Tuesday, March 17, 2026
Page 3
Ninth Circuit:
Action Over ‘Diary of Mad Black Woman’ Properly Dismissed
Opinion Says Star of Stage Production Failed to Plead Trademark Violation in Use of Name to Purportedly Promote Film of Show Allegedly Recorded Without Permission, No Jurisdiction Over Georgia-Based Tyler Perry Company
By a MetNews Staff Writer
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MARVA KING actor |
The Ninth U.S. Circuit Court of Appeals yesterday upheld the dismissal of a trademark infringement action against film mogul Tyler Perry filed by a California actor who starred in the 2001 stage production of his breakthrough play, “Diary of a Mad Black Woman” and asserts that her name was used to promote sales of a DVD depicting one of the performances without her consent and that the filming was also done without her permission.
In a memorandum decision signed by Circuit Judge Johnnie B. Rawlinson, Senior Circuit Judge N. Randy Smith, and District Court Judge Michael T. Liburdi of the District of Arizona, sitting by designation, the court declared that a District Court judge rightly found that the court lacks personal jurisdiction over Perry’s Georgia-based company and that the use of the California actor’s name in the credits and promotional materials amounts to “fair use.”
Asserting claims against Perry, his film company, Tyler Perry Studios (“TPS”), and Arthur Primus, an executive at the production house, was Marva King, who starred as the central character in the theatrical performance, which debuted in Atlanta in May 2001 and came to The Wiltern theater in Los Angeles a few months later. Perry wrote, directed, acted in, and produced the play, which helped launch his career.
In the 2024 operative pleading, King alleged:
“Marva King is most known for her starring role in the 75 plus million dollar-grossing DVD, ‘Diary of a Mad Black Woman’ the production which launched the massive career of Tyler Perry [and in] which ‘Marva King created her own comedic dialogue’ within the wildly successful world-wide Stage Play Production….”
Filming Without Consent
Saying that the “[d]efendants…decided to film the Play” without her consent and without a contractual understanding, King asserted that she “suffered commercial damage to her image, likeness, voice, trade name, trade mark and collaborative creative contributions for the loss of payment of any licensing opportunities…that would have existed for her had a final contract…been presented.”
She claimed that the “[d]efendants continuously persist in the unauthorized exploitation” of her image and name, alleging that the filmed version of the play aired on the Oprah Winfrey Network “as recently as March 19, 2024,” and asserted federal trademark and name infringement claims as well as breach of contract and other causes of action based on California law.
King maintained that “[t]his Court has personal jurisdiction over the [defendants]” because “the acts complained of herein occurred in the Central District of California” and Perry, “while a resident of the State of Georgia, is…actively doing business in the State of California and in this judicial district.” The performance depicted in the later-released DVD was recorded at the Atlanta Civic Center.
The stage production was adapted into a movie in 2005, which grossed approximately $50 million and made Perry a household name in the film industry.
Motion to Dismiss
Perry and his studio filed a motion to dismiss the complaint under Federal Rules of Civil Procedure 12(b)(2) and 12(b)(6), arguing that the California court lacked personal jurisdiction over the Georgia-based production company and that the pleading failed to state a claim under the Lanham Act.
District Court Judge Percy Anderson of the Central District of California granted the request in June 2024, saying that “TPS was not even formed until 2006, several years after the Play and release of” the recording.
As to the trademark infringement claim, he noted:
“To successfully assert a nominative fair use defense, a defendant must establish…: ‘[1] the [plaintiff’s] product or service in question must be one not readily identifiable without use of the trademark; [2] only so much of the mark or marks may be used as is reasonably necessary to identify the…product or service; and [3] the user must do nothing that would…suggest sponsorship or endorsement by the trademark holder.’…A Lanham Act claim protected by the nominative fair use defense is subject to dismissal.”
Requirements Met
Applying those principles, Anderson remarked:
“Here, all three requirements are met. First, it would not be possible to credit Plaintiff’s performance in the Film without using her name….Second, the Mark is only used in the Film to credit Plaintiff for her performance. And third, Plaintiff’s credit does not suggest her ‘sponsorship or endorsement’ of the film. Accordingly, Plaintiff alleges no more than a nominative fair use of the Mark.”
After claims were dismissed against the remaining defendant last July, the court declined to exercise supplemental jurisdiction over the plaintiff’s state law claims, and a defense judgment was entered.
Saying that “[t]he district court correctly dismissed all claims against TPS for lack of general personal jurisdiction,” Rawlinson, Smith, and Liburdi pointed out that “TPS is a limited liability company (LLC) incorporated in Georgia with its principal place of business also in Georgia.”
As to specific jurisdiction, they opined:
“The district court also correctly dismissed all claims against TPS for lack of specific personal jurisdiction….Because TPS is not authorized to transact business in California; has no employees in California; does not advertise in California; maintains no facilities in California, and does not purposefully direct its activities toward the California market, there was no ‘substantial connection’ with California.”
Addressing the federal claims asserted against Perry, they said:
“The district court did not err in dismissing King’s Lanham Act claims because the use of King’s name in the film credits was a nominative fair use….‘Where a mark is the only word reasonably available to describe a particular thing, use of that mark lies outside of trademark law’….”
The case is King v. Perry, 24-4841.
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