RSR ART, LLC v. Bob Ross, Inc.

Filing 74

MEMORANDUM OPINION. Signed by District Judge Liam O'Grady on 4/1/2019. (awac, )

Case 1:17-cv-01077-LO-TCB Document 74 Filed 04/01/19 Page 1 of 9 PageID# 973

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
Alexandria Division

RSRART,LLC.

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Plaintiff,

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BOB ROSS,INC.,

Civil No. l:17-cv-1077

Hon. Liam O'Grady

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Defendant.

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MEMORANDUM OPINION

This lawsuit arises from an ownership dispute regarding Bob Ross's intellectual property

and right of publicity. Both parties filed motions for summary judgment. The motions were fully
briefed, and the Court heard oral argument on September 7,2018. Upon consideration of the

pleadings, the oral arguments, and the evidence in the record, the Court concluded that summary
judgment for Defendant was appropriate and issued a short order to that effect on September 17,
2018 in recognition of the case's pending trial date. Dkt. 73. This Memorandum Opinion follows
to explain the basis for the Court's Order.
1. DACKGROUND

Bob Ross was a well-known painter, art instructor, and television host who died in

Florida on July 4, 1995. Plaintiff RSR Art, l.LC was founded by, among others. Bob Ross's son,
Robert Stephen Ross. Defendant Bob Ross, Inc.('-BRT') was founded by Bob Ross, his wife, and

his friends Walter and Annette Kowalski "to promote the artist Bob Ross through any and all
commercial means and media available." Dkt. 56-1 ^ 9(W. Kowalski Decl.). The parties dispute
ownership of the Bob Ross intellectual property, including the Bob Ross right of publicity.

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From 1986 to 1992, BRI registered five trademarks ofthe name and likeness of Bob Ross

with Bob Ross's written consent. Dkts. 56-6, 56-7,56-8, 56-9,& 56-10. During Bob Ross's
lifetime, BRI also sold various products featuring Bob Ross's name and likeness with Bob
Ross's knowledge and encouragement. Similarly, during Bob Ross's lifetime and with his

knowledge and consent, BRI entered into several license agreements granting third parties a
license to use Bob Ross's name and likeness. Dkts. 56-11, 56-12, 56-13. The licensing
agreements each contained language stating that BRI owned all rights to the products bearing the
Bob Ross name, likeness, biographic material, trademark or logo. Id. Defendants have also

provided a memo purportedly written by Bob Ross which states that "the greatest asset we[BRI]
own is the Bob Ross name and image." Dkt. 56-1 at 10.

In 1994, BRI drafted an agreement stating that BRI had "sole and exclusive" commercial

and derivative rights to the Bob Ross name,image, voice, biographical material, and creative

works. Dkt. 54-3. The agreement purported to formalize in writing oral consents from Bob Ross

regarding BRI's exclusive rights "governing the use of Bob's name, likeness, image, biographic
material, and persona." Id. However,this agreement was never signed, and Bob Ross's son does

not think his father would have given BRI "all future use ofeverything that has to do with [his]
name." Dkt. 56-21 at 37.

On May 12, 1994, Bob Ross created the Bob Ross Trust, Dkt. 54-2, which he amended
on May 25, 1995, Dkt. 54-5 ("First Amendment to the Trust"). The First Amendment to the
Trust states:

Trustee [Bob Ross] shall assign to Donor's brother, JIMMIE L. COX,... a fifty-one
percent(51%)interest in all rights and interests in intellectual property, and shall assign
to Donor's son, ROBERT STEPHEN ROSS,... a forty-nine percent(49%)interest [in]
said rights and interests in intellectual property, to include all rights, title, interests,
goodwill, artist's moral rights, resale royalty rights, and renewal rights ... in any and all
intellectual property ... including, but not limited to, copyrights and trademarks

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regarding Donor's name, likeness, voice, and visual, written or otherwise recorded works.

Further, such rights hereby conveyed extend to all versions, subsidiary, and derivative

embodiments of the rights; and hereby empower the Trustee to act to license ...[and]
reclaim ... such works and rights, including the power to defend, rescind or enforce
related contracts or other actions by filing suit in law or equity.
Id. at 3-4.

On the same day he amended the Trust, Bob Ross signed an "Assignment of Rights and
Interests in Intellectual Property." Dkt. 54-4. This document granted to Bob Ross, as trustee,
all rights, title, interests, goodwill, artist's moral rights, resale royalty rights, and renewal

rights, whether vested, statutory, common law, contingencies, or expectancies in any and
all intellectual property ... including, but not limited to, copyrights and trademarks
regarding my name, likeness, voice, and visual, written or otherwise recorded works.

Further, such rights hereby conveyed extend to all versions, subsidiary, and derivative
embodiments of the rights; and hereby empower the Trustee to act to license ...[and]
reclaim... such works and rights, including the power to defend, rescind or enforce

related contracts or other actions by filing suit in law or equity.
Id. at 1-A. No document was signed to transfer the rights from the trustee to Jimmie Cox and

Robert Stephen Ross as required by the First Amendment to the Trust until a nmc pro tune was
signed in 2017. See Dkt. 54-6.

On July 4, 1995, Bob Ross died in Florida and Jimmie Cox became the trustee of the Bob

Ross Trust. BRl continued to develop, market, and sell Bob Ross products after Bob Ross's

death. Bob Ross s son, one of Plaintiff RSR Art's founders, continued to actively participate in
BRl activities promoting Bob Ross even after Bob Ross's death. Dkt. 56 at 17.

In April 1997, the frust and Bob Ross's Estate signed a Settlement Agreement with
Defendant BRl stating:

FIDUCIARIES [the Trust and the Estate] acknowledge that, to the best ofthe knowledge
of the FIDUCIARIES,BRl has sole and exclusive ownership of all rights in and to all of
the creative works of Robert N. Ross and excepting any transfer, assignment, or other
action made by BRl or Robert N. Ross during his lifetime. Reciprocally, BRl warrants
that to the best of its knowledge, all such creative works were prepared by Robert N.
Ross as work made for hire' on behalf of BRl and so made by Robert N. Ross as an
employee of BRl,for which Robert N. Ross was paid a regular salary plus other benefits
during his lifetime....

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If any such rights or incidents of ownership in and/or to any ofthe foregoing copyrights,
trademarks, publications, television series, creative works or other assets of BRI of any
kind or character have somehow [vested in, could be claimed as vesting in, or could be
claimed as assets of] the FICUCIARIES,the FIDUCIARIES hereby convey, transfer and
assign all such rights and incidents ofownership and claims and ownership itself to BRI,
further warranting that neither the FIDUCIARIES nor anyone on behalfof the
FIDUCIARIES has done any act to encumber any part or all thereof.
Dkt. 56-16 at 2-3.

The Settlement Agreement was accompanied by an Assignment, which stated that the
Bob Ross trademarks and all artworks created by Bob Ross after BRI was founded were the sole
property of BRI. Dkt. 56-17 at 2. The Assignment also provided that:

[Bob Ross's] ESTATE will not, alone or with others, directly or indirectly, challenge any
of BRI's said ownership or rights in or to any or all of the foregoing copyrights,
trademarks, artworks, television programs, television series, books, companion books or

other assets of BRI, nor attempt to or in fact procure, support, aid, encourage or promote
any such challenge....

To the extent, if any, any such rights or incidents of ownership are somehow vested in
ESTATE,ESTATE hereby conveys, transfers and assigns all such rights and incidents of
ownership and ownership itself to BRI....
Id at 3.

Both the Estate and the Trust also signed separate Mutual Releases with BRI which state

that the parties and their heirs, assigns, successors in interest, etc.,"do, now and forever,

absolutely and irrevocably, hereby release each other in and from any and all claims, suits,

liabilities, complaints, losses, damages, and charges ofevery kind and character arising prior to
the date ofexecution hereof." Dkts. 56-18, 56-19.

On October 27, 2016, Jimmie Cox transferred all his rights under the First Amendment to

the frust to Robert Stephen Ross, Bob Ross's son. Dkt. 54-7 at 2. In the assignment. Cox

described those rights as including, among other things, "all other intellectual property, such as
rights of publicity, copyright,[and] trademark

" Id.

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On February 10,2017, Robert Stephen Ross transferred his rights to the Bob Ross

intellectual property to Plaintiff, RSR Art. Dkt. 54-8. On May 26, 2017 Jimmie Cox, as trustee,
executed a mine pro tune assignment that purported to transfer Bob Ross's intellectual property
rights from Jimmie Cox as trustee to Jimmie Cox and Robert Stephen Ross as specified in and
required by the First Amendment to the Trust effective July 5, 1995.
On September 25, 2017, Plaintiff filed suit against Defendant for BRI's continued use

and licensing of the Bob Ross intellectual property and right of publicity. The Complaint alleges
three counts;(1) false representations in selling and licensing products bearing the Bob Ross
name and likeness in violation of the Lanham Act and state law,(II) misappropriation of the Bob
Ross right of publicity, and (III) cancellation of trademark registrations. Dkt. 1. Plaintiff moved

for partial summary judgment on Count II, asking the Court to find that(1)Plaintiffowns Bob

Ross's right of publicity,(2)Defendant lacks rights or claims to Bob Ross's right of publicity,

and (j)Defendant has infringed Plaintiffs rights. Dkt. 48. Defendant also moved for summary
judgment, arguing the Complaint should be dismissed for three reasons;(1)Plaintiff lacks

standing to bring its claims as it does not own the intellectual property rights at issue,(2)
Plaintiffs claims are barred by the applicable statutes of limitation, and (3)Plaintiffs claims are
barred by the doctrine of laches. Dkt. 53.
II. LEGAL STANDARD

Summary judgment is appropriate where, viewing the facts in the light most favorable to
the non-moving party, there remains no genuine issue of material fact and the movant is entitled

to judgment as a matter of law. Fed. R. Civ. P. 56(a); Marlow v. Chesterfield Cty. Seh. Bd.. 749

F. Supp. 2d 417,426(E.D. Va. 2010). A party opposing a motion for summary judgment must
respond with specific facts, supported by proper documentary evidence, showing that a genuine

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dispute of material fact exists and that summary judgment should not be granted in favor ofthe

moving party. See Anderson v. Liberty Lobby, Inc., All U.S. 242,250(1986). Conclusoiy

assertions of state of mind or motivation are insufficient to defeat summary judgment. Goldberg
V. B. Green & Co., 836 F.2d 845,848(4th Cir. 1988). Further, as the Supreme Court has held,
the mere existence ofsome alleged factual dispute between the parties will not defeat an

otherwise properly supported motion for summary judgment; the requirement is that there be no

genuine issue of material facX."'Anderson,447 U.S. at 247-48(emphasis in original).
III. ANALYSIS

Defendant is entitled to summaiy judgment because Plaintiff does not own the

intellectual property at issue and Plaintiffs claims are barred by the statute of limitations.
Plaintiff Does Not Own the Bob Ross Intellectual PronertyFor Plaintiff to have standing in this lawsuit, Plaintiff must own the Bob Ross intellectual

property rights, including the Bob Ross right of publicity.' See, e.g., Lujan v. Defs. of Wildlife,
504 U.S. 555,560(1992)(explaining that Plaintiffs must have suffered an "injury in fact" to

have constitutional standing); E. Iowa Plastics, Inc. v. PI, Inc., 832 F.3d 899,903-04(8th Cir.

2016)(holding the plaintiff lacked standing to seek trademark cancellation because the plaintiff
did not establish another violation ofthe trademark laws); Gaia Techs., Inc. v. Reconversion

Techs., Inc., 9j F.3d 774, 111(Fed. Cir. 1996)("Absent ownership ofthe Intellectual Property,
[Plaintiff] lacked standing to sue on the" intellectual property infringement claims.); Coach

House Rest., Inc. v. Coach & Six Rests., Inc.,934 F.2d 1551, 1557(11th Cir. 1991)(stating that
in order to have standing for a trademark cancellation claim, the plaintiff must show that it is

hkely to be damaged from continued registration). Standing is a threshold jurisdictional
'ETWCorp.v. Jireh Pubfg. Inc., 332 F.3d 915,928(6th Cir. 2003)("The right of publicity is an intellectual
property right...

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requirement in every federal case and can be raised by a defendant at any time. Nat 7 Org.for
Women, Inc. v. Scheidler,510 U.S. 249,255 (1994). Upon careful review ofthe parties'
arguments and the summary judgment exhibits, the Court is persuaded that Plaintiff does not

own the rights to the Bob Ross intellectual property, including the right of publicity. As a result.
Plaintiff does not have standing to bring this lawsuit and,even if it did. Defendant would be
entitled to judgment as a matter of law.

The record demonstrates that Bob Ross gave BRI the right to his intellectual property and

right of publicity during his lifetime. While there is no formal written agreement assigning those
rights to BRI, there is ample evidence in the record supporting that the unsigned written
agreement would have merely formalized Bob Ross's oral grant ofthe exclusive rights to his

intellectual property and right of publicity to BRI. Bob Ross formed BRI- a company he
endowed with his name — with his wife and the Kowalskis to commercially promote his name

and likeness. In a memorandum. Bob Ross described his name and likeness as being the best
thing "we"- BRI - owned. Dkt. 56-1 at 10. And throughout his lifetime, Bob Ross acted as

though and consented to documents stating that BRI held exclusive rights to his name,image and
likeness. With Bob Ross's explicit consent, BRI registered multiple trademarks utilizing Bob
Ross's name and likeness. Dkts. 56-6, 56-7, 56-8, 56-9,& 56-10. Also with Bob Ross's consent,

BRI entered into various licensing agreements which stated that BRI, not Bob Ross, exclusively
owned the relevant rights and intellectual property. Dkts. 56-11 at 2,56-12 at 8, 56-13 at 2.

There is therefore ample evidence in the record demonstrating that Bob Ross gave BRI the rights
to his intellectual property and right of publicity during his lifetime and before he created the
Trust.

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Because he had already invested his rights with BRl when he created the Trust, Bob Ross

did not have any rights- including the right "to revoke" prior assignments- to transfer through
the Trust. Thus, even if the nuncpro tune cured the defect in the chain of title to the Trust's

assets. Plaintiff would not own the intellectual property at issue because the Trust never owned

it. Similarly, because Bob Ross gave BRI his right to publicity during his lifetime, it could not
have transferred to his son on his death.^

More importantly, the Trust ended any claim it may have had to the Bob Ross intellectual

property when it signed the broadly worded 1997 Settlement Agreement and accompanying
documents. As part of the Settlement Agreement, BRI,the Trust, and Bob Ross's Estate all

agreed that "BRI has sole and exclusive ownership of all rights in and to all ofthe creative works

of Bob Ross and that any rights or claims of ownership either the Trust or the Estate may have
held were thereby "convey[ed], transfer[ed] and assign[ed]" to BRI. Dkt. 56-16 at 2-3. The Trust

and the Estate also signed Mutual Releases with BRI releasing any claims that arose prior to the
execution ofthe Mutual Release, which included ownership disputes regarding the Bob Ross
intellectual property and right of publicity. Dkts. 56-18, 56-19.

1 hus. Bob Ross's and BRl's course of conduct throughout Bob Ross's lifetime and the

1997 Settlement Agreement demonstrate that BRI owns the Bob Ross intellectual property and
right of publicity. As a result, Plaintiff lacks standing to sue and, in any event, BRI would be
entitled to judgment as a matter of law.
B.

Plaintiffs Claims Are Barred bv the Statutes of Limitation.s.

Alternatively, even if Plaintiff did own some rights to the Bob Ross intellectual property
and right of publicity. Plaintiffs claims would be barred by the applicable two-year and five- Under Florida law, oral consent is sufficient to transfer publicity rights during a grantor's lifetime. See Fla. Stat.
§540.08(1).
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year statutes of limitations. BRJ has held itself out as owning the Bob Ross intellectual property
and right of publicity for decades, both before and after Bob Ross's death. It has expended large
amounts of effort, time, and resources commercializing Bob Ross's name and likeness and
defending those rights since its incorporation and after Bob Ross's death. Moreover, as noted
above, the Trust and Estate transferred any rights they may have held to the Bob Ross
intellectual property to BRI as part of the Settlement Agreement in 1997. Thus, while BRI may

have expanded its commercialization of the Bob Ross intellectual property in recent years, BRJ
has asserted exclusive ownership of the Bob Ross intellectual property and right of publicity
since at least 1997. Accordingly, all of Plaintiffs claims are barred by the statutes of limitations.
IV. CONCLUSION

For these reasons, and for good cause shown,the Court DENIED Plaintiffs' Motion for

Partial Summary Judgment(Dkt. 48)and GRANTED Defendant's Motion for Summary
Judgment(Dkt. 53). Judgment shall issue through a separate order.

MarchU_,2019

LiamO'^dy

Alexandria, Virginia

United States District Judge