Posted by Spider-Man Rules at 65.173.252.222 on December 09, 2003 at 14:31:29:
In Reply to: Rosa Parks suing Outkast? posted by The Bastard on December 09, 2003 at 14:27:18:
: My how times have changed. It just seems funny to me that a woman who's been idolized a champion for civil rights would want to, I don't know, infringe ont he first amendment rights of a couple musicians.
Well first of all Rosa Parks has a history of suing people who use her name commercially. Anyway, the deal was that Outkast released a song called 'Rosa Parks' and Ms. Parks brought suit in a Michigan state court on a number of grounds. The defendants (the record label) made a motion to have the case removed to a Federal court, which they are allowed to do in this case because the case involved intepretation of a Federal statute (The Lanham Act, which is the federal trademark statute). So once the case was in Federal court both of the parties moved for something called summary judgment. For the plaintiff (Ms. Parks) this means that she was arguing that the facts of the case were so much in her favor, i.e. the violation of the Lanham Act, defamation, etc, were so egregious and uncontestable that the judge should rule that she wins without even having a trial. The defendant's motion for summary judgment basically says, even if everything the other party said was true, it so obviously does not amount to a violation of any law, that the judge should just dismiss the case.
So the federal District Court judge considered the briefs arguing each side and ruled that the defendants were right and awarded summary judgment on all claims. Ms. Parks then appealed that decision to the 6th Circuit Court of Appeals, arguing that the lower court was wrong to grant defendants summary judgment. In May of 2003 the 6th Circuit issued its opinion reversing the grant of summary judgment, saying that the lower court had made a mistake. But the court only reversed summary judgment as to the Lanham Act claims and the right to publicity claims, so the state law claims of defamation and tortious interference with a business relationship claims are basically dead (Ms. Parks can appeal to the Supreme Court but they won't take the case since there is no argument).
So the case is now back at the federal District Court where there will be a trial on the Lanham Act claims and right to publicity claim. The chief claim is false advertising which is part of the unfair competition clause of the Lanham Act. Basically Ms. Parks is arguing that by using her name in the title of the song, the defendants were creating the false impression in the minds of consumers and the public that she was associated somehow with the creation of the song or that it is about her. She is right in the big sense, that companies can't just use someone else's name in connection with a product, when the use of that name will cause confusion as the source of the product. I mean, otherwise we'd see the Bill Clinton brand popsicle or Valusoft titles like: American McGee's Ultimate Pinball.
In order to make the determination that the use of the plaintiff's name in the title of the song constituted false advertising, Ms. Parks has to give the court some evidence to support her claim. The types of evidence that the court will hear and the weight that they will give to it, depends on the jurisdiction that you are in. But basically courts will consider: actual evidence of confusion (i.e. letters written to Ms. Parks asking her about the song, or to Outkast asking about Ms. Parks), survey evidence which demonstrates that consumers, upon being presented with the song and then asked whether they thought that Ms. Parks had authorized the song or was involved in its production etc., said yes, or evidence that Outkast had purposely used her name for some gain (publicity, sales, etc.).
The defendants argument is two-fold: First they argue that naming their song 'Rosa Parks' doesn't actually confuse anyone into thinking that she had anything to do with the song (and they will present evidence of similar nature to the above to show this), and second, that they should be allowed to give whatever titles they want to their songs because the song is protected speech under the First Amendment.
Now this isn't the first instance of a case like this, there are lots of them. The most famous one currently, is probably the Barbie Girl/Mattel case, where Mattel sued Aqua's label for the use of their trademark in their song's title and lyrics. The Barbie Girl case was decided by the 9th Circuit and they found that the use of Barbie in the song was permissible. By the way the Barbie Girl case is an AWESOME case, so I highly advise everyone to read it. Anyway, the 9th Circuit adopted the reasoning used in a 2nd Circuit case which said that the way that consumers think about the names of books, movies, and other forms of media is different from the way they think about the names of ordinary products, like toothpaste or car tires. Basically the court argued that when we see the name of a product like Gillette Mach 3 razor, we assume that the names convey information as the source of the product, but when we see the name of a book or a movie, we don't assume that it conveys information about its source, instead we assume that it conveys information about the subject matter, e.g. we expect a book called 'Marketing 101' to be about Marketing. Sometimes, as the scene from a Simpsons episode where Bart snuck in to see 'Naked Lunch' showed, the titles of these creative works are irrelevant to both source and content. Anyway, the 9th Circuit agreed with the 2nd Circuit that creative works should be treated differently from ordinary products.
So unless Ms. Parks has a really top-notch lawyer, she is going to have a really hard time showing confusion or false attribution in her case. Hrm... it looks like Johnnie Cochran is representing Rosa Parks. Okay, well even if she COULD show confusion or false attribution, the song is still protected under the First Amendment. Right? One of the fallacies commonly believed by the laity is that all speech is protected under the First Amendment. In actuality there are gradations of protection afforded to speech, depending on the purpose and nature of the speech. Commercial speech, which is usually defined as speech which does no more than propose a commercial transaction, receives very little protection at all (until recently it received no protection). Songs can be fit within that definition, since they are essentially advertising for the band and are for sale themselves. You'd have a difficult time that songs that are for sale are not commercial in any sense.
In the above decision, the 9th Circuit addressed the question of whether songs are commercial speech insofar as trademark law in concerned by saying that while a song is technically commercial speech in that it "does no more than propose a commercial transaction", songs (and their titles) are so "expressly intertwined with expressive elements" that they need to be afforded First Amendment protection.
So songs can receive First Amendment protection, but does that protection extend to misleading speech? Another wrinkle of First Amendment law that isn't widely known, is that it isn't absolute. Your First Amendment right to the use of marks owned by others (or the use of any speech really) is balanced by the harm it causes to others. There are a lot of different ways to test or measure that balance of counterveiling forces. The test that the 6th Circuit, which reversed the grant of summary judgment in this case, chose was the 2nd Circuit's Fred and Ginger test which says that a title won't be protected by the First Amendment if the title has no artistic relevance at all to the underlying work, or if the title is explicitly misleading as to the soure or the content of the work. So you can't name your movie 'This Movie Was Directed By Steven Spielburg' but naming a book 'Rush Limbaugh Is a Big Fat Idiot' is okay, as long as spend at least some time talking about how he is a big fat idiot. So given this precedent, I'll go out on a limb and say that Ms. Parks isn't going to win on a Lanham Act cause of action. While the lyrics of the Outkast song don't really have much, if anything, to do with Rosa Parks, you don't really need much - and they have that "everybody move to the back of the bus" chorus going for them.
Allright, I haven't addressed the right to publicity claim and I'm not going to unless anyone asks for it. I know I've written a lot, but I have actually left out a lot of the finer details, like how Rosa Parks can have a cause of action under the trademark statute when her name isn't a trademark, the nitty gritty of the unfair competion clause of the Lanham Act and the likelihood of confusion tests.