Hebrew Univ. of Jerusalem v. Gen. Motors LLC.

878 F.Supp.2d 1021

The HEBREW UNIVERSITY OF JERUSALEM

v.GENERAL MOTORS LLC.

Case No. CV10–03790 AHM (JCx).

United States District Court, C.D. California.

March 16, 2012.

David G. Bayles, Steven E. Bledsoe, Antoinette S. Waller, Arent Fox LLP, Los Angeles, CA, Anthony V. Lupo, Randall A Brater, Arent Fox LLP, Washington, DC, for The Hebrew University of Jerusalem.

Stephen M. Rummage, Ambika Doran, Davis Wright Tremaine LLP, Seattle, WA, Lisa J. Kohn, Kelli L. Sager, Davis Wright Tremaine LLP, Los Angeles, CA, for General Motors LLC.

Proceedings: IN CHAMBERS (No Proceedings Held)

A. HOWARD MATZ, District Judge.

This case is before the Court on the motion for summary judgment filed by defendant General Motors LLC (“Defendant” or “GM”). For the reasons set forth below, the Court GRANTS the motion in part and DENIES it in part. ¹ The Court grants the motion as to Plaintiff's causes of action for violation of the Lanham Act and California's Unfair Competition Law and denies the motion as to Plaintiff's causes of action for infringement of the right of publicity.

I. INTRODUCTION

In 2010, Defendant used an image of Einstein as part of an advertisement (“Advertisement”) for GM's 2010 Terrain vehicle. SUF ¶ 39. According to Defendant, its advertising agency licensed the image of Einstein from Getty Images (US), Inc. Getty Images engages in the business of licensing photographic imagery, and is now indemnifying Defendant. Motion at 1 n. 1. The Advertisement appeared in one edition of one magazine— People Magazine's Sexiest Man Alive edition, dated November 30, 2009. SUF ¶ 40; SGI ¶ 40 (noting the edition is dated November 30, 2009, not December 2009).

Defendant contends that the Advertisement did not state or suggest that Einstein or Plaintiff endorsed the Terrain, or even contain a reference to Plaintiff. SUF ¶¶ 42–46. Further, Defendant asserts that no reasonable reader of the Advertisement would read it to imply that Einstein or Plaintiff endorsed the Terrain. SUF ¶¶ 47, 48. Plaintiff disputes all of these facts, citing only to the Advertisement itself and arguing that the Advertisement implies and creates the false impression that Einstein's estate and/or Plaintiff were associated with the Advertisement. SGI ¶¶ 42–48. This is merely argument. Plaintiff cites to no evidence in the record to create a genuine dispute regarding SUF ¶¶ 42–46.

Plaintiff The Hebrew University of Jerusalem (“Plaintiff” or “HUJ”) claims that Dr. Albert Einstein (“Einstein”) had a right of publicity that survived his death. Plaintiff claims that he transferred that right to Plaintiff through his will, thereby giving Plaintiff exclusive control of Einstein's name and likeness. Plaintiff asserts that Defendant's unauthorized use of Einstein's image violated the Lanham Act (15 U.S.C. § 1125(a)), California's Unfair Competition Law (“UCL”), California's right of publicity statute (Civil Code § 3344.1), and the common law right of publicity.

Defendant moves for summary judgment on all four of Plaintiff's causes of action. The parties agree that New Jersey law governs the issue of whether Einstein had a postmortem right of publicity. Defendant's motion presents the following core issues: (1) whether there is a postmortem right of publicity in New Jersey; (2) whether establishing any such right depends on the decedent's lifetime exploitation of that right; (3) if so, whether there is any evidence that Einstein exploited his right of publicity; and (4) if Einstein had a postmortem right of publicity, whether Plaintiff inherited the right through that Will.

II. LEGAL STANDARD ON SUMMARY JUDGMENT

Federal Rule of Civil Procedure 56(c) provides for summary judgment when “the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law.” The moving party bears the initial burden of demonstrating the absence of a “genuine issue of material fact for trial.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A fact is material if it could affect the outcome of the suit under the governing substantive law. Id. at 248, 106 S.Ct. 2505. The burden then shifts to the nonmoving party to establish, beyond the pleadings, that there is a genuine issue for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 324, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

“When the party moving for summary judgment would bear the burden of proof at trial, it must come forward with evidence which would entitle it to a directed verdict if the evidence went uncontroverted at trial. In such a case, the moving party has the initial burden of establishing the absence of a genuine issue of fact on each issue material to its case.” C.A.R. Transp. Brokerage Co., Inc. v. Darden Rests., Inc., 213 F.3d 474, 480 (9th Cir.2000) (citations omitted). In contrast, when the non-moving party bears the burden of proving the claim or defense, the moving party can meet its burden by pointing out the absence of evidence from the non-moving party. The moving party need not disprove the other party's case. See Celotex, 477 U.S. at 325, 106 S.Ct. 2548. Thus, “[s]ummary judgment for a defendant is appropriate when the plaintiff ‘fails to make a showing sufficient to establish the existence of an element essential to [his] case, and on which [he] will bear the burden of proof at trial.’ ” Cleveland v. Policy Mgmt. Sys. Corp., 526 U.S. 795, 805–06, 119 S.Ct. 1597, 143 L.Ed.2d 966 (1999) (citing Celotex, 477 U.S. at 322, 106 S.Ct. 2548).

When the moving party meets its burden, the “opposing party may not rely merely on allegations or denials in its own pleading; rather, its response must-by affidavits or as otherwise provided in this rule—set out specific facts showing a genuine issue for trial.” Fed.R.Civ.P. 56(e). Summary judgment will be entered against the opposing party if that party does not present such specific facts. Id. Only admissible evidence may be considered in deciding a motion for summary judgment. Id.; Beyene v. Coleman Sec. Servs., Inc., 854 F.2d 1179, 1181 (9th Cir.1988).

“[I]n ruling on a motion for summary judgment, the nonmoving party's evidence ‘is to be believed, and all justifiable inferences are to be drawn in [that party's] favor.’ ” Hunt v. Cromartie, 526 U.S. 541, 552, 119 S.Ct. 1545, 143 L.Ed.2d 731 (1999) (quoting Anderson, 477 U.S. at 255, 106 S.Ct. 2505). But the non-moving party must come forward with more than “the mere existence of a scintilla of evidence.” Anderson, 477 U.S. at 252, 106 S.Ct. 2505. Thus, “[w]here the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no genuine issue for trial.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (citation omitted).

III. FACTS

The following facts are undisputed, unless otherwise noted. Einstein was the preeminent physicist of his time and remains world famous to this day. Statement of Undisputed Facts (“SUF”) ¶ 1. Einstein died in 1955, while domiciled in New Jersey. SUF ¶ 6. He disposed of his property through a will (“Will”) dated March 18, 1950. SUF ¶ 7. Plaintiff argues that it inherited Einstein's right of publicity through Article 13 of the Will, which in relevant part reads:

I give and bequeath all of my manuscripts, copyrights, publication rights, royalties and royalty agreements, and all other literary property and rights, of any and every kind or nature whatsoever, to my Trustees hereinafter named, IN TRUST, to hold the same for a term measured by the lives of my secretary Helena Dukas, and my step-daughter, Margot Einstein.... Upon the death of the said Helena Dukas and the said Margot Einstein, this trust shall terminate, and thereupon all funds or property, if any, still held in this trust, including all accrued, accumulated and undistributed income and all literary rights and property, shall pass and be distributed to Hebrew University....

Doran Decl. Exh. E at 12–13, 14; SUF ¶ 8; SGI ¶ 8 (noting that the bequest includes the clause “of any and every kind and nature whatsoever”).

It is undisputed that no other provision in the Will gives Plaintiff rights in Einstein's estate. SUF ¶ 10. Plaintiff argues that Article 14 of the Will, its residual clause, gave all unspecified property to Margot Einstein, and that Margot Einstein subsequently bequeathed the residue of her estate to HUJ (and 10 other charities) when she passed away in 1986. SGI ¶ 10; Declaration of David G. Bayles Exh. 2 at 28–29. Be that as it may, the Will itself does not give Plaintiff rights in Einstein's estate other than as provided for through the Trust.

The Will provided that the Trust would terminate upon the death of Helena Dukas and Margot Einstein, whereupon all property in the Trust would pass to Plaintiff. SUF ¶ 9. In fact, the Trust was terminated by an agreement executed by Helena Dukas, Otto Nathan, Margot Einstein, and a representative of HUJ, effective January 1, 1982, conveying all property remaining in the Trust to Plaintiff. SUF ¶ 30; SGI ¶ 30 (noting the Trust terminated on January 1, 1982, not in 1981 as per SUF ¶ 30); Doran Decl. Exh. I at 92–107 (copy of agreement). Plaintiff apparently began asserting its right to control Einstein's name and likeness in 1985. See Doran Decl. Exh. J at 127 (newspaper article noting HUJ had “hired an American licensing agent ... to legally end the use of Einstein's name or face in TV, magazine and newspaper ads.”).

Although Einstein lent his name to various charitable causes, there is no evidence that Einstein ever received any monetary compensation for his publicity rights or for the use of his publicity rights during his lifetime. SUF ¶¶ 2, 4, 5. Plaintiff nevertheless argues that Einstein “was aware of the value of his name and likeness” and exploited that value. Statement of Genuine Issues (“...