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
The Ninth Circuit Court of Appeals in Maloney v. T3 Media, Inc., Case No. 15-55630 (9th Cir. April 5, 2017), recently issued the latest installment in the age-old supposed showdown between Copyright and the Right of Publicity and the issue of preemption. The Court states in the holding that preemption can occur “when a likeness has been captured in a copyrighted artistic visual work and the work itself is being distributed for personal use.”
To be clear, copyright does not automatically preempt the Right of Publicity. The two doctrines protect distinct interests and, have separate policy purposes. Preemption generally requires a very specific fact pattern. The assumption seems to be that if the Right of Publicity co-exists in tandem with a copyright interest, preemption must be applicable. That is not the case, and there are countless examples of uses, situations and fact patterns where various rights or interests apply simultaneously without one preempting the other. I read Maloney as a fairly confined, and specific ruling on a distinct fact pattern.
Here is a link to an article with more elaboration on the specifics of the case:
If the report on this link is accurate, that a Florida hair clinic used Brian Urlacher without permission to promote their services, this sounds like a clean-cut case of Right of Publicity infringement. Urlacher reportedly had an endorsement deal with a Florida clinic whose services Urlacher did in fact use, which will likely enhance his position in the damages portion of the lawsuit. Here’s a link with a bit more information: Brian Urlacher sues Florida hair clinic
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.