Counterclaim in Drake v. Hebrew Hustle, Inc.

Case 1:14-cv-02703-WHP Document 283 Filed 11/28/18 Page 1 of 31
UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
ESTATE OF JAMES OSCAR SMITH and

HEBREW HUSTLE INC., Case No. 14 CV 2703 (WHP) (RLE)
Plaintiffs,
v.
CASH MONEY RECORDS, INC., et al.,
Defendants.
AUBREY DRAKE GRAHAM,
Counterclaim Plaintiff,
v.
HEBREW HUSTLE INC.,
Counterclaim Defendant,
and
STEPHEN HACKER,
Additional Counterclaim Defendant.
COUNTERCLAIM PLAINTIFF’S PRETRIAL MEMORANDUM OF LAW
10545285.1
TABLE OF CONTENTS
PRELIMINARY STATEMENT .................................................................................................... ii
STATEMENT OF FACTS ............................................................................................................. 2
I. UNDISPUTED FACTS ...................................................................................................... 2
II. PROCEDURAL BACKGROUND..................................................................................... 3

A. Counterclaim Defendants’ Meritless Copyright Infringement Claim .................... 3
B. The Counterclaims at Issue and Court’s Findings .................................................. 4
ARGUMENT .................................................................................................................................. 5
I. CHOICE OF LAW ............................................................................................................. 5

A. Graham’s Domicile Is an Issue for This Court, and Not the Jury, to Decide ......... 5
B. California’s Substantive Law Applies to Graham’s Counterclaims ....................... 6
II. GRAHAM WILL PREVAIL ON HIS RIGHT OF PUBLICITY CLAIMS ...................... 7

A. Graham Will Establish the Elements of His Common Law Right of Publicity
Claim ....................................................................................................................... 7
1. Counterclaim Defendants Used Graham’s Name and Image for their
Commercial Advantage .............................................................................. 8
2. Graham Has Been Injured By Counterclaim Defendants’
Misappropriation ......................................................................................... 9
B. Graham Will Establish the Elements Of His Claim Under Cal. Civ. Code. §
3344....................................................................................................................... 10
1. Counterclaim Defendants Knowingly Used Graham’s Name and
Image On The Website ............................................................................. 10
2. There Is A Direct Connection Between The Use Of Graham’s Name
and Image And Counterclaim Defendants’ Commercial Purpose ............ 11
3. Graham’s Claims Are Not Barred by Cal. Civ. Code § 3344(d) .............. 12
C. The Incidental Use Doctrine is Inapplicable ......................................................... 13
III. GRAHAM WILL PREVAIL ON HIS FALSE ENDORSEMENT CLAIM .................... 15

A. Counterclaim Defendants’ False or Misleading Representation of Fact Is
Likely to Cause Confusion.................................................................................... 15
B. Nominative Fair Use Is Inapplicable .................................................................... 18
IV. UNFAIR COMPETITION................................................................................................ 21
V. REMEDIES....................................................................................................................... 22
A. Graham will be entitled to actual damages ........................................................... 22
1. Commercial value ..................................................................................... 22
2. Mental Distress ......................................................................................... 23
B. Graham will be entitled to punitive damages ....................................................... 24
10545285.1 i
TABLE OF AUTHORITIES
Page(s)
CASES
Abdul-Jabbar v. GMC,
85 F.3d 407, 413-14 (9th Cir. 1996) ..............................................................................8, 10, 23
Acad. Of Mot. Picture Art & Sci v. Creative House Promotions, Inc.,
944 F.2d 1446 (9th Cir. 1991) .................................................................................................22
Allen v. National Video, Inc.,

610 F. Supp. 612, 626 (S.D.N.Y. 1985).................................................................15, 16, 17, 18
Beastie Boys v. Monster Energy Co.,

66 F. Supp. 3d 424, 447 (S.D.N.Y. 2014) ...................................................................15, 19, 22
Bruce Lee Enters., LLC v. A.V.E.L.A., Inc.,

No. 10 CV 2333(KMW), 2013 WL 822173, at *19 (S.D.N.Y. Mar. 6, 2013) ........................16
Cairns v. Franklin Mint Co.,

292 F.3d 1139 (9th Cir. 2002) .................................................................................................20
Cel-Tech Comm’ns, Inc. v. Los Angeles Cell. Tele. Co.,

83 Cal. Rptry. 2d 548, 560 (Ca. 1999) .....................................................................................21
Cf. Pirone v. MacMillan, Inc.,

894 F. 2d 579, 585 (2d Cir. 1990)............................................................................................18
Chance v. E.I. Du Pont De Nemours & Co., Inc.,

57 F.R.D. 165, 168 (E.D.N.Y. 1972) .........................................................................................5
Clark v. Am. Online, Inc.,

2000 WL 33535712 (C.D. Ca. Nov. 30, 2000) ........................................................................22
Coty Inc. v. Excell Brands, LLC,

277 F. Supp. 3d 425 (S.D.N.Y. 2017)................................................................................20, 21
Davis v. Elec. Arts Inc.,

No. 10-03328 RS, 2012 WL 3860819, at *9 (N.D. Cal. Mar. 29, 2012) ...........................12, 13
DiLaura v. Power Authority of State of N.Y.,

982 F.2d 73, 76 (2d Cir. 1992)...............................................................................................5, 7
Dr. Seuss Enters., L.P. v. ComicMix LLC,

300 F. Supp. 3d 1073 (S.D. Cal. 2017) ....................................................................................20
10545285.1 ii
(continued)
Page(s)
Eastwood v. Superior Court,

149 Cal. App. 3d 409 (1983) ...........................................................................................8, 9, 12
Estate of Smith v. Cash Money Records, Inc.,

253 F. Supp. 3d 737 (S.D.N.Y. 2017)....................................................................................1, 4
Fairfield v. Am. Photocopy Equip. Co.,

138 Cal. App. 2d 82 (1955) .......................................................................................................8
Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc.,

778 F.3d 1059 (9th Cir. 2015) ...................................................................................................8
Fraley v. Facebook, Inc.,

830 F. Supp. 2d 785 (N.D. Cal. 2011) ..............................................................................13, 21
Hatfill v. Foster,
415 F. Supp. 2d 353 (S.D.N.Y. 2006)........................................................................................6
Hoffman v. Capital Cities/ABC, Inc.,

33 F. Supp. 2d 867 (C.D. Ca. 1999), rev. on other grounds, 255 F.3d 1180
(9th Cir. 2001) ..........................................................................................................................22
Int’l Info. Sys. Sec. Certification Consortium, Inc. v. Security Univ., LLC,
823 F.3d 153 (2d Cir. 2016).....................................................................................................19
Jackson v. Odenat,
9 F. Supp. 3d 342 (S.D.N.Y. 2014) .............................................................................16, 17, 18
Kelly v. Primco Mgmt., Inc.

2015 WL 10990368 (C.D. Ca. Jan. 12, 2015) .........................................................................21
Laufer v. Hauge,
140 A.D.2d 671 (2d Dep’t 1988) ...............................................................................................5
Levine v. Philip Morris Inc.,

No. 102765/1998, 2004 WL 2334287 (N.Y. Sup. Ct. 2004) .....................................................6
Lightbourne v. Printroom, Inc.,

No. SACV 13-876-JLS, 2014 WL 12597108 (C.D Cal. Sept. 8, 2014) ..................................12
Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co.,

799 F.2d 867 (2d Cir. 1986).....................................................................................................17
10545285.1 iii
(continued)
Page(s)
Motschenbacher v. R. J. Reynolds Tobacco Co.,

498 F.2d 821 (9th Cir. 1974) .....................................................................................................9
Nader v. General Motors Corp.,

298 N.Y.S.2d 137 (N.Y. App. Div. 1969) .................................................................................5
Nat’l Artists Mgmt. Co., Inc. v. Weaving,

769 F. Supp. 1224 (S.D.N.Y. 1991)...........................................................................................5
Nespresso USA, Inc. v. Africa America Trading Co. LLC,

No. 15CV5553-LTS, 2016 WL 3162118 (S.D.N.Y. June 2, 2016).........................................18
New Kids on the Block v. News Am. Pub., Inc.,

971 F.2d 302 (9th Cir. 1992) ...................................................................................................20
Perkins v. LinkedIn Corp.,

53 F. Supp. 3d 1190 (N.D. Ca. 2014) ..................................................................................9, 21
Playtext Prods., Inc. v. Georgia-Pac. Corp.,

390 F.3d 158 (2d Cir. 2004).....................................................................................................16
Polaroid Corp. v. Polaroid Elecs. Corp.,

287 F.2d 492 (2d Cir. 1961)...................................................................................16, 19, 20, 21
Roberts v. Bliss,
229 F. Supp. 3d 240 (S.D.N.Y. 2017)......................................................................................15
Rogers v. Grimaldi,
875 F.2d 994 (2d Cir. 1989).......................................................................................................5
Waits v. Frito-Lay, Inc.,

978 F.2d 1093 (9th Cir. 1992) ...........................................................................................23, 24
Wheeler v. Standard Tool & Mfg. Co.,

359 F. Supp. 298 (S.D.N.Y. 1973) ............................................................................................6
White v. Samsung Elecs. Am., Inc.,

971 F.2d 1395 (9th Cir. 1992) .........................................................................................7, 9, 10
William O’Neil & Co., Inc. v. Validea.com Inc.,

202 F. Supp. 2d 1113 (C.D. Ca. 2002) ....................................................................................12
Willis v. Westin Hotel Co.,

651 F. Supp. 598 (S.D.N.Y. 1986) ............................................................................................6
10545285.1 iv
(continued)
Page(s)
Yeager v. Cingular Wireless, LLC,

673 F. Supp. 2d 1089 (E.D. Cal. 2009)..............................................................................13, 14
STATUTES
15 U.S.C.
§ 1125(a) ....................................................................................................................................1
Cal. Bus. & Prof. Code

§ 17200.................................................................................................................................1, 21
Cal. Civ. Code

§ 3294.......................................................................................................................................24
§ 3344.................................................................................................................1, 10, 12, 21, 22
§ 3344(d) ............................................................................................................................12, 13
10545285.1 v
PRELIMINARY STATEMENT
Counterclaim Plaintiff Aubrey Drake Graham (“Graham” / professionally known as
“Drake”) respectfully submits that he is entitled to redress the intentional misappropriation of his
name and image by Counterclaim Defendants in misleading and deceptive advertising, which
exploited his fame and falsely suggested an affiliation with him.
Graham is a celebrated recording artist, performer, songwriter, and internationally-
renowned superstar. He commands unprecedented celebrity star power and brand value,
representing the pinnacle of what one can achieve as an artist and performer in the music
industry. Counterclaim Defendants Hebrew Hustle Inc. (“Hebrew Hustle”) and Stephen Hacker
(collectively, “Counterclaim Defendants”) offer personal management and publishing services
for individuals in the music industry. They promote themselves to prospective clients in the
same genre of music as Graham, who undoubtedly seek to work with Graham and replicate his
success. In the course of promoting themselves, they engaged in the intentional, wholesale
appropriation of Graham’s name and image without his authorization.
Graham brings these counterclaims for right of publicity under California common law
and Cal. Civ. Code § 3344, false endorsement under Section 43(a) of the Lanham Act, 15 U.S.C.
§ 1125(a), and unfair competition under Cal. Bus. & Prof. Code § 17200, in response to
Counterclaim Defendants’ meritless copyright infringement lawsuit. See Estate of Smith v. Cash
Money Records, Inc., 253 F. Supp. 3d 737 (S.D.N.Y. 2017) (dismissing Counterclaim
Defendants’ copyright infringement claims). As the record in this case shows, Counterclaim
Defendants were desperate to ride off of Graham’s fame and success, going as far as to snatch up
the alleged rights to the words contained in a “spoken word” recording sampled on Graham’s
2013 album Nothing Was the Same. Counterclaim Defendants did so solely for purposes of
10545285.1 1
suing Graham and other defendants, when their song submissions to Graham’s management
team were not accepted.
At the same time Counterclaim Defendants were pursuing a meritless copyright claim
against Graham, they were intentionally using Graham’s brand without his permission and in
misleading and deceitful advertising on their website. Namely, Counterclaim Defendants
featured a photograph of Graham on the home page of their website, and falsely stated that
Counterclaim Defendant Hacker played a “heavy hand” in placing music with Graham.
Counterclaim Defendants have never represented Graham, and this Court has already
determined that they had very little to do with Graham. Their use of Graham’s image was
intentional and unauthorized, and their use of Graham’s name was in a promotional statement
implying a relationship with Graham that is demonstrably false. Undoubtedly, Counterclaim
Defendants’ illicit use of Graham’s name and image was attractive to potential clients seeking to
work with Graham and emulate his success, and thus provided Counterclaim Defendants with an
unwarranted advantage in the marketplace. Graham will be able to establish the requisite
elements for all of his claims at trial, and accordingly judgment should be entered in his favor.
STATEMENT OF FACTS
I. UNDISPUTED FACTS
Graham is a highly successful recording artist, rapper, songwriter, and actor, who has
sold millions of albums. See Complaint, ECF No. 2, at ¶ 22. Hebrew Hustle is a company in the
business of providing music publishers and personal management services for individuals,
including songwriters and producers in the music industry. Joint Statement of Undisputed Facts,
ECF No. 187 (“JSUF”), ¶ 1. Hacker is the sole owner of, and solely controls, Hebrew Hustle.
Id. ¶ 2.
10545285.1 2
Hebrew Hustle and Hacker operate a website at the URL http://www.hebrewhustle.com
(the “Website”). JSUF ¶ 3. The Website promotes Hebrew Hustle’s services in the music
industry. See id, Ex. A. The Website is accessible worldwide, including throughout California
and the rest of the United States, and in Canada. JSUF ¶ 3. From no less than December 23,
2013 to July 25, 2014, the Website as well as a photograph containing an image of Graham with
two other individuals (the “Photograph”). Id. ¶ 4. The Website also contained Graham’s name
for a period of time, which Counterclaim Defendants contend lasted from May 2, 2014 to July
25, 2014.
The Photograph was contained on the Website’s homepage. Id. ¶ 5. Hacker obtained the
Photograph from a third-party public, Internet source. Id. ¶ 6. Hebrew Hustle and Hacker did
not obtain any express or implied consent, license or permission from anyone to use the
Photograph or Graham’s name or image on the Website. Id. ¶¶ 7, 8.
II. PROCEDURAL BACKGROUND
Counterclaim Defendants initiated this case against Graham and others for copyright
infringement on April 16, 2014. Complaint, ECF No. 2. Graham initially filed his Answer on
July 7, 2014. Answer, ECF No. 32. Shortly after filing his Answer, Graham learned that
Counterclaim Defendants were exploiting Graham’s name and image in order to promote
themselves, at the very same time they were suing Graham and others in connection with alleged
infringement of their copyrights. Graham subsequently amended his answer on July 28, 2014 to
supplement it with the counterclaims. First Amended Answer, ECF No. 41 (“FAC”).
A. Counterclaim Defendants’ Meritless Copyright Infringement Claim
This action was bifurcated, such that discovery was initially limited to issues concerning
the liability of Graham and others for the alleged copyright infringement. See July 28, 2014
Scheduling Order, ECF No. 39. Discovery ensued, and both parties moved for summary
10545285.1 3
judgment. See ECF Nos. 91, 97. Following briefing and oral argument, the Court decided in
favor of Graham and his co-defendants, dismissing Counterclaim Defendants’ copyright
infringement claim on the grounds that it was barred by fair use. Estate of Smith, 253 F. Supp.
3d at 752. Notably, at his deposition, Hacker admitted that he had only acquired the Jimmy
Smith “composition” in order to claim rights to a song on Graham’s third album, Nothing Was
the Same, which was after his music submissions to Graham’s management bore no fruit.
B. The Counterclaims at Issue and Court’s Findings
After Counterclaim Defendants’ copyright claim was dismissed, all that remained was
Graham’s counterclaims. Both parties moved for summary judgment thereon. On May 15,
2018, the Court issued an order denying both motions. ECF No. 209 (“Order”). In denying
summary judgment, however, the Court made a number of factual findings, including, inter alia,
that Counterclaim Defendants had “very little to do with Drake—they never worked directly
with or entered into any contracts with him,” Order, at 12; that Counterclaim Defendants’
Website was not simply “set up to display famous musicians” but rather, was “meant to promote
Hebrew Hustle,” Order, at 14; that “[t]here is significant overlap between Drake’s fan base—
consumers of hip-hop music—and the most likely visitors to the Website—those looking for
representation in the hip-hop industry,” Order, at 14-15; that “Counterclaim Defendants admit
that they used Drake’s persona purposely” and “knowingly,” Order, at 15, 24; and that Graham
was “instantly recognizable [on the Website] among lesser-known artists.” Order, at 17. The
Court also found as a matter of law that the first and third elements of Graham’s right of
publicity claim—the use of Graham’s identity without his consent—were established, Order, at
16, and rejected Counterclaim Defendants’ “incidental use” defense as a matter of law because
Graham’s inclusion on the Website “likely offered some ‘unique quality or value,’” Order, at 19.
10545285.1 4
ARGUMENT
Graham will establish all the elements for each of his causes of action at trial. The record
in this case heavily weighs in his favor, and the evidence he will introduce at trial will simply
confirm what this Court has already found and what common sense commands. Further, the
Court’s prior conclusions should be treated as established law of the case at trial. See DiLaura v.
Power Authority of State of N.Y., 982 F.2d 73, 76 (2d Cir. 1992) (stating that a court’s decision
“should continue to govern the same issues in subsequent stages in the same case.”).
I. CHOICE OF LAW
A. Graham’s Domicile Is an Issue for This Court, and Not the Jury, to Decide
“A federal court sitting in diversity or adjudicating state law claims that are pendent to a
federal claim must apply the choice of law rules of the forum state. The New York Court of
Appeals has clearly stated that ‘right of publicity’ claims are governed by the substantive law of
the plaintiff’s domicile because rights of publicity constitute personalty.” Rogers v. Grimaldi,
875 F.2d 994, 1002 (2d Cir. 1989) (citations omitted). “‘Domicile’ has been defined as one’s
principal and permanent place of residence where one always intends to return to from wherever
one may be temporarily located.” Laufer v. Hauge, 140 A.D.2d 671, 672 (2d Dep’t 1988).
The determination of Graham’s domicile is a question for the Court to decide. While the
question of domicile is a mixed question of fact and law, see, e.g., Nat’l Artists Mgmt. Co., Inc.
v. Weaving, 769 F. Supp. 1224, 1128 (S.D.N.Y. 1991), “the facts predicate to a choice of law
decision are generally for the judge rather than the jury. The question of what the substantive
law is must normally be resolved by the judge because he must determine if plaintiff has
established a prima facie case and he must tell the jury what the issues of fact are that they must
decide as determined by the applicable law.” Chance v. E.I. Du Pont De Nemours & Co., Inc.,
57 F.R.D. 165, 168 (E.D.N.Y. 1972); see also Nader v. General Motors Corp., 298 N.Y.S.2d
10545285.1 5
137, 141 (N.Y. App. Div. 1969) (“[I]f there is any serious question as to the proper choice of law
. . . such choice would be a matter to be determined by the court upon the trial proof and before
submitting the basic issues framed by the pleadings to the jury . . . .”).
B. California’s Substantive Law Applies to Graham’s Counterclaims
Graham’s domicile is determined as of the time when the acts underlying Graham’s state-
law claims occurred. See Levine v. Philip Morris Inc., No. 102765/1998, 2004 WL 2334287, at *
6 (N.Y. Sup. Ct. 2004) (“For choice of law purposes, generally, a party’s domicile will be
determined as of the time when the tort occurred . . . .”); see also, e.g., Hatfill v. Foster, 415 F.
Supp. 2d 353, 364 (S.D.N.Y. 2006) (explaining in a libel case, “the determination of which
state’s law applies is made in light of the facts that existed at the time of the tort...”). “[A] post-
tort change in domicile is irrelevant.” Levine, 2004 WL 2334287, at *6; Wheeler v. Standard
Tool & Mfg. Co., 359 F. Supp. 298, 301 (S.D.N.Y. 1973) (“Under New York law, it is settled
that a post accident change of domicile by plaintiff will not enter into a determination as to the
applicable choice of law.”). The record at trial will establish that as of the time of Counterclaim
Defendants’ torts, Graham was both a resident and a domiciliary of the State of California, and
thus California law applies to his right of publicity claims.
“An individual’s residence at the time a lawsuit is commenced provides prima facie
evidence of his domicile.” Willis v. Westin Hotel Co., 651 F. Supp. 598, 601 (S.D.N.Y. 1986).
Graham already made a prima facie showing of California domicile through his declaration and
the declaration of his business manager, Larry Tyler, which establish he is a U.S. citizen and
that, as of 2014, his sole residence was in California. See Declaration of Aubrey Drake Graham,
ECF No. 185, ¶ 2; Declaration of Larry Tyler, ECF No. 186, ¶ 3.
Given Graham’s prima facie showing, this Court has already determined that the burden
is on Counterclaim Defendants to show by clear and convincing evidence that his domicile is not
10545285.1 6
in the state of California, i.e. the state in which he resides. See S.J. Order (ECF 209), at 21-22
(holding that while Counterclaim Defendants “vigorously contend that Drake’s domicile is
Toronto, Canada, they “have the burden of proving [] a change in domicile by clear and
convincing evidence.”). The Court’s prior determination on these issues is law of the case See,
e.g., DiLaura v. Power Authority of New York, 982 F.2d 73, 76 (2d Cir. 1992) (a court’s decision
“should continue to govern the same issues in subsequent stages in the same case”) (internal
citations and quotation marks omitted).
Counterclaim Defendants cannot meet their burden as they will not be able to put forward
a scintilla of evidence that Graham’s domicile changed from California to Toronto at any
relevant time. Nonetheless, to the extent, arguendo, that any questions remain as to domicile,
Graham and his business manager’s testimony at trial will resolve them in Graham’s favor.
Contrary to Counterclaim Defendants’ assertion, the testimony of Graham and his business
manager will not be “self-serving,” because they will identify objective facts to support
Graham’s California domicile.
II. GRAHAM WILL PREVAIL ON HIS RIGHT OF PUBLICITY CLAIMS
A. Graham Will Establish the Elements of

His Common Law Right of Publicity Claim
In California, “the right of publicity has developed to protect the commercial interest of
celebrities in their identities. The theory of the right is that a celebrity’s identity can be valuable
in the promotion of products, and the celebrity has an interest that may be protected from the
unauthorized commercial exploitation of that identity. . . . If the celebrity’s identity is
commercially exploited, there has been an invasion of his right.” White v. Samsung Elecs. Am.,
Inc., 971 F.2d 1395, 1398 (9th Cir. 1992) (quoting Carson v. Here’s Johnny Portable Toilets,
Inc., 698 F.2d 831, 835 (6th Cir. 1983)).
10545285.1 7
To establish a violation of the California common law right of publicity, a plaintiff must
prove: (1) the defendant’s use of plaintiff’s identity; (2) the appropriation of plaintiff’s name or
likeness to defendant’s advantage, commercially or otherwise; (3) lack of consent; and
(4) resulting injury. Abdul-Jabbar v. GMC, 85 F.3d 407, 413-14 (9th Cir. 1996). Unlike claims
under the Lanham Act, there is no need to show a likelihood of consumer confusion to prove a
violation of the California right of publicity. See Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A.,
Inc., 778 F.3d 1059, 1072-73 (9th Cir. 2015) (collecting authority).
The Court has already determined that the first and third elements have been established
as a matter of law, and those findings will be controlling at trial. Order, at 16 (“This Court
agrees that elements one and three are established and need no further analysis.”). There is
simply no question that Counterclaim Defendants used Graham’s name and image without his
consent. Accordingly, Graham will only have to establish the second and fourth element. Those
too will be easily proven.
1. Counterclaim Defendants Used Graham’s Name and Image for their

Commercial Advantage
Under California law, the defendant’s use of the plaintiff’s likeness is deemed to be to the
appropriator’s “commercial advantage” if it is attractive to viewers, thereby providing the
defendant with a leg up in the marketplace. See Abdul-Jabbar, 85 F.3d at 415. This is because
“[t]he first step toward selling a product or service is to attract the consumers’ attention.”
Eastwood v. Superior Court, 149 Cal. App. 3d 409, 420 (1983). See also Fairfield v. Am.
Photocopy Equip. Co., 138 Cal. App. 2d 82, 87 (1955) (unauthorized advertisement featuring the
plaintiff amounted to a “pretended endorsement or recommendation of defendant’s product”).
Furthermore, a defendant may gain a commercial advantage “by appropriating an individual’s
10545285.1 8
name or likeness to accomplish goal.” Perkins v. LinkedIn Corp., 53 F. Supp. 3d 1190, 1211
(N.D. Ca. 2014).
Counterclaim Defendants’ use of Graham’s name and image easily satisfies this test.
Graham is an international celebrity, whose name and image would undoubtedly be attractive to
viewers. The Court has already determined that the Website is “meant to promote [Counterclaim
Defendants].” Order, at 14. “Because of a celebrity’s audience appeal, people respond almost
automatically to a celebrity’s name or picture.” Eastwood, 149 Cal. App. 3d at 420. As one of
the most successful musical artists in the world, Graham’s name and image “have economic
value” where they are used to endorse or advertise a service such as Counterclaim Defendants,
which they promote primarily to those seeking to work with or emulate the career of stars such
as Graham. See Perkins, 53 F. Supp. 3d at 1211. Indeed, as will be established at trial, a
celebrity of Graham’s stature would unquestionably lend credibility, influence, and relevance to
Counterclaim Defendants’ business. Thus, by featuring Graham on the Website, Counterclaim
Defendants gained an advantage, commercial and otherwise, in promoting their services in the
music industry. White, 971 F.2d at 1399 (“Advertisers use celebrities to promote their products.
The more popular the celebrity, the greater the number of people who recognize her, and the
greater the visibility for the product.”).
2. Graham Has Been Injured By Counterclaim Defendants’ Misappropriation
Courts analyzing a common law right of publicity claim “routinely presume [injury] has
been established if there is sufficient evidence to prove the first three elements.” Order, at 19
(citing cases analyzing the California common law right of publicity). This is because the root of
the right of publicity claim in California is that it protects an individual’s interest in the
commercial value of his or her identity. See Motschenbacher v. R. J. Reynolds Tobacco Co., 498
F.2d 821, 824-25 (9th Cir. 1974). As the Ninth Circuit has recognized, “considerable energy and
10545285.1 9
ingenuity are expended by those who have achieved celebrity” and “the law protects the
celebrity’s sole right to exploit this value.” White, 971 F.2d at 1399.
Recognizing these principles, the Court has already explained that “an unauthorized use
of Drake’s likeness to Counterclaim Defendants’ commercial advantage satisfies the injury
prong.” Order, at 20.
B. Graham Will Establish the Elements Of His Claim Under Cal. Civ. Code. §
3344
California Civil Code Section 3344 provides in pertinent part as follows: “Any person
who knowingly uses another’s name, . . . photograph, or likeness, in any manner, . . . for
purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or
services, without such person’s prior consent . . . shall be liable for any damages sustained by the
person or persons injured as a result thereof.” Cal. Civ. Code § 3344(a). Section 3344 is
intended to complement the common law right of publicity. Abdul-Jabbar, 85 F.3d at 414.
To prove a violation of Section 3344, a plaintiff must prove all the elements of the
common-law cause of action for misappropriation of likeness or name and, in addition, must
show a knowing use by the defendant (Abdul-Jabbar, 85 F.3d at 414) and a direct connection
between the use and defendants’ commercial purpose. Id. As this Court noted, the question is
whether there “as a ‘direct connection’ between Hebrew Hustle’s use and its Website’s
commercial purpose.” ECF 209 at 24.
1. Counterclaim Defendants Knowingly Used Graham’s

Name and Image On The Website
It is indisputable that Counterclaim Defendants knowingly used Graham’s name and
image on their website. Indeed, Counterclaim Defendants admitted that Mr. Hacker deliberately
chose Graham’s image when he “obtained the Photograph from a third-party public, Internet
source.” SUF ¶ 6. Further, “Counterclaim Defendants admit that they used [Graham]’s persona
10545285.1 10
purposely.” Order, at 15; see also Order, at 24 (“Hacker admits that he ‘knowingly’ placed the
Photograph and Drake’s name on the Website.”).
While Counterclaim Defendants deny “knowingly” using Graham’s name and image for
advertising, they cannot dispute that they knowingly placed Graham’s name and image on a
website “meant to promote Hebrew Hustle.” Order, at 14. Thus, there is no genuine dispute as
to whether Graham has established this prong.
2. There Is A Direct Connection Between The Use Of Graham’s Name and

Image And Counterclaim Defendants’ Commercial Purpose
As discussed in more detail supra, the use of Graham’s image and name was for a clear
commercial purpose—namely, promoting Counterclaim Defendants’ services in the music
industry. There is no other rational explanation. The use of Graham’s image and name was
directly linked to the commercial purpose of the Website –attracting of hip hop clientele. This
use would attract the viewer’s attention and suggest what would amount to a false endorsement
of Counterclaim Defendants’ services. See Eastwood v. Superior Court, 149 Cal. App. 3d 409,
420 (1983) (finding there was a direct connection between the defendant’s use of Clint
Eastwood’s likeness on the cover of its magazine and the defendant’s commercial purpose
because the use would “motivate a decision to purchase” the magazine and noting that people
respond “almost automatically” to a celebrity’s name or picture). Indeed, the Court recognized
this at an earlier hearing. Transcript of July 13, 2017 Conference at 15:24-16:3 (“MR. MOTTA:
. . . It is not a representation that they represent all the individuals [depicted on the Website].
THE COURT: That’s where you and I disagree. I think it is. It’s Hebrew Hustle saying look at
the pantheon of people, look at the names we represent.”). By placing Graham’s image on the
Website and falsely suggesting an affiliation with Graham, they conveyed to the world that they
have a competitive advantage by said association.
10545285.1 11
Accordingly, all of the elements of Graham’s claim under Section 3344 will be
established at trial.
3. Graham’s Claims Are Not Barred by Cal. Civ. Code § 3344(d)
Section 3344(d) of the California Civil Code provides protection from liability if the use
is “in connection with any news, public affairs, or sports broadcast or account, or any political
campaign.” Counterclaim Defendants’ use solely in connection with their own business
promotion and advertisement on a commercial website, in no way resembles these protected
uses. See Lightbourne v. Printroom, Inc., No. SACV 13-876-JLS (RNBx), 2014 WL 12597108,
at *3 (C.D Cal. Sept. 8, 2014) (explaining that the section 3344(d) exemption applies where
“plaintiffs’ likenesses were not sold in standalone form, but were used as part of a larger effort to
convey information”); Davis v. Elec. Arts Inc., No. 10-03328 RS, 2012 WL 3860819, at *9 (N.D.
Cal. Mar. 29, 2012) (“[Defendant] is not entitled to the statutory defense because its use of
Plaintiff’s image and likeness extends beyond reporting information about him.”).
In prior briefing, Counterclaim Defendants have wrongly argued that the § 3344(d)
exemption applies to any use of a celebrity’s personal unless the celebrity shows by clear and
convincing evidence that (1) the reference or use is false; and (2) was made with actual malice.
If Counterclaim Defendants’ misguided argument were correct, then the statutory exception
would eviscerate California’s right of publicity. Rather, as the case law Counterclaim
Defendants cite makes clear, the two-pronged test for the § 3344(d) exemption applies only in
the context of news stories. William O’Neil & Co., Inc. v. Validea.com Inc., 202 F. Supp. 2d
1113, 1117-18 (C.D. Ca. 2002) (Eastwood makes clear that a public figure who is the target of
‘news’ or material of public concern may state a claim under California’s right of publicity
statute only if he or she alleges that the defendant published the news with knowledge of its
falsity or in reckless disregard of its truth.”) (emphasis added). Further, even where the use is
10545285.1 12
newsworthy, the commercial use of a person’s newsworthy acts removes the use from §
3344(d)’s newsworthy privilege. Fraley v. Facebook, Inc., 830 F. Supp. 2d 785, 805 (N.D. Cal.
2011) (rejecting dismissal on § 3344(d) grounds because publication of purportedly newsworthy
events was for commercial advertising purposes). There is nothing newsworthy about the
Website, and it does not report on any material of public concern. Instead, it uses Graham’s
name and image purely as a tool for Counterclaim Defendants’ own commercial benefit. See
Order, at 14 (“This was not a website set up to display famous musicians. It was a website
meant to promote Hebrew Hustle.”). Graham’s name and image simply was not used as part of
any newsworthy effort to convey information, and the § 3344(d) exemption does not apply.
C. The Incidental Use Doctrine is Inapplicable
California courts have not yet held that the incidental use defense applies to right-of-
publicity cases. Davis, 775 F.3d at 1180 n.5. To the extent even applicable here, Counterclaim
Defendants’ attempted invocation of it is as an affirmative defense is nonetheless unavailing. In
California, an incidental use is one that has no commercial value. Yeager v. Cingular Wireless,
LLC, 673 F. Supp. 2d 1089, 1100 (E.D. Cal. 2009). The use of Graham’s name and likeness
here, or by any business in the entertainment industry, has substantial commercial value as this
Court recognized. ECF 209 at 19.
This Court has held that “[d]etermining whether a use was incidental requires assessing
factors ‘such as (1) whether the use has a unique quality or value that would result in commercial
profit to the defendant; (2) whether the use contributes something of significance; (3) the
relationship between the reference to the plaintiff and the purpose and subject of the work; and
(4) the duration, prominence or reputation of the name or likeness relative to the rest of the
publication.’” ECF 209 at 18 (quoting Davis v. Elec. Arts Inc., 775 F.3d 1172, 1180 (9th Cir.
2015)).
10545285.1 13
Counterclaim Defendants cannot satisfy a single one of the four factors here. First, as
noted above, Graham is a huge celebrity and his name and image have very significant and
unique quality and value. Second, Graham’s name and image unquestionably made a
contribution to the Website’s purpose of promoting Counterclaim Defendants’ services because
those features are attractive and endow the Website with legitimacy, particularly given the
misleading “heavy hand” advertisement. Third, there is a relationship between Graham as a hip
hop star, hip-hop artist, and the Website promotes Counterclaim Defendants’ services for writers
and producers of hip-hop music. Fourth, “[e]ven if the mention of a plaintiff’s name or likeness
is brief, if the use stands out prominently within the commercial speech or enhances the
marketability of the defendant’s product or service, the doctrine of incidental use is
inapplicable.” Yeager, 673 F. Supp. 2d at 1100. Given Graham’s celebrity, the use of his name
(with the false “heavy hand” reference) and image unquestionably enhanced the marketability of
Counterclaim Defendants’ services.
This Court previously denied Counterclaim Defendants’ motion for summary judgment
as to the incidental use defense, holding as follows:
Drake’s inclusion likely offered some “unique quality or value”

to the Website. See Davis, 775 F.3d at 1180; see also Restatement
(Second) of Torts § 652C, comment d (incidental use applies when
a likeness is published “for purposes other than taking advantage
of [a celebrity’s] reputation, prestige or other value associated with
him”) (emphasis added).
ECF 209 at 19 (emphasis added). There is no purpose for Hacker’s taking of Graham’s persona,
other than to take advantage of Graham’s “reputation, prestige [and] value.” As the Court stated:
“if Drake did not add something to the Website, then this Court questions why Hacker put him
there (twice).” Id. There is no cogent answer to that question and Counterclaim Defendants’
purported “incidental use” defense fails.
10545285.1 14
III. GRAHAM WILL PREVAIL ON HIS FALSE ENDORSEMENT CLAIM
The elements of a false endorsement claim under the Lanham Act are that the defendant,
(1) in commerce, (2) made a false or misleading representation of fact (3) in connection with
goods or services (4) that is likely to cause consumer confusion as to the origin, sponsorship or
approval of the goods or services. Roberts v. Bliss, 229 F. Supp. 3d 240, 248 (S.D.N.Y. 2017).
Because Counterclaim Defendants do not dispute referencing Graham in commerce in
connection with goods or services, elements one and three are firmly established. See Order, at
12. The record is already in Graham’s favor as to the remaining elements, which will be
conclusively determined in his favor at trial.
A. Counterclaim Defendants’ False or Misleading Representation of Fact Is

Likely to Cause Confusion
It is well established that claims brought by celebrities whose persona was used to imply
an endorsement or approval are cognizable under the Lanham Act. See Beastie Boys v. Monster
Energy Co., 66 F. Supp. 3d 424, 447 (S.D.N.Y. 2014) (citing cases). Indeed, Counterclaim
Defendants concede that the unauthorized use of a person’s name or photograph in a manner that
creates the false impression that the party has approved or endorsed a product or service in
interstate commerce violates the Lanham Act. Allen v. National Video, Inc., 610 F. Supp. 612,
626 (S.D.N.Y. 1985) (cited by Counterclaim Defendants, ECF No. 193, at 21) (“An entity can
make a false or misleading representation that a celebrity endorses a product by using that
celebrity’s image.”).
The “crucial determinant” in a false endorsement action is “whether there is any
likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or
indeed simply confused, as to the source of the goods in question, or are likely to believe that the
mark’s owner sponsored, endorsed, or otherwise approved of the defendant’s use of the mark.”
10545285.1 15
Bruce Lee Enters., LLC v. A.V.E.L.A., Inc., No. 10 CV 2333(KMW), 2013 WL 822173, at *19
(S.D.N.Y. Mar. 6, 2013). In the trademark context, courts in the Second Circuit weigh eight
factors in determining whether there is a likelihood of consumer confusion (the Polaroid
factors): (1) the strength of plaintiff’s mark; (2) the similarity of the parties’ marks; (3) the
proximity of the parties’ products in the marketplace; (4) the likelihood that the plaintiff will
“bridge the gap” between the products; (5) actual consumer confusion between the two marks;
(6) the defendant’s intent in adopting its mark; (7) the quality of the defendant’s product; and (8)
the sophistication of the relevant consumer group. Playtext Prods., Inc. v. Georgia-Pac. Corp.,
390 F.3d 158, 162 (2d Cir. 2004) (citing Polaroid Corp. v. Polaroid Elecs. Corp., 287 F.2d 492
(2d Cir. 1961)). In false endorsement cases, the term “mark” applies to the celebrity’s persona
and the “strength” of the mark is the level of recognition the celebrity has among the segment of
the public to whom the goods are advertised is directed. Bruce Lee, 2013 WL 822173, at *20.
Further, the fourth factor (bridging the gap) and seventh factor (quality of defendant’s products)
are often not considered. Jackson v. Odenat, 9 F. Supp. 3d 342, 356 (S.D.N.Y. 2014).
“As the Court already held, “[i]n weighing the Polaroid factors, the majority weigh
against Counterclaim Defendants.” ECF 209 at 14.
First, it cannot be disputed that Graham’s name and image are immediately recognizable.
Even Counterclaim Defendants’ expert witness acknowledges that Graham is “one of the biggest
music icons . . . in the world.” See Roesler Dep. 44:3-44-8 (Oct. 10, 2018). See Allen, 610 F.
Supp. at 627 (“There is no dispute that plaintiff’s name and likeness are well-known to the
public”).
10545285.1 16
Second, Counterclaim Defendants admit that they used an actual picture of Graham and
his professional name “Drake.” JSUF, ¶ 4. Therefore the marks, or names and images in this
case, are not just similar, but identical. Jackson, 9 F. Supp. 3d at 358.
Third, “[i]n examining proximity, courts look to the overlap or intersection of audience or
customers.” Jackson, 9 F. Supp. 3d at 358. Here, there is significant overlap because Graham is
a hip-hop artist and writer and Counterclaim Defendants are in the business of providing music
publishers and personal management services for individuals, including songwriters and
producers, in the hip hop music industry. Order, at 14-15 (“There is also significant overlap
between Drake’s fan base—consumers of hip-hop—and the most likely visitors to the Website—
those looking for representation in the hip-hop industry.”). See Jackson, 9 F. Supp. 3d at 358
(finding that there was sufficient evidence of overlap because plaintiff Jackson was a hip-hop
artist and the infringing website was targeted to hip-hop fans); Allen, 610 F. Supp. at 628 (“The
audience at which [defendant] National Video’s advertisement was aimed -- movie watchers -- is
therefore the same audience to which plaintiff [Woody Allen]’s own commercial efforts are
directed. There is no requirement under the Act that plaintiff and defendant actually be in
competition.”).
Fourth, it is black letter law that “actual confusion need not be shown to prevail under the
Lanham Act.” Jackson, 9 F. Supp. 3d at 359; Lois Sportswear, U.S.A., Inc. v. Levi Strauss &
Co., 799 F.2d 867, 875 (2d Cir. 1986).
Fifth, Counterclaim Defendants deliberately chose to use Graham’s professional name
“Drake” and to upload a picture they found of Graham on the internet to the Website. JSUF,
¶¶ 4-6; Order, at 15 (“Counterclaim Defendants admit that they used Drake’s persona
purposely.”); see also Jackson, 9 F. Supp. 3d at 359 (finding a reasonable jury could conclude
10545285.1 17
defendant intended to capitalize on plaintiff’s good will based on defendant’s knowledge of
plaintiff’s persona, and his request for the “hottest rappers”). Further, they intentionally stated
publicly that they have played a “heavy hand” getting music placed with Graham, despite
knowing full well that they “had very little to do” with Graham. Order, at 12. There is no
question that Counterclaim Defendants made a deliberate choice to capitalize on the mistaken
impression that Counterclaim Defendants work with him. See Allen, 610 F. Supp. at 628
(“Defendants may not have intended to imply that plaintiff actually endorsed their product, but
they happily risked creating that impression in an attempt to gain commercial advantage through
reference to plaintiff’s public image.”).
Sixth, the purpose of the Website was purely self-promotional. See Order, at 14.
Therefore, the audience for the Website would include anybody looking for representation in the
music industry, including newcomers to the music scene who would be misled into believing that
Counterclaim Defendants were affiliated with, worked with or perhaps even represented
Graham. Allen, 610 F. Supp. at 628-29 (consumer “may be led to believe by the intentional
reference to plaintiff that he is somehow involved in or approves of their product”). Cf. Pirone v.
MacMillan, Inc., 894 F. 2d 579, 585 (2d Cir. 1990) (inclusion of Babe Ruth photographs in a
daily baseball trivia calendar would not suggest sponsorship because the purpose of their
inclusion was merely “to identify a great baseball player” and not to promote any service).
B. Nominative Fair Use Is Inapplicable
Counterclaim Defendants argue that their blatant appropriation of Graham’s name and
image was a “nominative fair use.” 1 They are categorically wrong. Nominative fair use asks
1
Counterclaim Defendants have also asserted the affirmative defense of classic fair use.
Nominative fair use refers to the use of a plaintiff’s mark. Nespresso USA, Inc. v. Africa
America Trading Co. LLC, No. 15CV5553-LTS, 2016 WL 3162118, at *2 (S.D.N.Y. June 2,
2016). Classic fair use refers to the use of a plaintiff’s mark other than as a mark. Jackson, 9 F.
10545285.1 18
courts to consider, in addition to a discussion of the Polaroid factors, the following: (1) whether
the use of the plaintiff’s mark is necessary to describe both the plaintiff’s product or service and
the defendant’s product or service, that is, whether the product or service is not readily
identifiable without use of the mark; (2) whether the defendant uses only so much of the
plaintiff’s mark as is necessary to identify the product or service; and (3) whether the defendant
did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by
the plaintiff holder, that is, whether the defendant’s conduct or language reflects the true or
accurate relationship between plaintiff’s and defendant’s products or services. Int’l Info. Sys.
Sec. Certification Consortium, Inc. v. Security Univ., LLC, 823 F.3d 153, 168 (2d Cir. 2016).
Counterclaim Defendants cannot satisfy this test.
First, Graham’s persona was wholly unnecessary to describe Counterclaim Defendants’
services because Graham had nothing to do with the services. There can be no question that
Counterclaim Defendants did not need to use Graham’s image, because their use of the image
was in connection with a song that Graham was not even featured on. JSUF, ¶ 10.
Furthermore, Counterclaim Defendants’ choice to state that Hacker played a “heavy hand” in the
creation of “hit songs for the likes of . . . Drake” was wholly unnecessary, as he could have
easily described his services without resort to invoking Graham’s name. See Beastie Boys, 66 F.
Supp. 3d at 454 (explaining that defendants could not satisfy the nominative fair use doctrine
because their product was “readily identifiable” without using the plaintiff’s name). Indeed, that
Counterclaim Defendants stopped using Graham’s name upon notice of Graham’s counterclaims,
and can still continue to describe their own services, belies any notion that Graham was
necessary to describe their services.
Supp. 3d at 361, and it is the subject of an in limine motion. There is no question that the uses
were of Graham’s brand as a mark.
10545285.1 19
Second, no amount of Graham’s persona was necessary to identify Counterclaim
Defendants’ product, so any use of Graham’s persona was more than necessary. See Cairns v.
Franklin Mint Co., 292 F.3d 1139, 1154 (9th Cir. 2002) (explaining that where “the description
of the defendant’s product depends on the description of the plaintiff’s product, more use of the
plaintiff’s trademark is reasonably necessary to identify the plaintiff’s product than in cases
where the description of the defendant’s product does not depend on the description of the
plaintiff’s product”).
Third, the Counterclaim Defendants specifically invoke Graham’s persona to convey a
connection with Graham that the Court has already determined was exaggerated and potentially
misleading. Order, at 12 (“In fact, Hebrew Hustle and Hacker had very little to do with Drake—
they never worked directly with or entered into any contracts with him. . . . Placing Drake on
both the home page and Bio page could have misleadingly implied that their connection was
much stronger.”).2 Counterclaim Defendants’ use is precisely the type of use that is not
protected by the nominative fair use doctrine. See Coty Inc., 277 F. Supp. 3d at 457 (explaining
that defendant could not rely on fair use where it “impermissibly signaled a relationship”
between its own products and the plaintiff).
Finally, even if the nominative fair use test were invoked at trial (and it should not be), it
still would not shield Counterclaim Defendants from liability because, for the reasons described
supra Section II.B. and this Court has already recognized, the Polaroid factors weigh firmly in
2
The third nominative fair use factor requires that “the user must do nothing that would, in
conjunction with the mark, suggest sponsorship or endorsement by the trademark holder,” New
Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 308 (9th Cir. 1992) (emphasis added);
and, as the Court observed, Counterclaim Defendants did far more than nothing. Rather, they
want “beyond mere naming” of Graham and instead made “affirmative claims or assertions” to
exaggerate their affiliation with Graham. See Dr. Seuss Enters., L.P. v. ComicMix LLC, 300 F.
Supp. 3d 1073, 1091 (S.D. Cal. 2017).
10545285.1 20
favor of Graham. See Coty Inc. v. Excell Brands, LLC, 277 F. Supp. 3d 425, 427 (S.D.N.Y.
2017) (rejecting defendant’s fair use argument where the Polaroid factors were “firmly on the
side of [plaintiff]”).
IV. UNFAIR COMPETITION
California’s unfair competition law (“UCL”) prohibits “any unlawful, unfair or
fraudulent business act or practice.” Cal. Bus. & Prof. Code § 17200. Because Graham’s right
of publicity claims and false endorsement claim constitute unlawful, unfair and fraudulent
business practices, if the jury finds that Graham has proven any of his other claims, the jury must
find Counterclaim Defendants liable under the UCL.
The UCL is a broad cause of action, and includes “anything that can properly be called a
business practice and that at the same time is forbidden by law.” Fraley, 830 F. Supp. 2d at 812;
Cel-Tech Comm’ns, Inc. v. Los Angeles Cell. Tele. Co., 83 Cal. Rptry. 2d 548, 560 (Ca. 1999)
(“[T]he unfair competition law’s scope is broad.”). “By proscribing ‘any unlawful’ business
practice, ‘section 17200 borrows violations of other laws and treats them as unlawful practices’
that the unfair competition law makes independently actionable.” Id. at 561.
The unlawful business practices that the UCL proscribes includes violations under
California’s right of publicity—both under common law and under Cal. Civ. Code § 3344. See,
e.g., Perkins, 53 F. Supp. 2d at 1220-21; Kelly v. Primco Mgmt., Inc. 2015 WL 10990368, at *12
(C.D. Ca. Jan. 12, 2015); Fraley, 830 F. Supp. 2d at 812. Thus, should Graham prove that
Counterclaim Defendants violated his right of publicity—whether under California common law
or Cal. Civ. Code § 3344—he will have proven the requisite unlawful business practice to hold
Counterclaim Defendants liable under the UCL.
Likewise, Graham’s false endorsement claim may also serve as a predicate to his UCL
claim. As this Court recognized, “actions pursuant to § 17200 are substantially congruent to
10545285.1 21
claims made under the Lanham Act.” Order, at 25 (citing Enrepreneur Media, Inc. v. Smith, 279
F.3d 1135, 1153 (9th Cir. 2002)); see also Acad. Of Mot. Picture Art & Sci v. Creative House
Promotions, Inc., 944 F.2d 1446, 1457 (9th Cir. 1991).
V. REMEDIES
Assuming Graham proves Counterclaim Defendants’ liability at trial, he will be entitled
to substantial damages in connection with his right of publicity claims and false endorsement
claim, and may seek restitution under the UCL. As the Court recognized, Graham “never waived
any category of damages.” Order, at 20.
A. Graham will be entitled to actual damages
Graham is entitled to actual damages under California common law, Cal. Civ. Code §
3344, and the Lanham Act. Graham will seek damages to be proven at trial that include, (1) the
commercial value of Graham’s name and image, and (2) the mental distress from the offensive
and upsetting misappropriation of his name and image.
1. Commercial value
The commercial value of Graham’s name and image refers to the fair market value that a
celebrity of Mr. Graham’s reputation, appeal, talent, and fame would bring in the open market
for the type of use engaged in by the Counterclaim Defendants. Hoffman v. Capital Cities/ABC,
Inc., 33 F. Supp. 2d 867, 872-73 (C.D. Ca. 1999), rev. on other grounds, 255 F.3d 1180 (9th Cir.
2001); Clark v. Am. Online, Inc., 2000 WL 33535712, at *8 (C.D. Ca. Nov. 30, 2000) (“[T]he
standard for measuring lost profits in a right of publicity case is the fair market value of the right
to use plaintiff’s name and likeness in the manner in which it was used by the defendant.”). This
is the case under either Graham’s right of publicity claims or false endorsement claim. See
Beastie Boys, 66 F. Supp. 3d at 465 (stating the jury should fix Lanham Act damages based on
“the market value of the license fee that [plaintiffs] were entitled to charge for their
10545285.1 22
endorsement”). Because damages measured by the fair market value of the appropriated use
“can compensate the plaintiff for loss but do not ordinarily deprive the defendant of the full gain
attributable to the appropriation,” the court “may properly give to the plaintiff the benefit of any
doubt in determining fair market value in order to prevent unjust enrichment and to insure
adequate deterrence.” Restat. 3d Unfair Competition, § 49 cmt. d.
With respect to the commercial value of Graham’s name and likeness, there are few
celebrities that command as much star power and brand value as Graham; indeed, the level of
fame and success he has achieved is beyond dispute. Dr. Jason King, Associate Professor,
Director of Global Studies, and Head of Writing at the Clive Davis Institute of Recorded Music
at New York University, will testify on Graham’s brand value, within the context of his music
career and beyond, and the numerous benefits that Counterclaim Defendants received by
freeriding on Graham’s brand. Jonathan Faber, Esq., Founder and Managing Partner of
Luminary Group LLC and adjunct professor at Indiana University McKinney School of Law,
will provide an objective valuation of the fair market value for Graham’s name and likeness,
based on the agreed-upon price between a willing buyer and willing seller. As set forth in his
report (hereinafter, the “Faber Report”), comparable uses of superstar’s names and likenesses can
command hundreds of thousands, if not millions of dollars, even for uses much more fleeting
than the use Counterclaim Defendants engaged in. See Faber Report, at 10-13.
2. Mental Distress
Injury for right of publicity violations is “not limited to present or future economic loss,
but ‘may induce humiliation, embarrassment, and mental distress.’” Abdul-Jabbar v. Gen. Mot.
Corp., 85 F.3d 407, 416 (9th Cir. 1996) (quoting Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1103
(9th Cir. 1992)). “Often, the objectionable nature of the use will cause mental distress.” Waits,
10545285.1 23
978 F.2d at 1103 (upholding $200,000 damage award for “injury to peace, happiness, and
feelings” where celebrity was angered and offended by use of his voice in commercial).
With respect to mental distress, Graham was offended and upset by the nature of
Counterclaim Defendants’ use of his name and image. Counterclaim Defendants purposely
infringed on Graham’s intellectual property rights in his name and image to misleadingly imply a
connection with Graham while at the same time suing Graham for infringement. Graham was
severely upset and appalled that Counterclaim Defendants would force Graham to defend against
a baseless lawsuit Hacker set up while at the same time, willfully including Graham’s false
endorsement on their Website. Additionally, the very name of Hebrew Hustle is offensive, as it
perpetuates stereotypes regarding persons of Jewish heritage, such as Graham. Graham would
have never licensed his name and image to Counterclaim Defendants, and is offended to have
been falsely associated with them.
B. Graham will be entitled to punitive damages
Under section 3294 of the California Civil Code, punitive damages are available in
addition to actual damages “where it is proven by clear and convincing evidence that the
defendant has been guilty of oppression, fraud, or malice.” Punitive damages are appropriate
where, as here, a defendant “acted in conscious disregard” of the plaintiff’s legal right to control
the commercial use of his identity. See Waits, 978 F.2d at 1105. As Counterclaim Defendants
have already admitted to the intentional use of Graham’s persona without authorization, see
Order, at 15-16, Graham should be entitled to punitive damages.
10545285.1 24
If Graham establishes Counterclaim Defendants’ liability on his right of publicity claims,
he will be entitled to punitive damages. 3 Graham also intends to seek his attorney’s fees and
costs.
DATED: November 28, 2018 MITCHELL SILBERBERG & KNUPP LLP

New York, New York
By: /s/ Christine Lepera

Christine Lepera (ctl@msk.com)
Jeffrey M. Movit (jmm@msk.com)
12 East 49th Street, 30th Floor
New York, New York 10017-1028
Tel.: (212) 509-3900; Fax: (212) 509-7239
Leo M. Lichtman (lml@msk.com)

1818 N Street, NW, 7th Floor
Washington, DC 20036
Tel: (202) 355-7900
Attorneys for Counterclaim Plaintiff
3
The Ninth Circuit recognizes that punitive damages under state law are also available to
supplement the available damages awardable under the Lanham Act. See Transgo, Inc. v. Ajac
Transmission Parts Corp., 768 F.2d 1001, 1024 (9th Cir. 2001); Craigslist, Inc. v. Mesiab, No. C
08-05064 CW (MEJ), 2010 WL 5300883, at *14 (N.D. Cal. Nov. 15, 2010); see also JCW
Invst’mts, Inc. v. Novelty, Inc., 482 F.3d 910, 919 (7th Cir. 2007).
10545285.1 25

Counterclaim in Drake v. Hebrew Hustle, Inc.

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Case 1:14-cv-02703-WHP Document 283 Filed 11/28/18 Page 1 of 31

UNITED STATES DISTRICT COURT

ESTATE OF JAMES OSCAR SMITH and

CASH MONEY RECORDS, INC., et al.,

AUBREY DRAKE GRAHAM,

HEBREW HUSTLE INC.,

Additional Counterclaim Defendant.

COUNTERCLAIM PLAINTIFF’S PRETRIAL MEMORANDUM OF LAW

PRELIMINARY STATEMENT .................................................................................................... ii

STATEMENT OF FACTS ............................................................................................................. 2

I. UNDISPUTED FACTS ...................................................................................................... 2

II. PROCEDURAL BACKGROUND..................................................................................... 3

I. CHOICE OF LAW ............................................................................................................. 5

II. GRAHAM WILL PREVAIL ON HIS RIGHT OF PUBLICITY CLAIMS ...................... 7

III. GRAHAM WILL PREVAIL ON HIS FALSE ENDORSEMENT CLAIM .................... 15

IV. UNFAIR COMPETITION................................................................................................ 21

Allen v. National Video, Inc.,

Beastie Boys v. Monster Energy Co.,

Bruce Lee Enters., LLC v. A.V.E.L.A., Inc.,

Cairns v. Franklin Mint Co.,

Cel-Tech Comm’ns, Inc. v. Los Angeles Cell. Tele. Co.,

Cf. Pirone v. MacMillan, Inc.,

Chance v. E.I. Du Pont De Nemours & Co., Inc.,

Clark v. Am. Online, Inc.,

Coty Inc. v. Excell Brands, LLC,

Davis v. Elec. Arts Inc.,

DiLaura v. Power Authority of State of N.Y.,

Dr. Seuss Enters., L.P. v. ComicMix LLC,

Eastwood v. Superior Court,

Estate of Smith v. Cash Money Records, Inc.,

Fairfield v. Am. Photocopy Equip. Co.,

Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc.,

Fraley v. Facebook, Inc.,

Hoffman v. Capital Cities/ABC, Inc.,

Kelly v. Primco Mgmt., Inc.

Levine v. Philip Morris Inc.,

Lightbourne v. Printroom, Inc.,

Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co.,

Motschenbacher v. R. J. Reynolds Tobacco Co.,

Nader v. General Motors Corp.,

Nat’l Artists Mgmt. Co., Inc. v. Weaving,

Nespresso USA, Inc. v. Africa America Trading Co. LLC,

New Kids on the Block v. News Am. Pub., Inc.,

Perkins v. LinkedIn Corp.,

Playtext Prods., Inc. v. Georgia-Pac. Corp.,

Polaroid Corp. v. Polaroid Elecs. Corp.,

Waits v. Frito-Lay, Inc.,

Wheeler v. Standard Tool & Mfg. Co.,

White v. Samsung Elecs. Am., Inc.,

William O’Neil & Co., Inc. v. Validea.com Inc.,

Willis v. Westin Hotel Co.,

Yeager v. Cingular Wireless, LLC,

Cal. Bus. & Prof. Code

Cal. Civ. Code

Counterclaim Plaintiff Aubrey Drake Graham (“Graham” / professionally known as

exploited his fame and falsely suggested an affiliation with him.

Graham is a celebrated recording artist, performer, songwriter, and internationally-

(collectively, “Counterclaim Defendants”) offer personal management and publishing services

appropriation of Graham’s name and image without his authorization.

team were not accepted.

misleading and deceitful advertising on their website. Namely, Counterclaim Defendants

implying a relationship with Graham that is demonstrably false. Undoubtedly, Counterclaim

Hebrew Hustle and Hacker operate a website at the URL http://www.hebrewhustle.com

Photograph or Graham’s name or image on the Website. Id. ¶¶ 7, 8.