Saturday, December 26, 2009

No speedy resolution for Mach 1 claims by Yeager

Yeager v. Cingular Wireless LLC, -- F. Supp. 2d --, 2009 WL 4730913 (E.D. Cal.)

Previous discussion. Cingular used Chuck Yeager’s name in a press release, “Cingular Wireless Announces Enhanced Emergency Preparedness Program for 2006 Hurricane Season,” which discussed Cingular’s MACH1 and MACH2 mobile command centers. The fifth paragraph 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,’ de la Vega said.” There’s no picture of Yeager, nor do the headline or headings mention his name. The press release doesn’t offer any specific products or services for sale, nor does it state that Yeager endorses Cingular or codefendant AT&T.

The person who wrote the release testified that one of the reasons for the press relase was to create positive brand associations. He noted the connection between the acronym MACH and MACH for the sound barrier, and wrote the press release “to make an association between breaking the sound barrier and breaking new barriers of disaster preparedness.” Yeager alleged that his name was used to capitalize on his reputation and image, and as a “hook” to entice audiences to read about defendants’ services. He sued for right of publicity, Lanham Act, and related claims.

Cingular argued that the First Amendment barred Yeager’s claims. Rights of publicity must be balanced against the public interest in news: a tenuous connection between unauthorized use of name or likeness and the matter of public interest can remove First Amendment protection. And no balancing is required for commercial speech. (Which is inconsistent with Central Hudson, but when was the last time that bothered a court in a right of publicity case? The quoted case, also, is Hoffman: when a defendant uses “an aspect of the celebrity’s identity entirely and directly for the purpose of selling a product,” such use does not “implicate the First Amendment's protection of expressions of editorial opinion.” Remember that “entirely and directly”—the court won’t.)

First, the court concluded that the press release was commercial speech. It’s true that at the core of commercial speech is speech that does no more than propose a commercial transaction. But informational publications that refer to or promote a specific product, without a proposal to engage in commercial transactions, present a closer question. Bolger v. Youngs Drug Products Corp., for example, involved an informational pamphlet found to be commercial speech though it didn’t specifically name the speaker’s product. Here, the central theme of the press release was how Cingular’s emergency preparedness program enhances its wireless services; the release mentioned its name as a service provider dozens of times. And the focus was not on emergency preparedness generally, but on Cingular’s wireless service in emergencies. Given that part of the purpose of the release was to create positive associations with the AT&T, there was an underlying economic motivation. None of these facts is “necessarily dispositive,” but as a whole the release was commercial speech. Cingular argued that the release was newsworthy, because it reported on matters of public interest. But Yeager’s name and accomplishments were used to attract attention to unrelated wireless services. Indeed, the use of his name was “carefully crafted” as part of a brand promotion strategy. So even if the publication was in the public interest, the use of his name doesn’t contribute significantly to that interest—it was just window-dressing. Summary judgment on the First Amendment defense denied.

Cingular additionally raised an incidental use defense. The contours of this defense are not well-defined in California. “The rationale underlying this doctrine is that an incidental use has no commercial value, and allowing recovery to anyone briefly depicted or referred to would unduly burden expressive activity.” Incidental use is determined by the role that use of a name or likeness plays in the main purpose and subject of the work at issue—mere mention isn’t enough, nor is publication for purposes other than taking advantage of the plaintiff’s reputation. But even if the mention is brief, if it stands out prominently or enhances the marketability of the defendant’s product or service, then the use isn’t incidental.

Here, Yeager’s identity is unique and non-fungible because he’s the one associated with breaking the sound barrier for the first time, and the use of his name links Cingular’s tech to his name and accomplishments. This was a use that might help to pique the interest of a newsman deciding whether to follow up on a press release. Therefore, it uniquely enhanced the marketability of Cingular’s service. So no summary judgment on that defense either.

On to Yeager’s false endorsement claim under the Lanham Act. The court also denied summary judgment on that. Yeager is a public figure with a strong mark, and a jury could find an intent to imply endorsement. Though there’s little relationship between the parties’ services, and scant evidence of actual confusion (Victoria Yeager testified that she received phone calls “regarding confusion” over endorsement, though the court found her testimony somewhat vague), Cingular wasn’t entitled to judgment as a matter of law.

Cingular also failed to win summary judgment on nominative fair use. The parties didn’t dispute factor (1) (necessary to use Yeager’s name to identify him) or (2) (no more use of his identity than necessary to identify him), but focused on (3), “the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” The court recharacterized this element as considering “the likelihood of consumer confusion regarding endorsement because of defendant’s conduct”—which, of course, converts nominative fair use into a defense that’s redundant with lack of confusion. Conclusion: “Where a celebrity’s name is used in a commercial, there are triable issues of fact regarding whether such use implies endorsement.” (Note the equivocation here between “commercial,” meaning “ad,” and “commercial speech.”) This is the teaching of Abdul-Jabbar, involving the use of a basketball player’s name in a conventional 30-second TV spot: because the “use of celebrity endorsements in television commercials is so well established by commercial custom,” a jury might find an implied endorsement through the defendant’s use of the plaintiff's name. “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.” The court again referred to the testimony about calls inquiring into whether Yeager had endorsed AT&T.


Bruce Boyden said...

Obviously the person who should have sued here is Ernst Mach.

RT said...

Bruce: the sad thing is that there are a number of lawyers out there who'd take that observation seriously.