OPINION AND ORDER
The plaintiffs in this case raise an array of claims aimed at protecting the commercial value of well-known trademarks on buttons. In recent years a major market has developed for the sale of novelty items bearing the likenesses, logos, trademarks, service marks and names (hereinafter the “marks”) of popular recording artists. See generally McCarthy, Important Trends in Trademark & Unfair Competition Law During the Decade of the 70’s, 71 Trademark Rptr. 93, 135 (1981). These novelty items are sold outside concert halls, on the streets, and in shops. Some who sell these items are licensed to do so by the persons or groups whose marks the items bear. Many sellers are not licensed, however, and the recent increased commercial significance of this novelty market has led owners and licensees of well-known marks to seek to control their exploitation.
Plaintiff Bi-Rite Enterprises (“Bi-Rite”) is a manufacturer and distributor of posters, buttons, patches, bumper stickers and other novelty items bearing the marks of popular rock music groups. It sues both as the authorized licensee of various rock artists, some of whom are also joined as plaintiffs, and as a direct competitor seeking to prevent defendants from engaging in illegal and unfair competition. The plaintiffs also include several rock groups — Judas Priest, Molly Hatchett, Devo, Styx, and Iron Maiden — their individual members, and two solo performers, Neil Young and Pat Benatar (hereinafter collectively “the Performers”). These Performers have sued as trademark owners. Defendants are all manufacturers and/or distributors of buttons and other novelty items bearing among other things the marks of the plaintiff Performers and other rock groups.
Plaintiffs claim that defendants’ unlicensed sales of buttons bearing logos and likenesses the plaintiffs own or control constitute trademark infringement and unfair competition under the common law, the New York General Business Law § 368-d (McKinney 1968), and § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1976). The Performers and Bi-Rite all assert that defendants are using marks which only the performers and/or Bi-Rite are authorized to *1192 use. In addition, however, Bi-Rite seeks to enjoin defendants from distributing any buttons bearing marks for which defendants have no license or authorization, even though Bi-Rite has no license to use or police the marks at issue. Bi-Rite argues that in the button industry retail success depends upon the number of different, desirable buttons offered to the consumer. Unethical distributors who offer the most inclusive line of buttons therefore gain a competitive advantage in the market over dealers such as Bi-Rite, which are penalized and damaged by their own ethical practice of distributing buttons only of those groups for which they have licenses. Plaintiffs also claim defendants have violated their statutory right to privacy under New York Civil Rights Law § 51 (McKinney Supp. 1981), and their common law right of publicity. They argue that the undisputed facts establish all their common-law and statutory rights and therefore move for summary judgment on all claims.
Defendants admit that they are selling buttons bearing marks for which they have no license. They claim to be willing to stop selling buttons with marks that any legally empowered plaintiff instructs them not to use. Any other mark, they contend, is within their de facto power to use, because under industry custom a mark can be used on buttons until its owner proscribes its use. They claim that many rock groups and performers in fact welcome the unauthorized use of their marks on buttons as a source of free publicity, and consider the profits to be gained from licensing the use of their marks on buttons insignificant compared to the profits made on tee-shirts and other, more substantial items. They oppose summary judgment on plaintiffs’ claims because they contend that Bi-Rite has failed to establish that it has the right to enforce any of the marks it claims, that Bi-Rite has no legal basis for enforcing marks which it is not licensed to enforce, and that Bi-Rite’s attorney in this case has not proved that he is authorized to represent the other named plaintiffs.
I. Authority to Sue
Defendants’ effort to raise issues of fact concerning Bi-Rite’s attorney’s authority to represent the other named plaintiffs is insufficient. The attorney has filed notices of appearance for all the plaintiffs involved, and has made the plaintiffs’ alleged agents available for depositions. Some of these agents have testified as to their authority to ask the attorney to represent the plaintiffs in this suit. Defendants have also been given every opportunity to write to, or to subpoena, the named plaintiffs to determine whether their names have properly been included in this law suit. Defendants have done nothing, however, to attempt to prove their claims. Such conduct cannot be permitted to create issues of fact, where the opposing side has offered substantial evidence to support its position.
Adickes v. S.H. Kress Co.,
II. Unfair Competition
Plaintiffs claim violations of their federal and state-law rights relating to unfair competition, trademark infringement, dilution, privacy, and publicity. All of plaintiffs’ trademark and unfair competition claims, other than their state dilution claim, are resolved by the application of a single set of principles. “ ‘[T]he law of trademark infringement is but a part of the law of unfair competition’ and the same test is applied in determining each claim.”
American Footwear Corp. v. General Footwear Co.,
Congress enacted the Act “to regulate commerce within [its] control by making actionable the deceptive and misleading use of marks in such commerce” and “to protect persons engaged in such commerce against unfair competition.... ” 15 U.S.C. § 1127 (1976);
see Colligan v. Activities Club of New York, Ltd.,
Any person who shall affix, apply or annex, or use in connection with any goods or services, ... a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce ... shall be liable to a civil action by ... any person who believes that he is or is likely to be damaged by the use of any such false description or representation.
Section 43(a), and unfair competition law in general, function primarily to protect consumers from confusion as to the source of goods in the market.
See, e.g., Warner Bros., Inc. v. Gay Toys, Inc.,
Plaintiffs seek to expand § 43(a) protection beyond these bounds. They rely on the broad remedial language of § 43(a), which provides a remedy to “any person who believes that he is or is likely to be damaged ...,” and on several cases that give this language an expansive meaning, to support their position that the Act proscribes the unauthorized use of marks as decorative emblems on collateral merchandise, such as T-shirts, buttons, and bumper stickers. Thus, plaintiffs cite
CBS Inc. v. Springboard International Records,
*1194 In Boston Hockey, the defendant sold its emblems to sporting goods stores, which in turn attached them to other items for sale. The Court recognized the “difficulty” of extending trademark protection to this “reproduction of the trademark itself.” Nevertheless, the Court reversed the District Court’s conclusion that such an extension “would be tantamount to the creation of a copyright monopoly for designs that were not copyrighted,” and granted relief. It held that consumers need not be confused as to the source of the goods — the emblems — but need only be aware of the “self-evident” source of the trademark symbols to establish a statutory violation. The Court reasoned:
The confusion or deceit requirement is met by the fact that the defendant duplicated the protected trademarks and sold them to the public knowing that the public would identify them as being the teams’ trademarks. The certain knowledge of the buyer that the source and origin of the trademark symbols were in the plaintiffs satisfies the requirement of the act. The argument that confusion must be as to the source of the manufacture of the emblem itself is unpersuasive, where the trademark, originated by the team, is the triggering mechanism for the sale of the emblem.
Id. at 1012.
Subsequent decisions have similarly granted relief against distributors which, without authorization, placed the marks of rock groups on T-shirts and sold them at concerts where the groups were playing.
See Winterland Concessions Co. v. Sileo,
This push to extend trademark protection to the use of established marks on collateral products is only the most recent manifestation of the effort (as old as the trademark law itself) to protect the full economic value of distinctive marks. See generally 3 R. Callman, Unfair Competition, Trademarks and Monopolies (3d ed. 1969). The cause is rooted in fairness and commercial good sense. People establish marks through effort and investment, and the value embodied in these marks should be protected against those who would steal or dilute it. The zeal to protect the full value of marks, and the feelings and economic interests that fuel it, however, cannot negate the fact that unfair competition law clearly requires confusion as to the source of goods before it will protect against the unauthorized use of a mark.
Copyright and patent laws grant to the creators of original expression and ideas monopoly power over their use and sale. Congress sanctioned such monopoly power to reward and encourage originality and creativity in otherwise competitive markets.
See, e.g., Hoehling v. Universal City Studios, Inc.,
These policies explain Congress’ limitations on trademark protection. They apply with particular force in connection with the use of marks on buttons, for buttons tend primarily to be a medium for communicating ideas or positions; they are not commodities sold to serve any other functional purpose. Under these circumstances expression is enhanced when manufacturers are free to copy and distribute widely the message.
The controlling principles in the Second Circuit are stated in
American Footwear Corp. v. Universal Footwear Co.,
Judge Knapp recently stated in considering the meaning given by the Fifth Circuit in
Boston Hockey
to “confusion”: “We do not believe our Circuit would agree that such an extension of heretofore accepted concepts should ... be accomplished by judicial, rather than legislative fiat.”
Warner Bros. Inc.,
v.
Gay Toys, Inc.,
These principles do not as a matter of law preclude protection against the use of marks on emblems, buttons, or other novelty items. They require the owner to establish that the particular use of a functional mark on the product involved will cause or was intended to cause consumer confusion as to source. In certain contexts, such as at concerts where the mark’s owner performs, the public may, in fact, assume that the owner of the mark sponsored or even produced the goods — emblems, buttons *1196 or T-shirts — that bear its mark. An evidentiary record that established such confusion, or created a presumption that the manufacturer sought to confuse consumers as to source, would supply a basis for protection. But plaintiffs have not even attempted to prove confusion in the sense required by the Act. Defendants will be entitled to summary judgment if this failure remains unrectified.
Plaintiffs, meanwhile, are certainly not entitled to summary relief. The Lanham Act imposes no restraint on the free marketing of functional marks which consumers or manufacturers mount on collateral items as a means of personal expression. As the Ninth Circuit noted in Job’s Daughters:
We commonly identify ourselves by displaying emblems expressing allegiances. Our jewelry, clothing, and cars are emblazoned with inscriptions showing the organizations we belong to, the schools we attend, the landmarks we have visited, the sports teams we support, the beverages we imbibe. Although these inscriptions frequently include ... trademarks, it would be naive to conclude that the name or emblem is desired because consumers believe that the product somehow originated with or was sponsored by the organization the name or emblem signifies.
III. Dilution
Plaintiffs fail to support their dilution claim brought under New York General Business Law § 368-d (McKinney 1968). The applicability of New York law to plaintiffs’ dilution claim is questionable; neither plaintiffs nor defendants have significant contacts with the state. Nevertheless, because dilution statutes vary little as to their content and underlying policies, a conflict-of-laws analysis is unnecessary; it suffices to demonstrate the unavailability of a dilution cause of action under New York law.
Dilution refers to a whittling away of an established trademark’s distinctiveness, and hence its selling power, through its unauthorized placement on dissimilar products.
Stop the Olympic Prison v. United States Olympic Committee,
Section 368-d, however, does not reach defendants’ use of plaintiffs’ marks. Although, by its own terms, the statute does not require public confusion, it does require a likelihood of injury to plaintiffs’ business reputations or dilution of the distinctive quality of their marks.
See Allied Maintenance Corp.,
IY. Bights of Privacy and Publicity
Pendant jurisdiction exists over plaintiffs’ claims of privacy, N.Y. Civil Rights Law § 51 (McKinney Supp.1981), and of publicity under New York law; they arise out of the same core of operative facts as do plaintiff’s substantive federal claims, and taken together they “are such that [plaintiffs] would ordinarily be expected to try them all in one judicial proceeding.”
*1197
United Mine Workers v. Gibbs,
Plaintiffs raise their privacy and publicity claims under New York law. None of the defendants contests this choice of law. But recent Second Circuit decisions compel this Court,
sua sponte,
to “apply the substantive law of the state to which the forum state, New York, would have turned had the suit been filed in state court.”
Factors Etc., Inc. v. Pro Arts, Inc.,
Plaintiffs Pat Benatar, Neil Young and members of the group Devo, plus their managers or licensees, all reside in California. PI. Dec. 2,1982, brief at 9. Accordingly the situs of these plaintiffs’ proprietary publicity interest is California, which is also the forum with the most acute concern for plaintiffs’ privacy. Similar reasoning dictates that Illinois law control the rights of the group Styx, though one of its members is a Michigan resident, and that Georgia law apply to the group Molly Hatchet. Bi-Rite, an Illinois corporation with its principal place of business in Illinois, is also subject to Illinois law. All members of the groups Judas Priest and Iron Maiden reside in Great Britain, but market themselves exclusively through a Georgia based merchandising representative; Georgia law controls their rights.
Plaintiffs have failed to state a privacy cause of action under any relevant source of law. The New York privacy statute on which they incorrectly rely allows “[a]ny person whose name, portrait or picture is used within this state for advertising purposes or for purposes of trade without written consent [to] ... maintain an equitable action ... [or to] sue and recover damages. ... ” New York Civil Rights Law § 51 (McKinney Supp.1981). California has a similar privacy statute which reads, “Any person who knowingly uses another’s name, photograph or likeness, in any manner, for purposes of advertising ... or for purposes of solicitation of purchases of products ... without . .. prior consent ... shall be liable for any damages .... ” Cal. Cjv.Code § 3344 (West 1975). Neither Illinois nor Georgia has such a statutory provision, but both recognize a common law right of privacy which supplies the basis for four independent torts: 1) intrusion upon the plaintiff’s seclusion; 2) public disclosure of embarrassing private facts, 3) publicity that places plaintiff in a false light; and 4) appropriation, for the defendant’s advantage, of plaintiff’s name or likeness.
See Martin Luther King Jr. Center for Social Change, Inc. v. American Heritage Prod
*1198
ucts, Inc.,
New York’s Section 51 protects a person’s feelings and right to be let alone,
Brinkley v. Casablancas,
Plaintiffs’ claims fail under this standard, for as public figures, with their likenesses, names and images already in the public domain, they have waived their rights to claim intrusions into their common law privacy rights.
See Uhlaender
v.
Hendricksen,
Plaintiffs fare better under the so-called “right of publicity,” a tort derived from the appropriation branch of the right to privacy. That right, recognized in all three states,
see Martin Luther King, Jr. Center for Social Change, Inc.,
Judge Werker of this Court recently outlined a three-part test for right of publicity claims:
An individual claiming a violation of his right to publicity must show: (1) that his name or likeness has publicity value; (2) that he himself has “exploited” his name or likeness by acting “in such a way as to evidence his ... own recognition of the extrinsic commercial value of his ... name or likeness, and manifested that recognition in some overt manner”; and *1199 (3) that defendant has appropriated this right of publicity, without consent, for advertising purposes or for the purposes of trade.
Lerman v. Chuckleberry Publishing, Inc.,
The plaintiff Performers have satisfied this three-part test. The Performers’ names have financial value; they are all celebrities who have won gold or platinum records. See Affidavit of S. Traiman ¶ 6. This celebrity status carries publicity value in the market that exists for exploiting names, faces and reputations of celebrities.
See Ali v. Playgirl, Inc., supra,
As individuals, plaintiffs Neil Young and Pat Benatar are entitled to summary judgment for violation of their right of publicity. The group Performers also qualify for summary judgment. While only one court has apparently recognized a group’s right of publicity,
see Winterland Concessions Co. v. Sileo,
Plaintiff Bi-Rite, as the exclusive licensee of various rock groups, may also assert this claim. Unlike privacy rights, which protect personality and feelings and are therefore not assignable, the right of publicity gives rise to a “proprietary” interest in the commercial value of one’s persona which is assignable and may be freely licensed.
See American Heritage Products,
*1200
We think that, in addition to and independent of that right of privacy ..., a man has a right in the publicity value of his photograph, i.e., the right to grant the exclusive privilege of publishing his picture, and that such a grant may validly be made “in gross.” ...
... [M]any prominent persons ..., far from having their feelings bruised through public exposure of their likenesses, would feel sorely deprived if they no longer received money for authorizing advertisements .... This right of publicity would usually yield them no money unless it could be made the subject of an exclusive grant which barred any other advertisers from using their pictures.
Haelen Laboratories, Inc. v. Topps Chewing Gum, Inc.,
Defendants, in fact, do not contest the standing Bi-Rite would acquire as an exclusive licensee, but instead charge that the licenses do not confer exclusive rights on Bi-Rite, or expressly withhold from Bi-Rite the power to sue. A nonexclusive licensee acquires no proprietary interest in the publicity rights of the licensor and accordingly has no standing to sue for violation of those rights. Cf. M. Nimmer, supra, at ¶¶ 10.02,12.02. Bi-Rite is in fact without standing to assert right of publicity claims under its non-exclusive licenses with Rush and Journey; see PI. Reply Affirmation Ex. G, H; defendants are granted summary judgment on these claims. But Bi-Rite’s licensing agreements with The Who, Pink Floyd, Molly Hatchet and Devo expressly grant it exclusive rights to merchandise the marks of these groups on specified articles, including buttons, see id. Ex. A, G; PI. Reply Memorandum at 5; Bi-Rite is therefore entitled to summary judgment on these licenses. The limits imposed in the licenses on Bi-Rite’s power to protect the marks pertain only to its power to bring actions to prevent infringements on its licensors’ marks. They do not impede its right to sue to protect the publicity rights it acquires through the exclusive agreements. Finally, issues of fact exist as to whether Bi-Rite’s licensing agreements with Foreigner, Judas Priest, and Triumph extend to buttons, see PI. Reply Affirmation Ex. C, D, E. Bi-Rite has failed to indicate whether these licenses have been renewed to cover the period of time for which damages are claimed. These issues must be resolved before summary judgment could be granted, one way or the other.
The exclusive licenses held by Bi-Rite define and impose the limits on its publicity rights. Consequently, its effort to require defendants to obtain licenses for all the marks they merchandise, and not just for those marks that damage Bi-Rite’s licenses, must fail. Only parties with interests in the proprietary right of publicity have standing to challenge encroachments on those rights. Sound reasons might lead a performer to ignore the mounting of his name on a button, including the increased notoriety (and value) that may accrue to his *1201 name from such use. Defendants, and Bi-Rite also, may freely exploit the names of performers, though at the risk that a party holding the proprietary right may complain and seek relief.
The right of publicity therefore grants plaintiffs relief where none exists under federal law. Federal preemption poses no bar to such relief. “The intangible proprietary interest protected by the right of publicity simply does not constitute a writing,”
Lugosi,
In summary, plaintiffs have failed to demonstrate confusion under the Lanham Act and accordingly are denied summary judgment. The Performers are all granted summary judgment for violations of their rights of publicity. They are entitled to injunctive relief, as well as damages, for these violations.
See Ali v. Playgirl, Inc.,
SO ORDERED.