Russell Christoff v. Nestlé USA, Inc.
47 Cal. 4th 468 (2009)

Jim Astrachan
Astrachan Gunst Thomas Rubin, P.C.
Baltimore, Maryland

In 1986 professional model Russell Christoff posed for a photo that he was told might be used on vacuum packed bricks of coffee to be sold in Canada. He was paid $250 and promised $2,000 if the photo was used. In 2002 he discovered that his photo had been used in the United States on TASTER’S CHOICE coffee jars, and later discovered that his photo had been used for at least 5 years on coffee labels and other facets of Nestlé’s international advertising campaign. He brought his action for misappropriation of his identity under California Civil Code, §3344 within one year of learning of Nestlé’s unauthorized uses.

Misappropriation of identity, or right of publicity, is generally defined as an individual’s right to control and profit from the use of his or her identity, or persona, for commercial purposes, such as being included in advertisements or on a product. This right can be violated through the use of an individual’s identity including name, likeness, signature, photograph, drawing, nickname (Hirsch v. S.C. Johnson & Sons, 90 Wis. 2d 379 (1979); voice, look and sound alikes (Waits v. Frito-Lay, Inc., 978 F2d 1093 (9th Cir. 1992)), and even occasionally an inanimate object with which the person whose identity is taken is closely associated, such as a race car. (Motschenbacher v. R.J. Reynolds Tobacco Co., 498 F.2d 821 (9th Cir. 1974).

The right can arise through statute, common law or both in some jurisdictions such as California. (White v. Samsung Elec. Am., Inc., 971 F2d 1395 (9th Cir. 1992)). In many jurisdictions the right of publicity is treated as a property right and is descendible or assignable. The California statute, for example, provides that the right exists for 70 years following death; under Indiana law, it survives for 100 years. But under a New York statute, this right is not descendible and the concept of a common law right has been rejected. Stephano v. News Group Publications, Inc. 64 N.Y. 2d 174 (1984). Maryland has no statute and the common law has yet to recognize that this right is descendible.

For Nestlé’s transgressions, a jury awarded Christoff damages of $15 million, representing a portion of the profits Nestlé made from the sale of coffee bearing his photograph. The verdict was rejected by the California Court of Appeals on the grounds that the “single publication” rule, California Civil Code, §3425.3, and limitations required suit to be brought within 2 years following the first publication of the label unless Christoff could prove that Nestlé hindered his discovery or that the label had been republished.

The California Supreme Court affirmed that the jury’s verdict must be reversed on three grounds: the trial court’s erroneously ruled that the single publication rule does not apply to misappropriation of identity claims; the trial court had not developed sufficient facts to determine if Nestlé’s actions constituted a single publication; and it could not be determined if limitations had run on Christoff’s claim until the court determined whether the single publication rule applied.

The Supreme Court held that the single publication rule does apply to suits for misappropriation of likeness for commercial purposes, as the language of the statute is broad and applies to invasions of privacy and “any other tort founded upon any single publication or exhibition or utterance, such as any one issue of a newspaper or book or magazine or any one presentation to an audience or any one broadcast over radio or television or any one exhibition of a motion picture.” While the misappropriation of identity tort was not named in the statute, the method, by which the tort was executed, publication, was.

Once it was determined that the single publication rule applied to misappropriation of identity claims the court had to decide whether Nestlé’s extended actions, over several forms of media and numerous years, constituted a single integrated publication under the statute. If so, limitations might bar the entire claim as Christoff had not filed within two years of Nestlé’s first publication. The publication of a product label bearing Christoff’s photo and an ad campaign that run for five years raised the question of whether all of Nestlé’s activities constituted a single, integrated publication. This was an issue of first impression in California.

The purpose of the single publication rule is to control damages resulting from mass communications so that a repeated communication does not create new causes of action as the mass communication is repeatedly received by a mass audience. Belli v. Roberts Bros. Furs, 240 Cal. App. 2d 284 (1966). For example, a television announcement, or a newspaper article, can reach millions of people. It would be impracticable to allow the defamed subject of the broadcast, or article, to sue the media each time the message was received by a reader or listener. Thus, the one broadcast or the one edition of the newspaper, no matter how many people are reached, or how many copies are published, is one publication for purposes of the rule.

The above examples of single publication are rather straight forward, but Christoff’s case against Nestlé was not. The Court needed to determine whether Nestlé’s activities over the five year period constituted a single, or more than a single, publication. If it was a single publication, limitations had likely expired years earlier; if the different uses of Christoff’s photo constituted new publications, then limitations should run anew from each.

The Court confessed it did not have sufficient facts to determine whether the single publication rule should be applied, and remanded the case for fact finding as the trial court had not done so in the erroneous belief that the single publication rule did not apply to misappropriation of identity cases.

The concurring opinion of Justice Werdegar is of interest because he discussed circumstances where other state courts applied, and did not apply, the single publication rule. In particular, there was a 2006 Illinois state court ruling (Blair v. Nevada Landing Partnership, 369 Ill. App. 3d 318) and a 2008 ruling of the United States District Court for the Northern District of Illinois (Wells v. Talk Radio Network FM, Inc. N.D. Ill. 2008 WL 4888992) that reached different conclusions, the latter finding no single publication where a program was broadcast 17 times in 2 years. And a Florida decision was cited, holding that where there were multiple publications, “over several years, the defendant repeatedly used the plaintiff’s name and image in marketing presentations to potential clients, each such presentation was a new publication.” Baucom v. Haverty, 805 So. 2d 959, 960 (2001). Of this opinion Judge Werdegar wrote, “In my view, the latter approach is more consistent with our statutory language.”

If the California Supreme Court wants to decide that there were multiple publications of Mr. Christoff’s photograph, it can find support in the facts that the photo was used over five years in multiple countries and on the product and in multiple forms of advertising media. I believe it can and should.

Get Your Kicks

By: James B. Astrachan

Trademarks can be a business’ most valuable asset. They instantly identify the source of the product and convey important information to the consumer. Is the product of high or low quality? Does it last or wear out? Smell good or bad? The LOWENBRAU mark has been in use since 1383.


A business can usually prevent a competitor from using its trademark or a similar mark in connection with the competitor’s goods or services if consumers are likely to be confused as to either the source of goods or an affiliation between the owner and its competitor. Some marks are considered famous, such as McDonald’s or Ford. They have been around forever and lots of ad dollars have been spent to reach most of the population. Even people who have never eaten at a McDonald’s have heard of McDonald’s. If a business selling goods or services not in competition with the owner of a famous mark adopts the famous mark, the mark’s owner can often stop its use under state or federal anti-dilution laws. For example, Sony and Sony’s restaurant. It’s not likely that anyone will believe Sony is in the restaurant business, but a restaurant’s use of Sony’s famous mark may blur the distinctiveness of the mark.


Not every use of another’s trademark is infringing and actionable and no one has a monopoly in its mark. The statutory concept of fair use allows another’s mark to be used for comparative advertising, parody and for descriptive purposes. For example, the owner of the SWEET N TART mark could not stop another candy marker from describing its candy as being sweet and tart, as long as the marker did not use the descriptive term as a trademark. There are also First Amendment considerations that allow the use of another’s mark in artistic works.


Established in 1926, U.S. Route 66, also known as the Will Rogers Highway, was one of the original United States highways. It ran from Chicago to Los Angeles, a distance of 2,448 miles. It was removed from the highway system in 1985, having been replaced by the interstate system and being considered no longer relevant.


Route 66 is also a popular song about getting kicks (on Route 66) written in 1946 and covered by many musicians including Chuck Berry and the Rolling Stones. Route 66 also spawned numerous businesses of that name including a race track, a technology company, a record label and a brand of blue jeans sold by K-Mart. Perhaps the most well remembered product associated with Route 66 was the television series that ran from 1960 to 1964 and featured Martin Milner and George Maharis and a sweet Corvette sports car. Martin’s and George’s characters drove for four years in their search for the meaning of life. The show, however, was not bound to locations along Route 66; the final episode was shot in Tampa, far from Route 66. There was a spin-off movie of the same name released in 2004, starring two Germans and an old Cadillac. The name still had drawing power and had not been forgotten after 40 years.


In 2001, Roxbury Entertainment acquired all rights to the Route 66 TV series and related intellectual property, including the federally registered Route 66 mark. Its intention was to release the old TV series on DVD and perhaps make or license a movie. It has been said that no iconic trademark escapes irreverent use by persons not its owner, and Route 66 was no exception.


Penthouse Media, the publisher of Penthouse Magazine decided that the mark Route 66 was perfect to use to market and sell its Route 66 titled DVD that featured on the cover – it is Penthouse, after all – two topless women standing on a roadmap with a silhouette of a mountain range behind them. The word “Penthouse” appears in all capital letters across the top of the package and on the bottom third of the package appears “Route 66” in a font two times the size of the Penthouse font. A California highway sign marked Route 66 is prominent in the photo. The DVD package is labeled “hard core adult entertainment.” The DVD is primarily graphic sex scenes, but there is a story line, albeit very thin. It concerns a young couple fleeing an unlawful event. They are traveling by car and on the run. It’s no surprise that they spend much of the movie in roadside motels along Route 66.


It’s no surprise, either, that Roxbury very strongly objected to the use of its registered mark in connection with a hard core porn movie that involved two road travelers. When Penthouse refused to stop selling the DVD, Roxbury sued for trademark infringement and violations of the anti-dilution act.


Penthouse’s First Amendment and fair use defenses were entirely foreseeable. Where an artistic work is involved, the First Amendment can provide a complete defense to a Lanham Act claim. This is because non-commercial speech receives more protection than does “buy me” speech, or to put it another way, speech that does nothing more than propose a commercial transaction, such as ads.


Films, as artistic works are generally, but not always, entitled to First Amendment protection. To determine whether a particular film deserves protection in a trademark case courts generally apply a test of two components. First, the defendant’s use of the plaintiff’s trademark must be relevant to the film, but the defendant has a great deal of leeway in this regard as courts have held that “the level of relevance must merely be above zero.”


The second component of the test requires an examination of whether a defendant’s use of the mark explicitly misleads consumers as to source or content of the film. In other words, would consumers believe that the film created by, or that the defendant is somehow associated or affiliated with the plaintiff? Mere use of another’s mark does not make for confusion.


Penthouse won its case as there was no evidence of consumer confusion presented to the court as to source or association. Subject matter aside, the DVD was a film and it had some modicum of a plot. And there was some relationship, albeit it weak, between the mark and a film about road travelers on Route 66.


The court didn’t discuss the strength of the mark. Stronger marks get more protection, and this mark is pretty weak due to its long use to identify a U.S. Route, and a myriad of uses by many persons. Nor did anyone raise the issue that Penthouse’s film may be a parody of the original TV series and the use of the mark essential to that parody.


It’s frustrating, no doubt, for the mark’s owner to see Route 66, a mark it paid considerable money to own, used for free in this fashion. But sometimes the First Amendment will frustrate someone who doesn’t like what someone else is saying. That’s just the way it is.