Courts Are Split On Tests for Right of Publicity

The California Court of Appeal relied on a similarity test in prior California Supreme Court cases in recently finding that three video-game companies had a First Amendment right to create a character that shared some traits with Kieren Kirby, or 'Lady Miss Kier,' the former lead singer of the 1990s funk band Deee-Lite. Kirby v. Sega of America, 144 Cal.App.4th 47, 50 Cal.Rptr.3d 607 (Calif. Ct. App.). But in a 2003 Missouri Supreme Court decision involving former St. Louis Blues hockey player Tony Twist, the judges found that Twist might have a case alleging that his name and likeness were exploited to sell the comic book 'Spawn.' Doe v. TCI Cablevision, 110 S.W.3d 363 (Mo. 2003).

Courtney Palko, a lawyer at Los Angeles-based Blecher & Collins who represents Kirby, said: 'Now that there's this Missouri case out there, I think there is a square split [in the courts].'

Kirby filed suit in 2003 against the makers of a video game featuring a character named Ulala, a reporter in the 25th century who wears a short skirt and platform boots and has pink hair ' all physical similarities to Kirby. In its ruling, the California appellate panel granted summary judgment after finding too many dissimilarities.

Tod Gamlen, a partner in the Palo Alto, CA, office of Baker & McKenzie who represents Sega and the other defendants, said that the case is the first in California to apply First Amendment rules to right-of-publicity claims against video games. He also said the case is consistent with a prior California Supreme Court ruling in Winter v. DC Comics, 30 Cal. 4th 881 (2003), which applied the 'transformative' test in finding that two half-worm, half-human creatures in a comic book had been substantially transformed from looking like musicians Johnny and Edgar Winter. That test first came about in Comedy III Productions v. Saderup, 25 Cal. 4th 387 (2001).

'In Missouri, the question is whether it's between a commercial use and an expressive use ' which one is predominant,' said Stephen Barnett, a professor of law emeritus at the University of California, Berkeley School of Law.

Tony Twist had appealed to the Missouri Supreme Court after losing a judgment in a case filed against Todd McFarlane Productions Inc. In 2003, the Supreme Court reversed on the ground that McFarlane had used Twist's name and likeness primarily to sell its comic books, not for creative expression.

'A case could be made that [McFarlane] intended to use this for commercial benefit of his product,' said Twist's lawyer, Bob Blitz, a partner at Clayton, MO-based Blitz Bardgett & Deutsch.

In the second trial, a jury awarded Twist $15 million, which was upheld in June by the Missouri Court of Appeals for the Eastern District. Doe v. McFarlane, ED85283 (Mo. Ct. App. 2006). Michael Kahn, a lawyer in the St. Louis office of Kansas City, MO-based Blackwell Sanders Peper Martin who represents McFarlane, said he has applied to appeal the case to the Missouri Supreme Court. If that fails, Kahn said he would petition the U.S. Supreme Court, particularly given varying case law. 'It creates a very profound First Amendment issue for most forms of entertainment and media,' he said.

The California Court of Appeal relied on a similarity test in prior California Supreme Court cases in recently finding that three video-game companies had a First Amendment right to create a character that shared some traits with Kieren Kirby, or 'Lady Miss Kier,' the former lead singer of the 1990s funk band Deee-Lite. Kirby v. Sega of America , 144 Cal.App.4th 47, 50 Cal.Rptr.3d 607 (Calif. Ct. App.). But in a 2003 Missouri Supreme Court decision involving former St. Louis Blues hockey player Tony Twist, the judges found that Twist might have a case alleging that his name and likeness were exploited to sell the comic book 'Spawn.' Doe v. TCI Cablevision , 110 S.W.3d 363 (Mo. 2003).

Courtney Palko, a lawyer at Los Angeles-based Blecher & Collins who represents Kirby, said: 'Now that there's this Missouri case out there, I think there is a square split [in the courts].'

Kirby filed suit in 2003 against the makers of a video game featuring a character named Ulala, a reporter in the 25th century who wears a short skirt and platform boots and has pink hair ' all physical similarities to Kirby. In its ruling, the California appellate panel granted summary judgment after finding too many dissimilarities.

Tod Gamlen, a partner in the Palo Alto, CA, office of Baker & McKenzie who represents Sega and the other defendants, said that the case is the first in California to apply First Amendment rules to right-of-publicity claims against video games. He also said the case is consistent with a prior California Supreme Court ruling in Winter v. DC Comics , 30 Cal. 4th 881 (2003), which applied the 'transformative' test in finding that two half-worm, half-human creatures in a comic book had been substantially transformed from looking like musicians Johnny and Edgar Winter. That test first came about in Comedy III Productions v. Saderup , 25 Cal. 4th 387 (2001).

'In Missouri, the question is whether it's between a commercial use and an expressive use ' which one is predominant,' said Stephen Barnett, a professor of law emeritus at the University of California, Berkeley School of Law.

Tony Twist had appealed to the Missouri Supreme Court after losing a judgment in a case filed against Todd McFarlane Productions Inc. In 2003, the Supreme Court reversed on the ground that McFarlane had used Twist's name and likeness primarily to sell its comic books, not for creative expression.

'A case could be made that [McFarlane] intended to use this for commercial benefit of his product,' said Twist's lawyer, Bob Blitz, a partner at Clayton, MO-based Blitz Bardgett & Deutsch.

In the second trial, a jury awarded Twist $15 million, which was upheld in June by the Missouri Court of Appeals for the Eastern District. Doe v. McFarlane, ED85283 (Mo. Ct. App. 2006). Michael Kahn, a lawyer in the St. Louis office of Kansas City, MO-based Blackwell Sanders Peper Martin who represents McFarlane, said he has applied to appeal the case to the Missouri Supreme Court. If that fails, Kahn said he would petition the U.S. Supreme Court, particularly given varying case law. 'It creates a very profound First Amendment issue for most forms of entertainment and media,' he said.