v22 #4 Legal Issues: Cases of Note Lanham Act and Jurisdiction

Column Editor: Bruce Strauch (The Citadel) strauchb@citadel.edu

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“Wish they all could be California … torts.”

Cases of Note

Mike Love v. Associated Newspapers, Ltd., Brian Wilson et al, United States Court of Appeals for the Ninth Circuit, 2010 U.S. App. LEXIS 13935 (2010).

Those of us of a certain age of course know Brian Wilson. He was the sensitive member of the Wilson family who came home from community college and told his brothers: “Hey, guys, this rock ‘n roll thing’s not so hard. I’ve written a song. It’s about surfing.”

And that of course was “Surfer Girl,” the brothers became the Beach Boys, and the rest is rock history. Indeed, an emblematic history of the times. Including their first performance behind Ike and Tina Turner at the — wait for it — Ritchie Valens Memorial Dance, New Year’s Eve, 1961! And of course there had to be drugs.

Brian fried his brain and had a nervous breakdown, which he blamed on depression brought on by hearing the Beatles’ “Sgt. Pepper” album, and feeling he wasn’t worthy to be on the same planet with them.

And it was the age of deprogramming cult victims and other weird therapy. Wilson fell under the power of a Svengali-style psychologist who isolated him in Hawaii, subjected him to “extreme counseling,” and later lost his license for it.

But of course nothing would match brother Dennis who in 1968 actually befriended Charles Manson and his harem and introduced them to Doris Day’s son Terry Melcher, the record producer famous for the Byrds. Dennis couldn’t get the Manson clan out of his house and finally had to move himself and hide. And a terrified Terry fled his home on Cielo Drive, which was in turn rented to — yes, Roman Polanski and Sharon Tate.

And you’ re asking, if Terry had produced Charles’ songs, would Charles have merely gone on to become one more rich, deranged heavy metal rocker like Black Sabbath, Metallica, Megadeath et al. instead of a notorious psycho-killer?

Let’s Get to Our Lawsuit

But enough pop culture. By 2004, Brian Wilson had himself back compos mentis, wrote a solo album “Smile,” and began a tour with a backup band. He had previously broken with the Beach Boys and all had sued each other. Mike Love, founding band member, but not a Wilson, won the right to use The Beach Boys trademark in concerts and continued to tour as a nostalgia band for … well … those of a certain age. And, note that Love’s right to the mark is only in live performances.

The British newspaper the Mail on Sunday handed out 2.6 million CDs of Wilson singing old Beach Boys songs solo along with the new songs from “Smile.” The cover had Brian Wilson but also three small photos of the old band and was titled “Good Vibrations,” which rings an immediate bell with all you graying Boomers who also remember where you were when the Big Bopper’s plane went down and can name all the hits of Jan & Dean.

Yes, you know it. The 1966 psychedelic pop song that was produced in a layered musical collage inspiring the Beatles “Strawberry Fields,” and “A Day in the Life,” and made the Rock and Roll Hall of Fame’s 500 Songs that Shaped Rock And Roll. Ironically, Mike Love wrote the lyrics, but when Wilson put it on “Smile,” he used the lyrics by an earlier writer. Which saved our lawsuit from being even more complicated.

BigTime.tv, the producer of the CD, ignored a California attorney’s advice to not use images of other Beach Boys without their permission.

I mean what the heck? They get away with it in China don’t they?

Mind you, the CD only went out with the newspaper in the UK and Ireland. While 425 copies of the paper reached the US (18 in California), none contained the CD.

Nonetheless, Mike Love did not care for this one bit. He saw a Wilson tour in direct competition with his gig. So he got busy and sued Brian Wilson, the newspaper, BigTime.tv that produced the CD, and all manner of entities associated with Sanctuary Records, which produced “Smile.”

He used the Lanham Act trademark dilution, but loaded up the suit with California’s right of privacy and right of publicity and conspiracy, of all things.

Just like that traffic cop who feels DUI is not sufficient and also charges you with open container.

First there were some shenanigans, the significance of which will appear later if you can stand to keep reading. Love sued in California but said he was a resident of Nevada. He later amended to say he had a residence in California, which was simply not true. Or a lie as we once called it in a more judgmental age. Which got him “admonished.” Which is to say being given a stern talking-to from the bench.

Knowing they had a problem with the CD not penetrating the U.S. market, Love’s lawyer got a “close associate” to claim he had bought one on eBay and was confused, thinking it was an official Beach Boys product. This was also false, and when the truth came to light, Love’s lawyer had sanctions slapped on him. Which is to say paying over the cost of dredging up the truth by Wilson’s team of legal beagles.

And after all these deceits, Love’s case got booted for lack of jurisdiction. Leading to the question on appeal, can Love use American claims for relief for conduct that happened in Britain? Or as the Ninth Circuit so wittily put it, “Love wishes they could all be California torts.” Chortle.

If you’re not over sixty, you probably don’t get it.

So What’s this Jurisdiction Thingy?

Jurisdiction is the authority given a court over geographic area, subject matter, and persons. What is called “long-arm jurisdiction” is provided by statute for persons outside the state and is subject to due process fairness requirements. The defendant must have some “minimum contacts” with the state. You can’t use California courts to sue someone in Michigan (or Hong Kong) for something nasty he did to you in Michigan when he has no business or anything else in California. Yahoo! V. La Ligue Contre le Racisme, 433 F.3d 1199, 1205 (9th Cir. 2006); Cal. Code Civ. Pro. § 410.10.

The “purposeful direction” or “effects” test requires (1) defendant did an intentional act; (2) act was aimed at the forum state; (3) and defendant knew the act was likely to cause harm to plaintiff in the forum state. Id. At 1206.

Love said the CD was aimed at California since that’s where his musical career is based even if he did fib about having a house there. Websites have broadened this considerably since 

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