Guide Through the Legal Jungle

Obtaining Personal Consent and Release via Placard Notice. Does It Really Work?

Your organization is hosting a festival, a seminar, a book-signing, a musical concert – or other event that will attract attendees. You want to capture images of people enjoying your event – and then share those images in news reports about the event’s success, on social media, and in promotional pieces advertising next year’s event.

Do You Need a Personal Consent from Each Person Depicted?

The need to obtain consent varies with the circumstances and with each state’s law. For this blog posting, suffice it to say that while there are First Amendment and other circumstances in which consent is not required to use a person’s image, there is rarely any downside to having the person’s consent.

How Do You Obtain Consent from All Attendees?

Since having consent is preferable, how do you logistically obtain a release from the dozens, hundreds – maybe even thousands of people at your event? A posted notice might function as a practical and effective method of obtaining those consents. Pictured at the opening of this blog post is one such notice recently used at a community festival.

Is Consent Via Posted Notice Enforceable?

Personal consents and releases come in various forms - written, verbal, explicit, and implied. Each form can potentially be valid and enforceable. The “consent via placard notice” method takes advantage of the implied approach to personal consent. When a person realizes he is being photographed or filmed for a particular purpose and makes no objection, the person has provided implied consent to his depiction for that purpose.

While implied consent can be enforceable, it is not appropriate for every use and every situation. Here are some general tactics organizations can use for maximizing the effectiveness of consent via placard notice:

Determine whether Attendees Have the Capacity to Consent. For example, minors do not have the capacity to give consent. Any consent from a minor requires the consent of the minor’s parent or guardian. If your event is likely to attract many unaccompanied minors (e.g., an event attracting teenagers), consent via placard might not produce optimal results.

Give People Reasonable Opportunity to Decline. This means people need to see the notice. Hence, place the notice in a conspicuous location to maximize chances people will see it as they enter the venue.

Also, for the consent to be enforceable, people should have a reasonable opportunity to decline participation. If the person has paid $200 for a ticket to a show and declining to enter beyond the posted notice means not seeing the show and forfeiting the $200, the person has an argument that the consent is not valid.

Use Images in an Incidental Manner; Not a Featured Manner. Ideally, you will use the images in a manner that focuses on the event and in which the people depicted function as background – incidentally or casually captured on camera as part of covering the event. Your use cannot be a disguised advertisement for the sale of a product or service. You might seek additional legal review to evaluate the risk of a defamation claim if the image depicts the subject in a manner that might be embarrassing.

A case involving Ohio news anchor Catherine Bosley illustrates when use is featured and commercial rather than incidental and when implicit consent is insufficient. While on vacation in Florida, Bosley participated in a wet-t-shirt contest. Subsequently, images of Bosley at the event and in various stages of dress along with her name were used on the cover of a WildWetT video, in the members-only portion of an adult entertainment website, and in direct promotion for other sexually-related goods. The defendants claimed to have the anchor’s consent for use of the images since written notices informing the wet-t-shirt contestants of the future commercial use of their images had been placed around the dressing room, stage, entrances, and exits of the event. The court ruled that the defendants’ use was a commercial use and, thus, under Florida law, required at a minimum Bosley’s explicit verbal consent in order to be valid. (The case is Bosley v. WildWetT.com, 310 F. Supp.2d 914 (N.D. Oh. 2004)).

Legal Issues for Avatars and Virtual Reality. Part One. The Right of Publicity.

On Thursday, March 3, 2016, I participated in a panel discussion on Virtual Rights and Avatars organized by the 2016 DC Independent Film Festival and hosted by the Congressional Entertainment Industries Caucus at the Congressional Cannon House Office Building.

An avatar is an animated or graphical representation of a real person. During the panel, my remarks focused on rights clearance issues and risk-minimizing techniques for producers using avatars in their creative works. Although the target audience consisted of filmmakers, the information is also relevant to anyone incorporating real people into creative media or commercial advertisements. Here is a summary of my presentation.

Like any other film maker or producer of creative materials, filmmakers using avatars need to clear rights. Proper rights clearance means determining there is no material in your film that is going to get you sued or prevent distribution of your film. The most typical rights a filmmaker clearing rights will be concerned with are copyrights, trademarks, and, if the film portrays or mentions real people, the right of privacy, the right of publicity, and libel claims.

Technology rights represent a unique right that filmmakers using motion capture need to consider. If you are using motion capture technology for your film production, you want to make sure you have the right to use that underlying technology. As an example, the Michael Jackson hologram creation shown at the 2014 Billboard Awards and the facial animation technology used in movies like Deadpool (pictured) have sparked patent infringement and copyright claims saying those producers didn’t have the right to use the technology.

What Is the Right of Publicity?

Right of publicity claims are perhaps the most common type of claim made against producers introducing animated or virtual characters based on real people – and that is the right on which my remarks focus.

The right of publicity is a person’s right to commercialize or profit from his persona.

The right of publicity is why you may not use Woody Allen’s picture to advertise your clothing line. An activity that cost American Apparel a $5 Million settlement fee.

The right of publicity is why you should not post to Facebook or Twitter an image of Katherine Heigle carrying bags of your merchandise as a way to promote your chain of drugstores. That activity resulted in a lawsuit seeking $6 Million in damages from Duane Reade. (Heigle dismissed the lawsuit against Duane Reade after the two parties settled on terms that were confidential but “mutually beneficial”, according to Ms. Heigle’s attorney.)

And the right of publicity is why you may not use the name, image, voice or other identifying characteristic of any famous person – or even non-famous person – in a commercial context without their permission.

Non-Commercial, Non-Advertising Context

But can one legally use elements of a person’s identity in a non-commercial, non-advertising context? Such as for the basis of a character in a film or video game. The short answer is sometimes, you can – depending on the specific circumstances of your use. The longer answer is a bit more complicated.

There is a balancing act between an individual’s right of publicity on one side and a producer’s First Amendment rights on the other side. You may not use the right of publicity, copyright, trademark, or any other intellectual property rights as a means to stop people from expressing themselves, from giving their opinions, or from otherwise using their First Amendment rights.

The tricky part to the above proposition is determining just how to strike that balance. Courts have been inconsistent in their approaches to weighing publicity rights against First Amendment rights. There are at least five different tests used by the courts. I provide an oversimplified explanation as well as examples of each below.

The Transformative Use Test considers whether the depiction is a literal recreation of the person or whether the depiction includes original elements that transform the result into something other than an exact imitation of the person.  For example, Electronic Arts did not have a First Amendment right to depict college football players in NCAA video games (pictured on right) and, at least according to the Ninth Circuit Court of Appeals, Electronic Arts likely does not have a right to use avatars of NFL players in the Madden NFL video games. (More on the Madden case below.) In the court's view, recreating the athlete in the setting in which he acquired fame is not sufficiently transformative to merit First Amendment protection.

The Transformative Work Test. While some courts have focused only on the depiction of the person when evaluating transformation, other courts have focused on the work as a whole – the whole video game or the whole film.   When looking at the whole work, a California court found that it was permissible for Activision Blizzard to use a likeness of Manuel Noriega in the video game Call of Duty: Black Ops II (pictured on left). In finding sufficient transformation to merit First Amendment protection, the court focused on factors such as

• Noriega was one of 45 historical characters appearing in the game;
• Noriega was a small fraction of the game’s narrative; and
• Noriega’s depiction was incorporated into an entirely fictional narrative.

Newsworthy; Topic of Public Concern. Some courts, rather than focus on transformation, weigh whether the depiction of the person is used in a manner that is newsworthy or introduces a topic of public concern. For example, in a 2016 case, the Eleventh Circuit Court of Appeals found that the public's interest in merchandise bearing the name and likeness of civil rights icon Rosa Parks outweighed Ms. Parks’ publicity rights (being enforced by the non-profit corporation that administered her publicity rights). Accordingly, Target stores may continue to offer for sale books, movies, and plaques featuring Ms. Parks’ name and image.

The Rogers Test comes from trademark law and was first applied to cases in which people objected to their trademark or personal name being used in the title of a creative work. The Rogers Test is named after Ginger Rogers and developed in a case where Ginger Rogers asserted right of publicity rights against the Italian film Ginger & Fred (pictured on right). Due to the trademark roots of the Rogers Test, many courts decline to apply it to right of publicity questions. Those right of publicity cases to which it has been applied often also include trademark-related claims.

When applied to the right of publicity, the Rogers Test yields to the First Amendment if the depiction of the person is artistically relevant to the work and the depiction is not misleading in some way by falsely suggesting that the depicted person sponsors or endorses the work.

The Predominant Test recognizes that creative works often have both commercial elements and expressive elements. Hence, a court applying this test asks whether the dominant purpose of the depiction is to exploit an individual’s commercial value or to make an expressive comment about the person. The former purpose leads to a publicity rights violation; the latter purpose is a First Amendment-protected use. The Missouri Supreme Court’s use of the predominant test when evaluating a Spawn comic book villain loosely based on former National Hockey League player, Anthony (Tony) Twist resulted in a $15 Million damage award against the creator and others associated with the comic book series.

Many point to the Spawn case, which is Doe v. TCI Cablevision, 110 S.W.3d 363 (Mo. 2003), as illustrative of the inconsistency and unpredictability generated by the divergent First Amendment-right of publicity balancing mechanisms. In a case with strikingly similar facts to those of the Spawn case, a DC Comics comic book edition depicted performing and recording musicians, Johnny and Edgar Winter, as half-worm, half-human villains. The Winter brothers lost their right of publicity lawsuit against DC Comics. The California Supreme Court, applying the transformative work test, ultimately found that the non-literal depiction of the Winter brothers contained significant, expressive content and was synthesized into a larger, very expressive story. Accordingly, the Winter brothers’ depiction warranted First Amendment protection.

Will the Supreme Court Provide Clarification on Correct Balancing Test?

The case dealing with the Madden NFL video games discussed above under the Transformative Use Test is Davis v. Electronic Arts Inc., 775 F.3d 1172 (9th Cir., 2015). After failing to get the case dismissed, Electronic Arts asked the Supreme Court to review the case. Electronic Arts’ arguments for the necessity of a Supreme Court review includes the following:

• The transformative test discourages realistic depictions of people.
• The First Amendment-right of publicity balancing tests are more harshly applied against less conventional forms of media like video games and comic books than applied against traditional books and movies.
• The creative community needs more uniformity in the mechanism for weighing the First Amendment against the right of publicity.

The Supreme Court has not yet announced whether it will hear the case.

The Producer's Dilemma

Given the uncertain manner in which a right of publicity case might be decided, what should a producer who wants to use avatars do in order to sidestep potential legal problems? I’ll tackle that question in Part Two of this blog posting.

More Lessons on How Not to Use Stock Images. Improper Use of Stock Image in HIV Ad Results in Successful Lawsuits against Getty Images and Advertiser.

Stock images, stock footage, and stock music are fantastic resources when you need material for your website, advertisements, video productions, and other creative projects. Using stock materials can lower costs, legal risks, and administrative work – if used properly. Proper use is key as there are definitely incorrect and risky methods of using stock materials.

HIV Ad Results in Lawsuits against Getty Images and Advertiser

In April 2013, the New York State Division of Human Rights released an advertisement advocating rights for people who are HIV-positive. The ad featured a picture of Avril Nolan with the caption “I am positive (+),” and, “I have rights”. You can see the ad in the New York Post coverage.

However, Nolan is not HIV positive and did not consent to the use of her image in the ad. The New York State Division of Human Rights obtained Nolan’s picture from Getty Images, a well-known stock image company. Getty Images obtained the picture from photographer Jena Cumbo, described as an acquaintance of Nolan, who took the picture.

The incident resulted in Nolan filing lawsuits against both the New York State Division of Human Rights and Getty Images. I initially blogged about this incident in 2013. Since there has been some resolution to the legal proceedings, I thought it worth re-visiting the mistakes made by the New York State Division of Human Rights, by Getty Images, and by the photographer.

The New York State Division of Human Rights’ Mistakes:

Kudos to the New York State Division of Human Rights (NYSDHR) for licensing the image from a reputable stock image company rather than allowing its staff to meander the internet in search of images to cut and paste. (Some companies do that for their social media posting needs and it often does not work out well.)

NYSDHR Mistake One. Unfortunately, no one at NYSDHR read the Getty Images license agreement. The NYSDHR staff person who made the online purchase clicked through the license agreement while downloading the Nolan image but did not read the license agreement which contained the following provisions:

"2.6 Pornographic, defamatory, or otherwise unlawful use of [stock images] is strictly prohibited, whether directly or in context or juxtaposition with other material or subject matter. (emphasis added)

2.7 “If any [stock image] featuring a model or property is used in connection with a subject that would be unflattering or controversial to a reasonable person”, the stock image must be accompanied by a disclaimer indicating “that: (i) the [stock image] is being used for illustrative purposes only; and (ii) any person depicted in the [stock image] . . . , is a model."

NYSDHR Mistake Two. Several NYSDHR staff people reviewed and/or participated in preparation of the ad. Yet, none of them considered the implications of using the picture of a woman who’s not HIV positive as the focal point of an “I’m HIV-positive” advertisement.

The Outcome for NYSDHR. Those actions constituted negligence by NYSDHR. As a result of negligently labeling Nolan as HIV positive in its advertisement, NYSDHR was found liable for defamation and for violation of Nolan’s privacy rights in a summary judgment motion (Nolan v. New York, 2015 NY Slip Op 32023(U) (Court of Claims, Oct. 18, 2015). The Court of Claims left the issue of NYSDHR’s damages for a subsequent trial.

Getty Images’ Mistakes:

Getty Images’ Mistake One. During the purchase process, Getty incorrectly informed NYSDHR that Nolan had signed a model release and that the image was available for commercial use.

Getty Images’ Missed Opportunity. During the purchase process, Getty learned that NYSDHR would use Nolan’s image for advertising. However, Getty did not make any inquiries regarding the advertisement’s subject matter. Since not all purchasers are going to read Getty Image’s eight-page licensing agreement, the purchase process presents a good opportunity for Getty Images to highlight the additional steps required prior to using stock images in an ad about a sensitive subject.

The Outcome for Getty Images. Nolan sued Getty Images for using her image for trade or advertising purposes absent any written consent in violation of New York Civil Rights Law §§ 50 and 51 (the state’s privacy laws). Getty tried very hard to get Nolan’s complaint dismissed by pushing any liability onto NYSDHR and the photographer. Getty’s arguments included the following:

• Getty had a First Amendment right to display Nolan’s image in its database and license the image to the press;
• Neither NY Civil Rights Law nor the First Amendment required Getty to investigate the existence or validity of every image release within its database
• Nolan was a model and such status negated her privacy claim.

The court disagreed with Getty finding that Nolan had a valid claim against Getty for placing her image in the Getty catalogue, especially where that photograph is ultimately used in an advertisement in a manner that created a false impression about Nolan. According to the court there were many factors that needed to be resolved via summary judgment or trial:

• whether Nolan is a model,
• whether Nolan signed a written release,
• whether Civil Rights Law §§ 50 and 51 required Getty to investigate the existence of a release signed by Nolan,
• whether the First Amendment protects Getty's exploitation of Nolan's image without Nolan's written permission,
• whether Getty's inclusion of the image in its database of images available for licensing qualifies as use of the image for either advertising or trade purposes, and
• whether Getty can shift to NYSDHR and the photographer the burden of obtaining Nolan's written consent.

Getty decided not to pursue answers to those questions and settled with Nolan in January 2015.

The Photographer’s Mistakes:

Nolan posed for the photograph in May 2011 in connection with an article in Soma Magazine about New Yorkers interested in music. Nolan did not receive payment for the photograph, did not sign a written consent form, and did not grant permission for use of the photo for any purposes other than the Soma Magazine article. The photographer provided that image to Getty for inclusion in its stock image database.

According to Getty, as part of that transfer, the photographer signed Getty Image’s contributor agreement. I just took a look at Getty Images contributor agreement and it does require that those submitting images to Getty obtain valid model and property releases where necessary in accordance with the Submission Requirements. It took a lot of clicking through other areas of Getty Images website to determine when those Submission Requirements deem it necessary to obtain model and property releases.

Ms. Nolan did not sue the photographer. The photographer likely does not have the deepest pockets of the parties involved in this affair. She and Ms. Nolan might also be friends or at least social or professional acquaintances. While it appears that the photographer escaped unscathed, she likely did not strengthen her relationship with Getty Images and Getty Images might pursue her for reimbursement of any settlement feeds paid to Nolan. The Getty Images contribution agreement does include indemnification provisions.

How Not to Use Stock Images. Lessons from Getty Image - HIV Ad Lawsuit.

Stock Images Are Great! – Usually

I often recommend to my clients that they use stock images and stock footage as a means to reduce the licensing headaches, legal risks, and costs associated with using someone else’s material. But there are definitely right ways and wrong ways to handle stock materials. This situation with Getty Image illustrates many of the wrong ways.

HIV Ad Results in Lawsuit against Getty Images

In April 2013, an ad featuring a picture of Avril Nolan and advocating rights for people who are HIV-positive appeared in a New York newspaper. The quarter-page color ad, with the words “I am positive (+),” and, “I have rights” printed next to Nolan’s picture, implied that Nolan is HIV positive. She is not. You can see the ad in the New York Post article.

The New York Division of Human Rights, which placed the ad, obtained Nolan’s picture from Getty Images. Getty Images obtained the picture from photographer Jena Cumbo, described as an acquaintance of Nolan, who took the picture.

Avril Nolan has filed a lawsuit against stock image company, Getty Images. The New York Post article suggests that a lawsuit against the New York Division of Human Rights may also be forthcoming.

Stock Image Mistakes Made by Photographer, Licensee, and Stock Image Company

Let's assume, just for the purpose of this blog posting. that all the facts alleged in Nolan’s complaint are true. That means all the parties in the distribution chain resulting in the appearance of Nolan’s image in this ad made mistakes:

The Photographer. Nolan claimed she never signed a release for the picture taken by Cumbo and Cumbo’s interview with the New York Post doesn’t contradict that assertion. When selling images of recognizable people to a stock image house, make sure you have a release.

New York Division of Human Rights. Even if Nolan did sign a release for her picture, the release she signed probably doesn’t cover use in this particular ad. Releases signed by people whose images wind up in stock image libraries often do not cover a use dealing with sensitive issues – such as the HIV virus and AIDS. Before using anyone’s image in this particular ad, the NY Division of Human Rights should have determined the existence of a release and then either obtained additional permissions from the person and/or used a disclaimer with the image.

Getty Images. The license granted by the stock house frequently includes only rights related to the copyright of the image and leaves the licensee on its own to clear any additional rights triggered by use of the image (e.g., privacy, publicity, defamation). Nevertheless, when licensing images of recognizable people for use in commercial advertisements, it’s definitely in the direct interest of the stock house to verify the existence of a personal release or to make sure the licensee understands the need to obtain those rights on its own.

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.