News
Entertainment & Sports
Jul. 26, 2002
Court Expands Reach of Right of Publicity in 'Winter' Case
Focus Column - By John M. Genga - The California courts continue to expand the reach of the right of publicity. Last month, the Court of Appeal reversed a summary judgment against rock musicians Johnny and Edgar Winter on their claim that a comic book publisher had used their likenesses improperly as characters in a story line published in several successive issues.
Focus Column
By John M. Genga
The California courts continue to expand the reach of the right of publicity. Last month, the Court of Appeal reversed a summary judgment against rock musicians Johnny and Edgar Winter on their claim that a comic book publisher had used their likenesses improperly as characters in a story line published in several successive issues. Winter v. DC Comics, 2002 Cal.App.LEXIS 4300 (June 19, 2002).
The plaintiffs in Winter contended that, without their consent, they had been depicted as Johnny and Edgar Autumn in three of a series of five comic books published by DC Comics. In addition to the transparent choice of name, the characters appeared with many of the same characteristics as the real-life Winter brothers, such as long white hair and other albino features and a tall black top hat similar to that worn by Johnny Winter in concert performances and publicity photos.
The series portrayed the Autumn brothers as villainous half-worm, half-human creatures, offspring from the rape of their human mother and a supernatural worm from under the ground. Claiming that they had been represented in the works as "vile, depraved, stupid, cowardly, sub-human individuals who engage in wanton acts of violence, murder and bestiality for pleasure and who should be killed," the plaintiffs brought suit on a variety of theories, including defamation, invasion of privacy, statutory and common law misappropriation of name and likeness, negligence and intentional infliction of emotional distress.
The trial court granted summary judgment against the plaintiffs on all of their causes of action, and the Court of Appeal originally affirmed. The Supreme Court granted review "pending disposition of a related issue" then before the court in Comedy III Productions Inc. v. Saderup, 25 Cal.4th 387 (2001). After it issued its opinion in Comedy III, the Supreme Court remanded Winter, directing the Court of Appeal to vacate its decision affirming summary judgment and to reconsider the case in light of Comedy III.
In Comedy III, the owners of the statutory rights of publicity in the deceased "Three Stooges" comedy team claimed that the defendant had violated those rights by making and marketing drawings of the Stooges in lithographs and on commercial products such as T-shirts. In that case, even though it held the defendant's expressive works entitled to full First Amendment protection, the court announced an entirely new test to "balance" the right to protect and exploit an individual's name and likeness with the freedom of speech concerns of the First Amendment.
The Comedy III test asks "whether a product containing a celebrity's likeness is so transformed that it has become primarily the defendant's own expression rather than the celebrity's likeness." The term "expression," as used in Comedy III, means "expression of something other than the likeness of the celebrity."
The court in Comedy III noted 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."
To determine whether a work is "sufficiently transformative" to defeat a right-of-publicity challenge, the court suggested a "subsidiary inquiry, particularly in close cases: Does the marketability and economic value of the challenged work derive primarily from the fame of the celebrity depicted?"
The defendant in Comedy III lost because, under the test announced in that case, he had depicted his subjects too accurately with his charcoal drawings. The court found his "undeniable skill ... manifestly subordinated to the overall goal of creating literal ... depictions of the Three Stooges so as to exploit their fame."
Winter, by contrast, involved images of manifestly fanciful wormlike characters. Nevertheless, the court in that case felt constrained by the decision in Comedy III, which involved a statute protecting the images of deceased celebrities - former Civil Code Section 990, amended and now codified at Section 3344.1 - "modeled" after Section 3344, the statute applicable to living personalities at issue in Winter.
In light of Comedy III, the Winter court reversed and remanded "to allow the parties to develop the factual record" on transformative use and "to afford the trial court an opportunity to address the issue in the first instance" on both the statutory and common law right-of-publicity claims. While affirming the judgment against the plaintiffs on all other claims, it rejected the defendant's argument that it could decide the transformative use issue as a matter of law.
In so doing, the court went beyond the previously understood boundaries of the right of publicity in significant respects. Further, it illustrated the difficulties posed by the legal standards newly articulated in Comedy III.
First, Section 3344 requires the use of one's actual likeness. Look-alikes and sound-alikes consistently have been held insufficient as a matter of law to support a claim under the statute. For example, White v. Samsung Electronics America Inc., 971 F.2d 1395 (9th Cir. 1992), certiorari denied, 508 U.S. 951 (1993); Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988). The characters in Winter do not begin to approach this standard.
More significant, neither the statutory nor the common law right of publicity "was []ever intended to apply to works of pure fiction." Polydoros v. Twentieth Century Fox Film Corp., 67 Cal.App.4th 318 (1997). That case affirmed summary judgment against a plaintiff who claimed that his right of publicity had been violated by a motion picture about a boys' sandlot baseball team, which included a misfit character named Palledorous who resembled the plaintiff.
Polydoros held that the First Amendment protected the defendant's film from plaintiff's identity misappropriation claims. It relied on Guglielmi v. Spelling-Goldberg Productions, 25 Cal.3d 860 (1979), which had reached a similar conclusion in connection with a fictionalized account of the life of film star Rudolph Valentino.
Both a statutory and a common law claim for misappropriation of the right of publicity require the use of a person's name or likeness for a commercial purpose. Fleet v. CBS Inc., 50 Cal.App.4th 1911 (1996). Expressly by statute, and as applied in the common law, this means use on or in "products" or "services" or for the purposes of advertising or selling them. Sections 3344(a), 3344.1(a)(1); White; Midler.
Section 3344.1, governing deceased celebrities, expressly provides that "a play, book, magazine, newspaper [and other copyrightable works] ... shall not be considered a product, article of merchandise, good, or service." As for living people, Section 3344 exempts uses "in connection with any news, public affairs, or sports broadcast or account, or any political campaign."
No case has ever held a copyrighted work of fiction to be a "product" for right-of-publicity purposes. In the case of an editorial work involving mixed commercial and expressive purposes, Hoffman v. Capital Cities/ABC Inc., 255 F.3d 1180 (9th Cir. 2001), the court held that a periodical's use of a celebrity's name and likeness was insulated from liability as a matter of law by the First Amendment.
In Hoffman, a segment of the 1997 "Fabulous Hollywood Issue" of Los Angeles magazine featured famous film stills digitally altered to clothe the characters in modern fashions, including one of Dustin Hoffman from the motion picture "Tootsie." Because the piece identified the designers of the superimposed fashions and listed available locations and prices for the clothes in a "Shopper's Guide" at the back of the magazine, Hoffman claimed that this constituted an impermissible use of his name and likeness for commercial purposes.
The Court of Appeal disagreed. Finding the alleged commercial use "inextricably intertwined with expressive elements," the court held it entitled to full First Amendment protection and unsusceptible as a matter of law to Hoffman's right-of-publicity challenge absent falsity and actual malice as required by New York Times Co. v. Sullivan, 376 U.S. 254 (1964).
The further reach allowed on the plaintiffs' right-of-publicity claim in Winter results from the Supreme Court's differing standard in Comedy III. The subjective judgment and economic opinion apparently required by the Comedy III test seem to invite factual issues that would preclude summary judgment.
One might expect that a half-worm caricature could be deemed transformative as a matter of law. That the Court of Appeal declined to so hold bodes ill for works closer to the line, such as actual or fictionalized biographies, traditionally viewed as immune from right of publicity challenges.
John M. Genga is a litigation partner in the Los Angeles offices of Paul Hastings Janofsky & Walker, where he specializes in entertainment, copyright and other intellectual property litigation.
By John M. Genga
The California courts continue to expand the reach of the right of publicity. Last month, the Court of Appeal reversed a summary judgment against rock musicians Johnny and Edgar Winter on their claim that a comic book publisher had used their likenesses improperly as characters in a story line published in several successive issues. Winter v. DC Comics, 2002 Cal.App.LEXIS 4300 (June 19, 2002).
The plaintiffs in Winter contended that, without their consent, they had been depicted as Johnny and Edgar Autumn in three of a series of five comic books published by DC Comics. In addition to the transparent choice of name, the characters appeared with many of the same characteristics as the real-life Winter brothers, such as long white hair and other albino features and a tall black top hat similar to that worn by Johnny Winter in concert performances and publicity photos.
The series portrayed the Autumn brothers as villainous half-worm, half-human creatures, offspring from the rape of their human mother and a supernatural worm from under the ground. Claiming that they had been represented in the works as "vile, depraved, stupid, cowardly, sub-human individuals who engage in wanton acts of violence, murder and bestiality for pleasure and who should be killed," the plaintiffs brought suit on a variety of theories, including defamation, invasion of privacy, statutory and common law misappropriation of name and likeness, negligence and intentional infliction of emotional distress.
The trial court granted summary judgment against the plaintiffs on all of their causes of action, and the Court of Appeal originally affirmed. The Supreme Court granted review "pending disposition of a related issue" then before the court in Comedy III Productions Inc. v. Saderup, 25 Cal.4th 387 (2001). After it issued its opinion in Comedy III, the Supreme Court remanded Winter, directing the Court of Appeal to vacate its decision affirming summary judgment and to reconsider the case in light of Comedy III.
In Comedy III, the owners of the statutory rights of publicity in the deceased "Three Stooges" comedy team claimed that the defendant had violated those rights by making and marketing drawings of the Stooges in lithographs and on commercial products such as T-shirts. In that case, even though it held the defendant's expressive works entitled to full First Amendment protection, the court announced an entirely new test to "balance" the right to protect and exploit an individual's name and likeness with the freedom of speech concerns of the First Amendment.
The Comedy III test asks "whether a product containing a celebrity's likeness is so transformed that it has become primarily the defendant's own expression rather than the celebrity's likeness." The term "expression," as used in Comedy III, means "expression of something other than the likeness of the celebrity."
The court in Comedy III noted 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."
To determine whether a work is "sufficiently transformative" to defeat a right-of-publicity challenge, the court suggested a "subsidiary inquiry, particularly in close cases: Does the marketability and economic value of the challenged work derive primarily from the fame of the celebrity depicted?"
The defendant in Comedy III lost because, under the test announced in that case, he had depicted his subjects too accurately with his charcoal drawings. The court found his "undeniable skill ... manifestly subordinated to the overall goal of creating literal ... depictions of the Three Stooges so as to exploit their fame."
Winter, by contrast, involved images of manifestly fanciful wormlike characters. Nevertheless, the court in that case felt constrained by the decision in Comedy III, which involved a statute protecting the images of deceased celebrities - former Civil Code Section 990, amended and now codified at Section 3344.1 - "modeled" after Section 3344, the statute applicable to living personalities at issue in Winter.
In light of Comedy III, the Winter court reversed and remanded "to allow the parties to develop the factual record" on transformative use and "to afford the trial court an opportunity to address the issue in the first instance" on both the statutory and common law right-of-publicity claims. While affirming the judgment against the plaintiffs on all other claims, it rejected the defendant's argument that it could decide the transformative use issue as a matter of law.
In so doing, the court went beyond the previously understood boundaries of the right of publicity in significant respects. Further, it illustrated the difficulties posed by the legal standards newly articulated in Comedy III.
First, Section 3344 requires the use of one's actual likeness. Look-alikes and sound-alikes consistently have been held insufficient as a matter of law to support a claim under the statute. For example, White v. Samsung Electronics America Inc., 971 F.2d 1395 (9th Cir. 1992), certiorari denied, 508 U.S. 951 (1993); Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988). The characters in Winter do not begin to approach this standard.
More significant, neither the statutory nor the common law right of publicity "was []ever intended to apply to works of pure fiction." Polydoros v. Twentieth Century Fox Film Corp., 67 Cal.App.4th 318 (1997). That case affirmed summary judgment against a plaintiff who claimed that his right of publicity had been violated by a motion picture about a boys' sandlot baseball team, which included a misfit character named Palledorous who resembled the plaintiff.
Polydoros held that the First Amendment protected the defendant's film from plaintiff's identity misappropriation claims. It relied on Guglielmi v. Spelling-Goldberg Productions, 25 Cal.3d 860 (1979), which had reached a similar conclusion in connection with a fictionalized account of the life of film star Rudolph Valentino.
Both a statutory and a common law claim for misappropriation of the right of publicity require the use of a person's name or likeness for a commercial purpose. Fleet v. CBS Inc., 50 Cal.App.4th 1911 (1996). Expressly by statute, and as applied in the common law, this means use on or in "products" or "services" or for the purposes of advertising or selling them. Sections 3344(a), 3344.1(a)(1); White; Midler.
Section 3344.1, governing deceased celebrities, expressly provides that "a play, book, magazine, newspaper [and other copyrightable works] ... shall not be considered a product, article of merchandise, good, or service." As for living people, Section 3344 exempts uses "in connection with any news, public affairs, or sports broadcast or account, or any political campaign."
No case has ever held a copyrighted work of fiction to be a "product" for right-of-publicity purposes. In the case of an editorial work involving mixed commercial and expressive purposes, Hoffman v. Capital Cities/ABC Inc., 255 F.3d 1180 (9th Cir. 2001), the court held that a periodical's use of a celebrity's name and likeness was insulated from liability as a matter of law by the First Amendment.
In Hoffman, a segment of the 1997 "Fabulous Hollywood Issue" of Los Angeles magazine featured famous film stills digitally altered to clothe the characters in modern fashions, including one of Dustin Hoffman from the motion picture "Tootsie." Because the piece identified the designers of the superimposed fashions and listed available locations and prices for the clothes in a "Shopper's Guide" at the back of the magazine, Hoffman claimed that this constituted an impermissible use of his name and likeness for commercial purposes.
The Court of Appeal disagreed. Finding the alleged commercial use "inextricably intertwined with expressive elements," the court held it entitled to full First Amendment protection and unsusceptible as a matter of law to Hoffman's right-of-publicity challenge absent falsity and actual malice as required by New York Times Co. v. Sullivan, 376 U.S. 254 (1964).
The further reach allowed on the plaintiffs' right-of-publicity claim in Winter results from the Supreme Court's differing standard in Comedy III. The subjective judgment and economic opinion apparently required by the Comedy III test seem to invite factual issues that would preclude summary judgment.
One might expect that a half-worm caricature could be deemed transformative as a matter of law. That the Court of Appeal declined to so hold bodes ill for works closer to the line, such as actual or fictionalized biographies, traditionally viewed as immune from right of publicity challenges.
John M. Genga is a litigation partner in the Los Angeles offices of Paul Hastings Janofsky & Walker, where he specializes in entertainment, copyright and other intellectual property litigation.
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