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.
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