IP Law Daily, PUBLICITY RIGHTS—Conn. Super.: Newman’s Own Foundation must follow Newman’s own wishes, (Oct 9, 2024)

By Matthew Hersh, J.D.

A court clarifies the scope of its earlier injunction order.

The foundation established by actor Paul Newman prior to his death may not license his name or likeness to movie studios, publishers, luxury accessory brands, or a wide range of other non-food products, a Connecticut state court for the judicial district of Stamford has held. The court, in clarifying the injunction order it initially entered several months ago, also noted that the injunction was stayed pending an appeal of the original ruling (Newman v. Newman's Own Foundation, No. FSTCV226058968S (Conn. Super. Oct. 7, 2024)).

The case arises out of a dispute between Newman’s five daughters and the administrators of Newman's Own Foundation, the charitable foundation that the late actor established in 2005. The foundation, which was funded through the profits of the Newman’s Own food products line, as well as the royalties from Newman’s publicity rights and other intellectual property, was intended by Newman to make grants to other charitable foundations in each of his daughters’ own names. But after Newman’s death, the trustees of the foundation stripped the five daughters of the right to designate charitable recipients and directed those recipients to foundations of their own choosing. Worse, the daughters contended, the trustees licensed Newman’s name and image to companies that raised charitable funding through the sale of non-food products—including, in one particularly glaring case, the company selling a beauty product entitled “Special Edition Wet Brush X Newman’s Own Pro Detangler.”

The daughters sued the foundation and sought a preliminary injunction, leading to these two orders.

Original injunction order. The court, in a June 28 order, found in favor of the daughters and enjoined the foundation from licensing Newman’s name, image, or likeness in connection with the sale of non-food products—including, of course, the “wet brush” product. The court’s opinion began with several colorful anecdotes about the activities of past and current officials of the foundation, including seven-figure salaries, round-the-world business class trips, and, in case, an alleged episode of sexual harassment. As to the merits, the court found, the daughters were correct—and the injunction was warranted.

The injunction was warranted, the court found, because the daughters were likely to prevail on their claim that the foundation was barred from licensing to non-food products. The trust documents made clear, the court found, that the foundation was obligated to prevent the use of Newman’s intellectual property and publicity rights for “uses … that [Newman] either explicitly did not approve during his lifetime or that are inconsistent with those uses [Newman] did explicitly approve.” Moreover, the court noted, the trust agreement also stated that Newman’s name or likeness could not be used in connection with any product other than a food product “of at least the quality of the current Newman’s Own brand of products.” These provisions “clearly set forth that Paul Newman’s name, image and likeness are not to be used on non-food products,” the court found.

None of the trustees’ arguments to the contrary had merit, the court also found. The foundation argued that the intent of the trust documents was to limit the scope of the foundation’s activity’s only during Newman’s lifetime and not after. But there was no language in the trust documents suggesting such an intention, the court found. “It is very clear to this Court from the unambiguous language of the Trust Agreement that maintaining the integrity of these [publicity rights] before and after his death,” the court found, “was of paramount importance to Paul Newman.” Nor did the foundation present any testimony to the contrary at the injunction hearing, the court noted. Neither of the original trustees was even present at that hearing, the court noted, and one was “on a ski holiday on the West Coast and completely unavailable.” Yet the foundation never sought a continuance or permission for his remote testimony, the court observed.

Follow-up ruling. Though the June ruling established the basic parameters of the injunction, it did not end the dispute between the parties. The foundation filed a motion asking for clarity as to whether the decision applied prospectively only or whether it required the foundation to terminate non-food licenses currently in effect. In an August order, the court noted that it could not make such a ruling without more detail on the more than 100 licenses for non-food products entered into since 2008 and potentially still in effect.

The June order led to the additional order of this week specifying that the injunction prohibits the licensing of Newman’s publicity rights to the following: “(1) Marist College; (2) Kenyon College and/or any other university or nonprofit; (3) studios or publishers; (4) any luxury accessory brand for advertising; and (5) any other non-food product which is precluded by Section 6 (F) of the Trust Agreement.” The order also noted that the effective date of the injunction, originally set for August 13, was now stayed in light of the foundation’s appeal.

The Case is No. FSTCV226058968S.

Judge: Ozalis, S.

Attorneys: Brian Scott Cohen (Lachtman Cohen & Belowich LLP) for Susan Kendall Newman. Elinor T. Newman, SN Foundation, Inc., NN Foundation, Inc. and Cynthia R. Roland. (Cummings & Lockwood LLC) and (Robinson & Cole LLP) for Newman's Own Foundation.

Companies: SN Foundation, Inc.; NN Foundation, Inc.; Newman's Own Foundation

Cases: PublicityRights ConnecticutNews