Establishing Injury Presents Challenge In Lawsuits over Right of Publicity

The right of publicity ' the right of individuals to protect the commercial uses of their names and images ' is now a familiar concept. Given CKX Inc.'s purchase for a reported $50 million of rights to Muhammad Ali's name and the company's $100 million acquisition of Elvis Presley's publicity rights, there can be no question that the right not only can have great value, but has achieved a certain settled status. And yet, the metes and bounds of the right remain elusive at best.

Personal Trademark

Although evolved from the personal right of privacy (the right to be left alone), in reality the right resembles most closely a personal trademark. Just as a trademark protects the public recognition ' and hence selling power ' of commercial names or symbols, the right of publicity protects the commercial value of (or goodwill in) a celebrity's name or image. Most right of publicity actions are joined with claims under Sec. 43(a) of the Lanham Act for use of false designations of origin. However, despite the clearly commercial nature of the right, and notwithstanding that courts routinely state that proof of injury in fact is a required element of the tort, the precedents offer little if any insight into what is or is not injurious to the commercial value of a celebrity's name or image.

The right is plainly meant to protect commercial interests. See, eg, White v. Samsung Electronics Assocs., 971 F.2d 1395, 1402 (9th Cir. 1992) (quoting Eastwood v. Superior Court, 149 Cal. App.3d 409, 417, 198 Cal. Rptr. 342 (1983)); Donchez v. Coors Brewing Co., 392 F.3d 1211, 1220 (10th Cir 2004). Yet, it isn't unheard of for courts considering complained-of commercial injury to cite the celebrity's emotional distress and personal angst as proof of harm. See, eg, Waits v. Frito Lay Inc. 978 F.2d 1093, 1103 (9th Cir. 1992) ('Although the injury stemming from violation of the right of publicity 'may be largely, or even wholly, of an economic or material nature,' we have recognized that 'it is quite possible that the appropriation of the identity of a celebrity may induce humiliation, embarrassment and mental distress.”) (quoting Motschenbacher v. R.J. Reynolds Tobacco Co., 498 F.2d 821, 824 n.11 (9th Cir. 1974)). And even while acknowledging that commercial injury is what distinguishes the right of publicity from the right of privacy, at least one leading commentator has suggested there should be no need actually to prove either commercial injury to the plaintiff or financial gain to the defendant. 1 J. Thomas McCarthy, The Rights of Publicity and Privacy, Sec. 3:2 at 113 (2d ed. 2006).

The Restatement (Third) of Unfair Competition (1995) does set forth various factors relevant to assessing possible monetary relief. These include:

• Actual evidence of pecuniary loss (or gain by the accused infringer);
• Extent of the appropriation;
• Adequacy of other remedies;
• Intent of the accused; and
• Delay or misconduct by the plaintiff.

Id. 49(2)(a)(f).

Yet these concepts remain largely inchoate, as few if any cases have discussed or analyzed what they signify. An exception, and hence potentially important evolutionary step, is Amazon Inc. v. Cannondale Corp., 99 CV 00571 (EWN) (D. Colo. 2006). In that case, the court granted summary judgment dismissing the complaint of the management company for the former world champion mountain bike racer, Melissa 'Missy' Giove, for failure to prove injury in fact when her picture appeared in Cannondale's catalog after she was no longer on the Cannondale team. In so ruling, the court expressly rejected the plaintiff's contention that injury could be inferred without direct proof, simply from the alleged unauthorized nature of the use; thus demonstrating the importance of actually proving injury in fact.

In the biking world (much like the car industry), manufacturers publish product catalogs in the fall before the product year. Hence, in 1998, when Giove was still on the mountain biking team sponsored by Cannondale (among others), Cannondale produced and published its 1999 catalog. The team (a separate legal entity from the bike company) did not renew her contract for 1999, but her picture nonetheless remained in the 1999 Cannondale catalog. Amazon's contract with the team arguably limited the team's right to use her name or image to the term of the contract, but the team's contract with Cannondale contained no such limitation.

No Harm, No Foul

Although the court didn't disentangle the contractual issues concerning Cannondale's right to continue using Giove's name or image after she ceased to be on the team, it did conclude that Giove's management company failed to prove it sustained any injury. The company attempted unsuccessfully to identify various types of harm, including unwanted continued association with Cannondale, potential loss of sponsorships, loss of control and injury to reputation. In part, the absence of identifiable harm reflected specific circumstances of the case, such as the small size and lack of prominence of the pictures; the fact that it was impossible to distinguish Giove's concededly proper association with Cannondale after 5 years actually racing for the team as against the contested effects of a few small pictures in a 96-page catalog once she no longer did. And because the pictures all accurately, and favorably, reflected her actual time on the team, there was nothing inherently objectionable about any of them. In part, the finding of no actual harm also reflected the blunt fact that the plaintiffs' Chief Operating Officer (COO) admitted in deposition testimony he could identify no actual harm in any of the categories of injury he identified. But in a broader sense, part of the COO's difficulty articulating how the company was injured may have revealed a more universal aspect of right of publicity cases, yet one often unnoticed; namely, the difficulty of demonstrating diminution of something so indefinite in scope as the value of a celebrity's name or image. Given the abstract nature of the right, it is difficult enough to measure the metes and bounds of an uninfringed set of rights, much less to gauge the diminishment of those dimensions when an alleged infringement occurs. Or, put differently, if the publicists are right that no publicity is bad publicity, many, even unauthorized, uses of a celebrity name or image will be without harmful effect ' and may even be beneficial.

Determining Damages

In lieu of an analysis of injury in fact, the plaintiff-celebrity typically hires a damages expert to opine that the value of the unauthorized use of his or her name or image is $X (where 'X' often happens to be a six- or seven-figure number). In Waits, for instance, relying on expert testimony, the court was able to determine a value for the use of Waits' singing voice (which the defendants took for free by hiring an imitator to sing in a television commercial). The court noted that 'from the testimony of Waits' expert witness, the jury could have inferred that if Waits ever wanted to do a commercial in the future, the fee he could command would be lowered by $50,000 to $150,000 because of the Doritos commercial.' 978 F.2d at 1104. Regardless of whether, or how closely, the number reflects reality, that frequently ends the inquiry into whether there has been injury in fact. The defendant can challenge the expert report (including with its own damages expert), but the question whether the defendant should have to remunerate at all is transformed into one of how much is enough ' a factual dispute, in other words, requiring trial. In Amazon Inc., however, the plaintiff didn't retain an expert (or if it did, the expert's opinion was so unfavorable as to be suppressed), thus allowing the court to examine more closely the nature of the injury alleged and enter judgment as a matter of law.

An expert appraisal of the value of a particular image, where relevant, is more likely to bear some relation to the benefit the defendant has received ' arguably a form of unjust enrichment ' than it is to reflect any harm caused to the plaintiff. Perhaps benefit to the defendant should generally have some independent relevance. Yet, the Restatement (Third) of Unfair Competition suggests that a court shouldn't even address the question of a defendant's profits (or unjust enrichment) unless there first is a finding of bad faith. The Restatement thus makes clear that '[m]onetary relief for an appropriation of the commercial value of a person's identity can consist of either compensatory damages measured by the loss to the plaintiff or restitutionary relief measured by the unjust gain to the defendant.' Sec. 49 cmt. a. The Restatement likewise specifies that '[a]n accounting of ' profits from an unauthorized use of the plaintiff's identity is most often justified as a means of deterring infringement and recapturing gains attributable to wrongful conduct' and hence may be 'inappropriate in the case of an innocent infringer.' Id. at Sec. 49 cmt. C (emphasis added). This approach for the right of publicity parallels at least certain general thinking concerning the law of unfair competition. See, Restatement Sec. 37(1)(a) (an award of an infringer's profits for unfair competition requires a showing of inequitable conduct, such as willful infringement).

The Amazon Result

Without resolving whether a finding of bad faith is a prerequisite to recovering a defendants' profits, indeed, having already found years earlier that Cannondale acted in good faith ' Amazon Inc. v. Cannondale Corp., 56 U.S.P.Q.2d 1568 (D. Colo. 2000), remanded on other grounds, 61 U.S.P.Q.2d 1047 (10th Cir. 2001) ' the Amazon Inc. court concluded that Cannondale reaped no cognizable benefit from using the pictures. The pictures were relatively small and appeared only on inner pages of the 96-page catalog, not on its cover and not in a prominent way to call attention to Giove. The court also rejected Amazon's theory that Cannondale benefited from not having to redo its catalog to remove the pictures once she left the team. Very simply, the nuisance cost of the glue and paper and possible reprinting expenses of an entire catalog bore no rational relationship to the value of three particular pictures in the catalog. Nor was the court persuaded that the amount the team paid Amazon for Giove's professional racing services in 1998 could be used in lieu of an actual valuation of the pictures. Rejecting the plaintiff's argument that the only way Cannondale could have obtained the contractual right to use Giove's pictures in 1999 would have been to re-sign her to the team (for the full amount of her 1998 contract), the court held this wasn't like cases in which a prior contract for use of specific materials could be used to measure the value of later uses of the very same materials. Welch v. Mr. Christmas, 57 N.Y.2d 143, 454 N.Y.S.2d 971 (N.Y. 1982). More than simply a problem of apportioning which part of Giove's prior contract was for use of her publicity rights in general, or whether contractual consent was even required for the use in issue, the professional services contract simply wasn't a proper measure of any given pictures used in the specific manner that they were.

The simple significance of Amazon Inc. then is that the right of publicity isn't a strict liability tort. That a monetary number can be assigned to a particular image or other subject matter protectable by the right of publicity is logically distinct from whether that number reflects an actual loss to the plaintiff or benefit to the defendant. Unless it is assumed that every unauthorized use of a celebrity name or image is per se injurious (ie, as a matter of law), it must remain an open question whether any given use is in fact harmful.

In adhering literally to the requirement of law that the plaintiff bears the burden of proving injury in fact (and causation), and in rejecting the plaintiff's premise that some damage could be presumed from mere use of a celebrity's name or image without consent, Amazon Inc. may point to a bumpier ride ahead for celebrities seeking to enforce their claimed rights of publicity.

The right of publicity ' the right of individuals to protect the commercial uses of their names and images ' is now a familiar concept. Given CKX Inc.'s purchase for a reported $50 million of rights to Muhammad Ali's name and the company's $100 million acquisition of Elvis Presley's publicity rights, there can be no question that the right not only can have great value, but has achieved a certain settled status. And yet, the metes and bounds of the right remain elusive at best.

Personal Trademark

Although evolved from the personal right of privacy (the right to be left alone), in reality the right resembles most closely a personal trademark. Just as a trademark protects the public recognition ' and hence selling power ' of commercial names or symbols, the right of publicity protects the commercial value of (or goodwill in) a celebrity's name or image. Most right of publicity actions are joined with claims under Sec. 43(a) of the Lanham Act for use of false designations of origin. However, despite the clearly commercial nature of the right, and notwithstanding that courts routinely state that proof of injury in fact is a required element of the tort, the precedents offer little if any insight into what is or is not injurious to the commercial value of a celebrity's name or image.

The right is plainly meant to protect commercial interests. See , eg , White v . Samsung Electronics Assocs. , 971 F.2d 1395, 1402 (9th Cir. 1992) (quoting Eastwood v. Superior Court , 149 Cal. App.3d 409, 417, 198 Cal. Rptr. 342 (1983)); Donchez v. Coors Brewing Co. , 392 F.3d 1211, 1220 (10th Cir 2004). Yet, it isn't unheard of for courts considering complained-of commercial injury to cite the celebrity's emotional distress and personal angst as proof of harm. See, eg, Waits v. Frito Lay Inc . 978 F.2d 1093, 1103 (9th Cir. 1992) ('Although the injury stemming from violation of the right of publicity 'may be largely, or even wholly, of an economic or material nature,' we have recognized that 'it is quite possible that the appropriation of the identity of a celebrity may induce humiliation, embarrassment and mental distress.”) (quoting Motschenbacher v. R.J. Reynolds Tobacco Co. , 498 F.2d 821, 824 n.11 (9th Cir. 1974)). And even while acknowledging that commercial injury is what distinguishes the right of publicity from the right of privacy, at least one leading commentator has suggested there should be no need actually to prove either commercial injury to the plaintiff or financial gain to the defendant. 1 J. Thomas McCarthy, The Rights of Publicity and Privacy, Sec. 3:2 at 113 (2d ed. 2006).

The Restatement (Third) of Unfair Competition (1995) does set forth various factors relevant to assessing possible monetary relief. These include:

• Actual evidence of pecuniary loss (or gain by the accused infringer);
• Extent of the appropriation;
• Adequacy of other remedies;
• Intent of the accused; and
• Delay or misconduct by the plaintiff.

Id. 49(2)(a)(f).

Yet these concepts remain largely inchoate, as few if any cases have discussed or analyzed what they signify. An exception, and hence potentially important evolutionary step, is Amazon Inc. v. Cannondale Corp., 99 CV 00571 (EWN) (D. Colo. 2006). In that case, the court granted summary judgment dismissing the complaint of the management company for the former world champion mountain bike racer, Melissa 'Missy' Giove, for failure to prove injury in fact when her picture appeared in Cannondale's catalog after she was no longer on the Cannondale team. In so ruling, the court expressly rejected the plaintiff's contention that injury could be inferred without direct proof, simply from the alleged unauthorized nature of the use; thus demonstrating the importance of actually proving injury in fact.

In the biking world (much like the car industry), manufacturers publish product catalogs in the fall before the product year. Hence, in 1998, when Giove was still on the mountain biking team sponsored by Cannondale (among others), Cannondale produced and published its 1999 catalog. The team (a separate legal entity from the bike company) did not renew her contract for 1999, but her picture nonetheless remained in the 1999 Cannondale catalog. Amazon's contract with the team arguably limited the team's right to use her name or image to the term of the contract, but the team's contract with Cannondale contained no such limitation.

No Harm, No Foul

Although the court didn't disentangle the contractual issues concerning Cannondale's right to continue using Giove's name or image after she ceased to be on the team, it did conclude that Giove's management company failed to prove it sustained any injury. The company attempted unsuccessfully to identify various types of harm, including unwanted continued association with Cannondale, potential loss of sponsorships, loss of control and injury to reputation. In part, the absence of identifiable harm reflected specific circumstances of the case, such as the small size and lack of prominence of the pictures; the fact that it was impossible to distinguish Giove's concededly proper association with Cannondale after 5 years actually racing for the team as against the contested effects of a few small pictures in a 96-page catalog once she no longer did. And because the pictures all accurately, and favorably, reflected her actual time on the team, there was nothing inherently objectionable about any of them. In part, the finding of no actual harm also reflected the blunt fact that the plaintiffs' Chief Operating Officer (COO) admitted in deposition testimony he could identify no actual harm in any of the categories of injury he identified. But in a broader sense, part of the COO's difficulty articulating how the company was injured may have revealed a more universal aspect of right of publicity cases, yet one often unnoticed; namely, the difficulty of demonstrating diminution of something so indefinite in scope as the value of a celebrity's name or image. Given the abstract nature of the right, it is difficult enough to measure the metes and bounds of an uninfringed set of rights, much less to gauge the diminishment of those dimensions when an alleged infringement occurs. Or, put differently, if the publicists are right that no publicity is bad publicity, many, even unauthorized, uses of a celebrity name or image will be without harmful effect ' and may even be beneficial.

Determining Damages

In lieu of an analysis of injury in fact, the plaintiff-celebrity typically hires a damages expert to opine that the value of the unauthorized use of his or her name or image is $X (where 'X' often happens to be a six- or seven-figure number). In Waits, for instance, relying on expert testimony, the court was able to determine a value for the use of Waits' singing voice (which the defendants took for free by hiring an imitator to sing in a television commercial). The court noted that 'from the testimony of Waits' expert witness, the jury could have inferred that if Waits ever wanted to do a commercial in the future, the fee he could command would be lowered by $50,000 to $150,000 because of the Doritos commercial.' 978 F.2d at 1104. Regardless of whether, or how closely, the number reflects reality, that frequently ends the inquiry into whether there has been injury in fact. The defendant can challenge the expert report (including with its own damages expert), but the question whether the defendant should have to remunerate at all is transformed into one of how much is enough ' a factual dispute, in other words, requiring trial. In Amazon Inc., however, the plaintiff didn't retain an expert (or if it did, the expert's opinion was so unfavorable as to be suppressed), thus allowing the court to examine more closely the nature of the injury alleged and enter judgment as a matter of law.

An expert appraisal of the value of a particular image, where relevant, is more likely to bear some relation to the benefit the defendant has received ' arguably a form of unjust enrichment ' than it is to reflect any harm caused to the plaintiff. Perhaps benefit to the defendant should generally have some independent relevance. Yet, the Restatement (Third) of Unfair Competition suggests that a court shouldn't even address the question of a defendant's profits (or unjust enrichment) unless there first is a finding of bad faith. The Restatement thus makes clear that '[m]onetary relief for an appropriation of the commercial value of a person's identity can consist of either compensatory damages measured by the loss to the plaintiff or restitutionary relief measured by the unjust gain to the defendant.' Sec. 49 cmt. a. The Restatement likewise specifies that '[a]n accounting of ' profits from an unauthorized use of the plaintiff's identity is most often justified as a means of deterring infringement and recapturing gains attributable to wrongful conduct' and hence may be 'inappropriate in the case of an innocent infringer.' Id. at Sec. 49 cmt. C (emphasis added). This approach for the right of publicity parallels at least certain general thinking concerning the law of unfair competition. See, Restatement Sec. 37(1)(a) (an award of an infringer's profits for unfair competition requires a showing of inequitable conduct, such as willful infringement).

The Amazon Result

Without resolving whether a finding of bad faith is a prerequisite to recovering a defendants' profits, indeed, having already found years earlier that Cannondale acted in good faith ' Amazon Inc. v. Cannondale Corp ., 56 U.S.P.Q.2d 1568 (D. Colo. 2000), remanded on other grounds , 61 U.S.P.Q.2d 1047 (10th Cir. 2001) ' the Amazon Inc. court concluded that Cannondale reaped no cognizable benefit from using the pictures. The pictures were relatively small and appeared only on inner pages of the 96-page catalog, not on its cover and not in a prominent way to call attention to Giove. The court also rejected Amazon's theory that Cannondale benefited from not having to redo its catalog to remove the pictures once she left the team. Very simply, the nuisance cost of the glue and paper and possible reprinting expenses of an entire catalog bore no rational relationship to the value of three particular pictures in the catalog. Nor was the court persuaded that the amount the team paid Amazon for Giove's professional racing services in 1998 could be used in lieu of an actual valuation of the pictures. Rejecting the plaintiff's argument that the only way Cannondale could have obtained the contractual right to use Giove's pictures in 1999 would have been to re-sign her to the team (for the full amount of her 1998 contract), the court held this wasn't like cases in which a prior contract for use of specific materials could be used to measure the value of later uses of the very same materials. Welch v. Mr. Christmas , 57 N.Y.2d 143, 454 N.Y.S.2d 971 (N.Y. 1982). More than simply a problem of apportioning which part of Giove's prior contract was for use of her publicity rights in general, or whether contractual consent was even required for the use in issue, the professional services contract simply wasn't a proper measure of any given pictures used in the specific manner that they were.

The simple significance of Amazon Inc. then is that the right of publicity isn't a strict liability tort. That a monetary number can be assigned to a particular image or other subject matter protectable by the right of publicity is logically distinct from whether that number reflects an actual loss to the plaintiff or benefit to the defendant. Unless it is assumed that every unauthorized use of a celebrity name or image is per se injurious (ie, as a matter of law), it must remain an open question whether any given use is in fact harmful.

In adhering literally to the requirement of law that the plaintiff bears the burden of proving injury in fact (and causation), and in rejecting the plaintiff's premise that some damage could be presumed from mere use of a celebrity's name or image without consent, Amazon Inc. may point to a bumpier ride ahead for celebrities seeking to enforce their claimed rights of publicity.