Opposition Brief — Astaire v. Best Film & Video Corp.

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FILED

JUL 50 1998

98- 13

No. A-851

HEeice OF IME CLERK

In the Supreme Court“ COURT, U.S

OF THE

United States

OCTOBER TERM 1997

ROBYN ASTAIRE,

Petitioner,

VS.

BEST FILM & ViDEO CORPORATION,

Respondent.

On Petition For Writ Of Certiorari To

The United States Court Of Appeals

For The Ninth Circuit

BRIEF IN OPPOSITION

MARK G. BONINO

Counsel of Record

ROPERS, MAJESKI, KOHN &

BENTLEY

1001 Marshall Street

Redwood City, California 94063

Telephone: (650) 364-8200

Facsimile: (650) 367-0997

Attorney for Respondent

Best Film & Video Corporation

Bowne of Los Angeles, Inc., Law Printers (213) 627-2200

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COUNTERSTATEMENT OF THE QUESTIONS

PRESENTED

|. Whether the appellate court’s exercise of its broad

discretion under California Rules of Court, Rule 29.5,

resulting in its decision not to certify a question of law to the

California Supreme Court, where the request to certify was

made for the first time after the Court of Appeal had already

decided the issue, was an abuse of discretion?

TABLE OF CONTENTS

A. FOG MRROIOUNG oii ceacceeess 4

C. The Court Of Appeals’ Decisions .......... 7

I. THE COURT OF APPEALS’ DECISION

TO DENY CERTIFICATION OF THE

STATE LAW ISSUE TO THE

CALIFORNIA SUPREME COURT WAS

WITHIN THE SOUND DISCRETION OF

THE REVIEWING COURT AND ITS

DECISION SHOULD NOT BE

DISTURBED SINCE IT IS SUPPORTED

BY PROCEDURAL AND SUBSTANTIVE

PASE APT. SOR RRRS NP 68s bcd ka Sieuves bi 10

A. Certification Will Only Cause Further

Undue Delay in Tits Case... coc ccctcccess 1]

B. Once The Court Of Appeals Issues Its

Opinion, It Is Inappropriate To Certify

Questions Of State Law To The State

IRON CNEE os bcc av awe keke babs 12

C. There Remained Other Issues In The

Litigation Which Would Have Precluded

Any Benefit Of A State Court Ruling On

Pp EE RB Pe OND era 12

D. The Question Of Law Raised Under Civil

Code Section 990 Does Not Rise To The

Level Required For Review By The

California Supreme Court ...........0000: 13

II.

ITI.

IV.

TABLE OF CONTENTS

PETITIONER’S LACK OF CANDOR

WITH THIS COURT REGARDING HER

GROUNDS FOR AN EXTENSION OF

TIME AND HER “SELECTIVE”

FAILURE TO ADVISE THIS COURT OF

SIGNIFICANT TIMING ISSUES WITH

RESPECT TO THE REQUEST FOR

CERTIFICATION IS AN INDEPENDENT

BASIS TO DENY THIS PETITION.........

A. In Applying To This Court For An

Extension Of Time To File Her Petition,

ASTAIRE Relied On Grounds Never

Mentioned In Her Petition And Which

Could Not Have Assisted Her Position ...

AS PREVIOUSLY ARGUED BY

ASTAIRE THE ISSUES RAISED UNDER

CIVIL CODE SECTION 990 ARE

DISPOSITIVE OF THIS CASE............

REHEARING WAS PROPERLY DENIED

SINCE THE COURT OF APPEALS

CONSIDERED ALL RELEVANT

INFORMATION IN RENDERING ITS

RADA Sire Co Coa yk ob.k a wien cai

CONCLUSION

ee Me ee ee eS ee 2 ae ee ee oo eo ee

TABLE OF CONTENTS

APPENDIX

Petition for Permission to Appeal Under

2B UBS. SGA AOI) ie kee cckae cies

Answer In Opposition to Petition For

Permission To Appeal Under 28 U.S.C.

Por) YAR (3! 7's BRS Sears We Oe eee

Order: Denying Petition For Permission to

Appeal Under 28 U.S.C. 1292(b). (5/31/94) .

Order: Denying Petition For Rehearing and

Recommending Rejection Of Suggestion For

Rehearing en Oanc. (2/25/98)... 6. ecccccess

A-l

B-|

TABLE OF AUTHORITIES

Federal Cases

Page

Armster v. United States Dist. Ct., 806 F.2d 1347

IE PND ee rs eas 16

Clay v. Sun Insurance Office. Ltd., 1964, 363 U.S.

sth, Nisa hk OE? 7 PERE Be Tae st 1]

Complaint of McClinn, 744 F.2d 677

GO ee I ol es en 10, 11, 13

Florida ex rel. Shevin v. Exxon Corp., 526 F.2d 266

(Sth Cir. 1976) cert. denied, 429 US. 829,

RE MN 55s Fees hak Ee es 1]

Lehman Brothers, supra, 416 U.S. 386,

RMR RT ieee ee 10, 11

Lehman Brothers, supra, 416 US. at p. 395,

Pe eens ORD BOMB Sack ebb ea othe 1]

Federal Statutes

ee Wiens | LAO fo ee: a Sy Os ty ty 16

Fed. Rule App. Proc. 35 (a) ..................... 16

Lanham Act, 15 U.S.C. § bs} RPA ange ng ane

State Statutes

Ca. Civ, Code $990(n)....5..... hem le

Cal. Civ. Code §990......... é, 4, 5, 6, 8, 12, 13, 14, 15

Cal. Rules of Court SPL Es osc . ee RE

No. A-851!

In the Supreme Court

United States

OCTOBER TERM 1997

ROBYN ASTAIRE,

Petitioner,

VS.

BEST FILM & VIDEO CORPORATION,

Respondent.

On Petition For Writ Of Certiorari To

The United States Court Of Appeals

For The Ninth Circuit

BRIEF IN OPPOSITION

Respondent BEST FILM & VIDEO CORPORATION

submits this brief in opposition to ROBYN ASTAIRE’S

Petition for Writ of Certiorari.

STATEMENT OF THE CASE

Petitioner seeks review of the decision by the United

States Court of Appeals for the Ninth Circuit, specifically

the Court’s order denying certification of the issue of state

law to the California Supreme Court and the order denying

her petition for rehearing.

The case arose out of BEST FILM’S authorized use of

Fred Astaire’s name and image in a series of dance instruc-

tional videos. Robyn Astaire’ filed an action against BEST

FILM and the Ronby Corporation alleging that their use of

her late husband’s image in the videotapes violated her

statutory right to control such use under Civil Code § 990.

(Pet. App. A-6.)?

The parties filed cross-motions for summary judgment.

The district court granted summary judgment for

ASTAIRE, determining that BEST FILM’S use of

ASTAIRE’S name and image in the videotapes violated her

nights under § 990. (Pet. App. A-2.) The district court

further concluded that BEST FILM’S use did not constitute

a use for “advertising, selling or soliciting” as defined in

§ 990 and therefore not exempt under § 990(n).’ Finally,

the district court held that ASTAIRE’S claim was not

preempted by federal copyright law and that the First

Amendment did not protect BEST FILM’S use. (Pet.

App. A-2, A-3.)

‘Robyn Astaire is the widow of performer Fred Astaire and upon

Fred’s death succeeded Fred’s rights in his name, voice, likeness and

persona under California Civil Code § 990. (Pet. App. A-2.)

*Citations to “Pet. App.” refer to Petitioner's Appendix attached to

Petition for Writ of Certiorari filed on June 25, 1998.

>Section 990(n) provides:

“(n) This section shall not apply to the use of a deceased personal-

ity’s name, voice, signature, photograph, or likeness, in any of the

following instances:

(1) A play, book, magazine, newspaper, musical, composition,

film, radio or television program, other than an advertisement or

commercial announcement not exempt under paragraph (4).

(2) Material that is of political or newsworthy value.

(3) Single and original works of fine art.

(4) An advertisement or commercial announcement for a use

permitted by paragraph (1), (2), or (3).”

(Cal. Civ. Code § 990(n).) (Pet. App. D.)

On March 30, 1994, the district court certified the orders

regarding summary judgment for interlocutory appeal pur-

suant to 28 U.S.C. § 1292(b) concluding that the issues are

dispositive of this case and raise questions of significant

public interest. (Resp. App. A-8.)* BEST FILM petitioned

for permission to appeal following certification by the

district court. ASTAIRE opposed certification on the

grounds that BEST FILM, failed to demonstrate that an

immediate appeal would “materially advance the ultimate

termination” of this litigation, as required by Sec-

tion 1292(b); and based on the court’s broad discretion to

deny certification, where, as here, the case did not present

the “necessary” exceptional circumstances. (Resp.

App. B-8.) The Ninth Circuit denied BEST FILM’S per-

mission to appeal. (Resp. App. C-1.) A stipulated judgment

was then entered which allowed this appeal.

More than three years following judgment in favor of

ASTAIRE, the Ninth Circuit reversed the district court’s

judgment and remanded with instructions to enter judgment

in favor of BEST FILM. (Pet. App. A-17.) The Court held

that BEST FILM’S use of ASTAIRE’S name and image in

the instructional videotapes was exempt from liability under

§ 990(n). (Pet. App. A-17.)

ASTAIRE petitioned the court for rehearing en banc.

(Pet. App. B-1.) The petition was denied and the written

opinion was amended, (Pet. App. B.) ASTAIRE then filed

a motion to stay issuance of the mandate and to certify the

question of state law to the California Supreme Court

pursuant to Rule 29.5 and a second petition for rehearing on

the same grounds. The Court similarly denied ASTAIRE’S

motion for stay and certification and her second petition for

rehearing. (Pet. App. C-1.)

‘Citations to “Resp. App.” refer to Respondent BEST FILM’S

Appendix attached hereto and incorporated by reference herein.

ASTAIRE now challenges the Ninth Circuit’s decision,

including the Court’s orders denying rehearing and

certification.

A. Factual Background

This action arose out of the alleged unauthorized use of

Fred Astaire’s name and image in instructional videos pro-

duced by BEST FILM. (Pet. App. A-6.) Mr. Astaire

granted the Ronby Corporation an exclusive license to use

his name and likeness in connection with the operation of

dance studios, schools and related activities. (Pet.

App. A-6.) Ronby entered into an agreement with BEST

FILM to produce dance instructional videos using

Mr. Astaire’s name and likeness. (Pet. App. A-6.) BEST

FILM has been manufacturing and distributing videotapes

known as “Fred Astaire Dance Series.” (Pet. App. A-6.)

The videotape includes narration, instruction and about

90 seconds of footage from two of Mr. Astaire’s films,

Second Chorus and Royal Wedding (“the ASTAIRE film

clips”). Mr. Astaire died in 1987 and was survived by his

wife, Robyn Astaire, who succeeded to all rights in his name

and likeness, pursuant to Civil Code § 990. Mrs. Astaire is

the petitioner in this action.

B. Procedural History

On January 19, 1990, ASTAIRE filed this action in

federal court against BEST FILM and the Ronby Corpora-

tion, alleging violation of her §990 rights by using

Mr. Astaire’s image in “the ASTAIRE film clips” in the

videotapes without her permission and related claims.° (Pet.

*This action was originally filed in the Los Angeles Superior Court on

December 14, 1989. It was removed to the Central District on Janu-

ary 19, 1990. The other claims, included trademark, trade name and

service mark infringement; unfair competition; and violation of the

Lanham Act, 15 U.S.C. § 1125(a). ASTAIRE asserted an additional

App. A-7.) Following summary adjudication of the related

claims in favor of BEST FILM and Ronby and settlement

of contract claims between BEST FILM and Ronby, BEST

FILM and ASTAIRE filed cross-motions for summary

judgment on January 10, 1994. (Resp. App. A-16.)

On March 11, 1994 the district court granted summary

judgment for ASTAIRE, determining that BEST FILM’S

use of ASTAIRE’S name and image in the videotapes

violated her rights under § 990. (Pet. App. A-2.) The dis-

trict court further concluded that BEST FILM’S use did not

constitute a use for “advertising, selling or soliciting” as

defined in § 990 and therefore was not exempt under

§ 990(n). Finally, the district court held that ASTAIRE’S

claim was not preempted by federal copyright law and that

the First Amendment did not protect BEST FILM’S use.

(Pet. App. A-2, A-3.)

On March 30, 1994, District Court Judge, David V.

Kenyon certified his summary judgment orders of Novem-

ber 26, 1990, July 17, 1991 and March 11, 1994 for

interlocutory appeal pursuant to 28 U.S.C. § 1292(b) and

Stayed all proceedings in the district court. (Resp.

App. A-8.) Judge Kenyon concluded the issues were dispos-

itive of the case and raised questions of significant public

interest. (Resp. App. A-8.) BEST FILM petitioned for

permission to appeal following certification by the district

court of the sole controlling question of law in this matter,

that is, whether the mere use of a deceased celebrity’s

likeness in instructional videotapes violated Civil Code

§ 990 where it has been judicially determined that there is

no use of the celebrity’s likeness for advertising or selling the

breach of contract claim against the Ronby Corporation only.

ASTAIRE and Ronby entered into a settlement agreement in July of

1993 and therefore Ronby is no longer a party to this litigation, (Resp.

App. B-11.)

videotapes and where the use is reasonably related to the

education message found in the videotapes. (Resp. App.

A-17)

Contrary to the position ASTAIRE now asserts,

ASTAIRE opposed certification of the state law issue on the

grounds that BEST FILM, failed to demonstrate that an

immediate appeal would “materially advance the ultimate

termination” of this litigation, as required by Sec-

tion 1292(b). (Resp. App. B-7.) ASTAIRE argued:

“To the contrary, Best’s Petition would, if granted serve

to ensure that the district court proceedings in this case

(which have already lasted more than five years) would

be delayed for at least an additional 12-18 months

pending briefing, argument, and decision in this court.

This is so because regardless of this court’s disposition

of the issues raised by Best, further proceedings would

be required in the district court, and further appeals to

this court would almost certainly ensue.” (Resp.

App. B-7, B-8.)

ASTAIRE further opposed BEST FILM'S petition to

certify the state law issue on the ground that BEST FILM

did not demonstrate the existence of substantial ground for

difference of opinion. (Resp. App. B-8.) ASTAIRE

asserted that the district court’s ruling was in “accord with

settled law and with the language, purpose, and legislative

history of California Civil Code Section 990.” (Resp.

App. B-8.)

ASTAIRE lastly opposed certification of the state law

question on the basis of the court’s broad discretion to deny

certification. ASTAIRE stated,

“the Petition should be denied as a matter of this

court’s discretion because this case manifestly does not

present the sort of exceptional circumstances that are

generally required before this court will accept such

interlocutory review under § 1292(b).” (Resp.

App. B-8.)

On May 31, 1994, the Ninth Circuit denied BEST

FILM’S petition for permission to appeal pursuant to

28 U.S.C. § 1292(b). (Resp. App. C-1.)

C. The Court Of Appeals’ Decisions

On June 20, 1997 the Ninth Circuit Court of Appeals

reversed the judgment of the district court holding that:

“under California law, a videotape manufacturer may

use clips from a deceased entertainer’s movies for

internal advertising of instructional videotapes under a

State statutory exemption for such use in “ ‘film’.” (Pet.

App. A-2.)

Reviewing the issue of Statutory interpretation de novo

from a grant of summary judgment, the panel majority

determined that Section 990(n) immunized BEST F ILM’S

use of the public domain film clips on two grounds. Agreeing

with BEST FILM, the Panel first, found that the provisions

of Section 990(n)(1), which grant a broad exemption for

any uses of a celebrities’ image in “film” and other protected

mediums of expression, applied with equal force to video-

tapes such as the “Fred Astaire Dance Series”. (Pet.

App. A-11, A-12.) Alternatively, the Court ruled arguendo

that Section 990(n) (4) —a subpart explicitly referenced in

Section 990(n) (1) — also exempted the use of the film

clips as embodied in the videotapes even if the film clips

could be considered “an advertisement or commercial

announcement.” (Pet. App. A-12, A-13.) Having ruled in

favor of BEST FILM on the basis of substantive law, the

Court held it was unnecessary to reach the remaining issues

of federal law.”° (Pet. App. A-17.)

**Having concluded that Best's use of the Astaire film clips is exempt

from liability under § 990, we need not reach the other issues presented

On July 7, 1997, ASTAIRE filed her first of two petitions

for rehearing en banc, alleging the Ninth Circuit improperly

decided the case on a ground neither raised below nor

briefed in this court; that the Court’s interpretation of

§ 990(n) (4) will lead to unjust results; and that the Court

based its holding on a misreading of the legislative history of

§ 990. The Court denied ASTAIRE’S petition and filed its

order along with an amended opinion on February 19, 1998.

(Pet. App. B.)

On February 26, 1998, ASTAIRE filed her second peti-

tion for rehearing, on the ground that the Ninth Circuit

should exercise its discretion to certify the state law question

to the California Supreme Court pursuant to California

Rules of Court, Rule 29.5. BEST FILM opposed the

petition for rehearing on several grounds, including: that

ASTAIRE had waived her right to seek state court adjudi-

cation by filing her claim in federal court; that certification

is inappropriate after the appeal, as here, has been finally

determined; and that the requested question for certification

would not be determinative of the appeal. By order of the

Court on April 13, 1998, ASTAIRE’S petition for rehearing

was denied. (Pet. App. C-1.)

On March 2, 1998, ASTAIRE filed a motion to stay

issuance of the mandate and to certify to the California

Supreme Court the controlling issue of state law at issue.’

By order of the Court on April 13, 1998, ASTAIRE’S

motion to stay issuance of the mandate and to certify

by the parties’ arguments, viz., whether Best’s use is covered by

§ 990(a), whether Mrs. Astaire’s § 990 claim is preempted by the

federal Copyright Act, and whether holding Best liable violates the First

Amendment.” (Pet, App. A-17 fn3.)

7 ASTAIRE’S motion was based on the same arguments proffered in

her second petition for rehearing cited above. BEST FILM’S opposition

was likewise based on the same grounds stated in its opposition to

ASTAIRE’S second petition for rehearing.

question to the California Supreme Court were denied.

(Pet. App. C-1.)

D. Reasons Why The Petition Should Be Denied

This case does not merit review. The decisions of the

Ninth Circuit present none of the established grounds for

exercise of certiorari jurisdiction and, in any event, are

correct in the aspects challenged by petitioner.

The Court of Appeals has broad discretion to deny

certification of the state law question to the California

Supreme Court and, where as here, its decision is supported

by procedural and substantive facts in the record, the

decision should not be disturbed.

A separate and independent ground to deny ASTAIRE’S

petition is that she has been less than forthright with this

Court. Specifically, ASTAIRE failed to advise this Court

that it sought certification of the state law question after the

appeal had been finally determined and there‘ore certifica-

tion was inappropriate under California Rules of Court,

Rule 29.5 which limits questions for certification to those

“determinative of a cause pending in the certifying court.”

(Cal. Rule of Court 29.5(a)(2).) (Pet. App. E-1.)

ASTAIRE also failed to disclose to this Court that her

extension of time to file her petition was procured for the

purpose of raising First Amendment issues, which

ASTAIRE did not present anywhere in the Petition, nor are

they possibly argued in a manner to assist petitioner.

Certification will only cause a further significant delay in

this case. The California Supreme Court ordinarily requires

two years to resolve cases presented to it for decision. That

would add to the typical three year life span of an appeal in

the Ninth Circuit.

This case does not present any novel or important ques-

tions of federal law. The First Amendment issue, as raised

by BEST FILM and not by petitioner, was the only poten-

tial constitutional issue in this case. Such issue, however,

was never reached by the Ninth Circuit. All other issues in

this case are matters of California state law not deserving

address by the California Supreme Court since it can be

competently resolved by the Ninth Circuit Court of

Appeals.

On these grounds, ASTAIRE’S Petition for Writ of

Certiorari should be denied.

THE COURT OF APPEALS’ DECISION TO DENY

CERTIFICATION OF THE STATE LAW ISSUE TO

THE CALIFORNIA SUPREME COURT WAS

WITHIN THE SOUND DISCRETION OF THE

REVIEWING COURT AND ITS' DECISION

SHOULD NOT BE DISTURBED SINCE IT IS SUP-

PORTED BY PROCEDURAL AND SUBSTANTIVE

FACTS IN THE RECORD.

The Supreme Court has firmly established that decisions

whether to certify a question of law to a state court, “rests in

the sound discretion of the federal courts.” (Lehman Broth-

ers v. Schein et al. (1974) 416 U.S. 386, 391, 94S.Ct. 1741,

1744, Complaint of McClinn 744 F.2d 677, 681 (9th Cir.

1984) (remanded on other grounds).) In Lehman Brothers,

the Court vacated and remanded the decision of the Court

of Appeals so it could consider the issue of certification. In

so doing, the Court cautioned not to disturb decisions

merely because the means for certification_were available

but not used, in light of the additional time and money

required to certify an issue of state law. In his concurring

opinion, Justice Rhenquist stated:

“If a district court or court of appeals believes that it

can resolve an issue of state law with available research

materials already at hand, and makes the effort to do

so, its determination should not be disturbed simply

because the certification procedure existed but was not

used.“ (Lehman Brothers, supra 416 U.S. 386 at

p. 395, 94 S.Ct. 1741 at p. 1746) (concurring

opinion ).)

In Complaint of McClinn, the Ninth Circuit denied

certification of a state law question with respect to applica-

tion of an Alaskan statute based on its finding that the legal

issue involved would not be determinative of the case

pending before it. (Complaint of McClinn, supra 744 F.2d

at pp. 681 - 682 (9th Cir. 1984).) The Court underscored

the delays arising from certification, since the issue to be

certified was only one of many involved in the case. (/d. at

681.)

A. Certification Will Only Cause Further Undue Delay

In This Case.

In deciding whether to certify a question of state law, the

Fifth Circuit takes into consideration whether the question

is close and whether it is “important to the state in terms of

comity.” (Florida ex rel. Shevin v. Exxon Corp. 526 F.2d

266, 275 (Sth Cir. 1976) cert. denied, 429 U.S. 829, 97

S.Ct. 88.) The Court also deliberates upon the potential

delays involved and “whether the legal issue can be framed

to produce a helpful response by the state.” (/d.)

This Court has also addressed concerns of undue delay

and has determined that notwithstanding the benefits of

certification over abstention, certification “entails more

delay and expense than would an ordinary decision on the

State question on the merits by the federal court.” (Lehman

Brothers, supra 416 U.S. at p. 395, 94 S.Ct. at p. 1744; see

Clay v. Sun Insurance Office. Ltd. (1964) 363 U.S. 207,

226-227, 80 S.Ct. 1222.)

Certification will only cause a further significant delay in

this case. The California Supreme Court ordinarily requires

two years to resolve cases presented to it for decision. That

would add to the typical three year life span of an appeal in

the Ninth Circuit. In light of the Ninth Circuit’s ability to

resolve the issue of state law with respect to Civil Code

§ 990, there is no need for the delays associated with

certification.

B. Once The Court Of Appeals Issues Its Opinion, It Is

Inappropriate To Certify Questions Of State Law To

The State Supreme Court.

Under California Rules of Court, Rule 29.5, questions of

state law may only be certified by the Ninth Circuit when

“the questions may be determinative of a cause pending in

the certifying court.” (Cal, Rules of Court, Rule 29.5(a) (2)

(emphasis added). On February 25, 1997, the Ninth Circuit

issued an order denying ASTAIRE’S initial petition for

rehearing and suggestion for rehearing en banc. This order

concluded the appeal before the Ninth Circuit. According to

the conditions of Rule 29.5, therefore, the California

Supreme Court may not consider the question requested to

be certified with respect to Civil Code section 990.

C. There Remained Other Issues In The Litigation

Which Would Have Precluded Any Benefit Of A

State Court Ruling On The State Law Issue.

Even if the Ninth Circuit had revived the appeal for

purposes of certification, and the state court had ruled in

ASTAIRE’S favor, the state court ruling would not have

been determinative of the appeal. As the Ninth Circuit

noted, its opinion obviated the need to consider “whether

Best’s use is covered by § 990(a), whether Mrs. Astaire’s

§ 990 claim is preempted by the federal Copyright Act, and

whether holding Best liable violates the First Amendment.”

(Pet. App. A-17, n3.) If the requested certification had

resulted in a state court determination in ASTAIRE’S

favor, the Ninth Circuit would still have had to consider the

remaining issues. The Ninth Circuit’s decision to deny

certification here was not a novel idea as demonstrated by its

ruling under similar circumstances in Complaint of McLinn,

where the Court denied state court certification because the

appeal involved several other issues and certification would

not necessarily be determinative of the outcome of the

appeal. (Complaint of McLinn, supra 744 F.2d at

pp. 681-682 (9th Cir. 1984).)

D. The Question Of Law Raised Under Civil Code

Section 990 Does Not Rise To The Level Required

For Review By The California Supreme Court.

Not every unresolved issue of law is deemed by the

California Supreme Court to be a genuinely important issue

of law. Although the Civil Code § 990 issue has not yet been

interpreted by California courts, the certification process will

probably only be utilized by the California Supreme Court

to resolve what it considers to be truly important issues of

California law. The questions presented here do not rise to

that level.

Il.

PETITIONER’S LACK OF CANDOR WITH THIS

COURT REGARDING HER GROUNDS FOR AN

EXTENSION OF TIME AND HER “SELECTIVE”

FAILURE TO ADVISE THIS COURT OF SIGNIFI-

CANT TIMING ISSUES WITH RESPECT TO THE

REQUEST FOR CERTIFICATION IS AN INDEPEN-

DENT BASIS TO DENY THIS PETITION.

A. In Applying To This Court For An Extension Of

Time To File Her Petition, ASTAIRE Relied On

Grounds Never Mentioned In Her Petition And

Which Could Not Have Assisted Her Position.

In her first application for an extension of time to file this

Petition, ASTAIRE stated that she was “presently consider-

ing whether to file a petition for a writ of certiorari challeng-

ing the panel’s apparent conclusion that imposition of

liability on BEST FILM would create First Amendment

concerns.” The Ninth Circuit, however, never reached the

First Amendment issue. Further, it was BEST FILM, not

ASTAIRE, who argued that the First Amendment issue was

applicable to this case. The Court of Appeals having ruled in

favor of BEST FILM on the basis of substantive state law,

there is no First Amendment issue to be considered by this

Honorable Court.

In footnote 4 of page 1525 of the Ninth Circuit opinion,

the Court stated:

“Having concluded that Best’s use of the Astaire film

clips is exempt from liability under § 990, we need not

reach the other issues presented by the parties’ argu-

ments, viz., whether Best’s use is covered by § 990(a),

whether Mrs. Astaire’s § 990 claim is preempted by the

federal Copyright Act, and whether holding Best liable

violates the First Amendment.” (Opinion, p. 1525,

fn. 4.) (Pet. App. A-17.)

ASTAIRE also relies on footnote 3 of page 1524 as

possible grounds for a Petition to this Court for Writ of

Certiorari. Such footnote mentions only that a “potential

First Amendment concern” might have arisen had BEST

FILM been found liable for the use of film clips in a

videotape. The use of film clips by BEST FILM, however,

was held to be exempt under California Civil Code sec-

tion 990(n), and the Ninth Circuit did not reach any First

Amendment issues.

Ii.

AS PREVIOUSLY ARGUED BY ASTAIRE THE

ISSUES RAISED UNDER CIVIL CODE SEC-

TION 990 ARE DISPOSITIVE OF THIS CASE.

Petitioner’s argument that the Civil Code section 990

issues are not dispositive runs directly counter to the argu-

ments made by ASTAIRE in her Opposition to BEST

FILM’S Petition for Permission to Appeal under 28 U.S.C.

§ 1292(b). (Resp. App. B.) There, on behalf of ASTAIRE,

Mr. Hungar argued vigorously that these issues would, in

fact, be dispositive and that granting BEST FILM’S petition

would only result in further unduly delay. (Resp. App. B-7

B-8.) ASTAIRE argued:

’

“... Best’s Petition would, if granted serve to ensure

that the district court proceedings in this case (which

have already lasted more than five years) would be

delayed for at least an additional 12-18 months pending

briefing, argument, and decision in this court. This is so

because regardless of this court’s disposition of the

issues raised by Best, further proceedings would be

required in the district court, and further appeals to this

court would almost certainly ensue.” (Resp. App. B-8.)

ASTAIRE further opposed BEST FILM’S petition to

certify the state law issue on the grounds that BEST FILM

did not demonstrate the existence of substantial ground for

difference of opinion. (Resp. App. B-8.) ASTAIRE

asserted that the district court’s ruling was in “accord with

settled law and with the language, purpose, and legislative

history of California Civil Code Section 990.” (Resp.

App. B-8.)

In further contradiction of ASTAIRE’S current position

in its Petition for Writ, she opposed certification of the state

law question on the basis of the court’s broad discretion to

deny certification. ASTAIRE stated,

“the Petition should be denied as a matter of this

court’s discretion because this case manifestly does not

present the sort of exceptional circumstances that are

generally required before this court will accept such

interlocutory review under §1292(b).” (Resp.

App. B-8.)

On May 31, 1994, the Ninth Circuit denied BEST

FILM’S petition for permission to appeal pursuant to

28 U.S.C. § 1292(b). (Resp. App. C-1.) ASTAIRE’S une-

quivocal change in position, initially opposing certification

and now vigorously in favor of it, is yet another factor

supporting the Ninth Circuit’s decision to deny

ASTAIRE’S request for certification.

IV.

REHEARING WAS PROPERLY DENIED SINCE THE

COURT OF APPEALS CONSIDERED ALL RELE-

VANT INFORMATION IN RENDERING ITS

OPINION.

“The purpose for petitions for rehearing ...is to ensure

that the panel properly considered all relevant . . . informa-

tion in rendering its decision.” (emphasis added) (See

Armster v. United States Dist. Ct., 806 F.2d 1347, 1356

(9th Cir. 1986).) Rehearing en banc will ordinarily only be

ordered when necessary to resolve an intra-circuit conflict or

when “the proceeding involves a question of exceptional

importance.” (Fed. Rule App. Proc. 35 (a).) Rehearing,

and especially rehearing en banc, is both inappropriate and

unnecessary since the issue here is purely one of statutory

interpretation that implicates no federal interest.

CONCLUSION

As demonstrated above, the Ninth Circuit's decision to

deny certification of the state question to the California

Supreme Court was supported by both substantive and

procedural facts in the record and therefore should not be

disturbed. Particularly, ASTAIRE’S failure to advise this

Court that it sought certification of the state law question

after the appeal had been finally determined and therefore

certification was inappropriate under California Rules of

Court, Rule 29.5, the further significant delays caused by

certification in this case and the fact that there is no

important question of federal law presented show this case

does not merit review.

For the foregoing reasons, the Petition for Writ of

Certiorari should be denied.

Dated: July 24, 1998

Respectfully submitted.

MARK G. BONINO

Counsel of Record

ROPERS, MAJESKI, KOHN & BENTLEY

1001 Marshall Street

Redwood City, California 94063

Telephone: (650) 364-8200

Facsimile: (650) 367-0997

Attorneys for Respondent

Best Film & Video Corporation

A-l

IN THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

BEST FILM VIDEO Corp., a corporation,

Petitioner,

¥.

ROBYN ASTAIRE, an individual,

Respondent.

PETITION FOR PERMISSION TO APPEAL

UNDER 28 U.S.C. 1292(b)

APPEAL FROM THE UNITED STATES

DISTRICT COURT FOR THE

CENTRAL DISTRICT OF CALIFORNIA

No. CV 90-0261 KN

(Honorable David V. Kenyon and Honorable Irving Hill)

HEDGES & CALDWELL

A Professional corporation

GEORGE R. HEDGES

NANCY C. KRAYBILL

BERNARD JOHN BARRETT

606 So. Olive Street, Ste. 500

Los Angeles, California 90014-1507

(213) 629-9040

Altorneys for Petitioner

Best Film & Video Corp.

A-2

CORPORATION DISCLOSURE STATEMENT

Pursuant to Rule 26.1 of the Federal Rules of Appellate

Procedure, Petitioner Best Film & Video Corp. (“Best

Film”) states that it has not issued shares to the public.

Furthermore, Best Film does not have any parent company,

subsidiary or affiliate which has issued shares to the public.

A-3

TABLE OF CONTENTS

_Page_

| I. PREFATORY STATEMENT.............. A-7

Bey ee ee A-11

A ee A-11

. ey ee cece aces A-13

III. QUESTION PRESENTED ................ A-14

IV. STATEMENT OF REASONS WHY A

SUBSTANTIAL BASIS EXISTS FOR A

DIFFERENCE OF OPINION ON THE

QUESTION PRESENTED ................ A-15

A. Use of Public Domain Film Clips Cannot

: Be Barred by State Law Because of Copy-

| SOS A-16

B. The Present Section 990 Claim Is Barred

By Section 990(n)’s Exception for Use

{ a SS IS ar A-18

i C. There Can Be No Right of Publicity Claim

i Absent a Showing of Use for Purposes of

: AGvertising or Selling ................... A-19

‘ D. If Mere Use of Public Domain Film Clips

in Instructional Videotapes Is Actionable

Under § 990, Such a Ruling Runs Afoul of

Preeminent First Amendment Principles ... A-26

V. DETERMINATION OF THE CONTROL-

s autpk.camte an cabpaieaeiah hail 25 ae ~ eg Ne pa ee.

LING ISSUE OF LAW IN THIS CASE

: WILL MATERIALLY ADVANCE THE

: TERMINATION OF THE LITIGATION ... A-33

| pi ee ee A-34

| Sark

A-4

TABLE OF AUTHORITIES

Cases

_Page

Baltimore Orioles, Inc. v. Major League Baseball

Players Assoc., 805 F.2d 663 (7th Cir. 1986) .... A-18

Brown v. Twentieth Century Fox Film Corp., 799

F.Supp. 166 (D.D.C. 1992), aff'd without opinion,

13. F358 LSD (IG) a ccna ceaensse eee A-25

Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S.

S48 CED isk 66k sete ee ea ke A-17

Cher v. Forum Int'l Ltd., 692 F.2d 634 (9th Cir.

1982), cert. denied, 462 U.S. 1120, 103 S.Ct.

TURD CIPS as anickond ven ciaseite ks A-25, A-29

Dora v. Frontline Video, Inc., 15 Cal.App.4th 536,

18 Cal.Rptr.2d 790 (1993).......... A-23, A-25, A-29

Eastwood v. Superior Court for Los Angeles Co.,

149 Cal.App.3d 409, 198 Cal.Rptr. 342

bet ee ee ees A-20, A-24, A-25, A-29, A-31

Guglielmi v. Spelling-Goldberg Productions (“Valen-

tino”), 25 Cal.3d 860, 160 Cal.Rptr.

354 CADIS) in 60k wena lea eek ees ens A-27, A-28

Johnson v. Harcourt, Brace, Jovanovich, Inc.

43 Cal.App.3d 880, 118 Cal.Rptr. 370

(ESTA) ca Ka buecet A-20, A-21, A-23, A-24, A-25, A-29

Joplin Enter. v. Allen, 795 F.Supp. 349

CWE Wi Tad ova eaten A-23, A-25, A-29

Joseph Burstyn v. Wilson, 343 U.S. 495, 72 S.Ct.

FEF CEG RSS oie OSE ea ee ns BRT eee wes A-31

Leidholdt v. L.F.P. Inc., 860 F.2d 890 (9th Cir.

1988), cert. denied, 489 U.S. 1080, 109 S.Ct.

Ais Be. i ee error rey re A-23, A-25, A-29

Lugosi v. Universal Pictures, 25 Cal.3d 813,

SGD CIR. Fae Care ka hcea bids vevnke genus A-27

A-5

TABLE OF AUTHORITIES

CASES

Page

Maheu v. CBS, Inc., 201 Cal.App.3d 662,

247 Cal.Rptr. 304 (1988)................ A-21, A-29

Martin Luther King Cenier v. American Heritage

Products, Inc., 250 Ga. 135, 296 S.E.2d 697,

at@ USER. (ENA) 711 (1992) os oo ie cK, A-30

Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir.

peed PEE EEE Pe OTE CEEOL URED Ry Lost age ne A-9, A-24

Motown Record Corp. v. George A. Hormel & Co.,

637 F. Supp 1236 (C.D.Cal, 1987) .........00:. A-18

| Motschenbacher v. R.J. Reynolds Tobacco Co.,

Pe Te OE CPE Oe BOI) en os ec dice ax vans A-24

Sammons & Sons v. Ladd-Fab, Inc., 138 Cal.App.3d

aoe, 187 Cal. Rot. 674 (1982) ©. . seco ices... A-17

. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225

| a) EVE A BRACES reer calyr aig fee Onn A-17

q Sinatra v. Goodyear Tire & Rubber Co., 435 F.2d

, BRE CPOE WM MEE ok nice kh bee cab sk. A-18

Waits v. Frito-Lay, Inc., 978 F.2d 1093

4 (9th Cir. 1992), cert. denied, _. U.S. _,

baw We MET BOO EE. Kxine vv ue os'n< calen’ A-9, A-24

White v. Samsung Electronics, Inc., 971 F.2d 1395

(9th Cir. 1992), cert. denied, _. U.S. _,

113 S.Ct. 2443, 124 L.Ed.2d 660

SRNR ey elalicd ni-6 FE tn Gas eek bes A-9, A-24 A-25

A-6

TABLE OF AUTHORITIES

Statutory Authorities

Page

LE Rack S PRD sous Kine dein eeeeeneas ns A-16

EF Ads CN Cs 6.004 oaks hea eee ey Geka bee A-16

SF Rha RO nk cde awk eiwcee ae A-17, A-18

46 Un PIS Bi OBES RE ee A-7

Cw. Cav. Coote Sr kk aE aa ee passim

CAL. Cav, SOO SPOON oe ec TSE ir A-21

Cone, CRP, Re B PPC) a vss ceakceuscees casas eee

Cal. Civ. Code § 990(n).... A-9, A-15, A-18, A-19, A-21

Cal. Civ. Code § 990(n)(1)...... A-9, A-14, A-15, A-18

ns, Soe, Cs SO SIe os sad eka eee A-19, A-21, A-22

al Gav. Cee © SPOR O) soo dc cevcdeccipeercons A-21

POG RAGS. 244 ives Ramee A-10, A-15

Treatises and Other Authorities

McCarthy, The Rights of Publicity and Privacy,

SOS TA e ik ocean ee A-22

McCarthy, The Rights of Publicity and Privacy,

OTRAS osc cicasbsn creeds baie eee A-26

McCarthy, The Rights of Publicity and Privacy,

2 SEL rrr ere ee hr eae fee OS A-31

1 Melville B. Nimmer and David Nimmer, Nimmer

Webster's New World Dictionary, Third College

BE: : } rg ee emt rE rie yr PHT A-32

A-7

PREFATORY STATEMENT

Petitioner Best Film & Vidi» Corp. (“Best Film’’)

hereby petitions for permission to appeal following certifica-

tion by the United States District Court of the sole control-

ling question of law in this action: Does mere use of public

domain film clips of a deceased celebrity’s likeness in

instructional videotapes violate the right of publicity under

California Civil Code § 990 where there is no use of the

celebrity’s likeness for advertising or selling the videotapes

and where the use is reasonably related to the videotapes’

educational message?' The District Court answered that

question “Yes,” raising issues of importance and first

impression in this Court and in California concerning:

(1) the scope of the right of publicity under § 990; (2) the

potential conflict with and preemption by Federal Copyright

law; and (3) the potential inconsistency of a broad interpre-

tation of § 990 with the First Amendment. Recognizing that

these issues are dispositive of this action and raise questions

of significant public interest, the District Court properly

certified this case for interlocutory appeal pursuant to

28 U.S.C. § 1292(b). Best Film respectfully urges this

'Annexed hereto as Exhibit A is the Order of the United States

District Court dated March 30, 1994 certifying the attached orders for

appeal pursuant to 28 U.S.C. § 1292(b) and amending the Orders from

which an immediate appeal is now sought. That Order amends each of

the prior Orders of the United States District Court that are the subject

of this Petition. Each of these Orders — dated November 26, 1990,

July 17, 1991, and March 11, 1994, respectively — concern issues of law

determined on Motions for Summary Judgment. These three Orders are

appended to this Petition as Exhibits B, C and D, respectively. The

Court’s November 26, 1990 Order, Exhibit B, was made orally. See

Exhibit B, Transcript of November 26, 1990 proceedings, at p. 63,

lines 13-24, adopting the tentative decision previously set out at

pp. 25-36. Each of these determinations of law relate directly to the

same controlling issue of law now raised in this Petition.

A-8

Court to permit an immediate appeal pursuant to that

certification.

As originally brought, this case involved claims by Robyn

Astaire, the widow of the late entertainer Fred Astaire

against Ronby Corporation (the owner of the Fred Astaire

Dance Studio Franchise, co-producer of the videotapes in

question and the licensee of the right to use Fred Astaire’s

name, image and likeness related thereto) and against

Petitioner Best Film (a co-producer and licensed distributor

of videotapes through Ronby). Respondent Robyn Astaire

asserted that the production and distribution of the video-

tapes violated license agreements Fred Astaire had granted

during, his lifetime for operation of the Fred Astaire Dance

Studios utilizing his name, image and likeness, and other-

wise violated trademarks and amounted to acts of unfair

competition. On Motion for Summary Judgment, Respon-

dent’s claims for violation of trademark and unfair competi-

tion were dismissed. Respondent’s breach of license claims

brought against Ronby Corp., the operator of the Fred

Astaire Dance Studios, were also dismissed by a settlement

that did not include Best Film. Thus, the only issue remain-

ing is Respondent’s claim that the mere use of 93 seconds of

public domain film clips of Astaire dancing in instructional

dance videotapes authorized by Ronby Corp. violates the

right of publicity granted to a deceased celebrity under

California Civil Code § 990.

The controlling issue of law that is the subject of this

Petition is not simply case dispositive here, in its broader

terms it is an issue of great significance in this Information

Age. Can a celebrity or that celebrity’s heirs prevent the

duplication and incorporation of public domain materials

(be they films clips, photographs or other media) in a

medium of expression (be it a videotape, book or a CD

ROM) by use of California’s statutory right of publicity?

Here, a celebrity’s heirs seek invoke California’s statutory

A-9

right of publicity protections to prevent duplication and

incorporation of public domain material in a medium of

expression. They do so in a context devoid of improper

association of the celebrity’s name with a product or any

possible casting of that celebrity in a false light. The most

obvious implication is that allowing such an unprecedented

extension of the publicity right runs afoul of, and is pre-

empted by, the Copyright Act. Moreover, § 990 itself

expressly exempts such a use unless it is an “advertisement

or commercial announcement.” Cal. Civ. Code § 990(n).”

Finally, as a matter of settled case law, a right of publicity

claim must be accompanied by the added element of use for

advertising and selling — an element which removes such a

claim from copyright preemption and potential violation of

First Amendment rights inherent if mere use is actionable.

As the Court below has found as a matter of law, there

simply is no use for advertising or selling in this case.

No court has ever addressed the issue of mere use

standing alone. Right of publicity cases are almost always

directed to use for advertising and selling — which is totally

absent here. See, e.g, White v. Samsung Electronics. Inc.,

971 F.2d 1395 (9th Cir. 1992), cert. denied, __U.S. ee

S.Ct. 2443, 124 L.Ed.2d 660 (1993) Vanna White’s image

used to sell electronic products); Waits v. Frito-Lay, Inc.,

978 F.2d 1093 (9th Cir. 1992), cert. denied, U.S. _, 113

S.Ct. 1047 (1993) (singer Tom Waits’ image used to sell

snack food); Midler v. Ford Motor, Co., 849 F.2d 460 (9th

Cir. 1988) (singer Bette Midler’s image used to sell auto-

mobiles). And no court has ever held what the District

Court has held here: that unconsented use in any manner is

a per se violation of the publicity right granted under § 990 if

?That exception provides in relevant part: “This Section [ § 990] shall

not apply to the use of a deceased personality’s... likeness in... a

film ... or television program, other than an advertisement or commer-

cial announcement.” Cal. Civ. Code § 990(n) (1).

A-10

that use is on “products, merchandise or goods,” which the

Court below has interpreted to mean a videotape or, pre-

sumably, any other protected medium of expression. Indeed,

the decision of the Court below on the controlling question

of law represents a significant, if not radical, extension of the

right publicity, which necessarily assumes a “substantial

basis for a difference of opinion” under Rule 5 of the

Federal Rules of Appellate Procedure.

Determination of this fundamental issue is compelled by

the greater public interest. At the same time, because it is

entirely case dispositive, its determination at this juncture

will “materially advance the termination of this litigation”

within the meaning of Rule 5 of the Federal Rules of

Appellate Procedure. This controlling question is the sole

remaining issue in this case and one which must ultimately

be decided in this Court. It should be decided at this

juncture. Otherwise, if this Petition is not granted, it will

compel the case to be pretried again. Then the case would

proceed to trial on damages under a legal standard that has

no precedent and no guidelines as to what such a damages

phase would entail. On the other hand, if a legal standard is

determined by this Court with finality, it will allow the

Parties to be able to evaluate their respective positions in

this action — related not only to trial, if any is required, but

also the Parties’ rights to attorneys’ fees after what has

amounted now to years of litigation. Thus, the District Court

was entirely correct in certifying this issue for appeal —

recognizing the unnecessary waste of judicial resources that

further proceedings in the District Court would entail prior

to determination of this issue of law in this Court, where this

determining issue must be decided in any event.

A-11

II.

STATEMENT OF FACTS

A. Factual Background

This case involves the production and distribution of

instructional dance videotapes under the auspices of, and

pursuant to a license from Ronby Corp., the owner of the

Fred Astaire Dance Studios. The Fred Astaire Dance Stu-

dios were founded by Fred Astaire and one Chester

Casanave in 1946 and utilized a step-by-step method of

dance instruction developed by Mr. Astaire himself.

Mr. Astaire withdrew from the business in 1953 and sold his

rights under a contract that granted him a 40-year royalty

from the Company’s revenues while reserving for

Mr. Casanave the right to continue the dance teaching

business. Pursuant to these agreements, Mr. Astaire

expressly gave Mr. Casanave the license to franchise dance

studios under the trademark “Fred Astaire Dance Studios”

and “Fred Astaire Franchised Dance Studios,” and the right

to market dance instructional materials using the name,

image and likeness of Fred Astaire.

This license was renewed in 1965 after the Fred Astaire

Dance Studios Corporation changed its name to Rorby

Corporation. By written agreement dated January 15, 1965,

Mr. Astaire granted Ronby a “perpetual exclusive right and

license to use... the name ‘Fred Astaire’ in connection with

the conduct and operation of dance studios and schools and

related activities” as well as “the right to utilize pictures,

photographs and other likenesses of [Mr. Astaire] as had

been previously used, and new photographs and likenesses as

[Mr. Astaire] may approve in writing.” For this agreement,

Fred Astaire received an additional $155,000.

On August 3, 1987, following Mr. Astaire’s death,

Respondent Robyn Astaire — the widow of Fred Astaire

and his alleged successor-in-interest — filed a Registration

A-12

of Claim under § 990 with the California Secretary of State.

In that Registration, Respondent claimed 100% of the rights

to Fred Astaire’s name, voice, signature, photograph, or

likeness “except for the right to franchise and to cause to be

operated, dance studios under the name and image of Fred

Astaire.”

On March 15, 1989, Ronby and Best Film entered into an

agreement to co-produce a series of dance instructional

videotapes using the Fred Astaire Dance Studios’ distinctive

and proprietary dance curriculum. Five instructional video-

tapes were produced, which range in length from 37 to 43

minutes. Each videotape opens with 93 seconds of dance

scenes taken from two Fred Astaire movies, both of which

predate the formation of the Fred Astaire Dance Studios.

These movies, “Royal Wedding,” and “Second Chorus,”

were copyrighted by the studio producing the pictures and

each copyright has lapsed without renewal. Therefore, each

movie is in the public domain for copyright purposes.

Moreover, each of the films is readily available and in

distribution by various public domain video distributors.

Best Film began distributing the Fred Astaire Dance

Studios instructional videotapes in 1989. As the Court below

has found, Best Film has at all times marketed the video-

tapes in conformity with the Fred Astaire Dance Studios

license and without using the film clips in question or other

likenesses of Astaire to advertise or sell the videotapes. The

jacket of the videotapes identifies them under the Fred

Astaire Dance Studios trademark name and contains an

authorized quotation from Astaire regarding the importance

of good dance instruction in learning to dance. All advertis-

ing and marketing materials produced in conjunction with

the distribution of the videotapes likewise only identify

themselves with the trademark “Fred Astaire Dance Stu-

dios” in conformity with the Ronby license and, notably,

A-13

Respondent’s own § 990 Registration expressly allowing

such a use.

B. Procedural History

This action was comm. »* don December 19, 1989, a few

months after the initial release of the instructional video-

tapes. Although an injunction was sought in the Complaint,

Respondent has never attempted to enforce any injunctive

remedy. The central thrust of Respondent's Complaint

turned upon the right to distribute the videotapes in the first

place. In addition, claims were asserted regarding the use of

Fred Astaire’s name and persona on the jackets and packag-

ing related to the marketing of the videotapes. These claims

included the prominent use of Fred Astaire’s name and the

title for the videotape “Fred Astaire Franchised Dance

Studios” along with the prominent use of the quotation by

Fred Astaire regarding the significance of good instruction

in learning to be a dancer. Respondent Robyn Astaire

further claimed that this packaging violated trademarks on

the name of Fred Astaire and that the production and

distribution of the videotapes amounted to unfair competi-

tion under the Lanham Act by appropriating rights in the

Astaire image and likeness. With regard to alleged appropri-

ation of publicity rights, the Complaint includes the claim

that, in the words of the Complaint’s charging allegation:

“Utilization of the name, photograph and likeness of

Fred Astaire... for the purpose of advertising and

selling... Best’s video cassette products [violated

Respondent’s rights under Cal. Civ. Code § 990].”

Complaint, Para. 8, p. 3.

Respondent’s trademark and unfair competition claims

were resolved by summary adjudication in favor of Defend-

ants Best and Ronby on July 17, 1991. See order, attached

as Exhibit C. The Court also held that the videotapes

themselves were properly part of the instructional activities

A-14

of the Fred Astaire Dance Studios as authorized by Fred

Astaire and that the production and marketing of the

videotapes under the name of the Fred Astaire Dance

Studios did not violate Astaire’s publicity rights. The Court

further held that Best Film was licensed to use the Fred

Astaire name and image on its packaging and advertising as

a matter of federal trademark law. However, consistent with

Judge Hill’s prior ruling of November 26, 1990, the Court

refused to find copyright preemption or that the exception in

§ 990(n)(1) for uses in film or videotape unrelated to

advertising and selling apply here. The Court also found that

material issues of fact existed regarding the breach of

contract claims between Astaire and Ronby. In July of 1993,

Ronby and Respondent settled their claims on terms

Respondent has refused to disclose — thus removing any

contract claims from this litigation and leaving only the right

of publicity claim set forth in this Petition.

On January 10, 1994, the parties filed cross-motions for

summary judgment/summary adjudication. On March 11,

1994, the District Court issued its ruling on these motions.

In that Order, the Court made three key findings of fact and

law: (1) Best’s use of Astaire’s likeness as incorporated in

the videotapes in itself constitutes a violation of § 990 under

the statute’s “on or in products, merchandise, or goods”

language; (2) Best Film did not use Astaire’s likeness in the

videotapes for purposes of advertising or selling, or soliciting

purchases of the videotapes within the meaning of § 990;

and (3) the First Amendment does not protect Best Film’s

use of Astaire’s likeness from a right of publicity claim

under § 990.

III.

QUESTION PRESENTED:

Is the mere use of public domain film clips of a deceased

celebrity’s likeness in instructional videotapes violative of

A-15

the right of publicity under California Civil Code § 990

where there is no use for advertising and selling the video-

tape and where the use is reasonably related to the video-

tape’s educational message?

IV.

STATEMENT OF REASONS WHY A SUBSTAN-

TIAL BASIS EXISTS FOR A DIFFERENCE OF

OPINION ON THE QUESTION PRESENTED

Because the District Court has determined that uncon-

sented use of public domain film clips in the body of an

instructional videotape amounts to a per se violation of

§ 990, this case stands in stark coutrast to the entire body of

California right of publicity law. Thus, a difference of

opinion on this controlling question of law within the mean-

ing of Fed.R.App.P. 5 is necessarily stated. The controlling

question of law presented here raises four issues upon which

this significant difference of opinion is grounded. First, a

difference of opinion exists as to whether such a ruling as

regards public domain film clips runs directly afoul of the

law. Second, the question is raised as to whether this use

falls within the exception found in § 990(n)(1) which

provides that “[t]his Section shall not apply to the use of a

deceased personality’s name, voice, signature, photograph,

or likeness in...a... film... or television program, other

than an advertisement or commercial announcement....

Third, the District Court’s per se definition of § 990 would

effectively overrule longstanding case law, embodied in

§ 990 itself including § 990(n), requiring a showing of use

for advertising or selling before a violation of publicity rights

can be found. Finally, there is a significant question as to

whether this per se rule, where it is applied to bar instruc-

tional materials that utilize a deceased personality’s image

A-16

and likeness, is in itself violative of First Amendment

principles.

A. Use of Public Domain Film Clips Cannot Be Barred

by State Law Because of Copyright Preemption

The effect, or a portion thereof, of the Court’s ruling on

the controlling issue of law in this case is to determine that

any use (i.e., mere duplication and incorporation) of a work

that has fallen into the public domain is prohibited if that

work includes in it the image and likeness of a deceased

celebrity who has not consented to such a use.’ In this way,

the Court has interpreted § 990 so as to place it on a

collision course with the Copyright Act. If it is entirely

lawful to duplicate public domain film clips of Fred Astaire

and incorporate them in another work under federal copy-

right law (which it is), state law cannot render that same

duplication and use a misappropriation unless consent is

obtained. But that is precisely the effect of the Court’s ruling

below. If § 990 applies to the mere duplication and incorpo-

ration of public domain film clips including the image of a

celebrity (the only “use” in this case), then that celebrity or

his heirs can effectively prohibit such a use as unauthorized.

To give such an interpretation to § 990 would be to create a

state right that is in direct conflict with what is lawful under

the Copyright Act. Such a per se rule is clearly preempted

by the Copyright Act.

There is no question that the films from which these clips

are taken were at one time the proper subject of copyright

under 17 U.S.C. § 102(a) and that these films have fallen

into the public domain. There is also no question that the

*It bears emphasis that Fred Astaire has never owned, and does not

own, any interest in the copyrights to the films in question or the clips

from them. The copyrights to these films lapsed years ago. In any event,

Astaire’s own performances were undoubtedly “works for hire” under

17 U.S.C. § 201(b), thus depriving him of any copyright claim.

A-17

had the right to authorize the use of its copyrighted film or

excerpts therefrom. 17 U.S.C. § 301(a). And, so long as

that use involved only duplication and incorporation in

another work, no one but the copyright holder would have

the right to authorize or refuse to authorize such a use. /d.

Once the film is in the public domain, the rights of the

else, including the heirs of a deceased celebrity by operation

of state law. Id.; see e.g., 1 Melville B. Nimmer and David

Nimmer, Nimmer On Copyright, § 2.03[G] (1993).

As the United States Supreme Court held in Sears,

Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 232 (1964):

“...@ State may not, when an article is unpatented and

uncopyrighted, prohibit the copying of the article itself or

award damages for such copying...” This rule was aptly

summarized in the companion case of Compco Corp. v.

Day-Brite Lighting, Inc. 376 U.S. 234, 237 (1964):

“[W hen an article is unprotected by a patent or a copy-

right, state law may not forbid others to copy that article.”

This rule of preemption has been applied in California to

bar claims of misappropriation under an unfair competition

theory — essentially what is entailed in the right of publicity

claim here — where public domain material is involved. In

Sammons & Sons v. Ladd-Fab, Inc., 138 Cal.App.3d 306,

311, 187 Cal.Rptr. 874, 877-878 (1982), the Court held:

“The applicability of the Sears and Compco doctrine

having been demonstrated, we turn to the question

whether that doctrine is consistent with the continue

recognition of misappropriation by copying of public

domain matter as a basis for unfair competition claims.

We conclude that, though such copying may be an

element in an otherwise unlawful competitive scheme,

unfair competition claims may not be based solely upon

such copying.”

A-18

See also Sinatra v. Goodyear Tire & Rubber Co.,435 F.2d

711, 717 (9th, Cir. 1970).

Other courts have similarly found that the exclusive

federal right preempts equivalent state law rights, including

right of publicity claims that are premised on a use identical

to that encompassed by the Copyright Act. Baltimore Ori-

oles, Inc. v. Major League Baseball Players Assoc., 805

F.2d 663, 674-79 (7th Cir. 1986); Motown Records Corp. v.

George A. Hormel & Co., 657 F.Supp. 1236, 1240-41 (C.D.

Cal. 1987).

The case now before the Court deals solely with the issue

of copying use as amounting to a misappropriation. The

Court below held that Respondent’s allegations that Peti-

tioner used the film clips for advertising and selling were

without substance. Respondent has alleged no other act that

would otherwise differentiate this claim from one solely

involving the mere duplication and incorporation of the film

clips in question in instructional materials. That use of

public domain materials is permitted by the Copyright Act

and, as a matter of federal preemption, cannot be inhibited

by the overbroad interpretation of § 990 advanced by the

Court below. 17 U.S.C. § 301 (a).

B. The Present Section 990 Claim Is Barred by Sec-

tion 990(n)’s Exception for Use Involving Film

As discussed above, California’s statutory right of public-

ity cannot intrude upon uses that are otherwise the subject

of copyright. In this regard, the California Legislature was

careful in drafting § 990 to provide for an explicit and

unqualified exception for the application of publicity rights

to film unless the use is in “an advertisement or commercial

announcement.” As provided by § 990(n) (1):

“This Section shall not apply to the use of a deceased

personality’s name, voice, signature, photograph, or

likeness, in any of the following instances: (1) a...

A-19

film ...or television program, other than an advertise-

ment or commercial announcement... .”

The use by Best Film of film clips in these instructional

videotapes falls squarely within the express exceptions set

forth on the face of the statute. This analysis applies

whether the issue is mere use of the film clips themselves or

whether instructional videotapes are considered within the

exception in their entirety. Application of the exception here

is even clearer because the District Court in this case has

found that there was no use in “an advertisement or com-

mercial announcement.”

Nonetheless, despite the lack of any limiting language in

§ 990(n), the Court below has read that Section to apply

only to “bibliographical works.” See Minute Order dated

November 19, 1993, page 2, n.l, appended hereto as

Exhibit E. The court has never described how or why it

reached this conclusion. There is no case authority support-

ing such an interpretation, nor does the Legislative history of

§ 990 shed any light on construing such a limitation to the

§ 990(n) exception. The exception set forth in § 990(n)

should be found to apply here.

C. There Can Be No Right of Publicity Claim Absent a

Showing of Use for Purposes of Advertising or Selling

Under settled case authority, the right of publicity —

whether under § 990 as related to deceased celebrities, its

companion statute California Civil Code § 3344 related to

living persons or common law — has never been considered

to be a per se rule of law. Instead, courts have always

considered the context in which a use occurs to be essential.

The necessary elements of a claim for a violation of the right

of publicity require a commercial exploitation through an

unauthorized or unpermitted use of a celebrity’s likeness

A-20

directly connected to advertising or selling.* Thus, the unau-

thorized use of a celebrity’s likeness on or in consumer

products, goods or merchandise (e.g, Michael Jordan’s

name on a basketbail or his picture in an advertisement to

sell Nike’s) is plainly actionable because all elements are

present: the use is unauthorized and its sole purpose is for

advertising or selling a consumer product, i.e., basketballs or

sneakers. However, particularly where the use is in a pro-

tected medium of expression (such as a textbook, a docu-

mentary film or, as here, an instructional videotape), then

the element of a direct connection with advertising and

selling is critical. Accordingly, unauthorized use of a celeb-

rity’s likeness in a television or print advertisement is action-

able, whereas the use of the same likeness in a textbook or

other instructional material is not.

There simply is not a single case extending the right of

publicity to mere use of a person’s likeness in any form of

media, be it books, magazines, films or videotapes. Quite to

the contrary, it is a long-required element of a claim for

statutory violation of California’s right of publicity that a

plaintiff must establish what is termed a “direct connection”

between the alleged unpermitted use and “solicitation of

purchases” or in the terms of Respondent’s Complaint in the

court below, “advertising and selling.” Eastwood v. Superior

Court for Los Angeles Co., 149 Cal. App.3d 409, 420, 198

Cal.Rptr. 342, 348-349 (1983) (use must be directly con-

nected to commercial exploitation); Johnson v. Harcourt,

Brace, Jovanovich, Inc. 43 Cal.App.3d 880, 896,

118 Cal.Rptr. 370, 381 (1974) (use must be directly con-

nected to commercial exploitation). As one California court

*See citations below. The only exception involves false stories about

celebrities, which has no bearing here.

re ss

A-21

has stated concerning California’s statutory right of public-

ity’ as applied to living persons:

“This statute protects the interest in identity by pro-

scribing unauthorized use of another’s name or likeness

on specific products or in connection with advertising

and sale of services and products.” Maheu v. CBS, Inc.,

201 Cal.App.3d 662, 676, 247 Cal.Rptr. 304, 312

(1988) (emphasis added and citation omitted).

Significantly, the requirement of a direct connection

between an unpermitted use and advertising or solicitation

of purchases of a product was first articulated in a case,

Johnson v. Harcourt. Brace, Jovanovich, involving a factual

setting strikingly similar to the instant case. Johnson v.

Harcourt, Brace, Jovanovich, 43 Cal.App.3d 880, 894, 118

Cal.Rptr. 370 (1974). In Johnson, the plaintiff complained

of the mere use of his identity in a history textbook as

violating his right of publicity. Discussing Johnson under

both sections of California’s right of publicity statutes (Sec-

*While the court in Maheu v. CBS, Inc. was discussing § 3344 which

applies the right of publicity to living persons, there is no distinction

between § 3344 and § 990 for these purposes. Section 990 of the

California Civil Code was enacted on September 30, 1984, to codify the

common law right of publicity in California and to provide for the

continuation of that right after the death of an individual whose persona

was protected. A California statute protecting the right of publicity had

originally been enacted in 1972 as Section 3344 of the California Civil

Code. In 1984, California reacted to decisions limiting this right to living

persons by enacting the parallel provisions of Section 990 for deceased

celebrities. Section 3344 was amended at the same time so that its

equivalent definition of the right of publicity, Section 3344(a), tracked

the language enacted as Section 990(a). The only relevant distinction

between the two right of publicity statutes is the inclusion in Sec-

tion 990, the provision for the rights of deceased personalities applicable

here, of the express exemption for uses in creative works including films

under Section 990(n).

A-22

tions 3344 and 990), McCarthy’s authoritative treatise, The

Rights of Publicity and Privacy, states:

“Under the 1972 version of § 3344, the California court

of appeals held that the use of plaintiffs name and

history in finding and returning a large sum of money as

the basis for a lesson in a college English textbook was

not a prohibited use under § 3344. The court found that

such a use of plaintiff's identity was not for purposes of

advertising or soliciting purchases of the textbook. The

court noted that the plaintiff's name was ‘only used as

an educational tool in an English textbook’ and ‘was not

a primary reason for the textbook; nor was it a substan-

tial factor in the students’ purchase of the book.’ This

requirement of a ‘direct connection’ between the unper-

mitted use and a commercial purpose is an example of

the general rule that mere ‘incidental’ use of identity,

especially as part of the educational content of a book,

is not the kind of unpermitted use of identity which

triggers infringement of the Right of Publicity. On the

other hand, an unpermitted use which is used to ‘attract

the attention’ of prospective buyers of defendant’s prod-

uct is clearly within both § 3344 and common law

rights.” § 6.4 [F][2] at p. 6-31 (emphasis added and

footnotes omitted).

Based upon this same reasoning, the California Court of

Appeal granted summary judgment in favor of a defendant

in a case involving a claim that mere use of the likeness of

famed surfer Mickey Dora in a documentary violated his

publicity rights under § 3344. There, the Court specifically

rejected the very argument that Respondent is asserting

here — that any use of likeness amounts to a publicity nght

violation:

“Though both celebrities and non-celebrities have the

right to be free from the unauthorized exploitation of

their name and likenesses, every publication of some-

i ic i a =

A-23

one’s name or likeness does not give rise to an appropri-

ation action.” Dora v. Frontline Video, Inc. 15

Cal.App.4th 536, 542, 18 Cal.Rptr.2d 790, 792 (1993).

The requirement of a direct connection between a use and

advertising and/or selling recently has been held to be

equally applicable to claims brought under § 990:

“California Civ. Code Section 990... applies by its

language and by legal authority only to the exclusively

commercial use of [the] persona in merchandise,

advertising or endorsements.” Joplin Enter. y. Allen,

795 F. Supp. 349, 351 (W.D. Wash. 1992) (emphasis

added).

Like Johnson and Dora, Joplin is particularly instructive

here because it involves mere use in a medium of expres-

sion — in Joplin a stage play concerning the late blues

singer Janis Joplin. In the play, the persona of Joplin (i.e.,

her name, image, and likeness) is the play’s entire raison

detre. Rejecting the § 990 claim by Joplin’s devisees, the

Court noted:

“California Civ. Code § 990. .. Clearly contemplates

examining the use of a deceased personality’s name,

voice, etc., in terms of the total context in which it

appears, Where a use is for the purpose of advertising

goods or services, it is prohibited. Identical use in the

context of a play is protected.’”® Jd.

The same result was reached by the Ninth Circuit in

Leidholdt v. L.F.P. Inc., 860 F.2d 890, 895 (9th Cir. 1988),

cert. denied, 489 U.S. 1080, 109 S.Ct. 1532 (1989), involv-

ing the use of plaintiff's photograph in a magazine sold for

profit — Hustler — which was held not to create a cause of

*It bears noting that the Joplin Court went on to find, as Best Film

urges here, that First Amendment concerns also barred any publicity

claim. 795 F.Supp. at 352. See § D. below.

A-24

action for misappropriation in connection with a constitu-

tionally protected expression of opinion. The present case is

squarely in line with Johnson and the cases cited above with

regard to the use in the videotapes at issue being beyond the

scope of a right of publicity claim. Similarly, in Eastwood v.

Superior Court, 149 Cal.App.3d 409, 417, 198 Cal.Rptr.

342, 347 (1983), the Court held that the direct connection

needed to be established is an “additional requirement” for

recovery on a right of publicity claim.

The requirement makes eminent good sense. If mere use

of a likeness were actionable, every publication, be it a book,

magazine, newspaper or videotape containing the photo-

graph, name, voice, signature or likeness of a celebrity,

would give rise to per se liability for violation of the right of

publicity. The limitation provided by the advertising and

selling requirement also has the collateral benefit of avoiding

the problem of copyright preemption (i.e., no claim based

on mere duplication). At the same time, it allows an

interpretation of the right of publicity which avoids First

Amendment concerns that arise where only mere use is

involved.

Precisely because a “direct connection” must be estab-

lished, cases involving the right of publicity claim, with the

sole exception of the “false story” cases cited below, require

a showing of use for advertising and selling. In most public-

ity cases the connection is easily established in relation to

some consumer product. See, e.g., Motschenbacher v. R.J.

Reynolds Tobacco Co., 498 F.2d 821 (9th Cir. 1974) (use in

television advertisement of image of race car driver to sell

Winston cigarettes); Midler v. Ford Motor Co., 849 F.2d

460 (9th Cir. 1988) (use in television commercials of Bette

Midler’s voice to sell Ford cars); Waits v. Frito-Lay Inc.,

978 F.2d 1093 (9th Cir. 1992), cert. denied, U.S. —, 113

S.Ct. 1047 (1993) (use in radio advertisement of Tom

Waits voice to sell Frito-Lay junk food); White v. Samsung

A-25

Elec. Inc., 971 F.2d 1395 (9th Cir. 1992) cert. denied, __

U.S. — 113 S.Ct. 2443 (1993) (use of Vanna White’s

image in print advertisements to sell videocassette

recorders).

Where the use is in a medium of expression, as opposed to

a consumer product, the burden is even higher because of

First Amendment concerns — only if the use is predicated

upon a false story created to attract the attention of a

potential consumer may a right of publicity claim arise. See

e.g., Cher v. Forum Int'l, Ltd., 692 F.2d 634 (9th Cir. 1982),

cert. denied, 462 U.S. 1120, 103 S.Ct. 3089 (1983) (know-

ing falsity in the use of Cher’s image in advertising what was

represented to be an “exclusive” to the readership of Pent-

house’s Forum as endorsing the magazine); Eastwood vy.

Superior Court, 149 Cal.App.3d 409, 198 Cal.Rptr. 342

(1983) (false cover story of “Love Triangle” supposedly

involving Clint Eastwood, Sandra Locke and Tanya Tucker

used to sell National Enquirer).

However, where a direct connection is not established;

courts have not hesitated to reject a claim premised on the

right of publicity. See, e.g, Johnson v. Harcourt, Brace.

Janovich, supra (use of plaintiff's identity in textbook not

actionable); Leidholdt v. L.F.P., Inc., 860 F.2d 890 (9th Cir.

1988), cert. denied, 489 U.S. 1080, 109 S.Ct. 1532 (1989)

(mere use of photo in Hustler, a magazine sold for profit,

not sufficient); Dora V. Frontline Video, Inc. 15

Cal.App.4th 536, 18 Cal.Rptr.2d 790 (1993) (summary

judgment affirmed rejecting liability for mere use of surfer

Mickey Dora’s name and likeness in a “Frontline” television

documentary); Joplin Enter. v. Allen, 795 F.Supp. 349

(W.D. Wash. 1992) (use of Janis Joplin’s persona in

biographical play does not result in a right of publicity claim

under Section 990); Brown v. Twentieth Century Fox Film

Corp., 799 F.Supp. 166, 172-173 (D.D.C. 1992), affd

without opinion, 15 F.3d 1159 (1994) (summary judgment

A-26

granted for defendant film company on common law right of

publicity claim following from use in a movie of a short clip

from a television performance by singer James Brown).

In sum, the entire weight of authority involving rights of

publicity precludes extending a right of publicity claim to

mere use without a showing of a direct connection to

advertising and selling. Best Film submits that the Court

should grant permission for this Appeal and declare that this

body of law is applicable to this case.

D. If Mere Use of Public Domain Film Clips in Instruc-

tional Videotapes Is Actionable Under § 990, Such a

Ruling Runs Afoul of Preeminent First Amendment

Principles

The use here is in an educational medium and thus one

entitled to full First Amendment protection. As noted in the

previous discussion, where a use of name, image or likeness

occurs in a protected medium of expression, First Amend-

ment concerns further inhibit the scope that is to be afforded

a right of publicity claim. McCarthy’s treatise states:

“The place and context of unpermitted use of per-

sonal identity are crucial. When a defendant is making

unpermitted use of the name of a famous sports figure

on a product like a coffee mug, a claim of first amend-

ment immunity for conveying the ‘message’ — expres-

sing admiration for that person and his or her

accomplishments — rings somewhat hollow.” McCar-

thy, The Rights of Publicity and Privacy, § 7.6[ A] at

p. 7-17.

The direct effect of the District Court’s ruling is to reduce

the videotapes at issue in this case to a “product” like the

coffee mug in Professor McCarthy’s illustration. But this

case does not involve a consumer product such as a coffee

mug, it involves a protected medium of expression. The

distinction is decisive.

A-27

Under California law on the right of publicity, a clear line

is drawn between commercial uses and media uses. Pure

commercial uses e.g., a celebrity’s likeness on a coffee mug

or T-shirt) are clearly subject to a right of publicity claim.

Where the use, however, is reasonably related to the content

of a medium of expression (i.e., book, magazine, videotape

or film), the First Amendment prevents a right of publicity

claim.’ This distinction between commercial uses and media

uses was articulated by the California Supreme Court in the

so-called Lugosi and Valentino cases. In Lugosi (the case

that gave rise iu the enactment of Section 990), the public-

ity claim centered upon the use of Bela Lugosi’s likeness as

Count Dracula on the sale of products such as toy pencil

sharpeners, soap products and the like. Lugosi v. Universal

Pictures, 25 Cal.3d 813, 851, 160 Cal.Rptr. 323, 347 (1979).

The Valentino decision, on the other hand, concerned the

use of silent movie star Rudolph Valentino’s likeness in a

fictional film. Guglielmi vy. Spelling-Goldberg Productions

(“Valentino”), 25 Cal.3d 860, 160 Cal.Rptr. 352 (1979).

The two cases were decided simultaneously and are particu-

larly instructive because of the clear demarcation made by

the Court between a use for a product versus for a medium

of expression.

The majority of the Valentino court, in finding that the

use in Valentino was constitutionally insulated from a right

of publicity claim, clearly articulated the fundamental dif-

ference between the two claims for purposes of the right of

publicity. Significantly, in the present context, the California

Supreme Court did so by defining what is meant by the term

’The only exception would be for “false stories” — wholly inapplica-

ble here.

ee=z.

A-28

“product” and how it is distinguishable from a protected

medium of expression:

“(T]he facts underlying Lugosi v. Universal Pictures,

supra, are substantially different than those in the

present case. Lugosi involved the use of Bela Lugosi’s

likeness in connection with the sale of such commercial

products ‘as plastic toy pencil sharpeners, soap prod-

ucts, target games, candy dispensers and beverage stir-

ring rods.” (/d., 160 Cal.Rptr. at p. 333, 603 P.2d at 435

(dis. opn.).) These objects, unlike notion pictures, are

not vehicles through which ideas and opinions are

regularly disseminated. (See Hicks V. Casablanca

Records, supra, 464 F.Supp. at p. 430.) This case

involves the use of a celebrity’s identity in a constitu-

tionally protected medium of expression, a work of

fiction on film.” Guglielmi v. Spelling-Goldberg Pro-

ductions, 25 Cal.3d 860, 874-75, 160 Cal.Rptr. 352, 361

(1979).

Therefore, the Valentino court concluded that First Amend-

ment concerns precluded a right of publicity claim regarding

mere incorporation of Valentino’s likeness in the film. The

court further held that First Amendment concerns even

prevented a claim for use of his likeness in advertising the

film. The court stated:

“A cause cf action-for the appropriation of Valen-

tino’s right of publicity through the use of his name and

likeness in respondents’ film may not be maintained.

The trial court properly sustained the demurrer and

dismissed the complaint.”

“A similar result is compelled for the use of Valen-

tino's name and likeness in advertisements for the film.

That use was merely an adjunct to the exhibition of the

film. It was not alleged that the advertisements pro-

moted anything but the film. Having established that

A-29

any interest in financial gain: in producing the film did

not affect the constitutional stature of respondents’

undertaking, it is of no moment that the advertisement

may have increased the profitability of the film. It

would be illogical to allow respondents to exhibit the

film but effectively preclude any advance discussion or

promotion of their lawful enterprise. Since the use of

Valentino's name and likeness in the film was not an

actionable infringement of Valentino’s right of public-

ity, the use of his identity in advertisements for the film

is similarly not actionable. Id., 25 Cal.3d 872-73, 160

Cal.Rptr. at 360 (emphasis added).

Courts since Valentino have consistently’ hewed to its First

Amendment distinctions, even where First Amendment

content was questionable. See e.g, Cher V. Forum Int'l,

Lid., 692 F.2d 634 (9th Cir. 1982); Eastwood v. Superior

Court, 149 Cal.App.3d 409, 198 Cal.Rptr. 342 (1983) (both

courts required a showing of falsity related to use after

extensive discussion of First Amendment concerns). Indeed,

even prior to Valentino, the Johnson court protected the

commercial publication of instructional materials from a

right of publicity claim. Johnson vy. Harcourt, Brace, Jova-

novich, supra. Of particular significance, since the Valentino

decision, its distinction between uses on products versus

medium of expression has been consistently upheld. See

Eastwood, Leidholdt, Maheu, Dora, and Joplin.

Most recently, this distinction and deference to First

Amendment concerns has been applied to § 990 in particu-

lar. In Joplin, although ruling that the claim was not

actionable under § 990 because of the absence of any

showing of a direct use for merchandising, advertising, or

endorsement, the court nonetheless stated its conclusion

° A-30

with respect to the “clear direction in which constitutional

law points,” namely that:

“*Tt]}he protection of the right of free expression is so

important that we should not extend any right of

publicity... to give rise to a cause of action against

publication of a... work about a deceased person.’ ”

Joplin Enter. v. Allen, 795 F. Supp. at 352 (quoting

Frosh v. Grosset & Dunlap Inc., 75 A.D.2d 768, 427

N.Y.S.2d 828, 829 (App. Div. 1980) ).

It bears noting that the category of persons who would be

entitled to make such claims would not be limited merely to

entertainers such as Fred Astaire, Charlie Chaplin or Elvis,

it would also potentially include historical figures such as

Dr. Martin Luther King, Jr.

Of course, in this case where it is established that the use

at issue is not only in a medium of expression but also

educational in content (e.g., instructional videotapes), the

use is plainly at the core of the First Amendment and

constitutionally immune from any claim:

“If information on ‘public issues’ is within the core of

strong first amendment protection and immune from

apprepriation privacy and Right of Publicity liability,

then educational and scholarly uses of a person’s iden-

tity clearly must also be immune. Of course, the

qualification must be that there is a reasonable relation-

ship between the person’s identity and the educational

Thus, while the right of publicity has been extended to an historical

figure such as Dr. King, Martin Luther King Center v. Ameiican

Heritage Products, Inc., 250 Ga. 135, 296 S.E.2d 697, 216

U.S.P.Q.(BNA) 711 (1982) (extending the right of publicity to unau-

thorized merchandise — plastic busts — containing the likeness of

Dr. King), it is unimaginable that the right of publicity could be

extended to mere use of Dr. King’s name and likeness in a protected

medium of expression.

Lon >”; zz zzz

A-31

or scholarly message. Since students identify with a

known person, the use of the name or photo of a

celebrity in a text book to illustrate a lesson has real

educational value. The textbook is more saleable, not

because it contains the name or photo of a celebrity per

se, but because that use makes the book a more

effective educational tool. Certainly people active in the

i spheres of politics, economics, science and the arts

must expect their identities to be used without payment

to illustrate the content of books, articles and films

which teach or comment upon those fields.” McCarthy,

The Rights of Publicity and Privacy Section, § 8.8

[B][3] at p. 8-48.

The considerations apply with equal force here. And it

should be noted in this regard that, contrary to what the

court below has implied, the fact of a “commercial use”

(i.e., sale of the videotapes for a profit) has absolutely no

bearing on Respondent’s right of publicity claim any more

than if the claim was being made against The New York

Times or Harcourt, Brace, and Jovanovich. Joseph Burstyn,

Inc. v. Wilson, 343 U.S. 495, 501-502, 72 S.Ct. 777, 780

(1952). The only inquiry on a right of publicity analysis

under the First Amendment is whether the use is reasonably

related to the content of the expression. Eastwood v. Supe-

rior Court, 149 Cal.App.3d 409, 419, 198 Cal.Rptr. 342, 348

(1983). Indeed, this requirement is codified in California

Civil Code § 990(k). In this case, there can be no bona fide

question that the use was directly related to the content of

the instructional videotapes themselves. A brief glimpse of

Fred Astaire dancing in the context of an instructional

| videotape teaching the viewer to dance “the Fred Astaire

Way” bears an obvious relationship to the content of the

instructional materials. Inspirational, aspirational and

instructive in themselves, the film clips underscore the

essential premise with which Fred Astaire Started the Fred

Astaire Dance Studios in the first place: “Learn to dance

A-32

like me.” Images of Fred Astaire dancing bear an obvious

relationship to the videotapes’ instructional content. It

would be plainly contrary to the most fundamental First

Amendment precepts to allow the operation of § 990 to

enable the heirs of a deceased celebrity to effectively censor

the videotapes’ content. But that is precisely the effect of the

lower Court’s ruling.

As the discussion above demonstrates, therefore, the

context in which the public domain film clips were used is

plainly one protected by the First Amendment from any

right of publicity claim. This claim to immunity is only

strengthened by Respondent’s own Section 990 Registra-

tion. In that Registration, Respondent exempts from her

claim to Section 990 rights “the right to franchise and cause

to be operated, dance studios under the name and image’ of

Fred Astaire.” As the Court below has found, the videotapes

at issue are properly part of the operation of the Fred Astaire

Dance Studios.

Accordingly, under plainly established case law, the mere

use of public domain film clips of Fred Astaire in instruc-

tional videotapes is immune from liability under the right of

publicity as a matter of constitutional prerogative. First

Amendment considerations stand, therefore, as a separate

and distinct legal basis upon which Respondent’s right of

publicity claims are precluded.

*“Image” is defined as “an imitation or representation of a person or

thing, drawn, painted, photographed, etc.” Webster's New World Dic-

tionary, Third College Edition (1988).

—

Pe ee

A-33

DETERMINATION OF THE CONTROLLING

| ISSUE OF LAW IN THIS CASE WILL MATERI-

ALLY ADVANCE THE TERMINATION OF THE

LITIGATION

As the foregoing discussion demonstrates, there is a

significant difference of opinion with regard to the rule of

law enunciated by the District Court. It is equally clear that

the determination of this issue at this juncture will materi-

ally advance the termination of this litigation. Indeed, deter-

mination of the issue by this Court is effectively case

dispositive. Either this Court wil] refuse to sanction the

unprecedented per se application of § 990 and end this case

in this Court, or a new legal standard will be enunciated in

which the parties’ respective rights will be definitively

settled.

PLE SRA A Sabena te

Unless this important issue is determined by this Court, it

will lead the Parties into further potentially needless pro-

ceedings in this case that will be so uncertain in their scope

and dimension as to make resolution of this case by settle-

ment impossible and will only necessitate a further appeal of

the question presented in precisely the form in which it is

, presented here. Therefore, Petitioner submits that it does

not make sense to force the Parties to go through the great

costs and expense of a damages trial — which Petitioner

7 estimates will take at least a week of trial time in addition to

pretrial preparation, expert depositions, etc. Again, because

of the unprecedented nature of the ruling of the Court

below, the uncertainty that the Parties will face in such a

damages phase will require an appeal by either Party as a

matter of necessity.

At this juncture, it should also be noted that the Parties

have expended a significant amount of resources over years

of litigation. While much of this litigation has involved

Ronby Corporation and Respondent arguing about the scope

A-34

of license agreements, trademark rights and issues related to

the operation of the Fred Astaire Dance Studios with which

Petitioner has no involvement, Respondent will undoubtedly

claim a broad right to all attorneys’ fees and costs arising

from the § 990 claim that is now the focus of the litigation.

These attorneys’ fees and costs therefore have become a

significant bone of contention, if not the major bone of

contention in this case. Resolution of the issue now before

this Court will fully and finally determine that question at

least in terms of the Parties’ rights and liabilities. This

further demonstrates that hearing this appeal at this junc-

ture will materially advance this litigation and avoid need-

less duplication of resources where it is inevitable that this

case, which now involves only the controlling question

presented here, will have to be decided by this Court in any

event.

vi.

CONCLUSION

For the reasons set forth above, Petitioner respectfully

requests that Petitioner be entitled to pursue an immediate

appeal in this case.

Dated: April 7, 1994 Respectfully submitted,

HEDGES & CALDWELL

A Professional Corporation

GEORGE R. HEDGES

NANCY C. KRAYBILL

BERNARD JOHN BARRETT, JR.

By /s/_ Nancy C. KRAYBILL

Nancy C. Kraybill

Attorneys for Petitioner

Best Film & Video Corp.

No. 94-80135

IN THE UNITED STATES COURT OF APPEALS =

FOR THE NINTH CIRCUIT

BEST FILM VIDEO CorpP., a corporation,

Petitioner,

ROBYN ASTAIRE, an individual,

Respondent.

ANSWER IN OPPOSITION TO PETITION

FOR PERMISSION TO APPEAL

UNDER 28 U.S.C. 1292(b)

APPEAL FROM THE

UNITED STATES DISTRICT COURT

FOR THE CENTRAL DISTRICT OF CALIFORNIA

No. CV 90-0261 KN

(Hon. David V. Kenyon and Hon. Irving Hill)

WILLIAM E. WEGNER

VIVIENNE A. VELLA

GiBSON, DUNN & CRUTCHER

333 South Grand Avenue

Larry L. Simms

THOMAS G. HUNGAR

GiBSON, DUNN & CRUTCHER

1050 Connecticut Ave., N.W.

Los Angeles, California 90071 Washington, D.C. 20036

(213) 229-7000 (202) 955-8500

Attorneys for Respondent

Robyn Astaire

B-2

TABLE OF CONTENTS

Page

py) 2.82 Bee oye sh ee en oye B-2

TABLE GE Aire Cae 6 0 onan he ccgs cewansy B-4

I. INTRODUCTION AND SUMMARY OF

PT 3) LS SAen hare ies Merona agen Be her B-7

il. STATEMENT OF IE CASE «in ccie secs B-8

A. FOCtUAl BOCRRIOURG. ook ieee snseers B-8

er ee ewer Ce B-10

RES, ARRGUFOGIEE 6b kaw nc Je ec sepa iisasen bees B-11

A. An Immediate Appeal Will Not “Materi-

ally Advance The Ultimate Termination”

CE See Le So ss RG eS B-13

1. The Question On Which Best Seeks

Interlocutory Appeal Cannot Dispose

ak Cee GOMOE Srks bene eu ch bwaeowe Ses B-13

2. Interlocutory Appeal Is Inappropriate

Because This Case Is Almost Ready

For Trial And All District Court Pro-

ceedings Could Be Completed With

Little Additional Burden On The Dis-

Ne age Md mL Se Pe eA B-16

3. Immediate Appeal Would Not Materi-

ally Advance The Ultimate Termina-

tion Of The Litigation Because It

Would Substantially Delay The District

Court’s Resolution Of Fhe Case ...... B-18

B. The Challenged District Court Rulings Are

Plainly Correct And Are Not Subject To

“Substantial” Grounds For Differences Of

tO errr re Try eg port ere er B-19

B-3

TABLE OF CONTENTS

Page

1. There Is No Substantial Ground For

Difference Of Opinion With Respect

To The District Court’s Ruling On

Preemption Under The Copyright Act B-20

2. There Is No Substantial Ground For

Difference Of Opinion With Respect

To The District Court’s Interpretation

Of Section 990(n) ( PR Wah es bei acas B-21

3. There Is No Substantial Ground For

Difference Of Opinion With Respect

To The District Court’s Interpretation

Of Section 990(a).........00055.... B-23

4. There Is No Substantial Ground For

Difference Of Opinion With Respect

To The District Court’s Rejection Of

Best’s First Amendment Defense... __. B-25

C. Even If Best Has Satisfied The Statutory

Prerequisites To Certification Of An Inter-

locutory Appeal Under Section 1292(b),

This Court Should Deny Certification In

The Exercise Of Its Discretion .......___ B-26

IV. CONCLUSION

B-4

TABLE OF AUTHORITIES

Cases

Page(s)

Balla v. Idaho State Board of Corrections, 869 F.2d

MOE Cre RED Co ob eco Ae Ree keane sabes B-14

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489

Ji, SE: CAMEOE Chak ARS Kevan BERGA SARS B-20

Cher v. Forum Int'l, Ltd., 692 F.2d 634 (9th Cir.

1982), cert denied, 462 U.S. 1120 (1983)....... B-25

Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S.

ee EE a Rid 8 5 ea Kh ES AP RA a KES B-20

Coopers & Lybrand v. Livesay, 437 U.S. 463

a SOP ees core wed CET eae eee B-12, B-26

Dora v. Frontline Video, Inc., 15 Cal.App.4th 536,

eek ee, ORS) 3 eerie om B-24, B-25

Eastwood v. Superior Court, 149 Cal.App.3d 409,

ey ee ee ey) CRN nan eer ane B-24

Factors Etc., Inc. v. Pro Arts, Inc., 496 F. Supp.

1090 (S.D.N.Y. 1980), rev'd on other grounds,

Ge Be, BE Re Ro PR per roam B-20

Guglielmi v. Spelling-Goldberg Productions, 25

Cal.3d 860, 160 Cal.Rptr. 352 (1979) .......... B-25

In re Cement Antitrust Litigation, 673 F.2d 1020

(9th Cir. 1982), affd sub. nom. Arizona v. Ash

Grove Cement Co., 459 U.S. 1190 (1983) .. B-12, B-26

Johnson v. Harcourt, Brace, Jovanovich, Inc., 43

Cal.App.3d 880, 118 Cal.Rptr. 370 (1974)...... B-24

Joplin Enterprises v. Allen, 795 F. Supp. 349 (W.D.

WOU SOURS So cv cs ca Ve RRs RECN RT ReaD B-25

Kraus v. Board of County Road Commissioners,

DOO Fae SIF COUR CR, TPUOS eck be eek nb ese B-17

Laverne v. Corning, 316 F. Supp. 629 (S.D.N.Y.

ROWE £6 ic wa WER ES PACERS ENA REE Oe es B-17

Leidholdt v. L.F.P. Inc., 860 F.2d 890 (9th Cir.

1988), cert. denied, 489 U.S. 1080 (1989).. B-24, B-25

wes Sy ae

patancaks r AE ee a al ee

oe ee ee ee ee eee eee ee eet

ee ee ee ee

B-5

TABLE OF AUTHORITIES

CASES

Pages

Luria Steel & Trading Corp. v. Ogden Corp., 484

F.2d 1016 (3d Cir. 1973), cert, denied, 414 US.

saath Sy yiiie, FEE EET T ETS PERRO Te Slee amas B-14

Maheu v. CBS, Inc., 201 Cal.App.3d 662, 247

4 cine, ans Meds zg | AOE Pe ee ae B-24

Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir.

ROE Poste Meek cla B-20

Oneida Indian Nation y. County of Oneida, 622

ee CONT B-26

Paschall v. Kansas City Star Co., 605 F.2d 403 (8th

ri ith ACRE EE PE Pe ee eS B-26

Portman v. County of Santa Clara, 995 F.2d 898

CRU Os SOS cee te, ese lee B-27

Price v. Hal Roach Studios, Inc., 400 F. Supp. 836

FOREN APES Css, Gets et B-20

Robbins Co. v. Lawrence Manufacturing Co., 482

Game WOR SOO RAE IUTA. ia cco B-16

Sears, Roebuck & Co. y. Stiffel Co., 376 U.S. 225

Jeg AL ERT CEE ane De eas B-20

Shurance v. Planning Control Intern, Inc., 839 F.2d

Rant APO OS ne sh B-18

United States v. Feeney, 984 F.2d 1053 (9th Cir.

ing, OCF OE EI ene aaa a a nas B-27

United States v. Stanley, 483 U.S. 669 a5 ok ee B-21

United States v. Woodbury, 263 F.2d 784 (9th Cir.

LPR Se rentals ed EA Wat ac oe cack we B-12. B-16

United States Rubber Co. vy. Wright, 359 F.2d 784

(Se Oe Se acai ee oY B-16

Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir.

1992), cert. denied, 113 S. Ct. 1047

OR i AA Ere a es B-15, B-20

B-6

TABLE OF AUTHORITIES

Statutes and Rules

Lanham Act, 15 U.S.C. § 1125(a) .......... B-10, Bis

Ey Re ON 5S cone SGA aE aks Aw es B-20

yo RR 8 Be Et eee ee ae eee gee a re passim

oo pe Me ES bp rene rae B-24

California Civil Code section 990................ passim

California Civil Code section 990(a) ........ B-23, B-24

California Civil Code section 990(f) ............. B-9

California Civil Code section 990(i) ............. B-22

California Civil Code section 990(n)(1) ..... B-21, B-22

California Civil Code section 3344(a)............ B-24

California Civil Code section 3344(d)............ B-24

Ps Wc Fs PC eas tae bow hee bear es ence B-14

Gh Wes PE ED oP bic SEEK wen san B-7

Other Authorities

J.T. McCarthy, Rights of Publicity & Privacy

SGT reer Os CE Pee Med 6 ho ok soo vobeaeee sess B-22

16 C. Wright, A. Miller, E. Cooper, & E.

Gressman, Federal Practice & Procedure § 3930

ela, See SOA AEAE CORE eae a cea earcten ae B-17, B-18

Weinstein, Commercial Appropriation of Name or

Likeness Revisited, 22 Bev. Hills Bar J. 192

ROE Wa hb ha AOU EER Coeba es beats Fuos ben B-22

Annual Report of the Director of the Administrative

Office of the United States (1992) ..........555 B-19

ARTA ita I ile ail Ch alg i Leki eo eS DU.

Ay aagA caine Oech coi Lee

B-7 —

Pursuant to Fed. R. App. P. 5(b), Respondent Robyn

Astaire (“Mrs. Astaire’) respectfully submits this answer in

Opposition to the petition for permission to appeal under 28

U.S.C. § 1292(b) (the Petition”) filed by Best Film &

Video Corporation (‘Best’).

INTRODUCTION AND SUMMARY OF

ARGUMENT

In its Petition, Best seeks an immediate appeal from the

district court’s orders of March 8, 1994, July 17, 1991, and

November 26, 1990 (the “Orders”), establishing Best's

liability under California Civil Code Section 990. Specifi-

cally, Best seeks interlocutory review of the district court’s

determinations that Best’s use of Fred Astaire’s likeness in

videotapes violated Section 990; that Best’s conduct is not

protected by the First Amendment; and that Section 990 is

not preempted by the federal Copyright Act. Best’s Petition

should be denied, because Best has failed to meet its burden

of demonstrating that an extraordinary, immediate appeal

from the Orders is appropriate under the standards set forth

in 28 U.S.C. § 1292(b).

First, Best has failed to establish that an immediate

appeal would “materially advance the ultimate termination”

of this litigation, as required by Section 1292(b). To the

contrary, Best’s Petition would, if granted, serve to ensure

that the district court proceedings in this case (which have

already lasted more than five years) would be delayed for at

least an additional 12-18 months pending briefing, argu-

ment, and decision in this court. This is so because regard-

less of this court’s disposition of the issues raised by Best,

further proceedings would be required in the district court,

and further appeals to this court would almost certainly

ensue. on the other hand, if this court were to deny the

Petition, this case could be tried in a few days in the district

B-8

court, and all relevant issues could then be presented to this

court in a single appeal from a final judgment. In short,

there is little to be gained from forcing this court and

Mrs. Astaire to undergo the burden, inconvenience, and

considerable delay that would result from an interlocutory

appeal, and thus there is no basis for concluding that

immediate review would “materially advance the ultimate

termination” of this case.

In addition, Best has failed to show that “there is substan-

tial ground for, difference of opinion” over the questions on

which Best seeks interlocutory appeal. 28 U.S.C. § 1292(b).

The district court’s rulings accord with settled law and with

the language, purpose, and legislative history of California

Civil Code Section 990. Best is unable to cite any persuasive

authority to the contrary, and thus its Petition should be

denied on that ground as well.

Finally, the Petition should be denied as a matter of this

court’s discretion because this case manifestly does not

present the sort of exceptional circumstances that are gener-

ally required before this court will accept such interlocutory

review under § 1292(b).

Il.

STATEMENT OF THE CASE

A. Factual Background

Respondent Mrs. Astaire is Fred Astaire’s widow. She has

succeeded to all rights in the name, voice, signature, photo-

graph, likeness, and general right of publicity in Fred

Astaire’s persona, including all rights under California civil

Code Section 990. She was granted those rights under the

terms of the Fred Astaire Trust, dated December 31, 1985.

See Plaintiff's Separate Statement of Undisputed Facts and

Conclusions of Law (“Separate Statement’), No. 2. In

addition, she obtained all of Fred Astaire’s show business

Pee ee Sen —_"

B-9

rights pursuant to a written agreement dated April 1988,

which was signed by all of the trustees and beneficiaries of

the Fred Astaire Trust. Separate Statement, No. 3.

Mrs. Astaire has complied with the Statutory registration

requirements contained in California Civil Code Sec-

tion 990(f) by registering her claim with the California

Secretary of State. Separate Statement, No. 4.

Petitioner Best is a New York corporation, engaged in the

business of manufacturing, producing, marketing, distribut-

ing and selling prerecorded video Cassettes throughout the

United States. Separate Statement, No. 7. Ronby Corpora-

tion (“Ronby”) is a Florida corporation which, at the time

this lawsuit was initiated, operated the Fred Astaire

Franchised Dance Studios pursuant to a January 15, 1965

written license agreement and earlier written agreements

with Fred Astaire. Separate Statement, No. 5. The Fred

Astaire Franchised Dance Studios provide dancing instruc-

tion to their students. Separate Statement, No. 6.

Since October of 1989, more than two years after

Mr. Astaire’s death, Best has been distributing video cas-

settes known as the “Fred Astaire Dance Series,” with

individual titles “Swing,” “Top 40,” “Latin Dancing,”

“Ballroom,” and “Country Western Dancing” (the “Video

Cassettes”). Separate Statement, No. 8. The Video Cas-

settes contain photographs of Fred Astaire as well as film

clips of performances of Fred Astaire taken from two of his

films, “Royal Wedding” and “Second Chorus,” which were

released in 1951 and 1941, respectively. Separate Statement,

No. 9.

Best produced, distributes, advertises and markets the

Video Cassettes outside the Ronby dance schools. Separate

Statement, No. 10. As part of its marketing campaign, Best

showed the Video Cassettes in the summer of 1989 at a

trade show attended by 100,000 of its customers, including

its retail buyers and others. Separate Statement, No. 11. In

B-10

addition, Best gave away many copies of the Video Cas-

settes as promotional items to its retail buyers, various

media and others. Separate Statement, No. 12.

Best concedes that it never sought or obtained permission

to utilize the film clips of Fred Astaire in the Video

Cassettes. Separate Statement, No. 14. Nor did Best obtain

permission to utilize the many photographs of Mr. Astaire in

the Video Cassettes. Separate Statement, No. 15.

B. Procedural History

Mrs. Astaire filed this action against Best and Ronby in

December 1989, shortly after Best began distributing the

Video Cassettes containing the film clips and photographs of

Fred Astaire. Mrs. Astaire asserted claims against Best for

misappropriation of her publicity rights under California

Civil Code Section 990; trademark, trade name, and service

mark infringement; unfair competition; and violation of the

Lanham Act, 15 U.S.C. § 1125(a).

In late 1990, the parties filed cross-motions for summary

judgment or partial summary judgment. On November 26,

1990, the district court denied those motions without

prejudice to their renewal before trial. See Minute Order

dated Nov. 26, 1990 (attached hereto as Exhibit A).

On July 17, 1991, the district court granted summary

judgment for Best and Ronby on Mrs. Astaire’s trademark

and unfair competition claims. See Order re Motions for

Summary Judgment, filed July 17, 1991 (“7/17/91

Order’), reproduced at Petition, Exh. C, at 4. The court

also ruled that Mrs. Astaire’s right-of-publicity claim under

California Civil Code Section 990 was not preempted by the

'Mrs. Astaire asserted the same claims, as well as a claim for breach

of contract, against Ronby. Mrs. Astaire and Ronby entered into a

settlement agreement in July 1993, however, and Ronby is no longer a

party to this litigation.

B-11

federal Copyright Act (id. at 2, 3), and that the production

and marketing of the Video Cassettes under Fred Astaire’s

name did not, Standing alone, constitute a violation of

Mrs. Astaire’s right of publicity. /d. at 2; see also Order of

March 8, 1994, reproduced at Petition, Exh. D (“3/8/94

Order”), at 2.

Thereafter, the district court set a trial date of Febru-

ary 15, 1994, and the parties filed new summary judgment

motions. On March 8, 1994, the court granted summary

judgment for Mrs. Astaire, ruling that Best had violated her

rights under Section 990 by using Fred Astaire’s likeness

“on or in products,” namely, the Video Cassettes. 3/8/94

Order at 2-7. The court granted summary judgment for

Best on Mrs. Astaire’s claim that Best had violated her

rights under section 990 by using the film clips and photo-

graphs of Fred Astaire for purposes of advertising or selling,

or soliciting purchases of, products. Jd. at 7-9. The court

rejected Best’s claims that Fred Astaire had waived any

right to control the use of his likeness and that the First

Amendment barred imposition of liability on Best in the

circumstances of this case. Jd. at 9 - 2.

On March 30, 1994, the district court certified its orders

of November 26, 1990, July 17, 1991, and March 11, 1994,

for interlocutory appeal under 28 U.S.C. § 1292(b), and

Stayed all proceedings in the district court. See Order of

March 30, 1994, reproduced at Petition, Exh. A (“3/30/94

Order”). Best thereafter filed its Petition seeking leave to

appeal. Mrs. Astaire did not seek leave of this court to

obtain interlocutory review of any rulings of the district

court.

ITT.

ARGUMENT

Best bears the burden of demonstrating that exceptional

circumstances justify a departure from the basic policy of

B-12

postponing appellate review until after the entry of final

judgment. Coopers & Lybrand v. Livesay, 437 U.S. 463, 475

(1978). First, Best must persuade this court that each of the

certification requirements of 28 U.S.C. § 1292(b) has been

met. Jn re Cement Antitrust Litigation, 673 F.2d 1020, 1026

(9th Cir. 1982), affd sub nom. Arizona vy. Ash Grove

Cement Co., 459 U.S. 1190 (1983). These requirements are

threefold: (1) the challenged order of the district court must

“involve[ ] a controlling question of law”; (2) there must be

“substantial ground for difference of opinion” with respect

to that question; and (3) it must be shown that “an

immediate appeal from the order may materially advance

the ultimate termination of the litigation.” 28 U.S.C.

§ 1292(b).

Second, in addition to satisfying each of the statutory

requirements, Best must demonstrate that this court should,

in the exercise of its discretion under Section 1292(b),

depart from the strong federal policy against piecemeal

appeals: “§ 1292(b) is to be applied sparingly and only in

exceptional cases.” United States v. Woodbury, 263 F.2d

784, 788 n.11 (9th Cir. 1959). See Coopers & Lybrand, 437

U.S. at 475 (only “ ‘exceptional circumstances justify a

departure from the basic policy of postponing appellate

review until after the entry of a final judgment’”’); Jn re

Cement Antitrust Litig., 673 F.2d at 1026 (noting that, even

if petitioner satisfies the requirements of Section 1292(b),

“[ t]he second step in our analysis is... to decide whether,

in the exercise of the discretion granted us by the statute, we

want to accept jurisdiction”).

Best has failed to establish that this proposed appeal

satisfies the certification requirements set forth in Sec-

tion 1292(b). Moreover, even if Best could satisfy those

requirements, the Petition would nonetheless lack merit,

because Best cannot demonstrate the existence of “excep-

tional circumstances” justifying the exercise of this court’s

Siete Altri A INT aC AE AA in Pa Yl DE Ba,

‘eed +.)

B-13

discretion to authorize an interlocutory appeal. Best’s Peti-

tion should therefore be denied

A. An Immediate Appeal Will Not “Materially

Advance The Ultimate Termination” Of This

Litigation

Section 1292(b) permits an interlocutory appeal only

when immediate appellate review “may materially advance

the ultimate termination of the litigation.” 28 U.S.C.

§ 1292(b). For three reasons, Best cannot meet its burden of

demonstrating that its Proposed interlocutory appeal satisfies

this statutory requirement.

1. The Question On Which Best Seeks Interlocutory

Appeal Cannot Dispose Of This Case

In the first place, Best is simply wrong in asserting that

determination of this attempted interlocutory appeal would

be “effectively case dispositive.” Petition at 33. Indeed, that

assertion is belied by Best’s admission (id. at 34) that the

issue of attorney’s fees is “a significant bone of contention, if

not the major bone of contention in this case.” Obviously, if

the issue of attorney’s fees — an issue that is not presented

on this interlocutory appeal — is “the major bone of conten-

tion in this case,” this court cannot dispose of the case on

interlocutory review no matter how it decides the question

that Best seeks to raise on this appeal.

Moreover, interlocutory review at this Stage of the case

could not even dispose of the merits of this litigation. As is

made plain by Best’s phrasing of the question presented by

this interlocutory appeal, Best is asking this court to address

its statutory and constitutional arguments on the assumption

that “there is no use [of Fred Astaire’s likeness] for adver-

tising and selling the videotape.” Petition at 10. That

assumption is based on the district court’s rejection of

Mrs. Astaire’s claim in her summary judgment papers that

B-14

Best used the film clips and photographs for purposes of

advertising, selling, or soliciting purchases of the Video

Cassettes. See 3/8/94 Order at 7 - 9.

Mrs. Astaire respectfully disagrees with the district

court’s ruling in that regard, and reserves the night to

challenge it on appeal from a final judgment in this case.”

Thus, even in the unlikely event that this court were to

agree with Best’s legal arguments on this interlocutory

appeal, it could not finally resolve Mrs. Astaire’s right-of-

publicity claim under California Civil Code Section 990.

Rather, at least one additional appeal — and potentially a

Mrs. Astaire presented substantial evidence demonstrating that Best

used the film clips and photographs of Fred Astaire for the purpose of

selling and advertising, and soliciting purchases of, Best’s products. That

evidence included the following: (1) Best's decision to include the film

clips and photographs in the Video Cassettes to enhance their commer-

cial attractiveness; (2) Best’s admission that the use of the clips and

photographs was not intended to “add to the teaching content of these

videotapes” but was merely “ornamental”; and (3) Best’s president’s

deposition testimony that the Video Cassettes were shown at a trade

show and given away for promotional purposes to retail buyers, various

media, and others. Although Mrs. Astaire may well challenge the

district court’s ruling in this regard in a later appeal, she has not sought

leave to raise the issue at this time under Section 1292(b), and the time

for seeking such leave has now expired. 28 U.S.C. § 1292(b); Fed. R.

App. P. 5(a). Thus, this Court would have no opportunity to address this

issue even if Best were allowed to proceed with an interlocutory appeal.

See Luria Steel & Trading Corp. v. Ogden Corp., 484 F.2d 1016,

1023 - 24 (3d Cir. 1973) (non-appealing party cannot obtain interlocu-

tory appellate review of unfavorable rulings of district court), cert.

denied, 414 U.S. 1158 (1974). Of course, the fact that Mrs. Astaire has

not sought leave to raise this issue now does not in any way limit her

right to raise the issue on appeal from any final judgment that may be

entered in this case. See Balla v. Idaho State Board of Corrections, 869

F.2d 461, 467-68 (9th Cir. 1989) (where party declines to utilize

available opportunity for seeking interlocutory appellate review of dis-

trict court order, the order “ ‘merges in the final judgement and may be

challenged in an appeal from that judgment’ ”’).

B-15

trial as well — would be required before that claim could be

resolved.

Likewise, if this court were to affirm the district court’s

rulings, a remand for a trial on damages would be required,

and Best (or, possibly, Mrs. Astaire) would presumably

bring yet another appeal upon entry of final judgment. Thus,

there is no Possibility that an interlocutory appeal could

result in final resolution of the merits of Mrs. Astaire’s right-

of-publicity claim.‘

* Moreover, the district court did not resolve all of Mrs. Astaire’s

Section 990 claims. In Particular, the district court declined to address

the question whether Best's use of the photographs — as distinct from

the film clips — constitutes a separate violation of Section 990, as

Mrs. Astaire has alleged from the beginning of this lawsuit. See

Complaint, ] 8; 3/8/94 Order at 3 n.1 (“The Court need not consider

the significance of the photos in its analysis of the ‘on or in’ language of

yet entered final judgment with respect to those claims, which present

substantial issues for appeal. For example, the district court rejected

Mrs. Astaire’s Lanham Act claim on the ground that Mrs. Astaire “does

not appear to be a competitor of’ Best (7/17/91 order at 3); the Ninth

Circuit has made clear, however, that a plaintiff in the position of

Mrs. Astaire need not be a competitor of the defendant in order to assert

a Lanham Act claim. See Waits v. Frito-Lay Inc. 978 F.2d 1093,

1109-10 (9th Cir. 1992), cert. denied, 113 S.Ct. 1047 (1993). Of

course, these issues would not be before this Court on Best’s interlocu-

tory appeal, and thus there would be no opportunity for this court to

resolve them in the current posture of the case.

B-16

2. Interlocutory Appeal Is Inappropriate Because This

case Is Almost Ready For Trial And Al! District

Court Proceedings Could Be Completed With Lit-

tle Additional Burden On The District Court

It is settled law that certification of an interlocutory

appeal under Section 1292(b) is inappropriate where the

case has progressed to such a point that proceedings in the

district court could be concluded without unduly burdening

that court. Thus, in United States v. Woodbury, this court

observed that “Section 1292(b) was intended primarily as a

means of expediting litigation by permitting appellate con-

sideration during the early stages of litigation of legal

questions which, if decided in faver of the appellant, would

end the lawsuit.” 263 F.2d at 787 (emphasis added) (foot-

note omitted). Similarly, this court has made clear that

Section 1292(b) certification is available only “in extraordi-

nary cases where decision of an interlocutory appeal might

. avoid protracted and expensive litigation.” United States

Rubber Co. v. Wright, 359 F.2d 784, 785 (9th Cir. 1966)

(emphasis added) (footnote omitted); see Robbins Co. v.

Lawrence Manufacturing Co., 482 F.2d 426, 429 (9th Cir.

1973) (same).

This case is no longer in its “early stages.” To the

contrary, this case has been proceeding since 1989, and all

discovery, except expert depositions and limited damage

discovery, has been completed. Indeed, as late as January of

this year, the trial was scheduled to begin on February 15,

1994, and thus Mrs. Astaire has already prepared her pre-

trial documents (including her memoranda of contentions of

fact and law, motions in limine, exhibit and witness list, jury

instructions and pre-trial conference order), and it is more

than likely that Best has done the same.”

*Indeed, on January 6, 1994, Best and Mrs. Astaire agreed that both

parties’ memoranda of contentions of law and fact, motions in limine,

Bn ea a

B-17

Nor would authorization for an interlocutory appeal serve

to “avoid protracted and expensive litigation” in the district

court.° Even Best suggests that the issue of damages — the

only issue currently remaining for trial — could be tried in a

week (Petition at 33), and the limited nature of that issue

makes it far more likely that the damages phase of this case

could be presented to a jury in only two or three days.

intended to authorize interlocutory appeals in ordinary suits

for personal injuries or wrongful death that can be tried and

disposed of on their merits in a few days”).’ The mere

and the joint exhibit list would be due five business days after entry of

the district court's order on the motions for summary judgment. It is

tion, the scope of such production is extremely limited, and will result in

the production of no more than a handful of documents. For these

reasons, there is no reason to believe that outstanding discovery cannot

be completed in the next one to two months — at the very latest.

"In Laverne y. Corning. 316 F. Supp. 629, 639 (S.D.N.Y. 1970), the

court denied the defendant's application for permission to seek interloc-

utory review of the district court’s order granting summary judgment for

B-18

possibility that the district court might be able to avoid a few

days of trial cannot justify interrupting the orderly progress

of this litigation and imposing on this court the burden of

deciding an additional appeal involving issues that may

ultimately be irrelevant to the final disposition of this case.

3. Immediate Appeal Would Not ‘“Materially

Advance The Ultimate Termination Of The Litiga-

tion” Because It Would Substantially Delay The

District Court’s Resolution of The Case

Yet another reason for concluding that an interlocutory

appeal would not “materially advance the ultimate termina-

tion” of this litigation is the fact that an interlocutory appeal

would substantially delay the district court’s final resolution

of this case. This court has made clear that interlocutory

appeal is inappropriate where the appeal probably would not

be decided before the trial could be completed. In Shurance

v. Planning Control Intern., Inc., 839 F.2d 1347, 1348

(9th Cir. 1988), the court expressly held that an interlocu-

tory appeal would not “materially advance” termination of

the case because “an interlocutory appeal might well have

the effect of delaying the resolution of [the] litigation, for

an appeal probably could not be completed before” the

scheduled trial date. Accord Kraus v. Board of County Road

Commissioners, 364 F.2d at 922; 16 C. Wright, et al.,

Federal Practice & Procedure § 3930, at 165 - 66 (fact that

interlocutory appeal “might well contribute to further delay”

is a “good ground for refusing to certify or accept an

appeal”). The possibility that an interlocutory appeal will

plaintiffs on the issue of liability. The court explained that “since the

only issue remaining is the determination of the quantum of damages to

be awarded plaintiffs, which apparently will not involve expensive and

protracted litigation, there is little reason to believe that permitting an

appeal from this Court's decision will ‘materially advance the ultimate

termination of the litigation.’ ” Jd. (footnote omitted). Laverne’s reason-

ing is equally applicable here.

| ae aw tS DA tite "Ss

eh nd ie S scstat a cpa EE ate

ire heal SI a8 RA ITEAE th pina DBR AL ea

Gol, win aac aI iasiNe

B-19

delay the ultimate disposition of the case is a “particularly

strong ground for denying appeal if certification is sought

from a ruling made shortly before a trial expected to be

brief.” Jd. § 3930, at 166.

As pointed out above, the damages phase of this case

could be tried well before this court would receive briefs on,

much less rule on, an interlocutory appeal. Even assuming

the trial will last one week, this litigation will still be

resolved much sooner if allowed to proceed to trial. The

median time interval in the Ninth Circuit between the filing

of a notice of appeal and final determination is approxi-

mately 15 months. Annual Report of the Director of the

Administrative Office of the United States Courts 15}|

(1992). Therefore, even a one-week trial (for which no

more than two months would be needed to prepare) could

be concluded long before this court would have had the

Opportunity to address the questions on which Best seeks

interlocutory review.

For all the foregoing reasons, this case clearly does not fall

within the category of “protracted” and “exceptional” litiga-

tion for which Section 1292(b) provides an interlocutory

appeal, and Best has not carried its burden of proving that

an immediate appeal would “materially advance the ulti-

mate termination” of this litigation. This court should there-

fore deny Best’s Petition.

B. The Challenged District Court Rulings Are Plainly

Correct And Are Not Subject To “Substantial”

Grounds For Difference Of Opinion

Even if Best could demonstrate that interlocutory review

of the questions it seeks to raise would materially advance

the ultimate termination of this case, interlocutory review

under Section 1292(b), would still be unavailable, because

Best has failed to meet its burden of showing that there is a

“substantial ground for difference of opinion” about the

B-20

correctness of the district court’s Orders. The rulings of the

district court at issue in this case are correct, and thus there

is no basis for interlocutory review under Section 1292(b).

1. There Is No Substantial Ground For Difference of

Opinion With Respect To The District Court’s

Ruling On Preemption Under The Copyright Act

Best’s first contention (Petition at 11-14) is that the

district court erred in holding that Mrs. Astaire’s statutory

right of publicity is not preempted by the federal Copyright

Act, 17 U.S.C. § 301(a).° in support of that contention,

Best relies primarily on Sears, Roebuck & Co. v. Stiffel Co.,

376 U.S. 225 (1964), Compco Corp. v. Day-Brite Lighting,

Inc., 376 U.S. 234 (1964), and their progeny. What Best

ignores, however, is the fact that the Supreme Court has

since retreated from the “broad pre-emptive principle” of

Sears and Compco. See Waits v. Frito-Lay, Inc., 978 F.2d

1093, 1099 (9th Cir. 1992) (discussing decision in Bonito

Boats, Inc. v. Thunder Craft Boats, Inc. 489 US.

141 (1989)), cert, denied, 113 S. Ct. 1047 (1993).

Moreover, Best neglects to point out that this court has

already rejected arguments analogous to the one that Best

seeks to raise here. See Waits, 978 F.2d 1099 - 100; Midler

v. Ford Motor Co.,849 F.2d 460, 462 (9th Cir. 1988).? In

Waits, for example, this court noted that the legislative

history of the Copyright Act reveals Congress’s intent that

*Best’s preemption argument relates solely to the use of the film clips.

Best does not and cannot contend that all of the photographs of Fred

Astaire included in the Video Cassettes are in the public domain, and

thus Best’s preemption argument provides no defense to Mrs. Astaire’s

claim regarding Best’s use of the photographs. Mrs. Astaire’s claim in

that regard, of course, has yet to be decided. See supra at 10 n.3.

*Other courts have reached the same conclusion. See, e.g., Factors

Etc., Inc, v. Pro Arts Inc., 496 F. Supp. 1090, 1100 (S.D.N.Y. 1980),

rev'd on other grounds, 652 F.2d 278 (2d Cir. 1981); Price v. Hal Roach

Studios, Inc.,400 F. Supp. 836, 842-43 (S.D.N.Y. 1975).

See ee

ate eg te

B-21

the right of publicity and similar state-law Causes of action

““‘remain unaffected [by the Copyright Act] as long as

th{os]e causes of action contain elements, such as an

invasion of personal rights .. . that are different in kind from

added) (citation omitted). Here, as in Waits, the right-of-

publicity claim “is one for invasion of a personal property

right,” and thus it is not preempted. Jd.'°

2. There Is No Substantial Ground For Difference Of

Opinion With Respect To The District Court’s

Interpretation Of Section 990(n) (1)

Best next contends that the district court erred in

rejecting Best’s defense based on California Civil Code

Section 990(n) (1), which provides that Section 990 “shall

not apply to the use of a deceased personality’s . . . likeness,

in... fa)... im... or television program, other than an

advertisement or commercial announcement ...”"' That

Best appears to contend (Petition at 14) ibat the preemption

analysis in this case is affected by the district court’s ruling that Best did

district court erred in rejecting the evidence of use in advertising, selling,

and solicitation, and she reserves the right to seek appellate review of

that ruling after entry of final judgment. Thus, the issue as framed by

Best may never require decision by this court.

It is open to question whether this court would have jurisdiction to

consider the Section 990(n)(1) issue on an interlocutory appeal. Juris-

diction under 28 U.S.C. § 1292(b) is “confined to the particular order

appealed from,” and thus “ ‘the court of appeals will not consider

matters that were ruled upon in other orders.’ ” United States y. Stanley,

483 U.S. 669, 677 (1987) (citation omitted). While Judge Hill, who

initially presided over this case, did indicate a tentative view with respect

to the Section 990(n)(1) issue at the summary judgment hearing on

November 26, 1990 (see Petition, Exh. B, at 29 (declining “‘at least at

this movement [sic}” to read Section 990(n) as Best urges), he did not

B-22

contention ignores the fact that Best used the film clips and

photographs at issue in this case in videotapes, which are

neither “film[s]” nor “television program[s]” within the

express language of the statute. When the California Legis-

lature intended to include videotapes within the scope of

other terms used in Section 990, it did so expressly. See Cal.

Civ. Code § 990(i) (defining “photograph” to include “any

video tape or live television transmission”) (emphasis

added).

In any event, even if videotapes were subject to the

provisions of Section 990(n)(1), Best’s argument would

lack merit. Although the California courts have not yet had

occasion to address the issue, leading commentators have

concluded that Section 990(n)(1) was intended to exempt

“biographies, or accounts from events in the lives, of

deceased personalities ...” Weinstein, Commercial Appro-

priation of Name or Likeness Revisited, 22 Bev. Hills Bar J.

192, 214 (1988); see also J.T. McCarthy, Rights of Public-

ity & Privacy § 6.4[F][3][b] (1994). That interpretation is

plainly correct; as the district court indicated, Best’s con-

trary interpretation would eviscerate the cause of action

recognized in section 990(a). See 11/19/93 Order at 2 n.1.

The district correctly harmonized subsections (a) and

purport to resolve that issue in his November 26, 1990, minute order

(attached hereto as Exhibit A), and instead indicated that the denial of

Best's summary judgment motion was “without prejudice to similar

motions” made later. Judge Kenyon expressly rejected Best’s Sec-

tion 990(n)(1) defense in a minute order dated November 19, 1993

(“11/19/93 Order”) (reproduced at Petition, Exh. E, at 2 n.1), but the

district court did not certify that order for interlocutory appeal under

28 U.S.C. § 1292(b). 3/30/94 Order at |. To be sure, the district court

also referred to the Section 990(n) (1) issue in its 3/8/94 Order (which

the court did certify for interlocutory appeal), but only to indicate that

the court had “already expressed its view” on that subject. 3/8/94 Order

at 10 n.8.

B-23

(n)(1), while Best would ask this court to excise a Critical

part of the former from the statute.'2

3. There Is No Substantial Ground For Difference Of

Opinion With Respect To The District Court’s

Interpretation Of Section 990(a)

Section 990(a) imposes liability on “[a]ny person who

uses a deceased personality’s name, voice, signature, photo-

graph, or likeness, in any manner, on or in products, mer-

chandise, or goods, or for purposes of advertising or Selling,

or soliciting purchases of, products, merchandise, goods, or

services, without prior consent ...” Cal. Civ. Code § 990(a)

(emphasis added). The plain, unambiguous language of that

provision requires rejection of Best’s claim that the use of a

celebrity’s likeness “on or in products” is not actionable

unless the use is “directly connected to advertising or

selling.” Petition at 16.'3 In effect, Best seeks to read out of

the statute the cause of action for use “on or in products,”

but the statute’s text and legislative history, as well as

"Once again, Best's argument in this regard rests in part on the

assumption that the district court Properly rejected Mrs. Astaire’s claim

that Best used the film clips and photographs for Purposes of advertising

or selling, or soliciting purchases of, the Video Cassettes. See Petition at

15 (asserting that “[a]pplication of the [Section 990(n)(1)]} exception

here is even clearer because the District Court in this case has found

~ B-24

fundamental canons of statutory construction, forbid such a

result. See 3/8/94 Order at 2-7.

In support of its countertextual reading of Sec-

tion 990(a), Best cites numerous California cases construing

California Civil Code Section 3344(a), the statute gov-

erning right-of-publicity claims by living celebrities. What

Best understandably fails to point out to this court in its

Petition, however, is that Section 3344(a) did not include a

cause of action for the use of celebrity likenesses “on or in

products” until 1984, when it was amended to bring its

language into conformity with Section 990(a). See 1984

Cal. Stat., ch. 1704, § 2. Prior to that date, Section 3344(a)

authorized suit only where a celebrity’s name or likeness was

used for the purpose of advertising or soliciting purchases.

Thus, the pre-1984 authorities on which Best relies —

Eastwood v. Superior Court, 149 Cal.App.3d 409, 19°

Cal.Rptr. 342 (1983); Johnson v. Harcourt, Brace, Jova-

novich, Inc., 43 Cal.App.3d 880, 118 Cal.Rptr. 370 (1974),

and their progeny — are wholly inapposite.'* In the absence

'*None of the post-1984 California cases cited by Best involves the

question at issue here. Maheu v. CBS, Inc., 201 Cal.App.3d 662,

676 - 77, 247 Cal.Rptr. 304 (1988), for example, involved the meaning

of the statutory exemption for news accounts (California Civil Code

Section 3344(d)), and provided no opportunity for the court to address

the scope of liability under the “uses...on or in products” prong of

Section 3344(a). Similarly, in Dora v. Frontline Video, Inc.,

15 Cal.App.4th 536, 544-46, 18 Cal.Rptr.2d 790 (1993), the court

held that a documentary about surfing qualified as a “public affairs .. .

account” within the meaning of the Section 3344(d) exemption, but did

not purport to address the question whether the use of a celebrity's

likeness “‘on or in products” is actionable in the absence of a use for the

purpose of advertising, selling, or solicitation. Finally, in Leidholdt v.

L.F.P. Inc., 860 F.2d 890, 895 (9th Cir. 1988), cert. denied, 489 U.S.

1080 (1989), this court held that a magazine's use of the plaintiff's

likeness to accompany an article expressing the magazine’s “opinions in

the pornography debate” fell within the Section 3344(d) exemption for

uses in “ ‘any news [or] public affairs... account.’ ” The court did not

B-25

of contrary California authority, the district court did not err

in construing the statute in accordance with its language,

legislative history, and governing canons of construction.

4. There Is No Substantial Group For Difference Of

Opinion With Respect To The District Court's

Rejection Of Best’s First Amendment Defense

Finally, Best contends that the First Amendment shields

Best from any liability for its use of the film clips and

photographs because the Video Cassettes constitute “an

educational medium” of expression and the use of the clips

and photographs was “reasonably related to the content of

th[at] expression.” Petition at 24, 31. As the district court

held, however, Best previously conceded that “ ‘[t]he intro-

ductory use of brief ornamental dance sequences involving

Fred Astaire and other dancers did not add to the teaching

content of these videotapes.” 3/8/94 order at || (emphasis

added). Thus, Best is estopped from making a contrary

argument here.

In any event, even if Best had not already conceded away

this purported First Amendment defense, that defense

would have no merit in the circumstances of this case.

While courts have consistently held that the First Amend-

ment protects the use of a celebrity’s name or likeness in

connection with the dissemination of legitimate news, bio-

graphical information, or fiction about the celebrity,'* those

cases provide no defense for Best’s conduct here. The Video

discuss the elements of a cause of action for unauthorized uses “‘on or in

products,” and thus Leidholdt is inapposite.

'S See, e.g., Leidholdt v. L.F.P., Inc., 860 F.2d. 890 (9th Cir. 1988),

cert. denied, 489 U.S. 1080 (1989); Cher v. Forum Int'l, Lid., 692 F.2d

634 (9th Cir. 1982), cert. denied, 462 U.S. 1120 (1983); Joplin

Enterprises v. Allen, 795 F. Supp. 349 (W.D. Wash. 1992); Guglielmi y.

Spelling-Goldberg Productions, 25 Cal.3d 860, 862, 160 Cal.Rptr. 352

(1979) (Bird, C.J., concurring); Dora vy. Frontline Video,

Inc.,15 Cal.App.4th 536, 18 Cal.Rptr.2d 790 (1993).

B-26

Cassettes do not convey news or biographical information

about Fred Astaire, nor do they offer a fictional account of

his life. Instead, they merely exploit his likeness and reputa-

tion in the context of a “How To” recreational videotape

series. Best can point to no authority for the proposition that

the First Amendment precludes imposition of liability in

those circumstances.

C. Even If Best Has Satisfied The Statutory Prerequi-

sites To Certification Of An Interlocutory Appeal

Under Section 1292(B), This Court Should Deny

Certification In The Exercise Of Its Discretion

Even if a party seeking permission to bring an interlocu-

tory appeal satisfies its burden of demonstrating the statu-

tory prerequisites set forth in Section 1292(b), the court of

appeals retains discretion to deny permission to appeal “for

any reason.”’ Coopers & Lybrand v. Livesay, 437 U.S. 463,

475 (1978); see In re Cement Antitrust Litigation, 673 F.2d

at 1026; Shurance, 839 F.2d at 1348-49. For all of the

reasons set forth above, this court should refuse to permit an

interlocutory appeal under the circumstances of this case.

Indeed, this case provides a textbook example of the

wisdom of the general rule against piecemeal adjudication of

appeals. As noted above, Best is asking this court to decide

what may well turn out to be an entirely hypothetical

question, namely, whether a claim for infringement of the

right of publicity is viable “where there is no use for

advertising and selling.” Petition at 10. In similar circum-

stances, other courts of appeals have properly declined to

accept interlocutory appeals seeking what amount to advi-

sory opinions on questions that may never need to be

decided. See, e.g. Oneida Indian Nation v. County of

Oneida, 622 F.2d 624, 628,(2d Cir. 1980) (“Because the

premise of the certified question may be destroyed [on a

future appeal], it is not yet ripe for review’); Paschall v.

A EET mE tie 8

a Ne ee er ae ae

B-27

Kansas City Star Co., 605 F.2d 403, 406 (8th Cir. 1979)

(“[t]he purpose of section 1292(b) is not to offer advisory

Opinions”), Particularly in view of this court’s general policy

against unnecessarily addressing constitutional questions

(see, e.g., Portman vy. County of Santa Clara, 995 F.2d 898,

906 - 07 (9th Cir. 1993); United States y. Feeney, 984 F.2d

1053, 1056 (9th Cir. 1993)), interlocutory review should be

denied.

IV,

CONCLUSION

Best cannot meet its burden of satisfying the prerequisites

to interlocutory appeal under 28 U.S.C. § 1292(b). The

present status of this litigation, the limited issue remaining

to be tried, and the congested nature of this court’s docket

demonstrate that an immediate appeal would delay, not

“materially advance,” the ultimate termination of this law-

Suit. Moreover, the Orders were well-grounded in law and

are not subject to “substantial” grounds for difference of

opinion. Mrs. Astaire therefore asks that this court deny

Best’s Petition so that this litigation can proceed to a speedy

resolution on the district court. Once there is a final judg-

ment in that court, the parties will be in a position either to

B-28

settle this litigation or exercise their statutory right of appeal

to this court.

Dated: April 14, 1994

Respectfuily submitted,

WILLIAM E. WEGNER

VIVIENNE A. VELLA

GIBSON, DUNN & CRUTCHER

333 South Grand Avenue

Los Angeles, California 90071

(213) 229-7000

LARRY L. SIMMS

THOMAS G. HUNGAR

GIBSON, DUNN & CRUTCHER

1050 Connecticut Ave., N.W.

Washington, D.C. 20036

(202) 955-8500

By: /s/_ THOMAS G. HUNGAR

Thomas G. Hungar

Attorneys for Respondent

Robyn Astaire

B-29

CENTRAL DISTRICT OF CALIFORNIA

B-33

CIVIL MINUTES — GENERAL

Date 11/26/90

CV-90-0261-IH

Robyn Astaire vs, Ronby Corporation, et al

Hon. IRvING HILL

Judge

R. H. MAzZZARELLA

Deputy Clerk

CANDEE MARSH

Count Reporter

ATTORNEYS PRESENT FOR PLAINTIFFS:

Joseph F. Hart

ATTORNEYS PRESENT FOR DEFENDANTS:

Bruce Cohen

Carl I. Kaminsky

Sor Best Film & Video

Carl Hoffman

for Ronby Corp.

PROCEEDINGS:

HEARING: Plaintiff’s Motion for Partial Summary

Judgment

Defendants, Motions for Summary Judgment

Court hears oral argument and denies each defendants’,

motion for summary judgment having found bona fide

disputes of material fact and that each defendant has_not

shown entitlement to judgment as a matter of law.

As to plaintiff's motion for partial summary judgment, the

Court denies said motion on the same grounds and alterna-

B-30

tively, the Court exercises its discretionary authority to

decline.

All rulings are without prejudice to similar motions being

made in limine prior to trial.

With consent of the parties, the Court orders the protec-

tive order lifted except as to the will and trust agreement.

Court re-sets the Pretrial Conference on 1/28/91 at

10:00 A.M. and the __ day Jury Trial on 2/19/91 at

9:30 A.M.

Initials of Deputy Clerk

/s/ RHM

CERTIFICATE OF SERVICE

I hereby certify that on this 13th day of Aprii 1994, I

caused a copy of the foregoing Answer in Opposition to

Petition for Permission to Appeal Under 28 U.S.C. 1292(b)

to be mailed, postage prepaid, to:

GEORGE HEDGES, Esq.

Nancy C. KRAYBILL, Esq.

BERNARD JOHN BARRETT

606 South Olive Street

Suite 500

Los Angeles, CA 90014-1507

/s/_ THOMAS G. HUNGAR

Thomas G. Hungar

C-|

94-80135

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

ROBYN ASTAIRE, AN INDIVIDUAL,

Plaintiff-Respondent,

vs.

BEST FILM & VIDEO Corp.,

Defendant-Petitioner.

DC# CV-90-00261-KN

Central California

(Los Angeles)

U.S. COURT OF APPEALS

FILED

May 31, 1994

Cathy A. Catterson, Clerk

Before: HUG and FERNANDEZ, Circuit Judges

ORDER

The petition for permission to appeal pursuant to

28 U.S.C. § 1292(b) is denied.

D-1

NOT FOR PUBLICATION

No. 95-56632

No. 95-56633

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

ROBYN ASTAIRE,

Plaintiff-Appellee,

Vs.

BEST FILM & VIDEO Corp.

Defendant-Appellant.

D.C. No. CV-90-00261-KN-A

ROBYN ASTAIRE,

Plaintiff-Appellee,

VS.

BEST FILM & VIDEO Corp.

Defendant-Appellant.

D.C. No. CV-90-00261-KN-A

U.S. Court of Appeals

Filed February 25, 1998

Cathy A. Catterson, Clerk

Before: SCHROEDER, WIGGINS, LEAVY, Circuit

Judges.

ORDER

Judges Wiggins and Leavy vote to deny the petition for

rehearing and recommend rejection of the suggestion for

renearing en banc. Judge Schroeder votes to grant the

petition for rehearing and accept the suggestion for rehear-

ing en banc.

D-2

The full court has been advised of the suggestion for

rehearing en banc,and no judge has requested a vote on the

suggestion for rehearing en banc. Fed. R. App. P. 35(b).

The petition for rehearing is denied and the suggestion for

rehearing en banc is rejected.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.