Publicity II

Intro to IP – Prof Merges

4.19.2012

Agenda

• Midler recap

• White v Samsung

• Comedy III v. Gary Saderup

Bette Midler

http://rateyourmusic.com/release/album/bette_midler/the_divine_miss_m/buy

The nature of the publicity right

• Copyright?– No; license to song here (owner of composition –

“synch” license)

• Trademark/unfair competition

– TM, no: no “secondary meaning” in voice here

“We hold only that when a distinctive voice of a professional singer is widely known and is deliberately imitated to sell a product, the sellers have appropriated what is not theirs and have committed a tort in California . . .”

IPNTA 5th at 1025

Overview: Rt of Publicity

• 15 States: common law protection

• 16 States: protected by statute

• California: both!

Assignable and Descendable Rights

• Eg, Cal Civ Code 3344

• Life plus 70 year term for rt of publicity

• Fully assignable: 33414.1(b)

Cal Civ code 3344

(d) For purposes of this section, a use of a name, voice, signature, photograph, or likeness in connection with any news, public affairs, or sports broadcast or account, or any political campaign, shall not constitute a use for which consent is required under subdivision (a). IPNTA 5th at 1022

White v. Samsung

Panel Majority Holding

• District court reversed: Samsung infringed Vanna White’s right of publicity under cases such as Midler v. Ford Motor

• Expansion from photo to voice to other “likeness” such as this reference in the ad

Judge Kozinski

Kozinski dissent

• Too much property is a real concern

– Residential land analogy

• “Overprotection stifles the very creatives forces it’s supposed to nurture.”

Cal Civil Code 3344(a)

• Did Samsung use White’s “likeness”?

• Kozinski says no . . .

Majority

• California law protects any manifestation of “identity,” anything that “evokes” her personality

• Kozinski: idea/expression dichotomy proves that “stealing” something of value is not in and of itself wrong . . .

What is the downside to a robust right of publicity?

• Loss of “balance”

• Undermining federal scheme

• Preemption issues . . .

Kozinski dissent

The majority isn’t, in fact, preventing the ‘‘evisceration’’ of Vanna White’s existing rights; it’s creating a new and much broader property right, a right unknown in California law. It’s replacing the existing balance between the interests of the celebrity and those of the public by a different balance, one substantially more favorable to the celebrity. – IPNTA 5th at 1029

Kozinski points

• Lack of balance

• No explicit parody defense

• No first amendment analysis

Why it matters

• For better or worse, we are the Court of Appeals for the Hollywood Circuit. Millions of people toil in the shadow of the law we make, and much of their livelihood is made possible by the existence of intellectual property rights. – IPNTA 5th at 1033

Big Picture

But reducing too much to private property can be bad medicine. Private land, for instance, is far more useful if separated from other private land by public streets, roads and highways. Public parks, utility rights-of-way and sewers reduce the amount of land in private hands, but vastly enhance the value of the property that remains. – IPNTA 5th at 1027

A Property Rights View

Private parcels

Public Street

Comedy III v. Gary Saderup

• Another instance of a “likeness”

• Note differences from Midler and White

Growing sophistication/development of rt

of publicity

• Markets for right of publicity

• Defenses to actions

• Descendability/enforcement

Moe Howard was born on June 19, 1897, in Bensonhurst, New York, a small Jewish community on the outskirts of Brooklyn. Moe's real name was Moses Horwitz. Moe's mother's name was Jennie Horwitz, and his father was clothing cutter Solomon Horwitz.

Curly Howard's real name was Jerome Lester Horwitz. He was born to Jenny and Solomon Horwitz on October 22, 1903, the fifth and youngest of the five Horwitz brothers.

Larry Fine was born Louis Fienberg on October 5, 1902 on the south side of Philadelphia, Pennsylvania. His father, Joseph Fienberg, and mother Fanny Lieberman, owned a watch repair and jewelry shop.

Gary Saderup wants his audience to "see into the hearts" of his subjects. If you look into the eyes of his works, you can see just that. At age five, Gary began art lessons and continued his drawing throughout childhood. Building on his multifaceted abilities, he majored in illustration and film while attending the Art Center College of Design in Pasadena, California.

Comedy III v. Gary Saderup

• Facts

• Doctrine

• Theory

Facts

• Lithographs (prints)

• T-shirts

• Based on original charcoal drawing

Judge Stanley Mosk

Advertising v. Expressive Works

• Advertising is “commercial speech,” subject to lower level of protection than other speech, including expressive works

• Supreme Court caselaw

Cal Civil Code 3344.1

• “Name, voice, signature, photograph or likeness”

• “on or in products, [or for] advertising . . . Products”

• Holder of rights: sub. B – by will or contract; (d) by statutory descent

• Duration: 70 years after death

• Note “class voting” rules

• Moe and Larry died in 1975, Curly in 1952

• What is the remaining term of protection in California?

• "Saderup's lithographic prints of The Three Stooges are themselves tangible personal property, consisting of paper and ink, made as products to be sold and displayed on walls like similar graphic art."

• If all graphic art is the relevant "product," then any reproduced likeness of the celebrity is prima facie infringing

• Must look for a statutory or First Amendment defense

Defamation

• Public figures vs. “ordinary people”

• Gertz v. Welch

• Actual malice/reckless disregard for truth

Prior restraint

• Injunctions in 1st Amendment cases

• Heavily disfavored

– National security, one of the few exceptions

Primary distinctions

• Andy Warhol's silk-screen prints of Marilyn Monroe, Elizabeth Taylor and Elvis Presley: okay under the “transformative” test

• But Saderup’s prints are not

– Justification?

IPNTA 5th at 1047

• Saderup argues that it would be incongruous and unjust to protect parodies and other distortions of celebrity figures but not wholesome, reverential portraits of such celebrities.

Parody

• C3 Entertainment, Inc.’s Licensing Division is charged with the responsibility of managing the licensing and merchandise program for The Three Stooges. We accomplish this through the pursuit of the right commercial opportunities that properly preserve the integrity of The Three Stooges while maintaining desired branding and positioning for The Three Stooges.

We devote personalized attention to each of our nearly 100 licensees and we are sensitive to the unique situations and financial goals of each. Years of experience combined with a true sense of support and responsiveness for our licensees distinguish C3’s licensing team as one of the best in the industry.

Contact us today and let us explore together how we can develop mutually beneficial merchandising and licensing programs.

• -- http://www.c3entertainment.com/licensing.asp

http://www.c3entertainment.com/threestoogesmovie.asp

State by state variation

• California, NY, Tennessee

• Indiana: center for publicity licensing

Indiana?

Jonathan Faber, Indiana

Madow article

• 81 Cal. L. Rev. 125

• Users/consumers of mass culture need to be able to appropriate images of famous people; to “make them their own” so as to participate in and comment on society and culture

What about the creators’ rights?

• The 3 actors “fashioned personae collectively known as” the Three Stooges

• “Through their talent and labor” they became a TM, a standard, a well-known “trope”

Harvard Univ. Press 2011

IP Rights and the development of talents

• Right of publicity recognizes effort over time to develop a “persona”

• Also, a persona is very close to a person’s identity; for some theorists (eg Kant and Hegel) this is a strong reason to grant property rights

• Effort helps prove we “deserve” rewards