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Spike Lee v. Spike TV:
Testing the Limits of Trademark And "Right Of Publicity" Claims

Monday, Jun. 09, 2003

Spike Lee is a renowned filmmaker whose body of work includes the landmark features "Do the Right Thing" and "Malcolm X," as well as the acclaimed civil rights documentary "4 Little Girls." His is a household name.

Spike TV - slated for a June 16 premiere, and currently known as TNN: The National Network - is, according to owner Viacom, Inc., "the first network for men." The relaunched station will feature an animated cartoon voiced by Pamela Anderson called "Stripperella," as well as the "Ren and Stimpy adult party cartoon." Other original programming will focus on cars, cool technology, men's health, and the stock market.

The contrast between the two Spikes may seem stark. But it becomes a little less so in light of the fact that Lee has also worked as a pitchman for a number of companies - most famously, Nike - and, at times, produced less serious-minded fare such as "She's Gotta Have It," "Girl 6," and "Summer of Sam." He also is a partner in an advertising agency called SpikeDDB.

Given these affiliations, it isn't entirely unlikely that some viewers might believe, or at least wonder, if Spike Lee might be the man behind Spike TV.

For this reason, on June 2, in New York state court, Lee sued TNN, its corporate parents MTV and Viacom, and its President, Albie Hecht, alleging "right of publicity," trademark, and other New York law claims. In addition to seeking an injunction prohibiting the defendants from using the name Spike TV, Lee also seeks money damages.

It might seem that Lee's suit is simply an act of hubris - an attempt to virtually copyright the name "Spike." But in fact, the suit may have some merit, and for this reason, Spike TV will be foolish if it fails to seriously consider choosing a new name.

Indeed, Lee was smart to sue now, because the defendants still have time to change Spike TV's name, and the corresponding advertising, before its launch later this month. Afterwards, once viewers get invested in the branding, the defendants will have far more to lose.

An Apparent Admission of Intent to Capitalize on Lee's Reputation

The most devastating fact in Lee's favor is this: Hecht apparently admitted in interviews that Spike Lee was one of his major inspirations for his choosing the name "Spike TV." According to the Philadelphia Inquirer, Hecht's role models were "Spike the macho vamp[ire] in Buffy the Vampire Slayer; [and] directors Spike Lee and Spike Jonze."

To be fair, Hecht is also quoted, in the same article, as saying he wanted to convey that Spike TV would be "cool," and "aggressive,"" as in, "to spike a volleyball." But clearly, Spike Lee's image was among the connotations Hecht wanted "Spike TV" to conjure up.

I believe that this admission makes Lee's case, which otherwise might seem to verge on megalomania, much more sympathetic. It shows that it is not just Lee himself who believes that "Spike TV" connotes "Spike Lee"; the President of Spike TV himself seems to think so, too.

Hecht is also quoted by the Inquirer as saying that, in seeking a new name for TNN, "[w]e were looking for a name that would reflect the attitude we wanted - smart, sexy, active, irreverent, slightly aggressive and unapologetically male." Spike Lee's complaint points that that all of these adjectives fit his own image as well.

On the other hand, these adjectives are such bland positives that they could also be applied to Spike Jonze, or numerous other public figures. (After all, few men are "apologetically male.") Somewhere out there, there may be celebrities whose personas suggest they are stupid, unsexy, passive, obedient, and timid, but they are few and far between.

That brings us to the key issue in the case: the likelihood of confusion. Will viewers believe Spike Lee is behind Spike TV? If so, proof of that fact - through surveys or other, similar evidence - would show the very type of confusion that trademarks are supposed to prevent.

The Importance of Proof of Confusion To Several Of Lee's Claims

The confusion issue is often the pivotal issue of a trademark case. After all, makers may have difficulty claiming damages unless there is consumer confusion with respect to the distinction between trademarks.

For instance, there is no consumer confusion as to the separate sources of Candies shoes and M&M chocolate candies - which, in any case, target different markets - so it doesn't matter that the same word is employed in both trade names. But suppose a company that had nothing to do with Candies shoes began to make "Candies handbags."

Confusion on the part of consumers would predictably ensue. Moreover, the company producing Candies shoes could rightfully complain about that confusion, for several reasons.

First, they invested resources to develop the "Candies" name, and now someone else is profiting off that name for free. Second, if "Candies handbags" are of poor quality, or simply don't fit with the "Candies shoes" image, the use of the trademark could harm the Candies brand. And third, what if Candies shoes decides in the future that it would like to make handbags? It won't be able to use its own, carefully-developed brand name to do so.

As with most trademark cases, the Spike Lee/Spike TV case will, if it does not settle, probably focus on the "likelihood of confusion" issue. To prove his case, Lee will likely rely on affidavits from influential persons in the relevant industries, and on survey evidence. With this evidence, he will seek to show that both important decisionmakers, and the general public, will suffer from confusion deriving from the misimpression that Spike Lee might be behind Spike TV. This is typical for a trademark suit.

Whose Right of Publicity Is It, Anyway?

What is interesting about Lee's lawsuit, however, is that confusion will also implicitly be an issue in the "right of publicity" case, as well - and that is a rare event. (For more on the "right of publicity" - a person's right to control the use of his or her name or likeness - see my earlier column on Vladimir Putin and the Harry Potter movie character Dobby the house elf.) Here is where Lee's case might prove tenuous - though, of course, he only needs to prevail on one of his claims to succeed in court.

In most right of publicity cases, the use of the celebrity's name or image is quite blatant, because a positive endorsement or association is sought. A classic right of publicity case would be a claim of false endorsement such as "Spike Lee loves Spike TV."

Yet even in those right of publicity cases in which the reason for using the celebrity's name or image is not endorsement, it's pretty clear, at least, which celebrity's name or image is being invoked. Consider an ad that said "Spike Lee would never watch Spike TV." It wouldn't be an endorsement, of course, but it would still lead to a right of publicity claim.

That doesn't mean, however, that the claim would survive; it might be dismissed on constitutional grounds. Depending on the way the ad was presented, it might be protected by the First Amendment as parody, or as commentary on Lee's career. For instance, a "Do the Wrong Thing: Watch Spike TV" parody that incorporated a number of features of Lee's movie in clever ways would almost certainly count as parody.

But what's unusual about Spike Lee's right of publicity claim is that it isn't crystal clear that it is actually his name, in particular, that is being appropriated. Because of this lack of clarity, the same kind of confusion issue that arises in the trademark case could crop up again in the "right of publicity" case.

In order for a judge to rule in Spike Lee's favor, the judge must find that Lee will be understood by the general public as being the "Spike" in "Spike TV." But how can that be proven? Ideally, by the same kind of evidence - surveys, affidavits, and so on - that Lee would use to establish his trademark cases. But in reality, because of the way right of publicity cases usually proceed, a judge may have to simply decide the question as a matter of law instead.

The judge who does so will have to think about this strange twist: Does the name "Spike TV" violate Spike Lee's "right of publicity," despite the fact that there are many connotations to the name "Spike," of which his name is only one of the most prominent?

The importance of this question is aggravated by the fact that, in this case, it seems Spike Jonze could just as easily sue, as could Spike Lee. Granted, Jonze's image may be less prominent than that of Lee, who has appeared in numerous ads. But for the law's purposes, that doesn't matter.

A lesser celebrity than Lee, and, indeed, an ordinary person may also sue to vindicate his or her "right of publicity." After all, the right of publicity is ultimately a variant on state law rights of privacy; it has nothing to do with celebrity. And it has everything to do with the ability to control unwanted misuses of one's name or likeness, a power non-celebrities want and need, too.

Moreover, damages for infringement of the right of publicity may, depending on the relevant state's law, be based on the infringer's profits - not damage to the image of the person who invokes the right. Thus, if someone takes your non-newsworthy photo on the street, and uses it in a pure advertising campaign, you may be able to capture their profits even though your picture never appeared anywhere but in a family album before.

Thus, Jonze, too, could sue. Does that make a difference? The issue is a subtle one.

An ad saying "Spike Lee and Spike Jonze love Spike TV" would plainly violate the right of publicity of both filmmakers. Thus, right of publicity claims are not necessarily mutually exclusive.

On the other hand, an argument that the movie "Heathers" violated the right of publicity of Heather Locklear would have been extremely unlikely to succeed - despite the fact that she might well have been the first Heather to come to mind. After all, so many other Heathers might come to mind, too.

In sum, if Lee's "right of publicity" claim fails, it might be for a very basic, simple reason: A finding that it wasn't really only his own name, in particular, that was used.

The Perils and Advantages of Self-Branding

Some may consider Lee's suit to be at best an exercise in vanity. But those who take this view should consider that, in deciding, in effect, to brand his own name (which is, after all, a name he adopted - not his given name, which is Shelton), Lee has created risks as well as rewards.

Spike Lee's name is now publicly interlinked with numerous films, ventures, and endorsements. Any scandal - whether personal, or business-related - that sticks to the "Spike Lee" name is likely to haunt not only Lee himself, but all of his enterprises. One has only to look to Martha Stewart's current troubles to see the perils of self-branding.

Since Lee has decided so strongly to stand behind his own name and image throughout his career, he shouldn't now be faulted for standing up for the integrity of that name and image in court. Whether he'll win his somewhat unusual suit is another matter, but Lee shouldn't be blamed, or mocked, for trying to protect an image that is, in a way, as much one of his creative works as is each of his films.

Julie Hilden, a FindLaw columnist, practiced First Amendment law at the D.C. law firm of Williams & Connolly from 1996-99. Currently a freelance writer, she published a memoir, The Bad Daughter, in 1998. Her first novel, Three, will be published in the U.S. on July 29, 2003 by Plume; in the U.K. by Bantam; and in French translation by Actes Sud.

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