Four IP Virtuosos

Mark Lemley: Reining in Right of Publicity: Reflections by a Leading Scholar

Uli Widmaier and Kristine A. Bergman

©2016. Published in Landslide, Vol. 8, No. 4, March/April 2016, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Mark Lemley is the William H. Neukom Professor of Law at Stanford Law School and the Director of the Stanford Program in Law, Science and Technology. He teaches intellectual property, computer and Internet law, patent law, trademark law, antitrust, and remedies. He is the author of seven books (most in multiple editions) and 146 articles on these and related subjects, including the two-volume treatise IP and Antitrust. His works have been cited over 200 times by courts, including 11 United States Supreme Court opinions, and over 13,000 times in books and law review articles, making him one of the five most cited legal scholars of all time. He has published nine of the 100 most-cited law review articles of the last 20 years, more than any other scholar, and a 2012 empirical study named him the most relevant law professor in the country. His articles have appeared in 22 of the top 25 law reviews and in multiple peer-reviewed and specialty journals. They have been reprinted throughout the world and translated into Chinese, Japanese, Korean, Spanish, Italian, and Danish. He has taught intellectual property law to federal and state judges at numerous Federal Judicial Center and ABA programs, has testified seven times before Congress, and has filed numerous amicus briefs before the U.S. Supreme Court, the California Supreme Court, and the federal circuit courts of appeals.

Mark is a founding partner of Durie Tangri LLP. He litigates and counsels clients in all areas of intellectual property, antitrust, and Internet law. He has argued 19 federal appellate cases and numerous district court cases as well as before the California Supreme Court, and represented clients including Comcast, Genentech, DISH Network, Google, Grokster, Guidewire, Hummer Winblad, Netflix, and the University of Colorado Foundation in over 95 cases in his more than two decades as lawyer.

Mark is a founder and board member of Lex Machina Inc., a startup company providing data and analytics around IP disputes to law firms, companies, courts, and policymakers.

In 2006, you coauthored an article with Professor Stacey Dogan in which you criticized existing justifications for the right of publicity and expressed the hope that the right of publicity would “return to the shadow” of trademark infringement law.1 Has your hope in any way been realized? What are the main trends in the development of right of publicity law since the article was published, and do those trends go in a direction that you approve?

The expansion of the right of publicity unfortunately continues. Not only have courts not limited the doctrine to cases in which the public might believe the celebrity has endorsed the product, they have essentially done away with the requirement that the defendant must use the plaintiff’s name or likeness in “commercial advertising or promotion.”2 The commercial use doctrine, which limited the publicity right to cases involving commercial speech, has been replaced by a willingness to apply the right of publicity even to depictions of a celebrity inside a product, as long as the product itself is sold for money. The definition of the right of publicity now seems to be “use of anything that reminds the public of a celebrity in any context in which money is involved.”

In that same article, you express grave reservations about the relationship of the right of publicity with First Amendment law. Has the right of publicity become more hospitable to First Amendment interests? And what about copyright law, which you argue informs the analytic framework of right of publicity cases, and which you believe also insufficiently accommodates First Amendment interests? Have there been any positive developments?

As courts have expanded the right of publicity, the doctrine has come into conflict with the First Amendment more and more often. More and more courts have recognized this conflict, but they have struggled with how to deal with it. Two basic approaches have emerged. The first, the transformative use test, comes out of the California Supreme Court’s Saderup decision.3 The defendant, Gary Saderup, was an artist who made charcoal drawings of celebrities that were reproduced on T-shirts. Saderup sold T-shirts with reproductions of his drawings of The Three Stooges without the owner of the comedy act’s consent. The court applied a modified form of copyright’s fair use test, but one that focuses on only one aspect of fair use—whether the defendant’s use of the celebrity’s image was transformative and thus protected by the First Amendment. “[W]hen an artist is faced with a right of publicity challenge to his or her work, he or she may raise as affirmative defense that the work is protected by the First Amendment inasmuch as it contains significant transformative elements or that the value of the work does not derive primarily from the celebrity’s fame.”4

Unfortunately, courts have had a hard time applying this test, both because judging the transformativeness of art is a perilous enterprise, and because courts have not been willing to look at the entire context of the defendant’s use in deciding transformativeness.5

Other courts have followed the Rogers v. Grimaldi test, where celebrity Ginger Rogers alleged that the defendant’s production of the movie Ginger and Fred violated her right of publicity.6 The Second Circuit held that a product title or cover does not give rise to a right of publicity claim unless it has “no artistic relevance” to the underlying work or, if there is artistic relevance, the title “explicitly misleads as to the source or the content of the work.”7 This is a much more speech-protective test, though it too has its line-drawing problems, as the suit over the OutKast song “Rosa Parks” suggests.8 But it works only for a subset of cases—those involving creative works by the defendant.

Ultimately the Supreme Court will likely have to resolve the conflict among these approaches.

If and when the Supreme Court does ultimately resolve conflicting approaches to the relationship of right of publicity and the First Amendment, what is your preferred resolution? What resolution do you think we can reasonably expect the Supreme Court to implement, if it were to take such a case? Is there any guidance from other Supreme Court decisions as to how the Court might rule here?

The Supreme Court has confronted the right of publicity only once, in the Zacchini decision from the 1970s.9 There, the Court decided the extent to which a newscaster’s recording of an entertainer’s entire human cannonball act was privileged by the First and Fourteenth Amendments. However, the commercial speech doctrine was barely a gleam in the Court’s eye at that point. In fact, the case was really as much a common-law copyright decision as a right of publicity decision.10 The Court concluded that Ohio could prohibit reporting the entirety of Zacchini’s act on television, reasoning: “[I]t is important to note that neither the public nor respondent will be deprived of the benefit of petitioner’s performance as long as his commercial stake in his act is appropriately recognized. Petitioner does not seek to enjoin the broadcast of his performance; he simply wants to be paid for it.”11

Whether or not Zacchini would come out the same way today, I think the Court’s First Amendment jurisprudence has evolved a great deal in ways that render other right of publicity cases problematic. Among other things, the Court has explicitly extended First Amendment protection to the content of video games.12 This may change the outcome of at least some right of publicity cases. Take the Davis v. EA13 case, for example. In that case, the Ninth Circuit held that a video game’s uses of avatars of football players that resembled actual players’ likenesses was not protected by the First Amendment. A petition for certiorari was recently filed,14 and if the Court grants the petition, I think it will reject the Ninth Circuit’s conclusion that the First Amendment simply didn’t apply unless the image of the plaintiff itself was transformed. The Court might not go so far as to apply the Rogers v. Grimaldi test, which would give video games effective immunity from the right of publicity, but it is likely at a minimum to focus on the creativity in the EA game as a reason the law cannot simply forbid it.

How have new social media (Twitter, Instagram, Facebook, etc.) affected the right of publicity? Do you think the rise of these media creates a greater need for the right of publicity, or on the contrary counsels in favor of a more modest right of publicity and greater solicitude for First Amendment rights?

I think it does both. The right of publicity has long been about celebrities. But social media opens up the possibility that any one of us can “go viral,” often in ways that we don’t like. Consider the “Star Wars Kid”15 or anyone who has been shamed for something he or she has done. Ordinary people are increasingly turning to the right of publicity to try to block depictions of themselves they consider unflattering. At the same time, social media means that ordinary people are potential defendants as well as plaintiffs in these cases. A private posting on a Facebook or Twitter account blurs even the new line between what is commercial and what isn’t.

Do you believe the right of publicity should be available for use against unflattering depictions? And in the context of social media, how should the line between commercial and noncommercial be drawn when it comes to right of publicity claims against “ordinary people”?

I think the proper role of the right of publicity is mostly limited to false endorsement cases. But people who want to suppress unflattering speech about themselves will turn to whatever means are available. And even if their real complaint is a defamation or false light invasion of privacy claim against the poster, those claims are hard to prove and the people who posted them often turn out to be poor, if you can find them at all. Plaintiffs will increasingly want to go after intermediaries like Twitter or Facebook because they have the big pockets. And unlike copyright law, there is no Digital Millennium Copyright Act to protect intermediaries who adopt a notice and takedown system.

Social media also raises right of publicity issues because of the prevalence of fake celebrity pages. Sometimes these pretend to be the real celebrity; those are pretty clearly illegal. But other pages expressly identify themselves as fakes, or are written in a context (say, @SwiftOnSecurity, a Twitter account that purports to feature posts about cybersecurity by Taylor Swift16) in which no one is likely to think the celebrity is the one doing the posting. These materials aren’t confusing people, and they are useful speech, but they are also trading on the brand of the celebrity. Whether they are doing so in a commercial way the law cares about is a difficult problem the courts will have to sort out.

Please comment on the recent right of publicity cases involving the likenesses or identities of sports figures, particularly football players, in the context of video games and the like. How are these cases shaping the evolution of right of publicity law?

The courts have failed to strike the right balance in the sports video game cases. In Keller,17 for instance, the Ninth Circuit concluded that the right of publicity of every NCAA football player in the country was violated because those players were depicted accurately in EA’s video game. The court paid no attention to the fact that the game itself was highly transformative and creative, and that the use of an athlete’s likeness was only an infinitesimal part of that game. The result was to shut down an excellent, popular game altogether. I appreciate that NCAA athletes are sympathetic plaintiffs, in part because they haven’t been allowed to monetize their own identity. But that needs to be balanced against the ability of game makers and others to participate in this aspect of popular culture.

In litigation, what defenses do you view as most promising against right of publicity claims, and why?

One of the oddest things about litigating these cases is that, unlike other IP doctrines, there aren’t really many elements of the cause of action or many defenses. It is a much more amorphous, “I know it when I see it” inquiry. I do think that if we see successful defenses, they will tend to come from outside the doctrine itself. Hence the popularity of the First Amendment defense, which can act as a trump over right of publicity claims.

Endnotes

1. Stacey L. Dogan & Mark A. Lemley, What the Right of Publicity Can Learn from Trademark Law, 58 Stan. L. Rev. 1161 (2006).

2. See, e.g., Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831, 835 (6th Cir. 1983) (“The right of publicity has developed to protect the commercial interest of celebrities in their identities.”).

3. Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797 (Cal. 2001).

4. Id. at 810.

5. See, e.g., In re NCAA Student-Athlete Name & Likeness Licensing Litig., 724 F.3d 1268 (9th Cir. 2013), cert. dismissed sub nom., Elec. Arts Inc. v. Keller, 135 S. Ct. 42 (2014); Hart v. Elec. Arts, Inc., 717 F.3d 141 (3d Cir. 2013) (rejecting transformative use defense to right of publicity claims).

6. 875 F.2d 994 (2d Cir. 1989).

7. Id. at 999.

8. See Parks v. LaFace Records, 329 F.3d 437, 455–56 (6th Cir. 2003):

There is a clear distinction, however, between the facts in Rogers and the facts in the present case. In Rogers, the court had no difficulty in finding that the title chosen for the movie Ginger and Fred had artistic relevance to the content of the movie. . . . In contrast, it cannot be said that the title in the present case, Rosa Parks, is clearly truthful as to the content of the song which, as OutKast admits, is not about Rosa Parks at all and was never intended to be about Rosa Parks, and which does not refer to Rosa Parks or to the qualities for which she is known.

. . . The mere fact that the phrase “move to the back of the bus” is an apt description of OutKast’s attitude toward entertainers they regard as lesser human beings is not, in our view, a justification, as a matter of law, for appropriating the name of Rosa Parks.

9. Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562 (1977).

10. Id. at 576 (“[T]he broadcast of petitioner’s entire performance, unlike the unauthorized use of another’s name for purposes of trade or the incidental use of a name or picture by the press, goes to the heart of petitioner’s ability to earn a living as an entertainer.”).

11. Id. at 578.

12. Brown v. Entm’t Merchs. Ass’n, 131 S. Ct. 2729, 2733 (2011) (“[V]ideo games qualify for First Amendment protection.”).

13. Davis v. Elec. Arts, Inc., 775 F.3d 1172 (9th Cir. 2015).

14. Petition for a Writ of Certiorari, Elec. Arts Inc. v. Davis, No. 15-424 (Oct. 6, 2015).

15. See 10 Years Later, “Star Wars Kid” Speaks Out, Maclean’s (May 9, 2013), http://www.macleans.ca/news/canada/10-years-later-the-star-wars-kid-speaks-out/ (interviewing the original “Star Wars Kid” on his difficulty with cyberbullying after the video of his clumsily imitating a Star Wars Jedi knight went viral in 2003).

16. Zohaib Ahmed, If Taylor Swift Was an Online Security Expert, She’d Tweet Like This, Carbonated.TV, http://www.carbonated.tv/technology/fake-taylor-swift-twitter-account-gives-out-excellent-security-advice (last visited Jan. 10, 2016).

17. In re NCAA Student-Athlete Name & Likeness Licensing Litig., 724 F.3d 1268 (9th Cir. 2013), cert. dismissed sub nom., Elec. Arts Inc. v. Keller, 135 S. Ct. 42 (2014).