United States District Court, N.D. California
ORDER GRANTING IN PART AND DENYING IN PART
DEFENDANTS' MOTIONS FOR SUMMARY JUDGMENT Re: ECF 81,
NATHANAEL M. COUSINS, United States Magistrate Judge
case is about a famous astronaut, that astronaut's
space-faring chronograph, and a modern wristwatch marketed as
a commemorative celebration of history. The question is
whether the watch's manufacturer and a downstream
retailer-defendants Citizen Watch Company of America, Inc.
and Sterling Jewelers, Inc., respectively- violated the law
by using advertisements that include plaintiff Colonel David
Randolph Scott's name, title, photo, and voice without
his permission. While California misappropriation laws and
the federal Lanham Act do permit certain types of
unauthorized uses of another's identity, Defendants
cannot show that those exceptions apply here as a matter of
law. Instead, factual disputes exist about the incidental
nature of Defendants' use of Scott's identity and
about what Defendants' advertisements suggest to
consumers regarding the relationship between Scott and the
factual disputes bar summary judgment on most of Scott's
claims, but there is a dearth of evidence supporting
Scott's assertion that he has suffered severe emotional
distress. Thus, Defendants' motions for summary judgment
are GRANTED on Scott's claims for negligent and
intentional infliction of emotion distress, and DENIED on all
plaintiff in this case is Colonel David Randolph Scott, a
retired astronaut and the mission commander for NASA's
1971 Apollo 15 voyage. On that mission, Scott spent three
days on the moon, including over 18 hours outside the main
spacecraft on lunar extra-vehicular activity. Scott is
perhaps best known for being the seventh man to walk on the
Citizen Watch Company of America, Inc. (“Bulova”)
is a watch manufacturer, and defendant Sterling Jewelers,
Inc. dba Kay Jewelers (“Kay”) is a watch and
jewelry retailer that sells Bulova watches.
The Original Chronograph and the Moon Watch
the Apollo 15 mission, Bulova representatives gave Scott two
Bulova timepieces to use in space. One of them, a
chronograph, Scott wore to the moon during the Apollo 15
mission. In October 2015, Scott auctioned off the chronograph
for $1, 625, 000.
2014, Bulova began creating a commemorative timepiece-the
Lunar Pilot Chronograph (the “Moon Watch”)-based
on the original chronograph that Scott wore to the moon. In
early 2016, Bulova began marketing the Moon Watch. Many of
the advertisements and promotional materials that Bulova and
Kay used to advertise the Moon Watch make reference to the
original chronograph that Scott wore on the moon, and include
Scott's identity in various forms. These marketing
materials are the basis for this lawsuit. The disputed
materials include: (1) online promotions of the Moon Watch,
including descriptions of the watch, photos of Scott, and a
video that contains an audio clip of Scott's voice; (2) a
promotional booklet packaged along with the Moon Watch; and
(3) other public and internal communications by Bulova and
first category of materials is Defendants' online
marketing of the Moon Watch. Bulova and Kay both included
references to Scott in descriptions of the Moon Watch on
their own websites, and Bulova's site features photos of
Scott and a video containing audio of Scott's voice.
web page has had several iterations of the Moon Watch
description, two of which reference Scott. Originally, the
web page stated: “This Special Edition Moon Chronograph
Watch replica takes inspiration from astronaut Dave
Scott's personal Bulova chronograph worn during the
Apollo 15 moon landing.” Napolitano Decl. (ECF 81-1)
Ex. 3. Bulova later changed the description to read:
“After Apollo 15's mission commander made lunar
history-while wearing his personal Bulova
chronograph-we're making history again. The Bulova Moon
Watch replicates that original timepiece . . .”
Id. Ex. 4. Bulova then changed the description again
to state: “Bulova made space history on August 2,
1971-during the Apollo 15 mission, a moon pilot chronograph,
customized for lunar conditions by Bulova engineers, was worn
on the moon. Now Bulova makes history again with the special
edition Moon Watch . . .” Id. Ex. 5. Bulova
sent copy listing the Moon Watch for sale on its downstream
retailers' websites with descriptions similar to those
above. Ryan Bul. Decl. (ECF 102-1) Ex. G.
inexactly on the copy that Bulova sent to Kay, Kay's
website stated: “This special edition moon watch
replica takes inspiration from astronaut Dave Scott's
personal Bulova chronograph worn during the Apollo 15 moon
landing . . .” Ryan Kay Decl. (ECF 104-1) Ex. B. This
description is similar, but not identical, to the copy Bulova
sent. See Id. Ex. A.
the online watch descriptions, Bulova's website features
photos of Scott and a video that uses Scott's voice. The
79-second video depicts the Apollo 15 mission and includes
two seconds of audio where Scott can be heard saying,
“We have a roll program.” Ryan Bul. Decl. Ex. W.
The web page also shows black and white photographs of an
astronaut, who the parties agree is Scott, in full space gear
including a helmet and visor that completely obscure
Scott's face. Id. Ex. X.
The Booklet Accompanying the Moon Watch
in the Moon Watch's packaging is a booklet providing a
watch description and specifications similar to those on
Bulova's website, and featuring the same photos of Scott.
The first version of the booklet included the image of Scott
in a full spacesuit, including visor and helmet, along with
the Lunar Rover that was used on several NASA missions.
Napolitano Decl. Ex. 2. The booklet stated: “Apollo
15's mission commander, the seventh man to walk on the
moon and the first to drive the Lunar Rover, wore his
personally-gifted Bulova moon pilot chronograph.”
later removed the reference to “mission
commander” and revised the description to say:
“The Bulova moon pilot chronograph, worn during the
Apollo 15 moon landing . . .” Id. Ex. 1. The
updated booklet still includes the photograph of Scott on the
the booklet is provided to purchasers as part of the Moon
Watch's packaging, it was also used at least once as an
in-store display. See Ryan Bul. Decl. Ex. U (email
and photos from a Kay employee showing the booklet
prominently featured as part of the Moon Watch's in-store
to the booklet, the Moon Watch also comes with a card
“certify[ing] that this timepiece is an authentic
replica of the original Bulova chronograph watch worn on the
moon by Apollo 15's mission commander in 1971.”
Id. Ex. V.
addition to the online advertisements and the promotional
booklet, Scott identifies several other instances where
Defendants incorporated Scott's name and/or title into
their internal marketing strategies and communications with
the public. For example, Scott's name appears in a 2015
press release from Bulova about the Moon Watch; in an
interview of Bulova's CEO Jeffrey Cohen with Baselworld
reporter Bill Shuster; and in an internal proposed
“advertorial” that emphasizes the connection
between Bulova and NASA. Id. Exs. F, J, K.
Similarly, several communications refer to the “mission
commander” of Apollo 15, including in public
advertisements, internal training cards or “tips
cards” for sales employees, and Bulova's
“pitch book.” Id. Exs. O, Q, R.
by the inclusion of his identity in Defendants'
advertising materials, Scott sued Bulova and Kay, asserting
nine causes of action. First Amended Complaint (FAC) (ECF 9).
After the Court dismissed Scott's ninth cause of action
for unjust enrichment, ECF 62, eight claims remain: (1)
common law invasion of right of publicity through commercial
appropriation of name and likeness; (2) common law invasion
of right of privacy; (3) violation of California Civil Code
§ 3344; (4) false advertising under the Lanham Act, 15
U.S.C. § 1125; (5) false designation of origin under the
Lanham Act, 15 U.S.C. § 1125; (6) negligence; (7)
intentional infliction of emotional distress; and (8)
negligent infliction of emotional distress.
moves for summary judgment on all of Scott's
claims. Bul. MSJ (ECF 81). In a separate motion,
Kay joins Bulova's motion on all counts and offers
additional arguments why Kay should be granted summary
judgment. Kay MSJ (ECF 93). Scott opposes both motions. Opp.
to Bul. MSJ (ECF 125); Opp. to Kay. MSJ (ECF 127).
parties have consented to magistrate judge jurisdiction under
28 U.S.C. § 636(c). ECF 8, 22, 23.
the evidence in the light most favorable to the non-moving
party, summary judgment is appropriate if no genuine issues
of material fact remain and the non- moving party is entitled
to judgment as a matter of law.” Lockheed Martin
Corp. v. Network Sols., Inc., 194 F.3d 980, 983 (9th
Cir. 1999); see Fed. R. Civ. P. 56.
Court first addresses Bulova's motion for summary
judgment on all of Scott's claims, and then summarily
addresses the portions of Kay's motion not covered by
Bulova's. For ease of reference and because Kay joins
Bulova's motion, both defendants' liability is
assessed in conjunction with Bulova's motion.
Scott's Common Law and Statutory Appropriation Claims
Involve Disputed Material Facts.
Court first considers Scott's common law and statutory
appropriation claims. The parties dispute whether Scott's
first two causes of action-which Scott has deemed
“common law invasion of right of publicity through
commercial appropriation” and “common law
invasion of right to privacy”-are really a single
claim. See Bul. MSJ at 9; Opp. to Bul. MSJ at 5.
California law recognizes both types of common law
misappropriation claims, with the difference being the harm
the plaintiff suffers: lost opportunity to benefit
commercially from his own public identity on the one hand,
and injury to feelings or peace of mind on the other. See
Dora v. Frontline Video, Inc., 15 Cal.App.4th 536,
541-42 (1993); accord McKinney v. Morris, No.
B240830, 2013 WL 5617125, at *19 (Cal.Ct.App. Oct. 15, 2013).
However, the legal elements are the same for both claims, and
the same factual issues underlie them in this case, so the
Court addresses them together. See Dora, 15
Cal.App.4th at 542 (“Because we believe that in this
case the analysis under both theories would be the same, we
need not put too fine a point on it.”).
addition to the common law cause of action, California Civil
Code § 3344 provides a statutory remedy for commercial
misappropriation. The remedies under § 3344 complement,
rather than codify, the common law claim. See Newcombe v.
Adolf Coors Co., 157 F.3d 686, 691-92 (9th Cir. 1998).
Section 3344 provides in relevant part, “any person who
knowingly uses another's name, voice, signature,
photograph, or likeness, in any manner . . . for purposes of
advertising . . . without such person's prior consent . .
. shall be liable for any damages sustained by the
person.” Cal. Civ. Code § 3344(a).
common law misappropriation claim, Scott must prove that: (1)
Defendants used Scott's identity; (2) Defendants
appropriated Scott's name or likeness to Defendants'
advantage, commercially or otherwise; (3) Scott did not
consent to the use; and (4) Scott was injured as a result.
Downing v. Abercrombie & Fitch, 265 F.3d 994,
1001 (9th Cir. 2001); Maxwell v. Dolezal, 231
Cal.App.4th 93, 96-97 (2014). Under § 3344, Scott must
prove all the elements of the common law cause of action and
two more: a knowing use by the defendant, and a direct
connection between the alleged use and the commercial
purpose. Downing, 265 F.3d at 1001 (citing
Eastwood v. Superior Court, 149 Cal.App.3d 409, 417
of attacking these elements, Bulova raises four defenses to
Scott's misappropriation claims, arguing that (1) any use
by Defendants was incidental; (2) the use is protected under
First Amendment principles as a matter of public interest or
(3) as a transformative work; and (4) Scott is not
“readily identifiable” and so his likeness has
not been used. The Court addresses each.
It Is Disputed Whether Defendants' Use of Scott's
Identity Was Incidental.
first argument is that any use of Scott's identity was
merely incidental and therefore not actionable. “Under
California law, the ‘incidental use of a plaintiff s
name or likeness does not give rise to liability under a
common law claim of commercial misappropriation or an action
under Section 3344.” Perkins v. LinkedIn
Corp., 53 F.Supp.3d 1222, 1254 (N.D. Cal. 2014) (citing
Yeager v. Cingular Wireless LLC, 673 F.Supp.2d 1089,
1100 (E.D. Cal. 2009). “The rationale underlying this
doctrine is that an incidental use has no commercial value,
and allowing recovery to anyone briefly depicted or referred