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The
nature of the work in which a person's name or image
appears, and the purpose and character of the portrayal,
both play important roles in assessing the permissibility
of the use. In broad terms, one may more readily invoke
a person's name or likeness in a "creative" work than in
a "commercial" context.
Of course,
this broad statement serves only as a starting point - and
not always a correct one. One must begin with the available
legal theories, consider how they have been applied and
determine how a particular proposed use fits within that
analysis.
A.
Legal Liablity for Misappropriating an Identity
Name
and likeness represent elements of identity (interests
one has in his or her own person). The law enforces these
interests by theories that give individuals certain rights
to control the exploitation of their identity and to protect
their reputation.
1.
Right of Publicity - Definition & Background
The
right of publicity represents one's interest in the value
of his or her name, likeness and, in some cases, other attributes
of identity. It developed in the common law and, in California
and elsewhere, became codified in statutes for both living
and deceased personalities.
a)
Common law - Establishing Misappropriation of Identity
In California,
a cause of action for misappropriation of the common law
right of publicity requires the plaintiff to establish that
(a) the defendant used the plaintiff's name or likeness
to the defendant's advantage, commercial or otherwise, (b)
without consent, (c) causing injury to the plaintiff. Eastwood
v. Superior Court, 149 Cal. App. 3d 409, 417 (1983),
citing Prosser, LAW OF TORTS (4th ed. 1971). An earlier
law review article by Prosser, credited as one of the first
articulations of the right of publicity, suggests that a
defendant can actionably appropriate a plaintiff's identity
without strictly using his or her name or likeness. Prosser,
Privacy, 48 Cal. L. Rev. 383, 401 n.155 (1960).
Thus,
caution is necessary. Courts have held that defendants may
be liable for misappropriating "attributes of identity"
beyond mere name and likeness. See, e.g., Motschenbacher
v. R. J. Reynolds Tobacco Co., 498 F.2d 821 (9th Cir.
1974) (tobacco print advertisement featuring race car identifiable
as plaintiff's, even though plaintiff himself not visible
in ad); Midler v. Ford Motor Co., 849 F.2d 460 (9th
Cir. 1988) (television commercial featuring "sound-alike"
of singer Bette Midler); Carson v. Here's Johnny Portable
Toilets, Inc., 698 F.2d 831 (6th Cir. 1983) (use of
phrase associated with Johnny Carson to identify defendant's
portable toilets); White v. Samsung Electronics America,
Inc., 971 F.2d 1395 (9th Cir. 1992), cert. denied, 508 U.S.
951 (1993) (print ad depicting robot with blonde hair and
female features wearing a gown and jewels and turning letters
in manner of Vanna White on "Wheel of Fortune" game show).
b)
Statutory - Liability for Misappropriation of Identity
Since
1971, California has protected the right of publicity by
statute. Civil Code section 3344 imposes liability on any
person "who knowingly uses another's name, voice, signature,
photograph, or likeness, . . . on or in . . . or for purposes
of advertising or selling . . . products, merchandise, goods
or services." Civ. Code § 3344 (a). It does not apply to
uses "in connection with any news, public affairs, or sports
broadcast or account, or any political campaign." Id. §
3344(d).
The
statute requires the depiction of one's actual likeness.
See, e.g., Midler, 849 F.2d at 463-64 (sound-alike
not sufficient); White, 971 F.2d at 1397 (metallic
robot not sufficient). However, "name" includes known former
names. Abdul-Jabbar v. General Motors Corp., 85 F.3d
407, 415-16 (9th Cir. 1996) (use of name by which basketball
star known in college).
c)
Deceased persons - publicity rights similar to living persons
The
California Supreme Court refused to extend publicity rights
to deceased celebrities in Lugosi v. Universal Pictures,
25 Cal.3d 813 (1979). In response, the state's legislature
did so by statute. As Section 3344 had done for living persons,
Civil Code section 990 conferred upon specified representatives
of a deceased personality rights of publicity similar to
those granted to living persons under Section 3344, with
comparable exceptions.
Largely
in response to Astaire v. Best Film & Video Corp.,
116 F.3d 1297 (9th Cir. 1997) - which is discussed in greater
detail below - the legislature amended Section 990 and re-numbered
it as Civil Code section 3344.1. The amended statute prohibits
the same uses of "a deceased personality's name, voice,
signature, photograph, or likeness . . . on or in . . .
or for purposes of advertising or selling, or soliciting
purchases of, products, merchandise, goods, or services."
Civ. Code § 3344.1(a)(1).
However,
instead of exempting certain uses, the amended statute achieves
the same result in a different manner. It simply provides
that "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, shall not be considered a product, article
of merchandise, good, or service." Civ. Code § 3344.1(a)(2).
d)
Liability for other privacy rights besides "publicity"
The
right of publicity represents but one of four distinct branches
of the right of privacy. The others protect against (i)
invasion of a person's privacy, (ii) depiction of the person
in a false light, and (iii) public disclosure of private
facts.
Thus,
even if a use does not violate a person's right of publicity,
it could constitute a different privacy tort. Reality programming
and hidden camera news stories have been held subject to
claims for intrusion or public disclosure of private facts.
Shulman v. Group W Prods., Inc., 18 Cal. 4th 200
(1998); Sanders v. American Broadcasting Cos., Inc.,
20 Cal. 4th 907 (1999); Baugh v. CBS, Inc., 828 F. Supp.
745 (N.D. Cal. 1993). Also, in a recent case, the California
Court of Appeal held that plaintiffs had demonstrated likelihood
of success on claims for public disclosure of private facts
and false light arising out of defendants' publication of
a little league team photo in connection with an article
about the team manager's guilty plea to charges of child
molestation. M.G. v. Time Warner, Inc., 89 Cal. App.
4th 623 (2001). Those responsible for such content must
keep these other privacy theories in mind.
2.
Additional Liability for False Designation & Defamation
False
Designation. Many right of publicity cases also
include a cause of action for false designation of origin
under Section 43(a) of the Lanham Act. The theory goes that
the unauthorized use of a person's name or likeness falsely
implies that person's affiliation with or endorsement or
sponsorship of the matter for which the name or likeness
is used. 15 U.S.C. § 1125(a).
The
courts decide these matters with an eight-factor likelihood
of confusion analysis set forth by the Ninth Circuit in
AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th
Cir. 1979). The so-called Sleekcraft factors are: (1) strength
of plaintiff's "mark" or identity; (2) relatedness of the
goods being sold to those associated with plaintiff; (3)
similarity of the marks; (4) evidence of actual confusion;
(5) marketing channels used; (6) likely degree of purchaser
care; (7) defendant's intent in selecting the mark; and
(8) likelihood of expansion of product lines. Id. at 348-49.
Courts have had little trouble applying this test and finding
liability under the Lanham Act for the use of a person's
name, likeness or other attributes of identity. See, e.g.,
Abdul-Jabbar, 85 F.3d at 413; Waits v. Frito-Lay Corp.,
978 F.2d 1093, 1108 (9th Cir. 1992); White, 971 F.2d at
1400-01.
Defamation.
Additionally, and even in situations where the use of a
person's name or likeness does not infringe upon his or
her rights of publicity or privacy or Lanham Act interests,
it may give rise to a defamation claim. That is, the use
may make a false statement about a person and cause harm
to his or her reputation - for example, the posting of a
photo on an adult Website that the model in the photograph
did not authorize.
B.
Type Of Use - Creative, Matter of Public Interest or Commercial?
The
right of publicity statutes and the cases involving name
and likeness challenges often distinguish between uses in
creative works or matters of public interest protected by
the First Amendment and uses in connection with the advertising
or sale of goods or services. However, where a particular
use falls is not always so clear-cut.
1.
Creative Works and Matters of Public Interest
Both
a common law and statutory claim for misappropriation of
right of publicity require the use of a person's name or
likeness - or attributes of identity in a common law context
- for a commercial purpose. Polydoros v. Twentieth Century
Fox Film Corp., 67 Cal. App. 4th 318, 322 (1997), citing
Fleet v. CBS, Inc., 50 Cal. App. 4th 1911, 1918 (1996).
In Polydoros, plaintiff sued a film studio when it released
a theatrical motion picture entitled "The Sandlot," which
depicted the adventures of a motley group of boys on a sandlot
baseball team in the 1960s in Los Angeles' San Fernando
Valley. One of the team members was named Michael Palledorous.
He was the same age as plaintiff was in that time period,
and looked like plaintiff did at that time in the similar
setting in which he grew up.
The
California Court of Appeal affirmed summary judgment against
plaintiff on his statutory and common law right of publicity
claims. "The law was never intended to apply to works of
pure fiction," observed the court, discussing several cases
that rejected such claims "when there is merely alleged
to be some resemblance between an actual person and a character
in a work of fiction." 67 Cal. App. 4th at 322-23, citing
Aguilar v. Universal City Studios, Inc., 174 Cal.
App. 3d 384, 388-91 (1985) and People ex rel. Maggio
v. Charles Scribner's Sons, 205 Misc. 818, 130 N.Y.S.2d
514 (1954). The Court held defendant's film protected by
the First Amendment of the Constitution and therefore not
susceptible to plaintiff's identity misappropriation claims.
Id. at 323-24, citing Guglielmi v. Spelling-Goldberg Productions,
25 Cal. 3d 860, 865-69 (1979), which had so held in connection
with a fictionalized account of the life of film star Rudolph
Valentino.
The
California Court of Appeal reached a similar result in the
context of a factual documentary of the life of a famous
surfer in Dora v. Frontline Video, Inc., 15 Cal.
App. 4th 536 (1993). The court considered the work a matter
of public interest and shielded from liability by the First
Amendment as well as by the express exemption in Civil Code
section 3344 itself. Id. at 542, 544-46.
Both
Section 3344 (for living persons) and 3344.1 (for deceased
personalities) carve out specific exceptions from liability
for political, newsworthy or public interest matters, while
only 3344.1 expressly exempts fictional entertainment. Cases
such as Guglielmi and Polydoros teach that the First Amendment
plugs that hole, and also precludes claims for defamation.
"Because the film is obvious fantasy, appellant could not
reasonably suffer injury to his feelings or peace of mind."
Polydoros, 67 Cal. App. 4th at 325.
2.
Advertising or Sale of Products or Services
Both
the common law and statutory right of publicity in California
require as an element the use of name or likeness on or
in products or services or for purposes of advertising or
selling them. Civ. Code §§ 3344(a), 3344.1(a)(1); Midler,
849 F.2d 460 (Midler sound-alike in television commercial
for Ford Motor vehicles); White, 971 F.2d 1395 (robotic
Vanna White figure in print ad selling Samsung Electronics
products); Waits, 978 F.2d 1093 (sound-alike of singer Tom
Waits used in radio commercial for defendant's snack foods);
Abdul-Jabbar, 85 F.3d 407 (9th Cir. 1996) (use of former
name of basketball star in television commercial for General
Motors vehicles).
Thus,
one may not use another's name or likeness to advertise
a commercial product or service. Nor may one place the name
or image on a t-shirt, coffee mug or other merchandise and
offer it for sale.
3.
Hybrid Uses
Not
every use fits neatly into one category or another. The
courts themselves have struggled to determine where particular
uses fit for purposes of determining their actionability.
a)
Advertising a protected work
Liability
generally will not attach to the use of a name or likeness
in advertising a First Amendment-protected work in which
the name or likeness appears. "A filmmaker's use of photographs
of an actor resembling an actual personage to promote a
fictional work is 'merely an adjunct to the exhibition of
the film . . . [and] . . . is similarly not actionable.'"
Polydoros, 67 Cal. App. 4th at 325, quoting Guglielmi, 25
Cal. 3d at 872-73, and citing Cher v. Forum International,
Ltd., 692 F.2d 634, 639 (9th Cir. 1982) (permissible
to highlight interview of celebrity in men's magazine in
promotional efforts to sell the magazine in which the interview
appears); Montana v. San Jose Mercury News, Inc.,
34 Cal. App. 4th 790, 797 (1995) (holding that defendant
had the right to use of photo of football star from one
issue of its newspaper to sell other papers).
What
about the use of film clips in connection with a work in
which those clips do not appear? The Ninth Circuit answered
that question under Civil Code section 990, the predecessor
to section 3344.1, in Astaire v. Best Film & Video Corp.,
116 F.3d 1297 (9th Cir. 1997), amended, 136 F.3d 128 (9th
Cir.), cert. denied, 525 U.S. 868 (1998).
In that
case, Robyn Astaire, the widow of the late Fred Astaire,
complained of the use of public domain video clips of her
deceased husband as introductory material on an instructional
dance video that all parties conceded otherwise made permissible
use of his name and likeness. The District Court granted
summary judgment in her favor, and the Court of Appeals
reversed.
The
Court held that California Civil Code section 990, then
in force, expressly precluded liability for such use. Section
990(n) provided that the publicity rights conferred by it
"shall not apply to the use of a deceased personality's
name . . . or likeness" in such things as (1) a "play, book,
magazine, newspaper, musical composition, film," etc. or
(4) an "advertisement or commercial announcement for a use
permitted by paragraph (1) . . . ." The Court held that
the use of Fred Astaire's likeness from film clips in the
introduction to the instructional video was immune from
liability under Section 990(n)(1) or, even if deemed entirely
promotional, under Section 990(n)(4) as an advertisement
or commercial announcement for the dance video, itself a
protected use.
Outraged
at this result, the Hollywood talent community lobbied the
California legislature to amend Section 990. It did, renumbering
it as Section 3344.1. However, other than extending the
publicity rights of a deceased celebrity from 50 to 70 years
after his or her death, it is not clear that the statute
changed so substantively that it would have led to a different
result in Astaire had it been enacted prior to the Ninth
Circuit's decision in that case.
b)
Using protected material to promote other matters
Copyright
owners of motion pictures and television programs at times
will license film clips or other elements of their work
for advertising or other uses. However, after Wendt v.
Host International, Inc., 125 F.3d 806 (9th Cir. 1997),
reh'g denied, 197 F.3d 1294 (9th Cir. 1999), cert. denied,
531 U.S. 811 (2000), those licensing clips or characters
from a work for advertising or merchandising purposes must
make sure they have the right to use the names and likenesses
of the actors who portray the characters or appear in the
clip for such purposes.
Plaintiffs
in Wendt were the actors who played "Norm" and "Cliff" in
the popular Cheers television series. They sued defendant
Host International for placing animatronic figures alleged
to resemble Norm and Cliff in "Cheers" airport bars. They
also named Paramount Pictures Corp., the copyright owner
of the television series, which had licensed the right to
use those characters to Host.
The
Court in Wendt held that plaintiffs had permissibly sought
relief under California's common law and statutory right
of publicity and the federal Lanham Act, and that the U.S.
Copyright Act did not preempt such claims. It so held because
the claims "contain elements, such as the invasion of personal
rights . . . that are different in kind from copyright infringement."
125 F.3d at 810 (citations omitted). It reversed summary
judgment for defendants on the grounds that disputed issues,
requiring jury resolution, existed as to the similarity
in appearance between plaintiffs and the figures in Host's
bars. Id. at 810-14.
Dissenting
from the Court's denial of defendants' petition for rehearing
en banc, Judge Kozinski expressed concern that the decision
severely limited the rights of the copyright owner to exploit
its work by licensing the use of elements thereof. 197 F.3d
at 1285-87. The full panel did not address this issue. However,
the Wendt panel itself had acknowledged that the publicity
right could not prevent the exploitation of the actors'
performance in a copyrighted work. 125 F.3d at 810, citing
Fleet v. CBS, Inc., 50 Cal. App. 4th 1911 (1996).
Thus,
a copyright owner may license a film clip for use in another
copyrighted work. However, it should approach with much
more caution clip or character licensing for a separate,
commercial purpose. To protect itself in such a case, the
owner of the copyrighted work should get specific permission
or secure that right up front in the actor's original contract
to perform in the work.
c)
Mixed promotional and editorial material
The
Ninth Circuit found a triable issue in Wendt as to commercial
purpose notwithstanding the copyright owner's rights in
the licensed characters. In Hoffman v. Capital Cities/ABC,
Inc., 2001 U.S. App. LEXIS 15085 (9th Cir. 2001), it
insulated from liability the use of a celebrity's name and
likeness for mixed commercial and expressive purposes. This
decision is difficult to reconcile with Wendt, given that
the First Amendment rights held to protect the content at
issue in Hoffman apply with the same force to the work in
which the "Cheers" characters appeared. See Guglielmi, supra,
25 Cal. 3d at 865-69.
In Hoffman,
plaintiff Dustin Hoffman challenged a segment of the 1997
"Fabulous Hollywood Issue" of Los Angeles Magazine. That
piece, entitled "Grand Illusions," featured famous film
stills digitally altered to clothe the characters in modern
fashions, including one of Hoffman from the motion picture
Tootsie. L.A. Magazine altered the Tootsie still by replacing
Hoffman's body with that of a model wearing a modern designer
dress much different from that worn by Hoffman in the original
photo.
Hoffman
contended that defendant used his name and likeness for
purposes of selling the fashions in the altered photograph.
The magazine did identify the designer of the superimposed
fashions, and even listed available locations and prices
for the clothes in a "Shopper's Guide" at the back of the
magazine. Thus, Hoffman claimed, and the District Court
agreed, that this constituted an impermissible use of his
name and likeness for commercial purposes.
The
Court of Appeals reversed and, finding the alleged commercial
use "inextricably intertwined with expressive elements,"
held that the challenged use was entitled to full First
Amendment protection. 2001 U.S. App. LEXIS at *10-11. As
such, the use was not susceptible as a matter of law to
a claim for misappropriation of Hoffman's right of publicity
absent falsity and actual malice as required by New York
Times Co. v. Sullivan, 376 U.S. 254 (1964). Id. The
Court of Appeals concluded that the totality of the presentation
did not provide the requisite clear and convincing evidence
of actual malice on the part of defendants. Id. at *18-19.
Thus, the Court reversed the judgment in favor of Hoffman
and directed entry of judgment for defendants. Id. at *19.
According
to the court in Wendt, a jury could find that the otherwise
protected material at issue there was being used solely
to promote defendants' bars. The court found the use in
Hoffman, on the other hand, to have been partly for commercial
and partly for editorial purposes, and thus fully protected
by the First Amendment. A lawyer advising his or her client
on such issues would obviously attempt to steer the use
more towards the Hoffman scenario and away from Wendt. However,
given the universe of different uses that human creativity
can devise, where a particular use falls can prove to assess.
d)
Works of art
The
California Supreme Court did not make the line any easier
to draw as a result of its decision in Comedy III Productions,
Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387 (2001).
In that case, the owners of the statutory rights of publicity
in the deceased "Three Stooges" comedy team claimed that
defendant violated those rights by making and marketing
drawings of the Stooges in lithographs and on commercial
products such as t-shirts.
Plaintiff
prevailed on its claim in the Superior Court and Court of
Appeal. The intermediate court had held that the First Amendment
did not protect defendant's creative works because they
were sold in multiple reproductions rather than original
works of art. (The right of publicity statute as it applies
to the use of images of deceased personalities expressly
exempts from liability in this context only "single and
original works of art.")
The
Supreme Court disagreed. Rather, it held defendant's expressive
works entitled to full First Amendment protection. 25 Cal.
4th at 397-99. However, it did not apply the New York Times
test of falsity and actual malice to defendant's publication
of the works. Rather, it announced an entirely new test
to "balance" the right to protect and exploit an individual's
name and likeness with the freedom of speech concerns of
the First Amendment.
The
new test asks "whether a product containing a celebrity's
likeness is so transformed that it has become primarily
the defendant's own expression rather than the celebrity's
likeness." Id. at 406. By "expression," the Court means
"expression of something other than the likeness of the
celebrity." Id.
The
Court observed 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."
Id. at 405. As such, the Court suggested a "subsidiary inquiry,
particularly in close cases: does the marketability and
economic value of the challenged work derive primarily from
the fame of the celebrity depicted?" If not, no actionable
right of publicity generally would lie. If the answer is
otherwise, though, the work still may be sufficiently transformative
to warrant First Amendment protection. Id. at 407.
Saderup
lost because he too accurately depicted his subjects with
his charcoal drawings. The Court found his "undeniable skill
. . . manifestly subordinated to the overall goal of creating
literal . . . depictions of the Three Stooges so as to exploit
their fame." Id. at 409. Protecting Saderup's works by the
First Amendment would obliterate the right of publicity
other than in cases of falsified celebrity endorsements,
the Court felt. Id.
The
Supreme Court's new test requires both subjective judgment
and economic opinion. Where along the spectrum from a literal
portrait to a Warhol is a work "transformative" enough?
And when does the value contributed to the work by the celebrity
image overcome the value of the expression contributed by
the artist? To the extent such questions will present difficulties
for the courts, they will more strongly vex those who must
assess the likelihood of liability in deciding upon any
name or likeness use for many different types of works.
IV.
CONCLUSION - USING NAME & LIKENESS
Because
the law as it has developed has provided few clear guidelines,
those advising on name and likeness uses can most effectively
prevent risk by drawing conservative, bright lines. One
generally may use a name or likeness freely in an audiovisual
work without implicating the right of publicity, but should
take care not to commit another privacy or reputational
tort. At the other end of the scale, one probably ought
to obtain permission for name or likeness use in advertising
or otherwise in connection with the sale of a good or service,
even if the name or likeness comes from copyrighted expression
such as a film clip.
Any
use on or in a commercial product likewise ought to send
up a caution flag. Further, any artistic depiction should
depart as much as possible from a literal likeness of the
subject. Finally, avoid look-alikes, sound-alikes, robots
and stooges.
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