Scott Bizar v. Jeffrey Dee
618 F. App'x 913
9th Cir.2015Background
- In the 1970s Dee and Herman contracted with Fantasy Games Unlimited, Inc. (FGU, Inc.) to publish the Villains and Vigilantes rulebooks (1979 and later 1982); the 1979 contract granted publication rights to FGU, Inc. and prohibited assignment and provided for termination if FGU ceased doing business.
- FGU, Inc. dissolved in 1991. Co-founder Scott Bizar continued selling Villains and Vigilantes products thereafter; Dee and Herman began publishing and selling the game in 2010.
- Dee and Herman sued Bizar in 2011 in Florida for copyright infringement (Dee/Herman Action). Bizar filed a separate action in Arizona alleging defamation, commercial disparagement, Lanham Act/trademark claims, related state claims, and breach of contract (Bizar Action). The cases were transferred/consolidated in Arizona.
- The district court entered default and a $52,300 damages award against Dee and Herman on defamation and commercial disparagement claims, granted summary judgment to Dee and Herman on other claims, and did not resolve copyright damages; parties appealed.
- The Ninth Circuit affirmed the denial of relief from default and the default judgment, affirmed the damages award as not clearly erroneous, affirmed summary judgment for Dee and Herman on copyright ownership (rights reverted at 1991 dissolution), reversed because the district court failed to address copyright damages, reversed summary judgment on Lanham Act and related state unfair-competition/misappropriation claims, and affirmed summary judgment for Dee and Herman on breach of contract.
Issues
| Issue | Bizar's Argument | Dee & Herman's Argument | Held |
|---|---|---|---|
| Validity of default judgment / setting aside default | Default was proper; Dee and Herman failed to raise meritorious defenses | Default should be set aside for lack of personal jurisdiction and merits defenses | Affirmed: no abuse of discretion; defendants waived personal-jurisdiction objection and offered no meritorious defense |
| Damages for defamation/disparagement | $52,300 supported by Bizar’s testimony about lost sales/opportunities | Award is excessive/unsupported | Affirmed: damages not clearly erroneous; testimony provided a rational basis |
| Copyright ownership of 1979/1982 rulebooks | Bizar continued sales but contract rights reverted to Dee & Herman when FGU dissolved in 1991 | Bizar claimed continued rights/use; laches/equitable defenses bar claim | Affirmed summary judgment for Dee & Herman on liability: contract terminated at dissolution; laches unavailable under Copyright Act; equitable estoppel fails because plaintiffs acted promptly |
| Copyright damages | District court resolved liability but not damages; Dee & Herman sought damages relief | Dee & Herman requested reopening to address damages | Reversed and remanded: district court abused discretion by entering final judgment without addressing copyright damages |
| Lanham Act (trademark ownership/abandonment) | Bizar owned the mark and continuously used it; alleged non-abandonment | Dee & Herman argued abandonment and entitlement to use mark | Reversed: genuine issues of material fact on abandonment and reacquisition; summary judgment inappropriate |
| State-law unfair competition / misappropriation | Claims depend on trademark ownership; Bizar contends Arizona law applies | Dee & Herman argued otherwise or preemption | Reversed: apply Arizona choice-of-law; factual disputes remain tied to trademark ownership, so summary judgment inappropriate |
| Breach of contract | Bizar alleged breach after 1991 | Dee & Herman argued contract terminated in 1991 and no pre-1991 breach | Affirmed: contract terminated on dissolution; no actionable breach pleaded pre-1991 |
Key Cases Cited
- United States v. Signed Personal Check No. 730 (Mesle), 615 F.3d 1085 (9th Cir.) (standard for setting aside default)
- Schnabel v. Lui, 302 F.3d 1023 (9th Cir.) (waiver of personal jurisdiction where related claims litigated together)
- N.Y. Times Co. v. Sullivan, 376 U.S. 254 (1964) (malice standard for defamation)
- Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014) (laches unavailable as defense to Copyright Act claim)
- Star-Kist Foods, Inc. v. P.J. Rhodes & Co., 769 F.2d 1393 (9th Cir.) (presumption of trademark abandonment after non-use may be rebutted)
- Sch. Dist. No. 1J v. ACandS, Inc., 5 F.3d 1255 (9th Cir.) (standard of review for denial to reopen final judgment)
- Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir.) (choice-of-law analysis for state-law claims)