Plaintiff Sam Moore is one half of the 1960s and ’70s soul music duo “Sam & Dave,” who released a 1967 album titled “Sam & Dave Soul Men” that included their hit single “Soul Man.” After the duo split up, plaintiff continued performing under variations of the stage name “Sam Moore ‘The Legendary Soul Man’” and is currently referred to as “The Legendary Soul Man.” In 2008, defendant The Weinstein Company released the motion picture “Soul Men.” In the movie, the main characters are two supporting members of a 1960s soul trio named “Marcus Hooks and The Real Deal” that had dissolved years earlier. Having not spoken in years, the two reunite in Los Angeles to drive cross-country and perform at a memorial tribute in New York following Hooks’ death. Along the drive, they perform in small-town bars and venues, at one stop performing a Sam & Dave song.
Plaintiff filed suit against multiple defendants for various claims, generally alleging that the movie and its soundtrack infringed his unregistered trademarks of variations of the phrase “Soul Men” and appropriated his life story for defendants’ pecuniary gain. Plaintiff appealed after the district court granted summary judgment in defendants’ favor and dismissed all of plaintiff’s claims. The Sixth Circuit adopted the district court’s reasoning with respect to plaintiff’s Lanham Act and state unfair competition claims, and reviewed only plaintiff’s right of publicity, state law trademark and consumer protection claims.
Plaintiff sued defendants for violating his right of publicity by misappropriating his name, image, likeness and persona for use in the movie. Applying Arizona law (based on the district court’s conflict of laws analysis), the Sixth Circuit panel explained that a right of publicity claim requires (1) defendant’s use of plaintiff’s identity; (2) the appropriation of plaintiff’s name or likeness to the defendant’s advantage; (3) lack of consent; and (4) resulting injury. The court also noted the inherent tension between the right of publicity and the First Amendment and that the First Amendment interests are particularly acute when the plaintiff is famous, so that the right of publicity does not proscribe mere use of a person’s identity in a movie. Applying a “transformative use” test (the Sixth Circuit in ETS Corp. v. Jireh Publ'g, 332 F.3d 915 (6th Cir. 2003) adopted the “transformative test from the California Supreme Court’s decision in Comedy III Productions, Inc. v. Gary Saderup Inc., 21 P.3d 797 (Cal. 2001)), the court concluded that “[w]ithout a doubt” the movie itself added significant expressive elements to any purported use of plaintiff’s identity.
Although plaintiff contended that First Amendment protection would “fall away” for the advertising insert, which was included with the movie’s soundtrack CDs and the film’sDVDs, and included images of the covers of various soul albums, he could not dispute that the defendant soundtrack producer owned the right to promote a DVD depicting a concert in which plaintiff performed. Additionally, the insert’s title page, “The Original Soul Men Are At Stax,” referred to numerous soul albums, of which the promotional flyer featuring Sam & Dave was only one. The panel found that, read in context, no reasonable juror would mistake this “Soul Men” reference for Sam & Dave, and the fact that the soundtrack producers marketed their products to fans of a variety of soul artists did not suggest otherwise.
In evaluating plaintiff’s state trademark dilution claim under the Tennessee Trademark Act, the court began by noting that the district court erred in dismissing plaintiff’s claim on the grounds of a conflict-of-laws analysis. Applying Tennessee law, the panel found that plaintiff’s claim nonetheless failed because he had not presented evidence of a distinct mark that was “famous” in Tennessee.
Finally, the panel affirmed summary judgment against plaintiff on his claims under the Tennessee Consumer Protection Act. Plaintiff had failed to show any likelihood of confusion caused by the marketing and advertising of the movie. Likewise, plaintiff had failed to submit to the district court any admissible evidence that consumers were actually deceived or injured.
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