Right of Publicity Update: Watch What You Tweet.
Last month, actress Katherin Heigl sued pharmacy chain Duane Reade for, among other things, violating her right of publicity. (See our previous coverage on the right of publicity here and here.) The suit arises out of Duane Reade’s statements about and use of a photograph of Ms. Heigl holding its shopping bags via Twitter and Facebook. The Tweet (since deleted) read: “Love a quick #DuaneReade run? Even @KatieHeigl can't resist shopping #NYC's favorite drugstore,” along with a candid, paparazzi-captured image of Ms. Heigl exiting a Duane Reade store. (The Facebook post, also since deleted, was substantially the same, but used Ms. Heigl’s full name, rather than her @KatieHeigl handle.) The photograph originally appeared on celebrity gossip site JustJared.com as part of a story on Ms. Heigl’s representation by the William Morris Endeavor Entertainment agency.
Even though Duane Reade arguably just described what was going on in the photograph, Ms. Heigl alleges that the unauthorized use of her image was in an advertising context and divorced from the news reporting contained in the original Just Jared story, thereby violatingNew York’s right of publicity statute, N.Y. Civ. Rights § 50 & 51 (referred to in New York as the “right of privacy”). Ms. Heigl also alleges that such use of her image falsely implies that she is affiliated with or endorses Duane Reade in a manner likely to cause consumer confusion in violation of § 43(a) of the Lanham Act (15 U.S.C § 1125(a)). She is seeking $6M in damages.
Proving false endorsement under § 43(a) requires demonstrating, among other things, a likelihood of confusion or mistake by or deception of consumers. Making such a showing can be difficult and can require commissioning a costly consumer survey. Establishing a violation of New York’s right of publicity statute, on the other hand, is comparably straightforward. “A successful right of publicity claim must show ‘(1) use of plaintiff's name, portrait, picture or voice (2) for advertising purposes or for the purposes of trade (3) without consent and (4) within the state of New York.’” Jackson v. Onedat, No. 09 Civ. 5583, 2014 WL 1202745 at *5 (S.D.N.Y. Mar. 24, 2014), quoting Hoepker v. Kruger, 200 F.Supp.2d 340, 348 (S.D.N.Y. 2002). Perhaps because of this, right-of-publicity claims are not particularly rare. This past March, rapper 50 Cent (née Curtis Jackson) won summary judgment on a right of publicity claim he brought against the website WorldStarHipHop.com, based on use of his image in the site’s banner. Id.
In our experience, the kind of use at issue in the Heigl-Duane Reade case is also not uncommon. Some celebrities are cultural tastemakers. Not surprisingly, businesses get excited when such a celebrity is photographed in public using its products or services and want to share that image. This can take many forms, including those that may seem innocent like an “As Seen In/On” section of a website or a social-media post.
Companies should take note that, innocent as it may seem, referring to or depicting a person’s use of the company’s goods or services can run afoul of state right of publicity laws (as well as other laws, like § 43(a) of the Lanham Act and the Copyright Act). If you want to use a photograph or person’s name or other identifying information on your business’ website, social-media accounts, or otherwise in advertising for your business, you need to make sure ahead of time that you have secured all necessary rights. Consider obtaining a license or assignment of the copyright in the image by the photographer (or other copyright owner) and a publicity waiver from any person depicted in the photograph, whether or not a celebrity. If you do obtain permission and use a person’s name or likeness, keep in mind that doing so may trigger endorsement-related disclosures.