IP Law Daily, TOP STORY—S.D.N.Y.: Website operator liable for using images of hip-hop artist 50 Cent without permission, (Mar 25, 2014)

By Thomas Long, J.D.

Hip-hop artist Curtis James Jackson, III (professionally known as “50 Cent”), as well as a recording label and an entertainment company of which Jackson was the president, established, as a matter of law, that a website operator and affiliated businesses used images of Jackson without permission on a website in violation of New York state law, the federal district court in New York City has ruled (Jackson v. Odenat, March 24, 2014, Keenan, J.). The plaintiffs were granted summary judgment on their New York state-law publicity rights claims, as well as a claim that the website operator infringed two copyrighted photographs they owned. Summary judgment was denied, however, on Lanham Act false endorsement and trademark infringement claims because there was a genuine issue of material fact as to whether the defendants’ use of Jackson’s persona and a trademark he owned were likely to cause consumer confusion as to the plaintiffs’ sponsorship of or affiliation with the defendants’ website.

Jackson is an internationally known recording artist whose first two albums had sold over 25 million copies. He has been nominated 13 times for a Grammy Award. Along with his solo career, Jackson was a member of the “G-Unit” musical group. Jackson also is the president of plaintiffs G-Unit Records and Tomorrow Today Entertainment, which, respectively, marketed G-Unit’s music and operated a website promoting Jackson, G-Unit, and hip-hop culture and entertainment in general. Jackson owned a federal trademark registration for “G-Unit.”

Third-party plaintiff Yves Mondesir is a New Jersey disc jockey who has worked with G-Unit. He creates mixtapes—or compilations—that include the music of various artists, and he distributes the mixtapes to retailers for promotional purposes. Sometime in 2005, Mondesir released a mixtape featuring songs by Jackson.

In July 2005, defendant Lee Odenat launched the website www.worldstarhiphop.com. The website has featured various hip-hop mixtapes and videos of hip-hop musicians. From 2005 until March 2009, the website used three different mastheads that included images of Jackson. The first masthead was displayed from 2005 until mid-2006 and included images of Jackson, Mondesir, and other hip-hop artists. The second masthead was displayed form mid-2006 through April 2007 and included different images of Jackson, Mondesir, two other members of the G-Unit group, and another hip-hop performer. This masthead also included a link labeled “G-Unit Radio” that led to a website displaying thumbnails of the cover art for several mixtapes. From April 2007 to January 2008, the website was nonoperational. After a relaunch, until March 2009, the site used a new masthead featuring images of Jackson and recording artists Jay-Z and Jim Jones.

The plaintiffs filed suit on June 18, 2009, alleging that Odenat engaged in trademark infringement, false endorsement, violation of the New York publicity rights statute, and copyright infringement. Odenat raised various defenses, including fair use, implied license, and equitable estoppel. Various companies formed by Odenat were later added as defendants.

In October 2010, with the plaintiffs’ consent, Odenat filed a third-party complaint against Mondesir, seeking indemnification under theories of contributory copyright infringement, contributory trademark infringement, and contribution for violation of the New York publicity rights statute.

The plaintiffs and defendants cross-moved for summary judgment on all claims and defenses. Mondesir moved for summary judgment.

Copyright Infringement

The defendants were accused of infringing copyrights in photographs of two members of Jackson’s “G-Unit” hip-hop group, Lloyd Banks and Tony Yayo. The photos were displayed along with other images on one of the www.worldstarhiphop.com website’s mastheads.

Ownership of valid copyright. The court determined that the plaintiffs owned valid copyrights in the photographs of Banks and Yayo. The photos had been registered by G-Unit Records along with two of G-Unit’s albums. The plaintiffs presented a certificate of registration for the albums Beg for Mercy and Thoughts of a Predicate Felon. The registrations indicated that the copyrights were for both a sound recording and pictorial matter. They also produced an unrebutted declaration attesting that the picture of Banks was included in the pictorial matter registered with Beg for Mercy, and the picture of Yayo was registered as part of the pictorial matter accompanying Thoughts of a Predicate Felon.

The defendants argued that the pictures were incorrectly filed as part of the registration for sound recordings. However, the filing of the photos along with their respective sound recordings was in accordance with Copyright Circular 56 and 37 CFR §202.3(b)(2)(ii)(C). The latter provided that a registration for a work consisting of or including a sound recording shall be submitted on Form SR. The plaintiffs had filed their registrations using that form. Circular 56, according to the court, contemplated the filing of “artwork, photographs, and/or liner notes” along with a sound recording.

The registrations indicated that the photos were works made for hire, which meant that G-Unit Records was presumed to be the author of the works. The defendants did not present evidence to rebut this presumption.

Copying of protectable elements. The defendants did not contest the allegation that the images of Banks and Yayo used in the second masthead were actual copies of the photos filed as pictorial matter with the sound recordings. The copying was more than de minimis. Although the images on the masthead appeared to have been cropped, they were recognizable likenesses of Banks and Yayo. The defendants did not claim that Jackson or Mondesir ever authorized Odenat to use the photos.

Therefore, the court determined, the plaintiffs were entitled to summary judgment as to copyright infringement.

Publicity Rights

A successful claim for violation of the right of publicity under New York Civil Rights Law Sec. 50 and 51 required showing (1) use of the plaintiff’s name, portrait, picture, or voice (2) for advertising purposes or for the purposes of trade (3) without consent and (4) within the state of New York. The defendants contested only the first element.

The defendants admitted that the three images at issue were images of Jackson. However, they argued that they were not recognizable likenesses of him. They also argued that the publicity rights claims were barred by the statute of limitations.

Recognizable likenesses. Whether a photograph is a recognizable likeness of a plaintiff is ordinarily a jury question. However, summary judgment was appropriate when the person in the photo could be recognized by someone who knew him, even if the photo was of poor quality.

The three images used for the mastheads were shots of Jackson’s face. Two showed Jackson directly facing the camera, and the third showed Jackson in profile. Despite the fact that the images contained shadows obscuring portions of them, the pictures clearly captured the shape of Jackson’s face. The court concluded that the photos were recognizable likenesses of Jackson because someone familiar with him would be able to identify him in the mastheads.

Statute of limitations. The defendants raised a statute of limitations defense during the summary judgment phase of the proceedings, but they did not assert such a defense in their answer. Because the deadline to amend pleadings had passed, the defendants were required to show good cause in order to amend their answer to add the statute of limitations defense.

The defendants’ only justification for failing to include the defense in their answer was that they meant to assert a generalized statute of limitations defense but mistakenly tied the defense to the copyright claim. The court noted that the defendants had four months after filing the answer to catch their mistake, and then after the deadline for amending pleadings, they had over three years to bring the mistake to the court’s attention. The defendants’ failure to do so indicated a lack of due diligence. Therefore, leave to amend was denied, and the statute of limitations did not bar entry of summary judgment in favor of the plaintiffs on the publicity rights claims.

False Endorsement

The plaintiffs asserted that the use of Jackson’s persona and the “G-Unit” trademark on the mastheads constituted false endorsement and unfair competition under Sec. 43(a) of the Lanham Act. Several courts had recognized that celebrities have a trademark-like interest in their individual personas, for purposes of Sec. 43(a). False endorsement claims under Sec. 43(a) had succeeded in cases in which a celebrity’s image or persona was used in association with a product so as to imply that the celebrity endorsed the product.

Success on the Sec. 43(a) claims depended on establishing a likelihood of confusion. After reviewing each masthead, the court concluded that a reasonable jury could conclude either that the mastheads created the impression that Jackson or G-Unit sponsored or approved of worldstarhiphop.com, or that no such confusion was likely. Although the overall impression of the mastheads did not inevitably lead to a determination of likely confusion, the court evaluated the evidence as to each of the likelihood of confusion factors to determine whether the plaintiffs had presented enough evidence to survive the defendants’ motion for summary judgment.

Strength of mark. Odenat had acknowledged that both Jackson and the G-Unit mark were “well known,” particularly among hip-hop fans. The plaintiffs also presented evidence that Jackson had sold over 25 million copies of his albums. Jackson’s notoriety was established by the time of his internationally successful first release in 2003, well prior to the launch of the defendants’ website in 2005. This factor weighed in the plaintiffs’ favor.

Similarity. The defendants used actual pictures of Jackson, and they used the dominant portion of the “G-Unit” trademark. Although there were differences between the mark as used by the plaintiffs and mark as displayed by the defendants, a jury could find that this factor weighed in the plaintiffs’ favor.

Proximity. There was evidence that the parties all catered to hip-hop fans and therefore were in competitive proximity. Although the defendants argued that they were not in direct competition with Jackson and G-Unit because the defendants were website operators and not recording artists or clothing sellers, direct competition was not required. In addition, Jackson had operated a website since 2007, so he may have been in actual competition with the defendants’ website.

Actual confusion. A jury could conclude that email and anecdotal evidence provided by the plaintiffs was evidence that consumer had actually been confused by the defendants’ conduct.

Bad faith. Odenat’s knowledge of Jackson’s persona and the G-Unit mark—as well as a request he made to his website designer that the “hottest rappers” be featured on the mastheads—could allow a reasonable jury to conclude that Odenat intended to capitalize on Jackson’s goodwill.

Balancing of factors. A rational jury could conclude that there is or is not a likelihood of confusion, the court said. The plaintiffs provided sufficient evidence of each factor to demonstrate a genuine dispute on the issue. Therefore, neither party was entitled to summary judgment.

Trademark Infringement

The plaintiffs also asserted a trademark infringement claim under Sec. 32(a) of the Lanham Act. There was no dispute as to the validity of the “G-Unit” mark. As previously discussed, the court concluded that the question of likelihood of confusion had to be decided by a jury. Neither party was entitled to summary judgment on this claim.

Fair Use

The defendants asserted fair use as an affirmative defense as to their display of Jackson’s persona. To establish fair use, they were required to show that use of Jackson’s image was (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.

The fair use defense failed as a matter of law on the second prong, the court held. There was no authority supporting the fair use of a celebrity’s image or likeness to describe a good or service. Jackson’s image, standing alone, only evoked Jackson’s persona and did not, by itself, describe anything about the defendants’ website. The image alone did not convey the idea that the website contained videos of Jackson. Moreover, the mastheads gave no indication that the website contained videos of the hip-hop artists shown in them.

Implied License and Equitable Estoppel

The defendants argued that Mondesir’s course of conduct with Odenat gave rise to an implied license to use Jackson’s persona and the G-Unit mark. Mondesir allegedly provided Odenat with mixtapes that included songs by Jackson to make them available on workdstarhiphop.com. Mondesir allegedly told Odenat that he could use the “G-Unit” mark and Jackson’s image on the website.

However, the court said, Mondesir lacked the requisite apparent authority to bind Jackson, for purposes of an implied license. Mondesir’s distribution of the mixtapes was an action by Mondesir, not Jackson. There was no evidence that Jackson knew of or had reason to know of Mondesir’s authorization for Odenat to use the “G-Unit” mark and the images of Jackson. The lack of apparent authority to bind Jackson also defeated the defendants’ equitable estoppel defense, the court said.

In addition, the implied license defense failed for lack of reasonableness. Mondesir was characterized as Jackson’s sometime-DJ, collaborator, and distributor of mixtapes. It was not clear how this relationship would give Mondesir the right to license away Jackson’s intellectual property.

Contributory Copyright and Trademark Infringement

Mondesir was entitled to summary judgment as to contributory copyright and trademark infringement claims brought against him by Odenat. An infringer has no right to contribution under federal copyright or trademark law.

Claim for Contribution for Violation of Publicity Rights Law

Unlike copyright and trademark law, there was a general right for a defendant to recover from joint tortfeasors under New York law. Odenat asserted that Mondesir induced Odenat’s use of Jackson’s images on his website. Odenat could go forward with a claim for contribution, the court held.

The case is No. 09 Civ. 5583 (JFK).

Attorneys: Michael Cardello, III (Moritt Hock Hamroff & Horowitz LLP) for Curtis James Jackson, III. Scott Zarin (Zarin & Associates, P.C.) for Lee Q. Odenat. John P. Fazzio (Fazzio Law Offices) for Yves Mondesir.

Companies: Tomorrow Today Entertainment, Inc.; G-Unit Records, Inc., Worldstar Hip Hop, Inc.; Worldstar, LLC; WSHH337, LLC

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