545 F. App'x 405
6th Cir.2013Background
- Sam Moore seeks protection for unregistered marks related to the phrases Soul Men and Soul Man and for his life-story copyright in the 1960s–70s duo Sam & Dave.
- The Movie Soul Men (2008) and its Soundtrack are produced and distributed by Dimension Films (Weinstein Co.), MGM, Genius, Concord; Moore alleges trademark and publicity-right violations, dilution, unfair competition, and related claims.
- District court granted summary judgment for defendants on Moore's claims; Moore appeals those rulings and preserves publicity and state-law claims.
- The court applies a transformative-elements analysis to determine whether a celebrity’s identity used in a film constitutes protected expression or unlawful appropriation.
- This appeal focuses on the right of publicity, state trademark-dilution claims, and Tennessee Consumer Protection Act claims, after handling Lanham Act/unfair-competition claims previously.
- The court affirms the district court on the challenged claims, then addresses Moore’s publicity, TTMA dilution, and TCPA claims in detail.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Publicity claim—use of Moore’s identity in the Movie | Moore asserts misappropriation of name/likeness for commercial gain. | Movie adds significant transformative expression; no direct depiction or appropriation without consent. | Publicity claim fail; transformative use defeats misappropriation. |
| Advertising inserts—First Amendment protection | Inserts misuse Moore’s image for commerce; not protected. | Inserts refer to Stax legacy and are not a misattribution of Moore’s affiliation; no likelihood of confusion. | No genuine issue; First Amendment protects the inserts; no breach of publicity. |
| State trademark-dilution (TTMA) claim | Arizona/Tennessee dilution statutes protect famous marks; Moore’s fame should show protection. | No current fame of Moore’s marks; claims fail on dilution elements. | Dillution claims fail for lack of proven fame; statutes mirror and require ownership of a famous mark. |
| State consumer-protection claims | TCPA claims based on likelihood of confusion and deceptive advertising. | Merits-based defenses; the First Amendment limits; absence of tangible evidence of consumer deception. | TCPA claims fail; choice-of-law and merits analysis support dismissal. |
Key Cases Cited
- ETW Corp. v. Jireh Publ’g, 332 F.3d 915 (6th Cir. 2003) (transformative-use framework balancing publicity and First Amendment rights)
- Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797 (Cal. 2001) (transformative elements test for celebrity likeness in expressive works)
- Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (First Amendment limits on rights of publicity in art/entertainment)
- Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95 F.3d 959 (10th Cir. 1996) (parody and First Amendment protections in likeness uses)
- McDonald’s Corp. v. Shop at Home, Inc., 82 F. Supp. 2d 801 (M.D. Tenn. 2000) (TCPA claims analyzed alongside Lanham Act claims)
- Bennett v. Visa U.S.A., Inc., 198 S.W.3d 747 (Tenn. Ct. App. 2006) (Tennessee consumer protection scope and deception analysis)