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Slide 1: The Right of Publicity Group 6 Michael Nesler Sean Nourie Jill Ortelt Tom Owens Michael Perez
Slide 2: Right of publicity - Origins • The right of publicity stems from the right to privacy, which was first articulated in a 1890 article by Justices Brandeis and Warren entitled “The Right to Privacy” 4 Harv.L.Rev. 193 (1890) • Right to privacy encompasses:  Protection of a “realm of solitude” where an individual is free from the public gaze  Insulation of private (i.e. sensitive or embarrassing) facts from public exposure
Slide 3: • Dean William Prosser’s article “Privacy” 48 Cal.L.Rev. 383 (1960) expanded and refined the concept of right to privacy, identifying four distinct torts:  Intrusion upon the seclusion or solitude of an individual  Public exposure of private facts  Disclosures that place the individual in a “false light” in the public eye  Appropriation of an individual’s name or likeness for personal gain Note: the right to publicity is closely related to the fourth right to privacy tort, appropriation of a name or likeness, but the two rights are separate and distinct
Slide 4: Right to Privacy v. Right of Publicity • Right to Privacy – – – – Any individual Personal right Right to be left alone Violation causes mental harm • Right of Publicity – – – – Celebrity or well-known person Property right Right to profit Violation causes monetary loss
Slide 5: Birth of the right of publicity The Second Circuit was the first to recognize the “right of publicity” in Haelen Laboratories, Inc. v. Topps Chewing Gum, Inc. 202 F.2d 866 (2d Cir. 1953) • Plaintiff, who held exclusive contracts to use certain baseball players’ photographs, sued to prevent defendant from using pictures of the same players on competing baseball cards • The court held that the ballplayers “would feel sorely deprived if they no longer received money for authorizing advertisements, popularizing their countenances, displayed in newspapers, magazines, busses, trains and subways.” • The defendant was enjoined from using the players’ pictures because “right of publicity would usually yield them no money unless it could be made the subject of an exclusive grant which barred any other advertiser from using their pictures.”
Slide 6: Right of publicity - What is it? The right of publicity is the right of a person whose identity has commercial value - usually a celebrity - to control the commercial use of that identity
Slide 7: Right of publicity - How is it protected? • Federal Law – Lanham Act § 43(a) • State Law – State statutes – Common law
Slide 8: Federal law - the Lanham Act • Section 43(a) of the Lanham Act prohibits false endorsements • Section 43(a) protects individuals against  Outright theft of identity (such as using a photograph of a celebrity without permission)  Unauthorized imitations
Slide 9: State law • Sixteen states have right-of-publicity statutes: California, Florida, Illinois, Indiana, Kentucky, Massachusetts, Nebraska, Nevada, New York, Oklahoma, Rhode Island, Tennessee, Texas, Utah, Virginia, and Wisconsin • Ten additional states have adopted the right of publicity through the common law: Arkansas, Georgia, Kansas, Louisiana, Michigan, Minnesota, Missouri, New Jersey, Ohio, and Vermont • Some states with a right-of-publicity statute also recognize a common law right (e.g. California), while others do not (e.g. New York)
Slide 10: Difference between state and federal claims • An individual claiming false endorsement under the Lanham Act must prove that the use of the identity likely misled consumers into believing the individual endorsed the product at issue • Although the standards for prevailing on a state right of publicity claim may vary from state to state, a plaintiff generally need not demonstrate a likelihood of consumer confusion
Slide 11: An example... • Wendt v. Host International, Inc., 125 F.3d 806 (9th Cir. 1997), cert. denied, 121 S. Ct. 33 (2000) – Cheers actors sued defendant for creating robotic figures based upon their likenesses without their permission and placing them in airport bars
Slide 12: • According to the Wendt court, the requirements for a common law right of publicity violation in California are: – – – – Use of the plaintiff’s identity Appropriation to the advantage of the defendant Lack of consent Resulting injury  As a result, the plaintiffs could recover on the state common law claim even if consumers did not believe that they endorsed the defendant's bars • In contrast, the court explained that in order to prevail on the Lanham Act claim, the plaintiffs had to prove that consumers "would be confused as to [plaintiff’s] association with or sponsorship of [defendant’s] bars."
Slide 13: Take-home message:  For federal Lanham Act claims, proof of consumer confusion regarding product endorsement IS necessary  For state claims, proof of consumer confusion is NOT necessary
Slide 14: Right of publicity - What is protected? • Name and likeness All states, whether they have statutory or common law schemes, protect the name and likeness of an individual  But what constitutes a person’s name and likeness? To meet the ingenuity of advertisers and others eager to benefit from the aura of celebrity, courts have expanded what is considered to be a name or likeness
Slide 15: What’s in a name? • Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831 – Recognized that a catchphrase was an identifiable attribute considered part of celebrity's right of publicity – The phrases “Here’s Johnny” and “World’s Foremost Commodian” used for portable toilets held to violate the right of publicity of Johnny Carson because the slogans were considered an integral part of Carson's identity – The court held “if the celebrity's identity is commercially exploited, there has been an invasion of the right whether his name or likeness is used.”
Slide 16: What is your name, anyway? • Abdul-Jabbar v. General Motors Corp., 85 F.3d 407 (9th Cir. 1996) – GM used Jabbar’s birth name, Lew Alcindor, in a car advertisement without his permission – When Jabbar brought an action for false endorsement, GM contended that he “abandoned” his rights to his birth name once he adopted his Islamic name – The court held that a name is an integral part of one’s identity, and it cannot be “abandoned,” despite a failure to use it
Slide 17: Whose likeness is this? • Allen v. National Video, Inc., 610 F.Supp. 612 (S.D.N.Y. 1985) – The use of a celebrity look-alike can violate a celebrity’s right of publicity – National Video created an ad campaign around a Woody Allen look-alike who was depicted as visiting its video stores – Despite the existence of a disclaimer in the ad, the court held that National Video violated the Lanham Act because there was a strong likelihood of consumer confusion regarding whether Allen actually endorsed National Video
Slide 18: There’s more to likeness than meets the eye • Ali v. Playgirl, 447 F.Supp. 723 (D.C.N.Y. 1978) – The former heavyweight boxing champ brought suit for injunctive relief and damages resulting from publication of magazine containing caricatured depiction of an African-American man seated in the corner of a boxing ring, sans boxing trunks – The court held for Ali, ruling that under New York law, the definition of “portrait” in a tort action for appropriation of likeness is not limited to actual photos – The court held that the nude photo was merely used to attract attention for the purpose of trade, so the defendant could not use the defense that it used the photo in connection with reporting the news or a newsworthy event
Slide 19: • Hoffman v. Capital Cities, Inc., 33 F.Supp.2d 867 (C.D.Cal. 1999) – Defendant digitally altered a photograph appearing originally on a poster for the movie ‘Tootsie’ to show Hoffman in a silk gown by Richard Tyler, with matching high heel shoes by Ralph Lauren – Hoffman sued under state common and statutory law and the Lanham Act – The court rejected the defendant’s First Amendment and newsworthiness defenses because they did not apply to knowingly false speech – The court held that Hoffman suffered actual damage to his property right by not being able to reap the commercial benefit of his own personality
Slide 20: Expanding the protection: Voice • Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) – Ford Motor, after unsuccessfully seeking the services of Bette Midler for a car commercial, hired one of her backup singers to imitate her voice singing “Do You Want to Dance” – The court did not go so far as to hold that every imitation of a voice in an ad is actionable, but held “when a distinctive voice of a professional singer is widely known and is deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs and have committed a tort in California.”
Slide 21: • Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992) – In a fact pattern similar to Midler, Frito Lay hired a Tom Waits sound-alike to sing in a Doritos commercial – Waits brought and won claims both for voice misappropriation under the common law right of publicity and false endorsement under the Lanham Act § 43(a)  The key to liability is a finding that the individual’s voice is distinctive and well-known
Slide 22: One last note on voice protection • Six states now include “voice” as part of the persona protected by right-of-publicity statutes: California, Indiana, Nevada, New York, Oklahoma, and Texas
Slide 23: Expanding protection even further • White v. Samsung Electronics America, Inc., 971 F.2d 1395 (9th Cir. 1992) – Samsung used a robot dressed in a blond wig, evening gown, and jewelry posed in front of a game board similar to that of “Wheel of Fortune” – White sued under state common and statutory right of publicity and the Lanham Act – The court found for White, holding that Samsung had no right to invoke White’s identity in the public’s minds without her permission – In a strongly worded dissent from the Circuit Court’s refusal to grant a rehearing, Judge Kozinski argued that the majority improperly expanded the right of publicity by making it a tort to even remind the public of a celebrity
Slide 24: When does the right of publicity end? • The Martin Luther King, Jr. Center for Social Change, Inc. v. American Heritage Products, Inc., 250 Ga. 135 (1982) – Plaintiff sought an injunction prohibiting defendant from selling small sculptures of Martin Luther King, Jr. without its permission – Defendant argued that King’s right of publicity ended at his death – The court held that the right of publicity survives the death of its owner, and is inheritable and devisable – Driving this decision was the court’s desire to prevent free riders from benefiting from a celebrity’s untimely death  Note: not all states agree that the right of publicity survives death
Slide 25: Defenses to right of publicity claims Newsworthiness • The right to publicity prohibits unauthorized commercial use of one’s name or likeness • This limitation allows the press and media to report and comment on the news or topics of public interest
Slide 26: • Zacchini v. Scripps-Howard Broadcasing Co., 433 U.S. 562 (1977) – Zacchini refused to give a news reporter permission to tape his human cannonball act – The reporter taped all 15 seconds of Zacchini’s act and it was broadcast on the evening news – Zacchini sued, claiming misappropriation of his professional property – The court held that the newsworthiness exception to the right of publicity did not apply because showing the entire act undermined Zacchini’s ability to make a living  Although entertainment and news both enjoy protection under First Amendment, the media need not broadcast an act in its entirety in order to convey the newsworthy nature of the event to the public
Slide 27: Defenses to right of publicity claims Parody • Cardtoons L. C. v. Major League Baseball Players Ass’n, 95 F.3d 959 (10th Cir. 1996)
Slide 28: • Cardtoons produced a series of parody baseball cards which mock players’ high salaries, alleged egotism and selfishness • The Players Association alleged the cards caused a likelihood of confusion under § 43(a) of the Lanham Act and violated the players’ rights of publicity • The court held that the cards were entitled to receive full protection under the First Amendment • While acknowledging that generally, celebrities deserve the right to control and profit from the commercial use of their persona, the court held such a property right cannot outweigh the right of society to parody, comment on, and criticize those same celebrities
Slide 29: Problems with the right of publicity • Variation among state laws may lead to forum shopping • Questions whether federal law (Lanham Act) preempts state law • Decision of what forum (state or federal) to bring action • Insufficient fair use defenses • Federal courts trying to interpret a state’s right of publicity laws (Erie) • Possibility of preemption by copyright law What’s a poor IP attorney to do?
Slide 30: VARA to the rescue... • Visual Artists’ Rights Act of 1990 (Copyright Act § 106A) – Provides rights only in works of visual art – Limited in number to 200 copies that are signed and numbered by the artist – Limited to the lifetime of the artist (the personality theory of IP rights at play) – Rights are inalienable, but artist may waive his rights
Slide 31: Rights granted under VARA • Attribution – Grants the artist the right to be identified as the author – Prevents attribution to author works he did not create • Integrity – Rights against any intentional distortion or mutilation of an artist’s work  VARA gives the artist a “super-copyright”
Slide 32: VARA and the right of publicity • While not as extensive as the rights granted in Europe under the Berne Convention 6bis, VARA provides artists in the United States a limited form of “moral rights”  But the VARA rights are limited both in scope of protection and who is protected Is there anything else that can help?
Slide 33: Federal Right of Publicity Proposal • On March 3, 1998, the Right of Publicity Subcommittee of the Issues and Policy Committee requested that the Board of Directors of the International Trademark Association ("INTA") adopt a resolution calling for the creation of a federally preemptive right of publicity • The subcommittee proposed that the federal right of publicity be codified as an amendment to the Lanham Act
Slide 34: • The proposed federal right of publicity legislation would: – Preempt all state law, both statutory and common law – Harmonize the divergent laws of various states – Make the right descendible and transferable for a fixed term after death without regard to whether their right was exploited during a person's lifetime (recall MLK v. American Heritage) – Provide a "grandfather clause" for owners of names and marks consisting of an aspect of persona lawfully acquired before the enactment of federal legislation – Provide fair use exemptions for uses such as news, biography, history, fiction, commentary and parody
Slide 35: • If enacted, the federal right of publicity legislation would supplant the existing state common and statutory law dealing with the right of publicity • The goal is to eliminate the patchwork of different and inconsistent state provisions which create uncertainty for trademark owners and national advertisers • The subcommittee believes that a single national right-ofpublicity law would make negotiating licenses and pursuing infringers more predictable for rightholders Will it work? Wait and see...