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


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

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.

from Blogger

This entry was posted in Uncategorized and tagged , , , , . Bookmark the permalink.

Leave a Reply

Fill in your details below or click an icon to log in: Logo

You are commenting using your account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s