Cairns v. Franklin Mint Co.

• Decision Date: 27 June 2000
• Docket Number: No. CV98-3847-FMC(BQRx).,CV98-3847-FMC(BQRx).
• Citation: 107 F.Supp.2d 1212
• Court: U.S. District Court — Central District of California
• Parties: Lord Simon CAIRNS, et al., Plaintiffs, v. FRANKLIN MINT CO., et al., Defendants.

107 F.Supp.2d 1212

Lord Simon CAIRNS, et al., Plaintiffs, v. FRANKLIN MINT CO., et al., Defendants.

No. CV98-3847-FMC(BQRx).

United States District Court, C.D. California.

June 27, 2000.

Shari Mulrooney Wollman, Mark S. Lee, Seth A. Gold, Alison Spear Ullendorff, Manatt, Phelps & Phillips, Los Angeles, CA, Cara R. Burns, Gradstein, Luskin & Van Dalsem, Los Angeles, CA, for Plaintiff.

Robert A. Meyer, Douglas E. Mirell, Daniel J. Friedman, Lisa Lyn Horlick, Robert N. Treiman, Loeb & Loeb, Los Angeles, CA, for Defendants.

ORDER GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT; DENYING PLAINTIFFS' MOTION FOR SUMMARY ADJUDICATION ON DEFENDANTS' AFFIRMATIVE DEFENSES

COOPER, District Judge.

I. Introduction

Plaintiffs are the executors of the Estate of Diana, Princess of Wales (the "Estate"), and the trustees of the Diana, Princess of Wales Memorial Fund (the "Fund"). Defendants sell jewelry, commemorative plates, sculptures and dolls depicting Princess Diana. Plaintiffs asserted claims against all defendants for (1) false endorsement under 15 U.S.C. § 1125(a); (2) federal trademark dilution under 15 U.S.C. § 1125(c); (3) infringement of California's statutory right of publicity; (4) false advertising under 15 U.S.C. § 1125(a); and (5) unfair competition and false advertising under California Code § 17200. Additional facts will be discussed as necessary below. A detailed recitation of the factual and procedural background of this case is found in this Court's order of October 16, 1998, published at Lord Simon Cairns, et al. v. Franklin Mint, 24 F.Supp.2d 1013, 1021-1022 (C.D.Cal.1998).

Plaintiffs' third claim for relief was dismissed by this Court on October 18, 1998. Defendants have moved for summary adjudication of each of plaintiffs' remaining claims. Plaintiffs have moved for summary adjudication of defendants' affirmative defenses.

II. Standard

Summary judgment or summary adjudication is only proper where "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed. Rule Civ. Proc. 56(c); see also Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).

The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). If the moving party meets its initial burden, the "adverse party may not rest upon the mere allegations or denials of the adverse party's pleading, but the adverse party's response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial." Fed. R. Civ. Proc. 56(e), Summary judgment is appropriate where the nonmoving party fails to make a sufficient showing on an essential element of the case on which that party will bear the burden of proof at trial. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

III. Plaintiffs' Claim for False Endorsement

Plaintiffs' complaint alleges that defendants' use of the image and title of Princess Diana falsely implies an endorsement by, association with, or affiliation with the Estate and the Fund in violation of 15 U.S.C. § 1125(a). Plaintiffs do not allege that defendants use a particular photograph, depiction or image of Princess Diana. Instead, they contend that any use of Princess Diana's image or the words "Diana, Princess of Wales" by defendants falsely implies endorsement by the Estate or the Fund. Although plaintiffs have marks of their own,¹ they have framed their claim as one for false endorsement based on the use of Princess Diana's image and title. It is undisputed that defendants do not use either of the plaintiffs' marks.

A. Use of a Celebrity's Image

It is clear that not all uses of a celebrity's image are actionable under § 1125(a). Only uses which suggest sponsorship or approval are prohibited. Unlike the broader right of publicity, which is infringed by the "unpermitted use of a person's identity" containing "no false inference that plaintiff endorses or approves the product," § 1125(a) prohibits only false endorsement, not mere use of an image or name. 5 J. THOMAS McCARTHY, McCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 28:14 (4th ed.1996) (emphasis added). Indeed, "competitors may use a rival's trademark in advertising and other channels of communication if the use is not false or misleading." New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 307 (9th Cir.1991); see also Smith v. Chanel, Inc. 402 F.2d 562, 563 (9th Cir.1968) (use of a trademark to describe one's own product as a replica of the trademarked product does not constitute trademark infringement).

A false endorsement claim based on the unauthorized use of a celebrity's identity is a type of false association claim for it alleges that misuse of a trademark "which is likely to confuse consumers as to the plaintiff's sponsorship or approval of the product." Wendt v. Host Int'l, Inc., 125 F.3d 806, 812 (9th Cir.1997); see also Abdul-Jabbar v. General Motors Corp., 85 F.3d 407, 410 (9th Cir.1996); Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1110 (9th Cir. 1992); White v. Samsung Electronics America, Inc., 971 F.2d 1395, 1399 (9th Cir.1992).

In each of the false endorsement cases, the celebrities' images were used in commercial advertising to promote a product and clearly communicated an endorsement. See e.g. Wendt, 125 F.3d at 809 (use of actors' likenesses on animatronic figures in marketing "Cheers" bars); Abdul-Jabbar, 85 F.3d at 409 (use of Abdul-Jabbar's given name in car commercial); Waits, 978 F.2d at 1097 (use of likeness of Waits' distinctive voice in Doritos commercial); White, 971 F.2d at 1396 (use of White's likeness as a robot in television commercials for VCRs). As the Ninth Circuit observed in Abdul-Jabbar, "the use of celebrity endorsements in television commercials is ... well established by commercial custom." Abdul-Jabbar, 85 F.3d at 413. In each of these cases where defendants' uses clearly implied an endorsement, see McCarthy, supra, at § 28:14, the Ninth Circuit analyzed the likelihood of consumer confusion as to the celebrities' endorsement by using the factors set forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979).

Although these cases clearly establish the right of a living celebrity to assert a claim for false endorsement, as this Court has observed in this case, "neither the availability nor the parameters of a false endorsement claim brought by the estate of a celebrity have been established." Lord Simon Cairns, et al. v. Franklin Mint, 24 F.Supp.2d at 1032. Plaintiffs point to no authority to support their contention that they may assert a claim based on the use of Princess Diana's image. Instead, they present evidence that the Patent and Trademark Office ("PTO") has permitted estates of other celebrities to register trademarks based on the celebrities' images, The trademark registrations demonstrate that the PTO has permitted estates of celebrities to register the names of the celebrities as trademarks. See Dec. Lee, Ex. 1. With the exception of the registration for James Dean, each registration states that the trademark is for the "words only" of the celebrities' name. See id. A profile design of James Dean is registered as a design mark in addition to the trademark for his name. See id. at 130. No evidence presented to the Court supports plaintiffs' contention that any and all uses of a celebrity's image may be the subject of a trademark registration. Although it is clear that living celebrities have broad rights in preventing others from using their image to imply endorsement, it is not clear that a deceased celebrity's estate possesses the same scope of endorsement rights. Accordingly, the Court hesitates to import, en masse, the analysis employed in the Ninth Circuit's false endorsement cases to the facts of this case.

Adding to the Court's reluctance is the fact that defendants' use of Princess Diana's image in this case is clearly distinguishable from that found in the false endorsement cases. In this case, defendants use Princess Diana's image on their products rather than in advertising to sell unrelated products.² Obviously the advertising for defendants' products necessarily employs the image of Princess Diana and her title to describe the products. Nonetheless, defendants' sale of Princess Diana's image is vastly different from the advertising use of celebrities' likenesses in selling restaurant chains, cars, Doritos and VCRs. See Wendt, 125 F.3d at 809; Abdul-Jabbar, 85 F.3d at 409; Waits, 978 F.2d at 1097; White, 971 F.2d at 1396.

Defendants' use in this case is more akin to that found in New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir.1991), where newspapers used a photo of the musical group along with its name to advertise their reader polls about the group. In that case, the Ninth Circuit held that nominative use of celebrities' images and names is outside the protection of trademark law. "Because it does not implicate the source-identification function that is the purpose of trademark, it does not constitute unfair competition[.]" New Kids, 971 F.2d at 308. Although the New Kids court reached the above conclusion in analyzing defendants' fair use defense, the same threshold consideration is applicable to this case; does defendants' use of the image and title of Princess Diana serve to identify the source of any product? In short, are they used as trademark? If not, defendants' use cannot amount to use as an endorsement.

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