McGLINCHEY STAFFORD admitted pro hac vice 2 3 4 5 6 ... · Declaration of Dhruv M. Sharma and the documents attached thereto, and on any other matter the Court may properly consider

CASE NO.: 5:17-CV-000436-NC

DEFENDANT STERLING JEWELERS INC.’S MOTION FOR SUMMARY JUDGMENT 1010911.1

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McGLINCHEY STAFFORD Richik Sarkar (OH SBN 0069993) (admitted pro hac vice) Dhruv M. Sharma (SBN 279545) 18201 Von Karman Avenue, Suite 350 Irvine, California 92612 Telephone: (949) 381-5900 Facsimile: (949) 271-4040 Email: [email protected] [email protected] Attorneys for Defendant STERLING JEWELERS INC. dba KAY JEWELERS

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION

COLONEL DAVID RANDOLPH SCOTT, Plaintiffs, v. CITIZEN WATCH COMPANY OF AMERICA, INC., a California Corporation (Successor to BULOVA CORPORATION, a New York corporation); STERLING JEWELERS, INC. dba KAY JEWELERS, a Delaware Corporation; and DOES 1 through 99, inclusive, Defendants.

Case No.: 5:17-cv-000436-NC Hon. Magistrate Judge Nathanael Cousins DEFENDANT STERLING JEWELERS INC.’S NOTICE OF MOTION AND MOTION FOR SUMMARY JUDGMENT PURSUANT TO FED. R. CIV. P. 56(a); MEMORANDUM OF POINTS AND AUTHORITIES [Filed Concurrently with Declaration of Dhruv M. Sharma and Proposed Order] Hearing: Date: January 24, 2018 Time: 1:00 p.m. Ctrm: 7, 4th Floor Action Filed: January 27, 2017

Case 5:17-cv-00436-NC Document 93 Filed 11/14/17 Page 1 of 19

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NOTICE OF MOTION AND MOTION FOR SUMMARY JUDGMENT

TO PLAINTIFF AND HIS ATTORNEYS OF RECORD:

1. PLEASE TAKE NOTICE that, on January 24, 2018, at 1:00 p.m. in Courtroom 7, 4th

Floor of the above-captioned Court, located at 280 South 1st Street, San Jose, CA 95113, defendant

Sterling Jewelers Inc. (“Sterling”) will and hereby does move pursuant to Federal Rule of Civil

Procedure 56(a) for summary judgment on each claim of plaintiff Colonel David Randolph Scott’s

(“Plaintiff”) First Amended Complaint (“FAC”).

2. Sterling’s motion is made on the grounds that there is no genuine dispute on any material

fact on each of Plaintiff’s claims for relief, and the undisputed facts mandate that summary judgment be

entered in Sterling’s favor. All of Plaintiff’s right of publicity/privacy claims fail because the use of

small fragments of his likeness are incidental, the use is protected by the First Amendment as it concerns

matters of public interest, and Plaintiff is not readily identifiable from the uses at issue. Moreover, and

critically, Sterling — which is an innocent retailer and simply sold the watch at issue — did not

independently advertise or promote the item, making it impossible for any vicarious liability

associated with any purported conduct of its co-defendant Citizen Watch Company of America,

Inc. (“Citizen,” and together with Sterling, the “Defendants”) to apply. Plaintiff’s purported

Lanham Act claims also fail because any use was a nonactionable nominative fair use. Further, no

defendant made any false, misleading, and/or confusing statement to consumers and no trademark “use”

was made of Plaintiff’s identity. Again, Sterling was an innocent retailer and did not have any

knowledge or control over any purported infringement; thereby negating any liability. The

remainder of Plaintiff’s ancillary claims are similarly meritless or duplicative of his other claims and

should be dismissed.

This Motion is based on Defendant Citizen Watch Company of America, Inc.’s Notice of Motion

and Motion for Summary Judgment Pursuant to Fed. R. Civ. P. 56(a); Memorandum of Points and

Authorities (including all exhibits, declarations, and other supporting documents) (Dkt. #81) (“Citizen’s

Motion for Summary Judgment”), this Notice, the attached Memorandum of Points and Authorities, the

Declaration of Dhruv M. Sharma and the documents attached thereto, and on any other matter the Court

may properly consider.


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STATEMENT OF RELIEF SOUGHT

Sterling seeks summary judgment on each claim alleged in the FAC.

DATED: November 14, 2017 McGLINCHEY STAFFORD By: /s/ Richik Sarkar

RICHIK SARKAR DHRUV M. SHARMA

Attorneys for Defendant STERLING JEWELERS INC. dba KAY JEWELERS


i CASE NO.: 5:17-CV-000436-NC

TABLE OF CONTENTS 1010911.1

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TABLE OF CONTENTS

I. INTRODUCTION .....................................................................................................................1

II. UNDISPUTED FACTS RELEVANT TO STERLING’S MOTION ........................................3

III. PROCEDURAL POSTURE ......................................................................................................4

IV. LEGAL STANDARD ................................................................................................................5

V. ARGUMENT .............................................................................................................................5

A. As an Innocent Retailer, Sterling Cannot Be Held Liable for the Purported Acts of Citizen ...............................................................................................................5

B. Sterling Is Also Entitled to Summary Judgment On Plaintiff’s Purported Lanham Act Claims. ......................................................................................................9

C. Sterling Is Entitled To Summary Judgment On Plaintiff’s Remaining Claims ...........10

VI. CONCLUSION ........................................................................................................................10


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TABLE OF AUTHORITIES 1010911.1

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TABLE OF AUTHORITIES

Federal Cases Almeida v. Amazon.com, Inc.,

456 F.3d 1316 (11th Circuit 2006) ....................................................................................... 6, 7, 8, 9

Celotex Corp. v. Catrett, 477 U.S. 317 (1986) ......................................................................................................................... 5

Cerasini v. Sony Corp., 991 F. Supp. 343 (S.D.N.Y. 1998) ................................................................................................... 9

Dworkin v. Hustler Magazine, Inc., 634 F. Supp. 727 (D. Wyo. 1986) .................................................................................................... 9

Newcombe v. Adolf Coors Co., 157 F.3d 686 (9th Cir. 1998) ............................................................................................................ 8

Tiffany (NJ) Inc. v. eBay, Inc., 2010 WL 3733894 (S.D.N.Y. September 10, 2010) ...................................................................... 10

Tiffany (NJ) Inc., v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010) ............................................................................................................. 10

State Cases Bowerman v. Detroit Free Press,

283 N.W. 642 (Mich. 1939) ............................................................................................................. 9

Brinkley v. Casablancas, 438 N.Y.S.2d 1004 (App. Div. 1981) ........................................................................................... 6, 8

Stoner [v. eBay Inc], 2000 WL 1705637 ............................................................................................................................ 9

Vassiliades v. Garfinckel’s, Brooks Bros., 492 A.2d 580, (D.C. 1985) ............................................................................................................... 7

Vinci v. Am. Can Co., 69 Ohio App.3d 727 (Ohio Ct.App.1990) ........................................................................................ 7

State Statutes Cal. Civ. Code § 3344(d) ...................................................................................................................... 2

Cal. Civ. Code § 3344(f) ....................................................................................................................... 8

Federal Rules Fed. R. Civ. P. 56(e) ............................................................................................................................. 5

Fed. R. Civ. Proc. 12(b)(6) ................................................................................................................... 2


iii CASE NO.: 5:17-CV-000436-NC

TABLE OF AUTHORITIES 1010911.1

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Federal Statutes 576 F. Supp. 2d 463 (S.D.N.Y. 2008) ................................................................................................. 10


1 CASE NO.: 5:17-CV-000436-NC

MEMORANDUM OF POINTS AND AUTHORITIES 1010911.1

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MEMORANDUM OF POINTS AND AUTHORITIES1

I. INTRODUCTION

Sterling, which simply listed a watch for sale on its website and offered it in stores — selling

approximately 549 watches — has been improperly dragged into this infringement of publicity

rights and Lanham Act lawsuit over Citizen’s proper use of historical information related to the sale

of a watch linked to Colonel David Randolph Scott (“Plaintiff”). As shall be further explained, none

of Plaintiff’s claims have any basis in law or fact; however, this is especially true with respect to

Sterling — which was an innocent retailer utilizing product descriptions mandated by Citizen.

In brief, and as more fully explained in Citizen’s Motion for Summary Judgment, in introducing

and providing the history of the commemorative edition of the watch Plaintiff wore during the Apollo 15

mission, Citizen: (1) identified Plaintiff as the mission commander of Apollo 15; (2) included a

photograph of an astronaut—in full space suit, with a helmet and visor completely obscuring the

astronaut’s face; and, (3) used two unrecognizable seconds of Plaintiff’s voice from a NASA recording.

Plaintiff’s actual name was used once in Citizen’s first online description of the watch to merely convey

the historical fact that Plaintiff wore the original watch. Citizen circulated this description and its product

to its downstream retailers — including Sterling — for both online and in store sales. Critically for

Sterling, no photographs of Plaintiff were used in this online description; so any “injury”

purportedly caused by Sterling would be the result of Plaintiff’s name being used in the

description which provided historical context for the watch.

Fatal to Plaintiff’s claims, there are no identifiable references to Plaintiff in current materials—

not even to his NASA mission title—beyond the image of him in a full space suit. Though not on

Sterling’s websites, no one can seriously argue that this photograph “readily identifies” Plaintiff. The

same is true of the two seconds of audio, which is also absent from Sterling’s website, and could be

anyone involved in the launch of Apollo 15. Tellingly, to create his claims, Plaintiff must draw

various independent elements from multiple sources. If Plaintiff’s claims had merit, he would not

need to rely upon so many inconspicuous details (e.g., a red stripe on the sleeve of the space suit of

1 Sterling joins and incorporates by reference all of Citizen’s arguments and citations in Citizen’s Motion for Summary Judgment.


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the unidentifiable astronaut in a black and white photograph) to transmogrify them into the

argument that his likeness was “readily identifiable.” Such efforts make it impossible that Plaintiff’s

likeness or voice are “readily identifiable” — fatal to his claims.

Though Sterling played no substantive role with respect to the watch or its marketing, it agrees

that Citizen’s limited, historically significant, factual identification of Plaintiff as the individual who

wore Citizen’s watch on the Apollo 15 mission — the only reference to Plaintiff’s identity connected

with Sterling — cannot give rise to any liability, and the evidence makes clear that no claim against

Sterling or Citizen can stand.

To reiterate Citizen’s arguments, which apply with equal force to Sterling: 1. Plaintiff cannot prevail on any of his right of publicity claims2 because the limited

use of Plaintiff’s name, title, unidentified voice, and/or obscured photograph were merely incidental. The publicity claims are further barred by the First Amendment because Citizen’s reference to Plaintiff as the astronaut who wore the Bulova watch on the moon is a matter of public interest, and the use was transformative in that the value of the works do not derive from Plaintiff, but rather, from the watches themselves. Plaintiff’s statutory right of publicity claim further fails because speech concerning space exploration in general, and the story of the original timepiece specifically, are indisputably subject to the “public affairs” exemption of Cal. Civ. Code § 3344(d), and Plaintiff is not “readily identifiable” from the photograph of a person in a full spacesuit, whose face is obscured by a helmet and visor.

2. Defendants are entitled to summary judgment on both of Plaintiff’s Lanham Act claims because: (1) the use at issue was a nominative fair use; (2) defendants did not make any misrepresentations or use that is likely to confuse consumers, as required to prove a violation of Section 43(a)(1) of the Lanham Act; and (3) there is no trademark “use” of Plaintiff’s name or other elements of his identity by defendants.

3. The remainder of Plaintiff’s ancillary claims—which this Court urged Plaintiff to voluntarily dismiss—are similarly meritless. Plaintiff’s emotional distress claims are utterly unsupported by any fact or law. Plaintiff cannot prove that a passive, factual reference to his name, title, two seconds of audio, and use of an obscured photo in connection with a historical event constitutes “outrageous” behavior that caused him “serious” or “severe” distress. For these same reasons, Plaintiff’s

2 Plaintiff has taken the position that his first claim for relief, “Invasion of Right of Publicity Through Commercial Appropriation of Name and Likeness,” is for “misappropriation of a person’s name or likeness,” which Plaintiff has identified as having the exact same elements as his second claim: the alleged violation of his common law right of publicity. See Plaintiff’s Opposition to Defendants’ Motion to Dismiss Claims 1-3 and 5-9 of the First Amended Complaint Pursuant to Fed. R. Civ. Proc. 12(b)(6) (“Opp.”) at 7:15-18, 8:8-10 [Dkt. 39].


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negligence claim also fails, as it is merely duplicative of his other claims.

Further, it is undisputed that Sterling did not author or develop any strategy or content related to

the watch. All copy was created by Citizen, though Sterling was allowed to make minor, stylistic edits.

All strategic decisions regarding the sale of the watch were directed by Citizen. Citizen’s first online

description (but no astronaut photographs) was briefly found on Sterling’s website product listing (along

with thousands of other listings), but – again at Citizen’s direction – quickly removed and replaced

following the filing of Plaintiff’s Complaint. In truth, Sterling only sold 549 watches and had no further

role with respect to this matter.

Based upon the arguments advanced by Citizen and raised below, Plaintiff cannot prevail on

any claims. But this is especially true with respect to Sterling, which simply used Citizen’s product

and sold 549 watches through its website and in its stores across the world. Sterling’s conduct did

not injure Plaintiff and certainly did not violate the Lanham Act. Sterling should be dismissed from this

matter.

II. UNDISPUTED FACTS RELEVANT TO STERLING’S MOTION

Sterling incorporates by reference Citizen’s recitation of “Undisputed Facts” on pages 3-8 of

Citizen’s Motion for Summary Judgment. However, it specifically expands on Citizen’s factual record

with respect to Sterling’s limited role in this matter.

Specifically, in early 2016, Citizen provided to its downstream retailers, like Sterling, a

factually accurate description of the Commemorative Lunar Watch as having “tak[en] inspiration

from astronaut Dave Scott’s personal Bulova chronograph worn during the Apollo 15 moon

landing,” that Sterling displayed on its website. Citizen’s Motion for Summary Judgment, Napolitano

Decl. ¶ 11 & Ex. 3. After Plaintiff complained that the historical reference to him having worn the watch

violated his privacy and publicity rights and after he filed this lawsuit, Citizen — again without

conceding that such use was in anyway infringing — updated the copy for its downstream retailers.

Thereafter, the copy on Sterling’s website was updated to remove Plaintiff’s title and simply state:

“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.”

Napolitano Decl. 13 & Ex. 5.


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Thus, Sterling is in this purported “large exposure” case because of two words in an online

product listing. But, as made clear in Citizen’s Motion for Summary Judgment, Sterling had no role in

authoring any of the watch descriptions; Citizen drafted all descriptions and directed its retailers

to use same. Further, as established by Sterling’s responses to Plaintiff’s interrogatories – verified by

James Kuzmik, Sterling’s Senior Director, Merchandising:

[A]ll materials related to the Bulova Special Edition Moon Watch, including those implicated by this request, were provided by Citizen. Moreover, Citizen was obligated to ensure that all services and goods provided per the Vendor Buying Agreement were delivered in accordance with, among other things, all applicable state and federal laws, rules, orders, requirements, and regulations. Citizen was also solely responsible for obtaining the necessary permissions and releases from any third parties that have proprietary rights or copyrights prior to delivering services or goods.

(See Declaration of Dhruv M. Sharma (“Sharma Decl.”), ¶ 3 , Exhibit A, Response to Interrogatories

1-3, 7) (emphasis added). Plaintiff does not dispute this, conceding in his discovery responses that

he: (i) has no documents evidencing any communications that he had with Sterling prior to the

initiation of this lawsuit; and (ii) has no documents supporting the contention that Sterling was aware

that the watch was allegedly being marketed with his name, image and likeness, without his consent.

(See Sharma Decl., ¶ 4, Exhibit B, Responses to Requests for Production of Documents 8-9). Again,

though Sterling could make minor stylistic adjustments to copy, Sterling could not and did not make

any substantive changes – and certainly not with respect to Plaintiff.

Thus, it is undisputed that Sterling was simply an “innocent retailer” in this situation.

Citizen wanted to sell its watch through Sterling’s jewelry stores and websites and it sent

advertising copy to Sterling to use for its online listing, which Sterling utilized and changed as

directed. And, per their agreement, Citizen was obligated to ensure compliance with all laws and obtain

all necessary permissions and releases. Such a limited role cannot give rise to liability.

III. PROCEDURAL POSTURE

As detailed in Citizen’s Motion for Summary Judgment, Plaintiff disregarded this Court’s very

strong suggestion to amend his FAC to “get it down to five” claims, and “encourage[d] [him] to get it to

fewer than five.” [Dkt. 65 24:21-22]. It was the Court’s view that keeping “the four or six” of his claims

that are “not necessary” would “make[] the proceedings more complicated, expensive, time consuming,


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and the recovery for [his] nine causes of action [would] be largely over lapping, duplicative.” Id. at

12:24-13:7. The Court also expressed a hope that Plaintiff would “use a further amended complaint as an

opportunity to . . . clarif[y]” and “prioritize” his claims. Id. at 24:4-7. Despite this, Plaintiff’s FAC

maintained eight claims (after the Court dismissed his claim for unjust enrichment with prejudice). [Dkt.

62, 66]

IV. LEGAL STANDARD

As this Court is well aware, a court shall grant summary judgment “against a party who fails to

make a showing sufficient to establish the existence of an element essential to that party’s case, and on

which that party will bear the burden of proof at trial[,] . . . since a complete failure of proof concerning

an essential element of the nonmoving party’s case necessarily renders all other facts immaterial.” See

Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). The moving party bears the initial burden of

identifying those portions of the record that demonstrate the absence of a genuine issue of material fact.

Id. The burden then shifts to the nonmoving party to “go beyond the pleadings and by [his] own

affidavits, or by the ‘depositions, answers to interrogatories, and admissions on file,’ designate ‘specific

facts showing that there is a genuine issue for trial.’” See id. at 324 (citing Fed. R. Civ. P. 56(e)). As

established in Citizen’s Motion for Summary Judgment and below, Plaintiff cannot sustain this burden

and Defendants are entitled to summary judgment on all claims.

V. ARGUMENT

A. As an Innocent Retailer, Sterling Cannot Be Held Liable for the Purported Acts

of Citizen

Without question, Plaintiff’s claims are quintessential “right of publicity” claims. At

common law, the right of publicity “is the legal label denominating the law’s recognition of the

property right inherent in the commercial value of a person’s identity.” 1 J. Thomas McCarthy,

Rights of Publicity & Privacy § 6:3 (2d Ed. 2004). As established in Citizen’s Motion for Summary

Judgment, no right of publicity or misappropriation claims can be established against either

defendant in this case; however, even if that was not the case, independent grounds exist for

summary judgment in favor of Sterling, both as a matter of law and sound policy.

/././


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As a legal matter, publicity claims cannot be maintained against innocent distributors

and retailers. For example, in Brinkley v. Casablancas, 438 N.Y.S.2d 1004 (App. Div. 1981),

Christie Brinkley sued her modeling agency and its president, a poster distributor (“Galaxy”), and

two retailers (“Spencer” and “Oomi”) alleging unauthorized publication, distribution and sale of

posters bearing her image. Like the Plaintiff in this case, Ms. Brinkley asserted state statutory and

common law claims for the purported unauthorized commercial use of her name and likeness. The

court dismissed the claims against the retailers: Liability is sought to be imposed upon Spencer solely upon the basis of its purchase from Galaxy of a quantity of plaintiff’s posters for resale. The purchase was in all respects a standard commercial transaction and Spencer, at the time, had no knowledge of the lack of consent. Hence, no action for exemplary damages lies. …. Moreover, we do not believe that the merchandiser, which is not a publisher, and which sells a product exploiting the name, portrait or picture of a person, without either knowledge that such exploitation is unauthorized or even notice that would prompt reasonable inquiry, has “used” that person’s name, portrait or picture within the meaning of [New York’s Statutes] so as to subject itself to liability for compensatory damages.

Id. at 1014. The court also refused to impose liability against the second retailer:

While Oomi has sold some of the posters, plaintiff fails to show that its purchase of them was other than a standard commercial transaction or that it was aware of her lack of consent.

Id.

More recently, the Eleventh Circuit Court of Appeals relied upon Brinkley to reach the same

legal conclusion with respect to publicity claims against Amazon. See Almeida v. Amazon.com, Inc.,

456 F.3d 1316, 1326 (11th Circuit 2006)(affirming grant of summary judgment in favor of “innocent

retailer”). Like this Court, in Almeida the Eleventh Circuit faced the issue of the liability of an

innocent retailer of a product that contained an allegedly infringing material in its online

listing. As this Court should, the trial court awarded summary judgment for the innocent

retailer. The Eleventh Circuit affirmed, finding no infringement under comparable Florida statutory

or common law, as Amazon did not use plaintiff’s image for “purposes of trade or for any

/././


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commercial or advertising purpose.” Id. at 1326. It simply used language provided by the

manufacturer to sell a product on its site.

In affirming the trial court, the appellate court found that Amazon functioned as the internet

equivalent of a bricks and mortar bookseller who displays books for sale and allows browsers to

view the covers of the books. As such, Amazon, like Sterling in this case, was merely a passive

retailer selling books which allegedly contained infringing material; thus, no liability could be

imposed. Id. In reaching this conclusion the Eleventh Circuit specifically found: Almeida does not allege that Amazon’s display of her image emphasized her role in Cabral’s photo exhibit, or that it can be distinguished from Amazon’s customary display of book cover images. Rather, we find that, as a matter of business practice, Amazon’s use of book cover images closely simulates a customer’s experience browsing book covers in a traditional book store. Thus, it is clear that Amazon’s use of book cover images is not an endorsement or promotion of any product or service, but is merely incidental to, and customary for, the business of internet book sales. See Vinci v. Am. Can Co., 69 Ohio App.3d 727, 591 N.E.2d 793, 794 (Ohio Ct.App.1990) (holding that the mention of Olympic athletes’ names was incidental to the promotion of Dixie Cups, and thus not a violation of Ohio’s common law right of appropriation, because the use was purely informational and there was no implication that the athletes used, supported, or promoted the product); Restatement (Second) of Torts § 652C cmt. d (1977) (stating that the mere incidental use of a person’s name or likeness is not actionable under the right of publicity). Under the allegations of Almeida’s complaint, we discern no set of facts by which an internet retailer such as Amazon, which functions as the internet equivalent to a traditional bookseller, would be liable for displaying content that is incidental to book sales, such as providing customers with access to a book’s cover image and a publisher’s description of the book’s content. Accordingly, we affirm the district court’s grant of summary judgment as to Amazon’s right of publicity claim, but we do so on the ground that Amazon did not use Almeida’s image for the purpose of directly promoting a product or service in violation of section 540.08.

Id. Cf. 1 Rights of Publicity and Privacy § 3:17 (2d ed)(“False Advertising Law: A Passive

Distributor is Not Liable. The general rule in false advertising cases is that a publication such as a

newspaper is not liable to those who were injured by false advertising placed in the paper.”);

Vassiliades v. Garfinckel’s, Brooks Bros., 492 A.2d 580, 590, 11 Media L. Rep. (BNA) 2057 (D.C.

1985) (Plastic surgeon falsely assured department store sponsor of lecture that surgeon had obtained

/././


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consent of patient to show before and after photos, thus department store was not liable for invasion

of privacy as it was justified in relying upon surgeon’s assurances.).

This distinction is also recognized by Cal. Civil Code section 3344(f), which provides:

“Nothing in this section shall apply to the owners or employees of any medium used for advertising,

including, but not limited to, newspapers, magazines, radio and television networks and stations,

cable television systems, billboards, and transit ads, by whom any advertisement or solicitation in

violation of this section is published or disseminated, unless it is established that such owners or

employees had knowledge of the unauthorized use of the person's name, voice, signature,

photograph, or likeness as prohibited by this section.” Cal. Civ. Code § 3344 (f); see also Newcombe

v. Adolf Coors Co., 157 F.3d 686, 694 (9th Cir. 1998)(affirming summary judgment in favor of

publisher of magazine that published advertisement allegedly misappropriating plaintiff’s likeness,

in absence of allegation that publisher knew that plaintiff had not authorized use of his likeness).

Thus, to the extent Plaintiff’s claim against Sterling is based on the alleged misappropriation of his

likeness on Sterling’s website, i.e. a medium used for advertising, it is barred by section 3344(f)

absent allegations that Sterling had knowledge of the allegedly unauthorized use.

In sum, as in Brinkley and Almeida, Sterling — which is both an online and bricks and

mortar retailer — simply received the online listing information, which only briefly contained

Plaintiff’s name, through a standard commercial transaction with Citizen and did nothing to

further highlight anything with respect to Plaintiff. Critically, it had no involvement in

authoring, editing, or publishing any copy or deciding to include Plaintiff’s name in the historical

description. Moreover, Sterling reasonably relied upon Citizen to ensure that all laws were followed

and all permissions received. In light of these undisputed facts, just as in Almeida and Brinkley,

Plaintiff’s publicity and misappropriation claims fail as a matter of law.

Such a finding is also good policy, as imposing liability on Sterling under these

circumstances would create impracticable and undue burdens on retail commerce. Brinkley,

438 N.Y.S.2d at 1014 (finding liability “would subject such merchandiser to hazards over which it

has no control, and impose upon it a burden disproportionate to the interest to be protected”).

Sterling sells millions of watches (not to mention rings, ear rings, necklaces, bracelets, and other


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jewelry). To avoid liability, under Plaintiff’s implicit theory, every retailer or distributer in the

chain of commerce would be required to individually verify that all names, listings, images, etc.

were obtained with valid consent, did not exceed the scope of the consent, and was otherwise

lawful. This is not and cannot be the law. As the Eleventh Circuit made clear: Almeida implausibly asserts that “it would be simple and cost nothing” for Amazon.com to independently verify every conceivable property right associated with every book it sells. Appellant’s Br. at 34. … That this is a “simple” task that would “cost nothing” defies common sense. Stoner [v. eBay Inc], 2000 WL 1705637, at *4 (rejecting argument that eBay should independently verify copyrights for sound recordings sold through its auction service because “[t]he burden [of] such an obligation ... likely would force it to cease, or at least significantly restrict, its operations.””).

Almeida, 456 F.3d 1316, 1326.3

In short, though Citizen’s Motion for Summary Judgment clearly establishes that none of

Plaintiff’s publicity or misappropriation claims can survive (see Citizen’s Motion for Summary

Judgment, Points V(A) and (B), fully incorporated herein by reference), independent grounds require

summary judgment in favor of Sterling, as an innocent retailer, on same.

B. Sterling Is Also Entitled to Summary Judgment On Plaintiff’s Purported

Lanham Act Claims.

Sterling concurs with Citizen’s assessment that Plaintiff cannot maintain any of its Lanham Act

claims (see Citizen’s Motion for Summary Judgment, Point V(C), fully incorporated herein) as (1) the

use at issue was a nominative fair use; (2) Citizen did not make any misrepresentations or use that is

likely to confuse consumers, as required to prove a violation of Section 43(a)(1); and (3) there is no

trademark “use” of Plaintiff’s name or other elements of his identity by either Plaintiff or Citizen.

3 This policy rationale has been applied in the analogous context of defamation claims. “[W]here a defendant has no ‘actual part in composing or publishing,’ he cannot be held liable ‘without disregarding the settled rule of law by which no man is bound for the tortious act of another over whom he has not a master’s power of control.’ ” Cerasini v. Sony Corp., 991 F. Supp. 343, 352 (S.D.N.Y. 1998) (dismissing defamation claim against defendants that allegedly republished defamatory material) (quotation omitted); Dworkin v. Hustler Magazine, Inc., 634 F. Supp. 727 (D. Wyo. 1986) (dismissing defamation claims against retailers who sold a magazine containing allegedly defamatory material). The rationale for the rule is that “it is unreasonable to hold that a local distributor of newspapers should be required to check the contents of each issue for libelous matter.” Bowerman v. Detroit Free Press, 283 N.W. 642, 645 (Mich. 1939).


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In addition, as Sterling did not control how Citizen described or marketed its

commemorative watch or know of any alleged infringement in the brief use of Plaintiff’s name in

the historical description, Sterling cannot be liable under any secondary liability theories. See

Tiffany (NJ) Inc., v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010) affirming in part and remanding in

part, 576 F. Supp. 2d 463, 502 (S.D.N.Y. 2008), cert denied, 131 S. Ct. 647 (2010)(finding

downstream retailer was not liable for purported Lanham Act violations absent proof of either

knowledge (contributory infringement) or control (vicarious infringement)).4

Again, Sterling was merely an innocent retailer in this situation — it simply

incorporated Citizen’s copy into its online listing, which utilized Plaintiff’s name for only a

limited time. As Sterling properly relied upon Citizen’s agreement to comply with all applicable

laws and obtain all necessary third party permissions and releases, it did not have the required

knowledge or control for liability to be imposed upon it. Accordingly, independent of Citizen’s

legally correct arguments with respect to Plaintiff’s defective Lanham Act claims generally, no

downstream liability can be established, requiring judgment in favor of Sterling.

C. Sterling Is Entitled To Summary Judgment On Plaintiff’s Remaining Claims

As the Court noted, Plaintiff’s claims for intentional and negligent emotional distress and

negligence are “not necessary” and make these “proceedings more complicated, expensive, [and] time

consuming.” [Dkt. 65 at 12:24-13:7]. Sterling has nothing further to add to this Court’s analysis or

Citizen’s arguments set for in Point V(C) of Citizen’s Motion for Summary Judgment and incorporates

same into this Motion.

VI. CONCLUSION

Sterling, an innocent retailer in this situation, simply listed a watch for sale on its website and

offered it in stores. Now, perhaps in an attempt to gain leverage over Citizen, Plaintiff has dragged

Sterling into this (weak) publicity and Lanham Act case over Citizen’s brief use of Plaintiff’s name to

4 In Tiffany, the Court remanded the false advertising claims to the trial court in light of its ruling on the trademark infringement claims. On remand, the district court found that secondary false advertising liability could not be established as Tiffany could not establish that representations were actually false or that any consumers were actually confused by any eBay listings. See Tiffany (NJ) Inc. v. eBay, Inc., 2010 WL 3733894 (S.D.N.Y. September 10, 2010). As Citizen’s Motion for Summary Judgment makes clear, Plaintiff cannot establish any false or confusing statements were made and/or that Sterling knew of any alleged confusing or false statements.


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provide historical context for its commemorative watch. As a matter of law and policy, liability cannot

be attached against Sterling based upon its minimal role in this situation — in which it simply followed

the instructions of Citizen.

Further, all of Plaintiff’s right of publicity/privacy claims fail because any use was incidental and

otherwise protected by the First Amendment and Plaintiff is not readily identifiable from the uses at

issue. Similarly, Plaintiff’s purported Lanham Act claims fail because no trademark use was made of

Plaintiff’s identity and, in any event, such use was a nonactionable nominative fair use. Finally, no

defendant made any false, misleading, and/or confusing statement to consumers, such that any

reasonable consumer would assume sponsorship or endorsement.

Again, Sterling was an innocent retailer and did not have any knowledge or control over any

purported infringement through the fleeting use of Plaintiff’s name; thereby negating any contributory or

vicarious liability. The remainder of Plaintiff’s ancillary claims are similarly meritless or duplicative of

his other claims and should be dismissed.

As the undisputed facts do not form the basis for any of the claims alleged by Plaintiff, Sterling is

entitled to judgment as a matter of law.

DATED: November 14, 2017 McGLINCHEY STAFFORD By: /s/ Richik Sarkar

RICHIK SARKAR DHRUV M. SHARMA

Attorneys for Defendant STERLING JEWELERS INC. dba KAY JEWELERS


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PROOF OF SERVICE

STATE OF CALIFORNIA ) ) ss.

COUNTYOFORANGE )

I, Carol Rico, declare:

I am employed in the County of Orange, State of California. I am over the age of 18 and not a party to the within action. My business address is 18201 Von Katman Ave., Suite 350, Irvine, Califomia 92612.

On November 14, 2017, I served the document(s) described as:

9 1)

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DEFENDANT STERLING JEWELERS INC.'S NOTICE OF MOTION AND MOTION FOR SUMMARY JUDGMENT PURSUANT TO FED. R. CIV. P. 56(a); MEMORANDUM OF POINTS AND AUTHORITIES;

11 2)

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13 3)

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DECLARATION OF DHRUV M. SHARMA IN SUPPORT OF DEFENDANT STERLING JEWELERS INC.'S MOTION FOR SUMMARY JUDGMENT PURSUANT TO FED. R. CIV. P. 56(a); and

ORDER GRANTING DEFENDANT STERLING JEWELERS INC.'S MOTION FOR SUMMARY JUDGMENT PURSUANT TO FED. R. CIV. P. 56(a)

as follows: 15

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D BY MAIL: As follows :

D FEDERAL- I deposited such envelope in the U.S. mail at Irvine, California, with postage thereon fully prepaid,

BY CM!ECF NOTICE OF ELECTRONIC FILING: I caused said document(s) to be served by means ofthis Comt's Elech·onic transmission ofthe Notice ofElech·onic Filing through the Court' s transmission facilities, to the parties and/or counsel who are registered CMIECF users set forth in the service list obtained from this Court. Pursuant to Electronic Filing Comt Order, I hereby cettify that the above documents(s) was uploaded to the website and will be posted on the website by the close of the next business day and the webmaster will give e-mail notification to all parties.

FEDERAL: I declare that I am employed in the office of a member of the State Bar of this Court at whose direction the service was made.

Executed on November 14, 2017, at Irvine, California.

~~'LL----Carol Rico

781405.1


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SERVICE LIST U.S. District Court, Northern District Case No. 5:17-cv-00436-NC

DAVID RANDOLPH SCOTT v. CITIZEN WATCH COMPANY OF AMERICA, INC., et al.

Christopher R. Mezzetti, Esq. Maureen P. Ryan, Esq. Robert L. Mezzetti, II, Esq. MEZZETII LAW FIRM, INC. 31 E. Julian St. San Jose, CA 95112

Ian Bailon, Esq. Nina D. Boyajian, Esq. GREENBERG TRAURIG LLP 1900 University Ave., 5111 Floor East Palo Alto, CA 94303

Seth Presser, Esq. CITIZEN WATCH COMPANY OF AMERICA, INC. Bulova The Empire State Building 350 Fifth Ave., 29111 Floor New York, NY 10 118

781405.1

File# 105740.0047

Attorneys for Plaintiff DAVID RANDOLPH SCOTT

Tel.: (408) 279-8400 Fax: ( 408) 279-8448 Email: [email protected]

[email protected] [email protected]

Attomeys for Defendant CITIZEN WATCH COMPANY OF AMERICA, INC.

Tel.: (650) 328-8500 Fax: (650) 328-8508 Email: [email protected]

[email protected]

Attomey for Defendant CITIZEN WATCH COMPANY OF AMERICA, INC.

Tel.: (212) 497-9795 Email: [email protected]
