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
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
The $30 million lawsuit filed by Muhammad Ali Enterprises against Fox, for a three minute promo ad that ran in advance of the 2017 Super Bowl. While Fox felt that the spot was protected, the problem with that theory is the spot had all of the hallmarks of an advertisement, and functioned as an advertisement over all else. Such uses are the kind the right of publicity is designed to address. And while a settlement is not a judicial interpretation, the fact that it settled would seem to confirm that Fox overstepped the bounds in this instance. Here’s a link to a prior entry when the suit was still pending: Muhammad Ali Ent. files $30M suit over Super Bowl ad
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
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.
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.
That Minnesota should consider enacting publicity rights legislation is something I stated here shortly after Prince’s untimely passing: http://rightofpublicity.com/prince-knew-the-value-of-his-intellectual-property-42216 Minnesota has responded with draft right of publicity legislation, SF 3609, posted on May 11, 2016: https://www.revisor.mn.gov/bills/text.php?number=SF3609&version=0&session=ls89&session_year=2016&session_number=0
Predictably, critics of the legislation are taking issue with the bill on First Amendment grounds: http://www.law360.com/ip/articles/794846?nl_pk=bb8aeb3e-4ab9-4ba4-a0af-b895a107fd8a&utm_source=newsletter&utm_medium=email&utm_campaign=ip
While the legislation likely would benefit from expanding the list of fair use exemptions, such as for books, overall the legislation is in good shape and appears well-balanced in its reach and application.
As we have seen from the Michael Jackson estate and questions concerning the valuation of his right of publicity, I expect Prince’s estate will go through a similar review by the IRS. It should be noted that Minnesota’s potential adoption of the “Prince law” is not dispositive on whether or not Prince’s estate possess a right of publicity. It should be assumed that it already does. How it should be treated for taxation purposes is another question altogether.
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.
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
An insightful and well-written article by Eriq Gardner of The Hollywood Reporter can be found here: http://www.hollywoodreporter.com/thr-esq/why-hulk-hogans-140-million-876990
My take on the $140 million jury award to Hulk Hogan against Gawker is that it does not portend a stifling of the press or an impediment on the First Amendment. The amount is a lot, sure. A substantial amount of it is punitive damages. And to be clear, there are particular facts in this case that should give everyone pause about how far the media can go in publicizing information of any kind, at any cost, no matter how it is obtained, and no matter the consequences.
I’m not taking a position on whether Gawker should or shouldn’t be liable or to what extent. But just as the First Amendment and freedom of the press is of paramount importance and should be cautiously navigated, so too is the right of privacy and the extent to which any and every piece of information can be deemed newsworthy and subsequently published.
The Right of Publicity and the First Amendment have always moved in lockstep. Some cases get it right; some don’t. Some favor the First Amendment, others favor the Right of Publicity.
As Eriq Gardner’s article correctly notes, the ruling is likely to be appealed. The amount of the award could easily be reduced. The parties could settle on an undisclosed amount to end the litigation.
But I do not have any particular concerns at the moment about the fallout of the Hulk Hogan ruling. The facts of the case are quite specific, and the legal process has to be allowed to play out. If a jury finds that something unacceptable or egregious took place, perhaps they are not wrong.
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.
This should lay to rest that old yarn that “it is easier to get forgiveness than permission.” Late last week, Michael Jordan won an $8.9 Million damages award against the grocery store that used his Right of Publicity without permission in print ads that ran in Sports Illustrated.
At trial, jurors heard the familiar infringer’s refrain that Dominick’s achieved no benefit from the ads, and based on expert valuation testimony, the most it should pay for the ad was around $126,000. Of course, this overlooks the fact that Michael Jordan apparently does not do deals for $126,000 and rather, the starting fee for a license to use Jordan’s Right of Publicity is generally in the $10 Million range.
So at $8.9 Million, Dominick’s may have gotten a 10.1 % discount.
I was recently asked to weigh in on whether China might be well-advised to consider recognizing the Right of Publicity. My answer was yes, it should. Perhaps the recent news of a Chinese court denying Michael Jordan’s effort to stop a Chinese sports apparel company from appropriating his name and jumpman logo amply demonstrates why. Here’s a link to one article on the topic, though you’ll need a subscription to access the entire article:
Taylor Swift recently stood up to Apple’s plans to use music for free, and Apple relented. Apparently next on her list, Taylor Swift is taking on right of publicity infringements in China. Her strategy could perhaps be described with “the best defense is a strong offense.”
The July 21, 2015 edition of Wall Street Journal reports on a variety of licensed goods that Swift is introducing in China. Taylor Swift’s popularity in China has predictably resulted in a lot of infringing goods in the marketplace. The best way to combat such a problem, when one has the clout and market potential to do so as Swift does, is to make authorized goods available to meet demand.
Here’s a link to the WSJ article:
On March 25th, 2015 the administrator of http://www.RightOfPublicity.com (Jonathan Faber) gave a live interview on Primetime with Henry Shinn. The show is on TBS eFM, 101.3MHz, and is an all English radio channel operating from Seoul, South Korea.
The interview explored the broader topic of whether South Korea should adopt a Right of Publicity-like law, in part because there are some notable personalities bringing claims related to the Right of Publicity in South Korea. The conversation ranged from James Dean to Dustin Hoffman. Here is a link to the Facebook page for the show, where I understand prior interviews can be found: https://www.facebook.com/tbseFMPrimetime
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.
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 recent offering by HeroBuilders of an “Ebola Nurse” doll raises some interesting Right of Publicity implications. Putting aside any debate over tastefulness or appropriateness, the doll also resembles Kaci Hickox. Hickox is the nurse who has been in the headlines recently and who was quarantined in New Jersey against her will. The doll apparently is accompanied by an Ebola-free health certificate.
Frequent visitors to this site may notice the similarity between this story and the 2009 offering by TY (Beanie Babies) of Sasha and Malia dolls immediately following the first-term election of President Obama, which I wrote about here:
Ty claimed the dolls were not of the President’s daughters, a transparent explanation considering the context of the use and totality of circumstances in which the dolls were offered. Ty claimed to have pulled the dolls off hte marketplace some time later, but not before their mission was accomplished.
It could be interesting to see if HeroBuilders is working from the same playbook, and if any more comes of the Ebola Nurse doll.
Here’s a link to a story with more details and images of the doll itself:
The Massachusetts Senate has passed a bill urged by Bill Cosby to statutorily recognize a post-mortem Right of Publicity in Massachusetts. The bill heads next to the Massachusetts House of Representatives. I’m including a link (below) to NPR’s coverage of this very positive legislative development.
As is often the case when the media covers the Right of Publicity, the coverage does not give the most balanced picture of the functioning of these rights and the policy purposes behind them. That’s probably the fault of no one or nothing other than time limitations and the need to get in and out of a complex topic in short segments. But, for example, it’s really not that difficult to determine who owns the Right of Publicity of a personality after a person dies, as the host declares. The coverage also does not point out all the limitations and allowances for First Amendment purposes that accompany most Right of Publicity statutes. And lastly, I strongly caution against acting on host Anthony Brooks’ conclusion that “if a business wants to trade on the image of Marilyn Monroe, they can.” (Just after the 2:00 mark in the NRP clip.)
Professor Ray Madoff of Boston College Law School does a good job discussing some of the high points of the Right of Publicity. To the credit of the producer of this segment on NPR/Radio Boston, I (the administrator of http://www.RightofPublicity.com) was consulted to verify certain information about Right of Publicity statutes throughout the country (the part in the interview when the host Sacha Pfeiffer says “we looked this up”).
Here’s a link to the radio segment: http://radioboston.wbur.org/2014/06/13/dead-right-publicity
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:
Here is a link to more details: http://www.lexology.com/library/detail.aspx?g=38917404-afa9-4b61-ae81-a3ebc21ff996&utm_source=Lexology+Daily+Newsfeed&utm_medium=HTML+email+-+Body+-+Federal+section&utm_campaign=Lexology+subscriber+daily+feed&utm_content=Lexology+Daily+Newsfeed+2014-06-02&utm_term=
BVR is a leading publisher on valuations, and I recently had an extensive discussion with BVR concerning valuations and the Right of Publicity. The resulting article itself is subscription-based, but the title of the article is New cases spotlight the value of ‘right of publicity,’ published February 19, 2014, Issue #137-3. Also see http://www.BVResources.com
Yesterday brought an important decision from the Ninth Circuit concerning the constitutionality of Washington’s Right of Publicity statute. Overruling the lower district court’s determinations to the contrary, the Ninth Circuit has determined that Washington’s Right of Publicity statute is indeed constitutional as applied to the facts of the Hendrix case.
Here is a link to the ruling: 2014 Hendrix Ninth Circuit WA RoP constitutional
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.
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:
No surprising entrants or changes in this year’s annual Forbes’ list of the top-earning dead celebrities, but it is a fun tradition nonetheless. Michael Jackson reclaims the top spot with an amount slightly higher than his reported earnings on last year’s list, while Elizabeth Taylor’s revenue dropped considerably from last year allowing Michael Jackson room to move up.
Most of the entrants did not move, or move much, from last year’s reported amounts. The only new entrant is Jenni Rivera, the singer who died last year. As is often the case, music sales spiked following her untimely passing.
Here’s a link to the Forbes list: http://www.forbes.com/sites/dorothypomerantz/2013/10/23/michael-jackson-leads-our-list-of-the-top-earning-dead-celebrities/
I haven’t had a chance to read the complaint, but author Harper Lee has recently filed a lawsuit against a non-profit in her hometown that actively trades on both her name and elements of her bestselling novel.
In the coverage of the story, no mention is made of the Right of Publicity, though this legal doctrine is a central component in disputes like this. Apparently, the museum operates a gift shop–“The Bird’s Nest”–selling various consumer goods relating to her celebrated, and sole, work of authorship. The Museum’s domain name is www.tokillamockingbird.com.
Simply because an operation enjoys non-profit status or serves a certain degree of social utility such as a museum does not mean they have carte blanche to use someone’s Right of Publicity or trademarks.
For LIMA (Licensing Industry Merchandisers Association) members, check out my article in the August 2013 BottomLine newsletter, entitled “A Representation Contract in Time Saves Nine. Or Millions?”
Visit http://www.licensing.org to log in and access the article. Happy reading!
Two more rulings involving video games came down last week, both from the Ninth Circuit Court of Appeals.
The July 31, 2013 ruling in Jim Brown v. Electronic Arts http://www.edwardswildman.com/files/upload/BrownvEA.PDF determined that Jim Brown’s inclusion in the Madden NFL video game was not an infringement of the Lanham Act §43(a). The court used the now famously misapplied Rogers test to determine that video games rise to the same level as literary works and thus are entitled to equal First Amendment protection. Once committed to the wrong test, the Court held that under the Rogers test Jim Brown’s likeness was artistically relevant to the game, also noting that there were no facts showing that his inclusion misled consumers about his involvement with the game.
The July 31, 2013 Brown ruling is only in relation to the Lanham Act claim. The true nature of Jim Brown’s lawsuit is primarily of a Right of Publicity nature (though the Rogers test would have been the wrong test to apply even if the ruling had been on a Right of Publicity claim). The Court says in a footnote: “We emphasize that this appeal relates only to Brown’s Lanham Act claim. Were the state causes of action before us, our analysis may be different and a different outcome may obtain.”
This point is reinforced by a ruling in another case on the same day, by the same judge, on similar facts but different claims. Specifically, consider the July 31, 2013 ruling by in Sam Keller v. EA and NCAA, No. 10-15387, http://www.edwardswildman.com/files/upload/KellervEA.PDF Here, the Right of Publicity was the claim being considered and the Court distinguished the claims from those in the Jim Brown case. The Court applied the transformative use test, providing a better fit in most Right of Publicity situations than the Rogers test, which was created for application to titles. The ruling was in favor of Plaintiff Sam Keller of course because the objective was to recreate Keller as accurately as possible–the antithesis of a transformative use.
Perhaps we have not seen the last of Jim Brown’s claim.
As previously noted on RightOfPublicity.com, singer Rihanna has been engaged in litigation in the UK against apparel company Topshop for selling shirts prominently featuring her image and officially labeled the “Rihanna Tank.”
The article on this link goes to some length discussing whether the UK recognizes “image rights” or whether this shirts rises to the level of passing off or false endorsement. The reason for this distinction, in part, is related to the legal standards in the UK for these kinds of cases. The recent ruling found Topshop guilty of passing off.
Rihanna is suing for $5 million as this article reports. It sounds like while this ruling is in her favor, damages have not yet been assessed. My prediction: settlement is imminent. While settlement is not guaranteed, my experience is that the gamble and expense of pressing on in ligation becomes less and less attractive to a defendant, especially after significant rulings are secured in favor of the plaintiff.
It’s always interesting to observe the debate over whether a personality should or should not have a right to take action in response to such unauthorized products. It’s hard to imagine a scenario where a product like this, from a company like Topshop, should be permissible without permission of and compensation to the featured personality. I’m glad the UK court seems to agree.
Maybe the UK should look more closely at passing a Right of Publicity or “image rights” law. The notion of “passing off” has worked for Rihanna in this instance, but passing off is not as well-tuned and form-fitting as the Right of Publicity for cases of this nature.
The objective of cashing in on Rihanna’s value is apparent and manifest in the product itself. Is there a “greater good” that would be served by allowing a company to appropriate the hard-earned and valuable rights and interests of a personality?
Here’s the link to the Guardian’s coverage:
I’m often asked to give guidance and input on draft Right of Publicity legislation, but earlier this year I was asked to comment on a recent legislative effort that did not become law. Specifically, I looked at the 2009 draft legislation in front of North Carolina’s General Assembly, and I commented on specific provisions that characterized the draft legislation. Here is a link to the article:
I am always on watch for legislative developments or new case law concerning the Right of Publicity, but I also find it interesting to consider the path that the Right of Publicity has traveled. The body of case law on the Right of Publicity is some of the most fascinating, and at times colorful, in all of law.
When I was working on Indiana’s revised Right of Publicity statute in 2012, one of the points I emphasized to the legislative committee was that neither the revised legislation I was advancing nor the original Indiana Right of Publicity statute sought to create “new” rights. Instead, the statute aimed to codify common law recognition of rights analogous to the Right of Publicity.
I recently came across an article in Res Gestae, January /February 2013, Vol. 56, No. 6, entitled Intrusion into privacy… by Neal Eggeson, which exemplifies the point I was making to Indiana’s legislature. The article notes the case Continental Optical Co. v. Reed, 86 N.E.2d 306 (1949), in which the court recognized the tort of appropriation of a lens grinder whose image was used without authorization in an advertisement for a lens manufacturer. The Res Gestae article is not about the Right of Publicity, but this does illuminate how one can pick up the trail of a concept, or store away data that may be useful in the future.
Just looking out for the viewers and users of www.RightOfPublicity.com.
The Super Bowl and the whirlwind of activities surrounding the big game never fail to deliver a season’s worth of intellectual property controversies.
This year, we have trademarks concerning San Francisco 49ers head coach Jim Harbaugh, Baltimore Ravens head coach John Harbaugh, and 49ers quarterback Colin Kaepernick making headlines. A few years ago, it was Lindsay Lohan taking on the E*Trade babies: http://rightofpublicity.com/lindsay-lohan-and-the-etrade-milkaholic-baby Before that, a controversy emerged over certain kinds of viewing parties for the game: http://rightofpublicity.com/pdf/articles/ibjnfl.pdf
It didn’t take long for clever terms such as “Harbowl” and “Harbaugh Bowl” to circulate once the Baltimore Ravens and the San Francisco 49ers, coached by John and Jim Harbaugh, respectively, were confirmed for Super Bowl XLVII. An Indiana resident had the same idea about a year ago when applying for a trademark registration on each of these terms. The terms took on added significance, of course, when the historic match-up of two brothers as head coaches squaring off against each other was confirmed for this year’s Super Bowl.
The NFL recently contacted the individual and urged him to abandon the marks, which the individual did. http://espn.go.com/nfl/playoffs/2012/story/_/id/8873809/2013-nfl-playoffs-nfl-pressures-fan-nix-harbowl-trademark When a trademark is applied for, the applicant must represent to the trademark office that the mark does not reference a living person, or that the applicant has that individual’s consent. Assuming the Harbaughs did not provide their consent to the individual’s trademark application last year, I believe this important safeguard represents one of the areas that the trademark could have been vulnerable.
The marks in question directly incorporate the last name of the Super Bowl coaches, Jim and John Harbaugh, but notice that they do not reference the NFL, the Ravens, the 49ers, or even the Super Bowl (directly, anyway). It would appear, then, that the persons or parties with standing to oppose these marks are Jim Harbaugh and John Harbaugh. But they probably have a few other matters to tend to at the moment.
Apparently the quarterback of the 49ers, Colin Kaepernick, has enough time to tend to a similar matter, as the NFL reports here: http://www.nfl.com/news/story/0ap1000000130278/article/colin-kaepernick-files-to-trademark-signature-pose
Colin Kaepernick has reportedly applied for a trademark for the word “Kaepernicking,” the instantly-popular reference to his touchdown celebration of flexing his arm and kissing his bicep. The NFL article on the above link makes the assumption that his trademark is for the gesture, and is rather critical of Kaepernick for seeking protection for a gesture which did not originate with Kaepernick. A critical but seemingly overlooked detail is that the trademark is for the term alone, which is based on his name. If Colin Kaepernick intends to use the term on products, as ownership of a trademark requires, then I expect he would have the right to secure this mark. It could be that the application is a defensive move to counteract infringing products and interlopers looking to cash in on Kaepernick’s rapid rise to stardom. Super Bowl XLVII will be only his tenth NFL start.
In all of the above examples, there also is a strong Right of Publicity element involved with the terms HarBowl, Harbaugh Bowl and Kaepernicking. Use of any of these terms without corresponding permission from Jim Harbaugh, John Harbaugh, or Colin Kaepernick would likely face Right of Publicity liability, as each of these Super Bowl XLVII competitors are unequivocally identifiable from the terms.
And we haven’t even seen the 2013 Super Bowl ads yet.
Here’s an article about an interesting lawsuit filed against a website provider that posts arrest mugshots, then charges to have the mugshot removed. The class action was filed in Pennsylvania, and I spoke at length with the journalist at the Pittsburgh Post-Gazette concerning the issues involved in the claim, especially regarding the right of publicity angle involved. Here is a link to the article and interview:
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
Citation: The Hebrew University of Jerusalem vs. General Motors; Case 2:10-cv-03790-AHM -JC Document 187 Filed 10/15/12
Here is a link to the draft bill being considered in Massachusetts: http://www.malegislature.gov/Bills/187/Senate/S01713
Earlier in July, I had an intriguing conversation with several staff members of Bloomberg BNA’s Patent, Trademark & Copyright Journal, in relation to an article focusing on recent legislative efforts concerning the Right of Publicity. This primarily included New Hampshire as well as my bill in Indiana which recently was signed into law by Governor Daniels.
The article also explores the idea that the Right of Publicity may be on track for a Federal statute. The detailed article was published in both Bloomberg’s Patent, Trademark & Copyright Journal, and in BNA’s flagship publication, the Daiey Report for Executives. Since these are subscription-only publications, I do not have a link to provide as is my usual protocol. The citation for the article, if you need it for research or want to order a copy, is: BNA’s Patent, Trademark & Copyright Journal, 84 PTCJ 488, 07/20/2012.
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
The law firm of Manatt Phelps & Phillips has recently released an article comparing recent judicial rulings affecting the Right of Publicity of Albert Einstein and Marilyn Monroe. Mark Lee, co-author of the article, has been involved in a number of landmark Right of Publicity cases over the years.
One takeaway from these similar cases with opposing results is that domicile should be part of comprehensive estate planning for those personalities with a potentially valuable Right of Publicity and the ability to move from one state to another. Of course, the criteria for properly establishing domicile would have to be met, as merely owning property in a state does not render that state one’s domicile.
Remember: a person can be a resident of multiple states or jurisdictions, but a domiciliary of only one.
I humbly suggest Indiana as a potential domicile for any such candidates.
Here is a link to the article: http://www.lexology.com/library/detail.aspx?g=320642b1-2f3b-4362-ac31-9c1bfc144902&utm_source=Lexology+Daily+Newsfeed&utm_medium=HTML+email+-+Body+-+Federal+section&utm_campaign=Lexology+subscriber+daily+feed&utm_content=Lexology+Daily+Newsfeed+2012-06-28&utm_term=
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
Here’s a link to an interview I did with WIBC 93.1 FM in Indianapolis, concerning recent developments in New Hampshire and their effort to pass a Right of Publicity statute.
The link includes a brief audio clip of my interview, as well.
The bill was brought by the son of author J.D. Salinger. Apparently, the bill had made its way all the way to the Governor’s desk to be signed, when the Governor refused to sign the bill. The MPAA apparently was a vocal opponent to the legislation.
Looks like my predictions in the May 9, 2012 edition of the Indiana Lawyer were prescient. Specifically, in response to the debut of Tupac’s hologram, I went on record stating that this technology is likely to lead to both licensing and new business opportunities as well as litigation over unauthorized use of the technology by third parties with no relationship to the individual or entitlement to the underlying intellectual property rights. Here’s a link to that Indiana Lawyer article: http://www.theindianalawyer.com/-hologram–performance-by-tupac-creates-legal-questions-for-ip-lawyers/PARAMS/article/28758?page=1
Mr. Eriq Gardner of The Hollywood Reporter has posted an intriguing article on the exchanges between the lawyers for the Marilyn Monroe Estate and Authentic Brands, majority owner of the intellectual property rights to Marilyn Monroe, and Digicon Media, which claims to have “copyrighted” the virtual Marilyn. I put “copyrighted” in quotes because that is a big, and dubious, assertion to make. Digicon Media claims to have grand plans for the virtual Marilyn.
Here’s a link to the full article in The Hollywood Reporter, complete with actual copies of the correspondence between the parties:
This article and the various documents embedded within the article provide a fascinating glimpse into the inner workings of representing and protecting the rights of a deceased individual. This appears to be a transparent (pun intended) attempt to make a play for Marilyn Monroe in the virtual realm. The Right of Publicity, as well as the various trademarks pertaining to Marilyn Monroe, should have no trouble reaching into that realm and ensuring that the attempt to “copyright” the hologram Marilyn would somehow give Digicon Media ownership over any aspects of Marilyn Monroe.
Forgive me for the unusual structure of this posting, but I thought it would be of interest to post the press release that issued following Governor Mitch Daniels’ signing of the Right of Publicity bill that I authored and testified in defense of in January, 2012, at the Indiana State House.
For immediate release: April 19, 2012
Adjunct Professor Helps Preserve Indiana’s Right of Publicity Law
Indianapolis, IN— Now that House Enrolled Act 1258 has been signed into law by Governor Mitch Daniels, Indiana has preserved the spirit and intent behind Indiana’s Right of Publicity law and maintained its position as a leader in Right of Publicity recognition, according to Jonathan Faber, founder and CEO of Luminary Group. Luminary Group is a licensing and intellectual property management company that represents icons such as Babe Ruth, Vince Lombardi, and Jesse Owens.
Faber, a 1999 graduate of Indiana University Robert H. McKinney School of Law, authored, testified in support of, and defended HEA 1258. He teaches “The Right of Publicity” at the law school and also is an intellectual property attorney with McNeely Stephenson Thopy & Harrold in Shelbyville, Ind.
“Indiana’s Right of Publicity law was enacted in 1994 on the strength of testimony from James Dean’s family and Ryan White’s mother,” said Faber. “Since then, it was widely understood that Indiana’s law would protect the rights of those who died before 1994, since the rights existed at common law and the statute simply codified those rights.” Nevertheless, a 2011 non-binding judicial ruling in Indiana last year concerning use of John Dillinger in a video game threw this into question.
Opposing Faber’s bill was the Motion Picture Association of America. “The MPAA treated this as an opportunity to overhaul Indiana’s entire statute, but the underlying statute was not under review and is entitled to a presumption of validity,” Faber said. “Indiana’s statute already has language that addresses the MPAA’s concerns.”
The Right of Publicity refers to the right of a person to control the commercial use of his or her identity. “Most states correctly view this as a property right, and it therefore survives the death of the individual,” Faber said. “The concern with HEA 1258 is confirming how this intellectual property right is handled after a personality dies.”
Faber is the creator of the online Right of Publicity resource, www.RightOfPublicity.com. He also teaches “Licensing Intellectual Property” at the IU Maurer School of Law.
Faber has served as an expert witness in cases involving Uma Thurman, Motley Crue founding member Nikki Sixx, the animated character Madeline, and NASCAR driver Robby Gordon. In fall 2011, Faber testified in support of Zooey Deschanel in her claim against Kohl’s Department stores and designer Steven Madden. Earlier this month, Faber and Luminary Group performed a valuation of Indiana native coach John Wooden’s estate.
To reach Faber for interviews and additional comments, call 317-428-5441.
About Indiana University Robert H. McKinney School of Law
With an enrollment of more than 1,000 students, IU McKinney School of Law is the largest law school in the state of Indiana. Occupying a spacious, new, technologically advanced building, the school is located in the heart of downtown Indianapolis, Indiana. The school has enjoyed great success for more than 100 years in preparing students for legal careers. The success of the school is evidenced by the prominent positions graduates have obtained in the judiciary and other branches of government, business, positions of civic leadership, and law practice. The school’s 10,000 alumni are located in every state in the nation and several foreign countries. More information about the law school is available at indylaw.indiana.edu.
For more information, contact:
Director of Communications and Creative Services
Indiana University Robert H. McKinney School of Law
Lawrence W. Inlow Hall
530 West New York Street
Indianapolis, IN 46204
Thanks to a stipulated settlement read into the record on February 3, 2012 in a lawsuit brought by the Marlon Brando Estate against Ashley Furniture, we have a rare example of a publicly-disclosed settlement amount. Brando’s Estate is settling its claims against Ashley Furniture for $356,000, including an allocation for attorney’s fees. The dispute was over a furniture line designated as “Brando.”
There is a similar lawsuit still in process involving Humphrey Bogart and a “Bogart” couch offered by Ashley Furniture. In that case, Ashley Furniture reportedly argued that it “was not diluting a generic name” and sought a declaration that the Right of Publicity can’t be applied to the name of a couch.
I would agree with Ashley Furniture that they aren’t diluting a generic name, because neither Brando nor Bogart can be said to be generic names. Even without use of their first names, each name is clearly identifiable as Marlon Brando and Humphrey Bogart. When taken in context, with a Brando product next to a Bogart product, there really can be no reasonable argument that those names aren’t identifying Marlon Brando and Humphrey Bogart.
The idea that the Right of Publicity should somehow not apply to the name of a couch would be laughable if it wasn’t the kind of argument that seems to be increasingly employed by those caught infringing.
Here is a link to Eriq Gardner’s write-up in The Hollywood Reporter: http://www.hollywoodreporter.com/thr-esq/marlon-brando-ashley-furniture-lawsuit-couch-humphry-bogart-287389
The biggest Right of Publicity story of 2012 so far has to be the news that a company called In Icons is preparing to issue a Steve Jobs action figure. In response, Apple reportedly sent a cease and desist letter to In Icons, prompting Tandy Cheung of In Icons to state “Apple can do anything they like…I will not stop, we already started production.”
I hate to break it to them, but if an activity is prohibited by law, the fact that the offending company is already in production would provide no defense or entitlement to proceed. This Steve Jobs action figure is exactly the kind of unauthorized commercial product that the Right of Publicity is designed to address, if not prevent.
Cheung reportedly stated “Steve Jobs is not an actor, he’s just a celebrity,” and that “[t]here is no copyright protection for a normal person.” Aside from the various legal errors in that comment, I can’t help thinking that this line of thought is exactly what gets companies sued for Right of Publicity violations.
Here is a link to the MSNBC article containing Cheung’s quotes and reporting many more details on this story: http://technolog.msnbc.msn.com/_news/2012/01/05/9972437-apple-tries-to-ban-realistic-steve-jobs-action-figure
The MSNBC article states that Apple claims to own the post-mortem rights to Steve Jobs’ name, image and likeness, as manifest by the In Icons action figure. I do not know whether or not Apple has affirmatively made that assertion or if that is an assumption being drawn from the fact that Apple issued the cease and desist letter. All things being equal, I would have assumed that Steve Jobs’ family would be the beneficiary of Steve Jobs’ Right of Publicity. Perhaps Apple does in fact have an ownership interest in Steve Jobs’ Right of Publicity. The Right of Publicity is assignable during life or at death through testamentary documents or intestate succession. The Right of Publicity is also divisible in whole or in part, meaning that several owners could own varying percentages of his Right of Publicity. Alternatively, perhaps Apple is simply handling administrative duties such as protecting against unauthorized use of Steve Jobs’ Right of Publicity. Presumably, Apple’s legal advisors and Steve Jobs’ family and heirs have already addressed this crucial point.
In researching this story, I also came across another write-up about the Steve Jobs action figure on Paidcontent.org entitled “Steve Jobs Doll Legal In Most States, Not Indiana” which can be accessed here: http://paidcontent.org/article/419-steve-jobs-doll-legal-in-most-states-not-indiana/
This article seems to conclude that the Steve Jobs action figure is only actionable in those states with a statutory Right of Publicity in place. The article ends by listing those states with a statutory Right of Publicity but does not include California, which is a fairly important jurisdiction for Right of Publicity matters. California, in 2008, passed legislation confirming that the Right of Publicity does apply to those persons who died prior to passage of the statute. Here’s a link to the amended language: http://rightofpublicity.com/statutes/california-2008-amendment-to-33441
This amendment, signed into law by Governor Schwarzenegger, was in response to a California ruling that concluded that Marilyn Monroe was not entitled to statutory Right of Publicity protection under California law, because of the perceived location of, and law of, her domicile at the time that she died in 1956. California’s 2008 bill was in fact just a clarification that the law indeed always was supposed to apply to those who predeceased passage of the statute.
Right of Publicity litigation usually involves application of the Single Publication Rule, which in general terms allows a claimant to address the totality of the infringement through one cause of action. In the absence of such procedural efficiency, a claimant might be forced to go state by state, litigating the same basic nucleus of facts, against the same parties, over only those activities that took place in that particular state. If courts are overburdened now, which they generally are, just imagine the inefficiency and backlog that such an approach would generate.
Thankfully, this is not how Right of Publicity litigation is typically conducted.
As for Steve Jobs and whomever is the appropriate party to assert a claim for violation of his Right of Publicity, I am confident that the law would back them up if they have to litigate in response to a Steve Jobs action figure. If not, one would have to wonder why the Right of Publicity exists in the first place.
Here’s a great article about how famous, iconic figures are represented, citing the work Luminary Group has done for the family of Vince Lombardi. Instead of elaborating or commenting here, I’ll just give you a link to the article so you can read for yourself: http://espn.go.com/blog/sportsbusiness/post/_/id/158/paterno-legacy-likely-trails-coaching-icons
Benetton has recently issued an advertising campaign featuring images of President Obama digitally altered to appear as though he is kissing Venezuelan leader Hugo Chavez, and in another spot, Chinese President Hu Jintao.
Benetton euphemistically calls it “an invitation” to “combat the culture of hatred.” (Dear Benetton: whose hatred, exactly?) I call it an advertisement.
While I don’t begrudge message-based advertising or calling attention to things like charitable fundraising or humanitarian efforts, I find campaigns like this to be little more than a transparent publicity stunt designed only to stir up controversy and get extra publicity for Benetton. I suppose I am obliging them by writing about it, but perhaps raising the specter of liability for the advertisement offsets that transgression.
All of this reminds me of a post I wrote about PETA’s advertising antics: http://rightofpublicity.com/peta-launches-new-ad-featuring-michelle-obama-without-first-ladys-permission
The White House issued the following statement in response to Benetton’s ad: “The White House has a longstanding policy disapproving of the use of the president’s name and likeness for commercial purposes.” Sounds like someone at the White House may have a functional awareness of the Right of Publicity.
Here’s a link to more details on the advertising campaign: http://digitaljournal.com/article/314625
Benetton’s advertisement would make a good Right of Publicity exam question.
What do you think?
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.
I was in a Halloween store recently, one of those pop-up shops that temporarily occupy otherwise abandoned retail space for a season, like fireworks stores around the Fourth of July. I was thinking about how costumes relate to my line of work, and how costumes of famous people are a prime manifestation of the Right of Publicity. It’s a commercial product, obviously, but furthermore the product is entirely premised on making someone look as much as possible like the celebrity in question. The objective of the product is to depict (and sell) the famous person’s image or likeness.
This dynamic, no doubt, is why there is quite a lot of licensing activity in the area of costumes, from superheroes like Batman and Spiderman, to movie franchises like Star Wars and Transformers, to Animal House, Avatar, Curious George, Friday the 13th, Chuggington, WWE, Lady Gaga, Justin Bieber, and on and on. Simply put, they sell. When the product is licensed, no problem and all is well.
But from my experience over the years, costumes based on famous people are not always licensed. As I’m perusing the Halloween store’s products, almost immediately I happen upon two men’s costume wigs, side-by-side, one entitled “Family Jewels” and the other designated “The Billionaire.” Here is the picture I saw on the “Family Jewels” product packaging and on the website of the company producing the product:
And here is the image I saw on “The Billionaire” product packaging and on a secondary retailer’s website:
This observation prompted me to check out the website of the company that produces these products. It is a leading costume retailer, authorized to produce and sell an impressive line licensed costumes, underscored by the fact that one of the main navigation tabs on the website is designated simply as “Licensed.” Their homepage loads with animated flash imagery of the KISS logo, images of the band, and the costume product line.
To find the “Family Jewels” wig though, I had to really search. It is there, in the mix of hundreds (if not thousands) of products, but not under “Licensed” and apparently not through any of the search key words one would expect (based on the various searches I attempted). On the product packaging itself, as well as the webpage entry for the “Family Jewels” product, I noticed that there is no use of Gene Simmons’ name, and the model wearing the wig does not resemble Gene Simmons (absent the effect of the wig itself which, after all, is meant to make a person look like Gene Simmons). When I scanned the product packaging in the retail store, I also saw no credit lines regarding the reality show, KISS, or Mr. Simmons.
This made me wonder: what would Gene Simmons do or say in response to a company that he had licensed which is simultaneously pushing a “Family Jewels” wig that, by every indication, is not licensed? (For purposes of this writing, I am assuming that the wigs are not licensed. To any of the parties directly involved in or affected by any of the products specified in this entry: correct me if I’m wrong and I will gladly set the record straight.)
Some will say, “Well, no reasonable person will think that this really IS Gene Simmons or Donald Trump pictured on the packaging.” This analysis confuses trademark standards with Right of Publicity analysis. The words “Family Jewels” by themselves are likely enforceable as a trademark, as the title of Simmons’ reality show, but I won’t get into trademark considerations here. For Right of Publicity purposes, there doesn’t have to be direct use of the person’s actual name or image. It’s really just a question of whether the person is identifiable.
I assume there is a written agreement governing the manner and terms by which the licensed KISS costumes can be produced by the licensee. In agreements I negotiate and draft for use of my Luminary Group clients, I typically protect against the scenario presented here (unlikely as it generally would be with a company that is securing a license from the personality in the first place). Through a well-drafted license agreement, a licensee would likely find themselves in quite a predicament by offering licensed goods on one hand, and on the other hand offering products that infringe the Licensor’s rights.
So let’s have some fun with this. In searching for the Gene Simmons and Donald Trump wigs, I found quite a few other examples. Who might “The Idol Judge” wig be identifying?
How about “The Promoter” wig?
Or the “Rocket Man” wig?
I’m guessing you got a 100% on that pop quiz (depending perhaps on your age or familiarity with certain public figures). One does not have to believe that this actually is Gene Simmons, Donald Trump, Simon Cowell, Don King or Elton John for a violation of the Right of Publicity to take place. For each person you correctly identified, you probably also identified a potential Right of Publicity claim.
Let me offer a few more observations which might help illuminate how one goes about assessing a potential Right of Publicity violation:
· The product names make quite an effort to avoid use of the actual person’s name, while still craftily seizing upon a designation that confirms the intended person. Family Jewels? Check. The Idol Judge? Got it. Rocket Man? The title to one of Elton John’s iconic songs—10-4. I’d be inclined to say that rather than protecting the company behind these products from liability, these cagey but ultimately unambiguous names indicate a conscious effort to sidestep liability (and avoid licensing fees), potentially proving that the infringement is taking place on a knowing and intentional basis.
· The KISS storefront on this company’s website does not include the “Family Jewels” wig in the product lineup. The KISS collection, all things being equal, would be the most intuitive place to put the “Family Jewels” product. Grouping of products on a website, search words, tags and identifiers don’t happen by accident. Usually, inclusion is the guiding principle in grouping products and assigning key words and tags, so that a potential customer who wants to look like Gene Simmons will have no trouble finding the “Family Jewels” option. Of course, exclusion of these identifiers and tag words in all likelihood would be intentional as well. It doesn’t happen accidentally that certain products are emphasized, searchable and readily found, whereas others are buried.
I can’t help but notice that finding these products online was quite challenging, but in the retail environment where the idea for this entry was first inspired, it was not difficult at all. The “Family Jewels” and “The Billionaire” wigs were prominently displayed on prime retail shelf space. Of course, that retail store will be gone in just a few days, and a brick and mortar retail store is much harder for a licensor, brand owner, famous personality, or representative to monitor than a readily accessible, searchable, and archived website.
Maybe this is one reason why my clients tend to consider me good at what I do. I pay attention. In any event, I look forward to class discussion in my upcoming Right of Publicity law school class on the issues presented in this entry. I hope it has been educational and informative!
John Devenanzio, known as “Johnny Bananas” from MTV’s Real World Key West and other MTV reality shows, has filed a lawsuit in response to the Johnny Bananas character in HBO’s Entourage. The lawsuit was filed in New York and names HBO, Time Warner, and the creator of Entourage as Defendants. In addition to monetary damages, the lawsuit seeks to stop distribution of Entourage episodes which include the Johnny Bananas character played by Kevin Dillon.
Devenanzio’s lawyer also represented Lindsay Lohan in Lohan’s lawsuit against E-Trade for its depiction of the milk-aholic baby referred to simply as “Lindsay.” That claim has reportedly settled. Here’s a link to my entry on that claim: http://rightofpublicity.com/lindsay-lohan-and-the-etrade-milkaholic-baby
The Hollywood Reporter write up on Devenanzio’s claim is well-written and thorough, though it does seem to reveal a certain disdain for Devenanzio’s claim. The claim is characterized as “remarkably vague,” and states that “it appears Devenanzio is not asserting any allegation of trademark infringement” but instead is claiming violation of “his publicity and privacy rights.” I’m not sure why that in itself is inherently vague.
I haven’t reviewed Devenanzio’s filings, or those of the Lindsay Lohan claim against E-Trade; however, alleging a trademark violation, or having Federally registered trademarks protecting a person’s namesake or some distinctive aspect of his or her identity, is not a prerequisite to filing a lawsuit when the claimant’s Right of Publicity has been commercially utilized. This point is a hallmark of Right of Publicity analysis. The Right of Publicity may share certain characteristics with trademark law, but they are not interchangeable. Each protects different interests, have their own elements and standards, and have distinct policy rationales.
The write up further states that success in the lawsuit “may depend on whether he can find anything in discovery that shows [Defendants] had Devenanzio in mind when they created the Johnny Bananas character.” This is not the standard Devenansio has to meet, though. For one thing, it may be impossible to find a “smoking gun” that demonstrates a clear link, or an intentional act, of naming the Entourage character after Devenanzio. If such evidence can be found, so much the better for Devenanzio’s claim and prospects for punitive damages.
But a successful Right of Publicity does not require proof of intent to infringe. What matters most is whether the claimant is identifiable from the portrayal. Identifiability will be measured by viewers of the show and their determination or impressions, not those of the show’s creators or producers.
It seems to me that Johnny Bananas is a fairly distinctive nickname. One does not have to be identifiable on the level of a Michael Jordan, or George Clooney, or President Obama, either. Instead, a viewer, or a potential jury as it were, can be presented information, context and imagery of Devenanzio’s Johnny Bananas and that of the Johnny Bananas in Entourage. This may take the form of “aided identification” (as opposed to “unaided identification”), but this does not invalidate a potential Right of Publicity claim. There might just be something to Devenanzio’s claim.
Here is a link to the Hollywood Reporter article: http://www.hollywoodreporter.com/thr-esq/mtv-star-sues-hbo-johnny-244446
The Actors Strike Back: from Happy Days to Princess Leia, actors and actresses are reexamining their contracts and bringing claims
Actors, check your contracts! That seems to be the rally cry of 2011 as an increasing number of actors and actresses are bringing claims for the sale of merchandise relating to movie and TV show licensing. From the cast of Happy Days, the sheriff in The Dukes of Hazard, the bully in A Christmas Story, and even Princess Leia of Star Wars, the licensing and merchandising of these classic shows and movies have become fertile ground for lawsuits.
Just last month, it was announced that James Best, aka Rosco P. Coltrane of the Dukes of Hazard, filed a lawsuit alleging he may be owed as much as $25 million by Warner Bros. According to his complaint, the contract Best had for his role in the 1980s TV show was specific about his entitlement to a share of merchandise royalties. The complaint alleges that his contract entitled him to 5% of merchandising revenue from products that featured his identity, or 2.5% of total revenue for merchandise when other characters of the show were included. Despite the contract provisions, he apparently hasn’t been receiving any such revenue, even though Dukes of Hazard licensing is an ongoing and successful endeavor for Warner Bros. http://www.hollywoodreporter.com/thr-esq/dukes-hazzard-sheriff-sues-warner-218089
Earlier this year, the cast of Happy Days filed a claim on similar grounds against CBS Studios and Paramount Pictures. The Happy Days suit addresses home video releases as well as licensed merchandise featuring the actors’ images. Apparently, the suit was precipitated by one of the actors seeing Happy Days slot machines in casinos (which may have been around the same time that I was involved in licensing various Gilligan’s Island case members for slot machines). The lawsuit seeks at least $10 million in damages as well as attorney’s fees. http://www.hollywoodreporter.com/thr-esq/happy-days-cast-sues-cbs-179852
Another recent claim has been brought by the bully in A Christmas Story. The actor who played Scut Farkus claims that Warner Bros. has used his image without his consent in relation to certain consumer products. http://www.hollywoodreporter.com/thr-esq/why-christmas-story-child-actor-225440
Much of these disputes might be resolved by a careful reading, or judicial interpretation, of the actors’ contracts. As it pertains to Zack Ward’s claim against Warner Bros., he reportedly was originally contracted for a small part in A Christmas Story. When he was given the more prominent role of the bully, his contract was not adjusted or revised. According to 23 No. 8 Westlaw Journal Entertainment Industry 11, as well as the pleadings in the complaint, Ward was therefore the only major character from A Christmas Story who did not contractually give away the right to license his likeness as manifest in the Farkus character.
In my experience, the contracts being written in recent years for actors’ and actresses’ services are much more specific, and typically address the types of issues that were overlooked decades ago. I believe this is due in part to a higher level of awareness of these issues in the legal profession (if not the acting profession), as well as the much more systematic licensing and merchandising campaigns that are built into TV shows and movies these days.
Even with a contract in place that addresses ancillary issues like merchandising, problems can arise. The actors who played Norm and Cliff on Cheers, George Wendt and John Ratzenberger, brought a claim over use of animatronic robots in Cheers-themed restaurants which delivered actual audio from the show. While effort was made to make the robots look somewhat different than Wendt and Ratzenberger, there was no ambiguity as to who these robots were intended to represent. The robots sat in the precise spot at the bar as the Norm and Cliff characters did in the show, and the voices of Wendt and Ratzenberger exchanging dialogue from actual Cheers episodes emanated from the robots. The claim kicked around for a while before settling out of court. http://rightofpublicity.com/pdf/cases/wendt.pdf
In the early 1990s, Warner Bros. argued in a lawsuit against James Dean’s heir that it owned the Right of Publicity of James Dean altogether. The contract for Dean’s acting services (for the three films of Dean’s short but mercurial career, East of Eden, Giant and Rebel Without A Cause) included a somewhat open-ended two-word clause which Warner Bros. interpreted as giving it ownership of Dean’s Right of Publicity. The contract stated that Dean gave to Warner Bros. the right to photograph his “acts, poses, plays and appearances of any all kinds, and to produce and reproduce the same or any part of them by photography, printing, and all other methods, and to distribute and exploit the same in motion picture films, or otherwise.” Those last two words, “or otherwise,” were the fulcrum point of Warner Bros.’ position. http://rightofpublicity.com/pdf/cases/warnerbros.pdf
The September 19, 2011 edition of Newsweek features an article by Carrie Fisher discussing Princess Leia licensing, entitled How George Lucas Stole Her Identity. Fisher reports that she has teased Lucas over the years about how she sees her Princess Leia character on all manner of products, but that she never gets any share of the income. Fisher says Lucas has never been apologetic about it. Fisher’s essay even reports that there is a line of Princess Leia marijuana, though I doubt that is licensed by Lucasfilms, for obvious reasons. Assuming it isn’t licensed by the Star Wars franchise, Fisher may have a viable right of publicity claim that could be asserted since the product does not come from Lucasfilms or tie in to her contract for the film. http://www.thedailybeast.com/newsweek/2011/09/11/carrie-fisher-on-how-george-lucas-stole-her-identity.html
Fisher closes by stating “Every so often, I wonder if Natalie Portman is getting more money than the none I’m getting. If she’s holding a check for Princess Amidala’s likeness in one hand and her Oscar in the other, that would piss me off.”
I’m sorry to say it, Mrs. Fisher, but she very well may be.
Muhammad Ali has filed a lawsuit against Kobo, Inc. for use of his famous slogan “float like a butterfly, sting like a bee” in a recent Kobo ad campaign.
Kobo is based in Toronto Canada, and the advertisement ran in the New York Times promoting Kobo’s electronic reading device. The advertisement apparently did not use Ali’s image or any other elements of his persona. The famous slogan, however, is a registered trademark. The suit was filed in New York.
Missing from the reporting on this topic (and I have not yet seen the complaint itself) is the fact that use of this slogan also implicates Ali’s Right of Publicity. To the extent that Ali is singularly and unequivocally identifiable by this phrase, a registered trademark likely would not be needed to support a claim based on Ali’s Right of Publicity. Doesn’t hurt to have the registered trademark as well, though. The slogan has been licensed to third parties, as is reportedly alleged in the complaint.
Here’s a link to the story: http://www.businessweek.com/news/2011-07-14/muhammad-ali-company-sues-to-stop-kobo-use-of-butterfly-slogan.html
Cadbury advertisement, “Move over Naomi, there’s a new diva in town,” potential violation of Naomi Campbell’s Right of Publicity?
Cadbury is finding itself in a legal and PR mess after use of the line “Move over Naomi, there’s a new diva in town” in advertisements for Cadbury’s Bliss chocolate bar. Supermodel Naomi Campbell has stated that she will look at “every option available” including the possibility of filing a lawsuit, the Independent UK reports.
This situation is interesting because it does not use an image of Naomi Cambell, or even her full name. Can use of just a first name trigger a Right of Publicity violation? It certainly can, if the association to Naomi Campbell is clear. I use the phrase “unequivocally identifiable” in my Right of Publicity classes, and this situation brings that phrase to task. Is a casual observer of the Cadbury advertisement going to think of Naomi Cambpell, even without further use of her image or full name? You be the judge. I invite you to post your thoughts.
The context of the advertisement is part of the analysis. One can and must look at the supporting imagery, overtones of the ad, recent news, things the person in question might be known for, and similar elements that advertisers are very adept at incorporating into their creative. Oftentimes, these added elements are part of the timeliness, or punchline, or effectiveness of the advertisement. An observer of the advertisement is expected to arrive at the advertisement with these associations already in place.
Here’s an image of the Cadbury advertisement:
Here’s a link to more coverage of the story: http://www.huffingtonpost.com/2011/05/31/naomi-campbell-cadbury-ad_n_868909.html
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With Donald Trump recently announcing that he would not run for President in 2012, I thought about a popular topic concerning the right of publicity of public figures and politicians. This topic (as well as this website) was recently discussed on a t-shirt website forum (http://www.t-shirtforums.com/general-t-shirt-selling-discussion/t153365.html#post913652) so I thought I’d elaborate somewhat on this topic.
Donald Trump is no stranger to the intellectual property rights surrounding his name, image, persona and identity. He has registered trademarks on various aspects of his identity, and enjoys a vibrant licensing program ranging from Trump’s Signature Collection of clothing (suits, ties, cuff links, eyewear http://www.trump.com/Merchandise/Signature_Collection.asp) to Trump steaks (http://www.trumpsteaks.com/). If Trump were to run for President (which I suppose he already has, to some degree), would he be forfeiting his right of publicity, and therefore his ability to prevent unauthorized, unlicensed products entering the marketplace?
In short, no. But it does get a bit more complicated for public officials to pursue unauthorized merchandise and advertising campaigns, even if they would have a legal right to do so. Through my work on behalf of many public figures, ranging from Princess Diana and Rosa Parks to Jackie Robinson and General Patton, as well as a couple of former U.S. Presidents, I know that a certain amount of such activity has been tolerated. President Obama seems to have responded to such activity more than any other President, perhaps also because he (or his family) has been used more than any other recent President. Here is a news item concerning a casino billboard campaign with a President Obama lookalike: http://southerngaming.com/?p=2562
Perhaps it is worth distinguishing between a person’s right of privacy and the right of publicity. We are all generally familiar with the idea that when a person runs for public office, he or she gives up a certain degree of an expectation of privacy. A corollary to this is the New York Times v. Sullivan “actual malice” standard for defamation of public figures. This case instructs that because the famous person sought out elected office and has better access and means to the press in order to combat any inaccurate or potentially defamatory information, the standard for committing defamation is necessarily higher than that for private citizens. Here’s a Wikipedia link to the New York Times v. Sullivan case: http://en.wikipedia.org/wiki/New_York_Times_Co._v._Sullivan
This “actual malice” standard for elected officials is part of the mechanism for ensuring broad First Amendment privileges, and encouraging differing views, discourse and criticism of our public officials. None of this means that those elected officials have simultaneously consented to becoming product lines or being featured in advertising campaigns for all manner of goods and services. It may be that such products or advertising campaigns have an element of parody, which conceivably could serve as a defense to a right of publicity claim. But most such products or advertising campaigns are simply an effort to sell more products or to promote a company’s goods or services. This, then, is likely nothing more than commercial speech. If the message is simply “buy our stuff” or “shop at our store,” and the inclusion of the public figure is nothing more than a scheme to attract attention, then the right of publicity can and generally will provide recourse for that public official.
In many instances, pursuing a company who engages in what might constitute a right of publicity infringement may become more of a public relations issue than a legal issue. Going after the company may give that company substantially more media attention, and may be portrayed in the press as that public figure trying to chase down infringers in order to make money. It’s a bit of a dilemma for those who find themselves in such a position.
I didn’t realize how much attention this topic has been given on this website until I looked back at prior entries:
First Lady Michelle Obama and PETA ads: http://rightofpublicity.com/peta-launches-new-ad-featuring-michelle-obama-without-first-ladys-permission
President Barack Obama bobbleheads: Intentionally unflattering? http://rightofpublicity.com/bobbleheads-intentionally-unflattering-or-a-symptom-of-the-product-category
The First Daughters: Sasha and Malia Ty beanie baby dolls: http://rightofpublicity.com/sasha-and-malia-dolls-now-its-not-just-the-president-being-infringed
President Obama merchandise continues: http://rightofpublicity.com/president-obama-merchandise-continues
President Obama infringements? http://rightofpublicity.com/president-obama-infringements
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:
Disney seeks to trademark SEAL Team 6, the elite special forces unit that tracked down Osama bin Laden
Just two days after President Obama announced that Osama bin Laden had been tracked down and killed in Pakistan, Disney applied for the trademark “SEAL Team 6” with the United States Trademark Office. See http://tess2.uspto.gov/bin/showfield?f=doc&state=4001:frbhm5.2.3 Disney isn’t the only one with a pending trademark on SEAL Team 6 though. See http://tess2.uspto.gov/bin/showfield?f=doc&state=4001:frbhm5.2.1 and http://tess2.uspto.gov/bin/showfield?f=doc&state=4001:frbhm5.2.2 which also are trademark applications by third parties for SEAL Team 6.
Disney is reportedly developing a production based on the story of the elite special forces team that tracked down and killed Osama bin Laden, so no doubt this was their objective in seeking to trademark this name. The article at the following link makes a good point that GI Joe was once a military reference before it became trademarked and turned into a TV and toy brand: http://eonline.mobi/answer_bitch_detail.ftl?id=b242656&last_page=4&paginate=0. Another article, from the Christian Science Monitor, reports that a behind-the-scenes resolution between Disney and the Navy may be a likely outcome of this trademark application. See http://www.csmonitor.com/Business/2011/0519/Who-owns-SEAL-Team-6
All of this raises an intriguing question: are there any right of publicity interests in the individual members of that SEAL Team 6? Interesting in part because those persons will likely remain unidentified for a host of reasons. What about the notion that certain aspects of the military are either the exclusive jurisdiction of the Federal government (like the Presidential seal), or essentially public domain (like the State of the Union address or judicial opinions)?
It will be interesting to see how the Examining Attorney assigned to Disney’s application handles this file.
In the latest entry of intellectual property owners suing video game manufacturers, the band No Doubt filed a lawsuit against Activision earlier this month. The suit is based on the band’s objection to the use of the band members as avatars which game users can use to perform songs other than the band’s own material. The suit specifically references the possibility of the band’s front person, Gwen Stefani, being made to perform the Rolling Stones’ Honky Tonk Woman, the lyrics of which reportedly are offensive to Stefani.
Regular readers of http://www.rightofpublicity.com may recall the suit filed by Courtney Love against Activision, over the potential use of Kurt Cobain being made to perform music that Cobain would have objected to on artistic grounds.
An interesting twist to the No Doubt case is that the band had a contract with Activision for certain uses of the band and its music. Apparently the dispute, then, is about the other uses a game player can make of the No Doubt characters. Questions that the lawsuit will surely tackle include whether the use by Activision constitutes a breach of contract, and whether the use may somehow be defensible as a fair use or other non-infringing use of the No Doubt band members.
Recent draft right of publicity legislation reflects the video game industry’s lobbying efforts to make disputes such as the No Doubt lawsuit a thing of the past. In an effort to align video games with other statutorily-exempted uses, the lobbyists for the video game industry would like video games to be considered a protected medium and not subject to liability for right of publicity claims.
Here is a link to one of many articles reporting the story: http://www.shacknews.com/onearticle.x/61134