|
|
ABDUL-JABBAR v. GENERAL MOTORS CORP.
75 F.3d 1391 (1996)
Kareem ABDUL-JABBAR, Plaintiff-Appellant,
v.
GENERAL MOTORS CORPORATION; Leo Burnett Company, Inc., Defendants-Appellees.
No. 94-55597.
United States Court of Appeals, Ninth Circuit.
Argued and Submitted September 12, 1995.
Decided February 8, 1996.
Ronald L. Johnston and Cynthia S. Arato, Blanc, Williams, Johnston & Kronstadt, Los Angeles, California, and David M. Rosen, Los Angeles, California, for plaintiff-appellant.
Amy D. Hogue and Michael B. Garfinkel, Pillsbury, Madison & Sutro, Los Angeles, California, for defendants-appellees.
Before: T.G. NELSON and KLEINFELD, Circuit Judges, and LEGGE,* District Judge.
T.G. NELSON, Circuit Judge: Former basketball star Kareem Abdul-Jabbar appeals the district court's summary judgment in favor of General Motors Corporation ("GMC") and its advertising agency, Leo Burnett Co., in his action alleging violations of the Lanham Act, 15 U.S.C. § 1125(a), and California's statutory and common law right of publicity. Abdul-Jabbar argues that GMC violated his trademark and publicity rights by using his former name, Lew Alcindor, without his consent, in a television commercial aired during the 1993 NCAA men's basketball tournament. The district court based its judgment on all causes of action largely on its findings that Abdul-Jabbar had abandoned the name "Lew Alcindor," and that GMC's use of the name could not be construed as an endorsement of its product by Abdul-Jabbar. Having jurisdiction pursuant to 28 U.S.C. § 1291, we reverse and remand for trial. FACTS AND PROCEDURAL HISTORYThis dispute concerns a GMC television commercial aired during the 1993 NCAA men's basketball tournament. The record includes a videotape of the spot, which plays as follows: A disembodied voice asks, "How `bout some trivia?" This question is followed by the appearance of a screen bearing the printed words, "You're Talking to the Champ." The voice then asks, "Who holds the record for being voted the most outstanding player of this tournament?" In the screen appear the printed words, "Lew Alcindor, UCLA, `67, `68, `69." Next, the voice asks, "Has any car made the `Consumer Digest's Best Buy' list more than once? [and responds:] The Oldsmobile Eighty-Eight has." A seven-second film clip of the automobile, with its price, follows. During the clip, the voice says, "In fact, it's made that list three years in a row. And now you can get this Eighty-Eight special edition for just
$18,995." At the end of the clip, a message appears in print on the screen: "A Definite First Round Pick," accompanied by the voice saying, "it's your money." A final printed message appears: "Demand Better, 88 by Oldsmobile." The following facts are undisputed. Kareem Abdul-Jabbar was named Ferdinand Lewis ("Lew") Alcindor at birth, and played basketball under that name throughout his college career and into his early years in the National Basketball Association ("NBA"). While in college, he converted to Islam and began to use the Muslim name "Kareem Abdul-Jabbar" among friends. Several years later, in 1971, he opted to record the name "Kareem Abdul-Jabbar" under an Illinois name recordation statute, and thereafter played basketball and endorsed products under that name.1 He has not used the name "Lew Alcindor" for commercial purposes in over ten years. GMC did not obtain Abdul-Jabbar's consent, nor did it pay him, to use his former name in the commercial described above. When Abdul-Jabbar complained to GMC about the commercial, the company promptly withdrew the ad. The ad aired about five or six times in March 1993 prior to its withdrawal. The parties dispute whether Abdul-Jabbar abandoned the name Lew Alcindor and whether the ad could be construed as an endorsement by Abdul-Jabbar of the 88 Oldsmobile. Abdul-Jabbar brought suit in federal district court in May 1993, alleging claims under the Lanham Act and California's statutory and common law rights of publicity. The district court held a hearing on March 14, 1994. During the hearing, incorporated by reference into the order of summary judgment, the district court announced its "tentative finding that plaintiff has abandoned the name Lew Alcindor, and has abandoned the right to protect that name, and the right to assert any other rights that flow from his having had that name at one time in the past." This finding forms the basis for the district court's decision to grant summary judgment in favor of GMC on both the Lanham Act and the state law causes of action.2 Abdul-Jabbar timely appealed.
* Honorable Charles A. Legge, United States District Judge for the Northern District of California, sitting by designation. 1. The record judgment read that "said petitioner's name be, and the same is hereby changed from FERDINAND LEWIS ALCINDOR to KAREEM ABDUL-JABBAR by which said last-mentioned name shall be hereafter known and called." Illinois' name recordation laws, like California's, are permissive. See Reinken v. Reinken, 351 Ill. 409, 184 N.E. 639, 640 (1933); In re Ritchie,159 Cal.App.3d 1070, 206 Cal.Rptr. 239, 240 (1984). 2. The district court did not distinguish between defendants GMC and Burnett, but assumed for purposes of the summary judgment motion that "if one is liable, both are liable; if one is entitled to the grant of the motion, both are entitled to it." 3. Section 43(a) states:
(1) Any person who, on or in connection with any goods or services ... uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which — (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by the act. 15 U.S.C. § 1125(a) (1992). 4. In some circuits, a showing of nonuse shifts the burden of persuasion to the trademark owner to show intent to resume; in others, including the Ninth, Second and Seventh, prima facie abandonment creates only a rebuttable presumption of abandonment. 5. We need not decide whether Abdul-Jabbar's proffered reasons for non-use of his birth name would serve to rebut a prima facie case of abandonment. Abdul-Jabbar argues that the district court's abandonment ruling substantially burdens his First Amendment right to free exercise of religion. The gist of this argument is that by holding that one loses rights to his given name on adopting a new name for religious purposes, the court puts pressure on a religious believer to "modify his behavior and violate his beliefs." See Frazee v. Illinois Dep't of Employment Sec.,489 U.S. 829, 832, 109 S.Ct. 1514, 1516, 103 L.Ed.2d 914 (1989). Because we hold GMC failed to establish a prima facie case of abandonment under the Lanham Act, we do not reach or resolve this argument. 6. GMC's reliance on Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd.,817 F.Supp. 1103 (S.D.N.Y.1993), vacated pursuant to settlement,859 F.Supp. 80 (S.D.N.Y.1994), is inapposite. Aside from the fact that a vacated case is poor authority, we observe that, unlike the case at bar, Major League was decided after full consideration of the evidence at a trial on the merits.
|
|