Tuesday, September 14, 2010

IPO: right of publicity

Intellectual Property Owners Association Annual Meeting. ETA: link to materials removed at request of the IPO, even though the link was to a public internet page. This was done as a courtesy, although the IPO has no right to control linking. Next time, I suggest it use a password.

Right of Publicity

Ronald S. Katz, Manatt, Phelps & Phillips, LLP, Palo Alto, CA

Right now we’re in a complete mess; nobody knows what the law is. We have too much/too little law. Katz generally represents celebrities; involved in Adderly v. NFL and represents Jim Brown against Electronic Arts. Adding to confusion—at least four causes of action for the same facts: breach of fiduciary duty (Adderly); antitrust (O’Bannon, UCLA basketball team), right of publicity, and trademark (Jim Brown). He’s sticking to right of publicity and video games.

Why video games? Electronic Arts had $4.1 billion in revenues, over $400 million from Madden NFL, played by 70 million people. Money = litigation. Importance of these cases shown recently by cases against EA and NCAA; friends of the court briefs filed in support of EA by 31 organizations, including LA Times, ESPN, MPAA—every major media content provider in the country. Also involve free speech. Apparently courts consider a video game to be the same kind of thing as War & Peace; you can burn a Koran; a tattoo is free speech. But you can’t defame someone; you can’t make jokes about bombs while standing in security lines. You can’t take a copanelist’s presentation and publish it as your own. You can’t start the Ron Katz Olympic Games. US SCt ruled that the USOC has exclusive rights to use “Olympics” and derivatives. Zacchini: the nightly news can’t show a performer’s entire act; this is the only Supreme Court case on the right of publicity.

Complicated because many people don’t think video games are works of art; and they are getting more realistic. A football game used to show Xs and Os, but Madden NFL is intended to be realistic: the tagline of EA is “it’s in the game.” Realism collides with various tests for appropriation of right of publicity: transformativeness, enunciated by California Supreme Court. Winter Brothers case: Katz argues that the comic artists used the Winter Brothers instead of a random person because they were exploiting the Winter Brothers’ intellectual property.

Media companies take a strong perspective: all works that are expressive are excluded from publicity rights.

Take a look at an actual case: union told EA to scramble the identities of retired players, but paid for the identity of active players, $35 million to the union. For the retired players, scramble them so we don’t have to pay them. The union was, however, the agent of the retired players. The scrambling was also minimal: showed an example where teams, position, height was the same; weight was within a few pounds. EA told the public “you can play the team”—player knows, as fan of team, that it has to be Joe Montana because it can’t be the 1984 team without Joe Montana. Plus the player is given the ability to change the number on the jersey! Can’t be resolved simply by appealing to free speech or to the right of publicity.

Elizabeth McNamara, Davis Wright Tremaine, LLP, New York, NY

Represents media companies, taking a different view. Right of publicity should focus on important principles: this is not a right against having your name or image used without permission. This relatively new right must be balanced against the First Amendment, which confers the right to depict, comment on, etc. people and events. You can use someone’s exact likeness to write about them for news or entertainment purposes. But you do have to engage in linedrawing. At one extreme: traditional advertising and commercial exploitation that we all agree requires permission. At the other: art, film, books—and yes, video games. There, you do not need permission except in certain circumstances.

California alone has 3-4 different tests, sowing confusion and unpredictability. Transformativeness, borrowed from copyright. Actual malice, borrowed from defamation. Public interest; ad hoc balancing tests. And other states have other tests. Highly fractured and unpredictable. The only people benefiting from confusion are litigators.

Focus on one case exemplifying these issues: Stewart v. Rolling Stone. Whimsical look at indie bands, surrounded by a gatefold ad celebrating RJR’s support for indie bands. Alleged that the ads plus the feature became a unified advertising vehicle, thus appropriating the bands’ rights of publicity. As is common, the advertiser was told about the theme of the issue (the future of music) and may have been told about the theme of the gatefold, indie music. But it wasn’t told about or shown the editorial content. RJR selected a theme that it thought would resonate with the audience, just as Sports Illustrated would have sports-related advertising and Travel & Leisure would have travel-related advertising.

Plaintiffs didn’t object to being included in the editorial feature, nor would they have had any grounds to do so. They objected to the apparent integration of the editorial and the ads. Rolling Stone argued that to win, plaintiffs would have to show intent to create an impression of endorsement; the lower court found that a jury could reach that conclusion because it permitted RJR to design an ad that could integrate with the feature, and that Rolling Stone didn’t check to ensure that the feature and the ad were sufficiently distinct. The court of appeals reversed, underscoring that entertainment has the same protection as traditional news reporting; pure editorial content can’t be transformed to commercial speech through inadvertence or negligence. Commercial speech has a financial motive, and Rolling Stone had no interest in the sale of cigarettes. No precedent for magazine/TV company to become a commercial speaker because of proximity to ads. All editorial content in the magazine is in a sense embedded with advertising (the magazine is more than ½ ads!).

Critical elements: who the speaker is. Creator of an expressive work—courts give more latitude to creator-speaker than to traditional commercial advertiser. Compare Hoffman v. Capital Cities (Dustin Hoffman loses against LA Magazine for manipulating his image in a fashion spread) to Downing v. Abercrombie & Fitch (surfer wins against clothes seller for using his photo in an allegedly editorial feature on surfing when the catalogue also advertised t-shirts just like those worn by the subjects of the picture—editorial was “window dressing” to sell the shirts).

Conflicting cases: Winters v. DC versus Doe v. TCI Cablevision, irreconcileable cases about comics and the right of publicity. Romantics v. Activision (musicians in interactive music video game have no claim); Keller v. Electronic Arts (athletes in interactive sports video game have claim).

We could have rationality and predictability from uniform adoption of Rogers v. Grimaldi—courts don’t agree amongst themselves; cases routinely reversed on appeal. Rogers would help by establishing that liability would attach only if (1) use of name or likeness was wholly unrelated to the content of the work; or (2) this was actually an ad and not an expressive work. (Also if there was an explicit misrepresentation about endorsement.)

Maherin Gangat, Staff Attorney, Media Law Resource Center

Legislative push from people with an interest in deceased celebrities. Amendments to existing statutes and efforts to enact new legislation. Would create rights to sue that didn’t exist when they were alive. Marilyn Monroe estate has been trying to reverse adverse court rulings. 19 states recognize a right of publicity by statute, 14 of which recognize descendible rights, from 10 to 100 years.

California/Marilyn Monroe—her right held by Anna Strossberg, widow of Monroe’s acting coach. Monroe didn’t will the right specifically to Strossberg, but the residuary clause of her will gave everything left over to him. Sued owners of copyrights in photos of Monroe taken in the 50s and 60s; those owners sued Strossberg’s licensee for interference with their right to exploit copyrights.

In 2007, the court held that CMG (licensee) lacked standing to assert postmortem right of publicity; legislature didn’t grant postmortem right until 1985 and Monroe died in 1962, so her will couldn’t have transferred the nonexistent right. California amended law: shall be deemed to have existed for anyone who died before 1985—passes under will either expressly or by residuary clause. The judge later held that her right could have passed provided she was domiciled in California at the time, but CMG was estopped from claiming that because it had already argued that she was a resident of NY when she died.

NY’s right of privacy was enacted in 1903: advertising/purposes of trade use requires written consent; doesn’t apply to deceased persons. CMG sued Shaw Family Archive in Indiana, taking issue with a photo that ended up on a T-shirt sold at Target. Shaw sued in NY and the cases were consolidated. 2007: CMG lost because Monroe didn’t own a descendible right when she died and was unable to bequeath it to heirs. Turned to the NY legislature, with support from Al Pacino, Martin Sheen, Arthur Ashe estate. Latest proposed law: would cover people 70 years postmortem. Bill hasn’t passed, because of opposition from various groups. Media, internet companies, entertainment companies, photographers and photo agencies. One issue of concern: exemption for expressive works.

California statute: exempts play, book, magazine, newspaper, musical ocmposition, audiovisual work, radio or TV program, single and original work of art, ….

NY proposed a very long list of exemptions, also adding in graphic novel, sound recording, calendar, greeting card, T-shirt where the portrait appears in the shirt itself and not as part of any hang tag or other label; does not say “video game”—exemption would only apply to deceased personalities, not to the living. Trying to take into account new forms of expression (but doesn’t the list form inherently present problems for new forms?).

Washington: enacted a postmortem amendment in 1998, intended to apply to any individual who died 50 years before 1998. Hendrix case: court held Hendrix domiciled in NY when he died, and NY didn’t recognize a posthumous right of publicity then. Washington amended law in 2008 recognizing rights regardless of where the person was domiciled.

Hawaii: new law, very little discussion of it or litigation. Exemptions for various expressive works (but not all).

Going forward we are going to see a lot of pre-introduction interest group bargaining to create compromise language before its introduced.

Rebecca Tushnet, Georgetown University Law Center

Would these statutes help the problems addressed by our first two speakers?

Katz: statutes create more litigation, not less. Common law is needed.

McNamara: itemizing exemptions brings some clarity. But you can step into these claims when you least expect them. Or when you’re just trying to engage in what you consider to be political speech—Nike v. Kasky’s press releases on manufacturing in foreign locations. Involved in a case in Illinois in connection with Michael Jordon’s induction into Hall of Fame: Jewel Osco ran an ad, “congratulations Michael” with a picture of shoes with 23 on them—Michael Jordan sued Jewel, and Jewel in turn sued Time, which had issued the call for commemorative ads.

Gangat: Exemptions in the statutes have a list of expressive works, but then if there’s a play about a real life deceased person, what about merchandise sold in connection with that play?

Katz: blurry line between ads and non-ads. Represented a baseball player who hit a famous home run. MCI had a series of commercials during the World Series for great moments in World Series history; done without permission.

My q: What about product placement?

Katz: law is clear that incidental use is not actionable, but what is incidental? Video games have 1000s of players; Jim Brown however is not incidental. Grand Theft Auto case: Pig Pen v. Playpen. No bright lines. Big issue in Paris Hilton case: can the district court decide that an image is protected as a matter of law? These are often not issues of law, at least under the law as it stands.

McNamara: litigation hasn’t arisen yet, because players/actors have signed contracts, but someone could be alluded to as lines blur between editorial and advertising content.

Q: Don’t right of publicity claims conflict with the Falwell case, where Hustler was sued for intentional infliction of emotional distress. Would Falwell have been better off suing for violation of his right of publicity? (This is relevant to the E*trade case.) Also, is there a parody defense?

McNamara: Falwell case wasn’t a real ad. Hustler had done a parody of someone else’s alcohol ads.

Me: this is an example of the incoherence of right of publicity claims. Saderup upheld a right of publicity claim against art, not an ad.

Katz: advertising something protected is also protected: California case allowing advertising of picture of Joe Montana as part of poster to advertise the San Jose Mercury News.

Gangat: some of the old statutes exempt satire and parody.

Q: any discussion among relevant interest groups about federal right of publicity?

Gangat: no—there was a failed bill a few years ago; not coming up any time soon because of opposition.

Katz: no organized group of celebrities; high sense of entitlement, hard to negotiate with them as a group. Lanham Act exists, but does have a confusion requirement. McCarthy cites survey from 1983: statement that consumers agreed with most was that no product can bear the name of a celebrity/character without permission. (Bear the name—not the same as being in the expressive product.)

Q: how to distinguish EA from cases on fantasy football, where the union sued for using players’ statistics and lost?

Katz: He has no problem with Bonds’s batting average being in the public domain. But does that answer the question of video games? No. Zacchini is the only Supreme Court case we have; we know you can’t take a guy’s entire act. EA has taken more than the entire act of Jim Brown; they’ve taken his entire career, thousands of hours and terrible injury. Jury is sympathetic.

Q: agrees with the jury point, but what makes that different from the statistics? Fantasy league is making money too—the same history, the same injuries.

Katz: video game is more of a product, not War & Peace. You’re creating a performance based on Brown’s attributes.

Q: in history of tracking lobbying, you can specifically tie CMG to NY and California, and Indiana. How much is CMG doing in other states? They’re doing a lot of lobbying, and media entities are perhaps not as focused in other states.

Gangat: You can track celebrities: Bill Cosby in Massachusetts; Michigan, Muhammad Ali; N.Car., Dale Earnhart Jr.

McNamara: in EA games, they do not create animated versions of any game. There is no Jim Brown performance depicted. To the degree there’s any use of likeness, it’s the same statistics as appear in fantasy sports. Creation of the work is driven by the player. Notion of great works of art is not the standard—we protect low brow and stupid things under the First Amendment. Making a lot of money: entertainment and news organizations do that too. Famous people as reference points are part of the enjoyment of the works.

Katz: Alliances among businesses shift—right now the NFL union is a major business partner of EA, receiving millions—NFL has the right to the team colors and uniforms, which is critical: people don’t want to see Jim Brown in a business suit.

Me: that’s precisely my concern: that only big entities will be able to cut deals that allow them to create expressive works.

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