An Introduction to Intellectual Property Law for First-Year Property Students
1998 Professor Dorothy J. Glancy
Santa Clara University School of Law
II. Modern Forms of Intellectual Property in the United States
Property rights to information, ideas and other products of human intelligence, skill and talent tend to provoke controversy. Whether and the extent to which, intellectual products ought to be treated as property are puzzling questions which help explain the time-limited, and sometimes ephemeral nature of many intellectual property rights.
Several different types of law protect claims to ownership of such human creations as information, ideas, and useful processes. These laws include the United States Constitution, federal statutes, state common law regarding property, contract and tort, as well as state statues. The most important forms of intellectual property recognized in United States law are: Patent, Copyright, Trademark, Trade Secrets, and Personality Rights (sometimes called Rights of Privacy or Rights of Publicity). There are a number of additional types of legal protection for intellectual property, including design patents, plant varieties protection and plant patents, rights regarding the electronic circuitry in semiconductors under the Semiconductor chip protection Act, 17 U.S.C. 901-14, and unfair competition doctrines such as false advertizing and misappropriation. The Dukeminier & Krier text discusses some aspects of the creation of intellectual property at pages 59-66. The following brief descriptions outline the main forms of intellectual property, which are aspects of intangible personal property law in the United States.
Two of the most important types of intellectual property, patents and copyrights, are based on Article 1, Section 8 of the United States Constitution, which provides that “Congress shall have Power”, among its other responsibilities, “To Promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries . . .” U.S. Const. I.(8). Feist Publications, supra, discusses this clause in the context of federal copyright protection of the rights of authors and other creators of original and artistic works. Federal patent statutes establish a system for the establishment of property rights in inventions, the most widely known of which are utility patents.
Patent
Current federal patent statutes give inventors a limited monopoly over the use of their inventions. A new and useful process, machine manufacture or composition of matter is considered patentable. 35 U.S.C. 101. Patent protection extends to computer science and to biotechnology, as well as to machines and devices. The monopoly embodied in a patent is granted to encourage new inventions. In exchange for a monopoly on use of the invention, the patented invention must be disclosed. After the term of the patent expires (20 years after filing), the innovation becomes part of the public domain, freely available to all. 35 U.S.C. 154.
The process for obtaining a utility patent, requires an inventor to submit an application to the Patent and Trademark Office (PTO) which conducts a search of the prior art and examines the patent application. To receive a utility patent, the invention must meet four requirements: patentable subject matter, novelty, usefulness and non-obviousness. The inventor must also disclose the innovation to the public in a way that would enable others to make and use the invention. Although the requirement regarding usefulness is fairly easy to satisfy, the novelty and non-obviousness standards are more difficult to meet. If after an independent review of the application, the PTO grants the patent, the inventor obtains the right to exclude others from making, using, offering to sell and selling the innovation for a term of up to 20 years. The right of the patent holder is nearly absolute and will prevent even those who have independently developed the invention from practicing the patented art. Inventors often profit from their patents through sale, assignment or license of their patent rights.
The owner of a patent enforces it through infringement actions against those who copy or use it without permission. Infringement is a very broad concept, in part because the doctrine of equivalents may apply when actual literal infringement is not present. Under the doctrine of equivalents, an accused product which does not literally infringe a patent may yet be found to be infringing “if it performs substantially the same function in substantially the same way to obtain the same result” as the patented product or process. Graver Tank & Mfg. Co v. Linde Air Products Co., 339 U.S. 605, 608 (1950) (quoting from Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42). The concept is an equity doctrine, developed by courts to do promote fairness and equity. Courts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Id. 339 U.S. at 607. Much of the value of patents comes from the patent owner’s right to exclude competitors from using the patent and from the patent owner’s ability to grant permission to use the patent, usually in the form of a license.
An inventor is not required to seek a patent to protect the inventor’s claims to an invention. However, not filing a timely patent application with the United States Patent and Trademark Office (PTO) risks loss of rights to the invention. For example, if an invention is described in a publication, the inventor has one year to file a patent application. If no application is filed, the invention is deemed to be in the public domain. 35 U.S.C. 102(b) The patent statute requires that the patent application clearly disclose what the inventor claims to have discovered and how the invention works. 35 U.S.C. 112. This required disclosure is designed both to reveal the precise contours of the claimed invention and to promote technological advancement by making it available to other inventors.
In the United States, competing claims to inventions are resolved by awarding the patent to the first to invent. Even if a later inventor files a patent application first, the patent will be awarded to the inventor who made the discovery first. Of course, the earlier inventor must establish earlier discovery of the invention. Usually, first discovery is established through regularly maintained laboratory journals and the like. Elsewhere in the world, most other patent systems award a patent to the first inventor to file a patent application for a particular discovery.
To obtain damages for patent infringement, an inventor must first provide notice of the patent, either directly on the invention or by filing suit for patent infringement. The purpose of the patent notices commonly found on patented products (e.g., AU.S. Patent No. . . .) is to make sure that no damage claims, which do not begin to accrue until notice of the patent is given to an infringer, are lost.
In addition to the utility patents described above, federal law affords protection for design patents under 35 U.S.C. 171, and plants under the Plant Patent Act, 35 U.S.C. 161-64 and the Plant Variety Protection Act, 7 U.S.C. 2321.
Copyright
Copyright law confers several different types of rights to a wide variety of modes of expression, from literature and drama to visual arts and audio recordings as well as computer programs. Copyright statutes take a similar approach to patent law in conferring statutorily created monopolies designed to foster progress and future creativity. However, copyright law only protects creative works embodied in a tangible form. In general, copyright protection is easier to secure and lasts substantially longer than patents, although copyright protection is usually narrower and often less absolute. A copyright lasts for the life of the author plus 50 years, or a total of 75 years if the author is an entity, as is the case with regard to “works for hire”. 17 U.S.C. 302.
Copyright law is based on the Copyright Act of 1976, 17 U.S.C. 1-702, as amended. Copyright law confers rights to a broad range of literary and artistic expression C including books, poetry, song, dance, dramatic works, movies, sculpture, and painting. 17 U.S.C. 102(a). Copyright protection also extends to the expressive element of computer programs.
Although ideas themselves can not be copyrighted, Id. 102(b), an artist’s or author’s particular expression of an idea is protected. To be eligible for copyright protection a work must be fixed in a “tangible medium of expression” and exhibit at least some originality. Id. 102(a). Feist Publications, supra, was concerned with the originality requirement. Copyright protection automatically attaches as soon as a work is fixed in a tangible medium of expression.No government agency examines the material for which copyright is claimed, although the U.S. Copyright Office registers copyrightable works.
Although copyright registration is not required to secure a copyright, before a United States author can file an infringement suit the copyright must be registered. Id. 408-412. The 1976 Copyright Act also encourages copyright registration by according registered copyrights prima facie evidence of validity, 17 U.S.C. ‘411, and by authorizing statutory damages and attorney fees for infringements which occur after registration, 17 U.S.C. ‘412. Because the United States is a signatory to the Berne Convention for the Protection of Literary and Artistic Works, which provides that copyright shall “not be subject to any formality”, Congress amended the 1976 Copyright Act to eliminate the requirement that copyright owners register their works before instituting suits for infringement with regard to works whose country of origin is another Berne member nation. However, registration and deposit of copies with the U.S. Copyright Office is still a prerequisite for infringement suits regarding copyrighted works created in the United States. The Copyright Act no longer requires the familiar notice of copyright — 8, followed by the date and author. Nevertheless, to encourage authors to provide copyright notices, the Act precludes a defense of innocent infringement if the infringer used a copy with a proper notice. 17 U.S.C. 401(d).
Despite the relative ease with which copyright protection is secured, copyright is accompanied by much more limited rights than patents. Ownership of a valid copyright protects a copyright holder against unauthorized copying, display and public performance. Copyright also entitles the holder to make derivative works and to control sale and distribution of the work. Id. 106. There are, however, a number of limitations on these rights. For example, others may make “fair use” of the material protected, which is determined by a balancing test. Id. 107. There is also statutory provision for compulsory licensing with regard to musical compositions and cable television. Id. 111,115. Copyright law also protects against illegal copying, distribution, public performance and preparation of derivative works.
Independent creation of copyrighted material does not violate the Act. Although in rare cases there is direct proof of copying, usually courts have to infer copying from the copyright holders proof (1) that the infringer had access to the copyright holder’s work and (2) that the two works are substantially similar.
Trademarks
Property rights in trademarks are protected under a federal statute, known as the Lanham Act, 15 U.S.C. 1051-1127, enacted under Congress’s power to regulate interstate commerce, rather than the Patent and Copyright clause of the United States Constitution. Additional trademark protection is also available under state law, even if a trademark has not been federally registered. The purpose of trademark law is quite different from patent and copyright law. Instead of seeking to reward creators and inventors, trademark law is aimed at protecting consumers against unscrupulous sellers which have falsely identified products, processes and services with well-known sources. A mark need not be either novel or original, because the purpose of trademark law is to prevent copying of famous logos or other identifying symbols in ways which might confuse prospective purchasers. Certain aspects of trademark law may also protect against misappropriation of famous personalities as well.
The Lanham Act protects symbols, words and other identifying marks which associate goods or services in commerce from a particular source or of a particular type. Corporate and product names and logos, symbols, slogans, designs, colors, pictures and product configurations and the like can be protected under the Lanham Act. However, not all such identifying attributes are protected. Only identifying marks which represent the source of a good or service to consumers are eligible for trademark protection, which extends to service marks, certification marks and collective marks. Neither a description of the good or service, nor a generic name for the type of good or service is protected by trademark law. A functional element of the product itself cannot serve as a trademark, which must serve only as an identifier. Trademarks are established by using the mark on goods in commerce and do not have expiration dates or protection limited to fixed periods. Trademarks continue until they lose their distinctiveness and are no longer eligible for protection, for example, by becoming generic, or until they have been “abandoned” by their owner.
Registration by the United States Patent and Trademark Office, after examination, results in significant benefits to trademark registrants. Registered trademarks are often indicated by familiar trademark indicia, such as A7, AJ or AK. Registration establishes prima facie evidence of the validity of the trademark and nationwide use of the mark, 15 U.S.C. 1057(b) and (c). Registration provides public notice of the registrant’s claim of ownership of the mark and also makes the mark incontestable after five years of continuous use, 15 U.S.C. 1072 and 1065. Moreover, registration confers federal jurisdiction over trademark disputes, 15 U.S.C. 1121 and authorizes treble damages and the award of attorney fees, 15 U.S.C. 1116-1120. It also confers a right to bar importation of goods bearing an infringing mark.
If someone other than the trademark owner uses a mark similar to the trademark to identify competing goods, the trademark owner can sue for trademark infringement. Proof of trademark infringement requires showing that consumers are likely to be confused with regard to the origin of the goods or services. The infringer’s mark does not need to be identical to the trademark. Nor does the plaintiff have to show that the infringer deliberately copied the trademark. Liability for trademark infringement depends upon showing consumer confusion. If infringement is established, the infringer’s use of the confusing mark will be enjoined and damages awarded for past infringement. Sometimes infringing goods are seized and destroyed.
State Law forms of Intellectual Property
Trade Secrets
In addition to the federal statutory intellectual property rights described above, state law also protects against the misappropriation of certain types of confidential, commercially valuable information. Trade secrets can include a wide variety of business and technical information, including know-how, formulas, programs, compilations of data, devices, processes and even customer lists. Common law protection for trade secrets is often codified in state trade secrets statutes, many of which are based on the Uniform Trade Secrets Act Trade secrets law seeks to prevent unauthorized use of information acquired by unfair or commercially unreasonable means. Protection of trade secrets often derives from contractual obligations to limit the use of confidential information, and often depends on practical strategies designed to maintain secrecy and to prevent misappropriation.
To be eligible for trade secret protection, information must be kept secret. Although absolute secrecy is not required, trade secret protection is predicated on reasonable efforts to maintain secrecy. Trade secrets have no definite term of protection. However, they will loose protection when they are no longer secret. “Reverse engineering” a legally obtained product to determine how the product was made is considered legitimate competitive behavior, and not trade secret theft. Moreover, independent discovery or invention of the same trade secret does not constitute misappropriation.
Trade secrets are not registered or otherwise validated by any government agency. Nor are they required to be disclosed. The existence of confidential information, which is valuable commercially, is all that is required to establish a trade secret. Trade secrets last as long as the owner maintains the confidentiality of the information. Liability for misappropriation of trade secrets generally arises out of two types of circumstances: first, when a defendant has obtained a trade secret by theft or other improper means; and second, when a defendant has violated a confidential relationship by using or disclosing a trade secret. The trade secret owner which has proved violation of trade secret law will be entitled to damages and, in some situations, injunctions against further use or disclosure of the trade secret.
Rights of Personality (Privacy Rights /Publicity Rights)
The rights of famous personalities to control the commercial use of their identities, as a matter of state law, has been a recent development in intellectual property law. The name of this type of intellectual property right varies from state to state and includes rights of privacy, rights of publicity and rights of personality. A person’s name, likeness and other aspects of personal identity are protected against commercial use without the consent of the person. In some states the protection is statutory and in others it is a matter of common law associated with the right of privacy. Some of the controversy over these intellectual property rights is illustrated by the following two court opinions which consider Bette Midler’s and Vanna White’s rights to their famous personalities.
(The following two cases discuss controversial aspects of California state law regarding rights of personality. Both opinions are from the United States Court of Appeals for the Ninth Circuit and illustrate contrasting views regarding intellectual property rights associated with the personalities of celebrities. Whether to protect intangible, but valuable, attributes of unique human personalities as property for various purposes is the issue the following opinions explore.)
Midler v. Ford Motor Company
849 F.2d 460 (9th Cir. 1988)
NOONAN, Circuit Judge:
This case centers on the protectibility of the voice of a celebrated chanteuse from commercial exploitation without her consent. Ford Motor Company and its advertising agency, Young & Rubicam, Inc., in 1985 advertised the Ford Lincoln Mercury with a series of nineteen 30 or 60 second television commercials in what the agency called “The Yuppie Campaign.” The aim was to make an emotional connection with Yuppies, bringing back memories of when they were in college. Different popular songs of the seventies were sung on each commercial. The agency tried to get “the original people,” that is, the singers who had popularized the songs, to sing them. Failing in that endeavor in ten cases the agency had the songs sung by “sound alikes.” Bette Midler, the plaintiff and appellant here, was done by a sound alike.
Midler is a nationally known actress and singer. She won a Grammy as early as 1973 as the Best New Artist of that year. Records made by her since then have gone Platinum and Gold. She was nominated in 1979 for an Academy award for Best Female Actress in The Rose, in which she portrayed a pop singer. Newsweek in its June 30, 1986 issue described her as an “outrageously original singer/comedian.” Time hailed her in its March 2, 1987 issue as “a legend” and “the most dynamic and poignant singer-actress of her time.”
When Young & Rubicam was preparing the Yuppie Campaign it presented the commercial to its client by playing an edited version of Midler singing “Do You Want To Dance,” taken from the 1973 Midler album, “The Divine Miss M.” After the client accepted the idea and form of the commercial, the agency contacted Midler’s manager, Jerry Edelstein. The conversation went as follows: “Hello, I am Craig Hazen from Young and Rubicam. I am calling you to find out if Bette Midler would be interested in doing …? Edelstein: “Is it a commercial?” “Yes.” “We are not interested.”
Undeterred, Young & Rubicam sought out Ula Hedwig whom it knew to have been one of “the Harlettes” a backup singer for Midler for ten years. Hedwig was told by Young & Rubicam that “they wanted someone who could sound like Bette Midler’s recording of [Do You Want To Dance].” She was asked to make a “demo” tape of the song if she was interested. She made an a capella demo and got the job.
At the direction of Young & Rubicam, Hedwig then made a record for the commercial. The Midler record of “Do You Want To Dance” was first played to her. She was told to “sound as much as possible like the Bette Midler record,” leaving out only a few “aahs” unsuitable for the commercial. Hedwig imitated Midler to the best of her ability.
After the commercial was aired Midler was told by “a number of people” that it “sounded exactly” like her record of “Do You Want To Dance.” Hedwig was told by “many personal friends” that they thought it was Midler singing the commercial. Ken Fritz, a personal manager in the entertainment business not associated with Midler, declares by affidavit that he heard the commercial on more than one occasion and thought Midler was doing the singing.
Neither the name nor the picture of Midler was used in the commercial; Young & Rubicam had a license from the copyright holder to use the song. At issue in this case is only the protection of Midler’s voice. The district court described the defendants’ conduct as that “of the average thief.” They decided, “If we can’t buy it, we’ll take it.” The court nonetheless believed there was no legal principle preventing imitation of Midler’s voice and so gave summary judgment for the defendants. Midler appeals.
The First Amendment protects much of what the media do in the reproduction of likenesses or sounds. A primary value is freedom of speech and press. Time, Inc. v. Hill, 385 U.S. 374, 388, 87 S.Ct. 534, 542, 17 L.Ed.2d 456 (1967). The purpose of the media’s use of a person’s identity is central. If the purpose is “informative or cultural” the use is immune; “if it serves no such function but merely exploits the individual portrayed, immunity will not be granted.” Felcher and Rubin, “Privacy, Publicity and the Portrayal of Real People by the Media,” 88 Yale L.J. 1577, 1596 (1979). Moreover, federal copyright law preempts much of the area. “Mere imitation of a recorded performance would not constitute a copyright infringement even where one performer deliberately sets out to simulate another’s performance as exactly as possible.” Notes of Committee on the Judiciary, 17 U.S.C.A. ‘ 114(b). It is in the context of these First Amendment and federal copyright distinctions that we address the present appeal.
Nancy Sinatra once sued Goodyear Tire and Rubber Company on the basis of an advertising campaign by Young & Rubicam featuring “These Boots Are Made For Walkin’,” a song closely identified with her; the female singers of the commercial were alleged to have imitated her voice and style and to have dressed and looked like her. The basis of Nancy Sinatra’s complaint was unfair competition; she claimed that the song and the arrangement had acquired “a secondary meaning” which, under California law, was protectible. This court noted that the defendants “had paid a very substantial sum to the copyright proprietor to obtain the license for the use of the song and all of its arrangements.” To give Sinatra damages for their use of the song would clash with federal copyright law. Summary judgment for the defendants was affirmed. Sinatra v. Goodyear Tire & Rubber Co., 435 F.2d 711, 717-718 (9th Cir.1970), cert. denied, 402 U.S. 906, 91 S.Ct. 1376, 28 L.Ed.2d 646 (1971). If Midler were claiming a secondary meaning to “Do You Want To Dance” or seeking to prevent the defendants from using that song, she would fail like Sinatra. But that is not this case. Midler does not seek damages for Ford’s use of “Do You Want To Dance,” and thus her claim is not preempted by federal copyright law. Copyright protects “original works of authorship fixed in any tangible medium of expression.” 17 U.S.C. ‘ 102(a). A voice is not copyrightable. The sounds are not “fixed.” What is put forward as protectible here is more personal than any work of authorship.
Bert Lahr once sued Adell Chemical Co. for selling Lestoil by means of a commercial in which an imitation of Lahr’s voice accompanied a cartoon of a duck. Lahr alleged that his style of vocal delivery was distinctive in pitch, accent, inflection, and sounds. The First Circuit held that Lahr had stated a cause of action for unfair competition, that it could be found “that defendant’s conduct saturated plaintiff’s audience, curtailing his market.” Lahr v. Adell Chemical Co., 300 F.2d 256, 259 (1st Cir.1962). That case is more like this one. But we do not find unfair competition here. One-minute commercials of the sort the defendants put on would not have saturated Midler’s audience and curtailed her market. Midler did not do television commercials. The defendants were not in competition with her. See Halicki v. United Artists Communications, Inc., 812 F.2d 1213 (9th Cir.1987).
California Civil Code section 3344 is also of no aid to Midler. The statute affords damages to a person injured by another who uses the person’s “name, voice, signature, photograph or likeness, in any manner.” The defendants did not use Midler’s name or anything else whose use is prohibited by the statute. The voice they used was Hedwig’s, not hers. The term “likeness” refers to a visual image not a vocal imitation. The statute, however, does not preclude Midler from pursuing any cause of action she may have at common law; the statute itself implies that such common law causes of action do exist because it says its remedies are merely “cumulative.” Id. ‘ 3344(g).
The companion statute protecting the use of a deceased person’s name, voice, signature, photograph or likeness states that the rights it recognizes are “property rights.” Id. ‘ 990(b). By analogy the common law rights are also property rights. Appropriation of such common law rights is a tort in California. Motschenbacher v. R.J. Reynolds Tobacco Co., 498 F.2d 821 (9th Cir.1974). In that case what the defendants used in their television commercial for Winston cigarettes was a photograph of a famous professional racing driver’s racing car. The number of the car was changed and a wing-like device known as a “spoiler” was attached to the car; the car’s features of white pinpointing, an oval medallion, and solid red coloring were retained. The driver, Lothar Motschenbacher, was in the car but his features were not visible. Some persons, viewing the commercial, correctly inferred that the car was his and that he was in the car and was therefore endorsing the product. The defendants were held to have invaded a “proprietary interest” of Motschenbacher in his own identity. Id. at 825.
Midler’s case is different from Motschenbacher’s. He and his car were physically used by the tobacco company’s ad; he made part of his living out of giving commercial endorsements. But, as Judge Koelsch expressed it in Motschenbacher, California will recognize an injury from “an appropriation of the attributes of one’s identity.” Id. at 824. It was irrelevant that Motschenbacher could not be identified in the ad. The ad suggested that it was he. The ad did so by emphasizing signs or symbols associated with him. In the same way the defendants here used an imitation to convey the impression that Midler was singing for them.
Why did the defendants ask Midler to sing if her voice was not of value to them? Why did they studiously acquire the services of a sound-alike and instruct her to imitate Midler if Midler’s voice was not of value to them? What they sought was an attribute of Midler’s identity. Its value was what the market would have paid for Midler to have sung the commercial in person.
A voice is more distinctive and more personal than the automobile accouterments protected in Motschenbacher. A voice is as distinctive and personal as a face. The human voice is one of the most palpable ways identity is manifested. We are all aware that a friend is at once known by a few words on the phone. At a philosophical level it has been observed that with the sound of a voice, “the other stands before me.” D. Ihde, Listening and Voice 77 (1976). A fortiori, these observations hold true of singing, especially singing by a singer of renown. The singer manifests herself in the song. To impersonate her voice is to pirate her identity. See W. Keeton, D. Dobbs, R. Keeton, D. Owen, Prosser & Keeton on Torts 852 (5th ed. 1984).
We need not and do not go so far as to hold that every imitation of a voice to advertise merchandise is actionable. We hold only that when a distinctive voice of a professional singer is widely known and is deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs and have committed a tort in California. Midler has made a showing, sufficient to defeat summary judgment, that the defendants here for their own profit in selling their product did appropriate part of her identity.
Reversed and Remanded for Trial.
[The case was later tried before a jury, which awarded Bette Midler $400,000 in compensatory damages. The judge ruled against her punitive damages claim. Both sides appealed, and the trial court judgment was upheld in an unpublished opinion of the Ninth Circuit noted at 944 F.2d 909 (9th Cir. 1991) and reported at 1991 WL 185170.]
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The extent to which celebrities should be able to control their famous ways of doing things as intellectual property continues to be a matter of disagreement. The intellectual property at issue in the following case is Vanna White’s inimitable style of performing on the television program, “Wheel of Fortune”. Photographs both of Ms. White and of the offending advertisement were attached as an appendix to the dissenting opinion of Judge Kozinski and are reproduced below at pages 37 and 37.
White v. Samsung Electronics America, Inc.
971 F.2d 1395 (9th Cir. 1992)
GOODWIN, Senior Circuit Judge:
This case involves a promotional “fame and fortune” dispute. In running a particular advertisement without Vanna White’s permission, defendants Samsung Electronics America, Inc. (Samsung) and David Deutsch Associates, Inc. (Deutsch) attempted to capitalize on White’s fame to enhance their fortune. White sued, alleging infringement of various intellectual property rights, but the district court granted summary judgment in favor of the defendants. We affirm in part, reverse in part, and remand.
Plaintiff Vanna White is the hostess of “Wheel of Fortune,” one of the most popular game shows in television history. An estimated forty million people watch the program daily. Capitalizing on the fame which her participation in the show has bestowed on her, White markets her identity to various advertisers.
The dispute in this case arose out of a series of advertisements prepared for Samsung by Deutsch. The series ran in at least half a dozen publications with widespread, and in some cases national, circulation. Each of the advertisements in the series followed the same theme. Each depicted a current item from popular culture and a Samsung electronic product. Each was set in the twenty-first century and conveyed the message that the Samsung product would still be in use by that time. By hypothesizing outrageous future outcomes for the cultural items, the ads created humorous effects. For example, one lampooned current popular notions of an unhealthy diet by depicting a raw steak with the caption: “Revealed to be health food. 2010 A.D.” Another depicted irreverent “news”-show host Morton Downey Jr. in front of an American flag with the caption: “Presidential candidate 2008 A.D.”
The advertisement which prompted the current dispute was for Samsung video-cassette recorders (VCRs). The ad depicted a robot, dressed in a wig, gown, and jewelry which Deutsch consciously selected to resemble White’s hair and dress. The robot was posed next to a game board which is instantly recognizable as the Wheel of Fortune game show set, in a stance for which White is famous. The caption of the ad read: “Longest-running game show 2012 A.D.” Defendants referred to the ad as the “Vanna White” ad. Unlike the other celebrities used in the campaign, White neither consented to the ads nor was she paid. . . .
II. Right of Publicity
The district court dismissed White’s claim for failure to [show that defendants had] . . . appropriated White’s “name or likeness” with their robot ad. We agree that the robot ad did not make use of White’s name or likeness. However, the common law right of publicity is not so confined.
. . . . .[T]he common law right of publicity reaches means of appropriation other than name or likeness,. . . . . The right of publicity does not require that appropriations of identity be accomplished through particular means to be actionable. It is noteworthy that the Midler . . . defendants not only avoided using the plaintiff’s name or likeness, but they also avoided appropriating the celebrity’s voice, signature, and photograph. . . . . Advertisers use celebrities to promote their products. The more popular the celebrity, the greater the number of people who recognize her, and the greater the visibility for the product. The identities of the most popular celebrities are not only the most attractive for advertisers, but also the easiest to evoke without resorting to obvious means such as name, likeness, or voice. . . .
Television and other media create marketable celebrity identity value. Considerable energy and ingenuity are expended by those who have achieved celebrity value to exploit it for profit. The law protects the celebrity’s sole right to exploit this value whether the celebrity has achieved her fame out of rare ability, dumb luck, or a combination thereof. We decline Samsung and Deutch’s invitation to permit the evisceration of the common law right of publicity through means as facile as those in this case. Because White has alleged facts showing that Samsung and Deutsch had appropriated her identity, the district court erred by rejecting, on summary judgment, White’s common law right of publicity claim. . . .
IV. The Parody Defense
In defense, defendants cite a number of cases for the proposition that their robot ad constituted protected speech. . . . This case involves a true advertisement run for the purpose of selling Samsung VCRs. The ad’s spoof of Vanna White and Wheel of Fortune is subservient and only tangentially related to the ad’s primary message: “buy Samsung VCRs.” Defendants’ parody arguments are better addressed to non-commercial parodies. The difference between a “parody” and a “knock-off” is the difference between fun and profit. . . . . .
In remanding this case, we hold only that White has pleaded claims which can go to the jury for its decision.
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Samsung then requested a rehearing en banc, by all of the judges of the 9th Circuit. Although this request for rehearing was rejected, three judges, joined in the following dissenting opinion.
White v. Samsung Electronics America, Inc.
989 F.2d 1512 (9th Cir. 1993)
KOZINSKI, Circuit Judge, with whom Circuit Judges O’SCANNLAIN and KLEINFELD join, dissenting from the order rejecting the suggestion for rehearing en banc.*I
Saddam Hussein wants to keep advertisers from using his picture in unflattering contexts.1 Clint Eastwood doesn’t want tabloids to write about him.2 Rudolf Valentino’s heirs want to control his film biography.3 The Girl Scouts don’t want their image soiled by association with certain activities.4 George Lucas wants to keep Strategic Defense Initiative fans from calling it “Star Wars.”5 Pepsico doesn’t want singers to use the word “Pepsi” in their songs.6 Guy Lombardo wants an exclusive property right to ads that show big bands playing on New Year’s Eve.7 Uri Geller thinks he should be paid for ads showing psychics bending metal through telekinesis.8 Paul Prudhomme, that household name, thinks the same about ads featuring corpulent bearded chefs.9 And scads of copyright holders see purple when their creations are made fun of.10
Something very dangerous is going on here. Private property, including intellectual property, is essential to our way of life. It provides an incentive for investment and innovation; it stimulates the flourishing of our culture; it protects the moral entitlements of people to the fruits of their labors. But reducing too much to private property can be bad medicine. Private land, for instance, is far more useful if separated from other private land by public streets, roads and highways. Public parks, utility rights-of- way and sewers reduce the amount of land in private hands, but vastly enhance the value of the property that remains.
So too it is with intellectual property. Overprotecting intellectual property is as harmful as underprotecting it. Creativity is impossible without a rich public domain. Nothing today, likely nothing since we tamed fire, is genuinely new: culture, like science and technology, grows by accretion, each new creator building on the works of those who came before. Overprotection stifles the very creative forces it’s supposed to nurture.
The panel’s opinion is a classic case of overprotection. Concerned about what it sees as a wrong done to Vanna White, the panel majority erects a property right of remarkable and dangerous breadth: under the majority’s opinion, it’s now a tort for advertisers to remind the public of a celebrity. Not to use a celebrity’s name, voice, signature or likeness; not to imply the celebrity endorses a product; but simply to evoke the celebrity’s image in the public’s mind. This Orwellian notion withdraws far more from the public domain than prudence and common sense allow. It conflicts with the Copyright Act and the Copyright Clause. It raises serious First Amendment problems. It’s bad law, and it deserves a long, hard second look.
II
Samsung ran an ad campaign promoting its consumer electronics. Each ad depicted a Samsung product and a humorous prediction: one showed a raw steak with the caption “Revealed to be health food. 2010 A.D.” Another showed Morton Downey, Jr. in front of an American flag with the caption “Presidential candidate. 2008 A.D.”11 The ads were meant to conveyhumorouslythat Samsung products would still be in use twenty years from now.
The ad that spawned this litigation starred a robot dressed in a wig, gown and jewelry reminiscent of Vanna White’s hair and dress; the robot was posed next to a Wheel-of-Fortune-like game board. See Appendix. The caption read “Longest-running game show. 2012 A.D.” The gag here, I take it, was that Samsung would still be around when White had been replaced by a robot.
Perhaps failing to see the humor, White sued, alleging Samsung infringed her right of publicity by “appropriating” her “identity.” Under California law, White has the exclusive right to use her name, likeness, signature and voice for commercial purposes. Cal.Civ.Code 3344(a); Eastwood v. Superior Court, 149 Cal.App.3d 409, 417, 198 Cal.Rptr. 342, 347 (1983). But Samsung didn’t use her name, voice or signature, and it certainly didn’t use her likeness. The ad just wouldn’t have been funny had it depicted White or someone who resembled herthe whole joke was that the game show host(ess) was a robot, not a real person. No one seeing the ad could have thought this was supposed to be White in 2012.
The district judge quite reasonably held that, because Samsung didn’t use White’s name, likeness, voice or signature, it didn’t violate her right of publicity. 971 F.2d at 1396-97. Not so, says the panel majority: the California right of publicity can’t possibly be limited to name and likeness. If it were, the majority reasons, a “clever advertising strategist” could avoid using White’s name or likeness but nevertheless remind people of her with impunity, “effectively eviscerat[ing]” her rights. To prevent this “evisceration,” the panel majority holds that the right of publicity must extend beyond name and likeness, to any “appropriation” of White’s “identity”anything that “evoke[s]” her personality. Id. at 1398-99.
III
But what does “evisceration” mean in intellectual property law? Intellectual property rights aren’t like some constitutional rights, absolute guarantees protected against all kinds of interference, subtle as well as blatant. They cast no penumbras, emit no emanations: the very point of intellectual property laws is that they protect only against certain specific kinds of appropriation. I can’t publish unauthorized copies of, say, “Presumed Innocent”; I can’t make a movie out of it. But I’m perfectly free to write a book about an idealistic young prosecutor on trial for a crime he didn’t commit. So what if I got the idea from “Presumed Innocent”? So what if it reminds readers of the original? Have I “eviscerated” Scott Turow’s intellectual property rights? Certainly not. All creators draw in part on the work of those who came before, referring to it, building on it, poking fun at it; we call this creativity, not piracy.12
The majority isn’t, in fact, preventing the “evisceration” of Vanna White’s existing rights; it’s creating a new and much broader property right, a right unknown in California law.13 It’s replacing the existing balance between the interests of the celebrity and those of the public by a different balance, one substantially more favorable to the celebrity. Instead of having an exclusive right in her name, likeness, signature or voice, every famous person now has an exclusive right to anything that reminds the viewer of her. After all, that’s all Samsung did: it used an inanimate object to remind people of White, to “evoke [her identity].” 971 F.2d at 1399.14
Consider how sweeping this new right is. What is it about the ad that makes people think of White? It’s not the robot’s wig, clothes or jewelry; there must be ten million blond women (many of them quasi-famous) who wear dresses and jewelry like White’s. It’s that the robot is posed near the “Wheel of Fortune” game board. Remove the game board from the ad, and no one would think of Vanna White. See Appendix. But once you include the game board, anybody standing beside ita brunette woman, a man wearing women’s clothes, a monkey in a wig and gownwould evoke White’s image, precisely the way the robot did. It’s the “Wheel of Fortune” set, not the robot’s face or dress or jewelry that evokes White’s image. The panel is giving White an exclusive right not in what she looks like or who she is, but in what she does for a living.15
This is entirely the wrong place to strike the balance. Intellectual property rights aren’t free: they’re imposed at the expense of future creators and of the public at large. Where would we be if Charles Lindbergh had an exclusive right in the concept of a heroic solo aviator? If Arthur Conan Doyle had gotten a copyright in the idea of the detective story, or Albert Einstein had patented the theory of relativity? If every author and celebrity had been given the right to keep people from mocking them or their work? Surely this would have made the world poorer, not richer, culturally as well as economically.
This is why intellectual property law is full of careful balances between what’s set aside for the owner and what’s left in the public domain for the rest of us: the relatively short life of patents; the longer, but finite, life of copyrights; copyright’s idea-expression dichotomy; the fair use doctrine; the prohibition on copyrighting facts; the compulsory license of television broadcasts and musical compositions; federal preemption of overbroad state intellectual property laws; the nominative use doctrine in trademark law; the right to make soundalike recordings All of these diminish an intellectual property owner’s rights. All let the public use something created by someone else. But all are necessary to maintain a free environment in which creative genius can flourish.
The intellectual property right created by the panel here has none of these essential limitations: no fair use exception; no right to parody; no idea- expression dichotomy. It impoverishes the public domain, to the detriment of future creators and the public at large. Instead of well-defined, limited characteristics such as name, likeness or voice, advertisers will now have to cope with vague claims of “appropriation of identity,” claims often made by people with a wholly exaggerated sense of their own fame and significance. See pp. 1512-13 & notes 1-10 supra. Future Vanna Whites might not get the chance to create their personae, because their employers may fear some celebrity will claim the persona is too similar to her own.16 The public will be robbed of parodies of celebrities, and our culture will be deprived of the valuable safety valve that parody and mockery create.
Moreover, consider the moral dimension, about which the panel majority seems to have gotten so exercised. Saying Samsung “appropriated” something of White’s begs the question: should White have the exclusive right to something as broad and amorphous as her “identity”? Samsung’s ad didn’t simply copy White’s schtick–like all parody, it created something new. True, Samsung did it to make money, but White does whatever she does to make money, too; the majority talks of “the difference between fun and profit,” 971 F.2d at 1401, but in the entertainment industry fun is profit. Why is Vanna White’s right to exclusive for-profit use of her personaa persona that might not even be her own creation, but that of a writer, director or producersuperior to Samsung’s right to profit by creating its own inventions? Why should she have such absolute rights to control the conduct of others, unlimited by the idea-expression dichotomy or by the fair use doctrine?
To paraphrase only slightly Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991), it may seem unfair that much of the fruit of a creator’s labor may be used by others without compensation. But this is not some unforeseen byproduct of our intellectual property system; it is the system’s very essence. Intellectual property law assures authors the right to their original expression, but encourages others to build freely on the ideas that underlie it. This result is neither unfair nor unfortunate: it is the means by which intellectual property law advances the progress of science and art. We give authors certain exclusive rights, but in exchange we get a richer public domain. The majority ignores this wise teaching, and all of us are the poorer for it.
IV
The panel, however, does more than misinterpret California law: by refusing to recognize a parody exception to the right of publicity, the panel directly contradicts the federal Copyright Act. Samsung didn’t merely parody Vanna White. It parodied Vanna White appearing in “Wheel of Fortune,” a copyrighted television show, and parodies of copyrighted works are governed by federal copyright law. . . .
The majority’s decision decimates this federal scheme. It’s impossible to parody a movie or a TV show without at the same time “evok[ing]” the “identit[ies]” of the actors. You can’t have a mock Star Wars without a mock Luke Skywalker, Han Solo and Princess Leia, which in turn means a mock Mark Hamill, Harrison Ford and Carrie Fisher. You can’t have a mock Batman commercial without a mock Batman, which means someone emulating the mannerisms of Adam West or Michael Keaton. . . . The public’s right to make a fair use parody and the copyright owner’s right to license a derivative work are useless if the parodist is held hostage by every actor whose “identity” he might need to “appropriate.” . . .
I can’t see how giving White the power to keep others from evoking her image in the public’s mind can be squared with the First Amendment. Where does White get this right to control our thoughts? The majority’s creation goes way beyond the protection given a trademark or a copyrighted work, or a person’s name or likeness. All those things control one particular way of expressing an idea, one way of referring to an object or a person. But not allowing any means of reminding people of someone? That’s a speech restriction unparalleled in First Amendment law.
What’s more, I doubt even a name-and-likeness-only right of publicity can stand without a parody exception. The First Amendment isn’t just about religion or politicsit’s also about protecting the free development of our national culture. Parody, humor, irreverence are all vital components of the marketplace of ideas. The last thing we need, the last thing the First Amendment will tolerate, is a law that lets public figures keep people from mocking them, or from “evok[ing]” their images in the mind of the public. 971 F.2d at 1399. . . .
In our pop culture, where salesmanship must be entertaining and entertainment must sell, the line between the commercial and noncommercial has not merely blurred; it has disappeared. Is the Samsung parody any different from a parody on Saturday Night Live or in Spy Magazine? Both are equally profit-motivated. Both use a celebrity’s identity to sell thingsone to sell VCRs, the other to sell advertising. Both mock their subjects.Both try to make people laugh. Both add something, perhaps something worthwhile and memorable, perhaps not, to our culture. Both are things that the people being portrayed might dearly want to suppress. See notes 1 & 29 supra.. . .
For better or worse, we are the Court of Appeals for the Hollywood Circuit. Millions of people toil in the shadow of the law we make, and much of their livelihood is made possible by the existence of intellectual property rights. But much of their livelihoodand much of the vibrancy of our culturealso depends on the existence of other intangible rights: the right to draw ideas from a rich and varied public domain, and the right to mock, for profit as well as fun, the cultural icons of our time.
In the name of avoiding the “evisceration” of a celebrity’s rights in her image, the majority diminishes the rights of copyright holders and the public at large. In the name of fostering creativity, the majority suppresses it. Vanna White and those like her have been given something they never had before, and they’ve been given it at our expense. I cannot agree.