Cook County Record

Friday, December 13, 2019

Starter Corp. faces copyright claim over sampling of "Different Strokes" in 1992 commercials

By Andrew Thomason | Aug 20, 2014


Syl Johnson has taken on Will Smith, Tupac Shakur, Michael Jackson, the hip-hop group NWA, Jay-Z, and Kanye West in sample-based copyright disputes, and now he's taking aim at the maker of an athletic clothing line.

Johnson, born Sylvester Thompson, along with his production company, Syl-Zel Music Co., sued Starter Corp. for sampling his 1967 song "Different Strokes" without his permission.

Filed last month in Chicago's federal court, the suit also names Starter's past parent company, Nike Inc., and its current parent company, Iconix Brand Group Inc. Johnson is being represented by Chicago attorneys Mazie A. Harris and Vernon W. Ford Jr.

The suit states Starter used a song that sampled "Different Strokes" in two commercials produced and first aired in 1992. Starter has continued to use the commercials, linking videos of them on social networking sites as recently as this year, Johnson alleges.

The commercials are nearly identical except for the celebrities used to promote the brand, according to the suit that contends portions of his "Different Strokes" song can be heard nine times throughout each.

Johnson's suit states both commercials have been posted on YouTube, one on Sept. 14, 2008 and the second on Aug. 23, 2013.

"Defendants were not authorized to copy or sample ‘Different Strokes,'" the suit asserts. "Defendants have not paid any royalties or other compensation to Plaintiffs for Defendants’ copying and unauthorized uses of Plaintiff’s work."

Johnson is suing for copyright infringement, contributory copyright infringement, fraud, unfair competition and tortious infringement of common law copyright.

He is asking Chicago's federal court to enjoin the defendants from continuing to use the two commercials in question, and that control of the commercials be ceded to him.

In his suit, Johnson also seeks damages that amount to the “fair market value of a license to use the musical composition and sound recordings included in the commercials within the three-year look back period.”

U.S. District Judge Charles P. Kocoras has been assigned to the case and set a status hearing for Aug. 28, when the parties will have to report on the possibility of a settlement or the nature and length of discovery needed to prepare for trial.

Johnson was born in Mississippi and moved to Chicago where he became a semi-famous blues artist in the 1960s and 1970s. In addition to "Different Strokes," some of Johnson’s hits include "Is it Because I'm Black," "Take Me to the River" and "Come On Sock it to Me."

As his career began to wind down, artists, especially hip-hop artists, began to sample Johnson’s songs. Some artists paid to use his copyrighted tunes, but many did not.

Johnson habitually fills sample-based licensing lawsuits, going after a number artists who have sampled his work.

In 2008, he filed lawsuits in Chicago’s federal court against Will Smith, the hip-hop group NWA and the estate of Tupac Shakur and Michael Jackson for sampling the song in their own songs.

More recently, Johnson took hip-hop artists Jay-Z and Kanye West to court over their sampling of "Different Strokes" in the pair's 2010 song "The Joy."

Most, including Smith, Jackson, Jay-Z and West, have settled out of court with Johnson for undisclosed amounts.

"Wu Tang basically built my house," Johnson told the Sydney Morning Herald in 2011. "Kid Rock settled straightaway, gave me $60,000 for a half a second of music."

Johnson has lost at least one lawsuit involving the use of his work. Chicago's federal court in 2008 dismissed his copyright complaint that sought millions from Cypress Hill, as well as the group's label and producers.

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