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Case Name: Roberson / Rochester Folding Box Company Keywords: Use of a Portrait for commercial products Court: New York Court of Appeals Country: USA Citation: 171 NY 538 Date: 1902 Case No.: - Importance: Portrait rights in New York were not protected by common law. Facts: The defendant had used the protrait of the female claimant to decorate the flour bags that they produced. The claimant objected and asked for compensation at common law. The New York Court of Appeals was split 4:3. There was clear influence of the Warren / Brandeis Article in 4 Harvard Law Review 193 (1890) in the judgment. The Court nonetheless decided that misappropriation of personality was not protected by the common law, although they clearly saw a deserving claimant. A general rule of privacy as proposed by Warren and Brandeis was seen as too great a development for the New York court. Such a rule was considered too broad to be enforced. The court therefore suggested that legislature should enact a statute to tackle specific cases. As a result the New York Civil law was amended in 1903. Section 50, 51 has since that time protected the use of a portrait for commercial advertising and for trade. Case Name: Pavesich v New England Life Insurance Co Keywords: Privacy, Likeness in an advertising, freedom of speech, deceased person Country: U.S.A., State of Georgia Citation: 50 SE 68 (1905) Court: Supreme Court of Georgia Date: 03.03.1905 Case N°: - Importance: Recognition of an absolute right of privacy derived from natural law Facts: The plaintiff was an artist who found a picture of him used in an advertisement. The ad compared two photographs, one of him smiling because, according to the advertisement, he had bought a life insurance, and one picturing someone miserable because he had not. The plaintiff was not named in the ad, and more importantly had never bought insurance to this company, or consented to the use of such photograph. He sued for defamation and violation of the right of privacy. Decision and Reasoning: Cobb J delivered the unanimous judgement, considering the privacy point first: I. Recognition of a right of privacy
Cobb J reminded that no right of privacy as such had been recognised. That does not necessarily mean that it should not be protected. “Although there be no precedent, the common law will judge according to the law of nature and the public good”. Individuals have surrendered some of their rights which they would otherwise exercise freely in a state of nature to society in exchange for the benefits a member of the society receives. But that does not include all of their rights. The question was therefore where to place the right of privacy. The test applied was the answer of “any person whose intellect is in a normal condition”. For the court, such person would immediately recognise that such right has not been surrendered. Some matters are public, others are private and each individual must be able to withdraw private matters from the public. Therefore a right of privacy “in matters purely private” is derived from natural law. Furthermore, the right of personal security and the right of personal liberty can be interpreted as recognising a right of privacy. The former includes the enjoyment of someone’s own body, health and reputation, the latter includes the power of changing situation given anyone’s own inclination. The term liberty must be used in its broader sense, and does not only embrace physical restraint.. An individual has a right to enjoy life in any way he thinks pleasant to him, according to his temperament. Therefore, “each is entitled to a liberty of choice as to his manner of life, and neither an individual nor the public has a right to arbitrarily take away from him his liberty”. (p. 70) The right to exhibit himself to the public gaze is thus embraced within the right of personal liberty An illustration is given: the idea of privacy has been the foundation of many other rights. The protection against nuisance is usually based on a right to property but there is no injury to the property, it is actually based on privacy as Roman law already recognised it, “to enter a man’s house against his will was regarded as an invasion of his privacy”. Similarly, the right of the people to be secure in their persons, papers, houses…against unreasonable searches was an implied recognition of a right of privacy.
The fact that no right of privacy as such had been previously recognised did not mean that it was not time now to do so. Cobb J stated that the courts have to be cautious but it was its role, referring to §4929 of the Civil Code “For every right there shall be a remedy, every court having jurisdiction of the one may, if necessary, frame the other”. But the judge gives the warning that because the right of privacy has some limits and counterweights, the safeguard of its boundaries “is the wisdom and integrity of the judiciary”. So long as the judges and the juries are fair and impartial, the balance between the diverse rights will be maintained and therefore there need to be no more fear that the right of privacy will lead to unjustifiable litigation or wrong than that the existence of many other rights in the law would bring about such results.
Cobb J reminded that the Roberson case denied the injunction because there was no previous case recognising a right of privacy, no case involving this right in any sense, that the existence of such recognised right would bring about a vast amount of litigation and that the demarcation line between this right of privacy and the well-established rights of the others and the public would be too difficult to determine. He disagreed to this majority view, because even if the right of privacy as such was not mentioned in earlier cases, it was an underlying principle. Those cases did not consider the existence of such a right but rested on arguments derived from law of property, trust or contract. But because of this conservatism of the judiciary, judges must not conclude that the right claimed did not exist, “this conservatism should not go to the extent of refusing to recognize a right which the instincts of nature prove to exist”. II. The attributes of this new right
* There will be some situations where a person who seeks a life of seclusion will have to exhibit his person in a public place when the law demands it, for example to serve a public duty, like juror or witness in a trial… * The right of privacy may be waived by the person, or someone authorized by this person.(p. 72) The waiver can be express or implied but will always be limited to the extent which is necessary and proper in dealing with the matter. If the artist had displayed his works in public, then he would subject his works and character as an artist to scrutiny and criticism. But the mere fact that he is an artist does not establish a waiver of his right. * But the main limit to the newly recognised right is that its enjoyment must not invade the rights of the others, i.e. it is first subject to such restraints as necessary for the common welfare. The liberty ends and the right of others begins. That is precisely the problem when someone is properly interested in the matters which is claimed to be pf purely private nature. Cobb J recognized that there, liberty of the speech and of the press will counterbalance privacy: to use the right to speak, write and print properly, someone will sometimes have to refer to the life, conduct or character of a person. Both interests are then coexistent.
Freedom of speech and of the press can diminish the right of privacy as it cannot be said that an invasion has taken place when the truth is used for the integrity of a statement and with reasonable reference. The correlative effect of such interaction is that slander is an abuse of the liberty of the press ad libel an abuse of the right to write and print. Truth will be a complete defence against for statements of a public nature as well as private, so long as the public has a legitimate interest in it. Therefore, liberty of speech has been a useful instrument to keep the individual within the limits of lawful and decent conduct, the right of privacy may be well used within its proper limits to keep those who speak and write within the legitimate bounds of the guarantees of this right.
It is worth noting that by recognising the right of privacy with the right of personal liberty, Cobb J opens the door to the right of personality. The right declared is the right to withdraw from the public gaze as such times as the person may sees fit. (p. 70) Publicity and privacy are both guaranteed at the same time as correlative rights. Result: Although cases may sometimes be difficult to decide because of the interactions between privacy and well-established other rights, the judges here had no difficulty in concluding that privacy had been invaded and that the invasion is not authorised by any consent or defence related to freedom of speech. Case Name: Edison v Edison Polyform Mfg Co. Key Words: Right of privacy, celebrities' economic right Country: U.S.A. Citation: 67 A 392 (1907) Court: Court of Chancery, New Jersey Case N°: - Importance: Early case of right of privacy, celebrities have an economic right. Facts: The celebrated inventor Thomas Edison invented a medicinal preparation, Polyform, and sold it to the defendants company. They then changed the name of the company to Edison Polyform and wanted to use Edison’s name and picture in their advertisements for this product. Decision and reasoning: Edison brought an action to restrain the use of his name for the company, and the use of his name and picture for the advertisement. He claimed that the assignment only concerned the preparation and selling of the medicine, not his name or picture for advertisement.
The arguments based on law of unfair trade were rejected by the court because the defendants’ action did not amount to passing off. They did not try to pretend that their goods were T. Edison’s manufacture. Edison was merely connected with the enterprise and simply supervised that the preparation was made according to his formula.
The Court held that Edison’s right of privacy had been invaded by this unauthorized use of his name and likeness. However, it was more because of the peculiar fact that the plaintiff was a celebrity. For this reason, the right of privacy represented here a means of remedying injuries to essentially economic interests as well as injuries to pure dignitary aspects, in preventing the unauthorised commercial exploitation of a famous person’s attributes. It is also to be noted that this kind of interest was considered by the court of a proprietary nature. Stevens VC clearly affirmed that “if a man’s name be his own property (…) it is difficult to understand why the peculiar cast of one’s features is not also one’s property, and why its pecuniary value, if it has one, does not belong to its owner, rather than to the person seeking to make unauthorized use of it”. Case Name: Haelan Laboratories, Inc. v Topps Chewing Gum, Inc. Key words: Assignment of personality rights, advertising, right of publicity Country: U.S.A. Citation: 202 F 2nd 866 Court : United States Court of Appeal, Second circuit Date : 16.02.1953 Case N° : 158 Docket 22564 Importance : Birth of U.S. separate right of publicity Facts: The plaintiff, a distributor of chewing gum had signed a contract with base-ball players for an exclusive right to use their picture on advertising for the chewing gum. The defendant, a competitor, aware of the exclusive right in the contract, nonetheless induced the players to authorise him to use their image for the advertising of the defendant’s chewing gum. The plaintiff argues that the defendant invaded plaintiff’s exclusive right to use the photograph of the base-ball players. He was dismissed in the first trial. Decision and Reasoning: 1. Privacy: personal or assignable? * A personal right The defendant argued that even if such facts were proved, they would not lead to an actionable wrong. The plaintiff’s contract only meant that the base-ball players released the plaintiff of the liability he would have incurred for invasion of privacy but for the player’s consent. The right of privacy, in this case protected by sections 50 and 51 of the New York statute, was merely personal and non-assignable. For this reason, the plaintiff did not have any ‘property’ right or other interest which could prevent the defendant from acting. Frank J agreed on that point. The contract created no more than the permission of using the players’ photograph. If there were no more in the contract, the plaintiff would have no actionable claim. * The defendant’s agents However, the contract also included the player’s promise not to give similar releases to others; if the defendant deliberately induced the players to enter into such contracts whereas he knew about the exclusivity clause, then he behaved tortiously. The problem in this case was above all that the defendants obtained the players consent via different means. For some, it was through its agent, Players Enterprise, for others that was through independent people. The defendant was therefore only liable for the acts of its agent, but not for those of the others. 2. A new distinct right of publicity * A right independent from privacy Surely, the court was unhappy with that situation. It therefore went back to the assumption that the contract created no more than a mere release of liability, i.e. a personal and non-assignable right not to have his feelings hurt by the publication. Frank J explained that in addition to, and independent of that right of privacy, a man had a right in the publicity value of his photograph, “the right to grant the exclusive privilege of publishing his picture”. This right has an independent existence and is valid without an accompanying transfer of a business or anything else. This right was called right of publicity. * The attributes of the right of publicity It seems at this stage however that the right only exists for celebrity figures. According to the court, only prominent persons, far from having their feelings bruised through public exposure, would feel deprived if they no longer received money for authorising advertisements, newspapers… This right would have no substance unless it could be made the subject of an exclusive grant which barred any other from using this picture. Is it a property right? The court stated that the “tag ‘property’ only symbolizes the fact that courts enforce a claim which has a pecuniary worth”. The label of property is therefore immaterial. Result Because of the “capacity publicity”, the plaintiff has a valid claim against defendant if defendant used the players’ photograph during the term of plaintiff’s grant and with knowledge of it. Case Name: Time, Inc. v. Hill Key Words: Libel; Press articles and “fictonalization” of facts; due standard of journalistic research Court: Supreme Court of the United States Country: US Citation: 385 U.S. 374 Date: Jan. 9, 1967 Case No.: No. 22 Importance: Individual States in the US can make laws in order to protect individuals against incorrect press reports. They can also make laws that grant damages as compensation for unauthorized use of the name and portrait of an individual in a fictional, as opposed to newsworthy, context. The standard of journalistic research, however, may not be exaggerated: Only incorrect publications that are knowingly false or are made in reckless disregard of the truth can be made subject to compensation under the 1st Amendment. Facts: Hill and his family were held hostage in Pennsylvania by a gang of convicts. They were released without further harm being done to them. An author, Hayes, was inspired by this story and by other facts to write a novel “The Desperate Hours”. In this fictional story severe harm was done to the victims. A theatre director, Montgomery, transformed the book into a play. Life, a Time Inc. publication, reported on the play. They referred to the play as a re-enactment of the Hill incident and filmed pictures to be included in the play that were staged at the former house of the Hill family. Hill never wanted any publicity and claimed that this incorrect connection between the play and the incident gave him a cause of action under a 1903 New York Statute. In that Statute §51 provides that damages can be awarded to claimants whose portrait has been used without authorisation for purposes of advertising and trade unless accompanied by newsworthy reporting. Decision and Reasoning: The case illustrates the tension between the freedom of the Press under the 1st Amendment and the laws of privacy as they have emerged since the Warren / Brandeis article in 4 Harvard Law Review 193 (1890). The New York statute came about as a result of the Warren Brandeis Article and of the 1902 *Roberson v Rochester Folding Box Co 172 NY 538, 64 N. E. 442 case, where a company had used the picture of another person to decorate their flour bags. Since that time the name and portrait of a person enjoy special protection. There are, however, exceptions such as for press reporting. Fictitious reports or articles may lead to damages as may the use of portrait or name for advertising. According to Justice Brennan, the New York Statute is constitutional. He excluded untrue facts from the scope of the Constitution. However, to his mind the interpretation of the Statute by the New York courts went beyond the constitutional limits. The majority of the court in the instant case considered that minor faults and inaccuracies in press reports also have to be accepted in order to guarantee freedom of the press. Therefore only statements that are “false or in reckless disregard of the truth” can result in an award of damages. The press thus enjoys a wide protection which in turn helps to ensure that it will not need to take self restraining measures. The approach of the majority seeks a middle path between a position that favours the freedom of the press at the expense of individual rights, and one that favours individual rights over press freedom. Case Name: Motschenbacher v. R.J. Reynolds Tobacco Company Key words: Misappropriation doctrine, privacy, likeness in commercials, race car driver. Country: U.S.A. Citation: 498 F.2d 821 Court: United States Court of Appeals (for the Ninth Circuit). Judges: Koelsch, Hufstedler and Trask, Circuit Judges Date: 06.06.1974 Case N°: 72-1419 Importance: The misappropriation doctrine can suffice for economic aspects of invasion of privacy. Facts: Plaintiff Motschenbacher is a professional driver of racing cars, internationally known and recognised in racing circles and by racing fans, especially because he consistently "individualised" his cars to set them apart from those of other drivers and to make them more readily identifiable as his own. Since 1966, each of his red cars has displayed a distinctive narrow white pinstripe appearing on no other car. Moreover, the white background for his racing number 11 has always been oval, in contrast to the others’ circular backgrounds. In 1970, the defendants, R. J. Reynolds Tobacco Company and William Esty Company, produced a commercial which utilised a photograph depicting several racing cars on a racetrack. Plaintiff's car appeared in the foreground. However, the driver’s facial features were not visible and the photograph showed some changes: all the numbers on the racing cars depicted were transformed, the plaintiff's number 11 into 71; they “attached” a wing-like device known as a “spoiler” to the plaintiff's car; they added their product name “Winston” to that spoiler and removed advertisements for other products from the spoilers of other cars. However, they made no other changes, and the white pinstriping, the oval medallion, and the red colour of plaintiff's car were retained. A comic-strip “balloon” appearing to emanate from the plaintiff, read: “Did you know that Winston tastes good, like a cigarette should?”. The commercial was subsequently broadcast nationally on network television and in colour. Decision and Reasoning:
The district court found for the defendant on the basis that “. . . the driver of car No. 71 in the commercial (which was plaintiff's car No. 11 prior to said change of number and design) is anonymous; that is, (a) the person who is driving said car is unrecognizable and unidentified, and (b) a reasonable inference could not be drawn that he is, or could reasonably be understood to be plaintiff, Lothar Motschenbacher, or any other driver or person”. Therefore, there had been no invasion of privacy.
Koelsch C.J. first recalled that invasion of privacy was an actionable tort under California law which governed the case. The right of privacy, according to Prosser consisted of four categories: (1) intrusion upon the plaintiff's seclusion or solitude; (2) public disclosure of private facts; (3) placing the plaintiff in a false light in the public eye; and (4) appropriation, for defendant's advantage, of plaintiff's name or likeness. He then concluded that the present case was an illustration of commercial appropriation, the last category.
The case law from California courts seemed to show that the action in invasion of privacy did not only rest on injuries to reputation, but also on a direct wrong of a personal character resulting in injury to the feelings, without regard to any effect which the publication may have on the property, business, pecuniary interest, or the standing of the individual in the community. However, Koelsch C.J considered that this opinion better suited the first three categories of privacy, and not really the fourth one. Even if it was true that feelings were hurt when someone’s attributes had been appropriated, the situation had nonetheless to be examined from another angle as soon as the plaintiff was a celebrity, and the personality some commercial value. There, the injury is far less of a subjective aspect than of a pecuniary value. Therefore, the Court was concerned with the question of whether this case was still an invasion of privacy. * The Uhlaender v. Henricksen decision : In this 1970 case, the defendant used a base-ball player’s name and information about his sportive achievements in its table games. The court, which held for plaintiff, decided that it was not a case about invasion of privacy but rather a misappropriation of the commercial value of the plaintiff’s name, given the economic loss suffered rather than any other injury to feelings. Under those circumstances, the claim was seen as of a proprietary nature. * The misappropriation doctrine is enough: Mosk J. referred to the Uhlaender case and eventually seemed to confirm this theory by recalling that the present case was about legal protection to someone’s “proprietary interest”. Moreover, he did not specify whether it was about invasion of right of privacy or publicity. The reason for this silence is that such distinction was not really needed. “We need not decide whether they would do so under the rubric of “privacy,” “property,” or “publicity”; we only determine that they would recognise such an interest and protect it.”
The district court held that the plaintiff was not identifiable in the commercial, therefore, the plaintiff's identity could not have been misappropriated nor his interest violated. However, even if he agreed that the plaintiff was not in itself recognisable, one had to take into account the distinctive decorations of the car and the message they would convey: “these markings were not only peculiar to the plaintiff's cars but they caused some persons to think the car in question was plaintiff's and to infer that the person driving the car was the plaintiff.” This unauthorised appropriation was here sufficient to identify the plaintiff, which was a condition for misappropriation. Case Name: Price v Hal Roach Studios, Inc. Key Words: Descendibility, assignment of right of publicity, proprietary right Country: U.S.A. Citation: 400 F. Supp. 836 (SDNY 1975) Court: Federal District Court Case N°: - Importance: Confirmation of the assignable property of the publicity right. Facts: Stan Laurel’s widow and Oliver Hardy’s widow were the sole beneficiaries of the actors’ estates and their licensees. They brought an action against Hal Roach Studios, which were the holders of the copyrights of many of the actors’ films and licensee, asking the court to establish whether one of the parties was entitled to control the specific value of both famous characters. It was not contested that the two characters represented a value of their own, independent from any specific movie. Decision and reasoning: In a clear-cut judgement, Stewart Jr J. decided for the widows. 1. Haelan Laboratories approved The case Haelan laboratories was followed. The judge first recalled that a distinction between privacy and publicity might cause some confusion and uncertainty. However, he concluded that such problems like confusion had to be set aside because the privacy-publicity dichotomy was now clearly establish. 2. The scope of the right of publicity The fact that a separation is clearly drawn between those two torts can then lead the way to discuss the specific properties of each of them and to add some to one or the other. That is exactly the approach that Stewart Jr J. adopted. Although he considered that the differences between the two rights were already known, he used them to justify a new difference as to the specific scope of the right of publicity. He started from the known fact that the right of publicity has an economic aspect which one must always considers, “when determining the scope of the right of publicity …one must take into account the purely commercial nature of the protected right”. Because of this commercial nature, the right can be assigned. The question was therefore whether, if this right is transmissible by contract, it can also be the case upon death. “There appears to be no logical reason to terminate this right upon death of the person protected”. 3. Publicity: a property right? The second conclusion that can be drawn is that the right of publicity is close in its nature to a property right. By concluding that the New York common law right of publicity continued after the death of the individual, it can be considered as an inheritable item of property. Stewart Jr J. adopted that reasoning too: “it is for this reason presumably that this publicity right has been deemed a ‘property right’”. Case Name: Zacchini v Scripps-Howard Broadcasting Co. Key words: Performance broadcasting, economic value of publicity Country: U.S. Citation: 433 U.S. 562 Court: Supreme Court of the United States. Judges: Burger , Brennan , Stewart , White, Marshall, Blackmun, Powell, Rehnquist, Stevens. Date: 28.06.1977 Case N°: 76-577 Importance: U.S. Supreme Court recognises the right of publicity. Facts: The plaintiff was an entertainer who regularly performed a “human cannonball” act, shot from a cannon into a net some 200 feet away in a County fair in Ohio. A free-lance reporter for the defendant attended the fair and wanted to film the act, but the performer asked him not to do so. However, he came the following day, filmed it and showed it entirely at the 11 o’clock news programme, together with some favourable comments. The plaintiff sued for damages for televising the act. Decision and Reasoning: 1. Decisions of the previous courts: Like the judgement in the Court of Appeal, the Supreme Court of Ohio recognised the plaintiff’s right to publicity value of his performance. However, both courts held in favour of the defendant because of the privilege for TV stations to report matters of legitimate public interest. They mainly relied on the reasoning in Time v Hill, adapting the privacy aspects for the publicity context. They thought that using the concept of privilege was more appropriate than merely having recourse to the First Amendment principles. But because the Ohio court rested its decision both on state and federal grounds, the Supreme Court of the United States had jurisdiction for this case. 2. The majority decision White J. delivered the opinion of the Court A. The specific features of this case It must be borne in mind that the facts and claim in this case are very distinctive. White J recalled that the plaintiff was not contending that his appearance or the performance could not be shown to the public or reported by the press as newsworthy items. Here, he complained about the fact that the defendant filmed the entire act and broadcasted it for the public to see and enjoy, which for the plaintiff amounted to “an appropriation of his professional property”. In that case, relying too much on recognized privacy aspects is not recommended because they usually deal with injunction or prevention from disclosing news to the public because it is putting the plaintiff in “a false light”. That does not happen here. However, Time v Hill was the main starting point for the Ohio supreme court to reach a conclusion. White J stated that the Court was at this time much “steeped in the literature of privacy law”. The case in front of the present judges now forced them to distinguish between two different torts. B. Different interests protected The State’s interest in providing a cause of action for each situation is different. First, permitting recovery for putting the plaintiff in a false light is the protection against defamation or damage to someone’s reputation. The only way to protect this interest is by minimizing the publication of the damaging matter. However, when recognising a right of publicity, the State protects “the proprietary interest of the individual in his act in part to encourage such entertainment”. Then, an analogy is possible with the incentive aspects of patents and copyright law. The idea is that of a reward for someone’s endeavours. The crucial question is not connected with his feelings or reputation any more, but is rather who would do the publishing. Then, the plaintiff did not seek to enjoin the broadcast but sought compensation for it. The different interests protected lead to distinguish between privacy aspects and publicity aspects in each case. C. The economic value of publicity By recalling that the plaintiff had no objection to the widespread publication of his act but he wanted to get the commercial benefit of it, White J emphasized the economic value of a right of publicity. This claim is therefore narrower and simply deals with the fact that the defendant showed the entire act, for which the plaintiff is usually paid. The broadcast of the entire act caused a “substantial threat to the economic value of that performance”. Such value arises so long as the plaintiff has the exclusive right to control the publicity given to his activities. When the public can see it for free on television, it will be less willing to pay to see it at the fair. Therefore, one can understand that “the rationale for protecting the right of publicity is the straight-forward one of preventing unjust enrichment by the theft of good will”. In this situation, and unlike cases which involve the use of a name or look-alike, the broadcast of the entire act will have direct consequences against the plaintiff’s ability to earn a living as an entertainer. It amounts there to “the appropriation of the very activity”. D. The First and Fourteenth Amendments Time v Hill involved the reporting of events. But did not include an attempt to publish an entire act for which someone is usually paid. White J reminded that someone’s right of publicity does not in itself prevent others from reporting the newsworthy fact about an activity, because entertainment itself can e important news. However, the First and Fourteenth amendments “do not immunize the media when they broadcast a performer’s entire act without his consent”. None of the parties or the public must be deprived of the benefit of the performance. This balance is achieved when the plaintiff’s commercial stake in his act is appropriately recognized. 3. The dissenting opinions Powell J delivered a dissenting opinion, to which Brennan and Marshall JJ joined. Stevens J delivered his own dissenting opinion, doubting about the basis of the state’s court action. A. Points of disagreement First, Powell J thought that the main point discussed by White J is “a performer’s entire act” and is afraid that such expression would not provide a clear standard. Secondly, he disagreed with the opinion of the court on the values at stake in the First Amendment. The Amendment stops unauthorized commercial broadcasts of events or performances in which the broadcaster keeps the profits. The present case gave no suggestion that such use occurred, but simply reported the cannonball act as a newsworthy event, which is foreseeable activity for a television station. Judging this case otherwise would lead to “a degree of media self-censorship” which would be detrimental to the public. B. A new test is proposed Instead of taking a quantitative approach, by asking if the broadcast is of the entire act, Powell J wants the attention to move to the actions of the news media, i.e. asking what use the station made of the film footage. When the use is simply for reporting newsworthy events, then the First Amendment protects the station. Such protection disappears when the use is in fact a subterfuge or cover for private or commercial exploitation.
Case Name: John Carson and Johnny Carson Apparel, Inc v Here’s Johnny Portable Toilets, Inc. Key words: Right of publicity, phrase associated with a celebrity Country: U.S.A. Citation : Court: United States Court of Appeal Date : 01.02.1983 Case N°: 80-1720 Importance: The right of publicity allows protection of a phrase usually associated with a popular entertainer. Facts: John Carson is the star of “The Tonight Show”, a well-known TV programme broadcast five nights a week. Each night, and from the beginning of his career, he has always been introduced by the phrase “Here’s Johnny”. This phrase is associated with him by a large segment of the public. He licensed his name to Johnny Carson Apparel, a men’s clothing company which also used, with Carson’s consent, the phrase “Here’s Johnny” on labels for clothing. The name “Here’s Johnny” has never been registered as a trade mark. The defendant, engaged in the business of renting and selling portable toilets called its products “Here’s Johnny portable toilets”. The plaintiffs allege unfair competition, trade mark infringement, invasion of right of privacy and right of publicity. They seek damages and injunction against further use of the phrase. Decision and Reasoning:
The unfair competition claim did not succeed because the plaintiffs failed to satisfy the test of likelihood of confusion. It also considered that “Here’s Johnny” was not such a strong mark that its use for other goods should be entirely foreclosed. Finally, the claim for invasion of right of privacy and publicity also failed because the court held that such rights could only extend to name or likeness, but not to an associated phrase. Both plaintiffs appealed.
Bailey Brown, Senior circuit judge upheld the conclusions of the district court as for the claims about unfair competition and trade mark infringement. First, the defendants did not intend to deceive the public by using this name so that the public would think that Carson was connected with this business. There was little evidence that the public was actually confused. Secondly, there was no evidence that the plaintiffs suffered any damage. Therefore, the appellants failed to establish a likelihood of confusion, because “the general concept underlying the likelihood of confusion is that the public believe that the mark’s owner sponsored or otherwise approved the use of the trademark”.
Brown reaffirmed that because right of privacy and right of publicity protected two different interests, they had to be analyzed separately. In the present case, privacy was not violated. The judge affirmed that Carson sued the defendant because he considered the association embarrassing and odious. But these feelings do not amount to what the right of privacy usually protects. Therefore, if that had anything to do with a commercial interest of a celebrity, then one had to turn towards the right of publicity.
The district court had dismissed the claim because there was no use of Carson’s name or likeness. The Court of Appeal here considered that such interpretation of the right of publicity was too narrow. The right of publicity should be construed as the protection of a pecuniary interest in the commercial exploitation of a celebrity’s identity. Therefore, if a celebrity’s identity has been exploited, then her right of publicity has been invaded, whatever form the exploitation took. Brown relied on the case-law, reaffirming that for the question of “identifiability”, what mattered was that the public would think that the person was associated to the product because he could be identified thanks to some visible signs or symbols. For example, a racing car similar to Motschenbacher’s one would induce that the driver is this well known professional race car driver. Similarly, a drawing of a black male sitting in a corner of a boxing ring with accompanying verse identifying the figure as “the Greatest” would induce that it showed the former champion Ali. The defendants agreed that they chose this phrase because of the connection with Johnny Carson and but for such strong association between the celebrity and the phrase, they would probably not have used it. Therefore, they intentionally appropriated Carson’s identity for a commercial purpose.
Cornelia Kennedy, Circuit judge, dissented from the part where the court held that the use of the phrase was a violation of Carson’s right of publicity. She was of the opinion that the common law right of publicity should not be extended beyond someone’s “name likeness, achievements, actual performances or identifying characteristics”. First, she refused to consider the case as a “name” case, because this first name used in the phrase was very common. More importantly, her main concern was that by including some words or phrases merely associated with a celebrity, then the celebrity could easily remove those words from the public domain. She referred to some policy issues to elaborate her argument. * Policies behind the right of publicity: She recalled three policy issues which justify the right of publicity. First the right protects the economic interests of celebrities. But nothing suggests that “Here’s Johnny” is linked to Carson in a closer way than a mere introduction to his personal appearance. Therefore, it cannot be considered as, like the Zacchini case imposed, the product of the celebrity own talents and energy, result of much time and effort. The phrase, which is a very common way of introducing someone, is not said by Carson, but said of him. In that context, it cannot be a part of his identity and therefore “does little to rob Johnny Carson of something which is unique to him”. Secondly, the right of publicity is a financial incentive for individuals to produce intellectual and creative works. Here, no economic reward can be reasonably attributed to Carson for a phrase “neither created by him nor performed by him”. Doing so would simply reward him for the time and effort of others. Thirdly, the right of publicity fulfils a societal and individual interest by preventing unjust enrichment and deceptive trade practices. But she was of the opinion that such practices could be prevented by existing legal devices and did not require an extension of the right of publicity. For example, she approved the recourse to unfair competition and trade mark law. But as it was concluded that there was no likelihood of confusion, then any argument of wrongdoing was eliminated. Besides as for the unjust enrichment argument, allowing the appeal would enable Carson to be enriched by a phrase associated with him but in which he made no personal investment. Therefore, none of those issues justify the extension of this right to words or phrase merely associated to an individual. * Other countervailing interests: An expansion beyond established limits is also a threat to society’s interest in free enterprise and free expression. A too broad right of publicity would remove many items, words or acts from the public domain above what is necessary. The resulting monopoly could compromise commercial and competitive interest because a grant of publicity amounts to “a grant of a monopoly in that case for the life of the celebrity” and without having a personal contribution for the public’s benefit from the plaintiff. Moreover, unlike trade marks or patents system, the protection of phrases or words merely associated with a celebrity shows virtually no notice to the public of what is protected. Therefore, the fear of legal consequences for wrongful appropriation will have a chilling effect on commercial innovation. As for the use of intellectual property in general, because the phrase “Here’s Johnny” is more an idea or a concept of introducing someone rather than an original fixed expression and because the right of publicity does not provide any notice or duration requirement, such phrases should not be entitled protection. Finally the cases relied on by the majority of the court did not convince her, as simply dealing with distinctive characteristics, like Ali likeness or Motschenbacher’s racing car.
The opinion of the court acknowledged her arguments. However, Brown considered that they did not explain why the “identifying characteristics” like the racing car would identify more Motschenbacher than the phrase identified Carson. He then recalled that in the Ali case, the drawing and the words “strongly suggested” and “further implied” the identity of the champion. Therefore, even in the absence of a name, whenever a celebrity’s identity is appropriated for commercial exploitation, it should be protected. Case Name: Jacqueline Kennedy Onassis v Christian Dior- New York Inc and others Key Words: Look-alike, misappropriation, interpretation of § 50 of NY statute Country: US, New York state Citation: Date: 11.01.1984 Case N°: Importance: Use of look-alike of a well-known personality is a violation of privacy Facts: In a promotional campaign, Christian Dior-NY Inc issued a series of pictures featuring a trio known as “the Diors”. They were meant to be seen as rich, decadent, sophisticated and “aggressively chic”. The 16 different pictures showed them in various situations, like the marriage of two, birth of a baby, or their ascent to Heaven and had received widespread circulation. The challenged ad is the wedding one: it pictured the happy trio and their relatives and friends and read “the wedding of the Diors was everything a wedding should be (…) Just a legendary private affairs”. What made it legendary was the presence of some real TV or movies personalities, but above all a secretary bearing a striking resemblance with the plaintiff. It caused her to be identified with the ad to which she had given no consent. She used to make it clear that she did not want her name or picture to be used in connection with the promotion of any commercial product. She sued Christian Dior-NY, the photographer, the look-alike model and the specialised agency who had come up with the model, for a preliminary injunction against the distribution of the ad and for associated relief. Decision and Reasoning: Greenfield J put the matter in the following terms: can someone enjoin the use of someone else’s face? 1. How to interpret the law? §§ 50 and 51 of the Civil Rights Law only refer to the unconsented use of someone’s “name, portrait or picture”. If the violation is established, then an absolute right to injunction may be obtained, regardless of the relative damage to the parties. But neither the plaintiff’s name nor her own picture appeared in the advertisement. The crucial point is therefore how to interpret the words “portrait or picture”. Referring to case-law, the judge chose a broad interpretation: it was intended to protect the essence of a person and his/her identity against misappropriation from others for commercial purposes. The words “portrait or picture” gave a wider scope and included any representation, even the picture of another, insofar as this picture did -or was intended to- convey the idea that it was the plaintiff. Because a person may be known by many ways and characteristics, a narrow interpretation of the statute would enable to evade from it quite easily. The fact that there are some points of difference as well as points of resemblance does not matter, so long as the overall impression allows instant recognition. 2. Collateral conclusions Incidentally, the judge demonstrated that first, there was no need to have both name and picture appearing on the advertising. Secondly, the statute could not be too much extended and did not include voice or sound arrangements. 3. Can a person be prevented from using her own face? The model had claimed that she could not be prevented from using her own face. However, referring to the fact that the use of one’s own name could be restrained, the judge held that if such use was made in a way as to be deceptive or to promote confusion, then that use can be prevented. In the present case, it was not the presence of the model, but her resemblance with the plaintiff that made the event “legendary”. Moreover, the fact that real-life figures took part of the scene accentuated the overall misleading impression of authenticity. Furthermore, the judge distinguished between painting a portrait of the plaintiff and merely looking like her. The former was a form of art, the second was not. Therefore, the model could not argue that her artistic career would be impeded by such prevention. She could use her resemblance for TV appearances or dramatic works, but not in commercial advertisements. 4. The limits of the freedom of speech The defendants tried to argue that the use of the look-alike was a “touch of humour” and was protected as free speech. However, the judge distinguished between promulgation of ideas and sale of goods. Because the plaintiff was a public figure, she may be a subject for comments or caricatures, but not a subject for commercial exploitation. 5. Result The plaintiff’s identity was impermissibly misappropriated for the purposes of trade and the fact that the picture which established that identity was genuine or counterfeit was irrelevant. The plaintiff obtained an injunction against further publication but could not get all the prints and negatives. Because the violation of her right to privacy was enough for the granting of injunctive relief, the right of publicity was not considered at this point. Case Name : Bette Midler v. Ford Motor Company, a Delaware Corporation, and Young & Rubicam Key words: Voice, singer imitation, secondary meaning property rights Country: U.S.A. Citation: 849 F.2d 460 Court: United States Court of Appeals (for the Ninth Circuit) Judges: Hug, Jr., Tang and Noonan, Jr., Circuit Judges Date: 22.06.1988 Case N°: 87-6168 Importance: Imitation of a famous singer’s voice is a tortuous appropriation Facts: In 1985, Ford Motor Company and its advertising agency, Young & Rubicam, launched “The Yuppie Campaign”, a series of nineteen television commercials to advertise the Ford Lincoln Mercury. The aim was to make an emotional connection with Yuppies, bringing back memories of when they were in college. Different popular songs of the seventies were sung on each commercial. The agency usually tried to get the original singers but after a refusal from Bette Midler’s agent, they hired a “sound-alike” to perform “Do You Want To Dance”, a song taken from a 1973 Midler album. She was told to sound as much as possible like Bette Midler. Neither the name nor the picture of Midler was used in the commercial Decision and Reasoning: 1. The district court decision: The district court considered the defendant’s conduct as amounting to theft, in a “If we can't buy it, we'll take it” manner. However, it found no legal basis to prevent the use of a voice imitation. 2. The answer of the Court of Appeal Noonan, Circuit judge, allowing Bette Midler’s appeal, delivered the opinion of the court.
Two situations which can allow the media to use a person’s identity were borne in mind during the case. The first one is the freedom of expression and of the press, as guaranteed by the First Amendment. In that situation, the purpose of the use is the criterion. So long as it is cultural or informative, the use is allowed. As soon as there is another form of exploitation, protection is not further guaranteed. The second situation is described by the federal copyright law, according to which the “mere imitation of a recorded performance would not constitute a copyright infringement even where one performer deliberately sets out to simulate another's performance as exactly as possible”.
Midler won the case because the nature of her claim was very specific. As Noonan Jr recalled, she did not try to prevent the use of the song, she did not claim that there was a secondary meaning in this song. If that was so, she would have failed. She did not seek damages for the use of the song, and moreover because her voice was not copyrightable as the sounds are not “fixed”, she was not pre-empted by federal copyright law. But on what basis could the appeal be allowed?
Some previous cases, with similar facts had been considered in the light of unfair competition. However in the present case, the court refused to think that a one minute commercial damaged Midler’s audience or “curtailed her market”. Especially because Midler never did any commercials, she was not in competition with the defendants. The appeal could not be allowed on that basis. California Civil Code section 3344 was also considered; it protects a person who suffered because of the use of his/her “name, voice, signature, photograph or likeness, in any manner”. In the present case, the name of Bette Midler never appeared in the commercial, the voice used was not hers and the term “likeness” only referred to visual image but not vocal resemblance. However, Noonan Jr considered that the existence of the Civil Code did not preclude the recourse to any other common law cause of action. Indeed, common law rights protected the appropriation of someone’s image or voice as “property rights”. The case Motschenbacher v. R.J. Reynolds Tobacco Co was analysed; and even though it dealt with physical likeness, Judge Koelsch recalled that California recognized an injury from “an appropriation of the attributes of one's identity.” It was therefore irrelevant whether the person represented was actually the celebrity or not, so long as the ad suggested that she was, by using some symbols usually associated to her, and in a way that she endorsed the product: “the defendants here used an imitation to convey the impression that Midler was singing for them”.
Noonan Jr went on to conclude that the voice is an attribute of a person’s identity. That can be easily demonstrated by the fact that the defendants tried to get Bette Midler sing for them and then instructed the sound-alike to perform as much as possible like the plaintiff. They would not have done so if the voice did not represent a value on its own. It was an attribute of Midler’s identity, and one which was even “more distinctive and more personal” than sometimes visual accessories. If that is so, then the same can be said for a singing as well. Because the famous singer manifested herself in the song, “to impersonate her voice was to pirate her identity”. Therefore, when a distinctive voice of a professional singer is widely known and is deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs and have committed a tort. 3. Result Midler showed sufficiently to defeat summary judgment, that the defendants for their own profit had appropriated part of her identity. Case Name: Joseph Finger et. Al v Omni Publications Int. Key Words: relation between press reporting and portrait use Court: New York Court of Appeals Country: USA Citation: 77 N.Y.2d 138, 566; N.E.2d 141, 564 N.Y.S.2d 1014 (1990) Date: 27. December 1990 Case No.: 3 No. 259 Importance: The use of a portrait and name of a real person for the purposes of advertising or trade is subject to authorization under § 50 New York Civil Law. However, newsworthy articles do not fall into that category. Neither do accompanying pictures of persons that have a “real” relationship with the article. The Court accepted such a relationship in the case of a photograph of a large family where all the children were born without scientific aid, and an article about caffeine-induced fertility enhancement. Facts: Claimants Joseph and Ida Finger have six children. The June 1988 edition of the magazine published by the defendant contained an article about research carried out at the University of Philadelphia into the use of caffeine as a method to improve male fertility. It was headlined: “Want a large family? Maybe your sperm needs a cup of java in the morning. Tests revealed that caffeine-spritzed sperm swim faster, which may increase the chances for in vitro fertilization.” A photograph depicting two adults and six “attractive and apparently healthy children”, i.e. the claimants’ children, accompanied the article. None of the children was conceived using any sort of fertility enhancement. The claimants sued for damages Decision and Reasoning: Under §§ 50, 51 New York Civil Rights Law damages can be awarded to claimants whose portrait has been used for purposes of advertising and trade. The Court observed that this statute has to be strictly limited to “non-consensual commercial appropriations of the name, portrait or picture of a living person” for “advertising purposes or for the purposes of trade.” (*Arrington v New York Times Co., 55 NY2d 433, 435) The statute does not define these purposes. Rather than giving a definition, the New York Court of Appeals has indicated what would be excluded. This includes “publications concerning newsworthy events or matters of public interest”. (*Stephano v News Group Publications, 64 NY2d 174, 184) A picture illustrating an article on a matter of public interest is not considered to be used for purposes of trade or advertising unless one of two exceptions apply: a) It has no real relationship to the article; or b) The article is an advertisement in disguise. (Murray v New York Mag., 27 NY2d 406, 409) A third exception, the creation of an impression that is not a true representation of the facts has not been accepted. (See however dissenting opinion of Bellacosa J. in *Messenger v Gruner, 2000 NY Int. 0001 of Feb. 17, 2000) In the instant case the Court of Appeals considered that the topic of the article was “having a large family”, and that the picture showed a large family. In these circumstances they did not want to interfere with the editorial judgments of the press, and dismissed the case. Case Name: Pamela J. Howell et al. / New York Post Key Words: Press use of photographs of people accompanying persons of public interest Court: New York Court of Appeals Country: USA Citation: 81 NY2d 115, 612 NE 2d 699, 596 NYS2d 350 (1993) Date: 5. April 1993 Case No.: 1 No. 68 [1993 NY Int. 71] Importance: Trespassing on private grounds by a photographer does not lead to an injunction against the publication; persons who have private contact with figures of public interest have to tolerate press coverage under §§ 50, 51 New York civil law Facts: Claimant Howell was hospitalised in a private psychiatric institution called “Four Winds”. Her stay there had to remain secret to all except her closest family in order not to endanger the success of the treatment. Hedda Nussbaum was at the same time a patient in the psychiatric institution. She was the adoptive mother of a six year old child who had died from child abuse under odd circumstances. Nussbaum’s role in the death was subject to public discussion. She may also have been a victim. A photographer for the defendant newspaper, the New York Post, trespassed onto Four Winds’ secluded grounds and using a telephoto lens took pictures of Nussbaum and the claimant. The photograph appeared in the New York Post as a follow-up story to the child’s death. The article showed sympathy for Nussbaum and claimed the treatment had been successful to an extent. The claimant used §§ 50, 51 civil law; trespass; harassment; emotional distress and prima facie tort as legal bases of the claim. Decision and Reasoning: 1. Infliction of emotional distress The court pointed out that emotional distress had traditionally not been recognised as proper damage. However, in the 1930s and heavily influenced by the work of Dean Prosser, a new tort had developed which recognised this category. The 1948 version of the Restatement of Torts put it in such a way that “one who, without a privilege to do so, intentionally causes severe emotional distress is liable..:” Prosser considered this language to be too broad. The Second Restatement of Torts stated that “one who by extreme and outrageous conduct intentionally or recklessly causes severe emotional distress to another” is liable. The tort is broad in scope but narrowed by a strict construction of the element of outrageous behaviour. In the instant case the Court of Appeals found that the defendant’s publication enjoyed the privilege of press reporting. The publication as such was justified. Courts have recognised that news-gathering methods can reach the outrageous standard. (Galella / Onassis, 487 F2d 986, 995 [2nd Circuit]). The trespass in the instant case did not, however, justify such a conclusion. 2. An freestanding privacy tort New York law does not acknowledge a common law of privacy. §§ 50, 51 New York Civil Law is the only instrument a claimant can rely upon. 3. §§50, 51 New York Civil Law As with *Messenger / Gruner and * Finger / Omni, the claimant failed under these sections of the New York Civil Law because her picture was illustrative of an article depicting the life of Hedda Nussbaum. It would appear that, as a general rule the “companion” of a public figure must has no redress when their image is included in a picture illustrating an article. This finding under §§ 50-51 New York civil law also influenced the tort of emotional distress, as discussed above. The court found that where a privacy action fails, that finding cannot then be circumvented by the tort of emotional distress. Case Name: Messenger v Gruner Key Words: relationship between press reporting and portrait use Court: New York Court of Appeals Country: USA Citation: 2000 NY Int. 0001 Date: 17 February 2000 Case No.: Importance: The use of portrait and name of a real person for purposes of advertising or trade is subject to authorization under § 50 New York Civil Law. However, newsworthy articles do not fall into that category. Neither do accompanying pictures of persons that have a “real” relationship to the article. The Court accepted such a relationship in the case of a teenage girl whose picture was used to illustrate an article on teenage sex, pregnancy and alcohol abuse. The claimant had nothing to do with any of these topics. Facts: The defendant had published in his magazine a picture of the claimant in conjunction with an article that discussed problems such as teenage sex, alcohol abuse and pregnancy. The claimant was a teenager at the time of publication. Her parents had not agreed to publication. Decision and Reasoning: The claimant argued, §§ 50, 51 New York Civil law gave her title to damage compensation as there was no valid authorization for the use of her portrait. The Court applied the same reasoning as in *Finger / Omni, 77 NY2nd 138: Newsworthy articles are not within the scope of the statute. Exceptions apply if there is no “real relationship” between the accompanying article and the picture, or if the article is an advertisement in disguise. Whether this publication could give rise to damage compensation thus depended upon the interpretation of the term “real relationship”. Underlining its approach in *Finger / Omni, 77 NY2nd 138, the court found such a relationship to exist as the article was about teenage problems and the claimant was a teenager. The “real” relationship, as interpreted by the New York courts is thus a loose one. The court justified this in line with the intention not to interfere with editorial decisions. The dissenting opinion of Judge Bellacosa is of note. He identified a third exception from the “newsworthy reporting” privilege. To his mind this applied to articles that lead to “material and substantial falsification”. Bellacosa thus construed the connection between the article and the picture more strictly than the majority of the court. His opinion would have helped safeguard against the creation of misleading impressions. However, this in turn might have led to a constitutional conflict with 1st Amendment rights which are of utmost importance in the US. However, the instant case is characterized by the fact that the editor could have picked any photograph of a teenage girl. Unlike *Time / Hill or *Howell / Post, the editor could not state an interest for choosing this picture over another one of the same category, i.e. of another teenage girl. The freedom of the press is thus not disturbed when editors purchase the right to publish this material in a given context. The position is thus that publishers are free to use any photograph as long as it has some relationship with the topic of the article. Case Name: Comedy III Productions Inc v Gary Saderup INC et al Key words: Merchandising, First Amendment, drawings Country: U.S.A. Citation: 25 Cal. 4th 387 Court: Supreme Court of California. Opinion by Mosk, J ; George, C. J., Kennard, Baxter, Werdegar, Chin, and Brown, JJ., concurred. Date: 30.04.2001 Case N°: S076061 Importance: Facts: Comedy III is the registered owner of
all rights to the former comedy act “The Three Stooges”, who are “deceased
personalities” within the meaning of the California Civil Code section
3344. Saderup is an artist making charcoal drawings of celebrities. These
drawings are used to create lithographic and silkscreen masters, which in
turn are used to produce multiple reproductions in the form, respectively,
of lithographic prints and silkscreened images on T-shirts. Saderup
creates the original drawings and is actively involved in the ensuing
lithographic and silk screening processes. Decision and Reasoning: 1. The decisions of the previous courts The trial judge found for Comedy III, awarded damages and issued a permanent injunction restraining Saderup from using any likeness of The Three Stooges in lithographs, T-shirts, “or any other medium by which Saderup's art work may be sold or marketed.” The injunction further prohibited Saderup from “Creating, producing, reproducing, copying, distributing, selling or exhibiting any lithographs …or other goods, products or merchandise of any kind, bearing the photograph, image, face, symbols, trademarks, likeness, name, voice or signature of The Three Stooges or any of the individual members of The Three Stooges.” The only exception was Saderup's original charcoal drawing. The Court of Appeal affirmed the judgment and rejected Saderup's contentions that his conduct (1) did not violate the terms of the statute, and (2) in any event was protected by the constitutional guaranty of freedom of speech. 2. The Supreme Court decision Mosk J. delivered the unanimous opinion of the court.
The defendant tried to argue that the statute only applied to a deceased personality’s name, voice, photograph for the purpose of advertising, selling, or soliciting the purchase of products. In that case, it would not apply to him because first, the T-shirt or lithograph were not sponsorship, advertisements or endorsement, as the drawing was his own product. The Supreme court refused such interpretation. The statute prevented the use of a deceased personality’s name, voice or image “on or in products, merchandise or goods or for the purpose of advertising or selling”. Such sentence did not exist in the original statute but was added when the statute was amended in 1984. Therefore, the distinction had to be made. The statute will be breached when someone uses such image either on or in a product, or for the purpose of selling or advertising. The T-shirts and the lithographs were tangible property. Then, “By producing and selling such lithographs and T-shirts, Saderup thus used the likeness of The Three Stooges “on . . . products, merchandise, or goods” within the meaning of the statute.”
A. Financial gain First Amendment protects free speech so long as it has no commercial aspect. The Court agreed with the trial judge finding that the present case is not really about commercial speech because the likeness was used as an expressive work and not as advertisements or endorsements of a product. “Although his work was done for financial gain, the First Amendment is not limited to those who publish without charge. . . . [An expressive activity] does not lose its constitutional protection because it is undertaken for profit.” This was so because the two purposes of the First Amendment are the preservation of: (1) the free marketplace of ideas (2) the right to self-expression B. Entertainment material As celebrities are in some debate on public issues, the creative appropriation of their image can be a way of individual expression. The right of publicity may have the effect of censoring significant expression by preventing some alternative representations of them that they would simply dislike because they might be satirical or irreverent. Mosk J recalled that First Amendment purposes also applied to cover entertainment as much as information or exposition of ideas. The rationale for that conclusion rested first on the fact that the distinction between information and entertainment is now blurred as the two forms often coexist, as Mosk J reminded, “Everyone is familiar with instances of propaganda through fiction”. Secondly because entertainment is a mode of participation to the development of ideas and therefore, it must be protected whatever its contribution to the marketplace of ideas. C. The form of the act The Court affirmed that expression included a merely visual expression or any nonverbal form. Doing otherwise would not recognise that visual art is the essence of visual communication and artistic expression. Moreover, a work of art was protected even if it conveyed no discernable message. Finally, First Amendment doctrine does not disfavour non-traditional media of expression. Therefore, even if the defendant expressed himself in a non-conventional way, on T-shirts and lithographs, his work is not excluded from protection. 3. How to find a new appropriate test? A. The social utility of the right of publicity On the other hand, the right of publicity protects a form of intellectual property that society deems to have some social utility, given the time and effort it took to someone to achieve skill or reputation. An analogy was drawn with copyright. That was particularly at issue in this case. The actors worked for a period extending from the 1920’s to the 1940’s creating the three comic characters and their brand of physical humour. Those efforts lead to a distinct comic trademark and a kind of mythic status in the U.S. culture. As with the Price case about Laurel and Hardy, the Court here had to deal “with actors portraying themselves and developing their own characters”. Therefore, the legislation recognized that “celebrity's heirs and assigns have a legitimate protectible interest in exploiting the value to be obtained from merchandising the celebrity's image”. The case-law was of help. Considering the Zacchini case, Mosk J recognised that two of its principles applied to the present case, namely that: (1) state law may validly safeguard forms of intellectual property not covered under federal copyright and patent law as a means of protecting the fruits of a performing artist's labour, (2) the state's interest in preventing the outright misappropriation of such intellectual property by others is not automatically trumped by the interest in free expression or dissemination of information; rather, as in the case of defamation, the state law interest and the interest in free expression must be balanced, according to the relative importance of the interests at stake. B. The existing tests in other forms of intellectual property Mosk J considered the proposal to use the “fair use” doctrine in copyright law and apply it to distinguish between protected and unprotected expression. He concluded that it had to be rejected. First because some factors that the fair use doctrine requires, like the “amount and substantiality of the portion used” or the fixation “in a tangible medium of expression” would not be efficiently adapted. However, he thought that the “purpose and character of the use” could be a good test. In this respect, the First Amendment and copyright law have a common goal of encouragement of free expression and creativity, the former by protecting such expression from government interference, the latter by protecting the creative fruits of intellectual and artistic labour. As far as the right of publicity is concerned, it, “at least theoretically, shares this goal with copyright law.” C. The transformative test The test eventually proposed was the “transformative” test, i.e. the protection will depend on the amount of transformation or creation added to the original image. This choice was explained by the fact 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. Indeed, works of parody or other distortions of the celebrity figure are not, from the celebrity fan's viewpoint, good substitutes for conventional depictions of the celebrity. Then, they do not threaten markets for celebrity memorabilia that the right of publicity is designed to protect. The creative elements are not however only limited to parody and can take many forms. In particular, in determining whether the work is transformative, courts are not to be concerned with the quality of the artistic contribution. The test is rather a quantitative test, resting on whether creative elements are predominant in the works. A useful device that Mosk J referred to was to ask whether the value of the work comes only from the fame of the person depicted. If the value comes from another source, then the work should be awarded protection. 3. Result The Supreme Court considered that the portrait was generally conventional, and only showed merely trivial creative elements. For this reason, “when an artist's skill and talent is manifestly subordinated to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit his or her fame, then the artist's right of free expression is outweighed by the right of publicity”. The judgement of the Court of Appeal is reaffirmed Case Name: Edgar Winter et al. v. DC Comics et al. Key words: Comics,Look-alikes, advertising, First Amendment Country: U.S.A. Citation: 30 Cal. 4th 881 Court : Supreme Court of California; George C.J., Chin, Kennard, Baxter, Werdegar, Brown, Moreno, JJ. Date: 02.06.2003 Case N°: S108751 Importance: Significant creative elements can transform illustrations into something more than mere celebrity likenesses. Facts: In the 1990's, DC Comics published a five-volume comic miniseries featuring “Jonah Hex”, a fictional comic book “anti-hero.” The fourth volume, entitled “Autumns of Our Discontent”, features the “Autumn brother” characters, Johnny and Edgar Autumn, depicted as villainous half-worm, half-human with pale faces and long white hair. In the volume 5, Jonah Hex shoots and kills the Autumn brothers in an underground gun battle. Plaintiffs, Johnny and Edgar Winter, well-known musicians sued DC Comics and others alleging several causes of action including appropriation of their names and likenesses under Civil Code section 3344. They alleged that the defendants selected the names Johnny and Edgar Autumn to signal readers the Winter brothers were being portrayed; that the Autumn brothers were drawn with long white hair and albino features similar to plaintiffs'; that the Johnny Autumn character was depicted as wearing a tall black top hat similar to the one Johnny Winter often wore; and that the title of volume 4, Autumns of Our Discontent, refers to the famous Shakespearian phrase, “the winter of our discontent.” They also alleged that the comics falsely portrayed them as “vile, depraved, stupid, cowardly, subhuman individuals.” Decision and Reasoning: Chin J. delivered the opinion of the court. 1. The tension between the right of publicity and the First Amendment: Civil Code section 3344 provides that “(a) 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 . . . shall be liable for any damages sustained by the person or persons injured as a result thereof”. Celebrities therefore have a statutory right of publicity with which they can prohibit others from using or exploiting their likeness. In Comedy III, the Court was fully aware that because the use of a celebrity’s name or picture might be necessary for the public debate, this right of publicity threatened two purposes of the First Amendment: (1) preserving an uninhibited marketplace of ideas; and (2) furthering the individual right of self-expression. Therefore, some situations had to justify the use of likeness or name, and be given some protection under the First Amendment. For example, Chin J. recalled that “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.” The right of publicity holder must on the one hand be entitled to enforce his monopoly right and benefit from the exploitation and production of conventional images of the celebrity. But on the other hand, when the celebrity has been the mere inspirational point of a work which featured other significant creative elements, this work is “less likely to interfere with the economic interest protected by the right of publicity”, and may be awarded protection under the First Amendment. 2. The Comedy III test followed Chin J. followed the test laid down in the Comedy III case to determine whether a work merely appropriates a celebrity's economic value, and thus is not entitled to First Amendment protection, or has been transformed into a creative product that the First Amendment protects and which seems to particularly be of relevance here. The question to consider is whether the celebrity is a mere “raw material” in a process which will later give raise to a new original work, or on the contrary if the celebrity represents the very substance of this work. If creative elements have been added to transform the likeness or celebrity’s image, in a way which is more than “merely trivial”, protection will be awarded under the First Amendment. It is independent from the artistic quality of the transformation, so long as it is substantial. That is so even if the result is found disagreeable to the celebrity: “What the right of publicity holder possesses is not a right of censorship, but a right to prevent others from misappropriating the economic value generated by the celebrity's fame”. * The parody context In the light of this test, Chin J. concluded that the comic books were not mere depictions of the plaintiffs but included substantial transformative elements. Although the fictional characters Johnny and Edgar Autumn “are less-than-subtle evocations of Johnny and Edgar Winter, the books do not depict plaintiffs literally”. The physical aspect of the plaintiff clearly represented the raw material of the work, but the resemblance between the Automn brothers and the plaintiff were distorted in a satirical way. Even if they provide nothing more than a humorous commentary, the comic books deserve protection. The defendant nonetheless argued that the comic books can not be considered as a parody and therefore do not fit into the First Amendment protection. But Chin J. stated that the distinction between parody and other forms of literary expression is irrelevant to the Comedy III transformative test. “It does not matter what precise literary category the work falls into.” What matters is only whether the work is transformative, not whether it is parody or satire or caricature or any other specific form of expression. * The way of marketing the product The Court of Appeal had found that the defendants were trading on plaintiffs' likenesses and reputations to generate interest in the comic book series and increase sales. However, Chin J. clearly stated that the way the product is marketed is also irrelevant for the transformative test. So long as the work is sufficiently transformative to receive legal protection, “it is of no moment that the advertisements may have increased the profitability of the work.” Besides, he went further on and said that if a work is recognized as sufficiently transformed, the way it was advertised can not be used to make non-transformative. 3. Result There was enough creative and transformative elements. The defendants sold, and the buyers purchased, DC Comics depicting fanciful, creative characters, not pictures of the Winter brothers. The comic books were therefore entitled to First Amendment protection. Case Name: Tiger Woods Country: U.S.A. Citation: ETW Corporation v. Jireh Publishing, Inc. 99 F.Supp.2d 829 (June 20, 2003) Court : Pursuant to Sixth Circuit Rule 206, 2003 FED App. 0207P (6th Cir.) United States Court of Appeals for the Sixth Circuit (Appeal from the US District Court for the Northern District of Ohio at Cleveland, before Silver and Clay, Circuit Judges, Graham, District Judge). Date: 02.06.2003 Case N°: 00-3584 Facts In 1998, Rick Rush, working as an artist for the publisher of artwork Jireh Publishing Inc., created a painting entitled The Masters of Augusta, which commemorates Woods’s victory at the Masters Tournament in Augusta, Georgia, in 1997. The limited edition prints distributed by Jireh consist of an image with Rush’s signature and a narrative description of the painting where the name of Woods appears twice. The text also includes references to the sixth other famous golfer depicted in the background of the painting as well as the two caddies. Jireh published and marketed serigraphs of it. ETW filed suit against Jireh on June 26, 1998 in the US District Court for the Northern District of Ohio, alleging : - trademark infringement (in violation of the Lanham Act, 15 U.S.C. §1114) - dilution of the mark (under the Lanham Act, 15 U.S.C. § 1125(c)) - unfair competition and false advertising (under the Lanham Act, 15 U.S.C. § 1125(a)) - unfair competition and deceptive trade pactices (under Ohio Revised Code §4165.01) - unfair competition and trademark infringement (under Ohio common law) - violation of Woods’s right of publicity (under Ohio common law) Jireh counterclaimed, seeking a declaratory judgement that Rush’s art prints are protected by the First Amendment and do not violate the Lanham Act. Both parties moved for summary judgement. The distrct court granted Jireh’s motion for summary judgement and dismissed the case. The decision 1. Trademark claim based on the unauthorised use of the registered trademark “Tiger Woods” ETW claims that Jireh infringed the registered mark “Tiger Woods” by including these words in marketing materials which accompanied the prints of Rush’s painting. But under the Lanham Act provides that “where the use of a mark is a use otherwise than as a mark which is descriptive of and used fairly and in good faith only to describe the goods of such party”, then there is no infringement. According to the decisions Herman Miller, Inc. v. Palazzetti Imports and Exports, Inc., 270 F.3d 298, 319 (6th Cir. 2001), “under the doctrine of ‘fair use’, the holder of a trademark cannot prevent others from using the word that forms the trademark in its primary or descriptive sense.” And according to Car-Freshner Corp. V. S.C. Johnson & Son, Inc. (1995) “fair use permits others to use a protected mark to describe aspects of their own goods”. Thus, in evalutating a fair use defense, a court must consider whether the defendant has used the mark : - in its descriptive sense and - in good faith A celebrity’s name may be used in the title of an artistic work so long as there is some artistic relevance. In this case, the use of Tiger Woods’s name on the back of the envelope containing the print and in the narrative description of the print are purely descriptive and nothing to indicate other than good faith. They clearly identify Rush as the source of the print, Wood is mentioned only to describe the content of the print. 2. Trademark claim based on the unauthorised use of the likeness of Tiger Woods ETW has registered Woods’s name as a trademark, but not his image or likeness of him. Nevertheless, it claims to have trademark rights in Woods’s image and likeness. The Lanham Act provides a federal cause of action for infringement of an unregistered trademark if it is “any word, name, symbol or device or any combination thereof” used by a person “to identify and distinguish his goods from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown”. However, images and likeness of Woods are not protectable as a trademark because they do not perform the trademark function of designation, they do not distinguish and identify the source of the goods. Indeed, there must be thousands of images and likeness of Woods, bu no reasonable person could believe that all these photographs or paintings containing Woods’s likeness or image originate all with Woods. The Court hold that “as a general rule, a person’s image or likeness cannot function as a trademark”. (See Pirone v. MacMillan Inc. 1990 : “a photograph of a human being, unlike a portrait of a fanciful cartoon character, is not inherently ‘distinctive’ in the trademark sense of tending to indicate origin.” “An ordinarily prudent purchaser would have no difficulty discerning that these photos are merely the subject matter of the calendar and do not in any way indicate sponsorship. No reasonable jury could find a likelihood of confusion”. “Under some circumstances, a photograph of a person may be a valid trademark if used on specific goods”. Woods, like the baseball legend Babe Ruth, is one of the most photographed sports figures of his generation, but this alone does not suffice to create a trademark claim.) 3. Unfair competition and false endorsement claims, Ohio Right to privacy claims and the First Amendment Defense Jireh has raised the First Amendment as a defense to all of ETW’s claims, arguing that Rush’s use of Woods’s image in his painting is protected expression. The Court examined how First Amendment rights have been balanced against intellectual property rights in cases involving the Lanham Act and state law rights of publicity. a. Scope of the First Amendment rights in the context of works of art It is not limited to written or spoken words, it includes other mediums of expressions, i.e. music, pictures, films, photographs, paintings, drawings, engravings, prints and sculptures. And the fact that the expressive materials are sold does not diminish the degree of protection. Speech is protected even in a form that is sold for profit, even pure commercial speech is entitled to significant First Amendment protection. In this case, Rush’s prints are not commercial speech and do not propose a commercial transaction, thus they are entitled to the full protection of the First Amendment. b. Whether Woods’s intellectual property rights prevail over Rush’s First Amendment rights : the false endorsement claim There is endorsement where a celebrity’s image or persona is used in association with a product so as to imply that the celebrity endorses the product. There is false endorsement when a celebrity’s identity is connected with a product or service in such a way that consumers are likely to be misled about the celebrity’s sponsorship or approval of the product or service. According to the Court, the eight-factor test that can be used in determining the likelihood of confusion cannot be appropriate if the defendant oppose the First Amendment protection. They also consider that the “no alternative means” test does not sufficiently accommodate the public’s interest in free expression. However, they agree that in general the public interest in free expression should prevail if the use of the celebrity’s image has artistic relevance, unless it is used explicitly to mislead as to the source of the work. c. Right of publicity claim ETW claims that Jireh’s publication and marketing of prints of Rush’s painting violates Woods’s right of publicity. The right of publicity is a recent intellectual property right originally treated as a branch of the right of privacy and defined as the inherent right of every human being to control the commercial use of one’s identity. Its violation gives rise to a cause of action for the commercial tort or unfair competition. However, in Zacchini v. Scripps-Howard Broadcasting Co. (1976), the only US Supreme Court decision on the right of publicity, the Court held that the First Amendment “did not insulate defendant from liability for violating Zacchini’s right of publicity”. Anyone who uses without consent the person’s name, likeness or other indicia of identity for purposes of trade is subject to liability for the relief appropriate. Nevertheless, in §46, Comment c, Rationale for Protection, the authors consider that the right of publicity as recognized by statute and common law is fundamentally constrained by the public and constitutional interest in freedom of expression. In Memphis Development Foundation v. Factors Etc. Inc. (1980), the Court held that “the famous have an exclusive legal right during life to control and profit from the commercial use of their name and personality”. In Carson v. Here’s Johnny Portable Toilets Inc. (1983), the Court held that “a celebrity has a protected pecuniary interest in the commercial exploitation of his identity”. A reproduction of a celebrity image that contains significant creative elements is entitled to as much First Amendment protection as an original work of art. In Comedy III Productions, the Californian court proposed a test to distinguish between protected and underprotected expression when the right of publicity conflicts with the First Amendment : the transformative elements test. “When artistic expression takes the form of a literal depiction or imitation of a celebrity for commercial gain, directly trespassing on the right of publicity without adding significant expression beyond that trespass”, then the interests of the imitative artist cannot prevail. d. The Final decision In this case, the Court held that the work of Rush is more than a mere likeness of Woods, thus the elements added are sufficient to bring his work within the First Amendment Protection. Secondly, it held that the Lanham Act should be applied to artistic works only where the public interest in avoiding confusion outweighs the public interest in free expression. They invoked the Rogers test : when the use of a celebrity’s name is purely descriptive and there is nothing to indicate that they are used other than in good faith. And when a celebrity’s name is used in the title of an artistic work if there is some artistic relevance (See Rogers v. Grimaldi 1989.) In this case, Woods’s image in Rush’s painting has artistic relevance and does not explicitly mislead as to the source of the work. However, the Court refuses, unlike the dissenting opinion, that a jury must decide where the balance should be struck and where the boundaries should be drawn between rights conferred by the Lanham Act and the protections of the First Amendment. Thirdly, they invoked a rule similar to the rule of fair use in copyright law, under which “the substantiality and market effect of the use of the celebrity’s image is analysed in light of the informational and creative consent of the defendant’s use. Summary of the issues: - Rush’s work has substantial informational and creative content which outweighs any adverse effect on ETW’s market, and it does not violate Woods’s right of publicity - It has not been clear that the appearance of Woods’s likeness in artwork prints will reduce the commercial value of his likeness - Permitting Woods’s right of publicity to trump Rush’s right of freedom of expression would extinguish Rush’s right to profit from his creative enterprise Thus, the Court considered that Woods’s right of publicity in this case is negligible and significantly outweighed by society’s interest in freedom of artistic expression. Collaboration from Agnes Berche Case Name: Toney v L’Oreal and Wella Key Words: copyright, preemption, right of publicity Court: United States Court of Appeals for the Seventh Circuit Country: USA Citation: 7th Circuit Appeal No. 03-2184 Date: 6 May 2005 Case No.: No. 03-2184 Importance: Identity is an amorphous concept that is not protected by copyright law; thus, the state law protecting it is not preempted. The fact that a photograph could be copyrighted, and that the defendants owned the copyright to the photograph that was used, is irrelevant to the Illinois Right of Publicity Act (IRPA) claim. The basis of a right of publicity claim, concerns the message—whether the plaintiff endorses, or appears to endorse the product in question. Facts: Model June Toney’s photograph was used to advertise a hair product marketed by Johnson Products Company. Toney consented to the use of her photograph for a limited time, but when a successor company later used the photograph without her permission, Toney filed suit alleging that her right of publicity had been violated. The district court dismissed her claim after finding that it was preempted by federal copyright law. Thus the appeal. Decision and Reasoning: Can claim brought under IRPA be preempted by the Copyright Act? The Illinois Right of Publicity Act (IRPA) grants an individual the “right to control and to choose whether and how to use an individual’s identity for commercial purposes.” (765 Ill. Comp. Stat. 1075/10.) Moreover, the IRPA provides that “[a] person may not use an individual’s identity for commercial purposes during the individual’s lifetime without having obtained previous written consent from the appropriate person . . . .”[765 Ill. Comp. Stat. 1075/30]. However, these state law rights are only valid if they do not interfere with federal copyright protections. The IRPA states that a person’s “identity” is protected by the statute. Identity is defined to mean “any attribute of an individual that serves to identify that individual to an ordinary, reasonable viewer or listener, including but not limited to (i) name, (ii) signature, (iii) photograph, (iv) image, (v) likeness, or (vi) voice.” [765 Ill. Comp. Stat. 1075/5] In short, the IRPA protects a person’s right to publicity. The subject matter of such a claim “is not a particular picture or photograph of plaintiff. Rather, what is protected by the right of publicity is the very identity or persona of the plaintiff as a human being.” A photograph “is merely one copyrightable ‘expression’ of the underlying ‘work,’ which is the plaintiff as a human being. There is only one underlying ‘persona’ of a person protected by the right of publicity.” In contrast, “[t]here may be dozens or hundreds of photographs which fix certain moments in that person’s life. Copyright in each of these photographs might be separately owned by dozens or hundreds of photographers.” A persona, defined in this way, “can hardly be said to constitute a ‘writing’ of an ‘author’ within the meaning of the copyright clause of the Constitution.” [Quoting, J. Thomas McCarthy, 2 Rts. Of Publicity & Privacy § 11:52 (2d ed. 2004) (emphasis in original) (internal citations and quotations omitted)] Section 301 of the Copyright Act delineates two conditions which, if met, require the pre-emption of a state-law claim in favour of the rights and remedies available under federal law. Section 301(a) states: On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by section [ ] 102 . . . are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State. The two things need to be determined. Firstly, whether the work at issue is in tangible form and whether it comes within the subject matter of copyright as specified in § 102, and secondly, whether the right is equivalent to the general copyright protections which are set out in § 106. Section 102 of the Act defines the subject matter of copyright as “original works of authorship fixed in any tangible medium of expression,” including “pictorial” works. [17 U.S.C. § 102(a)]. The Act’s definitional section explains that a work is “fixed” in a tangible medium of expression “when its embodiment in a copy . . . is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”[17 U.S.C. § 101.] The notes and commentary accompanying § 106 make it clear that copyright holders have five exclusive and fundamental rights: reproduction, adaptation, publication, performance, and display [17 U.S.C. § 106]. A copyright is violated or infringed when, without permission, someone other than the copyright holder exercises one of those fundamental rights. Put differently, to avoid pre-emption, a state law must regulate conduct that is qualitatively distinguishable from that governed by federal copyright law—i.e., conduct other than reproduction, adaptation, publication, performance, and display. Toney’s identity is not fixed in a tangible medium of expression. There is no “work of authorship” at issue in Toney’s right of publicity claim. A person’s likeness—her persona—is not authored and it is not fixed. The fact that an image of the person might be fixed in a copyrightable photograph does not change that. From this, it must also be found that the rights protected by the IRPA are not “equivalent” to any of the exclusive rights within the general scope of copyright that are set forth in § 106. Copyright laws do not reach identity claims such as Toney’s. Identity, as we have described it, is an amorphous concept that is not protected by copyright law; thus, the state law protecting it is not preempted. The purpose of the IRPA is to allow a person to control the commercial value of his or her identity. Unlike copyright law, “commercial purpose” is an element required by the IRPA, and is defined to mean “the public use or holding out of an individual’s identity (i) on or in connection with the offering for sale or sale of a product, merchandise, goods, or services; (ii) for purposes of advertising or promoting products, merchandise, goods, or services; or (iii) for the purpose of fundraising.” [765 Ill. Comp. Stat.1075/5]. Clearly the defendants used Toney’s likeness without her consent for their commercial advantage. 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 IRPA claim. The basis of a right of publicity claim concerns the message—whether the plaintiff endorses, or appears to endorse the product in question. One can imagine many scenarios where the use of a photograph without consent, in apparent endorsement of any number of products, could cause great harm to the person photographed. The fact of Toney consenting to the use of her photograph originally did not change that analysis. The defendants did not have her consent to continue to use the photograph, and therefore, they stripped Toney of her right to control the commercial value of her identity. Result: Dismissal of Toney’s right of publicity claim vacated; case remanded for further proceedings in the district court. Case Name: Perfect 10, Inc. v. Talisman Communications Inc. Key words: unauthorised use of photographs, misuse of image likeness, damages Country: USA Citation: 2000 WL 364813, *1 (C.D.Cal.) Court: United States District Court, C.D. California. Date: 27 March 2000. Case N°: No. CV99-10450 RAP MCX. Importance: The right of publicity is violated when an entity uses appropriated photographs/names for the purpose of advertising and soliciting purchases of its goods and services, specifically the further sale of photographs and other works on its website. Facts: Perfect 10 was engaged in the design, layout, filming, production, marketing and promotion of its products including the magazine, its website, photographs, video productions, and other arts, and is the copyright owner of those works. Some of the copyrighted works appear within its published magazine Perfect 10 (R). The defendant Talisman operated a website located at the Internet address <supersex.com>, of which it was the registrant and owner. Around September 1999, Talisman copied Perfect 10’s copyrighted works, and published those works on the <supersex.com> website, without authorization or permission from Perfect 10. Six of Perfect 10’s copyrighted photographs (of four models), covered by three separate United States copyright registrations, were taken and publicly displayed at <supersex.com>. The photographs of three of the models, as posted on Defendant’s website, also contained the models names. Users of the <supersex.com> website could obtain the mentioned copyrighted works owned by Perfect 10 as well as copy them without the permission or authorization of Perfect 10. The appropriation of the models likenesses and names by Talisman was for the purpose of advertising and soliciting purchases of Talisman’s goods and services, specifically the further sale of photographs and other works on Talisman’s Internet website. Decision and Reasoning: Copyright Infringement By reproducing, copying, publicly displaying, and distributing Perfect 10’s copyrighted works without Perfect 10’s authorization, in violation of Sections 106 and 501 of the Copyright Act, Talisman infringed Perfect 10’s registered copyrights. Moreover, Talisman had knowingly induced, caused, materially contributed, and provided the means for its customers to infringe Perfect 10’s copyrights, by providing a means for others to copy the aforementioned copyrighted works without authorization. (Paras 21, 22) Right of Publicity The models depicted in the photographs had assigned and transferred their rights of publicity, as to their likenesses and names, to Perfect 10. By posting the pictures of these models on its website, along with the names of the models (in the case of V Kolek, A Degenford, and V Norris), Talisman had violated the models’ Rights of Publicity, both statutory (California Civil Code § 3344) and common law, which had been assigned to Perfect 10. The defendant’s conduct involved the appropriation of photographs of the Plaintiff’s assignors( the models), and the Plaintiff’s assignors were readily identifiable in the photographs, in that any person viewing the photographs with the naked eye could reasonably determine that the persons depicted in the photographs were the Plaintiff’s assignors. The Defendant had also appropriated the names of the models, which rights had been assigned to Perfect 10. The appropriation by Defendant was for the purpose of advertising and soliciting purchases of Defendant’s goods and services, specifically the further sale of photographs and other works on Defendant’s Internet website, and for the purpose of selling the appropriated photographs through paid subscriptions to restricted areas of the Defendant’s website. All of the Defendant’s acts were performed without the permission, license or consent of Perfect 10. (Para 25) Result: Perfect 10, Inc. granted judgment against Defendant to the sum of $312,810.00. Case Name: Bret Michaels v Internet Entertainment Group, Inc. Key words: copyright preemption, dissemination of tape on Internet, right to publicity, privacy Country: USA Citation: 5 F. Supp. 2d 823; 1998 U.S. Dist. LEXIS 10678 Court: United States District Court C. D., California Date: 27 April 1998 Case N°: CV 98-0583 DDP (CWx) Importance: A right to publicity claim was not preempted where the claim contained elements that were different in kind from copyright infringement. Crafting an injunction to prevent irreparable injury arising from violation of the plaintiffs’ rights to publicity required a weighing of the private interest of the right of publicity against matters of public interest. Facts: This case was instituted to enjoin the Defendant, the Internet Entertainment Group (IEG) from disseminating or exploiting a tape that depicted Bret Michaels and P A Lee engaged in sexual activity. Decision and reasoning: Copyright Claims Where a copyright plaintiff succeeds in showing a likelihood of success on the merits, irreparable injury is presumed. It is well-settled that monetary damages cannot compensate for the harm caused by copyright infringement. Distribution of the tape on the Internet would conflict with the plaintiffs’ exclusive rights to distribute copies of the tape to the public (17 U.S.C. § 106(4)). It would also interfere with the plaintiffs’ public display rights, which included the right to display ‘individual images of a motion picture’ (17 U.S.C. § 106(5). Therefore, the display of still images from the tape on the Internet would also conflict with rights conferred exclusively on the plaintiffs by the Copyright Act. Right to Publicity Under California law, the plaintiffs owned the right to exploit their names and likenesses for commercial gain. The common law of California recognized this right of publicity in a person's name, likeness and identity. Copyright Preemption The Copyright Act of 1976 sets out a two-part test for determining whether a state law claim was preempted. First, the work on which the state law claim was based must be within the subject matter of copyright, i.e., the state law claim must arise from rights in a work of authorship fixed in a tangible medium of expression. (See 17 U.S.C. § 301(b) (1)). Second, the state law claim must assert rights that were equivalent to the exclusive rights specified by Section 106 of the Act, i.e., the right to prohibit reproduction, creation of derivative works, performance, distribution, or display of a work. (See 17 U.S.C. § 301 (b) (3)). A right to publicity claim was not preempted where the claim contained elements that were different in kind from copyright infringement. (See Wendt v. Host Int'l. Inc., 125 F.3d 806, 810 (9th Cir. 1997). Here, the plaintiffs had alleged that the defendants had used their names, likenesses and identities on radio, television and the Internet to advertise the imminent distribution of the tape. This conduct was unrelated to the elements of copyright infringement, which were concerned only with distribution of the tape itself. The Court therefore rejected the contention that the claims for right to publicity were preempted by the Copyright Act. Likelihood of Success on the Merits The elements of a common law right to publicity claim are: (1) the defendant's use of the plaintiff's identity; (2) the appropriation of plaintiff's name or likeness to defendant's advantage, commercial or otherwise; (3) lack of consent; and (4) resulting injury.(Eastwood, 198 Cal. Rptr. at 347). The statutory cause of action under s. 3344 required two additional elements: knowing use of the plaintiff's name, photograph of likeness for purposes of advertising or solicitation of purchases, and a ‘direct connection’ between the use and the commercial purpose. Lack of consent, was not seriously contested. Injury was satisfied by two showings: Firstly, if IEG's membership revenue had increased due to its use of the plaintiffs’ names and likenesses, IEG had deprived the plaintiffs of money they could have made by exploiting their right to publicity. Secondly, the plaintiffs had presented evidence that publicity in association with pornography had damaged their attempts to establish and maintain careers in mainstream entertainment. The Court also found that the statutory elements were satisfied. While the plaintiffs had an exclusive right to exploit their names and likenesses for commercial purposes, they however, did not have an exclusive right to the use of their names and likenesses in the publication of matters of public interest. Crafting an injunction to prevent irreparable injury arising from violation of the plaintiffs' rights to publicity required “a weighing of the private interest of the right of publicity against matters of public interest calling for constitutional protection, and a consideration of the character of these competing interests.” (Eastwood, 198 Cal. Rptr. at 349. Right to Privacy Both the public disclosure and intrusion torts were subject to a newsworthy privilege, which protected the First Amendment freedom to report on matters of public concern. Yet, the privilege to report newsworthy information is not without limit. Here, the distribution of the tape on the Internet would constitute public disclosure. The contents of the tape constituted a set of private facts whose disclosure would be objectionable to a reasonable person. a. Do Sex Symbols Have Privacy? The fact that Lee had performed a role involving sex did not, however, make her real sex life open to the public. The Court was also not prepared to conclude that public exposure of one sexual encounter forever removed a person’s privacy interest in all subsequent and previous sexual encounters. While Michaels voluntary assumption of fame as a rock star threw open his private life to some extent, even people who voluntarily entered the public sphere retained a privacy interest in the most intimate details of their lives. b. Newsworthiness Privilege In order to determine whether the contents of the tape were covered by the privilege for reporting private but newsworthy information, the Court had to balance: (1) the social value of the facts published; (2) the depth of the intrusion into ostensibly private affairs; and, (3) the extent to which the party had voluntarily acceded to a position of public notoriety. The first factor, the social value of the facts published, weighed against a finding of newsworthiness. The second factor, depth of intrusion, also weighed against a finding of newsworthiness. This factor had to be applied with an eye toward community mores as to the depth of intrusion. The third factor, voluntary accession to fame, weighed in favour of a finding of newsworthiness. The Plaintiffs had demonstrated a likelihood of success in meeting their burden to show that the contents of the tape were not covered by the newsworthiness privilege. Result: TRO granted. |
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