White v. Samsung Electronics America

People and parties

Opinion author

Appeal1992

Plaintiff

v.

Defendant

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A familiar face was not required

Samsung’s advertisement showed a robot in a wig, gown and jewelry, standing beside a game board that looked like Wheel of Fortune. Its caption promised: “Longest-running game show. 2012 A.D.” The joke sold the durability of Samsung VCRs by imagining a familiar television ritual surviving into the future. White had neither agreed to the advertisement nor been paid for it. [1, p. 1396]

The robot had mechanical features. That helped Samsung defeat White’s claim that it had used her statutory “likeness.” Yet the same advertisement could still support a common-law claim for appropriating her identity. The Ninth Circuit treated recognition as something an advertiser could assemble from a setting, a costume and an activity, without reproducing a face. [1, pp. 1397–99]

Removing the face did not remove the reference. For a lawyer reviewing a campaign, that leaves three questions to keep separate: whose identity the ad uses, whether it suggests permission, and how its expressive content affects the analysis.

The campaign supplied part of the evidence

Advertising agency David Deutsch Associates created the campaign for Samsung. Each advertisement paired an electronic product with an unlikely future for a contemporary cultural reference. One imagined a raw steak being declared health food. Another pictured Morton Downey Jr. as a future presidential candidate. The advertisements appeared in at least half a dozen publications, some with national circulation. [1, p. 1396]

The agency deliberately selected the robot’s wig, dress and jewelry to resemble White’s. The defendants themselves called it the “Vanna White” advertisement. These details mattered to identification. The other celebrities’ participation mattered to a different issue: consumers familiar with the campaign might think White, too, had authorized an endorsement. The majority expressly relied on that surrounding context when reviving the Lanham Act claim. [1, pp. 1396, 1400–01]

White sued both Samsung and Deutsch. The district court granted summary judgment against her on all three theories: California Civil Code section 3344, California’s common-law right of publicity, and section 43(a) of the Lanham Act. The appeal asked whether those claims could proceed, not what damages the defendants owed. [1, pp. 1396–97, 1401]

Two claims return to court

1. June 7, 1991

   The Ninth Circuit hears White’s appeal from summary judgment for Samsung and Deutsch. [1]

2. July 29, 1992

   The panel preserves dismissal of the statutory claim but revives the common-law publicity and Lanham Act claims and remands. [1, p. 1401]

3. August 19, 1992

   The panel opinion is amended; this article uses the amended text. [1]

4. March 18, 1993

   Panel rehearing is denied and rehearing en banc is rejected. Kozinski dissents from the en banc rejection, joined by O’Scannlain and Kleinfeld. [2, p. 1512]

Three claims, two different kinds of recognition

Statutory likeness: Samsung wins

Section 3344 identifies particular attributes: name, voice, signature, photograph and likeness. White argued that the robot used her likeness. The panel disagreed. A machine with mechanical features was different from, for example, a mannequin molded to her precise features. It expressly left open when a caricature or impressionistic resemblance might qualify. The holding was about this robot, not an exemption for every stylized depiction. [1, p. 1397]

Common-law identity: White’s claim survives

The majority refused to make the statute’s list the boundary of the common-law right. Samsung and Deutsch argued for a narrower rule tied to name or likeness. White’s position was that the assembled visual cues commercially used her identity even without either. Goodwin’s opinion accepted that broader conception of the protected interest. White still needed an actionable appropriation for the defendants’ advantage, without consent and with resulting injury; recognition alone was not the entire tort. [1, pp. 1397–99]

Its precedents explained why. Motschenbacher involved a racing driver identified through a distinctive car even though his features were not visible. Midler involved an imitation of a singer’s voice. Carson, applying Michigan law, involved the identifying phrase “Here’s Johnny.” The majority drew a common principle from them: the means used to identify a celebrity need not be a literal image or name. [1, pp. 1397–98]

A gown, blonde wig or piece of jewelry alone would not identify White. The combination with letter-turning on a recognizable game-show set did the work. The majority worried that an exhaustive list of forbidden techniques would reward the advertiser who found a new way to obtain the same commercial benefit. It held that the district court had improperly rejected White’s claim on summary judgment. [1, pp. 1398–99]

False endorsement: identification is only the start

The Lanham Act claim asked whether the advertisement created a likelihood that consumers would believe White endorsed Samsung’s VCRs. That is distinct from whether viewers knew whom the robot evoked. The panel applied the Sleekcraft factors to endorsement, treating White’s persona as the relevant mark and her television fame as connected to the advertised recording equipment. [1, pp. 1399–1400]

The record was mixed. White offered no evidence of actual confusion. The robot’s obvious artificiality cut against resemblance, while the pose and surroundings pointed toward White. Her fame, magazine exposure, and the campaign’s paid celebrity participants supported allowing a jury to consider endorsement confusion. The majority did not find confusion established; it found a genuine factual dispute. [1, pp. 1400–01]

An audience can get the joke without believing there was a sponsorship deal. Evidence of recognition helps identify the persona; an endorsement claim still needs evidence directed to likely confusion.

Why the joke did not end the lawsuit

Samsung and Deutsch invoked parody and the First Amendment. The majority distinguished parodies of advertisements from an actual advertisement selling VCRs. It treated the joke about White and the show as subordinate to the sales message. Its rejection of the defense depended on that commercial setting. [1, p. 1401 & n.3]

The same reasoning allowed two intentions to coexist. An advertiser could intend to spoof a celebrity and still intend audiences to believe she had authorized the campaign. The paid appearance of another celebrity in the series made that possibility concrete. Humor did not require the jury to disregard the endorsement question. [1, pp. 1400–01]

Read the result narrowly enough to preserve its procedural meaning: White regained the opportunity to pursue two claims. The panel did not award damages, hold that every commercial joke requires permission, or decide the legality of all later forms of celebrity imitation.

What happened after remand

White later obtained a jury award. A January 21, 1994 report in Deseret News put it at $403,000 against Samsung. That reported trial result is separate from the Ninth Circuit’s decision to let the claims proceed. The report does not supply the verdict form or a claim-by-claim allocation of damages. [7]

The dissents asked what the public would lose

Alarcón: a person is not the same as a role

Arthur Alarcón agreed that the robot was not White’s statutory likeness. He dissented from reviving the other claims. He thought the majority had extended California law beyond the state courts’ decisions and blurred the distinction between a performer and the role she played. In his account, the game-show set supplied the association; the costume and pose were shared by many performers. [1, pp. 1402–05]

He also emphasized White’s failure to produce evidence of actual deception while seeking Lanham Act damages. The majority’s ruling that a likelihood-of-confusion issue could reach a jury should therefore not be read as an award of monetary relief or a general rule about every showing required to obtain it. [1, pp. 1405–08]

Kozinski: recognition needs a limiting principle

Alex Kozinski’s better-known dissent came later, when the court rejected rehearing en banc. He was not a member of the original three-judge panel. Joined by Diarmuid O’Scannlain and Andrew Kleinfeld, he argued that the expanded identity right could give celebrities control over cultural references that ought to remain available to others. [2, pp. 1512–17]

“Overprotecting intellectual property is as harmful as underprotecting it.”

Kozinski, dissenting from rejection of rehearing en banc. [2, p. 1513]

His copyright objection sharpened the problem. Parodying a television show often evokes its performers. A separate, expansive publicity right could obstruct both a copyright owner’s licensing choices and a speaker’s use of material that copyright law leaves free. He also argued that commercial speech retains constitutional protection and criticized the panel’s treatment of that issue. Those were dissenting objections, not holdings that displaced the panel decision. [2, pp. 1517–21]

Later cases make the context harder to ignore

A later robot dispute showed why White was not a categorical safe harbor for artificial figures. In Wendt v. Host International (1997), George Wendt and John Ratzenberger challenged animatronic figures in airport bars modeled on Cheers. The Ninth Circuit cited White but found a triable question whether those figures were sufficiently like the actors to qualify as statutory likenesses. It also allowed their common-law claims to proceed. A visibly mechanical robot in one advertisement did not decide the resemblance of different figures in another case. [6, pp. 809–12]

Comedy III Productions v. Saderup supplied California’s transformative-use framework in 2001. The California Supreme Court distinguished creative expression that adds significant transformative elements from conventional celebrity depictions whose value primarily exploits fame. It ruled against the seller of the Three Stooges portraits before it. This later framework matters to expressive works; it did not simply erase White. [3, pp. 404–10]

Also in 2001, Hoffman v. Capital Cities/ABC distinguished celebrity advertising cases, including White, from a magazine’s fashion feature using an altered Tootsie image. The feature received the full protection applicable to noncommercial speech despite the magazine’s profit motive. The court reversed the judgment for Hoffman after finding the required actual malice unproved. Selling a magazine did not make every editorial image an advertisement. [4, pp. 1184–89]

In Sarver v. Chartier, the Ninth Circuit again cited White as a celebrity-advertising case while rejecting a publicity claim against The Hurt Locker. The film was not proposing a commercial transaction; the court also stressed that Sarver had not invested in building a marketable performance or persona of the kind protected in the cited cases. Its reasoning was tied to those facts, rather than a blanket exemption for movies. [5, slip pp. 23–27]

Together, these decisions make White most useful as an advertising precedent about identity. They also make it risky to export its brief parody discussion unchanged to editorial work, art or film. This review covers selected primary decisions, rather than a comprehensive citator history.

What a lawyer should take from the robot

• Review the combination. Costume, setting, activity and internal campaign language can identify the intended person even when no single element does. The defendants’ own name for the ad was unusually direct evidence of the reference. [1, pp. 1396, 1399]
• Keep the claims separate. A failed section 3344 likeness theory did not defeat common-law appropriation. A recognizable persona did not automatically establish false endorsement. The legal elements require distinct evidentiary work. [1, pp. 1397–1401]
• Read the whole campaign. Neighboring paid endorsements helped explain why this ostensibly playful image could suggest authorization. Review context beyond the challenged frame. [1, pp. 1400–01]
• Identify the expressive use precisely. Product advertising, editorial commentary and a creative work sold for profit require attention to different facts. Later decisions supply analysis that the short discussion in White cannot replace. [3] [4] [5]

Change one fact: remove the game board

As a hypothetical, put the same robot in an ordinary electronics showroom. The majority’s combination of identifying cues would be weaker, and both dissents singled out the game-show setting as crucial to recognition. That would give a defendant a different factual argument. It would not guarantee success: the remaining imagery, wording and audience context would still need examination. [1, pp. 1399, 1404–05] [2, p. 1515]

Sources and citations

1. White v. Samsung Electronics America, Inc., 971 F.2d 1395

   Ninth Circuit · July 29, 1992, amended August 19, 1992 · Majority pp. 1396–1401; Alarcón’s separate opinion pp. 1402–08.

2. White, 989 F.2d 1512: rehearing order and Kozinski dissent

   Ninth Circuit · March 18, 1993 · Order p. 1512; dissent pp. 1512–21.

3. Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387

   California Supreme Court · April 30, 2001 · Transformative use and application pp. 404–10.

4. Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180

   Ninth Circuit · 2001 · Editorial context, commercial speech and actual malice pp. 1184–89.

5. Sarver v. Chartier, 813 F.3d 891

   Ninth Circuit · February 17, 2016 · Publicity and First Amendment analysis, slip opinion pp. 23–27.

6. Wendt v. Host International, Inc., 125 F.3d 806

   Ninth Circuit · 1997 · Statutory likeness and common-law identity, pp. 809–12.

7. Letter of the law spells a big victory for Vanna

   Deseret News · January 21, 1994 · Contemporary reporting of the jury award; not the verdict form.

Illustration references

Vanna White: Generated editorial portrait based on the official Wheel of Fortune identity reference; not a photograph of the litigation. Reference

Samsung Electronics America, Inc.: Generated monochrome identifier based on the current Samsung wordmark shown by Logos-world; not a reconstruction of the historical advertisement. Reference

Alfred T. Goodwin: Generated editorial portrait based on a photograph by Judge Cynthia Holcomb Hall, circa 1991; reference courtesy of the Ninth Circuit archives and Ninth Judicial Circuit Historical Society. Reference