Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.

December 2012 Issue

Civil Cases

Diller v. Barry Driller Inc.,
104 USPQ2d 1676 (C.D. Cal. Sept. 10, 2012)


Media mogul Barry Diller (“Diller”) brought a claim against the operators of, a digital service that streamed broadcast-television signals over the Internet. featured a graphic of a young, fit, shirtless man holding a drill.  The website competed with Aereo, a company backed by Diller that provides subscribers with a very similar service.  Defendants argued that “Barry Driller” was a nominative fair use and a parody.  Diller, however, believed the name was chosen because of his involvement with Aereo’s Internet-broadcasting service.  He filed suit against the defendants for false endorsement under the Lanham Act and violation of his right of publicity under California common and statutory law.  He also sought a temporary restraining order and preliminary injunction to prevent the use of “Barry Driller.”  The district court granted the restraining order pending a hearing on the preliminary injunction request.

In considering Diller’s preliminary injunction request, the court as an initial matter clarified what mark was actually at issue in the case.  Defendants argued there was no similarity between the graphic of a young, shirtless man holding a drill and Diller.  The court explained, however, that the claim was based on the defendants’ use of a slight variation of Diller’s name, not the use of his appearance.  Thus, the proper issue was whether the use of the term “Barry Driller” would cause consumer confusion with Diller’s name apart from the use of the graphic. 

Next, the court dismissed the defendants’ arguments that the use of “Barry Driller” was nominative fair use and a parody.  “Barry Driller” was not a nominative fair use, the court stated, because the defendants did not use Diller’s real name to refer to him directly; instead, the defendants added an “r” and referred to their own Internet-broadcasting service.  “Barry Driller” was not a parody because nothing on the defendants’ website distinguished Diller from “Barry Driller” to convey to a reasonable viewer that “Barry Driller” was a parody.  Moreover, the court stated, the mark was used for purely commercial purposes. 

Turning to Diller’s false-endorsement claim, the court conducted a fact-intensive likelihood-of-confusion analysis.  The court first noted that in a celebrity-endorsement case, the strength of the celebrity’s persona is judged by the “level of recognition the celebrity enjoys among members of society.”  This factor demonstrates likelihood of confusion only if the celebrity is well known among the defendants’ target customers—in this case, those in the entertainment and technology industries.  Diller’s name was strong in the minds of these customers, the court held, because Diller’s name frequently appeared in the media and he was the chairman and CEO of two large entertainment companies (Paramount Pictures and Fox) before leading companies like Aereo that offer services over the Internet.

The court ultimately determined that Diller was likely to prevail on his false-endorsement claim because the defendants’ use of “Barry Driller” created a likelihood of confusion.  The goods in the case were closely related, and the marks were almost identical in sound and appearance.  Both services were web-based and likely to target the same customers, indicating a likely overlap in the parties’ marketing channels.  Moreover, both services also operated in New York and would likely expand to many of the same markets across the country.  The evidence also strongly suggested that the defendants intended to exploit Diller’s celebrity, with one defendant admitting in a press interview to intentionally selecting “Barry Driller” to evoke Diller’s identity. 

The court also held that the defendants likely violated Diller’s state-law rights of publicity claims.  The court explained that by purposely adopting the “Barry Driller” mark to advertise and sell their Internet services, the defendants created significant risk of injury to Diller’s goodwill and reputation.  The court rejected the argument that the defendants’ inclusion of an “r” in the plaintiff’s name was a transformative use. 

The court granted the preliminary injunction in Diller’s favor, finding irreparable harm, that the balance of hardships favored Diller, and that an injunction was in the public interest.

This case provides an example of a court recognizing that celebrities have property rights in their identities under the Lanham Act analogous to those of trademark holders, enabling celebrities to protect their identities against commercial uses that are likely to mislead consumers about their sponsorship or approval.

*Brian R. Westley is a Law Clerk at Finnegan.