Filed December 28, 1999Before: 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 bancand Judges B. Fletcher and Jenkins so recommend.The full court was advised of the petition for rehearing enbanc. An active Judge requested a vote on whether to rehearthe matter en banc. The matter failed to receive a majority ofthe votes in favor of en banc consideration. Fed. R. App. P.35.The petition for rehearing is denied and the petition forrehearing en banc is rejected.
_____________________________KOZINSKI, Circuit Judge, with whom Judges KLEINFELDand TASHIMA join, dissenting from the order rejecting thesuggestion for rehearing en banc:Robots again. In White v. Samsung Elecs. Am., Inc., 971F.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 thatperson's identity. The plaintiff there was Vanna White, Wheelof Fortune letter-turner extraordinaire; the offending robotstood next to a letter board, decked out in a blonde wig,Vanna-style gown and garish jewelry. Dissenting from ourfailure to take the case en banc, I argued that our broad appli-cation of the right of publicity put state law on a collisioncourse with the federal rights of the copyright holder. See 989F.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 Fortunecopyright holder. Here it is concrete: The panel holds thatlicensed animatronic figures based on the copyrighted Cheerscharacters Norm and Cliff infringe on the rights of the actorswho portrayed them. As I predicted, White's voracious logicswallows up rights conferred by Congress under the Copy-right Act.IThough a bit dated now, Cheers remains near and dear tothe hearts of many TV viewers. Set in a friendly neighbor-hood bar in Boston, the show revolved around a familiarscene. Sam, the owner and bartender, entertained the boyswith tales of his glory days pitching for the Red Sox. Coachpiped in with sincere, obtuse advice. Diane and Frasier chat-tered self-importantly about Lord Byron. Carla terrorizedpatrons with acerbic comments. And there were Norm andCliff, the two characters at issue here. Norm, a fat, endearing,oft-unemployed1 accountant, parked himself at the corner ofthe bar, where he was joined by Cliff, a dweebish 2 mailmanand something of a know-it-all windbag.3 After eleven yearson the air, the gang at Cheers became like family to manyfans, ensuring many more years in syndication. See GebeMartinez, "Cheers" Fans Cry in Their Beers as Sitcom EndsLong Run, L.A. Times, May 21, 1993, at B1.Defendant Host International decided to tap into this keg ofgoodwill. After securing a license from Paramount, the copy-right holder, Host opened a line of Cheers airport bars. Tohelp get patrons into a Cheers mood, Host populated the barswith animatronic figures4 resembling Norm and Cliff: One isfat; the other is dressed as a mailman.5 Plaintiffs George Wendt and John Ratzenberger, the onlyactors who ever portrayed Norm and Cliff, sued Host forunfair competition and violation of their right of publicity.Paramount intervened, claiming that its copyright preemptedany claim Wendt and Ratzenberger might have under statelaw. The district court granted summary judgment for thedefendants because it found that the robots didn't look like theplaintiffs: "[T]here is [no] similarity at all . . . except that oneof the robots, like one of the plaintiffs, is heavier than theother . . . . The facial features are totally different." 125 F.3dat 809. Relying on White, the panel here reverses but offerslittle explanation beyond the curt assertion that "material factsexist that might cause a reasonable jury to find[the robots]sufficiently `like' [Wendt and Ratzenberger ] to violate" theirright of publicity. Id. at 810.IIThis case, unlike White, pits actor against copyright holder.The parties are fighting over the same bundle of intellectualproperty rights--the right to make dramatic representations ofthe characters Norm and Cliff. Host and Paramount as serttheir right under the Copyright Act to present the Cheers char-acters in airport bars; Wendt and Ratzenberger assert theirright under California law to control the exploitation of theirlikenesses. But to millions of viewers, Wendt and Ratzenber-ger are Norm and Cliff; it's impossible to exploit the latterwithout also evoking thoughts about the former.So who wins? The Copyright Act makes it simple, at leastinsofar as the plaintiffs interfere with Paramount's right to ex-ploit the Cheers characters. Section 301 of the Copyright Actpreempts any state law "legal or equitable rights that areequivalent to any of the exclusive rights within the generalscope of copyright[.]" 17 U.S.C. S 301(a). The copyright toCheers carries with it the right to make derivative worksbased on its characters. See generally Warner Bros., Inc. v.American Broadcasting Cos., 720 F.2d 231, 235 (2d Cir.1983) (Superman copyright belongs to Warner Brothers). Thepresentation of the robots in the Cheers bars is a derivativework, 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 robotsthat resemble Norm and Cliff.Instead, the panel allows the plaintiffs to pick up whereVanna left off: Copyright or no copyright, anyone who wantsto use a figure, statue, robot, drawing or poster that remindsthe public of Wendt and Ratzenberger must first obtain (andpay for) their consent. This cannot be squared with the rightof the copyright holder to recreate Norm and Cliff however itsees 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 inWhite. 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., 474N.E.2d 580, 583-84 (N.Y. 1984) (finding right of publicityunder New York law limited to statutory protection of "name,portrait or picture"); Lugosi v. Universal Pictures, 25 Cal. 3d813, 828 (1979) (Mosk, J., concurring) ("If Bela Lugosi werealive today, he would be unable to claim an invasion of hisright to privacy for Universal's exploitation . . . of productscreated in the image of Count Dracula, a role Lugosiplayed."). A copyright holder can generally avoid using anyof these tangible elements in exploiting its copyright. Whiteexploded the right of publicity to include anything that bringsthe celebrity to mind. See White, 971 F.2d at 1399. It's inevi-table that so broad and ill-defined a property right will trenchon the rights of the copyright holder. According to the panel,Paramount and Host may not use Norm and Cliff in a waythat reminds people of the actors who played them and whoseidentity is therefore fused in the public mind. This is a daunt-ing burden. Can Warner Brothers exploit Rhett Butler withoutalso reminding people of Clark Gable? Can Paramount castShelley Long in The Brady Bunch Movie without creating atriable issue of fact as to whether it is treading on FlorenceHenderson's right of publicity? How about Dracula and BelaLugosi? Ripley and Sigourney Weaver? Kramer and MichaelRichards?When portraying a character who was portrayed by anactor, it is impossible to recreate the character without evok-ing the image of the actor in the minds of viewers. Supposethe Seinfeld minions create a spin-off called Kramer. One ofthe Seinfeld characters was Newman, a fat mailman. SupposeWayne Knight--the actor who played Newman--won't doKramer. So Kramer brings in someone else to play Newman,a corpulent actor who (when dressed as a mailman) remindspeople of Wayne Knight. What happens when Knight sues?Under White and the panel decision here, Knight can go totrial 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 thateveryone 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 directorcomes up with a new Newman who reminds the public of theold Newman (i.e. Knight), Knight has a right-of-publicityclaim that will at least survive summary judgment. Under theunbounded right of publicity announced in White , copyrightholders will seldom be able to avoid trial when sued forinfringement of the right to publicity. Remember Vanna:Even though the robot looked nothing like her, a jury awardedher $400,000. See Vanna White Wins Suit, Wall St. J., Jan.24, 1994, at B2.6IIIThe panel's refusal to recognize copyright preemption putsus 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 undercopyright law, and the players can't use their state law rightof publicity to veto the telecast of their performance. This wasso even though the telecast (obviously) used the players' iden-tities and likenesses.The Seventh Circuit acknowledged that the state law rightof publicity gave the players a property interest in their actualperformances, see Zacchini v. Scripps-Howard BroadcastingCo.,
433 U.S. 562
(1977), but held that this right could nottrump the Clubs' right under the Copyright Act to control thetelecast. See 805 F.2d at 678-79. The Seventh Circuit recog-nized, as the panel here does not, that the players and theclubs 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 seethe games and the copyright to the telecast. The copyrightpreempted whatever state law rights the players claimed, atleast insofar as state law would prevent ordinary use of thecopyrighted 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 Cliffcharacters however it sees fit. If Wendt and Ratzenbergerwanted to control how the Cheers characters were portrayedafter they left the show, they should have negotiated for itbeforehand.7IVComing home to roost is yet another problem I warnedabout 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 regulatingthe length of trucks is invalid under the dormant CommerceClause 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 ifit substantially interferes with federal copyright law, even ab-sent preemptive legislation.A copyright licensee must be able to exercise rights whichare inherently federal in nature without worrying that 50 sepa-rate states will burden those rights. This is most obviouslytrue when state law restricts the display of derivative worksoutside the borders of its state. Compare Goldstein, 412 U.S.at 558. Yet that is exactly what the panel approves here:Plaintiffs are using California law to stop Host from display-ing a copyrighted work in Kansas City and Cleveland. WhyCalifornia 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 avoidthis constitutional conundrum, see Crowell v. Benson, 285U.S. 22, 62 (1932), the panel compounds White 's errors byenforcing California's right of publicity way beyond Califor-nia's borders.VThe First Amendment concerns raised by White are evenmore pressing here. White was an advertisement and thereforesubject to the less demanding commercial speech standard ofCentral Hudson Gas & Elec. Corp. v. Public Serv. Comm.,
447 U.S. 557, 561
-63 (1980). Here, the portrayal of theCheers characters is core protected speech: Using Norm andCliff dummies in a Cheers-themed bar is a dramatic presenta-tion.8 It's like a play. Cheers may not have the social impactof Hair, see Southeastern Promotions, Ltd. v. Conrad, 420U.S. 546 (1975), but it's a literary work nonetheless, worthyof the highest First Amendment protection from intrusivestate laws like California's right-of-publicity statute. SeeCardtoons, L.C. v. Major League Baseball Players Ass'n, 95F.3d 959, 970-72 (10th Cir. 1996). Host did not plasterWendt's face on a billboard with a Budweiser logo. It cashedin on the Cheers goodwill by creatively putting its familiarmise-en-scene to work. The robots are a new derivation of acopyrighted work, not unlike a TV series based on a movie ora Broadway play based on a novel. The novelty of using ani-matronic figures based on TV characters ought to prick up ourears to First Amendment concerns. Instead we again let theright of publicity snuff out creativity.VIAs I noted in White, "No California statute, no Californiacourt has actually tried to reach this far. It is ironic that it iswe who plant this kudzu in the fertile soil of our federal sys-tem." 989 F.2d at 1519. We pass up yet another opportunityto root out this weed. Instead, we feed it Miracle-Gro. I dis-sent.
___________________________FOOTNOTES 1 Honorable Bruce S. Jenkins, Senior United States District Judge for theDistrict of Utah, sitting by designation.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 justworks out that way."3 "It's a little known fact that the tan became popular in what is knownas the Bronze Age."4 As best the record discloses, these are life-size stuffed dolls that movesomewhat and play pre-recorded quips.5 In a half-hearted attempt to avoid litigation, Host changed the robots'names to "Hank" and "Bob."6 To avoid going to trial in such a situation, producers will have to castnew actors who look and sound very different from the old ones. ASeinfeld spin-off thus ends up in a bizarro world where a skinny Newmansits down to coffee with a svelte George, a stocky Kramer, a fat Jerry anda lanky blonde Elaine. Not only is goodwill associated with the old showlost, the artistic freedom of the screenwriters and producers is severelycramped.7 The Seventh Circuit is not alone in recognizing the need to limit theright of publicity. See, e.g., Allison v. Vintage Sports Plaques, 136 F.3d1443, 1447-49 (11th Cir. 1998) (recognizing first sale doctrine as limitingright of publicity). Scholars, too, have soundly rejected White. See ArlenW. 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 CelebrityPublicity Rights in State and Federal Courts, 79 Minn. L. Rev. 485(1994); Jeff Sanders, By Force of Persona: How the Right of PublicityUndermines the First Amendment, 28 Beverly Hills B. Ass'n J. 13 (1994).Even our treatment of Wendt and Ratzenberger's claim has already beencriticized. 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).8 No doubt the decision to put animatronic Norm and Cliff figures in thebars was profit-driven. But that doesn't mean Central Hudson applies: TheSupreme Court limits the outhouse of commercial speech to pureadvertising--speech that does no more than propose a commercial trans-action. Virginia State Bd. of Pharmacy v. Virginia Citizens ConsumerCouncil, 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).