|
GEORGE
DOWNING, an individual; PAUL STRAUCH, an individual; RICK STEERE, an
individual; RICHARD BUFFALO KEAULANA, an individual; BEN AIPA, an individual;
MIKE DOYLE, an individual; JOEY CABELL, an individual, Plaintiffs-Appellants,
v. ABERCROMBIE & FITCH, an Ohio corporation, Defendant-Appellee. Nos.
00-55363, 00-55834 UNITED
STATES COURT OF APPEALS FOR THE NINTH CIRCUIT 265
F.3d 994; 2001 U.S. App. LEXIS 20377; 60 U.S.P.Q.2D (BNA) 1184; Copy. L. Rep.
(CCH) P28,315; 29 Media L. Rep. 2390; 2001 Cal. Daily Op. Service 8043; 2001
Daily Journal DAR 9963 March
7, 2001, Argued and Submitted, Pasadena, California September
13, 2001, Filed SUBSEQUENT HISTORY: Related proceeding at Spangler v.
Abercrombie & Fitch, 2003 U.S. App. LEXIS 21938 (9th Cir. Cal., Oct. 24,
2003) PRIOR HISTORY: [*1] Appeal from the United States District
Court for the Central District of California. D.C. No. CV-99-04612-MLR. Manuel
L. Real, District Judge, Presiding. COUNSEL: Brent H. Blakely, Manhattan Beach,
California, for the appellants. Joel McCabe Smith and David Aronoff, Leopold,
Petrich & Smith, P.C., Los Angeles, California, for the appellee. JUDGES: Before: Procter Hug, Jr. and Betty B.
Fletcher, Circuit Judges, and Samuel P. King, District Judge. * Opinion by Judge
Hug. * Honorable Samuel P. King, Senior United
States District Judge, sitting by designation. OPINIONBY: Procter
Hug, Jr. OPINION: HUG, Circuit Judge: Appellants brought this diversity action
against Abercrombie and Fitch (“Abercrombie”) for publishing
a photograph of them, with identification of their names, for
Abercrombie’s commercial benefit without the Appellants’
authorization. They allege a violation of California’s common law and
statutory prohibition against misappropriation of a person’s name and
likeness for commercial purposes, a violation of the Lanham Act for confusion
and deception indicating sponsorship of Abercrombie goods, and a claim for
negligence and defamation. [*2]
The district court entered summary judgment for Abercrombie, holding that their
California state claims were foreclosed because Abercrombie’s use of
the photograph was protected by the First Amendment, and those claims were also
preempted by the federal Copyright Act; that Hawaii law was the proper choice
of law for some of these claims; that the Lanham Act claim was precluded by the
First Amendment and it was also precluded by the nominative fair use doctrine;
and that there was insufficient evidence to sustain the negligence or defamation
claims. The district court had jurisdiction under 28 U.S.C.
§ 1332, and we have appellate jurisdiction under 28 U.S.C.
§ 1291. We reverse the grant of summary judgment and remand
for trial. BACKGROUND I. Factual Background Abercrombie is an outfitter catering to young
people. The upscale retailer sells casual apparel for men and women, including
shirts, khakis, jeans, and outerwear. In addition to sales in approximately 200
stores nationwide, Abercrombie also sells merchandise through its subscription
catalog, the “Abercrombie and Fitch Quarterly”
(“Quarterly”). The Quarterly is Abercrombie’s
largest [*3] advertising
vehicle. It accounts for approximately 80% of Abercrombie’s overall
advertising budget. The primary purpose of the Quarterly is to build brand
awareness and increase sales. Each issue is over 250 pages in length and
embraces a theme such as collegiate lifestyle, back to school, or winter wear.
The Quarterly contains photographs of models wearing Abercrombie’s
garments as well as pictures of the clothing displayed for sale. In addition,
approximately one-quarter of each issue is devoted to stories, news and other
editorial pieces. In 1998, Michael Jeffries,
Abercrombie’s CEO, developed a surfing theme for the upcoming
Quarterly. Abercrombie held the photo shoot for the upcoming issue at San
Onofre Beach, California. While at the photo shoot, Abercrombie employees Sam
Shahid and Savas Abadsidis looked through a compilation of surfing photographs
by surf photographer LeRoy Grannis. The photo book contained a picture of
Appellants which Grannis had taken at the 1965 Makaha International Surf
Championship in Hawaii. Sam Shahid purchased the photograph, along with three
other photographs from the book, for $ 100 each. LeRoy Grannis then handwrote
the names of Appellants at the [*4]
bottom of the photograph. Subsequently, Sam Shahid showed
Appellants’ photograph to Jeffries who decided to use the photograph
in the upcoming Quarterly. Abercrombie did not obtain Appellants’
permission. Jeffries also decided to create t-shirts, exactly like those worn
by the Appellants in the photograph, for sale in the upcoming issue.
Abercrombie labeled the t-shirts “Final Heat Tees.” The
t-shirts were advertised for sale in the Quarterly. The Spring 1999 Quarterly, “Spring
Fever,” contains a section entitled “Surf Nekkid.”
The “Surf Nekkid” section includes an article recounting the
history of surfing. Abercrombie also included a 700-word story, entitled
“Your Beach Should Be This Cool,” describing the history of
Old Man’s Beach at San Onofre, California. The following page exhibits
the photograph of Appellants. The two pages immediately thereafter feature the
“Final Heat Tees.” The “Spring Fever” issue
contains other articles about the surfing lifestyle. An article entitled
“Beachcombing” documents the efforts of the Surfrider
Foundation, an ecological group founded by surfers. Still another article
entitled “Where the Wild Things Are,” written by the editor
of Surfer Magazine, [*5] describes
various surfer “types.” Also contained in the issue is an
interview of Nat Young, former world surfing champion and the first
professional surfer. The interview is accompanied by photographs of Young and
his son wearing Abercrombie clothing. II. Procedural History On April 28, 1999, Appellants George Downing,
Paul Strauch, Rick Steere, Richard Buffalo Keaulana, and Ben Aipa filed a
complaint in the United States District Court for the Central District of
California. Appellants later amended the complaint to add Joey Cabell and Mike
Doyle. Appellants alleged that Abercrombie misappropriated their names and likenesses
in violation of California’s statutory and common law protections
against commercial misappropriation, that the publication of the photograph in
the catalog violated the Lanham Act and they alleged claims for negligence and
defamation. Subsequently, Appellants and Abercrombie both filed motions for
summary judgment. The district court entered summary judgment for Abercrombie.
Appellants timely appealed. Abercrombie then filed a motion for
attorneys’ fees and other expenses. The district court granted the
motion, awarding Abercrombie approximately one-fourth [*6] of the attorneys’ fees that it
sought. Appellants timely filed a notice of appeal from that order. We
consolidated the two appeals. On appeal, Appellants contend: (1) Abercrombie’s
use of the photograph is not protected under the First Amendment; (2) the state
law publicity claims are not preempted by the Copyright Act; (3) California law
is the proper choice of law for the claim under California Civil Code § 3344;
(4) triable issues of fact exist with regard to the Lanham Act claims; (5)
triable issues of fact exist with regard to the defamation claim; (6) the
district court erred in denying the motion for a continuance; (7) the district
court erred in awarding attorneys’ fees and costs to Abercrombie. n1 - - - - - - - - - - - - - - Footnotes - - - -
- - - - - - - - - - - n1 The Appellants do not appeal the summary
judgment on their negligence claim. - - - - - - - - - - - - End Footnotes- - - -
- - - - - - - - - - STANDARD OF REVIEW The district court’s grant of
summary judgment is reviewed de novo. Botosan v. Paul McNally Realty,
216 F.3d 827, 830 (9th Cir. 2000). We must determine, viewing the evidence in
the light [*7] most favorable to
the nonmoving party, whether there are any genuine issues of material fact and
whether the district court correctly applied the relevant substantive law. Lopez
v. Smith, 203 F.3d 1122, 1131 (9th Cir. 2000) (en
banc). ANALYSIS I. First Amendment and Right of Publicity
Claims The district court concluded that
Abercrombie’s use of the photograph containing Appellants’
names and likenesses was proper because it constituted expression protected
under the First Amendment. We disagree. California has long recognized a common law
right of privacy for protection of a person’s name and likeness
against appropriation by others for their advantage. See Eastwood v.
Superior Court, 149 Cal. App. 3d 409, 416, 198 Cal. Rptr.
342 (Ct. App. 1983). To sustain a common law cause of action for commercial
misappropriation, a plaintiff must prove: “(1) the
defendant’s use of the plaintiff’s identity; (2) the
appropriation of plaintiff’s name or likeness to defendant’s
advantage, commercially or otherwise; (3) lack of consent; and (4) resulting
injury.” Id. at 417. In addition to the common law cause of
action, California has provided [*8]
a statutory remedy for commercial misappropriation under California Civil Code
§ 3344. The remedies provided for under California Civil Code
§ 3344 complement the common law cause of action; they do not
replace or codify the common law. See Newcombe v. Adolf Coors Co.,
157 F.3d 686, 691-92 (9th Cir. 1998). Section 3344
provides in relevant part, “any person who knowingly uses
another’s name, voice, signature, photograph, or likeness, in any
manner … for purposes of advertising … without such
person’s prior consent … shall be liable for any damages
sustained by the person.” Cal. Civ. Code § 3344(a).
Under section 3344, a plaintiff must prove all the elements of the common law
cause of action. In addition, the plaintiff must allege a knowing use by the
defendant as well as a direct connection between the alleged use and the
commercial purpose. See Eastwood, 149 Cal. App. 3d at
417. Under both the common law cause of action and
the statutory cause of action “no cause of action will lie for the
publication of matters in the public interest, which rests on the right of the
public to know and the freedom of the press to tell it.” Montana v.
San Jose Mercury News, Inc., 34 Cal. App. 4th 790,
793 (Ct. App. 1995). [*9] This First
Amendment defense extends “to almost all reporting of recent
events,” as well as to publications about “people who, by
their accomplishments, mode of living, professional standing or calling, create
a legitimate and widespread attention to their activities.” Eastwood,
149 Cal. App. 3d at 422. However, the defense is not absolute; we must find
“a proper accommodation between [the] competing concerns” of
freedom of speech and the right of publicity. Id. In the instant case, Abercrombie defends on
the basis of the First Amendment arguing that the photograph illustrates an
article about surfing, a matter in the public interest. To support its defense,
Abercrombie relies on Dora v. Frontline Video, Inc.,
15 Cal. App. 4th 536 (Ct. App. 1993). In Dora, the court held that a surfing
documentary was in the public interest because it was “about a certain
time and place in California history and, indeed, in American legend.”
Id. at 543. Dora involved a surfing legend, Mickey Dora, who
sued the producer of a video documentary on surfing claiming common law and
statutory appropriation of his name and likeness. See id.
at 540. [*10] The trial court
entered summary judgment for the film’s producer and the California
Court of Appeal affirmed. See id. In addressing the First
Amendment issue, the court found that the documentary was about a matter of
public interest, specifically surfing, and, therefore, the producer was
protected by the defense. See id. at 544. In so
concluding the court stated: surfing is of more than
passing interest to some. It has created a life-style that influences speech,
behavior, dress, and entertainment, among other things. A phenomenon of such
scope has an economic impact, because it affects purchases, travel, and the
housing market. Surfing has also had a significant influence on the popular
culture, and in that way touches many people. It would be difficult to conclude
that a surfing documentary does not fall within the category of public affairs. Id.
at 546. Although the theme of Abercrombie’s
catalog was surfing and surf culture, a matter of public interest, the use of
Appellants’ names and pictures is quite different from that involved
in the Dora case. In Dora, Mickey Dora’s
contribution to the development of the surf [*11]
life-style and his influence on the sport was “the point of the
program.” Id. at 543. Dora was depicted in the documentary because his
identity directly contributed to the story about surfing which came within the
protected public interest. In the current action, there is a tenuous
relationship between Appellants’ photograph and the theme presented.
Abercrombie used Appellants’ photograph essentially as window-dressing
to advance the catalog’s surf-theme. The catalog did not explain that
Appellants were legends of the sport and did not in any way connect Appellants
with the story preceding it. In fact, the catalog incorrectly identifies where
and when the photograph was taken. We conclude that the illustrative use of
Appellants’ photograph does not contribute significantly to a matter
of the public interest and that Abercrombie cannot avail itself of the First
Amendment defense. n2 Accordingly, we reverse the district court’s
grant of summary judgment in favor of Abercrombie. - - - - - - - - - - - - - - Footnotes - - - -
- - - - - - - - - - - n2 This case is also distinguishable from Hoffman
v. L.A. Magazine, 255 F.3d 1180, slip op. at 8591 (9th Cir.
2001), in which the defendant magazine successfully asserted a First Amendment
defense to Dustin Hoffman’s claim of misappropriation. In that case,
L.A. Magazine used a digitally-altered picture of Hoffman, as
“Tootsie,” in a current designer dress to illustrate its
“Grand Illusions” article. We concluded that such use was
noncommercial speech entitled to full First Amendment protection. Id.
at 8600. In contrast to the present case, where Abercrombie, itself, used
Appellants’ images in its catalog to promote its clothing, L.A.
Magazine was unconnected to and received no consideration from the designer for
the gown depicted in the article. Id. at 8599. Further, while
L.A. Magazine merely referenced a shopping guide buried in the back of the
magazine that provided stores and prices for the gown, id., Abercrombie placed
the Appellants’ photograph on the page immediately preceding the
“Final Heat Tees” for sale. Based on these factors, we
conclude that Abercrombie’s use was much more commercial in nature
and, therefore, not entitled to the full First Amendment protection accorded to
L.A. Magazine’s use of Hoffman’s image. Id.
at 8601. - - - - - - - - - - - - End Footnotes- - - -
- - - - - - - - - - [*12] II. Federal Copyright Preemption Abercrombie contends that its right to
reproduce and publish the photograph of the Appellants is governed by the
federal Copyright Act, 17 U.S.C. §§ 101-1101, and
that Appellants’ state law claims are preempted by federal copyright
law. “When acting within constitutional
limits, Congress is empowered to pre-empt state law by so stating in express
terms.” California Fed. Sav. & Loan Ass’n v. Guerra,
479 U.S. 272, 280, 93 L. Ed. 2d 613, 107 S. Ct. 683 (1987). Under 17 U.S.C.
§ 301, States are expressly prohibited from legislating in
the area of copyright law. n3 In order for preemption to occur under the
federal Copyright Act, two conditions must be satisfied. First, the content of
the protected right must fall within the subject matter of copyright as
described in 17 U.S.C. §§ 102 and 103. Second, the right asserted under state law must be
equivalent to the exclusive rights contained in section 106 of the Copyright
Act. See Del Madera Properties v. Rhodes & Gardner, Inc.,
820 F.2d 973, 976 (9th Cir. 1987) (overruled on other grounds). - - - - - - - - - - - - - - Footnotes - - - -
- - - - - - - - - - - n3 Section 301(a) of 17 U.S.C. preempts: all legal or equitable
rights that are the equivalent to any of the exclusive rights within the
general scope of copyright as specified by sections 102 and 103, whether
created before or after that date and whether published or unpublished, are
governed exclusively by this title. Thereafter, no person is entitled to any
such right or equivalent right in any such work under the common law or
statutes of any State. -
- - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*13] The subject matter protected by the Copyright
Act is set forth in 17 U.S.C. § 102, which provides in
relevant part as follows: Copyright protection
subsists … in original works of authorship fixed in any tangible
medium of expression, now known or later developed, from which they can be
perceived, reproduced, or otherwise communicated, either directly or with the
aid of a machine or device. Works of authorship include … pictorial,
graphic, and sculptural works. Section 103 provides that the subject matter
specified in § 102 also includes compilations and derivative
works, “but the copyright in a compilation or derivative work extends
only to the material contributed by the author of such works as distinguished
from the preexisting material employed in the work.” Section 106 gives
the copyright holder exclusive rights to copy the copyrighted work or derivatives
and to distribute it to the public. The photograph itself, as a pictorial work of
authorship, is subject matter protected by the Copyright Act. See
17 U.S.C. § 101 (providing that “pictorial, graphic,
and sculptural works include … photographs.”) However, [*14]
it is not the publication of the photograph itself, as a creative work of
authorship, that is the basis for Appellants’ claims, but rather, it
is the use of the Appellants’ likenesses and their names pictured in
the published photograph. The Nimmer treatise on copyright law states: The “work” that is the subject
matter of the right of publicity is the persona, i.e., the name and likeness of
a celebrity or other individual. A persona can hardly be said to constitute a
“writing” of an “author” within the meaning
of the copyright clause of the Constitution. A fortiori it is not a “work
of authorship” under the Act. Such name or likeness does not become a
work of authorship simply because it is embodied in a copyrightable work such
as a photograph. 1 Nimmer on Copyright
§ 1.01[B][1][c] at 1-23 (1999). The same point is made in
McCarthy’s Treatise on Right of Publicity and Privacy: The “subject
matter” of a Right of Publicity claim is not a particular picture or
photograph of plaintiff. Rather, what is protected by the Right of Publicity is
the very identity or persona of the plaintiff as a human being … While
copyright in a given photograph may be owned [*15]
by the person depicted in it, the exact image in that photograph is not the
underlying “right” asserted in a Right of Publicity case. To
argue that the photograph is identical with the person is to confuse illusion
and illustration with reality. Thus, assertion of infringement of the Right of
Publicity because of defendant’s unpermitted commercial use of a
picture of plaintiff is not assertion of infringement of copyrightable “subject
matter” in one photograph of plaintiff. McCarthy, Rights of Publicity and Privacy
§ 11.13[C] at 11-72-73 (1997). A recent case in the Fifth Circuit held that
the Texas tort of misappropriation, which provides protection from the
unauthorized appropriation of one’s name, image, or likeness was not
preempted by the Copyright Act. See Brown v. Ames,
201 F.3d 654, 661 (5th Cir. 2000). The case involved a record
company’s misappropriation of the names and likenesses of individual
musicians, song writers, and music producers on the company’s
CD’s, tapes, catalogs, and posters. See id.
at 656-57. The court stated that “the tort of misappropriation of a
name or likeness protects a person’s persona. A persona [*16]
does not fall within the subject matter of copyright.” Id.
at 658. Thus, the court held that § 301 preemption does not
apply. A similar result was reached in a case
decided by a California Court of Appeal, KNB Enterprises v. Matthews,
78 Cal. App. 4th 362 (Ct. App. 2000). The California Court of Appeal held that
the state law right of publicity claims were not pre-empted by the Copyright
Act. See id. at 374-75. The copyright owner of erotic
photographs, which had been displayed without authorization and for profit on
an Internet website, brought suit against the website’s operator
asserting a misappropriation claim under California Civil Code
§ 3344. See id. at 365-66. The court
applied the two-part test for determining preemption and found that neither
condition had been met. See id. at 374. The court found
that “because a human likeness is not copyrightable, even if captured
in a copyrighted photograph, the models’ section 3344 claims against
the unauthorized publisher of their photographs are not the equivalent of a
copyright infringement claim and are not preempted by federal copyright
law.” [*17] Id.
at 365. We agree with the approach taken by the Fifth
Circuit and the reasoning employed in KNB Enterprises.
The subject matter of Appellants’ statutory and common law right of
publicity claims is their names and likenesses. See Newcombe,
157 F.3d at 691. A person’s name or likeness is not a work of
authorship within the meaning of 17 U.S.C. § 102. This is
true not-withstanding the fact that Appellants’ names and likenesses
are embodied in a copyrightable photograph. The same concept is specifically
embodied in 17 U.S.C. § 103, which provides that the
copyright in derivative works extends only to the material contributed by the
author as distinguished from preexisting material employed in the work. n4 - - - - - - - - - - - - - - Footnotes - - - -
- - - - - - - - - - - n4 Abercrombie relies on the California case
of Fleet v. CBS, 50 Cal. App. 4th 1911 (Ct. App. 1996). This
case was distinguished by both the Fifth Circuit in Brown,
201 F.3d at 658, and the California Court of Appeals in KNB Enterprises,
78 Cal. App. 4th at 370-71. In Fleet, the plaintiffs were actors in a
copyrighted film. The claims of the plaintiffs were based on their dramatic
performance in a film CBS sought to distribute. The court stated: We agree that as a
general proposition Civil Code section 3344 is intended to protect rights which
cannot be copyrighted and that claims made under its provisions are usually not
preempted. But appellants’ analysis crumbles in the face of one
obvious fact: their individual performances in the film White Dragon were
copyrightable. Since their section 3344 claims seeks only to prevent CBS from
reproducing and distributing their performances in the film, their claims must
be preempted by federal copyright law. Fleet, 50 Cal. App. 4th
at 1919. This is clearly distinguishable from this case where the
Appellants’ claim is based on the use of their names and likenesses,
which are not copyrightable. - - - - - - - - - - - - End Footnotes- - - -
- - - - - - - - - - [*18] The second requirement for copyright
preemption as noted above is that the right asserted under state law must be
equivalent to the exclusive rights contained in § 106 of the
Copyright Act. This requirement also is not met. Because the subject matter of
the Appellants’ statutory and common law right of publicity claims is
their names and likenesses, which are not copyrightable, the claims are not
equivalent to the exclusive rights contained in § 106. III. Choice of Law We review de novo a district court’s
decision concerning the appropriate choice of law. Abogados v. AT&T, Inc.,
223 F.3d 932 (9th Cir. 2000). “In reviewing the factual findings that
underlie the choice of law determination, this court must apply the clearly
erroneous standard.” Contact Lumber Co. v. P.T. Moges Shipping Co.,
Ltd., 918 F.2d 1446, 1450 (9th Cir. 1990). Applying choice of law principles, the
district court dismissed Appellants’ statutory misappropriation claim
as to the five Appellants who reside in Hawaii: George Downing, Rick Steere,
Richard Keaulana, Ben Aipa, and Joey Cabell. We conclude that the district
court erred in dismissing these claims. In a diversity [*19]
case, “federal courts apply the substantive law of the forum in which
the court is located, including the forum’s choice of law
rules.” Insurance Co. of North Am. v. Federal Express Corp.,
189 F.3d 914, 921 (9th Cir. 1999). This action was brought in a district court
in California. Therefore, we look to the choice of law rules applied in that
state. California applies a three-step “governmental
interest” analysis to choice-of-law questions: (1) “the court
examines the substantive laws of each jurisdiction to determine whether the
laws differ as applied to the relevant transaction”, (2) “if
the laws do differ, the court must determine whether a true conflict' exists in
that each of the relevant jurisdictions has an interest in having its law
applied”, and (3) “ if more than one jurisdiction has a
legitimate interest … the court [must] identify and apply the law of
the state whose interest would be more impaired if its law were not applied.”
Abogados, 223 F.3d at 934; Liew v. Official Receiver & Liquidator,
685 F.2d 1192, 1196 (9th Cir. 1982). Only if both states have a legitimate but
conflicting interest in applying its own law [*20]
will the court be confronted with a “true conflict” case. See
Insurance Co. of North Am., 189 F.3d at 921. The California Supreme Court’s
decision in Hurtado v. Superior Court, 11 Cal. 3d 574, 522
P.2d 666, 114 Cal. Rptr. 106 (Cal. 1974), is the primary case setting forth
California’s choice of law rules and analyzing the approach to be
taken in determining the interest of each jurisdiction in enforcing its own
law. In that case, a wrongful death action had been brought in California,
where the automobile accident causing the death had occurred. The plaintiffs
were residents of Mexico and the defendants residents of California. Mexican
law placed a limitation on the amount that could be received in a wrongful
death action (24,334 pesos or $ 1,946.72) whereas California law provided no
such limitation. See 522 P.2d at 668. The California
Supreme Court stated: generally speaking the
forum will apply its own rule of decision unless a party litigant timely
invokes the law of a foreign state. In such event he must demonstrate that the
latter rule of decision will further the interest of the foreign state and
therefore that it is an appropriate one for the forum to [*21]
apply to the case before it. In the case at bench, California as the forum
should apply its own measure of damages for wrongful death, unless Mexico has
an interest in having its measure of damages applied. Id. at 670 (citations
omitted). In assessing the interest of California in applying its law the Court
stated: It is manifest that one
of the primary purposes of a state in creating a cause of action in the heirs
for the wrongful death of the decedent is to deter the kind of conduct within
its borders which wrongfully takes life. It is also abundantly clear that a
cause of action for wrongful death without any limitation as to the amount of
recoverable damages strengthens the deterrent aspect of the civil sanction: the
sting of unlimited recovery … more effectively penalize(s) the
culpable defendant and deter(s) it and others similarly situated from such
future conduct. Id.
at 672 (internal quotations and citations omitted). The court went on to
emphasize that the interest in deterrence of conduct extends to “all
persons within its borders.” 11 Cal. 3d at 584. With regard to the interest Mexico had in
applying its law, the [*22] California
Supreme Court stated that “the interest of a state in a tort rule
limiting damages for wrongful death is to protect defendants from excessive
financial burdens or exaggerated claims. [A] state by enacting a limitation on
damages is seeking to protect its residents from the imposition of these
excessive financial burdens.” 522 P.2d at 670 (citations omitted). The
California Supreme Court then summarized its holding: To recapitulate, we hold
that where as here in a California action both this state as the forum and a
foreign state (or country) are potentially concerned in a question of choice of
law with respect to an issue in tort and it appears that the foreign state (or
country) has no interest whatsoever in having its own law applied, California
as the forum should apply California law. Id. at 671. The California Supreme Court’s
ruling in the Hurtado tort case is directly applicable to
this case. Abercrombie distributed its Spring Quarterly in California, and any
misappropriation of the names and likenesses of the Appellants would have
occurred there. As the court stated, one of the primary purposes of creating a
cause of action in tort is to [*23]
deter misconduct within its borders by persons present within its borders. By
distributing its catalog within California, Abercrombie was operating within
its borders. Hawaii, on the other hand, like Mexico in
Hurtado, had no interest in limiting the extent of relief that its residents
could obtain for a wrongful act against them in California. It is even more
clear in this case because Hawaii did not place any limitation on recovery;
instead it simply did not provide for the extent of relief California does in
this type of action. It is pure fancy to believe that Hawaii would wish to
restrict its residents from recovery that others could obtain in California
solely because it had not enacted a statute like California’s to
complement its common law action for the same offense. Hawaii had no interest
in having its law applied to this action brought in California. The California Supreme Court has made it
clear that when California has an interest in enforcing its law within its
borders and a foreign state (in this case Hawaii) has no interest in having its
law applied, then the law of California should be applied. In this case, there
is no “true conflict” of Hawaii law with California [*24]
law, and thus the district court erred when it applied Hawaii law to some
claims. California law is applicable to all of Appellants’ claims. IV. Lanham Act Appellants contend that the district court
erred in denying their claim under section 43(a) of the Lanham Act, 15 U.S.C.
§ 1125(a). In relevant part section 43(a)(1)(A) provides: Any person who, or in connection
with any goods or services, uses any … false or misleading
representation of fact, which … is likely to cause confusion, or to
cause mistake, or deceive as to the affiliation, connection or association of
such person with another person, or as to the origin, sponsorship, or approval
of his or her goods, services, or commercial activities by another person
… shall be liable in a civil action by any person who believes that he
or she is or is likely to be damaged by such act. In several past cases involving celebrity
plaintiffs we have looked to our decision in AMF, Inc. v. Sleekcraft Boats,
599 F.2d 341 (9th Cir. 1979), for the appropriate factors to consider in
determining whether there exists a likelihood of confusion. The factors
enumerated in AMF are: [*25] 1. strength of the
plaintiff’s mark; 2. relatedness of the
goods; 3. similarity of the
marks; 4. evidence of actual
confusion; 5. marketing channels
used; 6. likely degree of
purchaser care; 7. defendant’s
intent in selecting the mark; and 8. likelihood of
expansion of the product lines. AMF, 599 F.2d at 348-49. In our celebrity cases using the AMF factors
we have adapted these factors so as to be applicable to the celebrity cases. We
noted that the term “mark” applies to the
celebrity’s persona, the “strength” of the mark
refers to the level of recognition that the celebrity has among the segment of
the public to whom the advertisement is directed, and the term “goods”
concerns the reasons for or source of the celebrity’s fame. See
White v. Samsung Elec. Am., Inc., 971 F.2d 1395,
1400-1401 (9th Cir. 1992). It is perhaps clearer to restate the eight
factors as applicable to the celebrity case, which can be stated as: 1. the level of recognition that the plaintiff
has among the segment of the society for whom the defendant’s product
is intended; 2. the relatedness of the fame or success [*26]
of the plaintiff to the defendant’s product; 3. the similarity of the likeness used by the
defendant to the actual plaintiff; 4. evidence of actual confusion; 5. marketing channels used; 6. likely degree of purchaser care; 7. defendant’s intent on selecting the
plaintiff; and 8. likelihood of expansion of the product lines. Although these are all factors that are
appropriate for consideration in determining the likelihood of confusion, they
are not necessarily of equal importance, nor do they necessarily apply to every
case. “The Lanham Act’s
likelihood of confusion standard is predominantly factual in nature.” Wendt
v. Host Int’l, Inc. 125 F.3d 806, 812 (9th Cir. 1997).
Thus, summary judgment is inappropriate when a jury could reasonably conclude
that there is a likelihood of confusion. Application of the eight factors to
the current action leads us to conclude that the district court erred in
rejecting Appellants’ Lanham Act claim at the summary judgment stage. In applying the factors to this case we reach
the following conclusions. First, in considering the recognition that the
Appellants have among those persons toward whom [*27]
the Abercrombie catalog is directed, Appellants cite to a declaration submitted
by surf historian Steve Pezman. In the declaration, Pezman asserts that
Appellants “are considered legends in the surf community and are still
highly well-known and regarded.” This declaration from a surf
historian provides some evidence that Appellants’ names and images
enjoy a high level of recognition among average members of society as a whole.
In addition, it is undisputed that Appellants are legendary surfers, and thus
there is a reasonable inference that Appellants would be known to the young
people to whom the Quarterly is directed and who would be purchasing
Abercrombie’s surf wear. The second factor is the relatedness of the
Appellants’ fame and success to the Defendant’s product.
Appellants’ fame is due to their surfing success. Appellants’
surfing success could be seen as closely-related to the Abercrombie’s
surf-related clothing. Applying the third factor, the similarity of
the likeness, to the Appellants is clear because it is an actual photograph of
the Appellants with their names designated. The fourth factor, evidence of actual
confusion, also supports Appellants’ position. Appellants [*28]
provided declarations demonstrating that several individuals actually believed
that Appellants were endorsing Abercrombie merchandise. Under the fifth factor, marketing channels
used, the catalog was the only marketing channel. It is therefore the
likelihood of confusion in that marketing channel that is at issue. In applying the sixth factor, the inquiry is
whether consumers are likely to be particularly careful in determining who
endorses the Abercrombie surf apparel, making confusion as to
Appellants’ endorsement more likely. A jury could reasonably find that
young consumers are not likely to be particularly careful when purchasing
surf-related clothing. As to the seventh factor, the relevant
question is whether the Defendants intended to profit by confusing consumers
concerning the endorsement of the Abercrombie apparel. A jury could reasonably
find that Abercrombie intended to indicate to consumers that these legendary
surfers were endorsing Abercrombie’s merchandise. The eighth factor is the likelihood of
expansion of the product lines. Neither party discusses this factor, however,
no evidence has been produced that Abercrombie intends to utilize these
photographs in additional [*29]
product lines. Application of these factors, leads us to
conclude that the district court erred in rejecting Appellants’ Lanham
Act claim at the summary judgment stage. Viewing the evidence in the light most
favorable to Appellants, we conclude that Appellants have raised a genuine
issue of material fact concerning a likelihood of confusion as to their
endorsement. V. Doctrine of Nominative Fair Use The district court concluded that
Appellants’ Lanham Act claim was barred by the doctrine of nominative
fair use. In support of its position that the district court was correct in
concluding that Appellants’ Lanham Act claim was barred, Abercrombie
relies upon New Kids on the Block v. News America Publishing, Inc.,
971 F.2d 302 (9th Cir. 1992). In New Kids, two newspapers
conducted “900” number telephone polls concerning their
readers’ reactions to the musical group “New Kids on the
Block.” The newspapers charged their readers 95 cents per minute to
respond to the poll. The band, which had its own competing
“900” numbers for its fans, filed Lanham Act claims against
the two newspapers. See id. at 304-05. The district
court granted summary judgment [*30]
for the defendant newspapers on First Amendment grounds. See id.
at 305. On appeal, we affirmed on a non-constitutional ground, as appropriate
when the constitutional issue can be avoided. We concluded that the newspapers’
use of the band name constituted a nominative fair use. See id.
at 309. We found that where the defendant uses a
trademark to describe the plaintiff’s product rather than its own
product, a commercial user is entitled to a nominative fair use defense
provided the defendant meets three requirements: 1. the product or service
in question must be one not readily identifiable without use of the trademark; 2. only so much of the
mark or marks may be used as is reasonably necessary to identify the product or
service; and 3. the user must do
nothing that would, in conjunction with the mark, suggest sponsorship or
endorsement by the trademark holder. Id. at 308. Applying the
three-part test, we concluded that the newspaper was entitled to the nominative
fair use defense. See id. at 308-309. Abercrombie argues that its use of the
photograph was nominative fair use in the same manner [*31]
as the defendants’ purported infringement in New Kids. We disagree. In
New Kids, we stated that the test applies only “where the defendant
uses a trademark to describe the plaintiff’s product, rather than its
own.” Id. at 308. Here, Abercrombie used the
photograph in its catalog that was intended to sell its goods. As we have noted
in this case involving a celebrity endorsement claim, the mark being protected
is the Appellants’ names and pictures. There is a genuine issue of
material fact as to whether the third criterion is met, whether Abercrombie did
nothing that would in conjunction with the Appellants’ names and
pictures suggest sponsorship or endorsement by the Appellants. VI. Defamation Claim Appellants contend they were defamed by
Abercrombie’s publication of the photograph in the “Surf
Nekkid” section of the Quarterly. Specifically, they maintain that
inclusion of their names and likenesses in a section depicting naked and
scantily clothed models caused them shame and embarrassment. Under California
Civil Code § 45a, Appellants may only prevail on a libel
claim if the publication is (1) libelous on its face, or (2) if special damages
have been proven. [*32] See Newcombe,
157 F.3d at 694. A publication is libelous on its face only if there is no need
to have explanatory matter introduced. See Cal. Civ. Code
§ 45a. The determination as to whether a publication is
libelous on its face is one of law, and must be measured by “the
effect the publication would have on the mind of the average reader.” Newcombe,
157 F.3d at 695. To support their argument that inclusion of
the photograph was libelous on its face, Appellants provide three declarations.
However, all three declarations are from lifetime surfers and leaders in the
surf industry. The declarations do not provide evidence that an average person
viewing the Quarterly would think it defamatory if Appellants’ picture
was included in a section in which nude models were shown. Thus, Appellants
fail to satisfy the first requirement under California Civil Code § 45a
that the publication is libelous on its face. In order to satisfy the alternate
requirement, Appellants must allege and prove that they suffered special
damages as a proximate result of the publication of the photograph. See id.
at 695. Special damages are defined as “all [*33]
damages which plaintiff alleges and proves that he has suffered in respect to
his property, business, trade, profession or occupation, including such amounts
of money as the plaintiff alleges and proves he has expended as a result of the
alleged libel, and no other.” Cal. Civ. Code
§ 48a(4)(b). Appellants did not submit any evidence
demonstrating that they incurred special damages due to Abercrombie’s
publication of the photograph. Thus, Appellants failed to meet either
requirement under California Civil Code § 45a. Accordingly,
we conclude that the district court did not err in denying the
Appellants’ defamation claim. VII. Continuance Because we reverse the summary judgment, we
need not address the issue the Appellants raise concerning the district
judge’s denial of a continuance. VIII. Attorneys’ Fees California Civil Code
§ 3344(a) mandates the award of attorneys’ fees and
costs to the “prevailing party” in actions brought under the
section. See Newton v. Thomason, 22 F.3d 1455, 1464 (9th
Cir. 1994). Because we reverse the judgment of the district court, the district
court’s award of attorneys’ fees and costs to Abercrombie
under California Civil Code § 3344 is vacated. IX. Conclusion Neither the California state law claims or
the Lanham Act claim are precluded by the First Amendment; the California state
claims are not preempted by the federal Copyright Act; the proper choice of law
to apply to these claims is California law; there is insufficient evidence to
support the defamation claim; and the attorneys’ fee award is vacated. REVERSE AND REMAND FOR TRIAL. |