Appellants George Wendt And John Ratzenberger example essay topic

US Court of Appeals for the Ninth Circuit Case Name: WENDT V HOST INTERNATIONAL Case Number: Date Filed: 96-55243 12/28/99 FOR PUBLICATION UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT GEORGE WENDT, an individual; JOHN RATZENBERGER, an individual, Plaintiffs-Appellants, vs. No. 96-55243 HOST INTERNATIONAL, INC., a Delaware corporation, D.C. No. Defendant-Appellee, CV-93-00142-R and ORDER PARAMOUNT PICTURES, CORPORATION, a Delaware corporation, Defendant-Intervenor. Filed December 28, 1999 Before: 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 banc and Judges B. Fletcher and Jenkins so recommend. The full court was advised of the petition for rehearing en 1 Honorable Bruce S. Jenkins, Senior United States District Judge for the District of Utah, sitting by designation. 14901 banc. An active Judge requested a vote on whether to rehear the matter en banc. The matter failed to receive a majority of the votes in favor of en banc consideration.

Fed. R. App. P. 35. The petition for rehearing is denied and the petition for rehearing en banc is rejected. KOZINSKI, Circuit Judge, with whom Judges KLEIN FELD and TASHI MA join, dissenting from the order rejecting the suggestion for rehearing en banc: Robots again. In White vs. Samsung Elec Am., Inc., 971 F. 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 that person's identity. The plaintiff there was Vanna White, Wheel of Fortune letter-turner extraordinaire; the offending robot stood next to a letter board, decked out in a blonde wig, Vanna-style gown and garish jewelry.

Dissenting from our failure to take the case en banc, I argued that our broad appli- cation of the right of publicity put state law on a collision course with the federal rights of the copyright holder. See 989 F. 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 Fortune copyright holder. Here it is concrete: The panel holds that licensed animatronic figures based on the copyrighted Cheers characters Norm and Cliff infringe on the rights of the actors who portrayed them.

As I predicted, White's voracious logic swallows up rights conferred by Congress under the Copy- 14902 right Act. I Though a bit dated now, Cheers remains near and dear to the hearts of many TV viewers. Set in a friendly neighbor- hood bar in Boston, the show revolved around a familiar scene. Sam, the owner and bartender, entertained the boys with tales of his glory days pitching for the Red Sox. Coach piped in with sincere, obtuse advice. Diane and Frasier chat- tered self-importantly about Lord Byron.

Carla terrorized patrons with acerbic comments. And there were Norm and Cliff, the two characters at issue here. Norm, a fat, endearing, oft-unemployed 1 accountant, parked himself at the corner of the bar, where he was joined by Cliff, a dweeb ish 2 mailman and something of a know-it-all windbag. 3 After eleven years on the air, the gang at Cheers became like family to many fans, ensuring many more years in syndication.

See Ge be Martinez, "Cheers" Fans Cry in Their Beers as Sitcom Ends Long Run, L.A. Times, May 21, 1993, at B 1. Defendant Host International decided to tap into this keg of goodwill. After securing a license from Paramount, the copy- right holder, Host opened a line of Cheers airport bars. To help get patrons into a Cheers mood, Host populated the bars with animatronic figures 4 resembling Norm and Cliff: One is fat; the other is dressed as a mailman. 5 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 just works out that way". 3 "It's a little known fact that the tan became popular in what is known as the Bronze Age". 4 As best the record discloses, these are life-size stuffed dolls that move somewhat and play pre-recorded quips. 5 In a half-hearted attempt to avoid litigation, Host changed the robots' names to "Hank" and "Bob".

14903 Plaintiffs George Wendt and John Ratzenberger, the only actors who ever portrayed Norm and Cliff, sued Host for unfair competition and violation of their right of publicity. Paramount intervened, claiming that its copyright preempted any claim Wendt and Ratzenberger might have under state law. The district court granted summary judgment for the defendants because it found that the robots didn't look like the plaintiffs: " [T] here is [no] similarity at all... except that one of the robots, like one of the plaintiffs, is heavier than the other... The facial features are totally different". 125 F. 3d at 809. Relying on White, the panel here reverses but offers little explanation beyond the curt assertion that "material facts exist that might cause a reasonable jury to find [the robots] sufficiently 'like' [Wendt and Ratzenberger ] to violate" their right of publicity.

Id. at 810. II This case, unlike White, pits actor against copyright holder. The parties are fighting over the same bundle of intellectual property rights-the right to make dramatic representations of the characters Norm and Cliff. Host and Paramount as sert their right under the Copyright Act to present the Cheers char- acters in airport bars; Wendt and Ratzenberger assert their right under California law to control the exploitation of their likenesses.

But to millions of viewers, Wendt and Ratzenber- ger are Norm and Cliff; it's impossible to exploit the latter without also evoking thoughts about the former. So who wins The Copyright Act makes it simple, at least insofar as the plaintiffs interfere with Paramount's right to ex- plo it the Cheers characters. Section 301 of the Copyright Act preempts any state law "legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright [. ]" 17 U.S.C. S 301 (a). The copyright to Cheers carries with it the right to make derivative works based on its characters. See generally Warner Bros., Inc. vs. American Broadcasting Cos., 720 F. 2d 231,235 (2d Cir.

14904 1983) (Superman copyright belongs to Warner Brothers). The presentation of the robots in the Cheers bars is a derivative work, 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 robots that resemble Norm and Cliff. Instead, the panel allows the plaintiffs to pick up where Vanna left off: Copyright or no copyright, anyone who wants to use a figure, statue, robot, drawing or poster that reminds the public of Wendt and Ratzenberger must first obtain (and pay for) their consent. This cannot be squared with the right of the copyright holder to recreate Norm and Cliff however it sees 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 in White. 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., Stephan o vs. News Group Publications, Inc., 474 N.E. 2d 580,583-84 (N.Y. 1984) (finding right of publicity under New York law limited to statutory protection of "name, portrait or picture"); Lugosi vs. Universal Pictures, 25 Cal. 3d 813,828 (1979) (Mosk, J., concurring) ("If Bela Lugosi were alive today, he would be unable to claim an invasion of his right to privacy for Universal's exploitation... of products created in the image of Count Dracula, a role Lugosi played". ). A copyright holder can generally avoid using any of these tangible elements in exploiting its copyright.

White exploded the right of publicity to include anything that brings the celebrity to mind. See White, 971 F. 2d at 1399. It's i nevi- table that so broad and ill-defined a property right will trench on the rights of the copyright holder. According to the panel, Paramount and Host may not use Norm and Cliff in a way that reminds people of the actors who played them and whose identity is therefore fused in the public mind. This is a daunt- ing burden. Can Warner Brothers exploit Rhett Butler without also reminding people of Clark Gable Can Paramount cast 14905 Shelley Long in The Brady Bunch Movie without creating a triable issue of fact as to whether it is treading on Florence Henderson's right of publicity How about Dracula and Bela Lugosi Ripley and Sigourney Weaver Kramer and Michael Richards When portraying a character who was portrayed by an actor, it is impossible to recreate the character without evo k- ing the image of the actor in the minds of viewers.

Suppose the Seinfeld minions create a spin-off called Kramer. One of the Seinfeld characters was Newman, a fat mailman. Suppose Wayne Knight-the actor who played Newman-won't do Kramer. So Kramer brings in someone else to play Newman, a corpulent actor who (when dressed as a mailman) reminds people of Wayne Knight.

What happens when Knight sues Under White and the panel decision here, Knight can go to trial on a claim that the new Newman evokes his (Knight's) identity, even though Castle Rock owns the rights to make de- riva tive works based on Seinfeld. It would be no defense that everyone 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 director comes up with a new Newman who reminds the public of the old Newman (i.e. Knight), Knight has a right-of-publicity claim that will at least survive summary judgment. Under the unbounded right of publicity announced in White, copyright holders will seldom be able to avoid trial when sued for infringement of the right to publicity. Remember Vanna: Even though the robot looked nothing like her, a jury awarded her $400,000. See Vanna White Wins Suit, Wall St. J., Jan. 24, 1994, at B 2.6 6 To avoid going to trial in such a situation, producers will have to cast new actors who look and sound very different from the old ones.

A Seinfeld spin-off thus ends up in a bizarro world where a skinny Newman sits down to coffee with a svelte George, a stocky Kramer, a fat Jerry and a lanky blonde Elaine. Not only is goodwill associated with the old show lost, the artistic freedom of the screenwriters and producers is severely cramped. 14906 The panel's refusal to recognize copyright preemption puts us in conflict with the Seventh Circuit in Baltimore Orioles, Inc. vs. 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 under copyright law, and the players can't use their state law right of publicity to veto the telecast of their performance. This was so even though the telecast (obviously) used the players' iden- tities and likenesses. The Seventh Circuit acknowledged that the state law right of publicity gave the players a property interest in their actual performances, see Zucchini vs. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977), but held that this right could not trump the Clubs' right under the Copyright Act to control the telecast. See 805 F. 2d at 678-79. The Seventh Circuit recog- nized, as the panel here does not, that the players and the clubs 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 see the games and the copyright to the telecast. The copyright preempted whatever state law rights the players claimed, at least insofar as state law would prevent ordinary use of the copyrighted work. See also Fleet vs. 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 Cliff characters however it sees fit. If Wendt and Ratzenberger 14907 wanted to control how the Cheers characters were portrayed after they left the show, they should have negotiated for it beforehand. 7 IV Coming home to roost is yet another problem I warned about in White-that a broad reading of the state right of pub- licity runs afoul of the dormant Copyright Clause, which pre- empty state intellectual property laws to the extent they "prejudice the interests of other States". Goldstein vs. Califor- nia, 412 U.S. 546,558 (1973).

Just as a state law regulating the length of trucks is invalid under the dormant Commerce Clause if it poses an undue burden on interstate commerce, see Kassel vs. Consolidated Freight ways Corp., 450 U.S. 662,674 (1981), so California's right of publicity law is invalid if it substantially interferes with federal copyright law, even ab- sent preemptive legislation. A copyright licensee must be able to exercise rights which are inherently federal in nature without worrying that 50 sepa- rate states will burden those rights. This is most obviously true when state law restricts the display of derivative works outside the borders of its state. Compare Goldstein, 412 U.S. at 558. Yet that is exactly what the panel approves here: 7 The Seventh Circuit is not alone in recognizing the need to limit the right of publicity.

See, e. g., Allison vs. Vintage Sports Plaques, 136 F. 3d 1443, 1447-49 (11th Cir. 1998) (recognizing first sale doctrine as limiting right of publicity). Scholars, too, have soundly rejected White. See Arlen W. 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 Over extension of Celebrity Publicity Rights in State and Federal Courts, 79 Minn. L. Rev. 485 (1994); Jeff Sanders, By Force of Persona: How the Right of Publicity Undermines the First Amendment, 28 Beverly Hills B. Ass'n J. 13 (1994). Even our treatment of Wendt and Ratzenberger's claim has already been criticized. 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).

14908 Plaintiffs are using California law to stop Host from display- ing a copyrighted work in Kansas City and Cleveland. Why California should set the national standard for what is a per- missile use of a licensed derivative work is beyond me. Rather than construe the right of publicity narrowly to avoid this constitutional conundrum, see Crowell vs. Benson, 285 U.S. 22, 62 (1932), the panel compounds White's errors by enforcing California's right of publicity way beyond Califor- nia's borders. V The First Amendment concerns raised by White are even more pressing here. White was an advertisement and therefore subject to the less demanding commercial speech standard of Central Hudson Gas & Elec. Corp. vs. Public Serv.

Comm., 447 U.S. 557,561-63 (1980). Here, the portrayal of the Cheers characters is core protected speech: Using Norm and Cliff dummies in a Cheers-themed bar is a dramatic presenta- tion. 8 It's like a play. Cheers may not have the social impact of Hair, see Southeastern Promotions, Ltd. vs. Conrad, 420 U.S. 546 (1975), but it's a literary work nonetheless, worthy of the highest First Amendment protection from intrusive state laws like California's right-of-publicity statute. See Cardtoons, L.C. vs. Major League Baseball Players Ass'n, 95 F. 3d 959,970-72 (10th Cir. 1996).

Host did not plaster Wendt's face on a billboard with a Budweiser logo. It cashed in on the Cheers goodwill by creatively putting its familiar mise-en-scene to work. The robots are a new derivation of a copyrighted work, not unlike a TV series based on a movie or 8 No doubt the decision to put animatronic Norm and Cliff figures in the bars was profit-driven. But that doesn't mean Central Hudson applies: The Supreme Court limits the outhouse of commercial speech to pure advertising-speech that does no more than propose a commercial trans- action. Virginia State Bd. of Pharmacy vs. Virginia Citizens Consumer Council, Inc., 425 U.S. 748,762 (1976); Nor dyke vs. Santa Clara County, 110 F. 3d 707,710 (9th Cir.

1997); Cardtoons, L.C. vs. Major League Base- ball Players Ass'n, 95 F. 3d 959,970 (10th Cir. 1996). 14909 a Broadway play based on a novel. The novelty of using ani- ma tronic figures based on TV characters ought to prick up our ears to First Amendment concerns. Instead we again let the right of publicity snuff out creativity.

VI As I noted in White, "No California statute, no California court has actually tried to reach this far. It is ironic that it is we who plant this kudzu in the fertile soil of our federal sys- tem". 989 F. 2d at 1519. We pass up yet another opportunity to root out this weed. Instead, we feed it Miracle-Gro.

I dis- sent. 14910 web Case Name: WENDT V HOST INTERNATIONAL INC Case Number: Date Filed: 96-55243 09/22/97 FOR PUBLICATION UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT GEORGE WENDT, an individual; JOHN RATZENBERGER, an individual, Plaintiffs-Appellants, vs. No. 96-55243 HOST INTERNATIONAL, INC., a D.C. No. Delaware corporation; CV-93-142-R Defendant-Appellee, OPINION and PARAMOUNT PICTURES CORPORATION, a Delaware corporation, Defendant-Intervenor. Appeal from the United States District Court for the Central District of California Manuel L. Real, District Judge, Presiding Argued and Submitted March 11, 1997-Pasadena, California Filed September 22, 1997 Before: Betty B. Fletcher and Stephen S. Trott, Circuit Judges, and Bruce S. Jenkins, District Judge. Opinion by Judge Fletcher Honorable Bruce S. Jenkins, Senior United States District Judge for the District of Utah, sitting by designation. 12347 SUMMARY The summary, which does not constitute a part of the opinion of the court, is copyrighted C 1994 by Barclays Law Publishers.

Intellectual Property / Entertainment The court of appeals reversed a judgment of the district court. The court held that actors have statutory and common- law rights against the unauthorized use of their likenesses in promotional figures based on an infringer's copyrighted char- acters. Appellants George Wendt and John Ratzenberger are actors who played the characters of "Norm" and "Cliff" in the Cheers television series. They sued appellee Host Interna- tional, Inc. alleging violations of their trademark and publicity rights under Cal. Civ. Code S 3344 (liability for unauthorized commercial use of person's likeness), California common law, and unfair competition under the Lanham Act.

The com- plaint alleged that Host had used their likenesses without authorization in "animatronic", i. e., robot, figures in airport Cheers bars. In Wendt I, the Ninth Circuit held that the state-law claims were not preempted by federal copyright law, and that sum- mary judgment for Host was inappropriate because the district court's comparison of photographs of Wendt and Ratzenber- ger with photographs of the robots was insufficient to resolve their claims under S 3344, and that the comparison had to be made without reference to the context in which the images appeared. The court also concluded that disputed issues of material fact remained regarding the common-law claims because the similarity between the actors' physical character- is tics and those of the robots was disputed. Lastly, the court ruled that the Lanham Act claims required the application of a standard test to determine whether Host's conduct created a likelihood of confusion as to whether the actors were endorsing Host's product. 12348 On remand, Host again moved for summary judgment. Wendt and Ratzenberger presented evidence of actual conf- sion among members of the public in the form of comments by travelers in airport Cheers bars.

The district court excluded their proffered consumer survey taken in the vicinity of Cheers bars. Wendt and Ratzenberger also submitted evi- dence that Host intentionally designed the robot figures to resemble them because the value of the association of the robots with them was "a major drawing card" of the Cheers concept. Ratzenberger testified that he had rejected offers from small breweries to appear in their advertisements in order to be available to a large brewery. The district court made an in-court comparison of Wendt and Ratzenberger with the actual robots (now named "Hank" and "Bob"), finding that there was no similarity except that one was heavier than the other. The court granted Host's motion, dismissed the action, and awarded Host attorneys fees. Wendt and Ratzenberger appealed, contending that dis- missal was inappropriate because material issues of fact remained as to the degree to which the robots appropriated their likenesses.

They asserted that the likenesses did not have to be identical or photographic, and that the determination of the issue was for the jury. Wendt and Ratzenberger conceded that they retained no rights to the characters Norm and Cliff, but asserted that "Bob" and "Hank" were not related to Para- mount's copyright of the creative elements of the characters Norm and Cliff. It was their contention that it was the physi- cal likeness to them that had commercial value to Host. Host countered that the figures appropriated only the identi- ties of the characters of Norm and Cliff, to which intervenor Paramount Pictures Corp. owned the copyrights, and not the identities of Wendt and Ratzenberger. It was Host's position that Wendt and Ratzenberger could not claim appropriation of 12349 identity by relying on indicia like the Cheers bar set that were the property of or licensed by a copyright owner. [1] The degree to which the robots resembled, caricatured, or bore an impressionistic resemblance to Wendt and Ratzel- berger was material to the claim of violations ofS 3344.

Sum- mary judgment would have been appropriate on remand only if no genuine issues of material fact concerning the degree of that resemblance were raised by Wendt and Ratzenberger. [2] Material facts existed that might have caused a reasonable jury to find them sufficiently "like" Wendt and Ratzenberger to violate S 3344. [3] Wendt and Ratzenberger were not seeking to prevent Paramount from exhibiting its copyrighted work in the Cheers series. Their claims were not preempted by the copyright stat- ute so long as they contained elements, such as the invasion of personal rights, that were different in kind from copyright infringement. As a general proposition, S 3344 is intended to protect rights that cannot be copyrighted. [4] California recognizes a common-law right of privacy that includes protection against appropriation for the defen- dant's advantage of the plaintiff's name or likeness.

The right is referred to as the "right of publicity". A common-law cause of action for appropriation of name or likeness may be alleged by pleading (1) the defendant's use of the plaintiff's identity; (2) appropriation of the plaintiff's name or likeness to the defendant's advantage; (3) lack of consent; and (4) resulting injury. [5] This common-law right protects against more than knowing use of a plaintiff's name or likeness for commercial purposes. It also protects against appropriations of the plain- tiff's identity by other means. [6] While it was true that Wendt's and Ratzenberger's fame arose in large part through their participation in Cheers, an actor does not lose the right 12350 to control the commercial exploitation of his or her likeness by portraying a fictional character. [7] Wendt and Ratzenberger raised genuine issues of mate- rial fact concerning the degree to which the figures looked like them.

Because they did so, they also raised triable issues as to whether Host sought to appropriate their likenesses for its own advantage, and whether it succeeded. The issue for the jury was whether the defendants were commercially exploit- ing the likeness of the figures to Wendt and Ratzenberger intending to engender profits. [8] The Lanham Act prohibits the use of any symbol or device that is likely to deceive consumers as to the associa- tion, sponsorship, or approval of goods or services by another person. Wendt's and Ratzenberger's claim was for false endorsement-that by using an imitation of their unique phys- ical characteristics, Host misrepresented their association with and endorsement of the Cheers bar concept. [9] To determine if it was likely that Host's conduct created a likelihood of confusion as to whether Wendt and Ratzenber- ger were endorsing Host's product, an eight-factor test applied. This test required consideration of (1) the strength of the plaintiff's mark; (2) relatedness of the goods; (3) similar- ity of the marks; (4) evidence of actual confusion; (5) market- ing channels used; (6) likely degree of purchaser care; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines.

[10] On remand, the district court simply compared the robots with Wendt and Ratzenberger and awarded judgment because there was no similarity. The court erred in failing to analyze any of the other relevant factors to determine whether there was a likelihood of confusion to consumers as to whether Wendt and Ratzenberger sponsored, approved of, or were otherwise associated with the Cheers bars. [11] The Lanham Act's likelihood of confusion standard is pre domi- 12351 nant ly factual. Summary judgment is inappropriate when a jury could reasonably conclude that most of the factors weighed in the plaintiff's favor. [12] The district court erred in rejecting the Lanham Act claim at the summary judgment stage because a jury could reasonably have concluded that most of the factors weighed in favor of Wendt and Ratzenberger.

They were principal players on Cheers, a popular television show. They were well known among the target customers of Host's Cheers bars. A jury could reasonably have concluded that their mark was strong. [13] For the same reasons, their "goods" (their skills and fame as actors) were obviously related to Host's "goods" (the products sold in the Cheers bars and the bars themselves) even if they were not strictly competitive.

The issue was whether a consumer would be confused as to Wendt's and Ratzenberger's association with or sponsorship of Host's bars. The source of their fame and the Host bars was identical: the Cheers television series. [14] Similarity of the marks was the primary issue in dis- put. Because Wendt and Ratzenberger raised triable issues of material fact concerning the degree to which the robots resembled them, a reasonable jury might have found that this factor weighed in their favor. Under the Lanham Act, in cam- era inspection is not sufficient. The district court had to view the marks as they appeared in the marketplace.

[15] Wendt and Ratzenberger presented evidence of actual consumer confusion in their declarations and in the form of survey evidence. This evidence should not have been excluded. Sufficient evidence existed by which a reasonable jury might have inferred actual consumer confusion. [16] The factor of marketing channels used weighed in favor of Wendt and Ratzenberger.

The allegation that appro- 12352 printing their likenesses because the target audience of the Cheers bars was customers who were fans of the television series was a similarity in marketing channels that suggested that there was at least a likelihood of consumer confusion. [17] The factor of degree of purchaser care weighed in favor of Wendt and Ratzenberger as well. Consumers were not likely to be particularly careful in determining who endorses or is affiliated with an airport bar in which they might purchase a single beverage. They would be even less likely to scrutinize the source of the figures used to attract patrons. This low degree of care made confusion of sponsor- ship likely. [18] Wendt and Ratzenberger alleged facts that could have given rise to an inference that Host intended to confuse cus- tomers as to their sponsorship or endorsement of the Cheers bars by creating robots with their physical characteristics.

Based on the evidence in opposition to summary judgment, an inference could have been raised that Host intended to exploit their celebrity by confusion as to the similarity between the figures and Wendt and Ratzenberger. [19] The factor of likelihood of expansion of product lines weighed in Wendt's and Ratzenberger's favor as the potential existed that in the future, Ratzenberger's endorsement of other beers would be confused with his alleged endorsement of the beers sold at Host's bars. [20] A reasonable jury could have concluded that most of the factors weighed in favor of Wendt and Ratzenberger, and that Host's conduct created at least the likelihood of consumer confusion. Whether their Lanham Act claim should succeed was a matter for the jury. [21] In trademark cases, surveys are to be admitted as long as they are conducted according to accepted principles and are relevant.

Challenges to methodology go to the weight given 12353 the survey, not its admissibility. On remand, the parties should have the opportunity respectively to lay a foundation for admission of the survey, or to challenge the adequacy of the foundation. COUNSEL David A. Pash, Kinsella, Bosch, Fujisawa & Towle, Los Angeles, California, for the plaintiffs-appellants. William T. Rintala, Rintala, Smoot, Jaen icke & Rees, Los Angeles, California, for the defendants-appellees. Robert S. Chapman, Greenberg, Glusker, Fields, Clam an & Macht inger, Los Angeles, California, for the defendant- intervenor. OPINION FLETCHER, Circuit Judge: Actors George Wendt and John Ratzenberger appeal the district court's grant of summary judgment in favor of Host International, Inc.

("Host") and applicant in intervention Para- mount Pictures Corporation ("Paramount"), dismissing their action for violations of the Lanham Act, 15 U.S.C. S 1125 (a), and California's statutory and common law right of publicity. We reverse. I. OVERVIEW Wendt and Ratzenberger argue that the district court erred in dismissing their action because they have raised issues of material fact as to whether Host violated their trademark and publicity rights by creating animatronic robotic figures (the 12354 "robots") based upon their likenesses without their permission and placing these robots in airport bars modeled upon the set from the television show Cheers. They also appeal the district court's orders excluding appellants's survey evidence, barring presentation of expert testimony, and awarding Host and Par- amount attorney's fees. We have jurisdiction, 28 U.S.C. S 1291, and we reverse and remand for trial. II. PROCEDURAL HISTORY In Wendt vs. Host, 1995 WL 115571 (9th Cir.

1995) ("Wendt I"), we reversed the first grant of summary judgment in this action and remanded. We held that appellants's tate law causes of action were not preempted by federal copyright law and that disputed issues of material fact precluded sum- mary judgment because the district court's comparison of photographs of appellants Wendt and Ratzenberger with pho- to graphs of the animatronic figures was not sufficient to resolve their claims under Cal. Civ. Code S 3344: The question here is whether the three dimensional animatronic figures are sufficiently similar to plain- tiffs to constitute their likenesses. Based on the lim- ited record before us, it cannot be said as a matter of law that the figures are so dissimilar from plaintiffs that no reasonable trier of fact could find them to be 'likenesses. ' That question must be determined by a comparison of the actual, three-dimensional entities.

1995 WL 115571 at 2. We concluded that this comparison must be decided without reference to the context in which the image appears. Id. (citing White vs. Samsung Elec. Am., Inc., 971 F. 2d 1395, 1397 (9th Cir.

1992), cert. denied., U.S., 113 S. Ct. 2443 (1993) ). We found that there were dis- put ed issues of material fact concerning the appellants' com- mon law right of publicity claims because the similarity between appellants' physical characteristics and those of the robots is disputed. Id. at 3.

Finally, we held that the appel- 12355 lants' claims for unfair competition under S 43 (a) of the Lan- ham Act, 15 U.S.C. S 1125 (a), require the application of a "well settled eight factor test" to determine whether Host's conduct has created a likelihood of confusion as to whether appellants were endorsing Host's product. Id. Upon remand, the district court granted summary judgment for a second time after an in-court inspection of the robots. It held that it could not "find, by viewing both the robotics and the live persons of Mr. Wendt and Mr. Ratzenberger, that there is any similarity at all... except that one of the robots, like one of the plaintiffs, is heavier than the other...

The district court then awarded attorney's fees to Host and Paramount pursuant to Cal. Civ. Code S 3344. Appellants argue that despite the district court's compare- son of the animatronic figures and the appellants, dismissal was inappropriate because material issues of fact remain as to the degree to which the animatronic figures appropriate the appellants' likenesses. Appellants claim that the district court erred in determining that the robots were not likenesses of the appellants because the "likeness" need not be identical or photographic. Further, they argue that the likeness determine- tion is an issue for the jury to decide in this case.

We agree.. ANALYSIS We review a grant of summary judgment de novo. Je singer vs. Nevada Federal Credit Union, 24 F. 3d 1127, 1130 (9th Cir. 1994). We must determine, viewing the evidence in the light most favorable to the nonmoving party, whether there are any genuine issues of material fact, and whether the district court correctly applied the relevant substantive law.

Id. We are not to weigh the evidence or determine the truth of the matter, but only to determine whether there is a genuine issue for trial. Id. The district court's rulings excluding damage evidence and expert testimony are governed by an abuse of discretion stan- 12356 dard, and should not be reversed absent some prejudice. Masson vs. New Yorker Magazine, Inc., 85 F. 3d 1394, 1399 (9th Cir.

1996). Our review is governed by the 'law of the case' doctrine, which prevents courts from "reconsidering an issue previously decided by the same court, or a higher court in the identical case". Securities Investor Protection Corp. vs. Vig man, 74 F. 3d 932,937 (9th Cir. 1996). A. The Statutory Right of Publicity California Civil Code S 3344 provides in relevant part: [a] ny person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, ... for purposes of advertising or selling, ... without such person's prior consent... shall be liable for any damages sustained by the person or persons injured as a result thereof.

[1] In White, 971 F. 2d at 1397, we ruled that a robot with mechanical features was not a "likeness" underS 3344. How- ever, we specifically held open the possibility that a manikin molded to Vanna White's precise features, or one that was a caricature or bore an impressionistic resemblance to White might become a likeness for statutory purposes. Id. The degree to which these robots resemble, caricature, or bear an impressionistic resemblance to appellants is therefore clearly material to a claim of violation of Cal. Civ. CodeS 3344.

Summary judgment would have been appropriate upon remand only if no genuine issues of material fact concerning that degree of resemblance were raised by appellants. Fed. R. Civ. P. 56. [2] Despite the district court's assertions that no reasonable jury could find that the robots are "similar in any manner whatsoever to Plaintiffs", we respectfully disagree. Without making any judgment about the ultimate similarity of the fig- ures to the appellants, we conclude from our own inspection 12357 of the robots that material facts exist that might cause a rea- son able jury to find them sufficiently "like" the appellants to violate Cal. Civ. Code S 3344.

We reject appellees' assertion that Fleet vs. CBS, 58 Cal. Rptr. 2d 645 (Cal. Ct. App. 1996) is new controlling authority that requires us to revisit the determination on first appeal that appellants's 3344 claims are not preempted by federal copy- right law.

Wendt I, 1995 WL 115571, at 1. Fleet is not con- trolling new authority on the preemption issue. It holds that an actor may not bring an action for misappropriation under Cal. Civ. Code S 3344 when the only claimed exploitation occurred through the distribution of the actor's performance in a copyrighted movie. Id. at 651 ("Appellants may choose to call their claims misappropriation of right to publicity, but if all they are seeking is to prevent a party from exhibiting a copyrighted work they are making a claim equivalent to an exclusive right within the general scope of copyright". ) (inter- nal quotations omitted).

[3] Appellants here are not seeking to prevent Paramount from exhibiting its copyrighted work in the Cheers series. As we stated in Wendt I, their "claims are not preempted by the federal copyright statute so long as they 'contain elements, such as the invasion of personal rights... that are different in kind from copyright infringement. ' " Wendt I, 1995 WL 115571 at 1 (quoting Waits vs. Frito-Lay, Inc., 978 F. 2d 1093, 1100 (9th Cir. 1992) (citing H.R. Rep. No. 1476, 94th Cong., 2d Sess.

132 (1976) ). The Fleet court acknowledged that it simply found a fact-specific exception to the general rule that "as a general proposition section 3344 is intended to protect rights which cannot be copyrighted". Fleet, 58 Cal. Rptr. 2d at 649. Appellants' claims are not preempted by federal copyright law.

Issues of material fact exist concerning the degree to which the robots are like the appellants. We reverse the grant 12358 of summary judgment on the claim under Cal. Civ. Code S 3344. B. Common-Law Right of Publicity [4] California recognizes a common law right of privacy that includes protection against appropriation for the defen- dant's advantage of the plaintiff's name or likeness. Eastwood vs. Super.

Ct. for Los Angeles County, 198 Cal. Rptr. 342,347 (Cal. Ct. App. 1983).

The right to be protected against such appropriations is also referred to as the "right of publicity". Id. A common law cause of action for appropriation of name or likeness may be pleaded by alleging 1) the defendant's use of the plaintiff's identity; 2) the appropriation of plaintiff's name or likeness to defendant's advantage, commercially or otherwise; 3) lack of consent; and 4) resulting injury. Id. (citing Prosser, Law of Torts S 117 804-07 (4th ed. 1971) ). The so-called right of publicity means in essence that the reaction of the public to name and likeness, which may be fortuitous or which may be managed and planned, endows the name and likeness of the person involved with commercially exploitable opportunities.

The protection of name and likeness from unwarranted intrusion or exploitation is the heart of the law of privacy. Lugosi vs. Universal Pictures, 603 P. 2d 425,431 (1979). [5] We have held that this common-law right of publicity protects more than the knowing use of a plaintiff's name or likeness for commercial purposes that is protected by Cal. Civ. Code S 3344. See White, 971 F. 2d at 1398 (" [a] rule which says that the right of publicity can be infringed only through the use of nine different methods of appropriating identity merely challenges the clever advert is- ing strategist to come up with the tenth". ); see also Abdul- 12359 Jabbar vs. General Motors Corp., 85 F. 3d 407,415 (9th Cir.

1996) (common law right protects identity, which is more flexible than the statutory 'laundry list' of particular means of appropriation); Midler vs. Ford Motor Co., 849 F. 2d 460,463- 64 (9th Cir. 1988) (concluding that there was a claim for vio- lation under common law right of publicity, but not Cal. Civ. Code S 3344, for use of sound-alike singer in advertisement); Motschenbacher vs. R.J. Reynolds Tobacco Co., 498 F. 2d 821,827 (9th Cir. 1974) (concluding that there was a common-law claim from use of an identifiable race car in an advertisement, even though name or likeness of famous driver was not visi- ble). Appellees argue that the figures appropriate only the identi- ties of the characters Norm and Cliff, to which Paramount owns the copyrights, and not the identities of Wendt and Rat- zenberger, who merely portrayed those characters on t elev- sion and retain no licensing rights to them.

They argue that appellants may not claim an appropriation of identity by rely- ing upon indicia, such as the Cheers Bar set, that are the prop- erty of, or licensee of, a copyright owner. Sinatra vs. Goodyear Tire & Rubber Co., 435 F. 2d 711,716 (9th Cir. 1970). Appellants freely concede that they retain no rights to the characters Norm and Cliff; they argue that the figures, named "Bob" and "Hank", are not related to Paramount's copyright of the creative elements of the characters Norm and Cliff.

They argue that it is the physical likeness to Wendt and Rat- zenberger, not Paramount's characters, that has commercial value to Host. [6] While it is true that appellants' fame arose in large part through their participation in Cheers, an actor or actress does not lose the right to control the commercial exploitation of his or her likeness by portraying a fictional character. Lugosi, 603 P. 2d at 431. [7] Appellants have raised genuine issues of material fact concerning the degree to which the figures look like them. 12360 Because they have done so, appellants have also raised triable issues of fact as to whether or not appellees sought to appro- priate their likenesses for their own advantage and whether they succeeded in doing so.

See Midler, 849 F. 2d at 463. The ultimate issue for the jury to decide is whether the defendants are commercially exploiting the likeness of the figures to Wendt and Ratzenberger intending to engender profits to their enterprises. See Eastwood, 198 Cal. Rptr. at 349 ("The first step toward selling a product or service is to attract the con- sumer's attention". ) We therefore reverse the grant of sum- mary judgment on the common law right of publicity claim. C. Unfair Competition [8] Section 43 (a) of the Lanham Act (15 U.S.C. S 1125 (a) ) prohibits, inter alia, the use of any symbol or device which is likely to deceive consumers as to the association, sponsor- ship, or approval of goods or services by another person.

The appellants' claim is for false endorsement-that by using an imitation of their unique physical characteristics, Host mis rep- resented their association with and endorsement of the Cheers bars concept. In Waits, 978 F. 2d at 1110, we held such a claim actionable under S 43 (a): [a] false endorsement claim based on the unautho- rize d use of a celebrity's identity... alleges the mis- use of a trademark, i. e., a symbol or device such as a visual likeness, vocal imitation, or other uniquely distinguishing characteristic, which is likely to con- fuse consumers as to the plaintiff's sponsorship or approval of the product. [9] In Wendt I we held that appellants would have a claim if "Host's conduct had created a likelihood of confusion as to whether plaintiffs were endorsing Host's product". 1995 WL 115571 at 3. In order to determine whether or not such con- 12361 fusion is likely to occur, we referred to a "well settled eight factor test" to be applied to celebrity endorsement cases, Newton vs. Thomason, 22 F. 3d 1455, 1462 (9th Cir. 1994).

This test requires the consideration of: 1) the strength of the plaintiff's mark; 1 2) relatedness of the goods; 3) similarity of the marks; 4) evidence of actual confusion; 5) marketing channels used; 6) likely degree of purchaser care; 7) defendant's intent in selecting the mark; 8) likelihood of expansion of the product lines. Id. at 1462 (citing AMF, Inc. vs. Sleekcraft Boats, 599 F. 2d 341 (9th Cir. 1979) ). In Wendt I we concluded that one of the primary factors of this test was the 'similarity of the marks' and because there was a disputed issue of material fact as to that issue, summary judgment was inappropriate on this claim. [10] On remand, however, the district court simply com- pared the robots with the appellants in the courtroom and awarded judgment because there was "no similarity at all".

The district court erred in failing independently to analyze any of the other relevant factors to determine whether or not 1 In a case involving confusion over endorsement by a celebrity plaintiff, 'mark' means the celebrity's persona and the strength of the mark refers to the level of recognition the celebrity enjoys. White, 971 F. 2d at 1400.12362 there was a likelihood of confusion to consumers as to whether appellants sponsored, approved of, or were otherwise associated with the Cheers bars. [11] The Lanham Act's 'likelihood of confusion's standard is predominantly factual in nature. Summary judgment is inappropriate when a jury could reasonably conclude that most of the factors weigh in a plaintiff's favor. Abdul-Jabbar, 85 F. 3d at 413 (9th Cir.

1996). See also MDT Corporation vs. New York Stock Exchange, Inc., 858 F. Supp. 1028, 1032 (C.D. Cal. 1994) (summary judgment disfavored in trademark cases because the ultimate issue of likelihood of confusion is so inherently factual). [12] Application of these factors indicates that the district court erred in rejecting appellants' Lanham Act claim at the summary judgment stage because a jury could reasonably conclude that most of the factors weigh in appellants' favor. Wendt and Ratzenberger were principal players on Cheers, a popular television show.

They are clearly well-known among the target customers of Host's Cheers bars. For the purposes of this analysis, a jury could reasonably conclude that their mark is strong. [13] For the same reason, their 'goods' (their skill and fame as actors) are obviously related to Host's 'goods' (the prod- ucts sold in the Cheers bars and the bars themselves) even if they are not strictly competitive. The issue is whether a con- sumer would be confused as to Wendt and Ratzenberger's association with or sponsorship of Host's bars. See White, 971 F. 2d at 1400 ("In cases concerning confusion over celebrity endorsement, the plaintiff's 'goods' concern the reasons for or source of the plaintiff's fame". ) The source of their fame and the Host bars are identical: the Cheers television series.

A jury could conclude that this factor weighs in appellants' favor because it would be reasonable for a customer to be confused as to the nature of Wendt and Ratzenberger's association with Host's Cheers bars and the goods sold there. 12363 [14] The third factor, the similarity of the marks, is the pri- mary issue in dispute. Because appellants have raised triable issues of material fact concerning the degree to which the robots resemble the appellants, a reasonable jury might find that this factor weighs in appellants' favor. Under the Lanham Act, in camera inspection is not sufficient; the district court must view the marks "as they appear in the marketplace". E & J Gallo Winery vs. Gallo Cattle Co., 967 F. 2d 1280, 1291 (9th Cir.

1992). [15] Appellants presented evidence of actual confusion, the fourth factor. Both Ratzenberger and Wendt stated in their declarations that they have been approached by members of the public who commented on the similarity between the appellants and the robots at the Cheers airport bars: "The usual comment is some variation on 'Hey George, I just had a drink with you in Kansas City. ' " They also submitted evi- dence of consumer confusion to the district court prior to summary judgment in the form of survey evidence. The court rejected this evidence as "not a good survey". For reasons detailed below, this evidence should not have been excluded.

Sufficient evidence exists by which a reasonable jury might infer actual consumer confusion. [16] The fifth factor, marketing channels used, weighs in the appellants' favor. The allegation is that Host is appropriate- ing appellants' likenesses because the target audience of the Cheers bars are customers who are fans of the television series. Such a similarity in marketing channels suggests that there is at least a likelihood of consumer confusion.

[17] The sixth factor, likely degree of purchaser care, weighs in favor of appellants as well. Consumers are not likely to be particularly careful in determining who endorses or is affiliated with an airport bar in which they might pur- chase only a single beverage. They will be even less likely to scrutinize the source of the animatronic figures which are not for sale, but are used instead to attract patrons to the bars. 12364 This low degree of care makes confusion of sponsorship likely. See White, 971 F. 2d at 1400 ("consumers are not likely to be particularly careful in determining who endorses VCR's, making confusion as to their endorsement more likely". ) [18] The seventh factor is defendant's intent in selecting the mark.

Appellants have alleged facts that could give rise to an inference that Host intended to confuse customers as to Wendt and Ratzenberger's sponsorship or endorsement of the Cheers bars by creating robots with their physical characters- tics. See AMF, Inc. vs. Sleekcraft Boats, 599 F. 2d 341,354 (9th Cir. 1979) ("When the alleged infringer knowingly adopts a mark similar to another's, reviewing courts presume that the defendant can accomplish his purpose: that is, that the public will be deceived". ). In their opposition to summary judgment appellants submitted evidence that Host intentionally designed the animatronic figures to resemble Wendt and Rat- zenberger and that it recognized from the outset that the value of the association with Wendt and Ratzenberger themselves was "a major drawing card of the Cheers concept". After being advised that appellants would not agree to the use of their likenesses, Host altered the robots cosmetically, named them "Hank" and "Bob", 2 and refused to recast them into a "friendly neighborhood couple", as they were advised to do by Paramount.

Based on this evidence, an inference can be raised that Host intended to exploit the appellants' celebrity by confusion as to the similarity between the figures and the appellants. [19] We have found that the eighth factor, likelihood of expansion of the product lines, "does not appear apposite to a celebrity endorsement case", White, 971 F. 2d at 1401. Here, however, Ratzenberger has offered evidence that he would like to appear in advertisements for beer and has declined offers from small breweries in order to be available to a large 2 Until that point "Hank" was referred to in the record as "Cliff" and "Bob" as "Norm". 12365 brewery. "Inasmuch as a trademark owner is afforded greater protection against competing goods, a 'strong possibility' that either party may expand his business to compete with the other will weigh in favor of finding that the present use is infringing". Sleekcraft, 599 F. 2d at 354 (citing Restatement of Torts S 731 (b) ).

This factor therefore weighs in appellants' favor as the potential exists that in the future Ratzenberger's endorsement of other beers would be confused with his alleged endorsement of the beers sold at Host's bars. [20] A reasonable jury could conclude that most of the fac- tors weigh in appellants' favor and that Host's alleged con- duct creates at least the likelihood of consumer confusion. Whether appellants' Lanham Act claim should succeed, of course, is a matter for the jury. Accordingly, we reverse the dismissal of the unfair competition claim and remand. D. Exclusion of Survey Evidence In their opposition to Paramount's summary judgment motion, appellants offered into evidence the results of a con- sumer survey taken in the vicinity of the Cheers bars at the Cleveland and Kansas City airports.

The district court refused to admit the evidence, saying that the evidence was "not a good survey". [21] As the record stood, the refusal was an abuse of disc re- tion. In trademark cases, surveys are to be admitted as long as they are conducted according to accepted principles and are relevant. E & J Gallo Winery, 967 F. 2d at 1280; see also Pru- dental Ins.

Co. of Am. vs. Gibraltar Fin. Corp., 694 F. 2d 1150, 1156 (9th Cir. 1982). Challenges to survey method ol- ogy go to the weight given the survey, not its admissibility.

Prudential Ins., 694 F. 2d at 1156. However, because of the paucity of the record, upon remand, the parties should have the opportunity respectively to lay a foundation for the adm is- sion of the survey or to challenge the adequacy of the founda- tion. 12366 E. Exclusion of Expert Testimony Prior to the first appeal in this case the district court issued a Preclusion Order barring the introduction of expert testi- mony as a sanction against appellants' former counsel for fail- ure to disclose damage evidence and for being late disclosing experts. Upon remand, the district court denied appellants' request that it vacate its order. The initial Preclusion Order was issued on August 9, 1993 as a sanction against appellants' former counsel. At that time, counsel's failure to comply with discovery rules potentially prejudiced Host and Paramount's ability to prepare ade- qu ately for trial.

Today, that is not so. Both parties now have ample opportunity to begin the expert disclosure procedure anew. Wanderer vs. Johnston, 910 F. 2d 652,656 (9th Cir. 1990), requires us to determine whether a sanction is proper under a five-factor test analyzing: 1) the public's interest in expedia- tio us resolution of litigation; 2) the court's need to manage its docket; 3) the risk of prejudice to the defendants; 4) the public policy favoring disposition of cases on their merits; 5) the availability of less drastic sanctions.

We conclude that under this test, the Preclusion Order is no longer proper. Less drastic sanctions are available and the defendants are no longer pre ju- diced by the actions of appellants' former counsel. We grant appellants' request to vacate the Preclusion Order upon remand. However, the district court, may, in its discretion, impose reasonable monetary sancti.