Carson v. Here’s Johnny Portable Toilets, Inc.

Carson v. Here’s Johnny Portable Toilets, Inc.

968 F2D 831 6 circuit 1983

An interesting issue arose before the United States Court of Appeal  for Sixth Circuit. The Plaintiff was the host and star of a show called ‘The Tonight Show’ and was also an entertainer. Since 1962, the Plaintiff was introduced on the show as ‘Here’s Johnny’. This method of introduction was first used by the Plaintiff in 1957 when he hosted a daily television program. In fact, 1967 the phrase was licenses by the Plaintiff to a Chain of Restaurants. In 1970, Plaintiff licenses the Company Johnny Carson Apparel, Inc. the right to use the phrase for clothing.  However, the phrase was never registered as trade mark.

The Defendant launched in 1976, ‘Here’s Johnny Portable Toilets’, and thus used the phrase for portable toilets in the following manner.

The Plaintiff filed a suit for unfair competition, trademark infringement under federal and state law and invasion of the right of privacy and the right of publicity. The District Court rejected all the claims of the Plaintiff. Pertinently, the claim of ‘publicity rights’ was rejected on the reasoning that those rights apply only to name and likeness of a celebrity and the  ‘Here’s Johnny’  will not be covered by it. The claim of unfair competition and trade mark violation was denied as the District Court felt there was no likelihood of confusion between the Plaintiff and Defendant. In appeal, the United States Court of Appeal  for Sixth Circuit agreed with the District Court in the issue of unfair competition and trade mark violation. As far as violation of right of privacy was concerned, the Appellate Court was of the view that right of privacy pertains to a situation where the right is to be left alone. As per the Court, the gist of right to privacy is that the Plaintiff is embarrassed and considers odious to be associated with the Defendant’s product and in the facts of the case there is no breach of right of privacy.

On the issue of right of publicity, the Appellate Court reversed the findings of the District Court. As per the Appellate Court, District Court’s conception of the right of publicity was too narrow. The Court held that :

• Right of Publicity is the right in the identity of a celebrity;
• If the identity is commercially exploited, there has been an invasion of his right whether or not his ‘name or likeness’ is used; and
• It is not fatal to Plaintiff’s claim that Defendant did not use his ‘name.’ Indeed, there would have been no violation of his right of publicity even if there was a use of name as ‘J. William Carson Portable Toilet’ or the ‘John William Carson Portable Toilet’ or the ‘J.W. Carson Portable Toilet.’ The reason is that, though literally using Plaintiff’s ‘name’, the Defendant would not have appropriated Plaintiff’s identity as a celebrity. Here there was an appropriation of Carson’s identity without using his ‘name’

The Decision of the District Court was set aside on Right of Publicity.