Right of Publicity panel, Abrams Institute for Freedom of Expression

From Yale Law School’s Abrams Institute for Freedom of Expression

Commercial Speech and the First Amendment: Does the Right of Publicity Transcend Commercial Speech?

Jennifer Rothman: Right of Publicity? Right of Privacy?

Rothman gave a keynote summarizing highlights of her excellent book on the right of publicity. The key shift, she argues, is not from privacy to property (she says it was understood as property by many from the beginning) but from personal right to transferable right and thus to “IP” right.  1A scrutiny has been limited by IP analogy; deeming works to be less original/expressive because they use another’s image, even though that doesn’t make sense.

Big 1A challenges: The video game cases’ emphasis on realism as a reason that there’s no 1A protection for depictions.  Sarver v. Chartier, which looks like a win for movies but which she doesn’t like because its emphasis was on the lack of commercial value in the plaintiff’s identity—the very public figures we most need to talk about will have commercial value, and those are the ones that the 9^th Cir. said had the strongest IP right that could overwhelm 1A rights. Thus Olivia de Havilland’s claim in Feud was no surprise—it combined realism + celebrity value. The trial court accepted de Havilland’s realism claim, though the court of appeals didn’t. Now seeking review by Cal. SCt; she expects affirmance of court of appeals but the grounds could be better or worse.

Panel discussion:

Moderator:   Jeremy Feigelson, Debevoise & Plimpton

Panelists:     Robert C. Post, Sterling Professor of Law, Yale Law School: different interests need to be broken out and analyzed. Protection for performance: Zacchini.  Dignity: a violation of dignity to take someone’s image. Right to control one’s image: the right to be forgotten, the GDPR—right to control information about you.  Essence is control as an interest in itself.  Trademark: the right to preserve the mark against disparagement, dilution.  Trademark: false endorsement/roughly akin to false light. Each interest would define damages differently; assignability would vary across these interests.  Different interest would get different shape tort, but we don’t, which is an indicator of how confused things are and which makes 1A analysis difficult. 

1A: many complicated tests; more like the IRS code. But when you get down to it, your job as lawyers is to say what’s moving the court.  Transformativeness test makes so little sense on its own terms it can’t possibly be moving the court; what are the actual social dimensions of what speech gets protected?  Different kinds of speech acts & the 1A value the court sees.  (1) Public speech acts. The SCt protects speech because of your right to form public opinion, which makes the government responsive—highest form of protection.  (2) Commercial speech: not about forming public opinion but about selling goods—a normative distinction w/gigantic consequences, though the court is beginning to lose track of those consequences.  You couldn’t regulate misleading editorials, but the FTC regulates misleading ads. Compelled speech is allowed in commercial speech, as are prior restraints. Fundamental, pervasive doctrinal distinctions controlled by this on/off switch.  Matal v. Tam (makes very little sense in this context).  (3) Comedy III: one question is whether this is art? Or is it a T-shirt/merchandise w/an image on it?  [That’s the same thing said two ways, in my opinion.]  If that same artist had put it in a frame, court would have seen it as art/public discourse; transformativeness was beside the point.

Early Prosser tort of appropriation: in many forms, seen as an autonomy right the way the Europeans write about personal information.  Right to control information in public discourse is contrary to the basic premise of the First Amendment.  To protect the ROP for that reason is ruled out from the get-go.  That’s why the RTBF/GDPR doesn’t have a 1A prayer in the US. That’s distinct from falsity/disclosure of private facts; that’s not control, but the dignitary harm of disgrace. That’s a protectable interest, albeit a narrow one. Right to control info in commercial speech: an almanac of baseball players & their statistics—I do it around gum. The court says it’s protecting commercial speech to protect dissemination of information. Insofar as the court says that, commercial speech is protected for listeners to receive accurate information. Is there a true interest in preventing listeners from receiving accurate information?  Why would using the image instead of the stats change anything? Atavistic feeling that the image is more of a dignitary harm. Need to clearly articulate the interest that the 1A is protecting as well as the ROP.

Rebecca Tushnet, Frank Stanton Professor of the First Amendment, Harvard Law School    

Comedy III involved lithographs: I have owned two copies of the Three Stooges lithograph.      

Some things that courts have accepted, at least at the pleading stage, as ROP violations: a lawyer listing his clients on his website; references to a company that is named for its founder and allegedly inherently associated with its founder; Wikipedia edits about the history of a product; and a whole range of expressive works with de Havilland only the most prominent recent example.  One caution: as long as you can call anything “confusing” under TM law, the idea of false endorsement won’t produce much of a limit. Solved in TM by fiat—declaring certain things nonconfusing. 

Rothman: all the tests are trying to get at the same thing—balancing interests—but we need to be more clear about what we’re interested in.  Years later, as we have different “tests,” we’ve lost sight of what they were about to begin with.  If transformativeness means you can’t depict de Havilland realistically, then transformativeness doesn’t work; the court of appeals dropped a footnote indicating potential agreement w/that.

Feigelson: all the types of works we’re talking about get vetted; lawyer wants to know whether a motion to dismiss will succeed. Do any tests give clarity?

Post: as a practical matter, you can always sue and draw a judge who won’t do the right thing. Ultimately, are you going to win?  It’s extremely important to know movie v. ad v. merchandise. If it’s a disparagement case it might be more determinative.  But courts are uncertain about how to treat many media, including video games.

RT: Justice Stevens’ old test for commercial speech regulation: is the regulation designed to protect consumer in transaction?  In that case, we should give it more relaxed scrutiny.  If the regulation is trying to do something else, it has to meet more stringent standards. That may be better than trying to say whether a particular speech act is “commercial speech.”  And in practice the SCt has been working its way towards that result at least w/r/t nonmisleading commercial speech. 

Rothman: remember that courts use commercial in different ways: sometimes they use it to mean “for profit” and sometimes “advertising.” Courts do treat merchandise differently even though merchandise is not commercial speech.  She thinks merchandise can be very expressive—MLK Jr. bust.  Rosa Parks plaque sold by Target.  Expressive merchandise. But commercial advertising is also very expressive.  Patagonia fighting Trump on environmental regulations, etc. There’s a lot of convergence b/t politics, cultural identity expressed by product choice, etc.  In terms of predictions: Traditional content/media: you should not worry too much about ROP.  If you’re selling merchandise: worry. Nontraditional media: less safe. Commercial advertising: even less safe. Not sure it should be that way. Eventually the simplicity of the commercial/noncommercial divide will break down.

Thinks that putting an image on a mug will violate ROP but a little bit of commentary will be enough to take it out of the merchandise box—even TRUMP SUCKS would be enough. Potential substitutionary effect for potential market for the plaintiff is also relevant. With Reese Witherspoon, she might want to sell her own mugs/jewelry.  More akin to performance—undercutting of professional opportunities. Merchandise cases are substitution cases. [But see Moore v. UA where the court concludes that the work is transformative, but that still doesn’t it allow it to be put on a mug or calendar.]

Post: coverage and protection—Court sees mugs as not covered [though note that if a public employee were fired for having a “Hillary Clinton” mug that would be treated as a speech issue; Post indicates that the mug would be evidence of the impermissible motive and not the thing itself (but the reason that the ROP would regulate the mug itself is also because of the reason for the regulation)].

Does not see how a simple name or image on a mug impairs dignity, though there is a false endorsement question under modern circumstances. 

Rothman: less troubled by limits on the use of private figures—they are often substitutable—in fictional depictions (though thinks that the Hurt Locker case clearly comes out the right way).

Feigelson informed us of the existence of a Lego recreation of the Zacchini case, including Hugo Z telling the Lego reporter not to film.

Rothman: hard to imagine that Zacchini would sue in 2018 because of brand promotion issues; still thinks the case was wrongly decided. 

Some discussion of the case filed by Muhammad Ali’s estate against Fox for its pre-Superbowl ad/mini-documentary linking Ali’s greatness with that of the NFL.  I thought it was commercial speech [is that off-brand or on for me?]