Wendt V. Host Essay, Research Paper

US Court of Appeals for the Ninth Circuit

Case Name:WENDT V HOST INTERNATIONAL

Case Number: Date Filed:

96-55243 12/28/99

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

GEORGE WENDT, an individual;

JOHN RATZENBERGER, an individual,

Plaintiffs-Appellants,

v.

No. 96-55243

HOST INTERNATIONAL, INC., a

Delaware corporation, D.C. No.

Defendant-Appellee, CV-93-00142-R

and ORDER

PARAMOUNT PICTURES,

CORPORATION, a Delaware

corporation,

Defendant-Intervenor.

Filed December 28, 1999

Before: Betty B. Fletcher and Stephen S. Trott,

Circuit Judges, and Bruce S. Jenkins,1 District Judge.

Order; Dissent by Judge Kozinski

_________________________________________________________________

ORDER

The panel has voted to deny the petition for rehearing.

Judge Trott voted to reject the petition for rehearing en banc

and Judges B. Fletcher and Jenkins so recommend.

The full court was advised of the petition for rehearing en

_________________________________________________________________

1 Honorable Bruce S. Jenkins, Senior United States District Judge for the

District of Utah, sitting by designation.

14901

banc. An active Judge requested a vote on whether to rehear

the matter en banc. The matter failed to receive a majority of

the votes in favor of en banc consideration. Fed. R. App. P.

35.

The petition for rehearing is denied and the petition for

rehearing en banc is rejected.

_________________________________________________________________

KOZINSKI, Circuit Judge, with whom Judges KLEINFELD

and TASHIMA join, dissenting from the order rejecting the

suggestion for rehearing en banc:

Robots again. In White v. Samsung Elecs. Am., Inc., 971

F.2d 1395, 1399 (9th Cir. 1992), we held that the right of pub-

licity extends not just to the name, likeness, voice and signa-

ture of a famous person, but to anything at all that evokes that

person’s identity. The plaintiff there was Vanna White, Wheel

of Fortune letter-turner extraordinaire; the offending robot

stood next to a letter board, decked out in a blonde wig,

Vanna-style gown and garish jewelry. Dissenting from our

failure to take the case en banc, I argued that our broad appli-

cation of the right of publicity put state law on a collision

course with the federal rights of the copyright holder. See 989

F.2d 1512, 1517-18 (9th Cir. 1993).

The conflict in White was hypothetical, since the defendant

(Samsung) did not have a license from the Wheel of Fortune

copyright holder. Here it is concrete: The panel holds that

licensed animatronic figures based on the copyrighted Cheers

characters Norm and Cliff infringe on the rights of the actors

who portrayed them. As I predicted, White’s voracious logic

swallows up rights conferred by Congress under the Copy-

14902

right Act.

I

Though a bit dated now, Cheers remains near and dear to

the hearts of many TV viewers. Set in a friendly neighbor-

hood bar in Boston, the show revolved around a familiar

scene. Sam, the owner and bartender, entertained the boys

with tales of his glory days pitching for the Red Sox. Coach

piped in with sincere, obtuse advice. Diane and Frasier chat-

tered self-importantly about Lord Byron. Carla terrorized

patrons with acerbic comments. And there were Norm and

Cliff, the two characters at issue here. Norm, a fat, endearing,

oft-unemployed1 accountant, parked himself at the corner of

the bar, where he was joined by Cliff, a dweebish 2 mailman

and something of a know-it-all windbag.3 After eleven years

on the air, the gang at Cheers became like family to many

fans, ensuring many more years in syndication. See Gebe

Martinez, “Cheers” Fans Cry in Their Beers as Sitcom Ends

Long Run, L.A. Times, May 21, 1993, at B1.

Defendant Host International decided to tap into this keg of

goodwill. After securing a license from Paramount, the copy-

right holder, Host opened a line of Cheers airport bars. To

help get patrons into a Cheers mood, Host populated the bars

with animatronic figures4 resembling Norm and Cliff: One is

fat; the other is dressed as a mailman.5

_________________________________________________________________

1 Sam: “Hey, what’s happening, Norm?”

Norm: “Well, it’s a dog-eat-dog world, and I’m wearing Milk

Bone underwear.”

2 “There’s no rule against postal workers not dating women. It just

works out that way.”

3 “It’s a little known fact that the tan became popular in what is known

as the Bronze Age.”

4 As best the record discloses, these are life-size stuffed dolls that move

somewhat and play pre-recorded quips.

5 In a half-hearted attempt to avoid litigation, Host changed the robots’

names to “Hank” and “Bob.”

14903

Plaintiffs George Wendt and John Ratzenberger, the only

actors who ever portrayed Norm and Cliff, sued Host for

unfair competition and violation of their right of publicity.

Paramount intervened, claiming that its copyright preempted

any claim Wendt and Ratzenberger might have under state

law. The district court granted summary judgment for the

defendants because it found that the robots didn’t look like the

plaintiffs: “[T]here is [no] similarity at all . . . except that one

of the robots, like one of the plaintiffs, is heavier than the

other . . . . The facial features are totally different.” 125 F.3d

at 809. Relying on White, the panel here reverses but offers

little explanation beyond the curt assertion that “material facts

exist that might cause a reasonable jury to find[the robots]

sufficiently `like’ [Wendt and Ratzenberger ] to violate” their

right of publicity. Id. at 810.

II

This case, unlike White, pits actor against copyright holder.

The parties are fighting over the same bundle of intellectual

property rights–the right to make dramatic representations of

the characters Norm and Cliff. Host and Paramount as sert

their right under the Copyright Act to present the Cheers char-

acters in airport bars; Wendt and Ratzenberger assert their

right under California law to control the exploitation of their

likenesses. But to millions of viewers, Wendt and Ratzenber-

ger are Norm and Cliff; it’s impossible to exploit the latter

without also evoking thoughts about the former.

So who wins? The Copyright Act makes it simple, at least

insofar as the plaintiffs interfere with Paramount’s right to ex-

ploit the Cheers characters. Section 301 of the Copyright Act

preempts any state law “legal or equitable rights that are

equivalent to any of the exclusive rights within the general

scope of copyright[.]” 17 U.S.C. S 301(a). The copyright to

Cheers carries with it the right to make derivative works

based on its characters. See generally Warner Bros., Inc. v.

American Broadcasting Cos., 720 F.2d 231, 235 (2d Cir.

14904

1983) (Superman copyright belongs to Warner Brothers). The

presentation of the robots in the Cheers bars is a derivative

work, just like a TV clip, promotion, photograph, poster,

sequel or dramatic rendering of an episode. Thus, under fed-

eral law, Host has the unconditional right to present robots

that resemble Norm and Cliff.

Instead, the panel allows the plaintiffs to pick up where

Vanna left off: Copyright or no copyright, anyone who wants

to use a figure, statue, robot, drawing or poster that reminds

the public of Wendt and Ratzenberger must first obtain (and

pay for) their consent. This cannot be squared with the right

of the copyright holder to recreate Norm and Cliff however it

sees fit. At the very least, Paramount must be able to repro-

duce the characteristics that bring Norm and Cliff to mind.

The problem lies with the sweeping standard we adopted in

White. The right of publicity, as defined by the state courts,

is limited to using a celebrity’s name, voice, face or signature.

See, e.g., Stephano v. News Group Publications, Inc., 474

N.E.2d 580, 583-84 (N.Y. 1984) (finding right of publicity

under New York law limited to statutory protection of “name,

portrait or picture”); Lugosi v. Universal Pictures, 25 Cal. 3d

813, 828 (1979) (Mosk, J., concurring) (”If Bela Lugosi were

alive today, he would be unable to claim an invasion of his

right to privacy for Universal’s exploitation . . . of products

created in the image of Count Dracula, a role Lugosi

played.”). A copyright holder can generally avoid using any

of these tangible elements in exploiting its copyright. White

exploded the right of publicity to include anything that brings

the celebrity to mind. See White, 971 F.2d at 1399. It’s inevi-

table that so broad and ill-defined a property right will trench

on the rights of the copyright holder. According to the panel,

Paramount and Host may not use Norm and Cliff in a way

that reminds people of the actors who played them and whose

identity is therefore fused in the public mind. This is a daunt-

ing burden. Can Warner Brothers exploit Rhett Butler without

also reminding people of Clark Gable? Can Paramount cast

14905

Shelley Long in The Brady Bunch Movie without creating a

triable issue of fact as to whether it is treading on Florence

Henderson’s right of publicity? How about Dracula and Bela

Lugosi? Ripley and Sigourney Weaver? Kramer and Michael

Richards?

When portraying a character who was portrayed by an

actor, it is impossible to recreate the character without evok-

ing the image of the actor in the minds of viewers. Suppose

the Seinfeld minions create a spin-off called Kramer. One of

the Seinfeld characters was Newman, a fat mailman. Suppose

Wayne Knight–the actor who played Newman–won’t do

Kramer. So Kramer brings in someone else to play Newman,

a corpulent actor who (when dressed as a mailman) reminds

people of Wayne Knight. What happens when Knight sues?

Under White and the panel decision here, Knight can go to

trial on a claim that the new Newman evokes his (Knight’s)

identity, even though Castle Rock owns the rights to make de-

rivative works based on Seinfeld. It would be no defense that

everyone knows the new actor is not Wayne Knight; no one,

after all, thinks the robots here or in White were, in fact,

Wendt, Ratzenberger or White. So long as the casting director

comes up with a new Newman who reminds the public of the

old Newman (i.e. Knight), Knight has a right-of-publicity

claim that will at least survive summary judgment. Under the

unbounded right of publicity announced in White , copyright

holders will seldom be able to avoid trial when sued for

infringement of the right to publicity. Remember Vanna:

Even though the robot looked nothing like her, a jury awarded

her $400,000. See Vanna White Wins Suit, Wall St. J., Jan.

24, 1994, at B2.6

_________________________________________________________________

6 To avoid going to trial in such a situation, producers will have to cast

new actors who look and sound very different from the old ones. A

Seinfeld spin-off thus ends up in a bizarro world where a skinny Newman

sits down to coffee with a svelte George, a stocky Kramer, a fat Jerry and

a lanky blonde Elaine. Not only is goodwill associated with the old show

lost, the artistic freedom of the screenwriters and producers is severely

cramped.

14906

III

The panel’s refusal to recognize copyright preemption puts

us in conflict with the Seventh Circuit in Baltimore Orioles,

Inc. v. Major League Baseball Players Ass’n , 805 F.2d 663

(7th Cir. 1986). Baltimore Orioles held that the baseball clubs

–not the players–own the rights to baseball telecasts under

copyright law, and the players can’t use their state law right

of publicity to veto the telecast of their performance. This was

so even though the telecast (obviously) used the players’ iden-

tities and likenesses.

The Seventh Circuit acknowledged that the state law right

of publicity gave the players a property interest in their actual

performances, see Zacchini v. Scripps-Howard Broadcasting

Co., 433 U.S. 562 (1977), but held that this right could not

trump the Clubs’ right under the Copyright Act to control the

telecast. See 805 F.2d at 678-79. The Seventh Circuit recog-

nized, as the panel here does not, that the players and the

clubs were fighting over the same bundle of intellectual prop-

erty rights:

In this litigation, the Players have attempted to

obtain ex post what they did not negotiate ex ante.

That is to say, they seek a judicial declaration that

they possess a right–the right to control the tele-

casts of major league baseball games–that they

could not procure in bargaining with the Clubs.

Id. at 679. The clubs owned both the right to sell tickets to see

the games and the copyright to the telecast. The copyright

preempted whatever state law rights the players claimed, at

least insofar as state law would prevent ordinary use of the

copyrighted work. See also Fleet v. CBS, Inc., 50 Cal. App.

4th 1911, 1920-21 (1996). The same reasoning applies here:

The plaintiffs’ right to control the use of their likeness is pre-

empted by Paramount’s right to exploit the Norm and Cliff

characters however it sees fit. If Wendt and Ratzenberger

14907

wanted to control how the Cheers characters were portrayed

after they left the show, they should have negotiated for it

beforehand.7

IV

Coming home to roost is yet another problem I warned

about in White–that a broad reading of the state right of pub-

licity runs afoul of the dormant Copyright Clause, which pre-

empts state intellectual property laws to the extent they

“prejudice the interests of other States.” Goldstein v. Califor-

nia, 412 U.S. 546, 558 (1973). Just as a state law regulating

the length of trucks is invalid under the dormant Commerce

Clause if it poses an undue burden on interstate commerce,

see Kassel v. Consolidated Freightways Corp. , 450 U.S. 662,

674 (1981), so California’s right of publicity law is invalid if

it substantially interferes with federal copyright law, even ab-

sent preemptive legislation.

A copyright licensee must be able to exercise rights which

are inherently federal in nature without worrying that 50 sepa-

rate states will burden those rights. This is most obviously

true when state law restricts the display of derivative works

outside the borders of its state. Compare Goldstein, 412 U.S.

at 558. Yet that is exactly what the panel approves here:

_________________________________________________________________

7 The Seventh Circuit is not alone in recognizing the need to limit the

right of publicity. See, e.g., Allison v. Vintage Sports Plaques, 136 F.3d

1443, 1447-49 (11th Cir. 1998) (recognizing first sale doctrine as limiting

right of publicity). Scholars, too, have soundly rejected White. See Arlen

W. Langvardt, The Troubling Implications of a Right of Publicity “Wheel”

Spun Out of Control, 45 U. Kan. L. Rev. 329 (1997); Stephen R. Barnett,

First Amendment Limits on the Right of Publicity, 30 Tort & Ins. L.J. 635

(1995); Steven C. Clay, Starstruck: The Overextension of Celebrity

Publicity Rights in State and Federal Courts, 79 Minn. L. Rev. 485

(1994); Jeff Sanders, By Force of Persona: How the Right of Publicity

Undermines the First Amendment, 28 Beverly Hills B. Ass’n J. 13 (1994).

Even our treatment of Wendt and Ratzenberger’s claim has already been

criticized. See Felix H. Kent, Right of Privacy and of Publicity, N.Y.L.J.,

Dec. 19, 1997, at 3; Recent Case, 17 No. 4 Ent. L. Rep. 17 (1995).

14908

Plaintiffs are using California law to stop Host from display-

ing a copyrighted work in Kansas City and Cleveland. Why

California should set the national standard for what is a per-

missible use of a licensed derivative work is beyond me.

Rather than construe the right of publicity narrowly to avoid

this constitutional conundrum, see Crowell v. Benson, 285

U.S. 22, 62 (1932), the panel compounds White ’s errors by

enforcing California’s right of publicity way beyond Califor-

nia’s borders.

V

The First Amendment concerns raised by White are even

more pressing here. White was an advertisement and therefore

subject to the less demanding commercial speech standard of

Central Hudson Gas & Elec. Corp. v. Public Serv. Comm.,

447 U.S. 557, 561-63 (1980). Here, the portrayal of the

Cheers characters is core protected speech: Using Norm and

Cliff dummies in a Cheers-themed bar is a dramatic presenta-

tion.8 It’s like a play. Cheers may not have the social impact

of Hair, see Southeastern Promotions, Ltd. v. Conrad, 420

U.S. 546 (1975), but it’s a literary work nonetheless, worthy

of the highest First Amendment protection from intrusive

state laws like California’s right-of-publicity statute. See

Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95

F.3d 959, 970-72 (10th Cir. 1996). Host did not plaster

Wendt’s face on a billboard with a Budweiser logo. It cashed

in on the Cheers goodwill by creatively putting its familiar

mise-en-scene to work. The robots are a new derivation of a

copyrighted work, not unlike a TV series based on a movie or

_________________________________________________________________

8 No doubt the decision to put animatronic Norm and Cliff figures in the

bars was profit-driven. But that doesn’t mean Central Hudson applies: The

Supreme Court limits the outhouse of commercial speech to pure

advertising–speech that does no more than propose a commercial trans-

action. Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer

Council, Inc., 425 U.S. 748, 762 (1976); Nordyke v. Santa Clara County,

110 F.3d 707, 710 (9th Cir. 1997); Cardtoons, L.C. v. Major League Base-

ball Players Ass’n, 95 F.3d 959, 970 (10th Cir. 1996).

14909

a Broadway play based on a novel. The novelty of using ani-

matronic figures based on TV characters ought to prick up our

ears to First Amendment concerns. Instead we again let the

right of publicity snuff out creativity.

VI

As I noted in White, “No California statute, no California

court has actually tried to reach this far. It is ironic that it is

we who plant this kudzu in the fertile soil of our federal sys-

tem.” 989 F.2d at 1519. We pass up yet another opportunity

to root out this weed. Instead, we feed it Miracle-Gro. I dis-

sent.

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http://www.ca9.uscourts.gov/ca9/newopinions.nsf/04485f8dcbd4e1ea882569520074e698/b3ec68ff03b90b06882569580068d047?OpenDocument

Case Name:WENDT V HOST INTERNATIONAL INC

Case Number: Date Filed:

96-55243 09/22/97

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

GEORGE WENDT, an individual;

JOHN RATZENBERGER, an individual,

Plaintiffs-Appellants,

v.

No. 96-55243

HOST INTERNATIONAL, INC., a

D.C. No.

Delaware corporation;

CV-93-142-R

Defendant-Appellee,

OPINION

and

PARAMOUNT PICTURES CORPORATION,

a Delaware corporation,

Defendant-Intervenor.

Appeal from the United States District Court

for the Central District of California

Manuel L. Real, District Judge, Presiding

Argued and Submitted

March 11, 1997–Pasadena, California

Filed September 22, 1997

Before: Betty B. Fletcher and Stephen S. Trott,

Circuit Judges, and Bruce S. Jenkins,* District Judge.

Opinion by Judge Fletcher

_________________________________________________________________

*Honorable Bruce S. Jenkins, Senior United States District Judge for

the District of Utah, sitting by designation.

12347

SUMMARY

The summary, which does not constitute a part of the opinion of the court,

is copyrighted C 1994 by Barclays Law Publishers.

_________________________________________________________________

Intellectual Property/Entertainment

The court of appeals reversed a judgment of the district

court. The court held that actors have statutory and common-

law rights against the unauthorized use of their likenesses in

promotional figures based on an infringer’s copyrighted char-

acters.

Appellants George Wendt and John Ratzenberger are actors

who played the characters of “Norm” and “Cliff” in the

Cheers television series. They sued appellee Host Interna-

tional, Inc. alleging violations of their trademark and publicity

rights under Cal. Civ. Code S 3344 (liability for unauthorized

commercial use of person’s likeness), California common

law, and unfair competition under the Lanham Act. The com-

plaint alleged that Host had used their likenesses without

authorization in “animatronic,” i.e., robot, figures in airport

Cheers bars.

In Wendt I, the Ninth Circuit held that the state-law claims

were not preempted by federal copyright law, and that sum-

mary judgment for Host was inappropriate because the district

court’s comparison of photographs of Wendt and Ratzenber-

ger with photographs of the robots was insufficient to resolve

their claims under S 3344, and that the comparison had to be

made without reference to the context in which the images

appeared. The court also concluded that disputed issues of

material fact remained regarding the common-law claims

because the similarity between the actors’ physical character-

istics and those of the robots was disputed. Lastly, the court

ruled that the Lanham Act claims required the application of

a standard test to determine whether Host’s conduct created

a likelihood of confusion as to whether the actors were

endorsing Host’s product.

12348

On remand, Host again moved for summary judgment.

Wendt and Ratzenberger presented evidence of actual confu-

sion among members of the public in the form of comments

by travelers in airport Cheers bars. The district court excluded

their proffered consumer survey taken in the vicinity of

Cheers bars. Wendt and Ratzenberger also submitted evi-

dence that Host intentionally designed the robot figures to

resemble them because the value of the association of the

robots with them was “a major drawing card” of the Cheers

concept. Ratzenberger testified that he had rejected offers

from small breweries to appear in their advertisements in

order to be available to a large brewery.

The district court made an in-court comparison of Wendt

and Ratzenberger with the actual robots (now named “Hank”

and “Bob”), finding that there was no similarity except that

one was heavier than the other. The court granted Host’s

motion, dismissed the action, and awarded Host attorneys

fees.

Wendt and Ratzenberger appealed, contending that dis-

missal was inappropriate because material issues of fact

remained as to the degree to which the robots appropriated

their likenesses. They asserted that the likenesses did not have

to be identical or photographic, and that the determination of

the issue was for the jury. Wendt and Ratzenberger conceded

that they retained no rights to the characters Norm and Cliff,

but asserted that “Bob” and “Hank” were not related to Para-

mount’s copyright of the creative elements of the characters

Norm and Cliff. It was their contention that it was the physi-

cal likeness to them that had commercial value to Host.

Host countered that the figures appropriated only the identi-

ties of the characters of Norm and Cliff, to which intervenor

Paramount Pictures Corp. owned the copyrights, and not the

identities of Wendt and Ratzenberger. It was Host’s position

that Wendt and Ratzenberger could not claim appropriation of

12349

identity by relying on indicia like the Cheers bar set that were

the property of or licensed by a copyright owner.

[1] The degree to which the robots resembled, caricatured,

or bore an impressionistic resemblance to Wendt and Ratzen-

berger was material to the claim of violations ofS 3344. Sum-

mary judgment would have been appropriate on remand only

if no genuine issues of material fact concerning the degree of

that resemblance were raised by Wendt and Ratzenberger. [2]

Material facts existed that might have caused a reasonable

jury to find them sufficiently “like” Wendt and Ratzenberger

to violate S 3344.

[3] Wendt and Ratzenberger were not seeking to prevent

Paramount from exhibiting its copyrighted work in the Cheers

series. Their claims were not preempted by the copyright stat-

ute so long as they contained elements, such as the invasion

of personal rights, that were different in kind from copyright

infringement. As a general proposition, S 3344 is intended to

protect rights that cannot be copyrighted.

[4] California recognizes a common-law right of privacy

that includes protection against appropriation for the defen-

dant’s advantage of the plaintiff’s name or likeness. The right

is referred to as the “right of publicity.” A common-law cause

of action for appropriation of name or likeness may be alleged

by pleading (1) the defendant’s use of the plaintiff’s identity;

(2) appropriation of the plaintiff’s name or likeness to the

defendant’s advantage; (3) lack of consent; and (4) resulting

injury.

[5] This common-law right protects against more than

knowing use of a plaintiff’s name or likeness for commercial

purposes. It also protects against appropriations of the plain-

tiff’s identity by other means. [6] While it was true that

Wendt’s and Ratzenberger’s fame arose in large part through

their participation in Cheers, an actor does not lose the right

12350

to control the commercial exploitation of his or her likeness

by portraying a fictional character.

[7] Wendt and Ratzenberger raised genuine issues of mate-

rial fact concerning the degree to which the figures looked

like them. Because they did so, they also raised triable issues

as to whether Host sought to appropriate their likenesses for

its own advantage, and whether it succeeded. The issue for the

jury was whether the defendants were commercially exploit-

ing the likeness of the figures to Wendt and Ratzenberger

intending to engender profits.

[8] The Lanham Act prohibits the use of any symbol or

device that is likely to deceive consumers as to the associa-

tion, sponsorship, or approval of goods or services by another

person. Wendt’s and Ratzenberger’s claim was for false

endorsement–that by using an imitation of their unique phys-

ical characteristics, Host misrepresented their association with

and endorsement of the Cheers bar concept.

[9] To determine if it was likely that Host’s conduct created

a likelihood of confusion as to whether Wendt and Ratzenber-

ger were endorsing Host’s product, an eight-factor test

applied. This test required consideration of (1) the strength of

the plaintiff’s mark; (2) relatedness of the goods; (3) similar-

ity of the marks; (4) evidence of actual confusion; (5) market-

ing channels used; (6) likely degree of purchaser care; (7)

defendant’s intent in selecting the mark; and (8) likelihood of

expansion of the product lines.

[10] On remand, the district court simply compared the

robots with Wendt and Ratzenberger and awarded judgment

because there was no similarity. The court erred in failing to

analyze any of the other relevant factors to determine whether

there was a likelihood of confusion to consumers as to

whether Wendt and Ratzenberger sponsored, approved of, or

were otherwise associated with the Cheers bars. [11] The

Lanham Act’s likelihood of confusion standard is predomi-

12351

nantly factual. Summary judgment is inappropriate when a

jury could reasonably conclude that most of the factors

weighed in the plaintiff’s favor.

[12] The district court erred in rejecting the Lanham Act

claim at the summary judgment stage because a jury could

reasonably have concluded that most of the factors weighed

in favor of Wendt and Ratzenberger. They were principal

players on Cheers, a popular television show. They were well

known among the target customers of Host’s Cheers bars. A

jury could reasonably have concluded that their mark was

strong.

[13] For the same reasons, their “goods” (their skills and

fame as actors) were obviously related to Host’s “goods” (the

products sold in the Cheers bars and the bars themselves)

even if they were not strictly competitive. The issue was

whether a consumer would be confused as to Wendt’s and

Ratzenberger’s association with or sponsorship of Host’s bars.

The source of their fame and the Host bars was identical: the

Cheers television series.

[14] Similarity of the marks was the primary issue in dis-

pute. Because Wendt and Ratzenberger raised triable issues of

material fact concerning the degree to which the robots

resembled them, a reasonable jury might have found that this

factor weighed in their favor. Under the Lanham Act, in cam-

era inspection is not sufficient. The district court had to view

the marks as they appeared in the marketplace.

[15] Wendt and Ratzenberger presented evidence of actual

consumer confusion in their declarations and in the form of

survey evidence. This evidence should not have been

excluded. Sufficient evidence existed by which a reasonable

jury might have inferred actual consumer confusion.

[16] The factor of marketing channels used weighed in

favor of Wendt and Ratzenberger. The allegation that appro-

12352

priating their likenesses because the target audience of the

Cheers bars was customers who were fans of the television

series was a similarity in marketing channels that suggested

that there was at least a likelihood of consumer confusion.

[17] The factor of degree of purchaser care weighed in

favor of Wendt and Ratzenberger as well. Consumers were

not likely to be particularly careful in determining who

endorses or is affiliated with an airport bar in which they

might purchase a single beverage. They would be even less

likely to scrutinize the source of the figures used to attract

patrons. This low degree of care made confusion of sponsor-

ship likely.

[18] Wendt and Ratzenberger alleged facts that could have

given rise to an inference that Host intended to confuse cus-

tomers as to their sponsorship or endorsement of the Cheers

bars by creating robots with their physical characteristics.

Based on the evidence in opposition to summary judgment, an

inference could have been raised that Host intended to exploit

their celebrity by confusion as to the similarity between the

figures and Wendt and Ratzenberger.

[19] The factor of likelihood of expansion of product lines

weighed in Wendt’s and Ratzenberger’s favor as the potential

existed that in the future, Ratzenberger’s endorsement of

other beers would be confused with his alleged endorsement

of the beers sold at Host’s bars.

[20] A reasonable jury could have concluded that most of

the factors weighed in favor of Wendt and Ratzenberger, and

that Host’s conduct created at least the likelihood of consumer

confusion. Whether their Lanham Act claim should succeed

was a matter for the jury.

[21] In trademark cases, surveys are to be admitted as long

as they are conducted according to accepted principles and are

relevant. Challenges to methodology go to the weight given

12353

the survey, not its admissibility. On remand, the parties

should have the opportunity respectively to lay a foundation

for admission of the survey, or to challenge the adequacy of

the foundation.

_________________________________________________________________

COUNSEL

David A. Pash, Kinsella, Boesch, Fujikawa & Towle, Los

Angeles, California, for the plaintiffs-appellants.

William T. Rintala, Rintala, Smoot, Jaenicke & Rees, Los

Angeles, California, for the defendants-appellees.

Robert S. Chapman, Greenberg, Glusker, Fields, Claman &

Machtinger, Los Angeles, California, for the defendant-

intervenor.

_________________________________________________________________

OPINION

FLETCHER, Circuit Judge:

Actors George Wendt and John Ratzenberger appeal the

district court’s grant of summary judgment in favor of Host

International, Inc. (”Host”) and applicant in intervention Para-

mount Pictures Corporation (”Paramount”), dismissing their

action for violations of the Lanham Act, 15 U.S.C.S 1125(a),

and California’s statutory and common law right of publicity.

We reverse.

I. OVERVIEW

Wendt and Ratzenberger argue that the district court erred

in dismissing their action because they have raised issues of

material fact as to whether Host violated their trademark and

publicity rights by creating animatronic robotic figures (the

12354

“robots”) based upon their likenesses without their permission

and placing these robots in airport bars modeled upon the set

from the television show Cheers. They also appeal the district

court’s orders excluding appellants’ survey evidence, barring

presentation of expert testimony, and awarding Host and Par-

amount attorney’s fees. We have jurisdiction, 28 U.S.C.

S 1291, and we reverse and remand for trial.

II. PROCEDURAL HISTORY

In Wendt v. Host, 1995 WL 115571 (9th Cir. 1995)

(”Wendt I”), we reversed the first grant of summary judgment

in this action and remanded. We held that appellants’ state

law causes of action were not preempted by federal copyright

law and that disputed issues of material fact precluded sum-

mary judgment because the district court’s comparison of

photographs of appellants Wendt and Ratzenberger with pho-

tographs of the animatronic figures was not sufficient to

resolve their claims under Cal. Civ. Code S 3344:

The question here is whether the three dimensional

animatronic figures are sufficiently similar to plain-

tiffs to constitute their likenesses. Based on the lim-

ited record before us, it cannot be said as a matter of

law that the figures are so dissimilar from plaintiffs

that no reasonable trier of fact could find them to be

`likenesses.’ That question must be determined by a

comparison of the actual, three-dimensional entities.

1995 WL 115571 at *2. We concluded that this comparison

must be decided without reference to the context in which the

image appears. Id. (citing White v. Samsung Elec. Am., Inc.,

971 F.2d 1395, 1397 (9th Cir. 1992), cert. denied., _______ U.S.

_______, 113 S. Ct. 2443 (1993)). We found that there were dis-

puted issues of material fact concerning the appellants’ com-

mon law right of publicity claims because the similarity

between appellants’ physical characteristics and those of the

robots is disputed. Id. at *3. Finally, we held that the appel-

12355

lants’ claims for unfair competition under S 43(a) of the Lan-

ham Act, 15 U.S.C. S 1125(a), require the application of a

“well settled eight factor test” to determine whether Host’s

conduct has created a likelihood of confusion as to whether

appellants were endorsing Host’s product. Id.

Upon remand, the district court granted summary judgment

for a second time after an in-court inspection of the robots. It

held that it could not “find, by viewing both the robotics and

the live persons of Mr. Wendt and Mr. Ratzenberger, that

there is any similarity at all . . . except that one of the robots,

like one of the plaintiffs, is heavier than the other . . . The

facial features are totally different.” The district court then

awarded attorney’s fees to Host and Paramount pursuant to

Cal. Civ. Code S 3344.

Appellants argue that despite the district court’s compari-

son of the animatronic figures and the appellants, dismissal

was inappropriate because material issues of fact remain as to

the degree to which the animatronic figures appropriate the

appellants’ likenesses. Appellants claim that the district court

erred in determining that the robots were not likenesses of the

appellants because the “likeness” need not be identical or

photographic. Further, they argue that the likeness determina-

tion is an issue for the jury to decide in this case. We agree.

III. ANALYSIS

We review a grant of summary judgment de novo. Jesinger

v. Nevada Federal Credit Union, 24 F.3d 1127, 1130 (9th Cir.

1994). We must determine, viewing the evidence in the light

most favorable to the nonmoving party, whether there are any

genuine issues of material fact, and whether the district court

correctly applied the relevant substantive law. Id. We are not

to weigh the evidence or determine the truth of the matter, but

only to determine whether there is a genuine issue for trial. Id.

The district court’s rulings excluding damage evidence and

expert testimony are governed by an abuse of discretion stan-

12356

dard, and should not be reversed absent some prejudice.

Masson v. New Yorker Magazine, Inc., 85 F.3d 1394, 1399

(9th Cir. 1996). Our review is governed by the `law of the

case’ doctrine, which prevents courts from “reconsidering an

issue previously decided by the same court, or a higher court

in the identical case.” Securities Investor Protection Corp. v.

Vigman, 74 F.3d 932, 937 (9th Cir. 1996).

A. The Statutory Right of Publicity

California Civil Code S 3344 provides in relevant part:

[a]ny person who knowingly uses another’s name,

voice, signature, photograph, or likeness, in any

manner, . . . for purposes of advertising or selling,

. . . without such person’s prior consent . . . shall be

liable for any damages sustained by the person or

persons injured as a result thereof.

[1] In White, 971 F.2d at 1397, we ruled that a robot with

mechanical features was not a “likeness” underS 3344. How-

ever, we specifically held open the possibility that a manikin

molded to Vanna White’s precise features, or one that was a

caricature or bore an impressionistic resemblance to White

might become a likeness for statutory purposes. Id. The

degree to which these robots resemble, caricature, or bear an

impressionistic resemblance to appellants is therefore clearly

material to a claim of violation of Cal. Civ. CodeS 3344.

Summary judgment would have been appropriate upon

remand only if no genuine issues of material fact concerning

that degree of resemblance were raised by appellants. Fed. R.

Civ. P. 56.

[2] Despite the district court’s assertions that no reasonable

jury could find that the robots are “similar in any manner

whatsoever to Plaintiffs,” we respectfully disagree. Without

making any judgment about the ultimate similarity of the fig-

ures to the appellants, we conclude from our own inspection

12357

of the robots that material facts exist that might cause a rea-

sonable jury to find them sufficiently “like” the appellants to

violate Cal. Civ. Code S 3344.

We reject appellees’ assertion that Fleet v. CBS, 58 Cal.

Rptr. 2d 645 (Cal. Ct. App. 1996) is new controlling authority

that requires us to revisit the determination on first appeal that

appellants’ S 3344 claims are not preempted by federal copy-

right law. Wendt I, 1995 WL 115571, at *1. Fleet is not con-

trolling new authority on the preemption issue. It holds that

an actor may not bring an action for misappropriation under

Cal. Civ. Code S 3344 when the only claimed exploitation

occurred through the distribution of the actor’s performance

in a copyrighted movie. Id. at 651 (”Appellants may choose

to call their claims misappropriation of right to publicity, but

if all they are seeking is to prevent a party from exhibiting a

copyrighted work they are making a claim equivalent to an

exclusive right within the general scope of copyright.”) (inter-

nal quotations omitted).

[3] Appellants here are not seeking to prevent Paramount

from exhibiting its copyrighted work in the Cheers series. As

we stated in Wendt I, their “claims are not preempted by the

federal copyright statute so long as they `contain elements,

such as the invasion of personal rights . . . that are different

in kind from copyright infringement.’ ” Wendt I, 1995 WL

115571 at * 1 (quoting Waits v. Frito-Lay, Inc., 978 F.2d

1093, 1100 (9th Cir. 1992) (citing H.R. Rep. No. 1476, 94th

Cong., 2d Sess. 132 (1976)). The Fleet court acknowledged

that it simply found a fact-specific exception to the general

rule that “as a general proposition section 3344 is intended to

protect rights which cannot be copyrighted.” Fleet, 58 Cal.

Rptr. 2d at 649.

Appellants’ claims are not preempted by federal copyright

law. Issues of material fact exist concerning the degree to

which the robots are like the appellants. We reverse the grant

12358

of summary judgment on the claim under Cal. Civ. Code

S 3344.

B. Common-Law Right of Publicity

[4] California recognizes a common law right of privacy

that includes protection against appropriation for the defen-

dant’s advantage of the plaintiff’s name or likeness. Eastwood

v. Super. Ct. for Los Angeles County, 198 Cal. Rptr. 342, 347

(Cal. Ct. App. 1983). The right to be protected against such

appropriations is also referred to as the “right of publicity.”

Id. A common law cause of action for appropriation of name

or likeness may be pleaded by alleging 1) the defendant’s use

of the plaintiff’s identity; 2) the appropriation of plaintiff’s

name or likeness to defendant’s advantage, commercially or

otherwise; 3) lack of consent; and 4) resulting injury. Id.

(citing Prosser, Law of Torts S 117 804-07 (4th ed. 1971)).

The so-called right of publicity means in essence that

the reaction of the public to name and likeness,

which may be fortuitous or which may be managed

and planned, endows the name and likeness of the

person involved with commercially exploitable

opportunities. The protection of name and likeness

from unwarranted intrusion or exploitation is the

heart of the law of privacy.

Lugosi v. Universal Pictures, 603 P.2d 425, 431 (1979).

[5] We have held that this common-law right of publicity

protects more than the knowing use of a plaintiff’s name or

likeness for commercial purposes that is protected by Cal.

Civ. Code S 3344. It also protects against appropriations of

the plaintiff’s identity by other means. See White, 971 F.2d at

1398 (”[a] rule which says that the right of publicity can be

infringed only through the use of nine different methods of

appropriating identity merely challenges the clever advertis-

ing strategist to come up with the tenth.”); see also Abdul-

12359

Jabbar v. General Motors Corp., 85 F.3d 407, 415 (9th Cir.

1996) (common law right protects identity, which is more

flexible than the statutory `laundry list’ of particular means of

appropriation); Midler v. Ford Motor Co., 849 F.2d 460, 463-

64 (9th Cir. 1988) (concluding that there was a claim for vio-

lation under common law right of publicity, but not Cal. Civ.

Code S 3344, for use of sound-alike singer in advertisement);

Motschenbacher v. R.J. Reynolds Tobacco Co., 498 F.2d 821,

827 (9th Cir. 1974) (concluding that there was a common-law

claim from use of an identifiable race car in an advertisement,

even though name or likeness of famous driver was not visi-

ble).

Appellees argue that the figures appropriate only the identi-

ties of the characters Norm and Cliff, to which Paramount

owns the copyrights, and not the identities of Wendt and Rat-

zenberger, who merely portrayed those characters on telev-

sion and retain no licensing rights to them. They argue that

appellants may not claim an appropriation of identity by rely-

ing upon indicia, such as the Cheers Bar set, that are the prop-

erty of, or licensee of, a copyright owner. Sinatra v. Goodyear

Tire & Rubber Co., 435 F.2d 711, 716 (9th Cir. 1970).

Appellants freely concede that they retain no rights to the

characters Norm and Cliff; they argue that the figures, named

“Bob” and “Hank,” are not related to Paramount’s copyright

of the creative elements of the characters Norm and Cliff.

They argue that it is the physical likeness to Wendt and Rat-

zenberger, not Paramount’s characters, that has commercial

value to Host.

[6] While it is true that appellants’ fame arose in large part

through their participation in Cheers, an actor or actress does

not lose the right to control the commercial exploitation of his

or her likeness by portraying a fictional character. Lugosi, 603

P.2d at 431.

[7] Appellants have raised genuine issues of material fact

concerning the degree to which the figures look like them.

12360

Because they have done so, appellants have also raised triable

issues of fact as to whether or not appellees sought to appro-

priate their likenesses for their own advantage and whether

they succeeded in doing so. See Midler, 849 F.2d at 463. The

ultimate issue for the jury to decide is whether the defendants

are commercially exploiting the likeness of the figures to

Wendt and Ratzenberger intending to engender profits to their

enterprises. See Eastwood, 198 Cal. Rptr. at 349 (”The first

step toward selling a product or service is to attract the con-

sumer’s attention.”) We therefore reverse the grant of sum-

mary judgment on the common law right of publicity claim.

C. Unfair Competition

[8] Section 43(a) of the Lanham Act (15 U.S.C. S 1125(a))

prohibits, inter alia, the use of any symbol or device which

is likely to deceive consumers as to the association, sponsor-

ship, or approval of goods or services by another person. The

appellants’ claim is for false endorsement–that by using an

imitation of their unique physical characteristics, Host misrep-

resented their association with and endorsement of the Cheers

bars concept.

In Waits, 978 F.2d at 1110, we held such a claim actionable

under S 43(a):

[a] false endorsement claim based on the unautho-

rized use of a celebrity’s identity . . . alleges the mis-

use of a trademark, i.e., a symbol or device such as

a visual likeness, vocal imitation, or other uniquely

distinguishing characteristic, which is likely to con-

fuse consumers as to the plaintiff’s sponsorship or

approval of the product.

[9] In Wendt I we held that appellants would have a claim

if “Host’s conduct had created a likelihood of confusion as to

whether plaintiffs were endorsing Host’s product. ” 1995 WL

115571 at *3. In order to determine whether or not such con-

12361

fusion is likely to occur, we referred to a “well settled eight

factor test” to be applied to celebrity endorsement cases,

Newton v. Thomason, 22 F.3d 1455, 1462 (9th Cir. 1994).

This test requires the consideration of:

1) the strength of the plaintiff’s mark;1

2) relatedness of the goods;

3) similarity of the marks;

4) evidence of actual confusion;

5) marketing channels used;

6) likely degree of purchaser care;

7) defendant’s intent in selecting the mark;

8) likelihood of expansion of the product lines.

Id. at 1462 (citing AMF, Inc. v. Sleekcraft Boats, 599 F.2d

341 (9th Cir. 1979)).

In Wendt I we concluded that one of the primary factors of

this test was the `similarity of the marks’ and because there

was a disputed issue of material fact as to that issue, summary

judgment was inappropriate on this claim.

[10] On remand, however, the district court simply com-

pared the robots with the appellants in the courtroom and

awarded judgment because there was “no similarity at all.”

The district court erred in failing independently to analyze

any of the other relevant factors to determine whether or not

_________________________________________________________________

1 In a case involving confusion over endorsement by a celebrity plaintiff,

`mark’ means the celebrity’s persona and the strength of the mark refers

to the level of recognition the celebrity enjoys. White, 971 F.2d at 1400.

12362

there was a likelihood of confusion to consumers as to

whether appellants sponsored, approved of, or were otherwise

associated with the Cheers bars.

[11] The Lanham Act’s `likelihood of confusion’ standard

is predominantly factual in nature. Summary judgment is

inappropriate when a jury could reasonably conclude that

most of the factors weigh in a plaintiff’s favor. Abdul-Jabbar,

85 F.3d at 413 (9th Cir. 1996). See also MDT Corporation v.

New York Stock Exchange, Inc., 858 F. Supp. 1028, 1032

(C.D. Cal. 1994) (summary judgment disfavored in trademark

cases because the ultimate issue of likelihood of confusion is

so inherently factual).

[12] Application of these factors indicates that the district

court erred in rejecting appellants’ Lanham Act claim at the

summary judgment stage because a jury could reasonably

conclude that most of the factors weigh in appellants’ favor.

Wendt and Ratzenberger were principal players on Cheers, a

popular television show. They are clearly well-known among

the target customers of Host’s Cheers bars. For the purposes

of this analysis, a jury could reasonably conclude that their

mark is strong.

[13] For the same reason, their `goods’ (their skill and fame

as actors) are obviously related to Host’s `goods’ (the prod-

ucts sold in the Cheers bars and the bars themselves) even if

they are not strictly competitive. The issue is whether a con-

sumer would be confused as to Wendt and Ratzenberger’s

association with or sponsorship of Host’s bars. See White, 971

F.2d at 1400 (”In cases concerning confusion over celebrity

endorsement, the plaintiff’s `goods’ concern the reasons for or

source of the plaintiff’s fame.”) The source of their fame and

the Host bars are identical: the Cheers television series. A jury

could conclude that this factor weighs in appellants’ favor

because it would be reasonable for a customer to be confused

as to the nature of Wendt and Ratzenberger’s association with

Host’s Cheers bars and the goods sold there.

12363

[14] The third factor, the similarity of the marks, is the pri-

mary issue in dispute. Because appellants have raised triable

issues of material fact concerning the degree to which the

robots resemble the appellants, a reasonable jury might find

that this factor weighs in appellants’ favor. Under the Lanham

Act, in camera inspection is not sufficient; the district court

must view the marks “as they appear in the marketplace.” E

& J Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291

(9th Cir. 1992).

[15] Appellants presented evidence of actual confusion, the

fourth factor. Both Ratzenberger and Wendt stated in their

declarations that they have been approached by members of

the public who commented on the similarity between the

appellants and the robots at the Cheers airport bars: “The

usual comment is some variation on `Hey George, I just had

a drink with you in Kansas City.’ ” They also submitted evi-

dence of consumer confusion to the district court prior to

summary judgment in the form of survey evidence. The court

rejected this evidence as “not a good survey. ” For reasons

detailed below, this evidence should not have been excluded.

Sufficient evidence exists by which a reasonable jury might

infer actual consumer confusion.

[16] The fifth factor, marketing channels used, weighs in

the appellants’ favor. The allegation is that Host is appropriat-

ing appellants’ likenesses because the target audience of the

Cheers bars are customers who are fans of the television

series. Such a similarity in marketing channels suggests that

there is at least a likelihood of consumer confusion.

[17] The sixth factor, likely degree of purchaser care,

weighs in favor of appellants as well. Consumers are not

likely to be particularly careful in determining who endorses

or is affiliated with an airport bar in which they might pur-

chase only a single beverage. They will be even less likely to

scrutinize the source of the animatronic figures which are not

for sale, but are used instead to attract patrons to the bars.

12364

This low degree of care makes confusion of sponsorship

likely. See White, 971 F.2d at 1400 (”consumers are not likely

to be particularly careful in determining who endorses VCR’s,

making confusion as to their endorsement more likely.”)

[18] The seventh factor is defendant’s intent in selecting

the mark. Appellants have alleged facts that could give rise to

an inference that Host intended to confuse customers as to

Wendt and Ratzenberger’s sponsorship or endorsement of the

Cheers bars by creating robots with their physical characteris-

tics. See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 354 (9th

Cir. 1979) (”When the alleged infringer knowingly adopts a

mark similar to another’s, reviewing courts presume that the

defendant can accomplish his purpose: that is, that the public

will be deceived.”). In their opposition to summary judgment

appellants submitted evidence that Host intentionally

designed the animatronic figures to resemble Wendt and Rat-

zenberger and that it recognized from the outset that the value

of the association with Wendt and Ratzenberger themselves

was “a major drawing card of the Cheers concept. ” After

being advised that appellants would not agree to the use of

their likenesses, Host altered the robots cosmetically, named

them “Hank” and “Bob,”2 and refused to recast them into a

“friendly neighborhood couple,” as they were advised to do

by Paramount. Based on this evidence, an inference can be

raised that Host intended to exploit the appellants’ celebrity

by confusion as to the similarity between the figures and the

appellants.

[19] We have found that the eighth factor, likelihood of

expansion of the product lines, “does not appear apposite to

a celebrity endorsement case,” White, 971 F.2d at 1401. Here,

however, Ratzenberger has offered evidence that he would

like to appear in advertisements for beer and has declined

offers from small breweries in order to be available to a large

_________________________________________________________________

2 Until that point “Hank” was referred to in the record as “Cliff” and

“Bob” as “Norm.”

12365

brewery. “Inasmuch as a trademark owner is afforded greater

protection against competing goods, a `strong possibility’ that

either party may expand his business to compete with the

other will weigh in favor of finding that the present use is

infringing.” Sleekcraft, 599 F.2d at 354 (citing Restatement of

Torts S 731(b)). This factor therefore weighs in appellants’

favor as the potential exists that in the future Ratzenberger’s

endorsement of other beers would be confused with his

alleged endorsement of the beers sold at Host’s bars.

[20] A reasonable jury could conclude that most of the fac-

tors weigh in appellants’ favor and that Host’s alleged con-

duct creates at least the likelihood of consumer confusion.

Whether appellants’ Lanham Act claim should succeed, of

course, is a matter for the jury. Accordingly, we reverse the

dismissal of the unfair competition claim and remand.

D. Exclusion of Survey Evidence

In their opposition to Paramount’s summary judgment

motion, appellants offered into evidence the results of a con-

sumer survey taken in the vicinity of the Cheers bars at the

Cleveland and Kansas City airports. The district court refused

to admit the evidence, saying that the evidence was “not a

good survey.”

[21] As the record stood, the refusal was an abuse of discre-

tion. In trademark cases, surveys are to be admitted as long

as they are conducted according to accepted principles and are

relevant. E & J Gallo Winery, 967 F.2d at 1280; see also Pru-

dential Ins. Co. of Am. v. Gibraltar Fin. Corp., 694 F.2d

1150, 1156 (9th Cir. 1982). Challenges to survey methodol-

ogy go to the weight given the survey, not its admissibility.

Prudential Ins., 694 F.2d at 1156. However, because of the

paucity of the record, upon remand, the parties should have

the opportunity respectively to lay a foundation for the admis-

sion of the survey or to challenge the adequacy of the founda-

tion.

12366

E. Exclusion of Expert Testimony

Prior to the first appeal in this case the district court issued

a Preclusion Order barring the introduction of expert testi-

mony as a sanction against appellants’ former counsel for fail-

ure to disclose damage evidence and for being late disclosing

experts. Upon remand, the district court denied appellants’

request that it vacate its order.

The initial Preclusion Order was issued on August 9, 1993

as a sanction against appellants’ former counsel. At that time,

counsel’s failure to comply with discovery rules potentially

prejudiced Host and Paramount’s ability to prepare ade-

quately for trial. Today, that is not so. Both parties now have

ample opportunity to begin the expert disclosure procedure

anew.

Wanderer v. Johnston, 910 F.2d 652, 656 (9th Cir. 1990),

requires us to determine whether a sanction is proper under a

five-factor test analyzing: 1) the public’s interest in expedi-

tious resolution of litigation; 2) the court’s need to manage its

docket; 3) the risk of prejudice to the defendants; 4) the public

policy favoring disposition of cases on their merits; 5) the

availability of less drastic sanctions. We conclude that under

this test, the Preclusion Order is no longer proper. Less drastic

sanctions are available and the defendants are no longer preju-

diced by the actions of appellants’ former counsel. We grant

appellants’ request to vacate the Preclusion Order upon

remand. However, the district court, may, in its discretion,

impose reasonable monetary sanctions upon appellants’ for-

mer counsel for failure to comply with discovery rules.

F. Attorney’s Fees

Because we reverse the grant of summary judgment under

Cal. Civ. Code S 3344, we reverse the grant of attorney’s fees

to Host and Paramount and deny their requests for attorney’s

fees on appeal.

12367

IV. CONCLUSION

The grant of summary judgment is reversed and the case is

remanded to the district court for trial. The admission of the

survey evidence should be reconsidered at trial. The Preclu-

sion Order is vacated and appropriate sanctions other than

preclusion may be considered. The grant of attorney’s fees is

reversed.

REVERSED and REMANDED.

12368

http://www.ca9.uscourts.gov/ca9/newopinions.nsf/04485f8dcbd4e1ea882569520074e698/38e97db86b8c25c58825695800725cb9?OpenDocument

Supreme Court says Norm and Cliff can sue over robots

October 2, 2000

Web posted at: 10:43 AM EDT (1443 GMT)

WASHINGTON (AP) — The Supreme Court refused to derail a lawsuit in which actors George Wendt and John Ratzenberger, who portrayed endearing barflies “Norm” and “Cliff” in the “Cheers” television comedy, say two robots stole their old act.

The justices, acting without comment on Monday, rejected an appeal in which Paramount Pictures Corp. and Host International Inc. sought to squelch the right-of-publicity case.

Paramount produced the popular “Cheers” show, which ran on network television from 1982 to 1993 and continues to run in syndication.

Set in a friendly neighborhood bar in Boston — the kind of place where “everybody knows your name” — the show featured, among others, Wendt as the fat and often-unemployed Norm Peterson and Ratzenberger as nerdy mailman Cliff Clavin, the bar’s know-it-all windbag.

Paramount, which owns the copyright and trademark in “Cheers” and all its characters, granted Host International a license to set up bars in airports throughout the world using the same decor and theme as the TV show’s tavern.

The decor of several of the bars includes two life-size, robotic customers named “Hank” and “Bob” who are programmed to move and engage in humorous banter whenever customers sit close by. One of the robots is quite heavy; the other wears a Postal Service uniform.

Wendt and Ratzenberger sued Host, contending that its use of the two robotic figures violated their rights of publicity.

Linked to an individual’s privacy rights, the right of publicity gives people exclusive control over the use of their likeness or voice for profit.

A federal trial judge in California twice threw out the lawsuit, ruling that Paramount’s copyright ownership entitled it to create “derivative works” based on the Cheers show. The judge also ruled that the two robots did not even look much like “Norm” and “Cliff.”

The 9th U.S. Circuit Court of Appeals twice reinstated the lawsuit, ruling most recently in 1997 that California’s right-of-publicity law was not necessarily trumped by federal copyright law. And the appeals court said a jury should decide whether the robots resemble the Wendt and Ratzenberger in their character portrayals.

In the appeal acted on Monday, lawyers for Paramount and Host argued that the appeals court ruling lets state law swallow federal copyright law. The case is Paramount Pictures v. Wendt

http://www.cnn.com/2000/LAW/scotus/10/02/scotus.cheers.ap/