US Supreme Court to consider Andy Warhol’s Prince Series in relation to copyright fair use and transformative test
You can find information concerning the dispute between the Andy Warhol Foundation (AWF) and photographer Lynn Goldsmith elsewhere, such as the factual underpinnings, lower court rulings on the case to date, and the arguments on either side easily enough in other place. Given the recent acceptance of a writ of certiorari by the United States Supreme Court (SCOTUS), I will simply note a few details that could be interesting to watch from a Right of Publicity perspective.
First, it is interesting to consider that in Comedy III, the court specifically cited Warhol’s Marilyn as the example of a transformative work, in crafting and applying its transformative use test to the Right of Publicity. Often lost in discussion of the case and reference thereto, the rightsowners of the Three Stooges (Comedy III) won the case on Right of Publicity grounds in relation to the commercial activities that had occurred in relation to a charcoal sketch of the Three Stooges by the defendant. The original work of art itself was not really the issue, but rather, the activities connected to that work were found to constitute a Right of Publicity violation. The Judge carefully articulated a test for deciding such situations, thus advancing the transformative use test for Right of Publicity purposes.
In the Warhol dispute concerning Lynn Goldsmith’s Prince photograph, the issue is of a copyright nature. Still, it is interesting that in a notable prior case (Comedy III), Warhol’s Marilyn was cited as the example of a transformative use. Now, in the AWF / Goldsmith matter the very question of whether Warhol’s rendering of Prince is transformative takes center stage.
Second, in teaching Comedy III this semester after news of SCOTUS accepting AWF’s petition, a question was raised whether Warhol perhaps used a reference photo in creating his Marilyn work. The inquiry is intriguing, though perhaps only for academic reasons. Without knowing the specifics, it seems plausible that if Warhol used a reference work for creation of his Prince work, it is possible he did the same for creation of his Marilyn work. The implications, if so, can be considered elsewhere.
Third, it is important to note that the AWF Goldsmith matter to be decided by SCOTUS, with a decision expected sometime in 2023, ought to be confined to a copyright decision. Any Right of Publicity involved would be that of Prince, and it is assumed that the rightsowners of Prince’s publicity rights are not part of the matter. SCOTUS is good at keeping the issues it is considering confined to only that which is in front of the Court at that time. In other words, no matter what SCOTUS decides in the AWF Goldsmith matter, it is expected to be a copyright decision only.
Last, and despite the observation in the preceding paragraph, certain Right of Publicity tests and analytical constructs often borrow from the copyright realm. If the transformative use test happens to be recast or adjusted by SCOTUS, it would not be surprising to see future holdings considering the Right of Publicity in relation to a Comedy III-type transformative use test take into account what the Supreme Court finds in the Warhol Goldsmith matter concerning Warhol’s Prince series.
An image that can be found in an image provider’s database marked “public domain” does not make it so. Obviously, the recent B.J. Novak odyssey illustrates how far things can go sometimes, but that does not mean his image actually was public domain, that ad agencies and companies were free to use his image on products or in advertising, or that he was without recourse (though he has indicated not being inclined to pursue the end-users). The term “public domain” (like many aspects of intellectual property) gets misused often. The headline of a recent article “How your photo could end up in the public domain – and used in ads around the world” takes a substantial leap and demonstrates the point, though the substance of the article may be helpful.
Thought everyone should know.
Sorry to disappoint anyone expecting this blog entry’s title to be answered here, but for a number of reasons, it isn’t. The question can certainly be raised though. Former Steelers, Raiders and Patriots wide received Antonio Brown has released a song or track entitled “Andrew Luck,” which opens with audio from Andrew Luck’s press conference announcing his retirement, and including a repeated refrain with the lyrics:
I got the game and I’m not on stuck
I’m out the way like Andrew Luck
Everybody callin’ my phone, shut up
A while back, Outkast released a song called Rosa Parks. Litigation ensued and Parks won. In short, the song wasn’t about Rosa Parks and the title was deemed a violation of Rosa Parks’ rights. Paraphrasing, a great line from that decision was that “crying artist does not confer carte blanche” to use a person’s name in a way that does not relate to the song, but which certainly serves to bring attention to the track.
There are various other examples. Logic released a song called “Keanu Reeves” which, interestingly and perhaps significantly, does not actually even reference Reeves. Instead, the connection, such as it is, refers to “the one” like Keanu Reeves, which of course is a reference to Reeves’ character Neo in the Matrix film franchise.
The legal test that likely applies best to these facts is the Rogers test, from litigation brought by Ginger Rogers in response a film named “Fred and Ginger.” Rogers lost the claim on the basis that the title was relevant to the film’s title and not simply a ploy to attract attention from Rogers’ name. Conversely, the same test was applied to Outkast’s release of a track called “Rosa Parks.” The lyrics were not about Rosa Parks, and it was determined to be a violation of Parks’ rights and an effort simply to attract attention to the song.
So I’ll leave it to you to decide if Brown’s song “Andrew Luck” is fair, appropriate or permissible, or if it fails the Rodgers test as Outkast’s song did a while back. I expect we’ll never really have this question answered, but it is an interesting reference point to consider in any event.
Here’s a link to the video and a recent interview with Antonio Brown: Antonio Brown releases track named Andrew Luck
The lawsuit filed by Jason Mraz against MillerCoors, filed December 4, 2019 illustrates various important points and takeaways. View the complaint here: Jason Mraz v. MillerCoors complaint
Reportedly, MillerCoors was a sponsor of the 2019 BeachLife Festival in California where Jason Mraz performed. His performance of course included one of his hit songs, I’m Yours. The complaint alleges that MillerCoors posted an advertisement on Instagram for Coors. The advertisement includes a clip of Mraz performing the song, the Coors logo, display of a can of Coors Light, the phrase “presented by Coors Light,” and in the comments, the added statement “Kicking off summer with the World’s Most Refreshing Beer at the BeachLife Festival.”
While a complaint is not the same as a ruling, at least two of the important takeaways from this case are:
- Social media is advertising.
- Sponsors do not acquire broad rights to third-party intellectual property simply by serving as a sponsor.
Both of these issues come up with some regularity in the business of representing a rights owner and the right of publicity. Claiming that a social media post is somehow different from advertising on the basis that it is a fluid, user-controlled environment, or that serving as a sponsor entitles the sponsor to utilize the rights of anyone other than the party they are in contract with as a sponsor, both can lead to serious problems.
Beyonce suit against Feyonce knockoffs illustrates need for Right of Publicity distinct from trademark
A Judge recently denied Beyoncé’s request for injunctive relief against a Texas company selling a range of products using “Feyonce.”
Apparently, the Feyonce pun is based on the proximity to the word fiancé. The Judge’s ruling, in summary, is that there was not a sufficient showing of potential confusion among customers that Feyonce was infringing Beyoncé’s trademark rights.
Thus, the need for Right of Publicity as a distinct form of intellectual property, that trademark does not adequately address, is illustrated yet again.
Here’s a link to more information on the ruling and the case: Beyonce Feyonce Lawsuit
One has to marvel at the arguments being attempted in opposition to New York’s Assembly Bill A.8155B. Here is a link to the bill: New York Assembly Bill A.8155B
In coverage of the bill (in the Hollywood Reporter coverage, link below), the MPAA says one of the fatal problems with the bill is that it does not have limitations for First Amendment purposes. Let’s shine the white-hot light of truth on such misinformation with a quick look at S.51 of the bill:
§ 51. Action for injunction and for damages. ... 50 2. Right of publicity exceptions. For purposes of the right of public- 51 ity, consent for use of another individual's persona shall not be 52 required, except as otherwise provided in subdivisions three and four of 53 this section, when used in connection with the following: 54 (a) news, public affairs or sports broadcast, including the promotion 55 of and advertising for a public affairs or sports broadcast, an account 56 of public interest or a political campaign;
A. 8155--B 5 1 (b) in: 2 (i) a play, book, magazine, newspaper, musical composition, visual 3 work, work of art, audiovisual work, radio or television program if it 4 is fictional or nonfictional entertainment, or a dramatic, literary or 5 musical work; 6 (ii) a work of political, public interest or newsworthy value includ- 7 ing a comment, criticism, parody, satire or a transformative creation of 8 a work of authorship; or 9 (iii) an advertisement or commercial announcement for any of the works 10 described in paragraph (a) of this subdivision or this paragraph; or 11 (c) fundraising purposes by not-for-profit radio and television 12 stations licensed by the federal communications commission of the United 13 States, or by not-for-profit advocacy organizations if the use is for 14 commentary or criticism; 15 (d) use of the right of publicity of a deceased individual where the 16 licensee or successor in interest has failed to register and post a 17 claim of right under section fifty-h of this article, with the exception 18 of the safe harbor period listed in subdivision seven of section fifty-h 19 of this article, until such time as a claim of right has been registered 20 and posted as required under such section.
Accuracy appears to be the first casualty in the fight against Right of Publicity recognition. Claiming the First Amendment will be jeopardized and creative works stifled if the legislation is passed is such a popular refrain designed to make every legislator afraid to go against something as fundamental as the First Amendment, that it will be repeated even when the statute specifically contains exactly what it is alleged to lack.
Another observation is the attempt to characterize New York’s bill as something so revolutionary, something so dangerous, that the bill simply must be shelved. New York’s legislature has been in almost a permanent state of considering this legislation. Many other states have Right of Publicity recognition firmly in place, and so far, I’m happy to report the First Amendment, creative works, commerce, and freedom in general have not withered in those jurisdictions. We might have heard about it if these popular, dire predictions actually ever occurred.
Another quick observation relates to the provisions in the bill addressing deep fake uses and digital recreation of a person. On this point, I might just sit back and listen as the lobbyists attempt to argue against a baseline provision addressing the extreme abuses possible by way of deep fake uses and digital recreation.
Lastly, in the Hollywood Reporter’s coverage, it is suggested that A.8155B isn’t really needed because the Lanham Act, false endorsement and privacy rights already provide adequate recourse. They don’t. That statement would only hold true for the small number of people so famous that they can actually support a trademark claim. Suggesting that the Lanham Act and privacy rights are a sufficient substitute for the Right of Publicity is simply inaccurate, and this point ought to be beyond debate. The article says it is not attempting to take offer competing interpretations and that both sides are probably guilty of overreaching, but then comments only on supporters of the bill, with no commentary or insight on how the studios and opponents to the bill may also be overreaching. Here is the link: Hollywood Reporter coverage on New York’s Assembly Bill A.8155B
In the ugliness of lobbying, it is apparent that being right, or even knowing what the legislation actually says, is not really an important detail.
At a recent Napa Valley ABA panel, the argument reportedly was made that a wave of lawsuits filed against media companies is making it harder for producers to make documentaries, docudramas and sports features. I’m reminded of the coverage after Comedy III or the Tiger Woods case against Jireh, when claims were made that “artists can’t create art anymore.” Gotta love hyperbole.
Last time I checked, a few lawsuits doesn’t constitute a wave. And it sure doesn’t seem like the documentary, docudrama and sports feature categories are struggling. I’d wager that more such words are being created now than ever before.
The pending suit by Mohammad Ali’s rights owners against Fox for a Super Bowl spot, and a separate claim by Olivia de Havilland are probably the main examples of this “trend” or “wave.” Why don’t we speak of the trend or wave of media giants and advertisers trying to get for free rights that should be licensed? Sure, documentaries, docudramas, and whatever “sports features” are may present specific cases, but it isn’t too radical of an idea to suggest that each situation may present unique facts or characteristics that must be considered. Bad lawsuits will be filed, in all areas of the law. Abuses will happen by billion-dollar corporations or industries, of all manner of intellectual property rights. It happens, and we have laws and a system for addressing them.
Let’s try not to get carried away. My experience is those making the most dire predictions of a dystopian world where the right of publicity has consume the First Amendment rights are usually those aligned with the deep pockets that benefit most from such misinformation, or from those with precious little experience working with and representing rights owners.
Italian Steve Jobs fashion company makes obvious the necessity for meaningful Right of Publicity provisions
For those who argue against the need for meaningful Right of Publicity legislation, like many I have observed in the latest New York legislative effort, I offer the following situation as a compelling example that not only demonstrates the necessity of Right of Publicity recognition, but also the inadequacy of trademark law as a sufficient substitute.
An Italian company led by two brothers started a fashion company called Steve Jobs. There is no mistaken identity or alternate Steve Jobs intended by the fashion company; they openly confirm that their company is named after the late Apple-innovator Steve Jobs. Want proof? Their logo is the letter “J” with a bite taken out of it, just like Apple’s iconic trademark.
While many will already see the obvious, note that an EU trademark proceeding determined that the fashion company’s logo is (somehow) not a J with a bite out of it because (apparently) a J cannot be bitten as an apple can.
Perhaps under the guise of feigning nobility or respectfulness, the company states that they won’t make shoddy products because they “respect the name of Steve Jobs.” Of course, that respect doesn’t preclude them from including Steve Jobs’ quotes in their promotional efforts.
This, loyal readers, scholars or members of the media, is why we need a Right of Publicity. This situation exposes the inadequacy of arguing that trademark law provides sufficient protection for publicity-rights interests. It also demonstrates the compelling necessity for meaningful Right of Publicity legislation as a distinct member within the intellectual property family.
Here is a link to an article with more details on the matter:
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
I am always on watch for legislative developments or new case law concerning the Right of Publicity, but I also find it interesting to consider the path that the Right of Publicity has traveled. The body of case law on the Right of Publicity is some of the most fascinating, and at times colorful, in all of law.
When I was working on Indiana’s revised Right of Publicity statute in 2012, one of the points I emphasized to the legislative committee was that neither the revised legislation I was advancing nor the original Indiana Right of Publicity statute sought to create “new” rights. Instead, the statute aimed to codify common law recognition of rights analogous to the Right of Publicity.
I recently came across an article in Res Gestae, January /February 2013, Vol. 56, No. 6, entitled Intrusion into privacy… by Neal Eggeson, which exemplifies the point I was making to Indiana’s legislature. The article notes the case Continental Optical Co. v. Reed, 86 N.E.2d 306 (1949), in which the court recognized the tort of appropriation of a lens grinder whose image was used without authorization in an advertisement for a lens manufacturer. The Res Gestae article is not about the Right of Publicity, but this does illuminate how one can pick up the trail of a concept, or store away data that may be useful in the future.
Just looking out for the viewers and users of www.RightOfPublicity.com.