Plaintiff’s Opposition to Kay’s Motion for Summary Judgment 17-cv-00436-NC

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ROBERT L. MEZZETTI II (SBN 114282)

Rob@mezzettilaw.com

MAUREEN PETTIBONE RYAN (SBN 245438)

Maureen@mezzettilaw.com

CHRISTOPHER R. MEZZETTI (SBN 282287)

Chris@mezzettilaw.com

MEZZETTI LAW FIRM, INC.

31 East Julian Street

San Jose, California 95112

Telephone (408) 279-8400

Facsimile (408) 279-8448

Attorneys for Plaintiff

Colonel David Randolph Scott (Ret.)

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

COLONEL DAVID RANDOLPH SCOTT,

 Plaintiff,

v.

CITIZEN WATCH COMPANY OF 

AMERICA, INC., a California Corporation 

(successor to BULOVA CORPORATION, a 

New York corporation); STERLING 

JEWELERS, INC. dba KAY JEWELERS, a 

Delaware corporation; and DOES 1 through 

99, inclusive,

 Defendants.

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Case Number: 17-CV-00436-NC

PLAINTIFF’S OPPOSITION TO KAY’S 

MOTION FOR SUMMARY JUDGMENT 

PURSUANT TO FED. R. CIV. P. 56(a)

Date: February 7, 2017

Time: 1:00 p.m.

Courtroom: 7

Judge: Hon. Nathanael Cousins

Complaint Filed: January 27, 2017

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Plaintiff’s Opposition to Kay’s Motion for Summary Judgment 17-cv-00436-NC

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Colonel David Randolph Scott (“Plaintiff” or “Col. Scott”), submits the following 

Opposition to Sterling Jewelers, Inc., d/b/a Kay Jewelers (“Kay Jewelers”) Motion for 

Summary Judgment:

I. INTRODUCTION

Kay Jewelers moves for summary judgment on the basis that it is not legally liable for 

the misuse of Col. Scott’s name, identity, likeness, and voice or for violations of the Lanham 

Act because it is an “innocent retailer” and it did not control how Bulova marketed the Bulova 

“replica” of Col. Scott’s Moon Watch.1

Kay Jeweler’s motion makes three fatal logical errors. First, Kay presumes that if its 

conduct is no longer unlawful, Col. Scott’s lawsuit has no merit. That is incorrect. Col. Scott 

is still entitled to damages for past misconduct. Second, Kay’s alleged “innocent retailer” 

defense is not an existing defense in the Ninth Circuit or California, and the “innocent retailer” 

cases Kay cites from other jurisdictions are inapposite. Third, Kay presumes that because its 

contract with Bulova states that Bulova alone is responsible for obtaining permissions and 

releases from third parties, that this somehow affects Col. Scott’s rights. That is not so. Kay 

Jewelers and Bulova do not have the right to contract away Col. Scott’s right to publicity.

II. STATEMENT OF ISSUES PURSUANT TO LOCAL RULE 7-4

1. Whether Plaintiff established a genuine dispute of fact regarding his legal claims.

III. FACTS

A. Kay Jewelers’ Unauthorized Use of Plaintiff’s Name, Identity, and Likeness.

In an email dated January 6, 2016, Kristen Reilly of Bulova sent the following copy to 

Kay Jewelers to be included on its website, with a photo of the Bulova “replica”:

The Special Edition Moon Watch Replica

From the UHF Collection. Taking inspiration from 

astronaut Dave Scott’s personal Bulova chronograph worn 

during the Apollo 15 moon landing. Six hand calendar 

chronograph, stainless steel screw‐back case in silver‐tone finish 

 1 Kay Jewelers also recapitulates many of Bulova’s arguments, without elaboration or 

additional case law. (Kay MSJ at 1:9-3:8; 3:15-17; 10:16-20.) Those arguments have been 

addressed in Col. Scott’s opposition to Bulova’s motion for summary judgment, and will not 

be repeated here. Col. Scott’s responses are incorporated by reference.

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and black dial, sapphire glass, interchangeable black leather and 

nylon straps with three‐piece buckle closure, and water resistance 

to 50 meters.

Powered by Bulova’s proprietary, high‐performance UHF 

quartz movement, with a vibrational frequency of 262kHz—

eight times greater than a standard quartz movement for 

unparalleled accuracy.

Diameter: 45mm Thickness: 13.5mm $550

(Declaration of Maureen Pettibone Ryan in Opposition to Kay’s Motion for Summary 

Judgment “Ryan Dec., Kay” at ¶3, Ex. A.)

Kay Jewelers placed the following text on its website. The words also included in 

Bulova’s description are in bold:

This special edition moon watch replica takes inspiration from 

astronaut Dave Scott’s personal Bulova chronograph worn 

during the Apollo 15 moon landing. The watch is powered by 

Bulova’s proprietary, high-performance UHF quartz 

movement, with a vibrational frequency of 262kHz—eight 

times greater than a standard quartz movement for 

unparalleled accuracy. The black chronograph men’s watch has 

three subdials, a date window, tachymeter scale bezel set in a 

45mm stainless steel case. Topped by a sapphire crystal, the 

case has a screw-in case back and water-resistance to 50 

meters. The interchangeable black leather and nylon straps 

secure with buckles.

(Ryan Dec., Kay at ¶4, Ex. B.)

Kay Jewelers substantially revised the text it included on its website—it did not merely 

repeat Bulova’s advertising copy word-for-word. 

In addition, contrary to its representations, Kay Jewelers also displayed the “booklet” 

which contains Col. Scott’s identity as mission commander and likeness, in the form of an 

iconic photo of him on the moon with the lunar rover in the background, and the commander’s 

stripe on his helmet and arm clearly visible. (Ryan Dec. ISO Opposition to Bulova MSJ at 

¶¶9-11, Exs. A at 110:12-112:10, 143:18-25; M-X.) Only five people who walked on the 

moon—the mission commanders for Apollo 13, 14, 15, 16, and 17, wore a spacesuit with that 

red stripe. (Scott Dec. ISO Opposition to Bulova MSJ at ¶9.)

Furthermore, testimony from Bulova’s 30(b)(6) witness, Christopher Napolitano, puts 

the responsibility for publishing advertisements on downstream retailers, such as Kay 

Jeweler’s. According to Mr. Napolitano’s testimony, Bulova did not advertise the moon 

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watch, but instead created “marketing assets” which downstream retailers could then choose to 

use in their own advertising to promote the Bulova “replica.” (Ryan Dec., Kay at ¶5, Ex. C at 

22:15-24:10, 27:7-28:12.)

Kay therefore made significant and actionable use of Col. Scott’s name and likeness. 

Kay is not an “innocent retailer” but a full participant in Bulova’s scheme to misappropriate 

Col. Scott’s name and likeness.

IV. ARGUMENT

A. LEGAL STANDARD

Summary judgment is only proper where there is “no genuine dispute as to any material 

fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. Proc. 56(a). 

When considering a motion for summary judgment, “[t]he moving party bears the burden of 

showing that there is no material factual dispute. Therefore, the court must regard as true the 

opposing party's evidence, if supported by affidavits or other evidentiary material.” In re 

NCAA Student-Athlete Name & Likeness Licensing Litig., 37 F. Supp. 3d 1126, 1135 (N.D. 

Cal. 2014) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986); and Eisenberg v. Ins. 

Co. of N. Am., 815 F.2d 1285, 1289 (9th Cir. 1987).

Furthermore, “the non-moving party’s evidence is to be taken as true and all inferences

are to be drawn in the light most favorable to the non-moving party.” Eisenberg v. Ins. Co. of 

N. Am., 815 F.2d 1285, 1289 (9th Cir. 1987) (citation omitted).

The Ninth Circuit has ruled that in certain fact-specific contexts, summary judgment is 

disfavored. This includes Lanham Act claims and right of publicity claims, both of which are 

highly factual in nature. See Wendt v. Host Int'l, Inc., 125 F.3d 806, 812 (9th Cir. 1997). In 

particular, likelihood of confusion raises factual issues that are not proper for determination on 

summary judgment. “Likelihood of confusion as to endorsement is therefore a question for the 

jury.” Abdul-Jabbar v. GMC, 85 F.3d 407, 413 (9th Cir. 1996), citing White v. Samsung Elec. 

Am., Inc., 971 F.2d 1395, 1400-01 (9th Cir. 1992).

//

//

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B. DEFENDANT KAY IS NOT ENTITLED TO SUMMARY JUDGMENT

1. Defendant Kay is Not Entitled to an “Innocent Retailer” Defense.

Kay Jewelers concedes that Col. Scott’s claims are quintessential “right of publicity” 

claims. (Kay MSJ at 5:21.) Nevertheless, Kay contends that it is not liable for any violation of 

Col. Scott’s right to publicity, because it is an “innocent retailer.” (Kay MSJ at 5:21-9:14.)

Kay is incorrect for three reasons.

First, Kay is not innocent, as it approved and rewrote the advertising in question, and 

chose to display the booklet using Col. Scott’s likeness and identity in its jewelry cases. (Ryan 

Dec. ISO Opposition to Bulova MSJ at ¶9.d, Exs. T-U.) Furthermore, Bulova’s 30(b)(6) 

witness testimony suggests that Kay, as a downstream retailer, had the ability to use and 

possibly revise without Bulova’s approval. (Ryan Dec., Kay at ¶5, Ex. C at 22:15-24:10, 27:7-

28:12.)

Second, Kay has not presented any evidence that an “innocent retailer” defense applies 

in right of publicity claims in the Ninth Circuit or in California. All of Kay’s cases were found 

outside the Ninth Circuit and California, and Plaintiff was unable to locate any “innocent 

retailer” cases in the Ninth Circuit or California.

Third, Kay’s innocent retailer cases are inapposite, and/or contradicted by other 

authority.

With regard to Kay’s innocent retailer cases, all of them are readily distinguishable, and 

are not persuasive. Under those cases, Kay is either not an innocent retailer, or differences 

between the laws of those states and California laws would lead to a different result even if the 

same rule were applied. 

In the first case Kay cites, Brinkley v. Casablancas, 80 A.D.2d 428 (App. Div. 1981), a 

case involving a downstream retailer’s sale of unauthorized posters of Christie Brinkley, the 

court ruled that the downstream retailer’s sale of the posters did not constitute an actionable 

misappropriation of name and likeness. However, that case is distinguishable for three 

independent reasons. 

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First, New York does not have a common law right of publicity, unlike California. See 

Brinkley, 80 A.D.2d at 431-32, 435-36. 

Second, Brinkley is distinguishable because it pertains to a retailer “which sells a 

product exploiting the name, portrait or picture of a person.” Brinkley, 80 A.D.2d at 443-44. 

Here, Kay was not selling a photograph of Col. Scott, it was deliberately advertising the watch 

using what it describes as “two words.” Unfortunately for Kay, those two words were Col. 

Scott’s name. 

Third, the New York definition of “use” for the purposes of a right of publicity claim is 

narrower than the definition in the state of California. Under New York law, a use occurs 

when a “name, portrait, picture or voice is used within this state for advertising purposes or for

the purposes of trade.” California’s definitions are broader. Under the common law right to 

privacy and publicity, use applies where Defendant’s actions constitute “the appropriation of 

plaintiff's name or likeness to defendant’s advantage, commercially or otherwise.” Maxwell v. 

Dolezal, 231 Cal. App. 4th 93, 97 (Cal. Ct. App. 2014); Eastwood v. Superior Court, 149 Cal. 

App. 3d 409, 417 (Cal. Ct. App. 1983) (emphasis added). Under the statutory right to 

publicity, a use occurs when a defendant “knowingly uses another’s name, voice, signature, 

photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for 

purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or 

services, without such person’s prior consent.” Cal. Civil Code § 3344. Kay Jewelers used 

Col. Scott’s name and likeness to its advantage (commercially or otherwise), and for the 

purpose of “advertising or selling, or soliciting purchase of, products, merchandise, goods or 

services.” Kay is liable for this use, and there is no exception under Ninth Circuit law. See 

also Robinson v. Snapple Bev. Corp., 2000 U.S.Dist.LEXIS 8534 (S.D.N.Y. 2000) 

(unpublished) (distinguishing Brinkley).

Kay also cites Almeida v. Amazon.com, Inc., 456 F.3d 1316, 1326 (11th Cir. 2006), for 

the proposition that an alleged “innocent retailer” cannot have publicity claims brought against 

them. However, Almeida has to do with a book marketed by Amazon by simply displaying the 

cover of the book. As set forth in more detail in our opposition to Bulova’s motion for 

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summary judgment, books and advertisements for books are treated differently than “merely 

commercial” advertisements. For example, the language Bulova quotes from Maloney v. 

T3Media, Inc., 853 F.3d 1004 (9th Cir. 2017), pertains to the use of a person’s identity “in 

news reporting, commentary, entertainment, works of fiction or nonfiction, or in advertising 

that is incidental to such uses.” (MSJ at 10:26-11:1.) The use in Almeida is a use that is 

incidental advertising of a work of nonfiction, namely, a book of photographs. Here, if Bulova 

had written a book about Col. Scott, and Kay had merely sold it, there would be a different 

result.

Kay makes parenthentical reference to an article on False Advertising law and the case 

of Vassiliades v. Garfinckel’s, Brooks Bros., 492 A.2d 580, 590 (D.C. 1985) to further support 

its argument that it is “innocent.” (Kay MSJ at 7:23-8:2.) However, those to examples are 

inapposite. In the article, it is a publication, namely a newspaper, that is found not to be liable 

for advertisements. Here, Kay posted its own advertisements—on its website, and in its stores, 

and it edited the text before posting it on its website. Kay is not a newspaper. In Vassiliades, a 

department store permitted a plastic surgeon to speak on location. However, Kay is not 

providing a venue for Bulova’s speech, Kay is instead speaking on its own behalf for the 

purpose of selling watches that Kay directly profits from. If Plaintiff were suing facebook or 

instragram for Bulova’s posts, this argument would apply. But Kay is not facebook or 

Instagram, it is promoting and selling the moon watch itself.

Finally, Kay argues that it can find safe harbor under California Civil Code section 

3344(f), which immunizes “owners or employees of any medium used for advertising.” Kay is 

not the owner of any “newspapers, magazines, radio and television networks and stations, 

cable television systems, billboards, and transit ads.” Kay is in the business of sales, and it 

promotes these sales in its stores and on its website, and such uses are not protected by section 

3344(f).

Kay argues that it is “unduly burdened” by being forced to abide by Col. Scott’s 

publicity rights. But this is not so. If Kay wishes to place advertisements in the stream of 

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commerce, it must obey the law. The burden is not undue—it is the very purpose of 

California’s laws regarding publicity and privacy.

2. Defendant Kay is Liable Under the Lanham Act.

Kay contends that it is not liable under the Lanham act, on the grounds that it had no 

control over Bulova’s actions. (Kay MSJ at 10:1-7). Kay cites a single second circuit case, 

Tiffany (NJ) Inc., v. eBay, Inc., 600 F.3d 93 (2d. Cir. 2010), claiming that it cannot be held 

liable for Bulova’s copywriting, just as eBay cannot be held liable for counterfeit Tiffany 

Jewelry.

However, unlike in eBay, Kay had the option (which it took) of editing the copy that 

Bulova provided. Furthermore, eBay is distinguishable because unlike Kay, it does not ever 

take possession of the product that is alleged to have been falsely described. Furthermore, as

Kay admits in a footnote, the court in Tiffany remanded the false advertising claim against 

eBay because eBay’s conduct in advertising the fact that Tiffany jewelry was sold on eBay 

may have implied that the Tiffany goods sold on eBay were genuine. (Kay MSJ at 10 n.4.) 

Here, Kay Jewelers used Col. Scott’s name, displayed the booklet and all the false statements 

therein, and Col. Scott has presented expert testimony that this use created an association 

between Col. Scott and the Bulova “replica.” Kay was a full and willing participant in this 

matter, and as a result, obtained profits beyond those obtained by Bulova. Col. Scott is entitled 

to bring a cause of action under state and federal law to reclaim those ill-gotten gains.

3. Defendant Kay’s Contract with Bulova Does Not Abrogate Col. Scott’s Rights.

Finally, Kay argues that because Bulova is responsible for ensuring that marketing 

materials for the Bulova “replica” comply with the law, Kay Jewelers cannot be liable for 

Bulova’s actions in promoting the moon watch, even where, as here, Kay Jewelers participated 

in those actions. (Kay MSJ at 4:2-18.) However, this is incorrect as a matter of law. Col. 

Scott is not a party to the contract between Kay Jewelers and Bulova, and it is axiomatic that a 

contract between two parties does not abrogate the rights of a stranger to that contract. “It goes 

without saying that a contract cannot bind a nonparty.” EEOC v. Waffle House, Inc., 534 U.S. 

279, 294 (2002).

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V. CONCLUSION

Plaintiff has provided adequate evidence and/or legal argument to support all of the 

claims raised by Kay on summary judgment. Summary judgment should therefore be denied, 

as there are genuine disputes of fact and law with regard to all eight remaining causes of 

action.

DATED: December 28, 2017 MEZZETTI LAW FIRM, INC.

__/s/ Robert L. Mezzetti, II_________

ROBERT L. MEZZETTI, II

CERTIFICATION

I, Robert L. Mezzetti, II, am the ECF user whose ID and password are being used to file 

this Stipulation in compliance with Local Rule 5-1(i)(3). I hereby attest that the concurrence of 

the filing of this document has been obtained from each of the other signatories indicated by a 

conformed signature (/s/) within this document.

DATED: December 28, 2017 By: __/s/ Robert L. Mezzetti, II_________

 ROBERT L. MEZZETTI, II

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