As the second part of this article, published in our October edition, we turned our attention mostly on how this defense has been treated by the Ninth Circuit. There are many cases, possibly too many to be discussed in this short article but below are summaries of those we consider most relevant.
One case worth mentioning from the Second Circuit is Rogers v. Grimaldi (1989), 875 F.2d 994 – because it is the case establishing the “Rogers test” for protecting uses of trademarks that implicate intellectual property freedom issues. Plaintiff Ginger Rogers brought suit alleging that the defendants, producers and distributors of movie “Ginger and Fred”, violated §43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1982), by creating the false impression that the film was about her or that she sponsored, endorsed, or was otherwise involved in the film, (2) violated her common law right of publicity, and (3) defamed her and violated her right to privacy by depicting her in a false light.
District court found that defendants' use of Rogers' first name in the title and screenplay of the film was an exercise of artistic expression rather than commercial speech, hence the prohibitions of the Lanham Act do not apply, and the Film was entitled to the full scope of protection under the First Amendment. The 1st amendment also barred the right of publicity claim and the false light claim.The appellate court held that the possibly misleading meaning without the result of explicit misstatement, precludes a Lanham Act claim for false description.
In re Twentieth Century Fox TV v. Empire Distribution, Inc., 875 F.3d 1192, 1195 (9th Cir. 2017)Fox filed suit seeking a declaratory judgment that the Empire show and its associated music releases did not violate Empire Distribution's trademark rights under either the Lanham Act or California law. Empire Distribution counterclaimed for trademark infringement, trademark dilution, unfair competition, and false advertising under the Lanham Act and California law, and sought both injunctive and monetary relief.
The District Court granted summary judgment to Fox on all claims and counterclaims, and denied reconsideration. The appellate court held that the Roger test for determining whether the Lanham Act applies to an allegedly infringing use of a trademark as the title of an expressive work applied to television broadcasting company's use of “Empire” for title of television show. The Fox’s use of “Empire” mark had artistic relevance to the show; and the use of the mark for title of show and associated music releases was not explicitly misleading.
In re Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir.1992), Waits is a professional singer that explicitly stated his policy of not doing commercials. Tracy-Locke was developing a commercial and asked Waits to sing in the commercial but the singer declined. The company found someone that could imitate Waits’ voice and produced the commercial.
Waits brought suit against the corporation alleging voice misappropriation and false endorsement in violation of the Lanham Act. The District Court awarded compensatory and punitive damages and attorney's fees, and appellants sought review, holding that appellee's voice misappropriation claim was not preempted by federal copyright law because the elements of voice misappropriation, a voice that was distinctive and widely known, were different in kind from those in a copyright infringement case challenging the unauthorized use of a song or recording. The court held that the evidence to support the compensatory damages award was sufficient. Pursuant to Cal. Civ. Code § 3294(a), punitive damages were available because clear and convincing evidence supported the finding of "high probability." The court held that false endorsement claims were properly cognizable under § 43(a) of the Act. However, the court vacated the damages award under the Act because it was duplicative of the award under the voice misappropriation claim. The court vacated in part and affirmed in part the judgment of the district court.
In re Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) Plaintiff, Midler sued Young & Rubicam alleging violation of the property rights on her voice. Defendant asked for the Plaintiff to sing for a commercial but the Plaintiff declined. Defendant hired a “sound alike” to play the song. The imitation was close enough to make people think that Midler was singing in the commercial.
The District Court granted summary judgment for the Defendant. The appellate court reversed holding that when a distinctive voice of a professional singer is widely known and is deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs and have committed a tort in California. The court considered the Defendant’s conduct an appropriation of Midler identity.
In re. Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1396 (9th Cir. 1997), Plaintiff contended that Defendants’ book infringed upon its trademarks copyrights violating the Lanham Act, 15 U.S.C.S. § 1125(a); the Federal Trademark Dilution Act of 1995, 15 U.S.C.S.§ 1125(c)(1); and the California Unfair Competition Statute, § 17200 et seq. and § 14330. Plaintiff moved for a preliminary injunction to prohibit defendants from publishing or distributing their book, which the district court granted. The appellate court held that plaintiff demonstrated a strong likelihood of success on the copyright and trademark infringement claims and that the district court's ruling was not clearly erroneous nor overbroad as the balance of hardships favored plaintiff on the trademark violations.
Citing the United States Supreme Court the court held that “For the purposes of copyright law, the nub of the definitions, and the heart of any parodist's claim to quote from existing material, is the use of some elements of a prior author's composition to create a new one that, at least in part, comments on that author's works. . . . If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another's work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger.”
Mattel, Inc. v. MCA Records, 296 F.3d 894 Mattel, Plaintiff brought action against music companies for trademark infringement and dilution associated with song that lampooned manufacturer's “Barbie” trademark associated with doll, and music company brought counterclaim for defamation. Mattel owned the trademark to and was the maker of Barbie, that had become a cultural icon. A Danish music band had a song that parodied the doll. The District Court granted summary judgment on parties' claims. Toy manufacturer appealed, and music company cross appealed. The Court of Appeals held that the music companies' use of “Barbie” mark in song was not an infringement of toy manufacturer's trademark associated with doll; the song fell under non-commercial use exception in Federal Trademark Dilution Act; the toy manufacturer had no claim to federal cause of action for unfair competition against music companies under Paris Convention for Industrial Property and Lanham Act; and the toy manufacturer's representative's statement that music company's disclaimer on albums containing song that lampooned doll was “akin to a bank robber handing a note of apology to a teller during a heist” was not defamatory.
Last but not least in re DC COMICS, v. MAD ENGINE, INC. [case unpublished – no binding authority], Plaintiff DC Comics asserted its trademark rights in its Superman character, specifically the iconic shield design that Superman wears on his chest, alleging federal trademark infringement and counterfeiting under 15 U.S.C. § 1114, unfair competition and false designation of origin under 15 U.S.C. § 1125, trademark dilution under 15 U.S.C. § 1125, and state law unfair competition under California Business and Professions Code section 17200 et seq. Defendant alleged parody and filed a Motion to Dismiss. The court found that Defendant's shirt is more like a humorous use to promote the t-shirt's sales rather than a parody of Superman. The marks are substantially similar and the parody argument was insufficient, the complaint had properly alleged both its dilution and unfair competition causes of action based on the same underlying facts.
Hence, the court denied the Motion to Dismiss.