Tana v. Dantanna's

• Decision Date: 15 July 2010
• Docket Number: No. 09-15123.,09-15123.
• Citation: 611 F.3d 767
• Parties: Dan TANA, Plaintiff-Appellant,v.DANTANNA'S, an unknown business entity, Great Concepts, L.L.C., a Georgia Limited Liability Company, Dantanna's CNN Center, LLC, a Georgia limited liability company, Defendants-Appellees.
• Court: U.S. Court of Appeals — Eleventh Circuit

611 F.3d 767

Dan TANA, Plaintiff-Appellant,v.DANTANNA'S, an unknown business entity, Great Concepts, L.L.C., a Georgia Limited Liability Company, Dantanna's CNN Center, LLC, a Georgia limited liability company, Defendants-Appellees.

No. 09-15123.

United States Court of Appeals Eleventh Circuit.

July 15, 2010.

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Brent H. Blakely, Los Angeles, CA, Bruce Z. Walker, Cohen, Pollock, Merlin & Small, P.C., Atlanta, GA, for Plaintiff-Appellant.

G. Marshall Kent, Jr., Shapiro, Fussell, Atlanta, GA, for Defendants-Appellees.

Appeal from the United States District Court for the Northern District of Georgia.

Before EDMONDSON, CARNES and ANDERSON, Circuit Judges.

ANDERSON, Circuit Judge:

This trademark infringement action concerns two restaurants, situated on opposite sides of the country, that share very similar names. Dan Tana, owner of Dan Tana's restaurant in Hollywood, California (“Plaintiff”), brought this action against the two limited liability companies that own and operate the Dantanna's restaurants in Atlanta, Georgia-Great Concepts, L.L.C., and Dantanna's CNN Center, LLC (“Defendants”). Plaintiff's complaint alleges that David Clapp, founder of the Dantanna's restaurants and managing member of the Defendants, intentionally selected and registered as a federal trademark a name for his restaurants that is confusingly similar to the name of Plaintiff's restaurant in Hollywood. The claims forming the basis of Plaintiff's complaint are false designation of origin, a theory of federal trademark infringement arising under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (Count I); deceptive trade practices under Georgia's Uniform Deceptive Trade Practices Act, O.C.G.A. § 10-1-370 et seq. (Count II); fraud pursuant to O.C.G.A. § 23-2-55 (Count III); and the unauthorized appropriation of likeness, an invasion-of-privacy tort recognized under Georgia law (Count IV).¹

The district court granted summary judgment in favor of Defendants on all counts. Plaintiff now appeals, arguing that triable issues of fact remain as to whether there is a likelihood of confusion between the two restaurants and whether Defendants intentionally appropriated the name of his restaurant. Because we conclude that Plaintiff has not adduced sufficient evidence giving rise to a genuine issue of material fact on the issue of likelihood of confusion or Defendants' knowing appropriation of his likeness, we affirm the district court's grant of summary judgment in favor of Defendants.

I. FACTS AND PROCEDURAL HISTORY

Plaintiff Dan Tana is a self-described former Yugoslav soccer star, prominent restaurateur, film producer, and actor. He opened his Italian-themed restaurant, Dan Tana's, in West Hollywood, California, in 1964. Since that time, the restaurant has enjoyed a storied history, attracting Hollywood celebrities and insiders to the restaurant's intimate and romantic setting. Dan Tana's serves traditional Italian fare, and it resembles an old-world Italian trattoria with red-and-white checkered table cloths and straw-colored wine flasks hanging from the ceiling. Plaintiff, who has been the sole owner of the restaurant since its inception, figures prominently into its ambiance, personally greeting and welcoming his patrons. The Press has referred to Dan Tana's as a “legendary Hollywood hotspot” and the ultimate “LA hangout,” and the restaurant has been featured in numerous newspapers, magazines, and books. The name “Dan Tanna” received significant publicity in the 1970s when producer Aaron Spelling asked Plaintiff for the use of his name for the lead character in his television series “Vega$.”

Despite the notoriety of Plaintiff's restaurant, Plaintiff did not attempt to register the name “Dan Tana's” with the Patent and Trademark Office (“PTO”) until June 2005, forty-one years after his restaurant's opening. The PTO denied his application in December 2005 on the basis of the existing registration of the trademark “Dantanna's” in the same category of restaurant services sought by Plaintiff. Defendants had opened the first of two Dantanna's locations in Atlanta in 2003, applied for a federal registration in June 2003, and obtained federal registration of the name “Dantanna's” in March 2005, claiming a date of first use of September 30, 2003.²

The Dantanna's restaurants are upscale sports restaurants serving contemporary American cuisine with a “surf and turf” theme. The restaurants' large open floor plans boast big screen televisions tuned to sports channels on surrounding walls. According to its website, Dantanna's specializes in providing a sophisticated and elegant venue for the viewing of sporting events and strives to emulate the feeling of sitting in a “private box at your favorite game.”

In June 2006, Plaintiff filed a Petition for Cancellation of Defendants' mark with the PTO's Trademark Trial and Appeal Board, alleging that Defendants sought to mislead the public into believing their restaurant was associated with Dan Tana's Hollywood. Subsequently, Plaintiff filed a federal trademark infringement suit in United States District Court for the Central District of California, which was ultimately dismissed for lack of personal jurisdiction over one of the Defendants. After Plaintiff filed his federal lawsuit, he moved to suspend the trademark cancellation proceeding pending before the PTO. The PTO stayed the proceeding in September 2007.

Plaintiff then filed this lawsuit in the Northern District of Georgia in March 2008, pleading the federal and Georgia trademark infringement, fraud, and tort claims at issue in this appeal. Plaintiff's complaint seeks a permanent injunction enjoining Defendants from all future use of the “Dantanna's” mark and the cancellation of Defendants' federal trademark registration, among other relief. Defendants moved for summary judgment arguing that, as a matter of law, Plaintiff could not establish the likelihood of confusion necessary to subject them to liability under § 43(a) of the Lanham Act, Georgia's Uniform Deceptive Trade Practices Act, or fraud under Georgia law, nor could Plaintiff establish the intentional appropriation of likeness required to impose liability under Georgia tort law. The district court agreed, granting summary judgment in favor of Defendants as to all counts. This appeal ensued.

II. DISCUSSION

We review the grant of summary judgment de novo, applying the same legal standards as the district court. Harrison v. Benchmark Elecs. Huntsville, Inc., 593 F.3d 1206, 1211 (11th Cir.2010). In so doing, we view all evidence and draw all reasonable inferences in favor of the non-moving party. Id. Summary judgment is proper where “the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to summary judgment as a matter of law.” Fed.R.Civ.P. 56(c).

Plaintiff appeals the district court's disposition of four counts of his federal complaint: (1) false designation of origin under § 43(a) of the Lanham Act, (2) deceptive trade practices under Georgia's Uniform Deceptive Trade Practices Act, (3) fraud under O.C.G.A. § 23-2-55, and (4) appropriation of likeness under Georgia tort law. However, we need not separately address whether Defendants were entitled to summary judgment on Plaintiff's deceptive trade practices or fraud claims. The district court held that the Georgia Uniform Deceptive Trade Practices Act and § 23-2-55 require a plaintiff to prove the same elements as a claim for federal trademark infringement under the Lanham Act. Because this is a question of state law that the parties do not challenge on appeal, we treat the district court's holding as correct and merely determine whether the district court properly decided the Lanham Act count. See Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833, 839 (11th Cir.1983). “If we determine that the district court decided the Lanham Act count properly, we will also affirm its decision on the Georgia deceptive trade practices [and fraud] counts.” Id. Thus, we first address Plaintiff's Lanham Act claim and then consider his Georgia appropriation-of-likeness claim.

A. Trademark Infringement under § 43(a) of the Lanham Act

Trademarks are “any word, name, symbol, or device, or any combination thereof [used] to identify and distinguish [one's] goods ... from those manufactured or sold by others and to indicate the source of the goods.” 15 U.S.C. § 1127.³ Section 43(a) of the Lanham Act creates a federal cause of action for unfair competition by prohibiting the use in interstate commerce of any “word, term, name, symbol or device, ... or any false designation of origin ... which is likely to cause confusion ... 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).⁴ To establish a prima facie case of trademark infringement under § 43(a), a plaintiff must show “(1) that it had trademark rights in the mark or name at issue and (2) that the other party had adopted a mark or name that was the same, or confusingly similar to its mark, such that consumers were likely to confuse the two.” Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 358 (11th Cir.1997).⁵ Plaintiff's allegation under the Lanham Act is that “Dan Tana's” is a trade name in which he has common-law trademark rights and that Defendants are unlawfully infringing on those rights by using and registering the name “Dantanna's” in connection with the operation of their Atlanta restaurants.

To satisfy the first element of § 43(a)-proof of a valid trademark-a plaintiff need not have a registered mark. We have recognized that “the use of another's unregistered i.e., common law, trademark can constitute a violation of § 43(a) where the alleged unregistered trademarks used by the plaintiff are so associated with its goods that...