TIN PAN APPLE, INC. v. MILLER BREWING CO., INC. No. 88 Civ. 4085 (CSH).
737 F.Supp. 826 (1990)
TIN PAN APPLE, INC., Sutra Records, Inc., Fools Prayer Music, Inc., and Mar Morales, Darren Robinson, and Damon Wimbley (together p/k/a the "Fat Boys"), Plaintiffs, v. MILLER BREWING CO., INC., Backer & Spielvogel, Inc. and Joe Piscopo, Defendants.
United States District Court, S.D. New York.
May 14, 1990.
Richards & O'Neil, New York City, for plaintiffs; Jonathan Zavin, of counsel.
Davis & Gilbert, New York City, for defendants; Howard J. Schwartz, Maribel Figueredo, Bruce Ginsberg, of counsel.
MEMORANDUM OPINION AND ORDER
HAIGHT, District Judge:
Plaintiff's amended complaint asserts causes of action for copyright infringement under 17 U.S.C. §§ 101 et seq., false designation of origin and unfair competition under 15 U.S.C. §§ 1114 and 1125(a), and state statutory and common law claims under principles of pendent jurisdiction.
Defendants move under Rule 12(b)(6), F.R.Civ.P., to dismiss the amended complaint for failure to state a claim upon which relief can be granted. In the alternative, defendants move under Rule 12(e) and (f) for a more definite statement and to strike certain allegations of plaintiffs' pleading.
This action arises out of the professional activities of the three individual plaintiffs, Mark Morales, Darren Robinson, and Damon Wimbley, professionally known as the "Fat Boys." The amended complaint alleges that by 1983, these plaintiffs were singing together and performing in a distinctive singing style known as "rapping." Rapping is generally alleged to be "spoken or semi-sung rhyming verse recited over a powerful rhythm track created by drums and drum sounds; it is lyrics over an almost exclusively percussion-based melody." Amended complaint at ¶ 11.
Plaintiff Tin Pan Apple, Inc. is alleged to be the owner of the registered service mark FAT BOYS for performing services and a copyright owner of various FAT BOYS sound recordings. Plaintiff Sutra Records, Inc. is the copyright owner of various FAT BOYS sound recordings, including specific recordings listed in ¶ 16 of the amended complaint. Plaintiff Fools Prayer Music, Inc. is one of the copyright
Defendant Miller Brewing Co., Inc., manufactures and distributes beer. Defendant Backer & Spielvogel, Inc., is an advertising agency that creates commercials and advertising campaigns for Miller. Defendant Joe Piscopo is a comedian who appeared in the television commercial forming the subject matter of this suit.
The amended complaint alleges at ¶ 29:
The pleading contains detailed descriptions of the individual plaintiffs' physical appearance and dress while performing; the manner in which they perform; their youth; and the messages they seek by the lyrics of their songs to convey to youth: "to stay in school, to avoid all use of drugs or alcohol, and to abstain from sexual activity or to use contraceptive protection." ¶ 27; see also ¶¶ 22-26, 28.
In these circumstances, plaintiffs' amended complaint asserts nine claims against defendants. The first two allege copyright infringement, of musical compositions and sound recordings respectively, and are founded upon the federal Copyright Act. The third and fourth claims allege false advertising and unfair competition, and are founded on the federal Lanham Act. The fifth claim alleges unfair business practices, false advertising, and unfair competition under the New York General Business Law, §§ 349 and 350. The sixth claim alleges violation of plaintiffs' rights of privacy and publicity in respect of "look-alikes" under the New York Civil Rights Law, §§ 50 and 51. The seventh claim alleges comparable violations in respect of "use of sound-alikes". The eighth and ninth claims allege trade libel and disparagement, and libel per se, respectively.
Defendants move to dismiss all these claims under Rule 12(b)(6). I discuss them in the order in which they are pleaded.
I begin the analysis of defendants' motion to dismiss by recalling that on such a motion, the well-pleaded allegations of the complaint and all reasonable inferences therefrom must be considered as true. Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp.,
The Copyright Claims
Given these considerations, it is idle for defendants to argue on this motion that they have never "copied any of the copyrighted works in question." Reply Brief at 2. Plaintiffs allege that defendants copied parts of one or more of their copyrighted sound recordings, and composed and broadcast a melody substantially similar to one or more of plaintiff's compositions. The precise meaning of "one or more" may be explored on discovery, and plaintiff's have the burden of proof; but for purposes of the present motion, defendants concede
This does not end the inquiry. Defendants submit a copy of the television commercial in suit which the Court has examined. Defendants' main defense to the copyright claims characterizes the commercials as a "obvious parody of rap", constituting a "fair use which prevents a claim of copyright infringement." Main Brief at 6.
Whatever legal meaning "parody" may have in other contexts, cf. Hustler Magazine v. Falwell,
In Warner Bros., Inc. v. American Broadcasting, Inc.,
Parody, then, qualifies generally as fair use in copyright law. Whether a particular work qualifies as fair use requires consideration of the four elements § 107 goes on to recite:
In the area of parody as copyright infringement, Second Circuit case law focuses first upon the general question—is the defendant's work truly a parody?—and then considers the four particular factors set forth in § 107(1)-(4).
Thus in Elsmere Music, Inc. v. National Broadcasting Co.,
482 F.Supp. at 745.
District Judge Goettel rejected the plaintiff's argument that the song "I Love Sodom" and the sketch of which it was a part "did not constitute a valid parody of the `I Love New York' advertising campaign." Id. at 746. Judge Goettel then said:
Id. at 747.
Judge Goettel answered that question in the negative and dismissed plaintiff's infringement action.
The Second Circuit affirmed per curiam "on Judge Goettel's thorough opinion", 623 F.2d at 253; but notwithstanding that thoroughness, was moved to append a footnote which reads as follows:
I perceive in that footnote a Second Circuit articulation of what a "valid parody" is. And I conclude that a work, clearly copied from a protected work (as I am bound to regard the defendants' work at bar) must be a valid parody if it is to qualify even for consideration as an example of fair use under § 107.
That conclusion is not inconsistent with Berlin v. E.C. Publications,
Id. at 545.
The Second Circuit concluded its opinion in Berlin with these words:
The alleged copyright infringers in Elsmere and Berlin were a comedy television program and a comic magazine: both vehicles for the expression of that creative flow of ideas which the Second Circuit identified in Warner Bros. as the justification for the parody branch of the fair use doctrine. But there is ample authority for the proposition that appropriation of copyrighted material solely for personal profit, unrelieved by any creative purpose, cannot constitute parody as matter of law. Judge Leval reached that conclusion for this Court in D.C. Comics v. Crazy Eddie, 205 USPQ 1177 (S.D.N.Y.1979). The defendant produced and broadcast on local television channels a filmed commercial for his consumer electronic equipment which represented a "detailed copying" of plaintiff's copyrighted televised "trailers" for "Superman" television programs. Defendant argued that his commercial was a parody of the protected "Superman" work, relying as do defendants at bar upon Berlin. Judge Leval rejected the defense of a parody as fair use:
205 USPQ at 1178.
In Warner Bros. v. American Broadcasting Companies, supra, the Second Circuit expressly approved D.C. Comics, Inc. v. Crazy Eddie, Inc., in an analysis which it is useful to quote at length:
720 F.2d at 242 (footnote omitted).
It is worth noting that D.C. Comics, as interpreted by the Second Circuit in Warner Bros., did not involve the sale by defendant of products which competed with plaintiff's product. The Crazy Eddie electronics discount chain did not compete in any fashion with the plaintiff's Superman comic books and filmed television productions. No matter: the parody as fair use defense failed because defendant's use of appropriated copyrighted material "to promote the sale of commercial products" simply did not qualify as parody.
Original Appalachian Artworks v. Topps Chewing Gum,
642 F.Supp. at 1034.
In a case where plaintiff and defendant competed in the entertainment field, the Second Circuit stressed defendants' commercial purposes in rejecting a fair use defense based on parody:
The Supreme Court in two recent cases has emphasized commercial purpose as a factor militating against fair use. Sony Corporation of America v. Universal City Studios, Inc.,
In D.C. Comics, Judge Leval did not feel it necessary to analyze the four "fair use" factors specified in § 107. He simply concluded that the television commercial could not qualify as a fair use parody because it was nothing more than an unjustifiable appropriation of copyrighted material for personal profit. The other cited cases engage in a more detailed § 107 analysis. I do not think it makes any difference here, since in either event defendants' commercial does not qualify as parody. The commercial's use is entirely for profit: to sell beer. Even if the concept of parody is impermissibly stretched to include this commercial, it does not qualify as fair use, since accepting the pertinent allegations of the complaint as true, the commercial in no manner "builds upon the original," nor does it contain elements "contributing something new for humorous effect or commentary." Elsmere, supra.
An additional factor militating against fair use emerges from plaintiff's pleading. A court may consider "whether the paraphrasing and copying was done in good faith or with evasive motive." MCA, Inc. v. Wilson, supra, at 183. Plaintiffs allege that defendants Miller and its advertising agency had contacted plaintiffs Morales, Wimbley and Robinson to appear in such a commercial but they had declined. Subsequently defendants put together the commercial in suit, using look-alikes of the individual plaintiffs as background performers
Defendants insist that the complaint does no more than allege violation by the commercial of "the style of rap music as performed by the Fat Boys," and contend that "[t]he copyright laws do not give a registrant exclusive ownership and control over an entire jenre music." Reply Brief at 4. On this motion, however, I must accept as true plaintiffs' allegations that the commercial infringes both copyrighted compositions, ¶ 36, and copyrighted sound recordings, ¶ 42.
Defendants' motion to dismiss the copyright claims is denied.
The Trademark Claims
The complaint alleges that plaintiffs Morales, Wimbley and Robinson adopted the name FAT BOYS to identify their musical performing group, and that on application of plaintiff Tin Pan Apple, Inc., that name was registered on the principal register in the United States Patent and Trademark Office. The complaint further alleges that Tin Pan Apple and the individual plaintiffs have entered into license agreements for the use of the name FAT BOYS for products such as clothing and toys; that the group has achieved commercial success and established good will associated with the name of FAT BOYS as a singing group; that the individual plaintiffs' "unique musical and performance style" has caused their name and service mark to become associated in the public mind "with a certain style of performance, type of music and message to be delivered by the music"; and that the public associates the individual plaintiffs "specifically with FAT BOYS in their recognizable personae of overweight, young singers who create a melody for their songs by vocal sounds rather than instruments and who consistently appear before the public wearing square studded eyeglasses, T-shirts, stripped sneakers, satin baseball jackets and large, gold name pendants around their necks." ¶¶ 45-49. Defendants' commercial is alleged to represent a deliberate attempt to misrepresent, mislead and confuse the public and customers of plaintiff's products and services into falsely believing:
The complaint further alleges the particular physical characteristics and performance styles of the individual plaintiffs, and the manners in which the participants in the commercial closely resemble those characteristics and styles. ¶¶ 22-26, 30-31. Jurisdiction over the trademark claims is predicated on the Lanham Act, 15 U.S.C. §§ 1114, 1125(a).
Defendants argue that there is no substantial similarity between the performance depicted on the commercial and the performance of the Fat Boys, and hence no likelihood of consumer confusion. But I must take the complaint's factual allegations as true, and there is no basis for concluding on the pleadings that plaintiffs do not have a viable claim on this element.
Defendants again rely upon the defense of parody. The Second Circuit recognizes parody as a defense to a Lanham Act claim. Indeed, in Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing, Inc.,
Id. at 494
Relying upon its prior analysis in Rogers v. Grimaldi,
For essentially the same reasons stated in connection with plaintiff's copyright claims, I decline to recognize defendants' commercial as parody. Accordingly that defense fails again.
A copyright claim is made out when defendant copies the protected work without the defense of fair use (such as parody). There is an additional element to a trademark claim. "The heart of a successful claim based upon §§ 32(1) and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114(1) and 1125(a), and common law trademark infringement is the showing of likelihood of confusion as to the source or sponsorship of defendant's products." Standard & Poor's Corp. v. Commodity Exchange,
On this aspect of the case at bar, Judge Motley's opinion in Allen v. National Video, Inc.,
Evidence of actual confusion, the fourth factor, "although highly probative of likelihood of confusion, is not required." Ibid.
On the final factor, the good or bad faith of defendant, Judge Motley properly observed that where a defendant designs an advertisement intentionally to evoke an association with a plaintiff, they "must therefore at least have been aware of the risk of consumer confusion, which militates against a finding that their motives were completely innocent."
Turning from this useful "look-alike" case to the one at bar, I must first observe that the present motion is not that of plaintiff for summary judgment (which Judge Motley granted in Allen). Rather, defendants move to dismiss the complaint; and the standard is that of Rule 12(b)(6). Under the familiar principles discussed supra, the first and second factors—the strength of the plaintiffs' "marks" and name and the similarity of plaintiffs' and defendants' marks—are sufficiently alleged in the amended complaint and must be taken as true. The third factor, proximity of the products, which necessarily implicates consideration of the relevant market, suggests some differences: presumably not all devotees of rap music also drink beer. But it seems safe to assume that many of them do, and this factor is satisfied if there is a sufficient "intersection" of the audience involved. Allen v. Men's World Outlet, Inc.,
As to actual confusion, the purpose of a Rule 12(b)(6) motion is not to seek out the sufficiency of evidence. In any event such evidence is not required to state a claim.
The fifth factor, sophistication of the defendant's audience, militates in plaintiffs' favor. The populations involved are individuals who watch performances of rap music and individuals who drink beer. Defendants cast wide nets. One cannot assume so great a degree of sophistication as to negate likelihood of confusion.
Given the factual allegations of the complaint, the sixth factor, defendants' bad faith, also militates strongly in favor of plaintiffs' claim. Indeed, the case is stronger for plaintiffs in that regard than Allen v. National Video, Inc. In that case, Judge Motley regarded defendants' motives as dubious when they deliberately procured a Woody Allen look-alike, even though there had been no prior communications with Allen about the advertisement in question. Plaintiffs at bar allege that defendants asked them to participate in a Miller Beer television commercial, they refused, and defendants then procured the look-alikes. That is bad faith raised to a higher power. A comparable course of conduct was characterized in Midler v. Ford Motor Co.,
The Unfair Competition Claims
I do not understand defendants to challenge separately the legal sufficiency of plaintiffs' allegations of unfair business practices, false advertising, and unfair competition under §§ 349 and 350 of the New York General Business Law (fifth claim of the amended complaint). This claim is governed by the same considerations discussed supra, and defendants' motion to dismiss it is denied.
The Rights of Privacy and Publicity Claims—"Look-Alikes"
Plaintiffs' sixth claim is based upon §§ 50 and 51 of the New York Civil Rights Law, whose provisions appear in the margin.
Sections 50 and 51 of the Civil Rights Law "are penal in part, and should be construed accordingly," Lombardo v. Doyle, Dane & Bernbach, Inc.,
Notwithstanding these general principles, there is also authority for the proposition that a defendant's deliberate seeking out and use of as close a look-alike as possible to the plaintiff falls within the ban of the statute, even if the plaintiff's name is not used. In Onassis v. Christian Dior-New York, Inc.,
The court granted Mrs. Onassis a preliminary injunction against publication of the ad, distinguishing Lombardo, supra, on
Id. at 261.
Binns v. Vitagraph Co. of America, 210 N.Y. 51, 103 N.E. 1108 (1913), cited by the Onassis court, held that the use of an actor to represent plaintiff, a heroic wireless operator within the public eye in a photoplay violated the statute. The New York Court of Appeals said:
Id. at 57, 103 N.E.2d at 1114.
In Allen v. National Video, Inc., supra, involving the Woody Allen look-alike, Judge Motley decided the case under § 43(a) of the Lanham Act. However, in the context of § 51 of the Civil Rights Law she cited Onassis for the proposition that "an exact duplication of plaintiff was not necessary to make out a cause of action under the statute, so long as the overall impression created clearly was that plaintiff had herself appeared in the advertisement," and went on to say:
610 F.Supp. at 623.
I conclude that for Rule 12(b)(6) purposes the amended complaint states a viable claim under §§ 50 and 51 of the New York Civil Rights Law. Defendants correctly observe that the present record includes no photographs, videos or other depictions of the individual plaintiffs from which an evaluation of physical resemblance may be made. Thus decision at this stage of the case does not preclude a motion by defendants for summary judgment on a more complete record. But the complaint's allegations of physical similarity, which I must accept as true, state a claim, given the cited cases' recognition that close resemblance in certain circumstances may violate the statute.
Defendants' motion to dismiss the §§ 50 and 51 claims based on "look-alikes" is denied.
The Rights of Privacy and Publicity Claims—"Sound-Alikes"
In their seventh claim, plaintiffs invite this Court to "correct" an "oversight" of the New York Legislature and hold that defendants' use of sound-alikes of their voices violates §§ 50 and 51. I decline the invitation.
The statute extends the right of privacy to an individual's "name, portrait or picture ..." It is one thing to regard a close physical resemblance as the functional equivalent of a picture; that is the thrust of the cases cited in the preceding section. The same sense, that of vision, is involved. It is quite a different proposition to bring the sense of sound within the statute when the legislature has so far declined to do so. That is not an appropriate judicial function.
In Lahr v. Adell Chemical Co.,
It does not follow that resemblances in sound between the Fat Boys' performances and the commercial are not probative of any issues in the case. Similarity of sound in combination with similarity of appearance may militate in favor of plaintiffs' other claims, just as defendants would be assisted if the individuals appearing with Piscopo in the commercial looked like the Fat Boys but sounded like the Vienna Boys' Choir. But plaintiffs' sound-alike claim does not state a separate cause of action under the Civil Rights Law. Accordingly defendants' motion to dismiss that claim under Rule 12(b)(6) is granted.
The Defamation Claims
In response to defendants' motion to dismiss the complaint, plaintiffs amended the complaint in respect of their defamation claims. The eighth claim alleges product disparagement. The commercial is alleged to constitute a false representation that the individual plaintiffs approve of and solicit orders for an alcoholic beverage, although they are under the legal drinking age as specified by the New York Alcoholic Beverage Control Law, § 126. The individual plaintiffs are alleged to "have suffered damages and injury to their business reputations from this presentation of their images." As "special damages'" plaintiffs allege they "have lost customers including a tour sponsorship from Coca-Cola, Inc.", that "plaintiffs' customers have been deterred from pursuing negotiations with plaintiffs because of the false association of the FAT BOYS with the Miller beer product'" and that plaintiffs "have suffered specific pecuniary loss and injury to their business thereby." ¶¶ 71-77.
The ninth claim alleges libel per se in that the commercial suggests "that plaintiffs Morales, Wimbley and Robinson would engage in illegal activity," namely, endorsing the drinking of and soliciting orders for the purchase of an alcoholic beverage in violation of § 126 of the Alcoholic Beverage Control Law. ¶¶ 79-83.
Defendants contend that neither claim states a viable cause of action for defamation. I agree.
Whether we deal with libel per se or libel per quod, it is for the court to say as a preliminary question of law whether there is a reasonable basis for drawing the defamatory conclusion alleged by plaintiffs. "The language will be given a fair reading and the court will not strain to place a particular interpretation" on defendant's utterances. James v. Gannett Co., Inc.,
Plaintiffs at bar do not pass the threshold inquiry. There is no basis from which
The conduct depicted in the commercial cannot be regarded as the manufacture or sale of beer, or trafficking in alcoholic beverages, as those words are defined in the statute.
Nor, on the eighth claim, have plaintiffs sufficiently alleged special damages, a necessary element in libel per quod. See Harwood Pharmacal Co., Inc. v. National Broadcasting Co., Inc.,
What I have said concerning plaintiffs' claim for libel per quod is sufficient to dispose of their claim for libel per se. An utterance is libelous and actionable without alleging special damages "if it tends to expose the plaintiff to public contempt, ridicule, aversion, or disgrace, or induce an evil opinion of him in the minds of right-thinking persons, and to deprive him of their friendly intercourse in society." Rinaldi, supra, 42 N.Y.2d at 380, 397 N.Y.S.2d 943, 366 N.E.2d 1299 (citing and quoting Sydney v. MacFadden Newspaper Pub. Co., 242 N.Y. 208, 211-12, 151 N.E. 209, 212-13 (1926). Again, plaintiffs assert a perceptible violation by them of the Alcohol Beverage Control Law. There is none.
Defendants' motion to dismiss plaintiffs' eighth and ninth claims is granted.
Defendants' Alternative Claims for Relief
In the alternative, defendants pray for a more definite statement on the copyright claims under Rule 12(e), and to strike certain allegations in the complaint under Rule 12(f). Both motions are denied.
Rule 12(e) concerns the overall intelligibility of a pleading, not its evidentiary detail. Plaintiffs' allegations of copyright infringement are sufficiently precise to place defendants on notice of the nature of the claim. Defendants may develop additional details—for example, which musical compositions and sound recordings defendants are alleged to have infringed—through customary pre-trial discovery.
Defendants' motion to strike under Rule 12(f) is denied because the allegations in question concern arguably relevant background facts.
Defendants' motion to dismiss the complaint for failure to state claims upon which relief can be granted is granted as to the Seventh, Eighth, and Ninth claims. Those claims are dismissed with prejudice.
Discovery and preparation for trial will be supervised by a Magistrate in accordance with an Order previously entered.
It is SO ORDERED.
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