Evolving Precedents, New Technologies Make Right of Publicity Topic to Watch in 2015

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An excerpt from our 2015 Outlook

By Blake Brittain

Jan. 21 — Right of publicity law should continue to be defined largely by the Hart and Keller line of NCAA student-athlete cases, practitioners told Bloomberg BNA.

Those cases were milestones in right of publicity law, the experts consulted by Bloomberg BNA said.

The parallel cases involved NCAA athletes suing video game maker Electronic Arts for using their likenesses in its NCAA Football series.

Both courts adopted the transformative use test from the California Supreme Court's ruling in Comedy III Productions Inc. v. Gary Saderup Inc., 21 P.3d 797, 58 U.S.P.Q.2d 1823 (2001)), and determined that EA's renderings of the players were not transformative, making the use of the likenesses ineligible for First Amendment protection.

The courts also ruled that additional elements of the game created by the developers, like renderings of the football stadiums and crowds, did not make it transformative.

And while it appeared that the U.S. Supreme Court might have its say on the matter after EA petitioned for certioriari in both cases, the parties eventually settled.

The court dismissed both petitions in September 2014.

Rallying Around Transformative Use

The settlement left the current patchwork of state laws and court decisions intact, but Hart and Keller appear to signal a growing trend.

On Jan. 6, the U.S. Court of Appeals for the Ninth Circuit determined that EA's use of former NFL players' likenesses without their permission in the company's Madden NFL series was similarly non-transformative. Davis v. Elec. Arts Inc., 2015 BL 1633 (9th Cir. 2015).

The court said that Keller was settled law.

“In that case, the court said, ‘hey, we've already decided these issues; why did you bring them up again?' ” Ronald S. Katz of Manatt Phelps & Phillips, Los Angeles, told Bloomberg BNA.

In Davis, the Ninth Circuit, like in Keller, rejected EA's argument for applying a test from Rogers v. Grimaldi, 875 F.2d 994, 10 U.S.P.Q.2d 1825 (2d Cir. 1989), a trademark case that said a defendant's work receives First Amendment protection unless the use of the plaintiff's likeness was unrelated to the work or was used in a manner that falsely suggested that the plaintiff endorsed the defendant's product.

Rogers strongly influenced right of publicity law before the Hart and Keller decisions.

“I haven't had a right of publicity case in 15 years in which the First Amendment defense hasn't been used,” Mark Lee of Manatt Phelps & Phillips, Los Angeles, said. “It even comes up in non-media cases.”

Keller “for me, was a really important watershed moment, because up until that time First Amendment expressive uses were really just beating the heck out of the right of publicity,” Lateef Mtima, a law professor at Howard University, Washington, said.

“Before Keller, if a work had any valid expressive purpose—if you raised the First Amendment flag—all was lost,” Mtima said. “I don't think it's the same landscape today.”

Mtima said that In re NCAA Student-Athlete Name & Likeness Licensing Litig.—which encompasses both the settled Keller case and the still-active O'Bannon NCAA antitrust case—evidences Hart and Keller's “potential pervasive reach” by recognizing the economic value of the athletes' right of publicity.

“The reason why I think O'Bannon was so important was not only that the court recognized an antitrust market and injury, but when the court fashioned a remedy it was based on the fact that these right of publicity rights have value, because Hart and Keller told us they have value,” Mtima said.

“The First Amendment does not eliminate the right of publicity,” Katz said. “That's becoming fairly well-established in the law, in that you have two fairly important courts of appeal that have said it.”

“It seems likely that other circuits would find the Third and Ninth Circuits persuasive,” Lee said.

“The weight of the law now is to look at these issues from the standpoints of the Third and Ninth Circuits, to expand protection,” Jonathan Reichman of Kenyon & Kenyon LLP, New York, said.

Where Do We Go From Here?

With the Third and Ninth circuits leading the way, what will the future of right of publicity law look like nationally?

There are no major right of publicity cases immediately on the horizon, but such claims can arise in any jurisdiction.

Although such cases are more likely in the media centers of New York and California, “It's always possible to file in another circuit because a video game defendant is located there,” Manatt's Lee said.

“It's even remotely foreseeable for a video game company to file for declaratory relief specifically because the case law is different” in a jurisdiction that has not yet adopted the transformative use test, he said.

Right of publicity law will likely continue to revolve around video games, a unique medium that combines expressive and commercial elements in a way that is particularly conducive to right of publicity disputes.

“Any time you have a video game that involves people who are well-known, whether its football or basketball or mixed martial arts, you're going to have this issue,” Katz said.

There is also some chance that courts could use the right of publicity to give actors intellectual property rights in their roles, similarly to the Ninth Circuit's controversial copyright decision in Garcia v. Google, Inc., 766 F.3d 929, 2014 BL 193377 (9th Cir. 2014).

In Garcia, an actor was deceived into appearing in a controversial film disparaging of Islam. Unbeknownst to the actor, who had been told the film was an Arabian adventure story, the filmmakers had dubbed over her lines.

The film caused an outrage in the Middle East, and the actor began to receive death threats. The Ninth Circuit granted the actor an unprecedented copyright interest in her individual performance, as well as a preliminary injunction forcing YouTube to remove the film from its website.

“I think in the Garcia v. Google case, everybody kind of recognized the court's effort to protect the safety of the plaintiff, expanding copyright law in a way that was really flukey, so I could see an impetus to use right of publicity law as an alternative theory or basis to give actors some control over their likenesses,” Reichman said.

“But in certain ways, it would be just as fraught and risky to expand right of publicity law for this purpose,” he said.

Practically, the trend toward the transformative use standard, along with greater awareness of the issue after Hart and Keller, could result in fewer unauthorized uses, fewer disposals on summary judgment and more settlements of these kinds of cases before trial.

“It will be clear to an unauthorized right of publicity defendant that the mere fact I'm doing something other than straight advertisement—the mere fact I've added elements—is not going to be enough anymore,” Mtima said.

Federal Court Consensus?

There seems to be a consensus that it is important to harmonize right of publicity standards on a nationwide basis, but there is disagreement on the best way of doing so—through federal legislation, a Supreme Court decision or a circuit consensus built through federal court rulings like Hart and Keller.

According to Mtima, Hart and Keller left the federal courts with a useful “blank slate,” and the trend toward unifying the circuits under the transformative use test would make any congressional or Supreme Court action premature.

Hart and Keller have provided a good framework, and I think there's plenty that courts can do to flesh that out before a ‘final pronouncement' from the Supreme Court or Congress,” Mtima said.

Some believe, however, that the time is right for more sweeping action, whether from the Supreme Court or from Congress.

Supreme Court Clarification?

“What would really be helpful is to have a Supreme Court decision,” Manatt's Katz said.

The Supreme Court has not ruled on a right of publicity case since Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 205 U.S.P.Q. 741 (1977), which ruled that a local news station had infringed a performer's publicity rights by broadcasting the entirety of his 15 second “human cannonball” routine without his permission.

“The Supreme Court reviews very few cases, so it's always a long shot,” Katz said. “But the fact that they haven't ruled on this in a long time, and the many conflicts among appellate courts, would all make you think eventually they'll get around to this.”

“If the court looks at inconsistent results [from different circuit standards], that could be a good hook on which the Supreme Court may take an interest and assert some consistency,” he said.

And although Reichman said Supreme Court review was unlikely in 2015, he also said it is still possible “down the road.”

Should Congress Intervene?

“I'm a longtime advocate of federal legislation to cover right of publicity law,” Reichman said. “State-by-state patchwork protection, with different standards in different states, creates an inefficient system for the exploitation of commercial properties and rights on a nationwide basis.”

Reichman said that the new Republican Congress may be more open to passing right of publicity legislation than the last Congress.

“With a Republican-controlled Congress that places a high value on private property rights, they might be more favorably inclined to consider this,” Reichman said. “There's a lot of impetus right now as a result of the EA cases, the NCAA case; combine that with the new Congress and something might happen.”

But not everyone agrees that a federal law is optimal.

“I'm not sure if a law is the best way to deal with this, because a law deals with everything across the board, but court cases allow you to do a case-by-case analysis through certain facts,” Katz said. “I think that's more appropriate for right of publicity than legislation.”

For example, “There are state laws, but they haven't really solved any problems because the laws are subject to interpretation,” he said.

No Supreme Court right of publicity activity is on the immediate horizon for 2015, but relevant federal cases could always arise, and there is some chance that the new Republican Congress will take up the issue.

New Technologies May Complicate

Looking further ahead, evolving technologies could raise more novel right of publicity questions in the future.

“It could come up in a lot of circumstances we don't anticipate,” Lee said. “What if a studio decided to produce a film with a photorealistic, digitally animated famous actor? If they did that, could the actor successfully sue?”

“The law presently appears to tilt in favor of the performer, and favor a ruling that such use would violate the right of publicity,” Lee said, “but it could depend on the jurisdiction.”

Lee cited the age-reversing special effects in the 2008 Brad Pitt film “The Curious Case of Benjamin Button” as an example of technology closing in on complete accurate renderings of human likenesses, although such renderings may still be prohibitively expensive today.

Similarly, hologram performances like those of late musicians Tupac Shakur at the 2012 Coachella Valley Music and Arts Festival and Michael Jackson at the 2014 Billboard Music Awards may also raise new right of publicity issues.

While these performances were authorized by the musicians' respective estates, it's not hard to imagine technological advances leading to similar unauthorized performances in the future.

“Celebrities are cognizant of their images as much as ever before; particularly on the music side,” Reichman said, “and since the collapse of the music business, musicians are looking to other places for revenue” like merchandising and touring.

“As ancillary markets become more important to music performers, there's a heightened sensitivity to the use of their likenesses,” Reichman added, “Combine that with new technologies and it's sort of combustible.”

To contact the reporter on this story: Blake Brittain in Washington at bbrittain@bna.com

To contact the editor responsible for this story: Tom P. Taylor at ttaylor@bna.com