Industry Insights: Trouble From People Portrayed in Your Work, Part II

By Mark Litwak, Attorney At Law. Read Part I of this series online here.

The right of publicity is the right of individuals to control the use of their name and likeness in a commercial setting. You cannot place an image of another person on your brand of pickles without their permission. Celebrities can earn large fees from this right by endorsing products. Some celebrities earn more money from licensing their name or image  than they can earn from their career. According to Forbes magazine, Tiger Woods made in excess of "$100 million in annual off-the-course earnings" in 2009, compared to $21 million on the golf course.

The right of publicity is similar to the appropriation form of invasion of privacy. The principal difference is that the right of publicity seeks to ensure that a person is compensated for the commercial value of his name or likeness, while the right of privacy seeks to remedy any hurt feelings or embarrassment that a person may suffer from such publicity. 

Celebrities may have difficulty making an invasion of their privacy claim because they necessarily sacrifice some solitude and privacy by virtue of their fame. How can a celebrity claim that the unauthorized use of his likeness on a product embarrassed and humiliated him while at the same time that person willingly appears in television commercials? By thrusting themselves into the public eye, celebrities waive much of their right of privacy. On the other hand, celebrities have an especially valuable property right in their names and likenesses. Most courts have held that the Right of Publicity extends to everyone, not just celebrities. But clearly the right is most valuable for celebrities because they can license their rights for large sums. 

Under either a publicity or privacy theory, subjects can recover for some unauthorized uses of their names and likenesses. A problem arises, however, when one person's publicity/privacy rights come in conflict with another person's rights under the First Amendment. Suppose a newspaper publisher wants to place a picture of Cher on the front page of its paper because she has done something newsworthy. Is her permission needed? The answer is no.

Although Cher's name and likeness is portrayed in the newspaper, this "product" is also a form of "protected expression." Products such as books, movies and plays are modes of expression protected under the United States constitution.  The First Amendment allows journalists to write about others without their consent. Otherwise, subjects could prevent any critical reporting of their activities. When one person's right of publicity conflicts with another person's rights of free speech under the First Amendment, the latter often but not always prevails. 

However, when the likeness of Elvis Presley is used on an ashtray, there is no expression deserving protection. The seller of this product is not making a statement or expressing an opinion or view about Elvis. He is simply trying to make money by exploiting the name and likeness of Elvis. Since there are no competing First Amendment concerns, the right of publicity in this instance might well preclude the unauthorized use of Elvis's likeness. In summary, the law draws a distinction between products that contain protected expression and those that do not. 

The right of publicity is derived from state law and these laws vary significantly.  In some states the legislature has enacted statutes that specifically address the scope and duration of the right. Other states rely on the common law, also known the law of precedent that arises from case decisions made by judges.   

Courts have struggled with the issue of whether the right of publicity descends to a person's heirs. In other words, when a celebrity dies, does his estate inherit his right of publicity? Can the estate continue to control the use of the celebrity's name or likeness, or can anyone use it without permission?

Some courts have held that the right of publicity is a personal right that does not descend. These courts consider this right similar to the right of privacy and the right to protect one's reputation (defamation). When a person dies, heirs don't inherit these rights. Suppose, for instance, that you were a direct descendent of Abraham Lincoln. An unscrupulous writer publishes a biography falsely claiming that Abe Lincoln was a child molester. You couldn't sue for defamation or invasion of privacy because you did not inherit these rights from your ancestor. Perhaps this is why many scandalous biographies are not published until the subject dies. 

In California prior to 1984, courts held that the right of publicity was personal and was not inherited by one's heirs.  In 1984, however, the California legislature changed the law. Civil Code Section 3344.1 provides that the right of publicity descends for products, merchandise and goods, but does not descend for books, plays, television and movies. The statute was recently amended to extend protection so that heirs can enforce this right for up to 70 years after the death of a celebrity.  In California, a form available on the Secretary of State's website is required to register a claim as successor-in-interest for the right of publicity.  Code Section 3344.1 requires any person claiming to be successor-in-interest to the rights of a deceased personality register their claim with the Secretary of State's Office.   Other states have their own registration requirements.  

A similar statute, California Civil Code Section 3344 prohibits the unauthorized use of the name and likeness of living individuals. Both statutes provide exceptions for uses in the news and public affairs arenas in an attempt to balance First Amendment rights against rights of publicity and privacy. 

An interesting case is Hicks v. Casablanca Records, which concerned a movie made by Casablanca Records called "Agatha." The movie was about the well-known mystery writer Agatha Christie. The story was a fictionalized account of the 11-day disappearance of Christie in 1926. The film portrayed her as an emotionally unstable woman engaged in a sinister plot to murder her husband's mistress. An heir to Christie's estate brought suit to enjoin Casablanca from distributing the movie, alleging infringement of Agatha Christie's right of publicity. 

The Christie estate lost the suit. The court found that Casablanca's First Amendment rights outweighed the estate's right to control the name and likeness of Christie. Because of this case and other similar rulings, we can conclude that a person's right of publicity does not prevent others from including a person's name, features or biography in a book, motion picture, news story. 

However, the First Amendment rights of journalists and filmmakers don't always prevail. The United States Supreme Court weighed the Right of Publicity against first amendment rights in the case of Zacchini v. Scripps-Howard Broadcasting. Zacchini also known as the "human cannonball," was shot from cannon into a net 200 feet away at a county fair. At one performance,  a local news reporter videotaped his entire act and broadcast it as part of the local news without his consent. He objected and filed suit.  The court held in his favor explaining that the value of his act depended on the public's desire to witness the event, so televising it detracted from the demand of people willing to pay to see his act.

The Court recognized Zacchini's Right of Publicity and rejected the news broadcaster's First and Fourteenth Amendment defenses. In so doing, the Court noted that the decision was not merely to ensure compensation for the performer; rather, it was to provide "an economic incentive for him to make the investment required to produce a performance of interest to the public." So it cannot be said that the First Amendment rights of journalists are always paramount to subjects right of publicity.


UNFAIR COMPETITION 

The law of unfair competition prevents a person, for instance, from establishing a movie studio and calling it "Paramount Pictures" if he/she is not affiliated with the well-known company. A person would also be barred from displaying the Paramount logo or using any other mark that might mislead or confuse consumers by leading them to believe that films are genuine Paramount movies when they are not. 

The names of persons and businesses may become associated in the public mind with a supplier of products or services. The name can thus acquire a secondary meaning, and the supplier can acquire trademark rights even if he does not register the name as a trademark. In Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., the defendant exhibited a pornographic movie, "Debbie Does Dallas," which portrayed a "Texas Cowgirl" engaged in sex acts. The character wears a uniform strikingly similar to that worn by the Dallas Cowboys Cheerleaders. Ads for the movie showed the character in the uniform and included such captions as "Starring Ex-Dallas Cowgirl Cheerleader Bambi Woods." 

The Dallas Cowboy Cheerleaders brought suit alleging that they had a trademark in the particular combination of colors and the design of their uniforms. The court agreed and issued an injunction against further distribution of the film. Filmmakers should take note that if they portray people or products in a way that is likely to confuse the public as to the origin of a product, they may be liable for unfair competition.