Carson v.Here’s Johnny Portable Toilets,Inc.
698 F.2d 831 (6th Cir.1983)
BAILEY BROWN,J.
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 [CBS].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.,as 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 “The Tonight Show.” He indicated that he couple 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 corporation 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,which served as its finding 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.
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.The confusion in this area of the law requires a brief analysis of the relationship between these two rights.
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.,(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.”
The district court dismissed appellants’ claim based on the right of publicity because Appellee does not use Carson’s name or likeness.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.” We believe that,on the contrary,the district court’s conception of the right of publicity is too narrow.The right of publicity,as we have stated,is that a celebrity has a protected pecuniary interest in the commercial exploitation of his identity.If the celebrity’s identity is commercially exploited,there has been an invasion of his right whether or not his “name or likeness” is used.Carson’s identity may be exploited even if his name,John W.Carson,or his picture is not used.(https://www.daowen.com)
In Motschenbacher v.R.J.Reynolds Tobacco Co.,498 F.2d 821 (9th Cir.1974),the court held that the unauthorized use of a picture of a distinctive race car of a well known professional race car driver,whose name or likeness were not used,violated his right of publicity.In this connection,the court said:
We turn now to the question of “identifiability.” Clearly,if the district court correctly determined as matter of law that plaintiff is not identifiable in the commercial,then in no sense has plaintiff’s identity been misappropriated nor his interest violated.Having viewed a film of the commercial,we agree with the district court that the “likeness” of plaintiff is itself unrecognizable;however,the court’s further conclusion of law to the effect that the driver is not identifiable as plaintiff is erroneous in that it wholly fails to attribute proper significance to the distinctive decorations appearing on the car.As pointed out earlier,these markings were not only peculiar to the plaintiff’s car but they caused some persons to think the car in question was plaintiff’s and to infer that the person driving the car was the plaintiff.
In Ali v.Playgirl,Inc. (1978),Muhammad Ali,former heavyweight champion,sued Playgirl magazine under the New York “right of privacy” statute and also alleged a violation of his common law right of publicity.The magazine published a drawing of a nude,black male sitting on a stool in a corner of a boxing ring with hands taped and arms outstretched on the ropes.The district court concluded that Ali’s right of publicity was invaded because the drawing sufficiently identified him in spite of the fact that the drawing was captioned “Mystery Man.”The district court found that the identification of Ali was made certain because of an accompanying verse that identified the figure as “The Greatest.” The district court took judicial notice of the fact that “Ali has regularly claimed that appella-tion for himself.”
In Hirsch v.S.C.Johnson & Son,Inc. (1979),the court held that use by defendant of the name “Crazylegs” on a shaving gel for women violated plaintiff’s right of publicity.Plaintiff,Elroy Hirsch,a famous football player,had been known by this nickname.The court said:
The fact that the name,“Crazylegs,” used by Johnson was a nickname rather than Hirsch’s actual name does not preclude a cause of action.All that is required is that the name clearly identify the wronged person.In the instant case,it is not disputed at this juncture of the case that the nickname identified the plaintiff Hirsch.It is argued that there were others who were known by the same name.This,however,does not vitiate the existence of a cause of action.It may,however,if sufficient proof were adduced,affect the quantum of damages should the jury impose liability or it might preclude liability altogether.Prosser points out “that a stage or other fictitious name can be so identified with the plaintiff that he is entitled to protection against its use.” 49 Cal.L.Rev.He writes that it would be absurd to say that Samuel L.Clemens would have a cause of action if that name had been used in advertising,but he would not have one for the use of “Mark Twain.” If a fictitious name is used in a context which tends to indicate that the name is that of the plaintiff,the factual case for identity is strengthened.
In this case,Earl Braxton,president and owner of Here’s Johnny Portable Toilets,Inc.,admitted that he knew that the phrase “Here’s Johnny” had been used for years to introduce Carson.Moreover,in the opening statement in the district court,appellee’s counsel stated:
Now,we’ve stipulated in this case that the public tends to associate the words “Johnny Carson,” the words “Here’s Johnny” with plaintiff,John Carson and,Mr.Braxton,in his deposition,admitted that he knew that and probably absent that identification,he would not have chosen it.
That the “Here’s Johnny” name was selected by Braxton because of its identification with Carson was the clear inference from Braxton’s testimony irrespective of such admission in the opening statement.
We therefore conclude that,applying the correct legal standards,appellants are entitled to judgment.The proof showed without question that Appellee had appropriated Carson’s identity in connection with its corporate name and its product.
It should be obvious … that a celebrity’s identity may be appropriated in various ways.It is our view that,under the existing authorities,a celebrity’s legal right of publicity is invaded whenever his identity is intentionally appropriated for commercial purposes….It is not fatal to appellant’s claim that Appellee did not use his “name.” indeed,there would have been no violation of his right of publicity even if Appellee had used his name,such as “J.William Carson Portable Toilet” or the John William Carson Portable Toilet” or the “J.W.Carson Portable Toilet.” The reason is that,though literally using appellant’s “name,” the appellee would not have appropriated Carson’s identity as a celebrity.Here there was an appropriation of Carson’s identity without using his “name.”