Wendt V. Host Essay, Research Paper
US Court of Appeals for the Ninth Circuit
Case Name:WENDT V HOST INTERNATIONAL
Case Number: Date Filed:
96-55243 12/28/99
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
Delaware corporation, D.C. No.
Defendant-Appellee, CV-93-00142-R
and ORDER
PARAMOUNT PICTURES,
CORPORATION, a Delaware
corporation,
Defendant-Intervenor.
Filed December 28, 1999
Before: Betty B. Fletcher and Stephen S. Trott,
Circuit Judges, and Bruce S. Jenkins,1 District Judge.
Order; Dissent by Judge Kozinski
_________________________________________________________________
ORDER
The panel has voted to deny the petition for rehearing.
Judge Trott voted to reject the petition for rehearing en banc
and Judges B. Fletcher and Jenkins so recommend.
The full court was advised of the petition for rehearing en
_________________________________________________________________
1 Honorable Bruce S. Jenkins, Senior United States District Judge for the
District of Utah, sitting by designation.
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banc. An active Judge requested a vote on whether to rehear
the matter en banc. The matter failed to receive a majority of
the votes in favor of en banc consideration. Fed. R. App. P.
35.
The petition for rehearing is denied and the petition for
rehearing en banc is rejected.
_________________________________________________________________
KOZINSKI, Circuit Judge, with whom Judges KLEINFELD
and TASHIMA join, dissenting from the order rejecting the
suggestion for rehearing en banc:
Robots again. In White v. Samsung Elecs. Am., Inc., 971
F.2d 1395, 1399 (9th Cir. 1992), we held that the right of pub-
licity extends not just to the name, likeness, voice and signa-
ture of a famous person, but to anything at all that evokes that
person’s identity. The plaintiff there was Vanna White, Wheel
of Fortune letter-turner extraordinaire; the offending robot
stood next to a letter board, decked out in a blonde wig,
Vanna-style gown and garish jewelry. Dissenting from our
failure to take the case en banc, I argued that our broad appli-
cation of the right of publicity put state law on a collision
course with the federal rights of the copyright holder. See 989
F.2d 1512, 1517-18 (9th Cir. 1993).
The conflict in White was hypothetical, since the defendant
(Samsung) did not have a license from the Wheel of Fortune
copyright holder. Here it is concrete: The panel holds that
licensed animatronic figures based on the copyrighted Cheers
characters Norm and Cliff infringe on the rights of the actors
who portrayed them. As I predicted, White’s voracious logic
swallows up rights conferred by Congress under the Copy-
14902
right Act.
I
Though a bit dated now, Cheers remains near and dear to
the hearts of many TV viewers. Set in a friendly neighbor-
hood bar in Boston, the show revolved around a familiar
scene. Sam, the owner and bartender, entertained the boys
with tales of his glory days pitching for the Red Sox. Coach
piped in with sincere, obtuse advice. Diane and Frasier chat-
tered self-importantly about Lord Byron. Carla terrorized
patrons with acerbic comments. And there were Norm and
Cliff, the two characters at issue here. Norm, a fat, endearing,
oft-unemployed1 accountant, parked himself at the corner of
the bar, where he was joined by Cliff, a dweebish 2 mailman
and something of a know-it-all windbag.3 After eleven years
on the air, the gang at Cheers became like family to many
fans, ensuring many more years in syndication. See Gebe
Martinez, “Cheers” Fans Cry in Their Beers as Sitcom Ends
Long Run, L.A. Times, May 21, 1993, at B1.
Defendant Host International decided to tap into this keg of
goodwill. After securing a license from Paramount, the copy-
right holder, Host opened a line of Cheers airport bars. To
help get patrons into a Cheers mood, Host populated the bars
with animatronic figures4 resembling Norm and Cliff: One is
fat; the other is dressed as a mailman.5
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1 Sam: “Hey, what’s happening, Norm?”
Norm: “Well, it’s a dog-eat-dog world, and I’m wearing Milk
Bone underwear.”
2 “There’s no rule against postal workers not dating women. It just
works out that way.”
3 “It’s a little known fact that the tan became popular in what is known
as the Bronze Age.”
4 As best the record discloses, these are life-size stuffed dolls that move
somewhat and play pre-recorded quips.
5 In a half-hearted attempt to avoid litigation, Host changed the robots’
names to “Hank” and “Bob.”
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Plaintiffs George Wendt and John Ratzenberger, the only
actors who ever portrayed Norm and Cliff, sued Host for
unfair competition and violation of their right of publicity.
Paramount intervened, claiming that its copyright preempted
any claim Wendt and Ratzenberger might have under state
law. The district court granted summary judgment for the
defendants because it found that the robots didn’t look like the
plaintiffs: “[T]here is [no] 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.” 125 F.3d
at 809. Relying on White, the panel here reverses but offers
little explanation beyond the curt assertion that “material facts
exist that might cause a reasonable jury to find[the robots]
sufficiently `like’ [Wendt and Ratzenberger ] to violate” their
right of publicity. Id. at 810.
II
This case, unlike White, pits actor against copyright holder.
The parties are fighting over the same bundle of intellectual
property rights–the right to make dramatic representations of
the characters Norm and Cliff. Host and Paramount as sert
their right under the Copyright Act to present the Cheers char-
acters in airport bars; Wendt and Ratzenberger assert their
right under California law to control the exploitation of their
likenesses. But to millions of viewers, Wendt and Ratzenber-
ger are Norm and Cliff; it’s impossible to exploit the latter
without also evoking thoughts about the former.
So who wins? The Copyright Act makes it simple, at least
insofar as the plaintiffs interfere with Paramount’s right to ex-
ploit the Cheers characters. Section 301 of the Copyright Act
preempts any state law “legal or equitable rights that are
equivalent to any of the exclusive rights within the general
scope of copyright[.]” 17 U.S.C. S 301(a). The copyright to
Cheers carries with it the right to make derivative works
based on its characters. See generally Warner Bros., Inc. v.
American Broadcasting Cos., 720 F.2d 231, 235 (2d Cir.
14904
1983) (Superman copyright belongs to Warner Brothers). The
presentation of the robots in the Cheers bars is a derivative
work, just like a TV clip, promotion, photograph, poster,
sequel or dramatic rendering of an episode. Thus, under fed-
eral law, Host has the unconditional right to present robots
that resemble Norm and Cliff.
Instead, the panel allows the plaintiffs to pick up where
Vanna left off: Copyright or no copyright, anyone who wants
to use a figure, statue, robot, drawing or poster that reminds
the public of Wendt and Ratzenberger must first obtain (and
pay for) their consent. This cannot be squared with the right
of the copyright holder to recreate Norm and Cliff however it
sees fit. At the very least, Paramount must be able to repro-
duce the characteristics that bring Norm and Cliff to mind.
The problem lies with the sweeping standard we adopted in
White. The right of publicity, as defined by the state courts,
is limited to using a celebrity’s name, voice, face or signature.
See, e.g., Stephano v. News Group Publications, Inc., 474
N.E.2d 580, 583-84 (N.Y. 1984) (finding right of publicity
under New York law limited to statutory protection of “name,
portrait or picture”); Lugosi v. Universal Pictures, 25 Cal. 3d
813, 828 (1979) (Mosk, J., concurring) (”If Bela Lugosi were
alive today, he would be unable to claim an invasion of his
right to privacy for Universal’s exploitation . . . of products
created in the image of Count Dracula, a role Lugosi
played.”). A copyright holder can generally avoid using any
of these tangible elements in exploiting its copyright. White
exploded the right of publicity to include anything that brings
the celebrity to mind. See White, 971 F.2d at 1399. It’s inevi-
table that so broad and ill-defined a property right will trench
on the rights of the copyright holder. According to the panel,
Paramount and Host may not use Norm and Cliff in a way
that reminds people of the actors who played them and whose
identity is therefore fused in the public mind. This is a daunt-
ing burden. Can Warner Brothers exploit Rhett Butler without
also reminding people of Clark Gable? Can Paramount cast
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Shelley Long in The Brady Bunch Movie without creating a
triable issue of fact as to whether it is treading on Florence
Henderson’s right of publicity? How about Dracula and Bela
Lugosi? Ripley and Sigourney Weaver? Kramer and Michael
Richards?
When portraying a character who was portrayed by an
actor, it is impossible to recreate the character without evok-
ing the image of the actor in the minds of viewers. Suppose
the Seinfeld minions create a spin-off called Kramer. One of
the Seinfeld characters was Newman, a fat mailman. Suppose
Wayne Knight–the actor who played Newman–won’t do
Kramer. So Kramer brings in someone else to play Newman,
a corpulent actor who (when dressed as a mailman) reminds
people of Wayne Knight. What happens when Knight sues?
Under White and the panel decision here, Knight can go to
trial on a claim that the new Newman evokes his (Knight’s)
identity, even though Castle Rock owns the rights to make de-
rivative works based on Seinfeld. It would be no defense that
everyone knows the new actor is not Wayne Knight; no one,
after all, thinks the robots here or in White were, in fact,
Wendt, Ratzenberger or White. So long as the casting director
comes up with a new Newman who reminds the public of the
old Newman (i.e. Knight), Knight has a right-of-publicity
claim that will at least survive summary judgment. Under the
unbounded right of publicity announced in White , copyright
holders will seldom be able to avoid trial when sued for
infringement of the right to publicity. Remember Vanna:
Even though the robot looked nothing like her, a jury awarded
her $400,000. See Vanna White Wins Suit, Wall St. J., Jan.
24, 1994, at B2.6
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6 To avoid going to trial in such a situation, producers will have to cast
new actors who look and sound very different from the old ones. A
Seinfeld spin-off thus ends up in a bizarro world where a skinny Newman
sits down to coffee with a svelte George, a stocky Kramer, a fat Jerry and
a lanky blonde Elaine. Not only is goodwill associated with the old show
lost, the artistic freedom of the screenwriters and producers is severely
cramped.
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III
The panel’s refusal to recognize copyright preemption puts
us in conflict with the Seventh Circuit in Baltimore Orioles,
Inc. v. Major League Baseball Players Ass’n , 805 F.2d 663
(7th Cir. 1986). Baltimore Orioles held that the baseball clubs
–not the players–own the rights to baseball telecasts under
copyright law, and the players can’t use their state law right
of publicity to veto the telecast of their performance. This was
so even though the telecast (obviously) used the players’ iden-
tities and likenesses.
The Seventh Circuit acknowledged that the state law right
of publicity gave the players a property interest in their actual
performances, see Zacchini v. Scripps-Howard Broadcasting
Co., 433 U.S. 562 (1977), but held that this right could not
trump the Clubs’ right under the Copyright Act to control the
telecast. See 805 F.2d at 678-79. The Seventh Circuit recog-
nized, as the panel here does not, that the players and the
clubs were fighting over the same bundle of intellectual prop-
erty rights:
In this litigation, the Players have attempted to
obtain ex post what they did not negotiate ex ante.
That is to say, they seek a judicial declaration that
they possess a right–the right to control the tele-
casts of major league baseball games–that they
could not procure in bargaining with the Clubs.
Id. at 679. The clubs owned both the right to sell tickets to see
the games and the copyright to the telecast. The copyright
preempted whatever state law rights the players claimed, at
least insofar as state law would prevent ordinary use of the
copyrighted work. See also Fleet v. CBS, Inc., 50 Cal. App.
4th 1911, 1920-21 (1996). The same reasoning applies here:
The plaintiffs’ right to control the use of their likeness is pre-
empted by Paramount’s right to exploit the Norm and Cliff
characters however it sees fit. If Wendt and Ratzenberger
14907
wanted to control how the Cheers characters were portrayed
after they left the show, they should have negotiated for it
beforehand.7
IV
Coming home to roost is yet another problem I warned
about in White–that a broad reading of the state right of pub-
licity runs afoul of the dormant Copyright Clause, which pre-
empts state intellectual property laws to the extent they
“prejudice the interests of other States.” Goldstein v. Califor-
nia, 412 U.S. 546, 558 (1973). Just as a state law regulating
the length of trucks is invalid under the dormant Commerce
Clause if it poses an undue burden on interstate commerce,
see Kassel v. Consolidated Freightways Corp. , 450 U.S. 662,
674 (1981), so California’s right of publicity law is invalid if
it substantially interferes with federal copyright law, even ab-
sent preemptive legislation.
A copyright licensee must be able to exercise rights which
are inherently federal in nature without worrying that 50 sepa-
rate states will burden those rights. This is most obviously
true when state law restricts the display of derivative works
outside the borders of its state. Compare Goldstein, 412 U.S.
at 558. Yet that is exactly what the panel approves here:
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7 The Seventh Circuit is not alone in recognizing the need to limit the
right of publicity. See, e.g., Allison v. Vintage Sports Plaques, 136 F.3d
1443, 1447-49 (11th Cir. 1998) (recognizing first sale doctrine as limiting
right of publicity). Scholars, too, have soundly rejected White. See Arlen
W. Langvardt, The Troubling Implications of a Right of Publicity “Wheel”
Spun Out of Control, 45 U. Kan. L. Rev. 329 (1997); Stephen R. Barnett,
First Amendment Limits on the Right of Publicity, 30 Tort & Ins. L.J. 635
(1995); Steven C. Clay, Starstruck: The Overextension of Celebrity
Publicity Rights in State and Federal Courts, 79 Minn. L. Rev. 485
(1994); Jeff Sanders, By Force of Persona: How the Right of Publicity
Undermines the First Amendment, 28 Beverly Hills B. Ass’n J. 13 (1994).
Even our treatment of Wendt and Ratzenberger’s claim has already been
criticized. See Felix H. Kent, Right of Privacy and of Publicity, N.Y.L.J.,
Dec. 19, 1997, at 3; Recent Case, 17 No. 4 Ent. L. Rep. 17 (1995).
14908
Plaintiffs are using California law to stop Host from display-
ing a copyrighted work in Kansas City and Cleveland. Why
California should set the national standard for what is a per-
missible use of a licensed derivative work is beyond me.
Rather than construe the right of publicity narrowly to avoid
this constitutional conundrum, see Crowell v. Benson, 285
U.S. 22, 62 (1932), the panel compounds White ’s errors by
enforcing California’s right of publicity way beyond Califor-
nia’s borders.
V
The First Amendment concerns raised by White are even
more pressing here. White was an advertisement and therefore