Apple Corps Ltd. v. ADPR, INC., 3:91-0675.

• Decision Date: 16 November 1993
• Docket Number: No. 3:91-0675.,3:91-0675.
• Citation: 843 F. Supp. 342
• Court: U.S. District Court — Middle District of Tennessee
• Parties: APPLE CORPS LIMITED, Plaintiff, v. A.D.P.R., INC., Mark Davis Benson, Greg Phillip George, Gary Roy Grimes, Thomas Allen Work, Defendants.

843 F. Supp. 342

APPLE CORPS LIMITED, Plaintiff, v. A.D.P.R., INC., Mark Davis Benson, Greg Phillip George, Gary Roy Grimes, Thomas Allen Work, Defendants.

No. 3:91-0675.

United States District Court, M.D. Tennessee, Nashville Division.

November 16, 1993.

COPYRIGHT MATERIAL OMITTED

Jay Scott Bowen, Nancy-Ann Elizabeth Min, John R. Jacobson, Bass, Berry & Sims, Nashville, TN, for plaintiff.

Robert Leslie Callis, Mt. Juliet, TN, Malcolm L. Mimms, Jr., Wyatt, Tarrant & Combs, Nashville, TN, Henry M. Lloyd, Washington, DC, William T. Whitaker, William T. Whitaker, Akron, OH, for defendants.

MEMORANDUM

ECHOLS, District Judge.

Presently pending before the Court is the Plaintiff's Motion for Partial Summary Judgment under the Lanham Act and the Tennessee Personal Rights Protection Act. The Defendants have filed an objection to this Motion. For the reasons outlined herein, the Plaintiff's Motion for Partial Summary Judgment under Tennessee's Personal Rights Protection Act is hereby GRANTED, and Plaintiff's Motion for Partial Summary Judgment under § 43(a) of the Lanham Act is DENIED.

The following facts are not disputed. Plaintiff is the owner of the rights of publicity, trade names and trademarks at common law of The Beatles music group and of its former members individually. Plaintiff is solely authorized to exploit the unique elements and features of The Beatles. (Aspinall affidavit, para. 7.) Defendants are members of a performing group known as "1964 as the Beatles," which performs throughout the United States and Canada. (Defendants' Answer, para. 7.) The group seeks to recreate a Beatles concert from the years 1964 to 1966. (Benson Affidavit, para. 3; Defendants' Answer, para 7.) The group's objective is to look and sound as much like The Beatles as possible. (Benson deposition, p. 102.) Toward that end, the group imitates the overall appearances, hairstyles, dress, mannerisms, voices, equipment and musical performances of The Beatles. (Aspinall affidavit, para. 4; Grimes deposition, pp. 62-64.) On stage, the group's members refer to each other as "John," "Paul," "George" and "Ringo," adopt Liverpool accents, and perform only songs which The Beatles recorded or performed. (Benson deposition, pp. 64-65.) In addition, Defendants have placed The Beatles' logo on the group's bass drum, with "1964 as" written above the logo in small print. (Faherty affidavit, para. 2.)

It is undisputed that Defendants engage in these performances as a commercial endeavor. That is, the group employs agents, who negotiate contracts with venue owners, and pursuant to these contracts, the group receives money in exchange for its performances. (Benson deposition, pp. 40-41.) In advertising these performances, Defendants publish posters and flyers in which they are photographed to look like The Beatles on the cover of the album, "A Hard Day's Night." (Grimes deposition, pp. 122-25.) Although they are not now, Defendants did, for approximately two years, market t-shirts, window decals, buttons, pictures and posters, featuring the group name "1964 as the Beatles." (Grimes deposition, p. 114-16; Work deposition, pp. 61-62.) The group derived income from this source as well. (Work deposition, pp. 61-62.)

Defendants distribute promotional and advertising materials which, Plaintiff contends, imply that the performances are sponsored, endorsed, approved or otherwise authorized by Apple Corps. Defendants disagree that their advertising and promotional materials create confusion as to sponsorship of their performances. However, it is undisputed that Defendants have not received any sort of approval from, or endorsement by, Apple Corps.

Plaintiff contends that Defendants' performances, and the advertisement and promotion thereof, violate § 43(a) of the Lanham Act (15 U.S.C. § 1125(a) (1988)) and Tennessee's Personal Rights Protection Act (Tenn. Code Ann. § 47-25-1105(a) (1988 & Supp. 1993)). Therefore, Plaintiff seeks a permanent injunction "which would prohibit the Defendants from performing, producing, promoting, publicizing, advertising or booking performances as a Beatles sound-alike, look-alike band, and from incorporating the name `The Beatles' or the distinctive combination of the names `John,' `Paul,' `George,' and `Ringo' in any performances or on any products or publications for purposes of trade or advertising." (Plaintiff's Memorandum in Support of Motion, p. 18.)

In ruling on a motion for summary judgment, this Court must construe the evidence produced in the light most favorable to the non-moving party, drawing all justifiable inferences in his or her favor. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 2513, 91 L.Ed.2d 202 (1986). A party may obtain summary judgment if the evidentiary material on file shows "that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56. The moving party bears the burden of satisfying the court that the standards of Rule 56 have been met. See Martin v. Kelley, 803 F.2d 236, 239 n. 4 (6th Cir.1986). The ultimate question to be addressed is whether there exists any genuine issue of material fact which is disputed. See Anderson v. Liberty Lobby, Inc., 477 U.S. at 248, 106 S.Ct. at 2510. If so, summary judgment dismissal is inappropriate.

Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), provides

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —

(1) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(2) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C. § 1125(a) (1988). Simply put, the Act prohibits one from using in advertising names and symbols which are so similar to those of another entity that they will likely confuse or mislead the public into believing that the other entity endorses or sponsors the product or service. It prohibits false descriptions of products or of their origins.

It is undisputed that Defendants are using in advertising names which are identical, and symbols which are similar, to those of "The Beatles." However, the only proof which Plaintiff has submitted on the issue of public confusion is an affidavit of the Plaintiff's General Manager, which makes the wholesale allegation that there is, or is likely to be, public confusion. The only proof from the Defendants on that issue is the affidavit of Mark Benson, a member of the group, which states that the group has never intended to mislead the public into believing that the group is sponsored or approved by Apple Corps or the Beatles.

The issue of the likelihood of public confusion is key in making out a claim under the Lanham Act. A court should grant a motion for summary judgment on a Lanham Act claim only where it determines that "no reasonable jury could fail to find a likelihood of confusion." Allen v. Nat'l Video, Inc., 610 F.Supp. 612, 629 (S.D.N.Y.1985). The parties have not submitted credible, or even relevant, proof on that issue. The parties' assessment of whether they deem the use of the names and symbols confusing is not relevant or probative on the issue of whether the public is likely to be confused. The latter is the issue before this Court. The Court finds that there is a genuine dispute regarding this material fact, and the question must be decided by a jury. Accordingly, Plaintiff's Motion for Summary Judgment seeking a permanent injunction under the Lanham Act is hereby DENIED.

Tennessee's Personal Rights Protection Act provides that

"any person who knowingly uses or infringes upon the use of another individual's name, photograph or likeness in any medium, in any manner directed to any person other than such individual, as an item of commerce for purposes of advertising products, merchandise, goods, or services, or for purposes of fund raising, solicitation of donations, purchases of products, merchandise, goods, or services, without such individual's prior consent ... shall be liable to a civil action."

Tenn.Code Ann. § 47-25-1105(a) (1988 & Supp.1993). Plaintiff contends that Defendants' use of the name "The Beatles" and of the combination of the names "John," "Paul," "George" and "Ringo" in their publicity materials and their performances violates this statute. In addition, Plaintiff claims that the use of Defendants' promotional poster modeled after the album cover of "A Hard Day's Night" is also a violation.

Defendants claim that the First Amendment to the Constitution protects their use of these names in the title and context of an artistic performance. Generally, it is accurate to say that entertainment enjoys First Amendment protection. Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 578, 97 S.Ct. 2849, 2859, 53 L.Ed.2d 965 (1977). However, First Amendment rights are not absolute. Dennis v. United States, 341 U.S. 494, 503, 71 S.Ct. 857, 864, 95 L.Ed. 1137 (1951). In certain circumstances, the interests protected by the First Amendment will inevitably conflict with another individual's right of publicity. See Estate of Presley v. Russen, 513 F.Supp. 1339, 1359 (D.N.J.1981).

In the Presley case, the estate of the late Elvis Presley sued an Elvis impersonator¹ under New Jersey's common law right of publicity.² In that...