KGB INCORPORATED v. GIANNOULAS (1980)

Appellant Ted Giannoulas has appealed a preliminary injunction enjoining him from (1) appearing anywhere as the “KGB Chicken,” a concept further defined in the injunction; (2) appearing in “any chicken ensemble or suit whatsoever” in San Diego County, counties bordering San Diego County; or (3) at any sports or public event where a team from San Diego County appears. The injunction recites it is based on a finding the KGB Chicken is a service mark in which respondent KGB, Inc., has acquired secondary meaning and there is likelihood of confusion if the injunction does not issue. The underlying lawsuit was originally in multiple counts for breach of employment contract, unfair competition, service mark infringement and other causes, but all counts have been dismissed on demurrer with leave to amend except that for breach of contract. Here Giannoulas seeks a writ of supersedeas to stay the injunction pending his appeal. Neither party having requested oral argument within the time provided, the matter was submitted.

We have determined to issue a writ of supersedeas to stay paragraphs (2) and (3) of the injunction which prevent Giannoulas from appearing in “any chicken ensemble or suit whatsoever” because that broad restriction prevents Giannoulas from earning his livelihood as an entertainer wearing a chicken suit and likewise restricts his freedom of expression, even though it does not appear likely KGB can succeed on the appeal in establishing its right to so broad an injunction. Public policy does not favor such an injunction. (See Lloyd Pest Control Co. v. Lopez, 173 Cal.App.2d 606, 612, 343 P.2d 757.)

Although on this writ proceeding we do not prejudge the merits of the appeal, because our decision to issue the writ depends primarily on our conclusion the injunction is probably invalid, here we state the reasons for that conclusion. Our discussion applies only to paragraphs (2) and (3) of the injunction, and we express no opinion with respect to paragraph (1), restraining appearances as the KGB Chicken, except to state in our opinion the status quo on appeal is best preserved by permitting that paragraph of the injunction to stand.

Although the law is not clear nor well developed regarding a performer's rights in roles he creates, either vis-a-vis a competitor or with regard to his employer, such precedent as has developed emphasizes the primary right to a character as being in the performer, not his employer or some third party. Our Supreme Court in Lugosi v. Universal Pictures, 25 Cal.3d 813, 160 Cal.Rptr. 323, 603 P.2d 425, dealing with the “uniquely individual likeness and appearance of Bela Lugosi in the role of Count Dracula,” found the right to exploit that concept belonged originally to Lugosi and, for reasons not here relevant, did not descend to his heirs. In his concurring opinion, Justice Mosk pointed out actors portraying themselves and developing their own characters have protected rights in such characterizations. Nowhere in either the opinion for the court or that of Justice Mosk is it suggested the right to the Dracula/Lugosi role belonged to Universal Pictures by virtue of the employment relationship between Lugosi and Universal Pictures. Any rights of exploitation in Universal had to come from contract with Lugosi. Similarly the dissenting opinion of Chief Justice Bird noted the sale of one's persona in connection with the promotion of commercial products is “big business,” and she cites numerous cases indicating the right of each person to enjoy the fruits of his own industry in deciding how and when to exploit his identity. (E. g., Uhlaender v. Henricksen (D.Minn.1970), 316 F.Supp. 1277, 1282.) These opinions all appear to support the conclusion if Giannoulas has created an entertaining character consisting of a chicken who appears at sports events and performs various antics, that role belongs to him as its creator, and not to KGB, except insofar as KGB by contract may have been given the right to exploit that character.

Even more strongly in her concurring opinion in Guglielmi v. Spelling-Goldberg Productions, 25 Cal.3d 860, 160 Cal.Rptr. 352, 603 P.2d 454, Chief Justice Bird discusses the first amendment protection of entertainment as an integral part of self-expression, the development of ideas, mental exploration and self-realization. On both a commercial and a personal footing, the right of expression through a fantastical role cannot normally be enjoined. (See Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 578, 97 S.Ct. 2849, 53 L.Ed.2d 965; Briscoe v. Reader's Digest Association, Inc., 4 Cal.3d 529, 535 fn. 6, 93 Cal.Rptr. 866, 483 P.2d 34; Weaver v. Jordan, 64 Cal.2d 235, 242, 49 Cal.Rptr. 537, 411 P.2d 289.) In Zacchini, supra, in which respondent filmed petitioner's entire human cannonball act and broadcast it on television, the court in granting petitioner damages found the acts went to the heart of petitioner's ability to earn a living as an entertainer and substantially threatened the economic value of his performance. Here, too, enjoining appearances of Giannoulas in his role as an antic chicken both abridges his first amendment rights of self-expression and also infringes his right to make his livelihood in this manner.

Other cases grant damages for the exploitation of another's performance, also based on the same premise, the character belongs to the performer and is his to exploit or leave alone. (See Ettore v. Philco Television Broadcasting Corporation (3 Cir. 1956), 229 F.2d 481; Waring v. WDAS Broadcasting Station, Inc. (Pa.1937), 327 Pa. 433, 194 A. 631.) Likewise in West v. Lind, 186 Cal.App.2d 563, 568-569, 9 Cal.Rptr. 288, there is language indicating misappropriation of a property right in a stage character can occur and infringes the rights of the performer (not his employer), although in that case, Mae West lost her claim to prevent appearance of defendant in the role of “Diamond Lil.” In West v. Lind, supra, the court denied an injunction because it believed Mae West had no right to the exclusive use of the role, garb and mannerisms of the character “Diamond Lil,” inasmuch as the trial court on substantial evidence had found the role was not exclusively associated with West nor impressed with her identity in the public mind. It would seem, a fortiori, KGB can hardly claim exclusive rights to the role of antic chickens in general, simply because actor Giannoulas played the role as KGB's mascot for a time. Not only is the KGB Chicken not the equivalent of all antic chickens, but also, the contribution of Giannoulas to the role is paramount, KGB having provided merely the opportunity and some quantum of artistic input, whereas in West v. Lind, supra, Mae West, the performer, was seeking the exclusive rights, not the studio for whom she first performed the part.

Misappropriation of fictional characters created by another is generally prohibited on an unfair competition rationale, the heart of that tort being the inequitable pirating of the fruits of another's labor, and either “palming off” those fruits as one's own (deception) or simply gaining from them an unearned commercial benefit. (See, e. g., Warner Bros. Pictures v. Columbia Broadcasting System (9 Cir. 1954) 216 F.2d 945, 951 (use of character “Sam Spade” from “The Maltese Falcon” not unfair competition because no deception or palming off, and not within scope of copyright protection on novel); Geisel v. Poynter Products Inc. (S.D.N.Y.1968) 283 F.Supp. 261, 267 (TRO issued to prevent sale of dolls and toys like “Dr. Seuss” characters because of false impression of authorization by Seuss); Sullivan v. Ed Sullivan Radio & T.V. (1956), 1 A.D.2d 609, 152 N.Y.S.2d 227 (restraining use of diminutive “Ed” because of threat of public confusion with name of celebrity Ed Sullivan); International News Service v. Associated Press, 248 U.S. 215, 39 S.Ct. 68, 63 L.Ed. 211 (essence of unfair competition is taking another's labor and exploiting it, reaping where another has sown; palming off not essential).)

Here the trial court based its injunction on a finding of likelihood of public confusion. Although we agree with KGB it is not necessary for KGB and Giannoulas to be in competition in order for an injunction on this basis to issue, and we further agree threat of confusion suffices and actual confusion need not be shown, we nevertheless think the injunction on the showing so far to be beyond the trial court's powers. Here we enjoin, not a radio station competing with KGB and making use of the fruits of KGB's labor, but rather, a comic routine in the creation of which Giannoulas played the lion's share. None of the unfair competition cases which KGB cites or which we have been able to find have so enjoined, for the benefit of his first employer the rights of an actor to play a role, and to earn his livelihood. The employment contract between KGB and Giannoulas gives it no such right. The relevant part of that agreement merely provides:

“For a period of five years after termination of this agreement, employee agrees not to act as a mascot of any radio station other than KGB, Inc., in the San Diego market.”

Nothing in the agreement purports to give KGB a perpetual monopoly of all chicken ensembles and routines.

KGB seeks to rely on Labor Code section 2860 providing everything an employee “acquires by virtue of his employment” other than his wages belongs to his employer, citing also Lugosi v. Universal Pictures, supra, 25 Cal.3d 813, 160 Cal.Rptr. 323, 603 P.2d 425, and Zahler v. Columbia Pictures Corp., 180 Cal.App.2d 582, 589, 4 Cal.Rptr. 612. KGB has misinterpreted those authorities. The language in the statute has been applied to protect employee misappropriation of trade secrets and confidential information gained during employment; it has not been used to protect an actor's or artist's creations during employment in the absence of a contract providing express protection. (See discussion in dissenting opinion of Bird, C. J., in Lugosi, supra.) In Zahler, supra, the court found a deceased composer's widow had no rights to decedent's musical compositions composed as motion picture background music because decedent had conveyed those rights to an agent who licensed the defendant television station to use them, and also the studio had fully compensated decedent for those scores, and they were created as part of his employment and hence belonged to the employing studio. That case is a far cry from KGB's claim to the right to monopolize for all time Giannoulas' chicken routine.

In addition to First Amendment and right to livelihood considerations, we also note a strong policy in the law of trademarks and servicemarks to prevent monopoly of generic names or of functional or utilitarian aspects of products. (Application of Deister Concentrator Company, 289 F.2d 496, 504 (C.C.P.A.1961).) The use of terms such as “shredded wheat,” “cola,” or “thermos” cannot be protected unless the term is coupled with other words so as to confuse the public. (See, e. g., Kellogg Co. v. National Biscuit Co. (1938) 305 U.S. 111, 116, 59 S.Ct. 109, 83 L.Ed. 73; King-Seeley Thermos Co. v. Aladdin Industries, Inc. (2 Cir. 1963) 321 F.2d 577, 581, mod. in part, 320 F.Supp. 1156); “cola” to refer to drinks flavored from the cola nut (Coca-Cola Company v. Cahill (W.D.Okl.1972) 350 F.Supp. 1231, 1234, aff'd. 480 F.2d 153 (10 Cir. 1973).) Similarly, aspects of a product which are functional cannot be monopolized. Examples include the size and shape of pills (Smith, Kline & French Laboratories v. Clark & Clark (3 Cir. 1946), 157 F.2d 725, 730); the shape, size and color of fishing lures (James Heddon's Sons v. Millsite Steel & Wire Works (6 Cir. 1942) 128 F.2d 6, 13); or the design of clothing (J. C. Penney Co. v. H. D. Lee Mercantile Co. (8 Cir. 1941) 120 F.2d 949, 954-955; see also Tomlin v. Walt Disney Productions, 18 Cal.App.3d 226, 236, 96 Cal.Rptr. 118 (concept of “Love Bug”)). By analogy to these principles, it appears a chicken suit or chicken costume, in general, is a thing in itself which ought not to be subject to exclusive monopoly. (Standard Paint Co. v. Trinidad Asphalt Mfg. Co. (1911) 220 U.S. 446, 453, 31 S.Ct. 456, 55 L.Ed. 536.) Chicken costumes were already in common use before the KGB Chicken came on the scene, and cannot be taken from the public now. (Polish N. C. Church, Etc. v. Diocese of Buffalo (1918) 171 N.Y.S. 401, 403.)

It does not appear a chicken costume can be a servicemark. A servicemark is an emblem or logo used in the sale or advertising of services to identify their source. (See 15 U.S.C. s 1127; Cal.Bus. & Prof.Code, s 14206.) Servicemarks may be registered and protected like trademarks. (15 U.S.C., s 1053; Bus. & Prof.Code, s 14230.) To be entitled to such protection the mark must be stationary and unchanging. For example, a fanciful king who eats hamburgers in a television commercial cannot be registered as a servicemark (In re Burger King Corp., 183 U.S.P.Q. 698 (T.M.Bd.1974).) Further, a servicemark must not be the service itself, but rather, a designation of its source. (See Cebu Association of California Inc. v. Santo Nino de Cebu USA, Inc., 95 Cal.App.3d 129, 137, 157 Cal.Rptr. 102.) Here the service is entertainment in a chicken suit, yet it is that activity which KGB seeks to monopolize.

Giannoulas points out KGB has been unable to date to acquire federal or state protection for a chicken suit costume. In California, KGB has registered “the letters ‘KGB’ and design of a chicken,” a two dimensional depiction of a chicken with the KGB logos. That is not necessarily a registration of a servicemark in a three dimensional chicken costume, without the logos, designed to be worn by an adult. When KGB attempted to register with the Federal Patent and Trademark Office, it submitted an application for a person wearing a costume who appears at different events, and a patent examiner rejected that application, stating KGB was attempting to register a costume worn by a man or woman, but a servicemark must be stationary by nature and not fluid and changing. The federal application has been pending since September 9, 1977, and a final decision has not yet been rendered.

The cases KGB relies on do not support its position. Lone Ranger, Inc. v. Cox (4 Cir. 1942) 124 F.2d 650 involved copyright infringement and unfair competition, not trademark or servicemark problems, and further the facts there showed defendant untruthfully billed himself as the “original Lone Ranger,” which misled the public and constituted unfair competition. Here disregarding the fact KGB's claim for unfair competition has been dismissed with leave to amend, we simply note there is nothing misleading about an appearance in a chicken suit unless Giannoulas represents himself to be the KGB Chicken or to come from KGB. Next, Boston Pro Hockey Ass'n Inc. v. Dallas Cap. & E. Mfg. Inc. (5 Cir. 1975) 510 F.2d 1004, involved copying of servicemark emblems of professional hockey teams. The court prohibited such copying. In Walt Disney Productions v. Air Pirates (N.D.Cal.1972) 345 F.Supp. 108, the suit was to enjoin copyright infringement of the Mickey Mouse character (345 F.Supp. at p. 116.) Here there is no copyright claim, nor could such a claim be raised other than in a federal court. (28 U.S.C., s 1338.)

The fact the servicemark charges have been dismissed is relevant in that there is no valid complaint on which to base a preliminary injunction. (See Watson v. Santa Carmelita Etc. Co., 58 Cal.App.2d 709, 719, 137 P.2d 757; Moreno Mut. Irr. Co. v. Beaumont Irr. Dist., 94 Cal.App.2d 766, 778, 211 P.2d 928.) In light of the possibility KGB may amend its pleading, however, we do not rest our decision solely on this basis.

KGB argues the preliminary injunction best preserves the status quo, citing Continental Baking Co. v. Katz, 68 Cal.2d 512, 528, 67 Cal.Rptr. 761, 439 P.2d 889. However, if the status quo be viewed as the last uncontested status preceding the dispute, it cannot here be preserved since those facts were, Giannoulas worked for KGB as its mascot, the KGB Chicken. The status quo has never been a situation where Giannoulas was not entitled to wear any chicken suit or ensemble.

Paragraphs (2) and (3) of the injunction appear to go beyond authorizing law and are against public policy insofar as they affect Giannoulas' right to earn his living and to express his talents, and they are accordingly stayed pending the appeal of this matter.

GERALD BROWN, Presiding Justice.

STANIFORTH, and DONALD R. WORK (Imperial County Superior Court Judge sitting under assignment by the Chairperson of the Judicial Council), JJ., concur.