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IP/Entertainment Case Law Updates

Walker v. Thompson

In dispute stemming from termination of former drummer from hip hop band The Roots, district court vacates and amends prior order denying band’s motion to dismiss, finding that parties’ written agreement permitted band to use drummer’s likeness “in perpetuity.”

Plaintiff Frank Walker, a former drummer for the popular American hip hop band The Roots, brought suit against his former bandmates and employers, asserting claims for violation of the Lanham Act and the New York Civil Rights Law, breach of contract, breach of fiduciary duty, and several other claims related to the band’s continued use of his likeness in promotional materials for concert performances after he was terminated in 2017. On defendants’ motion to dismiss, the district court dismissed all of Walker’s claims except his Lanham Act and New York Civil Rights Law claims. The court found that in a written agreement that Walker entered into with the defendants in 2009, Walker granted them the right to use his likeness only if it was in connection with his services and performances as a band member under the agreement. Based upon that interpretation, the court held, Walker’s allegation that the defendants used his likeness to promote concerts after his termination was sufficient to state a claim for false endorsement under federal and state law. 

The parties subsequently submitted cross-motions for summary judgment, and the defendants argued that the parties’ written agreement permitted defendants to use Walker’s likeness in perpetuity in any promotional materials created while he performed with the band. Walker argued that the court had already rejected this argument, but, upon considering the parties’ submissions, the court sua sponte vacated and amended its prior order.

As the court stated, Walker had signed the agreement with defendants just before The Roots were scheduled to premiere on Late Night with Jimmy Fallon in 2012 and agreed therein to perform in all of The Roots’ performances, including on Late Night, for a specified period of time. The agreement granted defendants “the worldwide right in perpetuity to use and publish . . . [Walker’s] name, likeness, voice and other biographical material in connection with [Walker’s] services and performances hereunder and the results and proceeds thereof, including without limitation [Walker’s] name, photograph, image and likeness in connection with any audio or video recordings.” According to the court, the agreement’s express terms permitted the use of Walker’s likeness in perpetuity so long as the material containing his likeness was created while Walker was a member of The Roots and in connection with his membership.

Walker conceded that the defendants used his likeness in connection with performances of The Roots, but argued that the agreement limited this use to the time period when he was associated with the band. The court disagreed. Walker’s interpretation, it held, “would render the term and clear intent that the use of [Walker’s] likeness be permitted ‘in perpetuity’ meaningless.” Defendants’ ability to use in perpetuity images of Walker created during his tenure with the band, the court stated, is further supported by the agreement’s provision allowing defendants to use Walker’s likeness “in connection with any audio or video recordings.” Under Walker’s interpretation, defendants could not use any of their audio and video recordings that included Walker after his termination in 2017. As the court stated, “a band’s success and legacy is predicated, in large part, on its ability to use and publish its past audio or video recordings”; but Walker’s interpretation would result in all of The Roots’ recordings from 2002 to 2017 “be[ing] lost forever.” 

Despite vacating and amending its previous order, the court did not grant summary judgment dismissing the false endorsement claims because Walker also argued that he signed the parties’ agreement under duress and it was therefore invalid. Accordingly, the court denied the cross-motions without prejudice to renewal and ordered further briefing on the issue of contract validity. 

Summary prepared by Frank D’Angelo and Camron Dowlatshahi 

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