summary judgment stage because a jury could reasonably
conclude that most of the factors weigh in appellants’ favor.
Wendt and Ratzenberger were principal players on Cheers, a
popular television show. They are clearly well-known among
the target customers of Host’s Cheers bars. For the purposes
of this analysis, a jury could reasonably conclude that their
mark is strong.
[13] For the same reason, their `goods’ (their skill and fame
as actors) are obviously related to Host’s `goods’ (the prod-
ucts sold in the Cheers bars and the bars themselves) even if
they are not strictly competitive. The issue is whether a con-
sumer would be confused as to Wendt and Ratzenberger’s
association with or sponsorship of Host’s bars. See White, 971
F.2d at 1400 (”In cases concerning confusion over celebrity
endorsement, the plaintiff’s `goods’ concern the reasons for or
source of the plaintiff’s fame.”) The source of their fame and
the Host bars are identical: the Cheers television series. A jury
could conclude that this factor weighs in appellants’ favor
because it would be reasonable for a customer to be confused
as to the nature of Wendt and Ratzenberger’s association with
Host’s Cheers bars and the goods sold there.
12363
[14] The third factor, the similarity of the marks, is the pri-
mary issue in dispute. Because appellants have raised triable
issues of material fact concerning the degree to which the
robots resemble the appellants, a reasonable jury might find
that this factor weighs in appellants’ favor. Under the Lanham
Act, in camera inspection is not sufficient; the district court
must view the marks “as they appear in the marketplace.” E
& J Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291
(9th Cir. 1992).
[15] Appellants presented evidence of actual confusion, the
fourth factor. Both Ratzenberger and Wendt stated in their
declarations that they have been approached by members of
the public who commented on the similarity between the
appellants and the robots at the Cheers airport bars: “The
usual comment is some variation on `Hey George, I just had
a drink with you in Kansas City.’ ” They also submitted evi-
dence of consumer confusion to the district court prior to
summary judgment in the form of survey evidence. The court
rejected this evidence as “not a good survey. ” For reasons
detailed below, this evidence should not have been excluded.
Sufficient evidence exists by which a reasonable jury might
infer actual consumer confusion.
[16] The fifth factor, marketing channels used, weighs in
the appellants’ favor. The allegation is that Host is appropriat-
ing appellants’ likenesses because the target audience of the
Cheers bars are customers who are fans of the television
series. Such a similarity in marketing channels suggests that
there is at least a likelihood of consumer confusion.
[17] The sixth factor, likely degree of purchaser care,
weighs in favor of appellants as well. Consumers are not
likely to be particularly careful in determining who endorses
or is affiliated with an airport bar in which they might pur-
chase only a single beverage. They will be even less likely to
scrutinize the source of the animatronic figures which are not
for sale, but are used instead to attract patrons to the bars.
12364
This low degree of care makes confusion of sponsorship
likely. See White, 971 F.2d at 1400 (”consumers are not likely
to be particularly careful in determining who endorses VCR’s,
making confusion as to their endorsement more likely.”)
[18] The seventh factor is defendant’s intent in selecting
the mark. Appellants have alleged facts that could give rise to
an inference that Host intended to confuse customers as to
Wendt and Ratzenberger’s sponsorship or endorsement of the
Cheers bars by creating robots with their physical characteris-
tics. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 354 (9th
Cir. 1979) (”When the alleged infringer knowingly adopts a
mark similar to another’s, reviewing courts presume that the
defendant can accomplish his purpose: that is, that the public
will be deceived.”). In their opposition to summary judgment
appellants submitted evidence that Host intentionally
designed the animatronic figures to resemble Wendt and Rat-
zenberger and that it recognized from the outset that the value
of the association with Wendt and Ratzenberger themselves
was “a major drawing card of the Cheers concept. ” After
being advised that appellants would not agree to the use of
their likenesses, Host altered the robots cosmetically, named
them “Hank” and “Bob,”2 and refused to recast them into a
“friendly neighborhood couple,” as they were advised to do
by Paramount. Based on this evidence, an inference can be
raised that Host intended to exploit the appellants’ celebrity
by confusion as to the similarity between the figures and the
appellants.
[19] We have found that the eighth factor, likelihood of
expansion of the product lines, “does not appear apposite to
a celebrity endorsement case,” White, 971 F.2d at 1401. Here,
however, Ratzenberger has offered evidence that he would
like to appear in advertisements for beer and has declined
offers from small breweries in order to be available to a large
_________________________________________________________________
2 Until that point “Hank” was referred to in the record as “Cliff” and
“Bob” as “Norm.”
12365
brewery. “Inasmuch as a trademark owner is afforded greater
protection against competing goods, a `strong possibility’ that
either party may expand his business to compete with the
other will weigh in favor of finding that the present use is
infringing.” Sleekcraft, 599 F.2d at 354 (citing Restatement of
Torts S 731(b)). This factor therefore weighs in appellants’
favor as the potential exists 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 conclude that most of the fac-
tors weigh in appellants’ favor and that Host’s alleged con-
duct creates at least the likelihood of consumer confusion.
Whether appellants’ Lanham Act claim should succeed, of
course, is a matter for the jury. Accordingly, we reverse the
dismissal of the unfair competition claim and remand.
D. Exclusion of Survey Evidence
In their opposition to Paramount’s summary judgment
motion, appellants offered into evidence the results of a con-
sumer survey taken in the vicinity of the Cheers bars at the
Cleveland and Kansas City airports. The district court refused
to admit the evidence, saying that the evidence was “not a
good survey.”
[21] As the record stood, the refusal was an abuse of discre-
tion. In trademark cases, surveys are to be admitted as long
as they are conducted according to accepted principles and are
relevant. E & J Gallo Winery, 967 F.2d at 1280; see also Pru-
dential Ins. Co. of Am. v. Gibraltar Fin. Corp., 694 F.2d
1150, 1156 (9th Cir. 1982). Challenges to survey methodol-
ogy go to the weight given the survey, not its admissibility.
Prudential Ins., 694 F.2d at 1156. However, because of the
paucity of the record, upon remand, the parties should have
the opportunity respectively to lay a foundation for the admis-
sion of the survey or to challenge the adequacy of the founda-
tion.
12366
E. Exclusion of Expert Testimony
Prior to the first appeal in this case the district court issued
a Preclusion Order barring the introduction of expert testi-
mony as a sanction against appellants’ former counsel for fail-
ure to disclose damage evidence and for being late disclosing
experts. Upon remand, the district court denied appellants’
request that it vacate its order.
The initial Preclusion Order was issued on August 9, 1993
as a sanction against appellants’ former counsel. At that time,
counsel’s failure to comply with discovery rules potentially
prejudiced Host and Paramount’s ability to prepare ade-
quately for trial. Today, that is not so. Both parties now have
ample opportunity to begin the expert disclosure procedure
anew.
Wanderer v. Johnston, 910 F.2d 652, 656 (9th Cir. 1990),
requires us to determine whether a sanction is proper under a
five-factor test analyzing: 1) the public’s interest in expedi-
tious resolution of litigation; 2) the court’s need to manage its
docket; 3) the risk of prejudice to the defendants; 4) the public
policy favoring disposition of cases on their merits; 5) the
availability of less drastic sanctions. We conclude that under
this test, the Preclusion Order is no longer proper. Less drastic
sanctions are available and the defendants are no longer preju-
diced by the actions of appellants’ former counsel. We grant
appellants’ request to vacate the Preclusion Order upon
remand. However, the district court, may, in its discretion,
impose reasonable monetary sanctions upon appellants’ for-
mer counsel for failure to comply with discovery rules.
F. Attorney’s Fees
Because we reverse the grant of summary judgment under
Cal. Civ. Code S 3344, we reverse the grant of attorney’s fees
to Host and Paramount and deny their requests for attorney’s
fees on appeal.
12367
IV. CONCLUSION
The grant of summary judgment is reversed and the case is
remanded to the district court for trial. The admission of the
survey evidence should be reconsidered at trial. The Preclu-
sion Order is vacated and appropriate sanctions other than
preclusion may be considered. The grant of attorney’s fees is
reversed.
REVERSED and REMANDED.
12368
http://www.ca9.uscourts.gov/ca9/newopinions.nsf/04485f8dcbd4e1ea882569520074e698/38e97db86b8c25c58825695800725cb9?OpenDocument
Supreme Court says Norm and Cliff can sue over robots
October 2, 2000
Web posted at: 10:43 AM EDT (1443 GMT)
WASHINGTON (AP) — The Supreme Court refused to derail a lawsuit in which actors George Wendt and John Ratzenberger, who portrayed endearing barflies “Norm” and “Cliff” in the “Cheers” television comedy, say two robots stole their old act.
The justices, acting without comment on Monday, rejected an appeal in which Paramount Pictures Corp. and Host International Inc. sought to squelch the right-of-publicity case.
Paramount produced the popular “Cheers” show, which ran on network television from 1982 to 1993 and continues to run in syndication.
Set in a friendly neighborhood bar in Boston — the kind of place where “everybody knows your name” — the show featured, among others, Wendt as the fat and often-unemployed Norm Peterson and Ratzenberger as nerdy mailman Cliff Clavin, the bar’s know-it-all windbag.
Paramount, which owns the copyright and trademark in “Cheers” and all its characters, granted Host International a license to set up bars in airports throughout the world using the same decor and theme as the TV show’s tavern.
The decor of several of the bars includes two life-size, robotic customers named “Hank” and “Bob” who are programmed to move and engage in humorous banter whenever customers sit close by. One of the robots is quite heavy; the other wears a Postal Service uniform.
Wendt and Ratzenberger sued Host, contending that its use of the two robotic figures violated their rights of publicity.
Linked to an individual’s privacy rights, the right of publicity gives people exclusive control over the use of their likeness or voice for profit.
A federal trial judge in California twice threw out the lawsuit, ruling that Paramount’s copyright ownership entitled it to create “derivative works” based on the Cheers show. The judge also ruled that the two robots did not even look much like “Norm” and “Cliff.”
The 9th U.S. Circuit Court of Appeals twice reinstated the lawsuit, ruling most recently in 1997 that California’s right-of-publicity law was not necessarily trumped by federal copyright law. And the appeals court said a jury should decide whether the robots resemble the Wendt and Ratzenberger in their character portrayals.
In the appeal acted on Monday, lawyers for Paramount and Host argued that the appeals court ruling lets state law swallow federal copyright law. The case is Paramount Pictures v. Wendt
http://www.cnn.com/2000/LAW/scotus/10/02/scotus.cheers.ap/