The Supreme Court will not decide whether the Lanham Act prohibits “the unauthorized use of a celebrity’s persona advertising third party brands with logos in a commercial motion picture as trademark infringement.” That question is at the center of the case that Paule McKenna, the executor of the estate of actor Christopher Jones, waged against Sony Pictures Entertainment, Inc., Boss Film Productions, Inc., and Visiona Romantica, Inc. (collectively, “Sony”) for allegedly misusing Jones’s name and likeness (posthumously) in the Quentin Tarantino film, “Once Upon a Time . . . in Hollywood.”
The case got its start back in 2019 when McKenna lodged false endorsement, trademark infringement, and other state law claims, including under California’s Unfair Competition Law, against Sony and co. in Los Angeles County Superior Court. In her complaint, McKenna took issue with the use of Jones’s name, which “is mentioned twice during the film, [appears on] a marquee … in the background of a set,” and was used in a fake magazine to promote the film. At the same time, McKenna based her claims on the alleged use of Jones’s likeness – including his hairstyle, and his frequent appearance in cowboy boots and a gold pendant necklace – as inspiration for the film’s characters Rick Dalton (played by Leonardo DiCaprio) and Cliff Booth (played by Brad Pitt), and the portrayal of those characters in proximity to various commercial products and/or brands.
In connection with her suit, McKenna sought damages, as well as a permanent injunction prohibiting Sony from using Jones’s name, photographs, likeness, images, voice, sound-alike voice, signature, identity and persona, trademark, and trade dress “until Jones’s influence on the film is credited.”
Sony filed a special motion to strike the complaint pursuant to California’s anti-SLAPP statute, which the trial court granted in its entirety, finding that McKenna’s causes of action arise from conduct in furtherance of Sony’s right of free speech and that Sony established that there is overwhelming public interest in the film.
The California Court of Appeal agreed and affirmed the lower court’s anti-SLAPP ruling, as well as its determinations on McKenna’s federal false enforcement, trademark infringement, and remaining state law claims in favor of Sony. Among other things, the appeals court held that McKenna did not establish a protectable trademark or trade dress interest in Jones’s name and likeness, and thus, they are not protected under the Lanham Act. First reflecting on Jones’s name, the court held that “personal names are generally descriptive, not inherently distinctive,” and thus, they “require proof of secondary meaning for protection,” which McKenna did not provide.
As for Sony’s allegedly infringing use of Jones’s likeness, the court stated, citing ETW Corp. v. Jireh Publishing, Inc. (6th Cir. 2003), that “as a general rule, a person’s image or likeness cannot function as a trademark” because it does not “perform the trademark function of designation.” Here, McKenna “did not present evidence of any such consistent use of a photograph or likeness of Jones, or any evidence that Jones’s likeness otherwise performs the ‘trademark function of designation.’” Instead, she “broadly claim[ed] rights to images and portrayals that she believes resemble Jones’s likeness,” which is insufficient, according to the court.
McKenna lodged a petition for a writ of certiorari with the Supreme Court in early September, arguing that the California Court of Appeal applied “the Lanham Act restrictively so as not to apply to the unauthorized use of a celebrity’s persona in a commercial movie as trademark infringement.”
She further asserted that several federal circuit courts – including the Sixth, Ninth, and Third Circuits – “have held that a celebrity’s persona is a trademark under the false endorsement prong of the Lanham Act,” and as a result, the court “should logically extend the same definition to trademark infringement.” In Parks v. La Face Records, 329 F.3d 437 (6th Cir. 2003); White v. Samsung Elecs. Am., Inc., 971 F.2d 1395 (9th Cir. 1992); Facenda v. N.F.L. Films, Inc., 542 F.3d 1007 (3d Cir. 2008); and Cairns v. Franklin Mint Co., 24 F. Supp. 2d 1013 (C.D. Cal. 1998), for example, the courts, which “view[ed] the celebrity’s persona as his trademark,” got the issue “right,” per McKenna.
Against this background, McKenna (unsuccessfully) argued in her petition that the Supreme Court “should grant certiorari because the courts need guidance as to the application of the Lanham Act to commercial infringement on the trademark of celebrity persona,” stating that “although the courts have settled that a celebrity persona is a trademark for false endorsement purposes, they have yet to make the logical extension to trademark infringement, leaving movie producers free to use celebrity personas without their consent.”
The case is McKenna v. Sony Pictures Entm’t, No. B304256 (Cal. Ct. App.)
Share
