Emily Prieur is an IPilogue Writer and a 3L JD Candidate at Queen’s University Faculty of Law.
What happened?
Kelly Knievel, the son of infamous motorcycle stuntman Evel Knievel, brought a trademark infringement action against Walt Disney Studios Motion Pictures for their character “Duke Caboom” featured in Toy Story 4. Knievel sued through K&K Promotions Inc., which owns the intellectual property rights of the former daredevil. K&K alleged that Disney’s “Duke Caboom” character was confusingly similar to Evel Knievel and pointed to several elements of the character, specifically his stunts, jumpsuit, and commercials. Knievel described the Caboom character as a “direct knock-off of the legend and historical significance” of Evel Knievel. K&K took particular issue with the Toy Story 4 Duke Caboom action figure given its resemblance to the Evel Knievel Stunt Cycle toy that was released in 1973. Both action figures feature a stuntman costumed in a white and red jumpsuit.
What were K&K’s claims?
K&K Promotions Inc. sued the Disney company under the Lanham Act for false endorsement/false description, trade dress infringement, and trademark dilution. Outside the scope of the Lanham Act, K&K Promotions Inc. sued Walt Disney Studios Motion Pictures under Nevada common-law for trademark infringement, unfair competition, unjust enrichment, and a claim for right of publicity.
What did the court decide?
Judge James C. Mahan of the U.S. District Court of Nevada ruled in favour of Disney. Justice Mahan applied the two-part test from the U.S. case Rogers v. Grimaldi to assist in his decision. The Rogers v. Grimaldi test requires that the defendant’s use of the plaintiff’s trademark is artistically relevant to the underlying work. Notably, the threshold for this is “very low” and the artistic relevance “merely must be above zero”. The test also requires that the alleged use explicitly misleads consumers about the source or content of the work. The use of a trademark is not enough to prove consumer confusion.
For the first part of the test, the judge asserted that the Duke Caboom character was highly relevant and integral to the storyline. Duke Caboom’s storyline had continued from the original storyline to the most recent iteration (Toy Story 4). For this reason, Justice Mahan believed that Duke Caboom had substantial artistic relevance to the Toy Story franchise and was not merely a “gratuitous showing of an Evel Knievelesque motorcycle stuntman”, as K&K Promotions Inc. had suggested.
For the second part of the test, Justice Mahan concluded that K&K Promotions Inc. failed to provide enough evidence that Disney tried to confuse consumers into thinking the famous stuntman was associated with, or endorsed, Toy Story 4. Justice Mahan wrote that the film character has a different name and clothing, is Canadian rather than American, has a mustache, and has a different hair colour and style than Knievel. Justice Mahan also ruled that the animated toy is sufficiently transformative, thus dismissing the claim that Disney violated K&K Promotions Inc.’s right to publicity.
What would have happened if the same case was decided in Canada?
Although Toy Story 4’s animators were clearly inspired by the 70s style motorist, Duke Caboom’s nod to the era did not meet the threshold as set out by U.S. courts. In Canada, similar remedies are available to notable figures whose likeness has been stolen for commercial purposes. K&K Promotions Inc. would likely have made similar arguments in Canada as they did in the U.S., making claims through the torts of passing off and misappropriation of personality.
In Canada, the use of a famous individual’s personality for personal gain without authorization may amount to the tort of “misappropriation of personality”. The tort is often analyzed in three parts: the plaintiff’s personality is exploited for a commercial purpose, the personality is clearly captured so they are identifiable, and an endorsement by the plaintiff is suggested. In 1973, the Ontario Court of Appeal created a new tort, the appropriation of personality, in Krouse v. Chrysler Canada Ltd. In Krouse, a Canadian football player sued Chrysler for using his personality for commercial purposes. Chrysler had used a photograph of the football player in an advertisement without his permission. The court held that the tort of passing off did not apply to Krouse’s claim as he was not engaging in the same business as Chrysler. In this case, a tort of passing off likely would have been a more appropriate cause of action for Knievel, especially since both organizations are selling similar action figures.
In Canada, three requirements must be met for a successful passing off claim; the existence of goodwill in the mark, deception of the public due to a misrepresentation, and potential or actual damage to the plaintiff. The tort was expanded upon in National Hockey League v. Pepsi Cola Canada Ltd. Similar to the second part of the Rogers v. Grimaldi test in the United States, the tort requires that the defendant’s product or business is seen as “approved, authorized or endorsed by the plaintiff”.
