Antitrust Law Daily Wrap Up, ADVERTISING—N.D. Ill.: “Super Bowl Shuffle” players’ publicity suit remanded to state court, (Jun 2, 2015)

By Jody Coultas, J.D.

The federal district court in Chicago held that six members of the 1985 Chicago Bears football team were entitled to an order remanding to state court their dispute with Renaissance Marketing Corp. relating to the use of their performances in the “Super Bowl Shuffle” song and video (Dent v. Renaissance Marketing Corporation, June 1, 2015, Chang, E.).

Former Chicago Bears players Richard Dent, Steve Fuller, Willie Gault, Jim McMahon, Mike Richardson, and Otis Wilson filed suit in Illinois state court against Renaissance, alleging that Renaissance used their performance in the “Super Bowl Shuffle” without authorization.

In 1985, Richard Meyer, then president of Red Label Records, and the players developed and recorded “Super Bowl Shuffle,” a song and music video, and entered into a royalty agreement. Before the royalty agreement expired, Red Label Records purportedly assigned its interest in the “Super Bowl Shuffle” to Richard Meyer. Meyer’s widow, Julia Meyer, now asserts survivorship rights in the song and video based on that assignment. Renaissance Marketing Corp. is Julia Meyer’s exclusive licensing agent for the “Super Bowl Shuffle.”

According to the players, the assignment by Red Label Records to Richard Meyer was inoperative because the royalty agreement did not allow the label to assign its interest without the players’ consent. Renaissance removed the suit to federal court, contending that the state-law claims were preempted by the Copyright Act.

The court held that the players’ declaratory judgment and conversion claims were preempted by the Copyright Act, and denied their motion to remand the case to state court. Although their claims for a constructive trust, unjust enrichment, and an accounting were not preempted, the court retained supplemental jurisdiction over them.

In their amended complaint filed after the court refused to remand the case, the players removed the preempted claims and added a claim under the Illinois Right of Publicity Act (IRPA). Specifically, the players allege that Renaissance “held themselves out as if they had an affiliation with or authorization from the Shufflin’ Crew to use the Shufflin’ Crew members’ [p]ersonas” and benefitted commercial from the unauthorized use of their personas. Again, the court must determine whether to remand the current claims.

Preemption by Copyright Act. The players’ IRPA claim was not preempted by the Copyright Act, according to the court. The IRPA gives individuals “[t]he right to control and to choose whether and how to use an individual’s identity for commercial purposes” and prohibits the unauthorized use of personal identity for any commercial purpose. In many cases, right-of-publicity claims are preempted by the Copyright Act when the allegedly unauthorized use of a plaintiff’s identity is connected to a performance, reproduction, or distribution of a copyrighted work. However, right-of-publicity claims are not preempted when the alleged unauthorized use of the plaintiff’s identity extends beyond the copyrighted work. In those cases, and the one presently before the court, the plaintiff’s identity or persona is not fixed in a tangible medium of expression. A person’s name and likeness do not become copyrightable merely because they have been placed on works which are subject to copyright law. Because the IRPA claim is based on Renaissance’s use of the Shufflin’ Crew’s identities to advertise the Shuffle itself, and not based on their performances in the Shuffle, the claim was not preempted.

If the players prevail on the IRPA claim, they will be entitled only to revenue attributable to Renaissance falsely holding out that it had an affiliation with or authorization from the Shufflin’ Crew. Renaissance argued that the players did not plead the IRPA claim so narrowly because there was no express disclaimer of copyright damages and no specific allegations detailing how the players’ personas were used apart from the Shuffle itself. However, the disclaimer was implicit in the prayer for relief. Although there were no allegations detailing specific instances of the use of the players’ personas to advertise the Shuffle, obtaining those details is an issue for discovery. If there was no use of the players’ identities apart from their performance in the Shuffle, the defendants could move for summary judgment.

The court relinquished jurisdiction over the state-law claims and remanded the case. Supplemental jurisdiction does not disappear when claim giving rise to original jurisdiction is dismissed, even when the federal claims are dismissed voluntarily. The complex and novel damages issues were purely questions of state law, and best left to a state-court forum. Renaissance cited the Seventh Circuit’s forum manipulation, which holds that dismissal is not mandatory in cases that were removed to federal court and the defendant opposes the remand. However, the court found no evidence that the players were using the manipulative tactics generally found in forum manipulation cases. The players believed they were pursuing state law claims from the beginning, and knew they could not maintain federal copyright claims since they did not own the copyright to the Shuffle. Although there was some risk that copyright damages could be reintroduced into the case, Renaissance could simply re-remove the case.

The case is No. 14 C 02999.

Attorneys: Walid J. Tamari (Tamari Law Group, LLC) for Richard Dent. Karl G. Leinberger (Markoff Leinberger LLC) for Julia Meyer, and Renaissance Marketing Corp.

Companies: Renaissance Marketing Corporation

Cases: Advertising IllinoisNews