Buddy Webster v. Dean Guitars

2020 | Cited 0 times | Eleventh Circuit | April 16, 2020

[PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT ________________________

No. 19-10013 ________________________

D.C. Docket No. 8:17-cv-01795-WFJ-CPT

BUDDY WEBSTER, p.k.a. Buddy Blaze,

Plaintiff-Appellant,

versus

DEAN GUITARS, ARMADILLO ENTERPRISES, INC., ARMADILLO DISTRIBUTION ENTERPRISES, INC., ESTATE OF DIMEBAG DARRELL ABBOTT, an unknown entity, DOES, 7-10 inclusive, et al.,

Defendants-Appellees,

WAL-MART STORES, INC.,

Defendant.

________________________

Appeal from the United States District Court for the Middle District of Florida ________________________

(April 16, 2020)

Before WILSON, BRANCH, and JULIE CARNES, Circuit Judges.

WILSON, Circuit Judge:

This case concerns the alleged copyright infringement of a lightning storm

graphic that originally appeared on the guitar of Darrell Abbott, late guitarist of the

heavy-metal band Pantera. The Appellant Buddy Webster, a successful guitar

maker and technician, designed Abbott’s guitar in the mid-1980s and

commissioned someone to paint the lightning storm graphic on it. Since 2004,

guitar producer Dean Guitars (Dean) has produced and sold guitar models based on

Abbott’s guitar and featuring the lightning storm graphic, without Webster’s

consent and without paying him royalties for the use of the design.

In 2017, after a decade of being displeased with Dean’s reproduction of

Abbott’s guitar and the lightning storm graphic, Webster sued Dean and several

others (collectively, Appellees) in federal district court, alleging, as relevant to this

appeal, copyright infringement, unfair competition, and false endorsement. The

district court granted summary judgment in favor of the Appellees on all claims.

On appeal, Webster argues that the district court erred when it concluded that

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(1) his copyright infringement claim was actually a claim of copyright ownership

and was time-barred; (2) his unfair competition claims failed because the

statements underlying those claims were not false or misleading; and (3) his false

endorsement claim failed because he did not present evidence of a likelihood of

consumer confusion. After reviewing the record and the parties’ briefs, and with

the benefit of oral argument, we affirm the district court.

I.

A. FACTUAL BACKGROUND

Buddy Webster is a guitar maker and technician who goes by the name

“Buddy Blaze.” In 1985, he modified a Dean ML guitar, produced by Dean, and

paid someone to paint a lightning storm graphic on the guitar. In 1987, Webster

gave the guitar to his friend Darrell Abbott. Abbott later became a successful

guitarist in the band Pantera. Abbott called the guitar “The Dean from Hell”

(DFH). In 2004, Abbott entered an endorsement-type contract with Dean. But in

December of that year, he was shot and murdered on stage by a deranged fan.

Around the time of Abbott’s death, Dean started selling reissues of the DFH

guitar. Webster first learned about the sales of the reissues in December 2004.

Dean never asked Webster for his permission to sell the reissues, and Webster

never approved of the sales. In 2006, Webster learned that Dean was selling a

cheaper, imported version of the DFH called the Cowboy from Hell. Webster was

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unhappy that Dean was selling these two versions of the DFH, so, in 2006, he

emailed then CEO of Dean, Elliot Rubinson, and expressed his displeasure.

Webster told Rubinson that Dean could not sell the reissues without his

permission; Dean did not stop selling the guitars.

In April 2007, Webster contacted Rubinson again and expressed his

concerns about the guitar sales. Rubinson responded by email, stating

I have taken some time and spoken to several “people in the know” and the consensus concerning [the lightning storm graphic] is that [Abbott’s] estate is the legal owner of it. With that said, I still would like to work with you on [an Abbott] project because I am not about making enemies but keeping friends.

Rubinson also stated, “Rita and I have plans to do a relic [DFH] and would like

you involved for a royalty. Is that of interest?” Webster testified that he called

Rubinson after he read the email, and Rubinson suggested that he sue Abbott’s

estate if he was still upset. Rubinson had never paid Webster royalties for the DFH

reissues and continued to pay royalties to Abbott’s estate.

Despite Webster’s displeasure with Dean’s production and sale of the DFH

reissues, he worked with Dean in 2009 to create and sell his own signature guitar

model—the “Buddy Blaze ML.” He also willingly appeared in multiple interviews

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in 2008 and 2009 discussing his role in the history of the original DFH.1 Dean

used videos of some of these interviews and posted them to its YouTube channel.

The first video is an interview of Webster at the 2008 National Association of

Music Merchants (NAMM) tradeshow, in which he is standing in front of the

original DFH recounting its history. In the second video, Webster appears in an

interview alongside Rubinson at the 2009 NAMM show, promoting the Buddy

Blaze ML, speaking about the history of the original DFH, and comparing his

Buddy Blaze ML model with the DFH. The third video is a similar interview of

Webster at the 2009 NAMM show. It shows him describing the Buddy Blaze ML

and referring to Abbott and the DFH. The DFH reissues are not mentioned in the

videos.

From 2009 to 2015, Dean released several other versions of the DFH. In

2009, Webster learned that Dean was marketing and selling a new version of the

DFH known as the “Rust from Hell.” Dean then released a guitar featuring the

lightning storm graphic called the “Black Bolt.” Finally, in 2015, Dean issued the

1 In addition, Webster maintains the following information about the DFH and the Buddy Blaze ML on his website:

Buddy is also the creator of the legendary “Dean From Hell”. Buddy totally reinvented his previously maroon colored 1981 Dean ML, later giving it to his close friend “Dimebag” Darrell Abbott. Lightning struck twice in 2009 when Buddy collaborated with Dean Guitars to launch the Buddy Blaze Signature Dean ML!

History, BUDDY BLAZE U.S.A., http://www.buddyblaze.com/history/ (last visited March 20, 2020). 5

“Limited USA Dean from Hell.” Webster claimed that he “had finally had

enough” at this point, and, in 2016, he retained counsel and obtained a copyright

registration in the lightning storm graphic.

B. PROCEDURAL BACKGROUND

In April 2017, Webster filed suit in the U.S District Court for the Central

District of California against Dean and several others. In July 2017, the court

granted a motion by some of the defendants to transfer venue to the Middle District

of Florida. Relevant to this appeal, Webster alleged copyright infringement, based

on Dean’s sale of the DFH reissues; and unfair competition under the Lanham Act,

Florida common law, and California statutory law, based on Dean making

misleading representations to cause confusion about the connection between Dean,

Webster, and Webster’s approval or sponsorship of the DFH reissues. 2 Webster

and the Appellees filed cross motions for summary judgment.

The district court granted summary judgment in favor of the Appellees on all

claims and denied Webster’s motion for summary judgment as moot. The court

decided that Webster’s copyright infringement claim was time-barred because the

claim accrued more than three years before Webster filed suit. In doing so, the

court first concluded that the “gravamen” of Webster’s claim of copyright

2 Webster also asserted claims under Texas law of invasion of privacy and civil conspiracy, but he does not appeal the district court’s grant of summary judgment in favor of the Appellees on those claims. 6

infringement was ownership. It stated that this Circuit had not defined the point of

accrual for a copyright ownership claim, but explained that other circuits followed

one of two tests for determining the accrual of such claims: in some circuits, an

ownership claim accrues when ownership is expressly repudiated to the claimant;

and in others, a claim accrues when the plaintiff learns, or should as a reasonable

person learn, that the defendant is violating his rights. Ultimately, the court

concluded that Webster’s claim was time-barred under either test. The court

further concluded that because Webster’s copyright ownership claim was

time-barred, any remaining infringement claim was also time-barred.

Next, the court addressed Webster’s unfair competition claims. It explained

that § 41(a) of the Lanham Act provides two bases of liability—false endorsement

and false advertising—and that Webster had mainly argued a theory of false

advertising at summary judgment. The court concluded that Webster’s false

advertising claim failed because there was no evidence that Dean used a false or

misleading statement to sell the DFH reissues. The court found that most of the

statements Webster relied on were his own statements in the video interviews and

that there were no statements that Webster endorsed, sponsored, or derived income

from the DFH reissues. The court noted that one person stated in a declaration that

he attended a NAMM show and “heard Dean representatives using Buddy’s name

when selling guitars like the one that Buddy Blaze re-built for [Abbott].” But the

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court found that there was nothing untrue or misleading about this statement.

Furthermore, the court stated that Webster admitted to voluntarily participating in

each video and said that he was not harmed by the videos from the 2009 NAMM

show. Accordingly, the district court concluded that Webster had not presented

evidence of a false or misleading statement to support a false advertising claim

under the Lanham Act. And, for the same reasons, the court decided that no untrue

or misleading statements were made to support an unfair competition claim under

Florida common law or California statute.

Finally, in a footnote, the court stated that “[p]erhaps because neither party

spent significant time addressing false endorsement or likelihood of confusion, the

Court has very little material on which to base” an analysis of Webster’s false

endorsement claim under the Lanham Act. Nonetheless, the court concluded that

“even if ‘Buddy Blaze’ is a protectable mark, the record contains insufficient

evidence for a reasonable jury to find that [the Appellees’] limited usage of

[Webster’s] name creates a likelihood of confusion about [Webster] endorsing the

DFH reissues.”

II.

We review a district court’s grant of summary judgment de novo. Holloman

v. Mail-Well Corp., 443 F.3d 832 , 836 (11th Cir. 2006). A “court shall grant

summary judgment if the movant shows that there is no genuine dispute as to any

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material fact and the movant is entitled to judgment as a matter of law.” Fed. R.

Civ. P. 56(a). The nonmovant must point to enough evidence that “a reasonable

jury could return a verdict for him.” Shaw v. City of Selma, 884 F.3d 1093 , 1098

(11th Cir. 2018) (alteration accepted). “[T]he evidence of the nonmovant is to be

believed, and all justifiable inferences are to be drawn in his favor.” Id.

III.

Webster raises several challenges to the district court’s decision that his

copyright claim is time-barred. First, he argues that the court erred when it

concluded that the gravamen of his copyright claim was ownership, because he had

registered his copyright in the lightning storm graphic and the Appellees did not

dispute his ownership in a counterclaim or affirmative defense. Second, he asserts

that copyright ownership claims do not have a different accrual date than copyright

infringement claims and that, under Petrella v. Metro-Goldwyn Mayer, Inc., 572

U.S. 663 , 670 (2014), an infringement claim accrued each time Dean reproduced

the lightning storm graphic. Alternatively, he argues that his claim survives

summary judgment even if a separate accrual standard applies because he had no

reason to know that his ownership claim had accrued. Third, he claims that his

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copyright infringement claim survives even if the ownership claim is time-barred.3

We disagree with each of Webster’s arguments.

Under the Copyright Act, a civil copyright action must be brought within

three years after the claim accrued. 17 U.S.C. § 507. In Petrella, the Supreme

Court stated that a copyright infringement claim “ordinarily accrues when a

plaintiff has a complete and present cause of action,” that is, “when an infringing

act occurs.” 572 U.S. at 670 (alteration accepted) (internal quotation mark

omitted). But Petrella concerned a non-ownership copyright infringement claim.

And though we have not previously addressed the issue, other circuits draw a

distinction between the accrual of copyright infringement and copyright ownership

claims.

The Sixth and Ninth Circuits have held that a copyright ownership claim

accrues when “there is a ‘plain and express repudiation’ of ownership by one party

as against the other.” Ritchie v. Williams, 395 F.3d 283 , 288 n.5 (6th Cir. 2005);

see also Zuill v. Shanahan, 80 F.3d 1366 , 1369 (9th Cir. 1996) (“[C]laims of

co-ownership, as distinct from claims of infringement, accrue when plain and

express repudiation of co-ownership is communicated to the claimant.”). The

3 Webster argues for the first time on appeal that the limitation period in the Copyright Act bars only remedial, not substantive, rights. We decline to consider this claim, as it was not raised in the district court. See Iraola & CIA S.A. v. Kimberly-Clark Corp., 325 F.3d 1274 , 1284–85 (11th Cir. 2003). 10

First, Second, Fifth, and Seventh Circuits have held that copyright ownership

claims accrue “when the plaintiff learns, or should as a reasonable person have

learned, that the defendant was violating his rights.” Gaiman v. McFarlane, 360

F.3d 644 , 653 (7th Cir. 2004); see also Kwan v. Schlein, 634 F.3d 224 , 228 (2d Cir.

2011) (“An ownership claim accrues only once, when “a reasonably diligent

plaintiff would have been put on inquiry as to the existence of a right.”); Pritchett

v. Pound, 473 F.3d 217 , 220 (5th Cir. 2006) (holding that an alleged copyright

co-owner’s “declaratory judgment rights accrued when it knew or had reason to

know of the injury upon which the claim is based”); Santa-Rosa v. Combo

Records, 471 F.3d 224 , 228 (1st Cir. 2006) (“[A] claim for declaratory judgment

of ownership accrues when the plaintiff ‘knew of the alleged grounds for the

ownership claim.’”) (alteration accepted). Additionally, at least one circuit has

held that “where the gravamen of a copyright infringement suit is ownership, and a

freestanding ownership claim would be time-barred, any infringement claims are

also barred.” See, e.g., Seven Arts Filmed Entm’t Ltd. v. Content Media Corp.

PLC, 733 F.3d 1251 , 1255 (9th Cir. 2013).

The district court properly concluded that Webster’s copyright claim was

time-barred. To begin, the court properly characterized Webster’s claim as one

primarily concerning copyright ownership. Webster’s main argument is that he

owns the lightning storm graphic and the Appellees have reproduced it without his

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consent. The parties agree that Dean has reproduced the graphic on several guitar

models without Webster’s permission, leaving ownership the only disputed issue.

Further, in their Answer, the Appellees raised as an affirmative defense the statute

of limitations, asserting that Abbott’s estate clearly and expressly repudiated

Webster’s copyright ownership in the lightning storm graphic in 2007.

Additionally, Webster’s copyright registration does not entitle him to a

presumption that his copyright is valid, given that he registered the graphic in

2016—about 30 years after the original DFH was created. See 17 U.S.C. § 410(c)

(stating that a certificate of registration made within five years after first

publication of a work constitutes prima facie evidence of the validity of the

copyright). Therefore, the court correctly determined that the gravamen of the case

is ownership.

We have not previously decided whether copyright ownership claims have a

different accrual standard than copyright infringement claims. Today, we agree

with the district court and our sister circuits and hold that, unlike an ordinary

copyright infringement claim, which accrues for each infringing act, a claim

concerning mainly ownership accrues only once. This is consistent with

Petrella—which did not concern a copyright ownership claim. See 572 U.S. 663 .

And we adopt the approach used by the First, Second, Fifth, and Seventh

Circuits—that an ownership claim accrues when the plaintiff learns, or should as a

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reasonable person have learned, that the defendant was violating his ownership

rights—as this approach is most consistent with our existing precedent. See Corn

v. City of Lauderdale Lakes, 904 F.2d 585 , 588 (11th Cir. 1990) (stating that

federal claims generally “accrue when the plaintiff knows or has reason to know of

the injury which is the basis of the action”); Calhoun v. Lilenas Publ’g, 298 F.3d

1228 , 1236 (11th Cir. 2002) (Birch, J., concurring) (noting that a copyright

infringement claim’s “limitations period may be triggered when a plaintiff knows

or, in the exercise of reasonable diligence, should have known about an

infringement”). Thus, Webster’s copyright ownership claim accrued when he

knew, or reasonably should have known, that his ownership rights in the lightning

storm graphic were being violated.

Webster had reason to know that his alleged ownership rights were being

violated as early as 2004, when he first learned that Dean was producing DFH

reissues. But if that were not sufficient to put him on notice that his rights were

being violated, Rubinson’s email in 2007 stating that “the consensus concerning

[the lightning storm graphic] is that [Abbott’s] estate is the legal owner of it” was

certainly sufficient. Therefore, Webster’s claim accrued in April 2007 at the latest,

and the three-year limitation period expired years before he brought his copyright

claim in 2017. Moreover, to the extent that Webster asserts a separate copyright

infringement claim, that claim is also barred. See Seven Arts Filmed Entm’t Ltd.,

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733 F.3d at 1255 ; see also Calhoun, 298 F.3d at 1236 & n.5 (Birch, J., concurring)

(concluding that when a copyright ownership claim is time-barred, “all those

claims logically following therefrom should be barred, including infringement

claims,” and citing precedent in other circuits). Accordingly, we affirm the district

court’s grant of summary judgment in favor of the Appellees on Webster’s

copyright claim.

IV.

Webster also challenges the district court’s ruling on his unfair competition

claims. He argues that the district court erred by concluding that the Appellees did

not make false or misleading statements, and that the court failed to consider the

statements in context. Webster asserts that the statements in the interview videos

are misleading and likely to cause consumer confusion because, after viewing the

videos on Dean’s website and reading Dean’s advertising copy for the DFH

reissues, a reasonable person would assume that Webster was working with Dean

on the reissues. Webster relies on the videos in which he discusses the history of

the DFH, as well as statements by Dean advertising the DFH reissues as similar to

“the one that Buddy Blaze painted” and featuring the “iconic, [DFH] lightning bolt

paint job.” He claims that these statements were made in a purely commercial

context and convey that he had approved of the sale of the reissues.

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False advertising under the Lanham Act requires, among other things, a

showing that the defendant made false or misleading statements and that the

plaintiff was injured. Duty Free Ams., Inc. v. Estee Lauder Cos., Inc., 797 F.3d

1248 , 1277 (11th Cir. 2015). Unfair competition under Florida common law

requires “deceptive or fraudulent conduct of a competitor and likelihood of

consumer confusion.” Donald Frederick Evans & Assocs., Inc. v. Cont’l Homes,

Inc., 785 F.2d 897 , 914 (11th Cir. 1986). Unfair competition in California includes

“any unlawful, unfair or fraudulent business act or practice and unfair, deceptive,

untrue or misleading advertising.” Cal. Bus. & Prof. Code § 17200.

The district court correctly granted summary judgment in favor of the

Appellees on Webster’s false advertising and unfair competition claims because

the statements he relies on were not false or misleading. The videos Webster relies

on contained his own statements regarding his involvement in the creation of the

DFH, and his involvement is not disputed. None of the videos stated that Webster

was promoting or selling the DFH reissues. One of the videos shows Webster

promoting his own signature guitar—the Buddy Blaze ML—and another shows

him comparing his model with the DFH. Thus, the videos accurately show

Webster describing his part in the history of the DFH, which he has used to his

own advantage to sell his own model. The statements in these videos do not

become misleading, nor do they imply that he endorses or benefits from the sale of

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the DFH reissues, simply because they appear near Dean’s advertisements of DFH

reissues. Therefore, Webster did not present sufficient evidence to support his

unfair competition and false advertising claims, and we affirm the district court’s

ruling as to these claims.

V.

Last, Webster claims that the district court erred when it concluded that his

false endorsement claim failed for lack of evidence of a likelihood of consumer

confusion. Specifically, Webster argues that his presence in Dean’s promotional

materials and videos “was ‘inescapably interpreted’ by the audience of guitar-

enthusiasts [as] an endorsement.”

Section 43(a) of the Lanham Act prohibits false product endorsements by

imposing liability on

[a]ny person who, on or in connection with any goods . . . , uses in commerce any word, term, name, symbol, or device, or any combination thereof . . . which (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods . . . by another person.

15 U.S.C. § 1125(a)(1)(A). Thus, as with trademark infringement claims under the

Lanham Act, a plaintiff alleging false endorsement of goods must show a

likelihood of consumer confusion, mistake, or deception as to the origin,

sponsorship, or approval of goods being sold. See Suntree Techs., Inc. v. Ecosense

Int’l, Inc., 693 F.3d 1338 , 1346 (11th Cir. 2012); see also Univ. of Ala. Bd. of Trs. 16

v. New Life Art, Inc., 683 F.3d 1266 , 1278 (11th Cir. 2012) (“[W]e have never

treated false endorsement and trademark infringement claims as distinct under the

Lanham Act.”). In this case, Webster has a viable cause of action for false

endorsement under § 43(a) only if consumers were likely to believe from Dean’s

marketing that he sponsored or approved the DFH reissues.

When determining whether there is a likelihood of confusion between two

marks for purposes of an infringement claim, we consider seven factors: (1) the

strength of the mark alleged to have been infringed; (2) similarity of the infringed

and infringing marks; (3) similarity between the goods and services offered under

the two marks; (4) similarity of the actual sales methods used by the holders of the

marks; (5) similarity of advertising methods; (6) the intent of the alleged infringer

to misappropriate the proprietor’s good will; and (7) the existence and extent of

actual confusion in the consuming public. Tana v. Dantanna’s, 611 F.3d 767 ,

774–75 (11th Cir. 2010). “The appropriate weight to be given to each of these

factors varies with the circumstances of the case.” AmBrit, Inc. v. Kraft, Inc., 812

F.2d 1531 , 1538 (11th Cir. 1986). This is a false endorsement claim, however, in

which the allegations of false endorsement are grounded on videos in which

Webster appeared to willingly promote his legacy as creator of the DFH. For that

reason, factors six and seven are the only relevant factors here. Webster did not

expressly address the likelihood-of-confusion factors in the district court or in this

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court. Instead, he seems to claim that, given his notoriety in the guitar-enthusiast

world, the mention of his name near or in relation to the DFH reissues must have

caused consumers to mistakenly believe that he endorsed the sale of the reissues.

But we do not just assume a likelihood of consumer confusion when a mark is used

in the proximity of advertising for a product, especially when a legitimate use of

that mark is clear from the context.

Webster presented little or no evidence that Dean intended to misappropriate

his goodwill in the sale of the DFH reissues. Rather, he presented video interviews

that show him, several years after he became aware of the DFH reissues, willingly

discussing the history of the DFH to promote his legacy and sell his own guitars.

He does not mention the DFH reissues in the interviews. Further, Webster has not

presented evidence of the existence or extent of actual consumer confusion. Thus,

because Webster has not established a likelihood of consumer confusion, mistake,

or deception, the district court properly granted summary judgment in favor of the

Appellees on his false endorsement claim. Accordingly, we affirm the district

court.

AFFIRMED.

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