent songs is not
tantamount to incorporation of the release dates set forth in
uncorroborated Wikipedia pages. Not even close. Cf. Cox Enters. v.
Hiscox Ins. Co., 478 F. Supp. 3d 1335, 1337 n.2 (N.D. Ga. 2020)
(considering an insurance policy explicitly referenced by the complaint
and central to plaintiff’s tort causes of action).

And while Courts

regularly take judicial notice of websites and webpages, see, e.g., Pohl v.
MH Sub I, LLC, 332 F.R.D. 713, 716 (N.D. Fla. 2019), Britt asks the
Court to take judicial notice of the content of the webpages. Yet he offers
nothing to suggest Wikipedia entries are “not subject to reasonable
dispute” or constitute a source “whose accuracy cannot reasonably be
questioned.” Bryant, 187 F.3d at 1278. While a helpful tool, the Court
does not find Wikipedia so beyond reproach. See Stein v. Ala. Sec’y of

10

State, 774 F.3d 689, 698 n.10 (11th Cir. 2014) (“Wikipedia is not a source
that warrants judicial notice.”). Indeed, Wikipedia credits itself as a
source “edit[able] by anyone with Internet access.”

Wikipedia,

https://en.wikipedia.org/wiki/Wikipedia:About (last visited Nov. 4, 2024).
In all, the Court does not consider Durham’s cited exhibits to establish
the release dates of those songs.4
More broadly, however, the problem with Durham’s argument is
that he conflates the release date of each song with the date on which
Britt knew or should have known the Defendants were violating his
ownership rights without pointing to any well-pleaded facts to make that
connection. It may be that Britt became aware of each song on the exact
date each song was released and thus also became aware of his claims on
those dates. But no allegations establish that conclusion. Admittedly,
Britt alleges in the second amended complaint that some (or perhaps
most) of the songs were popular, some selling hundreds of thousands or
millions of copies, some being certified platinum or diamond, some

The Court also declines to consider new factual allegations Britt
includes in an affidavit he filed in opposing Defendants’ motions to
dismiss. (Dkt. 65.) It considers only Britt’s allegations in the second
amended complaint.

4

11

topping music charts, and some even being nominated for Grammy
Awards. Perhaps that would provide grounds to conclude Britt or a
reasonable person in his position knew or should have known his
ownership rights were being violated when the songs were released or
shortly thereafter. And Britt alleges in the second amended complaint
that he is a “Recording Artist, Songwriter and Entertainer” in Atlanta, a
hub city for hip-hop. (Dkt. 70 ¶ 34.) So that might also suggest he knew
about the songs close to the release dates.

But these allegations of

popularity, commercial success, and Britt’s employment do not establish
beyond doubt when a reasonable person in Britt’s shoes would have
known his ownership rights were being violated. Nor is the window
between this supposed discovery and time of filing long enough to permit
an unavoidable inference that Britt should have known. Cf. Lott-Johnson
v. Est. of Goreau, 2015 WL 4389979, at *4 (N.D. Ga. July 15, 2015)
(imparting notice of copyright infringement where plaintiff failed to act
for eighteen years from such date). At any rate, Durham does not even
make those arguments. The discovery rule analysis focuses on what Britt
(or a reasonable person) knew or should have known. Webster, 955 F.3d
at 1276 (looking at communication with plaintiff and other evidence of

12

plaintiff’s awareness of potential infringement).

Durham’s simple

reliance on the release dates with no further discussion is insufficient to
show the statute of limitations bars Britt’s claims.
The Corporate Defendants make a similar but slightly different
argument. They contend Britt’s claim accrued only once—“the first time
he knew or had reason to know that the introductory tag was being used
in new works without any attribution to him.” (Dkt. 53-1 at 20.) They
argue this occurred in 2018 upon the release of Drip too Hard, the first
song that allegedly interfered with his ownership rights. (Id.) Without
deciding whether Britt’s claims accrued only upon the release of the first
song or with the release of each different song, the Corporate Defendants’
statute of limitations argument fails for the same reason Durham’s
argument fails: the lack of allegations in the second amended complaint
establishing that Britt knew or should have known of the alleged
infringement upon release of the first song.
Because Britt’s allegations in the second amended complaint do not
establish a time bar as a matter of law, the Court rejects Durham’s and
the Corporate Defendants’ statute of limitations arguments.

13

2.

Sufficiency of the Allegations

As explained, Britt seeks a declaration that he is a joint author of
all 82 subsequent songs in which Durham and/or the Corporate
Defendants used the tag line “Run that back Turbo.” (Dkt. 70 ¶ 76.) The
Copyright Act states that “[t]he authors of a joint work are co-owners of
copyright in the work.” 17 U.S.C. § 201. It defines “joint work” as “a
work prepared by two or more authors with the intention that their
contributions be merged into inseparable or interdependent parts of a
unitary whole.” 17 U.S.C. § 101. The Copyright Act, however, “does not
define joint authorship per se.” M.G.B. Homes, Inc. v. Ameron Homes,
Inc., 903 F.2d 1486, 1492 (11th Cir. 1990). Other courts have developed
a framework, concluding co-authorship claimants “bear[] the burden of
establishing that each of the putative co-authors (1) made independently
copyrightable contributions to the work; and (2) fully intended to be
co-authors.”

Thomson v. Larson, 147 F.3d 195, 200 (2d Cir. 1998)

(citation omitted); see also Erickson v. Trinity Theatre, Inc., 13 F.3d 1061,

14

1071 (7th Cir. 1994); Aalmuhammed v. Lee, 202 F.3d 1227, 1271 (9th Cir.
2000) (establishing a similar four-part test).
The Eleventh Circuit has not adopted this or any other framework
for analyzing co-authorship claims. But several district courts within the
circuit have applied it. See, e.g., Quinn v. Powell, 2022 WL 1664554, at
*3 (N.D. Ga. May 25, 2022); Seventh Chakra Films, LLC v. Alesse, 666 F.
Supp. 3d 1250, 1262 (S.D. Fla. 2023); Gordon v. Lee, 2007 WL 1450403,
at *8 (N.D. Ga. May 14, 2007). In the absence of any prohibition from the
Eleventh Circuit, this Court adopts the same test as a faithful application
of the statutory language, particularly the definitional requirement that
authors of “joint work” must have the “intention” to join or merge their
individual contributions into a single work. The intent element focuses
“on the parties’ intent to work together in the creation of a single
product.” Janky v. Lake Cnty. Convention & Visitors Bureau, 576 F.3d
356, 362 (7th Cir. 2009).

The “factual indicia of ownership and

authorship, such as how a collaborator regarded herself [or himself] in
relation to the work in terms of billing and credit, decision making, and
the right to enter into contracts,” may demonstrate the parties’

15

intentions. Brooks v. Dash, 852 F. App’x 40, 41 (2d Cir. 2021) (quoting
Thomson, 147 F.3d at 200).
Defendants say the Court should dismiss Britt’s declaratory
judgment claim because he fails to plead adequately that each Defendant
intended to be a co-author of the subsequent works with him. Defendants
cite Quinn v. Powell, 2022 WL 1664554 (N.D. Ga. May 25, 2022), in
support of their argument. (Dkts. 41-1 at 23–25; 53-1 at 13–14.) In
Quinn, three artists co-wrote and co-produced a song. 2022 WL 1664554,
at *1. One of the artists later collaborated with a new artist to generate
a new song using the original lyrics. Id. The two uninvolved original
artists sued under the Copyright Act for a declaration that they were
joint owners and co-authors of the second song. Id. Applying the same
framework the Court has adopted, the Quinn court recognized that all
three artists “made independently copyrightable contributions” to the
original song and that the original song made “clearly copyrightable
contributions” (with the new artist) to the second song. Id. at *3. But
the court also recognized the plaintiffs failed to plead the new artist
intended to be co-authors of the new song with them. Id. The plaintiffs
might have alleged the new artist intended to be a co-author with the one

16

original artist, but they did not allege the new artist intended to be
co-authors with them (since they were not involved in the new song).
Even in the face of substantial overlap in the lyrics (as opposed to an
overlap of just four words in this case), the court concluded the plaintiffs’
failure to allege the new creator’s intent to be co-authors with them
prevented them from stating a claim of joint ownership. Id. at *3.
The same rationale applies here. Britt fails to assert adequately
that the Corporate Defendants or Durham intended to share
co-authorship of the subsequent songs with him. Britt includes almost
no allegations to suggest this intent. In arguing otherwise, Britt provides
a string cite of ten allegations. (Dkt. 64 at 12.) But those allegations say
nothing about Durham’s or the Corporate Defendants’ intentions to be
co-authors with him. Indeed, one allegation recites the initial creation of
Afghanistan. (Id. (citing Dkt. 70 ¶ 35).) The remaining citations repeat
the conclusion that either Durham or the Corporate Defendants “used
the extrapolation of Plaintiff’s Original work” in the listed songs “as an
artistic element and identifying tagline.” (Id. (citing Dkt. 70 ¶¶ 42, 45,
48, 51, 54, 57, 60, 63, and 65).) None of these allegations, however, supply
the intermediate link: that the Defendants intended co-authorship in the

17

subsequent songs with Britt. Regardless of his copyright or joint-author
status in the original work, Britt must still plausibly allege Durham and
the Corporate Defendants had the shared intent to be co-authors with
him in the subsequent songs. Erickson, 13 F.3d at 1068. He has not done
that.
Indeed, Britt’s allegations largely disavow any co-authorship
intention. Britt alleges he was “never given notice that his voice was
being used,” indicating his lack of any involvement in production of the
subsequent songs. (Dkt. 70 ¶ 33.) And he says nothing about what
Defendants understood about Britt’s involvement. Perhaps allegations
that the Defendants offered him billing credit or otherwise interacted
with him could allege plausibly the requisite intent even without Britt’s
direct involvement in making the songs. UIRC-GSA Holdings, Inc. v.
William Blair & Co., 264 F. Supp. 3d 897, 902 (N.D. Ill. 2017). But Britt
includes no such allegations. (Dkt. 70 ¶¶ 26, 29.)
Britt’s declaratory judgment claim fails as a matter of law. 5

The Court’s conclusion obviates the need to address Durham’s
alternative arguments that the subsequent songs are “derivative works”
and that the tag is not “independently copyrightable.” (Dkt. 41-1 at 12.)

5

18

B.

Count Five: False Designation of Origin under Lanham
Act Against Durham

Britt also brings a claim against Durham for false designation of
origin under the Lanham Act. (Dkt. 70 at 29.) Section 43(a) of the
Lanham Act creates a civil cause of action against any person who, when
selling any goods, “uses in commerce . . . any false designation of origin”
that “is likely to cause confusion . . . as to the association of such person
with another person or as to the origin . . . of his or her goods.”
15 U.S.C. § 1125(a)(1)(A). To state a traditional false designation claim,
“a plaintiff must show (1) that the plaintiff had enforceable . . . rights in
the mark or name and (2) that the defendant made unauthorized use of
it such that consumers were likely to confuse the two.” Crystal Ent. &
Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1320 (11th Cir. 2011).
Britt alleges Durham registered the phrase “Run that back Turbo”
as a trademark, that both Plaintiff and Durham distribute music to the
public, and that, by including the introductory tag in the subsequent
songs, Durham “created a likelihood of confusion as to the origin” of the
subsequent songs. (Dkt. 70 ¶ 108.) Durham moves to dismiss on the
grounds that Britt fails to allege he has trademark rights to the
introductory tag and, in fact, concedes Durham trademarked the line.
19

(Dkt. 41-1 at 30–32.) In response, Britt insists he asserts a so-called
“reverse-passing-off” claim under the Lanham Act. (Dkt. 45 at 17-19.) A
reverse-passing-off occurs when a “producer misrepresents someone
else’s goods or services as his [or her] own.” Dastar Corp. v. Twentieth
Century Fox Film Corp., 539 U.S. 23, 27 n.1 (2003).

To state a

reverse-passing-off claim, a plaintiff “must allege the following: (1) that
the item at issue originated with the plaintiff; (2) that the 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” such designation of origin. Del Monte Fresh
Produce Co. v. Dole Food Co., 136 F. Supp. 2d 1271, 1290 (S.D. Fla. 2001).
Britt fails to state a reverse-passing-off claim for two reasons. First,
such a claim arises from the core allegation that a plaintiff originated an
item at issue, but the defendant passed the item off as its own. See id.
(requiring “the item at issue originate with plaintiff”). Britt alleges just
the opposite—that the Corporate Defendants and Durham created the
subsequent songs.

And Britt repeatedly alleges they claim sole

ownership of the subsequent songs. Britt’s claim to the introductory tag
cannot revive this claim as he conceded Durham trademarked it. The

20

facts alleged simply don’t give rise to a plausible allegation that Durham
seeks to pass of Plaintiff’s item as his own.
Second,

and

more

importantly,

Britt’s

claim

stretches

a

reverse-passing-off claim beyond the bounds of the Lanham Act as
established by the Supreme Court. In Dastar Corp., the Supreme Court
considered whether an original producer of a television series could
maintain a reverse-passing-off claim against a company that used the
original footage in subsequent—and significantly altered—videotapes
without providing credit to the original creator. Id. at 27. In rejecting
such a claim, the Supreme Court analyzed the meaning of the terms
“origin” and “goods” as used in the Lanham Act. The Supreme Court
concluded the term “origin” refers to “that from which anything primarily
proceeds” or its “source” and that the term “goods” refers to “wares” or
“merchandise.” Id. at 31. Putting the terms together, the Court held the
term “origin of goods” refers to “the producer of the tangible product sold
in the marketplace”—in that case, the videotapes the defendant sold. Id.
The Court concluded that definition could be stretched to include the
trademark owner of the item produced. Id. But the statutory language
“origin of goods” could not be stretched to include “the person or entity

21

that originated the ideas or communications that the ‘goods’ embody or
contain”—in that case, the original producer of the television series that
was copied (in large part) into the videotapes. Id. The Supreme Court
reiterated that the phrase “origin of goods” refers “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.” Id. at 37.
That holding precludes Britt’s claim here. Britt is not the “origin”
of any of the subsequent songs in this case. He concedes this by alleging
Durham, the Corporate Defendants, and others created those songs. And
he does not allege they falsely represented that fact. Britt is like the
plaintiff in Dastar.

Britt (like that plaintiff) claims he originated a

component (the introductory tag “Run that back Turbo”) and that
someone else then incorporated that original item into something new
(the subsequent songs). Britt (like the Plaintiff in Dastar) may have been
the “originator of the ideas or communication that the good embodies or
contains,” but that is not enough to state a claim under the Lanham Act.6

6 The claim in Dastar involved a work in the public domain after the

expiration of copyright protection. The Supreme Court, however, “gave
no indication that its holding would be affected by the presence of a viable
copyright” and thus “the Court’s interpretation of ‘origin’ does not depend

22

Citing Montgomery v. Noga, 168 F.3d 1282, 1298 (11th Cir. 1999),
Britt argues “the act of placing a copyright notice on an infringing
product can be a false designation” under the Lanham Act. (Dkt. 45
at 18.) Britt’s assertion is irrelevant to his allegations here. He alleges
the Defendants’ act of “attaching [Britt’s] recorded voice to the sound
recordings” (not a false copyright) created a likelihood of confusion. (Dkt.
70 ¶ 108.)

The introductory tag “Run that back Turbo” contains no

reference to a copyright or other intellectual property right. And Britt
contends Durham registered the trademark.
In any event, Montgomery does not stand for the principle Britt
alleges.

In that case, the plaintiff created a software program that

enabled someone to view photographs on a computer. 168 F.3d at 1286.
Without the plaintiff’s permission, the defendants used the software as a
utility on compact discs that contained erotic images. Id. at 1287. The
defendants activated a feature of the software that caused the plaintiff’s
copyright notice to disappear. Id. The defendants argued the plaintiff’s

on the copyright status of the plaintiff’s creative material.” Hustlers, Inc.
v. Thomasson, 2004 WL 3241667 at *3 n.1 (N.D. Ga. Dec. 29, 2004)
(citation omitted).
23

Lanham Act claim failed as a matter of law because the “act of omitting
a copyright notice alone cannot constitute a [Lanham Act] violation.” 168
F.3d at 1297.

The Eleventh Circuit observed, however, that the

defendants’ argument “mischaracter[ized] the facts.”

Id.

The

defendants’ argument overlooked various other actions and statements
constituting “false designation of origin,” most importantly evidence each
disc included a help menu (owned and copyrighted by the plaintiff) on
which one of the defendants (wrongfully) claimed ownership and a
copyright.

Id. at 1297.

The Eleventh Circuit held such a claim of

ownership was sufficient to allege a false designation claim under the
Lanham Act. Id. at 1298. That case does not support Britt’s specific
claims, and the Court concludes Britt fails to state a reverse-passing-off
claim under the Lanham Act.
C.

Counts Three and Four: Copyright Infringement and
Vicarious Infringement Against Corporate Defendants

Britt alleges two copyright infringement claims against the
Corporate Defendants: traditional copyright infringement and vicarious
infringement. (Dkt. 70 at 24–25.) On the first, Britt alleges he was a
“joint author” of the subsequent songs, that “joint authors cannot transfer
. . . or license the ability to use the copyrighted work on an exclusive basis
24

to a third party,” and that Durham “entered into agreements purporting
to transfer or license the entire interest” in the subsequent songs to the
Corporate Defendants. (Id. ¶¶ 87–88.) In his vicarious infringement
claim, he alleges that Durham “direct[ly] infringe[d] . . . Plaintiff’s
copyright interests by exclusively . . . licensing” the “sound recordings”;
that the Corporate Defendants “had the ability to . . . control” Durham
and his “distributing” or “commercializing” of the “sound recordings”; and
that the Corporate Defendants tolerated and reaped a financial windfall
from the alleged infringements. (Id. ¶¶ 95–97, 100.)
1.

Copyright Infringement

A direct copyright infringement claim requires Britt to show
“(1) ownership of a valid copyright, and (2) copying of constituent
elements of the work that are original.” Feist Publ’ns, Inc. v. Rural Tel.
Serv. Co., 499 U.S. 340, 361 (1991); Oravec v. Sunny Isles Luxury
Ventures, L.C., 527 F.3d 1218, 1223 (11th Cir. 2008).

As the Court

already concluded, Britt has not sufficiently alleged ownership in the
subsequent songs.7 Significantly, Britt also does not allege infringement

7 In his copyright claim, Britt alleges all contributions to the subsequent

songs “were provided with the intention of having them merged together

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of the underlying copyright for Afghanistan. His allegations refer to the
joint authorship of the “sound recordings listed herein,” meaning the
subsequent songs. (Dkt. 70 ¶¶ 84–87.) So, to the extent his claim for
copyright infringement arises from the alleged joint-authorship of the
subsequent songs for which he has no ownership, his claim fails.
Britt then charts another path, alleging Durham “entered into
agreements purporting [to] transfer or license[]” exclusively “the entire
interest” of Afghanistan. (Id. ¶ 88.) He alleges Durham did not have the
right to do that and, therefore, the licenses “effectively infringed upon”
his “exclusive right to distribute his work.” (Id.) While a little difficult
to understand, Britt seemingly claims the Corporate Defendants used the
copyrighted work under exclusive licenses, thus infringing his copyright.
Britt and Durham co-wrote Afghanistan and are co-owners of the
copyright. 17 U.S.C. § 201. Copyright owners have “the exclusive rights
to do and to authorize” certain actions. 17 U.S.C. § 106. This includes

to achieve primary significance of completing each work.” (Dkt. 70 ¶ 85.)
This vague assertion does not plausibly allege the Defendants’ intent to
be co-authors with Britt on the subsequent songs. Iqbal, 556 U.S. at 678.
And even if it did, Britt does not include this allegation in his declaratory
judgment claim regarding co-ownership.
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the right “to distribute copies . . . of the copyrighted work to the public”
by specific transfers of ownership. 17 U.S.C. §§ 106(2), (3). “Owners may
license others to exercise these rights . . . .” Davis v. Blige, 505 F.3d 90,
98 (2nd Cir. 2007).

“There are two general categories of licenses:

non-exclusive licenses, which permit licensees to use the copyrighted
material and may be granted to multiple licensees; and exclusive
licenses, which grant to the licensee the exclusive right . . . to use the
copyrighted material” under terms of the license. Id. at 99. Although a
co-owner cannot unilaterally grant an exclusive license, the “co-owner
may grant a non-exclusive license to use the work unilaterally.” Id.
at 100. “A valid license of either sort immunizes the licensee from a
charge of copyright infringement.” Id. (citation omitted).
Again, Britt seems to suggest Durham granted the Corporate
Defendants exclusive licenses over the entire copyright, which would
have required Britt’s consent as co-owner. (Dkt. 70 ¶ 87.) But, as the
Corporate Defendants accurately observe, Britt contends Durham
granted numerous licenses. He seems to allege Durham granted an
exclusive license to the producer of each one of the subsequent songs,
many of whom are different entities. Britt does not explain how Durham

27

could have granted an exclusive again and again to different entities. See
Exclusive License, Black’s Law Dictionary (11th ed. 2019) (“A license that
. . . prohibits the licensor . . . from granting the right to anyone else; esp.
such a license of copyright . . . .”). His allegation that each license was
“exclusive” is conclusory and not plausible. Britt drives this point home
by claiming he needs discovery “to assess what rights the Corporate
Defendants have” and perhaps show Durham did not “rightfully” license
the original song. (Dkt. 64 at 12.) But “[d]iscovery follows a well-pleaded
complaint; not the other way around.” Carter v. Dekalb Cnty., 521 F.
App’x 725, 729 (11th Cir. 2013). His allegations are insufficient.8 The

8 Even if Durham tried unilaterally to pass numerous exclusive licenses

over the entire work, that would be ineffective. See Davis, 505 F.3d at 99
(“An owner may not, however, convey the interests of his fellow co-owners
without their express written consent, even if the transferee has no notice
of the non-consenting owners’ interest.”); see also Brownstein v. Lindsay,
742 F.3d 55, 68 (3d Cir. 2014) (“Accordingly, the only way for truly
exclusive rights to be conveyed to a joint work is for all co-authors to
consent to such an exclusive conveyance.”); 1 Nimmer on Copyright
§ 6.12[C][3] (2024) (“Since . . . a grant executed by less than all of the joint
owners of a copyright is necessarily non-exclusive, it follows that any
such grant constitutes a non-exclusive license.”). Durham cannot pass
more rights than he owns because he “failed to obtain [Britt’s] consent.”
(Dkt. 70 ¶ 31.) Assuming the truth of Britt’s allegations, any purported
“exclusive” license that Durham tried to pass would only constitute a
non-exclusive license. Durham had the right to do that.
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license that Britt alleges Durham granted the Corporate Defendants
immunizes them from any infringement claim. Davis, 505 F.3d at 100.
Britt, therefore, fails to state an infringement claim against those
Defendants.
2.

Vicarious Infringement

“Liability for vicarious copyright infringement arises ‘when the
defendant profits directly from the infringement and has a right and
ability to supervise the direct infringer, even if the defendant initially
lacks knowledge of the infringement.’” BUC Int’l Corp. v. Int’l Yacht
Council Ltd., 489 F.3d 1129, 1138 n.19 (11th Cir. 2007) (quoting Mayer
Studios Inc. v. Grotsker, Ltd., 545 U.S. 913, 931 n.9 (2005)); Ellison v.
Robertson, 357 F.3d 1072, 1076 (9th Cir. 2004) (explaining vicarious
liability exists “if [someone] enjoys a direct financial benefit from
another’s infringing activity”) (emphasis added). As here, “[t]he lines
between direct infringement . . . and vicarious liability are not clearly
drawn.” Casella v. Morris, 820 F.2d 362, 365 (11th Cir. 1987) (quoting
Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 435 (1984)).
As already explained Durham (as co-owner of the copyright) had
the authority to grant licenses. So the Corporate Defendants could not

29

have benefited from the acts of an infringer. And even if Britt has
properly alleged Durham improperly granted multiple exclusive licenses
over his interest, that would not matter because Durham only had the
ability to offer non-exclusive licenses. No matter the analysis, Britt has
failed to allege adequately that the Corporate Defendants benefitted from
Durham’s improper infringement of the copyright he co-owned.
D.

State Law Claims (Counts Two, Five, and Eight)

Britt alleges this Court has supplemental jurisdiction over his
Georgia state law claims for accounting (Count Two), fraudulent
misrepresentation (Count Six), unjust enrichment (Count Seven), and
right of publicity/misappropriation of likeness (Count Eight). (Dkt. 70
¶ 1.) Neither party addresses whether the Court should continue to
exercise supplemental jurisdiction, so the Court raises the issue itself.
Miller v. City of Fort Myers, 424 F. Supp. 3d 1136, 1152 (M.D. Fla. 2020);
see Est. of Owens v. GEO Grp., Inc., 660 F. App’x 763, 775–77
(11th Cir. 2016) (affirming district court’s “sua sponte declin[ation] to
exercise supplemental jurisdiction”).
A federal court has the discretion to decline supplemental
jurisdiction when it has dismissed all claims over which it has original

30

jurisdiction. 28 U.S.C. § 1367(c)(3). “In making this decision, the court
should take into account concerns of comity, judicial economy,
convenience, fairness, and the like.” Cook ex rel. Est. of Tessier v. Sheriff
of Monroe Cnty., 402 F.3d 1092, 1123 (11th Cir. 2005). “[I]n the usual
case in which all federal-law claims are eliminated before trial, the
balance of factors will point toward declining to exercise jurisdiction over
the remaining state-law claim.”

Bruce v. U.S. Bank Nat’l Ass’n,

770 F. App’x 960, 966 (11th Cir. 2019) (quoting Carnegie-Mellon Univ. v.
Cohill, 484 U.S. 343, 350 n.7 (1988)). Indeed, “if the federal claims are
dismissed prior to trial, Gibbs strongly encourages or even requires
dismissal of state claims.’” L.A. Draper & Son v. Wheelabrator–Frye, Inc.,
735 F.2d 414, 428 (11th Cir. 1984) (citing United Mine Workers v. Gibbs,
383 U.S. 715, 726 (1966)). That is so because “[n]eedless decisions of state
law should be avoided both as a matter of comity and to promote justice
between the parties.” Gibbs, 383 U.S. at 726. Because Britt failed to
allege adequately any federal claims, the Court will not exercise
supplemental jurisdiction over the state law claims.
This is a classic case in which declining to exercise supplemental
jurisdiction is warranted. Britt’s remaining claims arise entirely under

31

state law. The principal actors, Britt and Durham, appear to reside in
Georgia, which is where many events underlying this lawsuit occurred.
(See, e.g., Dkt. 70 ¶¶ 3–5.)

And the case is still in its early

stages—discovery has not begun. (Dkt. 42.) Furthermore, Britt’s claim
that Defendants violated his right to publicity by appropriating his voice
for financial gain “raises a novel or complex issue of state law.” 28 U.S.C.
§ 1367(c)(1). While Georgia courts recognize the common law right of
publicity, see Martin Luther King, Jr., Ctr. for Soc. Change, Inc. v. Am.
Heritage Prods., Inc., 296 S.E.2d 697 (Ga. 1982), the parties disagree as
to whether that right extends to the alleged “misappropriation of voice.”
(Dkts. 53-1 at 26; 64 at 22.) A Georgia court should answer that question.
The Court, therefore, will not exercise supplemental jurisdiction over any
state law claims.9
III. Conclusion
The Court GRANTS Durham and the Corporate Defendants’
Motions (Dkts. 41 and 53) and DISMISSES the Lanham Act claim
WITH PREJUDICE and the other federal claims WITHOUT

9 In the light of the Court’s conclusions, it need not reach Defendants’

preemption arguments.
32

PREJUDICE. The Court DISMISSES WITHOUT PREJUDICE all
remaining state law claims for lack of subject matter jurisdiction. The
Court DIRECTS the Clerk to close this case.
SO ORDERED this 7th day of March, 2025.

(1

1

MICH"K E L L. B R O W N

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