In K & K Promotions, Inc. v. Walt Disney Studios Motion Pictures, legendary stunt performer Evel Knievel posthumously crashed headlong into the District of Nevada with trade dress infringement and right to publicity complaints. Knievel’s estate took issue with a character reminiscent of him in the film Toy Story 4.
K & K Promotions, the assignee of Knievel’s rights, said the character Duke Caboom infringed on the trade dress of an Evel Knievel toy from the 1970s. K&K also claimed that the character infringed on Evel Knievel’s rights of publicity.
The character seems specifically conceived not to be Evel Knievel.
- Instead of Knievel’s American-themed outfit, Duke Caboom was dressed in Canadian colors with a Canadian flag for a cape.
- Duke Caboom has dark, slicked-back hair and a moustache, but Knievel had light, curly hair and was clean shaven for his stunts.
Most importantly, Duke Caboom had significant character development in Toy Story 4. His background story became a major driver of the plot, as evidenced by his inclusion in so much of the merchandising for the film.
That character development ends up being important to the result of this case. When you’re combining a trademark matter with an expressive work, the courts use what’s called the Rogers test. In Rogers v. Grimaldi (Ginger Rogers’ objecting to Fellini’s film “Fred and Ginger”), the Second Circuit said it was in the public’s interest to strike the proper balance between an expressive work and the private rights of a trademark and rights of publicity.
Toy Story 4 was clearly an expressive work and the use of the alleged trade dress was genuinely relevant to the film story. The backstory about the Duke Caboom character shows that this is not some kind of reference to Evel Knievel for the sake of selling more toys, but it is a genuine part of the story’s development. His fears of success and failure are actually important (as in, doubting whether he could jump across an aisle to save the toy held hostage).
The next thing the court had to consider was whether Disney’s behavior was intended to explicitly mislead consumers. The court said there were too many differences between Evel Knievel and his iconic portrayal in real life and this Toy Story character. They have a different name, appearance, and backstory. Even if it were referencing Knievel’s trademark, it’s not intended to mislead anyone. Therefore, the trade dress claim failed under the Rogers test and was dismissed.
The right to publicity is the prohibition against using the name or likeness of someone for commercial purposes without the permission of the owner of those rights. In its defence against this claim, Disney offered an interesting argument: Disney’s use was not an infringement because it was transformative under fair use. Nevada, being a state where such issues had not been previously decided, turned to California’s jurisprudence — and in California, fair use is an acceptable defense against the right to publicity infringement claims.
In this case, the use of Evel Knievel’s likeness contained significant transformative elements. Duke Caboom was reminiscent of Evel Knievel, but not a literal depiction. Moreover, the animated character was not a representation of Evel Knievel just because they were both stuntmen. So the right of publicity claim was also dismissed.
Thus, our hero gets to ride off into the sunset as another animated character independent and unbounded by any reality.
This case shows that it really matters where you choose to litigate. Here, the plaintiff started a lawsuit on its home turf in Nevada, but the lack of case law in Nevada didn’t help them because Nevada looked to California. So it makes a lot of sense to look at the law of the place where you’re filing a lawsuit — before commencing it.
