The Ninth Circuit affirms and vacated in part Arizona District Court judgment in a case involving TM infringement between Cartoonist Norma Martin and publisher E.C. publication
Date Published: Jun 21, 2021
The widow (“Norma Martin”) of a cartoonist and gag writer Don Martin, a regular contributor for MAD magazine between 1950s – 1980s, has filled an appeal against the summary judgment of the United States District Court of Arizona (“District Court”) at the United States Court of Appeals for The Ninth Circuit (“Appellate court”) (Martin V. E.C. Publications Inc. Case Number: No. 20-10785) against Defendants E.C. Publications, Inc., and Dc Comics, Inc., Warner Communications LLCs (collectively, “E.C Publications”), an American publisher of comic books, specialized in horror fiction, crime fiction, satire, military fiction, dark fantasy, and science fiction. Norma Martin asserted that she has a registered trade mark in the name of “Don Martin” and averred that she acquired common law rights in the unregistered trade mark and common law name “Don Martin”. The district court granted summary judgment in favor of E.C. Publication which was affirmed in part and vacated in part by the Appellate Court, which also remanded the case for further proceedings.
In the Civil action of March 2019 at the District Court, the Plaintiff asserted that, E.C Publications in various MAD publications (“MAD”), not only used the name and likeness of “Don Martin” unlawfully, but also produced counterfeit cartoon books using unauthorized colorized versions of black and white cartoons. 8 claims were raised against the Defendants, i.e. claims of trademark infringements, counterfeiting, unfair competition etc. and sought injunction, declaratory relief and money damages. The Defendant asserted that since the claims are either time barred or belong to foreign publications, they cannot be subjected to the Lanham Act and hence the remaining claims have no merits. Moving to summary proceeding, the District Court concurred with the Defendant and granted an oral summary judgment in favor of Defendant on grounds that each of the claims are either time barred or non-actionable as they are beyond the jurisdiction of Lanham Act or Florida law. Subsequently, dissatisfied with the verdict of the District Court the Plaintiff filled this appeal.
The Appellate court relying on the locus classicus Fed. R. Civ. P. 56(a) found that summary judgment is suitable only when there is “no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.”
And for the time barred issue, the Appellate court held the finding of the district court valid that the claims are to be governed by a limitation period of four years as there is no specific limitation periods prescribed in Florida Law for claims of trademark, unfair competition and misappropriation. As per Section 95.11(3)(p) of Florida Statue, for all the actions which are not specifically provided under these statues, the limitation period will be 4 years.
As there is no breach of contract, the court relied on locus classicus Super Transp., Inc. v. Fla. Dep’t of Ins., 799 So. 2d 286, 289-90 (Fla. Dist. Ct. App. 2001) dissented with the argument of the Plaintiff that there should be a 5 year limitation period for these claims which are applied in legal or equitable action(s) on contract, obligation or liability stated in Section 95.11(2)(b) of Florida Statue.
The Appellate court however, held that the 4 year limitation period only disqualified the claim involving publications before 2005. Thus, only to the extent of that claim is the summary judgment valid. For other claims involving subsequent claims, the district court has erred in its judgment as all these claims fall within the limitation period of 4 years, and are hence, not time barred.
And for the contentions of the Defendant that the summary judgment is valid as the claims lack merit, the Appellate court disagreed with the contentions and held that the judgment of the district court is based on timelessness and the court neither addresses the issue of merit nor sets out legal analysis. So, it was concluded that due to the missing additional factual findings and additional plain explanation, the Appellate court is unable to decide whether a summary judgment is proper or not.
The Appellate court affirmed the grant of the district court to the extent of claim involving pre 2005 & foreign judgment but vacated the summary proceeding for the claim filled timely i.e., post 2005 and non-foreign publication and remanded for further proceeding.