Right of Publicity

Can You Learn Anything from Monster Energy’s Run-In with the Beastie Boys?

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The dispute that led to the legal battle between the Beastie Boys band and Monster Energy Company (“Monster”), involved Monster’s use without permission of songs by the Beastie Boys and verbal references to the band and a member, Adam Yauch, in a promotional video. Monster’s negligible music licensing procedures were strongly criticized by the trial judge. The one-sided victory of the Beastie Boys for copyright infringement and false endorsement has led to Monster being found financially liable for its misjudgment.

In an earlier blog [Justin Bieber et al], I considered the misuse by one musician of the works of another. The Beastie Boy’s case gives guidance to business owners who wish to incorporate the intellectual property of others in their marketing and other creative endeavors with impunity.

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What Do Justin Bieber, Usher Raymond, Robin Thicke, Pharrell Williams and Sam Smith Have in Common?

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Music concertJustin Bieber, Usher Raymond, Robin Thicke, Pharrell Williams and Sam Smith have all recently been challenged by claims of copyright infringement based on allegations that they incorporated other people’s music into their recordings. If celebrities can be found liable for copyright infringement and ordered to pay millions of dollars, what should non-celebrity musicians and producers do to avoid a similar fate?

In the case involving Bieber and Usher [Some Background], musician Devin Copeland alleged that they had used material from his 2008 song titled “Somebody to Love” in their 2010 hit with the same name. The trial judge granted Bieber and Usher’s motion to dismiss the case on the grounds that no reasonable jury could find the two song sufficiently similar to find the duo liable for copyright infringement. However, on appeal in 2015, the Fourth Circuit found the two songs to be “cohesive wholes, without distinguishing between protected and unprotected elements, just as the works’ intended audiences likely would encounter them in the marketplace,” and reached the opposite conclusion. The case has now been sent back to the trial court, which forces Bieber and Usher to settle or face a jury trial.

After being contacted by the family of Marvin Gaye, Robin Thicke and Pharrell Williams sought a declaratory judgment that their 2013 song, “Blurred Lines,” did not infringe the copyright in Gaye’s 1977 hit “Got to Give It Up.” The heirs of Marvin Gaye brought counter-claims of copyright infringement. The matter survived a Williams/Thicke motion to dismiss and was sent to a jury. In 2015, the jury found that there was substantial similarity between the two songs and the Gaye family was awarded $4 million in actual damages and $3.38 million in lost profits. [More Detail] The question as to whether the Gaye Family will also be granted injunctive relief (i.e., preventing Thicke/Williams from reproducing, performing, etc. “Blurred Lines” and impounding existing copies of the song) remains open, as it appears that neither side is prepared to give up the fight.

By contrast, in 2014, a potentially litigious dispute between Sam Smith, a British soul singer, and Tom Petty, an American folk rocker, was avoided. Soon after the release of “Stay With Me,“ by Sam Smith, his publisher was contacted by the publishers of ”Won’t Back Down,” co-written by Tom Petty and Jeff Lynne, who asserted that the choruses in the two songs were similar. By way of defense, Smith said, “It was a complete accident. I am 22 years old…. I’ve never listened to that song.”  [Smith’s Quote]

We will never know whether Mr. Smith’s protestations of “no access” (a key element in proving copyright infringement) to the Petty song would have carried any weight with a jury because the parties entered into a settlement with Smith acknowledging the similarities between the two songs, giving Petty/Lynne writing credit and 12.5 percent of the royalties from “Stay With Me.”

The outcomes from these scenarios offer guidance for song writers, performers and producers:

• Because music is easily accessible over the Internet and other media, expect that if there are similarities between your work and that of another, you will hear about it.

• If you are in doubt about whether your song is derivative of someone else’s, then consider testing it prior to public release against the song in question before an audience composed of likely intended consumers.

• If you know that you will incorporate the work of another in your song, then obtain a license to do so. The fee you pay before your song becomes famous will most likely be far less than the damages you will pay after it becomes famous.

• If it is your idea to create an “homage” to another performer or to recreate a genre, then consider carefully how you go about composing the work. It is one thing to write and perform music in a certain genre or the performance style of a particular singer, and quite another to incorporate actual material from a work or imitate the sound of the recognized performer. In addition to claims of copyright infringement, you could face the charge of violating the celebrity’s right of publicity. Bette Midler successfully sued Ford Motor Company for violating her right of publicity by using without her permission a sound-alike in a TV commercial. [Midler v Ford Details]

• Be aware that if your work is challenged, during the course of a trial, it will be subject to minute examination.

• If your work is challenged, consider the path laid out by Sam Smith, find a way to settle the matter.

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InBasketball  earlier blogs, I raised the alarm about improperly using a famous personality in the advertising of a business.  If you need a clearer example of how even a large urban supermarket chain can stir up a hornet’s nest when they try to coast on the fame of a celebrity, consider the debacle encountered by Jewel Food Stores (“Jewel”) when it placed a full-page ad in Sports Illustrated congratulating Michael Jordan for his induction into the Naismith Memorial Basketball Hall of Fame.  The “Michael” was not amused and sued them for $5 million for misappropriation of his identity under the Illinois Right of Publicity Act, the Illinois Consumer Fraud and Deceptive Business Practices Act and the Lanham Act (the principal federal trademark law).

The Seventh Circuit Court of Appeals concluded that the ad was commercial speech, not noncommercial speech which would be fully protected by the First Amendment as alleged by Jewel and, therefore, the trial can proceed on the merits, doubtless arriving at a decision in favor of actual and possibly punitive damages for Mr. Jordan, if a settlement is not reached sooner.

To understand why it is not a good idea to try to hitch your business to a “star” by including the name, image or likeness of a celebrity in any of your products (i.e., website, domain name, T shirts) or marketing materials, it is important to recognize that famous people, even deceased ones, can own rights in the commercial exploitation of their own celebrity status.  Moreover, this right is not limited to the United States, but is recognized in other countries, an important consideration if you are doing business over the Internet.  (See list of states and countries protecting the Right of Publicity.)

Basically, celebrities have property rights in their fame and, therefore, they decide how to exploit it commercially.  Jewel argued that it was not trying to benefit commercially from the advertisement, but rather were exercising its First Amendment Right to congratulate Michael Jordan.  The Seventh Circuit was not persuaded given that Jewel’s logo and marketing slogan were conspicuously linked to Mr. Jordan in the text of it’s ad’s congratulatory message. (See the Seventh Circuit’s opinion for full factual details and analysis.)

                While it is true that commercial speech is entitled to protection under the First Amendment, nonetheless, it can be subjected to governmental restriction unlike the more favored full protection accorded to noncommercial expression.  That is why in this instance, because the Seventh Circuit has concluded that Jewel’s ad was commercial speech, the company finds itself in the unhappy position of getting more than it bargained for.

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One good method for a trade association, charitable organization or for-profit entity to expand its mission while simultaneously generating additional revenues is to establish a certification program. 

The entity wishing to set up a certification program (the “certifier”) would require an “applicant” wishing to acquire new skills to demonstrate competence in a particular field by meeting the standards set by the certifier.  Once a course or test was successfully completed, the certifier would then allow the applicant to use the certifier’s certification mark, in other words its “seal of approval.” (Think of the quintessential “Good Housekeeping Seal of Approval.”)   

By adopting a certification program, the certifier has taken steps not only to improve the standards of performance within its area of interest but also to create a new source of revenue generated from any training or monitoring it requires to maintain quality controls.

The breadth of activity that lends itself to the adoption of a certification program is huge.   Based on a recent review of the records of the United States Patent and Trademark Office (“USPTO”), there were more than 10,000 live records for applications and registrations of certification marks.  (Examples of certification marks) This suggests that many organizations recognize the value of running such programs.

If your company is considering incorporating a certification program into your general mission, a critical element is the selection of the designation (i.e., the certification mark itself), which a successful applicant may use to show its level of competence. 

So. . . what exactly is a certification mark?  It can be any word, name, symbol, device or combination of same which is used by a person other than the owner of the mark to certify (a) to regional or other origin; (b) to the material, mode of manufacture, quality, accuracy or other characteristics of such person’s good or services; or (c) that the work or labor on goods or services was performed by members of a union or other organization. . . . .” (Applicable USPTO regulations.) 

A distinct message is conveyed by a certification mark which differs from that of an identification mark that informs the consuming public of the source of the goods or services which they are buying (GM versus Ford; Apple versus Samsung).  When the consumer sees a certification mark, the mark signifies that the goods or services have been examined, tested or inspected by someone other than the entity displaying the mark and that the independent standards of the marks’ owner have been met.

In my next blog, I will cover some basics principals to aid in the design and protection of your organization’s certification mark.


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guitarA recent opinion by the Ninth Circuit Court of Appeals concerning a dispute over the use of trademarks associated with Jimi Hendrix, even though deceased, should remind those thinking of using the images, likenesses or names of celebrities, whether alive or dead, to proceed with caution.  

In an earlier blog I discussed a court decision in which the football celebrity, James Brown, did not fare well with respect to the First Amendment rights of a game developer using his likeness as an avatar.(Link to prior post.) 

But in Experience Hendrix LLC v Hendrixlicensing.com Ltd,  the court ruled in favor of the plaintiff who holds trademarks that it uses to license and sell products related to Jimi Hendrix. (See full opinion.)

Andrew Pitsicalis and his company, Hendrixlicensing.com, LLC, the defendants, (collectively “Pitsicalis”), were licensing Hendrix-related merchandise.  In contrast to the facts in the James Brown case, the defendants here were not creating anything new.  Rather, Pitsicalis sought to cash in on the fame of Jimi Hendrix by relying on an argument that, because the celebrity was dead, the heir did not have post-mortem publicity rights and therefore could not prevent Pitsicalis from trading in original images and likenesses of Mr. Hendrix because there was no per se infringement of the plaintiff’s trademark rights. 

Pitsicalis’ argument did not prevent a jury from hearing the case and finding for the plaintiff.  The trial court entered a permanent injunction in favor of the plaintiff.  However the judge gave Pitsicalis somewhat of a reprieve by reducing the jury’s damages award, which was in excess of $1.7 million, to $60,000 and by limiting the attorney fees award to one tenth of the requested $500,000. 

On appeal, the Ninth Circuit Court of Appeals, while remanding the case for a new trial on damages, telegraphed its willingness to allow the higher jury award and suggested that the trial court reconsider its decision about attorney fees.

From a business person’s point of view, this case screams “Be Careful” if you are considering the use of images, likenesses or names of the famous, whether dead or alive.

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     If you plan to create a work that will include references to famous people, you may well ask will you run into challenges for using such references. A recent 9th Circuit decision offers guidance as to whether your use will withstand the challenge by a famous person who claims you are violating his or her trademark-related rights.

            Brown v. Electronic Arts, Inc., involves James “Jim” Brown (“Brown”), the famous football player, who sued Electronic Arts (“EA”), the manufacturer distributor and seller of the Madden NFL series of football video games.  http://caselaw.findlaw.com/us-9th-circuit/1640518.html?DCMP=NWL-pro_ip  The video games allow users to control avatars representing professional players, and to participate in simulated games.  Some versions of the games included likenesses of Brown.

            Brown’s claims under the Lanham Act, the main federal trademark law, are of particular interest here.  Generally with trademarks, the basic test a mark’s owner is asked to show is whether use of the competing mark is likely to cause confusion in the public’s mind, and Brown’s basic argument was that EA’s use of his likeness without his permission was likely to cause confusion in the mind of the public as to whether he endorsed the video games. 

            However, there is always the understanding that granting exclusive use of marks limits constitutionally protected free speech.  In evaluating the competing interests of protecting the public from deception and protecting freedom of expression, when the identifying material in question appears in an expressive work, Courts tend to shift the balance toward First Amendment considerations.

            Because EA’s videos are considered expressive works, the Court considered whether EA’s use of Brown’s likeness in the videos was relevant.  Given EA’s professed interest in creating a high level of realism for the various football teams portrayed, inclusion of Brown’s likeness in the recreation of the ’65 Cleveland Browns team was relevant.

            While the takeaway from the Brown v. EA decision is that if inclusion of a famous person’s likeness in an expressive work is relevant, you are likely to withstand a challenge to such use under federal law.  However, it is important to keep in mind, despite the dismissal of Brown’s case in federal court, Brown was not foreclosed from pursuing claims under California law for invasion of privacy and unfair businesses practices.  

Do Anti-SLAPP Laws Offer Any Useful Protection to Creators of IP Content?
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If you are in the business of communicating ideas which, needless to say, you hope are of general interest to the public, you could find yourself on the wrong end of a lawsuit.  This is because in the course of “doing your job” you also may be stepping on the toes of others, whether they be famous or infamous.  Keep in mind, depending on who is the subject of your article or whose likeness appears on your product, they could object under the legal theories of defamation, invasion of the right of privacy or the right of publicity, intentional infliction of emotional distress, or tortuous interference with contract.

Because of the perceived threat that a costly lawsuit could have on those asserting their First  Amendment rights to express their ideas or participate in public debate, twenty-eight states have passed laws that offer varying levels of protection in what has come to be called “Anti-SLAPP Statues.”  SLAPP, shorthand for the objectionable lawsuits, stands for “strategic litigation against public participation.”  (See  http://www.legal-project.org/149/anti-slapp-statutes-in-the-us-by-state for a list of state laws.)

Generally, where such laws exist, a defendant faced with what she believes is a SLAPP suit, namely trying to discourage her from speaking her mind, could file with the court a motion to strike the lawsuit.  If she then shows that the lawsuit arose due to speech or actions that were protected under the Anti-SLAPP act, mainly First Amendment expressions of idea, then the plaintiff is suddenly placed in a defensive posture.  To overcome the Anti-SLAPP motion, the plaintiff must show the probability that he will prevail on the merits.  However, because under some of these laws, discovery is frozen, the plaintiff is not necessarily in a good position to make such a showing.

While the principal reason for the enactment of Anti-SLAPP laws was in reaction to lawsuits brought to discourage public discourse about legislative, executive or judicial proceedings, their breadth, especially in the case of California’s statute, could offer some protections to those who operate in the commercial arena.  In order to put some meat on the bones, consider the following real life cases:

Hallmark Cards adopted a birthday card showing a caricature of Britney Spears as a waitress based on her appearance in a reality show and quoting her USPTO trademarked phrase, “That’s hot.”  While Hallmark was able to meet the qualifications that its activity was “speech” and was addressing a “public issue,” its motion to strike was denied.  This was because Ms. Spears was able to show the likelihood of success to her claim that Hallmark violated her right of publicity and Hallmark could not overcome this with any affirmative defense.  So, in this case the “right of publicity” trumped caricature.

Another situation involved ABC’s 20/20 Show which broadcast a story questioning the transparency of certain Christian ministries.  In the piece, ABC used a film clip of televangelist Dr. Frederick Price, who preaches “prosperity gospel.”  In the clip Dr. Price made the following statements, “I live in a 25-room mansion. I have my own $6 million yacht.”  While these were Dr. Price’s actual words, it turns out that he said them in the context of telling a parable.  He later sued ABC for defamation.  ABC’s Anti-SLAPP motion to strike was unsuccessful because, while it was true that Dr. Price was rich and had made similar statements about himself, the quotation that ABC used was taken out of context.  In this case, ABC would have been better served if it had found a quote from Dr. Price speaking about himself.

These cases illustrate that while it is important that the First Amendment Right encouraging public discourse be protected, there is another important competing interest, namely to allow people to bring their good faith grievances to court.  If you are aware of this balance of interests, you will be in a better position to speak out, even if your speech has a for-profit element to it as in the Hallmark case.