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Samuel David Moore v. The Weinstein Company, LLC, USDC M.D. Tennessee, May 23, 2012
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District court grants summary judgment in favor of defendants and dismisses suit by Soul Man singer against producers and distributors of Soul Men film and soundtrack, finding that plaintiff could not establish common-law trademark rights in unregistered marks or the required elements of state law claims.
Samuel David Moore, a singer and entertainer best known for the hit songs Soul Man and Hold On I’m Comin’, sued The Weinstein Company and various other entities responsible for the production and distribution of the 2008 film Soul Men and its soundtrack. Moore asserted Lanham Act and numerous state-law claims against the defendants. On defendants’ motion for summary judgment, the district court dismissed the lawsuit in its entirety. Moore was one part of the two-man group Sam & Dave, which achieved great fame in the late 1960s and early ‘70s. Moore claimed to have intellectual property interests in trademarks he had not registered, including “Soul Man,” “Soul Men,” “The Legendary Soul Man,” “The Original Soul Man,” and “The Original Soul Men.” He also claimed rights in the title to a Sam & Dave album from 1967, Sam & Dave Soul Men, as well as a 2008 DVD titled The Original Soul Men.
Moore claimed that Soul Men, a comedy about the reunion of two former backup singers in which Samuel L. Jackson and Bernie Mac performed the song Hold On I’m Comin’, infringed on these marks, as well as violated his right of publicity, and constituted, among other things, false light invasion of privacy and unfair competition. (Moore did not assert any claims directly arising from the performance in the film of Hold On I’m Comin’, for which Moore was not the copyright owner.)
Prior to addressing the claims individually, the court found that the unregistered marks to which Moore laid claim were used by many others and that his lawsuit marked the first time Moore had asserted any rights over these marks. Moore did not present the Court with any surveys about the public’s association of him with these marks, nor did he present evidence showing he derived income from the marks. The court also noted that the film did not directly reference Sam Moore or Sam & Dave, though Jackson and Mac did perform one of the group’s signature songs.
Concerning Moore’s trademark claims under § 43(a) of the Lanham Act, the court found that his claims arose from the unregistered marks and the titles to the 1967 album and the 2008 DVD. The court held that the First Amendment barred any § 43(a) claim arising from the various unregistered marks because the Soul Men title was expressive, had relevance to the content of the film, and was not a direct or indirect reference to Moore or his group Sam & Dave. Citing Rogers v. Grimaldi, 875 F.2d 994 (6th Cir. 1989), the court found that the First Amendment could not bar the § 43(a) claim arising from the album and DVD titles (because it does not apply to confusingly similar titles), and that the basic likelihood-of-confusion test applied, which required Moore to show possession of common-law rights in his unregistered marks. Moore could not make the requisite showing of having used or displayed the marks in the course of his career, however, and, even if he could, he could not show consumer confusion between his unregistered marks and the film title.
The court also found that Moore’s Lanham Act dilution claim failed as well, because Moore could not show that his marks were famous. He could not satisfy three of the four famousness factors set out in § 43(c)(2) – the receipt of income from the marks, public recognition of the marks, and registration of the marks.
After dispatching Moore’s federal claims, the court analyzed his state-law claims, which were governed by either the law of Tennessee (the forum state and where Moore initially came to fame) or the law of Arizona (where Moore lives), and dismissed all of the claims. Moore’s unfair competition claim failed because he could not show that the defendants engaged in the requisite passing off – that they passed the film off as something having to do with Moore – or any actual confusion, which Tennessee law requires. Moore’s false light invasion of privacy claim failed because he could not show that the film was intended to portray him or, assuming portrayal, that the defendants acted with actual malice, which the First Amendment requires when public figures are involved, under New York Times v. Sullivan. Moore’s right of publicity claim under Arizona law failed because he could not show that the film used his name, photograph or likeness.
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