Wendt V. Host
US Court of Appeals for the Ninth Circuit
Case Name:WENDT V HOST INTERNATIONAL
Case Number: Date Filed:
96-55243 12/28/99
FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
GEORGE WENDT, an individual;
JOHN RATZENBERGER, an individual,
Plaintiffs-Appellants,
v.
No. 96-55243
HOST INTERNATIONAL, INC., a
Delaware corporation, D.C. No.
Defendant-Appellee, CV-93-00142-R
and ORDER
PARAMOUNT PICTURES,
CORPORATION, a Delaware
corporation,
Defendant-Intervenor.
Filed December 28, 1999
Before: Betty B. Fletcher and Stephen S. Trott,
Circuit Judges, and Bruce S. Jenkins,1 District Judge.
Order; Dissent by Judge Kozinski
_________________________________________________________________
ORDER
The panel has voted to deny the petition for rehearing.
Judge Trott voted to reject the petition for rehearing en banc
and Judges B. Fletcher and Jenkins so recommend.
The full court was advised of the petition for rehearing en
_________________________________________________________________
1 Honorable Bruce S. Jenkins, Senior United States District Judge for the
District of Utah, sitting by designation.
14901
banc. An active Judge requested a vote on whether to rehear
the matter en banc. The matter failed to receive a majority of
the votes in favor of en banc consideration. Fed. R. App. P.
35.
The petition for rehearing is denied and the petition for
rehearing en banc is rejected.
_________________________________________________________________
KOZINSKI, Circuit Judge, with whom Judges KLEINFELD
and TASHIMA join, dissenting from the order rejecting the
suggestion for rehearing en banc:
Robots again. In White v. Samsung Elecs. Am., Inc., 971
F.2d 1395, 1399 (9th Cir. 1992), we held that the right of pub-
licity extends not just to the name, likeness, voice and signa-
ture of a famous person, but to anything at all that evokes that
person’s identity. The plaintiff there was Vanna White, Wheel
of Fortune letter-turner extraordinaire; the offending robot
stood next to a letter board, decked out in a blonde wig,
Vanna-style gown and garish jewelry. Dissenting from our
failure to take the case en banc, I argued that our broad appli-
cation of the right of publicity put state law on a collision
course with the federal rights of the copyright holder. See 989
F.2d 1512, 1517-18 (9th Cir. 1993).
The conflict in White was hypothetical, since the defendant
(Samsung) did not have a license from the Wheel of Fortune
copyright holder. Here it is concrete: The panel holds that
licensed animatronic figures based on the copyrighted Cheers
characters Norm and Cliff infringe on the rights of the actors
who portrayed them. As I predicted, White’s voracious logic
swallows up rights conferred by Congress under the Copy-
14902
right Act.
I
Though a bit dated now, Cheers remains near and dear to
the hearts of many TV viewers. Set in a friendly neighbor-
hood bar in Boston, the show revolved around a familiar
scene. Sam, the owner and bartender, entertained the boys
with tales of his glory days pitching for the Red Sox. Coach
piped in with sincere, obtuse advice. Diane and Frasier chat-
tered self-importantly about Lord Byron. Carla terrorized
patrons with acerbic comments. And there were Norm and
Cliff, the two characters at issue here. Norm, a fat, endearing,
oft-unemployed1 accountant, parked himself at the corner of
the bar, where he was joined by Cliff, a dweebish 2 mailman
and something of a know-it-all windbag.3 After eleven years
on the air, the gang at Cheers became like family to many
fans, ensuring many more years in syndication. See Gebe
Martinez, Cheers Fans Cry in Their Beers as Sitcom Ends
Long Run, L.A. Times, May 21, 1993, at B1.
Defendant Host International decided to tap into this keg of
goodwill. After securing a license from Paramount, the copy-
right holder, Host opened a line of Cheers airport bars. To
help get patrons into a Cheers mood, Host populated the bars
with animatronic figures4 resembling Norm and Cliff: One is
fat; the other is dressed as a mailman.5
_________________________________________________________________
1 Sam: Hey, what’s happening, Norm?
Norm: Well, it’s a dog-eat-dog world, and I’m wearing Milk
Bone underwear.
2 There’s no rule against postal workers not dating women. It just
works out that way.
3 It’s a little known fact that the tan became popular in what is known
as the Bronze Age.
4 As best the record discloses, these are life-size stuffed dolls that move
somewhat and play pre-recorded quips.
5 In a half-hearted attempt to avoid litigation, Host changed the robots’
names to Hank and Bob.
14903
Plaintiffs George Wendt and John Ratzenberger, the only
actors who ever portrayed Norm and Cliff, sued Host for
unfair competition and violation of their right of publicity.
Paramount intervened, claiming that its copyright preempted
any claim Wendt and Ratzenberger might have under state
law. The district court granted summary judgment for the
defendants because it found that the robots didn’t look like the
plaintiffs: [T]here is [no] similarity at all . . . except that one
of the robots, like one of the plaintiffs, is heavier than the
other . . . . The facial features are totally different. 125 F.3d
at 809. Relying on White, the panel here reverses but offers
little explanation beyond the curt assertion that material facts
exist that might cause a reasonable jury to find[the robots]
sufficiently `like’ [Wendt and Ratzenberger ] to violate their
right of publicity. Id. at 810.
II
This case, unlike White, pits actor against copyright holder.
The parties are fighting over the same bundle of intellectual
property rights–the right to make dramatic representations of
the characters Norm and Cliff. Host and Paramount as sert
their right under the Copyright Act to present the Cheers char-
acters in airport bars; Wendt and Ratzenberger assert their
right under California law to control the exploitation of their
likenesses. But to millions of viewers, Wendt and Ratzenber-
ger are Norm and Cliff; it’s impossible to exploit the latter
without also evoking thoughts about the former.
So who wins? The Copyright Act makes it simple, at least
insofar as the plaintiffs interfere with Paramount’s right to ex-
ploit the Cheers characters. Section 301 of the Copyright Act
preempts any state law legal or equitable rights that are
equivalent to any of the exclusive rights within the general
scope of copyright[.] 17 U.S.C. S 301(a). The copyright to
Cheers carries with it the right to make derivative works
based on its characters. See generally Warner Bros., Inc. v.
American Broadcasting Cos., 720 F.2d 231, 235 (2d Cir.
14904
1983) (Superman copyright belongs to Warner Brothers). The
presentation of the robots in the Cheers bars is a derivative
work, just like a TV clip, promotion, photograph, poster,
sequel or dramatic rendering of an episode. Thus, under fed-
eral law, Host has the unconditional right to present robots
that resemble Norm and Cliff.
Instead, the panel allows the plaintiffs to pick up where
Vanna left off: Copyright or no copyright, anyone who wants
to use a figure, statue, robot, drawing or poster that reminds
the public of Wendt and Ratzenberger must first obtain (and
pay for) their consent. This cannot be squared with the right
of the copyright holder to recreate Norm and Cliff however it
sees fit. At the very least, Paramount must be able to repro-
duce the characteristics that bring Norm and Cliff to mind.
The problem lies with the sweeping standard we adopted in
White. The right of publicity, as defined by the state courts,
is limited to using a celebrity’s name, voice, face or signature.
See, e.g., Stephano v. News Group Publications, Inc., 474
N.E.2d 580, 583-84 (N.Y. 1984) (finding right of publicity
under New York law limited to statutory protection of name,
portrait or picture); Lugosi v. Universal Pictures, 25 Cal. 3d
813, 828 (1979) (Mosk, J., concurring) (If Bela Lugosi were
alive today, he would be unable to claim an invasion of his
right to privacy for Universal’s exploitation . . . of products
created in the image of Count Dracula, a role Lugosi
played.). A copyright holder can generally avoid using any
of these tangible elements in exploiting its copyright. White
exploded the right of publicity to include anything that brings
the celebrity to mind. See White, 971 F.2d at 1399. It’s inevi-
table that so broad and ill-defined a property right will trench
on the rights of the copyright holder. According to the panel,
Paramount and Host may not use Norm and Cliff in a way
that reminds people of the actors who played them and whose
identity is therefore fused in the public mind. This is a daunt-
ing burden. Can Warner Brothers exploit Rhett Butler without
also reminding people of Clark Gable? Can Paramount cast
14905
Shelley Long in The Brady Bunch Movie without creating a
triable issue of fact as to whether it is treading on Florence
Henderson’s right of publicity? How about Dracula and Bela
Lugosi? Ripley and Sigourney Weaver? Kramer and Michael
Richards?
When portraying a character who was portrayed by an
actor, it is impossible to recreate the character without evok-
ing the image of the actor in the minds of viewers. Suppose
the Seinfeld minions create a spin-off called Kramer. One of
the Seinfeld characters was Newman, a fat mailman. Suppose
Wayne Knight–the actor who played Newman–won’t do
Kramer. So Kramer brings in someone else to play Newman,
a corpulent actor who (when dressed as a mailman) reminds
people of Wayne Knight. What happens when Knight sues?
Under White and the panel decision here, Knight can go to
trial on a claim that the new Newman evokes his (Knight’s)
identity, even though Castle Rock owns the rights to make de-
rivative works based on Seinfeld. It would be no defense that
everyone knows the new actor is not Wayne Knight; no one,
after all, thinks the robots here or in White were, in fact,
Wendt, Ratzenberger or White. So long as the casting director
comes up with a new Newman who reminds the public of the
old Newman (i.e. Knight), Knight has a right-of-publicity
claim that will at least survive summary judgment. Under the
unbounded right of publicity announced in White , copyright
holders will seldom be able to avoid trial when sued for
infringement of the right to publicity. Remember Vanna:
Even though the robot looked nothing like her, a jury awarded
her $400,000. See Vanna White Wins Suit, Wall St. J., Jan.
24, 1994, at B2.6
_________________________________________________________________
6 To avoid going to trial in such a situation, producers will have to cast
new actors who look and sound very different from the old ones. A
Seinfeld spin-off thus ends up in a bizarro world where a skinny Newman
sits down to coffee with a svelte George, a stocky Kramer, a fat Jerry and
a lanky blonde Elaine. Not only is goodwill associated with the old show
lost, the artistic freedom of the screenwriters and producers is severely
cramped.
14906
III
The panel’s refusal to recognize copyright preemption puts
us in conflict with the Seventh Circuit in Baltimore Orioles,
Inc. v. Major League Baseball Players Ass’n , 805 F.2d 663
(7th Cir. 1986). Baltimore Orioles held that the baseball clubs
–not the players–own the rights to baseball telecasts under
copyright law, and the players can’t use their state law right
of publicity to veto the telecast of their performance. This was
so even though the telecast (obviously) used the players’ iden-
tities and likenesses.
The Seventh Circuit acknowledged that the state law right
of publicity gave the players a property interest in their actual
performances, see Zacchini v. Scripps-Howard Broadcasting
Co., 433 U.S. 562 (1977), but held that this right could not
trump the Clubs’ right under the Copyright Act to control the
telecast. See 805 F.2d at 678-79. The Seventh Circuit recog-
nized, as the panel here does not, that the players and the
clubs were fighting over the same bundle of intellectual prop-
erty rights:
In this litigation, the Players have attempted to
obtain ex post what they did not negotiate ex ante.
That is to say, they seek a judicial declaration that
they possess a right–the right to control the tele-
casts of major league baseball games–that they
could not procure in bargaining with the Clubs.
Id. at 679. The clubs owned both the right to sell tickets to see
the games and the copyright to the telecast. The copyright
preempted whatever state law rights the players claimed, at
least insofar as state law would prevent ordinary use of the
copyrighted work. See also Fleet v. CBS, Inc., 50 Cal. App.
4th 1911, 1920-21 (1996). The same reasoning applies here:
The plaintiffs’ right to control the use of their likeness is pre-
empted by Paramount’s right to exploit the Norm and Cliff
characters however it sees fit. If Wendt and Ratzenberger
14907
wanted to control how the Cheers characters were portrayed
after they left the show, they should have negotiated for it
beforehand.7
IV
Coming home to roost is yet another problem I warned
about in White–that a broad reading of the state right of pub-
licity runs afoul of the dormant Copyright Clause, which pre-
empts state intellectual property laws to the extent they
prejudice the interests of other States. Goldstein v. Califor-
nia, 412 U.S. 546, 558 (1973). Just as a state law regulating
the length of trucks is invalid under the dormant Commerce
Clause if it poses an undue burden on interstate commerce,
see Kassel v. Consolidated Freightways Corp. , 450 U.S. 662,
674 (1981), so California’s right of publicity law is invalid if
it substantially interferes with federal copyright law, even ab-
sent preemptive legislation.
A copyright licensee must be able to exercise rights which
are inherently federal in nature without worrying that 50 sepa-
rate states will burden those rights. This is most obviously
true when state law restricts the display of derivative works
outside the borders of its state. Compare Goldstein, 412 U.S.
at 558. Yet that is exactly what the panel approves here:
_________________________________________________________________
7 The Seventh Circuit is not alone in recognizing the need to limit the
right of publicity. See, e.g., Allison v. Vintage Sports Plaques, 136 F.3d
1443, 1447-49 (11th Cir. 1998) (recognizing first sale doctrine as limiting
right of publicity). Scholars, too, have soundly rejected White. See Arlen
W. Langvardt, The Troubling Implications of a Right of Publicity Wheel
Spun Out of Control, 45 U. Kan. L. Rev. 329 (1997); Stephen R. Barnett,
First Amendment Limits on the Right of Publicity, 30 Tort & Ins. L.J. 635
(1995); Steven C. Clay, Starstruck: The Overextension of Celebrity
Publicity Rights in State and Federal Courts, 79 Minn. L. Rev. 485
(1994); Jeff Sanders, By Force of Persona: How the Right of Publicity
Undermines the First Amendment, 28 Beverly Hills B. Ass’n J. 13 (1994).
Even our treatment of Wendt and Ratzenberger’s claim has already been
criticized. See Felix H. Kent, Right of Privacy and of Publicity, N.Y.L.J.,
Dec. 19, 1997, at 3; Recent Case, 17 No. 4 Ent. L. Rep. 17 (1995).
14908
Plaintiffs are using California law to stop Host from display-
ing a copyrighted work in Kansas City and Cleveland. Why
California should set the national standard for what is a per-
missible use of a licensed derivative work is beyond me.
Rather than construe the right of publicity narrowly to avoid
this constitutional conundrum, see Crowell v. Benson, 285
U.S. 22, 62 (1932), the panel compounds White ‘s errors by
enforcing California’s right of publicity way beyond Califor-
nia’s borders.
V
The First Amendment concerns raised by White are even
more pressing here. White was an advertisement and therefore
subject to the less demanding commercial speech standard of
Central Hudson Gas & Elec. Corp. v. Public Serv. Comm.,
447 U.S. 557, 561-63 (1980). Here, the portrayal of the
Cheers characters is core protected speech: Using Norm and
Cliff dummies in a Cheers-themed bar is a dramatic presenta-
tion.8 It’s like a play. Cheers may not have the social impact
of Hair, see Southeastern Promotions, Ltd. v. Conrad, 420
U.S. 546 (1975), but it’s a literary work nonetheless, worthy
of the highest First Amendment protection from intrusive
state laws like California’s right-of-publicity statute. See
Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95
F.3d 959, 970-72 (10th Cir. 1996). Host did not plaster
Wendt’s face on a billboard with a Budweiser logo. It cashed
in on the Cheers goodwill by creatively putting its familiar
mise-en-scene to work. The robots are a new derivation of a
copyrighted work, not unlike a TV series based on a movie or
_________________________________________________________________
8 No doubt the decision to put animatronic Norm and Cliff figures in the
bars was profit-driven. But that doesn’t mean Central Hudson applies: The
Supreme Court limits the outhouse of commercial speech to pure
advertising–speech that does no more than propose a commercial trans-
action. Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer
Council, Inc., 425 U.S. 748, 762 (1976); Nordyke v. Santa Clara County,
110 F.3d 707, 710 (9th Cir. 1997); Cardtoons, L.C. v. Major League Base-
ball Players Ass’n, 95 F.3d 959, 970 (10th Cir. 1996).
14909
a Broadway play based on a novel. The novelty of using ani-
matronic figures based on TV characters ought to prick up our
ears to First Amendment concerns. Instead we again let the
right of publicity snuff out creativity.
VI
As I noted in White, No California statute, no California
court has actually tried to reach this far. It is ironic that it is
we who plant this kudzu in the fertile soil of our federal sys-
tem. 989 F.2d at 1519. We pass up yet another opportunity
to root out this weed. Instead, we feed it Miracle-Gro. I dis-
sent.
14910
http://www.ca9.uscourts.gov/ca9/newopinions.nsf/04485f8dcbd4e1ea882569520074e698/b3ec68ff03b90b06882569580068d047?OpenDocument
Case Name:WENDT V HOST INTERNATIONAL INC
Case Number: Date Filed:
96-55243 09/22/97
FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
GEORGE WENDT, an individual;
JOHN RATZENBERGER, an individual,
Plaintiffs-Appellants,
v.
No. 96-55243
HOST INTERNATIONAL, INC., a
D.C. No.
Delaware corporation;
CV-93-142-R
Defendant-Appellee,
OPINION
and
PARAMOUNT PICTURES CORPORATION,
a Delaware corporation,
Defendant-Intervenor.
Appeal from the United States District Court
for the Central District of California
Manuel L. Real, District Judge, Presiding
Argued and Submitted
March 11, 1997–Pasadena, California
Filed September 22, 1997
Before: Betty B. Fletcher and Stephen S. Trott,
Circuit Judges, and Bruce S. Jenkins,* District Judge.
Opinion by Judge Fletcher
_________________________________________________________________
*Honorable Bruce S. Jenkins, Senior United States District Judge for
the District of Utah, sitting by designation.
12347
SUMMARY
The summary, which does not constitute a part of the opinion of the court,
is copyrighted C 1994 by Barclays Law Publishers.
_________________________________________________________________
Intellectual Property/Entertainment
The court of appeals reversed a judgment of the district
court. The court held that actors have statutory and common-
law rights against the unauthorized use of their likenesses in
promotional figures based on an infringer’s copyrighted char-
acters.
Appellants George Wendt and John Ratzenberger are actors
who played the characters of Norm and Cliff in the
Cheers television series. They sued appellee Host Interna-
tional, Inc. alleging violations of their trademark and publicity
rights under Cal. Civ. Code S 3344 (liability for unauthorized
commercial use of person’s likeness), California common
law, and unfair competition under the Lanham Act. The com-
plaint alleged that Host had used their likenesses without
authorization in animatronic, i.e., robot, figures in airport
Cheers bars.
In Wendt I, the Ninth Circuit held that the state-law claims
were not preempted by federal copyright law, and that sum-
mary judgment for Host was inappropriate because the district
court’s comparison of photographs of Wendt and Ratzenber-
ger with photographs of the robots was insufficient to resolve
their claims under S 3344, and that the comparison had to be
made without reference to the context in which the images
appeared. The court also concluded that disputed issues of
material fact remained regarding the common-law claims
because the similarity between the actors’ physical character-
istics and those of the robots was disputed. Lastly, the court
ruled that the Lanham Act claims required the application of
a standard test to determine whether Host’s conduct created
a likelihood of confusion as to whether the actors were
endorsing Host’s product.
12348
On remand, Host again moved for summary judgment.
Wendt and Ratzenberger presented evidence of actual confu-
sion among members of the public in the form of comments
by travelers in airport Cheers bars. The district court excluded
their proffered consumer survey taken in the vicinity of
Cheers bars. Wendt and Ratzenberger also submitted evi-
dence that Host intentionally designed the robot figures to
resemble them because the value of the association of the
robots with them was a major drawing card of the Cheers
concept. Ratzenberger testified that he had rejected offers
from small breweries to appear in their advertisements in
order to be available to a large brewery.
The district court made an in-court comparison of Wendt
and Ratzenberger with the actual robots (now named Hank
and Bob), finding that there was no similarity except that
one was heavier than the other. The court granted Host’s
motion, dismissed the action, and awarded Host attorneys
fees.
Wendt and Ratzenberger appealed, contending that dis-
missal was inappropriate because material issues of fact
remained as to the degree to which the robots appropriated
their likenesses. They asserted that the likenesses did not have
to be identical or photographic, and that the determination of
the issue was for the jury. Wendt and Ratzenberger conceded
that they retained no rights to the characters Norm and Cliff,
but asserted that Bob and Hank were not related to Para-
mount’s copyright of the creative elements of the characters
Norm and Cliff. It was their contention that it was the physi-
cal likeness to them that had commercial value to Host.
Host countered that the figures appropriated only the identi-
ties of the characters of Norm and Cliff, to which intervenor
Paramount Pictures Corp. owned the copyrights, and not the
identities of Wendt and Ratzenberger. It was Host’s position
that Wendt and Ratzenberger could not claim appropriation of
12349
identity by relying on indicia like the Cheers bar set that were
the property of or licensed by a copyright owner.
[1] The degree to which the robots resembled, caricatured,
or bore an impressionistic resemblance to Wendt and Ratzen-
berger was material to the claim of violations ofS 3344. Sum-
mary judgment would have been appropriate on remand only
if no genuine issues of material fact concerning the degree of
that resemblance were raised by Wendt and Ratzenberger. [2]
Material facts existed that might have caused a reasonable
jury to find them sufficiently like Wendt and Ratzenberger
to violate S 3344.
[3] Wendt and Ratzenberger were not seeking to prevent
Paramount from exhibiting its copyrighted work in the Cheers
series. Their claims were not preempted by the copyright stat-
ute so long as they contained elements, such as the invasion
of personal rights, that were different in kind from copyright
infringement. As a general proposition, S 3344 is intended to
protect rights that cannot be copyrighted.
[4] California recognizes a common-law right of privacy
that includes protection against appropriation for the defen-
dant’s advantage of the plaintiff’s name or likeness. The right
is referred to as the right of publicity. A common-law cause
of action for appropriation of name or likeness may be alleged
by pleading (1) the defendant’s use of the plaintiff’s identity;
(2) appropriation of the plaintiff’s name or likeness to the
defendant’s advantage; (3) lack of consent; and (4) resulting
injury.
[5] This common-law right protects against more than
knowing use of a plaintiff’s name or likeness for commercial
purposes. It also protects against appropriations of the plain-
tiff’s identity by other means. [6] While it was true that
Wendt’s and Ratzenberger’s fame arose in large part through
their participation in Cheers, an actor does not lose the right
12350
to control the commercial exploitation of his or her likeness
by portraying a fictional character.
[7] Wendt and Ratzenberger raised genuine issues of mate-
rial fact concerning the degree to which the figures looked
like them. Because they did so, they also raised triable issues
as to whether Host sought to appropriate their likenesses for
its own advantage, and whether it succeeded. The issue for the
jury was whether the defendants were commercially exploit-
ing the likeness of the figures to Wendt and Ratzenberger
intending to engender profits.
[8] The Lanham Act prohibits the use of any symbol or
device that is likely to deceive consumers as to the associa-
tion, sponsorship, or approval of goods or services by another
person. Wendt’s and Ratzenberger’s claim was for false
endorsement–that by using an imitation of their unique phys-
ical characteristics, Host misrepresented their association with
and endorsement of the Cheers bar concept.
[9] To determine if it was likely that Host’s conduct created
a likelihood of confusion as to whether Wendt and Ratzenber-
ger were endorsing Host’s product, an eight-factor test
applied. This test required consideration of (1) the strength of
the plaintiff’s mark; (2) relatedness of the goods; (3) similar-
ity of the marks; (4) evidence of actual confusion; (5) market-
ing channels used; (6) likely degree of purchaser care; (7)
defendant’s intent in selecting the mark; and (8) likelihood of
expansion of the product lines.
[10] On remand, the district court simply compared the
robots with Wendt and Ratzenberger and awarded judgment
because there was no similarity. The court erred in failing to
analyze any of the other relevant factors to determine whether
there was a likelihood of confusion to consumers as to
whether Wendt and Ratzenberger sponsored, approved of, or
were otherwise associated with the Cheers bars. [11] The
Lanham Act’s likelihood of confusion standard is predomi-
12351
nantly factual. Summary judgment is inappropriate when a
jury could reasonably conclude that most of the factors
weighed in the plaintiff’s favor.
[12] The district court erred in rejecting the Lanham Act
claim at the summary judgment stage because a jury could
reasonably have concluded that most of the factors weighed
in favor of Wendt and Ratzenberger. They were principal
players on Cheers, a popular television show. They were well
known among the target customers of Host’s Cheers bars. A
jury could reasonably have concluded that their mark was
strong.
[13] For the same reasons, their goods (their skills and
fame as actors) were obviously related to Host’s goods (the
products sold in the Cheers bars and the bars themselves)
even if they were not strictly competitive. The issue was
whether a consumer would be confused as to Wendt’s and
Ratzenberger’s association with or sponsorship of Host’s bars.
The source of their fame and the Host bars was identical: the
Cheers television series.
[14] Similarity of the marks was the primary issue in dis-
pute. Because Wendt and Ratzenberger raised triable issues of
material fact concerning the degree to which the robots
resembled them, a reasonable jury might have found that this
factor weighed in their favor. Under the Lanham Act, in cam-
era inspection is not sufficient. The district court had to view
the marks as they appeared in the marketplace.
[15] Wendt and Ratzenberger presented evidence of actual
consumer confusion in their declarations and in the form of
survey evidence. This evidence should not have been
excluded. Sufficient evidence existed by which a reasonable
jury might have inferred actual consumer confusion.
[16] The factor of marketing channels used weighed in
favor of Wendt and Ratzenberger. The allegation that appro-
12352
priating their likenesses because the target audience of the
Cheers bars was customers who were fans of the television
series was a similarity in marketing channels that suggested
that there was at least a likelihood of consumer confusion.
[17] The factor of degree of purchaser care weighed in
favor of Wendt and Ratzenberger as well. Consumers were
not likely to be particularly careful in determining who
endorses or is affiliated with an airport bar in which they
might purchase a single beverage. They would be even less
likely to scrutinize the source of the figures used to attract
patrons. This low degree of care made confusion of sponsor-
ship likely.
[18] Wendt and Ratzenberger alleged facts that could have
given rise to an inference that Host intended to confuse cus-
tomers as to their sponsorship or endorsement of the Cheers
bars by creating robots with their physical characteristics.
Based on the evidence in opposition to summary judgment, an
inference could have been raised that Host intended to exploit
their celebrity by confusion as to the similarity between the
figures and Wendt and Ratzenberger.
[19] The factor of likelihood of expansion of product lines
weighed in Wendt’s and Ratzenberger’s favor as the potential
existed that in the future, Ratzenberger’s endorsement of
other beers would be confused with his alleged endorsement
of the beers sold at Host’s bars.
[20] A reasonable jury could have concluded that most of
the factors weighed in favor of Wendt and Ratzenberger, and
that Host’s conduct created at least the likelihood of consumer
confusion. Whether their Lanham Act claim should succeed
was a matter for the jury.
[21] In trademark cases, surveys are to be admitted as long
as they are conducted according to accepted principles and are
relevant. Challenges to methodology go to the weight given
12353
the survey, not its admissibility. On remand, the parties
should have the opportunity respectively to lay a foundation
for admission of the survey, or to challenge the adequacy of
the foundation.
_________________________________________________________________
COUNSEL
David A. Pash, Kinsella, Boesch, Fujikawa & Towle, Los
Angeles, California, for the plaintiffs-appellants.
William T. Rintala, Rintala, Smoot, Jaenicke & Rees, Los
Angeles, California, for the defendants-appellees.
Robert S. Chapman, Greenberg, Glusker, Fields, Claman &
Machtinger, Los Angeles, California, for the defendant-
intervenor.
_________________________________________________________________
OPINION
FLETCHER, Circuit Judge:
Actors George Wendt and John Ratzenberger appeal the
district court’s grant of summary judgment in favor of Host
International, Inc. (Host) and applicant in intervention Para-
mount Pictures Corporation (Paramount), dismissing their
action for violations of the Lanham Act, 15 U.S.C.S 1125(a),
and California’s statutory and common law right of publicity.
We reverse.
I. OVERVIEW
Wendt and Ratzenberger argue that the district court erred
in dismissing their action because they have raised issues of
material fact as to whether Host violated their trademark and
publicity rights by creating animatronic robotic figures (the
12354
robots) based upon their likenesses without their permission
and placing these robots in airport bars modeled upon the set
from the television show Cheers. They also appeal the district
court’s orders excluding appellants’ survey evidence, barring
presentation of expert testimony, and awarding Host and Par-
amount attorney’s fees. We have jurisdiction, 28 U.S.C.
S 1291, and we reverse and remand for trial.
II. PROCEDURAL HISTORY
In Wendt v. Host, 1995 WL 115571 (9th Cir. 1995)
(Wendt I), we reversed the first grant of summary judgment
in this action and remanded. We held that appellants’ state
law causes of action were not preempted by federal copyright
law and that disputed issues of material fact precluded sum-
mary judgment because the district court’s comparison of
photographs of appellants Wendt and Ratzenberger with pho-
tographs of the animatronic figures was not sufficient to
resolve their claims under Cal. Civ. Code S 3344:
The question here is whether the three dimensional
animatronic figures are sufficiently similar to plain-
tiffs to constitute their likenesses. Based on the lim-
ited record before us, it cannot be said as a matter of
law that the figures are so dissimilar from plaintiffs
that no reasonable trier of fact could find them to be
`likenesses.’ That question must be determined by a
comparison of the actual, three-dimensional entities.
1995 WL 115571 at *2. We concluded that this comparison
must be decided without reference to the context in which the
image appears. Id. (citing White v. Samsung Elec. Am., Inc.,
971 F.2d 1395, 1397 (9th Cir. 1992), cert. denied., _______ U.S.
_______, 113 S. Ct. 2443 (1993)). We found that there were dis-
puted issues of material fact concerning the appellants’ com-
mon law right of publicity claims because the similarity
between appellants’ physical characteristics and those of the
robots is disputed. Id. at *3. Finally, we held that the appel-
12355
lants’ claims for unfair competition under S 43(a) of the Lan-
ham Act, 15 U.S.C. S 1125(a), require the application of a
well settled eight factor test to determine whether Host’s
conduct has created a likelihood of confusion as to whether
appellants were endorsing Host’s product. Id.
Upon remand, the district court granted summary judgment
for a second time after an in-court inspection of the robots. It
held that it could not find, by viewing both the robotics and
the live persons of Mr. Wendt and Mr. Ratzenberger, that
there is any similarity at all . . . except that one of the robots,
like one of the plaintiffs, is heavier than the other . . . The
facial features are totally different. The district court then
awarded attorney’s fees to Host and Paramount pursuant to
Cal. Civ. Code S 3344.
Appellants argue that despite the district court’s compari-
son of the animatronic figures and the appellants, dismissal
was inappropriate because material issues of fact remain as to
the degree to which the animatronic figures appropriate the
appellants’ likenesses. Appellants claim that the district court
erred in determining that the robots were not likenesses of the
appellants because the likeness need not be identical or
photographic. Further, they argue that the likeness determina-
tion is an issue for the jury to decide in this case. We agree.
III. ANALYSIS
We review a grant of summary judgment de novo. Jesinger
v. Nevada Federal Credit Union, 24 F.3d 1127, 1130 (9th Cir.
1994). We must determine, viewing the evidence in the light
most favorable to the nonmoving party, whether there are any
genuine issues of material fact, and whether the district court
correctly applied the relevant substantive law. Id. We are not
to weigh the evidence or determine the truth of the matter, but
only to determine whether there is a genuine issue for trial. Id.
The district court’s rulings excluding damage evidence and
expert testimony are governed by an abuse of discretion stan-
12356
dard, and should not be reversed absent some prejudice.
Masson v. New Yorker Magazine, Inc., 85 F.3d 1394, 1399
(9th Cir. 1996). Our review is governed by the `law of the
case’ doctrine, which prevents courts from reconsidering an
issue previously decided by the same court, or a higher court
in the identical case. Securities Investor Protection Corp. v.
Vigman, 74 F.3d 932, 937 (9th Cir. 1996).
A. The Statutory Right of Publicity
California Civil Code S 3344 provides in relevant part:
[a]ny person who knowingly uses another’s name,
voice, signature, photograph, or likeness, in any
manner, . . . for purposes of advertising or selling,
. . . without such person’s prior consent . . . shall be
liable for any damages sustained by the person or
persons injured as a result thereof.
[1] In White, 971 F.2d at 1397, we ruled that a robot with
mechanical features was not a likeness underS 3344. How-
ever, we specifically held open the possibility that a manikin
molded to Vanna White’s precise features, or one that was a
caricature or bore an impressionistic resemblance to White
might become a likeness for statutory purposes. Id. The
degree to which these robots resemble, caricature, or bear an
impressionistic resemblance to appellants is therefore clearly
material to a claim of violation of Cal. Civ. CodeS 3344.
Summary judgment would have been appropriate upon
remand only if no genuine issues of material fact concerning
that degree of resemblance were raised by appellants. Fed. R.
Civ. P. 56.
[2] Despite the district court’s assertions that no reasonable
jury could find that the robots are similar in any manner
whatsoever to Plaintiffs, we respectfully disagree. Without
making any judgment about the ultimate similarity of the fig-
ures to the appellants, we conclude from our own inspection
12357
of the robots that material facts exist that might cause a rea-
sonable jury to find them sufficiently like the appellants to
violate Cal. Civ. Code S 3344.
We reject appellees’ assertion that Fleet v. CBS, 58 Cal.
Rptr. 2d 645 (Cal. Ct. App. 1996) is new controlling authority
that requires us to revisit the determination on first appeal that
appellants’ S 3344 claims are not preempted by federal copy-
right law. Wendt I, 1995 WL 115571, at *1. Fleet is not con-
trolling new authority on the preemption issue. It holds that
an actor may not bring an action for misappropriation under
Cal. Civ. Code S 3344 when the only claimed exploitation
occurred through the distribution of the actor’s performance
in a copyrighted movie. Id. at 651 (Appellants may choose
to call their claims misappropriation of right to publicity, but
if all they are seeking is to prevent a party from exhibiting a
copyrighted work they are making a claim equivalent to an
exclusive right within the general scope of copyright.) (inter-
nal quotations omitted).
[3] Appellants here are not seeking to prevent Paramount
from exhibiting its copyrighted work in the Cheers series. As
we stated in Wendt I, their claims are not preempted by the
federal copyright statute so long as they `contain elements,
such as the invasion of personal rights . . . that are different
in kind from copyright infringement.’ Wendt I, 1995 WL
115571 at * 1 (quoting Waits v. Frito-Lay, Inc., 978 F.2d
1093, 1100 (9th Cir. 1992) (citing H.R. Rep. No. 1476, 94th
Cong., 2d Sess. 132 (1976)). The Fleet court acknowledged
that it simply found a fact-specific exception to the general
rule that as a general proposition section 3344 is intended to
protect rights which cannot be copyrighted. Fleet, 58 Cal.
Rptr. 2d at 649.
Appellants’ claims are not preempted by federal copyright
law. Issues of material fact exist concerning the degree to
which the robots are like the appellants. We reverse the grant
12358
of summary judgment on the claim under Cal. Civ. Code
S 3344.
B. Common-Law Right of Publicity
[4] California recognizes a common law right of privacy
that includes protection against appropriation for the defen-
dant’s advantage of the plaintiff’s name or likeness. Eastwood
v. Super. Ct. for Los Angeles County, 198 Cal. Rptr. 342, 347
(Cal. Ct. App. 1983). The right to be protected against such
appropriations is also referred to as the right of publicity.
Id. A common law cause of action for appropriation of name
or likeness may be pleaded by alleging 1) the defendant’s use
of the plaintiff’s identity; 2) the appropriation of plaintiff’s
name or likeness to defendant’s advantage, commercially or
otherwise; 3) lack of consent; and 4) resulting injury. Id.
(citing Prosser, Law of Torts S 117 804-07 (4th ed. 1971)).
The so-called right of publicity means in essence that
the reaction of the public to name and likeness,
which may be fortuitous or which may be managed
and planned, endows the name and likeness of the
person involved with commercially exploitable
opportunities. The protection of name and likeness
from unwarranted intrusion or exploitation is the
heart of the law of privacy.
Lugosi v. Universal Pictures, 603 P.2d 425, 431 (1979).
[5] We have held that this common-law right of publicity
protects more than the knowing use of a plaintiff’s name or
likeness for commercial purposes that is protected by Cal.
Civ. Code S 3344. It also protects against appropriations of
the plaintiff’s identity by other means. See White, 971 F.2d at
1398 ([a] rule which says that the right of publicity can be
infringed only through the use of nine different methods of
appropriating identity merely challenges the clever advertis-
ing strategist to come up with the tenth.); see also Abdul-
12359
Jabbar v. General Motors Corp., 85 F.3d 407, 415 (9th Cir.
1996) (common law right protects identity, which is more
flexible than the statutory `laundry list’ of particular means of
appropriation); Midler v. Ford Motor Co., 849 F.2d 460, 463-
64 (9th Cir. 1988) (concluding that there was a claim for vio-
lation under common law right of publicity, but not Cal. Civ.
Code S 3344, for use of sound-alike singer in advertisement);
Motschenbacher v. R.J. Reynolds Tobacco Co., 498 F.2d 821,
827 (9th Cir. 1974) (concluding that there was a common-law
claim from use of an identifiable race car in an advertisement,
even though name or likeness of famous driver was not visi-
ble).
Appellees argue that the figures appropriate only the identi-
ties of the characters Norm and Cliff, to which Paramount
owns the copyrights, and not the identities of Wendt and Rat-
zenberger, who merely portrayed those characters on telev-
sion and retain no licensing rights to them. They argue that
appellants may not claim an appropriation of identity by rely-
ing upon indicia, such as the Cheers Bar set, that are the prop-
erty of, or licensee of, a copyright owner. Sinatra v. Goodyear
Tire & Rubber Co., 435 F.2d 711, 716 (9th Cir. 1970).
Appellants freely concede that they retain no rights to the
characters Norm and Cliff; they argue that the figures, named
Bob and Hank, are not related to Paramount’s copyright
of the creative elements of the characters Norm and Cliff.
They argue that it is the physical likeness to Wendt and Rat-
zenberger, not Paramount’s characters, that has commercial
value to Host.
[6] 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. Lugosi, 603
P.2d at 431.
[7] Appellants have raised genuine issues of material fact
concerning the degree to which the figures look like them.
12360
Because they have done so, appellants have also raised triable
issues of fact as to whether or not appellees sought to appro-
priate their likenesses for their own advantage and whether
they succeeded in doing so. See Midler, 849 F.2d at 463. The
ultimate issue for the jury to decide is whether the defendants
are commercially exploiting the likeness of the figures to
Wendt and Ratzenberger intending to engender profits to their
enterprises. See Eastwood, 198 Cal. Rptr. at 349 (The first
step toward selling a product or service is to attract the con-
sumer’s attention.) We therefore reverse the grant of sum-
mary judgment on the common law right of publicity claim.
C. Unfair Competition
[8] Section 43(a) of the Lanham Act (15 U.S.C. S 1125(a))
prohibits, inter alia, the use of any symbol or device which
is likely to deceive consumers as to the association, sponsor-
ship, or approval of goods or services by another person. The
appellants’ claim is for false endorsement–that by using an
imitation of their unique physical characteristics, Host misrep-
resented their association with and endorsement of the Cheers
bars concept.
In Waits, 978 F.2d at 1110, we held such a claim actionable
under S 43(a):
[a] false endorsement claim based on the unautho-
rized use of a celebrity’s identity . . . alleges the mis-
use of a trademark, i.e., a symbol or device such as
a visual likeness, vocal imitation, or other uniquely
distinguishing characteristic, which is likely to con-
fuse consumers as to the plaintiff’s sponsorship or
approval of the product.
[9] In Wendt I we held that appellants would have a claim
if Host’s conduct had created a likelihood of confusion as to
whether plaintiffs were endorsing Host’s product. 1995 WL
115571 at *3. In order to determine whether or not such con-
12361
fusion is likely to occur, we referred to a well settled eight
factor test to be applied to celebrity endorsement cases,
Newton v. Thomason, 22 F.3d 1455, 1462 (9th Cir. 1994).
This test requires the consideration of:
1) the strength of the plaintiff’s mark;1
2) relatedness of the goods;
3) similarity of the marks;
4) evidence of actual confusion;
5) marketing channels used;
6) likely degree of purchaser care;
7) defendant’s intent in selecting the mark;
8) likelihood of expansion of the product lines.
Id. at 1462 (citing AMF, Inc. v. Sleekcraft Boats, 599 F.2d
341 (9th Cir. 1979)).
In Wendt I we concluded that one of the primary factors of
this test was the `similarity of the marks’ and because there
was a disputed issue of material fact as to that issue, summary
judgment was inappropriate on this claim.
[10] On remand, however, the district court simply com-
pared the robots with the appellants in the courtroom and
awarded judgment because there was no similarity at all.
The district court erred in failing independently to analyze
any of the other relevant factors to determine whether or not
_________________________________________________________________
1 In a case involving confusion over endorsement by a celebrity plaintiff,
`mark’ means the celebrity’s persona and the strength of the mark refers
to the level of recognition the celebrity enjoys. White, 971 F.2d at 1400.
12362
there was a likelihood of confusion to consumers as to
whether appellants sponsored, approved of, or were otherwise
associated with the Cheers bars.
[11] The Lanham Act’s `likelihood of confusion’ standard
is predominantly factual in nature. Summary judgment is
inappropriate when a jury could reasonably conclude that
most of the factors weigh in a plaintiff’s favor. Abdul-Jabbar,
85 F.3d at 413 (9th Cir. 1996). See also MDT Corporation v.
New York Stock Exchange, Inc., 858 F. Supp. 1028, 1032
(C.D. Cal. 1994) (summary judgment disfavored in trademark
cases because the ultimate issue of likelihood of confusion is
so inherently factual).
[12] Application of these factors indicates that the district
court erred in rejecting appellants’ Lanham Act claim at the
summary judgment stage because a jury could reasonably
conclude that most of the factors weigh in appellants’ favor.
Wendt and Ratzenberger were principal players on Cheers, a
popular television show. They are clearly well-known among
the target customers of Host’s Cheers bars. For the purposes
of this analysis, a jury could reasonably conclude that their
mark is strong.
[13] For the same reason, their `goods’ (their skill and fame
as actors) are obviously related to Host’s `goods’ (the prod-
ucts sold in the Cheers bars and the bars themselves) even if
they are not strictly competitive. The issue is whether a con-
sumer would be confused as to Wendt and Ratzenberger’s
association with or sponsorship of Host’s bars. See White, 971
F.2d at 1400 (In cases concerning confusion over celebrity
endorsement, the plaintiff’s `goods’ concern the reasons for or
source of the plaintiff’s fame.) The source of their fame and
the Host bars are identical: the Cheers television series. A jury
could conclude that this factor weighs in appellants’ favor
because it would be reasonable for a customer to be confused
as to the nature of Wendt and Ratzenberger’s association with
Host’s Cheers bars and the goods sold there.
12363
[14] The third factor, the similarity of the marks, is the pri-
mary issue in dispute. Because appellants have raised triable
issues of material fact concerning the degree to which the
robots resemble the appellants, a reasonable jury might find
that this factor weighs in appellants’ favor. Under the Lanham
Act, in camera inspection is not sufficient; the district court
must view the marks as they appear in the marketplace. E
& J Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291
(9th Cir. 1992).
[15] Appellants presented evidence of actual confusion, the
fourth factor. Both Ratzenberger and Wendt stated in their
declarations that they have been approached by members of
the public who commented on the similarity between the
appellants and the robots at the Cheers airport bars: The
usual comment is some variation on `Hey George, I just had
a drink with you in Kansas City.’ They also submitted evi-
dence of consumer confusion to the district court prior to
summary judgment in the form of survey evidence. The court
rejected this evidence as not a good survey. For reasons
detailed below, this evidence should not have been excluded.
Sufficient evidence exists by which a reasonable jury might
infer actual consumer confusion.
[16] The fifth factor, marketing channels used, weighs in
the appellants’ favor. The allegation is that Host is appropriat-
ing appellants’ likenesses because the target audience of the
Cheers bars are customers who are fans of the television
series. Such a similarity in marketing channels suggests that
there is at least a likelihood of consumer confusion.
[17] The sixth factor, likely degree of purchaser care,
weighs in favor of appellants as well. Consumers are not
likely to be particularly careful in determining who endorses
or is affiliated with an airport bar in which they might pur-
chase only a single beverage. They will be even less likely to
scrutinize the source of the animatronic figures which are not
for sale, but are used instead to attract patrons to the bars.
12364
This low degree of care makes confusion of sponsorship
likely. See White, 971 F.2d at 1400 (consumers are not likely
to be particularly careful in determining who endorses VCR’s,
making confusion as to their endorsement more likely.)
[18] The seventh factor is defendant’s intent in selecting
the mark. Appellants have alleged facts that could give rise to
an inference that Host intended to confuse customers as to
Wendt and Ratzenberger’s sponsorship or endorsement of the
Cheers bars by creating robots with their physical characteris-
tics. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 354 (9th
Cir. 1979) (When the alleged infringer knowingly adopts a
mark similar to another’s, reviewing courts presume that the
defendant can accomplish his purpose: that is, that the public
will be deceived.). In their opposition to summary judgment
appellants submitted evidence that Host intentionally
designed the animatronic figures to resemble Wendt and Rat-
zenberger and that it recognized from the outset that the value
of the association with Wendt and Ratzenberger themselves
was a major drawing card of the Cheers concept. After
being advised that appellants would not agree to the use of
their likenesses, Host altered the robots cosmetically, named
them Hank and Bob,2 and refused to recast them into a
friendly neighborhood couple, as they were advised to do
by Paramount. Based on this evidence, an inference can be
raised that Host intended to exploit the appellants’ celebrity
by confusion as to the similarity between the figures and the
appellants.
[19] We have found that the eighth factor, likelihood of
expansion of the product lines, does not appear apposite to
a celebrity endorsement case, White, 971 F.2d at 1401. Here,
however, Ratzenberger has offered evidence that he would
like to appear in advertisements for beer and has declined
offers from small breweries in order to be available to a large
_________________________________________________________________
2 Until that point Hank was referred to in the record as Cliff and
Bob as Norm.
12365
brewery. Inasmuch as a trademark owner is afforded greater
protection against competing goods, a `strong possibility’ that
either party may expand his business to compete with the
other will weigh in favor of finding that the present use is
infringing. Sleekcraft, 599 F.2d at 354 (citing Restatement of
Torts S 731(b)). This factor therefore weighs in appellants’
favor as the potential exists that in the future Ratzenberger’s
endorsement of other beers would be confused with his
alleged endorsement of the beers sold at Host’s bars.
[20] A reasonable jury could conclude that most of the fac-
tors weigh in appellants’ favor and that Host’s alleged con-
duct creates at least the likelihood of consumer confusion.
Whether appellants’ Lanham Act claim should succeed, of
course, is a matter for the jury. Accordingly, we reverse the
dismissal of the unfair competition claim and remand.
D. Exclusion of Survey Evidence
In their opposition to Paramount’s summary judgment
motion, appellants offered into evidence the results of a con-
sumer survey taken in the vicinity of the Cheers bars at the
Cleveland and Kansas City airports. The district court refused
to admit the evidence, saying that the evidence was not a
good survey.
[21] As the record stood, the refusal was an abuse of discre-
tion. In trademark cases, surveys are to be admitted as long
as they are conducted according to accepted principles and are
relevant. E & J Gallo Winery, 967 F.2d at 1280; see also Pru-
dential Ins. Co. of Am. v. Gibraltar Fin. Corp., 694 F.2d
1150, 1156 (9th Cir. 1982). Challenges to survey methodol-
ogy go to the weight given the survey, not its admissibility.
Prudential Ins., 694 F.2d at 1156. However, because of the
paucity of the record, upon remand, the parties should have
the opportunity respectively to lay a foundation for the admis-
sion of the survey or to challenge the adequacy of the founda-
tion.
12366
E. Exclusion of Expert Testimony
Prior to the first appeal in this case the district court issued
a Preclusion Order barring the introduction of expert testi-
mony as a sanction against appellants’ former counsel for fail-
ure to disclose damage evidence and for being late disclosing
experts. Upon remand, the district court denied appellants’
request that it vacate its order.
The initial Preclusion Order was issued on August 9, 1993
as a sanction against appellants’ former counsel. At that time,
counsel’s failure to comply with discovery rules potentially
prejudiced Host and Paramount’s ability to prepare ade-
quately for trial. Today, that is not so. Both parties now have
ample opportunity to begin the expert disclosure procedure
anew.
Wanderer v. Johnston, 910 F.2d 652, 656 (9th Cir. 1990),
requires us to determine whether a sanction is proper under a
five-factor test analyzing: 1) the public’s interest in expedi-
tious resolution of litigation; 2) the court’s need to manage its
docket; 3) the risk of prejudice to the defendants; 4) the public
policy favoring disposition of cases on their merits; 5) the
availability of less drastic sanctions. We conclude that under
this test, the Preclusion Order is no longer proper. Less drastic
sanctions are available and the defendants are no longer preju-
diced by the actions of appellants’ former counsel. We grant
appellants’ request to vacate the Preclusion Order upon
remand. However, the district court, may, in its discretion,
impose reasonable monetary sanctions upon appellants’ for-
mer counsel for failure to comply with discovery rules.
F. Attorney’s Fees
Because we reverse the grant of summary judgment under
Cal. Civ. Code S 3344, we reverse the grant of attorney’s fees
to Host and Paramount and deny their requests for attorney’s
fees on appeal.
12367
IV. CONCLUSION
The grant of summary judgment is reversed and the case is
remanded to the district court for trial. The admission of the
survey evidence should be reconsidered at trial. The Preclu-
sion Order is vacated and appropriate sanctions other than
preclusion may be considered. The grant of attorney’s fees is
reversed.
REVERSED and REMANDED.
12368
http://www.ca9.uscourts.gov/ca9/newopinions.nsf/04485f8dcbd4e1ea882569520074e698/38e97db86b8c25c58825695800725cb9?OpenDocument
Supreme Court says Norm and Cliff can sue over robots
October 2, 2000
Web posted at: 10:43 AM EDT (1443 GMT)
WASHINGTON (AP) — The Supreme Court refused to derail a lawsuit in which actors George Wendt and John Ratzenberger, who portrayed endearing barflies Norm and Cliff in the Cheers television comedy, say two robots stole their old act.
The justices, acting without comment on Monday, rejected an appeal in which Paramount Pictures Corp. and Host International Inc. sought to squelch the right-of-publicity case.
Paramount produced the popular Cheers show, which ran on network television from 1982 to 1993 and continues to run in syndication.
Set in a friendly neighborhood bar in Boston — the kind of place where everybody knows your name — the show featured, among others, Wendt as the fat and often-unemployed Norm Peterson and Ratzenberger as nerdy mailman Cliff Clavin, the bar’s know-it-all windbag.
Paramount, which owns the copyright and trademark in Cheers and all its characters, granted Host International a license to set up bars in airports throughout the world using the same decor and theme as the TV show’s tavern.
The decor of several of the bars includes two life-size, robotic customers named Hank and Bob who are programmed to move and engage in humorous banter whenever customers sit close by. One of the robots is quite heavy; the other wears a Postal Service uniform.
Wendt and Ratzenberger sued Host, contending that its use of the two robotic figures violated their rights of publicity.
Linked to an individual’s privacy rights, the right of publicity gives people exclusive control over the use of their likeness or voice for profit.
A federal trial judge in California twice threw out the lawsuit, ruling that Paramount’s copyright ownership entitled it to create derivative works based on the Cheers show. The judge also ruled that the two robots did not even look much like Norm and Cliff.
The 9th U.S. Circuit Court of Appeals twice reinstated the lawsuit, ruling most recently in 1997 that California’s right-of-publicity law was not necessarily trumped by federal copyright law. And the appeals court said a jury should decide whether the robots resemble the Wendt and Ratzenberger in their character portrayals.
In the appeal acted on Monday, lawyers for Paramount and Host argued that the appeals court ruling lets state law swallow federal copyright law. The case is Paramount Pictures v. Wendt
http://www.cnn.com/2000/LAW/scotus/10/02/scotus.cheers.ap/
Legal Issues
