The Right of Publicity – Concerns about the reach of Keller v. EA

The Right of Publicity – Generally

Unlike most rights under the general umbrella of “intellectual property,” the right of publicity is based on state law and not federal law. The right of publicity is recognized either through common law or statute (and sometimes by both) by a little over half of the states. For example, California extends the right of publicity through both judicially-recognized common law and statute. California’s statute does a good job of summing up the basic scope of the right:

Any 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, without such person’s prior consent … shall be liable for any damages sustained by the person or persons injured as a result thereof.

The common law version in California is almost identical with the exception that the common law version does not require that the appropriation have been done with knowledge (“knowingly”).

Because the right of publicity is state-based law, the actual contours of the right can vary from state to state. The most common difference is the duration of the right after an individual’s death. Interestingly, both the shortest and longest post-death durations exist within the same state – Tennessee. In Tennessee, the right of publicity does not survive an individual’s death if the right was not being exploited prior to the individual’s death. If, however, the right is being exploited, then it lasts as long as it is being exploited, in other words, potentially forever. Can you hear the ghost of Elvis saying “uh, thank you . . . thank you very much”?

My Normal “Right of Publicity Spiel”

Here’s how I had normally explained the right of publicity to groups of writers and artists (when I normally only had 30 seconds to fit it into after everything else): the difference in what you can and cannot do is the difference between “art” and “merchandising.” The former was protected by the First Amendment and the latter was not. If what the creator did looked more like am attempt at merchandising, then liability was more likely. Conversely, if what the creator did looked more like an attempt at art, then liability was less likely.

The Three Stooges case (Comedy III v. Saderup) and the Tiger Woods case (ETW v. Jireh Publishing) provided the exemplars for this approach.In Comedy III, an artist who specialized in charcoal drawings of celebrities was found liable for lithographs and t-shirts bearing sketches of the Three Stooges. In ETW, sports painter Rick Rush, through Jireh Publishing, was not found liable for selling limited edition prints of a painting titled “Masters of Augusta” featuring a number of images of Tiger Woods during his historic Augusta win.

Three StoogesThe court in Comedy III did not say that Saderup’s charcoal drawings of the Three Stooges as sold in lithographs and on t-shirts were not First Amendment expression. The court explicitly said they were. Further, the fact that Saderup sold the images commercially did not itself take the images out of First Amendment protection. Rather, the court said that the question was whether Saderup’s expression was within the realm of First Amendment expression that would have to give way to the right of publicity. So the question for that court became what expression would be protected by the First Amendment and what expression would not be protected. What the court came up with to make that determination was the transformative inquiry later used in Keller:

When artistic expression takes the form of a literal depiction or imitation of a celebrity for commercial gain, directly trespassing on the right of publicity without adding significant expression beyond that trespass, the state law interest in protecting the fruits of artistic labor outweighs the expressive interests of the imitative artist. On the other hand, when a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interest protected by the right of publicity…. Accordingly, First Amendment protection of such works outweighs whatever interest the state may have in enforcing the right of publicity.

Tiger WoodsIs the alleged infringer of the right of publicity merely appropriating the economic value of the celebrity’s image (“merchandising”)? Or is the creator adding something expressive or attempting to say something through the use of the celebrity’s image (“art”)?

In ETW, that court concluded that Rush’s painting, although sold for commercial purposes, was entitled to full First Amendment protection. The court actually compared the depiction of the Three Stooges at issue in Comedy III with Rush’s painting in ETW, stressing what had been added by the artist.

Unlike the unadorned, nearly photographic reproduction of the faces of The Three Stooges in Comedy III, Rush’s work does not capitalize solely on a literal depiction of Woods. Rather, Rush’s work consists of a collage of images in addition to Woods’s image which are combined to describe, in artistic form, a historic event in sports history and to convey a message about the significance of Woods’s achievement in that event. Because Rush’s work has substantial transformative elements, it is entitled to the full protection of the First Amendment. In this case, we find that Woods’s right of publicity must yield to the First Amendment.

The Ruling in Keller

NCAA Football 09The Ninth Circuit’s decision in Keller v. EA created a great deal of consternation about both the potential for artists and authors to be held liable for the use of celebrities in their creative works and the potential chilling effects on speech created by fear of such liability.

Keller is a former college football quarterback who argued that EA’s use of his likeness in their college football video game violated his right of publicity. EA argued in response that the First Amendment protected their use even if that use was an infringement of Keller’s right of publicity. The Ninth Circuit summarized EA’s actions as follows. (Yes, I am too lazy to paraphrase it. No, it is not copyright infringement because, among other things, works produced by the federal government are not protected by copyright.)

Samuel Keller was the starting quarterback for Arizona State University in 2005 before he transferred to the University of Nebraska, where he played during the 2007 season. EA is the producer of the NCAA Football series of video games, which allow users to control avatars representing college football players as those avatars participate in simulated games. In NCAA Football, EA seeks to replicate each school’s entire team as accurately as possible. Every real football player on each team included in the game has a corresponding avatar in the game with the player’s actual jersey number and virtually identical height, weight, build, skin tone, hair color, and home state. EA attempts to match any unique, highly identifiable playing behaviors by sending detailed questionnaires to team equipment managers. Additionally, EA creates realistic virtual versions of actual stadiums; populates them with the virtual athletes, coaches, cheerleaders, and fans realistically rendered by EA’s graphic artists; and incorporates realistic sounds such as the crunch of the players’ pads and the roar of the crowd.

EA’s game differs from reality in that EA omits the players’ names on their jerseys and assigns each player a home town that is different from the actual player’s home town. However, users of the video game may upload rosters of names obtained from third parties so that the names do appear on the jerseys. In such cases, EA allows images from the game containing athletes’ real names to be posted on its website by users. Users can further alter reality by entering “Dynasty” mode, where the user assumes a head coach’s responsibilities for a college program for up to thirty seasons, including recruiting players from a randomly generated pool of high school athletes, or “Campus Legend” mode, where the user controls a virtual player from high school through college, making choices relating to practices, academics, and social life. In the 2005 edition of the game, the virtual starting quarterback for Arizona State wears number 9, as did Keller, and has the same height, weight, skin tone, hair color, hairstyle, handedness, home state, play style (pocket passer), visor preference, facial features, and school year as Keller. In the 2008 edition, the virtual quarterback for Nebraska has these same characteristics, though the jersey number does not match, presumably because Keller changed his number right before the season started.

Whether EA used Keller’s likeness in a manner that violated his right of publicity was not really disputed. Instead, EA said that video games are expressive and that their use of his likeness was protected by the First Amendment. The court of appeals chose to apply the transformative test from Comedy III in order to determine if the FIrst Amendment protected EA’s use. The court said that at least five factors should be examined in determining whether a use of a celebrity’s likeness is transformative and thus protected by the First Amendment despite infringing a celebrity’s right of publicity. Here are the five factors (citations omitted):

First, if “the celebrity likeness is one of the ‘raw materials’ from which an original work is synthesized,” it is more likely to be transformative than if “the depiction or imitation of the celebrity is the very sum and substance of the work in question.”

Second, the work is protected if it is “primarily the defendant’s own expression”—as long as that expression is “something other than the likeness of the celebrity.” This factor requires an examination of whether a likely purchaser’s primary motivation is to buy a reproduction of the celebrity, or to buy the expressive work of that artist.

Third, to avoid making judgments concerning “the quality of the artistic contribution,” a court should conduct an inquiry “more quantitative than qualitative” and ask “whether the literal and imitative or the creative elements predominate in the work.”

Fourth, the California Supreme Court indicated that “a subsidiary inquiry” would be useful in close cases: whether “the marketability and economic value of the challenged work derive primarily from the fame of the celebrity depicted.”

Lastly, the court indicated that “when an artist’s skill and talent is manifestly subordinated to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit his or her fame,” the work is not transformative.

The court, agreeing with the lower court, concluded that EA’s use contained little to no transformative elements, likening the case to No Doubt v. Activision (described below). In reaching that conclusion, the majority opinion (one judge dissented) emphasized that EA tried to make the portrayal as realistic as possible and portrayed Keller in the exact context he is famous for – as a college football player playing college football.

Three more cases: No Doubt, Winter, and Kirby

In order to add more depth and context to this analysis, and your education in law, I wanted to describe three more cases before getting into full commentator mode. At the least, reading  few more results will give you a better “feel” for what’s going on in this legal area. All three cases applied the “transformative” test from Comedy III to determine if the FIrst Amendment protected the defendants from liability stemming from right of publicity claims.

No Doubt v. Activision

No DoubtThe rock band No Doubt entered into an agreement with Activision that allowed the use of digital avatars patterned after the members of No Doubt in the video game Band Hero. However, when Activision allowed payers to unlock the No Doubt avatars and use them to perform other songs, No Doubt claimed that the game company had gone beyond the license agreement and in doing so had violated the band members’ rights of publicity (among other claims).

No doubt you already know what defense Activision asserted – that the First Amendment protected their use. Just as the Ninth Circuit did in Keller, this court of appeals acknowledged that video games are expressive and entitled to First Amendment protection. However, they did not find that Activision’s use of the No Doubt avatars were protected from liability under the right of publicity claims. Instead of characterizing the uses as “transformative,” the court said the uses of No Doubt’s likenesses were pure “mimicry” and “conventional” “life-like depictions” designed to commercially exploit No Doubt’s fame.

Activision argued that having the No Doubt avatars perform songs they did not normally perform and having them do so in fanciful venues (e.g. outer space) constituted transformative expression. The court rejected those arguments.

Winter v. DC Comics

The rock musician brother, Johnny and Edgar Winters, sued DC Comics over what they argued was the use of their likeness in a Jonah Hex series.

Jonah HexIn the 1990’s, DC Comics published a five-volume comic miniseries featuring “Jonah Hex,” . . . . The third volume ends with a reference to two new characters, the “Autumn brothers,” and the teaser, “Next: The Autumns of Our Discontent.” The cover of volume 4 depicts the Autumn brother characters, with pale faces and long white hair. One brother wears a stovepipe hat and red sunglasses, and holds a rifle. The second has red eyes and holds a pistol. This volume is entitled, Autumns of Our Discontent, and features brothers Johnny and Edgar Autumn, depicted as villainous half-worm, half-human offspring born from the rape of their mother by a supernatural worm creature that had escaped from a hole in the ground. At the end of volume 5, Jonah Hex and his companions shoot and kill the Autumn brothers in an underground gun battle.

In what should be a common pattern to you at this point, DC Comics defended against the right of publicity claims by asserting that the First Amendment protected their expression. The court agreed with DC Comics. They pointed out that, while the comics evoked the Winter brothers’ images, the comics distorted those images into something different (half-worm villains) and to the extent that the comics borrowed common looks used by the Winters brothers (e.g. the stove-top hat), the comics did so in order to lampoon and parody the brothers. Further, the court pointed out that fans of the Winter brothers who were seeking a comic representation of their musical heroes would not seek out these comics.

Kirby v. Sega

Kirby and UlalaIn Kirby, the lead singer of Dee-lite, Kierin Kirby, sued Sega over the character Ulala in their game Space Channel 5. She claimed that the character and her likeness were based on Kirby in her persona Lady Kier. Sega maintained that they had not based the character or her likeness on Kirby and that their game was protected by the First Amendment regardless of whether a court thought they had used Kirby’s likeness.

The court agreed with Sega’s arguments that the First Amendment protected them. Using the transformative test from Comedy III, the court said that Sega, even if they had co-opted Ulala from Kirby (which was not established), had added expression by making Ulala more stylized in appearance. The character was thin in the exaggerated manner often seen in anime characters. The character was placed in an environment unlike any in which Kirby had been portrayed – a 25th century space news show. Further, the characters dance moves were not similar to any from Kirby’s music videos.

Importantly, the court said that Sega did not have to show that any of their uses that were similar to Kirby had to be borrowed for the purpose of lampooning or parodying Kirby. Even though the court in Winter had pointed the parodic nature of DC Comics’ use of some aspects of the Winter brothers, such comment upon the original was not a requirement for First Amendment protection from right of publicity claims. Mere addition of artistic expression was enough.

The Big Picture

In trying to figure out “what the law is,” you have to look beyond the mere words used by a court to state a particular doctrine or rule. You also need to look at the facts of the controversy and the conclusion that is reached. It is only with that context that you can understand what the court means by the words it uses.

In thinking about these cases as a group and with an eye to the underlying facts, two observations emerge.

Observation, the First

There really is a stark difference between cases like No Doubt and Keller on one hand and Winter on the other hand. The defendants in No Doubt and Keller sought (1) to replicate the celebrities as exactly as their technology would allow, (2) placed them in the exact context of their fame, and (3) did so as their major selling point. In contrast, Winter (1) altered the celebrities and (2) placed them in an entirely new context, even while (3) maintaining the reader’s ability to recognize who they really were. That seems to define clear spaces that are protected and not protected by the First Amendment, even if a third space between those two is left a bit muddy.

Observation, the Second

Courts may treat video games differently. They acknowledge that video games are expressive media potentially deserving of First Amendment protection, but absent very weak facts a la Kirby, they arguably give video games less protection. I think there could be two related causes at play. First, courts may just view video games as games, rather than viewing them as something expressively equivalent to a book, painting, or even movie. Most appellate judges pre-date video games. Keep in mind that in 2010 a Supreme Court justice said that pagers were a new technology the potential effects of which were little understood. Courts don’t always get new technologies.

This lack of understanding also underlies the second potential cause. Courts do not appear to have learned how to apply existing law to interactive entertainment. There does not appear to be a real recognition or appreciation for the the fact that the “work of art” is created and experienced by the developers AND the player during game play. The result is that video games may have a harder row to hoe.

The Right of Publicity and Novels . . . or Elvis Presley, Werewolf Hunter

So. Since this blog is written primarily for authors, how would all of this apply to a novel or story? I want to think about this first in a general way and then second in a more specific way with some examples.

The Medium is the Message

Are written works, as a whole, likely to be treated the same as video games, paintings, or comic books?

I think the answer would be no. I can’t point to any particular pronouncement in any specific case, but my impression that a court would view a book differently than an image on a t-shirt or an avatar in a video game is pretty strong. Using my original dichotomy, a court would likely view a book more as “art” than “merchandising.”

In related areas, courts have treated written works differently than visual works, often unconsciously. I think they are viewed both as more expressive and as more work on the creation side. The aura of the “author” and of the “novel” come into play here. This is in distinct contrast to “mere” visual replicas (like those seen in Comedy III and Keller).

Another aspect of this is the informational nature of written works. An image of a celebrity might include only limited information – i.e. what the celebrity looked like. In contrast, it is hard to imagine a written work containing only that information. Would someone really be trying to sell a written work that consisted only of a description of the celebrity? Either it would describe the celebrity’s career or experiences or character, or it would put the celebrity into a set of fictional events. If it was the former, the First Amendment clearly covers it as news reporting or commentary. That type of protection is very strong vis-a-vis right of publicity claims. If it was the latter, then the author has a strong argument to have added transformative expression under the test laid out in Comedy III.

Where a book would be more likely to get in trouble is in a situation in which the book created a false impression that the celebrity endorsed the book. But that claim would fall under unfair competition law, or at least an understanding of the right of publicity sounding more in unfair competition law. This is one reason I say authors have to be even more careful with titles.

Let’s Talk Specifics

How would a book – a fiction book – look more analogous to Keller and Comedy III than to ETW and Winter? Let’s look at some examples.

In your new novel, Elvis fakes his own death and travels the back roads of the country in a pink ’55 Cadillac Fleetwood Series 60, killing werewolves with rhinestone buckshot. So, do you have a legal problem?

It seems to me that you would have some pretty strong arguments for transformative expression.  Sure, you would be using his actual name, but you have taken the King out of his usual context (rock star, movie star, Vegas performer). That makes this example a little less analogous to Winter but it does not make it different from ETW.

If we go through the five factors used by the court in Keller, four fall in favor of the author, with one being a little more debatable. Elvis serves as a raw material for the work rather than as the sum and sole substance of the work. Creative elements prevail over purely imitative or descriptive ones. This is certainly not an author subordinating their artistic skill to create a conventional portrait of the King. The novel is primarily the author’s own expression beyond merely the likeness of Elvis. The only argument against transformative expression, and thus First Amendment protection, is that the economic value of the work derived solely from the Elvis’ renown. All in all, it would seem likely a court would side with the author.

blue suede cluesFor that matter, we don’t even have to make up a book featuring Elvis. What about Dean Koontz’s Odd Thomas, that features the spirit of the King? Or Daniel Klein’s series featuring Elvis Presley as a crime solving sleuth: Kill Me Tender, Viva Las Vengeance, Blue Suede Clues, and Such Vicious Minds? While Koontz’s use would seem to be lesser and he would be able to argue that his own fame is a major factor in selling his books, Klein could make neither of those arguments. Elvis is the central character in his books, and the selling power of his name is not the calibre of Koontz’s.

Of course, we can’t really say that the existence of these books conclusively demonstrates anything about how a court would judge their uses of Elvis. However, it can give us some hints. That these uses exist without lawsuits might tell us how these particular holders of rights of publicity think. They might signal that the Elvis estate does not think they infringe on Elvis’ right of publicity, or they might signal that the Elvis estate does not at least feel inclined to sue over such uses.

But maybe you think I’m stacking the deck with my examples. Maybe you are right. Perhaps I’m predisposed to a certain types of genre fiction, and that is in turn leading me toward one-sided examples.

So what would a book have to look like in order start to tilt the factors identified in Keller toward infringement? One thought is it could portray the celebrity as the celebrity in a normal context, but still be fictional. One example would be the book series by the Olsen twins. Such a book would be fiction (and thus not protected as news reporting) while attempting to capitalize as much as possible on the idea that “this is what Mary Kate and Ashley are really like.”

Or perhaps, and please don’t read anything into this segue, an erotica novel featuring a celebrity. It would be easier to see how a court might come to see the celebrity selling factor as predominant (while unconsciously feeling uneasy with the non-permissive use of a real person in erotica).

So, we can come up with some examples of how a book author might lose right of publicity case, but I can’t help but think we have to thin out what most would normally call a novel. It seems like you’d really have to try to keep out your own expression.

(Now don’t take this to mean I’m recommending you use a celebrity in your next novel.  See my comments in the “Chilling Effects” section below. Also keep in mind that none of this is legal advice – specific facts matter and I don’t know yours.)

The io9 Horror Stories

As you might have gathered by this point, I don’t agree with the horror stories posited in the io9 article.

The Zuckerberg/Social Network example does not follow from the cases for me. Certainly, I can see how the EFF and io9 and the dissenting judge can read this sort of decision out of the language of the case and perhaps out of one interpretation of the Keller decision. But I don’t see how you think Zuckerberg would win such a suit when you take into account the First Amendment protections given in other cases including cases dealing with reporting of real events (which receive even stronger First Amendment protection) and when you take into account the lengthy history of biopics like this one.

The “past president and his spying drones” example (what the article calls science fiction that strives for realism) does not follow for me either. I don’t think the cases establish such examples as necessarily infringing, although I must admit I don’t know of a case similar enough to rule it out entirely.

Essentially, I disagree with the conclusion made by the dissenting judge:

The logical consequence . . . is that all realistic depictions of actual persons, no matter how incidental, are protected by a state law right of publicity regardless of the creative context. This logic jeopardizes the creative use of historic figures in motion pictures, books, and sound recordings.

I don’t see that as a logical consequence of the decision or of the broader case law in the area. Keller is narrower than simply “all realistic depictions of actual persons, no matter how incidental, are protected by a state law right of publicity regardless of the creative context.”

That doesn’t mean I disagree with criticisms of Keller. They are spot on, but not because of how a future court will rule. Instead, the decision deserves criticism because it is written in language that is too broad which could lead to chilling effects. See the next section.

But hey, I could be wrong.

But . . . Chilling Effects . . .

You will often see the phrase “chilling effects” used in discussions related to free speech concerns, and you see it highlighted  in the EFF article on Keller. ‘Chilling effects’ refers to the deterrence of legal speech created by the fear of liability or even just the fear of the cost of litigation. It is a policy consideration that courts and commentators alike call upon to bolster refusals to limit speech. In other words, decision-makers basically say our decision impacts more than just the particular speech at issue in this particular controversy – we also have to keep in mind all the other legal speech that may never happen if we allow liability for this speech in this controversy.

The idea should seem familiar to readers of Writer-in-Law. I’ve preached chilling effects from the other side. In the “Can I?” post, I encouraged creators to take three separate questions into account whenever they are worried a particular artistic choice may led to legal problems. Will a choice cause a court to rule against me? Will a choice lead an intermediary to act against me? And will a choice get me sued? When the answer to the first question is “most likely not” but the answer to the third question is “maybe,” a writer’s speech may be “chilled” when that writer chooses not to make that choice (e.g. including a celebrity in their story) because he is afraid of the pain, expense, and uncertainty of defending a lawsuit.

Am I playing a role in increasing chilling effects? Perhaps. Am I reneging on what I said in “Can I?” post? No.

But I am trying to pull out the assumption about priorities that underlies the recommendations in “Can I?” on one hand and the negative view of chilling effects on the other. In “Can I,” the assumption was that the writer’s priority was getting their works in front of readers, or it was about making a career out of writing, or something along those lines. Note that this type of priority may run counter to making a stand for free expression. Creators often see it initially as an issue of “art” as in “I should not compromise my art.” We can carry that further though; we can recognize that the issue is not just about the integrity of “my art” but also about the value of the system as a whole. What does the ability of everyone to freely express their ideas add to society as a whole?

I ask the question not to preach for one or the other. Rather I ask the question in order to provoke a recognition of what choice is being made. In doing so, I’m not making a judgment; please don’t think I am criticizing anyone who makes the choice to avoid the possibility of getting sued. I think that is the right course to follow most of the time. As writers, we can add value to society in so many ways through our works that altering our expression to reduce legal risks is in no way an abdication of our role in shaping a better society. But there may be times when the risk is worth what we have to say. I touched on this briefly in the “Can I?” post when I talked about The Wind Done Gone. My goal is to make sure it is a conscious, well thought out choice.

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