Cairns v. Franklin Mint Co.

• Citation: 292 F.3d 1139
• Decision Date: 19 June 2002
• Docket Number: No. 00-56217.,No. 00-56796.,00-56217.,00-56796.
• Parties: Lord Simon CAIRNS, John Eversley, Michael Gibbons LVO, F.C.A., JP, Anthony Julius, Lady Sarah McCorquodale, Baroness Jill Pitkeathly Obe, John Reizenstein, Christopher Spence MBE, Nalini Varma, trustees of the Diana, Princess of Wales Memorial Fund, a charitable trust; The Honorable Frances Ruth Shand Kydd, The Lady Elizabeth Sarah Lavina McCorquodale and The Right Reverend and Right Honorable Richard John Carew Chartres, Bishop of London, executors of the Estate of Diana, Princess of Wales; and the Diana, Princess of Wales Memorial Fund (No. 1) Limited, Plaintiffs-Appellants, v. FRANKLIN MINT COMPANY, a Delaware partnership; Roll International Holdings, Inc., a Delaware corporation; Stewart Resnick, an individual, Lynda Resnick, an individual, Defendants-Appellees.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

292 F.3d 1139

Lord Simon CAIRNS, John Eversley, Michael Gibbons LVO, F.C.A., JP, Anthony Julius, Lady Sarah McCorquodale, Baroness Jill Pitkeathly Obe, John Reizenstein, Christopher Spence MBE, Nalini Varma, trustees of the Diana, Princess of Wales Memorial Fund, a charitable trust; The Honorable Frances Ruth Shand Kydd, The Lady Elizabeth Sarah Lavina McCorquodale and The Right Reverend and Right Honorable Richard John Carew Chartres, Bishop of London, executors of the Estate of Diana, Princess of Wales; and the Diana, Princess of Wales Memorial Fund (No. 1) Limited, Plaintiffs-Appellants, v. FRANKLIN MINT COMPANY, a Delaware partnership; Roll International Holdings, Inc., a Delaware corporation; Stewart Resnick, an individual, Lynda Resnick, an individual, Defendants-Appellees.

No. 00-56217.

No. 00-56796.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted March 12, 2002.

Filed June 19, 2002.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Barbara A. Solomon, Fross Zelnick Lehrman & Zissu, P.C., New York, NY, for the plaintiffs-appellants.

Robert A. Meyer, Douglas E. Mirell and Daniel J. Friedman, Loeb & Loeb LLP, Los Angeles, CA, for the defendants-appellees.

Appeal from the United States District Court for the Central District of California; Richard A. Paez and Florence—Marie Cooper, District Judges, Presiding.¹

Before: PREGERSON, RYMER, and T.G. NELSON, Circuit Judges.

PREGERSON, Circuit Judge.

Plaintiffs-Appellants are the trustees of the Diana Princess of Wales Memorial Fund ("the Fund") and the executors of the Estate of Diana, Princess of Wales ("the Estate"). We will refer to them collectively as "the Fund." The Fund brought several state and federal claims against Defendant-Appellee Franklin Mint. The Fund based these claims on Franklin Mint's use of the name and likeness of the late Princess Diana on commercially sold jewelry, plates, and dolls, and in advertisements for these products. The Fund appeals three holdings by the District Court: (1) the District Court's denial of the Fund's motion to reinstate its dismissed post-mortem right of publicity claim under California Civil Code § 3344.1(a)(1); (2) the District Court's grant of summary judgment in favor of Franklin Mint on the Fund's Lanham Act claim for false endorsement under 15 United States Code § 1125(a)(1); and (3) the District Court's award of attorneys' fees to Franklin Mint. We have jurisdiction under 28 United States Code § 1291, and we affirm.

I. FACTUAL AND PROCEDURAL BACKGROUND

Since 1981, when Princess Diana married Prince Charles, Franklin Mint has produced, advertised, and sold collectibles — jewelry, plates, and dolls — bearing her name and likeness. Similar products bearing Princess Diana's name and likeness were sold by other companies. Princess Diana neither authorized nor objected to any of these products.

The Fund was established in 1997 after Princess Diana's death to accept donations to be given to various charities with which Princess Diana was associated during her lifetime. The Estate exclusively authorized the Fund to use Princess Diana's name and likeness for this purpose. The Fund in turn authorized about twenty parties — but not Franklin Mint — to use the name and likeness of Princess Diana in conjunction with products sold in the United States. Franklin Mint continued to market unauthorized Diana-related products.

On May 18, 1998, the Fund brought suit against Franklin Mint in the United States District Court for the Central District of California. The complaint alleged violations of the Lanham Act for false endorsement and false advertisement under 15 United States Code § 1125(a)(1), and dilution of trademark under 15 United States Code § 1125(c)(1). The complaint also alleged violations of California's post-mortem right of publicity statute, California Civil Code § 990(a) (now California Civil Code § 3344.1(a)).² The complaint finally alleged unfair competition and false and misleading advertisement under California Business and Professions Code §§ 17200 and 17500 et seq.

On October 16, 1998, the District Court granted Franklin Mint's motion to dismiss the Fund's post-mortem right of publicity claim under California Civil Code § 990. Cairns v. Franklin Mint Co., 24 F.Supp.2d 1013, 1022 (C.D.Cal.1998) ["Cairns I"]. The District Court reasoned that California's default personal property choice of law provision, California Civil Code § 946,³ applied to the Fund's post-mortem right of publicity claim and required application of the law of Great Britain, which does not recognize a post-mortem right of publicity. Cairns I, 24 F.Supp.2d at 1023-29. The District Court denied Franklin Mint's motion to dismiss the Fund's Lanham Act claims for false endorsement, false advertisement, and dilution of trademark. Id. at 1022-23. The District Court also denied the Fund's motion for a preliminary injunction on these Lanham Act claims. Id. at 1023. On December 30, 1999, on interlocutory appeal under 28 United States Code § 1292(a)(1), we affirmed the District Court's dismissal of the Fund's post-mortem right of publicity claim and the denial of a preliminary injunction on the Fund's Lanham Act claims in an unpublished memorandum disposition which was amended on February 24, 2000. Diana Princess of Wales Memorial Fund v. Franklin Mint Co., Nos. 98-56722, 99-55157, 1999 WL 1278044 (9th Cir. Feb. 24, 2000).

After the District Court dismissed the Fund's post-mortem right of publicity claim, the California Legislature renumbered the post-mortem right of publicity statute from § 990 to § 3344.1 and amended it to "apply to the adjudication of liability and the imposition of any damages or other remedies in cases in which the liability, damages, and other remedies arise from acts occurring directly in this state." CAL. CIV. CODE § 3344.1(n). Based on this amendment, the Fund filed a motion to reinstate its dismissed post-mortem right of publicity claim. The Fund argued that § 3344.1(n) is a choice of law provision that requires application of California law, which recognizes a post-mortem right of publicity.

On June 22, 2000, the District Court denied the Fund's motion to reinstate its post-mortem right of publicity claim and motion for a preliminary injunction. Cairns v. Franklin Mint Co., 120 F.Supp.2d 880, 887 (C.D.Cal.2000) ["Cairns II"]. The District Court concluded, based on the plain language of § 3344.1(n) and its legislative history, that this section is not a choice of law provision. Id. at 883-85. The District Court further concluded that California's default personal property choice of law provision, California Civil Code § 946, continues to apply to the Fund's post-mortem right of publicity claim and requires application of the law of Great Britain, which does not recognize a post-mortem right of publicity. Cairns II, 120 F.Supp.2d at 881-82.

On June 27, 2000, the District Court granted Franklin Mint's motion for summary judgment on the Fund's Lanham Act false endorsement claim. Cairns v. Franklin Mint Co., 107 F.Supp.2d 1212, 1223 (C.D.Cal.2000) ["Cairns III"]. The District Court concluded that Franklin Mint's use of Princess Diana's name and likeness did not implicate the source identification purpose of trademark protection. Id. at 1214-16. The District Court also applied AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979), and concluded that there was no likelihood of consumer confusion as to the origin of Franklin Mint's Diana-related products. Cairns III, 107 F.Supp.2d at 1216-21.⁴

On September 12, 2000, the District Court granted Franklin Mint's motion for attorneys' fees and awarded Franklin Mint $2,308,000 in attorneys' fees out of $3,124,121.85 requested. Cairns v. Franklin Mint Co., 115 F.Supp.2d 1185, 1190 (C.D.Cal.2000) ["Cairns IV"].

The Fund timely appealed the District Court's denial of its motion to reinstate the post-mortem right of publicity claim and the District Court's grant of Franklin Mint's motion for summary judgment on the Lanham Act claim for false endorsement (No. 00-56217). Separately, the Fund timely appealed the District Court's award of attorneys' fees to Franklin Mint (No. 00-56796). The two appeals have been consolidated.

II. POST-MORTEM RIGHT OF PUBLICITY CLAIM

A. Introduction

California's post-mortem right of publicity statute, in both its former version, California Civil Code § 990(a) (West 1998), and its current version, California Civil Code § 3344.1(a) (West 2002), provides in part that "[a]ny person who uses a deceased personality's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods, or services, without prior consent from the [decedent's successor or successors in interest], shall be liable for any damages sustained by the person or persons injured as a result thereof." It further provides that "[t]he rights recognized under this section are [personal] property rights." CAL. CIV. CODE § 990(b) (West 1998); CAL. CIV. CODE § 3344.1(b) (West 2002).

As enacted in 1984 and amended in 1988, California's post-mortem right of publicity statute did not contain a choice of law provision. See CAL. CIV. CODE § 990 (West 1998). The District Court concluded that California's default personal property choice of law provision in California Civil Code § 946 applied to the Fund's post-mortem right of publicity claim and required application of the law of the decedent's domicile.⁵ The law of Great Britain, where Princess Diana was domiciled, does not recognize post-mortem right of publicity claims. See Bi-Rite Enters. v. Bruce Miner Co., 757 F.2d 440, 442 (1st Cir.1985) (citing Tolley v. Fry, 1 K.B. 467 (1930)); J. Thomas McCarthy, Rights of Publicity & Privacy, § 6.21 (1998). Accordingly, the District Court dismissed the claim. On interlocutory appeal of this...