Franklin Mint Co. v. Manatt, Phelps & Phillips, LLP (184 Cal. App. 4th 313, 2010)

Opinion

WILLHITE, Acting P. J.

The Franklin Mint Company and its principals, Stewart and Lynda Resnick (collectively, Franklin Mint), appeal from a judgment dismissing their malicious prosecution action against the law firm Manatt, Phelps & Phillips, LLP, and Attorney Mark S. Lee (collectively, Manatt). Manatt represented the executors of the estate of Diana, Princess of Wales and the trustees of The Diana, Princess of Wales Memorial Fund (collectively, the Fund) in a lawsuit filed against Franklin Mint alleging claims related to Franklin Mint’s use of Princess Diana’s name and image in connection with merchandise Franklin Mint advertised and sold. Franklin Mint’s malicious prosecution claim is based upon two of the claims that were alleged in that underlying lawsuit, for false advertising and trademark dilution under the Lanham Act (15 U.S.C. § 1125(a), (c)). After a 17-day jury trial, the trial court granted Manatt’s motion for nonsuit or directed verdict, finding that Manatt had probable cause to prosecute those claims. We reverse.

We conclude that, based on the record before us, no reasonable attorney could find tenable the false advertising claim as it was alleged and litigated in the underlying action. Therefore, we hold there was no probable cause to prosecute that claim.

We also hold there was no probable cause to prosecute the trademark dilution claim because no reasonable attorney could conclude that the claim could satisfy two fundamental, long-standing principles of trademark law. First, to be protectable as a trademark, a word, phrase, name, or symbol must be used in commerce to identify goods or services and their source. Although Manatt contends that Princess Diana used her name in connection with her appearances at charitable events, that use does not demonstrate trademark use. Second, a trademark that is descriptive—such as a personal name—must acquire secondary meaning to be protectable in a trademark dilution action. In other words, the primary meaning of the mark (i.e., the descriptive meaning) must in the minds of the public be subordinate to its meaning as the source of goods or services. Because “Diana, Princess of Wales” has such an extraordinarily strong primary meaning as descriptive of Princess Diana as a person, the contention that it had acquired secondary meaning at the time of the underlying lawsuit was, as the district court in the underlying lawsuit observed, “absurd.” (Cairns v. Franklin Mint Co. (C.D.Cal. 2000) 107 F.Supp.2d 1212, 1222 (Cairns III).) Therefore, we conclude that the trademark dilution claim was untenable.

Manatt argues, however, that we should not find that the claim lacked probable cause, because the issues are complex and there is no directly controlling authority. But the fundamental principles of trademark law—a trademark must identify a source of a product or service, and a descriptive mark such as a personal name must acquire secondary meaning in the minds of the public—were clear and well established, and their application to this case is straightforward and uncomplicated. The complexity of the issues arises only from Manatt’s attempts to avoid those fundamental principles. Accordingly, we reverse the judgment and remand for trial on malice and damages issues.

BACKGROUND

The parties’ briefs on appeal contain extensive discussion of the factual background of this case, including many facts relevant only to the issue of malice. Because the only issue in this appeal is whether there was probable cause for the trademark dilution and false advertising claims, our discussion of the facts will be limited to those facts relevant to that issue.

A. Events Leading up to the Underlying Lawsuit

From the time of her engagement to Charles, Prince of Wales, in 1981, until her untimely death on August 31, 1997, Diana, Princess of Wales (Princess Diana) “was one of the most beloved, most photographed and most talked about celebrities” of the latter part of the 20th century. (Cairns v. Franklin Mint Co. (C.D.Cal. 1998) 24 F.Supp.2d 1013, 1021 (Cairns I).) During her lifetime, Franklin Mint, a direct mail marketer of collectible memorabilia, sold over $9 million of products related to Princess Diana.

Immediately after her death, Franklin Mint decided to design a line of products featuring Princess Diana, including one product from which all proceeds would be donated to charity in her honor. On September 5, 1997, the vice-president and general counsel of Franklin Mint, Howard Lucker, wrote to the trustees of The Diana, Princess of Wales Memorial Fund, which was a charitable trust established on September 4, 1997, at the direction of the executors of Princess Diana’s estate, to receive contributions made in her memory. Lucker informed the trustees that Franklin Mint wanted to create and market a collectible porcelain plate in tribute to Princess Diana, from which all net proceeds would be donated to her favorite charities, and proposed that the Fund distribute those proceeds. Lucker stated that, if Franklin Mint and the Fund were able to come to an agreement quickly, Franklin Mint could advertise that it was officially authorized by the Fund and that all profits would be donated to the Fund.

The Fund did not immediately respond. Franklin Mint then decided that it would donate all proceeds from the tribute plate to charity. On September 9, 1997, Franklin Mint issued a press release stating that it was developing a tribute plate at its own expense and that all of the proceeds from the sale of the plate “will go directly to The Diana, Princess of Wales Charities.” Five days later, it ran print advertisements for the tribute plate that featured a picture of the plate and stated, “All proceeds to go to Diana, Princess of Wales’ Charities” and “100% of your purchase price will be donated to Diana, Princess of Wales’ favorite charities.” The Fund eventually declined Franklin Mint’s proposal on October 31, 1997.

Because Franklin Mint wanted to “associate” its Princess Diana collectibles with donations to charities that supported causes that were important to her, and the Fund was not responsive to its proposal, Franklin Mint entered into an agreement with the Great Ormond Street Hospital for Children (a charity in England with which Princess Diana had been involved). Under that agreement, the charity allowed Franklin Mint to use its name in advertising Princess Diana collectibles in exchange for a promise by Franklin Mint to donate a minimum of £250,000 to the charity from sales of the tribute plate. Franklin Mint ultimately paid over $1.5 million to Great Ormond Street Hospital for Children from sales of the tribute plate outside the United States.

At some point, Franklin Mint stopped running advertisements for the tribute plate that included the “all proceeds” language, although it continued to advertise the tribute plate. Those later advertisements, as well as additional advertisements for other Princess Diana collectibles, instead included a statement that Franklin Mint had pledged a minimum of $1.5 million worldwide to charity in tribute to Princess Diana. Franklin Mint included a “response code” on all of its advertisements so it could track which purchases came from each advertisement. When a customer sent in the coupon at the bottom of the advertisement to purchase an item, the response code was printed on the coupon, and if the customer called Franklin Mint to order an item, the customer service representative asked for the response code; Franklin Mint sorted all purchases by response code. Using the response code, Franklin Mint was able to determine that the “all proceeds” tribute plate advertisement generated approximately $2.5 million in sales, and the tribute plate advertisement without the “all proceeds” language generated approximately $3.5 million in sales in the United States, and $3.5 million to $4 million in sales outside the United States ($1.5 million of which was paid to Great Ormond Street Hospital for Children). Franklin Mint eventually inter-pleaded with the district court in the underlying lawsuit $2,527,107, from sales attributable to the “all proceeds” advertisement, to be distributed to charity upon resolution of the lawsuit.

B. The Underlying Lawsuit

1. Princess Diana’s estate and the Fund retain United States attorneys

By the middle of September 1997, Princess Diana’s estate had retained an attorney in New York who specialized in intellectual property litigation, Paul LiCalsi, to advise it about intellectual property issues in the United States. The estate was aware of the advertisement for the tribute plate, which had run in The New York Times on September 16, 1997. It also was aware that, a few weeks before Princess Diana’s death and in the weeks after, Franklin Mint had applied to the United States Patent and Trademark Office to register various trademarks related to its Princess Diana products, all of which used some form of Princess Diana’s name or nicknames (such as “The People’s Princess”). On September 19, 1997, LiCalsi advised the estate that a “cease and desist” letter should be sent to Franklin Mint, and a few days later he sent to the attorneys in England who represented the estate a draft of a proposed letter to Franklin Mint. That draft letter stated that Franklin Mint’s use of Princess Diana’s name and likeness in its advertisements “not only violate[s] many states’ laws of publicity, but also violate[s] federal trademark law in that they are so orchestrated as to mislead the public that they were sponsored or approved by Princess Diana or her personal representatives.” He did not send the letter because he was told that counsel for the Fund would take over that function.

The Fund had hired separate counsel in New York to represent its interests. On September 25, 1997, that attorney, Randy Lipsitz, sent a letter to counsel for Franklin Mint, stating that the Fund “owns the worldwide trademark rights concerning Princess Diana including, but not limited to the Diana, Princess of Wales and Diana, Princess of Wales Memorial Fund names and trademarks.” The Fund then asked Lipsitz to consider whether litigation should be instituted against Franklin Mint. Lipsitz wrote to the Fund’s English attorneys on October 14, 1997, recommending that litigation be commenced in California, with the estate as coplaintiff, asserting causes of action under Lanham Act section 43(a) for false designation of origin (15 U.S.C. § 1125(a)(1)(A)) and under section 43(c) for trademark dilution (15 U.S.C. § 1125(c)). He provided no legal analysis in the letter.

Institution of litigation was delayed, however, due to complications that arose regarding the transfer of Princess Diana’s name and likeness rights from her estate to the Fund. Eventually, the estate granted exclusive licenses to the name and likeness rights in Princess Diana to the Fund. Those licenses were not approved by the Charities Commission in England and Wales until February 27, 1998.

2. The Fund hires Manatt to file a lawsuit against Franklin Mint

In the meantime, on October 9, 1997, defendant Lee wrote to English counsel for Princess Diana’s estate. He introduced himself, and said that his office was representing Tiger Woods in litigation against Franklin Mint. He noted that during the course of that litigation, he discovered that Franklin Mint was planning to exploit Princess Diana’s name and likeness. He said that Franklin Mint had applied for a trademark in the phrase “Diana, A Princess Forever” shortly before her death, and that it recently began advertising a “Commemorative Plate” featuring Princess Diana’s name and image. He commented that “[t]he advertisement states that all proceeds from the sale will go to ‘Diana, Princess of Wales’ charities,’ but based on our experience in the [Tiger Woods] litigation we are not confident this will actually occur.” He explained that “there are several avenues available to Princess Diana’s estate under U.S. laws” to prevent unauthorized commercial exploitation of her name and image, and mentioned that “legal theories of unfair competition and what is known as the ‘right of publicity’ provides significant remedies through litigation.” He closed by inviting counsel to contact him if he could be of further assistance to the estate.

English counsel for the Fund contacted Lee sometime in early to mid-March 1998, and retained him in late March 1998 (sometime around Mar. 27, 1998) to conduct the litigation against Franklin Mint. Lee spoke by telephone with LiCalsi, the New York attorney representing Princess Diana’s estate, a few times in late March, and faxed him a draft of the complaint on March 31. After receiving the draft complaint, LiCalsi spoke to Lee about certain issues, including the trademark dilution claim. LiCalsi asked Lee “about the issue of establishing secondary meaning for Princess Diana under trademark law,” and specifically, “whether the fact that she had not been in commerce prior to her death, would that affect the secondary meaning issue.” According to LiCalsi, Lee “indicated that there was substantial case law which supported using Princess Diana’s very well-known charitable activities as a basis for establishing secondary meaning.” LiCalsi relied upon Lee’s statement as being accurate. He returned Lee’s draft complaint to Lee with a few minor suggested changes.

3. The complaint

On May 18, 1998, Manatt, representing the Fund and the executors of Princess Diana’s estate, filed the complaint in federal district court. The complaint alleged five causes of action against Franklin Mint, Roll International Corporation, Inc., and Stewart and Lynda Resnick: (1) false designation of origin under the Lanham Act (15 U.S.C. § 1125(a)); (2) trademark dilution under the Lanham Act (15 U.S.C. § 1125(c)); (3) infringement of the California statutory right of publicity (Civ. Code, former § 990, amended and renumbered as Civ. Code, § 3344.1); (4) false advertising under the Lanham Act (15 U.S.C. § 1125(a)); and (5) unfair competition and false and misleading advertising under Business and Professions Code sections 17200 and 17500.

The complaint alleged that Princess Diana “was one of the best known and most widely admired public figures of the last half of the 20th century” and “for 16 years was the object of intensive public interest and media scrutiny.” It went on to allege that “[a]s a member of the British Royal family and a tireless worker for charitable causes, Princess Diana’s name, likeness and image have become uniquely identifiable throughout the United States and the world, have achieved extraordinary fame, are identified in the minds of the public as the source of the charitable activities which Princess Diana performed, and possess a valuable goodwill.” The complaint alleged that after Princess Diana’s death, “[h]er assets, including the rights to her name, likeness, image and marks, passed by will to the Estate,” which granted exclusive licenses to Princess Diana’s name and likenesses and the trademarks “Diana, Princess of Wales” and “Diana, Princess of Wales Memorial Fund” to the Fund. It asserted that, both before and immediately after her death, Franklin Mint filed applications for trademarks for Princess Diana’s name, image, and phrases identified in the public’s mind with Princess Diana, and used Princess Diana’s name and image on products and in advertising. Finally, the complaint alleged that, by using Princess Diana’s name and likeness on products and in advertising, Franklin Mint was falsely and misleadingly implying an endorsement, association, or affiliation with Princess Diana, her estate, and the Fund.

The false designation of origin (also known as false endorsement) cause of action simply incorporated all of the previous allegations and requested injunctive and monetary relief, destruction of infringing articles, treble damages, and cost and attorney fees.

The trademark dilution claim alleged that the Fund’s “mark” was inherently distinctive and had acquired distinction “from its past use for charitable activities” such that Princess Diana’s name and image had come to mean and be recognized as distinctive marks that identify the source of the charitable activities of Princess Diana. It alleged that “[the] marks including ‘Diana Princess of Wales’ and ‘Diana Princess of Wales Memorial Fund’ are famous and distinctive within the meaning of [the Lanham Act]” and that Franklin Mint’s unauthorized use of those marks had caused and would continue to cause dilution of the Fund’s marks.

The right of publicity claim alleged that Franklin Mint had willfully misappropriated the Fund’s rights under Civil Code former section 990 (now Civ. Code, § 3344.1), causing the Fund irreparable harm.

The false advertising claim alleged that Franklin Mint had carried out “a large scale program of deceptive advertising” in which it made misleading and deceptive representations about the use of the proceeds from the sale of its products. It alleged that “[a]mong the false and misleading representations made by Defendants are, inter alia, that ‘100% of the . . . price [of Defendants’ dolls and plates] will be donated to Diana, Princess of Wales’ charities’ and that ‘all proceeds to go to Diana, Princess of Wales’ Charities.’ ” (Original ellipsis & bracketed addition.) The claim asserted that those representations were false “in that Defendants have never donated a penny to the Fund,” and that the Fund had been and would continue to be damaged by the false advertisements in that the advertisements attempt to benefit from the goodwill associated with Princess Diana’s identity. The claim also included the following allegation: “As a result of Defendants’ representations, members of the public are induced to purchase Defendants’ dolls and plates in the mistaken belief that Defendants’ products are endorsed by and/or associated or affiliated with Princess Diana, her Estate, and/or the Fund.”

The state law unfair competition and false and misleading advertising claim basically repeated the previous claim’s allegations regarding the false and misleading advertisements and sought injunctive relief.

4. The right of publicity claim is dismissed and the remaining claims are disposed of on summary judgment

Franklin Mint moved to dismiss each of the claims, and moved to strike certain inflammatory language referring to Franklin Mint and the other defendants as “vultures feeding on the dead”; the Fund moved for a preliminary injunction with respect to the false endorsement, false advertising, and trademark dilution claims. The district court granted Franklin Mint’s motion to dismiss with respect to the right of publicity claim, on the ground that the law of Great Britain (which does not recognize a right of publicity) applied, and granted the motion to strike the inflammatory language. (Cairns I, supra, 24 F.Supp.2d at pp. 1022-1023.) The court denied the motion to dismiss the remaining claims and denied the motion for a preliminary injunction. (Ibid.)

With regard to the trademark dilution claim, the district court noted that a party alleging trademark dilution with respect to a personal name asserted as a mark must allege that the mark has acquired secondary meaning. The court observed that the Fund had made such an allegation, by alleging that Princess Diana’s name and image had come to mean and be recognized as distinctive marks that identify the source of the charitable activities of Princess Diana. (Cairns I, supra, 24 F.Supp.2d at pp. 1034-1035.) Although the court indicated that “Diana, Princess of Wales has such a clear primary meaning as a description of the person herself that it seems unlikely that any secondary meaning could be acquired in her name, at least in the context of fund-raising for charitable services similar to those she was allegedly famous for endorsing,” the court concluded that it was required to take the allegations as true on a motion to dismiss and therefore denied the motion as to the trademark dilution claim. (Id. at p. 1036.) The court also denied the Fund’s motion for a preliminary injunction with respect to that claim, finding that the Fund did not show it had a fair chance of succeeding on the merits of the claim because the evidence presented did not suggest it could establish that Princess Diana’s name or likeness had acquired secondary meaning. (Id. at p. 1044.)

With regard to the false advertising claim, the district court denied Franklin Mint’s motion to dismiss because it found that the Fund had adequately alleged that Franklin Mint’s advertisements falsely implied that it would donate proceeds to the Fund and/or that Princess Diana and the Fund endorsed Franklin Mint’s products or advertisements. (Cairns I, supra, 24 F.Supp.2d at p. 1036.) But the court denied the Fund’s motion for preliminary injunction on that claim because it found that the Fund did not provide sufficient evidence to support a finding that it had a fair chance of demonstrating the likelihood of confusion necessary to prove false endorsement, and because “neither the Court’s reading of the advertisements nor the record before the Court supports [the Fund’s] position . . .” that the advertisements falsely imply that proceeds would be donated to the Fund. (Id. at p. 1043.)

The Fund appealed the dismissal of the right of publicity claim and the denial of the motion for preliminary injunction. The Ninth Circuit affirmed the district court. (The Diana Princess of Wales Memorial Fund v. Franklin Mint (9th Cir., Feb. 24, 2000, Nos. 98-56722, 99-55157) 1999 WL 1278044.) With respect to the trademark dilution claim, the circuit court stated: “The name ‘Diana, Princess of Wales’ has not acquired a secondary meaning such that it is synonymous in the public mind with charitable activities. [Citation.] While Princess Diana received a great deal of media attention for her charitable acts, she received equal if not greater attention for her status as a member of England’s royal family, her divorce from Prince Charles, and her tragic death. Thus, the district court’s finding that the Estate/Fund had failed to show a fair chance of success on their trademark dilution claim was not an abuse of discretion.” (Id. at p. *4.) With respect to the false advertising claim, the circuit court noted that the Fund did not challenge the district court’s holding regarding whether Franklin Mint’s advertisements falsely implied that proceeds would be donated to the Fund. (Id. at p. *4, fn. 5.)

Franklin Mint subsequently moved for summary judgment, which the district court granted. With regard to the trademark dilution claim, the court noted that the Fund was required to demonstrate that Diana, Princess of Wales had acquired secondary meaning as to charitable and humanitarian services. It observed, “[i]n this case, secondary meaning would occur when, ‘in the minds of the public, the primary significance of a [mark]’ identifies charitable and humanitarian services rather than Princess Diana the individual.” (Cairns III, supra, 107 F.Supp.2d at p. 1222.) It continued: “Although Princess Diana is certainly well-recognized for her humanitarian work and fund-raising, she is undisputably also well-recognized for her status as a member of the royal family, her role as a mother, and her image as a fashionable princess. A finding of secondary meaning in this case would mean that the words ‘Diana, Princess of Wales’ would no longer primarily identify the individual, Princess Diana, but instead identify [the Fund’s] charitable activities. This is an absurd contention to say the least. ‘Diana, Princess of Wales’ has not, and the Court suspects, will never, acquire a secondary ■ meaning limited to charitable works. [Citation.] [f] Because secondary meaning is required for an otherwise descriptive name to be ‘famous,’ and famousness is required for protection under 15 U.S.C. § 1125(c)(1), [Franklin Mint is] entitled to summary adjudication of [the Fund’s] claim for dilution.” (Ibid.)

In granting summary adjudication of the false advertising claim, the district court observed that the claim as alleged in the complaint—and as argued in opposition to Franklin Mint’s motion for summary judgment—was based upon the assertion that advertisements saying that “all proceeds” or “100% of the proceeds” from sales of Franklin Mint products would go to charity were false because Franklin Mint “retained ‘many times more from [its] sales of Princess Diana merchandise than they have “pledged” to charity.’ ” (Cairns III, supra, 107 F.Supp.2d at p. 1223, quoting the Fund’s opposition to Franklin Mint’s motion for summary judgment.) The court also noted that only one of the advertisements before the court included the “all proceeds” or “100% of the proceeds” language—the advertisement for the tribute plate— and that uncontroverted evidence demonstrated that Franklin Mint contributed $1,538,640 to the Great Ormond Street Hospital for Children and had interpleaded another $2,527,107 with the court to be given to charity upon resolution of the lawsuit. In light of evidence that the amount of money given to charity reflected the amount of cash Franklin Mint collected from sales associated with that advertisement, the court concluded that undisputed evidence established that the “all proceeds” advertisement (which was the only advertisement the Fund pointed to) was literally true. (Ibid.)

5. Franklin Mint is awarded attorney fees under the Lanham Act

Franklin Mint moved for attorney fees under the Lanham Act. In ruling on the motion, the district court noted that the Lanham Act permits an award of attorney fees to a prevailing party only “ ‘in exceptional circumstances,’ ” which “ ‘can be found when the non-prevailing party’s case “is groundless, unreasonable, vexatious, or pursued in bad faith.” ’ ” (Cairns v. Franklin Mint Co. (C.D.Cal. 2000) 115 F.Supp.2d 1185, 1187 (Cairns IV).) The court examined the three Lanham Act claims that the Fund alleged—false endorsement, trademark dilution, and false advertising—in light of this standard.

Addressing the false endorsement claim, the court observed that, “[a]l-though it is clear that this case was well outside the bounds of any previous decision, [the Fund’s false endorsement] claim could be considered an attempt to extend existing law,” and therefore did not “rise to the level of ‘groundless, unreasonable, vexatious or bad faith.’ ” (Cairns IV, supra, 115 F.Supp.2d at p. 1188.) The court continued: “In contrast, [the Fund’s] claims for dilution and false advertising were groundless and unreasonable. Unlike the endorsement claim which could be considered argument for an extension of existing law, the dilution claim had no legal basis.” (Ibid.) The court noted that the dilution claim “was based on the ‘absurd’ contention that ‘Diana, Princess of Wales’ had taken on a meaning other than identification of an individual,” and remarked that arguing that that name had acquired secondary meaning “falls just short of frivolous.” (Id. at p. 1189.) The court also noted that the false advertising claim was groundless because the statements at issue were true, and the Fund presented no evidence to cast doubt on their veracity. The court concluded that the claim also was unreasonable because the Fund “should have either not brought the claim in the first instance, or voluntarily dismissed it when it was clear that there was no evidence to support it.” (Ibid.)

Having found that the trademark dilution and false advertising claims were groundless and unreasonable, the district court awarded Franklin Mint $1,635,000 for defending those two claims.

6. The judgment becomes final and Franklin Mint disburses the funds that had been interpleaded

The Fund appealed from the denial of its motion to reinstate the right of publicity claim, the summary adjudication of the false endorsement claim, and the award of attorney fees. (Cairns v. Franklin Mint Co. (9th Cir. 2002) 292 F.3d 1139, 1144 (Cairns V).) The Ninth Circuit affirmed all three orders in June 2002. (Id. at p. 1159.)

At some point after the litigation was over, the $2.5 million that had been interpleaded with the district court was returned to Franklin Mint. Franklin Mint then distributed the money to several charities in the United States that Franklin Mint determined supported causes that Princess Diana had supported. Only one of those charities, however, had a direct connection with Princess Diana—The Breast Cancer Research Foundation, to which Princess Diana had donated a dress for a fund-raiser. Most of the remaining charities focused on medical issues or education and arts programs for underprivileged children or adults.

C. The Present Lawsuit

On November 15, 2002, Franklin Mint filed the instant lawsuit against Manatt and the Fund, alleging a single cause of action for malicious prosecution of the trademark dilution and false advertising claims. Manatt moved for summary judgment on the ground that there was probable cause for both claims. The trial court (Hon. John P. Shook, presiding) denied the motion, declaring that neither claim was tenable.

With respect to the trademark dilution claim, the court found (1) that Manatt had “failed to produce any evidence that Princess Diana’s name is inherently distinctive as opposed to descriptive of the person Princess Diana”; (2) that “[t]he name Diana, Princess of Wales has not acquired a secondary meaning attributable to her charitable activities”; and (3) that the items Manatt submitted to show “Princess Diana’s name being used in conjunction with certain charity events ... do not mention any services she provided.” With respect to the false advertising claim, the court found that Manatt “provided no evidence [Franklin Mint] had misled a substantial segment of its advertising audience regarding [Franklin Mint’s] donation of proceeds to charity. The evidence presented [in the underlying lawsuit], of which [Manatt was] aware, was that [Franklin Mint] had donated a portion of the more than $4 million in sales to one of Princess Diana’s favorite charities and had inteipled the balance into district court. The evidence was uncontroverted then and remains so, even in this lawsuit.”

The case went to trial before a different judge (Hon. Warren L. Ettinger). Both parties filed pretrial briefs on the issue of probable cause, in which Franklin Mint argued that the issue could be decided by the court based upon undisputed facts, while Manatt argued that there were factual issues that needed to be decided by the jury before the court could rule on probable cause. The case proceeded to jury trial, without a prior determination regarding probable cause. After Franklin Mint rested, Manatt filed a motion for nonsuit based on probable cause. The trial court did not rule on the motion at that time, and the jury trial continued. Shortly before the close of evidence, the court stated that it would allow Manatt to orally supplement the motion in order to consider it as a motion for a directed verdict.

The parties argued the issue of probable cause following the close of evidence. After extensive argument, the trial court stated its ruling: “[I]t seems to me that it is overwhelmingly clear that Mr. Lee had probable cause to bring his action and indeed confronted by a client seeking a remedy . . . and having consulted with other lawyers to determine whether or not that client’s cause had merit, had he failed to file a cause of action, one would have had a serious question of whether or not he committed malpractice.”

Based on its finding that there was probable cause to prosecute the underlying lawsuit, the court entered judgment in favor of Manatt. Franklin Mint timely filed a notice of appeal from the judgment.

DISCUSSION

Franklin Mint contends the trial court improperly ruled that Manatt had probable cause to prosecute the trademark dilution and false advertising claims because (1) Manatt is bound by the district court rulings in the underlying case that those claims were “groundless and unreasonable”; (2) the Fund did not own a protectable trademark in Princess Diana’s name or image; and (3) the Fund did not have standing to bring a false advertising claim and lacked evidence to show that the advertisements at issue were false.

A. Effect of District Court Rulings

As noted above, the district court in the underlying case awarded Franklin Mint its attorney fees under the Lanham Act (15 U.S.C. § 1117(a)), finding that the trademark dilution claim “had no legal basis” and that there was no reasonable basis to believe that the advertising at issue was false, and therefore both claims were “groundless and unreasonable.” (Cairns IV, supra, 115 F.Supp.2d at pp. 1188-1189.) Franklin Mint argues that the district court’s ruling establishes that there was no probable cause to prosecute those claims and that, under the principles of collateral estoppel, Manatt is barred from relitigating probable cause. Manatt contends that Franklin Mint failed to preserve the collateral estoppel issue on appeal because it failed to present evidence in the trial court to support its argument, failed to obtain a ruling on the issue, and expressly waived the issue during the hearing on probable cause in the trial court. Manatt is correct.

“[C]ollateral estoppel must be proved [in the trial court] or it is waived.” (Jordan v. Consolidated Mut. Ins. Co. (1976) 59 Cal.App.3d 26, 45 [130 Cal.Rptr. 446].) Although Franklin Mint made references to the collateral estoppel effect of the district court rulings, it did not identify the elements of collateral estoppel, let alone attempt to apply the facts of the case to those elements. Indeed, Franklin Mint never attempted in the trial court to submit evidence from the underlying proceedings to prove that the same issues were tried and determined in that action. (See Haun v. Hyman (1963) 223 Cal.App.2d 615, 619 [36 Cal.Rptr. 84] [“a party relying upon the doctrine of collateral estoppel has the burden of proving that a particular issue was actually tried and determined in the prior action”].) In any event, Franklin Mint waived the issue during the hearing on the probable cause issue, by failing to argue that the district court decisions were binding on Manatt under collateral estoppel and instead stating that the district court “decisions are not binding on a state court.” We note, however, that even though the district court rulings are not binding in this case, they nevertheless can be considered as evidence relevant to the issue of probable cause. (Mattel, Inc. v. Luce, Forward, Hamilton & Scripps (2002) 99 Cal.App.4th 1179, 1191 [121 Cal.Rptr.2d 794].)

B. Probable Cause in a Malicious Prosecution Case

To establish a cause of action for malicious prosecution, a plaintiff must prove that the underlying action was (1) terminated in the plaintiffs favor, (2) prosecuted without probable cause, and (3) initiated with malice. (Tamos v. Stroud (2004) 32 Cal.4th 958, 966, 973 [12 Cal.Rptr.3d 54, 87 P.3d 802].) A claim for malicious prosecution need not be addressed to an entire lawsuit; it may, as in this case, be based upon only some of the causes of action alleged in the underlying lawsuit. (Bertero v. National General Corp. (1974) 13 Cal.3d 43, 57 [118 Cal.Rptr. 184, 529 P.2d 608] [“We see no reason for permitting plaintiffs ... to pursue shotgun tactics by proceeding on counts and theories which they know or should know to be groundless.”]; see also Crowley v. Katleman (1994) 8 Cal.4th 666 [34 Cal.Rptr.2d 386, 881 P.2d 1083] [reaffirming Bertero].) In this appeal, we are concerned only with the second element, i.e., whether there was probable cause to prosecute the claims for trademark dilution and false advertising.

The existence or absence of probable cause is a question of law to be determined by the court from the facts established in the case. (Sheldon Appel Co. v. Albert & Oliker (1989) 47 Cal.3d 863, 875 [254 Cal.Rptr. 336, 765 P.2d 498] (Sheldon Appel).) “The question whether, on a given set of facts, there was probable cause to institute an action requires a sensitive evaluation of legal principles and precedents . . . .” (Ibid.) This is because “ ‘[c]ounsel and their clients have a right to present issues that are arguably correct, even if it is extremely unlikely that they will win ....’” (Id. at p. 885.) Thus, the court “must properly take into account the evolutionary potential of legal principles” and determine, in light of the facts known to counsel, “whether any reasonable attorney would have thought the claim tenable.” (Id. at p. 886; see also Leonardini v. Shell Oil Co. (1989) 216 Cal.App.3d 547, 568 [264 Cal.Rptr. 883] [“A litigant will lack probable cause for his action if he relies upon facts which he has no reasonable cause to believe to be true, or seeks recovery upon a legal theory which is untenable under the facts known to him.”].) This is an objective standard, and does not take into account the subjective mental state of the defendant; if the underlying claims were objectively tenable, the malicious prosecution claim fails, regardless of any evidence of malice on the part of the defendant. (Sheldon Appel, supra, 47 Cal.3d at p. 878.)

With this objective standard in mind, we examine the trademark dilution and false advertising claims in light of relevant legal principles and precedents and the relevant facts.

C. There Was No Probable Cause to Prosecute the Trademark Dilution Claim

The trademark dilution claim at issue here was alleged under the Federal Trademark Dilution Act of 1995, which provided in relevant part: “The owner of a famous mark shall be entitled ... to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark . . . .” (15 U.S.C. former § 1125(c)(1); Pub.L. No. 104-98, § 3(a), 109 Stat. 985.) To prove a dilution claim a plaintiff must show that he or she owns a mark, and that “(1) the mark is famous; (2) the defendant is making a commercial use of the mark in commerce; (3) the defendant’s use began after the mark became famous; and (4) the defendant’s use of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and distinguish goods and services.” (Panavision Internat, L.P. v. Toeppen (9th Cir. 1998) 141 F.3d 1316, 1324.)

Franklin Mint contends that Manatt lacked probable cause to prosecute a trademark dilution claim against it because the Fund had no plausible claim that Princess Diana used her name or image as a trademark (which passed to the Fund after her death), but even if Princess Diana did use her name or image as a trademark, no reasonable attorney would argue that “Diana, Princess of Wales” or Princess Diana’s likeness had acquired the secondary meaning necessary to qualify for protection under the Federal Trademark Dilution Act of 1995. We agree.

1. There is no legally tenable argument that Princess Diana used “Diana, Princess of Wales” as a trademark

The Lanham Act defines a trademark or service mark as a “word, name, symbol, or device, or any combination thereof’ that is used by a person “to identify and distinguish” that person’s goods or services from the goods or services of others and to indicate the source of the goods or services. (15 U.S.C. § 1127.) “Implicit in this statutory definition is a requirement that there be a direct association between the mark . . . and the services specified in the application, i.e., that it be used in such a manner that it would be readily perceived as identifying such services.” (In re Moody’s Investors Service, Inc. (T.T.A.B. 1989) 13 U.S.P.Q.2d 2043, 2047; accord, Self-Realization Fellowship Church v. Ananda (9th Cir. 1995) 59 F.3d 902, 906-907.)

Manatt contends that the mark at issue—Princess Diana’s name and likeness—qualifies as a trademark because it was used on promotional materials to inform the public that she would perform a service. Manatt identifies that service as “promoting charities through personal appearances.”

Initially, a question arises whether simply making personal appearances is a cognizable service under the Lanham Act. In its respondent’s brief, Manatt seems to assume it is, and compares Princess Diana’s use of her name to promote her appearances to Johnny Carson’s and Elvis Presley’s use of their names to “promote [their] appearance” at clubs or concerts. But Johnny Carson and Elvis Presley obtained trademarks in their names (see In re Carson (T.T.A.B. 1977) 197 U.S.P.Q. 554; Estate of Presley v. Russen (D.N.J. 1981) 513 F.Supp. 1339), not because they used their names in conjunction with merely appearing at certain venues, but because they used their names “in close association with a clear reference ... to entertainment services” they provided at those venues. (Estate of Presley v. Russen, supra, 513 F.Supp. at p. 1363, italics added.) Indeed, Carson’s initial application to register his name as a service mark failed because he did not show that he used his name with a clear reference to the services he performed: the specimens he filed to show use of the name “JOHNNY CARSON” as a service mark were copies of a page from a newspaper showing his picture and the words “ ‘JOHNNY CARSON is in the Congo Room at Del Webb’s hotel Sahara with Bette Midler.’ ” The Examiner of Trademarks rejected those specimens because they contained no reference to the services to be performed, even though they clearly referred to his appearance in the Congo Room. (In re Carson, supra, 197 U.S.P.Q. at p. 555.) Carson succeeded in registering his service mark only after he submitted additional specimens that used the mark in connection with the words “ ‘IN CONCERT.’ ” (Ibid.)

Thus, it is not enough for a person to use his or her name or likeness in connection with simply making appearances. That person may obtain a trademark only if his or her name or likeness was used as a trademark—in other words, it was being used “in such a manner that it would be readily perceived as identifying . . . services.” (In re Moody’s Investors Service, Inc., supra, 13 U.S.P.Q.2d at p. 2047.) As the Trademark Trial and Appeal Board explained in In re Carson, “the name of an individual may function not only to identify the individual but also as a trademark or service mark to identify goods sold or services rendered by the individual ... in commerce,” but to qualify as a trademark, there must be evidence of “use of the name not just to identify the individual but rather to identify goods sold or services rendered by the applicant in commerce.” (In re Carson, supra, 197 U.S.P.Q. at p. 555, citing In re Lee Trevino Enterprises, Inc. (T.T.A.B. 1974) 182 U.S.P.Q. 253 [application to register “LEE TREVINO” as a service mark for promoting goods or services of others by means of endorsements, golfing exhibitions, and personal appearances by golfer Lee Trevino was denied because the name was not set off in a service mark manner but rather was used as part of a textual reference to Lee Trevino as an individual].)

Here, there is no dispute that Princess Diana supported many charities and promoted them through personal appearances. But the question that must be answered is, is there a tenable argument that she used her name and likeness as a trademark in connection with providing services? The judge who denied Manatí’s motion for summary judgment on the probable cause issue (a different judge than the judge who presided over the trial) indicated that she did not, when he observed that the items Manatt submitted in support of its motion, purportedly to demonstrate Princess Diana’s use of her name in connection with charitable events, “do not mention any services she provided.” (Italics added.) And while Manatt asserts that Princess Diana exercised significant control over the use of her name and image in connection with her appearances at charitable events or promotion of charities, that fact is not particularly relevant here. Under In re Lee Trevino Enterprises, Inc., supra, 182 U.S.P.Q. 253, if Princess Diana’s name was used only as part of a textual reference to Princess Diana as an individual (i.e., that she would be appearing at, or supporting, a charitable event), even if Princess Diana exercised significant control over that use of her name, her name was not used in a service mark manner and therefore did not qualify as a trademark. Given Manatí’s own description of the purported services Princess Diana provided—“promoting charities through personal appearances”—we cannot conclude that “any reasonable attorney would have thought” a tenable legal argument could be made that Princess Diana used her name or likeness as a trademark. (Sheldon Appel, supra, 47 Cal.3d at p. 886.)

2. There was no tenable argument that “Diana, Princess of Wales” acquired secondary meaning

A trademark may be protected under the common law or the Lanham Act if it is either inherently distinctive or has acquired distinctiveness. (Two Pesos, Inc. v. Taco Cabana, Inc. (1992) 505 U.S. 763, 769 [120 L.Ed.2d 615, 112 S.Ct. 2753].) Inherently distinctive trademarks—such as fanciful, arbitrary, or suggestive words and symbols—are protected “because their intrinsic nature serves to identify a particular source of a product [or service].” (Id. at p. 768.) But trademarks that are not inherently distinctive—such as descriptive words or symbols—are protected only if they have acquired secondary meaning, i.e., they “ ‘h[ave] become distinctive of the [owners’] goods [or services] in commerce.’ ” (Id. at p. 769.) Generally, “personal names are regarded as in the same category as descriptive terms” and “are placed by the common law into that category of noninherently distinctive terms which require proof of secondary meaning for protection.” (2 McCarthy, Trademarks and Unfair Competition (4th ed. 2010) § 13:2, p. 13-3 (McCarthy); see also Lane Capital Management v. Lane Capital Management (2d Cir. 1999) 192 F.3d 337, 345; Pirone v. MacMillan, Inc. (2d Cir. 1990) 894 F.2d 579, 583; Cairns I, supra, 24 F.Supp.2d at p. 1034; 4 Callmann, Unfair Competition, Trademarks and Monopolies (4th ed. 2009) § 22:42, pp. 22-549 to 22-550 (Callmann).)

Franklin Mint contends that, to establish secondary meaning, Manatt (in representing the Fund) was required to show that Princess Diana’s name or image “no longer describe[d her as an] individual but instead referred] to goods or services” she provided. It overstates the test somewhat. The Fund was not required to show that “Diana, Princess of Wales” no longer described Princess Diana as an individual. A trademark’s primary meaning does not need to disappear for the mark to acquire secondary meaning. (See 2 McCarthy, supra, § 15:1, p. 15-5.) But the mark’s primary (i.e., descriptive) meaning must be subordinate to its secondary meaning as an indicator of the source of goods or services. (See, e.g., Callmann, supra, § 22:42, p. 22-550 [where a name is used in connection with goods or services, “[n]o protection will be available if the name is merely descriptive; [fn. omitted] it may, however, enjoy trademark protection if its primary meaning is less significant than a secondary meaning it may have acquired”].)

The United States Supreme Court has explained that secondary meaning “occurs when, ‘in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.’ ” (Wal-Mart Stores, Inc. v. Samara Brothers Inc. (2000) 529 U.S. 205, 211 [146 L.Ed.2d 182, 120 S.Ct. 1339] (Wal-Mart), quoting Inwood Laboratories v. Ives Laboratories (1982) 456 U.S. 844, 851, fn. 11 [72 L.Ed.2d 606, 102 S.Ct. 2182].) Thus, in the underlying lawsuit here, the district court, relying upon Wal-Mart, stated: “In this case, secondary meaning would occur when, ‘in the minds of the public, the primary significance of a [mark]’ identifies charitable and humanitarian services rather than Princess Diana the individual.” (Cairns III, supra, 107 F.Supp.2d at p. 1222.)

Manatt argues that the district court was incorrect in its application of Wal-Mart. According to Manatt, even if the Wal-Mart language applies, the proper interpretation would be that “the Fund would have to show that the primary significance was to identify the source of the services rather than the services themselves.” Manatt’s assertion is belied by the footnote immediately following the quotation in Wal-Mart. (Wal-Mart, supra, 529 U.S. at p. 211, fn. *.) In that footnote, the Supreme Court explained that the phrase “secondary meaning” originally arose in the context of word marks “to distinguish the source-identifying meaning from the ordinary, or ‘primary,’ meaning of the word.” (Ibid.) Thus, the district court in the underlying case here correctly understood that, to prove secondary meaning, the Fund would have to show that the primary significance of “Diana, Princess of Wales” in the minds of the public was to the charitable services performed by Princess Diana (the source-identifying meaning) rather than to Princess Diana as an individual (the primary meaning of the words).

Manatt maintains, however, that the correct test for a celebrity’s name or image used as a trademark is found in cases such as Estate of Presley v. Russen, supra, 513 F.Supp. at page 1363, and Miller v. Glenn Miller Productions, Inc. (9th Cir. 2006) 454 F.3d 975, 991-992, where secondary meaning is found in a person’s name through use of the name in connection with entertainment services, even if the name continues to refer to the person. (Manatt also cites to In re Carson, supra, 197 U.S.P.Q. at p. 555 and Prudhomme v. Proctor & Gamble Co. (E.D.La. 1992) 800 F.Supp. 390, 394, involving celebrity chef Paul Prudhomme’s likeness, in support of its contention.) Manatt interprets those cases as standing for the proposition that Princess Diana could acquire a trademark in her name simply by using her name to promote her charitable appearances, without showing that her name no longer primarily referred to her as a person. That interpretation is untenable. First, as discussed in part C.I., ante, it is not sufficient for trademark purposes that Princess Diana’s name was used in the promotion of charity events as part of a textual reference to Princess Diana as an individual; the term “Diana, Princess of Wales” had to be used in a trademark sense, to identify services that were being performed. (In re Carson, supra, 197 U.S.P.Q. 554; In re Lee Trevino Enterprises, Inc., supra, 182 U.S.P.Q. 253.)

But more importantly, there is a critical distinction between the celebrity cases and the case of Princess Diana. Elvis Presley, Glenn Miller, Johnny Carson, and chef Paul Prudhomme achieved public name (or image) recognition in connection with their provision of services. Princess Diana did not. Thus, although the “primary meaning” of the celebrities’ names (or images) was to describe them as individuals, the public did not know their names or images except through their services, i.e., in the “secondary meaning” sense. In contrast, the public knew Princess Diana’s name and image, and came to strongly associate “Diana, Princess of Wales” with the person (the “primary meaning”), long before she became associated with charitable work. Therefore, unlike the previously unknown celebrities, whose names did not have a strong “primary meaning” to overcome in the mind of the public and could achieve secondary meaning simply by promoting their names in association with the entertainment services they provided, Princess Diana’s name had such an extraordinarily strong “primary meaning” it is doubtful that the words “Diana, Princess of Wales” could ever overcome that “primary meaning.”

In short, given the enormously widespread use of Princess Diana’s name and likeness to identify Princess Diana as an individual—Manatt itself described her in the underlying complaint as “one of the best known and most widely admired public figures of the last half of the 20th century” who “for 16 years was the object of intensive public interest and media scrutiny”—no reasonable attorney would contend, especially in the immediate aftermath of her death, that the primary significance of “Diana, Princess of Wales” was to identify the provider of charitable services rather than to identify Princess Diana herself. Thus, there was no probable cause to allege that “Diana, Princess of Wales” had acquired secondary meaning—a basic requirement for trademark protection of a descriptive personal name.

3. Manatt’s argument that the Fund did not need to prove secondary meaning ignores basic trademark law

Manatt argues that the general rule requiring proof of secondary meaning does not apply in this case because (a) “Diana, Princess of Wales” is inherently distinctive inasmuch as it identifies only one specific person, and therefore designates a single source; and (b) celebrity endorsement cases do not require secondary meaning when affording protection to a celebrity’s “persona” under the false designation of origin provision of the Lanham Act. As with Manatt’s other attempts to avoid well-established trademark law, neither argument is tenable. Moreover, even if Manatt were correct the Fund was not required to show secondary meaning to prove ownership of a protectable trademark, proof of secondary meaning nevertheless was required to establish that the alleged trademark met the requirements of a claim for trademark dilution.

a. Inherent Distinctiveness

In making the argument that “Diana, Princess of Wales” is inherently distinctive, Manatt correctly observes that inherently distinctive marks are those that uniquely identify a particular source of goods or services and therefore do not require a showing of secondary meaning. Because “Diana, Princess of Wales” can refer only to a single person, Manatt posits, it identifies a single source, and therefore is an inherently distinctive mark. But Manatt’s postulation focuses only on the “source designation” aspect of trademark and completely ignores the companion aspect, that the trademark must designate the source of goods or services. In doing so, Manatt overlooks a significant reason why personal name marks generally are considered a subset of descriptive marks: a personal name usually is understood to refer to a person rather than a provider of goods or services. (See Abdul-Jabbar v. General Motors Corp. (9th Cir. 1996) 85 F.3d 407, 412 [“an individual’s given name, unlike a trademark, has a life and a significance quite apart from the commercial realm”]; see also Pirone v. MacMillan, Inc., supra, 894 F.2d at p. 583 [“Personal names used as trademarks are generally treated as descriptive terms, since a name might be regarded as a convenient description of the fact that the individual was affiliated with the firm.”].)

Indeed, the fact that “Diana, Princess of Wales” can refer only to a single person (“one of the best known and most widely admired public figures of the last half of the 20th century,” according to the complaint Manatt filed in the underlying lawsuit) makes that term extraordinarily descriptive. The descriptive nature of the term is precisely why the case on which Manatt relies to support its assertion that the term is inherently distinctive is inapplicable.

In that case, Peaceable Planet, Inc. v. Ty, Inc. (7th Cir. 2004) 362 F.3d 986, the maker of a toy stuffed camel it named “Niles” sued a competitor for trademark infringement and false advertising after the competitor started marketing its own toy stuffed camel named “Niles.” The district court ruled that the original maker did not have a protectable trademark in the name “Niles” because it was a personal name and the maker had not shown secondary meaning. (Id. at p. 988.) The Seventh Circuit reversed. The appellate court found that the rule that personal name marks require secondary meaning did not apply because the name “Niles” was not descriptive of a toy camel, and its use for a toy camel did not trigger any of the reasons the court identified for applying the personal name rule. (Id. at pp. 989 [discussing three concerns that are reflected in the personal name rule], 990-991 [noting that “ ‘Niles,’ at least when affixed to a toy camel, is a suggestive mark . . . rather than ... a descriptive mark.”].) In short, the court concluded that “the ‘rule’ does not apply if the public is unlikely to understand the personal name as a personal name.” (Id. at p. 990.) The court conceded, however, that “[i]f people were asked what came to mind when they saw the word ‘Niles’ and they said a camel, there would be an argument that ‘Niles’ was a descriptive mark . . . ,” which would require secondary meaning to be protectable as a trademark. (Id. at p. 992.)

In this case, there is little question that if people were asked what came to mind when they saw the words “Diana, Princess of Wales,” they would say a person, Princess Diana (particularly in the months or first few years after her death, when the underlying lawsuit was being prosecuted). That those words can refer only to a single person does not make them inherently distinctive in the trademark protection sense. They remain descriptive for the purposes of trademark protection because they refer to a person, albeit a specific person, and thus require proof of secondary meaning to be protected as a trademark. No reasonable attorney, possessing a reasonable understanding of basic trademark law, would contend otherwise.

b. Celebrity Endorsement Cases

As further support for its assertion that proof of secondary meaning is not required in this case, Manatt relies upon several cases in which celebrities successfully sought protection under section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)) from the misuse by others of their names or other attributes, without having to prove secondary meaning. (E.g., White v. Samsung Electronics America, Inc. (9th Cir. 1992) 971 F.2d 1395; Waits v. Frito-Lay, Inc. (9th Cir. 1992) 978 F.2d 1093; Wendt v. Host Internat, Inc. (9th Cir. 1997) 125 F.3d 806; Downing v. Abercrombie & Fitch (9th Cir. 2001) 265 F.3d 994.) Manatt asserts that, because the courts in those cases referred to the celebrity’s name, persona, or other attribute as a “mark” without discussing secondary meaning, the cases stand for the proposition that no secondary meaning is required to find a trademark in a celebrity’s name. The cases do no such thing.

A plaintiff bringing a claim under section 43(a) of the Lanham Act (15 U.S.C. § 1125(a))—unlike a plaintiff bringing a trademark dilution claim under section 43(c) (15 U.S.C. § 1125(c))—is not required to prove that he or she has a valid trademark. Rather, the plaintiff must show that the defendant’s use in commerce of “any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact” in connection with the defendant’s goods or services “is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association” of the defendant with the plaintiff, “or as to the origin, sponsorship, or approval” of defendant’s goods or services by the plaintiff. (15 U.S.C. § 1125(a)(1).) In other words, if the defendant uses a name, symbol, or device in connection with his or her goods or services that is likely to cause confusion as to the defendant’s association with the plaintiff, or confusion as to whether the defendant’s goods or services were originated, sponsored, or approved by the plaintiff, the defendant is liable to the plaintiff for damages. While the terms used in the statute—“any word, term, name, symbol, or device” used “in connection with any goods or services” (ibid.)—are similar to the definition of “trademark” in the L