Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
Nov. 1 --Sam Moore, who was the “Sam” in the 1960s soul music duo Sam and Dave failed to establish that a district court had erred in awarding summary judgment on his claims against the makers of the 2008 movie “Soul Men,” the U.S. Court of Appeals for the Sixth Circuit ruled in an opinion designated as not for publication (Moore v. Weinstein Co., LLC, 6th Cir., No. 12-5715, unpublished opinion10/31/13).
Affirming the lower court's award of summary judgment, the court rejected all of Moore's appeals on issues of federal law and Tennessee state law.
Samuel David Moore (born Samuel David Hicks in 1935) and David Prater (born 1937) were gospel singers who began singing together in 1961 in Miami. They began recording together as Sam and Dave, and in 1965, they were signed to Stax Records in Memphis, Tenn., where they were combined with Stax's house backing band Booker T. and the M.G.'s.
For the next decade, they released several albums and singles that became hits, the most popular being “Soul Man,” composed by Isaac Hayes and David Porter, which was released in 1967 as a single and on an album titled “Sam and Dave: Soul Men.” After 1971, they recorded intermittently but continued to perform together. In 1981, the duo split for the final time.
Subsequently, Prater found another “Sam”--Sam Daniels--and from 1982, they performed together as “Sam and Dave” or “The New Sam and Dave Revue,” until Prater's death in an auto accident in 1988. Moore continued to perform as “Sam Moore, the Legendary Soul Man,” and similar names. In 2008, Moore participated in a documentary released on disc about Sam and Dave called “The Original Soul Men: Sam and Dave.”
The same year, the Weinstein Co. d/b/a Dimension Films released a motion picture, “Soul Men,” featuring actors Samuel L. Jackson and Bernie Mac playing 1960s soul music singers with a group called Marcus Hooks and the Real Deal. The film was distributed by MGM Studios Inc. and video discs were distributed by Genius Products LLC. Concord Music Group Inc. distributed a soundtrack album, titled “Soul Men: The Original Motion Picture Soundtrack.”
In 2012, Moore, his wife Joyce Ellen Moore, and the SJM Trust sued Weinstein, MGM, Genius Products, Concord Music, and Harvey and Robert Weinstein, alleging trademark infringement. Moore argued that the movie's title infringed his common law trademark interests in the terms “Soul Men,” “Soul Man,” “The Legendary Soul Man,” “The Original Soul Man,” and “The Original Soul Men.” Furthermore, Moore asserted that the film and the soundtrack album infringed the trademarks related to the 1967 album and the 2008 documentary.
Also included were claims of trademark dilution, publicity claims, consumer protection claims, unfair competition, unjust enrichment, and civil conspiracy.
Judge Aleta A. Trauger of the U.S. District Court for the Middle District of Tennessee dismissed Joyce Moore and the SJM Trust from the proceedings and granted summary judgment to the filmmakers on all the claims.
Moore appealed the summary judgment award with respect to the claims of unfair competition and trademark dilution under the Lanham Act, 15 U.S.C. §1125, and the claims under Tennessee state law for trademark infringement, unfair competition, consumer protection, and right of publicity.
Judge Deborah L. Cook first adopted the district court's reasoning with the Lanham Act claims and the Tennessee law unfair competition claims and affirmed the lower court with no further analysis.
The court then affirmed summary judgment with respect to Moore's right of publicity claim by applying ETW Corp. v. Jireh Publ'g, 332 F.3d 915, 67 U.S.P.Q.2d 1065 (6th Cir. 2003), which held that the First Amendment protects the use of a person's persona or identity if that expression incorporates “a significant creative component” other than the use of the identity, such that it held “significant transformative elements which make it especially worthy of First Amendment protection and also less likely to interfere with the economic interest” protected by the right of publicity.
In this case, the court said that “Without a doubt, the Movie added significant expressive elements to any purported use of Moore's identity.”
The court also rejected Moore's claim with respect to the advertising material packaged with the CDs and DVDs related to the Dimension Films picture. The references to the “original soul men” were obviously not references to Sam and Dave, the court said.
Turning to the trademark dilution claim under the Tennessee Trademark Act, Tenn. Code Ann. §45-25-513, the court found that Moore had failed to establish that he held rights in a trademark that was famous in the state. The court rejected the argument that Moore's personal fame was sufficient to establish that the asserted trademark was famous.
Finally, the court determined that with respect to his claim under the Tennessee Consumer Protection Act, Moore had failed to establish any triable question regarding whether any consumers in Tennessee were deceived or harmed.
The court thus affirmed the district court's rulings.
The court's opinion was joined by Judge John M. Rogers and Judge Gregory F. Van Tatenhove.
To contact the reporter on this story: Anandashankar Mazumdar in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Naresh Sritharan at email@example.com
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)