EMI Catalogue v. Hill, Holliday, et al.

• Decision Date: 01 August 1999
• Docket Number: Docket No. 99-7922
• Citation: 228 F.3d 56
• Parties: (2nd Cir. 2000) EMI CATALOGUE PARTNERSHIP and EMI ROBBINS CATALOG INC., Plaintiffs-Appellants, v. HILL, HOLLIDAY, CONNORS, COSMOPULOS INC. and SPALDING SPORTS WORLDWIDE, Defendants-Appellees
• Court: U.S. Court of Appeals — Second Circuit

Page 56

228 F.3d 56 (2nd Cir. 2000)

EMI CATALOGUE PARTNERSHIP and EMI ROBBINS CATALOG INC., Plaintiffs-Appellants, v. HILL, HOLLIDAY, CONNORS, COSMOPULOS INC. and SPALDING SPORTS WORLDWIDE, Defendants-Appellees.

Docket No. 99-7922

August Term, 1999

UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT

Argued: January 24, 2000

Decided: September 15, 2000

Plaintiffs EMI Catalogue Partnership and EMI Robbins Catalog Inc. (EMI) appeal from a grant of summary judgment entered July 7, 1999 in the United States District Court for the Southern District of New York (Sweet, J.) in favor of defendants Hill, Holliday, Connors, Cosmopulos Inc. (Hill Holliday) and Spalding Sports Worldwide (Spalding).

Reversed and remanded.

[Copyrighted Material Omitted]

[Copyrighted Material Omitted]

BRENDAN J. O'ROURKE, New York, New York (Charles B. Ortner, William M. Hart, Frank P. Scibilia, Proskauer Rose LLP, New York, New York, of counsel), for Plaintiffs-Appellants.

MARCIA B. PAUL, New York, New York (Lisa S. Hughes, Kay Collyer & Boose LLP, New York, New York, of counsel), for Defendants-Appellees.

Before: CARDAMONE, STRAUB, Circuit Judges, and CARMAN^*, Judge.

CARDAMONE, Circuit Judge:

At the heart of the litigation before us on this appeal is a jazz tune popularized by the well-known swing clarinetist Benny Goodman. The song entitled "Sing, Sing, Sing (With a Swing)" is one of the most recognizable from the height of the swing era in the 1930s. A 1999 poll of National Public Radio listeners named it one of the 100 most important musical works of the 20th century. In the instant trademark suit, plaintiffs, the current holders of rights to the song, sought to prevent defendants infringing those rights by using an alliterative version of the song's title backed by music similar to "Sing, Sing, Sing" in a TV commercial for golf clubs. For those familiar with the Benny Goodman version of it with its upbeat syncopation and counterpoint, "Sing, Sing, Sing" is as distinctive and recognizable as the opening four notes of Beethoven's Fifth Symphony are to a classical music lover. Following abbreviated discovery, plaintiffs' suit was dismissed by the grant of summary judgment to defendants. We think further proceedings warranted, and hence remand.

BACKGROUND

Plaintiff EMI Catalogue Partnership and EMI Robbins Catalog Inc. (collectively EMI) own and administer all rights in the song "Sing, Sing, Sing (With a Swing)" ("Sing, Sing, Sing" or song) and its title. This song, a Louis Prima composition, was popularized by Benny Goodman and turned out to be one of his most famous and enduring. See Ross Firestone, Swing, Swing, Swing: The Life and Times of Benny Goodman 161 (1993). A recording of it was hailed as one of the best known records of the big band era. See James Lincoln Collier, Benny Goodman and the Swing Era 241 (1989). Among the rights EMI asserts that it owns in the song are the right to license it for advertising or other commercial uses, and the right to use and license the title "Sing, Sing, Sing (With a Swing)." EMI has earned over $4.7 million mostly from films and commercials during the 63 years it has licensed those rights.

Defendant Spalding Sports Worldwide (Spalding) is the well-known manufacturer of golf clubs and golfing equipment. In the fall of 1997 it commissioned defendant advertising agency Hill, Holliday, Connors, Cosmopulos Inc. (Hill Holliday) to create a 30-second television spot for a line of golf clubs Spalding planned to sell under the trademark "Top-Flite Tour Irons." Hill Holliday initially conceived a commercial with footage of golfers hitting shots that featured a swing music background soundtrack.

The commercial's original mockup began with images of three golfers hitting iron shots, followed by a black screen displaying the phrase "Swing, Swing, Swing" in white letters, which appears for about one second. The music playing behind the action in the mockup was a recording of "Sing, Sing, Sing." The commercial continued with images of golfers, spectators, and the golf clubs, interspersed with four additional one-second shots displaying a black screen with a different text in each. The text in these shots were, in order: Spalding's "Top-Flite Tour Irons" trademark; "Played by Over 100 Tour Pros;" "22 Victories Worldwide;" and "The #1 Iron on the Senior PGA Tour." The mockup concluded with the words "They Work for Them. They'll Work for You" on a black screen and an image of a golf club head with the logo "Top-Flite Pro Irons" appearing above it.

Although Spalding liked the commercial's concept, the cost of licensing "Sing, Sing, Sing" exceeded its budget. So it had Hill Holliday create instead a final version of the commercial with essentially the same visual images just described, but it licensed stock music in a swing style for the soundtrack. The final version - the one that prompted the instant litigation - begins with a closeup of the head of an iron addressing a ball and an image of irons in a golf bag, followed by the phrase "Swing Swing Swing" superimposed on the image. The subsequent images and words are similar to those in the mockup, except that the phrases are superimposed on images of greens and clubs rather than appearing on black backgrounds. The "Top-Flite Pro Irons" and related logos appear several times.

To obtain the stock swing music, Hill Holliday asked a sound studio to search for a "Benny Goodman-type song like 'Swing Swing Swing,'" confusing the name of the song in its request. The studio found ten alternatives from which Hill Holliday picked the tune used in the final commercial. The parties disagree whether the music chosen for the commercial is in the same style as the song, or whether it is evocative or imitative of it.

In June 1998 plaintiff wrote defendant Hill Holliday telling the advertising agency that the combination of the phrase "Swing Swing Swing" in the commercial together with music evocative of the song would confuse consumers into associating the song and its title with Spalding's golf clubs. It demanded defendant cease using the commercial. Hill Holliday responded to this demand by stating that it used the phrase "Swing Swing Swing" to describe the golfers shown swinging their clubs, and it gave details explaining the use of the stock music it had licensed for the commercial.

When defendant refused to pull the commercials, EMI filed suit in the United States District Court for the Southern District of New York (Sweet, J.) on November 10, 1998, seeking an injunction and damages for unfair competition in violation of §43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (Act) and of state law. As it had in its cease and desist letter, EMI in its complaint alleged that "[d]efendants' adoption and use of the title and slogan 'Swing, Swing, Swing' ... conjoined with music evocative of the well-known musical composition 'Sing, Sing, Sing (With A Swing),' constitute an unlawful use of that title and slogan which is likely to cause mistake, confusion and/or deception as to the sponsorship, affiliation or endorsement of Spalding's products and the marketing thereof with EMI." In its answer, Hill Holliday raised as one of several affirmative defenses that its commercial constituted fair use protected under the First Amendment, since it described both the action of the players depicted in it and the musical style used in the soundtrack.

On February 17, 1999 defendants moved for judgment on the pleadings pursuant to Fed. R. Civ. P. 12(c) or, in the alternative for summary judgment pursuant to Fed. R. Civ. P. 56. The district court treated the motion as one for summary judgment. For the purposes of their motion, defendants conceded that EMI had a right protectible under § 43(a) in the title to the song and that the title had acquired secondary meaning among consumers. The district court found it unnecessary to go beyond the initial, partial discovery the parties had been afforded, or to reach the issue of likelihood of confusion. Instead, it ruled that defendants' use of the phrase "Swing Swing Swing" constituted fair use. After outlining the applicable law, the district court determined that the commercial, including the words "Swing Swing Swing" followed by images of three golfers swinging, "describes the action which Spalding hopes golfers will take using their product." It found the use "doubly descriptive" because the phrase also describes the style of music on the soundtrack, and found that Spalding's display of the Top-Flite name and logo three times in the commercial sufficiently indicated the origin and sponsorship of the product shown.

The district court also rejected EMI's argument that defendants acted in bad faith with the intent to misappropriate EMI's good will in the song's title. It ruled that any connection between the title, swing music, and Spalding's clubs "is caused by the description of the music and golfers' actions and thus is incidental to that fair use," thereby precluding a finding of bad faith. It found instead evidence of good faith because Spalding displayed its logo in the commercial three times. EMI appeals. We reverse.

DISCUSSION

We review a grant of summary judgment de novo, see Tri-Star Pictures, Inc. v. Leisure Time Prods., B.V., 17 F.3d 38, 43 (2d Cir. 1994), granting such relief only if there are no genuine issues of material fact and the moving party establishes its right to judgment as a matter of law. See Fed. R. Civ. P. 56(c). In deciding a motion for summary judgment, all ambiguities must be resolved and all reasonable inferences drawn in favor of the party opposing the motion. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). Some caution must be observed in granting this remedy in a suit alleging unfair competition under the Lanham Act because defendant's intent is at issue. See Resource Developers, Inc. v. Statue of Liberty-Ellis Island Found., Inc., 926 F.2d 134, 141 (2d Cir. 1991).

I EMI's Claim under...