Guide Through the Legal Jungle

A Cautionary Tale: Contest Sponsor Loses Avoidable Lawsuit

What Led to the Lawsuit Against the Contest Sponsor?

In spring 2009, Prairie Ridge Media, publisher of the McHenry County Living magazine, sponsored the Gardens in the County gardening competition open to residents of McHenry County, Illinois. Karen Trannell was a finalist in the gardening competition and Prairie Ridge sent a photographer to her home for a photo shoot. Prairie Ridge used photos depicting Ms. Trannel in her home garden in two places:

• the autumn 2009 issue of McHenry County Living magazine which featured photos of the gardening competition winners and their gardens

• On the cover of a marketing brochure used by McHenry County Living magazine to solicit advertisers

Prairie Ridge did not obtain a release from Ms. Trannel for either use of her image. Ms. Trannel sued Prairie Ridge alleging unauthorized appropriation of her likeness and violation of the Illinois Right of Publicity Act.

What Happened in the Right of Publicity Lawsuit Against the Contest Sponsor?

An Illinois court concluded that Prairie Ridge’s use of Ms. Trannel’s photo in the McHenry County Living magazine segment featuring the gardening competition qualified as news and was, therefore, not a violation of Illinois right of publicity laws. While the court opinion does not discuss implied consents, in my view, Ms. Trannel gave an implied consent for the use in the magazine since she allowed the photographer to take her picture and knew those photos would be used in connection with the gardening competition.

The second use is different. The Illinois court concluded that the use of Ms. Trannel’s photo in the marketing brochure was a commercial use and did violate the Illinois Right of Publicity Act since Prairie Ridge used the photo without Ms. Trannel’s written consent.

How Much Did those Right of Publicity Mistakes Cost the Contest Sponsor?

$2,000 in Damages. Since Ms. Trannel could not prove actual damages or profits from the unauthorized use of her image, her damages were limited to statutory damages - $1,000 for herself and $1,000 for her daughter who also appeared in the photo.

No Punitive Damages. The court denied punitive damages to Ms. Trannel finding that Prairie Media had not willfully violated Ms. Trannel’s publicity rights. One of the things Prairie Media did right was to stop using Ms. Trannel’s photo in the marketing brochure after Ms. Trannel complained about the use. That remedial action had significant impact on saving Prairie Media from punitive damages.

Legal Fees Largest Expense. $2,000 is not a huge loss for Prairie Ridge – that is, until you factor in legal fees. The legal proceeding was fully litigated before the Circuit Court of McHenry County and then appealed to the Appellate Court of Illinois. That had to be costly. My guess is tens of thousands of dollars. To top that off, there is the outstanding possibility that Prairie Media may also have to pay Ms. Trannel’s attorney fees. The appellate court sent the matter back down to the lower circuit court to determine whether Prairie Media should be made to pay Ms. Trannel’s attorney fees.

How Contest Sponsor Could Have Easily Avoided this Right of Publicity Lawsuit?

From Prairie Media’s perspective, this lawsuit should have never happened! It was so easily avoidable. Contest rules form a binding contract between the contest sponsor and the contest entrant. A sentence such as the following in the Gardens in the County contest rules could have prevented this lawsuit:

Except where prohibited, participation in the contest constitutes entrant’s consent to contest sponsor’s use of entrant’s name, image, and/or biographical information for promotional purposes in any media, worldwide, without further payment or consideration.

Balough Law Offices, LLC, which represents Ms. Trannel in this matter, kindly provided me with a copy of the written rules used by Prairie Media for the Gardens in the County contest. While shorter than most contest rules, Prairie Media’s contest rules did contain some important terms useful for protecting contest sponsors such as the qualifications of the judges and the criteria on which the winners would be selected. Unfortunately for Prairie Media, the rules did not include a publicity release.

Since there was no publicity release in the contest rules, why, oh why, did Prairie Media not obtain a written release when the photographer went to Ms. Trannel’s home? Written releases need not be complicated or long. A very simple written release can be effective. In Prairie Media’s situation, one sentence such as the following likely would have saved Prairie Media from a lot of legal headaches and expense:

I give Prairie Media my permission to use my image and name in the McHenry County Living magazine and in connection with marketing the magazine in all media and territories.

The case is Trannel v. Prairie Ridge Media. You can read the appellate court’s full decision here.

Senate Candidate Robin Carnahan’s Legal Battle with Fox

An ad for Robin Carnahan’s U.S. Senate campaign uses about 30 seconds of Fox News Network footage from reporter Christopher Wallace’s interview with Roy Blunt. Blunt is Carnahan’s opponent for the Missouri seat in the U.S. Senate. Fox filed a lawsuit against Robin Carnahan for Senate, Inc. on September 15 with three claims:

Fox Claims that Carnahan Infringed the Copyright in the Fox News Footage

The Carnahan campaign has a credible fair use defense. The commercial provides political commentary, uses under 30 seconds from the interview; and should have little negative impact on Fox’s ability to continue marketing the footage.

Why Paris Hilton Won Her Lawsuit against Hallmark?

  Well, okay, Paris Hilton didn’t technically win the lawsuit. The parties settled – but only after Hallmark failed in its attempts to get the lawsuit dismissed. The terms of the settlement have not been disclosed. However, my bet is Hallmark made a monetary payment or other concessions to Hilton even though it’s doubtful that either party admitted wrong-doing.

What Did Hallmark Do?

Hallmark released a birthday card with an image of Hilton’s head super-imposed on a cartoon waitress’ body. The card has the words “That’s hot”, a catch-phrase Hilton often used in the reality tv show, Simple Life, and for which Hilton holds a trademark registration. In fact, the card re-creates a well-known scene from Simple Life.

Hilton sued Hallmark for violation of her right of publicity and other claims. I believe the right of publicity violation was Hilton’s strongest claim. To win a right of publicity claim, Hilton needed to demonstrate that her identity has commercial value (not hard for Hilton who licenses her name and persona for various products) and that Hallmark used her identity without her consent for commercial purposes.

Hallmark’s Defense

Hallmark’s defenses to Hilton’s right of publicity claim included transformative use and the public interest defense. Hallmark could not convince a 9th Circuit court to dismiss Hilton’s lawsuit on the basis of either defense. I’ll discuss the transformative use defense in greater detail.

When you transform a celebrity likeness, you add enough creative elements to the im¬age to express something new. If you are expressing something new with the celebrity’s image, the First Amendment protects your right to use the celebrity’s image. For example, a right of publicity lawsuit in which the transformative use defense succeeded involved Artist Rick Rush’s depiction of Tiger Woods in the visual artwork, The Masters of Augusta. 

Hallmark Card Not Sufficiently Transformative

The court did find differences between Hilton’s appearance in the Simple Life episode and the Hallmark card:

• Hilton’s uniform is different.
• The style of the restaurant is different (drive-through service rather than sit-down service).
• The food is different (burgers-and-fries rather than diner-style bacon and eggs).
• The card uses a cartoon drawing of Hilton’s body rather than a picture of Hilton’s real body.

Those differences were just insufficient for dismissal of Hilton’s lawsuit. In the court’s view, the basic settings of the card was the same as the Simple Life scene: Paris Hilton, born to privilege, working as a waitress.

Has E*Trade Violated Lindsay Lohan’s Publicity and Privacy Rights?

Lindsay Lohan, the star of Freaky Friday, Mean Girls and Bad Luck who has been troubled by substance abuse and an arrest record, alleges in a recently filed lawsuit that an E*Trade commercial violates her publicity and privacy rights.

The Offending Commercial

In the offending commercial, which first aired during the Superbowl, a baby boy explains to his girlfriend via video cam that he forgot to call last night because he was busy e-trading. When the girlfriend asks suspiciously whether the milk-a-holic Lindsay was at his house, another blond baby girl appears in the boy’s camera asking “Milk-a-what?” You can view the E*Trade commercial here.

How Lohan Wins Her Right of Publicity Claim

The Right of Publicity is the right to prevent others from commercializing or profiting from your identity. To win the lawsuit, Lohan must prove that the audience identified the Milk-a-holic baby as Lindsay Lohan. This could be a challenge as Lindsay is a popular name for baby girls and Lohan would need to show that she is widely recognized by use of her first name only.

However, celebrities have progressed with similar “long-shot” right of publicity claims. For example, Spike Lee temporarily stopped Viacom from using the name SpikeTV for a new network Viacom described as “unapologetically male, . . . aggressive and irreverent.” Lee submitted evidence indicating that he had a reputation for irreverence and aggressive¬ness and that a number of people would associate SpikeTV with Spike Lee. The parties eventually reached a settlement that allowed Viacom to use the SpikeTV name.

President Obama on Billboard – Why It’s Not Legal

At the White House’s request, the Weatherproof Garment Company has agreed to remove the Times Square billboard showing President Obama wearing a coat manufactured by the company. The picture of President Obama was taken during his November trip to the Great Wall of China. You can see the controversial billboard here.

When Are Images of Public Figures Okay?

It is permissible to use a public figure or celebrity’s image in an editorial context. That’s why we see images of public figures and celebrities in the news. It’s also permissible to use images of famous people in other non-commercial contexts. For example, artist Rick Rush’s limited edition print, The Masters of Augusta, featuring Tiger Woods historical victory at the 1997 Masters Tournament is a use of Tiger Woods’ image that is legal and is protected by the First Amendment – even though Tiger Woods did not consent to the depiction.

When Are Images of Public Figures Not Okay?

In contrast, using the image of a public figure or celebrity in an advertisement without consent is a violation of the person’s right of publicity. The right of publicity allows each individual to control and profit from the commercial value of his or her own identity. In my mind, the Weatherproof Garment ad is clearly commercial. Lucky for the Weatherproof Garment Company that President Obama is quite busy at the moment and has little free time to initiate a lawsuit.

My Personal Query about Times Square BillBoards

What is the deal with these Times Square billboards anyway? They seem to be a magnet for infringing advertisements. See my previous blog postings about the Naked Cowboy M&M billboard at Times Square and the Woody Allen American Apparel billboard (perhaps not right in Times Square but definitely in NYC).

American Apparel Could Have Predicted Woody Allen’s Right of Publicity Lawsuit

(Update: According to an article in the New York Times, the Allen vs. American Apparel lawsuit settled on the court room steps this morning for $5 Million.)

The trial for Woody Allen’s lawsuit against American Apparel is scheduled to start today, May 18, 2009, in New York.

Why is Woody Allen Upset?

American Apparel used still images of Woody Allen from the film Annie Hall on billboards located in New York City and Los Angeles and in internet advertisements. In the image, Allen is in full Hasidic Jewish attire and has a full mustache and beard. The billboard includes a Yiddish phrase translated to mean “The Holy Rebbe” and the words “American Apparel”.

American Apparel did not seek Allen’s permission prior to posting the billboards. As a result, Allen filed a lawsuit against American Apparel in the Southern District of New York federal court.

Allen’s lawsuit includes a claim under Sections 50 and 51 of the Civil Rights Law of the State of New York which allows you to sue someone who uses your name, portrait, picture or voice in New York for advertising purposes without your permission. The lawsuit also includes a claim under Section 43(a) of the Lanham Act which allows you to sue if someone falsely implies you endorse a product or service.

Is the Billboard a Commercial Use of Allen’s Persona

The outcome of the court battle will focus on whether American Apparel’s true intent behind the billboard was to advertise its goods or to parody Mr. Allen.

American Apparel CEO Dov Charney argues that the billboard did not have a commercial purpose and is a parody. At trial, he plans to explain how the use of the image from the Annie Hall film makes a social statement and addresses social issues. If the court accepts that argument, the American Apparel billboard could be deemed a permissible parody protected by the First Amendment – regardless of the lack of consent from Allen.

In its documents filed by the court, American Apparel says “It strains the imagination to identify what ‘commercial transaction’ is proposed . . . The images do not feature or refer to any of American Apparel’s products, and so do not offer anything for sale.”

Personally, I do not have to strain my imagination too much to see how a consumer could interpret the billboard as an advertisement. American Apparel is known for its avant-garde advertising style. I have certainly seen progressive commercial advertisements that do not prominently feature or mention the product or service they are advertising.

Not a Smart Move by American Apparel

Even if American Apparel meant for the billboard to be a non-commercial parody, plastering Woody Allen’s face on a billboard just isn’t a smart move for someone who doesn’t want to wile away many hours at the center of a litigation proceeding.

One of the top questions to ask yourself when evaluating the risk of using someone’s material or persona without permission is whether the person has previously objected to similar uses of his material. It is a good bet that someone who has been aggressive in protecting his rights in the past will continue to be aggressive in protecting his rights in the future.

Without even doing any research, I am aware of two lawsuits filed by Woody Allen relating to the unauthorized use of his images in a commercial context. There are probably more Allen lawsuits out there.

American Apparel is not a fledgling operation struggling to finance its “creativity” with personal loans and credit card debt. It is a publicly traded company with a cadre of experienced attorneys at its disposal. One conversation with his legal team should have told American Apparel CEO Dov Charney that Allen would not be a happy camper when he saw the billboards and that a lawsuit might be a consequence of the billboard campaign.

Similarities to the Naked Cowboy Case

The Allen case reminds me of the Naked Cowboy case about which I also blogged. Robert Burck, better known as the Naked Cowboy, is a street performer who sings while accompanying himself on a white guitar. He wears a white cowboy hat, white cowboy boots, white briefs, and nothing else.

Burck sued Mars, the company that manufactures M&M candy after it posted a Times Square billboard featuring an animated blue M&M playing a white guitar and wearing an outfit similar to Burck’s.

Like Allen’s current case, Burck’s case was also before the Southern District of New York federal court. And like Allen’s current case, Burck’s claims included a Section 50/51 right of publicity claim and a Lanham Act false endorsement claim.

Burck lost his right of publicity claim because Mars did not use an actual photograph or likeness of Burck. Instead, they dressed up an M&M like him. There’s no Section 50/51 protection for evoking aspects of a fictional character you play.

The court allowed Burck’s Lanham Act Section 43(a) false endorsement claim to continue. As part of that claim, Burck alleged that consumers seeing the advertisement might incorrectly conclude that Burck had endorsed M&M candy. According to the court, Burck’s allegation was plausible and merited a hearing at a trial.

Ultimately, Burck and Mars settled the lawsuit without a trial. The parties did not publicly disclose the terms of the settlement.

Can You Use Real People in Your Book or Film?

I’m often asked by writers and producers if it’s okay to talk about real people in a book, film, or other creative project - if the names are changed.

Changing the Names Is Not Sufficient

“Do the names need to be changed?” is not the best question. The more relevant question is whether the real people mentioned in your creative work are identifiable. You can identify someone even without using the person’s real name. For example, your readers or viewers might be able to identify the person through your mention of a nickname, geographic location, physical description, personality trait, or real-life events in which the person was involved.

If readers and viewers can identify the person discussed in your work, there is potential risk for defamation, privacy, and related claims. You should assess that risk and make your best efforts to minimize it.

Calculating the Risk of Using Real People

Your risk assessment will depend on several factors such as

• How did you acquire the information about the person?
• Are you adding fictional elements to any of the real-life events discussed?
• Are the portrayals flattering?
• Are the portrayals accurate?

Your risk assessment also depends on whether the people in your story are public figures or private individuals. Public figures have fewer privacy rights but stronger publicity rights. Also, to make a successful defamation claim, public figures must prove you made the false statement with actual malice. In contrast, a private individual need only prove you were negligent in making the false statement. While the distinction between actual malice versus negligence may sound like legal gobbledygook, the distinction often plays a pivotal role between winning and losing a defamation lawsuit.

My book, The Permission Seeker’s Guide Through the Legal Jungle, offers an in-depth discussion of defamation and privacy issues from the perspective of authors and other creative producers who want to stay out of trouble. The book also offers guidelines for minimizing the risk of defamation, privacy and similar claims through the use of annotated manuscripts, disclaimers, releases, and life story rights agreements. You can view the full table of contents for The Permission Seeker's Guide Through the Legal Jungle here.

Master of Ceremonies

A Guide Through the Legal Jungle Trivia Question

Which famous professional athlete sued unsuccessfully for the reproduction of his/her image in a collage featuring past winners of a prestigious sporting event?

1. Michael Jordan
2. Barry Bonds
3. Tiger Woods
4. Mary Lou Retton
5. Joe Montana

Duplicating and Selling Celebrity Images

A Guide Through the Legal Jungle Trivia Question

Leslie is an amazing sketch artist and avid Tom Cruise fan. She specializes in charcoal drawings, and recently drew an impressively realistic image of Tom Cruise’s face. The sketch is so precise that some even mistook it for a black and white photograph! To show what a fan she is, she copied the image of Tom Cruise onto a t-shirt for herself. She got many compliments on her t-shirt—so many that she decided to make t-shirts in bulk with the sketch printed on it. She sold over 1,000 t-shirts! Does Tom Cruise have a claim against Leslie?

1. No, Leslie is an artist and has a right to profit from her art.


2. No, Tom Cruise is a celebrity, and people have a First Amendment right to comment on celebrities through art and profit from their labor.


3. Yes, Leslie used Tom Cruise’s likeness for her personal profit without his permission.

The Case of the Naked Cowboy

If you’ve ever strolled through New York Times Square, you may have encountered Robert Burck, better known as the Naked Cowboy. The Naked Cowboy is a street performer who sings while accompanying himself on a white guitar. He’s called the Naked Cowboy because of his attention-getting costume. He wears a white cowboy hat, white cowboy boots, white briefs, and nothing else. You can view a video clip of the Naked Cowboy’s act here.

In April 2007, the company that manufactures M&M candy began running an animated cartoon advertisement on two oversized billboards located in the middle of Times Square. The animated cartoon features a blue M&M wearing a white cowboy hat, white cowboy boots, white underwear and playing a white guitar. Burck filed a lawsuit against the candy maker alleging that M&M has falsely implied that Burck endorses the product and that M&M has violated his right of publicity.