Disney’s Easy Escape From Evel Knievel Suit Probed by 9th Cir.

The speed with which Walt Disney Studios dispatched a trademark and right-of-publicity suit over “Toy Story 4" by the heirs of late stuntman Evel Knievel received scrutiny from the Ninth Circuit at oral arguments Wednesday.

In September 2021, Disney secured an easy dismissal of claims that Pixar’s movie aped Knievel through the character and merchandise of Duke Caboom, a motorcycle-riding daredevil voiced by Keanu Reeves. But a US Court of Appeals for the Ninth Circuit panel expressed concern over the trial court’s lack of explanation and analysis on aspects of the dismissal.

The appeal by K&K Promotions Inc., which claims rights to the real-life daredevil’s intellectual property, takes aim at the reach of the Rogers test for trademarks in expressive works, arguing the lower court wrongly applied it to a trademark dilution claim as well as to merchandise. Under Rogers v. Grimaldi, trademarks can be used without permission in expressive works if the use has artistic relevance and doesn’t “explicitly” mislead consumers as to the markholder’s affiliation or endorsement.

The 2020 complaint said that Caboom, a toy character that made daredevil jumps on his motorcycle, was essentially Evel Knievel, only with Canadian rather than American patriotic regalia and a handlebar mustache. It alleged Disney infringed trademark and image rights through the movie character and merchandise that directly competed with toys it sold. K&K also claimed Disney’s use diluted Knievel’s trademarks.

Judge James C. Mahan dismissed the claims, saying the character passed the Rogers test. He added that it’s “well-established” that merchandise and advertising of aspects of an expressive work “are incorporated into the same Rogers test analysis.”

‘Why is it permissible?’

Disney attorney Mark Tratos of Greenberg Traurig PA argued that K&K hadn’t properly pleaded trademark dilution by failing to define its mark, much less claimed it was famous as the Rogers test requires. He also said the test is meant to balance trademark owner rights against free expression, and that much of what was claimed is common to any stuntman.

Circuit Judge Johnnie B. Rawlinson responded: “but the district court didn’t go through any of that analysis.” She later stated that “the problem is the Rogers test doesn’t apply” to trademark dilution.

“Why is it permissible for the court to dismiss that claim without analyzing it?” Rawlinson asked. After Tratos said K&K failed to articulate what the protected trademark was, she responded: “But if the district court had made those points, the complaint could have been amended to address those. So I’m not sure that that’s enough to say the trade dress claim was properly dismissed.”

K&K also argued the US District Court for the District of Nevada made subjective judgments while failing to explain aspects of its ruling, also denying a chance to amend its complaint or explain why the proposed amendments were insufficient.

Rawlinson noted the court “was a little bit equivocal” by refusing to allow amendment and entering judgment, but also dismissing the case without prejudice, meaning K&K can file again. Judge Daniel Bress also called it “a little curious” that K&K would have to find some new information, which likely would be held only by Disney.

‘Did You Plead That?’

Rawlinson asked K&K attorney J. Randall Jones of Kemp Jones & Coulthard LLP whether the court’s finding that the character constitutes a transformative use should have disposed of the right-of-publicity complaints, including with regard to the merchandise. The Ninth Circuit allows for use of an identity if the use adds significant creative elements and sufficiently transforms the likeness into an original expression.

“That’s another error, unfortunately, that Judge Mahan made. Transformative use is a fact-driven issue, so it’s almost never—if not never—appropriate to decide at the motion-to-dismiss phase,” Jones said. He added that the “problem was compounded” because Mahan didn’t analyze all the factors for transformative use.

Jones said K&K doesn’t dispute that Rogers applies, but suggested that Disney’s Caboom was explicitly misleading.

“If you want to get to that explicitly misleading—wouldn’t it have to be the case that Disney was explicitly misleading consumers into believing Evel Knievel endorsed the product or film?” Rawlinson asked. Jones said the case was only at the motion to dismiss stage, but Rawlinson pushed again: “But did you plead that? Did you plead that Disney explicitly misled consumers into thinking that Evel Knievel endorsed or was a part of this film?”

Jones said he didn’t believe K&K used the word endorsed, but definitely pleaded that Disney misled consumers.

Rawlinson said the record indicated the actors and writers were the ones allegedly misled, with instructions to “think Evel Knievel.” Jones said he’d argue that’s “more damning” since writers were clearly using his identity for the character. Rawlinson suggested that may just show the basis for the transformative use, and Bress questioned whether it was unlawful. “It can be,” Jones answered.

“All they did was put a handlebar mustache and made the suit a patriotic suit for Canada,” Jones said.

Judge Bridget S. Bade also sat on the panel.

The case is K&K Productions Inc. v. Walt Disney Studios, 9th Cir., No. 21-16740, Oral Argument 8/10/22.