Mob Wives Star's Suit Sparks New Look at NY Publicity Rights

Any person whose name, portrait, picture, or voice is used within this state for advertising purposes or for the purposes of trade without written consent first obtained as above provided [in Section 50 of the Civil Rights Law] may maintain an equitable action in the supreme court of this state against the person, firm or corporation so using his name, portrait, picture or voice, to prevent and restrain the use thereof; and may also sue and recover damages for any injuries sustained by reason of such use.

The New York Court of Appeals has emphasized that the statute must be “narrowly construed” and “strictly limited to nonconsensual commercial appropriations.” (See, e.g., Messenger v. Gruner + Jahr Printing & Publishing, 94 N.Y.2d 436 (2000).) New York courts have almost uniformly held that the use of someone's likeness in expressive works of fiction, art and entertainment is not actionable, either because the use is not for “trade” or “advertising,” or because these works are independently shielded as a matter of free expression.

For example, in recent years: a state trial court dismissed a claim based on the use of a model's photograph on a fictitious brochure in the movie Couples Therapy (see, Krupnik v. NBC Universal Inc., 964 N.Y.S.2d 60 (N.Y. Sup. Ct., N.Y. County 2010); a New York federal district dismissed the '51 claim of a hapless pedestrian featured in the movie Borat (see, Lemerond v. Twentieth Century Fox Film Corp., 87 U.S.P.Q.2D (BNA) 1219 (S.D.N.Y. 2008); and Lindsay Lohan's claim against the rapper Pitbull for using her name in a song got the boot, with the court reasoning that '51 “does not apply to works of art” (see, Lohan v. Perez , 924 F.Supp.2d (E.D.N.Y. 2013)).

'Antonia Bottino'

Karen Gravano's complaint in Manhattan state court alleges that the defendants used her “name, likeness, image and personal life story” in Grand Theft Auto V without permission, but provided little in the way of factual details. Take-Two and Rockstar moved to dismiss the complaint, arguing that the '51 claim fails to state a cause of action.

The defendant's motion papers fill in some of the gaps in the factual background. Grand Theft Auto V is set in a fictional state that evokes Southern California and the plot takes place in a fictional city called Los Santos that evokes Los Angeles. Players move freely around this virtual world, exploring different fictional plot-lines and activities. Players can choose to control one of three different main characters, who have different personalities and different experiences as they explore the virtual world. In one of 60 “random events” featured in the game, the player finds a woman tied up by the side of the road with two men preparing to bury her alive. The player can kill the two men and drive the woman to safety.

During the drive, the woman shares facts about herself that resemble some aspects of Gravano's real-life identity, including: that her name is “Antonia Bottino”; she is the daughter of “Sammy 'Sonny' Bottino,” who was in the “Gambetti” family until he took a plea deal (Gravano is the daughter of Salvatore (Sammy the Bull) Gravano, a famous mobster who turned state's evidence); and she was asked to appear on a reality show called Wise Bitches. The defendants maintain that Gravano's name is not used in the game, that no picture of Gravano appears, and that “Antonia Bottino” looks nothing like her.

Based on the New York precedent outlined above, it's hard to imagine a New York court holding that Gravano's claim can survive. Even if it was found that her likeness was used, New York law does not permit right-of-publicity claims targeting fictional expressive works like Grand Theft Auto . To the extent any exception is recognized, it is only in extreme circumstances, where the defendant's use “has no real relationship” to the work or the work amounts to “an advertisement in disguise.”

Other Right-of-Publicity Cases

Unfortunately, courts around the country do not take such a predictable approach, employing a proliferation of competing First Amendment tests that permit right-of-publicity claims to proceed against expressive works based on a number of different, and often subjective, criteria. Two recent federal cases applying California's “transformative-use” test to video games have created even more uncertainty.

In Hart v. Electronic Arts (EA), 717 F.3d 141 (3d Cir. 2013), the U.S. Court of Appeals for the Third Circuit held that the right-of-publicity claim brought by former Rutgers quarterback Ryan Hart could go forward against EA, based on the use of realistic virtual players in EA's NCAA Football games. The appeals court found that EA's video games were not “transformative” because of their realism. The court noted: “The digital Ryan Hart does what the actual Ryan Hart did while playing at Rutgers: he plays college football, in digital recreations of college football stadiums, filled with all the trappings of a college football game.” (For more on that case, see our coverage in the June 2013 issue, “Third Cir. Embraces 'Transformative Use' As Defense Against Publicity Right Claim.”)

The U.S. Court of Appeals for the Ninth Circuit reached the same conclusion in Keller v. Electronic Arts, holding that NCAA Football “does not qualify for First Amendment protection as a matter of law because it literally recreates [plaintiff Samuel Keller] in the very setting in which he has achieved renown.” In re NCAA Student-Athlete name & Likeness Litigation, 724 F.3d 1268 (9th Cir. 2013). (The article authors' firm represents EA in these cases.) Petitions for certiorari are pending.

Conclusion

These and other video game decisions have injected a new layer of confusion for content creators because they simultaneously: 1) express agreement with the U.S. Supreme Court's holding in Brown v. Entertainment Merchants Association, 131 S.Ct. 2729 (2011), that video games are entitled to the same First Amendment protection as “the protected books, plays, and movies that preceded them,”; and 2) outline a test that seemingly would permit right-of-publicity claims to proceed against works based on or inspired by real events and real-life individuals like documentaries, docudrama and biographies. A long line of cases recognizes that the First Amendment protects the use of real-life figures in creative works based on fact.

To be sure, while there is no basis for a New York court to apply a California test to her claim, should it do so, the tenuous link between “Antonia Bottino” and Karen Gravano may be such that a court would be compelled to find Grand Theft Auto V 's alleged use of her “life story” transformative. It is more likely that Gravano's action will be a helpful reminder that, in contrast to the unpredictability that exists elsewhere, consistent with the state's position as a media bastion, New York courts have staked out a strong and clear line for creators of expressive works to take refuge in the right-of-publicity context.

Elizabeth McNamara is a partner in the New York office of Davis Wright Tremaine. Samuel M. Bayard is an associate at the firm.

Earlier this year, former Mob Wives TV star Karen Gravano filed a right-of-publicity lawsuit against the makers of the Grand Theft Auto V video game, claiming they misappropriated her image and life story for a character in the popular video game. Gravano v. Take-Two Interactive Software Inc., 151633/2014 (N.Y. Sup. Ct., N.Y. County). Media lawyers took notice because this case is one more in a string of recent cases raising a significant common question: To what extent does the law protect the rights of content creators ' writers, filmmakers, musicians, visual artists, photographers, and yes, video-game makers ' to draw on real-life individuals and events to create expressive works?

For years, this was a relatively settled issue particularly in New York and creators took comfort that they were largely protected from right-of-publicity claims. This status quo has been upended with a growing spate of successful suits against expressive works elsewhere in the country. Will Gravano's action introduce the same confusion to New York's relatively settled law?

The right of publicity, of course, protects a person's name, likeness and other indicia of identity from commercial exploitation. In New York, the right of publicity is governed by '51 of the Civil Rights Law, which states:

Any person whose name, portrait, picture, or voice is used within this state for advertising purposes or for the purposes of trade without written consent first obtained as above provided [in Section 50 of the Civil Rights Law] may maintain an equitable action in the supreme court of this state against the person, firm or corporation so using his name, portrait, picture or voice, to prevent and restrain the use thereof; and may also sue and recover damages for any injuries sustained by reason of such use.

The New York Court of Appeals has emphasized that the statute must be “narrowly construed” and “strictly limited to nonconsensual commercial appropriations.” (See, e.g., Messenger v. Gruner + Jahr Printing & Publishing, 94 N.Y.2d 436 (2000).) New York courts have almost uniformly held that the use of someone's likeness in expressive works of fiction, art and entertainment is not actionable, either because the use is not for “trade” or “advertising,” or because these works are independently shielded as a matter of free expression.

For example, in recent years: a state trial court dismissed a claim based on the use of a model's photograph on a fictitious brochure in the movie Couples Therapy (see, Krupnik v. NBC Universal Inc., 964 N.Y.S.2d 60 (N.Y. Sup. Ct., N.Y. County 2010); a New York federal district dismissed the '51 claim of a hapless pedestrian featured in the movie Borat ( see , Lemerond v. Twentieth Century Fox Film Corp., 87 U.S.P.Q.2D (BNA) 1219 (S.D.N.Y. 2008); and Lindsay Lohan's claim against the rapper Pitbull for using her name in a song got the boot, with the court reasoning that '51 “does not apply to works of art” (see, Lohan v. Perez , 924 F.Supp.2d (E.D.N.Y. 2013)).

'Antonia Bottino'

Karen Gravano's complaint in Manhattan state court alleges that the defendants used her “name, likeness, image and personal life story” in Grand Theft Auto V without permission, but provided little in the way of factual details. Take-Two and Rockstar moved to dismiss the complaint, arguing that the '51 claim fails to state a cause of action.

The defendant's motion papers fill in some of the gaps in the factual background. Grand Theft Auto V is set in a fictional state that evokes Southern California and the plot takes place in a fictional city called Los Santos that evokes Los Angeles. Players move freely around this virtual world, exploring different fictional plot-lines and activities. Players can choose to control one of three different main characters, who have different personalities and different experiences as they explore the virtual world. In one of 60 “random events” featured in the game, the player finds a woman tied up by the side of the road with two men preparing to bury her alive. The player can kill the two men and drive the woman to safety.

During the drive, the woman shares facts about herself that resemble some aspects of Gravano's real-life identity, including: that her name is “Antonia Bottino”; she is the daughter of “Sammy 'Sonny' Bottino,” who was in the “Gambetti” family until he took a plea deal (Gravano is the daughter of Salvatore (Sammy the Bull) Gravano, a famous mobster who turned state's evidence); and she was asked to appear on a reality show called Wise Bitches. The defendants maintain that Gravano's name is not used in the game, that no picture of Gravano appears, and that “Antonia Bottino” looks nothing like her.

Based on the New York precedent outlined above, it's hard to imagine a New York court holding that Gravano's claim can survive. Even if it was found that her likeness was used, New York law does not permit right-of-publicity claims targeting fictional expressive works like Grand Theft Auto . To the extent any exception is recognized, it is only in extreme circumstances, where the defendant's use “has no real relationship” to the work or the work amounts to “an advertisement in disguise.”

Other Right-of-Publicity Cases

Unfortunately, courts around the country do not take such a predictable approach, employing a proliferation of competing First Amendment tests that permit right-of-publicity claims to proceed against expressive works based on a number of different, and often subjective, criteria. Two recent federal cases applying California's “transformative-use” test to video games have created even more uncertainty.

In Hart v. Electronic Arts (EA), 717 F.3d 141 (3d Cir. 2013), the U.S. Court of Appeals for the Third Circuit held that the right-of-publicity claim brought by former Rutgers quarterback Ryan Hart could go forward against EA, based on the use of realistic virtual players in EA's NCAA Football games. The appeals court found that EA's video games were not “transformative” because of their realism. The court noted: “The digital Ryan Hart does what the actual Ryan Hart did while playing at Rutgers: he plays college football, in digital recreations of college football stadiums, filled with all the trappings of a college football game.” (For more on that case, see our coverage in the June 2013 issue, “Third Cir. Embraces 'Transformative Use' As Defense Against Publicity Right Claim.”)

The U.S. Court of Appeals for the Ninth Circuit reached the same conclusion in Keller v. Electronic Arts, holding that NCAA Football “does not qualify for First Amendment protection as a matter of law because it literally recreates [plaintiff Samuel Keller] in the very setting in which he has achieved renown.” In re NCAA Student-Athlete name & Likeness Litigation, 724 F.3d 1268 (9th Cir. 2013). (The article authors' firm represents EA in these cases.) Petitions for certiorari are pending.

Conclusion

These and other video game decisions have injected a new layer of confusion for content creators because they simultaneously: 1) express agreement with the U.S. Supreme Court's holding in Brown v. Entertainment Merchants Association, 131 S.Ct. 2729 (2011), that video games are entitled to the same First Amendment protection as “the protected books, plays, and movies that preceded them,”; and 2) outline a test that seemingly would permit right-of-publicity claims to proceed against works based on or inspired by real events and real-life individuals like documentaries, docudrama and biographies. A long line of cases recognizes that the First Amendment protects the use of real-life figures in creative works based on fact.

To be sure, while there is no basis for a New York court to apply a California test to her claim, should it do so, the tenuous link between “Antonia Bottino” and Karen Gravano may be such that a court would be compelled to find Grand Theft Auto V 's alleged use of her “life story” transformative. It is more likely that Gravano's action will be a helpful reminder that, in contrast to the unpredictability that exists elsewhere, consistent with the state's position as a media bastion, New York courts have staked out a strong and clear line for creators of expressive works to take refuge in the right-of-publicity context.

Elizabeth McNamara is a partner in the New York office of Davis Wright Tremaine. Samuel M. Bayard is an associate at the firm.