In ruling for the plaintiffs in Davis v. Electronic Arts earlier this week, the Ninth Circuit has given us the latest interpretation of the Transformative Use test. This ruling comes only a few months following a contrasting ruling in Noriega v. Activision, in which the Transformative Use defense led to a ruling in favor of the defendant.
The Activision case centered on inclusion of former Panamanian dictator Manuel Noriega in Call of Duty: Black Ops II. Former New York Mayor Rudy Giuliani served as co-counsel for Activision, and the following Hollywood Reporter article provides good insight as well as a link to the defense’s memo in support of its motion to strike Noriega’s complaint.
It is interesting to consider if the day might ever come when Rudy Giuliani might want to assert his own Right of Publicity in response to a commercial use of some kind.
In its Davis v. Electronic Arts ruling, the court looked to its prior ruling in Keller v. Electronic Arts, where the court also rejected the Transformative Use defense advanced by EA. The court in Davis v. Electronic Arts stated that the Madden video game “replicates players’ physical characteristics and allows users to manipulate them in the performance of the same activity for which they are known in real life – playing football for an NFL team.”
There are certainly considerable differences between the extent of use, purpose of use, and commercial aspects between the use of former NFL players in the Madden game and that of Noriega in Black Ops II, so in general, I applaud the Ninth Circuit’s rejection of the Transformative Use defense in its determination, and in not taking the usual “throw the baby out with the bath water” that too-often seems to accompany rulings concerning the Right of Publicity, as in the overreaching ruling in Indiana against the heir of John Dillinger in a case against EA.
That ruling led to my effort to amend Indiana’s Right of Publicity statute in 2011 and 2012, which was passed and successfully maintained the integrity of Indiana’s Right of Publicity statute:
Here is a link to the January 6, 2015 ruling in Davis v. Electronic Arts:
Earlier this week, the Seventh Circuit Court of Appeals in Illinois ruled in favor of Michael Jordan, holding that a grocery store’s “congratulatory ad” is not protected speech. The Jewel Food Stores advertisement in question ran in Sports Illustrated in 2009, congratulating Michael Jordan on his induction to the Pro Basketball Hall of Fame.
While the court’s ruling gets it right, the tone of ESPN’s coverage in the link below indicates that this ruling might not be fully understood. The coverage in the article is thorough enough to allow the reader to reach his or her own conclusions, I think. And for the avoidance of doubt, here is a link to the decision itself: http://media.ca7.uscourts.gov/cgi-bin/rssExec.pl?Submit=Display&Path=Y2014/D02-19/C:12-1992:J:Sykes:aut:T:fnOp:N:1292976:S:0
When the lower court ruled against Jordan, I believed the wrong decision had been reached and I was confident Jordan’s appeal would prevail.
In general, advertising falls in the realm of commercial speech. And there is quite an incentive for businesses to cozy up to a celebrity like Michael Jordan via advertising of this kind. The starting fee for an authorized association with Michael Jordan, as reported in the link below and in the above ruling, is $5 million.
I might feel differently if the grocery store had insisted on remaining completely anonymous: no use of the grocery store’s name, logo, motto, website, address or any other designations. If that was the nature of the advertisement, I might give more credence to the “congratulatory” argument. But those kinds of advertisements don’t come around very often.
Two more rulings involving video games came down last week, both from the Ninth Circuit Court of Appeals.
The July 31, 2013 ruling in Jim Brown v. Electronic Arts http://www.edwardswildman.com/files/upload/BrownvEA.PDF determined that Jim Brown’s inclusion in the Madden NFL video game was not an infringement of the Lanham Act §43(a). The court used the now famously misapplied Rogers test to determine that video games rise to the same level as literary works and thus are entitled to equal First Amendment protection. Once committed to the wrong test, the Court held that under the Rogers test Jim Brown’s likeness was artistically relevant to the game, also noting that there were no facts showing that his inclusion misled consumers about his involvement with the game.
The July 31, 2013 Brown ruling is only in relation to the Lanham Act claim. The true nature of Jim Brown’s lawsuit is primarily of a Right of Publicity nature (though the Rogers test would have been the wrong test to apply even if the ruling had been on a Right of Publicity claim). The Court says in a footnote: “We emphasize that this appeal relates only to Brown’s Lanham Act claim. Were the state causes of action before us, our analysis may be different and a different outcome may obtain.”
This point is reinforced by a ruling in another case on the same day, by the same judge, on similar facts but different claims. Specifically, consider the July 31, 2013 ruling by in Sam Keller v. EA and NCAA, No. 10-15387, http://www.edwardswildman.com/files/upload/KellervEA.PDF Here, the Right of Publicity was the claim being considered and the Court distinguished the claims from those in the Jim Brown case. The Court applied the transformative use test, providing a better fit in most Right of Publicity situations than the Rogers test, which was created for application to titles. The ruling was in favor of Plaintiff Sam Keller of course because the objective was to recreate Keller as accurately as possible–the antithesis of a transformative use.
Perhaps we have not seen the last of Jim Brown’s claim.
With Donald Trump recently announcing that he would not run for President in 2012, I thought about a popular topic concerning the right of publicity of public figures and politicians. This topic (as well as this website) was recently discussed on a t-shit- website forum (http://www.t-shit-forums.com/general-t-shit--selling-discussion/t153365.html#post913652) so I thought I’d elaborate somewhat on this topic.
Donald Trump is no stranger to the intellectual property rights surrounding his name, image, ertsona and identity. He has registered trademarks on various aspects of his identity, and enjoys a vibrant licensing program ranging from Trump’s Signature Collection of clothing (suits, ties, cuff links, eyewear http://www.trump.com/Merchandise/Signature_Collection.asp) to Trump steaks (http://www.trumpsteaks.com/). If Trump were to run for President (which I suppose he already has, to some degree), would he be forfeiting his right of publicity, and therefore his ability to prevent unauthorized, unlicensed products entering the marketplace?
In short, no. But it does get a bit more complicated for public officials to pursue unauthorized merchandise and advertising campaigns, even if they would have a legal right to do so. Through my work on behalf of many public figures, ranging from Princess Diana and Rosa Parks to Jackie Robinson and General Patton, as well as a couple of former U.S. Presidents, I know that a certain amount of such activity has been tolerated. President Obama seems to have responded to such activity more than any other President, erthaps also because he (or his family) has been used more than any other recent President. Here is a news item concerning a casino billboard campaign with a President Obama lookalike: http://southerngaming.com/?p=2562
Perhaps it is worth distinguishing between a ertson’s right of privacy and the right of publicity. We are all generally familiar with the idea that when a ertson runs for public office, he or she gives up a certain degree of an expectation of privacy. A corollary to this is the New York Times v. Sullivan “actual malice” standard for defamation of public figures. This case instructs that because the famous ertson sought out elected office and has better access and means to the press in order to combat any inaccurate or potentially defamatory information, the standard for committing defamation is necessarily higher than that for private citizens. Here’s a Wikipedia link to the New York Times v. Sullivan case: http://en.wikipedia.org/wiki/New_York_Times_Co._v._Sullivan
This “actual malice” standard for elected officials is part of the mechanism for ensuring broad First Amendment privileges, and encouraging differing views, discourse and criticism of our public officials. None of this means that those elected officials have simultaneously consented to becoming product lines or being featured in advertising campaigns for all manner of goods and services. It may be that such products or advertising campaigns have an element of parody, which conceivably could serve as a defense to a right of publicity claim. But most such products or advertising campaigns are simply an effort to sell more products or to promote a company’s goods or services. This, then, is likely nothing more than commercial speech. If the message is simply “buy our stuff” or “shop at our store,” and the inclusion of the public figure is nothing more than a scheme to attract attention, then the right of publicity can and generally will provide recourse for that public official.
In many instances, pursuing a company who engages in what might constitute a right of publicity infringement may become more of a public relations issue than a legal issue. Going after the company may give that company substantially more media attention, and may be portrayed in the press as that public figure trying to chase down infringers in order to make money. It’s a bit of a dilemma for those who find themselves in such a position.
I didn’t realize how much attention this topic has been given on this website until I looked back at prior entries:
First Lady Michelle Obama and PETA ads: http://rightofpublicity.com/peta-launches-new-ad-featuring-michelle-obama-without-first-ladys-ertmission
President Barack Obama bobbleheads: Intentionally unflattering? http://rightofpublicity.com/bobbleheads-intentionally-unflattering-or-a-symptom-of-the-product-category
The First Daughters: Sasha and Malia Ty beanie baby dolls: http://rightofpublicity.com/sasha-and-malia-dolls-now-its-not-just-the-president-being-infringed
President Obama merchandise continues: http://rightofpublicity.com/president-obama-merchandise-continues
President Obama infringements? http://rightofpublicity.com/president-obama-infringements