## Facts

- A nationally known racehorse, Ruffian, became the subject of a 2007 made-for-television film titled *Ruffian*, broadcast on ABC and produced with ESPN involvement; both entities were affiliated with Disney.
- Thoroughbred Legends, LLC (TL) pursued its own Ruffian-related entertainment project and applied in 2004 for a “RUFFIAN” service mark for entertainment services, including movie production.
- TL claimed rights in “RUFFIAN” for films, television, and books and alleged the broadcast and marketing of defendants’ film infringed those rights.
- Jacinto Vasquez (Ruffian’s jockey) and Frank Whiteley, Jr. (Ruffian’s trainer) alleged defendants used their names and portrayed them in the film after they declined to participate and objected to the use of their names.
- Plaintiffs sued asserting Lanham Act and parallel state trademark/unfair competition claims, along with Georgia-law claims including right of publicity and defamation-type theories.
- Defendants moved to dismiss; the court converted the motion to summary judgment as to trademark-based claims and treated the remainder under pleading standards.
- Plaintiffs sought additional discovery under Rule 56(f) (now Rule 56(d)) before summary judgment on the trademark issues.

## Issues

1. Whether plaintiffs owned a protectable trademark/service-mark interest in “RUFFIAN” sufficient to prevent defendants from using the horse’s name as the title and marketing identifier of an expressive film.
2. Whether defendants’ use of “Ruffian” created a likelihood of confusion as to source, sponsorship, or affiliation under the Lanham Act and analogous state-law theories.
3. Whether Georgia law permits right-of-publicity or related tort claims based on use of Vasquez’s and Whiteley’s names and portrayals in a dramatized film about a historical sporting event.
4. Whether plaintiffs plausibly alleged actionable defamation or misrepresentation based on specific portrayals and “true story” marketing.
5. Whether plaintiffs were entitled to additional discovery under Rule 56(f) before resolution of the trademark claims.

## Decision

- Granted summary judgment for defendants on the Lanham Act trademark-related claims and parallel state trademark/unfair competition claims.
- Denied plaintiffs’ Rule 56(f) request for additional discovery on the trademark issues, concluding further discovery would not alter the dispositive legal analysis.
- Granted in part and denied in part the motion to dismiss the non-trademark claims, permitting certain Georgia right-of-publicity and some defamation/misrepresentation-based claims to proceed while dismissing others.

## Legal Principles

- A trademark or service-mark claim requires a protectable mark and a likelihood of consumer confusion as to source, sponsorship, or affiliation.
- Use of the name of a famous historical subject as the title of an expressive work is generally not actionable under trademark law when the title is artistically relevant to the work’s content and not explicitly misleading.
- A trademark application or asserted mark in a historical subject’s name does not confer exclusive control over that name’s use as the identifying title of a biographical or dramatized expressive work.
- Under Georgia law, right-of-publicity and related tort claims may exist for unauthorized commercial use of a person’s identity, but expressive portrayals tied to matters of public interest may be privileged depending on facts not resolvable solely on the pleadings.
- Defamation liability requires allegations of statements “of and concerning” the plaintiff that are capable of defamatory meaning; dramatization, opinion, or substantially true depictions may be non-actionable, while specific portrayals plausibly asserting harmful factual claims may survive dismissal.
- Rule 56(f) relief is not warranted when the additional discovery sought would not affect the outcome of largely legal questions central to summary judgment.

## Conclusion

The court ended plaintiffs’ trademark-based effort to stop or recover for defendants’ use of “Ruffian” as the title of an expressive film about the horse, holding plaintiffs lacked a basis to show protectable trademark rights and confusion, and declining additional discovery on those issues. It nonetheless allowed parts of the case to continue under Georgia law where allegations about unauthorized use and portrayal of the jockey and trainer could not be conclusively resolved at the pleading stage.


Thoroughbred Legends, LLC v. Walt Disney Co., No. 1:07-CV-1275-BBM, 2008 U.S. Dist. LEXIS 19960 (N.D. Ga. Feb. 12, 2008)