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June 05, 2013 Articles

When Right of Publicity and the First Amendment Collide

Does venue determine outcome?

By Mary Ellen Roy

When the right of publicity collides with the First Amendment, the venue of the litigation may determine the outcome of the dispute.

The right of publicity arose originally out of the right of privacy, but it is also viewed as a proprietary right. Section 46 of the Restatement (Third) of Unfair Competition defines the right of publicity as subjecting to liability one "who appropriates the commercial value of a person's identity by using without consent the person's name, likeness, or other indicia of identity for purposes of trade."

In addition to the state-law right of publicity, a claim of false endorsement under the Lanham Act, 15 U.S.C. § 1051 et seq., has been called a federal right of publicity. Because there is no likelihood-of-confusion requirement for right-of-publicity claims, as there is with Lanham Act claims, such claims may potentially be broader than false endorsement claims under the Lanham Act. In most cases, resourceful plaintiffs allege both right of publicity and Lanham Act causes of action in their complaints, and courts often treat the claims similarly.

At times, the right of publicity collides with the First Amendment's right to freedom of speech and of the press. Such a collision occurs when a news or artistic work—such as a television broadcast, a magazine article, a film, a painting, a song, or even a video game—features a celebrity's name or likeness. There is no doubt that the news media may report newsworthy items about a celebrity's life, such as births, deaths, arrests, and even more trivial details such as public shopping expeditions or travels. The more difficult cases involve situations in which the celebrity's name or likeness is exploited commercially without authorization.

Little Guidance from the Supreme Court
The only Supreme Court case to examine the extent to which the constitutional right to freedom of expression may trump the right of publicity is Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977). Zacchini is known as the "human cannonball" case. In Zacchini, a local television news station broadcast the entire 15-second act of an entertainer being shot from a cannon into a net some 200 feet away. The act was performed at a county fair and aired on an evening news program. The Supreme Court held that the First Amendment "did not immunize the media when they broadcast a performer's entire act without his consent." Id. at 575. The Court likened such a broadcast to airing a copyrighted dramatic work without liability to the copyright owner. The Court was particularly troubled that the broadcast of the plaintiff's entire act would pose "a substantial threat to the economic value of that performance" and went "to the heart of [his] ability to earn a living as an entertainer." Id. at 575–76.

Most of the time, however, the collision between the right of publicity and the First Amendment does not involve the publication of the "entire act" of an entertainer. Thus, Zacchini has provided little guidance to lower courts in the continuing struggle between these two competing interests.

The Rogers Test
The Second Circuit was the first court to develop a test for deciding cases featuring a collision between the right of publicity and the First Amendment. In Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), Ginger Rogers sued the makers of the Fellini film Ginger and Fred (about fictional cabaret performers), arguing that the title of the motion picture violated her right of publicity. The court held that unless the title of a work has "no artistic relevance to the underlying work whatsoever" or "explicitly misleads as to the source or the content of the work," the creator's First Amendment right to free expression will outweigh the celebrity's right of publicity. Id. at 999.

The Second Circuit later extended the so-called Rogers test beyond the limited realm of titles to any case that required the court to balance the competing rights of free expression and publicity. See Cliff Notes, Inc. v. Bantam Doubleday Dell Publ'g Grp., Inc., 886 F.2d 490 (2d Cir. 1989).

Critics have argued that under the Rogers test, it is virtually impossible for a celebrity to defeat a First Amendment defense, as the defendant will nearly always be able to show that the creative work bears some "artistic relevance" to the celebrity and that the use of the celebrity's identity does not "explicitly mislead as to the source or the content of the work."

Ignoring the Rogers Test
In the next major case featuring a skirmish between the First Amendment and publicity rights, the Tenth Circuit ignored the Rogers test and instead conducted a detailed analysis balancing "the magnitude of the speech restriction against the asserted governmental interest in protecting the intellectual property right." Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959, 973 (10th Cir. 1996). Cardtoons upheld the First Amendment defense of the designers of trading cards featuring identifiable caricatures of major league baseball players, holding that the cards provide "social commentary" on public figures who are involved in a "significant commercial enterprise." Id. at 969. In weighing the competing interests at stake, the court observed that celebrities are "common points of reference for millions of individuals who may never interact with one another, but who share, by virtue of their participation in a mediated culture, a common experience and a collective memory." Id. at 973. Presaging the "transformative use" test discussed in other venues in later opinions, the court pointed out that the trading cards "added a significant creative component of its own to the celebrity identity and created an entirely new product." Id. at 976.

Still More Tests
Next, the Ninth Circuit eschewed any type of balancing exercise and looked instead to First Amendment defamation jurisprudence to decide Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001). The case involved Los Angeles magazine's use of a photo of Dustin Hoffman in drag from the movie Tootsie to create an image depicting the actor wearing women's clothes. The court held that because Hoffman was a public figure, he could prevail only by proving with clear and convincing evidence that the defendants had acted with actual malice to create a "false impression." Id. at 1187. As with the Second Circuit's Rogers test, this standard is virtually impossible for a celebrity plaintiff to overcome.

The California Supreme Court waded into this confusing thicket by announcing its own "transformative use" test in Comedy III Productions, Inc. v. Gary Saderup, Inc., 21 P.3d 797 (Cal. 2001). The defendant artist had drawn lithographic and silk-screen masters of the Three Stooges to produce prints and T-shirts. Borrowing an element of the "fair use" defense well-known to copyright lawyers, the court held that "when a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interest protected by the right of publicity." Id. at 808 (emphasis added). Applying this test, the court held that the prints and T-shirts at issue were not sufficiently transformative to command First Amendment protection.

The Sixth Circuit's Approach
Demonstrating that a plaintiff may be able to prevail under the stringent Rogers test, at least if the plaintiff is a civil rights icon, the Sixth Circuit held in a case two years later that there was an issue of material fact as to whether the defendant's rap song "Rosa Parks" violated Ms. Parks's right of publicity. The court held that it was open to reasonable debate whether the lyrics telling other rap artists to "move to the back of the bus" had artistic relevance to the title of the song. Parks v. LaFace Records, 329 F.3d 437 (6th Cir.), cert. denied, 540 U.S. 1024 (2003).

Just over a month after Parks was decided, in another case in which the right of publicity came up against the First Amendment, a different panel of the Sixth Circuit opted to analyze the case under several tests. ETW Corp. v. Jireh Publ'g, Inc., 332 F.3d 915 (6th Cir. 2003). In that case, golfer Tiger Woods sued the publisher of paintings called "Masters of Augusta," showing Woods along with other famous golfers and scenes from the Masters golf tournament. The court upheld the defendant's First Amendment defense, holding that under the Second Circuit's Rogers test, Woods's image did have artistic relevance to the underlying work and did not explicitly mislead as to the source of the work; that under the Tenth Circuit's Cardtoons balancing test, the creative content of the painter's work outweighed the publicity rights of Woods, who would continue to reap financial rewards notwithstanding the allegedly infringing artwork; and that under California's transformative use test, the painting contained significant transformative elements.

And Still More Tests . . .
In the same year that the Three Stooges (Saderup) and Tiger Woods (ETW) cases came out, the Missouri Supreme Court issued its own First Amendment v. Publicity case, Doe v. TCI Cablevision, 110 S.W.3d 363 (Mo. 2003). In Doe, the hockey player Tony Twist sued the publishers of a comic books series after they introduced a character named Tony Twist Twistelli. The court rejected both the Rogers test and the transformative use test as useful guidelines because they precluded "a cause of action whenever the use of the name and identity is in any way expressive, regardless of its commercial exploitation." Id. at 374. The court adopted what it called a "sort of predominant use test" and held that "the metaphorical reference to Twist, through a literary device, has very little literary value compared to its commercial value." Id. Not surprisingly, the court ruled in favor of the plaintiff.

Recently, the Third Circuit has entered the fray, denying summary judgment to the video game developer who used avatars of actual college football players in its games. Hart v. Elec. Arts, Inc., 717 F.3d 141 (3d Cir. 2013). The court's analysis started with the "self-evident" proposition that video games are protected as expressive speech under the First Amendment, citing Brown v. Entertainment Merchants Ass'n, 131 S. Ct. 2729 (2011). The court then rejected Missouri's predominant use test—which the plaintiff had advocated—describing it as "subjective at best, arbitrary at worst," requiring judges "to act as both impartial jurists and discerning art critics." Id. at 154.

The Third Circuit also rejected the Second Circuit's Rogers test, which the defendant had championed, describing the test as a "blunt instrument, unfit for widespread application in cases that require a carefully calibrated balancing of two fundamental protections." Id. at 157. The court discarded the Rogers test because it "hews so closely to traditional trademark principles," and adopted a test—the transformative use test—derived from copyright law. Id. at 158. The court praised the transformative use test "because it provides courts with a flexible—yet uniformly applicable—analytical framework." Id. at 164. The court held that the use of the plaintiff's realistic avatar in a football video game was not sufficiently transformative to stave off a right of publicity claim. Id. at 170.

Until the Supreme Court weighs in again, the judicial map will continue to contain a hodgepodge of tests to be used to balance the right of publicity against the First Amendment right of freedom of expression. In the Second Circuit, where the Rogers test holds sway, and in the Ninth Circuit, where the actual malice test has been used, celebrities typically will have a difficult time overcoming a First Amendment defense to a right of publicity or Lanham Act false endorsement claim. In courts in states such as California and Missouri, where transformative use tests are ascendant, it may be easier for celebrities to protect their rights of publicity against First Amendment challenges. In other courts, where looser balancing exercises are performed, the results of individual cases may be intensely fact-specific. Until the legal landscape becomes more homogeneous, entertainers and sports stars would be well advised to consider venue when deciding where to bring a right of publicity case.

Keywords: litigation, intellectual property, right of publicity, First Amendment, freedom of expression, transformative use test, predominant use test, Rogers test

Mary Ellen Roy – October 31, 2013

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