698 F.2d 831 (6th Cir. 1983)
John W. Carson has hosted “The Tonight Show” on NBC five nights a week since 1962 and appears as an entertainer in night clubs and theaters around the country.1 From the time he began hosting the program, he has been introduced each night with the phrase “Here’s Johnny,” a method of introduction first used for him in 1957 when he hosted a daily television program for ABC.2 The phrase “Here’s Johnny” is generally associated with Carson by a substantial segment of the television viewing public.3
In 1967 Carson first authorized use of the phrase by an outside business venture, permitting it to be used by a chain of restaurants called “Here’s Johnny Restaurants.”4 In 1970 Johnny Carson Apparel, Inc. was formed to manufacture and market men’s clothing to retail stores.5 Carson, who serves as president and owns twenty percent of its stock, licensed the company to use his name and picture, which appear on virtually all of its products and promotional material.6 He also consented to use of the phrase “Here’s Johnny” on labels and in advertising.7 In 1977 Apparel granted a license to Marcy Laboratories to use the phrase as the name of a line of men’s toiletries.8 The phrase has never been registered by appellants as a trademark or service mark.9
Here’s Johnny Portable Toilets, Inc., a Michigan corporation engaged in renting and selling portable toilets, began operations in 1976.10 Its founder was aware at the time he formed the corporation that “Here’s Johnny” was the introductory slogan for Carson on “The Tonight Show.”11 He coupled the phrase with a second slogan, “The World’s Foremost Commodian,” to make a play on words.12
Shortly after appellee went into business, Carson and Apparel brought suit in the United States District Court for the Eastern District of Michigan alleging unfair competition, trademark infringement under federal and state law, and invasion of privacy and publicity rights, seeking damages and an injunction.13 After a bench trial the district court issued a memorandum opinion and order in 1980 that served as its findings of fact and conclusions of law and ordered dismissal of the complaint.14
Whether appellee’s use of the phrase “Here’s Johnny” in its corporate name and portable toilet business creates a likelihood of confusion under the Lanham Act and Michigan common law?15
The test for equitable relief under both § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and Michigan common law is the likelihood of confusion standard.16 This standard is determined by balancing factors including strength of the plaintiff’s mark, relatedness of the goods, similarity of the marks, evidence of actual confusion, marketing channels used, likely degree of purchaser care, defendant’s intent in selecting the mark, and likelihood of expansion of the product lines.17 Under the two-step process, the eight foundational factors are factual and subject to clearly erroneous review while the weighing on the ultimate issue of likelihood of confusion is a question of law.18
No. The district court found that “Here’s Johnny” was not such a strong mark that its use for other goods should be entirely foreclosed.19 The court also found that appellee had not intended to deceive the public into believing Carson was connected with the product.20 There was little evidence of actual confusion and no evidence that appellee’s use of the phrase had damaged appellants.21 Upon review of the record none of these findings is clearly erroneous.22
On the basis of these findings appellee’s use of the phrase “Here’s Johnny” does not present a likelihood that the public would believe the mark’s owner sponsored or otherwise approved the use of the trademark.23
Appellee’s use of the phrase does not create a likelihood of confusion.24
Whether the common law right of publicity is invaded when a company intentionally uses a phrase associated with a celebrity for commercial purposes without employing the celebrity’s name or likeness?25
The right of publicity protects the celebrity’s pecuniary interest in the commercial exploitation of his identity.26 A celebrity has a protected pecuniary interest in the commercial exploitation of his identity.27 If the celebrity’s identity is commercially exploited there has been an invasion of his right whether or not his name or likeness is used.28
Yes. Here’s Johnny Portable Toilets, Inc. began operations in 1976 knowing that “Here’s Johnny” was the introductory slogan for Carson on The Tonight Show, and its founder deliberately coupled the phrase with “The World’s Foremost Commodian” to make a play on words.29 The company then intentionally used the phrase, which is generally associated with Carson by a substantial segment of the television viewing public, in its corporate name and on its portable toilets, thereby appropriating Carson’s identity for commercial purposes without using his name or likeness.30
The right of publicity is invaded by such use.31
Related opinions on this issue
Circuit Judge Kennedy dissents on the ground that the common law right of publicity may not be extended beyond an individual’s name, likeness, achievements, identifying characteristics or actual performances to include phrases or other things which are merely associated with the individual.32 She contends that the majority’s extension permits a popular entertainer to remove common words from the public domain.33 None of the policy considerations behind the right of publicity supports protecting a phrase merely associated with Carson.34
Countervailing interests in free enterprise, free expression and avoidance of federal preemption require that the public’s interest take precedence.35 She would affirm the district court judgment on this basis as well.36