What's in a Name?
Posted Nov 01, 2010 09:54 am CDT
Few people know more than Indiana attorney Jonathan Faber about the actual worth of being famous these days. He’s certainly been committed to the field work.
He’s played guitar in the living room of rock ’n’ roll legend Chuck Berry, dodged paparazzi to meet with representatives of Princess Diana’s estate, and given a presentation to an audience of four-star generals after the U.S. military received an inquiry about putting the image of Gen. George S. Patton in a commercial.
Faber, whose office is in Shelbyville, outside of Indianapolis, has been involved in making licensing deals on behalf of celebrity clients and their estates that have paved the way to many of the most memorable advertisements in recent years.
He did the licensing work that led to a Lipton Iced Tea commercial featuring an animated Reggie Jackson, a Johns Hopkins spot with a reanimated Ella Fitzgerald (through existing footage and digital alteration) performing with a modern-day jazz band, and a Chevrolet Silverado commercial featuring Rosa Parks.
He has also stepped in when celebrity images are used without permission. Faber used to send out a legal warning when someone used images of Marilyn Monroe or James Dean without the permission of their estates. On occasion, he’s also asked to testify as an expert witness in cases where a defendant, usually a company, has used a celebrity in some manner—often in a promotional campaign—and the plaintiff is attempting to collect damages. Faber will give the jury a dollar figure.
“I can’t deny that I sometimes get excited when I see news of significant damages” in a publicity rights dispute, he says. “It buttresses the fact that there’s lot of value in a celebrity name and adds gravity to what I do.”
Publicity rights battles are growing exponentially, according to legal practitioners, who point to a host of reasons for the increase. For one, about 18 states have adopted laws giving individuals the right to sue over commercial exploitation of their persona. In addition, changes in technological culture make it both more tempting to use—and easier than ever to spot—an unauthorized use of a celebrity’s image.
Most especially, practitioners believe this area has grown hot because of a lack of acknowledged boundaries. A combination of generous laws, ambitious plaintiffs and no consistent bright-line defenses against claims means that attorneys are free to take rights conferred, find jurisdictions where the protections are most generous, and make a claim.
Some critics worry about how expanding publicity rights may chill free speech, but in the meantime, the issue of celebrity publicity rights is giving a lot of work to a new generation of IP lawyers like Faber.
“The sky’s the limit,” says Indiana University law professor Marshall Leaffer. “Over the years, we’ve seen publicity rights claims being made on someone’s voice, on a golfer’s swing, even on a sports car identified with a particular racer. A person’s likeness covers a lot. Rights of publicity claims are seemingly impeded only by a lawyer’s imagination.”
The protection first developed through common law as a subset of privacy, the right to be left alone from unwanted publicity. It slowly grew to allow individuals to stop uncompensated exploitation of their identity.
In 1953, federal appellate Judge Jerome Frank articulated this for the first time in Haelan Laboratories v. Topps Chewing Gum, a case in which the plaintiff was a company that had signed a number of baseball players to exclusive promotional contracts.
Haelan wanted to stop its competitor from distributing baseball cards featuring these same ballplayers. In his opinion for the New York City-based 2nd U.S. Circuit Court of Appeals, Frank wrote that “in addition to and independent of that right of privacy … a man has a right in the publicity value of his photograph.”
Legal theorists such as UCLA professor Melville Nimmer went running with the idea and spelled out the right further. In a treatise on the topic in 1954, Nimmer wrote that to make a claim, a plaintiff just needs to show some commercial, unauthorized use of his or her identity.
In 1977, in the only right-of-publicity case to be reviewed by the U.S. Supreme Court, the justices affirmed Nimmer’s theory in Zacchini v. Scripps-Howard Broadcasting Co. The case involved a man named Hugo Zacchini who performed a human cannonball act.
After a local Ohio TV station broadcast Zacchini’s entire act—all 15 seconds’ worth—he sued, arguing that he’d have no incentive to perform if TV broadcasters could show his act without his consent. Zacchini won, and in doing so blazed the trail for future plaintiffs.
PUSHING THE ENVELOPE
In the last two decades, more states have adopted statutes protecting rights of publicity, and have even extended those rights to deceased celebrities. Indiana—Faber’s home state—grants rights to an individual and his agent for 100 years after death, and the protections cover use of a person’s name, voice, signature, photograph, image, likeness, distinctive appearance, gesture and mannerisms.
It’s a broad swath of protection, and it has become more and more tempting for plaintiffs and their lawyers to take action upon spotting some perceived infringement of one’s identity.
Over the years, there have been a number of famous envelope-pushing cases: In a 1985 case, Woody Allen sued over a look-alike in a commercial; Bette Midler later sued over a sound-alike in a commercial; Vanna White brought a VCR manufacturer to court in 1991 after it depicted in a commercial a futuristic Wheel of Fortune host as a robot in a blond wig; in 1993 the actors who played Norm and Cliff in Cheers sued Paramount Pictures for licensing look-alike robots at airport bars around the world; in 2001, the estate of the Three Stooges won a suit filed against a celebrity lithographer for depicting them as “art” on T-shirts; and in 2007, Major League Baseball lost a suit against a provider of fantasy sports games over the use of names and statistics of its ballplayers.
In recent months, the group No Doubt sued video game publisher Activision because it was troubled that game-players could make lead singer Gwen Stefani’s avatar do obnoxious theatrics—like singing about sleeping with prostitutes. The rapper 50 Cent sued Taco Bell over an unlicensed promotion where the fast-food chain asked him to change his name for one day to 79 Cent, 89 Cent or 99 Cent—the cost of its menu items. And, perhaps most infamously, Lindsay Lohan sued E-Trade over a Super Bowl commercial that depicted a “milkaholic” baby named Lindsay, who the actress claimed had been based on news of her troubles with the law.
Many lawyers complain that pursuing a lawsuit on publicity right infringement grounds has advantages over what might be more appropriate claims. As opposed to a trademark lawsuit, for example, a plaintiff doesn’t need to prove consumer confusion. And as opposed to a defamation claim, there’s no added legal burden for being a public figure.
Just as important, in many states such as California, defendants often must pay attorney fees to the plaintiff if a claim is successful.
“That’s pretty delicious,” says Neville Johnson, an entertainment lawyer in Beverly Hills whose recent publicity rights cases include representing the guy who used to be “Mr. Clean” and the world’s No. 1 Buddy Holly impersonator. “The more you fight us, the more you’ll have to dig into your pocketbook. This certainly represents a growth area for our firm.”
It does for Faber as well. It’s not a coincidence that one of the world’s foremost experts on the value of a celebrity endorsement wound up in Indiana. Faber started out as a law clerk at CMG Worldwide, a rights management company that was instrumental in getting the state to pass one of the most generous publicity laws in the nation.
“I would lead some of the other clerks at the firm, showing them how to go into the trenches,” he says. “When you’re delivering a legal warning, you’re not bringing good news to the recipient and you need to learn how to hold your own. You don’t want to make the situation worse, but at the same time, you want to convey that you mean business.”
Faber rose quickly at CMG, becoming vice president of business legal affairs and in 2003, at the age of 30, president of the company. He added several marquee names to the firm’s hefty cli ent base, including the estates of Princess Diana, Ella Fitzgerald and Kurt Cobain.
In 2006, he left CMG to found the Luminary Group, another celebrity licensing company in Indiana, and later joined McNeely Stephenson Thopy & Harrold, where he is of counsel.
Indiana law forbids corporations from practicing law, but in becoming affiliated with both firms, Faber has figured out a way to provide clients with both licensing and legal representation.
The third leg of his tripartite career involves providing expert testimony for other attorneys pursuing—or defending—publicity rights claims, often in very big trials.
For example, in 2004 Motley Crue bassist Nikki Sixx sued a skateboarding magazine and Vans shoe company for violation of his publicity rights. Sixx was photographed at the publication’s “skater of the year” ceremony and the image made its way into a feature spread sponsored by Vans. Sixx claimed the defendants needed his permission to do this.
The trial was televised on Court TV (which is now TruTV). An expert for the defense claimed that Sixx’s endorsement wasn’t worth much since the glory days of Motley Crue had come and gone. As the expert witness for Sixx’s camp, Faber argued that Sixx was hardly a washed-up rock star, pointing to a best-selling autobiography and a top-rated reunion tour. The jury believed Faber and awarded Sixx more than $600,000 in damages.
Faber’s firm also represented the family of Jim Braddock, the Depression-era boxer who defeated heavyweight champion Max Baer in one of the biggest upsets in boxing history. When the firm learned that Universal Pictures was planning on making a film, Cinderella Man, about Braddock’s life, it approached the studio about forking over some money to the family.
A common assumption is that the law allows those in entertainment and media to write stories and make motion pictures about public figures without much trouble, but Faber notes the boundaries between commercial and noncommercial speech get more gray by the day. A studio like Universal might make product placement deals for its films, or create promotional tie-ins with other brand companies. Doing so, however, may make a movie more like an advertisement, which might give rise to a claim that a studio is infringing the publicity rights of a deceased celebrity like Braddock.
“I might have a discussion and a spirited debate” with a studio, he says. “I’ll tell [studio executives], ‘Don’t assume you know what my requirements are. It may not be $20 million like you’re paying your leading man, but I see you’re paying a lot for the catered breakfast. A lot of money is flying around.’ A lot of people aren’t as risk-tolerant as the producer, so it’ll usually settle.”
Universal ultimately hired the Braddock family as consultants for Cinderella Man.
CHILLING FREE SPEECH
Episodes like these make some defense lawyers cringe. Kelli Sager, chair of the media practice group at Davis Wright Tremaine in Los Angeles, is currently defending video game publisher Electronic Arts against former NCAA athletes claiming commercial use of their images in sporting events. Sager estimates that for every case that’s filed, there are dozens more claims made. “What we’re seeing in court is just the tip of the iceberg,” she says.
Some worry that potential claims may hurt innovation in the media marketplace and chill free speech. The primary concern is whether traditional handicaps that have prevented public figures from suing the media are withering away thanks to generous publicity right protections.
Nancy Wolff, a partner at Cowan, DeBaets, Abrahams & Sheppard in New York City, says she’s concerned with new laws debated in states like New York that confer broad publicity rights to individuals. She wonders how it may affect traditional publishers who wish to adapt to the digital age.
“A lot of our law was written in the time of print newspapers and documentary films,” Wolff says. “But let’s say a digital newspaper wants to make an information game for the iPad full of clips of newsworthy people. Or let’s say a news website starts embedding advertising. If publications have to start clearing the rights of every recognizable person, I’m sure we’ll never see a lot of very innovative news products.”
Paul Levy, an attorney with the Public Citizen Litigation Group in Washington, D.C., agrees and says he’s noticed a bunch of recently filed publicity rights lawsuits that seem to be “defamation claims in disguise.” As an example, he cites the case of the Chicago-based investment banking firm Houlihan Smith & Co., which got a temporary restraining order in May to muzzle a website that hosted critical commentary of its business. The plaintiff argued that the content was infringing the publicity rights of its employees. However, the court later denied an injunction and the website moved for summary judgment. Houlihan Smith then dismissed its complaint.
Because publicity rights guard against the misappropriation of someone’s “likeness,” an amorphous concept to be sure, plaintiffs can potentially stop offensive speech even in fiction, as long as they find something contained within that’s identifiable.
Just days before The Hurt Locker won best picture at this year’s Academy Awards, for example, a self-described Iraqi war hero filed a lawsuit claiming the story of an Army bomb squad was a thinly veiled account of his own life story, violating his rights of publicity and defaming him in the process.
These types of cases are fairly novel, but they have been showing some preliminary success.
Recently, Grammy-winning singer Sam Moore filed a suit contending the 2008 film Soul Men violated his publicity rights in its depiction of a troubled 1960s soul singer much like himself. In May, a federal judge in Tennessee refused to dismiss the lawsuit, declaring that a film about the life story of a public figure isn’t necessarily protected under the First Amendment.
The decision provokes an angry reaction from Hollywood attorney Bert Fields, who represents the defendants in the Soul Men case. Fields, who has represented his fair share of A-list stars—including Tom Cruise and Nicole Kidman—as plaintiffs in such suits, disputes the Tennessee decision.
“I think it’s quite clear you can’t protect the life story of a public figure this way,” he says. “That’s going too far.”
As in copyright infringement cases, defendants in publicity rights claims often try to show that commercial use of a celebrity is a transformative work of expression, and thus exempted. And the outcome of the case can often hang on a judge’s subjective notion about the nature of art.
For example, in 2003 the California Supreme Court rejected a publicity rights claim brought by two musicians, Johnny and Edgar Winter, who were caricatured in a DC Comics series as “villainous half-worm, half-human” characters. The judge found the work to be distinctive enough to qualify as an original, transformative creation.
But just two years before, in the same court, another judge found charcoal drawings of the Three Stooges to be too derivative.
“From the case law, we know that charcoal images of actors on T-shirts are not sufficiently transformative, but distorted, half-human, half-insect cartoon characters based upon musicians are,” says Michael Garfinkel, a partner at Venable in Los Angeles. “There is obviously a large gap in between. Without more guidance, the alleged infringements will continue to be judged on a case-by-case basis.”
There are a lot of reasons publicity rights battles seem to be growing: more laws, plaintiff-friendly jurisdictions, no consistent bright-line rules about what plaintiffs have to show, and a newfound sensitivity prompted by the digital age.
Lawyers representing celebrities say they are under more pressure than ever to find a claim that helps them protect a client’s reputation from commercial dilution.
“A number of the managers of the artists we represent troll the Internet looking for infringement,” says Howard King, a partner with King, Holmes, Paterno & Berliner in Los Angeles who recently brought a publicity rights claim against Rolling Stone magazine for hawking T-shirts showing prominent musicians. “A typical call I get is that Mr. X is doing such and such on his website. Can I stop it? They don’t tell us what theory to pursue; they just say stop it. Technology is so instantaneous that anyone can set up a Google alert and discover what that tire store in Omaha is trying to do.”
Faber himself says he does “Internet sweeps,” looking to see who is using his clients’ names in meta tags to drive traffic. The boundaries between commerce and speech are collapsing, he acknowledges, and Faber believes “the accessibility of the Internet is behind much of the phenomena” of more and more publicity rights disputes.
Faber also acknowledges much of the criticism from First Amendment attorneys as merited and agrees there’s a slippery slope when judges have to determine whether individual commercial uses of a celebrity’s likeness are sufficiently transformative. He says he’ll often get into conversations with friends in the advertising business who worry about their liability on claims.
Not that he offers any apologies.
“Celebrities make a lot of money on their image and there are a lot of people trying to gain unfair advantage by refusing to take out a license,” he says. “Fortunately, it’s hard to hide under a rock these days.”