USDC E.D. California, December 7, 2009

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  • Court denies defendant’s motion for summary judgment on plaintiff’s common law and statutory misappropriation of likeness claims, rejecting defendant’s argument that its press release announcing a new service, that included plaintiff’s name, was noncommercial speech entitled to First Amendment protection, and rejecting argument that defendant’s use of plaintiff’s name as a trademark in press release was a nominative fair use.

Plaintiff Chuck Yeager is a well-known retired U.S. Army test-pilot who, in 1947, was the first person to break the sound barrier. Defendant Cingular Wireless issued a press release in 2006 announcing its new emergency preparedness program. The press release stated: “Nearly 60 years ago, the legendary test pilot Chuck Yeager broke the sound barrier and achieved Mach 1. Today, Cingular is breaking another kind of barrier with our MACH 1 and MACH 2 mobile command centers, which will enable us to respond rapidly to hurricanes and minimize their impact on our customers.”

Yeager filed suit for, among other things, violation of California common law and statutory commercial misappropriation of likeness and false endorsement under the Lanham Act, arising from Cingular’s use of Yeager’s name without his consent.

Cingular moved for summary judgment on the commercial misappropriation claims, arguing that the press release is noncommercial speech entitled to First Amendment protection and that its use of Yeager’s name was incidental. Cingular also moved for summary judgment on the Lanham Act claim, arguing that Yeager presented no evidence of actual confusion caused by its use of Yeager’s name and that its use of Yeager’s name was a nominative fair use. The court denied Cingular’s motion for summary judgment on all of Yeager’s claims.

The court analyzed the law as follows: to state a claim for misappropriation of likeness under California common law, a plaintiff must prove: (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. See Downing v. Abercrombie & Fitch, 265 F.3d 994, 1001 (9th Cir. 2001) (citing Eastwood v. Superior Court, 149 Cal. App. 3d 409, 417 (1983)).

California Civil Code § 3344(a) provides in relevant part that “[a]ny person who knowingly uses another’s name . . . in any manner . . . for purposes of advertising or selling, or soliciting purchases of . . . goods or services, without such person’s prior consent . . . shall be liable for any damages sustained by the person or persons injured as a result thereof.” According to the court, Section 3344 complements the common law cause of action for commercial misappropriation. A plaintiff making a claim under Section 3344 must allege a knowing use by the defendant as well as a direct connection between the alleged use and the commercial purpose, in addition to proving the elements of the common law cause of action.

California courts recognize that the First Amendment protects some statements from liability. As the court stated, a “court must consider the nature of the precise information conveyed and the context of the communication.” If the speech is classified as commercial speech, it is not actionable “when the plaintiff’s identity is used, without consent, to promote an unrelated product.” Gionfriddo v. Major League Baseball, 94 Cal. App. 4th 400, 413 (2001).

The defendant argued that the press release was noncommercial speech that deserves the full protection of the First Amendment because it does not propose any commercial transactions and does not offer any products or services. The court noted that the boundary between commercial and noncommercial speech has yet to be clearly delineated. “On one end of the spectrum, an advertisement is clearly commercial speech. On the other end of the spectrum is speech that, when viewed as a whole, expresses editorial comment on matters of interest to the public. Informational publications that refer to or promote a specific product, but are not mere proposals to engage in commercial transactions, present a closer question regarding the appropriate classification of the type of speech” (citations omitted).

The court held that the press release is properly categorized as commercial speech. “The central theme of the publication was how defendant’s emergency preparedness program enhances its wireless services. Defendant’s name as a service provider is mentioned multiple times throughout the publication. Further, the publication did not seek to inform the reader about emergency preparedness generally, but rather how defendant’s wireless service specifically had been improved to handle such emergencies. Indeed, the writer of the Publication testified that the purpose of the Publication was, in part, to create positive associations with the AT&T brand. As such, it is reasonable to infer that defendant had an economic motivation underlying the Publication’s distribution. . . . While none of these facts alone is necessarily dispositive, a review of the Publication as a whole supports a finding that it is commercial speech.”

The court distinguished this case from Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001), in which the Ninth Circuit held that a magazine’s use of Dustin Hoffman’s image in an article about fashion and Hollywood was protected by the First Amendment. “Viewing the article in context, the Hoffman court described it as a combination of fashion photography, humor, and visual and verbal editorial comment, implicating the First Amendment’s protection of expressions of editorial opinion. The Hoffman court also noted that the defendant received no consideration from the designers for featuring the clothing in the altered photograph.” In this case, the court explained that the press release’s sole purpose was to promote defendant’s services. “It provided information about defendant’s program, but expressed no editorial comment on public safety issues during a natural disaster or any other related issue. Accordingly, the First Amendment’s protection of expressions of editorial opinion is not likewise implicated under the facts in this case.”

The defendant also argued that the First Amendment protects its use of plaintiff’s name because the publication reported on matters of public interest, specifically, the public safety concerns following Hurricane Katrina and Rita, and whether its customers could rely on defendant’s services during a natural disaster. The court rejected this argument, noting that the press release does not speak generally about public safety issues or even mention those well-known hurricanes, and that “plaintiff’s name and accomplishments in breaking the sound barrier are wholly unrelated to defendant’s mobile command centers and cellular service in emergency situations.”

The court also rejected the defendant’s argument that its use of plaintiff’s name was an incidental use. The court explained that whether the use of a plaintiff’s name or likeness falls within the incidental use exception to liability “is determined by the role that the use of the plaintiff’s name or likeness plays in the main purpose and subject of the work at issue.” See Preston v. Martin Bregman Prods., Inc., 765 F. Supp. 116, 119 (S.D.N.Y. 1991). Generally, “a plaintiff’s name is not appropriated by mere mention of it.” Restatement (Second) of Torts § 652C, comment d. A claim is also not actionable when a plaintiff’s likeness is appropriated because “it is published for purposes other than taking advantage of his reputation, prestige, or other value associated with him.” Id.

The court stated that, in determining whether the doctrine of incidental use applies, courts have considered (1) whether the use has a unique quality or value that would result in commercial profit to the defendant, (2) whether the use contributes something of significance, (3) the relationship between the reference to the plaintiff and the purpose and subject of the work, and (4) the duration, prominence or repetition of the likeness relative to the rest of the publication. In this case, the court held that defendant’s use was not an incidental use. “Plaintiff’s name and identity is unique and non-fungible in that he is the person associated with breaking the sound barrier for the first time. The use of his name and identity links defendant’s new technology to plaintiff’s name and accomplishments. . . . While the use of plaintiff’s name and reference to his accomplishment was a small part of the 755-word publication, the association of defendant’s services with a historical feat is a use that may help to pique the interest of a newsman deciding whether to follow up on a press release. . . . The use of plaintiff’s name and identity uniquely enhanced the marketability of defendant’s service.”

The court then turned to Yeager’s Lanham Act claim for false endorsement. A false endorsement claim is actionable under the Lanham Act if such claim is based on the unauthorized use of a uniquely distinguishing characteristic of a celebrity’s identity that is likely to confuse consumers as to the plaintiff’s sponsorship or approval of the product. Defendant contended that plaintiff’s claim fails as a matter of law because (1) plaintiff cannot demonstrate triable issues of fact regarding actual confusion because the press release did not contain any express endorsement; and (2) the nominative fair use doctrine supports summary judgment.

The court denied summary judgment for defendant on the Lanham Act claim because the plaintiff presented sufficient evidence regarding likelihood of confusion to withstand summary judgment. “While there is little relationship between plaintiff’s mark and the cellular services in emergency situations and scant specific evidence regarding actual confusion, the court cannot find that defendant is entitled to judgment as a matter of law at this stage in the litigation.” The court also rejected the defendant’s argument that its use was a nominative fair use, stating that nominative fair use is a defense in a class of cases “where the use of the trademark does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one.” New Kids On The Block v. New Am. Publ’g, Inc., 971 F.2d 302, 308 (9th Cir. 1992). To establish a nominative fair use defense, a defendant must prove: (1) the product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

The court held that where a celebrity’s name is used in a commercial, there are triable issues of fact regarding whether such use implies endorsement and the defendant failed to meet its burden in establishing that the nominative fair use defense applies as a matter of law. “Defendant used plaintiff’s name and accomplishments to support its own product, specifically comparing plaintiff’s feat in breaking the sound barrier to defendant’s technological advancements. While not featured in a television commercial, the deliberate, closely-tied analogy in a press release directed to create positive associations with defendant’s product is sufficient to raise a triable issue of fact regarding implied endorsement.”