Keeping Track of Celebrity Image Use

Protecting Paris Hilton's image can involve some complicated legal maneuvering. When the heiress failed to pay a bill, the personal belongings in her storage locker were sold and, in January, ended up on Paris Exposed.com. Her legal team at L.A.'s Kinsella Weitzman Iser Kump & Aldisert quickly won a temporary restraining order against the site, which promised paying subscribers they could view Hilton's diary, racy photographs and even medical records. But the defendants scattered, and the site soon resurfaced on servers outside the United States.

For celebrities, image is everything. For the entertainment lawyers who represent their interests, that means confronting ever more complex efforts to profit from (or poison) a client's fame. Among the talent-side lawyers, there's a small club of firms doing the lion's share of the image work for the big stars. Insiders point to Lavely & Singer; Dreier Stein & Kahan; Kinsella Weitzman; and the well-known lawyer to the stars, Bertram Fields. Some cases are straightforward. In June, for example, lawyers at L.A.'s Lavely & Singer representing Britney Spears quickly forced a Florida radio station to remove billboards displaying the pop star's shaved head alongside that of the station's DJ under the words 'Total Nut Jobs.'

Image-related concerns pop up on the corporate side, too. Roger Goff, a transactional lawyer at L.A.'s Goff Law Corp., offers an example from his work for the director and producer of 'Splinter,' the Toby Wilkins horror movie now in production. Actress Jill Wagner wanted to ensure her positive image was protected because she also serves as 'The Mercury Chick' in ongoing Lincoln-Mercury commercials. That involved negotiations to ensure her lines in the film reflected her clean-cut image, Goff said.

The Hilton case presented a new wrinkle, in part because Hilton no longer owned the material. What she did own, her lawyers figured, was the copyright to her diary. 'They legally owned the original, but once they published it, we were able to get screen shots of the page, then we applied to the copyright office for registration,' said Lawrence Iser, a lawyer on the Kinsella Weitzman team. 'Then, we sued.' As for the other material, the team successfully invoked the right of publicity, which in California prevents the unauthorized use of someone's likeness for commercial gain ' the same argument made by Spears' lawyers.

But ParisExposed.com popped back up, adding the taunt that it was doing so 'in jurisdictions that will not bow to the heiress and her overpaid legal team.' 'This is a new brazenness I've never seen before,' said Kinsella associate Gregory Korn. 'They're not only violating the order, but bragging about it.' Korn's team was amending the complaint to add new defendants and considering a contempt motion.

One of the defendants claims the heiress doesn't have a case. Santa Monica attorney Paul Berra represents Nabila Haniss, who purchased and later sold the items displayed on the Web site. (Hilton apparently had most of her sensitive belongings placed in storage after a robbery, but someone forgot to pay the facility or pass along its foreclosure notices.) Berra points to a California code governing self-storage locker foreclosures that he says makes clear that Hilton lost all rights to her belongings ' including her rights to publicity ' at the time of sale. 'She has lost those rights because the bills were not paid,' he said.

First Amendment Interplay

Neil Smith, a long-time IP lawyer at Sheppard, Mullin, Richter & Hampton, says the law surrounding the right to publicity has grown over the years due to greater enforcement efforts. 'There have been quite a number of creative uses ' the outcome of some of them are unpredictable,' he says. That's in part because disputes often pit the right of publicity against the First Amendment. 'The right of publicity is largely unbounded,' said Tyler Ochoa, a Santa Clara University law professor. 'There aren't a lot of checks and balances written into the law itself, and the only balance in favor of the public domain is the First Amendment.'

Twice this decade, the California Supreme Court has taken up right-of-publicity cases to clarify where the right ends and the First Amendment begins. In 2001, the justices ruled against a man who sold T-shirts with his rendering of the Three Stooges, saying the work wasn't expressive enough to garner First Amendment protection. Comedy III Productions Inc. v. Gary Saderup Inc., 25 Cal.4th 387 (Cal. Sup. Ct. 2001). In a second case, in 2003, the justices ruled against the Winter Brothers, a blues-rocking duo that said characters used in a D.C. Comics book were based on their likenesses. The justices said that work was sufficiently expressive to transform the images into art. Winter v. D.C. Comics, 30 Cal.4th 881 (Cal. Sup. Ct. 2003). 'Practitioners in the area now have some more guidance than they did before as to what are and are not permissive usages,' said Douglas Mirell, a partner with Loeb & Loeb. 'If what you have is something more than a mere copy of someone else's name or likeness in an expressive work, it's going to get protection' under the First Amendment.

Dead celebrities are a slightly different matter. In May, a Los Angeles federal judge ruled that publicity rights don't extend to the willed heirs of Marilyn Monroe or others who died before the right was extended to the deceased. A bill in the Legislature, SB 771, would undo that decision.

Expressive use isn't the only First Amendment defense. The fair-use doctrine allows the media, for example, to use celebrity images in news stories. And if that Florida radio station had used Britney Spears in ads aimed at telling potential listeners which artists they'd hear, it would probably be a different situation, Mirell said. Internet transmission hasn't changed how celebrities can defend themselves, but it has made those defenses less effective. Ann Loeb, a partner at Dreier Stein & Kahan, says she recently got something removed from a Web site at a client's behest ' but by then, it had already popped up on 20 to 30 other sites. She had to spend hours tracking those down and demanding removal. 'I don't think the fact we have different technology changes the rules,' adds Richard Idell, an entertainment lawyer in San Francisco, 'but things happen much faster and need to be dealt with in a much quicker way.'

Kellie Schmitt is a reporter for The Recorder, the San Francisco-based daily legal newspaper and an ALM sibling publication of Entertainment Law & Finance.

Protecting Paris Hilton's image can involve some complicated legal maneuvering. When the heiress failed to pay a bill, the personal belongings in her storage locker were sold and, in January, ended up on Paris Exposed.com. Her legal team at L.A.'s Kinsella Weitzman Iser Kump & Aldisert quickly won a temporary restraining order against the site, which promised paying subscribers they could view Hilton's diary, racy photographs and even medical records. But the defendants scattered, and the site soon resurfaced on servers outside the United States.

For celebrities, image is everything. For the entertainment lawyers who represent their interests, that means confronting ever more complex efforts to profit from (or poison) a client's fame. Among the talent-side lawyers, there's a small club of firms doing the lion's share of the image work for the big stars. Insiders point to Lavely & Singer; Dreier Stein & Kahan; Kinsella Weitzman; and the well-known lawyer to the stars, Bertram Fields. Some cases are straightforward. In June, for example, lawyers at L.A.'s Lavely & Singer representing Britney Spears quickly forced a Florida radio station to remove billboards displaying the pop star's shaved head alongside that of the station's DJ under the words 'Total Nut Jobs.'

Image-related concerns pop up on the corporate side, too. Roger Goff, a transactional lawyer at L.A.'s Goff Law Corp., offers an example from his work for the director and producer of 'Splinter,' the Toby Wilkins horror movie now in production. Actress Jill Wagner wanted to ensure her positive image was protected because she also serves as 'The Mercury Chick' in ongoing Lincoln-Mercury commercials. That involved negotiations to ensure her lines in the film reflected her clean-cut image, Goff said.

The Hilton case presented a new wrinkle, in part because Hilton no longer owned the material. What she did own, her lawyers figured, was the copyright to her diary. 'They legally owned the original, but once they published it, we were able to get screen shots of the page, then we applied to the copyright office for registration,' said Lawrence Iser, a lawyer on the Kinsella Weitzman team. 'Then, we sued.' As for the other material, the team successfully invoked the right of publicity, which in California prevents the unauthorized use of someone's likeness for commercial gain ' the same argument made by Spears' lawyers.

But ParisExposed.com popped back up, adding the taunt that it was doing so 'in jurisdictions that will not bow to the heiress and her overpaid legal team.' 'This is a new brazenness I've never seen before,' said Kinsella associate Gregory Korn. 'They're not only violating the order, but bragging about it.' Korn's team was amending the complaint to add new defendants and considering a contempt motion.

One of the defendants claims the heiress doesn't have a case. Santa Monica attorney Paul Berra represents Nabila Haniss, who purchased and later sold the items displayed on the Web site. (Hilton apparently had most of her sensitive belongings placed in storage after a robbery, but someone forgot to pay the facility or pass along its foreclosure notices.) Berra points to a California code governing self-storage locker foreclosures that he says makes clear that Hilton lost all rights to her belongings ' including her rights to publicity ' at the time of sale. 'She has lost those rights because the bills were not paid,' he said.

First Amendment Interplay

Neil Smith, a long-time IP lawyer at Sheppard, Mullin, Richter & Hampton, says the law surrounding the right to publicity has grown over the years due to greater enforcement efforts. 'There have been quite a number of creative uses ' the outcome of some of them are unpredictable,' he says. That's in part because disputes often pit the right of publicity against the First Amendment. 'The right of publicity is largely unbounded,' said Tyler Ochoa, a Santa Clara University law professor. 'There aren't a lot of checks and balances written into the law itself, and the only balance in favor of the public domain is the First Amendment.'

Twice this decade, the California Supreme Court has taken up right-of-publicity cases to clarify where the right ends and the First Amendment begins. In 2001, the justices ruled against a man who sold T-shirts with his rendering of the Three Stooges, saying the work wasn't expressive enough to garner First Amendment protection. Comedy III Productions Inc. v. Gary Saderup Inc. , 25 Cal.4th 387 (Cal. Sup. Ct. 2001). In a second case, in 2003, the justices ruled against the Winter Brothers, a blues-rocking duo that said characters used in a D.C. Comics book were based on their likenesses. The justices said that work was sufficiently expressive to transform the images into art. Winter v. D.C. Comics , 30 Cal.4th 881 (Cal. Sup. Ct. 2003). 'Practitioners in the area now have some more guidance than they did before as to what are and are not permissive usages,' said Douglas Mirell, a partner with Loeb & Loeb. 'If what you have is something more than a mere copy of someone else's name or likeness in an expressive work, it's going to get protection' under the First Amendment.

Dead celebrities are a slightly different matter. In May, a Los Angeles federal judge ruled that publicity rights don't extend to the willed heirs of Marilyn Monroe or others who died before the right was extended to the deceased. A bill in the Legislature, SB 771, would undo that decision.

Expressive use isn't the only First Amendment defense. The fair-use doctrine allows the media, for example, to use celebrity images in news stories. And if that Florida radio station had used Britney Spears in ads aimed at telling potential listeners which artists they'd hear, it would probably be a different situation, Mirell said. Internet transmission hasn't changed how celebrities can defend themselves, but it has made those defenses less effective. Ann Loeb, a partner at Dreier Stein & Kahan, says she recently got something removed from a Web site at a client's behest ' but by then, it had already popped up on 20 to 30 other sites. She had to spend hours tracking those down and demanding removal. 'I don't think the fact we have different technology changes the rules,' adds Richard Idell, an entertainment lawyer in San Francisco, 'but things happen much faster and need to be dealt with in a much quicker way.'

Kellie Schmitt is a reporter for The Recorder, the San Francisco-based daily legal newspaper and an ALM sibling publication of Entertainment Law & Finance.