Estate of Fuller v. Maxfield & Oberton Holdings, LLC
906 F. Supp. 2d 997
N.D. Cal.2012Background
- Estate of Buckminster Fuller sues for misappropriation of name and likeness; four causes of action against Maxfield & Oberton for Buckyballs products; complaint filed May 18, 2012; defendant moved to dismiss under Rule 12(b)(6); court held hearing November 1, 2012 and denied motion; relevant facts include Fuller’s fame, Buckminsterfullerene named after Fuller, and Buckyballs referencing Fuller in branding; plaintiff licensed limited rights to use Fuller’s name in 2011; products include Buckyballs, Buckycubes, and related items; court addresses transformative-use, privacy rights, Lanham Act, and unfair competition claims; common law misappropriation of name for deceased persons barred, but § 3344.1 claim survives alongside other statutory claims; motions involve statute of limitations, public-affairs/public-interest defenses, and nominative fair use; decision ultimately denies most defenses and preserves claims except common-law misappropriation.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Transformative use defense applicability | Fuller name used to sell unrelated product. | Bucky name transformation protects First Amendment. | Transformative use defense inapplicable; denial of dismissal on this ground. |
| Statutory misappropriation and limitations | Claims timely under two-year period; ongoing publications. | Two-year limit applies under § 3344.1 and single-publication rule. | Two-year limitations apply; denial of dismissal on statute grounds pending discovery. |
| Public affairs/newsworthiness defense | Use not for news; commercial purposes; not protected. | § 3344.1(j) may apply if newsworthy. | Public affairs/newsworthiness defense not applicable; § 3344.1 claim survives. |
| Ownership and scope of right in term “Buckyballs” | Rights extend to name variants; registration not sole bar. | Only registered name protected; variation not covered. | Statutory claim survives; ownership scope broadened beyond exact term. |
| Lanham Act: nominative fair use | Defendant’s use misleads public about endorsement. | Nominative fair use supports reference to Fuller to identify product. | Nominative fair use not dispositive; claim survives given likelihood of confusion. |
| UC L unfair competition claim | § 3344.1 and Lanham Act claims support UCL unlawfulness/unfairness/fraud. | Without other claims, UCL fails. | UCL claim denied in part? (Court allowed under unlawful, unfair, and fraudulent prongs as supported by other claims.) |
Key Cases Cited
- Hilton v. Hallmark Cards, Inc., 599 F.3d 894 (9th Cir. 2010) (transformative-use and right of publicity discussed in context of celebrity likeness)
- Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal.4th 387 (Cal. 2001) (test for transformative use of celebrity likeness; whether depiction is core of work)
- Kirby v. Sega of America, Inc., 144 Cal.App.4th 47 (Cal. App. 2006) (transformative use considerations in California cases)
- Christoff v. Nestlé USA, Inc., 47 Cal.4th 468 (Cal. 2009) (single publication rule; evolving test for publication timing)
- Abdul-Jabbar v. General Motors Corp., 85 F.3d 407 (9th Cir. 1996) (newsworthiness/public-affairs exception not automatic; commercial use limits)
- New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302 (9th Cir. 1992) (nominative fair use framework for identifying celebrity in reference)
- Guglielmi v. Spelling-Goldberg Productions, 25 Cal.3d 860 (Cal. 1979) (deceased-rights/publicity concerns under California law)
- Lugosi v. Universal Pictures, 25 Cal.3d 813 (Cal. 1979) (early right-of-publicity considerations for deceased persons)
- Christoff, 47 Cal.4th 468, — (Cal. 2009) (concurring analysis on publication timing and liability)