The Romantics sued Activision for violation of the right of publicity, false endorsement, unfair competition, and unjust enrichment, based on the use of a soundalike recording of What I Like About You in the videogame Guitar Hero Encore: Rock’s the 80’s [sic]. Defendants secured the appropriate synch licenses for the musical work. They also won summary judgment on all counts. Some highlights:
What I Like About You (video of GH performance; make your own decisions about the fidelity of the soundalike) is available only to advanced players; it’s one of 30 tracks in the game. If a player encounters the song, it’s identified by title and the words “as made famous by The Romantics,” which the court said “informs players and onlookers that The Romantics are not actually performing the Song.” (I’ve got to say, though I think the conclusion is right, the semantics on this are odd. “As made famous” sounds like you’ll be hearing the Romantics’ recording; “which was made famous” sounds more like you won’t be. In any event, What I Like About You isn’t used in ads or marketing for the game, and the band’s name doesn’t appear on the package.
The Romantics don’t own any copyright interest in their sound recording of the song. But they argued that people will are confused about whether The Romantics sponsored or endorsed Guitar Hero. (Actually, the band is not at this time composed of exactly the same people who made the sound recording—this helps the defendant in ways both doctrinal and not, even though personnel turnover wouldn’t ordinarily matter to a pure trademark claim.)
Plaintiffs started badly by arguing that every song creates three distinct rights: (1) the sound recording copyright, (2) the musical work copyright, and (3) a publicity right derived from the performer’s sound.
First, the court found that Michigan wouldn’t recognize a publicity right in the sound of a voice, even if distinctive, or a right of publicity in a combination of voices. Even if it did recognize such a right, it wouldn’t extend the right to this situation, which is not “unauthorized commercial exploitation” of plaintiffs’ identity because there’s no reference to them in ads for the game and because when a player encounters the song the words “as made famous by The Romantics” make clear that The Romantics aren’t actually performing the song. Thus, no reasonable juror could conclude that the song was used to promote the game or that defendants commercially exploited plaintiffs’ identity. (A right of publicity analysis would generally not turn on consumer confusion: it seems that the key here is failure to appear in ads, not the statement in the game itself.)
Plaintiffs appealed to Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir.1988), and Waits v. Frito-Lay, 978 F.2d 1093 (9th Cir.1992). California law, however, has little persuasive force in Michigan. Moreover, the cases were limited to situations in which distinctive voices were deliberately imitated in ads. Plaintiffs failed to show that their “sound” is distinctive, in that it is distinguishable from other singers. The sound associated with What I Like About You came from a different group of people; the lead singer on the song wasn’t a plaintiff. Thus, any sound associated with the song isn’t distinctive to plaintiffs.
The court analogized to Sinatra v. Goodyear Tire & Rubber Co., 435 F.2d 711 (9th Cir.1970), in which Nancy Sinatra sued based on an ad that used a soundalike (and three lookalikes) of her singing her famous song These Boots Are Made for Walkin’. In Sinatra, the court refused to protect a voice that was only distinctive in combination with the particular music and lyrics at hand. There was no reason to think that “her” voice would have been identifiable with another song, and the song was owned by others and licensed to the defendants, as here.
The court further agreed that, were Michigan law to cover this situation, it would violate the First Amendment. The First Amendment protects expressive works against right of publicity claims unless the use of a plaintiff’s identity is “wholly unrelated” to the content of the work or simply a disguised ad for the sale of goods. The court readily concluded that Guitar Hero was an expressive work protected by the First Amendment, involving many creative choices and options for players (they can choose their own costumes!). After that, the result was foreordained: “Given that the purpose of the Game is to allow players to pretend they are in a rock band, the Song is not wholly unrelated to the content of the work.”
This is a particularly good example of the way that both the Rogers v. Grimaldi test applied here and the competing Saderup test applied in California are highly protective of certain expressive works and not very protective of others. With Rogers, art about a celebrity will be protected as long as it doesn’t explicitly claim authorization, whereas a Saderup analysis might well find a lack of transformativeness in the same artwork. Saderup, meanwhile, would protect transformative uses of celebrity identity even if they have no obvious relevance to the artwork (e.g., Rosa Parks), while Rogers can be and has been used to find potential Lanham Act liability in those same circumstances. Here, Rogers let the defendants easily off the hook—of course The Romantics’ identity was relevant; the game used a song they made famous—but we should remember that these victories come with costs for other defendants.
In any event, just in case the state law and First Amendment rulings weren’t enough, the court also found copyright preemption. Defendants argued that plaintiffs were really claiming a right to license the copyright in the sound recording, thus not adding anything distinct from a copyright right.
The court agreed. As pleaded, plaintiffs’ claim arose from the fact that defendants’ sound recording sounded like plaintiffs’. (Here, the absence of confusion in a right of publicity claim hurts plaintiffs: confusion is generally accepted as an extra element of a trademark claim sufficient to defeat copyright preemption, even when confusion is then inferred from similarity.) In fact, plaintiffs’ musicologist focused on the sound recording, not plaintiffs’ “voices” in general, and stated that his aim was to examine “possible copying” from the sound recording. Plaintiffs’ claimed right was therefore equivalent to copyright rights in sound recordings and preempted.
And then, interestingly, the court discussed copyright arguments raised by the parties. Bizarrely, plaintiffs claimed that defendants needed synch licenses both for the musical work and for the original sound recording. This would only have been true, of course, if defendants had used the original sound recording. Moreover, §114(b) explicitly provides that rights in a sound recording don’t extend to soundalikes. (And I think it would have been better to hold that §114(b), rather than §301, preempted this claim, based on conflict preemption: Congress intended anyone to be able to make soundalikes, and made no exception for when a soundalike is used to promote a product or service. But since it doesn’t matter here I won’t complain much.)
The Lanham Act and state unfair competition claims fared no better. Initially, the First Amendment analysis was the same as for the right of publicity.
Moreover, the court found that plaintiffs failed to make a prima facie case of infringement. Given that plaintiffs’ “sound” was not distinctive, there was no “mark” to protect. Separately, the Second Circuit has made clear that trademark law doesn’t give performers rights in their “signature” performances—the song isn’t a mark for the singer. Trademark shouldn’t be used to protect the “essence” of a sound recording; that’s for copyright.
Plaintiffs also failed to provide admissible evidence of likely confusion. The court here focused on the absence of non-hearsay evidence from actual consumers, even though plaintiffs had nine months in which to develop such evidence. Actual confusion evidence is supposedly not dispositive; the court didn’t analyze the other factors, though they might well have been unhelpful, as they so often are in cases involving a defendant’s truthful reference to a separate entity.
Interestingly, the court also discounted evidence that third parties had mistakenly thought that the sound recording in the game was the original sound recording, and had thus stated that The Romantics were part of the game. The court reasoned that defendants had no control over the fan blog or the Amazon.com page that made the misstatements. This may have been a failure of plaintiffs’ argument: the question is not whether defendants made the misstatements, but whether the mistakes reveal relevant confusion; other courts have treated third-party confusion as probative of likely consumer confusion (and the fan is probably a consumer, not a third party). I should note, however, that being mistaken about whether the original sound recording appeared in the game is not at all the same thing as being mistaken about source or sponsorship, and as far as I could tell from the opinion none of the evidence—hearsay or not—went to that issue, which is the only one that should matter.
The unjust enrichment claim also failed; defendants are entitled to use the song.