Cairns v. Franklin Mint Company

Plaintiffs-Appellants are the trustees of the Diana Princess of Wales Memorial Fund ("the Fund") and the executors of the Estate of Diana, Princess of Wales ("the Estate"). We will refer to them collectively as "the Fund." The Fund brought several state and federal claims against Defendant-Appellee Franklin Mint. The Fund based these claims on Franklin Mint's use of the name and likeness of the late Princess Diana on commercially sold jewelry, plates, and dolls, and in advertisements for these products. The Fund appeals three holdings by the District Court: (1) the District Court's denial of the Fund's motion to reinstate its dismissed post-mortem right of publicity claim under California Civil Code § 3344.1(a)(1); (2) the District Court's grant of summary judgment in favor of Franklin Mint on the Fund's Lanham Act claim for false endorsement under 15 United States Code § 1125(a)(1); and (3) the District Court's award of attorneys' fees to Franklin Mint. We have jurisdiction under 28 United States Code § 1291, and we affirm.

Since 1981, when Princess Diana married Prince Charles, Franklin Mint has produced, advertised, and sold collectibles — jewelry, plates, and dolls — bearing her name and likeness. Similar products bearing Princess Diana's name and likeness were sold by other companies. Princess Diana neither authorized nor objected to any of these products.

The Fund was established in 1997 after Princess Diana's death to accept donations to be given to various charities with which Princess Diana was associated during her lifetime. The Estate exclusively authorized the Fund to use Princess Diana's name and likeness for this purpose. The Fund in turn authorized about twenty parties — but not Franklin Mint — to use the name and likeness of Princess Diana in conjunction with products sold in the United States. Franklin Mint continued to market unauthorized Diana-related products.

On May 18, 1998, the Fund brought suit against Franklin Mint in the United States District Court for the Central District of California. The complaint alleged violations of the Lanham Act for false endorsement and false advertisement under 15 United States Code § 1125(a)(1), and dilution of trademark under 15 United States Code § 1125(c)(1). The complaint also alleged violations of California's post-mortem right of publicity statute, California Civil Code § 990(a) (now California Civil Code § 3344.1(a)).2 The complaint finally alleged unfair competition and false and misleading advertisement under California Business and Professions Code §§ 17200 and 17500 et seq.

On October 16, 1998, the District Court granted Franklin Mint's motion to dismiss the Fund's post-mortem right of publicity claim under California Civil Code § 990. Cairns v. Franklin Mint Co., 24 F.Supp.2d 1013, 1022 (C.D.Cal.1998) ["Cairns I"]. The District Court reasoned that California's default personal property choice of law provision, California Civil Code § 946,3 applied to the Fund's post-mortem right of publicity claim and required application of the law of Great Britain, which does not recognize a post-mortem right of publicity. Cairns I, 24 F.Supp.2d at 1023-29. The District Court denied Franklin Mint's motion to dismiss the Fund's Lanham Act claims for false endorsement, false advertisement, and dilution of trademark. Id. at 1022-23. The District Court also denied the Fund's motion for a preliminary injunction on these Lanham Act claims. Id. at 1023. On December 30, 1999, on interlocutory appeal under 28 United States Code § 1292(a)(1), we affirmed the District Court's dismissal of the Fund's post-mortem right of publicity claim and the denial of a preliminary injunction on the Fund's Lanham Act claims in an unpublished memorandum disposition which was amended on February 24, 2000. Diana Princess of Wales Memorial Fund v. Franklin Mint Co., Nos. 98-56722, 99-55157, 1999 WL 1278044 (9th Cir. Feb. 24, 2000).

After the District Court dismissed the Fund's post-mortem right of publicity claim, the California Legislature renumbered the post-mortem right of publicity statute from § 990 to § 3344.1 and amended it to "apply to the adjudication of liability and the imposition of any damages or other remedies in cases in which the liability, damages, and other remedies arise from acts occurring directly in this state." CAL. CIV. CODE § 3344.1(n). Based on this amendment, the Fund filed a motion to reinstate its dismissed post-mortem right of publicity claim. The Fund argued that § 3344.1(n) is a choice of law provision that requires application of California law, which recognizes a post-mortem right of publicity.

On June 22, 2000, the District Court denied the Fund's motion to reinstate its post-mortem right of publicity claim and motion for a preliminary injunction. Cairns v. Franklin Mint Co., 120 F.Supp.2d 880, 887 (C.D.Cal.2000) ["Cairns II"]. The District Court concluded, based on the plain language of § 3344.1(n) and its legislative history, that this section is not a choice of law provision. Id. at 883-85. The District Court further concluded that California's default personal property choice of law provision, California Civil Code § 946, continues to apply to the Fund's post-mortem right of publicity claim and requires application of the law of Great Britain, which does not recognize a post-mortem right of publicity. Cairns II, 120 F.Supp.2d at 881-82.

On June 27, 2000, the District Court granted Franklin Mint's motion for summary judgment on the Fund's Lanham Act false endorsement claim. Cairns v. Franklin Mint Co., 107 F.Supp.2d 1212, 1223 (C.D.Cal.2000) ["Cairns III"]. The District Court concluded that Franklin Mint's use of Princess Diana's name and likeness did not implicate the source identification purpose of trademark protection. Id. at 1214-16. The District Court also applied AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979), and concluded that there was no likelihood of consumer confusion as to the origin of Franklin Mint's Diana-related products. Cairns III, 107 F.Supp.2d at 1216-21.4

On September 12, 2000, the District Court granted Franklin Mint's motion for attorneys' fees and awarded Franklin Mint $2,308,000 in attorneys' fees out of $3,124,121.85 requested. Cairns v. Franklin Mint Co., 115 F.Supp.2d 1185, 1190 (C.D.Cal.2000) ["Cairns IV"].

The Fund timely appealed the District Court's denial of its motion to reinstate the post-mortem right of publicity claim and the District Court's grant of Franklin Mint's motion for summary judgment on the Lanham Act claim for false endorsement (No. 00-56217). Separately, the Fund timely appealed the District Court's award of attorneys' fees to Franklin Mint (No. 00-56796). The two appeals have been consolidated.

California's post-mortem right of publicity statute, in both its former version, California Civil Code § 990(a) (West 1998), and its current version, California Civil Code § 3344.1(a) (West 2002), provides in part that "[a]ny person who uses a deceased personality's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods, or services, without prior consent from the [decedent's successor or successors in interest], shall be liable for any damages sustained by the person or persons injured as a result thereof." It further provides that "[t]he rights recognized under this section are [personal] property rights." CAL. CIV. CODE § 990(b) (West 1998); CAL. CIV. CODE § 3344.1(b) (West 2002).

As enacted in 1984 and amended in 1988, California's post-mortem right of publicity statute did not contain a choice of law provision. See CAL. CIV. CODE § 990 (West 1998). The District Court concluded that California's default personal property choice of law provision in California Civil Code § 946 applied to the Fund's post-mortem right of publicity claim and required application of the law of the decedent's domicile.5 The law of Great Britain, where Princess Diana was domiciled, does not recognize post-mortem right of publicity claims. See Bi-Rite Enters. v. Bruce Miner Co., 757 F.2d 440, 442 (1st Cir.1985) (citing Tolley v. Fry, 1 K.B. 467 (1930)); J. Thomas McCarthy, Rights of Publicity & Privacy, § 6.21 (1998). Accordingly, the District Court dismissed the claim. On interlocutory appeal of this dismissal and the accompanying denial of a preliminary injunction, we affirmed by memorandum disposition.

Effective January 1, 2000, the Legislature renumbered California's post-mortem right of publicity statute from § 990 to § 3344.1 and amended it to "apply to the adjudication of liability and the imposition of any damages or other remedies in cases in which the liability, damages, and other remedies arise from acts occurring directly in this state." CAL. CIV. CODE § 3344.1(n) (West 2002). The former version of the statute contained no comparable provision. See CAL. CIV. CODE § 990 (West 1998). Following this amendment, the Fund moved to reinstate its post-mortem right of publicity claim, arguing that § 3344.1(n) is a choice of law provision that requires application of California law. The District Court denied the motion, concluding that § 3344.1(n) is not a choice of law provision. The District Court further concluded that California's default personal property choice of law provision in California Civil Code § 946 applies to the current version of the post-mortem right of publicity in § 3344.1 — as it did to the former version of that right in § 990 — and requires the application of the law of the decedent's domicile, Great Britain, which does not recognize a post-mortem right of publicity.

The Fund argues before us — as it did before the District Court — that § 3344.1(n) is a choice of law provision requiring application of California law to its post-mortem right of publicity claim. We review questions of statutory interpretation de novo. See In re MacIntyre, 74 F.3d 186, 187 (9th Cir.1996). We conclude that the plain language of § 3344.1(n), as well as its legislative history, supports the District Court's decision not to reinstate the Fund's post-mortem right of publicity claim.

Courts "must interpret a ... statute according to its plain meaning, except in the rare cases [in which] the literal application of a statute will produce a result demonstrably at odds with the intentions of its drafters." In re Arden, 176 F.3d 1226, 1229 (9th Cir.1999) (quoting United States v. Ron Pair Enters., Inc., 489 U.S. 235, 242, 109 S.Ct. 1026, 103 L.Ed.2d 290 (1989)) (internal quotation marks omitted). Section 3344.1(n) limits the application of California's post-mortem right of publicity statute to "cases in which the liability, damages, and other remedies arise from acts occurring directly in this state." The District Court concluded that by the plain meaning of its language, this provision is not a choice of law provision, but "simply addresses the reach of the statute's coverage." Cairns II, 120 F.Supp.2d at 883.

We agree. Section 3344.1(b) provides that the post-mortem right of publicity is a (personal) property right. Section 3344.1(n) states that California's post-mortem right of publicity statute "shall apply to cases ... aris[ing] from acts occurring directly in [California]." Section 3344.1(n) does not state that California's post-mortem right of publicity statute applies to such cases regardless of the domicile of the owner of the right. Section 946 provides that personal property is governed by the law of the domicile of its owner unless there is law to the contrary in the place where the personal property is situated, i.e., California. See supra note 5. The statement in § 3344.1(n) that California's post-mortem right of publicity statute "shall apply to cases ... aris[ing] from acts occurring directly in [California]" is compatible with the post-mortem right of publicity being governed by the law of the domicile of its owner, because the statute does not state by its plain language that such cases are not governed by the law of the domicile of the owner. Thus, there is no "law to the contrary" to prevent application of the default choice of law provision in § 946 to the post-mortem right of publicity statute in § 3344.1. Accordingly, unless the "literal application" of the statute will produce "a result demonstrably at odds with the intentions of its drafters," Arden, 176 F.3d at 1229, § 946 applies to § 3344.1, and the Fund's post-mortem right of publicity claim is foreclosed.

The Fund argues that "[t]here is nothing in [§ 3344.1] to suggest that a court should look to Cal. Civil Code § 946 ... to determine whether the post-mortem right of publicity applies to a particular plaintiff or her heirs." Section 946, however, is a default choice of law provision that applies "[i]f there is no law to the contrary," and no explicit reference to this default provision should be expected in § 3344.1 — let alone required — for § 946 to apply.

The legislative history of § 3344.1 further supports our conclusion that § 3344.1(n) is not a choice of law provision. On January 20, 1999, Senator Burton introduced Senate Bill 209 seeking to amend the former version of the post-mortem right of publicity statute in § 990. The proposed amendment initially contained a subsection (o) that stated: "[A] plaintiff has standing to bring an action pursuant to this section if any of the acts giving rise to the action occurred in this state, whether or not the plaintiff is a domiciliary of this state." Cairns II, 120 F.Supp.2d at 884 (emphasis added). The "domiciliary of this state" language was later deleted from the proposed amendment. The amendment was ultimately adopted without this language as § 3344.1(n), which reads as follows: "This section shall apply to the adjudication of liability and the imposition of any damages or other remedies in cases in which the liability, damages, and other remedies arise from acts occurring directly in this state." CAL. CIV. CODE § 3344.1(n) (West 2002).

The California Assembly Judiciary Committee Hearing of June 22, 1999 provides evidence that the Legislature did not intend § 3344.1(n), as adopted, to prevent application of § 946 to the post-mortem right of publicity. During that hearing, Senator Burton attempted to re-introduce the "domiciliary of this state" language. Assembly Member and Committee Vice-Chair Pacheco asked whether such an addition was necessary and whether there was "any law that says you have to be domiciled in the state at the time of death." Mark Lee, counsel for the Fund in this case before the District Court and present at the hearing on behalf of the Fund as a proponent of Senate Bill 209, answered that the District Court in Cairns I had "held that domicile was required."6 After further discussion, Senator Burton withdrew his proposed amendment to add the "domiciliary of the state" language to what became § 3344.1(n).

We have observed that "California courts give substantial weight to the deletion of a provision during the drafting stage. `The rejection by the Legislature of a specific provision contained in an act as originally introduced is most persuasive to the conclusion that the act should not be construed to include the omitted provision.'" Jimeno v. Mobil Oil Corp., 66 F.3d 1514, 1530 (9th Cir.1995) (quoting Rich v. State Bd. of Optometry, 235 Cal. App.2d 591, 45 Cal.Rptr. 512, 522 (1965)). Here, the Committee deleted the "domiciliary of this state" language and resisted Senator Burton's attempt to reinsert this language. The Legislature ultimately passed § 3344.1(n) without the "domiciliary of this state" language. Under Jimeno, this "rejection by the Legislature" of the "domiciliary of this state" language is "most persuasive to the conclusion that [§ 3344.1(n)] should not be construed to include the omitted [`domiciliary of this state' language]." 66 F.3d at 1530. The rejection of the "domiciliary of this state" language is made more persuasive by the California Assembly Judiciary Committee's insistence on deleting this language although the Committee was made aware that the District Court's decision in Cairns I required domicile in California in the absence of such language.

Taken together, the legislative history strongly indicates that the Legislature did not intend to statutorily overrule the District Court's requirement of California domicile in Cairns I. Thus, a "literal application" of § 3344.1(n) will not produce "a result demonstrably at odds with the intentions of its drafters." Arden, 176 F.3d at 1229. Accordingly, the Fund's post-mortem right of publicity claim must fail because the law of Princess Diana's domicile, Great Britain, governs and that law does not recognize a post-mortem right of publicity.

The District Court granted Franklin Mint's motion for summary judgment on the Fund's Lanham Act claim for false endorsement because Franklin Mint's use of Princess Diana's name and likeness did not implicate the source-identification purpose of trademark protection, and because there was no likelihood of customer confusion as to the origin of Franklin Mint's Diana-related products. We review a grant of summary judgment de novo. Lopez v. Smith, 203 F.3d 1122, 1131 (9th Cir.2000) (en banc). We must determine whether, viewing the evidence in the light most favorable to the nonmoving party, there are any genuine issues of material fact and whether the District Court correctly applied the relevant substantive law. Id.

Under the Lanham Act's false endorsement provision,

Any person who, on or in connection with any goods or services, or any container for goods, 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 ... 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, ... shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act.

15 U.S.C. § 1125(a)(1).

Under the law of false endorsement, likelihood of customer confusion is the determinative issue. See Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1403 (9th Cir.1997) ("`Likelihood of Confusion' is the basic test for... trademark infringement."). Between 1981 and 1997, many products, including some that were largely indistinguishable from Franklin Mint products, bore the name and likeness of Princess Diana, who neither endorsed nor objected to any of these products. Consumers, therefore, had no reason to believe Franklin Mint's Diana-related products were endorsed by the Princess. This did not change when, following Princess Diana's death in 1997, the Fund endorsed approximately twenty products — but not Franklin Mint's — amidst a flood of un-endorsed Diana-related memorabilia. Under these circumstances, there was no likelihood of confusion as to the origin of Franklin Mint's Diana-related products. In addition, Franklin Mint is entitled to a "fair use" defense for its references to Princess Diana to describe its Diana-related products. Accordingly, the District Court did not err when it granted summary judgment in favor of Franklin Mint on this claim.

B. The Distinction Between the Classic Fair Use and Nominative Fair Use Defenses

Defendants' use of the image of Princess Diana on their products and the words "Diana, Princess of Wales," to describe their products does not imply endorsement by plaintiffs. Because defendants' use does not implicate the source-identification purpose of trademark protection, it falls outside the scope of § 1125(a), and defendants are entitled to summary adjudication of the false endorsement claim as a matter of law.

Cairns III, 107 F.Supp.2d at 1216 (emphasis added). In support of this holding, the District Court quoted our conclusion in New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 308 (9th Cir.1992), that "nominative [fair] use of a mark ... lies outside the strictures of trademark law ... [b]ecause it does not implicate the source-identification function that is the purpose of trademark." The District Court stated: "Although the New Kids court reached the above conclusion in analyzing defendants' [nominative] fair use defense, the same threshold consideration is applicable to this case...." Cairns III, 107 F.Supp.2d at 1216. We agree that New Kids' "threshold consideration" applies in the present case and conclude that Franklin Mint is entitled to a nominative fair use defense for its references to Princess Diana to describe its Diana-related products.

We distinguish two types of fair use: "classic fair use," in which "the defendant has used the plaintiff's mark to describe the defendant's own product," and "nominative fair use," in which the defendant has used the plaintiff's mark "to describe the plaintiff's product" for the purpose of, for example, comparison to the defendant's product. New Kids, 971 F.2d at 308 (second emphasis added). The distinction between classic and nominative fair use is important for two reasons: (1) classic and nominative fair use are governed by different analyses; and (2) the classic fair use analysis only complements the likelihood of customer confusion analysis set forth in Sleekcraft,7 whereas the nominative fair use analysis replaces the Sleekcraft analysis.

Under the common law classic fair use defense codified in the Lanham Act at 15 United States Code § 1115(b), "[a] junior user is always entitled to use a descriptive term in good faith in its primary, descriptive sense other than as a trademark." 2 McCarthy on Trademark and Unfair Competition § 11:45 (4th ed.2001). To establish a classic fair use defense, a defendant must prove the following three elements: "1. Defendant's use of the term is not as a trademark or service mark; 2. Defendant uses the term `fairly and in good faith'; and 3. [Defendant uses the term] `[o]nly to describe' its goods or services." Id. at § 11:49 (quoting 15 U.S.C. § 1115(b)). In our Circuit, the classic fair use defense is not available if there is a likelihood of customer confusion as to the origin of the product. See Transgo, Inc. v. Ajac Transmission Parts Corp., 911 F.2d 363, 365 n. 2 (9th Cir.1990) (classic fair use defense available only so long as such use does not lead to customer confusion as to the source of the goods or services); Lindy Pen Co. v. Bic Pen Corp., 725 F.2d 1240, 1248 (9th Cir.1984) (same). The classic fair use analysis, therefore, only complements the likelihood of customer confusion analysis set forth in Sleekcraft.

In New Kids, by contrast, we developed a nominative fair use analysis that replaces the likelihood of customer confusion analysis set forth in Sleekcraft. See Playboy Enters., Inc. v. Welles, 279 F.3d 796, 801 (9th Cir.2002) (stating that "[i]n cases in which the defendant raises a nominative [fair] use defense, the [New Kids] test should be applied instead of the test for likelihood of confusion set forth in Sleekcraft" because it "better evaluates the likelihood of confusion in nominative [fair] use cases"). To establish a nominative fair use defense, a defendant must prove the following three elements:

First, the [plaintiff's] product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the [plaintiff's] product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

New Kids, 971 F.2d at 308 (footnote omitted).

The nominative fair use analysis is appropriate where a defendant has used the plaintiff's mark to describe the plaintiff's product, even if the defendant's ultimate goal is to describe his own product.8 Conversely, the classic fair use analysis is appropriate where a defendant has used the plaintiff's mark only to describe his own product, and not at all to describe the plaintiff's product.9 We hold that Franklin Mint's use of Princess Diana's name and likeness fits the former definition and that, therefore, the nominative fair use analysis rather than the classic fair use analysis is appropriate in the present case.

New Kids involved the use by the defendants — two newspapers — of the trademarked name of the plaintiff — a teen band — to publicize the newspapers' telephone polls about the band. See 971 F.2d at 304. The newspapers used the trademark, i.e., "The New Kids," to describe the plaintiff's product, i.e., the band "The New Kids on the Block." The newspapers' ultimate goal, however, was to describe their own products, i.e., telephone polls about the band "The New Kids on the Block." Application of the nominative fair use analysis was appropriate in New Kids because the defendants had used the plaintiff's mark to describe the plaintiff's product, even though the defendants' ultimate goal was to describe their own products.

The same is true of the three cases we cited in New Kids as nominative fair use cases. Id. at 307-08. In Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir.1969), an automobile repair business specializing in the repair of Volkswagen and Porsche vehicles placed a large sign on the front of the premises that read "Modern Volkswagen Porsche Service." Id. at 351. "Volkswagen" was a registered trademark of the plaintiff. Id. In WCVB-TV v. Boston Athletic Ass'n, 926 F.2d 42 (1st Cir.1991), a television station made unauthorized broadcasts of — and referred by name to — the "Boston Marathon," an annual sports event organized and trademarked under that name. Id. at 44. And in Smith v. Chanel, Inc., 402 F.2d 562 (9th Cir.1968), an imitator of brand perfumes advertised his "2d Chance" perfume as indistinguishable from the trademarked "Chanel # 5" perfume. Id. at 563.

In each of these three cases, the alleged infringer used the trademark — "Volkswagen," "Boston Marathon," and "Chanel # 5" — to describe the alleged infringee's product — the automobile, sports event, and perfume designated by that name. In each of these cases, however, the alleged infringer's ultimate goal was to describe his own product — an automobile repair business specializing in the repair of Volkswagens, a television broadcast of the Boston Marathon, and a perfume indistinguishable from Chanel # 5. As in New Kids, application of the nominative fair use analysis was appropriate in each of these cases because the alleged infringer had used the alleged infringee's mark to describe the product of the infringee, even though the infringer's ultimate goal was to describe his own product.10

To summarize, courts should use the New Kids nominative fair use analysis in cases where the defendant has used the plaintiff's mark to describe the plaintiff's product, even if the defendant's ultimate goal was to describe his own product. By contrast, courts should use the traditional classic fair use analysis in cases where the defendant has used the plaintiff's mark only to describe his own product, and not at all to describe the plaintiff's product.

C. Application of the Nominative Fair Use Defense

In the present case, Princess Diana is the Fund's "product" and Princess Diana's name and likeness are the Fund's marks. Franklin Mint used Princess Diana's name and likeness to describe Princess Diana, although Franklin Mint's ultimate goal was to describe its own Diana-related products.11 Because Franklin Mint used the Fund's mark to describe the Fund's product, we apply the New Kids nominative fair use analysis, even though Franklin Mint's ultimate goal was to describe its own products.

The first element of the New Kids nominative fair use test is that "the [Fund's] product ... must be one not readily identifiable without use of the trademark." 971 F.2d at 308. We explained in New Kids that "one might refer to `the two-time world champions' or `the professional basketball team from Chicago,' but it's far simpler (and more likely to be understood) to refer to the Chicago Bulls." Id. at 306. Similarly, one might refer to "the English princess who died in a car crash in 1997," but it is far simpler (and more likely to be understood) to refer to "Princess Diana." We therefore hold that Princess Diana's person is not readily identifiable without use of her name.

There is no substitute for Franklin Mint's use of Princess Diana's likeness on its Diana-related products. Nor is there a substitute for Franklin Mint's use of Princess Diana's likeness in its advertisements for these products. For example, one might explain — as Franklin Mint in fact did — that the "Diana, The People's Princess Doll" is "[d]ressed in the stylish light-blue suit [Princess Diana] wore when she was presented with her signature flower" and "[c]ompletely accessorized with [a] purse and a tiny bouquet of Princess of Wales Roses" that Princess Diana carried on the same occasion. But it is far simpler (and more likely to be understood) to juxtapose — as Franklin Mint also did — a picture of the doll and a photograph of Princess Diana wearing the same suit and carrying the same purse and the same bunch of flowers.12 We therefore hold that Princess Diana's physical appearance is not readily identifiable without the use of her likeness. Thus, the first element of the New Kids nominative fair use test is met.

The second element of the New Kids nominative fair use test is that "only so much of the mark or marks may be used as is reasonably necessary to identify the [Fund's] product or service." Id. at 308. We explained in New Kids:

Thus, a soft drink competitor would be entitled to compare its product to Coca-Cola or Coke, but would not be entitled to use Coca-Cola's distinctive lettering. See Volkswagenwerk, 411 F.2d at 352 ("Church did not use Volkswagen's distinctive lettering style or color scheme, nor did he display the encircled `VW' emblem")....

Id. at 308 n. 7.

In the present case, there is no allegation that Franklin Mint used any "distinctive lettering" or any particular image of Princess Diana intimately associated with the Fund. See, e.g., Toho Co. v. William Morrow & Co., 33 F.Supp.2d 1206, 1209, 1211 (C.D.Cal.1998) (holding that a publisher who used the trademark "Godzilla" as the title of a book about the movie-monster by the same name used more of the mark than was "reasonably necessary" where "the title[was] written in the distinctive lettering style used by [the trademark holder] and its licensees in their merchandising activities").

What is "reasonably necessary to identify the plaintiff's product" differs from case to case. Compare Playboy Enters., Inc., 279 F.3d at 804 (holding that "[t]he repeated depiction of `PMOY '81' is not necessary to describe" a former "Playmate of the Year" on her website), with Mattel, Inc. v. MCA Records, Inc., 28 F.Supp.2d 1120, 1142 (C.D.Cal.1998) (holding that "the repeated use of the words `Barbie' and `Ken' are reasonably necessary for the purposes of parody" in a song lampooning the lifestyle associated with these dolls).

Where, as in the present case, the description of the defendant's product depends on the description of the plaintiff's product, more use of the plaintiff's trademark is "reasonably necessary to identify the plaintiff's product" than in cases where the description of the defendant's product does not depend on the description of the plaintiff's product. For example, General Motors would probably be able to sell its Oldsmobile Eighty-Eight without any reference to a basketball star who, like the car, received an award three years in a row.