Free Brief in Opposition to Motion - District Court of Colorado - Colorado

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KENNETH A. FEINSWOG 6100 Center Drive Suite 630 Los Angeles, California 90045 (310) 846-5800 Attorney for Plaintiff

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO

-----------------------------------------------------------X AMAZON, INC., CIVIL ACTION NO. 99-N-571 and 00-N-2063 (PAC) Plaintiff, -againstPLAINTIFF'S BRIEF IN RESPONSE TO DEFENDANT'S MOTION FOR SUMMARY JUDGMENT

CANNONDALE CORP. and DIRT CAMP, INC.,

Defendants. -----------------------------------------------------------X I. PRELIMINARY STATEMENT

Plaintiff hereby submits this brief in opposition to defendant Cannondale Corp.'s ("defendant") motion for summary judgment.

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II.

RESPONSE TO DEFENDANT'S STATEMENT OF UNDISPUTED MATERIAL FACTS

Plaintiff hereby responds to defendant's statement of undisputed facts as follows : 1. 2. 3. 4. 5. 6. 7. 8. 9. 10. 11. 12. 13. Admitted. Admitted. Admitted. Admitted. Admitted. Admitted. Admitted. Admitted. Admitted. Admitted. Admitted. Admitted. Denied because defendant guaranteed payments due under plaintiff's agreement with Team Sports Mountain, Inc. ("Mountain"). (Exhibit B to the First Amended Complaint filed in 99-N-571 on August 16, 1999, Dkt. No. 43). 14. 15. Admitted. Denied because Ben Giove stated that he made numerous attempts, not had numerous discussions or conversations, regarding a possible renewal. (Ben

1

The following paragraph numbers correspond directly to the paragraph numbers of defendant's statement of undisputed facts.

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Giove Transcript, page 98, Line 4 to Line 21, Exhibit A-1 to Defendant's Summary Judgment Brief). 16. 17. 18. 19. 20. 21. 22. 23. 24. 25. 26. 27. Admitted. Admitted. Admitted. Admitted. Admitted. Admitted. Admitted. Admitted. Admitted. Admitted. Admitted. Denied with respect to defendant's knowledge because issues of credibility exist with respect to the statements made by Patrick Hus. (Giove Declaration, ¶¶ 2-4, Exhibit A-1 hereto). 28. 29. Admitted. Denied with respect to whether a decision had been made to re-sign Missy Giove because issues of credibility exist with respect to the statements made by Patrick Hus (Giove Declaration, ¶¶ 2-4, Exhibit A-1 hereto). 30. 31. 32. Admitted. Admitted. Denied because catalogs are given out directly to customers at bike races (Hus Declaration, ¶9, Exhibit A-16 to the Defendant's Summary Judgment Brief), to

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customers by mail and to people walking into defendant's store. (Giove Declaration, ¶10, Exhibit A-1 hereto). Also denied because Patrick Hus is not competent to testify whether consumers are already interested in defendant's products before they visit defendant's stores. 33. 34. 35. 36. 37. 38. Admitted. Admitted. Admitted. Admitted. Admitted. Denied because the trier of fact should determine whether a witness has meaningful knowledge. 39. Denied because defendant, in many instances, does know the makeup of its team in the September prior to the following year regarding the fact that in the years prior to 1998, defendant knew that Missy Giove was going to be on the Volvo/Cannondale team (Giove Declaration, ¶ 4, Exhibit A-1 hereto). 40. Denied because at the referenced part of the Missy Giove deposition (page 31, Line 9 to Page 32, Line 1), she merely conceded that manufacturers have used other parties' names and likenesses but she did not concede that the practice is "common". 41. Denied because the catalog did not include defendant's current team when defendant distributed the catalog in 1999 because Missy Giove was not on the Cannondale team in 1999 (Exhibit A-7 to Defendant's Summary Judgment Brief) the characterization of the size of the text as being small is not conceded and a jury should determine the size of said text and whether said text is small.

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42.

Denied because the percentage is higher than defendant has computed and reference in the record does not support defendant's contention.

43.

Denied because Missy Giove's face is partially exposed in the Page 58 photograph (Exhibit A-14, Page 5 and Exhibit A-9 of Defendant's Summary Judgment Brief).

44.

Denied because the Court's finding was made in the context of a likelihood of confusion analysis which is irrelevant in connection with a right of publicity claim. A jury should be allowed to draw its own inferences from the catalog.

45.

Denied because: the use of Missy Giove's name and likeness is of greater prominence than the other people in the catalog because of her stature as a celebrity (Patrick Hus Transcript, Page 106, Line 15 to Page 110, Line 24, Exhibit A-2 hereto); of the references to her continued association with Dirt Camp in 1999 on page 85 of the catalog; and the implication that she was still a member of the Volvo/Cannondale team in 1999. A jury should be allowed to draw its own inferences from the catalog.

46.

Denied because the Court's finding was made in the context of a likelihood of confusion analysis which is irrelevant in connection with a right of publicity claim. A jury should be allowed to draw its own inferences from the catalog.

47.

Denied because each reference to Missy Giove can be interpreted to mean that when the catalog was being distributed in 1999, she was still riding on the 1999 Volvo/Cannondale team and endorsing defendant's products, particularly the reference on page 85 of the catalog that shows Missy Giove wearing the Cannondale jersey and includes references to her being on the Volvo/Cannondale team and that she will be appearing at a Dirt Camp in 1999.

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(Exhibit A-9 of Defendant's Summary Judgment Brief). 48. Denied because each reference to Missy Giove can be interpreted to mean that she was riding on the 1999 Volvo/Cannondale team and/or endorsing defendant's products, particularly the reference on page 85 of the catalog that shows Missy Giove wearing the Cannondale jersey and includes reference to her being on the Volvo/Cannondale team and that she will be appearing at a Dirt Camp in 1999. (Exhibit A-9 of Defendant's Summary Judgment Brief). 49. 50. 51. Admitted. Admitted. Denied because reference to material in the record does not support the claimed fact. The question posed to Ben Giove related solely to whether he believed that Cannondale intended to cause confusion, not whether it was a result of any improper motive. Said assertion is also rebutted by the Giove Declaration, ¶ 6, Exhibit A-1 hereto and the fact that defendant continued distributing its catalog in 1999 after it acknowledged in a letter that it sent to its team sponsors informing them that as of December 31, 1998, defendant no longer had the right to use Missy Giove in advertising and promotion (Page 17, Line 18 to Line 23 of the Megan Callahan deposition transcript and the letter to which she is referring, Exhibits D and A respectively to the Declaration of Kenneth A. Feinswog filed on March 14, 2000 in opposition to defendant's first motion for summary judgment in Civil Action No. 99-N-571). 52. Denied because the Court's finding was made in the context of a likelihood of confusion analysis which is irrelevant in connection with a right of publicity claim. A jury should be allowed to draw its own inferences from Cannondale's

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failure to take any action to cease the distribution of its catalog in 1999 and that defendant did not redo its catalog because it was not cost effective to do so. (Hus Declaration, ¶ 18, Exhibit A-16 of Defendant's Summary Judgment Brief). Also denied because defendant continued distributing its catalog in 1999 after it defendant acknowledged in a letter that it sent to its team sponsors informing them that as of December 31, 1998, defendant no longer had the right to use Missy Giove in advertising and promotion (Page 17, Line 18 to Line 23 of the Megan Callahan deposition transcript and the letter to which she is referring, Exhibits D and A respectively to the Declaration of Kenneth A. Feinswog filed on March 14, 2000 in opposition to defendant's first motion for summary judgment in Civil Action No. 99-N-571). 53. Denied because reference to material in the record (Hus declaration, ¶¶ 12 and 13) does not support the claimed fact. The fact that defendant, pursuant to its agreement with Mountain, paid between $810,000 to $1,160,000 for the rights to use said athletes' names and likenesses exhibits that, at a very minimum, there is a disputed issue of fact as to the truthfulness of defendant's assertion that it does not place any reliance on athlete's endorsements, (See paragraphs 1A and 1B of defendant's agreement with Mountain, Exhibit A-6 to Defendant's Summary Judgment Brief). Defendant's assertions are rebutted by admissions made by defendant that one of the reasons why Missy Giove was on the team was because she was a celebrity and her status enhanced the potential sale of products. (See, inter alia, Page 106, Line 15 to Page 110, Line 24 of Patrick Hus Transcript, Exhibit A-2 hereto).

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54.

Denied. The fact that defendant, pursuant to its agreement with Mountain, paid between $810,000 to $1,160,000 for the rights to use said athletes' names and likenesses exhibits that, at a very minimum, there is a disputed issue of fact as to the truthfulness of defendant's assertion that it does not place any reliance on athlete's endorsements, (See paragraphs 1A and 1B of defendant's agreement with Mountain, Exhibit A-6 to Defendant's Summary Judgment Brief). Defendant's assertions are rebutted by admissions made by defendant that one of the reasons why Missy Giove was on the team was because she was a celebrity and her status enhanced the potential sale of products. (See, inter alia, Page 106, Line 15 to Page 110, Line 24 of Patrick Hus Transcript, Exhibit A-2 hereto).

55.

Denied. The fact that defendant, pursuant to its agreement with Sports, paid between $810,000 to $1,160,000 for the rights to use said athletes' names and likenesses exhibits that, at a very minimum, there is a disputed issue of fact as to the truthfulness of defendant's assertion that it does not place any reliance on athlete's endorsements, (See paragraphs 1A and 1B of the agreement with Sports, Exhibit A-7 to Defendant's Summary Judgment Brief). Also denied because reference to material in the record (Bedell declaration) does not support the claimed fact. Said survey exhibits nothing regarding how bicycles are marketed. Defendant's assertions are rebutted by admissions made by defendant that one of the reasons why Missy Giove was on the team was because she was a celebrity and her status enhanced the potential sale of products. (See, inter alia, Page 106, Line 15 to Page 110, Line 24 of Patrick Hus Transcript).

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56. 57. 58. 59. 60. 61.

Admitted. Admitted. Admitted. Admitted. Admitted. Denied because a jury certainly can infer from its own examination of the photographs that defendant's catalog was used for promotional purposes because it was used to promote the sale of defendants' goods. Also denied because admissions made by defendant that one of the reasons why Missy Giove was on the team was because she was a celebrity and her status enhanced the potential sale of products. (See, inter alia, Page 106, Line 15 to Page 110, Line 24 of Patrick Hus Transcript).

62.

Denied because the agreement speaks for itself and sets forth the complete understanding of the parties in connection with the meaning of said agreement. (Exhibit A-7 to Defendant's Summary Judgment Brief).

63.

Denied because the agreement speaks for itself and sets forth the complete understanding of the parties in connection with the meaning of said agreement. (Exhibit A-7 to Defendant's Summary Judgment Brief).

64.

Denied because the agreement speaks for itself and sets forth the complete understanding of the parties in connection with the meaning of said agreement. (Exhibit A-7 to Defendant's Summary Judgment Brief).

65. 66.

Admitted. Admitted.

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67.

Denied because in plaintiff's First Amended Complaint, plaintiff made an allegation regarding Sports inducing defendant's infringement not that said contract "allowed" or "authorized" defendant to infringe. (First Amended Complaint filed on August 16, 1999, Dkt. No. 43).

68.

Denied because plaintiff was merely making an argument in its memorandum regarding the other defendants' inducing defendant's infringement. Plaintiff never made an express representation in connection with said issue.

69. 70.

Denied that said claims were dismissed on the merits. (Dkt. No. 75 and 76). Denied because plaintiff's settlement agreement with Sports is not in the record.

71.

Denied because Missy Giove had an unwanted continuing association with defendant, was made to look unprofessional, lost credibility, lost potential sponsorships and lost control of Missy Giove's image (Giove Declaration, ¶ 7, Exhibit A-1 hereto and Exhibit A-1 to Defendant's Summary Judgment Brief, Page 130, Line 15 to Page 132, Line 20).

72.

Denied because reference to material in the record does not support the claimed fact particularly because no questions were raised regarding the nebulous term "impact".

73.

Denied because reference to material in the record does not support the claimed fact particularly because no questions were raised regarding the nebulous term "impact".

74.

Admitted.

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75.

(a) Denied because reference to material in the record does not support the claimed fact and the alleged facts are rebutted by Giove Declaration, ¶ 7, Exhibit A-1 hereto. (b) Denied because Ben Giove only admitted that he could not measure the actual harm but did not concede that plaintiff was not harmed. (c) Denied because reference to material in the record does not support the claimed fact. Missy Giove did not testify as defendant asserts, that "she cannot say how Cannondale's catalog made her appear different from other professional athletes." (d) Admitted. (e) Denied because Ben Giove admitted that he could not measure the actual harm but did not concede that plaintiff was not harmed. (f) Denied because Ben Giove admitted that he could not measure the actual harm but did not concede that plaintiff was not harmed. (g) Admitted.

76.

Denied because reference to material in the record does not support the claimed fact.

77.

Denied because plaintiff has identified people who approached Missy Giove in connection with being confused as to her affiliation with defendant. (See pages 19-21 and 23-31 of the Missy Giove transcript, Exhibit L to the Declaration of Kenneth A. Feinswog declaration filed on March 14, 2000 in opposition to defendant's first summary judgment motion).

78.

Admitted.

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79.

Admitted that plaintiff has not hired an expert witness but denied with respect to plaintiff's ability to support its theory of damages because plaintiff is seeking the fair market value the defendant would have had to pay to obtain the right to use the Missy Giove name and likeness.

80.

Denied because reference to material in the record does not support the claimed fact. The allegations also are rebutted by statements made in paragraph 8 of the Declaration of Ben Giove, Exhibit A-1 hereto.

81.

Denied because reference to material in the record does not support the claimed fact. The allegations also are rebutted by statements made in paragraph 8 of the Declaration of Ben Giove, Exhibit A-1 hereto.

82.

Denied because reference to material in the record does not support the claimed fact. Any concession made by Ben Giove related only to his personal knowledge and was not a concession of plaintiff's position.

83.

Denied because reference to material in the record does not support the claimed fact. Any concession made by Ben Giove related only to his personal knowledge and was not a concession of plaintiff's position.

84.

Denied insofar as defendant profited from not redoing its catalog when its rights to use Missy Giove's likeness expired. (Hus Declaration, ¶ 18, Exhibit A16 to Defendant's Summary Judgment Brief).

85.

Denied because the questions posed to Ben Giove called for a legal conclusion and plaintiff's theory of damages is not an appropriate claimed fact. Also denied because the claimed fact does not fully set forth plaintiff's theory of damages. Plaintiff's theory of damages is set forth herein. (See also Exhibit J to the Declaration of Kenneth A. Feinswog in opposition to defendant's first

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summary judgment motion filed on March 14, 2000 which partially exhibits the basis for other claims for relief that plaintiff is seeking). 86. Denied that $480,000 was the agreed amount of compensation for 1998. (Exhibit A-7 to Defendant's Summary Judgment Brief). 87. Denied because reference to material in the record does not support the claimed fact. In addition, the questions posed called for legal conclusions. The legal argument regarding plaintiff's theory is addressed herein. 88. 89. Admitted. Denied because in 1999 said acts were not contractual duties because the contract terminated in 1998. 90. Denied because the word only is improperly used and because part is improperly emphasized. 91. Denied that it distributed most of its catalogs because approximately 115,000 copies of defendant's catalog were distributed in 1999. (Hus Declaration, Exhibit A-16, ¶ 10 to Defendant's Summary Judgment Brief). 92. Denied because plaintiff was compensated for the Missy Giove publicity rights by Foes/Azonic. (Giove Declaration, ¶ 9, Exhibit A-1 hereto). 93. 94. Admitted. Denied because there is no reference in Missy Giove's deposition transcript, Defendant's Exhibit A-2 to Defendant's Summary Judgment Brief, that serves as a foundation for admission of Exhibit A-13. 95. Denied because there is no reference in Missy Giove's deposition transcript, Defendant's Exhibit A-2 to Defendant's Summary Judgment Brief, that serves as a foundation for admission of Exhibit A-13. Also denied because of the

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characterization of the pictures in the Cannondale catalog as being small and obscured and with respect to the use of the word "prominently" and whether Missy Giove's face is fully exposed are argumentive and are not supported by any reference in the record. The photographs speak for themselves and a jury should be free to draw its own inferences therefrom. 96. Denied because there is no reference in Missy Giove's deposition transcript, Defendant's Exhibit A-2 to Defendant's Summary Judgment Brief, that serves as a foundation for admission of Exhibit A-13. Missy Giove also did not admit to the claimed fact because she never answered a question posed relating to the specific facts alleged. 97. Denied because there is no reference in Missy Giove's deposition transcript, Defendant's Exhibit A-2 to Defendant's Summary Judgment Brief that serves as a foundation for admission of Exhibit A-13. III. LEGAL ARGUMENT

A.

PLAINTIFF HAS ESTABLISHED THE REQUISITE ELEMENTS FOR A COMMON LAW RIGHT OF PUBICITY CLAIM

In its brief, defendant relies on Joe Dickerson v. Dittmar Assocs., 34 P.3d 995 (Colo. 2001) as establishing that damage and causation are essential elements of a right of publicity claim. In doing so defendant has critically neglected to mention that plaintiff is not required to show proof of injury in order to prevail on its right of publicity claim. It is well-settled law that there is no necessity to "prove" some actual commercial damage in order to establish liability and some damage is presumed when a party's name or likeness is used without his or her consent. See 1 J. Thomas McCarthy, The Rights the of Publicity and Privacy, § 3:2 (2d. ed. 2005).

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Plaintiff does not concede that it did not suffer any injury. Plaintiff has always contended that it was damaged by a continuing unwanted association with defendant. In Toney v. L'Oreal U.S.A, Inc., 406 F. 3d 905, 910 (7 Cir. 2005), the Seventh Circuit Court of Appeals recognized that the photographed party was harmed because she was stripped of her right to control the commercial value of her identity. The Court even recognized that the fact that the photographed party may have previously consented to the use of her photograph does not change the analysis because if the term of the agreement authorizing said use expired, she lost the right to control the continued use of her identity. In the present case, it is undisputed that defendant only had the right to use the Missy Giove likeness in 1988. It is also undisputed that in 1999 defendant distributed 115,000 copies of its 1999 catalogue. (Hus Declaration ¶ 10, Exhibit A-16 to Defendant's Summary Judgment Brief.) Therefore, Missy Giove's unwanted continuing association with defendant is sufficient to satisfy any damage requirement. At most, plaintiff was not able to quantify said injury. It is well recognized that a plaintiff does not have to quantify its injury in order to prevail on liability. Plaintiff merely has to prove that Missy Giove's name and likeness were used without her consent.
2 th

Once a plaintiff proves

validity and infringement, some damage flows as a matter of course. At that point the issue becomes one of quantity and measuring the amount of that damage. 1 J. Thomas McCarthy, The Rights of Publicity and Privacy, § 3:5, page 115. Therefore, plaintiff does not have to prove the amount to which it is entitled in order to prevail on liability.

Plaintiff also does not have to prove that defendant received a specific benefit because if a defendant appropriates a party's name and likeness for its own commercial advantage, it necessarily derives a benefit from its use. Henley v. Dillard Department Stores, 46 F. Supp. 2d 587, 596 (N.D.Tex 1999). 1 J. Thomas McCarthy, The Rights of Publicity and Privacy, § 3:2, page 112 and § 47 of the Restatement (Third) of Unfair Competition (1995).

2

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Defendant has also ignored the numerous cases and treatises that recognize that in common law right of publicity cases, a party can receive the fair market value of the use of the identity used. Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9 Cir. 1992), cert. denied 113 S.Ct. 1047, 122 L.Ed.2d 355 (1993); Frazier v. South Florida Cruises, 19 U.S.P.Q. 2d 1470 (E.D.Pa., 1991), punitive damages reversed 20 U.S.P.Q. 2d 1951 (3 Cir. 1991) and that plaintiff should be given the benefit of the doubt in determining the amount that should be awarded in order to prevent unjust enrichment and to insure deterrence. 2 J. Thomas McCarthy, The Rights of Publicity and Privacy, § 11:32, page 680-688 and Comment (d) of § 49 of the Restatement (Third) of Unfair Competition (1995). Plaintiff is seeking a fair market value of $500,000. Defendant received the right to use Missy Giove's name and likeness in 1997 and 1998 because plaintiff contracted to be paid an average of $500,000 a year for said rights. The only way that defendant could have legally obtained said rights for 1999 would have been if plaintiff was paid the same amount of money. An expert opinion is not required because when a party makes a use beyond the scope of a license, the amount that previously had been paid for the use is generally considered in computing fair market value. See Welch v. Mr. Christmas, 57 N.Y. 2d 143, 454 N.Y.S. 2d 971, 974 (N.Y. 1982) and 2 J. Thomas McCarthy, The Rights of Publicity and Privacy, § 11:32, page 688. In Paragraph 11 of the declaration that he submitted in support of defendant's summary judgment motion (Exhibit A-15 to Defendant's Summary Judgment Brief), Thomas Schuler conceded that plaintiff was demanding at least as much money as it was supposed to have been paid in the previous years, an average of $500,000, to re-sign with the Volvo/Cannondale team. Therefore, the only way that defendant could have legally obtained the rights to use Missy
rd th

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Giove's name and likeness in its 1999 catalog in 1999 would have been if said amount was paid to plaintiff.
3

The Ninth Circuit Court of Appeals in Waits, supra, the same court that set out the same elements for a right of publicity claim in White v. Samsung Electronics Associates, 971 F.2d 1395, 1397 (9 Cir. 1992) that the Colorado Supreme Court set out in Dickerson, including causation and injury, upheld a fair market value award in a right of publicity case. It would be illogical for a court to award fair market value as a right of publicity remedy if the damage and causation elements were not presumed and/or an unwanted association with the party using the names and/or likenesses, did not satisfy any damage requirement, particularly in cases involving a celebrity. Fair market value by its very definition is determined not by a specific commercial damage but by what a party would had to have paid to obtain authorization for the use of the name and/or likeness. If a party were required to prove specific damage in order to receive a fair market value award, it would virtually destroy the viability of many right of publicity claims for celebrities. If a celebrity could not obtain fair market value without proving a specific monetary loss, most advertisers could use celebrities' names and likenesses with impunity. If defendant's argument was accepted, that specific commercial damage must be proven, such as a loss of an endorsement agreement, and/or that an unwanted association was not sufficient to satisfy any damage requirement, then Tom Waits should have been denied any fair market value recovery because Tom Waits did not lose any endorsement agreements because he did not authorize endorsement agreements. Waits, supra at page 1103. Even without proof of any lost agreements, Tom Waits was still granted a fair market award.
3 th

The Court accepted plaintiff's damages argument when it awarded $500,000 to plaintiff in connection with its motion for default judgment against Dirt Camp, Inc. Plaintiff filed said motion only because it was ordered to do so by the Court. Plaintiff has filed a motion to remand in Civil Action No. 00-N-2063 and a motion for determination of whether diversity exists in Civil Action No. 99-N-971 because plaintiff believes that the Court does not have subject matter jurisdiction.

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Defendant has argued that it should not be liable for a $500,000 fair market value award because Missy Giove might have been paid less than $500,000 for sponsorship in the 1999 season. The fact that Missy Giove might have been paid less money by another sponsor is irrelevant because the standard must be what a defendant, not a third party, would have been required to pay to obtain said use. Plaintiff would never have authorized defendant to use four pictures of Missy Giove in its catalog separate and apart from a larger sponsorship agreement. It was an "all or nothing" proposition. An agreement to use her photographs would have had to have been part of a sponsorship agreement in connection with Missy Giove being on the 1999 Volvo/Cannondale team. Defendant wants the Court to ignore that deterrence and unjust enrichment are critical factors in determining fair market value and that plaintiff is supposed to be given the benefit of the doubt in determining fair market value. 2 J. Thomas McCarthy, The Rights of Publicity and Privacy, § 11:32, page 688 and Comment (d) of § 49 of the Restatement (Third) of Unfair Competition (1995). As with other forms of unfair competition, the finder of fact has considerable discretion in fixing appropriate compensation. Comment (c) of § 49 of the Restatement (Third) of Unfair Competition (1995). A jury can easily draw an inference that the only relevant fair market value would be the amount that would have been paid in order for defendant to have received authorization to use Missy Giove's name and likeness. In September, 1998, defendant had an opportunity to have Missy Giove re-sign with its team. Defendant chose not to authorize payment of the $500,000 that would have been required to do so. (Schuler Declaration, ¶ 11, Exhibit A-15 to Defendant's Summary Judgment Brief). Defendant cannot now argue that it should pay less money because it only used her likeness but did not receive other alleged benefits that purportedly would have been part of a sponsorship agreement with plaintiff for the 1999 season.

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A party like defendant cannot commit infringement and then turn around and claim that because it stole less than the whole package of rights and benefits, it should not be liable for what the entire package would have cost had it acted lawfully. Allowing a party to "cherry pick" from an "all or nothing" offer and not exposing said party to liability for the only amount that would have given it the right to commit the infringing acts would not serve the deterrent purposes of the fair market value remedy. Defendant also implies that willful infringement is required in order for a plaintiff to obtain any monetary relief for a right of publicity claim. While the Restatement acknowledged that an accounting of profits may be inappropriate in the case of an innocent infringer, the Restatement also acknowledges that a defendant who unintentionally infringes another's rights of publicity is liable for compensatory damages. Restatement (Third) of Unfair Competition § 49 (1995). There is no case law whatsoever that applies a wrongful conduct standard in connection with a party obtaining any relief pursuant to a common law right of publicity claim, particularly in connection with a fair market value award.
4

None of the cases that have awarded a fair market value award, nor any of the treatises that address said issue, consider wrongful conduct in their analysis of a fair market value amount. The critical issue in fair market value cases is the amount that would have been paid had the infringer legally obtained the rights that were violated and that deterrence is a critical factor in determining the amount that should be awarded.

4

It also should be noted that defendant's bad faith is a disputed issue of fact. Any findings previously made by the Court in connection with bad faith are irrelevant because said findings were made in the context of whether likelihood of confusion existed. A jury certainly could infer that defendant's conduct was wrongful because defendant knew that it was supposed to stop using the Missy Giove name and likeness in advertising after 1998. Instead of respecting plaintiff's rights and redoing its catalog, defendant simply made a business decision that it would not be cost effective to redo its catalogs and chose to infringe plaintiff's rights by continuing to distribute the catalog that contained the Missy Giove name and likeness. (Hus Declaration, ¶ 18, Exhibit A-16 to

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Defendant also fails to mention that plaintiff is also seeking an award based on the amount of defendant's cost savings that resulted from not redoing its catalog in December, 1998. Defendant chose to begin selling its catalog in September, 1998. If it wanted to avoid violating plaintiff's rights, it should have redone its catalog before 1999 by deleting all uses of the Missy Giove name and likeness. It chose not to do so because it would have been too expensive to do so. See paragraph 18 of the Declaration of Patrick Hus submitted in support of defendant's motion for summary judgment. As a result, it saved money when it chose to violate plaintiff's rights instead of redoing its catalog. Plaintiff should be entitled to an award of said cost savings because defendants were unjustly enriched. The amount of said cost savings will be proven at trial.
5

B.

DEFENDANT'S USE OF MISSY GIOVE'S NAME AND LIKENESS IS NOT INCIDENTAL NOR IS IT PROTECTED BY THE FIRST AMENDMENT.

Defendant has argued that its use of the Missy Giove name and likeness is incidental and/or is protected by the First Amendment. In support of said argument, defendant cites several cases, almost all of which involved the use of a person's name and likeness in movies, books or publication, mediums that are given broad First Amendment protection. Defendant has

conveniently failed to mention that in determining liability with respect to right of publicity violations, the line between news and fiction on the one hand, and advertising, on the other hand, is critical. Most unpermitted uses of human identity in news and fiction (expressive work cases) will be constitutionally immune from right of publicity violations. But the unpermitted uses of
Defendant's Summary Judgment Brief). 5 Defendant previously contended that the Court's denial of plaintiff's preliminary injunction motion should somehow preclude plaintiff from obtaining monetary relief based on defendant's refusal to redo its catalog. The preliminary injunction motion dealt only with equitable relief and has no bearing on monetary relief that plaintiff should be able to receive. Since defendant has admitted that it chose to save money instead of respecting plaintiff's right, a jury can infer that defendant was unjustly enriched in the cost savings in not

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human identity in commercial sales and advertising will trigger infringement under the right of publicity. Constitutional protection for "commercial speech" is highly attenuated. See 2

J.Thomas McCarthy, The Rights of Publicity and Privacy, § 8:90, page 305. One of the few non-expressive work cases cited by defendant, D'Andrea v. RaflaDemetrious, 972 F.Supp. 154 (S.D.N.Y. 1997), involves a significantly different fact situation than the present case. Said case involved the use of a non-celebrity student in a brochure whose purpose was to provide information about a hospital's programs to prospective interns and residents. This case involves four uses of the name and/or likeness of a world famous mountain bike rider in a bicycle company's catalog that is used to sell bicycle products. There is nothing incidental about four separate uses of the name and/or likeness of one of the most famous bicycle riders in the world in a catalog used to sell bicycles. Defendant has even admitted that Missy Giove was part of its team because of her celebrity value and her status enhanced the potential sale of products. See, inter alia, pages 106-110 of the deposition transcript of Patrick Hus, Exhibit A-2 hereto. Hoepker v. Kruger, 200 F.Supp.2d 340, 351 (S.D.N.Y. 2002), a case upon which defendant also relies, is another expressive work case in which the Court recognized that the ancillary use (incidental use) exception gives news agencies, magazine publishers, etc., the ability to publicize their newsworthy activities without violating a person's right of publicity. The Court, in Hoepker, merely recognized that advertising that promoted an art exhibit was protected because the art exhibit was pure First Amendment speech. Defendant's reliance on Epic Metals Corporation v. Londec, Inc., 867 F.Supp. 1009 (M.D. Fla. 1994) is also misplaced because said case involved a person who was virtually

revising its catalog.

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unrecognizable. His name was not used and there was no identifiable connection between said person and the product that was being sold. The present case is easily distinguishable from Epic Metal because Missy Giove was a recognizable celebrity. Mountain bike fans could easily identify her in defendant's catalog wearing a Cannondale jersey with her name in captions next to her pictures. A bike fan could even conclude a continued association in 1999 between Cannondale and Missy Giove. At times, as was recognized in Namath v. Sports Illustrated, 48 A.D. 2d 487 (N.Y. App. Div. 1975), the incidental use defense is extended to advertising but only in connection with advertisements for publications or books which again are accorded significant protection pursuant to the First Amendment, not in connection with the advertisement of products like bicycles. Defendant's catalog is not an expressive work protected by the First Amendment. Despite defendant's disingenuous protestations, its catalog is advertising because it is intended to advertise defendant's products. No other conclusion can be made than that defendant was using Missy Giove's name and likeness in connection with advertising its products. Defendant has also argued that Missy Giove's name and likeness were not used to attract consumer's attention to its products and therefore, a right of publicity claim does not exist. In making said argument, defendant has attempted to import a confusion aspect to plaintiff's right of publicity claim when it is well recognized that confusion is not an element with respect to a right of publicity claim and/or proof that prospective purchasers are likely to believe that the identified person endorses or sponsors the user's goods is not required for the imposition of liability. Comment (a) of § 47 of the Restatement (Third) of Unfair Competition (1995). Even if an endorsement connection was required, Patrick Hus' admission, that Missy Giove was part of the Cannondale team because of her celebrity status and her status enhanced the potential sale of products, would clearly establish an endorsement connection and, at a very See

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minimum, the connection necessary to overcome an incidental use defense. Whether a use is considered incidental depends on the role that the use of the plaintiff's name or likeness plays in the main purpose and subject of the works at issue. Zoll v. Jordache Enterprises, 2003 LEXIS U.S.Dist. LEXIS 6991, *67 (S.D.N.Y. 2003). In the present case, the use of a bicycle superstar's name and likeness in a catalog that advertises bicycles cannot possibly be considered incidental, particularly in view of the fact that defendant had paid significant consideration for the use of Missy Giove's name and likeness in 1997 and 1998 and defendant even admitted that Missy Giove was part of its team because of her celebrity value and her status enhanced the potential sale of products. See, inter alia, pages 106-110 of the deposition transcript of Patrick Hus, Exhibit A-2 hereto. In Downing v. Abercrombie & Fitch, 265 F.3d 994 (9 Cir. 2001), the Ninth Circuit Court of Appeals addressed a fact situation virtually identical to the fact situation in this case in that it involved the use of parties' names and likenesses in a 250 page catalog. The Court rejected the defendant's First Amendment defense because the use of said names in a clothing catalog was a commercial use not protected by the First Amendment. The Court did not even consider an incidental use defense although the names and likenesses were used only once in a 250 page catalog and in conjunction with other surfers who were in the same picture. Said decision completely undercuts defendant's "Missy Giove was only a small part of the catalog" argument because the four separate uses of the Missy Giove name and/or likeness in a smaller than 250 page catalog is much more significant than the single use in Downing. Defendant's argument that its use of the Missy Giove name and likeness should be allowed because it is used in a historically accurate manner is without merit. In support of its argument, defendant cites Vinci v. American Can Co., 69 Ohio App. 3d 727, 591 N.E. 2d 793 (1990). Said case has been severely criticized by commentators including by J. Thomas McCarthy as being
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superficially reasoned and wrongly decided. See 2 J. Thomas McCarthy, The Rights of Publicity and Privacy, § 8:95, page 313. It also should be noted that said case is significantly different from the present case in that nothing of particular historical interest is included with respect to the Missy Giove name and likeness. Defendant also relies heavily on Gionfriddo v. Major League Baseball, 94 Cal.App.4 400, 114 Cal.Rptr.2d 307 (2001) even though Gionfriddo was an expressive work case and the Court recognized that the nature of the expression is the critical element in determining whether a First Amendment defense exists to a right of publicity claim. In Gionfriddo, Major League Baseball used performance statistics and verbal descriptions and video depictions of former Major League Baseball players' play. The Court, at page 413, relying on Abdul Jabbar v. General Motors Corp., 85 F.3d 407 (9 Cir. 1996), recognized the distinct difference between using information regarding a party in an advertisement as opposed to a news or sports account. The Court went on to note that Major League Baseball did not use the baseball players' identities in the context of an advertisement. Gionfriddo is easily distinguishable from the present case because the Missy Giove name and likeness was used in a catalog whose primary, if not sole, purpose was to advertise defendant's products and defendant's catalog was not an expressive work. Defendant also ignores that, as a matter of law, there is nothing historically accurate about the use of the Missy Giove name and likeness in its 1999 catalog. Said catalog is not written as a history book. It is a catalog used to sell Cannondale's products. It implies, if not explicitly mentions, on page 85, that Missy Giove was a member of the 1999 Volvo/Cannondale team and that she would be appearing at a Dirt Camp in 1999. Said statements were not historically accurate. In Toney, at page 910, the Seventh Circuit Court of Appeals recognized that whether a party previously consented to the use of a photograph did not change the analysis and by continuing to
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use a photograph after consent expired, the photographed party was stripped of her right to control the commercial value of the continuing use of her identity. The holding in Toney exhibits the absurdity of defendant's reliance on the fact that Missy Giove was once a member of the Volvo/Cannondale team as being the basis for its "historically accurate" argument. If defendant's argument was accepted, a golf club distributor could use Tiger Wood's name and likeness in its catalog after its agreement with him expired as long as said use was somewhat limited. If defendant's argument was accepted, it could even make limited use of the Missy Giove likeness in its current catalog. If defendant's argument was accepted, there virtually would be no more right of publicity. Defendant's argument is not really an incidental use argument but instead a "one of many" argument. It is based on the assertion that Missy Giove only appears four times in its catalog along with other people and is only a small part of the catalog. Said argument has so little merit that it was not even considered in Downing where there was significantly less use of the infringed parties' likenesses than in this case. If said agreement was accepted, then defendant could use the likenesses of numerous bike riders with whom it does not have agreements and as long as it placed those parties in its catalog only four times and as long as there was "accurate historical" reference made in said advertisements, then defendant would violate no one's right of publicity. If Defendant's argument was accepted, any sporting goods company could include 200 different pictures of 200 different athletes in its catalog and as long as said athletes were "accurately depicted", then each athlete, because he or she was only one of 200 other athletes, could not contest this "one of many" argument and each athlete would not have a right of publicity claim. Each of the aforesaid fact situations exhibit how absurd defendant's argument really is.

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This same argument propounded by defendant was rejected in Shamsky v. Garan, Inc., 632 N.Y.S. 2d 930, 937 (Sup. Ct. N.Y. 1995), where summary judgment was awarded to plaintiffs/baseball players because their names and likenesses were used in connection with a jersey imprinted with a photo of them as members of the 1969 New York Mets World Series championship team. In said case, the court found that whether historical information was included on the product was irrelevant because the defendant was merely attempting to cash in on the baseball players' skill and renown on the baseball diamond. The Court in Shamsky rejected the same "one of many" defense propounded by defendant and granted summary judgment for each plaintiff despite the fact that each likeness was merely one of thirty likenesses that had been used. Defendant's "one of many" defense should likewise be rejected. C. PLAINTIFF NEVER CONSENTED TO THE USE OF THE MISSY GIOVE NAME AND LIKENESS IN 1999

Defendant contends that plaintiff has not met its burden in showing that no consent existed with respect to the use of the Missy Giove name and likeness in 1999. In making said statement, defendant ignored that plaintiff met its burden by the statements made in the Declaration of Missy Giove submitted in support of plaintiff's motion for summary judgment (Docket No. 194 in Civil Action No. 99-N-571) and the agreement annexed thereto that exhibits that all rights to use the Missy Giove name and likeness terminated in 1998. It is undisputed that defendant's rights during 1998 stem from the contract that plaintiff entered into with Mountain. Paragraph 17 of said agreement provided that the agreement should be interpreted in accordance with Wisconsin law. The courts in Wisconsin are consistent in holding that if the language of the contract is unambiguous, it must be enforced as written. Keller v. Keller, 214 Wis. 2d 32, 37; 571 N.W. 2d 82, 84 (Ct. App. Wis, 1997); Wilke v. Wilke,

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212 Wis. 2d 271, 273 and 274; 569 N.W. 2d 296, 297 (Ct. App. Wis. 1997); Erickson v. Gundersen, 183 Wis. 2d 106, 117; 515 N.W. 2d 293, 299 (Ct. App. Wis. 1994); Shen v. Dominion Industries, Inc., 951 F. 2d 806, 815 (7 Cir. 1992) recognizing that in Wisconsin, parol evidence is not admissible to vary the terms of a complete and unambiguous contract. The agreement with Mountain is complete and unambiguous. Paragraph 1 of the agreement unambiguously states that the term ends on December 31, 1998. The length of time when a sponsor, such as defendant, could use the Missy Giove name and likeness is also unambiguous. In the following three different instances in Paragraph 9 of said agreement, the use of the Missy Giove name and likeness is limited to the term: "In that regard, Team Sports' sponsors shall have the right to use photographs of RIDER and RIDER's name or likeness in print or any media during the term"; "AMAZON shall cause RIDER to provide the services and any other promotional activity in connection with mountain bike racing exclusively for Team Sports and its sponsors so long as this agreement is in effect"; and "Sponsor's use of RIDER's individual name, person, picture and sporting accomplishments shall be limited to the term that AMAZON is contracted to provide service with Team Sports". [Emphasis added]. The agreement could not be any clearer that defendant was not authorized to use the Missy Giove name and likeness beyond December 31, 1998. As a result, defendant's arguments regarding its continued use of the Missy Giove name and likeness are irrelevant. The agreement with Mountain is unequivocal that the rights to use the Missy Giove name and likeness were granted only for use during the term of the agreement. Defendant's rights came from no other source than plaintiff's grant of rights to Mountain. Therefore, because plaintiff did not grant any rights to Mountain beyond the term of the agreement, then defendant could not have any rights to
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use plaintiff's name and likeness in 1999. Even if defendant believed that it was granted greater rights, (there is no evidence that it was granted said rights), it would not serve as a defense to plaintiff's claim. Defendant cannot change the terms of Mountain's agreement with Missy Giove because it decided to put out its catalog in September of the previous year when it may not have known who was going to be on its team for the following year. If it made a mistake in doing so, it should have taken action to rectify said mistake. The use of the Missy Giove name and likeness in 1999 is no different than any other case where a party uses a name or likeness after consent has expired. Defendant also argues that plaintiff's settlement with Mountain serves to release plaintiff's claim against defendant. In making said argument, defendant ignores that plaintiff's claim against it is a tort claim. Plaintiff's dismissal and release of the other defendants in this action for possibly inducing defendant's infringement does not release defendant because it is well-settled Colorado law that a release of one joint tortfeasor does not release another joint tortfeasor. C.R.S. 13-50.5 101 et seq. (2005). Defendant also argues that because plaintiff's contract claim against Mountain was dismissed with prejudice, then plaintiff cannot now sustain its burden of proof regarding defendant's lack of consent to use Missy Giove's name and likeness. Said argument is so weak that the section of the treatise that defendant cites, 18 James Wm. Moore, et al., Moore's Federal Practice, § 132.03[2] (3d ed. 2005) actually supports plaintiff's position. Issue preclusion is generally inappropriate when the prior judgment was a consent judgment without any hearing or determination of the merits by the court itself. Issue preclusion does not apply when the issues sought to be precluded in a subsequent proceeding were allegedly determined in a stipulation or a judgment by consent. Issues that were only addressed in the trial court's

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adoption of a consent agreement and were not contested or litigated may be litigated in a subsequent action. Moore's Federal Practice, § 132.03[2] [i]. A consent judgment cannot be given issue preclusion unless the party pleading issue preclusion proves that the parties intended that the consent judgment was intended to operate as a final adjudication of a particular issue. Moore's Federal Practice, § 132.03[2] [ii]. In the present case, the Court merely entered an order dismissing claims against Mountain after Mountain and plaintiff had settled. The issue of consent was not litigated and defendant has not met its burden that the parties intended to resolve the contested issue on the merits.

IV.

CONCLUSION

In view of the foregoing, it is respectfully requested that the Court deny defendant's motion for summary judgment.

Dated: September 22, 2005 Los Angeles, CA

Respectfully submitted,

s/Kenneth A. Feinswog Kenneth A. Feinswog Attorney for Plaintiff 6100 Center Drive, Suite 630 Los Angeles, CA 90045 (310) 846-5800

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APPENDIX ­ SUMMARY OF EXHIBITS

Exhibit A-1 - Benedict Giove Declaration Exhibit A-2 ­ Patrick Hus Transcript Exhibit A-3 ­ Declaration of Kenneth A. Feinswog

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I hereby certify that on September 22, 2005, I presented the foregoing along with the exhibits attached thereto to the Clerk of the court for filing and uploading to the CM/ECF system which will send notification of such filing to the following e-mail addresses: [email protected] [email protected]

Respectfully submitted,

s/Kenneth A. Feinswog KENNETH A. FEINSWOG Law Offices of Kenneth A. Feinswog Attorney for Plaintiff Amazon, Inc. 6100 Center Drive, Suite 630 Los Angeles, CA 90045 Telephone: (310) 846-5800 FAX: (310) 846-5801 E-mail: [email protected]

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