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Court Case Re Right of Publicity and Fair Use

Court Case Re Right of Publicity and Fair Use

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Published by Daniel Ballard
Court case evaluating whether it is lawful to sell goods that parody celebrity names and identities
Court case evaluating whether it is lawful to sell goods that parody celebrity names and identities

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Published by: Daniel Ballard on Sep 13, 2009
Copyright:Public Domain


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Wwe v. Big Dog Holdings, Inc., 280 F.Supp.2d 413 (W.D. Pa., 2003)
280 F.Supp.2d 413WORLD WRESTLING FEDERATION ENTERTAINMENT, INC., a Delaware corporation, Plaintiff,v.BIG DOG HOLDINGS, INC., a Delaware corporation, Defendant.No. 01-CV-394.United States District Court, W.D. Pennsylvania.March 10, 2003.
 I. INTRODUCTIONThe Worldwide Wrestling FederationEntertainment, Inc. ("WWE") filed a seventeen (17)count Amended Complaint asserting claims againstBig Dog Holdings, Inc. ("Big Dog") for copyrightinfringement (Counts I through VI), trademark infringement under Section 32 of the Lanham Act, 15U.S.C. § 1114, (Count VII), trademark infringementand false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), (Count VIII),trade dress infringement under Section 43(a) of theLanham Act, 15 U.S.C. § 1125(a), (Count IX),misappropriation and unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a), (Count X), trademark dilution under Section43(c) of the Lanham Act, 15 U.S.C. § 1125(c),(Count XI), violation of the Pennsylvania anti-dilution statute, 54 PA. CONS. STAT. ANN. § 1124(Count XII), violation of Pennsylvania fair trade practices statutes, 73 PA. CONS. STAT. ANN. §§201-2 and 201-3 (Count XIII), unfair competitionunder the common law of Pennsylvania (Count XIV),and violation of the right of publicity under thecommon law of Pennsylvania (Counts XV, XVI, andXVII).Following the close of discovery, Big Dog fileda Motion for Summary Judgment pursuant to Rule 56of the Federal Rules of Civil Procedure. WWE hasresponded and the motion is now before the Court.II. STATEMENT OF THE CASEA. The ContestantsWWE is an integrated media and entertainmentcompany engaged in the development, promotion andmarketing of television programming, pay-per-view programming and live arena events, and the licensingand sale of branded consumer products. (Am.Cmplnt. ¶¶ 11 and 16). WWE has been involved inthe sports entertainment business for over twenty (20)years and has developed story lines based around itswrestling characters. (Am. Cmplnt. ¶¶ 17 and 18).Currently, WWE produces five television programseach week: (i) "Raw" and "War Zone" shownconsecutively on Monday nights and known as "Rawis War"; (ii) "WWF Smackdown!" on Thursdaynights; (iii) "Live Wire" on Saturday mornings; (iv)"Superstars" on Sunday mornings; and (v) "Heat" onSunday nights. (Am. Cmplnt. ¶ 17).Through its programming, described by WWEas "... action-packed episodic drama ... akin to anongoing, ever-developing soap opera," WWE hasdeveloped popular wrestling characters appearingunder unique names and portrayed with unique persona, history relationships, music and visualappearance, and behavior. (Am. Cmplnt. ¶¶ 17 and19). A principal component of WWE's business is themerchandising and licensing of branded consumer  products depicting these characters' names,likenesses, signature phrases, as well as depictingWWE's programming. (See Appendix to WWE'sOpposition to Big Dog's Motion for SummaryJudgment Exhibit R) (hereinafter "WWE Exhibit ___"). These branded consumer products aremarketed and sold through two separate operations:(1) WWE direct merchandising, which refers toWWE's own design, production and sale of product principally through WWE's internet website,semiannual catalogs and sales at live events; and (2)licensing, which refers to WWE's licensing of itsintellectual property by category (i.e., t-shirts, tradingcards, posters, action figures, etc.) to third-partycompanies that pay royalties to WWE on productsales.1 (WWE Exhibit T, p. 6 lines 7-22). WWE, inturn, pays royalties to the individual portraying thecharacter based on revenues from the sales of  products depicting the individual's WWE character.(WWE Exhibit Q, ¶ 6).Through predecessor companies, Big Dog has been in business since 1983, and its first full year of operations under current ownership was in 1993. (BigDog Exhibit G, ¶ 1). Big Dog develops, markets, andretails a branded lifestyle collection of unique, highquality, popular priced consumer products, includingactive wear, casual sportswear, accessories and gifts.(Big Dog Facts 18). Big Dog has registeredtrademarks in both "Big Dogs" and its famous dogdesign logo. (Big Dog Facts ¶ 35). Its merchandise issold solely through its own Big Dog stores, its
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Wwe v. Big Dog Holdings, Inc., 280 F.Supp.2d 413 (W.D. Pa., 2003)
catalogs, and through Big Dog's website. (Big DogFacts ¶ 19). It is Big Dog's contention that it hasalways developed certain graphics as parodies of  popular culture which poke fun at what is going on inthe world. (Big Dog Exhibit F at pp. 13 and 18; BigDog Exhibit J). Big Dog further contends that thedepiction of the Big Dog character over and over indifferent contexts is part of a long-running joke thatconsumers have come to identify with the Big Dog brand. (WWE Exhibit A, p. 110:lines 1-12).Big Dog contends that its Big Dog character isintended to be irreverent, funny, and not afraid tomake fun of "overinflated aspects of our society."(WWE Exhibit A, p. 92: lines 15-18). Moreover, BigDog alleges that its t-shirts appeal to customers whoenjoy mocking "over-promoted pop phenomena" thatare prevalent in today's media. (Big Dog Facts ¶ 32).The Big Dog graphics ridicule, poke fun at, and mock these self-serious icons by characterizing them asdogs, particularly associating them with the Big Dogcharacter, giving them humorous names, and"dogifying" them. (WWE Exhibit A, p. 68: lines 18-25; p. 69: lines 1-6). A Big Dog graphic artistdescribed "dogify" as a means "to satirize a givenentity by giving him big floppy ears, a big silly tail,turning him into this variety of dog that we turneverything into." (WWE Exhibit B, p. 12: lines 5-8).The dog graphic essentially is a caricature of theintended subject, copying elements of the subject soin satirizing a particular person or thing, it isrecognizable to the public. (WWE Exhibit B, p. 15:lines 1-16). Big Dog continues its long-running dog joke parody by always inserting the dog and showingthe Big Dog character in many different contexts.(WWE Exhibit A, p. 110: lines 1-12)B. WWE's Intellectual Property"THE ROCK", portrayed by Dwayne Johnson,"STONE COLD STEVE AUSTIN", portrayed bySteve Williams, and the "UNDERTAKER", portrayed by Mark Calloway, have been three of the WWE'smost popular wrestling characters over the past five(5) years. (WWE Exhibit Q, ¶¶ 7 and 8). WWEalleges that it has developed and promoted THEROCK since 1997, and has created and developed aunique trademarked name, persona and trade dressfor THE ROCK. (Am. Cmplnt. ¶¶ 27 and 28).Similarly, a unique trademarked name, persona andtrade dress has been created, developed and promoted by WWE for STONE COLD STEVE AUSTIN since1996, and the UNDERTAKER since 1990. (Am.Cmplnt. ¶¶ 47, 48, 67, 68 and 69). WWE further contends that it owns trademarks and service marksin THE ROCK, STONE COLD STEVE AUSTIN,and the UNDERTAKER.2 (Am. Cmplnt. ¶¶ 42, 61and 80; WWE Appendix Exhibit EE). In addition,WWE claims ownership in trademarks and servicemarks for: (1) registrations for WWF; (2) the WWFscratch logo; (3) WWF Smackdown! design mark;and (4) AUSTIIN 3:16. (Am. Cmplnt. ¶¶ 21, 22, 24,61, 88, and 89; WWE Appendix Exhibits DD andEE).In conjunction with its registration of THEROCK mark, WWE alleges that it has acquiredcommon law trademarks in THE ROCK's signaturecatch phrases and slogans: "Know Your Role";"Jabroni"; and the "Brahma Bull". (Am. Cmplnt.¶¶40-43). WWE also contends it has acquired acommon law trademark in THE ROCK's BrahmaBull design mark. (Am.Cmplnt. ¶ 43).Integral to WWE's portrayal of the STONECOLD STEVE AUSTIN character is the use of catch phrase slogans and symbols, including: "Open Up aCan of Whoop Ass"; "Austin 3:16"; "Rattlesnake"3;"Cause Stone Cold Said So"; and the Skull design.(Am.Cmplnt. 59). WWE contends that it hasacquired a common law trademark in the "Open Up aCan of Whoop Ass," "Rattlesnake," and the "CauseStone Cold Said So" marks and the Skull designmark. (Am.Cmplnt. ¶ 63).In addition to their unique persona andcharacter, WWE has portrayed THE ROCK, STONECOLD STEVE AUSTIN and the UNDERTAKER characters with unique and distinctive trade dress. Acentral component of THE ROCK's trade dress is theBrahma Bull symbol. Not only is THE ROCK oftenreferred to as the "Brahma Bull," but he has a tattooof a Brahma Bull on his right arm, and his clothing,including his wrestling trunks, t-shirts and black leather jacket, bear the image of a Brahma Bull.(Am.Cmplnt. 31). THE ROCK is generally portrayed wearing tinted sunglasses, which are oftentipped down to reveal THE ROCK's signature facialexpressions, most notably, the "People's Eyebrow."4(Am.Cmplnt. ¶ 31). STONE COLD STEVE AUSTINis generally depicted with solid black wrestlingtrunks, black wrestling boots, no shirt and an open black leather vest with an image of a white skull onthe left side and the name "AUSTIN" writtenvertically in white lettering down the right side. (Am.Cmplnt. ¶ 50).To further the "menacing persona" of theUNDERTAKER, he has been generally portrayed inall black clothing with black leather designs on thelegs, a black leather vest with silver buckles, andtattoos covering his body. (Am.Cmplnt. ¶ 70). TheUNDERTAKER also wore black elbow pads, black leather fingerless gloves, black leather boots, andoften entered the ring wearing a long black cape.(Am. Cmplnt. ¶ 71). The persona, trade dress andcharacter traits of THE ROCK, STONE COLDSTEVE AUSTIN, and the UNDERTAKER are used
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Wwe v. Big Dog Holdings, Inc., 280 F.Supp.2d 413 (W.D. Pa., 2003)
 by WWE in its merchandising of a myriad of  products, including photographs, shirts, posters,videos, and action figures. (Am. Cmplnt. ¶¶ 32, 51and 72).C. The Alleged InfringementsIn November of 1998, Big Dog began sellingmerchandise which makes reference to WWF and itswrestling characters (collectively "the WBDFmerchandise"). (Big Dog Facts ¶ 23). The WBDFmerchandise consists of eight (8) graphic designswhich appear primarily on t-shirts, but also appear ona mug, sports bottle, stickers and two (2) beaniedolls. (Big Dog Facts ¶ 24; Big Dog Exhibit K).The first WBDF merchandise sold in November of 1998 was a t-shirt with the slogan "LIVE ON-PAW-PER-VIEW" "WBDF v. Bad Dogs of theEmpire." (Big Dog Facts ¶ 30; Big Dog Exhibit K).The graphic depicts dog caricatures of two (2) Star Wars villains, "Emperor Pawpetine" and "Bark Maul," fighting two (2) wrestling characters,"Hollywoof Hound Hogan" and "Bone Cold StevePawstin," also depicted as dog caricatures. At the bottom of the graphic are the words "BIG DOGSPORTSWEAR. THIS IS A PARODY." (Big DogExhibit K). According to Big Dog, the graphic wasmeant to mock the new "Star Wars" movie comingout at the time, and to do so in multiple arenas.(WWE Exhibit B, p. 34: lines 23-24; WWE ExhibitC, p. 78: lines 10-16). Because it was decided tomake wrestlers part of the graphic, it was also meantto parody the WWF and cable television. (WWEExhibit C, p. 78: lines 19-21).WWE contends this graphic violates itsintellectual property rights by, inter alia:(a) featuring an image of STONE COLDSTEVE AUSTIN wearing STONE COLD STEVEAUSTIN's characteristic trade dress;(b) featuring STONE COLD STEVE AUSTINholding a folding chair similar to those chairs oftenused as props on WWE programming;(c) printing "WBDF" in large block letters at thetop of the graphic; and(d) printing "Bone Cold Steve Pawstin" acrossthe image of STONE COLD STEVE AUSTIN.(Am.Cmplnt. ¶ 99).The next graphic marketed by Big Dog is a"Bone Cold Steve Pawstin" graphic featuring a dogcaricature of the STONE COLD STEVE AUSTINcharacter with the words "`Bone Cold' StevePawstin" at the top of the graphic and the phrase"Open Up a Can of Woof Ass!" at the bottom. Also,at the bottom of the graphic are the words "BIG DOGSPORTSWEAR. THIS IS A PARODY." (Big DogExhibit K). WWE contends this graphic violates itsintellectual property rights by, inter alia:(a) featuring an image of STONE COLDSTEVE AUSTIN wearing STONE COLD STEVEAUSTIN's characteristic trade dress, specifically anopen black vest with the image of the SKULL design(though it's a skull with dog ears) on the left side of the vest with the word "Pawstin" on the right. Thedog's face has a goatee, a gold link necklace and agold hoop earring in his left ear;(b) printing "Bone Cold Steve Pawstin" acrossthe top of the graphic in large blue block letters;(c) printing the words "Open Up a Can of Woof Ass!" at the bottom of the graphic; and(d) printing the letters "WBDF" on the belt buckle of the caricature in reference to WWE's WWFmark.(Am.Cmplnt.¶ 96).A third graphic at issue depicts four (4)caricatures of wrestling characters, "Hollywoof Hound Hogan," "Bone Cold Steve Pawstin,""Goldbark," and "The Underdogger," with WBDF atthe top of the graphic and the phrase "The Big Dogsof Wrestling" at the bottom. Also, at the bottom of thegraphic are the words "BIG DOG SPORTSWEAR.THIS IS A PARODY." (Big Dog Exhibit K). WWEcontends this graphic violates its intellectual propertyrights by, inter alia:(a) featuring an image of THE UNDERTAKER wearing the characteristic trade dress of THEUNDERTAKER. The dog's face is depicted with a beard and long hair;(b) featuring an image of STONE COLDSTEVE AUSTIN wearing STONE COLD STEVEAUSTIN's characteristic trade dress. STONE COLDSTEVE AUSTIN is holding a championship beltacross his shoulder, and the dog's face is depictedwearing a goatee;(c) printing the words "The Underdogger" acrossthe image of THE UNDERTAKER; and(d) printing the words "Bone Cold StevePawstin" across the image of STONE COLD STEVEAUSTIN.(Am.Cmplnt. ¶ 98).The next graphic features three (3) caricatures of wrestling characters "Hollywoof Hound Hogan,""Bone Cold Steve Pawstin," and "The Underdogger,"with WBDF in scratch lettering at the top left of thegraphic and the phrase "All the Right Moves" downthrough the center of the graphic. The phrase "All theRight Moves" is surrounded by each of the wrestlingcharacters shown demonstrating a wrestling move onanother dog wrestling character. The wrestling movesare named "The Bone Crusher," "The Dog Pounder,"and "The Choke Chain." Also, at the bottom of thegraphic are the words "BIG DOG SPORTSWEAR.THIS IS A PARODY." (Big Dog Exhibit K). WWE
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