Yeager et al. v. Fort Knox Security Products
Over the years, well-known aviation figure and retired United States Air Force general, Charles E. “Chuck” Yeager (Yeager) has been engaged in numerous legal disputes, including several lawsuits that Yeager has filed against third parties regarding the unauthorized use of his name, image and/or likeness in connection with the promotion of goods and services (Yeager et al. v. Bowlin et al., IP Update, Vol. 15, No. 10.). Most recently, the United States Court of Appeals for the Tenth Circuit issued a non-precedential decision giving some continued life to a suit that Yeager filed against Fort Knox Security Products (Fort Knox) under Utah law and the Lanham Act for misuse of Yeager’s name and likeness in connection with the sale of Fort Knox’s gun safes and other security products. Yeager et al. v. Fort Knox Security Products, Case No. 14-4011 (10th Cir., Feb. 10, 2015) (McKay, J.).
General Yeager and the founder of Fort Knox met in the mid-1980s at a Safari Club International convention. According to the facts of the dispute, during the convention, Yeager and Fort Knox entered into an oral agreement providing for the use of Yeager’s name and likeness to promote the Fort Knox products in return for free gun safes for Yeager and his family. On the basis of the oral agreement, Fort Knox began producing advertising materials and dubbed a particular product line the “Yeager safes.” In the late 1980’s Fort Knox also began buying numerous copies of a book written by Yeager, which Yeager would sign and return to Fort Knox for use in promoting its safe sales.
The parties agree that Yeager did not voice any concerns over the oral agreement for 20 years or more, but in 2008 or early 2009, Yeager’s wife, who also manages his commercial endorsements and proprietary rights, started inquiring about the agreement terms between Fort Knox and Yeager. These inquiries caused Fort Knox to anticipate that difficulties might arise regarding the terms of the agreement, and Fort Knox ceased use of Yeager’s name and likeness in all instances with the exception of a video discussing the Yeager line of safes that the company uploaded to the Internet, as well as a poster depicting the general, which Fort Knox displayed at the Safari Club’s 2009 convention.
Yeager claims that the oral agreement with Fort Knox was terminated by Yeager at some time in 2008 or 2009. Accordingly, after Yeager saw the poster displayed at the 2009 Safari Club convention following the alleged termination of the agreement, Yeager filed suit against Fort Knox for misuse of his name and likeness. The district court granted summary judgment for Fort Knox based on the doctrine of laches focusing on Yeager’s lack of diligence in bringing the suit after more than 20 years and prejudice to the defendant from the resultant delay, including the loss of evidence and the loss of witnesses (as well as the faded memories of elderly witnesses).
Yeager raised 14 issues on appeal, but the 10th Circuit affirmed the district court’s grant of summary judgment for Fort Knox with respect to all “stale claims” that fell outside the applicable four-year statute of limitations period. Yeager’s appeal brief argued that the Supreme Court’s recent decision in Petrella (IP Update, Vol. 17, No. 5) applied to his complaint, since the Supreme Court held that claims arising within a statutory limitations period cannot be barred by a laches defense. However, the 10th Circuit found the Petrella decision to be inapplicable to Yeager’s Lanham Act claims because Petrella specifically addressed the Copyright Act, which does not expressly provide for defensive use of laches, while the Lanham Act does provide for such a defense. However, as for two claims that related to Fort Knox’s conduct within the statute of limitations period, and particularly relating to Fort Knox’s use of Yeager’s name and likeness following the 2008 or 2009 termination of the original oral agreement, the 10th Circuit reversed the district court’s grant of summary judgment on these claims and remanded for further proceedings.
Specifically, the 10th Circuit found that the Fort Knox promotional video regarding the Yeager line of safes and the display of the Yeager poster in 2009, following the termination of the oral agreement, occurred within the four-year look-back period preceding the filing of Yeager’s original complaint in January 2011. The 10th Circuit also noted that if such acts truly occurred after the alleged termination of the agreement, then acting in the “complete absence of contractual authorization . . . is not a continuation or repetition of the earlier alleged wrongful conduct… to which laches applies,” especially when relevant evidence and witnesses are available. As such, the 10th Circuit determined that the two claims based on recent facts could not be barred by laches and remanded those claims for further proceedings with the district court.