T-shirts as noncommercial speech (and an issue-spotter fact pattern)

Cornette v. Graver, 2020 WL 4059589, No. 19-cv-219 (W.D. Pa.
Jul. 20, 2020)

Cornette is a professional wrestling commentator and “personality”
who sued defendants for infringing his trademark rights and right of publicity
by selling disparaging t-shirts bearing his name and likeness. The court denied
a TRO on First Amendment and related grounds.  

Among other things, Cornette currently hosts two popular
wrestling-themed podcasts. His podcast videos on YouTube use “thumbnail images
that depict people he discusses in each segment,” and he doesn’t seek
permission from those people first.  He
sells merchandise on his website, including t-shirt sales in 2019 of
approximately $40,000 (about 15% of merchandise revenue). One such shirt uses
Cornette’s catchphrase or personal motto: “Thank you, Fuck you, Bye.”

Graver is a professional wrestler and tattoo artist, who
wrestles under the ring name of “G-Raver.”  He does “deathmatch” wrestling, which involves
“hitting each other with improvised weapons, such as light tubes, barbed wire,
thumbtacks, panes of glass, and weed whackers, among other things; Graver’s
signature weapons are tattoo needles.” Blood and injury routinely accompany
such matches. Cornette is a vocal opponent of
deathmatch wrestling because of the risk of injury to imitators.

In one video that Cornette retweeted, “Graver lacerated an
artery in his arm and nearly bled to death as a result of his injury.” Cornette
commented, inter alia, that “if fans were lucky[, the organizers] probably
stopped the show so everyone could watch [Graver] bleed out.” Graver objected.
Cornette replied that Graver and his opponent were both “stupid dumb fucks
doing something stupid [you] shouldn’t have been doing.” Cornette then dubbed
Graver “Grover”—a reference to the Sesame Street character—created a thumbnail
of Graver as Grover for his podcast videos, and used the thumbnail for an
animated game of Whack-A-Mole.

Graver then used the
Indy Connection, “a counterculture e-commerce store that sells merchandise such
as t-shirts, key chains, dolls, stickers, and other similar items for the
wrestling and entertainment industries,” where he has a storefront, to respond. One of his friends got a graphic artist, Shaygan, to create “parody” or
“caricature” images of Cornette with his “mouth and eyes crossed out in red and
[with] tattoo needles sticking out of his head.” The T-shirt added “Fuck Jim
Cornette” around the image, and there were some other modifications (we will
mainly discuss the FJC shirt; there’s also a shirt known as the MF shirt); the
artist didn’t like the modifications and there was a falling-out. The artist then
executed a contract with Cornette granting Cornette a nonexclusive license to
use the images he created. [Further details omitted, but would definitely add issue spotting detail.]

Individual defendant Lombardo (who also played a role in
some of the events above) added another shirt, which “removed the tattoo
needles, duct tape, Xs, and blood, replaced them with clown makeup, stubble,
and a prop red, ball nose — depicting Cornette as a clown—and added the word ‘Clownette.’”
He did this because he “believed that the dispute between Graver, The Indy
Connection, and Cornette was ‘just so asinine, it had become a circus upon
itself, [so] now [it was] just time to bring in the clowns’” and he believed
that Cornette was a clown. 

Lombardo also registered the domain name http://www.fuckjimcornette.com and used it to redirect to the page on which the Indy Connection sold the FJC
shirt. The Indy Connection filed an application for a trademark on the
phrase “Fuck Jim Cornette,” to be used for clothing. The PTO rejected the application and the Indy Connection
abandoned it. “Lombardo never approached Cornette or Cornette’s counsel with an
offer to sell the domain name …, nor did Lombardo
intend to register the domain name in an effort to hold it hostage over
Cornette.”

After the FJC shirt had been available for a day or two,
Cornette objected to Shopify, which hosts The Indy Connection, that the shirt
was an unauthorized use of his name and likeness and Shopify removed the (page
offering the) shirt. The Indy Connection tried again, describing the FJC Shirt as
a “Plain Black Tee”; though the image was a plain black t-shirt, any purchasers
would receive the FJC Shirt. Cornette again complained and Shopify again
removed the page.

Cornette then (before receiving the license from Shaygan)
began selling copies of the FJC shirt on his own website because “if somebody
is going to be selling a shirt with my name and face on it, and money is going
somewhere, it should come to me and/or a good cause” because he “couldn’t
really sell it as a serious piece of merchandise.” You might think this could
in theory be important to the confusion analysis, but the court (rightly)
doesn’t care. Many years ago, I wrote (with Bruce
Keller) about this scenario
; just as with copyright, a trademark owner
can’t increase its rights by creating its own critical/parodic merchandise.

After Cornette sued, The Indy Connection issued a press
release detailing its version of the events leading up to the lawsuit and
stating that it had released the FJC and MF shirts to depict an “alternative
commentary” on Cornette’s dispute with Graver. It then began selling the
Clownette shirt; if potential purchasers accessed http://www.clownette.com, they’d get
redirected to the Indy Connection site. The Indy Connection made approximately
$1,500 in profit from sales of the shirts. At least 32 websites currently offer
knockoff versions.

The Indy Connection didn’t engage in active marketing of the
shirts; didn’t intend to market to Cornette’s fans but to fans of deathmatch
wrestling; and “actively did not want Cornette’s fans to purchase the Shirts.”
There was no evidence of confusion about origin or endorsement in the record. Cornette
also had no evidence of sales diversion.

Trademark infringement: Cornette has no registration for his
name, “Clownette,” or “Fuck Jim Cornette,” so he proceeded under §43(a)(1)(A)
(and state trademark law, of which no more need be said).

Despite the fact that courts regularly apply the trademark
provisions of the Lanham Act to religious orders, and occasionally to political
parties (United We Stand), precedent outside those cases often maintains
that “the Lanham Act regulates only commercial speech.” The court here thus
decided that its first task was to determine whether the challenged activity
was commercial speech.

First, the shirts are speech because they convey a message.
(The better question isn’t whether the shirts are speech, but whether the cause
of action is one that regulates speech. If a Pennsylvania regulator found that
the shirts—or even the ink used to print the images on the shirts—were
impregnated with a carcinogenic chemical and sought to remove them from the
market, it would be completely irrelevant that the shirts bore speech.
Trademark law inherently regulates speech because it targets the communicative
meaning of symbols, not their noncommunicative effects in the world.)

But the shirts weren’t commercial speech, that is, “speech
that does no more than propose a commercial transaction”—roughly speaking, an
ad.  Cornette argued that (1) Graver was
selling products, (2) advertising them, and (3) had an economic motivation for
the speech, but that was wordplay. An ad touts a product other than itself; the
shirts didn’t but were instead the product being sold, like a subscription to
the New York Times.

Unfortunately, instead of saying this clearly, the court
reasoned that the key problem was that Graver lacked an economic motive for
selling the shirts. “[T]o have an economic motivation for purposes of
commercial speech, the speaker must speak substantially from economic
motivation…. Speech that is primarily motivated by political, religious, or
ideological convictions, although it may benefit the speaker economically, may
not meet the economic motivation factor, and therefore not be considered
commercial speech.” Although Graver made about $200 from the shirts, “Cornette
has not shown that it was likely the primary, or even a substantial, factor
motivating those actions.”

Especially in an age of (1) corporate personhood and (2)
judicial direction not to question the sincerity of belief, this is an
unworkable and dangerous standard; the “is the speech advertising something
other than the speech itself” standard does the necessary work better. (Indeed,
the adverbs tell you that something very squishy is going on: “substantially”
from economic motivation and “primarily” noneconomic aren’t even opposites.) The
example the court borrowed from the Fifth Circuit illustrates the problem quite
well:

[A] woman operates a record store
selling Christian rock music and tells her customers that they should buy
Christian rock music because other forms of rock music are satanic.  Whether the Lanham Act applies to her conduct
depends on her motivation: if she opened the bookstore because of a sincere
religious belief that Christian rock must be made available to combat the evils
of other rock music, the speech is likely noncommercial. Conversely, if she is
agnostic and opened the store after taking a business class that informed her
that a properly set up Christian rock store can be very profitable, the speech
is likely commercial and therefore subject to the Lanham Act.

That’s ridiculous. The constraints on regulating her speech
should come from falsity and materiality—a claim about satanic origins is not
falsifiable. Not only does this example turn on religious “sincerity,” which
the Supreme Court is probably right that we should not generally question, it
also creates discrimination based on religious belief—the believer gets to say
things in the marketplace, with commercial effect, that the nonbeliever
doesn’t. If a pizza place opens up and says “we’re better than the pedophile
pizza place down the block,” its owners’ sincere belief in Qanon should have
nothing to do with whether they’ve violated the Lanham Act.

Obviously, the bad reasoning didn’t start with this court,
but it’s distressing to see the reasoning here when it’s so unnecessary to the
result.

As for the Indy Connection, it made about $1500, but the
initial sale was to raise funds for Graver’s recovery, which was “arguably” an
economic motivation, but “raising money for a good cause is not a traditional ‘economic
motivation.’”

The court also said that the shirts didn’t refer to a
specific product but instead expressed messages about Cornette. There’s a
metaphysical issue here—trademark/right of publicity law is often willing to
recognize a persona as a product or service that can be monetized—but that
perhaps suggests the error of commoditizing a persona rather than a flaw in the
commercial speech analysis. The record was “replete” with testimony that the shirts were
intended to parody Cornette’s views.

As for Graver’s social media promotions of the shirts, this “was
a natural method of getting word out about the message the Shirts conveyed;
although that motivation may be economic also, Cornette has failed to show that
it is likely that G-Raver promoted the Shirts substantially for economic
reasons.” [Would have been better to apply the general rule that truthfully advertising First Amendment-protected content inherits the content’s protection.] 

Because this was noncommercial speech, there was no likely
success on the merits.

The court also did a traditional belt-and-suspenders:
confusion wasn’t likely, even assuming that Cornette owned a valid mark in his
name (or likeness; the court doesn’t have to get into the substantially more
complicated question of whether Cornette could own a mark in any depiction of
his face, see ETW v. Jireh). Dissimilarity was important. “Although
G-Raver has used Cornette’s name and likeness, no consumer is likely to get the
same overall impression from either: (1) a t-shirt with Cornette depicted as a
clown—and called ‘Clownette;’ or (2) bloodied, gagged, and with tattoo needles
in his forehead—with the words ‘Fuck Jim Cornette’ surrounding his image —as
they would from a t-shirt with Cornette’s face or his face and the words ‘Thank
you, Fuck you, Bye.’” So too with http://www.fuckjimcornette.com or http://www.clownette.com versus
http://www.jimcornette.com.

Both “fuck” and “clown” were terms of contempt. Even though
Cornette himself sold copies of the FJC shirt, that didn’t make it likely that
consumers would see the shirt or the URL “and assume that Cornette endorses a
t-shirt or website that expresses contempt for himself, or that Cornette is the
source of such a website or t-shirt.” 
For the same reasons, the court found that the products themselves were
not highly related, which is a bit unusual.

Intent: intent to copy is not bad, only intent to confuse by
copying. This and the lack of confusion evidence weighed for Graver, as did the
intended audience. “Although both parties target their merchandise to wrestling
fans, the record evidence demonstrates that they each target different sectors
of the professional wrestling fandom.”

Trademark dilution: no. No commercial speech. Also, no fame.
It was not enough to show a 40 year history in pro wrestling, 1.7 million
podcast downloads and 100,000 to 125,000 YouTube views each month, and 160,000
followers on Twitter, without evidence about reach among the general American
public.

There was also no blurring because of lack of similarity,
lack of intent to associate (“G-Raver, although intending to reference Cornette
in creating the Shirts, had no desire to be associated with him.”), and lack of
actual association.  There was no
tarnishment because tarnishment has to arise from “similarity” to the famous
mark, and here the use was dissimilar.

ACPA: No. There was no bad faith. Defendants believed they
were making a lawful parody; they were engaged in noncommercial speech. There
was no evidence they intended to divert consumers via likely confusion, or to
sell the domain names to Cornette.

Right of publicity: 
Pennsylvania law bars “the unauthorized use of the name or likeness of a
person for commercial or advertising purposes when that name or likeness has
commercial value.” Under the statute, a “commercial or advertising purpose” is
the public use of a person’s name or likeness “on or in connection with”
selling or offering a product for sale, to promote or advertise products, or
for fundraising. But if the use is through a “communications medium,” it is not
a violation when: (1) the person appears as a member of the public and is not
named or identified; (2) the use is associated with a news report; (3) the use
is an expressive work; (4) the use is an original work of fine art; (5) the use
is associated with announcing or promoting a news report, expressive work, or
work of fine art; or (6) the use is associated with identifying the person as
the creator of a work. [Pause for standard agonized reminder that ads are
expressive works, according to both First Amendment and copyright law.]

Under the statute, a “communications medium” includes, but
is not limited to, newspapers, magazines, books, billboards, telephone, radio
and television broadcasts, digital communications networks, audiovisual works,
and global communications networks. [Query: what violation of the right of
publicity could occur without use of a communications medium? Which one of the
listed exceptiosn could occur without the use of a communications medium? The
presence of this unnecessary verbiage signals that weird epicycles are
necessary to make the right of publicity seem constitutionally ok.]

While Cornette was likely to be able to show that his name
and likeness had commercial value, the challenged uses (just the shirts, not
the social media) fell within the statutory exceptions. “Cornette’s name and
likeness both appear on the Shirts, which are a product, and G-Raver’s use
facially falls under [the law’s] scope because Cornette’s name and likeness are
‘on … a product.’” But the shirts were expressive works and the use was
through a communications medium.

Pennsylvania law defines an “expressive work” as a
“literary, dramatic, fictional, historical, audiovisual, or musical work
regardless of the communications medium by which it is exhibited, displayed,
performed, or transmitted, other than when used for a commercial or advertising
purpose.” Although shirts weren’t listed, they were still included in the
exception. [It would be better to say that images/pictorial works are covered,
not “shirts,” though I have to say I’d be surprised if the omission of
pictorial works wasn’t intentional.]

According to Mr. Justice Merriam-Webster, a “work” is
“something produced or accomplished by effort, exertion, or exercise of skill,”
or “something produced by the exercise of creative talent or expenditure of
creative effort.” The shirts “and the images used in their creation” were
“works” under this definition. And they were expressive. “[O]n closer
inspection” these were “fictional” works because fiction is “something invented
by the imagination,” and the image of a bloodied and gagged Cornette, with
tattoo needles sticking out of his forehead was “invented by [Graver’s]
imagination” as a way to get back at Cornette for his comments about Graver, as
was Lombardo’s vision of Cornette as a clown. [So I guess images that read as
realistic are not covered by the exception, which is a hell of a content-based
exception.]

And the shirts are a “communications medium” because the law
“contemplates exceptions from liability for right of publicity violations when
the use of the plaintiff’s name or likeness communicates a message. Clothing is
often used to convey a message, such as when protesting government policy, and
the First Amendment protects this expression.” Indeed, it would be nonsensical
to exclude shirts, because then “had G-Raver taken out a full-page
advertisement in a newspaper with the images used for any of the Shirts, they
would not have violated Cornette’s right of publicity, but the use of t-shirts
would be prohibited.”

Even if the statutory exception didn’t exist, the shirts
would be protected by the First Amendment as transformative use that don’t
merely supersede shirts with Cornette’s face on them.

And finally, Cornette failed to show irreparable harm.
There’s no presumption of irreparable harm in Lanham Act cases, or right of
publicity claims. Nor can a plaintiff establish irreparable harm on the basis
of “bald and conclusory statements.” Harm to reputation may be irreparable, but
still has to be shown. Cornette argued that the absence of an injunction would
lead to a free-for-all on his name and likeness, but only within the First
Amendment’s protections. “Any harm caused to Cornette’s brand through parodies
or satires that fall within the First Amendment are not harms the legal system
can address.”

Cornette’s sale of knockoff FJC shirts did finally come in:
“If the Shirts were so objectionable to Cornette, he likely would not have sold
them on his website, and the fact that he did also indicates that the balance
of the equities weighs against an injunction.” And the public interest in free
expression outweighed the public interest in protection of trademarks and the
right of publicity, “particularly when the party aggrieved by alleged
infringement has failed to show a likelihood of success on the merits or that
irreparable harm is likely.”

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