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

2. 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

3. 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

4. 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

5. 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.

6. WHAT USES OF IDENTITY REQUIRE CONSENT?
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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.

7. 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.”

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

9. WHO HAS A RIGHT OF PUBLICITY?
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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.

10. 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.”

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“[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)

12. LAWS THAT CAN AFFECT THE SCOPE OF PUBLICITY RIGHTS
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LAWS THAT CAN AFFECT THE SCOPE OF PUBLICITY RIGHTS
First Amendment
Uniform Single Publication Act*
*adopted in most but not all states

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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.”

14. IMPORTANT CASE LAW ISSUES
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IMPORTANT CASE LAW ISSUES
Attributes other than name or likeness
Fictional characters associated with individual
Parody
First Amendment issues
Choice of law

15. USE OF ATTRIBUTES OTHER THAN NAME OR LIKENESS
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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.

16. White v. Samsung Elecs. Am., Inc.., 971 F.2d 1399 (9th Cir. 1992)
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White v. Samsung Elecs. Am., Inc.., F.2d 1399 (9th Cir. 1992)

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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.”

18. DEPICTION OF CHARACTER ASSOCIATED WITH INDIVIDUAL
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DEPICTION OF CHARACTER ASSOCIATED WITH INDIVIDUAL

19. Wendt v. Host International, Inc., 125 F.3d 806 (9th Cir. 1997)
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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.”

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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.”

21. 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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23. “PROMOTIONAL” USE MIGHT BE MORE THAN YOU THINK
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“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)

24. PROMOTIONAL USE (cont.) Jordan v. Jewel Food Stores, Inc.
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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.

25. 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

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

27. 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.

28. 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.

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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.

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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.

31. 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

32. Johnny and Edgar Autumn:
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Johnny and Edgar Autumn:
“Villainous Half-Human, Half Worm” Albinos

33. Winter v. DC Comics (cont.)
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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.”

34. 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?

35. 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.

36. 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.

37. 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 )
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

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

39. 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

40. 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

41. 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?

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

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Search Results for: Name: Albert Einstein
Company:
Celebrity Name: Albert Einstein
File Number:
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 c/o Charles S. Bloom Claimants Agent: The Roger Richman Agency, Inc Wilshire Blvd., Ste. 815, Beverly Hills, CA 90212
Percentage interest claimed: 100%
Above percentage claimed in: all types of rights

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Corbis Entertainment

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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: