SCOTUS Prince ruling against fair use in Goldsmith Andy Warhol case may connect to upcoming AI issues
As has been well-documented, the United States Supreme Court recently ruled in favor of photographer Lynn Goldsmith in finding that Andy Warhol’s Prince series was not a transformative use of Goldsmith’s photograph under fair use analysis. As it pertains more directly to the Right of Publicity, it is interesting to note that in Comedy III, Warhol’s Marilyn was the cited example of a transformative work. Be that as it may, in light of fast-developing discussions pertaining to Artificial Intelligence (AI), the SCOTUS Warhol ruling may provide support for the argument that AI creative output is a derivative work of the original. We’ll see.
Not that it needs to be demonstrated, but recent AI and deep-fake developments further demonstrate the need for meaningful Right of Publicity recognition.
AI-generated a “new” song presented as Drake and the Weeknd. Read more on this link: AI Drake the Weeknd song
Deep-fake technology is taking centerstage in a recently filed suit in California. Read more on this link: Kyland Young et. al. v. Neocortext Inc.
Absence of registrants on New York’s postmortem Right of Publicity registry may not be what it seems
Below is a link to an article presenting information on the absence of New York postmortem registrants on the registry system established by 2020’s enactment of post-mortem right of publicity in New York. There may be reasons for the absence of registrants. Further, the practical aspects of a registration system bring problems and issues, but little utilitarian benefit. States considering right of publicity legislation would be well-advised not to include a registration system, particularly if it is anything other than voluntary, or if it creates a condition for damages.
Here is a link to the article with more information on the status of New York’s post-mortem registry:
In what may be a contender in the “most clever” licensing event of recent times, the running back for Texas, Bijan Robinson, is involved in a mustard line launch entitled “Bijon Mustardson.” It is, quite obviously, a dijon mustard. Also, quite obviously, this “NIL deal” is more properly understood as a Right of Publicity matter, though admittedly involving a collegiate athlete. We’ll let semantics have a rest and simply enjoy when the licensing deals practically write themselves. Here’s a link to more info:
Bijan Mustardson” rel=”noopener” target=”_blank”>Bijan
Lady Gaga: Patrizia
Adam Driver: Maurizio
Al Pacino: Aldo
Patrizia: Who is making this stuff? Who’s allowing this to happen?
Maurizio: As far as fakes go, they’re pretty good. I mean, I’d, I’d buy them.
Patrizia: Don’t be such a cretin.
Maurizio: Don’t call me a cretin, sweetie.
Patrizia: That’s not what I said. I asked you not to be one. This is serious. And you’re laughing it off.
Maurizio: At least it’s my name on the marks, not yours.
Patrizia: Our name. Sweet Pea. On junk.
Aldo: They’re not fake, by the way. They’re replicas.
Patrizia: I was just very, very surprised.
Aldo: Well, you know what else would surprise you? How profitable this stuff is.
Patrizia: What about quality? Sacred cows?
Aldo: Quality is for the rich. If a Long Island housewife wants to live with the illusion that she is a Gucci customer, why not? Let her.
Patrizia: Because it…damages Gucci’s credibility
Aldo: Patrizia…this is us. This is not a girl’s game.
Maurizio: Yeah but Aldo, she’s right. This stuff is, is junk. It’s not what Gucci is.
Aldo: Gucci is what I say it is.
Louisiana has passed a Right of Publicity statute providing, among other things, 50 years of postmortem recognition. The statutute is designated “the Allen Toussaint Legacy Act” after the notable musician who died in 2015. Here is a link to the statute: Louisiana Right of Publicity statute
Mayim Bialik CBD lawsuit
and here is a link to the Court’s grant of preliminary injunction and TRO: Florida court grants Mayim Bialik request for preliminary injunction and TRO
Without tackling the entirety of issues involved, it seems worth noting that the most recent coverage reports that the UK-based NFT company, Opulous, may be arguing California does not have jurisdiction over Lil Yachty’s suit for Opulous’ NFT offering and promotional activities related thereto utilizing Lil Yachty’s Right of Publicity and other rights and interests. The lawsuit alleges various violations and claims.
When analyzing the totality of a use, the final execution of the product involved (if a product-based offering) is not the entirety of the matter, as promotional efforts also must be considered, among other things. The value of an association with a celebrity or valuable Right of Publicity (in popular parlance, name image likeness) can accrue before any product is sold. NFTs, in particular, can generate repeat sales, and can sell for undetermined amounts based on the market response. The facts of the Lil Yachty lawsuit indicate that social media promotions, and funding for the defendant company, were aided by the promotion of the NFT in question.
It will be interesting to observe how the fact that defendants reportedly had communications with Lil Yachty in the planning stages for the NFT, then broke off negotiations yet proceeded with the use. That tends to be a strong fact, if accurate, in plaintiff’s favor in cases such as this.
If California does not have jurisdiction over this case, it may be a fair question whether defendant hermetically sealed its promotional efforts from California, not to mention how bids or potential sales from the jurisdiction in question were prevented. Of course, much depends on the specifics of a claim of this nature, what is established as factual, and related details.
Here is a link to Billboard’s coverage of the suit, which includes the complaint in question:
Lil Yachty lawsuit against Opulous, et. al., for unauthorized NFT activity
At the bottom of this entry is a link to more detailed analysis of the Copyright Restoration Act bill introduced by Senator Hawley in mid-May 2022, but for this entry, I will offer just a few observations. The bill seeks to curtail copyright duration and recast it in the former model of life of the author plus 28 years with an optional 28-year renewal. An explanation accompanying the bill uses the word “woke” twice in one sentence, and seems premised on the idea that the current copyright duration model was simply a Republican handout to Disney.
It could be interesting if someone were to research whether the prior legislative activity leading to the current copyright duration model can rightly be characterized as purely a Republican effort, or merely a handout, but the legislation was processed and deliberated over. The quotations accompanying the introduction of the bill seem to make clear that the bill is not about good, needed legislation, but rather some form of political posturing, which may not be the best foundation for legislative activity or intellectual property recognition. While the former model of 28 years with a potential renewal window has generated a lot of legal work for some due to its complexity and susceptibility to being manipulated, it could also be a good point to research whether the 28 plus 28 renewal is an efficient, clear and fair model to utilize. There are good reasons the copyright model moved on from the former structure.
What happens in the copyright realm often makes it way to the Right of Publicity realm. It seems the bill is not likely to pass, but it could be an entry worth marking for posterity.
For more information on the bill, see:
Don’t Say Copyright: lexology link to Frankfurt Kurnit Klien & Selz analysis article
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.
Just a quick note based on the Second Circuit’s recent ruling in Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, where it determined that Warhol’s Prince series was not transformative and therefore was subject to copyright provisions in relation to the reference photograph Warhol used. The court went through a fair use analysis, and the case was primarily concerning copyright, but it is interesting to contrast this decision with the Comedy III case, which was primarily Right of Publicity-related. In Comedy III, the Three Stooges artwork was held to not be sufficiently transformative, and the court used Warhol’s Blue Marilyn as the example of a work that would, in contrast, and in the court’s estimation, be sufficiently transformative. I’ll let those motivated to seek more run their own searches rather than post links here, as there is no lack of content, analysis and discussion being offered on this recent ruling. I have not, as yet, seen reference to the contrast with the Comedy III case, so I thought it may be useful to note it here.
Departing from the usual Halloween release date, Forbes issued its annual top-earning deceased celebrities list on Friday, November 13th in 2020. A few takeaways, in no particular order:
1. Unsurprisingly, given the worldwide pandemic, almost all the reported numbers are down. Some may have more immunity than others, and those that went up, like Dr. Seuss were bolstered by television, movie and media deals. Some of that may be one-time bursts.
2. Elvis Presley was closing in on a 50% decline. Graceland, as a tourist destination, no doubt accounts for much of that given closures in 2020.
3. Prince is down yet again another year further from his death, as has been the trend. The summary on Prince mentions only music sales.
4. Those with the misfortune of making 2019’s list due to early departure, XXXTentacion and Nipsey Hussle, are gone.
5. Those with the misfortune of making 2020’s list due to early departure include Kobe Bryant and Juice WRLD. It will be interesting to see if Kobe Bryant is a one-time, one-year entrant or will make next year’s list as well.
6. Not-much-of-a-prediction: Eddie Van Halen will be on next 2021’s list. Though he passed away over a month prior to the release of the 2020 list, that is neither enough time to account increased sales, nor enough time to process his passing into a list that was no doubt already well underway in October.
7. The article includes a statement about its methodology, which includes sources I use when appropriate in valuations.
Last, a word about the often used term “delebrity” in relation to deceased celebrities. I get it, though it’s never really hit me as particularly clever or useful as a term. More importantly, no one I know who actually works with the heirs, family, and estates of notable deceased icons uses this term. It’s hard to take someone seriously who uses this term in their scholarship, publications, or writings. But keep using it, those who do, because it provides a revealing tell.
Here is a link to Forbes’ 2020 list: https://www.forbes.com/sites/maddieberg/2020/11/13/the-highest-paid-dead-celebrities-of-2020/?sh=37a974e03b4b&utm_source=Licensing+International+Database&utm_campaign=b3b89e5adb-EMAIL_CAMPAIGN_2019_12_18_01_57_COPY_01&utm_medium=email&utm_term=0_ec0e484a60-b3b89e5adb-397655773&mc_cid=b3b89e5adb&mc_eid=a31363c945
Yes, there is a Right of Publicity interest pertaining to Supreme Court Justice Ruth Bader Ginsburg, who died a week ago at the age of 87. As always, application and analysis of her Right of Publicity would depend on context and specifics in any particular situation. But sticking to overview observations, since she was a lawyer, it may be a safe assumption that Justice Ginsburg had a testamentary plan in place. Since she was attuned to intellectual property matters, it is possible there were specific Right of Publicity provisions in her testamentary plan. Since she is commonly referred to as RBG, it is safe to assume RGB could unequivocally identify Justice Ruth Bader Ginsburg. And given the preceding points, it is safe to assume potential commercial uses or trademark activity could intersect with some of these points. This may all be academic, of course. We’ll see.
I’ve seen some commentary on Mel Gibson’s issuance of a letter to the person behind a Chilean honey branded “Miel Gibson.” Here’s a link to more coverage of the story: https://www.abc.net.au/news/2020-08-15/mel-gibson-threatens-to-sue-chilean-honey-maker-over-image-use/12562438
To date, the developments consist of a letter being issued. No lawsuit has been filed. The letter seems to indicate a willingness for the Chilean business person to continue to some extent, but requests his image be removed. Reportedly, after the recipient shared the letter online, her social media grew “exponentially.”
There’s no question that the product name and packaging ties to Mel Gibson. For those who don’t like the contents of or even issuance of the letter, I would ask “what would you advise be done?”
New York’s legislature may be closing in on passing a Right of Publicity statute with New York State Assembly Bill A5605C. If so, it would be a significant development in the Right of Publicity realm as New York has been conspicuously behind other states for a very long time. As of July 20, 2020, the bill was “amended on third reading” (here’s a link to the timeline and status of the bill which also has link to the PDF of the bill itself): https://www.nysenate.gov/legislation/bills/2019/A5605
Overall, my take is that this bill would be a step in the right direction, even as it would still amount to New York having one of more narrow or limited Right of Publicity statutes in the United States. For example, a forty year post-mortem provision is quite anemic, and creating a registry system sounds good on paper but in my experience is not particularly helpful yet introduces various problems. Video games are not on the list of exempted works, as they should not be, and also to its credit, the bill has meaningful provisions in relation to Deepfakes and the problems such technology present in the modern world.
The progress of this bill seems already to have traveled further than past efforts. Hopefully, tired refrains like “this bill exists only to enrich a few wealthy estates” are worn-out by now and find no traction. Does copyright and trademark exist only to enrich a few wealthy creators or companies? Observations of past legislative efforts in New York are addressed in the following link I made on the topic: https://rightofpublicity.com/observations-about-new-yorks-assembly-bill-a-8155b
Here is a link to an article I wrote for Licensing International’s Executive Voices series: https://licensinginternational.org/news/discernment-in-licensing-and-enforcement/
A company in New York has begun offering “Dr. Fauci” doughnuts, which apparently involve edible paper on the doughnut with Dr. Fauci’s image printed on it. Dr. Fauci has become a daily fixture in the coverage of the Covid-19 pandemic and a visible leader in the response and information concerning the outbreak. Donuts Delite, the company selling the doughnuts on a nationwide basis, reportedly, will continue selling the doughnuts “as long as they are in demand.” Here is a link to the story: https://www.cnn.com/2020/03/26/us/dr-fauci-doughnuts-trnd/index.html Dr. Fauci Doughnuts
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.
Student-athlete legislation & the NCAA’s Board of Governors adopting name, image and likeness policies
Yesterday, the NCAA’s Board of Governors voted unanimously in favor of allowing student athletes to earn money from their name, image, and likeness. NCAA Board of Governors Name Image Likeness
The NCAA’s announcement spoke of modernizing, and the Board issued guidelines and created a Working Group to respond to legislative developments concerning the issue. In other words, there is much yet to come. After opposing California’s bill, perhaps the NCAA felt forced to change its stance, and to be fair, it is a complicated issue.
A few observations, in no particular order:
1. As usual, the legal term for the interests being dealt with–the right of publicity–is rarely if ever used in reporting on the issues. It would help if its proper name was used, but since trademark and copyright issues are often referred to as “patents,” perhaps it is par for the course.
2. These developments really only put NCAA athletes on the same footing as other college students. A music major can perform and earn money. An art major can sell works and earn money. Having said that, unlike those examples, student athletes perform their craft entirely in the NCAA environment. They are on the school’s field, in the school’s stadium, wearing the school’s uniform bearing its valuable trademark, with a team, coaching staff, and opponent, all of which cost money not paid by the student athlete. The music or art major generally covers costs and handles logistics in performing or creating a work that leads to income. Still, the point has merit.
3. A subsidized education is valuable, and the majority of NCAA athletes will need an education for life after competitive sports. The NCAA system also provides a forum in which athletes develop and get recognized, and therefore reach the professional level. The amateur environment can hardly be said to have failed every student athlete up to this point.
4. Those affected by these developments constitute a very small percentage of NCAA athletes. Few NCAA athletes move on to professional sports. Of those who do, an even smaller percentage last more than a few years at the professional level. An even small number will earn significant money from their name, image, and likeness (correction: their right of publicity) outside of contractual compensation from the professional sports team.
5. I have seen at least some state that these developments put athletes in danger or that the right of publicity must be “fixed.” Suggesting that these developments will put student athletes in danger of entering into agreements that diminish their rights later on is a commentary on the nature of contracts. Pending legislation seems to be seen as an opportunity to attack established right of publicity architecture such as transferability, postmortem right of publicity, and the duration of recognition of the right of publicity. None of these issues are, or should be, part of the recent student-athlete legislation.
6. To the extent that these developments create the possibility of students being used commercially in relation to a team, such scenarios could implicate various intellectual property rights. Commercial use of footage of an athlete performing in an NCAA competition, or the school’s name and logo, may implicate rights that exist in parallel to the right of publicity. This observation explains why weight loss ads with Dan Marino or watch ads with Eli Manning depicted them with a generic football, but no Dolphins or Giants trademarks.
Time will tell.
Not that it would happen, but I can imagine providing the scenario in the following link as a law school exam: Larry Bird mural
It does not appear headed towards legal action, but hypothetically, how could this go? On the copyright front, is it a fair use? A derivative work? Does adding tattoos that Bird obviously does not have change the copyright analysis?
On the Right of Publicity front, or perhaps on the privacy front, what issues exist? Is it a commercial use? Is it protected by statute? Are there issues involved here that sway the analysis in one direction or the other?
Here is a link to an article addressing the FTC’s guidelines for celebrity endorsements in the online and social media environment. Social media in particular brings a host of unique issues. The article on this link could be a useful reference: https://www.lexology.com/library/detail.aspx?g=34a6631e-563d-4546-bcbd-0c8c15f4ad07&utm_source=lexology+daily+newsfeed&utm_medium=html+email+-+body+-+general+section&utm_campaign=lexology+subscriber+daily+feed&utm_content=lexology+daily+newsfeed+2019-05-13&utm_term=
Super Bowl LIII will commence later today, and with it, some of the most anticipated advertising of the year as well. Most don’t think of it this way, but those advertisements often feature the Right of Publicity by way of the people depicted in the ads. My licensing company has an advertisement that will run during this Super Bowl as well–a campaign that has been running for a while featuring Major Taylor. Enjoy the game, and enjoy the advertisements!
Article in the New York Times examining the issues presented by depicting athletes in video games, and the possibility that the tattoo artist retains an interest in their work (original work of authorship fixed in a tangible medium of expression). Thus, a human, or skin, is now a tangible medium of expression.
Seems like a simple agreement at the point of origin would fix most of these issues going forward.
Link to the New York Times article: NYT article on who owns what athlete tattoos and video games
Actress Tara Reid apparently has filed a lawsuit seeking $100 million relating to merchandising of the Sharknado film franchise. Reportedly at issue are product categories such as branded beer and slot machines with her likeness on them, which according to her contract require her separate approval. From a distance, this looks like a contract dispute more than a Right of Publicity case, though certainly the Right of Publicity is implicated by the issues at hand. If her likeness is on the product, one hopes that the transformative test would not be twisted and stretched to attempt an argument that the image on the product is meant to be the character from the film, not the actress herself, that her likeness is transformed. But it wouldn’t be the first time a carefully tailored test gets twisted down the line.
Here is Forbes coverage of the lawsuit: https://www.forbes.com/sites/legalentertainment/2018/12/07/tara-reid-sues-sharknado-producers-for-100m/#26b5b9672c46
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.
Reuters article on Frida Kahlo and Mattel’s “Inspiring Women” doll line talks to @FaberLaw of RightOfPublicity.com
Here is a link to a Reuters story that http://www.RightOfPublicity.com ‘s @FaberLaw contributed to, concerning Mattel’s “Inspiring Women” line of dolls. The line up includes quite a few notable women, past and present, from various disciplines or areas of renown, such as Amelia Earhart, Gabby Douglas, and as the Reuters story focuses on, Frida Kahlo.
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.
An appeal brought by Lindsay Lohan against Take-Two Entertainment and Rockstar Games in relation to the Lacey Jonas character in Grand Theft Auto V has inspired an amicus brief, filed last month, in support of the video game companies. I am not commenting on the merits of Lohan’s claim here. I also am not responding to the brief itself, but am just notating a few observations that relate to the New York discussion overall.
The Lohan case is pending in New York. The amicus brief references New York’s right of privacy statute (New York sections 50 & 51) and indicates that New York’s statute helped the court “dodge a bullet” through its narrow right of privacy provisions.
New York’s legislation, as it shapes New York’s position on the right of publicity and its narrow provisions concerning the right of privacy, is hardly a model for right or privacy or right of publicity legislation (not that anyone has called it a model). New York’s Sections 50 and 51 puts New York at odds with almost every state in the U.S. It allows no room for the critical policy reasons behind right of publicity recognition, as distinct from privacy rights. New York’s right of publicity deficiencies, stemming from the 115 year old legislation (though it has been amended a few times) are, in fact, the source of a lot of problems New York is experiencing.
Addressing New York’s 1903 statute, passed in the aftermath of Roberson v. Rochester Folding Box Co., 171 N.Y. 538 (1902), Professor J. Thomas McCarthy in The Rights of Privacy and Publicity, s.6:74 says:
“New York …is part of a tiny and dwindling minority of courts which still rejects any common law rights of privacy. The court refuses to change its 1902 Roberson decision, viewing the common law as a rigid and fixed institution…When the federal courts in New York invited the New York Court of Appeals to join the national trend and recognize some form of common law privacy rights, the invitation was ignored.”
It was New York that gave life to the common law right of publicity in the 1953 case of Haelan V. Topps, 202 F.2d 866, which in turn led to recognition in other states. McCarthy says “But the right of publicity faced a hostile reception in the state courts in the state of its creation. Honored abroad, it was viewed with suspicion in New York.” Clearly, it still is.
In an eye-brow raising abandonment of decades of precedent, the New York Court of Appeals in 1984 abandoned numerous rulings recognizing a common law right of publicity, holding that there is no common law right of publicity in New York and forcing analysis to pass through a statute that was only 36 months out of the 19th Century. Stephano v. News Group Publications, Inc., 64 N.Y.2d 174 (1984). McCarthy says about Stephano: “Erroneously treating the right of publicity as merely a tag-along form of the right of privacy, the court …rejected without serious discussion the concept of a New York common law right of publicity.” A similar ruling in 1993 deepened New York’s slide into the abyss in Howell v. New York Post Co., Inc., 81 N.Y.2d 1145. McCarthy says of the 1993 ruling: “Thus, the highest New York court has abided by its position that all privacy and publicity rights must fit in the 1903 statute. But this makes for a poor fit. The modern right of publicity simply does not fit comfortably in a century-old statute designed for another time and another kind problem.”
The Lohan amicus brief addresses the transformative use test and the predominant purpose test. In other settings, the criticism of these tests sometimes seems to almost include the tacit suggestion that judges are incapable of using discernment and applying the law to challenging facts. To my ears, that sounds like the essence of their calling. Sure, outlier cases exist, and certain fact patterns will present challenging scenarios in which application of one of these tests may seem a bit forced, but every legal test comes with such dynamics. The transformative use test has proven to be an adaptive, functional analysis tool in most instances.
Another recurring theme as it pertains to video game litigation as well as draft legislation is that the discussion of whether video games should receive some degree of exempted status is being presented as a fait accompli. It is as though the discussion point has morphed into an assumption that video games should be treated as categorically protected. A fair amount has been written on this site about video games and the transformative use test (Discussion Brown Keller EA rulings). In most instances, video games go to extraordinary lengths, using cutting edge technology, to ensure nothing about the personality is transformed. Instead, the objective is to represent that person as thoroughly and realistically as possible. Maybe there are instances in which a video game character should not trigger liability, but to move the entire industry into exempted status is more dangerous and unwarranted than dealing with specific cases as they come up. Perhaps there is a reason some of the litigation against video game companies has been successful in the court system?
New York has tried many times to amend its position on the right of publicity but, to date, nothing has changed. It is worth noting that even if the recent legislation under consideration was enacted, New York’s statute would still be among the weakest right of publicity statute in the country. Why isn’t this seen as a success for the opposition? New York may be the center of the universe in many respects, but it certainly is not when it comes to the right of publicity. And while those opposed to New York’s draft legislation foretell of a tidal wave of litigation and an assault on the First Amendment if passed–basically the first two entries in the anti-right of publicity playbook that has been attempted in every jurisdiction since I’ve been paying attention, though it is effective at scaring legislators–they are ignoring the data from many other jurisdictions that disproves such predictions.
I have no objection to debate, analysis and differences of opinion regarding the right of publicity. If the right of publicity is to grow and evolve, the doctrine will survive scrutiny and benefit from fair-minded, level-headed discussion. That said, a conference I recently attended was marked by positions clearly representing the minority viewpoint being presented as the presumptively correct views, as though it was the majority view and supported by case law, statutory authority and scholarship. Much of the conversation was presented in a manner that what New York was considering is unprecedented and radical, which is simply not true and certainly not fair-minded or level-headed.
I recall an argument from a few years ago in which a lobbying organization on behalf of the First Amendment claimed that if that state passed the proposed legislation, libraries would not be able to post a notice that, for example, J.K. Rowling’s new book would be available on a certain date without facing potential litigation from the author. Give me a break.
I’m not sure where the Lohan claim will end up. She probably isn’t the most sympathetic claimant, and I haven’t analyzed the use of the Lacey Jonas character in the game. If she is unequivocally identifiable from the use, especially if the use in context is clearly based on the game player’s awareness of Lohan, then I’d start the conversation assuming she would have the basis of a claim.
Here is a Lexology link with more details on the Lohan amicus brief: amicus brief Lohan
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:
Looking forward to participating in Columbia Law School’s “Right of Publicity Roundtable” tomorrow. The event is an invitation-only symposium of academics, executives from various industries, SAG-AFTRA, private practice attorneys, as well as a comments from an accomplished actor speaking on the need for meaningful Right of Publicity recognition.
Here is a link to the event: http://www.law.columbia.edu/events/right-publicity-roundtable
Muhammad Ali’s representatives have filed a $30 million lawsuit on behalf of Muhammad Ali Enterprises (MAE) against Fox Broadcasting Company. The suit centers around a three minute promotional ad for Super Bowl LI which ran before the Super Bowl in 2017. The spot includes various other personalities, past and present, in addition to Ali who is the focal point.
Here is a link to the complaint:
The rise in craft brewing labels has been accompanied by a custom in the industry to develop colorful names and labels. While this dynamic creates the likelihood of infringements occurring, a recent lawsuit filed by the estate of Thelonius Monk involves additional considerations and backstory.
The North Coast Brewing Company apparently has produced its Brother Thelonious ale for about ten years. Initially, permission was given verbally by the Monk estate. Some degree of profits were to be given to the Thelonius Monk Institute of Jazz, a nonprofit music education program in D.C. The dispute seems to involve activities beyond the anticipated use that was authorized verbally.
That said, it seems likely that the craft brewing industry has the potential to yield similar disputes involving iconic personalities. For practitioners working with craft breweries, or the breweries themselves, this lawsuit could be instructive.
Here is a link to more details and an image of the Brother Thelonius label:
Two informative articles have issued in the last week, on the heels of the 2017 Licensing Show. Both are informative and include input from industry leaders.
and Huffington Post: http://www.huffingtonpost.com/entry/592fa717e4b00afe556b0b27
Here is a link to an article in today’s LIMA eNews, a primer on licensing the Right of Publicity for licensing executives:
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:
Here is a link to an in-depth article on the Right of Publicity as it pertains to political figures in general, and President Trump specifically. I was interviewed by the author and contributed several quotes to the piece. Here is the link: President Trump and the Right of Publicity
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
When it comes to the Super Bowl, even the advertisements are watched with great anticipation and Super Bowl LI was no exception. When your company is involved in licensing some of the advertisements in question, as Luminary Group was in the “Super Bowl Babies” spot, it tends to make one watch even more closely. As a Right of Publicity specialist, I was especially intrigued by not one but two Super Bowl LI advertisements with strong Right of Publicity overtones.
The first spot with Right of Publicity implications was the talking yearbook Honda advertisement featuring Tina Fey, Steve Carell, Robert Redford, Amy Adams, Earvin “Magic” Johnson, Jimmy Kimmel, Missy Elliott, Viola Davis, and Stan Lee. By showing an entire page of the yearbook photos of the not-yet-famous celebrities next to their classmates, approximately 60 other people appearing next to the talking yearbook images were identifiable. I have no inside information about the making of the advertisement, so I will assume the spot was carefully vetted. Maybe those other people were tracked down and permission was secured. Maybe they used stock photography or models with hypothetical names and simply paid a minimal fee to recreate the yearbook pages instead of using the authentic pages. In the Steve Carell segment, the person next to Carell even gets a speaking spot to which Carrell responds “that was a rhetorical question, Darryl!” If nothing else, the Honda talking yearbook ad presents an interesting scenario for Right of Publicity analysis.
Here’s a link to the Honda advertisement: Honda talking yearbook ad featuring Tina Fey, Steve Carell, Robert Redford, Magic Johnson, Missy Elliott, Viola Davis, Jimmy Kimmel, Stan Lee and Amy Adams
The second spot with Right of Publicity implications was the John Malkovich domain name advertisement for Squarespace. In the advertisement, Malkovich is talking on his smartphone to a person who owns the domain name JohnMalkovich.com. Malkovich says he needs the domain name because he is starting a men’s fashion line, but the person Malkovich is talking to is also named “John Malkovich.” This prompts John Malkovich to say “yeah, you think when people contact JohnMalkovich.com they are actually looking for you? Or maybe, maybe they’re looking for ME!” Domain name analysis pertaining to famous individuals often depends on the nature of the use being made of the domain name. If a person shares a name with a famous person of the same moniker, but is simply using that domain name in relation to the non-famous owner’s career, interests or life, for example, there may not be much the famous John Malkovich can do about it. On the other hand, as so often is the case, if the content on the domain name is being used in a way that threads in the famous John Malkovich, then there could be an actionable domain name dispute. The message of the John Malkovich ad is to register the domain name you want before someone else does. That’s good advice, though it isn’t always the final word in instances where cybersquatting is taking place.
Here’s a link to the Squarespace advertisement: Squarespace JohnMalkovich domain name ad
Interesting Bloomberg article dated 2/1/17 covering the dispute over the valuation of Michael Jackson’s estate. “The IRS claims Jackson’s should have been valued at $434 million. The estate claims that it was worth a mere $2,105.” Sounds like a case for a Right of Publicity valuation expert. Here’s a link to the Bloomberg article: Bloomberg: Michael Jackson estate valuation
The following link leads to a useful article on Canadian personality rights (equivalent to the Right of Publicity in the U.S.): http://www.americanbar.org/publications/landslide/2016-17/november-december/protecting_professional_athletes_personality_rights_canada.html
Forbes has just released the annual “Top-Earning Dead Celebrities” for 2016. The most notable aspects of this year’s list are the new entries of recently departed personalities, and the amount of the number one earner. Here is a link to Forbes’ coverage: http://www.forbes.com/sites/zackomalleygreenburg/2016/10/12/the-highest-paid-dead-celebrities-of-2016/#5a1f53dd8d2e
Arnold Palmer (#3), Prince (#5) and David Bowie (#11) are the unfortunate new members on the list due to their recent respective deaths in 2016. In Palmer’s case, he had already created a vast business empire so the revenue sources that put him on this particular list were already in place. For Prince, who perhaps is the most surprising entrant on this list due to the especially shocking news of his death, the earnings are due to the surge in music sales that often follow the death of a notable artist. The same could be said of Bowie, but Bowie’s numbers also benefited from the release of a new album that closely coincided with his passing.
The other notable surprise in this year’s list is the amount assigned to the number one entrant, Michael Jackson, at $825 Million. Compare that figure to the number two spot, Charles Schulz, at $48 Million. It is worth noting that Jackson, since his death, has almost always taken the top spot, and while never quite at the $825 Million mark, the drop off from first place to second has often been very steep.
Join me and Joel Tragesser of Quarles & Brady on Wednesday, October 12th, 12 pm – 1 pm at the Indianapolis Bar Association Education Center for our annual Right of Publicity update. The program provides one hour of CLE credit. Here is a link for registration and other details: https://www.indybar.org/index.cfm?pg=events&evAction=showDetail&eid=36514
The Indy Bar facilities are located at 135 N. Pennsylvania St., Ste. 1500.
Topics will include legislative updates (Alabama, Minnesota, Indiana), complex developments (like the death of Prince), case law (including Avvo, Hulk Hogan v. Gawker, Pele v. Samsung), valuations, deal-making, and hot-topic issues such as Halloween costumes and Presidential elections.
See you there!
Here’s a link to the Linked In Group “Right of Publicity” and some commentary on the Target Rosa Parks lawsuit.
I have not had a chance to review the decision itself yet, but if the summary of the ruling on the following link is accurate, there are numerous problems with the Federal Judge’s ruling in favor of the NFL against the former players’ Right of Publicity class action suit. I would expect an appeal to follow.
Just because an advertisement is presented as a pun or a joke does not shield it from liability. Don Henley, no stranger to protecting his Right of Publicity, has taken action against Duluth Trading Company in response to their email advertising campaign “Don A Henley, Take It Easy.” Well, he’s certainly identifiable from that use. Here’s a YouTube post with details on the claim:
Forgive me for the unusual structure of this posting, but I thought it would be of interest to post the press release that issued following Governor Mitch Daniels’ signing of the Right of Publicity bill that I authored and testified in defense of in January, 2012, at the Indiana State House.
For immediate release: April 19, 2012
Adjunct Professor Helps Preserve Indiana’s Right of Publicity Law
Indianapolis, IN— Now that House Enrolled Act 1258 has been signed into law by Governor Mitch Daniels, Indiana has preserved the spirit and intent behind Indiana’s Right of Publicity law and maintained its position as a leader in Right of Publicity recognition, according to Jonathan Faber, founder and CEO of Luminary Group. Luminary Group is a licensing and intellectual property management company that represents icons such as Babe Ruth, Vince Lombardi, and Jesse Owens.
Faber, a 1999 graduate of Indiana University Robert H. McKinney School of Law, authored, testified in support of, and defended HEA 1258. He teaches “The Right of Publicity” at the law school and also is an intellectual property attorney with McNeely Stephenson Thopy & Harrold in Shelbyville, Ind.
“Indiana’s Right of Publicity law was enacted in 1994 on the strength of testimony from James Dean’s family and Ryan White’s mother,” said Faber. “Since then, it was widely understood that Indiana’s law would protect the rights of those who died before 1994, since the rights existed at common law and the statute simply codified those rights.” Nevertheless, a 2011 non-binding judicial ruling in Indiana last year concerning use of John Dillinger in a video game threw this into question.
Opposing Faber’s bill was the Motion Picture Association of America. “The MPAA treated this as an opportunity to overhaul Indiana’s entire statute, but the underlying statute was not under review and is entitled to a presumption of validity,” Faber said. “Indiana’s statute already has language that addresses the MPAA’s concerns.”
The Right of Publicity refers to the right of a person to control the commercial use of his or her identity. “Most states correctly view this as a property right, and it therefore survives the death of the individual,” Faber said. “The concern with HEA 1258 is confirming how this intellectual property right is handled after a personality dies.”
Faber is the creator of the online Right of Publicity resource, www.RightOfPublicity.com. He also teaches “Licensing Intellectual Property” at the IU Maurer School of Law.
Faber has served as an expert witness in cases involving Uma Thurman, Motley Crue founding member Nikki Sixx, the animated character Madeline, and NASCAR driver Robby Gordon. In fall 2011, Faber testified in support of Zooey Deschanel in her claim against Kohl’s Department stores and designer Steven Madden. Earlier this month, Faber and Luminary Group performed a valuation of Indiana native coach John Wooden’s estate.
To reach Faber for interviews and additional comments, call 317-428-5441.
About Indiana University Robert H. McKinney School of Law
With an enrollment of more than 1,000 students, IU McKinney School of Law is the largest law school in the state of Indiana. Occupying a spacious, new, technologically advanced building, the school is located in the heart of downtown Indianapolis, Indiana. The school has enjoyed great success for more than 100 years in preparing students for legal careers. The success of the school is evidenced by the prominent positions graduates have obtained in the judiciary and other branches of government, business, positions of civic leadership, and law practice. The school’s 10,000 alumni are located in every state in the nation and several foreign countries. More information about the law school is available at indylaw.indiana.edu.
For more information, contact:
Director of Communications and Creative Services
Indiana University Robert H. McKinney School of Law
Lawrence W. Inlow Hall
530 West New York Street
Indianapolis, IN 46204
In response to a cease and desist letter from Justin Bieber’s representatives demanding that the “Joustin’ Beaver” app be terminated, RC3 (maker of the Joustin’ Beaver” app) has filed a declaratory action. The lawsuit was filed in Jacksonville, Florida.
RC3 claims the video game is a parody on Justin Bieber’s life, as game play involves signing “otter-graphs,” paparazzi-like hogs, and evading the “whirlpool of success.” How this is a parody on Justin Bieber’s life, aside from a few grade-school puns, is hard to discern. That it is popular and has a built-in market thanks to Justin Bieber’s name is not. Bieber also has not been all that controversial in his public and private life as compared to, say, a Lindsay Lohan, who might seem more fitting for such a “parody.”
There certainly is room in the Right of Publicity universe for a parody defense, but it almost always seems to be invoked as an attempt to defend blatant opportunism and appropriation. Video games historically have not been treated as exempt from Right of Publicity and other intellectual property doctrines, though the effort to afford them that heightened level of protection has been vigorously pursued in recent years. Despite the creative decisions that go into creation of a video game, I see a clear line of delineation between mediums such as books, movies or news reporting and that of video games.
Books, movies and news reporting, at their core, are about the expression of ideas and conveying information. Video games are not. There are numerous rulings explaining how the First Amendment is not a one-size fits all “shield” to otherwise infringing actions, including the United States Supreme Court in the landmark Zacchini case. http://rightofpublicity.com/pdf/cases/zacchini.pdf And, of course, even the generally exempted mediums can exceed those protections and stray into infringing territory. But video games should not be entitled to exempted status as a general rule. The Supreme Court ruling striking down a California law prohibiting sales of violent video games to minors is not an appropriate reference point in relation to an intellectual property infringement of the Joustin’ Beaver variety, though it seems to be cited as support for the notion that video games should be treated in the same manner as books and movies. http://www.hollywoodreporter.com/thr-esq/supreme-court-strikes-down-california-205827
Here is a link to Eriq Gardner’s write-up in The Hollywood Reporter.
Benetton has recently issued an advertising campaign featuring images of President Obama digitally altered to appear as though he is kissing Venezuelan leader Hugo Chavez, and in another spot, Chinese President Hu Jintao.
Benetton euphemistically calls it “an invitation” to “combat the culture of hatred.” It still remains an advertisement.
The White House issued the following statement in response to Benetton’s ad: “The White House has a longstanding policy disapproving of the use of the president’s name and likeness for commercial purposes.” Sounds like someone at the White House may have a functional awareness of the Right of Publicity.
Here’s a link to more details on the advertising campaign: http://digitaljournal.com/article/314625
“Obama Got Osama” products hit marketplace, reports USA Today. Anyone want to take a shot at that Right of Publicity analysis?
Within hours of President Obama announcing late Sunday night, May 1, 2011 that Osama bin Laden had been killed, merchandise with the phrase “Osama Got Obama” was hitting the marketplace. What are the Right of Publicity implications? Granted, it is a catchy phrase, and it certainly is a newsworthy event. A product with the first name of an elected official (the President of the United States), as well as that of a deceased foreign national/terrorist/public enemy #1. This could be a bar exam question!
Here’s a link to the story in USA Today: http://www.usatoday.com/money/industries/retail/2011-05-02-bin-laden-death-merchandise_n.htm?loc=interstitialskip
The Right of Publicity was recently mentioned in the Hollywood Reporter’s ongoing Charlie Sheen coverage. The article located at the link below notes that catchphrases like “Here’s Johnny” have been ruled to implicate a person’s Right of Publicity (Johnny Carson, in relation to “Here’s Johnny”).
The Hollywood Reporter also posted an article covering the licensing deals Charlie Sheen’s representatives have put together, some of which focus on Charlie Sheen’s phrases like “Tiger Blood,” “Adonis DNA,” and “Winning.” At the same time, these phrases have been the subject of a rash of trademark applications as well–though not by Charlie Sheen.
It has been reported that Sheen’s representative, FEA Merchandising (a Live Nation subsidiary) has been pursuing unauthorized uses of Charlie Sheen’s name, image, and catchphrases, including recent product offerings that have popped up on sites like Zazzle.com.
The question that may have to be answered in those instances where infringement is alleged is whether or not Charlie Sheen is identifiable from the use.
Here is a link to one of the Hollywood Reporter articles covering Charlie Sheen’s recent media blitz:
Albert Einstein’s heir is “outraged” that she doesn’t receive part of Albert Einstein licensing income
Evelyn Einstein, the 69 year old granddaughter of the famed physicist Albert Einstein, says she is “outraged” that she doesn’t get paid a part of the income derivived from the licensing of Einstein’s name, image and likeness. That Einstein yields substantial revenues is no secret–he is a perennial entry on Forbes’ annual Top-Earning Deceased Celebrities list–but the legal basis for Evelyn’s claim to entitlement seems to be a mystery.
I’ve heard it before many times: “But I’m a blood relative!” goes the rally cry. Of course, this has little to do with the distribution of assets and rights through a will or trust. The next declaration is usually “I need the money” or “It’s not fair.” Perhaps, but most people are familiar with this in the context of estate administration. The wealthy uncle leaves his assets to a favorite relative and leaves others out for whatever reason (or no reason at all). The result can be harsh to those who are left without a share, but the law by necessity tolerates and supports such results.
I had the opportunity to travel to Jerusalem and meet with those responsible for administering Einstein’s licensing program. The distribution of Einstein’s intellectual property rights is clear from his testamentary documents. The Hebrew University of Jerusalem was chosen by Einstein to receive not only his literary rights but also the intellectual property rights to his name, image and likeness.
Whether or not Einstein could have envisioned the business that stems from licensing of uses such as “Baby Einstein” or Einstein lookalikes in commercials is irrelevant. Einstein made his choice and entrusted his literary and intellectual property rights to the University, which for its part is doing a diligent job in being selective in what merchandising and advertising of Einstein is allowed.
Einstein died in 1955. It has been 56 years since Einstein’s asset distribution took effect. Evelyn’s claim might be a bit late at this point.
Here’s a link to the story: http://www.cnn.com/2011/US/02/10/california.einstein.granddaughter/index.html?hpt=T2
Headlines in the deceased celebrity universe were made this week when Authentic Brands Group LLC announced that it has bought the controlling interest in the late Marilyn Monroe from its long-time owner and administrator, Mrs. Anna Strasberg. Authentic Brands already controls the rights to reggae legend Bob Marley, and has announced substantial plans for the revitalization of the Marilyn Monroe business.
Authentic Brands is reportedly developing a Marilyn Monroe-themed reality show, and is rolling out plans for Marilyn-branded makeup and lingerie offerings. Here is a link to the story with additional information from Authentic Brands’ head, Jamie Salter. http://www.bloomberg.com/news/2011-01-13/dead-celebrity-dealmaker-salter-buys-marilyn-monroe-name.html
The January 13, 2011 edition of the TLL Daily Advisor [ http://www.tlldailyadvisor.com ] covered the news by adding that Marilyn Monroe has been the subject of recent litigation, and that there are various entities claiming to own or control some aspect of Marilyn’s rights or images. One of the biggest challenges the owner or representative of rights like those concerning Marilyn Monroe must face is policing the marketplace. Without a strategy for identifying and resolving unauthorized uses, a brand’s upward potential will always be more limited than it would otherwise have to be.
Another article from Bloomberg lists some of the recent deceased celebrity headlines, including the $27,000 Montblanc limited edition John Lennon pen, and estimates that the market for deceased celebrities is around $2.25 billion annually. http://www.businessweek.com/magazine/content/11_04/b4212020763824.htm
Athletes filing for trademarks makes front page of New York Times and Saturday Night Live’s Weekly Update
The New York Times’ December 9, 2010 edition ran a front page story on athletes seeking trademark protection for their names, logos, or catchphrases with which they are identified. << http://www.nytimes.com/2010/12/10/sports/10trademark.html?_r=2&ref=todayspaper >>
The story, entitled “Sports Stars Seek Profit in Catchphrases,” references recent trademark filings by the New York Jets’ Darrelle Revis and other NFL athletes like Terrell Owens, Michael Strahan and Jared Allen, as well as the NBA’s Manny Ramirez. << http://www.USPTO.gov >> The story reports that Darrelle Revis has applied for the trademark “Revis Island” for goods ranging from t-shirts, sweatshirts, sweat pants, hats, and other apparel items, and that Terrell Owens has applied for “I Love Me Some Me.”
The New York Times story also notes that Chad Ochocinco has launched a business around his catchphrases like “Catch Me If You Can,” “Kiss da Baby,” and “Child Pleez,” offering t-shirts and women’s underwear featuring the phrases, but that he has not filed for trademark protections on these phrases. The former Mr. Johnson does have a registered trademark for a COC design. << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.11.1 >> As an aside, it’s probably not a good thing when a team’s receiving corp has the same number of reality shows as wins in a season, but at least for the Bengals’ receiving duo recognizes the importance of protecting their respective intellectual property rights.
To be more precise, Owens applied for “I Love Me Some Me” in 2007, and is the owner of a finalized registration, not merely a trademark application. << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.2.3 >> “Revis Island” was applied for in early 2010, and has been published for opposition and is likely to be a finalized registration very soon as well. << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.3.1 >> Michael Strahan has been the owner of the registered trademark “Stomp You Out” since 2008. << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.4.1 >> By way of comparison, check out the search results for the words Tiger Woods: << http://tess2.uspto.gov/bin/showfield?f=toc&state=4008%3A2tq643.1.1&p_search=searchss&p_L=50&BackReference=&p_plural=yes&p_s_PARA1=&p_tagrepl%7E%3A=PARA1%24LD&expr=PARA1+AND+PARA2&p_s_PARA2=tiger+woods&p_tagrepl%7E%3A=PARA2%24COMB&p_op_ALL=AND&a_default=search&a_search=Submit+Query >> or the results for Michael Jordan: << http://tess2.uspto.gov/bin/showfield?f=toc&state=4008%3A2tq643.1.1&p_search=searchss&p_L=50&BackReference=&p_plural=yes&p_s_PARA1=&p_tagrepl%7E%3A=PARA1%24LD&expr=PARA1+AND+PARA2&p_s_PARA2=michael+jordan&p_tagrepl%7E%3A=PARA2%24COMB&p_op_ALL=AND&a_default=search&a_search=Submit+Query >>
The New York Times story also notes an interesting aspect to LeBron James’ arrangements with Nike, stating that Nike owns the rights to the name LeBron. The story states that LeBron signed an agreement with Nike when he was 18, though it does not specify if that agreement is the one that granted the rights to the name LeBron to Nike. It is hard to imagine that such an arrangement would be without a number of limitations to Nike’s claim to LeBron, as compared to LeBron’s ability to exercise his own rights in and to his name. These distinctions could be based upon the distinction between the Right of Publicity and a the rights afforded by a trademark. Nevertheless, Nike is the owner of a series of registered trademarks for the name “LeBron,” including << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.10.6 >> << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.10.5 >> and << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.10.4 >>
It is my experience that athletes (and other notable personalities) are sometimes almost forced to seek protection of this kind, as a component to establishing a foundation of intellectual property rights that can prevent unauthorized and infringing uses. A substantial market exists for products associated with famous personalities, whether they are officially licensed or are infringing products. Trademark registrations can be a useful complement to the Right of Publicity in such instances.
The TLL Daily Advisor of December 10, 2010 picked up on the New York Times story in its summary entitled “Missing the Mark.” They noted that the New York Times‘ coverage failed to point out that part of the benefit to an athlete in seeking trademark registrations is that the business surrounding that mark then belongs to the athlete, not the team, league, or players’ association. << http://www.tlldailyadvisor.com/ >> The TLL Daily Advisor states “Generally, if another entity (say a team) uses a phrase or image before the player applies to protect it, the first user gets the rights.” Actually, there is a lot more to the process than “first to file.” While some other countries follow the first to file approach, the U.S. system usually considers the propriety of the party seeking registration. I think most would agree that this is the better system, preventing opportunistic prospecting of marks by would-be infringers. One is reminded of the cybersquatting frenzy that took place in the 1990s and early 2000s, where the first one to apply for a domain name like “HumphreyBogart.com” would be the one to get it. See the National Arbitration Forum decision in that domain dispute here: << http://www.adrforum.com/domains/decisions/144631.htm >>
The TLL Daily Advisor also correctly notes that the business involving the trademarks associated with an athlete will generally direct the cash flow and control over use to the player directly, bypassing the players’ association that might otherwise administer and control commercial uses of a player. I think that the players associations of most leagues generally do a good job and provide a service to its constituency overall. That said, one only needs to look at recent cases such as the retired NFL players class action suits against video game manufacturers and the players associations to see that isn’t always the case. Here is my blog analyzing the award of $29 million to a class action of retired NFL players in a suit against a video game manufacturer: << http://rightofpublicity.com/analysis-of-the-29-million-jury-award-to-retired-nfl-layers >> Also see: << http://rightofpublicity.com/john-maddens-opportunity-to-speak-on-behalf-of-retired-players >>
The TLL Daily Advisor article also notes that these issues could raise a Right of Publicity issue, but concludes that it “could be a very gray area.” I’m not sure it really is all that gray, but there certainly is a need for practitioners who are experienced with the ins and outs of this area of the law and the business surrounding it. There isn’t a lot of them because it is difficult to get clients, and equally hard to get on the “inside” of the deals and opportunities that famous personalities enter into or have available to them.
To conclude on a light note, I noticed that on December 11, 2010, Saturday Night Live got in on this coverage during Weekly Update with Seth Myers. Myers states that Revis is seeking a “copyright” for Revis Island, Terrell Owens has applied for “I Love Me Some…” and Michael Strahan has “Stomp You Out,” setting up a Brett Favre punch line based on one of Al Pacino’s famous lines from Scarface. I’ll give Seth Myers a break for mistakenly saying “copyright” instead of “trademark.” He’s certainly not the first anchor or reporter to use these legally distinct terms interchangeably. I wrote a lighthearted comment on this phenomenon in Res Gestae, the magazine of the Indiana State Bar, entitled “Tradewrongs: Adventures in un-Intellectual Property.” Here is a link to that article: << http://www.luminarygroup.com/Press_Center/Articles/ResGestae_2004-10.pdf >>
Every Halloween brings another Forbes’ Top-Earning Dead Celebrities list and, usually, a few surprises
It’s almost Halloween, and Forbes has released its annual list of Top-Earning Dead Celebrities. I won’t give away the list here, but I will note a few observations. First, there are a few intriguing new entries on the list. Sometimes, it seems, what’s bad for the person is good for business. Just ask Michael Jackson. Second, a few former perennial entries have dropped off the list. Third, even in a “down” economy, the claimed earnings of those on the list appear to increase almost every year, sometimes substantially. Certainly the interest in, and thus market for, deceased famous personalities, is not waning. Here is a link to the Forbes list:
While the right of publicity is not articulated specifically, the legal doctrine made its way into the dialogue of NBC’s 30 Rock. Specifically, in the October 7, 2010 episode of 30 Rock entitled “Let’s Stay Together,” Liz Lemon (Tina Fey) is approached by Pete (Scott Adsit) on her production staff, and the following dialogue ensues:
Pete: Liz, quick question about the Johnny Appleseed sketch. Does it hurt it if we can’t call him Johnny Appleseed?
Liz: Yes! Why?
Pete: Well, Johnny Appleseed was a real guy and his descendants are very litigious (both roll eyes). So, here is a list of the names that legal says we can use: Jerry Bananaseed…and…nothing else.
Liz: Great so what are my choices? Either I argue with legal or I spend all day writing something else. Does anyone care how hard I work…?
Pete: (interrupting) Doh! We can’t use Jerry Bananaseed, someone with that name killed a bunch of nurses in Portland.
Later in the episode, Lemon is complaining to Jack Donaghy (Alec Baldwin) about how she doesn’t feel respected by her staff. She references not being able to do the stupid Johnny Appleseed sketch, prompting Jack to say:
“Whoa, whoa, whoa, you are not doing a sketch on the Appleseed family. Monty Appleseeed and I share a liquor locker at the opera.”
Who says the Right of Publicity can’t be funny?
Lingerie company launches ad campaign featuring Princess Diana lookalike on anniversary of Diana’s death
On the anniversary of the death of the People’s Princess, lingerie company Jealousy International has launched an ad campaign featuring a Diana, Princess of Wales look alike. In a CNN story, commentator states that there is nothing anyone can do when it occurs posthumously. Michael Jackson and James Dean are referenced as examples who have no rights or basis to object to commercial infringement. As any reader of this website knows, the rights of a deceased personality (such as those named) are generally going to be enforceable against commercial exploitation and appropriation. Here is a link to the CNN story:
Madonna has entered into a variety of licensing and branding deals recently including with her daughter, Lourdes. One of those deals is for an exclusive line with Macy’s to be called “Material Girl” after the nickname she has been known by since her hit song of the same name in the 1980s.
L.A. Triumph has filed a lawsuit to stop use of the Material Girl name by Madonna and Macy’s, on the basis that it has been using a line also called “Material Girl” since 1997.
This situation raises a variety of interesting questions concerning right of publicity and trademark. It can hardly be debated that “Material Girl” is a well-known, long-standing, and unequivocal reference to Madonna. Madonna has stated that she in fact does not like that nickname, as detailed in the article located at the link below. However, there is little question that commercial use of a nickname can be just as much a right of publicity violation as use of the person’s actual name. In my Right of Publicity classes, I use the idea of something that is “unequivocally identifiable.” In this instance, I believe Madonna is unequivocally identifiable by the nickname “Material Girl,” whether she likes it or not.
However, there is the possibility of an entity acquiring trademark interests in a name that it has been using for a long time. L.A. Triumph has reportedly been using the name “Material Girl” for over a decade. One question I have is whether L.A. Triumph’s line makes any other association to Madonna, whether overt or tacit. Perhaps that will be investigated as the lawsuit evolves.
Here is a link to the story:
A former model has sued the band Vampire Weekend alleging unauthorized use of a Polaroid photo of her on the cover of their release “Contra.” The model, Ann Kirsten Kennis, is seeking $2 million in damages for use of a Polaroid picture taken of her in 1983. Kennis’s lawyer said the picture was a private family photo and not a modeling picture intended for commercial use. Her lawyer says that that Kennis’ mother sometimes sold collections of the photographs she took to shops and charity bazaars.
The picture made its way to photographer Tod Brody, who is also named in the suit. The lawsuit alleges that Brody informed Vampire Weekend that he took the picture, and further alleges that Brody forged Kennis’ signature on a release form. Vampire Weekend apparently paid $5,000 for the picture. In a statement, Vampire Weekend said “As is standard practice, Vampire Weekend and XL Recordings licensed the rights to use the photo on the cover of Contra pursuant to a license agreement that contains representations and warranties authorizing this use of the photo. Now that a lawsuit has been filed, we look forward to having the matter resolved in court.”
If you’ve been to Times Square, you’ve probably seen them. On one side is the Naked Cowboy, Robert Burck, known for wearing only white underwear, cowboy hat and boots while singing and playing guitar throughout the year, in Times Square. On the other side is the Naked Cowgirl, known for wearing a bikini, cowboy hat, and cowboy boots while singing and playing guitar throughout the year, in Times Square.
Robert Burck, the Naked Cowboy claims that the Naked Cowgirl, Sandra Brodsky, is infringing the look and act he started over a decade ago. The Naked Cowboy has trademark registrations and has licensed his name and related intellectual property rights, including his right of publicity, in a variety of contexts as this site has previously reported. He also has attempted to set up a franchise system whereby others seeking to perform a similar act can do so under agreement from Burck. Brodsky has refused to sign such an agreement, claiming that the payments to Burck would make it economically unattractive to continue the act.
Burck also filed suit against Mars, Inc. in 2008, concerning a billboard campaign in Times Square depicting the M&M characters in a style similar to the Naked Cowboy. That case settled under confidential arrangements.
Here is a link to the complaint filed by Burck in late July, 2010:
California amends its right of publicity statute, adding provisions for soldiers and others who become famous due to death
This is significant because while the existing 3344.1 of the California Civil Code provides a 70 year term of post-mortem protection, it is for those who meet the criteria of personalities: “any natural person whose name, voice, signature, photograph, or likeness has commercial value at the time of his or her death.” This would suggest that those who are not personalities at the time of their death might not be eligible for protection under the prior version of the California statute. The new bill clarifies this point by adding that “personalities” includes those “whose name, voice, signature, photograph, or likeness has commercial value…because of his or her death.”
The bill was sponsored by former Marine and current Assemblyman Paul Cook, because of the recent emergence of websites selling T-shirts with names of American soldiers killed in the Iraq War. Other states have enacted similar provisions in recognition of soldiers or others who become famous because of their death, including Arizona (Ariz. Rev. Stat. § 13-3726 (2009), Florida (Fl. Stat. § 540.08 (2009); Louisiana (La. Rev. Stat. § 102.21 (2009)), Oklahoma (Okla. Stat. tit. 21, § 839.1A (2009)) and Texas (Tex. Prop. Code Ann. § 26.001 et. seq. (2009)).
The California statute was amended in 2007 to clarify or confirm that the statute’s provisions were retroactive to those who died before the effective date of the statute (1985). Presumably then, the new bill’s provisions are retroactive as well.
Professional wrestler and reality TV mainstay Hulk Hogan has filed a claim against Post for an advertisement for Cocoa Pebbles cereal in which an animated character based on Hogan’s likeness appears. The suit was filed in Florida district court. In the Cocoa Pebbles ad, Fred Flintstone and Barney Rubble are in the ring against an opponent with long blond hair and a long blond mustache referred to as “Hulk Boulder.” Hulk Hogan went by the name Hulk Boulder in the 1970s. The commercial kept running after Hogan originally objected to it in August 2009.
In the advertisement, the Hulk Boulder character initially wins a match against Fred and Barney, and eats a bowl of Cocoa Pebbles, but then Pebbles and Bamm-Bamm toss Boulder into the air. Boulder breaks into pieces upon landing, which Hogan characterized as humiliating in his complaint.
Widow of Fred Astaire files lawsuit over annual dance awards ceremony named “Fred and Adele Astaire Awards”
In early June, Robyn Astaire, widow of dance legend Fred Astaire, filed a lawsuit in the Southern District of New York, for the purpose of blocking use of Astaire’s name in conjunction with the Fred and Adele Astaire Awards, to be held at John Jay College.
The awards ceremony, which seeks to recognize dance perofrmances and choreography work in Broadway productions and film, has been held for the last twenty-eight years. Based on the allegations in the complaint, Fred Astaire licensed use of his name in 1982 for the Astaire Awards, as they were known at the time. Robyn Astaire continued the tradition by occasionally allowing use of Fred Astaire’s name for the event, but in 2006 stopped giving such authorization because she felt the nature of the event had changed.
Here is a link to the full story:
Major developments are taking place on the Right of Publicity legislation front. Unfortunately, they are not favorable to those who support or rely on recognition of the Right of Publicity. As previously reported here, Michigan, New York and North Carolina are all presently considering Right of Publicity legislation. There are some unprecedented provisions in the Michigan and New York bills which have the potential to render passage of a Right of Publicity law in these states a Pyrrhic victory, at best.
It is apparent that the unified, well-funded business interests seeking to taper back Right of Publicity recognition are gaining more traction in shaping the law than the handful of individual voices who will be affected by these laws. It would be nice to see the players associations of the various professional sports leagues voice objection to these developments. If these bills are passed with such one-sided provisions, it will detrimentally impact the past, present and future athletes that the players associations ostensibly exist to serve.
What exactly are those provisions? Well, as you can see for yourself by visiting the links to the respective bills (included below), there is now an unqualified exemption for video games in Michigan’s bill. Prior versions of the bill sought some kind of limitation, such as use in a video game that is incidental or fleeting. No such limitations are included now, rendering the obviously commercial product of video games on the same level as books and newspapers.
Not to be outdone, New York’s law has the same outright exemption for video games. But it goes further, and also provides more unprecedented exemptions for greeting cards, games that use multiple personalities, calendars, and tee shirts.
I question whether a judge can be expected to differentiate between a short sleeve shirt, baby tee, jersey length tee, embroidered tee, or designer shirts, for example, so it seems likely that tee shirts would encompass all of the above. And since there can’t really be a legal distinction based on sleeve length or whether an article of clothing has a hood on it, it follows that it would also include sweatshirts, team jerseys, sweaters, jackets, and other garments. While the bill provides that the exemption does not apply if the person’s name or image is on the label of the garment, that is rare in the universe of licensing personalities. Typically, the use hinges on the name and image of the personality appearing prominently on the front of the garment.
The categories of apparel, greeting cards, games, calendars and video games are some of the most important in the licensing industry. No doubt those companies that create and sell products using famous people’s names and images would love the ability to commercialize those valuable assets without the burden of paying for those rights, or seeking approval in the event that the famous individual or his or her heirs would prefer not to be involved in the product at all. It isn’t all about money, after all.
My experience dictates that retired or deceased athletes will be especially susceptible to the impact of these exemptions. Even if such parties still have Lanham Act claims available, pursuit of an infringement on trademark grounds is different from Right of Publicity grounds. Those who argue that the Lanham Act claims alone should be sufficient are essentially telling the carpenter to use the side of a wrench to pound in a nail, while walking off with the carpenter’s hammer. The Right of Publicity is clearly the right tool for this job.
These one-sided provisions appear to be popping up in every state that is presently considering a Right of Publicity bill. Yet, the last twelve to eighteen months have brought litigation by Jim Brown, various NCAA athletes, and not one but two class action suits by former NFL players against Madden Football concerning alleged abuses of these individuals’ Rights of Publicity. Even in the absence of express exemptions for video games, it is apparent that those being included in video games without permission feel that significant abuses are already occurring. One can not expect such instances to diminish in the wake of a law shielding video games altogether.
If you are in position to voice opposition to these sweeping, unprecedented and one-sided exemptions, please send your written opposition to the appropriate parties backing these bills. Similarly, if you have access to those who might be directly affected by these bills, please arrange for them to voice their opposition.
If these bills were to become law, it would be worse than merely a Pyrrhic victory; it would be a loss in disguise as victory.
Here is a link to the Michigan and New York Right of Publicity bills:
Michigan House Bill 5964, sponsored by Representative Byrnes: http://052.housedems.com/
New York S06790, Senate Majority Leader, John Sampson: http://www.nysenate.gov/senator/john-l-sampson/contact
Summary of the Bill: http://assembly.state.ny.us/leg/?bn=S06790&sh=t
Text of the Bill: http://assembly.state.ny.us/leg/?default_fld=&bn=S06790%09%09&Text=Y
Lindsay Lohan has filed a lawsuit in New York against E*Trade, seeking $50 million in compensatory damages and $50 million in punitive damages. She also seeks to have the advertisement pulled. The advertisement, which premiered during Super Bowl XLIV, involves an off-screen female voice asking the on-screen E*Trade baby through a video chat if “that milkaholic Lindsay” was over when he didn’t call her the night before, prompting another baby, Lindsay, to step into the camera and ask “milk-a what?”
Is Lindsay Lohan identifiable from the E*Trade use? Lohan’s attorney has stated that Lohan is famous on a single-name basis, just like Oprah or Madonna. Whether that can be established may be up to the judge or jury if the parties don’t settle the claim first.
Here is a link to the story:
The policies of the NCAA concerning use of student athletes’ names, images and likenesses have been a lightning rod for controversy in recent years. Most recently, former UCLA basketball star Ed O’Bannon achieved an interim victory when, on February 8, 2010, a judge in San Francisco denied the NCAA’s motion to dismiss a class-action lawsuit led by O’Bannon. A large part of the claim centers around the NCAA’s agreements that athletes must sign, allowing the NCAA use of students’ names and images for the NCAA to promote events, activities or programs. Since I have colleagues or clients on both sides of the aisle, I’ll remain neutral on the issue and let you come to your own conclusions. Here’s a link to the story:
HB 1335 Provides that, for purposes of the law concerning rights of publicity: (1) to codify the common law in existence before July 1, 1993, the law applies to a cause of action commenced after June 30, 1993, regardless of when the cause of action arose; (2) if a personality died testate before July 1, 1993, the rights recognized under the law are deemed to be in the possession of the current holder of the interests of the beneficiary of the residuary clause of the testamentary instrument as if the rights had been distributed according to the testamentary instrument and transferred according to the rights of publicity and, if a personality died intestate before July 1, 1993, the rights recognized under the law are deemed to be in the possession of the current holder of the interests as if the estate had been distributed according to the law where the estate was probated and transferred according to the rights of publicity; and (3) if a testamentary instrument does not contain an express transfer of the deceased personality’s rights of publicity, a provision in the testamentary instrument that provides for the disposition of the residue of the deceased personality’s assets is effective to transfer the rights recognized under the law in accordance with the terms of the provision. Makes other changes concerning the transferability and descendibility of rights of publicity
I have read the substance of HB 1335 and I’m inclined to give my support to its provisions as currently drafted. The entire bill can be viewed at this link: http://www.in.gov/apps/lsa/session/billwatch/billinfo?year=2010&request=getBill&docno=1335
Last week, I had the opportunity to speak at the American Intellectual Property Law Association’s annual mid-winter conference in La Quinta, California. The panel presentation I was part of focused on various intellectual property matters, while my specific presentation concentrated on recent Right of Publicity cases and legislative developments. The Right of Publicity presentation generated a strong crowd response and dialogue, which made for an engaging session. The conference featured decorated speakers including senior executives from IBM, Microsoft, Texas Instruments, Palm, AT&T, Lockheed Martin, Caterpillar, and many others, as well as attorneys from all over the world. AIPLA puts on an impressive program and I would highly recommend it. The location, La Quinta, was quite impressive as well. Be sure to check out AIPLA’s future programs at http://www.AIPLA.org for more information.
Shaquille O’Neal files lawsuit against Las Vegas company for “Shaqtus” portrayal and other infringing activities
A few weeks ago, it was Michael Jordan suing Chicago-based grocery stores, this week it is Shaquille O’Neal suing a Las Vegas business called True Fan Logo. In both instances, businesses from the hometown of the NBA teams Jordan and O’Neal played for (respectively) used the Right of Publicity of each player without authorization.
O’Neal has a company in place for handling the management of his intellectual property rights, including his trademark and Right of Publicity. Mine O’Mine, Inc., O’Neal’s company, is therefore named as the plaintiff in the lawsuit, which was filed against defendant True Fan Logo as well as the individuals who own True Fan Logo.
The activity giving rise to the lawsuit relates to defendant’s online store named “Shaqtus Orange Clothing Co.” as well as some interesting exchanges between the parties.
When O’Neal played for the Phoenix Suns, he was known as “The Big Cactus” and “The Big Shaqtus.” O’Neal now plays for the Cleveland Cavaliers.
The lawsuit states that the defendant’s web site displays an animated cactus character with O’Neal’s likeness, wearing an orange “Phoenix Shaqtus” jersey and the number 32, which was O’Neal’s number when he played for the Suns.
The law suit also includes allegations of some interesting exchanges between defendant’s company and ESPN, including defendant’s issuance of a cease and desist letter to ESPN claiming that defendant owned the rights to the Shaq cactus image, but offering to resolve the matter if ESPN would do business with defendant. Reportedly, ESPN responded that it had permission from Shaquille O’Neal’s company for the ESPN cactus portrayal, and that in fact it was defendant’s who were infringing upon O’Neal’s intellectual property rights.
The law suit also details an exchange between the parties in which defendant’s claim that Shaquille O’Neal consented to defendant’s use of the Shaqtus name when O’Neal posed for a picture with defendant and signed a t-shirt for the defendant.
The lawsuit includes claims ranging from trademark infringement, dilution and unfair competition to cybersquatting for defendant’s use of domain names that employ O’Neal’s intellectual property rights.
Perhaps the circumstances giving rise to this lawsuit, if taken at face value, may explain why athletes are sometimes reluctant to sign autographs for “fans” who then try to exploit that autograph, photograph or brief interaction for commercial gain.
PETA has launched a new advertisement featuring Michelle Obama, Oprah Winfrey, Carrie Underwood and Tyra Banks. PETA did not get permission from the First Lady for her inclusion in the advertisement. PETA’s response to the mounting criticism is that PETA “wouldn’t have sought” Obama’s permission because PETA “knows” the First Lady “can’t make such endorsements.” Here’s is a link to the story with an image of the advertisement:
The Chicago Sun-Times has reported that Michael Jordan has sued two Chicago-area grocery stores for advertisements for the grocery stores featuring Jordan’s name and number 23 which ran in Sports Illustrated. The ads for Jewel and Dominicik’s offer congratulations to the Chicago Bulls legend for his induction to the Basketball Hall of Fame, while also promoting steaks and other goods available at the grocery stores. The lawsuits seek at least $5 million in damages from each of the stores. One of the ads depicts Jordan jumping through the billboard with the tagline “You are a cut above” along with a coupon for a steak at the grocery store. The Jewel ad features a pair of shoes that Jordan claims are a “misleading copy” of his signature Nike Air Jordans. Here is a link to the story:
General Chuck Yeager, known for breaking the sound barrier amongst many other distinctions in his career, has won a ruling against AT&T for the unauthorized use of his right of publicity. The story at the following link gives a bit more detail, although it also characterizes breaking the sound barrier as itself a protectable intellectual property asset.
The private equity firm that purchased a controlling share in the intellectual property rights pertaining to Bob Marley is predicting that gross revenue associated with Bob Marley could surpass $1 billion by 2012.
The revenue predictions are based on pending deals featuring Bob Marley in the electronics, video game, beverage and skin care product categories. It also is interesting to note that this firm, Hilco Consumer Capital, has also announced its first-phase plan to crack down on unauthorized uses of Bob Marley’s name, image and likeness. In a down economy, pursuit of unauthorized uses coupled with the potential of litigation can be an effective supplement to the accounts receivable column.
If the estimates ring true, the reported acquisition price of $20 million will prove to have been a good investment. Here is a link to the story:
Time Magazine has recently reported on a “Mandela Burger” offered by a cafe in Copenhagen, named after Nelson Mandela.
What is not articulated in the Time coverage is that the Cafe itself is named Cafe Mandela. If a “Mandela Burger” is an actionable violation, so too is “Cafe Mandela.”
Mandela and his Foundation are based in South Africa, and the cafe is based in Denmark.
The new 2009 Forbes list of “Top Earning Dead Celebrities” has just been released. A Halloween tradition, this year’s list brings a few surprises along with some, but not all, of the usual suspects.
Of note are the significant numbers these personalities pulled in, with the first spot occupied by Yves Saint Lauren at a reported $350 million. A few years ago, $50 million would have guaranteed the top spot. This year, that amount would barely earn a spot in the top 5, with J.R.R. Tolkien holding the number five slot at a reported $50 million.
On closer examination, most of the larger-than-usual numbers are driven by one-time events. The Yves Saint Laurent entry was primarily a result of an auction of an art collection he owned with his partner. The runner-up, Richard Rodgers and Oscar Hammerstein, claim a reported $235 million as a result of a $200 million acquisition of the rights to Rodgers’ and Hammerstein’s creations by a Dutch pension fund. Michael Jackson pulls in at number three, with a reported $90 million stemming from earnings from a merchandise deal, the Sony film This Is It, and the significant increase in sales and airplay of his music catalog following his death. Elvis is the first perennial entry, claiming $55 million for the number four spot on the list. Tolkien’s $50 million, enough to pull in a top five entry, was the result of a settlement between the HarperCollins and New Line Cinema over a dispute over unpaid royalties.
In each of these cases, the circumstances will not repeat and many of these names will drop off. That said, I expect that Michael Jackson will be even higher on the list next year. J.R.R. Tolkien will no doubt reemerge after the release of the Lord of the Rings prequel, The Hobbit, in 2011.
Through it all, Elvis and Albert Einstein remain perennial entries, with John Lennon and Jimi Hendrix also proving to be safe bets. Three out of four of those are musicians, in part because the value of an iconic music catalog can serve as an almost inexhaustible asset with no pre-determined cap on potential earnings. I’ll leave it to you to figure out the past perennials who have dropped off the list, although at least a few of the comments on the Forbes website for this story have picked up on these absences.
The complete Forbes 2009 list can be accessed at:
Deceased comedian and Saturday Night Live alum Chris Farley is at the center of a controversy concerning the use of a Farley clip in a DirecTV advertisement. The advertisement involves a clip from the movie “Tommy Boy.” Critics allege the ad is in poor taste.
The ad deviates from being simply a movie clip when new footage of Spade involves his pitch for DirecTV. “Great, I’m here with tons of fun, but I could be at home with DirecTV” Spade says.
The right of publicity exists in no small part to ensure that, at the very least, those decisions can be made by the heirs and not the public at large.
I am reminded of a television ad for GMC trucks, involving a still image of Rosa Parks along with many other personalities and images, such as Martin Luther King Jr., a former President, Neil Armstrong, as well as iconic images from U.S. history. Shortly thereafter, an op-ed ran in the New York Times stating that it was inappropriate for Rosa Parks to be hawking trucks.
The decision to license the image of Rosa Parks was carefully considered by those charged with that responsibility. Ultimately, permission was granted because the use was deemed tasteful, not derogatory to Rosa’s legacy, and a meaningful source of needed-funding for The Raymond and Rosa Parks Institute for Self-Development.
The New York Times writer did not point to any other rightsowners included to the same extent in the spot.
Here is a link to the Farley story: http://www.cnn.com/2009/SHOWBIZ/TV/10/27/farley.directtv.commercial/index.html
The FTC is considering new regulations concerning celebrity endorsements and testimonials. As some may be aware, the FTC has previously taken a position concerning the authenticity of certain celebrity endorsements and testimonials, so these developments are not entirely uncharted territory. It is interesting to consider how these regulations could be intepreted with respect to deceased personalities. One might conclude that if a personality is deceased, how can they endorse much of anything? In fact, the matter is not that simple and there are certain dynamics in place which can function in a same or similar capacity as an endorsement from a living person. The extent of the endorsement may also be part of the analysis, such as when an infomercial heavily integrates a given personality, and the strong indication is that the personality uses and recommends the product.
This is more directed at living celebs and infomercials, but it has some potential applicability in both casting and celeb brand licensing and doesn’t appear to distinguish b/t living or dead celebs. It might be something you need to consider drafting specific clauses in the license to address, particularly regarding liability of celebrities for false claims. While no distinction is made between living and deceased personalities, the following are specifically identified:
1. Celebrity endorsers may be liable for statements about a product which are false or do not represent the celebrity’s own views
2. Advertisers should disclose the relationship when the celebrity is pitching a product or service on a talk show or other medium when the it is not obvious that the celebrity is being paid to make that plug.
3. Advertisers should only use endorsements of celebrities if the advertiser believes that a celebrity subscribes to the views presented.
More information is accessible at the following link:
The Right of Publicity was part of 60 Minutes’ season premier episode on Sunday, September 27, 2009, in a segment captioned “A Living For The Dead” which, in updated segments, included reference to Luminary Group and the celebrity clients it represents. I’ve been contacted concerning inaccuracies that the story conveyed. Mostly missing from the story was the idea that representing deceased personalities, in conjunction with the heirs of those personalities, involves an effort to protect and further the legacy of that person, and in many cases the causes which were important to him or her. It isn’t just about money, as the angle of the story seemed to emphasize. There were a few missed opportunities to enlighten the public of the importance of the right of publicity and the work that at least some put into representing departed legends. Here is a link to the CBS story: http://www.cbsnews.com/video/watch/?id=5345034n
It should be apparent to even a casual observer that video games seem to be causing a lot of litigation lately. The latest entry is Courtney Love’s stated intention to sue Activision for its inclusion of Kurt Cobain’s image and likeness (i.e. his Right of Publicity) in Guitar Hero 5. Apparently, Guitar Hero 5 is the first to include some of Nirvana’s signature songs. The songs are not the real issue, however, because an avatar of Kurt Cobain can also be accessed and used to perform other songs besides just the Nirvana material. This scenario creates the possibility that Cobain can be manipulated to perform songs that the real Kurt Cobain might have preferred to never perform. A few years ago, Courtney Love sold her share, or at least majority share, in the Nirvana catalog. The answer may lie in that transaction, and whether it included the right to license and commercialize Cobain’s name, image and likeness. There is at least a chance that the agreement allowed such use, especially if it is in context of licensing the music. Let the debate over unforeseen consequences begin! Here is one link to the topic:
Perhaps I am dating myself by saying so, but I remember when there were no governing rules or dispute resolution procedures in place to govern domain name registrations. I also recall the passage of the UDRP, which led to my involvement in some of the earliest celebrity-based domain name decisions on record. Some of those decisions are still cited today in current domain name disputes. The latest example of a celebrity domain name recovery involves Jay Leno. See http://www.wipo.int/portal/index.html.en
On June 25, 2009, WIPO decided in favor of Jay Leno in his UDRP action to recover TheJayLenoShow.com from a cybersquatter. The case, entitled Leno v Zambrano (Case D2009-0570), pitted Leno against a Texas real estate agent who had registered the domain name in 2004. Zambrano had used the domain name to redirect visitors to his real estate website.
It is interesting to note that at the time the domain name was registered, Leno’s show was actually called The Tonight Show. In the Fall of 2009, following his departure from The Tonight Show, Leno will be hosting a prime time show called The Jay Leno Show. This name, therefore, directly correlates with the domain name in dispute.
The pleadings on behalf of Jay Leno alleged common law trademark rights in his name. For those who have actually handled personality based domain name disputes, it is well known that the right of publicity is not specifically articulated in the UDRP rules governing owernship of domain names. Thus, a personality must either demonstrate ownership of registered trademarks, or argue in a trademark context that common law trademark interests exist. In a way, this is a round-about way to approximate the right of publicity, and historically it has proven to be effective in front of the domain dispute arbitrators.
One interesting takeaway from the ruling is that the arbitrator dismissed Zambrano’s defense of laches. Zambrano argued that his ownership of the domain name for five years precluded Leno from pursuing recovery. The arbitrator ruled that laches does not apply in UDRP proceedings..
Following the usual criteria that a complainant must meet in a UDRP action, the arbitrator ruled that the domain name in dispute clearly incorporated the entire Jay Leno mark, which was confusingly similar to Leno’s mark. The arbitrator ruled that Zambrano had no rights or interests in the domain. Last, the arbitrator ruled that Zambrano knew of Jay Leno and the value of Leno’s name. Taking all these factors into account, the arbitrator ruled that Zambrano had used the domain name in bad faith to attract web traffic to his site for commercial gain.
It didn’t take long, and it might be because of the merchandise in development for the anticipated Michael Jackson tour, but Michael Jackson merchandise is about to hit shelves. Perhaps the most interesting question is, who will have a claim to the proceeds generated by the Michael Jackson products? Stores slated to carry Michael Jackson goods include Target, JC Penney, Hot Topic, and Spencer’s. As reported by the LA Times, Bravado is licensed via AEG. AEG, in turn, had certain rights to create merchandise for the Michael Jackson concert in London. The LA Times story indicates that it is unclear whether Michael Jackson’s heirs will receive a share of the proceeds generated by the products. As predicted by the first blog posted on this site concerning Michael Jackson’s death, the answer to this question may have to be answered by a Judge. Here is a link to the LA Times article: http://www.latimes.com/business/la-fi-ct-jackson9-2009jul09,0,1433764.story
Will Michael Jackson’s Death Spawn a Battle Over His Assets, Including His Intellectual Property and Right of Publicity?
Perhaps it’s inevitable. Michael Jackson’s sudden, tragic death may trigger a battle over his assets, which would include his intellectual property and right of publicity interests. CNN.com has already reported on this possibility at the following link: http://www.cnn.com/2009/SHOWBIZ/06/26/jackson.children.will/index.html
Sometimes, the assets and intellectual property rights of a famous individual will be carefully transferred through testamentary documents based on the celebrity’s wishes. Other times–and more often than many might suspect–it is left for the heirs and potential claimants to fight it out. Adding to the feeding frenzy is the expectation of sudden fortune to be claimed, which tends to bring distant “relatives,” “long-lost friends,” and claimants with even more mysterious links to the celebirty out of the woodwork. I’ve seen it before. Some people claim to be the long lost child of Marilyn Monroe. Others claim to be Marilyn reincarnated. And when Rosa Parks died, a lengthy probate process ensued in Michigan over who had a viable claim to her estate. With not much real property to divide, that battle was almost entirely about Rosa Park’s intangible rights, which essentially is her right of publicity.
In the case of Michael Jackson, it has not yet been disclosed what testamentary documents he may have put in place. His family circumstances are rather complex, so without a clear succession plan for assets like his right of publicity, it could take a team of lawyers and a judicial decree to resolve the question. As the above CNN link reports, it is not known whether he had a will in place at all.
Jackson was married several times, and had children who were born to two mothers, Debbie Rowe and an unidentified surrogate. Rowe gave up her parental rights to her two kids with Jackson, but later sought to have her parental rights reinstated. In the absence of testamentary instructions from Jackson, or any possible assignment of his rights during his lifetime, the laws of intestacy will likely control. Interpretation of a given state’s intestacy likely will include examination of Jackson’s spouses, children, siblings, and parents. Since he had all of the above, it will be interesting to see if things can be worked out amicably.
Even with his reported debt of almost $500 million, I expect Jackson’s assets to be considerable. His music publishing interests, as well as a 25% ownership in the Beatles music publishing catalog, will be valuable for a long time to come. What is less likekly to be reported, but is potentially every bit as valuable, is Michael Jackson’s right of publicity, which would be the subject matter for any advertising or merchandising that issues from this point forward.
Sadly, the craziness that surrounded much of Michael Jackson’s life will probably not stop any time soon, even after his untimely death on June 25, 2009.
Woody Allen has settled a lawsuit against American Apparel for $5 Million. The suit was over two unauthorized billboards for American Apparel in New York and Los Angeles, in May of 2007. The billboards depicted Woody Allen as an Orthodox Jew in a still photo taken from his movie Annie Hall, along with Yiddish text declaring Allen “the High Rabbi.” This website, http://www.RightOfPublicity.com, is referenced in Business Week’s ( http://www.BusinessWeek.com ) coverage of the suit. Another interesting aspect of this situation is that the settlement is being reported and publicized. It is often difficult to ascertain the monetary aspects of a dispute without direct involvement.
Al Pacino and Robert DeNiro, two actors known for avoiding commercial tie-ins, have sued the watch manufacturer Tutima Inc. as well as Overture Films. The advertisements were tied to the film “Righteous Kill” in which Pacino and DeNiro starred. The announcement can be viewed at this link:
The activities apparently included advertisements as well as a clip of Righteous Kill on Tutima’s website.
In the latest celebrity rights acquisition, it was announced recently that investment firm Hilco Consumer Capital has acquired 50% of House of Marley, LLC, the entity founded by the family of Bob Marley, for an estimated $20 million. A press release reports that the new owners will “spend whatever it takes to stop infringements on this business” and estimate that once the market is clear, Bob Marley could represent a billion dollar brand. Hilco has also invested in the intellectual property assets of other businesses such as Sharper Image and Linens ‘n Things. One of the key elements in such an acquisition is the Right of Publicity. Bob Marley is an evergreen property with tremendous potential.
Notable manufacturer Ty (beanie babies) has introduced a line of Sasha and Malia dolls. I have already noted that even elected officials possess a right of publicity, albeit perhaps subject to heightened First Amendment and political speech defenses. Do those defenses apply to Ty here? Here’s the link to the story with pictures of the products: http://www.patentlyo.com/patent/2009/01/sasha-and-malia-dolls-legal-remedies-for-the-obamas.html?cid=146130850#comments