Samuel Moore v. Weinstein Company, LLC, TheSamuel Moore v. Weinstein Company, LLC, The
Robb S. Harvey, Heather J. Hubbard, Waller, Lansden, Dortch & Davis, Nashville, TN, for Defendants-Appellees.
Before: ROGERS and COOK, Circuit Judges; VAN TATENHOVE, District Judge.*
COOK, Circuit Judge.
Plaintiff-appellant Sam Moore, half of the 1960s and ‘70s music duo “Sam & Dave” that sang the well-known songs “Hold On, I‘m Comin‘” and “Soul Man,” appeals an adverse judgment on his trademark-infringement and common-law claims against the producers and distributors of “Soul Men,” a 2008 fictional film starring actors Samuel L. Jackson and the late Bernie Mac (the “Movie“), and its accompanying soundtrack (the “Soundtrack“). Moore appeals five claims that center on a common theme: the Movie and Soundtrack infringed his unregistered trademarks of variations of the phrase “Soul Men,” and appropriated his life story for defendants-appellees’ pecuniary gain. For the following reasons, we AFFIRM the district court‘s grant of summary judgment.
I.
Sam Moore is a renowned entertainer. Signed with his coperformer Dave Prater by Atlantic Records in 1965, the duo released a 1967 album titled “Sam & Dave Soul Men” that included their hit single “Soul Man.” Sam & Dave, also known as “Double Dynamite,” recorded music in Memphis, Tennessee, at the Stax Records company. Though the duo broke up, they
Dimension Films, a division of The Weinstein Company, LLC (“TWC“) acquired the rights to a screenplay titled “Soul Men” in late 2007. In 2008, Dimension released the Movie, an R-rated film starring Samuel L. Jackson and Bernie Mac. MGM Studios, Inc. distributed the Movie to theaters nationwide, Genius Products, LLC manufactured and distributed the DVDs and Blu-rays pursuant to an agreement to distribute all TWC home videos, and Concord Music Group, Inc. distributed the Soundtrack, titled “Soul Men The Original Motion Picture Soundtrack,” which included no Sam & Dave songs.
In the Movie, Jackson‘s and Mac‘s characters form two-thirds of a 1960s soul trio named “Marcus Hooks and The Real Deal.” The trio‘s third member, lead singer Marcus Hooks (played by musician John Legend), leaves the group and pursues an incredibly successful solo career. Jackson and Mac, however, labor as a duo for a short time before splitting up. The Movie catches up with the pair in the present, living separate lives, one not having spoken to the other in years. After Hooks dies, Jackson and Mac reunite in Los Angeles and drive cross-country to perform at a memorial tribute at the Apollo Theater in New York City. As the duo drives eastward, they perform in small-town bars and venues. At one stop, they perform Sam & Dave‘s song “Hold On, I‘m Comin‘.” The Movie ends after the duo arrives in New York City and performs at the memorial. Moore sees the movie as Jackson and Mac portraying Sam and Dave.
The Movie‘s release prompted Moore, his wife Joyce, and an entity named SJM Trust to sue the defendants for trademark violations under the Lanham Act,
After the district court dismissed Joyce Moore and the SJM Trust, it granted summary judgment to the defendants on each of Moore‘s claims in a thorough, well-reasoned opinion. Moore timely appeals that judgment as to the following claims: Lanham Act unfair competition,
II.
A. Standard of Review
This court reviews the grant of summary judgment de novo, Appoloni v. United States, 450 F.3d 185, 189 (6th Cir. 2006), affirming where no genuine issue of material fact exists and the moving party is entitled to judgment as a matter of law. See
B. Right of Publicity
Moore argued that defendants violated his right of publicity by misappropriating his “name, image, likeness and persona[ ]” for use in the Movie (R. 146, Am. Compl. ¶ 103) and for “commercial exploitation in which [defendants] have a pecuniary interest” (id. ¶ 104). After conducting a conflict-of-laws analysis, the district court applied Arizona publicity law, which utilizes the Restatement (Third) of Unfair Competition. (R. 375, Op. & Order at 60.) Finding that Moore could not establish identity misappropriation, the district court granted summary judgment to defendants. (Id. at 92.) Moore argues that the court improperly evaluated and failed to consider relevant evidence.
The right of publicity protects the nonconsensual use of one‘s “name, likeness, or other indicia of identity for purposes of trade.” Restatement (Third) of Unfair Competition § 46. A viable right-of-publicity claim usually requires (1) defendant‘s use of plaintiff‘s identity; (2) the appropriation of plaintiff‘s name or likeness to the defendant‘s advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury. Lemon v. Harlem Globetrotters Int‘l, Inc., 437 F. Supp. 2d 1089, 1100 (D. Ariz. 2006). And the First Amendment provides an additional hurdle that, as the Restatement explains, “fundamentally constrain[s]” the right. Restatement (Third) of Unfair Competition § 47 cmt. c. This court found “an inherent tension between the right of publicity and the right of freedom of expression under the First Amendment” that becomes “particularly acute when the person seeking to enforce the right is [ ] famous.” ETW Corp. v. Jireh Publ‘g, 332 F.3d 915, 931 (6th Cir. 2003). The right of publicity does not proscribe “use of a person‘s identity in ... entertainment, works of fiction or nonfiction, or in advertising that is incidental to such uses,” Restatement (Third) of Unfair Competition § 47, including “dissemination
To help determine “the proper balance [ ] between the First Amendment and [a plaintiff‘s] intellectual property rights,” in ETW Corp., 332 F.3d at 936, we applied the “transformative elements test,” set forth by the California Supreme Court in Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387 (2001). Under that test, we 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.” Comedy III Prods., Inc., 106 Cal. Rptr. 2d 126, 21 P.3d at 809. A “defendant‘s own expression” means “something other than the likeness of the celebrity.” Id. Such “transformed” works lie beyond the right of publicity‘s reach.
1. Use of Identity in the Movie
The court‘s resolution in ETW Corp. informs this analysis. There, despite the defendants’ sale of a painting clearly depicting professional golfer Tiger Woods celebrating his first victory at the Masters Golf Tournament in 1997, this court held that the defendant “added a significant creative component of his own to Woods‘s identity,” such that the work contained “significant transformative elements which make it especially worthy of First Amendment protection and also less likely to interfere with the economic interest protected by Woods‘[s] right of publicity.” ETW Corp., 332 F.3d at 938. Therefore, even if Moore could demonstrate appropriation, a successful publicity claim requires the lack of these creative components, akin to a “depiction or imitation of the celebrity [that] is the very sum and substance of the work in question.” Comedy III Prods., Inc., 106 Cal. Rptr. 2d 126, 21 P.3d at 809.
In this regard, Moore‘s claim is weaker than Tiger Woods‘s claim in ETW Corp. We already explained that the Restatement generally does not protect the use of one‘s identity in a movie. See Restatement (Third) of Unfair Competition § 47 cmt. c. And as we explained when we adopted the transformative elements test, publicity claims trump the First Amendment if the “artistic expression takes the form of a literal depiction or imitation of a celebrity for commercial gain, directly trespassing on the right of publicity without adding significant expression beyond that trespass.” ETW Corp., 332 F.3d at 935 (emphasis added); cf. Cardtoons, L.C. v. Major League Baseball Players Assoc., 95 F.3d 959, 969 (10th Cir. 1996) (extending First Amendment protection to baseball parody cards and noting “[s]peech that entertains, like speech that informs, is protected by the First Amendment“). Without a doubt, the Movie added significant expressive elements to any purported use of Moore‘s identity.
2. Moore‘s Image in Advertising Inserts
This First Amendment protection falls away, Moore argues, in the case of the advertising insert featuring his image that Concord and Genius Products packaged with the Soundtrack‘s compact discs and Genius Products’ DVDs. (R. 342-27, Concord Insert.) The insert‘s commercial purpose, Moore argues, precludes application of the First Amendment‘s protections because the insert has “nothing whatsoever to do with the Movie or Soundtrack.”
To promote sales of other Concord-owned CDs and DVDs, several pages of the insert, titled “THE ORIGINAL SOUL
With regard to the Concert Cover, Moore does not dispute that Concord Music Group owns the rights to promote this video depicting a concert in which he performed. (See R. 146, Am. Compl. ¶ 40 n. 6 (acknowledging that “Stax filed for bankruptcy in 1975, and certain of the assets of the company were acquired by Fantasy Records in 1977.“); Appellee Br. at 50 n. 27.) See also Restatement (Third) of Unfair Competition § 46 cmt. f (“Conduct that would otherwise infringe the personal or commercial interests protected by the rights of privacy and publicity is not actionable if the conduct is within the scope of consent given by the holder of the right.“). Furthermore, the insert title page, which states “THE ORIGINAL SOUL MEN ARE AT STAX,” clearly refers to the numerous soul albums depicted therein, of which the Concert Cover—featuring Sam and Dave, identified as “Double Dynamite“—is but one. (See R. 342-27, Concord Insert, ID 9672, 9687-88.) Moore offers no evidence that the title page causes confusion. Read in context, no reasonable juror would mistake this “Soul Men” reference for Sam & Dave.1 See Restatement (Third) of Unfair Competition § 46 cmt. d (“[I]n the case of an alleged visual likeness, the plaintiff must be reasonably identifiable from the photograph or other depiction.“). And the fact that the soundtrack producers marketed their product to fans of a variety of soul artists, including Sam & Dave, does not suggest otherwise. (See R. 342-27.) Because Moore fails to show a genuine issue on this publicity claim, we affirm the district court‘s grant of summary judgment.
C. State Trademark Dilution
Moore also sued for state trademark dilution under the Tennessee Trademark Act (TTMA),
The district court erred when it found “a conflict of laws relative to the [state trademark] claims“; in fact, Tennessee and Arizona have identical trademark-dilution statutes. Compare
The Lanham Act “famousness” factors substantially overlap with Tennessee‘s “famousness” evaluation. Compare
D. State Consumer-Protection Claims
Moore brought two claims under the Tennessee Consumer Protection Act (TCPA),
In response to this argument, we adopt the district court‘s reasoning that under Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989), the First Amendment limits Moore‘s protectable interests in his purported marks. And we adopt its decision that Moore‘s “competing titles” claim established no likelihood of confusion. (See R. 375, Op. & Order at 64-67, 70-78.) These determinations, paired with Moore‘s decision not to appeal the district court‘s no-likelihood-of-confusion holding and his failure to cite to evidence establishing confusion, foreclose his TCPA likelihood-of-confusion claim.
Moore‘s pleadings doom his second TCPA claim as well. He alleges that the Genius DVDs and the Concord Soundtrack “intentionally and willfully made, published, disseminated, circulated, and placed before the purchasing public advertisements containing false, deceptive and misleading statements about Sam Moore‘s affiliation, connection or association with the Movie.” (R. 146, Am. Compl. ¶ 137.) Again, Moore fails to identify the precise TCPA violation, but we nevertheless analyze his claim under
When defendants argued that Arizona‘s consumer-protection law should apply instead of Tennessee‘s, Moore offered only a footnote explaining that his right-of-publicity choice-of-law argument “applies equally” to the consumer-protection choice-of-law challenge. (R. 340, Pl.‘s Resp. Def.‘s Mot. Summ. J. at 16 n. 25.) As the district court noted, however, Moore‘s right-of-publicity claim and his consumer-protection claims are “substantively distinct.” (R. 375, Op. & Order at 56 n. 28.) Accordingly, left with no argument on why Arizona law should not apply to Moore‘s consumer-protection claims, and instructed by Moore to rely on his publicity choice-of-law argument, the district court found that Arizona law should apply. (Id. at 62.) Having been instructed by Moore to rely on his publicity choice-of-law analysis, the district court understandably declined to survey Arizona law for a corresponding Arizona consumer-protection provision and pursue its own conflict-of-laws analysis.
Moreover, even applying Tennessee law, Moore‘s district court pleadings never responded to defendants’ merits-based attacks on his Tennessee consumer-protection claim. At summary judgment, defendants challenged both the choice of Tennessee law and the merits of his Tennessee claim, pointing to Tennessee cases explaining that the TCPA protects “consumers and legitimate business enterprises from those who engage in unfair or deceptive acts or practices ... in part or wholly within this state.” Bennett v. Visa U.S.A. Inc., 198 S.W.3d 747, 753 (Tenn. Ct. App. 2006) (citing
Moore compounds this error on appeal. His opening brief disputes only the district court‘s choice-of-law dismissal, asking us to reinstate his TCPA claim so Moore can “proceed to enforce [his] claim[].” (Appellant Br. at 58-59.) But faced with summary judgment, Moore needed to show that a genuine issue of material fact existed regarding this TCPA claim.
III.
For these reasons, we AFFIRM.