"Predator" Actor Loses Right of Publicity Suit

By Carolyn Hann of Hall Dickler Kent Goldstein & Wood

William "Sonny" Landham, an actor who appeared in popular action movies, has lost his right of publicity claim against a toy manufacturer and a major film production company. The Court of Appeals for the Sixth Circuit affirmed a district court’s dismissal of Landham’s lawsuit against Lewis Galoob Toys, Inc. and Twentieth Century Fox. A minor celebrity, Landham played supporting roles in several movies, including 48 Hours, Action Jackson and Maximum Force.

In 1987, he appeared as "Billy, the Native American Tracker" in Predator, a Fox action movie starring Arnold Schwarzenegger. In 1995, Fox granted a license authorizing Galoob to design and sell a miniature toy line based on Predator. Galoob’s collection included a figurine modeled after Billy. Like the Billy character, the toy had shoulder-length black hair, but it lacked discernable facial features, such as eyes or a mouth. Although the figurine measured only one and one-half inches tall, Landham claimed that the doll evoked his identity in the public’s eye and that the defendants should have obtained his consent before creating and marketing it.

Landham filed a complaint against Galoob and Fox in the district court for the Eastern District of Kentucky, accusing the defendants of violating his common law right of publicity and his statutory right of publicity under Section 391.170 of the Kentucky Revised Statutes. Section 391.170 states that "a person has property rights in his name and likeness which are entitled to protection from commercial exploitation." It defines the right of publicity as "a right of protection from appropriation of some element of an individual's personality for commercial exploitation." Section 391.170 makes it unlawful for any person to use the "name or likeness of a person who is a public figure . . . for commercial profit for a period of fifty (50) years from the date of his death without the written consent" of the person’s estate. However, Section 391.170 does not explicitly state, and no reported judicial decision to date has resolved, whether it creates a statutory right of publicity for living persons.

In determining the merits of Landham’s case, the district court relied primarily on Cheatham v. Paisano Publications, Inc. (1995), the only reported decision interpreting the right of publicity under Kentucky common law. In Cheatham, a designer sued a clothing company for using her likeness — a drawing of her backside while dressed in jeans she had designed — on their T-shirts. The Cheatham court held that in order to support a right of publicity claim, a plaintiff "have notoriety which is strong enough to have commercial value within an identifiable group." The Cheatham court further noted that while "such proof is normally found in cases involving celebrities, . . . celebrity status should not be an absolute prerequisite" to establish such a claim.

Applying the Cheatham "commercial value" rule to its case, the district court held that Landham’s identity lacked sufficient commercial value to satisfy his right of publicity claim. The district court found that "Landham has not presented any evidence that the public generally knows him, let alone knows him for any particular role he played." Neither party disputed that Landham had portrayed the character upon which the Billy toy was based. However, "merely playing a role or character, "the court concluded, "does not generally vest an actor with the right to exploit his portrayal of that character." Accordingly, the district court granted the defendants’ motion to dismiss Landham’s complaint.

On Landham’s appeal, the Sixth Circuit affirmed the district court’s ruling. The Sixth Circuit held that "Landham has neither demonstrated that he has a public identity sufficient to support a claim of infringement of his right of publicity nor established a claim under the Lanham Act. . . ." The Sixth Circuit also declined to follow two controversial Ninth Circuit cases, White v. Samsung Electronics America, Inc. (1992) and Wendt v. Host International, Inc. (2000). Both judicial decisions broadly interpreted a celebrity’s right of publicity for unauthorized use of his or her "likeness." In these cases, the Ninth Circuit held that Vanna White’s likeness could be evoked by a blonde-tressed, letter-turning robot, and it left open the possibility that a stout, wise-cracking animatronic robot set in a bar could constitute George Wendt’s likeness to support a right of publicity claim. By contrast, the Sixth Circuit expressed its "unwillingness to give every individual who appears before a television or a movie camera . . . the right as a matter of law to compensation for every subtle nuance that may be taken by someone without first being required to prove significant commercial value and identifiability" (emphasis added). Finding that Landham failed to establish the requisite elements to support his right of publicity claim, the Sixth Circuit halted any further action by Landham arising out of the Predator toy line.

CAROLYN LEE HANN Associate 909 Third Avenue New York, NY 10022 (212) 339-5538 e-mail: chann@halldickler.com