Monday, April 09, 2018

The truth is out there, but it might violate the right of publicity

Scott v. Citizen Watch Co., No. 17-cv-00436-NC, 2018 WL 1626773 (N.D. Cal. Apr. 4, 2018)

This case would be the poster child for the need for a true reckoning between modern right of publicity law and the modern First Amendment, but the poster would probably violate plaintiff David Randolph Scott’s rights under the reasoning of this case.  The court found factual disputes about the applicability of various exceptions to California’s right of publicity and the Lanham Act, including a reading of nominative fair use that makes it a dead letter/a defense only when confusion is unlikely (cf. KP Permanent). The only things that got kicked out were Scott’s emotional distress claims.

Scott is a retired astronaut and the mission commander for NASA’s 1971 Apollo 15 voyage, on which Scott spent three days on the moon, including over 18 hours outside the main spacecraft. Before the mission, Bulova representatives gave Scott two Bulova timepieces to use in space. He wore a chronograph to the moon and auctioned it off for $1,625,000 a few years ago.

In 2014, Bulova began the Lunar Pilot Chronograph (the “Moon Watch”) based on the original chronograph that Scott wore to the moon. Many of Bulova and Kay’s ads and promotional materials referred the original chronograph that Scott wore on the moon, and include Scott’s identity in various forms, including: (1) online promotions, including descriptions of the watch, photos of Scott, and a video that contains an audio clip of Scott’s voice (2 seconds where Scott can be heard saying, “We have a roll program” from a 79-second video depicting the Apollo 15 mission); (2) a promotional booklet packaged along with the Moon Watch; and (3) other public and internal communications by Bulova and Kay.  Apparently one of the astronauts in the spacesuits shown in the advertising is Scott, though his helmet is apparently not see-through in the photos.  (I can’t judge all this for myself and neither can you because, appallingly, big chunks of the exhibits are sealed even though they are the allegedly infringing materials.  The court doesn’t explain why (1) internal materials could ever violate Scott’s right of publicity or (2) it is permissible to seal (and redact descriptions of, in the attached affidavit) allegedly infringing materials that were in fact public.  I started out with a joke about the breadth of Scott’s claims, but this isn’t a joke.)
Bulova website

Kay website (from with reference to Scott in text

The court found disputed facts existed over whether the use of Scott’s identity was incidental. “The rationale underlying this doctrine is that an incidental use has no commercial value, and allowing recovery to anyone briefly depicted or referred to would unduly burden expressive activity.” Relevant factors include: “(1) whether the use has a unique quality or value that would result in commercial profit to the defendant, (2) whether the use contributes something of significance, (3) the relationship between the reference to the plaintiff and the purpose and subject of the work, and (4) the duration, prominence or repetition of the likeness relative to the rest of the publication…. Even if the mention of a plaintiff’s name or likeness is brief, if the use stands out prominently within the commercial speech or enhances the marketability of the defendant’s product or service, the doctrine of incidental use is inapplicable.”

Scott offered evidence that his identity was used “repeatedly and in a manner intended to take advantage of Scott’s reputation.” His name and Apollo 15 “mission commander” title appeared or appear in many of the marketing materials, including the descriptions on Bulova’s and Kay’s websites, the promotional booklet, marketing copy for online and third-party retailers, a press release, an interview between a Baselworld reporter and Bulova’s CEO, website advertisements, employee training materials, and internal communication documents about marketing strategy. [How internal documents can violate the right of publicity is a bit beyond me.]  For example, an introductory power point to a third party retailer stated, “The Moon Pilot Chronograph is based on the design of the Bulova watch worn on the moon by Astronaut David R. Scott during 1971’s Apollo 15 space mission.” Another statement repeated frequently in Bulova and Kay’s advertising: “After Apollo 15’s mission commander made lunar history—while wearing his personal Bulova chronograph—we’re making history again.”  

images from the  pamphlet with the watch

In the prior Yeager case, the court reasoned that the plaintiff’s name and identity were “unique and non-fungible” because he was known for breaking the sound barrier for the first time, and “[t]he use of his name and identity link[ed] defendant’s new technology to plaintiff’s name and accomplishments” to create positive associations in customers’ minds about the AT&T brand. “The same logic applies here,” even though Bulova happens to be reciting facts, not making an analogy (which should have been ok too, but at least didn’t suppress a truthful account of the past).  A jury could find that the ads “deliberately invoked Scott’s name and historical significance as one of the first humans to walk on the moon in order to increase the Moon Watch’s marketability and appeal.”

There were also disputed factual issues on the public interest exception to the common law right/the statutory “public affairs” exception, both of which protect “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.’ ”  These ads were commercial speech, thus “subject to reduced free speech protection relative to non-commercial speech.”  [Yes, but that reduced protection isn’t just applied as a discount to any advertisement’s free speech value.  Specifically, the court should apply Central Hudson: substantial government interest, actual advancement of that government interest, and suppression of no more speech than necessary (though not narrow tailoring).  It does not.]

In balancing publicity against newsworthiness, courts must consider “the nature of the precise information conveyed and the context of the communication.” “Apollo 15 and space exploration certainly implicate some degree of public interest,” but the context was too commercial.  “The determinative inquiry for whether the public interest exception applies to commercial speech is whether a defendant’s use of a plaintiff’s identity is the commercial product itself, or is instead used to promote some other tenuously related product.”  The former is protected and the latter is not, and this case was more like the latter, because defendants’ product wasn’t speech, but a watch, and the [truthful] references to history and space exploration simply helped to sell it. 

True, Scott actually wore a Bulova watch to the moon. But a “fine line … must be drawn between the historical event that was Apollo 15 and the person that is David Randolph Scott.”  [It must?  Why, under Central Hudson?]  So Bulova has “greater” license to boast about its connection to the Apollo 15 mission, but that doesn’t “automatically” make Scott fair game.  The court pointed to the differences between the second and third versions of Bulova’s online description for the Moon Watch. The second online description “strongly” evoked Scott’s success by stating: “After Apollo 15’s mission commander made lunar history—while wearing his personal Bulova chronograph—we’re making history again.” The third online description said instead: “Bulova made space history on August 2, 1971—during the Apollo 15 mission, a moon pilot chronograph, customized for lunar conditions by Bulova engineers, was worn on the moon.” This moved away from Scott and toward Bulova’s own involvement in the historical event.  “Somewhere in that continuum there is a line. While Bulova may legally showcase its legitimate connection to Apollo 15, the Court cannot say as a matter of law that Defendants’ advertisements do not cross the event horizon into the black hole of misappropriation.”
initial Bulova description

first revision

second revision

[I believe this test crosses the event horizon into inappropriate vagueness.  Also, since California common law protects identity, why doesn’t “was worn on the moon,” along with being awkward and terrible phrasing, still evoke the astronauts’ identities?  Is it just that it doesn’t hint at who did the wearing?  Given the other information available—and wait for the Wikipedia bit—why wouldn’t that equally identify Scott, especially given the various reviews of the watch (below)?]

But no: “Scott the astronaut, as distinguished from the Apollo 15 mission or space exploration more generally, bears too tenuous a connection to the non-speech commercial Moon Watch for the public interest exception to shield Defendants from liability on summary judgment.”

Defendants argued that the marketing booklets included with the watch’s packaging, the online watch descriptions, and the 79-second advertising video contained significant transformative elements, making them exempt from liability. They also argued Scott wasn’t “readily identifiable” in the photograph of him on the moon.  The court found that these weren’t sufficient grounds for summary judgment because Scott identified other allegedly infringing materials.  And the court didn’t assess whether summary judgment ought to be granted as to those uses, which would seem to be the next logical question; the court said that the result would be the same no matter what, but the result on what goes to the jury would be very, very different, so this seems to me to be very different.

As for the other uses, Scott provided evidence that defendants used his name and identity in interviews, press releases, internal communications such as training materials, public Wikipedia page edits [are these commercial speech now?], and a certificate of authenticity issued along with the watch.

Likewise, the Lanham Act false endorsement claims involved disputed material facts.  Scott’s most compelling evidence was that “at least some consumers knew of Scott and his role in Apollo 15, were excited to buy the watch because of its connection to Scott, and may actually have believed Scott endorsed the product.”  That last bit, by the way, is pure extrapolation.

consumer reviews mentioning Scott

One consumer review on Bulova’s website reads, “[I] found out [t]hat other than the NASA Swiss watch, one other watch had been worn on the [m]oon by [t]he Commander of Apollo 15 ‘Dave Scott’ on EVA 2. The watch in question was the Bulova 96B251 Moon Watch.” Similarly, a Facebook user referred to the Moon Watch as the “Dave Scott Re-Edition.” “[I]t is entirely reasonable to infer that Defendants’ reference to the Moon Watch, Apollo 15, and Scott in the same breath could confuse consumers about Scott’s role in the Moon Watch’s marketing,” especially since they used his exact name, title, and likeness. Also, Bulova may have actively sought Scott out to serve as a “brand ambassador,” suggesting intent.

Nominantive fair use was factually disputed for one really bad reason and one unfortunate, but case-law-consistent, reason.  Bad reason: New Kids said that the test applies only “where the defendant uses a trademark to describe the plaintiff’s product, rather than its own,” but defendants used Scott’s identity to describe their own product, not Scott’s. That’s not an accurate description of the New Kids rule, in which the defendant’s product was a poll about the New Kids: talking about their own product meant talking about the plaintiffs.  So too here.  The use is purely referential: this is the watch that Dave Scott wore.  The use of Scott is thus in reference to Scott himself, rather than trying to create a different Scott mark (compare the analysis in the Grand Theft Auto/Play Pen case, where the court found no reference to the plaintiff Play Pen).

Unfortunate reason, deepening the incoherence in case law: Factor three of New Kids was disputed because of evidence supporting a likelihood of confusion finding. “Scott offers evidence that consumers may have believed Scott endorsed or sponsored the Moon Watch, referring to it as the ‘Dave Scott Re-Edition’ and retelling in favorable online reviews the story of Scott taking his personal Bulova chronograph to the moon. Whether Defendants’ advertisements suggests sponsorship or endorsement by Scott is a highly factual matter and not suitable for summary judgment.”  But that’s not what factor three started out as, even though other courts have done the same jiu-jitsu.  Factor three started out as whether the defendant did anything else to suggest sponsorship, as in saying “official” or “authorized.”  If likely confusion means that factor three isn’t satisified, then New Kids is neither a replacement for the ordinary confusion test (the formal 9th Circuit characterization) nor a defense (because, as with KP Permanent, a defense that only works when there’s no confusion isn’t actually a defense).

Also, Scott’s false advertising claim involved disputed material facts.  Scott argued that the characterization of the Moon Watch as a “replica” was false because the internal components of the Moon Watch differ from the original chronograph and thus the watch wasn’t a “100%” replica according to Bulova’s own witness. Scott testified that he had been injured by being associated with a watch that he would not endorse, and submitted an expert declaration that Scott has lost potential income from future endorsement deals.  [The problem here isn’t injury, but injury causation: the lost income from future endorsement deals, if any, isn’t plausibly connected to the falsity of any “replica” related claims.]

However, Scott’s evidence of emotional distress was merely his declaration stating, “I have suffered emotionally because people may now believe I have abandoned my private life in favor of commercially promoting products which is not how I wish to be perceived by the public,” and, “I feel humiliated, embarrassed, and mentally distressed because of the new public persona Bulova and Kay’s have forced upon me; an Apollo astronaut that endorses products, let alone a cheap and deceptive product.” This wasn’t enough because “it describes at worst discomfort with a social image Scott fears he may have,” not distress that no reasonable person can be expected to endure. There was also no evidence of intentional or reckless disregard by the defendants.

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