Saturday, October 17, 2015

Right of Publicity Workshop Part 3

Relationship to Copyright law/Relationship to Trademark law 
Dryer v. NFL will be argued to the 8th Cir. challenged by retired NFL players to continued airing of programs recounting their exploits in actual games.  Survived a motion to dismiss.  After NFL settled a class action, moved for SJ and dct granted it. Every single defense we’ve discussed has been raised and was accepted: 1A based defense under C.B.C. fantasy baseball case; statutory/common law safe harbor for speech about sports; Rogers v. Grimaldi for TM claims lacking express false endorsement; equitable defenses.  © preemption is important in the 8th Cir. b/c Ray v. ESPN found preemption when a pro wrestler said that ESPN violated his ROP by showing old footage of him wrestling. 
Good news/bad news: preemption is a likely win, but allows them to avoid 1A issues, so they won’t clarify the remaining issues.  When is preemption appropriate?  And what should be done with transformative use?  In ©, fair use is a 1A safety valve; under ROP, you shouldn’t be applying it to 1A-protected activity in the first place, so you don’t need transformativeness for the same purpose.
§301: if something is within the subject matter of ©, whether protected or not, and the state claim is equivalent of a © right—state a claim simply b/c someone is exercising rights of ©--then it’s preempted. ROP gets confusing b/c there’s confusion over what the subject matter is—the thing created by the user or the persona of the claimant, which is not protectable. Metaphysics: Toney v. L’Oreal—a model sues L’Oreal for putting her picture on a package and the court got tied up in whether the subject matter was photograph or face.  Conflict preemption as another alternative.
§301 is incoherent and therefore not tremendously valuable; it has this subject matter problem. Main thing it was supposed to do was to preempt common-law copyright, and it doesn’t even seem to do that.  Conflict preemption is therefore useful.  Used to look a lot bleaker. Now there are more cases finding preemption when there’s an authorized use at the front-end subsequently repurposed; courts now seem more likely to find preemption as a matter of constitutional avoidance. Problems exist: no initial permission for underlying work; expired contract/use exceeds terms of initial contract.
Permission as an issue: what do we mean by permission? Federal law may perhaps need to define what consent is for purposes of copyright preemption regardless of whether state law purports to require written consent for the ROP.
Marshall: followed Dryer surviving a motion to dismiss, b/c athletes didn’t expressly consent for their games to be shown on TV.  So what’s the role of consent?
We’ve struggled w/ the relevance of consent.  At some level, the case is premised on the notion that consent to do anything was coerced: an unfair deal/forced to sign deals if they wanted to play.  Consent is usually a Q of fact/can be vitiated by duress.  For purposes of © preemption, we’ve argued that it doesn’t matter.  When push comes to shove, it has to be the case that for purposes of © preemption these athletes have consented: they came to the field and knew they were being filmed. Whether that’s consent for purposes of common law may be different.  Though it’s argued as §301, it’s always felt more like conflict preemption: © defines how performances are to be protected; this is essentially a common-law © claim repled.
Why should consent matter to the preemption claim? 
When the underlying party has consented the problems of conflict preemption/goals of © are implicated.  Implied consent can be read broadly. 
Conflict as conflict w/©’s scheme for determining who an author is.  Consent may matter then if the person who consented would otherwise count as an author: so Zacchini may be in a different position than a single athlete or even a single actor in a larger production.  If the claimant is a person for whom it would make sense to ask “is this person an author?” then perhaps a ROP claim implicates © preemption questions, and that makes consent relevant.  If their performance or expressive configuration is fixed w/out consent, then what they have is functionally a common-law © claim; if it was fixed w/consent, then either © provides them an ownership interest or it doesn’t and either way there should be preemption.
They may also have a contract that limits/expands rights in various ways. The contract may or may not be valid, but even if you took the contract away, they still knew they were going to be filmed.
Consent is a separate case.  Finding of consent to woman on red carpet was not a preemption finding.  T3 case: preemption doesn’t depend on consent; you can license photos for which you own the ©.
Consent is fact-specific: who are you suing and what are the terms. Are you exercising a right to which you would normally be entitled? 
Fleet v. CBS: claimed their contracts didn’t allow the use of their images in the films. Court spoke in terms of consent for © preemption; then the © rights trump their rights of publicity.
What’s the linkage to ©?  If we don’t know what the ROP is for, then what it is/whether it is related to incentives is at least open to debate.  The argument that has proven more persuasive to some folks, including Posner, is © as brand management—an exclusive right to encourage efficient management of celebrity once achieved. Cal SCt explicitly relied on incentive theory in Saderup too in its decision to look to ©. Zacchini used © as analogy; states used it as analogy to get life +50 or +70 in states; to copy remedies such as disgorgement.  To the extent a ct finds them persuasive, it ought to be motivated to apply a more searching §301 analysis—paracopyright is exactly what §301 was supposed to get rid of.
But what if the ct says it’s incentive based, but the incentive is to do something other than create expressive works.  Then §301 isn’t obviously implicated.
Worst use of © analogy: transformativeness! No one can agree on what it is for ROP.  You can’t use the person to discuss the thing that made them famous?
It’s really about art v. tchotchkes.  Transformativeness does this, even if it’s stupid.
That’s how the case should have been decided, though it creates problems of its own: the New Life court got completely tangled in mugs v. calendars v. posters. But that would have been better than what we got. 
OK if correctly applied: the work is transformative, used for different purpose and effect [than what?  Than the celebrity? What is the purpose and effect of the celebrity?]  Relative value of the celebrity use is effectively the fourth fair use factor folded into transformativeness. 
But why do people buy biographies?  Court includes that as a class of protected works, but doesn’t explain how that works.
Might have been ok as articulated, but never used rationally or consistently.
How do you transform a name? Several courts have said you can’t.  And if you’re talking about a news photo, you can’t transform that if it’s just how the person looks.
Cal SCt started from the assumption that virtually all expressive works were protected, intended to be a pro-artist decision. 
Trademark: Would §43 cover everything that we agree is within the legitimate scope of the ROP as we think it is?  What are the risks/benefits of such a move?
There is a close match between this narrower version of ROP and §43(a)—Midler and White both also involved successful §43(a) claims.  There may not be a perfect match w/commercial speech, since TM is broader in the forms of confusion it prohibits.  Doesn’t always require, as it should, a strict invitation to engage in a commercial transaction.  For the most part, a lot of overlap.  What does that say about the risks/benefits/opportunities of thinking about TM?
The greatest potential benefit: convince courts to think more in terms of Rogers v. Grimaldi, if the purpose of the right is defined more narrowly and more like the purpose of TM—gives us a basis for balancing speech interests in a way similar to how the Rogers ct did it.
But TM has expanded so much; de facto existence of licensing market makes it plausible that cts would find false endorsement in many circumstances, especially merchandising—maybe that’s not so bad for courts’ anti-exploitation instincts, but leads us back down the rabbit hole. Does presence in video game imply endorsement?  Rogers is important, but then rests on a distinction between “expressive” works and other works.  And is incoherently applied in the U of Ala./New Life case.
Courts haven’t explicitly grappled with where Rogers applies—but where the sum and substance of the product constitutes the TM, a keychain or license plate holder, they don’t engage in Rogers, versus works that contain independent expression into which the TM is folded where they do apply Rogers. It’s rough and not explicit in the case law, but merch that consists of the TM isn’t even treated as expressive in TM law. 
If we did a §43(a) approach, would there be a policing requirement?  Could there be abandonment? 
If we limit the wrong sought to be protected, the endorsement should come from the celebrity itself and not from the estate—postmortem ROP is much harder to sustain. The move people make to get around that is to say that consumers believe that the estate licensed it, but that’s entirely circular.  People don’t think Coretta Scott King endorsed the statue; they may think she’s getting money, but that’s different.
But what about the category of non-false claims?  Paparazzi photos of celebrities drinking Coca-Cola—truthful ad that they drink Coca-Cola.  Courts won’t allow that campaign although it is 100% true. 
Cycles us back to 1A: dangerous constitutional ground if you try to prohibit that by state law.  Can make a good case that implicit endorsement should be actionable, but if you take away the misleadingness—make it absolutely clear that there’s no endorsement—the 1A should prohibit liability.  [Unless it’s commercial speech and the ROP still survives Central Hudson!]
[It says something disturbing about the current SCt that the comments so far largely assume that they are fine with animal crush videos, violent videogames that cause violence, and simulated child sex but we assume that they could not stomach a rule that didn’t give celebrities rights to control truthful commercial speech about them because that doesn’t give celebrities enough money/property rights.  Not something that I’m sure is wrong, but something disturbing.]

A fair amount of sentiment in the room that in fact the SCt will see the ROP as equivalent to the animal crush video law; SCt wouldn’t see it as an IP right because it’s a state right.  I don’t really see that conclusion as following given the Ct’s extreme respect for property rights created by the states.  Even the judicial takings case suggests that the Ct won’t let states cut back on the property rights they created.  Alvarez indicates that Justices across the spectrum believe in trademark rights, and I don’t think they’re just talking about the federal right.
Rogers: said that when you’re dealing w/Lanham Act you have to establish consumer confusion and ROP doesn’t require that, so there needs to be more 1A protection for that very reason. The Third Circuit turned that on its head, for no sensible reason.  We’re really giving celebrities a right of control, not a right of reward.
People do have a visceral reaction to advertising use versus expressive products.  But can’t think of a way to implement that distinction in a satisfying way.
A way to use TM to give some comfort to the Ct?  Haelan was justified b/c celebrities would feel deprived if they could no longer benefit from their endorsements. Given §43’s expansion over the years, there’s become much less of a need for that.  Complementary federal protection.
Does the expansion of stakeholders—people giving likes on Facebook as potential claimants—play into this?

Even if they cut back on commercial speech doctrine, SCt will find a way to deal with the false endorsement issue—maybe by using fraud.
If you use TM analogy, do you get postmortem rights/transferability?
It’s more of a justification—doesn’t mean we take all the rules for TM and transfer them over. [In fact, try a broader false advertising justification—then you don’t get postmortem rights and transferability at all.]  Make Rogers seem relevant by identifying the harm we’re trying to prevent as consumer deception, in which we have a ready-made test for expressive works that incorporate celebrity identities. If the harm is that somebody made money and the celebrity didn’t get paid, then Rogers won’t work.  But that won’t fit many of the suggested justifications for the ROP; the conclusion has to be that the 1A puts many of those justifications off limits.
One sign of how bad transformativeness is as a test is that putting Paris Hilton in an NCAA video game is easier to justify than putting an actual player in.
Rogers exists for a reason: needed something to allow people to use names/etc. in expressive works without vetoes.  Anybody who’s put a TM in a true expressive work w/o permission of owner has gotten a letter; there were lawsuits way back when where TM owners lost. But fundamentally they lost and courts said “no one would assume endorsement or sponsorship in this case.”  Today, where product placement is in 75% of works—that case doesn’t come out the same way without Rogers.  That’s why it’s important that Rogers is a standard that does not rely on an empirical test.  [Rogers rejected a consumer survey even accepting that it was well-conducted.]
The risk of TM world is that, if any connection is thought of as sponsorship/endorsement, then TM isn’t a limiting principle. SCt might not automatically treat Rogers as good law.  Rogers works as a bulwark against that by saying “if it’s artistically relevant, we don’t care if it’s confusing,” as long as you weren’t explicitly misleading.  But: If you look at TM as how the SCt has articulated it, they might not like Rogers.
Current Ct seems better on TM, though.  They might well be fine on Rogers. If they think of it as an IP question, much better that they think of it as TM than as ©!
Practical Issues (but not unrelated to principles)
How to frame the issue to the SCt: straightforward commercial speech case: not commercial speech and fails strict scrutiny.  That’s all that’s necessary.  Role of Rogers: one of our smartest appellate cts has already thought through the issue and gotten there; just clarifying relationship of Rogers to 1A.  [Why does the rump liability of Rogers survive strict scrutiny?]
Cite Stevens: not low value speech; standard interests cited are not present/not compelling/the right is not narrowly tailored to them. 
Logistical question: do you have to do that if you succeed in the doctrinal reframing? One thing the Ct could do is say strict scrutiny applies b/c it’s content based and send it back to the 9th Circuit.  If it’s not commercial speech, 9th Cir’s approach was wrong and strict scrutiny applies. Do you need to preemptively think up and defend against justifications?
Use Zacchini affirmatively as: the lower court misread Zacchini. Torturing it so badly so they end up w/ “it’s unprotected b/c it’s accurate.” 
How do you take on Zacchini?  Wrongly decided?  Distinguishes itself: a complete performance.  Narrowly tailored/compelling interest.  Ohio SCt used the words ROP, but that doesn’t mean that everything that includes the words ROP is Zacchini: a common law proprietary right in complete events. 
What is the right level of scrutiny that should have applied in Zacchini?  Good question! Now we know it’s content based; decided before SCt addressed the relationship between 1A and ©; need not address whether state common law © is treated the same way as federal ©, b/c it’s almost all preempted.  Even setting preemption aside, could say strict scrutiny applied and the nature of claim/interest differ and Ct needs to decide whether it would come out the same way, but it’s still nothing like EA v. Davis.
Path of easiest resistance: just distinguish Zacchini. 
What if the SCt doesn’t take this case? What’s next?  Only place for coherent nationwide rule is SCt.  Would need to find another case.  (Pirelli?)  Jim Brown case is now in the state court of appeals. 
What kind of case will plaintiffs look for?  Sympathetic Ps, like NCAA athletes.  Hurt Locker: ex-Marine?  You took his story/his life!
The problem is that the Ds are giant companies that make millions off the works. We need a D who’s a poor struggling filmmaker.  [SCt may be perfectly sympathetic to giant companies.]
Talk to the Ct about the creative process involved in making these games—creativity, skill, imagination.  Dryer, Sarver, Marshall: no court has gone so far as to treat movies like video games, so we never get to the SCt b/c the Ct doesn’t disagree with the cases and the movie companies oppose cert. Gutsy to not oppose cert and say it’s time to decide this issue. 
That didn’t work so well in Aereo.
There are sympathetic game companies.  Not every potential D—or every real defendant—is a big company/unsympathetic. 
Do they still think this is trivia that they’ve been forced by logic into protecting?  Very important not to make this sound as if we think the world is crumbling. 
Biopics: there’s no way to draw a line.  Videogames can be educational/used in training. Won’t just be trivial.  New form of interactive storytelling, not like merchandise.
If the Ct takes the case: what kind of amicus briefs? 
A good argument would focus on the fact that interactivity is not exclusive to video games: it’s part of reading, going to the movies; insofar as videogames are perceived as interactive, they are not different from anything else. Marshal the literature community in some form, the movie community.  Educators, history teachers.  Ken Burns?
Videogames with multiple levels, creative elements.  [That makes “transformativeness” look like an ok standard.] Better to have a realistic, complicated game.
Was Brown driven by perception of the material, or resentment of the California legislature caught up in anti-violence?  Predecessor cases like Kirby were fantasy; reality simulation games are losing, and those viscerally feel less like literature.  Should focus on why to protect reality-based games.  Biopic producers would produce a good brief.
Remarkably, there were no amicus briefs in Zacchini: Court took it as a sign that industry stakeholders just didn’t care. 
There is a risk that the Ct could backtrack on Brown. Must emphasize importance of throwing traditional expressive works under the bus. Brown is about speech regulation by the gov’t; they won’t have any trouble saying this is a different context.
Focus on the fact that there’s no principled difference b/t games and movies.
Educate the Court about the range of laws, the inconsistencies, the incredible breadth of what the states are doing.  Get facts in about reality of industry.  What you have is a national product that with the internet can’t be limited to certain states.  The state with the strongest ROP sets the rules for the nation.  Vast investment for motion pictures/need for predictability. 
EA takes many licenses—stadiums, NFL teams.  If the Ct rules in EA’s favor and uses Rogers, does that mean that it’s free for all for other competitors to use all these trade dress features of games?  [Yes, it should.]  Have the stakeholders thought this through?  EA games could be lower price/higher quality if it faced more competition from others who could use realism.
Some is copyrighted.  But EA was asked that at oral argument and it’s willing to take that result.

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