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The time has come to put the brakes on the right of publicity. The action has overflowed its intended banks and is swamping all that lies before it, including the First Amendment. Curiously, most of the damage is being done by the Ninth Circuit, purporting to apply California law. With one notable recent exception, the Ninth Circuit has upheld every single right of publicity claim to come before it, so that the simplest way to summarize the right of publicity is that there is a prima facie case any time anybody uses anyone's name, likeness, or voice (or imitation thereof) for any reason. Note the breadth of the action: anyone can be a plaintiff, not just celebrities. Also, the right applies to any use, not just a commercial use. It does not even require the use of the plaintiff's actual name, likeness, or voice (referred to herein as "persona"); liability can be based on use of the plaintiff's nickname or a "look-alike" or voice imitation.

All states recognize the right of publicity as a common-law right. Many states have statutes dealing with the right of publicity, but these statutes are usually in addition to, and not in lieu of, the common-law right (New York being one notable exception). Thus, plaintiffs usually get the benefit of the broader of the two rights (statutory or common law).

The fundamental problem with the right of publicity is that currently there is no principled set of defenses that apply, so defendants are often left "defenseless." This is in sharp contrast to most other torts, where the law has developed a set of standard defenses that may apply. To take only one example, for slander there are the defenses that the statement was (a) truthful, (b) privileged, or (c) mere opinion. Unfortunately, the law has simply not developed to this extent for the right of publicity, so the rare cases holding in favor of the defendants do so on an ad-hoc and inconsistent basis. The purpose of this article is to suggest a uniform set of defenses to a right of publicity claim.

The current broad application of the right of publicity has given celebrities the unilateral right to stop any remote or indirect reference to them; a result that is simply not intended or justified under any theory. For better or worse, celebrities have become woven into our cultural fabric, so to excise every reference to celebrities' personas would effectively overrule the First Amendment. Thus, a uniform set of defenses to right of publicity claims is a critical bulwark to defending the First Amendment.

A. Incidental Use.

For starters, there should be no liability for the mere incidental use of plaintiff's persona. For example, a twenty seven-second "clip" of plaintiff's singing performance and a single mention of his name in a movie was held not actionable because it was an incidental use. [1] Similarly, a brief discussion of plaintiff in a book is not actionable. [2] The California statute recognizing the right of publicity contains its own incidental use concept, which permits the use of any photograph, videotape, etc., of a person as part of a "definable group," including, without limitation, a crowd, audience, club, or team, as long as the individual has not been singled out in any manner. [3] This is a useful application of the incidental use concept and should be incorporated by case law into the common law, just as the common law incidental use concept has been incorporated by case law into the statute. [4]

Although the incidental use concept should be interpreted broadly, a defendant should not be able to create an incidental use simply by engaging in multiple uses. For example, the face of a baseball player on a baseball card should not be an incidental use merely because there are a large number of cards (each with a different face).

B. No Actual Use.

There should be no liability when there is no actual use or direct imitation of plaintiff's persona, as any implied association would then be too tenuous. This defense is analogous to the idea/expression doctrine developed under the Copyright Act. Under this doctrine, the Copyright Act applies to prevent the unauthorized use of the expression of an idea, but it does not apply to prevent the unauthorized use of the idea itself. [5] This doctrine is essential to protecting the free flow of ideas, an essential element to the fabric of our society and a necessary concomitant to developing and improving on prior ideas. To date, the right of publicity cases have permitted liability based on any indirect invocation of plaintiff's persona. Application of the idea/expression doctrine would protect any publication that did not involve the actual use or direct imitation of someone's persona. [6] A drawing showing the features of the plaintiff would be actionable, even if highly stylized. [7] On the other hand, the mere fact that the plaintiff's persona is called to mind by reason of association should not be actionable. For example, any reference to the film "Terminator II" is likely to automatically call to mind Arnold Schwarzenegger, but such an indirect association should not be actionable. Were it otherwise, the free flow of ideas would be ground to a halt by those whose personas have any association to the ideas.

The most egregious case of this to date is the decision holding that Samsung violated Vanna White's right of publicity by an advertisement showing a robot in an evening gown spinning the "Wheel of Fortune." [8] Other than the evening gown, which is not an element of persona, the robot bore no resemblance to Vanna White, so only the "idea" of Vanna White had been used. Since any reference to the show, "Wheel of Fortune," will almost always call to mind Vanna White, the court effectively granted her the exclusive right to any commercial reference to the show. Similarly, another case held that an advertiser violated a race car driver's right of publicity by using a highly modified photograph of his racing car in a cigarette advertisement.[9] Neither the driver nor his name could be seen, so this use should not have been actionable. Yet another case held that a manufacturer of portable toilets named "Here's Johnny" violated Johnny Carson's right of publicity. [10] While the phrase, "Here's Johnny," certainly calls to mind Johnny Carson, it is because of his famous introduction, not his name. For example, a portable toilet simply called "Johnny" would probably not invoke the association to Johnny Carson to the average person. Thus, it is idea association from his introduction, not the use of his name, that invokes the association to Johnny Carson. In all these cases, because of the tenuous link to the plaintiff, the public would not think that there is any actual association between the plaintiff and the product, so there should be no liability.

To a large extent, this suggested idea/expression dichotomy may have been adapted by the California Supreme Court in 2001, but in a different guise. [11] The court held that the First Amendment protected "transformative" works reflecting "significant transformative elements" to the plaintiff's image, such as the famous Andy Warhol portraits of celebrities. [12] This case dealt with images on t-shirts, and it is not clear whether it applies to advertising, although logically it should. This case is discussed in more detail below.

C. First Amendment.

The Supreme Court has held that the First Amendment provides an absolute defense to publication-based tort actions for publications on matters of public interest, unless the publications contain knowing or reckless falsehood. [13] This protection applies to a broad range of publications, including magazine articles, [14] books, [15] and movies. [16] Advertisements, however, are not matters of public interest, so they do not qualify for this defense.[17]

In order to provide broad First Amendment protection, the definition of "public interest" sweeps up any publication regarding public figures and celebrities[18], as well as publications regarding private citizens who become associated with some issue that has caught the public eye. [19] For example, the defense has been extended to protect a photograph in a magazine of a couple in a romantic pose as within the ambit of public interest as entertainment. [20]

In one remarkable case (particularly for the Ninth Circuit), the Ninth Circuit held that the First Amendment protected a fashion article in Los Angeles Magazine where Dustin Hoffman's cross-dressing character from "Tootsie" was re-dressed in attire from another designer that just happened to advertise in that edition of the magazine. [21] Without discussion, the court seemed to assume that the article qualified as a matter of public interest. More remarkably, the court held that the intentional re-dressing of Dustin Hoffman was not a knowing falsehood because reasonable readers would know from the context of the article that the magazine had done it by computer. There are several issues left open by the court's decision:

The statutory provisions recognizing the right of publicity provide a defense for use of someone's persona in connection with any "news," [23] which has been interpreted to be at least as broad as, if not broader than, the First Amendment protection for publications on matters of public interest. [24] The definition of "news" within the statute has been interpreted similar to the First Amendment defense by excluding publications that were knowingly or recklessly false. [25]

There are limitations on the First Amendment defense for publications on matters of public interest. The Supreme Court has held that an unauthorized television news broadcast of an entire human cannonball act was not protected, because it caused a substantial threat to the economic value of the performance. [26]

The Supreme Court has held that a parody, even a highly offensive one, of a public figure is protected by the First Amendment, except in the unusual case where a reasonable person would believe that the parody expresses a statement of fact, and the fact is untrue. [27] Although the decision dealt with an action for intentional infliction of emotional distress, the result would have to be the same for a right of publicity action, or the decision would be toothless. [28] In order to be protected, the parody should relate directly to the plaintiff; it should not be enough that the plaintiff's persona is used in connection with a parody of something other than the plaintiff, or the defense would become too broad.

Some courts have held that there is First Amendment protection for works of fiction. This is so even though one case involved a fictional story based around Valentino's life, [29] and another story contained a ten-year old character referred to as "Squints Palledorous," which vaguely resembled the plaintiff, Michael Polydoros, thirty years earlier. [30]

In an extremely important decision rendered in 2001, the California Supreme Court held that the conflict between the First Amendment and the right of publicity required a "balancing of interests." [31] The Court held that pictures or paintings, without accompanying text or discussion, even on merchandise, were protected by the First Amendment against a right of publicity claim, but only for "transformative" works that reflected "significant transformative elements" to the plaintiff's image, such as the famous Andy Warhol portraits of celebrities.[32] The decision was long on words but short on logic and left unanswered a number of questions, including the following:

D. Express or Implied Consent.

Another defense to the publication-based tort actions is if the plaintiff gives express or implied consent to the publication. [33] Express consent is straightforward, but implied consent should be interpreted broadly based on the expectations of a reasonable person in the circumstances. For example, actors in a movie should be held to implicitly consent to use of their personas in advertisements for the movie, just as those who pose for a picture should be held to implicitly consent to an intended use of the picture that they were aware of at the time. Similarly, those who become advisory or honorary members of a board of directors of a charitable organization should be held to implicitly consent to a listing of their name and capacity in an advertisement by the charitable organization. In addition, athletes in a game that they know is being televised should be held to implicitly consent to the televised broadcast and any subsequent broadcasts, outtakes, etc., that are within the reasonable contemplation of the athletes at the outset.

E. Privileged.

Another defense to a right of publicity claim should be that the publication is legally privileged, as when it occurs in the context of a legislative, judicial, or administrative proceeding. [34]

4. CONCLUSION

The real problem with right of publicity cases is that merely to be sued is to lose, even if the defendant ultimately wins the case, because of the legal fees incurred to defend the case and the threat of almost limitless liability. Because of the muddy law in this area, these cases are almost never resolved at the summary judgment stage. The mantra of most publishers and film companies has thus become, "When in doubt, leave it out," resulting in a real hit to the First Amendment. This article suggests a set of uniform defenses to right of publicity claims. Since these defenses turn on questions of law, they are particularly appropriate to be applied at the summary judgment stage, thus ending the real problem with right of publicity claims and reducing the chilling effect the specter of these claims has on freedom of expression.

5. FOOTNOTES

1  Brown v. Twentieth Century Fox Film Corporation, 799 F.Supp. 166 (D.C.D.C. 1992). Also see Namath v. Sports Illustrated, 48 A.D.2d 487 (1975) ("Use of plaintiff's photograph was merely incidental advertising of defendant's magazine in which plaintiff had earlier been properly and fairly depicted"), aff'd without op., 352 N.E.2d 584 (1976).

2  Johnson v. Harcourt, Brace,Jovanovich, Inc., 43 Cal.App.3d 880 (1974).

3  Cal. Civ. Code § 3344(b).

4  Johnson v. Harcourt, Brace,Jovanovich, Inc., 43 Cal.App.3d 880 (1974).

5 Harper & Row Publishers, Inc. v. Nation Entrerprises, 105 S.Ct. 2218 (1985).

6  Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983) ("Carson's identity may be exploited even if his name, John W. Carson, or his picture is not used"); Motschenbacher v. R.J. Reynolds Tobacco Co., 498 F.2d 821 (9th Cir.1974)(use of highly modified photograph of plaintiff's race car was actionable); White v. Samsung Electronics America, Inc., 971 F.2d 1395 (9th Cir.1992), cert. denied, 113 S.Ct. 2443 (1993)(advertisement with robot in evening gown spinning the "Wheel of Fortune" was actionable); Wendt v. Host Int'l, Inc., 125 F.3rd (9th Cir. 1997)(mannequins of characters from "Cheers" in airport bar were actionable). For a refreshing step back, see Landham v. Lewis Galoob Toys, Inc. 227 F.3d 619 (6th Cir. 200)(disapproving of White v. Samsung, and holding that at least a less known actor did not have a valid claim with respect to toy figure based on character he played but that had no personal resemblance to actor).

7  Ali v. Playgirl, Inc., 447 F.Supp. 723 (S.D.N.Y. 1978)(cartoon drawing of Muhammad Ali).

8  White v. Samsung Electronics America, Inc., 971 F.2d 1395 (9th Cir. 1992), cert. denied, 113 S.Ct. 2443 (1993).

9  Motschenbacher v. R.J. Reynolds Tobacco Co., 498 F.2d 821 (9th Cir. 1974).

10  Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983).

11  Comedy III Productions, Inc. v. Gary Saderup, Inc., 106 Cal.Rptr.2d 126 (Cal.Sp.Ct. 2001).

12  Contrast Ali v. Playgirl, Inc., 447 F.Supp. 723 (S.D.N.Y. 1978) (Mohammad Ali's right of publicity violated by highly stylized cartoon).

13  Gertz v. Robert Welch, Inc. 94 S.Ct. 2997 (1974)(defamation); Time, Inc. v. Hill, 87 S.Ct.534 (1967)(public disclosure of private facts).

14  Time, Inc. v. Hill, 87 S.Ct. 534 (1967).

15 Maheu v. CBS, Inc., 201 Cal.App.3d 662 (1988).

16 Guglielmi v. Spelling-Goldberg Productions, 25 Cal.3d 860 (1979); Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).

17 Abdul-Jabbar v. General Motors Corp., 85 F.3d 407 (9th Cir. 1996). Hoffman v. Capital Cities/ABC, Inc., 255 F. 3d 1180 (9th Cir. 2001).

18 New York Times v. Sullivan, 84 S.Ct. 710 (1964)(defamation). Hoffman v. Capital Cities/ABC, Inc., 255 F. 3d 1180 (9th Cir. 2001). But see, Ali v. Playgirl, Inc., 447 F.Supp. 723 (S.D.N.Y. 1978) (holding that a cartoon in a magazine was not "news" because the cartoon itself had no "newsworthy dimension").

19 Time, Inc. v. Hill, 87 S.Ct. 534 (1967)(article about crime victims); Dora v. Frontline Video, Inc., 15 Cal.App.4th 536 (1993)(documentary on surfers); Howell v. New York Post, 612 N.E. 2d 699 (N.Y. 1993)(photograph of well-known person, with plaintiff at her side, at psychiatric hospital).

20 Gill v. Hearst Pub. Co., 40 Cal.2d 224 (1953).

21 Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001).

22 Contrast Ali v Playgirl, Inc., 447 F.Supp. 723 (S.D.N.Y. 1978)(holding that a cartoon in a magazine was not "news" because the cartoon itself had no "newsworthy dimension").

23 See, e.g., Cal. Civ. Code § 3344(d).

24 Maheu v. CBS, Inc., 201 Cal.App.3d 662 (1988); Eastwood v. Superior Court, 149 Cal.App.3d 409 (1983); Dora v. Frontline Video, Inc., 15 Cal.App.4th 536 (1993); New Kids on the Block v. New America Pub., Inc., 971 F.2d 302 (9th Cir. 1992).

25 Eastwood v. Superior Court, 149 Cal.App.3d 409 (1983).

26 Zacchini v. Scripps-Howard Broadcasting Co., 97 S.Ct. 2849 (1977).

27 Hustler Magazine, Inc. v. Falwell, 108 S.Ct. 876 (1988)(highly offensive cartoon of religious leader).

28 San Francisco Bay Guardian, Inc. v. Superior Court, 17 Cal.App.4th 655 (1993)(applying parody defense to defamation claim); Cardtoons, L.C. v. Major League Baseball Players Association, 95 F.3d 959 (10th Cir. 1996)(applying parody defense to right of publicity claim).

29 Guglielmi v. Spelling-Goldberg Productions, 25 Cal.3d 860 (1979).

30 Polydoros v. Twentieth Century Fox, 67 Cal.App. 4th 318 (1997).

31 Comedy III Productions, Inc. v. Gary Saderup, Inc., 106 Cal. Rptr. 2d 126 (Cal.Sp.Ct.2001).

32 Contrast Ali v. Playgirl, Inc., 447 F.Supp. 723 (S.D.N.Y. 1978)(Mohammad Ali's right of publicity violated by highly stylized cartoon).

33 Kapellas v. Kofman, 1 Cal. 3d 20 (1969).

34 See, e.g., Cal.Civ.Code § 47 (for defamation).

35 Baltimore Orioles, Inc. v. Major League Baseball Players Assoc., 805 F.2d 663 (7th Cir. 1986), cert. denied, 107 S.Ct. 1593 (1987).

36 17 U.S.C.§ 201(b).

37 Zacchini v. Scripps-Howard Broadcasting Co., 97 S.Ct. 2849 (1977).

38 Midler v. Ford Motor Company, 849 F.2d 460 (9th Cir. 1988); Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992), cert. denied, 113 S.Ct. 1047 (1993).

39 17 U.S.C. § 107 (copyright); 15 U.S.C. § 1115(b)(4) (trademark).

40 The California Supreme Court has come to the same conclusion but based on inapplicability of Copyright Law. Comedy III Productions, Inc. v. Gary Saderup, Inc., 2-6 Cal.Rptr.2d 126 (Cal.Sp.Ct.2001).

41 Comedy III Productions, Inc. v. Gary Saderup, Inc., 106 Cal.Rptr. 126 (Cal.Sp.Ct. 2001).

42 E.g., Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992), cert. denied, 113 S.Ct. 1047 (1993).

43 Fairfield v. American Photocopy Equipment Co., 138 Cal.App.2d 82 (1955) (a private citizen has a cause of action if they are listed, without consent, as endorsing a particular product); Stilson v. Reader's Digest Assn, Inc., 28 Cal.App.3d 270 (1972), cert denied, 93 S.Ct. 1928 (1973)(listing sweepstake finalists without permission); Maheu v. CBS, Inc., 201 Cal.App.3d 662 (1988)(assumed without discussion); Howell v. New York Post, 612 N.E.2d 699 (N.Y. 1993). But see Brewer v. Hustler Magazine, Inc., 749 F.2d 527 (9th Cir. 1984)(stating that the right applies only to celebrities); Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619 (6th Cir. 2000)(same, and see cases cited therein at p. 624)

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