King v. Perry

Ninth Circuit affirms dismissal of trademark infringement suit by actor in play Diary of a Mad Black Woman against Tyler Perry, holding that use of actor’s name in credits of filmed version of play was nominative fair use because it was the only way of describing her appearance in work.

Plaintiff Marva King entered into a performance agreement with Arthur Primus on January 3, 2001, for her performance in the play Diary of a Mad Black Woman, which was written, produced and directed by Tyler Perry. King sued Primus, Perry and Perry’s production company, Tyler Perry Studios LLC, alleging that Perry recorded and distributed a video performance of the play without her consent. King asserted a federal claim for a Lanham Act violation and state claims for unlawful appropriation of right of publicity common law; unauthorized commercial usage of name, image, voice signature, photograph or likeness; breach of contract; tortious interference with prospective economic relations; and intentional infliction of emotional anguish. Perry and Tyler Perry Studios moved to dismiss, arguing that the court lacked personal jurisdiction over Perry’s production company and that King failed to state a claim under the Lanham Act.

The district court granted the production company’s motion to dismiss for lack of personal jurisdiction, finding that it lacked both general and specific personal jurisdiction over the production company because it was a Georgia limited liability company with its principal place of business in Atlanta that was not authorized to transact business in California and did not have any role in the production, filming, editing or distribution of the film.

The district court also dismissed King’s Lanham Act claims against Perry. The court first considered Perry’s nominative fair use defense, which applies where defendant uses a trademark to describe plaintiff’s product and the mark is not used as a source identifier or to appropriate the goodwill of plaintiff’s product. The district court found all elements of nominative fair use defense were present because it would not be possible to credit plaintiff’s performance in the film without using her name, King’s name is only used in the film to credit plaintiff for her performance and the credit does not suggest her sponsorship or endorsement of the film.

The court also agreed with Perry’s argument for dismissal under Rogers v. Grimaldi, through which the Ninth Circuit  has held that an artistic work’s use of a trademark that otherwise would violate the Lanham Act is not actionable unless “[1] the [use of the mark] has no artistic relevance to the underlying work whatsoever, or, [2] if it has some artistic relevance, unless [it] explicitly misleads as to the source or the content of the work.” The use of King’s name did not explicitly mislead viewers as to the film’s source and therefore was not actionable.

Finally, the court agreed with Perry that King’s Lanham Act claim, which centered on alleged misappropriation and distribution of a video recording of her performance, was preempted by the Copyright Act. The court declined to exercise supplemental jurisdiction over King’s state law claims and dismissed the case without leave to amend, holding that further amendment would be futile.

On King’s appeal, the Ninth Circuit affirmed.

Regarding jurisdiction, the Ninth Circuit held that the district court lacked general and specific personal jurisdiction over Tyler Perry Studios because it is a foreign LLC that was not authorized to transact business in California, has no employees in California, does not advertise in California, maintains no facilities in California and does not purposefully direct its activities toward the California market.

The Ninth Circuit also affirmed dismissal of King’s Lanham Act claims because the use of King’s name in the film credits was nominative fair use. The Ninth Circuit relied on its earlier decision in Yuga Labs, Inc. v. Ripps, in which it explained that “[w]here a mark is the only word reasonably available to describe a particular thing, use of that mark lies outside of trademark law.”

The panel also affirmed the district court’s exercise of discretion in declining to exercise supplemental jurisdiction over King’s state law claims, dismissing King’s claims against Primus even though he was not served given that he was in a similar position to Perry and denying leave to amend on futility grounds.

Summary prepared by David Grossman and David Forrest