On January 23, 2005, Johnny Carson passed away, and our good friend Earl Braxton was waiting in the wings. Johnny was dead and both of the trademarks Johnny had registered were long-since cancelled (Reg No. 1149180, "HEEERE'S JOHNNY!" for entertainment services; Reg No. 1277658, "HERE'S JOHNNY" for cologne and apparel).
On December 20, 2006, Earl filed a trademark application with the USPTO, through his new company Toilets.com, for the trademark "HERE'S JOHNNY" to identify portable toilets (Serial No. 77068472). Earl's application made it all the way to publication in the Trademark Official Gazette (the final step before registration), until Johnny's estate stepped in and filed an opposition to registration.
The Trademark Trial and Appeal Board (the "Board") heard the estate's summary judgment motion in the case of The John W. Carson Foundation v. Toilets.com, Inc. on March 25, 2010. Johnny's estate moved for summary judgment on the grounds that (1) registration was barred by res judicata and (2) that Earl had no bona fide intention to use "HERE'S JOHNNY" to identify portable toilets.
Johnny's estate based the res judicata defense on the result of Johnny Carson v. Here's Johnny Portable Toilets, Inc., in which Earl was permanently enjoined from using the "HERE'S JOHNNY" phrase.
Though Earl won before the 6th Circuit on the likelihood of confusion Lanham Act claims, the permanent injunction barred his commercial use of the phrase for any purpose. Though there is still no provision in the Lanham Act to create a statutory monopoly for identifying elements of an individual's personality or character, the permanent injunction nevertheless extended into the Lanham Act as a bar to any registration of the "HERE'S JOHNNY" mark.
This makes sense. What is the point of an injunction from the use of an element of someone's identity if you can just get around it with a trademark? Even though no one was likely to confuse Johnny Carson's use of "HERE'S JOHNNY" with Earl Braxton's use, Earl could not use the phrase, as a trademark or otherwise.
Earl challenged the estate's res judicata claim on the basis that the estate and Johnny Carson were different entities. If the parties in the two cases were legally distinct, the doctrine would not apply. For the Board to find that the doctrine applied, it had to find that Johnny's right to the phrase was descendible to his heirs, and that the estate controlled the right.
The Board reasoned that because the 6th Circuit (remember, this Circuit also houses the district courts of Tennessee), had adopted descendible rights of publicity, Johnny's estate had standing to raise the claim as an effectively identical party. Thus, res judicata applied to the estate's claim against Earl, and his 2006 application was thrown out.
Recall our discussion about the differences in state law concerning right of publicity. Some states have common law protection, others have statutory protection, a few have both. The case we read in class arose out of the federal district courts in Michigan, the state where Here's Johnny Portable Toilets, Inc. operated. However, in 2010, when the board heard the estate's motion for summary judgment, only one Michigan state court of appeals had addressed post mortem rights of publicity.
In addition, Johnny Carson did not reside in a 6th Circuit state. Neither was he domiciled in a 6th Circuit state. Johnny was born in Iowa, and was domiciled most of his life and died in California. The Board's decision in preventing further uses of the "HERE'S JOHNNY" phrase relies on a case that cites no 6th Circuit precedent for extending the right of publicity to identifying phrases or articles.
Here are some considerations as we make our way past right of publicity into other more formal areas of intellectual property law and say, "Goodbye Earl!"
- Should the Board have applied 6th Circuit law to determining whether a post mortem right of publicity exists? If a state has an undeveloped common law with regard to rights of publicity, and its legislature has remained silent, what does that mean for federal courts sitting in diversity jurisdiction?
- What problems are there with creating precedent based on another state's law through federal courts? Does this violate the Eerie Doctrine?
- How does this affect the precedential value of the Board's decision when applying the right of publicity--absent a statutory basis--to trademark law?
- Would Earl have been successful if he had opened up shop in Iowa rather than Michigan? Iowa has no statutory protection and an undeveloped body of case law on the topic of publicity rights.
- If courts apply their own right of publicity in every case, is it better to work as an Elvis impersonator in some states rather than others? See Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998), in which the 5th Circuit applies Texas state law to EPE's right of publicity cause of action.
- If you want to take a deeper dive, I have attached Board's decision here.