Viability of trade dress arguments and comparison with right of publicity claims

The Supreme Court rejected a trademark infringement claim against the producers of the Quentin Tarantino film ‘Once Upon a Time… in Hollywood’ over its portrayal of the late actor Christopher Jones. Scott Hervey and Tara Sattler discuss this decision in this episode of The Briefing.

Watch this episode on the Weintraub YouTube channel here.

Show Notes:

Tara:
The laws surrounding false endorsement claims in the United States are rooted in section 43 A of the Lanham Act. There’s quite a bit of case law that analyzes false endorsement claims brought by celebrities who claim that a company or brand used a lookalike or soundalike to promote the brand in advertising or marketing campaigns without the celebrity’s permission. Recently, the U.S. Supreme Court refused to review a California case about this exact topic. This time, the case was brought by the partner of the late actor Christopher Jones concerning the popular 2019 Quentin Tarantino film ‘Once Upon a Time in Hollywood.’ This is what we will be discussing in today’s installment of the Briefing by Weintraub Tobin.

Scott:
I’m Scott Hervey from Weintraub Tobin. Tara, thanks for joining me today. So you’re right that celebrities bring these types of false endorsement claims under section 43 A of the Lanham Act relatively frequently. So, let’s talk about the specific language in the Lanham Act that addresses false endorsement.

Tara:
That’s a great place to start. Section 43 A imposes civil liability on any person who, on or in connection with any goods or services, uses in commerce any word, term, name, symbol or, device, or any combination thereof, or any false designation of origin. False. Or misleading description of fact or false or misleading representation of fact, which is likely to deceive consumers as to the affiliation, connection, association sponsorship, or approval of another person’s goods or services.

Scott:
Right. And courts have held that a celebrity’s physical likeness, voice, or other unique or distinguishing characteristics does constitute a symbol or device as specified in section 43 A of the Lanham Act. So, this is the usual basis for a celebrity false endorsement claim. These types of claims often arise in marketing and advertising campaigns where a brand or a service will use a lookalike or a sound alike of a celebrity. And I’ve even seen cases where they’ve used photographs of a celebrity to market that brand. Vanna White from Wheel of Fortune and the pop culture and music icon Ariana Grande, to name just a few, have brought false endorsement claims in the past.

Tara:
This recent case that went up to the U.S. Supreme Court concerns the likeness and unique physical attributes of the late actor Christopher Jones. Jones was a popular actor in the 1960s, starring in both TV and movies. Jones passed away in 2014 and assigned the rights in his likeness to his partner, Paul McKenna. Sony released Quentin Tarantino’s film Once Upon a Time in Hollywood in 2019. The film is loose historical fiction based in the 1950s and centers around fictional characters played by Leonardo DiCaprio and Brad Pitt. It also touches on the Manson family murder of Sharon Tate McKenna.

Scott:
The executor of Jones’s estate brought both a false endorsement claim and a trademark infringement claim against the producers of Tarantino’s film. The plaintiff cited a few examples as the basis of the claim. First, Jones’s name was mentioned in Tarantino’s film. Second, a television advertisement and a marquee advertisement that mentions Jones’s name and one of Jones’s films. Three in The Addict are shown on screen in Tarantino’s film. And third, Jones was used as the inspiration for the fictional character played by Brad Pitt and Leonardo DiCaprio. While these characters interacted with commercial brands.

Tara:
In Tarantino’s film, the trial court evaluated the merits of McKenna’s claim. While evaluating the defendant’s anti-slapp motion on the false endorsement claim, the trial court emphasized that mere use of a celebrity’s image or likeness is not actionable, but the use of a celebrity’s image and likeness needs to suggest sponsorship or approval in order to constitute a false endorsement. The court further emphasized that a false endorsement must also be something that is likely to confuse consumers or mislead them into thinking that the celebrity endorsed a product or brand when they actually did not. While the question of consumer confusion is a factual one, the court did not find it plausible that a brief use of Jones’s name or some loosely similar personality characteristics would mislead a reasonable viewer watching the film.

Scott:
Right. And this is in line with the decades of other precedent on this matter that establishes that a celebrity’s voice, likeness, or persona; first it needs to be distinctive enough to be recognized and identifiable to consumers and the public in order to ultimately be capable of misleading consumers of being a trademark and then misleading consumers. The other interesting analysis in the McKenna case is the analysis on trademark infringement. There’s also established court precedent relating to this argument. First, courts have consistently held that, as a general rule, a person’s image or likeness cannot function as a trademark, and that’s because that image does not perform the trademark function of designation. Thirdly, or secondly, sorry, it’s difficult for a personal name to garner trademark protection because a person’s name is not inherently distinctive, and proof of secondary meaning is needed in order for that name to establish itself as a protectable trademark.

Tara:
And the last trademark infringement argument that McKenna makes is one of infringement of Jones’s trade dress. Trade dress refers to the totality of an image, design, and appearance of a product. The court found no authority or no prior cases supporting that an individual’s physical likeness, clothing, style, or personality traits constitute protectable trade dress. And understandably, the court did not believe that the circumstances of this case constituted protectable trade dress either. So, after all of this, McKenna’s question on cert to the US. Supreme Court was, does the Lanham Act properly prohibit the unauthorized use of a celebrity’s persona advertising third-party brands with logos in a commercial motion picture as a trademark infringement?

Scott:
And since the United States Supreme Court will not answer this question specifically because they denied cert, let’s talk a bit about this. More so, laws that protect motion pictures as protected speech under the First Amendment are very well established generally when weighing First Amendment interest against Lanham Act interests or right of publicity type issues. At least in the case of non-commercial speech, the First Amendment generally wins. We saw this in the California Court of Appeals ruling in De Havilland versus FX. And although that was brought as a right of publicity case, De Havilland could have also brought this as a trademark case. There, the court refused to restrict or limit speech that is fully protected by the First Amendment, which safeguards the storytellers and artists who take the raw materials of life, including the stories of real individuals, ordinary or extraordinary, and transform them into art, be it articles, books, movies, or plays.

Tara:
So, yes, the First Amendment presents a pretty big barrier to overcome with a trademark infringement claim. But there are some cases out there that supported McKenna’s position. For example, parks versus Leface Records. In that case, the heirs of Rosa Parks brought a trademark claim against the band OutKast and the band’s label based on the use of Parks’ name as the title of a song. Parks contends that the defendants violated the Lanham Act because the Rosa Parks title misleads consumers into believing that the song is about her, or that she is affiliated with the defendants, or has sponsored or approved the Rosa Park song and the album on which the song is featured.

Scott:
In that case, the Court of Appeals applied the Rogers Test, and that’s a test that we’ve talked about here many, many times on The Briefing. And this test is used to analyze trademark claims based on a trademark’s use in a First Amendment-protected work. There, the Court of Appeals found that the artistic relevance of the use of Park’s name, that’s the first prong of the Rogers Test, the artistic relevance of the use of Park’s name for the title, is not obvious and is open to debate. Now, I think that the court’s application of this first prong of the Rogers Test was flawed. Since artistic relevance is a very low standard. Prior cases have said, basically, it’s got to be just above zero. I mean, even a modicum of artistic relevance would satisfy this first prong. But this case is out there, and it does stand for the proposition that sometimes trademark interests win over a First Amendment interest. I mean, that’s what the Rogers Test is for. It’s there to balance those two. I mean, there have been cases where the Rogers Test has come out on the side of the trademark owner and not the owner of the copyright and the First Amendment work that’s being challenged.

Tara:
Yeah, I think that’s a really good point. And I also think that McKenna tries to make some pretty interesting arguments about trade dress. Unfortunately, I don’t think that today, the actor Christopher Jones really has all that much relevance or distinctiveness in our society. But I can think of some actors or pop culture icons who definitely do have a really unique style, persona, personality that a lot of society would recognize if that was mimicked or infringed, if you will. So, I wonder if this trade dress argument really has any viability in today’s viral day and age. What do you think, Scott?

Scott:
The question is, how different is that from a right of publicity claim, right? I mean, if you’re alive because we know right of publicity, claims generally expire with the death of the celebrity. Unless you’re from New York or California, where there’s posthumous right of publicity, but that has its specific requirements. But if you are a living celebrity, like, I don’t know, Taylor Swift, right, with her very red lipstick and her tutus and friendship bracelets and other things that seem to scream Taylor Swift.

Could easily bring a riot publicity claim as opposed to bringing a trade dress claim, but I assume you could bring both. It’s interesting, I’m not aware of any celebrity trade dress cases to date, but if I were a lawyer representing the celebrity in a lawsuit, I certainly would bring as many causes of action as I can in good faith.

Tara:
Yeah, I think that’s right. I think that’s a pretty common litigation strategy. So, while the strategy didn’t happen to work here in this case, it may or may not be one that we see again in the future. Thanks for talking with me about this, Scott.

Scott:
Yeah. Thanks, Tara.

Tara:
Thank you for joining us and listening to this installment of the briefing. If you are interested in finding more of our content, you can find us on YouTube, tube, and wherever you listen to podcasts. And if you liked what you heard today, please rate us and give us a review. Hope you have a great day.