Free Brief in Support of Motion - District Court of Colorado - Colorado

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UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO Case Nos. 99-cv-571-EWN-PAC and 00-cv-2063- EWN-PAC AMAZON, INC., Plaintiff and Counterclaim-defendant, v. CANNONDALE CORP., Defendant and Counterclaim-plaintiff.

_____________________________________________________________________________ CANNONDALE'S MEMORANDUM OF LAW IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT _____________________________________________________________________________ Cannondale Corporation ("Cannondale") respectfully submits the following

memorandum in support of its motion for summary judgment dismissing Case No. 99-N-571 and Case No. 00-N-2063. I. PRELIMINARY STATEMENT The Court's July 19, 2000 decision granting partial summary judgment established the absence of any genuine issues of material fact as to Amazon Inc.'s federal unfair competition claim under the Lanham Act. Amazon's remaining unfair competition claim under Colorado common law is in all respects identical to the Lanham Act claim already dismissed. For the same reasons the federal claim was dismissed, the state claim likewise should now be rejected.

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Joe Dickerson & Assoc., Inc. v. Dittmar, 34 P.3d 995, 1002 (Colo. 2001), and Donchez v. Coors Brewing Co., 392 F.3d 1211, 1220 (10th Cir. 2004), decided by the Colorado Supreme Court and the Tenth Circuit after this Court granted partial summary judgment, clarify that essential elements of a right of publicity claim are actual damage and causation. The facts already established in the Court's July 19, 2000 decision granting summary judgment confirm Amazon can demonstrate neither damage nor, of course, causation of damage from Cannondale's de minimis use of Ms. Giove's name or image in its 1999 catalog. Instead, Amazon has in the past merely argued theories for measuring damages (assuming some harm could be proven), without first establishing injury in fact or causation. Moreover, Amazon's right of publicity claim should be dismissed with prejudice under principles of de minimis use, fair use, and because Amazon's claim is barred by its own consent. Amazon's guaranty claim should be dismissed with prejudice since the underlying contract claim against Team Sports Mountain, Inc. ("TSMI") that formed the basis of any claimed liability under the guaranty was dismissed with prejudice by settlement. Amazon admits that this claim is moot. (Dkt. No. 761 ; Ex. A-5). II. FACTUAL BACKGROUND A. Procedural Background - The Amended Complaint

The Complaint originally filed in this action on March 22, 1999 (against Cannondale alone) had three claims: alleged trademark infringement under the Lanham Act (Count One), a Colorado common law unfair competition claim paralleling the federal claim (Count Two) and a common law right of publicity claim (Count Three). All three claims arose from Cannondale's

1 Unless otherwise indicated, the docket entries are from Case No. 99-N-571.

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creation and distribution, principally in 1998, of a catalog describing and showing its bicycles and other related products (Ex. A -9). The catalog included background pictures of numerous riders of the Volvo/Cannondale racing team and other teams sponsored by Cannondale, including three pictures of one rider, Melissa "Missy" Giove, taken when she was a member of the team. Amazon is the licensing agent for Ms. Giove and assignee of any publicity rights she may have in her name and image. On June 17, 1999, the Court denied Amazon's motion for a preliminary injunction, finding Amazon had shown neither a likelihood of success on the merits nor that a balancing of the equities weighed in its favor (Dkt. No.32). On August 16, 1999, with leave of Court, Amazon filed and served an Amended Complaint, which, inter alia, added as parties Team Sports, Inc. and Team Sports Mountain, Inc. (collectively "TSMI"), the companies that owned and managed the Volvo/Cannondale racing team. Amazon had licensed use of Ms. Giove's publicity rights to TSMI (Ex. A -7), and TSMI had in turn licensed Cannondale and numerous other sponsors of the team to use such rights (Ex. A-6). In denying Amazon's motion for a preliminary injunction, the Court found that Amazon had consented to Cannondale's disputed use (Dkt. No. 32, at p. 132 l. 24 - 133 l. 7). Amazon's First Amended Complaint (Dkt. No. 43) thus added claims against TSMI (Count 10) for breach of contract in authorizing Cannondale's use of Ms. Giove's name and image (Amended Complaint, ¶¶ 68, 72, 76, 80). The First Amended Complaint also added a claim against Cannondale concerning payments Cannondale allegedly guaranteed for TSMI (Count 12). The First Amended Complaint also added as a party Dirt Camp, Inc., which defaulted. (Dkt. Nos. 69 and 168; No. 63 in 00-N-2063.)

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On January 10, 2000, the Court entered a settlement agreement between Amazon and TSMI, dismissing with prejudice Amazon's claims against TSMI including the claim that TSMI breached its contract by authorizing Cannondale to use Ms. Giove's publicity rights, and the contract claim underlying the guaranty claim against Cannondale. (Dkt. No. 76.) On July 19, 2000, the Court granted in part Cannondale's motion for summary judgment, dismissing with prejudice Amazon's Lanham Act claim (Count One) on grounds that Amazon had not shown evidence of likelihood of confusion from Cannondale's de minimis use of Ms. Giove's image in its 1999 catalog. The Court dismissed without prejudice the remaining claims against Cannondale; the state law claims for unfair competition (Count Two), misappropriation of publicity rights (Count Three), and guaranty of TSMI's financing terms (Count Twelve), for lack of jurisdiction under 28 U.S.C. 1367(c)(3). (Ex A-14.) After threat by Amazon to

commence a new action in state court, Cannondale, on September 18, 2000, filed its notice of appeal to determine subject matter jurisdiction. (Dkt. No. 113.) However, Amazon did not appeal the grant of summary judgment finding no likelihood of confusion. Amazon simply filed its second action (in state court), which Cannondale removed to this Court. The Tenth Circuit ultimately vacated and remanded the Court's determination it lacked jurisdiction (Dkt. No. 131). However, Cannondale then filed for bankruptcy, and pending motions for summary judgment and challenging the Court's jurisdiction were denied without prejudice. (Dkt. No. 165; No. 60 in 00-N-2063) Nonetheless, on Amazon's motion to enter default judgment against Dirt Camp, the Court did entertain jurisdiction and did enter judgment. (Dkt. No. 168; No. 63 in 00-N-2063)

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B.

Cannondale's 1999 Catalog

Beginning in 1994, Cannondale and the car manufacturer Volvo, a non-party to this dispute, co-sponsored a mountain bike team owned and operated by co-defendant TSMI. (Ex. A-14, p. 2). Ms. Giove was a member of the Volvo/Cannondale team from 1994 through the end of the 1998 season. In November 1996, Amazon and TSMI entered into a contract whereby Amazon agreed to provide Ms. Giove's services a a racer from January 1, 1997, through s December 31, 1998 (Ex. A-7). As "part of the consideration of [TSMI]", Amazon licensed to TSMI and all of its sponsors, including Cannondale, the right to use Ms. Giove's name, image, persona and accomplishments for "promotional purposes." The TSMI/Amazon contract further specified that a "[sponsor's use of [Ms. Giove's] individual name, person, picture[,] and sporting accomplishments shall be limited to the term that A[mazon] is contracted to provide service with [TSMI]." (Ex. A-14, p. 3; Ex A-7 ¶ 9). TSMI in turn had a contract with Cannondale (Ex. A-6), which set forth Cannondale's required capital contribution to the team; specified the team equipment Cannondale had to provide; the team's duty to use such equipment; and the team's duty to provide publicity opportunities to the sponsors. (Schuler Decl. ¶5). TSMI's 1998 contract with Cannondale provided that Cannondale had "the right to advertise and promote its affiliation with the team" and to "use the team and team members photos in advertising and promotional materials." (Ex. A-6, ¶ 2(B)). The contract made no mention of the limit to the term of TSMI's contract with Amazon. In granting, in part, Cannondale's motion for summary judgment, the Court noted the undisputed circumstances under which Cannondale's catalog was prepared. (Ex. A -14, p. 4).

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Specifically, the professional mountain bike racing season begins in March each year and ends after the completion of the World Championships in late September. Bicyc le manufacturers begin promoting their bicycles and components for the upcoming calendar year in September at national and international trade shows. Cannondale's yearly catalog of its products available for sale in the following year is first distributed at the trade shows that begin in early September. (Id.) In August 1998, Cannondale printed 275,400 copies of its 1999 catalog, which it began distributing on September 11, 1998, at a Las Vegas, Nevada trade show. (Id.) At the time the catalog was printed and distributed, Ms. Giove was still a member of the Volvo/Cannondale team. (Ex. A-14, p. 5). In granting in part Cannondale's motion for summary judgment, the Court repeatedly noted the "sparing," "minuscule" or "minute" nature of Cannondale's use of Ms. Giove's image in its 1999 catalog (Ex. A-14, pp. 18, 26, 28): Ms. Giove's name and/or likeness appears on four pages in the 96page catalog. The first use is a 1 ½ by 2 inch photograph in the lower-right corner of page four depicting Ms. Giove wearing Volvo/Cannondale team racing gear and bearing the caption: "[two-time defending Women's World Cup Downhill Champion Missy Giove of the Volvo/Cannondale mountain bike racing team." No portion of Ms. Giove's face -- except, perhaps, the tip of her nose --is visible. The second use of Ms. Giove's name appears in the upper-right corner of page five as the caption of a picture of a mud-covered bike. The caption reads: `[t]he sophisticated Super V DHF downhill bike powered Missy `The Missile' Giove to her second consecutive overall title in the Grundig/UCI World Cup Downhill Series." The second use does not include a photograph of Ms. Giove and the text takes up a 3 by ¼ inch portion of the page. The third use is a 3½ by 4½ - inch photo depicting an airborne Ms. Giove wearing Volvo/Cannondale team racing gear and bearing the caption: "Missy `The Missile' Giove lets it fly at the Big Bear, California, round of the 1998 World Cup Downhill Series. When

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the weekend was over, Missy and her Volvo/Cannondale teammates held the World Cup leaders' jerseys in men's downhill, women's downhill, men's cross country, and women's cross country." Only a small portion of Ms. Giove's face--essentially her nose--is visible. The fourth use appears on page eighty-five of the 1999 catalog and is part of an advertisement for "Dirt Camp" an instructional mountain biking camp which Defendant Dirt Camp, Inc. operates. This page includes text which reads: "Dirt Camp brings together the very best that the sport of mountain biking has to offer. Depending on the Camp you choose, you may find yourself ripping up the single track with Missy Giove and Tinker Juarez of the Volvo/Cannondale racing team...." There is an unlabeled 4½ by 3¼ - inch photograph of Ms. Giove wearing a Volvo/Cannondale team jersey, sunglasses, and a helmet. In the fourth use, Ms. Giove is wearing a helmet and sunglasses, but her face is otherwise exposed. In all, the three photographs of Ms. Giove comprise less than one-half percent of the total surface area of the catalog. (Ex. A-14, p. 5-6). (Internal citations omitted) The Court characterized Cannondale's use as "extremely minor when considered in the context of the whole catalog (which) substantially reduces the likelihood that a consumer would even notice Ms. Giove's presence much less be confused by it." (Ex.A-14, p. 28). The Court further found that when the catalog was prepared and distributed, Cannondale was authorized to use Ms. Giove's image (Ex. A-14, p. 18): While Cannondale intentionally used Ms. Giove's name and likeness in the 1999 catalog, it is undisputed that (1) Cannondale was authorized to use her name and likeness at the time that the 1999 catalog was prepared, (2) Cannondale did not know that Ms. Giove's affiliation with the Volvo/Cannondale team would end in 1998, (3) other than refusing to redo the 1999 catalog to remove Ms. Giove's image, Cannondale has ceased using Ms. Giove's name and likeness in other media, and (4) Cannondale, at Ms. Giove's request informed the Volvo/Cannondale team's subsponsors to cease using Ms. Giove's name and likeness as of December 31, 1998. (Ex. A-14, p. 18).

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In earlier denying Amazon's motion for a preliminary injunction, the Court also noted that Amazon, by contract with TSMI, had consented to Cannondale's photographs in the 1999 Cannondale catalog: Generally, according to the Restatement of Unfair Competition, consent precludes the imposition of liability for the use of another's identity if the use occurs prior to the termination of the consent. All of the use in this case, that is the distribution, the composition of the catalogs and the distribution of the catalogs, occurred prior to the termination of the consent. The consent didn't end until December 31, 1998. So I think that's fatal to the claim relating to the common- law right of publicity. (Dkt No. 32, p. 132, line 24 ­ p. 133, line 7) 2 After denial of the preliminary injunction motion, Amazon amended its Complaint to allege TSMI had breached its contract with Amazon by authorizing Cannondale to use Ms. Giove's name and image in a manner purportedly not permitted by the Amazon/TSMI contract. However, Amazon settled that claim with prejudice without any admission of liability by TSMI. (Dkt. No. 76.) C. Amazon Failed to Prove Harm To Itself From the Catalog use of Ms. Giove's

The Court previously commented on the absence of evidence of injury to Amazon resulting either from the placement of Ms. Giove's image in the 1999 catalog or the distribution of the catalog beginning in 1998 until early 1999. (Ex. A-14, p. 6). The only damage Amazon claimed it suffered was Ms. Giove's alleged unwanted continuing association with Cannondale; being made to look "unprofessional"; losing "credibility"; losing potential sponsors and losing

The Court further held: "As I have found and concluded, in 1998, and as Ms. Giove acknowledged, there would be nothing wrong with Cannondale pursuant to its contract and pursuant to the Amazon contract in printing these brochures and in using Ms. Giove's image in the way in which Cannondale used her image. The catalog was prepared legally, and it was distributed legally." (Dkt. No. 32, p. 122, l. 24 ­ 123, l. 5).
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control over Ms. Giove's name and image. 3 (Ex. A-1, p. 131 l. 3 - 132 l. 20; Ex. A-14, p. 6). Amazon adduced no evidence to prove any of these speculative injuries and, after more than six years, has identified no actual injury whatsoever caused by the 1999 catalog. (Ex. A-1, p. 134 l. 14 - 138 l. 7). Although Amazon claimed injury from confusion, it submitted no evidence to support this claim (Ex. A-14, p. 20-21) and conducted no survey to attempt to measure in a controlled way the likely impact of the Cannondale catalog. (Id.). The Court, in dismissing Amazon's Lanham Act claim, found no likelihood of confusion. Amazon retained no expert witness to try to quantify or otherwise elucidate any claimed injury. 4 Rather, its theory of damages was that it should be paid $500,000 by Cannondale for use of Ms. Giove's image in its 1999 catalog simply because that, more or less, was what she was compensated by TSMI in 1998. (Ex. A-1, p. 152 l. 6 - 154 l. 25). Amazon identified no evidence that Ms. Giove herself has ever earned royalties from any similar uses of her name or image or that there exists a market for such uses. Amazon identified no factual basis for using a professional services contract negotiated and signed with TSMI in 1996 (id.) as a measure of what Ms. Giove should have been compensated by Cannondale for publicity in 1999 ­ either generally or for specific value, if any, of obscured photographs comprising less than one half of one percent of a 96-page catalog that was not, at any rate, used to attract publicity. (Ex. A-1, p. 159 l. 12 - 161 l. 8). Amazon conceded that Ms. Giove's 1998 compensation was for many things, including, of course, racing for the Volvo/Cannondale team, and that there is no way to

Mr. Giove identified the same categories of injury at the June 17, 1999 hearing on Amazon's motion for a preliminary injunction. (Dkt. No. 32, p. 12.) 4 Amazon identified no one with such expertise by the deadline set forth in the Court's Scheduling Order, and pretrial papers. (Dkt. Nos. 74, 143, 182; No. 76 in 00-N-2063)
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apportion any compensation she might be due from Cannondale alone (as one of TSMI's thirty sponsors), much less for the continued use in 1999 of a previous publication principally distributed in 1998 (and for which she does not object). (Id.) Amazon was compensated in full in 1998, when Cannondale created, published and distributed the majority of its 1999 catalogs. Amazon was not able to distinguish the effects, if any, of the remaining catalogs distributed in 1999 from the majority distributed in 1998. In 1999, the period for which Amazon seeks compensation, Amazon had a contract with a new bicycle sponsor, and Ms. Giove rode for a new team. (Ex. A-14, p. 3). Her 1999 team,

Foes/Azonic, paid her zero for publicity rights, her only compensation being contingent amounts for racing victories. (Ex. A p. 33 l.8 - 34 l. 2; Ex. A -1, -8). None of the numerous potential sponsors Amazon approached, including the bicycle companies GT, Trek and Specialized, and the car manufacturer Jaguar (Ex. A-1, p. 100 l. 8- 101 l. 24), offered Amazon more than Foes/Azonic for 1999 (Ex. A-1, p. 103 l. 20 - 104 l. 6). Amazon put forth no formula to apportion an appropriate part of its full 1998 compensation for the "extremely minor" use of her image in the catalog. (Ex. A-14, p. 28). D. Amazon Failed to Prove Any Benefit to Cannondale from the Catalog

Amazon admits it can identify no impact Ms. Giove's name or pictures in the catalog might have had on Cannondale's customers (Ex. A-1, p. 165 l. 11- 166 l. 13), and can identify no profits Cannondale realized from use of her name or image in the catalog (Ex. A-1, p. 168 l. 1216).5 Ben Giove, the only person responsible for managing Amazon's business (id., pp. 4 l.21 ­

The Court also noted that Cannondale places little if any reliance on celebrity endorsements in marketing its products. (Ex. A-14, p. 23). Rather, Cannondale's marketing relies on the technical sophistication of its bicycles and its reputation as one of the top manufacturers (if not the top manufacturer) of high-performance bicycles. (Hus Decl. ¶ 13). Cannondale's catalog explicitly sets forth Cannondale's philosophy of working with professional
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5 l. 24; 32 l. 12 - 33 l. 4) and the person acknowledged by Amazon to have principal knowledge of Amazon's claimed injury (Id., p. 129 l.16- 30 l.4), admitted he could not assess the impact of any given picture in the catalog (Id., p. 165 l. 11- 166 l. 13). He testified: Q. Do you have any way of knowing whether the pictures of Missy Giove in the catalog would have any impact on Cannondale's customers? Again, I have no way of knowing. (Id., p. 166 l. 10-13)

A.

Amazon concedes that, given Ms. Giove's five-year association with the Volvo/Cannondale team, it cannot prove that, but for the catalog, public impressions would have been any different. (Id., p. 134 l. 11 ­ 138 l. 7) Q. But again given your testimony earlier that no one would have thought she was no longer on the team, you can't say that, but for the catalog, people's impressions would have been any different? I couldn't ans wer that. Is there any way to measure or quantify the actual impact of the catalog in continuing to foster the belief among people that she was still on the team? Is there a way that I can? Yes. Just by the pure volume of how many catalogs were printed and dealt out to customers. I would have no way of measuring it, no. Myself, no. Can you think of any way to measure the actual impact of the catalog influenced reactions among the public?

A. Q.

A. Q. A.

Q.

athletes such as Ms. Giove as part of its research and development efforts, not for celebrity endorsements (Ex. A-9, p. 3). Consumer surveys at the relevant time show that celebrity endorsements have little, if any, effect on bicycle marketing. (Ex. A -14, p. 23). Although consumers are greatly influenced by recommendations of personal acquaintances (24.3 %) and sales people (19.5 %), only 1.7% of consumers say they are influenced by celebrity endorsements. (Id.). In any event, Cannondale's catalogs are not distributed directly to consumers, but only to retailers. (Id., p. 4).

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A. E.

Personally I couldn't tell you. It is not my line of expertise. (Id., p. 137, line 11 ­ p. 138, line 7)

Cannondale's Statement of Undisputed Material Facts 1. Attached Deposition Testimony and Interrogatory Answers

1.

Attached hereto as Exhibit A-1 are true copies of portions of the transcript of the

deposition of Benedict ("Ben") Giove. 2. Attached hereto as Exhibit A-2 are true copies of portions of the transcript of the

deposition of Melissa ("Missy") Giove. 3. Attached hereto as Exhibit A-3 are true copies of Amazon's answers to

Cannondale's Interrogatories 7, 19 and 20-22. 4. Attached hereto as Exhibit A-4 is a true copy of a November 1, 1999 letter from

counsel for Amazon supplementing Amazon's response to Cannondale's Interrogatories 5, 6, 16, 17 and 21. 5. Attached hereto as Exhibit A-5 is a true copy of a January 14, 2000 letter from

counsel for Amazon supplementing Amazon's response to Cannondale's Interrogatory No. 24. 6. Attached hereto as Exhibit A -14 is a true copy of the Court's July 19, 2000

decision granting summary judgment dismissing Amazon' s claim against Cannondale for unfair competition under the Lanham Act (Dkt. No. 107). 7. Amazon did not seek reconsideration of or appeal from the Court's July 19, 2002

decision or the amended final judgment entered pursuant thereto.

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2. 8.

Amazon's Relationship With The Volvo/Cannondale Mountain Bike Team

Beginning 1994, Cannondale and the car manufacturer, Volvo, co-sponsored a

mountain bike team known as the Volvo/Cannondale mountain bike team (Hus Decl. ¶ 4; Schuler Decl. ¶ 2; Ex. A-14 p. 2). 9. The Volvo /Cannondale team was owned and operated by the independent third

party, defendant Team Sports Mountain Inc. ("TSMI") (Schuler Decl. ¶ 2; Ex. A-14 p. 2-3). 10. Cannondale's relationship with TSMI was governed by contract, a true copy of

which is attached hereto as Exhibit 6. (Hus Decl. ¶ 5; Schuler Decl. ¶ 5). 11. Cannondale's 1998 contract with TSMI provided that Cannondale had "the right

to advertise and promote its affiliation with the team" and to "use the team and team members photos in advertising and promotional materials" (Schuler Decl. ¶ 5; Hus Decl. ¶ 5; Ex. A-6, ¶ 2B). 12. Melissa Giove rode for the Volvo/Cannondale mountain bike team from its

formation in 1994 through the end of the 1998 season (Hus Decl. ¶ A-6; Ex. A-14 p. 3). 13. During the course of Ms. Giove's and Amazon's relationship with the

Volvo/Cannondale team, Cannondale never had a direct contractual relationship Ms. Giove; rather, Ms. Giove's company, plaintiff Amazon, contracted on her behalf with TSMI. (Ex. A-1 at 92 l. 8-25; Hus Decl. ¶ 6). 14. A true copy of Amazon's contract with TSMI for 1997 and 1998 is attached

hereto as Exhibit A-7 (Schuler Decl. ¶ 7; Ex. A-14 p. 3). 15. Amazon's Vice President and sole operating officer, Ben Giove, had numerous

discussions with TSMI in 1998 regarding a possible renewal of Amazon's contract with TSMI

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for the 1999 racing season, as many as two or three conversations or messages a week up to and during the period May to August or September 1998 (Ex. A-4, Int. No. 5; Ex. A-1 at 98 l. 4-21; Schuler Decl. ¶ 10 ; Ex. A-14 p. 3). 16. TSMI declined to discuss a renewal with Amazon until the period September 20-

22, 1998, when TSMI advised Mr. Giove that rather than make an unacceptably low contract offer, it would not offer Amazon or Ms. Giove any new contract for 1999 (Ex. A-1 98 l. 4-21; Schuler Decl. ¶ 11 ; Ex. A-14 p. 3). 17. For 1999, Amazon reached agreement with another mountain biking team, Foes

Fabrications, Inc. and Jim O'Neal Distributing, Inc. (hereinafter "Foes/Azonic" team), for whom Ms. Giove competed in 1999 (Ex. A-1 at 33 l. 8 ­ 34 l. 24; Ex. A-14 p. 3). 18. A true copy of Amazon's contract with the Foes/Azonic team is attached hereto as

Exhibit A-8 (Ex. A-1 33 l. 8-13). 19. Amazon is unable to identify any potential sponsors it lost or that were affected in

any way because of Cannondale's 1999 catalog. (Ex. A-1 at 147 l. 14 ­ 148 l. 19; Ex. A-2 at 53 l. 4-21; Ex. A-14 p. 6). 3. 20. Cannondale's 1999 Catalog and the 1999 Racing Season

The professional mountain bike racing season begins each year in about March

and ends after the completion of the World Championships in late September (Hus Decl. ¶ 6; Ex. A-14 p. 4). 21. In early September, bicycle manufacturers begin promoting their bicycles and

components for the next calendar year at national and international trade shows (Hus Decl. ¶ 7; Ex. A-14 p. 4).

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22.

Cannondale, like many major bicycle companies, prints a yearly catalog of its

products, which it first distributes at the trade shows beginning in early September, to identify its new products available for sale for the following year. (Hus Decl. ¶ 7; Ex. A-14 p. 4). 23. Decl. ¶ 8). 24. To permit distribution of its catalog at the fall trade shows, Cannondale created its A true copy of Cannondale's 1999 catalog is attached hereto as Exhibit A-9 (Hus

1999 catalog in June and July 1998 (Hus. Decl. ¶ 9; Ex. A-14 p. 4). 25. At the time the catalog was printed and distributed, Ms. Giove was a member of

the Volvo/Cannondale team. (Hus Decl. ¶ 14; Ex. A-14 p. 5). 26. Cannondale was authorized to use Ms. Giove's name and likeness at the time the

1999 catalog was prepared. (Exs. A-6, A-7; Ex. A-14 at 18). 27. At the time the 1999 catalog was prepared, Cannondale did not know that Ms.

Giove's affiliation with the Volvo/Cannondale team would end in 1998 (Hus Decl. ¶¶ 12, 14; Ex. A-14 at 17-18). 28. In 1998, the first bicycle trade show began on September 11, 1998, in Las Vegas,

Nevada, which is when Cannondale began distribution of its 1999 catalog. (Hus Decl. ¶ 11 ;Ex. A-14 at 4). 29. As of September 11, 1998, Missy Giove was still a member of the

Volvo/Cannondale mountain bike team and no decision had been made not to re-sign her. (Hus Decl. ¶ 14). 30. During the fall trade shows, catalogs are distributed to dealers to permit them to

order produc ts for retail sale during the following year (Hus Decl. ¶¶ 8, 9).

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31.

Bicycle product catalogs are also used to assist retail customers at the point of

purchase in bicycle stores in identifying a manufacturers' full product line to facilitate a selection of desired products (Hus Decl. ¶ 9). 32. Cannondale's catalogs are not sent directly to consumers to advertise or promote

or otherwise create interest in Cannondale's products; rather, they are given to dealers and made available at dealers' stores to provide complete product information to consumers who already are interested in Cannondale's products and who already have chosen to visit a retail store (Hus Decl. ¶ 9; Ex. A-14 p. 4). 33. In August 1998, Cannondale printed 275,400 copies of its 1999 catalog, which it

began distributing on September 11, 1998, at a Las Vegas, Nevada trade show (Hus Decl. ¶ 10; Ex. A-14 p. 4). 34. Of the 275,400 copies of Cannondale's 1999 catalogs, 20,400 were for use in

Japan (Hus Decl. ¶ 10; Ex. A-14 p. 4). 35. More than half of Cannondale's 1999 catalogs were distributed before the end of

1998, at trade shows, to distributors and to dealers. (Hus Decl. ¶ 10). 36. 37. After June 17, 1999, Cannondale distributed only 740 catalogs. (Hus Decl. ¶ 10). At the time Cannondale's 1999 catalog was created and used, the average

wholesale selling price of Cannondale's bicycles was $800, making Cannondale one of the most expensive bicycle products. (Hus Decl. ¶ 3). 38. Amazon has not identified any expert or other witnesses with any meaningful

knowledge of how catalogs are used in selling bicycles, and admits it does not know the extent to

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which Cannondale's customers or Ms. Giove's fans relied on the catalog (Ex. A-1 at 119 l. 4120 l. 8, 166 l. 6-13). 39. Because of the timing of the early fall trade shows, and because professional

bicyclists often do not sign with the racing teams until after the September world championship races, when their rankings and relative bargaining power is established, manufacturers such as Cannondale who sponsor teams and who prepare catalogs for first distribution at these trade shows often do not know who among the then-current team members will remain on the team when the next season begins. (Hus Decl. ¶ 12; Schuler Decl. ¶ 10). 40. It is common in the industry that manufacturers' catalogs include photographs of

team members who turn out not to be on the teams during the full distribution period of the catalogs. (Ex. A-2 at 31 l. 9 ­ 32 l. 10; Hus. Decl. ¶ 12; Schuler Decl. ¶ 12). 41. Cannondale included in its 1999 catalog pictures of its then-current 1998 team. In

the 96- page 1999 catalog, Ms. Giove's photograph appeared in three places: in a 1 ½" x 2" picture on the lower right of page 4; in a 3 ½" x 4 ½" picture on page 58, and in a 4 ½" x 3 1/4" photo on page 85. Ms. Giove's name was mentioned in a fourth place: in small text on page 5 of the catalog accompanying a photograph of the bottom bracket and chain of a bicycle. (Ex. A9; Ex. A-14 at p. 5-6). 42. The three photographs of Ms. Giove comprised 33.38 square inches or .37%

(.0037) of the overall surface area of Cannondale's 96 page catalog (Ex. A-9; Ex. A-14 at p. 5-6, 26).

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43.

In only one of the pictures (on page 85) was any part of Ms. Giove's face

exposed; a helmet, goggles and her uniform completely covered her face and person in the other two pictures (Ex. A-9; Ex. A-14 at p. 5-6). 44. Ms. Giove's presence in Cannondale's 1999 catalog was "minute when

considered as a percentage of the total surface area of the catalog" (Ex. A-14 at p. 26). 45. More than two hundred individuals other than Ms. Giove were also depicted in

the 1999 Cannondale catalog (Hus Decl. ¶ 9) - with equal or greater prominence than was she including professional athletes and anonymous individuals riding or using Cannondale equipment (Ex. A-9). 46. Cannondale's use of Ms. Giove's name and image was "extremely minor when

considered in the context of the whole catalog, which ... substantially reduces the likelihood that a consumer would even notice Ms. Giove's presence much less be confused by it" (Ex. A-9; Ex. A-14 at 28). 47. Cannondale's 1999 catalog did not state that Ms. Giove or any other athlete

shown would be riding for the team in 1999 (Ex. A-9). 48. Cannondale's 1999 catalog did not state that Ms. Giove or any other person

depicted endorsed Cannondale products (Ex. A-9). 49. Cannondale has never made commercial sales of the bicycle Ms. Giove rode for

the Volvo/Cannondale team (Hus Decl. ¶ 14; Kane Decl. ¶ 4). 50. Cannondale, at Ms. Giove's request, informed the Volvo/Cannondale team's co-

sponsors to cease using Ms. Giove's name and likeness as of December 31, 1998 (Ex. A-14 p. 18).

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51.

Amazon concedes that Cannondale's use of Ms. Giove's name and image in its

1999 catalog was not the result of any improper motive (Ex. A-1 at 161 l. 24 ­ 162 l. 21). 52. The circumstances under which Ms. Giove's name and image were used in

Cannondale's 1999 catalog, including the sparing use of her name and image, negate any inference of bad faith on Cannondale's part (Ex. A-14 p. 16, 18). 53. Cannondale places little if any reliance on athletes' endorsements in marketing its

products; to the contrary, Cannondale relies on the technical sophistication of its bicycles and its reputation as one of the top manufacturers (if not the top manufacturer) of high-performance bicycles (Hus Decl. ¶¶ 12,13; Kane Decl. ¶ 5). 54. Cannondale's 1999 catalog explicitly set forth Cannondale's philosophy of

working with professional athletes as part of its research and development efforts, not for celebrity endorsements (Ex. A-9 at p. 3). 55. Consumer surveys at the time Cannondale published its 1999 catalog show that

celebrity endorsements have little, if any, effect on bicycle marketing; although consumers are greatly influenced by recommendations of personal acquaintances (24.3 %) and sales people (19.5 %), only 1.7% of consumers say they are influenced by celebrity endorsements (Bedell Decl. Exs. A-10, A-11; Ex. A-14 at 23). 56. Other than declining to redo the 1999 catalog to remove Ms. Giove's image,

Cannondale has ceased using Ms. Giove's name and likeness in other media or future catalogs. (Hus. Decl. ¶ 19; Montgomery Decl. ¶ 2; Ex. A-14 at 18; Kane Decl. ¶ 3). 57. On September 12, 1999, Cannondale began distribution of its 2000 catalog, in

which Ms. Giove was nowhere mentioned or depicted (Hus Decl. ¶ 19).

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58.

Distribution of Cannondale's year 2000 catalog began at fall trade shows that

commenced on September 12, 1999 (Hus Decl. ¶ 19). 59. Cannondale has not used its 1999 catalog since mid-1999 (Hus Decl. ¶ 19;

Montgomery Decl. Decl. ¶ 2; Kane Decl. ¶ 3). 4. 60. Amazon's Contract Claims Against TSMI

Paragraph 9 of Amazon's contract with TSMI authorized certain uses of Ms.

Giove's name and image for "promotional purposes." (Ex. A-7, ¶ 9). 61. It was TSMI's understanding that the photographs in Cannondale's catalog did

not rise to the level of being for "promotional purposes" within the meaning of paragraph 9 of TSMI's contract with Amazon (Schuler Decl. ¶¶ 13, 14). 62. It was TSMI's understanding that, because of the custom in the industry for

bicycle manufacturers to include team members in their catalogs even if they do not remain on the team for the full distribution cycle of a catalog, nothing in its contract with Amazon was meant to depart from suc h customary usage or to limit Cannondale's ability as a sponsor to include Ms. Giove's name or image in its 1999 catalog in the manner it did (Id. ¶ 14). 63. It was TSMI's understanding that Cannondale's foreseeable and customary

continued distribution (in 1999) of catalogs prepared and published in 1998 was not a new "use" of Ms. Giove's name or image within the meaning of the contract (Id. ¶ 14). 64. To the extent Amazon's contract with TSMI is interpreted to limit use of Ms.

Giove's image in Cannondale's 1999 catalog, TSMI did not believe Cannondale's 1999 catalog exceeded such limits in a material way (Id. ¶ 14).

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65.

Amazon alleges in its Amended Complaint that: (i) Amazon's contract with TSMI

permitted TSMI and its "Sponsors" to use Ms. Giove's name and likeness only until December 31, 1998; and (ii) contrary to the terms of this contract with Amazon, Cannondale continued to use its 1999 catalog after January 1, 1999 (Amended Complaint, Dkt. No. 43, ¶¶ 13 and 14). 66. Amazon further alleges that TSMI acted in concert with Cannondale or

contributed to its alleged infringement (Amended Complaint ¶¶ 68, 72, 76) and that it breached its agreement with Amazon by impermissibly "allowing Cannondale ... to use" Ms. Giove's name and image (Id. ¶ 80). 67. Amazon's Amended Complaint adopts Cannondale's position that TSMI's

separate contract with Cannondale "allowed" or authorized Cannondale to use the pictures (improperly, according to Amazon; properly according to Cannondale), hence making TSMI contributorily liable for Cannondale's accused conduct (Id.). 68. In opposing TSMI's motion to dismiss the Amended Complaint for lack of

jurisdiction, Amazon expressly represented to the Court that "Defendants Mountain, Sports and Schuler took part in said infringement [by Cannondale] by inducing Cannondale's conduct." (Ex. A-12 hereto at p. 10) (emphasis added). 69. On January 10, 2000, pursuant to a settlement between Amazon and TSMI, the

Court dismissed on the merits Amazon's contract claims and contributory infringement claims against TSMI (Dkt. Nos. 75 and 76). 70. Amazon's settlement with TSMI contains no admission of liability by TSMI and

does not purport to establish Amazon's contention that TSMI exceeded the scope of its authority

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under the 1998 contract in authorizing or inducing Cannondale's use of Ms. Giove's name and image in its 1999 catalog (Id.). 5. 71. Amazon's Claimed Injury

Amazon is unable to identify any actual injury it sustained from Cannondale's

1999 catalog (Ex. A-1 at 129 l. 13 ­ 130 l. 2, 134 l. 14- 138 l. 7, 145 l. 11- 148 l. 24). 72. Amazon is not able to assess the impact any given picture in the catalog may have

had (Ex. A-1 at 165 l. 11 ­ 166 l. 13). 73. Amazon does not know whether the pictures of Ms. Giove in the catalog would

have had any impact on Cannondale's customers (Ex. A-1 at 166 1.10-13; Ex. A-14 p. 6). 74. Amazon alleges it was injured in five ways by the Cannondale catalog: by

unwanted continuing association with Cannondale; by being made to look "unprofessional"; by losing "credibility"; by losing potential sponsors, and by losing control over Ms. Giove's name and image. (Ex. A-1 at 130 l. 15 ­ 132 l. 20; 6/17 Hearing Tr. at 12). 75. alleges: a) Amazon is unable to define the term "unprofessional;" rather, it uses the term simply to express personal disapproval (Ex. A-1 at 143 l. 15 ­ 144 l. 10). b) Amazon concedes it cannot measure any actual harm from the alleged unprofessionalism of appearing in the 1999 Cannondale catalog (Ex. A-1 at 145 l. 25 ­ 146 l. 18). Amazon is unable to prove any actual harm for any of the five types of injury it

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c)

Amazon concedes that professional riders are regularly depicted in team catalogs after they are no longer on the team (Ex. A-2 at 31 l. 14 ­ 32 l. 10), and thus cannot say how Cannondale's catalog made Ms. Giove appear different from other professional athletes.

d)

Amazon uses the term "loss of credibility" to mean "confusion" (Ex. A-1 at 145 l. 16-24).

e)

Amazon concedes that it cannot measure any actual harm from the alleged loss of credibility (Ex. A-1 at 146 l. 19-22).

f)

Amazon concedes that it can identify no harm from the alleged loss of control (Ex. A-1 at 147 l 5-13).

g)

Amazon concedes it can identify no actual sponsors lost or otherwise affected by the Cannondale catalog. (Ex. A-1 at 147 l. 14 ­ 148 l. 19; Ex. A-14 p. 6).

76.

Amazon concedes it is unaware of the extent to which Cannondale's customers or

Ms. Giove's fans relied on the catalog to determine who was on the Volvo/Cannondale team. (Ex. A-1 at 119 l. 4 ­ 120 l. 8). 77. Amazon can identify no specific individuals who were confused by Cannondale's

catalog (Ex. A-3, Int. No. 23). 78. Amazon conducted no survey to attempt to measure in a controlled way the likely

impact of the Cannondale catalog (Ex. A-14 p. 6-7).

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79.

Amazon has retained no expert witness competent to quantify or otherwise

elucidate whatever injury it may claim or in any way support or explain its chosen theory or measure of damages. (Dkt. Nos. 74, 143, 182; No. 76 in 00-N-2063.) 80. Amazon concedes that, given Ms. Giove's five-year association with the

Volvo/Cannondale team, it cannot prove that, but for the catalog, public impressions of her would have been any different. (Ex. A-1 at 134 l. 14 ­ 138 l. 7). 81. Amazon concedes that it is unable to measure or quantify the actual impact of the

catalog in continuing to foster the belief among people that Ms. Giove continued to be on the Volvo/Cannondale team in 1999. (Ex. A-1 at 137 1.11 to 138 1.7) 82. Amazon is unable to measure any possible benefit to Cannondale from including

Ms. Giove's name or image in the 1999 catalog. (Ex. A-1 at 165 l. 11 ­ 166 l. 5). 83. Amazon admits it can identify no impact Ms. Giove's name or pictures in the

catalog might have had on Cannondale's customers (Id.). 84. Amazon admits it can identify no profits Cannondale realized from use of Ms.

Giove's name or image in its 1999 catalog. (Id. at 168 l. 12-16). 85. Amazon's theory of damages is that it should be paid $500,000 for use of Ms.

Giove's image in Cannondale's 1999 catalog simply because that is approximately what she was compensated by TSMI in 1998. (Ex. A-1 at 152 l. 6-24). 86. The actual amount of Ms. Giove's 1998 compensation was $480,000 (Ex. A-7 ¶

2; Ex. 11, Int. Nos. 20-22; Ex. A-1 at 151 l. 4-6). 87. Amazon is unable to identify any basis for using a bicycle racing contract

negotiated and signed in 1996 (Ex. A at p. 6) as a measure of what Ms. Giove should have -7

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been compensated for Cannondale's use of three small pictures of her in its 1999 catalog (Ex. A1 at 153 l. 4 ­ 161 l. 8). 88. Ms. Giove's duties under Amazon's agreement with TSMI for the 1997 and 1998

seasons included riding exclusively for the team (Ex A ¶ 1); using the sponsors' equipment -7, (Id. ¶ 6); training with the team (Id. ¶ 1); abiding a code of conduct (Id. ¶ 11), and providing publicity opportunities for the team's sponsors (Id. ¶ 8). The contract also limited certain types of activities in which Ms. Giove could engage (Id. ¶ 2(b)). 89. In 1999, the year in which she claims she was injured, Ms. Giove did not perform

any of the contractual duties specified in paragraph 88 above. 90. TSMI's agreement with Amazon provided only that "AMAZON and Rider

recognize that part of the consideration of Team Sports used to obtain sponsors is the use of RIDER for promotional purposes" (emphasis added) (Ex. A-7, ¶ 9). Amazon concedes it is unable to apportion the amount of Ms. Giove's total compensation that was paid by TSMI for use of her name and image by Cannondale for actual publicity purposes. (Ex. A-1 at 86 l. 10-22; 159 l. 12 ­ 161 l. 8). 91. Amazon concedes that it does not claim damages for anything Cannondale did in

1998, when Cannondale created, published and distributed most of its 1999 catalogs (Ex. A -1 158 l. 25 ­ 159 l. 11). 92. In 1999, the period for which Amazon seeks compensation, her contract with her

new bicycle sponsor, Foes/Azonic, paid her zero for publicity rights; her only compensation being contingent amounts for racing successes (Ex. A-8; Ex. A-1 at 33 l. 8 ­ 34 l. 2).

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93.

Despite contacting numerous potential sponsors, including the bicycle companies

GT, Trek and Specialized, and the car manufacturer Jaguar (Ex. A at 100 l. 8 ­ 102 l. 24), -1 Amazon received no higher offers for 1999 than the amount agreed with Foes/Azonic. (Id. at 103 l. 20 ­ 104 l. 6). 94. One of Ms. Giove's 1999 sponsors, AXO Cycling America, incorporated in its

1999 catalog a photograph of her with the Volvo/Cannondale name prominently affixed to her jersey (Ex. A-13 at p. 4). 95. Unlike the three small pictures of Ms. Giove in Cannondale's 1999 catalog, in

which Ms. Giove's face is partly or completed obscured, Ms. Giove's picture in the AXO catalog occupied a full page; the Volvo/Cannondale name is prominently shown on her jersey, and her face is fully exposed (Ex. A-13). 96. Ms. Giove admits she cannot identify any ways in which the AXO catalog was

likely to cause financial harm; to cause unwanted association with Cannondale or to cause any other type of injury (Ex. A-2 at 83 l. 8 ­ 85 l. 24). 97. Ms. Giove never complained about the AXO catalog (Id. at 85 l. 13-19).

III. ARGUMENT A. Summary Judgment Is Proper

Summary judgment is appropriate where "there is no genuine issue as to any material fact and .. the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). A factual dispute is "genuine" only if a reasonable jury could return a verdict for the non- moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Nor is it disfavored to resolve

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right of publicity actions, see, e.g., Donchez v. Coors Brewing Co., 392 F.3d at 1221; Gionfriddo v. Major League Baseball, 114 Cal. Rptr. 2d 307 (Cal. Ct. App. 2001); or unfair competition cases. See Universal Money Ctrs., Inc. v. AT&T Co., 22 F.3d 1527, 1529 (10th Cir), cert. denied, 513 U.S. 1052 (1994); Lang v. Ret. Living Publ'g Co., 949 F.2d 576, 580 (2d Cir. 1991). Discovery has confirmed the absence of any genuine issues of material fact and thus the appropriateness of summary judgment. B. Summary Judgment Dismissing Amazon's Lanham Act Claim Requires Dismissal Of Its State Law Unfair Competition Claim

Amazon's state law unfair competition claim (Count 2) directly parallels its previouslydismissed Lanham Act claim for unfair competition (Count 1). Both counts allege that

Cannondale committed acts of unfair competition by its purported unauthorized use of "the Missy Giove name, trademark and likeness" (Amended Complaint, ¶ 27), and both allege that Cannondale's conduct was likely to cause confusion among consumers as to the sponsorship of Cannondale's products. (Id. ¶ 28). The facts said to support the two claims, such as they are, and the legal elements of the claims are all the same. Coherent, Inc. v. Coherent Techs., Inc., 736 F. Supp. 1055, 1068 (D. Colo. 1990), aff'd, 935 F.2d 1122 (10th Cir. 1991). See also Jordache Enters. v. Hogg Wyld, Ltd., 625 F. Supp. 48, 56 (D.N.M. 1985), aff'd, 828 F.2d 1482 (10th Cir. 1987). In granting summary judgment on the Lanham Act claim, the Court held: [T]he uncontroverted facts fail to establish Cannondale's intent in including Ms. Giove's name and likeness in the 1999 catalog to confuse customers as to Ms. Giove's sponsorship or endorsement of Cannondale products. In addition, the use of Ms. Giove's name and likeness is extremely minor when considered in the context of the whole catalog, which both bolsters my conclusion regarding Cannondale's intent and substantially reduces the likelihood that a consumer would even notice Ms. Giove's presence, much less be confused by it. Most importantly, the higher degree of care which

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Cannondale's customers exercise and the lack of evidence of actual confusion militate heavily against a finding that a likelihood of confusion exists. (Ex A-14, p. 27-28). The Court's ruling on the federal unfair competition claim under the Lanham Act applies equally to Amazon's common law unfair competition claim, and that decision is now law of the case on the dispositive issue of likelihood confusion. See, e.g., Sec. Investor Prot. Corp. v. Vigman, 74 F.3d 932, 936 (9th Cir. 1995) (issue decided on summary judgment found to be "law of the case"). Since the common law unfair competition claim is no different from the Lanham Act claim, dismissal with prejudice of the one requires dismissal with prejudice of the other. C. Amazon's Publicity Claim Should Be Dismissed With Prejudice 1. Amazon Is Unable to Prove Injury Or Causation

Joe Dickerson & Assocs. held that "the elements of an invasion of privacy by appropriation claim are: (1) the defendant used the plaintiff's name or likeness; (2) the use of the plaintiff's name or likeness was for the defendant's own benefit, commercially or otherwise; (3) the plaintiff suffered damages; and (4) the defendant caused the damages incurred." 34 P.3d at 1002. Donchez v. Coors Brewing Co., citing Joe Dickerson, likewise observed that assuming Colorado recognizes a right of publicity, proof of violation of the right requires non-consensual use to defendant's advantage and causing injury to plaintiff. 392 F.3d at 1220. Cannondale's limited use of Ms. Giove's image in its 1999 catalog is not in dispute. It is clear, moreover, that plaintiff suffered absolutely no damage from the limited use. A fortiori, no damage was caused by Cannondale. Equally uncontroverted, there is no evidence Cannondale benefited in any way, commercially or otherwise, from the modest use in issue.

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As unassailably established by the record and the Court's July 2000 decision, Amazon utterly failed to sustain its burden of proving either damage to itself or benefit to Cannondale from the fleeting and de minimis use of Ms. Giove's image. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Ms. Giove was deprived of no opportunities to enter other sponsorship relationships for 1999 and beyond, and her reputation with her fans was undisturbed. (Ex. A-1, p. 147 l.19 - 48 l. 10, 119 l.4 - 120 l. 8; Ex. A-2 p. 48 l. 1-7, 53 l. 4-21). Neither she nor Amazon suffered in the least from Cannondale's use of her picture in its catalog. Moreover, Amazon can not identify a penny of profit Cannondale made because of Ms. Giove's pictures in its catalog and can not identify any coherent way to distinguish the effects if any (on her or Cannondale) of the catalogs distributed in 1998 from those distributed in 1999. Rather than attempt to prove the existence of any damage, Amazon merely leaps to a monetary calculation having no relationship to any injury (caused by Cannondale or otherwise). Amazon's preferred measure of damages (assuming some harm first could be proven) is $500,000, which simply approximates its 1998 contract with TSMI (under which Ms. Giove was paid $480,000) (Ex. A-7, ¶ 2), as if Amazon could receive in 1999 all of the compensation for a 1998 personal services contract without providing any of the services. This calculus bears no rational relationship to any purported injury from the use of the three pictures in issue. There is no more reason (quite plainly less) to accept a 1998 contract (negotiated in 1996) as a measure of 1999 compensation than Ms. Giove's actual 1999 contract with her new team, Foes/Azonic, which paid zero for publicity (Ex. A-8). Nor is there any evidence Ms Giove - or indeed any athlete or public figure - has ever been paid so much as one cent for use of his or her name or image in any way similar to the manner in which Cannondale presented Ms. Giove in its 1999

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catalog.

Such speculative claimed injury does not support a claim for misappropriation of

publicity rights. Marks v. Elephant Walk, Inc., 548 N.Y.S. 2d 549, 552 (N.Y. App. Div. 1989) (summary judgment dismissing claim granted where "the potential rewards for using the plaintiff's name were too remote and speculative to sustain her claim.") The Restatement (Third) of Unfair Competition (1995)6 , also makes clear that "[m]onetary relief for an appropriation of the commercial value of a person's identity can consist of either compensatory damages measured by the loss to the plaintiff or restitutionary relief measured by the unjust gain to the defendant." Id. §49 cmt. a. The Restatement likewise specifies that "[a]n accounting of ... profits from an unauthorized use of the plaintiff's identity is most often justified as a means of deterring infringement and recapturing gains attributable to wrongful conduct," and hence may be "inappropriate in the case of an innocent infringer." Id. at §49 cmt. C (emphasis added). See generally Trovan, Ltd. v. Pfizer, Inc., No. CV-98-00094 LGB MCX, 2000 WL 709149 at * 13 (C.D. Cal. May 24, 2000) ("The purpose of compensatory damages in tort cases ... is to place the injured person as nearly as possible in the condition he would have occupied if the wrong had not occurred" (citations omitted)), app. dismissed, 23 Fed. App. 671 (9th Cir. 2001). An award of the defendant's profits (based on a theory of unjust enrichment) requires a showing of inequitable conduct, such as willful infringement. Restatement (Third) of Unfair Competition § 37(1)(a); Trovan, 2000 WL 709149, at * 24-25. The Court previously determined that Cannondale did not act in bad faith or with improper intent. (Ex. A-14, p. 16-19). Hence, there is no basis to award compensation or restitution, and Amazon is unable to prove the elements of a rights of publicity claim.
Joe Dickerson relied on the prior restatement provisions, which appeared as part of the Restatement (Second) of Torts.
6

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2.

Cannondale's De Minimis Use Is Not Actionable

Regardless what law is applied to Amazon's right of publicity claim, 7 de minimis or incidental use of a celebrity name or image (such as Cannondale's use of Mr. Giove's name and photographs) is permissible. In D'Andrea v. Rafla-Demetrious, 972 F. Supp. 154, 156-7

(S.D.N.Y. 1997), aff'd, 146 F.3d 63 (2d Cir. 1998), judgment as a matter of law was entered dismissing a claim for a hospital's incidental use of resident's photograph on one half page of a 16-page brochure promoting the hospital. The court explained that "[i]n order to establish

liability, plaintiff must demonstrate a `direct and substantial connection between the appearance of the plaintiff's name or likeness and the main purpose and subject of the work'." Id. at 157, quoting Preston v. Martin Bregman Prods., Inc., 765 F. Supp. 116, 120 (S.D.N.Y. 1991). The minimal use of his image was too attenuated to the promotional purpose of the brochure to warrant liability. 8 See Hoepker, 200 F. Supp. 2d at 350 n.15 (use of plaintiff's image in three pictures among hundreds in a catalog for an art exhibit likely "exempt under the `fleeting use' exception to the `right of privacy, which protects the writers and publishers of books and other materials from liability for "isolated," "fleeting" or " minimis" uses of a person's name or de image.'") Accord Epic Metals Corp. v. Condec, Inc., 867 F. Supp. 1009, 1016 (M.D. Fla. 1994) (summary judgment dismissing claim for use of counterclaimant's photo in catalog as background showing shipment of deck materials); Aligo v. Time-Life Books, Inc., 23 Media L.

The law of the forum state -- or Wisconsin, New York or Connecticut law -- could apply under a proper choice of law analysis. Amazon's underlying agreement with TSMI specified that Wisconsin law would apply. Amazon is domiciled in New York. Most of the catalogs were created and distributed from Connecticut, where Cannondale is domiciled. Amazon previously briefed the case on the assumption Colorado law would apply. However, plaintiff's failure to specify which law applies also presents grounds for dismissal for failure to state a claim. Hoepker v. Kruger, 200 F. Supp. 2d 340, 374-48 (S.D.N.Y. 2002). 8 As here, where plaintiff's true motive for suit is undoubtedly TSMI's and Cannondale's election not to retain Ms. Giove for the 1999 season, the court in D'Andrea noted that plaintiff's real grievance was the hospital's reporting of his numerous absences to the American Board of Radiology, 972 F.Supp. at 158.
7

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Rep. 1315 (N.D. Cal. 1994) (complaint dismissed where 29- minute infomercial showed plaintiff's image for four seconds). 9 The Court previously acknowledged the use of Ms. Giove's name and image was de minimis and inconsequential: I find it highly significant that Ms. Giove's presence in the catalog comprises less than one-half percent of the 1999 Catalog's total surface area." (Ex. A-14, p.18). * * * Ms. Giove's name and/or likeness appears on four of the 1999 catalog's ninety-six pages. The largest of the three pictures of Ms. Giove take up less than one-half percent of the total surface area of the 1999 catalog. Thus, Ms. Giove's presence in the 1999 catalog is minute when considered as a percentage of the total surface area of the catalog. (Id., p. 26). No trial is needed to look at the catalogue and see it for what it is. There being no dispute as to the de minimis nature of the use, summary judgment dismissing the publicity claim is warranted. Celotex Corp., 477 U.S. at 323.

See also Netzer v. Continuity Graphic Assocs., 963 F. Supp. 1308, 1326 (S.D.N.Y. 2002) ("'incidental use' of a person's name or photograph, even when it is unauthorized and fictionalized, falls outside the prohibition of the statute." (citations omitted)); Preston, 765 F. Supp. at 119 (brief use of plaintiff's image in opening sequence of a movie too limited to disrupt distribution of entire film); Groden v. Random House, Inc., 61 F.3d 1045, 1049-50 (2d Cir. 1995) (unauthorized use of defendant's photo in otherwise accurate advertising showing book's contents a permitted incidental use); Shaw v. Rizzoli Int'l Publ'ns, Inc., 51 U.S.P.Q. 2d 1097 (S.D.N.Y. 1999) (two photos in 300 page book not actionable); Brown v. Twentieth Century Fox Film Corp., 799 F. Supp. 166 (D.D.C. 1992) (short film clip of James Brown in feature length motion picture "The Co mmitments" so brief and immaterial as to preclude liability), aff'd, 15 F.3d 1159 (D.C. Cir. 1994).
9

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3.

Cannondale's Use Is A Fair Use and Not Actionable

The right of publicity is not an absolute monopoly; like all intellectual property rights, it is limited by other substantive law, including the First Amendment. Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959 (10th Cir. 1996) (right of publicity is circumscribed by merchant's First Amendment right to make incidental, truthful or parodic public statements about public figures). Accord Joe Dickerson, 34 P.3d at 1003. Even conceding Cannondale's catalog served some commercial purposes, it does not follow that the photographs of Ms. Giove were directly connected to the commercial aspect of the catalog. D'Andrea, 972 F. Supp at 157 ("In order to establish liability, plaintiff must demonstrate a `direct and substantial connection between the appearance of the plaintiff's name or likeness and the main purpose and subject of the work,'") quoting Preston, 765 F. Supp. at 120. Accord Aligo, 23 Media L. Rep. at 1315 ("No such connection exists in this case. There is no suggestion that Defendants used the photograph in an effort to convey Plaintiff's endorsement of the music anthology and, as discussed above, the promotional use of the photograph is insignificant.") See also Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm'n, 447 U.S. 557 (1980) (First Amendment right to engage in truthful commercial speech); Montana v. San Jose Mercury News, Inc., 40 Cal. Rptr. 2d 639, 642 (Cal. Ct. App. 1995) ("the right of publicity [does] not . . . outweigh the value of free expression. Any other conclusion would allow reports and commentaries . . . to be subject to censorship under the guise of preventing the dissipation of the publicity value of a person's identity" (internal quotes and citations omitted)). Montana further explained that "a matter in the public interest is not restricted to current events but may extend to the reproduction of past events." Id. at 793, 40 Cal. Rptr. 2d at 640.

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In Gionfriddo, the court granted summary judgment where the names and images of retired Major League Baseball ("MLB") players were used in game-day programs, videos and on the MLB web-site. Distinguishing such use from use in advertisements or directly on products, the court found that because the game itself was MLB's product, MLB was entitled to show the product to entice people to buy it. 114 Cal. Rptr. 2d at 316-18. Just so, here, truthful depictions of actual use of Cannondale's bicycles is not a basis for complaint. And although the players names and images in Gionfriddo were used to promote the game, the programs were not mere commercial speech, which "does no more than propose a commercial transaction." Id. at 316 (quoting Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60, 66 (1983). If speech is not purely commercial, that is, if it does more than merely propose a commercial transaction, it is entitled to full First Amendment protection. Cardtoons, 95 F.3d at 970 (trading cards not commercial speech "merely because they are sold for a profit" (citation omitted)); Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180, 1185-86 (9th Cir. 2001). In Gionfriddo, balancing plaintiffs' economic interests against MLB's interest in providing fans information about the game, MLB's free speech interest was plainly weightier. 114 Cal. Rptr. 2d at 318. So too here, no trial is needed to see that Cannondale's interest in providing information about its bicycles and the sport of racing outweighs Amazon's narrow interest in concealing her actual role on the Volvo/Cannondale team. Indeed, the Tenth Circuit has held that the right of publicity advances few valuable public policies, Cardtoons, 95 F.3d at 973-76, thus requiring courts to guard against "overprotection" of the right. Id. at 976. No special attention or prominence was given to Ms. Giove. Nor were her name or image used to hawk Cannondale products, i.e., to propose a commercial transaction. Indeed

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there are no prices listed in the catalog and consumers can not use the catalog to place orders (Ex. A-9); it simply provides information and specifications about the bicycles. Cannondale ever sell the model bike Ms. Giove rode for the team. Nor did

(Hus Dec. ¶ 14.)

Cannondale's reference to Ms. Giove was a fair use because, as in Gionfriddo, it did no more than illustrate Ms. Giove's role as a Vo lvo/Cannondale team member in an historically accurate way, using photographs of her (and numerous other team members as well as competing riders) to show their actual performances. Accord Namath v. Sports Illustrated, 371 N.Y.S.2d 10 (N.Y. App. Div. 1975) (Sports Illustrated permitted to reproduce covers of old editions in advertisements, including the actual cover on which Joe Namath had appeared, accompanied by the headings "The Man You Love [L]oves Joe Namath" and "How to Get Close to Joe Namath," which accurately showed potential subscribers the type of content the magazine offered); Vinci v. Am. Can Co., 591 N.E.2d. 793, 794 (Ohio Ct. App. 1990) ("the mention of the athletes' names within the context of accurate, historical information was incidental to the promotion of the Dixie Cups by the partnership between the Minute Maid Corporation and the United States Olympic Committee. The reference to the athletes and their accomplishments was purely

informational; there was no implication that the athletes used