United States District Court, S.D. New York
For Jeremiah Cummings, Plaintiff: Deanna L. Baxam, LEAD ATTORNEY, Baxam Law Group, LLC, Duluth, GA.
For Soul Train Holdings, L.L.C., Intermedia Advisors, L.L.C., Intermedia Partners, L.P., Intermedia Partners VII, L.L.P., Direct Holdings Americas, Inc., doing business as StarVista Entertainment, Defendants: Michael Elliot Salzman, LEAD ATTORNEY, Hughes Hubbard & Reed LLP (NY), New York, NY; Alex Edwin Spjute, Rita M. Haeusler, Hughes Hubbard & Reed LLP, Los Angeles, CA; Webster Dean McBride, Hughes Hubbard & Reed, New York, NY.
OPINION AND ORDER
LORNA G. SCHOFIELD, UNITED STATES DISTRICT JUDGE.
This action arises out of Defendants' alleged misuse of recordings of Plaintiff Jeremiah Cummings' performances on the television program " The Soul Train." The Second Amended Complaint (" SAC" ) alleges violations of (1) Plaintiff's right of publicity under New York and Illinois law, (2) Plaintiff's right of privacy under New York law, (3) the Lanham Act, (4) the Illinois Consumer Fraud and Deceptive Trade Practices Act and (5) Illinois common law prohibiting trademark infringement and unfair competition. For the following reasons, Defendants' motion to dismiss the SAC is granted.
The facts below are taken from the SAC and documents incorporated by reference in or integral to the SAC. These facts are assumed to be true for purposes of this motion.
Plaintiff Jeremiah Cummings is a musician who was a member of the rhythm and blues music group, Harold Melvin and the Blue Notes (the " Blue Notes" ) from 1973 to 1980. He is an Illinois domiciliary. Defendants Soul Train Holdings, LLC (" Soul Train Holdings" ); InterMedia Advisors, LLC; InterMedia Partners, LP and InterMedia Partners VII, LLP (these three together, the " Intermedia Defendants" ) are limited liability companies incorporated in Delaware and having a place of business in New York. Defendant Direct Holdings Americas, Inc. (" Direct Holdings" ) is a Delaware corporation that maintains a place of business in Virginia.
On several occasions from 1974 through 1976, the Blue Notes performed during nationally televised episodes of " The Soul Train." During one appearance, the Blue Notes were interviewed by the show's host, and the group's members, including Cummings, were asked to introduce themselves by name during the interview. The SAC alleges that Cummings did not receive any financial compensation for his appearances and that he " was not asked to sign, and did not sign, any release or grant of rights for future use, in conjunction with . . . the
performance video footage of the Soul Train Shows."
Footage from the Blue Notes' performances on The Soul Train has been used in (1) DVD compilations entitled " Best of Soul Train" (the " DVD sets" ) and (2) televised advertisements and Internet videos marketing these DVDs. The trademarks " Soul Train" -- registered to Soul Train Holdings -- and " Time Life" -- used under license by Direct Holdings -- are prominently displayed on the DVD sets' packaging and contents.
Soul Train Holdings and the InterMedia Defendants owned " certain rights of use in the stock video footage of the Soul Train Shows" which they transferred to Direct Holdings. Direct Holdings and Soul Train Holdings market the DVD sets through televised infomercials, a website and a YouTube channel. The SAC alleges that Soul Train Holdings and the InterMedia Defendants " offer and benefit from the license to the public of stock video footage of the Soul Trains Shows through its subsidiary," non-party Global ImageWorks, LLC.
The SAC alleges that Defendants violated Cummings' rights of publicity and privacy by using " his image, likeness, picture and/or voice" in the DVD sets and related promotional materials without his consent. The SAC further alleges that, in violation of the Lanham Act and Illinois law, " Defendants' unauthorized inclusion of Plaintiff in [advertisements and Internet videos] presented a false or misleading representation of Plaintiff's participation in them that caused confusion and mistake" among the public, " by creating the false impression that Plaintiff approved, sponsored or was otherwise associated with this advertising and with the Soul Train DVD Sets."
On a motion to dismiss, the Court accepts as true all well-pleaded factual allegations and draws all reasonable inferences in favor of the non-moving party. Hooks v. Forman, Holt, Eliades & Ravin, LLC, 717 F.3d 282, 284 (2d Cir. 2013). To withstand dismissal, a pleading " must contain sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Bell A. Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)). " Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice." Id. Rule 8 of the Federal Rules of Civil Procedure " requires factual allegations that are sufficient to 'give the defendant fair notice of what the . . . claim is and the grounds upon which it rests.'" Anderson News, L.L.C. v. Am. Media, Inc., 680 F.3d 162, 182 (2d Cir. 2012) (alteration in original) (quoting Twombly, 550 U.S. at 555).
On a motion to dismiss, the court may consider the complaint, " [d]ocuments that are attached to the complaint or incorporated in it by reference," " document[s] upon which the complaint solely relies and which is integral to the complaint," and " matters of which judicial notice may be taken." Garanti Finansal Kiralama A.S. v. Aqua Marine & Trading Inc., 697 F.3d 59, 63 n.4 (2d Cir. 2012) (citations and internal quotation marks omitted); accord Comedy III Prods., Inc. v. New Line Cinema, 200 F.3d 593, 594-96 (9th Cir. 2000) (considering film footage at motion to dismiss stage); Louis Vuitton Mallatier S.A. v. Warner Bros. Entm't Inc.., 868 F.Supp.2d 172, 176 n.6 (S.D.N.Y. 2012) (" As the Film is referred to in the complaint and is integral to [plaintiff's] claims, it is deemed incorporated into the complaint by reference." ) (citing Blue Tree Hotels Inv. (Can.), Ltd. v. Starwood Hotels & Resorts Worldwide, Inc.,
369 F.3d 212, 217 (2d Cir. 2004)).
A federal court sitting in diversity applies the choice of law rules of the forum state. See In re Coudert Bros. LLP, 673 F.3d 180, 186 (2d Cir. 2012) (citing Klaxon Co. v. Stentor Elec. Mfg. Co., 313 U.S. 487, 496, 61 S.Ct. 1020, 85 L.Ed. ...