Newton v. Thomason

• Citation: 22 F.3d 1455
• Decision Date: 28 April 1994
• Docket Number: Nos. 93-55002,93-55376 and 93-55379,s. 93-55002
• Parties: , 22 Media L. Rep. 1609 Wood NEWTON, Plaintiff-Appellant, v. Harry THOMASON; Linda Bloodworth-Thomason; Burt Reynolds; Mozark Productions, Inc.; Evening Shade; MTM, Inc.; CBS, Inc., Defendants-Appellees. Wood NEWTON, Plaintiff-Appellee, v. Harry THOMASON; Linda Bloodworth-Thomason; Burt Reynolds; Mozark Productions, Inc.; Evening Shade, a business entity; MTM, Inc., a California Corporation; CBS, Inc., a New York Corporation, Defendants-Appellants.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

Page 1455

22 F.3d 1455

30 U.S.P.Q.2d 1633, 22 Media L. Rep. 1609

Wood NEWTON, Plaintiff-Appellant, v. Harry THOMASON; Linda Bloodworth-Thomason; Burt Reynolds;

Mozark Productions, Inc.; Evening Shade; MTM,

Inc.; CBS, Inc., Defendants-Appellees.

Wood NEWTON, Plaintiff-Appellee, v. Harry THOMASON; Linda Bloodworth-Thomason; Burt Reynolds;

Mozark Productions, Inc.; Evening Shade, a business entity;

MTM, Inc., a California Corporation; CBS, Inc., a New York

Corporation, Defendants-Appellants.

Nos. 93-55002, 93-55376 and 93-55379.

United States Court of Appeals,

Ninth Circuit.

Argued and Submitted March 9, 1994.

Decided April 28, 1994.

Joseph M. Gabriel, Langberg, Leslie, Mann & Gabriel, Los Angeles, CA, for appellants and cross-appellees.

Beth A. Finley and Michael Plonsker, Lavely & Singer, Los Angeles, CA, for appellees and cross-appellants.

Appeal from the United States District Court for the Central District of California, James M. Ideman, District Judge, Presiding.

Before: PREGERSON, O'SCANNLAIN, and FERNANDEZ, Circuit Judges.

Opinion by Judge PREGERSON.

PREGERSON, Circuit Judge:

Wood Newton ("Newton") appeals the district court's summary judgment in favor of television producers Harry Thomason and Linda-Bloodworth Thomason, Burt Reynolds, and Mozark Productions, Inc. (collectively "Appellees"), in Newton's misappropriation and unfair competition action. Newton alleges that the Appellees appropriated his name for a character in the television show "Evening Shade" in violation of the common law right of publicity, various state statutes, and the Lanham Act, 15 U.S.C. Sec. 1125(a). Newton and his attorney Michael Childress ("Childress") together appeal the award of

sanctions against Childress. Appellees cross-appeal the denial of their request for attorneys' fees. We have jurisdiction over both the appeal and the cross-appeal under 28 U.S.C. Sec. 1291. On the appeal, we affirm in part and reverse in part. On the cross-appeal, we reverse and remand in part.

BACKGROUND

Appellant Newton is a country music songwriter and performer. In the country/western music industry, he is recognized by the name "Wood Newton." The main character in the television series "Evening Shade" [hereinafter the TV Series], is also named "Wood Newton." Prior to the television show, which started airing in September 1990, Newton was the only person with that name in the entertainment field.

Newton filed a complaint in the Northern District of Illinois, alleging that Appellees misappropriated his name and likeness and engaged in unfair competition in violation of state and federal law. The Illinois court transferred the case to the Central District of California, under 28 U.S.C. Sec. 1404(a). ¹ Appellees moved for summary judgment ² on the following grounds: (1) Newton consented to use of his name; (2) Appellees did not "pirate" Newton's name and identity for commercial gain; and (3) There was no likelihood of confusion between Newton and the TV Series character.

On the issue of consent, Appellees presented evidence that Newton consented in writing and by his conduct. ³ Their evidence showed that by May or June 1990, Newton knew that Appellees planned to use Wood Newton as one of the TV Series' character names because his sister sent him a newspaper article about the TV Series. On July 18, 1990, Newton wrote, in a letter to Harry Thomason ("Thomason") and Linda Bloodworth-Thomason ("Bloodworth"), "I've been reading about your new show.... I want you to know I'm flattered that you are using my name, everyone who I've talked to about it thinks it's exciting and so do I." He went on to explain the origins of his name. Newton admitted that he did not expect Thomason to think he objected to the use of his name after reading this letter. Both before and after the first broadcast in September, Newton spoke with Thomason and sent several more letters without ever objecting to or even mentioning the use of his name; he spoke only about the use of his songs.

In their moving papers, Appellees contended that Newton in fact actively encouraged them to use his name because he hoped to sell them a theme song for the TV Series. Newton wrote the July 18th letter in response to an article explaining that Appellees were looking for a theme song for the TV Series. He enclosed tapes of his music with the letter, stating "I would love to have the chance to write some music or songs for the show...." Newton admitted that he intentionally failed to disclose his objections to the use of his name because he wanted to sell a song and hoped to get special consideration. Appellees used two of Newton's songs in the TV Series but rejected his proposed theme song. After Newton learned, in December 1990, that Appellees had decided not to buy his submitted theme song, he for the first time investigated his legal rights and objected to the use of his name.

To oppose Appellees' summary judgment motion, Newton submitted a declaration denying that the April 26, 1990 conversation took place and stating that, although he never objected, he also never consented to the use of his name. He explained that he did not object in part because he had mixed feelings about the idea: he wanted to see the actual use of his name and the compensation Appellees would provide him. His other alleged reasons for not objecting were that he did not even know until June or July 1990 Second, on the issue of commercial exploitation of Newton's name and identity, Appellees presented evidence that they never used the name "Wood Newton" to advertise or promote the TV Series or to sell any products or services. In newspaper announcements, for example, they merely mentioned the name "Wood Newton" as Burt Reynolds's character name.

that Appellees were going to use his name in the TV Series, and did not know until December that he had a legal right to object. He also stated that he never intended the July 18, 1990 letter to constitute consent or authorization to use his name. As evidence that Appellees never believed they had received consent, Newton presented a letter from MTM, Inc., dated October 2, 1990, which stated that "we should get a release from Wood Newton to use his name...." CBS drafted an agreement that granted it the right to use Newton's name, but Newton refused to sign it.

Third, on the issue of likelihood of confusion, Appellees and Newton each described the similarities and differences between Newton and the TV Series character. Newton is a forty-five year old country music songwriter and performer. He grew up in a small Arkansas town and played high school football for a team coached by Thomason. His deceased father was named Obb Newton; Obb owned a local hardware store. Newton has been married for twenty years and has no children. He once moved from his hometown to a big city and currently lives in a different small town. The fictional Wood Newton character is a high school football coach and former pro football star who is married to a prominent attorney and has three children. He lives in a small Southern town that is modeled after Newton's (and Thomason's) hometown. His deceased father has the same name and occupation as did Newton's deceased father. At the root of his character are a dry sarcastic wit, a passion for the song "Blueberry Hill," and a lack of talent on the football team he coaches. In his declaration, Newton stated that people who he met for the first time asked him whether he took his name from Burt Reynolds's character.

Based on the submitted evidence, the district court granted summary judgment in favor of Appellees. The district court also sanctioned Newton's attorney Childress in the amount of $10,000 for filing Newton's complaint in the Illinois district court and denied Appellees' motion for attorneys' fees. Newton and Childress appeal and Appellees cross-appeal.

ANALYSIS

1. Newton's Appeal of Summary Judgment

We review de novo the district court's grant of summary judgment. Smith v. Noonan, 992 F.2d 987, 989 (9th Cir.1993). Viewing the evidence in the light most favorable to Newton, as the nonmoving party, we must determine whether there are any genuine issues of material fact and whether the district court correctly applied the relevant substantive law. Botefur v. City of Eagle Point, 7 F.3d 152, 154 (9th Cir.1993).

A. Applicable State and Federal Law

Because the case was transferred under 28 U.S.C. Sec. 1404(a) from the Northern District of Illinois, we apply the choice-of-law rules of Illinois. Muldoon v. Tropitone Furniture Co., 1 F.3d 964, 965 (9th Cir.1993) (citing Van Dusen v. Barrack, 376 U.S. 612, 642, 84 S.Ct. 805, 822, 11 L.Ed.2d 945 (1964), for the requirement that the transferee court follow the choice of law rules of the transferor court).

Illinois choice of law requires that we apply California law to Newton's state tort law right of publicity and unfair competition claims. Illinois uses the "most significant contacts" test to determine the applicable law in a tort case. Muldoon, 1 F.3d at 966 (citing Ingersoll v. Klein, 46 Ill.2d 42, 262 N.E.2d 593, 596 (1970)). This test balances four factors: (1) the place where the injury occurred; (2) the place where the conduct occurred; (3) the parties' domicile, nationality, place of incorporation and place of business; and (4) the place where the parties' relationship is centered. Anabaldi v. Sunbeam Corp., 651 F.Supp. 1343, 1344 (N.D.Ill.1987) (quoting Ingersoll, 262 N.E.2d at 596). In this case, the injury (broadcasting and advertising the TV Series with Newton's name) occurred nationally. (Answer, p. 4). The conduct by Appellees (making the TV Series) occurred in California. Newton is domiciled in Tennessee, Thomason and Bloodworth are domiciled in California, and Burt Reynolds is domiciled in Florida. Among the corporate defendants, Mozark Productions, Inc. and MTM Enterprises, Inc. are California corporations, and CBS, Inc. is a New York corporation. The parties'...