Filmmaker Loses Publicity Claim; Can Proceed With Infringement Claim

Florida law does not prevent broadcasters from using a filmmaker's name to introduce his film, regardless of whether the broadcast is authorized, the U.S. District Court for the Southern District of Florida found. U.S. District Judge Marcia Cooke dismissed Cuban filmmaker Yosmani Acosta's claim that Spanish Broadcasting System Inc. and its Mega TV channel violated the right of publicity law by using Acosta's name during a broadcast. Acosta v. Mega Media Holdings Inc., 1:2015cv21837.

Acosta argued his identity was being used to promote Mega TV and the program Mega Cine , which allegedly broadcast his film Pablo in 2013. But District Judge Cooke agreed with a federal magistrate's finding: The right of publicity law prevents the unauthorized commercial use of someone's name or likeness only if it's separate from the publication of the film, news story or novel.

If mentioning a filmmaker's name during a TV program about movies were a violation of the statute, “Siskel and Ebert would have never existed,” says James Sammataro, a Stroock & Stroock & Lavan partner in Miami who represents the Spanish Broadcasting System.

Acosta's lawsuit includes a $2.5 million copyright infringement claim, which was not dismissed. Acosta alleges Mega TV got his film from an unauthorized source and broadcast it without his permission.

Sammataro says the judge was correct to treat the two claims separately. “Whether or not we have the right to utilize or broadcast the film has nothing to do with whether we violated your right of publicity,” he says.

Federal Magistrate Judge Edwin Torres had based his recommendation on precedent arising from media as diverse as the Bob Dylan song “Hurricane,” the film The Perfect Storm starring George Clooney and the titillating Girls Gone Wild videos.

Murder trial witness Patty Valentine sued Dylan in 1979 for allegedly violating her right of publicity by using her name in a song about the wrongful murder conviction of boxer Rubin “Hurricane” Carter. But the U.S. Court of Appeals for the Eleventh Circuit found that Dylan did not use Valentine's name directly to promote a product or service, and the decision is binding precedent for judges in the Southern District of Florida. Valentine v. C.B.S. Inc. , 698 F.2d 430 (11th Cir. 1983).

“Use of a name is not harmful simply because it is included in a publication sold for profit,” Magistrate Torres noted in his Acosta recommendation.

Courts dismissed similar claims brought by the family of the ship captain Clooney portrayed in The Perfect Storm as well as a woman who flashed her breasts in a Girls Gone Wild video who said she didn't know the footage would be sold. Tyne v. Time Warner Entertainment Co. L.P., 425 F.3d 1363 (11th Cir. 2005); Lane v. MRA Holdings LLC, 242 F. Supp. 2d 1205 (M.D.Fla. 2002).

Acosta argued those cases applied to people who appeared in films, not the film's creator. “Here, the director and producer's persona does not appear in the movie, so it's not the same situation,” said Will Trueba of Espinosa Trueba in Miami, who represents Acosta along with Coral Gables attorney Aldo Leiva of Lubell Rosen. “That's a legal argument we made, which obviously didn't get traction.”

Acosta isn't planning to appeal the dismissal of the claim, Trueba says.

The filmmaker may still prevail on his copyright infringement claim, in which he alleges he lost a distribution deal worth at least $2.5 million because Mega TV broadcast his film without his permission. Sammataro says his clients received the film from an industry source but declined to go into more detail. Acosta alleges he previously reached out to Mega TV to ask if it would air the film but the broadcaster didn't license it.

Pablo, the fictional story of a Cuban child raised in a broken home, was featured at the New York City International Film Festival in 2013. The film won festival prizes for best director and best supporting actor. Acosta lived in Cuba when he made the film and when he approached Mega TV about airing his film, which is protected by a U.S. copyright. He later moved to the United States.

“It's our position that this film was valuable and could have gotten a good distribution deal but for the fact that Mega acquired a copy of it illegally,” Trueba says.

Copyright law allows Acosta to seek the amount he would have made from a distribution deal, plus the profits the defendants made from airing the film, Trueba notes.

Sammataro argues it's unlikely the film would be licensed for millions of dollars after a showing at a “tertiary film festival.” That doesn't happen for films that garner incredible buzz and even awards at top-notch film festivals,” Sammataro says.

In 2011, the Spanish Broadcasting System defeated a different copyright infringement claim filed by Cuban journalist and author Norberto Fuentes. Fuentes claimed a Mega TV news program used videos he took during the Angolan civil war without his consent. But U.S. District Judge Federico Moreno in Miami issued a final judgment in the broadcaster's favor, and Fuentes later withdrew his appeal. Fuentes v. Mega Media Holdings Inc., 09-22979 (S.D.Fla 2011).

Celia Ampel writes for the Daily Business Review, an ALM sibling of Entertainment Law & Finance.

Florida law does not prevent broadcasters from using a filmmaker's name to introduce his film, regardless of whether the broadcast is authorized, the U.S. District Court for the Southern District of Florida found. U.S. District Judge Marcia Cooke dismissed Cuban filmmaker Yosmani Acosta's claim that Spanish Broadcasting System Inc. and its Mega TV channel violated the right of publicity law by using Acosta's name during a broadcast. Acosta v. Mega Media Holdings Inc., 1:2015cv21837.

Acosta argued his identity was being used to promote Mega TV and the program Mega Cine , which allegedly broadcast his film Pablo in 2013. But District Judge Cooke agreed with a federal magistrate's finding: The right of publicity law prevents the unauthorized commercial use of someone's name or likeness only if it's separate from the publication of the film, news story or novel.

If mentioning a filmmaker's name during a TV program about movies were a violation of the statute, “Siskel and Ebert would have never existed,” says James Sammataro, a Stroock & Stroock & Lavan partner in Miami who represents the Spanish Broadcasting System.

Acosta's lawsuit includes a $2.5 million copyright infringement claim, which was not dismissed. Acosta alleges Mega TV got his film from an unauthorized source and broadcast it without his permission.

Sammataro says the judge was correct to treat the two claims separately. “Whether or not we have the right to utilize or broadcast the film has nothing to do with whether we violated your right of publicity,” he says.

Federal Magistrate Judge Edwin Torres had based his recommendation on precedent arising from media as diverse as the Bob Dylan song “Hurricane,” the film The Perfect Storm starring George Clooney and the titillating Girls Gone Wild videos.

Murder trial witness Patty Valentine sued Dylan in 1979 for allegedly violating her right of publicity by using her name in a song about the wrongful murder conviction of boxer Rubin “Hurricane” Carter. But the U.S. Court of Appeals for the Eleventh Circuit found that Dylan did not use Valentine's name directly to promote a product or service, and the decision is binding precedent for judges in the Southern District of Florida. Valentine v. C.B.S. Inc. , 698 F.2d 430 (11th Cir. 1983).

“Use of a name is not harmful simply because it is included in a publication sold for profit,” Magistrate Torres noted in his Acosta recommendation.

Courts dismissed similar claims brought by the family of the ship captain Clooney portrayed in The Perfect Storm as well as a woman who flashed her breasts in a Girls Gone Wild video who said she didn't know the footage would be sold. Tyne v. Time Warner Entertainment Co. L.P., 425 F.3d 1363 (11th Cir. 2005); Lane v. MRA Holdings LLC, 242 F. Supp. 2d 1205 (M.D.Fla. 2002).

Acosta argued those cases applied to people who appeared in films, not the film's creator. “Here, the director and producer's persona does not appear in the movie, so it's not the same situation,” said Will Trueba of Espinosa Trueba in Miami, who represents Acosta along with Coral Gables attorney Aldo Leiva of Lubell Rosen. “That's a legal argument we made, which obviously didn't get traction.”

Acosta isn't planning to appeal the dismissal of the claim, Trueba says.

The filmmaker may still prevail on his copyright infringement claim, in which he alleges he lost a distribution deal worth at least $2.5 million because Mega TV broadcast his film without his permission. Sammataro says his clients received the film from an industry source but declined to go into more detail. Acosta alleges he previously reached out to Mega TV to ask if it would air the film but the broadcaster didn't license it.

Pablo, the fictional story of a Cuban child raised in a broken home, was featured at the New York City International Film Festival in 2013. The film won festival prizes for best director and best supporting actor. Acosta lived in Cuba when he made the film and when he approached Mega TV about airing his film, which is protected by a U.S. copyright. He later moved to the United States.

“It's our position that this film was valuable and could have gotten a good distribution deal but for the fact that Mega acquired a copy of it illegally,” Trueba says.

Copyright law allows Acosta to seek the amount he would have made from a distribution deal, plus the profits the defendants made from airing the film, Trueba notes.

Sammataro argues it's unlikely the film would be licensed for millions of dollars after a showing at a “tertiary film festival.” That doesn't happen for films that garner incredible buzz and even awards at top-notch film festivals,” Sammataro says.

In 2011, the Spanish Broadcasting System defeated a different copyright infringement claim filed by Cuban journalist and author Norberto Fuentes. Fuentes claimed a Mega TV news program used videos he took during the Angolan civil war without his consent. But U.S. District Judge Federico Moreno in Miami issued a final judgment in the broadcaster's favor, and Fuentes later withdrew his appeal. Fuentes v. Mega Media Holdings Inc., 09-22979 (S.D.Fla 2011).

Celia Ampel writes for the Daily Business Review, an ALM sibling of Entertainment Law & Finance.