Checklist and Commentary on Defenses for Right of Publicity Claims

Incidental Use

For starters, there should be no liability for the mere incidental use of a plaintiff's persona. For example, a 27-second “clip” of James Brown's singing performance and a single mention of his name in the movie The Commitments was held not actionable because it was an incidental use. Brown v. Twentieth Century Fox Film Corp., 799 F.Supp. 166 (D.C. D.C. 1992).

California's statute recognizing the right of publicity contains its own incidental use concept in Calif. Civ. Code '3344(b), which permits the use of any photograph, videotape, etc., of a person as part of a “definable group,” including, without limitation, a crowd, audience, club or team, as long as the individual has not been singled out in any manner.

Although the incidental use concept should be interpreted broadly, a defendant should not be able to create an incidental use simply by engaging in multiple uses. For example, the face of a baseball player on a baseball card should not be an incidental use merely because there are a large number of cards (each with a different face).

Coincidental Use

There should be no liability when the use of the plaintiff's name is merely coincidental, such as when a character in a film coincidentally happens to have the same name as a private individual. This defense should have precluded Spike Lee from obtaining a preliminary injunction in his 2003 suit against the Spike Channel, because it appeared the channel's use of the name “Spike” was coincidental, even if some people thought that Spike Lee endorsed the channel. Lee v. Viacom Inc., 110080 (N.Y. Sup. Ct., N.Y. Cty. 2003). (The parties quickly settled the case, with the channel being able to use the name.)

Indirect Use

There should be no liability when there is no actual use or direct imitation of plaintiff's persona, as any implied association would then be too tenuous. This defense is analogous to the idea/expression doctrine developed under the Copyright Act that applies to prevent the unauthorized use of the expression of an idea but does not prevent the unauthorized use of the idea itself. But in right of publicity cases, some courts have permitted liability based on any indirect invocation of plaintiff's persona. Application of the idea/expression doctrine would protect any publication that did not involve the actual use or direct imitation of someone's persona. A drawing depicting the distinctive features of the plaintiff would be actionable, even if highly stylized. On the other hand, the mere fact that the plaintiff's persona is called to mind by reason of association should not be actionable. For example, any reference to the Terminator films is likely to automatically call to mind Arnold Schwarzenegger, but such an indirect association should not be actionable. Were it otherwise, the free flow of ideas would be ground to a halt by those whose personas have any association to the ideas.

First Amendment

Matters of Public Interest

The First Amendment has long provided a strong defense to right of publicity claims for publications on matters of public interest, unless the publications contain knowing or reckless falsehood. This protection applies to a broad range of publications, including magazine articles, books and movies. In order to provide broad First Amendment protection, the definition of “public interest” sweeps up any publication discussing public figures and celebrities, as well as publications regarding private citizens who become associated with some issue that has caught the public eye.

The California statute recognizing the right of publicity provides a defense for use of someone's persona in connection with any “news,” which has been interpreted to be at least as broad as, if not broader than, the First Amendment protection for publications on matters of public interest. The definition of “news” within the statute has been interpreted similarly to the First Amendment defense by excluding publications that were knowingly or recklessly false.

Parodies

Courts routinely hold that parodies are protected against right of publicity claims by the First Amendment, even if the parody does not relate to a matter of public interest. However, this protection generally does not apply to advertisements.

Expressive Works

A number of cases have held that the First Amendment protects any form of entertainment, art or other expressive work against a right of publicity claim. When this approach is applied, it does not matter whether the work touches on a matter of public interest or indeed whether there is any written or other communicative element other than the work itself. For example, a film that included video clips of the plaintiff kissing a rock star in a bathroom stall was protected in Daly v. Viacom Inc., 238 F.Supp.2d 1118 (N.D. Calif. 2002), though oddly this case was based on California law and was decided after the California Supreme Court limited the protection of expressive works to “transformative” works, as discussed below.

The First Amendment defense for expressive works protects even fictional stories that use the plaintiff's persona. That was the outcome of a case that involved a fictionalized story based on a true event that referred to a 10-year old character referred to as “Squints Palledorous,” which vaguely resembled the plaintiff, Michael Polydoros, 30 years earlier. (Polydoros v. Twentieth Century Fox, 67 Cal.App. 4th 318 (1997).)

(In most cases, the implied rationale is that the work is protected not because it is fictional, but because it is an expressive work, notwithstanding that it is fictional. Unfortunately, some courts have come up with the garbled logic that a work is protected because it is fiction.)

But if the First Amendment protects a fictionalized work against a right of publicity claim, a plaintiff may still have a valid claim for portrayal of the plaintiff in a false light. Though some courts hold that the First Amendment also protects fictionalized works against a false light claim (e.g., Rogers v. Grimaldi, 695 F.Supp. 112 (S.D.N.Y. 1988); aff'd, 875 F.2d 994 (2d. Cir. 1989)), other courts permit a false light claim to stand (e.g., Seale v. Gramercy Pictures, 949 F.Supp. 331 (E.D. Pa. 1996)).

Because a false light claim is analogous to a defamation claim, and because there is no First Amendment right to commit defamation with impunity, there should be no First Amendment defense to a false light claim. It should be fairly easy to avoid these claims, however, if it is obvious to a reasonable person that the work is fictionalized (such as a clear statement to this effect).

Many court rulings have been broad enough to be read as providing First Amendment protection against a right of publicity claim for all expressive works, without qualification. This approach basically protects all “speech” in the broadest sense against a right of publicity claim, other than advertising, as discussed further below, and basically wipes out the right of publicity except for advertising. (See, Hoffman v. Capital Cities/ABC Inc., 255 F.3d 1180 (9th Cir. 2001), permitting Los Angeles magazine to create and publish a photograph of Dustin Hoffman wearing a dress ' but not the one he wore in the movie Tootsie.) But there must be some limits on this defense, because to give absolute protection to expressive works is to eliminate the right of publicity. For example, if a film company were to create a digital version of Harrison Ford without his permission and use that image in a sequel to the movie The Fugitive, Ford should have a valid right of publicity claim, but the film might be protected as an expressive work under current case law.

In two seminal decisions, the California Supreme Court held that the conflict between the First Amendment and the right of publicity required a “balancing of interests,” and in the face of a right of publicity claim, the First Amendment protects only “transformative” works that reflect “significant transformative elements” to the plaintiff's persona. (See, Comedy III Productions, Inc. v. Gary Saderup Inc., 106 Cal. Rptr. 2d 126 (Cal. Sup. Ct. 2001), and Winter v. DC Comics, 134 Cal. Rptr. 2d 634 (Cal. Sup. Ct. 2003).) Under this analysis, the battles in California are now waged over whether or not a work is “transformative.” The state supreme court justified a number of prior cases under this rubric, including cases giving First Amendment protection to: reports on matters of public interest, parodies and works of fiction (referred to here as “Per-Se Transformative Works”).

Aside from Per-Se Transformative Works, the supreme court held that expressive works are not protected by the First Amendment in the absence of some indefinable “transformative” element. But there are several problems with this “transformative” approach that make it unworkable. First, to the extent that a work is Per-Se Transformative, there is no further “balancing of interests” and the right of publicity is wiped out. Of particular concern, the state supreme court lumped fictional works in the Per-Se Transformative Work category, so the sequel to The Fugitive starring a digital version of Harrison Ford would be protected as a “transformative” work. This is a patently absurd result.

Secondly, the test is rather rudderless, as evidenced by application of the test by courts in other states to date. (See, e.g., Hoepker v. Kruger, 200 F.Supp.2d 340 (S.D.N.Y. 2002) (collage that included photograph of plaintiff was transformative); Hart v. Electronic Arts, 717 F.3d 141 (3rd Cir. 2013) (football video game that included likeness of plaintiff was not transformative) and Keller v. Electronic Arts Inc., 724 F.3d 1268 (9th. Cir. 2013) (same).) Finally, there is absolutely no logic for protecting “transformative” works while not protecting “non-transformative” works. What exactly is the First Amendment rationale justifying protection of the former but not the latter?

In a seminal case from Missouri, the state supreme court held that expressive works are protected against a right of publicity claim only if the predominant purpose of the use of the plaintiff's persona is to make an expressive comment about the plaintiff, such as a parody directly relating to the plaintiff, as opposed to a predominant purpose of merely exploiting the commercial value of the plaintiff's persona. Doe v. TCI Cablevision, 110 S.W.3d 363 (Mo. Sup. Ct. 2003). Applying this test, the court held that a comic book portraying the plaintiff (famous hockey player Tony Twist, known as “the Enforcer”) as a fictional mafia don was unlikely to be protected, but remanded the case for a jury determination as to the intent of the defendant. (The jury subsequently awarded Tony Twist $15 million). This case expressly disagreed with the “transformative” approach applied by the California Supreme Court. The “predominant purpose” test makes a lot of sense, would straighten out much of the mess to date, and would result in the plaintiffs prevailing in the following cases, because in each case there is no expressive comment about the plaintiff: The hypothetical of a remake of The Fugitive using a digital version of Harrison Ford and Los Angeles magazine's portrayal of Dustin Hoffman in a dress (and not the one he wore in Tootsie).

Schuyler M. Moore is a partner in the corporate entertainment department at the Los Angeles office of the national law firm of Stroock & Stroock & Lavan, LLP. He is the author of The Biz: The Basic Business, Legal and Financial Aspects of the Film Industry (Silman-James Press), Taxation of the Entertainment Industry (CCH) and What They Don't Teach You in Law School (William S. Hein & Co.). A member of the Board of Editors of Entertainment Law & Finance, he can be reached at [email protected].