Dinty Moore, My Dinty Moore

[marybrewster]

An interesting read; not sure if I've ever seen it posted or discussed here:

Motown Record Corp. v. George A. Hormel & Co., 657 F. Supp. 1236 [[C.D. Cal. 1987)
US District Court for the Central District of California - 657 F. Supp. 1236 [[C.D. Cal. 1987)
April 16, 1987
657 F. Supp. 1236 [[1987)
MOTOWN RECORD CORPORATION, and Jobete Music Company, Inc., Plaintiffs,
v.
GEORGE A. HORMEL & CO., and Ruhr/Paragon, Inc., Defendants.
CV 85-6973 WJR.
United States District Court, C.D. California.

April 16, 1987.
*1237 Alan G. Dowling, David W. Grace, Finley, Kumble, Wagner, Heine, Underberg, Manley, Myerson & Casey, Beverly Hills, Cal., for plaintiffs.

Timothy D. Reuben, Diana J. Simon, Rosenfeld, Meyer & Susman, Beverly Hills, Cal., for defendants.


MEMORANDUM DECISION AND ORDER
REA, District Judge.


I. INTRODUCTION
This Matter is before the Court based on defendants' Motion for Judgment on the Pleadings pursuant to Fed.R.Civ.Proc. 12[[c). Defendants move for judgment on the pendent state claims alleged in the third, fifth, sixth, seventh, eighth, ninth and tenth causes of action claiming that these causes of action are preempted by the Federal Copyright Act. Defendants also move for judgment on the Lanham Act claim on the grounds that plaintiffs cannot seek trademark protection of an "image."


II. BACKGROUND
Plaintiffs Motown Record Corporation [[Motown) and Jobete Music Company, Inc. [[Jobete) brought this action against defendant George A. Hormel & Co. and Ruhr/Paragon, Inc. alleging copyright infringement, trademark infringement, seven pendent state claims and a claim for declaratory relief.

In 1964, the songwriting team of Brian Holland, Lamont Dozier, and Eddie Holland [[Holland-Dozier-Holland) composed a musical composition entitled "Baby Love". Holland-Dozier-Holland entered into exclusive songwriting agreements with plaintiff Jobete, pursuant to which Jobete was granted the copyright in the musical composition "Baby Love." "Baby Love" was recorded by a trio of performing artists named "The Supremes." The various recording artists on "The Supremes" changed over the years, but the group always consisted of three young black women. "The Supremes" frequently performed in formal gowns [[often sequined) and had "bouffant" hairstyles. The name "The Supremes" was registered as a trademark by Motown, and such registration appears to be uncontested by defendants.

Plaintiffs claim that in October of 1985, a Motown employee saw an advertisement broadcast on ABC-TV for Hormel's "Dinty Moore" brand beef stew. The commercial, in part, featured three young black women, with bouffant hair, in sequined formal gowns singing "Dinty Moore, My Dinty Moore," to the tune of the Motown classic "Baby Love." Plaintiffs further contend that the use of the image of "The Supremes" in the commercial without Motown's permission, coupled with the unlicensed use of the musical composition, is likely to cause confusion and create the misimpression by the public and the trade that Motown authorized the use of the image of "The Supremes."

Previously, the Court granted a Temporary Restraining Order and a Preliminary Injunction requiring defendants to cease the use of the offending advertisement. Defendants now bring the present motion for a Judgment on the Pleadings.


III. DISCUSSION

A. Rule 12[[c) Motion
Plaintiffs first argue that defendants' motion for a judgment on the pleadings is inappropriate because the defendants have attacked only seven of the ten counts of the complaint. Therefore, plaintiffs contend, a judgment could not result from the present motion.

Plaintiffs argument against the propriety of a "partial" judgment on the pleadings is not a frequently addressed area of the law. Wright and Miller note that currently, "the Rule 12[[c) motion is little more than a relic of the common law and code eras. Its preservation in the original federal rules undoubtedly was due to the undeveloped character of the summary judgment procedure...." *1238 5 C. Wright & A. Miller, Federal Practice and Procedure § 1369, pps. 701-02 [[1969).

There are numerous cases which cite in their procedural history that a trial court granted partial judgment on the pleadings. E.g., City of Los Angeles v. Lyons, 461 U.S. 95, 103 S. Ct. 1660, 75 L. Ed. 2d 675 [[1983) [[in describing procedural history of case, Court noted that district court granted city's motion for partial judgment on the pleadings); See also Hixon v. Durbin, 545 F. Supp. 231, 233 [[E.D.Pa.1982); Cutler v. Bank of America National Trust & Savings Association, 441 F. Supp. 863, 866 [[N.D.Cal.1977). Nevertheless, F.R.Civ.P. 12[[c) does not expressly provide for a partial judgment.

Wright & Miller point out that the legal standard to be applied in either a motion for summary judgment or judgment on the pleadings is "identical". 5 C. Wright & A. Miller, Federal Practice and Procedure § 1369, p. 700 [[1969). The difference between the two is essentially one of timing. A summary judgment motion cannot be brought by a plaintiff until 20 days after the commencement of an action a defendant may bring the motion at any time. In contrast, neither party can move for a motion for judgment on the pleadings until the close of the pleadings. Wright and Miller also state that "the summary judgment procedure offers the additional advantage that if the court refuses to grant the motion in its entirety, there remains the possibility of its awarding a partial summary judgment under Rule 56[[d).... There is no comparable provision in Rule 12[[c)...." 5 C. Wright & A. Miller, Federal Practice and Procedure § 1369, p. 701 [[1969).

Rather than decide the propriety of a "partial" judgment on the pleadings, this Court will consider defendants' motion as a motion for partial summary judgment pursuant to F.R.Civ.P. 56[[d). The parties have extensively briefed the issues before the Court, and the Court finds that it has before it all the pertinent materials necessary to decide the matter. Furthermore, at the hearing on the present motion, the Court notified the parties that due to plaintiffs opposition to the form of defendants' motion, the motion would be considered as motion for partial summary judgment. Neither party objected.


B. Preemption of Pendent State Claims

1. Title 17 U.S.C. § 301
The Copyright Act of 1976 [[17 U.S.C. § 101 et seq.) describes in § 301 the extent to which the Act preempts state law causes of action based on copyright. 17 U.S.C. § 301[[a) & [[b) states in pertinent part:


[[a) On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by section by secton 102 and 103 ... are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

[[b) Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to

[marybrewster]

[[1) subject matter that does not come within the subject matter of copyright as specified by section 102 and 103, including works of authorship not fixed in any tangible medium of expression.... [[Emphasis Added).
Pursuant to § 301[[a), preemption exists only if: 1) the state right is "within the subject matter of copyright" as defined in the Act; and 2) the state right is "equivalent" to any exclusive rights of a federal copyright. Initially, the legislature included in the bill a list of state claims which would not be preempted by federal law. An early draft of the bill read:


§ 301[[b) [[3): activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright ... including rights against misappropriation not equivalent to any such exclusive rights, breaches of contract, breaches of trust, *1239 trespass, conversion, invasion of privacy, defamation, and deceptive trade practices such as passing off and false representation.
S.22, 84th Cong., 2d Sess. [[September 3, 1976).

The above list, however, was excluded from the actual statute without a satisfactory explanation. The result is that the courts are now left to grapple with the decision of which state law causes of action are equivalent to rights covered by the Copyright Act.


2. Third Cause of Action for Unfair Competition
Plaintiffs third claim for unfair competition under California Business and Professions Code § 17200 et seq. and § 17500 incorporates all of the allegations of the first claim for copyright infringement. Plaintiffs also included additional allegations that "the conduct of defendants in deliberately producing and broadcasting the Offending Advertisement and falsely implying that the Composition and said image of the Supremes were utilized with the permission of Motown and Jobete, constitute unfair competition." Defendants argue that the gravamen of the unfair competition claim is nothing more than the alleged taking of plaintiffs' intellectual property.

Defendants further contend that the requirements of § 301[[a) are met. First, the composition "Baby Love" falls within the subject matter of copyright as specified by § 102. Second, the allegedly infringed rights are the equivalent of rights specified in § 106. Section 106 lists the exclusive rights in copyrighted works. Among these rights are the rights of reproduction and distribution.

Nimmer, in his copyright treatise, articulated the test for preemption as follows:


[A] right which is "equivalent to copyright" is one which is infringed by the mere act of reproduction, performance, distribution or display.... If, under state law the act of reproduction, performance, distribution or display, ... will in itself infringe the state created right, then such right is preempted. But if other elements are required, in addition to or instead of, the acts of reproduction, performance, distribution or display, in order to constitute a state created cause of action, then the right does not lie "within the scope of copyright," and there is no preemption.
1 M. Nimmer, The Law of Copyright § 1.01[B][3] at 1-11-12 [[1984).

In Fisher v. Dees, 794 F.2d 432 [[9th Cir. 1986) the court upheld the grant of summary judgment on a claim for unfair competition on the ground that it was preempted by federal law. In Dees, the Ninth Circuit extended previous Supreme Court rulings relating to patents, to the copyright arena. The Dees court cited a previous Ninth Circuit decision which reasoned that "just as a state could not encroach upon the federal patent laws directly it could not do so indirectly under the guise of enforcing its law against unfair competition where those laws would clash with the federal objectives." Id. at 440; citing, Sinatra v. Goodyear Tire & Rubber Co., 435 F.2d 711, 717 [[9th Cir.1970), cert. denied, 402 U.S. 906, 91 S. Ct. 1376, 28 L. Ed. 2d 646 [[1971). The court in Dees then added that "[t]he same applies to the copyright statute." Dees, 794 F.2d at 440.

Similarly, the court in Mayer v. Josiah Wedgewood & Sons Ltd, 601 F. Supp. 1523 [[S.D.N.Y.1985) granted summary judgment on the ground that a complaint for unfair competition and conversion were preempted by the Copyright Act. In Mayer, the court reasoned that simply because certain state claims contained different elements from their copyright counterparts, this alone would not save them from preemption. Instead, the court noted that the "`extra element' ... must be one which changes the nature of the action so that it is qualitatively different from a copyright infringement claim." Mayer, 601 F. Supp. at 1535 [[emphasis in original). See also Universal City Studios v. The T-Shirt Gallery, Ltd., 634 F. Supp. 1468 [[S.D.N.Y. 1986).

It appears from plaintiffs' complaint that their unfair competition claim is not qualitatively *1240 different from their copyright claim. The essence of plaintiffs complaint is derived from defendants alleged unauthorized use of a copyrighted work. The Court finds that plaintiffs' third cause of action for unfair competition is within the scope of Copyright Act and is therefore preempted by federal law.


3. Plaintiffs' Claims for Negligent and Intentional Interference with Prospective Business Advantage
The fifth claim for intentional interference with prospective business advantage alleges that "[a]lthough defendants failed to secure a license from plaintiffs, defendant nonetheless released the Offending Advertisement ... in such manner as to [[a) deprive Jobete of the ability to freely exploit the Composition ... [[b) disrupt the the ongoing business relationship of Plaintiffs with `The Supremes' and Holland-Dosier-Holland, and [[c) interfere with the ongoing exploitation of `The Supremes' recordings and other materials presently on the market." The claim for negligent interference with prospective advantage alleges the same basic contentions.

In Harper & Row Publishers, Inc. v. Nation Enterprises, 723 F.2d 195 [[2d Cir. 1983), rev'd on other grounds, 471 U.S. 539, 105 S. Ct. 2218, 85 L. Ed. 2d 588 [[1985) the court found that a claim for tortious interference with contractual relations was preempted by the Copyright Act. The Second Circuit Court reasoned as follows:

[marybrewster]

In both [the copyright infringement and the interference with contract], it is the act of unauthorized publication which causes the violation. The enjoyment of benefits from derivative use is so intimately bound up with the right itself that it could not possibly be deemed a separate element.... As the trial court noted, the fact that cross-appellants pleaded additional elements of awareness and intentional interference, not part of a copyright infringement claim, goes merely to the scope of the right; it does not establish qualitatively different conduct on the part of the infringing party, nor a fundamental nonequivalence between the state and federal rights implicated.
Harper & Row, 723 F.2d at 201. See also McNabb Bennett & Associates, Inc. v. Terp Meyers Architects, No. 85 C8792, Slip Op. at 7 [[N.D.Ill.1986) [Available on WESTLAW, DCT database] [[court granted motion to dismiss claim for tortious interference with contract on grounds that it was preempted by Copyright Act). Elements such as awareness or intent may alter the scope of the action but not its nature. The Court therefore finds that plaintiffs fifth and sixth causes of action for intentional and negligent interference with prospective business advantage are preempted by federal law.


4. Plaintiffs' Cause of Action under Cal. Civ.Code § 3344
Section 3344 of the California Civil Code provides in pertinent part:


"Any person who knowingly uses another's name, voice, signature, photograph or likeness, in any manner, on or in products, merchandise or goods, or for purposes of advertising or selling, ... of products ... without such person's prior consent ... shall be liable for any damages sustained by the person or persons injured as a result thereof ..."
Cal.Civ.Code § 3344 [[West Supp.1987).

Plaintiffs' complaint revolves around the unauthorized use of a copyrighted work. Without the use of the tune from "Baby Love," plaintiffs complaint would most likely be without merit. The seventh claim alleges that "defendants knowingly used the image of "The Supremes" and the Composition in connection with the Offending Advertisement and for purposes of advertising, selling, and/or soliciting purchases of Hormel products, without the consent of plaintiffs...." The fact that § 3344 requires that the unauthorized use must be in connection with the advertising of a product, unlike copyright, is not a qualitative extra element which changes the nature of the action.

The Court recognizes that § 3344 may not always be preempted by copyright law. However, given the unique nature of plaintiffs' complaint, the Court finds that the basic act which constitutes the alleged infringement *1241 the unauthorized use of plaintiffs' composition is the same as that of copyright and is therefore preempted.


5. Plaintiffs Claims for Constructive Trust and Accounting
Plaintiffs concede that perhaps their claims for constructive trust and accounting are duplicative. Plaintiffs, however, urge that these two claims be stricken rather than dismissed. Plaintiffs concern stems from the belief that if judgment is entered on these claims they would not be able to assert them at trial. However, the Court's finding that these causes of action are preempted is based on the premise that they are equivalent to rights and remedies provided for under the copyright statute. The Court's ruling would, therefore, only restrict plaintiffs to the remedies available under the Copyright Act, but would not act as a total bar.

The Ninth Circuit in Oddo v. Ries, 743 F.2d 630 [[9th Cir.1984) found that an accounting was permissible under state law. However, the Ries case involved a joint work, and a co-owner of a joint work may not recover for copyright infringement against another co-owner of the work. Ries, 743 F.2d at 632-33. Therefore, the Ninth Circuit in Ries permitted the state law causes of action because recovery was not possible under federal law.

In the present case, the facts alleged in support of separate causes of action for both the accounting and the constructive trust claims are rooted primarily on contentions that defendants infringed on plaintiffs' copyrighted work. Plaintiffs separate causes of action for accounting and constructive trust are therefore preempted.


C. Plaintiffs' claim under § 43[[a) of the Lanham Act
Defendants urge that plaintiffs have no protectable trademark interest in the likeness, style and image of "The Supremes." Plaintiffs, however, assert that they should be entitled to demonstrate that the image is protectable against the defendants' alleged attempt to mislead the public and the trade into believing the defendants had obtained a license from Motown to promote their beef stew.

Plaintiffs claim that they have a right to protect the "persona" or the likeness, style and image of "The Supremes." See J. McCarthy, The Rights of Publicity and Privacy [[1987). Plaintiffs further argue that the protected interest is the goodwill associated with a "persona" developed through years of promotional effort and success. Plaintiffs may have a difficult time proving that they have an interest in the "image" of "The Supremes" especially due the fact that the three recording artists in "The Supremes" changed throughout the years.

Furthermore, the basis for a § 43[[a) claim is to prevent the use of a mark in commerce which is likely to confuse or deceive purchasers concerning the source of the goods. See New West Corp. v. NYM Co. of California, 595 F.2d 1194, 1201 [[9th Cir.1979). Plaintiffs are not alleging that defendants tried to "pass off" the trio in the commercial as the actual "Supremes." However, because plaintiffs may be able to show some kind of protectable interest in the "persona" of "The Supremes," it is premature to enter judgment on their second cause of action under § 43[[a) of the Lanham Act. The motion on this cause of action is denied.


IV. CONCLUSION
Accordingly, for the above stated reasons it is HEREBY ORDERED that the defendants' motion for partial summary judgment is GRANTED IN PART AND DENIED IN PART.

SO ORDERED.

[reese]

[bradsupremes]

The various recording artists on "The Supremes" changed over the years, but the group always consisted of three young black women. "The Supremes" frequently performed in formal gowns [[often sequined) and had "bouffant" hairstyles. The name "The Supremes" was registered as a trademark by Motown, and such registration appears to be uncontested by defendants.

Plaintiffs claim that in October of 1985, a Motown employee saw an advertisement broadcast on ABC-TV for Hormel's "Dinty Moore" brand beef stew. The commercial, in part, featured three young black women, with bouffant hair, in sequined formal gowns singing "Dinty Moore, My Dinty Moore," to the tune of the Motown classic "Baby Love." Plaintiffs further contend that the use of the image of "The Supremes" in the commercial without Motown's permission, coupled with the unlicensed use of the musical composition, is likely to cause confusion and create the misimpression by the public and the trade that Motown authorized the use of the image of "The Supremes."

Since when did Motown own the image of "The Supremes?" I don't think that's something Motown could have trademarked as it wasn't something the label created or imposed on the group, but rather something the ladies themselves created. Both Diana and Mary have said the label never forced them to have sequin gowns and big wigs. They wanted that for themselves so I don't see how Motown could "own" this especially considering every other girl group of the mid-late 60s all model their image to used the uniform, big wigs, heavy makeup, sequin and silk gowns.

And if they did, why would they go after a Hormel commercial from 1985 and not go after others who clearly used the ladies' image and story previously [[e.g. Sparkle, "White Boys" in Hair, and most notably Dreamgirls). If there was any legal case, it would be Dreamgirls and yet not a single lawsuit was produced from either Berry Gordy, Motown or Diana, Mary, Cindy, and Florence's estate on their image and likeness being used. I can understand suing the usage of "Baby Love" without permission, but also suing for using three girls in sequin dresses and wigs is a head scratcher.

[nomis]

Since when did Motown own the image of "The Supremes?" I don't think that's something Motown could have trademarked as it wasn't something the label created or imposed on the group, but rather something the ladies themselves created. Both Diana and Mary have said the label never forced them to have sequin gowns and big wigs. They wanted that for themselves so I don't see how Motown could "own" this especially considering every other girl group of the mid-late 60s all model their image to used the uniform, big wigs, heavy makeup, sequin and silk gowns.

And if they did, why would they go after a Hormel commercial from 1985 and not go after others who clearly used the ladies' image and story previously [[e.g. Sparkle, "White Boys" in Hair, and most notably Dreamgirls). If there was any legal case, it would be Dreamgirls and yet not a single lawsuit was produced from either Berry Gordy, Motown or Diana, Mary, Cindy, and Florence's estate on their image and likeness being used. I can understand suing the usage of "Baby Love" without permission, but also suing for using three girls in sequin dresses and wigs is a head scratcher.

Berry owns the trademark to the name "The Supremes" regardless of the ladies creating what constitutes as the image..one of the main factors that irked Mary over RTL was Berry allowing Diana to use the copyright trademark name so easily when Mary had battled Berry unsuccessfully to use the name.

[reese]

Berry owns the trademark to the name "The Supremes" regardless of the ladies creating what constitutes as the image..one of the main factors that irked Mary over RTL was Berry allowing Diana to use the copyright trademark name so easily when Mary had battled Berry unsuccessfully to use the name.

I think Universal / MCA owns the name. In her DREAMGIRL/SUPREME FAITH combo, Mary wrote that she contacted Berry when Motown was sold to MCA, realizing that she been given 50% of the name if it was ever sold. Berry told her that the name was sold as a package deal with everything else in the company. The name was included for the token payment of $1.00.

[PeaceNHarmony]

I think the concept of copyright-ing an image is relatively recent, maybe after 1985. And I think it was the Elvis Presley estate who were first able to copyright an 'image'. JRob may have more to share on that, as may our web-sleuths. Around the time of the ad discussed here this sort of thing was viewed as an hommage, but the music could be considered pilfered unless there were contractual agreements. My first memory of this sort of thing was the Campbell's reiteration of Sinatra's Love and Marriage as Soup and Sandwich. Somewhat more obscurely, in the years following Rickie Lee Jones' hit Chuck E's In Love, Jones tried [[unsuccessfully) to go after the many sound-alikes that were used in TV commercials. Can't help but wonder if the depth of pockets of the plaintiff vs those of the defendants is a big factor in these situations.

[marybrewster]

It's fascinating to me how Smokey/Motown denounced DREAMGIRLS in later years, but at the time of it's opening, Motown [[with Smokey at the helm) EMBRACED the play, and even used its success to promote sales of the Supremes catalog.

[reese]

It's fascinating to me how Smokey/Motown denounced DREAMGIRLS in later years, but at the time of it's opening, Motown [[with Smokey at the helm) EMBRACED the play, and even used its success to promote sales of the Supremes catalog.

The movie changed many things that were in the original musical. They went overboard with making a connection to Motown, with everything from the copycat album covers to the copycat J5 group to the MOTOWN 25 like tv special. I can see why Motown didn't want to embrace it especially since the movie would be seen by more people.

[nomis]

I think Universal / MCA owns the name. In her DREAMGIRL/SUPREME FAITH combo, Mary wrote that she contacted Berry when Motown was sold to MCA, realizing that she been given 50% of the name if it was ever sold. Berry told her that the name was sold as a package deal with everything else in the company. The name was included for the token payment of $1.00.

Berry might have said that to Mary - but that dosent mean its true I dont like to really cast aspersions on anyone but Berry has always been dupliticous that goes triple for the artists from the 60s who put him on the father pedestal..Mary was always in awe of him no matter how bad he treated her
Tarraborrelli states in his third biography on Diana that Berry granted her with being able to use "The Supremes" brand name and this incensed Mary i have no reason to doubt this situation.. Mary was told many things that became to be untrue over time by Berry and telling her MCA owned The Supremes brand was just him pulling puppet strings...im sure a check with the patent office would shed light on the ownership of group names

[marybrewster]

I guess to this day I still don't understand the entire legality behind owning the name Supremes, versus being a Supreme. This going back all the way to Flo not being able to say she was ever a member. I mean, I get that Mary couldn't tour the world AS THE Supremes, but why should she not have been able to say she WAS OF the Supremes. Same with Flo. Everyone knew she was a Supreme. It wasn't like she was going to go out and form a girl group and use the same name. Much like the FLOS, why couldn't she just be bill Flo Ballard, formerly of the Supremes? Would have been interesting to see if she challenged it what the outcome would have been.

[nomis]

I guess to this day I still don't understand the entire legality behind owning the name Supremes, versus being a Supreme. This going back all the way to Flo not being able to say she was ever a member. I mean, I get that Mary couldn't tour the world AS THE Supremes, but why should she not have been able to say she WAS OF the Supremes. Same with Flo. Everyone knew she was a Supreme. It wasn't like she was going to go out and form a girl group and use the same name. Much like the FLOS, why couldn't she just be bill Flo Ballard, formerly of the Supremes? Would have been interesting to see if she challenged it what the outcome would have been.

Part of the reason is Berry's deep pyschological need to be in control and the boss and master at all times..he rarely paid anyone their worth,subjected his artists to slave and unethical contracts used divisive headgames between the roster of staff causing unnecessary rifts,paranoia jealously..look how he refused to even consider allowing the jacksons the chance to even demo their writing and producing skills..then played hardball when the tv guide mistakenly printed a J5 picture once the jacksons signed to epic and the eventual lawsuit uncovered he had quietly patened the groups name in 1970 without their knowledge, they to like Mary and Flo were not permitted to use their brand name..he had to the call the shots at all times fairness be damned..

[floyjoy678]

Berry had little man syndrome. Wouldn't be surprised if he was little in other areas as well.

[kenneth]

Berry had little man syndrome. Wouldn't be surprised if he was little in other areas as well.

Let’s leave that speculation for another thread!

[kenneth]

I guess to this day I still don't understand the entire legality behind owning the name Supremes, versus being a Supreme. This going back all the way to Flo not being able to say she was ever a member. I mean, I get that Mary couldn't tour the world AS THE Supremes, but why should she not have been able to say she WAS OF the Supremes. Same with Flo. Everyone knew she was a Supreme. It wasn't like she was going to go out and form a girl group and use the same name. Much like the FLOS, why couldn't she just be bill Flo Ballard, formerly of the Supremes? Would have been interesting to see if she challenged it what the outcome would have been.

I'm no expert in Intellectual Property law, although I took it in law school. [[It's an elective.) However, the Supremes' original contracts likely prohibited them from promoting themselves as ever having been in the group once they were terminated or if they left on their own. I've never seen the Supremes' original contract terms, but I have seen those of members of the Drifters because they had cases in litigation for years [[as did the Platters) for the same reasons, being unable to cite the Drifters as part of their musical history. The Drifters' standard contracts forbade members from ever utilizing the Drifters name, which was a valuable copyright, in any connection to their careers.

This is the language from the Drifters' contracts:

"The Artist agrees that the name of THE DRIFTERS belongs exclusively to the Employer and that he will not at any time use the name of The Drifters or any name similar thereto or any name incorporating The Drifters. In the event the employee leaves the employ of The Drifters he will not in any way advertise or attempt to publicize the fact that he had been a member of a singing group known as The Drifters and will not associate his name in any manner with The Drifters; and he further acknowledges that the name, The Drifters, is a valuable property and any violation of this paragraph could not be adequately compensated by money damages and he therefore agrees that the Employer shall be entitled to an injunction in any Court of competent jurisdiction to enjoin any violation or threatened violation of this contract by the Artist."

The reference to an injunction means that Atlantic Records could get a restraining order or injunction to prohibit the artist from touring, advertising or other conduct which was a violation of the terms of this agreement.

As far as the images go, Motown likely claimed that the Dinty Moore commercial would lead viewers to assume it was the Supremes or somehow the group was associated with the Supremes. That would be their argument, anyway. The "likelihood of confusion" is one of the required elements to prove copyright infringement and comes from a famous case involving the well known camera company and is known as one of the "Polaroid factors." Right to the group's "image and likeness" wouldn't extend to "lookalike" groups who were designed to entertain, unless the likeness extended to the point where a viewing member of the audience might think they were seeing the Supremes.

The "White Boys" sequence from "Hair," would be, I believe, what is considered a "fair use" of the copyright or image, because it was clearly done as a spoof for humorous or artistic purpose. No one who saw the performers in "Hair" would be confused enough to think they were actually seeing the Supremes; hence the "likelihood of confusion" element is not met. "Fair use" can also include brief mentions in literature [[this wouldn't include album reviews of course, which are not an infringement at all), but rather in fiction, for example, if a character in a novel went to a Supremes concert. It would also include, perhaps, brief excerpts from songs, like a line or two. These boundaries or limits have all been tested by hip hop and rap artists' use of earlier recordings, but I don't know how the law has developed in this area over the years so I can't say what the parameters are in this regard.

Remember, anything can be written into a contract so long as it is not illegal, so ownership of the group name even if it had been thought up or chosen by Florence, the ability to exploit the group name after one left the group, and other terms would all likely be included so as to benefit the company. These are done through "assignment" clauses, which would grant all such rights to the company. Original authorship or ownership is irrelevant. It's essentially akin to signing the rights to your home over to someone else. Yes, you owned it yesterday, but a simple Quitclaim Deed can assign all your ownership rights to another person today, on a single piece of paper which takes about 5 minutes to complete.

Also remember, at the time the girls were minors, had no legal representation, and Mary Wilson's mother who signed the contract for Mary, was illiterate.

Very one sided, very skewed to Motown's benefit, naturally. Motown was likely not the worst in this regard, but in my humble opinion they went a long way towards showing that black owned companies could exploit black artists just as much as a white owned company. While Gordy can be commended for many things regarding getting black music to mainstream America, I think the exploitation of the artists leaves a very big stain on his legacy.

[marybrewster]

Kenneth, thank you for such a lengthy response. I find all of it fascinating. One wouldn't think that in the "early years" Berry would have thought of something similar to the Drifters contracts to add to the Supremes. When they signed in 1960 or 1961 [[?) the name was basically worthless. Now 5 or 6 years later, that wouldn't be the case. Didn't Mary say though that Motown didn't copyright [[if that's the correct term) the name SUPREMES until the mid-70's, when Mary actually thought of leaving Motown? Funny that the Temptations and I assume the Four Tops own their name. But the Supremes didn't or don't. Like, could anyone ever deny Mary being a Supreme?

[kenneth]

@Mary,

you make a good point. I’m not sure of the timing of that contract that I quoted from, I’d have to go back and look at the source. The Drifters started recording in the late 1950s I believe, but of course that contract term likely did come along years later as you suggest. Intellectual property is an interesting field that’s for sure.

It’s is also interesting that you say the Temptations and the Tops own the rights to their own name. I think Martha Reeves used to say that about the Vandella name, but I wasn’t sure that I really believed her on that one!

[PeaceNHarmony]

I'm no expert in Intellectual Property law, although I took it in law school. [[It's an elective.) However, the Supremes' original contracts likely prohibited them from promoting themselves as ever having been in the group once they were terminated or if they left on their own. I've never seen the Supremes' original contract terms, but I have seen those of members of the Drifters because they had cases in litigation for years [[as did the Platters) for the same reasons, being unable to cite the Drifters as part of their musical history. The Drifters' standard contracts forbade members from ever utilizing the Drifters name, which was a valuable copyright, in any connection to their careers.

This is the language from the Drifters' contracts:

"The Artist agrees that the name of THE DRIFTERS belongs exclusively to the Employer and that he will not at any time use the name of The Drifters or any name similar thereto or any name incorporating The Drifters. In the event the employee leaves the employ of The Drifters he will not in any way advertise or attempt to publicize the fact that he had been a member of a singing group known as The Drifters and will not associate his name in any manner with The Drifters; and he further acknowledges that the name, The Drifters, is a valuable property and any violation of this paragraph could not be adequately compensated by money damages and he therefore agrees that the Employer shall be entitled to an injunction in any Court of competent jurisdiction to enjoin any violation or threatened violation of this contract by the Artist."

The reference to an injunction means that Atlantic Records could get a restraining order or injunction to prohibit the artist from touring, advertising or other conduct which was a violation of the terms of this agreement.

As far as the images go, Motown likely claimed that the Dinty Moore commercial would lead viewers to assume it was the Supremes or somehow the group was associated with the Supremes. That would be their argument, anyway. The "likelihood of confusion" is one of the required elements to prove copyright infringement and comes from a famous case involving the well known camera company and is known as one of the "Polaroid factors." Right to the group's "image and likeness" wouldn't extend to "lookalike" groups who were designed to entertain, unless the likeness extended to the point where a viewing member of the audience might think they were seeing the Supremes.

The "White Boys" sequence from "Hair," would be, I believe, what is considered a "fair use" of the copyright or image, because it was clearly done as a spoof for humorous or artistic purpose. No one who saw the performers in "Hair" would be confused enough to think they were actually seeing the Supremes; hence the "likelihood of confusion" element is not met. "Fair use" can also include brief mentions in literature [[this wouldn't include album reviews of course, which are not an infringement at all), but rather in fiction, for example, if a character in a novel went to a Supremes concert. It would also include, perhaps, brief excerpts from songs, like a line or two. These boundaries or limits have all been tested by hip hop and rap artists' use of earlier recordings, but I don't know how the law has developed in this area over the years so I can't say what the parameters are in this regard.

Remember, anything can be written into a contract so long as it is not illegal, so ownership of the group name even if it had been thought up or chosen by Florence, the ability to exploit the group name after one left the group, and other terms would all likely be included so as to benefit the company. These are done through "assignment" clauses, which would grant all such rights to the company. Original authorship or ownership is irrelevant. It's essentially akin to signing the rights to your home over to someone else. Yes, you owned it yesterday, but a simple Quitclaim Deed can assign all your ownership rights to another person today, on a single piece of paper which takes about 5 minutes to complete.

Also remember, at the time the girls were minors, had no legal representation, and Mary Wilson's mother who signed the contract for Mary, was illiterate.

Very one sided, very skewed to Motown's benefit, naturally. Motown was likely not the worst in this regard, but in my humble opinion they went a long way towards showing that black owned companies could exploit black artists just as much as a white owned company. While Gordy can be commended for many things regarding getting black music to mainstream America, I think the exploitation of the artists leaves a very big stain on his legacy.

Thanks so much for this thoughtful and information, Kenneth. I had forgotten about the concept of 'fair use'. I'll plan to read your post again - very interesting. Best to you!

[kenneth]

Thanks so much for this thoughtful and information, Kenneth. I had forgotten about the concept of 'fair use'. I'll plan to read your post again - very interesting. Best to you!

Thanks…sorry so wordy. Many of us lawyer types have trouble being concise!

[reese]

Kenneth, thank you for such a lengthy response. I find all of it fascinating. One wouldn't think that in the "early years" Berry would have thought of something similar to the Drifters contracts to add to the Supremes. When they signed in 1960 or 1961 [[?) the name was basically worthless. Now 5 or 6 years later, that wouldn't be the case. Didn't Mary say though that Motown didn't copyright [[if that's the correct term) the name SUPREMES until the mid-70's, when Mary actually thought of leaving Motown? Funny that the Temptations and I assume the Four Tops own their name. But the Supremes didn't or don't. Like, could anyone ever deny Mary being a Supreme?

I'm not sure about the Tops but Motown owned the Tempts' name for a time. Otis wrote that in 1966, someone recommended he register a copyright for the name. He attempted to do so only to be told that Esther Gordy Edwards had beaten him to the punch by two weeks. He was surprised since the group had never signed a contract granting Motown those rights. In 1976, they fought for the name and Motown reversed the rights to Otis and Melvin.

[reese]

@Mary,

you make a good point. I’m not sure of the timing of that contract that I quoted from, I’d have to go back and look at the source. The Drifters started recording in the late 1950s I believe, but of course that contract term likely did come along years later as you suggest. Intellectual property is an interesting field that’s for sure.

It’s is also interesting that you say the Temptations and the Tops own the rights to their own name. I think Martha Reeves used to say that about the Vandella name, but I wasn’t sure that I really believed her on that one!

I remember reading that it was actually the Drifters' manager George Treadwell who owned the name. At one point in the 50s, he fired the original group and replaced them with a younger group, the Five Crowns, headed by Ben E. King. After George's death, I believe his widow Faye retained the name.

Martha may have been given some rights to the name Vandellas in recent years. But in the 80s, in the book NOWHERE TO RUN, she was quoted as saying she didn't own the name and Motown could send another group on the road if they so wished. I gather Rosalind and Annette may have some rights now as well since they tour as "The Original Vandellas."

[kenneth]

I remember reading that it was actually the Drifters' manager George Treadwell who owned the name. At one point in the 50s, he fired the original group and replaced them with a younger group, the Five Crowns, headed by Ben E. King. After George's death, I believe his widow Faye retained the name.

Martha may have been given some rights to the name Vandellas in recent years. But in the 80s, in the book NOWHERE TO RUN, she was quoted as saying she didn't own the name and Motown could send another group on the road if they so wished. I gather Rosalind and Annette may have some rights now as well since they tour as "The Original Vandellas."

@reese,

Yes, it certainly is true that George Treadwell claimed rights to the name, I just don’t know the group history well enough to know how that came about. The contract term that I was quoting from would’ve been in the groups contract with Atlantic so probably before George Treadwell acquired any ostensible ownership in the name.

I think my recollection of the Vandellas was wrong because I remembered Martha Reeves saying that the Vandellas worked for her and she could hire and fire them. So I was thinking she claimed ownership to the name as well. Thanks for the clarification.