We reverse.
I. OVERVIEW
Wendt and Ratzenberger argue that the district court erred
in dismissing their action because they have raised issues of
material fact as to whether Host violated their trademark and
publicity rights by creating animatronic robotic figures (the
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“robots”) based upon their likenesses without their permission
and placing these robots in airport bars modeled upon the set
from the television show Cheers. They also appeal the district
court’s orders excluding appellants’ survey evidence, barring
presentation of expert testimony, and awarding Host and Par-
amount attorney’s fees. We have jurisdiction, 28 U.S.C.
S 1291, and we reverse and remand for trial.
II. PROCEDURAL HISTORY
In Wendt v. Host, 1995 WL 115571 (9th Cir. 1995)
(”Wendt I”), we reversed the first grant of summary judgment
in this action and remanded. We held that appellants’ state
law causes of action were not preempted by federal copyright
law and that disputed issues of material fact precluded sum-
mary judgment because the district court’s comparison of
photographs of appellants Wendt and Ratzenberger with pho-
tographs of the animatronic figures was not sufficient to
resolve their claims under Cal. Civ. Code S 3344:
The question here is whether the three dimensional
animatronic figures are sufficiently similar to plain-
tiffs to constitute their likenesses. Based on the lim-
ited record before us, it cannot be said as a matter of
law that the figures are so dissimilar from plaintiffs
that no reasonable trier of fact could find them to be
`likenesses.’ That question must be determined by a
comparison of the actual, three-dimensional entities.
1995 WL 115571 at *2. We concluded that this comparison
must be decided without reference to the context in which the
image appears. Id. (citing White v. Samsung Elec. Am., Inc.,
971 F.2d 1395, 1397 (9th Cir. 1992), cert. denied., _______ U.S.
_______, 113 S. Ct. 2443 (1993)). We found that there were dis-
puted issues of material fact concerning the appellants’ com-
mon law right of publicity claims because the similarity
between appellants’ physical characteristics and those of the
robots is disputed. Id. at *3. Finally, we held that the appel-
12355
lants’ claims for unfair competition under S 43(a) of the Lan-
ham Act, 15 U.S.C. S 1125(a), require the application of a
“well settled eight factor test” to determine whether Host’s
conduct has created a likelihood of confusion as to whether
appellants were endorsing Host’s product. Id.
Upon remand, the district court granted summary judgment
for a second time after an in-court inspection of the robots. It
held that it could not “find, by viewing both the robotics and
the live persons of Mr. Wendt and Mr. Ratzenberger, that
there is any similarity at all . . . except that one of the robots,
like one of the plaintiffs, is heavier than the other . . . The
facial features are totally different.” The district court then
awarded attorney’s fees to Host and Paramount pursuant to
Cal. Civ. Code S 3344.
Appellants argue that despite the district court’s compari-
son of the animatronic figures and the appellants, dismissal
was inappropriate because material issues of fact remain as to
the degree to which the animatronic figures appropriate the
appellants’ likenesses. Appellants claim that the district court
erred in determining that the robots were not likenesses of the
appellants because the “likeness” need not be identical or
photographic. Further, they argue that the likeness determina-
tion is an issue for the jury to decide in this case. We agree.
III. ANALYSIS
We review a grant of summary judgment de novo. Jesinger
v. Nevada Federal Credit Union, 24 F.3d 1127, 1130 (9th Cir.
1994). We must determine, viewing the evidence in the light
most favorable to the nonmoving party, whether there are any
genuine issues of material fact, and whether the district court
correctly applied the relevant substantive law. Id. We are not
to weigh the evidence or determine the truth of the matter, but
only to determine whether there is a genuine issue for trial. Id.
The district court’s rulings excluding damage evidence and
expert testimony are governed by an abuse of discretion stan-
12356
dard, and should not be reversed absent some prejudice.
Masson v. New Yorker Magazine, Inc., 85 F.3d 1394, 1399
(9th Cir. 1996). Our review is governed by the `law of the
case’ doctrine, which prevents courts from “reconsidering an
issue previously decided by the same court, or a higher court
in the identical case.” Securities Investor Protection Corp. v.
Vigman, 74 F.3d 932, 937 (9th Cir. 1996).
A. The Statutory Right of Publicity
California Civil Code S 3344 provides in relevant part:
[a]ny person who knowingly uses another’s name,
voice, signature, photograph, or likeness, in any
manner, . . . for purposes of advertising or selling,
. . . without such person’s prior consent . . . shall be
liable for any damages sustained by the person or
persons injured as a result thereof.
[1] In White, 971 F.2d at 1397, we ruled that a robot with
mechanical features was not a “likeness” underS 3344. How-
ever, we specifically held open the possibility that a manikin
molded to Vanna White’s precise features, or one that was a
caricature or bore an impressionistic resemblance to White
might become a likeness for statutory purposes. Id. The
degree to which these robots resemble, caricature, or bear an
impressionistic resemblance to appellants is therefore clearly
material to a claim of violation of Cal. Civ. CodeS 3344.
Summary judgment would have been appropriate upon
remand only if no genuine issues of material fact concerning
that degree of resemblance were raised by appellants. Fed. R.
Civ. P. 56.
[2] Despite the district court’s assertions that no reasonable
jury could find that the robots are “similar in any manner
whatsoever to Plaintiffs,” we respectfully disagree. Without
making any judgment about the ultimate similarity of the fig-
ures to the appellants, we conclude from our own inspection
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of the robots that material facts exist that might cause a rea-
sonable jury to find them sufficiently “like” the appellants to
violate Cal. Civ. Code S 3344.
We reject appellees’ assertion that Fleet v. CBS, 58 Cal.
Rptr. 2d 645 (Cal. Ct. App. 1996) is new controlling authority
that requires us to revisit the determination on first appeal that
appellants’ S 3344 claims are not preempted by federal copy-
right law. Wendt I, 1995 WL 115571, at *1. Fleet is not con-
trolling new authority on the preemption issue. It holds that
an actor may not bring an action for misappropriation under
Cal. Civ. Code S 3344 when the only claimed exploitation
occurred through the distribution of the actor’s performance
in a copyrighted movie. Id. at 651 (”Appellants may choose
to call their claims misappropriation of right to publicity, but
if all they are seeking is to prevent a party from exhibiting a
copyrighted work they are making a claim equivalent to an
exclusive right within the general scope of copyright.”) (inter-
nal quotations omitted).
[3] Appellants here are not seeking to prevent Paramount
from exhibiting its copyrighted work in the Cheers series. As
we stated in Wendt I, their “claims are not preempted by the
federal copyright statute so long as they `contain elements,
such as the invasion of personal rights . . . that are different
in kind from copyright infringement.’ ” Wendt I, 1995 WL
115571 at * 1 (quoting Waits v. Frito-Lay, Inc., 978 F.2d
1093, 1100 (9th Cir. 1992) (citing H.R. Rep. No. 1476, 94th
Cong., 2d Sess. 132 (1976)). The Fleet court acknowledged
that it simply found a fact-specific exception to the general
rule that “as a general proposition section 3344 is intended to
protect rights which cannot be copyrighted.” Fleet, 58 Cal.
Rptr. 2d at 649.
Appellants’ claims are not preempted by federal copyright
law. Issues of material fact exist concerning the degree to
which the robots are like the appellants. We reverse the grant
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of summary judgment on the claim under Cal. Civ. Code
S 3344.
B. Common-Law Right of Publicity
[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. Eastwood
v. Super. Ct. for Los Angeles County, 198 Cal. Rptr. 342, 347
(Cal. Ct. App. 1983). The right to be protected against such
appropriations is also referred to as the “right of publicity.”
Id. A common law cause of action for appropriation of name
or likeness may be pleaded by alleging 1) the defendant’s use
of the plaintiff’s identity; 2) the appropriation of plaintiff’s
name or likeness to defendant’s advantage, commercially or
otherwise; 3) lack of consent; and 4) resulting injury. Id.
(citing Prosser, Law of Torts S 117 804-07 (4th ed. 1971)).
The so-called right of publicity means in essence that
the reaction of the public to name and likeness,
which may be fortuitous or which may be managed
and planned, endows the name and likeness of the
person involved with commercially exploitable
opportunities. The protection of name and likeness
from unwarranted intrusion or exploitation is the
heart of the law of privacy.
Lugosi v. Universal Pictures, 603 P.2d 425, 431 (1979).
[5] We have held that this common-law right of publicity
protects more than the knowing use of a plaintiff’s name or
likeness for commercial purposes that is protected by Cal.
Civ. Code S 3344. It also protects against appropriations of
the plaintiff’s identity by other means. See White, 971 F.2d at
1398 (”[a] rule which says that the right of publicity can be
infringed only through the use of nine different methods of
appropriating identity merely challenges the clever advertis-
ing strategist to come up with the tenth.”); see also Abdul-
12359
Jabbar v. General Motors Corp., 85 F.3d 407, 415 (9th Cir.
1996) (common law right protects identity, which is more
flexible than the statutory `laundry list’ of particular means of
appropriation); Midler v. Ford Motor Co., 849 F.2d 460, 463-
64 (9th Cir. 1988) (concluding that there was a claim for vio-
lation under common law right of publicity, but not Cal. Civ.
Code S 3344, for use of sound-alike singer in advertisement);
Motschenbacher v. R.J. Reynolds Tobacco Co., 498 F.2d 821,
827 (9th Cir. 1974) (concluding that there was a common-law
claim from use of an identifiable race car in an advertisement,
even though name or likeness of famous driver was not visi-
ble).
Appellees argue that the figures appropriate only the identi-
ties of the characters Norm and Cliff, to which Paramount
owns the copyrights, and not the identities of Wendt and Rat-
zenberger, who merely portrayed those characters on telev-
sion and retain no licensing rights to them. They argue that
appellants may not claim an appropriation of identity by rely-
ing upon indicia, such as the Cheers Bar set, that are the prop-
erty of, or licensee of, a copyright owner. Sinatra v. Goodyear
Tire & Rubber Co., 435 F.2d 711, 716 (9th Cir. 1970).
Appellants freely concede that they retain no rights to the
characters Norm and Cliff; they argue that the figures, named
“Bob” and “Hank,” are not related to Paramount’s copyright
of the creative elements of the characters Norm and Cliff.
They argue that it is the physical likeness to Wendt and Rat-
zenberger, not Paramount’s characters, that has commercial
value to Host.
[6] While it is true that appellants’ fame arose in large part
through their participation in Cheers, an actor or actress does
not lose the right to control the commercial exploitation of his
or her likeness by portraying a fictional character. Lugosi, 603
P.2d at 431.
[7] Appellants have raised genuine issues of material fact
concerning the degree to which the figures look like them.
12360
Because they have done so, appellants have also raised triable
issues of fact as to whether or not appellees sought to appro-
priate their likenesses for their own advantage and whether
they succeeded in doing so. See Midler, 849 F.2d at 463. The
ultimate issue for the jury to decide is whether the defendants
are commercially exploiting the likeness of the figures to
Wendt and Ratzenberger intending to engender profits to their
enterprises. See Eastwood, 198 Cal. Rptr. at 349 (”The first
step toward selling a product or service is to attract the con-
sumer’s attention.”) We therefore reverse the grant of sum-
mary judgment on the common law right of publicity claim.
C. Unfair Competition
[8] Section 43(a) of the Lanham Act (15 U.S.C. S 1125(a))
prohibits, inter alia, the use of any symbol or device which
is likely to deceive consumers as to the association, sponsor-
ship, or approval of goods or services by another person. The
appellants’ claim is for false endorsement–that by using an
imitation of their unique physical characteristics, Host misrep-
resented their association with and endorsement of the Cheers
bars concept.
In Waits, 978 F.2d at 1110, we held such a claim actionable
under S 43(a):
[a] false endorsement claim based on the unautho-
rized use of a celebrity’s identity . . . alleges the mis-
use of a trademark, i.e., a symbol or device such as
a visual likeness, vocal imitation, or other uniquely
distinguishing characteristic, which is likely to con-
fuse consumers as to the plaintiff’s sponsorship or
approval of the product.
[9] In Wendt I we held that appellants would have a claim
if “Host’s conduct had created a likelihood of confusion as to
whether plaintiffs were endorsing Host’s product. ” 1995 WL
115571 at *3. In order to determine whether or not such con-
12361
fusion is likely to occur, we referred to a “well settled eight
factor test” to be applied to celebrity endorsement cases,
Newton v. Thomason, 22 F.3d 1455, 1462 (9th Cir. 1994).
This test requires the consideration of:
1) the strength of the plaintiff’s mark;1
2) relatedness of the goods;
3) similarity of the marks;
4) evidence of actual confusion;
5) marketing channels used;
6) likely degree of purchaser care;
7) defendant’s intent in selecting the mark;
8) likelihood of expansion of the product lines.
Id. at 1462 (citing AMF, Inc. v. Sleekcraft Boats, 599 F.2d
341 (9th Cir. 1979)).
In Wendt I we concluded that one of the primary factors of
this test was the `similarity of the marks’ and because there
was a disputed issue of material fact as to that issue, summary
judgment was inappropriate on this claim.
[10] On remand, however, the district court simply com-
pared the robots with the appellants in the courtroom and
awarded judgment because there was “no similarity at all.”
The district court erred in failing independently to analyze
any of the other relevant factors to determine whether or not
_________________________________________________________________
1 In a case involving confusion over endorsement by a celebrity plaintiff,
`mark’ means the celebrity’s persona and the strength of the mark refers
to the level of recognition the celebrity enjoys. White, 971 F.2d at 1400.
12362
there was a likelihood of confusion to consumers as to
whether appellants sponsored, approved of, or were otherwise
associated with the Cheers bars.
[11] The Lanham Act’s `likelihood of confusion’ standard
is predominantly factual in nature. Summary judgment is
inappropriate when a jury could reasonably conclude that
most of the factors weigh in a plaintiff’s favor. Abdul-Jabbar,
85 F.3d at 413 (9th Cir. 1996). See also MDT Corporation v.
New York Stock Exchange, Inc., 858 F. Supp. 1028, 1032
(C.D. Cal. 1994) (summary judgment disfavored in trademark
cases because the ultimate issue of likelihood of confusion is
so inherently factual).
[12] Application of these factors indicates that the district
court erred in rejecting appellants’ Lanham Act claim at the