<b>Decision of Note</b>California Further Defines Transformative Use

The California Supreme Court has held that the First Amendment protected D.C. Comics against a right of publicity claim brought by Johnny and Edgar Winter, well-known musicians from Texas, based on a series of comic books that incorporated the Winter brothers as characters, albeit transformed into the 'Autumn Brothers' as villainous half-worms. Winter v. D.C. Comics, S108751 (Cal. Sp. Ct. 2003). In its ruling, the court relied heavily on and extended the rationale of its prior holding in Comedy III Productions Inc. v. Gary Saderup Inc., 25 Cal. 4th 387 (Cal. Sp. Ct. 2001).

Together, the Winter and D.C. Comics cases applied an entirely new analysis for resolving right of publicity claims against a First Amendment defense. Under the court's analysis, any transformative use of a plaintiff's name and likeness is protected by the

First Amendment. Importantly, a transformative use can take many forms, including:

• Factual reports on matters of public interest
• Fictionalized portrayals
• Parodies
• Art that involves some material variation to the likeness of a plaintiff, such as Andy Warhol's famous paintings of celebrities.

The Winter brothers lost because D.C. Comics' portrayal of the Winter brothers as half-worms was certainly transformative under this last category. The plaintiff successors-in-interest to the Three Stooges won in Comedy III because the depictions, although sketches, were exact replications of the Three Stooges.

There are two items of note under this new transformative analysis. The transformative element becomes the umbrella for protection under the First Amendment and all use sub-categories must find protection under the shelter of this umbrella. Protected art (which must involve some material variation of the likeness of the plaintiff) need not be a parody; it is protected in its own right.

But the most interesting aspect of Winter and Comedy III is that the analysis in the cases would extend to advertising. That is, if an advertisement included a transformative use of a celebrity's image, the advertisement should be entitled to First Amendment protection under Winter and Comedy III. This result is contrary to a string cases in which the U.S. Court of Appeals for the Ninth Circuit upheld right of publicity claims brought under California law on exactly this fact pattern. In all of these cases, the Ninth Circuit was purporting to apply California law. But the California Supreme Court, as the final arbiter of California state law, takes precedence over the Ninth Circuit. The net result is that Winter and Comedy III sub silentio overruled a long string of Ninth Circuit cases, including the following:

• A case permitting Vanna White to prevail against Samsung based on a commercial portraying a robot in an evening gown spinning the Wheel of Fortune. White v. Samsung Electronics America Inc., 971 F.2d 1395 (9th Cir. 1992), cert. denied, 113 S.Ct. 2443 (1993).
• A case permitting Johnny Carson to prevail against the makers of portable toilets that used the catchy phrase, 'Here's Johnny!' Carson v. Here's Johnny Portable Toilets Inc., 698 F.2d 831 (6th Cir. 1983).
• A case permitting a racecar driver to prevail against a cigarette company for an ad that depicted a highly modified version of his car, although he could not be seen in it.  Motschenbacher v. R.J. Reynolds Tobacco Co., 498 F.2d 821 (9th Cir. 1974).
• A case permitting actors from the 'Cheers' TV series to proceed against an airport bar that included highly modified versions of their characters as animatronic figures in the bar. Wendt v. Host Int'l Inc., 125 F.3d 806 (9th Cir. 1997).

In all of these cases, the plaintiffs would have lost if the transformative test had been applied. This means that all advertisers have to do is modify a celebrity's image in some material way before including it in an ad, and they will be immune from right of publicity claims, at least in California. This will likely be the next right of publicity battle to reach the California Supreme Court, and it seems highly likely that the court will rule that Winter did, indeed, kill the White-type cases.

Schuyler M. Moore is a partner at Stroock & Stroock & Lavan in Los Angeles. He is also Adjunct Professor at UCLA School of Law, and author of the book 'The Biz: The Basic Business, Financial and Legal Aspects of the Film Industry.' He can be reached at [email protected].

The California Supreme Court has held that the First Amendment protected D.C. Comics against a right of publicity claim brought by Johnny and Edgar Winter, well-known musicians from Texas, based on a series of comic books that incorporated the Winter brothers as characters, albeit transformed into the 'Autumn Brothers' as villainous half-worms. Winter v. D.C. Comics, S108751 (Cal. Sp. Ct. 2003). In its ruling, the court relied heavily on and extended the rationale of its prior holding in Comedy III Productions Inc. v. Gary Saderup Inc. , 25 Cal. 4th 387 (Cal. Sp. Ct. 2001).

Together, the Winter and D.C. Comics cases applied an entirely new analysis for resolving right of publicity claims against a First Amendment defense. Under the court's analysis, any transformative use of a plaintiff's name and likeness is protected by the

First Amendment. Importantly, a transformative use can take many forms, including:

• Factual reports on matters of public interest
• Fictionalized portrayals
• Parodies
• Art that involves some material variation to the likeness of a plaintiff, such as Andy Warhol's famous paintings of celebrities.

The Winter brothers lost because D.C. Comics' portrayal of the Winter brothers as half-worms was certainly transformative under this last category. The plaintiff successors-in-interest to the Three Stooges won in Comedy III because the depictions, although sketches, were exact replications of the Three Stooges.

There are two items of note under this new transformative analysis. The transformative element becomes the umbrella for protection under the First Amendment and all use sub-categories must find protection under the shelter of this umbrella. Protected art (which must involve some material variation of the likeness of the plaintiff) need not be a parody; it is protected in its own right.

But the most interesting aspect of Winter and Comedy III is that the analysis in the cases would extend to advertising. That is, if an advertisement included a transformative use of a celebrity's image, the advertisement should be entitled to First Amendment protection under Winter and Comedy III. This result is contrary to a string cases in which the U.S. Court of Appeals for the Ninth Circuit upheld right of publicity claims brought under California law on exactly this fact pattern. In all of these cases, the Ninth Circuit was purporting to apply California law. But the California Supreme Court, as the final arbiter of California state law, takes precedence over the Ninth Circuit. The net result is that Winter and Comedy III sub silentio overruled a long string of Ninth Circuit cases, including the following:

• A case permitting Vanna White to prevail against Samsung based on a commercial portraying a robot in an evening gown spinning the Wheel of Fortune. White v. Samsung Electronics America Inc. , 971 F.2d 1395 (9th Cir. 1992), cert. denied , 113 S.Ct. 2443 (1993).
• A case permitting Johnny Carson to prevail against the makers of portable toilets that used the catchy phrase, 'Here's Johnny!' Carson v. Here's Johnny Portable Toilets Inc. , 698 F.2d 831 (6th Cir. 1983).
• A case permitting a racecar driver to prevail against a cigarette company for an ad that depicted a highly modified version of his car, although he could not be seen in it.  Motschenbacher v. R.J. Reynolds Tobacco Co. , 498 F.2d 821 (9th Cir. 1974).
• A case permitting actors from the 'Cheers' TV series to proceed against an airport bar that included highly modified versions of their characters as animatronic figures in the bar. Wendt v. Host Int'l Inc. , 125 F.3d 806 (9th Cir. 1997).

In all of these cases, the plaintiffs would have lost if the transformative test had been applied. This means that all advertisers have to do is modify a celebrity's image in some material way before including it in an ad, and they will be immune from right of publicity claims, at least in California. This will likely be the next right of publicity battle to reach the California Supreme Court, and it seems highly likely that the court will rule that Winter did, indeed, kill the White-type cases.

Schuyler M. Moore is a partner at Stroock & Stroock & Lavan in Los Angeles. He is also Adjunct Professor at UCLA School of Law, and author of the book 'The Biz: The Basic Business, Financial and Legal Aspects of the Film Industry.' He can be reached at [email protected].