--- Wendt v. Host International, Inc., 197 F.3d 1284 (9th Cir. 1999)
(Kozinski, J., dissenting from denial of rehearing en banc).
Actor’s personal rights to their “likeness” can trump the copyright owner’s right to make “spinoffs”.
Paramount Pictures, the owners of the copyrights to the Cheers television series, licensed the concept and characters to Host International. Host wanted to make airport bars that reminded travelers of the Cheers set, complete with animatronic robots sitting at the bar, who looked like and made remarks like the characters “Norm” and “Cliff”.
The actors who played “Norm” and “Cliff” , George Wendt and John Ratzenburger, sued Host for misappropriation of their likeness. After fighting all the way to the U.S. Supreme Court, the actors won the right to have their day in court (which precipitated a settlement).
Under widely recognized tort law, everyone has a right to determine whether and how their name or likeness may be commercially exploited. This common law right is called the “right of publicity”. In California, the “right to publicity” has been codified in the state’s statutes. California Civil Code, § 3344. To use someone’s likeness to promote a product, you must have their consent. Consent is, of course, usually obtained by paying for the privilege of using the person’s likeness.
While theoretically, a person might not want their image used to promote some particularly unsavory or embarrassing products, after seeing a former Senator and presidential candidate tout Viagra’s use in resolving “erectile dysfunction”, once suspects that these days, such factors merely affect price.
In prior cases, the Ninth Circuit Court of Appeals had broadly construed California’s right of publicity law. The term “likeness” was held to encompass a robot which caricatured Vanna White’s features. (The robot wore a blonde wig, and was turning letters on what looked like a “Wheel of Fortune” set). Although the free speech principles of the United States Constitution would allow parody of Vanna White, Samsung Electronics wasn’t just doing a parody for amusement or entertainment. It was using the Vanna-robot to sell Samsung products. In ruling against Samsung, the court was not ruling that it was wrong to parody Vanna in advertising. Rather, the court was merely insisting that Samsung pay to get Vanna’s signature on a licensing agreement if it wanted to use a “Vanna” robot in its ads.
The Cheers case adds another wrinkle: Paramount Pictures owns the copyrights to Cheers. Paramount wasn’t licensing Cheers itself, however, but a Cheers spinoff. As Judge Kozinski’s dissent points out, copyright carries with it the right to make derivative works based on its characters. See generally Warner Bros., Inc. v. American Broadcasting Cos., 720 F.2d 231, 235 (2d Cir. 1983) (Superman copyright belongs to Warner Brothers). The presentation of the robots in the Cheers bars is a derivative work, like a play based on the TV series, a poster, or “Norm” and “Cliff” action figures.
Copyright law is based on a federal statute, which in turn was authorized by the United States Constitution. As such, copyright law is the supreme law of the land, and trumps any California law that conflicts with it. Thus, for George Wendt and John Ratzenburger to assert a “right to publicity”, it had to inhere in something that was not covered by copyright law or subject to Paramount Pictures copyright interest in the TV series. The circuit court decided that you can separate an actor’s likeness from the character.
Consider the “James Bond”, “007” series. Ian Fleming sold the rights to make films based on his stories to Metro-Goldwyn-Meyer. (Ignoring for the moment the fact that Fleming also had a partner, Kevin McClory, who claimed rights to the 007 stories, and indeed sold them to Warner Brothers for the 1983 film starring Sean Connery, Never Say Never Again.) After Sean Connery made the first few films, everyone associated Connery’s face with the character. Obviously, however, the character need not look like Sean Connery, and Connery had no legal right to prevent MGM from making movies with Roger Moore or Pierce Brosnan as Bond. But what if MGM decided to license a Bond action figure that looked like Sean Connery? Do they have to get the Scotsman’s permission and/or pay him to use his face? How much does the action figure have to look like Connery before he has to be bought out?
In both California “robot” cases, White and Wendt, however, the robots don’t look exactly like the actors. The “Vanna” robot is only identifiable as such in the Wheel of Fortune context, and the “Norm” and “Cliff” robots were only identifiable as such in the context of the Cheers milieu.
The court ultimately decided that this was a factually complicated scenario, where the actors’ “likeness” overlaps to some extent with the studio’s copyrighted story and characters, that had to be resolved by a trial. Once Norm and Cliff ... er, excuse me... George and John had established a right to their day in court, the actors settled for an undisclosed sum. (At least, according to TV Guide: www.tvguidelive.com/newsgossip-archives/ 01-jun/06-21-01.htm.).
I highly recommend Judge Kozinski’s opinion (dissenting from the full court’s refusal to reconsider the case “en banc”) as an example of good legal writing.
Wendt v. Host International, Inc., 125 F.3d 806 (9th Cir. 1997) cert. denied 121 S.Ct. 33 (2000).
Judge Kozinski’s Dissent: