— Jessica Gutierrez Alm, Attorney

No one does the Carlton quite like Carlton Banks.  (Queue Tom Jones’s It’s Not Unusual.)  Since actor Alfonso Ribeiro first performed the unique dance on The Fresh Prince of Bel-Air, it has been readily associated with him.  When the dance move recently appeared as a purchasable avatar dance in the popular video game, Fortnite, players quickly recognized Carlton’s signature move.

 

Fortnite is a battle royale-style combat game in which players, through their avatars, fight to the finish.  In-game purchases allow players to download character skins, clothing, and emotes (dances) for their avatars to perform on the battlefield.  In January 2018, the makers of Fortnite introduced a new emote available for purchase: a Carlton-esque dance called the Fresh.  When a player purchases and downloads the Fresh emote, the player’s avatar can perform the dance move on command.

Ribeiro filed suit against Fortnite creator, Epic Games, last month in a California federal district court.  The suit has been widely reported as a copyright case, prompting many to analyze whether short dance moves like the Carlton are eligible for copyright protections.  Their collective answer: probably not.

Copyright Choreography

While choreographic works are eligible for copyright, the US Copyright Office states that it will not register for copyright “short dance routines consisting of only a few movement or steps with minor linear or spatial variations, even if a routine is novel or distinctive.”  Individual steps or movements, such as the Waltz step, hustle step and grapevine are not copyrightable, according to the Copyright Office’s guidance in Circular 52.  Social dances are similarly not eligible for copyright registration.  “[U]ncopyrightable social dances are generally intended to be performed by members of the public for the enjoyment of the dancers themselves,” as opposed to registrable choreographic works, which are “intended to be executed by skilled performers before an audience.”  At most, it is unclear whether the Carlton is complex enough, or includes enough movements or length, to be eligible for copyright protections.  Of course even if the Carlton dance is copyrightable, NBC Productions might have something to say about ownership of the copyright.

But Ribeiro’s suit against the makers of Fortnite alleges more than mere copyright infringement.  In addition, Ribeiro is suing Epic Games for violation of his statutory and common law right of publicity.

Vanna White-bot, Here’s Johnny Toilets, and the Right of Publicity

In general, the right of publicity protects an individual’s right to control the commercial use of her name and likeness.  In California, courts have defined a broad right of publicity.

Federal courts have determined that the California common law right of publicity is not strictly limited to an individual’s name and likeness.  In White v. Samsung Electronics, Vanna White sued Samsung for its depiction of a robot adorned with blond wig, gown, and jewelry in a VCR ad.  971 F.2d 1395 (9th Cir. 1992).  The familiar robot was posed next to a gameshow letter board reminiscent of the Wheel of Fortune.  The caption read, “Longest-running game show. 2012 A.D.”  Notably, the case is from 1992, and the ad was part of a campaign depicting use of various Samsung products in a futuristic setting.  Recognizing that although the defendants did not actually use White’s name or image, the court determined that the ad was clearly intended to depict White and presented colorable right of publicity claim.

In another case, the Ninth Circuit held that Ford Motor’s use of a Bette Midler sound-alike voice was a violation of Midler’s right of publicity, even without any use of Midler’s name or image.  Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988).  And in Carson v. Here’s Johnny Portable Toilets, the Sixth Circuit held that the defendant’s use of the phrase “Here’s Johnny” to market portable toilets was a misappropriation of Carson’s persona.  810 F.2nd 104 (6th Cir. 1987)

In light of this precedent, Ribeiro’s right of publicity claims seem stronger than his copyright claims.  The complaint also includes claims under the Lanham Act and California statutes for unfair competition.  Ribeiro alleges that the company’s use of the dance move creates a false impression that either Epic Games created the dance move or that Ribeiro provided sponsorship.

What are your thoughts on these unfair competition claims?   Are they stronger than the copyright infringement claims?

The Vanna White case also included a Lanham Act unfair competition claim.  The court in that case recognized a celebrity’s ability to bring such claims to protect her persona.  The court permitted the Lanham Act claim to proceed to a jury along with White’s right of publicity claim.  Ultimately, the jury found for White and awarded over $400,000.

Others Join the Fight

Ribeiro is not the only artist to challenge Epic Games on the IP battlefield.  Rapper 2 Milly (Terrance Ferguson) sued Epic Games for creating an emote based on his Milly Rock dance.  And most recently, Backpack Kid (Russell Horning) sued Epic Games for introducing an emote modeled after his viral Floss dance.  Both complaints include claims for copyright infringement, violation of right of publicity, and unfair competition claims.

Earlier this month, a California federal judge kept alive a suit brought by the estate of famous jazz musician Thelonious Monk against North Coast Brewing Co. for trademark infringement and infringement of the right of publicity. The dispute centers around North Coast’s popular “Brother Thelonious” Beligan-style abbey ale (beer seems to be on the mind here at DuetsBlog as of late), which features a likeness of Thelonious Monk on its label:

Credit

The estate, managed by Thelonious Monk’s son, Jr., agreed to allow North Coast to use the likeness for selling the beer so long as North Coast agreed to donate some of its profits to the Thelonious Monk Institute of Jazz. North Coast apparently upheld its end of the deal, donating over $1M to the Institute since 2006. Though, North Coast also expanded its use beyond beer, to beer brittle, goblets, hats, apparel, signs (metal, neon, and paper), playing cards, pins, and even soap (made–incredibly–using the beer).

North Coast even registered a trademark on its label design, which “consists of a profile portrait of a gentleman in a red cap, dark glasses, and brown monk’s garb holding a glass of dark beer in one hand and a human skull in the other hand, with a stylized circular black and white piano keyboard behind his head, in an abbey setting.” Sounds like Thelonious Monk, don’t you think? North Coast also has a registered trademark on the name “Brother Thelonious.” A little late to the game, the estate registered a trademark on “Thelonious Monk” this summer.

In 2016, the estate rescinded its permission to use Thelonious Monk’s likeness, and after North Coast refused to stop using the likeness, initiated its lawsuit. The district court judge denied North Coast’s motion to dismiss the case, stating that the factual record underlying the dispute needs to be fleshed out before any of the estate’s claims can be decided. Give it several months to up to a couple years before the court issues a ruling.

The estate’s lawsuit, especially the claim for infringement of the right of publicity, got me thinking about the bases for the right of publicity and the right’s applicability to celebrities who have died–sometimes referred to as “delebs.” Sadly, Thelonious Monk died in 1982. But, like many celebrities, the value of his work and likeness endure after death. Indeed, some celebrities have become bigger in death than they were in life (e.g., Tupac Shakur, Michael Jackson, and Elvis Presley). And beloved local delebs continue to make appearances:

Credit

At first glance, it seems odd that a deceased celebrity (through an estate) would have any right to control the use of likeness after death, let alone profit from it. Indeed, the right of publicity, provided under state law, is largely founded on privacy grounds, protecting the use of one’s identity in commercial advertising given the personal and private interests at stake. After death, those personal privacy interests are no longer compelling. But the right of publicity in many states is also founded on property grounds, in view of the fact that (at least for many celebrities) individuals often invest extensive time, energy, and money in promoting and creating their own personal brand. The thought is that, like other intellectual property rights, one should be able to receive the benefits of that investment (which encourages such investment in the first place). Thus, the right of publicity is based upon both privacy and property interests.

The right to publicity is recognized in over 30 states, but the scope and breadth of the right varies in each state largely because states have differing views on whether the right should be grounded in privacy, property, or both (and if both, to what degree?). Many of these states have a right of publicity statute, but some do not. For example, as I discussed previously, Minnesota does not have a right of publicity statute. In 2016, the Minnesota State Legislature considered the “Personal Rights In Names Can Endure” (“PRINCE”) Act, but never passed the bill. Have no fear, though; previously, in Lake v. Wal-Mart Stores, Inc., the Minnesota Supreme Court recognized the right of publicity based on “individual property” rights and “invasion of privacy,” citing Restatement (Second) of Torts § 652B (1977). 582 N.W.2d 231 (Minn. 1998).

Interestingly, because the right of publicity is a creature of state law, where a person was domiciled (residing) at the time of death controls what kind of right of publicity that person’s estate has after death. Estates for celebrities who were domiciled in Oklahoma are the most fortunate and can enforce the right of publicity for up to 100 years after death. But woe be upon an estate in Wisconsin, which bases its right of publicity on privacy interests and only allows living persons to enforce the right. The amount of time a right of publicity can be enforced after death varies dramatically state-to-state. For a helpful run-down of most states, see this useful overview.

How about in Minnesota? The PRINCE Act would have allowed an estate to enforce a right of publicity for up to 100 years, like Oklahoma’s statute. Under the common law, it remains unclear how long the right persists–though, the U.S. District Court for the District of Minnesota held (ironically) in Paisely Park Enterprises, Inc. v. Boxill, that the right survives death. See 2017 WL 4857945 (D. Minn. Oct. 26, 2017) (Wright, J.). How long thereafter? The Restatement (Second) of Torts doesn’t say.

The most basic takeaway from the current state of the law is that celebrities with likenesses that may have great value in commercial use should consider domiciling in states that have favorable post-mortem rights of publicity. Thelonious Monk was domiciled in New Jersey when he died, and the New Jersey right of publicity extends no longer than 50 years after death. So the estate has about 14 more years during which it can enforce the right, which Thelonious Monk may not have ever exercised in life.

By the way, if you’re interested in trying out the Brother Thelonious, it is available in two Twin Cities locations: First, and most appropriately, the Dakota Jazz Club & Rest (Minneapolis), and also at Hodges Bend (St. Paul).

Recently, I attended the University of Minnesota’s celebration of “40 Years of Gopher Justice,” an event honoring the institution’s University Student Legal Service (“USLS”), a non-profit organization that provides UMN students with free legal services. The celebration included a panel on a contemporary topic in student advocacy: “revenge porn.” The topic isn’t relevant just for students, though. One may recall that just last year Hulk Hogan successfully sued the now-defunct gossip news site Gawker for its dissemination of a sex tape depicting him and another woman. Hulk Hogan eventually settled the case with Gawker for $31M.

Hulk Hogan testifies in his suit against Gawker. Image credit: Slate.

The USLS celebration panel hosted three experts on revenge porn, including two attorneys knowledgeable about Minnesota’s new suite of civil and criminal remedies that went into effect in late-summer 2016. See Minn. Stat. §§ 604.31 (civil), 617.261 (criminal). In response to my question about the civil action, one of the attorneys remarked that he believed the Minnesota law created a “copyright” to one’s image, enabling that person to prevent unwanted dissemination and exploitation of pictures and recordings depicting the person in a sexual way. For the sake of persons hoping to prevent and recover damages for unwanted dissemination under Minnesota’s new law, I hope he’s incorrect; after all, the Copyright Act preempts all state laws that overlap with federal protections over the subject matter of copyright, see 17 U.S.C. § 301(a)—which includes photographs and videos, see 17 U.S.C. § 102(a)(5)-(6).

In order to bring a civil action for non-consensual dissemination of private images (the “revenge porn civil action”) in Minnesota, (1) the defendant must have disseminated a private image without the plaintiff’s consent, (2) the image must have been of a sexual character, (3) the plaintiff must have been identifiable in the image, and (4) the image must have been obtained or created under circumstances in which the plaintiff had a reasonable expectation of privacy. See § 604.31, subd. 1. If these four elements are shown, the plaintiff may recover general and special damages, including financial losses resulting from the dissemination of an image and damages for mental anguish, disgorgement of profits made from dissemination, civil penalties, and attorneys’ fees. See § 604.31, subd. 3. See the Minnesota Senate’s overview of this law for more general information about the revenge porn civil action.

What’s interesting about this cause of action is that it’s a blend of both (1) the right to privacy and (2) an intellectual property right called the right of publicity. Right to privacy claims (for invasion of privacy) typically remedy the unjustified exploitation of one’s personality and injury to privacy interests that are emotive or reputational. Right of publicity claims, on the other hand, combat the unauthorized use of one’s identity in commercial advertising and compensate persons for the value of the commercial use of that identity and/or reductions in the value of the cultivated identity. Minnesota’s revenge porn civil action appears to be a specific hybrid of both kinds of claims; it protects both privacy and property interests in a person’s identity and provides relief in the form of both reputational and economic damages, as well as injunctive relief.

Coincidentally, when Minnesota passed its revenge porn bill in 2016, it was also considering the codification of the right of publicity under a bill entitled the “Personal Rights In Names Can Endure” (“PRINCE”) Act. But the bill’s sponsor later pulled his draft after critics expressed concerns about the bill’s broad language. One commentator questioned whether such a bill was necessary in light of Hulk Hogan’s victory. Minnesota’s revenge porn civil action arguably combined two separate claims into one, but it also expanded the scope of recovery under either claim so as to now include multiple forms of relief.

Whether the revenge porn civil action will be utilized to any significant degree is as of yet uncertain. The USLS celebration panelists noted—and a brief case search confirms—that courts have yet to extensively apply and interpret the law. From the face of the law, though, it appears that Minnesota is now a hospitable forum for victims of revenge porn, especially celebrities with economically-valuable identities. And due to the state’s broad remedial scheme, I would not be surprised if we eventually see large cases like Hulk Hogan’s in Minnesota courts.

Two time academy award winner Olivia de Havilland seeks an expedited trial for the lawsuit involving her right of publicity.  Olivia de Havilland, DBE v. FX Networks, et al, BC667011 (Superior Ct. Calif., June 30, 2017). The urgency is needed because Ms. de Havilland’s statutory right of publicity ceases at her death.  She is currently 101.

You may recall that Ms. de Havilland starred as the sweet Melanie Hamilton Wilkes who thought of Scarlett as a sister in my favorite movie the epic “Gone with the Wind.”  The movie received 10 Academy Awards.  It is an American classic.

Ms. de Havilland is suing FX and others involved with her depiction in the series “Feud: Bette and Joan” which depicts the rivalry between Bette Davis and Joan Crawford.   Ms. de Havilland was a friend of Bette Davis.  She claims that the series painted her in a false light, and violated both her statutory (Cal Civ. Code 3344) and common law right of publicity and unjustly enriched the FX defendants.

The right of publicity involves the right of an individual to control and profit from the commercial use of his or her name, image, likeness, or other unequivocal aspects of one’s identity.

We have blogged about the right of publicity before, here.

The FX defendants are defending against the allegations by invoking the anti-SLAPP Statute in California that protects against threats to the First Amendment in matters of public interest among other defenses.

Ms. de Havilland brought a motion for an expedited trial based on her “unusually advanced age” of 101.  She also asserted that she was susceptible to disease due to her advanced age and that she has recurring health issues.

As an aside, there is a separate statute for the right of publicity for the deceased at Cal. Civil Code 3344.1 in the unfortunate circumstance of Ms. de Havilland dying before resolution of the suit.

Not surprisingly, the Judge granted the motion for an expedited trial stating “I can’t imagine how one could not do that when the plaintiff is 101 years old.”  This will be an interesting trial to follow.

It sounds like a scam, but I swear, there is some truth to this headline. Just ask Hasbro, Inc., the owner of the Littlest Pet Shop line of toy animal figurines. If you have never seen one before, below is an example of two of the pets:

LPS - Harris Faulkner That’s Benson Delwyler, who appears to be a dog, and Harris Faulkner, who is apparently a hamster. These are just two of the over 3,000 uniquely named pets that comprise the Littlest Pet Shop Collection. I even purchased a few of these as gifts for my nieces. I couldn’t tell you which ones though. I believe one was a turtle, but I certainly don’t remember their names; I doubt I even read the name at the time.

At least one person did pay attention to the name: Harris Faulkner, a Fox News journalist. How unhappy was she? Enough to file a federal lawsuit on Monday, August 31 seeking $5 million in damages. Ms. Faulkner claims that Hasbro’s use of her exact name amounts to false endorsement under the Lanham Act and violates her right of publicity (Complaint available here).

In addition to the use of her exact name, Ms. Faulkner alleges that

elements of the Harris Faulkner Hamster Doll also bear a physical resemblance to Faulkner’s traditional professional appearance, in particular tone of its complexion, the shape of its eyes, and the design of its eye makeup.

Ms. Faulkner claims that Hasbro’s actions are particularly damaging. First, she claims that Hasbro’s “portrayal of Faulkner as a rodent is demeaning and insulting.” Second, she notes that she does not endorse any products because “doing so would be a breach of journalistic ethics, would directly harm her professional credibility, and would be in violation of her contractual obligations to her employer.” Finally, she is particularly troubled that the toy is labeled as a “choking hazard” for young children.

But is there any merit to Faulkner’s legal claims? Section 43(a) of the Lanham Act protects the names of celebrities in a manner similar to trademarks. Liability may arise if the plaintiff can establish that the defendant’s use would cause consumers to mistakenly believe that the plaintiff has endorsed or approved the defendant’s goods.

Ms. Faulkner alleges vaguely in the complaint that she has “seen evidence of actual consumer confusion” already. If such evidence exists, it would obviously be very helpful. I have my doubts, however. Looking at the market for Hasbro’s toys, it seems unlikely that parents/adults would purchase any of the toys based on the name, other than whether their child already owns that pet. Children requesting or purchasing the toys seem unlikely to have any awareness of the names of cable news anchors.

Also, by Ms. Faulkner’s own admission, journalists don’t normally endorse products. This is different from sports figures, actors, and other public figures that regularly use their name and image to endorse and advertise products. Even if defendant’s customers did recognize the name, they may be unlikely to mistakenly conclude that Faulkner endorsed the product because there is no natural tendency to associate journalists with product endorsement.

Unlike false endorsement claims, a right of publicity claim does not require any false statements or implications. Instead, the defendant’s use must merely be sufficient for consumers to identify the plaintiff from the defendant’s use. Although the name is identical, there is also no other indicia that suggests that the name is a reference to Ms. Faulkner, the journalist. The toy doesn’t come with a microphone, camera, or notepad. While the complaint attempts to manufacture this indicia by referencing the complexion, eyes, and makeup of the toy, it seems like a stretch since all of the Littlest Pet Shop toys appear to have the same eyes and makeup.

Regardless of the merits of Ms. Faulkner’s claims, Hasbro is going to spend an appreciable sum either to settle or fight this dispute. This is unfortunate because Hasbro could have avoided the issue with some simple trademark clearance searches. Conducting a legal clearance search is always a best practice. However, if there are simply too many product lines to have an attorney involved for each one, the marketing department should at least have a standard practice of a brief Google search to identify other companies, individuals, or products. A five second search would have revealed that “Harris Faulkner” is the name of a news anchor and television host for a national cable news network.

Even worse, I doubt Hasbro cares much about the name of the hamster, anyway. Perhaps Hasbro was using “Harris” as a clever way to sound like “Hairy.” And maybe someone on Hasbro’s marketing team was a big fan of the novel As I Lay Dying. But it is likely that the toy would sell just as well with any other name.

Luckily for Hasbro, this appears to be a unique situation. As of the publication date of this article, no “Whiskers Ryan” or “Meow Meow Milkone” has come forward with their own lawsuit. And as far as my childhood favorites go, I think any claims by the heirs of Leonardo da Vinci and Michelangelo would be time barred by now.

Nicola Hill, Associate and Jude King, Trainee Solicitor, Browne Jacobson LLP

This is the era of celebrity. It has become a global commercial enterprise in its own right. From launching personalised perfume ranges to being the face of fashion houses, there can be no doubt that celebs are a high value commodity. As such, every star wants to protect their image or name. Yet whilst many states in the US recognise a ‘right of publicity’ – the right to control the commercialisation of their own image – such a right has never existed under English law. As Colin Birss J succinctly put it at first instance in this case:

“Whatever may be the position elsewhere in the world, and however much various celebrities may wish there were, there is today in England no such thing as a free standing general right by a famous person (or anyone else) to control the reproduction of their image.”

This position was confirmed recently by the Court of Appeal (CA) in Fenty v Arcadia, who upheld Rihanna’s $5 million claim in passing off against the British fashion retailer, Topshop, but denied the existence of an image right under English law. It came as a mixed blessing to many in the celebrity field, who had pinned hopes on Rihanna’s case being an opportunity to finally introduce image rights into the UK.

The case involved a well-known UK fashion retailer Top Shop – a store synonymous with London cool. Topshop began selling a t-shirt featuring an image of RiRi herself both online and in their stores. Despite having a licence from the photographer allowing them to use the image, Topshop did not have Rihanna’s permission, who then complained to Top Shop that the sale of the t-shirt without her permission infringed her rights. Topshop’s response, one could say, was that she should just ‘shut up and drive’.

Rihanna subsequently brought proceedings against the fashion giant alleging passing off (N.B. this is a long-established English common law tort requiring the Claimant to prove goodwill, misrepresentation and damage).

At first instance, Birss J clarified that English law does not treat merchandising and endorsement differently; what is required for both is that a substantial portion of those considering the product will be induced to think it is authorised by the artist, and that they are in some way responsible for their quality/appearance. He considered the evidence at hand and found that Rihanna met all three criteria. Rihanna was thus successful and granted protection under the, ahem, ‘umbrella’ of the English legal system.

On 22 January 2015, the CA delivered its judgment. It upheld the first instance decision, concurring that Rihanna had the requisite goodwill in the goods in question, both as a style icon in her own right and having her own fashion line and collaborations with companies such as Gucci and one of Topshop’s biggest rivals, River Island. The CA further found misrepresentation on the facts because Rihanna had previous associations with Topshop and also the image appeared to be a publicity shot for her then current album ‘Talk That Talk’ so the relevant public were likely to be deceived into thinking that the product was authorised by Rihanna. Damage was proven through the loss of merchandising business in addition to loss of control over her reputation. It was held that Birss J was correct in upholding passing off, but to the disappointment of many, there was no likelihood of the CA introducing an image right any time soon.

Further, the CA was at pains to reiterate that this case turned squarely on its facts and that the sale of clothing bearing recognisable images of celebrities does not, in itself, amount to passing off. This case is clearly not designed to open the floodgates for false endorsement claims.

So what does it mean going forward? Firstly, there is clearly no intention to introduce a US-style image right into the UK. Neither is it intended that passing off becomes a back-door personality right. What Fenty does do, however, is to send a clear message to English retailers and designers to exercise caution in using celebrity imagery. It also gives our superstar clients a glimmer of hope that, in the right circumstances at least, they might be able to take back some control over use of their image in England. So for that… Take a Bow, Rihanna.

Apparently Elvis Presley was a well-known Beretta gun owner during his life, so I suppose his lips might have uttered the words “Beretta, thank you very much.” The King’s estate, however, isn’t thankful about an Elvis-themed advertising campaign designed to promote the sale of Beretta firearms.

Ad Law Access reports that Elvis Presley’s Estate filed suit against Beretta for the ad below and other activities:

Guns.com’s report is here. And, here is a link to a pdf of the complaint filed in federal district court in the Western District of Tennessee.

In the end, will Beretta be singing “Don’t Be Cruel,” “Heatbreak Hotel,” or “Jail House Rock,” while the Estate is singing “Don’t“?

Who would you expect to find sitting at the end of the bar in this recently re-named Minneapolis sports bar, formerly known as Halek’s Bar?

What if you were to queue a very familiar tune to these lyrics, would that help?

Yeah, I was thinking of these guys too:

But, what if these guys have nothing to do with it? And what if CBS Studios, owner of the Cheers brand, has nothing to do with this place either?

Are any permissions required? If so, who do you need them from? And, what legal theories are potentionally implicated? Copyright? Trademark? Unfair Competition? Misappropriation? Right of Publicity? Any others?

This signage would be great fodder for a law school exam in an intellectual property course, agree? Feel free to make up your own hypothetical on what adorns the walls inside, I’ve never been.

If the interior in your hypothetical plays up what one comment on the bar’s Facebook page suggests (“This place has been loved by many over the years; full of working class people. You could definitely call it the cheers bar of Minneapolis.”), beware Conan Properties, Inc. v. Conans Pizza, Inc., finding likelihood of confusion with use of Conan’s Pizza for a restaurant featuring decor that evoked the theme of the character “Conan the Barbarian.”

Gentle reminder, when you or your client is tempted by a name that everyone knows, it might be prudent to also visit a place where everyone knows your name (and everyone knows your rights under the intellectual property laws), so you can minimize the chances of this becoming the most applicable theme song: “Making your way in the world today takes everything you’ve got.”

Marketing types, it may well be obvious to some, but it is always important to consider the source of inspiration for the branding and marketing of the products and services you promote.

At least for those who follow country singer Toby Keith, with a Costco retail end-cap display like this, it’s hard not to assume where the inspiration came from: Keith’s musical hit “Red Solo Cup.”

As Sterling Whitaker wrote this past summer for Taste of Country:

“Never underestimate the power of partying. Toby Keith’s party-hearty anthem ‘Red Solo Cup’ has been certified double platinum by the RIAA after selling two million digital downloads, which also makes it Keith’s career top seller. The news comes just six months after the song was certified as the first platinum single of his career in January.”

Even assuming the notoriety of Keith’s “Red Solo Cup” musical performance and award-winning music video inspired the branding of the above display for big, red, Chinet brand disposable plastic cups, I’m not suggesting any inspiration has led to a viable trademark legal claim. But, I am suggesting that when inspiration for a product and the marketing of it derives from something other than purely public domain material, it’s time to invoke at least a little perspiration, pause and consult a competent trademark type.

As to the more straightforward trademark issues that don’t generate too much sweat, unlike the case with the color red when applied to the sole of high fashion women’s shoes, given how many different unrelated brands offer red-colored disposable plastic cups (Dixie, Solo, Chinet, Hefty, Party City, and Wal-Mart, among others), there should be little fear that any one of them ever could own exclusive rights in the single color for these goods. And, since there is no use of the Solo trademark or brand in the display, what is left for comparison are pretty much descriptive, if not generic terms: The Big Red Cup. That, however, didn’t stop Huhtamaki — the corporate owner of the CHINET brand — from attempting to own THE BIG RED CUP designation as a trademark.

To that point, it is a bit curious that Huhtamaki’s federal trademark application for THE BIG RED CUP did not receive a mere descriptiveness refusal under Section 2(e)(1) of the Lanham Act, since the cups appear both big and red. It did, interestingly however, receive a likelihood of confusion refusal with Wrigley’s BIG RED trademark registration (for mugs, not chewing gum, thankfully), and so THE BIG RED CUP trademark application currently stands abandoned, since Huhtamaki failed to respond to the registration refusal. But, now that the cited Wrigley’s registration has been cancelled for failure to show continued use of the BIG RED mark for mugs, it will be interesting to see whether Huhtamaki makes another attempt, and if so, whether this time it receives a mere descriptiveness refusal.

As to other possible issues, and putting aside what would likely be a weak likelihood of confusion claim (and I won’t even mention dilution), we know that there can be no trademark rights in “Red Solo Cup” without actual trademark use, as mere use of the phrase as the title of a song doesn’t qualify. And, since another’s brand name (Solo) is included within the phrase, this would appear to further complicate any claim by Keith to own trademark rights in the phrase “Red Solo Cup.” But what about a much less relied upon legal theory, one that provides rights without formal trademark use or rights: Right of publicity and the assertion of a false connection (as opposed to likelihood of confusion) bar to federal registration, under Section 2(a) of the Lanham Act?

There are more than a few interesting questions to ponder on that point. But limiting our focus to the most obvious one: Is “Red Solo Cup” so intertwined with and part of Mr. Keith’s persona that he would have an enforceable right of publicity and standing to oppose registration under a false connection theory? (Never mind that Keith may not want to assert that the song title is part of his persona and right of publicity, as he has labeled the song (which he didn’t write) “nursery song stupid.”) There is certainly precedent available if Keith were so inclined to humble himself to this linkage. Trademark types will recall Jimmy Buffet’s success in an early non-trademark case where Buffet prevailed on a false connection claim to prevent the Chi Chi’s restaurant chain from registering MARGARITAVILLE (well before Buffet had developed extensive trademark rights and his present licensing empire in the song title).

So, you think the potential right of publicity/false connection issue surrounding “Red Solo Cup” is a fringe hypothetical that will never surface?

Then consider this example: RED SOLO CUP FOR PRESIDENT. Unless someone gets in the way (from inside or outside the USPTO), it appears that a photographer from Newport News, Virginia is positioned to have this mark published for opposition, as no Section 2(a) or 2(d) refusals were made by the USPTO.

So, I must ask, is “Red Solo Cup for President” another way of saying “Toby Keith for President”?

If so, Keith probably has standing to oppose even without actual trademark rights in the phrase. What do you think?

—Joy Newborg, Winthrop & Weinstine, P.A.

Over the years, several businesses have tried to gain a competitive edge by associating their products with famous celebrities… but without obtaining licenses. There has been the “Bogart” collection of furniture sold by Ashley Furniture (presumably relying on Humphrey Bogart’s name to sell a common looking line of couches and recliner) and the “B Davis Dress” sold by Stop Staring! Designs (presumably relying on Betty Davis’ name to sell a vintage dress). More recently, the company HendrixLicensing.com sold various items, including apparel, posters and novelty items, using Jimi Hendrix’s name and image. Such business were sued, with claims that rights of publicity were violated. What makes this cluster of lawsuits more interesting, though, is that all the celebrities are dead.

So should the right of publicly extend beyond the grave? One side of the argument is that the celebrity through his or her personal efforts became famous, and their families should be able to continue to benefit from such efforts even when the celebrity passes on. And is it really fair that another party benefits from capitalizing on the celebrity’s fame by falsely implying an association simply because the celebrity is now dead? The other side of the argument is that if such rights of publicly are extended to a deceased person, it would stifle creativity, restrict rights of others to sell legally obtained items, interfere with copyright law and violate First Amendment rights to free speech.

Recently, the federal judge in the Hendrix case found that the Washington’s statute which extended rights of publicly to deceased celebrities (the statute that Hendrix’s heirs were relying on) was unconstitutional. There are certain details which led to this decision that you would know about. First, Washington did not even have a right of publicity statute until 1998, long after Hendrix died. Secong, the revised WA statute extended the right of publicity to deceased individuals or personalities retroactively , meaning to those who died before the right of publicity even existed in WA. Third, the revised WA statute provided that right of publicity applies even when the celebrity did not live or die in the State of Washington. The statute appears to try and override the laws of other states which do not provide the same generous rights granted under WA’s statute, with its history showing it was specifically drafted to assist the Hendrix’s heirs in their claims. By finding the WA statute unconstitutional, Hendrix’ heirs are relegated to the rights granted under NY law, where Hendrix lived and died, which does not grant the heirs continuing rights of publicity.

Even if the Hendrix case goes to the Supreme Court, there will probably be a lot more heated discussion on this subject. What are your views? Should rights of publicity extend beyond the grave? Should WA (or any other state) be able to extend rights of publicity to those who have no connections with the State?