Landham v. Toys

• Decision Date: 11 August 2000
• Docket Number: No. 99-5959,99-5959
• Citation: 227 F.3d 619
• Parties: (6th Cir. 2000) William M. Sonny Landham, Plaintiff-Appellant, v. Lewis Galoob Toys, Inc.; Twentieth Century Fox Film Corporation, Defendants-Appellees. Argued:
• Court: U.S. Court of Appeals — Sixth Circuit

Page 619

227 F.3d 619 (6th Cir. 2000)

William M. Sonny Landham, Plaintiff-Appellant, v. Lewis Galoob Toys, Inc.; Twentieth Century Fox Film Corporation, Defendants-Appellees.

No. 99-5959

UNITED STATES COURT OF APPEALS FOR THE SIXTH CIRCUIT

Argued: August 11, 2000

Decided and Filed: September 18, 2000

Appeal from the United States District Court for the Eastern District of Kentucky at Ashland. No. 97-00261--Henry R. Wilhoit, Jr., Chief District Judge. [Copyrighted Material Omitted] Jack Allen Wheat, Joel T. Beres, David W. Nagle, Jr., STITES & HARBISON, Louisville, Kentucky, Thomas M. Bertram, II, STANLEY & BERTRAM, Vanceburg, Kentucky, Stephen G. Wagner, WAGNER & MAYER, Louisville, Kentucky, for Appellant.

Richard E. Vimont, Bernard F. Lovely, Jr., Christopher M. Parenti, VIMONT & WILLS, Lexington, Kentucky, for Appellees.

Before: NELSON, SILER, and BATCHELDER, Circuit Judges.

OPINION

ALICE M. BATCHELDER, Circuit Judge.

William "Sonny" Landham claims that Defendants-Appellees Galoob Toys, Inc. (f/k/a/ Lewis Galoob Toys, Inc.) ("Galoob") and Twentieth Century Fox Film Corp. ("Fox") violated his Kentucky-law "right of publicity" and federal Lanham Act rights by marketing without his permission an action figure of the character he played in the movie Predator. The district court entered summary judgment in favor of Galoob and Fox, and Landham timely appealed. Because we conclude that Landham has neither demonstrated that he has a public identity sufficient to support a claim of infringement of his right of publicity nor established a claim under the Lanham Act, we affirm.

I. Background

Landham is a fringe actor who has played supporting roles in several motion pictures, including 48 Hours, Action Jackson, and Maximum Force, as well as several unrated, pornographic films. This suit concerns the role of "Billy, the Native American Tracker" that Landham portrayed in Fox's 1987 action film Predator. Landham's employment was initially memorialized in a March 3, 1986, "Standard Cast Deal Memo" ("Memo"), which detailed only the salary, starting date, and an agreement that Landham would pay for a bodyguard for himself. Fox later delivered a "Deal Player Employment Agreement" ("Agreement") which, among other things, assigned all merchandising rights for the Billy character to Fox. The Agreement was never signed, however, and there is a dispute between the parties as to how long after Landham left for filming in Mexico the Agreement was received by his agent in the United States. Landham testified that the only contractual understanding he had with Fox was that he would act in the movie for a specified amount of money and that he would be required to pay for the bodyguard. In 1995, Fox licensed to Galoob the rights to produce and market a line of its "Micro Machines" toys based on Predator. One of these three sets of toys contained a "Billy" action figure. Because the toy is only 1.5 inches tall and has no eyes or mouth, it bears no personal resemblance to Landham. Moreover, Eric Shank, the Galoob employee who designed the toy, purposefully avoided any such resemblance. Nonetheless, Landham argues that the toy violates his right of publicity under Kentucky law and amounts to a false endorsement under the Lanham Act. The district court disagreed, finding insufficient evidence to suggest that consumers would associate the toy with Landham.

II. Analysis

A. Standard of Review

We review a district court's grant of summary judgment de novo. See Allen v. Michigan Dept. of Corrections, 165 F.3d 405, 409 (6th Cir. 1999). Summary judgment is proper if "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c). When reviewing a motion for summary judgment, the evidence, all facts, and any inferences that may be drawn from the facts must be viewed in the light most favorable to the nonmoving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (citing United States v. Diebold, Inc., 369 U.S. 654, 655 (1962)). To prevail, the non-movant must show sufficient evidence to create a genuine issue of material fact. See Klepper v. First Am. Bank, 916 F.2d 337, 341-42 (6th Cir.1990) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986)). A mere scintilla of evidence is insufficient; "there must be evidence on which the jury could reasonably find for the [non-movant]." Id. (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986)). Entry of summary judgment is appropriate "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex, 477 U.S. at 322.

B. The Right of Publicity

The right of publicity is a creature of state common law and statute and originated as part of the common-law right of privacy. The Supreme Court has recognized its consistency with federal intellectual property laws and the First Amendment, see generally Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977), and Kentucky has long recognized the right of privacy, now embodied in the Restatement (Second) of Torts, § 652A, from which the publicity right emanates. See McCall v. Courier-Journal & Louisville Times Co., 623 S.W.2d 882, 887 (Ky. 1981) (citing Foster-Milburn Co. v. Chinn, 120 S.W. 364 (Ky. 1909)). Additionally, the Kentucky Legislature has recognized "that a person has property rights in his name and likeness which are entitled to protection from commercial exploitation," and has codified the "the right of publicity, which is a right of protection from appropriation of some element of an individual's personality for commercial exploitation." Ky. Rev. Stat. § 391.170(1). As case law on this right is exceedingly rare, both in Kentucky and nationwide, and because of the general constitutional policy of maintaining uniformity in intellectual property laws, see Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 162 (1989), courts typically give attention to the entire available body of case law when deciding right of publicity cases. See, e.g., Cheatham v. Paisano Publications, Inc., 891 F. Supp. 381, 385 (W.D. Ky. 1995) (looking to federal law because Kentucky has not articulated the right's specific elements).

C. Copyright Preemption

Before addressing the substance of Landham's claim, we must address Galoob's jurisdictional objection that Landham's claim is preempted by the federal Copyright Act merely because the claim involves a copyrighted work--in this case, Predator. If this were true, however, state-law rights of publicity would virtually cease to exist. Section 301 of the Copyright Act provides the extent of the Act's express preemptive force:

(a) [A]ll legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether [...] published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

(b) Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to--

(1) subject matter that does not come within the subject matter of copyright as specified by sections 102 and 103, including works of authorship not fixed in any tangible medium of expression; or [...]

(3) activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106.

17 U.S.C. § 301. State laws may also be impliedly preempted by the Copyright Act if they create rights that could be violated by the exercise of one of the five "exclusive [federal] rights" granted to copyright owners--reproduction, derivation, distribution, public performance, and public display, see 17 U.S.C. § 106--or if they otherwise undermine the Copyright Act's fundamental purpose of providing a uniform system for protecting original expression for the benefit of society at large. See Bonito Boats, 489 U.S. at 165-66; Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 478-79 (1974).

Landham's claim is not preempted by the Copyright Act. The Supreme Court has recognized that rights of publicity are generally consistent with the Copyright Act. See Zacchini, 433 U.S. at 577; see also Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1099-1100 (9th Cir. 1992) (citing Bonito Boats and Zacchini). As long as a plaintiff states a claim of invasion of personal, state-law rights that are distinct from copyright protections, the claim will not be preempted. See Wendt v. Host Int'l, Inc., 125 F.3d 806, 810 (9th Cir. 1997). Unlike the baseball player-plaintiffs in Baltimore Orioles, Inc. v. Major League Baseball Players Assoc., 805 F.2d 663 (7th Cir. 1986), Landham is not claiming the right of publicity in order to gain rights in the telecast of his performance, or to contest Fox's right to create derivative works from its copyrighted work in general. Rather, he claims that the toy evokes his personal identity--an inchoate "idea" which is not amenable to copyright protection--to his emotional and financial detriment. Regardless of the merits of this claim, it does assert a right separate from those protected by the Copyright Act. See Wendt, 125 F.3d at 809 (claim that animatronic robots "look like" plaintiff and thereby evoke his identity in violation of his right of publicity is not preempted); cf. Midler v. Ford Motor Co., 849 F.2d 460, 462 (9th Cir. 1988) (distinctive sound of...