Ginger Rogers v. Alberto Grimaldi, Mgm/ua Entertainment Co., and Pea Produzioni Europee Associate, S.R.L.

Appellant Ginger Rogers and the late Fred Astaire are among the most famous duos in show business history. Through their incomparable performances in Hollywood musicals, Ginger Rogers and Fred Astaire established themselves as paragons of style, elegance, and grace. A testament to their international recognition, and a key circumstance in this case, is the fact that Rogers and Astaire are among that small elite of the entertainment world whose identities are readily called to mind by just their first names, particularly the pairing "Ginger and Fred." This appeal presents a conflict between Rogers' right to protect her celebrated name and the right of others to express themselves freely in their own artistic work. Specifically, we must decide whether Rogers can prevent the use of the title "Ginger and Fred" for a fictional movie that only obliquely relates to Rogers and Astaire.

Rogers appeals from an order of the District Court for the Southern District of New York (Robert W. Sweet, Judge) dismissing on summary judgment her claims that defendants-appellees Alberto Grimaldi, MGM/UA Entertainment Co., and PEA Produzioni Europee Associate, S.R.L., producers and distributors of the motion picture "Ginger and Fred," violated the Lanham Act, 15 U.S.C. Sec. 1125(a) (1982), and infringed her common law rights of publicity and privacy. Rogers v. Grimaldi, 695 F.Supp. 112 (S.D.N.Y.1988). Although we disagree with some of the reasoning of the District Court, we affirm.

Appellant Rogers has been an international celebrity for more than fifty years. In 1940, she won an Academy Award for her performance in the motion picture "Kitty Foyle." Her principal fame was established in a series of motion pictures in which she co-starred with Fred Astaire in the 1930s and 1940s, including "Top Hat" and "The Barkleys of Broadway."

There can be no dispute that Rogers' name has enormous drawing power in the entertainment world. Rogers has also used her name once for a commercial enterprise other than her show business career. In the mid-1970s, she licensed J.C. Penney, Inc. to produce a line of GINGER ROGERS lingerie. Rogers is also writing her autobiography, which she hopes to publish and possibly sell for adaptation as a movie.

In March 1986, appellees produced and distributed in the United States and Europe a film entitled "Ginger and Fred,"1 created and directed by famed Italian film-maker Federico Fellini. The film tells the story of two fictional Italian cabaret performers, Pippo and Amelia, who, in their heyday, imitated Rogers and Astaire and became known in Italy as "Ginger and Fred." The film focuses on a televised reunion of Pippo and Amelia, many years after their retirement. Appellees describe the film as the bittersweet story of these two fictional dancers and as a satire of contemporary television variety shows.

The film received mixed reviews and played only briefly in its first run in the United States. Shortly after distribution of the film began, Rogers brought this suit, seeking permanent injunctive relief and money damages. Her complaint alleged that the defendants (1) violated section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a) (1982), by creating the false impression that the film was about her or that she sponsored, endorsed, or was otherwise involved in the film, (2) violated her common law right of publicity, and (3) defamed her and violated her right to privacy by depicting her in a false light.

After two years of discovery, the defendants moved for summary judgment. In opposition to the motion, Rogers submitted a market research survey purporting to establish that the title "Ginger and Fred" misled potential movie viewers as to Rogers' connection with the film. Rogers also provided anecdotal evidence of confusion, including the fact that when MGM/UA publicists first heard the film's title (and before they saw the movie), they began gathering old photographs of Rogers and Astaire for possible use in an advertising campaign.

The District Court granted summary judgment to the defendants. Judge Sweet found that defendants' use of Rogers' first name in the title and screenplay of the film was an exercise of artistic expression rather than commercial speech. 695 F.Supp. at 120. He then held that "[b]ecause the speech at issue here is not primarily intended to serve a commercial purpose, the prohibitions of the Lanham Act do not apply, and the Film is entitled to the full scope of protection under the First Amendment." Id. at 120-21. The District Judge also held that First Amendment concerns barred Rogers' state law right of publicity claim. Id. at 124. He also rejected Rogers' "false light" claim without elaboration.

Section 43(a) of the Lanham Act creates civil liability for

Any person who shall affix, apply, or annex, or use in connection with any goods or services ... a false designation of origin, or any false description or representation ... and shall cause such goods or services to enter into commerce....

15 U.S.C. Sec. 1125(a) (1982).

The District Court ruled that because of First Amendment concerns, the Lanham Act cannot apply to the title of a motion picture where the title is "within the realm of artistic expression," 695 F.Supp. at 120, and is not "primarily intended to serve a commercial purpose," id. at 121. Use of the title "Ginger and Fred" did not violate the Act, the Court concluded, because of the undisputed artistic relevance of the title to the content of the film. Id. at 120. In effect, the District Court's ruling would create a nearly absolute privilege for movie titles, insulating them from Lanham Act claims as long as the film itself is an artistic work, and the title is relevant to the film's content. We think that approach unduly narrows the scope of the Act.

Movies, plays, books, and songs are all indisputably works of artistic expression and deserve protection. Nonetheless, they are also sold in the commercial marketplace like other more utilitarian products, making the danger of consumer deception a legitimate concern that warrants some government regulation. See Central Hudson Gas & Electric v. Public Service Commission, 447 U.S. 557, 563, 100 S.Ct. 2343, 2350, 65 L.Ed.2d 341 (1980) ("The government may ban forms of communication more likely to deceive the public than inform it ..."); Vidal Sassoon, Inc. v. Bristol-Myers Co., 661 F.2d 272, 276 n. 8 (2d Cir.1981). Poetic license is not without limits. The purchaser of a book, like the purchaser of a can of peas, has a right not to be misled as to the source of the product. Thus, it is well established that where the title of a movie or a book has acquired secondary meaning--that is, where the title is sufficiently well known that consumers associate it with a particular author's work--the holder of the rights to that title may prevent the use of the same or confusingly similar titles by other authors. See, e.g., Warner Bros. Pictures, Inc. v. Majestic Pictures Corp., 70 F.2d 310 (2d Cir.1934); Orion Pictures Co. v. Dell Publishing Co., 471 F.Supp. 392 (S.D.N.Y.1979); Dawn Associates v. Links, 4 Media L.Rep. (BNA) 1642, 1645-46 (N.D.Ill.1978). Indeed, it would be ironic if, in the name of the First Amendment, courts did not recognize the right of authors to protect titles of their creative work against infringement by other authors. Cf. Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556-60, 105 S.Ct. 2218, 2228-30, 85 L.Ed.2d 588 (1985) (noting that copyright law fosters free expression by protecting the right of authors to receive compensation for their work).

Though First Amendment concerns do not insulate titles of artistic works from all Lanham Act claims, such concerns must nonetheless inform our consideration of the scope of the Act as applied to claims involving such titles.2 Titles, like the artistic works they identify, are of a hybrid nature, combining artistic expression and commercial promotion. The title of a movie may be both an integral element of the film-maker's expression as well as a significant means of marketing the film to the public. The artistic and commercial elements of titles are inextricably intertwined. Film-makers and authors frequently rely on word-play, ambiguity, irony, and allusion in titling their works. Furthermore, their interest in freedom of artistic expression is shared by their audience. The subtleties of a title can enrich a reader's or a viewer's understanding of a work. Consumers of artistic works thus have a dual interest: They have an interest in not being misled and they also have an interest in enjoying the results of the author's freedom of expression. For all these reasons, the expressive element of titles requires more protection than the labeling of ordinary commercial products.3

Because overextension of Lanham Act restrictions in the area of titles might intrude on First Amendment values, we must construe the Act narrowly to avoid such a conflict. See Silverman v. CBS, 870 F.2d 40, 48 (2d Cir.1989); Stop The Olympic Prison v. United States Olympic Committee, 489 F.Supp. 1112 (S.D.N.Y.1980); cf. Edward J. DeBartolo Corp. v. Florida Gulf Coast Building & Trades Council, 485 U.S. 568, 108 S.Ct. 1392, 1397, 99 L.Ed.2d 645 (1988) ("[T]he Court will construe [a] statute to avoid [serious constitutional problems] unless such construction is plainly contrary to the intent of Congress.").

Rogers contends that First Amendment concerns are implicated only where a title is so intimately related to the subject matter of a work that the author has no alternative means of expressing what the work is about. This "no alternative avenues of communication" standard derives from Lloyd Corp. v. Tanner, 407 U.S. 551, 566-67, 92 S.Ct. 2219, 2227-28, 33 L.Ed.2d 131 (1972), and has been applied by several courts in the trademark context. See, e.g., Mutual of Omaha Insurance Co. v. Novak, 836 F.2d 397, 402 (8th Cir.1987), cert. denied, --- U.S. ----, 109 S.Ct. 326, 102 L.Ed.2d 344 (1988); Reddy Communications, Inc. v. Environmental Action Foundation, 199 U.S.P.Q. (BNA) 630, 634 (D.D.C.1977) ("[W]e do not see how defendant's First Amendment rights will be severely hampered if this one arrow is removed from its quiver.").

In the context of titles, this "no alternative" standard provides insufficient leeway for literary expression. In Lloyd, the issue was whether the First Amendment provided war protesters with the right to distribute leaflets on a shopping center owner's property. The Supreme Court held that it did not. But a restriction on the location of a speech is different from a restriction on the words the speaker may use. See Denicola, supra, at 197. As the Supreme Court has noted, albeit in a different context, "[W]e cannot indulge the facile assumption that one can forbid particular words without running a substantial risk of suppressing ideas in the process." Cohen v. California, 403 U.S. 15, 26, 91 S.Ct. 1780, 1788, 29 L.Ed.2d 284 (1971).4

Thus, the "no alternative avenues" test does not sufficiently accommodate the public's interest in free expression, while the District Court's rule--that the Lanham Act is inapplicable to all titles that can be considered artistic expression--does not sufficiently protect the public against flagrant deception. We believe that in general the Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In the context of allegedly misleading titles using a celebrity's name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.5

The reasons for striking the balance in this manner require some explanation. A misleading title with no artistic relevance cannot be sufficiently justified by a free expression interest. For example, if a film-maker placed the title "Ginger and Fred" on a film to which it had no artistic relevance at all, the arguably misleading suggestions as to source or content implicitly conveyed by the title could be found to violate the Lanham Act as to such a film.

Even where a title surpassed the appropriately low threshold of minimal artistic relevance but was explicitly misleading as to source or content, a violation could be found. To illustrate, some titles--such as "Nimmer on Copyright" and "Jane Fonda's Workout Book"--explicitly state the author of the work or at least the name of the person the publisher is entitled to associate with the preparation of the work. Other titles contain words explicitly signifying endorsement, such as the phrase in a subtitle "an authorized biography." If such explicit references were used in a title and were false as applied to the underlying work, the consumer's interest in avoiding deception would warrant application of the Lanham Act, even if the title had some relevance to the work.

Many titles, however, include a well-known name without any overt indication of authorship or endorsement--for example, the hit song "Bette Davis Eyes," and the recent film "Come Back to the Five and Dime, Jimmy Dean, Jimmy Dean." To some people, these titles might implicitly suggest that the named celebrity had endorsed the work or had a role in producing it. Even if that suggestion is false, the title is artistically relevant to the work. In these circumstances, the slight risk that such use of a celebrity's name might implicitly suggest endorsement or sponsorship to some people is outweighed by the danger of restricting artistic expression, and the Lanham Act is not applicable. Cf. Estate of Hemingway v. Random House, Inc., 23 N.Y.2d 341, 350, 296 N.Y.S.2d 771, 780, 244 N.E.2d 250, 260 (1968) (holding that estate of Ernest Hemingway had no cause of action for "palming off" or "unfair competition" against author of biographical memoir entitled "Papa Hemingway.").

Similarly, titles with at least minimal artistic relevance to the work may include explicit statements about the content of the work that are seriously misleading. For example, if the characters in the film in this case had published their memoirs under the title "The True Life Story of Ginger and Fred," and if the film-maker had then used that fictitious book title as the title of the film, the Lanham Act could be applicable to such an explicitly misleading description of content.6 But many titles with a celebrity's name make no explicit statement that the work is about that person in any direct sense; the relevance of the title may be oblique and may become clear only after viewing or reading the work. As to such titles, the consumer interest in avoiding deception is too slight to warrant application of the Lanham Act. Though consumers frequently look to the title of a work to determine what it is about, they do not regard titles of artistic works in the same way as the names of ordinary commercial products. Since consumers expect an ordinary product to be what the name says it is, we apply the Lanham Act with some rigor to prohibit names that misdescribe such goods. See Johnson & Johnson v. GAC International, Inc., 862 F.2d 975 (2d Cir.1988). But most consumers are well aware that they cannot judge a book solely by its title any more than by its cover. We therefore need not interpret the Act to require that authors select titles that unambiguously describe what the work is about nor to preclude them from using titles that are only suggestive of some topics that the work is not about. Where a title with at least some artistic relevance to the work is not explicitly misleading as to the content of the work, it is not false advertising under the Lanham Act.

This construction of the Lanham Act accommodates consumer and artistic interests. It insulates from restriction titles with at least minimal artistic relevance that are ambiguous or only implicitly misleading but leaves vulnerable to claims of deception titles that are explicitly misleading as to source or content, or that have no artistic relevance at all.7

With this approach in mind, we now consider Rogers' Lanham Act claim to determine whether appellees are entitled to summary judgment. A federal court may not grant summary judgment "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). "The inquiry ... is ... whether ... there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party." Id. at 250, 106 S.Ct. at 2511.

Rogers essentially claims that the title "Ginger and Fred" is false advertising. Relying on her survey data, anecdotal evidence, and the title itself, she claims there is a likelihood of confusion that (1) Rogers produced, endorsed, sponsored, or approved the film, and/or (2) the film is about Rogers and Astaire, and that these contentions present triable issues of fact. In assessing the sufficiency of these claims, we accept Judge Sweet's conclusion, which is not subject to dispute, that the title "Ginger and Fred" surpasses the minimum threshold of artistic relevance to the film's content. The central characters in the film are nicknamed "Ginger" and "Fred," and these names are not arbitrarily chosen just to exploit the publicity value of their real life counterparts but instead have genuine relevance to the film's story. We consider separately the claims of confusion as to sponsorship and content.

The title "Ginger and Fred" contains no explicit indication that Rogers endorsed the film or had a role in producing it. The survey evidence, even if its validity is assumed,8 indicates at most that some members of the public would draw the incorrect inference that Rogers had some involvement with the film. But that risk of misunderstanding, not engendered by any overt claim in the title, is so outweighed by the interests in artistic expression as to preclude application of the Lanham Act. We therefore hold that the sponsorship and endorsement aspects of Rogers' Lanham Act claim raise no "genuine" issue that requires submission to a jury.

Rogers' claim that the title misleads consumers into thinking that the film is about her and Astaire also fails. Indeed, this case well illustrates the need for caution in applying the Lanham Act to titles alleged to mislead as to content. As both the survey and the evidence of the actual confusion among the movie's publicists show, there is no doubt a risk that some people looking at the title "Ginger and Fred" might think the film was about Rogers and Astaire in a direct, biographical sense. For those gaining that impression, the title is misleading. At the same time, the title is entirely truthful as to its content in referring to the film's fictional protagonists who are known to their Italian audience as "Ginger and Fred." Moreover, the title has an ironic meaning that is relevant to the film's content. As Fellini explains in an affidavit, Rogers and Astaire are to him "a glamorous and care-free symbol of what American cinema represented during the harsh times which Italy experienced in the 1930s and 1940s." In the film, he contrasts this elegance and class to the gaudiness and banality of contemporary television, which he satirizes. In this sense, the title is not misleading; on the contrary, it is an integral element of the film and the film-maker's artistic expressions.9

This mixture of meanings, with the possibly misleading meaning not the result of explicit misstatement, precludes a Lanham Act claim for false description of content in this case. To the extent that there is a risk that the title will mislead some consumers as to what the work is about, that risk is outweighed by the danger that suppressing an artistically relevant though ambiguous title will unduly restrict expression.

For these reasons, we hold that appellees are entitled to summary judgment on Rogers' claim that the title gives the false impression that the film is about Rogers and Astaire.

Because the District Judge decided Rogers' state law claims on the ground of broad First Amendment protection, he did not decide which state's law applies to those claims. 695 F.Supp. at 121 n. 5. Although we reach the same result as the District Court, we think the correct approach is to decide the choice of law issue first and then to determine if Rogers has a triable claim under the applicable substantive law, before reaching constitutional issues.

A federal court sitting in diversity or adjudicating state law claims that are pendent to a federal claim must apply the choice of law rules of the forum state. Klaxon Co. v. Stentor Electric Manufacturing Co., 313 U.S. 487, 496, 61 S.Ct. 1020, 1021, 85 L.Ed. 1477 (1941); Colgate Palmolive Co. v. S/S Dart Canada, 724 F.2d 313, 316 (2d Cir.1983), cert. denied, 466 U.S. 963, 104 S.Ct. 2181, 80 L.Ed.2d 562 (1984). The New York Court of Appeals has clearly stated that "right of publicity" claims are governed by the substantive law of the plaintiff's domicile because rights of publicity constitute personalty. Southeast Bank, N.A. v. Lawrence, 66 N.Y.2d 910, 498 N.Y.S.2d 775, 489 N.E.2d 744 (1985). Rogers is an Oregon domiciliary, and thus Oregon law governs this claim.

Oregon courts, however, have not determined the scope of the common law right of publicity in that state. The Supreme Court of Oregon discussed the "right to publicity" in dictum in Anderson v. Fisher Broadcasting Cos., 300 Or. 452, 712 P.2d 803, 812 (1986) (in banc), a case involving a right of privacy claim, but there are no reported decisions of any Oregon court on a right of publicity claim. We are therefore obliged to engage in the uncertain task of predicting what the New York courts would predict the Oregon courts would rule as to the contours of a right of publicity under Oregon law.10

At one time the New York courts, confronting an issue arising under the law of another state and having no clear indication of the foreign law, applied a presumption that "the common law of a sister state ... is the same as our own." International Text-Book Co. v. Connelly, 206 N.Y. 188, 200-01, 99 N.E. 722 (1912); see also Zwirn v. Galento, 288 N.Y. 428, 432, 43 N.E.2d 474 (1942). However, that presumption arose from a rule of evidence, the State's rule prohibiting a court from taking judicial notice of the law of another state. In 1943, New York by statute accorded its courts discretion to take judicial notice of foreign law, see Pfleuger v. Pfleuger, 304 N.Y. 148, 106 N.E.2d 495 (1952), and in 1963 required such judicial notice. N.Y.Civ.Prac.L. & R. 4511(a) (McKinney 1963). Though New York courts usually now recognize their obligation to take judicial notice of the law of another state, see, e.g., Monko v. Cicoria, 46 Misc.2d 565, 260 N.Y.S.2d 70 (Sup.Ct.1965), some New York courts still appear to be applying the pre-1963 law, even citing International Text-Book for the proposition that foreign law may or even must be presumed to be the same as New York's in the absence of proof to the contrary in the record. See, e.g., Knieriemen v. Bache Halsey Stuart Shields Inc., 74 A.D.2d 290, 427 N.Y.S.2d 10, 15 (1st Dep't), appeal dismissed, 51 N.Y.2d 970, 435 N.Y.S.2d 720, 416 N.E.2d 1055 (1980); Banco Do Brasil, S.A. v. Calhoon, 50 Misc.2d 512, 270 N.Y.S.2d 691, 696 (Sup.Ct.1966).

There thus remains some ambiguity in the New York cases as to whether that State's courts, encountering an issue that turns on unsettled law of another state, will apply a presumption of similarity with New York law because of the remaining influence of the pre-1943 evidentiary cases that barred judicial notice of foreign law or will predict, as a matter of substantive interpretation, that the foreign state will adopt a rule similar to New York's. The distinction can have significance for a diversity court because it is not bound by a state's judicial notice rules, see Simmons v. Continental Casualty Co., 410 F.2d 881, 884 (8th Cir.1969); Zell v. American Seating Co., 138 F.2d 641, 643 n. 6 (2d Cir.1943), rev'd on other grounds, 322 U.S. 709, 64 S.Ct. 1053, 88 L.Ed. 1552 (1944); 1A Pt. 2 Moore's Federal Practice p 0.316 (1987), but is obliged to apply whatever substantive standards the forum state uses in predicting the content of foreign law.

Indeed, our own cases have not taken a consistent approach to New York's presumption of similarity of foreign law in diversity cases in which New York is the forum state. On occasion, we have applied the presumption, apparently viewing it as a substantive rule of interpretation; in other cases, we have ignored it and made our own determination of what we think will emerge as the law of a foreign state. Compare Sagamore Corp. v. Diamond West Energy Corp., 806 F.2d 373, 377 (2d Cir.1986), and Colgate Palmolive Co. v. S/S Dart Canada, 724 F.2d at 317, with Plummer v. Lederle Laboratories, 819 F.2d 349, 355 (2d Cir.), cert. denied, --- U.S. ----, 108 S.Ct. 232, 98 L.Ed.2d 191 (1987), and Metz v. United Technologies Corp., 754 F.2d 63, 66 (2d Cir.1985). We believe that New York courts would, as a matter of substantive interpretation, presume that the unsettled common law of another state would resemble New York's but that they would examine the law of the other jurisdiction and that of other states, as well as their own, in making an ultimate determination as to the likely future content of the other jurisdiction's law. See In re Estate of Havemeyer, 17 N.Y.2d 216, 270 N.Y.S.2d 197, 217 N.E.2d 26 (1966); Strain v. Seven Hills Associates, 75 A.D.2d 360, 429 N.Y.S.2d 424, 430 (1st Dep't 1980). That is the task we now undertake.

The common law right of publicity, where it has been recognized, grants celebrities an exclusive right to control the commercial value of their names and to prevent others from exploiting them without permission. See Bi-Rite Enterprises v. Button Master, 555 F.Supp. 1188, 1198-99 (S.D.N.Y.1983). Because the right of publicity, unlike the Lanham Act, has no likelihood of confusion requirement, it is potentially more expansive than the Lanham Act. See Denicola, supra, at 160-66. Perhaps for that reason, courts delineating the right of publicity, more frequently than in applying the Lanham Act, have recognized the need to limit the right to accommodate First Amendment concerns. Id. at 198 & n. 171 (citing cases).

In particular, three courts, citing their concern for free expression, have refused to extend the right of publicity to bar the use of a celebrity's name in the title and text of a fictional or semi-fictional book or movie. See Hicks v. Casablanca Records, 464 F.Supp. 426 (S.D.N.Y.1978); Frosch v. Grosset & Dunlop, Inc., 75 A.D.2d 768, 427 N.Y.S.2d 828 (1st Dep't 1980); Guglielmi v. Spelling-Goldberg Productions, 25 Cal.3d 860, 160 Cal.Rptr. 352, 603 P.2d 454, 455 (1979) (Bird, C.J., concurring).11

Guglielmi involved a suit by a nephew of the late film star Rudolph Valentino to bar a television broadcast entitled "Legend of Valentino: A Romantic Fiction" as a violation of Valentino's right of publicity. The Court dismissed the action for failure to state a claim. In a concurrence joined by thre