Young v. Wideawake Death Row Entertainment, LLC

District court grants motion to dismiss Lanham Act and right of publicity claims in action brought by Dr. Dre against company that re-issued his recorded works without his permission.

Plaintiff Andre Young, professionally known as Dr. Dre, filed suit against defendant record company for, inter alia, breach of contract, trademark infringement and dilution, false advertising and false endorsement, and California statutory and common law misappropriation of the right of publicity. As the court stated, the gravamen of plaintiff’s complaint is that the defendant failed to pay him royalties on his music album “The Chronic,” among other works, and that the defendant released a “remastered” version of the album, entitled “The Chronic Re-Lit & From the Vault” (“Re-Lit”), as well as a "Greatest Hit" album, without his authorization.

According to the plaintiff, he founded Death Row Records which released his solo debut album “The Chronic,” and he entered into oral and implied contracts with Death Row, granting it a non-exclusive license to distribute “The Chronic” as well as other sound recordings he produced or composed in exchange for royalties. He claimed that in 1996 he gave up his ownership interest in Death Row Records and quitclaimed to Death Row his copyrights in sound recordings previously released by Death Row in exchange for royalties, and that this agreement prohibited Death Row from distributing any of his recordings except “in the manners heretofore Distributed.” According to the plaintiff, the defendant bought the assets of Death Row from Death Row’s bankruptcy estate on January 15, 2009, and this purchase included the copyrights to “The Chronic” and the other Dre recordings, subject to the previous oral, implied and written agreements. Then, allegedly without plaintiff’s authorization, defendants released and commenced distributing “Re-Lit,” an album/DVD set that included a “digitally remastered” version of “The Chronic”.

Plaintiff alleged that defendants falsely advertised and promoted “Re-Lit” as being “the way Dre wanted” the recording to be heard, and he alleged that the defendant released and distributed several “greatest hit” packages containing plaintiff’s recordings, and distributed his recordings digitally, in violation of the 1996 Agreement. Finally, the plaintiff alleged that the defendant failed to account to him for any of the royalties due to him.

The defendant moved to dismiss for failure to state a claim. Regarding the breach of contract claim, the court denied the motion because “defendants apparently concede in their reply that plaintiff has sufficiently pled his contract” by only requesting that the court dismiss plaintiff’s second through eighth claims.

The court granted the motion to dismiss the Lanham Act and right of publicity claims. The plaintiff alleged that the defendant’s use of his name and likeness on and in connection with the re-issued album and the greatest hits packages caused a likelihood of confusion and created a false impression that such products were authorized, approved, endorsed, sponsored, connected or affiliated with plaintiff, and that such use violated and diluted his registered trademark rights.

The plaintiff relied on the “Monty Python” rule established in Gilliam v. American Broadcasting Cos., Inc., 538 F.2d 14 (2d Cir. 1976), in which the defendant made substantial changes to the “Monty Python” programs in order to broadcast them on U.S. television. The court held that when “a copyright licensee acts outside the scope of the license to make unpermitted editing resulting in a distorted travesty of the original work, use of the author’s name constitutes false representation under the Lanham Act § 43(a).” However, in this case, the defendant’s changes to the copyrighted works, which consisted of digitally remastering the original recording, were minimal and thus did not trigger the Monty Python rule.

Regarding the right of publicity claim, the court held that the defendant’s use of the plaintiff’s name and likeness to accurately identify sound recordings to which the defendant owned the copyright was protected by the First Amendment. The court held that constitutional protection extends to the truthful use of a public figure’s name and likeness in advertising, and that the plaintiff failed to sufficiently allege that the defendant’s use of his name and likeness was more than incidental to the protected publication of his albums.