Seattle Trademark Lawyer

Celebrities’ right of publicity claims are stronger than their Lanham Act claims, the Ninth Circuit recently found. At least in some situations.

On July 31, the court decided two cases former football players brought against Electronic Arts, Inc. The players argued the video game publisher featured avatars that many users would recognize as depicting them, without their permission.

In one case, former college quarterback Samuel Keller, representing similarly-situated former college football and basketball players, argued the use violated his right of publicity under California state law — the statutory right to stop the unauthorized use of his likeness for commercial purposes.  In the other, former pro football great Jim Brown focused on the federal Lanham Act, arguing that use of avatars with his likeness was likely to confuse consumers into believing the players had endorsed EA’s games.

In the Keller case, EA filed a motion to strike under California’s statute against Strategic Lawsuits Against Public Participation, arguing its use of Keller’s likeness was protected by the First Amendment. The Ninth Circuit affirmed the district court’s finding that EA’s use was not constitutionally protected as a matter of law. It instead applied the “transformative use” test the court had applied in earlier right of publicity cases, finding that EA’s use of Keller’s likeness was the reason why consumers would purchase its games — not because its artistic expression had transformed his likeness into something akin to an expressive work of art.

The court concluded: “Under the ‘transformative use’ test developed by the California Supreme Court, EA’s use does not qualify for First Amendment protection as a matter of law because it literally recreates Keller in the very setting in which he has achieved renown.”

In the Brown case, similar facts yielded the opposite result. Due to a different claim for federal jurisdiction. Brown relied on the Lanham Act rather than a state claim for right of publicity.

That difference made all the difference. As a Lanham Act claim, the court applied prior precedent adopting what’s known as the “Rogers” test. Under that test, Lanham Act claims “will not be applied to expressive works ‘unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [use of trademark or other identifying material] explicitly misleads as to the source or the content of the work.’”

Applying that test, the court affirmed the district court’s dismissal of Brown’s claim.

“As expressive works, [EA’s] Madden NFL video games are entitled to the same First Amendment protection as great literature, plays, or books. Brown’s Lanham Act claim is thus subject to the Rogers test, and we agree with the district court that Brown has failed to allege sufficient facts to make out a plausible claim that survives that test. Brown’s likeness is artistically relevant to the games and there are no alleged facts to support the claim that EA explicitly misled consumers as to Brown’s involvement with the games. The Rogers test tells us that, in this case, the public interest in free expression outweighs the public interest in avoiding consumer confusion.”

Big decisions, both. Among other things, they illustrate how legal strategy can determine how similar cases can yield opposite results. 

The case cites are In re NCAA Student-Athlete Name & Likeness Licensing Litig., __ F.3d __, No. 10-15387, 2013 WL 3928293 (9th Cir. July 31, 2013), and Brown v. Elec. Arts, Inc., __ F.3d __, No. 09-56675, 2013 WL 3927736 (9th Cir. July 31, 2013).

Courts don’t award attorney’s fees that often in trademark cases.

That’s because the statute only authorizes fees awards in “exceptional” cases.

So what’s that mean?

The Ninth Circuit recently reviewed the standard. “Under the Lanham Act, ‘[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.’”

For the plaintiff, “[a]n exceptional case is one ‘where the acts of infringement can be characterized as ‘malicious’, ‘fraudulent’, ‘deliberate’, or ‘willful.’” For the defendant, “’[e]xceptional circumstances can be found when the non-prevailing party’s case is groundless, unreasonable, vexatious, or pursued in bad faith.’”

The court added that ”’[w]hile a finding that the losing party has acted in bad faith may provide evidence that the case is exceptional, other exceptional circumstances may warrant a fee award.’”

The court didn’t offer much analysis in upholding the district court’s award to the prevailing plaintiff. It just said that “[c]onsidering all of the circumstances of this case, including the jury’s verdict, we agree with the district court that the threshold standard for awarding fees has been met, and further that the district court did not abuse its discretion in awarding attorneys’ fees.”

A little more explanation would have been nice. However, trademark owners still have an important take-away from the decision: it’s important to know the court’s standards when seeking or defending against a claim for attorney’s fees. Most claims won’t cut it, but the cases with egregious facts can.

The case cite is Haas Automation, Inc. v. Denny, No. 11-56991, 2013 WL 2303528 (9th Cir. May 28, 2013).

The Ninth Circuit’s May 21 decision in U.S. v. Chen says a lot about the folks who make money selling counterfeit goods. Not surprisingly, they make money a whole lot of nasty ways.

Mr. Chen was convicted of trafficking in counterfeit Marlboro cigarettes.

But that’s not all.

The first line of the opinion summarizes his misdeeds: “Yi Qing Chen appeals his conviction and sentence on five counts involving smuggling of cocaine, methamphetamine, cigarettes, and missiles.”

Missiles?!

That’s right. A guy who transported “roughly 8 million cigarettes” also conspired “to acquire missiles designed to destroy aircraft.”

The court found: “In his post-arrest statement Chen stated that the missiles would have been delivered” if he had been paid.

Wow!

Counterfeiters are criminals. It shouldn’t be surprising some of them are involved in selling more than fake consumer goods.

The case cite is United States v. Yi Qing Chen, No. 11-50196, 2013 WL 2177019 (9th Cir. May 21, 2013).

If the court’s jury instructions aren’t correct, the verdict that follows can’t stand.

That’s the principle the Ninth Circuit applied last week in Neurovision Med. Products Inc. v. NuVasive, Inc., a trademark infringement case in which the jury awarded Neurovision $60M.

The basis for the jury’s finding was that NuVasive committed fraud in procuring its trademark registrations, that Neurovision had prior rights in its trademark, and that NuVasive willfully infringed Neurovision’s trademark rights. At issue were the parties’ competing rights to NEUROVISION as a trademark.

The Ninth Circuit found the jury’s verdict that NuVasive fraudulently obtained its trademark registrations must be vacated because the Central District of California erroneously instructed the jury as to the elements needed to prove fraud on the U.S. Patent and Trademark Office. Such proof requires a “material misrepresentation in the affidavit on the basis of which the mark was registered.” Pony Express Courier Corp. of Am. v. Pony Exp. Delivery Serv., 872 F.2d 317, 319 (9th Cir. 1989).

The court noted: “There is no requirement that an applicant for a trademark registration disclose all prior use of a mark, contrary to the district court’s instruction. Instead, an applicant must disclose only those prior users that the applicant believes have acquired superior rights to the mark in the classification for which registration is sought. The district court erred by instructing the jury to determine only whether NuVasive omitted knowledge of [Neurovision’s] prior use of the NEUROVISION mark; the proper inquiry is whether NuVasive wilfully omitted knowledge of a superior right held by [Neurovision]. Moreover, the district court erroneously omitted from the jury instructions a key element of proving fraud on the USPTO: that a trademark applicant intend to induce reliance on a misrepresentation.”

The Ninth Circuit also found the district court erred in instructing the jury about what was required to challenge an incontestable trademark.

“The judgment below must be vacated because the district court instructed the jury to answer only whether [Neurovision] ‘establish[ed] trademark rights in the mark ‘NEUROVISION’ through prior use of the mark in commerce,’ and failed to require that the jury determine both the geographic scope of [Neurovision’s] rights and whether [Neurovision] maintained continuous use of the mark following the acquisition of any state law rights in the mark.”

Because it found the district court had “ignored our precedent, persistently cut off or excluded relevant testimony, and repeatedly instructed the jury incorrectly,” the Ninth Circuit took the unusual position of requiring that the case be reassigned to a different judge on remand.

The case cite is Neurovision Med. Products Inc. v. NuVasive, Inc., No. 11-55120, 2012 WL 3900682 (9th Cir. Sept. 10, 2012).

Here’s a new one.

My name is my trademark. You infringed it, because I’m an ex-drug dealing rapper. You? You’re no criminal. You even went to college! By adopting my name as your rap persona, you deceive the public into believing that you’re a criminal when you’re not. That’s infringement!

From plaintiff Ricky D. Ross’ complaint: “Plaintiff’s common law, federal trademark and ‘Rick Ross’ trade name, was infringed upon and violated by Defendant William Leonard Roberts II, who trades as, did business as and performed as the ex-drug dealing rapper named Rick Ross, fraudulently with intent to knowingly deceive the public about his true non-drug correctional and law enforcement background, and Defendants joined the scheme by bankrolling him using Roberts’ false Rick Ross name and image in commerce, which was well known in criminal, drug and law enforcement circles that Defendant Roberts either knew of, worked in, or could have learned about while in college, in the rap music culture that emulates and idolizes urban criminals and dealers, in the Black community, or from his correctional officer employment in 1996, or any time thereafter when Plaintiff was in prison, but his name was in the news.”

The Central District of California granted defendants’ motion to dismiss.

Here’s the Ninth Circuit’s July 11 holding: “Ricky D. Ross appeals pro se from the district court’s order dismissing with prejudice his federal trademark causes of action under the Lanham Act for failure to state a claim, and declining to exercise supplemental jurisdiction over Ross’s various state law claims. We have jurisdiction under 28 U.S.C. § 1291. We review de novo, and we affirm. The district court properly dismissed Ross’s trademark claims because Ross failed to state viable grounds for relief. Further, the district court properly decided the motion to dismiss without oral argument. Ross’s remaining contentions are unpersuasive.”

Ross v. Roberts, No. 10-56874, 2012 WL 2832477 (9th Cir. July 11, 2012).