Expansion of Right of Publicity Continues To Create Tensions with First Amendment

In January 2010, Weatherproof Garment Co. erected a large billboard in Times Square featuring President Obama standing on the Great Wall of China, wearing one of Weatherproof's jackets. The tagline read simply, “A Leader in Style.” The photo was taken by Charles Dharapak of The Associated Press during President Obama's November 2009 trip to China.

Weatherproof obtained the photograph through The Associated Press's photo service, but never sought permission from the White House or President Obama to use his image in the ad. Weatherproof president Freddie Stollmack did not see the need for permission because there is no endorsement of the product by President Obama in the traditional sense. Stollmack stated that it was simply, “just a great jacket on a great-looking President.” The White House, which has had a long-standing policy disapproving of the use of the President's name and likeness for commercial purposes, disagreed. Eventually, Weatherproof agreed to take down the advertisement.

The Weatherproof incident came just days after People for Ethical Treatment of Animals (PETA) used First Lady Michelle Obama's image without her permission, for its “Fur-Free and Fabulous!” campaign. The PETA posters, plastered around the Washington, DC, area, featured Mrs. Obama, along with Carrie Underwood, Oprah Winfrey and Tyra Banks.

PETA president Ingrid Newkirk regards PETA's use of Michelle Obama's image as protected speech under the First Amendment. Newkirk had no expectations that the White House or the First Lady would fund or endorse the campaign. Instead, PETA argues that was simply reporting a fact, that the First Lady does not wear fur, and stating its opinion, that “furless is fabulous.”

While the White House confirmed that Mrs. Obama does not wear fur, they were emphatic that she did not give consent to have her image used in the PETA campaign. Initially refusing to take down the posters, PETA finally relented and agreed to pull the ad campaign featuring the First Lady. These two incidents were resolved without any mention of litigation. Nevertheless, even the White House acknowledges the tension between right of publicity and freedom of speech. The White House recognizes that it must balance the desire to control the use of President Obama and the First Family's images with the worldwide fascination about the Obamas and the public's First Amendment rights of the freedom of speech.

The Right of Publicity

The right of publicity is the right to control the commercial use of one's own identity. Today, the majority of courts recognize that this right extends to every individual, not just celebrities. As a practical matter, however, right of publicity cases typically involve celebrities, whose names and likenesses help advertisers sell their products.

State law governs the right of publicity claims. Currently, 19 states, including California and New York, protect the right of publicity via statute. In addition, 28 states protect the right of publicity via common law.

Because the right of publicity is governed by state law, the degree to which it protects a person's identity varies from state to state. Utah, for example, protects an individual's “personal identity,” which includes his or her “name, title, picture, or portrait.” California protects against the unauthorized use of “another's name, voice, signature, photograph, or likeness.” Indiana protects a personality's “name, voice, signature, photograph, image, likeness, distinctive appearance, gestures or mannerism.”

The duration of the protection also varies from state to state. Some states, such as New York, extinguish the right of publicity upon death. Other states allow for the right of publicity to continue postmortem for a period of time. For example, Indiana's postmortem right of publicity lasts 100 years after death, longer than California's 70-year term. Tennessee allows for the right of publicity protection to last in perpetuity, if the person's likeness is used continually. [Editor's note: A legislative proposal was recently introduced in New York to make the right of publicity descendible for 70 years after death.]

Balancing the Right of
Publicity Against the
First Amendment

The right of publicity is limited by the First Amendment, meaning that certain uses of another's name, image, or likeness may be protected speech or expression under the First Amendment. First Amendment protected speech may be a defense to a right of publicity claim. The First Amendment, however, does not protect all speech and expression. The scope of protection afforded by the First Amendment depends on the type of speech or expression. Expressive speech or communicative speech ' such as political speech, news and matters of public interest, parodies, works of fiction and artistic expression ' is afforded the most protection under the First Amendment. Commercial speech, speech that does “no more than propose a commercial transaction,” is afforded the least amount of First Amendment protection.

Speech that includes both communicative and commercial elements presents a challenge in determining what type and what level of protection it is entitled to. If an individual were allowed to control all uses of his or her identity, even the use of such identity in another's expressive speech, such broad protection under the right of publicity may lead to the suppression of ideas and the chilling of free speech. On the other hand, if the commercial elements outweigh the communicative elements in the speech, the First Amendment cannot be used to shield a violation of an individual's right of publicity. There must be careful balancing between the private and public interests.

Thus far, however, the U.S. Supreme Court has given little guidance on how to balance the right of publicity against the First Amendment and to resolve the tension between the private property interest and the public's interest in free expression. To date, Zacchini v. Scripps-Howard Broadcasting, 433 U.S. 562 (1977), remains the sole decision by the Supreme Court dealing with the clash between the right of publicity and the First Amendment. In Zacchini, the court refused to extend First Amendment protection to the station's broadcast of Zacchini's entire “human canonball” act, finding that Zacchini's ability to earn a living was threatened by the broadcast.

Since the Zacchini decision over three decades ago, the Court has not given any more guidance on how to balance the right of publicity against the First Amendment. Furthermore, the Court's decision in Zacchini, which focused on the “entire act” aspect of the broadcast, failed to set a standard to distinguish protected versus unprotected speech in future right of publicity claims.

Lower courts, in an attempt to better clarify the line surrounding protected speech, have developed a number of tests. In 2001, the California Supreme Court adopted the “transformative test.” In Comedy III Productions Inc. v. Gary Saderup Inc., 25 Cal. 4th 387 (Cal. 2001), the court held that Saderup's trivial variation on the Three Stooges' likenesses violated the Stooges' right of publicity because it was not sufficiently “transformative” to receive First Amendment protection for expressive speech.

In the Obama ads discussed above, Weatherproof and PETA simply took the AP photograph of President Obama and the official White House portrait of the First Lady and used them in their ads. Applying the transformative test, in both cases, the ads likely would not be transformative enough to constitute expressive speech.

The Transformative Use Test

The transformative use test, however, has been criticized as vague and inconsistent. Moreover, such lack of clear guidelines may result in judges acting as art critics in order to decide what constitutes a sufficient transformation to qualify for First Amendment protection. For example, the judge in Comedy III decided that Saderup's charcoal drawings of the Three Stooges were not sufficiently transformative, though the Comedy III ruling recognized that Andy Warhol's silkscreens of Marilyn Monroe and Elvis Presley had been sufficiently transformative and not merely commercial exploitations.

In 2003, hoping to give a more consistent guideline, the Supreme Court of Missouri articulated the “predominant use test.” In Doe v. TCI Cablevision, 110 S.W. 3d 363 (Mo. 2003), the court held that products that predominantly exploit an individual's identity for its commercial value are not entitled to First Amendment protection, even if they contain some expressive content.

Applying the predominant use test, Weatherproof's President Obama ad likely would not be entitled to First Amendment protection, whereas PETA's ad campaign featuring the First Lady likely would. Similar to TCI Cablevision, the use of President Obama's image is predominantly for the purposes of selling a product. The predominant use for the PETA ad, on the other hand, is not to sell a commercial product, but to promote a political agenda, which would fall under the category of protected expressive speech.

Have the Courts Gone Too Far?

As the discussion above illustrates, the courts are still coming to grips with how to balance between the right of publicity and the First Amendment. Furthermore, some people are questioning whether the current scope of right of publicity protection has gone too far and is now encroaching on First Amendment rights.

Today, the right of publicity extends beyond a person's name or likeness to a broader concept of identity. Right of publicity protection may cover the use of any personal element that “evokes” an individual's identity and allows the public to identify that person, even if that person's name or likeness is not actually used.

For example, in the influential decision White v. Samsung Electronics of America, Inc., 971 F.2d 1395 (9th Cir. 1992), the federal appeals court held that an advertisement featuring a robot wearing a blonde wig and a gown appropriated game show hostess Vanna White's identity even though the ad did not actually use White's name or likeness. Similarly, in another influential decision, Carson v. Here's Johnny Portable Toilets Inc., 698 F.2d 831 (6th Cir. 1983), the appeals court found that marketing portable toilets under the brand name “Here's Johnny” sufficiently evoked the identity of Johnny Carson.

In August 2009, White House lawyers contacted the nonprofit organization Physicians Committee for Responsible Medicine (PCRM) and asked that an ad promoting healthy school lunches be taken down. The ad featured a girl, perhaps reminiscent of Sasha Obama, with the words, “President Obama's daughters get healthy school lunches. Why don't I?” The ad did not feature or include either the names or images of Sasha or Malia Obama.

Under the courts' rulings in the White and Carson cases, is the evocation of an individual's identity, without the use of that person's name or likeness a violation of someone's right of publicity? Or have the courts gone too far in protecting the right of publicity, to the point of suppressing free speech?

Conclusion

Right of publicity law continues to evolve. For an advertiser today, there are a number of factors to consider in order avoid violating an individual's right of publicity.

• First, find out the scope and depth of the right of publicity protection, which may vary from state to state.
• Second, determine whether the ad uses an individual's name, likeness or characteristics sufficient to invoke his or her identity.
• Third, evaluate whether a First Amendment defense exists, ( i.e., whether the ad constitutes expressive communications).

Finally, keep in mind that the courts are still figuring out the appropriate standards and the laws are still evolving. The outcome of any given right of publicity case can be difficult to predict. To avoid the risk, advertisers should consider seeking out a license.

For Twitter and LinkedIn followers, subscribe to the Entertainment Law & Finance newsletter at a special introductory rate. Click here. This offer is valid for new subscribers only.

Broadly defined, the right of publicity is a person's right to control the commercial use of his or her identity. It has been over half a century since the term “right of publicity” was first coined by Judge Jerome Frank in 1953. ( See , Haelan Laboratories v. Topps Chewing Gum , 202 F.2d 866 (2d Cir. 1953).) Since that time, courts have been struggling to define the scope of the right of publicity protection, and to resolve the inherent conflicts between the right of publicity and the freedom of expression embodied in the First Amendment.

Recently, two incidents involving one of the world's most famous couples, President Barack Obama and First Lady Michelle Obama, once again brought the focus onto right of publicity issues, as well as potential First Amendment defenses to right of publicity claims.

Unauthorized Use of Obama Images in Advertisements

In January 2010, Weatherproof Garment Co. erected a large billboard in Times Square featuring President Obama standing on the Great Wall of China, wearing one of Weatherproof's jackets. The tagline read simply, “A Leader in Style.” The photo was taken by Charles Dharapak of The Associated Press during President Obama's November 2009 trip to China.

Weatherproof obtained the photograph through The Associated Press's photo service, but never sought permission from the White House or President Obama to use his image in the ad. Weatherproof president Freddie Stollmack did not see the need for permission because there is no endorsement of the product by President Obama in the traditional sense. Stollmack stated that it was simply, “just a great jacket on a great-looking President.” The White House, which has had a long-standing policy disapproving of the use of the President's name and likeness for commercial purposes, disagreed. Eventually, Weatherproof agreed to take down the advertisement.

The Weatherproof incident came just days after People for Ethical Treatment of Animals (PETA) used First Lady Michelle Obama's image without her permission, for its “Fur-Free and Fabulous!” campaign. The PETA posters, plastered around the Washington, DC, area, featured Mrs. Obama, along with Carrie Underwood, Oprah Winfrey and Tyra Banks.

PETA president Ingrid Newkirk regards PETA's use of Michelle Obama's image as protected speech under the First Amendment. Newkirk had no expectations that the White House or the First Lady would fund or endorse the campaign. Instead, PETA argues that was simply reporting a fact, that the First Lady does not wear fur, and stating its opinion, that “furless is fabulous.”

While the White House confirmed that Mrs. Obama does not wear fur, they were emphatic that she did not give consent to have her image used in the PETA campaign. Initially refusing to take down the posters, PETA finally relented and agreed to pull the ad campaign featuring the First Lady. These two incidents were resolved without any mention of litigation. Nevertheless, even the White House acknowledges the tension between right of publicity and freedom of speech. The White House recognizes that it must balance the desire to control the use of President Obama and the First Family's images with the worldwide fascination about the Obamas and the public's First Amendment rights of the freedom of speech.

The Right of Publicity

The right of publicity is the right to control the commercial use of one's own identity. Today, the majority of courts recognize that this right extends to every individual, not just celebrities. As a practical matter, however, right of publicity cases typically involve celebrities, whose names and likenesses help advertisers sell their products.

State law governs the right of publicity claims. Currently, 19 states, including California and New York, protect the right of publicity via statute. In addition, 28 states protect the right of publicity via common law.

Because the right of publicity is governed by state law, the degree to which it protects a person's identity varies from state to state. Utah, for example, protects an individual's “personal identity,” which includes his or her “name, title, picture, or portrait.” California protects against the unauthorized use of “another's name, voice, signature, photograph, or likeness.” Indiana protects a personality's “name, voice, signature, photograph, image, likeness, distinctive appearance, gestures or mannerism.”

The duration of the protection also varies from state to state. Some states, such as New York, extinguish the right of publicity upon death. Other states allow for the right of publicity to continue postmortem for a period of time. For example, Indiana's postmortem right of publicity lasts 100 years after death, longer than California's 70-year term. Tennessee allows for the right of publicity protection to last in perpetuity, if the person's likeness is used continually. [Editor's note: A legislative proposal was recently introduced in New York to make the right of publicity descendible for 70 years after death.]

Balancing the Right of
Publicity Against the
First Amendment

The right of publicity is limited by the First Amendment, meaning that certain uses of another's name, image, or likeness may be protected speech or expression under the First Amendment. First Amendment protected speech may be a defense to a right of publicity claim. The First Amendment, however, does not protect all speech and expression. The scope of protection afforded by the First Amendment depends on the type of speech or expression. Expressive speech or communicative speech ' such as political speech, news and matters of public interest, parodies, works of fiction and artistic expression ' is afforded the most protection under the First Amendment. Commercial speech, speech that does “no more than propose a commercial transaction,” is afforded the least amount of First Amendment protection.

Speech that includes both communicative and commercial elements presents a challenge in determining what type and what level of protection it is entitled to. If an individual were allowed to control all uses of his or her identity, even the use of such identity in another's expressive speech, such broad protection under the right of publicity may lead to the suppression of ideas and the chilling of free speech. On the other hand, if the commercial elements outweigh the communicative elements in the speech, the First Amendment cannot be used to shield a violation of an individual's right of publicity. There must be careful balancing between the private and public interests.

Thus far, however, the U.S. Supreme Court has given little guidance on how to balance the right of publicity against the First Amendment and to resolve the tension between the private property interest and the public's interest in free expression. To date, Zacchini v. Scripps-Howard Broadcasting , 433 U.S. 562 (1977), remains the sole decision by the Supreme Court dealing with the clash between the right of publicity and the First Amendment. In Zacchini, the court refused to extend First Amendment protection to the station's broadcast of Zacchini's entire “human canonball” act, finding that Zacchini's ability to earn a living was threatened by the broadcast.

Since the Zacchini decision over three decades ago, the Court has not given any more guidance on how to balance the right of publicity against the First Amendment. Furthermore, the Court's decision in Zacchini, which focused on the “entire act” aspect of the broadcast, failed to set a standard to distinguish protected versus unprotected speech in future right of publicity claims.

Lower courts, in an attempt to better clarify the line surrounding protected speech, have developed a number of tests. In 2001, the California Supreme Court adopted the “transformative test.” In Comedy III Productions Inc. v. Gary Saderup Inc. , 25 Cal. 4th 387 (Cal. 2001), the court held that Saderup's trivial variation on the Three Stooges' likenesses violated the Stooges' right of publicity because it was not sufficiently “transformative” to receive First Amendment protection for expressive speech.

In the Obama ads discussed above, Weatherproof and PETA simply took the AP photograph of President Obama and the official White House portrait of the First Lady and used them in their ads. Applying the transformative test, in both cases, the ads likely would not be transformative enough to constitute expressive speech.

The Transformative Use Test

The transformative use test, however, has been criticized as vague and inconsistent. Moreover, such lack of clear guidelines may result in judges acting as art critics in order to decide what constitutes a sufficient transformation to qualify for First Amendment protection. For example, the judge in Comedy III decided that Saderup's charcoal drawings of the Three Stooges were not sufficiently transformative, though the Comedy III ruling recognized that Andy Warhol's silkscreens of Marilyn Monroe and Elvis Presley had been sufficiently transformative and not merely commercial exploitations.

In 2003, hoping to give a more consistent guideline, the Supreme Court of Missouri articulated the “predominant use test.” In Doe v. TCI Cablevision , 110 S.W. 3d 363 (Mo. 2003), the court held that products that predominantly exploit an individual's identity for its commercial value are not entitled to First Amendment protection, even if they contain some expressive content.

Applying the predominant use test, Weatherproof's President Obama ad likely would not be entitled to First Amendment protection, whereas PETA's ad campaign featuring the First Lady likely would. Similar to TCI Cablevision, the use of President Obama's image is predominantly for the purposes of selling a product. The predominant use for the PETA ad, on the other hand, is not to sell a commercial product, but to promote a political agenda, which would fall under the category of protected expressive speech.

Have the Courts Gone Too Far?

As the discussion above illustrates, the courts are still coming to grips with how to balance between the right of publicity and the First Amendment. Furthermore, some people are questioning whether the current scope of right of publicity protection has gone too far and is now encroaching on First Amendment rights.

Today, the right of publicity extends beyond a person's name or likeness to a broader concept of identity. Right of publicity protection may cover the use of any personal element that “evokes” an individual's identity and allows the public to identify that person, even if that person's name or likeness is not actually used.

For example, in the influential decision White v. Samsung Electronics of America, Inc. , 971 F.2d 1395 (9th Cir. 1992), the federal appeals court held that an advertisement featuring a robot wearing a blonde wig and a gown appropriated game show hostess Vanna White's identity even though the ad did not actually use White's name or likeness. Similarly, in another influential decision, Carson v. Here's Johnny Portable Toilets Inc. , 698 F.2d 831 (6th Cir. 1983), the appeals court found that marketing portable toilets under the brand name “Here's Johnny” sufficiently evoked the identity of Johnny Carson.

In August 2009, White House lawyers contacted the nonprofit organization Physicians Committee for Responsible Medicine (PCRM) and asked that an ad promoting healthy school lunches be taken down. The ad featured a girl, perhaps reminiscent of Sasha Obama, with the words, “President Obama's daughters get healthy school lunches. Why don't I?” The ad did not feature or include either the names or images of Sasha or Malia Obama.

Under the courts' rulings in the White and Carson cases, is the evocation of an individual's identity, without the use of that person's name or likeness a violation of someone's right of publicity? Or have the courts gone too far in protecting the right of publicity, to the point of suppressing free speech?

Conclusion

Right of publicity law continues to evolve. For an advertiser today, there are a number of factors to consider in order avoid violating an individual's right of publicity.

• First, find out the scope and depth of the right of publicity protection, which may vary from state to state.
• Second, determine whether the ad uses an individual's name, likeness or characteristics sufficient to invoke his or her identity.
• Third, evaluate whether a First Amendment defense exists, ( i.e., whether the ad constitutes expressive communications).

Finally, keep in mind that the courts are still figuring out the appropriate standards and the laws are still evolving. The outcome of any given right of publicity case can be difficult to predict. To avoid the risk, advertisers should consider seeking out a license.

For Twitter and LinkedIn followers, subscribe to the Entertainment Law & Finance newsletter at a special introductory rate. Click here. This offer is valid for new subscribers only.