Posted: July 22nd, 2012
By: Rachel Waters *
“Just a matter of time, before you steal it . . .” Those lyrics from The Black Keys’ “Gold on the Ceiling” proved to be prophetic when the duo along with Danger Mouse, a producer and the song’s co-author, filed a complaint in federal court in California last month. The song was another in a line of hits propelling the group’s members, Patrick Carney and Dan Auerbach, to popular fame – notably, the group scored the unique invite to perform on Saturday Night Live twice in one season. The complaint alleged that Pizza Hut (YUM) infringed on the group’s copyright by using portions of the song in one of its commercials for “Cheesy Bites Pizza.” Several days after the Cheesy Bites complaint was filed, the group initiated another infringement lawsuit against The Home Depot (HD). The Home Depot complaint contained similar allegations to those against Pizza Hut, but accused the construction megastore of using portions of the track “Lonely Boy” in commercials for a line of its power tools. Both songs were featured on the groups’ seventh album, “El Camino,” which debuted at number 2 on the Billboard 200 Chart to critical acclaim.
The complaints filed in both actions allege copyright infringement and, although an out-of-court settlement is likely, any judicial resolution of the duo’s claims will hinge on just how similar the original and commercial versions of the songs are. Both the Home Depot and Pizza Hut commercials are viewable on YouTube (clips were available as of the date this article was published). The Home Depot commercial uses an instrumental recording that sounds strikingly similar to the “Lonely Boy” track. The Cheesy Bites spot goes one step further by using sound-a-like instrumentals and ending with a familiar vocal snippet. Given the substantial similarity between the originals and the ad versions, it is difficult to see how a court would not find infringement. Still, past artists faced with similar music theft have turned to areas of the law other than copyright to enforce their claims.
For years, artists sought protection under the Lanham Act. That Act protects trademark holders from misappropriation of their marks under misleading circumstances. For example, The Black Keys might allege that the Pizza Hut ad violates the Lanham Act because it could lead consumers to believe that the band is endorsing Cheesy Bites. Until 2010, musicians seeking recovery for infringement regularly alleged Lanham Act claims. However, in Henley v. Devore the Ninth Circuit adopted the Second Circuit’s negative position toward such use of the Act. The Ninth Circuit agreed that there is no “precedent through the history of trademark supporting the notion that a performing artist acquires a trademark or service mark signifying herself in a recording of her own famous performance.” As such, the court’s findings in Henley limited the ability of artists to use the Lanham Act to fight infringement of their works.
In 1992, singer-songwriter Tom Waits brought suit against Frito-Lay for voice infringement, a California tort claim, in a Doritos commercial. In that case, the court focused on the distinctiveness of Waits’ voice and pointed out that the Waits impersonator used in the ad almost lost his job because he sounded so much like Waits that executives anticipated legal problems. Ultimately, the Ninth Circuit agreed with those perceptive executives and upheld over $2 million in damages. In contrast, the Home Depot and Pizza Hut commercials are mostly limited to instrumentals leaving The Black Keys without the same recourse as the distinctively-voiced Waits.
This is neither the first time that The Black Keys have gone to court over the misappropriation of their brand recognition, nor the first time they have alleged such copyright infringement. The duo was named in a trademark infringement suit brought by the producers of Coachella, a popular SoCal music festival. The Coachella suit sought to protect the trademarks of the festival and its 2012 headliners, including The Black Keys, from use in unlicensed apparel, posters and other merchandise. The Black Keys also filed suit against Valley National Bank (VLY) last year for infringement of the song “Tighten Up.” An advertising agency used the song, which earned a Grammy Award and features a progression of love triangles in its video, as background music for a financial services pitch by the bank’s CEO.
Despite the group’s displeasure with the unlicensed use of its songs, it has been liberal in its grants of licenses to other retailers, including Zales (ZLC) and Hewlett Packard (HPQ). The group’s arguable status as an “indie” band, coupled with their commercial popularity, has placed them squarely at the forefront of the “selling out” debate. For example, Stephen Colbert recently pitted the band against Vampire Weekend in a “sell-out-off.” Colbert ultimately called it a tie.
Declining record sales have forced many artists to consider new revenue streams, the most lucrative of which is often commercial licensing. At the same time, bands have struggled to maintain ties with a fan base that often eschews corporate influence. In light of this struggle, infringement lawsuits, like those brought by The Black Keys, are less about scoring a sizeable court judgment, and more about maintaining the integrity of their music in an evolving industry. Other artists that have recently alleged such theft include Eminem, Beach House and rapper Anthony Dash, who alleged copyright infringement after his song was used in WWE (WWE) promotional videos featuring boxing great Floyd Mayweather, Jr. The decline of album purchases and the proliferation of free streaming services like Spotify and Grooveshark means that artists are fighting harder than ever for their paychecks and for creative and commercial control of their works. If advertisers continue to skirt licensing requirements it will not be a surprise to see more artists, “indie” or not, follow in The Black Keys’ footsteps.
* Rachel Waters is a recent JD/MBA graduate of the Wake Forest University School of Law. She also holds a Bachelor of Arts in Political Science and International Studies from Wake Forest. After sitting for the California bar exam this July, Rachel is excited to begin a yearlong clerkship with the Honorable Terrence W. Boyle (E.D.N.C.) in September. Upon completion of her clerkship, Rachel intends to practice law in San Francisco.