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:
If the report on this link is accurate, that a Florida hair clinic used Brian Urlacher without permission to promote their services, this sounds like a clean-cut case of Right of Publicity infringement. Urlacher reportedly had an endorsement deal with a Florida clinic whose services Urlacher did in fact use, which will likely enhance his position in the damages portion of the lawsuit. Here’s a link with a bit more information: Brian Urlacher sues Florida hair clinic
Pierre Garcon, wide receiver for the Washington Redskins, has filed a class action lawsuit against the daily fantasy company, FanDuel. Whether the overall media correctly identifies it or not, this lawsuit is primarily a Right of Publicity claim.
Past lawsuits against fantasy sports providers generally have not been successful. Simply stated, prior cases have held that that publishing game statistics are not a commercial use, much in the same way that a newspaper reports on box scores without incurring liability. This tends to make sense as long as no one player is being singled out, and the use is confined to the statistical performances with every competing athlete being used (or capable of being used) in exactly the same manner. There is, of course, a difference between news reporting on game statistics the day after a game and operating a for-profit site that earns its profit from the players’ performances.
But the real fulcrum point may exist in the advertising and promotion for FanDuel. If a very small collection of players are appearing by name or otherwise in advertisements for a company, and if additional elements like dollar values of a given player or other elements specific to the daily fantasy operation are being added by that company, it quickly could take a different complexion.
Unlike DraftKings, which has authorization from the NFL Players Association, FanDuel apparently does not.
Here’s a Right of Publicity fact pattern to kick around: can a company make Pope Francis dolls without a license from the Pope?
I don’t know if the recently announced Pope Francis dolls from Bleacher Creatures are licensed or not, so I want to be clear on that point and allow for the possibility that they are. Bleacher Creatures primarily makes 10″ dolls of famous athletes, and they wouldn’t be doing that without permission.
In the link below, I find it interesting that the company is said to be “crossing their T’s and dotting their I’s” but the extent of that due diligence appears to be simply that they “reached out to the Vatican” and “would love to officially partner with them.” Taken at face value, that strongly indicates that they do not have any form of permission to make the dolls.
Of course, “reaching out” coupled with a statement of desire to “officially partner” is not all that is needed to proceed with commercial products of a famous person. Perhaps the play here is that the Pope isn’t likely to file a claim over it, but last time I checked, “likelihood of getting away with it” was not the legal standard for Right of Publicity infringement.
The Massachusetts Senate has passed a bill urged by Bill Cosby to statutorily recognize a post-mortem Right of Publicity in Massachusetts. The bill heads next to the Massachusetts House of Representatives. I’m including a link (below) to NPR’s coverage of this very positive legislative development.
As is often the case when the media covers the Right of Publicity, the coverage does not give the most balanced picture of the functioning of these rights and the policy purposes behind them. That’s probably the fault of no one or nothing other than time limitations and the need to get in and out of a complex topic in short segments. But, for example, it’s really not that difficult to determine who owns the Right of Publicity of a personality after a person dies, as the host declares. The coverage also does not point out all the limitations and allowances for First Amendment purposes that accompany most Right of Publicity statutes. And lastly, I strongly caution against acting on host Anthony Brooks’ conclusion that “if a business wants to trade on the image of Marilyn Monroe, they can.” (Just after the 2:00 mark in the NRP clip.)
Professor Ray Madoff of Boston College Law School does a good job discussing some of the high points of the Right of Publicity. To the credit of the producer of this segment on NPR/Radio Boston, I (the administrator of http://www.RightofPublicity.com) was consulted to verify certain information about Right of Publicity statutes throughout the country (the part in the interview when the host Sacha Pfeiffer says “we looked this up”).
Here’s a link to the radio segment: http://radioboston.wbur.org/2014/06/13/dead-right-publicity
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.
An article in the January/February 2014 issue of The Atlantic entitled Jesse Willms, the Dark Lord of the Internet examines how one person has made a fortune from promoting products with deceptive or even fraudulent online advertisements. The article reports that the ads have included use of either the names or images of famous people.
The article talks about Oprah Winfrey and others who have filed lawsuits based on the fraudulent aspects of the ads, but I wonder if those lawsuits included Right of Publicity claims as well? Without examining the mechanics (jurisdiction, among other things), perhaps a meaningful damages award for a Right of Publicity infringement would serve as a bit of a deterrent?
Here’s a link to the online version of the article in The Atlantic: http://www.theatlantic.com/magazine/archive/2014/01/the-dark-lord-of-the-internet/355726/
File this in the “sad but true” category: even blatant intellectual property infringements can create a successful PR stunt. Apparently, the handful of people behind the virtual currency company calling itself “Coinye West” have refused to back down, though they apparently did drop “West” from the name.
As I teach in my Right of Publicity classes, context matters. Dropping West from the name at this stage does nothing to reduce liability, and really only confirms that the infringer knew the activity was an infringement in the first place. There also is that small detail of a rendering of Kanye West appearing on the “coin” itself.
I don’t normally take sides in these matters, and Kanye is himself no stranger to either controversy or PR manipulation; nevertheless, this kind of blatant infringement is the sort of thing that the Right of Publicity exists to address. Perhaps after a legal ruling comes down, the cost of the infringement will be massively more than the PR (or venture capital funding behind the company?) was worth.
We’ll see what happens next. Here’s a link to the letter sent by Kanye West’s attorneys:
Thanks to a stipulated settlement read into the record on February 3, 2012 in a lawsuit brought by the Marlon Brando Estate against Ashley Furniture, we have a rare example of a publicly-disclosed settlement amount. Brando’s Estate is settling its claims against Ashley Furniture for $356,000, including an allocation for attorney’s fees. The dispute was over a furniture line designated as “Brando.”
There is a similar lawsuit still in process involving Humphrey Bogart and a “Bogart” couch offered by Ashley Furniture. In that case, Ashley Furniture reportedly argued that it “was not diluting a generic name” and sought a declaration that the Right of Publicity can’t be applied to the name of a couch.
I would agree with Ashley Furniture that they aren’t diluting a generic name, because neither Brando nor Bogart can be said to be generic names. Even without use of their first names, each name is clearly identifiable as Marlon Brando and Humphrey Bogart. When taken in context, with a Brando product next to a Bogart product, there really can be no reasonable argument that those names aren’t identifying Marlon Brando and Humphrey Bogart.
The idea that the Right of Publicity should somehow not apply to the name of a couch would be laughable if it wasn’t the kind of argument that seems to be increasingly employed by those caught infringing.
Here is a link to Eriq Gardner’s write-up in The Hollywood Reporter: http://www.hollywoodreporter.com/thr-esq/marlon-brando-ashley-furniture-lawsuit-couch-humphry-bogart-287389
The biggest Right of Publicity story of 2012 so far has to be the news that a company called In Icons is preparing to issue a Steve Jobs action figure. In response, Apple reportedly sent a cease and desist letter to In Icons, prompting Tandy Cheung of In Icons to state “Apple can do anything they like…I will not stop, we already started production.”
I hate to break it to them, but if an activity is prohibited by law, the fact that the offending company is already in production would provide no defense or entitlement to proceed. This Steve Jobs action figure is exactly the kind of unauthorized commercial product that the Right of Publicity is designed to address, if not prevent.
Cheung reportedly stated “Steve Jobs is not an actor, he’s just a celebrity,” and that “[t]here is no copyright protection for a normal person.” Aside from the various legal errors in that comment, I can’t help thinking that this line of thought is exactly what gets companies sued for Right of Publicity violations.
Here is a link to the MSNBC article containing Cheung’s quotes and reporting many more details on this story: http://technolog.msnbc.msn.com/_news/2012/01/05/9972437-apple-tries-to-ban-realistic-steve-jobs-action-figure
The MSNBC article states that Apple claims to own the post-mortem rights to Steve Jobs’ name, image and likeness, as manifest by the In Icons action figure. I do not know whether or not Apple has affirmatively made that assertion or if that is an assumption being drawn from the fact that Apple issued the cease and desist letter. All things being equal, I would have assumed that Steve Jobs’ family would be the beneficiary of Steve Jobs’ Right of Publicity. Perhaps Apple does in fact have an ownership interest in Steve Jobs’ Right of Publicity. The Right of Publicity is assignable during life or at death through testamentary documents or intestate succession. The Right of Publicity is also divisible in whole or in part, meaning that several owners could own varying percentages of his Right of Publicity. Alternatively, perhaps Apple is simply handling administrative duties such as protecting against unauthorized use of Steve Jobs’ Right of Publicity. Presumably, Apple’s legal advisors and Steve Jobs’ family and heirs have already addressed this crucial point.
In researching this story, I also came across another write-up about the Steve Jobs action figure on Paidcontent.org entitled “Steve Jobs Doll Legal In Most States, Not Indiana” which can be accessed here: http://paidcontent.org/article/419-steve-jobs-doll-legal-in-most-states-not-indiana/
This article seems to conclude that the Steve Jobs action figure is only actionable in those states with a statutory Right of Publicity in place. The article ends by listing those states with a statutory Right of Publicity but does not include California, which is a fairly important jurisdiction for Right of Publicity matters. California, in 2008, passed legislation confirming that the Right of Publicity does apply to those persons who died prior to passage of the statute. Here’s a link to the amended language: http://rightofpublicity.com/statutes/california-2008-amendment-to-33441
This amendment, signed into law by Governor Schwarzenegger, was in response to a California ruling that concluded that Marilyn Monroe was not entitled to statutory Right of Publicity protection under California law, because of the perceived location of, and law of, her domicile at the time that she died in 1956. California’s 2008 bill was in fact just a clarification that the law indeed always was supposed to apply to those who predeceased passage of the statute.
Right of Publicity litigation usually involves application of the Single Publication Rule, which in general terms allows a claimant to address the totality of the infringement through one cause of action. In the absence of such procedural efficiency, a claimant might be forced to go state by state, litigating the same basic nucleus of facts, against the same parties, over only those activities that took place in that particular state. If courts are overburdened now, which they generally are, just imagine the inefficiency and backlog that such an approach would generate.
Thankfully, this is not how Right of Publicity litigation is typically conducted.
As for Steve Jobs and whomever is the appropriate party to assert a claim for violation of his Right of Publicity, I am confident that the law would back them up if they have to litigate in response to a Steve Jobs action figure. If not, one would have to wonder why the Right of Publicity exists in the first place.
Muhammad Ali has filed a lawsuit against Kobo, Inc. for use of his famous slogan “float like a butterfly, sting like a bee” in a recent Kobo ad campaign.
Kobo is based in Toronto Canada, and the advertisement ran in the New York Times promoting Kobo’s electronic reading device. The advertisement apparently did not use Ali’s image or any other elements of his persona. The famous slogan, however, is a registered trademark. The suit was filed in New York.
Missing from the reporting on this topic (and I have not yet seen the complaint itself) is the fact that use of this slogan also implicates Ali’s Right of Publicity. To the extent that Ali is singularly and unequivocally identifiable by this phrase, a registered trademark likely would not be needed to support a claim based on Ali’s Right of Publicity. Doesn’t hurt to have the registered trademark as well, though. The slogan has been licensed to third parties, as is reportedly alleged in the complaint.
Here’s a link to the story: http://www.businessweek.com/news/2011-07-14/muhammad-ali-company-sues-to-stop-kobo-use-of-butterfly-slogan.html