LOS ANGELES—In a ruling issued yesterday, U.S. District Court Judge A. Howard Matz has denied a Motion for Summary Judgment filed by Flynt Media Corporation, which is owned by Larry Flynt's nephews, Dustin Flynt and Jimmy Flynt II.
At issue was the defendants' claim that Larry Flynt, the primary plaintiff in the case of Larry Flynt, et al v. Flynt Media Corporation, et al, has never used either his full name or simply "Flynt" as a trademark, and that therefore, he should not be allowed to claim trademark rights to either name, and that the counts of the complaint in which Larry Flynt charges that the nephews have violated his right to publicity by using the Flynt name should be dismissed from the case. Judge Matz denied both causes of action.
The judge began his ruling by noting that the plaintiffs indeed own three federally registered trademarks that incorporate Larry Flynt's name: Larry Flynt's Bar & Grill; Larry Flynt's Grand Slam of Poker and Larry Flynt's Poker Challenge Cup. He also noted that there is currently an application with the Patent and Trademark Office for a registered trademark on "Larry Flynt," which was filed on January 9, 2009 and accepted for publication by the Office on May 26, 2009.
Therefore, the judge reasoned, the fact that neither "Larry Flynt" nor "Flynt" have been used as trademarks by the plaintiffs doesn't mean that the defendants necessarily should be allowed to use them—and particularly the name "Flynt," which the defendants have used in the advertising for their new DVD line—simply on the basis that a registered trademark on them did not exist.
"Defendants erroneously assume that because Plaintiffs have never used 'FLYNT' or 'LARRY FLYNT' as stand-alone phrases, Plaintiffs can have no claim to them under trademark law," the judge wrote. "The standard for determining whether an element of a composite mark qualifies for separate trademark protection is whether it 'create[s] a commercial impression separate and apart from other material appearing with it.'"
"Defendants have not carried their burden of showing there is no genuine dispute as to whether the Plaintiffs' uses of 'LARRY FLYNT' and 'FLYNT' in combination with other material create a commercial impression separate and apart from the other material," he continued. "Defendants argue that the use of Larry Flynt's name in 'LARRY FLYNT'S PRIVATE COLLECTION,' 'Powered by Larry Flynt,' and the other references consists of nothing more than an endorsement of the product and do not provide a separate consumer impression. In contrast, Plaintiffs argue that the fact that 'LARRY FLYNT' is set off in font size and style and background color from the rest of the labels in each instance creates a commercial impression separate from the other material."
Therefore, the judge ruled, there exists enough of a dispute over the past use of the Flynt name as a trademark that the issue should be preserved for the trial of the case rather than be settled by a summary judgment motion.
The judge then took up the issue of whether Dustin and Jimmy Flynt II could legitimately use the "Flynt" name in their business dealings simply because "Flynt" is indeed both defendants' surname. However, the judge found that the name "Flynt" is so intimately associated with Larry Flynt, and that the defendants apparently acknowledged that link when they used the advertising slogan for their DVD line, "You Know The Name, You Know The Game, that Larry Flynt's "right of publicity" to use his own name could be affected.
"Despite knowing that they share the surname of Plaintiff, Defendants have used Plaintiff’s name on their adult DVD products," Judge Matz ruled. "Given Larry Flynt’s fame and Defendants' use of the slogan 'YOU KNOW THE NAME' in promoting their products, a jury could reasonably find that Defendants' use of 'FLYNT' was a knowing use of Plaintiff's name, or a use of his identity. Therefore, these claims are not suitable for resolution on summary judgment, and Defendants’ motion as to these counts must be denied."
What that means is that both the trademark and the right of publicity issues will be taken up at the trial of the case, which is currently scheduled to begin on December 8, 2009, with a pretrial conference scheduled for November 23, when the court will take up the Motions in Limine—motions to exclude certain evidence of arguments from being presented to the jury.
Attorney Dan DeCarlo, who represents Dustin and Jimmy Flynt II, as well as their corporation, was disappointed with the judge's ruling.
"We respect the Court's opinion, but this is merely a summary judgment motion where the judge expressly indicated that these are jury questions and we look forward to the jury making its decisions," DeCarlo told AVN. "Our clients believe that they have a right to use their own name. That is essentially what this case is about, namely. We believe that even though Larry Flynt is famous, Dustin and Jimmy Flynt, who have been in this business their entire adult lives, should be able to use their last name."