Carson v. Here's Johnny Portable Toilets, Inc.

Decision Date01 February 1983
Docket NumberNo. 80-1720,80-1720
Parties, 9 Media L. Rep. 1153 John W. CARSON, d/b/a Johnny Carson, an individual, and Johnny Carson Apparel, Inc., a corporation, Plaintiffs-Appellants, v. HERE'S JOHNNY PORTABLE TOILETS, INC., a corporation, Defendant-Appellee.
CourtU.S. Court of Appeals — Sixth Circuit

Robert M. Newbury (argued), Pattishall, McAuliffe & Hofstetter, Chicago, Ill., James W. Goss, Miller, Canfield, Paddock & Stone, Birmingham, Mich., for plaintiffs-appellants.

Allen M. Krass (argued), Krass & Young, Troy, Mich., for defendant-appellee.

Before KENNEDY, Circuit Judge, BROWN * and SWYGERT ** Senior Circuit Judges.

BAILEY BROWN, Senior Circuit Judge.

This case involves claims of unfair competition and invasion of the right of privacy and the right of publicity arising from appellee's adoption of a phrase generally associated with a popular entertainer.

Appellant, John W. Carson (Carson), is the host and star of "The Tonight Show," a well-known television program broadcast five nights a week by the National Broadcasting Company. Carson also appears as an entertainer in night clubs and theaters around the country. From the time he began hosting "The Tonight Show" in 1962, he has been introduced on the show each night with the phrase "Here's Johnny." This method of introduction was first used for Carson in 1957 when he hosted a daily television program for the American Broadcasting Company. The phrase "Here's Johnny" is generally associated with Carson by a substantial segment of the television viewing public. In 1967, Carson first authorized use of this phrase by an outside business venture, permitting it to be used by a chain of restaurants called "Here's Johnny Restaurants."

Appellant Johnny Carson Apparel, Inc. (Apparel), formed in 1970, manufactures and markets men's clothing to retail stores. Carson, the president of Apparel and owner of 20% of its stock, has licensed Apparel to use his name and picture, which appear on virtually all of Apparel's products and promotional material. Apparel has also used, with Carson's consent, the phrase "Here's Johnny" on labels for clothing and in advertising campaigns. In 1977, Apparel granted a license to Marcy Laboratories to use "Here's Johnny" as the name of a line of men's toiletries. The phrase "Here's Johnny" has never been registered by appellants as a trademark or service mark.

Appellee, Here's Johnny Portable Toilets, Inc., is a Michigan corporation engaged in the business of renting and selling "Here's Johnny" portable toilets. Appellee's founder was aware at the time he formed the corporation that "Here's Johnny" was the introductory slogan for Carson on "The Tonight Show." He indicated that he coupled the phrase with a second one, "The World's Foremost Commodian," to make "a good play on a phrase."

Shortly after appellee went into business in 1976, appellants brought this action alleging unfair competition, trademark infringement under federal and state law, and invasion of privacy and publicity rights. They sought damages and an injunction prohibiting appellee's further use of the phrase "Here's Johnny" as a corporate name or in connection with the sale or rental of its portable toilets.

After a bench trial, the district court issued a memorandum opinion and order, Carson v. Here's Johnny Portable Toilets, Inc., 498 F.Supp. 71 (E.D.Mich.1980), which served as its findings of fact and conclusions of law. The court ordered the dismissal of the appellants' complaint. On the unfair competition claim, the court concluded that the appellants had failed to satisfy the "likelihood of confusion" test. On the right of privacy and right of publicity theories, the court held that these rights extend only to a "name or likeness," and "Here's Johnny" did not qualify.

I.

Appellants' first claim alleges unfair competition from appellee's business activities in violation of Sec. 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (1976), and of Michigan common law. The district court correctly noted that the test for equitable relief under both Sec. 43(a) and Michigan common law is the "likelihood of confusion" standard. Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenville, Inc., 670 F.2d 642 (6th Cir.), cert. denied, --- U.S. ----, 103 S.Ct. 231, 74 L.Ed.2d 182 (1982); Wills v. Alpine Valley Ski Area, Inc., 369 Mich. 23, 118 N.W.2d 954 (1963).

In Frisch's Restaurants we approved the balancing of several factors in determining whether a likelihood of confusion exists among consumers of goods involved in a Sec. 43(a) action. In that case we examined eight factors:

1. strength of the plaintiff's mark;

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.

670 F.2d at 648. The district court applied a similar analysis. Under the two-step process adopted in Frisch's Restaurants, these eight foundational factors are factual and subject to a clearly erroneous standard of review, while the weighing of these findings on the ultimate issue of the likelihood of confusion is a question of law. 670 F.2d at 651.

The district court first found that "Here's Johnny" was not such a strong mark that its use for other goods should be entirely foreclosed. 498 F.Supp. at 74. Although the appellee had intended to capitalize on the phrase popularized by Carson, the court concluded that appellee had not intended to deceive the public into believing Carson was connected with the product. Id. at 75. The court noted that there was little evidence of actual confusion and no evidence that appellee's use of the phrase had damaged appellants. For these reasons, the court determined that appellee's use of the phrase "Here's Johnny" did not present a likelihood of confusion, mistake, or deception. Id. at 75-77.

Our review of the record indicates that none of the district court's findings is clearly erroneous. Moreover, on the basis of these findings, we agree with the district court that the appellants have failed to establish a likelihood of confusion. The general concept underlying the likelihood of confusion is that the public believe that "the mark's owner sponsored or otherwise approved the use of the trademark." Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 79 (2d Cir.1981) (emphasis added) (quoting Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 205 (2d Cir.1979)).

The facts as found by the district court do not implicate such likelihood of confusion, and we affirm the district court on this issue.

II.

The appellants also claim that the appellee's use of the phrase "Here's Johnny" violates the common law right of privacy and right of publicity. 1 The confusion in this area of the law requires a brief analysis of the relationship between these two rights.

In an influential article, Dean Prosser delineated four distinct types of the right of privacy: (1) intrusion upon one's seclusion or solitude, (2) public disclosure of embarrassing private facts, (3) publicity which places one in a false light, and (4) appropriation of one's name or likeness for the defendant's advantage. Prosser, Privacy, 48 Calif.L.Rev. 383, 389 (1960). This fourth type has become known as the "right of publicity." Factors Etc., Inc. v. Pro Arts, Inc., 579 F.2d 215, 220 (2d Cir.1978), cert. denied, 440 U.S. 908, 99 S.Ct. 1215, 59 L.Ed.2d 455 (1979); see Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 572, 97 S.Ct. 2849, 2855, 53 L.Ed.2d 965 (1977). Henceforth we will refer to Prosser's last, or fourth, category, as the "right of publicity."

Dean Prosser's analysis has been a source of some confusion in the law. His first three types of the right of privacy generally protect the right "to be let alone," while the right of publicity protects the celebrity's pecuniary interest in the commercial exploitation of his identity. Zacchini, supra, 433 U.S. at 573, 97 S.Ct. at 2856. See generally The Right of Publicity--Protection for Public Figures and Celebrities, 42 Brooklyn L.Rev. 527 (1976). Thus, the right of privacy and the right of publicity protect fundamentally different interests and must be analyzed separately.

We do not believe that Carson's claim that his right of privacy has been invaded is supported by the law or the facts. Apparently, the gist of this claim is that Carson is embarrassed by and considers it odious to be associated with the appellee's product. Clearly, the association does not appeal to Carson's sense of humor. But the facts here presented do not, it appears to us, amount to an invasion of any of the interests protected by the right of privacy. In any event, our disposition of the claim of an invasion of the right of publicity makes it unnecessary for us to accept or reject the claim of an invasion of the right of privacy.

The right of publicity has developed to protect the commercial interest of celebrities in their identities. The theory of the right is that a celebrity's identity can be valuable in the promotion of products, and the celebrity has an interest that may be protected from the unauthorized commercial exploitation of that identity. In Memphis Development Foundation v. Factors Etc., Inc., 616 F.2d 956 (6th Cir.), cert. denied, 449 U.S. 953, 101 S.Ct. 358, 66 L.Ed.2d 217 (1980), we stated: "The famous have an exclusive legal right during life to control and profit from the commercial use of their name and personality." Id. at 957.

The district court dismissed appellants' claim based on the right of publicity because appellee does not use Carson's name or likeness. 498 F.Supp. at 77. It held that it "would not be prudent to allow recovery for a right of publicity claim which does not more specifically identify Johnny Carson." 498 F.Supp. at 78. We believe...

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