Giving the Right of Publicity a Much-Needed Makeover for the Social Media Revolution

Vol. 5 No. 2

By

Lynne M.J. Boisineau is a partner at McDermott Will & Emery LLP in Irvine, California. She focuses her practice on trademark prosecution, enforcement, and litigation support, as well as copyright, right of publicity, and domain name matters that touch on trademark law. She can be reached at lboisineau@mwe.com.

What does it mean to be a celebrity? There was a time when the answer to that question was fairly clear to most people. However, the technology boom that began during the second half of the 20th century changed all of that, and the laws regarding the protection of a person’s name, portrait, picture, likeness, or voice have struggled to keep up with the evolving media in which these types of intellectual property can be exploited. As the dissemination of photographs, sound files, and videos went from cumbersome and expensive to something that most kindergartners can master, a celebrity is no longer necessarily a well-known actor, singer, or public figure. Overnight sensations born of reality shows, celebutants, teens featured in viral videos, influential CEOs, average citizens involved in extraordinary newsworthy events, popular bloggers, and even children of famous parents can be viewed as “celebrities” by many Americans. With this expanded notion of “celebrity” come unique challenges in striking a balance between these individuals’ rights to protect their names/images and capitalize on the exploitation of same during the frequently short length of time that they are “famous,” and the First Amendment protections afforded to those reporting newsworthy events or using someone’s name/likeness for purposes of criticism or commentary.

The New Kid on the Block

The right of publicity is a latecomer to the intellectual property game. Unlike copyright law, which conveys federal protection and is derived from the U.S. Constitution, or trademark law, which was originally a common law doctrine dating back prior to that time period (the first U.S. trademark registrations were issued in the 1870s), the term “right of publicity” was only coined in the latter half of the 20th century. The decision that spawned the term “right of publicity” is Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.1

Right of publicity law shares some similarities with copyright and trademark law. For example, various courts have recently imported the notion of “transformative use” from copyright law in assessing claims of fair use in right of publicity cases.2 However, unlike copyright, the right of publicity does not have a fixation requirement, and publicity rights can last longer than a copyright in those states affording generous postmortem protection, such as Oklahoma’s statute allowing for 100 years of protection after the protected individual’s death.3 More importantly, copyright ownership is no defense to a right of publicity claim when the copyright owner makes unauthorized commercial use of a person’s identity apart from the copyrighted work (e.g., using a performer’s name or likeness on merchandise). Often the copyright in a work is owned by someone other than the performer/artist, but the right of publicity is almost always owned by the person or the heirs handling the estate of the performer/artist.

In addition, right of publicity laws share a common goal with the Lanham Act, which is designed to protect the consuming public from confusingly similar trademarks and to protect the owners of famous brands from the dilution of their marks.4 The Lanham Act also contains provisions for redressing unfair competition based on false advertising, misappropriation, or passing off.5 Right of publicity laws in many states target the same type of harm, as they provide a mechanism for protecting the value of a celebrity’s name, likeness, and/or voice, which may function as a “brand” of sorts. Such laws are designed to allow a person to control the exploitation of his or her image in a commercial way and otherwise. In this regard, many celebrities endorse certain products or services and rely on that income, so they utilize right of publicity laws to prevent others from capitalizing on unauthorized uses of their names, likenesses, or voices to sell products or services that the celebrities may feel harm their images, convey a negative message, or potentially lessen the availability of future endorsement deals. The right of publicity differs from trademark rights, however, because the Lanham Act requires use of a mark in interstate commerce, and even a noncommercial purpose can diminish a celebrity’s status or desirability.

Notwithstanding the similarities noted above, right of publicity law also remains the most fluid and erratic area of protection due in part to the fact that not all states have enacted laws specifically protecting the right of publicity. To date, 28 states offer common law right of publicity protection, but only 19 states have implemented right of publicity statutes, and of those, only a dozen protect this right postmortem.6 In addition, the scope of that postmortem protection differs dramatically in each state that treats right of publicity as a descendible right (10–100 years postmortem).7

To complicate matters further, the right of publicity has been evolving as technology does—closely tracking the introduction of TV, computers, video games, Internet, social media, avatars, digital personas, smartphone apps, holograms, etc. The advent of social media has added an enormous layer of complexity to the application of right of publicity law—much more so than previous inventions. It is no coincidence that the right of publicity came into its own during the golden age of film and television. Prior to the 1950s, celebrities could only be seen briefly, in movies shown for a short period of time in particular theaters. The invention of television gave rise to new opportunities to advertise products using endorsements. It built the careers of actors starring in soap operas and television shows, and it allowed people to unite for particular causes, such as telethons.

The Social Media Invasion

All of this pales in comparison, however, to the way in which social media has impacted the right of publicity. A person’s “name” can be used as a Twitter handle, as the profile name of a Facebook page, as a YouTube channel, as a character in a video game, or in the title of a smartphone app. Similarly, a person’s “portrait,” “picture,” or “likeness” can come in the shape of a digital image that can be copied and pasted thousands of times in any of the scenarios above, as well as appearing as a video on YouTube, a “pin” on Pinterest, as the wallpaper on a cell phone, or as an avatar on a smartphone app. A person’s “voice” can be used in a podcast, as the navigational guide on your GPS, or as a narrator of an electronic book; recorded as a “voice memo” on a smartphone and posted on a social media site; attached as digital file to an electronic message; and so on.

Although not all of these uses are actionable, the seemingly infinite number of ways to run afoul of right of publicity laws in the social media arena coupled with the ever-expanding doctrine have caused many critics to clamor for a more uniform approach and/or a narrowing of the scope of right of publicity protection.

To put things in perspective, consider that this year’s graduating class is the first group of high school seniors to have had the Internet available their entire lives. For this generation of kids, “celebrity” is an entirely different notion than it is for those of us who grew up watching black and white television. This changing culture and the technology behind it are driving the backlash toward narrowing the scope of the right of publicity and the seemingly limitless definition of “celebrity.” Just as the cell phones of the 1980s and 1990s seem comically cumbersome and impractical to use, the right of publicity laws in many states (especially those that do not yet have specific statutes to deal with this issue) could use a “makeover” to incorporate the concepts and implications of social media and to help companies and brand owners that are entering this space for advertising and marketing purposes navigate the difficult waters of right of publicity law.

A Rose by Any Other Name

On the most basic level, the right of publicity is an individual’s right to prevent others from commercially exploiting his or her identity (voice, name, likeness, etc.) without permission. Given the way that this area of law has been trending, that right is available to virtually everyone, not just to A-list celebrities. If you violate someone’s right of publicity, you can be forced to take down the content in question and/or pay monetary damages to that individual.

One of the most intriguing recent right of publicity cases, Fraley v. Facebook, Inc., is a class action lawsuit against Facebook over its “Sponsored Stories” advertising services.8 This lawsuit arose because certain Facebook users were dismayed upon finding out that their names and user profile photographs were arranged by Facebook in the perimeter of newsfeeds viewed by their friends based on their “likes” of various branded products. Interestingly, Facebook’s own admissions that such advertising has approximately double the value of an advertisement without an accompanying “testimonial” allowed the case to survive a motion to dismiss.9 Given that the plaintiffs in Fraley were able to show a “direct, linear relationship between the value of their endorsements of third-party products, companies, and brands to their Facebook friends, and the alleged commercial profit gained by Facebook,” they have been allowed to continue their right of publicity case.10

Before the social media invasion, it is unlikely that any of us who practice in this area of law would have conceived of a case wherein the plaintiffs are average citizens trying to prevent others from commercially exploiting their identities. Traditionally, noncelebrities bring suit under the corresponding “right to privacy” laws that protect intrusions into their private lives due to the publication of personally sensitive information. In our ever-changing world, no end of individuals and companies wait in the wings for the next big trend and brainstorm about how to manipulate publicly available information about average citizens and turn a profit by exploiting a newly discovered market for it. One of the first examples that comes to mind is the Internet business Classmates.com that promised to connect you with your high school classmates back in 1995 for a nominal fee. In hindsight, those original social media sites look to the Internet generation like the first video games look to us now: shockingly simple and underdeveloped.

The right of publicity applies not only to one’s given name, but nicknames and phonetically similar names as well. For example, in 1978, Muhammad Ali was able to show that a caricature depicting an African-American boxer in connection with the phrase “the Greatest” appearing in Playgirl Magazine evoked his identity, as Muhammad Ali frequently referred to himself (and was referred to worldwide by others) as “the Greatest.”11 This trend has continued with somewhat disturbing results, as the nexus between the plaintiff’s name/nickname and the defendant’s use has become increasingly tenuous. To wit, a few years back Lindsay Lohan filed a lawsuit against E-Trade in relation to a talking baby commercial that referred to an off-screen “milkaholic” baby named Lindsay. Lindsay Lohan argued that she was recognizable by her first name alone (a la Cher or Madonna), and that her “name” was being exploited for commercial gain by E-Trade. The outcome of that case, had it gone to trial, would likely have clarified the metes and bounds of the right of publicity for more obtuse references to a person’s name, but unfortunately for academics, the case settled.12

In a more recent case, Justin Bieber’s representatives sent a cease and desist letter to RC3, the creator of a video game app for smartphones wherein the main character, Joustin’ Beaver, navigates around the “whirlpool of success” while signing “otter-graphs.” RC3 has retaliated with a declaratory judgment action filed in Florida.13

Likeness Is in the Eye of the Beholder

One of the most groundbreaking uses of a person’s likeness occurred just a few months ago at the Coachella Valley Music and Arts Festival, when what has been termed “the Tupac hologram” (an illusion of the deceased musician created utilizing a high-definition 3D holographic video projection system involving a custom rigging and mechanical solution) “performed” with Snoop Dogg and Dr. Dre. The technology used in creating Tupac’s likeness allows for not only the reproduction of a person’s image, but it also can recreate the person’s voice to “sing” songs never performed before. Tupac’s right of publicity is owned by his mother, Afeni Shakur, who authorized the “performance” by Tupac and was apparently thrilled with it.14

However, others have not been thrilled when their likenesses are used in a digital rendition for commercial profit, especially when permission for such use is not requested by the company making the profit. In one case, Ryan Hart, a former quarterback for Rutgers University, alleged that use of the virtual quarterback in the NCAA Football video game by Electronic Arts (EA) was a taking of his persona. The court ruled that EA’s right to free expression under the First Amendment outweighed Hart’s right to control how his name and likeness are used, even though the statistics and uniform numbers of the virtual football players closely track those of actual college athletes.15 EA licenses the right to use the team and league names, but does not obtain permission from athletes to use their names and likenesses—its argument being that because users can modify virtual players by changing their physical characteristics or athletic skills, there is no actionable right of publicity, due to the protection offered by the First Amendment and the transformative nature of the game.16

In the social media arena, “twitterjacking” is the newly coined term for a particular type of right of publicity issue that involves unauthorized use of a person’s likeness. Twitterjacking occurs when a person creates a Twitter account using another’s name and likeness and impersonates that “celebrity” by tweeting unauthorized (and often offensive) messages to the unsuspecting followers of that Twitter account. Victims of twitterjacking include not only famous celebrities, but also well-known athletes and their coaches, comedians, government officials, and CEOs. Unfortunately, because the phenomenon is so new, very few cases involving twitterjacking have been filed in federal court, so the terrain in pursuing such a claim is still rocky. The state-to-state differences in treatment of right of publicity claims may lead to different outcomes (e.g., in some states, it may be better to file a claim under the right to privacy, copyright/trademark infringement, unfair competition, or other business torts to achieve a better result, depending on the facts in a particular twitterjacking incident). In the meantime, companies that already have a presence on Twitter can report impersonators using Twitter’s online form.17 Companies can also proactively link to their Twitter profiles from their official websites in an effort to guide their fans and followers to their official Twitter pages. Twitter also has tried to mitigate the problem via its “Verified Account” initiative, by helping users “discover high-quality sources of information and trust that a legitimate source is authoring the account’s Tweets.”18

One famous “likeness” case that muddied the waters of the right of publicity is Vanna White’s case against Samsung.19 In that case, Vanna White filed suit under the right of publicity against Samsung for using a robot in an evening gown and blond wig in an advertisement that evoked the aura of the Wheel of Fortune game show set. The robot was obviously not Vanna White, nor was it a look-alike human woman, so the conventional statutory right of publicity definition of “likeness” did not apply. However, the court held that under the common law right of publicity, a broader interpretation of “likeness” was appropriate—one that encompassed a commercially valuable identity brought to mind by the images depicted in the Samsung advertisement.20 Many critics are vocal about the dangers of the rampant expansion of the right of publicity since the White case, which has opened the floodgates for plaintiffs who cannot sue under a traditional “likeness” theory.

The Sincerest Form of Flattery

Just as a person’s name and likeness have value, so does a person’s voice. The voices in popular themed commercials are highly recognizable, even if we do not know the name of the particular actor supplying that voice. For instance, the voices of the narrators of the Allstate Insurance and Kaiser Permanente commercials or the Dos Equis “The Most Interesting Man in the World” campaign are highly unique and arguably famous, which makes the voices very valuable. This is why the GPS devices that convey directions in familiar famous voices are highly marketable. Accordingly, under the majority of the current right of publicity laws, any use of audio containing such voices (or employing voice impersonators) could be actionable.

Two such cases were decided in close proximity approximately two decades ago. In the first, Bette Midler sued Ford for using a “sound-alike” impersonator to sing in a commercial for Ford cars.21 A few years later, a case involving a singer imitating Tom Waits’s distinctive voice in an advertising jingle was decided.22 In both instances, the plaintiffs were able to recover large sums of money in damages because they could prove economic damage based on the value of distinctive vocal styles.

Social media sites make it easy to upload videos and sound files that contain voices, so careful analysis of such files should be performed before posting any type of voice reproduction that could lead to a right of publicity claim. Software that allows a person to change his or her voice also could provide grounds for a right of publicity suit if used improperly to imply an endorsement or association with a particular celebrity having a very distinctive voice or style/manner of speaking (e.g., Jaleel White as Steve Urkel, James Earl Jones as Darth Vader, etc.).

If You Can’t Beat Them, Join Them

Companies must at least consider engagement with social media, because it appears to be on its way to being one of the most influential ways to advertise products or services. The Atlantic magazine recently ran an article pointing out why companies would do well to place a good portion of their advertising dollars in the tablet/smartphone arena, which is where most of us access our social media pages.23 The general public also becomes aware of particular products or services when friends “like” a company on Facebook, tweet on Twitter, or “pin” an item on Pinterest. Companies that are not taking advantage of these trends are losing out on a wealth of free and highly effective advertising. By tapping into its fan base, a company can harness the power of word-of-mouth advertising and drive it in a positive direction. Most importantly, if a company does not have its own official page, pinboard, app, following, handle, or account on the most popular social media sites, someone else will. It is no longer a question of if, but of when.

Accordingly, it is crucial that companies develop action plans for taking advantage of these free marketing spaces and steer clear of right of publicity issues on their official sites, while policing social media sites for misuse of their own intellectual property, including those that involve individuals who endorse their products or are featured in their advertisements. Many companies have “social media directors” or response teams with clear guidelines for both proactive and defensive uses of social media. The longer a company waits to create and implement some system for addressing social media and the right of publicity issues that accompany this realm, the more likely it is to encounter a situation requiring a “triage” approach, rather than a carefully crafted response. Nothing is more dangerous than a rushed response that can actually do more damage than the initial right of publicity issue, once it is published, republished, tweeted about, and linked to on numerous other sites.

Conclusion

With the explosion of social media sites such as Facebook, Twitter, and Pinterest, lawyers have struggled to apply conventional right of publicity claims to social networking activity, with some success. However, new problems arise with each new social media fad. In 2012, companies that utilize social media to advertise and channel the interests of their customers and “fans” need to be mindful of all of these issues before launching a social media page, blog, or smartphone app. Creating a social media clearance plan is imperative to navigating the myriad potential right of publicity issues that can arise in relation to existing and new forms of social media.

In that regard, it remains to be seen just how far courts will expand the right of publicity before the pendulum invariably swings back the other way. For example, it is unclear exactly what constitutes a statement of historical fact versus the use of another’s name/likeness to endorse a product. In one case, Yeager v. Cingular Wireless LLC, the name of Chuck Yeager, the first pilot to travel faster than the speed of sound, was used without his consent in Cingular’s press release, and was found to be a violation of his right of publicity because his name and accomplishments in breaking the sound barrier had nothing to do with Cingular’s emergency response programs; they were used merely to attract attention to the defendant’s services.24 But at what point can you safely state a historical fact or publish a photo of an event that occurred in the context of social media advertising? This cutting-edge question is currently being litigated in a case between the heirs of Humphrey Bogart and Burberry, which posted a photograph of the famous actor wearing a Burberry coat on a timeline featured on social media sites, including Facebook and Twitter.25

Another unanswered question is whether an avatar of a celebrity created on an app violates the celebrity’s right of publicity. In what circumstances would the avatar be a parody? Similarly, in gaming communities where highly realistic avatars can be created and those avatars often engage in virtual commerce, can the right of publicity of the players be protected, or do they give up all rights under the terms of the service agreement?26 Until we develop a more uniform approach to the way that cases involving the right of publicity are treated and we more clearly define what constitutes a “name,” “likeness,” or “voice,” in the context of existing social media and those yet to be discovered, companies will remain vulnerable to right of publicity lawsuits if they do not implement a systematic way of evaluating the risks associated with their own advertising and addressing social media threats to their brands.

Endnotes

1. 202 F.2d 866 (2d Cir. 1953). However, the first state to pass a law prohibiting the use of a living person’s “name, portrait or picture” was New York in 1903. N.Y. Civ. Rights Law § 50 (McKinney 2009).

2. David Leichtman, Yakub Hazzard, David Martinez & Jordan S. Paul, Transformative Use Comes of Age in Right of Publicity Litigation, 4:1 Landslide 28 (Sept./Oct. 2011).

3. Okla. Stat. Ann. tit. 12, § 1448(G) (West 2012); see also Ind. Code Ann. § 32-36-1-8(a) (West 2012). A full listing of all of the right of publicity statutes in the United States can be found on Jonathan Faber’s Right of Publicity website at http://rightofpublicity.com/statutes (last visited Sept. 10, 2012).

4. 15 U.S.C. §§ 1051 et seq.

5. Id. § 1125(a).

6. Leichtman et al., supra note 2.

7. Id.

8. 830 F. Supp. 2d 785 (N.D. Cal. 2011).

9. Id. at 799.

10. Id. at 800.

11. Ali v. Playgirl, Inc., 447 F. Supp. 723 (S.D.N.Y. 1978).

12. Lindsay Lohan & E-Trade Settle Milkaholic Baby Lawsuit, Huffington Post (Sept. 21, 2010), http://www.huffingtonpost.com/2010/09/21/lindsay-lohan-etrade-sett_n_733657.html.

13. Complaint for Declaratory Judgment, RC3, Inc. v. Bieber, No. 3:12-cv-00193 (M.D. Fla. Feb. 24, 2012).

14. Tupac’s Mom—Coachella Hologram Was Frickin’ AMAZING, TMZ (Apr. 16, 2012), http://www.tmz.com/2012/04/16/tupac-mother-afeni-shakur-coachella-hologram/.

15. Hart v. Elec. Arts, Inc., 808 F. Supp. 2d 757, 760 (D.N.J. 2011).

16. Id. at 784–85.

17. Report an Account for Impersonation, Twitter, https:// support.twitter.com/forms/impersonation (last visited Sept. 10, 2012).

18. FAQs about Verified Accounts, Twitter, http:// support.twitter.com/groups/31-twitter-basics/topics/111-features/articles/119135-about-verified-accounts (last visited Sept. 10, 2012).

19. White v. Samsung Elecs. Am., Inc., 971 F.2d 1395 (9th Cir. 1992), petition for reh’g en banc denied, 989 F.2d 1512 (9th Cir. 1993).

20. Id. at 1398.

21. Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988).

22. Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992).

23. Richard Ting, Why Mobile Will Dominate the Future of Media and Advertising, Atlantic, June 6, 2012.

24. 673 F. Supp. 2d 1089 (E.D. Cal. 2009).

25. Bogart Heirs and Burberry at Odds over Trench Coat Image, L.A. Times, May 4, 2012, available at http://articles.latimes.com/2012/may/04/business/la-fi-burberry-bogart-20120504.

26. See, e.g., Oliver A. Khan, Me, Myself, and My Avatar: The Right to the Likeness of Our Digital Selves, 5 I/S: J.L. & Pol’y for Info. Soc’y 447 (2009).

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