District Judge Denies Rock Band The Romantics’ Motion for Preliminary Injunction Against Activision

Holding:

The U.S. District Court for the Eastern District of Michigan, Southern Division, denied plaintiff rock band members’ application for a preliminary injunction that sought to restrain a video game’s use of a new recording of their song. According to the trial court, plaintiffs failed to establish the requisite of having “a likelihood of success on the merits for their state law claim of a violation of the right of publicity.” Under the circumstances of this case, this claim would be governed by Michigan law. However, Michigan has never recognized right of publicity in the sound of a voice. Further, the game in dispute was an “expressive artistic work entitled to First Amendment protection” because it (the game) contains “significant transformative elements.” On the basis of this reasoning, the court ruled that the denial of plaintiffs’ motion for preliminary injunction was proper.

Detailed Summary:

Presented before the U.S. District Court for the Eastern District of Michigan, Southern Division, is the propriety of plaintiff band members’ application for a preliminary injunction.  Plaintiffs sought to restrain defendants, during the pendency of the action, from advertising, offering for sale, or selling the video game “Guitar Hero Encore: Rock’s the 80s” (“Game”). The Game is a part of the “Guitar Hero” video game franchise that includes a series of games, guitar shaped game controllers, accessories and merchandise under the “Guitar Hero” trademark. This franchise has been very successful, winning numerous accolades and becoming the top selling franchise for console video games as of September 2007. The graphic video elements of the Game require complex synchronization with each song to enable the realistic simulation of guitar play.

Defendant Activision Publishing, Inc. is the distributor of the Game and the parent of defendant RedOctane, Inc., the publisher of the Game.  It obtained a valid non-exclusive synchronization license from EMI Entertainment World, Inc., the owner of the copyright in the musical composition entitled “What I Like About You” (written and originally recorded in 1979 by the band The Romantics, and published in 1980) (the “Song”). A synch license, in the context of a video game, allows defendants to make a new recording of the underlying composition and to use that recording in synchronization with visual images in the video game to enable game play. In accordance with this license, defendant WaveGroup Sound recorded a new version of the song which was incorporated, or synchronized, into the Game. The Game was commercially released in July 2007.  While playing the Game, a player can encounter the song or any reference to The Romantics only if the player obtains an advanced player status. Defendants had never used the song for the purpose of advertising or marketing the Game. Neither the name of plaintiffs’ band nor any of the names of the individual plaintiffs appeared on the product packaging.

Plaintiffs Wally Palmar, Mike Skill, and Coz Canler are current members of the rock band The Romantics. The Romantics created the original master recording embodying the song in 1979, which was released in 1980. Not all plaintiffs participated in the master recording of the song. The lead singer on the master recording of the song was no longer with The Romantics. He was not a party to this action. Plaintiffs did not allege that they currently own any rights in the song. Plaintiffs asserted claims of right of publicity, Lanham Act, unfair competition and unjust enrichment. Although plaintiffs sought injunctive relief, their counsel publicly stated that his clients wanted to receive money for the alleged harm caused to them by the use of the song in the Game.

In denying plaintiffs’ application, the trial court held that plaintiffs failed to show that there is a “likelihood of success on the merits for their state law claim of a violation of the right of publicity.”  Under the circumstances of this case, this claim would be governed by Michigan law. However, Michigan had never recognized right of publicity in the sound of a voice. Thus, plaintiffs failed to state a cognizable claim for violation of the right of publicity. Militating against the probability of success of plaintiffs’ claim was the fact that not all of the plaintiffs performed on the original master recording of the song.  The lead featured singer on the original master recording of the song was not even a plaintiff.  Such fact would give rise to “substantial issues concerning plaintiffs’ standing to assert such a claim” even if one were to exist, the court wrote.

Moreover, the First Amendment protects commercial actors’ use of a song in a work.  To be covered by First Amendment protection, a work’s use must be related to the content of the work and is not a disguised commercial advertisement for the misleading sale of the commercial actors’ goods or services. Parks v. LaFace Records, 329 F.3d 437, 461 (6th Cir.2003).  Here, the Game was an “expressive artistic work” entitled to First Amendment protection.  The Game contained “significant transformative elements” and was “not likely to interfere with the economic interest” protected by the right of publicity.

Also, the Copyright Act preempts plaintiffs’ purported state law right of publicity claim. A state law cause of action is preempted by the federal Copyright Act if: (1) the work involved falls within the “subject matter” of the Copyright Act; and (2) the rights that a plaintiff asserts under state law are “rights that are equivalent” to those protected by the Copyright Act. Kodadek v. MTV Networks, Inc. 152 F.3d 1209, 1212 (9th Cir.1998). In this case, the court found,  plaintiffs’ “identity” claims to the sound of the Song were “essentially claims regarding the licensing of a copyrighted work,” falling squarely within the “subject matter” of the Copyright Act. In other words, the rights asserted by plaintiffs are “rights equivalent” to those protected by the Copyright Act under Michigan law. Wrench LLC v. Taco Bell Inc., 256 F.3d 446, 455 (6th Cir.2001).

Lastly, sections 106 and 114(b) of the Copyright Act permit the owner of a copyright in a musical composition to license others to make specified commercial uses of the composition. This situation expressly allows third parties like defendants to make a sound-alike recording of a song. Here, defendants possessed a valid synchronization license. Hence, they had the right to make their own recording of the song to integrate into the Game without violating plaintiffs’ right of publicity, the court stated.

On the basis of the foregoing, the court denied plaintiffs’ motion for preliminary injunction.

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