FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
MIKE LOVE,
Plaintiff-Appellant,
v.
SANCTUARY RECORDS GROUP, LTD.; No. 07-56008
SANCTUARY RECORDS GROUP INC.;
SANCTUARY ARTIST MANAGEMENT, D.C. No.
INC.; SANCTUARY MUSIC CV-05-07798-ABC
PRODUCTIONS, INC.; BIGTIME.TV;
MELINDA WILSON; SOOP LLC;
DAVID LEAF,
Defendants-Appellees.
MIKE LOVE,
Plaintiff-Appellant,
v.
No. 07-56568
SANCTUARY RECORDS GROUP, LTD.;
SANCTUARY RECORDS GROUP INC.; D.C. No.
CV-05-07798-ABC
SANCTUARY ARTIST MANAGEMENT,
INC.; SANCTUARY MUSIC OPINION
PRODUCTIONS, INC.; SOOP LLC;
DAVID LEAF,
Defendants-Appellees.
Appeal from the United States District Court
for the Central District of California
Audrey B. Collins, Chief District Judge, Presiding
Argued and Submitted
February 10, 2010—Pasadena, California
9771
9772 LOVE v. SANCTUARY RECORDS GROUP
Filed July 8, 2010
Before: Sidney R. Thomas and Barry G. Silverman,
Circuit Judges, and Jeremy D. Fogel,* District Judge.
Opinion by Judge Thomas
*The Honorable Jeremy D. Fogel, United States District Judge for the
Northern District of California, sitting by designation.
LOVE v. SANCTUARY RECORDS GROUP 9775
COUNSEL
Philip H. Stillman, Stillman and Associates, Cardiff, Califor-
nia, for plaintiff-appellant Mike Love.
Barry E. Mallen, Manatt, Phelps & Phillips, LLP, Los Ange-
les, California; Howard L. Weitzman, Kinsella Weitzman Iser
Kump & Aldisert LLP, Santa Monica, California, for
defendants-appellees Sanctuary Records Group, Ltd., Sanctu-
ary Records Group, Inc., Sanctuary Artist Management, Inc.,
and Sanctuary Music Productions, Inc.
Neville L. Johnson, Johnson & Johnson LLP, Beverly Hills,
California, for defendant-appellee BigTime.tv.
9776 LOVE v. SANCTUARY RECORDS GROUP
OPINION
THOMAS, Circuit Judge:
This appeal presents the question, inter alia, of whether the
Lanham Act and California’s common law right of publicity
apply extra-territorially to events occurring in Great Britain.
Under the circumstances presented by this case, we conclude
that such claims are not viable, and we affirm the judgments
entered by the district court.
I
In 2004, founding Beach Boy member Brian Wilson, who
had written (or co-written) most of the iconic Beach Boy hits,
released a solo album called Smile. Wilson mounted a tour,
with backup band, to support the album. It had been years
since Brian Wilson had toured regularly with The Beach
Boys. As part of settlement of earlier litigation, Mike Love,
also a founding member of The Beach Boys, had acquired the
right to use The Beach Boys trademark in live performances.
He continued to tour as The Beach Boys with a varying
lineup, playing hundreds of shows a year.
As part of a promotion campaign, the British newspaper the
Mail on Sunday distributed a compact disc, consisting of
Brian Wilson’s solo versions of Beach Boy songs, along with
of his solo work, with approximately 2.6 million copies of the
paper. The CDs were distributed in the United Kingdom and
Ireland. Approximately 425 copies of that edition of the Mail
were distributed in the United States without the CD, includ-
ing 18 in California.
The cover of the distributed compact disc, entitled Good
Vibrations, featured Brian Wilson, along with three smaller
photographs of The Beach Boys. The small photographs of
the group included a picture of Mike Love. The front page of
the Mail on Sunday advertised the CD prominently, and
LOVE v. SANCTUARY RECORDS GROUP 9777
included an image of the CD’s cover. In addition to sound
recordings, the CD contained two videos of live performances
by Wilson’s band.
Love was concerned that a second British invasion and
Wilson’s return to touring and recording would dampen ticket
sales for the live performances of his touring group. Thus, in
response to the English promotion, Love sued a variety of
parties for their involvement in the promotion campaign. He
sued Wilson; Associated Newspapers Limited (“ANL”), the
publisher of Mail on Sunday; BigTime.tv, a British company
that licensed and recorded the compact disc; Sanctuary
Records Group, Ltd., the entity that owned the rights to the
Brian Wilson recordings relevant to this case, as well as Sanc-
tuary Records Group NY, Sanctuary Music Management,
Inc., and Sanctuary Music Productions, Inc. (“the Sanctuary
defendants”); Jean Sievers, the Lippin Group, Inc., and SOOP
LCC, Wilson’s managers and publicist; David Leaf, a writer
and producer for Wilson; and Melinda Wilson, Wilson’s wife.
The district court dismissed the complaint against Big-
Time.tv and ANL for lack of personal jurisdiction, and
awarded sanctions to BigTime.tv. It dismissed with prejudice
three of the Sanctuary defendants (Sanctuary Records Group
NY, Sanctuary Music Management, Inc., and Sanctuary
Music Productions, Inc.) on the basis of their unopposed
motion asserting that they had nothing whatsoever to do with
the case. The court dismissed Melinda Wilson from the suit
with prejudice, as Love had not been given permission to add
her as a defendant, and because the complaint alleged no facts
that would support keeping her in the lawsuit.
The district court dismissed the claims for violation of Cali-
fornia’s statutory and common law rights of publicity after
holding that English law, which does not recognize a right of
publicity, governed. It dismissed three Lanham Act claims,
two for lack of standing, and one after finding that the extra-
territorial reach of the statute did not encompass the claims.
9778 LOVE v. SANCTUARY RECORDS GROUP
The district court also dismissed four claims raised only
against Wilson, four claims against various defendants for
interference with contractual relations and prospective eco-
nomic advantage, and three copyright claims. Because Love’s
claim of violation of California fair business practices law
depended on the survival of the Lanham Act claims, and
because his civil conspiracy allegation depended on the sur-
vival of at least one other claim, and that Love had failed to
allege acts that would constitute conspiracy, the district court
dismissed those two claims as well.
Over the course of the proceedings, Love filed three com-
plaints. In his first amended complaint, he alleged that he was
domiciled in Nevada. In his second amended complaint, he
removed that line, and claimed to be “an individual with a res-
idence in California.” The district court “strongly admon-
ishe[d]” Love for alleging to have a residence in California
and, based on this “legal nullity,” claiming in papers that
“Love is a California resident.” (emphasis in original).
Love responded to criticism by the district court that he had
failed to introduce any evidence that Good Vibrations had
ever entered the U.S. market by filing a declaration by Steven
Surrey that Surrey had bought a copy of Good Vibrations on
eBay because he thought it was an official Beach Boys prod-
uct (“Surrey affidavit”). Because of uncontested evidence that
Surrey was a close associate of Love’s attorney and had fabri-
cated his allegation that he was confused by the labeling of
Good Vibrations, the district court never considered the Sur-
rey affidavit to have any evidentiary value, and entered sanc-
tions against Love’s counsel.
In response to some confusion as to whether and when a
final and appealable judgment had been issued, the district
court entered a stipulated final judgment on June 1, 2007.
Love timely filed a notice of appeal on July 2, 2007. On Sep-
tember 7, 2007, the district court granted the motions for
attorney’s fees filed by eight defendants, including the Sanc-
LOVE v. SANCTUARY RECORDS GROUP 9779
tuary defendants. Love appealed the attorney’s fees award on
October 17, 2007. The two appeals have been consolidated.
After reaching settlement with many of the defendants in
this case,1 Love continues to appeal the following issues: dis-
missal of BigTime.tv; dismissal of the right of publicity
claims; dismissal of the conspiracy claim; dismissal of the
three Lanham Act claims and the related California unfair
business practices claim; and the award of attorney’s fees to
the Sanctuary defendants.2
The central issue before us is whether American claims for
relief can be asserted on the basis of conduct that only
occurred in Great Britain. The defendants think not. Love
wishes they all could be California torts.
II
The district court dismissed BigTime.tv from the suit for
lack of personal jurisdiction, a decision we review de novo.
Schwarzenegger v. Fred Marin Motor Co., 374 F.3d 797, 800
(9th Cir. 2004). The plaintiff bears the burden of demonstrat-
ing that jurisdiction is appropriate. Id. Where, as here, a
motion to dismiss is based on written materials rather than an
evidentiary hearing, the plaintiff need only make a prima facie
showing of jurisdictional facts. Id. Uncontroverted allegations
in the complaint must be taken as true, and conflicts over
statements contained in affidavits must be resolved in the
Love’s favor. Id.
1
Love has now settled with Wilson, ANL, Jean Sievers, and the Lippin
Group, who have already been dismissed from this appeal, and SOOP
LLC and David Leaf, whom we now dismiss as well.
2
Because Love has not argued that dismissal of Melinda Wilson, Sanc-
tuary Records Group NY, Sanctuary Music Management, Inc., or Sanctu-
ary Music Productions, Inc. was in error, we affirm those dismissals
without further comment.
9780 LOVE v. SANCTUARY RECORDS GROUP
[1] Where there is no applicable federal statute governing
personal jurisdiction, the district court applies the law of the
state in which it sits. Yahoo! v. La Ligue Contre le Racisme,
433 F.3d 1199, 1205 (9th Cir. 2006) (en banc).3 California’s
long-arm jurisdictional statute is coextensive with federal due
process requirements. Id.; Cal. Code Civ. Pro. § 410.10. Thus,
the district court was permitted to exercise personal jurisdic-
tion over BigTime.tv only if BigTime.tv had “certain mini-
mum contacts” with California “such that the maintenance of
the suit d[id] not offend the traditional notions of fair play and
substantial justice.” Yahoo!, 433 F.3d at 1205 (internal quota-
tion marks omitted).
The parties agree that we should use the “purposeful direc-
tion” or “effects” test in this case. The effects test is satisfied
if (1) the defendant committed an intentional act; (2) the act
was expressly aimed at the forum state; and (3) the act caused
harm that the defendant knew was likely to be suffered in the
forum state. Id. at 1206. Where a defendant’s “express aim
was local,” the fact that it caused harm to the plaintiff in the
forum state, even if the defendant knew that the plaintiff lived
in the forum state, is insufficient to satisfy the effects test.
Schwarzenegger, 374 F.3d at 807.
[2] Here, BigTime.tv did contact people in California
regarding the promotion that would eventually lead to this law
suit. However, those discussions did not enable or contribute
to the promotion activities that actually gave rise to the law
suit. The intentional acts that allegedly harmed Love—
including BigTime.tv’s licensing of the recordings and pro-
motion of Good Vibrations on television and the internet—
were directed entirely at markets in the United Kingdom and
Ireland, and Love does not argue differently.4 See Sinatra v.
3
A majority of the en banc court concurred in Part II of Judge W.
Fletcher’s opinion, regarding personal jurisdiction. Citations are to that
part of the opinion.
4
Love also argues that harm directed at him was necessarily aimed at
California, since his musical career is based in California, and BigTime.tv
LOVE v. SANCTUARY RECORDS GROUP 9781
Nat’l Enquirer, Inc., 854 F.2d 1191, 1193 (9th Cir. 1988)
(finding jurisdiction because “the misappropriation of
Sinatra’s name” was “one component of a series of ongoing
efforts by the defendant to avail itself of the benefits of the
California market”).
[3] Because BigTime.tv did not purposefully direct any of
the relevant intentional acts at California, it was not subject
to the jurisdiction of a court in that state.
III
The district court correctly dismissed Love’s right of pub-
licity claims using a choice of law analysis, an analysis we
review de novo. APL Co. Pte. Ltd. v. UK Aerosols Ltd., 582
F.3d 947, 955 (9th Cir. 2009). We also review the district
court’s interpretation of state law de novo. Evanston Ins. Co.
v. OEA, Inc., 566 F.3d 915, 920 (9th Cir. 2009). We apply the
clearly erroneous standard to factual findings that underlie the
was aware of that when it purposefully interfered with his commercial
interests. Since this case was argued, we have held that the “expressly
aimed” prong of the purposeful direction test can be met where a plaintiff
alleges that the defendant individually targeted him by misusing his intel-
lectual property on the defendant’s website for the purpose of competing
with the plaintiff in the forum. See Brayton Purcell, LLP v. Recordon &
Recordon, ___ F.3d ___, 2010 WL 2135302, at * 4 (9th Cir. 2010). In
Brayton, in contrast to here, the plaintiff (a Southern California law firm)
actually alleged facts that, if proven, would show that the defendant (a
Northern California law firm) intentionally targeted the plaintiff’s business
where the plaintiff firm was located. Id. We merely held that the defen-
dant’s “conclusory denial” that its actions were not aimed at prospective
clients in Northern California did “not rebut” the plaintiff’s fact-based
allegation to the contrary. Id. Here, Love’s argument that BigTime.tv tar-
geted his business interests in California is not supported by facts. Even
if BigTime’s alleged misuse of Love’s persona and intellectual property
was expressly aimed at Love—and such a claim is significantly less sup-
ported than the plaintiff’s parallel claim in Brayton—Love is a citizen not
of California but of Nevada.
9782 LOVE v. SANCTUARY RECORDS GROUP
choice of law determination. Downing v. Abercrombie &
Fitch, 265 F.3d 994, 1005 (9th Cir. 2001).
[4] Federal courts must apply state substantive law to state
law claims, including the forum state’s choice of law rules. Id.
at 1005. California applies the “governmental interest”
approach to conflicts issues, including those involving right of
publicity claims. Id. Under this approach,
(1) the court examines the substantive laws of each
jurisdiction to determine whether the laws differ as
applied to the relevant transaction, (2) if the laws do
differ, the court must determine whether a true con-
flict exists in that each of the relevant jurisdictions
has an interest in having its law applied, and (3) if
more than one jurisdiction has a legitimate interest
. . . the court [must] identify and apply the law of the
[jurisdiction] whose interest would be more impaired
if its law were not applied. Only if both [jurisdic-
tions] have a legitimate but conflicting interest in
applying its own law will the court be confronted
with a “true conflict” case.
Id. (internal quotation marks and citations omitted) (omission
and first alteration in original).
A
[5] Although California recognizes both a statutory and
common law right of publicity, and England recognizes nei-
ther, this is not a case of true conflict. See Bi-Rite Enters., Inc.
v. Bruce Miner Co., Inc., 757 F.2d 440, 442 (1st Cir. 1985)
(citing Tolley v. Fry, 1 K.B. 467 (1930)); Gionfriddo v. Major
League Baseball, 94 Cal. App. 4th 400, 408 (2001). Califor-
nia has no interest in applying its law to the conduct in ques-
tion. None of the parties remaining in this suit is a citizen of
California. The misappropriation in this suit occurred almost
exclusively in the United Kingdom and Ireland, where mil-
LOVE v. SANCTUARY RECORDS GROUP 9783
lions of copies of the Mail on Sunday and Good Vibrations
were distributed. See Downing, 265 F.3d at 1006 (explaining
that “any misappropriation of the names and likenesses” of
Hawaiian surfers occurred in California, where the catalogue
containing their photos was distributed). At most, de minimus
conduct occurred in California when a handful of copies of
the paper were delivered without the CD, and a handful of
copies of Good Vibrations were sent to Wilson’s attorney in
California.
Love asserts that he is not an out-of-state plaintiff because
he owns property in California and has other commercial
interests there. California’s right of publicity “permit[s] celeb-
rities . . . to control the commercial exploitation of the celebri-
ty’s likeness.” Comedy III Productions, Inc. v. Gary Saderup,
Inc., 21 P.3d 797, 805 (Cal. 2001); see also Lugosi v. Univer-
sal Pictures, 603 P.2d 425, 445 (Cal. 1979) (Bird, C.J., dis-
senting) (“The right of publicity protects the intangible
proprietary interest in the commercial value in one’s identi-
ty.”). California’s interest in applying the right of publicity
extraterritorially is based on its interest “safeguarding its citi-
zens from the diminution in value of their names and likeness-
es.” Sinatra, 854 F.2d at 1202. Cf. Brand v. Menlove Dodge,
796 F.2d 1070, 1075 (9th Cir. 1986) (“[S]tates have a strong
interest in protecting their own citizens . . . .”). Love cites no
case where California has recognized that injury relevant to a
choice-of-law analysis is suffered anywhere other than the
domicile of the celebrity or the location where the image is
exploited.5
B
Even if Love’s commercial interests in California did create
5
Love’s California “residence,” by which we assume Love means “a
building used as a home,” Merriam Webster’s Collegiate Dictionary 996
(10th ed. 1996), has nothing to do with this case and therefore is irrelevant
to our choice-of-law analysis.
9784 LOVE v. SANCTUARY RECORDS GROUP
a true conflict, England’s interests would be much more
greatly impaired by a failure to apply English law.
[6] “In making [its] comparative impairment analysis, the
trial court must determine the relative commitment of the
respective states to the laws involved and consider the history
and current status of the states’ laws and the function and pur-
pose of those laws.” Wash. Mutual Bank, FA v. Super. Ct., 15
P.3d 1071, 1081 (Cal. 2001) (internal quotation marks omit-
ted). “[O]ne of the goals of that analysis is the maximum
attainment of underlying purpose by all governmental enti-
ties.” Kearney v. Salomon Smith Barney, Inc., 137 P.3d 914,
918 (Cal. 2006) (internal quotation marks omitted).
[7] Although England does not recognize a right of public-
ity, it does provide celebrities with certain other limited pro-
tections against commercial misappropriation, including
copyright, trademark, and the tort of “passing off.” Alain J.
Lapter, How the Other Half Lives (Revisited): Twenty years
since Midler v. Ford — A global perspective on the right of
publicity, 15 Tex. Intell. Prop. L.J. 239, 278-83 (2007). See
generally, Julie King, The Protection of Personality Rights for
Athletes and Entertainers under English Intellectual Property
Law: Practical difficulties in relying on an action of passing
off, 7 Sports Law. J. 351 (2000). Additionally, while England
does not recognize a right to privacy as such, it does provide
stronger protections against defamation than the United
States. See J. Thomas McCarthy, 1 Rights of Publicity and
Privacy § 6:155 (2d ed) (explaining that England has never
recognized a right to privacy); Raymond W. Beauchamp,
Note, England’s Chilling Forecast: The case for granting
declaratory relief to prevent English defamation actions from
chilling American speech, 74 Fordham L. Rev. 3073, 3077-91
(2006) (comparing American and English defamation law).
Thus, we agree with the First Circuit that England has mani-
fested “a policy choice favoring unrestricted competition in
the area of commercial exploitation of names and likenesses.”
Bi-Rite, 757 F.2d at 445; see also id. (“In the area of publicity
LOVE v. SANCTUARY RECORDS GROUP 9785
rights, as in the areas of trademark, patent, and copyright, the
law must balance the competing goals, on the one hand, of
facilitating public access to valuable images, inventions and
ideas and, on the other, rewarding individual effort.”).
[8] Even if California has an interest in protecting the right
of an entertainer with economic ties to the state to exploit his
image overseas, that interest is not nearly as significant as
England’s interest in (not) regulating the distribution of mil-
lions of copies of a newspaper and millions of compact discs
by a British paper primarily in the United Kingdom.
C
[9] Love argues that the Uniform Single Publication Act
(“USPA”) displaces the traditional choice-of-law analysis in
media cases. As the California Supreme Court has explained,
[t]he single-publication rule was created to address
the problem that arose with the advent of mass com-
munication from the general rule in defamation cases
that “each time the defamatory statement is commu-
nicated to a third person . . . the statement is said to
have been ‘published,’ ” giving rise to a separate
cause of action.
Christoff v. Nestle USA, Inc., 213 P.3d 132, 137-38 (Cal.
2009) (quoting Shively v. Bozanich, 80 P.3d 676, 683 (Cal.
2003)) (omission in Christoff). The USPA “advances the uni-
versal interest in avoiding a multiplicity of suits and assisting
the orderly administration of justice” Motschenbacher v. R. J.
Reynolds Tobacco Co., 498 F.2d 821, 823 n.4 (9th Cir. 1974).
But it does not displace the governmental interest test or have
any other application to the conflict of laws question at issue
in this case. See Hartmann v. Time, Inc., 166 F.2d 127,
134-35 (3d Cir. 1948); Givens v. Quinn, 877 F. Supp. 485,
488 (W.D. Mo. 1994) (“The single publication rule is not a
9786 LOVE v. SANCTUARY RECORDS GROUP
choice-of-law rule.”). Therefore, it has no application in the
present context.
IV
The district court correctly dismissed Love’s Lanham Act
claims. Under the circumstances presented here, we conclude
that the Lanham Act cannot be applied extraterritorially to
encompass acts committed in Great Britian.
As we have noted, Love has the limited exclusive right to
use The Beach Boys trademark in live performances. Love
has alleged that the use of the mark “The Beach Boys” on and
to promote Good Vibrations, in conjunction with the inclusion
of video recordings of live performances on the disc,
infringed upon and diluted his interests in the trademark, and
competed with his live band unfairly. Sanctuary argues that
because the creation, promotion, and distribution of Good
Vibrations all occurred in Europe, the Lanham Act does not
apply in this case. We agree with Sanctuary.
[10] We analyze the Lanham Act’s coverage of foreign
activities under a three-part test originally developed in the
antitrust context.6 See Star-Kist Foods, Inc. v. P.J. Rhodes &
6
Recently, while refining the rules regarding the extraterritorial applica-
tion of federal statutes, the Supreme Court explained that “[w]hen a statute
gives no clear indication of an extraterritorial application, it has none.”
Morrison v. Nat’l Australia Bank Ltd., __ S.Ct. __, 2010 WL 2518523, at
*5. The Court was unable to find a clear indication in the Securities
Exchange Act, and therefore limited the reach of § 10(b) to the purchase
or sale of a security listed on an American stock exchange, or the purchase
or sale of any other security in the United States. Id. at * 14.
As we explained in Wells Fargo & Co. v. Wells Fargo Exp. Co., 556
F.2d 406 (9th Cir. 1977), when we adopted the test for extraterritorial
application of the Lanham Act, “[t]he Lanham Act grants a civil right of
action against ‘[a]ny person who shall . . . use in commerce,’ in any
improper manner detailed therein, a registered trademark”; and, “[f]or pur-
poses of the Act, ‘commerce’ is sweepingly defined as ‘all commerce
LOVE v. SANCTUARY RECORDS GROUP 9787
Co., 769 F.2d 1393, 1395 (9th Cir. 1985) (citing Timberlane
Lumber Co. v. Bank of Am. Nat’l Trust & Sav. Ass’n, 549
F.2d 597 (9th Cir. 1976), superceded by statute, 15 U.S.C.
§ 6a). For the Lanham Act to apply extraterritorially: (1) the
alleged violations must create some effect on American for-
eign commerce; (2) the effect must be sufficiently great to
present a cognizable injury to the plaintiffs under the Lanham
Act; and (3) the interests of and links to American foreign
commerce must be sufficiently strong in relation to those of
other nations to justify an assertion of extraterritorial author-
ity. Id.
The first two criteria may be met even where all of the
challenged transactions occurred abroad, and where “injury
would seem to be limited to the deception of consumers”
abroad, as long as “there is monetary injury in the United
States” to an American plaintiff. See Ocean Garden, Inc. v.
Marktrade Co., 953 F.2d 500, 503 (9th Cir. 1991); see also
Reebok Intern’l, Ltd. v. Marnatech Enters., Inc., 970 F.2d
552, 554-55 (9th Cir. 1992) (the first two criterion were met
where a defendant was found to have “organized and directed
[the deception] from the United States” and to have known
that the deceptive product “went back to the United States
with regular frequency” and that sales of the “genuine” prod-
uct decreased in the United States).
[11] Here, it is undisputed that all relevant acts occurred
abroad. The idea for the CD originated with Ian Spero of Big-
Time.tv, who then approached ANL. BigTime.tv and ANL
are both British entities. The CDs were physically manufac-
which may lawfully be regulated by Congress.’ ” Id. at 426 (quoting 15
U.S.C. §§ 1114(a)(1), 1127). Because this sweeping language contrasts so
readily with the language in the Securities Exchange Act, not merely refer-
ring to foreign commerce but expressly covering all commerce Congress
can regulate, see Morrison, 2010 WL 2518523, at * 9-* 11, we see no
need to revisit our case law regarding the extraterritorial application of the
Lanham Act.
9788 LOVE v. SANCTUARY RECORDS GROUP
tured by Optical Disc Services Limited, a company in Ger-
many with offices in London. Love no longer claims that the
CDs were distributed in the United States, and in fact Sanctu-
ary never sold or distributed any copies of the CD to anyone
at all. The only CDs shown to have entered the United States
never reached the market, as Wilson’s attorney kept the CDs
in his office until this litigation commenced.7 Although Big-
Time.tv did discuss the album with Wilson’s attorney in Cali-
fornia, it ignored the attorney’s advice not to use the images
of anyone other than Wilson, or at least to secure the permis-
sion of any other Beach Boy whose image would be used.
Therefore, for the Lanham Act to apply, Love must have
presented evidence that the complained of actions caused him
monetary injury in the United States. Love’ declaration—that
his ticket sales in the United States were lower after the distri-
bution of Good Vibrations, the release of Smile, and the U.S.
tour embarked upon by Wilson—is insufficient. Even if, as
Love argues, European purchasers of the Mail of Sunday
would mistakenly associate the promotional CD with Love,
Smile, and the official Beach Boys touring band, it is too great
of a stretch to ask us, or a jury, to believe that such confusion
overseas resulted in the decreased ticket sales in the United
States.
[12] Because Love failed to present any evidence that the
alleged Lanham Act violations affected United States com-
merce in any way, we affirm dismissal of all three claims on
that ground.8 Love does not challenge the district court’s
7
The district court acted well within its discretion determining that the
Surrey affidavit was “an attempt to manufacture a genuine issue of fact
where none exists” and thus according it no weight. Cf. Kennedy v. Allied
Mut. Ins. Co., 952 F.2d 262, 267 (9th Cir. 1991) (permitting a district
court to discount a declaration in an affidavit that contradicts prior deposi-
tion testimony if it “make[s] a factual determination that the contradiction
was actually a ‘sham’ ”).
8
Love also argues that the district court abused its discretion granting
summary judgment in the face of requests for additional discovery. Love
LOVE v. SANCTUARY RECORDS GROUP 9789
determination that his state law unfair competition claim and
his state law conspiracy claim could not survive if the Lan-
ham Act and publicity claims failed, and so we affirm dis-
missal of those claims as well.
V
The district court awarded the Sanctuary defendants attor-
ney’s fees with respect to all of the claims stated against them.
We review an award of attorney’s fees for abuse of discretion,
factual findings for clear error, and legal conclusions de novo.
Barrientos v. 1801-1825 Morton LLC, 583 F.3d 1197, 1207
(9th Cir. 2009).
Attorney’s fees are awardable where there is an applicable
attorney’s fees provision in a contract, if “there is express
statutory authorization,” or for work done on claims that “in-
volve a common core of facts or [are] based on related legal
theories” as the claims governed by statutory or contractual
attorney’s fees provisions, such that the “lawsuit cannot be
viewed as a series of discrete claims.” See Hensley v. Ecker-
hart, 461 U.S. 424, 429, 435 (1983).
The district court determined that “for nearly every claim,
there is a statutory or contractual basis for awarding [the
Sanctuary defendants] fees.” Where no independent basis
existed to support an award, the district court found the claims
“inextricably intertwined with claims” that had such a sup-
port. We agree.9
describes in detail the discovery that he wished to pursue, none of which
relates to whether or not the alleged violations impacted U.S. foreign com-
merce or injured Love in any way. Because this “discovery would [have
been] ‘fruitless’ with respect to the proof of a viable claim,” the district
court did not abuse its discretion. See Jones v. Blanas, 393 F.3d 918, 930
(9th Cir. 2004).
9
Love does not argue that the Sanctuary defendants were not prevailing
parties, nor does he challenge the actual amounts awarded under the dis-
trict court’s lodestar analysis.
9790 LOVE v. SANCTUARY RECORDS GROUP
A
[13] California’s right of publicity statute mandates an
award of attorney’s fees for “[t]he prevailing party in any
action under this section.” Cal. Civ. Code § 3344; Kirby v.
Sega of Am., Inc., 144 Cal. App. 4th 47, 62 (2006). Love
argues that the statute cannot support an attorney’s fees award
if, under our choice-of-law analysis, the statutory provision
did not apply to the claim.10
[14] Since Love brought an action under California’s right
of publicity statute, however, section 3344 clearly mandates
an award of attorney’s fees, notwithstanding the fact that the
action failed because the statute’s substantive law does not
govern Love’s claim. Cf. Cairns v. Franklin Mint. Co., 292
F.3d 1139, 1149, 1156 (9th Cir. 2002) (awarding attorney’s
fees under comparable posthumous right of publicity statute
where plaintiff alleged claim under statute but law of Great
Britain actually governed the claim).
B
[15] Under the Copyright Act of 1976, a district court has
the discretion to award “a reasonable attorneys’ fee to the pre-
vailing party.” 17 U.S.C. § 505. In considering whether to
exercise that discretion, the court might consider (1) the
degree of success obtained; (2) frivolousness; (3) motivation;
(4) the objective unreasonableness of the losing party’s fac-
tual and legal arguments; and (5) the need, in particular cir-
cumstances, to advance considerations of compensation and
deterrence. Jackson v. Axton, 25 F.3d 884, 890 (9th Cir. 1994)
10
Because Love’s statutory and common law claims were premised on
the same facts and dismissed on the same basis, the district court deter-
mined that the claims were “inextricably intertwined.” Love does not chal-
lenge this conclusion.
LOVE v. SANCTUARY RECORDS GROUP 9791
(citing Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19
(1994)).11
The district court awarded attorney’s fees after finding that
the copyright claims “bordered on frivolous and were not
objectively reasonable” and that they “contributed to the
bloat” of a “vastly overpled . . . case.” The district court saw
Love’s theory of the case to be fatally flawed from the outset.
First, he did not hold the copyrights at issue, but was merely
a beneficial owner. Second, Love was attempting to hold the
Sanctuary defendants liable for somehow authorizing Rondor,
the legal copyright owner to the compositions and not a party
to the case, to license ANL to use of the compositions on the
CD at covermount prices when Good Vibrations was not tech-
nically a covermount CD.12
Love argues that the district court abused its discretion
because (1) the district court’s finding that Love, as a benefi-
cial owner, had standing to bring his claims, means that they
could not be objectively unreasonable and (2) he presented
evidence before the attorney’s fees were granted that the
covermount license was invalid.
[16] The mere fact that a plaintiff has statutory standing
11
We note that, contrary to the statements of several circuits, including
our own, Jackson was not overruled by the previously-decided Fogerty.
See Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829, 833 n.2
(9th Cir. 2002) (mistakenly stating that Jackson was abrogated by
Fogerty). See also Chirco v. Crosswinds Communities, Inc., 474 F.3d 227,
232 (6th Cir. 2007) (same); Grupo Gigante SA De CV v. Dallo & Co.,
Inc., 391 F.3d 1088, 1101 (9th Cir. 2004) (same); Jacobsen v. Deseret
Book Co., 287 F.3d 936, 951 (10th Cir. 2002) (same). Rather, Jackson
specifically cites Fogerty as overruling a different Ninth Circuit case,
Cooling Sys. & Flexibles, Inc. v. Stuart Radiator, Inc., 777 F.2d 485 (9th
Cir. 1985).
12
Sanctuary licensed ANL to use the Wilson recordings, but ANL
obtained permission to use the compositions directly from the holder of
those copyrights.
9792 LOVE v. SANCTUARY RECORDS GROUP
does not make his legal and factual arguments objectively rea-
sonable. Love did not plead any facts that would somehow
connect the Sanctuary defendants to Rondor and ANL’s alleg-
edly invalid licensing agreement, and in fact three of the
Sanctuary defendants were dismissed from the case entirely,
based on their uncontested assertion that they had nothing
whatsoever to do with the promotion. The district court did
not abuse its discretion awarding these attorney’s fees.
C
[17] The Lanham Act allows for an award of attorney’s
fees in “exceptional cases.” 15 U.S.C. § 1117(a).
“[I]nterpretation of what constitutes an ‘exceptional case’ is
a question of law [that] we review . . . de novo.” Earthquake
Sound Corp. v. Bumper Indus., 352 F.3d 1210, 1216 (9th Cir.
2003). “Where a trademark case is exceptional, we review a
district court’s decision to award attorney’s fees for an abuse
of discretion.” Id.
[18] “A trademark case is exceptional where the district
court finds that the defendant acted maliciously, fraudulently,
deliberately, or willfully.” Id.; see also Stephen W. Boney,
Inc. v. Boney Servs., Inc., 127 F.3d 821, 827 (9th Cir. 1997)
(citing an Eighth Circuit case that held that “[w]hen a plain-
tiff’s case is groundless, unreasonable, vexatious, or pursued
in bad faith, it is exceptional”).
Here, the district court awarded fees in part because Love
“presented not one item of evidence substantiating any U.S.
effect,” other than a “misleading and deceptive declaration,”
and that any case cited by Love to support his extraterritorial
application argument was “readily distinguishable and of no
persuasive value.” The district court found that the Surrey
affidavit “unreasonably and vexatiously . . . lengthened or
multiplied” the work of the defendants and the district court,
and it sanctioned Love’s attorney.
LOVE v. SANCTUARY RECORDS GROUP 9793
[19] The evidence supports the district court’s conclusion
that the Lanham Act claims were “groundless and unreason-
able,” and we agree that the case is exceptional as a matter of
law.13
D
In appealing both the copyright claim awards and the Lan-
ham Act claim awards, Love attempts to assert what he calls
an advice of counsel defense. He argues that he should not be
punished for his lawyers’ litigation strategy.
The only case that Love cites in his brief that could support
an advice of counsel defense is Takecare Corp. v. Takecare
of Okla., Inc., 889 F.2d 955 (10th Cir. 1989). In Takecare,
however, the exceptionality finding that supported an award
of attorney’s fees was based on the defendant’s wilfully ille-
gal use of a mark after having received notice of infringe-
ment. Id. at 957. The court held that “a party’s reasonable
reliance on the advice of counsel may defuse otherwise wilful
conduct,” but that the defendant failed to prove reasonable
reliance. Id. at 957-58.
[20] Here, the district court’s finding of exceptional cir-
cumstances was based not on wilful out-of-court conduct by
Love, but rather on the unreasonableness of his Trademark
claims and his continued pursuit of the claims in bad faith.
Similarly, the Copyright attorney’s fees were awarded based
13
Because we affirm dismissal of the Lanham Act claims based on
Sanctuary’s argument that the statute does not apply extraterritorially to
the violations alleged in Love’s complaint, we focus on the weaknesses of
Love’s argument on this ground. However, the fact that the district court
dismissed two of the claims on other grounds that we do not reach is rele-
vant to our determination that this is an exceptional case. In particular, we
note that the district court found that Love “stated absolutely no allega-
tions against [the Sanctuary defendants] by which they (as opposed to
ANL) could be held responsible for the creation or distribution of the
allegedly infringing material.”
9794 LOVE v. SANCTUARY RECORDS GROUP
on the frivolous and unreasonable nature of those claims. If
plaintiffs could evade attorney’s fees awards by showing that
the litigation was conducted based on the advice of counsel,
attorney’s fees would never be awarded to defendants under
the Lanham or Copyright Acts. Cf. Ass’n of Prof’l Baseball
Leagues, Inc. v. Very Minor Leagues, Inc., 223 F.3d 1143,
1148 (10th Cir. 2000) (“[W]e disagree that there should be, or
even could be, perfect harmony between the standard for
awarding attorney fees to a prevailing plaintiff and a prevail-
ing defendant. When attorney fees are awarded against a
defendant, the court looks to whether the defendant’s acts of
infringement were pursued in bad faith. When attorney fees
are awarded against a plaintiff, the court looks to the plain-
tiff’s conduct in bringing the lawsuit and the manner in which
it is prosecuted.”).
E
[21] The district court found that the remaining claims
were inexorably intertwined with claims for which attorney’s
fees awards were warranted. Love does not argue to the con-
trary. Because the district properly exercised its discretion in
awarding attorney’s fees for each and every claim against the
Sanctuary defendants, it did not err not segregating the award
by claim.
VI
Under the circumstances presented by this case, we con-
clude that neither the Lanham Act nor California’s right of
publicity apply extraterritorially. The district court did not err
in awarding fees.
AFFIRMED.