September 30, 2012

Tupac Lives! What Hologram Authors Should Know About Intellectual Property Law

Jana M. Moser

The growing popularity of holographic performances in the entertainment industry promises to trigger a slew of legal disputes. This new frontier of entertainment will generate often-conflicting legal positions from celebrities and intellectual property rights holders, on the one hand, and the public, on the other. For those reasons, hologram authors and attorneys should be aware of the various legal implications that holographic performances have for the entertainment industry so that those interested in creating holographic performances may avoid legal disputes as holographic performances become a part of mainstream culture.

The Entertainment Industry's Holograph: An Illusion

The recent proliferation of current and planned holographic performances has been the result of the phenomenal popularity of Tupac Shakur's post-mortem appearance at the Coachella Valley Music and Arts Annual Festival in 2012. Tupac's performance, though lauded as a hologram, was achieved not by bona fide holographic technology, but rather by an illusion developed in the 1860s known as Pepper's Ghost. The illusion is created by the reflection of light off a reflective screen set at a 45-degree angle to the audience. The so-called "hologram" actually is an object or image hidden from the audience and reflected off of the screen.

A hologram, by contrast, is a photographic image that is three-dimensional and appears to have depth. Holograms work by creating an image composed of two superimposed, two-dimensional pictures of the same object seen by different reference points. The use of slightly offset reference points is designed to mimic the image interpreted by the human brain, which likewise receives a distinct, slightly offset image from each eye that the brain combines into a three-dimensional image.

Tupac's hologram was designed by a creative team at Digital Domain Media Group, James Cameron's visual effects company, which also was responsible for the computer-generated representation of an aged Brad Pitt in The Curious Case of Benjamin Button. The Digital Domain Media Group team carefully reviewed old footage of Tupac to recreate his characteristic movements and likeness into a video that then was projected onto a screen on stage. Thus, what appeared to be a three-dimensional hologram was, in fact, a two-dimensional projection. The projection—or rather, multiple high-definition projection streams—was delivered by AV Concepts, which utilized a Musion Eyeliner screen and a 30 x 13 projection system, customized by the company to descend onto the stage in mere seconds under the cover of darkness to assist in the audience's perception of Tupac as a hologram.

Intellectual Property Rights

Celebrities' Rights

Before discussing the legal implications of holographic performances, it is important to first understand celebrities' various rights. First, notwithstanding the various exceptions found in federal copyright law (most notably, the work for hire doctrine), celebrities and other artists own the copyright to their work. Copyright protects original works of authorship, including literary, dramatic, musical, and artistic works. From the moment an artist "fixes" a work (whether it be a novel, movie, or song) in a "tangible medium of expression," that work is protected under federal copyright law. The artist then enjoys a number of exclusive rights, including the right to reproduce the work, prepare derivative works, distribute copies of the work to the public, perform the work publicly, and display the work publicly. Notably, copyright protection lasts well beyond the author's death; for works published after 1978, the copyright term is generally 70 years after the death of the author, while works published before 1978 enjoy a comparable term, albeit with a more complex calculation.

Celebrities also can own a trademark to their name. A trademark is a word, phrase, symbol, or design (or a combination of them) that identifies and distinguishes the source of goods or services. A celebrity's right to the trademark in his or her name may arise at common law from actual use of the mark or through an application filed with the U.S. Patent and Trademark Office (PTO). Generally, the Trademark Act prohibits registration of a mark that is "primarily merely a surname" because personal names typically are descriptive and do not function as a trademark. A surname may be registered as a trademark, however, if through extensive and exclusive use, the public comes to recognize the surname as a source of particular goods or services; in trademark law, this is known as acquiring "secondary meaning." Many well-known individuals and celebrities (or their estates) have registered their names as trademarks with the PTO, including Britney Spears, Paris Hilton, Elvis Presley, Muhammad Ali, Donald Trump, and Celine Dion, to name a few. Others have gone further and established secondary meaning between their name and a product or industry beyond their status as a celebrity. By way of example, Paul Newman established a valid trademark in both his name as a celebrity, providing "entertainment services comprising dramatic performances by an actor in movies and on television," and in the food industry through his store brand, Newman's Own. Through trademark law, celebrities protect themselves and their name from "dilution," which occurs when a mark is used in a manner that will tarnish or cheapen the "brand" associated with the celebrity's name or likeness. The trademark can last indefinitely, so long as the mark continues to be in use.

Most states protect celebrities during their lifetime against the unauthorized commercial use of the celebrity's name, image, likeness, voice, and signature. These "rights of publicity" or "personality rights" allow celebrities to stop unauthorized uses of the celebrity's name, likeness, etc., and to seize infringing goods. In recent years, the protection afforded to personality rights has extended even after the celebrity's death, though the states vary in the degree of protection afforded, with some states providing only limited protection and others continuing the protection for up to 100 years after death.

It is critical that hologram authors consider these rights and acquire appropriate licenses because of the vast legal and financial ramifications likely to follow if holographic performances are not licensed appropriately. For instance, copyright law allows plaintiffs to obtain injunctions to prohibit future copying and monetary damages to compensate for the infringing use and, in some cases, punish the defendant for copyright infringement. Similarly, trademark law provides that successful plaintiffs may be awarded injunctions against further infringing or diluting use of the trademark, while monetary relief may be available to recover the defendant's profits, damages sustained by the plaintiff, and the costs of the action. Right of publicity lawsuits engender similar risks; for example, Woody Allen was reported to have settled a right of publicity lawsuit against American Apparel, Inc., for $5 million (half of what the actor was seeking in damages) based solely on the company's use of two unlicensed, unauthorized billboards featuring his image in New York and Los Angeles.

Copyright Law

Holograms present a unique conglomeration of copyrighted or copyrightable material, and thus present several areas of note for the entertainment industry's use of holographic performances.

First, in the case of holograms featuring deceased celebrities, it is likely that the majority of celebrities relevant to today's culture—and by extension, today's target audience-will date only as far back as the advent of "talkies" in cinema and, therefore, will have passed away within the last 80 to 90 years (though holograms featuring historic public figures including, for example, deceased presidents or famous writers and musicians also are likely to appear). With respect to licensing material or the right to create derivative works, hologram authors must consider whether the material from which they draw remains under the protection of copyright law or whether the material has become a part of the public domain. Though the statutory provisions governing copyright duration use different standards depending on whether federal statutory copyright protection was secured after January 1, 1978, the date the current law took effect, any published work created in the last 90 years almost certainly will remain protected by federal copyright and therefore require a license for its use. If the hologram author wishes to draw from works created in 1978 or after, the copyright duration for published works is 70 years after the death of the author. If the hologram author draws from works created before 1978—a time period that would include performances by Marilyn Monroe, Elvis Presley, and the Beatles, just to name a few—then the work generally will be protected by copyright for 95 years after the date of first publication.

On the other hand, the United States is entering the final years of protection for several famous characters; should hologram authors wish to create holographic performances based on those characters, the question of licensing will become one of trademark (which can last forever), not copyright. Perhaps the most famous character scheduled to enter the public domain is Mickey Mouse, who first made an appearance in a 1928 animated short film called Steamboat Willie. Scheduled to enter the public domain four times since its creation, the Mickey Mouse character will enter the public domain in 2023 absent another amendment and extension to the U.S. copyright term. Once characters like Mickey Mouse enter the public domain, hologram authors freely may view, edit, or transform the characters with no regard for the copyright owner's (for example, the Walt Disney Company) creative or monetary interests. Thus, for example, rival companies may create a holographic Mickey Mouse production freely; indeed, after 2023, even a virtually identical holographic reproduction of Steamboat Willie would not be an infringing work under the law. As discussed below, however, trademark rights would remain a potential obstacle for this use.

The second feature that hologram authors must consider is the layers of a hologram that may be copyrighted as a new work or derivative work: the holographic image itself, and the recording used in conjunction with the holographic image. Thus, if a hologram author is considering creating a hologram based on a deceased celebrity, the author will need to acquire rights from the owner of the reproduced image as well as the owner of the reproduced voice. Such licensing attempts may be complicated by the fact that both rights will not necessarily be held by the same entity. Additionally, the holographic image may be an entirely new work (that is, an original image or character created entirely from new content), or it may be a derivative work (that is, based on, or derived from, another copyrighted work). Similarly, the voice recording may be an entirely new work (as will be the case if the hologram is not based on any former copyrighted work), an exact reproduction of an old recording, or a combination of the two. Thus, in the case of holographic performances by dead celebrities, the simplest scenario (that is, a hologram drawing from a recorded image owned by a single copyright owner and a recorded voice owned by a single copyright owner) presents at least two sources of content that must be considered for the purpose of licensing the artist: the image and the recording.

Nevertheless, unless the hologram is an exact reproduction of an existing recorded performance, it is more likely that the hologram will draw from multiple images and voice recordings. This might be the case if an original holographic concert is created that draws from multiple recorded concerts that took place throughout the deceased artist's life. In this case, unless each recorded performance is owned by a single copyright holder, the hologram author will need to procure licenses to use the copyrighted material from each separate rights holder. Additionally, the hologram author will need to acquire the right to create a derivative work—that is, an expressive creation that includes major copyright-protected elements of an original, previously created first work—from each separate rights holder. The equation becomes increasingly complex if different owners own the copyright to each performance and recorded song. Again, the hologram creator will need to acquire the right to create the derivative work from each copyright holder.

The Tupac holographic concert illustrates this concept. The Tupac image was created through computer graphics based both on physical characteristics and movements from the performances recorded before the rapper's death as well as fresh movements and new dialogue. The rights to create Tupac's hologram reportedly were fairly easy to acquire, as the controller of Tupac's estate—his mother, Afeni Shakur—authorized the hologram in exchange for Dr. Dre's contribution to the Tupac Amaru Shakur Foundation. Other deceased celebrities promise to be a greater challenge, however. For example, the Michael Jackson and Ray Charles estates are controlled not by the musicians' families, but rather by professionals; for these estates, hologram authors will need to acquire rights from the professional executors. Given the litigious relationship between the executors and family members of various deceased celebrities, hologram authors also will need to be wary of the potential for conflict and/or litigation even if rights are acquired successfully from the executors of the estate.

Finally, a hologram may be an entirely original work, created with entirely new content, but nevertheless feature a deceased celebrity or public figure. In this case, the restraints presented by copyright law are less clear. If the hologram truly does not draw on past performances by the celebrity or public figure, then copyright holders (including the estates of deceased celebrities) will have little on which to base a claim for infringement or demand that the image be licensed. On the other hand, states recognizing the right of publicity for deceased celebrities and public figures potentially will provide the estate with a viable claim for infringement. Likewise, to the extent that a celebrity or public figure has become a trademark, the owners of the marks may have a viable claim to the improper use of the name or brand if the name or brand is used to market the hologram.

Trademark Law

While copyright covers works of authorship, trademark, by contrast, covers the distinctive nature of a celebrity's name and talent. Thus, while a celebrity also may control the creative content of a hologram based on his or her likeness through copyright, a celebrity may also control the commercial nature of the hologram through trademark.

The first issue a hologram author must consider is whether the hologram will infringe upon the celebrity's trademark in his or her name as a celebrity and, if applicable, whether the hologram will infringe upon additional uses or markets to which the celebrity has attached his or her name. The use of a trademark in connection with the sale of a good constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of the goods.

Whether a hologram will infringe a celebrity's trademark in his or her name largely will depend on the use to which the hologram is being put. Given the immediate surge in the popularity of holograms after Tupac's Coachella performance, one can imagine the plethora of marketing uses to which holograms might be put: animated holograms in movie theaters may replace standard cardboard cutouts, while stationary or animated holograms may replace mannequins in store windows. Indeed, one can imagine holographic billboards replacing traditional two-dimensional billboard advertising in high-impact locations such as Times Square. When a hologram merely is replacing older forms or manners of marketing, the infringement analysis should mimic those cases that have been decided under traditional media.

Other uses of trademark are not as cut and dried, however. For instance, as described in greater detail above, the copyright in older characters like Mickey Mouse are due to enter the public domain in the next decade or two. When that happens, the creative design of the character becomes open to the public; the trademark, however, will last as long as it continues to be used commercially. Thus, while a hologram author would be able to create works based on the Mickey Mouse character, the hologram author would not be able to use the hologram to sell goods or services. Additionally, the hologram author would not be able to use the Mickey Mouse character in a way that causes confusion regarding the affiliation of the trademark owner to the image; thus, if consumers are likely to believe mistakenly that a Mickey Mouse hologram production was sponsored by Disney, then Disney may have grounds for a trademark infringement claim.

Right of Publicity

Finally, the right of publicity protects the celebrity's interest in the commercial exploitation of his or her name or likeness, including his or her name, face, signature, and voice or vocal style.

The first consideration for hologram authors interested in creating a holographic performance is whether their subject is protected by the right of publicity at all. Unlike a trademark, which may be founded in purely creative works like Mickey Mouse, the right of publicity has extended traditionally only to persons. Non-human entities such as corporations or partnerships do not enjoy the right of publicity; similarly, purely fictional, non-human characters—for instance, animated characters—do not enjoy the right of publicity. Thus, while hologram authors generally will have to secure a license to create a holographic performance based on a human likeness, there is no such requirement for holographic performances of non-human characters.

While the right of publicity does not extend to non-human entities, this right nevertheless has enjoyed some expansion in the last 30 years that warrant consideration. For instance, courts have held that the right of publicity extends to group personas like musical bands. The Ninth Circuit extended the right of publicity even further in Wendt v. Host International Inc., holding that a celebrity's right of publicity may be infringed by the unlicensed portrayal of a character played by the actor, even if the portrayal is not referencing the actor him or herself. Thus, if a hologram author wishes to create a holographic performance based, for example, on a popular television series or film, the author will need to seek a license from the copyright holder for the creative element of the work, the trademark holder for advertising purposes, and possibly the actor(s) for the use of their image in both the creative and advertising elements of the hologram.

Finally, in the case of deceased celebrities, hologram authors will need to consider whether the celebrity enjoys post-mortem personality rights. The amount of protection for a deceased celebrity's right of publicity varies widely from state to state, and the state where a celebrity is domiciled at death determines the existence of his or her post-mortem rights. The question of the post-mortem validity of the right of publicity recently was explored by Marilyn Monroe's estate in a dispute with the estate of photographer Sam Shaw, a long-time photographer of the actress. The dispute culminated in two court decisions that ruled against protecting her personality rights because of Monroe's domicile at the time of her death. Though Monroe lived in both California and New York, Monroe was legally domiciled in New York at the time she died, a state that provides very little post-mortem protection of personality rights. Thus, the court held that Monroe's deceased celebrity personality rights in California were unprotectable, even though California provides deceased celebrity rights protection for 70 years after the death of a celebrity. In light of these cases, then, hologram authors should have an easier time acquiring the pertinent licenses for celebrities domiciled at death in New York and similarly inclined states, while celebrities domiciled in California, for instance, will present a greater barrier.

Conclusion: Looking Forward

Since Tupac's Coachella appearance, the news has increasingly announced holographic performances, concerts, and alternative uses of holographic technology. Indeed, in May 2012, the Port Authority announced the purchase of three holograms programmed to answer questions most frequently asked by consumers at LaGuardia, Newark, and John F. Kennedy airports; to get information from the holograms, passengers simply have to speak to them. Thus, the foregoing legal considerations promise to be only the beginning as holographic performances continue to become mainstream.

Beyond the legal considerations explored in this article, several moral considerations also are worth exploring. For instance, the question of whether a hologram author can secure the rights necessary to create a holographic performance of a deceased celebrity does not answer the question of whether he or she should. In Tupac's case, the Tupac hologram was created with the permission of Tupac's mother and under the meticulous care of Dr. Dre. By contrast, other deceased artists may not have a social network caring for the perfect replication of his or her likeness and mannerisms. In other cases, it may be cost prohibitive to create a holographic performance that perfectly mimics those elements; given that Tupac's holographic performance is estimated to have cost around $100,000, studios may not be willing to replicate an artist's mannerisms with perfect accuracy.

Other considerations relate to the artists themselves. Knowing that holographic performances are a part of mainstream entertainment—and particularly in light of the appeal of holographic performances by deceased entertainers—artists should address the question of whether and to what extent their name and likeness may be utilized as a holographic performance when negotiating contracts. Indeed, this question is as much a backward thinking issue as it is forward: for those contracts that already have been executed, an important question will be whether the rights granted by the artist included the right to create a holographic representation at all.

These issues demonstrate the important role that transactional and litigation attorneys will play in assisting the creative and business development of holographic performances in the future.

Jana M. Moser

Jana M. Moser is an intellectual property attorney with the Law Offices of Gerard Fox, Inc., in Los Angeles.