Intellectual property or art? Judges called to decide

Across the country, public figures ask courts to recognize an exclusive right in their likeness

From the Summer 2001 issue of The News Media & The Law, page 15.

In cases involving some of the biggest names in the sports and entertainment industries, courts are deciding the extent to which public figures exclusively own their names and images. In a shift from the traditional role of the judiciary, magistrates are increasingly being called on to determine the subjective value of artwork.

“Courts continue to make the protection of intellectual property hinge on subjective judgments about the value and content of the works at issue,” New York attorney Lewis R. Clayton said in the July 16 issue of The National Law Journal.

Clayton, a partner at Paul, Weiss, Rifkind, Wharton & Garrison, noted that courts today increasingly are ignoring the 1903 advice of Supreme Court Justice Oliver Wendell Homes: “It would be a dangerous undertaking for persons trained only in the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.”

Entertainers’ publicity rights are butting heads with artists’ free speech rights primarily in California, the state that not only is home to the entertainment industry, but also a publicity statute. The California right of publicity statute, California Civil Code §3344, prohibits using “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.”

Courts must determine whether capturing someone’s likeness and putting it into a concrete form is art or “merchandise,” as the statute describes.

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L.A. Magazine image of digitally altered “Tootsie” photo is protected speech

A celebrity does not have a publicity right in photographs used to illustrate a magazine article on new fashions, the U.S. Court of Appeals in Pasadena (9th Cir.) ruled on July 6. The court determined that actor Dustin Hoffman’s right of publicity was superceded by a local magazine’s First Amendment rights.

The court reversed a $3 million verdict from a federal judge in Los Angeles who ordered Los Angeles Magazine to pay Hoffman $1.5 million in compensatory damages and $1.5 million in punitive damages in January 1999. The magazine had published without permission a photograph of Hoffman as he appeared in a publicity still for “Tootsie.” The magazine, through computer imaging, added a different dress and heels to the photograph.

U.S. District Court Judge Dickran Tevrizian concluded the magazine violated Hoffman’s common law right of publicity, his statutory right of publicity under California law, the federal Lanham Act’s prohibitions against deceptive use of names or images, and provisions of California statutory law prohibiting unfair competition in business by publishing the computer-altered image of Hoffman.

The photograph appeared as part of a March 1997 article entitled “Grand Illusions,” in which still photographs of famous film stars were merged with photographs of body doubles wearing spring fashions. In the 1982 film “Tootsie,” Hoffman played an out-of-work actor who dressed up as a woman to land an acting job. The photograph of Hoffman, which used a still shot of his head showing him dressed in character for “Tootsie,” was accompanied by text stating: “Dustin Hoffman isn’t a drag in a butter-colored silk gown by Richard Tyler and Ralph Lauren heels.”

On appeal, a panel of Ninth Circuit judges led by Robert Boochever held that the magazine spread was speech protected by the First Amendment, and not merely “commercial speech” that does little more than propose a commercial transaction.

“Viewed in context, the article as a whole is a combination of fashion photography, humor, and visual and verbal editorial comment on classic films and famous actors,” Boochever said in the opinion. “Any commercial aspects are ‘inextricably intertwined’ with expressive elements, and so they cannot be separated out ‘from the fully protected whole.'”

The district court ruled that even if the speech were protected, the magazine acted with “actual malice” by printing the piece knowing the computer-altered image of Hoffman was false and intended for readers to believe the falsehood. Actual malice, which is required for public figures to collect damages for noncommercial speech, means that a statement is made knowing it to be false or in reckless disregard for the truth.

The Ninth Circuit disagreed that the magazine intended to deceive readers. The court cited numerous notes and text in the L.A. Magazine piece explaining all of the images in the spread were digitally adjusted. The court noted that it must have been obvious that body doubles — not the famous actors — were used in the photo shoot because “the vast majority of the featured actors were deceased.” (Hoffman v. Capital Cities/ABC and L.A. Magazine, Inc.)

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Three Stooges T-shirts are not art

T-shirts bearing drawings of The Three Stooges are not sufficiently artistic to warrant their own First Amendment protection, the California Supreme Court ruled on April 30. The court upheld a lower state court ruling against the T-shirt artist.

The case was a battle between a celebrity lithographer, Gary Saderup, and the holder of The Three Stooges’ “deceased’s right of publicity.” The deceased’s right of publicity is created by statute in California and speech advocates considered the lawsuit an infringement on the lithographer’s First Amendment rights.

“What the right of publicity holder possesses is not a right of censorship, but a right to prevent others from misappropriating the economic value generated by the celebrity’s fame through the merchandising of the name, voice, signature, photograph or likeness of the celebrity,” Judge Stanley Mosk said in the opinion.

The Supreme Court stepped into an odd — and likely controversial — role as art critic. It noted that other artistic reproductions of celebrities, such as Andy Warhol’s silkscreens of Marilyn Monroe, Elizabeth Taylor and Elvis Presley, would be protected, but that Saderup’s Three Stooges was not. The difference, the court said, was Warhol’s works “went beyond the commercial exploitation of celebrity images and became a form of ironic social comment on the dehumanization of celebrity itself.”

Saderup has been drawing charcoal sketches of celebrities for 25 years. He used the drawings to create lithographic and silkscreen masters, which produce lithographic prints and T-shirts.

After Saderup began selling Stooges prints and T-shirts, Comedy III Productions, which owns the Stooges’ right of publicity, brought the lawsuit, seeking damages under the California deceased person’s publicity law. That law provides that anyone who uses a deceased person’s name, voice, signature, photograph or likeness in “products, merchandise, or goods, or for purposes of advertising or selling” without prior consent shall be liable for damages. The right can be sold during the celebrity’s life or may descend as part of an inheritance.

After a trial, the court ruled in favor of Comedy III for $225,000 and granted an injunction against Saderup. Saderup appealed and the court upheld the award of damages but struck the injunction because, it said, the injunction was so broad it “could extend to matters and conduct protected by the First Amendment.”

The Supreme Court recognized the intersection of First Amendment and publicity rights. The court said it was concerned with keeping open a free marketplace and repelling efforts to curb “uninhibited, robust and wide-open debate.”

The court noted that the Saderup creations were not less protected because they entertain, rather than inform. The court also stated that visual speech is not outside the ambit of the First Amendment. Works of art are protected even if they present no discernible message, the court said.

The Supreme Court was unpersuaded that putting art on a T-shirt somehow robbed it of First Amendment protection. “First Amendment doctrine does not disfavor nontraditional media of expression.”

The court adopted a balancing test that it gleaned from publicity cases, although the court acknowledged it was “not a simple matter to develop a test that will unerringly distinguish between forms of artistic expression protected by the First Amendment and those that must give way to the right of publicity.”

The court rejected a suggestion to incorporate copyright law’s fair use doctrine as a balancing test, but adopted one element from the fair use test as its guideline. The court looked to whether the new work was “transformative” of the old. If a work “adds something new, with a further purpose or different character, altering the first with new expression, meaning or message,” then it is sufficiently transformative to garner its own protection. The key question, the court determined, was “does the work derive primarily from the fame of the celebrity depicted?”

The court held that Saderup’s skill and talent were subordinated to the overall goal of creating a portrait of the Stooges, and therefore his free speech rights lost to the right of publicity. (Comedy III Productions v. Gary Saderup, Inc.)

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“Cheers” actors settle lawsuit brought over barfly look-alikes

Two actors from the long-running television sit-com “Cheers” settled their lawsuit against airport bars that featured robots that the pair claimed resembled them. Terms of the settlement were not disclosed.

George Wendt and John Ratzenberger — Norm Peterson and Cliff Clavin on “Cheers” — sued Paramount Pictures and its licensee Host International, Inc. in 1993 over “Hank” and “Bob,” the animatronic robots placed in airport bars named after and built to look like the tavern from the show.

Wendt and Ratzenberger argued that the robotic look-alikes violated their right of publicity under California law, while the studio and its licensee claimed the copyright in the show entitled them to put the robots in the bars.

In October 2000, the U.S. Supreme Court declined to review a federal appellate court’s decision that the case should not be dismissed.

Manuel Real, a U.S. District Court judge in California, dismissed the case twice on summary judgment, ruling that Paramount’s copyright ownership entitled it to create “derivative works,” such as the bar robots, based on the “Cheers” show.

The U.S. Court of Appeals in Pasadena (9th Cir.) reinstated the lawsuit, ruling most recently in 1997 that the California right of publicity was not necessarily defeated by federal copyright law, and that claims under the right of publicity statute “are not preempted by the federal copyright statute so long as they contain elements, such as the invasion of personal rights . . . that are different in kind from copyright infringement.” (Wendt v. Paramount Pictures)

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Court to hear Tiger Woods case arguments in September

Tiger Woods’ publicity company has sued in Ohio to stop the distribution of a painting of the golfer. The company, ETW, alleged that Jireh, Inc., a distributor of the artwork of artist Rick Rush, violated Woods’ trademark and publicity rights by distributing a painting of Woods.

Rush painted “Masters of Augusta,” which depicts three images of Woods at the 1997 Masters golf tournament. Jireh planned to distribute a limited number of prints based on the painting.

In April 2000, a U.S. District Court judge in Ohio dismissed ETW’s suit on summary judgment. The court ruled that Woods had no trademark in his own name, image, likeness and persona, and the right of publicity was precluded under the First Amendment.

The suit’s dismissal was appealed by ETW. The U.S. Court of Appeals in Cincinnati (6th Cir.) has scheduled oral arguments on the matter for Sept. 14.

The Reporters Committee for Freedom of the Press is one of several organizations that filed a friend-of-the-court brief in the case, arguing against a broad reading of the right of publicity. Separate briefs arguing that the case should be dismissed were also filed by the New York Times Company and a group of intellectual property law professors, while a number of professional sports organizations and celebrities’ estates supported Woods.(ETW Corp. v. Jireh Publishing) — DB