right of publicity update

Right of Publicity

Joel E. TragesserQuarles & Brady LLP

(317) 399-2811Joel.Tragesser@quarles.com

Jonathan FaberLuminary Group LLC

(317) 428-5441jfaber@luminarygroup.com

What are rights of publicity?• Right to control and profit from commercial use of your name, likeness, persona, etc.

• State-by-state

• Statutory and common law

• Postmortem publicity rights

• See also: Right of privacy

What are rights of publicity?In what do you have a publicity right?

Name, voice,

signature, photograph,

image, likeness,

distinctive appearance, gestures,

and mannerisms.

Ind. Code § 32-36-1-6.

State legislatures

Indiana2012

Amendment to Right of Publicity Act clarifies that

postmortem right of publicity applies to those

who predeceased enactment of the statute.

AlabamaAugust 2015

Protects deceased persons who at any time resided in,

died in, or whose estate was probated in Alabama.

Provides a 55-year postmortem right of

publicity to every qualifying person.

New YorkRevived in 2016

In 2015, did not enact bill that would have provided a 70-year

postmortem right of publicity.

State legislatures

Minnesota2016

PRINCE Act (Personal Rights In Names Can Endure) introduced in April 2016, but was pulled in May.

The day after Prince's death, Chevrolet ran an advertisement in The New York

Times and other publications.

Right of Publicity Issues Are Everywhere

See also the Robin Williams approach to estate planning: a 20-year moratorium on use of name and likeness

Michael JacksonContinuing likeness revenue after death—and heading to U.S. Tax Court in February

Rosa ParksUsing the right to restrict use of her likeness

Right of Publicity Issues Are Everywhere

Lawsuits – Privacy / Damages

Lawsuits – First Amendment defenses

Avoiding Right of Publicity Claims

Lawsuits – Advertising

Jordan v. Jewel Food Stores

(7th Circuit, Illinois state law)

• Where’s the likeness?

• Attempts at generating goodwill for your brand can count as “commercial use.”

• Settled for an undisclosed amount along with another similar case (in which a jury had initially awarded Jordan $8.9 million).

Lawsuits - Advertising

Lawsuits – Name and

LikenessSettlement in Deney Terio vs. Hasbro

(M.D. Fla. 2016)

•Hasbro's cartoon character Vincent Terrio sold as a figurine in McDonald's Happy Meals. (Hasbro also owns trademark for "Vinnie Terrio.")

•Saturday Night Fever choreographer and Dance Fever host Denis George Mahan, aka Deney Terio.

Lawsuits – College Athletes Right of publicity for

realistic representations in videogamesHart v. EA (3d Cir.) and Keller v. EA (9th Cir.) both held: “Realistic” depictions of the athletes in videogames don’t count as transformative use; videogame makers don’t have First Amendment protection. The dissent in Keller: The logical consequence of the majority view is that all realistic depictions of actual persons, no matter how incidental, are protected by a state law right of publicity regardless of the creative context. This logic jeopardizes the creative use of historic figures in motion pictures, books, and sound recordings.

The dissenting judge’s statement makes an unsupportable leap. Most right of publicity statutes have specific exemptions for these kinds of creative works.

Lawsuits – College Athletes

Antitrust: Restraining licensing of name and likenessNCAA v. O’Bannon

SCOTUS: On October 3, the Court denied both sides' petitions for certiorari. Although this denial leaves in place the ruling that the NCAA's amateurism rules violate antitrust law, the denial also leaves unanswered:

NCAA: Whether First Amendment defenses defeat right of publicity claims for "realistic portrayals" in college sports videogames.

Student-athletes: Whether it was proper for the Ninth Circuit to overturn the district court's optional payment system of $5000 per year.

What's next? NCAA is vulnerable to more legal challenges ahead:•The Jenkins and Alston cases challenge NCAA's power to cap compensation for athletes.

Lawsuits – College Athletes

See also: Marshall v. ESPN (6th Cir. 2016): Participants in sporting events don't have publicity rights under Tennessee’s statute (which expressly permits use of name/likeness in a sports broadcast).

Keller and O'Bannon fallout:Settlement: $40 million by EA and Collegiate Licensing upon departing the consolidated Keller and O'Bannon cases.

Attorneys’ fees: (pending) $20 million to attorneys who represented the student-athlete plaintiffs.

Scholarships: NCAA now give schools option to increase student-athletes' aid to match a federal "cost of attendance" amount.

Lawsuits – College Athletes

Pending lawsuit: Fantasy sports Daniels v. FanDuel (S.D. Ind. 2016)

•Former college athletes: Fantasy sports sites cannot rely on First Amendment defenses because they used players' likenesses for "illegal gambling activity."

•FanDuel and DraftKings: (1) Fantasy sports were never illegal in Indiana, and (2) using "facts" about players is protected by newsworthiness exception.

•Meanwhile: The sites voluntarily suspended their college sports contests after receiving pressure from the NCAA during March Madness in 2016.

Lawsuits – Pro Athletes

Fantasy sports Pierre Garcon v. FanDuel

(D.Md. 2015)•Maryland doesn't have publicity rights statute.

•MLB lost 8th Circuit case against a fantasy sports company in 2007, when court said First Amendment protected company's use of names and statistics.

•Ask: Where's the difference between actionable "likeness" and mere use of name and statistics? What about photos alongside stats? Or players' names in ads?

•Garcon had previously tweeted ads for FanDuel; does that matter?

•Importance of licensing deals, even if they might not be legally necessary.

Lawsuits – Professional Athletes

Fred Dryer

Retired players in Madden NFL videogames

Davis v. Electronic Arts, Inc.

•EA Sports loses: Ninth Circuit, citing Keller, affirmed district court holding against EA, reasoning that likenesses in the "historical games" of Madden NFL were no more transformed than in NCAA Football.•And loses again: In March, SCOTUS denied certiorari when EA asked Court to review whether company had First Amendment right to use likenesses. •Defendants now face uncertain litigation with state-law right of publicity claims.

Lawsuits – Professional Athletes

Differing resultsCompare Dryer to Davis and student-athletes

• Supreme Court denied cert in Davis and in O'Bannon, so we still don't have the Court's clarification on First Amendment defenses.

• “Accurate depictions” are necessary to the products' appeal. That realism protected NFL Films when depicting pro players, but it doomed EA Sports using athletes in videogames.

• “The inevitable effect of these rulings is to suggest that producers of creative media who depict people more 'literally' and accurately are more likely to be penalized, while those who 'creatively' change or fictionalize their subjects’ lives, personas or historical context will be on safer ground.” - Amicus brief filed in Davis by Washington Post, Los Angeles Times, NPR

Some analysts say:

“[Lower courts] appear to be slowing the recent expansion of state law right of publicity liability by finding plaintiffs’ claims barred for a variety of other reasons,” says attorney involved.

Inaccurate.

• Comedy Central's parent, Viacom, sent a cease and desist letter to The Late Show with Stephen Colbert.

• Work-made-for-hire ownership over a performer's exaggerated persona?

New uses for right of publicity?

The frontier of "right of publicity"?

Protection through trademark

Advising clients: Takeaways

Advising clients: ResourcesOnline Right of Publicity resource:www.RightOfPublicity.com

International Trademark Association (INTA)www.INTA.org

Licensing Industry Merchandiser’s Association (LIMA)www.licensing.org

Trademark blog:http://thettablog.blogspot.com/

Lawsuits – College Athletes Antitrust: Restraining licensing of name and likeness

Keller v. EA and O’Bannon v. NCAA (consolidated into In re NCAA Student-Athlete Name & Likeness Litigation)

N.D. Calif. 2014: •Restraining amateur athletes from licensing their names and likenesses in telecasts and videogames violates antitrust laws.•NCAA cannot prohibit member schools from giving student-athletes scholarships to cover the full cost of attendance (i.e., beyond just the cost of tuition). •Did not specifically address right of publicity.

9th Cir. 2015: •Upheld lower court’s ruling that NCAA rules restricting payment to college athletes violates antitrust laws.•Overturned district court's ruling that colleges could pay players up to $5,000 per year in deferred compensation for use of their names, images, and likenesses.•Explicitly states that right of publicity is beside the point.

Ed O’Bannon in 1995 and in EA Sports’ NCAA Basketball