Posts In "Right of Publicity"

Right of Publicity




“Hustlin’” to a Legal Victory: Rick Ross and the Right of Publicity

California gives you the right to profit from your own identity.  But what if you assume somebody else’s?

Rick Ross is famous for rapping about cocaine.  Ricky D. Ross is famous for selling it.  Ross (the cocaine dealer) alleged that Ross (the rapper) misappropriated his name and likeness for his own financial benefit.  Or as one person wrote: “Rick Ross sued Rick Ross for being Rick Ross.”

A recent California appellate decision settled the dispute.  But before revealing who prevailed (hint: it was a Ross), some background on the Ross v. Ross feud, and the right to publicity.

Ross v. Ross

Ricky D. Ross “organized and ran a vast cocaine-dealing enterprise” in the 1980s, selling “as much as $3 million worth of cocaine a day.”  He “eventually amassed a fortune worth hundreds of thousands of dollars.”

As sometimes happens when you sell $2.5 billion of an illegal drug—that’s “billion” with a “b”—Ross was arrested and convicted of drug trafficking.  End of story, right?  Not for Ross.

Ross proceeded to: uncover a ring of “dirty cops” from behind bars; help free 120 wrongly convicted people; earn early release from jail; get arrested again for—what else—dealing cocaine; become entangled in the Iran-Contra scandal; and then earn his release again.  In the process, he became “the subject of numerous television shows focusing on his erstwhile criminal empire.”

Ross’ notoriety did not escape the attention of William Leonard Roberts II.  Acknowledging that Ross’ life story “grabbed him,” Roberts left his job as a correctional officer, and starting rapping about dealing cocaine.  His newly adopted stage name? Rick Ross.

As Ross (the cocaine dealer) sat behind bars, Roberts (the rapper) rose to fame.   Roberts scored a hit with the song “Hustlin.’”  (Sample lyrics: “Everyday I’m hustlin’”—repeated 20 times.)

This time, Roberts’ notoriety didn’t escape Ross’ attention.  While behind bars, Ross learned that Roberts was using the name “Rick Ross.”  When he left jail, Ross filed suit, alleging that Roberts violated his right to publicity.

The Right of Publicity

The “right of publicity” gives you the right “to control the commercial use of [your] name, image, likeness, or other unequivocal aspects of [your] identity.”  The right “has been traditionally understood to apply only to the use of a person’s name or likeness.”  However, California “courts have expandedthe scope of the right . . . may apply to the use of virtually anything that evokes identity.”  For example, a federal appellate court famously found that a company violated Vanna White’s right of publicity by dressing a robot in a “wig, gown and jewelry” and posing the robot “next to a Wheel-of-Furniture-like game board.”

The right of publicity is not unlimited, however.  Courts have held that the right to prevent people from using your likeness must be balanced against the right of self-expression under the First Amendment.  To that end, the California Supreme Court has observed that you can use another person’s likeness if your use is “transformative”—that is, if it “adds new expression.”

The Court’s Decision

Against this backdrop, the appellate court held that Roberts did not violate Ross’ right of publicity because Roberts’ use of Ross’ identity was transformative.  The court explained that Roberts “was not simply an imposter seeking to profit solely off the name and reputation of Rick Ross. Rather, he made music out of fictional tales of dealing drugs and other exploits some of which related to plaintiff.”  In other words, “[u]sing the name and certain details of an infamous criminal’s life as basic elements, he created original artistic works.”

The court acknowledged that Roberts may have “initially gained some exposure through use of the name Rick Ross and the reputation it carried.”  But the court noted that “[i]t defies credibility to suggest that Roberts gained success primarily from appropriation of plaintiff’s name and identity, instead of from the music and professional persona that he . . . created.”

The opinion is entertaining—it’s not every day you see judges using the word “hustlin’”—and does a good job of grappling with a difficult question.  But it also leaves certain questions unanswered.  When did Roberts’ use of Ross’ likeness become transformative?  When he signed a record deal?  When he scored a hit single?  As law professor Shaun Martin notes,  “it’s a very difficult line to draw between ‘derivative’ and ‘transformative’ works.”

Figuring out where to draw that line is a question for another day (and another lawsuit).  The important takeaway (for rap fans, at least) is that Roberts can keep “hustling’”—and doesn’t need to change his stage name to do so.

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Electronic Arts Fumbles in Lawsuit Brought by College Athletes (again)

College sports is big business.  Student-athletes generate truckloads of cash for their schools, but are prohibited by NCAA rules from sharing in the haul.  In fact, if the student-athlete learns that someone is commercially exploiting his or her name or picture, NCAA rules require the student “to take steps to stop such an activity in order to retain his or her eligibility for intercollegiate athletics.”  (Wouldn’t we all have loved to have had that problem in college….)

Given this state of affairs, when Electronic Arts made its NCAA Football games using the likenesses of college athletes, it could not have obtained licenses from the students even if it had wanted to.  That would have violated NCAA rules.  So what happens when EA uses the likenesses of college athletes without permission, makes a bunch of money, and then doesn’t compensate the students?  After graduation, once they are no longer bound by NCAA rules, they all sue, of course!

  Continue reading the full story . . . »


Leggo My Likeness, Part Four

There are so many fun things you can do with celebrities.  In addition to the traditional things like writing books about them, you can also use their catchphrases to make greeting cardsmake movies about them using puppets; or even use claymation television to have them fight each other to the death.  But what about including digital representations of them in a video game?

new case reinforces the holding of a previous case which stands for the proposition that you can’t put celebrities in a video game and then have them do exactly what they normally do in real life.  (For example, a game like “Lindsay Lohan:  Escape from Rehab” simply would not work).

Unfortunately, the case also sets a bad new precedent.

The case in question is called Hart v. Electronic Arts and represents a dangerously subtle evolution in right of publicity law.  In a 2-to-1 decision, a three judge panel ruled that various NCAA Football games, made by Electronic Arts (EA), did not “sufficiently transform” the identity of a college football player named Ryan Hart to escape his claim that EA violated his right of publicity.

At first blush, it seems that the 3rd Circuit simply copied the “transformative use test” used by the 9th Circuit.  Upon closer inspection, however, it becomes apparent that the 3rd Circuit took the analysis one step further.

The majority began its analysis by reasoning that “[t]he digital Ryan Hart does what the actual Ryan Hart did while at Rutgers: he plays college football, in digital recreations of college football stadiums, filled with all the trappings of a college football game.”  The majority opinion then chastised EA for seeking to increase profits by capitalizing “on the respective fan bases for the various teams and players” by creating “a realistic depiction of college football for the users.”  However, as the dissenting judge recognized, the inclusion of realistic player likenesses to increase profits should have nothing to do with First Amendment protection.  In fact, by making such a distinction, the result is a “medium-specific metric that provides less protection to video games than other expressive works.”

In his dissenting opinion, Judge Thomas Ambro argued that EA’s use of real people as “characters” in its sports games should be treated the same way as portrayals of individuals (fictional or nonfictional) in movies and books.  (After all, who would want to play Tim Tebow in a football game if you couldn’thave him get down on one knee and start praying?)  Along these lines, when an author writes a historical novel, biography, or other book inspired by or involving famous people, the First Amendment protects the author’s right to realistically portray those people.  The same protection applies to filmmakers.  When Oliver Stone made the biographical film “W,” about former President George W. Bush, an obvious goal of the film was to have Josh Brolin’s portrayal of George W. Bush as realistic as possible to increase the likelihood of satisfied movie-goers.  (Naturally, this required pronouncing the word nuclear “nuke-ya-lure,” and including lines like “Whose job is it, to find these damn weapons?” and “I believe God wants me to be president!”)

To be clear, Judge Ambro does not suggest that the First Amendment should protect all digital portrayals of real people, but simply those in which the likeness, as included in the creative work, has been transformed into something more or different than it was before.  This is the test used by the 9th Circuit.  It is also the test articulated by the majority opinion.

Why, then, did the majority end up with a different conclusion than the dissent?

In a footnote to his dissenting opinion, Judge Ambro observes that when the transformative use test was originally developed, California’s Supreme Court borrowed the concept from the “purpose and character of the use” factor relevant to a copyright fair use defense.  In Judge Ambro’s view, the majority opinion permitted “another fair use factor to creep into their transformative analysis.”  Specifically, he observes that the majority also considered the fourth fair use factor, i.e., “the effect of the use upon the potential market for or value of the copyrighted work.”  Judge Ambro concludes his footnote by pointing out that the California Supreme Court expressly excluded this factor when it originally developed the transformative use test in the famous Three Stooges Case.

Yet, the problem remains; an uninvited fair use factor regarding marketability which has no business in a transformative use analysis.  At least in the 3rd Circuit.

In the meantime, video game developers would do well to heed the message in this case:  It is risky to include super-realistic, digital representations of celebrities or athletes in a video game engaging in their normal behavior.  The safest thing to do is change the celebrity’s actual appearance, behavior, and context in which the celebrity appears.  Changing just one of these things—e.g., context—may not be enough.

For example, in the No Doubt case, simply putting a rock band into a fanciful context like outer space did not render the use of the band’s likeness transformative because the band still looked like the band and still did all the same things the band normally did.  By comparison, Kirby v. Sega taught us that the transformative test is satisfied if you give a celebrity a new name, a new appearance, and the lovable story of having been “dispatched to investigate an invasion of Earth by dance-loving aliens who shoot earthlings with ray guns, causing them to dance uncontrollably.”

In the end, what bothers me most about the Hart v. Electronics Arts opinion is a throw-away point raised by an amicus brief.  The section of the brief highlighted by the court reads:

“Under [EA’s] application of the transformative test, presumably no infringement would be found if individuals such as the Dalai Lama and the Pope were placed within a violent ‘shoot-em-up’ game, so long as the game included a ‘mechanism’ by which the user could manipulate their characteristics.”

Why did the court highlight this point?  It seems to imply that a video game cannot realistically depict celebrities in any context, even if their behavior is abnormal or uncharacteristic.  Although the court did not expressly make such a statement, the “concern” it evinced is distressing.

I suppose that if anything is clear, it’s that these judges need to start playing more video games.


Why Skip Bayless Should Probably Focus on the Super Bowl and Shut Up About This Whole “Kaepernicking” Trademark Application

So last week, I was on my 173rd consecutive hour of consuming blog articles, news stories, tweets, posts, video interviews, transcripts of interviews, analyses of transcripts of interviews, and opinions on the analyses of transcripts of interviews about Manti Te’o and his imaginary dead girlfriend, when I noticed that something else critical happened in the world of sports.  OMG OMG OMG!  Did you hear that Colin Kaepernick, NFC champion quarterback of the San Francisco 49ers and flat-billed hat enthusiast, recently “trademarked” his signature, tattooed-biceps-kissing touchdown celebration now known as “Kaepernicking?”

Wait, WHAT?!  Does this mean that when I finish this blog, Colin is telling me I can’t celebrate by jumping up from my desk and kissing my beautiful biceps?  Have you seen my biceps?  It’s hard for me to look down at them and not kiss them!  It’s like I have Kate Beckinsale and Jessica Chastain staring up at me from each bicep, lips pursed, like some insane Popeye fever dream.

In my panic, I poured through the incomprehensibly large number of stories about this.  But then I had a thought.  No, not “What am I doing with my life?”  No, not even “What is everyone at ESPN doing with their lives?”  No, my thought was “Wait wait… I’m a lawyer, damn it!  I actually know what all of this means!  These guys don’t!

What’s in a Trademark?

You see, there are times when being a lawyer is like being a sci-fi nerd.  No, not just because girls flinch upon seeing us…  Where a sci fi nerd may get mad that you don’t know that those cool big four-legged walky things in The Empire Strikes Back can be called either an Imperial Walker OR an AT-AT (short for All-Terrain Armored Transports, not to be confused with those cool little two-legged walky things in Return of the Jedi, which are called AT-STs, or All-Terrain Scout Transports…idiot), I often find myself peeved at laymen’s misunderstanding of intellectual property law.  Someone will give someone a funny nickname at a party and follow it up with “you should totally copyright that!”  And I’ll shout “Excuse me!  According to U.S. copyright law, you can’t copyright a short phrase!  In fact, judging by the context, I’m pretty sure you mean that you should ‘trademark’ that, but what does that even mean?  You can’t actually ‘trademark’ something!  You can file an application for registration with United States Patent and Trademark Office and assuming you specify the proper goods and services and submit a proper specimen of use and pay the requisite fees and don’t receive an office action from the USPTO Examining Attorney or an opposition from a third party, you may be issued a registration.  But is that really what you want to go through for that stupid nickname?!  Hey, wait a minute, where’s everyone going?  Come back!”  (See, there’s a reason I don’t get invited anywhere by anyone.  Ever.)

Regardless (or “Irregardless” for you Raiders fans), listening to or reading a sports reporter’s take on trademark law is like Bill Walsh listening to me try to explain the complexities of the pistol formation.  Here’s the thing:  Colin Kaepernick is in no way going to be able to prevent you, me, Alex Smith, Ray Lewis, the Harbaugh Brothers, or any member of the Lingerie Football League’s Seattle Mist from kissing their biceps.  In fact, as applied for, Colin’s application, if it eventually becomes a registration, will only prevent you from the following VERY limited activity:  advertising and selling clothing making use of the word KAEPERNICKING as a brand.  That’s it.  Nothing more.

You see, Colin’s application only covered the word KAEPERNICKING, not the actual celebration.  In addition, in his application, he’s only claiming the exclusive right to use that word in connection with clothing — following the recent trend of athletes attempting to secure their nicknames for clothing (see TEBOWING and LINSANITY).  In fact, he actually applied for several other marks that didn’t get as much publicity:  KAEPERNICK7, KAEPERNICK CK7, KAP7, KAP, and, creatively, COLIN KAEPERNICK.

As much as can be forcibly read into this story by the easily-excitable Skip Bayless (who just so happens to not only be a frat bro of mine, but we also attended the same sports powerhouse), it’s really not a big deal.  Due to the fact that his “trademark” is just a version of his name, he likely wouldn’t need a registration to protect himself — he’s got right of publicity laws on his side.  He probably filed the applications simply because it’s common for unscrupulous types to file trademark applications for terms associated with famous people as soon as those terms get hot:  see BLUE IVY CARTER and LINSANITY.  Having an application on hand will make it easier to shoo those imposters aside.

Will It Even Work?

Of course, as you may have noticed from my room-clearing screed above, just because Kaepernick applies for trademark protection doesn’t mean he’s going to get it.  In fact, given the nature of the marks for which he’s claiming protection, Kaepernick and his lawyers are going to have a lot of e- paperwork in front of them.

  • All of Colin’s applications for marks which include his last name (i.e. KAEPERNICKING, KAEPERNICK7, and KAEPERNICK CK7) are likely to be initially refused by the USPTO because the marks consist of a word that is “primarily merely a surname.”  The USPTO will only allow a registration of a last name as a trademark if the applicant can prove “acquired distinctiveness,” indicating that the public now associates that surname with this particular applicant’s goods/services.  Colin may be able to prove that due to his recent rocket flight to stardom.
  • Colin’s application for COLIN KAEPERNICK is going to be initially refused by the USPTO because in order to acquire a registration for mark that identifies a particular living individual, the written consent of that individual must be on record.  The USPTO doesn’t want someone’s name to be co-opted by some random third party.  Colin will be able to easily overcome this refusal by submitting a short written statement showing his consent.
  • Colin’s application for KAP will almost assuredly be rejected.  While we may recognize that in this instance, KAP is a flawed attempt at shortening KAEPERNICK (shouldn’t it be KAEP?), the problem is that he’s trying to protect it in connection with clothing, which includes hats.  “Cap” is a word used to generically describe hats and, under the law, no one can claim exclusive rights in a generic word.  The fact that it’s misspelled doesn’t help things.  For the purposes of analyzing the generic or descriptive nature of a word, a misspelling is treated the same as the proper spelling.  I think Colin’s going to have much better luck against the Raven’s defense than he is on getting past this refusal.

But Let’s Focus on What’s Really Important

Brain-addling trademark law minutia aside, the point of this overly-angry and uninteresting missive is to convey the fact that trademark rights, at least in the U.S., are limited in scope.  The main purpose is to allow someone to protect a word, logo or slogan (or, in more complex cases, a sound, shape, color or even smell) as it is used on particular goods or services offered by that person or company.  The protection extends only to that particular word as used on those particular goods (except in limited circumstances).  A trademark registration does not allow the trademark registrant to prevent anyone from ever using that word in a sentence ever again.  It certainly doesn’t allow for the prevention of a certain unoriginal touchdown celebration (I miss the good ol’ days).

But you know, when it comes down to it, I really don’t care.  I’m bitter.  Not just because I’m a lawyerbut because I’m a long suffering San Diego Chargers fan.  I LOVE the guy, but I don’t thinkRIVERSING is going to take off any time soon.  At least I can now go back to what’s really important:  the Manti Te’o story.  I’m eagerly awaiting the day (coming soon) when we see a trademark application for the next big sports fad:  TE’OING.

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Why Celebrities Who Don’t Want to Live in California Might Still Want to Die There

The right of publicity — the legal doctrine that protects the right of celebrities to control and profit from their names, likenesses, and other aspects of their identities — is a familiar topic here at Law Law Land.  But it can be a more complicated subject than we sometimes give it credit for.  Unlike copyright and trademark law, which are (mostly) defined by federal statutes that provide for consistent nationwide rules, the right of publicity is exclusively a creature of state law.  And, thanks to the patchwork of inconsistent and often confusing state laws that have evolved over the years (with heavy influence and lobbying from the heirs of particularly valuable/merchandisable celebrities, like Elvis Presley and Albert Einstein), its application to the dearly departed can get pretty quirky.  For example:

Are you a celebrity who died as a California resident?  Great — your heirs can exclusively exploit your name and likeness for another 70 years!  Oh, were you actually a New York resident when you died?  Just kidding, then, your heirs are totally out of luck, and unauthorized t-shirts with your face will be hitting stores shortly.  That is, unless, your heirs sue in Washington or Indiana, which purport to apply their right of publicity laws to any individual, regardless of whether the celebrity’s state of domicile recognizes the right.  Unless, of course, the federal courts decide that those laws are unconstitutional (a conclusion reached by a Washington district court in a 2011 case involving Jimi Hendrix; the Ninth Circuit will be making its own ruling soon).  And even among those states that expressly recognize a post-mortem right of publicity, there is broad disagreement about the length of protection afforded, the retroactivity of the statutes, and a whole host of other issues.  Got it?  Don’t worry, nobody else does either.

Just ask the lawyers for the estate of Marilyn Monroe, whose recent unsuccessful right of publicity lawsuit could be “Exhibit A” in renewed effort to enact a federal right of publicity law.

Continue reading the full story . . . »


Q&A: What Are the Risks of Using Actors to Portray Real People in a Fictionalized Bio-Pic?

Q:  What are the legalities of using actors to portray real people in a film — a fictionalized bio-pic in which the main character is purely fiction but some of the other characters are real, both living and deceased?  For example, if Forrest Gumpdid not use actual footage but instead chose to represent those scenes using actors to represent the famous people?

A:  I really liked Forrest Gump when I saw it.  I’m pretty sure I even cried in it.  Now I hate it for some reason.  Maybe it’s just a general backlash against Tom Hanks’ haircut in The Da Vinci Code.  But let’s not get into that.

As to your question…we Americans generally think we all have a 1st Amendment right that gives us the ability to say what we please when we please, which has lead to such enlightening phenomena as Ashton Kutcher’s constant Tweeting (thanks a lot, Founding Fathers).  What is important to understand, however, is that this right of free speech is not absolute.  We are not always free to say what we please, especially when it comes to saying things about other people.

Before answering your question, a word of warning:  whether or not your depiction of a real person in a film can open you up to liability is not a question that has a definite answer.  It requires a fact specific analysis and even then, it may not be entirely clear how strong of a ground you stand on.  Also, you’ve got to remember that we’re dealing with people and people are nuts.  Thus, even if it appears you’ve done everything by the books and you’re legally justified in doing what you’re doing, you could still get sued by someone who didn’t like the way you depicted him or her in a movie.

Continue reading the full story . . . »