The use of a celebrity's name on a product is not transformative to qualify for First Amendment protection, a California federal court judge recently ruled.
Buckyballs, the self-proclaimed "world's most popular desk toy," was sued by the estate of Buckminster Fuller for violation of his publicity rights and the Lanham Act. Fuller – whose nickname was Bucky – held 28 patents and was best known as the creator of the geodesic dome. The Carbon-60 molecule (the Buckminsterfullerene molecule) was also named in his honor because of its resemblance to the dome.
According to the complaint filed by the estate, Maxfield & Oberton (the maker of Buckyballs) acknowledged in a press release that the toy was "inspired and named after famous architectural engineer and inventor, R. Buckminster Fuller." The toys are round, rare earth magnets that can be combined to form various shapes, including one that resembles the Buckminsterfullerene molecule.
Maxfield & Oberton sought to dismiss the suit. The company argued that the plaintiff's claims were barred by the First Amendment under the doctrine of transformative use and that while the estate owns the rights to Buckminster Fuller's name, it does not own the name "Buckyballs."
But U.S. District Court Judge Lucy Koh said the use of the term "Buckyballs" was not transformative because the product itself does not "depict, reference, or involve" Fuller. "The simple use of a name is not an act of expression in the way that the creation or alteration of an image is, and a name cannot be transformed while remaining recognizable in the way that an image can," she wrote. Fuller's image is not also involved in the product, she noted, and "the Court cannot see how [the transformative use doctrine] could be applied to an individual's name when his image is not also involved."
Further, Judge Koh said that the defendant was not entitled to First Amendment protection for the use of a celebrity's name – transformed or otherwise – to sell an unrelated product. "It is the nature of an endorsement that the product endorsed has its own value, and that the endorsement serves merely to boost consumer interest or trust. If this fact could render the use of a celebrity's name 'transformative' and thus protected by the First Amendment, it would vitiate California's well-established right of publicity and the protections of the Lanham Act," she concluded.
The court also rejected the defendant's contention that the estate did not have rights to the specific term "Buckyballs." The toy maker's "argument is tantamount to a claim that the registered name, and only the registered name, without being altered in any way or combined with any other terms, can be protected under [California state law]. But this is not the law. As the Ninth Circuit has explained, '[t]he statute's reference to name or likeness is not limited to present or current use' and whether use of a variation on the plaintiff's name is sufficient to establish a violation 'is a question for the jury,' " Judge Koh said.
To read the court's decision in Estate of Buckminster Fuller v. Maxfield & Oberton, click here.
Why it matters: The court made a distinction between the use of a celebrity's name and the use of an image when publicity rights are in dispute. Judge Koh said that because the product itself allegedly misappropriates Fuller's name, it was "unclear for what 'work' [the defendant] is claiming First Amendment protection." The transformative use defense depends on the visual nature of a transformation, which necessitates an image, the court said. The court also deferred one other defense contention for the future: Maxfield & Oberton's argument that the Buckyballs were in fact named after the molecule and not the man. Judge Koh said the issue is a question of fact not suitable for resolution on a motion to dismiss.