Rutter Guide Chapter: Right of Publicity 1. Common Law Misappropriation of Name or Likeness: common law provides a cause of action for one whose name or likeness has been appropriated by another for the other s use or benefit. a. Known as right of publicity : misappropriation of name or likeness cause of action is commonly referred to as an invasion of the right of publicity. [WITKIN SUMMARY OF CALIFORNIA LAW TORTS 676 (10th ed. 2005)] b. Distinguished from invasion of privacy: although closely related to an invasion of privacy cause of action, the misappropriation of one s name or likeness cause of action is based on a property right the right to use one s name or likeness for one s personal benefit. [WITKIN SUMMARY OF CALIFORNIA LAW TORTS 676 (10th ed. 2005)] c. Elements: (1) the defendant s use of the plaintiff s identity; (2) the appropriation of plaintiff s name or likeness to defendant s advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury. [Eastwood v. Superior Court (1983) 149 Cal. App. 3d 409 (citing Prosser, Law of Torts (4th ed. 1971) 117, pp. 804-807; 3 Witkin, Cal. Procedure (2d ed. 1971) Pleading, 606, p. 2244.)] i. First element: defendant s use of the plaintiff s identity, e.g., name, voice, signature, photograph, or likeness. (1) Examples of identity from other jurisdictions (NOT CALIFORNIA): anything that evokes identity could theoretically qualify, such as: (i) A look-alike [Allen v. National Video, Inc., 610 F. Supp. 2d 612, 630 (S.D.N.Y. 1985) (Woody Allen look-alike in a commercial)] (ii) A sound-alike [Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992) (use of gravel-voiced singer in commercial)); Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) (Bette Midler sound-alike in commercial)] (iii)a nickname [Ali v. Playgirl, Inc., 447 F. Supp. 723, 728 (S.D.N.Y. 1978) (drawing of nude black man labeled The Greatest )] (iv)a phrase associated with a celebrity [Carson v. Here s Johnny Portable Toilets, Inc., 698 F.2d 831, 837 (6th Cir. 1983) (use of the phrase Here s Johnny by company marketing Here s Johnny Portable Toilets )] (v) A robot dressed like a celebrity [Vanna White v. Samsung Elecs. Am., Inc., 971 F.2d 1395 (9th Cir. 1992), cert. denied, 508 U.S. 951 (1993) (VCR Samsung advertisement robot dressed like the TV show hostess Vanna White, turning letters on set similar to as that of the Wheel of Fortune show, was found to be a likeness by a jury)]
ii. Second element: the appropriation of plaintiff s name or likeness to defendant s advantage, commercially or otherwise; (1) Commercial uses: these include: (a) Advertising: use in advertising is a well recognized basis for liability. [Eastwood v. Superior Court, (1983) 149 Cal. App. 3d 409] (i) Use in advertising not required: no requirement that the unauthorized use or publication of a person s name or picture be suggestive of an endorsement or association with the injured person. [Eastwood, supra, 149 Cal. App. 3d at 418 (Eastwood sufficiently alleged commercial exploitation where the National Enquirer printed his picture on the magazine cover with a sexy story title to attract consumers attention and provide a commercial advantage over competitor publications)] (b) Commercial advantage from plaintiff s identity: defendant s commercial advantage must be related to plaintiff s identity. [Newton v. Thomason, 22 F.3d 1455 (9th Cir. 1994) (plaintiff s claim that defendant s used his name in a cast of characters for an advertisement that highlighted the program s general plot was dismissed because defendant s commercial advantage was totally unrelated to [plaintiff s] notoriety )] (2) Noncommercial uses: can give rise to liability. (a) Balancing of factors: a court will balance the public interest in the dissemination of news, information, and education against the individual s interest in peace of mind and freedom from emotional disturbances. [Gill v. Curtis Publishing Co. (1952) 38 Cal. 2d 273] (i) Necessity of the use matters: if the public interest could be served without the use of the plaintiff s likeness, then the defendant is more likely to be liable. [Gill, supra, 38 Cal. 2d at 279] iii. Third element: lack of consent. (1) Express or implied: consent may be implied. [See Newton, supra, 22 F.3d 1455 (consent was implied by plaintiff stating that he was excited about the use of his name and his lack of objection despite several phone calls to defendants)] iv. Fourth element: resulting injury: (a) Celebrity plaintiff: a celebrity plaintiff may be able to prove actual damages from the unauthorized use. (i) Lost marketing opportunities: he or she was deprived of a potential opportunity to market a product. 2
(ii) Diminished value in marketplace: his or her value in the marketplace has been diminished as a result of an unauthorized use. (iii)degree of fame matters: differences in the extent of celebrity are adequately reflected in the amount of damages recoverable. [See Motschenbacher v. R.J. Reynolds Tobacco Co., 498 F.2d 821, n. 11 (9th Cir. 1974) ( Generally, the greater the fame or notoriety of the identity appropriated, the greater will be the extent of the economic injury suffered. )] (b) Non-celebrity plaintiff: generally claims emotional distress or disgorgement of profits. [See 6(a) infra] 2. Statutory Right of Publicity: The common law right to publicity has been complemented legislatively by Civil Code section 3344, adopted in 1971. [Lugosi v. Universal Pictures (1979) 25 Cal. 3d 813, 819 (italics added)] a. Statutory language: Any person who knowingly uses another s name, voice, signature, photograph, or likeness, in any manner on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of products, merchandise, goods or services, without such person s prior consent, or, in the case of a minor, the prior consent of his parent or legal guardian, shall be liable for any damages sustained by the person or persons injured as a result thereof. [Cal. Civ. Code 3344(a), enacted 1971] b. Comparison to common law cause of action for misappropriation of name or likeness: the statutory cause of action consists of the same elements as a common law cause of action plus two additional ones: (1) plaintiff must prove a knowing use of his name or likeness for purposes of advertising or soliciting purchases, and (2) plaintiff must prove a direct connection between the use and the commercial purpose. [Eastwood v. Superior Court, (1983) 149 Cal. App. 3d 409, 417-18] i. Additional first element: purposes of advertising or solicitation of purchases: use in a medium shall not constitute a commercial use solely because the material containing such use is commercially sponsored or contains paid advertising. [Cal. Civ. Code 3344(e)] (1) News accounts: use of a celebrity s name in the context of an alleged news account allegedly designed to generate maximum curiosity and the necessary motivation to purchase the newspaper was found to be an allegation of commercial use. [Eastwood, supra, 149 Cal. App. 3d 409] ii. Additional second element: direct connection between the use and the commercial purpose: whether or not the use was so directly connected with the commercial sponsorship or with the paid advertising as to create a use for which consent is required under subdivision (a) is a question of fact. [Cal. Civ. Code 3344(e)] 3
(1) Connection must be direct: a direct connection must be alleged between the use and the commercial purpose. [Cal. Civ. Code 3344(e); see also Johnson v. Harcourt, Brace, Jovanovich, Inc. (1974) 43 Cal. App. 3d 880, 895] iii. Additional qualifications for the statutory cause of action: (1) Knowledge requirement: defendant s use must be knowing. (a) Incidental use of likeness by employer: if a photograph or likeness of an employee appears in an advertisement or other publication prepared for the employer, and the use is only incidental, and not essential, to the publication s purpose, then a rebuttable presumption arises that the failure to obtain the consent of the employee was not a knowing use of the employee s photograph or likeness. [Cal. Civ. Code 3344(c)] (2) Name, voice, signature, photograph, or likeness (a) Name: even a former name is protected. [Kareem Abdul-Jabbar v. General Motors Corp., 85 F.3d 407 (9th Cir. 1996)] (b) Voice: sound-alikes not considered a voice for purposes of Cal.Civ. Code 3344(a). [Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) (finding the defendant s guilty of common law misappropriation of plaintiff s identity)] (c) Photograph: any photographic reproduction, still or moving, videotape, or live television transmission. [Cal. Civ. Code 3344(b)] (i) Plaintiff must be identifiable: one who views the photograph with the naked eye must be able to reasonably determine that the person depicted in the photograph is the plaintiff. [Cal. Civ. Code 3344(b)(1)] 1. Plaintiff in a group: if a photograph contains more than one identifiable person then the plaintiff must be represented as an individual rather than solely as a member of a definable group. [Cal. Civ. Code 3344(b)(2)] a. Not represented as an individual: plaintiff is represented solely as a member of a definable group if the photo was taken of a group and the plaintiff is not singled out as an individual in any manner. [Cal. Civ. Code 3344(b)(3)] (d) Likeness: the term likeness refers to a visual image not a vocal imitation. [Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988)] (i) Examples: Artist-created sketches of the Three Stooges copied to lithographic prints and silk screen images on T-shirts were found to be a likeness [Comedy III Productions v. Saderup (2001) 25 Cal. 4th 387]; A robot dressed like the TV show hostess Vanna White, turning letters on set 4
iv. Presence of transformative elements negates liability: if defendant s use of a plaintiff s name, voice, or likeness involves significant transformative elements such that the defendant is not merely trading on the value of the plaintiff s property, then defendant is not liable because [w]hen 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. [Comedy III, supra, 25 Cal. 4th 387 (holding that charcoal drawings of the Three Stooges violated the right of publicity because of their lifelike nature and lack of transformative elements); Winter v. DC Comics, 30 Cal. 4th 881 (2003) (holding that parodies of singers contained significant creative elements which transformed them into something more than celebrity likenesses were protected by the First Amendment against the plaintiffs right of publicity claim)] 3. Exemptions to Misappropriation of Name or Likeness and Statutory Right of Publicity: these include: a. Newsworthy publications: news, public affairs, sports broadcasts, and political campaigns are exempt from the consent requirement. [Cal. Civ. Code 3344(d); see also Montana v. San Jose Mercury News, Inc. (1995) 34 Cal. App. 4th 790 (holding that the common law cause of action also exempts from liability the use of a name or likeness in connection with the reporting of a newsworthy matter)] i. Example: defendant who offered posters of previously published front page depicting plaintiff celebrating his team s Super Bowl victory not liable because (1) the posters represented newsworthy events, and (2) a newspaper has a constitutional right to promote itself by reproducing its new stories. [Montana, supra, 34 Cal. App. 4th 790] ii. Documentaries: surfing documentary considered a matter of public interest because [surfing] has created a lifestyle that influences speech, behavior, dress, and entertainment, among other things. It would be difficult to conclude that a surfing documentary does not fall within the category of public affairs. [Dora v. Frontline Video, Inc. (1993) 15 Cal. App. 4th 536] iii. False news or information: falsity alone is not enough to show that the material is not newsworthy. [Eastwood, supra, 149 Cal. App. 3d at 425] (1) Reckless disregard for the truth: if a publisher knows a story is false, or is reckless as to its truth, the publisher is no longer exempted. [Eastwood, supra, 149 Cal. App. 3d at 426 (holding that the deliberate fictionalization of Eastwood s personality constitutes commercial exploitation, and becomes actionable when it is presented to the reader as if true with the requisite scienter )] iv. No currency requirement: news matters need not be current to qualify for exemption. [Werner v. Times-Mirror Co., (1961) 193 Cal. App. 2d 111 (holding that 5
b. Owners and employees: owners and employees of media outlets are exempt from liability unless they had actual knowledge of the unauthorized use. [Cal. Civ. Code 3344(f)] 4. Defenses: these include: a. Federal preemption by Copyright Act: requires satisfaction of two conditions: (1) subject must be a work fixed in a tangible medium of expression within the scope of copyright protection under 17 U.S.C. 102 and 103, and (2) the right asserted under state law must be equivalent to the exclusive rights contained in 17 U.S.C. 106. [Fleet v. CBS, INC. (1996) 50 Cal. App. 4th 1911] i. Extra element rule: to avoid preemption, the cause of action must contain elements that are different in kind from copyright infringement. [Michaels v. Internet Entmt. Group, Inc., 5 F. Supp. 2d 823, 837 (C.D. Cal. 1998) (finding that defendant s use of the plaintiffs names and likenesses to advertise the sale of the infringing tape constitutes a separate action under 3344(a))] b. First Amendment protected speech: requires defendant to show that the work contains significant transformative elements or that the value of the work does not derive primarily from the celebrity s fame. [Comedy III, supra, 25 Cal. 4th at 407] i. Balancing of interests: the state law interest in protecting one s right to publicity balanced with protecting freedom of expression. [Comedy III, supra, 25 Cal. 4th at 401] ii. Available for all uses: First Amendment defense applies to commercial and noncommercial uses, [Comedy III Productions v. Saderup (2001) 25 Cal. 4th 387], as well as uses in entertainment, [Guglielmi v. Spelling-Goldberg Prods. (1979) 25 Cal. 3d 860 (noting that entertainment is entitled to the same constitutional protection as the exposition of ideas and finding that a fictional film based on the plaintiff s life was more akin to commenting upon or reporting the facts of [plaintiff s] performance and did not require consent of the plaintiff)] (1) Includes incidentally protected uses: if a use is incidental to a constitutionally protected use, then it is not actionable. [Keimer v. Buena Vista Books, Inc. (2000) 75 Cal. App. 4th 1220, 1232 (citing Guglielmi for the proposition that use incidental to the publication of the constitutionally protected materials is protected)] c. Fair use exception: for the use of a person s name or image if such use is not defamatory, does not invade privacy, and is not for a commercial purpose. [See Comedy III, supra, 25 Cal. 4th at 404 (noting that [t]he purpose and character of the use is particularly pertinent to the task of reconciling the rights of free expression and publicity)]. 6
d. Abandonment not a defense: arguing abandonment is not a viable defense to a right of publicity claim. [Kareem Abdul-Jabbar v. General Motors Corp., 85 F.3d 407 (9th Cir. 1996)] 5. Uses Related to Plaintiff s Identity: uses related to, but not directly capturing, plaintiff s identity may not require consent. [See, e.g., Guglielmi v. Spelling-Goldberg Prods. (1979) 25 Cal. 3d 860 ( The right of publicity derived from public prominence does not confer a shield to ward off caricature, parody and satire. Rather, prominence invites creative comment. )] a. Celebrities: a celebrity s likeness may be used to advertise a product related to their fame. [Gionfriddo v. Major League Baseball (2001) 94 Cal. App. 4th 400, 414 (holding that advertisements for the game of baseball could use players likenesses without consent unless plaintiffs could demonstrate a substantial competing interest ); see also Dora v. Frontline Video, Inc. (1993) 15 Cal. App. 4th 536 (if a video documentary contains an unconsented, though protected, use of a person s likeness, there is little question that an advertisement for the documentary, containing a clip of that use would be permissible)] i. Selling products featuring a celebrity s likeness or name: use of a celebrity s likeness or image in merchandise for sale would require consent. [Gionfriddo, supra, 94 Cal. App. 4th at 414] b. Non-celebrities: have a right to sue for the commercial value of unpermitted use of their personal identity. [See Christoff v. Nestle USA, Inc. (Cal. App. 2007) 62 Cal.Rptr.3d 122 (remanded on other grounds) ( Although the injury to the celebrity and the non-celebrity might differ, section 3344 does not require the plaintiff to be a celebrity in order to recover damages, including actual damages and profits. The appropriation of the identity of a relatively unknown person may result in economic injury or may itself create economic value in what was previously valueless. ) (internal citations omitted)] 6. Single Publication Rule: one issue of a publication is treated as one single publication regardless of whether an issue consists of one copy, one million copies, or more. [Cal. Civ. Code 3425.3; see also Christoff, supra, 62 Cal. Rptr. 3d 122] a. Purpose of Single Publication Rule: to prevent unwieldy litigation and the collection of damages in multiple litigations. [See Christoff, supra, 62 Cal. Rptr. 3d 122] 7. Statute of Limitations: suits must be filed within 2 years of the first publication unless a person had no meaningful ability to become aware of the publication. [Christoff, supra, 62 Cal. Rptr. 3d at 135, citing Shively v. Bozanich (2003) 31 Cal. 4th 1230 ( The plaintiffs inability to discover the libel when it first was published and placed in a confidential file would render unjust any holding that the cause of action accrued and the period of limitations commenced when the writing was placed in the file. )] i. Statute of limitations and the Single Publication Rule: all the uses considered one use under the Single Publication Rule because if subsequent publications are not considered a Single Publication then each publication is actionable and each 7
8. Damages: these include: a. Statutory Damages: plaintiff is entitled to an amount equal to the greater of seven hundred fifty dollars ($750) or the actual damages suffered by him or her as a result of the unauthorized use, and any profits from the unauthorized use that are attributable to the use and are not taken into account in computing the actual damages. In establishing such profits, the injured party or parties are required to prove his or her deductible expenses. [Cal. Civ. Code 3344(a)] i. Profits derived from unauthorized use: plaintiff must present evidence of the portion of defendant s profits that were attributable to the unauthorized use. [Christoff, supra, 62 Cal. Rptr. 3d 122] b. Emotional distress: damages for mental anguish or emotional distress incurred by the plaintiff as a result of the unauthorized publication may be awarded. [See Clark v. Celeb Pub., Inc., 530 F. Supp. 979 (S.D. N.Y. 1981) (applying California law) (citing Fairfield v. American Photocopy Equipment Co., 138 Cal. App. 2d 82 (1955))] c. Punitive damages: available where it is proven by clear and convincing evidence that the defendant has been guilty of oppression, fraud, or malice. [Cal. Civ. Code 3294(a); Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992); see also Cal. Civ. Code 3344(a)] 9. Attorney s Fees and Costs: recoverable by the prevailing party. [Cal. Civ. Code 3344(a)] 10. Descendibility of Publicity Rights: differences between common law and statutory rights. a. Common law: no survivable or descendible right to publicity. [Lugosi v. Universal Pictures (1979) 25 Cal. 3d 813, 820] i. Exception for previous assignment of rights: right to exploit one s name or likeness can be assigned during one s lifetime and may survive that person s death. [Lugosi, supra, 25 Cal. 3d at 823] b. Statutory right: cause of action for unauthorized use of a deceased personality s name, voice, signature, photograph, or likeness in advertising or soliciting. [Cal. Civ. Code 3344.1 (enacted in 1984 as Cal. Civ. Code 990, renumbered as Cal. Civ. Code 3344.1 in 1999)] i. Deceased personality definition: a natural person whose name, voice, signature, photograph, or likeness has commercial value at the time of his death, regardless of whether that person made commercial use of his identity during his lifetime. [Cal. Civ. Code 3344.1(h)] 8
ii. Applicability of right: 3344.1 is generally inapplicable to a play, book, magazine, newspaper, musical composition, audiovisual work, radio or television program, single and original work of art, work of political or newsworthy value, or an advertisement or commercial announcement for any of these works whether fictional or nonfictional. [Cal. Civ. Code 3344.1(2); see also Joplin Enterprises v. Allen, 795 F. Supp. 349 (W.D. Wash. 1992) (interpreting Cal. Civ. Code 990 and finding no actionable claim for a play based on the late singer s life)] iii. Duration of right: expires 70 years after the deceased personality s death. [Cal. Civ. Code 3344.1(g)] iv. Character of right: rights created by 3344.1 are property rights which may be transferred in whole or in part, and pass by rights of survivorship if not transferred. [Cal. Civ. Code 3344.1(b)] v. Exemptions and defenses to right: rights created by 3344.1 are subject to the same exemptions and defenses that are applicable to claims brought under 3344. [Cal. Civ. Code 3344.1(j), 3344.1(k), 3344.1(l)] 9