Historic Zombies Candy cited in Weinstein’s ‘Soul Men’ win
The 2008 movie “Soul Men” starring Samuel L. Jackson and Bernie Mac, produced by the Weinsteins, was sued by singer “the Legendary Soul Man” Sam Moore of the duo Sam & Dave best known for their songs “Soul Man” and “Hold On’, I’m Comin’”. The Court ruled, May 23, 2012, in favor of the Weinstein Company, ordering summary judgment for the defendant, and dismissing the singer’s claims.
SAMUEL DAVID MOORE, JOYCE ELLEN MOORE, and THE SJM TRUST, Plaintiffs, v. THE WEINSTEIN COMPANY, LLC, doing business as DIMENSION FILMS; METRO-GOLDWYN-MAYER STUDIOS, INC.; GENIUS PRODUCTS, LLC; and CONCORD MUSIC GROUP, INC., Defendants,
Case No. 3:09-CV-00166
UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF TENNESSEE, NASHVILLE DIVISION
2012 U.S. Dist. LEXIS 72929
May 23, 2012, Filed
Opinion in PDF
The Court in footnote #34, mentions that Plaintiff’s brief includes citation to Wilson v. Delauney, a 1957 opinion mentioned on this ZombieLaw blog as historic Zombie case law. That case, about a “Zombie” candy in competition with a “Zombies” candy, is cited for the effect of pluralization in intellectual property. As quoted in my previous post, the Wilson court explained:
It is evident that there is no material difference, in a trademark sense, between the singular and plural forms of the word “Zombie” and they will therefore be regarded here as the same mark.
However, the Court in the Weinstein’s case decides that mere pluralization can have material differences in light of additional context:
Footnote 34: In support of their contention that the singular and plural forms of “Soul Man” are indistinguishable for trademark purposes, the plaintiffs cite to a 1957 decision of the United States Court of Customs & Patent Appeals, Wilson v. Delaunay, 245 F.2d 877, 44 C.C.P.A. 1019, 1957 Dec. Comm’r Pat. 399, and a 1985 Trademark Trial and Appeal Board decision, In re Pix of Am., Inc., 1985 TTAB LEXIS 106. In Wilson, the court observed that, as between a company seeking to sell “Zombie” candy and another company that had already registered a mark for “Zombies” candy, the singular and plural forms of the word presented “no material difference.” Wilson, 44 CCPA at 1021. In Wilson, the board similarly noted that, as between a company seeking to register “Newports” for women’s shoes and a company selling outer shirts under the “Newport” brand, the singular form of Newport was materially indistinguishable under those circumstances. Neither of these citations, whatever their persuasive weight, rebut the point that context is important in evaluating all aspects of the similarities between two marks.
The Moore v. Weinstein Company opinion by Federal Judge Aleta Trauger is 98-pages.
If you don’t want to read all that, Eriq Gardner in the Hollywood Reporter has a wonderful summary – “How the Weinsteins Beat ‘Soul Man’ Singer Sam Moore in an Important Lawsuit”. He also recommends reading the whole opinion because:
The case also touched upon so many burning legal controversies in entertainment law that it easily could serve as a primer for anyone considering the field.
It is an important case for Hollywood biopics and anyone trying to tell a story that rings similar to a real life story. Which is of course all fictional characters. So, at what point does Hollywood have to license aspects of individual’s human development life narratives. How similar is too similar? Does it matter who the producers are? Gardner’s version opens with quote from the philosophy of Friedrich Schiller: “There’s no such thing as chance”
The case also has the odd note of Samuel L. Jackson testifying in deposition that it is his practice NOT to watch the documentary movies he narrates. Oh those Hollywood business practices…
