Soul survivor: publicity and TM claims against recorded performance fail

Cummings v. Soul Train Holdings LLC, 2014 WL 7008952, No. 14 Civ. 36 (S.D.N.Y. Dec. 12, 2014)
This right of publicity/trademark case based on use of recorded performances to which the plaintiff didn’t own the copyright could’ve gone a lot of ways—statutory exclusion, First Amendment/Rogers, copyright preemption, Dastar—the important thing is that it goes nowhere.
Jeremiah Cummings was a member of the rhythm and blues music group, Harold Melvin and the Blue Notes from 1973 to 1980.  On several occasions, the Blue Notes appeared on Soul Train, including an interview where group members were asked to introduce themselves by name.  Cummings alleged that he didn’t sign any release or grant of rights for future use of his performance.  (In the Ninth Circuit, he should’ve brought copyright claims!)  Footage from the Blue Notes’ performances has been used in (1) DVD compilations called “Best of Soul Train” and (2) TV ads and Internet videos marketing these DVDs. The trademarks Soul Train and Time Life (used under license) were prominently displayed on the DVD packaging and contents.  The complaint also alleged that certain defendants licensed stock footage of the Soul Train shows.  Cumming alleged that this violated Cummings’ rights of publicity and privacy, as well created a false assocation.
The NY right of publicity claim failed on choice of law grounds, since NY applies the law of the plaintiff’s domicile to such claims—here, that’s Illinois.  The materials in question were clearly exempt from Illinois law, given its explicit provision that the statutory right of publicity didn’t apply to “use of an individual’s identity in an attempt to portray … [an individual] in a live performance, … musical work, film, radio, television, or other audio, visual, or audio-visual work,” as long as the performance “does not constitute in and of itself a commercial advertisement for a product, merchandise, goods, or services.” Naturally, “promotional materials, advertisements, or commercial announcements” for such use are also exempt.  (And the statute supplanted any common law right, also explicitly.)  That’s that.
The claim was also independently preempted by copyright law:

[O]nce a performance is reduced to tangible form, there is no distinction between the performance and the recording of the performance for the purposes of preemption under § 301(a). Thus, if a baseball game were not broadcast or were telecast without being recorded, the Players’ performances similarly would not be fixed in tangible form and their rights of publicity would not be subject to preemption. By virtue of being videotaped, however, the Players’ performances are fixed in tangible form, and any rights of publicity in their performances that are equivalent to the rights contained in the copyright of the telecast are preempted.

Nat’l Basketball Ass’n v. Motorola, Inc., 105 F.3d 841, 849 (2d Cir. 1997).
Nor could Cummings bring a successful NY right of privacy claim, since his likeness wasn’t used for advertising or for purposes of trade, as required by N.Y. Civ. Rights Law § 50. (The court doesn’t make very clear what separate NY “right of publicity” claim it was dealing with above, since NY has no common law right of publicity.)  The New York Court of Appeals has “underscored that the statute is to be narrowly construed,” and excludes publications on newsworthy events or matters of public interest, which go well beyond “hard news.” Gautier v. Pro–Football, Inc., 304 N.Y. 354 (1952), involved an animal trainer who consented to perform during the halftime show of a pro football game.  Because he consented to perform in front of 35,000 spectators in a game attracting wide and legitimate public interest, he had no claim against having his performance televised.  Even without a release, he consented to perform live on national television; using the recordings of those performances doesn’t invade his right of privacy, even if he wasn’t paid.  And the promotional materials advertising the DVDs were protected by the doctrine of incidental use, allowing advertising of otherwise protected materials.
The Lanham Act claim was dismissed for failure to plead anything explicitly misleading, per Rogers v. Grimaldi.  The DVD sets were artistic works, “and the Complaint does not allege facts that could possibly show that consumers are likely to be confused about the source or ownership of those works because of the depiction of Plaintiff, among many other artists, in and on the DVD sets.”  The risk of confusion was outweighed by the First Amendment interests at stake, particularly given that Cummings was depicted along with many other artists and that the Soul Train and Time Life trademarks were prominently displayed.
Cummings’ state law deceptive business practices and common law trademark infringement claims suffered the same fate because Illinois courts apply the same analysis to Lanham Act claims as to coordinate state law claims.  (Interesting choice of law question: do they apply Rogers, after all a Second Circuit case?  The Fortres Grand district court used Rogers without discussion, and the Seventh Circuit has cited its First Amendment prioritization favorably; smart money says yes to Rogers, but it’s always possible that the iconoclasts on that court would make up their own test, which Illinois would then presumably follow.)  In addition, these claims were also preempted by §301 as not qualitatively different from copyright claims.

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