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Scott v. Citizen Watch Company of America, Inc.

United States District Court, N.D. California

April 4, 2018



          NATHANAEL M. COUSINS, United States Magistrate Judge

         This 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 commemorative watch.

         These 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 other claims.

         I. BACKGROUND

         A. Parties

         The 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 moon.

         Defendant 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.

         B. The Original Chronograph and the Moon Watch

          Before 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.

         In 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 Kay.

         1. Online Marketing

         The 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.

         Bulova's 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.

         Based 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.

         Beyond 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.

         2. The Booklet Accompanying the Moon Watch

         Enclosed 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.[1] 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.” Id.

         Bulova 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 moon. Id.

         Although 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 display).

         Related 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.

         3. Other Communications

         In 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.

         C. Procedural History

         Perturbed 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.

         Bulova moves for summary judgment on all of Scott's claims.[2] 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).

         All parties have consented to magistrate judge jurisdiction under 28 U.S.C. § 636(c). ECF 8, 22, 23.


         “Viewing 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.


         The 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.

         A. Scott's Common Law and Statutory Appropriation Claims Involve Disputed Material Facts.

         The 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.”).

         In 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).

         On the 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 (1983)).

         Instead 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.

         1. It Is Disputed Whether Defendants' Use of Scott's Identity Was Incidental.

         Bulova's 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 ...

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