She’s Got Bette Davis’…Trademark?

I found about this case reading this tweet from New York copyright and trademark lawyer Marty Schwimmer. A warm Kat Pat to Marty, thank you!

It has been only two months that I am guest-blogging for the IP Kat, and this is already my third post about jewelry. Maybe I should be called the “Bling Kat” from now on; it has a nice “ring” to it.

I Cannot Believe Mittens Has More 'Karats' on Her Collar! 

Jewelry company Erickson Beamon Ltd. filed suit in June 2012  in the Southern District of New York (SDNY), seeking  a declaratory judgment of trademark non-infringement, non-violation of section 43(a) of the Lanham Act, and non-infringement of certain intellectual property rights and rights of publicity with respect to its "The Bette Davis Eyes" jewelry line. This line was launched in 2010 and features items such as the "Erickson Beamon Bette Davis Necklace" and the "Erickson Beamon green Bette Davis Eyes Ring."

Defendants are The Betty Davis Estate and CMG Worldwide, Inc., which is the exclusive licensing agent for the Betty Davis Estate. CMG is a company which represents corporations, celebrities, and the heirs and estates of deceased celebrities. It is organized under Indiana law. Indiana has a right of publicity statute, which applies “to an act or event that occurs within Indiana, regardless of a personality's domicile, residence, or citizenship.” It also provides for a post-mortem right of publicity for personalities, which extends for one hundred years after the personality’s death.

Defendants sent a cease and desist letter to the jewelry company in 2011, stating that the Bette Davis line infringed on their rights in Bette Davis’ name, likeness, and image. Negotiations did not lead to an agreement, and Erickson Beamon Ltd. filed suit in 2012, asserting, inter alia, that it was the 1981 Kim Carnes’ song, "Bette Davis Eyes," which had been the line’s source of inspiration. It also argued that “but for the popularity of Ms. Carnes' recording of "Bette Davis Eyes," consumers of plaintiff's jewelry would be completely unfamiliar with the name Bette Davis.” Ouch!

[Bette Davis is much more than a song, as she was the best rabble-rouser ever, see here, and she also delivered one of Hollywood‘s most famous lines, see

I Have Only Eyes For You

 here.]

On December 17, 2012, Defendants filed a motion to dismiss, which was denied by the SDNY in September 2013. Defendants then answered plaintiff's complaint, raising several affirmative defenses and counterclaims. Plaintiff filed a motion to dismiss. On August 13, 2014, the SDNY granted in part and denied in part the motion to dismiss.

The SDNY denied Plaintiff’s motion to strike the bad faith affirmative defense, as Defendants have sufficiently claimed that Plaintiff acted in bad faith when it allegedly misappropriated the "Bette Davis" name and filed suit.

The Court also denied Plaintiff’s motion to strike the unclean hands and the failure to state a claim affirmative defenses. However, it struck the affirmative defenses of illegality, fraud, lack of standing, failure to mitigate, acknowledgment and acquiescence.

And the SDNY declined to dismiss Defendants' likelihood of confusion counterclaim under Section 43(a) of the Lanham Act. In order to succeed on a section 43(a) claim, a plaintiff must prove that his mark is entitled to protection, and also that defendant's use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant's goods. The SDNY found that is was “plausible that [D]efendants own the exclusive right to use the "Bette Davis" name in commerce.” Determining whether this is or not the case is a question of fact which is ill-suited for determination at the motion to dismiss phase, and so is the question of the likelihood of consumer confusion as well. The court also noted that “[t]he name "Bette Davis" is certainly distinctive with regard to its source — this was a woman, after all, whose eyes inspired a chart-topping song well after her popularity had peaked. “

Defendants had also filed a counterclaim for trademark dilution. Under the Lanham Act, 11 U.S.C. § 1125(c), a plaintiff must plead that (1) its mark is famous; (2) the defendant is making commercial use of the mark in commerce; (3) the defendant's use began after the mark became famous; and (4) the defendant's use of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and distinguish goods and services. As Bette Davis was “someone who achieved such renown that… a very popular song was written about her eyes,” the SDNY found plausible that "Bette Davis" is a famous mark and thus declined to dismiss the trademark dilution counterclaim.

Defendants had also filed a right of publicity suit in the U.S. District Court for the Southern District of Indiana on November 16, 2012, claiming that Erickson Beamon used the "Bette Davis" name without authorization. However, this action was transferred to the SDNY and then voluntarily dismissed by Defendants. New York does not recognize a post-mortem right of publicity.