* Judge Wisdom was a member of the panel that heard oral arguments, but due to his death on

May 15, 1999 did not participate in this decision. This case is being decided by a quorum. See 28

U.S.C. § 46(d) (1996). Revised July 9, 1999

IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 97-11149

WANDA KING, on behalf of Freddie King, Individually,

Plaintiff-Appellant-Cross-Appellee,

versus

ROY C. AMES, ET AL.,

Defendants,

ROY C. AMES, Individually, doing business as

Clarity Music and Home Cooking Records,

Defendant-Appellee-Cross-Appellant.

Appeal from the United States District Court

for the Northern District of Texas

July 6, 1999

Before WISDOM, STEWART, and DENNIS, Circuit Judges. *

CARL E. STEWART, Circuit Judge:

Wanda King, on behalf of Freddie King, seeks reversal of the district court’s order granting

summary judgment for Roy C. Ames on three of her six claims, and judgment as a matter of law ont wo o f the remaining three claims. Ames cross-appeals seeking judgment as a matter of law o r

remittitur as to the sixth claim. For the reasons t hat follow, we affirm the decision of the district

court in part, and reverse in part.1 Indeed, Freddy King captured the essence of most terminated relationships:

You packed up and left me/

F ACTUAL AND P ROCEDURAL B ACKGROUND

Appellant Wanda King (“King”) is the daughter of Freddie King, a deceased internationallyrecognized blues musician. Roy C. Ames (“Ames”) is a music producer doing business as Clarity

Music and Home Cooking Records. Through a series of agreements beginning in 1990 and ending

in 1994, Ames licensed Collectables [sic] Records to use three master recordings made by Freddie

King. Two were full-length compact discs, Freddie King Live! ( “Live” ) and Freddie King Live at

the Texas Opry (“Opry” ). The third was the song “Bluesband Shuffle,” also known as “Boogie on

Down” (“Bluesband Shuffle”).

Upon learning that Ames was marketing her father’s recordings, King contacted Ames for the

purpose of executing a licensing agreement. On August 17, 1993, an agreement (“1993 agreement”)

was reached between Ames an d King’s mo t her, Jessie King, the widow of Freddie King. King

contends that this agreement permitted Ames to market the Opry di s c, and to use Freddie King’s

name, likeness, and biogra phical info rmation to assist in that marketing. Ames contends that the

agreement covered all three masters in question, Opry

, Live , and “Bluesband Shuffle .”

Ames claims that he made an init ial payment of $3,000.00 to Jessie King at the same time he

sent the 1993 agreement. Ames further contends that between the initiation of the 1993 agreement

and November 2, 1994, he made additional payments to Jessie King totaling $1,500.00.

Nevertheless, on November 2, 1994, King sent Ames a letter expressing concern over the payments.

Specifically, King focused on the scope of the licensing agreement and the t imeline ss of royalty

statements and payments. In this letter, King informed Ames that she was terminating the licensing

agreement. 1And didn’t tell me the reason why.

You packed up and left me/

And didn’t tell me the reason why.

If I didn’t please you baby/

It isn’t because I didn’t try.

F REDDY K

ING

, Lonesome Whistle Blues

, on H IDE A WAY : T HE B EST OF F REDDY K ING (Rhino 1993)

(“H IDE A

WAY ”).

2 Collectibles, Inc., which conducts business as Collectables [sic] Records, is no longer a party to

this suit. On November 30, 1994, Wanda King filed copyright certificates with the Copyright Office

of the United States for Opry and Live

. Later, on March 27, 1995, King filed copyright certificates

with the copyright office for “Bluesband Shuffle.”

On September 18, 1995, Ames sent King a royalty check for $2,440.63. King cashed the

check but wrote “account against damages” on it. On December 28, 1995, King filed a complaint

on behalf of her deceased father against Ames and Collectibles, Inc. (collectively, the “defendants”). 2

Therein, she alleged violations of the Lanham Trade-Mark Act of 1946 (the “Lanham Act”), 15

U.S.C. §§ 1051-1127 (1994 & Supp. 1999); the Copyright Act of 1976 (the “Copyright Act”), 17

U.S.C. § 101, et seq . (1994 & Supp. 1999); unfair competition; negligence; misappropriation; and

breach of contract. The district court exercised federal question jurisdiction pursuant to 28 U.S.C.

§ 1331 (1994) over the Lanham Act and Copyright Act claims and supplemental jurisdiction over the

state law claims pursuant to 28 U.S.C. § 1367 (1994).

Ames filed a motion for summary judgment that the district court granted as to the Lanham

Act claim, the unfair competition claim, and the negligence claim. A jury trial was held on the

remaining three claims: copyright infringement, misappropriation, and breach of contract. The jury

found in favor of King on all t hree claims. Upon motion of Ames, the district court granted3 In what may justly be considered a blues classic, Freddie King described one possible resolution

of a strictly legal matter:

The cops took her in/

That woman didn’t need no bail.

She wiggled one time for the judge/

And the judge put the cops in jail.

F REDDY K

ING

, You’ve Got to Love Her With a Feeling , on H IDE A WAY

, supra note 1. judgment as a matter of law for the defendants on the copyright infringement and misappropriation

claims. The court ordered judgment entered for King on the only remaining claim, breach of contract.

King appeals the distri ct co urt ’s rulings granting summary judgment on the Lanham Act,

unfair competition, and negligence claims . She also appeals the district court’s order granting

judgment as a matter of law for the defendants on her copyright infringement and misappropriation

claims. Ames cross-appeals the district court’s denial of judgment as a matter of law on the breach

of contract claim and argues, in the alternative, for a reduction of damages. 3 We exercise jurisdiction

pursuant to 28 U.S.C. § 1291 (1994).

D ISCUSSION

A. Standards of Review

We review a grant of summary judgment de novo , applying the same criteria as the district

court. S ee Merritt-Campbell, Inc. v. RxP Products, Inc. , 164 F.3d 957, 961 (5th Cir.1999).

Summary judgment is appropriate if "there is no genuine issue as to any material fact and . . . t he

moving party is entitled to a judgment as a matter of law." F ED

. R. C IV

. P. 56(c); see Anderson v.

Liberty Lobby, Inc.

, 477 U.S. 242, 250 (1986). The moving party must first demonstrate that there

are no genuine issues of material fact. See 477 U.S. at 248. Once the moving party makes this

showing, the nonmovant must come forward with summary judgment evidence sufficient to establishthe existence of a genuine issue of material fact. S ee Celotex Corp. v. Catrett , 477 U.S. 317, 322

(1986); T opalian v. Ehrman

, 954 F.2d 1125, 1 131 (5t h Cir. 1992) ("The nonmovant must come

forward with evidence establishing each of the challeng ed element s of its case for which the

nonmovant will bear the burden of proof at trial.").

This court reviews a judgment as a matter of law de novo

. See Ensley v. Cod y Resources,

Inc.

, 171 F.3d 315, 319 n.4 (5 th Cir. 1999); Burch v. Coca-Cola , 119 F.3d 305, 313 (5 th Cir. 1997).

Judgment as a matter of law is proper only where "there is no legally sufficient evidentiary basis for

a reasonable jury to find for that party on that issue." F E D .R.C IV .P. 50(a)(1). We review the record

in the light most favorable to the party opposing the motion. See Burch , 119 F.3d at 313.

Finally, we review the district court’s adjudication of a subsequent motion to alter or amend

judgment pursuant to F ED

. R. C IV

. P. 59(e) for abuse of discretion. S ee E dward H. Bohlin Co., Inc.

v. Banning Co., Inc. , 6 F.3d 350, 353 (5th Cir. 1993).

B. Lanham Act and Unfair Competition

The Lanham Act imposes liability on

[a]ny person who, in connection with any goods

. . . uses in commerce any word, term, name

. . . or any false designation of origin, false or misleading de script ion of fact, or false or

misleading representation of fact, which

. . . is likely to cause confusion, or cause mistake, or

to deceive as to the affiliat ion, connection, or association of such person with another person,

or as to the origin, sponsorship, or approval of his or her goods, services or commercial

activities by another person[.]

15 U.S.C. § 112 5(a)(1)(A) (1994). Persons bringing an action pursuant to this provision must

demonstrate that (1) the defendants made false statements of fact about recordings; (2) those

statements deceived, or had the potential to deceive, a substantial segment of potential customers;

(3) the deception was material, in that it tended to influence purchasing decisions; (4) the defendants

caused their products to enter interstate commerce; and (5) the claimant has been or is likely to beinjured as a result. S ee Taquino v. Teledyne Monarch Rubber

, 893 F.2d 1488, 1500 (5 th Cir. 1990).

“Likelihood of confusion” is the essential element in both King’s Lanham Act claim and her

common law claim for unfair competition. As a result, our adjudication and analysis of the Lanham

Act claim applies to King’s unfair competition claim and we dispose of the two in tandem.

King argues that Ames made false statements on the back of the compact discs in question.

King contends that the masters are of live recordings, yet Ames has listed himself as the “producer”

of the recordings. King contends that, as there is no “producer” of a live recording, this statement

was both false and likely to cause confusion among the record-buying public. On appeal, she argues

that the “likelihood of confusion” issue does not lend itself to disposition on summary judgment. S ee

Society of Financial Examiners v. National Association of Certified Fraud Examiners, Inc. (“ SOFE ”),

41 F.3d 223, 225 (5th Cir. 1995) (holding that the likelihood of confusion in use of acronym, “CFE,”

to specify certification within two different and unrelated organizations was a que s tion of fact);

Amstar Corp. v. Domino’s Pizza, Inc.

, 615 F.2d 252, 258 (5th Cir. 1980) (recognizing that likelihood

o f co nfusio n is a question of fact). King further argues, in the alternative, that even if the district

court properly reached the issue, it erred as a matter of law.

The district court held that King had failed to offer any evidence that this alleged deception

affected a substantial segment of potential purchasers of Freddie King recordings, that it influenced

purchasing decisions or otherwise injured her. Additionally, the district court explained that the liner

notes to the recordings at issue specifically acknowledge that the recordings are of a live Freddie King

performance. According to the district court, the absence of an “actual” producer, who has suffered

as a result of this misattribution of producti on credit, prevents a finding of injury. Moreover, King’s

failure to produce evidence bearing upon the issue of injury similarly prevents such a finding.

We agree with the district court and find this court’s decision in M atrix Essenti als, Inc. v.Emporium Drug Mart , 988 F.2d 587 (5th Cir. 1993) instructive. In M atrix

, a hair care pro duct

manufacturer sought to ensure that its products were only sold in salons, and claimed that products

sol d were not genuine unless the sale was accompanied by a consultation with a hair care

professional. S ee id

. at 589. The court held that to show likelihood of confusion, the plaintiff must

show a defect in the product itself, not with the manner in which it was sold. S ee id . at 593. The

Matrix court affirmed the granting of summary judgment on the issue of likelihood of confusion. S ee

id. Consequently, we reject King’s argument that the issue of confusion may not be resolved on

summary judgment, notwithstanding certain of our cases that suggest to the contrary.

King’s reliance on SOFE and Amstar is mistaken. S OFE concerned the use of the trademark

“CFE” in certifying persons for two different professions, financial examiners and fraud examiners.

The plaint iff obtained a service registration for “CFE” four years after the defendant had begun using

the same acronym. The court found that “[o]n this record, a trier-of-fact would be entitled to decide

that ‘CFE’ was generic or to adjudge the likelihood of confusion far-fetched.” S OFE

, 41 F.3d at 226.

Similarly, in Amstar

, thi s co urt was confronted with the use of virtually identical marks for food

products. S ee Amstar

, 615 F.2d at 257. Again, this court was compelled to find summary disposition

inappropriate. See id . at 258. Here, we are not confronted with either nearly identical marks or a

similar acronym. Additionally, the record before us does not dictate the same result because it is

devoid of evidence or facts that would permit a reasonable jury to find that consumers were deceived

by the alleged misattribution of the production credit.

Furthermore, we find that the record is similarly devoid of any facts bearing upon the issue

o f injury. Like the district court before us, we cannot find any evidence to show that King, any4 King complains that she could not present evidence bearing upon the issue of injury because she

had not received an accounting. Cert ain remedies were available to her in order to secure this

information including use of Federal Rule of Civil Procedure 56, yet King did not avail herself of such

remedies. Even though we construe the facts in the light most favorable to King, we are not required

to create evidence where none exists.

5 See also W. P AGE K EETON E T A L ., P ROSSER AND K EETON ON THE L AW OF T ORTS § 92 at 656,

657 (5 th ed. 1984) (“[R]ecovery of intangible economic losses is normally determined by contract

law.”). We reject King’s reliance on K imbrough v. Coca-Cola/USA

, 521 S.W.2d 719 (Tex. Civ. producer, or any other person was injured by the alleged misattribution. 4 Accordingly, we affirm the

district court’s grant of summary judgment on the Lanham Act and unfair competition claims.

C. Negligence

King propounds that Ames did not act as a reasonably prudent record producer when he failed

to exercise proper care in ascertaining the scope of his rights to the recordings and in accounting for

the royalties owed to King. The district court granted summary judgment for Ames on t his issue

after it found that the negligence claim was based on Ames’s failure to remain within the scope and

terms of the 1993 agreement. Accordingly, the district court found that the only duty Ames may have

breache d was created by contract. On appeal, we must likewise determine whether King’s

negligence claim is one sounding in tort or in contract.

Again, we agree with the district court. Ames did not owe King a duty to act as a reasonably

prudent record producer until he entered into the licensing agreement with King. His duty, therefore,

was created solely by contract, and King’s recovery in that regard is limit ed to her action for breach

of contract. Applying state law, we turn to the Texas Supreme Court’s decision in S outhwestern Bell

Telephone Co. v. DeLanney

, 809 S.W.2d 493 (Tex. 1991). In D eLanney

, the Texas Supreme Court

held that, to rec o ver in tort, a plaintiff must demonstrate liability independent of the fact that a

contract exists between the parties. S ee id

. at 494. As the only liability in the case at bar arises from

the contract itself, there can be no tort liability and the negligence claim must fail. 5App.1975, writ ref’d n.r.e.). In K imbrough

, the court recognized that a party may bring an action

for the unauthorized appropriation or exploitation of his name or likeness. S ee id

. at 722. Unlike the

case before us, the Kimbrough court was not confronted with an express written contract between

the parties. We find K

imbrough m

o re instructive in those instances where the parties have not

entered into a formal agreement. D. Copyright Infringement

The district court granted judgment as a matter of law for Ames on King’s claim of copyright

infringement in violation of the Copy right Act . The district court found that while there was

sufficient evidence for a jury t o believe that King owned the copyright, there was no evidence of

copying.

As we explained in E ngineering Dynamics, Inc. v. Structural Software, Inc.

, 26 F.3d 1335

(5t h Cir. 1994), as a factual matter, copying usually may be inferred from proof of access to t he

copyrighted work and probative similarit y. S ee id . at 1340-41. Yet not all copying is legally

actionable as a copyright infringement. See id

. The party bringing the copyright claim must prove

substantial similarit y. S ee id

. Consequently, we must determine whether King produced sufficient

evidence of substantial similarit y between the works copyrighted and the works in question in order

to permit a reasonable jury to find in her favor.

We agree with the district court that she did not. Our decision in C reations Unlim ited v.

McCain

, 112 F.3d 814 (5 th Cir. 1997), is controlling. To determine whether an instance of copying

is legally actionable, a side-by-side comparison must be made between the original and the copy to

assess whether the two works are substantially similar. S ee id

. at 816. While a determin ation of

substantial similarit

y should typic ally be left to the fact-finder, the C reations Unlimit ed decision

contemplates that a fact-finder will have the opportuni ty to view the two works side-by-side. Indeed,

as our sister circuit has found, copying is an issue to be determined by comparison of works, not

credibility. S ee Folio Impressions, Inc. v. Byers California

, 937 F.2d 759, 766 (2nd Cir. 1991).6 Perhaps King’s wo rk ethic in managing the affairs of her father’s estate is derived from her

father’s experiences:

She wakes me in the morn’in/

Before the break of day/

Telling me to get up and go out/

And earn myself some pay.

F REDDY K

ING

, I Love the Woman , on H IDE A WAY

, supra note 1. King’s failure to adduce evidence for such a comparison vitiates her claim.

Notwithstanding King’s arguments to the contrary, judgment as a matter of law was

appropriate on this issue.

E. Misappropriation

The defendants moved for summary judgment on King’s claim of misappropriation of Freddie

King’s name and likeness. The district court denied the motion. At trial, the jury found for King and

awarded $27,000.00 in damages. Nevertheless, the district court granted the defendants’ motion for

judgment as a matter of law. The district court found that King did not adduce competent evidence

at trial to support any recovery on this claim.

In genera l, “an o wner is competent to give his opinion on the value of his property.”

Kestenbaum v. Falstaff Brewing Corporati on

, 514 F.2d 690, 698-99 (5th Cir. 1975). However, such

testimony cannot be based on naked conjecture or solely speculative factors. C f. Dietz v.

Consolidated Oil & Gas, Inc. , 643 F.2d 1088, 1094 (5th Cir. 1981) (approving owner’s testimony

on the value of his crops given his personal knowledge and articulated basis for determining value).

King sought to establish the value of damages resulting from Ames’s misappropriation. Early

in her testimony, King explained that she had info rmally conducted business on behalf of the heirs of

Freddie King and the Freddie King estate for over ten years. 6 King testified that she was familiar with7 O n the issue of King’s experience in negotiating different transactions, the cross-exam ination

challenges the methodology by which King determined the amount in damages. However, the crossexamination falls short insofar as it does not rebut the values assigned to the sale of T-shirts. the commercial va lue o f her father’s name and likeness because of her prior involvement in

negotiations to market that name and likeness on T-shirts. Nothing in the record appears to rebut this

testimony. 7 Based on this experience, she determined that Ames’s misappropriation amounted to

$25,000.00 in damages. The jury awarded King $27,000.00 in damages. Nevertheless, the district

court dismissed Wanda King’s testimony because (1) it was based on “unrelated transactions” and

(2) King failed to offer any “factual basis” for the amount claimed.

There is no specific formula King could have used in the alternative to show the value of an

intangible property interest such as name and likeness. See Zim v. W. Publ’g Co.

, 573 F.2d 1318,

1327 n.19 (5th Cir. 197 8). A Freddie King T-shirt, unlike a recording, would sell almost solely

according to the value of Freddie King’s name and likeness in addition to the minimal value of the

T-shirt itself. Because the image was her father’s and she had engaged in some limited transactions

invo lving the marketing of her father’s name and likeness, we cannot say that King’s testimony was

based on naked conjecture and speculation. As no t ed by the district court, like “goodwill” in a

business, one’s name and likeness is an intangible property interest which is not susceptible of proof

with mathematical exactitude. S ee Z im

, 573 F.2d at 1327 n. 19. Considering the evidence in the

light most favorable to the jury’s verdict and the intangible nature of the property interest, we find

the testimony of Wanda King sufficient. Accordingly, we reverse the district court on this issue.

F. Breach of Contract

The jury found for King on the breach of contract claim and awarded $11,375.00 in damages.8 In the alternative, Ames requests a remittitur. We may grant a remittitur if the award of damages

is excessive, and a new trial on damages alone if the plaint iff declines the remitted award. S ee Eiland

v. Westinghouse Electric Corporati on

, 58 F.3d 176, 182 (5 th Cir. 1995). While there is a strong

presumption in favor of affirming jury awards of damages, a damage award may be overturned upon

a clear showing of excessiveness or upon a showing that the jury was influen ced by passion or

prejudice. S ee id

. (citing Westbrook v. General Tire and Rubber Co.

, 754 F.2d 1233, 1241 (5 th Cir.

1985)). Like the decision to alter or amend judgment, the trial court’s decision to grant or deny a

remittitur rests within the sound discretion of the tri al j udge. S ee id

. We review for abuse of

discretion and find none in the case at bar. Ames appeals the district court’s denial of its subsequent motion to alter or amend judgment pursuant

to F E D

. R. C IV

. P. 59(e). Again, we review for abuse of discretion. See E dward H. Bohlin Co.,

Inc. , 6 F.3d at 350.

Notwithstanding Ames’s arguments t o t he contrary , we cannot find that the district court

abused its discretion in denying Ames’s motion to alter or amend judgment. 8 Based on the volume

of evidence presented at trial, the reasonable inferences which may be drawn from the evidence, and

the high standard for overturning a jury’s verdict and damages award, the jury’s award of $11,375.00

must stand.

C ONCLUSION

For the reasons ascribed, we AFFIRM in part, and REVERSE in part.