ialci law of luxury goods series - How to market through celebrities? Publicity rights in the USA

How to Market
Through Celebrities:
Publicity Rights in
the USA
Tarter Krinsky & Drogin LLP
Intellectual Property Practice Group
Amy B. Goldsmith, Esq.
July 22, 2014
ialci

WHAT IS IT? WHY DOES IT EXIST?
The right to control the commercial use of one’s identity: name, likeness, image,
voice, appearance, photograph, mannerisms, signature; it protects the celebrity’s
income stream
©Tarter Krinsky & Drogin 2014

WHERE DOES THE CELEBRITY LIVE?
New York
California

Questions to ask
• Where does the celebrity live (domicile)?
• Does the celebrity have a personal services contract with her own
company?
• What is the state in which that company is formed?
• Does the celebrity have her own manufacturing capability or will
she need a licensing program?
• Does the celebrity control the use of her image?
• Has the IP lawyer consulted with the estates lawyer?

Interesting Cases

US Supreme Court
Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977)

US Supreme Court: Zacchini
• 15 seconds of fear: Zacchini family: human cannonballs shot into
nets 200 feet away
• 5 years of litigation: a reporter from Scripps videotapes the
performance of Hugo Zacchini at an Ohio State fair
• Claim: Zacchini is an entertainer carrying on the family cannonball
business and Scripps “unlawfully appropriated his professional
property” and the “right to publicity value of his performance”
• Question: Whether the First and Fourteenth Amendments
immunized Scripps from damages for its alleged infringement of
Zacchini's state-law "right of publicity“?

The Court distinguished between privacy and publicity:
Privacy: "The interest protected" in permitting recovery for placing
the plaintiff in a false light "is clearly that of reputation, with the same
over-tones of mental distress as in defamation.“
Publicity: “By contrast, the State's interest in permitting a "right of
publicity" is in protecting the proprietary interest of the individual in his
act in part to encourage such entertainment. …in "right of publicity"
cases, the only question is who gets to do the publishing.”

“There is no doubt that entertainment, as well as news, enjoys First
Amendment protection. It is also true that entertainment itself can be
important news. But it is important to note that neither the public nor
respondent will be deprived of the benefit of petitioner's performance as
long as his commercial stake in his act is appropriately recognized.
Petitioner does not seek to enjoin the broadcast of his performance; he
simply wants to be paid for it. Nor do we think that a state law damages
remedy against respondent would represent a species of liability without
fault contrary to the letter or spirit of Gertz v. Robert Welch, Inc., 418 U. S.
323 (1974). Respondent knew that petitioner objected to televising his act,
but nevertheless displayed the entire film.
We conclude that, although the State of Ohio may, as a matter of its own
law, privilege the press in the circumstances of this case, the First and
Fourteenth Amendments do not require it to do so.”

Robots and the Right of Publicity

“Real” People and the Right of Publicity
Sounds like: Tom Waits and Bette Midler
Looks like: Woody Allen
And is: Liam Neeson and Bradley Cooper

More “Real” People and the Right of Publicity
US Government public domain image
http://www.trelleborgsallehanda.se/kultur-och-
nojen/article524442/Allt-om-rockens-
historia.html

Causes of Action
Violations:
• Statutory Right of Publicity
• Common Law Right of Publicity
• Lanham Act: trademark infringement
false advertising, false association

Various Tests: New York (Second Circuit)
The Rogers Test (a.k.a. “Relatedness” or “Restatement” Test)
Standard: Looks to the relationship between the celebrity image and the
work as a whole.
First appeared in 1989 in a case titled Rogers v. Grimaldi, 875 F.2d 994 (2d
Cir. 1989).
Ginger Roberts brought suit against the producers and distributors of
“Ginger and Fred” alleging they violated her right to publicity by creating the
false impression that the film was about her or that she sponsored,
endorsed, or was otherwise involved in the film (through its title).
The court found in favor of defendants since the “title [was] clearly related to
content of the movie . . . not a disguised advertisement for the sale of goods
. . .”

Various Tests: New York (Second Circuit)
The Rogers Test (Continued)
The right of publicity . . . is fundamentally constrained by the public
and constitutional interest in freedom of expression . . . Use of
another’s identity in a novel, play or motion picture is also not an
ordinarily an infringement . . . However, if the name or likeness is
used solely to attract attention to a work that is not related to the
identified person, the user may be subject to liability for a use of the
other’s identity in advertising.

Various Tests: California (Ninth Circuit)
The Transformative Use Test
Standard: Weighs property interests in name and identity against First
Amendment interests
Articulated in Comedy III Prods., Inc. v. Gary Saderup, Inc., 106 Cal.Rptr.2d
126, 21P.3d 797 (Cal.2001)
Concerned an artist’s production and sale of shirts bearing a charcoal
drawing of the Three Stooges.
In applying the test, the court found the use of the image to violate the
Stooge’s right to publicity since it could “discern no significant
transformative or creative contribution” as the “marketability and economic
value of the work derives primarily from the fame of the celebrities
depicted.”

Various Tests: California (Ninth Circuit)
The Transformative Use Test (Continued)
The balance between the right of publicity and the First Amendment
turns on “Whether the celebrity likeness is one of the “raw materials”
from which an original work is synthesized or whether the depiction or
imitation of the celebrity is the very sum and substance of the work in
question. We ask in other words, whether the product containing the
celebrity’s likeness is so transformed that it has become primarily the
defendant’s own expression rather than the celebrity’s likeness.”

Contractual Protection for Publicity Rights
Contract Contents: paramount goal: protection of reputation
Eponymous/Brand Product Licenses, Product Placement or Endorsement
of Another’s Product: all share common terms
Celebrity/company statement of ownership of (a) “right of publicity”: name,
likeness, image, voice, appearance, photograph, mannerisms, signature;
(b) trademarks, (c) copyrights
Other party’s acknowledgement of ownership; will not challenge the granted
rights or defame the celebrity
Approval rights: use of right of publicity, trademarks, copyrights always
subject to written approval whether in products, ads, promos, marketing,
social media

Contractual Protection for Publicity Rights
Eponymous/Brand Product Licenses: additional terms
Celebrity promotion of the brand: number of appearances at launch,
media days, photo shoot days; length of day; payment by other party
for travel, hotel, hair/make-up; security
Cancellation rights typically limited to serious illness or specified
“special” days
Advance scheduling crucial for both sides
Approvals: in person, Skype, frequency, veto or mutual
Sales Targets

Endorsement Contracts
Product Placement:
• Product placed in another venue: TV show or movie, commercial
for another product, video games and books: the product pays for
the placement and sometimes funds a majority of the costs
• Or: the celebrity/celebrity products are part of the entertainment

Product Placement Examples
Passive: the celebrity doesn’t know in advance of the placement

Product Placement Examples
Active: the celebrity appears in the show/ad with his products and is paid

Product Placement: Can an owner stop a
placement?
Get us off this Flight!

Product Placement: Can an owner stop a
placement?
Was permission requested?
What test would apply?
Under the Rogers test, the First Amendment applies; the Trademark
Act is not applicable to an artistic work as long as the defendant’s use
of the mark is (1) “artistically relevant” to the work and (2) not
“explicitly misleading” as to the source or content of the work

2013: Actress Cindy Lee Garcia against filmmaker Nakoula Basseley Nakoula and
Google (YouTube); CD California, Judge Michael W. Fitzgerald presiding
2014: appeal to the Ninth Circuit
Can an actor own the copyright rights in her performance?
Did the actor release her copyright interest to the producers? (work for hire or
independent contractor)
Was there a reverse implied license?
Did the actor demonstrate irreparable harm?
Federal Claims: Copyright infringement, fraud, unfair business practices, libel,
intentional infliction of emotional distress
Prior California State action: invasion of privacy; misappropriation of name,
likeness, image: motion to enjoin YouTube from displaying the film denied
Igniting Passion and Conflict: Innocence of
Muslims

Conclusion
THANK
YOU

ialci law of luxury goods series - How to market through celebrities? Publicity rights in the USA

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