USPTO Roundtable on Right of Publicity, NIL, and Artificial Intelligence
A USPTO roundtable will take place on August 5, 2024 on the topic of Right of Publicity and Artificial Intelligence. USPTO AI Right of Publicity roundtable link The program is called Protecting NIL, Persona, and Reputation in the Age of Artificial Intelligence and will be livestreamed at this link: livestream link for USPTO AI Right of Publicity roundtable
With credit to the USPTO link above, the queries posed for the roundtable consist of:
1. How does the use of unauthorized NIL content harm individuals? Does AI technology exacerbate the creation and use of unauthorized NIL content and harm to individuals? If so, how?
2. How can AI be used as a legitimate and constructive tool in circumstances where individuals grant permission to a third party to use their NIL?
3. Do technological mechanisms or protocols currently exist to identify AI-generated NIL content, to prevent or deter unauthorized AI-generated NIL content, or to remove unauthorized AI-generated NIL content after it has been released? What other types of mechanisms or protocols exist, or should exist, to identify AI-generated NIL content or address unauthorized NIL content?
4. Currently, NIL is primarily protected via state law. In addition, some Federal statutes also address certain misuses of NIL. For example, the Lanham Act includes a provision—15 U.S.C. 1125(a)—that can be used to bring a Federal cause of action in certain circumstances involving NIL misuse. Are current legal protections for NIL rights sufficient? Why or why not?
5. There have been calls for a new Federal law to address unauthorized use of NIL content, including content generated by AI. Should Congress create a new Federal law to protect NIL? If so:
(a) Should current state NIL laws, such as state right of publicity laws, be preempted if a new Federal NIL law is enacted?
(b) What key elements should be incorporated in a new Federal NIL law?
(c) Should any new Federal NIL law protect against all unauthorized replicas of an individual’s NIL or focus on unauthorized AI-generated replicas?
(d) Some state laws addressing NIL protect only well-known individuals. Likewise, many Federal circuit courts require a showing, among other elements, that a plaintiff is famous or recognizable by the public in order to succeed on a claim under 15 U.S.C. 1125(a). Should this requirement of fame or recognizability be included in a new Federal law protecting NIL rights? Why or why not?
(e) Should a new Federal law prohibit non-commercial uses of unauthorized NIL content, such as political deep fakes and revenge pornography?
(f) What types of enforcement mechanisms should be included in any new Federal NIL law?
(g) What elements should be included in a new Federal NIL law to help ensure it does not become obsolete due to rapid changes in AI technology?
(h) Section 230 of the Communications Decency Act states: “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” Section 230 also expressly provides that “[n]othing in this section shall be construed to limit or expand any law pertaining to intellectual property.” Should any new Federal NIL law be considered an “intellectual property law” for purposes of Section 230 of the Communications Decency Act?
(i) How should Congress address First Amendment considerations in any new Federal NIL law?
(j) Should any new Federal NIL law be incorporated into the Lanham Act?
6. What limits, if any, should be placed on the voluntary transfer of rights concerning NIL to a third party? For example, should there be limits on the duration of such transfers?
7. Questions 1-6 above relate to individuals’ NIL. How should these questions be answered in the context of individuals’ and creators’ reputations?
Hopefully, this roundtable will be a balanced and fair exploration of these topics. The Right of Publicity often lacks a unified voice of support because it is inherently a person-to-person proposition; in contrast, it is opposed by industries, unions, and lobbying arms, or individuals who sometimes seem quite separate from the perspective that only comes from actually working with affected parties.
Regarding point five, the prospect of any Federal Right of Publicity statute must not lose the ground gained over the last 120 years. My hope is that the USPTO’s August 5 roundtable presents a balanced discussion on this critical topic.
Apparently, a transcript and recording of the event will be available after the livestream at this link: Transcript for USPTO AI Right of Publicity Roundtable
The Right of Publicity and Scarlett Johannson’s response to ChatGPT Sky voice
Details and context matter in Right of Publicity analysis. As a brief summary, OpenAI recently released its ChatGPT 4.0 with a chatbot voice (“Sky”) which Scarlett Johannson says is “eerily similar” to hers. We don’t know how the situation may get resolved, but the Right of Publicity provides a response. Apparently, an offer was made by OpenAI for Johannson to voice the ChatGPT 4.0 chat bot. Johannson declined. It may have seemed like a natural fit due to Johannson’s role in the movie Her in which she was the voice of an AI system. Perhaps that fit was so natural that on May 13, 2024 in proximity to the release, Sam Altman issued a one-word tweet: “her.” Past negotiations and this tweet could be the subject of considerable attention, as an example of why “details and context matter” when it comes to the Right of Publicity. The company has denied that Sky was meant to sound like Johannson, but these details could possibly indicate otherwise.
Here is a link to one of numerous articles providing more details: Scarlett Johannson ChatGPT voice that sounded like her
Cetaphil Super Bowl LVIII commercial fair use of Taylor Swift?
Super Bowl advertising is fertile ground for Right of Publicity licensing. My company more often than not will have a campaign using one of my clients. Inevitably, then, there could also be instances of advertising which wanders into the realm of a Right of Publicity infringement.
Without saying I believe it is or is not an infringement, or whether it was authorized or not, there is no denying who the Cetaphil advertisement of a father and daughter bonding over friendship bracelets and football jerseys was connecting to the surge of attention brought by Taylor Swift dating Kansas City Chiefs tight end Travis Kelce in the 2023 season. My Right of Publicity class will use this spot for discussion of Right of Publicity analysis.
In the Cetaphil advertising spot, no reference to the Super Bowl or the Kansas City Chiefs is made directly; however, several football jerseys are depicted, one in a red-based color, another in an away-uniform white-based color. They are otherwise unmarked jerseys, but at least arguably are capable of being viewed as Kansas City Chiefs jerseys. The timing of the spot occurs during the “big game,” and perhaps the viewer is expected to arrive with a built-in familiarity of one of the teams in the game and to Taylor Swift and her circumstantial but heavily-publicized connection to the Kansas City Chiefs.
So with respect to Taylor Swift and the Right of Publicity, would it be actionable? Throughout the spot, the father and daughter seem not to be connected as each looks at their phones or have seemingly disparate interests. The numbers on the jerseys in the spot are 89 and 13, both of which need no explanation to Swifties or the Taylor Swift fanbase, as those numbers are immediately recognizable as connected to Swift (arguably even more so when used together). Numerous close-ups of friendship bracelets culminate in both the father and daughter wearing both friendship bracelets, and both wearing football jerseys in the Kansas City Chiefs colors, numbered 89 and 13. The father-daughter disconnect is remedied as the father wears friendship bracelets like his daughter, the daughter wears a jersey like her father, and they both sit down in front of the television presumably to watch the “game.”
Do these references require a built-in awareness of the storylines dominating the 2023 season and the 2024 Super Bowl? To be clear, no NFL or Kansas City Chiefs trademarks are directly depicted, nor is Taylor Swift named or directly portrayed. Do these details render the spot clear of violations? Again, I am not giving an assessment, just raising the question, and from one of the following links, I am not the first to ask the question.
Here is one link to the spot, which posting is captioned “Taylor Swift Cetaphil commercial:” Cetaphil 2024 Super Bowl commercial
Here is a link to one write up that references the dynamics in play, and also considers whether fair use would provide safe harbor. Cetaphil’s Marketing Tactics balance Taylor Swift Imagery and IP Rights
The standard for infringement is identifiability, perhaps qualified by the association being unequivocal (“unequivocal identifiability”). It is probably safe to say that Taylor Swift, and only Taylor Swift, is unequivocally identifiable from the advertisement. Are the interests of fair use served by an advertisement like this being deemed permissible? To be clear, it has not been “deemed permissible” nor to my knowledge has any action been taken against it. It may remain theoretical, but context matters in Right of Publicity analysis. Given the attention on the Travis Kelce-Taylor Swift relationship throughout the 2023 NFL season, culminating in the Kansas City Chiefs reaching Super Bowl LVIII, and Taylor Swift being shown several times in any game she attended, then the context may dictate that further identification of Taylor Swift, the Kansas City Chiefs, or the Super Bowl were unnecessary because the context of the use removed any uncertainty. Should it have been licensed? Should it be fair use?
Two disturbing AI situations involving the Right of Publicity of George Carlin and Taylor Swift
I would hope that both of the stories breaking yesterday, one involving George Carlin’s estate and the other involving Taylor Swift, would find universal support in favor of the Right of Publicity.
Carlin: George Carlin estate sues over AI comedy special
Taylor Swift: Taylor Swift and AI images
Recent AI and deep-fake activity
Not that it needs to be demonstrated, but recent AI and deep-fake developments further demonstrate the need for meaningful Right of Publicity recognition.
AI-generated a “new” song presented as Drake and the Weeknd. Read more on this link: AI Drake the Weeknd song
Deep-fake technology is taking centerstage in a recently filed suit in California. Read more on this link: Kyland Young et. al. v. Neocortext Inc.
Absence of registrants on New York’s postmortem Right of Publicity registry may not be what it seems
Below is a link to an article presenting information on the absence of New York postmortem registrants on the registry system established by 2020’s enactment of post-mortem right of publicity in New York. There may be reasons for the absence of registrants. Further, the practical aspects of a registration system bring problems and issues, but little utilitarian benefit. States considering right of publicity legislation would be well-advised not to include a registration system, particularly if it is anything other than voluntary, or if it creates a condition for damages.
Here is a link to the article with more information on the status of New York’s post-mortem registry:
Brief article with status of New York postmortem registry list
US Supreme Court to consider Andy Warhol’s Prince Series in relation to copyright fair use and transformative test
You can find information concerning the dispute between the Andy Warhol Foundation (AWF) and photographer Lynn Goldsmith elsewhere, such as the factual underpinnings, lower court rulings on the case to date, and the arguments on either side easily enough in other place. Given the recent acceptance of a writ of certiorari by the United States Supreme Court (SCOTUS), I will simply note a few details that could be interesting to watch from a Right of Publicity perspective.
First, it is interesting to consider that in Comedy III, the court specifically cited Warhol’s Marilyn as the example of a transformative work, in crafting and applying its transformative use test to the Right of Publicity. Often lost in discussion of the case and reference thereto, the rightsowners of the Three Stooges (Comedy III) won the case on Right of Publicity grounds in relation to the commercial activities that had occurred in relation to a charcoal sketch of the Three Stooges by the defendant. The original work of art itself was not really the issue, but rather, the activities connected to that work were found to constitute a Right of Publicity violation. The Judge carefully articulated a test for deciding such situations, thus advancing the transformative use test for Right of Publicity purposes.
In the Warhol dispute concerning Lynn Goldsmith’s Prince photograph, the issue is of a copyright nature. Still, it is interesting that in a notable prior case (Comedy III), Warhol’s Marilyn was cited as the example of a transformative use. Now, in the AWF / Goldsmith matter the very question of whether Warhol’s rendering of Prince is transformative takes center stage.
Second, in teaching Comedy III this semester after news of SCOTUS accepting AWF’s petition, a question was raised whether Warhol perhaps used a reference photo in creating his Marilyn work. The inquiry is intriguing, though perhaps only for academic reasons. Without knowing the specifics, it seems plausible that if Warhol used a reference work for creation of his Prince work, it is possible he did the same for creation of his Marilyn work. The implications, if so, can be considered elsewhere.
Third, it is important to note that the AWF Goldsmith matter to be decided by SCOTUS, with a decision expected sometime in 2023, ought to be confined to a copyright decision. Any Right of Publicity involved would be that of Prince, and it is assumed that the rightsowners of Prince’s publicity rights are not part of the matter. SCOTUS is good at keeping the issues it is considering confined to only that which is in front of the Court at that time. In other words, no matter what SCOTUS decides in the AWF Goldsmith matter, it is expected to be a copyright decision only.
Last, and despite the observation in the preceding paragraph, certain Right of Publicity tests and analytical constructs often borrow from the copyright realm. If the transformative use test happens to be recast or adjusted by SCOTUS, it would not be surprising to see future holdings considering the Right of Publicity in relation to a Comedy III-type transformative use test take into account what the Supreme Court finds in the Warhol Goldsmith matter concerning Warhol’s Prince series.
“Public Domain” understanding
An image that can be found in an image provider’s database marked “public domain” does not make it so. Obviously, the recent B.J. Novak odyssey illustrates how far things can go sometimes, but that does not mean his image actually was public domain, that ad agencies and companies were free to use his image on products or in advertising, or that he was without recourse (though he has indicated not being inclined to pursue the end-users). The term “public domain” (like many aspects of intellectual property) gets misused often. The headline of a recent article “How your photo could end up in the public domain – and used in ads around the world” takes a substantial leap and demonstrates the point, though the substance of the article may be helpful.
How photos end up in the public domain – and used in ads around the world
Andy Warhol’s Prince series not transformative; Andy Warhol’s Blue Marilyn transformative?
Just a quick note based on the Second Circuit’s recent ruling in Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, where it determined that Warhol’s Prince series was not transformative and therefore was subject to copyright provisions in relation to the reference photograph Warhol used. The court went through a fair use analysis, and the case was primarily concerning copyright, but it is interesting to contrast this decision with the Comedy III case, which was primarily Right of Publicity-related. In Comedy III, the Three Stooges artwork was held to not be sufficiently transformative, and the court used Warhol’s Blue Marilyn as the example of a work that would, in contrast, and in the court’s estimation, be sufficiently transformative. I’ll let those motivated to seek more run their own searches rather than post links here, as there is no lack of content, analysis and discussion being offered on this recent ruling. I have not, as yet, seen reference to the contrast with the Comedy III case, so I thought it may be useful to note it here.
RBG and ROP (Right of Publicity and Ruth Bader Ginsburg)
Yes, there is a Right of Publicity interest pertaining to Supreme Court Justice Ruth Bader Ginsburg, who died a week ago at the age of 87. As always, application and analysis of her Right of Publicity would depend on context and specifics in any particular situation. But sticking to overview observations, since she was a lawyer, it may be a safe assumption that Justice Ginsburg had a testamentary plan in place. Since she was attuned to intellectual property matters, it is possible there were specific Right of Publicity provisions in her testamentary plan. Since she is commonly referred to as RBG, it is safe to assume RGB could unequivocally identify Justice Ruth Bader Ginsburg. And given the preceding points, it is safe to assume potential commercial uses or trademark activity could intersect with some of these points. This may all be academic, of course. We’ll see.
Mel Gibson and Miel Gibson honey
I’ve seen some commentary on Mel Gibson’s issuance of a letter to the person behind a Chilean honey branded “Miel Gibson.” Here’s a link to more coverage of the story: https://www.abc.net.au/news/2020-08-15/mel-gibson-threatens-to-sue-chilean-honey-maker-over-image-use/12562438
To date, the developments consist of a letter being issued. No lawsuit has been filed. The letter seems to indicate a willingness for the Chilean business person to continue to some extent, but requests his image be removed. Reportedly, after the recipient shared the letter online, her social media grew “exponentially.”
There’s no question that the product name and packaging ties to Mel Gibson. For those who don’t like the contents of or even issuance of the letter, I would ask “what would you advise be done?”
Article in LIMA’s 5/3/17 eNews by www.RightOfPublicity.com ‘s @FaberLaw
Here is a link to an article in today’s LIMA eNews, a primer on licensing the Right of Publicity for licensing executives:
Super Bowl LI, Tina Fey and John Malkovich ads, and the Right of Publicity
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
Right of Publicity Linked In Group re: Target Rosa Parks case
Here’s a link to the Linked In Group “Right of Publicity” and some commentary on the Target Rosa Parks lawsuit.
Federal Judge’s ruling against former NFL players is a fumble
I have not had a chance to review the decision itself yet, but if the summary of the ruling on the following link is accurate, there are numerous problems with the Federal Judge’s ruling in favor of the NFL against the former players’ Right of Publicity class action suit. I would expect an appeal to follow.
Don Henley sues Duluth Trading Company
Just because an advertisement is presented as a pun or a joke does not shield it from liability. Don Henley, no stranger to protecting his Right of Publicity, has taken action against Duluth Trading Company in response to their email advertising campaign “Don A Henley, Take It Easy.” Well, he’s certainly identifiable from that use. Here’s a YouTube post with details on the claim:
Faber secures passage of Indiana Right of Publicity statute
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:
Elizabeth Allington
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
Tel. 317-278-3038
Fax. 317-278-4790
e-mail: eallingt@iupui.edu
web: indylaw.indiana.edu
“Joustin’ Beaver” creator RC3 files lawsuit against Justin Bieber
In response to a cease and desist letter from Justin Bieber’s representatives demanding that the “Joustin’ Beaver” app be terminated, RC3 (maker of the Joustin’ Beaver” app) has filed a declaratory action. The lawsuit was filed in Jacksonville, Florida.
RC3 claims the video game is a parody on Justin Bieber’s life, as game play involves signing “otter-graphs,” paparazzi-like hogs, and evading the “whirlpool of success.” How this is a parody on Justin Bieber’s life, aside from a few grade-school puns, is hard to discern. That it is popular and has a built-in market thanks to Justin Bieber’s name is not. Bieber also has not been all that controversial in his public and private life as compared to, say, a Lindsay Lohan, who might seem more fitting for such a “parody.”
There certainly is room in the Right of Publicity universe for a parody defense, but it almost always seems to be invoked as an attempt to defend blatant opportunism and appropriation. Video games historically have not been treated as exempt from Right of Publicity and other intellectual property doctrines, though the effort to afford them that heightened level of protection has been vigorously pursued in recent years. Despite the creative decisions that go into creation of a video game, I see a clear line of delineation between mediums such as books, movies or news reporting and that of video games.
Books, movies and news reporting, at their core, are about the expression of ideas and conveying information. Video games are not. There are numerous rulings explaining how the First Amendment is not a one-size fits all “shield” to otherwise infringing actions, including the United States Supreme Court in the landmark Zacchini case. http://rightofpublicity.com/pdf/cases/zacchini.pdf And, of course, even the generally exempted mediums can exceed those protections and stray into infringing territory. But video games should not be entitled to exempted status as a general rule. The Supreme Court ruling striking down a California law prohibiting sales of violent video games to minors is not an appropriate reference point in relation to an intellectual property infringement of the Joustin’ Beaver variety, though it seems to be cited as support for the notion that video games should be treated in the same manner as books and movies. http://www.hollywoodreporter.com/thr-esq/supreme-court-strikes-down-california-205827
Here is a link to the RC3 lawsuit against Justin Bieber: http://www.scribd.com/fullscreen/83005465 Joustin\’ Beaver declaratory action
Here is a link to Eriq Gardner’s write-up in The Hollywood Reporter.
http://www.hollywoodreporter.com/thr-esq/justin-bieber-sued-joustin-beaver-video-game-295548
Benetton’s “unhate” campaign could be more than just a publicity stunt
Benetton has recently issued an advertising campaign featuring images of President Obama digitally altered to appear as though he is kissing Venezuelan leader Hugo Chavez, and in another spot, Chinese President Hu Jintao.
Benetton euphemistically calls it “an invitation” to “combat the culture of hatred.” It still remains an advertisement.
The White House issued the following statement in response to Benetton’s ad: “The White House has a longstanding policy disapproving of the use of the president’s name and likeness for commercial purposes.” Sounds like someone at the White House may have a functional awareness of the Right of Publicity.
Here’s a link to more details on the advertising campaign: http://digitaljournal.com/article/314625
“Obama Got Osama” products hit marketplace, reports USA Today. Anyone want to take a shot at that Right of Publicity analysis?
Within hours of President Obama announcing late Sunday night, May 1, 2011 that Osama bin Laden had been killed, merchandise with the phrase “Osama Got Obama” was hitting the marketplace. What are the Right of Publicity implications? Granted, it is a catchy phrase, and it certainly is a newsworthy event. A product with the first name of an elected official (the President of the United States), as well as that of a deceased foreign national/terrorist/public enemy #1. This could be a bar exam question!
Here’s a link to the story in USA Today: http://www.usatoday.com/money/industries/retail/2011-05-02-bin-laden-death-merchandise_n.htm?loc=interstitialskip
www.RightofPublicity.com
www.LuminaryGroup.com
Charlie Sheen, catchphrases, and the Right of Publicity
The Right of Publicity was recently mentioned in the Hollywood Reporter’s ongoing Charlie Sheen coverage. The article located at the link below notes that catchphrases like “Here’s Johnny” have been ruled to implicate a person’s Right of Publicity (Johnny Carson, in relation to “Here’s Johnny”).
The Hollywood Reporter also posted an article covering the licensing deals Charlie Sheen’s representatives have put together, some of which focus on Charlie Sheen’s phrases like “Tiger Blood,” “Adonis DNA,” and “Winning.” At the same time, these phrases have been the subject of a rash of trademark applications as well–though not by Charlie Sheen.
It has been reported that Sheen’s representative, FEA Merchandising (a Live Nation subsidiary) has been pursuing unauthorized uses of Charlie Sheen’s name, image, and catchphrases, including recent product offerings that have popped up on sites like Zazzle.com.
The question that may have to be answered in those instances where infringement is alleged is whether or not Charlie Sheen is identifiable from the use.
Here is a link to one of the Hollywood Reporter articles covering Charlie Sheen’s recent media blitz:
http://www.hollywoodreporter.com/thr-esq/charlie-sheen-merchandise-clampdown-hits-169183
Albert Einstein’s heir is “outraged” that she doesn’t receive part of Albert Einstein licensing income
Evelyn Einstein, the 69 year old granddaughter of the famed physicist Albert Einstein, says she is “outraged” that she doesn’t get paid a part of the income derivived from the licensing of Einstein’s name, image and likeness. That Einstein yields substantial revenues is no secret–he is a perennial entry on Forbes’ annual Top-Earning Deceased Celebrities list–but the legal basis for Evelyn’s claim to entitlement seems to be a mystery.
I’ve heard it before many times: “But I’m a blood relative!” goes the rally cry. Of course, this has little to do with the distribution of assets and rights through a will or trust. The next declaration is usually “I need the money” or “It’s not fair.” Perhaps, but most people are familiar with this in the context of estate administration. The wealthy uncle leaves his assets to a favorite relative and leaves others out for whatever reason (or no reason at all). The result can be harsh to those who are left without a share, but the law by necessity tolerates and supports such results.
I had the opportunity to travel to Jerusalem and meet with those responsible for administering Einstein’s licensing program. The distribution of Einstein’s intellectual property rights is clear from his testamentary documents. The Hebrew University of Jerusalem was chosen by Einstein to receive not only his literary rights but also the intellectual property rights to his name, image and likeness.
Whether or not Einstein could have envisioned the business that stems from licensing of uses such as “Baby Einstein” or Einstein lookalikes in commercials is irrelevant. Einstein made his choice and entrusted his literary and intellectual property rights to the University, which for its part is doing a diligent job in being selective in what merchandising and advertising of Einstein is allowed.
Einstein died in 1955. It has been 56 years since Einstein’s asset distribution took effect. Evelyn’s claim might be a bit late at this point.
Here’s a link to the story: http://www.cnn.com/2011/US/02/10/california.einstein.granddaughter/index.html?hpt=T2
Marilyn Monroe’s intellectual property rights sold
Headlines in the deceased celebrity universe were made this week when Authentic Brands Group LLC announced that it has bought the controlling interest in the late Marilyn Monroe from its long-time owner and administrator, Mrs. Anna Strasberg. Authentic Brands already controls the rights to reggae legend Bob Marley, and has announced substantial plans for the revitalization of the Marilyn Monroe business.
Authentic Brands is reportedly developing a Marilyn Monroe-themed reality show, and is rolling out plans for Marilyn-branded makeup and lingerie offerings. Here is a link to the story with additional information from Authentic Brands’ head, Jamie Salter. http://www.bloomberg.com/news/2011-01-13/dead-celebrity-dealmaker-salter-buys-marilyn-monroe-name.html
The January 13, 2011 edition of the TLL Daily Advisor [ http://www.tlldailyadvisor.com ] covered the news by adding that Marilyn Monroe has been the subject of recent litigation, and that there are various entities claiming to own or control some aspect of Marilyn’s rights or images. One of the biggest challenges the owner or representative of rights like those concerning Marilyn Monroe must face is policing the marketplace. Without a strategy for identifying and resolving unauthorized uses, a brand’s upward potential will always be more limited than it would otherwise have to be.
Another article from Bloomberg lists some of the recent deceased celebrity headlines, including the $27,000 Montblanc limited edition John Lennon pen, and estimates that the market for deceased celebrities is around $2.25 billion annually. http://www.businessweek.com/magazine/content/11_04/b4212020763824.htm
Athletes filing for trademarks makes front page of New York Times and Saturday Night Live’s Weekly Update
The New York Times’ December 9, 2010 edition ran a front page story on athletes seeking trademark protection for their names, logos, or catchphrases with which they are identified. << http://www.nytimes.com/2010/12/10/sports/10trademark.html?_r=2&ref=todayspaper >>
The story, entitled “Sports Stars Seek Profit in Catchphrases,” references recent trademark filings by the New York Jets’ Darrelle Revis and other NFL athletes like Terrell Owens, Michael Strahan and Jared Allen, as well as the NBA’s Manny Ramirez. << http://www.USPTO.gov >> The story reports that Darrelle Revis has applied for the trademark “Revis Island” for goods ranging from t-shirts, sweatshirts, sweat pants, hats, and other apparel items, and that Terrell Owens has applied for “I Love Me Some Me.”
The New York Times story also notes that Chad Ochocinco has launched a business around his catchphrases like “Catch Me If You Can,” “Kiss da Baby,” and “Child Pleez,” offering t-shirts and women’s underwear featuring the phrases, but that he has not filed for trademark protections on these phrases. The former Mr. Johnson does have a registered trademark for a COC design. << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.11.1 >> As an aside, it’s probably not a good thing when a team’s receiving corp has the same number of reality shows as wins in a season, but at least for the Bengals’ receiving duo recognizes the importance of protecting their respective intellectual property rights.
To be more precise, Owens applied for “I Love Me Some Me” in 2007, and is the owner of a finalized registration, not merely a trademark application. << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.2.3 >> “Revis Island” was applied for in early 2010, and has been published for opposition and is likely to be a finalized registration very soon as well. << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.3.1 >> Michael Strahan has been the owner of the registered trademark “Stomp You Out” since 2008. << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.4.1 >> By way of comparison, check out the search results for the words Tiger Woods: << http://tess2.uspto.gov/bin/showfield?f=toc&state=4008%3A2tq643.1.1&p_search=searchss&p_L=50&BackReference=&p_plural=yes&p_s_PARA1=&p_tagrepl%7E%3A=PARA1%24LD&expr=PARA1+AND+PARA2&p_s_PARA2=tiger+woods&p_tagrepl%7E%3A=PARA2%24COMB&p_op_ALL=AND&a_default=search&a_search=Submit+Query >> or the results for Michael Jordan: << http://tess2.uspto.gov/bin/showfield?f=toc&state=4008%3A2tq643.1.1&p_search=searchss&p_L=50&BackReference=&p_plural=yes&p_s_PARA1=&p_tagrepl%7E%3A=PARA1%24LD&expr=PARA1+AND+PARA2&p_s_PARA2=michael+jordan&p_tagrepl%7E%3A=PARA2%24COMB&p_op_ALL=AND&a_default=search&a_search=Submit+Query >>
The New York Times story also notes an interesting aspect to LeBron James’ arrangements with Nike, stating that Nike owns the rights to the name LeBron. The story states that LeBron signed an agreement with Nike when he was 18, though it does not specify if that agreement is the one that granted the rights to the name LeBron to Nike. It is hard to imagine that such an arrangement would be without a number of limitations to Nike’s claim to LeBron, as compared to LeBron’s ability to exercise his own rights in and to his name. These distinctions could be based upon the distinction between the Right of Publicity and a the rights afforded by a trademark. Nevertheless, Nike is the owner of a series of registered trademarks for the name “LeBron,” including << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.10.6 >> << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.10.5 >> and << http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:2tq643.10.4 >>
It is my experience that athletes (and other notable personalities) are sometimes almost forced to seek protection of this kind, as a component to establishing a foundation of intellectual property rights that can prevent unauthorized and infringing uses. A substantial market exists for products associated with famous personalities, whether they are officially licensed or are infringing products. Trademark registrations can be a useful complement to the Right of Publicity in such instances.
The TLL Daily Advisor of December 10, 2010 picked up on the New York Times story in its summary entitled “Missing the Mark.” They noted that the New York Times‘ coverage failed to point out that part of the benefit to an athlete in seeking trademark registrations is that the business surrounding that mark then belongs to the athlete, not the team, league, or players’ association. << http://www.tlldailyadvisor.com/ >> The TLL Daily Advisor states “Generally, if another entity (say a team) uses a phrase or image before the player applies to protect it, the first user gets the rights.” Actually, there is a lot more to the process than “first to file.” While some other countries follow the first to file approach, the U.S. system usually considers the propriety of the party seeking registration. I think most would agree that this is the better system, preventing opportunistic prospecting of marks by would-be infringers. One is reminded of the cybersquatting frenzy that took place in the 1990s and early 2000s, where the first one to apply for a domain name like “HumphreyBogart.com” would be the one to get it. See the National Arbitration Forum decision in that domain dispute here: << http://www.adrforum.com/domains/decisions/144631.htm >>
The TLL Daily Advisor also correctly notes that the business involving the trademarks associated with an athlete will generally direct the cash flow and control over use to the player directly, bypassing the players’ association that might otherwise administer and control commercial uses of a player. I think that the players associations of most leagues generally do a good job and provide a service to its constituency overall. That said, one only needs to look at recent cases such as the retired NFL players class action suits against video game manufacturers and the players associations to see that isn’t always the case. Here is my blog analyzing the award of $29 million to a class action of retired NFL players in a suit against a video game manufacturer: << http://rightofpublicity.com/analysis-of-the-29-million-jury-award-to-retired-nfl-layers >> Also see: << http://rightofpublicity.com/john-maddens-opportunity-to-speak-on-behalf-of-retired-players >>
The TLL Daily Advisor article also notes that these issues could raise a Right of Publicity issue, but concludes that it “could be a very gray area.” I’m not sure it really is all that gray, but there certainly is a need for practitioners who are experienced with the ins and outs of this area of the law and the business surrounding it. There isn’t a lot of them because it is difficult to get clients, and equally hard to get on the “inside” of the deals and opportunities that famous personalities enter into or have available to them.
To conclude on a light note, I noticed that on December 11, 2010, Saturday Night Live got in on this coverage during Weekly Update with Seth Myers. Myers states that Revis is seeking a “copyright” for Revis Island, Terrell Owens has applied for “I Love Me Some…” and Michael Strahan has “Stomp You Out,” setting up a Brett Favre punch line based on one of Al Pacino’s famous lines from Scarface. I’ll give Seth Myers a break for mistakenly saying “copyright” instead of “trademark.” He’s certainly not the first anchor or reporter to use these legally distinct terms interchangeably. I wrote a lighthearted comment on this phenomenon in Res Gestae, the magazine of the Indiana State Bar, entitled “Tradewrongs: Adventures in un-Intellectual Property.” Here is a link to that article: << http://www.luminarygroup.com/Press_Center/Articles/ResGestae_2004-10.pdf >>
Every Halloween brings another Forbes’ Top-Earning Dead Celebrities list and, usually, a few surprises
It’s almost Halloween, and Forbes has released its annual list of Top-Earning Dead Celebrities. I won’t give away the list here, but I will note a few observations. First, there are a few intriguing new entries on the list. Sometimes, it seems, what’s bad for the person is good for business. Just ask Michael Jackson. Second, a few former perennial entries have dropped off the list. Third, even in a “down” economy, the claimed earnings of those on the list appear to increase almost every year, sometimes substantially. Certainly the interest in, and thus market for, deceased famous personalities, is not waning. Here is a link to the Forbes list:
http://www.forbes.com/2010/10/22/top-earning-dead-celebrities-business-entertainment-dead-celebs-10_land.html?boxes=listschannelinsidelists
NBC sitcom 30 Rock gives a nod to the Right of Publicity through Johnny Appleseed joke
While the right of publicity is not articulated specifically, the legal doctrine made its way into the dialogue of NBC’s 30 Rock. Specifically, in the October 7, 2010 episode of 30 Rock entitled “Let’s Stay Together,” Liz Lemon (Tina Fey) is approached by Pete (Scott Adsit) on her production staff, and the following dialogue ensues:
Pete: Liz, quick question about the Johnny Appleseed sketch. Does it hurt it if we can’t call him Johnny Appleseed?
Liz: Yes! Why?
Pete: Well, Johnny Appleseed was a real guy and his descendants are very litigious (both roll eyes). So, here is a list of the names that legal says we can use: Jerry Bananaseed…and…nothing else.
Liz: Great so what are my choices? Either I argue with legal or I spend all day writing something else. Does anyone care how hard I work…?
Pete: (interrupting) Doh! We can’t use Jerry Bananaseed, someone with that name killed a bunch of nurses in Portland.
Liz: Sigh.
Later in the episode, Lemon is complaining to Jack Donaghy (Alec Baldwin) about how she doesn’t feel respected by her staff. She references not being able to do the stupid Johnny Appleseed sketch, prompting Jack to say:
“Whoa, whoa, whoa, you are not doing a sketch on the Appleseed family. Monty Appleseeed and I share a liquor locker at the opera.”
Who says the Right of Publicity can’t be funny?
Lingerie company launches ad campaign featuring Princess Diana lookalike on anniversary of Diana’s death
On the anniversary of the death of the People’s Princess, lingerie company Jealousy International has launched an ad campaign featuring a Diana, Princess of Wales look alike. In a CNN story, commentator states that there is nothing anyone can do when it occurs posthumously. Michael Jackson and James Dean are referenced as examples who have no rights or basis to object to commercial infringement. As any reader of this website knows, the rights of a deceased personality (such as those named) are generally going to be enforceable against commercial exploitation and appropriation. Here is a link to the CNN story:
http://www.cnn.com/video/#/video/world/2010/09/05/bilchik.princess.di.lingerie.cnn?hpt=T2
Who has the right to use “Material Girl” for clothing line: Madonna or LA Triumph?
Madonna has entered into a variety of licensing and branding deals recently including with her daughter, Lourdes. One of those deals is for an exclusive line with Macy’s to be called “Material Girl” after the nickname she has been known by since her hit song of the same name in the 1980s.
L.A. Triumph has filed a lawsuit to stop use of the Material Girl name by Madonna and Macy’s, on the basis that it has been using a line also called “Material Girl” since 1997.
This situation raises a variety of interesting questions concerning right of publicity and trademark. It can hardly be debated that “Material Girl” is a well-known, long-standing, and unequivocal reference to Madonna. Madonna has stated that she in fact does not like that nickname, as detailed in the article located at the link below. However, there is little question that commercial use of a nickname can be just as much a right of publicity violation as use of the person’s actual name. In my Right of Publicity classes, I use the idea of something that is “unequivocally identifiable.” In this instance, I believe Madonna is unequivocally identifiable by the nickname “Material Girl,” whether she likes it or not.
However, there is the possibility of an entity acquiring trademark interests in a name that it has been using for a long time. L.A. Triumph has reportedly been using the name “Material Girl” for over a decade. One question I have is whether L.A. Triumph’s line makes any other association to Madonna, whether overt or tacit. Perhaps that will be investigated as the lawsuit evolves.
Here is a link to the story:
http://www.nypost.com/p/blogs/popwrap/madonna_material_girl_woes_TvYY9NjKfDkzY0tVPJKakJ
Vampire Weekend Contra album cover controversy
A former model has sued the band Vampire Weekend alleging unauthorized use of a Polaroid photo of her on the cover of their release “Contra.” The model, Ann Kirsten Kennis, is seeking $2 million in damages for use of a Polaroid picture taken of her in 1983. Kennis’s lawyer said the picture was a private family photo and not a modeling picture intended for commercial use. Her lawyer says that that Kennis’ mother sometimes sold collections of the photographs she took to shops and charity bazaars.
The picture made its way to photographer Tod Brody, who is also named in the suit. The lawsuit alleges that Brody informed Vampire Weekend that he took the picture, and further alleges that Brody forged Kennis’ signature on a release form. Vampire Weekend apparently paid $5,000 for the picture. In a statement, Vampire Weekend said “As is standard practice, Vampire Weekend and XL Recordings licensed the rights to use the photo on the cover of Contra pursuant to a license agreement that contains representations and warranties authorizing this use of the photo. Now that a lawsuit has been filed, we look forward to having the matter resolved in court.”
Times Square Showdown: The Naked Cowboy vs. The Naked Cowgirl
If you’ve been to Times Square, you’ve probably seen them. On one side is the Naked Cowboy, Robert Burck, known for wearing only white underwear, cowboy hat and boots while singing and playing guitar throughout the year, in Times Square. On the other side is the Naked Cowgirl, known for wearing a bikini, cowboy hat, and cowboy boots while singing and playing guitar throughout the year, in Times Square.
Robert Burck, the Naked Cowboy claims that the Naked Cowgirl, Sandra Brodsky, is infringing the look and act he started over a decade ago. The Naked Cowboy has trademark registrations and has licensed his name and related intellectual property rights, including his right of publicity, in a variety of contexts as this site has previously reported. He also has attempted to set up a franchise system whereby others seeking to perform a similar act can do so under agreement from Burck. Brodsky has refused to sign such an agreement, claiming that the payments to Burck would make it economically unattractive to continue the act.
Burck also filed suit against Mars, Inc. in 2008, concerning a billboard campaign in Times Square depicting the M&M characters in a style similar to the Naked Cowboy. That case settled under confidential arrangements.
Here is a link to the complaint filed by Burck in late July, 2010:
California amends its right of publicity statute, adding provisions for soldiers and others who become famous due to death
This is significant because while the existing 3344.1 of the California Civil Code provides a 70 year term of post-mortem protection, it is for those who meet the criteria of personalities: “any natural person whose name, voice, signature, photograph, or likeness has commercial value at the time of his or her death.” This would suggest that those who are not personalities at the time of their death might not be eligible for protection under the prior version of the California statute. The new bill clarifies this point by adding that “personalities” includes those “whose name, voice, signature, photograph, or likeness has commercial value…because of his or her death.”
The bill was sponsored by former Marine and current Assemblyman Paul Cook, because of the recent emergence of websites selling T-shirts with names of American soldiers killed in the Iraq War. Other states have enacted similar provisions in recognition of soldiers or others who become famous because of their death, including Arizona (Ariz. Rev. Stat. § 13-3726 (2009), Florida (Fl. Stat. § 540.08 (2009); Louisiana (La. Rev. Stat. § 102.21 (2009)), Oklahoma (Okla. Stat. tit. 21, § 839.1A (2009)) and Texas (Tex. Prop. Code Ann. § 26.001 et. seq. (2009)).
The California statute was amended in 2007 to clarify or confirm that the statute’s provisions were retroactive to those who died before the effective date of the statute (1985). Presumably then, the new bill’s provisions are retroactive as well.
Hulk Hogan v. Post Cocoa Pebbles: And the Winner Is?
Professional wrestler and reality TV mainstay Hulk Hogan has filed a claim against Post for an advertisement for Cocoa Pebbles cereal in which an animated character based on Hogan’s likeness appears. The suit was filed in Florida district court. In the Cocoa Pebbles ad, Fred Flintstone and Barney Rubble are in the ring against an opponent with long blond hair and a long blond mustache referred to as “Hulk Boulder.” Hulk Hogan went by the name Hulk Boulder in the 1970s. The commercial kept running after Hogan originally objected to it in August 2009.
In the advertisement, the Hulk Boulder character initially wins a match against Fred and Barney, and eats a bowl of Cocoa Pebbles, but then Pebbles and Bamm-Bamm toss Boulder into the air. Boulder breaks into pieces upon landing, which Hogan characterized as humiliating in his complaint.
Widow of Fred Astaire files lawsuit over annual dance awards ceremony named “Fred and Adele Astaire Awards”
In early June, Robyn Astaire, widow of dance legend Fred Astaire, filed a lawsuit in the Southern District of New York, for the purpose of blocking use of Astaire’s name in conjunction with the Fred and Adele Astaire Awards, to be held at John Jay College.
The awards ceremony, which seeks to recognize dance perofrmances and choreography work in Broadway productions and film, has been held for the last twenty-eight years. Based on the allegations in the complaint, Fred Astaire licensed use of his name in 1982 for the Astaire Awards, as they were known at the time. Robyn Astaire continued the tradition by occasionally allowing use of Fred Astaire’s name for the event, but in 2006 stopped giving such authorization because she felt the nature of the event had changed.
Here is a link to the full story:
http://mediadecoder.blogs.nytimes.com/2010/05/31/stumble-for-an-awards-show/?ref=media
Lindsay Lohan and the E*Trade “milkaholic” baby
Lindsay Lohan has filed a lawsuit in New York against E*Trade, seeking $50 million in compensatory damages and $50 million in punitive damages. She also seeks to have the advertisement pulled. The advertisement, which premiered during Super Bowl XLIV, involves an off-screen female voice asking the on-screen E*Trade baby through a video chat if “that milkaholic Lindsay” was over when he didn’t call her the night before, prompting another baby, Lindsay, to step into the camera and ask “milk-a what?”
Is Lindsay Lohan identifiable from the E*Trade use? Lohan’s attorney has stated that Lohan is famous on a single-name basis, just like Oprah or Madonna. Whether that can be established may be up to the judge or jury if the parties don’t settle the claim first.
Here is a link to the story:
http://www.msnbc.msn.com/id/35780790/ns/business-media_biz/
NCAA policies regarding use of players’ names and images under fire again
The policies of the NCAA concerning use of student athletes’ names, images and likenesses have been a lightning rod for controversy in recent years. Most recently, former UCLA basketball star Ed O’Bannon achieved an interim victory when, on February 8, 2010, a judge in San Francisco denied the NCAA’s motion to dismiss a class-action lawsuit led by O’Bannon. A large part of the claim centers around the NCAA’s agreements that athletes must sign, allowing the NCAA use of students’ names and images for the NCAA to promote events, activities or programs. Since I have colleagues or clients on both sides of the aisle, I’ll remain neutral on the issue and let you come to your own conclusions. Here’s a link to the story:
http://www.nytimes.com/2010/02/09/sports/ncaabasketball/09ncaa.html
Proposed amendment to Indiana’s Right of Publicity statute
HB 1335 Provides that, for purposes of the law concerning rights of publicity: (1) to codify the common law in existence before July 1, 1993, the law applies to a cause of action commenced after June 30, 1993, regardless of when the cause of action arose; (2) if a personality died testate before July 1, 1993, the rights recognized under the law are deemed to be in the possession of the current holder of the interests of the beneficiary of the residuary clause of the testamentary instrument as if the rights had been distributed according to the testamentary instrument and transferred according to the rights of publicity and, if a personality died intestate before July 1, 1993, the rights recognized under the law are deemed to be in the possession of the current holder of the interests as if the estate had been distributed according to the law where the estate was probated and transferred according to the rights of publicity; and (3) if a testamentary instrument does not contain an express transfer of the deceased personality’s rights of publicity, a provision in the testamentary instrument that provides for the disposition of the residue of the deceased personality’s assets is effective to transfer the rights recognized under the law in accordance with the terms of the provision. Makes other changes concerning the transferability and descendibility of rights of publicity
I have read the substance of HB 1335 and I’m inclined to give my support to its provisions as currently drafted. The entire bill can be viewed at this link: http://www.in.gov/apps/lsa/session/billwatch/billinfo?year=2010&request=getBill&docno=1335
AIPLA Conference includes Right of Publicity presentation by Author of RightOfPublicity.com
Last week, I had the opportunity to speak at the American Intellectual Property Law Association’s annual mid-winter conference in La Quinta, California. The panel presentation I was part of focused on various intellectual property matters, while my specific presentation concentrated on recent Right of Publicity cases and legislative developments. The Right of Publicity presentation generated a strong crowd response and dialogue, which made for an engaging session. The conference featured decorated speakers including senior executives from IBM, Microsoft, Texas Instruments, Palm, AT&T, Lockheed Martin, Caterpillar, and many others, as well as attorneys from all over the world. AIPLA puts on an impressive program and I would highly recommend it. The location, La Quinta, was quite impressive as well. Be sure to check out AIPLA’s future programs at http://www.AIPLA.org for more information.
Shaquille O’Neal files lawsuit against Las Vegas company for “Shaqtus” portrayal and other infringing activities
A few weeks ago, it was Michael Jordan suing Chicago-based grocery stores, this week it is Shaquille O’Neal suing a Las Vegas business called True Fan Logo. In both instances, businesses from the hometown of the NBA teams Jordan and O’Neal played for (respectively) used the Right of Publicity of each player without authorization.
O’Neal has a company in place for handling the management of his intellectual property rights, including his trademark and Right of Publicity. Mine O’Mine, Inc., O’Neal’s company, is therefore named as the plaintiff in the lawsuit, which was filed against defendant True Fan Logo as well as the individuals who own True Fan Logo.
The activity giving rise to the lawsuit relates to defendant’s online store named “Shaqtus Orange Clothing Co.” as well as some interesting exchanges between the parties.
When O’Neal played for the Phoenix Suns, he was known as “The Big Cactus” and “The Big Shaqtus.” O’Neal now plays for the Cleveland Cavaliers.
The lawsuit states that the defendant’s web site displays an animated cactus character with O’Neal’s likeness, wearing an orange “Phoenix Shaqtus” jersey and the number 32, which was O’Neal’s number when he played for the Suns.
The law suit also includes allegations of some interesting exchanges between defendant’s company and ESPN, including defendant’s issuance of a cease and desist letter to ESPN claiming that defendant owned the rights to the Shaq cactus image, but offering to resolve the matter if ESPN would do business with defendant. Reportedly, ESPN responded that it had permission from Shaquille O’Neal’s company for the ESPN cactus portrayal, and that in fact it was defendant’s who were infringing upon O’Neal’s intellectual property rights.
The law suit also details an exchange between the parties in which defendant’s claim that Shaquille O’Neal consented to defendant’s use of the Shaqtus name when O’Neal posed for a picture with defendant and signed a t-shirt for the defendant.
The lawsuit includes claims ranging from trademark infringement, dilution and unfair competition to cybersquatting for defendant’s use of domain names that employ O’Neal’s intellectual property rights.
Perhaps the circumstances giving rise to this lawsuit, if taken at face value, may explain why athletes are sometimes reluctant to sign autographs for “fans” who then try to exploit that autograph, photograph or brief interaction for commercial gain.
PETA launches new ad featuring Michelle Obama without First Lady’s permission
PETA has launched a new advertisement featuring Michelle Obama, Oprah Winfrey, Carrie Underwood and Tyra Banks. PETA did not get permission from the First Lady for her inclusion in the advertisement. PETA’s response to the mounting criticism is that PETA “wouldn’t have sought” Obama’s permission because PETA “knows” the First Lady “can’t make such endorsements.” Here’s is a link to the story with an image of the advertisement:
http://www.swamppolitics.com/news/politics/blog/2010/01/michelle_obama_peta_ad_fur_fli.html
Michael Jordan Sues Grocery Stores for Hall of Fame Congratulatory Ads
The Chicago Sun-Times has reported that Michael Jordan has sued two Chicago-area grocery stores for advertisements for the grocery stores featuring Jordan’s name and number 23 which ran in Sports Illustrated. The ads for Jewel and Dominicik’s offer congratulations to the Chicago Bulls legend for his induction to the Basketball Hall of Fame, while also promoting steaks and other goods available at the grocery stores. The lawsuits seek at least $5 million in damages from each of the stores. One of the ads depicts Jordan jumping through the billboard with the tagline “You are a cut above” along with a coupon for a steak at the grocery store. The Jewel ad features a pair of shoes that Jordan claims are a “misleading copy” of his signature Nike Air Jordans. Here is a link to the story:
http://www.nbcchicago.com/news/local-beat/Michael-Jordan-Sues-Jewel-and-Dominicks.html
Chuck Yeager lands favorable ruling in right of publicity claim against AT&T
General Chuck Yeager, known for breaking the sound barrier amongst many other distinctions in his career, has won a ruling against AT&T for the unauthorized use of his right of publicity. The story at the following link gives a bit more detail, although it also characterizes breaking the sound barrier as itself a protectable intellectual property asset.
http://www.onpointnews.com/NEWS/Chuck-Yeager-Keeps-on-Flying-With-Publicity-Rights-Suit.html
Bob Marley predicted to gross over $1 billion by 2012
The private equity firm that purchased a controlling share in the intellectual property rights pertaining to Bob Marley is predicting that gross revenue associated with Bob Marley could surpass $1 billion by 2012.
The revenue predictions are based on pending deals featuring Bob Marley in the electronics, video game, beverage and skin care product categories. It also is interesting to note that this firm, Hilco Consumer Capital, has also announced its first-phase plan to crack down on unauthorized uses of Bob Marley’s name, image and likeness. In a down economy, pursuit of unauthorized uses coupled with the potential of litigation can be an effective supplement to the accounts receivable column.
If the estimates ring true, the reported acquisition price of $20 million will prove to have been a good investment. Here is a link to the story:
http://money.cnn.com/2009/11/20/news/companies/bob_marley.fortune/index.htm?cnn=yes
http://www.rightofpublicity.com
Nelson Mandela and the $24 Mandela Burger
Time Magazine has recently reported on a “Mandela Burger” offered by a cafe in Copenhagen, named after Nelson Mandela.
What is not articulated in the Time coverage is that the Cafe itself is named Cafe Mandela. If a “Mandela Burger” is an actionable violation, so too is “Cafe Mandela.”
Mandela and his Foundation are based in South Africa, and the cafe is based in Denmark.
Just in time for Halloween, Forbes.com releases 2009 Top-Earning Dead Celebrities list
The new 2009 Forbes list of “Top Earning Dead Celebrities” has just been released. A Halloween tradition, this year’s list brings a few surprises along with some, but not all, of the usual suspects.
Of note are the significant numbers these personalities pulled in, with the first spot occupied by Yves Saint Lauren at a reported $350 million. A few years ago, $50 million would have guaranteed the top spot. This year, that amount would barely earn a spot in the top 5, with J.R.R. Tolkien holding the number five slot at a reported $50 million.
On closer examination, most of the larger-than-usual numbers are driven by one-time events. The Yves Saint Laurent entry was primarily a result of an auction of an art collection he owned with his partner. The runner-up, Richard Rodgers and Oscar Hammerstein, claim a reported $235 million as a result of a $200 million acquisition of the rights to Rodgers’ and Hammerstein’s creations by a Dutch pension fund. Michael Jackson pulls in at number three, with a reported $90 million stemming from earnings from a merchandise deal, the Sony film This Is It, and the significant increase in sales and airplay of his music catalog following his death. Elvis is the first perennial entry, claiming $55 million for the number four spot on the list. Tolkien’s $50 million, enough to pull in a top five entry, was the result of a settlement between the HarperCollins and New Line Cinema over a dispute over unpaid royalties.
In each of these cases, the circumstances will not repeat and many of these names will drop off. That said, I expect that Michael Jackson will be even higher on the list next year. J.R.R. Tolkien will no doubt reemerge after the release of the Lord of the Rings prequel, The Hobbit, in 2011.
Through it all, Elvis and Albert Einstein remain perennial entries, with John Lennon and Jimi Hendrix also proving to be safe bets. Three out of four of those are musicians, in part because the value of an iconic music catalog can serve as an almost inexhaustible asset with no pre-determined cap on potential earnings. I’ll leave it to you to figure out the past perennials who have dropped off the list, although at least a few of the comments on the Forbes website for this story have picked up on these absences.
The complete Forbes 2009 list can be accessed at:
http://www.RightofPublicity.com
FTC Proposed Regulations Concerning Celebrity Endorsements
The FTC is considering new regulations concerning celebrity endorsements and testimonials. As some may be aware, the FTC has previously taken a position concerning the authenticity of certain celebrity endorsements and testimonials, so these developments are not entirely uncharted territory. It is interesting to consider how these regulations could be intepreted with respect to deceased personalities. One might conclude that if a personality is deceased, how can they endorse much of anything? In fact, the matter is not that simple and there are certain dynamics in place which can function in a same or similar capacity as an endorsement from a living person. The extent of the endorsement may also be part of the analysis, such as when an infomercial heavily integrates a given personality, and the strong indication is that the personality uses and recommends the product.
This is more directed at living celebs and infomercials, but it has some potential applicability in both casting and celeb brand licensing and doesn’t appear to distinguish b/t living or dead celebs. It might be something you need to consider drafting specific clauses in the license to address, particularly regarding liability of celebrities for false claims. While no distinction is made between living and deceased personalities, the following are specifically identified:
1. Celebrity endorsers may be liable for statements about a product which are false or do not represent the celebrity’s own views
2. Advertisers should disclose the relationship when the celebrity is pitching a product or service on a talk show or other medium when the it is not obvious that the celebrity is being paid to make that plug.
3. Advertisers should only use endorsements of celebrities if the advertiser believes that a celebrity subscribes to the views presented.
More information is accessible at the following link:
Courtney Love To Sue Activision Over Kurt Cobain’s Inclusion in Guitar Hero 5
It should be apparent to even a casual observer that video games seem to be causing a lot of litigation lately. The latest entry is Courtney Love’s stated intention to sue Activision for its inclusion of Kurt Cobain’s image and likeness (i.e. his Right of Publicity) in Guitar Hero 5. Apparently, Guitar Hero 5 is the first to include some of Nirvana’s signature songs. The songs are not the real issue, however, because an avatar of Kurt Cobain can also be accessed and used to perform other songs besides just the Nirvana material. This scenario creates the possibility that Cobain can be manipulated to perform songs that the real Kurt Cobain might have preferred to never perform. A few years ago, Courtney Love sold her share, or at least majority share, in the Nirvana catalog. The answer may lie in that transaction, and whether it included the right to license and commercialize Cobain’s name, image and likeness. There is at least a chance that the agreement allowed such use, especially if it is in context of licensing the music. Let the debate over unforeseen consequences begin! Here is one link to the topic:
http://www.rightofpublicity.com
TheJayLenoShow.com belongs to Jay Leno after UDRP ruling in Leno’s favor
Perhaps I am dating myself by saying so, but I remember when there were no governing rules or dispute resolution procedures in place to govern domain name registrations. I also recall the passage of the UDRP, which led to my involvement in some of the earliest celebrity-based domain name decisions on record. Some of those decisions are still cited today in current domain name disputes. The latest example of a celebrity domain name recovery involves Jay Leno. See http://www.wipo.int/portal/index.html.en
On June 25, 2009, WIPO decided in favor of Jay Leno in his UDRP action to recover TheJayLenoShow.com from a cybersquatter. The case, entitled Leno v Zambrano (Case D2009-0570), pitted Leno against a Texas real estate agent who had registered the domain name in 2004. Zambrano had used the domain name to redirect visitors to his real estate website.
It is interesting to note that at the time the domain name was registered, Leno’s show was actually called The Tonight Show. In the Fall of 2009, following his departure from The Tonight Show, Leno will be hosting a prime time show called The Jay Leno Show. This name, therefore, directly correlates with the domain name in dispute.
The pleadings on behalf of Jay Leno alleged common law trademark rights in his name. For those who have actually handled personality based domain name disputes, it is well known that the right of publicity is not specifically articulated in the UDRP rules governing owernship of domain names. Thus, a personality must either demonstrate ownership of registered trademarks, or argue in a trademark context that common law trademark interests exist. In a way, this is a round-about way to approximate the right of publicity, and historically it has proven to be effective in front of the domain dispute arbitrators.
One interesting takeaway from the ruling is that the arbitrator dismissed Zambrano’s defense of laches. Zambrano argued that his ownership of the domain name for five years precluded Leno from pursuing recovery. The arbitrator ruled that laches does not apply in UDRP proceedings..
Following the usual criteria that a complainant must meet in a UDRP action, the arbitrator ruled that the domain name in dispute clearly incorporated the entire Jay Leno mark, which was confusingly similar to Leno’s mark. The arbitrator ruled that Zambrano had no rights or interests in the domain. Last, the arbitrator ruled that Zambrano knew of Jay Leno and the value of Leno’s name. Taking all these factors into account, the arbitrator ruled that Zambrano had used the domain name in bad faith to attract web traffic to his site for commercial gain.
http://www.rightofpublicity.com
Michael Jackson licensed products about to hit shelves, but who has a claim to the proceeds?
It didn’t take long, and it might be because of the merchandise in development for the anticipated Michael Jackson tour, but Michael Jackson merchandise is about to hit shelves. Perhaps the most interesting question is, who will have a claim to the proceeds generated by the Michael Jackson products? Stores slated to carry Michael Jackson goods include Target, JC Penney, Hot Topic, and Spencer’s. As reported by the LA Times, Bravado is licensed via AEG. AEG, in turn, had certain rights to create merchandise for the Michael Jackson concert in London. The LA Times story indicates that it is unclear whether Michael Jackson’s heirs will receive a share of the proceeds generated by the products. As predicted by the first blog posted on this site concerning Michael Jackson’s death, the answer to this question may have to be answered by a Judge. Here is a link to the LA Times article: http://www.latimes.com/business/la-fi-ct-jackson9-2009jul09,0,1433764.story
http://www.rightofpublicity.com
Will Michael Jackson’s Death Spawn a Battle Over His Assets, Including His Intellectual Property and Right of Publicity?
Perhaps it’s inevitable. Michael Jackson’s sudden, tragic death may trigger a battle over his assets, which would include his intellectual property and right of publicity interests. CNN.com has already reported on this possibility at the following link: http://www.cnn.com/2009/SHOWBIZ/06/26/jackson.children.will/index.html
Sometimes, the assets and intellectual property rights of a famous individual will be carefully transferred through testamentary documents based on the celebrity’s wishes. Other times–and more often than many might suspect–it is left for the heirs and potential claimants to fight it out. Adding to the feeding frenzy is the expectation of sudden fortune to be claimed, which tends to bring distant “relatives,” “long-lost friends,” and claimants with even more mysterious links to the celebirty out of the woodwork. I’ve seen it before. Some people claim to be the long lost child of Marilyn Monroe. Others claim to be Marilyn reincarnated. And when Rosa Parks died, a lengthy probate process ensued in Michigan over who had a viable claim to her estate. With not much real property to divide, that battle was almost entirely about Rosa Park’s intangible rights, which essentially is her right of publicity.
In the case of Michael Jackson, it has not yet been disclosed what testamentary documents he may have put in place. His family circumstances are rather complex, so without a clear succession plan for assets like his right of publicity, it could take a team of lawyers and a judicial decree to resolve the question. As the above CNN link reports, it is not known whether he had a will in place at all.
Jackson was married several times, and had children who were born to two mothers, Debbie Rowe and an unidentified surrogate. Rowe gave up her parental rights to her two kids with Jackson, but later sought to have her parental rights reinstated. In the absence of testamentary instructions from Jackson, or any possible assignment of his rights during his lifetime, the laws of intestacy will likely control. Interpretation of a given state’s intestacy likely will include examination of Jackson’s spouses, children, siblings, and parents. Since he had all of the above, it will be interesting to see if things can be worked out amicably.
Even with his reported debt of almost $500 million, I expect Jackson’s assets to be considerable. His music publishing interests, as well as a 25% ownership in the Beatles music publishing catalog, will be valuable for a long time to come. What is less likekly to be reported, but is potentially every bit as valuable, is Michael Jackson’s right of publicity, which would be the subject matter for any advertising or merchandising that issues from this point forward.
Sadly, the craziness that surrounded much of Michael Jackson’s life will probably not stop any time soon, even after his untimely death on June 25, 2009.
http://www.RightofPublicity.com
Woody Allen settles American Apparel infringement for $5 Million
Woody Allen has settled a lawsuit against American Apparel for $5 Million. The suit was over two unauthorized billboards for American Apparel in New York and Los Angeles, in May of 2007. The billboards depicted Woody Allen as an Orthodox Jew in a still photo taken from his movie Annie Hall, along with Yiddish text declaring Allen “the High Rabbi.” This website, http://www.RightOfPublicity.com, is referenced in Business Week’s ( http://www.BusinessWeek.com ) coverage of the suit. Another interesting aspect of this situation is that the settlement is being reported and publicized. It is often difficult to ascertain the monetary aspects of a dispute without direct involvement.
http://www.RightOfPublicity.com
Al Pacino and Robert DeNiro file suit against watch maker Tutima
Al Pacino and Robert DeNiro, two actors known for avoiding commercial tie-ins, have sued the watch manufacturer Tutima Inc. as well as Overture Films. The advertisements were tied to the film “Righteous Kill” in which Pacino and DeNiro starred. The announcement can be viewed at this link:
http://news.yahoo.com/s/nm/20090304/people_nm/us_lawsuit
The activities apparently included advertisements as well as a clip of Righteous Kill on Tutima’s website.
http://www.RightOfPublicity.com
Fifty percent of Bob Marley’s Right of Publicity and related IP sells for $20 Million
In the latest celebrity rights acquisition, it was announced recently that investment firm Hilco Consumer Capital has acquired 50% of House of Marley, LLC, the entity founded by the family of Bob Marley, for an estimated $20 million. A press release reports that the new owners will “spend whatever it takes to stop infringements on this business” and estimate that once the market is clear, Bob Marley could represent a billion dollar brand. Hilco has also invested in the intellectual property assets of other businesses such as Sharper Image and Linens ‘n Things. One of the key elements in such an acquisition is the Right of Publicity. Bob Marley is an evergreen property with tremendous potential.
http://www.RightOfPublicity.com
Sasha and Malia dolls
Notable manufacturer Ty (beanie babies) has introduced a line of Sasha and Malia dolls. I have already noted that even elected officials possess a right of publicity, albeit perhaps subject to heightened First Amendment and political speech defenses. Do those defenses apply to Ty here? Here’s the link to the story with pictures of the products: http://www.patentlyo.com/patent/2009/01/sasha-and-malia-dolls-legal-remedies-for-the-obamas.html?cid=146130850#comments