Risk of Violating Right of Publicity Is Increasing

By Marc P. Misthal

Originally published in Law360 .

Instagram. Facebook. YouTube. Twitter. Right-of-publicity violations could occur on all of these services. In fact, given the rise of the internet and social media, right-of-publicity violations are more likely to happen today than at any time in the past. This is particularly true since celebrity can now accrue to YouTube stars as a result of the simple act of posting a video — or having a video go viral. And given the ease with which photos, videos and messages can be created, copied and shared, violations can occur almost instantaneously on a massive scale.

The day after the death of the rock star Prince, Chevrolet ran an advertisement in The New York Times and other publications with the words “Baby, that was much too fast,” the years “1958-2016” and an image of a little red Corvette.

The advertisement also appeared on Chevrolet’s Twitter account, was retweeted and commented on in numerous blog postings. Did the ad violate Prince’s right of publicity? Courts have not yet set out clear guidelines for identifying and addressing right-of-publicity violations in the age of social media, but reviewing existing cases can aid in identifying what lines should not be crossed.

What Is the Right of Publicity?

At its heart, the right of publicity protects an individual’s economic interest in their likeness, not a right to be left alone, like the right of privacy. Indeed, the Ninth Circuit has explained that the core of the right of publicity is to prevent the merchandising of a celebrity’s image or likeness without his/her consent.[1] This is reflected in California’s right-of-publicity statute, which prohibits the knowing use of “another’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent.”[2] New York’s right-of-publicity law similarly protects “[a]ny person whose name, portrait, picture or voice is used within this state for advertising purposes or for the purposes of trade without the written consent first obtained as provided above.”[3] Nevertheless, as a creature of state law, the parameters of the right of publicity vary from state to state.[4]

Who Can Invoke the Right of Publicity?

A September 2015 New York Times article described how brands seeking to capitalize on the social media activity of consumers took images posted by consumers on social media and reposted them on their own websites; sometimes the brands asked permission and sometimes they did not. One case where permission was not sought involved a 4-year-old girl whose photo was used by Crocs Inc. on its website.[5] Since most consumers would not be able to show that they are famous and that they commercially exploit their likeness, it is likely that most, if not all, such takings would not result in a violation of the right of publicity.

Whether an individual is famous is not an easy question to answer. If a video goes viral, its star might attain notoriety for a short period of time and then be forgotten. Or a YouTube user may gain a large following by posting videos that are watched by large audiences (as some Minecraft players and beauty consultants have done) and parlay that into sponsorship deals. Is someone famous just because he/she has millions of friends or likes on Facebook or Twitter?

While fame is a necessary element of a right-of-publicity claim, it is not sufficient. The party whose rights were allegedly violated must be able to show that he/she has made some effort to commercially exploit his/her likeness.

A recent case involved the Academy Award-winning film “The Hurt Locker.” The movie was based on an article written by Mark Boal, a journalist for Playboy, about Sergeant Jeffrey Sarver’s experiences in Iraq in 2004 and 2005. The article featured photos of Sarver as well as personal information about him, and he claimed that he never consented to the use of his name or likeness in the story. Boal subsequently wrote the screenplay for the 2009 film “The Hurt Locker.” Sarver contended that the film’s main character was based on his life and experiences. Sarver sued, and the district court dismissed the case based on California’s anti-SLAPP statute. On appeal, the Ninth Circuit affirmed. The court explained that Sarver was a private person and had not made any effort to monetize his persona.[6] Indeed, the court noted that Sarver “expressly disavowed the notion that he sought to attract public attention to himself.”[7] As a result, he had no economic interest that needed to be protected.

Harm to Reputation

Another factor is whether the unauthorized use harmed the plaintiff’s reputation so as to harm his/her ability to commercialize his/her likeness. Former Panamanian dictator Manuel Noriega’s inability to show such harm doomed a claim he made against Activision Blizzard over his inclusion as a character in the 2012 video game “Call of Duty: Black Ops II.” The Noriega character appeared in two out of 11 missions in a game featuring more than 45 characters, and players could not play as Noriega. Noriega (who is serving a prison sentence for, among other things, drug trafficking and money laundering) sued, claiming that his portrayal damaged his reputation. In dismissing Noriega’s case, the court explained that Noriega failed to provide any evidence that his portrayal in the video game harmed his reputation — and considering the reason he is in prison, it would have been surprising if he could have shown harm to his reputation.

In another case, a group of models sued a nudist resort for allegedly making unauthorized use of their images to promote the resort. The complaint contends that the resort’s advertisements falsely represent that the models are associated with the resort and/or will attend the advertised events. The complaint goes on to allege that “[b]y using the images, likeness and identity without authority or consent, Defendants have jeopardized each Plaintiff’s image, brand and marketability” and that “Defendants’ have defamed and embarrassed Plaintiffs by associating their images with the ‘swinger’ lifestyle promoted by Defendants at the Resort.” While the case is still pending, it seems that the models have sufficiently alleged harm to their reputation.[8]

Michael Jordan’s lawsuit against the Dominick’s supermarket chain[9] for running an advertisement in Sports Illustrated congratulating Jordan on his induction into the basketball Hall of Fame was widely reported, as was the nearly $10 million verdict that the jury returned. The evidence in that case included testimony by Jordan that he only signs long-term endorsement deals and that “he would ‘never’ have agreed to the Dominick’s ad, which compared him to a piece of meat and came with a $2-off coupon for steaks.”[10] While it is difficult to know exactly why the jury decided as it did, Jordan’s testimony made clear that he viewed the ad as harmful to his carefully cultivated image.

Intent

Another factor considered in evaluating whether the right of publicity has been violated is the intent of the alleged violator. In the Michael Jordan case, the intent was ostensibly to congratulate Jordan on his induction in to the basketball Hall of Fame, but this was undercut by the presence of a $2-off coupon. The Chevrolet ad that ran after Prince’s death, in contrast, was intended as a tribute and there was no obvious commercial purpose to the ad. This factor can be so important that cases in which there is little question about the intent frequently settle early.

For example, in a 2015 case, the group Hall & Oates sued Early Bird Foods & Co. Ltd., a company that was selling “Haulin’ Oats” granola.[11] Early Bird’s owner publicly responded to the lawsuit by offering a 25-percent-off coupon code: SAYITISNTSO, a play on one of Hall & Oates’ songs that only emphasized the intentional effort to establish a connection with the group. Early Bird eventually changed the name of its product to Kiss My Oats.

Similarly, in 2014 Don Henley sued a Duluth Trading Company, a Wisconsin-based clothing company that sent an email advertisement for Henley shirts that read “Don A Henley and Take It Easy.”[12] Duluth may have assumed that this was an innocuous pun, but Henley saw it as a conscious effort by Duluth to sell product by fostering an unauthorized association with Henley and his band. The case was eventually settled by the entry of a consent judgment in which Duluth agreed to never again use or imply Henley’s name when selling that style of shirt. The company also posted a written apology on its website and reportedly made a contribution to a nonprofit started by Henley.

At the end of March, soccer great Edson Arantes do Nascimento, known as Pele, sued Samsung Electronics Co. Ltd. based on its use of a Pele look-alike and a soccer player demonstrating Pele’s scissor kick in an ad for televisions.[13] The lawsuit claims that in 2013 Samsung pulled out of negotiations for an endorsement deal with Pele and subsequently ran the ad in 2015 even though no agreement had been reached. To the extent that Pele can show that this evidences an intent by Samsung to trade on his likeness, it is probably the strongest fact in Pele’s favor. This is particularly true since it is not clear that Pele retains the fame he once had in the United States, where soccer does not enjoy the popularity it has in other nations.

Balance With The First Amendment

The right of publicity frequently must be balanced against the freedom of speech. In dismissing the Noriega case, the court found that “Noriega’s right of publicity is outweighed by defendants’ First Amendment right to free expression.”[14] The court concluded that since the game’s portrayal of Noriega was not the very sum and substance of the work, the “marketability and economic value of the challenged work in this case comes not from Noriega, but from the creativity, skill and reputation of defendants.”[15]

In weighing these two interests, many courts will consider whether a work has simply appropriated a celebrity’s likeness or whether it has “transformed” that likeness into something new that is worthy of First Amendment protection and not likely to interfere with the economic interest protected by the right of publicity.

This balancing is illustrated by two cases involving the rights of college athletes. Samuel Keller, who was the starting quarterback for both Arizona State University and the University of Nebraska, brought a class action against the NCAA and the video game maker Electronic Arts Inc., claiming that EA’s use of his likeness in its NCAA football game franchise without his permission or compensation violated his right of publicity under California law.[16] In a second case, former college quarterback Ryan Hart brought a similar claim under New Jersey law.[17] EA allowed players to control avatars representing college football players in simulated games, and incorporated details of real players into each player avatar, such as their height, weight, build, skin tone, hair style and color, facial features. In some cases, EA incorporated the players’ home states and jersey numbers. While users could “change the digital avatar’s appearance and most of the vital statistics (height, weight, throwing distance, etc.), certain details remain immutable.”[18] EA claimed that it was entitled to First Amendment protection, but the Ninth Circuit ruled that the games did not sufficiently transform the players’ identities so as to avoid a right-of-publicity claim. The Third Circuit reached a like conclusion, observing that the “digital Ryan Hart [did] what the actual Ryan Hart did while at [college]: he play[ed] football, in digital recreations of college football stadiums, filled with all the trappings of a college football game.”[19]

Contrast the decision in the Electronic Arts case with the ruling in the Sarver case. According to the Sarver court, the Iraq War and use of improvised explosive devices was a matter of public concern, and to the extent that Sarver’s personal characteristics were incorporated into “The Hurt Locker,” they were intertwined with the portrayal of the main character’s experiences. The court went on to explain that “speech which either appropriates the economic value of a performance or persona or seeks to capitalize off a celebrity’s image in commercial advertisements is unprotected by the First Amendment against a California right-of-publicity claim.”[20] Thus, the movie transformed Sarver’s characteristics into art, and the court found such art protected by the First Amendment.[21]

Conclusion

Social media has already faced claims for violations of the right of publicity, with claims being asserted against LinkedIn for sending personalized invitations to contacts of members to join the service[22] and Facebook for the unauthorized use of users’ photographs in “sponsored stories” advertisements,[23] as well as others. Most of the cases brought against social media have settled, however, leaving few decisions to help guide what conduct is acceptable and what is not. Considering the factors discussed above should provide some guidance as to how to avoid engaging in unacceptable behavior. Such guidance is crucial, since the continued growth of social media and the development of new advertising and promotional uses for and on social media means navigating the line between unacceptable and acceptable behavior is only going to become trickier.

NOTES

[1] Sarver v. Chartier, 813 F.3d 891, 904 (9th Cir. 2016).
[2] Cal. Civ. Code § 3344.
[3] N.Y. Civil Rights Law § 51.
[4] For example, in some states, such as Indiana and Texas, the right of publicity survives an individual’s death, see Ind. Code § 32-36-1-17 and Tex. Prop. Code Ann. §§ 26.006-.009, while in other states, such as New York, it does not. See Mirone v. MacMillan, 894 F.2d 579, 585 (2d Cir. 1990).
[5] Sydney Ember and Rachel Abrams, “On Instagram and Other Social Media, Redefining ‘User Engagement’”, The New York Times, Sept. 20, 2015, available at http://www.nytimes.com/2015/09/21/business/media/retailers-use-of-their-fans-photos-draws-scrutiny.html?_r=0.
[6] Sarver v. Chartier, 813 F.3d 891, 905 (9th Cir. 2016).
[7] Id.
[8] Edmondson et al. v. Caliente Resorts LLC et al., 8:15-cv-02672 (M.D. Fl. 2015).
[9] Jordan v. Dominick’s Finer Foods, LLC, 1:10-cv-00407 (N.D. Il, 2010).
[10] Kim Janssen, “Jordan Says ‘it was never about the money’ After $8.9M Jury Award,” Chicago Tribune, Aug. 21, 2015, available at http://www.chicagotribune.com/business/ct-michael-jordan-dominicks-case-0822-biz-20150821-story.html.
[11] Whole Oats Enterprises v. Early Bird Foods & Co., Inc., 15-cv-01124 (E.D.N.Y. 2015).
[12] Henley v. Duluth Holdings, Inc., 14-CV-7827 (C.D. Cal. 2014).
[13] Pele IP Ownership LLC v. Samsung Electronics Co., Ltd., 16-CV-03354 (N.D. Il. March 16, 2016)
[14] Noriega v. Activision Blizzard, Inc. et al., BC551747 (Superior Ct. of Cal., Oct. 27, 2014).
[15v] Id.
[16] In re NCAA Student-Athlete Name & Likeness Licensing Litigation, 724 F.3d 1268 (9th Cir. 2013).
[17] Hart v. Electronic Arts, Inc., 717 F.3d 141 (3rd Cir. 2013).
[18] Hart v. Electronic Arts, Inc., 717 F.3d at 146.
[19] Id. at. 166.
[20] Sarver v. Chartier, 813 F.3d 891, 905 (9th Cir. 2016).
[21] Id. at 905-906.
[22] Perkins v. LinkedIn Corp., 13-CV-04303-LHK (N.D. Cal. 2013).
[23] Fraley v. Facebook, Inc., 11-CV-01726 (N.D. Cal. 2011).