Love v. Sanctuary Records Group, Ltd.

Ninth Circuit affirms dismissal of founding member of The Beach Boys’ Lanham Act and California common law right of publicity claims asserted on the basis of conduct that occurred only in Great Britain.

Plaintiff Mike Love is a founding member of The Beach Boys and owner of the right use The Beach Boys trademark in live performances in the U.S. In 2004, Brian Wilson, another founding member of The Beach Boys, released a solo album called Smile. As part of the album’s promotional campaign, Wilson mounted a tour and the British newspaper The Mail on Sunday distributed a compact disc—Good Times—consisting of Brian Wilson’s solo versions of Beach Boys songs. The CDs were distributed in the United Kingdom and Ireland. Approximately 425 copies of that edition of The Mail without the CD were distributed in the United States, including 18 in California. The cover of the distributed compact disc featured members of The Beach Boys, including Wilson and plaintiff.

Plaintiff commenced this action against, inter alia, Wilson, Associated Newspapers Limited (ANL), the publisher of The Mail on Sunday, and Sanctuary Records Group, Ltd., the entity that owned the rights to the relevant Wilson recordings. The district court dismissed the claims for violation of California’s statutory and common law rights of publicity after holding that English law, which does not recognize a right of publicity, governed. The district court also dismissed the Lanham Act claims after finding that the extraterritorial reach of the statute did not encompass the claims. The district court also granted defendants’ motion for attorney’s fees. Plaintiff appealed the dismissal of his common law right of publicity and Lanham Act claims as well as the district court’s attorney’s fees award.

Initially, the U.S. Court of Appeals for the Ninth Circuit considered whether the action against defendant BigTime.tv was properly dismissed for lack of personal jurisdiction. The district court was permitted to exercise personal jurisdiction over BigTime.tv where (1) the defendant committed an intentional act; (2) the act was expressly aimed at the forum state; and (3) the act caused harm that defendant knew was likely to be suffered in the forum state. Although the Ninth Circuit acknowledged that BigTime.tv did contact people in California regarding the promotion that would eventually lead to the law suit, the court held that plaintiff failed to establish personal jurisdiction over defendant because those discussions did not enable or contribute to the promotional activities that actually gave rise to the law suit. The court noted that the intentional acts that allegedly harmed plaintiff, i.e., BigTime.tv’s licensing of the recordings and promotion of the CD on television and internet, were directed entirely at markets in the United Kingdom and Ireland.

The central issue before the appeals court was whether American claims for relief can be asserted on the basis of conduct that only occurred in Great Britain. In applying a choice of law analysis, the court dismissed plaintiff’s common law right of publicity claim. The court noted that California applies the governmental interest test to conflict-of-law issues, including those involving rights of publicity claims. In applying this standard, the court found that a true conflict did not exist because California has no interest in applying its law to the conduct in question. The court emphasized that (1) none of the parties remaining in the suit was a citizen of California, and (2) the alleged injury occurred almost exclusively in the United Kingdom and Ireland. Even if plaintiff’s commercial interests in California did create a conflict (plaintiff was domiciled in Nevada but owned property in California), stated the court, England’s interests were substantially greater. Although England does not recognize a right of publicity, it has manifested a policy choice favoring unrestricted competition in the area of commercial exploitation of names and likenesses. Assuming California has an interest in protecting the right of an entertainer with economic ties to the state to exploit his own image overseas, stated the court, that interest is not nearly as significant as England’s interest. The court further concluded that while the Uniform Single Publication Act advances the universal interest in avoiding a multiplicity of suits, it does not displace the traditional choice-of-law analysis.

The court then considered the dismissal of plaintiff’s Lanham Act claims. For the Lanham Act to apply extraterritorially, instructed the court, (1) the alleged violations must create some effect on American foreign commerce, (2) the effect must be sufficiently great to present a cognizable injury to the plaintiffs under the Lanham Act, and (3) the interests of the links to American foreign commerce must be sufficiently strong in relation to those of other nations to justify an assertion of extraterritorial authority. Because the creation, promotion, and distribution of Good Vibrations all occurred in Europe, the court held that the statute could not be applied extraterritorially to encompass acts committed in Great Britain.

Turning to the district court’s award of attorney’s fees for the Sanctuary defendants with respect to all of the claims stated against them, the appeals court explained that attorney’s fees may be awarded where (1) there is an applicable attorney’s fees provision in a contract, (2) if there is statutory authorization, or (3) for work done on claims that involved a common core of facts or are based on related legal theories as claims governed by statutory or contractual attorney’s fees provisions. The court found the claims in this case “inextricably intertwined with statutory or contractual claims” that had such support.

The court further affirmed the award of attorney’s fees under the Lanham Act. Attorney’s fees, wrote the court, are allowed in “exceptional cases.” In finding that the present case was exceptional, the court noted the unreasonableness of plaintiff’s trademark claims, plaintiff’s continued pursuit of the claims in bad faith, and the frivolous and unreasonable nature of plaintiff’s copyright claims. The court rejected plaintiff’s argument that because, as a beneficial owner, plaintiff has statutory standing under the Lanham Act, that his claims could not be unreasonable. The court further denied plaintiff’s assertion that fees were not warranted because he relied upon the advice of counsel. The court held that “a party’s reasonable reliance on the advice of counsel may diffuse exceptional conduct,” but here, defendant failed to prove reasonable reliance.