Wilson v. New Palace Casino, L.L.C. et al

Filing 54

ORDER granting Defendants' 46 Motion for Partial Summary Judgment. Signed by District Judge Halil S. Ozerden on 3/7/2013. (ENW)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF MISSISSIPPI
SOUTHERN DIVISION
MARTY WILSON
v.
NEW PALACE CASINO,
L.L.C., et al.

§
§
§
§
§
§

PLAINTIFF
Civil Action No. 1:11cv447-HSO-JMR
DEFENDANTS

MEMORANDUM OPINION AND ORDER GRANTING DEFENDANTS’
MOTION FOR PARTIAL SUMMARY JUDGMENT
THIS MATTER COMES BEFORE THE COURT on a Motion for Partial
Summary Judgment [46] filed on November 19, 2012, by Defendants New Palace
Casino, L.L.C., Wahoo’s Poolside Bar & Grill, and Keith Crosby. Plaintiff Marty
Wilson has filed a Response [50] in opposition to the Motion, and Defendants have
filed a Reply [52]. After due consideration of the record, the submissions on file, and
the relevant legal authorities, the Court finds that Defendants’ Motion for Partial
Summary Judgment should be granted.
I. BACKGROUND
This action stems from Defendants’ purported use of the depiction of a wahoo
fish extracted from a painting by Plaintiff Marty Wilson which is entitled Blue
Water Blitz. The parties agree that Defendants or a Defendant purchased the
original painting, but there is a dispute of fact regarding the terms of a purported
licensing agreement or agreements which ostensibly permitted Defendants to utilize
the artwork for commercial purposes. Plaintiff maintains that his wahoo fish, taken
from the Blue Water Blitz painting, was used without his authorization in

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promotional items at Wahoo’s Poolside Bar & Grill (“Wahoo’s”) at the Palace Casino
in Biloxi, Mississippi, including on menus and t-shirts.
Plaintiff filed his Complaint [1] in the United States District Court for the
Eastern District of Louisiana on August 23, 2011, naming New Palace Casino, L.L.C.
(“New Palace”), Wahoo’s, and Keith Crosby (collectively, “Defendants”) as
Defendants. He asserts claims for copyright infringement, unjust enrichment,
misappropriation, and violation of the Lanham Act, in particular 15 U.S.C. § 1125(a).
Compl. [1], at pp. 3–7. Plaintiff seeks damages, including an alternative request for
statutory damages for alleged copyright infringement, and attorney’s fees. Id. at p.
7. Defendants now request entry of partial summary judgment on Plaintiff’s claims
(1) to the extent he alleges violations of the rights of attribution or integrity under
the Copyright Act; (2) for statutory damages and attorney’s fees under the Copyright
Act; (3) for violation of the Lanham Act; and (4) for unjust enrichment or
misappropriation under state law. Defs.’ Mot. [46], at pp. 2–3.
II. DISCUSSION
A.

Summary Judgment Standard
Federal Rule of Civil Procedure 56(a) provides that summary judgment is

appropriate “if the movant shows that there is no genuine dispute as to any material
fact and the movant is entitled to judgment as a matter of law.” FED. R. CIV. P.
56(a). To rebut a properly supported motion for summary judgment, the opposing
party must show, with “significant probative evidence,” that there exists a genuine
issue of material fact. Hamilton v. Segue Software, Inc., 232 F.3d 473, 477 (5th Cir.

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2000). In deciding whether summary judgment is appropriate, the Court views facts
and inferences in the light most favorable to the nonmoving party. RSR Corp. v.
Int’l Ins. Co., 612 F.3d 851, 858 (5th Cir. 2010). However, if the evidence is merely
colorable, or is not significantly probative, summary judgment is appropriate.
Cutting Underwater Techs. USA, Inc. v. ENI U.S. Operating Co., 671 F.3d 512, 516
(5th Cir. 2012)(citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986)).
B.

Defendants’ Motion for Partial Summary Judgment
1. Attribution or Integrity Claims under the Copyright Act
Defendants argue that, to the extent Plaintiff asserts attribution or integrity

claims under the Visual Artists Rights Act of 1990 (“VARA”), 17 U.S.C. § 106A, such
claims should be dismissed. Defs.’ Mem. in Supp. of Their Mot. for Summ. J. [47], at
p. 4. They maintain that the undisputed facts establish that the wahoo fish
contained within the Blue Water Blitz painting, and the original painting itself, have
each been reproduced by Plaintiff in such numbers that neither qualifies as a “work
of visual art,” as that term is defined in 17 U.S.C. § 101. Id. at pp. 4–5. Plaintiff
therefore cannot assert the rights of attribution and integrity afforded authors of
“works of visual art” under § 106A, id., since “Congress sought only to protect a very
narrow scope of works,” Defs.’ Reply [52], at p. 3.
Plaintiff counters that the foundation of his claim under the Copyright Act is
“an original watercolor painting authored by [him], existing as a single copy . . . .”
Pl.’s Resp. [50], at pp. 4–5. He argues that the “copies” of Blue Water Blitz upon
which Defendants base their argument actually constituted “derivative works.” Id.

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at p. 5. Under this reasoning, Blue Water Blitz would still qualify as a “work of
visual art” under § 106A. Id.
Section 603 of VARA, 17 U.S.C. § 106A, affords the author of a work of visual
art the rights of attribution and integrity. “VARA amended the Copyright Act,
importing a limited version of the civil-law concept of the ‘moral rights of the artist’
into our intellectual-property law.” Kelley v. Chicago Park Dist., 635 F.3d 290, 291
(7th Cir. 2011). VARA’s objective is to protect
both the reputations of certain visual artists and the works of art they
create. It provides these artists with the rights of “attribution” and
“integrity.” The former ensures that artists are correctly identified with
the works of art they create, and that they are not identified with works
created by others. The latter allows artists to protect their works against
modifications and destructions that are prejudicial to their honor or
reputations.
These rights are analogous to those protected by Article 6bis of the Berne
Convention, which are commonly known as “moral rights.”
H.R. Rep. No. 101-514, 1990 WL 258818 (1990).
Section 106A reads, in relevant part, as follows:
(a)

Rights of attribution and integrity. Subject to section 107 and
independent of the exclusive rights provided in section 106, the
author of a work of visual art-(1)
shall have the right-(A)
to claim authorship of that work, and
(B)
to prevent the use of his or her name as the author of
any work of visual art which he or she did not create;
(2)
shall have the right to prevent the use of his or her name as
the author of the work of visual art in the event of a
distortion, mutilation, or other modification of the work
which would be prejudicial to his or her honor or reputation;
and
(3)
subject to the limitations set forth in section 113(d), shall
have the right-(A)
to prevent any intentional distortion, mutilation, or

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(b)
(c)

other modification of that work which would be
prejudicial to his or her honor or reputation, and any
intentional distortion, mutilation, or modification of
that work is a violation of that right, and
(B)
to prevent any destruction of a work of recognized
stature, and any intentional or grossly negligent
destruction of that work is a violation of that right.
Scope and exercise of rights. Only the author of a work of visual art
has the rights conferred by subsection (a) in that work, whether or
not the author is the copyright owner. . . .
Exceptions.
* * *
(3)
The rights described in paragraphs (1) and (2) of subsection
(a) shall not apply to any reproduction, depiction, portrayal,
or other use of a work in, upon, or in any connection with
any item described in subparagraph (A) or (B) of the
definition of “work of visual art” in section 101, and any such
reproduction, depiction, portrayal, or other use of a work is
not a destruction, distortion, mutilation, or other
modification described in paragraph (3) of subsection (a) . .
..

17 U.S.C. § 106A.
a.

Plaintiff Does Not Assert Viable VARA Claims as to the Original
Blue Water Blitz

The parties dispute whether either the Blue Water Blitz painting or the
wahoo fish extracted from it constitutes a “work of visual art” as that term is used in
§ 106A. A “work of visual art” is defined as
(1)

a painting, drawing, print, or sculpture, existing in a single
copy, [or] in a limited edition of 200 copies or fewer that are
signed and consecutively numbered by the author . . . .
A work of visual art does not include-(A)
(i)
any poster, map, globe, chart, technical drawing,
diagram, model, applied art, motion picture or other
audiovisual work, book, magazine, newspaper,
periodical, data base, electronic information service,
electronic publication, or similar publication;
(ii)
any merchandising item or advertising, promotional,
descriptive, covering, or packaging material or

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(B)
(C)

container;
(iii) any portion or part of any item described in clause (i)
or (ii);
any work made for hire; or
any work not subject to copyright protection under this title.

17 U.S.C. § 101.
Defendants argue that Blue Water Blitz is not “a painting, drawing, print, or
sculpture, existing in a single copy, [or] in a limited edition of 200 copies or fewer
that are signed and consecutively numbered by the author . . .,” 17 U.S.C. § 106A.
They maintain that both the Blue Water Blitz painting and the wahoo extracted
from it have been copied more than 200 times, such that neither qualifies as a “work
of visual art” under § 106A. Plaintiff responds that the works to which Defendants
refer are not “copies,” but instead comprise “derivative work[s],” under the Copyright
Act.
The Court need not resolve whether the original Blue Water Blitz itself
constitutes a “work of visual art” under VARA. As the United States Supreme Court
has explained, the “express right of attribution is carefully limited and focused: It
attaches only to specified ‘work[s] of visual art’ . . . .” Dastar Corp. v. Twentieth
Century Fox Film Corp., 539 U.S. 23, 34–35 (2003) (quoting 17 U.S.C. § 101).
Plaintiff does not allege that Defendants have incorrectly attributed the authorship
of the original Blue Water Blitz, or that they have modified or distorted the original
painting in any way. Thus, Plaintiff has not asserted a viable attribution or
integrity claim against Defendants with respect to the original Blue Water Blitz.1
1

One treatise has explained that the distinction in VARA between an artist’s original
painting and limited edition supervised copies and all other representations of the same

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b.

The Actual Images Defendants Allegedly Copied Did Not
Constitute “Work[s] of Visual Art”

Assuming without deciding that the original Blue Water Blitz qualifies as a
“work of visual art” under VARA, the Court is not persuaded that any rights of
attribution or integrity attached to the version of the wahoo that Defendants
allegedly actually copied. Plaintiff explained how the wahoo came to be “standing
alone by itself” when Defendants allegedly used it:
I have used that wahoo on other commercial applications, like the Department
of Marine Resources, who commissioned me to do a poster for species
identification for the, you know, Mississippi Gulf waters, and that wahoo is used
on that poster by itself.
* * *
And it’s also on my Web site. So really, me personally, you know, don’t believe
that he pulled it out of that original that was hanging on his wall under glass.
He pulled it from somewhere else and decided to use it with a full graphics
department at his fingertips at his casino.
Dep. of Martin Eric Wilson, at pp. 83–84, attached as Ex. “A” to Defs.’ Reply [52]
(emphasis added).

image
imparts an almost antipodal contrast between copyright and artists’ rights. The
former, being concerned with conceptual types, attaches widely and can thus be
characterized as volatile--an artist’s copyright can be violated in a city with
which she has no contact through such evanescent means as a radio broadcast,
performance of a play, or display on a cathode ray tube. By contrast, artists’
rights, being rooted to concrete objects, are forever fixed to limited points of
attachment, and thus can be characterized as tactile--an artist’s rights can be
violated in a city only when her protected artwork is physically transported
there, and the violation occurs always in propinquity to the protected object.
* * *
At the abstract (or perhaps fustian) level, traditional copyright law protects art;
by contrast, the Visual Artists Rights Act protects artifacts.
3-8D MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 8D.06[a][2]
(footnotes and citations omitted).

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Plaintiff then testified as follows:
Q.
A.
Q.
A.
Q.
A.
Q.
A.

So is it your testimony that this wahoo is not original with Blue
Water Blitz?
Well, I’m not saying that. It may be. It may be.
You’re just not sure.
I’ve used it by itself. I’ve used it by itself, and I think that’s how it
ended up getting by itself, if you see what I’m saying.
That it came from Blue Water Blitz.
I don’t think Keith Crosby Photoshopped the wahoo out of Blue
Water Blitz.
Do you know where he would have gotten it?
Well, it’s on the Internet and it was printed on those posters and it
was printed on those tiles. That’s what I’m saying. I’ve used it, but
because I’ve used it doesn’t give everybody permission to use it.

Id. at pp. 120–121.
According to Plaintiff, when he authorized Defendants to use Blue Water Blitz
on t-shirts for the Palace Casino Marina for one summer in around 2001 or 2002, he
might have provided the casino or the casino’s screen printer an electronic version of
Blue Water Blitz. Dep. of Martin Eric Wilson, at pp. 52–53, 55–56, 66, attached as
Ex. “B” to Defs.’ Mot. for Partial Summ. J. [46]; Dep. of Martin Eric Wilson, at p. 121,
attached as Ex. “A” to Defs.’ Reply [52].
VARA is more limited in scope than the Copyright Act. Its “definition of ‘work
of visual art’ is limited to a narrow subset of this broader universe of ‘pictorial,
graphic, and sculptural works’ that are otherwise eligible for copyright . . . .” Kelley,
635 F.3d at 299; see H.R. Rep. No. 101-514, 1990 WL 258818 (1990) (“The definition
of a work of visual art is a critical underpinning of the limited scope of the bill.”).
The definition of a “work of visual art” excludes a number of works which might
otherwise be copyrightable, including “any poster, map, globe, chart, technical

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drawing, diagram, model, applied art, motion picture or other audiovisual work,
book, magazine, newspaper, periodical, data base, electronic information service,
electronic publication, or similar publication.” 17 U.S.C. § 101; see also Kleinman v.
City of San Marcos, 597 F.3d 323, 329 (5th Cir. 2010); Mass. Museum of
Contemporary Art Found., Inc. v. Buchel, 593 F.3d 38, 48 (1st Cir. 2010). Thus, “only
a select few categories of art get the extra protection provided by the moral-rights
concept.” Kelley, 635 F.3d at 299 (citation omitted).
Plaintiff has identified in his testimony the sources from which he apparently
believes Defendants could have acquired the wahoo that appeared in Wahoo’s Bar &
Grill. However, none of these potential “source images” would constitute a “work of
visual art” as that term is used in VARA. Plaintiff’s attribution and integrity rights
under VARA could not be violated by Defendants’ use of such copied images of the
extracted wahoo, since “a ‘work of visual art’ can consist only of the artist’s original
‘painting’ and limited edition supervised copies, all other representations of the same
image being definitionally ineligible.” 3-8D MELVILLE B. NIMMER & DAVID NIMMER,
NIMMER ON COPYRIGHT § 8D.06[a][2].
The possible “source images” Plaintiff has identified would be ineligible for
protection under VARA because they are excluded from its definition of “work of
visual art.” Of the possible sources Plaintiff has identified from which Defendants
could have copied the wahoo, such as a poster of the wahoo, the internet, printed
tiles, and a digitized version of Blue Water Blitz, none would qualify as a “work of
visual art” under VARA’s definition. See 17 U.S.C. § 101 (excluding posters, applied

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art, electronic publication, and similar publications from definition of “work of visual
art”); see also 3-8D MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT §
8D.06[a][2]; Neeley v. NameMedia, Inc., No. 5:09cv5151-JLH (W.D. Ark. June 7,
2011) (interpreting § 106A(c)(3) to mean that the right of integrity does not apply to
copies of a plaintiff’s photographs of his artwork on the internet), aff’d, 463 F. App’x
604, 605 (8th Cir. 2012) (“dismissal of [plaintiff’s] 17 U.S.C. § 106A claims was
proper for the reasons stated by the district court in its June 7, 2011 order”). For
this reason, Plaintiff’s VARA claims cannot withstand judgment as a matter of law.
c.

Defendants’ Purported Use of the Artwork Fell Outside the Scope
of VARA

Even if the artwork Defendants allegedly copied constituted a “work of visual
art” under VARA, Plaintiff’s claims for attribution and integrity must nevertheless
be dismissed. Plaintiff alleges that the wahoo from Blue Water Blitz appears on the
signage, marketing, and advertisements at Wahoo’s, and on manufactured products
sold by Defendants, Compl. [1], at ¶ 15, and that Defendants used it “in connection
with their commercial sales and merchantable goods,” id. at ¶ 24. Plaintiff testified
that Defendants displayed the wahoo depicted in Blue Water Blitz at Wahoo’s pool
bar as its logo on plastic drinking cups, menus, signage, t-shirts worn by employees
and for sale, drink huggers, and advertisements. Dep. of Martin Eric Wilson, at pp.
68–69, attached as Ex. “B” to Defs.’ Mot. for Partial Summ. J. [46].
Section 106A(c)(3) provides that the rights of attribution and integrity “shall
not apply to any reproduction, depiction, portrayal, or other use of a work in, upon,
or in any connection with any item described in subparagraph (A) or (B) of the

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definition of ‘work of visual art’ in section 101 . . . .” 17 U.S.C. § 106A(c)(3).
Subparagraph (A) of § 101 includes “any merchandising item or advertising,
promotional, descriptive, covering, or packaging material or container . . .” as items
excluded from VARA’s reach. 17 U.S.C. § 101.
Each of Defendants’ alleged uses of the wahoo involved merchandising or
qualified as advertising or promotional materials as described in subparagraph (A) of
§ 101’s definition of “work of visual art.” The plain language of § 106A(c)(3) would
therefore seem to exclude these uses from VARA. See, e.g., Martin v. Walt Disney
Internet Group, No. 3:09CV1601-MMA-POR, 2010 WL 2634695, *5 (S.D. Cal. June
30, 2010) (“the plain language of Section 106A(c)(3) excludes Defendants’ actions
from VARA protection because Defendants reproduced and published Plaintiff’s
photograph in a magazine”); Berrios Nogueras v. Home Depot, 330 F. Supp. 2d 48, 51
(D.P.R. 2004) (“it is clear that VARA does not afford a right of action to plaintiff for
the unauthorized reproduction of his work upon the ‘posters’ or ‘shoppers’ i.e.
‘advertising or promotional material’ that were printed or published by defendants in
their stores”).
In sum, to the extent Plaintiff asserts attribution or integrity claims under
VARA, such claims cannot withstand judgment as a matter of law. The Court will
grant Defendants’ Motion to the extent it requests summary judgment on Plaintiff’s
claims for attribution and integrity under VARA.

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2. Statutory Damages and Attorney’s Fees under the Copyright Act
The Complaint seeks “[a]n award to plaintiff of the profits, gains and
advantages derived by the defendants as a result of willful copyright infringement in
addition to compensation for the damages sustained and/or an award of the
maximum statutory damages of $150,000.00 per infringement if so elected by
plaintiff,” and attorney’s fees. Compl. [1], at p. 7. Defendants assert that Plaintiff
cannot recover statutory damages or attorney’s fees for their alleged copyright
infringement. Defs.’ Mem. in Supp. of Their Mot. for Summ. J. [47], at pp. 5–6. They
maintain that, because any alleged infringement began prior to the date of the
work’s copyright registration, an award of statutory damages or attorney’s fees is not
available under 17 U.S.C. § 412. Id. Plaintiff responds that registration is not a
prerequisite since this is an action brought for a violation of the rights of the author
of a work of visual art. Pl.’s Resp. [50], at pp. 5–6.
The record reveals that Plaintiff created Blue Water Blitz sometime before or
during 2002. Certificate of Registration, at p. 1, attached as Ex. “A” to Defs.’ Mot. for
Partial Summ. J. [46] (listing year of completion as 2002); Dep. of Martin Eric
Wilson, at p. 119, attached as Ex. “A” to Defs.’ Reply [52] (“we’ve got a copyright
paper here saying 2002, but I think I painted that painting way before that and used
it”). The effective date of registration with the Register of Copyrights, however, was
October 7, 2010. Certificate of Registration, at p. 1, attached as Ex. “A” to Defs.’
Mot. for Partial Summ. J. [46].

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Plaintiff testified that he was approached by Defendants about using Blue
Water Blitz on t-shirts for the Palace Casino Marina around 2001 or 2002. Dep. of
Martin Eric Wilson, at pp. 52–53, attached as Ex. “B” to Defs.’ Mot. for Partial
Summ. J. [46]. He agreed to permit the use of the shirts for one summer. Id. at p.
66. Plaintiff claims that he authorized the use of Blue Water Blitz, without
lettering, and the words “Palace Casino Marina” on the shirts. Id. at pp. 55–56, 66.
According to Plaintiff, at the end of that summer, Defendant Crosby purchased the
original Blue Water Blitz, “with no copyrights attached.” Id. at p. 56. Plaintiff first
noticed the alleged copyright infringement the year Wahoo’s pool bar opened, which
he believed was prior to Hurricane Katrina, in either 2003 or 2004. Id., at pp. 68–70.
17 U.S.C. § 412 provides that
[i]n any action under this title, other than an action brought for a violation
of the rights of the author under section 106A(a), an action for
infringement of the copyright of a work that has been preregistered under
section 408(f) before the commencement of the infringement and that has
an effective date of registration not later than the earlier of 3 months after
the first publication of the work or 1 month after the copyright owner has
learned of the infringement, or an action instituted under section 411(c),
no award of statutory damages or of attorney’s fees, as provided by
sections 504 and 505, shall be made for-(1)
any infringement of copyright in an unpublished work
commenced before the effective date of its registration; or
(2)
any infringement of copyright commenced after first
publication of the work and before the effective date of its
registration, unless such registration is made within three
months after the first publication of the work.
17 U.S.C. § 412.
The Fifth Circuit has held that the text of § 412 is ambiguous with respect to
whether a plaintiff can recover statutory damages and attorney’s fees when a

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defendant infringes a copyrighted work both prior to and after its registration.
Mason v. Montgomery Data, Inc., 967 F.2d 135, 143 (5th Cir. 1992). The Fifth
Circuit ultimately concluded that “that a plaintiff may not recover an award of
statutory damages and attorney’s fees for infringements that commenced after
registration if the same defendant commenced an infringement of the same work
prior to registration.” Id. at 144. Because there is no dispute that Defendants’
alleged infringement of Blue Water Blitz commenced in either 2003 or 2004, prior to
its copyright registration in 2010, statutory damages and attorney’s fees are not
available to Plaintiff. See id.; see also 17 U.S.C. § 412.
Plaintiff does not seem to dispute that the date of registration would normally
preclude an award of statutory damages and attorney’s fees, as he does not address
this question in his Response. Rather, Plaintiff grounds his claim for statutory
damages and attorney’s fees on his VARA theory of recovery under § 106A. The
Court has already addressed this argument. Because the work that Defendants
allegedly copied did not qualify as a statutory “work of visual art,” so as to fall within
the ambit of VARA protection, the VARA exception in 17 U.S.C. § 412 upon which
Plaintiff relies is inapplicable. Defendants have demonstrated that there are no
genuine disputes of material fact and that they are entitled to judgment as a matter
of law on Plaintiff’s claims for statutory damages and attorney’s fees under the
Copyright Act. The Court will grant Defendants’ Motion for Partial Summary
Judgment to the extent it seeks dismissal of these claims.

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3. Violation of the Lanham Act
Plaintiff alleges that Defendants’ unauthorized use of Blue Water Blitz
violated the Lanham Act, in particular 15 U.S.C. § 1125(a). Compl. [1], at p. 6.
Defendants argue that Plaintiff cannot support a Lanham Act claim because he
cannot establish that his artwork constituted a legally protectable trademark. Defs.’
Mot. for Partial Summ. J. [47], at pp. 6–8. In response, Plaintiff posits that it does
not constitute “double recovery” to award damages for both copyright and trademark
infringement. Pl.’s Resp. [50], at p. 6. Defendants point out that this is not the basis
of their argument. Reply [52], at p. 6.
Plaintiff seems to argue that Defendants’ use of his artwork in their
marketing and advertising campaign, and in producing and selling merchandise,
violates section 43(a) of the Lanham Act, specifically 15 U.S.C. § 1125(a)(1)(A) and
(a)(1)(B). Pl.’s Resp. [50], at pp. 6–7. He contends that Defendants did so without
properly compensating him, and that their unauthorized use of his artwork is likely
to cause confusion among consumers as to his affiliation with, and endorsement of,
Defendants’ casino, bar, and grill. Id. at p. 7.
15 U.S.C. § 1125(a)(1) reads as follows:
(1)

Any person who, on or in connection with any goods or services, or
any container for goods, uses in commerce any word, term, name,
symbol, or device, or any combination thereof, or any false
designation of origin, false or misleading description of fact, or false
or misleading representation of fact, which-(A)
is likely to cause confusion, or to cause mistake, or to deceive
as to the affiliation, connection, or association of such person
with another person, or as to the origin, sponsorship, or
approval of his or her goods, services, or commercial
activities by another person, or

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(B)

in commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of his
or her or another person’s goods, services, or commercial
activities,
shall be liable in a civil action by any person who believes that he or she
is or is likely to be damaged by such act.
15 U.S.C. § 1125(a)(1).
To support a claim under the Lanham Act, a plaintiff must show two things:
(1) ownership in a legally protectable mark; and (2) infringement by demonstrating
likelihood of confusion. Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225,
235–36 (5th Cir. 2010) (citing Bd. of Supervisors for La. State Univ. Agric. and Mech.
College v. Smack Apparel Co., 550 F.3d 465, 474 (5th Cir. 2008)). The Fifth Circuit
has noted that section 45 of the Lanham Act defines “trademark” and “service mark”
separately, but it has explained that
the terms essentially include:
any word, name, symbol, or device, or any combination thereof ... used by
a person . . . to identify and distinguish his or her goods [or services] . . .
from those manufactured or sold [or provided] by others and to indicate
the source of the goods [or services], even if that source is unknown.
Amazing Spaces, 608 F.3d at 236 (quoting 15 U.S.C. § 1127).
Plaintiff has not identified a trademark or service mark that has been
infringed. Rather, he appears to take the position that Defendants violated the
Lanham Act by using his artwork to create the false perception of an endorsement by
him as a “well known professional maritime visual artist” of Defendants’ bar and
grill. Pl.’s Resp. [50], at p. 7. Plaintiff relies on two cases to support this argument.
Id. (citing Waits v. Frito-Lays, 978 F.2d 1093 (9th Cir. 1992); Midler v. Ford Motor
Co., 849 F.2d 460 (9th Cir. 1988)).

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Midler is clearly distinguishable because that case did not involve a
trademark claim under the Lanham Act. In Midler, an advertisement featured a
“sound alike” of singer Bette Midler performing one of her popular songs. Midler,
849 F.2d at 461. At issue was the protection of Midler’s distinctive voice, which was
“widely known and . . . deliberately imitated.” Id. at 463. The Ninth Circuit
considered California common law rights to a person’s name, voice, signature,
photograph, and likeness, and determined that the “sellers have appropriated what
is not theirs and have committed a tort in California.” Id. California tort law is not
applicable to Plaintiff’s Lanham Act claim in this case.
Waits was another voice misappropriation dispute involving singer Tom
Waits, a celebrity with a widely known, distinctive voice. In Waits, the plaintiff
raised a false endorsement claim under section 43(a) of the Lanham Act, as well as a
voice misappropriation claim under California law. Waits, 978 F.2d at 1098. The
Ninth Circuit referred to the claim for voice misappropriation as the “Midler tort,”
which it explained was a “species of violation of the ‘right of publicity,’ the right of a
person whose identity has commercial value–most often a celebrity–to control the
commercial use of that identity.” Id.
As for Waits’ Lanham Act claim, the Ninth Circuit concluded that it was
“premised on the theory that by using an imitation of his distinctive voice in an
admitted parody of a Tom Waits song, the defendants misrepresented his association
with and endorsement of [the product].” Id. at 1106. In reviewing this claim, the
Court was presented with a case of first impression as to whether a false

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endorsement claim was properly cognizable under section 43(a) of the Lanham Act.
Id. It “conclude[d] that false endorsement claims, including those premised on the
unauthorized imitation of an entertainer’s distinctive voice, are cognizable under
section 43(a).” Id. at 1107.2
Assuming without deciding that such a celebrity false endorsement claim
would be a recognized cause of action in the Fifth Circuit, there does not appear to be
any dispute that neither Plaintiff’s name nor his likeness was used in connection
with the wahoo on Defendants’ merchandise and advertising.3 Plaintiff’s theory is
apparently that he, or his artwork, has achieved a level of recognition such that the
wahoo extracted from Blue Water Blitz, when seen alone without his signature or
name, is so distinctive and widely recognized as his artwork that consumers would
likely mistakenly believe that he endorsed Defendants’ establishments. However,
Plaintiff has not presented any competent summary judgment evidence to

2

The parties have not directed the Court to any Fifth Circuit precedent on point. In
Waits, the Ninth Circuit seemed to recognize a celebrity’s persona or identity as his or her
own “mark” within the context of the Lanham Act. In determining whether there exists a
likelihood of confusion in celebrity endorsement cases under the Lanham Act, the Ninth
Circuit looked to factors including: (1) the level of recognition that the plaintiff has among
the segment of the society for whom the defendant’s product is intended, which is
equivalent to the strength of the “mark” or the strength of the celebrity’s persona; (2) the
relatedness of the fame or success of the plaintiff to the defendant’s product; (3) the
similarity of the likeness used by the defendant to the actual plaintiff; (4) evidence of actual
confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant’s
intent on selecting the plaintiff; and (8) likelihood of expansion of the product lines.
Downing v. Abercrombie & Fitch, 265 F.3d 994, 1007–08 (9th Cir. 2001). The Third Circuit
has also held that the language of section 43(a)(1) is broad enough to include other indicia
of identity, such as a person’s voice if the voice is a “distinctive mark.” Facenda v. N.F.L.
Films, Inc., 542 F.3d 1007, 1014 & 1018–20 (3rd Cir. 2008) (adopting a “slightly modified
version” of the Downing factors for a false endorsement claim).
3

The failure to attribute the wahoo painting to Plaintiff was the basis of his
attribution claim under VARA, which the Court has dismissed.

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demonstrate his identifiability with the wahoo alone, so as to establish the likelihood
of confusion as to his endorsement of Defendants’ establishments. See Better Bus.
Bureau of Metro. Houston, Inc. v. Med. Dirs., Inc., 681 F.2d 397, 400 (5th Cir. 1982)
(“Central to the finding of false representations in advertising violative of section
43(a) of the Lanham Act . . . is a determination that the challenged activities create a
‘likelihood of confusion’ in the consuming public . . . as to, inter alia, the product’s
endorsement by the plaintiff”) (citations omitted); see also Nat’l Bus. Forms &
Printing, Inc. v. Ford Motor Co., 671 F.3d 526, 532 (5th Cir. 2000) (holding that a
“‘likelihood of confusion’ means that confusion is not just possible, but probable”).
Plaintiff has not created a triable question of fact on the issue of whether he is as
identifiable by the wahoo as by any other indicia of identity previously recognized as
protectable, nor has he created a question of fact on whether Defendants’ use of the
wahoo created a likelihood of confusion among consumers as to his endorsement of
their businesses. See id.; Waits, 978 F.2d at 1102.
Plaintiff is unable to support his claim for “trademark infringement” because
he has not shown what protectable trademark or service mark has allegedly been
infringed. Amazing Spaces, 608 F.3d at 235–36. Nor has he presented sufficient
evidence to create a question of fact as to any false endorsement claim, assuming one
is cognizable in this Circuit. Without evidence of a protectable mark, or of his
identifiability with, or the distinctiveness of, the wahoo appearing by itself,
Plaintiff’s Lanham Act claims cannot withstand summary judgment.

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4. Unjust Enrichment or Misappropriation Claims under State Law
Plaintiff advances claims for “unjust enrichment” and “misappropriation”
under Mississippi law. Compl. [1], at pp. 5–6. Defendants maintain that these
claims are preempted by federal copyright law, as Plaintiff “does nothing more than
repackage its [sic] copyright claims in state, common-law terms.” Defs.’ Mem. in
Supp. of Their Mot. for Summ. J. [47], at p. 10. Plaintiff responds that his state law
claims arise under Mississippi Code § 75-24-5(1), Pl.’s Resp. [50], at p. 8, even though
he did not reference this statute in his Complaint [1]. Defendants counter that
Plaintiff has no private right of action under this statute. Defs.’ Reply [52], at p. 8.
Mississippi Code § 75-24-5(1) provides that
[u]nfair methods of competition affecting commerce and unfair or
deceptive trade practices in or affecting commerce are prohibited. Action
may be brought under Section 75-24-5(1) only under the provisions of
Section 75-24-9.
Miss. Code § 75-24-5(1). According to section 75-24-9,
[w]henever the Attorney General has reason to believe that any person is
using, has used, or is about to use any method, act or practice prohibited
by Section 75-24-5, and that proceedings would be in the public interest,
he may bring an action in the name of the state against such person to
restrain by temporary or permanent injunction the use of such method, act
or practice. The action shall be brought in the chancery or county court of
the county in which such person resides or has his principal place of
business, or, with consent of the parties, may be brought in the chancery
or county court of the county in which the State Capitol is located. The
said courts are authorized to issue temporary or permanent injunctions to
restrain and prevent violations of this chapter, and such injunctions shall
be issued without bond.
Miss. Code § 75-24-9.

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According to Mississippi Code § 75-24-15,
(1)

(2)

In addition to all other statutory and common law rights, remedies
and defenses, any person who purchases or leases goods or services
primarily for personal, family or household purposes and thereby
suffers any ascertainable loss of money or property, real or
personal, as a result of the use or employment by the seller, lessor,
manufacturer or producer of a method, act or practice prohibited by
Section 75-24-5 may bring an action at law in the court having
jurisdiction in the county in which the seller, lessor, manufacturer
or producer resides, or has his principal place of business or, where
the act or practice prohibited by Section 75-24-5 allegedly occurred,
to recover such loss of money or damages for the loss of such
property, or may assert, by way of setoff or counterclaim, the fact
of such loss in a proceeding against him for the recovery of the
purchase price or rental, or any portion thereof, of the goods or
services.
In any private action brought under this chapter, the plaintiff must
have first made a reasonable attempt to resolve any claim through
an informal dispute settlement program approved by the Attorney
General.

Miss. Code § 75-24-15(1)–(2) (emphasis added).
“[F]ailure to satisfy the prerequisite of an attempt at informal dispute resolution is
fatal to a MCPA claim.” Lockey v. CMRE Fin. Servs., Inc., No. 1:11CV70-LG-RHW,
2011 WL 2971085, *3 (S.D. Miss. July 20, 2011) (citing Cole v. Chevron USA, Inc.,
554 F. Supp. 2d 655, 668 (S.D. Miss. 2007)).
Defendants point out that Plaintiff was not a purchaser or lessee of goods and
has not attempted to resolve these claims through an informal dispute settlement
program approved by the Attorney General. Defs.’ Reply [52], at p. 8 (citing Miss.
Code § 75-24-15). Plaintiff has not submitted any evidence to the contrary. He has
not created a genuine dispute of material fact on this issue. Accordingly, Plaintiff
may not bring a private cause of action against Defendants under the MCPA, and his

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“unjust enrichment” and “misappropriation” claims, which he argues arise under
Mississippi Code § 75-24-5(1), cannot survive summary judgment.
III. CONCLUSION
For the foregoing reasons, the Court concludes that summary judgment is
appropriate on Plaintiff’s claims for attribution and integrity and for statutory
damages and attorney’s fees under the Copyright Act; on Plaintiff’s claims asserted
under the Lanham Act; and on Plaintiff’s “unjust enrichment” and
“misappropriation” claims under state law.
IT IS, THEREFORE, ORDERED AND ADJUDGED that, the Motion for
Partial Summary Judgment [46] filed by Defendants New Palace Casino, L.L.C.,
Wahoo’s Poolside Bar & Grill, and Keith Crosby, on November 19, 2012, is
GRANTED.
IT IS, FURTHER, ORDERED AND ADJUDGED that, Plaintiff Marty
Wilson’s claims for attribution and integrity and for statutory damages and
attorney’s fees under the Copyright Act; his claims asserted under the Lanham Act;
and his “unjust enrichment” and “misappropriation” claims under state law, are
DISMISSED WITH PREJUDICE. Plaintiff’s claim for copyright infringement will
proceed to trial.
SO ORDERED AND ADJUDGED, this the 7th day of March, 2013.

s/ Halil Suleyman Ozerden
HALIL SULEYMAN OZERDEN
UNITED STATES DISTRICT JUDGE

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