On Halloween Thursday, Sam Moore, a Grammy-winning musician, lost his four-year litigation battle against The Weinstein Co. over the 2008 film Soul Men. Moore claimed that the film was a thinly-veiled rip-off of his music career and that the film’s accompanying soundtrack violated his trademark to “Soul Man.”

In 2012, a Tennessee judge dismissed both claims, and on Thursday the 6th Circuit Court of Appeals upheld [PDF] that ruling.

Turning to publicity right precedent, 6th Circuit judge Deborah Cook applied the “transformative elements” test, which weighs a creative work’s original expression with a celebrity’s appropriated likeness. This test requires courts to identify whether the creative work “adds something new“ to the celebrity’s likeness.

Here, the Court wasn’t convinced that the film had even appropriated Moore’s likeness. Neither Moore nor his soul-singing band Sam & Dave were ever mentioned in the movie, and the movie’s music came from a variety of sources, only one of which was a Sam & Dave recording. The court closed the door on Moore’s publicity right claim, ruling that “Without a doubt, the Movie added significant expressive elements to any purported use of Moore’s identity.”

On the trademark claim, the Court denied Moore’s contention that consumers understood him to be the real “Soul Man.” Despite Moore’s famousness as a person, his “Soul Man” trademark lacked strength and distinctiveness. First, Moore’s mark was unregistered. Second, the phrase “Soul Man” is descriptive and widely used by others (as a simple Google search reveals). And third, Moore failed to allege facts to support either consumer confusion or trademark dilution.

In short, the ruling came as an important First Amendment victory for creators like The Weinstein Co., but it didn’t settle any of the confusion surrounding the right of publicity. The interplay between right-of-publicity claims and the First Amendment is an issue that affects the entire entertainment industry—from movie and TV producers to songwriters, authors, and video game makers. More guidance on this issue, then, would do much to encourage innovation and creativity while providing celebrities with clear expectations of their protectable rights in their images, likenesses, and identities.

Federal legislation addressing the right of publicity is one potential source of guidance. The Supreme Court could speak on the matter, which could be in the offing: two weeks ago, the NCAA petitioned for certiorari [PDF] on a case involving Electronic Arts’ depiction of NCAA athletes in its video games. If the Supreme Court takes up the case, it could go a long way toward providing guidance for lower courts in their continued efforts to balance celebrites’ publicity rights with the First Amendment right of expression.

Doruk Onvural

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