11th Circuit protects (at least some) truthful references to product creation

Webster v. Dean
Guitars, — F.3d —-, 2020 WL 1887783, No. 19-10013 (11th Cir. Apr. 16, 2020)
Buddy Webster (pka
Buddy Blaze), a successful guitar maker and technician, in the mid-1980s modified
a Dean guitar and commissioned someone to paint a lightning storm graphic on it;
he gave the guitar to Darrell Abbott, late guitarist of the heavy-metal band
Abbott called the
guitar “The Dean from Hell” (DFH). In 2004, Abbott entered an endorsement-type
contract with Dean, but he died shortly thereafter. Since 2004, Dean has
produced and sold guitar models based on Abbott’s guitar and featuring the
lightning storm graphic, without Webster’s consent and without paying him
royalties for the use of the design. In 2017, Webster sued Dean and others for copyright
infringement, unfair competition, and false endorsement. The court of appeals
affirmed the district court’s grant of summary judgment to Dean et al.

Dean from Hell

Dean’s DFH

infringement: this was fundamentally a claim over ownership, not general
infringement, and thus it didn’t have general infringement’s rolling accrual.
Webster first learned about the sales of the reissued guitar in December 2004,
and learned of a cheaper, imported version called the Cowboy from Hell in 2006.
In 2006, he emailed then CEO of Dean, Elliot Rubinson, and told him that Dean
could not sell the reissues without his permission, but Dean did not stop
selling the guitars. In 2007, Webster complained again, and Rubinson responded:
I have taken some time and spoken to several “people in the know” and
the consensus concerning [the lightning storm graphic] is that [Abbott’s]
estate is the legal owner of it. With that said, I still would like to work
with you on [an Abbott] project because I am not about making enemies but
keeping friends…. Rita and I have plans to do a relic [DFH] and would like you
involved for a royalty. Is that of interest?
Webster testified
that, in a subsequent phone call, Rubinson suggested that he sue Abbott’s
estate if he was still upset.  Despite
the lack of royalties for the DFH, Webster worked with Dean in 2009 to create
and sell his own signature guitar model—the “Buddy Blaze ML.” He also willingly
appeared in multiple interviews in 2008 and 2009 discussing his role in the
history of the original DFH; Dean posted some of them to its YouTube channel. In
one, he stands in front of the original DFH recounting its history. In another,
he appears in an interview alongside Rubinson “promoting the Buddy Blaze ML,
speaking about the history of the original DFH, and comparing his Buddy Blaze
ML model with the DFH.” The third is similar; there’s no mention of the reissues.
From 2009 to 2015,
Dean released several other versions of the DFH, the “Rust from Hell,” the
“Black Bolt,” and the “Limited USA Dean from Hell.” In 2016, Webster retained
counsel and obtained a copyright registration in the lightning storm graphic.
The court of appeals
agreed with the district court that ownership was the gravamen of the claim
here, and Webster had reason to know that his alleged ownership rights were
being violated as early as 2004, when he first learned that Dean was producing
DFH reissues. Even if that weren’t enough, Rubinson’s email in 2007 stating
that “the consensus concerning [the lightning storm graphic] is that [Abbott’s]
estate is the legal owner of it” “was certainly sufficient.” His claim therefore
accrued in April 2007 at the latest, and the three-year limitation period
expired long before he brought his copyright claim in 2017.
Lanham Act/unfair
competition claims: the district court reasoned that there was no evidence that
Dean used a false or misleading statement to sell the DFH reissues. Dean just posted
Webster’s own statements in the video interviews (which he said he wasn’t
harmed by), and there were no statements that Webster endorsed, sponsored, or
derived income from the DFH reissues. One person stated in a declaration that
he attended a NAMM show and “heard Dean representatives using Buddy’s name when
selling guitars like the one that Buddy Blaze re-built for [Abbott],” but there
was nothing untrue or misleading about that.  [Note: Dastar would be an easy way to get here.]
Webster argued that,
in context, the interviews were likely to cause confusion “because, after
viewing the videos on Dean’s website and reading Dean’s advertising copy for
the DFH reissues, a reasonable person would assume that Webster was working
with Dean on the reissues.” Webster relied on statements by Dean advertising
the DFH reissues as similar to “the one that Buddy Blaze painted” and featuring
the “iconic, [DFH] lightning bolt paint job.”  The court of determined that these statements
were not false or misleading. The videos were Webster discussing his undisputed
involvement in the creation of the DFH, and none stated that Webster was
promoting or selling the DFH reissues. “The statements in these videos do not
become misleading, nor do they imply that he endorses or benefits from the sale
of the DFH reissues, simply because they appear near Dean’s advertisements of
DFH reissues.”
False endorsement: Webster
argued that his presence in Dean’s promotional materials and videos “was
‘inescapably interpreted’ by the audience of guitar-enthusiasts [as] an
endorsement.” The court of appeals applied the multifactor LOC test, but found
that since the claims were based on videos in which Webster “appeared to
willingly promote his legacy as creator of the DFH,” only “(6) the intent of
the alleged infringer to misappropriate the proprietor’s good will; and (7) the
existence and extent of actual confusion in the consuming public” were relevant.
 The court doesn’t explain why it
discounts the other factors, but presumably it means that things like
similarity of marks and similarity of goods point in the wrong direction from
common sense where there is truthful, useful information that the seller should
be able to convey—similar to the justification for nominative fair use. Still
not clear to me why it’s these two factors that should bear the weight, but I
guess that’s what you get if you don’t have nominative fair use.
The court of appeals
rejected Webster’s implicit argument that, “given his notoriety in the
guitar-enthusiast world, the mention of his name near or in relation to the DFH
reissues must have caused consumers to mistakenly believe that he endorsed the
sale of the reissues.”  Instead,
confusion is not simply to be assumed “when a mark is used in the proximity of
advertising for a product, especially when a legitimate use of that mark is
clear from the context.”  There was “little
or no evidence” of intent to misappropriate his goodwill: these were just his
own interviews, “several years after he became aware of the DFH reissues,
willingly discussing the history of the DFH to promote his legacy and sell his
own guitars. He does not mention the DFH reissues in the interviews.” [Would it be intent to misappropriate if someone else truthfully discussed his history? This is a variant of the question of distinguishing use from misappropriation.] And there
was no evidence of consumer confusion. Affirmed.

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