Checklist and Commentary on Defenses for Right of Publicity Claims

Plaintiffs in similar situations are well advised to seek to apply California law (the video should not be “transformative,” because there was no alteration of plaintiff's image) or Missouri law (it appears that the “predominant purpose” of use of plaintiff's naked image was exploiting the commercial value of it). This split of authority thus encourages careful forum shopping.

This author suggests that the only way to reconcile these conflicting cases is to eliminate completely any purported defense for all expressive works, and to limit the First Amendment protection to only those expressive works that comment on a matter of public interest. If the matter does not rise to a matter of public interest, or indeed, if there is no discussion at all (whether orally or in writing), there should be no protection. But alas, that is not the law.

Advertising

Without exception, whenever advertising is involved, cases discussed above hold that if the underlying work is protected by the First Amendment, then so is any associated advertising relating to the sale of the underlying work, including advertisements using the plaintiff's persona. But unless the underlying product is a protected work (for example, a label on a DVD jacket of an expressive work), use of someone's persona on a label or in a name for a business or product will not be protected. Further, if the plaintiff's persona is used in connection with the label or title of a protected work, there must be some reasonable relation between the plaintiff and the subject of the work. (In Seale v. Gramercy Pictures , 949 F.Supp. 331 (E.D. Pa. 1996), discussed in Part One of this article, the court decided there was no right to use the plaintiff's image on film soundtrack CD even if he was portrayed in the film).

Express or Implied Consent

Another defense to publication-based tort actions is that the plaintiff gave express or implied consent to the publication. Express consent is straightforward, but implied consent should be interpreted broadly based on the expectations of a reasonable person in the circumstances. For example, actors in a movie should be held to implicitly consent to use of their personas in advertisements for the movie, just as those who pose for a picture should be held to implicitly consent to an intended use of the picture that they were aware of at the time. In addition, athletes in a game that they know is being televised should be held to implicitly consent to the televised broadcast and any subsequent broadcasts, outtakes, etc., that are within the reasonable contemplation of the athletes at the outset. Some courts have held that merely doing something in public is implied consent to its publication. (See, e.g., Jones v. Corbis Corp., 815 F.Supp.2d 1108 (C.D. Calif. 2012) (celebrity that walked the red carpets implicitly consented to publication of pictures taken there).)

Fair Use

There should also be a “fair use” defense to right of publicity claims, based on analogy to copyright or trademark law. (See, 17 U.S.C. '107 (copyright); 15 U.S.C. '1115(b)(4) (trademark).) Just as is case with copyrights or trademarks, there needs to be a safety net to cover the use of someone's persona that just seems fair but does not fit under any other defense. For example, it is common for talent agencies and studios to run congratulatory ads for their actors who win awards, and these kinds of ads should not be actionable. On the other hand, if a company runs a series of these congratulatory ads with pictures of its products, these ads seem unfair, because there is an implication that the actors endorse the products. As tempting as this defense is, it has been rejected by some courts (though, see, Jordan v. Jewel Food Stores Inc., 43 F.3d 509 (7th Cir. 2014).)

Death

Another defense may be that the persona used is of a deceased person. In California, for example, there is no common law right of publicity for deceased persons in California, but Calif. Civ. Code '3344.1 provides a statutory cause of action for deceased celebrities. However, there is a blanket exemption for “fictional or non-fictional entertainment or a dramatic, literary, or musical work.” Presumably, the statute would allow the digital recreation of a deceased celebrity for use in a new movie; we could have Marilyn Monroe in Some Like It Hotter. The dangerous part about relying on '3344.1 is that if the decedent resided, or the movie was shown, outside of California, the laws of other states may apply, and the defendant should assume that it will be sued under the laws of the state with the least protection.

Suggested Non-Defenses

Some defendants have argued for, and some cases have applied, improper defenses to right of publicity actions. This section of this article analyzes these purported defenses to demonstrate why they should not be applicable.

Copyright Act Preemption

In a blatantly wrong decision dating back to the 1980s, the U.S. Court of Appeals for the Seventh Circuit held that the Copyright Act preempted a right of publicity claim by baseball players objecting to televised broadcasts of their games. Baltimore Orioles Inc. v. Major League Baseball Players Association, 805 F.2d 663 (7th Cir. 1986), cert. denied , 107 S.Ct. 1593 (1987). Unfortunately, this case has taken on a life of its own and been followed by a number of other cases. (See, e.g., Fleet v. CBS, 50 Cal.App.4th (Cal. Ct. App. 1996) (actors' right of publicity claim was preempted by Copyright Act); Laws v. Sony Music Entertainment Inc., 448 F.3d 1134 (9th Cir. 2006) (same holding as applied to claim by singer whose consent was required, but not granted, for the particular use); Ray v. ESPN Inc., 783 F.3d 1140 (8th Cir. 2015) (wrestler's right of publicity claim was preempted by Copyright Act); Dryer v. The National Football League, (8th Cir. 2016) (football players' right of publicity claim was preempted by Copyright Act).)

In reaching its decision in Baltimore Orioles, the Seventh Circuit held that the players were the “authors” of the televised games within the meaning of the Copyright Act. However, the “author” of a televised game is the company that films the game. (See , 17 U.S.C. '201(b).) The players were not the “authors” of the work; they were the subject of the work.

The Copyright Act protects authors and owners of a work, while the right of publicity protects the subjects of a work. The Copyright Act and the right of publicity protect entirely different interests, so Copyright Act preemption should not apply. For example, courts have held that plaintiffs are not preempted by the Copyright Act to object to the imitation of their voice in a song on a commercial, even if the defendant has the valid right to use the words and music to the song under the Copyright Act. Therefore, Copyright Act preemption should not have been a defense to the baseball players' cause of action in Baltimore Orioles; instead, the case should have been decided the same way based on a defense of implied consent, discussed above in this article.

In recognition of the weakness of Baltimore Orioles, the Seventh Circuit subsequently “distinguished” the opinion and held that it does not apply to advertising. Toney v. L'Oreal U.S.A. Inc., 406 F.3d 905, (7th Cir. 2005). The court offered no rationale for this distinction, but this distinction has been followed in the Ninth Circuit. (See, Laws v. Sony Music Entertainment Inc., supra.) Another court cited to both of these decisions and correctly concluded that there was no preemption. Brown v. ACMI Pop Division, 375 Ill. App. 3d 276 (Ill. App. 2007) (sale of photos of James Brown over Internet).

Disclaimers

Some commercials imitate celebrity voices and end with the disclaimer, “celebrity voices impersonated.” If such disclaimers were allowed as a defense, the right of publicity would be eviscerated. For example, an advertiser could use a perfect imitation of the plaintiff's voice in a song in any commercial, and would rely on a disclaimer as a defense. This cannot be allowed.

Non-Celebrities

In a right of publicity action, the harm to the plaintiff is a personal one. Many courts phrase the right of publicity as the exclusive right to exploit one's persona and to prevent others from doing so without payment. This formulation puts a demonstrably commercial spin on the right and suggests economic, not personal, injury. This commercial formulation, however, overlooks the ultimate source of the right, which is the personal “right to be let alone.”

Even in the classic case of a celebrity bringing the action for the commercial use of the celebrity's persona, the facts frequently state that the dispute is not for lack of payment; the celebrity is often offended by any commercial use of their persona. It is for this reason that the right of publicity should not be limited to celebrities or public figures, and should apply equally to private citizens.

Conclusion

The real problem with right of publicity cases is that merely to be sued is to lose, even if the defendant ultimately wins the case, because of the legal fees incurred to defend the case and the threat of almost limitless liability. Because of the muddy law in this area, these cases are almost never resolved at the summary judgment stage. The mantra of most publishers and film companies is thus, “When in doubt, leave it out,” resulting in a real hit to the First Amendment. But because these defenses turn on questions of law, they are particularly appropriate to be applied at the summary judgment stage, which would end the real problem with right of publicity claims and reduce the chilling effect the specter of these claims has on freedom of expression.

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].