A very simple issue in the Civil law countries had to be a subject of a writ of mandamus in the U.S. In the case Douglas v. United States Dist. Court for the Cent. Dist. of Cal., 2007 U.S. App. LEXIS 17061 (9th Cir. 2007), the U.S. Court of Appeals for the Ninth Circuit ruled that an Internet company who provided the Terms Of Use (also defined by academics as browserwrap license/agreement/contracts) can not update and enforce them as a binding contract without proper notification issued to its users.
Judge Alex Kozinski was a member of three-judge panel which decided this case. He is a very interesting person who wrote many rulings and articles concerning trademark law and the right of publicity. He used this famous “Hollywood Circuit” term to describe the law made by the U.S. Court of Appeals for the Ninth Circuit in the text of a judgement in the case White v. Samsung Elec. Am., Inc., 989 F.2d 1512 (9th Cir. 1993).
A full list with links to his articles is available at alex.kozinski.com website. If you are interested in trademark law and the right of publicity issues I recommend you to read S.Y. Reeves, “Speech-zilla Meets Trademark Kong?: How the Hollywood Circuit Got It Wrong in the Barbie Battle, Mattel, Inc. v. MCA Records, Inc.“, 4 Minn. Intell. Prop. Rev. 285, PDF file.
At the end of this post I would like to paste a short fragment of the judgement in the case White v. Samsung Elec. Am., Inc., 989 F.2d 1512 (9th Cir. 1993) at 1512-1513. It brings up many interesting issues.
Saddam Hussein wants to keep advertisers from using his picture in unflattering contexts. [fn1] Clint Eastwood doesn’t want tabloids to write about him. [fn2] Rudolf Valentino’s heirs want to control his film biography. [fn3] The Girl Scouts don’t want their image soiled by association with certain activities. [fn4] George Lucas wants to keep Strategic Defense Initiative fans from calling it “Star Wars.” [fn5] Pepsico doesn’t want singers to use the word “Pepsi” in their songs. [fn6] Guy Lombardo wants an exclusive property right to ads that show big bands playing on New Year’s Eve. [fn7] Uri Geller thinks he should be paid for ads showing psychics bending metal through telekinesis. [fn8] Paul Prudhomme, that household name, thinks the same about ads featuring corpulent bearded chefs. [fn9] And scads of copyright holders see purple when their creations are made fun of. [fn10]
Fn1. See Eben Shapiro, Rising Caution on Using Celebrity Images, N.Y. Times, Nov. 4, 1992, at D20 (Iraqi diplomat objects on right of publicity grounds to ad containing Hussein’s picture and caption “History has shown what happens when one source controls all the information”).
Fn2. Eastwood v. Superior Court, 149 Cal. App. 3d 409, 198 Cal. Rptr. 342 (1983). [**3]
Fn3. Guglielmi v. Spelling-Goldberg Prods., 25 Cal. 3d 860, 160 Cal. Rptr. 352, 603 P.2d 454 (1979) (Rudolph Valentino); see also Maheu v. CBS, Inc., 201 Cal. App. 3d 662, 668, 247 Cal. Rptr. 304 (1988) (aide to Howard Hughes). Cf. Frank Gannon, Vanna Karenina in Vanna Karenina and Other Reflections (1988) (A humorous short story with a tragic ending. “She thought of the first day she had met VR _ _ SKY. How foolish she had been. How could she love a man who wouldn’t even tell her all the letters in his name?”).
Fn4. Girl Scouts v. Personality Posters Mfg., 304 F. Supp. 1228 (S.D.N.Y. 1969) (poster of a pregnant girl in a Girl Scout uniform with the caption “Be Prepared”).
Fn5. Lucasfilm Ltd. v. High Frontier, 622 F. Supp. 931 (D.D.C. 1985).
Fn6. Pepsico Inc. claimed the lyrics and packaging of grunge rocker Tad Doyle’s “Jack Pepsi” song were “offensive to [it] and [are] likely to offend [its] customers,” in part because they “associate [Pepsico] and its Pepsi marks with intoxication and drunk driving.” Russell, Doyle Leaves Pepsi Thirsty for Compensation, Billboard, June 15, 1991, at 43. Conversely, the Hell’s Angels recently sued Marvel Comics to keep it from publishing a comic book called “Hell’s Angel,” starring a character of the same name. Marvel settled by paying $ 35,000 to charity and promising never to use the name “Hell’s Angel” again in connection with any of its publications. Marvel, Hell’s Angels Settle Trademark Suit, L.A. Daily J., Feb. 2, 1993, § II, at 1. [**4]
Trademarks are often reflected in the mirror of our popular culture. See Truman Capote, Breakfast at Tiffany’s (1958); Kurt Vonnegut, Jr., Breakfast of Champions (1973); Tom Wolfe, The Electric Kool-Aid Acid Test (1968) (which, incidentally, includes a chapter on the Hell’s Angels); Larry Niven, Man of Steel, Woman of Kleenex in All the Myriad Ways (1971); Looking for Mr. Goodbar (1977); The Coca-Cola Kid (1985) (using Coca-Cola as a metaphor for American commercialism); The Kentucky Fried Movie (1977); Harley Davidson and the Marlboro Man (1991); The Wonder Years (ABC 1988-present) (“Wonder Years” was a slogan of Wonder Bread); Tim Rice & Andrew Lloyd Webber, Joseph and the Amazing Technicolor Dream Coat (musical).
Hear Janis Joplin, Mercedes Benz, on Pearl (CBS 1971); Paul Simon, Kodachrome, on There Goes Rhymin’ Simon (Warner 1973); Leonard Cohen, Chelsea Hotel, on The Best of Leonard Cohen (CBS 1975); Bruce Springsteen, Cadillac Ranch, on The River (CBS 1980); Prince, Little Red Corvette, on 1999 (Warner 1982); dada, Dizz Knee Land, on Puzzle (IRS 1992) (“I just robbed a grocery store – I’m going to Disneyland / I just flipped off President George – I’m going to Disneyland”); Monty Python, Spam, on The Final Rip Off (Virgin 1988); Roy Clark, Thank God and Greyhound [You're Gone], on Roy Clark’s Greatest Hits Volume I (MCA 1979); Mel Tillis, Coca-Cola Cowboy, on The Very Best of (MCA 1981) (“You’re just a Coca-Cola cowboy / You’ve got an Eastwood smile and Robert Redford hair . . .”).
Dance to Talking Heads, Popular Favorites 1976-92: Sand in the Vaseline (Sire 1992); Talking Heads, Popsicle, on id. Admire Andy Warhol, Campbell’s Soup Can. Cf. REO Speedwagon, 38 Special, and Jello Biafra of the Dead Kennedys.
The creators of some of these works might have gotten permission from the trademark owners, though it’s unlikely Kool-Aid relished being connected with LSD, Hershey with homicidal maniacs, Disney with armed robbers, or Coca-Cola with cultural imperialism. Certainly no free society can demand that artists get such permission. [**5]
Fn7. Lombardo v. Doyle, Dane & Bernbach, Inc., 58 A.D.2d 620, 396 N.Y.S.2d 661 (1977).
Fn8. Geller v. Fallon McElligott, No. 90-Civ-2839 (S.D.N.Y. July 22, 1991) (involving a Timex ad).
Fn9. Prudhomme v. Procter & Gamble Co., 800 F. Supp. 390 (E.D. La. 1992).
Fn10. E.g., Acuff-Rose Music, Inc. v. Campbell, 972 F.2d 1429 (6th Cir. 1992); Cliffs Notes v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d 490 (2d Cir. 1989); Fisher v. Dees, 794 F.2d 432 (9th Cir. 1986); MCA, Inc. v. Wilson, 677 F.2d 180 (2d Cir. 1981); Elsmere Music, Inc. v. NBC, 623 F.2d 252 (2d Cir. 1980); Walt Disney Prods. v. The Air Pirates, 581 F.2d 751 (9th Cir. 1978); Berlin v. E.C. Publications, Inc., 329 F.2d 541 (2d Cir. 1964); Lowenfels v. Nathan, 2 F. Supp. 73 (S.D.N.Y. 1932).
Such judgments and the subject matter discussed in there have made learning process of U.S. law a big adventure for me since long time. But I am not a nerd/geek/swot (choose whatever you want), just to be clear. ;) I will write another post about legal issues on browserwrap license/agreements/contracts later.
