Intellectual Property News and Reports

Appellants John Frederick Dryer, Elvin Lamont Bethea, and Edward Alvin White played professional football in the National Football League (“NFL”). They participated in a putative class-action lawsuit in which twenty-three former NFL players sued the NFL on behalf of themselves and similarly situated former players. This suit claimed that films produced by NFL-affiliate NFL Films violated the players’ rights under the right-of-publicity laws of various states as well as their rights under the Lanham Act, 15 U.S.C. § 1125. Twenty of those players settled their dispute with the NFL, but the appellants elected to opt out of that settlement and pursue their individual right-of-publicity and Lanham Act claims. The district court granted the NFL’s motion for summary judgment on these claims. We affirm.

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The panel affirmed the district court’s judgment after a jury trial on claims under the Lanham Act and Nevada state law regarding the use of Bob Marley images on apparel and other merchandise.

Affirming the denial of defendants’ post-trial motion for judgment as a matter of law on a false endorsement claim, the panel held that sufficient evidence supported the jury’s finding that defendants violated the Lanham Act because they (a) used Marley’s image (b) on their t-shirts and other merchandise, (c) in a manner likely to cause confusion as to plaintiffs’ sponsorship or approval of these t-shirts and other merchandise. The panel held that defendants waived several defenses. It rejected the argument that allowing a plaintiff to vindicate a false endorsement claim based on the use of a deceased celebrity’s persona essentially creates a federal right of publicity.

The panel held that the district court did not abuse its broad discretion in determining the profits for three defendants. There was sufficient evidence to find that defendant Freeze willfully infringed plaintiffs’ rights. The Seventh Amendment did not require that a jury calculate these profits. The panel held that the district court did not abuse its discretion by ordering three defendants to pay attorneys’ fees to plaintiffs because (1) plaintiffs were prevailing parties, and (2) the case was exceptional, as these defendants’ conduct was willful.

The panel affirmed the district court’s grant of summary judgment to defendants on a right of publicity claim under Nevada law.

The panel held that there was sufficient evidence to support the jury’s finding that three defendants interfered with plaintiffs’ prospective economic advantage.

The panel held that the district court did not err in granting defendants’ motion for judgment as a matter of law on the issue of punitive damages.

Concurring in part and dissenting in part, Judge Christen concurred in the result but did not join the reasoning in Subsection I.B.2 of the majority’s opinion, addressing likelihood of confusion. Judge Christen wrote that the narrow holding in Part I, concluding that the evidence presented at trial was sufficient for the jury to find that defendants violated the Lanham Act by using Marley’s likeness, was dictated by the standard of review on appeal, and by the defenses actually pursued by defendants.

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Ashley Gasper is an adult movie actor who performs under the stage name Jules Jordan, and is the president and sole shareholder of Jules Jordan Video (“JJV”), the creator of the videos in which Gasper appears. He and his company sued defendants 144942 Canada, Inc., d/b/a Kaytel Video Distribution (“Kaytel”), Leisure Time Video Canada, Inc. (“Leisure Time”), Alain Elmaleh, the principal shareholder of each of the corporate defendants (collectively the “Kaytel defendants”), Jacky’s One Stop and the other defendants named in this consolidated appeal. Gasper alleged that the Kaytel defendants had copied and sold thirteen copyrighted adult DVDs owned by JJV or Gasper and featuring Gasper’s performances (the “JJV action”). The complaint alleged claims for copyright infringement, contributory copyright infringement, violation of unfair business practice, unfair competition under California law, false and misleading advertising, and violation of Gasper’s right of publicity. The claims for unfair business practices and false advertising were dismissed prior to trial, leaving only the claims for copyright infringement based on the replication and distribution of the thirteen DVDs, and the claim for violation of Gasper’s right of publicity under California law.

After a lengthy and contentious trial, the jury returned a verdict for plaintiffs on both issues. After the verdict the court granted the Kaytel defendants’ motion for judgment as a matter of law (“JMOL”) in part, concluding that neither Gasper nor JJV had standing to assert the copyright claims, and denied plaintiffs’ motion for JMOL. The court rejected the Kaytel defendants’ claim that Gasper’s right of publicity claim was preempted by copyright law. Both parties have appealed. We disagree with the district court on both issues, concluding that Gasper’s right of publicity claim is preempted by the Copyright Act, but that Gasper and JJV had standing to assert the copyright claims in question.

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This appeal presents the question, inter alia, of whether the Lanham Act and California’s common law right of publicity apply extra-territorially to events occurring in Great Britain. Under the circumstances presented by this case, we conclude that such claims are not viable, and we affirm the judgments entered by the district court.

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We must decide whether California law allows a celebrity to sue a greeting card company for using her image and catchphrase in a birthday card without her permission.

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In 1986, professional model Russell Christoff was paid $250 to pose for a photograph to be used in Canada on a label for bricks of coffee. Sixteen years later, Christoff saw his face on a jar of Taster‟s Choice instant coffee in the United States and discovered that his image had been used without his consent on millions of labels sold internationally for the preceding five years. Christoff filed the present action for appropriation of his likeness six years after Nestlé USA, Inc. (Nestlé), began using his image on the Taster‟s Choice label but less than a year after his discovery.

The trial court applied a two-year statute of limitations and instructed the jury to determine under the discovery rule whether Christoff knew or should have known earlier that Nestlé had used his image. The jury found that Christoff did not know, and should not reasonably have suspected prior to seeing the jar, that his image was being used without his consent and awarded him more than $15 million in damages.

The Court of Appeal reversed, holding that under the single-publication rule, because Christoff had not filed his lawsuit within two years after Nestlé first “published” the label, his cause of action is barred by the statute of limitations unless, on remand, the trier of fact finds that Nestlé had hindered Christoff‟s discovery of the use of his photograph, or that the label had been “republished.” We granted review.

We agree with the Court of Appeal that the judgment must be reversed because the trial court erroneously ruled that the single-publication rule does not apply to claims for appropriation of likeness. But we do not agree with the Court of Appeal that this means that Christoff‟s action necessarily is barred by the statute of limitations unless he can show on remand that Nestlé had hindered his discovery of the use of his photograph, or that the label had been “republished.” The Court of Appeal‟s ruling presupposes that Nestlé‟s various uses of Christoff‟s likeness, including its production of the product label for a five-year period, necessarily constituted a “single publication” within the meaning of the single-publication rule. Because the parties were prevented by the trial court‟s erroneous legal ruling from developing a record concerning whether the single-publication rule applied, we remand the matter for further proceedings.

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On the merits in this appeal, E-Pass Technologies, Inc. (“E-Pass”) challenges two final determinations of the U.S. District Court for the Northern District of California (i) concluding that three related cases filed by E-Pass were exceptional under 35 U.S.C. § 285 and (ii) awarding attorneys’ fees. E-Pass Techs., Inc. v. 3Com Corp., Nos. 00-CV-2255, 03-CV-4747, 04-CV-0528 (N.D. Cal. Nov. 21, 2006) (“Decision”); E-Pass Techs., Inc. v. 3Com Corp., Nos. 00-CV-2255, 03-CV-4747, 04-CV-0528, 2007 WL 4170514 (N.D. Cal. Nov. 14, 2007). We affirm those rulings today in a separate Judgment under Federal Circuit Rule 36. This opinion addresses Access Systems Americas, Inc.’s (formerly known as PalmSource, Inc.) (“PalmSource”) motion for sanctions, in which it argues that E-Pass’s appeal is frivolous as it pertains to PalmSource. We agree. Consequently, we grant the motion, but award a different sanction than the one requested.

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Henkel Corporation (“Henkel”) appeals from a final decision of the Board of Patent Appeals and Interferences (“the Board”), Henkel Corp. v. Procter & Gamble Co., Patent Interference No. 105,174 (B.P.A.I. Mar. 28, 2008) (“Board Decision”), which awarded priority of invention to The Procter & Gamble Company (“P&G”). Because the Board’s decision is supported by substantial evidence, we affirm.

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We must resolve this clash between parties claiming different types of intellectual property. Although we agree with much of the Court’s trademark analysis, for the reasons that follow we vacate the Court’s grant of summary judgment for the Estate and remand for trial on the Lanham Act claim. We affirm, however, the District Court’s grant of summary judgment to the Estate on the Pennsylvania right-of-publicity claim.

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Thais Cardoso Almeida brought this action against Amazon.com, Inc. (“Amazon”) for displaying her image on its websites in furtherance of its sale of the book Anjos Proibidos. Almeida asserted claims against Amazon pursuant to Fla. Stat. § 540.08 (West 2006), for civil theft pursuant to Fla. Stat. § 772.11 (West 2006), and under Florida’s common law doctrine of invasion of privacy. The district court granted summary judgment in favor of Amazon as to all of Almeida’s claims. The district court held that Almeida’s right of publicity claim under § 540.08 and common law is preempted by the Communications Decency Act of 1996 (“CDA”), 47 U.S.C. § 230 (2000), and is otherwise unavailable under Florida’s statutory first-sale doctrine. As to Almeida’s civil theft claim, the district court held that Almeida failed to establish Amazon’s intent to misappropriate Almeida’s image. We affirm the district court’s grant of summary judgment, although with respect to Almeida’s right of publicity claim, we do so on different grounds.

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