The Key to Being a Good Referee: the Call the Ninth Circuit Missed When Evaluating False Endorsement Claims

• Publication year: 2015

The Key to Being a Good Referee: The Call the Ninth Circuit Missed When Evaluating False Endorsement Claims

Kimberly Rubin

THE KEY TO BEING A GOOD REFEREE: THE CALL THE NINTH CIRCUIT MISSED WHEN EVALUATING FALSE ENDORSEMENT CLAIMS

ABSTRACT

Society is consumed with celebrities, and celebrity identity has pervasive power. We keep up with the Kardashians and judge singing with Adam Levine. If Doctor Oz recommends a weight-loss pill, we go out and buy it. If a burger restaurant is called Bobby Flay's, that's the hot spot to go eat. Celebrity identities are powerful brands that are subject to abuse by others who may incorporate a celebrity's identity into their product without permission. There are celebrity look-alikes and soundalikes. Celebrity likenesses have been appropriated to sell everything from cars to VCRs. Two bodies of law are turned to when there is unauthorized exploitation of a celebrity's likeness or persona. One, Section 43(a) of the Lanham Act, is a federal trademark statute, and the other is the common law right of publicity. Congress designed Section 43(a) to protect consumers from mistakenly believing that a celebrity endorsed a particular product, while the right of publicity centers on the celebrity's economic interest in his or her own identity.

The interests that both the Lanham Act and the right of publicity are designed to protect must be balanced with the First Amendment interest in free speech. Freedom of speech is a widely and heavily protected constitutional right that encompasses free expression within various platforms, including videogames. If an individual merely states that he does not like Carmelo Anthony, this statement will be protected as free speech, and there are no countervailing concerns of consumer confusion or economic cost to Anthony. If an individual wrote a play about Carmelo Anthony's journey to becoming a basketball star, and Anthony had no involvement in creating the play, then countervailing concerns are present and must be balanced with the interest in free expression. This balancing of interests highlights an inherent tension: when should the broad constitutional right to free speech bow to a countervailing concern for false endorsement of products and a celebrity's right of publicity?

The Ninth Circuit recently decided two cases dealing with this balance. Both cases concern the use of well-known football players' likenesses in a

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videogame series. One celebrity opted to bring suit under the Lanham Act, while the other chose the right of publicity. The two cases had very similar fact patterns, but the Ninth Circuit used different tests to analyze the claims, leading to opposite holdings. What was different about the prevailing plaintiff in the right of publicity claim? Is there a way to take the celebrity's and the consumers' interests into account without stifling free speech? What test should the Ninth Circuit, and other courts, use to evaluate Section 43(a) Lanham Act claims?

This Comment advances the novel argument that the Ninth Circuit and other courts should use a new test, combining the transformative use test and a modified likelihood of confusion test when evaluating Section 43(a) Lanham Act claims. The proposed test provides an analysis that focuses on protecting free speech without annihilating the possibility of the balanced concerns prevailing. The test takes the artist's, consumers', and the celebrity's interests into account and mitigates the problems caused by having a lack of a federal right of publicity.

Introduction............................................................................................1391

I. Two Bodies of Law Dealing with Use-of-Likeness Claims ... 1393

A. Section 43(a) of the Lanham Act ............................................. 1394
B. The Right of Publicity.............................................................. 1397
C. The Differences Between False Endorsement and The Right of Publicity ................................................................................... 1399

II. The First Amendment...................................................................1400

A. The First Amendment: A Brief Overview of Free Speech........ 1400
B. The Balance Between Section 43(a) Interests and the Interest in Free Expression: The Rogers Test ...................................... 1401
C. The Balance Between Right of Publicity Interests and the Interest in Free Expression: The Transformative Use Test..... 1405

III. Two Key Ninth Circuit Cases Highlighting the Contrast Between False Endorsement and Right of Publicity—Similar Facts, Opposite Holdings..............................................1409

A. False Endorsement: Brown v. Electronic Arts, Inc................. 1409
B. Right of Publicity: Keller......................................................... 1412

IV. Proposal: A New Test For Evaluating False Endorsement Claims.............................................................................................1414

A. Critique of the Rogers Test...................................................... 1415
B. Critique of the Transformative Use Test ................................. 1418
C. The Likelihood of Confusion Test ............................................ 1421

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D. The New Test ........................................................................... 1423
E. Application of the Proposed Test to Brown............................. 1427

Conclusion................................................................................................1431

Introduction

Celebrities have a powerful influence in society. The public is engrossed by what celebrities wear, say, and do, whether the focus is on how to diet like a particular icon¹ or what lotion a star recommends.² A celebrity's identity is a powerful tool that can be used to sway consumer purchases, regardless of whether the celebrity is affiliated with the product. A celebrity's identity can therefore be used illegally for financial gain at the expense of both the star and the consumer.

Beyoncé is an internationally renowned music artist.³ One of her song's lyrics state, "My persuasion can build a nation," describing her potential influence over society.⁴ she recently released a surprise album, which is the first since 2009 to sell over 300,000 copies during the first three weeks of sales.⁵ Society pays close attention to what Beyoncé does, and this makes her an easy target for exploitation. If a person wrote a book entitled Queen Bee's Singing Tips,⁶ fans may be duped into believing that Beyoncé was somehow affiliated with the book, causing consumers to go out and buy it. If the book was entitled Singing Tips and discussed how Beyoncé warms up her vocal cords before a show, consumers may still mistakenly think that Beyoncé was

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connected with the book and in turn purchase the book. The appropriation of Beyoncé's identity is a form of unfair competition.

Unfair competition is a broad area of law⁷ that encompasses unauthorized exploitation of celebrity likeness.⁸ Both Section 43(a) of the Lanham Act and the common law right of publicity concern the use of one's likeness without consent.⁹ section 43(a) focuses on shielding consumers from confusion—preventing consumers from going out and buying Singing Tips due to the belief that Beyoncé endorsed the book. Right of publicity on the other hand is interested in protecting Beyoncé's economic interest in her own identity. Both of those interests need to be balanced with the countervailing First Amendment interest in free expression. For instance, the author of Singing Tips has a First Amendment right to create and disseminate the expressive idea captured in her book.

The Ninth Circuit uses different tests to balance these crucial interests depending on whether a claim is brought as a violation of section 43(a) of the Lanham Act or the right of publicity. Ultimately, this Comment argues that the Ninth Circuit uses an inadequate test when analyzing Section 43(a) claims and that the test the court uses for right of publicity claims does not sufficiently take consumers' interests into account. The Ninth Circuit, and all courts, should use a new test, initially incorporating the test used to analyze right of publicity claims and add to that test to take the author's, consumers', and Beyoncé's interests into account.

Part i of this Comment explores two bodies of law that are applicable to claims of unauthorized use of a celebrity's likeness. First, Part I delves into Section 43(a) of the Lanham Act. After briefly explaining trademark law, Part i details the purpose of section 43(a). The terms section 43(a) and false endorsement will be used interchangeably throughout this Comment. Next, Part i discusses the right of publicity and what the right is designed to protect. Part I concludes with a comparison of Section 43(a) and the right of publicity, explaining the key differences between the two.

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Part II introduces the First Amendment and the interests it seeks to protect. Part II discusses the balance of the interest in free speech against Section 43(a) interests, including an explanation of the test the Ninth Circuit uses when balancing such interests. Part II then focuses on the balance of free expression and the interests the right of publicity seeks to protect. Lastly, Part II explores the test the Ninth Circuit uses when evaluating right of publicity claims.

Part III examines two recent Ninth Circuit cases. First, Part III describes the background of the artistic work involved in both cases. Part III then explains the first case, Brown v. Electronic Arts, Inc., a suit alleging a violation of Section 43(a) of the Lanham Act. Part III then explores In re NCAA Student-Athlete Name & Likeness Licensing Litigation (Keller), which was a right of publicity suit. Finally, Part III will describe the Ninth Circuit's application of two different tests when evaluating the...