Supreme Court Joins in ‘Barroom’ Brawl

So, who owns the rights to a famous TV character: the actor who made the character famous or the studio that created the character in the first place?

It’s a good question for a barroom debate but a hard question of law.

For nearly seven years, two actors in the 1980s TV series “Cheers” have been fighting Paramount Pictures over control of their barroom characters, with both sides maintaining that they have the right to speak for “Norm” and “Cliff.”

The lawsuit has bounced back and forth in the courts of California and now has reached the U.S. Supreme Court. The justices are expected to say within the next week or two whether they will hear the “Cheers” case or send it back to Los Angeles for trial.

Either way, the outcome could have a broad effect on performers’ and creators’ rights, lawyers say.

“This is a huge issue for Hollywood,” says Dale F. Kinsella, a Los Angeles attorney who represents actors George Wendt, a.k.a. Norm, and John Ratzenberger, who played Cliff. “If a studio acquires the right to license an actor’s image cloaked in the outfit of character, then Warner Bros. could use Harrison Ford’s face to sell cigarettes or beer as long as he was dressed as Indiana Jones.”

But the studio says actors who are hired to perform a role do not win legal rights to a character just because they are the character in the public’s mind.

“Certainly it is not irrational for the people to think of the actors who played Norm or Cliff when they see one of these characters, but it’s our view that federal copyright law protects Paramount’s right to license the use of these characters,” says New York attorney Floyd Abrams, a renowned 1st Amendment expert who appealed Paramount’s case to the Supreme Court.

The dispute began a decade ago when Paramount sought to profit on the popularity of “Cheers,” the bar where everyone knows your name (or your character’s name). They proposed to license Host International Inc. to operate Cheers-type bars in airports. Featured are a pair of talkative robots who resemble the pudgy accountant Norm and the know-it-all mailman Cliff.

But Wendt and Ratzenberger refused to allow their likenesses to be used. Undeterred, the studio and Host went ahead with the plan, although they changed the characters slightly and renamed them “Bob” and “Hank.”

Suit Filed in 1993

In 1993, the two actors sued for damages under California law, which offers the strongest legal protections for celebrities. Under the state’s so-called right to publicity law, no one may sell a product by using “another’s name, signature, photograph or likeness in any manner.”

Singers Bette Midler and gravel-voiced Tom Waits used this law to stop musical commercials that used distinctive voices that resembled theirs. Actor Dustin Hoffman used it last year to win a $3-million judgment from Los Angeles magazine for imposing a computer-created photo of him in his “Tootsie” attire as part of a fashion display.

And apparently no performer wants to live on as a robot. Six years ago, TV game show hostess Vanna White won $403,000 from Samsung Electronics over an ad that touted the long life of its products. The ad depicted a robot in a blond wig turning letters on a 21st century game show.

Citing these California precedents, lawyers for the “Cheers” stars say that no one has a right to use their likenesses to sell beer.

But under federal copyright law, creators of “original works” have strong legal protection as well. Those who own copyrighted works have the “exclusive rights” to use them, including licensing “derivative works” based on the original.

Lawyers for Paramount say that the studio alone has the right to license the “Cheers” characters. And they say that this federal copyright protection trumps California’s law protecting an actor’s likeness.

A law professor who has studied the issue says it needs to be resolved by the Supreme Court.

“The time is overdue for the court to consider this conflict and this case poses it quite sharply,” says UC Berkeley law professor Stephen Barnett.

He faults the U.S. 9th Circuit Court of Appeals, based in San Francisco, for going too far in expanding the “right to publicity” for performers. The case moved into federal court because it involved interstate companies. There, because a Supreme Court precedent requires federal judges to decide such cases on the basis of the state laws where the case was filed, the court applied the California law. In an odd twist, the California law has been interpreted and expanded largely through opinions written by the 9th Circuit’s federal judges.

“They have become the court of appeals for the Hollywood circuit,” Barnett says mockingly.

Even federal judges in California are not in agreement as to how to resolve this conflict between performers and creators.

In 1993, shortly after the two “Cheers” actors sued, U.S. District Judge Manuel Real in Los Angeles ruled for the studio and dismissed the lawsuit. “As the copyright owner, Paramount was acting within its rights” when it licensed the use of the “Cheers” characters, he said.

Two years later, the 9th Circuit Court reversed the judge and revived the case. An actor’s personal likeness differs from the character he played, the appeals court said. “The unauthorized commercial use of one’s identity is an invasion of a personal property right, different in kind from copyright infringement,” the appeals court said.

When the case went back to Real, he threw it out again, ruling that the two robots, Bob and Hank, did not actually look like Wendt and Ratzenberger.

The actors appealed, and again, the 9th Circuit overruled Real. It is up to a jury to decide whether the studio is “commercially exploiting the likeness” of the two actors, wrote Judge Betty Fletcher for a three-judge panel.

Judges Can’t Agree

But even within the 9th Circuit, there was disagreement on this point. Last year, Judge Alex Kozinski dissented when the full appeals court refused to reconsider the issue. He wrote a stinging, if entertaining, attack that faulted his colleagues for robotically allowing the White precedent to “swallow up rights conferred by Congress under the Copyright Act. . . . Host did not plaster Wendt’s face on a billboard with a Budweiser logo. It cashed in on the ‘Cheers’ goodwill by creatively putting its familiar mise en scene to work. The robots are a new derivation of a copyrighted work, not unlike a TV series based on a movie or a Broadway play based on a novel.”

The studio reprinted Kozinski’s dissent in its appeal to the Supreme Court in the case (Paramount Pictures Corp. vs. Wendt and Ratzenberger, 99-1567).

Lawyers for the studio concede that, in rare instances, a performer creates his own character. Charlie Chaplin and Groucho Marx are notable examples.

“This is not a Charlie Chaplin situation. This is John Q. Actor who is hired to perform a role,” says William T. Rintala, a Los Angeles lawyer who worked on Paramount’s appeal.

Over the last decade, the courts in New York and California have adopted contrasting approaches to such disputes, says Floyd Abrams, the studio’s appellate expert.

“New York law is very protective of creators. California law, as interpreted by the 9th Circuit, is very protective of performers,” he said.

Abrams is urging the high court to take up the “Cheers” case and to rule that the federal Copyright Act prevails over California’s “right to publicity” law. As a backup argument, he maintains that the 1st Amendment protects the studio’s free speech right to license the use of its characters.

Only once before has the Supreme Court taken up a case that pits the performer’s “right to publicity” against the free speech rights of others who make use of his performance. It came in 1977, when the justices, by a 5-4 vote, sided with Hugo Zacchini, the “Human Cannonball.” He sued after an Ohio TV station showed his private, pay-per-view performance at a county fair on the evening news.

But lawyers say the Zacchini ruling has limited use as a precedent because the 15-second clip constituted Zacchini’s entire performance.

As Barnett, the Berkeley law professor, said of the “Cheers” case: “If the Supreme Court is ever going to take up this issue, this is the case to do it.”