Don Henley et al v. Charles S Devore et al

Filing 82

REPLY in support of MOTION for Partial Summary Judgment as to liability for copyright and Lanham Act claims 57 filed by Plaintiffs Mike Campbell, Don Henley, Danny Kortchmar. (Charlesworth, Jacqueline)

Don Henley et al v. Charles S Devore et al

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MORRISON & FOERSTER LLP JACQUELINE C. CHARLESWORTH (pro hac vice) [e-mail] CRAIG B. WHITNEY (CA SBN 217673) [e-mail] TANIA MAGOON (pro hac vice) [e-mail] 1290 Avenue of the Americas New York, New York 10104 Telephone: [phone] Facsimile: 212.468.7900 PAUL GOLDSTEIN (CA SBN 79613) [e-mail] 559 Nathan Abbott Way Stanford, California 94305-8610 Telephone: [phone] Facsimile: 650.327.0811 Attorneys for Plaintiffs DON HENLEY, MIKE CAMPBELL and DANNY KORTCHMAR UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA DON HENLEY, MIKE CAMPBELL and DANNY KORTCHMAR, Plaintiffs, v. CHARLES S. DEVORE and JUSTIN HART, Defendants. Case No. SACV09-0481 JVS (RNBx) PLAINTIFFS' REPLY MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF PARTIAL SUMMARY JUDGMENT Date: June 1, 2010 Time: 10:00 A.M. Ctrm: Hon. James V. Selna

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PLAINTIFFS' REPLY MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION FOR PARTIAL SUMMARY JUDGMENT (SACV09-0481 JVS (RNBx))

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TABLE OF CONTENTS Page INTRODUCTION.............................................................................................................. 1 I. DEFENDANTS CANNOT PREVAIL ON THEIR FAIR USE DEFENSE ............... 1 A. The First Fair Use Factor Overwhelmingly Favors Plaintiffs ....................... 1 1. 2. 3. Defendants Were Not Targeting Plaintiffs or Their Works............. 2 First Amendment Interests Are Encompassed By the Fair Use Doctrine............................................................................................ 3 Dr. Rose's Expert Testimony Is Wholly Appropriate and Admissible........................................................................................ 4 Dr. Zeilinger's Opinion Is Unreliable and Should Not Be Credited ............................................................................................ 7 Defendants Profited From Their Use of Plaintiffs' Songs............... 9

Defendants' Attempt to Rely on an Unauthenticated Music Video Not in Evidence Is Improper and Should Be Ignored........... 9 Plaintiffs' Works Are at the Core of Copyright Protection ......................... 11 Defendants' Takings Are Excessive and Unprecedented ............................ 11 Defendants' Uses Are Harmful to Plaintiffs' Works................................... 12

II. DEFENDANTS' INFRINGEMENT WAS WILLFUL............................................. 15 III. HENLEY IS ENTITLED TO SUMMARY JUDGMENT ON HIS LANHAM ACT CLAIM .............................................................................................................. 17 A. B. C. D. Defendants' Legal Arguments Lack Merit .................................................. 17 Although Not Required, Plaintiffs Have Amply Demonstrated Actual Malice........................................................................................................... 19 The Sleekcraft Factors Uniformly Favor Henley......................................... 20 Defendants Offer No Legitimate Criticism of Poret's Survey .................... 22

CONCLUSION ................................................................................................................ 25

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TABLE OF AUTHORITIES Page(s) CASES A&M Records, Inc. v. Napster, Inc. 239 F.3d 1004 (9th Cir. 2001).................................................................................3, 15 Acuff-Rose Music, Inc. v. Campbell 972 F.2d 1429 (6th Cir. 1992).......................................................................................4 Adobe Sys. Inc. v. Kern No. C 09-1076, 2009 U.S. Dist. LEXIS 123566 (N.D. Cal. Nov. 24, 2009) .............15 Bridgeport Music, Inc. v. UMG Recordings, Inc. 585 F.3d 267 (6th Cir. 2009).......................................................................................17 Browne v. McCain 611 F. Supp. 2d 1062 (C.D. Cal. 2009) ......................................................................20 Browne v. McCain 612 F. Supp. 2d 1125 (C.D. Cal. 2009) ................................................................18, 20 Butler v. Target Corp. 323 F. Supp. 2d 1052 (C.D. Cal. 2004) ................................................................17, 18 Campbell v. Acuff-Rose Music, Inc. 510 U.S. 569 (1994) ............................................................................................ passim Castle Rock Entm't, Inc. v. Carol Publ'g Group, Inc. 150 F.3d 132 (2d Cir. 1998)........................................................................................15 Chi-Boy Music v. Charlie Club, Inc. 930 F.2d 1224 (7th Cir. 1991).....................................................................................15 Columbia Pictures Indus., Inc. v. Miramax Films Corp. 11 F. Supp. 2d 1179 (C.D. Cal. 1998) ........................................................................12 Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd. 604 F.2d 200 (2d Cir. 1979)........................................................................................17 Downing v. Abercrombie & Fitch 265 F.3d 994 (9th Cir. 2001).................................................................................19, 21

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Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc. 109 F.3d 1394 (9th Cir. 1997)...........................................................................2, 11, 12 Elvis Presley Enters. v. Passport Video 349 F.3d 622 (9th Cir. 2003).........................................................................................3 Fisher v. Dees 794 F.2d 432 (9th Cir. 1986).......................................................................................12 Florida Bar v. Went For It, Inc. 515 U.S. 618 (1995) ......................................................................................................9 Harper & Row, Publishers, Inc. v. Nation Enterprises 471 U.S. 539 (1985) ............................................................................................3, 9, 15 Hoffman v. Capital Cities/ABC, Inc. 255 F.3d 1180 (9th Cir. 2001).....................................................................................19 Kamar Int'l, Inc. v. Russ Berrie & Co. 752 F.2d 1326 (9th Cir. 1984).....................................................................................15 Keep Thomson Governor Comm. v. Citizens for Gallen Comm. 457 F. Supp. 957 (D.N.H. 1978) ...................................................................................9 Kournikova v. General Media Communications, Inc. No. CV 02-3747, 2002 U.S. Dist. LEXIS 25810 (C.D. Cal. Aug. 9, 2002)...............19 MasterCard Int'l Inc. v. Nader 2000 Primary Comm., Inc. No. 00 Civ. 6068, 2004 U.S. Dist. LEXIS 3644 (S.D.N.Y. Mar. 8, 2004) ..................9 Mattel Inc. v. Walking Mountain Prods. 353 F.3d 792 (9th Cir. 2003).................................................................................4, 5, 6 Microsoft Corp. v. E&M Internet Bookstore, Inc. No. C 06-06707, 2008 U.S. Dist. LEXIS 4381 (N.D. Cal. Jan. 22, 2008) .................15 Microsoft Corp. v. Evans No. 1:06-cv-01745, 2007 U.S. Dist. LEXIS 77088 (E.D. Cal. Oct. 17, 2007) ..........18 Microsoft Corp. v. Marturano No. 1:06cv1747, 2009 U.S. Dist. LEXIS 44450 (E.D. Cal. May 27, 2009)...............15 Nelson v. Pima Cmty. Coll. 83 F.3d 1075 (9th Cir. 1996).........................................................................................2
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Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc. 166 F.3d 65 (2d Cir. 1999)............................................................................................3 Peer Int'l Corp. v. Pausa Records, Inc. 909 F.2d 1332 (9th Cir. 1990)...............................................................................15, 16 Princeton University Press v. Michigan Document Services, Inc. 99 F.3d 1381 (6th Cir. 1996).................................................................................16, 17 Qualitex Co. v. Jacobson Prods. Co. 514 U.S. 159 (1995) ....................................................................................................18 Rivera v. Bio Engineered Supplements & Nutrition, Inc. No. SACV07-1306, 2008 U.S. Dist. LEXIS 95083 (C.D. Cal. Nov. 13, 2008)...........4 Salinger v. Colting No. 09-2878, 2010 U.S. App. LEXIS 8956 (2d Cir. Apr. 30, 2010)........................2, 5 Salinger v. Random House, Inc. 811 F.2d 90 (2d Cir. 1987)..........................................................................................15 Solano v. Playgirl, Inc. 292 F.3d 1078 (9th Cir. 2002).....................................................................................19 Thane Int'l, Inc. v. Trek Bicycle Corp. 305 F.3d 894 (9th Cir. 2002).......................................................................................25 Waits v. Frito-Lay, Inc. 978 F.2d 1093 (9th Cir. 1992).........................................................................17, 18, 20 Weissmann v. Freeman 868 F.2d 1313 (2d Cir. 1989)........................................................................................9 White v. Samsung Elecs. Am., Inc. 971 F.2d 1395 (9th Cir. 1992).....................................................................................17 Worldwide Church of God v. Philadelphia Church of God, Inc. 227 F.3d 1110 (9th Cir. 2000)...........................................................................9, 14, 15 Yeager v. Cingular Wireless LLC No. 2:07-cv-02517, 2009 U.S. Dist. LEXIS 113313 (E.D. Cal. Dec. 7, 2009)..................................................................................12, 19, 21

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STATUTES AND RULES 17 U.S.C. § 107(4)......................................................................................................12, 15 Fed. R. Civ. P 26(a)(2)(B)(i) ......................................................................................23 n.8 Fed. R. Evid. 702......................................................................................................4, 5, 13

OTHER AUTHORITIES 5 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 28:15, § 32:173.50 & § 32:174 (4th ed. 2010)............................21, 22

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INTRODUCTION This is not a case about politics, as much as Defendants would have this Court believe otherwise. Plaintiffs do not dispute that Defendants are entitled to express their political views in any lawful manner that they choose. Rather, this is a case about the rights of creators, under the law, to preserve the integrity and value of the intellectual property they conceive. Defendants have appropriated Plaintiffs' copyrighted songs in a manner that finds no possible justification in the law. Plaintiffs urge this Court to protect their valuable works ­ and livelihoods ­ against such flagrant takings.1 I. DEFENDANTS CANNOT PREVAIL ON THEIR FAIR USE DEFENSE Fair use is an affirmative defense, so Defendants bear the burden of presenting evidence to establish the validity of their claim. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 590 (1994). Defendants have failed to do so. A. The First Fair Use Factor Overwhelmingly Favors Plaintiffs In Plaintiffs' opening brief and opposition to Defendants' cross-motion for summary judgment ("Pls. Op."), Plaintiffs have demonstrated that Defendants' Hope and Tax Videos neither comment on, nor criticize, Plaintiffs' works, as required under Campbell. Plaintiffs have further shown why Defendants' copying cannot be considered "transformative" under the law. And Plaintiffs have established that Defendants' assertions that they intended to comment on Plaintiffs' works, or Plaintiffs, are demonstrably false, lack evidentiary support, or both. Contrary to Defendants' hollow claim that Plaintiffs have "nothing admissible," Plaintiffs have put forth abundant evidence to show that Defendants' fair use claim is unfounded. This includes, inter alia, the videos themselves, as compared to Plaintiffs' original songs; Defendants' own characterizations of the videos; the report of Dr. Mark As the parties' motions for summary judgment essentially mirror one another, Plaintiffs respectfully request that this Court consider the totality of arguments and evidence presented by Plaintiffs in support of Plaintiffs' motion and in response to Defendants' cross-motion in ruling on each motion. Plaintiffs note that Defendants have made a similar request. (See Defendants' opposition brief ("Defs. Op.") at 1.)
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Rose, Plaintiffs' literary expert; and the report of Dr. Lawrence Ferrara, Plaintiffs' musicologist. (See Defs. Op. at 7.) Against this substantial record, Defendants must come forward with genuine evidence, not conclusory or specious testimony, to defeat summary judgment. Nelson v. Pima Cmty. Coll., 83 F.3d 1075, 1081-82 (9th Cir. 1996). But self-serving statements and flawed arguments are all Defendants have to offer. 1. Defendants Were Not Targeting Plaintiffs or Their Works Defendant complain that Plaintiffs "spill much ink" on the fact that Defendants invented their parody excuse. (Defs. Op. at 1.) It is clear from the record, however, and significant, that Defendants' intent was not to parody Plaintiffs, but to promote DeVore. Defendants' opposition itself is telling: "If the parodies generated attention, more people would come to know and understand DeVore's political positions." (Defs. Op. at 2 (emphasis added).) Defendants had their own agenda ­ it was not to spread insight into Plaintiffs' works. Defendants' suggestion that in using the word "parody" DeVore's intent was to target Plaintiffs' songs or Plaintiffs ­ rather than something else ­ is belied by the series of admissions set forth in Plaintiffs' opposition, which unequivocally demonstrate that Defendants' videos were aimed at Obama and Boxer, not Plaintiffs or their songs. (See Pls. Op. at 2-3.) Notably, in the only document cited by Defendants to defend their position, DeVore refers to his lyrics as "Obama parody lyrics set to Don Henley's `Boys of Summer.'" Defendants cannot cite an example more helpful to their cause because there is none. (See Defs. Op. at 2; see also Ch. Decl., Ex. 22 (emphasis added).) In sum, Defendants' multiple admissions that their lyrics and videos were aimed at Obama and Boxer, rather than Plaintiffs' songs, weigh significantly against a finding of fair use. See Salinger v. Colting, No. 09-2878, 2010 U.S. App. LEXIS 8956, at *39-40 (2d Cir. Apr. 30, 2010) (defendants unlikely to prevail on fair use defense where their claim of critical purpose is contradicted by earlier statements); Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1403 (9th Cir. 1997) (rejecting defendants' post hoc claim of parody as "`completely unconvincing'") (quoting district court).
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2.

First Amendment Interests Are Encompassed By the Fair Use Doctrine

Citing no legal authority, Defendants next suggest that their videos are entitled to some vague, additional "special protection" under the First Amendment. (Defs. Op. at 3.) As explained by Plaintiffs earlier, the protection of Defendants' First Amendment interests within the context of copyright law is not separate from the fair use doctrine ­ it is the fair use doctrine. In Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985), in which a publisher challenged the unauthorized publication of excerpts of President Gerald Ford's memoirs by the Nation magazine, the Supreme Court considered ­ and rejected ­ the argument that the First Amendment interest in reporting information of "substantial public import" should override the fair use analysis of copyright law. Id. at 556. The Court explained that "copyright's idea/expression dichotomy `[strikes] a definitional balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting an author's expression.'" Id. (quoting opinion below). The Court declined to sanction "what amounts to a public figure exception to copyright"; a speaker may borrow ideas freely, but the use of protected expression is subject to the balancing test of fair use. Id. at 560. Other courts, including the Ninth Circuit, are in complete agreement that First Amendment concerns in copyright cases "are subsumed within the fair use inquiry." Elvis Presley Enters. v. Passport Video, 349 F.3d 622, 626 (9th Cir. 2003); A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1028 (9th Cir. 2001) ("First Amendment concerns in copyright are allayed by the presence of the fair use doctrine."); Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166 F.3d 65, 74 (2d Cir. 1999) ("We have repeatedly rejected First Amendment challenges to injunctions from copyright infringement on the ground that First Amendment concerns are protected by and coextensive with the fair use doctrine.") (citing New Era Publ'ns. Int'l v. Henry Holt & Co., 873 F.2d 576, 584 (2d Cir. 1989) ("[T]he fair use doctrine encompasses all claims of

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first amendment in the copyright field.")). Defendants' use of Plaintiffs' songs in campaign ads is therefore appropriately analyzed under the factors of Section 107. 3. Dr. Rose's Expert Testimony Is Wholly Appropriate and Admissible Defendants devote several pages of their opposition to Dr. Mark Rose, a professor of English who has testified many times as an expert on literary issues arising in copyright cases. (Declaration of Mark Rose ("Rose Decl.") ¶ 2, Ex. 1 at 26-38.) Defendants' chief complaint with Rose is that he invoked the Supreme Court's definition of parody in Campbell in conducting his literary analysis of Plaintiffs' and Defendants' works. That is, Rose considered, from a literary perspective, whether Defendants' works commented on the style or substance of Plaintiffs' works. (Id. Decl. ¶¶ 4-7, Ex. 1 at 924.) He concluded they did not. (Id. ¶¶ 6-7, Ex. 1 at 25.) Defendants' argument is nonsensical. First, Rose's report would be of little value if he had failed to perform his literary analysis with reference to the core concerns of Campbell, and had instead adopted an inconsistent or irrelevant approach to the question of parody ­ a central flaw of the report submitted by Defendants' literary expert, as discussed in more detail below. Second, courts routinely accept testimony from literary and artistic experts on whether the use of an earlier work is parodic. Federal Rule of Evidence 702 permits expert testimony based on "specialized knowledge" if it will "assist the trier of fact to understand the evidence or to determine a fact in issue," and a court has "`broad latitude'" to admit expert testimony when it is reliable and relevant. Fed. R. Evid. 702; Rivera v. Bio Engineered Supplements & Nutrition, Inc., No. SACV07-1306, 2008 U.S. Dist. LEXIS 95083, at *41 (C.D. Cal. Nov. 13, 2008) (quoting Elsayed Mukhtar v. Cal. State Univ., Hayward, 299 F.3d 1053, 1064 (9th Cir. 2002)). The Campbell record itself includes expert testimony on the question of parody, and many other courts have considered the opinions of experts on this issue. See, e.g., Campbell, 510 U.S. at 589 n.19 (referencing expert affidavit); Acuff-Rose Music, Inc. v. Campbell, 972 F.2d 1429, 1433, 1442, 1445 (6th Cir. 1992) (reviewing expert testimony); Mattel Inc. v. Walking
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Mountain Prods., 353 F.3d 792, 797-98 (9th Cir. 2003) (noting several expert reports admitted by district court); Salinger v. Colting, 2010 U.S. App. LEXIS 8956, at *9 (describing testimony of "two literary experts" in support of fair use parody defense).2 Third, nowhere in his report does Rose purport to be opining on the ultimate legal question of parody or fair use. Indeed, as Defendants aptly observe, Rose expressly declined to testify on questions of law during in his deposition. (See Defs. Op. at 4 (quoting Rose's testimony that he is "`not a lawyer and . . . not qualified to provide you a fair use analysis'" and "`can't testify to that [what the Supreme Court meant in footnote 14 of its Campbell opinion . . .], I'm not a lawyer.'").) Nor does Rose opine on the question of parody from a musicological perspective, which is also outside his area of expertise. Rather, his report focuses on the literary aspects of Plaintiffs' and Defendants' songs ­ their respective structures, stylistic devices and literary interpretations ­ to reach the conclusion that Defendants' works do not mock or comment on Plaintiffs'. He also compares Defendants' lyrics to a widely recognized, classic parody, "Father William," further to illustrate, from a literary perspective, why Defendants' works lack parodic qualities. The type of analysis performed by Rose is clearly a product of "specialized knowledge" and a wholly appropriate subject of expert testimony. Fed. R. Evid. 702. In this regard, Defendants simply misread Mattel, Inc., 353 F.3d 792. Mattel considered an artist's photographs of Barbie, which depicted the doll in the midst of threatening home appliances and in sexually suggestive poses. Id. at 802. The court concluded that the photographs commented on Barbie in a parodic manner. Id. In reaching this conclusion, the court rejected survey evidence submitted by the plaintiff to show that not everyone perceived the parody. Id. at 801. The court explained that the Notably, Defendants do not challenge Rose's qualifications to perform such a literary analysis, for they are unassailable. (See Rose Decl. ¶ 2, Ex. 1 at 26-38; Defs. Op. at 5 ("Dr. Rose is, by all accounts, a gifted academic and a very bright man.").)
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issue of parody was not one of "majority opinion," but rather an issue of law to be decided by the court. Id. Despite Defendants' suggestion, the Mattel court did not hold that literary or other expert testimony is inappropriate in parody cases. To the contrary, several expert reports were admitted by the district court in the Mattel case, including a report offered by an art expert in support of the defendant's parody claim. Id. at 797-98. The Ninth Circuit did not reject this evidence or in any way suggest it had been improperly considered by the court below. See id. at 797-98, 801. The statement in Mattel cited by Defendants that there is "no case law in support of [the] contention that the parodic nature of a defendant's work should be assessed using surveys and opinion testimony" thus clearly refers to the lay opinion testimony elicited through the plaintiff's survey ­ not the expert testimony on which the court below relied. Further, while the Mattel court indicated that one must consider the "social context" (as well as the specific artistic context) of the defendant's parody, it did not suggest that any particular context or point of view should reign. Rather, the court employed a basic, cultural understanding of Barbie in interpreting defendant's photographs. See id. at 802 (recognizing Barbie as symbol of American girlhood associated with "beauty, wealth, and glamour"). This is exactly what Rose did here, considering Defendant's works not in a social vacuum, as Defendants suggest, but with an obvious understanding of American culture and appreciation of the social significance of figures such as President Obama, Barbara Boxer, Nancy Pelosi, Al Gore and Scrooge McDuck ­ not to mention the 2008 presidential election, Wall Street, global warming, Wayfarer sunglasses, "Deadhead" stickers and Cadillacs. (See generally Rose Decl., Ex. 1 at 12-24.) Far from ignoring "social context," as Defendants assert, Rose expressly relied upon it in presenting his literary analysis of the works at issue. (See Second Supplemental Declaration of Jacqueline Charlesworth ("Ch. 2d Supp. Decl."), Ex. C at 26-27 (Deposition of Mark Rose at 125:14-126:9) ("[S]ince I am a part of American

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culture, there are many things about this song that are simply obvious to me as a part of American culture . . . .").) Finally, Defendants complain that Rose "cannot tell us how Chuck DeVore's intended audience--or anybody else--would have understood the works." (Defs. Op. at 6.) Of course, the same can be said of Defendants. Moreover, Defendants' "audience" was not limited to DeVore supporters; the videos were available to Internet users around the world. (Plaintiffs' Statement of Uncontroverted Facts and Conclusions of Law ("St.") ¶¶ 79, 131.) Regardless, the Mattel court did not limit its analysis to Barbie critics or patrons of contemporary photography. Mattel nowhere suggests that a court should consider the views of only a limited audience or an "intended audience" ­ even if it were possible to do so ­ in evaluating the question of parody. 4. Dr. Zeilinger's Opinion Is Unreliable and Should Not Be Credited As part of their effort to jettison Rose, Defendants indicate a willingness to sacrifice their own literary expert, Dr. Martin Zeilinger. Defendants declare Zeilinger's report inadmissible and, though they submit it to the Court, decline otherwise to cite it in their brief. (See Defs. Op. at 6 n.1.) Defendants' concession is hardly surprising, for the unreliability of Zeilinger's report is evident from the face of the report itself, and further underscored by Zeilinger's deposition testimony. Zeilinger is a recent Ph.D. from the University of Toronto who has never previously been qualified as an expert witness. (Declaration of Martin Zeilinger ("Zeilinger Decl."), Ex. A at App. 1; Ch. 2d Supp. Decl., Ex. D at 33 (Deposition of Martin Zeilinger ("Zeilinger Dep.") at 15:17-25).) During his deposition, it became apparent that Zeilinger is a proponent of "appropriation art" ­ or, the use of "alreadyexisting source material and transferring this material into new work." (Ch. 2d Supp. Decl., Ex. D at 40-43 (Zeilinger Dep. at 74:9-77:2).) Consistent with this mission, Zeilinger believes that fair use principles (or "fair dealing," its Canadian counterpart) should be expanded to permit freer use of copyrighted material. (Id., Ex. D at 34-39, 44 (Zeilinger Dep. at 23:3-28:19, 83:3-21).)
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Unlike Rose, Zeilinger applies no fixed definition of parody in his report, let alone the definition espoused by the Supreme Court, which he does not even cite. (See generally Zeilinger Decl., Ex. A; see also Ch. 2d Supp. Decl., Ex. D at 45-48 (Zeilinger Dep. at 102:22-105:21) (Zeilinger "can't seem to find" Campbell's definition of parody in his report.).) Instead, he relies upon multiple, open-ended characterizations of parody drawn from a variety of sources. According to Zeilinger, a meaningful standard for parody is not even possible, for "parody has an overall destabilizing quality that makes it notoriously hard to pin down in any narrow and universalizing definitions." (Zeilinger Decl., Ex. A at 8.) Thus, Zeilinger variously describes parody as "`any cultural practice which provides a relatively polemical allusive imitation of another cultural production or practice'"; "`a mode, or . . . a range in the spectrum of possible intertextual relations'"; and as something that "instrumentalizes the works on which it draws for its own purposes . . . reworks the originals . . . and create[s] new meanings that arise out of the synthesis between the resulting text and the original." (See id., Ex. A at 11-15.) To summarize Zeilinger's view, any new text that "instrumentalizes" or "reworks" another qualifies as parody because the meaning of the old text is imported into the new ­ regardless of whether the new text comments on the old. (See Ch. 2d Supp. Decl., Ex. D at 49-51 (Zeilinger Dep. at 136:5-138:21) ("What I mean by that is that the meanings of the original works are carried on in the reworking. They are implied in the reworking.").) Under this expansive definition, Zeilinger was comfortable opining that Defendants' works were parodies simply because they appropriated Plaintiffs' songs. (Zeilinger Decl., Ex. A at 37 ("[P]arody must be understood not simply as a process in which the parodist mocks the author . . . , but rather as a process in which the parodist emulates an authorial voice through a variety of techniques, including citation, imitation and allusion ­ something that Mr. DeVore's songs clearly do . . . .").) Of course, when one text copies another largely verbatim ­ as Defendants' do here ­ it is hardly remarkable that meaning from the original text is "carried on" in the new. The law does not call this parody, however. It calls it infringement.
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5.

Defendants Profited From Their Use of Plaintiffs' Songs

Defendants continue to urge that their videos should be considered noncommercial for purposes of fair use, even though their use of Plaintiffs' works was, by Defendants' own admission, a substitute for paid political advertising. (Defs. Op. at 9-10; see also St. ¶ 37.) Evidently, they still fail to grasp the governing principle of Harper & Row, that the commercial/nonprofit distinction of Section 107 does not turn simply on monetary gain or how the copying is labeled. Rather, the analysis also considers whether a defendant benefited from the exploitation in nonmonetary ways ­ including, as here, by attracting recognition, supporters and donations. See Harper & Row, 471 U.S. at 562 (crux of the profit/non-profit distinction is "whether the user stands to profit from exploitation of the copyrighted material without paying the customary price"); Weissmann v. Freeman, 868 F.2d 1313, 1324 (2d Cir. 1989) (inquiry is not "dollar dominated"); Worldwide Church of God v. Philadelphia Church of God, Inc., 227 F.3d 1110, 1117 (9th Cir. 2000) (monetary gain not the sole criterion). As demonstrated in Plaintiffs' earlier briefs, news reporting, academic use and religious activities ­ all of which claim entitlement under the First Amendment ­ are found to constitute for-profit uses where, as here, the user stands to profit. See, e.g., Harper & Row, 471 U.S. at 562; Worldwide Church, 227 F.3d at 1115-16. Defendants' continued reliance on MasterCard Int'l Inc. v. Nader 2000 Primary Comm., Inc., No. 00 Civ. 6068, 2004 U.S. Dist. LEXIS 3644 (S.D.N.Y. Mar. 8, 2004) and Keep Thomson Governor Comm. v. Citizens for Gallen Comm., 457 F. Supp. 957 (D.N.H. 1978), is misplaced, for these cases do not follow Harper & Row. The third case cited by Defendants, Florida Bar v. Went For It, Inc., 515 U.S. 618 (1995), concerns attorney advertising, not copyright, and is simply beside the point. 6. Defendants' Attempt to Rely on an Unauthenticated Music Video Not in Evidence Is Improper and Should Be Ignored Although not referenced in their brief itself, Defendants, in an eleventh-hour ploy, invite the Court to consider an additional, unauthenticated music video not in evidence.
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In a supplemental declaration, Defendants' counsel, Christopher Arledge, provides an Internet link to what he represents as "Henley's music video for `All She Wants to Do Is Dance,'" and ­ acting as his own fact and expert witness ­ proceeds to offer a "reasonable interpretation" of that video. (Supplemental Declaration of Christopher W. Arledge ("Arledge Supp. Decl.") ¶ 3.) Arledge opines that the "allegedly unknown location" in the video is "actually a location in Latin America," and that "the uniforms worn by soldiers in the video are consistent with the uniforms used by the Nicaraguan Contras." (Id.) Thus, concludes Arledge, the video is "a criticism of American foreign policy and the apathy of the American people to that policy." (Id.) Despite Plaintiffs' requests for "[a]ll documents . . . upon which [Defendants] intend to rely to support the affirmative defenses" and "[a]ll documents concerning the allegations . . . that `[Plaintiffs' claims] are barred by the doctrine of copyright fair use,'" the video referenced by Arledge was never identified or produced by Defendants during discovery, or authenticated by anyone. (Ch. 2d Supp. Decl., Ex. F at 64-65 (request nos. 43, 51).) Although Arledge calls it "Henley's video," he provides no basis for the assumption that Henley was responsible for the conception or production of the video, rather than, say, the record label that released it. Plaintiffs had no opportunity to review the video with DeVore, Hart (or Arledge) during discovery. Plaintiffs would have been interested to know, for example, why DeVore (and Arledge) believe that the brown uniforms depicted in the video "are consistent" with Nicaraguan Contra uniforms, when Plaintiffs' cursory research suggests that Nicaraguan Contras wore green camouflage. As demonstrated in Plaintiffs' concurrently filed objections, Defendants' latest tactic is outside the bounds of proper litigation for several reasons.3 But even if the video, and Defendants' unfounded assertions about it, were admissible, it gets them nowhere. Kortchmar, the author of Dance ­ speaking, unlike Defendants, from personal Plaintiffs reserve their rights concerning Arledge's apparent desire to act as a witness in this case.
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knowledge ­ has explained that he did not write the song as a comment on Central America, or as a criticism of the United States. (Kortchmar Decl. ¶ 7; Ch. 2d Supp. Decl., Ex. B at 12-14, 19-20 (Kortchmar Dep. at 57:9-19, 71:16-72:20, 140:14-141:5).) But even more to the point, Defendants' Tax Video is addressed to Barbara Boxer's taxation policies. It does not speak to Latin America, Nicaraguan Contras or U.S. foreign policy. It does not reference, let alone spoof, the "All She Wants to Do Is Dance" video. There is no evidence in the record to establish that viewers of the Tax Video are familiar with, or in any way influenced by, the "All She Wants to Do Is Dance" video. Finally, even if Defendants' statements about this inadmissible video could be credited, that another video incorporating Dance includes political subject matter in no way addresses whether the Tax Video comments on the style or substance of Dance. B. Plaintiffs' Works Are at the Core of Copyright Protection While not a dispositive factor, the fact that Plaintiffs' works are highly creative and at the "core" of copyright protection "tilts the scale against fair use." Campbell, 510 U.S. at 586; Dr. Seuss, 109 F.3d at 1402. C. Defendants' Takings Are Excessive and Unprecedented To Defendants' question as to why Plaintiffs retained Dr. Ferrara, a musicologist, to assess Defendants' musical copying, the answer is simply that Ferrara's analysis measures, in objective terms, the flagrancy of Defendants' takings. (See Defs. Op. at 9.) Ferrara shows that with respect to both Boys of Summer and Dance, Defendants copied virtually the entirety of Plaintiffs' music and melodies, and the majority of the lyrics. (Ferrara Decl. ¶¶ 6-7, Ex. 1 at 6-7, 12-15, 20.) Defendants' excuse for appropriating virtually the entirety of Plaintiffs' copyrighted songs amounts to nothing more than a bald assertion that they did it because they wanted to. As demonstrated in Plaintiffs' opposition, such excess finds no support in the law. Indeed, even if Defendants had invoked Plaintiffs' works for a legitimate parodic purpose, their use of Plaintiffs' songs far exceeds what prior decisions have considered fair. See, e.g., Campbell, 510 U.S. at
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589 (remanding for further consideration of less extensive musical takings than Defendants' here); Fisher v. Dees, 794 F.2d 432, 434, 439 (9th Cir. 1986) (challenged use was only 29 seconds of defendant's 40-minute album). D. Defendants' Uses Are Harmful to Plaintiffs' Works The burden is on Defendants to demonstrate that their unauthorized uses of Plaintiffs' songs would not be harmful to the value of, or market for, Plaintiffs' copyrighted works, if those uses were to become widespread. Campbell, 510 at 590; Dr. Seuss, 109 F.3d at 1403; 17 U.S.C. § 107(4) (court must consider "effect of the use upon the potential market for or value of the copyrighted work"). Defendants cannot satisfy their obligation merely by offering statements that there is no market harm, but instead must bring forth affirmative evidence that Plaintiffs' works will not be adversely impacted. Dr. Seuss, 109 F.3d at 1403 (mere uncontroverted submissions do not suffice); Columbia Pictures Indus., Inc. v. Miramax Films Corp., 11 F. Supp. 2d 1179, 1189 (C.D. Cal. 1998) (rejecting fair use where defendant failed to provide "affirmative evidence" concerning impact on "relevant markets"). Defendants have presented no such evidence. Thus, they could not expect to prevail on this factor even if Plaintiffs failed to make any showing at all as to the adverse impact of Defendants' takings. Even so, Plaintiffs have not stood idly by. Rather, Plaintiffs have presented substantial evidence of market harm should Defendants' uses be permitted to continue. Plaintiffs' licensing expert, Jon Albert, provided testimony about the impact of Defendants' appropriations. Albert is an independent consultant with over 30 years of experience licensing popular music and celebrity talent for promotional purposes. (Declaration of Jon Albert ("Albert Decl.") ¶ 2, Ex. 1 at 6, 14.) He regularly seeks license fee quotes, typically 700 to 800 per year, and negotiates contracts for such uses. (Id.) He has served as an expert witness for both plaintiffs and defendants, and his testimony has been relied upon by courts. (See Albert Decl., Ex. 1 at 15); see also, e.g., Yeager v. Cingular Wireless LLC, No. 2:07-cv-02517, 2009 U.S. Dist. LEXIS 113313, at *25 (E.D. Cal. Dec. 7, 2009) (citing Albert's testimony).
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Plaintiffs' songs have considerable value in derivative licensing markets, in addition to their value as originally recorded. (See Declaration of Lisa Thomas ("Thomas Decl.") ¶¶ 5-6, 8; Albert Decl. ¶¶ 16-17, Ex. 1 at 8-12.) Such secondary markets include movies, television, music videos, commercials (including commercials using modified lyrics). (See Thomas Decl. ¶¶ 6, 8; Albert Decl., Ex. 1 at 6-10; St. ¶ 27.) With respect to promotional uses, Albert has explained that advertisers are selective in their use of music in advertising campaigns. (Albert Decl. ¶¶ 8-10, Ex. 1 at 12.) They often investigate, typically through Internet searches, how an artist is perceived by the public, including the involvement of the artist and the artist's music in other advertising or endorsements. (Id. ¶ 8.) Advertisers and other licensees avoid songs that are already associated with other products or causes, especially ones that are politically polarizing. (Id. ¶¶ 9-10, Ex. 1 at 12.) Accordingly, Albert concluded that Defendants' uses decrease the attractiveness of, and harm the market for, Plaintiffs' songs. (Id. ¶¶ 10-12, Ex. 1 at 12.) Albert further opined that Defendants' uses would threaten the market for Plaintiffs' original recordings, as Plaintiffs' fans might be alienated by the political association. (Id. ¶ 11, Ex. 1 at 12.) In light of this, it is simply baffling that Defendants claim that "Plaintiffs' [sic] offer no evidence that Defendants' videos have usurped the market for the songs in question, and there is no reasonable basis for concluding that they could." (Defs. Br. at 11.) Albert has clearly demonstrated that they would. Defendants' attempt to dismiss Albert's conclusion as "speculation" is misguided ­ and nothing more than a protest that Albert has offered an opinion concerning the injury to Plaintiffs' works, which he clearly is entitled to do, based on his specialized knowledge and experience. See Fed. R. Evid. 702. Defendants also assert (in italics) that "Henley refuses to license his songs." (Defs. Op. at 11.) This is simply false. Licensing documents produced to Defendants demonstrate that Henley approves the licensing of his songs for secondary purposes. (See Henley Decl. ¶ 17; Ch. Decl. Ex. 52.) Henley employs a licensing representative,
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Lisa Thomas, to handle the hundreds of requests for his songs each year. (Thomas Decl. ¶ 5.) Thomas works directly under Henley's supervision, consulting with Henley to respond to individual requests. (Id. ¶ 3.) Henley has agreed to the use of his songs in feature films, television shows, film trailers, television promotional spots, Internet uses and music videos, among other uses. (Id. ¶ 6; St. ¶ 27.) Although Henley does not actively seek to license his songs for commercials, his songs are sought out for this purpose, and he has instructed Thomas to refer such requests to him for his consideration (and did agree to a commercial use in Japan). (Henley Decl. ¶ 18; Thomas Decl. ¶ 8.) Defendants also mischaracterize the views of Kortchmar and Campbell concerning the licensing of their songs. Kortchmar is "open to all of [his songs] being licensed." (Ch. 2d Supp. Decl., Ex. B at 15, 17-18 (Kortchmar Dep. at 110:7-10, 117:17-118:14).)4 Campbell did not speak to the extent his works have been licensed for ancillary uses at his deposition, because such licensing his handled by his management. (Campbell Decl. ¶ 9; Ch. 2d Supp. Decl., Ex. A at 6-7 (Campbell Dep. 42:19-43:7).)5 Brushing aside the inconvenient fact that Plaintiffs do in fact permit the use of their songs for derivative uses, Defendants assert that Plaintiffs' supposed refusal to license means that no potential market for their works can be considered. Defendants simply ignore the law on this point. Whether Plaintiffs currently license their songs is not determinative of the question of market harm. Because the fourth factor considers the potential market for Plaintiffs' works, courts have soundly rejected the very argument Defendants make here. See Worldwide Church, 227 F.3d at 1119 (relevant Kortchmar did not testify that he "would not license a [Henley-recorded] song without Henley's permission," as Defendants contend (Defs. Op. at 11); his actual testimony was that, because Henley is a friend, he would "very likely" call Henley to "pay him the respect of letting him know what was happening with a song he is identified with." (Ch. 2d Supp. Decl., Ex. B at 16 (Kortchmar Dep. at 111:5-14.).) Defendants also misconstrue a statement made by Campbell at his deposition by quoting only half of the sentence. (Defs. Op. at 11 ("`I don't want the song [Boys of Summer] used for anything . . . .'" (quoting Campbell).) Campbell's complete statement was, "I don't want the song used for anything, especially without my permission." (Ch. 2d Supp. Decl., Ex. A at 8 (Campbell Dep. at 47:3-5).)
5 4

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consideration is not current licensing activity, but "potential market"); Salinger v. Random House, Inc., 811 F.2d 90, 99 (2d Cir. 1987) (same) (citing 17 U.S.C. § 107(4)). The fact that a copyright owner is not currently exploiting a particular market does not preclude a finding of market harm. This is because the law respects a copyright owner's right not to speak, as well as the "right to change his mind." Harper & Row, 471 U.S. at 559; Castle Rock Entm't, Inc. v. Carol Publ'g Group, Inc., 150 F.3d 132, 145-46 (2d Cir. 1998); Worldwide Church, 227 F.3d at 1119; Salinger v. Random House, Inc., 811 F.2d at 99; see Napster, 239 F.3d at 1027 (copyright holder has right to curb development of a derivative market by refusing to license). II. DEFENDANTS' INFRINGEMENT WAS WILLFUL "[I]nfringement is willful under the Copyright Act if the defendant had knowledge that his conduct was infringing, or . . . acted with reckless disregard for the copyright holder's rights." Microsoft Corp. v. Marturano, No. 1:06cv1747, 2009 U.S. Dist. LEXIS 44450, at *13-14 (E.D. Cal. May 27, 2009); Microsoft Corp. v. E&M Internet Bookstore, Inc., No. C 06-06707, 2008 U.S. Dist. LEXIS 4381, at *7 (N.D. Cal. Jan. 22, 2008) (same). A continuation of infringing conduct after receiving notice of infringement "clearly demonstrate[s]" willfulness. Adobe Sys. Inc. v. Kern, No. C 09-1076, 2009 U.S. Dist. LEXIS 123566, at *20 (N.D. Cal. Nov. 24, 2009); Peer Int'l Corp. v. Pausa Records, Inc., 909 F.2d 1332, 1336 (9th Cir. 1990) (licensee's continuation of conduct after notice of license revocation found to be willful); Kamar Int'l, Inc. v. Russ Berrie & Co., 752 F.2d 1326, 1330 (9th Cir. 1984) (notice gave defendant "the option to change his conduct"); Chi-Boy Music v. Charlie Club, Inc., 930 F.2d 1224, 1227 (7th Cir. 1991) ("[E]vidence that notice had been accorded to the alleged infringer before the . . . infringement occurred is perhaps the most persuasive evidence of willfulness . . . ."). Where the relevant facts are not in dispute, willfulness is appropriately resolved on summary judgment. Peer Int'l, 909 F.2d at 1333, 1336. Here, as chronicled in Plaintiffs' earlier briefs, Defendants have not only admitted to ­ but gloated over ­ a course of conduct that amply supports a finding of willfulness.
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Defendants celebrated their receipt of Henley's notice of infringement, ensured that the video he had taken down from YouTube was available elsewhere, and welcomed the possibility of an injunction. (St. ¶¶ 77, 80, 82-88, 93, 99.) Notwithstanding the infringement notice, they proceeded to make and distribute a second video using Henley's work, and promised to "rifle through . . . Henley's cateloge [sic]" for other songs to take. (St. ¶¶ 98-100.) They made a calculated decision that the "earned media value" of a lawsuit would outweigh the burden to their campaign ­ hoping that the money "might come rolling in." (St. ¶¶ 86-87.) And they did all of this without retaining a lawyer to advise them as to whether they had a valid claim of fair use ­ blithely ignoring a friend's advice that it would be a "good idea" to consult an attorney. (St. ¶¶ 91, 109.) "To refute evidence of willful infringement, [the defendant] must not only establish its good faith belief in the innocence of its conduct, it must also show that it was reasonable in holding such a belief." Peer Int'l, 909 F.2d at 1336 (emphasis added). Especially after receiving Henley's notice regarding the Hope Video ­ and being advised to consult an attorney about the legality of their conduct ­ Defendants had no reasonable basis to believe in the "innocence" of their conduct. Far from holding a "reasonable belief" in their innocence, they openly acknowledged ­ and even hoped ­ that they would be enjoined. (St. ¶ 93.) Plaintiffs' copyrights, and the possibility of a federal lawsuit, did not matter to Defendants, for they saw greater benefit in continuing to infringe. There could hardly be a more compelling example of callous disregard for copyright holders' rights. Defendants' reliance on Princeton University Press v. Michigan Document Services, Inc., 99 F.3d 1381 (6th Cir. 1996), only highlights the culpability of their conduct. In Princeton University, the defendant studied the relevant law, and obtained an opinion from an attorney, before arriving at his conclusion that copying academic materials for student use constituted a fair use. Id. at 1384. On this record, the Sixth Circuit declined to find willfulness. Id. at 1392. Notably, the Sixth Circuit later reached
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the opposite conclusion in a case much closer to the one here, where a record company defendant received notices of infringement concerning a song, but made no "effort to compare the two songs [at issue] and evaluate whether the use of elements of [plaintiff's song] was actually `fair' . . . ." Bridgeport Music, Inc. v. UMG Recordings, Inc., 585 F.3d 267, 279 (6th Cir. 2009). The Bridgeport court specifically distinguished Princeton University based on the record company's failure to evaluate its fair use claim by "stud[ying] the fair-use doctrine and consult[ing] an attorney." Id. Thus, in contrast to the defendant in Princeton University, the record company "did not present any evidence to establish a basis for their claim of good faith . . . ." Id. It is Bridgeport, not Princeton University, that is the relevant precedent here. III. A. HENLEY IS ENTITLED TO SUMMARY JUDGMENT ON HIS LANHAM ACT CLAIM Defendants' Legal Arguments Lack Merit Defendants reiterate the same arguments concerning Henley's Lanham Act claim ­ in some cases for the third time ­ but they do not improve with repetition. There is no separate element of "distinctive attribute" required in celebrity cases under the Lanham Act. The use of "distinctive attribute" and "distinguishing characteristic" in the case law refers to the "symbol" or "device" that is used to invoke the celebrity. The Lanham Act is broadly worded, and broadly construed, so that not only names, faces, voices and physical appearance, but also robots, uniforms, photographs, distinctive sounds and "distorted song lyrics," have been held to constitute confusing devices. (See July 8, 2009 Order Denying Defendants' Motion to Dismiss, Docket No. 22, at 13); see also Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1106-07 (9th Cir. 1992); White v. Samsung Elecs. Am., Inc., 971 F.2d 1395, 1399-1401 (9th Cir. 1992); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204-05 (2d Cir. 1979); Butler v. Target Corp., 323 F. Supp. 2d 1052, 1058-59 (C.D. Cal. 2004). As the Supreme Court put it in construing the language of the Lanham Act: "Since human beings might use as a `symbol' or `device' almost anything at all that is capable of
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carrying meaning, this language, read literally, is not restrictive." Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995). Here, Defendants mimicked two famous recordings closely associated with Henley as the basis of promotional videos. Defendants used simulated musical performances with changed words ­ in "distinctive attribute" terms, they employed "distinctive sounds" and "distorted lyrics." Such simulated performances create confusion. Viewers of Defendants' videos featuring Henley's music think that Henley approved the use of his songs and falsely associate him with the videos. That Defendants' device is, indeed, confusing is borne out by Henley's survey evidence, which demonstrates that a substantial number of viewers of the videos interpret the use of Henley's music in just this way. Defendants' contention that Henley's Lanham Act claim would "fundamentally change copyright law" by barring the authorized use of a musical composition when that use falsely suggests approval or association fails to recognize that this is already the law. (See Defs. Op. at 15.) In Waits, although defendants were legally entitled to exploit the composition at issue (it had been written expressly for the commercial), the court concluded that defendants' use was confusing, and therefore wrong. See Waits, 978 F.2d at 1097, 1107-11. Confusion, not copyright infringement, was the gravamen of Waits. Defendants' discussion also misses the critical distinction that, unlike the hypothetical they pose, Defendants' uses were not authorized here. As Plaintiffs have previously demonstrated, it is well recognized that a Lanham Act claim may coexist with a claim of copyright infringement. See Browne v. McCain, 612 F. Supp. 2d 1125, 1128, 1131, 1133 (C.D. Cal. 2009) (use of copyrighted recording in political ad gives rise to both copyright and Lanham Act claims); Butler, 323 F. Supp. 2d at 1059 (Lanham Act claim based on "distortion" of copyrighted song permitted because it "differs from a copyright claim"); Microsoft Corp. v. Evans, No. 1:06-cv01745, 2007 U.S. Dist. LEXIS 77088, at *25 (E.D. Cal. Oct. 17, 2007) (single act can

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violate both Lanham Act and Copyright Act "because two separate wrongs have been committed"). It is time for Defendants' arguments to be laid to rest. Henley respectfully refers the Court to his earlier briefs for his response to the remainder of Defendants' arguments. B. Although Not Required, Plaintiffs Have Amply Demonstrated Actual Malice The actual malice standard does not apply in this case. Defendants are not media organizations and Defendants' uses are promotional, not noncommercial, in nature. Notably, in a recent case involving the unauthorized use of pilot Chuck Yeager's persona in a pamphlet about emergency preparedness, the court, distinguishing Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001), determined that the pamphlet ­ even though it did not "propose a commercial transaction, nor . . . offer for sale any specific products or services" ­ nonetheless constituted commercial speech because it was aimed at creating "positive associations" with the defendant. Yeager, 2009 U.S. Dist. LEXIS 113313, at *4, *14-17; subsequent proceeding, 2010 U.S. Dist. LEXIS 35954 (E.D. Cal. Mar. 12, 2010) (certifying appeal on question of commercial speech). There is another problem with Defendants' actual malice theory. Unlike in Hoffman, Kournikova v. General Media Communications, Inc., No. CV 02-3747, 2002 U.S. Dist. LEXIS 25810 (C.D. Cal. Aug. 9, 2002), or Solano v. Playgirl, Inc., 292 F.3d 1078 (9th Cir. 2002) ­ the cases relied upon by Defendants ­ Defendants' videos are not about Henley. They do not name, discuss or depict him. The Ninth Circuit has rejected the applicability of a First Amendment defense where there is only a "tenuous relationship" between the use of a plaintiff's identity and the publication at issue. Downing v. Abercrombie & Fitch, 265 F.3d 994, 1001-03 (9th Cir. 2001). In Downing, the defendant had published a catalog that included an article about surfing, which was illustrated by a photograph of the celebrated surfer plaintiffs; the court rejected the defendant's First Amendment defense to the plaintiffs' right of publicity claim because the photograph was not "in any way connect[ed]" with the content of the article. Id. The Downing court then proceeded to uphold the plaintiffs' Lanham Act claim without
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applying an actual malice standard, reversing the grant of summary judgment below. Id. Similarly, in Browne v. McCain, 611 F. Supp. 2d 1062 (C.D. Cal. 2009), another case involving both right of publicity and Lanham Act claims, the court rejected First Amendment challenges concerning the use of a Jackson Browne song in a campaign ad: "RNC has not shown how its use of the [song] itself is a matter of public interest. . . . [T]he evidence shows that the [c]ommercial did not comment on nor target the [song] nor Browne." Id. at 1067, 1071; see also Browne v. McCain, 612 F. Supp. 2d 1125, 1132-33 (C.D. Cal. 2009) (rejecting First Amendment challenge to Lanham Act claim). But even if actual malice were deemed to apply to Henley's claim, as shown in Plaintiffs' opposition, Henley has presented clear and convincing evidence to satisfy that standard. Curiously, counsel for Defendants now seeks to offer his own testimony that the disclaimer that was added to the Tax Video several months after this lawsuit was filed was to eliminate any possibility of Henley's being able to prove "that the video Defendants were running on the internet was causing consumer confusion . . . ." (Arledge Supp. Decl. ¶ 2.)6 But Arledge's testimony only helps Henley, not Defendants, because it corroborates the fact that Defendants were fully aware that their use of Henley's music could be confusing. C. The Sleekcraft Factors Uniformly Favor Henley As demonstrated in Plaintiffs' opening brief, each of the Sleekcraft factors favors Henley. Defendants fail to present evidence to establish the contrary. Based on language in Waits, Defendants question Plaintiffs' treatment of Henley's persona as his trademark, claiming he has no "identifiable `mark'." (Defs. Op. at 18.) But it is clear from Ninth Circuit case law that for purposes of the Sleekcraft analysis, the celebrity's persona is the relevant "mark": "[T]he term `mark' applies to the celebrity's Plaintiffs reserve their rights concerning both Arledge's acting as a witness and Defendants' untimely "advice of counsel" defense, of which Plaintiffs were never previously notified. In fact, Defendants specifically resisted Plaintiffs' attempts to explore the disclaimer with DeVore, asserting a claim of privilege. (Charlesworth Declaration Ex. 15 at 353 (Deposition of Charles DeVore 289:2-7).)
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persona, the `strength' of the mark refers to the level of recognition that the celebrity has among the segment of the public to whom the advertisement is directed . . . . " Downing, 265 F.3d at 1007 (emphasis added) (citing White, 971 F.2d 1400-01); 5 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION ("MCCARTHY ON TRADEMARKS") § 28:15, at 28-32 (4th ed. 2010) ("celebrity's persona" serves as the trademark under Ninth Circuit rule). Defendants do not dispute that Henley is a worldfamous songwriter, recording artist and performer. (Defendants' Response to Plaintiffs' Statement of Uncontroverted Facts ("Defs. Resp. to St.") ¶ 1); see also Defs. Op. at 1819 (Henley a "world-famous musician" with a "ubiquitous" presence).) Pursuant to the first Sleekcraft factor, Henley has clearly established a protectable mark in his persona. Defendants also attempt to argue, under the second factor, that Henley's "goods" are not in "proximity" to Defendants' "goods" ­ even though Defendants do not dispute that authorized videos featuring Henley's music are available on YouTube and elsewhere on the Internet ­ just as Defendants' videos were and would be, if they were permitted to be restored. (See Defs. Resp. to St. ¶ 27.) The concern of the second Sleekcraft factor in a case such as this is actually "relatedness of the goods." Yeager, 2009 U.S. Dist. LEXIS 13313, at *28. Defendants are distributing videos featuring Henley's music ­ the same goods as Henley. This clearly establishes relatedness in Henley's favor. The fifth Sleekcraft factor, too, favors Henley, since Defendants' videos are distributed through exactly the same channels. Additionally, Defendants do not dispute that their videos are distributed for free on the Internet, just as Henley's are. (Defs. Op. at 19 (Defendants' videos "are not and never have been for sale").) This fact demonstrates that the degree of care exercised by "purchasers" ­ i.e., viewers ­ of both Henley's and Defendants videos is undoubtedly low, again favoring Henley. Defendants' assertions that viewers will not have a mistaken impression of their "goods" vis-a-vis Henley's goes to the question of confusion, not "proximity" or "relatedness." (See Defs. Op. at 18.) Confusion is a separate concern addressed under the fourth factor, and in this case it is conclusively established by Henley's survey.
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D.

Defendants Offer No Legitimate Criticism of Poret's Survey Defendants take issue with the survey performed by Henley's expert, Mr. Hal

Poret. (Defs. Op. at 19.) Poret has created, supervised and implemented nearly 300 consumer surveys concerning consumer perception, opinion and behavior, over 150 of which have involved issues related to the Lanham Act. (Declaration of Hal Poret ("Poret Decl.") ¶ 2; Supplemental Declaration of Hal Poret ("Poret Supp. Decl.") ¶ 2.) Poret's survey design in this case is based on a highly regarded survey technique known as an "Eveready" survey. See 5 MCCARTHY ON TRADEMARKS § 32:174 (Eveready format is a "now-standard survey format"); § 32:173.50 (Eveready test as "gold standard"). When applied to a false endorsement claim, an Eveready survey asks survey respondents a series of open-ended questions designed to determine whether the respondents believe, without prompting, that the defendant's product (here, Defendants' videos) was approved by or affiliated with the plaintiff. (Poret Supp. Decl. ¶ 3.) Poret's survey tracked this format and consisted of three parts: screening questions, open-ended questions and a closed-ended question. (Id. ¶ 4.) The screening questions identified viewers of the videos who believed that Henley was the artist whose music was used. (Id.) This was necessary because, as Poret explained, "surveying individuals who do not understand the music to be Henley's would not reveal whether or not the videos are confusing or misleading." (Id.) The screening questions yielded 114 eligible respondents.7 Out of those 114 respondents, 23% answered in response to open-ended questioning that they believed that Henley endorsed the video(s) or gave authorization for his music to be used in the video(s). (Poret Decl. ¶ 7.) An additional 25% of the 114 respondents indicated in the closed-ended question that they believed Henley approved or authorized the use of his music in the videos. (Id.) Therefore, a total of 48% of the 114 respondents indicated in Because the screening question referencing Henley needed to be asked at the end of the survey ­ to avoid placing Henley in the minds of respondents up front ­ 572 qualified respondents actually completed the survey. (Poret Decl. ¶ 6, Ex. 1 at 9.)
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response to at least one survey question that they thought Henley endorsed the videos or authorized or approved the use of his music in the videos. (Id.) This led Poret to conclude "to a high degree of professional certainty that the use of Henley's music in the videos caused, and is likely to cause, viewers to mistakenly believe that Henley end