Antitrust Law Daily Wrap Up, ADVERTISING—6th Cir.: Movie and soundtrack did not misappropriate identity of soul singer Sam Moore, (Nov 1, 2013)

By Thomas Long, J.D.

The producers and distributors of the 2008 motion picture Soul Men did not violate the right of publicity under Arizona law by unlawfully basing the movie on the life and career of musical entertainer Samuel Moore and his deceased former partner, Dave Prater, who performed together under the name “Sam & Dave,” the U.S. Court of Appeals in Cincinnati has held (Moore v. Weinstein Company, LLC, October 31, 2013, Cook, D.). A decision of the federal district court in Nashville was affirmed. The appellate court also affirmed dismissal of Moore’s federal and state-law trademark and unfair competition claims, state trademark dilution claims, and state consumer protection claims.

Moore and Prater, performing as “Sam & Dave,” recorded the song “Soul Man” in 1967 for the Stax record label in Memphis. The song, written by Isaac Hayes and David Porter, was a hit. Sam & Dave performed together until the early 1980s, and Prater died in 1988. Moore continued to perform and make celebrity appearances.

The 2008 motion picture Soul Men was produced by The Weinstein Company and distributed by Metro-Goldwyn Mayer Studios, Inc. A DVD version was distributed by Genius Products, LLC, and a soundtrack album was created and distributed by Concord Music Group, Inc. Moore asserted that these entities violated his intellectual property, publicity, and privacy rights by producing, promoting, and distributing the movie and the soundtrack.

The film, starring Samuel L. Jackson and Bernie Mac, told the fictional story of two background singers from a 1960s and 1970s soul group who reunite and travel across the country. Although the characters in the movie were shown performing a cover version of one song for which Sam & Dave were known—”Hold On, I’m Comin’”—the characters were not referred to as Sam & Dave, and Moore’s name and likeness did not appear in the film.

Lanham Act and State Unfair Competition Claims

Moore asserted that he had trademark rights in the phrase “Soul Man,” as well as variations on the phrase, and that he was professionally known as “The Legendary Soul Man.” In the district court’s view, Moore failed to present sufficient evidence to support a finding that consumer confusion was likely or that any marks he owned were famous for purposes of the federal trademark dilution statute.

After reviewing the record and the district court’s opinion, as well as the parties’ submissions, the appellate court determined that “the district court properly dispensed with Moore’s Lanham Act and claims and further explanation would be duplicative and serve no jurisprudential purpose.” The appellate court therefore adopted the district court’s reasoning and affirmed the grant of summary judgment to the defendants on those claims.

Publicity Rights

Moore contended that the defendants violated his right of publicity by using his name, likeness, and persona in the movie and for commercial exploitation. The district court applied Arizona law, which uses the Restatement (Third) of Unfair Competition. The district court found that Moore could not establish identity misappropriation and granted summary judgment to the defendants. On appeal, Moore argued that the district court improperly evaluated and failed to consider relevant evidence.

A viable publicity rights claim requires: (1) defendant’s use of plaintiff’s identity; (2) the appropriation of plaintiff’s name or likeness to the defendant’s advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury. In addition, the First Amendment was implicated in such claims, which, as the Restatement explains, fundamentally constrain the right to free speech. The district court had found that there is “an inherent tension between the right of publicity and the right of freedom of expression under the First Amendment” that is “particularly acute when the person seeking to enforce the right is [] famous.” Therefore, it is not actionable to use a person’s identity in entertainment, works of fiction or nonfiction, or in advertising that is incidental to such uses, the appellate court noted. Such works would include the use of a person’s identity in a novel, play, or motion picture.

To determine the proper balance between Moore’s publicity rights and the First Amendment, the appellate court applied the “transformative elements test” set forth by the California Supreme Court in Comedy III Productions, Inc. v. Gary Saderup, Inc., 21 P.3d 797 (Cal. 2001). Under that test, courts weigh the appropriated likeness against the appropriating work’s expressiveness, evaluating “whether a product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness.” Such “transformed” works are outside the reach of the right of publicity.

Use of identity in the movie. Even if Moore could demonstrate that the defendants had appropriated his identity, the defendants had added significant creative components of their own, such that the movie contained transformative elements that made it worthy of First Amendment protection, in the court’s view. Such transformation also made it less likely that the purported use of Moore’s identity would harm the economic interest protected by the right of publicity.

Moore’s image in advertising inserts. Moore argued that the First Amendment did not protect the use of his image in advertising inserts packaged with the soundtrack’s compact discs and the DVD version of the movie.

The inserts were intended to promote other Concord-owned CDs and DVDs. Several pages of the insert, titled “THE ORIGINAL SOUL MEN ARE AT STAX,” reprinted cover art from various Stax Records albums by a number of different artists and featured images of three DVDs. One of the DVD covers, for “The Stax/Volt Revue Live in Norway 1967” (“Concert Cover”), displayed the names and images of the performers in a 1967 concert, including Sam & Dave.

Moore did not dispute that Concord owned the rights to promote the video depicted in the Concert Cover, which featured a concert in which he had performed. Furthermore, the insert title page, “THE ORIGINAL SOUL MEN ARE AT STAX,” clearly referred to the numerous soul albums advertised in the insert, of which the Concert Cover was but one, the court noted. Moore offered no evidence that the title page caused confusion. No reasonable juror would mistake the “Soul Men” in the insert title as a reference for Sam & Dave, in the court’s opinion.

Accordingly, Moore failed to demonstrate that there was a genuine issue on this publicity claim, and the district court’s grant of summary judgment was affirmed.

State Trademark Dilution

Moore sued for state trademark dilution under the Tennessee Trademark Act. The defendants argued that Arizona law governed the claims. Moore argued that it was unnecessary for the court to engage in a conflict-of-laws analysis because no conflict existed between the Tennessee and Arizona trademark statutes. The district court found that a conflict existed; this was error, according to the appellate court. The two states’ laws mirrored one another, virtually word for word. Therefore, it was improper for the district court to dismiss Moore’s state-law dilution claim based on a conflict.

However, the dilution claims still failed because both Arizona and Tennessee required ownership of a mark that is “famous in this state.” The “famousness” factors laid out by the state statutes—which tracked those of the Lanham Act—indicated that Moore could not establish the requisite fame in his asserted mark.

The district court noted the existence of at least 34 third-party musical albums, currently available for purchase, that either consisted of or incorporated the phrases “soul man” or “soul men.” Moore’s argument that his personal fame required reversal was rejected. The issue was the fame of the asserted mark, not Moore’s fame. Dismissal of the state trademark dilution claims was affirmed.

State Consumer Protection Claims

Moore brought two claims under the Tennessee Consumer Protection Act (TCPA). He asserted that, in connection with the marketing and advertising of the movie, Genius Products’ DVDs, and Concord’s soundtrack, the defendants “intentionally and willfully caused a likelihood of confusion or misunderstanding” as to whether Sam Moore sponsored the movie and soundtrack. Although he did not identify a specific subsection of the TCPA, the court reviewed his claim under the most analogous section, §47-18-104(b)(2), entitled “Causing likelihood of consumer confusion or of misunderstanding as to the source, sponsorship, approval or certification of goods or services.”

The appellate court adopted the district court’s reasoning that, under Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989), the First Amendment limited Moore’s protectable interests in his purported marks. The Sixth Circuit also adopted the district court’s decision that Moore’s “competing titles” claim established no likelihood of confusion. These determinations, along with Moore’s decision not to appeal the district court’s no-likelihood-of-confusion holding and his failure to cite to evidence establishing confusion, foreclosed his TCPA likelihood-of-confusion claim, the court held.

With regard to the second TCPA claim, Moore alleged that the Genius and Concord “intentionally and willfully made, published, disseminated, circulated, and placed before the purchasing public advertisements containing false, deceptive and misleading statements about Sam Moore’s affiliation, connection or association with the Movie.” The court analyzed this claim under §47-18-104(b)(5) of the TCPA, which barred representing that goods or services have sponsorship or approval that they do not have.

This claim failed because Moore failed to make the required allegation that the defendants’ actions deceived or injured any Tennessee consumers. Accordingly, dismissal of the claim was affirmed.

The case is No. 12-5715.

Attorneys: Arnold Paul Lutzker (Lutzker & Lutzker) for Samuel David Moore. Robb S. Harvey (Waller, Lansden, Dortch & Davis) for Weinstein Co., LLC.

Companies: The SJM Trust; Weinstein Co., LLC; Dimension Films; MGM Studios, Inc.; Genius Products, LLC; Concord Music Group, Inc.; Metro-Goldwyn-Mayer Studios, Inc.

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