Estate of James Oscar Smith et al v. Cash Money Records, Inc. et al

Filing 209

OPINION & ORDER re: 189 MOTION for Summary Judgment; 199 MOTION to Preclude; 184 MOTION for Partial Summary Judgment: While Drake may have filed counterclaims only because Counterclaim Defendants sued him, that does not necessari ly mean that his claims are frivolous. For the foregoing reasons, the parties' dueling motions for summary judgment (ECF Nos. 184 and 189) and Counterclaim Defendants' motion for judgment on the pleadings (ECF No. 189) are denied. Countercl aim Defendants' motion to strike (ECF No. 199) is denied except for that portion seeking to strike the first sentence of paragraph five in the Tyler declaration. The Clerk of Court is directed to terminate the motions pending at ECF Nos. 184, 18 9, and 199. The parties are directed to appear for a status conference to fix an expert discovery schedule on May 31, 2018 at 12:00 p.m. (Status Conference set for 5/31/2018 at 12:00 PM before Judge William H. Pauley III.) (Signed by Judge William H. Pauley, III on 5/15/2018) (jwh)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

ESTATE OF JAMES OSCAR SMITH, et
ano.,
Plaintiffs,
-againstCASH MONEY RECORDS, INC., et al.,
Defendants.

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14cv2703
OPINION & ORDER

WILLIAM H. PAULEY III, Senior United States District Judge:
Counterclaimant Aubrey Drake Graham (“Drake”) and Counterclaim Defendants
Hebrew Hustle, Inc. (“Hebrew Hustle”) and Stephen Hacker (“Hacker,” and together with
Hebrew Hustle, “Counterclaim Defendants”) bring dueling motions for summary judgment on
Drake’s counterclaims. Drake moves for summary judgment on his common law right of
publicity and California Civil Code § 3344 claims, while Counterclaim Defendants move for
summary judgment on all four counterclaims. Counterclaim Defendants also move for judgment
on the pleadings under Federal Rule of Civil Procedure 12(c), and to strike two declarations that
Drake filed in support of his motion for summary judgment. For the reasons that follow, the
parties’ motions for summary judgment and Counterclaim Defendants’ motion for judgment on
the pleadings are denied. Counterclaim Defendants’ motion to strike is granted in part and
denied in part.
BACKGROUND
In April 2014, Hebrew Hustle, with the Estate of James Oscar Smith, sued Drake
and others, alleging that Drake infringed the copyright to Smith’s track “Jimmy Smith Rap” by

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sampling it in “Pound Cake/Paris Morton Music 2.” (See Complaint, ECF No. 2 (“Compl.”),
¶¶ 19, 32–35.) See also Estate of Smith v. Cash Money Records, Inc., 253 F. Supp. 3d 737, 742–
44 (S.D.N.Y. 2017). In May 2017, this Court held that Drake’s sampling was protected under
the fair use doctrine. Estate of Smith, 253 F. Supp. 3d at 752.
With that portion of this lawsuit resolved, the parties began litigating Drake’s
Counterclaims. Those counterclaims are: (1) false endorsement under the Lanham Act; (2)
violation of California’s common law right of publicity; (3) violation of California Civil Code
§ 3344; and (4) unfair competition under California Business & Professions Code § 17200 et seq.
(First Amended Answer to the Complaint and Counterclaims of Defendant Aubrey Drake
Graham, ECF No. 41 (“Counterclaims”) ¶¶ 18–43.)
The facts undergirding the Counterclaims are relatively straightforward. Drake is
a successful recording artist, rapper, songwriter, and actor. (Compl. ¶ 22.) When this lawsuit
was filed, Drake had “sold over five (5) million albums worldwide and earned a Grammy
Award.” (Compl. ¶ 22.) Hebrew Hustle provides music publishing and management services to
individuals in the music industry. (Rule 56.1 Joint Statement of Undisputed Facts and Statement
of Additional Facts for which No Genuine Dispute Exists of Counterclaim Pl. Aubrey Drake
Graham, ECF No. 187 (“Joint 56.1 Statement”), ¶ 1.) Hacker is Hebrew Hustle’s sole owner.
(Joint 56.1 Statement ¶ 2.) He operates, designs, and makes changes to the website
www.hebrewhustle.com (the “Website”). (Joint 56.1 Statement ¶ 3; Decl. of Stephen Hacker,
ECF No. 90 (“Hacker Decl.”) ¶ 2.)

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From December 2013 to July 2014, the Website included two references to Drake.
First, the Website’s homepage displayed Drake’s photograph (the “Photograph”). (Joint 56.1
Statement ¶¶ 4–5; Ex. A.) The Photograph appeared as follows:

In the Photograph, Drake is seen to the left of the rappers professionally known as
Lil Wayne and Birdman. (Joint 56.1 Statement ¶ 9, Ex. A.) Drake and Lil Wayne each display
their middle finger. (Joint 56.1 Statement, Ex. A.) The Photograph was placed alongside
approximately twenty to forty other photographs, each depicting other musical artists or album
covers. (Joint 56.1 Statement, Ex. A.) 1
Website visitors had to scroll down the homepage to see the Photograph.
(Counterclaim-Defs.’ Rule 56.1 Statement of Undisputed Facts Submitted in Supp. of their Mot.

1

The parties dispute the precise number of photographs displayed, and Counterclaim Defendants submit an
exhibit showing more photographs than seen in the joint exhibit agreed to by the parties. (Compare Joint 56.1
Statement, Ex. A (jointly agreed exhibit), with Decl. of Stephen Hacker, ECF No. 190, Ex. H.) The precise number
of photographs that were displayed does not affect this Court’s analysis.

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for Summ. J., ECF No. 192, ¶ 6.) When a visitor clicked the Photograph, text appeared
describing a recently released Lil Wayne song that “Hebrew Hustle presented . . . to [Lil] Wayne
shortly after [Lil Wayne] was released from his prison stint at Rikers Island.” (Joint 56.1
Statement ¶ 10, Ex. A.) Hacker acquired the Photograph from a third-party internet source,
without obtaining Drake’s consent, license, or permission to display it. (Joint 56.1 Statement
¶¶ 6–7.)
The second reference to Drake was on the Website’s “Bio” page, where his name
appeared in the following sentence: “Stephen has played a heavy hand with his clients in the
creation of hit songs for the likes of Eminem, Jay-Z, Kanye West, Lil Wayne, Drake, Nicki
Minaj and others.” (Hacker Decl. Ex. D.) That sentence appeared at the end of a threeparagraph description of Hacker’s career. (Hacker Decl. ¶ 3(a), Ex. D.) Again, Hacker did not
obtain Drake’s consent, license, or permission to use his name. (Joint 56.1 Statement ¶ 7.)
Counterclaim Defendants’ clients never wrote or produced music for Drake, nor
did they enter into any agreements with him. (Joint 56.1 Statement ¶ 12.) However, they claim
to have managed musicians who either collaborated with or produced unreleased music for him.
(Joint 56.1 Statement ¶ 11.) Hacker removed the two references to Drake on the day that
Drake’s attorneys contacted him. (Hacker Decl. ¶ 9.) 2
LEGAL STANDARD
“The standards to be applied for a motion for judgment on the pleadings pursuant
to Rule 12(c) are the same as those applied to a motion to dismiss pursuant to Rule 12(b).” SEC
v. Rorech, 673 F. Supp. 2d 217, 220 (S.D.N.Y. 2009). To survive a motion to dismiss, “a

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Drake argues briefly that this removal constitutes spoliation and warrants an adverse inference. (See
Counterclaim Pl. Aubrey Drake Graham’s Mem. of Law in Opp’n to Counterclaim Defs.’ Mot. for Summ. J. and
Dismissal of the Claims of the Counterclaim Pl., ECF No. 202, at 14–15, 20–21.) The merits of that argument are
reserved for trial.

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complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is
plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 677 (2009) (citing Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 570 (2007)). “On a 12(c) motion, the court considers the complaint, the
answer, any written documents attached to them, and any matter of which the court can take
judicial notice for the factual background of the case.” L–7 Designs, Inc. v. Old Navy, LLC, 647
F.3d 419, 422 (2d Cir. 2011) (internal citation and quotation marks omitted).
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); see Davis v. Blige, 505 F.3d 90, 97 (2d Cir. 2007). The moving party bears the
burden of demonstrating the absence of any genuine dispute of material fact. Adickes v. S. H.
Kress & Co., 398 U.S. 144, 157 (1970). “A party may not rely on mere speculation or conjecture
as to the true nature of the facts to overcome a motion for summary judgment [as m]ere
conclusory allegations or denials cannot by themselves create a genuine issue of material fact
where none would otherwise exist.” Hicks v. Baines, 593 F.3d 159, 166 (2d Cir. 2010) (internal
citation, quotation marks, and alterations omitted).
In resolving a motion for summary judgment, a court resolves all ambiguities and
draws all reasonable inferences against the movant. See Dickerson v. Napolitano, 604 F.3d 732,
740 (2d Cir. 2010). On dueling motions for summary judgment, the court must evaluate each
party’s motion on its merits and determine whether either is entitled to judgment as a matter of
law. Coutard v. Mun. Credit Union, 848 F.3d 102, 114 (2d Cir. 2017).
Under Federal Rule of Civil Procedure 37(c), “[i]f a party fails to provide
information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use
that information or witness to supply evidence on a motion, at a hearing, or a trial, unless the

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failure was substantially justified or is harmless.” Fed. R. Civ. P. 37(c). “The purpose of [Rule
37] is to prevent the practice of ‘sandbagging’ an opposing party with new evidence.” Ebewo v.
Martinez, 309 F. Supp. 2d 600, 607 (S.D.N.Y. 2004) (internal citation omitted). “[P]reclusion is
a drastic remedy and therefore [warrants] discretion and caution.” Ventra v. United States, 121
F. Supp. 2d 326, 332 (S.D.N.Y. 2000).
DISCUSSION
I.

Counterclaim Defendants’ Rule 12(c) Motion and Motion to Strike
Counterclaim Defendants move for judgment on the pleadings on Drake’s state-

law claims. That motion derives from a single word Drake neglected to include in his
Counterclaims. In his pleading, Drake described California as his residence, rather than his
domicile. (See Counterclaims ¶ 4 (“Graham is an individual residing in the State of
California.”).)
“A federal court sitting in diversity or adjudicating state law claims that are
pendant to a federal claim must apply the choice of law rules for the forum state.” Rogers v.
Grimaldi, 875 F.2d 994, 1002 (2d Cir. 1989). In New York, “questions concerning personal
property rights are to be determined by reference to the substantive law of [a person’s]
domicile.” SE Bank, N.A. v. Lawrence, 489 N.E.2d 744, 745 (N.Y. 1985); see also Rogers, 875
F.2d at 1002 (Oregon law applied to Oregon domiciliary’s right of publicity claim); Cummings
v. Soul Train Holdings LLC, 67 F. Supp. 3d 599, 602 (S.D.N.Y. 2014) (Illinois law applied to
Illinois domiciliary’s right of publicity claim). Because Drake described California as his
residence, and did not specify his domicile, Counterclaim Defendants assert that Drake’s
California state-law claims fail as a matter of law.

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“Domicile is not necessarily synonymous with residence . . . and one can reside
in one place but be domiciled in another . . . .” Miss. Band of Choctaw Indians v. Holyfield, 490
U.S. 30, 47 (1989) (internal citations and quotation marks omitted). Instead, “[r]esidence in fact,
coupled with the purpose to make the place of residence one’s home, are the essential elements
of domicile.” Texas v. Florida, 306 U.S. 398, 424 (1939); see also Hai Yang Liu v. 88
Haborview Realty, LLC, 5 F. Supp. 3d 443, 446 (S.D.N.Y 2014).
While Counterclaim Defendants may be correct that Drake erred in alleging
residence rather than domicile, this argument is much ado about nothing. That is because four
years of intervening discovery have corrected Drake’s pleading error.
The Second Circuit addressed a similar situation in Ideal Steel Supply
Corporation v. Anza, 652 F.3d 310 (2d Cir. 2011). There, the Court of Appeals reviewed a
district court’s dismissal of a RICO claim under Rule 12(c) based on deficiencies in the
Complaint. Ideal Steel, 652 F.3d at 323. Like the case at hand, the motion had been brought
after discovery was complete. Ideal Steel, 652 F.3d at 325. The Second Circuit vacated the
district court’s dismissal and remanded for trial, holding that a Rule 12(c) motion need not “be
granted if evidence that had already been produced during discovery would fill the perceived
gaps in the Complaint.” Ideal Steel, 652 F.3d at 325, 328. In other words, “the [district] court
should have taken into account” that discovery had plugged any gaps in the pleading. Ideal
Steel, 652 F.3d at 325; see also Keiler v. Harlequin Enters. Ltd., 751 F.3d 64, 71 (2d Cir. 2014)
(denying motion to dismiss “where discovery had apparently begun to adduce additional
information supportive of plaintiffs’ claim,” and noting Twombly does “not require that a
complaint be dismissed if evidence had already been produced during discovery that would fill
the perceived gaps in the complaint”).

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Here, although Drake failed to plead domicile, in July 2017, he provided a
verified statement that he is a “resident and domiciliary of the State of California.” (Joint 56.1
Statement, Ex. B, at 2.) Under Ideal Steel’s guidance, that response corrected Drake’s minor
pleading deficiency.
Indeed, Counterclaim Defendants should not be surprised that Drake clarified
California as his domicile. In August 2014, one month after Drake filed his Counterclaims,
Counterclaim Defendants asserted an affirmative defense that Drake “is not domiciled in the
State of California.” (Reply of Hebrew Hustle, Inc. to Counterclaims of Aubrey Drake Graham,
ECF No. 46, ¶ 45; Reply of Stephen Hacker to Counterclaims of Aubrey Drake Graham, ECF
No. 47, ¶ 45.) Clearly, they knew that Drake meant to plead California as his domicile, and had
made a drafting error. That minor mistake has been corrected.
Counterclaim Defendants’ rejoinder that Drake provides no underlying proof of
domicile is of no moment for purposes of their Rule 12(c) motion. A pleading does not require
underlying proof—it simply requires “a short and plain statement of the claim showing that the
pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). Accordingly, Counterclaim Defendants’
Rule 12(c) motion, filed after the close of discovery, is denied.
In moving for summary judgment, Drake provides two additional documents
asserting domicile: (1) his own declaration; and (2) a declaration from his business manager,
Larry Tyler. (See Decl. of Aubrey Drake Graham in Supp. of Mot. for Summ. J., ECF No. 185
(“Drake Decl.”); Decl. of Larry Tyler in Supp. of Mot. for Summ. J., ECF No. 186 (“Tyler
Decl.”).) Counterclaim Defendants move to strike these declarations under Federal Rule of Civil
Procedure 37(c)(1), arguing that Drake and Tyler were not listed in Drake’s Rule 26 disclosures.

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Although Drake and Tyler may not have been listed in those disclosures, in
September and October 2017, Drake offered both himself and Tyler as deposition witnesses.
(See Decl. of Jeffrey M. Movit in Opp’n to Counterclaim Defs.’ Mot. for Summ. J., and
Dismissal of the Claims of the Counterclaim Pl., ECF No. 200 (“Movit Decl.”), at ¶ 3; Ex. A.)
Counterclaim Defendants chose to waive those depositions, and instead proposed that the parties
forego additional fact discovery in exchange for a joint stipulation of facts. (Movit Decl. ¶¶ 4–5;
Exs. B, C.) In other words, months before Drake and Tyler submitted their declarations,
Counterclaim Defendants waived their rights to depose them.
Under these circumstances, the omission of Drake and Tyler from Drake’s initial
disclosures was harmless. See Advisory Committee’s Notes to 1993 Amendments to Fed. R.
Civ. P. 37 (harmless conduct includes “the inadvertent omission from a Rule 26(a)(1)(A)
disclosure of the name of a potential witness known to all parties”); Harris v. Donohue, 2017 WL
3638452, at *2 (N.D.N.Y. Aug. 23, 2017) (denying sanctions where “[p]laintiff was clearly
aware that both [witnesses] possessed relevant knowledge [and] could have taken the deposition
of either individual at an appropriate time prior to trial and chose not to”); Fleet Capital Corp. v.
Yamaha Motor Corp., U.S.A., 2002 WL 31108380, at *2 (S.D.N.Y. Sept. 23, 2002) (“[W]hile
[plaintiff] technically violated Rules 26(a) and 26(e) . . . its error was ‘innocent’ and harmless.”).
Accordingly, this Court declines to strike Drake and Tyler’s declarations.
Finally, Counterclaim Defendants move to strike certain statements in Tyler’s
declaration, arguing that they are not based on personal knowledge. Counterclaim Defendants
reach that conclusion because Tyler prefaces certain averments with the phrase “to the best of his
knowledge,” or that he “understands that,” or is “informed and believe[s].” (See Tyler Decl.
¶¶ 3–5.)

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Under Federal Rule of Evidence 602, a witness must “testify on the basis of
personal knowledge.” SEC v. Singer, 786 F. Supp. 1158, 1167 (S.D.N.Y. 1992). But “a
witness’[s] conclusion based on personal observations over time may constitute personal
knowledge . . . .” Singer, 786 F. Supp. at 1167 (emphasis original); see also New York ex rel.
Spitzer v. St. Francis Hosp., 94 F. Supp. 2d 423, 425 (S.D.N.Y. 2000) (denying motion to strike
statements claimed to be hearsay because they were based on declarant’s personal observations
over time).
Tyler declares that he has “personal knowledge of the matters [he] set[s] forth
herein, except where stated to be upon information and belief.” (Tyler Decl. ¶ 1.) He explains
that his knowledge was acquired through handling of various matters for Drake. (Tyler Decl.,
¶¶ 2–3.) It is reasonable to conclude that through that work, Tyler developed some personal
knowledge of matters including where Drake lives and intends to live in the future. Cf. Folio
Impressions, Inc. v. Byer Cal., 937 F.2d 759, 763–64 (2d Cir. 1991) (“The fact that [declarant]
stated she ‘believed’ [something] rather than that she ‘knew’ so is not a basis for excluding her
testimony . . . .”) Therefore, Counterclaim Defendants’ motion to strike the statements that Tyler
prefaces are “to the best of [his] knowledge” or that he “understands” to be true or is “aware of”
are denied. See SCR Joint Venture L.P. v. Warshawsky, 559 F.3d 133, 138 (2d Cir. 2009)
(overruling district court’s striking of statements prefaced by “[t]o my knowledge”).
The one portion of Tyler’s declaration that does not appear to be based on
personal knowledge is the first sentence of paragraph five. There, Tyler describes that he is
“informed and believe[s] that, from 2014 to the present, Mr. Graham has intended, and continues
to intend, to maintain his principal and permanent residence and domicile in the State of
California, i.e., for the State of California to be his permanent home.” (See Tyler Decl. ¶ 5.) The

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requirement that an “affidavit [] be made on personal knowledge” under Federal Rule of Civil
Procedure 56(e)(1) “is not satisfied by assertions made on information and belief.” Hicks, 593
F.3d at 167 (quoting SCR Joint Venture L.P., 559 F.3d at 138) (internal quotation marks
omitted). Notably, Tyler specifically excludes statements made “upon information and belief”
from matters of which he has personal knowledge. (See Tyler Decl. ¶ 1.)

Therefore, this Court

grants that portion of Counterclaim Defendants’ motion to strike directed at the first sentence of
paragraph five of Tyler’s declaration.
II.

Motions for Summary Judgment
1. Lanham Act
Counterclaim Defendants move for summary judgment on Drake’s Lanham Act

claim. Under the Lanham Act, an individual is prohibited from using “any word, term, name,
symbol, or device, or any combination thereof . . . which—is likely to cause confusion, or to
cause mistake, or 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 . . . .” 15 U.S.C. § 1125(a)(1). This provision “permits
celebrities to vindicate property rights in their identities against allegedly misleading commercial
use by others.” Parks v. LaFace Records, 329 F.3d 437, 445 (6th Cir. 2003).
Drake alleges that Counterclaim Defendants’ use of the Photograph and his name
misleadingly implied that Drake endorsed Hebrew Hustle. “The elements of a false endorsement
claim under the Lanham Act are that the defendant, (1) in commerce, (2) made a false or
misleading representation of fact (3) in connection with goods or services (4) that is likely to
cause consumer confusion as to the origin, sponsorship or approval of the goods or services.”
Roberts v. Bliss, 229 F. Supp. 3d 240, 248 (S.D.N.Y. 2017) (internal citation omitted); see also

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Roberts, 229 F. Supp. 3d at 249 (a Lanham Act claim may be based on “the misleading
implication that a celebrity or public figure endorses a product, when she does not”). “[T]he
basic inquiry in an unfair competition action is whether the public is likely to be misled into
believing that the defendant is distributing products manufactured or vouched for by the
plaintiff.” Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 79 (2d Cir. 1981) (internal citation
and quotation marks omitted).
Counterclaim Defendants do not dispute that Hacker referenced Drake in
commerce in connection with goods or services. Instead, they contend that the use was neither
false nor misleading, and it therefore would not confuse a customer into thinking that Drake
endorsed Hebrew Hustle.
First, this Court cannot state as a matter of law that placing Drake’s Photograph
on the Website’s homepage, followed by a sentence on the Bio page that Hacker played a “heavy
hand” in creating songs for Drake, was not misleading. In fact Hebrew Hustle and Hacker had
very little to do with Drake —they never worked directly with or entered into any contracts with
him. Indeed, Counterclaim Defendants cite to only three minor tangential connections between
Hebrew Hustle and Drake. (Joint 56.1 Statement ¶ 11.) Placing Drake on both the homepage
and Bio page could have misleadingly implied that their connection was much stronger. See
Beastie Boys v. Monster Energy Co., 66 F. Supp. 3d 424, 450 (S.D.N.Y. 2014) (using Beastie
Boys in Monster Energy’s commercial could misleadingly imply “that the band was endorsing
Monster Energy”); Burck v. Mars, Inc., 571 F. Supp. 2d 446, 455–56 (S.D.N.Y. 2008) (factual
questions were raised by M&M’s use of the “Naked Cowboy” figure).

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Turning to the likelihood of confusion, “courts in the Second Circuit employ an
eight-factor test originally laid out in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d
Cir. 1961).” Jackson v. Odenat, 9 F. Supp. 3d 342, 355 (S.D.N.Y. 2014). Those factors are:
(1) strength of the trademark; (2) similarity of the marks; (3)
proximity of the products and their competitiveness with one
another; (4) evidence that the senior user may “bridge the gap” by
developing a product for sale in the market of the alleged infringer’s
product; (5) evidence of actual consumer confusion; (6) evidence
that the imitative mark was adopted in bad faith; (7) respective
quality of the products; and (8) sophistication of consumers in the
relevant market.
Kelly-Brown v. Winfrey, 717 F.3d 295, 307 (2d Cir. 2013) (internal citation
omitted). These factors are not applied mechanically—rather, a court is to “focus[] on the
ultimate question of whether, looking at the products in their totality, consumers are likely to be
confused.” Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009).
When analyzing a false endorsement claim, “the ‘mark’ is the plaintiff’s persona and the
‘strength of the mark’ refers to the level of recognition that the plaintiff has among the
consumers to whom the advertisements are directed.” Jackson, 9 F. Supp. 3d at 356. Further,
“the quality of the products and ‘bridging the gap’ [elements] are often not considered.”
Jackson, 9 F. Supp. 3d at 356. “Normally, . . . likelihood of confusion is a factual question,
centering on the probable reactions of prospective purchasers of the parties’ goods.” Pirone v.
MacMillan, Inc., 894 F.2d 579, 584 (2d Cir. 1990).
Counterclaim Defendants contend that no reasonable visitor to the Website would
mistakenly conclude that Drake endorsed Hebrew Hustle. They rely principally on the Second
Circuit’s Pirone decision, holding that the defendant’s display of Babe Ruth in a baseball
calendar would not confuse consumers into thinking that Ruth endorsed the calendar. Pirone,
894 F.2d at 584–85. Instead, a reasonable customer would realize the calendar’s “photographs
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identify great ballplayers and by so doing indicate the contents of the calendar, not its source.”
Pirone, 894 F.2d at 584. By analogy, Counterclaim Defendants claim that a reasonable
consumer would realize that the references to Drake merely represented the kind of music that
Hebrew Hustle was involved in, not that Drake supported the company.
That argument fails because the facts are distinguishable from Pirone. This was
not a website set up to display famous musicians. It was a website meant to promote Hebrew
Hustle. Therefore, a reasonable visitor to the Website may have assumed that Drake’s presence
was meant to show Hacker works with Drake, and that Drake endorses Hebrew Hustle. Those
visitors were likely looking for music representation and production services, and may have been
enticed by seeing a celebrity that they recognized. There is no basis to assume such a customer
would automatically conclude that these references were meant only to show that Hebrew Hustle
works in hip-hop music. (See July 13, 2017 Hr’g Tr., ECF No. 161, at 16:1–3 (a consumer may
have assumed the photos were meant to show “the pantheon of people [that Hebrew Hustle]
represent[s]”)
In weighing the Polaroid factors, the majority weigh against Counterclaim
Defendants. The “mark” and “strength of the mark” are substantial— Drake is one of this
decade’s most popular musical artists, making him instantly recognizable to most Americans.
See Allen v. Nat’l Video, Inc., 610 F. Supp. 612, 627 (S.D.N.Y. 1985) (the extent of Woody
Allen’s fame equated to his likeness and name being strong “marks” in false endorsement
analysis). And Counterclaim Defendants did not use an image that merely resembled Drake—
they used his actual photograph.
There is also significant overlap between Drake’s fan base—consumers of hiphop music—and the most likely visitors to the Website—those looking for representation in the

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hip-hop industry. See Allen, 610 F. Supp. at 628 (noting overlap between Woody Allen’s fans—
movie consumers—and customers of a movie rental business). Further, Counterclaim
Defendants admit that they used Drake’s persona purposely. Although Drake has not submitted
evidence of actual confusion, this “need not be shown to prevail under the Lanham Act.” Lois
Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875 (2d Cir. 1986); Beastie Boys,
66 F. Supp. 3d at 456 (same).
Jackson v. Odenat is instructive. See 9 F. Supp. 3d at 354–60. There, the website
www.worldstarhiphop.com utilized a masthead displaying the rapper “50 Cent” and his group,
“G-Unit,” among other hip-hop artists. Jackson, 9 F. Supp. 3d at 349. Although Judge Keenan
recognized that “several hip-hop musicians on [the] masthead could suggest that [it] is merely
identifying the subject matter of the website,” the court nonetheless held that reasonable juries
could differ on whether a consumer would be “confused as to [50 Cent’s] sponsorship of
worldstarhiphop.com.” Jackson, 9 F. Supp. 3d at 357.
Counterclaim Defendants further try to distinguish this case by arguing that the
Photograph was not in close proximity to the Hebrew Hustle logo, and that it was among many
other photographs. While those are relevant considerations, they do not automatically defeat the
possibility of confusion. Nor is this Court persuaded by Counterclaim Defendants’ contention
that no customer could infer endorsement because Drake is holding up his middle finger. As
Counterclaim Defendants themselves recognized, such a symbol is merely “evocative of hip-hop
culture.” (Feb. 23, 2018 Hr’g Tr., ECF No. 207, at 15:4 –5.) At most, these contentions are
arguments properly presented to a jury.
In short, a visitor to the Website could have been confused into thinking Drake
endorsed Hebrew Hustle. When visitors saw Drake’s Photograph and a statement claiming

15

Hacker played a “heavy hand” in creating hit songs for him, they may have assumed Drake
endorsed Hebrew Hustle, even if that was not Counterclaim Defendants’ intent. See Allen, 610
F. Supp. at 628. (“Defendants may not have intended to imply that plaintiff actually endorsed
their product, but they happily risked creating that impression in an attempt to gain commercial
advantage through reference to plaintiff’s public image.”).
2. California Common Law Right of Publicity
Both parties move for summary judgment on Drake’s California common law
right of publicity claim. “[T]he right of publicity has developed to protect the commercial
interest of celebrities in their identities.” White v. Samsung Elecs. Am., Inc., 971 F. 2d 1395,
1398 (9th Cir. 1992) (internal citation omitted). A violation of this right is established through
showing: “(1) the defendant’s use of the plaintiff’s identity; (2) the appropriation of plaintiff’s
name or likeness to defendant’s advantage, commercially or otherwise; (3) lack of consent; and
(4) resulting injury.” Abdul-Jabbar v. Gen. Motors Corp., 85 F.3d 407, 413–14 (9th Cir. 1996);
Youngevity Int’l, Corp. v. Smith, 224 F. Supp. 3d 1022, 1027 (S.D. Cal. 2016). Unlike claims
under the Lanham Act, the common law right of publicity does not require establishing
likelihood of customer confusion. Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 778
F.3d 1059, 1072–73 (9th Cir. 2015).
Drake contends that he has satisfied all required elements of this claim. This
Court agrees that elements one and three are established and need no further analysis. Clearly,
Counterclaim Defendants used Drake’s likeness and that use was without Drake’s consent—
Hacker admits as much. (See Joint 56.1 Statement ¶¶ 4, 7; Hacker Decl. ¶ 2.) Instead,
Counterclaim Defendants argue that Drake fails to establish the second and fourth elements,

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namely, that the appropriation was to Counterclaim Defendants’ commercial advantage and that
Drake sustained resulting injury.
Counterclaim Defendants’ arguments that Drake’s likeness was not to their
commercial advantage are unpersuasive. For instance, they explain that the Photograph was just
one among many, rather than being central to the Website. But no authority that Counterclaim
Defendants cite holds that the use of a celebrity’s likeness must be paramount in order to find
commercial advantage. For instance, in Newcombe v. Adolf Coors Co., 157 F.3d 686 (9th Cir.
1998), while the Ninth Circuit held that commercial advantage had been shown through the
defendants’ use of a “drawing which resembled Newcombe [as] a central figure in the[ir]
advertisement,” Newcombe, 157 F.3d at 693, the Court of Appeals never held that Newcombe’s
status as the “central figure” was dispositive. And in any event, perhaps Drake was central to the
Website. After all, he was on the Website’s homepage, and was instantly recognizable among
lesser-known artists.
Moreover, even if Drake was placed among other celebrities, that does not
necessarily mean he conferred no commercial advantage on Hebrew Hustle. The right of
publicity does not disappear because a celebrity was merely one among others. See, e.g., In re
NCAA Student-Athlete Name & Likeness Licensing Litig., 724 F.3d 1268, 1276 n.7 (9th Cir.
2013) (“Having chosen to use the [plaintiffs’] likenesses, [defendant] cannot now hide behind the
numerosity of its potential offenses or the alleged unimportance of any one individual . . . .”).
Second, Counterclaim Defendants contend there was no commercial advantage
because Drake was not placed next to the Hebrew Hustle logo. But this argument is equally
unavailing, as no case places a proximity requirement between the use of a celebrity and the

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company’s name or logo. To the extent this argument bears on commercial advantage, it is a
question for a jury.
Counterclaim Defendants’ arguments are unconvincing because advertisers use
celebrities specifically to attract customers. “The first step toward selling a product or service is
to attract the customer’s attention. Because of a celebrity’s audience appeal, people respond
almost automatically to a celebrity’s name or picture.” Eastwood v. Superior Court, 149 Cal.
App. 3d 409, 420 (Cal. Ct. App. 1983), superseded by statute on other grounds as recognized in
KNB Enters. v. Matthews, 78 Cal. App. 4th 362, 367 n.5 (Cal. Ct. App. 2000). That is why
when Kareem Abdul-Jabbar sued General Motors Corporation for using his birth name, the
Ninth Circuit held that “[t]o the extent [General Motors’s] use of the plaintiff’s birth name
attracted television viewers’ attention, [General Motors] gained a commercial advantage.”
Abdul-Jabbar, 85 F.3d at 415.
Relatedly, Counterclaim Defendants contend their use of Drake qualifies as
“incidental use.” While “[t]he contours of the incidental use doctrine are not well-defined in
California . . . the general rule is that incidental use of a plaintiff’s name or likeness does not give
rise to liability.” Yeager v. Cingular Wireless, LLC, 673 F. Supp. 2d 1089, 1099–1100 (E.D.
Cal. 2009) (internal citation and quotation marks omitted). Determining whether a use was
incidental requires assessing factors “such as (1) whether the use has a unique quality or value
that would result in commercial profit to the defendant; (2) whether the use contributes
something of significance; (3) the relationship between the reference to the plaintiff and the
purpose and subject of the work; and (4) the duration, prominence or reputation of the name or
likeness relative to the rest of the publication.” Davis v. Elec. Arts Inc., 775 F.3d 1172, 1180
(9th Cir. 2015) (internal citation omitted).

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This Court does not find as a matter of law that Counterclaim Defendants’ use of
Drake was “incidental.” Drake’s inclusion likely offered some “unique quality or value” to the
Website. See Davis, 775 F.3d at 1180; see also Restatement (Second) of Torts § 652C, comment
d (incidental use applies when a likeness is published “for purposes other than taking advantage
of [a celebrity’s] reputation, prestige or other value associated with him”) (emphasis added).
Simply put, if Drake did not add something to the Website, then this Court questions why Hacker
put him there (twice).
Finally, Counterclaim Defendants’ reliance on D’Andrea v. Rafla-Demetrious is
misplaced. See 972 F. Supp. 154 (E.D.N.Y 1997). First, D’Andrea is not a California case.
And on the merits, D’Andrea dealt with a medical resident who sued his employer for “using a
picture of him, without his consent, in a brochure.” D’Andrea, 972 F. Supp. at 155. The Eastern
District of New York held the use was “unquestionably incidental” as “D’Andrea’s photograph
was selected from among many . . . for the purpose of filling up space on a page.” D’Andrea,
972 F. Supp. at 157. While that situation has some similarities, here, Drake was likely not
placed on the Website merely to “fill up space.” See Yeager, 673 F. Supp. 2d at 1100 (“Even if
the mention of a plaintiff[] . . . is brief, if the use stands out prominently . . . or enhances the
marketability of the defendant’s product or service, the doctrine of incidental use is
inapplicable.”)
Counterclaim Defendants also contend that Drake fails to establish injury. But
courts analyzing a common law right of publicity claim routinely “presume [injury] has been
established if there is sufficient evidence to prove the first three elements.” Fraley v. Facebook,
Inc., 830 F. Supp. 2d 785, 807 (N.D. Cal. 2011); see also Solano v. Playgirl, Inc., 292 F.3d 1078,
1090 (9th Cir. 2002); Newcombe, 157 F.3d at 693. “Indeed, in cases involving celebrity

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plaintiffs, the mere allegation that the plaintiff was not compensated has been deemed sufficient
to satisfy the injury prong.” Fraley, 830 F. Supp. 2d at 807. Accordingly, an unauthorized use of
Drake’s likeness to Counterclaim Defendants’ commercial advantage satisfies the injury prong.
The calculation of those damages can be explored through expert discovery.
Counterclaim Defendants also move to preclude Drake from offering “any
evidence relating to the alleged commercial value of [his] name or image.” (Notice of Motion,
ECF No. 199, at 1.) This motion springs from Drake’s July 2017 interrogatory answer, stating
that a computation of damages was premature “until Graham receives discovery from
Counterclaim Defendants that is sufficient to establish the full extent of their unauthorized use of
his name and likeness, and financial information reflecting revenues received by Counterclaim
Defendants . . . .” (Decl. of Anthony Motta in Opp’n to Counterclaim-Pl.’s Mot. for Summ. J.
and in Supp. of Counterclaim-Defs.’ Mot. to Preclude, ECF No. 196, Ex. R, at 4.) Based on that
answer, Counterclaim Defendants assert that Drake waived damages arising from the
commercial value of his persona.
This motion is denied, as Drake never waived any category of damages. In his
Counterclaims, Drake asserted that he “suffered injury and actual damages in an amount to be
proven at trial.” (Counterclaims ¶ 36.) Drake’s interrogatory answer did not unambiguously
waive damages relating to the commercial value of his name and image. See Tray-Wrap, Inc. v.
Six L’s Packing Co., 984 F.2d 65, 68 (2d Cir.1993) (“[T]he conduct said to constitute a waiver
must be clear and unequivocal, as waivers are never to be lightly inferred.”); Am. Trucking
Assoc., Inc. v. N.Y. State Thruway Auth., 238 F. Supp. 3d 527, 540 (S.D.N.Y. 2017), aff’d 886
F.3d 238 (2d Cir. 2018) (“Waiver is the conscious and voluntary relinquishment of a known
right.”) (emphasis omitted).

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Counterclaim Defendants overlook the fact that this Court granted the parties’
joint request to defer expert discovery until resolution of these motions. (Order, ECF No. 167.)
Clearly, Drake intends to rely on expert discovery to calculate damages, including those arising
from his commercial value.
Material issues of fact also preclude Drake’s motion for summary judgment.
First, this Court cannot conclude on this record that Drake has established California as his
domicile. “The determination of a party’s domicile is a mixed question of law and fact.” Lew v.
Moss, 797 F.2d 747, 750 (9th Cir. 1986); see also Hai Yang Liu, 5 F. Supp. 3d at 446. All that
Drake offers is his and his business manager’s sworn declarations, but no underlying evidence.
While those declarations were sufficient to plead domicile, that does not mean they establish
domicile. See Dist. of Columbia v. Murphy, 314 U.S. 441, 456 (1941) (“One’s testimony with
regard to his intention [regarding domicile] is of course to be given full and fair consideration,
but is subject to the infirmity of any self-serving declaration, and may frequently lack
persuasiveness or even be contradicted or negatived by other declarations and inconsistent
acts.”).
In Bruce Lee Enterprises v. A.V.E.L.A., Inc., 2013 WL 822173 (S.D.N.Y. Mar. 6,
2013), the court addressed a right of publicity claim in which the parties “dispute[d] Bruce Lee’s
domicile.” 2013 WL 822173, at *15. Reviewing the record, Judge Wood determined that
“neither party ha[d] carried its burden” in establishing domicile, as there was conflicting
testimony over whether Lee relocated from California to Hong Kong with the intent to remain
there indefinitely. Bruce Lee Enters., 2013 WL 822173, at *15. Therefore, Lee’s domicile at
his time of death remained “a genuine issue of material fact.” Bruce Lee Enters., 2013 WL
822173, at *15.

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Here, Counterclaim Defendants vigorously contend that Drake’s domicile is
Toronto, Canada (his hometown), and Drake acknowledges that he is constructing a home there.
(See Drake Decl. ¶ 3.) Although Counterclaim Defendants have “the burden of proving [] a
change in domicile by clear and convincing evidence, see Katz v. Goodyear Tire & Rubber Co.,
737 F.2d 238, 243 (2d Cir. 1984), this Court understands that Counterclaim Defendants were
frustrated at every turn in their effort to obtain evidence on this point. (See Decl. of Anthony
Motta, ECF No. 191, Ex. N, at, 19 (Drake refused to produce documents concerning his United
States and Canada residences); Ex. P, at 6–17 (Drake’s refusal to produce motor vehicle licenses,
driver’s licenses, IDs, bank accounts, tax returns, et cetera). Accordingly, “[w]hile it is possible
that the issue of domicile might be determined by way of a summary judgment motion, it
[cannot] be so determined on the evidence which was presented.” Katz, 737 F.2d at 244.
Additionally, although the majority of courts hold that a defendant’s use of a
celebrity’s likeness was likely to that defendant’s commercial advantage, those decisions did not
hold that commercial advantage established as a matter of law. See Abdul-Jabbar, 85 F.3d at
415–16 (holding General Motors gained a commercial advantage “[t]o the extent [that its] use . .
. attracted television viewer’s attention” and “remand[ing] for trial.”); Wendt v. Host Int’l, Inc.,
125 F.3d 806, 811 (9th Cir. 1997) (“The ultimate issue for the jury to decide is whether the
defendants are commercially exploiting the likeness of [plaintiffs] intending to engender profits
to their enterprises.”); White, 971 F.2d at 1399, 1402 (Vanna White “alleged facts showing that
[defendants] had appropriated her identity,” and remanding the case “to the jury”); Eastwood,
149 Cal. App. 3d 409, 421 (holding only that “Eastwood has sufficiently alleged that Enquirer
has commercial exploited his name, photograph, and likeness under [] the common law”)
(emphasis added). Drake’s reliance on Branca v. Mann, 2012 WL 3263610, at *6 (C.D. Cal.

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Aug. 10, 2012) is not persuasive, as there, the right of publicity claim was ancillary to other
claims and granted without a thorough analysis.
Hacker attests that “[n]either [he] nor Hebrew Hustle [] ever received any . . .
communications from a third party concerning either the reference to Drake’s name on the
Website or the Photograph.” (Hacker Decl. ¶ 11.) The minor presence of Drake on the website,
coupled with the fact that when the Photograph was clicked it displayed text regarding a Lil
Wayne song (not a Drake song), could lead a jury to determine Drake’s use was not to
Counterclaim Defendants’ commercial advantage. Accordingly, while Drake has adduced
evidence that his likeness was likely to Counterclaim Defendants’ commercial advantage, he has
not come forward with evidence demonstrating that there is no material issue of fact.
3. California Civil Code § 3344
California Civil Code § 3344 complements the common law right of publicity and
adds two elements: (1) the use of the person’s identity must have been knowing; and (2) there
must have been “a direct connection between the use [of plaintiff’s identity] and the
[defendant’s] commercial purpose.” Abdul-Jabbar, 85 F.3d at 414 (internal citation, quotation
marks, and alteration omitted); see Downing v. Abercrombie & Fitch, 265 F.3d 994, 1001 (9th
Cir. 2001) (“The remedies provided for under California Civil Code § 3344 complement the
common law cause of action; they do not replace or codify the common law.”) While the
common law right allows the use to be to a defendant’s advantage “commercial or otherwise,”
under § 3344, the use must be commercial. See Cohen v. Facebook, Inc., 798 F. Supp. 2d 1090,
1094 (N.D. Cal. 2011).
Specifically, under § 3344:
Any person who knowingly uses another’s name, voice, signature,
photograph, or likeness, in any manner, on or in products,
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merchandise, or goods, or for purposes of advertising or selling, or
soliciting purchases of, products, merchandise, goods or services,
without such person’s prior consent . . . shall be liable for any
damages sustained by the person or persons injured as a result
thereof.
Cal. Civ. Code § 3344(a). “‘Knowing’ applies both to the use of the plaintiff’s name or likeness
and to the purpose of advertising or solicitation of purchases.” Wong v. Golden State Auction
Gallery, Inc., 2016 WL 829073, at *3 (N.D. Cal. Mar. 3, 2016).
Hacker admits that he “knowingly” placed the Photograph and Drake’s name on
the Website. (See Joint 56.1 Statement ¶ 6–7; Hacker Decl. ¶ 2 (stating that Hacker “set up” and
“made all changes to the Website”).) But he denies “knowingly” using them for advertising and
contends they were never meant to promote Hebrew Hustle. The validity of that representation
is a quintessential jury question.
Similarly, it is unclear if there was a “direct connection” between Hebrew
Hustle’s use of Drake and its Website’s commercial purpose. Under § 3344, this is a
determination of fact. See Cal. Civ. Code § 3344(e) (“[I]t shall be a question of fact whether or
not the use of the person’s name, . . . photograph, or likeness was so directly connected with the
commercial sponsorship or with the paid advertising as to constitute a use for which consent is
required . . . .”) (emphasis added); see also Newcombe, 157 F.3d at 694 (“the connection
between defendant’s use of [plaintiff’s] likeness and the commercial sponsorship . . . is a matter
of fact”); Clark v. Am. Online Inc., 2000 WL 33535712, at *7 (C.D. Cal. Nov. 30, 2009) (same).
4. California Business & Professional Code § 17200 et seq.
Counterclaim Defendants also move for summary judgment on Drake’s claim
under California Business & Professional Code § 17200 et seq. That statutory scheme, known as
the “California Unfair Competition Law” or “UCL,” “prohibits unfair competition by means of

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any unlawful, unfair or fraudulent business practice.” Birdsong v. Apple, Inc., 590 F.3d 955,
959 (9th Cir. 2009). Unfair competition is defined broadly as “any unlawful, unfair or fraudulent
business act or practice and unfair, deceptive, untrue or misleading advertising . . . .” Cal. Bus.
& Prof. Code § 17200.
Counterclaim Defendants contend the UCL claim fails because there was no
underlying violation of the Lanham Act or right to publicity, and therefore, no unlawful practice.
“[A]ctions pursuant to § 17200 are substantially congruent to claims made under the Lanham
Act.” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1153 (9th Cir. 2002) (internal citation,
quotation marks, and alteration omitted); see Acad. of Motion Picture Arts & Sci. v. Creative
House Promotions, Inc., 944 F.2d 1446, 1457 (9th Cir. 1991) (“Under both [the Lanham Act and
the UCL], the ultimate test is whether the public is likely to be deceived or confused by the
similarity of the marks.”) (internal citation and quotation marks omitted). When genuine issues
of material fact preclude summary judgment on a Lanham Act claim, such relief is also
inappropriate under the UCL. See Entrepreneur Media, 279 F.3d at 1153; Meeker v. Meeker,
2004 WL 2457793, at *9 (N.D. Cal. July 6, 2004). Because summary judgment is denied on
Drake’s other claim, this Court also denies summary judgment on the UCL claim.
CONCLUSION
While Drake may have filed counterclaims only because Counterclaim
Defendants sued him, that does not necessarily mean that his claims are frivolous. For the
foregoing reasons, the parties’ dueling motions for summary judgment (ECF Nos. 184 and 189)
and Counterclaim Defendants’ motion for judgment on the pleadings (ECF No. 189) are denied.
Counterclaim Defendants’ motion to strike (ECF No. 199) is denied except for that portion
seeking to strike the first sentence of paragraph five in the Tyler declaration. The Clerk of Court

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is directed to terminate the motions pending at ECF Nos. 184, 189, and 199. The parties are
directed to appear for a status conference to fix an expert discovery schedule on May 31, 2018 at
12:00 p.m.

Dated: May 15, 2018
New York, New York

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