The opinion of the court was delivered by: Hon. Jane Magnus-Stinson, Judge United States District Court Southern District of Indiana
Presently before the Court is Defendant Electronic Arts, Inc.'s ("EA"), motion for judgment on the pleadings. [Dkt. 89.]
"After the pleadings are closed.a party may move for judgment on the pleadings." Fed. R. Civ. Pro. 12(c). Where, as here, a motion for judgment on the pleadings attacks the sufficiency of the complaint, the motion "is subject to the same standard as a motion for dismissal for failure to state a claim [under Rule 12(b)(6)]." Thomason v. Nachtrieb, 888 F.2d 1202, 1204 (7th Cir. 1989). Under that standard, "a complaint must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face. A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) (quotation and citation omitted).
When evaluating the plausibility of the plaintiff's claim, the plaintiff "receives the benefit of reasonable inferences" that arise from the well-pleaded allegations. Pirelli Armstrong Tire Corp. Retiree Med. Benefits Trust v. Walgreen Co., 631 F.3d 436, 447 (7th Cir. 2011) (citation omitted). Denials in the answer don't count, nor does an assertion of an affirmative defense, un- less the plaintiff's own allegations establishes it, see Cancer Found., Inc. v. Cerberus Capital Mgmt., LP, 559 F.3d 671, 674-675 (7th Cir. 2009) ("Dismissing a complaint as untimely at the pleading stage is an unusual step, since a complaint need not anticipate and overcome affirmative defenses, such as the statute of limitations. But dismissal is appropriate when the plaintiff pleads himself out of court by alleging facts sufficient to establish the complaint's tardiness." (citation omitted)).
II. ALLEGATIONS IN THE COMPLAINT
As many people know, John Dillinger was a notorious Indiana gangster who terrorized the Midwest for several years, until he was gunned down by the F.B.I. in a Chicago firefight, in 1934. [See dkt. 63 at 1.]
Through the Complaint, Plaintiff Dillinger, L.L.C., alleges that it has registered two U.S. trademarks for "John Dillinger." [Dkt. 1 ¶15.] And thanks to a relatively recent Indiana statute, which recognized a descendible right of publicity, the Plaintiff also claims the right to control Mr. Dillinger's "personality" rights for commercial purposes-that is, his "name, voice, signature, photograph, image, likeness, distinctive appearance, gestures, [and] mannerisms." [Id. ¶12.] It claims to have acquired those publicity rights by assignment from the heirs of Mr. Dil-linger, who died intestate. [See id. ¶14; dkt. 99 at 6 n.4.]
The Plaintiff has sued EA for including unauthorized references to John Dillinger in its series of videogames based upon The Godfather novel and subsequent film series. [Dkt. 1 ¶¶17-18.] The references occur in the form of the names of two types of weapons that players can use to facilitate their own virtual crime spree as a mob boss. One is the "Dillinger Level Three Tommy Gun", which players can earn at no extra cost through game play. [Id. ¶19.]
Additionally, players of one particular iteration of the videogame series, "The Godfather II," can purchase upgraded weapons over the internet to enhance their effectiveness as virtual mob bosses. [See id. ¶22.] The Complaint includes a screenshot of an online store operated by either of two third parties, where users could buy various weapons upgrades for the game. One upgrade was the "Level 4 Firearms" pack, which retailed for $4.00. [Id.] It was described on the third-party websites in part as follows: "These five firearms are exactly what a Don needs to put his family on top! Each weapon can be equipped by you and your family. This collection includes the Modern Dillinger [Tommy Gun]...." [Id.]
The Plaintiff alleges that by continuing to include the Dillinger Level Three and Modern Dillinger in its "The Godfather" games, EA has continued to knowingly and willingly violate the Plaintiff's trademark in John Dillinger and its control over Mr. Dillinger's personality rights, despite being put on notice of the Plaintiff's objections. [Id. ¶¶ 26-27.]
The Plaintiff has raised six causes of action against EA, each of which stems from the references to the "Dillinger" weapons in EA's videogames. Count I accuses EA of violating Indiana's right-of-publicity statute, Ind. Code §§ 32-36-1-1 et seq. Count II says that EA has committed unjust enrichment. Counts III and V, which the parties treat together and so will the Court, accuse EA of trademark infringement. Count IV alleges unfair competition. Finally, Count VI raises a claim under Indiana's Crime Victim Act (the "ICVA"), Ind. Code § 34-24-3-1.
A.Count I: Right-of-Publicity Statute
In 1994, about sixty years after John Dillinger died, the Indiana General Assembly enacted the right-of-publicity statute. As is relevant here, it partially changed the common-law rule that "[w]hat a man does while alive becomes a part of history which survives his death" and is subject to "[c]omment, fictionalization and even distortion" after his death, Maritote v. Desilu Productions, Inc., 345 F.2d 418, 420 (7th Cir. 1965). The Indiana General Assembly decreed that "[a] person may not use an aspect of a personality's right of publicity [including the person's name] for a commercial purpose during the personality's lifetime or for one hundred (100) years after the date of the personality's death without having obtained previous written consent from a person" vested with control of the personality's right to publicity. Ind. Code § 32-36-1-8(a).
Of the bases on which EA relies to challenge the right-of-publicity claim, its statute-of-limitations argument is the easiest to resolve here. Relying only on a statement in the Plaintiff's response brief-rather than the allegations of the Complaint itself-EA argues that the Plaintiff has conceded missing the two-year statute of limitations governing the claim, [dkt. 101 at 11 (arguing that the Plaintiff claimed misappropriation first accrued in 2006 but did not file suit until 2009)]. By surreply, the Plaintiff argues (among other things) that the continued sales of the games makes its right-of-publicity claim a "continuing wrong," such that the statute of limitations is tolled until the sales stop, see Yoost v. Zalcberg, 925 N.E.2d 763, 771 (Ind. Ct. App. 2010) ("The doctrine of continuing wrong applies where an entire course of conduct combines to produce an injury. When the doctrine attaches, the statute of limitations begins to run at the end of the continuing wrongful act." (citations omitted)). Because of the briefing posture, however, EA hasn't had a chance yet to respond to the Plaintiff's legal authority presented via surreply, thus depriving the Court of the benefit of adversarial presentation. Rather than permit additional briefing, the Court will apply the general rule that a statute-of-limitations argument should be raised via a motion for summary judgment, especially because EA's argument doesn't actually depend on the allegations in any of the Plaintiff's pleadings, see Fed. R. Civ. Pro. 7(a) (not including briefs in the list of recognized pleadings). Accordingly, to the extent that EA seeks a dismissal on statute-of-limitations grounds on this first count of the Complaint (or any other), the Court denies the motion without prejudice.
EA makes two other arguments against the right-of-publicity claim, which are both properly raised through a motion for judgment on the pleadings: that the statute doesn't apply to personalities who died before the statute was enacted and, even if it did, that the "literary works" exception included in the statute covers videogames, Ind. Code § 32-36-1-1(c)(1)(A) (exempting "[l]iterary works, theatrical works, musical compositions, film, radio, or television programs"). As this Court possesses only supplemental jurisdiction over Count I,*fn1 the Court must predict how the Indiana Supreme Court "would decide the case, and decide it the same way." Mindgames, Inc. v. W. Publ'g Co., 218 F.3d 652, 655 (7th Cir. 2000) (citations omitted). The Indiana Supreme Court, however, hasn't ever had occasion to consider either issue, nor has the Indiana Court of Appeals, whose decisions are good indicators of what the state supreme court would decide, Pisciotta v. Old Nat'l Bancorp, 499 F.3d 629, 635 (7th Cir. 2007).*fn2 The Court must, therefore, base its decisions on whatever authority is available. See id.
1.Whether the Statute Applies to Personalities Who Died Before 1994
In support of its claim that the right-of-publicity statute doesn't apply to personalities like John Dillinger who died before the statute's enactment, EA directs the Court to Shaw Family Archives, Ltd. v. CMG Worldwide, Inc., 486 F. Supp. 2d 309 (S.D.N.Y. 2007). In that case, the court rejected an attempt by an entity claiming to have obtained, via will, Marilyn Monroe's right of publicity. The court reasoned that because publicity rights terminated at death at common law, Ms. Monroe's death before the Indiana statute was enacted meant that she lacked any publicity right to devise in her will. Id. at 314 ("Thus, at the time of her death in 1962 Ms. Monroe did not have any post-mortem right of publicity under the law of any relevant state [including Indiana]. As a result, any publicity rights she enjoyed during her lifetime were extinguished at her death by operation of law.").
The Plaintiff counters EA's authority with non-precedential authority of its own: a decision of an Indiana trial court that found liability where the Lake County Convention Center referred to "Dillinger" in its tourism advertisements and ran a "Dillinger" museum. The trial court there held that "[t]he Indiana Right of Publicity Statute should.be read retroactively" so as to also protect the publicity rights of the individuals who died before its enactment, including John Dillinger. Scalf v. Lake County Convention & Visitors Bureau, Inc., 45D10-0406-PL-00093 (Lake Super. Ct. Jan. 9, 2006) available at [dkt. 100-2]. In reaching its holding, the court relied upon several statutory provisions, which it concluded made clear the General Assembly's intent. The statute defines a "personality" as "a living or deceased natural person" who has attributes with "commercial value, whether or not the person uses or authorizes the use of the person's right of publicity for a commercial purpose during the person's lifetime," Ind. Code § 32-36-1-6. The publicity rights endure for 100 years following the personality's death. Ind. Code § 32-36-1-8. And publicity rights now constitute property, "freely transferable and descendible," including by will and intestate succession. Ind. Code § 32-36-1-16.
After reviewing the pair of decisions that the parties have cited, the
Court finds that the Indiana Supreme Court would agree with Shaw:
Indiana's right-of-publicity statute doesn't ap-
ply to personalities who died before its enactment. The statutory
provisions, individually and collectively, that Scalf cited are
ambiguous; they can be read equally to protect personalities who live
and die after the statute's 1994 enactment, as they can be read to
protect those who have ever lived. Providing causes of action for the
heirs of the millions of people who died between 1894 and 1994-i.e.
during the 100 year post-death period of protection-would greatly
expand the potential liabilities that the statute creates.*fn3
At present, given the existence of a reasonable alternative
reading of the statute, the Court must presume that the Indiana
Supreme Court would not endorse such a result but would instead adopt
the narrower reading. See Todd v. Societe BIC, S.A., 21 F.3d 1402,
1412 (7th Cir. 1994) (en banc) ("When given a choice between an
interpretation of [state] law which reasonably restricts liability,
and one which greatly expands liability, we should choose the narrower
and more reasonable path (at least until the [state supreme court]
tells us differently)".).*fn4
The Court also rejects Scalf for another reason insofar as it recognizes publicity rights of individuals who died before 1994: The decision permits inheritances outside of probate, despite the important functions that probate serves. First, Indiana levies an inheritance tax on the property that is transferred (among other ways) "under a deceased transferor's will or under the laws of intestate succession, as a result of the transferor's death." Ind. Code § 6-4.1-2-4(a)(1). Recognizing new property after probate has concluded would frustrate Indiana's ability to collect the tax, unless claimants of that property submit to probate. See Ind. Code § 6-4.1-4-1 (requiring personal representative to file an inheritance tax return in the probate court within nine months of the decedent's death). Second, probate also ensures that creditors who have claims against the decedent are paid-which in Mr. Dillinger's case might include the victims of his numerous crimes and possible unpaid criminal fines. See Ind. Code § 29-1-7-7.5 (requiring personal representatives to notify creditors of probate); § 29-1-17-2(a) (requiring taxes and claims to be paid before distributions to heirs or beneficiaries). Finally, probate conclusively determines the heirs (or, in the case of a will, the beneficiaries) who receive the decedent's remaining property, once all claims have been paid.
With respect to the last reason, the Court notes that the parties here disagree about the chain of intestate succession for Mr. Dillinger. [Compare dkt. 154 ¶6, with dkt. 168 at 10.] Which version of the Probate Code governs intestate succession: the one in force when Mr. Dil-linger died or the one when the General Assembly created the right-of-publicity? Compare Ind. Code § 6-2303 (1933) (repealed),*fn5 with Ind. Code § 29-1-2-1(d)(3).*fn6 The answer could bear on whether Plaintiff's claimed ownership interest is sufficient to otherwise control the publicity rights. But a probate court-not a federal one-is the appropriate forum to resolve those questions. Cf. Marshall v. Marshall, 547 U.S. 293 (2006) (narrowing the "probate exception" to federal jurisdiction while reaffirming the principle that probate is normally a matter for state courts).
So whether or not the statute applies retroactively, absent an allegation that probate has been re-opened to permit the just administration of the new property recognized by the General Assembly through the right-of-publicity statute, the Complaint fails to state a claim. See Ind. Code § 29-1-17-14 (permitting closed estates to be reopened to supervise the distribution of after discovered property). Cf. also Estate of Ellington v. Gibson Piano Ventures, Inc., 2005 U.S. Dist. LEXIS 21003, *34 (S.D. Ind. 2005) (finding issues of fact existed regarding a right-of-publicity claim by the Estate of Duke Ellington, who died in 1974, although not specifically addressing the "retroactivity" issue).*fn7 No such allegation appears here.
Because the Plaintiff seeks to enforce publicity rights of John Dillinger, who died in 1934, well before the enactment of the right-of-publicity statute, the Plaintiff has failed to state a claim under that statute. Even if the statute could protect other personalities who died before its enactment, the Complaint nonetheless impermissibly fails to allege that the purported ...