Soul Men Ruling Latest to Demonstrate Courts' Shift To Transformative Use Test In Publicity Rights Cases

Sam Moore and his former singing partner David Prater began singing together in the early 1960s and were signed by Atlantic Records in 1965. Sam and Dave became associated with the “Stax” brand of soul music and recorded several popular hits, including the songs “Soul Man” and “Hold On' I'm Comin'.” The duo's 1967 album was entitled Sam & Dave Soul Men and their backup band was sometimes referred to as “The Soul Men.” While performing, Sam and Dave sometimes wore sunglasses, dark hats and sharkskin suits. The pair broke up in the early 1970s but later reunited for performances in the 1980s. Prater died in 1988. Since then Moore has performed and made appearances as “Sam Moore 'The Legendary Soul Man'” and requests that promoters refer to him as “The Legendary Soul Man.” In 2008, Moore participated in the documentary The Original Soul Men: Sam and Dave.

The Weinstein Company released the movie Soul Men in 2008. In the film, Samuel L. Jackson's character, Louis Hinds, and Bernie Mac's character, Floyd Henderson, were part of a fictional 1970s musical group called Marcus Hooks and The Real Deal, composed of lead singer Marcus Hooks and two backup singers called The Real Deal. In the movie, Hooks leaves the group in 1977 to pursue a solo career and The Real Deal broke up two years later. Most of the movie took place in the present day in which Hinds and Henderson decide to reunite as The Real Deal and sing a memorial tribute show for the recently deceased Hooks at the Apollo Theater in New York. The film followed the Hinds and Henderson characters as they drove from Los Angeles to New York and performed songs along the way. One of the songs Hinds and Hooks performed was Sam and Dave's “Hold On' I'm Comin'.”

There were no direct references to Sam and Dave in the film and the movie contained no images or photographs of the duo. Sam Moore nevertheless alleged that the film capitalized on its association with Sam and Dave because of a number of similarities including that the fictional Real Deal were Stax singers who wore brightly colored clothing, sharkskin suits and sunglasses. Moore also claimed that several parts of the plot were similar to the real lives of Sam and Dave, including that The Real Deal was a male-male duo who disbanded after having internal disagreements and then reunited.

In addition to right of publicity claims, Moore sued in the U.S. District Court for the Middle District of Tennessee for infringement and dilution of his common law trademarks in “Soul Men,” “The Legendary Soul Man,” and several similar marks. Moore also advanced claims of unjust enrichment, conspiracy, unfair competition and consumer protection claims.

The Rogers Test

Moore contended that the use of “Soul Men” and similar marks in the film infringed on his unregistered trademark in violation of Section 43(a) of the Lanham Act. To determine if the use of such marks are protected by the First Amendment, the district court applied the Rogers test. which was first articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1988). The two-prong Rogers test looks at the mark's relevance to the creative work and whether use of the mark is explicitly misleading. The district court found that the title Soul Man related to the content of the film ' namely the lead characters' musical styles and fashion ' and found that there was no evidence indicating “that defendants explicitly misled the public about the source and content of Soul Man.” Moore v. Weinstein Company LLC, 3:09-CV-00166 (M.D.Tenn. 2012).

The district court separately noted that the Rogers test did not apply to “misleading titles that are confusingly similar to other titles” and therefore applied a traditional likelihood of confusion test to find that the title of the movie Soul Men was not confusingly similar to plaintiffs' album Sam & Dave Soul Men and the 2008 documentary The Original Soul Men . Holding that the Rogers test does not apply in title-versus-title actions is in contrast to the view taken in a few cases in other jurisdictions. See, e.g., Roxbury Entertainment v. Penthouse Media Group Inc., 92. U.S.P.Q.2d 1760 (C.D. Calif. 2009) (applying the Rogers test in an action alleging that a pornographic film entitled Route 66 infringed on the ” Route 66 ” mark used as the title of a 1960's television program); Capcom Co. v. MKR Group, Inc., 08-0904 (N.D.Calif. 2008) (applying the Rogers test in an action alleging that the video game Dawn of the Dead infringed on the title of the video game Dead Rising).

In Moore, the Sixth Circuit adopted the district court's reasoning for granting defendant's motion for summary judgment on Moore's Lanham Act claims. While there was little discussion of the trademark infringement claims in the Sixth Circuit's opinion, it is clear that the Rogers test continues to afford artists a high degree of protection in Lanham Act cases.

Transformative Use Test

Sam Moore also argued that the defendants violated his common law right of publicity under Arizona law, where he resides, by misappropriating his likeness and persona for the film. The Sixth Circuit applied the common law right of publicity as embodied in the Restatement (Third) of Unfair Competition. The traditional publicity rights analysis asks whether there is an unauthorized use of a person's name or likeness is used in commercial venture, such as advertising or the endorsement of a good or service. The Sixth Circuit noted that right of publicity does not cover “use of a person's identity in ' entertainment, works of fiction or nonfiction, or in advertising that is incidental to such uses” including “[u]se of another's identity in a novel, play or motion picture.” These limitations prevent right of publicity actions from preventing the use of a celebrity's image or likeness in a First Amendment protected work.

That alone should have foreclosed Moore's claim; all of the alleged violations related to use of his likeness in a motion picture and related advertising. However, in practice, courts also test the right of publicity claims with the freedom of expression using other doctrines. For example, in Parks v. LaFace Records, 329 F.3d 437 (6th Cir. 2003), the Sixth Circuit applied the Rogers test to determine whether the use of Rosa Parks' name in the title of a hip-hop song violated her right of publicity. That same year, the Sixth Circuit applied the transformative use test in ETW Corp. v. Jireh Publishing, 332 F.3d 915 (6th Cir. 2003), in analyzing whether the use of Tiger Woods' name and likeness in a painting violated the plaintiff's right of publicity. In Moore, the Sixth Circuit once again adopted its transformative use test.

The transformative use test was borrowed from copyright law's fair use analysis and first applied to a publicity rights claim by the California Supreme Court in Comedy III Production Inc. v. Gary Saderup Inc., 21 P3d 797 (Cal. 2001), to hold that t-shirts that depicted the Three Stooges did not contain sufficiently transformative elements to shield the defendant artist from the right of publicity claim.

The differences between the Rogers and transformative use tests could make the difference between a successful and unsuccessful claim. The Rogers test is more defendant friendly because it presumes the work is entitled to First Amendment protection unless the plaintiff can demonstrate that the use of the mark (or, in the case of the right of publicity, use of a person's name or likeness) has no relation to the work and is explicitly misleading. In the transformative use test, on the other hand, the use of a person's name and likeness is not afforded First Amendment protection unless such use is transformative. That is, according to Comedy III, the use of a person's likeness is only protected to the extent the “celebrity's likeness is so transformed that is has become primarily the defendant's own expression rather than the celebrity's likeness.” Thus, a right of publicity claim can trump the First Amendment if the artistic expression is a “literal depiction or imitation of a celebrity for commercial gain, directly trespassing on the right of publicity without adding significant expression beyond the trespass.”

The plaintiff-friendly transformative use test was not enough to save Sam Moore's claim. The Sixth Circuit decided that the movie “without a doubt” added significant expressive elements to any use of Moore's likeness. Moore argued that there was no First Amendment protection for ad inserts accompanying the film's soundtrack CDs and the movie's DVDs that also allegedly violated his right of publicity. The inserts titled “THE ORIGINAL SOUL MEN ARE AT STAX” promoted other CDs and DVDs using the discs' cover art. The picture of one of the promoted DVDs, “The Stax/Volt Revue Live in Norway 1967,” cited names of performers in the show including “Double Dynamite!! Sam and Dave.” There was no dispute that the company providing the insert had full rights to the DVD image. The appeals court ruled that Moore had no claim relating to the use of the DVD image and no reasonable juror would mistake the “Soul Men” reference for Sam and Dave.

Conclusion

Though unpublished, the Moore decision is one of a number of recent circuit court cases to apply the transformative use test to causes of action under right of publicity laws while applying the Rogers test to trademark and Lanham Act claims. The differences between these tests sometimes leads to different results for celebrities seeking to prevent the use of their likeness in expressive works.

For example, in July 2013 the Ninth Circuit issued two opinions relating to the unauthorized use of a celebrity's indicia in video games. The cases had similar facts ' both involved claims by athletes against video game maker Electronic Arts for using avatars of athlete's images in sports-themed video games. In Brown v. Electronic Arts Inc. (EA), 724 F.3d 1235 (9th Cir. 2013), in which football player Jim Brown brought Lanham Act claims against EA, the Ninth Circuit applied the Rogers test and ruled that the use of Brown's image was relevant to the game because EA was trying to create a realistic football experience and the use of his image was not explicitly misleading. Accordingly, use of Brown's image was protected by the First Amendment and his Lanham Act claims failed.

On the other hand, in Keller v. Electronic Arts Inc., 724 F.3d 1268 (9th Cir. 2013), the athletes asserted publicity rights violations. The Ninth Circuit adopted the transformative use test and this time determined that the video game would not be shielded by the First Amendment and issued a ruling in favor of the athletes. The transformative use test was applied by the Third Circuit in similar litigation where it also ruled against EA. In Hart v. Electronic Arts Inc., 717 F.3d 141 (3d Cir. 2013), the Third Circuit explicitly rejected the Rogers test in right of publicity actions noting that the test is a “blunt instrument” that would “turn the right of publicity on its head” by allowing almost any use of a celebrity's likeness in an expressive work.

As Moore demonstrates, courts are adopting two different tests to balance the celebrity's right of publicity with First Amendment rights. In Lanham Act cases, courts apply the Rogers test, affording defendants a high degree of free expression protection. But increasingly courts have rejected application of the Rogers test in right of publicity actions. Instead, the Sixth Circuit and other courts have borrowed the transformative use test from copyright law, affording defendants a lower degree of protection. As in Moore, the application of the transformative use test alone may not lead to a successful right of publicity action but it may indicate a trend against providing creative works an almost impenetrable First Amendment shield against right of publicity actions.

Keola R. Whittaker is a litigation associate in the Los Angeles office of Irell & Manella LLP, where he represents clients in a variety of civil litigations in both state and federal court. He can be reached at [email protected].

Celebrities often turn to the Lanham Act and state right of publicity laws to protect against exploitation of their name, image or voice in connection with the promotion of products or services. The U.S. Court of Appeals for the Sixth Circuit recently considered both Lanham Act and right of publicity claims in an action that pitted a Grammy winning musical artist against a major motion picture studio over the alleged use of the musician's likeness in a movie. Moore v. Weinstein Company LLC, 12-5715 (6th Cir. 2013). The Moore decision demonstrates how courts are increasingly adopting different balancing tests to resolve the tension between the First Amendment right of freedom of expression and the rights of celebrities to prevent unauthorized use of their likeness.

The litigation was brought by musical artist Sam Moore, of Sam and Dave fame, who claimed that with film Soul Men , starring Samuel L. Jackson and Bernie Mac, the Weinstein Company and others misappropriated Moore's image and certain unregistered trademarks.

Case Background

Sam Moore and his former singing partner David Prater began singing together in the early 1960s and were signed by Atlantic Records in 1965. Sam and Dave became associated with the “Stax” brand of soul music and recorded several popular hits, including the songs “Soul Man” and “Hold On' I'm Comin'.” The duo's 1967 album was entitled Sam & Dave Soul Men and their backup band was sometimes referred to as “The Soul Men.” While performing, Sam and Dave sometimes wore sunglasses, dark hats and sharkskin suits. The pair broke up in the early 1970s but later reunited for performances in the 1980s. Prater died in 1988. Since then Moore has performed and made appearances as “Sam Moore 'The Legendary Soul Man'” and requests that promoters refer to him as “The Legendary Soul Man.” In 2008, Moore participated in the documentary The Original Soul Men: Sam and Dave.

The Weinstein Company released the movie Soul Men in 2008. In the film, Samuel L. Jackson's character, Louis Hinds, and Bernie Mac's character, Floyd Henderson, were part of a fictional 1970s musical group called Marcus Hooks and The Real Deal, composed of lead singer Marcus Hooks and two backup singers called The Real Deal. In the movie, Hooks leaves the group in 1977 to pursue a solo career and The Real Deal broke up two years later. Most of the movie took place in the present day in which Hinds and Henderson decide to reunite as The Real Deal and sing a memorial tribute show for the recently deceased Hooks at the Apollo Theater in New York. The film followed the Hinds and Henderson characters as they drove from Los Angeles to New York and performed songs along the way. One of the songs Hinds and Hooks performed was Sam and Dave's “Hold On' I'm Comin'.”

There were no direct references to Sam and Dave in the film and the movie contained no images or photographs of the duo. Sam Moore nevertheless alleged that the film capitalized on its association with Sam and Dave because of a number of similarities including that the fictional Real Deal were Stax singers who wore brightly colored clothing, sharkskin suits and sunglasses. Moore also claimed that several parts of the plot were similar to the real lives of Sam and Dave, including that The Real Deal was a male-male duo who disbanded after having internal disagreements and then reunited.

In addition to right of publicity claims, Moore sued in the U.S. District Court for the Middle District of Tennessee for infringement and dilution of his common law trademarks in “Soul Men,” “The Legendary Soul Man,” and several similar marks. Moore also advanced claims of unjust enrichment, conspiracy, unfair competition and consumer protection claims.

The Rogers Test

Moore contended that the use of “Soul Men” and similar marks in the film infringed on his unregistered trademark in violation of Section 43(a) of the Lanham Act. To determine if the use of such marks are protected by the First Amendment, the district court applied the Rogers test. which was first articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1988). The two-prong Rogers test looks at the mark's relevance to the creative work and whether use of the mark is explicitly misleading. The district court found that the title Soul Man related to the content of the film ' namely the lead characters' musical styles and fashion ' and found that there was no evidence indicating “that defendants explicitly misled the public about the source and content of Soul Man.” Moore v. Weinstein Company LLC, 3:09-CV-00166 (M.D.Tenn. 2012).

The district court separately noted that the Rogers test did not apply to “misleading titles that are confusingly similar to other titles” and therefore applied a traditional likelihood of confusion test to find that the title of the movie Soul Men was not confusingly similar to plaintiffs' album Sam & Dave Soul Men and the 2008 documentary The Original Soul Men . Holding that the Rogers test does not apply in title-versus-title actions is in contrast to the view taken in a few cases in other jurisdictions. See, e.g., Roxbury Entertainment v. Penthouse Media Group Inc., 92. U.S.P.Q.2d 1760 (C.D. Calif. 2009) (applying the Rogers test in an action alleging that a pornographic film entitled Route 66 infringed on the ” Route 66 ” mark used as the title of a 1960's television program); Capcom Co. v. MKR Group, Inc., 08-0904 (N.D.Calif. 2008) (applying the Rogers test in an action alleging that the video game Dawn of the Dead infringed on the title of the video game Dead Rising).

In Moore, the Sixth Circuit adopted the district court's reasoning for granting defendant's motion for summary judgment on Moore's Lanham Act claims. While there was little discussion of the trademark infringement claims in the Sixth Circuit's opinion, it is clear that the Rogers test continues to afford artists a high degree of protection in Lanham Act cases.

Transformative Use Test

Sam Moore also argued that the defendants violated his common law right of publicity under Arizona law, where he resides, by misappropriating his likeness and persona for the film. The Sixth Circuit applied the common law right of publicity as embodied in the Restatement (Third) of Unfair Competition. The traditional publicity rights analysis asks whether there is an unauthorized use of a person's name or likeness is used in commercial venture, such as advertising or the endorsement of a good or service. The Sixth Circuit noted that right of publicity does not cover “use of a person's identity in ' entertainment, works of fiction or nonfiction, or in advertising that is incidental to such uses” including “[u]se of another's identity in a novel, play or motion picture.” These limitations prevent right of publicity actions from preventing the use of a celebrity's image or likeness in a First Amendment protected work.

That alone should have foreclosed Moore's claim; all of the alleged violations related to use of his likeness in a motion picture and related advertising. However, in practice, courts also test the right of publicity claims with the freedom of expression using other doctrines. For example, in Parks v. LaFace Records, 329 F.3d 437 (6th Cir. 2003), the Sixth Circuit applied the Rogers test to determine whether the use of Rosa Parks' name in the title of a hip-hop song violated her right of publicity. That same year, the Sixth Circuit applied the transformative use test in ETW Corp. v. Jireh Publishing, 332 F.3d 915 (6th Cir. 2003), in analyzing whether the use of Tiger Woods' name and likeness in a painting violated the plaintiff's right of publicity. In Moore, the Sixth Circuit once again adopted its transformative use test.

The transformative use test was borrowed from copyright law's fair use analysis and first applied to a publicity rights claim by the California Supreme Court in Comedy III Production Inc. v. Gary Saderup Inc., 21 P3d 797 (Cal. 2001), to hold that t-shirts that depicted the Three Stooges did not contain sufficiently transformative elements to shield the defendant artist from the right of publicity claim.

The differences between the Rogers and transformative use tests could make the difference between a successful and unsuccessful claim. The Rogers test is more defendant friendly because it presumes the work is entitled to First Amendment protection unless the plaintiff can demonstrate that the use of the mark (or, in the case of the right of publicity, use of a person's name or likeness) has no relation to the work and is explicitly misleading. In the transformative use test, on the other hand, the use of a person's name and likeness is not afforded First Amendment protection unless such use is transformative. That is, according to Comedy III, the use of a person's likeness is only protected to the extent the “celebrity's likeness is so transformed that is has become primarily the defendant's own expression rather than the celebrity's likeness.” Thus, a right of publicity claim can trump the First Amendment if the artistic expression is a “literal depiction or imitation of a celebrity for commercial gain, directly trespassing on the right of publicity without adding significant expression beyond the trespass.”

The plaintiff-friendly transformative use test was not enough to save Sam Moore's claim. The Sixth Circuit decided that the movie “without a doubt” added significant expressive elements to any use of Moore's likeness. Moore argued that there was no First Amendment protection for ad inserts accompanying the film's soundtrack CDs and the movie's DVDs that also allegedly violated his right of publicity. The inserts titled “THE ORIGINAL SOUL MEN ARE AT STAX” promoted other CDs and DVDs using the discs' cover art. The picture of one of the promoted DVDs, “The Stax/Volt Revue Live in Norway 1967,” cited names of performers in the show including “Double Dynamite!! Sam and Dave.” There was no dispute that the company providing the insert had full rights to the DVD image. The appeals court ruled that Moore had no claim relating to the use of the DVD image and no reasonable juror would mistake the “Soul Men” reference for Sam and Dave.

Conclusion

Though unpublished, the Moore decision is one of a number of recent circuit court cases to apply the transformative use test to causes of action under right of publicity laws while applying the Rogers test to trademark and Lanham Act claims. The differences between these tests sometimes leads to different results for celebrities seeking to prevent the use of their likeness in expressive works.

For example, in July 2013 the Ninth Circuit issued two opinions relating to the unauthorized use of a celebrity's indicia in video games. The cases had similar facts ' both involved claims by athletes against video game maker Electronic Arts for using avatars of athlete's images in sports-themed video games. In Brown v. Electronic Arts Inc. (EA), 724 F.3d 1235 (9th Cir. 2013), in which football player Jim Brown brought Lanham Act claims against EA, the Ninth Circuit applied the Rogers test and ruled that the use of Brown's image was relevant to the game because EA was trying to create a realistic football experience and the use of his image was not explicitly misleading. Accordingly, use of Brown's image was protected by the First Amendment and his Lanham Act claims failed.

On the other hand, in Keller v. Electronic Arts Inc., 724 F.3d 1268 (9th Cir. 2013), the athletes asserted publicity rights violations. The Ninth Circuit adopted the transformative use test and this time determined that the video game would not be shielded by the First Amendment and issued a ruling in favor of the athletes. The transformative use test was applied by the Third Circuit in similar litigation where it also ruled against EA. In Hart v. Electronic Arts Inc., 717 F.3d 141 (3d Cir. 2013), the Third Circuit explicitly rejected the Rogers test in right of publicity actions noting that the test is a “blunt instrument” that would “turn the right of publicity on its head” by allowing almost any use of a celebrity's likeness in an expressive work.

As Moore demonstrates, courts are adopting two different tests to balance the celebrity's right of publicity with First Amendment rights. In Lanham Act cases, courts apply the Rogers test, affording defendants a high degree of free expression protection. But increasingly courts have rejected application of the Rogers test in right of publicity actions. Instead, the Sixth Circuit and other courts have borrowed the transformative use test from copyright law, affording defendants a lower degree of protection. As in Moore, the application of the transformative use test alone may not lead to a successful right of publicity action but it may indicate a trend against providing creative works an almost impenetrable First Amendment shield against right of publicity actions.

Keola R. Whittaker is a litigation associate in the Los Angeles office of Irell & Manella LLP, where he represents clients in a variety of civil litigations in both state and federal court. He can be reached at [email protected].