472 F.Supp.3d 806
D. Haw.2020Background
- Norman "Sailor Jerry" Collins (d. 1973) was a famed tattoo artist; his wife (Mrs. Collins) orally sold the contents of his tattoo shop in 1973 to Michael Malone for $20,000; dispute whether the sale transferred Sailor Jerry’s name/image/artwork (the "Sailor Jerry IP").
- Malone (and later Ed Hardy) used and assigned purported rights to create Sailor Jerry Limited; William Grant & Sons entities (WGS) acquired Sailor Jerry Limited and, beginning in the 1990s–2000s, marketed "Sailor Jerry rum" and merchandise using the Sailor Jerry IP.
- Mrs. Collins learned of commercial uses in 1994 and first saw Sailor Jerry rum in 2008–09; Hellenbrand (Malone’s former partner) sent demand letters in 2009 claiming ownership via Malone; Mrs. Collins did not sue until 2019.
- In 2018 Mrs. Collins formed N.K. Collins, LLC (Collins LLC) and assigned purported publicity-rights interests to it; Collins LLC sued WGS in 2019 in Hawaii court (removed to federal court) asserting: (1) HPRA violation; (2) cancellation of WGS registration; (3) common‑law right of publicity; (4) unjust enrichment.
- Defendants moved for partial summary judgment that the Hawaii Publicity Rights Act (HPRA) is not retrospective, for judgment on the pleadings dismissing unjust enrichment, and for summary judgment on laches; district court granted non-retrospectivity, granted dismissal of unjust enrichment (without prejudice), and denied summary judgment on laches while granting limited Rule 56(d) discovery on unclean‑hands.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the HPRA (2009) applies retrospectively to persons who died before enactment (i.e., to Sailor Jerry who died 1973) | HPRA codifies/"confirms" an existing common‑law publicity right and the statute’s text ("deemed to exist") and purpose show intent to apply to deceased who predate enactment | Presumption against retroactivity (HRS § 1‑3); statutory text & legislative history ambiguous; retrospective application would impair defendants’ vested, relied‑upon rights acquired pre‑2009 | HPRA ambiguous on timing; applying it to WGS would impair substantial preexisting rights and would have retroactive consequences -> HPRA cannot be applied retrospectively to WGS (partial summary judgment for defendants) |
| Whether judicial estoppel bars defendants from arguing non‑retrospectivity because they have asserted publicity rights previously | Collins LLC: defendants previously claimed ownership/registered publicity rights, so should be estopped from now denying HPRA retrospective application | Defendants: positions were not inconsistent—previous assertions of ownership derived from predecessors and not from HPRA; judicial estoppel inapplicable to pure law positions | Court: judicial estoppel does not apply; defendants’ prior positions were not inconsistent with non‑retrospectivity theory |
| Whether unjust enrichment is sufficiently pled and available given legal remedies | Collins LLC: pleads unjust enrichment in the alternative and seeks disgorgement; legal remedies may be inadequate so equitable relief needed | Defendants: plaintiff fails to allege conferral of a benefit on defendants at plaintiff’s expense; also an adequate legal remedy likely exists | Court: unjust enrichment fails because plaintiff did not show it conferred a benefit on defendants at its expense; claim dismissed without prejudice (leave to amend limited to curing defects) |
| Whether laches bars Collins LLC’s claims | Collins LLC: delay excusable; defendants’ unclean hands and other defenses preclude laches at summary judgment; needs discovery on those issues | Defendants: Collins LLC knew/found out by 2009 so delay to 2019 is unreasonable and prejudiced defendants (large investments, contracts, expired indemnities); presumption of laches applies | Court: presumption of laches applies (limitations periods run from 2009 discovery); defendants have shown prejudice but plaintiff’s unclean‑hands defense requires limited discovery -> court grants plaintiff 4 months under Rule 56(d) for discovery and DENIES defendants’ laches summary judgment without prejudice |
Key Cases Cited
- Landgraf v. USI Film Prod., 511 U.S. 244 (statutory retroactivity framework)
- Fernandez‑Vargas v. Gonzales, 548 U.S. 30 (ask whether application would have retroactive consequence affecting substantive rights)
- New Hampshire v. Maine, 532 U.S. 742 (judicial estoppel factors)
- Petrella v. Metro‑Goldwyn‑Mayer, Inc., 572 U.S. 663 (limits on laches as a bar to statutory damages; distinction between legal and equitable relief)
- Seven Arts Filmed Entm’t Ltd. v. Content Media Corp. PLC, 733 F.3d 1251 (9th Cir.) (ownership disputes accrue when repudiation/ownership dispute is communicated; separate‑accrual vs. single accrual in ownership cases)
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment burden principles)
- Anderson v. Liberty Lobby, 477 U.S. 242 (genuine issue standard at summary judgment)
- Clark v. Cassidy, 64 Haw. 74, 636 P.2d 1344 (Hawaii presumption against retroactivity)
- Fergerstrom v. Hawaiian Ocean View Estates, 50 Haw. 374, 441 P.2d 141 (Hawaii common‑law appropriation/right of privacy background)