By Thomas Long, J.D.
In a dispute that originally arose over rapper Drake’s use of samples from a complaining record company’s sound recording, Drake can go forward with counterclaims that entertainment company Hebrew Hustle, Inc., and its founder and principal violated his California state-law publicity rights, engaged in false endorsement under the Lanham Act, and engaged in unfair competition in violation of California law by using his photo and name on a promotional website without his permission, the federal district court in New York City has decided. Both parties’ motions for summary judgment were denied because factual issues existed as to whether Drake’s image and name were used to the counterclaim defendants’ commercial advantage and with the intent of promoting the entertainment company. In addition, there were factual questions as to whether Drake was a California domiciliary, as required for the state-law counterclaims (Estate of James Oscar Smith v. Cash Money Records, Inc., May 15, 2018, Pauley, W.).
Hebrew Hustle provided music publishing and management services to individuals in the music industry. Aubrey Drake Graham—known professionally as "Drake"—was a successful recording artist, rapper, songwriter, and actor. In April 2014, Hebrew Hustle, with the Estate of James Oscar Smith, sued Drake and others, alleging that Drake infringed the copyright to Smith’s track "Jimmy Smith Rap" by sampling it in the song "Pound Cake/Paris Morton Music 2." On May 30, 2017, the court determined that Drake’s sampling was protected under the fair use doctrine.
Drake brought counterclaims against Hebrew Hustle and its founder, Stephen Hacker, for violating his common-law right of publicity and California statutory right of publicity under Civil Code §3344, false endorsement under the Lanham Act, and California state-law unfair competition under Business & Professions Code §17200. Drake moved for summary judgment on his publicity rights claims; Hebrew Hustle and Hacker moved for summary judgment and for judgment on the pleadings with respect to all of Drake’s counterclaims.
Drake asserted that the Hebrew Hustle website displayed a photograph of Drake from December 2013 to July 2014, showing Drake posing with rappers Lil Wayne and Birdman. The photo was placed alongside 20 to 40 images depicting other musical artists or album covers. Hacker had acquired the photo from a third-party Internet source, without obtaining Drake’s permission to use it. In addition, Drake alleged that his name appeared without his consent on the Hebrew Hustle website’s "Bio" page—which described Hacker’s career—in a sentence stating, "Stephen has played a heavy hand with his clients in the creation of hit songs for the likes of Eminem, Jay-Z, Kanye West, Lil Wayne, Drake, Nicki Minaj and others." None of Hebrew Hustle’s clients had written or produced music for Drake, nor did they enter into any agreements with him, but they claimed to have managed musicians who either collaborated with Drake or produced unreleased music for him. Hacker removed the two references to Drake from the website on the day that Drake’s attorneys contacted him.
State-law claims—motion for judgment on pleadings. Hebrew Hustle and Hacker first argued that the state-law claims should be dismissed because in his pleading Drake described California as his "residence" rather than his "domicile." In the court’s view, this argument was "much ado about nothing." Even if one’s residence was not equivalent to one’s domicile, four years of intervening discovery in the lawsuit had corrected Drake’s pleading error. Drake had provided a verified statement attesting that he was a domiciliary of California and had submitted additional documents supporting this statement. Accordingly, the motion for judgment on the pleadings was denied.
Lanham Act false endorsement claim. Hebrew Hustle and Hacker moved for summary judgment on the false endorsement claim, contending that the references to Drake on the website were not false or misleading and would not confuse a site visitor from thinking that Drake had endorsed Hebrew Hustle. The court rejected the argument, stating that it could not hold as a matter of law that placing Drake’s photo on the website, followed by a sentence on the Bio page that Hacker played a "heavy hand" in creating songs for Drake, was not misleading. Hebrew Hustle and Hacker had very little to do with Drake, and placing his image and name on the site could have falsely implied that their connection was much stronger. In addition, a website visitor could have been confused into thinking that Drake endorsed Hebrew Hustle, in the court’s view. Seeing Drake’s photo and a statement claiming that Hacker played a "heavy hand" in creating hit songs for him could cause visitors to believe that Drake endorsed Hebrew Hustle, even if that was not the specific intent of the company and Hacker. Drake’s popularity and recognizability weighed in favor of the court’s determination that consumer confusion was possible. In addition, there was significant overlap between Drake’s fan base and the most likely visitors to the site. Therefore, Drake could go forward with his Lanham Act claim.
Common-law publicity rights claim. Both parties moved for summary judgment on Drake’s California common law right of publicity claim. The elements of this claim were: (1) the defendant’s use of the plaintiff’s identity; (2) the appropriation of plaintiff’s name or likeness to defendant’s advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury. It was not necessarily to establish the likelihood of consumer confusion. The court found that the first and third elements were met and needed no further analysis. It was not so clear, however, whether the "commercial advantage" and "injury" elements were present.
The counterclaim defendants argued that use of Drake’s photo could not have been to their commercial advantage because it was only one image displayed among many. The court rejected this argument, stating that it was unsupported by authority. Just because a celebrity’s image appeared in proximity to others, the right of publicity did not disappear. There was no requirement that Drake’s image have been placed near the Hebrew Hustle logo. Moreover, the court said, Drake’s photo appeared on the site’s homepage, and he was "instantly recognizable among lesser-known artists." It could not be determined as a matter of law that use of the photo was "merely incidental." In the court’s view, the commercial advantage issue was a question for the jury.
With respect to injury, courts routinely presumed that injury was established if there was sufficient evidence to prove the other three elements. According to the court, an unauthorized use of Drake’s likeness to the counterclaim defendants’ commercial advantage satisfied the injury prong. The amount of damages could be explored through expert discovery. Therefore, the defendants’ motion for summary judgment was denied.
The court also denied Drake’s motion because factual issues precluded summary judgment. Although Drake sufficiently alleged that California was his domicile for purposes of surviving a motion to dismiss, there remained questions of fact on the issue. The counterclaim defendants contended that Drake’s domicile was Toronto, Canada, his hometown, and Drake acknowledged that he was building a home there. In addition, although the use of Drake’s likeness was likely to the defendants’ commercial advantage, commercial advantage had not been established as a matter of law. Hacker attested that neither he nor Hebrew Hustle had received any communications from a third party about the references to Drake on the website. A jury could find in favor of the defendants on this issue.
California statutory publicity rights claim. California Civil Code §3344 added two elements to the common-law right of publicity: (1) the use of the person’s identity for advertising purposes must have been knowing; and (2) there must have been a direct and clear connection between the use of the plaintiff’s identity and the defendant’s commercial purpose. Hacker admitted knowingly placing Drake’s photo and name in the website content, but he denied knowingly using them for advertising purposes. Whether the uses were meant to promote Hebrew Hustle’s business was a question for the jury, the court said. In addition, it was unclear whether the "clear connection" element was met. This was a factual question. Accordingly, summary judgment was not appropriation with respect to the Section 3344 claim.
California unfair competition claim. The counterclaim defendants argued that the Section 17200 claim failed because there were no underlying Lanham Act or publicity rights violations and, therefore, no unlawful practice. The court rejected this argument because genuine factual issues existed with respect to the Lanham Act claim, so summary judgment on the Section 17200 claim was likewise precluded.
The case is No. 1:14-cv-02703-WHP.
Attorneys: Anthony Robert Motta (Law Offices of Joel Z. Robinson and Co.) for Estate of James Oscar Smith and Hebrew Hustle Inc. Cynthia S. Arato (Shapiro Arato LLP) for Cash Money Records, Inc., Universal Republic Records and Universal Music Group Distribution, Corp.
Companies: Estate of James Oscar Smith; Hebrew Hustle Inc.; Cash Money Records, Inc.; Universal Republic Records; Universal Music Group Distribution, Corp.
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