Jeremih Can't Avoid Photog's Secondary Copyright Infringement Claims & Model's Publicity Claim Over Album Cover

Rams v. Def Jam Recordings, No. 15-8671 (S.D.N.Y. Aug. 16, 2016).

Artist Jeremih's Rule 12 motion to dismiss the plaintiffs' secondary copyright infringement claim, and all of the Defendants' motion to dismiss the right of publicity claim under California law, were denied.  The case involves the use of a photo on an album cover on the hit single "Don't Tell 'Em"; the plaintiff photographer alleged copyright infringement against the artist and label, and the plaintiff model alleged violation of her right of publicity.

As to the contributory infringement claim against the defendant artist, the Court held that the photographer stated a claim.  "Drawing all reasonable inferences in favor of Plaintiffs, it is plausible that ... the recording artist, whose work is distributed by UMG under the Def Jam label, would have reason to know of the infringing use of the Subject Image on his own album cover."

As to the vicarious infringement claim against the defendant artist, again the Court held that the photographer stated a claim.  "Plaintiffs state a plausible claim that, as a recording artist...[he] had the right and ability to supervise the selection of cover artwork for his own 'Don't Tell 'Em' single."  Further, the Court found that the complaint sufficiently alleged that the artist benefited financially from the infringement.

As to the model's right of publicity claim, the Court first addressed whether the law of Denmark applied (where the model resides) or whether instead California law applies.  California's choice of law rules applied because the case had been transferred to New York from California district court.  Accordingly, the Court applied the "governmental interest" test under California law, and held that California law should apply.  "Under California law, Rams has sufficiently alleged that Defendants knowingly distributed and profited from the use of her image throughout California without her consent, violating her right of publicity."

Film Festival Temporarily Enjoined From Screening Aretha Franklin Documentary

Franklin v. Nat'l Film Preserve, No. 15-cv-1921 (D. Colo. filed 9/4/2015) [Doc. 14].

The Court issued a temporary restraining order enjoining the Telluride Film Festival from screening a documentary film about Aretha Franklin, which consisted primarily of previously unreleased footage from a 1972 concert.  The deed granting the film producer rights in the footage required Ms. Franklin's consent to use the footage, which defendant did not obtain.

The Court found that Ms. Franklin has a strong interest in her rights of publicity, and to the use of her name/likeness.  She also had a federal statutory right to prevent bootlegging.  17 USC 1101(1).  The Court found that the film, which essentially recreated the entire concert experience, was not a fair use, and that a TRO would preserve the status quo.

Bob Marley Heirs Succeed On Appeal In Merchandising Case

Fifty-Six Hope Road Music v. A.V.E.L.A., No 12-17502 (9th Cir. Feb. 20, 2015).

The 9th Circuit Court of Appeals affirmed judgment in favor of Bob Marley's heirs based on defendants' use of Bob Marley's image on t-shirts and other merchandise in a manner likely to cause confusion as to Plaintiffs' sponsorship of approval of the merchandise.  Additionally, the Court found that Defendants have waived several defenses by failing to properly raise them in the district court.  The appellate court also found that the lower court had not abused its discretion in determining defendant's profits and there was a sufficient evidence to find that defendants willfully infringed plaintiff's rights.  Nor did the lower court err in awarding plaintiffs their attorney's fees, as plaintiffs were the prevailing parties, and defendants' conduct was willful.  Plaintiffs also succeeded on their tortious interference claims because Plaintiffs' licensing agent testified that one of Plaintiffs' licensees lost an order intended for Wal-Mart because defendant sold t-shirts there. Defendants did succeed, however, in dismissing the right of publicity claim because under Nevada law a publicity right successor waives its publicity rights when it fails to timely register its rights.

Only Breach Of Contract Claim Survives in Ozzy Osbourne Guitarist Case

Rhoads v. Margolis, No. B249800 (Cal. App. Ct., 2d Dist. - Div. 7, Jan. 26, 2015).

Only a breach of contract claim survived in an action, brought by the family of a well-known rock guitarist who died in a 1982 plane crash, against Defendants based on the family's grant of the right to use personal information and memorabilia to make a documentary film about the deceased guitarist.  When the documentary project faltered, defendants instead published a book about the guitarist.  The family sued, alleging the book was based on materials they had provided for the exclusive purpose of making the documentary film.  Defendants moved to dismiss the complaint.

On appeal, the Court found that the Anti-SLAPP Statute (section 425.16) applied because the principal thrust of every claim was premised on the allegation that the defendants, in researching, writing and publishing the book, used the family's proprietary material provided solely for the purpose of the documentary.  Whether or not defendants violated the terms of the agreement, their conduct in writing and publishing the book qualified as a form of protected activity.  With the exception of the breach of contract claim, the family failed to establish a probability of prevailing on its claims. The fraud claim failed because there was no allegation that the defendants intended to create the book at the time of the agreement.  The misappropriation claim (based on the right of privacy) failed because the alleged acts did not implicate the personal privacy or publicity rights of the guitarist's family members.  Additionally, the life and death of the guitarist was a matter of public interest.  The unfair competition claim failed because plaintiffs had not articulated an actionable manner in which the public was likely to be deceived by the book or that consumers suffered substantial injury.

Don Henley Suit Against Clothing Company Survives Dismissal

Henley v. Duluth Holdings, No. CV 14-7827 DSF (C.D. Cal. Jan. 21, 2015).

Don Henley's lawsuit concerning an advertisements for Henley-style shirts that urged customers to “Don a henley, take it easy,” survives defendant's motion to dismiss.  The defendant apparel company had argued that the promotion was a joke.  The Court found that Defendant has not established that its use of Plaintiff’s name – and the name of one of his band’s most famous songs – in its advertisement was sufficiently transformative on its face that a motion to dismiss should be granted.

Iggy Azalea Granted Preliminary Injunction To Prevent The Posting Of Early Recordings

Kelley v. Primco Management, Inc., No. 14-cv-07263 (C.D. Cal. Jan. 12, 2015).

Pop star Iggy Azalea obtained a preliminary injunction based on claims that Defendants misappropriated the contents of her computer and began releasing infringing songs and music videos.  Defendants claims that they had authority to use Azalea's name, likeness and various intellectual property assets pursuant to a Recording Agreement.  Azalea claimed that the document was forged, and that was the key issue before the Court because no party disputed that Defendants had exploited Azalea's copyrights, trademarks and right of publicity.  The Court held an evidentiary hearing and discussed the evidence presented on whether the document was forged.  It concluded that, even though there was sharply conflicting testimony, Azalea had at the very least raised serious questions about the validity of the agreement, and therefore had raised serious questions going to the merits of her claims which were enough to grant a preliminary injunction.  The court then considered the factors necessary for a preliminary injunction -- likelihood of success on the merits, threat of irreparable harm, balancing the equities, and the public interest -- and found that an injunction was warranted.  Azalea was ordered to post a $20,000 bond.

Use Of Rapper's Image On Website Constitutes Copyright Infringement And Violated Right Of Publicity; Questions Remain on Trademark And Third-Party Contribution Claims

Jackson v. Odenot, No. 09-cv-05583 (S.D.N.Y. filed March 24, 2014) [Doc. 150].

Rapper 50 Cent was granted summary judgment on his claims against a website for the unauthorized use of photographs that appeared on the masthead of the website.  50 Cent's claim for copyright infringement was based on a registration for a sound recording which included the relating artwork/photos, and exact copies were used by the defendants.  50 Cent's claim under New York state law for the right of publicity (Civil Rights Law sections 50-51) succeeded because: (1) the pictures "are recognizable likenesses of Jackson because someone familiar with Jackson would be able to identify him in each of the mastheads", and (2) defendants' waived their statute of limitations defense.  However, the Court found that there were questions of fact that precluded summary judgment on 50 Cent's claim under the Lanham Act for false endorsement, 15 USC 1125(a)(1), and also on his claim for common law unfair competition.  The Court did dismiss the defendants' affirmative defenses of fair use, implied license, equitable estoppel, and unclean hands, and found that the other affirmative defenses had been abandoned.  Lastly, the Court held that defendant could not recover on a contribution theory under copyright and trademark law against the third-party defendants, but could seek contribution under the New York state claims.

6th Cir. Affirms Dismissal Of "Soul Men" TM Case

Moore v. Weinstein Co. et al., No. 12-5715 (6th Cir. filed Oct. 31, 2013) (decision here).

Plaintiff, Sam Moore of the group "Sam & Dave", appealed an adverse judgment on his trademark infringement and common law claims against the producers and distributors of a 2008 movie called "Soul Men" (starring Samuel L. Jackson and Bernie Mac) and its soundtrack.  The 6th Circuit affirmed dismissal.

Plaintiff argued that defendants had violated his right of publicity.  The Court disagreed, finding that the movie "added significant expressive elements to any purported use of Moore's identity."

Plaintiff also argued that defendants had committed trademark dilution under the Tennessee Trademark Act, of the mark SOUL MEN.  But, Plaintiff failed to provide evidence of the mark's fame.

Accordingly, the 6th Circuit affirmed summary judgment for defendants.

English Court Finds TopShop's Sale Of Rihanna T-Shirt Without Her Approval Was "Passing Off"

Robyn Rihanna Fenty et al. v. Arcardia Group Brands Limited (t/a Topshop) et al.; No. HC12F01378, [2013] EWHC 2310 (Ch. July 31, 2013).

This case was before the English High Court of Chancery in London.  In March 2012, the retailer Topshop started selling a t-shirt with an image of the pop star Rihanna on it.  Topshop had a license from the photographer, but not from Rihanna who contended that sale of the t-shirts without her permission infringed her rights.

The court found it "important to state at the outset that this case is not concerned with so called 'image rights'.  Whatever may be the position elsewhere in the world, and how ever much various celebrities may wish there were, there is today in England no such thing as a free standing general right by a famous person (or anyone else) to control the reproduction of their image."  Instead, "this case is concerned with passing off."  The burden was on Rihanna to establish that she has a goodwill and reputation amongst relevant members of the public, the conduct complained of was likely to deceive those members of the public into buying the product because they think it is authorized by her, and that misrepresentation damaged her goodwill.  For passing off to succeed, there must be a misrepresentation about trade origin.

The Court concluded that Rihanna "was and is regarded as a style icon by many people..." and that she had ample goodwill to succeed in a passing off action.  The scope of her goodwill was not only as a music artist but also in the world of fashion.

"The real issue in this case" was misrepresentation.  The Court concluded that a misrepresentation was made, and held that "it is a matter for the claimants and not Topshop to choose what garments the public think are endorsed by her."  Finding in favor of Rihanna.

Right Of Publicity In Washington State Hendrix Case

Experience Hendrix, LLC v. Hendrixlicensing.com, Ltd., No C09-285Z (W.D. Wash. Feb. 8, 2011). Decision here.

Washington State enacted a law that rights of publicity do not expire upon the death of the individual. Defendants distribute merchandise bearing Jimi Hendrix's likeness, accompanied with his name. If applied in the litigaiton, the statue would deem all rights to the use of Jimi Hendrix's name, voice, signature, photograph, or likeness in plaintiff (as assignee of Hendrix's intestate heir). Such result would preclude defendants, absent plaintiff's consent, from commercially distributing images of Jimi Hendrix, at least in the State of Washington.

Although plaintiff sought to avoid the "constitutional thicket" concerning the Washington statute by not pleading a cause of action thereunder, the Court held that plaintiff's allegations implicate the right of publicity. Thus, plaintiff could not avoid "the fundamental issue in this case, namely whether [the statue] " had the effect of vesting in [plaintiff] any right of publicity relating to JImi Hendrix such that [plaintiff] may preclude defendants from trading in images of, or art created by, Jimi Hendrix."

In analyzing the constitutionality of the statute, the Court noted that the statute purports to govern whether a right of publicity exists, whether it continues post-mortem, and how it may be transferred during life and after death, regardless of where the particular individual or personality is or was domiciled. The Court held that the statute violated the Due Process and Full Faith and Credit clauses of the Constitution and consequently, under New York law, plaintiff had no publicity rights. The court stressed that the statute purports to govern advertising and fundraising activities everywhere. Also, under the Due Process Clause, to apply its own law, Washington must have a significant contact or significant aggregation of contacts, creating state interests, such that choice of its law is neither arbitrary nor fundamentally unfair. The Court held that applying Washington law to the issue of descendbility was arbitrary and unfair because the domicile at death has substantial relevant contacts.

The court also found that application of the Washington statute would cause forum shopping by having plaintiffs divert sales to Washington, and would require users of the rights (potential defendants) to attempt to restrict commercial activity to avoid application of the statute. Applying the domicile-at-death rule would avoid these problems and provide certainty.

My Boyfriend's Back

Sirico v. F.G.G. Prods., Inc., 2010 NY Slip Op 01733 (1st Dep't Mar. 4, 2010).

Singers of the 1960s hit "My Boyfriend's Back" sues producer of the recording concerning royalties. On appeal of denial of motion for renewal, the Appellate Division addresses plaintiff's New York breach of contract, breach of implied contract, unjust enrichment, accounting, rescission, and right of privacy statutory claims. Specifically at issue is whether summary judgment was appropriate based on limited discovery and problematic affidavits. The court also addresses laches, statute of limitations, limitation on equitable claims.

Sirico v F

50 Cent's Beef with Taco Bell

Article

Summary: Careless Publicity Ploy Blows Up Into Lawsuit, Fuels Bad PR

Aerosmith Singer Sues Bloggers

More blogger news this week:

Article --

Aerosmith singer Steven Tyler sued unknown bloggers who allegedly impersonated him on the internet, writing about "intimate details" of his life. The suit accuses the bloggers of public disclosure of private facts, making false statements and misappropriation of likeness. It also seeks an injunction to have the defendants stop impersonating him online or elsewhere.

DMCA: Prince Blocks YouTube Video of 'Creep' Cover

Here's an interesting question under the Digital Millennium Copyright Act:

Prince performs a cover of the Radiohead break-out hit "Creep" at the Coachella Music Festival. Fans post video of the public performance on YouTube. After already receiving thousands of hits, YouTube removes the video at Prince's label's request; however, Radiohead wants YouTube to "unblock" the video. What does YouTube do?

Billboard addressed the issue: Observing first that "the posted videos were shot by fans and, obviously, the song isn't Prince's", Billboard continues, "Whether the same [DMCA notice] could be done for a company not holding a copyright is less clear, but Yorke's argument would seem to bear some credence according to YouTube's policies".

So, notwithstanding your views on the DMCA, who has priority under the notice and take-down scheme -- the owner of copyright in the sound recording (Prince), or the owner of copyright in the underlying composition (Radiohead)?

Because this was a live performance, it is highly unlikely that there was any sort of publisher/performer agreement other than the public performance license (compositions) the venue pays.

Another tangential issue is Prince's right of publicity/privacy. Most performers prohibit video/flash-camera at their concerts, and in fact, Prince prohibited the standard arrangement of allowing photographers to shoot near the stage during the first three songs of his set. Instead, he had a camera crew filming his performance.

But, rights of privacy/publicity are state laws, and though related, do not come under the Copyright Act's umbrella.

[Update: Marty Schwimmer's post on the Trademark blog re: this "law school fact patter"]

Smashing Pumpkins Sue Label

Tipsters, where are you?

Billboard:
The Smashing Pumpkins are suing Virgin Records, saying the record label has illegally used their name and music in promotional deals that hurt the band's credibility with fans

The AP:
Virgin put out the Smashing Pumpkins' music for more than 17 years, but the only active agreement between the two parties, the lawsuit claimed, is a deal granting Virgin permission to sell digital downloads of the band's songs. The agreement does not give Virgin the right to use the band in promotional campaigns to sell outside products, the lawsuit said.

UPDATE (3/26/08) -- Billy Corgan speaks out: "I'm sure they indicated to Pepsi that they had a right to do this, full well knowing they do not have the right,"

[breach-of-contract lawsuit filed in Los Angeles Superior Court Monday, 3/24/08]

What I Like About You

The Patry Copyright blog posted an interesting decision in the "Guitar Hero" case pending in the Eastern District of Michigan. You can read the decision here.

Of interest are the right to publicity claims, and both the standing and preemption issues.

[The Romantics v. Activision Publishing, Inc., 2008 WL 186370 (E.D. Mich. Jan. 22, 2008)]