COOK COUNTY RECORD

Six members of the storied 1985 Chicago Bears have won the chance to restart some trouble for the company now holding the rights to the Super Bowl Shuffle, as a federal judge signed off on the players’ request to carry back to Cook County court their lawsuit over the marketing and use of the iconic music video.

On June 1, U.S. District Judge Edmond E. Chang ruled in Chicago in favor of former Chicago Bears Richard Dent, Steve Fuller, Willie Gault, Jim McMahon, Mike Richardson and Otis Wilson – identified as “The Shufflin’ Crew” – granting their request to remand to Cook County Circuit Court their complaint against Julia Meyer, who purports to own the rights to the Super Bowl Shuffle, and Renaissance Marketing Corporation, Meyer’s company used for licensing song and associated music video.

The ruling comes as the latest step in a court fight ongoing since early 2014, when the Shufflin’ Crew filed suit in Cook County Circuit Court over what they alleged were an improper and unauthorized use of their “personas” in the video. They further alleged Meyer and Renaissance had improperly profited from the marketing of the Shuffle, which they said violated the contract the players had signed in 1985 when they agreed to make the music video to support charities assisting low-income families in Chicago.

According to court documents, rights to the Shuffle passed in 1986 from the song and video’s producer, Red Label Records, to Red Label’s president Richard Meyer, ostensibly without authorization from the Bears players. Julia Meyer, Richard Meyer’s widow, asserted ownership rights following her husband’s death.

Given the complaints over the use of the players’ likenesses, voices and other personal attributes, Meyer and Renaissance removed the case to federal court, claiming the players’ complaints were preempted by the federal Copyright Act.

Initially, the federal court agreed, and denied the Shufflin’ Crew’s first request to send the case back to county court.

However, the players amended their motion to remand, removing the counts which the federal court had determined were preempted by federal law, and instead arguing the case belonged in Cook County courtrooms because the case involved violation of the Illinois Right of Publicity Act, which gives people the right to control how their identity is used for “commercial purposes.”

In the amended complaint, the players argue Renaissance “held themselves out as if they had an affiliation with or authorization from the Shufflin’ Crew to use the (players’) personas even though defendants did not have and do not have the Shufflin’ Crew members’ permission to do so.”

Chang noted, on first blush, it would appear the case is still preempted by the Copyright Act, as it would appear the use of the likenesses is limited to the Shuffle, a specific copyrighted work.

In this case, however, Chang said, under the Illinois law, the personas the players are seeking to protect extend beyond the specific copyrighted music video and song.

“Plaintiffs are not alleging that defendants misused the Shufflin’ Crew’s performances in the Shuffle, but instead that defendants falsely represented that they had an affiliation with the Shufflin’ Crew – that is, used the Shufflin’ Crew’s identities apart from their performances in the Shuffle – to reap a financial benefit,” Chang wrote. “This claim is not preempted by the Copyright Act.”

Chang noted this legal argument under IRPA could potentially significantly limit the players’ ability to collect damages, as the players might have difficulty “devis(ing) some way of ascertaining which sales or licenses of the Shuffle – or, more likely, which portions of sales or licenses of the Shuffle – were due to a perceived affiliation with the Shufflin’ Crew apart from their performances in the work.”

However, Chang said such details can be worked out in discovery as the case proceeds.

And Chang further brushed aside contentions from Renaissance the former Bears are simply shopping for a friendly venue in which to press their claims.

He noted the Bears have never attempted to argue they own copyright to the Shuffle, only to the use of their personas, evidenced particularly by their voluntary withdrawal of any counts touching on federal copyright law. Absent any counts alleging violation of the federal copyright law, the judge said the case likely best belongs in state court.

“There is no basis here on which to infer that plaintiffs are using manipulative tactics,” the judge wrote. “It is clear that, from the outset of this case, plaintiffs believed that they were pursuing state-law claims.

“Although the relief plaintiffs initially requested may have implicated copyright law, there is no evidence that the relief sought was anything more than overly expansive pleading, rather than a desire to sneak copyright claims into a state court.”