Vampira: The Movie is pleased to present, free online for the first time, the court decision in Nurmi v. Peterson, the case in which Maila "Vampira" Nurmi sued Cassandra "Elvira" Peterson for alleged unauthorized use of her likeness.

District Court, C.D. California

Nurmi v. Peterson

No. CV 88-5436-WMB
Decided March 31, 1989

COPYRIGHTS

1. Non-copyright protection of creativity --
Right of publicity (§230.05)

TRADEMARKS AND UNFAIR TRADE PRACTICES

Unfair competition -- State statutes and common law (§395.03)

Plaintiff who created and performed character named "Vampira" and who alleges that defendants, in creating character "Elvira," used certain props, clothes, and mannerisms similar but not identical to "Vampira" character has failed to state cause of action under California Civil Code Section 3344, which prohibits unauthorized use of another's "likeness," since "likeness" means actual representation of another person's appearance, and not simply close resemblance, nor do such allegations give right to cause of action for violation of common law right to publicity.

2. Infringement; conflicts between marks --
Passing off; state law trademark infringement -- Lanham Act Section 43(a) (§335.0703)

REMEDIES

Monetary -- Damages -- Trademarks (§510.0508)

Punitive damages are not appropriate in claims under Lanham Act Section 43(a), 15 USC 1125(a).

--------------------

Action by Maila Nurmi against Cassandra Peterson, et al., for violation of the Lanham Act, as well as for state law claims alleging unfair competition and violation of rights of privacy and publicity. On defendants' motion to dismiss plaintiff's claims for unfair competition and for violation of rights of publicity and privacy, to strike plaintiff's request for punitive damages under Lanham Act, and for sanctions. Motions to dismiss and to strike granted; motion for sanctions denied.

Jan Goodman, Venice, Calif.; Mandel & Manpearl, by Stuart Mandel, Beverly Hills, Calif., for plaintiff.

Loeb & Loeb, by David A. Gerber and Kathleen O. Peterson, Los Angeles, Calif., for defendants.

Byrne, J.

I. BACKGROUND

The plaintiff is a former 1950's television movie hostess who created and performed a character called Vampira. The defendants are Cassandra Peterson, an actress who currently plays a horror movie hostess called Elvira and Elvira's affiliated marketing, broadcasting and management firms.

The plaintiff alleges that she had developed a character in the 1950s consisting of a distinctive dark dress, certain horror movie props, and a special personality. She contends that the defendants contacted plaintiff in 1981 to seek to recreate her character for contemporary audiences. After negotiations between the parties ended unsuccessfully, the defendants allegedly then created the character Elvira based upon plaintiff's previously developed character. The plaintiff alleges that she did not consent to the defendants' actions and that she received no compensation in connection with this appropriation. Subsequently, Elvira became a successful character on television and films which led to a number of merchandising spin-offs.

The plaintiff originally brought one federal claim based on §43(a) of the Lanham Act, 15 U.S.C. §1125(a) and state law claims alleging violations of Cal.Civ. Code §3344 (unfair competition) and the common law rights of privacy and publicity, common law unfair competition, and breach of contract. Plaintiff also seeks injunctive relief and an accounting.

The defendants bought a motion to dismiss on January 9, 1989 for lack of federal question jurisdiction. In a minute order on January 12, 1989, the Court dismissed the breach of contract claim and retained jurisdiction over the remaining claims.

The defendants now seek to dismiss the plaintiff's third, fourth and fifth claims under §3344 and for common law invasions of the rights of privacy and publicity. The defendants also move to strike the plaintiff's prayer for punitive damages under the Lanham Act, and for sanctions against the plaintiff for opposing the motion to strike.

II. DISCUSSION

The Court grants the defendants' motions to dismiss and to strike the claim for punitive damages under the Lanham Act. The motion for sanctions is denied.

1. The Motion to Dismiss1

The defendants seek dismissal of the §3344 and the common law right of publicity and privacy claims on the grounds that each of these causes of action only protects plaintiff from the appropriation of their physical likenesses. Plaintiff has not alleged that the defendants' character, Elvira, was created to look exactly like the plaintiff's character, Vampira. Rather, the plaintiff claims only that the defendants used certain props, clothes or mannerisms that were similar to those used by the Vampira character. Defendants argue that the use of another character's general characteristics, as opposed to specific facial features, photographs or other exact physical replicas, is not actionable under §3344 or the common law rights of publicity or privacy.

Under §3344(a), damages may be recovered from any person who knowingly uses another's name, voice, signature, photograph or likeness in any manner or for commercial purposes, without permission. The plaintiff argues that although her name, voice, signature or photograph were not appropriated by the defendants, her "likeness" was used when the defendants created a character that bore an approximate resemblance to Vampira. The defendants contend that the word "likeness" as contemplated by the statute means more than a resemblance but refers instead to an exact copy or portrait of a person. No case has directly construed the meaning of the word "likeness" under §3344 and the parties cite no controlling authority for their contentions.

[1] The Court finds that the defendants' construction of the word "likeness" in §3344 more faithfully reflects the intent of the statute. Cases which have considered claims arising under §3344 or in closely related right of privacy or publicity actions have implied that the term "likeness" means an actual representation of a person, rather than a close resemblance.

In Midler v. Ford Moter Co., 849 F.2d 460, 463 [7 USPQ2d 1398, 1400-01] (9th Cir. 1988), the Ninth Circuit found that the use of a voice that exactly duplicated the plaintiff's singing style was not actionable under §3344 since the plaintiff's actual voice was not employed. Consequently, although the plaintiff in Midler argued that the imitation of her voice was an approximation under the statute, the court held that no potential §3344 liability exists unless there has been an actual approximation of a plaintiff's physical characteristics.2 Similarly, the plaintiff here has not alleged that Elvira exactly duplicated the plaintiff's physical qualities. Therefore, the Court finds that under the rationale of the Midler case, the plaintiff cannot maintain a §3344 action.

California cases have also employed the term "likeness" in contexts synonymous with an exact replication of a person's features. In Lugosi v. Universal Pictures, 160 Cal.Rptr. 323, 329 [205 USPQ 1090, 1093-94] (Cal. 1979), the court discussed at length the descendibility of the right of publicity and concluded that a name or likeness unexploited in a person's lifetime did not create a descendible right for his heirs. In making this ruling, the court referred several times to the plaintiff's likeness in terms which were synonymous with actual appearance. Thus, the court observed that while a dracula character that unmistakably bore the plaintiff's features could be subject to a right of publicity action, a generic dracula, which might nevertheless resemble in many ways the plaintiff's character, would not. Id. at 325, 329 [205 USPQ at 1093-94, 1096]. Consequently, the word "likeness" has been employed by the California Supreme Court to mean an exact copy of another's features and not merely a suggestive resemblance.

The defendants' interpretation of the meaning of "likeness" as it appears in §3344 to mean an actual copy of another's features is also more natural in light of contemporary entertainment industry practices. Under the plaintiff's definition, if a person merely were to wear another's clothes or emulate another's mannerisms, an action would lie under §3344 because a "likeness" was being appropriated. However, such a definition would expand §3344 to freeze all rights to certain props, clothing, or other qualities surrounding a character with the first person to portray a given part. In effect, all subsequent actors would be subject to legal challenge on the grounds that they had copied elements of characters portrayed by earlier generations of actors. This result would greatly inhibit the development of the entertainment arts and the freedom of expression, a result the Court finds cannot have been intended by the California legislature in drafting §3344.

The plaintiff does not allege that the defendants created Elvira to look exactly like Vampira but rather asserts that defendants used some of the plaintiff's props, clothes, and mannerisms. Given these allegations, the Court finds that the defendants did not appropriate the plaintiff's name, voice, signature, photograph, or likeness. Thus, the plaintiff's second claim under §3344 is dismissed.

The plaintiff's third and fourth claims allege violations of the common law rights of publicity and privacy. The right of publicity is a specific variety of the general right of privacy. See, e.g., Lugosi, supra at 326 [205 USPQ at 1094]. Eastwood v. Superior Court, 198 Cal.Rptr. 342, 346 (Cal.App. 1983) (the right of publicity is the right to be free from the appropriation of one's name or likeness for another's commercial purposes and is one of the four forms of the common law right of privacy). The other forms of the right of privacy are the public disclosure of personal facts, false light publicity, and intrusion into the plaintiff's solitude. Lugosi, supra at 326 [205 USPQ at 1094]. Eastwood, supra at 346. None of these are relevant in the instant case. Consequently, the plaintiff's fourth and fifth claims therefore resolve into an identical claim of a right of publicity violation.

To maintain a right of publicity claim, a plaintiff must show that his or her name or likeness was appropriated without consent. Eastwood, supra at 347. The plaintiff cites two cases, Midler, supra, and Chaplin v. Amador, 269 P. 544 (Cal.App. 1928) for the proposition that the imitation of a distinctive character is actionable under the right of publicity. However, in both of these cases, the courts permitted the plaintiffs to sue only for the defendants' fraudulent attempt to deceive the public into believing that the plaintiffs were actually present. In Midler, the court found that the plaintiff's voice was duplicated such that the public could be induced to think that she was actually performing in a car commercial. 849 F.2d at 463-64 [7 USPQ2d at 1401]. In Chaplin, an imitator attempted to defraud the series of films. 269 P. at 545-46.

Consequently, in both of the cases cited by the plaintiff, a suit was permitted to go forward only on the plaintiff's fraud claims and not on right of privacy or publicity grounds. Indeed, in Midler, as discussed above, the plaintiff was precluded from bringing a §3344 claim which is analogous to a common law right of publicity action. Thus, neither case supports the proposition that a person's use of a character that bears a mere resemblance to another is actionable under the common law right of publicity.

In this case, the plaintiff does not allege that the defendants actually tried to copy exactly the Vampira character in creating Elvira. By the plain terms of the complaint, the defendants are alleged to have created a new character that resembled the Vampira character but which used a different name and employed a different actress in the lead role. The Court finds that because these allegations do not amount to the claim that the plaintiff's actual features were used by the defendants for commercial purposes, no common law right of publicity or privacy action can be maintained. Thus, the plaintiff's fourth and fifth claims are dismissed.

2. The Motion to Strike the Punitive Damages Claims under the Lanham Act

The defendant also moves to strike the plaintiff's claim for punitive damages under the Lanham Act. In Getty Petroleum Corp. v. Bartco Petroleum Corp., 858 F.2d 102, 113 [8 USPQ2d 1336, 1343-44] (2nd Cir. 1988), the latest appellate decision on the issue, the court ruled that punitive damages are not authorized under the Lanham Act. No Ninth Circuit authority directly addresses the matter.

The plaintiff argues that Getty is not controlling in this Circuit and cites two cases that she claims authorizes punitive damages under the Lanham Act. Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1024-25 [227 USPQ 598, 610-11] (9th Cir. 1985) and Big O Tire Dealers v. Goodyear Tire and Rubber Co., 561 F.2d 1365, 1374-76 [195 USPQ 417, 424-26] (10th Cir. 1977). However, neither of these cases discusses the availability of punitive damages under the Lanham Act. Rather, in their relevant portions, they only address the propriety of punitive awards in light of applicable state law. See Transgo, supra (award of punitive damages under California law appropriate); Big O, supra, (award of punitive damages under Ohio law appropriate). These cases do not support the position that the Ninth Circuit departs from the majority rule that punitive damages are not appropriate in Lanham Act claims.

Thus, the defendants' motion to strike the plaintiff's claims for punitive damages under her Lanham Act claim is granted.

3. The Motion for Sanctions

The defendants move for sanctions against the plaintiff on the grounds that her opposition to the motion to strike was frivolous under Fed.R.Civ.P. 11. The Court finds that sanctions are not appropriate in this instance and the defendants' motion is denied.

III. CONCLUSION

The plaintiff's second, third and fourth claims under §3344 and the claims for common law right of privacy and publicity are dismissed.

The defendants' motion to strike the plaintiff's claim for punitive damages under the Lanham Act is granted.

The defendants' motion for sanctions is denied.

Defendants shall have 15 days to answer from the date of this Order.

--------------------

1 The plaintiff contends that the defendants' motion to dismiss is improper since a motion to dismiss on jurisdictional grounds had previously been filed. The "seriatim" filing of dismissal motions, the plaintiff claims, should not be permitted. However, Fed.R.Civ.P. 12(h)(2) provides that a motion to dismiss for failure to state a claim, which is at issue in the instant motion, is not subject to the consolidation of defenses requirements of rule 12(g). Further, there is precedent in other districts for allowing a second, substantive motion to dismiss to be brought after a jurisdictional challenge is rejected. See, e.g., Steele v. Stephan, 633 F. Supp. 950, 951 (D. Kan. 1986); Thorn v. New York City Dept. of Social Services, 523 F.Supp. 1193 (S.D.N.Y. 1981). Thus, because the instant motion follows an initial jurisdictional challenge, and because motions to dismiss for failure to state a claim under Rule 12(b)(6) do not need to be consolidated with other dismissal motions, the Court finds that the plaintiff's objections are without merit.

2 The court further held that the term "likeness" referred to visual images and not voices, and on that ground disallowed the plaintiff's claim. Id. at 463 [7 USPQ2d at 1400-01]. Thus, the court did not directly address the meaning of the term "likeness." The court's decision, however, indicates that a visual image which was not an exact representation would not be actionable under §3344. The plaintiff in Midler was permitted to sue for fraud on other grounds. Id. at 463-64.

The Wild World Of Ted V. Mikels - A movie maverick gets his due - buy now at Oldies.com