Newton v. Thomason
30 U.S.P.Q. 2d (BNA) 1633, 28 Fed.R.Serv.3d 1039, 22 F.3d 1455 (1994)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
The use of a person's name for a fictional character does not violate state right of publicity laws or the federal Lanham Act where the person has implicitly consented through their conduct and there is no evidence that the name was used for a commercial purpose or that it created a likelihood of consumer confusion regarding the person's affiliation or endorsement.
Facts:
- Wood Newton is a country music songwriter and performer.
- Television producer Harry Thomason, who had been Newton's high school football coach, co-created the television series 'Evening Shade' with Linda Bloodworth-Thomason.
- The show's main character, a high school football coach played by Burt Reynolds, was named 'Wood Newton' and shared some biographical details with the real Newton, such as his hometown and his deceased father's name and occupation.
- After learning of the show in mid-1990, Newton sent a letter to the Thomasons on July 18, 1990, stating he was 'flattered' by the use of his name and that he found it 'exciting.'
- In the same letter and subsequent communications, Newton pitched his songs for the show's theme, hoping to sell his music to the producers.
- Newton later admitted he intentionally withheld any objection to the use of his name because he wanted to sell a song to the show and hoped for special consideration.
- After the producers informed Newton in December 1990 that they would not be using his proposed theme song, he objected to the use of his name for the first time.
- The show's producers used the character name 'Wood Newton' in press announcements merely to identify Burt Reynolds's character, not to advertise or sell collateral products or services.
Procedural Posture:
- Wood Newton filed a complaint against Harry Thomason, other producers, and CBS, Inc. in the U.S. District Court for the Northern District of Illinois.
- The case was transferred to the U.S. District Court for the Central District of California.
- The defendants moved for summary judgment on Newton's claims.
- The district court granted the defendants' motion for summary judgment, dismissing Newton's case.
- The district court also sanctioned Newton's attorney, Michael Childress, for filing the complaint in Illinois, which it deemed an inconvenient venue.
- The district court denied the defendants' request for attorneys' fees.
- Newton (Plaintiff-Appellant) and Childress appealed the summary judgment and the sanctions order to the U.S. Court of Appeals for the Ninth Circuit.
- The defendants (Defendants-Appellees) cross-appealed the denial of their request for attorneys' fees.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does the use of a country music singer's name for a fictional television character violate state right of publicity laws or the Lanham Act when the singer initially expressed approval in hopes of a business opportunity and there is no evidence of commercial exploitation or likelihood of consumer confusion?
Opinions:
Majority - Judge Pregerson
No. The use of Newton's name did not violate state right of publicity laws or the Lanham Act because he consented to its use and failed to demonstrate a commercial purpose or a likelihood of confusion. Regarding the state law claims, the court found that Newton's letter stating he was 'flattered' and his subsequent conduct constituted consent, even if he never explicitly said 'I consent.' Furthermore, the use of his name in press releases identifying a fictional character did not rise to the level of 'commercial purpose' required for a misappropriation claim, as any commercial advantage was unrelated to Newton's own notoriety. On the Lanham Act claim, the court applied an eight-factor test and concluded there was no likelihood of confusion, as Newton's 'mark' (his persona as a country singer) was weak outside his industry, his 'goods' (music) were unrelated to the television show, and there was no evidence of actual consumer confusion or intent by the defendants to exploit his fame.
Analysis:
This decision clarifies the application of right of publicity and trademark law to the use of real names in fictional works. It establishes that a plaintiff's conduct, particularly acquiescence motivated by a hope for commercial gain, can be interpreted as binding consent, defeating a misappropriation claim. The case also reinforces the high bar for proving 'commercial purpose' and 'likelihood of confusion,' requiring more than just the use of a name in a creative work and its promotion. It demonstrates that courts will carefully distinguish between using a name to exploit a celebrity's persona for direct commercial advantage versus using a name within a creative narrative.
