IP/Entertainment Law Weekly Case Update for Motion Picture Studios and Television Networks
June 1, 2012
Table of Contents
Samuel David Moore v. The Weinstein Company, LLC, USDC M.D. Tennessee, May 23, 2012
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Samuel David Moore, a singer and entertainer best known for the hit songs Soul Man and Hold On I’m Comin’, sued The Weinstein Company and various other entities responsible for the production and distribution of the 2008 film Soul Men and its soundtrack. Moore asserted Lanham Act and numerous state-law claims against the defendants. On defendants’ motion for summary judgment, the district court dismissed the lawsuit in its entirety. Moore was one part of the two-man group Sam & Dave, which achieved great fame in the late 1960s and early ‘70s. Moore claimed to have intellectual property interests in trademarks he had not registered, including “Soul Man,” “Soul Men,” “The Legendary Soul Man,” “The Original Soul Man,” and “The Original Soul Men.” He also claimed rights in the title to a Sam & Dave album from 1967, Sam & Dave Soul Men, as well as a 2008 DVD titled The Original Soul Men.
- District court grants summary judgment in favor of defendants and dismisses suit by Soul Man singer against producers and distributors of Soul Men film and soundtrack, finding that plaintiff could not establish common-law trademark rights in unregistered marks or the required elements of state law claims.
Moore claimed that Soul Men, a comedy about the reunion of two former backup singers in which Samuel L. Jackson and Bernie Mac performed the song Hold On I’m Comin’, infringed on these marks, as well as violated his right of publicity, and constituted, among other things, false light invasion of privacy and unfair competition. (Moore did not assert any claims directly arising from the performance in the film of Hold On I’m Comin’, for which Moore was not the copyright owner.)
Prior to addressing the claims individually, the court found that the unregistered marks to which Moore laid claim were used by many others and that his lawsuit marked the first time Moore had asserted any rights over these marks. Moore did not present the Court with any surveys about the public’s association of him with these marks, nor did he present evidence showing he derived income from the marks. The court also noted that the film did not directly reference Sam Moore or Sam & Dave, though Jackson and Mac did perform one of the group’s signature songs.
Concerning Moore’s trademark claims under § 43(a) of the Lanham Act, the court found that his claims arose from the unregistered marks and the titles to the 1967 album and the 2008 DVD. The court held that the First Amendment barred any § 43(a) claim arising from the various unregistered marks because the Soul Men title was expressive, had relevance to the content of the film, and was not a direct or indirect reference to Moore or his group Sam & Dave. Citing Rogers v. Grimaldi, 875 F.2d 994 (6th Cir. 1989), the court found that the First Amendment could not bar the § 43(a) claim arising from the album and DVD titles (because it does not apply to confusingly similar titles), and that the basic likelihood-of-confusion test applied, which required Moore to show possession of common-law rights in his unregistered marks. Moore could not make the requisite showing of having used or displayed the marks in the course of his career, however, and, even if he could, he could not show consumer confusion between his unregistered marks and the film title.
The court also found that Moore’s Lanham Act dilution claim failed as well, because Moore could not show that his marks were famous. He could not satisfy three of the four famousness factors set out in § 43(c)(2) – the receipt of income from the marks, public recognition of the marks, and registration of the marks.
After dispatching Moore’s federal claims, the court analyzed his state-law claims, which were governed by either the law of Tennessee (the forum state and where Moore initially came to fame) or the law of Arizona (where Moore lives), and dismissed all of the claims. Moore’s unfair competition claim failed because he could not show that the defendants engaged in the requisite passing off – that they passed the film off as something having to do with Moore – or any actual confusion, which Tennessee law requires. Moore’s false light invasion of privacy claim failed because he could not show that the film was intended to portray him or, assuming portrayal, that the defendants acted with actual malice, which the First Amendment requires when public figures are involved, under New York Times v. Sullivan. Moore’s right of publicity claim under Arizona law failed because he could not show that the film used his name, photograph or likeness.
WNET v. Aereo, Inc., USDC S.D. New York, May 21, 2012
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Plaintiffs, a group of corporate entities engaged in the production, marketing, distribution, and transmission of television programs, filed a suit against defendant Aereo, an Internet-based service that collects broadcast television signals from New York-area television stations and re-transmits them to Aereo subscribers, asserting copyright infringement related to the alleged reproduction and public performance of the shows, as well as a state law claim, styled as in the alternative, asserting unfair competition related to non-public performances of the shows.
- In case of first impression, district court dismisses unfair competition claim based on defendant’s re-transmittal of broadcast signals for New York-area television stations over the Internet to defendant’s subscribers, holding that Copyright Act preempts the state-law claim even if the re-transmittals involved “private performances” of copyrighted works.
Aereo moved for judgment on the pleadings on plaintiffs’ unfair competition claim, arguing that the claim sought to vindicate rights equivalent to those provided by the general scope of copyright law and was therefore preempted under the Copyright Act's express preemption provision. Plaintiffs countered that their unfair competition claim for non-public performances was an alternative to their federal copyright claim, in the event that the court concluded that Aereo's service did not infringe plaintiffs' copyrights because it involved only non-public performances, and that a non-public performance was not “equivalent” to any of the exclusive rights protected by federal copyright law and therefore subject to state law.
Assuming solely for purposes of the motion that Aereo's service involved private performances not actionable under the Copyright Act, the court reasoned that the issue turned “exclusively on a question of statutory interpretation—one of first impression in the Second Circuit—regarding the breadth of preemption under § 301 of the Copyright Act: does a state law unfair competition claim founded on the private performance of copyrighted works seek to vindicate rights that fall into the general scope of the exclusive rights created by the Copyright Act?” After surveying the language structure of § 301, its legislative history, and relevant Second Circuit decisions, the court found that it did.
Under Second Circuit precedent, preemption is determined by a two-prong test: the claims must meet both the subject matter requirement (the claims involve works protected by federal copyright law) and general scope requirement (the acts that violate state-created rights would, by themselves, infringe one of the exclusive rights already protected by copyright law – reproduction, adaptation, performance, distribution or display.). The Second Circuit also applies the “extra elements” test in its general scope analysis – the claim will not be preempted if it includes any extra elements that make it qualitatively different from an infringement claim under the Copyright Act.
The court agreed with defendant Aero that the language of § 301 preempting state-law claims for rights “equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106” referred broadly to the kinds of rights protected by § 106, not just those specific and exclusive property rights enumerated in the statute – in this case, performance rights generally rather than public performance rights specifically. Preemption under the Copyright Act therefore extends to those state laws that seek to impose liability for misappropriation of a person's creative works based on the performance of those works, both public and private.
The court likewise rejected the plaintiffs’ argument that the statutory language "equivalent to" the general scope of those rights specified in § 106, should be construed as “identical to” those precise rights. Noting the existence of multiple and varied dictionary definitions of “equivalent,” the court reasoned that, had Congress intended the narrow scope of preemption that plaintiffs’ asserted, it could have drafted § 301 without the words "general" or "equivalent to," but it did not. “Congress having decided to include these modifiers, the [c]ourt is bound to give the words "equivalent to" and "general scope" appropriate significance.
The court did acknowledge that the language of § 301 was not unambiguous, given that Congress did decline to create an exclusive property right over the purely private viewing of copyrighted performances, and that the statute could reasonably be read to support either plaintiffs' or Aereo's position (although the court believed that the better-reasoned position was that Congress likely intended preemption to extend to state-law claims imposing liability for private performances of copyrighted works). It concluded however, that the legislative history of the Act, including the stated intent by Congress to create a national uniform system of federal copyright law, supported the determination that the Copyright Act preempts plaintiffs’ unfair competition claim.
Finding the Second Circuit cases cited by the parties to be unpersuasive, in part because they did not squarely confront the preemption question, the court nonetheless concluded that the Second Circuit would extend preemption under the Copyright Act to unfair competition claims. The Second Circuit had not restricted preemption to the precise scope of the protections provided by the Copyright Act, as the plaintiffs advocated, and had held in other cases that preemption under § 301 was broader than those state law claims for which a successful copyright claim can be stated. The court also looked to cases applying the “extra element” test for an indication of the types of claims that the Second Circuit had found not preempted by § 301 because they were “qualitatively different.” According to the court, qualitative differences are differences in kind, rather than in degree or scope. Noting that the Second Circuit had ruled that unjust enrichment claims were not “qualitatively different” from copyright claims, the court reasoned that the appellate court would similarly agree that the plaintiff’s claims of unfair competition also would be preempted by the Copyright Act. The court also noted that Second Circuit had already extended preemption to unfair competition claims involving misappropriation of plaintiff’s works because the these claims satisfied the general scope requirement. Acknowledging that these cases were not directly on point, because they involved exclusive rights enumerated under § 106, the court reasoned that Second Circuit's analysis in these cases focused on the nature of the misappropriation claim and the similarity of those claims to the protections afforded by the Copyright Act, and not on whether a particular state law misappropriation claim precisely overlapped in scope with one of the specific rights enumerated under § 106. The court concluded: “Even though the [c]ircuit has not considered the precise issue before the Court, the analytical implication of these cases supports the conclusion that [p]laintiffs’' alternative claim is preempted.”
For more information, please contact Jonathan Zavin, W. Allan Edmiston, David Grossman, Jonathan Neil Strauss, Tal Dickstein or Meg Charendoff.
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