[PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT ________________________
No. 19-10013 ________________________
D.C. Docket No. 8:17-cv-01795-WFJ-CPT
BUDDY WEBSTER, p.k.a. Buddy Blaze,
Plaintiff-Appellant,
versus
DEAN GUITARS, ARMADILLO ENTERPRISES, INC., ARMADILLO DISTRIBUTION ENTERPRISES, INC., ESTATE OF DIMEBAG DARRELL ABBOTT, an unknown entity, DOES, 7-10 inclusive, et al.,
Defendants-Appellees,
WAL-MART STORES, INC.,
Defendant. ________________________
Appeal from the United States District Court for the Middle District of Florida ________________________
(April 16, 2020)
Before WILSON, BRANCH, and JULIE CARNES, Circuit Judges.
WILSON, Circuit Judge:
This case concerns the alleged copyright infringement of a lightning storm
graphic that originally appeared on the guitar of Darrell Abbott, late guitarist of the
heavy-metal band Pantera. The Appellant Buddy Webster, a successful guitar
maker and technician, designed Abbott’s guitar in the mid-1980s and
commissioned someone to paint the lightning storm graphic on it. Since 2004,
guitar producer Dean Guitars (Dean) has produced and sold guitar models based on
Abbott’s guitar and featuring the lightning storm graphic, without Webster’s
consent and without paying him royalties for the use of the design.
In 2017, after a decade of being displeased with Dean’s reproduction of
Abbott’s guitar and the lightning storm graphic, Webster sued Dean and several
others (collectively, Appellees) in federal district court, alleging, as relevant to this
appeal, copyright infringement, unfair competition, and false endorsement. The
district court granted summary judgment in favor of the Appellees on all claims.
On appeal, Webster argues that the district court erred when it concluded that
2 (1) his copyright infringement claim was actually a claim of copyright ownership
and was time-barred; (2) his unfair competition claims failed because the
statements underlying those claims were not false or misleading; and (3) his false
endorsement claim failed because he did not present evidence of a likelihood of
consumer confusion. After reviewing the record and the parties’ briefs, and with
the benefit of oral argument, we affirm the district court.
I.
A. FACTUAL BACKGROUND
Buddy Webster is a guitar maker and technician who goes by the name
“Buddy Blaze.” In 1985, he modified a Dean ML guitar, produced by Dean, and
paid someone to paint a lightning storm graphic on the guitar. In 1987, Webster
gave the guitar to his friend Darrell Abbott. Abbott later became a successful
guitarist in the band Pantera. Abbott called the guitar “The Dean from Hell”
(DFH). In 2004, Abbott entered an endorsement-type contract with Dean. But in
December of that year, he was shot and murdered on stage by a deranged fan.
Around the time of Abbott’s death, Dean started selling reissues of the DFH
guitar. Webster first learned about the sales of the reissues in December 2004.
Dean never asked Webster for his permission to sell the reissues, and Webster
never approved of the sales. In 2006, Webster learned that Dean was selling a
cheaper, imported version of the DFH called the Cowboy from Hell. Webster was
3 unhappy that Dean was selling these two versions of the DFH, so, in 2006, he
emailed then CEO of Dean, Elliot Rubinson, and expressed his displeasure.
Webster told Rubinson that Dean could not sell the reissues without his
permission; Dean did not stop selling the guitars.
In April 2007, Webster contacted Rubinson again and expressed his
concerns about the guitar sales. Rubinson responded by email, stating
I have taken some time and spoken to several “people in the know” and the consensus concerning [the lightning storm graphic] is that [Abbott’s] estate is the legal owner of it. With that said, I still would like to work with you on [an Abbott] project because I am not about making enemies but keeping friends.
Rubinson also stated, “Rita and I have plans to do a relic [DFH] and would like
you involved for a royalty. Is that of interest?” Webster testified that he called
Rubinson after he read the email, and Rubinson suggested that he sue Abbott’s
estate if he was still upset. Rubinson had never paid Webster royalties for the DFH
reissues and continued to pay royalties to Abbott’s estate.
Despite Webster’s displeasure with Dean’s production and sale of the DFH
reissues, he worked with Dean in 2009 to create and sell his own signature guitar
model—the “Buddy Blaze ML.” He also willingly appeared in multiple interviews
4 in 2008 and 2009 discussing his role in the history of the original DFH.1 Dean
used videos of some of these interviews and posted them to its YouTube channel.
The first video is an interview of Webster at the 2008 National Association of
Music Merchants (NAMM) tradeshow, in which he is standing in front of the
original DFH recounting its history. In the second video, Webster appears in an
interview alongside Rubinson at the 2009 NAMM show, promoting the Buddy
Blaze ML, speaking about the history of the original DFH, and comparing his
Buddy Blaze ML model with the DFH. The third video is a similar interview of
Webster at the 2009 NAMM show. It shows him describing the Buddy Blaze ML
and referring to Abbott and the DFH. The DFH reissues are not mentioned in the
videos.
From 2009 to 2015, Dean released several other versions of the DFH. In
2009, Webster learned that Dean was marketing and selling a new version of the
DFH known as the “Rust from Hell.” Dean then released a guitar featuring the
lightning storm graphic called the “Black Bolt.” Finally, in 2015, Dean issued the
1 In addition, Webster maintains the following information about the DFH and the Buddy Blaze ML on his website:
Buddy is also the creator of the legendary “Dean From Hell”. Buddy totally reinvented his previously maroon colored 1981 Dean ML, later giving it to his close friend “Dimebag” Darrell Abbott. Lightning struck twice in 2009 when Buddy collaborated with Dean Guitars to launch the Buddy Blaze Signature Dean ML!
History, BUDDY BLAZE U.S.A., http://www.buddyblaze.com/history/ (last visited March 20, 2020). 5 “Limited USA Dean from Hell.” Webster claimed that he “had finally had
enough” at this point, and, in 2016, he retained counsel and obtained a copyright
registration in the lightning storm graphic.
B. PROCEDURAL BACKGROUND
In April 2017, Webster filed suit in the U.S District Court for the Central
District of California against Dean and several others. In July 2017, the court
granted a motion by some of the defendants to transfer venue to the Middle District
of Florida. Relevant to this appeal, Webster alleged copyright infringement, based
on Dean’s sale of the DFH reissues; and unfair competition under the Lanham Act,
Florida common law, and California statutory law, based on Dean making
misleading representations to cause confusion about the connection between Dean,
Webster, and Webster’s approval or sponsorship of the DFH reissues. 2 Webster
and the Appellees filed cross motions for summary judgment.
The district court granted summary judgment in favor of the Appellees on all
claims and denied Webster’s motion for summary judgment as moot. The court
decided that Webster’s copyright infringement claim was time-barred because the
claim accrued more than three years before Webster filed suit. In doing so, the
court first concluded that the “gravamen” of Webster’s claim of copyright
2 Webster also asserted claims under Texas law of invasion of privacy and civil conspiracy, but he does not appeal the district court’s grant of summary judgment in favor of the Appellees on those claims. 6 infringement was ownership. It stated that this Circuit had not defined the point of
accrual for a copyright ownership claim, but explained that other circuits followed
one of two tests for determining the accrual of such claims: in some circuits, an
ownership claim accrues when ownership is expressly repudiated to the claimant;
and in others, a claim accrues when the plaintiff learns, or should as a reasonable
person learn, that the defendant is violating his rights. Ultimately, the court
concluded that Webster’s claim was time-barred under either test. The court
further concluded that because Webster’s copyright ownership claim was
time-barred, any remaining infringement claim was also time-barred.
Next, the court addressed Webster’s unfair competition claims. It explained
that § 41(a) of the Lanham Act provides two bases of liability—false endorsement
and false advertising—and that Webster had mainly argued a theory of false
advertising at summary judgment. The court concluded that Webster’s false
advertising claim failed because there was no evidence that Dean used a false or
misleading statement to sell the DFH reissues. The court found that most of the
statements Webster relied on were his own statements in the video interviews and
that there were no statements that Webster endorsed, sponsored, or derived income
from the DFH reissues. The court noted that one person stated in a declaration that
he attended a NAMM show and “heard Dean representatives using Buddy’s name
when selling guitars like the one that Buddy Blaze re-built for [Abbott].” But the
7 court found that there was nothing untrue or misleading about this statement.
Furthermore, the court stated that Webster admitted to voluntarily participating in
each video and said that he was not harmed by the videos from the 2009 NAMM
show. Accordingly, the district court concluded that Webster had not presented
evidence of a false or misleading statement to support a false advertising claim
under the Lanham Act. And, for the same reasons, the court decided that no untrue
or misleading statements were made to support an unfair competition claim under
Florida common law or California statute.
Finally, in a footnote, the court stated that “[p]erhaps because neither party
spent significant time addressing false endorsement or likelihood of confusion, the
Court has very little material on which to base” an analysis of Webster’s false
endorsement claim under the Lanham Act. Nonetheless, the court concluded that
“even if ‘Buddy Blaze’ is a protectable mark, the record contains insufficient
evidence for a reasonable jury to find that [the Appellees’] limited usage of
[Webster’s] name creates a likelihood of confusion about [Webster] endorsing the
DFH reissues.”
II.
We review a district court’s grant of summary judgment de novo. Holloman
v. Mail-Well Corp., 443 F.3d 832, 836 (11th Cir. 2006). A “court shall grant
summary judgment if the movant shows that there is no genuine dispute as to any
8 material fact and the movant is entitled to judgment as a matter of law.” Fed. R.
Civ. P. 56(a). The nonmovant must point to enough evidence that “a reasonable
jury could return a verdict for him.” Shaw v. City of Selma, 884 F.3d 1093, 1098
(11th Cir. 2018) (alteration accepted). “[T]he evidence of the nonmovant is to be
believed, and all justifiable inferences are to be drawn in his favor.” Id.
III.
Webster raises several challenges to the district court’s decision that his
copyright claim is time-barred. First, he argues that the court erred when it
concluded that the gravamen of his copyright claim was ownership, because he had
registered his copyright in the lightning storm graphic and the Appellees did not
dispute his ownership in a counterclaim or affirmative defense. Second, he asserts
that copyright ownership claims do not have a different accrual date than copyright
infringement claims and that, under Petrella v. Metro-Goldwyn Mayer, Inc., 572
U.S. 663, 670 (2014), an infringement claim accrued each time Dean reproduced
the lightning storm graphic. Alternatively, he argues that his claim survives
summary judgment even if a separate accrual standard applies because he had no
reason to know that his ownership claim had accrued. Third, he claims that his
9 copyright infringement claim survives even if the ownership claim is time-barred.3
We disagree with each of Webster’s arguments.
Under the Copyright Act, a civil copyright action must be brought within
three years after the claim accrued. 17 U.S.C. § 507. In Petrella, the Supreme
Court stated that a copyright infringement claim “ordinarily accrues when a
plaintiff has a complete and present cause of action,” that is, “when an infringing
act occurs.” 572 U.S. at 670 (alteration accepted) (internal quotation mark
omitted). But Petrella concerned a non-ownership copyright infringement claim.
And though we have not previously addressed the issue, other circuits draw a
distinction between the accrual of copyright infringement and copyright ownership
claims.
The Sixth and Ninth Circuits have held that a copyright ownership claim
accrues when “there is a ‘plain and express repudiation’ of ownership by one party
as against the other.” Ritchie v. Williams, 395 F.3d 283, 288 n.5 (6th Cir. 2005);
see also Zuill v. Shanahan, 80 F.3d 1366, 1369 (9th Cir. 1996) (“[C]laims of
co-ownership, as distinct from claims of infringement, accrue when plain and
express repudiation of co-ownership is communicated to the claimant.”). The
3 Webster argues for the first time on appeal that the limitation period in the Copyright Act bars only remedial, not substantive, rights. We decline to consider this claim, as it was not raised in the district court. See Iraola & CIA S.A. v. Kimberly-Clark Corp., 325 F.3d 1274, 1284–85 (11th Cir. 2003). 10 First, Second, Fifth, and Seventh Circuits have held that copyright ownership
claims accrue “when the plaintiff learns, or should as a reasonable person have
learned, that the defendant was violating his rights.” Gaiman v. McFarlane, 360
F.3d 644, 653 (7th Cir. 2004); see also Kwan v. Schlein, 634 F.3d 224, 228 (2d Cir.
2011) (“An ownership claim accrues only once, when “a reasonably diligent
plaintiff would have been put on inquiry as to the existence of a right.”); Pritchett
v. Pound, 473 F.3d 217, 220 (5th Cir. 2006) (holding that an alleged copyright
co-owner’s “declaratory judgment rights accrued when it knew or had reason to
know of the injury upon which the claim is based”); Santa-Rosa v. Combo
Records, 471 F.3d 224, 228 (1st Cir. 2006) (“[A] claim for declaratory judgment
of ownership accrues when the plaintiff ‘knew of the alleged grounds for the
ownership claim.’”) (alteration accepted). Additionally, at least one circuit has
held that “where the gravamen of a copyright infringement suit is ownership, and a
freestanding ownership claim would be time-barred, any infringement claims are
also barred.” See, e.g., Seven Arts Filmed Entm’t Ltd. v. Content Media Corp.
PLC, 733 F.3d 1251, 1255 (9th Cir. 2013).
The district court properly concluded that Webster’s copyright claim was
time-barred. To begin, the court properly characterized Webster’s claim as one
primarily concerning copyright ownership. Webster’s main argument is that he
owns the lightning storm graphic and the Appellees have reproduced it without his
11 consent. The parties agree that Dean has reproduced the graphic on several guitar
models without Webster’s permission, leaving ownership the only disputed issue.
Further, in their Answer, the Appellees raised as an affirmative defense the statute
of limitations, asserting that Abbott’s estate clearly and expressly repudiated
Webster’s copyright ownership in the lightning storm graphic in 2007.
Additionally, Webster’s copyright registration does not entitle him to a
presumption that his copyright is valid, given that he registered the graphic in
2016—about 30 years after the original DFH was created. See 17 U.S.C. § 410(c)
(stating that a certificate of registration made within five years after first
publication of a work constitutes prima facie evidence of the validity of the
copyright). Therefore, the court correctly determined that the gravamen of the case
is ownership.
We have not previously decided whether copyright ownership claims have a
different accrual standard than copyright infringement claims. Today, we agree
with the district court and our sister circuits and hold that, unlike an ordinary
copyright infringement claim, which accrues for each infringing act, a claim
concerning mainly ownership accrues only once. This is consistent with
Petrella—which did not concern a copyright ownership claim. See 572 U.S. 663.
And we adopt the approach used by the First, Second, Fifth, and Seventh
Circuits—that an ownership claim accrues when the plaintiff learns, or should as a
12 reasonable person have learned, that the defendant was violating his ownership
rights—as this approach is most consistent with our existing precedent. See Corn
v. City of Lauderdale Lakes, 904 F.2d 585, 588 (11th Cir. 1990) (stating that
federal claims generally “accrue when the plaintiff knows or has reason to know of
the injury which is the basis of the action”); Calhoun v. Lilenas Publ’g, 298 F.3d
1228, 1236 (11th Cir. 2002) (Birch, J., concurring) (noting that a copyright
infringement claim’s “limitations period may be triggered when a plaintiff knows
or, in the exercise of reasonable diligence, should have known about an
infringement”). Thus, Webster’s copyright ownership claim accrued when he
knew, or reasonably should have known, that his ownership rights in the lightning
storm graphic were being violated.
Webster had reason to know that his alleged ownership rights were being
violated as early as 2004, when he first learned that Dean was producing DFH
reissues. But if that were not sufficient to put him on notice that his rights were
being violated, Rubinson’s email in 2007 stating that “the consensus concerning
[the lightning storm graphic] is that [Abbott’s] estate is the legal owner of it” was
certainly sufficient. Therefore, Webster’s claim accrued in April 2007 at the latest,
and the three-year limitation period expired years before he brought his copyright
claim in 2017. Moreover, to the extent that Webster asserts a separate copyright
infringement claim, that claim is also barred. See Seven Arts Filmed Entm’t Ltd.,
13 733 F.3d at 1255; see also Calhoun, 298 F.3d at 1236 & n.5 (Birch, J., concurring)
(concluding that when a copyright ownership claim is time-barred, “all those
claims logically following therefrom should be barred, including infringement
claims,” and citing precedent in other circuits). Accordingly, we affirm the district
court’s grant of summary judgment in favor of the Appellees on Webster’s
copyright claim.
IV.
Webster also challenges the district court’s ruling on his unfair competition
claims. He argues that the district court erred by concluding that the Appellees did
not make false or misleading statements, and that the court failed to consider the
statements in context. Webster asserts that the statements in the interview videos
are misleading and likely to cause consumer confusion because, after viewing the
videos on Dean’s website and reading Dean’s advertising copy for the DFH
reissues, a reasonable person would assume that Webster was working with Dean
on the reissues. Webster relies on the videos in which he discusses the history of
the DFH, as well as statements by Dean advertising the DFH reissues as similar to
“the one that Buddy Blaze painted” and featuring the “iconic, [DFH] lightning bolt
paint job.” He claims that these statements were made in a purely commercial
context and convey that he had approved of the sale of the reissues.
14 False advertising under the Lanham Act requires, among other things, a
showing that the defendant made false or misleading statements and that the
plaintiff was injured. Duty Free Ams., Inc. v. Estee Lauder Cos., Inc., 797 F.3d
1248, 1277 (11th Cir. 2015). Unfair competition under Florida common law
requires “deceptive or fraudulent conduct of a competitor and likelihood of
consumer confusion.” Donald Frederick Evans & Assocs., Inc. v. Cont’l Homes,
Inc., 785 F.2d 897, 914 (11th Cir. 1986). Unfair competition in California includes
“any unlawful, unfair or fraudulent business act or practice and unfair, deceptive,
untrue or misleading advertising.” Cal. Bus. & Prof. Code § 17200.
The district court correctly granted summary judgment in favor of the
Appellees on Webster’s false advertising and unfair competition claims because
the statements he relies on were not false or misleading. The videos Webster relies
on contained his own statements regarding his involvement in the creation of the
DFH, and his involvement is not disputed. None of the videos stated that Webster
was promoting or selling the DFH reissues. One of the videos shows Webster
promoting his own signature guitar—the Buddy Blaze ML—and another shows
him comparing his model with the DFH. Thus, the videos accurately show
Webster describing his part in the history of the DFH, which he has used to his
own advantage to sell his own model. The statements in these videos do not
become misleading, nor do they imply that he endorses or benefits from the sale of
15 the DFH reissues, simply because they appear near Dean’s advertisements of DFH
reissues. Therefore, Webster did not present sufficient evidence to support his
unfair competition and false advertising claims, and we affirm the district court’s
ruling as to these claims.
V.
Last, Webster claims that the district court erred when it concluded that his
false endorsement claim failed for lack of evidence of a likelihood of consumer
confusion. Specifically, Webster argues that his presence in Dean’s promotional
materials and videos “was ‘inescapably interpreted’ by the audience of guitar-
enthusiasts [as] an endorsement.”
Section 43(a) of the Lanham Act prohibits false product endorsements by
imposing liability on
[a]ny person who, on or in connection with any goods . . . , uses in commerce any word, term, name, symbol, or device, or any combination thereof . . . which (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods . . . by another person.
15 U.S.C. § 1125(a)(1)(A). Thus, as with trademark infringement claims under the
Lanham Act, a plaintiff alleging false endorsement of goods must show a
likelihood of consumer confusion, mistake, or deception as to the origin,
sponsorship, or approval of goods being sold. See Suntree Techs., Inc. v. Ecosense
Int’l, Inc., 693 F.3d 1338, 1346 (11th Cir. 2012); see also Univ. of Ala. Bd. of Trs. 16 v. New Life Art, Inc., 683 F.3d 1266, 1278 (11th Cir. 2012) (“[W]e have never
treated false endorsement and trademark infringement claims as distinct under the
Lanham Act.”). In this case, Webster has a viable cause of action for false
endorsement under § 43(a) only if consumers were likely to believe from Dean’s
marketing that he sponsored or approved the DFH reissues.
When determining whether there is a likelihood of confusion between two
marks for purposes of an infringement claim, we consider seven factors: (1) the
strength of the mark alleged to have been infringed; (2) similarity of the infringed
and infringing marks; (3) similarity between the goods and services offered under
the two marks; (4) similarity of the actual sales methods used by the holders of the
marks; (5) similarity of advertising methods; (6) the intent of the alleged infringer
to misappropriate the proprietor’s good will; and (7) the existence and extent of
actual confusion in the consuming public. Tana v. Dantanna’s, 611 F.3d 767,
774–75 (11th Cir. 2010). “The appropriate weight to be given to each of these
factors varies with the circumstances of the case.” AmBrit, Inc. v. Kraft, Inc., 812
F.2d 1531, 1538 (11th Cir. 1986). This is a false endorsement claim, however, in
which the allegations of false endorsement are grounded on videos in which
Webster appeared to willingly promote his legacy as creator of the DFH. For that
reason, factors six and seven are the only relevant factors here. Webster did not
expressly address the likelihood-of-confusion factors in the district court or in this
17 court. Instead, he seems to claim that, given his notoriety in the guitar-enthusiast
world, the mention of his name near or in relation to the DFH reissues must have
caused consumers to mistakenly believe that he endorsed the sale of the reissues.
But we do not just assume a likelihood of consumer confusion when a mark is used
in the proximity of advertising for a product, especially when a legitimate use of
that mark is clear from the context.
Webster presented little or no evidence that Dean intended to misappropriate
his goodwill in the sale of the DFH reissues. Rather, he presented video interviews
that show him, several years after he became aware of the DFH reissues, willingly
discussing the history of the DFH to promote his legacy and sell his own guitars.
He does not mention the DFH reissues in the interviews. Further, Webster has not
presented evidence of the existence or extent of actual consumer confusion. Thus,
because Webster has not established a likelihood of consumer confusion, mistake,
or deception, the district court properly granted summary judgment in favor of the
Appellees on his false endorsement claim. Accordingly, we affirm the district
court.
AFFIRMED.