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CAIRNS v. FRANKLIN MINT CO.
292 F.3d 1139 (2002)
United States Court of Appeals, Ninth Circuit.
Argued and Submitted March 12, 2002.
"[I]n appropriate cases, the district court may adjust the `presumptively reasonable' lodestar figure based upon the factors listed in Kerr v. Screen Extras Guild, Inc.,526 F.2d 67, 69-70 (9th Cir. 1975)...." Intel Corp. v. Terabyte Int'l, Inc.,6 F.3d 614, 622 (9th Cir.1993) (emphasis added).16 "The court need not consider all ... factors, but only those called into question by the case at hand and necessary to support the reasonableness of the fee award." Kessler v. Assocs. Fin. Servs. Co. of Hawaii,639 F.2d 498, 500 n. 1 (9th Cir.1981). The Fund complains that the District Court failed to consider the last Kerr factor, i.e., awards in similar cases. The Fund points to the allegedly "unprecedented size of the award" and claims that "the District Court's award of over $1.6 million for the Lanham Act claims may be the first fee award in a Lanham Act case to exceed $1 million." The allegedly "unprecedented size of the award" does not automatically make it unreasonable. See Fantasy, Inc. v. Fogerty,94 F.3d 553, 560-561 (9th Cir.1996) (discounting party's argument that award of $1,347,519.15 in attorneys' fees in copyright litigation was three times larger than any other award it had seen, and commenting that "comparisons to fee awards in other cases are largely irrelevant, and certainly not determinative, inasmuch as the reasonableness of a particular fee award depends on a case-by-case analysis"). When considering "awards in similar cases," the amount in controversy in those cases cannot be ignored. In its Lanham Act claims, the Fund reportedly sought $32,252,000 in lost profits plus an unspecified amount for loss of goodwill and
lost business opportunities.17 The ratio between the attorneys' fees awarded to defendant Franklin Mint and the damages sought by the Fund in this unsuccessful Lanham Act case is at most one to fourteen. This ratio is not disproportionately higher than the ratios between the attorneys' fees and the damages awarded to plaintiffs in successful Lanham Act cases. In fact, the ratio in this case is considerably lower than the ratios in some of those cases.18See, e.g., Taco Cabana Int'l, Inc. v. Two Pesos, Inc.,932 F.2d 1113, 1117 (5th Cir.1991) (affirming an award of $937,550 in attorneys' fees to a party who had been awarded less than twice as much in damages); Universal City Studios, Inc. v. Nintendo Co.,797 F.2d 70, 77 (2d Cir. 1986) (affirming an attorneys' fees award that, at $1,142,545.70, exceeded the damages by almost 150%). Equally important is the undisputed fact that the Fund itself has expended £ 1.7 million British pounds (approximately $2.6 million) on this case, several hundred thousand dollars more than the amount the District Court awarded to Franklin Mint. In light of the District Court's substantial reductions of Franklin Mint's fee request, the very large amount at stake in this case, and the $2.6 million expended by the Fund on this case, the District Court did not abuse its discretion when it awarded Franklin Mint $2,308,000 in attorneys' fees. V. CONCLUSIONFor the foregoing reasons, we affirm the District Court's denial of the Fund's motion to reinstate its post-mortem right of publicity claim. We also affirm the District Court's grant of Franklin Mint's motion for summary judgment on the Fund's false endorsement claim. We finally affirm the District Court's award of $2,308,000 in attorneys' fees to Franklin Mint. AFFIRMED.
2. Both California Civil Code § 990(a) (West 1998), and California Civil Code § 3344.1(a) (West 2002), provide in part: "Any person who uses a deceased personality's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods, or services, without prior consent from the[decedent's successor or successors in interest], shall be liable for any damages sustained by the person or persons injured as a result thereof."
3. California Civil Code § 946 states: "If there is no law to the contrary, in the place where personal property is situated, it is deemed to follow the person of its owner, and is governed by the law of his domicile."
4. The District Court also granted Franklin Mint's motion for summary judgment on the Fund's Lanham Act dilution of trademark and false advertisement claims and on the Fund's unfair competition and false and misleading advertisement claims under California law. Regarding the Fund's Lanham Act dilution of trademark claim, the District Court concluded that the mark "Diana, Princess of Wales" had not acquired a secondary meaning identifying Princess Diana's charitable services rather than Princess Diana as an individual. Id. at 1221-22. Regarding the Fund's Lanham Act false advertisement claim, the District Court concluded that there was no evidence that Franklin Mint had made any false statements in its advertisements. Id. at 1222-23. For the same reason, the District Court also granted summary judgment in favor of Franklin Mint on the Fund's unfair competition and false and misleading advertising claims under California Business and Professions Code §§ 17200 and 17500 et seq. Cairns III, 107 F.Supp.2d at 1223 n. 6. The Fund does not appeal these decisions.
5. California Civil Code § 946 states: "If there is no law to the contrary, in the place where personal property is situated, it is deemed to follow the person of its owner, and is governed by the law of his domicile." The Fund argues, and we assume arguendo, that its alleged post-mortem right of publicity would be "situated" in California.
6. Similarly, the Senate Rules Committee Report on Senate Bill No. 209, as amended March 3, 1999, states:
SB 209 would state that "pursuant to the jurisdiction provided under Code of Civil Procedure 410.10, a plaintiff has standing to bring an action pursuant to this section if any of the acts giving rise to the action occurred in this state, whether or not the decedent was a domiciliary of this state at the time of death." ... The author [i.e., Senator Burton] asserts that this clarification of law is necessary in light of a recent decision, Lord Simone Cairnes v. Franklin Mint. Senate Rules Com. Rep. Cal. S.B. 209 (as amended Mar. 3, 1999) (emphasis added).
7. In Sleekcraft, we identified a non-exclusive list of eight factors that are relevant in determining whether customer confusion is likely:
1. strength of the mark; 2. proximity of the goods; 3. similarity of the marks; 4. evidence of actual confusion; 5. marketing channels used; 6. type of goods and the degree of care likely to be exercised by the purchaser; 7. defendant's intent in selecting the mark; and 8. likelihood of expansion of the product lines. 599 F.2d at 348-49.
8. This is in fact the standard case of nominative fair use: Only rarely, if ever, will a defendant choose to refer to the plaintiff's product unless that reference ultimately helps to describe the defendant's own product.
9. A good example of classic fair use is In re Dual-Deck Video Cassette Recorder Antitrust Litig.,11 F.3d 1460 (9th Cir.1993). In that case, the plaintiff sold a videocassette recorder, which had two decks in one machine, under the trademark "VCR-2." See id. at 1462. The defendant sold receivers and other machines to which two videocassette recorders could be attached and labeled the relevant terminals on the backs of its machines "VCR-1" and "VCR-2." See id. Thus, the defendant used the mark "VCR-2" only to describe its own products, to which any second VCR could be attached, and not at all to describe the plaintiff's product or any other particular VCR. Accordingly, the classic fair use analysis was appropriate. We held that "[t]he uses were descriptive, and there is no evidence from which an inference of bad faith could be drawn." Id. at 1467.
10. The same is true of the cases which we have analyzed as nominative fair use cases following New Kids. See Abdul-Jabbar v. General Motors Corp.,85 F.3d 407 (9th Cir.1996) (defendant, a car company, referred to plaintiff, a basketball star who had won an award three years in a row, in a commercial for a car that had also won an award three years in a row); Downing v. Abercrombie & Fitch,265 F.3d 994 (9th Cir.2001) (defendant, a clothing company, used photograph of plaintiffs, championship surfers, to market T-shirts exactly like those worn by plaintiffs in the photograph); Playboy Enters., Inc. v. Welles,279 F.3d 796 (9th Cir.2002) (defendant, a former "Playboy Playmate of the Year," used that trademarked phrase of the plaintiff, "Playboy" magazine, on her own website, which offered information about her and free photos of her, advertised photos for sale, advertised membership in her photo club, and promoted her services as a spokesperson).
11. In this regard, the facts in the present case are similar to those in Abdul-Jabbar, where we applied the New Kids nominative fair use analysis. As mentioned supra in note 10, the defendant in that case, a car company, referred to the plaintiff, a basketball star who had won an award three years in a row, in a commercial for a car that had also won an award three years in a row. See 85 F.3d at 409. Thus, both in the present case and in Abdul-Jabbar, the defendants used the plaintiffs marks (the name or likeness of Princess Diana and Kareem Abdul-Jabbar, respectively) to describe the plaintiffs "products" (Princess Diana and Kareem Abdul-Jabbar, respectively), although the defendants' ultimate goal was to describe their own products (memorabilia and a car, respectively). That we applied the New Kids nominative fair use analysis in Abdul-Jabbar suggests that we should also apply this analysis in the present case.
12. Franklin Mint's other uses of Princess Diana photographs in its advertisements for its Diana-related products are similarly justified: (1) a photograph of Princess Diana wearing a bolero jacket and a royal tiara appears opposite a picture of the similarly equipped "Diana, Princess of Wales Porcelain Portrait Doll"; (2) a photograph of Princess Diana holding a bouquet of white roses "bearing her name" appears next to a picture of "The Princess of Wales Rose" collector plate depicting the same white roses; and (3) a picture of the "Diana, Forever Sparkling Classic Drop Earrings" described as "inspired by those the princess wore at her most memorable occasions" appears below a photograph of Princess Diana wearing similar drop earrings.
13. The same is true for Franklin Mint's use of Princess Diana's name and likeness in connection with its other Diana-related memorabilia discussed supra in note 12 and the accompanying text.
14. The District Court did not apply the nominative fair use analysis, although it relied heavily on nominative fair use language from New Kids. See supra section III.A. Instead, the District Court held that Franklin Mint's use of Princess Diana's name and likeness did not implicate the source-identification purpose of trademark protection, and that there was no likelihood of confusion under Sleekcraft. But "we may affirm a summary judgment on any ground finding support in the record." Karl Storz Endoscopy-Am., Inc. v. Surgical Techs., Inc.,285 F.3d 848, 855 (9th Cir.2002). Moreover, even if we were to apply the 15 United States Code § 1115(b) classic fair use analysis and the Sleekcraft likelihood of confusion test to this case, we would hold that Franklin Mint's use of Princess Diana's name and likeness was a permissible classic fair use, and that there was no likelihood of confusion. First, Franklin Mint did not use Princess Diana's name and likeness "as a trademark," but used them "`fairly and in good faith'" and "`[o]nly to describe' its goods" as required by 15 United States Code § 1115(b). 2 McCarthy, supra, at § 11:49. Second, "the weak association between [Princess Diana's name and likeness] and [the Fund] weighs heavily against finding a likelihood of confusion" and is not outweighed by any Sleekcraft factors that weigh in favor of finding a likelihood of confusion. Cairns III, 107 F.Supp.2d at 1217. Franklin Mint's use of Princess Diana's name and likeness would therefore qualify as a permissible classic fair use without likelihood of confusion.
15. By contrast, the District Court found that the false endorsement claim, although ultimately unsuccessful, was not "groundless, unreasonable, vexatious, or pursued in bad faith" and that it was, therefore, not "exceptional" within the meaning of the Lanham Act's authorization of attorneys' fees. See Avery, 189 F.3d at 881; 15 U.S.C. § 1117(a). Franklin Mint has abandoned its appeal of this holding, which is therefore not before us.
16. The Kerr factors are:
(1) the time and labor required, (2) the novelty and difficulty of the questions involved, (3) the skill requisite to perform the legal service properly, (4) the preclusion of other employment by the attorney due to acceptance of the case, (5) the customary fee, (6) whether the fee is fixed or contingent, (7) time limitations imposed by the client or the circumstances, (8) the amount involved and the results obtained, (9) the experience, reputation, and ability of the attorneys, (10) the `undesirability' of the case, (11) the nature and length of the professional relationship with the client, and (12) awards in similar cases. Kerr, 526 F.2d at 70.
17. In its right of publicity claim, the Fund sought an additional $100-300 million in punitive damages.
18. Because courts who reject a Lanham Act claim typically do not report how much damages the plaintiff sought in that claim, the ratio between attorneys' fees awarded and damages sought in this unsuccessful Lanham Act case cannot be compared with the corresponding ratios in other unsuccessful Lanham Act cases.
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