USDC N.D. Georgia, February 12, 2008
The three plaintiffs in this case are the former jockey and trainer of a racehorse called Ruffian and a company formed to license the rights associated with the story of Ruffian. The plaintiffs registered ”Ruffian” as a service mark in connection with entertainment services and attempted to license the mark to ESPN, who already was making a film about the horse. When ESPN’s version of the Ruffian story aired on television in 2007, the plaintiffs filed suit for trademark infringement, defamation, invasion of privacy and false endorsement.
The district court granted summary judgment for the defendants on the trademark infringement claim because the plaintiffs did not use the mark as a trademark in commerce. The court held that simply claiming ownership of a trademark and registering a trademark does not constitute use and the plaintiffs’ other actions – including conversations with other parties about making a move about the horse – did not constitute use of the mark in commerce because it was not used to signify the source of any services. The court also held that even if the plaintiffs had used the mark in commerce, their trademark infringement claim would fail because the mark is descriptive and lacks secondary meaning. The court went on to confirm that registration of “Ruffian” did not change this result and stressed that the facts of Ruffian’s story are not entitled to intellectual property protection. Additionally, the court held that the defendants’ use of the mark was a fair use because their film title conveyed no information about the origin of the film.
Turning to the invasion of privacy claim, the court held that the jockey and trainer failed to state a claim because the movie depicted newsworthy events and because the defendants’ actions are protected by the First Amendment. In reaching this conclusion, the court noted that although the bulk of cases dismissed on this basis involved recent news stories, the same principle was applicable to later dramatizations of past newsworthy events. Finally, the court allowed discovery to continue in relation to the claims for defamation and false endorsement.