I was in a Halloween store recently, one of those pop-up shops that temporarily occupy otherwise abandoned retail space for a season, like fireworks stores around the Fourth of July. I was thinking about how costumes relate to my line of work, and how costumes of famous people are a prime manifestation of the Right of Publicity. It’s a commercial product, obviously, but furthermore the product is entirely premised on making someone look as much as possible like the celebrity in question. The objective of the product is to depict (and sell) the famous person’s image or likeness.
This dynamic, no doubt, is why there is quite a lot of licensing activity in the area of costumes, from superheroes like Batman and Spiderman, to movie franchises like Star Wars and Transformers, to Animal House, Avatar, Curious George, Friday the 13th, Chuggington, WWE, Lady Gaga, Justin Bieber, and on and on. Simply put, they sell. When the product is licensed, no problem and all is well.
But from my experience over the years, costumes based on famous people are not always licensed. As I’m perusing the Halloween store’s products, almost immediately I happen upon two men’s costume wigs, side-by-side, one entitled “Family Jewels” and the other designated “The Billionaire.” Here is the picture I saw on the “Family Jewels” product packaging and on the website of the company producing the product:
And here is the image I saw on “The Billionaire” product packaging and on a secondary retailer’s website:
This observation prompted me to check out the website of the company that produces these products. It is a leading costume retailer, authorized to produce and sell an impressive line licensed costumes, underscored by the fact that one of the main navigation tabs on the website is designated simply as “Licensed.” Their homepage loads with animated flash imagery of the KISS logo, images of the band, and the costume product line.
To find the “Family Jewels” wig though, I had to really search. It is there, in the mix of hundreds (if not thousands) of products, but not under “Licensed” and apparently not through any of the search key words one would expect (based on the various searches I attempted). On the product packaging itself, as well as the webpage entry for the “Family Jewels” product, I noticed that there is no use of Gene Simmons’ name, and the model wearing the wig does not resemble Gene Simmons (absent the effect of the wig itself which, after all, is meant to make a person look like Gene Simmons). When I scanned the product packaging in the retail store, I also saw no credit lines regarding the reality show, KISS, or Mr. Simmons.
This made me wonder: what would Gene Simmons do or say in response to a company that he had licensed which is simultaneously pushing a “Family Jewels” wig that, by every indication, is not licensed? (For purposes of this writing, I am assuming that the wigs are not licensed. To any of the parties directly involved in or affected by any of the products specified in this entry: correct me if I’m wrong and I will gladly set the record straight.)
Some will say, “Well, no reasonable person will think that this really IS Gene Simmons or Donald Trump pictured on the packaging.” This analysis confuses trademark standards with Right of Publicity analysis. The words “Family Jewels” by themselves are likely enforceable as a trademark, as the title of Simmons’ reality show, but I won’t get into trademark considerations here. For Right of Publicity purposes, there doesn’t have to be direct use of the person’s actual name or image. It’s really just a question of whether the person is identifiable.
I assume there is a written agreement governing the manner and terms by which the licensed KISS costumes can be produced by the licensee. In agreements I negotiate and draft for use of my Luminary Group clients, I typically protect against the scenario presented here (unlikely as it generally would be with a company that is securing a license from the personality in the first place). Through a well-drafted license agreement, a licensee would likely find themselves in quite a predicament by offering licensed goods on one hand, and on the other hand offering products that infringe the Licensor’s rights.
So let’s have some fun with this. In searching for the Gene Simmons and Donald Trump wigs, I found quite a few other examples. Who might “The Idol Judge” wig be identifying?
How about “The Promoter” wig?
Or the “Rocket Man” wig?
I’m guessing you got a 100% on that pop quiz (depending perhaps on your age or familiarity with certain public figures). One does not have to believe that this actually is Gene Simmons, Donald Trump, Simon Cowell, Don King or Elton John for a violation of the Right of Publicity to take place. For each person you correctly identified, you probably also identified a potential Right of Publicity claim.
Let me offer a few more observations which might help illuminate how one goes about assessing a potential Right of Publicity violation:
· The product names make quite an effort to avoid use of the actual person’s name, while still craftily seizing upon a designation that confirms the intended person. Family Jewels? Check. The Idol Judge? Got it. Rocket Man? The title to one of Elton John’s iconic songs—10-4. I’d be inclined to say that rather than protecting the company behind these products from liability, these cagey but ultimately unambiguous names indicate a conscious effort to sidestep liability (and avoid licensing fees), potentially proving that the infringement is taking place on a knowing and intentional basis.
· The KISS storefront on this company’s website does not include the “Family Jewels” wig in the product lineup. The KISS collection, all things being equal, would be the most intuitive place to put the “Family Jewels” product. Grouping of products on a website, search words, tags and identifiers don’t happen by accident. Usually, inclusion is the guiding principle in grouping products and assigning key words and tags, so that a potential customer who wants to look like Gene Simmons will have no trouble finding the “Family Jewels” option. Of course, exclusion of these identifiers and tag words in all likelihood would be intentional as well. It doesn’t happen accidentally that certain products are emphasized, searchable and readily found, whereas others are buried.
I can’t help but notice that finding these products online was quite challenging, but in the retail environment where the idea for this entry was first inspired, it was not difficult at all. The “Family Jewels” and “The Billionaire” wigs were prominently displayed on prime retail shelf space. Of course, that retail store will be gone in just a few days, and a brick and mortar retail store is much harder for a licensor, brand owner, famous personality, or representative to monitor than a readily accessible, searchable, and archived website.
Maybe this is one reason why my clients tend to consider me good at what I do. I pay attention. In any event, I look forward to class discussion in my upcoming Right of Publicity law school class on the issues presented in this entry. I hope it has been educational and informative!
Like death and taxes, with an emphasis on the former, one other certainty at this time of year is the annual Forbes “Top-Earning Dead Celebrities” list. As is my practice, I won’t recount the whole list here ( http://www.forbes.com/pictures/mfl45hggm/no-1-michael-jackson#content ); instead, I’ll offer just a few observations inspired by this year’s list.
Michael Jackson is in the top spot again. No surprise there. The reported amount, however, is almost half the amount reported on last year’s list (here’s a link to my write-up on last year’s list: http://rightofpublicity.com/every-halloween-brings-another-forbes-top-earning-dead-celebrities-list-and-usually-a-few-surprises ) Jackson’s earnings are claimed to be in the $170 million range over the last year, compared to $275 million last year.
No one familiar with the list will be surprised that Elvis Presley once again took the number two slot. Most of the entries are held by the perennials with only a modest rearranging of the slots each occupies. In addition to Michael Jackson and Elvis, Charles Schultz, Rodgers and Hammerstein, Stieg Larsson, Theodor Geisel (Dr. Seuss), Jimi Hendrix, John Lennon, George Harrison, Steve McQueen and Albert Einstein all are back for encore performances.
But a few familiar names have fallen away compared to last year’s list. J.R.R. Tolkien ( last year’s number 3), George Steinbrenner (last year’s number 9) and Aaron Spelling (last year’s number 13) did not make the list this year. And, of course, there are a few new entries, assisted by the recent death of the person in question.
Elizabeth Taylor, who died in March, enters the list in her first year of eligibility, taking the fifth spot at $12 million, tying with John Lennon. Her reported earnings are bolstered primarily by her long-running White Diamonds perfume.
Reentering the list after a notable absence is Marilyn Monroe. The entity that bought the rights to Marilyn Monroe, Authentic Brands, reports her earnings at $27 million. Here’s a link to my write up on the acquisition of Marilyn Monroe’s rights: http://rightofpublicity.com/marilyn-monroes-intellectual-property-rights-sold
The Forbes article accompanying this year’s list does a nice job illuminating the point that those deceased personalities with a music catalog as part of the intellectual property assets tend to have an advantage over those who don’t (http://www.forbes.com/sites/dorothypomerantz/2011/10/25/the-top-earning-dead-celebrities/ ). Both Michael Jackson and Elvis Presley received the Cirque Du Soleil treatment, with their touring shows Michael Jackson: The Immortal World Tour, and Viva Elvis both in rotation over the last year.
A body of written or creative work, like J.R.R. Tolkien, Stieg Larsson or Theodor Geisel’s heirs possess, also serves as a substantial source of revenue for many on the annual list. What is perhaps even more impressive is those personalities making the list who do not have these extra intellectual property elements or body of work from which to draw additional revenue. Such is the power, and value, of the Right of Publicity.
John Devenanzio, known as “Johnny Bananas” from MTV’s Real World Key West and other MTV reality shows, has filed a lawsuit in response to the Johnny Bananas character in HBO’s Entourage. The lawsuit was filed in New York and names HBO, Time Warner, and the creator of Entourage as Defendants. In addition to monetary damages, the lawsuit seeks to stop distribution of Entourage episodes which include the Johnny Bananas character played by Kevin Dillon.
Devenanzio’s lawyer also represented Lindsay Lohan in Lohan’s lawsuit against E-Trade for its depiction of the milk-aholic baby referred to simply as “Lindsay.” That claim has reportedly settled. Here’s a link to my entry on that claim: http://rightofpublicity.com/lindsay-lohan-and-the-etrade-milkaholic-baby
The Hollywood Reporter write up on Devenanzio’s claim is well-written and thorough, though it does seem to reveal a certain disdain for Devenanzio’s claim. The claim is characterized as “remarkably vague,” and states that “it appears Devenanzio is not asserting any allegation of trademark infringement” but instead is claiming violation of “his publicity and privacy rights.” I’m not sure why that in itself is inherently vague.
I haven’t reviewed Devenanzio’s filings, or those of the Lindsay Lohan claim against E-Trade; however, alleging a trademark violation, or having Federally registered trademarks protecting a person’s namesake or some distinctive aspect of his or her identity, is not a prerequisite to filing a lawsuit when the claimant’s Right of Publicity has been commercially utilized. This point is a hallmark of Right of Publicity analysis. The Right of Publicity may share certain characteristics with trademark law, but they are not interchangeable. Each protects different interests, have their own elements and standards, and have distinct policy rationales.
The write up further states that success in the lawsuit “may depend on whether he can find anything in discovery that shows [Defendants] had Devenanzio in mind when they created the Johnny Bananas character.” This is not the standard Devenansio has to meet, though. For one thing, it may be impossible to find a “smoking gun” that demonstrates a clear link, or an intentional act, of naming the Entourage character after Devenanzio. If such evidence can be found, so much the better for Devenanzio’s claim and prospects for punitive damages.
But a successful Right of Publicity does not require proof of intent to infringe. What matters most is whether the claimant is identifiable from the portrayal. Identifiability will be measured by viewers of the show and their determination or impressions, not those of the show’s creators or producers.
It seems to me that Johnny Bananas is a fairly distinctive nickname. One does not have to be identifiable on the level of a Michael Jordan, or George Clooney, or President Obama, either. Instead, a viewer, or a potential jury as it were, can be presented information, context and imagery of Devenanzio’s Johnny Bananas and that of the Johnny Bananas in Entourage. This may take the form of “aided identification” (as opposed to “unaided identification”), but this does not invalidate a potential Right of Publicity claim. There might just be something to Devenanzio’s claim.
Here is a link to the Hollywood Reporter article: http://www.hollywoodreporter.com/thr-esq/mtv-star-sues-hbo-johnny-244446