Elvis Presley Enterprises, Inc. v. Elvisly Yours, Inc.

• Decision Date: 27 June 1991
• Docket Number: No. 90-6045,90-6045
• Citation: 936 F.2d 889
• Parties: , 19 U.S.P.Q.2d 1377 ELVIS PRESLEY ENTERPRISES, INC., Plaintiff-Appellee, v. ELVISLY YOURS, INC.; Elvisly Yours, Ltd.; Sid Shaw, Defendants-Appellants.
• Court: U.S. Court of Appeals — Sixth Circuit

Page 889

936 F.2d 889

19 Fed.R.Serv.3d 1397, 19 U.S.P.Q.2d 1377

ELVIS PRESLEY ENTERPRISES, INC., Plaintiff-Appellee, v. ELVISLY YOURS, INC.; Elvisly Yours, Ltd.; Sid Shaw Defendants-Appellants.

No. 90-6045.

United States Court of Appeals Sixth Circuit.

Argued May 23, 1991.

Decided June 27, 1991.

C. Barry Ward (argued), William R. Bradley, Jr., Glankler, Brown, Gilliland, Chase, Robinson & Raines, Memphis, Tenn. and W. Mack Webner, Nies, Webner, Kurz & Bergert, Arlington, Va., for plaintiff-appellee.

Peter M. Brown, Asst. County Atty. (argued), Memphis, Tenn., for defendants-appellants.

Before KENNEDY and SUHRHEINRICH, Circuit Judges, and LIVELY, Senior Circuit Judge.

KENNEDY, Circuit Judge.

In this trademark infringement case, defendants Elvisly Yours, Inc., Elvisly Yours, Ltd., an English corporation, and Sid Shaw (collectively referred to as "Shaw") appeal the grant of summary judgment and entry of a permanent injunction in favor of plaintiff Elvis Presley Enterprises, Inc. ("EPE"). The District Court held that EPE was entitled to prevail on its claims of infringement of state and federal trademarks and its claim of violation of EPE's common law and statutory rights of publicity. The District Court also rendered judgment in favor of EPE on Shaw's counterclaims against EPE. Shaw asserts three errors: (1) the District Court denied Shaw's asserted equitable defenses of acquiescence and laches without allowing sufficient discovery to enable Shaw to effectively rebut EPE's summary judgment motion; (2) the District Court sua sponte granted summary judgment on Shaw's supplemental counterclaim; and (3) the scope of the injunction is too broad. We AFFIRM except with respect to the scope of the injunction. We REMAND to the District Court with directions to modify the injunction.

I.

EPE is the assignee of state and federal trademarks, service marks, copyrights, and identification (publicity) rights of the Estate of Elvis Presley, variously in the names of Elvis, Elvis Presley, or the likeness of Elvis Presley. EPE licenses the use of these rights to a variety of users. Shaw sells Elvis Presley memorabilia in England and the United States, and claims to have done so in England since 1978 and the United States since 1980. Shaw is not licensed by EPE to use any of the trademark, copyright, or publicity rights of EPE.

In February 1985, EPE filed a complaint against Shaw for trademark infringement and unfair competition, seeking money damages and injunctive relief. Shaw denied infringement, asserting the defenses of prior use, laches and acquiescence. Shaw also counterclaimed for cancellation of EPE's federally registered marks. This matter first came before this Court in early 1987, upon denial of EPE's request for preliminary injunctive relief. This Court found it likely that EPE would succeed on the merits and was entitled to a preliminary injunction. See Elvis Presley Enter., Inc. v. Elvisly Yours, Inc., et al., No. 85-5767 (6th Cir. April 28, 1987) [817 F.2d 104 (table) ].

On May 4, 1987, EPE amended its complaint to add claims for violations of EPE's common law and statutory rights of publicity. On September 10, 1987, EPE sought summary judgment on all its claims as well as Shaw's counterclaims. In December 1987, Shaw filed a supplemental counterclaim, seeking damages as a result of a letter sent by EPE to an English company notifying the latter of the trademark litigation involving EPE and Shaw. On December 22, 1987, EPE moved for summary judgment on Shaw's supplemental counterclaim.

Meanwhile, during the course of discovery many disputes arose which required resolution by the District Court. In September 1987, Shaw deposed Joseph Hanks, a director of EPE. During the course of the deposition EPE's counsel objected to certain questions on the grounds of relevancy and advised Hanks not to answer them. Those questions related to activities of Elvis Presley individually, EPE, and other companies associated with the licensing and exploiting of the Elvis Presley persona. Shaw filed a Motion to Compel Discovery, claiming that answers to the questions were relevant to substantiate his claims of prior use and his defenses of laches and acquiescence.

Shaw also sought to depose Priscilla Presley, the former wife of Elvis Presley and also President and a director of EPE. EPE objected to this request and sought a protective order under Federal Rule of Civil Procedure 26(c). EPE contended that Ms. Presley had virtually no personal knowledge of the facts giving rise to this litigation, and that the purpose of the deposition was to annoy and harass her.

The magistrate to whom discovery disputes were referred ruled that Shaw's motion to compel Hanks to answer questions was well taken and that EPE's motion for a protective order was not. He ordered that Ms. Presley's deposition be taken and that Hanks' deposition be reconvened and that he answer the objected to questions. The District Court later reversed these two rulings. As to the Priscilla Presley deposition, the court concluded that "no useful purpose would be served by any deposition of Ms. Presley." Ms. Presley had filed an affidavit subsequent to the magistrate's decision, attesting that she had no personal knowledge of the facts giving rise to the litigation with Shaw.

As to the Hanks deposition, the District Court found the areas covered by the objectionable questions to be "irrelevant and immaterial" since it was clear that EPE had superior rights in the trademarks and publicity rights being litigated. The District Court's order resolving the discovery motions was issued on May 15, 1989.

On May 22, 1990, the District Court granted summary judgment in favor of EPE ¹ on the claims of federal and state trademark violations and violations of Tennessee common law and statutory rights of publicity. A permanent injunction was issued. Judgment in favor of EPE was also granted with respect to all of Shaw's counterclaims. The only matter not adjudicated by the District Court was EPE's claim for money damages.

Shaw appeals, raising three issues. First, Shaw claims that the District Court abused its discretion in denying the discovery requests with respect to Priscilla Presley and Joseph Hanks, the denials having prevented Shaw from being able to effectively oppose EPE's summary judgment motion. Second, Shaw argues that the District Court erred by granting summary judgment in favor of EPE on Shaw's supplemental counterclaim. Shaw claims that EPE did not move for summary judgment on that claim and the court improperly granted judgment sua sponte. Third, Shaw contends that even if judgment for EPE was proper, the injunction which issued is overbroad. We deal with these claims in turn. ²

II.

Summary judgment must be entered against a party who fails, after adequate time for discovery, to establish the existence of an element essential to a party's case, and on which a party will bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). As the Supreme Court explained in Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986), a dispute about a material fact is "genuine" only if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party."

In this case Shaw claims that laches and acquiescence are equitable defenses to EPE's infringement action. Shaw implicitly concedes that insufficient evidence was produced to require denial of EPE's summary judgment motion. Instead, Shaw contends that the District Court committed reversible error by limiting discovery, thereby preventing Shaw from producing evidence necessary to establish genuine issues of fact regarding the claimed equitable defenses.

Mindful of the burden on the nonmoving party to produce evidence showing the existence of a genuine issue of material fact, summary judgment should not be granted unless the nonmoving party has had the opportunity to discover information essential to opposition. Routman v. Automatic Data Processing, Inc., 873 F.2d 970, 971 (6th Cir.1989); Anderson, 477 U.S. at 250 n. 5, 106 S.Ct. at 2511 n. 5; see Fed.R.Civ.P. 56(f). The need to allow adequate discovery is not without limits, however, and a trial court is given wide discretion in balancing the needs and rights of both plaintiff and defendant. See Ghandi v. Police Dep't. of Detroit, 747 F.2d 338, 354 (6th Cir.1984), cert. denied, 484 U.S. 1042, 108 S.Ct. 774, 98 L.Ed.2d 861 (1988). In reviewing the District Court's decision to limit discovery, this Court will intervene only if it was an abuse of discretion resulting in substantial prejudice. Id.; Emmons v. McLaughlin, 874 F.2d 351, 356-57 (6th Cir.1989) (it is within the district court's discretion to grant additional time for discovery, and it is the nonmoving party's burden to demonstrate need for more time under Federal Rule of Civil Procedure 56(f)).

Shaw claims that if further discovery had been permitted he may have been able to show a genuine issue of material fact regarding the following issues relevant to his asserted equitable defenses of laches and acquiescence: (1) What action did EPE take to protect its marks? (2) Did EPE allow Shaw to use EPE's trademarks and publicity rights without interference? EPE contends that these issues are either not material to the disposition of this case or there exists no genuine dispute as to such issues. We agree with EPE.

III.

A. EPE's Enforcement Activities Against Others

Shaw asserts that there is a genuine issue concerning what actions EPE took to protect its trademarks and publicity rights. According to Shaw, he was precluded from more fully exploring this issue by the District Court's limitations on discovery. To the extent that Shaw was precluded from inquiring into EPE's and its predecessors' pursuit of infringers other than Shaw, such information is irrelevant. A plaintiff's failure...