On August 22, 2022, the United States Court of Appeals for the Ninth Circuit decided that Evel Knievel’s heirs had no claim against Disney for violations of Evel Knievel’s trademark rights. Evel Knievel was a famous motorcycle daredevil who rose to fame in the ‘60s and ‘70s for his death-defying stunts.
In 2020, K&K Promotions, a company owned by Evel Knievel’s son, sued Disney for trademark infringement and infringement of Evel Knievel’s “right of publicity.” K&K alleged that “Duke Caboom,” a character in Toy Story 4, infringed upon rights which Evel Kenievel had extensively developed and had made valuable. The “Duke Caboom” character in the film is a Canadian daredevil stuntman, who wears a white flight suit with red highlights, and a Canadian flag cape. K&K alleged that Caboom’s Costume was extremely similar to Evel Knievel’s iconic costume—a white suit with red and blue stripes, white stars, and a matching cape.
Disney successfully moved to dismiss the action. K&K appealed the dismissal, which The Ninth Circuit affirmed on August 22, 2022.
It is very difficult to win a trademark infringement suit arising from the use of a trademark in a film or television show. Courts must apply the Rogers v. Grimaldi test to avoid First Amendment concerns. Under Rogers, the only way to win a trademark infringement claim arising from a film (or television show) is when: (1) the use of the mark is not “artistically relevant” to the film or (2) the use of the mark “explicitly misleads” consumers.
On the first factor (artistic relevance), the Ninth Circuit found the use of the trademark in Disney’s character “clearly [had] artistic relevance” to work. The Court found that “even the slightest artistic relevance” is enough.
The second factor of the Rogers test requires that the use of the distinctive costume be an explicit indication, claim, or misstatement about the source of the work. Here, the Court found Disney gave the character its own background story, appearance, and name. Disney also did not suggest Evel Knievel endorsed or was otherwise involved in the film.
The Court then addressed the claims under Nevada state law based upon Evel Knievel’s “rights of publicity.” In Nevada (and other states, including California), every person owns the right to the use of their identity for commercial purposes, especially when one is famous. This includes their voice, name, and likeness. If a person wants to use another’s identity for “commercial purposes,” they must first obtain permission from the individual or their heirs. Here, Knievel’s estate argued that Disney failed to obtain permission to use Evel Knievel’s likeness in Toy Story 4. In response to this right of publicity claim, Disney argued that their transformative use barred K&K’s claim. To determine if a use is transformative, courts consider multiple factors. After balancing the factors, the Court found that Disney’s character was more than a mere likeness or literal depiction of Evel Knievel. Additionally, the Court found that the popularity of the toy figurine of “Duke Caboom” did not stem from Evel Knievel’s popularity, but from the success of Disney’s Toy Story franchise. The Court ultimately found that the factors weighed in favor of Disney and dismissed K&K’s state law right of publicity claim.
K&K Promotions is represented by Chad R. Aronson, J. Randall Jones, and Spencer H. Gunnerson of Kemp Jones LLP.
Disney is represented by Kara Hendricks, Bethany Leigh Rabe, and Mark Tratos of Greenberg Traurig PA.
The case is K and K Promotions Inc. v. Walt Disney Studios et al., case number 21-16740, at the U.S. Court of Appeals for the Ninth Circuit.
* Lowe & Associates (“The Firm”) is a boutique entertainment and business law firm located in Beverly Hills, California. The firm has extensive experience handling cases involving trademark law, having provided top-quality legal services to its clients since 1991. The Firm is recognized for its many achievements, including successfully litigating many high-profile cases.
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