Plaintiff’s Trademark Claims in Evel Knievel Case Crash and Burn
The District of Nevada issued its order in K and K Promotions, Inc. v. Walt Disney Studios Motion Pictures on September 23, 2021. K and K Promotions, Inc. (“K&K”) had brought various trademark claims under both the Lanham Act and Nevada common law, as well as a right of publicity claim under Nevada common law for the depiction of the fictional toy character “Duke Caboom” in Disney’s Toy Story 4 and associated marketing and merchandise. The court granted Disney’s motion to dismiss all claims without prejudice and denied K&K’s motion for leave to file a second amended complaint. This case highlights the often-blurry line between inspiration and imitation, and how the former is generally acceptable under intellectual property law while the latter is not.
Background
Pixar’s 2019 film Toy Story 4 introduced a new character to the decades-old franchise in the form of Duke Caboom, a fictional 1970s motorcycle-riding stuntman toy voiced by Keanu Reeves. Duke Caboom wore a white jumpsuit and cape bedecked with Canadian flag motifs and was famous for jumps and crashes on his similarly Canadian-colored stunt cycle. The character also sported slicked-back dark brown hair and a prominent handlebar mustache. Duke’s fantastic motorcycle jumps and resulting crashes become a focal point in the film when two of the movie’s protagonists, Woody and Bo Peep, need Duke to rescue the trapped toy Forky on the other side of an aisle in an antique shop. Promotional materials and merchandise for the film prominently featured Duke Caboom.
K and K Promotions, Inc. is owner of the intellectual property and publicity rights for the deceased American stuntman Robert Craig “Evel” Knievel. Knievel was known for his iconic American star-spangled white jumpsuit and matching red-white-and-blue cape, helmet, and motorcycle. He had light, curly hair and was usually seen with a clean-shaven face. Knievel was a popular and colorful celebrity in the United States, and was the subject of significant merchandising, including the 1970s Evel Knievel Stunt Cycle and Action Figure. Actors, directors, and producers of Toy Story 4 referenced Evel Knievel as an inspiration for Duke Caboom in several interviews, and critics and consumers alike noted the resemblance between Knievel and Caboom.
K&K filed suit against Pixar and Disney in September 2020, bringing claims for trademark dilution, trade dress infringement, and false endorsement under the Lanham Act for the depiction and use of Duke Caboom in Toy Story 4 and related promotional materials and merchandise. K&K brought additional claims under Nevada common law for trademark infringement, unjust enrichment, and violation of Knievel’s right of publicity for the depiction of Duke Caboom in both the film and associated advertising and in a related action figure. Disney moved to dismiss all claims in K&K’s first amended complaint.
Summary of the Decision
The United States District Court for the District of Nevada granted Disney’s motion. Although the court dismissed all of K&K’s claims without prejudice, the court also denied K&K’s motion for leave to file a second amended complaint. The court reasoned that, while it was not prepared to hold that amendment would be futile, it was also unpersuaded that the purported new facts outlined in that motion would materially alter its analysis, thus opting to dismiss without prejudice in the interest of judicial economy.
Regarding the Lanham Act claims, because K&K alleged that Disney used its protected intellectual property in an expressive work, the two-prong Rogers test applied: first, the use of the plaintiff’s trademark must be artistically relevant to the underlying work; and second, the use of the mark must not explicitly mislead consumers about the source or content of the work. The court held that use of Duke Caboom in Toy Story 4 satisfied both prongs of the test, precluding K&K’s claims under the Lanham Act. The Nevada Common Law Trademark Infringement and Unfair Competition claims were dismissed under similar rationale.
The court also held that the depiction of Duke Caboom fell within an applicable exception to Nevada’s right-to-publicity law for portrayals, imitations, simulations, or impersonations of a person in a film, as well as to related advertising for such a film. As for the action figure, acknowledging a lack of Nevada case law on point, the court looked to and applied California and 9th Circuit case law to hold that while the Duke Caboom toy was “reminiscent” of Evel Knievel, it was not a mere literal depiction of Knievel. Duke Caboom was “not a carbon copy of Evel Knievel minus a few details,” nor was Knievel the “sum and substance of the work at issue” but instead merely among the “raw materials” from which the action figure was created. It was therefore a transformative use, protected under the First Amendment.
Further Analysis
Creativity doesn’t thrive in a bubble. We are surrounded and inundated by media--film, television, video games, comic books, etc.--with a huge array of colorful and creative characters and stories, and it is vanishingly rare that any of these characters or stories are created absent influence by the creative works and individuals that came before them. Taking inspiration from existing sources is expected and usually permissible under the law, but outright imitation usually is not. That inspiration-imitation line can be broad and blurry at times, but this case helps to narrow and refine it somewhat, at least from the perspectives of trademark and publicity law.
The Lanham Act and the Rogers Test
On the trademark portion, the court looked to the Second Circuit’s Rogers v. Grimaldi and its two-prong test for alleged trademark infringement in expressive works. Because films have long been considered expressive works, Toy Story 4 and its alleged use of K&K’s intellectual property fit neatly into this test’s prerequisites. Additionally, we have observed that in recent years, courts have shown an inclination to expand the Rogers test to encompass advertising and the sale or licensing of consumer goods associated with that expressive work. This also applied here, including to the Duke Caboom action figures.
The first prong of the Rogers test requires only that the artistic relevance be greater than nothing--an extremely low bar--and the court easily found this prong satisfied. Duke Caboom was an “integral character in the film” and “related to the plot” rather than a “mere cameo appearance of a motorcycle stuntman.” Additionally, Caboom’s outward bravado contrasted with his personal insecurity continued a theme from earlier installments of the Toy Story franchise.
The second prong relies on the likelihood of consumer confusion as to whether the celebrity endorsed or sponsored the product, but the court must consider the explicit behavior of the defendant rather than the actual impact of the use. The court found that while there was a great deal of publicity and merchandising involving Duke Caboom, there was not an explicit attempt to “mislead consumers into believing that Mr. Knievel sponsors, endorses, or is associated with the film.” The physical distinctions between the two characters--the Canadian rather than American motifs, the hair color and texture differences, and the presence of a handlebar mustache on Caboom--along with the different name and backstory effectively eliminated any possibility that Disney explicitly implied Knievel’s endorsement.
Right to Publicity and Reminiscence
K&K claimed that Disney violated its right to publicity for Knievel in the Toy Story 4 film and advertising, as well as with the Duke Caboom action figure. The film and advertising fit neatly within an express exception to Nevada’s right-to-publicity statute, but the action figure did not. Disney argued that the action figure was a transformative use protected under the First Amendment, and the court looked to California courts for guidance due to a lack of relevant state case law on the subject.
The court turned to Comedy III Prods., Inc. v. Gary Saderup, Inc., where the California Supreme Court held that an affirmative defense against a right of publicity claim under the First Amendment may be raised to protect works containing “significant transformative elements” or if the work “does not derive primarily from the celebrity’s fame.” While similarities between a celebrity and a depiction that is “more than a mere likeness or literal depiction” are transformative, the “literal, conventional depictions” of celebrities without their consent merely to sell merchandise is not.
The court held that Disney’s use of Knievel’s likeness contained significant transformative elements and was therefore entitled to the First Amendment affirmative defense as a matter of law. The Duke Caboom action figure was “reminiscent” of Knievel but was not a literal depiction; the action figure had a different name, clothing, hair style and color, and national identity than Knievel. Additionally, many of these features (the jumpsuit, helmet, and motorcycle) were common among stuntmen and not specifically associated with Knievel. Evel Knievel was “at most” among the “raw materials” used to create the character and action figure of Duke Caboom. The economic value of the action figure likewise derived from association not with Knievel, but with Disney’s film. The action figure was sufficiently transformative and protected under the First Amendment.
Final Thoughts
The existence of prior intellectual property is a near inevitability when creating something new and expressive. Taking inspiration from existing properties is often part of the creative process and is generally accounted for under intellectual property law. As long as these preexisting properties are used merely as inspiration, as part of the “raw materials” for your new creative work, then the law will likely be on your side. But companies should always be cautious of crossing the line from inspiration into imitation, as it can not only compromise the integrity of your work but may also lead to risk of unfavorable legal outcomes. Oscar Wilde famously quipped that “imitation is the sincerest form of flattery that mediocrity can pay to greatness.” It’s important not to forget the second part of that quote.