Bi-Rite Enters.,Inc.v.Button Master
555 F.Supp.1188 (S.D.N.Y.1983)
SOFAER,J.
The plaintiffs in this case raise an array of claims aimed at protecting the commercial value of well-known trademarks on buttons.In recent years a major market has developed for the sale of novelty items bearing the likeness,logos,trademarks,service marks and names (hereinafter the “marks”) of popular recording artists.These novelty items are sold outside concert halls,on the streets,and in shops.Some who sell these items are licensed to do so by the persons or groups whose marks the items bear.Many sellers are not licensed,however,and the recent increased commercial significance of this novelty market has led owners and licensees of well-known marks to seek to control their exploitation.
Plaintiff Bi-Rite Enterprises (“Bi-Rite”) is a manufacturer and distributor of posters,buttons,patches,bumper stickers and other novelty items bearing the marks of popular rock music groups.It sues both as the authorized licensee of various rock artists,some of whom are also joined as plaintiffs,and as a direct competitor seeking to prevent defendants from engaging in illegal and unfair competition.The plaintiffs also include several rock groups – Judas Priest,Molly Hatchett,Devo,Styx,and Iron Maiden – their individual members,and two solo performers,Neil Young and Pat Benatar (hereinafter collectively “the Performers”).These Performers have sued as trademark owners.Defendants are all manufacturers and/or distributors of buttons and other novelty items bearing among other things the marks of the plaintiff Performers and other rock groups.
Plaintiffs claim that defendants’ unlicensed sales of buttons bearing logos and likenesses the plaintiffs own or control constitute trademark infringement and unfair competition under the common law,the New York General Business Law§ 368-d (McKinney 1968),and § 43(a) of the Lanham Act,15 U.S.C.§ 1125(a)(1976).The Performers and Bi-Rite all assert that defendants are using marks which only the performers and/or Bi-Rite are authorized to use.In addition,however,Bi-Rite seeks to enjoin defendants from distributing any buttons bearing marks for which defendants have no license or authorization,even though Bi-Rite has no license to use or police the marks at issue.Bi-Rite argues that in the button industry retail success depends upon the number of different,desirable buttons offered to the consumer.Unethical distributors who offer the most inclusive line of buttons therefore gain a competitive advantage in the market over dealers such as Bi-Rite,which are penalized and damaged by their own ethical practice of distributing buttons only of those groups for which they have licenses.Plaintiffs also claim defendants have violated their statutory right to privacy under New York Civil Rights Law § 51,and their common law right of publicity.They argue that the undisputed facts establish all their common-law and statutory rights and therefore move for summary judgment on all claims.
IV.Rights of Privacy and Publicity
Plaintiffs raised their privacy and publicity claims under New York law.None of the defendants contests this choice of law.But recent Second Circuit decisions compel this Court,sua sponte,to “apply the substantive law of the state to which the forum state,New York,would have turned had the suit been filed in state court.” “[A] New York Court,considering a right of publicity case,would apply its property choice-of-law rules to select the state whose law determines whether a plaintiff has a protectible right of publicity.” In considering the privacy claim,a New York court would apply its choice-of-law rules for torts.Property choice-of-law rules focus on the situs of the property,while tort rules requires a“grouping of contacts” approach;in both instances the law of the states in which plaintiffs or their exclusive licensees reside controls.
[The court mentioned various states in which plaintiffs reside].
Plaintiffs have failed to state a privacy cause of action under any relevant source of law.The New York privacy statute on which they incorrectly rely allows“[a]ny person whose name,portrait or picture is used within this state for adverti-s ing purposes or for purposes of trade without written consent [to] … maintain an equitable action … [or to] sue and recover damages ….” New York Civil Rights Law § 51.California has a similar privacy statute which reads,“Any person who knowingly uses another’s name,photograph or likeness,in any manner,for purposes of advertising … or for purposes of solicitation of purchases of products …without … prior consent … shall be liable for any damages….” Cal.Civ.Code §3344 (West 1975).Neither Illinois nor Georgia has such a statutory provision,but both recognize a common law right of privacy which supplies the basis for four independent torts: 1) intrusion upon the plaintiff’s seclusion;2) public disclosure of embarrassing private facts,3) publicity that places plaintiff in a false light;and 4) appropriation,for the defendant’s advantage,of plaintiff’s name or likeness.
New York’s Section 51 protects a person’s feelings and right to be let alone,interests also protected in California,Illinois,and Georgia.Relief is available under the applicable privacy law only for acts that invade plaintiffs’ privacy and consequently bruise their feelings.Chief Justice Bird’s analysis of the California statute in Lugosi v.Universal Pictures,25 Cal.3d 813 (1979) (Bird,C.J.,dissenting),makes clear that its primary purpose,like that of common law privacy,is to protect the feelings and privacy of the “little man.”
Plaintiffs’ claims fail under this standard,for as public figures,with their likenesses,names and images already in the public domain,they have waived their rights to claim intrusions into their common law privacy rights.Moreover,they cannot demonstrate harm to their feelings justifying legal action.Likewise,plaintiffs,as public figures,probably lose their rights to claim injury under the California statute.Bi-Right’s privacy claim must also be dismissed,since it cannot assert an interest in the nonassignable and personal privacy rights of its licensors.
Plaintiffs fare better under the so-called “right of publicity,” a tort derived from the appropriation branch of their right to privacy.That right,recognized in all three states,grants a person an exclusive right to control the commercial value of his name and likeness and to prevent others from exploiting that value without permission.It prevents unjust enrichment by providing a remedy against exploitation of the goodwill and reputation that a person develops in his name or likeness through the investment of time,effort,and money.
Judge Werker of this Court recently outlined a three-part test for right of publicity claims:
An individual claiming a violation of his right to publicity must show: (1) that his name o likeness has publicity value;(2) that he himself has “exploited” his name or likeness by acting “in such a way as to evidence his … own recognition of the extrinsic commercialvalue of his … name of likeness,and manifested that recognition in some overt manner”;and (3) that defendant has appropriated this right of publicity,without consent,for advertising purposes or for the purposes of trade.(https://www.daowen.com)
Lerman v.Chuckleberry Publishing,Inc.,521 F.Supp.228 (S.D.N.Y.1981).
The Second Circuit apparently defines the right of publicity more expansively than do Illinois and California courts.But the three-part test in Lerman is consistent with the manner in which these courts have construed the right.The Georgia courts apply a more relaxed standard than does the Second Circuit and would not require that the holder have exploited the right.
The plaintiff Performers have satisfied this three-part test.The Performers’names have financial value;they are all celebrities who have won gold or platinum records.This celebrity status carries publicity value in the market that exists for exploiting names,faces and reputations of celebrities.Moreover,the Performers have actively cultivated the popularity of their names and music in an aggressively competitive recording market.Finally,defendants admit to their unauthorized appropriation of the publicity value of plaintiffs’ names and symbols.
As individuals,plaintiffs Neil Young and Pat Benatar are entitled to summary judgment for violation of their right of publicity.The group Performers also qualify for summary judgment.While only one court has apparently recognized a group’s right of publicity,the rationale for protecting that interest extends to groups that have “persona” sufficiently strong to meet the requirements applied to individuals.The theoretical underpinnings of the right of publicity are distinct from the more personal components of the right of privacy.Privacy decisions limit actions to individuals,because the right of privacy is intended to protect individual personality and feelings.The right of publicity,on the other hand,seeks to protect the commercial value acquired by names and likenesses due to investments of time,energy,money,and talent.It protects the persona – the public image that makes people want to identify with the object person,and thereby imbues his name or likeness with commercial value marketable to those that seek such identification.A group that develops market value in its persona should be as entitled as an individual to publicity rights in its name.The rationale for protecting the right to publicity does not justify treating similarly situated plaintiffs differently merely because one is an individual and one is a group member.
Plaintiff Bi-Rite,as the exclusive licensee of various rock groups,may also assert this claim.Unlike privacy rights,which protect personality and feelings and are therefore not assignable,the right of publicity gives rise to a proprietary”interest in the commercial value of one’s persona which is assignable and may be freely licensed.This proprietary interest is much like a copyright;it embodies a bundle of exclusive marketing rights which its holder may transfer in its entirety by an assignment or in part by exclusive licenses.Holders of exclusive licenses gain standing to protect their interests against all who would encroach on the exclusive rights embodied in the licenses.The Second Circuit early recognized the transferability of this right and the standing it accords in a suit by an exclusive licensee:
We think that,in addition to and independent of that right of privacy …,a man has a right in the publicity value of his photograph,i.e.,the right to grant the exclusive privilege of publishing his picture,and that such a grant may validly be made “in gross.” …
[M]any prominent persons …,far from having their feelings bruised through public exposure of their likenesses,would feel sorely deprived if they no longer received money for authorizing advertisements….This right of publicity would usually yield them no money unless it could be made the subject of an exclusive grant which barred any other advertisers from using their pictures.
Haelen Laboratories,Inc.v.Topps Chewing Gum Inc. (1953).
The right of publicity therefore grants plaintiffs relief where none exists under federal law.Federal preemption poses no bar to such relief.“The intangible proprietary interest protected by the right of publicity simply does not constitute a writing,” and therefore falls outside of the preemption standards established by Congress in the copyright law,17 U.S.C.§ 301 (Supp.III.1979).Nor does the Lanham Act prevent states from creating rights against forms of unfair competition broader than those encompassed in the federal statute.“The Supremacy Clause bars only state statutes or doctrine that would permit the sort of confusing or deceptive practices the draftsmen of the Lanham Act sought to prevent.”
In summary,plaintiffs have failed to demonstrate confusion under the Lanham Act and accordingly are denied summary judgment.The Performers are all granted summary judgment for violations of their rights of publicity.They are entitled to injunctive relief,as well as damages,for these violations.Defendants are ordered to cease immediately their unauthorized manufacture and distribution of plaintiff’s marks.Bi-Rite is granted summary judgment for violations of publicity rights it holds under its exclusive licenses with the Who,Pink Floyd,Molly Hatcher and Dexo.Defendants are ordered to cease their activities with respect to these groups.Factual issues as to the exclusivity and currency of Bi-Rite’s license with Foreigner,Judas Priest and Triumph preclude summary judgment on their publicity rights….
So ordered.
[1]The court’s findings on credibility are indeed broad,but they are supported in the record.Galella demonstrated a galling lack of respect for the truth and gave no indication of any consciousness of the meaning of the oath he had taken.Not only did he admit blatantly lying in his testimony,he admitted attempting to have other witnesses lie for him.
[2]Harassment is a criminal offense [in New York] when with intent to harass a person follows another in a public place,inflicts physical contact or engages in any annoying conduct without legitimate cause.Galella was found to have engaged in this proscribed conduct.Conduct sufficient to invoke criminal liability for harassment may be the basis for private action.