Fifty-Six Hope Road Music, Ltd. et al v. AVELA., Inc. et al

Filing 145

ORDER Granting in part and Denying in part 113 Motion for Summary Judgment. Denying 114 Motion for Summary Judgment. Pretrial order due 3/26/10. Trial set for 7/13/10 at 9:00am in 7C. Calendar Call set for 7/7/10 at 9:00am 7C. Signed by Judge Philip M. Pro on 2/25/10. (Copies have been distributed pursuant to the NEF - AXM)

Download PDF
1 2 3 4 UNITED STATES DISTRICT COURT 5 D IS T R IC T OF NEVADA 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 P re se n tly before the Court is Defendants' Motion for Summary Judgment (Doc. # 1 1 3 ), filed on November 30, 2009. Plaintiffs filed an Opposition (Doc. #127) on D e c e m b e r 18, 2009. Defendants filed a Reply (Doc. #133) on January 11, 2010. /// *** F IF T Y -S IX HOPE ROAD MUSIC, LTD.; ) Z IO N ROOTSWEAR, LLC; and ROBERT ) M A R L E Y FOUNDATION, LTD., ) ) P la in tif f s , ) ) v. ) ) A .V .E .L .A ., INC.; LEO VALENCIA; X ) O N E X MOVIE ARCHIVE, INC.; JEM ) S P O R T S W E A R ; and CENTRAL MILLS ) (F R E E Z E ), ) ) Defendants. ) ) ) ) A.V.E.L.A., INC. and LEO VALENCIA, ) ) C o u n te rc la im a n ts , ) ) v. ) ) F IF T Y -S IX HOPE ROAD MUSIC, LTD. ) a n d ZION ROOTSWEAR, LLC, ) ) C o u n te rd e f e n d a n ts . ) ) ) ) 2 :0 8 -C V -0 0 1 0 5 -P M P -G W F ORDER 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 A ls o before the Court is Plaintiffs' Motion for Summary Adjudication on P la in tif f s ' False Association Claim Under 15 U.S.C. § 1125(a) (Doc. #114), filed on N o v e m b e r 30, 2009. Defendants filed an Opposition (Doc. #126) on December 18, 2009. Plaintiffs filed a Reply (Doc. #134) and Response to Objections (Doc. #135) on January 11, 2010. I . BACKGROUND B o b Marley was a world-famous singer, songwriter, performer, and guitarist. (Pls.' Mot. Summ. J. (Doc. #114) ["Pls.' MSJ"], Decl. of Doreen Crujeiras ("Crujeiras D e c l." ) at 3.) He has sold millions of albums and has several well-known songs, including " I Shot the Sheriff," "No Woman, No Cry," and "One Love." (Id.) Bob Marley died in te s ta te in 1981. (Id. at 2.) Plaintiff Fifty-Six Hope Road Music, Ltd. ("Hope Road") is named after the lo c a tio n of Bob Marley's residence in Jamaica. (Id. at 4.) Hope Road is composed of and o w n e d by Bob Marley's children. (Id. at 5.) Hope Road owns U.S. Trademark Registration N o . 2,349,361 for "BOB MARLEY" in eleven classes of goods, including t-shirts. (Pls.' M S J , Decl. of Jill Pietrini ("Pietrini Decl.") at 2 & Ex. A.) Hope Road has applied for the tra d e m a rk "MARLEY" for clothing. (Pietrini Decl. at 2 & Ex. C.) Plaintiffs have re g is te re d for Marley's publicity rights in several states, including Nevada. (Pls.' Opp'n to D e f s .' Mot. Summ. J. (Doc. #127) ["Pls.' Opp'n"], Ex. K at 117.) In 1999, Hope Road granted Plaintiff Zion Rootswear, LLC ("Zion") an e x c lu s iv e world-wide license to design, manufacture, and sell t-shirts bearing Marley's im a g e , likeness, and other manifestations of his identity. (Crujeiras Decl. at 7.) Hope Road lic e n s e s the manufacture of many products bearing the Marley intellectual property, in c lu d in g hats, posters, calendars, key chains, and beach towels. (Crujeiras Decl. at 7 & E x s. I, J.) Plaintiffs market these items through websites, an eBay online store, catalogs, a n d at trade shows. (Crujeiras Decl. at 4 & Ex. D; Defs.' Opp'n to Pls.' Mot. Summ. J. 2 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 (D o c . #126) ["Defs.' Opp'n"], Conley Decl. at 2-3.) Hope Road authorizes Zion to use from three to five hundred different p h o to g ra p h s of Marley for use on t-shirts. (Defs.' Mot. Summ. J. (Doc. #113) ["Defs.' M S J " ], Ex. H.) Zion's 2009 catalog included t-shirts displaying Marley's image and name, b u t not all t-shirts displayed the words "Marley" or "Bob Marley," or an image of Bob M a rle y. (Defs.' MSJ, Ex. I.) The decision whether to include the words "Bob Marley" or M a rle y's image on the t-shirts was an artistic decision. (Defs.' MSJ, Ex. J.) Over the years, Plaintiffs have enforced their rights in the Bob Marley intellectual p ro p e rty, sending out approximately four hundred cease and desist letters and filing over tw e n ty trademark, copyright, and right of publicity suits. (Crujeiras Decl. at 8-9 & Ex. M; P ls .' MSJ, Ervin Decl. at 3 & Ex. E.) For example, in March 2004, Plaintiffs learned The T u n e s Company, a Florida corporation, was displaying Marley-related goods on its website, a n d Plaintiffs sent a cease and desist letter. (Pls.' Opp'n, Ervin Decl. at 3.) P la in tif f s first encountered Defendant A.V.E.L.A., Inc. ("Avela") at the February 2 0 0 5 MAGIC apparel trade show in Las Vegas. Avela is in the business of publishing and lic e n s in g artwork for distribution in the retail marketplace. (Defs.' MSJ, Valencia Decl. at 1 .) Avela collects and restores artwork and images related to classic movies, television p ro g ra m s , and other entertainment. (Id.) Defendant Leo Valencia ("Valencia") is the p re s id e n t and owner of Defendants Avela and X One X Movie Archive, Inc. ("X One X"). (Id.) Defendant X One X previously was involved in restoring movie posters and reselling th e m at auction. (Pls.' MSJ, Pietrini Decl., Ex. F at 35.) Avela acts as a licensing agent for X One X. (Id. at 41.) T h e parties dispute the circumstances surrounding their first interaction. The p a rtie s agree that Michael Conley ("Conley") of Zion met Valencia at the 2005 MAGIC s h o w , Valencia showed Conley some images, and the two agreed to discuss further a p o s s ib le licensing arrangement. However, the parties dispute what was contained in those 3 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 im a g e s. According to Conley, none of the images he viewed in Valencia's portfolio d e p ic te d Bob Marley. (Pls.' Opp'n, Bost Decl., Ex. G at 58.) Likewise, Val Formica (" F o rm ic a " ) of Gateway Licensing, an entity working with Zion, also avers that Valencia d id not show him any photographs of Bob Marley. (Pls.' Opp'n, Formica Decl. at 2.) Rather, Formica and Conley contend that their discussions with Valencia concerned Zion's p o te n tia l licensing of Avela's movie-based properties. (Pls.' Opp'n, Bost Decl., Ex. G at 5 4 - 5 6 .) According to Valencia, Avela's portfolio at the 2005 MAGIC show included c e rta in images of Marley which Avela had obtained from a photographer named Roberto R a b a n n e ("Rabanne"). (Defs.' MSJ, Valencia Decl. at 1-2; Pls.' MSJ, Ex. H at 79-80.) Valencia avers that Conley viewed the portfolio including the Marley images. (Defs.' MSJ, V a le n c ia Decl. at 3.) However, Kimberly Mileski of Defendant Central Mills, Inc. d/b/a F re e z e ("Freeze") testified that she viewed Avela's binder at the 2005 MAGIC show, but it d id not contain any Marley images at that time, and the first time Valencia showed her p h o to g ra p h s of Marley was in 2007. (Pls.' Opp'n, Bost Decl., Ex. H at 33-34, 43-44.) Liza A c u n a , Avela's licensing agent, also testified she did not believe Valencia showed or sent to Conley any Marley images at the 2005 MAGIC show or in follow-up emails. (Pls.' O p p 'n , Bost Decl., Ex. I at 286-87.) After the MAGIC show, the parties continued to d is c u s s a potential licensing arrangement, but no licensing agreement was reached. (Defs.' M S J , Valencia Decl. at 2; Pls.' Opp'n, Formica Decl. at 1-2.) At the same 2005 MAGIC trade show, Zion and Hope Road discovered another c o m p a n y, Legends4Life.com ("Legends"), was displaying a Bob Marley t-shirt. (Pls.' O p p 'n , Ervin Decl. at 2.) Zion and Hope Road subsequently commenced suit against L e g e n d s and several other parties that were offering Marley goods at the 2005 show. (Id. at 2 -3 .) Plaintiffs thereafter filed an application to register the rights of publicity for Bob M a rle y with the Nevada Secretary of State's Office on January 24, 2006. (Id. at 4.) 4 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 In addition to disputing when Avela first displayed to others any Marley p h o to g ra p h s , the parties dispute when Avela first obtained the photographs from Rabanne. According to Valencia, he was introduced to Rabanne in 2004. (Defs.' MSJ, Valencia D e c l. at 1.) Rabanne showed Valencia photographs of Bob Marley, which Rabanne stated h e took with Bob Marley's permission. (Id.) Rabanne agreed to allow the Marley images to be used in Avela's portfolio to see if any potential licensees were interested in using the p h o to s . (Id.) According to Valencia, Rabanne repeatedly told him both orally and in w ritin g that Bob Marley had given Rabanne express permission to sell the photographs and to use them in merchandising products such as t-shirts and posters. (Id. & Ex. D; Pls.' MSJ, P ie trin i Decl., Ex. G at 105, Ex. S at 335-36, 361.) H o w e v e r, Rabanne testified that he first met Valencia in June 2006, about a m o n th before he signed a July 2006 contract with Valencia. (Pls.' Opp'n, Bost Decl., Ex. A a t 54-55.) Rabanne denies he met Valencia in 2004. (Id. at 55.) According to Rabanne, a f te r litigation commenced in another lawsuit involving the Marley photographs, Valencia s e n t him contracts dated 2003 and 2004. (Id. at 123-24.) Rabanne testified that Valencia s e n t him these contracts because Valencia "needed to backdate the actual contract" that V a le n c ia and Rabanne originally had signed in an effort to show Valencia and Rabanne's re la tio n s h ip dated back to 2003 or 2004. (Id. at 124; see also Pls.' Opp'n, Bost Decl., Ex. B .) Rabanne declined to sign the documents. (Pls.' Opp'n, Bost Decl., Ex. A at 125-26.) Rabanne also denied that he told Valencia that Bob Marley had approved R a b a n n e 's use of the photos for merchandising other products. According to Rabanne, V a le n c ia "coached" him to say that Marley was aware that Rabanne sold photos of Marley. (Pls.' Opp'n, Bost Decl., Ex. C at 82-83.) According to Rabanne, Marley never actually s a w Rabanne selling pictures, but it was Rabanne's impression that Marley knew he was s e llin g pictures. (Id.) Further, Rabanne testified that he did not sell t-shirts or posters when M a rle y was alive, and hence Marley did not approve of that use for any of Rabanne's 5 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 p h o to g ra p h s . (Id. at 87-88.) Rather, Rabanne sold only fine art prints during that time. (Id.) According to Avela's former counsel, Gregg Paradise ("Paradise"), Valencia first re q u e s te d he do work related to the Marley rights in August 2006. (Pls.' Opp'n, Bost Decl., E x . E at 38-39; Pls.' MSJ, Pietrini Decl., Ex. T.) Paradise understood that Valencia was lo o k in g into marketing t-shirts depicting Marley photographs, and that the t-shirts were not in the marketplace at that time. (Pls.' Opp'n, Bost Decl., Ex. E at 39-40.) In the fall of 2006, Valencia discussed a possible licensing agreement with Rohan M a rle y ("Rohan"), one of the Marley children. (Pls.' MSJ, Pietrini Decl., Ex. V.) According to Valencia, he discussed with Rohan only a possible license to use the words " B o b Marley," but he was not seeking a licence to use Marley images on apparel. (Defs.' O p p 'n , Valencia Decl. at 4.) According to Rohan, Valencia mentioned that he wanted to p ro d u c e t-shirts to mass market retailers, but Rohan indicated the Marleys were not in te re s te d in mass market sales. (Pls.' Opp'n, Bost Decl., Ex. F at 102-03.) According to R o h a n , Valencia responded that he came to the family out of respect, but that if the family d id not want to participate, Valencia could market the t-shirts without them. (Id.) Rohan a s k e d Valencia how he could do that, to which Valencia replied that he could do it in c e rta in territories, including Las Vegas, without the family's permission. (Id.) No licensing a g re e m e n t was reached between Rohan and Valencia. O n February 7, 2007, Plaintiffs filed a complaint and sought a temporary re s tra in in g order against Fame Jeans, Inc. ("Fame"), Avela, and Valencia for trademark and rig h ts of publicity infringement. (Crujeiras Decl. at 9; Pls.' MSJ, Ervin Decl, Ex. A.) The s u it alleged Fame, Avela, and Valencia were marketing Marley products without a license a t the 2007 MAGIC trade show in Las Vegas. (Pls.' MSJ, Ervin Decl., Ex. A.) This Court g ra n te d an ex parte motion for temporary restraining order. (Pls.' MSJ, Ervin Decl., Ex. B.) During the parties' settlement negotiations, Fame stated it never made any Bob Marley 6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 re la te d products, and it displayed only one Marley photograph at the 2007 MAGIC trade s h o w , which Fame had licensed from Avela. (Crujeiras Decl. at 9.) Fame did not take any o rd e rs for a Marley product, and agreed it would not make any such products in the future. (Id.) Plaintiffs contend they believed the Fame incident was the extent of Avela's and V a le n c ia 's use of Marley-related images. (Id.) Plaintiffs thereafter dismissed the 2007 la w s u it without prejudice. (Pls.' MSJ, Ervin Decl., Ex. D.) Fame was not Avela's only customer for Marley-related products, however. Avela licensed Marley images to Defendants Jem Sportswear ("Jem") and Freeze, as well a s others not named as defendants in this suit. (Defs.' MSJ, Valencia Decl. at 2.) In midJ a n u a ry 2008, Plaintiffs learned Avela and Valencia were licensing the Rabanne p h o to g ra p h s of Marley to different manufacturers who were selling Marley products th ro u g h retailers such as Target and Wet Seal. (Crujeiras Decl. at 10.) Target listed for sale on its website a t-shirt identified as "Marley Vintage Tee," a n d another as "Licensed Black Marley Raibow [sic] Monster Tee." (Defs.' MSJ, Ex. G.) At stores, Target listed the product on shelf labels identifying the item as "Bob Marley b la c k ." (Pls.' MSJ, Pietrini Decl., Ex. N at 97-98.) According to Target buyer Elizabeth K in n e b e rg , Target used these designations as "the item description, which is just that g e n e ra l description," and as "just a descriptor of who's on the t-shirt." (Id. at 54, 57-58.) Both shirts contain an image of Marley, but do not contain any graphic text. (Defs.' MSJ, E x . G.) The t-shirts' neck tags have Avela logos. (Pls.' MSJ, Pietrini Decl., Ex. N at 1000 1 .) Target obtained the shirts from Jem, and sold the shirts from October 2008 to the s u m m e r of 2009. (Id. at 57, 59-61, 95, 99 & Dep. Ex. 185.) Wal-Mart advertised on its website several Marley "hoodies" and t-shirts. (Defs.' M S J , Ex. G.) The hoodies and t-shirts displayed images of Marley. (Id.) Two t-shirts also d is p la ye d words, but the shirts do not display the name Bob Marley. (Id.) Wal-Mart a d v e rtis e d these products as "Bob Marley - Men's Zip Hoodie," "Jimi Hendrix Bob Marley 7 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 - Big Men's Mock-Layer Tee," "Bob Marley - Men's Short-Sleeve Graphic Tee," and "Bob M a rle y - Men's Mock-Layer Tee." (Id.) Wet Seal advertised on its website a "Bob Marley Rasta Tee," a "Marley Concert T a n k ," and a "Bob Marley Peace Tee." (Pls.' MSJ, Ex. O.) One of these shirts contained o n ly Marley's image. (Id.) Another displayed his image along with the words "Stand Up" a n d "Stand Up for Your Rights," which are words from a Marley song. (Id.; Pls.' Reply (D o c . #134), Supplemental Bost Decl., Ex. E at 54.) The third shirt contained a Marley im a g e and the words "Peace" and "Love." (Pls.' MSJ, Ex. O.) Another retailer, Balzout, sold t-shirts containing Bob Marley's image as well as th e words "One Love," a Marley song title, and "Catch a Fire," a Marley album title. (Pls.' R e p ly, Supplemental Bost Decl., Ex. A at 64-66, 108-09.) The House, Inc. sold boxer s h o rts with the song title "Soul Revolution" and a Marley image. (Id., Ex. C at 43-45.) A c c o rd in g to Valencia, Avela "takes careful steps to make sure that in licensing o r otherwise using images and artwork it does not infringe others' intellectual property rig h ts ." (Defs.' MSJ, Valencia Decl. at 1.) Valencia researched the United States Patent a n d Trademark Office registrations prior to any manufacture of products using the Marley im a g e s, and found Plaintiffs' registration for the trademark "BOB MARLEY." (Id. at 2-3.) Valencia avers that due to this registration, Avela made it clear to its licensees that no items e v e r could be sold with the words MARLEY or BOB MARLEY on the product. (Id. at 3.) Avela had an approval process for any licensed items using the Marley images, and Avela d is a p p ro v e d an item proposed by Freeze because it contained the words "Bob Marley." (Id. & Ex. E.) According to Valencia, Avela never has received a complaint or correspondence in d ic a tin g there has been consumer confusion in the marketplace as to the source, origin, a f f ilia tio n , or sponsorship of any of Defendants' licensed products bearing the Marley im a g e s. (Valencia Decl. at 3.) /// 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 H o w e v e r, Plaintiffs retained an expert in this case, E. Deborah Jay ("Jay") of F ie ld Research Corporation, who conducted a survey in August 2009 of potential p u rc h a s e rs of graphic t-shirts. (Pls.' MSJ, Pietrini Decl., Ex. DD.) The survey's purpose w a s "to determine whether potential purchasers of graphic or screened T-shirts are likely to m ista k e n ly believe that the heirs, estate or agents of Robert Nesta Marley (`Bob Marley') a re the source or the sponsor of, or are affiliated with, A.V.E.L.A. T-shirts bearing Bob M a rle y's image." (Id. at 402.) Jay conducted 509 face-to-face interviews with potential g ra p h ic t-shirt purchasers. (Id.) Jay split the group into a control group, which was shown a fictitious Avela t-shirt bearing the image of an unknown African-American male with d re a d lo c k s , and a test group, which was shown an actual Avela t-shirt bearing Marley's im a g e . (Id. at 402-03.) Both t-shirts contained the Avela neck label, stated that the designs w e re the property of X One X, and indicated a 1976 copyright for Rabanne. (Id. at 403.) Jay had the respondents look at either the test or control t-shirt, and then in te rv ie w e rs posed a series of questions about the shirt. Interviewers asked who the re s p o n d e n ts thought made the t-shirt, whether the respondents thought the t-shirt makers re c e iv e d permission from anyone else to make the t-shirt, and whether the respondents th o u g h t the t-shirt maker produces something other than t-shirts. (Id. at 403-04.) Neither th e interviewers nor the respondents were told the name of Jay's client or that the survey w a s being used in connection with litigation. (Id. at 404.) When asked who made or put out the t-shirt, seventeen percent of the test group a n s w e re d Avela or X One X and nine percent stated Bob Marley or the person on the ts h irt.1 (Id. at 418.) In the control group, twenty-two percent answered Avela, and two p e rc e n t answered Marley or the person on the shirt. (Id.) When asked whether the t-shirt Other answers included Hot Topic, Spencer's, or other retailers such as Wal-Mart or Target. Twenty-nine percent of the test group answered they did not know. Thirty-four percent of the control group answered they did not know. 9 1 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 m a k e r received permission from someone to put out the t-shirt, of those who said yes, th irty-s e v e n percent of the test group answered Bob Marley or the person on the shirt, w h e re a s twenty percent of the control group answered Marley or the person on the shirt. (Id. at 419.) Forty-one percent of the respondents in the test group and fifty-nine percent of th e respondents in the control group answered that the t-shirt maker did not have to receive a p p ro v a l from anyone or the respondents had no opinion on the question. (Id.) Overall, f o rty-tw o percent of the test group said Marley or the person on the shirt was the source or s p o n s o r of the shirt, while twenty-two percent of the control group thought so. (Id. at 420.) These results led Jay to conclude that forty-two percent of respondents in the test group m ista k e n ly believed Marley, his heirs, or the person on the shirt were the source or sponsor o f the t-shirt. (Id. at 422.) The comparable percentage for the control group was twentytw o percent. (Id.) Jay thus concluded that twenty percent of the test group was confused as to source of the actual Avela t-shirt because it bears Marley's image. (Id.) Jay opined there is a likelihood of confusion as to the source or sponsor of the Avela t-shirts due to the use o f Marley's image thereon. (Id.) U p o n discovering the shirts on sale at Target, Plaintiffs initiated this action in this C o u rt on January 23, 2008, against Avela and Valencia. (Compl. (Doc. #1).) Plaintiffs also m o v e d ex parte for a temporary restraining order. The Court ordered the motion served, h e ld a hearing, and denied the motion for temporary restraining order and the motion for p re lim in a ry injunction. Avela and Valencia answered and asserted counterclaims for in te rf e re n c e with contractual relations, interference with prospective economic advantage, d e c la ra to ry judgment of non-infringement, and cancellation of trademarks.2 (Ans. & C o u n te rc l. (Doc. #23).) On December 29, 2008, Plaintiffs amended their Complaint, a d d in g X One X, Jem, and Freeze as defendants. (Am. Compl. (Doc. #61).) Plaintiffs Avela and Valencia also asserted counterclaims for Nevada unfair trade practices and Sherman Act violations, but later agreed to dismiss these claims. (Doc. #41, #42.) 10 2 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 a s s e rt in their Amended Complaint claims for trademark infringement under the Lanham A c t (count one); unfair competition under the Lanham Act (count two); common law tra d e m a rk infringement (count three); unauthorized commercial use of right of publicity u n d e r Nevada law (count four); and intentional interference with prospective economic a d v a n ta g e (count five). D e f e n d a n ts now move for summary judgment on all of Plaintiffs' claims. Defendants argue they are entitled to summary judgment on Plaintiffs' trademark and unfair c o m p e titio n claims because Plaintiffs own the trademark in the words "Bob Marley" and D e f e n d a n ts do not use those words on any of their products. Defendants contend Plaintiffs d o not own a trademark in Marley's image or any particular photograph of Marley, and P la in tif f s do not make consistent use of any single Marley image as a trademark. Defendants also argue they do not use Marley's image as a source indicator, and thus their u s e does not constitute trademark use. As to Plaintiffs' right of publicity claim under Nevada law, Defendants argue P la in tif f s waived any right of publicity by failing to timely register their rights in Nevada. Defendants also argue their use pre-dated Plaintiffs' registration, and hence statutorily P la in tif f s cannot assert their publicity rights against Defendants. Defendants contend the N e v a d a statute does not grant rights to persons who died before the act was passed. Finally, D e f e n d a n ts assert the intentional interference claim fails because it is based on the tra d e m a rk and right of publicity claims. P la in tif f s respond that they have a trademark right in Marley's identity and p e rs o n a . Plaintiffs also argue that even if the respective mark is only Bob Marley's name, a g e n u in e issue of material fact remains that Defendants have used Marley's name to a d v e rtis e the t-shirts and that such use does not constitute fair use. Plaintiffs also argue M a rle y's image is the same as his name under the doctrine of equivalents. As to the right of p u b lic ity claim, Plaintiffs argue they need not register with Nevada within six months of 11 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 a n y unauthorized use. Rather, they must do so only within six months of a particular d e f e n d a n t's unauthorized use. Plaintiffs further argue they registered their claim within six m o n th s of their knowledge of unauthorized use in Nevada by Legends at the August 2005 M A G IC show, and thus their registration was timely even under Defendants' interpretation o f the statute. Plaintiffs also contend the Nevada statute applies to celebrities who died p rio r to the statute's enactment. Plaintiffs also move for summary judgment, but only as to count two, unfair c o m p e titio n under the Lanham Act for designation of false origin or association. Plaintiffs a rg u e they own the rights in Marley's identity, Plaintiffs consistently have used his image a n d likeness to market apparel and other merchandise for many years, and Plaintiffs have p o lic e d others' attempts at using Marley's image or likeness. Plaintiffs further argue D e f e n d a n ts have sold Marley images, including images with Marley song and album titles a n d lyrics, to others to place on t-shirts and beach towels. Plaintiffs argue that Defendants' c o n d u c t of using Marley's image and likeness on the same products for which Plaintiffs use th e images and likeness falsely associate Defendants' products with Plaintiffs. Plaintiffs c o n te n d the survey results show a likelihood of confusion as to the source or affiliation of D e f e n d a n ts' t-shirts with Plaintiffs. Defendants respond that Plaintiffs did not plead in their Amended Complaint a f a ls e association claim, and Plaintiffs should not be able to amend their Amended C o m p la in t at summary judgment. Defendants further argue that even if the Amended C o m p la in t could be construed to have a false association claim, a Lanham Act claim still re q u ire s Plaintiffs to make a trademark use of Marley's image, which Plaintiffs have not d o n e because Plaintiffs do not consistently use any particular image of Marley on their p ro d u c ts . Defendants also argue that this is not a right of publicity case under the Lanham A c t, because those cases all concern the situation where the defendant used the celebrity's im a g e to falsely portray the image that the celebrity endorsed the product. Defendants 12 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 c o n te n d they did not use Marley's image in commercial advertising to promote the product. Defendants also argue there is no evidence in this case of actual customer confusion, and th e survey does not sufficiently raise issues of fact on confusion. I I . LEGAL STANDARD S u m m a ry judgment is appropriate "if the pleadings, the discovery and disclosure m a te ria ls on file, and any affidavits show that there is no genuine issue as to any material f a c t and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). A fact is "material" if it might affect the outcome of a suit, as determined by the governing s u b s ta n tiv e law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). An issue is " g e n u in e " if sufficient evidence exists such that a reasonable fact finder could find for the n o n -m o v in g party. Villiarimo v. Aloha Island Air, Inc., 281 F.3d 1054, 1061 (9th Cir. 2 0 0 2 ). Initially, the moving party bears the burden of proving there is no genuine issue of m a te ria l fact. Leisek v. Brightwood Corp., 278 F.3d 895, 898 (9th Cir. 2002). After the m o v in g party meets its burden, the burden shifts to the non-moving party to produce e v id e n c e that a genuine issue of material fact remains for trial. Id. The Court views all e v id e n c e in the light most favorable to the non-moving party. Id. I I I . DEFENDANTS' MOTION FOR SUMMARY JUDGMENT (Doc. #113) A . Count One - Trademark Infringement - 15 U.S.C. § 1114 & Count Three - Common Law Trademark Infringement In count one of Plaintiffs' Amended Complaint, Plaintiffs allege Defendants have u s e d in commerce merchandise bearing the "Marley Intellectual Property," and thus have in f rin g e d on the federally registered trade mark "BOB MARLEY." The Amended C o m p la in t defines "Marley Intellectual Property" as "including but not limited to" (1) c o m m o n law rights in the name Bob Marley in association with music and entertaining and m e rc h a n d is e promoting the same; (2) the federally registered BOB MARLEY mark; and (3) th e Nevada registered rights of publicity. The parties dispute whether Plaintiffs can claim a 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 m a rk in all depictions of Marley, whether Marley's picture is the equivalent of the mark on h is name, whether Defendants used the BOB MARLEY mark, and if so, whether D e f e n d a n ts' use of Marley's name is fair use. 1 . The Mark T itle 15 U.S.C. § 1114 provides for a private right of action in favor of a tra d e m a rk registrant against "[a]ny person who shall, without the consent of the registrant"­ (a) use in commerce any reproduction, counterfeit, copy, or c o lo ra b le imitation of a registered mark in connection with the sale, o f f e rin g for sale, distribution, or advertising of any goods or services o n or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (b) reproduce, counterfeit, copy, or colorably imitate a re g is te re d mark and apply such reproduction, counterfeit, copy, or c o lo ra b le imitation to labels, signs, prints, packages, wrappers, re c e p ta c le s or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or a d v e rtis in g of goods or services on or in connection with which such u s e is likely to cause confusion, or to cause mistake, or to deceive. A "trademark" means "any word, name, symbol, or device, or any combination thereof" w h ic h a person uses "to identify and distinguish his or her goods . . . from those m a n u f a c tu re d or sold by others and to indicate the source of the goods." 15 U.S.C. § 1127. A trademark thus is "a limited property right in [a] particular word, phrase, or symbol . . . th a t is used to identify a manufacturer or sponsor of a good or the provider of a service." Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 806 n.12 (9th Cir. 2003) (quotation a n d internal citation omitted). The limited purpose of the Lanham Act's trademark p ro te c tio n is "to avoid confusion in the marketplace by allowing a trademark owner to p re v e n t others from duping consumers into buying a product they mistakenly believe is s p o n s o re d by the trademark owner." Id. at 806 (quotation and alteration omitted). To prevail on a trademark claim, a plaintiff must show that the alleged mark at is su e is a cognizable trademark, i.e., that the public recognizes the symbol as identifying the p la in tif f 's goods or services and distinguishes those goods or services from those of others. 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 C o m e d y III Prods., Inc. v. New Line Cinema, 200 F.3d 593, 594-95 (9th Cir. 2000). A p la in tif f may meet this burden by showing either that its symbol is inherently distinctive, or th a t even if not inherently distinctive, the symbol has become distinctive through the a c q u is itio n of secondary meaning. Id. If the plaintiff establishes it has a cognizable mark, it then must show the defendant's use of the plaintiff's trademark is "likely to cause c o n f u s io n or to cause mistake, or to deceive as to the affiliation, connection, or association o f the two products." Mattel, Inc., 353 F.3d at 807 (quotation omitted). P la in tif f s ' registered mark consists of the words BOB MARLEY. Plaintiffs also c o n te n d , however, that their mark consists of any visual depiction of Marley. Every court to c o n s id e r the issue has held there is no cognizable trademark in every single photograph ever ta k e n of a famous person. For example, in ETW Corp. v. Jireh Publishing, Inc., the p la in tif f owned the exclusive licensing rights to exploit Tiger Woods' name, image, lik e n e ss , and signature. 332 F.3d 915, 918 (6th Cir. 2003). The plaintiff owned a re g is te re d trademark for the mark "TIGER WOODS." Id. The defendant published a p a in tin g entitled "The Masters of Augusta," which commemorated Woods' victory at the M a s te rs Tournament. Id. The painting depicted Woods in three different poses, and in c lu d e d the likenesses of famous golfers of the past looking down on Woods. Id. The lim ite d edition prints of the painting were enclosed in a white envelope, which contained th e words "Tiger Woods" under the flap on the back of the envelope. Id. at 918-19. Woods' n a m e also appeared in a narrative description of the painting. Id. at 918. In reviewing the plaintiff's Lanham Act trademark claim, the United States Court o f Appeals for the Sixth Circuit rejected as "untenable" the plaintiff's claim of trademark p ro te c tio n "for any and all images of Tiger Woods." Id. at 922. As the Sixth Circuit put it, th e plaintiff-a s k s us, in effect, to constitute Woods himself as a walking, talking tra d e m a rk . Images and likenesses of Woods are not protectable as a tra d e m a rk because they do not perform the trademark function of 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 d e s ig n a tio n . They do not distinguish and identify the source of goods. They cannot function as a trademark because there are undoubtedly th o u s a n d s of images and likenesses of Woods taken by countless p h o to g ra p h e rs , and drawn, sketched, or painted by numerous artists, w h ic h have been published in many forms of media, and sold and d is trib u te d throughout the world. No reasonable person could believe th a t merely because these photographs or paintings contain Woods's lik e n e s s or image, they all originated with Woods. Id . The Sixth Circuit thus held that "as a general rule, a person's image or likeness cannot f u n c tio n as a trademark," except perhaps in the limited circumstance where one specific p h o to g ra p h consistently is used as a mark. Id. at 922-23. T h e Second Circuit reached a similar conclusion in Pirone v. MacMillan, Inc., 8 9 4 F.2d 579 (2d Cir. 1990). In that case, Babe Ruth's daughter brought suit against the p u b lish e r of a baseball calendar which included three photographs of Babe Ruth. Id. at 581. Ruth's daughter did not claim any ownership in the particular photographs, but instead o b je c te d to the use of Ruth's likeness, arguing she owned a trademark in Ruth's likeness, e v e n though the registered mark was only for the words "BABE RUTH." Id. The Second C irc u it rejected this claim: A lth o u g h its registration is limited to the words "Babe Ruth," Pirone w o u ld have us read her rights in that word mark to include every p h o to g ra p h of Ruth ever taken. We decline to do so. . . . Pirone's position finds support in neither precedent nor c o m m o n sense. Every case in which the owner of a word mark re c e iv e d protection against infringing use of a picture mark, or vice v e rs a , involved a true picture mark, a single pictorial representation u s e d repeatedly as an indication of origin. . . . U n lik e a stylized flying horse or similar picture marks, an in d iv id u a l's likeness is not a consistently represented fixed image­ d if f e re n t photographs of the same person may be markedly dissimilar. Thus a photograph of a human being, unlike a portrait of a fanciful c a rto o n character, is not inherently "distinctive" in the trademark sense o f tending to indicate origin. Id. at 583. The Second Circuit noted that a person's photograph may be a valid trademark " if , for example, a particular photograph was consistently used on specific goods." Id. But " [ w ]h a te v e r rights Pirone may have in the mark `Babe Ruth,' [the defendant's] use of 16 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 R u th 's name and photographs can infringe those rights only if that use was a `trademark u s e ,' that is, one indicating source or origin. As the district court correctly determined, th e re was no `trademark use' here." Id.; see also Estate of Presley v. Russen, 513 F. Supp. 1 3 3 9 , 1363-64 (D.N.J. 1981) (rejecting a claim by Elvis Presley's estate that his image and lik e n e ss was a valid mark, except for one particular image of Presley that consistently had b e e n used in the advertising and sale of Elvis Presley entertainment services to identify th o s e services). C o n s is te n t with the above case law, Plaintiffs' registered mark BOB MARLEY d o e s not grant Plaintiffs a trademark in any and all photographs of Marley. The evidence in th e record shows Plaintiffs use hundreds of different photographs of Marley on t-shirts and o th e r merchandise. Thus, no single picture represents a Marley mark for Plaintiffs which w o u ld act as a source identifier that is the equivalent to the word mark BOB MARLEY. Plaintiffs' trademark claims in this case thus are limited to the registered word mark BOB M ARLEY. 2 . Picture Equivalent P la in tif f s argue that a picture can be the equivalent of a word mark and thereby b e entitled to trademark protection. Defendants respond that the name of a celebrity as a tra d e m a rk does not equate with every single photo ever taken of that celebrity. S o m e courts have held that a picture can be the equivalent of a registered word m a rk . For example, in Mobil Oil Corp. v. Pegasus Petroleum Corp., the Second Circuit c o n s id e re d whether Mobil's use of a flying horse symbol was infringed by another company c a llin g itself Pegasus Petroleum. 818 F.2d 254, 255-56 (2d Cir. 1987). The Second Circuit c o n c lu d e d that while "words and their pictorial representations should not be equated as a m a tte r of law, a district court may make such a determination as a factual matter." Id. at 257; see also Beer Nuts, Inc. v. King Nut Co., 477 F.2d 326, 329 (6th Cir. 1973) (holding th a t picture of overflowing stein of beer on nuts package infringed on "BEER NUTS" word 17 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 m a rk ). W h ile in some cases a word and its pictorial depiction may be equivalent, there is n o genuine issue of material fact that the Marley pictures are not the equivalent of the re g is te re d word mark BOB MARLEY. The pictorial equivalent cases are limited to a true p ic tu re mark consisting of a single pictorial representation used repeatedly as an indication o f origin. In the case of a human being, a picture of the person and the word mark are e q u iv a le n t only if the same picture consistently is used as a source indicator. Because, as d is c u s se d above, Plaintiffs did not use a single picture of Marley as a source indicator, any a n d all pictures of Marley are not the pictorial equivalent of the word mark BOB MARLEY a s a matter of law. 3. Use of the BOB MARLEY Mark A s a result of the above discussion, Defendants' use of Marley's image is not a c tio n a b le under trademark law. However, Plaintiffs contend Defendants used the BOB M A R L E Y word mark in connection with advertising the products, such as on websites and o n store signage. Defendants respond that they did not use the mark, the retailers did, and a n y such use is fair use of the mark to describe Defendants' product, and not as a source in d ic a to r . N o genuine issue of material fact remains that Defendants did not use the re g is te re d word mark BOB MARLEY. The evidence in the record indicates that retailers s u c h as Target or Wet Seal used the words "Bob Marley" to describe the product. However, Plaintiffs have presented no evidence that Defendants used the word mark on any p ro d u c t or advertisement. The only evidence Plaintiffs present of Defendants' use of M a rle y's name consists of an unauthenticated, unidentified document, which appears to be a n internal Jem sales analysis report. (Pls.' Opp'n, Ex. N.) This document, even if a d m is sib le , would not raise a genuine issue of fact as to trademark infringement because J e m 's use of the Marley name on an internal sales report does not show Jem used the mark 18 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 a s a source indicator. Additionally, the internal sales report would not cause any customer c o n f u s io n as there is no evidence it ever was shown to a customer. Because Plaintiffs p re s e n t no evidence raising a genuine issue of material fact that Defendants used the BOB M A R L E Y mark, and the word mark is the only viable trademark at issue in this case, the C o u rt will grant Defendants' motion for summary judgment on counts one and three of P la in tif f s ' Amended Complaint. B . Count Two - Unfair Competition Under 15 U.S.C. § 1125(a) A s discussed more fully below with respect to Plaintiffs' motion for summary ju d g m e n t, the Court will deny Defendants' motion for summary judgment on this claim. C . Count Four - Nevada Rights of Publicity D e f e n d a n ts argue Plaintiffs have waived any rights to publicity they may have in th e State of Nevada because they did not timely register their claim as required under the N e v a d a statute. According to Defendants, Plaintiffs learned of unauthorized activity in N e v a d a as early as 2001, but did not register until January 2006. Defendants contend that b e c a u s e the statute requires registration within six months of an unauthorized use, Plaintiffs f a ile d to timely register. Defendants also argue that even if Plaintiffs are correct that re g is tra tio n is required within six months of a particular defendant's use, Plaintiffs knew of D e f e n d a n ts' use as early as February 2005, and thus their January 2006 registration is u n tim e ly. Defendants further contend that their use pre-dates Plaintiffs' registration, and th u s Plaintiffs cannot preclude their use under the Nevada statute. Finally, Defendants a rg u e that the statute does not apply to individuals who died before the statute was enacted. P la in tif f s respond that Defendants are misreading the statute, and that it does not re q u ire registration within six months of the first unauthorized use or rights are forever w a iv e d . Rather, Plaintiffs argue, they need register only within six months of a particular u n a u th o riz e d use. Plaintiffs contend an issue of fact remains as to when they first learned o f Defendants' use, as they dispute that Avela and Valencia even possessed Marley photos 19 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 in February 2005, much less showed them at the MAGIC show. Plaintiffs also dispute they k n e w of infringing activity in Nevada as early as 2001 because the evidence in the prior c a s e showed only that Plaintiffs were aware of infringing activity outside the state, and such a c tiv ity would not trigger the registration requirement in Nevada. N e v a d a has enacted a statutory cause of action for the unauthorized use of a p e rs o n 's rights of publicity in his or her name, voice, signature, photograph, or likeness. Nev. Rev. Stat. § 597.770 et seq. The right of publicity "endures for a term consisting of th e life of the person and 50 years after his death, regardless of whether the person c o m m e rc ia lly exploits the right during his lifetime." Nev. Rev. Stat. § 597.790(1). Others c a n n o t make commercial use of a person's rights of publicity without written consent of the p e rs o n or his successor in interest absent a few exceptions not relevant here. Id. § 597.790(2). "Commercial use" means using the person's name, voice, signature, p h o to g ra p h or likeness "on or in any product, merchandise or goods or for the purposes of a d v e rtis in g , selling or soliciting the purchase of any product, merchandise, goods or s e rv ic e ." Id. § 597.770(1). The statutory provisions "apply to any commercial use within th is state of a living or deceased person's name, voice, signature, photograph or likeness re g a rd le s s of the person's domicile." Id. § 597.780. A successor in interest or a licensee of a deceased person may register their claim to the deceased person's publicity rights by filing an application with Nevada's Secretary of S ta te . Id. § 597.800(3). The registration serves a notice function, as the statute requires o th e rs wishing to make commercial use of a deceased person's publicity rights first to make a reasonable, good faith effort to discover the identity of anyone who qualifies as a s u c c e s s o r in interest to the deceased person. Id. § 597.800(5). The statute places c o n s e q u e n c e s on the failure to register. A successor in interest of a deceased person may n o t assert any right against any unauthorized commercial use of the deceased person's p u b lic ity rights that begins before the successor has filed an application to register his 20 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 c la im . Id. § 597.800(4). Moreover, [a] person claiming to be a successor in interest to a deceased person m u s t, within 6 months after the date he becomes aware or should re a so n a b ly have become aware of an unauthorized commercial use of th e deceased person's name, voice, signature, photograph or likeness, re g is te r a claim with the Secretary of State pursuant to subsection 3. Failure to register shall be deemed a waiver of any right of publicity. Id . § 597.800(5). 1. Timely Registration T h e parties dispute the statute's meaning, specifically the provision which re q u ire s the timely registration within six months of an unauthorized use. Defendants c o n te n d that the statute requires registration within six months of any unauthorized use by a n y person, or all rights to publicity in Nevada are waived forever. Plaintiffs argue the s ta tu te requires registration within six months of any particular use, or the rights are waived o n ly with respect to that particular use. N e v a d a has not addressed this issue. "Where the state's highest court has not d e c id e d an issue, the task of the federal courts is to predict how the state high court would re s o lv e it." Giles v. Gen. Motors Acceptance Corp., 494 F.3d 865, 872 (9th Cir. 2007) (q u o ta tio n omitted). "In answering that question, this court looks for `guidance' to d e c is io n s by intermediate appellate courts of the state and by courts in other jurisdictions." Id. (quotation omitted). U n d e r Nevada law, statutory construction is a question of law for the Court. Richardson Constr., Inc. v. Clark County Sch. Dist., 156 P.3d 21, 23 (Nev. 2007). The C o u rt should construe the statute to give effect to the Legislature's intent. Id. The Court b e g in s with the statute's plain statutory language, giving effect to any unambiguous la n g u a g e . Id. If the statutory language is ambiguous, the Court must "examine the statute in the context of the entire statutory scheme, reason, and public policy to effect a c o n s tru c tio n that reflects the Legislature's intent." Id. 21 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 B y the statute's plain language, a successor in interest to a deceased person " m u s t" register their claim within six months of the date he became aware or reasonably s h o u ld have become aware of an unauthorized commercial use. Failure to do so waives " a n y" right of publicity. Thus, upon discovering an unauthorized use by anyone, a s u c c e s s o r must register within six months or forever waive his claim to publicity rights in th e deceased person. Registration is permissive until the successor learns of an u n a u th o riz e d use, at which point it becomes mandatory or the successor waives the claim to p u b lic ity rights in Nevada. The statutory scheme fosters certainty in the claims surrounding p u b lic ity rights of a deceased person. It encourages early registration by prohibiting a s u c c e s s o r from asserting rights against a use that began before registration. And it e n c o u ra g e s registration upon learning of an unauthorized use by tying forfeiture of the right to a failure to register. The statute thus encourages registration both to protect successors' rig h ts , and to give potential users notice of prohibited uses. However, the registration requirement is not triggered by a use outside of the S ta te . Although § 597.800(5) references "an" unauthorized use, which does not clearly lim it it to Nevada, § 597.780 provides that the right of publicity statutory provisions "apply to any commercial use within this state . . . ." Consequently, the unauthorized use trig g e rin g the registration requirement must be in Nevada. Plaintiffs filed their registration on January 24, 2006. To avoid forfeiture of their p u b lic ity rights in Nevada, Plaintiffs must not have been aware, nor reasonably should have b e e n aware, of an unauthorized use of Marley's rights in Nevada prior to July 26, 2005. Genuine issues of material fact remain as to when Plaintiffs first became aware of an u n a u th o riz e d use in Nevada. Defendants have presented evidence that Plaintiffs were a w a re of internet advertisements by Florida-based companies as early as 2001 and 2004. Whether such internet activity constitutes a use "within" Nevada of which Plaintiffs were a w a re or reasonably should have been aware is a question of fact for the jury. Defendants 22 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 a ls o have presented evidence that Valencia showed Plaintiffs' representatives the Marley p h o to s in February 2005. However, Plaintiffs present evidence that the images they viewed in February 2005 did not include any Marley images. Plaintiffs also present evidence those im a g e s could not have included Marley images because Rabanne testified he did not even m e e t Valencia until July 2006. Genuine issues of material fact therefore remain as to when P la in tif f s first discovered or reasonably should have discovered an unauthorized use in N evada. F o r these same reasons, genuine issues of material fact also remain as to whether D e f e n d a n ts' use of the Marley images began before Plaintiffs' registration. Plaintiffs p re s e n t evidence Defendants did not even meet Rabanne until six months after Plaintiffs' re g is tra tio n , and thus could not have been using the Marley photos on merchandise prior to P la in tif f s ' registration. 2 . Application to Persons Who Died Before the Statute was Enacted D e f e n d a n ts argue that even if Plaintiffs timely registered their rights of publicity, th e statute does not apply to a person who died before Nevada enacted the statute. Defendants argue retroactive application of the statute would be inappropriate. Plaintiffs re s p o n d that by the statute's plain language, and by the Legislature's intent, it applies to p e rs o n s who pre-deceased enactment. Plaintiffs also argue the retroactivity argument is a re d herring, as the statute was enacted long before Defendants' alleged unauthorized use, a n d hence is not an attempt to retroactively apply the law to Defendants' conduct. N e v a d a 's statute states that it applies to "any commercial use within this state of a living or deceased person's name, voice, signature, photograph or likeness regardless of th e person's domicile." Nev. Rev. Stat. § 597.780. Because the statute applied to a d e c e a s e d person upon enactment, it would apply to persons who were deceased prior to e n a c tm e n t. This understanding is supported by the legislative history, which discussed O rso n Welles' estate's difficulty policing the use of his image following his death, and that 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 th is bill would stop such activity. (Mins. of the S. Comm. on Commerce & Labor, 65th S e s s . June 2, 1989.) Liberace and Elvis Presley also were referenced, including the p o te n tia l impact of the bill on impersonators of already-deceased celebrities like Elvis P re s le y. (Id.; Mins. of the Assembly Comm. on Commerce, 65th Sess., June 16, 1989.) The history of the California statute, California Civil Code § 3344.1, after which th e Nevada statute was patterned, also supports this conclusion. After two courts ruled that C a lif o rn ia 's statute did not apply to celebrities who already were dead upon enactment,3 C a lif o rn ia 's legislature quickly enacted a clarification that made it clear that the statute in f a c t did apply to pre-deceased celebrities, and always was meant to so apply to those in d iv id u a ls . See Milton H. Greene Archives, Inc. v. CMG Worldwide, Inc., No. CV 050 2 2 0 0 MMM (MCx), 2008 WL 655604, at *2 (C.D. Cal. Jan. 7, 2008) (unpublished). In ru lin g on a motion for reconsideration in one of those cases following the legislature's a c tio n , the United States District Court for the Central District of California specifically h e ld this was a "clarification" stating what the law always was, not an amendment to c h a n g e the statute's original meaning. See id. at *4-13 ("In sum, in passing SB 771, the 2 0 0 7 California legislature clearly expressed an intent to clarify § 3344.1 as originally e n a c te d ." ). Nevada's statutory language already states that it applies to deceased persons, a n d as it was patterned after California's statute, Nevada need not adopt a clarifying a m e n d m e n t to make clear that it likewise always has intended its statute to apply to persons w h o died before enactment. /// Shaw Family Archives Ltd. v. CMG Worldwide, Inc., 486 F. Supp. 2d 309, 314 (S.D.N.Y. 2007) (holding that because California statute post-dated Marilyn Monroe's death, she had no celebrity rights under California law to bequeath at her death); Milton H. Greene Archives, Inc. v. CMG Worldwide, Inc., No. CV 05-02200 MMM (MCx), 2008 WL 655604, at *1 (C.D. Cal. 2008) (unpublished) (reviewing history in the case in which court previously had ruled that because Marilyn Monroe pre-deceased enactment of the publicity rights statute in California, she had no rights to bequeath upon her death). 24 3 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 T h is interpretation of the statute does not make it retroactive. Under Nevada law, " s ta tu te s operate prospectively, unless the Legislature clearly manifests an intent to apply th e statute retroactively, or it clearly, strongly, and imperatively appears from the act itself th a t the Legislature's intent cannot be implemented in any other fashion." Public E m p lo ye e s' Benefits Program v. Las Vegas Metro. Police Dep't, 179 P.3d 542, 553 (Nev. 2 0 0 8 ) (quotation omitted). However, a statute does not operate retroactively simply by d ra w in g upon past facts. Id. Rather, "[a] statute has retroactive effect when it takes away o r impairs vested rights acquired under existing laws, or creates a new obligation, imposes a n e w duty, or attaches a new disability, in respect to transactions or considerations already p a s t." Id. at 553-54 (quotation omitted). "That is, even though a statute operates only from th e time of its enactment, it is retroactive if it impairs vested rights and past transactions." Id. To determine whether a statute applies retroactively, "courts are guided by fundamental n o tio n s of fair notice, reasonable reliance, and settled expectations." Id. (quotation o m itte d ). H e re , the Nevada publicity rights statute does not take away or impair vested rig h ts , or place a new obligation, duty, or disability on transactions already past. The statute w a s enacted long before Defendants' use of Marley's image on t-shirts, and thus does not re tro a c tiv e ly impair Defendants' rights or impose new burdens on Defendants' past c o n d u c t. Considering notions of fair notice, reasonable reliance, and settled expectations, th e Nevada publicity rights statute does not operate retroactively simply because it takes a c c o u n t of past facts. Genuine issues of material fact remain as to whether Plaintiffs timely registered th e ir claims. Additionally, the Nevada publicity rights statute applies to individuals who w e re deceased prior to the statute's enactment. The Court therefore will deny Defendants' m o tio n for summary judgment on this claim. /// 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 D . Count Five - Interference With Prospective Business Advantage D e f e n d a n ts move for summary judgment on this claim, arguing that because it d e p e n d s upon Plaintiffs' other claims, they are entitled to summary judgment on this claim a s well. As discussed above with respect to the Nevada right of publicity claim and below w ith respect to unfair competition, Plaintiffs have claims that survive summary judgment. The Court therefore will deny Defendants' motion for summary judgment on this claim as w e ll. I V . PLAINTIFFS' MOTION FOR SUMMARY JUDGMENT (Doc. #114) P la in tif f s move for summary judgment on count two of their Amended C o m p la in t, unfair competition under the Lanham Act, 15 U.S.C. § 1125(a). Plaintiffs c o n te n d no genuine issue of material fact remains that Defendants' use of Marley's image o n the t-shirts falsely conveys to the customer that Plaintiffs approved the t-shirt. Defendants respond by arguing Plaintiffs never stated a false endorsement or false a s s o c ia tio n claim in their Amended Complaint, and they cannot amend their pleadings at the s u m m a ry judgment stage. Defendants also contend that even if Plaintiffs pled the claim, it f a ils as a matter of law because using Marley's images on the shirts is not use of the images in advertising such that it would imply Marley endorsed the product. Defendants argue that b e c a u s e Marley's image does not serve a source-identifying function, Plaintiffs fail to state a false endorsement claim. A. The Amended Complaint D e f e n d a n ts contend Plaintiffs never asserted a false association or false e n d o rs e m e n t claim in the Amended Complaint, and that Plaintiffs are trying to avoid s u m m a ry judgment through amendment. Plaintiffs respond that their Amended Complaint c o n ta in s allegations regarding false endorsement or association, and in any event, D e f e n d a n ts are not prejudiced by any amendment because the parties have been litigating th e same facts and issues all along. 26 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 C o u n t two of the Amended Complaint alleges Defendants' use of the "Marley In te lle c tu a l Property" in connection with selling t-shirts "constitutes a false designation of o rig in and/or a false or misleading description or representation of fact, which is likely to c a u s e confusion . . . as to affiliation, connection, or association with Plaintiffs, or as to the o rig in , sponsorship, or approval of Defendants' products or commercial activities by P la in tif f s ." (Am. Compl. at 8.) The Amended Complaint defines the "Marley Intellectual P ro p e rty" as including but not limited to the particular registered marks. (Id. at 4.) Several a lle g a tio n s in the factual recitation also refer to false association or sponsorship. For e x a m p le , Plaintiffs allege they have spent substantial funds enforcing their rights in the M a rle y Intellectual Property and Defendants "were and are attempting to create an a s s o c ia tio n between the Infringing Merchandise and the authorized Marley merchandise s o ld and licensed through Hope Road and Rootswear." (Id. at 4, 7.) Plaintiffs also alleged th a t Defendants acted "with the bad faith intent to profit from the name and likeness of R o b e rt Nesta Marley and the associated and registered Rights of Publicity owned by Hope R o a d ." (Id.) Additionally, the prayer for relief requested the Court permanently enjoin D e f e n d a n ts from "using Marley's name, voice, signature, photograph, or likeness in c o m m e rc e . . . ." (Id. at 11.) These allegations are sufficient to put Defendants on notice that a false a s s o c ia tio n claim was at issue in the case. The parties have litigated throughout this case n o t only whether Defendants used the BOB MARLEY mark, but also Defendants' use of M a rle y's image. Even if the Amended Complaint's allegations did not adequately apprise D e f e n d a n ts of the claim, Defendants do not identify how they are prejudiced by Plaintiffs' p u rs u it of this theory. See Mir v. Fosburg, 646 F.2d 342, 347 (9th Cir. 1980) (noting the " g e n e ra l principle" that the federal rules "evince a belief that when a party has a valid c la im , he should recover on it regardless of his counsel's failure to perceive the true basis of th e claim at the pleading stage, provided always that a late shift in the thrust of the case will 27 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 n o t prejudice the other party in maintaining his defense upon the merits"). B. Merits S o m e courts, including the United States Court of Appeals for the Ninth Circuit, h a v e held that under § 1125(a) of the Lanham Act, a celebrity may assert an unfair c o m p e titio n claim where the defendant uses the celebrity's persona without permission to s u g g e s t false endorsement or association. For example, in Downing v. Abercrombie & F itc h , a retailer used in its apparel catalog a picture of a famous surfer without his p e rm iss io n . 265 F.3d 994, 1000 (9th Cir. 2001). The surfer sued, asserting, among other th in g s, violation of § 1125(a) of the Lanham Act. Id. The Ninth Circuit adapted its test for tra d e m a rk infringement as set forth in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1 9 7 9 ) (the "Sleekcraft factors"), indicating that for celebrity cases "the term `mark' applies to the celebrity's persona, the `strength' of the mark refers to the level of recognition that th e celebrity has among the segment of the public to whom the advertisement is directed, a n d the term `goods' concerns the reasons for or source of the celebrity's fame." Id. at 1 0 0 7 . The Ninth Circuit held a genuine issue of material fact remained concerning a lik e lih o o d of confusion as to whether the surfer endorsed the products in the catalog. Id. at 1 0 0 8 -0 9 . O th e r cases have reached a similar result. For example, in White v. Samsung E le c tro n ic s America, Inc., the defendant ran an advertisement for video-cassette recorders (" V C R s " ) which depicted a robot dressed and posed to look like Vanna White standing next to a Wheel of Fortune game board. 971 F.2d 1395, 1396 (9th Cir. 1992). White did not c o n s e n t to the ads and was not paid. Id. White sued for, among other things, a violation u n d e r § 1125(a). Id. The Ninth Circuit stated that to prevail on this claim, White "is re q u ire d to show that in running the robot ad, [the defendants] created a likelihood of c o n f u s io n . . . over whether White was endorsing [the defendants'] VCRs." Id. at 13991 4 0 0 (internal citations omitted). The Ninth Circuit applied the modified Sleekcraft factors 28 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 a n d held a genuine issue of material fact remained as to a likelihood of confusion as to W h ite 's endorsement of the VCRs. Id. at 1401. S im ila rly, in Wendt v. Host International, Inc., actors George Wendt and John R a tz e n b e rg e r, "Norm" and "Cliff" from the television show "Cheers," sued a robot creator w h o made robots based upon Wendt's and Ratzenberger's likenesses without their p e rm iss io n and placed these robots in airport bars modeled upon the Cheers set. 125 F.3d 8 0 6 , 809 (9th Cir. 1997). The actors brought a claim under § 1125(a) for false e n d o rs e m e n t. Id. The Ninth Circuit stated that "[a] false endorsement claim based on the u n a u th o riz e d use of a celebrity's identity . . . alleges the misuse of a trademark, i.e., a s ym b o l or device such as a visual likeness, vocal imitation, or other uniquely distinguishing c h a ra c te ris tic , which is likely to confuse consumers as to the plaintiff's sponsorship or a p p ro v a l of the product." Id. at 812 (quotation omitted). The Court again applied the m o d if ie d Sleekcraft factors and held a genuine issue of material fact remained as to whether th e robots created a likelihood of consumer confusion as to the actors' association with or s p o n s o rs h ip of the bars. Id. at 812-14. In each of these cases, the Ninth Circuit set forth the Sleekcraft factors to c o n s id e r in determining whether a likelihood of confusion exists in a celebrity endorsement o r association case: 1 . the level of recognition that the plaintiff has among the segment of th e society for whom the defendant's product is intended; 2 . the relatedness of the fame or success of the plaintiff to the d e f e n d a n t's product; 3 . the similarity of the likeness used by the defendant to the actual p la in tif f ; 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. D o w n in g

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?