In the Cocoa Pebbles ad, Fred Flintstone and Barney Rubble are in the ring against an opponent with long blond hair and a long blond mustache referred to as “Hulk Boulder.”  Hulk Hogan went by the name Hulk Boulder in the 1970s.  The commercial kept running after Hogan originally objected to it in August 2009.

In the advertisement, the Hulk Boulder character initially wins a match against Fred and Barney, and eats a bowl of Cocoa Pebbles, but then Pebbles and Bamm-Bamm toss Boulder into the air.  Boulder breaks into pieces upon landing, which Hogan characterized as humiliating in his complaint. 

Here is a link to the advertisement on YouTube:

http://www.youtube.com/watch?v=E7S7KFKmYP4

http://www.LuminaryGroup.com

The awards ceremony, which seeks to recognize dance perofrmances and choreography work in Broadway productions and film, has been held for the last twenty-eight years.  Based on the allegations in the complaint, Fred Astaire licensed use of his name in 1982 for the Astaire Awards, as they were known at the time.  Robyn Astaire continued the tradition by occasionally allowing use of Fred Astaire’s name for the event, but in 2006 stopped giving such authorization because she felt the nature of the event had changed.

Here is a link to the full story:

http://mediadecoder.blogs.nytimes.com/2010/05/31/stumble-for-an-awards-show/?ref=media

It is apparent that the unified, well-funded business interests seeking to taper back Right of Publicity recognition are gaining more traction in shaping the law than the handful of individual voices who will be affected by these laws.  It would be nice to see the players associations of the various professional sports leagues voice objection to these developments.  If these bills are passed with such one-sided provisions, it will detrimentally impact the past, present and future athletes that the players associations ostensibly exist to serve.

What exactly are those provisions?  Well, as you can see for yourself by visiting the links to the respective bills (included below), there is now an unqualified exemption for video games in Michigan’s bill.  Prior versions of the bill sought some kind of limitation, such as use in a video game that is incidental or fleeting.  No such limitations are included now, rendering the obviously commercial product of video games on the same level as books and newspapers. 

Not to be outdone, New York’s law has the same outright exemption for video games.  But it goes further, and also provides more unprecedented exemptions for greeting cards, games that use multiple personalities, calendars, and tee shirts. 

I question whether a judge can be expected to differentiate between a short sleeve shirt, baby tee, jersey length tee, embroidered tee, or designer shirts, for example, so it seems likely that tee shirts would encompass all of the above.  And since there can’t really be a legal distinction based on sleeve length or whether an article of clothing has a hood on it, it follows that it would also include sweatshirts, team jerseys, sweaters, jackets, and other garments.  While the bill provides that the exemption does not apply if the person’s name or image is on the label of the garment, that is rare in the universe of licensing personalities. Typically, the use hinges on the name and image of the personality appearing prominently on the front of the garment.

The categories of apparel, greeting cards, games, calendars and video games are some of the most important in the licensing industry.  No doubt those companies that create and sell products using famous people’s names and images would love the ability to commercialize those valuable assets without the burden of paying for those rights, or seeking approval in the event that the famous individual or his or her heirs would prefer not to be involved in the product at all.  It isn’t all about money, after all. 

My experience dictates that retired or deceased athletes will be especially susceptible to the impact of these exemptions.  Even if such parties still have Lanham Act claims available, pursuit of an infringement on trademark grounds is different from Right of Publicity grounds.  Those who argue that the Lanham Act claims alone should be sufficient are essentially telling the carpenter to use the side of a wrench to pound in a nail, while walking off with the carpenter’s hammer.  The Right of Publicity is clearly the right tool for this job. 

These one-sided provisions appear to be popping up in every state that is presently considering a Right of Publicity bill.  Yet, the last twelve to eighteen months have brought litigation by Jim Brown, various NCAA athletes, and not one but two class action suits by former NFL players against Madden Football concerning alleged abuses of these individuals’ Rights of Publicity.  Even in the absence of express exemptions for video games, it is apparent that those being included in video games without permission feel that significant abuses are already occurring.  One can not expect such instances to diminish in the wake of a law shielding video games altogether. 

If you are in position to voice opposition to these sweeping, unprecedented and one-sided exemptions, please send your written opposition to the appropriate parties backing these bills.  Similarly, if you have access to those who might be directly affected by these bills, please arrange for them to voice their opposition. 

If these bills were to become law, it would be worse than merely a Pyrrhic victory; it would be a loss in disguise as victory. 

Here is a link to the Michigan and New York Right of Publicity bills:

Michigan House Bill 5964, sponsored by Representative Byrnes: http://052.housedems.com/

Summary of the Bill: http://www.legislature.mi.gov/(S(5s10sv452ywfc345fgu2j045))/mileg.aspx?page=getObject&objectName=2010-HB-5964

Text of the Bill: http://www.legislature.mi.gov/documents/2009-2010/billintroduced/House/pdf/2010-HIB-5964.pdf

New York S06790, Senate Majority Leader, John Sampson: http://www.nysenate.gov/senator/john-l-sampson/contact

Summary of the Bill: http://assembly.state.ny.us/leg/?bn=S06790&sh=t

Text of the Bill: http://assembly.state.ny.us/leg/?default_fld=&bn=S06790%09%09&Text=Y

The lawsuit centers on the use by EA of Keller EA’s NCAA Football video game. In an effort to support its motion to dismiss, EA argued that its use of Keller’s likeness was not a violation because the use was transformative, and that the use was a matter in the public interest.

http://www.winston.com/index.cfm?contentid=34&itemid=3755#page=1

The key analysis in most right of publicity claims centers around identifiability.  The question then becomes, is Lindsay Lohan identifiable from the E*Trade use?  I often add “unequivocally identifiable” to clarify the analysis.  Lohan’s attorney has stated that Lohan is famous on a single-name basis, just like Oprah or Madonna.  Whether that can be established may be up to the judge or jury if the parties don’t settle the claim first.

Here is a link to the story:

http://www.msnbc.msn.com/id/35780790/ns/business-media_biz/

http://www.nytimes.com/2010/02/09/sports/ncaabasketball/09ncaa.html 

A new bill, HB 1335, is in front of the Indiana legislature which seeks to bring clarification to certain aspects of Indiana’s right of publicity provisions.  Specifically, the bill would clarify application of domicile analysis as well as common law right of publicity under Indiana law.  The bill is up for a vote by the House in the first week of February, then it will goes to the Senate in the second week of February.  Here is a summary of the bill:   

HB 1335 Provides that, for purposes of the law concerning rights of publicity: (1) to codify the common law in existence before July 1, 1993, the law applies to a cause of action commenced after June 30, 1993, regardless of when the cause of action arose; (2) if a personality died testate before July 1, 1993, the rights recognized under the law are deemed to be in the possession of the current holder of the interests of the beneficiary of the residuary clause of the testamentary instrument as if the rights had been distributed according to the testamentary instrument and transferred according to the rights of publicity and, if a personality died intestate before July 1, 1993, the rights recognized under the law are deemed to be in the possession of the current holder of the interests as if the estate had been distributed according to the law where the estate was probated and transferred according to the rights of publicity; and (3) if a testamentary instrument does not contain an express transfer of the deceased personality’s rights of publicity, a provision in the testamentary instrument that provides for the disposition of the residue of the deceased personality’s assets is effective to transfer the rights recognized under the law in accordance with the terms of the provision. Makes other changes concerning the transferability and descendibility of rights of publicity

I have read the substance of HB 1335 and I’m inclined to give my support to its provisions as currently drafted.  The entire bill can be viewed at this link:  http://www.in.gov/apps/lsa/session/billwatch/billinfo?year=2010&request=getBill&docno=1335 

Like many high-value personalities, O’Neal has a company in place for handling the management of his intellectual property rights, including his trademark and Right of Publicity.  Mine O’Mine, Inc., O’Neal’s company, is therefore named as the plaintiff in the lawsuit, which was filed against defendant True Fan Logo as well as the individuals who own True Fan Logo. 

The activity giving rise to the lawsuit relates to defendant’s online store named “Shaqtus Orange Clothing Co.” as well as some interesting exchanges between the parties.

When O’Neal played for the Phoenix Suns, he was known as “The Big Cactus” and “The Big Shaqtus.”  O’Neal now plays for the Cleveland Cavaliers.

The lawsuit states that the defendant’s web site displays an animated cactus character with O’Neal’s likeness, wearing an orange “Phoenix Shaqtus” jersey and the number 32, which was O’Neal’s number when he played for the Suns.

The law suit also includes allegations of some interesting exchanges between defendant’s company and ESPN, including defendant’s issuance of a cease and desist letter to ESPN claiming that defendant owned the rights to the Shaq cactus image, but offering to resolve the matter if ESPN would do business with defendant.  Reportedly, ESPN responded that it had permission from Shaquille O’Neal’s company for the ESPN cactus portrayal, and that in fact it was defendant’s who were infringing upon O’Neal’s intellectual property rights.

The law suit also details an exchange between the parties in which defendant’s claim that Shaquille O’Neal consented to defendant’s use of the Shaqtus name when O’Neal posed for a picture with defendant and signed a t-shirt for the defendant.

The lawsuit includes claims ranging from trademark infringement, dilution and unfair competition to  cybersquatting for defendant’s use of domain names that employ O’Neal’s intellectual property rights.

Without commenting on the various issues involved in this claim, I will simply note that perhaps the circumstances giving rise to this lawsuit, if taken at face value, may explain why athletes are sometimes reluctant to sign autographs for “fans” who then try to exploit that autograph, photograph or brief interaction for commercial gain.

http://www.swamppolitics.com/news/politics/blog/2010/01/michelle_obama_peta_ad_fur_fli.html