That's Hot: Trade-mark Rights in Catch Phrases
By Leonard Glickman
In this third instalment of my ongoing series of articles on trade-mark rights in the film and television industries, I deal with trade-mark rights in catch phrases.
Catch phrases are expressions that are typically popularized through repeated use by a real person or fictional character. The catch phrase du jour appears to be WINNING, adopted by Charlie Sheen and used frequently in his recent media campaign against Warner Brothers and the producers of Two And A Half Men. Bart Scott of the New York Jets coined the phrase “CAN’T WAIT!” in a post-game interview following the Jets’ defeat of the New England Patriots earlier this year and has filed a trade-mark application to protect the phrase. Sports announcer Gus Johnson, who is calling NCAA March Madness games for Turner and CBS, is known for his catch phrase “RISE and FIRE!”. Johnson has registered the catch phrase as a trade-mark in the U.S. and is selling t-shirts and hats bearing the catch phrase. In 2006, TV-Land compiled a list of the 100 greatest TV catch phrases. The list includes such well known catch phrases as:
Bam! – Emeril Lagasse
Book ‘em, Danno – Hawaii Five-O
Come On Down – The Price is Right
D'Oh! – Homer Simpson
Dyn-O-Mite – JJ on Good Times
Here’s Johnny! – Ed McMahon on The Tonight Show
Live Long and Prosper – Spock on Star Trek
No Soup for You – The Soup Nazi on Seinfield
That’s Hot! – Paris Hilton on The Simple Life
Yaba Daba Do! – The Flintstones
You’re Fired! – Donald Trump on The Apprentice
Catch phrases are capable of being registered as trade-marks in Canada and the United States and have been the subject of a number of cases. In a very recent case, filed in the United States District Court for the Middle District of Tennessee on March 3, 2011 (case 3:11-cv-00194), comedian Jeffrey Mishler (professionally known as Jeff Allen) sued NBCUniversal LLC and Fabulicious, LLC for their use of the catch phrase HAPPY WIFE, HAPPY LIFE. In his complaint, Mr. Mishler cited his use of the same catch phrase since at least as early as 1999 and his trade-mark registration for the catch phrase in international classes 9, 25 and 41. According to the complaint, both NBC and Teresa Jiudice, (the principal of Fabulicious, LLC and one of “The Real Housewives of New Jersey”) used the catch phrase HAPPY WIFE, HAPPY LIFE on television and the internet and sold t-shirts, coffee mugs and hats bearing the HAPPY WIFE, HAPPY LIFE mark. Mr. Mishler’s complaint alleges trade-mark infringement in violation of the Lanham Act, unfair completion, false designation of origin, passing off and false advertising under Section 43(a) of the Lanham Act, trade-mark dilution and violation of the Tennessee Consumer Protection Act.
Two of the catch phrases on the list above have also been the subject of litigation. In Paris Hilton v. Hallmark Cards, 580 F.3d 874 (9th Cir. 2010), Paris Hilton sued Hallmark Cards for Hallmark’s use of her name, likeness and famous catch phrase and registered trade-mark “That’s Hot” on a birthday card with the caption “That’s Hot” as depicted below:
In her lawsuit, Hilton asserted claims of misappropriation of publicity under California common law, false designation under the Lanham Act and trade-mark infringement. The U.S. District Court for the Central District of California allowed Hallmark’s motion to strike the trade-mark infringement claim but denied Hallmark’s motion to strike the right of publicity claim pursuant to California’s anti-SLAPP statute which allows defendants to dismiss “strategic lawsuits against public interest” that are brought simply to interfere with the exercise of free speech rights. The Ninth Circuit upheld the District Court and rejected Hallmark’s argument that its depiction of Ms. Hilton was sufficiently transformative and therefore protected free speech under the First Amendment. To succeed, Hallmark would have had to establish that the image in question was so transformed as to constitute an image separate from the celebrity’s likeness. While the Ninth Circuit noted some differences between the Simple Life episode and the image on the card, the court stated “Despite these differences, the basic setting is the same: we see Paris Hilton, born to privilege, working as a waitress”. The case was settled in September, 2010 with media reports indicating Hilton received an undisclosed amount from Hallmark.
In a 1983 case, John W. Carson and Johnny Carson Apparel, Inc. v. Here’s Johnny Portable Talents, Inc. 698 F.2d 831 (6th cir), Johnny Carson sued a Michigan corporation engaged in the business of renting and selling “Here’s Johnny” portable toilets. The phrase “Here’s Johnny” was used to introduce Carson on The Tonight Show and was also licensed for use on clothing labels and in advertising campaigns. The plaintiffs commenced an action alleging unfair competition, trade-mark infringement under federal and state law and invasion of privacy and publicity rights. The District Court in Michigan dismissed Carson’s complaint, holding that the plaintiffs had failed to satisfy the likelihood of confusion test and that “Here’s Johnny” was not such a strong mark that its use for other goods should be entirely foreclosed. The right of privacy and right of publicity claims failed, with the court holding these rights only apply to a name or likeness and that “Here’s Johnny” did not qualify.
The Sixth Circuit affirmed the District Court’s decision on likelihood of confusion and dismissed the privacy claim but took a broader view of the right of publicity and held that “a celebrity’s legal right of publicity is invaded whenever his identity is intentionally appropriated for commercial purposes”. In this case, the “Here’s Johnny” catch phrase was considered part of Carson’s identity.
The “Here’s Johnny” catch phrase was previously the subject of a decision in Canada by the Federal Court, Trial Division in Carson v. Reynolds,  49 CPR (2d) 57 (FCTD). In this case, Reynolds applied to register the mark HERE’S JOHNNY in association with portable trailers, outhouses and lavatory facilities. The application was opposed by Johnny Carson on the basis of Section 9 (1)(k) of the Trade-marks Act (the “Act”), which provides as follows:
“No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for...any matter that may falsely suggest a connection with any living individual.”
Carson’s opposition was rejected by the Opposition Board but succeeded on appeal to the Federal Court, Trial Division primarily on the basis of new survey evidence introduced by Carson showing that the phrase “Here’s Johnny” suggested Johnny Carson to over fifty percent of those persons.
Under Canadian law, in addition to raising a claim under Section 9(1)(k) of the Act, any plaintiff attempting to enforce its rights in a catch phrase that is also a registered trade-mark would commence trade-mark infringement proceedings under the Act and would also likely add a depreciation of goodwill claim under Section 22.1 of the Act, which states “No person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto”. If the action commenced by Jeffrey Mishler in the United States were to be brought in Canada, he would likely succeed on the trade-mark infringement claim given that the marks are identical and the mark was used by the defendants in association with wares covered by the plaintiff’s registration.
With respect to rights of publicity in catch phrases, a plaintiff in Canada would consider pursuing a common law claim for misappropriation of personality and/or statutory action under the provincial privacy statutes in British Columbia, Manitoba, Newfoundland and Saskatchewan or the privacy provisions in the Quebec Civil Code. By way of example, the British Columbia Privacy Act (the “BCPA”) defines a “portrait” as a likeness, still or moving, and includes a likeness of another deliberately disguised to resemble the plaintiff and a caricature. The BCPA further provides that it is actionable “for a person to use the name or portrait of another for the purpose of advertising or promoting the sale of, or other trading in, property or services, unless that other, or a person entitled to consent on his or her behalf, consents to the use for that purpose”. In Joseph v. Daniels,  4 BCLR (2d) 239 (BCSC), the first reported case under the BCPA, the British Columbia Supreme Court held that the use of the plaintiff bodybuilder’s torso without also showing his head, was not a violation of the BCPA because the torso was impossible to identify as that of Mr. Joseph without showing his face. Privacy legislation in Manitoba, Newfoundland and Saskatchewan all tie the violation of privacy rights to the unauthorized commercial exploitation of the use of the name, likeness or voice of a person and would therefore not provide the basis of a claim for the unauthorized use of a catch phrase. Similarly, Article 36(5) of the Quebec Civil Code states:
“The following acts, in particular, may be considered as invasions of the privacy of a person...using his name, likeness or voice for a purpose other than the legitimate information to the public”
In a case under Quebec civil law dealing with catch phrases, Serge Theriault, one of the Quebec comedians known as Ding et Dong brought an application for an interlocutory injunction to restrain the use of Ding et Dong’s well known phrases “est bonne! est bonne! est bonne! (translation: great! great! great!) and “est effrayante” (translation: it’s scary) in a print and radio advertising campaign by the La Ronde amusement park in Montreal. In Theriault v. Association Montréalaise d’action Récréative et Culturelle,  C.S. 946, Madame Justice Alice Desjardins denied the injunction and held, in obiter, that individuals cannot appropriate for themselves catch phrases that are in common usage in the language even where the individual is responsible for making the phrase famous.
It is an interesting question as to whether a catch phrase can form the basis of misappropriation of personality action under Canadian common law. The leading case on misappropriation of personality in Canada is Gould Estate v. Stoddart Publishing Co. (1998), 39 OR 549 (CA), where the court adopted the “sales versus subject” distinction whereby “if the defendant used the plaintiff’s name or likeness predominantly in connection with the sale of consumer merchandise or solely for the purposes of trade” then the claim would be established. Conversely, if the plaintiff was the subject of the defendant’s work, such as the subject of a biography, it is unlikely that the plaintiff would succeed in establishing that his or her personality rights where infringed.
There is no doubt that the U.S. cases noted above would fall on the “sales” side of the sales versus subject analysis. The larger question is whether personality rights in Canada would be given the broad definition given to publicity rights in the United States in the “Here’s Johnny” case and other cases where a catch phrase was considered to be part of the identity of the plaintiff. While not dealt with in Gould, where the name and likeness of the plaintiff were clearly in issue, other cases have held that a person’s identity can also include voice, reputation and virtually any other unequivocal aspect of the persona. Whether catch phrases fit the bill will be for the courts to decide.