'Buckyballs' Lawsuit May Limit Use of Celebrity Name

Before the court analyzed Defendant's attempted rebuttal of each cause of action, it addressed Defendant's claim that the entire case should be dismissed because its product is named after a carbon molecule, not after the man Buckminster Fuller himself. The court held that was a question of fact that could not be decided at this stage of the case. Clearly, this will be an important factual matter to watch as the case continues to unfold. Indeed, this case is unusual in that the man and his discovery have somewhat merged, creating an unusual fact pattern.

Transformative Use Defense

Defendant's first defense is that its use of the name “Bucky” is transformative and protected by the First Amendment. The court rejected this, because previous judicial precedents that relied on the “transformative” defense involved use of a person's likeness and not just his name. The court said, “The simple use of a name is not an act of expression in the way that the creation or alteration of an image is, and a name cannot be transformed while remaining recognizable in the way that an image can.” In addition, the court noted that Fuller's name is not part of Defendant's actual product. Instead, the product's name and materials only reference Fuller. Therefore, the court ruled that “a transformative use defense would be illogical in this context.” Furthermore, any argument as to whether the product is named for the man or the molecule he discovered is a question of fact left for trial.

Right of Privacy

Turning to state law claims under common law and statutory rights of privacy, the court immediately dismissed Plaintiff's cause of action under common law since Fuller is deceased. His right of privacy, however, does live on. California Civil Code ' 3344.1 “provide[s] a remedy for the misappropriation of the name or likeness of a deceased person not available under the common law.” After denying Defendant's motion to dismiss on the grounds of statute of limitations, the court examined Defendant's argument that the term “Bucky” should be protected by statute because it is newsworthy matter. The court concluded that because Plaintiff had alleged that Defendant's use of the term is commercial in nature, the court would not at this stage consider whether the use was “newsworthy.”

Finally, the court considered ownership of the term “Buckyballs” and the fact that Plaintiff is not registered as a successor in interest to the name, as required by any statutory right of publicity claim. In fact, Plaintiff had registered a variation of the name, and the court cited previous precedents for the fact that the variation may suffice, concluding this is a question of fact for trial.

Lanham Act Claim

Next, the court turned to Plaintiff's Lanham Act claim and Defendant's nominative fair use defense. This defense has three parts, as outlined in New Kids on the Block v. News Am. Pub., Inc.: “First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark ' may be used as is reasonably necessary to identify the product ' ; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” 971 F.2d 302, 308 (9th Cir. 1992).

In the instant case, Fuller is the product at issue, and the trademark is his name. The court focused on the third fair use factor. Plaintiff's arguments that “Defendant's conduct did in fact suggest sponsorship or endorsement by Mr. Fuller” could not be dismissed without a trial.

Unfair Business Practices

California's Unfair Competition Law (“UCL”) prohibits unlawful, unfair, or fraudulent behavior. The court found the complaint's allegations sufficient to survive a motion to dismiss, and concluded that “Plaintiff has alleged facts that, if proven, could establish liability under all three prongs of UCL.”

Conclusion

Having survived a motion to dismiss, the Estate will press forward with its claim that the toy company misused the scientist's name and identity, and suggested a false sponsorship to bolster its sales. As the case moves forward, a fact-finder will have to make a threshold finding as to whether the toy is named for the man or the molecule he discovered. The decision on the motion to dismiss is significant because of its discussion of the transformative use First Amendment defense. The court made it clear that this defense depends on a visual transformation through an image, establishing an important precedent for use of this defense in future cases.

Advertisers and marketers should watch this case closely to see what limits may exist on their use of a name that has ties to a celebrity as well as a separate object.

Kyle-Beth Hilfer specializes in advertising, marketing, promotions, intellectual property and new media law. She is of counsel to the law firm Collen IP. She advises clients regularly on their advertising strategies and campaigns to ensure compliance with the Lanham Act and other related statutes. For more information about her law practice, please visit www.kbhilferlaw.com. ' Kyle-Beth Hilfer, P.C. 2012.

“Buckyballs” magnetic toys have been in the news because of the manufacturer's public battle with the Consumer Products Safety Commission (“CPSC”). This past summer, the CPSC sought to ban the sale of the magnetic balls in the United States because of their misuse and threat to children who ingest the toy. Recently, the manufacturer Maxfield & Oberton Holdings, LLC faced another legal setback. In November 2012, a California federal district court denied its motion to dismiss the lawsuit of the Estate of Buckminster Fuller. If the Estate eventually prevails, the emerging precedent could strengthen the rights of a celebrity trying to protect use of his personal name.

The plaintiff in the case of The Estate of Buckminster Fuller v. Maxfield & Oberton Holdings, LLC, U.S. District Court Northern District of California, San Jose Division, Case No.: 5:12-CV-02570-LHK, 11/05/12 Order denying motion to dismiss, is the successor in interest to the rights of Richard Buckminster Fuller, the famous scientist who discovered the Carbon-50 molecule named after him as “Buckminsterfullerene” or “Buckyball.” Plaintiff controls rights to several variations of Fuller's name, including “Bucky Fuller.” The Defendant manufactures and sells the popular desk toy named “Buckyballs” and several other toys that incorporate the “Bucky” prefix, such as “Buckycubes” and “BuckyBlocks.” Throughout Defendant's literature, it refers to Fuller and his discovery. In 2011, Plaintiff had granted Defendant a limited license to use Fuller's name and likeness in connection with a specific limited edition of its “Buckyball” toy.

In this action, Plaintiff seeks an injunction and damages, stating causes of action under the Lanham Act, California privacy statutes, and California unfair competition law. In analyzing the motion to dismiss, the court presumed the plaintiff's allegations in the complaint to be true. Even though the decision cannot be taken as dispositive of the actual facts in this case, it remains instructive for those seeking to enforce their rights of publicity and trademark rights.

Before the court analyzed Defendant's attempted rebuttal of each cause of action, it addressed Defendant's claim that the entire case should be dismissed because its product is named after a carbon molecule, not after the man Buckminster Fuller himself. The court held that was a question of fact that could not be decided at this stage of the case. Clearly, this will be an important factual matter to watch as the case continues to unfold. Indeed, this case is unusual in that the man and his discovery have somewhat merged, creating an unusual fact pattern.

Transformative Use Defense

Defendant's first defense is that its use of the name “Bucky” is transformative and protected by the First Amendment. The court rejected this, because previous judicial precedents that relied on the “transformative” defense involved use of a person's likeness and not just his name. The court said, “The simple use of a name is not an act of expression in the way that the creation or alteration of an image is, and a name cannot be transformed while remaining recognizable in the way that an image can.” In addition, the court noted that Fuller's name is not part of Defendant's actual product. Instead, the product's name and materials only reference Fuller. Therefore, the court ruled that “a transformative use defense would be illogical in this context.” Furthermore, any argument as to whether the product is named for the man or the molecule he discovered is a question of fact left for trial.

Right of Privacy

Turning to state law claims under common law and statutory rights of privacy, the court immediately dismissed Plaintiff's cause of action under common law since Fuller is deceased. His right of privacy, however, does live on. California Civil Code ' 3344.1 “provide[s] a remedy for the misappropriation of the name or likeness of a deceased person not available under the common law.” After denying Defendant's motion to dismiss on the grounds of statute of limitations, the court examined Defendant's argument that the term “Bucky” should be protected by statute because it is newsworthy matter. The court concluded that because Plaintiff had alleged that Defendant's use of the term is commercial in nature, the court would not at this stage consider whether the use was “newsworthy.”

Finally, the court considered ownership of the term “Buckyballs” and the fact that Plaintiff is not registered as a successor in interest to the name, as required by any statutory right of publicity claim. In fact, Plaintiff had registered a variation of the name, and the court cited previous precedents for the fact that the variation may suffice, concluding this is a question of fact for trial.

Lanham Act Claim

Next, the court turned to Plaintiff's Lanham Act claim and Defendant's nominative fair use defense. This defense has three parts, as outlined in New Kids on the Block v. News Am. Pub., Inc.: “First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark ' may be used as is reasonably necessary to identify the product ' ; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” 971 F.2d 302, 308 (9th Cir. 1992).

In the instant case, Fuller is the product at issue, and the trademark is his name. The court focused on the third fair use factor. Plaintiff's arguments that “Defendant's conduct did in fact suggest sponsorship or endorsement by Mr. Fuller” could not be dismissed without a trial.

Unfair Business Practices

California's Unfair Competition Law (“UCL”) prohibits unlawful, unfair, or fraudulent behavior. The court found the complaint's allegations sufficient to survive a motion to dismiss, and concluded that “Plaintiff has alleged facts that, if proven, could establish liability under all three prongs of UCL.”

Conclusion

Having survived a motion to dismiss, the Estate will press forward with its claim that the toy company misused the scientist's name and identity, and suggested a false sponsorship to bolster its sales. As the case moves forward, a fact-finder will have to make a threshold finding as to whether the toy is named for the man or the molecule he discovered. The decision on the motion to dismiss is significant because of its discussion of the transformative use First Amendment defense. The court made it clear that this defense depends on a visual transformation through an image, establishing an important precedent for use of this defense in future cases.

Advertisers and marketers should watch this case closely to see what limits may exist on their use of a name that has ties to a celebrity as well as a separate object.

Kyle-Beth Hilfer specializes in advertising, marketing, promotions, intellectual property and new media law. She is of counsel to the law firm Collen IP. She advises clients regularly on their advertising strategies and campaigns to ensure compliance with the Lanham Act and other related statutes. For more information about her law practice, please visit www.kbhilferlaw.com. ' Kyle-Beth Hilfer, P.C. 2012.