Florida’s Unauthorized Use of Likeness Law and Lanham Act (Federal Trademark Law) Claims

Bosem brought an action for injunctive relief, fraud, false advertising, and compensatory damages against Musa Holdings, Inc. for Musa’s alleged unauthorized use of Bosem’s image or likeness and for violation of the Lanham Act, 15 U.S.C. § 1125. The trial court entered an order granting Bosem’s motion for partial summary judgment, holding that Musa’s use of Bosem’s name, likeness and biography was unauthorized and in violation of section 540.08, Florida Statutes, and the Lanham Act. See the Florida Supreme Court case, Bosem v. Musa Holdings Inc., 2010 Fla. LEXIS 1612, 35 Fla. L. Weekly S 515, Case No. SC 09-1277 (Fla. Sept. 23, 2010) (available here).  The Lanham Act (the Federal Trademark Act), prohibits false association and false advertising.  15 U.S.C. Section 1125(a), Lanham Act Section 43(a).

The only issue before the Florida Supreme Court was whether Bosem was entitled to pre-judgment interest on lost profits where the amount of damages was determined by the trial judge in the final judgment.

Bosem argued that Musa’s unauthorized use of his image resulted in lost profits because he was forced to reduce the price of his LASIK eye surgery procedure in order to retain patients who had seen Musa’s advertisements in which Musa claimed Bosem would perform the same surgery for less at its centers.  Slip opn. Pg. 2.  Florida’s Supreme Court found that “In all cases, either of tort or contract, where the loss is wholly pecuniary, and may be fixed as of a definite time, interest should be allowed as a matter of right, whether the loss is liquidated or unliquidated.” Slip opn. Pg. 8, quoting William B. Hale, The Law of Damages, § 67 (2d ed. 1912).

The interesting point in this case, not subject to appellate review (the parties only appealed the prejudgment interest issue), was that Dr. Bosem sued for fraud, false advertising, and compensatory damages and the trial court ruled, on a motion for partial summary judgment, that Musa’s use of Bosem’s name, likeness and biography was unauthorized and in violation of section 540.08, Florida Statutes, and the Lanham Act Section 43(a), 15 U.S.C. Section 1125(a). “Bosem argued below [in the lower appellate court], in part, that Musa’s unauthorized use of his image resulted in lost profits because he was forced to reduce the price of his LASIK eye surgery procedure in order to retain patients who had seen Musa’s advertisements in which Musa claimed Bosem would perform the same surgery for less at its centers.”  Slip opn. Pg. 2.

In an earlier posting regarding Stayart v. Yahoo! Inc., Case No. 09-3379 (7th Cir. Sept. 30, 2010), entitled “Protecting Your Name and Reputation In Federal Court – No Remedy Under Trademark Law,” the federal 7th Circuit Court of Appeals held that § 43 of the Lanham Act [the Federal Trademark Act] “is a private remedy for a commercial plaintiff who meets the burden of proving that its commercial interests have been harmed by a competitor.” Stayart, slip opn. P. 5.  The non-appealed summary judgment decision in Bosem v. Musa Holdings Inc. shows that Lanham Act actions in Florida, asserting unauthorized use of a person’s likeness, are viable causes of action under the Lanham Act.

Jurisdiction for Lanham Act violations is concurrent with both State and Federal courts.  “State and federal courts are expressly given concurrent jurisdiction over claims involving infringement of a federally registered trademark. 28 U.S.C. § 1338(a).” Dunlap v. G&L Holding Group, Inc., 381 F.3d 1285, 1292, ftnt 11 (11th Cir. 2004); Aquatherm Indus. v. Florida Power & Light Co., 84 F.3d 1388, 1394 (11th Cir. 1996)(“Federal courts do not have exclusive jurisdiction over an action brought under the Lanham Act. 28 U.S.C. § 1338(a) (1994); 15 U.S.C. § 1121 (1994). Therefore, Aquatherm could have litigated its Lanham Act claim while in state court, but chose not to do so.”).

In conclusion, Florida plaintiffs should carefully analyze their claims for unauthorized use of plaintiff’s image or plaintiff’s name in selecting the forum in which to bring suit.  Lanham Act claims are viable in State as well as Federal courts in Florida.  Florida state court actions may be a more favorable forum in light of the Bosem decision notwithstanding that the appellate court decision did not address the Lanham Act issue directly.

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