LaFace takes the bus back to district court in Rosa Parks Case
In Parks v LaFace Records, the Sixth Circuit Court of Appeals has reversed a district court decision to grant the defendant summary judgment. The court remanded the case to decide whether the use of Rosa Park's name in a song title is protected as free speech under the First Amendment of the US Constitution and does not, therefore, constitute trademark infringement.
The rap group OutKast released a song called "Rosa Parks". Rosa Parks, who became famous for refusing to give up her bus seat to a white man in Alabama in 1955, sued LaFace Records, OutKast's producers, on the grounds that the song violates Section 43(a) of the Lanham Act. Parks contended that the title misleads consumers into believing that the song is about her, or that she is affiliated with the song or sponsored or approved its title. She also claimed that the title infringes her common law right of publicity. The district court granted LaFace's motion for summary judgment. Parks appealed.
The appellate court reversed the ruling. It dismissed LaFace's argument that Parks does not have trademark rights in her name, as her commercial activities and international recognition as a symbol of the civil rights movement afford her with such rights. The court also noted that, contrary to LaFace's contention, there is no need to make trademark use of Parks's name in order for her to have a cause of action under the Lanham Act.
However, the appellate court remanded the case to decide whether LaFace's use of the name is protected as free speech. With respect to Parks's trademark infringement claim, the court used the approach developed by the Second Circuit in Rogers v Grimaldi (875 F2d 994 (2nd Cir 1989)) to look at whether the title has any artistic relevance. The court held that including the phrase "move to the back of the bus" in the lyrics does not justify the use of Parks's name for the song title as a matter of law, but that the issue remained as to whether the use of Parks's name constitutes false advertising or is a legitimate use of a celebrity's name in an artistic expression. The second prong of the Rogers Case test - whether the title "explicitly misleads as to the source or content of the work" - will only need to be addressed if, on remand, the district court concludes that the song title has no artistic relevance.
With respect to Parks's right of publicity claim, the court concluded that a genuine issue of material fact exists as to whether the title is "wholly unrelated" to the lyrics of the song. If the "Rosa Parks" title was chosen solely to attract attention to a song that has nothing to do with the civil rights activist, and not also, as LaFace claims, for artistic reasons, then Parks must prevail on her right of publicity claim.
Rachelle Kagan, Goodwin Procter LLP, New York
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