PSA: watch for the Right of Publicity in action in this weekend’s Super Bowl commercials
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
Bijan Mustardson illustrates Right of Publicity (NIL) in action
In what may be a contender in the “most clever” licensing event of recent times, the running back for Texas, Bijan Robinson, is involved in a mustard line launch entitled “Bijon Mustardson.” It is, quite obviously, a dijon mustard. Also, quite obviously, this “NIL deal” is more properly understood as a Right of Publicity matter, though admittedly involving a collegiate athlete. We’ll let semantics have a rest and simply enjoy when the licensing deals practically write themselves. Here’s a link to more info:
Bijan Mustardson” rel=”noopener” target=”_blank”>Bijan
Very brief excerpt of House of Gucci dialogue regarding infringements
Lady Gaga: Patrizia
Adam Driver: Maurizio
Al Pacino: Aldo
Patrizia: Who is making this stuff? Who’s allowing this to happen?
Maurizio: As far as fakes go, they’re pretty good. I mean, I’d, I’d buy them.
Patrizia: Don’t be such a cretin.
Maurizio: Don’t call me a cretin, sweetie.
Patrizia: That’s not what I said. I asked you not to be one. This is serious. And you’re laughing it off.
Maurizio: At least it’s my name on the marks, not yours.
Patrizia: Our name. Sweet Pea. On junk.
Aldo: They’re not fake, by the way. They’re replicas.
Patrizia: I was just very, very surprised.
Aldo: Well, you know what else would surprise you? How profitable this stuff is.
Patrizia: What about quality? Sacred cows?
Aldo: Quality is for the rich. If a Long Island housewife wants to live with the illusion that she is a Gucci customer, why not? Let her.
Patrizia: Because it…damages Gucci’s credibility
Aldo: Patrizia…this is us. This is not a girl’s game.
Maurizio: Yeah but Aldo, she’s right. This stuff is, is junk. It’s not what Gucci is.
Aldo: Gucci is what I say it is.
Note regarding Lil Yachty lawsuit against Opulous for NFT offering
Without tackling the entirety of issues involved, it seems worth noting that the most recent coverage reports that the UK-based NFT company, Opulous, may be arguing California does not have jurisdiction over Lil Yachty’s suit for Opulous’ NFT offering and promotional activities related thereto utilizing Lil Yachty’s Right of Publicity and other rights and interests. The lawsuit alleges various violations and claims.
When analyzing the totality of a use, the final execution of the product involved (if a product-based offering) is not the entirety of the matter, as promotional efforts also must be considered, among other things. The value of an association with a celebrity or valuable Right of Publicity (in popular parlance, name image likeness) can accrue before any product is sold. NFTs, in particular, can generate repeat sales, and can sell for undetermined amounts based on the market response. The facts of the Lil Yachty lawsuit indicate that social media promotions, and funding for the defendant company, were aided by the promotion of the NFT in question.
It will be interesting to observe how the fact that defendants reportedly had communications with Lil Yachty in the planning stages for the NFT, then broke off negotiations yet proceeded with the use. That tends to be a strong fact, if accurate, in plaintiff’s favor in cases such as this.
If California does not have jurisdiction over this case, it may be a fair question whether defendant hermetically sealed its promotional efforts from California, not to mention how bids or potential sales from the jurisdiction in question were prevented. Of course, much depends on the specifics of a claim of this nature, what is established as factual, and related details.
Here is a link to Billboard’s coverage of the suit, which includes the complaint in question:
Lil Yachty lawsuit against Opulous, et. al., for unauthorized NFT activity
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?”
New York State Assembly Bill A560C
New York’s legislature may be closing in on passing a Right of Publicity statute with New York State Assembly Bill A5605C. If so, it would be a significant development in the Right of Publicity realm as New York has been conspicuously behind other states for a very long time. As of July 20, 2020, the bill was “amended on third reading” (here’s a link to the timeline and status of the bill which also has link to the PDF of the bill itself): https://www.nysenate.gov/legislation/bills/2019/A5605
Overall, my take is that this bill would be a step in the right direction, even as it would still amount to New York having one of more narrow or limited Right of Publicity statutes in the United States. For example, a forty year post-mortem provision is quite anemic, and creating a registry system sounds good on paper but in my experience is not particularly helpful yet introduces various problems. Video games are not on the list of exempted works, as they should not be, and also to its credit, the bill has meaningful provisions in relation to Deepfakes and the problems such technology present in the modern world.
The progress of this bill seems already to have traveled further than past efforts. Hopefully, tired refrains like “this bill exists only to enrich a few wealthy estates” are worn-out by now and find no traction. Does copyright and trademark exist only to enrich a few wealthy creators or companies? Observations of past legislative efforts in New York are addressed in the following link I made on the topic: https://rightofpublicity.com/observations-about-new-yorks-assembly-bill-a-8155b
Licensing International Executive Voices article
Here is a link to an article I wrote for Licensing International’s Executive Voices series: https://licensinginternational.org/news/discernment-in-licensing-and-enforcement/
Dr. Fauci doughnuts
A company in New York has begun offering “Dr. Fauci” doughnuts, which apparently involve edible paper on the doughnut with Dr. Fauci’s image printed on it. Dr. Fauci has become a daily fixture in the coverage of the Covid-19 pandemic and a visible leader in the response and information concerning the outbreak. Donuts Delite, the company selling the doughnuts on a nationwide basis, reportedly, will continue selling the doughnuts “as long as they are in demand.” Here is a link to the story: https://www.cnn.com/2020/03/26/us/dr-fauci-doughnuts-trnd/index.html Dr. Fauci Doughnuts
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.
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.
Reuters story on Mattel’s Inspiring Women doll line
Amicus brief filed in Lohan Grand Theft Auto V suit and some NY observations
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
The Right of Publicity resource
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:
President Trump and the Right of Publicity of a political figure
Here is a link to an in-depth article on the Right of Publicity as it pertains to political figures in general, and President Trump specifically. I was interviewed by the author and contributed several quotes to the piece. Here is the link: President Trump and the Right of Publicity
Former Bears player Brian Urlacher files lawsuit against Florida hair clinic
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
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
Sounds like a Right of Publicity valuation expert is needed in Michael Jackson IRS dispute
Interesting Bloomberg article dated 2/1/17 covering the dispute over the valuation of Michael Jackson’s estate. “The IRS claims Jackson’s should have been valued at $434 million. The estate claims that it was worth a mere $2,105.” Sounds like a case for a Right of Publicity valuation expert. Here’s a link to the Bloomberg article: Bloomberg: Michael Jackson estate valuation
Article on Canadian Right of Personality
The following link leads to a useful article on Canadian personality rights (equivalent to the Right of Publicity in the U.S.): http://www.americanbar.org/publications/landslide/2016-17/november-december/protecting_professional_athletes_personality_rights_canada.html
Highest Paid Deceased Celebrities for 2016
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.
Right of Publicity annual update at Indy Bar
Join me and Joel Tragesser of Quarles & Brady on Wednesday, October 12th, 12 pm – 1 pm at the Indianapolis Bar Association Education Center for our annual Right of Publicity update. The program provides one hour of CLE credit. Here is a link for registration and other details: https://www.indybar.org/index.cfm?pg=events&evAction=showDetail&eid=36514
The Indy Bar facilities are located at 135 N. Pennsylvania St., Ste. 1500.
Topics will include legislative updates (Alabama, Minnesota, Indiana), complex developments (like the death of Prince), case law (including Avvo, Hulk Hogan v. Gawker, Pele v. Samsung), valuations, deal-making, and hot-topic issues such as Halloween costumes and Presidential elections.
See you there!
Hollywood Reporter’s “Hollywood Hologram Wars” quotes Faber of RightOfPublicity.com / Luminary Group
Nice to be quoted in Eriq Gardner’s new piece in The Hollywood Reporter entitled “Hollywood Hologram Wars: Vicious Legal Feud Behind Virtual Mariah, Marilyn and Mick.” The article does a great job examining the business potential and burgeoning adoption of so-called hologram technology as well as corresponding growing pains and legal issues, particularly between those developing the technology itself.
In answer to Eriq’s question of “what’s the licensing and business potential for this technology?” I also said that it depends on:
a) what is being counted (fees to the estate, to the owners of the technology itself?); and
b) gross or net; and
c) how the market responds.
If the market responds well to an Elvis live show on a world tour, those gross earnings alone could be well on the way to the billion mark. And if it follows with a Johnny Cash or Michael Jackson tour, yes, it will reach billion dollar potential. And, will people be interested in seeing Michael Jackson “live” once, or over and over?
Here’s the link to Eriq Gardner’s The Hollywood Reporter article:
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.
Pope Francis dolls?
Here’s a Right of Publicity fact pattern to kick around: can a company make Pope Francis dolls without a license from the Pope?
I don’t know if the recently announced Pope Francis dolls from Bleacher Creatures are licensed or not, so I want to be clear on that point and allow for the possibility that they are. Bleacher Creatures primarily makes 10″ dolls of famous athletes, and they wouldn’t be doing that without permission.
In the link below, I find it interesting that the company is said to be “crossing their T’s and dotting their I’s” but the extent of that due diligence appears to be simply that they “reached out to the Vatican” and “would love to officially partner with them.” Taken at face value, that strongly indicates that they do not have any form of permission to make the dolls.
Of course, “reaching out” coupled with a statement of desire to “officially partner” is not all that is needed to proceed with commercial products of a famous person. Perhaps the play here is that the Pope isn’t likely to file a claim over it, but last time I checked, “likelihood of getting away with it” was not the legal standard for Right of Publicity infringement.
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:
Arnold Schwarzenegger sues Arnold Nutrition Group for $10M
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=
Ninth Circuit ruling in Hendrix case: Washington Right of Publicity is constitutional
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
NCAA’s Right of Publicity petition to U.S. Supreme Court denied
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.
Kanye West responds to Coinye West infringement
File this in the “sad but true” category: even blatant intellectual property infringements can create a successful PR stunt. Apparently, the handful of people behind the virtual currency company calling itself “Coinye West” have refused to back down, though they apparently did drop “West” from the name.
As I teach in my Right of Publicity classes, context matters. Dropping West from the name at this stage does nothing to reduce liability, and really only confirms that the infringer knew the activity was an infringement in the first place. There also is that small detail of a rendering of Kanye West appearing on the “coin” itself.
I don’t normally take sides in these matters, and Kanye is himself no stranger to either controversy or PR manipulation; nevertheless, this kind of blatant infringement is the sort of thing that the Right of Publicity exists to address. Perhaps after a legal ruling comes down, the cost of the infringement will be massively more than the PR (or venture capital funding behind the company?) was worth.
We’ll see what happens next. Here’s a link to the letter sent by Kanye West’s attorneys:
Fashion Counsel video on Right of Publicity
Here is a link to a video post by Arent Fox briefly touching on post-mortem Right of Publicity issues. The emphasis is on the fashion industry but certainly has broader application than just one industry. Here’s the link:
Forbes’ annual Top-Earning Deceased Celebrities list produces no surprises
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/
Harper Lee, author of To Kill A Mockingbird, sues museum
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.
LIMA’s August 2013 newsletter, BottomLine, features article by RightOfPublicity.com’s Faber
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!
New content and updates to RightOfPublicity.com
Significant updates and added content has been completed to the http://www.rightofpublicity.com website! Here’s a road map to the new materials:
Under notable cases, check out:
Hart v. EA ruling / 2013
James Brown v. Corbis ruling / 2008
Keller v. EA, NCAA ruling / 2013
Jim Brown v. EA ruling / 2013
Major Taylor summary judgment ruling / 2010
Dillinger v. EA ruling / 2011
Einstein (HUJ) v. GM / 2012
Under Statutes, in addition the recent posting of the new 2012 Indiana Right of Publicity statute, also see the section at the bottom captioned “Draft Statutes,” specifically:
New Hampshire draft / 2012
New York draft / 2013
North Carolina draft / 2009
Massachusetts draft / 2011
Last, under Articles, be sure to read the article by Jason Larsen (“So Who Owns the Rights…”), from the Sports & Entertainment Law Section of the North Carolina Bar Association’s publication, The Front Row (posted with permission), as well as my article (“Lessons Learned…”) in that same publication on North Carolina’s recent legislative efforts on the Right of Publicity front.
Good article on the very real dangers of counterfeits and IP infringements
It’s too easy to conclude “buying this knock-off doesn’t hurt anyone.” Follow the $.
That’s not exactly the focus of the article on the following link, but that popular sentiment and the serious dangers stemming from counterfeit goods go hand in hand.
Two new video game rulings from the Ninth Circuit, Jim Brown v. EA and Keller v. EA
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.
UK ruling in favor of Rihanna against Topshop’s unlicensed shirts featuring her image
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:
RightofPublicity.com author served as expert in NM case in which jury awarded $1.8M verdict
Earlier this month, I testified as an expert witness on behalf of a Plaintiff in a case in New Mexico. The jury awarded a verdict of $1.8M to Plaintiff. Here’s a link to an article in the Albuquerque Journal that provides various details on the case:
North Carolina Bar Journal article on Right of Publicity legislation
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:
July 2013 Reader’s Digest includes fascinating legal notice re: Right of Publicity of former NFL players
I’ll go out on a limb and say that this may be the first time the “Right of Publicity” has appeared in Reader’s Digest. Not in an article, mind you, but in a legal notice alerting the public of a class action settlement. Fascinating reading. Here’s an image of the notice which I believe you can zoom to read:
Former Rutgers Quarterback Ryan Hart wins Right of Publicity claim against EA
Earlier this week, a ruling from the Third Circuit came down in favor of former Rutgers quarterback Ryan Hart in his claim against video game manufacturer Electronic Arts (EA). In short, the ruling concludes that the use of Hart in the NCAA football video game is not transformative. This of course makes perfect sense, as the objective in sports video game programming is to make things as realistic as possible. In other words, the goal is to transform as little as possible.
The court also explains in its ruling that the oft-cited Rogers test is not the best fit for the situation presented in Hart’s claim against EA, and confirmed that the First Amendment does not trump the Right of Publicity in a non-transformative, commercial use such as the Right of Publicity.
Here is a link to the court’s ruling:
Rihanna files $5 million lawsuit against Topshop for unlicensed t-shirts
British retailer Topshop has been selling apparel featuring Rihanna’s image, but without her permission. Apparently, Topshop responded to Rihanna’s objections by offering $5,000 and the statement that they don’t care if she approves or not. I like Rihanna’s chances in this lawsuit.
Hollywood Reporter article on movie rights and Right of Publicity of criminals, includes Luminary Group’s Jonathan Faber commentary
Interesting article in today’s The Hollywood Reporter. The article considers the two persons believed to be behind the Boston Marathon bombing, and the possibility of a movie depiction of these events. I do not think such a project is actually underway; rather, I understand the article simply to be exploring these compelling questions.
The recent film Zero Dark Thirty raises similar, though perhaps not identical issues. For my contribution to the article, I emphasized that I do not expect that the surviving suspect in custody (Dzhokhar Tsarnaev) could stop a movie from being made about him by using a Right of Publicity argument, due to a combining of reasons involving public interest, newsworthiness, Son of Sam provisions, and statutory exemptions for certain kinds of use that appear in most forms of Right of Publicity legislation.
When production companies seek out life story rights, it is almost always (in my experience) those in which the blessing or involvement of the family is desired and beneficial to the project overall. There would, of course, be counterpoints, but it is nonetheless a useful starting point in grappling with the question raised by Eriq Gardner in The Hollywood Reporter piece.
Here is a link to the article: http://www.hollywoodreporter.com/thr-esq/boston-bombing-movie-why-dzhokhar-444026
Donald Trump seeks $400,000 in cybersquatting case
Having been involved in some of the first high-value domain name recoveries and reported WIPO/NAF decisions, I find that domain name disputes often provide interesting micro-case studies. The decisions–at least of the arbitration variety–often issue very quickly with no formal discovery, and provide brief reported decisions centering on a potentially valuable asset and the intellectual property interests implicated by that particular registration. The latest domain name dispute making news involves four domains based on Donald Trump’s name, for which Trump is seeking $400,000 in damages ($100,000 per domain name).
The domain names in question include trumpmumbai.com and trumpindia.com. These domains were registered by the current owner upon announcement by Donald Trump’s organization of plans to develop hotels in locations such as Mumbai and Bangalore, India.
Domain name disputes sometimes hinge on the use being made of the domain name in question. I do not know if any actual content was posted on these domain names, but the domains obviously feature Trump’s name combined with the location of pending business developments. This triggers both trademark as well as Right of Publicity considerations. But it also is important to consider who has registered the domain names and what his or her likely (if not expressed) intent was in doing so.
In the domain name recoveries and arbitrations I handle, I make a point of emphasizing if the current registrant appears to be a cybersquatter. In some cases, it becomes apparent that the registrant was engaging in precisely the kind of activities that anti-cybersquatting regulations are designed to prevent. The coverage on this story, as on this CNN link, is telling: http://www.cnn.com/2013/03/31/us/new-york-trump-lawsuit
Here is the part I find the most revealing in the CNN story: the registrant “…also holds nearly 200 other domain names, including barclayscapitallehman.com, goldmansachsgroup.com, milanvogue.com and hulufriend.com.” In the following paragraph, it goes on that on the day Bank of America announced its merger with Merrill Lynch, the registrant secured bofaml.com and mlbofa.com.
We’ll likely never know the financial component to any resolution reached between the parties, but I expect Donald Trump will soon have four more domain names included in his portfolio.
As an aside, it seems to me that securing the most directly-related domain name iterations prior to announcing major business transactions should be part of the pre-announcement process.
Legislative effort regarding the Right of Publicity in New York
An effort to enact meaningful Right of Publicity recognition in New York is gaining momentum. It is long overdue. Details to follow when available and appropriate for release.
It should be noted that for the better part of the Twentieth Century, New York’s judiciary interpreted New York Civil Law sections 50 and 51 as inclusive of postmortem publicity rights. This means, for example, that at the time of Marilyn Monroe’s death in 1962 New York did indeed recognize such rights (and those rights were capable of passing, and thus did pass, into her estate). There is, therefore, precedent for New York recognizing these rights. It need not be seen as treading into uncharted territory.
Lindsay Lohan sues Pitbull and Ne-Yo for use of her name in song lyric
A New York judge has ruled against Lindsay Lohan’s recent claim against Pitbull and Ne-Yo for use of her name in their song “Give Me Everything.” The lyric in question is “…tiptoein’ to keep flowin,’ locked up like Lindsay Lohan.”
While not a flattering reference, it might not be entirely inaccurate considering Lohan’s well-publicized and seemingly frequent legal issues in recent years. Lohan’s claim was based in part on New York’s civil law, sections 50 and 51. Here’s a link to New York’s statutes: http://rightofpublicity.com/statutes/new-york
New York still views claims involving the commercial use of a person’s name or likeness through a right of privacy prism, while most states have adopted the more evolved approach afforded by the Right of Publicity. I understand Lohan’s lawsuit also included a claim for unjust enrichment and intentional infliction of mental distress.
While New York’s law leaves a lot to be desired from a Right of Publicity perspective, some rulings in New York have recognized an exception to liability when the use occurs in a manner that is protected by the First Amendment or is a non-commercial use, such as in a work of art. As I often have said, the context in which a use occurs often can determine whether or not a use is protected or a Right of Publicity violation. Use of a name in a song is not always protected or non-commercial, as Outkast found out when Rosa Parks’ representatives filed suit against them for Outkast’s song “Rosa Parks.” Here’s a link to that decision: http://rightofpublicity.com/pdf/cases/rosaparks.pdf
Claims that fall outside the area that the Right of Publicity is meant to address do not serve the doctrine well; rather, they undermine the important purpose served by the Right of Publicity, and they provides easy fodder for critics of the Right of Publicity (though when that happens, it is also pretty easy to refute–every area of the law is subject to abuse by tenuous or frivolous claims, and the judiciary is pretty good at handling those situations). I reserve comment on Lohan’s other claims in the lawsuit, but with respect to New York’s civil law sections 50 and 51, I think the judge got it right.
Frequent visitors to this site may recall Lohan’s lawsuit against E*Trade for the “milkaholic” reference: http://rightofpublicity.com/lindsay-lohan-and-the-etrade-milkaholic-baby
Here’s a link with more information on Lohan’s claim against Pitbull and Ne-Yo: http://www.lexology.com/library/detail.aspx?g=75691a6d-65ef-4366-bc24-595500c33c08&utm_source=Lexology+Daily+Newsfeed&utm_medium=HTML+email+-+Body+-+Federal+section&utm_campaign=Lexology+subscriber+daily+feed&utm_content=Lexology+Daily+Newsfeed+2013-03-06&utm_term=
9th Circuit grants and files amici brief in Jimi Hendrix case, RightOfPublicity.com and Luminary Group’s Jonathan Faber contributor
In advance of the upcoming hearing in the Jimi Hendrix appeal, I have just been informed that the Ninth Circuit has granted and filed the amici brief that RightOfPublicity.com’s Jonathan Faber contributed to on behalf of Luminary Group LLC and its clients. Should be an interesting case to monitor.
Johnny Manziel aka Johnny Football suit and intellectual property rights in a nickname
Johnny Manziel would not be the first to file a claim based on a nickname though he appears to be the most recent. As often happens, the coverage of this lawsuit (on the link below) does not use the term “Right of Publicity:” http://espn.go.com/college-football/story/_/id/8977054/lawsuit-filed-claims-johnny-football-infringement
Indiana case law on appropriation from 1949
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.
Coach Vince Lombardi performs at Super Bowl XLVII half time show to begin Beyonce’s performance
Coach Lombardi won the first two Super Bowls, and now Vince Lombardi can add “performing at the Super Bowl half time show” to his list of Super Bowl milestones! In case you missed it (as one of only a few on the planet?), an extended audio sequence of Vince Lombardi speaking was featured at the very beginning of Beyonce’s Super Bowl XLVII half time performance. What a great business to be in.
Trademark, Right of Publicity and Super Bowl XLVII: HarBowl, Harbaugh Bowl, and Kaepernicking
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.
Kim Kardashian files suit against Gap over use of a lookalikes
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
Actress in anti-Muslim film files lawsuit
Every so often, developments in the Right of Publicity universe touch on especially serious topics, like the lawsuit filed this week by an actress in the anti-Islam film Innocence of Muslims (the movie at the center of recent demonstrations and outbreaks of violence in various countries throughout the world).
Cindy Lee Garcia’s lawsuit, filed earlier this week in Los Angeles, alleges invasion of privacy and misappropriation of her likeness, among other claims. In other words, her lawsuit touches on the very subject matter that RightOfPublicity.com is devoted to covering.
Those familiar with Right of Publicity legislation might wonder, “aren’t films usually an exempted category of works under most Right of Publicity statutes?” Good question, and essentially the same one that my contact at Variety Magazine asked when I was consulted for his coverage of the story. My answer was that extenuating circumstances should be considered in relation to the statutory language, and that the situation demonstrates why blanket exemptions for entire categories of works might not always be a good idea. The exemption, so to speak, should not be allowed to swallow the rule.
One might assume that if an actress appears in a movie, she can’t later claim to not know what the movie would be like or how she or the movie would be portrayed. Garcia’s lawsuit alleges that deception was involved whereby her performance was “…changed grotesquely to make it appear that Ms. Garcia voluntarily performed in a hateful anti-Islamic production.” Garcia also alleges that her lines were dubbed into Arabic. She reportedly has received death threats as a result of the film.
I would be curious what Garcia’s contract (if there is one) says about the right of the film makers to edit and revise the film, because that could be relevant to the legal analysis of Garcia’s lawsuit. Nevertheless, if there was deception and misrepresentation taking place, she might just have a case for violation of her Right of Publicity. Contracts, as well as statutory exemptions, can occasionally be overridden.
Here’s a link to Ted Johnson’s story for Variety Magazine: http://www.variety.com/article/VR1118059479
Here is a link to CNN’s story on this topic: http://www.cnn.com/2012/09/19/us/california-anti-islam-film-lawsuit/index.html?hpt=hp_t3
Tiger Woods faces down Om Agro Chemicals in trademark opposition
We’ve all heard the often-used boardroom adage that “there are no bad ideas” and I can appreciate the usefulness of this notion when brainstorming and problem-solving. But I submit the following that, well, some ideas are indeed bad. The Economic Times has reported that a Mumbai-based metal manufacturer has attempted to register “Tiger Woods” as a trademark.
As one would expect, Tiger Woods’ representatives reportedly have filed an opposition to Om Agro Chemicals’ application. In Om Agro’s application, it apparently claims that it developed the idea of seeking Tiger Woods as a trademark for its products in early 2010.
Aside from Woods’ extensive collection of registered trademarks, it is noteworthy that the effort to trademark Tiger Woods would be limited not only by Woods’ preexisting portfolio of trademark registrations and common law trademark rights, but also by his Right of Publicity. In fact, even without his trademark arguments, his Right of Publicity ought to be sufficient to stop any products or advertising from taking place using the name Tiger Woods. As such, even if Om Agro could have sneaked its trademark application through to registration, there would be little they could do with it in the marketplace. And frankly, that’s how it should be and serves as a good example of the Right of Publicity in action.
That said, because a company with presumably no right to use Tiger Woods’ name, image, likeness or persona in commerce has applied for a trademark registration based on his name, Woods faces the necessity of paying for his legal team to file trademark oppositions. Such is the burden of the famous, I suppose: if a name has value, it must be protected from those who would attempt to take it.
Here’s a link to the story: http://articles.economictimes.indiatimes.com/2012-09-14/news/33844193_1_application-tiger-woods-tag-heuer
Faber interviewed in Bloomberg BNA journal on Right of Publicity developments
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.
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.
Variety interviews Jonathan Faber of RightOfPublicity.com & Luminary Group re: virtual celebrities
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
Jonathan Faber interview with WIBC regarding New Hampshire’s recent Right of Publicity effort
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.
Julia Roberts and George Clooney join forces in lawsuit over unauthorized use of their names and images
Here is a link to the Hollywood Reporter’s coverage of the recently filed lawsuit by Julia Roberts and George Clooney, against the entities Digital Projection and Beyond Audio. http://www.hollywoodreporter.com/thr-esq/george-clooney-julia-roberts-sue-318636
And here is a link to the complaint itself: http://www.hollywoodreporter.com/sites/default/files/custom/Documents/Compliant_Clooney.pdf
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:
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
“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.
A rare reported settlement figure, $356,000, in Marlon Brando Estate suit against Ashley Furniture
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
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
Facebook’s “Expanded Premium Ads” bring hidden Right of Publicity issues
I have little doubt that Facebook’s new “Expanded Premium Ad,” as discussed by Facebook’s David Fischer at AdWeek a few weeks ago, has been vetted and tested from almost every technological and business angle conceivable. I have to wonder, though, if anyone has considered the Right of Publicity violations which may be inherent in their anticipated advertising scheme.
The idea, as described by David Fischer at Advertising Week in October, is fairly simple and “doesn”t look that interesting” as Fischer stated in his presentation. Basically, when a Facebook user “likes” a company or product on Facebook, Facebook will insert a line of text into an advertisement on the side of the screen stating “[Your Friend”s Name] likes [this product, movie, company, etc.],” with an image of your friend next to the text in the advertisement.
Downplaying how “interesting” it is may be as clever as the advertising itself. We all know that traditional advertising is often overlooked, ignored, and tuned-out by consumers. Part of the appeal in Facebook”s more discrete advertising mechanism, then, is that it doesn”t quite look like typical advertising, as Fischer”s comments imply. Even more importantly, as Forbes” Robert Hof reports in his recent Forbes.com article, “People are twice as likely to remember an ad if their friend is in it, according to the Nielsen Co., and they tend to click on it or share it with friends.” Here is a link to Robert Hof”s Forbes.com article in which he examines the business considerations of Facebook”s advertising ambitions: http://www.forbes.com/sites/roberthof/2011/11/16/facebooks-new-advertising-model-you/
Sounds like an effective method of target advertising, with your friends” image and a statement that he or she likes the advertised company, right? A resounding endorsement from a trusted source!
What appears to be overlooked in all of this are the Right of Publicity implications. In typical Right of Publicity analysis, if a person”s name, image or likeness is used without permission in a commercial manner such as advertising, then an infringement probably has occurred. Furthermore, by communicating that “[your friend”s name] likes this company,” potential false endorsement overtones may also emerge.
Facebook has flirted with this advertising model before. I recall a vigorous discussion in my Right of Publicity class at Indiana University School of Law – Indianapolis a few years ago discussing a similar Facebook advertising plan, though my recollection is that Facebook aborted the plan very quickly. At the time, I thought it might have been because of the very issues touched upon here. Apparently not since the plans seem to be reemerging. I”m not sure there”s much difference, at least legally speaking, between the prior iteration and the one that is being contemplated now by Facebook.
Facebook might be relying on their existing user agreement, or may be intending to roll out a new user agreement which most people admit to not reading, in order to secure what Facebook might describe as “permission.” I”m not so sure that would be enforceable, though, as a basis to purposefully and proactively utilize a person”s Right of Publicity in conjunction with third-party companies.
Right of Publicity agreements to use a person in a commercial manner such as advertising typically involve specific contractual terms governing the use. I question whether a unilateral, non-negotiated, mandatory click-through agreement can substitute for a license to commercialize a person”s Right of Publicity.
Facebook could be starting a Right of Publicity firestorm. In light of Facebook”s “Expanded Premium Ad” scheme, I suppose a Facebook user would be well-advised not to “Like” anything on Facebook unless you”re okay with that one unassuming click constituting a Right of Publicity and endorsement agreement for Facebook and that company to use your name, image and likeness in advertising any way that it sees fit.
If you happen to be a famous athlete, actor or actress, musician using Facebook, the perils only increase. Consider just one scenario that comes to mind: imagine if a musician, Johnny Rockstar, under contract for the endorsement of a specific guitar manufacturer (company A), casually “likes” a company that makes all kinds of other gear (company B), but also happens to sell a competing line of guitars. Is that musician in breach of contract for “liking” a company that makes a guitar string or other accessory he likes, once Facebook launches its “Expanded Premium Ad” and runs advertisements with his picture next to his declaration that “Johnny Rockstar likes Company B?” Think it couldn”t happen?
But one doesn”t have to be famous for this new Facebook “Expanded Premium Ad” to implicate the average Facebook user”s Right of Publicity. The prevailing view, barring other factors, is that every person possesses a Right of Publicity. The reality is that a private citizen usually doesn”t extract much value from his or her Right of Publicity because companies and advertisers generally only seek out, and pay for, associations with widely-recognized personalities (i.e., celebrities, athletes, etc.). This new Facebook advertising scheme turns that dynamic on its head, because now basically every Facebook user will be sought out and included into advertising campaigns.
It will be interesting to see how this issue develops.
Brando Enterprises, owner of Marlon Brando’s rights, sues Harley Davidson over “Brando” boots
Brando Enterprises, the entity that owns and administers Marlon Brando’s Right of Publicity and other intellectual property interests, has filed a lawsuit against Harley Davidson as reported by Forbes.com and various other sources. The suit centers on Harley Davidson’s offering of a line of boots reportedly entitled “Brando” boots.
The suit, filed in Los Angeles County Superior Court, notes that Harley Davidson’s product resembles boots worn by Marlon Brando in his film “The Wild One,” released in 1953. It is not clear at this stage whether Harley Davidson used any other aspects of Brando’s identity in conjunction with the product line, or advertising and promotion of the boots.
Over the years, I’ve seen quite a few situations where a company used only a single name in association with a product line, such as a line that has a “Marilyn” style purse, dress, fragrance or other product. All things being equal, the name “Marilyn” conceivably could refer to anyone with that namesake, or no one in particular. But sometimes, upon closer inspection, the product line is being positioned as a “Hollywood” line or something similar, and includes products featuring other movie stars who may be identifiable on a first-name only basis. Similarly, I have seen product lines where the only aspect of identity is a single name, but the product is part of a package offering in which there is not only a “Brando” but also a “Bogart” and a “McQueen” for example. In these scenarios, it would be hard for the company to argue that they were not tying the product specifically to Marilyn Monroe (in the former example) or Marlon Brando, Humphrey Bogart and Steve McQueen (in the latter example). In context, the identity of these particular personalities becomes unequivocally identifiable.
In class, I sometimes demonstrate this point through a hypothetical company that has a product referred to as “Michael.” Common name, and likely no particular association is conjured without more context. But, if that product happens to be specific to basketball, might the product be playing off of the consumer’s familiarity (consciously or subconsciously) with Michael Jordan? What if the product features only Chicago Bulls’ team colors? Or what if the product incorporates Michael Jordan’s jersey number in some fashion? What if the product is sold primarily in Chicago? Switching gears, what if the product is music-related? That would likely eliminate any association to Michael Jordan, but may bring into play another singularly-famous Michael. What if the product is a microphone or a style of clothing that is strongly associated with Michael Jackson? I’m leaving these scenarios purposefully vague, and not taking a position myself, but hopefully these examples give something to consider.
At this point, I have not investigated the Harley Davidson product line, so I do not know if the two preceding paragraphs are applicable to Brando Enterprises’ suit against Harley Davidson. I will note that the lawsuit alleges that Brando Enterprises has licensed use of Brando’s name to entities like Triumph motorcycles and Dolce & Gabbana, which means that an unlicensed Brando boot from a notable motorcycle manufacturer could not only present the issue and damages of an unlicensed product, but could also be undermining or conflicting with existing programs that Brando Enterprises has in place with its licensees.
Here is a link to the Forbes.com article: http://www.forbes.com/feeds/ap/2011/05/17/business-us-harley-davidson-brando-lawsuit_8471562.html
Motley Crue founder Nikki Sixx, promoting new book “This Is Gonna Hurt,” gives advice to young bands: “know the legal system”
Founding member of Motley Crue, author, and photographer Nikki Sixx is busy promoting his new book “This Is Gonna Hurt.” In an interview with The Huffington Post, Nikki is asked what advice he would give to young artists. His answer is dead-on: “learn the legal system.” Sixx practices what he preaches. In fact, as his valuation expert in his lawsuit against Vans, he’s one rock star who could probably explain what “the Right of Publicity” is in some detail.
I had the opportunity to serve as Nikki’s valuation expert in his lawsuit against Vans. Vans ran a significant advertising campaign featuring Nikki’s image along with then-Skater of the Year, Tony Trujillo. Nikki consented to the appearance and to give the award to Trujillo, but by no means would that consent have equated to the right to launch an advertising campaign. The case was televised by Court TV. Here’s a link to the announcement of his victory against Vans: http://emol.org/music/artists/motleycrue/vansuit.html
Here’s a link to Nikki’s full interview with The Huffington Post: http://www.huffingtonpost.com/mike-ragogna/this-is-gonna-hurt-a-conv_b_858398.html
“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
Jonathan Faber secures ruling on Indiana’s Right of Publicity statute, upheld in favor of legendary cycling champion Major Taylor
In a case brought by the great granddaughter of legendary cycling champion Marshall W. “Major” Taylor, an Indiana Judge in October 2010 granted plaintiff’s motion for summary judgment on a Right of Publicity claim under IND. CODE 32-13-1 to -20. In so doing, the provisions of the Indiana Right of Publicity statute were upheld and deemed enforceable by plaintiff with respect to the Right of Publicity of Major Taylor. In a subsequent ruling dated April 21, 2011, a motion for reconsideration by defendant was denied and the prior ruling in favor of the enforceability of the Indiana Right of Publicity statute was upheld. Cause number 1:09-cv-275-WTL-TAB.
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:
No Doubt wins claim against video game publisher Activision: claim is not barred by the First Amendment and the use in the video game violates band members’ right of publicity
The band No Doubt has secured a significant ruling against video game publisher Activision. The ruling also appears to send a clear message to the video game industry that video games are indeed commercial products, are not entitled to right of publicity exemptions, and are not to be afforded special First Amendment treatment.
Video games would seem to be a prime example of why the right of publicity exists in the first place. Nevermind the long-standing course of conduct whereby video game companies routinely have secured permission and licensed the use of third-party intellectual property in its games; if a video game is not a commercial product, and is exempt from right of publicity liability when a person is included in the game’s content and programming, one would have to wonder why the right of publicity exists at all. This ruling gives some assurance that the video game industry is not going to secure the sweeping shield from right of publicity compliance that it has been seeking.
No Doubt licensed Activision for inclusion in its popular Rock Band video game subject to specific limitations in the license agreement. The use of the band went beyond the contractual allowances, and allowed users to unlock features and manipulate the No Doubt avatars into performing songs that were not approved by the band, among other things.
It would seem like this claim was really just a contract dispute at its core. If the contract precisely defined how the band could be included in the video game, then anything that goes beyond those parameters would seem to exceed, and thus breach, the license agreement.
Activision asserted that No Doubt’s claim was barred by the First Amendment, and that the use was sufficiently transformative (under the Comedy III decision) and therefore not a violation of the band members’ right of publicity. The Court disagreed, and added that the band did not need to show that the use was “explicitly misleading” in order to support its unfair competition claim.
The video game industry would like to believe that its commercial products should be exempt under right of publicity legislation, receiving the same treatment as books or news reporting. This ruling, at least, would seem to indicate that the Courts aren’t buying the video game industry’s view.
Here is a link to the ruling: http://www.courtinfo.ca.gov/opinions/documents/B223996.PDF
ABA Journal interview with RightOfPublicity.com author Jonathan Faber examines the right of publicity in detail
A recent cover story in the ABA Journal includes an interview with RightOfPublicity.com author, and examines the right of publicity in detail. Here is a link to the story entitled “What’s In A Name?”
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
Billboard Magazine cover story on Bob Marley Estate quotes RightOfPublicity.com author Jonathan Faber
Billboard Magazine’s cover story for the newest issue examines the business of Bob Marley not only during his lifetime but also in the decades since his passing. The piece gives a lot of fascinating insight into the challenges Marley’s family has faced over the years, detailing various lawsuits that have been fought as well as the continuing opportunities that exist for licensing Bob Marley’s music as well as his name and image.
I spoke with the writer of the Billboard cover story and I am quoted in several places throughout the article. One of the things we discussed in detail is the right of publicity, and how it can be a tough undertaking to protect the legacy of a beloved figure like Marley. What to do in the face of unauthorized uses like advertisements and merchandise? Don’t file a lawsuit and the market responds with even more infringements on the basis that the rights are not being asserted. File a lawsuit, and risk being labeled litigious.
It’s easy to assume that it would be a “nice problem to have,” and maybe there’s some truth to that. But I also bet that if the average observer who is critical of a family or heir protecting their loved one’s legacy through legal action was in the same position, that person would quite likely do exactly the same thing after witnessing unauthorized (and often undesirable) uses cascade through the marketplace. What’s that they say about “walk a mile in another man’s shoes…?”
Here is a link to the Billboard story: http://www.billboard.com/#/features/the-business-of-bob-marley-billboard-cover-1005022242.story?page=1
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:
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.
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:
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:
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:
Unprecedented, overreaching exemptions undermine several current Right of Publicity bills
Major developments are taking place on the Right of Publicity legislation front. Unfortunately, they are not favorable to those who support or rely on recognition of the Right of Publicity. As previously reported here, Michigan, New York and North Carolina are all presently considering Right of Publicity legislation. There are some unprecedented provisions in the Michigan and New York bills which have the potential to render passage of a Right of Publicity law in these states a Pyrrhic victory, at best.
It is apparent that the unified, well-funded business interests seeking to taper back Right of Publicity recognition are gaining more traction in shaping the law than the handful of individual voices who will be affected by these laws. It would be nice to see the players associations of the various professional sports leagues voice objection to these developments. If these bills are passed with such one-sided provisions, it will detrimentally impact the past, present and future athletes that the players associations ostensibly exist to serve.
What exactly are those provisions? Well, as you can see for yourself by visiting the links to the respective bills (included below), there is now an unqualified exemption for video games in Michigan’s bill. Prior versions of the bill sought some kind of limitation, such as use in a video game that is incidental or fleeting. No such limitations are included now, rendering the obviously commercial product of video games on the same level as books and newspapers.
Not to be outdone, New York’s law has the same outright exemption for video games. But it goes further, and also provides more unprecedented exemptions for greeting cards, games that use multiple personalities, calendars, and tee shirts.
I question whether a judge can be expected to differentiate between a short sleeve shirt, baby tee, jersey length tee, embroidered tee, or designer shirts, for example, so it seems likely that tee shirts would encompass all of the above. And since there can’t really be a legal distinction based on sleeve length or whether an article of clothing has a hood on it, it follows that it would also include sweatshirts, team jerseys, sweaters, jackets, and other garments. While the bill provides that the exemption does not apply if the person’s name or image is on the label of the garment, that is rare in the universe of licensing personalities. Typically, the use hinges on the name and image of the personality appearing prominently on the front of the garment.
The categories of apparel, greeting cards, games, calendars and video games are some of the most important in the licensing industry. No doubt those companies that create and sell products using famous people’s names and images would love the ability to commercialize those valuable assets without the burden of paying for those rights, or seeking approval in the event that the famous individual or his or her heirs would prefer not to be involved in the product at all. It isn’t all about money, after all.
My experience dictates that retired or deceased athletes will be especially susceptible to the impact of these exemptions. Even if such parties still have Lanham Act claims available, pursuit of an infringement on trademark grounds is different from Right of Publicity grounds. Those who argue that the Lanham Act claims alone should be sufficient are essentially telling the carpenter to use the side of a wrench to pound in a nail, while walking off with the carpenter’s hammer. The Right of Publicity is clearly the right tool for this job.
These one-sided provisions appear to be popping up in every state that is presently considering a Right of Publicity bill. Yet, the last twelve to eighteen months have brought litigation by Jim Brown, various NCAA athletes, and not one but two class action suits by former NFL players against Madden Football concerning alleged abuses of these individuals’ Rights of Publicity. Even in the absence of express exemptions for video games, it is apparent that those being included in video games without permission feel that significant abuses are already occurring. One can not expect such instances to diminish in the wake of a law shielding video games altogether.
If you are in position to voice opposition to these sweeping, unprecedented and one-sided exemptions, please send your written opposition to the appropriate parties backing these bills. Similarly, if you have access to those who might be directly affected by these bills, please arrange for them to voice their opposition.
If these bills were to become law, it would be worse than merely a Pyrrhic victory; it would be a loss in disguise as victory.
Here is a link to the Michigan and New York Right of Publicity bills:
Michigan House Bill 5964, sponsored by Representative Byrnes: http://052.housedems.com/
Summary of the Bill: http://www.legislature.mi.gov/(S(5s10sv452ywfc345fgu2j045))/mileg.aspx?page=getObject&objectName=2010-HB-5964
Text of the Bill: http://www.legislature.mi.gov/documents/2009-2010/billintroduced/House/pdf/2010-HIB-5964.pdf
New York S06790, Senate Majority Leader, John Sampson: http://www.nysenate.gov/senator/john-l-sampson/contact
Summary of the Bill: http://assembly.state.ny.us/leg/?bn=S06790&sh=t
Text of the Bill: http://assembly.state.ny.us/leg/?default_fld=&bn=S06790%09%09&Text=Y
Video game manufacturer EA loses motion to dismiss to NCAA football star Sam Keller
In yet another ruling concerning video games, the likenesses of notable athletes, and the NCAA, a California judge has rejected Electronic Art’s motion to dismiss a claim brought by former NCAA football player Sam Keller. It should be noted that this is not a final disposition on the case overall, but rather is an interim ruling that allows Keller’s case to move forward. It may, however, be a strong indicator of how the court will ultimately decide issues concerning liability and the defenses EA is likely to advance.
The lawsuit centers on the use by EA of Keller EA’s NCAA Football video game. In an effort to support its motion to dismiss, EA argued that its use of Keller’s likeness was not a violation because the use was transformative, and that the use was a matter in the public interest.
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:
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:
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:
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:
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.
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:
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:
DirectTV’s Farley Flap
Deceased comedian and Saturday Night Live alum Chris Farley is at the center of a controversy concerning the use of a Farley clip in a DirecTV advertisement. The advertisement involves a clip from the movie “Tommy Boy.” Critics allege the ad is in poor taste.
The ad deviates from being simply a movie clip when new footage of Spade involves his pitch for DirecTV. “Great, I’m here with tons of fun, but I could be at home with DirecTV” Spade says.
The right of publicity exists in no small part to ensure that, at the very least, those decisions can be made by the heirs and not the public at large.
I am reminded of a television ad for GMC trucks, involving a still image of Rosa Parks along with many other personalities and images, such as Martin Luther King Jr., a former President, Neil Armstrong, as well as iconic images from U.S. history. Shortly thereafter, an op-ed ran in the New York Times stating that it was inappropriate for Rosa Parks to be hawking trucks.
The decision to license the image of Rosa Parks was carefully considered by those charged with that responsibility. Ultimately, permission was granted because the use was deemed tasteful, not derogatory to Rosa’s legacy, and a meaningful source of needed-funding for The Raymond and Rosa Parks Institute for Self-Development.
The New York Times writer did not point to any other rightsowners included to the same extent in the spot.
Here is a link to the Farley story: http://www.cnn.com/2009/SHOWBIZ/TV/10/27/farley.directtv.commercial/index.html
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:
60 Minutes “A Living For the Dead” updated segment includes Luminary Group
The Right of Publicity was part of 60 Minutes’ season premier episode on Sunday, September 27, 2009, in a segment captioned “A Living For The Dead” which, in updated segments, included reference to Luminary Group and the celebrity clients it represents. I’ve been contacted concerning inaccuracies that the story conveyed. Mostly missing from the story was the idea that representing deceased personalities, in conjunction with the heirs of those personalities, involves an effort to protect and further the legacy of that person, and in many cases the causes which were important to him or her. It isn’t just about money, as the angle of the story seemed to emphasize. There were a few missed opportunities to enlighten the public of the importance of the right of publicity and the work that at least some put into representing departed legends. Here is a link to the CBS story: http://www.cbsnews.com/video/watch/?id=5345034n
Claims Advisor runs article by Jonathan Faber concerning IP liability including Right of Publicity
The most recent edition of Claims Advisor includes an article I authored concerning how new technologies are raising interesting scenarios that could trigger intellectual property liability. Here is a link to the article:
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:
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.
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
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.
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.
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:
The activities apparently included advertisements as well as a clip of Righteous Kill on Tutima’s website.
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.
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
Buddy Holly and the City of Lubbock
With the 50th anniversary of Buddy Holly’s untimely passing right around the corner, there has been a considerable amount of activity and interest in Buddy Holly. A recent article in the Lubbock Avalanche-Journal (see http://www.lubbockonline.com/stories/010909/loc_375424907.shtml ) reports on the progress that is being made to re-introduce a variety of initiatives commemorating Buddy in his hometown of Lubbock, Texas. There’s a bit of history between the City and Buddy’s widow, Maria Elena Holly, but it appears likely that things are getting resolved and a fitting tribute will be possible. Part of that history has to do with considerable misunderstanding of Right of Publicity and related intellectual property laws concerning deceased celebrities. No home town has a blanket right to engage in commercial uses of a notable individual just because he or she was born there. The law is quite clear in terms of ownership of these intellectual property rights, and I suspect the same scrutiny and criticism (of the past) would not have been levied against, say, Priscilla Presley, although her approach likely would have been quite similar. In any event, it looks like a bridge is being built between all the parties, and that is probably a good thing for everyone.