BLE sued AVELA, its director Valencia, Urban Outfitters, and Target for alleged violations of Bruce Lee’s right of publicity/trademark rights through the unauthorized manufacture and sale of t-shirts bearing his image. The court staves off defeat for AVELA, but I wouldn’t say it looked good.
There turn out to be issues of fact about whether Lee was domiciled in California or Hong Kong when he died, which would affect the nature of his publicity rights. There were also issues about the chain of title for the publicity rights, which BLE didn’t sufficiently prove at this stage. In addition (but not posing any particular problem for BLE here), the rights to Lee’s films are managed separately. For products featuring movie titles or still images from a film, third parties need licenses both from BLE and from the film rightsholder. For images only without reference to a particular film, BLE alone is the licensor.
AVELA acquired images and photos related to several of Lee’s films. Valencia sold movie posters with Lee’s images and licensed others to use those images since 1983. In 1996, Valencia started X One X to license images, including Lee’s, to third parties, something that AVELA now does too. AVELA has licensed Lee’s image for use on a variety of products, including t-shirts, posters, and bobblehead dolls. BLE produced evidence indicating that Valencia was aware of BLE’s rights—AVELA’s licensing agent forwarded him a communication from a licensee about the “need” to get BLE’s approval. Defendants claimed that AVELA doesn’t permit licensees to use the words “Bruce Lee” on goods. AVELA, of course, has been sued for use of other images. Among others, there’s the Betty Boop case (victory for AVELA) and the Wizard of Oz/Gone With the Wind case, Warner Bros. Entm't, Inc. v. X One X Prods., 644 F.3d 584 (8th Cir. 2011) (characterized by the court here as a victory for AVELA).
This case began when a BLE employee saw a shirt printed with Lee’s likeness at Target, and investigation discovered another at Urban Outfitters. Both said “Bruce Lee” or “B. Lee” on the hang tag and AVELA on the neck tag. Target sold 140 Bruce Lee t-shirts in California, while Urban Outfitters sold 4,980 shirts California and elsewhere in the United States. The image on the Urban Outfitters shirt is allegedly not a film still, but from marketing for the film Game of Death.
AVELA counterclaimed based on a C&D sent by BLE to one of its licensees that allegedly caused the licensee to terminate their agreement; the court got rid of the counterclaims because BLE was reasonable in making claims about its rights.
Housekeeping: BLE’s common law right of publicity claims were dismissed because only statutory rights are postmortem, and common law unfair competition claims against Target and Urban Outfitters also went because BLE made only conclusory allegations of bad faith.
The court denied defendants’ motion for summary judgment on the statutory right of publicity claim and partially granted BLE’s motion. Defendants argued that the right of publicity, as applied, violated due process because Valencia had been selling Bruce Lee merchandise since 1983. The court disagreed, because Valencia never had a vested right to sell the images; he never “believed he owned” them, and at best believed he had a right to use them without paying a licensing fee. That wasn’t enough to be a vested interest or to trigger due process. Plus, the state’s interest was significant: it protected celebrity personas from unauthorized exploitation, “a concern of particular importance in California given the number of entertainers living in that state.” California thought it was important enough to vote for retroactive protection, after all. (That sound you hear is my teeth grinding. Ordinarily, the fact that someone wants something doesn’t inherently make an interest in giving it to them “significant.” Also, apparently no one has a vested interest in the Bible, or in the works of Shakespeare, since they’re open to all comers.)
The court also rejected defendants’ preemption argument because there was no § 301 preemption; the court did not analyze conflict preemption. BLE argued that it wasn’t seeking to protect movie posters or images associated with the films, but rather “the image of Lee himself.” (Those are the same thing here.) Defendants can use publicity photos or other materials associated with Lee’s films, but they can’t commercially exploit “Lee’s name, image, and likeness.” Lee’s persona and likeness weren’t within the subject matter of copyright. (Note also that the statutory right of publicity doesn’t actually protect “persona”; that’s been kind of a big deal in California.)
You see, in other cases where courts have found preemption, the plaintiff’s likeness was “fixed in a tangible medium” and thus subject to copyright protection. (Citing Jules Jordan Video, Inc. v. 144942 Can. Inc., 617 F.3d 1146 (9th Cir. 2010) (finding right of publicity claim preempted when claim was based entirely on misappropriation of various DVDs and plaintiff's performance therein, not his persona); Laws v. Sony Music Entm't, 448 F.3d 1134 (9th Cir. 2006) (finding right of publicity claim preempted when allegations focused on voice recording, not persona).) By contrast, BLE’s claims were “wholly” based on unlicensed use of Lee’s “name, likeness and persona rights,” which aren’t within the subject matter of copyright. Even if the t-shirt images come from films (*cough* fixed in a tangible medium of expression *cough*), “while use of the photographs themselves may be permitted under the Copyright Act, use of Bruce Lee's image, likeness, and persona subject Defendants to liability for violating Lee's right of publicity.”
(Here, the court manages to omit the one thing that really is outside the subject matter of copyright: the use of the name on the hang tags. I’d argue that both the First Amendment and conflict preemption allow the expressive use of public domain images on T-shirts, and then that the First Amendment/nominative fair use allow the hang tags, but by not noticing that the infringement of “persona” here comes by way of reproducing an expressive work, the court skips over the niceties entirely.)
On the record before it, the court was unable to conclude that the images were in the public domain because it couldn’t tell “who or what is depicted” in the t-shirts at issue. Anyway, even if defendants were right, “Plaintiff's complaint is that the t-shirts use Bruce Lee's persona—his likeness and presence as a martial artist, not his films or the characters he portrayed therein—without authorization from BLE. The rights in Lee's persona and likeness are not fixed in a tangible medium, and do not fall within the subject matter of copyright.” (Again, that’s a §301 preemption argument, not a conflict preemption argument. And if a claim based on a reproduction of a performance is preempted when the performance is fixed in a video or sound recording, it’s sheer nonsense to say it’s not preempted when fixed in a photograph. I have never seen a credible attempt to explain what differs as between a sound recording and a photo from the perspective of the relationship between the right of publicity and copyright. There may well be an unacknowledged discrimination against photographers going on, on the theory that they aren’t really doing anything that adds value, but that doesn’t even match up with copyright ownership (since the performer rarely owns the sound recording either).)
So, partial summary judgment was warranted on the core issue of a rights violation, though issues remained as to Lee’s domicile at death and ownership of the rights. Even if the images were otherwise subject to copyright protection, BLE would have an independent cause of action arising from the use of Lee’s image and likeness.
However, BLE wasn’t entitled to a preliminary injunction. It didn’t establish irreparable harm. “Injunctive relief may well be warranted when the unauthorized use of a celebrity's likeness damages his marketable reputation. BLE has not shown, however, that the allegedly infringing merchandise had any negative effect on its business apart from reducing its revenue, nor has BLE produced any evidence showing how the infringing items have reduced the value of Bruce Lee's likeness.”
Similar results obtained on the Lanham Act claims: genuine issue of material fact on ownership; genuine issue on likely confusion. While the Second Circuit found confusion unlikely as to a calendar featuring numerous photos of baseball players, including three of Babe Ruth (one on the cover), the situation here was different. Lee’s image wasn’t just one of many and was the primary reason a consumer would buy the shirt. Also, AVELA’s name was only on the neck tag, not immediately apparent. Lee’s death “will affect the likelihood that the shirts would create consumer confusion; but does not totally bar BLE's Lanham Act claim.”
The court replaced the term “mark” with “persona” in its multifactor analysis, but also found that many Polaroid factors were “inapplicable” in a celebrity endorsement case. The relevant factors included “the level of recognition Bruce Lee has among purchasers of AVELA's t-shirts, the similarity between Bruce Lee's likeness and the likeness used by AVELA, the level of actual consumer confusion regarding who endorsed the t-shirts, AVELA's intention in selecting Bruce Lee's image, the quality of AVELA's products, and the sophistication of t-shirt purchasers.”
Summary judgment in favor of BLE was inappropriate because all BLE provided was “conclusory” statements that the t-shirts featured an image resembling Lee and had hang tags using his name. “While the Court agrees that consumers may believe these images to be of Bruce Lee, Plaintiffs have not established that consumers would believe Bruce Lee or his estate endorsed AVELA's products.”
But summary judgment for defendants was also inappropriate, despite their survey (modeled after one used in a similar case against AVELA involving images of Bob Marley). Individuals planning to buy graphic tees at Target or Urban Outfitters were shown either the shirt sold by Urban Outfitters or a control shirt, which had an Asian male in a martial arts costume without Chinese characters (which appeared on the test shirt) and no “Bruce L.” hang tag. Net confusion ranged from 11.6% to 12%, confusion regarding permission or approval ranged from 8.9% to 10.1%, and confusion regarding endorsement ranged from 7.5% to 7.9%.
The court found that the survey alone was insufficient to warrant a grant of summary judgment absent corroborating evidence. McCarthy says, “Figures below 20% become problematic because they can only be viewed against the background of other evidence weighing for and against a conclusion of likely confusion.” The court did not elaborate on what other evidence it meant.
Defendants also argued descriptive fair use. But they used Lee’s likeness “‘as a symbol to attract public attention,’ which is considered use as a mark.” It wasn’t credible to argue that the images were used descriptively. (Descriptive of what? Of course that takes us down the rabbit hole: the shirt describes what it is, which is a shirt with a picture of Bruce Lee on it; the very question to be answered is who ought to control that.) “[T]he use of Bruce Lee's likeness and name was intended to sell the t-shirts, not describe them.”
This result also meant that the NY unfair competition and unjust enrichment claims survived, except that unjust enrichment was dismissed as to Target because Target didn’t sell any t-shirts in New York.