Toy Story Fans and Celebrities Might React Differently Regarding the Ruling on Disney’s Toy Story 4 Stuntman Character Lawsuit

Toy Story Fans and Celebrities Might React Differently Regarding the Ruling on Disney’s Toy Story 4 Stuntman Character Lawsuit

While “Toy Story 4”, released in 2019, might mark the end of the hugely successful Toy Story, since Pixar has yet to confirm “Toy Story 5,” the story of the character Duke Caboom in “Toy Story 4” seemed to continue even after the movie.

In September 2020, K and K Promotions (“K&K”), led by Evel Knievel’s son and owner of the intellectual property and publicity rights for Evel Knievel, filed a lawsuit against Walt Disney Studios Motion Pictures Group, PIXAR, and Disney Store USA, LLC (collectively, “Disney”), alleging that the daredevil character Duke Caboom in “Toy Story 4” violated Evel Knievel’s trademark and publicity rights.^[1]

Evel Knievel was a well-known American stunt performer, with his iconic image of him wearing a white jumpsuit embellished by a white star insignia with red and blue base colors, helmet, and cape emblazoned with red, white and blue stars.^[2]

Then who is Duke Caboom, you probably wonder? Duke Caboom is a brand-new stuntman character from “Toy Story 4”, and in the world of movie, Duke Caboom is a toy based on “Canada’s greatest stuntman” who is also named Duke Caboom.^[3] This stunt motorcyclist wore a white jumpsuit, helmet, and cape with the Canadian maple leaf, jumping across an antique store’s aisle to rescue a fellow toy.^[4]

Almost exactly a year later, in September 2021, we finally hear some news about the fate of Duke Caboom: a Federal District Court in Nevada Court dismissed trademark infringement and publicity rights claims against Disney over the stuntman character.^[5] Now let us take a close look at the court’s decision.

For the trademark infringement claims brought under the Lanham Act, the leading federal trademark statute of law in the United States, the Nevada District Court reached its decision by applying the Rogers Test, a test adopted from the landmark case Rogers v. Grimaldi.^[6] In Rogers, an international celebrity brought a Lanham Act trademark infringement claim  that the film “Ginger and Fred” created a false impression of Rogers’ connection with the film.^[7] Therefore, the Court of Appeals in Rogers adopted a two-pronged test to balance the concern of consumer confusion and the First Amendment’s right of free expression for creators.^[8]

Under the Rogers test, the defendant’s use of plaintiff’s trademark must (1) be artistically relevant to the defendant’s work and (2) not confuse consumers into thinking that the real-life person they know is somehow behind defendant’s work.^[9]

Now here today in this case, a real person maybe became inspiration for a cartoon character, and the Rogers test is applied again. The Nevada District Court concluded that the character Duke Caboom had artistic relevance to “Toy Story 4”, as the stuntman character played a necessary role in the storyline of the movie.^[10] With regard to the consumer confusion, the court looked at the nature of Disney’s behavior, instead of looking at consumers’ reactions to determine whether the character would “explicitly mislead” consumers, and concluded that Duke Caboom’s different facial hair, name, hair, jumpsuit, and backstory all make the character distinct from Evel Knievel.^[11]

K&K also brought a right of publicity claim in this case.^[12] The right of publicity “is an intellectual property right that protects against misappropriation of a person’s name, likeness, or other indicia of personal identity … for commercial benefit.”^[13] Here, the court applied the “transformative use test” which is adopted from the California Supreme Court.^[14] In 2001, that court adopted the “transformative use test” by borrowing from the fair use doctrine in copyright law to balance the right of publicity and the First Amendment free expression right.^[15]

The Nevada District Court found that the stuntman character Duke Caboom had sufficient different features from Evel Knievel like the different name, hair color, moustache, and Canadian instead of American insignia on the clothes, thus making the stuntman character a legal transformative use of the figure of Evel Knievel.^[16]

Ever since California adopted the “transformative use test” for right of publicity claims in intellectual property issues, the test seemed to apply to various expressions. For example, in 2003, the California Supreme Court applied the transformative use test to comic books, and in 2006, it applied the test to videogames.^[17] Here, the test was applied to motion picture characters.^[18] Thus, you can see cases helped shape the scope of the “transformative use test” and draw the line between the right of publicity and freedom of expression. From the Rogers test to “transformative use test,” the courts are always paying attention to First Amendment free expression rights for creators, thus this also brings up a huge concern especially in the era of modern media: while actor-celebrities actively obtain trademarks for their images or names, etc., whether the “transformative use test” actually fails to protect actor-celebrities’ rights of publicity while balancing free expression concerns is a question needs to be asked.