* Associate Professor, Northeastern University School of Law. This Article was presented at the Boston College Law School Symposium on Intellectual Property, E-Commerce and the Internet in October 2002. I appreciate helpful comments from the participants, particularly Fred Yen, Joe Liu, Ruth Okediji, and Tony Reese.
1 As this Article was going to press, the United States Supreme Court decided Moseley v. V Secret Catalogue, Inc., 123 S. Ct. 1115 (2003), rejecting a strong-form right to evoke under trademark law. See infra notes 135–150 and accompanying text.
2 Merriam-Webster’s Collegiate Dictionary 402 (10th ed. 1996).
3 971 F.2d 1395 (9th Cir. 1992).
4 See id. at 1399. The court was actually reversing a grant of summary judgment for the defense, but it made its views of the merits clear. See id. Ultimately, a jury awarded White $403,000 in damages. See Vanna White Wins Suit, Wall St. J., Jan. 24, 1994, at B2; see also Wendt v. Host Int’l, Inc., Nos. 93-56318, 93-56510, 1995 WL 115571, at *1–2 (9th Cir. Mar. 16, 1995) (similarities between physical characteristics of robots and actors precluded summary judgment for defendants in right of publicity claim).
5 See White, 971 F.2d at 1399 (A broad right of publicity is necessary because “[t]he identities of the most popular celebrities are not only the most attractive for advertisers, but also the easiest to evoke without resorting to obvious means such as name, likeness, or voice.”).
6 White v. Samsung Elecs. Am., Inc., 989 F.2d 1512, 1515 (9th Cir. 1993) (Kozinski, J., dissenting) (denial of rehearing en banc).
7 See id. Kozinski had plenty of company in criticizing the outcome in White. See Arlen W. Langvardt, The Troubling Implications of a Right of Publicity “Wheel” Spun Out of Control, 45 U. Kan. L. Rev. 329, 399 (1997) (contending that the Ninth Circuit decision created “a property right of unprecedented and unwarranted scope”); David S. Welkowitz, Catching Smoke, Nailing JELL-O to a Wall: The Vanna White Case and the Limits of Celebrity Rights, 3 J. Intell. Prop. L. 67, 77–84 (1995); Linda J. Stack, Note, White v. Samsung Electronics America, Inc.’s Expansion of the Right of Publicity: Enriching Celebrities at the Expense of Free Speech, 89 Nw. U. L. Rev. 1189, 1194–97 (1995); Fred M. Weiler, Note, The Right of Publicity Gone Wrong: A Case for Privileged Appropriation of Identity, 13 Cardozo Arts & Ent. L.J. 223, 258 (1994) (“in finding misappropriation under these circumstances, a court is empowering White to enjoin an advertiser from depicting anything next to the ‘Wheel of Fortune’ game board”).
8 See Allen v. Nat’l Video, Inc., 610 F. Supp. 612, 624 (S.D.N.Y. 1985).
9 See Lombardo v. Doyle, Dane & Bernbach, 58 A.D.2d 620, 622 (N.Y. App. Div. 1977).
10 See Motschenbacher v. R.J. Reynolds Tobacco Co., 498 F.2d 821, 827 (9th Cir. 1974) (racecar driver has publicity claim against advertiser that used photo of car with unidentifiable man inside); see also Carson v. Here’s Johnny Portable Toilets, 698 F.2d 831, 836 (6th Cir. 1983) (“Here’s Johnny” mark found to violate Johnny Carson’s right of publicity); Allen, 610 F. Supp. at 624.
[T]he question before the court is not whether some, or even most, people will be reminded of plaintiff when they see this advertisement. In order to find that the photograph contains plaintiff’s ’portrait or picture,’ the court would have to conclude that most persons who could identify an actual photograph of plaintiff would be likely to think that this was actually his picture. This standard is necessary since we deal not with the question of whether an undisputed picture of plaintiff is recognizable to some, but whether an undisputed picture of defendant Boroff should be regarded, as a matter of law, to be a portrait or picture of plaintiff.
Allen, 610 F. Supp. at 624; see also Lombardo, 58 A.D.2d at 622 (Guy Lombardo sued claiming that singing of Auld Lang Syne appropriated his identity. The court upheld on the basis that people could be deceived into thinking he was in the commercial, even though the actor in the commercial did not resemble Lombardo.); Paul J. Heald, Filling Two Gaps in the Restatement (Third) of Unfair Competition: Mixed-Use Trademarks and the Problem with Vanna, 47 S.C. L. Rev. 783, 806 (1996) (contending that “Judge Kozinski’s dissent fails to garner a majority of the Ninth Circuit judges because his assertion that a reference is not an appropriation seems equally applicable to generally accepted precedent”).
11 See Toys “R” Us, Inc. v. Canarsie Kiddie Shop, Inc., 559 F. Supp. 1189, 1208 (E.D.N.Y. 1983) (allowing dilution claim against user of Kids “R” Us mark based on similarity to Toys “R” Us suffix).
12 See Sid & Marty Krofft Television Prods., Inc. v. McDonald’s Corp., 562 F.2d 1157, 1167 (9th Cir. 1977); Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1109–10 (9th Cir. 1970).
13 See Fisher v. Dees, 794 F.2d 432, 435 (9th Cir. 1986) (copyright); Eveready Battery Co., Inc. v. Adolph Coors Co., 765 F. Supp. 440, 450 (N.D. Ill. 1991) (trademark parody).
14 See Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 218 (2d Cir. 1999); Wendt v. Host Int’l, Inc., 125 F.3d 806, 810 (9th Cir. 1997).
15 See V Secret Catalogue, Inc. v. Mosley, 259 F.3d 464, 471 n.3 (6th Cir. 2001) (rejecting suggestion that marks must be “substantially similar” for dilution to occur, and requiring only that junior mark conjure senior mark), rev’d, 123 S. Ct. 1115; Nabisco, 191 F.3d at 218 (“The marks must be of sufficient similarity so that, in the mind of the consumer, the junior mark will conjure an association with the senior.” (emphasis added)).
16 See Wendt, 125 F.3d at 810 (The validity of statutory right of publicity claims is determined by “[t]he degree to which these robots resemble, caricature, or bear an impressionistic resemblance to” plaintiffs.).
17 See id. at 811 (The court refused to balance actors’ publicity rights against the interest of the copyright holder in a television program: “While it is true that appellants’ fame arose in large part through their participation in Cheers, an actor or actress does not lose the right to control the commercial exploitation of his or her likeness by portraying a fictional character.”); White, 971 F.2d at 1398 (limiting inquiry in right of publicity cases to whether defendant “appropriated” plaintiff’s identity by any means, including by evocation).
18 See, e.g., Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443 (9th Cir. 1994) (establishing narrow scope of protection for cases relying exclusively on similarity in overall concept and feel); cf. Cavalier v. Random House, Inc., 297 F.3d 815, 822–25 (9th Cir. 2001) (holding that to bring a case to the fact-finder based on similarities in a work’s “total concept and feel,” a plaintiff must first establish substantial similarity in protected aspects of work under the Ninth Circuit’s so-called “extrinsic” test).
19 See Williams v. Crichton, 84 F.3d 581, 587–89 (2d Cir. 1996) (finding no infringement when the primary similarity between works lay in the same “idea” of a story set in a dinosaur theme park).
20 See id. (The court found no substantial similarity between the settings of two works about dinosaur theme parks: although the two works “share a setting of a dinosaur zoo or adventure park, with electrified fences, automated tours, dinosaur nurseries, and uniformed workers, these settings are classic scenes a faire that flow from the uncopyrightable concept of a dinosaur zoo.”).
21 See Yankee Candle Co., Inc. v. Bridgewater Candle Co., 259 F.3d 25, 36 (1st Cir. 2001) (applying merger doctrine to find no infringement unless candle labels are “nearly identical” with one another).
22 17 U.S.C. � 107 (2000).
23 See generally Alfred C. Yen, A First Amendment Perspective on the Idea/Expression Dichotomy and Copyright in a Work’s “Total Concept and Feel,” 38 Emory L.J. 393, 426–27 (1989) (discussing risk of chill from look-and-feel doctrine).
24 See White, 989 F.2d at 1513.
25 See Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946) (articulating two-step test for infringement, requiring proof of copying and substantial similarity).
26 See id. at 472–73 (discussing requirement to prove “illicit” or “improper” copying of copyrighted expression in infringement suit); see also Warner Bros. Inc. v. Am. Broad. Cos., 720 F.2d 231, 242 (2d Cir. 1983) (“Stirring one’s memory of a copyrighted character is not the same as appearing to be substantially similar to that character, and only the latter is infringement.”).
27 See V Secret Catalogue, 259 F.3d at 471 n.3, rev’d, 123 S. Ct. 1115.
28 See Carson, 698 F.2d at 835 (“The right of publicity, as we have stated, is that a celebrity has a protected pecuniary interest in the commercial exploitation of his identity.”).
29 See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 907 (9th Cir. 2002), cert. denied, No. 02-633, 2003 WL 167680 (U.S. Jan. 27, 2003) (parody of a trademark falls within non-commercial use exemption); Lucasfilm Ltd. v. Media Mkt. Group, Ltd., 182 F. Supp. 2d 897, 900 (N.D. Cal. 2002) (“[p]arody is a form of non-commercial, protected speech which is not affected by the Federal Trademark Dilution Act”). Some, but not all, jurisdictions have held that the First Amendment requires some protection for parody in right of publicity cases as well. Compare Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95 F.3d 959, 973–76 (10th Cir. 1996) (parody trading cards protected under First Amendment against players’ right of publicity claim), and Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 810 (Cal. 2001), cert. denied, 534 U.S. 1078 (2002) (“[W]hen an artist is faced with a right of publicity challenge to his or her work, he or she may raise as affirmative defense that the work is protected by the First Amendment inasmuch as it contains significant transformative elements or that the value of the work does not derive primarily from the celebrity’s fame.”), with White, 971 F.2d at 1401 (no parody defense to right of publicity claim when the “ad’s spoof of Vanna White and Wheel of Fortune is subservient and only tangentially related to the ad’s primary message: ‘buy Samsung VCRs’”).
30 See 15 U.S.C. � 1125(a), (c) (2000) (unfair competition and dilution claims both require “commercial” use of trademark); see also CPC Int’l, Inc. v. Skippy Inc., 214 F.3d 456, 462 (4th Cir. 2000) (undue expansion of trademark laws to control language would “diminish our ability to discuss the products or criticize the conduct of companies that may be of widespread public concern and importance”) (citing Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687, 1710–11 (1999)).
31 See New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 307–08 (9th Cir. 1992) (establishing “nominative fair use” defense in trademark law); SSP Agric. Equip., Inc. v. Orchard-Rite Ltd., 592 F.2d 1096, 1103 (9th Cir. 1979) (“use of competitor’s trademark for purposes of comparative advertising is not trademark infringement ‘so long as it does not contain misrepresentations or create a reasonable likelihood that purchasers will be confused . . . .’”).
32 See Montana v. San Jose Mercury News, Inc., 34 Cal. App. 4th 790, 794 (1995); Stephano v. News Group Pubs., Inc., 485 N.Y.S.2d 220, 225–26 (1984).
33 123 S. Ct. at 1124.
34 See id.
35 See infra notes 40–150 and accompanying text.
36 See infra notes 48–78 and accompanying text.
37 See infra notes 79–150 and accompanying text.
38 See infra notes 151–165 and accompanying text.
39 See infra notes 165–171 and accompanying text.
40 17 U.S.C. � 106 (2000).
41 See 15 U.S.C. �� 1114(1), 1125(a), (c) (2000).
42 See Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95 F.3d 959, 967–68 (10th Cir. 1996). The specific elements of a right of publicity claim vary among jurisdictions, but most jurisdictions that recognize the right have adopted this standard. See id. “Most formulations of the right protect against the unauthorized use of certain features of a person’s identity—such as name, likeness, or voice—for commercial purposes.” Id. (citing J. Thomas McCarthy, The Rights of Publicity and Privacy �� 4.9–.15 (1996)).
43 In many cases, the legislature has either led the way or has codified the expansion retroactively. The federal dilution right arose as a creature of statutory law. See 15 U.S.C. � 1125(c). Also, in the 1976 overhaul of the Copyright Act, Congress for the first time gave copyright holders a statutory exclusive right to make derivative works based on their copyrighted work. See 17 U.S.C. � 106(2).
44 See Neil Weinstock Netanel, Locating Copyright Within the First Amendment Skein, 54 Stan. L. Rev. 1 (2001); Yen, supra note 23, at 393.
45 Seminal examples include Rochelle Cooper Dreyfuss, Expressive Genericity: Trademarks as Language in the Pepsi Generation, 65 Notre Dame L. Rev. 397 (1990); Lemley, supra note 30; and Glynn S. Lunney, Jr., Trademark Monopolies, 48 Emory L.J. 367 (1999).
46 E.g., Michael Madow, Private Ownership of Public Image: Popular Culture and Publicity Rights, 81 Cal. L. Rev. 125, 178–238 (1993) (critiquing each of the theoretical justifications offered for right of publicity law).
47 See, e.g., Lunney, supra note 45, at 372 (describing “‘property mania’—the belief that expanded trademark protection was necessarily desirable so long as the result could be characterized as ‘property’”).
48 See Arnstein v. Porter, 154 F.2d 464, 468–69 (2d Cir. 1946).
49 See id.
50 See Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (“It is of course essential to any protection of literary property, whether at common-law or under the statute, that the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations.”).
51 See id. at 122–23. In Nichols, for example, the plaintiff claimed that the defendant had appropriated the characters and plot structure of her play. See id. at 120. Judge Hand found no infringement, however, because the similarities lay in stock characters and the highly general “ideas” underlying the play. See id. at 122–23.
52 See id.
53 See generally 562 F.2d 1157 (9th Cir. 1977).
54 Id. at 1167.
55 See id. In the first, “extrinsic” step, the court required a plaintiff to prove similarities in the ideas of the two works; in the second, “intrinsic” step, the court asked whether the target audience would view the overall feel of the works as substantially similar. See id.; see also Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1110 (9th Cir. 1987). But see Yen, supra note 23, at 410–11 (Yen criticizes Roth and Krofft for allowing abstract similarities between two works to support claim of copyright infringement: “Roth and Krofft strongly suggest that the very mood a work creates constitutes its protectable expression. If copyright claims can in fact be maintained at such a high level of abstraction, practically any similarity could conceivably support a finding of infringement.”).
56 This was especially true in Krofft, because the court made clear that the fact-finder should attempt to anticipate the reaction of the target audience—young children. See 562 F.2d at 1166.
57 429 F.2d at 1106.
58 See id. at 1110.
59 See id. at 1109–10.
60 See id.
61 Id. at 1110.
62 See Roth, 429 F.2d at 1110.
63 See id.
64 See Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975); see also Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 546 (1985) (“The rights conferred by copyright are designed to assure contributors to the store of knowledge a fair return for their labors.”); Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984) (Copyright “is intended to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired.”). The utilitarian framework derives ultimately from the Constitution. U.S. Const., art. I, � 8, cl. 8 (“The Congress shall have Power . . . to Promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”).
Scholars have asserted other philosophical defenses of copyright. See Wendy J. Gordon, A Property Right in Self-Expression: Equality and Individualism in the Natural Law of Intellectual Property, 102 Yale L.J. 1533, 1540–78 (1993) (suggesting a Lockean justification for copyright); Joseph P. Liu, Owning Digital Copies: Copyright Law and the Incidents of Copy Ownership, 42 Wm. & Mary L. Rev. 1245, 1296–1300 (2001) (discussing competing theories for copyright and concluding that “[i]n practice, courts draw upon an uneasy and sometimes conflicting mix of different theoretical frameworks”); Alfred C. Yen, Restoring the Natural Law: Copyright as Labor and Possession, 51 Ohio St. L.J. 517, 524–29 (1990) (identifying natural law origins in United States copyright law). The United States Supreme Court, however, has at least nominally adhered to the utilitarian or instrumentalist approach. See Harper & Row, 471 U.S. at 546; Sony, 464 U.S. at 429.
65 Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884); cf. Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 347–48 (1991) (“even a directory that contains absolutely no protectible written expression, only facts, meets the constitutional minimum for copyright protection if it features an original selection or arrangement”).
66 See Feist, 499 U.S. at 348 (“Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author.”).
67 See Nichols, 45 F.2d at 121.
68 See id.
69 See id. Hand acknowledged the difficulty, stating, “Nobody has ever been able to fix that boundary, and nobody ever can.” Id. Many contemporary scholars have questioned the very pursuit of a dichotomy between idea and expression. See Yen, supra note 23, at 405 (“[T]he quest for separation of idea and expression” set forth in the seminal case to make the distinction is “based primarily on instinct, and not upon some principled distinction between the two categories . . . . [T]he Nichols opinion never stated any principle which tells the court where to draw the line between idea and expression.”); see also Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) (“Obviously, no principle can be stated as to when an imitator has gone beyond copying the ‘idea,’ and has borrowed its ‘expression,’” so the distinction must “inevitably be ad hoc.”).
70 See Roth, 429 F.2d at 1110.
71 499 U.S. at 340.
72 Id. at 361 (emphasis added).
73 See Cavalier v. Random House, Inc., 297 F.3d 815, 822–23 (9th Cir. 2002) (“when applying the extrinsic test, a court must filter out and disregard the non-protectible elements in making its substantial similarity determination”); see also Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1443 (9th Cir. 1994) (“Because only those elements of a work that are protectable and used without the author’s permission can be compared when it comes to the ultimate question of illicit copying, we use analytic dissection to determine the scope of copyright protection before works are considered ‘as a whole.’”); Shaw v. Lindheim, 919 F.2d 1353, 1361 (9th Cir. 1990) (“If a district court concludes, after analyzing the objective criteria under the extrinsic test, that reasonable minds might differ as to whether there is substantial similarity between the protected expression of ideas in two literary works, and the record supports the district court’s conclusion, there is a triable issue of fact that precludes summary judgment.”) (emphasis added).
74 Apple, 35 F.3d at 1446; see also Feist, 499 U.S. at 349 (describing copyright in factual compilations as “thin”).
75 See Williams v. Chrichton, 84 F.3d 581, 588 (2d Cir. 1996). “When we determine that a work contains both protectible and unprotectible elements, we must take care to inquire only whether ‘the protectible elements, standing alone, are substantially similar.’” (quoting Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995)); see also Le Moine v. Combined Communications Corp., No. 95C5881, 1996 WL 332688, at *6 (N.D. Ill. June 13, 1996) (finding no infringement when, “although the two works may appear to have a similar total concept and feel when viewed superficially, the similar appearance of the two works stems only from the [unprotected] individual elements they share, not from a substantially similar total concept and feel arising from the creative arrangement and interaction of common elements.”); cf. Sturdza v. United Arab Emirates, 281 F.3d 1287, 1297–99 (D.C. Cir. 2002) (finding, after detailed comparison of two architectural works, including particular combinations of unprotected elements, enough evidence of similarity in “look and feel” to survive summary judgment).
76 The merger doctrine denies copyright protection to expression that constitutes one of a few ways of describing an unprotected idea. See Yankee Candle Co., Inc. v. Bridgewater Candle Co., 259 F.3d 25, 35 (1st Cir. 2001) (applying merger doctrine to deny protection to candle labels and therefore to reject look-and-feel claim).
77 See Williams, 84 F.3d at 588.
78 E.g., Tufenkian Imp./Exp. Ventures, Inc. v. Einstein Moomjy, Inc., 237 F. Supp. 2d 376, 386–89 (S.D.N.Y. 2002).
79 Not all states have endorsed a right of publicity, and those that have vary somewhat in form and substance. See McCarthy, supra note 42, �� 1.1–.11 (discussing the development of right of publicity laws and noting slow and inconsistent change); see also Michael J. Albano, Note, Nothing to “Cheer” About: A Call for Reform of the Right of Publicity in Audiovisual Characters, 90 Geo. L.J. 253, 265–86 (2001) (summarizing differences among state laws).
80 See McCarthy, supra note 42, �� 6.3, 6.5–.6. The right emanated originally from the common-law right to privacy. See Samuel D. Warren & Louis D. Brandeis, The Right to Privacy, 4 Harv. L. Rev. 193, 213–20 (1890). In the middle of the last century, however, courts decided that the general right of individuals to be left alone was not well suited to remedying uses of celebrity identities (because the celebrities had deliberately cast themselves into the limelight) and accordingly developed the modern right of publicity. See Haelan Labs., Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866, 868 (2d Cir. 1953) (holding that “in addition to and independent of . . . right of privacy . . . , a man has a right in the publicity value of his photograph”); see also Melville Nimmer, The Right of Publicity, 19 Law & Contemp. Probs. 203, 215–23 (1954) (advocating publicity rights).
81 See Madow, supra note 46, at 178–238 (explaining various theoretical justifications for right of publicity).
82 See Cardtoons, 95 F.3d at 968 (Under Oklahoma law, the right of publicity “requires proof of three elements: (1) knowing use of [the celebrity’s] name[] or likeness[] (2) on products, merchandise, or goods (3) without [the celebrity’s] prior consent.”); McFarland v. Miller, 14 F.3d 912, 919 (3d Cir. 1994) (“A famous individual’s name, likeness, and endorsement carry value and an unauthorized use harms the person both by diluting the value of the name and depriving that individual of compensation.”).
83 See Landham v. Lewis Galoob Toys Inc., 227 F.3d 619, 624–25 (6th Cir. 2000).
84 Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831, 835 (6th Cir. 1983) (“If the celebrity’s identity is commercially exploited, there has been an invasion of his right whether or not his ‘name or likeness’ is used.”).
85 498 F.2d 821 (9th Cir. 1974).
86 See id. at 822.
87 Id. at 827.
88 698 F.2d at 831.
89 Id. at 836. The dissent, like Judge Kozinski’s in White v. Samsung Electronics America, contended that First Amendment principles should limit the scope of the publicity right. Id. at 840 (Kennedy, J., dissenting).
90 58 A.D.2d 620 (N.Y. App. Div. 1977).
91 Id. at 622; see also Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1101–02 (9th Cir. 1992) (sound-alike of Tom Waits in Frito-Lay commercial violated Waits’s right of publicity); Midler v. Ford Motor Co., 849 F.2d 460, 463–64 (9th Cir. 1988) (sound-alike commercial violated Bette Midler’s right of publicity); Lombardo, 58 A.D.2d at 623 (Titonne, J., dissenting) (contending that Lombardo also stated a cause of action for invasion of privacy under New York law, based on use in advertising of band and conductor using “the same gestures, musical beat and choice of music (i.e., ‘Auld Lang Syne’) with which plaintiff had been associated in the public’s mind for more than a decade”).
92 See Kristine M. Boylan, The Corporate Right of Publicity in Federal Dilution Legislation, Part II, 82 J. Pat. & Trademark Soc. 5, 27–32 (2000) (identifying sweat equity justifications for right of publicity law, and contending that similar arguments support a dilution cause of action); Harry Kalven, Jr., Privacy In Tort Law—Were Warren and Brandeis Wrong?, 31 Law & Contemp. Probs. 326, 331 (1966) (“No social purpose is served by having the defendant get for free some aspect of the plaintiff that would have market value and for which he would normally pay.”).
93 See White v. Samsung Elecs. Am., Inc., 971 F.2d 1395, 1396 (9th Cir. 1992). One ad showed a juicy steak with the caption, “Revealed to be health food, 2010 A.D.,” and another showed Morton Downey, Jr. as a presidential candidate in 2008. Id.
94 Id.
95 Id.
96 Id. at 1397. White’s claim under the federal Lanham Act was also reinstated by the Ninth Circuit. Id. at 1399–1400.
97 See id. at 1397. This finding disposed of White’s statutory right of publicity claim, which required proof of knowing use of her name or likeness for advertising or selling purposes. See id. Citing California case law, Samsung argued that the common-law right of publicity contained a similar requirement, but the Ninth Circuit disagreed. Because the case cited by Samsung had involved use of actual photographs of the celebrity at issue, the court reasoned, it
had no occasion to consider the extent beyond the use of name or likeness to which the right of publicity reaches. The court held only that the right of publicity cause of action ‘may be’ pleaded by alleging, inter alia, appropriation of name or likeness, not that the action may be pleaded in only those terms.
Id.
98 White, 971 F.2d at 1398.
99 Id. at 1399 (emphasis added).
100 See id.
101 See id. at 1402 (Alarcon, J., dissenting) (Judge Alarcon dissented to most of the original opinion); see also White v. Samsung Elecs. Am., Inc., 989 F.2d 1512, 1521 (9th Cir. 1993) (Kozinski, J., with O’Scannlain, J. and Kleinfeld, J., dissenting) (denial of rehearing en banc).
102 See Heald, supra note 10, at 804–07; Langvardt, supra note 7, at 399; Welkowitz, supra note 7, at 77–84; Stack, supra note 7, at 1194–97; Weiler, supra note 7, at 258; Peter K. Yu, Note, Fictional Persona Test: Copyright Preemption in Human Audiovisual Characters, 20 Cardozo L. Rev. 355, 359–67 (1998).
103 See Cardtoons, 95 F.3d at 970 (rejecting the majority’s conclusion in White that the First Amendment cannot insulate a celebrity parody against a right of publicity claim); Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619, 626 (6th Cir. 2000) (criticizing broadest interpretation of White).
104 227 F.3d at 619.
105 See id. at 624.
106 Id.
107 See id. at 626 (“we share . . . Judge Kozinski’s unwillingness to give every individual who appears before a television or movie camera, by occupation or happenstance, the right as a matter of law to compensation for every subtle nuance that may be taken by someone as invoking his identity without first being required to prove significant commercial value and identifiability”).
108 See Wendt v. Host Int’l, Inc., 125 F.3d 806 (9th Cir. 1997). In Wendt, two of the actors in the television program Cheers sued to prevent licensed, Cheers look-alike bars from using barstool-sitting robots that allegedly resembled them. The district court granted summary judgment because the robots bore no resemblance to the actors “except that one of the robots, like one of the plaintiffs, is heavier than the other.” Id. at 809 (quoting district court). The Ninth Circuit reversed summary judgment for defendants, holding that a jury could conclude that the robots constituted likenesses of the actors that would justify a right of publicity claim. See id. at 810–11. The court also found the claims not preempted by copyright law. See id. at 809.
109 See McCarthy, supra note 42, � 3.2.
110 In White, for example, the Ninth Circuit simply assumed that Samsung was using White’s identity to its commercial advantage. See 971 F.2d at 1399. Paul Heald has suggested the commercial benefit requirement as one way to distinguish White from earlier precedent and to support the argument that it represents a break from prior law:
The invocation of Vanna was not made to convince Vanna fans to buy the product, but rather to convey in especially vivid fashion the abstract concept of durability. This use of the celebrity persona to convey a concept is significantly different from those presented in Midler and Motschenbacher, where the advertisers were attempting to capitalize on the intrinsic attractiveness of the unique attributes of a particular celebrity.
Heald, supra note 10, at 807. Heald proposes, “Only ‘if the name or likeness is used [primarily] to attract attention to a work [or product]’ should liability follow.” Id. at 809 (quoting Restatement (Third) of Unfair Competition � 47 cmt. c (1993) (alteration in original)).
111 Cf. Midler, 849 F.2d at 463–64 (voice imitation violated right of publicity).
112 See McCarthy, supra note 42, � 3.2.
113 See S. Rep. No. 79-1333 (1946), reprinted in 1946 U.S.C.C.A.N. 1274, 1275 (discussing the purposes of the Lanham Act). “A trade-mark only gives the right to prohibit the use of it so far as to protect the owner’s good will against the sale of another’s product as his.” Id. (quoting Prestonettes v. Coty, 264 U.S. 359, 368 (1924)).
114 See In re Ferrero, 479 F.2d 1395, 1397 (C.C.P.A. 1973) (“The very fact that one mark may bring another mark to mind does not itself establish likelihood of confusion as to [the] source [of the product].”).
115 See Am. Home Prods. Corp. v. Barr Labs., Inc., 656 F. Supp. 1058, 1068 (D.N.J.), aff’d, 834 F.2d 368 (3d Cir. 1987). In American Home Products, the district court held that a generic pharmaceutical seller did not infringe the Advil trade dress by selling pills with a similar brown color. See id. at 1068–69. The court pointed out that trade dress that evokes, but does not confuse, can serve a valuable function:
The resemblance between two products can alert consumers to the functional or utilitarian equivalence between them, to the fact that one product may be substituted for the other in the ultimate uses for which the products are intended. The free flow of information regarding the substitutability of products is valuable to individual consumers and to society collectively, and by providing it a supplier engages in fair competition based on those aspects—for example, price—in which the products differ.
Id. at 1068. The court further noted: “The fact that one mark may bring another mark to mind does not in itself establish likelihood of confusion as to source.” Id. at 1070; see also Conopco, Inc. v. May Dept. Stores Co., 46 F.3d 1556, 1565 (Fed. Cir. 1994) (finding no infringement when private label retailer “packages its product in a manner to make it clear to the consumer that the product is similar to the national brand, and is intended for the same purposes”).
116 See 15 U.S.C. � 1127 (2000) (“The term ‘dilution’ means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of—(1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.”).
117 Id. � 1125(c).
118 H.R. Rep. No. 104-374, at 3 (1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1030.
119 The federal courts of appeals are divided as to whether inherent distinctiveness is a separate requirement of the FTDA. Compare TCPIP Holding Co., Inc. v. Haar Communications, Inc., 244 F.3d 88, 98 (2d Cir. 2001) (“weak, non-distinctive, descriptive marks do not qualify for the [FTDA]’s protection, even if famous”), and Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 216 (2d Cir. 1999) (“It is quite clear that the statute intends distinctiveness, in addition to fame as an essential element.”), with Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157, 166–67 (3d Cir. 2000) (“we are not persuaded that a mark be subject to separate tests for fame and distinctiveness”). Interestingly, Nabisco would have to be decided differently if the Second Circuit applied its own stated legal standards after the United States Supreme Court, in Wal-Mart Stores, Inc. v. Samara Bros., Inc. ruled that product design cannot be inherently distinctive. 529 U.S. 205, 215–16 (2000); see also Deere & Co. v. MTD Prods., Inc., No. 00 CIV. 5936(LMM), 2002 WL 1837402, at *2 (S.D.N.Y. Aug. 12, 2002) (finding no protection under the FTDA because “use of color alone cannot be inherently distinctive.”) (citing Wal-Mart, 529 U.S. at 211; Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162–63 (1995); TCPIP, 244 F.3d at 98)). See generally Toro Co. v. ToroHead, Inc., Opposition No. 114,061, 2001 WL 1734485, at *14 (Trademark Trial & Appeal Bd. Dec. 12, 2001) (“To be vulnerable to dilution, a mark must be not only famous, but also so distinctive that the public would associate the term with the owner of the famous mark even when it encounters the term apart from the owner’s goods or services, i.e., devoid of its trademark context.”).
120 Compare TCPIP, 244 F.3d at 99 (suggesting that plaintiff must show some evidence of public recognition—consumer surveys, press accounts, or other evidence that its advertising was effective and stating that “we think Congress envisioned that marks would qualify as ‘famous’ only if they carried a substantial degree of fame”), and I.P. Lund Trading ApS & Kroin, Inc. v. Kohler Co., 163 F.3d 27, 47 (1st Cir. 1998) (“the standard for fame . . . required to obtain anti-dilution protection is more rigorous than that required to seek infringement protection”), with Advantage Rent-A-Car, Inc. v. Enter. Rent-A-Car, Inc., 238 F.3d 378, 380 (5th Cir. 2001) (party need not show that fame extends beyond its market when both parties are operating in same market). I.P. Lund involved product design, and it quoted a provision in the Restatement that suggests an exacting standard for fame in product design context: “A mark that evokes an association with a specific source only when used in connection with the particular goods or services that it identifies is ordinarily not sufficiently distinctive to be protected against dilution.” See I.P. Lund. 163 F.3d at 46–47 (quoting Restatement (Third) of Unfair Competition � 25 cmt. e (1995)). Generally, the courts seem to view fame in a niche market as sufficient if both parties are operating in the same niche market. See Advantage Rent-A-Car, 238 F.3d at 380; Times Mirror Magazines, 212 F.3d at 164 (“We are persuaded that a mark not famous to the general public is nevertheless entitled to protection from dilution where both the plaintiff and defendant are operating in the same or related markets, so long as the plaintiff’s mark possesses a high degree of fame in its niche market.”); Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d 633, 640 (7th Cir. 1999) (summarizing authorities).
121 See, e.g., YKK Corp. v. Jungwoo Zipper Co., 213 F. Supp. 2d 1195, 1207–08 (C.D. Cal. 2002).
122 See Syndicate Sales, 192 F.3d at 639 (finding not “insubstantial” the argument that dilution protection for trade dress would be unconstitutional, but refusing to consider challenge that was not raised before the trial court); I.P. Lund, 163 F.3d at 45 (assuming that statute applies to trade dress, but suggesting that dilution will be rare in product configuration cases that do not also involve confusion); Armament Sys. & Procedures, Inc. v. Lansky, No. 00 C 6317, 2002 WL 726801, at *2–4 (N.D. Ill. Apr. 24, 2002) (refusing to grant summary judgment against dilution claim based on use of trade dress consisting of “distinctive black frame housing with flat side colored panels, its push button activator, its blue LED light and its retention clip,” though noting that “it is not at all clear” that the plaintiff will succeed in proving fame and other elements of dilution claim).
123 See Moseley v. V Secret Catalogue, Inc., 123 S. Ct. 1115, 1123–25 (2003).
124 See V Secret Catalogue v. Moseley, 259 F.3d 464, 475 (6th Cir. 2001), rev’d, 123 S. Ct. 1115; Nabisco, 191 F.3d at 223–24.
125 See Nabisco, 191 F.3d at 223.
126 See id. at 218 (emphasis added); see also V Secret Catalogue, 259 F.3d at 475 (adopting Second Circuit “conjure an association” standard), rev’d, 123 S. Ct. 1115; Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 467–69 (7th Cir. 2000) (finding “Herbozac” dilutive of “Prozac” based solely on Prozac’s degree of renown and the similarity between the marks, based on Second Circuit’s “conjure an association” standard).
127 See Nabisco, 191 F.3d at 219. In explaining the relevance of distinctiveness and the channels of commerce, for example, the court explained:
It is easy to imagine instances where because of the low level of distinctiveness of the senior mark, or insufficient similarity between the two, the use of the junior mark in a remote area of commerce would have little tendency to remind consumers of the senior mark and thus little capacity to dilute its effectiveness, but where use of the same junior mark in a closely related area would bring about the harm the statute was designed to avoid.
Id. (emphasis added).
Other courts imposed a more stringent similarity requirement for dilution than for likelihood of confusion. See, e.g., Jet, Inc. v. Sewage Aeration Sys., 165 F.3d 419, 425 (6th Cir. 1999) (upholding requirement that marks be “the same or very similar” to support a dilution claim because “Jet’s theory would permit it to enjoin the use of a vast number of registered trademarks containing the word ‘jet’ and used in unrelated industries”).
128 Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 170 F.3d 449, 453 (4th Cir. 1999); see also Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 670 (5th Cir. 2000) (adopting the Fourth Circuit’s actual-harm standard).
129 See Nabisco, 191 F.3d at 223–24. Even the classic examples—”DuPont” shoes, “Buick” aspirin, and “Kodak” pianos—would require proof of actual harm before an injunction could enter. See H.R. Rep. No. 104-374, at 3 (1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1030.
130 See Jerre B. Swann, Sr., Dilution Redefined for the Year 2002, 92 Trademark Rep. 585, 613 (2002). Under this view, the use of words that evoke the mark do not destroy, but weaken the singular mental association between a mark and its owner: “When, therefore, two brands are associated, there may be a ‘fan effect’: by the process of spreading activation, discrete and (usually) consistent propositions linked to each symbol become part of a larger, divergent array, with adverse memory consequences for both the brand concepts and each of their separate links.” Id. Advocates of this position also contend that allowing parties to evoke others’ brands—along with their positive associations—would unjustly enrich evokers because blurring and tarnishment are both “examples of the exploitation of the memorability of a brand.” See id. at 622. Like the related right of publicity, it reflects a notion that trademark holders should have the right to capture—or, in this case, to enjoin—all of the positive associations related to their intellectual property. See id. at 623–24.
131 Cf. Lunney, supra note 45, at 372 (In the wake of recent expansions in trademark law, “trademarks become property not merely in the formal, legal sense of a right assigned to an entity reasonably well-placed to protect and vindicate the mark’s information function, but in the more ordinary, more substantive, and ultimately more absolute sense of a thing belonging fully and completely to its owner.”).
132 Times Mirror Magazines, 212 F.3d at 168; see also Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117, 134 (D. Mass. 1999) (“The basic idea of blurring is that the defendant’s use of the plaintiff’s mark causes the public no longer to think only of plaintiff’s product upon seeing the famous mark, but rather to associate both the plaintiff and the defendant with the mark.”); 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition � 24:68 (4th ed. 2002).
133 See McCarthy, supra note 132, � 24:90.2. In Professor McCarthy’s view, for dilution to apply, the marks have to be effectively the same—”the marks must be similar enough that a significant segment of the target group sees the two marks as essentially the same.” Id. He describes blurring not as an abstract loss of purity in association between mark and product, but as one mark seen by customers as now identifying two sources. See id. In an attempt to reflect this view, the district court in Hasbro required a trademark holder to prove “that consumers associate the two different products with the mark even if they are not confused as to the different origins of these products.” 66 F. Supp. 2d at 136. The Second Circuit has also recently shown some interest in this approach. See Hormel Foods Corp. v. Jim Henson Prod., Inc., 73 F.3d 497, 506 (2d Cir. 1996) (noting that dilution by blurring occurs when consumers “‘see the plaintiff’s mark used on a plethora of different goods and services . . . raising the possibility that the mark will lose its ability to serve as a unique identifier of the plaintiff’s product.’” (quoting Deere & Co., 41 F.3d at 43)).
134 See 123 S. Ct. at 1124.
135 Id. at 1119.
136 V Secret Catalogue, 259 F.3d 464, 477 (2001), rev’d, 123 S. Ct. 1115.
137 Id.
138 See id. at 466.
139 Moseley, 123 S. Ct. at 1121–22.
140 Id. at 1124.
141 See id.
142 Id.
143 Id. At the same time, the Court appeared to reject the Fourth Circuit’s strict “consummated injury” standard: “Of course, [requiring actual dilution] does not mean that the consequences of dilution, such as an actual loss of sales or profits, must also be proved.” Id.
144 See Moseley, 123 S. Ct. at 1124.
145 See id. (stating that the actual dilution requirement “does not mean that the consequences of dilution, such as an actual loss of sales or profits, must also be proved,” and disagreeing with the Fourth Circuit’s contrary suggestion).
146 Id. at 1125.
147 See id. at 1124–25.
148 See id.
149 See Moseley, 123 S. Ct. at 1124–25.
150 See id.
151 See generally Dreyfuss, supra note 45, at 397.
152 See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), cert. denied, No. 02-633, 2003 WL 167680 (U.S. Jan. 27, 2003).
153 See Gordon, supra note 64, at 1563–64 (1993) (contending that “creators should have property in their original works, only provided that such grant of property does no harm to other persons’ equal abilities to create or to draw upon the preexisting cultural matrix and scientific heritage”); Jessica Litman, The Public Domain, 39 Emory L.J. 965, 968 (1990) (“The public domain should be understood not as the realm of material that is undeserving of protection, but as a device that permits the rest of the system to work by leaving the raw material of authorship available for authors to use.”).
154 See Netanel, supra note 44, at 19 (“At the very least, the idea/expression dichotomy’s very vagueness induces considerable speaker self-censorship.”).
155 See White v. Samsung Elecs. Am., Inc., 989 F.2d 1512, 1517 (9th Cir. 1993) (Kozinski, J., dissenting) (denial of rehearing en banc).
156 See Wendt v. Host Int’l, Inc., 125 F.3d 806, 809 (9th Cir. 1997). In Wendt, for example, the producers of Cheers had authorized the replica bars with all their related paraphernalia. See id. at 811. When the actors brought a right of publicity claim, the licensee defended on the ground that its license authorized use of the characters and that, because its right to the material sounded in copyright, it preempted the actors’ state right of publicity claim. See id. Like most courts considering such conflicts, however, the Ninth Circuit held the claims not preempted. See id. at 809; see also Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619, 624–25 (6th Cir. 2000).
157 See Am. Home Prods. Corp. v. Barr Labs., Inc., 834 F.2d 368, 371 (3d Cir. 1987) (“A response that one ‘associates’ a given product with the name of a competitive product may simply reflect the recognition that the two products are competitive and serve the same purpose.”); Fla. Breckenridge, Inc. v. Solvay, No. 97-8417-Civ-RYSKAMP, 1997 WL 695413, at *9 (S.D. Fla. July 18, 1997) (difference in shape of generic pill would adequately distinguish it from brand-name product in a consumer’s mind, and “given the similarity in colors, she would probably know that she had been given the generic version ... and not the wrong prescription altogether”); Hutchinson v. Essence Communications, Inc., 769 F. Supp. 541, 556 (S.D.N.Y. 1991) (holding that the fact that a defendant’s use of a mark makes consumers “think about” plaintiff’s product “is not compelling evidence of actual confusion”); cf. In re Ferrero, 479 F.2d 1395, 1397 (C.C.P.A. 1973) (“The very fact of calling to mind may indicate that the mind is distinguishing, rather than being confused by, two marks.”). But see McNeil-PPC, Inc. v. Granutec, Inc., 919 F. Supp. 198, 203 (E.D.N.C. 1995) (distinguishing American Home and finding likelihood of success in trademark claim by Tylenol, when “shape and texture as well as the color of [defendant’s] product is remarkably similar to the Tylenol gelcap”).
158 Theoretically, the FTDA might protect this kind of behavior as comparative advertising, but it does not fit neatly within the comparative advertising mold. See 15 U.S.C. � 1125(c)(4) (2000) (allowing “[f]air use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark”).
159 See Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 576 (1977) (right of publicity “provides an economic incentive for [performers] to make the investment required to produce a performance of interest to the public”).
160 See Madow, supra note 46, at 203–04 (“Even in a world without publicity rights, celebrities would still be able to derive substantial income from their publicity values, to say nothing of the income they would continue to derive from the activities to which they owe their fame.”); Rochelle Cooper Dreyfuss, We Are Symbols and Inhabit Symbols, So Why Should We Be Paying Rent?, 20 Colum.-VLA J.L. & Arts 123, 144–45 (1996) (“[T]he right of publicity does not fit the utilitarian mold because the cost of creating a persona are recaptured through the activity with which the purveyor is primarily associated . . . . Furthermore, the marginal increase in incentives that this right provides is not likely to produce any significant increase in the amount of creative material produced.”).
161 See White, 989 F.2d at 1517 (Kozinski, J., dissenting) (denial of rehearing en banc). In the context of most television programs, for example, the shows’ creators have arguably had more of a hand in building the value of the set and other features that might be argued to evoke one of the characters. See id.; Dreyfuss, supra note 160, at 144–45.
162 See Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95 F.3d 959, 969–76 (10th Cir. 1996) (balancing of free speech interests with intellectual property rights in case involving appropriation of name and likeness of major league baseball players); see also Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 810 (Cal. 2001), cert. denied, 534 U.S. 1078 (2002) (suggesting that a First Amendment defense may protect against a right of publicity claim when defendant has introduced “significant transformative elements” or when “the value of the work does not derive primarily from the celebrity’s fame”).
163 H.R. Rep. No. 104-374, at 3 (1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1030 (listing “DuPont” shoes, “Buick” aspirin, and “Kodak” pianos as examples of dilutive uses of famous marks).
164 Cf. Moseley, 123 S. Ct. at 1124 (“at least where the marks are not identical, the mere fact that consumers mentally associate the junior’s mark with a famous mark is not sufficient to establish actionable dilution”).
165 See H.R. Rep. No. 104-374, at 4 (1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1031.
166 See Moseley v. V Secret Catalogue, Inc., 123 S. Ct. 1115, 1124–25 (2003).
167 Id.
168 See, e.g., Deere & Co. v. MTD Prods., Inc., No. 94 CIV. 2322(DLC), 1995 WL 81299, at *3 (S.D.N.Y. Feb. 28, 1995).
169 See H.R. Rep. No. 104-374, at 3 (1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1030.
170 See id. at 4.
171 See Moseley, 123 S. Ct. at 1123–24.
172 See, e.g., EMI Catalogue P’ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 64 (2d Cir. 2000) (“The fair use doctrine permits use of a protected mark by others to describe certain aspects of the user’s own goods.”); United States Shoe Corp. v. Brown Group, Inc., 740 F. Supp. 196, 199–200 (S.D.N.Y. 1990) (fair use doctrine protects use of words “in good faith for descriptive purposes pertinent to their products,” even when use might remind the public of a protected trademark).
173 Trademark holders who suffered from confusing use of trade dress, of course, would have a traditional likelihood of confusion claim. See 15 U.S.C � 1125(a) (2000).