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
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
The lawsuit filed by Jason Mraz against MillerCoors, filed December 4, 2019 illustrates various important points and takeaways. View the complaint here: Jason Mraz v. MillerCoors complaint
Reportedly, MillerCoors was a sponsor of the 2019 BeachLife Festival in California where Jason Mraz performed. His performance of course included one of his hit songs, I’m Yours. The complaint alleges that MillerCoors posted an advertisement on Instagram for Coors. The advertisement includes a clip of Mraz performing the song, the Coors logo, display of a can of Coors Light, the phrase “presented by Coors Light,” and in the comments, the added statement “Kicking off summer with the World’s Most Refreshing Beer at the BeachLife Festival.”
While a complaint is not the same as a ruling, at least two of the important takeaways from this case are:
- Social media is advertising.
- Sponsors do not acquire broad rights to third-party intellectual property simply by serving as a sponsor.
Both of these issues come up with some regularity in the business of representing a rights owner and the right of publicity. Claiming that a social media post is somehow different from advertising on the basis that it is a fluid, user-controlled environment, or that serving as a sponsor entitles the sponsor to utilize the rights of anyone other than the party they are in contract with as a sponsor, both can lead to serious problems.
Beyonce suit against Feyonce knockoffs illustrates need for Right of Publicity distinct from trademark
A Judge recently denied Beyoncé’s request for injunctive relief against a Texas company selling a range of products using “Feyonce.”
Apparently, the Feyonce pun is based on the proximity to the word fiancé. The Judge’s ruling, in summary, is that there was not a sufficient showing of potential confusion among customers that Feyonce was infringing Beyoncé’s trademark rights.
Thus, the need for Right of Publicity as a distinct form of intellectual property, that trademark does not adequately address, is illustrated yet again.
Here’s a link to more information on the ruling and the case: Beyonce Feyonce Lawsuit
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
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:
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.
Worth noting a recent ruling out of Florida denying an insurance company’s attempt to dodge coverage for a Right of Publicity claim brought against an insured. This is important in the nuts and bolts of Right of Publicity litigation, for obvious reasons.
The Federal judge apparently denied Princeton Excess and Surplus Lines Insurance Company’s motion to be excluded for coverage, holding that allowing the insurance company to do so would make the supposed coverage illusory. I think this is an important and correct determination.
You’ll need a subscription to access, but Law360 has more information available at this link from July 19, 2016: http://www.law360.com/ip/articles/819002?nl_pk=bb8aeb3e-4ab9-4ba4-a0af-b895a107fd8a&utm_source=newsletter&utm_medium=email&utm_campaign=ip
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.
Interesting article in the Wall Street Journal about the coming challenge of valuing the “image rights” of Prince’s estate. Here is a link: Valuing Prince’s Image Rights
There are some interesting points, as well as some common mistakes, threaded into this article which illuminate the complexity of valuing Prince’s image rights. I must refrain from elaborating, as I would be one of a small handful of qualified candidates to perform such valuation. There aren’t many candidates who are qualified for the task.
As the article notes, the valuation could become a “battle of the experts” but there certainly is a way to value Prince’s image rights in a supportable way. Much relies on a truly qualified expert bringing the appropriate perspective to the matter. It won’t come from books or formulas. The valuation must be done by someone who is very well-informed about Prince’s career, beliefs and principles. (As it turns out, that criteria may make me the most qualified potential expert on the matter.)
Reference in the Wall Street Journal article to the Michael Jackson estate’s representatives claiming a valuation of around $2,000 and the IRS countering with $434 Million shows the critical and sensitive nature of the upcoming Prince valuation.
If only Prince was simply still alive. But fellow artists and musicians, take note: if your attorney isn’t talking to you about the right of publicity, find one who is.
Pierre Garcon, wide receiver for the Washington Redskins, has filed a class action lawsuit against the daily fantasy company, FanDuel. Whether the overall media correctly identifies it or not, this lawsuit is primarily a Right of Publicity claim.
Past lawsuits against fantasy sports providers generally have not been successful. Simply stated, prior cases have held that that publishing game statistics are not a commercial use, much in the same way that a newspaper reports on box scores without incurring liability. This tends to make sense as long as no one player is being singled out, and the use is confined to the statistical performances with every competing athlete being used (or capable of being used) in exactly the same manner. There is, of course, a difference between news reporting on game statistics the day after a game and operating a for-profit site that earns its profit from the players’ performances.
But the real fulcrum point may exist in the advertising and promotion for FanDuel. If a very small collection of players are appearing by name or otherwise in advertisements for a company, and if additional elements like dollar values of a given player or other elements specific to the daily fantasy operation are being added by that company, it quickly could take a different complexion.
Unlike DraftKings, which has authorization from the NFL Players Association, FanDuel apparently does not.
Hollywood Reporter’s “Hollywood Hologram Wars” quotes Faber of RightOfPublicity.com / Luminary Group
Nice to be quoted in Eriq Gardner’s new piece in The Hollywood Reporter entitled “Hollywood Hologram Wars: Vicious Legal Feud Behind Virtual Mariah, Marilyn and Mick.” The article does a great job examining the business potential and burgeoning adoption of so-called hologram technology as well as corresponding growing pains and legal issues, particularly between those developing the technology itself.
In answer to Eriq’s question of “what’s the licensing and business potential for this technology?” I also said that it depends on:
a) what is being counted (fees to the estate, to the owners of the technology itself?); and
b) gross or net; and
c) how the market responds.
If the market responds well to an Elvis live show on a world tour, those gross earnings alone could be well on the way to the billion mark. And if it follows with a Johnny Cash or Michael Jackson tour, yes, it will reach billion dollar potential. And, will people be interested in seeing Michael Jackson “live” once, or over and over?
Here’s the link to Eriq Gardner’s The Hollywood Reporter article:
In ruling for the plaintiffs in Davis v. Electronic Arts earlier this week, the Ninth Circuit has given us the latest interpretation of the Transformative Use test. This ruling comes only a few months following a contrasting ruling in Noriega v. Activision, in which the Transformative Use defense led to a ruling in favor of the defendant.
The Activision case centered on inclusion of former Panamanian dictator Manuel Noriega in Call of Duty: Black Ops II. Former New York Mayor Rudy Giuliani served as co-counsel for Activision, and the following Hollywood Reporter article provides good insight as well as a link to the defense’s memo in support of its motion to strike Noriega’s complaint.
It is interesting to consider if the day might ever come when Rudy Giuliani might want to assert his own Right of Publicity in response to a commercial use of some kind.
In its Davis v. Electronic Arts ruling, the court looked to its prior ruling in Keller v. Electronic Arts, where the court also rejected the Transformative Use defense advanced by EA. The court in Davis v. Electronic Arts stated that the Madden video game “replicates players’ physical characteristics and allows users to manipulate them in the performance of the same activity for which they are known in real life – playing football for an NFL team.”
There are certainly considerable differences between the extent of use, purpose of use, and commercial aspects between the use of former NFL players in the Madden game and that of Noriega in Black Ops II, so in general, I applaud the Ninth Circuit’s rejection of the Transformative Use defense in its determination, and in not taking the usual “throw the baby out with the bath water” that too-often seems to accompany rulings concerning the Right of Publicity, as in the overreaching ruling in Indiana against the heir of John Dillinger in a case against EA.
That ruling led to my effort to amend Indiana’s Right of Publicity statute in 2011 and 2012, which was passed and successfully maintained the integrity of Indiana’s Right of Publicity statute:
Here is a link to the January 6, 2015 ruling in Davis v. Electronic Arts:
The lawsuit brought by former Nebraska and Arizona State quarterback, Sam Keller against video game giant Electronic Arts (EA) and the NCAA has been settled. The reported settlement amount is $20 Million.
A statement by the CLO of the NCAA expressed that the timing of the settlement is based on the fact that the video games are no longer in production, as well as Collegiate Licensing Company (CLC) and EA having settled out of the case as well.
The administrator of this site, http://www.RightofPublicity.com joined SAG and other notable rights holders (via Luminary Group) in filing an amicus brief in support of Keller.
It is not entirely clear yet how the settlement funds will be distributed amongst certain affected college athletes, but more information can be found on this link:
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.
Earlier this week, the NCAA’s petition to the U.S. Supreme Court concerning the case of Keller v. Electronic Arts Inc., 724 F.3d 1268 (9th Cir. 2013) was denied. The author of http://www.RightofPublicity.com joined SAG in filing an amicus brief in that case at the lower court level, and the Ninth Circuit’s ruling and analysis were correct under the circumstances.
Electronic Arts, for its part, had already settled the case. The NCAA petitioned the Supreme Court to adopt the Rogers Test to determine use of the Right of Publicity of student athletes in video games and to overturn the determination that the use of the athletes in the video game was not protected by the First Amendment.
The Rogers Test was devised as an analysis for titles and would have been entirely wrong for the Keller case. It is surprising the Rogers test was even suggested, except perhaps it was believed that if adopted the result would be something the NCAA preferred.
The Ninth Circuit’s application of the Transformative Use test was the correct test for the use and issues in question. We don’t need the U.S. Supreme Court to assist in determining that a test devised for titles should not be used in a case like Keller.
An article in the January/February 2014 issue of The Atlantic entitled Jesse Willms, the Dark Lord of the Internet examines how one person has made a fortune from promoting products with deceptive or even fraudulent online advertisements. The article reports that the ads have included use of either the names or images of famous people.
The article talks about Oprah Winfrey and others who have filed lawsuits based on the fraudulent aspects of the ads, but I wonder if those lawsuits included Right of Publicity claims as well? Without examining the mechanics (jurisdiction, among other things), perhaps a meaningful damages award for a Right of Publicity infringement would serve as a bit of a deterrent?
Here’s a link to the online version of the article in The Atlantic: http://www.theatlantic.com/magazine/archive/2014/01/the-dark-lord-of-the-internet/355726/
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:
The Licensing Journal publishes Jonathan Faber’s article on celebrity licensing, technology, and the Right of Publicity
The Licensing Journal, Volume 32, Number 8, September 2012
“Celebrity Licensing and the Right of Publicity: New Frontiers of Opportunity and Liability”
Here’s a link to where the PDF can be downloaded: http://rightofpublicity.com/pdf/articles/LicensingJournal-Sept2012.pdf
Massachusetts is again considering Right of Publicity legislation for deceased personalities. Here is a link to the bill: http://www.malegislature.gov/Bills/187/Senate/S01713
Observations regarding New Hampshire’s Right of Publicity effort and Governor Lynch’s veto of SB 175
Within hours after delivering a presentation about the Right of Publicity and Celebrity Licensing at the annual Licensing Show in Las Vegas, I was contacted by WIBC 93.1 of Indianapolis seeking comment on the developments concerning the legislative effort to pass a statutory Right of Publicity in New Hampshire. Specifically, I was informed about Governor John Lynch’s surprising veto of SB 175 after it had passed the New Hampshire House and Senate. Here is a link to a brief summary and short audio segment of my full radio interview with WIBC: http://rightofpublicity.com/faber-interview-with-wibc-regarding-new-hampshires-recent-right-of-publicity-effort-62112
The New Hampshire effort has been spearheaded by Matt Salinger, son of acclaimed author J.D. Salinger, who lived in New Hampshire in part because of the value New Hampshire places on individual rights and liberties. Matt Salinger tells of how a photographer ambushed his father in the latter years of his life, manipulated the image, and turned it into a commercial product (t-shirts): “A photographer literally jumped out of the bushes on top of him … then took this picture as my father was recoiling.” “My father looked terrified, looked angry, looked startled and looked a bit haunted. It’s a terrible photograph, but that wasn’t enough for this person who made these T-shirts. He then went in … and made his eyes bright red, and made his face yellow — just made him look more freakish and wild.” Here’s a link to the full story: http://www.wsbtv.com/ap/ap/legislative/salingers-son-stunned-by-veto-of-nh-bill/nPTT2/
Examples like this seem to make an easy case for passing a Right of Publicity statute in New Hampshire. Here is a link to one version of the draft bill: http://mediacoalition.org/mediaimages/NH-SB175-as-amended-by-House_05.22.12.pdf Unfortunately, here’s what Governor Lynch said in vetoing SB 175, from his June 12, 2012 press release: “SB 175 would codify a New Hampshire citizen’s right to control and transfer to beneficiaries the commercial use of his or her identity for 70 years after death. Because I believe that this legislation is overly broad, would potentially have a chilling effect on legitimate journalistic and expressive works that are protected by the New Hampshire and United States constitutions, and would invite rather than diminish litigation over legitimate journalistic and expressive use of a person’s identity, I have decided to veto this bill.” Here’s a link to his full veto message: http://www.governor.nh.gov/media/news/2012/061212-sb175.htm
Governor Lynch missed an opportunity to make New Hampshire one of the growing number of states that provide statutory Right of Publicity recognition for its citizenry. His statement indicates a lack of understanding of what the Right of Publicity seeks to accomplish and how it functions in practice. While I appreciate that his time is limited and the Right of Publicity may seem like an esoteric, unfamiliar concept at first blush, I also discern in his statement a caving-in to the lobbying of the major industries opposing the Right of Publicity.
No matter how motivated, articulate, or justified the family of a deceased personality might be in seeking passage of a Right of Publicity statute, those who need the statute have a difficult time rivaling those who oppose it—in other words, the well-funded, coordinated, professional lobbying influences of those opposed to Right of Publicity legislation throughout the country.
Ironically, many of the Right of Publicity opponents can be quite aggressive in protecting their own intellectual property interests when threatened or infringed. Both Federal copyright and trademark law have been amended many times to protect their interests, and their arguments against the Right of Publicity concerning First Amendment, creative expression and the like could equally have been waged against them when their interests were on the line. One therefore might assume these entities would support increasing Right of Publicity recognition through statutory adoption, which would have the benefit of bringing greater consistency and more certainty in dealing with Right of Publicity matters. Stronger intellectual property recognition should be welcomed, not opposed by these groups.
Alas, it does not play out that way because there are financial considerations in play. As an example, movie studios certainly would like to be able to license clips from their respective movies, for example, to make consumer products and advertisements without having to bother with the Right of Publicity of the actors and actresses featured in those movies. The studios would benefit greatly by having complete control over those transactions, as well as to be able to capture the entire clearance budget for licensing and advertising uses. The Right of Publicity, however, ensures that someone like Humphrey Bogart cannot be made a spokesperson for a high-profile tobacco company advertisement, using still images or a clip of Bogart smoking in a movie, without his heirs having a say in whether or not that advertisement will happen in the first place. Very few people would deny that this situation demonstrates the need for Right of Publicity recognition.
Or what about the recent developments in hologram technology? Tupac was resurrected and made to perform, with stunning realism, at the 2012 Coachella Festival. I understand this performance was conducted with full licensing and permissions in place. But without the Right of Publicity, what is to stop a new movie from being created in which Elvis or Steve McQueen is made to perform, or an adult-entertainment producer from creating new “expressive works” of Marilyn Monroe or Princess Diana? In addition to demonstrating the imperative for Right of Publicity protection, I believe this technology may even demonstrate the dangers of sweeping statutory exemptions for entire mediums and categories of works.
Variety interviewed me just days ago on this topic. Here’s a link to the June 22, 2012 Variety story: http://rightofpublicity.com/variety-magazine-interviews-jonathan-faber-of-luminary-group-and-rightofpublicity-com-re-virtual-celebrities
Furthermore, the interests of those opposing the Right of Publicity are not nearly as threatened by Right of Publicity as they would have people believe. On an individual basis, I’m proud to say that I have collaborated with various specific video game companies and movie studios in joint licensing programs concerning their projects, archival works, and the celebrity clients I have worked with over the years. Creative works were not squelched, and commerce was not impeded. For decades, the parties have co-existed in a relatively harmonious manner.
So I attribute most of my concerns to the manner by which lobbying takes place these days, which seems to be premised on a distressing degree of inaccuracy and fear-mongering, than to any particular business or entity. I understand these techniques were out in full force in New Hampshire, with statements akin to “If this statute is passed, book reviews can no longer be written” or similarly disingenuous, unsupportable declarations designed to scare the people responsible for determining if SB 175 will be passed or not.
The inaccuracy of such arguments should expose their specious, biased nature and hurt the credibility of those making them. It did in Indiana, for which I am thankful because we were able to get my bill through with the benefit of some good old-fashioned common sense. Here’s a link to the recent Indiana statute: http://rightofpublicity.com/faber-secures-passage-of-indiana-right-of-publicity-statute
It’s not like New Hampshire would be sailing into uncharted waters with the substance of the proposed Right of Publicity statute. I see nothing unprecedented in the draft statute. The materials circulated in support of SB 175 detail how New Hampshire has recognized a common law tort of “invasion of privacy by appropriation,” as in Remsburg v. Docusearch, Inc., 149 N.H. 148, 157, 816 A.2d 1001 (2003). The substance of SB 175 was to clarify that this common law right is descendible or assignable through a will, trust, or other testamentary instrument or written contract, as so many other state statutes provide.
SB 175 is not seeking to create retroactively something that didn’t previously exist, or to bestow a gift upon the Salinger Family, as I understand was also asserted. The rights already existed at common law, but with the benefit of a statute, potential plaintiffs, defendants, lawyers representing plaintiffs or defendants alike, and the judiciary, could have the benefit of guidance from the New Hampshire legislature as to the extent of recognition afforded in New Hampshire. This is a desirable benefit across the board.
To those concerned about the First Amendment: I’m happy to report that the First Amendment is alive in well in Indiana, California, Texas, Washington, Tennessee and the numerous other states that have already passed Right of Publicity legislation. These states all have Right of Publicity statutes in place, and there has not been “a wave of litigation” or “a suppression of First Amendment liberties” as is so often predicted and promised by Right of Publicity opponents.
Virtually every area of the law is subject to potential abuse, but the law and those who work in the profession navigate these perils and serve to keep things on track. Let’s not forget, the judiciary is very good about safeguarding the First Amendment and in making case-specific determinations when First Amendment concerns might legitimately trump the Right of Publicity. I have monitored these matters for a long time, and there are very few instances where the First Amendment was in any real danger as a result of the Right of Publicity. If a bad lawsuit is filed, there are many procedural and substantive protections in place for dealing with it.
I understand there is a session next week to review the Governor’s vetoes. New Hampshire therefore still has an opportunity to not be left behind, and to pass some form of statutory Right of Publicity recognition.
The reality is, those opposing Right of Publicity legislation have an infinite number of ways to accomplish the objective of a bill, while those trying to pass it have only one route to success. Indeed, it is easier to spoil a masterfully prepared dinner than it is to make it. Advantage: opposition.
Much of what I see happening in New Hampshire mirrors what I experienced leading the effort to protect Indiana’s Right of Publicity statute earlier this year. Most of the arguments in opposition to SB 175, and the efforts to insert unprecedented exemptions for video games, or the antiquated notion of a registry system, came up when I was working on Indiana’s Right of Publicity bill.
The difference is, Governor Mitch Daniels signed Indiana’s Right of Publicity bill into law, which goes into effect in just a few weeks. I’m still rooting for the great State of New Hampshire and its capable leaders to do the right thing and pass legislation that provides a statutory Right of Publicity.
After all, isn’t it more consistent with New Hampshire’s ideals and heritage of valuing individual rights to pass a meaningful Right of Publicity statute—thereby ensuring control of commercial use of its native sons and daughters— rather than catering to the lobbying of massive industries and corporate entities that want to commercialize these Rights of Publicity without encumbrance?
I think the answer is clear.
I had an engaging discussion with Ted Johnson of Variety Magazine regarding virtual celebrities earlier this week, and the opportunities and pitfalls presented by the technology that allows famous persons to be flawlessly recreated. The opportunities and pitfalls are, in short, considerable.
Ted Johnson’s article appears in the latest edition of Variety as well as online. You can check it out at this link: http://www.variety.com/article/VR1118055844
This isn’t strictly a Right of Publicity posting, but I can’t help commenting on Acura’s “Season of Reason” advertising campaign featuring chef Gordon Ramsay and singer Bette Midler. YouTube clip of Gordon Ramsay in Acura Season of Reason ad
The spots are entertaining and I have no issue with the performances in the advertisements, but doesn’t the message of the ad contradict itself? After chef Ramsay berates a kitchen team in his signature manner, or Bette Midler steals the show by caroling on a neighborhood doorstep, the narrator chimes in with “At a time when it’s easy to go overboard, Acura invites you to be smarter…” (…and buy an Acura either as a gift or for yourself).
If hiring chef Gordon Ramsay to cook your holiday dinner, or having Bette Midler go caroling with you denotes “going overboard,” how exactly is buying a $50,000 (0r more) luxury automobile for yourself, or as a gift, not “going overboard?” Doesn’t it, in fact, demonstrate the very behavior being disclaimed?
(Anyone planning to give me an Acura as a gift, forget I said that–I won’t consider it going overboard.)
Congratulations to chef Gordon Ramsay and singer Bette Midler for landing their respective spots in Acura’s campaign. I have no doubt that they each did quite well with those campaigns. As an aside, I’m reminded of when my company was representing a top-name NBA superstar, who preferred to receive product rather than money (he didn’t need the money). That leads to some interesting negotiations. As an agent, how do you receive a commission on, say, a luxury automobile? Claim the muffler?
I suppose another takeaway from the Acura advertisements is that Bette Midler is now a bit more receptive to advertising, compared to her position as detailed in her famous 1988 Right of Publicity case against Ford Motor Company. Here’s a link to that case: http://rightofpublicity.com/pdf/cases/midler.pdf Bette Midler v. Ford
Of course, things are very different these days. The previous implications of the actor or actress not being able to find better work have all but evaporated. The pay is pretty good, too.
Billboard Magazine cover story on Bob Marley Estate quotes RightOfPublicity.com author Jonathan Faber
Billboard Magazine’s cover story for the newest issue examines the business of Bob Marley not only during his lifetime but also in the decades since his passing. The piece gives a lot of fascinating insight into the challenges Marley’s family has faced over the years, detailing various lawsuits that have been fought as well as the continuing opportunities that exist for licensing Bob Marley’s music as well as his name and image.
I spoke with the writer of the Billboard cover story and I am quoted in several places throughout the article. One of the things we discussed in detail is the right of publicity, and how it can be a tough undertaking to protect the legacy of a beloved figure like Marley. What to do in the face of unauthorized uses like advertisements and merchandise? Don’t file a lawsuit and the market responds with even more infringements on the basis that the rights are not being asserted. File a lawsuit, and risk being labeled litigious.
It’s easy to assume that it would be a “nice problem to have,” and maybe there’s some truth to that. But I also bet that if the average observer who is critical of a family or heir protecting their loved one’s legacy through legal action was in the same position, that person would quite likely do exactly the same thing after witnessing unauthorized (and often undesirable) uses cascade through the marketplace. What’s that they say about “walk a mile in another man’s shoes…?”
Here is a link to the Billboard story: http://www.billboard.com/#/features/the-business-of-bob-marley-billboard-cover-1005022242.story?page=1
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
The most recent edition of Claims Advisor includes an article I authored concerning how new technologies are raising interesting scenarios that could trigger intellectual property liability. Here is a link to the article:
With the 50th anniversary of Buddy Holly’s untimely passing right around the corner, there has been a considerable amount of activity and interest in Buddy Holly. A recent article in the Lubbock Avalanche-Journal (see http://www.lubbockonline.com/stories/010909/loc_375424907.shtml ) reports on the progress that is being made to re-introduce a variety of initiatives commemorating Buddy in his hometown of Lubbock, Texas. There’s a bit of history between the City and Buddy’s widow, Maria Elena Holly, but it appears likely that things are getting resolved and a fitting tribute will be possible. Part of that history has to do with considerable misunderstanding of Right of Publicity and related intellectual property laws concerning deceased celebrities. No home town has a blanket right to engage in commercial uses of a notable individual just because he or she was born there. The law is quite clear in terms of ownership of these intellectual property rights, and I suspect the same scrutiny and criticism (of the past) would not have been levied against, say, Priscilla Presley, although her approach likely would have been quite similar. In any event, it looks like a bridge is being built between all the parties, and that is probably a good thing for everyone.