USDC E.D. Michigan, September 10, 2009

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  • Court grants defendant DVD producer’s motion for summary judgment, holding that plaintiff’s claims based on misappropriation of his name and likeness are barred by the First Amendment and copyright preemption.

Defendant Eagle Rock Entertainment released a DVD entitled “Mahavishnu Orchestra, Live at Montreux, 1984, 1974” which includes video and still pictures of plaintiff Ralphe Armstrong, a professional bass player and a member of the Mahavishnu Orchestra in 1974. Armstrong sued for violation of his right to privacy stemming from the alleged misappropriation of his name, image and likeness, and for false designation of origin under the Lanham Act.

The district court granted defendant’s motion for judgment on the pleadings and/or summary judgment dismissing the appropriation claim, holding that although the plaintiff established material questions of fact on certain elements of a misappropriation claim, the First Amendment and copyright preemption foreclosed submitting the claim to the jury.

The court held that the First Amendment barred liability for the use of plaintiff’s picture on a DVD cover and in liner notes, because the DVD and packaging at issue was a work of artistic expression and had entertainment value, but, citing the Supreme Court’s decision in Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977), held that the First Amendment did not protect the use of plaintiff’s performance because the DVD included plaintiff’s entire act and was allegedly published without his consent.

However, the court went on to hold that the misappropriation claim based on the use of plaintiff’s performance in the DVD was preempted by the Copyright Act because, under the particular facts and circumstances of the case, plaintiff’s appropriation claim was “not distinct from the copyright protections afforded to the holder of the copyright of the recording.” A state law claim infringes Copyright Act rights “if the right defined by state law may be abridged by an act which in and of itself would infringe one of the exclusive rights.” Under the Copyright Act, “if the state law claim requires an additional element instead of or in addition to the acts of reproduction, performance, distribution, then there is no preemption provided that the extra element changes the nature of the action so that it is qualitatively different from a copyright infringement claim.”

Although the court recognized that “significant commercial value in one’s identity and exploitation are not necessarily elements of a copyright infringement claim,” and thus the Michigan state-law appropriation tort could be deemed to have extra elements beyond those of a copyright infringement claim, the court held that “based upon the facts presented and the claims actually pled by the parties, these extra elements do not change the nature of the action in this case such that it is ‘qualitatively different from a copyright infringement claim.’” The DVD is a reproduction of the recording of the Montreux Jazz Festival performance in 1974, the very subject of the copyright; the court held that “even though plaintiff’s claim is couched as an appropriation of likeness claim, it is really a copyright violation claim.”

The court also dismissed plaintiff’s Lanham Act claim, holding that what plaintiff delineated as a “false designation of origin” claim was actually a “false endorsement” claim, and was barred by the First Amendment, as any “likelihood of confusion” did not outweigh “the public interest in free expression.”