Beckham Beckons: Using Real People's Names In Movie Titles

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The recent explosion of media coverage over the California arrival of David Beckham got me thinking about the use -- or more precisely, the "fair use" -- of his name in the title of the motion picture Bend It Like Beckham.  When I first heard that title back at the time of the movie's release in 2002, I had only the vaguest knowledge of David Beckham and made no connection between him and the rest of the title.  Indeed, to this ignorant American the title had mysterious and vaguely erotic connotations, as if it referred to a position in the Kama Sutra.  But the rest of the world, of course, knew immediately that the Beckham in the title was THE most famous athlete on the planet and that the title itself referred to Beckham's amazing skill at scoring on free kicks by “bending" (curving) the ball, which makes it veer out of the goalie's reach.

Knowing Hollywood, we can assume that all of the necessary permissions were signed in triplicate long before the first scene was shot.  But what if Beckham had refused to give permission?  Could you still include the name of the most famous athlete on the planet in the title of your motion picture?  Could you use for free a name that had a commercial endorsement value worth tens of millions of dollars?

Yes.  Or at least there is a good basis for arguing that the use of Beckham's name is a fair use.  The analysis begins with Section 46 of the Restatement (Second) of Unfair Competition, which states that "[o]ne who appropriates the commercial value of a person's identity by using without consent the person's name, likeness, or other indicia of identity for purposes of trade is subject to liability ."  The key phrase, however, is "for purposes of trade."  What exactly is a use of Mr. Beckham's name "for purposes of trade." Section 47 of the Restatement identifies the typical uses that we associate with "purposes of trade," such as use in an advertisement for a product or even the name of that product.  Thus a company would violate David Beckham's right of publicity if it marketed a David Beckham Soccer Ball or used his name and image in an advertisement for, say, a soft drink.  But there are First Amendments limits to Beckham's rights, as Section 47 of the Restatement explicitly acknowledges:

However, use "for purposes of trade" does not ordinarily include the use of a person's identity in news reporting, commentary, entertainment, works of fiction or nonfiction, or in advertising that is incidental to such uses.

Comment c to Section 47 elaborates on the scope and limits of such usage:

The right of publicity . . . is fundamentally constrained by the public and constitutional interest in freedom of expression. The use of a person’s identity primarily for the purpose of communicating information or expressing ideas is not generally actionable as a violation of the person’s right of publicity. The scope of activities embraced within this limitation on the right of publicity has been broadly construed . . . . Use of another’s identity in a novel, play, or motion picture is also not ordinarily an infringement. The fact that the publisher or other user seeks or is successful in obtaining a commercial advantage from an otherwise permitted use of another’s identity does not render the appropriation actionable. However, if the name or likeness is used solely to attract attention to a work that is not related to the identified person, the user may be subject to liability for a use of the other’s identity in advertising.

Working from that Comment, the courts have fashioned the so-called "relatedness" test, which first appeared in the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)  In Rogers, the court had to determine whether the First Amendment  barred a right-of-publicity claim by actress-dancer Ginger Rogers against the creators of the film “Ginger and Fred.” Despite the title, the film was not about Ginger Rogers and Fred Astaire; instead, it was a Frederico Fellini film about two Italian cabaret performers who imitated the famous dancing duo and become known in Italy as “Ginger and Fred.” In applying the “relatedness” test, the court held that the title of the movie was protected by the First Amendment because it was not “wholly unrelated” to the movie and was not “simply a disguised commercial advertisement for the sale of goods and services.” Id. at 1005.

Since then, the Sixth Circuit has applied the "relatedness" test in Parks v. LaFace Records, 329 F.3d 437 (6th Cir. 2001), a right-of-publicity claim by civil rights icon Rosa Parks against the music group Outkast . The issue there was whether the lyrics to a rap song entitled “Rosa Parks” were “related” to the title of the song. The Ninth Circuit imported the test into the trademark realm in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), to determine whether the First Amendment protected the use of "Barbie Girl" for the title of a song by Aqua that poked fun at one of Mattel's most valuable properties.  (Check out the music and lyrics here.)  Judge Alex Kozinski, who wrote the opinion, started with a witty acknowledgment of the stakes at issue: "If this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong."  Trademark Kong lost there, and Beckham should lose here.  In a ruling that would apply equally to Beckham, Judge Kozinski wrote:

Rogers concluded that literary titles do not violate the Lanham Act "unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work." Id. at 999 (footnote omitted). We agree with the Second Circuit's analysis and adopt the Rogers standard as our own.

Applying Rogers to our case, we conclude that MCA's use of Barbie is not an infringement of Mattel's trademark. Under the first prong of Rogers, the use of Barbie in the song title clearly is relevant to the underlying work, namely, the song itself. As noted, the song is about Barbie and the values Aqua claims she represents. The song title does not explicitly mislead as to the source of the work; it does not, explicitly or otherwise, suggest that it was produced by Mattel. The only indication that Mattel might be associated with the song is the use of Barbie in the title; if this were enough to satisfy this prong of the Rogers test, it would render Rogers a nullity.  

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Comments (1) Read through and enter the discussion with the form at the end
Jan - November 1, 2007 8:32 PM

I am in search of movies that were made by using a persons name as the title of the movie?
can you help me?
Jan

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