S108751
IN THE SUPREME COURT OF CALIFORNIA
EDGAR WINTER AND JOHNNY WINTER, Respondents,
vs.
DC COMICS; JOE R. LANSDALE; TIMOTHY TRUMAN; SAM GLANZMAN; TIME WARNER ENTERTAINMENT COMPANY, L.P.; AND WARNER
COMMUNICATIONS, INC., Petitioners.
AFTER A DECISION BY THE COURT OF APPEAL, SECOND APPELLATE DISTRICT, DIVISION FOUR
2nd Civil No. B 121021
ON·APPEAL FROM SUPERIOR COURT OF THE COUNTY OF LOS ANGELES'
THE HONORABLE RONALD E. CAPPAI, JUDGE L.A.S.C. Case No. BC 145670
REQUEST FOR LEAVE TO FILE AMICUS BRIEF; AMICUS BRIEF OF THE MOTION PICTURE ASSOCIATION OF
AMERICA, INC., ASSOCIATION OF AMERICAN PUBLISHERS, INC., AUTHORS GUILD, INC., ET AL., IN SUPPORT OF PETITIONERS
LOEB & LOEB LLP DOUGLAS E. MIRELL (SBN 94169) JOSEPH GElS MAN (SBN 205409)
10 100 Santa Monica Boulevard, Suite 2200 Los Angeles, California 90067-4164
Telephone: (310) 282-2000 Facsimile: (310) 282-2200
I Attorneys for Amici Motion Picture Association of America, Inc., Association of American Publishers, Inc., Authors Guild, Inc., et al.
REQUEST FOR LEAVE TO FILE AMICUS BRIEF
Pursuant to Rule 29.1(f) of the California Rules of Court, amici the
Motion Picture Association of America, Inc. ("MP AA"), Association of
American Publishers, Inc. ("AAP"), Authors Guild, Inc. ("AG"), Publishers
Marketing Association ("PMA"), Comic Book Legal Defense Fund
("CBLDF'), Dramatists Guild of America, Inc. ("DGA"), PEN American
Center ("PEN"), American Booksellers Foundation for Free Expression
("ABFFE"), and Freedom to Read Foundation ("FTRF') (collectively
"Amici") hereby request leave to file the accompanying amicus brief in
support of petitioners DC Comics, Joe R Lansdale, Timothy Truman, Sam
Glanmlan, Time Warner Entertainment Company, L.P., and Warner
Communications, Inc. (collectively "Petitioners").
Having previously urged this Court to grant review and having read
all briefs filed by the parties, Amici are familiar with the questions involved
in this case and the scope of their presentation; they believe there is a need
for additional argument on the points specified below. Amici file this brief
because of the Court of Appeal's improper refusal to rule as a matter of law
that Petitioners' inclusion - in a portion of a wildly imaginative and wholly
unrealistic comic book series filled with myriad fictional characters - of a
unique graphic portrayal of characters allegedly based on respondents
Johnny and Edgar Winter (collectively "Respondents") did not violate
Respondents' rights of publicity under California Civil Code Section 3344
(hereinafter "section 3344"). Amici are extremely concerned that the Court
of Appeal's misapplication of section 3344 and its misinterpretation of the
"transfonnative use" test (set forth by this Court in its opinion in Comedy
III Productions, Inc. v. Gary Saderup, Inc. (2001) 25 Cal.4th 387) may
result in a reduced level of constitutional protection for traditionally
protected expressive works by stripping away important First Amendment
protection historically accorded to such uses of celebrity figures.
1
MP AA is a non-profit trade association founded in 1922 to address
issues of concern to the United States motion picture industty. The
MPAA's California-based members1 produce and distribute the vast
majority of fllmed entertainment in the domestic theatrical, television and
home videolDVD markets. The ability of the MPAA's members to
continue as fllmed entertainment industty leaders is inextricably
intertwined with the promotion of free expression in creative works.
AAP is the national trade association of the United States book
publishing industry. AAP's members2 include most of the major
commercial book publishers in the United States as well as smaller and
non-profit publishers, university presses, and scholarly societies. AAP
members publish hardcover and paperback books in every field -
educational materials for the elementary, secondary, postsecondary and
professional markets, computer software, and electronic products and
services. The AAP represents an industry whose very existence depends
upon the free exercise of rights guaranteed by the First Amendment.
AG is a national association of more than 8,000 professional,
published book and periodical writers of all genres, including novelists,
children's book authors and illustrators, journalists, historians, biographers
1 The members of the MP AA are Metro-Goldwyn-Mayer, Inc., Paramount Pictures Corporation, Sony Pictures Entertainment Inc., Twentieth Century Fox Film Corporation, Universal City Studios LLLP, Warner Bros., a division of Time Warner Entertainment Company, L.P., and an affiliate of The Walt Disney Company.
1 The more than 300 members of the AAP include The McGrawHill Companies, Harvard University Press, The Library of Congress Publishing Office, Yale University Press, New England Journal of Medicine, University of California Press and the Oxford University Press, among many others. A complete list of AAP's.members can be found at www.publishers.orglmember/members.cfm.
2
and other writers of fiction and nonfiction. Founded in 1912, it is the oldest
and largest organization of published writers in the United States. AG
members have won Nobel and Pulitzer Prizes, National Book Awards and
Newbury Honors, MacArthur and Guggenheim Fellowships, and many
other awards and honors. Its members' work covers important issues in
world affairs, business, science and medicine, travel, government, history,
and all manner of fiction, and makes crucial contributions to our culture.
AG's principal purposes are to promote the professional interests of authors
in various areas, including freedom of expression. The AG views this case
as bearing directly on the ability of authors to carry on their business of
writing as a livelihood.
PMA is a nonprofit trade association representing more than 3,000
publishers across the United States and Canada. PMA's members include
small, independent publishers, non-profit and university presses who
publish a variety of literary works including graphic novels, satire, parody,
and non-fiction books on all topics. Its members' works contribute to the
public debate on social and political issues, and provide a forum for
creative talent that contributes to society's cultural enrichment. The
importance of fictionalizations and related efforts against the expansion of
the right of publicity is of paramount concern to PMA's members. The
PMA believes that this case impermissibly burdens First Amendment rights
of its members and bears directly on the ability of its members to depict
contemporary events, symbols and people in their works.
~BLDF is a non-profit corporation dedicated to defending the First
Amendment rights of the comic book industry. CBLDF members include
over 1,000 comic book authors, artists, retailers, distributors, publishers,
librarians and readers located throughout the United States and the world.
In 1986, CBLDF was founded on the principle that comics are an
expressive medium deserving of the same First Amendment liberties
3
afforded to film, literature and art. The ability ofCBLDF's members to
produce and enjoy content relevant to a wide variety of readers depends
upon the exercise ~f rights guaranteed by the First Amendment.
DGA is the only professional association for playwrights, librettists,
lyricists and composers writing for the stage. With over 6,100 members
around the world, the DGA, since its inception in 1912, has given its time,
interest and support for the benefit of dramatists everywhere and has
worked continuously to advance their rights. The DGA, therefore, has a
direct and substantial interest in the right of free expression guaranteed
under the First Amendment, the protections of which are essential for
dramatists in their creation of new dramatic works.
PEN is an organization of over 2,500 novelists, poets, essayists,
translators, playwrights, and editors. As part of International PEN, it and
its affiliated organizations are chartered to defend free and open
communication within all nations and internationally. American PEN has
taken a leading role in attacking rules that limit freedom of expression in
this country.
ABFFE was organized in 1990. The purpose of ABFFE is to infonn
and educate booksellers, other members of the book industry, and the
public about the dangers of censorship and to promote and protect the free
expression of ideas, particularly freedom in the choice of reading materials.
FTRF is an organization established in 1969 by the American
Library Association. The purpose of FTRF is to promote and defend First
Amendment rights, support the rights of libraries to include in their
collections and make available to the public any work they may legally
acquire, and help shape legal precedent for the freedom to read on behalf of
all citizens.
Amici's proposed brief, attached hereto, addresses issues that are not
fully discussed in the briefs of the parties. In particular, Amici argue that
4
neither section 3344 nor this Court's "transformative use" test - at least as
interpreted by the Court of Appeal in Winter v. DC Comics (2002) 99
Cal.App.4th 458 - should be applied to publicity rights claims based upon
traditionally protect~d expressive works. The First Amendment (and its
state constitutional analogue, Cal. Const, Art. I, § 2(a)) requires a brighter
line and a more protective standard for publicity rights claims arising from
disputes involving such expressive works. To provide adequate guidance
to California courts, and to protect First Amendment freedoms while
simultaneously fostering certainty in the law, this Court should affirm the
existence of categorical exceptions to pUblicity rights claims arising from
disputes involving audio-visua~ literary and dramatic works. This brief
includes references to and discussions of arguments and authority not found
in the briefs heretofore submitted by the parties.
Dated: March 21,2003. Respectfully submitted,
LOEB & LOEB LLP DOUGLAS E. MIRELL JOSEPH GElS MAN
Attorneys for Amici Motion Picture Association of America, Inc.,
Association of American Publishers, Inc., Authors Guild, Inc.,
Publishers Marketing Association, Comic Book Legal Defense Fund, Dramatists Guild of America, Inc.,
PEN American Center, American Booksellers Foundation for Free Expression, and
Freedom to Read Foundation
5
TABLE OF CONTENTS
AMICUS BRIEF ..................................................................... ; ................ 1
I. AUDIO-VISUAL, LITERARY AND DRAMATIC WORKS ARE ENTITLED TO FULL FIRST AMEN"DMENT PROTECTION .................................................... 2
II. THE COURT OF APPEAL'S APPLICATION OF SECTION 3344 AND THE "TRANSFORMATIVE USE" TEST TO PUBLICITY RIGHTS CLAIMS BASED UPON EXPRESSIVE WORKS IGNORES THE HIGH LEVEL OF CONSTITUTIONAL PROTECTION FOR SUCH WORKS .............................................................................. 6
A Traditionally Protected Expressive Works Are Not "Products, Merchandise, or Goods" Within the Meaning of Section 3344(a) ................................................ 8
B. The First Amendment Requires That This Court Carve Out a Safe Harbor for Traditionally Protected Expressive Works in the Context of Its "Transformative Use" Test. .............................................. 15
C. The Court of Appeal's Expansive Application of Both Section 3344 and the "Transformative Use" Test to Traditionally Protected Expressive Works Creates an Unconstitutional Form of Content-Based Discrimination .................................................................. 22
III. THE COURT OF APPEAL WRONGLY REFUSED TO DETERMINE "TRANSFORMATIVE USE" AS A MATTER OF LAW ..................................................................... 25
IV. CONCLUSION ........................................................................... 27
CERTIFICATE OF COMPLIANCE .. : ...................... ~ ................ : ........... 28
1
TABLE OF AUTHORTInES
Pa2e(s)
Cases Bill v. Superior Court
(1982) 137 Cal.App.3d 1002 ..................................................... 5, 25 Bleistein v. Donaldson Lithographing Co.
(1903) 188 U.S. 239 ...................................................................... 20 Burstyn, Inc. v. Wilson
(1952) 343 U.S. 495 .................................................................... 3, 4 Central Hudson Gas & Elec. Corp. v. Public Servo Comm In of
N.y. (1980) 447 U.S. 557 .................................................................. 3, 18
Charles Atlas, Ltd v. DC Comics, Inc . . (S.D.N.Y. 2000) 112 F. Supp. 2d 330 ............................................ 11
Cohen v. California (1971) 403 U.S. 15 .......................................................................... 2
Comedy III Productions, Inc. v. Gary Saderup, Inc. ~ . (2001) 25 CalA 387 .............................................................. passun
Daly v. Viacom, Inc. (N.D. Cal.) 2002 WL 31934153 *3 ............................................ 7, 13
Doe V. TCI Cablevision (Mo.Ct.App.) 2002 Mo.App. LEXIS 1577 *36 ............... 5, 11, 13, 17
Dora v. Frontline Video, Inc. (1993) 15 Cal.AppA~ 536 ............................................................... 4
ETW Corp. v. Jureh Publishing, Inc. (N.D. Ohio 2000) 99 F. Supp. 2d 829 ............................................ 16 .
Frosch v. Grosset & Dunlap, Inc. (1980) 427 N.Y.S.2d 828 ................................................................. 6
Gertz V. Robert Welch, Inc. (1974) 418 U.S. 323 ........................................................................ 2
Gionfriddo v. Major League Baseball (2001) 94 Cal.AppAth 400 ............................................................. 20
Good Government Group o/Seal Beach, Inc. v. Superior Court (1978) 22 Cal.3d 672 ................................................................. 4, 25
Guglielmi v. Spelling-Goldberg Prods. (1979) 25 Cal.3d 860 .............................................................. passim
Hicks v. Casablanca Records (S.D.N.Y. 1978) 464 F. Supp. 426 .......................................... passim
Hoepker~ Jrruger (2002) 200 F. Supp. 2d 340 ..................................................... 16. 21
ii
Pagels) Hoffman Capital Cities/ABC, Inc.
(9th Cir. 2001) 255 F.3d 1180 .......................................................... 4 Horgan v. MacMillan, Inc.
(S.D.N.Y. 1985) 621 F. Supp. 1169, rev'd on other grounds, (2d Cir. 1986) 789 F.2d 157 ................................................................................... 6
Hustler Magazine v. Falwell (1988) 485 U.S. 46 ...................................................................... 2, 3
James v. Meow Media, Inc. (6th Cir. 2002) 300 F.3d 683 .......................................................... 10
Keenan v. Superior Court (2002) 27 CalAth 413 ............................................................... 23, 24
Ketchum v. Moses (2001) 24 Cal.4th 1122 ..................................................................... 6
Lugosi v. Universal Pictures (1979) 25 Cal.3d 813,818 n.6 ............................................. 8, 10, 15
Matthews v. Wozencraji (5th Cir. 1994) 15 F.3d 432 .............................................................. 5
Mazer v. Stein (1954) 347 U.S. 201 ..................................................................... 21
Miller v. NBC (1986) 187 Cal.App.3d 1463 ................................................................. 5, 25
Montana v. San Jose Mercury News, Inc. (1995) 34 Cal.App.4tJi 790 ............................................................. 20
National Endowment for the Arts v. Finley (1988) 524 U.S. 569 ........................................................................ 3
Pacific Gas. & Elec. Co. v. Public Util. Comm 'n (1986) 475 U.S. 1 .......................................................................... 24
Polydoros v. Twentieth Century Fox Film Co. (1997) 67 Cal.App.4th 318 ...................................................... passim
RA. V. v. City of St. Paul (1992) 505 U.S. 377 ...................................................................... 23
Red Lion Broadcasting Co. v. FCC (1969) 395 U.S. 367 ........................................................................ 2
Rogers v. Grimaldi (2nd Cir. 1989) 875 F.2d 994 ............................................................ 5
Rosemont Enterprises, Inc. v. Random House, Inc. (1968) 294 N.Y.S.2d 122 ........................................................... 6, 12
RufJin-Steinback v. De Passe (5th Cir. 2000) 82 F. Supp. 2d 723 .................................................. 15
Sable Communications v. FCC (1989) 492 U.S. 114 ...................................................................... 23
iii
Page(s) Sanders v. Acclaim Entertainment, Inc.
(D.C. Col. 2002) 188 F. Supp. 2d 1264 .......................................... 10 Schad v. Borough o/Mount Ephram
(1981) 452 U.S. 61 .......................................................................... 3 Seale v. Gramercy Pictures (B.D. Penn. 1996)
949 F. Supp. 331, later proceeding at (E.D. Pa. 1997) 964 F. Supp. 918, affdwithout opinion (3rd Cir. 1998) 156 F.3d 1225 .................................................... 5, 12
Simon & Schuster, Inc. v. New York State Crime Victims Bd. (1991) 502 U.S. 105 ...................................................................... 23
Sipple v. Chronicle Publishing Co. (1984) 154 Cal.App.3d 1040 ..................................................... 5, 25
Tyne v. Time Warner Entertainment Co. (M.D. Fla. 2002) 204 F .. Supp.2d 1338 ............................................ 5
Univ. o/Notre Dame Du Lac v. Twentieth Century-Fox (1965) 256 N.Y.S.2d 301.. .... ~ .................................................... 3, 12
Va. Pharmacy Bd v. Va. Consumer Council (1976) 425 U.S. 748 ...................................................................... 24
Wilson v. Midway Games, Inc. (D. Conn. 2002) 198 F. Supp. 2d 167 ............................................ 11
Winter v. DC Comics (2002) 99 Cal.App.41h 458 ...................................................... passim
Winter v. G.P. Putnam's Sons (91h Cir. 1991) 938 F.2d 1033 ........................................................ 10
Winters v. New York (1948) 333 U.S. 507 .................................................................... 3, 4
Statutes California Civil Code § 3344 ............................................................. passim California Civil Code § 3344(a) ................................................................. 8 California Civil Code § 3344(d) ................................................................. 4 California Civil Code § 990 .................................................................. 9, 17 California Code Civil Procedure § 425.16, subd. (a) ................................... 5 California Code of Civil Procedure Section 425.16 .............................. 5,25 Restatement (Third) of Unfair Competition, § 47 ............................. passim Restatement (Third) of Unfair Competition, § 46 ...... ; ................. 6,9, 12, 16
Other Authorities J. Thomas McCarthy, The Rights o/Publicity and Privacy
(2nd ed. 2002) ................................................................................. 19
iv
AMICUS BRIEF
The purpose of this brief is to explain the need for a brighter line and
a more speech-protective standard in cases involving publicity rights claims
arising from traditionally protected expressive works. In particular, amici
the Motion Picture Association of America, Inc., Association of American
Publishers, Inc., Authors Guild, Inc., Publishers Marketing Association,
Comic Book Legal Defense Fund, Dramatists Guild of America, Inc., PEN
American Center, American Booksellers Foundation for Free Expression
and Freedom to Read Foundation (collectively "Amici") believe that, if
affirmed, the Court of Appeal's misapplication of section 3344 and
misinterpretation of the "transformative use" test (set forth by this Court in
its opinion in Comedy III Productions, Inc. v. Gary Saderup, Inc. (2001) 25
Ca1.4th 387) will profoundly chill First Amendment expression.
Amici do not here repeat the arguments regarding the Court of
Appeal's misapplication of the "transformative use" test to the undisputed
facts in Winter v. DC Comics (2002) 99 Cal.AppAth 458. That subject is
fully and adequately addressed in the opening and answering briefs filed by
petitioners DC Comics, Joe R. Lansdale, Timothy Truman, Sam Glanzman,
Time Warner Entertainment Company, L.P., and Warner Communications,
Inc. (collectively "Petitioners"). Amici instead focus on four points: (1) the
appropriately high level of First Amendment protection afforded to
traditionally protected audio-visual, literary and dramatic works; (2) the
Court of Appeal's disregard of California Civil Code Section 3344's
express deftnitionallimitation to "products, merchandise, or goods"; (3) the
inapplicability of the "transformative use" test to publicity rights claims
based upon traditionally protected expressive works; and (4) the importance
of adopting a brighter line and more protective standard for publicity rights
claims arising from disputes involving such expressive works.
1
I. AUDIO~VISUAL, LITERARY AND DRAMATIC WORKS
ARE ENTITLED TO FULL FIRST AMENDMENT
PROTECTION.
"The First Amendment and article 1, section 2 of the California
Constitution serve 'to preserve an uninhibited marketplace of ideas' and to
repel efforts to limit the 'uninhibited, robust and wide-open' debate on
public issues." Guglielmi v. Spelling-Goldberg Prods. (1979) 25 Cal.3d
860, 866 (citing Red Lion Broadcasting Co. v. FCC (1969) 395 U.S. 367,
390; Gertz v. Robert Welch, Inc. (1974) 418 U.S. 323,340).
The constitutional right of free expression ... is designed and intended to remove governmental restraints from the arena of public discussion, putting the decision as to what views shall be voiced largely into the hands of each of us, in the hope that use of such freedom will ultimately produce a more capable citizenry and more perfect polity and in the belief that no other approach would comport with the premise of individual dignity and choice upon which our political system rests.
Cohen v. California (1971) 403 U.S. 15,24. This right "encompasses
discussion of 'all issues about which information is needed or appropriate
to enable the members of society to cope with the exigencies of their
period. '" Guglielmi, 25 Cal.3d at 866-67 (citations omitted).
To encourage the free flow of ideas and opinions on matters of
public interest and concern, individuals must have the freedom to criticize
and comment upon prominent individuals who, by reason of their fame,
shape events in areas of concern to society at large. Hustler Magazine v.
Falwell (1988) 485 U.S. 46, 50-51. As this Court has observed:
Because celebrities take on public meaning, the appropriation of their likenesses may have important uses in uninhibited debate on public issues, particularly debate about culture and values. And because celebrities take on personal meaning to many individuals in the society, the creative appropriation of celebrity images can be an important avenue of individual expression.
2
Comedy III, 25 Cal.4th at 397.
The First Amendment protects expression relating to prominent
individuals in any medium that either infonns or entertains. Winters v. New
York (1948) 333 U.S. 507, 510;' Comedy III, 25 Cal.4th at 804. Courts have
consistently extended constitutional protection to works through which
ideas and opinions are regularly disseminated. These traditionally
protected expressive works include works regularly created and/or
disseminated by Amici - e.g., books, magazines, motion pictures, radio
broadcasts, television programs, live entertainment, poetry, music and
dramatic works. National Endowment/or the Arts v. Finley (1988) 524
U.S. 569, 602; Hustler Magazine, 485 U.S. at 50; Central Hudson Gas &
Electric Corp. v. Public Servo Comm'n o/N. Y. (1980) 447 U.S. 557, 596;
Guglielmi, 25 Cal.3d at 874 (motion pictures are vehicles through which
ideas and opinions are regularly disseminated); Univ. o/Notre Dame Du
Lac V. Twentieth Century-Fox Film Corp. (1965) 256 N.Y.S.2d 301, 304
(books are a significant medium of expression for the communication of
ideas).1
1 "Freedom of expression ... encompasses the manner in which the ideas, thoughts and beliefs are expressed." Guglielmi, 25 Cal.3d at 866-67 (defendant's production of a film using plaintiff's name and likeness is protected). Because motion pictures and books are each a "significant medium for the communication of ideas" and opinions, they are accorded full First Amendment protection. Id. at 865. The historic and ongoing importance of motion pictures and books as channels for the expression and communication of ideas is both obvious and well-established. See, e.g., Joseph Burstyn, Inc. v. Wilson (1952) 343 U.S. 495, 502 (rejecting claim that motion pictures do not fall within the First Amendment's ambit because their production, distribution, and exhibition is a large-scale ~usiness conducted for private profit); Schad v. Mt. Ephraim (1981) 452 U.S. 61, 65 (motion pictures and books receive the same level of First Amendment protection as political and ideological speech); Polydoros v. Twentieth Century Fox Film Co. (1997) 67 Cal.AppAth 318,323-25 ("The
3
Whether the work is a biography, documentary, docudrama, fiction,
satire, parody, social commentary or historical depiction, it is entitled to the
full protection of the First Amendment. Burstyn, 343 U.S. at 502; Winters,
333 U.S. at 510; Guglielmi, 25 Cal.3d at 865. Though none of these
categories of works finds explicit statutory protection in the "news, public
affairs, or sports broadcast or account" exception of Civil Code Section
3344{d),2 this Court, as well as California's lower Courts of Appeal and the
Ninth Circuit, have all found that such expressive works are entitled to the
highest levels of First Amendment protection and are therefore exempt
from liability under a publicity rights theory. See, e.g., Guglielmi, 25
Cal.3d at 867 ("works of fiction are constitutionally protected in the same
manner as political treatises and topical news stories"); Polydoros, 67
Cal.App.4th at 318,322 ("[b]ecause respondents were creating a
fictionalized artistic work their endeavor is constitutionally protected"; the
right of publicity "was never intended to apply to works of pure fiction");
Dora v. Frontline Video, Inc. (1993) 15 Cal.App.4th 536, 542-43
(magazines and books, radio and television are protected); Hoffman v.
Capital Cities/ABC, Inc. (9th Cir. 2001) 255 F.3d 1180, 1189 (magazines
are entitled to full First Amendment protection).3
First Amendment is not limited to those who publish without charge. Whether the activity involves newspaper publication or motion picture production, it does not lose its constitutional protection because it is undertaken for profit.").
2 Civil Code Section 3344 may, from time to time, be referred to hereafter as "section 3344." .
3 Moreover, in contrast to the further protracted litigation that the Court of Appeal's opinion invites, courts have an obligation to resolve cases that implicate First Amendment interests at the earliest possible stage. Good Government Group, Inc. v. Superior Court (1978) 22 Cal.3d 672, 685 . "[Because] unnecessarily protracted litigation would have a chilling
4
Courts in other jurisdictions that have addressed the parameters of
the right of publicity in the context of such expressive works have similarly
held that these works are entitled to the highest levels of constitutional
protection and are therefore exempt from publicity rights liability. See,
e.g., Tyne v. Time Warner Entertainment Co. (M.D. Fla. 2002) 204 F.
Supp.2d 1338, 1342 (motion pictures are entitled to First Amendment
protection and therefore are excepted from liability); Doe v. TCI
Cablevision (Mo.Ct.App.) 2002 Mo.App. LEXIS 1577 *36 (comic books
are entitled to the full protections of the First Amendment); Seale v.
Gramercy Pictures (E.D. Penn. 1996) 949 F. Supp. 331, 336-37, later
proceeding at (E.n. Pa. 1997) 964 F. SUpp. 918, ajf'dwithout opinion (3rd
Cir. 1998) 156 F.3d 1225 ("In addressing right of publicity claims, courts
have been mindful that the First Amendment provides greater protection to
works of artistic expression such as movies, plays, books, and songs, than it
provides to pure 'commercial' speech"'); Matthews v. Wozencraft(5th Cir.
1994) 15 F.3d 432,439 (right of publicity does not preclude others from
incorporating a person's name, features or biography in a literaty work,
motion picture, news or entertainment story); Rogers v. Grimaldi (2nd Cir.
1989) 875 F.2d 994, 1004-05 (use of plaintiffs' name in film title
effect upon the exercise of First Amendment rights, speedy resolution of cases involving free speech is desirable .... " ld.; see also Miller v. National Broadcasting Co. (1986) 187 Cal.App.3d 1463, 1479; Sipple v. Chronicle Publishing Co. (1984) 154 Cal.App.3d 1040, 1046; Bill v. Superior Court (1982) 137 Cal.App.3d 1002, 1014-15. This policy is further reflected in California's so-called anti-SLAPP statute - Code of Civil Procedure Section 425.16 - which authorizes the filing of a special motion to strike a complaint where the underlying action is based on the defendant's exercise of First Amendment rights. Cal. Code Civ. Proc. § 425.16, subd. (a) (noting that "there has been a disturbing increase in lawsuits brought primarily to chill the valid exercise of the constitutional
5
protected); Horgan v. MacMillan, Inc. (S.D.N.Y. 1985) 621 F. SUpp. 1169,
rev 'd on other grounds, (2d Cir. 1986) 789 F.2d 157 (book that extensively
mentions and depicts plaintiff celebrity does not infringe his right of
publicity); Frosch v. Grosset & Dunlap, Inc. (1980) 427 N.Y.S.2d 828
(literaty work does not give rise to pUblicity rights claim regardless of how
the literatywork is characterized); Hicks v. Casablanca Records (S.D.N.Y.
1978) 464 F. SUpp. 426, 433 (the right of publicity does not attach to a
fictionalized account of an event in the life of a public figure in a novel or a
movie); Rosemont Enterprises, Inc. v. Random House, Inc. (1968) 294
N. Y.S.2d 122, 129 (publication of biography is clearly outside the ambit of
the "commercial use" contemplated by the right ofpublicity).4
II. THE COURT OF APPEAL'S APPLICATION OF SECTION
3344 AND THE "TRANSFORMATIVE USE" TEST TO
PUBLICITY RIGHTS CLAIMS BASED UPON EXPRESSIVE
WORKS IGNORES THE HIGH LEVEL OF
CONSTITUTIONAL PROTECTION FOR SUCH WORKS.
The Court of Appeal in this case applied section 3344 and the
"transformative use" test to traditionally protected literaty works that it
found incorporated identity markers of living celebrities. In so doing, the
court ignored the high level of First Amendment protection afforded to
these expressive works and thereby improperly diminished the high level of
rights of freedom of speech .... "); see also Ketchum v. Moses (2001) 24 Ca1.4th 1122, 1130.
4 Likewise, the Restatement (Third) of Unfair Competition provides that liability cannot be based on the use of identity markers in traditionally protected expressive works. See Rest.3d, Unfair Competition, §§ 46-47 (no liability where identity markers are used in ''works offiction or nonfiction, or in advertising that is incidental to such use").
6
constitutional protection to which such works are entitled.5 As explained
below, the use of an individual's identity markers in traditionally protected
expressive works is not and cannot be actionable as an appropriation or
infringement of the right of publicity. Polydoros, 67 Cal.App.4th at 322
(works of fiction are entitled to the First Amendment protection and ar~
therefore exempt from publicity rights liability); Daly v. Viacom, Inc. (N.D.
Cal.) 2002 WL 31934153 *3 ("[ u]nder the First Amendment, a cause of
action for appropriation of another's 'name and likeness may not be
maintained' against' expressive works, whether factual or fictional"')
(citing Guglielmi, 25 Cal.3d at 871-72; Comedy III, 25 Cal.4th at 398).6 To
protect the First Amendment rights threatened whenever a publicity rights
5 In Comedy III, this Court recognized the high level of constitutional protection afforded to audio-visual, literary and dramatic works and developed a test for determining when other nontraditional media (such as products and merchandise) contain expressive elements that are entitled to similar protection. 25 Cal.41h at 403-06. In this way, Comedy III sought to expand, rather than restrict, the potential scope of First Amendment protection accorded to nontraditional media that sometimes, but not always, serve as vehicles for expression. The Court of Appeal in this case subverted this objective by restricting the protection afforded to audio-visual, literary and dramatic works that - unlike products and merchandise - are, by their nature, non-commercial expressive vehicles. .
6 In Daly, the District Court for the Northern District of California considered whether the use of an individual's image in a television series provides a basis for a claim under section 3344. 2002 WL 31934153 at *2. The defendant argued that the television series at issue was an expressive work subject to the protections of the First Amendment "[r]egardless of whether it is categorized as 'news,' 'public affairs,' or purely entertainment." Id. (citation omitted). The Court agreed and dismissed plaintiff's right of publicity claim. ld. at *3. It held that because the television series "is an expressive work protected by the First Amendment, [the] plaintiff cannot state a misappropriation claim based on the use of her likeness in the program or the advertisements for the program." ld.
7
claim is based on the use of celebrity identity markers in audio-visual,
literary or dramatic works, this Court should affirm that such traditionally
protected expressive works fall outside the ambit of "products,
merchandise, or goods" regulated by section 3344. Even if this Court were
to find that audio-visual, literary and dramatic works could be considered
"products, merchandise, or goods" within the meaning of section 3344, it
should strictly confine the "transformative use" test to literal visual
depictions of celebrity images in nontraditional media of eXpression and
hold that audio-visual, literary and dramatic works are inherently
«transformative." Should this Court fail to properly circumscribe the right
of pUblicity in these ways, then section 3344 itself would be an
unconstitutionally overbroad form of content-based discrimination.
A. Traditionally Protected Expressive Works Are Not
"Products. Merchandise. or Goods" Within the Meanine
of Section 3344(a).
Civil Code Section 3344, like the common law right of publicity,7
seeks to protect the commercial value of a person's identity by imposing
liability for the unauthorized commercial use of "another's name, voice,
signature, photograph, or likeness, in any manner, on or in products,
merchandise, or goods, or for purposes of advertising or selling, or
soliciting purchases of, products, merchandise, goods or services, without
such person's prior consent ... " Cal. Civ. Code § 3344(a) (emphasis
.7 As this Court explained in Comedy III, the right of publicity is
both a statutory and a common law right in California. Comedy III, 256 Cal.4th at 391 (citing Lugosi v. Universal Pictures (1979) 25 Cal.3d 813, 818 n.6). Under California law, the common law right of publicity has no more expansive purpose than the statutory right Both seek to protect a celebrity's interest in the economic value of commercial uses of his or her name and likeness. Id.
8
added). Unless the work at issue is a "product, merchandise, or good,"
section 3344 simply does not apply. Id.1
In Comedy III, this Court considered whether an artist who sold
unauthorized lithographs and T-shirts bearing a likeness of the former
comedy team known as The Three Stooges violated former Civil Code
Section 990. The defendant artist had reproduced the lithographs and T
shirts from a charcoal drawing of The Three Stooges. The trial court found
for the plaintiff, awarded damages and attorney's fees, and issued a
permanent injunction. The Court of Appeal modified the judgment by
striking the injunction, but otherwise affirmed.
Before this Court applied the statute to evaluate the defendant's
liability, it explicitly determined that the lithographic prints and T-shirts at
issue were "products, merchandise, or goods" within the meaning of former
section 990. Comedy 111,25 Cal.4th at 395. Specifically, this Court
reasoned that:
Saderup's lithographic prints of the Three Stooges are themselves tangible personal property ... made as products to be sold and displayed on walls like similar graphic art. Saderup' s T-shirts are likewise tangible personal property ... made as products to be sold and worn on the body like similar garments. By producing and selling such lithographs and T-shirts, Saderup thus used the likeness of The Three Stooges 'on ... products, merchandise, or goods' within the meaning of the statute.
I The Restatement (Third) of Unfair Competition similarly limits potential liability for infring,ement of a person's right of publicity to the use of another's name or likeness "for the purposes of trade." Rest. 3 d, Unfair Competition, § 46. The Restatement provides that the "use 'for purposes of trade' does not ordinarily include the use of a person's identity in news reporting, commentary, entertainment, works of fiction or nonfiction, or in advertising that is incidental to such uses." Id., § 47.
9
Id. (emphasis added). Only after it undertook this threshold inquiry and
made its determination did the Comedy III Court analyze whether the First
Amendment precluded the plaintiff from asserting a right of publicity claim
based upon the literal visual depiction of The Three Stooges. Id.
Yet the Court of Appeal disregarded the plain language of section
3344 and reflexively applied the statute to the comic books at issue without
stopping to inquire'whether these wholly fictional works are "products,
merchandise, or goods." The Court of Appeal again ignored this statutory
inquiry before embarking upon its "transformative use" analysis. If section
3344 were applied in every case in which a celebrity's identity markers
were incorporated into any work, regardless of the medium of expression,
the statute's express limitation to "products, merchandise, or goods" would
be rendered meaningless.
Films, books and other traditionally protected expressive works are
not "products, merchandise, or goods" within the meaning of section 3344.
Unlike "products" and "merchandise" - the primary purpose of which is
not the expression of ideas9 - audio·visual, literary and dramatic works are
vehicles through which ideas and opinions are regularly expressed. See,
e.g., Guglielmi, 25 Cal.3d at 865 ("film is a medium which is protected by
the constitutional guarantee of free expression"); Polydoros, 67 Cal.App.4th
at 323-24 ("[f]ilm is a 'significant medium for the communication of ideas'
and, whether exhibited in theaters or on television, is protected by
9 "Products" and "merchandise" have a value as tangible objects independent of any expressive elements. Winter v. G.P. Putnam's Sons (9th
Cir. 1991) 938 F.2d 1033, 1034; James v. Meow Media, Inc. (6th Cir. 2002) 300 F.3d 683, 701; Sanders v. Acclaim Entertainment, Inc. (D.C. Col. 2002) 188 F. Supp. 2d 1264, 1277-1279; see also Guglielmi, 25 Cal.3d at 874 (citing Lugosi, 25 Cal.3d 813) (commercial products are not vehicles
10
constitutional guarantees of free expression") (citations omitted). Such
works are constitutionally protected in the same manner as political
treatises and topical news stories. Polydoros, 67 Cal.App.4th at 324.10 The
incorporation of a prominent individual's name or likeness in such
traditionally protected expressive works does not alter the works'
expressive nature:
Contemporary events, symbols and people are regularly used in [audio-visual and literary works]. . .. [Filmmakers and authors] may be able to more persuasively, or more accurately, express themselves by weaving into the tale persons or events familiar to readers. The choice is theirs. No author [or filmmaker] should be forced into creating mythological worlds or characters wholly divorced from
through which ideas and opinions are regularly disseminated); HiCks, 464 F. Supp. at 430 (same).
10 Like films, books and other traditionally protected expressive works, comic books are entitled to full First Amendment protection. Doe, 2002 Mo.App. LEXIS 1577 at *36 (comic books are a legitimate and important vehicle for the communication of ideas and opinions); Wilson v. Midway Games, Inc. (D. Conn. 2002) 198 F. Supp. 2d 167, 181 ("comic books and movies are protected speech"); Charles Atlas, Ltd v. DC Comics, Inc. (S.D.N.Y. 2000) 112 F. Supp. 2d 330,335-36 ("a comic book ... is undoubtedly an expressive work"); see also HiCks, 464 F. Supp. at 430 (books and movies are vehicles through which ideas and opinions are disseminated). As the Missouri Court of Appeal recently explained, "[ c ]omic books are a ... form of self-expression. Often controversial, they have been described as 'the mass-market, pulp-paper bad boys of publishing.'" Doe, 2002 Mo.App. LEXIS 1577 at *34 (citations omitted). Indeed, "[ c ]omic books continue to be a legitimate and important part of the American artistic and literary landscape. Their combination of pictures and words often help young readers to learn. Their characters and imagery form a powerful subtext to American culture and imagination and for that reason serve as the basis for many Hollywood movies. Though often criticized as 'low brow' or 'literature for the illiterate,' nothing prevents this art form from rising to the most sublime levels, as in Art Spiegelman's Maus, a stunning comic book version of the Holocaust, which won a Pulitzer Prize in 1992." Id. at *35.
11
reality. The right of publicity derived from public prominence does not confer a shield to ward off caricature, parody or satire. Rather, prominence invites creative comment. Surely, the range of free expression would be meaningfully reduced if prominent persons in the present and recent past were forbidden topics for the imaginations of authors [and filmmakers] ....
Guglielmi, 25 Cal.3d at 869.
Although this Court has yet to explicitly hold that films, books and
other similar expressive works fall outside the ambit of "products,
merchandise, or goods" regulated by the right of publicity, the First
Amendment dictates that these works should receive such categorical
protection without any showing of "transformativeness." See, e.g., id. at
874 ("the use of a celebrity identity in a constitutionally protected medium
of expression" is determinative when considering the viability of a right of
publicity claim); Polydoros, 67 Cal.App.4th 322 (the right of publicity does
not apply to fictional works); University o/Notre Dame, 256 N.Y.S.2d at
307 ("[i]t is enough that the work is a form of expression 'deserving of
substantial freedom - both as entertainment and as a form of social and
literary criticism' [citation] .... "); Rosemont Enterprises, 294 N.Y.S.2d at
6 (the publication of a biography is clearly outside the ambit of the
"commercial use" contemplated by the right of publicity); see also Rest.3d,
Unfair Competition, §§ 46-47 (prescribing an express exclusion for "the
use of a person's identity in news reporting, commentary, entertainment,
works of fiction or nonfiction, or in advertising that is incidental to such
use"). Courts have consistently recognized that "the First Amendment
provides greater protection to works of artistic expression such as movies,
plays, books, and songs, than it provides to pure 'commercial speech. '"
Seale, 949 F. Supp at 337; Hicks, 464 F. Supp. at 430. They have just as
consistently held that the First Amendment-protected expression embodied
12
in audio-visual, literary and dramatic works trumps the right of publicity.
See, e.g., Guglielmi, 25 Cal.3d at 872 (whether the film, book or other
traditionally protected expressive work is factual and biographical or
fictional, the value of free expression outweighs the right of publicity);
Polydoros, 67 Cal.AppAth 322. The First Amendment requires that such
traditionally protected expressive works be categorically exempt from
pUblicity rights claims; they cannot serve as the basis of such claims.
Polydoros, 67 Cal.AppAth at 322; Daly, 2002 WL 31934153 at *3.11
The application of section 3344 to traditionally protected expressive
works that incorporate celebrity identity markers raises the specter of
liability whenever a filmmaker or author references a prominent person in a
play, book, magazine, newspaper, audio-visual work, or any other
expressive work. It extends the right of publicity to allow a celebrity to
control the use of his or her identity in traditionally protected expressive
works, granting him or her the power to suppress ideas associated with that
identity and placing off-limits a useful and expressive tool. Doe, 2002
Mo.App. LEXIS 1577 at *40 (exposing those engaged in the creative
process to potential liability based on the use of certain names, words,
thoughts and ideas will revoke the poetic license of those engaged in the
11 If this Court were to affirm the existence of such categorical exceptions in section 3344, individuals would not be left without recourse for the misuse of their identities. Other bases of liability - such as defamation and false light invasion of privacy - remain available to protect the bona fide interests of these individuals. Indee<L in this very case, respondents Johnny and Edgar Winter (collectively "Respondents") asserted a claim for defamation in addition to their right of publicity claim. Under the facts of this case, however, the Court of Appeal correctly affmned the trial court's grant of summary adjudication of this defamation claim in favor of Petitioners. Winter, 99 Cal.App.4th at 469.
13
creative process and ultimately impede our ability to express ourselves ).12
Absent an express recognition by this Court that all traditionally protected
expressive works (whether "low brow," "middle brow" or "high brow") are
not "products" under section 3344, these types of works are rendered
vulnerable to a plethora of publicity rights claims.
To ensure that the right of publicity does not frustrate uninhibited
debate upon public issues, and to preserve the freedom to criticize and
comment upon prominent individuals, this Court should affirm that the
right of publicity does not preclude the use of an individual's identity
markers in audio-visual, literary and dramatic works. It should provide
guidance to California courts, protect First Amendment freedoms and foster
certainty in the law by holding that audio-visual, literary and dramatic
works fall outside the ambit of "products, merchandise, or goods" regulated
by section 3344.
12 As but one example, if this Court were to affirm the Court of Appeal's apparent wholesale application of section 3344 test to all traditionally protected expressive works that incorporate celebrity identity markers, authors and fiIminakers would be discouraged from creating biographical works. Such works are unavoidably based upon the actual lives and experiences of prominent individuals. The application of the statute and the "transformative use" test to such biographical works would constantly expose producers and distributo.rs of these works to potential liability. The same concerns apply to docudramas 'and other fictionalized accounts that appear to draw upon characteristics of real persons. For example, in the Court of Appeal's view, would Orson Welles' classic motion picture "Citizen Kane" survive that Court's application of section 3344 and "transformative use" scrutiny - given the parallels between the film's "Charles Foster Kane" character and newspaper publisher William Randolph Hearst?
14
B. The First Amendment Requires That This Court Carve
Out a Safe Harbor for Traditionally Protected Expressive
Works in the Context of Its "Transformative Use" Test.
Even if this Court were to detennine that audio-visual, literary and
dramatic works could be considered "products, merchandise or goods"
within the meaning of section 3344 and that such traditionally protected
expressive works are not categorically exempt from pUblicity rights claims,
the First Amendment requires that this Court expressly limit the application
of the "transformative use".test to literal visual depictions in nontraditional
media of expression and deem audio-visual, literary and dramatic works
inherently"transformative." Where ideas are disseminated through the
incorporation of celebrity identity markers in nontraditional media, courts
have struggled to develop standards for balancing First Amendment
concerns against the pecuniary interests protected by the right of
publicity.13 See Guglielmi, 25 Cal.3d at 874 (citing Lugosi, 25 Cal.3d 813)
(wilike motion pictures, commercial products such as plastic toy pencil
sharpeners, soap products, target games, candy dispensers and beverage
stirring rods are not vehicles through which ideas and opinions are
regularly disseminated); Hicks; 464 F. SUpp. at 430 (because books and
movies are vehicles through which ideas and opinions are disseminated
they have enjoyed constitutional protection not accorded to "merchandise").
Courts recognize that giving broad scope to the right of publicity threatens
13 Both the common law right of publicity and California's right of publicity statute, Civil Code Section 3344, serve to protect a person's right to control and derive revenue from the commercial use of his or her name, likeness, or other identity markers. Comedy III, 25 Cal.4th at 400; see also Ruffin-Steinbackv. De Passe (5th Cir. 2000) 82 F. Supp. 2d 723, 729 (the right of publicity protects an individual's pecuniary interest in the 'commercial exploitation of his or her persona).
15
the First Amendment by allowing a celebrity to restrict unflattering
commentary and control undesired discussion. Comedy III, 25 Cal.4th at
397-99; see also Rest.3d, Unfair Competition, §§ 46-47 ("[t]he right of
publicity as recognized by statute and common law is fundamentally
constrained by the public and constitutional interest in expression").
Hence, because nontraditional media may serve as vehicles for expression,
courts must develop standards to protect speech in such media. Comedy III,
25 Cal.4th at 399; see also Hoepker v. Kruger (2002) 200 F. Supp. 2d 340,
352-54 (products can qualify as artistic expression that is entitled to First
Amendment protection).
This Court developed the "transfonnative use" test in order to
resolve the tension between the right of publicity and the right of free
speech in the context of li,teral visual depictions or imitations of a celebrity
in nontraditional media of expression. In Comedy III, this Court explicitly
acknowledged that the creative appropriation of celebrity images in
"products, merchandise, or goods" can be an important avenue of
individual expression that is entitled to a high degree of First Amendment
protection. Comedy III, 25 Cal.4th at 397.14 To safeguard the fundamental
rights conferred by the First Amendment,.and to reconcile those
constitutional rights with the right of publicity, this Court held that a
14 Lithographs may sometimes serve as vehicles for protected speech. See ETW Corp. v. Jireh Publishing. Inc. (N.D. Ohio 2000) 99 F. Supp. 2d 829,835 (although some posters are the equivalent of merchandise, defendant's artistic prints seek to convey a message and are distinguished from posters which merely reproduce an existing photograph). The Comedy III Court, which distinguished ETW, determined that such merchandise is entitled to constitutional protection when, in depicting a celebrity, it "transforms" that mdividual's likeness into something more than a literal depiction or mere imitation. Comedy III, 25 Cal.4th at 405-06.
16
product that features a "literal depiction" of a celebrity's image is entitled
to First Amendment protection where the work "adds significant creative
elements so as to be transformed into something more than a mere celebrity
likeness or imitation." ld. at 405.15 Under this "transformative use" test,
courts must determine '''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." ld. at 406.16
15 As a factual matter, the comic books at issue in Winter are clearly traditionally protected expressive works that differ significantly from the products addressed in Comedy III. See Doe, 2002 Mo.App. LEXIS 1577 at *36 ("the comic book is an important expressive medium entitled to the full protections of the First Amendment"). Moreover, Respondents are living persons whose publicity rights claims arise under Civil Code Section 3344. However, since Comedy III was based on former Civil Code Section 990 (California's initial post-mortem right of publicity statute), this Court was silent about whether its "transformative use" test applies to living celebrities. For purposes of this brief: Amici assume arguendo that this Court's "transformative use" test was meant to apply to living, as well as to deceased, persons.
16 To generate added certainty in the analysis, this Court set forth a subsidiaty inquiry for the resolution of "close cases" - namely, "does the marketability and economic value of the challenged work derive primarily from the fame of the celebrity depicted?" Comedy III, 25 CalAth at 407. If the value of the work comes principally from the creativity, skill, and reputation of the artist it may be presumed that sufficient transformative elements are present to warrant First Amendment protection. ld. However, if the "artistic expression takes the form of a literal depiction or imitation of a celebrity for commercial gain ... ," the First Amendment potentially fails to provide a complete defense to a right of publicity claim. Id. (emphasis added). The half-wormlhalf-human characters at issue in Winter are clearly not a "literal depiction or imitation" of Respondents. See Winter, 99 Cal.AppAth at 462-64. As is obvious from the undisputed facts described in Petitioners' opening and answering briefs and as described by the Court of Appeal, this is not a "close case" in which resort to such a subsidiaty analysis need even be contemplated.
17
The Court of Appeal applied this "transformative use" test outside
the context of literal visual depictions of a celebrity in nontraditional media
of expression to all uses of a celebrity's identity markers in any medium.
This broad application of the "transformative use" test fails to account for
the high level of First Amendment protection afforded to audio-visual,
literary and dramatic works. AS explained above, audio-visual, litermy and
dramatic works - whether biographies, documentaries, docudramas, works
of fiction, social commentaries or historical depictions - are fully protected
by the First Amendment. See, e.g., Guglielmi, 25 Cal.3d at 874 ("a work of
fiction on film" is protected by the First Amendment).
More so than posters, bubble gum cards, or some other such 'merchandise,' books and movies are vehicles through which ideas and opinions are disseminated and, as such, have enjoyed certain constitutional protections, not generally accorded 'merchandise.'
Hicks, 464 F. Supp. at 430 (emphasis added). The First Amendment
protection afforded to audio-visual, literary or dramatic works always
outweighs an individual's right of publicity. See, e.g., Polydoros, 67
Cal.App.4th at 324; Daly, 2002 WL 31934153 at *3; Hicks, 464 F. Supp. at
433; Rosemont Enterprises, 294 N.Y.S.2d at 129.17 There is no need to
evaluate whether such works contain expressive elements that require First
17 If the "transformative use" test is extended to analyze the propriety of using celebrity identity markers in such traditionally protected expressive works, these works will receive the same reduced level of constitutional protection as mere commercial productS and merchandise. See, e.g., Central Hudson Gas & Elec. Corp. v. Public Servo Comm'n (1980) 447 U.S. 557, 566 ("[c]ommercial speech may be freely regulated, or even banned, if it is 'false, deceptive, or misleading;' but commercial speech otherwise-can be restricted only if 'the State shows that the restriction directly and materially advances a substantial state interest in a manner no more extensive than necessary to selVe that interest").
18
Amendment protection; such works are expressive by their nature. IS As
Chief Justice Bird reasoned in her majority concurring opinion in
Guglielmi:
Any other conclusion would allow reports and commentaries on the thoughts and conduct of public and prominent persons to be subject to censorship under the guise of preventing the dissipation of the publicity value of a person's identity. Moreover, the creation of historical novels and other works inspired by actual events and people would be off limits to the fictional author. An important avenue of self-expression would be blocked and the marketplace of ideas would be dirnini shed .... '[I]t is difficult to imagine anything more unsuitable, or more vulnerable under the First Amendment, than the compulsory payment, under a theory of appropriation, for the use made of [an individual's identity in a work of fiction]. '"
Guglielmi, 25 Cal.3d at 871-72. 19
18 The "transformative use" test does not provide a comprehensive standard for protecting First Amendment rights whenever they conflict with publicity rifts. SeeJ. Thomas McCarthy, The Rights of Publicity and Privacy (2n ed. 2002) (the "transformative use" test is not a "one test fits all" analysis for any and all possible infringements of the right of publicity). Rather, it provides a means for analyzing only those circumstances where literal visual depictions of a celebrity's image appear in nontraditional media that contain expressive elements and are therefore entitled to constitutional protection that they might not otherwise receive. ld. In this way, the "transformative use" test expands, rather than restricts, the potential scope of constitutional protection accorded to speech embodied in media other than those which have traditionally received full First Amendment protection. ld. By contrast, the Court of Appeal in Winter misapplied the "transformative use" test in a manner that restricts First Amendment rights.
19 In addition to its misapplication of section 3344 and its misinterpretation of the "transformative use" test, Winter contradicts established precedent to the extent it implies that, even if the work itself is found to be protected expression as a matter of law, references to the
19
Moreover, it is well established that the protection afforded to
speech should not depend upon the perceived quality of the expression.
Bleistein v. Donaldson Lithographing Co. (1903) 188 U.S. 239, 251 ("It
would be a dangerous undertaking for persons trained only in the law to
constitute themselves final judges of the worth of pictorial illustrations,
celebrity in the marketing of the work can create an issue of fact regarding liability where it otherwise would not exist. 99 Cal.App.4th at 473-74. A person who exercises his or her constitutionally protected right to create an expressive work undoubtedly has a related right to advertise that work. Guglielmi, 25 Cal.3d at 873. Indeed, where the use of a celebrity's name or likeness in a work is not an actionable infringement of the celebrity's right of publicity, the use of his or her identity in advertisements for the work is similarly not actionable. Id.; Polydoros, 67 Cal.App.4th at 325 ("Because respondents were creating a fictionalized artistic ~ork, their endeavor is constitutionally protected. This right was not diminished when respondents advertised then sold their work as mass public entertainment."); Rest.3d, Unfair Competition, § 47 ("advertising that is incidental" to the use of a person's identity in a traditionally protected expressive work does not infringe the right of publicity). If the work itself qualifies for First Amendment protection, the inquiry must end; the subsequent marketing of the work is immaterial. See Gionfriddo v. Major League Baseball (2001) 94 Cal.App.4th 400,413-14 (where plaintiffs' performances in baseball games was exempt from right of publicity, statistics and video depictions could also be used on defendant's web site); Montana v. San Jose Mercury News, Inc. (1995) 34 Cal.App.4th 790, 796-97 (where original publication, newspaper story and photo on sporting event was constitutionally protected and exempt from common law and statutory right of publicity, newspaper had constitutional right to sell posters incorporating the original publication in order to advertise and promote the newspaper); Rest.3d, Unfair Competition, § 47 at cmt. a ("the use of a celebrity's mime or photograph in an advertisement for a biography of the celebrity or for a magazine containing an article about the celebrity will not subject the advertiser to liability for infringement of the celebrity's right of publicity"). Any advertisement or other marketing of Petitioner's comic book series is merely an adjunct to the exploitation of the constitutionally protected underlying work and cannot alter its expressive character. It would be illogical to allow Petitioners to create a protected work while effectively precluding any promotion of this lawful entetprise.
20
outside of the narrowest and most obvious limits"); see also Mazer v. Stein
(1954) 347 U.S. 201, 214 (perception of the beautiful is too varied a power
to permit a narrow or rigid concept of art); Guglielmi, 25 Cal.3d at 87 n.l3
(courts may not muffle expression by passing judgment on its skill or
clumsiness or its sensitivity or coarseness); Hoepker, 200 F. Supp. 2d at
352 ("Courts should not be asked to draw arbitraty lines between what may
be art and what may be prosaic as the touchstone of First Amendment
protection"). If this Court were to adopt the "transformative use" test as the
standard for determining whether audio-visual, literary or dramatic works
are entitled to constitutional protection, filmmakers and authors would be
compelled to justify the use of an individual's identity markers in
traditionally protected expressive works by convincing courts that the
expression is truly"transformative." Judges and juries would be requir~d
to make aesthetic determinations about whether or not works that should
clearly be protected by the First Amendment qualify as speech. Only upon
satisfying a judge or jury of the "transformative" nature of the expressive
work would the shadow of liability and censorship fade.
Rather than regulating the sale of image merchandise - as was the
case in Comedy III - the Court of Appeal's overly broad interpretation of
Comedy IIr s "transformative use" test prevents the dissemination of audio
visual, literaty or dramatic works determined by a judge or jury to be
insufficiently creative. Such judicial scrutiny cannot help but chill the
creation of expressive works portraying real people. Because the Court of
Appeal's ruling discounts these constitutional concerns and empowers
celebrities to censor disagreeable depictions of their images, it is crucial to
the motion picture industry, book and magazine publishers and authors that
this Court safeguard the First Amendment interests inherent in traditionally
protected expressive works by reversing the Court of Appeal's decision and
holding that the "transformative use" test must be strictly confined to literal
21
depictions of celebrity images in nontraditional media of expression and
that audio-visual, literary and dramatic works are inherently
"transformative. "
C. The Court of Appeal's Expansive Application of Both
Section 3344 and the "Transformative Use" Test to
Traditionally Protected Expressive Works Creates an
Unconstitutional Form of Content-Based Discrimination.
If this Court does not affirm that traditionally protected expressive
works fall outside the ambit of "products, merchandise, or goods" regulated
by section 3344, or confine the "transformative use" test to literal visual
depictions of celebrity images in nontraditional media of expression and
acknowledge that audio-visual, literary and dramatic works are inherently
"transformative," section 3344 would be rendered unconstitutionally
overbroad. The expansive application of both section 3344 and the
"transformative use" test beyond literal depictions of celebrity images in
nontraditional media of expression to all expressive works that incorporate
identity markers for living persons would extend section 3344 far beyond
its constitutional boundaries.
Section 3344 is a content-based statute that singles out a specific
category of speech - namely. speech about living persons - and gives these
persons the power to control whether and how their names and images are
used. Comedy III, 2S CalAth at 401-03.20 When individuals invoke the
power of the courts to enjoin speech about particular subjects and secure
20 For example, in the instant action, Respondents rely on section 3344 to compel payment for the alleged misappropriation of their identities and discourage others from using those identities except on terms that Respondents alone dictate. That is, they seek to control the content of speech about a particular subject - i. e., themselves.
22
payment for speech that they characterize as unauthorized, they ask the
state to limit expression based upon its content.l1
The government may penalize speech on the basis of its content only
if the regulation is necessary to promote a compelling interest and only if it
chooses the least restrictive means to further the articulated interest. RA. V.
v. City olSt. Paul (1992) 505 U.S. 377, 382 (a statute that regulates speech
based upon its content is subject to a heightened level of scrutiny); Simon &
Schuster, Inc. v. New York State Crime Victims Bd. (1991) 502 U.S. 105,
115 (when some form of heightened scrutiny is applied, the law may
properly be regarded as presumptively invalid and is likely to be struck
down); Sable Communications v. FCC (1989) 492 U.S. 115, 126 (to
withstand constitutional scrutiny, the government must adopt a narrowly
drawn statute designed to serve a compelling interest without unnecessarily
interfering with First Amendment freedoms); Keenan v. Superior Court
(2002) 27 Cal.4th 413, 425 (laws regulating the content of speech will be
upheld only when they are justified by compelling governmental interests
and are narrowly tailored). Even if, and assuming arguendo that, the
pecuniary rights underlying section 3344 rise to the level of a "compelling"
interest, the Court of Appeal's expansive application of the statute and the
"transformative use" test to all traditionally protected expressive works that
incorporate any identity markers for living persons penalizes the content of
speech to an extent far beyond that necessary to protect celebrities'
21 In addition to the fact that section 3344 is a content-based statute, Comedy Ill's ''transformative use" test itself prescribes a content-based inquiry. The test extends protection to celebrity depictions based on the message conveyed in the work and compels a court faced with a literal celebrity depiction or imitation to determine whether the work "is worthy of First Amendment protection because added creative elements
23
pecuniary interests in their personas. This broad interpretation creates a
financial disincentive that discourages the dissemination of a wide range of
ideas and expressive works which have little or no relationship to the value
of a celebrity's image. It ''would inevitably chill the exercise of free speech
-limiting not only the manner and form of expression but the interchange
of ideas as well." Guglielmi, 25 Cal.3d at 869. All expressive works that
in any'way reference a celebrity are exposed to potential liability.
As this Court unanimously affirmed in Keenan, a statute that creates
a financial disincentive by denying compensation for an expressive work
that concerns a prominent individual chills both the free speech rights of the
author or creator and the reciprocal First Amendment rights of the work's
audience to receive protected communications. 27 Cal.4th at 429 n.15
(citing Virginia State Ed of Pharmacy v. Virginia Citizens Consumer
Council (1976) 425 U.S. 748, 756; Pacific Gas. & Elec. Co. v. Public Util.
Comm In (1986) 475 U.S. 1, 8). Where such a statute is content-based and
discourages the creation and dissemination of a wide range of ideas and
expressive works that have little or no relationship to the interests
underlying the statute, it cannot survive strict scrutiny.22 Id. at 431-32.
Because section 3344, as applied in Winter, penalizes the content of speech
significantly transform the celebrity depiction." Comedy III, 25 Cal.4th at 405.
22 As explained in Petitioners' opening and answering briefs, there is not even a rational basis for concluding that the supernatural, horrific and farcical half-wonnlhalf-human "Autumn brothers" characters - with their green tentacles sprouting from their chests - have a detrimental effect on Respondents' pecuniary interests. If the identity markers at issue in this case are sufficient to raise triable issues of fact regarding liability under section 3344, such a holding would impermissibly chill a wide range of constitutionally protected expression historically created and distributed by Amici.
24
to an extent beyond that necessary to achieve the statutory objectives, the
statute is overinclusive and therefore unconstitutional.
III. THE COURT OF APPEAL WRONGLY REFUSED TO
DETERMINE "TRANSFORMATIVE USE" AS A MATTER
OF LAW.
Even if Amici were to assume arguendo that the "transformative
use" test applies to the comic books at issue in Winter, the Court of
Appeal's failure to determine that Petitioners' five-part comic book series is
entitled to the First Amendment protection accorded transformative
expression is improper. When a work contains significant transformative
elements, it is entitled to First Amendment protection as a matter of law.
Comedy III, 25 CalAth at 405. In other words, where the material facts are
not in dispute, First Amendment principles command that courts resolve the
issue of "transformative use" at the earliest possible stage to avoid the
chilling effect that protracted litigation has on First Amendment rights. Id.;
see also Good Government Group o/Seal Beach, 22 Cal.3d at 685; Miller,
187 Cal.App.3d at 1479; Sipple, 154 Cal.App.3d at 1046; Bill, 137
Cal.App.3d at 1014-15; Cal. Code Civ. Proc. § 425.16.
Notwithstanding this clear rule, the Court of Appeal did not
determine Petitioners' entitlement to First Amendment protection. Even
though no material facts were in dispute, the Court of Appeal concluded
that "triable issues of fact exist whether or not the use of Respondents'
likenesses in the comic books qualifies as a 'transformative use.'" Winter,
99 Cal.App.4th at 462. This conclusion contradicts both the Court of
Appeal's findings on the non-misappropriation claims, where it affirmed
the trial court's grant of summary judgment Cid. at 439), and this Court's
holding in Comedy III.
25
Had the Court of Appeal properly applied the "transformative use"
test to the undisputed facts, it would have been compelled to rule as a
matter of law that Petitioners' comic books did not violate Respondents'
publicity rights. As discussed in Petitioners' opening and answering briefs,
the wildly imaginative and wholly unrealistic comic books are undeniably
transformative. The abundant creative elements woven into the works,
including the unique graphic portrayal of the characters allegedly based on
Respondents, transform the comic books into something that is entirely
Petitioners' own expression.
Moreover, even if this were a "close case" (which it is not), the use
at issue would qualify for constitutional protection as a matter of law under
the subsidiary inquiry pronounced in Comedy III. As explained above, this
subsidiary inquiry focuses on whether the marketability and economic
value of the challenged work derives primarily from the fame of the
celebrity depicted. Comedy III, 25 Cal.4th at 407. The marketability and
economic value of the comic books at issue in this case are derived from
the creativity and skill of the author and artist; from the story itself and all
its supernatural, horrific elements; from the popularity of the central
character; and from an avid following engendered by Petitioners' audience.
There can exist no meaningful question of fact on that issue.
Instead of resolving the First Amendment issues presented as a
straightforward matter of law, the Court of Appeal unduly and improperly
prolonged this action by remanding the case for further proceedings in the
trial court. Its refusal to resolve the constitutional issues in the early stages
of the case poses enormous danger to Amici's First Amendment rights and
will create rampant uncertainty and result in pervasively chilling self
censorship. rru.s Court must therefore correct the Court of Appeal's refusal
to answer the "transformative use" inquiry as a matter oflaw.
26
..
IV. CONCLUSION
For each and all of the foregoing reasons, as well as those set forth in
Petitioners' opening and answering briefs, Amici respectfully submit that
this Court should affirm the trial court's grant of summary judgment in
favor of Petitioners on Respondents' right of publicity claims. Amici
additionally request that this Court clarify and affirm that audio-visual,
literary and dramatic works (and advertising related thereto) remain entitled
to full First Amendment protection and are therefore exempt from publicity
rights liability without any showing of "transformativeness."
Dated: March 21,2003. Respectfully submitted,
LOEB & LOEB LLP DOUGLAS E. MIRELL JOSEPH GEISMAN
By:L~~ /Josep Geisman
Attorneys forAmici Motion Picture Association of America, Inc.,
Association of American Publishers, Inc., Authors Guild, Inc.,
Publishers Marketing Association, Comic Book Legal Defense Fund, Dramatists Guild of America, Inc.,
PEN American Center, American Booksellers Foundation for Free Expression, and
Freedom to Read Foundation
27
CERTIFICATE OF COMPLIANCE
Pursuant to California Rules of Court 14 and 29.1 (b)-( c), the
"Request for Leave to File Amicus Brief; Amicus Brief of the Motion
Picture Association of America, Inc., Association of American Publishers,
Inc., Authors Guild, Inc., et at., in Support of Petitioners," submitted for
filing on March 21, 2003, contains 10,962 words and was produced on a
computer, using Times New Roman font, 13-point.
Dated: March 21,2003. Respectfully submitted,
LOEB & LOEB LLP DOUGLAS E. MIRELL JOSEPH GEISMAN
Attorneys for Amici Motion Picture Association of America, Inc.,
Association of American Publishers, Inc., Authors Guild, Inc.,
Publishers Marketing Association, Comic Book Legal Defense Fund, Dramatists Guild of America, Inc.,
PEN American Center, American Booksellers Foundation for Free Expression, and
Freedom to Read Foundation .
Lit CC363406.& 2033S11000S If.Z7f.ZOO3jg
28
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Lit CC367843.1 20335110005 0312012003 jyj