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

California Supreme Court Los Angeles Office Ronald Reagan Bldg. 300 S. Spring Street 2nd Floor, N. Tower

SERVICE LIST

Los Angeles, California 90013-1213

Clerk, Court of Appeal Second Appellate District Division Four 300 S. Spring Street 2nd Floor, North Tower Los Angeles, California 90013-1213

The Honorable Ronald E. Cappai clo Clerk of the Los Angeles Superior Court Department 23 111 N. Hill Street Los Angeles, California 90012-3117

Vincent Chieffo, Esq .. Greenberg Traurig, LLP 2450 Colorado Avenue Suite400E Santa Monica, California 90404

Michael Bergman, Esq. Anjani Mandavia, Esq. Weissman, Wolff, Bergman, Coleman, Silvennan & Holmes, LLP 9665 Wilshire Boulevard, Suite 900 Beverly Hills, California 90212

Lit CC367843.1 20335110005 0312012003 jyj