Friday, November 01, 2013

Soul man is sad man

Moore v. Weinstein Co., LLC, No.12-5715 (6th Cir. Oct. 31, 2013)

Sam Moore, half of the music duo Sam & Dave sued a number of defendants related to the 2008 fim Soul Man and its accompanying soundtrack.  The court of appeals affirmed the district court’s rejection of all his trademark, right of publicity, and related claims.

Sam & Dave’s 1967 album, Sam & Dave Soul Men included the hit single “Soul Man,” for which Moore won a Grammy.  They broke up and reunited in the early 1980s; Prater passed away.  Moore continued performing using variations on “Sam Moore ‘The Legendary Soul Man,’” and his promoters now call him the “Legendary Soul Man.”  Sam & Dave were inducted into the Rock & Roll Hall of Fame in 1992.

In the movie Soul Man, the two main characters are 2/3 of a 1960s soul trio, Marcus Hooks and the Real Deal.  The third member leaves the group and has a solo career, while the two continue as a duo, then spit up, then reunite for a memorial for the third.  On a cross-country trip, they perform Sam & Dave’s song “Hold On, I’m Comin’.”  Moore argued that they portrayed Sam & Dave.  The soundtrack, “Soul Men The Original Motion Picture Soundtrack,” included no Sam & Dave songs.

Moore sued for infringement of his trademarks in “Soul Men,” “Soul Man,” “The Legendary Soul Man,” “The Original Soul Man,” and “The Original Soul Men,” the 1967 album “Sam & Dave Soul Men,” and  a 2008 documentary DVD, titled “The Original Soul Men Sam & Dave.”

The appellate court just adopted the district court’s reasoning granting summary judgment on Moore’s Lanham Act and state unfair competition claims, and only engaged in its own analysis of the publicity, state law trademark, and consumer protection claims.

Under the Restatement, the right of publicity doesn’t cover “use of a person’s identity in . . . entertainment, works of fiction or nonfiction, or in advertising that is incidental to such uses,” including “dissemination of an unauthorized print or broadcast biography,” or the “[u]se of another’s identity in a novel, play or motion picture.”  Also (and of course we’re not clear on how this relates to the Restatement), the First Amendment means we use transformative use as per Comedy III.  “[W]e 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,’” which means “‘something other than the likeness of the celebrity.’”   Such “transformed” works (also?) lie beyond the right of publicity’s reach.  A successful publicity claim requires the challenged work to lack creative components of the defendant’s own.  Moore’s claim is weaker than Tiger Woods’ in ETW, given the general protection for movies, and the movie “[w]ithout a doubt” added significant expressive elements to any use of Moore’s identity.

Moore argued that there was no protection for the ad insert featuring his image packaged with the soundtrack’s CD and DVDs.  To promote other CDs and DVDs whose rights were owned by the company that produced the soundtrack, several pages of the insert—called “THE ORIGINAL SOUL MEN ARE AT STAX”—reprinted cover art from various Stax Records albums, including Otis Redding, Isaac Hayes and others.  Another insert page, “Essential Viewing for your Soul,” featured the images of three DVDs’ cover art, including “The Stax/Volt Revue Live in Norway 1967.” That displayed the names and images of the performers in that 1967 show, including “Double Dynamite!! Sam and Dave.”  However, Moore didn’t dispute that the company owned the (copy)rights to promote the video depicting a concert in which he performed.  Given this consent, there was no infringement of the right of publicity.  Plus, the insert title page “clearly refers to the numerous soul albums depicted therein,” of which the concert cover was but one. There was no evidence that the title page caused confusion, and “[r]ead in context” no reasonable juror would mistake this reference for Sam & Dave, or find Sam & Dave “reasonably identifiable” from the reference, even though the soundtrack was marketed to fans of a variety of soul artists.

Moore also sued for state trademark dilution.  Setting choice of law issues aside because the two relevant state laws were identical, both Tennessee and Arizona require famousness, and Moore couldn’t satisfy that element, given that he failed on his federal dilution claim.  Indeed, the only Tennessee factor not present in the Lanham Act was the nature and extent of use of same or similar mark by third parties, which weighed against Moore. The district court found at least 34 other albums currently available that either consist of or incorporate “soul men” or “soul man.”  Moore might be well-known, but the test considers the mark, not the person.

The state consumer protection claims also failed.  Moore alleged that defendants caused a likelihood of confusion about whether he sponsored the movie and soundtrack.  But the Lanham Act analysis covered this.  Under Rogers v. Grimaldi, the First Amendment precluded such a claim, and Moore’s “competing titles” claim also failed to show a likelihood of confusion.  He also alleged that defendants made false/misleading statements about his affiliation or association with the movie.  But he never provided evidence that Tennessee consumers were injured or deceived, as required.

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