Caseflicks

Court of Appeals for the Fifth Circuit • 2000

Brown v. Ames

201 F.3d 654 | 2000 U.S. App. LEXIS 1597 | 2000 WL 48992

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Takeaway

In short, this case holds that a state right-of-publicity claim based on the unauthorized commercial use of a person’s name or likeness survives Copyright Act preemption because a persona is not itself copyrightable subject matter.

Background

Collectibles, a record label specializing in repackaged vintage recordings, obtained licenses from Roy Ames to exploit master recordings of Texas blues musicians. The licenses purported to convey not only rights in the recordings but also rights to use the performers’ names, photographs, likenesses, and biographical material. Ames represented that he had authority to grant those rights.

Collectibles used the recordings to produce and sell CDs, cassettes, and catalogs identifying the performers, sometimes with their likenesses. Ames also sold certain posters and videotapes using plaintiffs’ names or likenesses. The performers, songwriters, producers, and heirs sued Ames, Collectibles, and Collectibles’ owners.

Before trial, the district court dismissed negligence and conversion claims as Copyright Act-preempted and dismissed certain unregistered copyright claims. The remaining copyright, Lanham Act, and Texas misappropriation claims went to trial. The jury rejected the Lanham Act claims but found that defendants had misappropriated plaintiffs’ names and likenesses, had infringed certain copyrights, and that Weldon Bonner had not signed a 1975 recording agreement with Ames. The court entered misappropriation awards of $100,000 against Ames and $27,000 against Collectibles, along with smaller copyright-infringement awards. Ames and Collectibles appealed.

Issues

Issue #1

Whether the Copyright Act preempted the Texas claims for misappropriation of the performers’ names and likenesses.

Holding

No. The performers’ Texas misappropriation claims were neither expressly preempted under 17 U.S.C. § 301 nor conflict-preempted by federal copyright law.

Reasoning

Section 301 expressly preempts a state-law claim only when two conditions are met: the right at issue concerns subject matter within copyright, and the state right is equivalent to one of copyright’s exclusive rights. The Texas tort protects against the unauthorized commercial appropriation of an identifiable person’s name, image, or likeness for the defendant’s benefit. Its object is the person’s persona, not a copyrighted work.

A person’s name and likeness are not copyrightable writings of an author. They do not enter copyright’s subject matter merely because they appear on CDs, tapes, or catalogs that also contain copyrightable recordings. The court distinguished Daboub, where both the copyright and misappropriation claims concerned a song itself, and Fleet, where the claim concerned copyrightable performances in a film. Here, the claim concerned the use of the musicians’ identities.

The court found the Ninth Circuit’s voice-appropriation cases, Midler and Waits, more persuasive. Like a distinctive voice, a name or face is a personal attribute rather than a fixed copyrighted work. The court declined to follow the broader implications of Baltimore Orioles, which treated recorded athletic performances as copyright subject matter and was distinguishable because it concerned rebroadcast rights in games.

The claim also did not obstruct copyright’s objectives. Rights of publicity can encourage artistic endeavor, and state law generally permits an authorized publisher or distributor to use an author’s name or likeness truthfully to identify authorized works. Thus, such claims ordinarily will not interfere with a valid copyright holder’s exploitation of a work. Congress also expressly indicated that privacy and publicity claims containing personal-rights elements were to remain available.

Issue #2

Whether legally sufficient evidence supported the $27,000 misappropriation-damages award against Collectibles.

Holding

Yes. The jury had a sufficient evidentiary basis to award damages for the commercial appropriation of the performers’ identities.

Reasoning

Under Texas law, a misappropriation plaintiff must show that the defendant appropriated the plaintiff’s personal identity for an advantage, usually commercial. The plaintiff need not prove that the defendant actually earned money from the use, and may recover general damages as well as proven special damages.

Damages cannot rest on speculation, but Texas law does not demand mathematical precision or a precise dollar value for an injury. The amount need only be reasonably ascertainable from a definite standard, established experience, or a direct inference from known facts.

The jury could reasonably infer the value of the performers’ names and likenesses, and the harm from their unauthorized use, from evidence of the amounts the performers were paid to appear at blues festivals. Given the deferential review of a jury award approved by the trial judge, the verdict was not clearly erroneous.

Issue #3

Whether the evidence could overcome the presumption that Weldon Bonner executed the notarized 1975 recording agreement with Ames.

Holding

Yes. The evidence permitted the jury to find that Bonner did not sign the agreement and therefore did not appear before the notary.

Reasoning

Texas gives a notarized acknowledgment a presumption of validity that may be overcome only by clear and unmistakable proof that the signer did not appear before the notary or that the notary engaged in fraud or imposition. Collectibles properly preserved its challenge to the sufficiency of the evidence on this point.

Bonner’s daughter testified that the signature on the agreement was not her father’s. The jury also had several genuine signature specimens with which to compare the disputed signature. From that evidence, it could reasonably conclude that the signature was forged and Bonner never appeared before the notary.

Ames separately argued that the jury should have been instructed to apply a clear-and-convincing evidentiary standard. He did not object to the charge before deliberations, however, and the asserted error was not fundamental enough to cause a miscarriage of justice. He therefore waived that instructional challenge.

Issue #4

Whether appellants could challenge Leonard Brown’s copyright in “Ain’t Got Much” on the ground that his wife wrote the song and did not execute a written assignment.

Holding

No. Appellants waived that argument by failing to present it to the district court.

Reasoning

An appellate argument must have been raised clearly enough in the trial court to allow that court to rule on it. Although Collectibles previously attacked Brown’s copyright application on a different theory—an alleged misrepresentation of authorship—it never argued that Brown lacked a written assignment from his wife.

Because neither Ames nor Collectibles presented the written-assignment objection at trial, the district court had no opportunity to address it. The Fifth Circuit therefore treated the issue as waived.