Case 1: Eastwood v. Superior Court (National Enquirer, Inc., Real Party in Interest), 149 Cal. App. 3d 409 (Cal. App. 2d Dist. 1983)

Issue Actor/Director Clint Eastwood claimed that the National Enquirer magazine created a false article stating that he was involved romantically with singer Tanya Tucker while in a relationship with actress Sondra Locke. The magazine used a photo of him on their magazine cover, which was prominently featured in advertisements. Eastwood alleged that this was a deliberate effort to take advantage of his celebrity status and notoriety in order to promote and increase sales. The Enquirer asserted that they were protected under the First Amendment of the U.S. Constitution, which protects freedom of speech and the press, as well as California Civil Code § 3344(d), which allows a person’s name, photograph or likeness to be used without their permission in connection with a news or public affairs article. In the original trial, the “court sustained the newspaper’s demurrer to that the petitioner had failed to state a cause of action.” Eastwood then petitioned the Court of Appeal to hear his case, which led to the decision outlined below.

IP Right at Issue Right of Publicity. Eastwood claimed that the National Enquirer created a false article and used his image and name without his consent for the purpose of increasing sales of their magazine.

Rule of Law The Court of Appeal ruled against the Enquirer, stating that the false article “constitutes commercial exploitation,” therefore disqualifying it as a news account, and that it was not protected under neither the First Amendment nor Civil Code section 3344 subdivision (d). The court held the general demurrer was improperly sustained and that defendant’s use of Eastwood’s likeness could have infringed Eastwood’s right of publicity. California Civil Code § 3344 (a) and (d) § 3344. Unauthorized commercial use of name, voice, signature, photograph or likeness. (a) Any person who uses another’s name, photograph or likeness… for purposes of advertising or selling, or soliciting purchases of products, merchandise, goods or services, without such person’s prior consent.. shall be liable for any damages sustained by the person or persons injured as a result thereof... (d) For purposes of this section, a use of a name, voice, signature, photograph, or likeness in connection with any news, public affairs, or sports broadcast or account, or any political campaign, shall not constitute a use for which consent is required under subdivision (a). And U.S. Const. Amendment 1 “Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the Government for a redress of grievances.”

Case 2: Girl Scouts of United States v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y. 1969)

Issue The Girl Scouts sued Personality Posters for trademark infringement for using its slogan “Be Prepared,” along with its trefoil symbol and green uniform color, on a poster featuring a smiling and visibly pregnant girl wearing what appeared to be a Girl Scout uniform. They argued that the implied connection between the poster and their organization would cause consumers to think that the Girl Scouts created and approved of the poster and any message it may convey. Basically, they don’t want a pregnant girl and/or a message that “encourages the practice of contraception” appearing to represent their virtuous organization.

IP Right at Issue Trademark Infringement. The Girl Scouts claim that the use of their trademarked slogan “Be Prepared,” along with the trefoil symbol and green uniform color on the poster would cause consumers to associate the poster with their organization. The plaintiff argued that the poster was made to appear as if it was a Girl Scout product, and they were concerned that consumers would incorrectly believe the origin and message of the poster, as well as the featured character, had come from the Girl Scouts. They felt this misconception would imply that they condone both contraception and the immoral acts that could lead to pregnancy, thus tarnishing their reputation as an organization that supported moral behavior.

Rule of Law The court ruled in favor of the poster company, based on the fact that the Girl Scouts could provide no evidence of consumer confusion or deception by the defendant under 15 USCS § 1114 and 15 USCS § 1125. The court stated that even if someone might think the character on the poster was “actually a pregnant Girl Scout, it is highly doubtful that any such impression would be more than momentary or that any viewer would conclude that the Girl Scouts had printed or distributed the poster.” Though not expressly stated by the court, the poster company’s use of the Girl Scout’s trademark may have been allowed as fair use, if classified as lawful trademark parody. However, because the plaintiff “failed utterly to establish the requisite element of customer confusion,” the case never made it past the request for a preliminary injunction. 15 USCS § 1114 Remedies; infringement; innocent infringement by printers and publishers. And 15 USCS § 1125 False designations of origin, false descriptions, and dilution forbidden. § 1114 (1) Any person who shall, without the consent of the registrant-(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive. § 1125 (a) Civil action. (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, …, which-(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities.

Case 3: Lucasfilm, Ltd. v. High Frontier, v. Committee for a Strong, Peaceful America, et al 622 F. Supp. 931 (D.D.C. 1985)

Issue Film director/producer George Lucas wants to keep his “Star Wars” trademark out of politics and is concerned that the public will start to associate the Star Wars franchise with the government’s defense program, as well as thoughts of death and nuclear destruction, instead of futuristic fantasy. Lucasfilm, Ltd. sued to stop certain public interest groups from using the phrase “Star Wars” in their advertisements when describing the Reagan administration’s Strategic Defense Initiative (SDI), which included plans to develop nuclear weapons based in outer space. Even though the defendants’ only use of the mark was in the verbal promotion of their ideas through advertisements, Lucas argued that these groups, by broadcasting their messages as a way to inform the public, were providing a service and their messages associated with this service were therefore subject to trademark law.

IP Right at Issue Trademark Infringement and Dilution. Plaintiff is concerned that the ads will cause consumer confusion and lead to misinterpretation of what the mark represents. He feels that “the goodwill value” created by the sale of Star Wars merchandise (especially those items marketed to kids, such as dolls, toys, comic books, etc.), is threatened since the ads feature children and therefore would capture their attention, thus leading them to feel differently about the Star Wars mark. In addition, if people start widely using the phrase “Star Wars” as a general reference to nuclear weapons programs, it would no longer be associated specifically with the film franchise, which could eventually lead to dilution and render the trademark void.

Rule of Law Reminding the parties that trademark law is “to prevent unfair competition and protect consumers from fraud and deception,” the court emphasized that protection is limited to the use of the mark on competing products or services, or in a non-competing trade where the mark is used in some disreputable or disparaging way. They gave the opinion that “the defendants have not affixed any trademark to any goods or services for sale. Indeed, they are not engaged in selling anything but ideas.” The court also found the defendants were using the mark in a descriptive way when trying to educate the public about their ideas regarding SDI, but that this descriptive use would not lead to dilution of the mark. They determined that even if the “phrase Star Wars has acquired a double meaning, it has not become a generic term associated with an entire class of goods or services.” The court determined that the defendant’s use of the phrase “Star Wars” neither caused consumer confusion under 15 USCS § 1125, nor qualified as “use in commerce” under 15 USCS § 1127, and therefore they were not violating trademark law, thus ruling against Lucasfilm, Ltd. 15 USCS § 1125 False designations of origin, false descriptions, and dilution forbidden. And 15 USCS § 1127 Construction and definitions; intent of chapter. § 1125 (a) Civil action. (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, …, which-(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities. § 1127 The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce… (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.