Wednesday, March 12, 2008

Ruffian in a race for priority

Thoroughbred Legends, LLC v. The Walt Disney Co., 2008 WL 616253 (N.D. Ga.)

Ruffian was a filly who won ten of her eleven races, breaking records held by colts. In her final race, a one-on-one against the 1975 Kentucky Derby winner, she broke her leg and was ultimately euthanized. Plaintiff Vasquez rode Ruffian in nine of her races, including the final race, and Plaintiff Whiteley was her trainer.

In 2004, ESPN and ABC decided to make a movie about Ruffian. They asked Whiteley and Vasquez to participate, but both declined some time around May 12, 2004, refusing to allow the use of their names or likenesses in the film. On May 10, 2004, plaintiffs’ related company Thoroughbred Legends filed an ITU to register RUFFIAN as a service mark for “[e]ntertainment services, namely, production of theatrical plays, motion picture films, television shows, and documentaries.” In 2006, Legends offered to license the mark to ESPN, which declined.

Defendants then made Ruffian, a film about Ruffian. It aired in June 2007 and is now available on DVD.

On May 23, 2007, plaintiffs submitted a statement of use to the PTO, alleging use beginning October 31, 2006, when it attempted to license RUFFIAN to defendants. The specimen depicted a horse underneath the term “RUFFIAN” and offered to sell the individual plaintiffs’ life stories for a video about Ruffian. The PTO accepted the statement of use and the registration issued in August 2007. Defendants filed a petition to cancel it, which is pending.

Plaintiffs filed state and federal infringement claims, as well as defamation claims. Ruffian uses the perspective of journalist Bill Nack. “In the movie, Mr. Whiteley discloses private information about Ruffian’s condition to Mr. Nack and allows Mr. Nack to observe Ruffian’s medical treatment. Plaintiffs also point to a scene that portrays Mr. Whiteley blackmailing Mr. Vasquez, the regular jockey for both Ruffian and Foolish Pleasure in 1975, into riding Ruffian in the match race between the two horses. Plaintiffs argue that these conversations, falsely attributed to Mr. Whiteley and Mr. Vasquez, made them appear unethical and unprofessional.” Plaintiffs also alleged false light, because the Whiteley character calls the Vasquez character a “Puerto Rican,” though he’s Panamanian. “Plaintiffs contend that the film mischaracterizes this nickname, in reality an affectionate joke.” Finally, plaintiffs alleged appropriation of names and likeness: the film features characters based on them, and the actors emulated their dress, speech, and manner.

Defendants, it’s fair to say, won the trifecta on the trademark claims.

First, the court ruled that there had been no trademark use of RUFFIAN. Use doesn’t necessarily require sales, but there must be a bona fide use in commerce to signify source. Plaintiffs tried to license the mark RUFFIAN to ESPN and to other TV networks, producers, etc. They gathered facts, interview material, and memorabilia. But these activities didn’t involve using RUFFIAN to identify the source of any service. Instead, plaintiffs merely described the mark and claimed rights to it. For example, the message to ESPN came from a personal email account and displayed no logo or corporate header. It said: “I own Thoroughbred Legends, LLC, an entity that has obtained the trademarks for a number of famous thoroughbred racehorses-among them Ruffian ….” The court concluded: “The word ‘Ruffian’ is not distinguishable or set apart in any way from the rest of the message. Put simply, one cannot acquire rights in a trademark by asserting he owns it.” Plaintiffs also tried to license RUFFIAN to a store selling clothing and paper goods, but there was no evidence that the license was ever executed, and in any case the goods had “no discernible connection” to film production. Likewise, plaintiffs founded a charity called the Ruffian Foundation for equine medical research, but that doesn’t have anything to do with producing movies or TV shows, and there was no allegation of commercial trademark use.

Second, even if plaintiffs had used RUFFIAN as a mark, it’s descriptive because the name of a historical figure used in connection with a product representing that historical figure is descriptive. Plaintiffs provided no evidence of secondary meaning, and the record makes clear that such secondary meaning is absent. They sought discovery on the issue of intentional copying, but intentional copying alone is insufficient to show secondary meaning; even intentional copying wouldn’t be enough to create a fact issue here. The fact that the PTO registered RUFFIAN on an ITU basis was not dispositive. Though registration created a presumption of validity, that merely shifted the burden of production to the defendants, who rebutted the presumption. (Here the court seems to create some tension with the Fourth Circuit, whose decision in AOL v. AT&T held that the PTO’s registration of BUDDY LIST without any requirement of proof of secondary meaning was sufficient to create a factual issue about whether the term was generic; that decision, however, can be distinguished as being about genericness and also as containing some evidence other than the mere fact of the registration supporting AOL’s trademark claim.)

The court commented that what plaintiffs were really trying to sell facts, not services: “the story of Ruffian from the perspectives of her trainer and jockey.” But facts are in the public domain. The court viewed the attempt to trademark Ruffian’s name as an end run around copyright law.

Thus, and third, defendants were entitled to the descriptive fair use defense as a matter of law. Using Ruffian as a film title is a use other than as a mark and conveys no information about the origin of the movie. Origin is indicated by ESPN’s marks on the DVD. Ruffian is descriptive of the contents, and is used in good faith.

And in the bonus round, even if none of the above were true, defendants beat plaintiffs in priority. Defendants hired a producer to make the film in 2004, two years before plaintiffs’ asserted first use. Though plaintiffs’ uses aren’t sufficient, sauce for the filly would be sauce for the … other filly, I guess. “[I]f Plaintiffs urge the court to adopt their innovative theory of trademark use, surely they recognize that it applies equally to Defendants.” (Here the court misunderstands the effect of an allowed ITU application, which gives priority as of the date the application was filed, not the date the statement of use is filed, but it doesn’t matter because defendants beat plaintiffs’ filing date by ten days.)

Plaintiffs’ invasion of privacy claims also fell to a Rule 12(b)(6) motion. Under Georgia law, publications about a matter of public interest can’t invade privacy. This includes dramatizations of past newsworthy events, like an important event in horse racing history. Plaintiffs’ appropriation of name or likeness claims also failed for an independent reason. An appropriation of likeness claim is bounded by the First Amendment, and thus can’t succeed against an expressive, creative work, whether fictional or nonfictional. Advertising for Ruffian is also protected because Ruffian itself is protected.

Plaintiffs weren’t completely out of luck, though. The court allowed discovery on the false endorsement claim, though it expressed doubts about whether plaintiffs could prevail. (It refused to allow a separate false advertising theory, because the complaint didn’t put defendants on notice of that theory.)

Likewise, the court also allowed discovery on the defamation claim. Though there was a disclaimer at the end of the film, and the film was advertised as a docudrama rather than a documentary, the court found that the disclaimer “passes over the screen very quickly,” and is actually after the credits, not just after the film ends. The DVD synopsis says it’s an “extraordinary true story” and doesn’t say “based on” or “adapted from.” So the court was unwilling to hold that, as a matter of law, no one could reasonably think the film portrayed actual events. But if “the challenged scenes contain the essence of truth, and … any falsity was incident to ‘author’s license’ in creating a dramatization of the story,” defendants will still win. Furthermore, plaintiffs submitted affidavits that the conduct depicted made them look unethical according to the standards of their professions, which was sufficient to warrant discovery on whether the dialogue was susceptible of defamatory meaning.

The court concluded that plaintiffs were public figures because they are famous within the horse-racing world; thus, they’d be required to prove actual malice.

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