Right of Publicity: An Introduction BAKER WILLIAMS _____________________ MATTHIESEN LLP Right of Publicity: An Introduction John “Rocky” Rawls IP Partner Baker Williams Matthiesen LLP

My Background, or “Why are We Listening to This Guy?” BAKER WILLIAMS _____________________ MATTHIESEN LLP My Background, or “Why are We Listening to This Guy?” 34 years in practice (25 in CA, 9 in TX) 20+ year focus on trademark & advertising 20+ years doing RoP litigation RoP practice includes “personal rights” clearance and licensing

WHAT IS THE RIGHT OF PUBLICITY? BAKER WILLIAMS _____________________ MATTHIESEN LLP WHAT IS THE RIGHT OF PUBLICITY? THE RIGHT OF EACH INDIVIDUAL TO CONTROL THE USE OF HIS/HER IDENTITY TO ADVERTISE OR PROMOTE COMMERCIAL PRODUCTS

RIGHT OF PUBLICITY CLAIMS DO NOT REQUIRE PROOF OF: BAKER WILLIAMS _____________________ MATTHIESEN LLP RIGHT OF PUBLICITY CLAIMS DO NOT REQUIRE PROOF OF: Injury to Plaintiff’s Reputation Consumer Confusion or Deception Disclosure of Confidential Information

WHAT DOES “IDENTITY” INCLUDE? BAKER WILLIAMS _____________________ MATTHIESEN LLP WHAT DOES “IDENTITY” INCLUDE? Many states (including CA and WA) list name, voice, signature, photograph, and image or likeness. Some states (including IN and WA) add distinctive appearance, gesture, and mannerism.

WHAT USES OF IDENTITY REQUIRE CONSENT? BAKER WILLIAMS _____________________ MATTHIESEN LLP WHAT USES OF IDENTITY REQUIRE CONSENT? Most states (including CA and WA) restrict use for: advertising or promotion of commercial goods or services Some states (including TN and WA) also cover: fund raising and solicitation of charitable donations.

WHAT USES ARE EXEMPT FROM CONSENT REQUIREMENTS? News Reporting and Commentary (e.g., Cal. Civ. Code § 3344(d)): Exempts use “in connection with any news, public affairs, or sports broadcast or account, or any political campaign.”

WHAT USES ARE EXEMPT FROM CONSENT REQUIREMENTS? (cont.) Some Post-Mortem Uses (e.g., Cal. Civ. Code § 3344.1): Exempts use “play, book, magazine newspaper, musical composition, . . . radio or television program, . . . work of political or newsworthy value,” and ads for same.

WHO HAS A RIGHT OF PUBLICITY? BAKER WILLIAMS _____________________ MATTHIESEN LLP WHO HAS A RIGHT OF PUBLICITY? LIVING PERSONS (by common law, statute, or both) in 31 STATES. ESTATES OF DECEASED INDIVIDUALS (by common law, statute, or both) in 20 STATES.

NON-CELEBRITIES ARE PEOPLE, TOO! Fraley v. Facebook, (N.D. Cal. 2011) BAKER WILLIAMS _____________________ MATTHIESEN LLP NON-CELEBRITIES ARE PEOPLE, TOO! Fraley v. Facebook, (N.D. Cal. 2011) Mary Smith clicks: “I ‘Like’ Stouffer's frozen lasagna.” Facebook posts on Mary’s friends’ pages a “Sponsored Story” stating that Mary “likes” product.”

BAKER WILLIAMS _____________________ MATTHIESEN LLP “[A]dvertisers’ ability to conduct targeted marketing has now made friend endorsements ‘a valuable marketing tool,’ just as celebrity endorsements have always been so considered.” Fraley v. Facebook, 830 F. Supp.2d 785 (N.D. Cal. 2011)

LAWS THAT CAN AFFECT THE SCOPE OF PUBLICITY RIGHTS BAKER WILLIAMS _____________________ MATTHIESEN LLP LAWS THAT CAN AFFECT THE SCOPE OF PUBLICITY RIGHTS First Amendment Uniform Single Publication Act* *adopted in most but not all states

BAKER WILLIAMS _____________________ MATTHIESEN LLP ACTUAL PHOTO MAY NOT EVOKE IDENTTITY Cal. Civ. Code § 3344(b)(1): Photo of individual not actionable unless “one who views [it] with the naked eye can reasonably determine that the person depicted . . . is the same person who is complaining of its [ ] use.”

IMPORTANT CASE LAW ISSUES BAKER WILLIAMS _____________________ MATTHIESEN LLP IMPORTANT CASE LAW ISSUES Attributes other than name or likeness Fictional characters associated with individual Parody First Amendment issues Choice of law

USE OF ATTRIBUTES OTHER THAN NAME OR LIKENESS BAKER WILLIAMS _____________________ MATTHIESEN LLP USE OF ATTRIBUTES OTHER THAN NAME OR LIKENESS Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) Use of “sound alike” singer in commercial violated common law right of publicity.

White v. Samsung Elecs. Am., Inc.., 971 F.2d 1399 (9th Cir. 1992) BAKER WILLIAMS _____________________ MATTHIESEN LLP White v. Samsung Elecs. Am., Inc.., 971 F.2d 1399 (9th Cir. 1992)

BAKER WILLIAMS _____________________ MATTHIESEN LLP White v. Samsung (cont.) “[R]ight of publicity extends not just to the name, likeness, voice and signature of a famous person, but to anything at all that evokes that person’s identity.”

DEPICTION OF CHARACTER ASSOCIATED WITH INDIVIDUAL BAKER WILLIAMS _____________________ MATTHIESEN LLP DEPICTION OF CHARACTER ASSOCIATED WITH INDIVIDUAL

Wendt v. Host International, Inc., 125 F.3d 806 (9th Cir. 1997) BAKER WILLIAMS _____________________ MATTHIESEN LLP Wendt v. Host International, Inc., 125 F.3d 806 (9th Cir. 1997) “[A]n actor or actress does not lose the right to control the commercial exploitation of his or her likeness by portraying a fictional character.”

BAKER WILLIAMS _____________________ MATTHIESEN LLP Abdul-Jabbar v. General Motors Corp., 85 F.3d 407 (9th Cir. 1996) “Who holds the record for being voted the most outstanding player of this tournament?” Lew Alcindor, UCLA, ‘67, ‘68, ‘69.”

PARODY Elvis Presley Enterprises, Inc. v. Capece, 141 F PARODY Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188, (5th Cir. 1998) “Velvet Elvis” bar in Houston claimed right to use Elvis name to parody “tacky” 1960s culture. Because Elvis was not primary subject of the parody, use violated Presley Estate’s publicity rights.

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“PROMOTIONAL” USE MIGHT BE MORE THAN YOU THINK BAKER WILLIAMS _____________________ MATTHIESEN LLP “PROMOTIONAL” USE MIGHT BE MORE THAN YOU THINK Katheryn Heigl sued Duane Reade drugstore chain over this tweet Complaint sought $6 million in damages After four months, suit settled by DR charity contribution (amount unknown)

PROMOTIONAL USE (cont.) Jordan v. Jewel Food Stores, Inc. BAKER WILLIAMS _____________________ MATTHIESEN LLP PROMOTIONAL USE (cont.) Jordan v. Jewel Food Stores, Inc. Grocery chain placed “congratulatory” ad in Sports Illustrated commemorative edition re Jordan’s Hall of Fame induction Jordan sued, Jewel sought dismissal on First Amendment grounds. District Court held for Jewel, but 7th Circuit reversed.

BAKER WILLIAMS _____________________ MATTHIESEN LLP PROMOTIONAL USE (cont.) Jordan v. Jewel Food Stores, Inc. 7th Cir.: Ad was “commercial speech,” so First Amendment did not preclude Jordan’s right of publicity claim 11/15: Case settled for undisclosed sum; Jordan to donated net proceeds to charity

First Amendment Protection of “Artistic” Use BAKER WILLIAMS _____________________ MATTHIESEN LLP First Amendment Protection of “Artistic” Use

ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003) BAKER WILLIAMS _____________________ MATTHIESEN LLP ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003) Painting depicting Tiger Woods at 1997 U.S. Open protected by First Amendment, despite “commercial” nature of use.

ARTISTIC USE PROTECTED BY FIRST AMENDMENT Nussenzweig v ARTISTIC USE PROTECTED BY FIRST AMENDMENT Nussenzweig v. DiCorcia, 11 Misc 3d 1051 (NY 2006) Lower court: photograph of individual could be sold without subject’s consent because it was “artistic” work. Appellate court upheld decision (on statute of limitations grounds), but did not address First Amendment claim.

BAKER WILLIAMS _____________________ MATTHIESEN LLP THE “TRANSFORMATIVE” TEST Comedy III v. Saderup, 25 Cal. 4th 387 (2001) Artist Saderup made drawing of The Three Stooges, reproduced it for sale on lithographs and t-shirts.

BAKER WILLIAMS _____________________ MATTHIESEN LLP Comedy III holding: “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.” Not “all reproductions of celebrity photographs are unprotected.” “Literal depiction of the celebrity” did not meet “transformative” test.

Winter v. DC Comics, 30 Cal. 4th 881 (2003) BAKER WILLIAMS _____________________ MATTHIESEN LLP Winter v. DC Comics, 30 Cal. 4th 881 (2003) Johnny and Edgar Winter 100% Human 100% Albino

Johnny and Edgar Autumn: BAKER WILLIAMS _____________________ MATTHIESEN LLP Johnny and Edgar Autumn: “Villainous Half-Human, Half Worm” Albinos

Winter v. DC Comics (cont.) BAKER WILLIAMS _____________________ MATTHIESEN LLP Winter v. DC Comics (cont.) Depictions of plaintiffs “contain[ed] significant expressive content other than plaintiffs’ mere likenesses.” Plaintiffs are merely “part of the raw materials from which the comic books were synthesized.”

BAKER WILLIAMS _____________________ MATTHIESEN LLP Unresolved Questions Regarding the “Transformative” Test for Artistic Works How much “transformation” is enough? “Works of art” only, or merchandise as well? If applicable to merchandise, is the amount/nature of required transformation different?

CHOICE OF LAW: LIVING PLAINTIFF BAKER WILLIAMS _____________________ MATTHIESEN LLP CHOICE OF LAW: LIVING PLAINTIFF Living plaintiff can typically sue anywhere identity was improperly used, even if not a resident of jurisdiction.

Rights of publicity for deceased based on “domicile” at time of death. BAKER WILLIAMS _____________________ MATTHIESEN LLP CHOICE OF LAW: POST-MORTEM RIGHTS Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002) Rights of publicity for deceased based on “domicile” at time of death.

BAKER WILLIAMS _____________________ MATTHIESEN LLP DOMICILE Shaw Family Archives, Ltd. v. CMG Worldwide, Inc., 486 F.Supp.2d 309 (S.D.N.Y. 2008) Milton H. Greene Archives, Inc. v. CMG Worldwide, 568 F.Supp.2d 1152 (C.D. Cal. 2008) Born and lived most of her life in CA Living in rented CA house. Died in CA. 46 years later, deemed to have been New York domiciliary

TELL ME AGAIN . . . WHAT IS “DOMICILE?” BAKER WILLIAMS _____________________ MATTHIESEN LLP TELL ME AGAIN . . . WHAT IS “DOMICILE?”

Best Practices Determine who is responsible for RoP clearance (e.g., ad agency v. client) Create “checklist” that will allow simple, binary analysis of whether right of publicity claim may exist Apply most restrictive state law within are where ads will be seen

Right of Publicity Clearance BAKER WILLIAMS _____________________ MATTHIESEN LLP Right of Publicity Clearance Whose law applies? Living: where will ads be seen? Dead: Can we determine domicile at time of death? If multiple jurisdictions are still plausible, analyze under most restrictive state law among them

Right of Publicity Clearance (cont.) BAKER WILLIAMS _____________________ MATTHIESEN LLP Right of Publicity Clearance (cont.) Using an attribute of someone’s identity? Using it for advertising or promotion? Does News & Commentary exception apply? [If post-mortem] Have rights expired under the most restrictive state’s law? Other data that could help predict likelihood of claim?

BAKER WILLIAMS _____________________ MATTHIESEN LLP Cal. Civ. Code § 3344.1(f)(3): Establishes “registry” for persons claiming to be a successor in interest to the rights of a deceased personality.”

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BAKER WILLIAMS _____________________ MATTHIESEN LLP Search Results for: Name: Albert Einstein Company: ------------------------------------------------------------------------------ Celebrity Name: Albert Einstein File Number: 1985-086 Filing status: active File date: 08/27/1985 Date of death: 04/18/1955 Transferred by: will Name of Claimant: Hebrew University - Jerusalem, Israel Address of Claimant: c/o American Friends of the Hebrew University, 11 East 69th Street, New York, New York 10021 - c/o Charles S. Bloom Claimants Agent: The Roger Richman Agency, Inc. 9777 Wilshire Blvd., Ste. 815, Beverly Hills, CA 90212 Percentage interest claimed: 100% Above percentage claimed in: all types of rights

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BAKER WILLIAMS _____________________ MATTHIESEN LLP Baker Williams Matthiesen LLP makes this information available for educational purposes. This information does not offer specific legal advice or create an attorney-client relationship with the firm. Do not use this information as a substitute for specific legal advice.   If you have questions or need assistance, please contact John “Rocky” Rawls at: rocky@bwmtx.com 713.888.2507