Right of Publicity – Page 2 – Attorney Evan Brown

September 13, 2011 First Amendment, Right of Publicity

Video game maker scores First Amendment win in right of publicity case

Hart v. Electronic Arts, Inc. — F.Supp.2d —, 2011 WL 4005350 (D.N.J. September 9, 2011)

Former Rutgers quarterback Ryan Hart sued Electronic Arts (“EA”), the maker of the very popular video game NCAA Football, alleging misappropriation of his right of publicity under New Jersey law.

EA moved to dismiss. Treating the filing as one for summary judgment, the court granted the motion. It held that EA’s right to free expression under the First Amendment outweighed Hart’s right of publicity.

The court recognized the tension between Hart’s right of publicity and EA’s free speech interest in seeking to incorporate Hart’s characteristics and other information about him into the game. The resolution of this tension is an unsettled area of the law — and the court no doubt recognized this. So in what appears to be an effort to reduce the likelihood that the appellate court will reverse, the judge applied two different tests, finding that EA’s First Amendment interests prevailed under both of them.

Hart’s claims

Hart claimed that the game misappropriated his right of publicity by, among other things, giving a virtual player of the game Hart’s physical attributes (including appearance, height and weight), the same jersey number, the same home state, and with wearing a helmet visor and left wrist band. Hart claimed the virtual player shared other features with him as well, such as speed and agility rating, and passing accuracy and arm strength.

Transformative test

The court first applied the “transformative test” to balance the right of publicity and First Amendment interests. This test borrows heavily from copyright law’s fair use analysis, and looks to the extra elements in the subsequent work. A court will look at:

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

In this case, the game included numerous creative elements apart from Hart’s image, such as virtual stadiums, athletes, coaches, fans, sound effects, music and commentary. Moreover, and perhaps more importantly, the court emphasized that EA created a mechanism in the game “by which the virual player may be altered, as well as the multiple permutations available for each virtual player image.”

The Rogers test

The Rogers test borrows from the trademark context to aid a court in determining whether First Amendment interests will trump a right of publicity claim. In applying this test, a court will make two queries: (a) whether the challenged work is wholly unrelated to the underlying work (or person asserting the claim), and (b) whether the use of the plaintiff’s name is a disguised commercial advertisement. In this case, the court found that one could not reasonably argue that Hart’s image was wholly unrelated to the game (it was college football, after all). But the use of Hart’s image was not a “disguised commercial advertisement.” Instead, the use of his image was part of an expressive act by EA that might draw upon public familiarity with Hart’s college football career but did not explicitly state that he endorsed or contributed to the creation of the game.

April 4, 2011 Defamation, Right of Publicity, Section 230

Amazon and other booksellers off the hook for sale of Obama drug use book

Section 230 of the Communications Decency Act shields Amazon, Barnes & Noble and Books-A-Million from some, but not all claims brought over promotion and sale of scandalous book about presidential candidate.

Parisi v. Sinclair, — F.Supp.2d —, 2011 WL 1206193 (D.D.C. March 31, 2011)

In 2008, Larry Sinclair made the ultra-scandalous claim that he had done drugs and engaged in sexual activity with then-presidential candidate Barack Obama. Daniel Parisi, owner of the infamous Whitehouse.com website, challenged Sinclair to take a polygraph test.

Not satisfied with the attention his outlandish claims had garnered, Sinclair self-published a book detailing his alleged misadventures. The book was available through print-on-demand provider Lightening Source.

Amazon, Barnes & Noble, and Books-A-Million (“BAM”) each offered Sinclair’s book for sale through their respective websites. (Barnes & Noble and BAM did not sell the book at their brick and mortar stores.) Each company’s website promoted the book using the following sentence:

You’ll read how the Obama campaign used internet porn king Dan Parisi and Ph.D. fraud Edward I. Gelb to conduct a rigged polygraph exam in an attempt to make the Sinclair story go away.

Parisi and his Whitehouse Network sued for, among other things, defamation and false light invasion of privacy. BAM moved to dismiss pursuant to Rule 12(b)(6) while Amazon and Barnes & Noble moved for summary judgment. The court granted the booksellers’ motions.

Section 230 applied because booksellers were not information content providers

The booksellers’ primary argument was that Section 230 of the Communications Decency Act shielded them from liability for plaintiffs’ claims concerning the promotional sentence. The court found in defendants’ favor on this point.

Section 230 provides in relevant part that “[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” The major issue in this case was whether the online booksellers had provided the information comprising the promotional sentence. The court found that the pleadings (as to BAM) and the evidence (as to Amazon and Barnes & Noble) did not credibly dispute that the booksellers did not create and develop the promotional sentence.

But not so fast, Section 230, on some of those other claims!

The court’s treatment of Section 230 in relation to plaintiffs’ false light claim and the claims relating to the actual sale of the book were even more intriguing.

Plaintiffs argued that their false light claim was essentially a right of publicity claim. And Section 230(e)(2) says that immunity does not apply to claims pertaining to intellectual property. There is some confusion as to whether this exception to immunity applies only to federal intellectual property claims or to both federal and state IP claims. On one hand, Perfect 10, Inc. v. CCBill says that only federal intellectual property claims are excepted from immunity (which would mean that state law IP claims would be barred by Section 230). On the other hand, cases like Atlantic Recording Corp. v. Project Playlist, Doe v. Friendfinder Network and Universal Communication System v. Lycos suggest that both state and federal IP claims should withstand a Section 230 challenge.

In this case, the court indicated that it would have sided with the cases that provide for both federal and state claims making it past Section 230: “I am not inclined to extend the scope of the CDA immunity as far as the Ninth Circuit. . . . ”

But ultimately the court did not need to take sides as to the scope of Section 230(e)(2), as it found the use of plaintiff Parisi’s name fit into the newsworthiness privilege. One cannot successfully assert a misappropriation claim when his name or likeness is used in a newsworthy publication unless the use has “no real relationship” to the subject matter of the publication.

The court also seemed to constrain Section 230 immunity as it related to the online booksellers’ liability for selling the actual book. (Remember, the discussion above, in which the court found immunity to apply, dealt with the promotional sentence.) The court rejected defendants’ arguments that the reasoning of Gentry v. eBay should protect them. In Gentry, eBay was afforded immunity from violation of a warranty statute. But it merely provided the forum for the sale of goods, unlike the online booksellers in this case, which were the distributors of the actual allegedly defamatory book.

Even though Section 230 did not serve to protect BAM, Barnes & Noble and Amazon from liability for defamation arising from sales of the book, the court dismissed the defamation claim because of the lack of a showing that the booksellers acted with actual malice. It was undisputed that the plaintiffs were limited-purpose public figures. Persons with that status must show that the defendant acted with actual malice. That standard was not met here.

July 7, 2010 Right of Publicity

Use of name and image in YouTube clip did not support right of publicity claim

Fuentes v. Mega Media Holdings, Inc. 2010 WL 2634512 (S.D. Fla. June 30, 2010)

Plaintiff is a famous Cuban author who has written extensively about Raul Castro and other members of the Castro regime. The producers of the Maria Elvira Live show used plaintiff’s name and image in the content of one of the show’s episodes.

In addition to broadcasting the episode on TV, the producers uploaded clips from the show to YouTube. Plaintiff had not consented to that appearance and sued for, among other things, violation of Florida’s right of publicity statute, Florida Statute 540.08.

The show moved to dismiss the right of publicity claim and the court granted the motion.

It held that use of plaintiff’s name and image in this way did not violate the statute because the use was not “for purposes of trade or for commercial or advertsing purposes.” Looking to analogous cases (which, of course, did not involve social media), the court held that for this statutory standard to be met, the use of the name or image has to be separate and apart from the broadcast itself.

In these other cases, the individuals featured in the content of an audiovisual work sued under the statute and lost.

In Lane v. MRA Holdings, the plaintiff sued the producers of Girls Gone Wild. She lost even though her picture appeared on the cover of the DVD. In Tyne v. Time Warner, some individuals who were incorporated into the movie A Perfect Storm lost on the same grounds — their name and image had not been used separate and apart from the work itself.

February 17, 2009 Contracts, Copyright, Privacy, Right of Publicity

Shame on you, Facebook, for overreaching

Facebook, I hereby grant to you an irrevocable, perpetual, non-exclusive, transferable, fully paid, worldwide license (with the right to sublicense) to use the following content: “Go jump in a lake.”

The past few days people have been talking about how scandalous it is that Facebook changed its terms of service to grab up a very broad license in content its users upload. I’m sure that Facebook is counting on this controversy to go wherever it is that memes go to die, to be forgotten just like most controversies-du-semaine. It probably will, but as the sentiment finds itself already on the decline, I’ll comment.

Here’s what the offending section of the Facebook terms of service now says, in relevant part:

You hereby grant Facebook an irrevocable, perpetual, non-exclusive, transferable, fully paid, worldwide license (with the right to sublicense) to (a) use, copy, publish, stream, store, retain, publicly perform or display, transmit, scan, reformat, modify, edit, frame, translate, excerpt, adapt, create derivative works and distribute (through multiple tiers), any User Content you (i) Post on or in connection with the Facebook Service or the promotion thereof subject only to your privacy settings or (ii) enable a user to Post, including by offering a Share Link on your website and (b) to use your name, likeness and image for any purpose, including commercial or advertising, each of (a) and (b) on or in connection with the Facebook Service or the promotion thereof. You represent and warrant that you have all rights and permissions to grant the foregoing licenses.

I was pretty peeved when I learned that Facebook had modified its terms to get a broader license. But I was even more peeved when I read founder Mark Zuckerburg’s blog post from yesterday which tried to justify the changes. Of course Facebook must make sure it has the rights it needs in order to “show [users’ content and information] to the other people they’ve asked [it] to share it with.” But isn’t the right to share that content inherent in the very “asking”? Why be grabby?

Facebook is being content greedy. It’s commandeering more than it needs to run the service. An example Zuckerburg uses in the post concerns the text of a messages sent between friends. If one user deactivates his or her account, a copy of each message will still exist in the other friend’s inbox. Fine. I see the point. So get a license to store and display a copy of private messages. There’s no problem with that.

The bigger rub comes with photos and video users upload. Why does Facebook need a perpetual license for that? I don’t see any reason, whether from a technological or other practical standpoint, why photos and video could not or should not be deleted — and the license to Facebook terminated — when a user deactivates his or her account. YouTube doesn’t demand a license for content after it has been taken down by a user.

Zuckerburg’s post contains the following interesting statement: “In reality, we wouldn’t share your information in a way you wouldn’t want.” Okay Mark, let’s talk about reality. I don’t want you using information about me, like my name, for commercial purposes. That’s reality. Why then do you demand to have the right to use my name and other information for commercial purposes? Are you suggesting that the terms of service as now written don’t reflect reality? I know they were written by lawyers, but surely your legal counsel can’t be that removed from the real world.

I like Facebook, and through it I have reconnected with old friends and made some new ones. But those connections are what’s important, not the intermediary. I may delete my photos off of there but I’ll probably keep using it, at least for now. But I’ll likely post less content. Shame on you, Facebook, and shame on you Mark Zuckerburg, for putting up a post just filled with platitudes, all while ignoring the fact there’s no reason for your new overreaching. That kind of stunt will invigorate those who want an alternative to Facebook, and will accellerate the process of making Facebook tomorrow’s Friendster.

Greedy photo courtesy Flickr user Gribiche under this Creative Commons license.

January 22, 2009 Personal Jurisdiction, Right of Publicity

No personal jurisdiction over Australian defendant in Flickr right of publicity case

Chang v. Virgin Mobile USA, LLC, 2009 WL 111570 (N.D.Tex. January 16, 2009)

Allison Chang (through her mother, since Allison is a minor) and Justin Ho-Wee Wong sued Australian-based Virgin Mobile Pty Ltd. alleging a number of tort claims including misappropriation of Chang’s right of publicity. Plaintiffs claimed that Virgin wrongfully used Chang’s picture in an Australian advertising campaign.

What makes the case intriguing is that Virgin got the photo off of Flickr. Wong took the picture and uploaded it there, attaching a Creative Commons Attribution 2.0 license to it. [See the ad]

Virgin moved to dismiss the action for lack of personal jurisdiction, arguing that it lacked minimum contacts with the forum state of Texas to satisfy constitutional due process. The court granted the motion and dismissed the case.

Chang argued that the court could exercise personal jurisdiction based on three contacts between Virgin and Texas: (1) Virgin’s accessing a Flickr server located in Texas; (2) Virgin’s contract (i.e., the Creative Commons license) with Wong, a Texas resident; and (3) the intrastate effects of Virgin’s use of Chang’s photograph in the advertising campaign.

The court found that Chang failed to establish the downloaded photo was on a server located in Texas. Though Flickr does maintain servers there, the photo could have been on another server located in either Virginia or Texas. The court rejected Chang’s argument that because Virgin directed its conduct to Flickr.com, it could be haled into court anywhere there are Flickr servers.

The court similarly found that any purported agreement with Wong via the Creative Commons license was not sufficient to establish personal jurisdiction. The Creative Commons license did not require Virgin to perform any of its obligations in Texas. Instead, the license permitted the photograph to be used anywhere in the world. Furthermore, Chang failed to show that Virgin performed any of its obligations in Texas. It used the photograph solely in Australia, the one place that, according to Virgin’s evidence, it was authorized to sell its products and services. Finally, because Virgin only used the photograph in Australia, the license that permitted its use was centered in Australia, not Texas.

Chang’s final argument was that she felt the injurious effects of the alleged misappropriation in Texas and therefore, under the holding of Calder v. Jones, a court in Texas could hear the case. The court rejected this argument finding that even though Chang may have shown she was affected in Texas, plaintiffs failed to show that Virgin’s conduct was intentionally directed into the forum.

Australian flag image courtesy Flickr user euthman under this Creative Commons license.

April 22, 2008 Right of Publicity

Borat movie plaintiff not successful in image appropriation case

[Brian Beckham is a contributor to Internet Cases and can be contacted at brian.beckham [at] gmail dot com.]

Lemerond v. 20th Century Fox, No. 07-4635, 2008 WL 918579 (S.D.N.Y. March 31, 2008)

In the movie Borat: Cultural Learnings of America for Make Benefit Glorious Nation of Kazakhstan, the fictional Kazakh character (alter ego of comedian Sacha Cohen) journeys to America — all the while videotaping his interactions with unsuspecting people. One scene shows Borat greeting plaintiff Lemerond (“Hello nice to meet you. I’m new in town. My name a Borat”), then promptly running off in the opposite direction screaming (“Get away! What are you doing?”). (Those who have not seen the movie should note that the text does not capture the awkwardness of the exchange). The 13-second clip is shown twice in the full-length film, as well as in a movie trailer (but in the trailer the plaintiff’s face is blurred).

Plaintiff Lemerond filed suit under New York Civil Rights Law section 51 and New York common law for the unlawful use of his image. Defendant 20th Century Fox filed a 12(b)(6) motion to dismiss the suit for failure to state a claim. The court granted the motion.

Since New York does not recognize a common law right of privacy (the related right of publicity, like a trademark must be used in commerce to identify the source of goods or services — celebrities would normally enjoy such a right), the court decided the plaintiff’s suit on the basis of whether his likeness was used for “advertising purposes or purposes of the trade” without written permission. The most significant question was whether his appearance in the clips and trailer was for advertising purposes.

The court offered what might be considered a strained reading of the New York statute. It first cited to case law that held the statute was limited to “nonconsensual commercial appropriations of the name, portrait, or likeness of a living person.” It then pointed to another case which held that the nonconsensual use of a person’s image to depict “newsworthy events or matters of public interest” is protected by the statute. The court then quoted yet another case stating that this newsworthiness exception broadly covered “social trends, or any subject of public interest” and went on to observe that “public interest” and “newsworthy” have been defined in the most liberal and far reaching terms. Accordingly, the court found that Borat’s antics fit “squarely” within the newsworthiness / social commentary exception of the New York statute, stating that

[T]he movie employs as its chief medium a brand of humor that appeals to the most childish and vulgar in its viewers. As its core, however, Borat attempts an ironic commentary of ‘modern’ American culture…challeng[ing] its viewers to confront, not only the bizarre and offensive Borat character himself, but the equally bizarre and offensive reactions he elicits from ‘average’ Americans.

In a footnote, the court approvingly cited a 1970 case in pointing out that “the mere fact that defendants are spurred by the profit motive and engaged in the commercial exploitation of [a] motion picture does not negate their right to depict a matter of public interest or to advertise the picture by the showing of a ‘trailer’.”

Perhaps an open question is when, if ever, a New York news reporter or movie producer would need permission to use a non-celebrity’s image in his or her reporting, movie, or advertising, i.e., on a subject not necessarily in the public interest.

August 8, 2007 Right of Publicity

Court sides with the late James Brown in right of publicity case against Corbis

Brown v. ACMI Pop Div., — N.E.2d —-, No. 06-0870, 2007 WL 2214544 (Ill. App. Aug. 2, 2007) [Download the opinion]

The Appellate Court of Illinois recently addressed some questions arising at the sometimes murky border between copyright and the right of publicity. At issue was whether Corbis, the online stock photography company, violated the late singer James Brown’s right of publicity by offering to license the copyright in photos of him, even though he had not consented to the use by Corbis of his name or image.

Corbis moved to dismiss under 735 ILCS 5/2-619 (which is much like a motion for summary judgment), arguing that the offering of copyright licenses through the website was not an unauthorized commercial use, and therefore not a violation of Brown’s right of publicity under the Act and at common law. The court denied the motion, and Corbis sought interlocutory review with the Appellate Court. On appeal, the court affirmed the trial court’s denial of the motion to dismiss.

Corbis argued that Brown’s allegations were “premised on an unprecedented legal theory that a copyright for a photograph of an individual cannot be licensed unless the publicity rights are obtained by the licensor, not the end user, without regard to the ultimate use of the photograph.” Citing to earlier Illinois cases in which the name and image of certain well-known figures had been used in novels and in news coverage, Corbis claimed that the use of the image was a “vehicle of information,” much like a news report.

Brown argued that Corbis’s use of the photos was not as a mere “vehicle of information,” but were being sold for commercial purposes, as merchandise or a good. But Corbis sought to distinguish its activity as a “service,” namely, licensing the “incorporeal image,” which is “purely intangible.” Corbis also asserted that permitting Brown to charge a fee for permission to use his image for news reporting (many of Corbis’s customers were news media outlets) would violate the First Amendment. Moreover, the Right of Publicity Act specifically exempts use of images for noncommercial purposes, such as news reporting.

In affirming the denial of the motion to dismiss, the court observed the “vast difference of opinion regarding the interpretation of the definition of what Corbis sells and the legal effect of such sales.” Accordingly, the court determined, a material and genuine disputed question of fact remained, so the trial court’s refusal to dismiss the matter was appropriate.

December 31, 2006 Right of Publicity

Publication of photo on website not a “continuing violation” in right of publicity case

This post is by Greg Smith, a contributor to Internet Cases. [Bio]

In Blair v. Nevada Landing Partnership, a casino worker sued his former employer, claiming that the casino used a photograph of him in various marketing materials and later, without authorization, on the casino’s website. Although the plaintiff consented to the photograph when it was taken, he complained about its use after he quit his job.

The plaintiff claimed that the casino misappropriated his likeness, and filed an action in Illinois state court, alleging violations of the state’s Right of Publicity Act. The trial court dismissed the action as time-barred, and the plaintiff sought review. The Appellate Court affirmed.

The court began by analyzing when the limitations began to run. Said another way, it looked to determine when the cause of action “accrued.” The photograph was taken in 1994, and about six months later, it appeared on various flyers and brochures, signs and billboards, casino restaurant menus, and calendars and postcards for sale in the casino gift shop. Some time later, the photo appeared on the casino’s website. The plaintiff did not file suit until September 2004.

The court noted that in tort cases, the limitations period begins to run when the plaintiff can first file the lawsuit. Conduct of a defendant falling under the “continuing violation” exception, however, can toll (i.e., delay) the time when the limitations period begins. If there is a continuing violation, the statute of limitations does not begin to run until the tortious acts cease. But the continuing violation exception does not apply if the alleged conduct stems from a “single overt act.” In such cases, the statute begins to run on the date of the single act.

The court declined to apply to continuing violation exception:

We do not believe that the defendants’ act of publishing the plaintiff’s picture in various mediums around the casino falls under the continuing violation exception. Rather, we believe that the use of the plaintiff’s picture in different means such as on the billboard in the casino pavilion, in the casino’s restaurant menu, and on the defendants’ website, constituted a single overt act.

The court cautioned that application of this so-called “first publication rule” is not without its limitations. “[A] republication of the plaintiff’s likeness can constitute a new cause of action if the publication is altered so as to reach a new audience or promote a different product.” Lehman v. Discovery Communications, Inc., 332 F.Supp.2d 534, 539 (E.D.N.Y.2004).

But in this case, even though the casino used the plaintiff’s photograph in different formats over time, it committed only a single overt act for statute of limitations purposes. The uses were all made with the same goal, namely, to attract customers to the casino. Accordingly, a suit filed nearly a decade after the photo was first used was clearly time-barred.

Blair v. Nevada Landing Partnership, — N.E.2d —-, 2006 WL 3594284 (Ill. App. 2 Dist., December 8, 2006)