We will be discussing one right of publicity case and one trademark case in our weekly SoCal IP Institute meeting on Monday, November 14, 2011. Brief synopses are presented below.

Dillinger, LLC v. Electronic Arts Inc., Case No. 1:09-01236-JMS-DKL (S.D. Ind. June 15, 2011) (attached).  Dillinger, LLC filed a complaint against EA for violation of John Dillinger’s right of publicity, unjust enrichment, trademark infringement, unfair competition and a claim under Indiana’s Crime Victim Act.  The claims were based upon EA’s use of the name “Dillinger” to denote a Thompson-like machine gun available in its “Godfather” and “Godfather II” video games.  Dillinger was known to have used a Thompson machine gun to commit his crimes.  EA filed a motion for judgment on the pleadings as to all claims.

The court considered the right of publicity and unjust enrichment claims together and found that neither were applicable to John Dillinger because he died well-before the 1994 enactment of the Indiana right of publicity statute.  As a second basis, the court found that the video games qualified under an exception to the Indiana right of publicity statute as “literary works.”

Applying the inferences in favor of the plaintiff, the court found the trademark and unfair competition claims must remain in the case because, at a minimum, the plaintiff adequately pleaded the claims.  Finally, the court dismissed the Indiana Crime Victim’s Act claim, based upon conversion and trademark claims.  The conversion claim could not remain because EA never exercised “control” over the trademark by the alleged unauthorized use.  The trademark claims could not remain because there was no allegation of “fraud” in using the marks, only that there was likelihood of confusion.

Car-Freshner Corp et al. v. Getty Images Inc. et al., Case No. 7:09-CV-1252 (N.D.N.Y. Sept. 28, 2011 (attached).  Car-Freshner brought suit against Getty for trademark infringement on the basis that several Getty available on its site for purchase incorporated the trademarked “tree” design marks (one appears below) for air fresheners.  Getty filed a  motion to dismiss for failure to state a claim or, in the alternative, for summary judgment.  Car-Freshner filed a motion seeking the court to reserve its decision until further discovery had taken place or the issues were more fully briefed.  Both parties motions were granted in part and denied in part.

In its motion, Getty alleged that the marks were not used so as to identify the source or sell their goods (images) and, even if they were, Getty alleged that it was protected by “fair use” or “nominative fair use.”  Finally, Getty complained of the inadequate pleading of contributory and vicarious liability.

The court determined that Getty’s motion for summary judgment required consideration of evidence outside of the pleading itself.  Therefore, summary judgment was inappropriate without providing the plaintiff the opportunity to obtain additional evidence from the defendant through discovery.  In view of the defendant’s failure to provide documentary discovery until eight months after a reply to Getty’s motion was due, the court denied Getty’s motion for summary judgment without prejudice.

In addressing Getty’s motion for failure to state a claim, the court evaluated the “fair use” defense proffered by Getty and found that Getty was using the images to sell photographs, the photographs depicting the mark.  The court refused to grant the motion to dismiss based upon fair use.  Next, the court evaluated Getty’s claim that any use of the mark was “nominative fair use.”  Nominative fair use requires:

  1. That 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.

The court found that the first, second and third elements were at least alleged by the pleading.  The court also included some discussion regarding Getty’s use causing confusion as to the source of the goods or images.  The court maintained the contributory infringement claim, but dismissed the vicarious infringement claim.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, November 14, 2011 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.