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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