Sunday, June 22, 2008

Yeager's publicity claim proceeds at Mach 1

Yeager v. Cingular Wireless , 2008 WL 2413167 (E.D. Cal.)

Chuck Yeager (wikipedia for the unofficial biography) is a man of many accomplishments, including becoming an “ace in a day” in WWII by downing five enemy fighters in one mission. He then became a test pilot, and flew the first plane to break the speed of sound (Mach 1). He’s made commercial use of his identity.

In 2006, defendants issued a press release (or, as the court said, an “advertising/promotional article (the ‘publication’) styled as a ‘Press Release’”) highlighting the reliability, durability and security of their cellular network. It focused on a new service for responding to disasters or emergencies and continuing to provide cell service. The press release states:

“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.”

Yeager alleged that this reference harmed his ability to get sponsorship agreements with other phone providers. He sued for violations of the Lanham Act, California common law and statutory rights of publicity, unjust enrichment, and state-law false advertising.

Cingular argued that the First Amendment barred the claim, because the press release was news and addressed a matter of public interest. Yeager argued that the release was commercial speech and sought to capitalize on Yeager’s identity. Under California precedent, the First Amendment doesn’t protect commercial speech that uses a plaintiff’s identity without his or her consent to promote an unrelated product. Using identity as “illustrative” or “window-dressing” for a commercial theme isn’t protected by the First Amendment.

For purposes of the motion to dismiss, the court accepted Yeager’s allegation that the press release was an “advertising/promotional article,” and used his name and reputation to promote Cingular’s unrelated product. These allegations were not contradicted on their face by the text of the press release, though the court explicitly noted that a different result might obtain at a later stage. The court could not find as a matter of law that the press release was a “news release on emergency preparedness,” as Cingular argued.

Cingular also argued that Yeager’s achievement in breaking the sound barrier was within the public domain, so that reference to it could not sustain a Lanham Act claim. The Lanham Act claim requires Yeager to show that a false or misleading representation is likely to deceive consumers as to association, sponsorship or approval—in other words, that there was likely confusion over whether Yeager endorsed Cingular. In a court bound by White, Wendt, Abdul-Jabbar, and the like, you can guess the outcome. Yeager’s allegations were sufficient to state a claim. His interest in his name and identity was created by his own actions, and not in the public domain.

Cingular then argued that the use of Yeager’s name was merely incidental and was nominative fair use. The court agreed with Yeager that these defenses were premature—they should be addressed on summary judgment. On a motion to dismiss, where the court is limited to the pleadings and all reasonable inferences must be made in the plaintiff’s favor, it’s highly unusual to hold that a defendant has proven an affirmative defense.

An incidental use is one that has no commercial value, given the role it plays in the publication as a whole. The Restatement (Second) of Torts says in comments that “a plaintiff’s name is not appropriated by mere mention of it,” and that there’s no claim when a name is published “for purposes other than taking advantage of his reputation, prestige, or other value associated with him.” The court noted that this defense generally applies to the right of publicity, not necessarily to the confusion-based Lanham Act claims, but found it unnecessary to resolve the issue. Yeager properly alleged that the reference to him was made to use his reputation to benefit Cingular, in order to sell its products and services. That was enough.

As for nominative fair use, the usual interpretive issue arose (illustrating why putting the burden on the defendant to establish the defense is significant). The court didn’t address the first two elements, but they’re pretty easy: Yeager isn’t readily identifiable without using his name, and all Cingular did was use his name. It’s the third New Kids element that will kill you: “the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” Naturally, Cingular argued that it only used Yeager’s name once, not in connection with any product or service it was selling, and not as a (conventional) ad. Thus, nothing suggested sponsorship or endorsement.

But what is this “nothing” that Cingular must (not) do? Is it “nothing else” other than use a mark as necessary to identify the subject of discussion? In that case, lots of things are nominative fair use. However, Abdul-Jabbar essentially held that mere presence of a celebrity’s name in a conventional 30-second car ad can itself be enough to defeat nominative fair use, because any celebrity appearance is generally understood as an endorsement in that context. That result suggests that “nothing” is a bit more conceptually tricky than it could be.

Because Yeager alleged that the press release was an “advertising/promotional article,” and that the reference to him was likely to cause confusion, the court held that it could not find “as a matter of law that defendant’s reference to plaintiff in the publication makes no suggestion of sponsorship or endorsement by plaintiff.” This only makes sense if we accept the idea that reference alone can be the necessary “something.”

I don’t think Abdul-Jabbar is crazy to say that the context of a comparison to a celebrity achievement in a 30-second car ad might be likely to suggest endorsement, though that conclusion makes the nominative fair use test a heck of a lot less useful and a lot more obviously a matter of judicial mind-reading of consumers. But even under Abdul-Jabbar, the fact that the ad was a conventional TV ad was the “something” for purposes of New Kids factor 3. A press release, even if it is commercial speech (which I think it is), does not carry the same consumer expectations—if being commercial speech is “something,” then nominative fair use is dead.

Thus, all of Yeager’s claims survived.

My general reaction: This is why the current right of publicity is a terrible, terrible thing. If some people think Yeager is somehow associated with Cingular because of this press release making a single textual comparison with a historical event, that’s because trademark owners have convinced people that ridiculous ownership claims must be okay. The law should not work to prevent this tenuous and immaterial confusion. Suppose Cingular had truthfully said “a test pilot” broke the sound barrier, and Yeager had alleged that the general public would recognize that this was a reference to him, which it undeniably is? What logic makes this motion come out any differently under those circumstances (at least under the Lanham Act and California common law, which have no “name” limit)? How much of history does Yeager own?

And I’m deeply worried that the search for an external limiting principle, which understandably has often been the First Amendment, will succeed in a way that harms advertising regulation overall. That is, while I hope that more courts will stand up against overreaching publicity claims, if they use the First Amendment to do so, I fear the doctrine they create will be applied in real false advertising cases, not just in cases where the only alleged harm stems from a right of publicity/endorsement claim.


Anonymous said...

Agree with you completely. Very good analysis of this case and its implications.

James W. Pharo said...

I've worked in this field for 15 years now and this case shows the inexorable victory of various IP owner-types (calling right of publicity "IP owners" for this purpose). I routinely advise clients to simply stay away from all of these ought-to-be-permissible uses because the cost of defense is just too high, plus if the damn thing ever gets in front of a judge they are too inexperienced and un-thoughtful to get it right.

I like to blame the sports guys (N*F, *BA, ML*, etc.) for this nonsense. I don't care what they say: a t-shirt that says "I like the Philadelphia Eagles" infringes on no one's rights...