William M. Sonny Landham v. Lewis Galoob Toys, Inc. Twentieth Century Fox Film Corporation

Citations: 227 F.3d 619; 56 U.S.P.Q. 2d (BNA) 1294; 28 Media L. Rep. (BNA) 2328; 2000 U.S. App. LEXIS 23386; 2000 WL 1335546Docket: 99-5959

Court: Court of Appeals for the Sixth Circuit; September 18, 2000; Federal Appellate Court

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William "Sonny" Landham filed a lawsuit against Galoob Toys, Inc. and Twentieth Century Fox Film Corp., claiming violations of his right of publicity under Kentucky law and false endorsement under the federal Lanham Act. This arose from Galoob's marketing of a "Billy" action figure based on the character Landham portrayed in the 1987 film Predator. The district court granted summary judgment for the defendants, concluding Landham did not demonstrate a public identity sufficient to support his claims and failed to establish a Lanham Act violation. 

Landham, a fringe actor with roles in various films, had a contractual understanding with Fox regarding payment and a bodyguard but disputed the terms related to merchandising rights, which Fox claimed were assigned to them in an unsigned agreement. The action figure in question was designed to lack personal resemblance to Landham, as it was only 1.5 inches tall and purposefully avoided features resembling him. The court found no evidence that consumers would associate the toy with Landham, leading to its ruling in favor of the defendants. 

The appellate court reviewed the summary judgment de novo, affirming the lower court’s decision based on the lack of genuine issues of material fact.

To succeed in opposing a motion for summary judgment, the non-movant must present adequate evidence to establish a genuine issue of material fact, as defined in Klepper v. First Am. Bank and Celotex Corp. v. Catrett. A mere scintilla of evidence is insufficient; there must be sufficient evidence for a jury to reasonably favor the non-movant. Summary judgment is warranted when a party fails to demonstrate an essential element of their case for which they bear the burden of proof.

The right of publicity, rooted in state common law and statutes, evolved from the common-law right of privacy. The Supreme Court has affirmed its alignment with federal intellectual property laws and the First Amendment. Kentucky recognizes this right, which protects individuals from commercial exploitation of their name and likeness, as codified in Ky. Rev. Stat. 391.170(1). Due to the rarity of case law regarding this right, courts often consider the broader body of case law across jurisdictions.

Regarding copyright preemption, the objection raised by Galoob against Landham's claim suggests that it is preempted by the federal Copyright Act due to its involvement with a copyrighted work, specifically "Predator." However, such a broad interpretation would undermine state law rights of publicity. Section 301 of the Copyright Act specifies its preemptive scope but also clarifies that it does not annul state rights concerning matters outside the copyright's subject matter or activities that do not equate to exclusive copyright rights.

State laws may be preempted by the Copyright Act if they establish rights that conflict with the five exclusive rights afforded to copyright owners: reproduction, derivation, distribution, public performance, and public display, as outlined in 17 U.S.C. § 106. Such preemption occurs if state laws undermine the Copyright Act's goal of providing a uniform system for protecting original expression. However, Landham's claim is not preempted, as the Supreme Court has indicated that rights of publicity can coexist with copyright protections. If a plaintiff alleges an invasion of personal rights distinct from copyright, the claim remains viable.

Landham's claim focuses on the evocation of his personal identity through a toy, which he argues affects him emotionally and financially. This claim is separate from copyright protections, as established in cases such as Wendt v. Host International, Inc., which affirms that a right of publicity asserting identity is not preempted by copyright law. Fox's argument that the terms of an unsigned merchandising agreement should be enforced against Landham is undermined by insufficient evidence of assent, as Landham's mere presence and actions do not constitute agreement to the terms.

The right of publicity allows individuals, especially celebrities, to control the commercial value of their identity. While national celebrity status is not a prerequisite for asserting this right, a plaintiff must show that their identity possesses commercial value in relation to a specific item. Misappropriation of identity by the defendant can serve as evidence of this commercial value.

To succeed in a claim regarding the commercial exploitation of identity, Landham must demonstrate that a merchant would gain significant commercial value by associating an article of commerce with him, which he failed to do in the district court. On appeal, Landham contends that Galoob’s use of his identity by naming a toy "Billy" is sufficient evidence of commercial value, although this assumes Galoob effectively evokes Landham's identity in the public's perception. The legal framework for the right of publicity has evolved from protecting a celebrity's name and likeness to covering any aspect that suggests the individual’s identity, as established in Kentucky law and supported by various case precedents. Notably, exploitation of a celebrity's identity can occur without the direct use of their name or likeness. Courts have recognized that the identity of fictional characters can sometimes overlap with the identity of the actors portraying them, allowing actors to challenge exploitations that evoke their personal identities. However, courts are cautious in distinguishing between a character's identity and an actor's, typically siding with plaintiffs only when the public perceives the two as inseparable.

The legal analysis focuses on the criteria for determining a right of publicity, emphasizing that the analysis should center on the actor's persona rather than the fictional characters they portray. In Wendt, the court considered whether robots resembling the plaintiffs evoked their identities, while Motschenbacher explored viewer perceptions of a race car ad linked to the plaintiff. A significant case referenced is White v. Samsung Electronics America, where the court ruled that a robot, though not resembling Vanna White, evoked her identity through distinctive elements like her clothing and the game show setting. Dissenting opinions argued that the connection was overly broad, asserting that it was the game show setting—not the robot—that triggered the association with White. The dissenters warned against granting excessive rights that could blur the lines between publicity rights and First Amendment protections. The document concludes by stating that the current case does not warrant extending the principles from White, due to factual differences and the need for proof of significant commercial value and identifiability, reinforcing the balance between publicity rights and intellectual property laws.

Landham lacks an exclusive right to his identity based on his professional activities, as established in White, and has not proven that his persona has "significant commercial value" or that the "Billy" toy is linked to him rather than the fictional character. Consequently, the court affirms the district court's summary judgment in favor of the defendants. 

In terms of the federal Lanham Act, Landham's claim is analogous to a false association or endorsement claim, with the key question being whether the public would believe that Landham endorsed the toy. An eight-factor test for likelihood of confusion is applied, encompassing aspects such as the strength of the mark, relatedness of goods, similarity of marks, and others, but these factors serve only as guidelines without requiring a majority to support a claim. 

Landham argues that the district court erred by applying a stricter standard from the Ninth Circuit, which mandates that most factors favor the plaintiff. While the court acknowledged issues with the district court's emphasis on actual confusion, these errors do not necessitate reversal unless they impact the ultimate decision on likelihood of confusion. The district court correctly found that Landham failed to provide evidence of his name recognition among children and concluded that his mark lacked strength in the toy-buying public. Although some factors favored Landham, the overall analysis did not support a claim of confusion regarding endorsement of the "Billy" toy. Thus, Landham's Lanham Act claim is also denied, leading to the affirmation of the district court's judgment.