Cover banned?

Now this is an interesting twist on IP rights and wrongs.  It’s interesting, though, more as a sign of the desperation of the dead-tree media to raise cash — even at the expense of relationships with the hands that feed it — than in terms of any particularly new legal ground being plowed here.  I don’t think there is.

Last October The Hollywood Reporter‘s “THR, Esq.” blog reported on this “situation”:

Most musicians would love to be on the cover of Rolling Stone. Back in its heyday, a cover spot was even worth millions of dollars in record and concert sales.

But take a Rolling Stone cover [depicting a musician], slap it on to a T-shirt and sell it to fans — that equals trouble.

I would think so.  And back in its heyday, the one-time bible of “rock” culture (that’s a very generous definition of “rock” there) wouldn’t dream of such a stunt.  But people change — just ask publisher Jann Wenner — and so do business models, and financials.   The trouble was this lawsuit, and this last Friday, THR, Esq followed up:

A California [federal] judge won’t dismiss a lawsuit alleging that Rolling Stone magazine violated trademarks and rights of publicity by taking cover images of famous musicians and slapping them on t-shirts.

[Various licensing agencies] filed the complaint in California district court in October claiming Wenner Media was hawking products featuring Nirvana, Beyonce and other musicians. The plaintiffs, repped by Howard King and his firm, have exclusive licensing deals with the artists and allege unfair competition.

Not surprisingly, Wenner asserted a First Amendment and fair use defense, saying the merchandise was expressive non-commercial speech part of a “subscription promotion campaign.” . . .

I can kind of see the Rolling Stone‘s “fair use” point, if I squint hard enough to see stupid, pragmatically speaking:

1. These are our magazine covers.
2. We’re showing the world what we’re about.
3. Therefore no one would think that the “artists” depicted on these t-shirts are the source of have “officially authorized” these t-shirts.
4. This is a fair use, therefore.
5. Rock and roll!

Indeed, the brief in support of the motion, brought under Rule 12(b)(6), argues:

Where, as here, a celebrity brings a trademark claim, the celebrity persona functions as the mark for trademark purposes. See White v. Samsung Electronics America, Inc., 971 F.2d 1395, 1399-1400 (9th Cir. 1992). But, as the court observed in Cairns v. Franklin Mint, 107 F. Supp. 2d 1212, 1214 (C.D. Cal. 2000), not all uses of a celebrity s image are actionable under § 1125(a). Only uses which suggest sponsorship or approval are prohibited [,] not mere use of an image or name. Id.”

The decision was based in part on the lack of competent evidence in the record as to certain factual bases of the proffered grounds for dismissal, so the judge didn’t get too deeply into the real legal issues.  Fine.

But given the state of trademark law as applied to licensed merchandise, Wenner and his rolling stones would do well to pull out of this situation, fast.  Or they may not even be left with the shirts on their backs.

UPDATE:  More analysis from Mike Masnick.  And Marty Schwimmer writes, “Don’t forget the Joe Montana v San Jose Mercury News case in your discussion of the Rolling Stone cover issue.”  Well of course I didn’t forget!  I was just waiting to see who’d bring it up.  Of course it was Marty.  It was also MarcW, in the comments.  That case, and its impact, are discussed in this “blog” post article by the Sheppard Mullin law firm.  And it seems to stand for the proposition that I, for one, am 100% wrong:

It is well established a person’s photograph originally published in one issue of a periodical as a newsworthy subject (and therefore concededly exempt from the statutory prohibitions) may be republished subsequently in another medium as an advertisement for the periodical itself, illustrating the quality and content of the periodical, without the person’s written consent.

So, am I?  Is the iconic, celebrated “cover of the Rolling Stone” merely a “photograph originally published in one issue of a periodical as a newsworthy subject”?  Or is it something entirely different — and if it is, in whose favor does that cut?  Similarly, does that image “illustrate the quality and content of the periodical” or is it, again, an illustration of something else which may, as a value proposition, swing either way?

Let’s consider the facts, as well summarized by Sheppard Mullin’s Benjamin Mulcahy, in the Joe Montana case:

[The case] held that the reproduction in poster form of actual newspaper pages containing plaintiff Joe Montana’s photograph and artist rendition of Montana’s likeness, and the subsequent sale of such posters, were protected by the First Amendment against Montana’s common law and statutory commercial misappropriation claims.  Each of the newspaper pages had been reproduced in poster form within two weeks of its original printing in the newspaper and had been made available for sale to the general public. The defendant San Jose Mercury News had submitted undisputed evidence that it had sold the posters to advertise the quality and content of its newspaper.  The posters were exact reproductions of pages from the paper.  They contained no additional information not included on the newspaper pages themselves, and they did not state or imply that Montana endorsed the newspaper.

Same thing here?  It looks that way at first blush.  Maybe it really is.  But I suppose one argument in response may be that, notwithstanding the fact that the Rolling Stone cover once bestowed magic on its subjects, and may still do so for an otherwise “unknown” performer, it no longer does so.  To the contrary, an “artist”‘s agreement to sit for a portrait and lend his or her star power to the cover of the financially and culturally declining Rolling Stone is in fact an endorsement of the magazine by the artist — “hey, Rolling Stone is still cool!” — not merely an instance of “journalism.”

Thus reuse of the image constituting the endorsement is not merely a factual depiction of journalistic quality — as it would have been regarding the Joe Montana images — but, rather, a repurposing of the original endorsement of Rolling Stone by the celebrity plaintiff.   Assuming the extent of the endorsement was limited to its terms, presumably the quid pro quo of a one-time appearance in return for the loan of star power, its re-use is actionable under several theories.

True?  I don’t know.  I’m just winging it, though I think this may be along the lines MarcWwas suggesting, too.  But enough credible fact issues to get past a motion to dismiss under Rule 12(b)(6)?  Hey, rock and roll!

Originally posted 2012-09-19 14:27:36. Republished by Blog Post Promoter