BLE sued AVELA, its director Valencia, Urban Outfitters, andTarget for alleged violations of Bruce Lee’s right of publicity/trademarkrights through the unauthorized manufacture and sale of t-shirts bearing hisimage. The court staves off defeat forAVELA, but I wouldn’t say it looked good.
There turn out to be issues of fact about whether Lee wasdomiciled in California or Hong Kong when he died, which would affect thenature of his publicity rights. Therewere also issues about the chain of title for the publicity rights, which BLEdidn’t sufficiently prove at this stage. In addition (but not posing any particular problem for BLE here), therights to Lee’s films are managed separately. For products featuring movie titles or still images from a film, thirdparties need licenses both from BLE and from the film rightsholder. For images only without reference to aparticular film, BLE alone is the licensor.
AVELA acquired images and photos related to several of Lee’sfilms. Valencia sold movie posters withLee’s images and licensed others to use those images since 1983. In 1996, Valencia started X One X to licenseimages, including Lee’s, to third parties, something that AVELA now doestoo. AVELA has licensed Lee’s image foruse on a variety of products, including t-shirts, posters, and bobbleheaddolls. BLE produced evidence indicatingthat Valencia was aware of BLE’s rights—AVELA’s licensing agent forwarded him acommunication from a licensee about the “need” to get BLE’s approval. Defendants claimed that AVELA doesn’t permitlicensees to use the words “Bruce Lee” on goods. AVELA, of course, has been sued for use ofother images. Among others, there’s theBetty Boop case (victory for AVELA) and the Wizard of Oz/Gone With the Windcase, Warner Bros. Entm't, Inc. v. X One X Prods., 644 F.3d 584 (8th Cir. 2011)(characterized by the court here as a victory for AVELA).
This case began when a BLE employee saw a shirt printed withLee’s likeness at Target, and investigation discovered another at UrbanOutfitters. Both said “Bruce Lee” or “B. Lee” on the hang tag and AVELA on theneck tag. Target sold 140 Bruce Lee t-shirts in California, while UrbanOutfitters sold 4,980 shirts California and elsewhere in the United States. Theimage on the Urban Outfitters shirt is allegedly not a film still, but frommarketing for the film Game of Death.
AVELA counterclaimed based on a C&D sent by BLE to oneof its licensees that allegedly caused the licensee to terminate theiragreement; the court got rid of the counterclaims because BLE was reasonable inmaking claims about its rights.
Housekeeping: BLE’s common law right of publicity claimswere dismissed because only statutory rights are postmortem, and common lawunfair competition claims against Target and Urban Outfitters also went becauseBLE made only conclusory allegations of bad faith.
The court denied defendants’ motion for summary judgment onthe statutory right of publicity claim and partially granted BLE’s motion. Defendants argued that the right ofpublicity, as applied, violated due process because Valencia had been sellingBruce Lee merchandise since 1983. The court disagreed, because Valencia neverhad a vested right to sell the images; he never “believed he owned” them, andat best believed he had a right to use them without paying a licensingfee. That wasn’t enough to be a vestedinterest or to trigger due process. Plus, the state’s interest was significant: it protected celebritypersonas from unauthorized exploitation, “a concern of particular importance inCalifornia given the number of entertainers living in that state.” California thought it was important enough tovote for retroactive protection, after all. (That sound you hear is my teethgrinding. Ordinarily, the fact thatsomeone wants something doesn’t inherently make an interest in giving it tothem “significant.” Also, apparently no onehas a vested interest in the Bible, or in the works of Shakespeare, since they’reopen to all comers.)
The court also rejected defendants’ preemption argumentbecause there was no § 301 preemption; the court did not analyze conflictpreemption. BLE argued that it wasn’tseeking to protect movie posters or images associated with the films, butrather “the image of Lee himself.” (Those are the same thing here.) Defendants can use publicity photos or other materials associated withLee’s films, but they can’t commercially exploit “Lee’s name, image, andlikeness.” Lee’s persona and likenessweren’t within the subject matter of copyright. (Note also that the statutory right of publicity doesn’t actuallyprotect “persona”; that’s been kind of a big deal in California.)
You see, in other cases where courts have found preemption,the plaintiff’s likeness was “fixed in a tangible medium” and thus subject tocopyright protection. (Citing Jules Jordan Video, Inc. v. 144942 Can. Inc., 617F.3d 1146 (9th Cir. 2010) (finding right of publicity claim preempted whenclaim was based entirely on misappropriation of various DVDs and plaintiff'sperformance therein, not his persona); Laws v. Sony Music Entm't, 448 F.3d 1134(9th Cir. 2006) (finding right of publicity claim preempted when allegationsfocused on voice recording, not persona).) By contrast, BLE’s claims were“wholly” based on unlicensed use of Lee’s “name, likeness and persona rights,”which aren’t within the subject matter of copyright. Even if the t-shirt images come from films(*cough* fixed in a tangible medium of expression *cough*), “while use of thephotographs themselves may be permitted under the Copyright Act, use of BruceLee's image, likeness, and persona subject Defendants to liability forviolating Lee's right of publicity.”
(Here, the court manages to omit the one thing that reallyis outside the subject matter of copyright: the use of the name on the hangtags. I’d argue that both the First Amendment and conflict preemption allow theexpressive use of public domain images on T-shirts, and then that the FirstAmendment/nominative fair use allow the hang tags, but by not noticing that theinfringement of “persona” here comes by way of reproducing an expressive work,the court skips over the niceties entirely.)
On the record before it, the court was unable to conclude thatthe images were in the public domain because it couldn’t tell “who or what isdepicted” in the t-shirts at issue. Anyway, even if defendants were right, “Plaintiff's complaint is thatthe t-shirts use Bruce Lee's persona—his likeness and presence as a martialartist, not his films or the characters he portrayed therein—withoutauthorization from BLE. The rights in Lee's persona and likeness are not fixedin a tangible medium, and do not fall within the subject matter of copyright.” (Again, that’s a §301 preemption argument,not a conflict preemption argument. Andif a claim based on a reproduction of a performance is preempted when theperformance is fixed in a video or sound recording, it’s sheer nonsense to sayit’s not preempted when fixed in a photograph. I have never seen a credible attempt to explain what differs as betweena sound recording and a photo from the perspective of the relationship betweenthe right of publicity and copyright. There may well be an unacknowledgeddiscrimination against photographers going on, on the theory that they aren’treally doing anything that adds value, but that doesn’t even match up withcopyright ownership (since the performer rarely owns the sound recordingeither).)
So, partial summary judgment was warranted on the core issueof a rights violation, though issues remained as to Lee’s domicile at death andownership of the rights. Even if the images were otherwise subject to copyrightprotection, BLE would have an independent cause of action arising from the useof Lee’s image and likeness.
However, BLE wasn’t entitled to a preliminary injunction. Itdidn’t establish irreparable harm. “Injunctiverelief may well be warranted when the unauthorized use of a celebrity'slikeness damages his marketable reputation. BLE has not shown, however, thatthe allegedly infringing merchandise had any negative effect on its businessapart from reducing its revenue, nor has BLE produced any evidence showing howthe infringing items have reduced the value of Bruce Lee's likeness.”
Similar results obtained on the Lanham Act claims: genuineissue of material fact on ownership; genuine issue on likely confusion. Whilethe Second Circuit found confusion unlikely as to a calendar featuring numerousphotos of baseball players, including three of Babe Ruth (one on the cover),the situation here was different. Lee’simage wasn’t just one of many and was the primary reason a consumer would buythe shirt. Also, AVELA’s name was only on the neck tag, not immediatelyapparent. Lee’s death “will affect thelikelihood that the shirts would create consumer confusion; but does nottotally bar BLE's Lanham Act claim.”
The court replaced the term “mark” with “persona” in itsmultifactor analysis, but also found that many Polaroid factors were “inapplicable” in a celebrity endorsementcase. The relevant factors included “thelevel of recognition Bruce Lee has among purchasers of AVELA's t-shirts, thesimilarity between Bruce Lee's likeness and the likeness used by AVELA, thelevel of actual consumer confusion regarding who endorsed the t-shirts, AVELA'sintention in selecting Bruce Lee's image, the quality of AVELA's products, andthe sophistication of t-shirt purchasers.”
Summary judgment in favor of BLE was inappropriate becauseall BLE provided was “conclusory” statements that the t-shirts featured animage resembling Lee and had hang tags using his name. “While the Court agreesthat consumers may believe these images to be of Bruce Lee, Plaintiffs have notestablished that consumers would believe Bruce Lee or his estate endorsedAVELA's products.”
But summary judgment for defendants was also inappropriate,despite their survey (modeled after one used in a similar case against AVELAinvolving images of Bob Marley). Individuals planning to buy graphic tees at Target or Urban Outfitterswere shown either the shirt sold by Urban Outfitters or a control shirt, whichhad an Asian male in a martial arts costume without Chinese characters (whichappeared on the test shirt) and no “Bruce L.” hang tag. Net confusion ranged from 11.6% to 12%,confusion regarding permission or approval ranged from 8.9% to 10.1%, andconfusion regarding endorsement ranged from 7.5% to 7.9%.
The court found that the survey alone was insufficient towarrant a grant of summary judgment absent corroborating evidence. McCarthysays, “Figures below 20% become problematic because they can only be viewedagainst the background of other evidence weighing for and against a conclusionof likely confusion.” The court did notelaborate on what other evidence it meant.
Defendants also argued descriptive fair use. But they usedLee’s likeness “‘as a symbol to attract public attention,’ which is considereduse as a mark.” It wasn’t credible to argue that the images were useddescriptively. (Descriptive ofwhat? Of course that takes us down therabbit hole: the shirt describes what it is, which is a shirt with a picture ofBruce Lee on it; the very question to be answered is who ought to controlthat.) “[T]he use of Bruce Lee'slikeness and name was intended to sell the t-shirts, not describe them.”
This result also meant that the NY unfair competition andunjust enrichment claims survived, except that unjust enrichment was dismissedas to Target because Target didn’t sell any t-shirts in New York.
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