By Scott Hervey

Licensing attorneys should take note of the recent decision by the Central District of California in Jason Bitzer v. Body Glove Int’l et al. In this case, Body Glove licensed its trademark to Sport Dimension who manufactures bodyboards. Sports Dimension allegedly had the permission to use the likeness of professional bodyboarder Jason Bitzer on merchandise, including bodyboards. Body Glove separately had a sponsorship agreement with Bitzer which gave Body Glove the right to use Bitzer’s likeness in certain circumstances. Sport Dimension manufactured bodyboards containing Bitzer’s image and Body Glove’s trademark. Body Glove now faces potential liability for the alleged misappropriation of Bitzer’s likeness due to its use on the bodyboards.

Sports Dimension argues that it entered into an agreement with Bitzer to have Bitzer promote Sport Dimension products as a sales representative, and this agreement gave it the right to use Bitzer’s image on various Sport Dimension products such as bodyboards. Sport Dimension claimed that this agreement included the Body Glove branded bodyboards. Bitzer claimed that the agreement did not grant Sport Dimension that right and that Sport Dimension and Body Glove violated California Civil Code Section 3344.

California Civil Code Section 3344 provides, in pertinent part:

(a) Any person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent, or, in the case of a minor, the prior consent of his parent or legal guardian, shall be liable for any damages sustained by the person or persons injured as a result thereof. 

To sustain a cause of action under this section, a plaintiff must prove (1) the defendant’s use of the plaintiff’s identity, (2) the appropriation of the plaintiff’s name or likeness to the defendant’s advantage, commercially or otherwise, (3) lack of consent, and (4) resulting injury. As the Central District previously held in Butler v. Target Corp., section 3344 provides a statutory remedy for this cause of action, but requires that a plaintiff prove a knowing use by the defendant and a direct connection between the alleged use and the commercial purpose, in addition to all the elements of the common law cause of action.  

In its rather brief motion for summary judgment, Body Glove argued that as a mere licensor of its trademark to Sport Dimension, it did not violate section 3344. Body Glove claimed that it had no involvement in the use of Bitzer’s likeness on the Body Glove branded bodyboards and relied on LA Gear, Inc. v. E.S. Originals, Inc.

In LA Gear, Inc., ES Originals, a manufacturer and distributor of athletic shoes, had entered into an agreement with Voit Sports in which Voit granted ES a license to use Voit’s registered trademark on athletic shoes.   At some point in time, ES began manufacturing and selling a new style of athletic shoe which incorporated flashing lights and affixed Voit’s mark to some of these new styles of shoes.   There was no evidence that Voit encouraged ES to initiate a line of lighted shoes, or that Voit assisted ES in developing the designs for the lighted shoes. ES never sent samples of the lighted styles to Voit prior to ES commencing its sales and distribution efforts. 

LA Gear filed a complaint alleging a single claim for patent infringement against ES, Voit and others, alleging that the flashing light shoes infringed one of LA Gear’s patents.  LA Gear named as defendants Dayton Hudson Corp., Wal-Mart Stores, Inc., and Montgomery Ward & Co., Inc., retailers of the allegedly infringing shoes, as well as Voit and Sasson Licensing Corp., entities who licensed ES the right to use their trademarks on the accused flashing light shoes.

In addressing Voit’s motion for summary judgment, the court noted that direct patent infringement occurs when someone "without authority makes, uses or sells any patented invention within the United States during the term of the patent therefor."  35 U.S.C. § 271(a). LA Gear, however, did not claim that Voit "made" or "sold" any of the allegedly infringing lighted shoes. Accordingly, the question before the court was whether a reasonable jury could determine from the evidence that Voit "used" the accused shoes. LA Gear contended that Voit "used" the accused shoes, thereby directly infringing the patent, by (i) receiving samples of the accused shoes; and (ii) evaluating and monitoring the shoes as part of Voit’s trademark quality control responsibilities."

The court found that Voit could not be held liable for direct patent infringement for merely receiving samples of the shoes. As a matter of law the mere possession of a product or machine covered by a patent does not constitute infringement, absent a "threatened or contemplated" use or sale. 

Similarly, the court found that Voit could not be held liable for direct infringement as a result of it evaluating and monitoring the shoes as part of Voit’s trademark quality control responsibilities. The facts demonstrated that Voit received samples of the accused shoes at or soon after the time sales commenced. The court stated that without evidence of something more, conduct of this type is insufficient to sustain a claim of direct infringement. As a matter of law, merely observing an allegedly infringing device, demonstrating that device, or observing a demonstration of that device, does not constitute a "use" of that device.

Body Glove sought to rely on the court’s holding in LA Gear for the proposition that as a mere licensor of its mark to Sport Dimension – the party responsible for manufacturing and selling the bodyboards at issue – it could not be liable for misappropriation under California Civil Code Section 3344.  In its motion for summary judgment, Body Glove argued that LA Gear, Inc. stands for the proposition that a licensor who has no involvement in the production of a product that infringes a patent is not liable, and that this holding (in a patent infringement case) applicable in the instant (misappropriation of likeness) case. 

The interesting twist in the instant case is the sponsorship agreement between Bitzer and Body Glove. Contrary to Sport Dimension’s assertion that the use of Bitzer’s likeness was based on consent he gave to Sport Dimension, in his opposition to the defendants’ motion for summary judgment, Bitzer argued that the sponsorship agreement with Body Glove defined the parameters of the defendants’ relationship with Bitzer. The plaintiff argued that unlike Voit, Body Glove was intimately involved in the use of Bitzer’s image, and while Voit did not know about the offending conduct regarding the shoes until at or after the shoes were commercially distributed, Body Glove knew about the use of Bitzer’s image on the body boards well prior their commercial release. The plaintiff further argued that unlike Voit, Body Glove actively promoted the bodyboards.

The court neither dismissed nor accepted Body Glove’s argument that the holding in LA Gear could be extrapolated to claims of misappropriation of likeness. However, the court did state that there is ample evidence in the record that Body Glove was "involved in the alleged misappropriation" to the degree misappropriation occurred, and that Body Glove cannot escape liability simply because it did not actually manufacture or directly sell the bodyboards.  

If Sport Dimension argued that it acquired the right to use Bitzer’s likeness as a sub-licensee of rights under the sponsorship agreement between Body Glove and Bitzer it would make sense to deny Body Glove’s motion for summary judgment.   However, the defendants’ moving papers argue that Bitzer gave consent to the use of his likeness directly to Sport Dimension; they do not rely on the sponsorship agreement between Body Glove and Bitzer. The plaintiff appears to have been able to use to its advantage Body Glove’s actions under the quality control and joint marketing provisions that were presumably in the license agreement between Body Glove and Sport Dimension. This should give all licensors pause. Body Glove’s "involvement" in the alleged infringement appears to be founded on its exercise of standard rights and responsibilities in the license agreement between it and Sport Dimension. Body Glove may face potential liability for Sport Dimension’s misappropriation solely because it followed the terms its license agreement with Sport Dimension.