Olivia de Havilland Takes FX 'Feud' to California Supreme Court

By Ashley Cullins
(The Hollywood Reporter)

The 101-year-old actress isn't giving up in her legal fight with Ryan Murphy and FX.

Olivia de Havilland's legal loss to FX and Ryan Murphy was celebrated as a win by docudrama creators, but attorneys for the actress say the decision effectively kills the right to a jury trial in defamation cases.

The actress sued last year, claiming the series Feud: Bette and Joan inaccurately portrayed her as a vulgar gossip in violation of her privacy and publicity rights.

The network and Murphy asked the court to toss the case under California's anti-SLAPP statute, which brings an early end to frivolous lawsuits arising from protected conduct like free speech. Judge Holly Kending found that, while Feud was clearly protected speech, de Havilland demonstrated a minimal probability of prevailing on her claims and allowed the suit to proceed.

That ruling was overturned by a California appeals court in March, after oral arguments that largely focused on whether Catherine Zeta-Jones' portrayal was a positive one and if "bitch" is still considered a highly offensive term. De Havilland's lawyer Suzelle Smith characterized the decision as "pro-industry" and said it was "clearly written before the hearing."

In a petition for review filed Friday, Smith asks the state's high court to evaluate whether the appellate ruling renders the anti-SLAPP statute unconstitutional and if the use of a living celebrity's name and likeness in a realistic portrayal can possibly be considered "transformative" under the law.

"The de Havilland case is being closely followed," writes Smith. "It is the textbook vehicle for this Court to address these issues of statutory and constitutional significance, including the 'inviolate' right to civil jury trial on issues of fact under California’s Constitution, and the vitality of the right of publicity and defamation causes of action, when plaintiff offers admissible evidence, both percipient and expert, that defendants knowingly or recklessly made false statements and misappropriated her literal identity, damaging her professional reputation and profiting themselves."

Smith notes the court has not yet addressed publicity and false light claims in connection to anti-SLAPP procedures and says it should do so.

"California’s anti-SLAPP statute involves several issues of constitutional significance, including the right to free speech, the right to petition, and the right to jury trial, which must be carefully balanced in applying the statute," she writes. "Otherwise, the statute can be used to undermine rather than protect constitutional rights."

The 2nd District's finding that de Havilland was obligated to present "credible evidence" was incorrect, Smith argues, and so was its opinion that the actress must prove knowing and reckless falsehood by direct, rather than circumstantial, evidence.

"It is the role of the jury, not the Court, to determine the credibility of admissible direct and circumstantial evidence produced by a plaintiff," Smith writes. "The Opinion arrogates to the court the right to judge credibility, an unconstitutional extension of the statute."

Smith also claims the opinion effectively eliminates jury trials in defamation cases.

"The Opinion, if left to stand, would extend constitutional protection to any knowingly false statements as long as the defendant produces a self-serving declaration claiming they were made in good faith," she writes. "Such a result would effectively abolish virtually all claims of defamation and false light."

Kelly Klaus, attorney for FX and Murphy, has not yet commented on the petition.

Olivia de Havilland Looks to Revive ‘Feud’ Defamation Suit

By Daniel Holloway
(Variety)

Olivia de Havilland has asked the Supreme Court of California to review a decision by a lower court throwing out her lawsuit against FX Networks.

In March, a three-judge panel of the state appeals court tossed out de Havilland’s defamation suit, in which the actress claimed that the miniseries “Feud” included a damaging portrayal of her. The decision by the appeals court was viewed as an affirmation of the right of filmmakers to embellish the historical record.

“Whether a person portrayed in one of these expressive works is a world-renowned film star — ‘a living legend’ — or a person no one knows, she or he does not own history,” Justice Anne Egerton wrote at the time. “Nor does she or he have the legal right to control, dictate, approve, disapprove, or veto the creator’s portrayal of actual people.”

In a statement Friday, de Havilland’s attorney claimed that the appeals court threatens the actress’ rights and those of others, including non-celebrities.

“The Court of Appeal opinion, if allowed to stand, will infringe on the Constitutional right to a trial by jury not only of Miss de Havilland, but for any person in a similar situation, whether a celebrity or not. This puts everyone at the mercy of the media and entertainment industry, which may find that false statements and fake news sell better than the truth,” said Suzelle Smith, who represents de Havilland. “No filmmaker, biographer, or reporter with integrity can support the Court of Appeal decision. It rewards the unscrupulous and will put those who investigate and seek to tell the public the truth at an economic disadvantage.”

“Feud,” from executive producer Ryan Murphy, is a dramatization of the real-life rivalry between actresses Bette Davis and Joan Crawford. In the miniseries, de Havilland is played by Catherine Zeta-Jones and is a supporting character. De Havilland’s attorney argued that she is incorrectly portrayed as a gossip who spoke casually and disparagingly of friends and acquaintances such as Davis, Crawford, Frank Sinatra, and her own sister, Joan Fontaine.

A key issue at a hearing in front of the appeals-court panel in March was the use twice by de Havilland’s character of the word “bitch” in reference to Fontaine. De Havilland’s lawyer argued that no record exists of de Havilland ever using the word, much less to identify Fontaine. FX’s lawyer cited on-the-record comments that de Havilland has made referring to Fontaine as a “dragon lady.”

Olivia De Havilland, FX Argue Over the Word ‘Bitch’ in ‘Feud’ Hearing

By Daniel Holloway
(Variety)

Olivia De Havilland’s attorney argued Tuesday that there is a significant difference between the actress calling her sister a “bitch” and calling her sister a “dragon lady.”

Attorneys for De Havilland and for the cable channel FX appeared at a California Court of Appeal hearing to argue whether the actress’ lawsuit against producers of the miniseries “Feud: Bette and Joan” can move forward. A state superior court judge in August turned down FX’s request to have the suit thrown out. FX appealed, leading to Tuesday’s hearing. FX wants the suit tossed under California’s anti-SLAPP statute, claiming that the suit could have a chilling affect on free speech.

The plaintiff’s lawyer complained that De Havilland is portrayed as a gossip who spoke casually and disparagingly of friends and acquaintances such as Bette Davis, Joan Crawford, Frank Sinatra, and her sister, Joan Fontaine. A key issue, acknowledged Tuesday by both sides, was the use twice by De Havilland’s character — played in the series by Catherine Zeta-Jones — of the word bitch in reference to Fontaine. De Havilland’s lawyer argued that no record exists of De Havilland ever using the word, much less to identify Fontaine. FX’s lawyer cited on-the-record comments that De Havilland has made referring to Fontaine as a “dragon lady.”

Judge Halim Dhanidina, one of three judges on the panel, asked De Havilland’s attorney, “Is there a substantial difference between calling someone a bitch and calling her a dragon lady?” drawing laughter. De Havilland’s attorney replied, “Yes, there is, your honor,” adding, “In my household, if you say the word ‘bitch,’ you get your mouth washed out.”

De Havilland’s attorney argued that FX violated De Havilland’s publicity rights as a celebrity. She said that FX profited by having “honest, closed-mouthed, ladylike Olivia De Havilland” say that Crawford and Davis “hated each other and we loved them for it,” disparage Fontaine, and joke about Frank Sinatra’s drinking.

De Havilland’s attorney also dismissed the argument, asserted by FX, that such artistic liberties in a docudrama like “Feud” are protected free speech under the First Amendment and that to side with De Havilland would effectively destroy the ability of filmmakers to create such docudramas.

“Of course we will still have docudramas,” the attorney said. “What we need to have are docudramas that don’t defame, that don’t tell lies.”

Justice Lee Smalley Edmon responded, “How is that not censorship?” The attorney replied that it is not censorship because docudramas that don’t portray events in a way that is “intentionally false” would be protected. When Edmon asked whether the producers of “American Crime Story: The People v. O.J. Simpson” would have needed to gain Judge Lance Ito’s permission before producing a series that presents a reasonably accurate portrayal of Ito. De Havilland’s attorney responded that the First Amendment would protect an accurate portrayal.

FX’s attorney argued that the use of the word “bitch” by the De Havilland character in “Feud” is neither overly obscene nor out-of-character for the real-life De Havilland. He cited a reference in Shaun Considine’s book “The Divine Feud” to De Havilland using the word, allegedly saying “I don’t like to play bitches.” In “Feud,” the De Havilland character says a similar line, then adds “call my sister.”

“The show simply does not portray Ms. De Havilland as a vulgarian,” the FX attorney said. He noted that the De Havilland character is only on screen in 18 of the series’ 402 minutes, and is shown for the most part as being a supportive friend and confidante to Davis. He added that producers had changed “dragon lady” to “bitch” in another piece of dialogue because they felt the two words were synonyms and that “bitch” would resonate more with a contemporary audience. He also argued that De Havilland’s attorneys have failed to show necessary malice on the part of FX and the producers.

The court did not make a decision on whether or not the suit will move forward.

De Havilland, who is 101, sued FX in June, objecting to her portrayal in the Ryan Murphy series. In January, the MPAA joined with FX, urging the appellate court to overturn the superior court decision and throw out the suit. In their brief, the MPAA’s lawyers argued that they “cannot overstate the serious implications of the trial court’s ruling” for filmmakers who draw on real events for fictionalized works.

Tuesday’s hearing, through a quirk of scheduling, took place at the USC Gould School of Law, part of a program in which, once a year, the appeals court holds hearings on the USC campus in front of an audience of first-year law students, who are required to attend. De Havilland’s attorney began her argument by saying, “Olivia De Havilland is still alive,” noting that many of the students in attendance may not be aware of that fact.

At 101, a Survivor of Hollywood’s Golden Age Throws Down the Gauntlet

By Paul Brownfield
(New York Times)

Emailing from the Paris hotel where she lives, Dame Olivia de Havilland sounded defiant, and understandably so. The topic at hand was her lawsuit against the FX network and Ryan Murphy Productions over her portrayal by Catherine Zeta-Jones in last year’s docudrama “Feud: Bette and Joan,” about the rivalry between Bette Davis and Joan Crawford.

Ms. de Havilland’s lawyer in Los Angeles, Suzelle Smith, had arranged an electronic question and answer session ahead of a court date much anticipated by both those who remember the so-called Golden Age of Hollywood, rapidly receding in a digitized and rightly diversified age. And by the many in the industry who mine recent history for dramatic purposes (consider the Oscar-nominated films ”The Post,” “Darkest Hour” and “I, Tonya”).

On March 20, the California Court of Appeals will hear arguments over whether Ms. de Havilland can proceed with her suit, which alleges unauthorized use of her name and likeness to endorse a product — a “right of publicity” claim — as well as false light, which sounds like the old Vaselined lens trick but in fact is a privacy tort akin to libel and defamation.

Few expect her to win, but the action is nonetheless reverberating as a kind of last stand against the current bricolage approach to facts.

Herself the recipient of two Best Actress Oscars, for “To Each His Own” (1946) and “The Heiress” (1949), Ms. de Havilland filed the suit last June, right after “Feud” aired to widespread critical acclaim, and a day before she turned 101. It was also just a few weeks after the queen of England bestowed upon Ms. de Havilland, whose estranged and equally famous sister Joan Fontaine died in 2013, the title of dame for her service to drama.

“When ‘Feud’ was first being publicized, but before it went on the air, I was interested to see how it would portray my dear friend Bette Davis,” Ms. de Havilland wrote in an email. “Then friends and family started getting in touch with me, informing me that my identity was actually being represented on the program. No one from Fox had contacted me about this to ask my permission, to request my input, or to see how I felt about it. When I then learned that the Olivia de Havilland character called my sister Joan ‘a bitch’ and gossiped about Bette Davis and Joan Crawford’s personal and private relationship, I was deeply offended.”

The last time Ms. de Havilland had a case before the California Court of Appeals was in 1944. Risking her career, she sued Warner Bros. to get out of her contract, which she had signed in 1936. She had been suspended for refusing parts assigned to her, a common ploy among studio bosses to keep their stars in line, with the missed time tacked on to the length of her deal.

She was 28, a brunet ingénue from English stock, raised in what she has wryly called “the most aristocratic village in the prune belt” of Northern California. In the 1930s alone, she had starred with the swashbuckling Errol Flynn in six films, including “The Adventures of Robin Hood,” and was lent out to David O. Selznick for the role that would make her an American treasure: Melanie Wilkes in “Gone With the Wind.”

She won then, tipping the scales of studio autocracy and strengthening a California labor statute. The so-named De Havilland Law prohibits the enforcement of a personal services contract beyond seven years.

Three quarters of a century later, Ms. de Havilland is hoping for another victory. “Feud,” she claims, as a work of historically convincing fiction, falsely exposes her as a hypocrite — “with a public image of being a lady and a private one as a vulgarity-using gossip,” violating Ms. de Havilland’s hard-earned reputation for “honesty, integrity and good manners.”

These are qualities that may seem quaint in the age of Twitter. But the legal action arrives during a content boom that has sent writers — and big-league actors and producers — raiding recent history sometimes before it has pickled, looking for figures and epochs to refashion as entertainment.

Courts have overwhelmingly supported First Amendment protections for movies and TV shows about figures and subjects in the public interest. But Ms. de Havilland is undaunted.

“A large part of the reason I decided to move forward with my action against Fox is that I realize that at this stage of my life and career I am in a unique position to stand up and speak truth to power — an action that would be very difficult for a young actor to undertake,” she wrote. “I believe in the right to free speech, but it certainly must not be abused by using it to protect published falsehoods or to improperly benefit from the use of someone’s name and reputation without their consent. Fox crossed both of these lines with ‘Feud,’ and if it is allowed to do this without any consequences, then the use of lies about well-known public figures masquerading as the truth will become more and more common. This is not moral and it should not be permitted.”

Ms. de Havilland agrees to interviews sparingly, often mentioning her love of Champagne, and has never cooperated with an official biography. Hollywood chroniclers have described relationships with Mr. Flynn, John Huston and Howard Hughes, but she has remained regally mum, in contrast to her voluble friend Ms. Davis, who died in 1989.

Ms. de Havilland’s memoir, “Every Frenchman Has One,” published in 1962, is about being an American new to France, where she moved in 1955 after marrying her second husband, Pierre Galante, then the editor of Paris Match. She continued to work in movies while raising two children: a daughter Gisele, her child with Mr. Galante; and a son, Benjamin, from her first marriage to the novelist and screenwriter Marcus Goodrich. Tracey Jackson, a longtime friend, calls her “almost Garboesque” in her protectiveness over her private life.

Then came “Feud.”

A lavish piece of early 1960s period dish, it had considerable pedigree in its Oscar-winning leading ladies, Susan Sarandon as Bette Davis and Jessica Lange as Joan Crawford, and Mr. Murphy, whose portfolio of prestigious docudramas includes “The People vs. O. J. Simpson” and “The Assassination of Gianni Versace,” both part of his “American Crime Story” serial.

“Feud” explores Ms. Davis’s and Ms. Crawford’s longtime hatred for each other and their uneasy alliance during the making of “Whatever Happened to Baby Jane?,” the 1962 horror movie that finally united them onscreen. Directed by Robert Aldrich, it was a surprise hit in a Hollywood being slowly subsumed by the counterculture, featuring a sadistic Ms. Davis in Kabuki makeup mentally torturing her paraplegic sister, played by Ms. Crawford.

For her performance, Ms. Davis received her final Best Actress nomination, evidently sending the spurned Ms. Crawford on a furious campaign of Oscar-night, anti-Bette subterfuge. (One cannot imagine Frances McDormand and Meryl Streep clashing like this.) In the end, Ms. Davis lost to the absent Anne Bancroft for “The Miracle Worker,” and a triumphant Ms. Crawford strode onto the stage to accept the statuette in Ms. Bancroft’s honor.

Ms. de Havilland’s character is used as a framing device for the Davis-Crawford cage match that unfolds in “Feud,” opening the series with the lines: “For nearly half a century, they hated each other, and we loved them for it.” Ms. Zeta-Jones is posed on a love seat at the 1978 Oscars, giving an interview. “Feud” meticulously copied the black dress and sheer caftan the real Ms. de Havilland wore to the Oscars that night, as well as her glittering pendant and blond coif. This physical copycatting is behind Ms. de Havilland’s right-of-publicity claim. Her claims of false light relate to the interview itself, which she says she never gave.

To prevail, Ms. de Havilland will have to convince a jury not only that the interview was fabricated, but also that it includes sentiments that the writers of “Feud” either knew were false or profferred in reckless disregard for the truth, causing economic damage to her reputation and “emotional distress.” Lawyers for Ms. de Havilland and FX are also engaged in a byzantine fact-check over Ms. de Havilland’s use of coarse language in other scenes, most notably in reference to her sister, Ms. Fontaine.

Ms. Smith maintains that her client, at a minimum, should have been consulted about the project ahead of time. “She would have considered, what was their proposal?” the lawyer said. “Are they proposing to compensate her? They would have found out that certain things were not true. Because they didn’t even try, in their arrogance and hubris, they didn’t take what we would argue are reasonable steps to find out what was true, and what wasn’t true.”

The network says that Ms. de Havilland’s consent was not needed, because “Feud” falls squarely under protected speech around fictional works in the public interest. Additionally, it contends that her portrayal is positive. “While I understand Ms. de Havilland alleges that she was portrayed as a gossip, the opposite is true,” said Mr. Murphy, who declined to comment for this article, in a declaration attached to FX’s defense. “She is portrayed as a wise, respectful friend and counselor to Bette Davis, and a Hollywood icon with a unique perspective on the past.”

Last August, the network filed a motion to dismiss the case under California’s anti-Slapp (Strategic Lawsuit Against Public Participation) statute, which allows for the quick dismissal of lawsuits that want to chill free speech. One month later, Los Angeles Superior Court Judge Holly Kendig issued her ruling: While “Feud” arose from protected speech, Ms. de Havilland had adequately shown enough cause to deserve her day in court, with the suit fast-tracked because of the plaintiff’s advanced age.

Legal observers were surprised.

“It is unusual for this type of case to proceed past anti-Slaap,” said Jennifer Rothman, a professor at Loyola Law School and the author of a forthcoming book called “The Right of Publicity: Privacy Reimagined for a Public World.” If the de Havilland decision were allowed to stand, Ms. Rothman said, “then that upends the film industry, the TV industry, the video game industry. Anyone who is trying to make stories based on true events with real people are not going to be able to do so without permission.”

Though Ms. de Havilland has the backing of the Screen Actors Guild, considerable forces have amassed against her. The Motion Picture Association of America and the streaming behemoth Netflix, which just signed Mr. Murphy to an exclusive producing deal reportedly worth $300 million, filed an amicus brief urging the appellate court to reverse the trial judge’s decision—an unusual alliance in a universe of legacy companies fending off big-monied new media, but perhaps necessary to squash a uniquely sympathetic plaintiff.

“The type of claims pursued by a celebrity like Olivia de Havilland here deserve especially heightened scrutiny because docudramas, biopics and historical dramas — which by design do not portray individuals or events literally or with obedience to historical fact — often depict real people who may not like, and may even be offended or embarrassed by, how they are portrayed,” the M.P.A.A.-Netflix brief says.

To suggest that producers must purchase consent or life rights encourages only whitewashed portrayals, is the thinking.

Moreover, according to Mr. Murphy, the five credited “Feud” writers “endeavored in good faith to ensure that the dialogue from Zeta-Jones’ characterization of de Havilland was based on comments, sentiments and tonal emotions expressed through the years by Ms. de Havilland herself.”

It is common knowledge that Ms. de Havilland had her own feud with Ms. Fontaine; what’s at issue is how it was conducted. “Dragon Lady, as I eventually decided to call her, was a brilliant, multitalented person, but with an astigmatism in her perception of people and events which often caused her to react in an unfair and even injurious way,” Ms. de Havilland told The Associated Press in 2016.

“Feud” is more succinct. “You know what my bitch sister has taken to telling the press?” Ms. de Havilland’s character says to Ms. Davis in “Feud.” “That I broke her collarbone when we were children.”

“We thought ‘bitch’ was more mainstream and would be better understood by the modern audience than ‘Dragon Lady,’” Tim Minear, a writer on the show, explained in court documents.

Lawyers for FX argue that the descriptors are synonyms. Further, they cite a vintage Warner Bros. blooper reel in which Ms. de Havilland lets forth with, “Oh, Christ, son of a bitch,” after flubbing a line on the set of the 1946 film “Devotion,” in which she played the author Charlotte Brontë.

Ms. de Havilland insists that the clip and others like it, which live on via YouTube, are exceptions. “Looking back at my younger self, I wish I had been more guarded in my language,” she told the court. “But these outtakes or bloopers are just that, mistakes and errors, not language that I did or would use in discussing other friends or family in a normal, polite, private or public forum.”

As for the suggestion that Ms. de Havilland never publicly gossiped: “Plaintiff gave many other television and print interviews in which she commented on other actors,” according to FX’s defense. “In an Academy of Achievement video interview, she criticized British actor Ralph Richardson: ‘He would do rather naughty things. He was a glove flapper.’”

In its clearest form, the right of publicity, an offshoot of privacy law, is meant not as a tool of censorship but to enable celebrities and other public figures to protect their images from false or unauthorized endorsements of products. In California, a hub of entertainment where the law is most hotly contested, the issue hinges on whether the person’s identity has been transformed — in other words, used as “the raw materials” for creative expression — or merely co-opts the “sum and substance” of the person wholesale.

Because the makers of “Feud” admitted that they wanted to make the appearance of the de Havilland character as real as possible, Judge Kendig said, her likeness was not transformed, leaving the mini-series open to a right of publicity claim.

On her right-of-publicity website in the last month alone, Ms. Rothman has tracked claims against “The Simpsons” brought by an actor from the movie “Goodfellas,” and one by the estate of the jazz legend Thelonious Monk against a microbrewery making Brother Thelonius beer. In California cases like Ms. de Havilland’s, are measured against a 2001 state Supreme Court ruling that established the transformative test to begin with.

In that case, the owners of the post-mortem rights of the Three Stooges sued a celebrity lithographer, Gary Saderup, for selling T-shirts bearing the comedy trio’s images. The court found that Mr. Saderup was liable because his drawings were too imitative, failing to “transform” the Stooges’ likeness. (In its ruling, the court drew a distinction between Mr. Saderup’s literal depiction of the Stooges and Andy Warhol’s transformative screen prints of Marilyn Monroe.)

Ms. Rothman believes right-of-publicity law is more urgently needed in cases of catfishing and revenge porn, where the victims aren’t celebrities or inherent publicity seekers.

There is precedent on both sides. Lawyers for Ms. de Havilland point to the Stooges case as well as a 2011 California appellate court ruling that found in favor of the band No Doubt, which sued the video game publisher Activision for violating the terms of a licensing agreement in the game Hero Band.

Lawyers for FX are more partial to a 1979 State Supreme Court decision disallowing a post-mortem right-of-publicity claim against a fictionalized TV movie about the life of Rudolph Valentino. Or an appellate court’s 2016 denial of a claim brought by former Army Sgt. Jeffrey Tarver, an explosive ordnance disposal technician who sued the makers of the Oscar-winning film “The Hurt Locker.”

As in “The Hurt Locker” case, “Feud” “is a docudrama, and therefore scenes are dramatized — i.e. transformed,” the defense motion in de Havilland reads. Besides, Ms. Zeta-Jones wasn’t even in enough of the mini-series to merit inclusion in the show’s opening credits.

Asked via email if her retirement from acting was a decision she came to with ease or difficulty, Ms. de Havilland said: “I would like to answer your question with another: How many roles of significance are written for women of advanced years?”

As “Feud” chronicles, she replaced Ms. Crawford on the “Baby Jane” follow-up, “Hush … Hush, Sweet Charlotte” (though not before she either did or didn’t tell the director, Mr. Aldrich: ““Darling, you know how much I hate to play bitches. They make me so unhappy.”).

By the ’70s, and ’80s, Ms. de Havilland was down to sporadic mini-series, disaster movies and TV guest spots. In 1981 came an episode of “The Love Boat.” The last movie she appeared in, for British TV, was in 1988.

It’s a sadly familiar story about how Hollywood treats its female elders, something that Mr. Murphy kept pointing to as motivation for covering the Crawford-Davis story. As Ms. de Havilland awaits her public hearing, he has moved on to the next subjects in the “Feud” anthology: Prince Charles and Princess Diana.

Netflix, SAG Weigh In On Opposite Sides In FX ‘Feud’ Row

By RJ Vogt
(Law360, Los Angeles)

Four groups of amici, with members including the MPAA, Netflix and A&E, told a California appeals court Thursday that FX’s “Feud: Bette and Joan” show is protected from Olivia de Havilland’s false light and right of publicity claims under the First Amendment, while SAG filed a bid to support the 101-year-old actress.

Netflix Inc. and the Motion Picture Association of America Inc. said in their request to file an amicus curiae brief in support of FX Networks LLC and Pacific 2.1 Entertainment Group Inc. that screenwriters need the freedom to make compelling work without fear of liability in order to produce docudramas like “Feud,” which by design do not portray individuals or events literally.

The Screen Actors Guild-American Federation of Television and Radio Artists, on the other hand, said in its request that because Havilland is still alive, the creators had a responsibility to ensure it didn't dishonor her reputation.

A lower court had agreed to let de Havilland’s suit continue in September after finding FX rearranged timelines, made up dialogue and failed to get her consent, but Netflix and the MPAA argued in Thursday’s filing that the trial court’s analysis creates an “untenable Catch-22” where too-realistic docudramas can be accused of violating subjects’ right of publicity while those deemed too dramatic are actionable under false light.

“Affirming the trial court’s analysis — an unprecedented deviation from decades of case law protecting freedom of expression from state tort law claims — threatens to doom entire genres of fact-based motion pictures, including docudramas and biopics,” the filing said.

“Feud” was created by producer Ryan Murphy to tell the story of the historic Hollywood rivalry between Bette Davis and Joan Crawford when they were making the 1962 film “What Ever Happened to Baby Jane?”

De Havilland, who first sued in June, claims the show wrongfully showed her as the kind of person who engaged in “gossipmongering” about other actors — including calling her sister, Joan Fontaine, a “bitch.”

Other scenes at issue include a 1978 red carpet interview that allegedly never occurred and a dig at Frank Sinatra’s alcoholism that de Havilland, who is played by Catherine Zeta-Jones, says never happened.

After FX lost its bid to kill the suit in September, the network quickly appealed, noting that due to de Havilland’s age, it would pursue speedy proceedings.

That took the case to California’s Court of Appeal, where Netflix and the MPAA argued in Thursday’s filing that in order to be found in violation of false light claims, de Havilland should’ve passed the actual malice standard and shown that FX and Pacific 2.1 intended the defamatory portrayal and had actual knowledge of the falsity portrayed.

“There is absolutely no evidence here that Feud’s creators ever intended to portray Ms. de Havilland as a gossip, nor even any evidence that they had any inkling that the mere portrayal of her character giving fictional interviews (which was clearly intended to be a thematic framing device) would even be interpreted as implying that Ms. de Havilland was a gossip,” Netflix and the MPAA said.

They also said the First Amendment provides docudramas “robust protection” against right of publicity claims like de Havilland’s because the medium is “vital to public discourse in a free society.”

But according to counsel for the actress Suzelle Smith of Howarth & Smith, the position Netflix and MPAA have taken is “near-extra-terrestrial.” She told Law360 on Friday that sensationalized, reckless falsehoods are not protected by the Bill of Rights, nor is achieving increased ratings a justification for violating the law.

“What is at stake here is not freedom of genuine honest expression, but whether the industry can take for itself valuable property rights belonging to the living owner of a famous name and simultaneously dishonor her by putting falsehoods in her mouth,” Smith said.

Smith added that her client appreciates the amicus support of SAG-AFTRA, which filed a proposed amicus brief the same day Netflix and the MPAA filed theirs.

In SAG’s filing, the union said the First Amendment does not provide absolute protection and must be balanced against other rights. Although SAG did not take a position on the specific facts of de Havilland’s case, the group said the show’s creators could not claim their version of the actress was so transformative that she herself has no grounds to claim right of publicity.

“No matter how much labor and art went into this [production], its purpose was to transform the appearance of the actress portraying Dame de Havilland to better resemble Dame de Havilland,” SAG said. “It was not done to transform a loose depiction of Dame de Havilland into something new.”

In addition to SAG, Netflix and MPAA, three other groups requested permission to file amicus briefs in the closely watched case. On Wednesday, a group of intellectual property and constitutional law professors asked to weigh in and support FX, while Thursday saw an additional request in support of FX filed by a group comprising the Electronic Frontier Foundation, the Organization for Transformative Works and the Wikimedia Foundation.

A group including A&E Television Networks LLC, Discovery Communications LLC, Imperative Entertainment LCC, Urban One Inc., Critical Content LLC, the Reporters Committee for Freedom of the Press and the First Amendment Coalition also filed a proposed amicus brief supporting the show’s creators on Thursday.

Counsel for FX and Pacific 2.1 did not immediately respond to a request for comment on Friday.

Counsel for the amici groups supporting FX also did not immediately respond to requests for comment, nor did counsel for SAG.

De Havilland is represented by Suzelle M. Smith and Don Howarth of Howarth & Smith.

FX Networks LLC and Pacific 2.1 Entertainment Group Inc. are represented by Glenn D. Pomerantz of Munger Tolles & Olson LLP.

The MPAA and Netflix are represented by Frederic D. Cohen and Mark A. Kressel of Horvitz & Levy LLP.

SAG is represented by its General Counsel Duncan W. Crabtree-Ireland.

A&E Television Networks LLC, Discovery Communications LLC, Imperative Entertainment LCC, Urban One Inc., Critical Content LLC, the Reporters Committee for Freedom of the Press and the First Amendment Coalition are represented by Rochelle L. Wilcox of Davis Wright Tremaine LLP.

The Electronic Frontier Foundation, the Organization for Transformative Works and the Wikimedia Foundation are represented by Daniel K. Nazer of the Electronic Frontier Foundation.

The group of professors is represented by Jennifer E. Rothman of Loyola Law School, Los Angeles, and Eugene Volokh of UCLA School of Law.

The case is FX Networks LLC et al. v. Olivia de Havilland, number B285629, in the California Court of Appeal, Second Appellate District.

FX Can't Toss Olivia de Havilland's 'Feud' Portrayal Suit

By Melissa Daniels
(Law360, Los Angeles)

Olivia de Havilland beat back an anti-SLAPP motion from FX Networks in her lawsuit over its “Feud: Bette and Joan” series on Friday when a California judge found the 101-year old actress provided sufficient evidence to support a claim that certain scenes portrayed her in a false light.

Los Angeles Superior Court Judge Holly Kendig denied the anti-SLAPP, or Strategic Lawsuit Against Public Participation, motion that sought to toss out de Havilland’s suit accusing FX Networks LLC of damaging her reputation with the hit series “Feud.” FX argued the eight-part series is protected under the First Amendment.

Though Judge Kendig agreed with FX that de Havilland’s false light and right to publicity claims arise from protected activity, she ultimately concluded de Havilland met her burden to show a likelihood of succeeding on the merits, citing a minimal threshold at the anti-SLAPP stage. She rejected FX’s arguments that the portrayal wasn’t defamatory, saying that a viewer “may think plaintiff to be a gossip who uses vulgar terms.”

The judge also examined whether the show’s creator acted with actual malice, or with knowledge of falsity or reckless disregard for the truth. Though the show’s creators declared that they undertook extensive historical research and aimed to create a nuanced, accurate depiction, de Havilland was never contacted during the show’s production, Judge Kendig said.

“Miss de Havilland was alive,” Judge Kendig said. “She could’ve answered questions.”

Robert Rotstein of Mitchell Silberberg & Knupp LLP, who is representing FX, told Judge Kendig they planned to appeal. Given de Havilland’s age, he said he would work with her attorneys to ensure speedy proceedings.

“Feud” was created by producer Ryan Murphy to tell the story of the historic Hollywood rivalry between Bette Davis and Joan Crawford when they were making the 1962 film “What Ever Happened to Baby Jane?”

De Havilland, who first sued in June, says the show wrongfully showed her as the kind of person who engaged in “gossipmongering” about other actors — including calling her sister, Joan Fontaine, a “bitch.”

Other scenes at issue include a 1978 red carpet interview that allegedly never occurred and a dig at Frank Sinatra’s alcoholism that de Havilland, who was played by Catherine Zeta-Jones, says never happened.

FX’s anti-SLAPP motion said de Havilland’s “meritless” suit should be rejected because of First Amendment protections for expressive works. It argued that de Havilland couldn’t prove her false light claim because she couldn’t prove the required elements, which are the same as those for defamation: proof of falsity, defamatory meaning and actual malice.

In looking to knock out the right to publicity claims, FX argued that de Havilland couldn’t prevail partly because the dramatizations in "Feud" are transformative.

But on Friday, Judge Kendig shot down the transformative argument, pointing to the creators’ own declarations that they strove to make a nuanced, historically accurate depiction of the celebrities in the show.

“Because of that, there’s nothing transformative about this docudrama,” Judge Kendig said.

After the judge spent about an hour walking through the reasoning for her tentative ruling, FX’s counsel Rotstein pushed back against the actual malice analysis, arguing that there was no evidence that the show’s creators acted recklessly. There’s a difference, he said, between false and dramatized.

“They did research, they tried to make it right,” he said. “When writers try to make it right, that can’t be actual malice.”

But de Havilland’s attorney Suzelle Smith of Howarth & Smith argued that all the research the show’s creators claimed to do put together a “structured, grafted” series that mixed historical facts and falsehoods.

“We’re not defeated just because they say, ‘We didn’t mean to do it,’” Smith said.

Don Howarth of Howarth & Smith, who also represents de Havilland, told Law360 after the hearing that FX’s actions took his client’s “name and image for their own benefit” without any compensation.

“They didn’t consult with her, they didn’t verify, they didn’t do anything,” he said.

An attorney for FX declined to comment.

De Havilland is represented by Suzelle Smith, Don Howarth and Zoe E. Tremayne of Howarth & Smith.

FX and the production company are represented by Robert H. Rotstein, Emily F. Evitt and Aaron M. Wais of Mitchell Silberberg & Knupp LLP.

The suit is de Havilland v. FX Networks LLC et al., case number BC667011, in the Superior Court of the State of California, County of Los Angeles.

Olivia de Havilland, 101, Wins Round In FX Fight: Bette Davis, Joan Crawford Pic Lawsuit

By Christina Kelley
(My News LA)

Olivia de Havilland can move forward with her lawsuit alleging FX Networks falsely portrayed her in an anthology series about the infamous feud between fellow actresses Bette Davis and Joan Crawford and used her image without providing any compensation, a judge ruled Friday.

The judge rejected defense arguments to dismiss her case on free-speech grounds.

“They’re in deep trouble,” de Havilland attorney Don Howarth said outside the courtroom after Los Angeles Superior Court Judge Holly Kendig issued her ruling.

Howarth predicted a jury will see the case in the same way as the judge.

FX Networks attorney Robert Rotstein told the judge his clients will appeal, but that he would work with the other side to try and keep the trial date reasonably close to the Nov. 27 date Kendig previously set in giving de Havilland priority because the actress is 101 years old.

In her ruling, Kendig said that although the series “Feud: Bette and Joan” was aired in the public forum of television and dealt with a subject of public interest, de Havilland still showed a likelihood of “prevailing on the merits.”

Kendig also found that de Havilland — who under the law is a public figure — showed that the network either knew that aspects of the series were false, or did not care whether they were true or not.

The judge cited four examples, including a depiction of a 1978 Academy Awards interview in which de Havilland disparaged Davis and Crawford. Kendig said the evidence showed the interview never took place.

Kendig also said de Havilland was falsely portrayed as someone who was a “gossip” and who used vulgar language against others, including her sister, Joan Fontaine, and that she had made disparaging remarks about Frank Sinatra’s drinking habits.

Kendig said she disagreed with the defense that the series was “transformative” and said there was evidence the network benefited financially from the use of de Havilland’s name.

She additionally said that because de Havilland is still alive, she could have been asked about the accuracy of some of the matters now in dispute.

De Havilland’s suit, filed June 30, alleges false light invasion of privacy, infringement of the right of publicity and unjust enrichment. De Havilland’s 49 feature film roles included portraying Melanie Hamilton in “Gone with the Wind.”

Catherine Zeta-Jones portrayed de Havilland in the series, which starred Jessica Lange as Crawford and Susan Sarandon as Davis.

Crawford died in May 1977 and Davis in October 1989.

A two-time Academy Award winner for her lead roles in “To Each His Own” and “The Heiress,” de Havilland “has built a professional reputation for integrity, honesty, generosity, self-sacrifice and dignity,” according to her complaint. “A key reason for the public’s deep respect for Olivia de Havilland is that in her 80-plus year career, she has steadfastly refused to engage in typical Hollywood gossip about the relationships of other actors.”

–City News Service

Olivia De Havilland Defends Her Suit Against FX Over 'Feud'

By Steven Trader
(Law360, New York)

Actress Olivia de Havilland on Friday defended her lawsuit against FX Networks over the hit TV show “Feud: Bette and Joan,” telling a California state judge that including her without permission and putting false and disparaging words into her mouth is not protected speech.

In an opposition brief, the two-time Academy Award winner and “Gone With The Wind” star countered the network’s argument that her lawsuit should be struck under California’s anti-SLAPP statute, which is intended to protect against suits that threaten free speech in connection with a matter of public interest, also known as a strategic lawsuit against public participation.

Instead, the 101-year-old actress said she has a high probability of succeeding on her right to publicity and false light claims, given that FX Networks LLCadmittedly used her identity without permission to its own advantage and recklessly disregarded the truth by creating fake scenes and false statements that presented her character as a gossip in the docudrama, which details the rivalry between de Havilland’s close friend Bette Davis and Joan Crawford.

“Not only are the statements and conduct that 'Feud' attributes to de Havilland false, but they were highly offensive to her,” attorneys for the actress wrote on Friday. “The statements cast de Havilland in an untrue and ill-mannered fashion, which contradicts the professional reputation built over many decades of being a loyal friend and person of integrity and restraint. They are not minor or insignificant.”

The actress’ opposition brief was accompanied by declarations from Hollywood “insiders” and experts, including former senior MGM executive David Ladd, who told the court that obtaining consent from a well-known person for use of their name, identity or character is a serious matter on the standard pre-production checklist for a film, and failure to do so would be “out of the ordinary.”

Another expert, writer and producer Cort Casady, said in a declaration that attributing false statements and inaccurate endorsements to a person portrayed in a production without their permission amounted to “production malpractice.” In a third sworn statement, another expert estimated that failing to obtain de Havilland’s consent likely cost her between $1.38 and $2.1 million.

“As our experts set out in detail, there is no way FX defendants did not know that they were violating the law; instead they chose to ignore it and roll the dice,” Suzelle Smith, an attorney for de Havilland, said in a statement. “The facts, prior precedents and expert testimony overwhelmingly support the strength of Miss de Havilland’s case.”

Despite garnering a reputation for honesty and integrity over an 80-year career in front of the camera, de Havilland said in a complaint filed in June that no one at FX asked her for permission to be portrayed in “Feud,” which explores how the on-again, off-again relationship between Davis and Crawford played out during the shooting of their 1962 film “What Ever Happened to Baby Jane?”

According to de Havilland’s counsel, the show wrongfully makes her out to be a hypocrite who dealt in gossip in order to promote herself at the Academy Awards, placing her in a false light in order to boost ratings.

FX Networks and show creator Ryan Murphy battled back in August that her lawsuit fails under the anti-SLAPP law because the show’s portrayal of the actress isn’t defamatory and was, in fact, based on meticulous research, among other arguments. The network also argued that it did not need de Havilland’s permission to include her in the show because “Feud” is an expressive TV show that concerns matters of public interest.

Because the network portrayed her as if she was endorsing “Feud” and included her in fake scenes that never actually happened, while also capitalizing on her fame by making her portrayal as authentic as possible, the public interest defense fails, the actress argued.

“The grandson of Joan Crawford, Casey LaLonde, is reported to have worked with FX and Murphy to create an accurate portrait of her character,” Smith said in a statement. “Why in the world would FX obtain the backing and apparently compensate LaLonde for use of his deceased grandmother’s identity, and consciously ignore the rights of the very much alive, Olivia de Havilland, to protect her reputation from distortion?”

A dismissal motion hearing in the case, which has been fast-tracked because of de Havilland’s age, is set for Sept. 29.

Counsel for FX and Murphy did not immediately return a request for comment.

De Havilland is represented by Suzelle Smith, Don Howarth and Zoe E. Tremayne of Howarth & Smith.

FX and the production company are represented by Robert H. Rotstein, Aaron M. Wais and Emily F. Evitt of Mitchell Silberberg & Knupp LLP.

The suit is de Havilland v. FX Networks LLC et al., case number BC667011, in the Superior Court of the State of California, County of Los Angeles.

Olivia De Havilland, 101, Gets Suit Against FX Fast-Tracked

By Bonnie Eslinger
(Law360, Los Angeles)

A California judge granted “Gone with the Wind” actress Olivia de Havilland, 101, an early trial in her right of publicity suit against FX Networks LLC over the use of her name and identity in the series “Feud: Bette and Joan,” saying her advanced age necessitated the “fast track.”

Los Angeles Superior Court Judge Holly E. Kendig said on Wednesday that de Havilland's jury trial would start on Nov. 27.

“I can't image how one could not do that when the plaintiff is 101 years old,” the judge said.

In her July motion for trial preference, de Havilland told the court that her “unusually” advanced age brings with it a susceptibility to disease and recurring health issues that doesn’t ensure she’ll survive for much longer. Because her statutory right of publicity expires upon her death, de Havilland said she has a substantial interest in her case against FX Networks and its production company, Pacific 2.1 Entertainment Group Inc.

An attorney for the network, Robert Rotstein of Mitchell Silberberg & Knupp LLP, said his clients weren’t opposed to moving up the trial date, but he needed more than 11 weeks to prepare.

“The end of November is quite quick,” he said.

Judge Kendig said waiting until December put the trial smack in the middle of holidays.

“You don't want jurors here before Christmas,” the judge said. “You're not going to have jurors paying a single bit of attention.”

When Judge Kendig asked Rotstein why he needed more time, he said securing, preparing and deposing experts would not be quick or easy.

The judge suggested the network could have started that shortly after June, when de Havilland filed her suit.

An attorney for de Havilland, Suzelle Smith of Howarth & Smith, jumped in and told the court that her client’s opposition to FX’s motion to dismiss would be filed on Friday, and it would provide the network with the names of the experts that the actress was using along with some form of their reports, which would expedite their pretrial work.

“That will give them the opportunity — essentially a preview of our whole case,” Smith said. “They'll be able to anticipate everything we'll do at trial, so they’ll be way ahead of the game.”

During Wednesday’s proceeding, FX’s attorney also said the network would likely take up the court’s suggestion to mediate the matter if the judge ruled against its motion to toss the case under California’s anti-SLAPP statute, which bars suits that infringe free speech.

“It’s up to you,” the judge said. “You are on a fast track to trial, and if you do have the case revealed on Friday, then you are in much better shape than most ... So hopefully that’s good.”

After the hearing, which was attended by de Havilland’s daughter, Gisèle Galante, Smith told reporters that the centenarian might attend the trial, saying de Havilland was “very invested in this case."

Smith later told Law360 that if the actress defeats FX’s motion to dismiss and the network appealed, the Rules of Court allow an expedited appeal based on age.

In its motion, FX, the network behind “Feud,” which details the rivalry between de Havilland’s close friend Bette Davis and Joan Crawford, urged the court to strike the latest iteration of the two-time Academy Award winner’s suit challenging her portrayal in the popular docudrama, saying the state’s anti-SLAPP statute is intended to protect against suits like this that threaten free speech in connection with a matter of public interest.

“Because the anti-SLAPP statute applies to Feud, plaintiff must show a probability of prevailing on the merits of each of her claims,” FX said, contending that she can’t do so because the show’s portrayal of the actress isn’t defamatory and was, in fact, based on meticulous research, among other arguments.

Despite garnering a reputation for honesty and integrity over a nearly 80-year career in front of the camera, de Havilland said in a complaint filed in June that no one at FX asked her for permission to be portrayed in “Feud,” which explores how the on-again, off-again relationship between Davis and Crawford played out during the shooting of their 1962 film “What Ever Happened to Baby Jane?”

The suit claims that the show — which was created by Ryan Murphy, who is also behind popular shows like “Glee” and “American Horror Story” — isn’t protected by the First Amendment because the network put false words into her mouth in the interviews and documentary-style conversations portrayed in the script.

Shortly thereafter, de Havilland tweaked her complaint, accusing FX and production company Pacific 2.1 Entertainment of casting her in a false light, specifically taking issue with her character being shown giving an interview where she discusses Crawford and Davis; referring to her sister, actress Joan Fontaine, as a “bitch”; and joking about Frank Sinatra drinking alcohol in his dressing room, according to court filings.

The actress also claims that her inclusion in the show violates her right to publicity because the creators didn’t get her permission. But these allegations are no more availing, FX asserted, saying it didn’t need permission to include the “living legend” because “Feud” is an expressive TV show that concerns matters of public interest.

De Havilland’s request for an early trial falls under a California state law that allows people over 70 to request an early trial, according to her counsel.

De Havilland is represented by Suzelle Smith, Don Howarth and Zoe E. Tremayne of Howarth & Smith.

FX and the production company are represented by Robert H. Rotstein, Aaron M. Wais and Emily F. Evitt of Mitchell Silberberg & Knupp LLP.

The suit is de Havilland v. FX Networks LLC et al., case number BC667011, in the Superior Court of the State of California, County of Los Angeles.

Olivia de Havilland's 'Feud' Trial Expedited, Set for November

By Nardine Saad

Los Angeles Times, Los Angeles (September 13, 2017, 11:31 AM)

Two-time Oscar winner Olivia de Havilland will be getting her day in court this fall.

The 101-year-old Hollywood icon, who sued FX and Ryan Murphy over her depiction in the Emmy-nominated docuseries "Feud: Bette and Joan," has been granted the speedy trial she was seeking due to her advanced age.

De Havilland's jury trial will begin on Nov. 27 and is expected to last five to seven days, Los Angeles Superior Court Judge Holly Kendig ruled Wednesday at a hearing for the actress' motion to fast-track the lawsuit.

"I can't imagine not granting the motion based on the plaintiff being 101," Kendig said (via Deadline).

Though de Havilland, who lives in Paris, did not appear in court, her daughter Gisele Galante Chulack, an L.A. resident, attended the hearing instead, Deadline reported. It is unclear if the veteran actress will appear for later court dates.

The "Gone With the Wind" star sued FX and Murphy in June claiming that her depiction in "Feud" was unauthorized. De Havilland, who was played by Catherine Zeta-Jones in the miniseries about rival actresses Bette Davis and Joan Crawford, makes four major legal claims about violations of her common law and statutory rights of publicity, her right to privacy and unjust enrichment.

Catherine Zeta-Jones as Olivia de Havilland in "Feud." (Kurt Iswarienko / FX)Her attorney Suzelle M. Smith said de Havilland is "absolutely thrilled" that the trial has been expedited.

"Having this case resolved quickly is particularly meaningful to the plaintiff, who is defending the reputation of grace and integrity that she has built over the course of her 80-year career," Smith said in a statement following the hearing.

A rep for FX had no further statement regarding Wednesday's hearing.

In the lawsuit, de Havilland alleges that neither FX, Murphy nor producers at 20th Century Fox TV sought or obtained her permission to include her in the eight-episode anthology. De Havilland also took issue with her portrayal during an episode about the 1963 Oscars during which Zeta-Jones had ample screen time and relayed gossipy commentary about the players of the night. The veteran actress believes the episode cast her in a "false, hurtful and damaging light."

On Wednesday, FX's attorney sought more trial time to track down third parties and experts because the issue "goes back decades." FX and Murphy's attorneys have argued that de Havilland's lawsuit impinges on the defendants' First Amendment right to "create expressive works about matters of public interest" and filed an anti-SLAPP motion to strike the lawsuit in its entirety last month.

They said that de Havilland's consent was not needed to include her in the series, nor did her inclusion violate her right of publicity. They argued that de Havilland "cannot carry her burden of showing a probability of prevailing on any of her four causes of action" under the state's anti-SLAPP statutes protecting petition and free-speech rights.

That motion further complicates the situation because, if granted, the defendants would be awarded an automatic pre-trial appeal, which could push the trial date back further, the Hollywood Reporter said.

A hearing on the anti-SLAPP motion has been set for Sept. 29.

Olivia De Havilland Scores Win In ‘Feud’ Lawsuit; Trial To Start In November

By Dominic Patten
(Deadline, Los Angeles)

As FX and the producers of Feud: Bette and Joan learned today in court, time waits for no one, especially if 101-year old Olivia de Havilland wants a speedy trial for her lawsuit over how she was depicted in the Emmy nominated series.

Just days before the Ryan Murphy co-created Feud could see big wins at the 69th annual Primetime Emmy Awards on September 17 for stars Susan Sarandon and Jessica Lange, LA Superior Court Judge Holly Kendig unsurprisingly ruled Wednesday in the two time Oscar winner’s favor. An approximately five to seven-day trial has been set to start on November 27.

While the Paris-based de Havilland was not at the well-attended hearing today with her attorneys, her daughter and LA resident Gisele Galante Chulak was there. There was no real opposition from FX and the other defendants in the matter, though the parties differed over how long the trial should take. “Because this goes back decades, there are third parties we have to locate,” said FX attorney Robert Rotstein this morning seeking more trial time, looking at experts in genre and the like.

“I can’t image how one could not do that when the plaintiff is 101 years old,” said the Judge in court, though she expressed concerns about having a trial so close to the holidays. Judge Kendig set November 13 as the date of final exchange of documents between the parties, including jury instructions.

Seeking wide-ranging damages and a move to essentially shut down the FX anthology show with an injunction, de Havilland insisted in her initial June 30 lawsuit that her portrayal by Catherine Zeta-Jones in Feud damaged her “professional reputation for integrity, honesty, generosity, self-sacrifice and dignity.”

Having won twice at the Creative Emmys this past weekend, Feud is up for 10 nominations on September 17 out of its total of 18. With a trial now set, de Havilland’s legal team of Don Howarth, Suzelle Smith and Zoe Tremaye of L.A.’s Howarth & Smith will surely depose Murphy, FX execs, Oscar winner Zeta-Jones and others connected to the case. Undoubtedly, de Havilland herself will also sit for a deposition and come to town for the trial from her home in France.

First proposed back in late July, the motion to fast track the proceedings is based on the reality of de Havilland’s “unusually advanced age,” to quote the paperwork from her lawyers. Simply put, without being too indelicate and aware of how long such suits can grind away in the courts, the July 1, 1916-born icon wanted everything expedited so she would be alive to see Lady Justice in action. A statute in the state of California provides for parties in a legal matter to petition for a faster trial, for the obvious reasons.

In her jury seeking complaint of late June, the Hold Back the Dawn and The Heiress actress asserts that FX, Murphy and producers 20th Century Fox TV never even sought nor obtained her permission to depict her or use her name in their eight-episode series about Joan Crawford and Bette Davis. Among other issues, de Havilland’s lawsuit specifically targets the alleged backstage drama depicted in Feud‘s “And the Winner Is” fifth episode at the 1963 Oscars.

“At the 1963 Academy Awards, Zeta-Jones’ de Havilland comments to Bette Davis, portrayed by Susan Sarandon, that Oscar host Frank Sinatra must have drunk all the alcohol in the backstage lounge, because they cannot find any,” says the June 30 compliant. “All of this is untrue and casts Olivia de Havilland in false, hurtful and damaging light.”

Of course, FX and the other defendants repudiate de Havilland’s claims – respectfully.

“By alleging that Feud casts her in a false light and violates her right of publicity, Olivia de Havilland’s meritless lawsuit seeks to impinge on Defendants’ First Amendment right to create expressive works about matters of public interest,” asserts an extensive August 29 anti-SLAPP motion to strike from FX’s Mitchell Silberberg & Knupp LLP lawyers. “The Court should grant Defendants’ motion to strike in its entirety and award fees.”

A hearing on the anti-SLAPP motion is scheduled for September 29, also in Judge Kendig’s courtroom. If FX take a hit on that one, the defendant is expected to appeal quickly and seek an extended stay. To counter that, de Havilland’s side look sure to also seek an expedited treatment in the appellate court, as California law provides. The two sides could also mediate that part of the case, Howarth told the court Wednesday.

So, the Feud feud continues. See ya at the Emmys on Sunday.

Olivia de Havilland, at 101, Gears Up for a Fight In 'Feud' Court Battle

By Nardine Saad
(Los Angeles Times)

Hollywood legend Olivia de Havilland has strengthened her resolve in her court battle with FX and "Feud" showrunner Ryan Murphy.

The 101-year-old, two-time Oscar winner regarded the network's "weak" move on Tuesday to dismiss her latest complaint as a sign of "their continuing disrespect for her and for California law," her attorney, Suzelle M. Smith, said in a statement to The Times on Wednesday.

It’s the latest move in the "Gone With the Wind" star’s lawsuit against FX and Murphy, which she filed in June over her depiction in “Feud: Bette and Joan,” the miniseries about rival actresses Bette Davis and Joan Crawford. The Paris-based De Havilland, who was played by Catherine Zeta-Jones in the docudrama, makes four major legal claims about violations of her common law and statutory rights of publicity, her right to privacy and unjust enrichment.

Her latest amended complaint was meant to establish the legal elements of falsity, reckless disregard for the truth and a conscious decision by FX and Murphy not to obtain her consent to use her name or character, Smith said in her statement.

Dishy details about the main characters and other Hollywood power players, as well as whether De Havilland described her sister and storied rival Joan Fontaine as a "bitch" in the series, are among the items discussed in De Havilland's amended complaint and FX's motion to strike it.

"In an effort to discredit her, they attempt to throw mud on a great lady," Smith said. The complaint also explained that De Havilland, an English dame, "built a public image of being a lady" who did "not speak in crude and vulgar terms about others, including her sister."

FX and Murphy's motion "strengthened Miss de Havilland’s resolve to stand up to big Hollywood and fight for her rights, and the rights of all others in such circumstances," Smith wrote. "If Defendants' view of the law were to prevail, then the California statute giving a celebrity the exclusive right to control and profit from her name and identity, and protect her reputation, would be meaningless."

Smith said the actress would be filing an opposition to the motion on Sept. 15, just days before the Primetime Emmy Awards, where "Feud" is expected to be a big winner, with18 nominations.

The defendants' Tuesday motion cited the U.S. and California Constitutions' rights to free speech in connection with a public issue and petitioned the court to strike De Havilland's latest complaint. It also asked for an order awarding them attorney's fees and costs, according to court documents obtained by Deadline.

"Feud: Bette and Joan," they argued, "is a prime example of an important expressive work."

"In dramatizing the infamous rivalry between iconic actors Bette Davis and Joan Crawford and how that rivalry played out during the shooting of their 1962 film What Ever Happened to Baby Jane?, Feud is a social commentary on Hollywood's history of sexism, misogyny, and media manipulation, issues that still plague Hollywood today," the motion said.

FX and Murphy's attorneys argued that De Havilland's consent was not needed to include her in the show, nor did her inclusion violate her right of publicity. They argued that De Havilland "cannot carry her burden of showing a probability of prevailing on any of her four causes of action" under the state's anti-SLAPP statutes protecting petition and free speech rights.

The 25-page motion went to great lengths to explain how "Feud" is "an expressive television show and concerns matters of public interest."

"Feud's depiction of Plaintiff is transformative and constitutionally protected for that separate reason,” the motion said. “Moreover, a public figure like [de Havilland] cannot hold the creators of an expressive work liable in tort absent falsity and actual malice, neither of which is present here."

"Finally,” the motion said, “[De Havilland's] fourth cause of action for unjust enrichment claim fails because it is derivative of her other claims and is not a separate claim under California law."

A hearing in the case is set for Sept. 29 in Los Angeles Superior Court with Judge Holly E. Kendig presiding. Earlier this month, De Havilland's legal team filed a motion to expedite the lawsuit due to her advanced age.

Screen Icon, 101, Urges Speedy Trial of Lawsuit Over TV Series

By Lila Seidman
(Los Angeles Daily Journal)

Weeks after filing a lawsuit against showrunner Ryan Murphy and FX Networks over her depiction in the Emmy- nominated series, "Feud: Bette and Joan," Golden Age screen icon Olivia de Havilland has asked the court to expedite the trial, citing her advanced age. De Havilland celebrated her 101st birthday on July 1.

In its first public statement on thecase, Fox 21 defended the show on Wednesday, calling it "meticulously researched."

"By the logic of Ms. de Havilland's attorneys, no producer would be able to tell any stories about famous people, living or dead, without their consent," the statement said.

De Havilland's attorneys filed a request with Los Angeles County Superior Court Judge Holly Kendig on Tuesday, asking that the trial be set in November or no later than 120 days after her motion is granted. The motion is set for a hearing on Sept. 13, days before the Prirnetime Emmy Awards, where the anthology series about the behind-the-scenes rivalry between Joan Crawford and Bette Davis is nominated for 18 awards.

The motion relies on a statute that allows people over 70 to fast-track the litigation process.

"[It's] a matter of common sense. When you reach 90, much less 100- plus, you're approaching the area where your longevity cannot be counted on," said de Havilland's attorney Suzelle Smith of Los Angeles- based Howarth & Smith. "I think this will be a pretty straightforward case for the judge." Don Howarth and Zoe Tremayne of the same firm are also on the plaintiff's team.

In the suit filed June 30, the "Gone with the Wind" star alleges unauthorized commercial use of her name and identity in the show, which details of a feud between Crawford and Davis. De Havilland v. FX Networks LLC, BC667011 (L.A. Super Ct., filed June 30, 2017).

According to two-time Oscar winner de Havilland, her character in the show, played by Catherine Zeta-Jones, is portrayed as gossiping about the title characters and disparaging her sister, actress Joan Fontaine.

The complaint alleges that statements attributed to de Havilland are false and "have caused her economic, reputatioμal, and emotional damages, including distress, anxiety and humiliation." She is seeking unspecified damages and an injunction against FX to prevent it from using her name and likeness. Smith said de Havilland was not consulted for the project, despite being the only living person prominently depicted.

Olivia de Havilland Wants to Take FX to Trial Before Her 102nd Birthday

By Ashley Cullins
(The Hollywood Reporter, Los Angeles)

This feud could reach trial in the next four months.

FX's biggest event this fall may not be the debut of American Horror Story: Cult — as Olivia de Havilland is asking the court to expedite her lawsuit against the network over her portrayal in Feud: Bette and Joan.

The 101-year-old actress says Ryan Murphy's series makes her look like a gossip who exploited the personal lives of others to further her own career. She's the only living person portrayed in the show, yet she wasn't consulted, and she's suing for infringement of common law right of publicity, invasion of privacy and unjust enrichment.

In a Tuesday filing, she asks L.A. Superior Court judge Holly Kendig to set a trial for November, relying on a California statute that essentially allows parties who are 70 or older to speed up litigation.

"This is the kind of case for which the statute was passed," said de Havilland's attorney Suzelle Smith in a statement. "There is a substantial risk that without a trial preference, Miss de Havilland will be prejudiced in not obtaining the benefits of the litigation. She is eager to have this case fully resolved well in advance of her 102nd birthday.”

Even considering de Havilland's three-digit age, this motion is unusually quick. Attorneys for FX haven't even filed an appearance in the matter. Also worth noting, the case was originally before judge Robert Hess, but Smith filed a peremptory challenge and it was reassigned last week. The exact nature of that conflict is unclear.

July 26, 9:40 a.m. Updated with a statement from Feud producers.

Olivia de Havilland Sues FX Over Feud: Bette and Joan

(BBC)

Oscar-winning actress Olivia de Havilland is suing the makers of a television show which she says portrayed her as a "petty gossip".

De Havilland, who turns 101 on Saturday, filed a lawsuit against FX Networks and producer Ryan Murphy over the miniseries Feud: Bette and Joan.

The drama explored the bad blood between the Hollywood screen legends Joan Crawford and Bette Davis.

The actress, who appeared in 50 films, was played by Catherine Zeta-Jones.

In papers filed at the Los Angeles Superior Court, de Havilland - who was made a dame in the Queen's birthday honours in June - said the show's characterisation of her damaged her "professional reputation for integrity, honesty, generosity, self-sacrifice and dignity".

The Gone With The Wind star is asking a jury to consider the emotional distress caused by the show, as well as potential financial losses and the profits made from using her identity.

She last appeared on the big screen in 1979's The Fifth Musketeer.

The Paris-based actress' lawyers told The Los Angeles Times: "The FX series puts words in the mouth of Miss de Havilland which are inaccurate and contrary to the reputation she has built over an 80-year professional life, specifically refusing to engage in gossip mongering about other actors in order to generate media attention for herself."

De Havilland - the only person depicted in the series who is still alive - also said she was not consulted.

But in an interview with the Hollywood Reporter earlier this year, Mr Murphy said he did not contact de Havilland because he "didn't want to be disrespectful and ask her, 'Did this happen? Did that happen? What was your take on that?'"

The eight-part series, which is a contender for an Emmy nomination next month, is due to air in the UK on BBC Two later this year.

Famed Hollywood Actress Sues Over ‘Feud’ Depiction

By Lynn Elber
(AP News, Los Angeles)

Hollywood great Olivia de Havilland has launched her own sequel to the TV series “Feud” — a lawsuit.

The double Oscar-winning actress filed suit Friday against FX Networks and producer Ryan Murphy’s company, alleging the drama inaccurately depicts her as a gossipmonger and is an invasion of privacy.

The suit was filed in Los Angeles on Friday — one day before de Havilland turns 101. The actress, whose credits include the role of Melanie Hamilton in “Gone with the Wind,” lives in Paris.

De Havilland’s suit alleges that “Feud: Bette and Joan,” about the testy relationship of Bette Davis and Joan Crawford, used her name and identity without permission or compensation.

FX Networks declined comment Friday. Representatives for Murphy, who co-created the hit series “American Horror Story” and “Glee,” didn’t immediately respond to a request for comment.

Catherine Zeta-Jones played De Havilland in the series, which aired earlier this year. The anthology series’ next announced chapter is about the ill-fated marriage of Britain’s Prince Charles and Princess Diana.

While De Havilland is “beloved and respected by her peers” and has a reputation for integrity and honesty, the series depicts her as “a hypocrite, selling gossip in order to promote herself” at the Academy Awards, the suit says.

This is false, the suit against FX and Ryan Murphy Productions contends.

“She has refused to use what she knew about the private or public lives of other actors (which was a considerable amount) to promote her own press attention and celebrity status,” a valuable aspect of her character, the suit says.

It argues that putting “false statements into a living person’s mouth and damaging their reputation is not protected by the First Amendment because the work is cloaked as fiction.

Suzelle Smith, an attorney for de Havilland, said in a statement that FX was “wrong to ignore Miss de Havilland and proceed without her permission for its own profit.”

The actress believes FX’s actions raise important principles that affect other celebrities, Smith’s statement said.

The suit seeks unspecified compensatory and punitive damages for emotional distress, damage to her reputation and past and future economic losses, as well as an injunction barring the defendants from using her name or image in the series or otherwise.

De Havilland won Oscars for 1946′s “To Each His Own” and 1949′s “The Heiress,” and was nominated for three other films, including “Gone with the Wind.” Her later projects included TV’s “Roots: The Next Generations” and “North and South, Book II.”

The statement from her lawyers, Smith and Don Howarth, said de Havilland is “no stranger to controversy with the powerful Hollywood production industry.”

In 1943, she sued Warner Bros. over her contract.

The “landmark decision” in her legal victory set the outside limit of a studio-player contract at seven years, including suspensions, according to Ephraim Katz’s “The Film Encyclopedia.”

Olivia de Havilland Sues FX Over Unauthorized Use of Her Identity In 'Feud: Bette and Joan'

By Nardine Saad (Los Angeles Times)

It's "Feud: Olivia and FX."

On the eve of her 101st birthday, two-time Oscar winner Olivia de Havilland has announced she is suing FX and producer Ryan Murphy over the unauthorized use of her identity in "Feud: Bette and Joan," according to a statement released Friday morning.

The miniseries about the longtime rivalry between actresses Bette Davis and Joan Crawford featured Catherine Zeta-Jones as de Havilland — the "Gone With the Wind" star who was a confidant of Davis' and a commentator throughout the eight-episode show.

De Havilland, who resides in France and turns 101 on Saturday, filed the lawsuit in Los Angeles Superior Court against FX Networks, LLC and Ryan Murphy Productions "based on the unauthorized commercial use of Dame Olivia's name and identity in the FX hit series," according to her attorneys, Suzelle M. Smith and Don Howarth of Howarth & Smith, noting that all the other real-life players who are featured in the series are dead.

Speaking on a panel at the Television Critics Assn.'s winter press tour, Zeta-Jones was asked whether she had ever met de Havilland.

"No, I didn't, unfortunately. I was going to try and get to see her. I was in the south of France this last summer. Then, unfortunately, there was the horrible tragedy that happened there in Nice, so I didn't get the chance to," Zeta-Jones said in January.

"Miss de Havilland was not asked by FX for permission to use her name and identity and was not compensated for such use," her attorneys said in a statement to The Times. "Further, the FX series puts words in the mouth of Miss de Havilland which are inaccurate and contrary to the reputation she has built over an 80-year professional life, specifically refusing to engage in gossip mongering about other actors in order to generate media attention for herself."

The suit accuses FX and its partners of appropriating de Havilland's name and identity and placing her in "a false light to sensationalize the series and to promote their own businesses" while ignoring her interests entirely.

"A living celebrity has the right to protect her name and identity from unauthorized, false, commercial exploitation under both common law and the specific 'right to publicity' statute in California," Smith said, asserting that, "FX was wrong to ignore Miss de Havilland and proceed without her permission for its own profit."

Her team plans to file a motion seeking an expedited trial date because of de Havilland's age.

De Havilland is no stranger to legal proceedings. In 1943, she filed a landmark lawsuit against Warner Bros. that resulted in the collapse of the binding long-term contract system and put the de Havilland Law on the books.

FX declined to comment on the lawsuit and Murphy's team did not immediately respond to The Times' request for comment Friday.

Update, 11:45 a.m.: This story has been updated to include FX's response.

The Real Olivia de Havilland Sues FX Over Her Depiction In Feud

By Sam Barsanti
(A.V. Club)

One of the biggest dangers in making a TV show about actual Hollywood drama is that the people involved in Hollywood drama are often very concerned with how they are perceived, as Feud creator Ryan Murphy is now learning. According to The Hollywood Reporter, actress Olivia De Havilland is suing FX and Murphy’s Ryan Murphy Productions over the way she was depicted on the show, explaining that it put “false words” into her mouth as part of a “fake interview that did not occur and would not have occurred.”

Catherine Zeta-Jones played De Havilland on Feud, and the lawsuit says that she was depicted as “a hypocrite who sold gossip to promote herself.” This is apparently very upsetting for the real De Havilland, who has prided herself on the “reputation for integrity and dignity” that she built by “refraining from gossip and other unkind, ill-mannered behavior.” She’s also upset about a line from the show where Zeta-Jones’ De Havilland referred to her sister as a “bitch,” which “stands in stark contrast with Olivia de Havilland’s reputation for good manners, class, and kindness.”

De Havilland is the only person who experienced the events from the show and is still alive, but THR says Murphy purposefully chose not to contact her about the series because he didn’t want to “intrude.” Earlier this year, though, THR contacted De Havilland about the show, and she basically responded by saying that she hadn’t seen Feud and that she didn’t care about the Bette Davis/Joan Crawford thing anymore after all these years anyway. She has presumably seen the show since then, and it’s starting to look like Murphy probably should’ve tried reaching out to her.

The lawsuit accuses FX of “infringement of common law right of publicity, invasion of privacy, and unjust enrichment,” and De Havilland is asking for damages, profits from the series, and an injunction to prevent FX from using her name and likeness in the future.

Kiini, Victoria's Secret Settle Swimsuit Infringement Lawsuit

By Ariel Givner
(The Fashion Law)

Kiini and Victoria’s Secret have recently settled a lawsuit that Kiini filed in U.S. District Court for the Central District of California back in October 2015. New York-based Kiini, which has gained a “cult-like following and is known for the original, distinct, copyright-protected swimwear designs,” initiated the action against the lingerie giant for copyright infringement, trade dress infringement, and unfair competition.

According to Kiini’s complaint, Victoria’s Secret produced a bathing suit that looked “virtually indistinguishable” to its original bikini design. Though the terms of the settlement are confidential, the suit is worth reflecting on.

As Kiini set forth in its complaint, Victoria’s Secret allegedly marketed and sold an infringing copy of Kiini’s well-known bikini design “in the pursuit of its own self promotion and profit, and to Kiini’s unfair harm and detriment.” The Kiini swimsuit in question – which is stocked by high end retailers, such as Barneys, Bergdorf Goodman, and Net-A-Porter and retails for $165 for a top and $120 for a bottom – has “become a much sought after bikini.” In addition to being featured in an array of editorials, it has been worn by numerous celebrities, “including Heidi Klum, Ellie Goulding, Cara [Delevingne] and Dree Hemmingway,” among others.

Ipek Irgit, the founder and creative director of Kiini, obtained federal copyright protection for the bikini design in December 2014, making Kiini the “sole and exclusive owner to all right, title, and interest in and to the copyright to the design.” The brand alleges that in addition to enjoying federal copyright protection, it has developed trade dress rights, as “the purchasing public has come to associate the distinct Kiini trade dress with Kiini, and Kiini trade dress has achieved secondary meaning.”

The trade dress at issue consists of: “1) a triangle profile bikini; 2) a distinctive, rectangular crochet pattern that borders the edges of the bikini; 3) the rectangular geometric pattern is doubled at the bottom edge of the bikini top, and the top edge of the bikini bottom; 4) bright color blocking resulting from a woven interlaced pattern of contrasting colored and textured material, specifically elastic and crochet yarn; and, 5) the bikini top’s upright triangle profile and the bikini bottom’s upside down triangle profile.”

For the uninitiated, trade dress extends to the total image of a product and can be based on shape, size, color, texture, and graphics. In order to be eligible for trade dress protection, a design must serve as a non-functional identifier of source. Per Kiini, the triangle designs featured on the bathing suit at issue are in no way functional and that “the only reason to copy the Kiini trade dress is to attempt to trade off its goodwill and draw sales away from Kiini. This is exactly what [Victoria’s Secret] has unfairly and unlawfully done here.”

Kiini goes on to bolster its claim by stating that it is not the only one who noticed the similarities between its designs and the Victoria’s Secret copies. According to Kiini’s complaint, “several discerning customers have generated electronic content posted on popular social media, referring to the Victoria’s secret copy infringing design, and stating: ‘totally kinii [sic] knock off,’ ‘kiini copiers,’ and ‘Victoria’s secret knock off kiini.’”

The complaint continues on to note that the similarities between its design and the Victoria’s Secret copy gave rise to actual confusion amongst consumers and offered evidence that consumers “queried on photos” of the Victoria’s Secret copy, asking: “Is this a Kiini swimsuit or a Victoria’s Secret?” Victoria’s Secret allegedly ignored the customer comments “chiding it for stealing the Kiini design, and they continue to intentionally market and sell their imitations.”

Kiini originally sought preliminary and permanent injunctive relief “against the ongoing infringement of its legal rights, and damages, both actual and statutory, for the violations of Kiini’s rights to date.” Interestingly, in the time since the brand filed suit, Victoria’s Secret has folded its swimwear division entirely to focus exclusively on lingerie and loungewear.

Is Discovery That Section 8 Affidavits Were Not Filed by the Owner of the Registration Grounds for Cancellation? N.D.Cal Rules “No.”

By Theodore Davis Jr., Stephen Feingold, and Calla Yee
(JD Supra)

United Tactical Systems, LLC v. Real Action Paintball, Inc., 2017 WL 713135 (N.D. Cal. 2017)

CASE SUMMARY

Every trademark lawyer knows that between the fifth and sixth year after registration the trademark owner must file an affidavit of use. If the mark has been in continuous use, the owner may also file an affidavit of incontestability. However, regardless of whether a Section 15 Affidavit has been filed, once a registration reaches its fifth anniversary, the grounds for cancellation are very limited.

A recent case from the Northern District of California illustrates how “simple” errors in a registration’s chain of title can exponentially increase the cost and time necessary to enforce a trademark owner’s rights. While ultimately these mistakes were not fatal, the case provides an excellent opportunity to explore the finer details of prosecution and due diligence. United Tactical Sys., LLC v. Real Action Paintball, Inc., No. 14-cv-04050-MEJ, 2017 WL 713135 (N.D. Cal. Feb. 23, 2017).

THE TAKE AWAY

While we provide a detailed analysis of the case below, the critical issues to take away are:

1. Make sure that you identify the correct owner of the mark when you file the initial application and any subsequent papers. While the TMEP provides that you may correct technical errors, you may not make changes that have legal significance. For instance, if you file an application in the name of ABC, Inc. of New Jersey when the applicant’s legal name is ABC, Inc. of New York, and there is an existing related company with the name ABC, Inc. of New Jersey, you will not be able to correct that mistake because that would alter the identity of the owner. However, if ABC, Inc. of New Jersey did not exist, then you could correct the error because it would not change the rights of an existing entity. TMEP § 1604.07 provides examples of acceptable and unacceptable changes.
2. Due diligence will not eliminate any of the risks the trademark owner faced in this case. But a thorough due diligence, including tracing back the chain of title to the mark’s creation, will enable the trademark owner to identify the magnitude of the risk. Even though UTS eventually won the legal argument, it undoubtedly spent hundreds of thousands of dollars to do so. A savvy deal attorney will recognize the leverage this risk offers to obtain more favorable terms.
3. Exercise extreme caution before acquiring a trademark at a foreclosure sale. Even if the sale is overseen by a bankruptcy court, the buyer receives nothing more than quitclaim title to the mark.
4. If you are charged with recording a security interest, we suggest you take a few moments and learn more about the process. Here is link to an International Trademark Association (INTA) PowerPoint that is a good place to start.

Facts

PepperBall® projectiles are small plastic spheres that can be used in the same way as pepper spray. The PepperBall mark was originally filed by Jaycor, Inc., which then assigned the mark to Jaycor Technical Systems, Inc. (“Jaycor”). After the registration issued in May of 2003, Jaycor recorded a name change to PepperBall Technologies, Inc., a Delaware corporation (“PTI-DEL”). This assignment was recorded twice at the Trademark Office in 2002 and 2003.

In 2005, a security interest was recorded against this registration. The Cover Sheet states that the party granting the security interest was PTI-DEL. The underlying document on file with the Trademark Office, however, states that the security interest was granted by Pepperball Technologies, Inc., a California corporation. This security interest was eventually acquired by a predecessor to the named plaintiff, United Tactical Systems (“UTS”).

In 2008, PTI-DEL acquired Securities With Advanced Technologies, Inc. (“SWAT”). Driven by various corporate concerns, the acquisition had an unusual structure. PTI-DEL merged into PTI Acquisitions Corp. to become Pepperball Technologies – CA, Inc. (“PTI-CA”). SWAT then changed its name to PepperBall Technologies, Inc., a Colorado corporation (“PTI-CO”), which became PTI-CA’s parent company. Both PTI-CA and PTI-CO did business under the simple name of Pepperball Technologies, Inc. (“PTI”). To the public, it seemed as if there was only one company known as PTI and that it was the same entity that had existed for many years.

Based on these facts, the actual owner of the PepperBall mark was PTI-CA since it was the successor to PTI-DEL. The fact that PTI-CO is the parent company for PTI-CA in no way vested it with direct ownership of the mark. Furthermore, the security interest in the PepperBall mark granted by Pepperball Technology, a California corporation, would appear to be of no legal significance since that entity did not own the mark at the time the security interest was granted.

When the combined Affidavit of Use and Incontestability for the PepperBall registration was filed in 2009, the entity making that filing was not PTI-CA, the successor in interest to PTI-DEL, but Jaycor. Pepperball Technologies was listed as the proposed owner, but the Affidavit listed Jaycor as the current owner, which was consistent with the name change previously recorded in 2002 and 2003. Jaycor did not explain that the company then bearing that name was a new Colorado corporation and not the Delaware Corporation which was the successor to Jaycor and which had merged into PTI-CA.

The TMEP explains the Section 8 Affidavit must be filed by the owner and provides that if it is filed by the wrong party and the time for filing has elapsed, then the registration will be cancelled. See TMEP Section 1604.07(f). However, since there was no obvious deficiency, the Trademark Office accepted the Section 8 Affidavit.

Apparently, PTI-CO assumed the loan obligations underlying the security interest wrongfully recorded against the PepperBall registration. At some point, the lender obtained but never recorded a security interest in the PTI-CA trademark. When PTI defaulted on the loan, UTS’s predecessor foreclosed on the collateral and held an auction under the UCC. Notably, UCC sales are quitclaim sales with no representations or warranties about the property being sold. UTS’s predecessor eventually acquired the PepperBall mark through this sale. But if the foreclosure was based on a perfected security interest granted by an entity that did not own the mark, what exactly was acquired?

In 2013, UTS’s predecessor renewed the PEPPERBALL registration after explaining to the Trademark Office it had acquired the mark through the foreclosure sale of “PTI’s” trademark. Of course, this explanation was not completely accurate because the foreclosure was on PTI’s interest while the mark was still owned by PTI-CA. Nevertheless, the Trademark Office accepted the renewal of the mark with the owner now listed as UTS’s predecessor.

In 2012, one year after the registration was renewed, UTS’s predecessor brought a suit against Real Action alleging trademark infringement.

All of these issues only surfaced after extensive discovery leading, ultimately, to a decision five years after the first complaint was filed on whether UTS was in fact the owner of the PepperBall trademark. One year after UTS initiated its first complaint in Indiana, it obtained injunctive relief. The Seventh Circuit subsequently vacated that injunction finding that Real Action was not subject to personal jurisdiction. Real Action then commenced its own litigation initiative leading to counterclaims by UTS that were consolidated before the Northern District of California. In 2014, UTS again obtained a preliminary injunction. Real Action moved for summary judgment claiming that UTS was not the owner of the rights being enforced.

The Affidavit of Use

Real Action’s primary argument centered on the first Affidavit of Use. It argued that Affidavit was defective thereby causing the registration to expire as a matter of law regardless of whether the Section 8 Affidavit was accepted by the Trademark Office. The district court recognized that the Lanham Act requires that the Affidavit of Use be filed by the owner of the mark and not the “registrant.” It also held that the entity that filed the Affidavit of Use and Incontestability for the PepperBall mark was not the legal owner. 2017 WL 713135, at *14. However, the district court concluded that because the mark was incontestable these errors were of no legal significance reasoning:

Section 33(b) of the Lanham Act provides that after a registration reaches its fifth anniversary, “the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.” 15 U.S.C. § 1115(b). Once a registration has passed its fifth anniversary, and assuming the registrant files a Section 8 declaration of ongoing use, it is subject to cancellation for a limited number of reasons enumerated in Section 14 of the Lanham Act. Erroneously filed or mistakenly accepted Section 8 or Section 15 Affidavits are not one of these enumerated exceptions permitting cancellation of such a registration. Real Action tried to skirt this issue by suggesting that the Court should correct the Trademark Office’s error in accepting the Section 8 Affidavit. The court rejected this argument because no case law was offered to support it. In a footnote, the Court explained that the Trademark Office was in a better position to determine the legal ramifications for its erroneous acceptance of the Section 8 Affidavit. Id. at n. 11.

This deference to the Trademark Office seems misplaced. The only way Real Action could have presented this case to the Trademark Office was either by moving to cancel the PepperBall registration or by a special petition to the Director. Since the Lanham Act on its face does not permit cancellation of a five-year-old registration on this basis, the better option would be to petition the Commissioner to issue a notice of deficiency under Section 8 based on newly presented evidence and request that unless the deficiency was corrected that the Office issue a new notice refusing the Section 8 Affidavit. Arguably, this strategy would make the limitations for cancelling an incontestable registration irrelevant. In either event, Real Action could appeal an adverse decision on either the cancellation or the petition for de novo review by the District Court. The requirements for who must file the Section 8 Affidavit are statutory and, ultimately, it is an Article III court that should determine how those obligations are satisfied and not an Article I court.