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.

A few thoughts on Forbes’ annual top-earning dead celebrities list

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

Athletes’ tattoos, copyright, and who owns what

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

Tara Reid sues over Sharknado merchandise

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

Thelonius Monk suit illuminates risk in craft beer labels

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:

http://www.sfgate.com/beer/article/Thelonious-Monk-estate-sues-North-Coast-Brewing-12162234.php

Sounds like a Right of Publicity valuation expert is needed in Michael Jackson IRS dispute

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

Article on Canadian Right of Personality

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

Athletes seeking trademarks for catch phrases

ESPN just published an interesting article that surveys a range of athletes seeking trademark registrations on catch phrases or other aspects of identity.  It’s a valuable brand-building step and it has it’s place as a compliment to the Right of Publicity.  What the article does not touch on, the elephant in the room, is the question of actual use.  Sure, Robert Griffin can apply for “unbelievably believable” but show me the use in commerce.  Some athletes obviously will satisfy the use component, but my guess is that the majority of these applications will fall into abandonment, or even fail to to reach registration.

Prince knew the value of his intellectual property

Prince knew the value of his intellectual property, and fought battles other artists didn’t or couldn’t.  And won, in the case of control over his publishing and catalog.  I hope that this awareness extends to Prince’s Right of Publicity.  Hopefully, he had advisers in his life who could raise his awareness on this point.  He could have been quite the advocate for publicity rights recognition.  Maybe it’s time for the Minnesota legislature to put a statute in place in his honor.

Godspeed, Prince.  #RIPPrince

Pope Francis dolls?

Here’s a Right of Publicity fact pattern to kick around:  can a company make Pope Francis dolls without a license from the Pope?

I don’t know if the recently announced Pope Francis dolls from Bleacher Creatures are licensed or not, so I want to be clear on that point and allow for the possibility that they are.  Bleacher Creatures primarily makes 10″ dolls of famous athletes, and they wouldn’t be doing that without permission.

In the link below, I find it interesting that the company is said to be “crossing their T’s and dotting their I’s” but the extent of that due diligence appears to be simply that they “reached out to the Vatican” and “would love to officially partner with them.”  Taken at face value, that strongly indicates that they do not have any form of permission to make the dolls.

Of course, “reaching out” coupled with a statement of desire to “officially partner” is not all that is needed to proceed with commercial products of a famous person.  Perhaps the play here is that the Pope isn’t likely to file a claim over it, but last time I checked, “likelihood of getting away with it” was not the legal standard for Right of Publicity infringement.

http://money.cnn.com/2015/02/16/smallbusiness/pope-francis-plush-doll/index.html

Ruling in favor of Michael Jordan gets it right

Earlier this week, the Seventh Circuit Court of Appeals in Illinois ruled in favor of Michael Jordan, holding that a grocery store’s “congratulatory ad” is not protected speech.  The Jewel Food Stores advertisement in question ran in Sports Illustrated in 2009, congratulating Michael Jordan on his induction to the Pro Basketball Hall of Fame.

While the court’s ruling gets it right, the tone of ESPN’s coverage in the link below indicates that this ruling might not be fully understood.  The coverage in the article is thorough enough to allow the reader to reach his or her own conclusions, I think.  And for the avoidance of doubt, here is a link to the decision itself:  http://media.ca7.uscourts.gov/cgi-bin/rssExec.pl?Submit=Display&Path=Y2014/D02-19/C:12-1992:J:Sykes:aut:T:fnOp:N:1292976:S:0

When the lower court ruled against Jordan, I believed the wrong decision had been reached and I was confident Jordan’s appeal would prevail.

In general, advertising falls in the realm of commercial speech.  And there is quite an incentive for businesses to cozy up to a celebrity like Michael Jordan via advertising of this kind.  The starting fee for an authorized association with Michael Jordan, as reported in the link below and in the above ruling, is $5 million.

I might feel differently if the grocery store had insisted on remaining completely anonymous:  no use of the grocery store’s name, logo, motto, website, address or any other designations.  If that was the nature of the advertisement, I might give more credence to the “congratulatory” argument.  But those kinds of advertisements don’t come around very often.

http://m.espn.go.com/general/story?storyId=10491664&city=chicago&src=desktop

Kanye West responds to Coinye West infringement

File this in the “sad but true” category:  even blatant intellectual property infringements can create a successful PR stunt.  Apparently, the handful of people behind the virtual currency company calling itself “Coinye West” have refused to back down, though they apparently did drop “West” from the name.

As I teach in my Right of Publicity classes, context matters.  Dropping West from the name at this stage does nothing to reduce liability, and really only confirms that the infringer knew the activity was an infringement in the first place.  There also is that small detail of a rendering of Kanye West appearing on the “coin” itself.

I don’t normally take sides in these matters, and Kanye is himself no stranger to either controversy or PR manipulation; nevertheless, this kind of blatant infringement is the sort of thing that the Right of Publicity exists to address.  Perhaps after a legal ruling comes down, the cost of the infringement will be massively more than the PR (or venture capital funding behind the company?) was worth.

We’ll see what happens next.  Here’s a link to the letter sent by Kanye West’s attorneys:

http://online.wsj.com/public/resources/documents/20140107-WSJ-coinye.pdf

Hangover II, Mike Tyson, and copyright claims in a tattoo design

Interesting case of the tattoo artist asserting a copyright claim for the appearance of his infamous Mike Tyson-face tattoo appearing in Hangover II.  It raises a slew of interesting intellectual property questions that I’m not going to research or try to answer definitively here.  But in short, I see a number of problems with the tattoo artist’s position. 

I understand that no objection was made to the appearance of the tattoo in the first Hangover movie.  Perhaps that is because only Mike Tyson appeared in the first Hangover movie, whereas in Hangover II, in addition to Mike Tyson appearing again, actor Ed Helms’ character gets a similar, or perhaps identical tattoo on his face. 

Maybe the argument from a copyright claimant in these circumstances is that the inclusion of his tattoo constitutes an unauthorized display in violation of his exclusive section 106 rights under the Copyright code.  Similarly, perhaps the tattoo on Ed Helms’ character constitutes an unauthorized derivative work, or an unauthorized copying.

If the activities complained of in Hangover II are copyright violations, then the appearance of the tattoo in the first Hangover movie must also have been a violation.  The tattoo artist could hardly object to Mike Tyson appearing in a film, and by virtue of the tattoo appearing on Tyson’s face, well, the tattoo is going to appear as well.  At this point, there could be a viable estoppel defense to the assertion of the claim now, years after the first Hangover movie.

The notion of intellectual property in tattoo designs raises some novel questions.  It is certainly possible to construct a scenario where a copyright, or trademark interests, can be manifest in a tattoo.  If a person gets a Harley-Davidson logo tattoo, it is of a trademarked logo.  If a person gets the lyrics to a song as a tattoo, it certainly could be of a copyrighted work.  But what of a relatively simple configuration of angular lines, like the Tyson tattoo?  Is that even an original work of authorship?  Maybe.  But who owns the copyright in the tattoo design?  Might it be considered a work made for hire, vesting the rights in the recipient of the tattoo on whose skin it appears? 

Or, perhaps there is an implied license allowing the recipient of the tattoo to display the tattoo publicly.  Certainly, when taking the conspicuous step of tattooing a person’s face, the tattoo artist cannot simultaneously expect to enforce the exclusive rights of a copyright owner concerning the right to display, reproduce or even perform the work.  Can the tattoo artist/copyright owner then only selectively enforce his copyright?  Doesn’t this lead to the scenario that anyone who takes Mike Tyson’s picture is committing copyright infringement by making an unauthorized copy of the work, or perhaps even a derivative work?  Displaying the image, then, as in the news, leads to the same result.    

Since the tattoo is part of Mike Tyson’s skin and face, then when Tyson is acting and his face is engaging in expressions, delivery of dialogue, and such, can it be argued that the tattoo is engaging in a “performance?”  Remote, but then so is this whole topic.  I also credit another legal commentator for pointing out that human organs generally are not subject to intellectual property ownership.  The skin is an organ.  While the tattoo and ink are not organs, once permanently embedded in the skin, they would seem to be part of that organ.  I’ll let you take a shot at piecing an argument together based on that interesting line of thought.

To the extent that the tattoo artist could construct a copyright claim in response to at least certain activities, it seems clear to me that this particular form of intellectual property would also be subject to considerable fair use exceptions.  Some of the above points exemplify why.

Just to further complicate things, I’ll mention that the tattoo is so closely and unequivocally associated with Mike Tyson that the tattoo might actually raise potential Right of Publicity considerations.  Those issues don’t exist in the Hangover matter because Tyson obviously consented to appear in the film.  But hypothetically, I can envision a scenario where that tattoo design on a person’s face, let’s say appearing in an advertisement of some kind, could constitute a violation of Mike Tyson’s Right of Publicity.  In this regard, the claim might be even stronger than the copyright claim concerning Hangover II.

Here’s a link to more on the Hangover II tattoo copyright dispute: 

http://today.msnbc.msn.com/id/43138242