In re Estate of Tasunke Witko, a.k.a. Crazy Horse, vs. The G. Heileman Brewing Co. | October 25, 1994 | Joseph William Singer

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In re Estate of Tasunke Witko, a.k.a. Crazy Horse, vs. The G. Heileman Brewing Co.

by Joseph William Singer
(slip op.) (Rosebud Sioux Tr. Ct., Oct. 25, 1994) EDIT ANNOTATED ITEM INFORMATION DELETE ANNOTATED ITEM
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In re Estate of Tasunke Witko, a.k.a. Crazy Horse,

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vs.

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The G. Heileman Brewing Co.

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(slip op.) (Rosebud Sioux Tr. Ct., Oct. 25, 1994)

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Stanley Whiting, J.

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PROCEDURAL HISTORY

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Seth H. Big Crow, Sr. was appointed by this Court as Administrator of the Estate of Tasunke Witko. The estate and Administrator subsequently brought a cause of action against the Defendants seeking a declaratory judgment, monetary damages, culturally appropriate damages and an accounting and injunctive relief on behalf of the Administrator and a class of heirs residing on various Indian Reservations in the State of South Dakota.

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The complaint alleged that the damages arose from the Defendant's manufacturer, sale and distribution of the “Original Crazy Horse Malt Liquor.” The claim of Plaintiffs were premised on an ownership right in the nickname “Crazy Horse” which Plaintiffs allege belongs to the estate of Tasunke Witko. The Plaintiffs also asserted that the use of the appellation “Crazy Horse” on Crazy Horse Malt Liquor constitutes defamation, violates plaintiffs' right of publicity, and constitutes negligent and intentional infliction of emotional distress. The complaint also alleges that the use of the brand name “Crazy Horse” malt and the products packaging falsely suggest that the beer product is of Indian origin and therefore, violates the Indian Arts and Crafts Act and also violates the Federal Lanham Act by being false and misleading so as to suggest an affiliation with the heirs of Tasunke Witko.

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Defendants appeared by special appearance and moved to dismiss the complaint on the grounds of lack of personal and subject matter jurisdiction and improper service. Affidavits were filed with the motion challenging this Court’s jurisdiction. The parties have submitted extensive briefs and the Cheyenne River Sioux Tribe appeared by amicus.

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FACTS

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The undisputed facts disclosed that Hornell is a New York corporation with its principle place of business in the State of New York. Hornell is a marketer and distributor of beer and other products which are produced by other brewing companies for Hornell pursuant to contracts. Hornell is a separate company unrelated to Heileman Brewing Company. The officers and directors of Heileman and Hornell are separate.

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Hornell developed the brand name and the package designed for the Original Crazy Horse Malt Liquor. Heileman brews the beer and the beer is bottled or canned in containers which are owned by Hornell and provided to Heileman. To comply with requirements of the Bureau of Alcohol, Tobacco & Firearms, certificates of label approval authorizing the name of the Original Crazy Horse Malt Liquor are issued to Heileman as bottlers of the product. Hornell, however, owns any intellectual property and all rights relating to the label and packaging. Basically Heileman’s involvement with the sale and distribution of Crazy Horse Malt Liquor is limited to selling the brewed beer to Hornell to be packaged in Hornell's containers. Hornell is not incorporated in the State of South Dakota nor is it licensed to do business in South Dakota. Hornell does not transact business in South Dakota, nor on the Rosebud Indian Reservation. Hornell does not maintain bank accounts or other assets in the State of South Dakota, or on the Rosebud Sioux Indian Reservation. Hornell has no offices or employees or agents in South Dakota or the Rosebud Sioux Indian Reservation, nor does it maintain any breweries or distribution facilities in South Dakota or on the Rosebud Sioux Indian Reservation. Crazy Horse Malt Liquor is not available for purchase in South Dakota or upon the Rosebud Sioux Indian Reservation and Heileman is responsible for distribution of the malt liquor. Hornell purchases the malt liquor from the Heileman Brewing Co. located in Baltimore, Maryland and the malt beverage is not advertised in South Dakota, nor available for purchase in South Dakota or the Rosebud Sioux Indian Reservation. The individual Defendants similarly do not have any relationship with the State of South Dakota or the Rosebud Sioux Tribe. At the oral arguments before the Court on the Defendant's motion to dismiss and in the respective brief, the parties basically concede that the name of “Crazy Horse” is property. However, the property right in “Crazy Horse “ has never been trademarked.

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I. TRIBAL LONG ARM STATUTE

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The Rosebud Sioux Tribe Law and Order Code at Section 4-2-6 provides the following for jurisdiction over persons:

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“The Rosebud Sioux Tribal Court will exercise civil and criminal jurisdiction over all persons within its territorial jurisdiction to the extent allowed by Federal statutory law and Federal Court decisions ….”

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The Tribal Code at Section 4-2-7 provides for personal service off of the Reservation and also sets out acts submitting a non-resident person to jurisdiction of the Tribal Court as follows:

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“A)So the greatest extent consistent with due process of law, any person, whether or not a citizen, resident, or present on the reservation, who in person or through an agent does any of the acts enumerated in this section, thereby submits said person or his personal representative to the jurisdiction of the Tribal Court as to any cause of action arising from doing any of the following acts within the Rosebud Indian Reservation:

1)The transaction of any business;

2)The commission of a tortuous act;

3)The partnership, use or possession of any property, real or personal …”

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Defendants did not transact any business on the Rosebud Indian Reservation, nor did they own or use or possess any property, real or personal, within the confines of the Reservation. If the Tribal Long Arm Jurisdiction Statute applies in this case, it would be through the commission of a tortuous act by the Defendants on the Rosebud Reservation. To determine this issue, the Court will apply the appropriate Federal case law and first examining the property right involved.

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II. THE PROPERTY RIGHT INVOLVED.

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Plaintiffs basically submit that Defendants misappropriated the good name of “Crazy Horse” and used the misappropriation for a profit. Crazy Horse was a revered, Sioux Indian leader and his name is recognized throughout the nation. While alive, Crazy Horse was opposed to his people using alcohol. Because of his stature, a monument to Crazy Horse is presently being carved on a granite mountain near Custer, South Dakota which will dwarf Mt. Rushmore in size. Obviously the heirs of Crazy Horse and perhaps all Indian people in general have reason to feel affronted and insulted over the marketing of the “Crazy Horse Malt Liquor.” In determining if the Tribal Long Arm Statute applies in this case to grant this Court jurisdiction, the Court must examine the type of property misappropriated as it relates to trademarks and the right of publicity and privacy.

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The name of Crazy Horse has never been trademarked by his descendents. Although Defendants have made application to trademark the Crazy Horse Malt Liquor label, the Plaintiffs have never attempted to trademark the name of Crazy Horse. Although it is not always necessary to register a trademark to have one, there cannot be protection granted beyond the physical location where it is used unless it is registered. (The Rights of Publicity and Privacy by J. Thomas McCarthy, Section 5.2.)

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The law dealing with the rights of publicity and privacy become more complicated when dealing with an individual who has been deceased over 100 years and who, during his lifetime, never exercised any of these rights. While it has been documented that the name of “Crazy Horse” has been used for many years on such establishments as bars and clothing outlets, none of the descendants of Crazy Horse have ever exercised a right of publicity or privacy in the name of Crazy Horse by trademarking that name. A forceful judicial argument articulated against a postmortem Right of Publicity was made by the Federal Sixth Circuit Court of Appeals in Memphis Development Foundation v. Factors, etc. Inc., 616 F.2nd. 956 (6th Cir. 1980), cert. den. 449 U.S. 953. The Court opined that the common law of Tennessee would not recognize a postmortem Right of Publicity. The suit was brought by the exclusive licensee of the Estate of Elvis Presley against the Memphis Development Foundation for giving small pewter replicas of a statute of Elvis Presley to those who donated more than $25.00 to a fund to be used to erect a large bronze statute of Presley in downtown Memphis. In reversing a preliminary injunction against distribution of the Presley replicas, the Court said:

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“We hold that the right is not inheritable. After death the opportunity for gain shifts to the public domain, where it is equally open to all.”

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One of the Court’s pronouncements in Memphis Development, was that the incremental motivation to creativity created by a person's knowledge that heirs will benefit is outweighed by the public right to free commercial and competitive use of the names and likeness of a famous deceased person. In Memphis Development, Judge Merit stated the following:

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“Heretofore, the law has always thought that leaving a good name to one’s children is sufficient reward in itself for the individual, whether famous or not. Commercialization of this virtue after death in the hands of heirs is contrary to our legal tradition and somehow seems contrary to the moral prescriptions of our cultural . . . and equal distribution of the opportunities to use the name of the dead seems preferable. The memory, name and pictures of famous individuals shou1d be regarded as a common asset to be shared, an economic opportunity available in the free market system.” Memphis Development at 959-960.

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When this type of claim has been asserted after an individual’s death, some Courts view it as a property interest, which must have been recognized and used by that individual prior to his death in order for this right to be inherited by his descendents. See, Factors, etc. v. Pro Arts, Inc., 579 F.2d. 215, Hicks v. Casablanca Records and Filmworks, 464 F.Supp. 426; Price v. Hal Roach Studios, 400 F. Supp. 836, (SD NY 1975).

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Another ardent advocate of rejecting a postmortem right of publicity is Steven J. Hoffman, who argued that the “property v. personal” distinction is not determinative of the descendability issue; a postmortem right would not create a significant incentive for creative endeavor; and a postmortem right would exacerbate conflicts with both first amendment principals and the copyright laws. Hoffman concluded that:

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“Thus, cutting off the right of publicity at death better accommodates the competing interest at stake, mitigating some of the adverse impact on the right without seriously detracting from its benefits. Recognizing that the right of publicity is a mixed blessing, it terminates the right at a logical point. The death of the celebrity whose name and likeness it protects.”

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See SJ Hoffman Limitations on the Right of Publicity, 28 Bull Copyright Soc., 111 139 (1980).

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The Eleventh Court of Appeals has recognized a post mortem right of publicity. Martin Luther King, Jr., Center For Social Change v. American Heritage Products, 250 GA 135, 296 SE 2d. 697, 2l6 USPQ 711 (1982), Rev'd and Remanded, 694 F.2d. 674 (11th Cir. 1983). In the King case, the Defendants were selling plastic busts of the late civil rights leader, Martin Luther King, Jr. With each sale, the Defendant included a booklet about the life of Dr. King. Defendant’s advertising offered the bust as “an opportunity to support the Martin Luther King, Jr. Center for Social Change” and promised that a contribution from each order went to the Center. In fact, only three percent (3%) of the price was set aside as a donation. The Defendant had initially asked the King Center for permission, and though permission was refused, Defendant still went forward with advertising and sales.

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In the King Case, the Plaintiffs contended that the manufacturer and sale of the busts violated Dr. King's right of publicity which had passed to his heirs upon Dr. King's death. The Defendants contended that no such right existed. The District Court concluded that it was not necessary to determine whether the “right of publicity” was divisible because Dr. King did not commercially exploit this right during his lifetime. The matter was appealed and the Eleventh Circuit ultimately found that the right of publicity survives the death of its owner even if the owner did not commercially exploit the right before his death. The King Court recognized that Dr. King was not a public official but was a public figure and dealt in the opinion with public figures who are neither public officials nor entertainers. The King Court distinguished those cases that had previously held that the right of publicity does not survive after death unless it has been commercially exploited during the decedent's 1ifetime.

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In King, the Court concluded that the right of publicity survives the death of its owner and is inheritable and devisable. The Court went on to state that:

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“Recognition of the right of publicity rewards and thereby encourages effort and creativity. If the right of publicity dies with the celebrity, the economic value of the right of publicity during life would be diminished because the celebrity’s untimely death would seriously impair, if not destroy, the value of the right of continued commercial use. Conversely, those who would profit from the fame of a celebrity after his or her death for their own benefit and without authorization, have failed to establish their claim that they should be the beneficiaries of the celebrity’s death. Finally, the trend since the early common law has been to recognize survivability, not withstanding the legal problems which may thereby arise. “

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The Court in King went on to determine that the owner of the right of publicity need not have commercially exploited that right before it can survive. The Court recognized that Dr. King could have exploited his name and likeness during his lifetime. The Court went on to state that:

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“That this opportunity was not appealing to him does not mean that others have the right to use his name and likeness in ways he himself chose not to do. Nor does it strip his family and estate of the right to control, preserve and extend his status and memory and to prevent unauthorized exploitation thereof by others. Here, they seek to prevent the exploitation of his likeness in a manner they consider unflattering and unfitting. We cannot deny them this right merely because Dr. King choice not to exploit or commercialize himself during his lifetime.” King at 705.

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Although some Courts have rejected a postmortem right of publicity in the absence of any trademarks, this Court believes that the rational of the King case is more appropriate concerning the property right claimed by the Plaintiff in the present case. Consequently, this Court concludes that the Plaintiffs do have a postmortem right of publicity in the good name of “Crazy Horse” even though Crazy Horse did not commercialize his name during his lifetime.

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Having determined that the Plaintiffs have a postmortem right of publicity in the good name of Crazy Horse, the next issue to determine whether the commission of a tortuous act by the Defendants was done with sufficient minimum contacts with this forum to grant the Tribal Court jurisdiction under the long arm statute of the Rosebud Sioux Tribe.

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III. MINIMUM CONTACT

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The United States Supreme Court has emphasized that the minimum contacts requirement of International Shoe Company v. Washington, 326 U.S. 310 66 S.Crt. 154 (1945), must be met as to each Defendant over whom a forum Court exercises jurisdiction. Under the Tribal Long Arm Statute (RSTLOC Section 4-2-7), minimum contact with the forum could only exist if Defendants committed a torturous act within the forum.

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A Plaintiff who exerts the existence of personal jurisdiction over a non-resident Defendant bears the burden of proof. Compagnie des Bauxites de Guinee v. L'Union, 723 F.2d. 357 (3rd Cir. 1985); Brown v. Flowers Indus., Inc., 688 F.2d. 328 (5th Cir. 1982), cert. denied, 460 U.S. 1023 (1983); Southwest Offset. Inc. v. Hudco Publishing Co., 622 F.2d. 149 (5th Cir. 1980), Electronic Signals Products, Inc. v. Eastern Electronic Co., Ltd., 783 F.Supp. 1135, 1137 (N.D. Ill. 1992).

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Plaintiffs rely on Burger King v. Rudzewicz, 471 U.S. 462 (1985) for the proposition that minimum contacts occurred in this case. Burger King stood for the proposition that when a forum seeks to assert specific jurisdiction over an out-of-state Defendant who has not consented to suit, due process is satisfied if the Defendant has “purposefully directed” his activities at residence of the forum and the litigation results from alleged injuries that “arise out of or relate to” those activities. In the present case, the Court concludes that Defendants did not “purposefully direct” their activities at residents of the Rosebud Sioux Tribe or at the Plaintiffs. Actually, the facts establish that Defendants made no contact with the heirs of Crazy Horse or with the Rosebud Sioux Tribal Reservation. There were no ongoing business relationships or contracts between Plaintiff and Defendants. The Original Crazy Horse Malt Liquor was never advertised for sale or marketed in South Dakota or on the Rosebud Sioux Indian Reservation. Therefore, Defendants had no reason to believe that they would be hailed into the Tribal Court forum.

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The minimum contact requirement cannot be satisfied unless there is “some act by which the Defendant purposefully avails itself of the privilege of conducting activities within the forum state, thus invoking the benefits and protections of it's laws.” Asahi Metal Industry Co. v. Superior Court of California, 480 U.S. 102, 107 S.Crt. 1026 1031 (1987). The rationale for the minimum contact requirement is that it would be unreasonable to force a non-resident Defendant to submit to personal jurisdiction unless, by virtue of his purposeful contacts with the forum state, he was able to foresee the possibility of being hailed into that state’s court. Burger King, 105 S.Crt. at 2182-2183.

43

Plaintiffs also rely upon Calder v. Jones, 465 U.S. 783 (1984) for proposition that this Court has jurisdiction over the Defendants. However, in Calder, a reporter for the National Inquirer wrote a liableous article about a California resident. The reporter was from the State of Florida and the interview of the California resident occurred in Florida. The reporter made no contact with the State of California but knew that the article would be circulated in California. In fact, California circulation of the National Inquirer was higher than in any other state. Consequently, the Court found that the liableous article was purposefully directed into the California forum. In the present case, Defendants did not advertise the malt liquor in the State of South Dakota or on the Rosebud Indian Reservation. Further, there were no contacts whatsoever by the Defendants with Plaintiffs in any manner. Consequently, the Court concludes that the factual situation in Calder was antipodal to the present situation and that the dictates of Calder do not apply to create minimum contacts.

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Both parties have cited Montana v. United States to advocate their respective views concerning jurisdiction by this Court. In Montana v. United States, 450 U.S. 544 (1981), the United States Supreme Court specifically recognized that a Tribe may also retain inherent power to exercise civil authority over the conduct of non-Indians on fee lands within its reservation when that conduct threatens or has some direct effect on the political integrity, the economic security or the health or welfare of the Tribe. Plaintiffs claim that the dictates of Montana do not prohibit jurisdiction of the Tribal Court in the present case. On the other hand, Defendants claim that Montana prohibits tribal civil jurisdiction over the Defendants herein.

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In Montana, the Supreme Court also recognized that Indian Tribes retain inherent sovereign power to exercise some forms of civil jurisdiction over non-Indians on the reservations, even on non-Indian fee lands. A tribe may regulate, through taxation, licensing or other means, the activities of non-members who enter consensual relationships with the tribe or its members, through commercial dealings, contracts, losses or other arrangements.

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In the present case, there were no commercial dealings, contracts or leases or other arrangements between the Plaintiffs and the Defendants. For this Court to have jurisdiction under the requirements of Montana, this Court would have to find that the conduct in question threatened or had some direct effect on the political integrity, the economic security, or the health or welfare of the tribe.

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It is the conclusion of the Court that Montana presupposes minimum contacts before civil jurisdiction of the Tribal Court can be exercised. The Court is unable to conclude that the marketing of the Original Crazy Horse Malt Liquor has had some direct effect on the political integrity, the economic security or the health or welfare of the Tribe. The Montana Court also concluded that the exercise of Tribal power beyond what is necessary to protect tribal self-government or to control internal relations is inconsistent with the dependent status of Indian tribes, and so cannot survive without expressed congressional delegation. This Court concludes that Montana and its protege does not grant jurisdiction to the Tribal Court under the existing factual scenario.…

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For the reasons set out above, the Court concludes that it does not have personal jurisdiction over the Defendants. Defendants may prepare an order consistent with this opinion.

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Dated this 25th day of October, 1994.

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Stanley E. Whiting

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PRO-TEM TRIBAL JUDGE

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P.O. Box 48

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142 E. Third Str.

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Winner, SD 57580-0048

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Annotated Case Information

June 02, 2014

"In re Estate of Tasunke Witko, a.k.a. Crazy Horse, vs. The G. Heileman Brewing Co."

In re Estate of Tasunke Witko, a.k.a. Crazy Horse, vs. The G. Heileman Brewing Co.

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Joseph William Singer

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