Thursday, February 21, 2019

Guitar design authorship blues: delay and consent defeat (c), ROP, other claims

Webster v. Abbott, 2018 WL 7352411, No. 8:17-cv-01795-T-02CPT (M.D. Fla. Nov. 30, 2018)

Webster is a luthier and guitar technician who goes by “Buddy Blaze.” Around 1985, he modified a Dean ML guitar and had the guitar painted blue with a lightning graphic. He gave the guitar to a friend, Darrell Abbott, who called it “The Dean from Hell” (DFH) and then went on to become a guitarist in the band Pantera known as “Dimebag Darrell.” In 2004, Abbott signed an “endorsement-type” contract with Dean Guitars (and was then murdered). Dean Guitars began to sell copies of the DFH. After Abbott’s funeral, the former owner of Dean Guitars contacted Abbott about painting a copy of the DFH for release, but Webster explained that another person had painted the original version at his direction. After he knew Dean Guitars was selling DFH replicas, Webster also lent photographs to Dean Guitars for a display at the 2005 National Association of Music Merchants tradeshow which linked Webster to Abbott and the DFH. He testified, “I was okay with them displaying it at the booth during the show.” 


By 2006, Webster knew Dean Guitars was selling the DFH as a “mass-market product” with several price points and versions. He was unhappy that Dean Guitars was issuing a cheap, imported version of the DFH called Cowboy From Hell or DFH/CFH. He told the then-CEO of Dean Guitars, “we’ve got to work this out.... I’m not okay with what’s going on,” and “you can’t do that without, you know, my blessing, without a release from me.” In 2007, the then-CEO responded that “I have taken some time and spoken to several ‘people in the know’ and the consensus concerning Dime’s graphic is that Dime’s estate is the legal owner of it. With that said, I still would like to work with you on a Dime project because I am not about making enemies but keeping friends.” Webster objected; Dean Guitars told him to sue the estate as the owner/licensor of the graphic. Webster continued to object.

In 2009, Webster worked on his own signature guitar, the Buddy Blaze ML, produced and sold by Dean Guitars; he promoted the Buddy Blaze ML alongside the then-CEO and provided a brief history of the DFH and compared his model with the DFH. He’s appeared and been referenced in other videos apparently produced by Dean Guitars, whose website at one time linked two YouTube videos featuring interviews with Webster in which he gave the history of DFH in front of the original DFH and promoted his own guitar and volunteered information about Abbott and the DFH. Neither video made any mention of DFH reissues.
Buddy Blaze ML

In 2016, he registered a copyright in the DFH lightning graphic design and sued for copyright infringement, civil conspiracy and unfair competition in 2017.

The court found the copyright infringement and civil conspiracy claims time-barred. Though a copyright infringement claim separately accrues with each infringing act, “[w]here the gravamen of a copyright infringement suit is ownership, and a freestanding ownership claim would be time-barred, any infringement claims are also barred.” Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014) didn’t change the rule that the an ownership claim accrues only once. In the Sixth and Ninth Circuits, such a claim accrues “when plain and express repudiation of co-ownership is communicated to the claimant.” In the First, Second, Fifth, and Seventh Circuits, the clock starts “when the plaintiff learns, or should as a reasonable person have learned, that the defendant was violating his rights.” Under either test, the claim here was time-barred.

Dean Guitars’ “olive branch” offer of a separate relic DFH with the possibility of royalties for Webster didn’t make its repudiation of Webster’s claim to ownership any less express. The language was clear that any royalties would have stemmed from Webster’s work with a possible future relic model, not from the original DFH. Further, Dean Guitars told Webster to sue the estate. Webster’s delay, allegedly out of respect for Abbott’s family following his death and then because of Webster’s own family issues and the then-CEO’s failing health, weren’t justifications that would pause the legal clock.

Although the unfair competition claims weren’t preempted (they didn’t depend on ownership or infringement of the copyrighted design), they also failed. Webster objected to the use image “for years in connection with the historical fact of his creation of the Dean From Hell,” especially as it relates to the reissues. As a result, he alleged, “people came to think that [Plaintiff] was wealthy or had authorized these uses of his name and likeness” and this association damaged his reputation. But his allegations and evidence couldn’t support this claim.

Setting aside issues with proving injury and a possible fair use defense, the most fundamental flaw in Plaintiff’s argument is that Defendants’ statements were neither false nor misleading. … Most of the statements at issue concerning the history of the DFH and Plaintiff’s friendship with Mr. Abbott are made by Plaintiff himself. Importantly, Defendants made no misleading statements with respect to any endorsement or sponsorship of the DFH reissues, or even Dean Guitars itself. In fact, there are no such statements or implicit suggestions linking Plaintiff to the replicas at all.

A NAMM attendee also stated in his declaration that “I heard Dean representatives using Buddy’s name when selling the Dean From Hell copies. The gist of their statements was that Dean was selling guitars like the one that Buddy Blaze re-built for Darrell.” But there was nothing untrue or misleading about such statements.

“There is no suggestion in any material Plaintiff sets forth that Defendants used Plaintiff’s name or likeness to sell or market the DFH reissues, or any suggestion that Plaintiff endorsed or derives income from the guitars.” Webster voluntarily participated in each video, and couldn’t identify any harm therefrom.

Webster’s invasion of privacy by misappropriation claim (right of publicity under Texas law) also failed. Texas requires that (1) the defendant appropriated the plaintiff’s name or likeness for the value associated with it; (2) the plaintiff can be identified from the publication; and (3) there was some advantage or benefit to the defendant. Defendants pointed out that Webster voluntarily participated in the videos, but Webster argued that he permitted use as it related to the history of DFH, but not reissues of the guitar. The court reasoned that Webster “certainly had some idea of the extent of the publication of the interviews yet nonetheless consented. Each video appears to have been filmed by Dean Guitars and, moreover, at trade shows for music merchants. As for the reissues, Plaintiff no doubt knew that the guitar Defendant Haney signed in one of the NAMM videos was not the original DFH. Plaintiff nonetheless voluntarily related the history of the DFH to the interviewer. Reissues do not appear and are not referenced in any other video featuring Plaintiff.”

Ultimately, there was insufficient evidence that defendants appropriated Webster’s name or likeness for the value associated with it. At most, they used his name (when he wasn’t himself participating in a video) only to provide historical background. In addition, the claims based on the videos were “extracted from either an old Dean Guitars website, or from the vastness of the internet” and there was no evidence that these old videos were even used as ads to sell the reissues.

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