subject to the less demanding commercial speech standard of
Central Hudson Gas & Elec. Corp. v. Public Serv. Comm.,
447 U.S. 557, 561-63 (1980). Here, the portrayal of the
Cheers characters is core protected speech: Using Norm and
Cliff dummies in a Cheers-themed bar is a dramatic presenta-
tion.8 It’s like a play. Cheers may not have the social impact
of Hair, see Southeastern Promotions, Ltd. v. Conrad, 420
U.S. 546 (1975), but it’s a literary work nonetheless, worthy
of the highest First Amendment protection from intrusive
state laws like California’s right-of-publicity statute. See
Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95
F.3d 959, 970-72 (10th Cir. 1996). Host did not plaster
Wendt’s face on a billboard with a Budweiser logo. It cashed
in on the Cheers goodwill by creatively putting its familiar
mise-en-scene to work. The robots are a new derivation of a
copyrighted work, not unlike a TV series based on a movie or
_________________________________________________________________
8 No doubt the decision to put animatronic Norm and Cliff figures in the
bars was profit-driven. But that doesn’t mean Central Hudson applies: The
Supreme Court limits the outhouse of commercial speech to pure
advertising–speech that does no more than propose a commercial trans-
action. Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer
Council, Inc., 425 U.S. 748, 762 (1976); Nordyke v. Santa Clara County,
110 F.3d 707, 710 (9th Cir. 1997); Cardtoons, L.C. v. Major League Base-
ball Players Ass’n, 95 F.3d 959, 970 (10th Cir. 1996).
14909
a Broadway play based on a novel. The novelty of using ani-
matronic figures based on TV characters ought to prick up our
ears to First Amendment concerns. Instead we again let the
right of publicity snuff out creativity.
VI
As I noted in White, “No California statute, no California
court has actually tried to reach this far. It is ironic that it is
we who plant this kudzu in the fertile soil of our federal sys-
tem.” 989 F.2d at 1519. We pass up yet another opportunity
to root out this weed. Instead, we feed it Miracle-Gro. I dis-
sent.
14910
http://www.ca9.uscourts.gov/ca9/newopinions.nsf/04485f8dcbd4e1ea882569520074e698/b3ec68ff03b90b06882569580068d047?OpenDocument
Case Name:WENDT V HOST INTERNATIONAL INC
Case Number: Date Filed:
96-55243 09/22/97
FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
GEORGE WENDT, an individual;
JOHN RATZENBERGER, an individual,
Plaintiffs-Appellants,
v.
No. 96-55243
HOST INTERNATIONAL, INC., a
D.C. No.
Delaware corporation;
CV-93-142-R
Defendant-Appellee,
OPINION
and
PARAMOUNT PICTURES CORPORATION,
a Delaware corporation,
Defendant-Intervenor.
Appeal from the United States District Court
for the Central District of California
Manuel L. Real, District Judge, Presiding
Argued and Submitted
March 11, 1997–Pasadena, California
Filed September 22, 1997
Before: Betty B. Fletcher and Stephen S. Trott,
Circuit Judges, and Bruce S. Jenkins,* District Judge.
Opinion by Judge Fletcher
_________________________________________________________________
*Honorable Bruce S. Jenkins, Senior United States District Judge for
the District of Utah, sitting by designation.
12347
SUMMARY
The summary, which does not constitute a part of the opinion of the court,
is copyrighted C 1994 by Barclays Law Publishers.
_________________________________________________________________
Intellectual Property/Entertainment
The court of appeals reversed a judgment of the district
court. The court held that actors have statutory and common-
law rights against the unauthorized use of their likenesses in
promotional figures based on an infringer’s copyrighted char-
acters.
Appellants George Wendt and John Ratzenberger are actors
who played the characters of “Norm” and “Cliff” in the
Cheers television series. They sued appellee Host Interna-
tional, Inc. alleging violations of their trademark and publicity
rights under Cal. Civ. Code S 3344 (liability for unauthorized
commercial use of person’s likeness), California common
law, and unfair competition under the Lanham Act. The com-
plaint alleged that Host had used their likenesses without
authorization in “animatronic,” i.e., robot, figures in airport
Cheers bars.
In Wendt I, the Ninth Circuit held that the state-law claims
were not preempted by federal copyright law, and that sum-
mary judgment for Host was inappropriate because the district
court’s comparison of photographs of Wendt and Ratzenber-
ger with photographs of the robots was insufficient to resolve
their claims under S 3344, and that the comparison had to be
made without reference to the context in which the images
appeared. The court also concluded that disputed issues of
material fact remained regarding the common-law claims
because the similarity between the actors’ physical character-
istics and those of the robots was disputed. Lastly, the court
ruled that the Lanham Act claims required the application of
a standard test to determine whether Host’s conduct created
a likelihood of confusion as to whether the actors were
endorsing Host’s product.
12348
On remand, Host again moved for summary judgment.
Wendt and Ratzenberger presented evidence of actual confu-
sion among members of the public in the form of comments
by travelers in airport Cheers bars. The district court excluded
their proffered consumer survey taken in the vicinity of
Cheers bars. Wendt and Ratzenberger also submitted evi-
dence that Host intentionally designed the robot figures to
resemble them because the value of the association of the
robots with them was “a major drawing card” of the Cheers
concept. Ratzenberger testified that he had rejected offers
from small breweries to appear in their advertisements in
order to be available to a large brewery.
The district court made an in-court comparison of Wendt
and Ratzenberger with the actual robots (now named “Hank”
and “Bob”), finding that there was no similarity except that
one was heavier than the other. The court granted Host’s
motion, dismissed the action, and awarded Host attorneys
fees.
Wendt and Ratzenberger appealed, contending that dis-
missal was inappropriate because material issues of fact
remained as to the degree to which the robots appropriated
their likenesses. They asserted that the likenesses did not have
to be identical or photographic, and that the determination of
the issue was for the jury. Wendt and Ratzenberger conceded
that they retained no rights to the characters Norm and Cliff,
but asserted that “Bob” and “Hank” were not related to Para-
mount’s copyright of the creative elements of the characters
Norm and Cliff. It was their contention that it was the physi-
cal likeness to them that had commercial value to Host.
Host countered that the figures appropriated only the identi-
ties of the characters of Norm and Cliff, to which intervenor
Paramount Pictures Corp. owned the copyrights, and not the
identities of Wendt and Ratzenberger. It was Host’s position
that Wendt and Ratzenberger could not claim appropriation of
12349
identity by relying on indicia like the Cheers bar set that were
the property of or licensed by a copyright owner.
[1] The degree to which the robots resembled, caricatured,
or bore an impressionistic resemblance to Wendt and Ratzen-
berger was material to the claim of violations ofS 3344. Sum-
mary judgment would have been appropriate on remand only
if no genuine issues of material fact concerning the degree of
that resemblance were raised by Wendt and Ratzenberger. [2]
Material facts existed that might have caused a reasonable
jury to find them sufficiently “like” Wendt and Ratzenberger
to violate S 3344.
[3] Wendt and Ratzenberger were not seeking to prevent
Paramount from exhibiting its copyrighted work in the Cheers
series. Their claims were not preempted by the copyright stat-
ute so long as they contained elements, such as the invasion
of personal rights, that were different in kind from copyright
infringement. As a general proposition, S 3344 is intended to
protect rights that cannot be copyrighted.
[4] California recognizes a common-law right of privacy
that includes protection against appropriation for the defen-
dant’s advantage of the plaintiff’s name or likeness. The right
is referred to as the “right of publicity.” A common-law cause
of action for appropriation of name or likeness may be alleged
by pleading (1) the defendant’s use of the plaintiff’s identity;
(2) appropriation of the plaintiff’s name or likeness to the
defendant’s advantage; (3) lack of consent; and (4) resulting
injury.
[5] This common-law right protects against more than
knowing use of a plaintiff’s name or likeness for commercial
purposes. It also protects against appropriations of the plain-
tiff’s identity by other means. [6] While it was true that
Wendt’s and Ratzenberger’s fame arose in large part through
their participation in Cheers, an actor does not lose the right
12350
to control the commercial exploitation of his or her likeness
by portraying a fictional character.
[7] Wendt and Ratzenberger raised genuine issues of mate-
rial fact concerning the degree to which the figures looked
like them. Because they did so, they also raised triable issues
as to whether Host sought to appropriate their likenesses for
its own advantage, and whether it succeeded. The issue for the
jury was whether the defendants were commercially exploit-
ing the likeness of the figures to Wendt and Ratzenberger
intending to engender profits.
[8] The Lanham Act prohibits the use of any symbol or
device that is likely to deceive consumers as to the associa-
tion, sponsorship, or approval of goods or services by another
person. Wendt’s and Ratzenberger’s claim was for false
endorsement–that by using an imitation of their unique phys-
ical characteristics, Host misrepresented their association with
and endorsement of the Cheers bar concept.
[9] To determine if it was likely that Host’s conduct created
a likelihood of confusion as to whether Wendt and Ratzenber-
ger were endorsing Host’s product, an eight-factor test
applied. This test required consideration of (1) the strength of
the plaintiff’s mark; (2) relatedness of the goods; (3) similar-
ity of the marks; (4) evidence of actual confusion; (5) market-
ing channels used; (6) likely degree of purchaser care; (7)
defendant’s intent in selecting the mark; and (8) likelihood of
expansion of the product lines.
[10] On remand, the district court simply compared the
robots with Wendt and Ratzenberger and awarded judgment
because there was no similarity. The court erred in failing to
analyze any of the other relevant factors to determine whether
there was a likelihood of confusion to consumers as to
whether Wendt and Ratzenberger sponsored, approved of, or
were otherwise associated with the Cheers bars. [11] The
Lanham Act’s likelihood of confusion standard is predomi-
12351
nantly factual. Summary judgment is inappropriate when a
jury could reasonably conclude that most of the factors
weighed in the plaintiff’s favor.
[12] The district court erred in rejecting the Lanham Act
claim at the summary judgment stage because a jury could
reasonably have concluded that most of the factors weighed
in favor of Wendt and Ratzenberger. They were principal
players on Cheers, a popular television show. They were well
known among the target customers of Host’s Cheers bars. A
jury could reasonably have concluded that their mark was
strong.
[13] For the same reasons, their “goods” (their skills and
fame as actors) were obviously related to Host’s “goods” (the
products sold in the Cheers bars and the bars themselves)
even if they were not strictly competitive. The issue was
whether a consumer would be confused as to Wendt’s and
Ratzenberger’s association with or sponsorship of Host’s bars.
The source of their fame and the Host bars was identical: the
Cheers television series.
[14] Similarity of the marks was the primary issue in dis-
pute. Because Wendt and Ratzenberger raised triable issues of
material fact concerning the degree to which the robots
resembled them, a reasonable jury might have found that this
factor weighed in their favor. Under the Lanham Act, in cam-
era inspection is not sufficient. The district court had to view
the marks as they appeared in the marketplace.
[15] Wendt and Ratzenberger presented evidence of actual
consumer confusion in their declarations and in the form of
survey evidence. This evidence should not have been
excluded. Sufficient evidence existed by which a reasonable
jury might have inferred actual consumer confusion.
[16] The factor of marketing channels used weighed in
favor of Wendt and Ratzenberger. The allegation that appro-
12352
priating their likenesses because the target audience of the
Cheers bars was customers who were fans of the television
series was a similarity in marketing channels that suggested
that there was at least a likelihood of consumer confusion.
[17] The factor of degree of purchaser care weighed in
favor of Wendt and Ratzenberger as well. Consumers were
not likely to be particularly careful in determining who
endorses or is affiliated with an airport bar in which they
might purchase a single beverage. They would be even less
likely to scrutinize the source of the figures used to attract
patrons. This low degree of care made confusion of sponsor-
ship likely.
[18] Wendt and Ratzenberger alleged facts that could have
given rise to an inference that Host intended to confuse cus-
tomers as to their sponsorship or endorsement of the Cheers
bars by creating robots with their physical characteristics.
Based on the evidence in opposition to summary judgment, an
inference could have been raised that Host intended to exploit
their celebrity by confusion as to the similarity between the
figures and Wendt and Ratzenberger.
[19] The factor of likelihood of expansion of product lines
weighed in Wendt’s and Ratzenberger’s favor as the potential
existed that in the future, Ratzenberger’s endorsement of
other beers would be confused with his alleged endorsement
of the beers sold at Host’s bars.
[20] A reasonable jury could have concluded that most of
the factors weighed in favor of Wendt and Ratzenberger, and
that Host’s conduct created at least the likelihood of consumer
confusion. Whether their Lanham Act claim should succeed
was a matter for the jury.
[21] In trademark cases, surveys are to be admitted as long
as they are conducted according to accepted principles and are
relevant. Challenges to methodology go to the weight given
12353
the survey, not its admissibility. On remand, the parties
should have the opportunity respectively to lay a foundation
for admission of the survey, or to challenge the adequacy of
the foundation.
_________________________________________________________________
COUNSEL
David A. Pash, Kinsella, Boesch, Fujikawa & Towle, Los
Angeles, California, for the plaintiffs-appellants.
William T. Rintala, Rintala, Smoot, Jaenicke & Rees, Los
Angeles, California, for the defendants-appellees.
Robert S. Chapman, Greenberg, Glusker, Fields, Claman &
Machtinger, Los Angeles, California, for the defendant-
intervenor.
_________________________________________________________________
OPINION
FLETCHER, Circuit Judge:
Actors George Wendt and John Ratzenberger appeal the
district court’s grant of summary judgment in favor of Host
International, Inc. (”Host”) and applicant in intervention Para-
mount Pictures Corporation (”Paramount”), dismissing their
action for violations of the Lanham Act, 15 U.S.C.S 1125(a),
and California’s statutory and common law right of publicity.