Mr. Enjoy is Mr. Plaintiff (Was he the Boss in E*Trade’s Commercials as Well?)

Gianluca Vacchi is a social media influencer and DJ, who has more than 12 million followers on Instagram. He appeared last year in a commercial (do not watch while drinking) for the Bank of Georgia, Europe, which was so successful that “that many United States residents registered as clients of the bank” (because nothing gives you more confidence than a Santa Claus in an orange satin robe).

While Italian and living in Milan, Vacchi travels around the world to dance on roof tops, DJing, and generally having a good time. He chose Mr. Enjoy as his nickname. After all, as another Italian influencer, who also meddled a bit with music, urged us: “Godiam, la tazza e il cantico, La notte abbella e il riso. »

But Vacchi is not enjoying two of online investing company E*Trade’s commercials, [here is the other one] which were produced in mid-2017, where a middle-aged man, presented as “your boss,” is featured dancing with abandon (with who?)… with scantily dressed women.

Vacchi has just filed suit in the Southern District of New York against E*Trade, claiming “copyright infringement, as well as false endorsement and misappropriation of protectable character, protectable scenes, and image and persona of “the coolest man on Instagram.” Will he be successful? 

Grandpa was a social media influencer 

New York Right of Publicity

New York Civil Rights Law §§ 50 and 51 is the state of New York’s only right to privacy, which is not otherwise recognized by its common law. The statute makes it a misdemeanor to use the name, portrait or picture of a living person for advertising or trade purposes without prior written consent.

The E*Trade commercials are certainly “for advertising or trade purposes.” What is less certain, however, is whether the “name, portrait, or picture” of Vacchi has been used by Defendant.

Protecting the Persona?

“In fact, even a simple Google search for “dancing millionaire” inevitably shows Plaintiff in the top results” (Complaint).

Plaintiff claims a use of his image and his persona.

New York courts have recognized that using a "lookalike" of a well-known personality for commercial purposes is a violation of New York Civil Rights Law §§ 50 and 51. In this case, a lookalike of Jacqueline Kennedy Onassis has been featured in a Dior ad. The court noted that “Plaintiff's name appears nowhere in the advertisement. Nevertheless, the picture of a well-known personality, used in an ad and instantly recognizable, will still serve as a badge of approval for that commercial product.” In our case, Vacchi’s name is not used in the commercial either.

Lindsay Lohan was not able to convince the courts last year either that Take-Two Interactive Software, the developer and distributor of the Grand Theft Auto V video game, had used her likeness and persona to create the character Lacey Jonas (see here and here). But the case was about a video game, not an advertisement, and the court in Onassis v. Dior distinguished artistic from commercial endeavors.

In our case, Plaintiff is a middle aged man, with trimmed grey beard and hair, a toned and tattooed body, and a propensity to take pictures of himself while bare chested.  This is his image, his likeness, his resemblance.

Plaintiff claims that Defendant used a “clone of Vacchi, dancing with women on a boat while DJ’ing: conduct that based upon numerous YouTube videos, photographs, and music videos created and published by Vacchi, has become synonymous with the image and persona,” and describes “the E*Trade Character [as] a heavily-tattooed male with bare torso dancing with a beautiful female companion.”

Vacchi self-described persona is “the coolest man on Instagram,” and he very well may be if cool is defined by sunsets seen from high rise balconies, partying, the beaches, dancing around rooftop swimming pools, and leopard cushions. No coupon clipping for him.

So Plaintiff’s persona could be: man + middle-aged + toned and tattooed body + glasses + dancing + trim gray beard + exotic locales + women in teeny weeny bathing suits. This could also describe an aged James Bond after one too many stirred Martinis led him to the tattoo parlor, or Queequeg if Moby-Dick had shed some blubber and got a bikini wax.

The E*Trade character is a middle-aged  man, with glasses, bare chested, with tattoos, dancing with young women in bathing suits, on a yacht. He wears suspenders, as does Plaintiff sometimes.

It could be argued, as in the Onassis v. Dior case, that “plaintiff's identity was impermissibly misappropriated for the purposes of trade and advertising, and that it makes no difference if the picture used to establish that identity was genuine or counterfeit.” Plaintiff would still need to prove that Defendant used his image. Or maybe it meant to portray the Most Interesting Man in the World.

Copyright Infringement

Plaintiff also claims that Defendant’s videos are infringing derivative works  and that “E*Trade’s commercial is simply a rip-off of a number of videos created and published by Vacchi over the years.”

Plaintiff regularly posts short videos on his Instagram account, featuring him and other persons in exotic locales. He is seen doing less than mundane activities, such as tattooing a female doll (cringe alert on this one), or pedaling on a stationary bike in his private jet. 

Plaintiff did not obtain a registration for these videos before filing suit, because “Plaintiff is a foreign citizen and did not register all of his videos and photos in the United States.“

This is too bad, as the U.S. Supreme Court held last month, in Fourth Estate Public Benefit Corp. v. Wallstreet.com LLC, that a plaintiff claiming copyright infringement must first register the work with the U.S. copyright Office before filing suit. 

Plaintiff’s Instagram videos are probably not original enough to be protected by copyright anyway. The Copyright Office appears to be less and less inclined these days [see here and here]  to register such works, because they are not original enough to be worthy of copyright protection.

The videos feature cliché images of sunsets on the beach, descending the steps of a private jet, big designer bags, having a manservant in livery, leopard cushions, party, party, party, and young women in bikinis. They look sometimes like a Michael Kors ad. Whether they are to be taken with a grain of salt is irrelevant, as they are unprotectable scènes à faire of a “Let’s live in a Jennifer Lopez video” lifestyle (I love that song).

The case will probably settle (alas, may I add, rather selfishly).

Kim Kardashian Sues U.K. Online Retailer Claiming Violation of Right of Publicity

Kim Kardashian is suing U.K. fast fashion online retailer Missguided and its U.S. subsidiary for trademark infringement and violation of her right of publicity. The case is Kimsaprincess, Inc.; and Kim Kardashian West v. Missguided USA (Finance) Inc., and Missguided Limited, 2:19-cv-01258 (C.D.Cal).

The complaint alleges that the inexpensive and fast fashion retailer is using Kim Kardashian’s likeness on its site and on its Instagram account to sell clothes. The pages on the site referring to the petite celebrity are no longer available, but the complaint shows a page entirely dedicated to the Kardashians, including a page named “crushin’on kim k,” featuring several photographs of Kim Kardashian, and another page named “5 party looks inspired by the kardashians” featuring Plaintiffs and several of her sisters.

The complaint states that Kim Kardashian commands a fee of several hundred thousand dollars for a social media post, while “longer-term endorsement arrangements regularly garner fees in the millions of dollars.” 120 million people follow her on Instagram, and a little less than 60 million do so on Twitter. The celebrity owns also several trademarks protecting cosmetic and fragrance products.

Kim Kardashian posted this month on her Instagram account a picture of herself wearing a golden dress, writing in the caption “P.S. fast fashion brands, can you please wait until I wear this in real life before you knock it off?” Missguided answered to this post on its own Instagram account with a picture of a model wearing a similar dress with the caption “The devil works hard but Missguided works harder. @kimkardashian you’ve got only a few days before this drops online.”

This particular post raised the attention of Diet Prada, a site dedicated to fashion copycats. It posted that this exchange may well be the fruit of a collaboration between the celebrity and the retailer without revealing the endorsement, adding that “The lack of transparency around celebrity endorsements is a big problem facing social media. We think we smell a rat.”

This is of course a reference to the Federal Trade Commission rules on social media endorsements, under which an endorsement must be disclosed, so as not to be deceptive advertising.

A few days later, Diet Prada again shared in a post that Kim Kardashian may very well have a secret collaboration with yet another fast fashion retailer, Fashion Nova, as it put a sale a copy of a Thierry Mugler vintage dress shortly after Kim Kardashian wore it to an awards soirée.

The complaint may be an answer to these allegations. It explains that Kim Kardashian selectively chooses which products or services she endorses, and as such controls the use of her likeness and trademarks.

The complaint claims that Missguided has breached California’s right of publicity law, Cal. Civ. Code § 3344 and California’s common law right of publicity when it “willfully and without authorization used Kardashian’s name, image, likeness, and persona for commercial purposes, to advertise the Missguided brand and website, and to promote the sale of clothing on Missguided’s site.”

There is no right of publicity federal law, and so each state, except Alaska, Idaho, Iowa, Kansas, North Dakota, Wyoming, and Delaware have their own law. Some states have a statutory right of publicity, sometimes have a common law right of publicity, some states, such as California, have both.

The California statutory law protects use of a person’s name, voice, signature, photograph and likeness for purposes of advertising or selling, or soliciting purchases of products, merchandise, goods or services, without this person’s prior consent. The complaint claims that Missguided used Plaintiff’s likeness to sell clothes, on its site, and on Instagram, as it often features on its social media posts links to buy clothes on its site.

Plaintiff is asking compensatory and treble damages in an amount to be proven, but in no event less than $10 million. That would buy a lot of dresses, whether vintage or knock-offs. 

Image is courtesy of Flickr user arcticpenguin under a  CC BY-NC 2.0 license. 

Tara Reid Files a Right of Publicity Suit Over Use of Likeness on Beer Cans and Slot Machines

Actress Tara Reid has filed a right of publicity suit in the Central District Court of California. The case is Reid v. Asylum Entertainment, LLC (2:18-cv-10171).

The actress is seeking preliminary and permanent injunctive relief and damages as she alleges that Defendants Asylym and SyFy Media have misappropriated her likeness and image for commercial purpose without her consent by licensing the rights to use the actress’s likeness to manufacturers of slot machines, gambling products, and beer makers.

Tara Reid starred in the Sharknado series which was broadcast in the U.S. on the SyFy channel. Sharknado 1 led to Sharknado 2, 3, 4, 5, and, recently, 6, which you can all watch to see if reindeer sharks really know how to fly. The series has a cult following. I guess you can say it jumped the shark from the beginning. 

Defendant Aristocrat manufactures Sharknado slot machines and video gambling products (see one of such machines in action here). The likeness of Tara Reid is used in the play, as you may see in the first seconds (mercifully) of this video. Tara Reid also alleges that Defendants Asylum and Syfy entered into marketing and/or licensing agreements with a British brewer to produce Sharknado beer. The actress appears in her Sharknado character on some cans. 

According to the complaint, Tara Reid had not authorized these uses of her likeness, as her contracts expressly requested her written consent should her likeness be used on products associated with alcohol, tobacco, gambling, hygiene and sexuality.

Section 43(a) claim, false endorsement

The actress claims that Defendants have thus breached her right under Section 43(a) of the Lanham Act, the U.S. Trademark Act, which forbids false endorsement and misappropriation of likeness. She argues that use of her likeness on the slot machines and beer cans is deceptive and likely to cause consumer confusion as to the sponsorship or affiliation between those products and herself, who did not and would not endorse such products. 

California common law claim

The actress also alleges that this use of her likeness breaches California common law on wrongful appropriation of likeness and she alleges “that the wrongful appropriation of her likeness and identity was intentional and with the objective of exploiting her… As such, the actions of the Defendants were malicious and oppressive and justify an award of punitive and exemplary damages in an amount sufficiently large to set a public example of deterrence, and in an amount no less than $100,000,000.00.”

California statutory claim

Tara Reid also claims that Defendant’s actions breached California common law of unfair competition, and California statutory right of publicity, section 3344 of California civil Code, and claims she is entitled, under that law, to recover all profits realized by Defendants” in an amount that will be shown at time of trial together with attorney fees, and punitive damages, in an amount sufficiently large to set a public example of deterrence and in an amount no less than $100,000,000.00.”

The contracts

Plaintiff also claim Defendants breached their contractual obligations. Tara Reid had entered into an agreement with Defendants in 2016 to act in the 5^th Sharknado movie. Paragraph 11 of the agreement gave producers the right to use Tara Reid’s likeness in merchandise, albeit “in-character” only, but also provided that “… in no event shall Performer’s likeness be used for any merchandising in association with alcohol, tobacco, gambling, hygiene, or sexual products without Performer’s prior written approval.” Tara Reid alleges that she never approved the use of her likeness on the Sharknado slot machines, nor did Defendants ever request such approval.

Tara Reid entered into a similar agreement in January 2018 to act in the 6^th Sharknado movie, which she argues is voidable as one of the parties allegedly did not have the capacity to enter into the agreement. This issue aside, the January 2018 agreement had a Paragraph 11 similar to Paragraph 11 in the 2016 agreement.

 A morality clause

Attorneys negotiating right of publicity contracts and performer’s contracts should keep such “morality” clauses in mind.

The California Court of appeals for the 4^th District explained in Miller v. Collectors Universe that a plaintiff in a statutory right of publicity case had suffered a type of harm which section 3344(a)'s minimum statutory damages were intended to remedy. This harm  was described by the court as “the alleged injury to his mental feelings and peace of mind.”

The Court further explained that “misappropriation [of likeness] has two aspects: (1) the right of publicity protecting the commercial value of celebrities' names and likenesses, and (2) the appropriation of the name and likeness that brings injury to the feelings, that concerns one's own peace of mind, and that is mental and subjective."

So California law recognizes a sort of “moral right” in one’s likeness…

$100,000,000.00 in damages?

In our case, Tara Reid could very well be able to prove that the use of her likeness on cans of bear and gambling machines injured her feelings. Is it $100,000,000.00 worth of feelings? We may never know, as the parties are likely to settle out of court.

Law Professors Amicus Brief Filed in Support of Take-Two Interactive

Professor Eugene Volokh and his Scott & Cyan Banister First Amendment Clinic at UCLA School of Law recently filed an amicus brief on behalf of several law professors in the Lindsay Lohan v. Take-Two Interactive case currently pending at the New York Court of Appeals.

Lindsay Lohan sued in 2014 Take-Two Interactive, the maker of the “Grand Theft Auto V” video game, claiming that it had used her image when creating the character Lacey Jonas, see here and here, and thus violated her right to privacy under New York Civil Rights Law § 51 by misappropriating her likeness.

Reality show star Karen Gravano filed a similar suit, claiming that the character Andrea Bottino was modeled after her.

Both of these actions failed, as Take-Two did not use Plaintiffs’ names, portraits or pictures. The game did not refer to Plaintiffs by name, did not use their actual names in the video game, did not use them as actors, and did not use their photographs either, see here. Plaintiffs have appealed.

Characters are protected by the First Amendment

The brief concentrates on the free speech issue, arguing that video games are expressive works and thus protected by the First Amendment.

The authors of the brief argue that “[c]elebrities like Gravano and Lohan are significant parts of that “popular culture,” and Take-Two must be free to use even their literal names

and likenesses (as was done in Forrest Gump, for example) to capture the essence of that culture.”

The brief cites  the Comedy III Productions, Inc. v Gary Saderup, Inc., where the California Court of Appeals found that the right of publicity “has the potential of censoring significant expression by suppressing alternative versions of celebrity images that are iconoclastic, irreverent, or otherwise attempt to redefine the celebrity’s meaning.”

New York law only protects against unauthorized use of likeness in trade

Authors of the brief also argued that the New York right of privacy is generally limited to commercial advertising, and does not extend to creative works.  Indeed, New York state does not recognize a common law right of privacy, only a statutory right of publicity, and New York right of publicity statute only forbids the use without consent of a person’s name, portrait, picture or voice “for advertising purposes or for the purposes of trade.”

The New York courts have consistently interpreted the law narrowly and the Appellate Division held in September 2016 that the Grand Theft Auto V video game, “does not fall under the statutory definitions of ‘advertising’ or ‘trade.’”

The authors of the brief also argue that only explicit use of a person’s name or likeness is protected by New York right of publicity statute. A mere suggestion is not enough.

A recent attempt to expand the scope of New York right of publicity law

The New York Legislature is trying to expand the scope of New York right of privacy by enacting Assembly Bill A08155. The bill would make the likeness of an individual a personal property, freely transferable.

It defines the “likeness” of an individual as “an image, digital replica, photograph, painting, sketching, model, diagram, or other recognizable representation of an individual's face or body, and includes a characteristic.” A “characteristic” is defined as “a distinctive appearance, gesture or mannerism recognized as an identifying attribute of an individual.”

Is a video game protected by the First Amendment?

The bill has not been enacted. Plaintiffs’ claims may prosper under this law, or may not, as it provides a First Amendment defense. The main issue would then no longer be whether the creators of the game indeed used Plaintiffs’ likenesses, but whether a video game is worthy of the protection of the First Amendment.

Plaintiff Gravano seems to have anticipated this hypothesis, as she argues that “a video game that is primarily a commercial product [is] not afforded absolute protection as a creative work.”

However, authors of the brief cite the Supreme Court City of Lakewood v Plain Dealer Publ’g Co where the court explained that “the degree of First Amendment protection” of speech “is not diminished merely because the . . . speech is sold rather than given away.”

Stay tuned…

Image courtesy of Flickr user Fred Miller under a CC BY-SA 2.0 license.

Muhammad Ali Enterprises Gives Lip to Fox Over Super Bowl Video

Muhammad Ali Enterprises, which owns the trademark rights, copyrights, right of publicity, and all other intellectual property rights of Muhammad Ali, filed on October 10 a false endorsement and right of publicity suit against Fox in the United States District Court for the Northern District of Illinois. The case is Muhammad Ali Enterprises LLC v. Fox Broadcasting Company, 1:17-cv-07273.

The complaint alleges that Fox used Muhammad Ali’s identity without permission for commercial purposes in a three-minute promotional video that the television network broadcasted just before the start of the 2017 Super Bowl, which was also broadcasted by Fox.

The complaint further explains that, during his lifetime, Muhammad Ali endorsed “carefully selected products and services” in order to “enhanc[e] and maint[ain] the value of his legacy and endorsements” and thus was able to financially profit from his identity and persona, while maintaining his integrity.

Muhammad Ali’s most famous nicknames were The Greatest, The Louisville Lip and The Champ. The complaint relates why Muhammad Ali was indeed “The Greatest.” His accomplishments include an Olympic gold medal, several heavyweight titles, and even two Grammy Award nominations. He was awarded the Presidential Medal of Freedom in 2005, and was a human rights champion, speaking fiercely about racial prejudice, a theme unfortunately still in the headlines. The BBC named him the Sports Personality of the Century.

The Fox video had “greatness” as its theme. The narrator urged viewers to watch it to see “what it means to be the greatest.” It showed the back of a boxer entering a tunnel, going to the ring, wearing a robe with “The Greatest” and “The Lip,” two of Muhammad Ali’s nicknames, written on the back. The boxer was not Muhammad Ali, but the video intersected real footage of the boxing legend with images of a boxer wearing a robe with Muhammad Ali’s nicknames.

Plaintiff claims that such unauthorized use violates Section 43(a) of the Lanham Act as the video is likely to cause confusion to consumers as to the affiliation of Fox with Muhammad Ali, and also claims that this unauthorized use of Muhammad Ali’s likeness is a violation of his right of publicity as protected by the Illinois Right of Publicity Act (IRPA) (765 Ill. Comp. Stat. 1075/1 to 1075/60°). The Act replaced the Illinois common-law tort of appropriation of likeness when it entered into force on January 1, 1999. Muhammed Ali died in 2016, but the IRPA extends its protection to individuals for 50 years after the date of their death.

IRPA defines “commercial purposes” as “public use or holding out of an individual's identity (i) on or in connection with the offering for sale or sale of a product, merchandise, goods, or services; (ii) for purposes of advertising or promoting products, merchandise, goods, or services; or (iii) for the purpose of fundraising”. It could be argued that the video was used to promote the broadcast of the 2017 Super Bowl. It showed images of famous football players, also entering a tunnel, to go to the field. It ended by displaying the Super Bowl LI logo – it was the 51^st Super Bowl – and ended with a screen showing the name of Muhammad Ali with his year of birth and of death.

The identity of a person under IRPA can be “any attribute of an individual that serves to identify that individual to an ordinary, reasonable viewer or listener, including but not limited to (i) name, (ii) signature, (iii) photograph, (iv) image, (v) likeness, or (vi) voice.” The video made use of Muhammad Ali’s identity, by using the nicknames on the back of the robe, by making direct references to Mohammad Ali, by using of “The Greatest” throughout the video.

Fox is likely to claim that IRPA does not apply if the use of identity has been made to “portray, describe, or impersonate that individual [on]…television, or other audio, visual, or audio-visual work, provided [it]…does not constitute in and of itself a commercial advertisement for a product, merchandise, goods, or services.”

Therefore, whether the video is or is not an advertisement for the Super Bowl is likely to be at the center of the debate between the parties. Plaintiff claims that the video is “far more than a tribute to Muhammad Ali”, but that instead it “uses Ali to define greatness…and thus to define the Super Bowl as “greatness” too.”

Fox may also assert a First Amendment defense, claiming that the video is an artistic and creative expression protected by speech, meant to be an homage to a sports legend and providing news and information to the public.

This case will probably settle out of court and is not likely to go the distance to trial.

Olivia de Havilland Files a Right of Publicity Suit against Feud Producers

Legendary actress Olivia de Havilland celebrates her 101^st birthday today. Happy Birthday Miss de Havilland!

If you do not remember who Olivia de Havilland is, you may choose to watch Feud , a television series, which first season details the rivalry between Bette Davis and Joan Crawford, which currently streams in the U.S. and will be shown in the Fall on BBC 2.

But this may not be a good idea, as Miss de Havilland has taken offense of her portrayal in Feud, and filed yesterday a California right of publicity and invasion of privacy (by publicly placing a person in false light in the public eye) lawsuit in the Los Angeles County Superior Court against the producers of Feud (Hat Tip to Hollywood Reporter).

Miss de Havilland, played by Catherine Zeta-Jones, is featured in the opening sequence, as she is being interviewed during the 1978 Academy Awards. During the interview, Catherine Zeta-Jones, as Olivia de Havilland, is portrayed as saying: "There was never a rivalry like theirs [Davis and Crawford]. For nearly a half a century, they hated each other, and we loved them for it." The complaint alleges that Miss de Havilland portrayal in Feud “creates the public impression that she was a hypocrite, selling gossip in order to promote herself at the Academy Awards.”

The Complaint argues that Miss de Havilland never gave such interviews “and never made these statements about Miss Davis and Miss Crawford or their relationship. The interview is fake and the statements attributed to OLIVIA DE HAVILLAND are false. This interview itself and the statements attributed to OLIVIA DE HAVILLAND are contrary to her public and private image and reputation and have caused her economic, reputational, and emotional damages, including distress, anxiety, and humiliation.”

Miss Zeta-Jones wears a dress similar to the one won by Miss de Havilland that night, similar jewels, and hairdo. According to the complaint, the Welsh actress has even been fitted a chin prosthetic to make her look like Miss de Havilland. The complaint argues that “by meticulously including specific details from real life, [Defendants] intended for the audience to believe that the events depicted and the statements made by role players in "Feud" were accurate, and were actually quotes from real people, including OLIVIA DE HAVILLAND.”

The complaint anticipates a First Amendment defense, arguing that “[t]here is no public interest to be protected by putting false statements into the mouth of a living person, using their name and identity for a false and unauthorized purpose, damaging their reputation. The First Amendment does not protect the false, damaging, unauthorized use of the name and identity of a real, living celebrity merely because the perpetrators cloak the work in the title of pure fiction, much less a pseudo-documentary film.”

The California statutory right of publicity claim

California provides a statutory right of publicity, Cal. Civ. Code § 3344(a), under which “[a]ny person who knowingly uses 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” must first obtain the person’s consent . The complaint alleges that Miss de Havilland did allow authorize Defendants to use her name, identity or likeness in the Feud series and its promotional materials, and further alleged that Defendants knew that she has not given her consent for such use.

The California common law right of publicity claim

California also recognizes a common law invasion of privacy by appropriation of name or likeness, “that brings injury to the feelings, that concerns one's own peace of mind, and that is mental and subjective,” Dora v. Frontline Video at 542. Therefore, it is not necessary at common law for the use of likeness or name to have been commercial, and plaintiff can seek mental stress damages.  Indeed, the complaint alleges that the interview featured in Feud  “and the statements attributed to OLIVIA DE HAVILLAND are contrary to her public and private image and reputation and have caused her economic, reputational, and emotional damages, including distress, anxiety, and humiliation.”

How will this legal feud end? Stay tuned…

Narrow Scope of New York Right of Publicity Statute Favors First Amendment, Not Lindsay Lohan

Readers of the IP Kat blog may remember that actress Lindsay Lohan sued Take-Two Interactive, the maker of the “Grand Theft Auto V” video game, claiming that it used her image when creating one of the characters of the game, a blond starlet. But, on September 1, a New York appellate Court ruled against Lohan, and also, in the same decision, against Karen Gravano of the VH1 reality TV show Mob Wives, who had similarly claimed that Take-Two had used her likeness in the video game.

The narrow scope of New York right of publicity law

New York has a limited right to privacy. Its only privacy law, New York Civil Rights Law §§ 50 and 51, does not recognize a general right to privacy, but only protects the right of publicity of a “person, firm or corporation” in order to prevent “uses for advertising purposes, or for the purposes of trade” of the “the name, portrait or picture of any living person without having first obtained the written consent of such person.”

Therefore, in order to be a misdemeanor under New York law, an unauthorized use of the name, portrait or picture of an individual must have been for trade or advertising. The scope of the law is quite narrow.

No use of the name, portrait or picture

The appellate Court dismissed Lohan’s claim, because the video game “never referred to Lohan by name or used her actual name in the video game, never used Lohan herself as an actor for the video game, and never used a photograph of Lohan.” Instead, the game features an avatar, not an actual image of Lohan. New York law does not recognize protection of the persona, and merely “evoking likeness,” such as using her hair length, white shirt, flashing the peace sign, or using her “screen persona,” as Lohan claimed Take-Two Interactive had done when creating the character, is not enough to trigger application of New York right of publicity statute.

No use in advertising or trade

The appellate court noted further that, even if the video game would indeed have used Lohan’s likeness within the meaning of New York right of publicity statute, it still would not have violated the law, because a video game is not an advertising or a trade within the meaning of New York Civil Rights Law § 50. Instead, it is a video game communicating ideas, and, as such, is protected by the First Amendment to the U.S. Constitution: “[t]his video game’s unique story, characters, dialogue, and environment, combined with the player’s ability to choose how to proceed in the game, render it a work of fiction and satire.”

A good decision for creators

If the New York law would be constructed by the courts to include use which merely “evoke” the persona of the plaintiff, creators of video games, such in this case, but also biographers, comic books artists, painters, caricaturists and novelists, who merely “evoked” the persona of an individual would have to prove that the use was protected by First Amendment, which may be challenging to do, and thus costly. The Supreme Court recently denied petition in the Electronic Arts v. Davis case, and so it will not answer the question asked by petitioner, “[w]hether the First Amendment protects a speaker against a state-law right-of-publicity claim that challenges the realistic portrayal of a person in an expressive work.” The Ninth Circuit did not find in this case that the use of likeness of former NFL players in a video game was protected by the First Amendment. This case was a California right of publicity case. Each state has its own statute, and there is no right of publicity federal statute, leaving for a diverse jurisprudence.

Does Kendall Jenner Have a Laser Sharp Right of Publicity Claim?

On February 10, 2016, Kendall Jenner and Kendall Jenner, Inc., filed a right of publicity and trademark infringement suit in the Central District of California against Cutera, a provider of laser dermatological treatments. The case is Kendall Jenner Inc. v. Cutera, CD California, 16-00936.

Who is Kendall Jenner? Well, she is “one of the one of the world’s most popular supermodels” [sic] as the complaint explains (or hiccups?). She has “graced the covers of the world’s most prestigious fashion magazines” and “walked the runways for the elite of the fashion world.” She also is a “successful clothing designer” and a “well-known television personality” as the Keeping Up with the Kardashians reality show airs “in over 160 countries worldwide” (you read that right).

If all these achievements would not be enough, Ms. Jenner is also “one of the largest social media presences of any young woman of her generation,” with over 48 million followers on Instagram, over 15 million followers on Twitter, and some 12 million “likes” on Facebook. Wouldn’t it be nice if Ms. Jenner tweeted about this blog post?

Defendant Cutera is, according to the complaint, a “designer of medical aesthetic applications.” One of its products is Laser Genesis, a laser treatment which dermatologists may use to rid their patients of spider veins, dark spots, wrinkles, razor bumps and other skin defects.

Just before the beginning of Fashion Week in New York, Cutera started advertising early February the Laser Genesis treatment in New York, particularly “outside New York skin care centers.” The ad features a picture of Plaintiff on the right side and reads at the top: Acne “Completely Ruined” Kendall Jenner’s Self-Esteem. The ad further claims that Laser Genesis is responsible for Plaintiff’s “nearly flawless skin.” The ad has also allegedly been distributed in California, around the U.S. and even around the world.

Alas, Defendant had allegedly not sought permission to use Plaintiff’s name and likeness. If this is proven, it would clearly be an infringement of Ms. Jenner right of publicity.

As this blog concentrates on copyright, I will not address the trademark infringement claim. Let’s just note that Plaintiff owns the KENDALL JENNER registered trademark in class 35 for “advertising services, namely, promoting the brands, goods and services of others” and “endorsement services, namely, promoting the goods and services of others.” The complaint alleges that Cutera’s ad is likely to create consumers ‘confusion, and capitalizes on Plaintiff’s good will. The complaint also alleges that the ad confuses the public to mistakenly beleive that the famous model sponsors, endorses and is somewhat associated with Cutera, which would be a false association or endorsement under 15 U.S.C. § 1125(a).

Plaintiffs claim that Defendant has violated Ms. Jenner’s right to publicity, as protected by California Civil Code § 3344. The complaint does not elaborate on the right to publicity claim, but indicates that “Plaintiffs have suffered and will continue to suffer damages in an amount to be proven at trial, but not less than a number well into eight figures.”

Indeed, it is obvious that it is Ms. Jenner who is pictured on the ad, and therefore she is, under the California statute, “readily identifiable from a photograph when one who views the photograph with the naked eye can reasonably determine that the person depicted in the photograph is the same person who is complaining of its unauthorized use” (the ad is pictured p. 11 of the complaint).

There is no doubt that the ad is using Plaintiff’s name and likeness under California right to publicity statute “for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services.” Consent would be a defense, but it does not appear to be available to Defendant in this case.

The complaint does not mention it, but Cutera tweeted in November 2015: “Have you heard? Kendall Jenner Admits to Getting #cutera #lasergenesis!” with a link to an blog post on the supermarket checkout gossip magazine Life & Style site, which in turn quoted a statement allegedly made by Ms. Jenner on her website. The link to this page on Ms. Jenner’s site now returns a 404 error message and the page seems to have been recently taken down, if one refers to the Internet Archive site. However, even if it would be true that Ms. Jenner had mentioned Laser Genesis on her website, this would not be an endorsement, only the expression of her opinion. Indeed, if she had mentioned it on her site and not disclose that she had been compensated for the endorsement, it would have been a breach of the Federal Trade Commission Endorsement Guides. However, the part of the ad which quotes her as saying that acne “completely ruined” her life may be protected by the First Amendment, even if Ms. Jenner did not consent to its use , but that would be quite a stretch.

The complaint claims 10 million dollars in damages and further claims that, as Defendant has acted “willfully, maliciously, and oppressively,” Plaintiffs are thus entitled to punitive and exemplary damages as well. The case is likely to settle before going to trial.

Image is courtesy of Flickr User Brian Bald Under a CC BY-NC 2.0 License

Fox News Anchor Claims Violation of Right of Publicity in Toy Hamster “Harris Faulkner”

Harris Faulkner, a Fox News anchor, is suing toy company Hasbro, for false endorsement, unfair competition, and violation of her right to publicity, claiming that Hasbro used her likeness without authorization to create a “Harris Faulkner” toy hamster, which is part since 2014 of Hasbro’s “Littlest Pet Shop” line. The case is Harris Faulkner v. Hasbro, 2:15-cv-06518.

The complaint details two decades of Plaintiff’s experience and notes that Plaintiff does not endorse any products, as this “would be a breach of journalistic ethics, would directly harm her professional credibility, and would be in violation of her contractual obligations to her employer.”

The fact that this toy is manufactured and sold by Hasbro “is extremely concerning and distressing to [Plaintiff].” The toy is labeled a choking hazard, and this made Plaintiff “extremely distressed [as] her name has been wrongly associated with a plastic toy that is a known choking hazard that risks harming small children.” Also, “Hasbro’s portrayal of Faulkner as a rodent is demeaning and insulting.”Since this is back-to-school season, perhaps this could be a useful line for parents asked to shelter their kid’s class gerbil for the weekend: rodents are bad, not cute, little Timmy, say bye bye to gerby!

New Jersey Recognizes a Common Law Right to Publicity

New Jersey does not have a right of publicity statute, but has a common law right of publicity. The complaint does not cite any case law, nor does it go into the details of what are the elements of a common law right of publicity claim in New Jersey, so I did some research. New Jersey recognizes a right to publicity since 1907, date of the Edison v. Edison Polyform Mfg. Co. case, where Thomas Edison successfully claimed that defendant could not use “Edison Polyform” as the name of a painkiller he manufactured, even though he had bought the painkiller formula created by Thomas Edison himself. However, Defendant had not followed exactly the original formula, and also had used Thomas Edison image in its advertising, thus creating  the false impression that the famous inventor had endorsed the product.

Under this case law, Plaintiff in our case could claim that Hasbro used her name without authorization. However, she would need to prove that plaintiff meant to use HER name, not a generic HARRIS FAULKNER name. The complaint claims that Plaintiff is “uniquely named” but Faulkner is, after all, also the name of a famous writer, and Harris is still a pretty common name, albeit not for a woman. I must confess that I did not know Plaintiff’s name until today, and believe that she is mostly known by regular Fox News viewers and by television and media buffs.

Defendant would have to explain to the court why it chose this particular name for its toy. If, say, the Hasbro main designer is named Joe Harris, and he wrote his MA thesis on “Hamsters in the Works of William Faulkner,” this may get the attention of the judge.

But imitating a person is also considered to be a right of publicity violation in New Jersey, as recognized by the District Court of New Jersey in 1981 in the Estate of Presley v. Russen case, and so, in our case, Plaintiff could argue that the toy imitates her, if she can convince the court that the toy bears at least some resemblance to her.

Is there a physical resemblance between the anchor and the toy?

The complaint states that the toy “bear[s] a physical resemblance to [Plaintiff]’s traditional professional appearance, in particular the tone of its complexion, the shape of its eyes, and the design of its eye makeup.”

I would be hard-pressed to find much physical resemblance, if any, between Plaintiff and her eponymous toy, which arguably resembles Kimba, Bambi, and other big round- eyed kawaii toys (see here or here), and also resembles human-like manga characters. Granted, I studied law, not zoology, but this toy does not even look like a rodent. The plastic creature on the right looks like Simba with a comb-over, and the one on the left looks like a cat with a bad case of pink-eye. So, I would say there is no physical likeness between the anchor and the toy. What do you think?

Calculating Damages in Right of Publicity Cases

Plaintiff is asking the court to award her $5,000,000 in damages, which include actual damages and profit earned from the use of her name, likeness, identity or persona. I recently found this not- so-recent (2008) but interesting article on how to calculate damages in right of publicity cases. Its author, Lawrence E. Heller, notes that “[d]etermining which methodology a plaintiff can effectively use to meet the burden of proving that the defendant’s profits are attributable to the unauthorized use of the plaintiff’s image can be problematic” and offers some clues, among them a “trailer test”, where consumers are asked to spend poker chips on products bearing Plaintiff’s images and on others which do not. This is a rather interesting method, but could be quite costly. Other methods are also described.

Hasbro will probably move to dismiss. I will keep you posted.

New York State Still Does Not Recognize Post Mortem Right to Publicity

A New York Senate bill, S560-2015, introduced in May by State Senator John A. DeFrancisco, would provide a post mortem right of publicity to deceased New Yorkers’ estates for seventy years after their death. The bill explicitly refers to these rights as personal property, which can be freely transferrable or descendable, and thus are more akin to intellectual property rights than privacy rights.

The Senate bill is the same as New York House bill A7904-2015
. It would be retroactive and “deemed to have existed at the time of death of any individual who died seventy years prior to the effective date of this [law.]”

S550-2015 would introduce an article 3-A to New York civil rights law (NYCRL): the new section 32 of NYCRL would forbid the use in New York, for commercial purposes, of the persona of any deceased individual without first obtaining the written consent of the person or persons owning more than fifty percent of the deceased person’s publicity rights. Even though the justification of the bill notes that the “bill provides for a “right of publicity” for deceased personalities,” (my emphasis) the bill only mentions “deceased individuals,” defined as “any natural person who died a domiciliary of the State of New York on or after, or within seventy years prior to the effective date of [the law.]” and so it seems that everybody, famous or unknown, would benefit from this right.

Bill Drafted to Respect First Amendment

However, no consent would be required if the use is not an “advertisement, endorsement or solicitation for the sale of purchase of a product, article or merchandise, good or service, other than for the work itself and the work does not contain an image or likeness that is primarily commercial, not transformative and is not otherwise protected by the First Amendment of the United States Constitution or New York State Constitution” (Section 34).

The bill lists uses protected by the First Amendment. They are: “a play, book, graphic novel or other literary or theatrical work; a work of political or newsworthy value concerning public interest, including a television broadcast or an article, editorial or commentary in a magazine, newspaper, newsletter or other periodical; an original musical composition, musical sound recording or other similar musical work; or an original work of fine art or a work of fine art reproduction.”

A “work of fine art” is broadly defined by Section 30-5 as “a visual rendition including, but not limited to, a painting, drawing, sculpture, mosaic, videotape or photograph; a work of calligraphy; a work of graphic art including, but not limited to, an etching, lithograph, serigraph, or offset print; a craft work in materials including, but not limited to, clay, textile, fiber, wood, metal, plastic or glass; or a work of mixed media including, but not limited to, a collage, assemblage, or work consisting of any combination of [work of fine arts as defined in Section 305]”.

Therefore, artists would be authorized to use the likeness of a deceased personality to create new works, and the list of what would be considered to be fine art is an open one. The bill uses the soon to be archaic “videotape” word, which could, however, be interpreted as encompassing digital videos and probably even holograms. Reviving dead celebrities by holograms is becoming a lucrative commercial venture, but artists could also create holograms of deceased celebrities.

A Broad (Overbroad?) Definition of Persona

The bill defines “persona” as “the name, portrait, picture, voice, signature, photograph, image, likeness or distinctive appearance, gesture, mannerisms or other indicia of a deceased individual” (Section 30-4). This definition of persona is broader than the current definition by NYCR §50 of what is protected by New York right to publicity, that is, an individual’s name, portrait or picture. Readers of the IPKat blog may remember that Lindsay Lohan tried last year to convince a New York court that a video game had infringed her rights to publicity when depicting a blonde woman making the “V” sign, as Ms. Lohan is sweet on doing. But this pose is favored by many teenagers and teenagers alike when taking selfies. Would such a pose be considered a “mannerism an “indicia” protected by the post mortem right to publicity?

No Moral Rights

The bill does not provide any moral right, and this is not surprising as the U.S recognizes only very limited moral rights. Not providing moral rights is, of course, protective of freedom of expression, yet may lead to tensions and possibly lawsuits if a use, otherwise authorized by the new law, would be considered by the right holders as tainting the memory of the deceased. Such tainted use could be pornographic or presenting ideas which were repulsive to the celebrity during her lifetime. However, such uses would likely to be found protected by the First Amendment, unless commercial.

As the New York Senate has concluded its business for its 2015 regular session, this bill will not be enacted this year. It is not the first time that a New York bill providing for a post mortem right to publicity has failed to be enacted, but as some celebrities are now earning millions of dollars years after their demise, New York is likely to eventually join California and other the states which already have post mortem right to publicity statutes. Let’s wait and see what 2016 will bring in Albany.

Image is courtesy of Flickr user 1015 / J.L.McVay under a CC BY-NC-ND 2.0 license.