The Ninth Circuit Court of Appeals in Maloney v. T3 Media, Inc., Case No. 15-55630 (9th Cir. April 5, 2017), recently issued the latest installment in the age-old supposed showdown between Copyright and the Right of Publicity and the issue of preemption. The Court states in the holding that preemption can occur “when a likeness has been captured in a copyrighted artistic visual work and the work itself is being distributed for personal use.”
To be clear, copyright does not automatically preempt the Right of Publicity. The two doctrines protect distinct interests and, have separate policy purposes. Preemption generally requires a very specific fact pattern. The assumption seems to be that if the Right of Publicity co-exists in tandem with a copyright interest, preemption must be applicable. That is not the case, and there are countless examples of uses, situations and fact patterns where various rights or interests apply simultaneously without one preempting the other. I read Maloney as a fairly confined, and specific ruling on a distinct fact pattern.
Here is a link to an article with more elaboration on the specifics of the case:
Looks like my predictions in the May 9, 2012 edition of the Indiana Lawyer were prescient. Specifically, in response to the debut of Tupac’s hologram, I went on record stating that this technology is likely to lead to both licensing and new business opportunities as well as litigation over unauthorized use of the technology by third parties with no relationship to the individual or entitlement to the underlying intellectual property rights. Here’s a link to that Indiana Lawyer article: http://www.theindianalawyer.com/-hologram–performance-by-tupac-creates-legal-questions-for-ip-lawyers/PARAMS/article/28758?page=1
Mr. Eriq Gardner of The Hollywood Reporter has posted an intriguing article on the exchanges between the lawyers for the Marilyn Monroe Estate and Authentic Brands, majority owner of the intellectual property rights to Marilyn Monroe, and Digicon Media, which claims to have “copyrighted” the virtual Marilyn. I put “copyrighted” in quotes because that is a big, and dubious, assertion to make. Digicon Media claims to have grand plans for the virtual Marilyn.
Here’s a link to the full article in The Hollywood Reporter, complete with actual copies of the correspondence between the parties:
This article and the various documents embedded within the article provide a fascinating glimpse into the inner workings of representing and protecting the rights of a deceased individual. This appears to be a transparent (pun intended) attempt to make a play for Marilyn Monroe in the virtual realm. The Right of Publicity, as well as the various trademarks pertaining to Marilyn Monroe, should have no trouble reaching into that realm and ensuring that the attempt to “copyright” the hologram Marilyn would somehow give Digicon Media ownership over any aspects of Marilyn Monroe.
Interesting case of the tattoo artist asserting a copyright claim for the appearance of his infamous Mike Tyson-face tattoo appearing in Hangover II. It raises a slew of interesting intellectual property questions that I’m not going to research or try to answer definitively here. But in short, I see a number of problems with the tattoo artist’s position.
I understand that no objection was made to the appearance of the tattoo in the first Hangover movie. Perhaps that is because only Mike Tyson appeared in the first Hangover movie, whereas in Hangover II, in addition to Mike Tyson appearing again, actor Ed Helms’ character gets a similar, or perhaps identical tattoo on his face.
Maybe the argument from a copyright claimant in these circumstances is that the inclusion of his tattoo constitutes an unauthorized display in violation of his exclusive section 106 rights under the Copyright code. Similarly, perhaps the tattoo on Ed Helms’ character constitutes an unauthorized derivative work, or an unauthorized copying.
If the activities complained of in Hangover II are copyright violations, then the appearance of the tattoo in the first Hangover movie must also have been a violation. The tattoo artist could hardly object to Mike Tyson appearing in a film, and by virtue of the tattoo appearing on Tyson’s face, well, the tattoo is going to appear as well. At this point, there could be a viable estoppel defense to the assertion of the claim now, years after the first Hangover movie.
The notion of intellectual property in tattoo designs raises some novel questions. It is certainly possible to construct a scenario where a copyright, or trademark interests, can be manifest in a tattoo. If a person gets a Harley-Davidson logo tattoo, it is of a trademarked logo. If a person gets the lyrics to a song as a tattoo, it certainly could be of a copyrighted work. But what of a relatively simple configuration of angular lines, like the Tyson tattoo? Is that even an original work of authorship? Maybe. But who owns the copyright in the tattoo design? Might it be considered a work made for hire, vesting the rights in the recipient of the tattoo on whose skin it appears?
Or, perhaps there is an implied license allowing the recipient of the tattoo to display the tattoo publicly. Certainly, when taking the conspicuous step of tattooing a person’s face, the tattoo artist cannot simultaneously expect to enforce the exclusive rights of a copyright owner concerning the right to display, reproduce or even perform the work. Can the tattoo artist/copyright owner then only selectively enforce his copyright? Doesn’t this lead to the scenario that anyone who takes Mike Tyson’s picture is committing copyright infringement by making an unauthorized copy of the work, or perhaps even a derivative work? Displaying the image, then, as in the news, leads to the same result.
Since the tattoo is part of Mike Tyson’s skin and face, then when Tyson is acting and his face is engaging in expressions, delivery of dialogue, and such, can it be argued that the tattoo is engaging in a “performance?” Remote, but then so is this whole topic. I also credit another legal commentator for pointing out that human organs generally are not subject to intellectual property ownership. The skin is an organ. While the tattoo and ink are not organs, once permanently embedded in the skin, they would seem to be part of that organ. I’ll let you take a shot at piecing an argument together based on that interesting line of thought.
To the extent that the tattoo artist could construct a copyright claim in response to at least certain activities, it seems clear to me that this particular form of intellectual property would also be subject to considerable fair use exceptions. Some of the above points exemplify why.
Just to further complicate things, I’ll mention that the tattoo is so closely and unequivocally associated with Mike Tyson that the tattoo might actually raise potential Right of Publicity considerations. Those issues don’t exist in the Hangover matter because Tyson obviously consented to appear in the film. But hypothetically, I can envision a scenario where that tattoo design on a person’s face, let’s say appearing in an advertisement of some kind, could constitute a violation of Mike Tyson’s Right of Publicity. In this regard, the claim might be even stronger than the copyright claim concerning Hangover II.
Here’s a link to more on the Hangover II tattoo copyright dispute: