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Lucchese, Inc. v. John Wayne Enterprises, LLC

United States District Court, W.D. Texas, El Paso Division

July 31, 2017

LUCCHESE, INC., Plaintiff,
v.
JOHN WAYNE ENTERPRISES, LLC, Defendant. v.

          ORDER GRANTING JOHN WAYNE ENTERPRISES. LLC'S MOTION TO DISMISS

          Philip R. Martinez United States District Judge.

         On this day, the Court considered Defendant John Wayne Enterprises, LLCs ("JWE") "Motion to Dismiss Pursuant to Federal Rules of Civil Procedure 12(b)(2) and 12(b)(6)" (ECF No. 9) [hereinafter "Motion"], filed on June 30, 2017, Plaintiff Lucchese, Inc.'s ("Lucchese") "Opposition to Defendant's Motion to Dismiss" (ECF No. 5) [hereinafter "Response"], filed on July 14, 2017, and Defendant's "Reply in Support of Motion to Dismiss" (ECF No. 21) [hereinafter "Reply"], filed on July 21, 2017, in the above-captioned cause. After due consideration, the Court is of the opinion that JWE's Motion should be granted for the reasons that follow.

         I. FACTUAL AND PROCEDURAL BACKGROUND

         Lucchese is a corporation founded in Texas in 1883 that designs, manufactures, and sells leather boots. Resp. 2. While the majority of its business operations are in Texas, Lucchese conducts business in other states, including California. Id.

         JWE is a California company that claims to be the exclusive holder of the rights to famed actor John Wayne's name, image, and likeness. Mot. 3. JWE's President is Ethan Wayne, John Wayne's son. Mot. Ex. A, Decl. of Ethan Wayne. JWE's "sole place of business" is Newport Beach, California. Id.

         Lucchese alleges, and JWE does not contest, that John Wayne had a close relationship with Lucchese and its management during John Wayne's life. Resp. 2. Mr. Wayne was a loyal Lucchese customer for decades, and his affinity for Lucchese's products is well documented. Id. Esquire magazine even published an article in 1976 about his fondness for Lucchese's boots entitled "Boots Fit for a Duke." Id. Due to this unique relationship, the parties have discussed potential "cooperative" marketing efforts on "numerous" occasions in recent years. Id. at 3. Specifically, over the course of about three years starting in 2014, the parties exchanged extensive phone and email correspondence as well as conducted in-person meetings in JWE's office in Newport Beach, California, Lucchese's office and factory in El Paso, Texas, and the Lucchese office in Dallas, Texas. Id. at 3-7; Resp. 4-5. However, these discussions did not ultimately lead to a formalized agreement between the parties. Mot. 5.

         JWE alleges that in December 2016, it learned that Lucchese was using Mr. Wayne's image in a magazine advertisement without authorization, which led to JWE's discovery of numerous other uses of Mr. Wayne's image and name in connection to Lucchese's marketing materials. Id. In the ensuing months, JWE made various demands to Lucchese to recognize JWE's rights with respect to Mr. Wayne's name and image. Id. at 6-7. JWE alleges that while initially responsive, Lucchese did not ultimately address these demands to JWE's satisfaction. Id. at 6-7. Accordingly, on April 28, 2017, JWE filed a lawsuit in Orange County, California Superior Court asserting four causes of action exclusively under California law (hereinafter "State Suit"). Id. at 7. Coincidentally, Lucchese filed the instant action for declaratory judgment four hours later on the exact same day (hereinafter "Federal Suit").[1] Id.

         Lucchese's Federal Suit asks the Court to make extremely broad pronouncements regarding its current, past, and future rights to use John Wayne's name, image, and likeness. See generally Am. Compl. If the Court were to grant these requests, such a declaration would undoubtedly encompass the entirety of the issues presented in JWE's State Suit. Pursuant to both 28 U.S.C. § 2201 ("Declaratory Judgment Act") and Tex. Civ. Prac. & Rem. Code § 37 ("Texas Declaratory Judgment Act"), and in addition to seeking attorney's fees and costs, Lucchese requests that the Court declare the following:

i) Lucchese . . . ha[s] at all times referenced, used, or implicated John Wayne and John Wayne's name, likeness or image in an incidental manner consistent with newsworthy, informational or historical purposes and not in connection with intending to seek, acquire or gain commercial profit... from the intrinsic value associated with John Wayne's name, likeness, or image protected under applicable state and federal law;
ii) JWE ... do[es] not possess rights sufficient to permit [it] to charge or assert... that Lucchese has infringed any intellectual property rights including the right of publicity or trademark rights under federal or state law, of JWE by virtue of Lucchese's non-trademark, non-source-identifying use of the John Wayne name and image;
iii) JWE ... do[es] not possess rights sufficient to permit [it] to charge or assert. .. that Lucchese has infringed any intellectual property rights, including the right of publicity or trademark rights under federal or state law, of JWE due to JWE's consent, implied or otherwise, to such use by Lucchese;
iv) JWE ... do[es] not possess rights sufficient to permit [it] to charge or assert... that Lucchese has infringed any intellectual property rights, including the right of publicity or trademark rights under federal or state law, of JWE by virtue of JWE's acquiescence to such use under the legal theories of laches, waiver, forfeiture, estoppel, and acquiescence;
v) In the alternative, that JWE ... knew or should have known that Lucchese could potentially realize commercial gains or profits from its historical association with John Wayne's name, image or likeness and thereafter failed to timely assert or inform Lucchese that its actions constituted a violation of JWE's property rights in and [sic] John Wayne's name, likeness or image under federal and state privacy laws[.]

Am. Compl. 12-13.

         II. LEGAL STANDARD

         A. Motion to Dismiss

         Pursuant to Federal Rule of Civil Procedure 12(b)(6), a court may dismiss an action for "failure to state a claim upon which relief can be granted." In determining whether a plaintiff states a valid claim, a court "accept[s] all well-pleaded facts as true and view[s] those facts in the light most favorable to the plaintiffs." Gonzalez v. Kay, 577 F.3d 600, 603 (5th Cir. 2009) (quoting Dorsey v. Portfolio Equities, Inc., 540 F.3d 333, 338 (5th Cir. 2008)).

         In considering a motion pursuant to Rule 12(b)(6), a district court's review "is limited to the complaint, any documents attached to the complaint, and any documents attached to the motion to dismiss that are central to the claim and referenced by the complaint."[2]Lone Star Fund V(U.S.), L.P. v. Barclays Bank PLC,594 F.3d 383, 387 (5th Cir. ...


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