Keeping up with the Evolving Right of Publicity Presented at the ABA Forum on Entertainment and Sports Industries at the Americana Music Festival, Nashville, 2013 by Stephen J. Zralek 1, September 2013 Celebrities and performers looking to control the commercial exploitation of their name, likeness and image often find protection in the right of publicity. Publicity rights are creatures of state law. No federal right of publicity or uniform state law exists. 2 Although they often share common elements, these laws vary from state to state. Because case law surrounding the right of publicity is exceedingly rare, and because of the general constitutional policy of maintaining uniformity in intellectual property laws,... court typically give attention to the entire available body of case law when deciding right of publicity cases. 3 For example, the Tennessee Personal Rights Protection Act ( TPRPA ), which codifies the common law right in Tennessee, 4 states: Any person who knowingly uses or infringes upon the use of another individual s name, photograph, or likeness in any medium, in any manner directed to any person other than such individual, as an item of commerce for purposes of advertising products, merchandise, goods, or services, without such individual s prior consent, or in the case of a minor, the prior consent of such minor s parent or legal guardian, or in the case of a deceased individual, the consent of the 1 Stephen Zralek is a Member of the firm Bone McAllester Norton PLLC in Nashville, Tennessee. He is a litigator focused IP, entertainment, and business disputes. He previously served as Chair of the Copyright Litigation Committee of the ABA s IP Law Section. He co-authored The PRO-IP Act: Another Weapon Against a Failing Economy, published in Landslide, and he has been quoted in the ABA Journal, Managing IP and Young Entrepreneur. 2 But see ETW Corp. v. Jireh Publ'g, Inc., 332 F.3d 915, 924 (6th Cir. 2003) (noting that a Lanham Act false endorsement claim is the federal equivalent of the right of publicity (citing Bruce P. Keller, The Right of Publicity: Past, Present, and Future, 1207 PLI Corp. Law & Prac. Handbook 159, 170 (2000))). Of course, the Lanham Act is designed to protect consumers from the risk of confusion, whereas the Right of Publicity is not. See In re NCAA Student-Athlete Name & Likeness Licensing Litigation, _ F.3d_,2013 WL 3928293, at *8 (9 th Cir.). 3 Landham v. Lewis Caloob Toys, Inc., 227 F.3d 619, 622-23 (6 th Cir. 2000) (citations omitted). 4 See Gauck v. Karamian, 805 F. Supp.2d 495, 500 n. 5 (W.D. Tenn. 2011).
executor or administrator, heirs, or devisees of such deceased individual, shall be liable to a civil action. 5 The above conduct also constitutes a Class A misdemeanor, 6 and any tangible items making unauthorized use of the person s likeness are subject to seizure and forfeiture to the state. 7 Unlike some other states right of publicity, Tennessee s statutory right is narrowly drawn and is narrower than the Restatement approach adopted by other states. 8 Because the right of publicity protects likeness as well as name and image, plaintiffs invoke it to protect a wide range of items affiliated with their identity. For example, Vanna White sued for publicity violations when Samsung ran an ad depicting a robot dressed in a wig, gown and jewelry, which appeared next to a game board resembling Wheel of Fortune. 9 Bette Midler sued Ford Motor Company for using a voice that was meant to sound like hers in an advertisement. 10 Plaintiffs also sue over the unauthorized use of phrases or items associated with them, even when their names or images are not featured. 11 5 Tenn. Code Ann. 47-25-1105(a). By contrast, the elements of a right-of-publicity claim under California common law are: (1) The defendant s use of the plaintiff s identity; (2) the appropriation of plaintiff s name of likeness to defendant s advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury. In re NCAA Student-Athlete Name & Likeness Licensing Litigation, F.3d, 2013 WL 3928293 at *2 n.4 (emphasis added). 6 Id. at 47-25-1105(b). 7 Id. at 47-25-1105(d). 8 Moore v. Weinstein Co., LLC, 3:09-CV-00166, 2012 WL 1884758 (M.D. Tenn. May 23, 2012) (unpublished) (quoting Gauck v. Karamian, 805 F. Supp.2d 495, 500 n. 5 (W.D. Tenn. 2011)). 9 White v. Samsung Elecs. Am., Inc. 971 F.2d 1395 (9 th Cir. 1992). 10 Midler v. Ford Motor Co., 849 F.2d 460 (9 th Cir. 1988). 11 See e.g., Carson v. Here s Johnny Portable Toilets, Inc., 698 F.2d 831 (6 th Cir. 1983) (where Johnny Carson sued a corporation selling Here s Johnny portable toilets); Hart v. Elec. Arts, Inc., 717 F.3d 141 (3d Cir. 2013) (where EA offered a video game with a quarterback whose jersey number, height, weight and throwing distance statistics matched plaintiff s).
Issues & Defenses to Consider Although the elements of the right of publicity look simple on their face, plaintiffs often face speed bumps, and sometimes even roadblocks, when litigating publicity violations. One issue that frequently arises is whether the right is limited to celebrities or others who use their likeness in a commercial manner. For example, although Tennessee s statute protecting the right of publicity is silent on this issue and appears to protect all individuals, courts interpreting it have held it to reserve to a celebrity the personal right to exploit the commercial value of his own identity. 12 Courts have interpreted the statute as intended to create an inheritable property right for those people who use their names or likenesses in a commercial manner, such as an entertainer or sports figure someone who uses his or her name for endorsement purposes. 13 Similarly, when the Third Circuit issued its decision in Hart v. Electronic Arts in May 2013, it was interpreting the New Jersey publicity right, but it looked to laws from across the country, and it focused exclusively on the right as it applied to celebrities. 14 The dissenting judge indicated that the plaintiff s status as an amateur athlete impeded his right of publicity claim. 15 Thus, where a plaintiff has not used his or her likeness in a commercial manner prior to the violation, his or her suit for publicity violations may run into problems. A second issue that arises is whether the celebrity s image is central or merely incidental to the defendant s commercial endeavor. Courts examining this issue under 12 Stanford v. Caesars Ent., Inc., 430 F. Supp. 2d 749, 756 (W.D. Tenn. 2006) (emphasis added). 13 Gauck v. Karamian, 805 F. Supp. 2d 495, 500 (W.D. Tenn. 2011) (quoting Apple Corps Ltd. v. A.D.P.R., Inc., 843 F. Supp. 342, 348 (M.D. Tenn. 1993) (quoting Senator Kyle, sponsor of the TPRPA, from the April 5, 1984 audio recording of the Tennessee legislative session)) (internal punctuation omitted)) (emphasis added); see also Cheatham v. Paisano Pubs., Inc., 891 F. Supp. 381, 386 (W.D. Ky. 1995) (noting that plaintiffs need not be national celebrities but must show significant commercial value in their likeness). 14 717 F.3d 141. 15 Id. at 171 (Ambrose, J., dissenting).
Tennessee s statute have held that plaintiffs must show that the defendant s use of plaintiff s likeness is central to the endeavor. 16 Arguably, for example, Nike sells Air Jordans in an effort to attract customers not only to its shoes but also to a feeling that they could play basketball like Michael Jordan if only they bought Air Jordans. Where a defendant s use of the plaintiff s likeness is merely incidental to the product, it often sabotages the plaintiff s claim. 17 Consent is another issue that arises in publicity disputes. Parties often disagree whether the plaintiff s consent to use his/her image on one product extends to other products. This issue also arises when minors are involved. What happens when the minor achieves the age of majority and no longer consents to the use of his/her image? To avoid this issue, it is wise to secure written consent and to ensure it encompasses the parties agreement, as widely or narrowly as mutually desired. Another issue that arises in publicity disputes is preemption whether the right of publicity as asserted in a particular complaint is preempted by federal copyright law. 18 Section 301 of the Copyright Act is unusually broad, vesting exclusive jurisdiction over such preempted copyright claims in the federal courts. 19 Thus, defendants will often remove a case to federal court if it has been originally filed in state court and asserts publicity violations. (Conversely, where the complaint is filed in federal court to begin with and it asserts a publicity violation, defendants nevertheless often move to dismiss the publicity claim on grounds of preemption). Federal courts are required to recharacterize state law claims as sounding in 16 See Gauck, 805 F. Supp. 2d at 502 (contrasting Ohio s publicity right, as discussed in Bosley v. Wildwett.com, 310 F. Supp. 2d 914, 923 (N.D. Ohio 2004)). 17 See Gauck, 805 F. Supp. 2d at 503. 18 See Baltimore Orioles, Inc. v. Major League Baseball Players Ass'n, 805 F.2d 663 (7th Cir. 1986) (holding state law right of publicity preempted by federal copyright law). 19 Ritchie v. Williams, 395 F.3d 283, 285 (6th Cir. 2005).
copyright, even if the complaint does not mention the word copyright if the gravamen truly sounds in copyright. When determining whether a particular claim is preempted under 17 U.S.C. 301, a court must examine two factors: First, does the work come within the scope of the subject matter of copyright as set forth in Section 102 and 103 of the Copyright Act? 20 Second, are the rights granted under the asserted state law claim equivalent to any of the exclusive rights within the scope of federal copyright protection, or do they add an extra element? 21 Attorneys should be mindful of this issue when drafting their complaints or preparing their responsive pleadings. Finally, one of the biggest issues facing courts today is how to balance First Amendment concerns with the right of publicity. This issue appears to apply primarily to cases in which the plaintiff is a celebrity, public figure or historic figure. Defendants often assert that their use of a plaintiff s image is merely part of a larger expression, which is protected by the First Amendment. For example, in two recent cases, college athletes have asserted publicity violations against EA (the video game developer) for basing avatars in their video games on the plaintiffs likenesses. 22 In those cases, EA argued that its First Amendment rights outweigh the individuals publicity rights. After employing the transformative use balancing test, both the Third and Ninth Circuits disagreed with EA, siding with the individuals. The transformative use test is still relatively new in the context of publicity cases, dating back to only 2001, when the California Supreme Court decided Comedy III Productions, Inc. v. 20 See Stromback v. New Line Cinema, 384 F.3d 283, 300 (6 th Cir. 2004). 21 See id. 22 See Hart v. Elec. Arts, Inc., 717 F.3d 141 (3d Cir. 2013); In re NCAA Student-Athlete Name & Likeness Licensing Litigation, F.3d, 2013 WL 3928293 (9 th Cir. July 31, 2013).
Gary Saderup, Inc., 23 a case involving the reproduction of the Three Stooges images onto T- shirts. The test examines whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation. 24 The California Supreme Court explained that when a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interest protected by the right of publicity. 25 The court rejected the wholesale importation of the copyright fair use defense into the right-of-publicity analysis, but found the copyright first fair use factor, the purpose and character of the use, to be particularly pertinent. 26 The California Supreme Court articulated the following five considerations for the transformative use test in the right of publicity context in Comedy III, which the Ninth Circuit embraced in In re NCAA: (1) the celebrity likeness is one of the raw materials from which an original work is synthesized; (2) the work is primarily the defendant's own expression if the expression is something other than the likeness of the celebrity; (3) the literal and imitative or creative elements predominate in the work; (4) the marketability and economic value of the challenged work derives primarily from the fame of the celebrity depicted; and (5) an artist's skill and talent has been manifestly subordinated to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit the celebrity's fame. 27 23 25 Cal. 4th 387, 21 P.3d 797 (2001). 24 Id. at 799. 25 Id. at 808. 26 Id. at 808. The Comedy III court looked to the Supreme Court's holding in Campbell v. Acuff Rose Music, Inc., finding that the central purpose of the inquiry into this fair use factor is to see... whether the new work merely supercede[s] the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is transformative. Id. (emphasis added) (citing Campbell v. Acuff Rose Music, Inc., 510 U.S. 569, 579 (1994)). 27 In re NCAA Student-Athlete Name & Likeness Licensing Litig., 2013 WL 3928293, at *13 (Thomas, J., dissenting) (9th Cir. July 31, 2013) (discussing Comedy III, 21 P.3d at 809 10).
In Hart, the Third Circuit traced the short history of the right of publicity and examined three different balancing tests (the predominant use test, the Rogers test 28, and the transformative use test), ultimately deciding to adopt the transformative use test because of its flexibility. 29 Ironically, the majority touted the uniformity of the test, and yet the dissent reached the opposite result even though it applied the same test. The majority looked at how the defendant used the plaintiff s identity, 30 while the dissent looked at how the plaintiff s identity was incorporated into the work as a whole. 31 In In re NCAA, the Ninth Circuit majority and dissent approached the case similarly, with the majority applying the transformative use test narrowly, and the dissent examining the plaintiff s likeness in a broader context as used by the defendant. 32 The majority focused on the fact that EA s video game NCAA Football literally recreates [plaintiff Samuel] Keller in the very setting in which he has achieved renown football. 33 The dissent, in contrast, examined 28 The Rogers test derives from Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), in which Ginger Rogers sued the producers and distributors of Ginger and Fred, a movie about two fictional Italian cabaret performers who imitated Rogers and her frequent partner on stage, Fred Astaire. She asserted violations of the Lanham Act for creating a false impression of her endorsement of the project and violations of her common law right of publicity. Subsequently, most courts have limited the Rogers test s application to claims arising under the Lanham Act, see In re: NCAA, 2013 WL 3928293 at *8; many of those have further limited its application to titles of artistic works. But see E.S.S. Entmt. 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1096-98 (9 th Cir. 2008). As the Ninth Circuit explained, the right of publicity protects the celebrity, not the consumer, and therefore consumer confusion (and, hence, the Rogers test) is not an appropriate consideration in publicity cases. In re: NCAA, 2013 WL 3928293 at *9. Interestingly, the Sixth Circuit is the only circuit to import the Rogers test into the publicity arena, and it has done so inconsistently. Compare Parks v. LaFace Records, 329 F.3d 437, 461 (6 th Cir. 2003) (adopting the test in a publicity dispute), with ETW Corp. v. Jireh Pub g, Inc., 332 F.3d 915, 936 & n.17 (6 th Cir. 2003) (acknowledging Parks but not applying the Rogers test to the publicity claim in question). 29 Id. at 163. 30 Id. at 164. 31 Id. at 173 (Ambrose, J., dissenting). 32 Compare 2013 WL 3928293 at *5-7, with id. at *12-17. 33 2013 WL 3928293 at *1.
the transformative and creative elements in the video game as a whole. 34 As the dissent explained, The salient question is whether the entire work is transformative, and whether the transformative elements predominate, rather than whether an individual personal or image has been altered. 35 As the dissent noted, gamers could play the game endlessly without ever encountering Keller s avatar. 36 Conclusion The right of publicity is one of the ripest areas for litigation involving entertainers and other public figures. Celebrities are having to protect their publicity rights more than ever, given the proliferation of social media, where everyone with a computer has the power to be a journalist or a brand executive and where images of celebrities are within a keystroke s reach on the Internet. Many issues, such as the balancing tests between First Amendment concerns and right of publicity concerns, are still in their infancy. Further, even though there is a movement toward the transformative use test in First Amendment challenges, judges obviously disagree about the test s proper interpretation and application. These issues are only compounded by the fact that no federal law and no uniform state law exists. Moreover, each case is extremely fact specific. It will be interesting to see whether state courts and other federal circuits adopt the transformative use test, and whether a split develops among the circuits, making the issue ripe for Supreme Court review. A decision on that issue by the Supreme Court may inspire Congress to adopt a federal publicity right. Until then, we are left with 50 different versions at the state level and even more interpretations by state and federal courts. 34 Id. at *12 (Thomas, J., dissenting). 35 Id. 36 Id. at *14.