Right of Publicity

General

The right of publicity is both a statutory and a common law right to limit the public use of one's name, likeness and/or identity, particularly for commercial purposes. The right is generally invoked in the context of commercial speech, when a company has used a celebrity's "name, likeness, or voice" in connection with a product, thereby creating a false and misleading impression that the celebrity is endorsing the product. See, e.g., Eastwood v. Super. Ct., 149 Cal. App. 3d 409, 417 (1983). It derives from the common law tort of invasion of the right of privacy, which historically included a cause of action for "appropriation of the [plaintiff's] name or likeness." Restatement (Second) of Torts sec. 652A (1977); see also William L. Prosser, Privacy, 48 Cal. L. Rev. 383, 398-407 (1960). The right was first recognized in 1953. Haelan Laboratories Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866, 868 (2d Cir. 1953), cert. denied, 346 U.S. 816 (1953) (recognizing property right in a baseball player's photograph used on trading cards).

Publicity rights have been recognized in at least 28 states, and have been a particular concern in California and New York. California Civil Code Section 3344, authorizes a cause of action by any living person whose name, photograph, or likeness has been used for commercial purposes without his or her consent. In 1984, the California Legislature created a second statutory right of publicity that was descendible to the heirs and assignees of deceased persons. Civil Code Section 3344.1. New York Civil Rights Law sections 50 and 51 create a private right of action against the nonconsensual use of a person's name, portrait or picture "for advertising purposes or for purposes of trade . . . ."

Elements

To make out a publicity rights claim under the common law, a plaintiff must plead and prove that a defendant "(1) used plaintiff’s identity; (2) appropriated plaintiff’s name and likeness to defendant’s advantage, commercial or otherwise; (3) lack of consent; and (4) resulting injury.” Eastwood v. Super. Ct., 149 Cal. App. 3d 409, 417 (1983). To establish the statutory cause of action in California, the plaintiff must also show knowing use of the plaintiff’s name, photograph or likeness for commercial purposes, and a direct connection between the use and the commercial purpose. Id. at 417-18; see also Michaels v. Internet Entmt. Group, Inc., 5 F. Supp.2d 823, 837 (C.D. Cal. 1998). New York’s section 51, however, “consists of only two elements: the commercial use of a person’s name or photograph and the failure to procure the person's written consent for such use.” Shamsky v. Garan, Inc., 167 Misc.2d 149 (Sup. Ct. 1995).

Scope

Although the right has been traditionally understood to apply only to the use of a person's name or likeness, courts have expanded the scope of the right, particularly under California law. Today, the right may apply to the use of virtually anything that evokes identity, such as look-alikes, Allen v. National Video, Inc., 610 F. Supp. 2d 612, 630 (S.D.N.Y. 1985) (Woody Allen look-alike in a commercial); sound-alikes, Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992) (use of gravel-voiced singer in commercial)); Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) (Bette Midler soundalike in commercial); a nickname, Ali v. Playgirl, Inc., 447 F. Supp. 723, 728 (S.D.N.Y. 1978) (drawing of nude black man labeled "The Greatest"); a phrase associated with a celebrity, see Carson v. Here's Johnny Portable Toilets, Inc., 698 F. 2d 831, 837 (6th Cir. 1983) (use of the phrase "Here's Johnny" by company marketing "Here's Johnny Portable Toilets"), and even a robot dressed like a celebrity, Vanna White v. Samsung Elecs. Am., Inc., 971 F. 2d 1395 (9th Cir. 1992), cert. denied, 508 U.S. 951 (1993) (VCR Samsung advertisement robot dressed like the TV show hostess Vanna White, turning letters on set similar to as that of the "Wheel of Fortune" show).

Publicity Rights in Cyberspace

Publicity rights claims have been asserted in a range of Internet-based disputes, with varying degrees of success. These disputes include: challenges to distribution and advertising of pornographic videos, Michaels v. Internet Entm' t Group, Inc., 5 F. Supp. 2d 823 (C.D. Cal. 1998); use of a celebrity’s name in an information form posted on an online matchmaking services; Carafano v. Metrosplash.com, 207 F.Supp.2d 1055 (C.D. Cal. 2002) (PARENS); use of an entertainer’s name in connection with a music downloading service, Chambers v. Time Warner, Inc., 282 F.3d 147 (2d Cir. 2002); and use of a corporate name on an internet message boards, Express One Int’l v. Steinbeck, 53 S.W.3d 895 (Tex. App. 2001) (applying Texas law; rejecting common law publicity rights claim based on former employee’s use of corporate name on Internet message board as screen name absent evidence of commercial purpose).

1. Michaels v. Internet Entm’t Group, Inc., 5 F. Supp. 823 (C.D. Cal. 1998). The court granted a preliminary injunction barring a Web site operator from making available on its Web site still images from plaintiff’s home sex video. The court held that plaintiff’s right of publicity claims arising from defendant’s use of plaintiff’s name and image, as well as that of plaintiff’s partner, Pamela Anderson Lee, were not preempted by the Copyright Act, since said uses were separate from plaintiff’s copyright infringement claims and were for the purpose of commercially promoting a release of the videotape under a spurious “secret” licensing agreement. The court also held that the nature of the Internet market for adult materials is such that even the display of brief still images from the tape would harm the market for the copyrighted work, thus precluding a finding of fair use.
2. Carafano v. Metrosplash.com, Inc., 207 F.Supp.2d 1055 (C.D. Cal. 2002)
3. Chambers v. Warner
4. Express One Int’l v. Steinbeck
5. Blair v. Nevada Landing Partnership, __ N.E.2d __, 2006 WL 3594284 (Ill. App. 2 Dist., December 8, 2006)

Selected Defenses

Preemption

A state law right of publicity action will be preempted by federal copyright law where the conduct alleged to violate the right consists solely of publishing or distributing a work in which the plaintiff claims a copyright. Fleet v. CBS Inc. 50 Cal. App. 4th 1911 (1996). To avoid preemption, the claim must contain elements that are different in kind from copyright infringement. In Michaels v. Internet Entmt. Group, Inc., 5 F. Supp.2d 823, 837 (1998), for example, the court held that plaintiffs’ publicity rights claim was not preempted where the defendants not only distributed a videotape created by the plaintiffs, but also used the plaintiffs names, likenesses and identities on radio, television and the Internet to advertise the planned distribution. Similarly, in KNB Enterprises v. Matthews, 78 Cal. App. 4th 362, 374-75 (2000), a California Court of Appeals found that the right of publicity claims of models in erotic photographs were not preempted where the photographs had been posted on a website without authorization and for profit, notwithstanding the simultaneous copyright infringement claims brought by the owner of the photographs. “[B]ecause a human likeness is not copyrightable, even if captured in a copyrightable photograph, the models section 3344 claims...are not the equivalent of a copyright infringement claim.” Id. at 365. See also McCarthy, Rights of Publicity and Privacy sec. 11.13[C] at 11-72-73 (1997) (“The ‘subject matter’ of a Right of Publicity claim is not a particular picture or photograph of a plaintiff. Rather, what is protected is the very identity or persona of the plaintiff as a human being.”)

In Toney v. L'Oreal USA, Inc., 384 F.3d 486 (7th Cir. 2004), the Seventh Circuit found a right of publicity claim preempted under 17 U.S.C. § 301 where (1) the photograph used was the subject matter of copyright and (2) model June Toney's right of publicity in the use of her likeness for hair care products was qualitatively indistinguishable from the rights protected by copyright law. See CIS summary for more.

First Amendment

Courts have consistently held that the common law right of publicity must be balanced against “the public interest in dissemination of news and information consistent with the democratic processes under the constitutional guarantees of freedom of speech and the press.” Gionfriddo v. Major League Baseball, 94 Cal. App. 4th 400, 409 (2001); see also Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F.Supp.2d 1146, 1182-83 (C.D. Cal. 2002). The statutory right is subject to a similar balancing test. The California publicity rights statute specifically exempts the use of a name, likeness etc. in connection with a “news, public affairs, or sports broadcast.” Cal Civ. Code sec. 3344(d). This exemption has been applied to web-based communications. Michaels, 5 F.Supp.2d at 839 (tailoring preliminary injunction against use of plaintiffs names, likenesses or identities to avoid prior restraint on defendant Internet Entertainment Group’s ability to “comment on matter of public interest”). ADD NY.

The key issue is the purpose and context of the use. Thus, the First Amendment was a complete defense to a famous surfer’s statutory and common law publicity rights claim against the producer of a surfing documentary, because surfing was a matter of public interest and public affairs and the plaintiff’s contribution to the development of the sport was “the point of the program.” Dora v. Frontline Video, Inc., 15 Cal. App. 4th 536, 543-46 (1993). By contrast, the defense did not apply to the “illustrative use” of a photograph of a surfer in a clothing catalogue with a surfing theme. Downing v. Abercrombie & Fitch, 265 F.3d 994, 1003-03 (9th Cir. 2001)

Fleeting and Incidental Use

“Fleeting and incidental” uses of a person’s name or likeness are not actionable under New York’s statutory publicity rights law. See Marks v. Elephant Walk, 156 A.D.2d 18, 19-20 (N.Y.A.D.1990). “Whether a particular use is incidental is determined through an assessment of the ‘relationship of the reference to a particular individual to the main purpose and subject of the [work at issue].’” Delan v. CBS, Inc., 91 A.D.2d 255, 260 (N.Y.A.D.,1983). Thus, for example, the listing of a plaintiff’s name as a contact person on a dance company’s website was found nonactionable. Leary v. Punzi, 179 Misc.2d 1025 (1999). “[T]he plaintiff’s name was not used in a manner directly related to the product of service . . . [A]ny potential rewards for using the plaintiff’s name were too remote and speculative to sustain her claim.” Id. at 1027.

CDA 230

See Chapter on Section 230 of the Communications Decency Act.

• Perfect 10, Inc. v. CCBill, LLC, 488 F.3d 1102, 1119 (9th Cir. 2007) (construing the statutory exception for intellectual property to only federal intellectual property).
• Almeida v. Amazon.com, Inc., 456 F.3d 1316 (11th Cir. 2006) (extensive discussion of 230 and the right of publicity, but no holding)
• Atlantic Recording Corp. v. Project Playlist, Inc., 603 F.Supp.2d 690 (S.D.N.Y. March 25, 2009) (concluding that Section 230(c)(1) does not provide immunity for either federal or state intellectual property claims_

Further reading: Volokh, Prosser, M. Nimmer