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MCLE Self Study

By Megan Kinneyn | Feb. 2, 2007

Law Office Management

Feb. 2, 2007

MCLE Self Study

The right of publicity, which protects individuals from commercial misuse of their identities, is increasingly being pitted against the public politices behind the Copyright Act and the First Amendment—and losing out. By David Steinberg and Paul Guelpa

By David Steinberg and Paul Guelpa
      Edited by Barbara Kate Repa
      Civil Practice
      Protecting the Right of Publicity
      Today it is possible to state with clarity that the right of publicity is simply this, it is the inherent right of every human being to control the commercial use of his or her identity." (J. Thomas McCarthy, The Rights of Publicity and Privacy § 1:3 at 3 (2 ed. 2006).) This is true whether you are an actor, singer, celebrity, lawyer, or schoolteacher. Your "right of publicity" can be valuable. It also can be misappropriated. Fortunately, there are remedies for the misuse of your identity or persona.
      Many states recognize the right of publicity, either by statute or common law. California recognizes the right, for all living individuals and for deceased "personalities," in California Civil Code sections 3344 and 3344.1.
      At common law, the elements of a right-of-publicity claim are the defendant's use of the plaintiff's identity, appropriation of the plaintiff's name or likeness to the defendant's advantage, lack of consent, and injury. (Gionfriddo v. Major League Baseball, 94 Cal. App. 4th 400 at 409 (2001).)
      But there are limitations on the rights of publicity. Quite often, individual publicity rights are pitted against the public policies behind the Copyright Act and the First Amendment. As media technology advances and the opportunities for commercial exploitation increase, courts must draw and redraw the lines between these competing interests.
      Two recent decisions typify the legal struggle. In Laws v. Sony Music Entertainment, Inc. (448 F.3d 1134 (9th Cir. 2006)), the Ninth Circuit dismissed a right-of-publicity claim arising from the purported unauthorized vocal sample of a sound recording. The Laws case, discussed later, is one of the few decisions in which the Copyright Act was held to preempt a right-of-publicity claim. In C.B.C. Distribution and Marketing, Inc. v. Major League Baseball Advanced Media L.P. (443 F. Supp. 2d 1077 (E.D. Mo. 2006)), also discussed in detail later, a district court in Missouri ruled that the operator of an online baseball fantasy league need not get permission to use players' names and statistics. The case demonstrated the lengths to which courts will go to find a First Amendment defense to right-of-publicity claims.
      The Right of Publicity v. The Copyright Act
      Both copyright and the right of publicity serve to protect an individual's investment in his or her artistic labors. (Laws, 448 F.3d at 1145.) And the U.S. Constitution gives Congress the power "to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." (U.S. Const. art. I § 8, cl. 8.) Pursuant to this authority, in 1976 Congress initially enacted the Copyright Act. (17 U.S.C. §§ 101?1332.) This federal statute gives a copyright owner the exclusive rights "to do and to authorize" others to display, perform, reproduce, or distribute copies of particular work?and to prepare derivative works.
      Courts have been forced to balance the exclusive rights of copyright owners with the rights of people depicted in copyrighted works. As the Laws court noted, "On the one hand, we recognize that the holder of a copyright does not have 'a license to trample on other people's rights.' On the other hand, however, the right of publicity is not a license to limit the copyright holder's rights merely because one disagrees with decisions to license the copyright." (Laws, 448 F.3d at 1145.)
      Another type of legal tangle can occur when a person objects to the use of his or her image or likeness in a licensed copyrighted work owned by someone else. For the Copyright Act to preempt an individual's right of publicity, two conditions must be met. First, the subject of the claim must be a work fixed in a tangible medium of expression and be subject to copyright protection as described in the Copyright Act. (17 U.S.C. §§ 102 and 103.) Second, the right asserted under state law must be equivalent to the exclusive rights contained in section 106 of the Act. (Fleet v. CBS, Inc., 50 Cal. App. 4th 1911 at 1919 (1996).)
      In the majority of cases, courts have not found federal preemption of right-of-publicity claims. The result often turns on the type of copyrighted work at issue and how the person's identity is used.
      Motion pictures. In Fleet v. CBS, Inc., two actors sought to stop the release of a movie because they had not been paid for their performances. They sought relief under California Civil Code section 3344 for misappropriation of their names, likenesses, and images, conceding that they had relinquished any copyright in their performances. The court found that their claims were preempted, holding that once the performances were put on film, they became "dramatic work fixed in a tangible medium of expression"?and subject to copyright law protection. (50 Cal. App. 4th at 1921.)
      The court also concluded that the plaintiffs' claims were "equivalent" to the exclusive rights contained in the Copyright Act. It distinguished between the plaintiffs' performances in the film?which constituted a "dramatic work" or "work of authorship"?and the situation in which a celebrity has merely had his or her picture taken. It concluded that, "an actor who wishes to protect the use of the image contained in a single, fixed dramatic performance need simply retain the copyright." (50 Cal. App. 4th at 192021.)
      Pictures and photographs. Courts have been more reluctant to find preemption of the right of publicity for the commercial use of a picture or photograph. In Downing v. Abercrombie & Fitch (265 F.3d 994 (9th Cir. 2001)) surfers sued clothing retailer Abercrombie, which had used a 30-year-old photograph of them without their permission in a surfing-themed clothing catalog. Abercrombie had purchased the photo it ran from the photographer and identified the plaintiffs by name. The court found the plaintiffs' right-of-publicity claims were not preempted. It found that, because the subject matter of the "statutory and common law right of publicity claims is their names and likenesses, which are not copyrightable, the claims are not equivalent to the exclusive rights contained in section 106." (265 F.3d at 1005.)
      Similarly, in Toney v. L'Oreal USA, Inc. (406 F.3d 905 (7th Cir. 2005)), the court rejected a preemption defense when a model, June Toney, claimed that the use of her image in a print advertisement violated her right of publicity under Illinois law. Toney did not assert any ownership interest in the copyright of the photograph. The Seventh Circuit concluded that Toney's identity was not fixed in a tangible medium of expression and there was no "work of authorship" at issue. It concluded that "the fact that the photograph itself could be copyrighted, and that defendants owned the copyright to the photograph that was used, is irrelevant" to the right-of-publicity claim. (406 F.3d at 910.)
      Soundalikes. Two of the most famous and successful right-of-publicity claims involve celebrity "soundalikes." In Midler v. Ford Motor Co. (849 F.2d 460 (9th Cir. 1988)) and Waits v. Frito-Lay, Inc. (978 F.2d 1093 (9th Cir. 1992)), the defendants hired singers to imitate the distinctive vocal styles of Bette Midler and Tom Waits.
      In Midler, the Ninth Circuit held that California's right-of-publicity law was broad enough to cover a singer's distinctive vocal style, and it found in Midler's favor even though the defendants had obtained licenses from the musical composition's owner.
      The result in the Waits case was identical, even though the singer, who had written the song used in the Frito-Lay commercial, had assigned his copyright to a publisher, and the publisher had given a license to use the composition.
      Voice. Differing legal questions may arise when a person's actual vocal performance is used by the copyright owner of the sound recording, as opposed to a soundalike. Does the use of the person's voice violate his or her right of publicity? Is it a copyrighted performance, as in Fleet, and therefore preempted? Or is it an unauthorized appropriation of a "persona," as in Downing and Toney? The issue was not addressed until 2006, when the Ninth Circuit decided the Laws case.
      In 1980, singer Debra Laws made a recording of a song called "Very Special," which was released by Elektra/ Asylum Records. Twenty-two years later, Elektra licensed the sampling of Laws's recording of "Very Special" in a new recording by Jennifer Lopez called "All I Have." Claiming that her recording contract precluded such licensing without her prior consent, Laws sued for misappropriation of her voice under California law. The plaintiff analogized her claims to those in Downing/Toney and Midler/Waits. The defendant relied on Fleet. The district court granted summary judgment, holding that the claim was preempted by the Copyright Act because it was based entirely on the use of a sound recording within the scope of federal copyright law.
      The Ninth Circuit affirmed, finding that, similar to the plaintiffs in Fleet, Laws's claim "challenges control of the artistic work itself and could hardly be more closely related to the subject matter of the Copyright Act." (448 F.3d at 1142.) The court also determined that the rights Laws asserted were equivalent to those protected under the Copyright Act and held that the commercial use in section 3344 is not enough to qualitatively distinguish the right-of-publicity claim from a claim in copyright. (448 F.3d at 1144.)
      The Right of Publicity v. The First Amendment
      Another significant limitation on the right of publicity is the First Amendment's protection of freedom of speech, which includes artistic speech such as novels, musical recordings, and comic books. Under the current law, it is extremely difficult for a plaintiff making a right-of-publicity claim to prevail over a First Amendment defense.
      The seminal case pitting the right of publicity against the First Amendment is Zacchini v. Scripps-Howard Broadcasting Co. (433 U.S. 562 (1977)). In that case, the defendant, a television broadcasting station operator, aired footage of the entirety of the plaintiff's human cannonball act at a county fair. The plaintiff brought a right-of-publicity suit, and the defendant asserted the First Amendment's freedom of the press. The U.S. Supreme Court held that the First Amendment did not protect the defendant because "broadcast of a film of petitioner's entire act poses a substantial threat to the economic value of that performance." (433 U.S. at 575.)
      Subsequent cases, however, have typically exalted the First Amendment over state law rights of publicity. The California Supreme Court has held that the First Amendment will trump the right of publicity as long as the defendant's use of the plaintiff's name, voice, or likeness involves "significant transformative elements" such that the defendant is not merely trading on the value of them. (Comedy III Productions, Inc. v. Saderup Inc., 25 Cal. 4th 387 (2001), 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 as characters in a comic book series were protected by the First Amendment against the plaintiffs' right of publicity claim.)
      In Hoffman v. Capital Cities/ABC, Inc. (255 F.3d 1180 (9th Cir. 2001)), actor Dustin Hoffman sued a magazine publisher for using a photograph of his character in the film Tootsie in an article featuring computerized alterations of film stills to make it appear that the actors were wearing current fashions. The Ninth Circuit used a traditional First Amendment analysis to reverse the district court's judgment for Hoffman. The Ninth Circuit did not rely on the recent Comedy III decision, but it noted that, if it were to apply it, there would be "no question" that the photograph at issue contained "significant transformative elements." (255 F.3d 1184, n.2.)
      More recently, in C.B.C. Distribution and Marketing, Inc. v. Major League Baseball Advanced Media, L.P., a Missouri district court affirmed the right of an operator of a fantasy baseball league to use, without obtaining permission, players' names and statistics in connection with its operations. The plaintiff, CBC, had offered a variety of licensed fantasy sports products via telephone, mail, email, and its website for several years. In 2005, however, Major League Baseball Advanced Media, operating under a license from the Major League Baseball Players' Association, decided to promote its own fantasy games. Advanced Media refused to grant CBC a license to use the baseball players' names and statistics.
      Denied a license, CBC filed a declaratory judgment action seeking to stop Advanced Media from interfering with CBC's business. In response, Advanced Media and the Players' Association claimed that CBC's unlicensed commercial exploitation of the player names and playing records in its fantasy baseball games violated the players' right of publicity.
      First, the court rejected this claim, determining that CBC's unlicensed fantasy baseball games did not violate the players' rights of publicity. It reasoned that the use of the players' names and playing records did not appropriate any symbol of their identities, was not intended to obtain a commercial advantage, and did not contravene the policy behind the right of publicity. The court distinguished CBC from cases such as Toney, in which there was an appropriation of likeness to create an impression that players endorse CBC's fantasy games. (See Abdul-Jabbar v. Gen. Motors Corp., 85 F.3d 407 (9th Cir. 1996), holding that a basketball star's former name used in conjunction with his likeness could be construed as an endorsement of a product.)
      Second, the court held that even if CBC's unlicensed fantasy games did violate the players' right of publicity, that right "must give way to CBC's First Amendment right to freedom of expression." The court found it persuasive that the players' records were easily available to the public at large by watching games and that they are disseminated to the public in newspapers and by statistics providers. (443 F. Supp. 2d at 1095.)
      Although this case undoubtedly will be reviewed on appeal, it demonstrates that maintaining a right-of-publicity claim in the face of a First Amendment defense, even in a quasi-commercial context, is very difficult.
      David Steinberg ( is a partner at Mitchell, Silberberg & Knupp in Los Angeles and Paul Guelpa ( is an associate with the firm. Both concentrate on litigating intellectual property and entertainment industry issues.
      The Daily Journal Corp., publisher of California Lawyer, has been approved by the State Bar of California as a continuing legal education provider. This self-study activity qualifies for Minimum Continuing Legal Education credit in the amount of one hour of general credit.

Megan Kinneyn

Daily Journal Staff Writer

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