Carson v Heres Johnny Portable Toilets
From Personality Rights Database
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| United States |
Contents |
[edit] 1 Carson v Here’s Johnny Portable Toilets
Case Name: John Carson and Johnny Carson Apparel, Inc v Here’s Johnny Portable Toilets, Inc.
Key words: Right of publicity, phrase associated with a celebrity
Country: U.S.A.
Citation :
Court: United States Court of Appeal
Date : 01.02.1983
Case N°: 80-1720
Importance: The right of publicity allows protection of a phrase usually associated with a popular entertainer.
Facts: John Carson is the star of “The Tonight Show”, a well-known TV programme broadcast five nights a week. Each night, and from the beginning of his career, he has always been introduced by the phrase “Here’s Johnny”. This phrase is associated with him by a large segment of the public. He licensed his name to Johnny Carson Apparel, a men’s clothing company which also used, with Carson’s consent, the phrase “Here’s Johnny” on labels for clothing. The name “Here’s Johnny” has never been registered as a trade mark. The defendant, engaged in the business of renting and selling portable toilets called its products “Here’s Johnny portable toilets”.
The plaintiffs allege unfair competition, trade mark infringement, invasion of right of privacy and right of publicity. They seek damages and injunction against further use of the phrase.
[edit] 2 Decision and Reasoning:
[edit] 2.1 1. The district court decision:
The unfair competition claim did not succeed because the plaintiffs failed to satisfy the test of likelihood of confusion. It also considered that “Here’s Johnny” was not such a strong mark that its use for other goods should be entirely foreclosed. Finally, the claim for invasion of right of privacy and publicity also failed because the court held that such rights could only extend to name or likeness, but not to an associated phrase. Both plaintiffs appealed.
[edit] 2.2 2. The majority opinion of the Court of Appeal
[edit] 2.2.1 Likelihood of confusion?
Bailey Brown, Senior circuit judge upheld the conclusions of the district court as for the claims about unfair competition and trade mark infringement. First, the defendants did not intend to deceive the public by using this name so that the public would think that Carson was connected with this business. There was little evidence that the public was actually confused. Secondly, there was no evidence that the plaintiffs suffered any damage. Therefore, the appellants failed to establish a likelihood of confusion, because “the general concept underlying the likelihood of confusion is that the public believe that the mark’s owner sponsored or otherwise approved the use of the trademark”.
[edit] 2.2.2 John Carson’s right of privacy
Brown reaffirmed that because right of privacy and right of publicity protected two different interests, they had to be analyzed separately. In the present case, privacy was not violated. The judge affirmed that Carson sued the defendant because he considered the association embarrassing and odious. But these feelings do not amount to what the right of privacy usually protects. Therefore, if that had anything to do with a commercial interest of a celebrity, then one had to turn towards the right of publicity.
[edit] 2.3 3. A new extension of the right of publicity: the division of the court
[edit] 2.3.1 The majority: a broad interpretation
The district court had dismissed the claim because there was no use of Carson’s name or likeness. The Court of Appeal here considered that such interpretation of the right of publicity was too narrow. The right of publicity should be construed as the protection of a pecuniary interest in the commercial exploitation of a celebrity’s identity. Therefore, if a celebrity’s identity has been exploited, then her right of publicity has been invaded, whatever form the exploitation took. Brown relied on the case-law, reaffirming that for the question of “identifiability”, what mattered was that the public would think that the person was associated to the product because he could be identified thanks to some visible signs or symbols. For example, a racing car similar to Motschenbacher’s one would induce that the driver is this well known professional race car driver. Similarly, a drawing of a black male sitting in a corner of a boxing ring with accompanying verse identifying the figure as “the Greatest” would induce that it showed the former champion Ali. The defendants agreed that they chose this phrase because of the connection with Johnny Carson and but for such strong association between the celebrity and the phrase, they would probably not have used it. Therefore, they intentionally appropriated Carson’s identity for a commercial purpose.
[edit] 2.3.2 The dissenting opinion
Cornelia Kennedy, Circuit judge, dissented from the part where the court held that the use of the phrase was a violation of Carson’s right of publicity. She was of the opinion that the common law right of publicity should not be extended beyond someone’s “name likeness, achievements, actual performances or identifying characteristics”. First, she refused to consider the case as a “name” case, because this first name used in the phrase was very common. More importantly, her main concern was that by including some words or phrases merely associated with a celebrity, then the celebrity could easily remove those words from the public domain. She referred to some policy issues to elaborate her argument.
[edit] 2.3.2.1 Policies behind the right of publicity:
She recalled three policy issues which justify the right of publicity.
First the right protects the economic interests of celebrities. But nothing suggests that “Here’s Johnny” is linked to Carson in a closer way than a mere introduction to his personal appearance. Therefore, it cannot be considered as, like the Zacchini case imposed, the product of the celebrity own talents and energy, result of much time and effort. The phrase, which is a very common way of introducing someone, is not said by Carson, but said of him. In that context, it cannot be a part of his identity and therefore “does little to rob Johnny Carson of something which is unique to him”.
Secondly, the right of publicity is a financial incentive for individuals to produce intellectual and creative works. Here, no economic reward can be reasonably attributed to Carson for a phrase “neither created by him nor performed by him”. Doing so would simply reward him for the time and effort of others.
Thirdly, the right of publicity fulfils a societal and individual interest by preventing unjust enrichment and deceptive trade practices. But she was of the opinion that such practices could be prevented by existing legal devices and did not require an extension of the right of publicity. For example, she approved the recourse to unfair competition and trade mark law. But as it was concluded that there was no likelihood of confusion, then any argument of wrongdoing was eliminated. Besides as for the unjust enrichment argument, allowing the appeal would enable Carson to be enriched by a phrase associated with him but in which he made no personal investment.
Therefore, none of those issues justify the extension of this right to words or phrase merely associated to an individual.
[edit] 2.3.2.2 Other countervailing interests:
An expansion beyond established limits is also a threat to society’s interest in free enterprise and free expression. A too broad right of publicity would remove many items, words or acts from the public domain above what is necessary. The resulting monopoly could compromise commercial and competitive interest because a grant of publicity amounts to “a grant of a monopoly in that case for the life of the celebrity” and without having a personal contribution for the public’s benefit from the plaintiff. Moreover, unlike trade marks or patents system, the protection of phrases or words merely associated with a celebrity shows virtually no notice to the public of what is protected. Therefore, the fear of legal consequences for wrongful appropriation will have a chilling effect on commercial innovation.
As for the use of intellectual property in general, because the phrase “Here’s Johnny” is more an idea or a concept of introducing someone rather than an original fixed expression and because the right of publicity does not provide any notice or duration requirement, such phrases should not be entitled protection.
Finally the cases relied on by the majority of the court did not convince her, as simply dealing with distinctive characteristics, like Ali likeness or Motschenbacher’s racing car.
[edit] 2.3.3 The counter-arguments from the majority
The opinion of the court acknowledged her arguments. However, Brown considered that they did not explain why the “identifying characteristics” like the racing car would identify more Motschenbacher than the phrase identified Carson. He then recalled that in the Ali case, the drawing and the words “strongly suggested” and “further implied” the identity of the champion. Therefore, even in the absence of a name, whenever a celebrity’s identity is appropriated for commercial exploitation, it should be protected.
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