Category Archives: Rights of Publicity

History repeating itself…

Those who cannot remember the past are condemned to repeat it. George Santayana

Don Henley successfully sued retailer Dillards in 1999 over an advertisement that featured a photograph of a man wearing a henley shirt with the words, “This is Don” in large print, beside the picture, and an arrow pointing toward the man’s head from the words. Underneath the words is the statement, “This is Don’s henley” in the same size print, with a second arrow pointing to the shirt.

Along comes Duluth Trading, which sent around an email advertisement that featured a picture of a henley shirt and the words “Don A Henley and Take It Easy,” seemingly a reference to the Eagle’s breakthrough song “Take It Easy” co-written by Jackson Browne and Glenn Frey.

Henley v Duluth Trading Co Complaint by Eriq Gardner

Athletes and Tattoos

In the aftermath of the copyright infringement litigation involving Hangover 2 and Mike Tyson’s face tattoo, the NFL Players Association is apparently urging players to obtain releases from tattoo artists to prevent future infringement actions.

According to this article in Forbes, the NFLPA is worried that this current batch of heavily inked players – some of whom use their art as their image – will encourage tattoo artists to sue the NFL, advertisers or video game makers for unauthorized reproduction of their art.

Bringin’ the T-Pain!

T-Pain, a/k/a Faheem Rashad Najm, is suing Auburn Audio Technologies, a California software company that markets “Auto-Tune EFX” and “Auto-Tune EFX Vocal Toolkit.”  According to his complaint, T-Pain’s use of auto-tuning technology has made him famous and created a valuable right of publicity in his name and likeness.  He has filed for several federal trademarks, including T-PAIN EFFECT for “computer software and downloadable computer software for voice modulation.”

According to his complaint, Auburn Audio is marketing its auto-tune products claiming that its software allows users to create “the T-Pain / Cher effect.”  [sidebar: I wonder how T-Pain feels about having his famous auto-tuned personality so closely associated with Cher.]  T-Pain is suing under California common law, as well as California’s Right of Publicity Statute, and the Lanham Act’s false designation section (15 USC § 1125(a)).

The Complaint is below:
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This case reminds a little of Bette Midler’s suit against Ford Motor Company over Ford’s use of a Bette Midler-soundalike (Ula Hedwig) to recreate Milder’s version of the Beach Boys’ song “Do You Wanna Dance”.    In that case, the Ninth Circuit Court of Appeals held that using this sound-alike version in a TV commercial violated Midler’s right of publicity. Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988).

Mike Tyson’s Facial Tattoo Infringed by Hangover 2?

“Tigers love pepper. They hate cinnamon.”

If you’re like me, you love the Warner Bros. movie The Hangover (2009) featuring Mike Tyson, his facial tattoo, and his Bengal tiger.  Also, you can’t wait to see this summer’s Hangover 2, which, according to an official movie poster, appears to feature Mike Tyson’s facial tattoo on character Stu Price’s face (played by actor Ed Helms).

Victor Whitmill, the tattoo artist who created the distinctive original design on the former heavyweight champion of the world, has sued Warner Bros. alleging copyright infringement. (original complaint is below; Whitmill also moved for a preliminary injunction, which is provided below)  As someone with (relatively speaking) an extensive collection of tattoos, I’m becoming more fascinated with this case than the upcoming sequel.

Whitmill tattooed Tyson in a Las Vegas tattoo parlor in February, 2003.  As is typical when getting a tattoo, Tyson signed a Release (produced below).  The second to last item listed in the Release states “I understand that all artwork, sketches and drawings related to my tattoo and any photographs of my tattoo are property of Paradox-Studio of Dermagraphics.” (Whitmill alleges that he was doing business under the name Paradox at the time).

According to the Copyright Certificate (produced below), Whitmill didn’t file for registration until April, 2011, far after the five-year window in §410(c) of the Copyright Act that provides for prima facie evidence of validity.

Warner Bros. has not answered the complaint, so we’ll have to wait and see what their defense(s) are.  We can bet fair use will be one of them.

A more intriguing defense might be to challenge Whitmill’s ownership of the copyright itself.  As I noted above, I’ve got quite a few tattoos, so I’ve spent a lot of time in tattoo parlors.  I’ve also signed a number of releases.  One might accurately describe these as adhesion contracts, as I’ve never seen someone negotiate the terms of the release.  I’m also not sure Tyson would likely understand the import of what he was signing (as it relates to the “ownership” of the image on his face) and such contracts should be read against the drafter where ambiguous. One could certainly make a case that someone getting a tattoo believes at the time that he/she has paid the tattoo artist, in part, for the exclusive ownership of the resulting tattoo, whether by assignment, transfer or work-made-for-hire (but see below).

As Whitmill is making derivative works arguments under §106A with respect to Warner Bros. use of this image, it is theoretically possible that Whitmill could claim that Tyson himself could not alter the tattoo on his own face without implicating Whitman’s copyright; i.e., Tyson might decide he wants to have some or all of the tattoo removed and/or covered up with a different design.

Its hard to see how a tattoo would fit into the definition of Works Made for Hire, since the tattoo artist isn’t likely to be characterized as an employee and the tattoo doesn’t fit neatly into any one of the enumerated categories of qualifying works.

There is another whole layer of Tyson’s rights of publicity potentially implicated, though Warner Bros. probably secured Tyson’s permission.

This case has “settle” written all over it.  Part of me hopes it doesn’t, as I’d enjoy seeing how these legal issues get resolved by the courts.

The Original Complaint is Here
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Tyson’s Signed Release is Here
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The Copyright Registration is Here
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The Motion for Preliminary Injunction is Here
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No Doubt Beats Activision

In an opinion provided below, a California state appeals court has ruled in favor of the band No Doubt in their lawsuit against Activision over the videogame Band Hero.

No Doubt entered into a license agreement with Activision under which the band would appear in the videogame.  The license required that Activision obtain prior approval for any use of the band’s likeness.  The band spent in a full-day motion capture photography session at Activision’s studios so that the band members’ Band Hero avatars would accurately reflect their appearances, movements, and sounds.  No Doubt came to learn, however, that their avatars could be “unlocked” at various levels of the videogame, enabling players to make Gwen Stefani sing with a man’s voice and make the band sing other artist’s songs.  No Doubt protested to Activision that these features were beyond the scope of their permission, but Activision released the videogame anyway.

No Doubt sued in California state court.  Activision argued that No Doubt’s right of publicity claim was barred–pursuant to California’s anti-SLAPP statute–because Activision’s use of No Doubt’s likeness was protected by the First Amendment.  The district court ruled in favor of No Doubt and Activision appealed.

In affirming the district court’s decision, the appeals court applied the rule in Comedy III Productions, Inc. v. Gary Saderup, Inc. (2001) 25 Cal.4th 387, 406, regarding whether the use of a celebrity’s likeness is sufficiently transformative to implicate First Amendment protections.  Quoting Comedy III, the court stated “Another way of stating the inquiry is whether the celebrity likeness is one of the ‘raw materials’ from which an original work is synthesized, or whether the depiction or imitation of the celebrity is the very sum and substance of the work in question. We ask, in other words, whether a product containing a celebrity’s likeness is so transformed that it has become primarily the defendant‟s own expression rather than the celebrity‟s likeness.”

In this case, the court found that No Doubt’s avatars were exact replicas of the band members and were the central focus of the videogame.  “That the avatars can be manipulated to perform at fanciful venues including outer space or to sing songs the real band would object to singing, or that the avatars appear in the context of a videogame that contains many other creative elements, does not transform the avatars into anything other than exact depictions of No Doubt’s members doing exactly what they do as celebrities.”

The opinion is below:
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Jimi Hendrix’ Legal Troubles Continue

Poor Jimi Hendrix.  He keeps getting caught up in legal battles.  The short version is that when Jimi died intestate, his father Al was his next of kin and took over the estate.  Al (and later the rest of Al’s family after he died) and Jimi’s brother Leon have been fighting over Jimi’s name and likeness for years, including a Washington state court action in the 1990s and a Western District of Washington suit in 2003 (Experience Hendrix, LLC v. The James Marshall Hendrix Foundation, 03 Civ. 3462 (W.D. Wash.)).  Importantly for our purposes, Jimi Hendrix died as a domiciliary of New York, which, as discussed below, does not recognize a posthumous right of publicity.

Along comes this company (Hendrixlicensing.com) in Nevada that sells t-shirts and such with Jimi Hendrix’ likeness.  Experience Hendrix sues under Washington’s Personality Rights Act (PRA), which purports to provide a posthumous right of publicity regardless of the domicile of the celebrity at the time of his or her death.  The defendants raise a constitutional challenge to the PRA and Judge Zilly requests briefing, which is provided below (interesting sidebar: Judge Zilly was the judge in the 2003 case between Experience Hendrix and the Hendrix Foundation.  There Judge Zilly awarded defendant Hendrix Foundation attorneys’ fees for prevailing under the same PRA statute at issue in this case.).

The defendants raise an interesting point: “By its express language, the WPRA reaches out of Washington, literally through space and time, to events that occurred in other jurisdictions decades prior to its enactment. The Court need only take Experiences’ arguments at face value to see this. Experience contends that a person domiciled in New York in 1970, who had no publicity rights when he died, suddenly has publicity rights and that they can be passed to an heir to be enforced in Washington—a state with no connection to, let alone jurisdiction over, Jimi Hendrix at the time of his death.”  As noted, New York has no posthumous right of publicity.  Legislative proposals have been made in the past, but never enacted.  (Ironically, New York Civil Rights Law Sections 50 and 51, which govern rights of publicity, were enacted in 1903, making New York’s the oldest statutorily-entitled publicity rights).  If New York decides not to have descendable publicity rights and a celebrity decides to live in New York precisely so that his/her children can not profit from his/her likeness after his/her death, then Washington’s PRA really does stretch beyond Washington’s borders.  Celebrities wishing to avoid this outcome would have to bequeath their publicity rights to a trust with instructions not to exercise those rights (lest the rights flow through intestate succession to the children).  This might work for celebrities living today, but what about those who died prior to the enactment of Washington’s PRA?

Briefs follow
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