The Right of Publicity and the Need to Clear Your Advertising Copy
Earlier this year, actors Bradley Cooper and Liam Neeson filed a lawsuit against Vutec Corporation and First Impressions Theme Theatres, Inc., both Florida-based companies specializing in home-theater equipment. Mr. Cooper and Mr. Neeson allege that the defendants used images of the actors, without permission, in advertisements for defendants’ products. A copy of the complaint is available here: Cooper v. Vutec Corp., No. 2:13-cv-02951 (C.D. Cal. filed Apr. 26, 2013). Among other claims, the complaint alleges that this unauthorized use of the actors’ images violated each plaintiff’s right of publicity under California law. The case remains in its nascency and, should it produce an opinion, is not positioned to generate any ground-breaking legal precedent. But it provides a valuable reminder to advertisers of the need to be aware of legal restrictions when composing ad copy and to have content reviewed by a legal advisor before publication. Due to the “right of publicity” protections for individuals available in many states, particular care should be paid when that ad copy features a person’s name, image, voice, or other indicia of that person’s identity.
Protection of an individual’s right of publicity is a product of state law and thus varies on a state-to-state basis as to both availability and scope. In general, laws governing right of publicity protect use of a natural person’s name, voice, image, likeness, or any other indicium of persona for commercial purposes, unless the person portrayed has consented to such use. Nineteen states have statutory protections for the right of publicity. Other states protect appropriation of a person’s identity as a form of privacy tort under the state’s common law. (In California, there are both statutory and common-law protections for the right of publicity.) In some states, protection for an individual’s right of publicity survives that individual’s death. See, e.g., Cal. Civ. Code § 3344.1 (protecting the persona rights for seventy years following such person’s death).
Generally, an individual need not be a celebrity or have previously traded on his or her identity in order to maintain a cause of action for a right-of-publicity violation. However, given the value to advertisers of celebrity endorsements (explicit or implied) and the value to a celebrity in capitalizing off of use of his or her identity, many litigated disputes involve celebrities. Accordingly, California has produced much of the noteworthy case law on this topic and, when beginning to explore protections for the right of publicity, is a good place to start.
In California, “[t]o sustain a common law cause of action for commercial misappropriation, a plaintiff must prove: ‘(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.’” Downing v. Abercrombie & Fitch, 265 F. 3d 994, 1001 (9th Cir. 2001) (quoting Eastwood v. Superior Court, 149 Cal. App. 3d 409, 416 (1983)).
As for its statutory protections, California’s right-of-publicity statute (Cal. Civ. Code § 3344) reads, in pertinent part:
Any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, on or in [goods] or for purposes of advertising or selling [goods or services], without such person's prior consent . . . shall be liable for any damages sustained by the person or persons injured as a result thereof.
To establish a violation of the statutory protection, a plaintiff must allege the four elements of a common-law claim and must also allege “a knowing use by the defendant as well as a direct connection between the alleged use and the commercial purpose.” Downing, 265 F.3d at 1001. The statute provides for statutory minimum damages of $750 or the actual damages suffered by the injured party, whichever is greater, and an award of “any profits from the unauthorized use that are attributable to the use and are not taken into account in computing the actual damages.” Cal. Civ. Code § 3344(a). However, plaintiffs seeking a damage award based on a defendant’s profits have encountered difficulty introducing evidence sufficient to establish that certain profits are “attributable” to the infringement of publicity rights, as required by the statute. See, e.g., Christoff v. Nestle USA, Inc., 62 Cal.Rptr.3d 122, 141-144 (Cal. App. 2007) (where unauthorized image of plaintiff was used on a product label, holding that expert testimony claiming the image of a man on the label accounted for 10% of product sales was insufficient to demonstrate that those sales were attributable specifically to the image being of plaintiff), rev’d in part on other grounds, 47 Cal.4th 468 (Cal. 2009); Walter v. Kia Motors Am. Inc., No. B1555492, 2003 WL 22511497 (L.A. County Super Ct. Nov. 6, 2003) (rejecting, as unsupported by evidence, plaintiff’s calculation of profits attributable to the misappropriation of his image as a pro rata share of defendant’s overall profits for the applicable time period (based on the portion of defendant’s total advertising spend that was used to place ads featuring plaintiff’s image)). The prevailing party is also entitled to an award of attorneys’ fees and punitive damages are available in certain cases. Cal. Civ. Code § 3344(a).
In addition to protecting name, voice, and image, courts have construed right of publicity to protect less obvious forms of identity, including commercial uses of sound-alike singers imitating Tom Waits (Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992)) and Bette Midler (Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988)); a Woody Allen look-alike actor (Allen v. National Video, Inc., 610 F. Supp. 2d 612, 630 (S.D.N.Y. 1985)), and animatronic renditions of Vanna White (White v. Samsung Elecs. Am., Inc., 971 F. 2d 1395 (9th Cir. 1992) and George Wendt and John Ratzenberger (Wendt v. Host Int’l, 125 F.3d 806 (9th Cir 1997). Nicknames, former legal names, and wordplay based on the name of a celebrity have each also been held protectable. See Ali v. Playgirl, Inc., 447 F. Supp. 723 (S.D.N.Y. 1978); Abdul-Jabar v. Gen. Motors Corp., 85 F.3d 407 (9th Cir. 1996); and Henley v. Dillard’s Stores, 46 F.Supp.2d 587 (N.D. Tex. 1999) (granting summary judgment to plaintiff, singer Don Henley, over use of the phrase “This is Don. This is Don’s Henley.” in an advertisement).
Thus, use in an advertisement of an individual’s name, voice, image, likeness, or, in certain circumstances, other elements that reference or evoke such an attribute likely requires the advertiser to have secured consent from the person depicted.
Intersection of the Right of Publicity and First-Amendment Protections
Complications, and potential defenses, arise when a person’s identity is used in a manner that is not purely commercial speech (i.e., not an advertisement). In such cases, a plaintiff’s right of publicity must be balanced against a defendant’s First Amendment right to free expression. In some such cases, courts have found that the right of publicity must yield. See, e.g., Hoffman v. Capital Cities/ABC Inc., 255 F.3d 1180 (9th Cir. 2001) (no violation of right of publicity for magazine article that included manipulated image of Dustin Hoffman); ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915 (6th Cir. 2003) (no violation of right of publicity for artwork that depicted Tiger Woods); Kirby v. Sega of America Inc., 144 Cal. App. 4th 47 (2006).
Elsewhere, however, courts have found that use of a person’s identity in speech that is not purely commercial is nonetheless a violation of such person’s right of publicity. While the standard for evaluating which uses constitute infringement continues to evolve, recent court decisions have favored using a modified version of U.S. copyright law’s transformative-use test in balancing a plaintiff’s right of publicity against the defendant’s right of free expression. See, e.g., Comedy III Prods. Inc. v. Gary Saderup Inc., 25 Cal. 4th 387 (2001) (originating test and holding that artist’s renditions of The Three Stooges and sale of same on merchandise was insufficiently transformative to be shielded from right-of-publicity claims by the artist’s First Amendment rights); Hart v. Electronic Arts, Inc. (3rd Cir. May 21, 2013) (rehearing en banc denied June 25, 2013) (finding that use of a college quarterback’s likeness in a video game was not sufficiently transformative as to warrant dismissal of quarterback’s right of publicity claims on First Amendment grounds); No Doubt v. Activision Publ’g, Inc., 122 Cal. Rptr. 3d 397 (Cal. App. 2011) (holding that use in a video game of avatars designed meticulously to resemble members of the musical act No Doubt was not sufficiently transformative to undermine band members’ respective rights of publicity). [Ed Note: Please click here for InfoLawGroup’s discussion of the Ninth Circuit’s recent opinion in In re: NCAA Student-Athlete Name & Likeness Licensing Litigation, a separate case against Electronic Arts based on facts very similar to the Hart case mentioned above.]
Preemption of Right-of-Publicity Claims by the Copyright Act
By its terms, the U.S. Copyright Act preempts any legal or equitable right granted by a state that covers the same subject matter as copyright protection and is “equivalent to any of the exclusive rights” granted by copyright. 17 U.S.C. § 301. State right-of-publicity laws are not broadly preempted per se, but some courts have found that they may be preempted on a case-by-case basis. Given the state of the law, determining when preemption will apply is less than straightforward.
Courts differ in their application of preemption to right-of-publicity claims. Where the claimed right-of-publicity violation concerns copyrightable materials (e.g., a sound recording) and stems solely from the unauthorized exercise of an exclusive right granted to a copyright holder (e.g. reproduction of that sound recording), some courts have found that preemption bars the pursuit of right-of-publicity claims based on this same conduct. This view has been particularly favored in recent years by the Ninth Circuit (and inferior courts therein). See Laws v. Sony Music Ent., 448 F.3d 1134 (9th Cir. 2006) (preemption found where claim was based on the reproduction and distribution of a sound recording featuring plaintiff’s voice); Lewis v. Activision Blizzard, Inc., No. C 12-1096 (N.D. Cal. Oct. 22, 2012) (same); Jules Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d 1146 (9th Cir. 2010) (claim preempted where it was based on use of plaintiff’s likeness in the unauthorized reproduction of films in which plaintiff starred);
Other courts have held that the subject matter of a right-of-publicity claim is a person’s name, likeness, and other indicia of identity and that the rights granted to a person in his or her identity by right-of-publicity laws are thus not “equivalent” to rights protected under the Copyright Act. Those courts have declined to find preemption, in some cases even where the conduct at issue may involve the reproduction of copyrightable materials. See Toney v. L’Oreal USA, Inc., 406 F.3d 905 (7th Cir. 2005); Downing v. Abercrombie & Fitch, Inc., 265 F.3d 994) (9th Cir. 2001); Brown v. Ames, 201 F.3d 654 (5th Cir. 2000).
The distinctions between the factual circumstances underlying these cases can be minute and thus reconciling the holdings involves a lengthy analysis not necessary here. For now, suffice it to note that claimants may run into preemption issues where the conduct underlying their right-of-publicity claim involves copyrightable subject matter and the exercise of rights in that material that are reserved to copyright owners (reproduction, distribution, etc.).
While issues related to the First Amendment and copyright laws may provide a defense for some, the least contentious path for advertisers is clear. If at all possible, advertisers incorporating a person’s image, name, voice, or other element of persona into a product, its packaging, or any advertising collateral should secure permission from that person beforehand.
If you have any questions related to the right of publicity, or need assistance in ensuring that you are acquiring the necessary rights from your actors, models, and other subjects, please contact your InfoLawGroup attorney.