Indiana Intellectual Property Law News
Indianapolis, Indiana – Attorneys for Plaintiff, Dean Potter LLC (“Potter LLC”), an Indiana limited liability company, filed suit in the Southern District of Indiana alleging that Defendants, LG Electronics USA, Inc. (“LG”), a Delaware corporation, and DOES 1 – 10, infringed its intellectual property rights, including the right of publicity. Potter LLC is seeking injunctive relief, judgment including statutory damages, and attorneys’ fees.
According to the Complaint, Potter LLC “is the exclusive owner of the name, likeness, image, right of publicity and endorsement, trademarks,
and other intellectual property rights of the late Dean Potter.” Potter LLC claims Mr. Potter was a well-known extreme sports athlete who was featured in National Geographic for his stunts including highlining, BASE jumping, and rock climbing. Mr. Potter was allegedly featured traversing a highline in the short film entitled Moonwalk, that was shot in 2011 and published by 2012. It is alleged that no one else has recreated Mr. Potter’s performance in Moonwalk and that Potter LLC is the owner of Mr. Potter’s right of publicity and common law trademark rights in the film.
Potter LLC alleges Defendants utilized footage from Moonwalk in which Mr. Potter was traversing the highline in its commercial entitled “Listen. Think. Answer.” (the “Commercial”). According to the Complaint, LG is a multi-billion dollar corporation that has previously protected and enforced its intellectual property rights, meaning it is aware of the need to obtain a license for using Mr. Potter’s right of publicity and or likeness or commercial purposes. However, Potter LLC claims it was not approached by Defendants regarding a license for the Commercial and it never authorized Defendants to use Mr. Potter’s likeness. Potter LLC further claims Mr. Potter, during his life, “rejected the corporate, commercial, and competitive worlds that sought to profit from his art without understanding it”.
Per the Complaint, Potter LLC sent a cease and desist letter to LG on December 20, 2018. LG allegedly responded on January 20, 2019 and April 11, 2019 that it had obtained a license to use the clip from the director of Moonwalk, Mikey Schaefer, and therefore denied any liability. LG allegedly provided a purported release from Mr. Potter to Mr. Schaefer, however, Potter LLC claims this release was for photographs and does not include any mention of the film, Moonwalk. Potter LLC further claims that the purported release does not allow for licenses or sublicenses, so it would not extend to third parties such as LG.
Potter LLC is seeking damages for alleged infringement of the right of publicity pursuant to Ind. Code §§ 32-36, et seq. Next, Potter LLC is suing for alleged false association and false endorsement under 15 U.S.C. § 1125(a) and 15 U.S.C. § 1117. Potter LLC is further seeking relief for alleged common law unfair competition and unjust enrichment. Pursuant to Ind. Code § 35-43-4-3, Potter LLC is seeking damages for alleged conversion. Potter LLC is suing Defendants for alleged deception as defined under Ind. Code § 35-43-5-3(a)(9). Finally, Potter LLC is suing Defendants for allegedly violating the Indiana Crime Victims’ Act, Ind. Code § 34-24-3 et seq.
LG has since filed a Motion to Transfer or, Alternatively, Dismiss this case. According to its brief in support of its Motion, LG claims this is a case of forum shopping in which Potter LLC was formed in Indiana about one month before filing its case in order to bring the case in the Southern District of Indiana. LG argues that should the Court deny the requested transfer to New Jersey, Potter LLC’s claims should each be dismissed.
For the claims of Indiana right of publicity, false association and false endorsement, common law unfair competition, and conversion, LG claims they must be dismissed as Potter LLC did not adequately plead ownership of the relevant rights. Potter LLC claims the rights of the late Dean Potter vested after his death in 2015, but Potter LLC did not exist until approximately four years later. Therefore, LG argues that could not have been true. LG further argues Potter LLC’s claim for unjust enrichment fails because Potter LLC did not provide a benefit to LG at LG’s request. Regarding the claim of deception, LG argues that Potter LLC was not deceived. Finally, LG argues the claim for a violation of the Indiana Crime Victims Relief Act fails because the underlying claims of conversion and deception are insufficient.
The case was assigned to Judge James Patrick Hanlon and Magistrate Judge Tim A. Baker in the Southern District and assigned Case 1:19-cv-04085-JPH-TAB.