Moore v. Weinstein Co., LLC

The famousness test turns on the mark’s fame, not on the owner's fame.

Opinion (Cook): Sam Moore was one half of a 1960s musical duo Sam & Dave. In 1967 the duo released an album titled “Sam & Dave Soul Men” with a hit single entitled “Soul Man.” The duo dissolved but Moore continued to perform and continued to use the name "Soul Man" when others referred to him as “The Legendary Soul Man.” In 2007, the Weinstein Company ("Weinstein") through their division Dimension Films, acquired the rights to a movie titled “Soul Men” and subsequently produced a movie in which characters form two-thirds of a 1960s soul trio that eventually breaks up and reunites in present day.
Moore sued the Weinstein, the movie company, for trademark violations under the Lanham Act, alleging that the movie and soundtrack infringe on his interest in the 1967 album he released, and a 2008 documentary title “The Original Soul Men Sam & Dave”.Moore claimed that the movie’s title infringed on his common-law trademarks “Soul Men,”“Soul Man,” “The Legendary Soul Man,” “The Original Soul Man,” and “The Original Soul Men." The district court granted summary judgment to Weinstein on each of Moore’s claims. The Appellate Court adopted the district court’s reasoning for many of those claims, including Moore's claim for trademark dilution. The Court considered the famousness of a trademark in the state of Tennessee. The famousness factors laid out by state statutes track the Lanham Act’s famousness factors. The district court found at least thirty-four third-part musical albums that consist of or incorporate the phrases “soul men.” The famousness test turns on the mark’s fame, not on Moore’s. Accordingly, the court AFFIRMED the district court’s grant of summary judgment.