Have California's Likeness Laws Gone Off the Deep End?

An alleged misappropriation of Lohan's likeness

As recently noted by Professor Marc Edelman on Forbes, the civil lawsuit filed by Lindsay Lohan against RockStar games for alleged misappropriation of likeness in Grand Theft Auto V is being watched closely for its impact on the ability of video game makers to utilize public figures' images without offering them compensation.  

NFL players and their financial planners are certainly watching that lawsuit closely, as EA and other video game makers routinely distribute sports-themed games that utilize players' attributes.

Now, the latest lawsuit against Activision for its alleged unauthorized use of Manuel Noriega's likeness in Call of Duty: Black Ops reveals just how warped California's right of publicity laws are becoming, unless they are reined in.

In the 2006 case of Kirby v. Sega, the California Court of Appeals had held that the First Amendment protected Sega's incorporation of certain elements of singer Kierin Kirby into the character Ulala.

According to that court, Sega's use was transformative and thus protected. In contrast, as noted by Professor Edelman, is the same California Appeals Court's 2011 decision in No Doubt v. Activision, because that game supposedly involved "computer-generated recreations of real band members."

The distinction between the cases is not clear.

However, what is clear from the Lohan and Noriega cases is that, unless seriously circumscribed, such lawsuits will proliferate and threaten one of the fastest growing areas of cultural expression: video games.

Without a bright line rule that celebrities and video game makers can understand and apply evenly across cases, every aggrieved "celebrity" such as Noriega and Lohan can (and undoubtedly will) flock to California, and find an aggressive lawyer looking to cash in big on the developing legal theory by filing such complaints against software developers and video game makers.

Such cases are easy to file and difficult to dismiss.  Both the prior Sega and Activision cases involved years of litigation and hundreds of thousands of dollars in legal fees.

Noriega Sues in L.A., Demanding "Lost Profits" from Likeness in Game

Noriega's Mugshot

In a newly-filed case in Los Angeles that is likely to even further tarnish the reputation of plaintiffs' lawyers (and possibly intellectual property lawyers generally), ousted Panamanian dictator Manuel Noriega has filed a civil lawsuit against Activision, alleging that his likeness was used without his permission in the recent video game Call of Duty II: Black Ops.

Time magazine reports that Noriega formally accuses the videogame's makers of "wrongly depict[ing]" him as a "kidnapper, murderer and enemy of the state."

In the 1989 invasion of Panama by the United States, Noriega was removed from power, captured, detained as a prisoner of war, and flown to the United States. Noriega was later tried on eight counts of drug trafficking, racketeering, and money laundering in violation of U.S. federal law in April 1992.

Noriega's U.S. prison sentence ended in September 2007; pending the outcome of extradition requests by both Panama and France, for convictions in absentia for murder in 1995 and money laundering in 1999.

France granted the extradition request in April 2010. He arrived in Paris on April 27, 2010, and after a re-trial as a condition of the extradition, he was found guilty again and sentenced to seven years in jail in July 2010.   

A conditional release was granted on September 23, 2011, for Noriega to be extradited to serve 20 years in Panama.  He arrived in Panama on December 11, 2011 where he is currently in prison.

Therefore, even assuming, for argument's sake, that Activision used Noriega's likeness in the game without offering him compensation, it is difficult to understand how Noriega could ever have lawfully received a penny.

Under both state and U.S. federal law (18 U.S.C. §§ 3681 and 3682), convicted criminals have difficulty keeping assets attributable to their crimes. While the U.S. Supreme Court has limited that principle in Simon and Schuster, Inc. v. Members of New York State Crime Victims Board, 502 U.S. 105 (1991), victim restitution and forfeiture orders are still permissible.

Further, it borders on the absurd to ponder how a dictator who was repeatedly convicted and sentenced under several different nations' laws can have a "reputation" that could be further harmed by a video game.

Even stranger still is that Noriega's attorney is a renowned trial lawyer of Erin Brockovich fame.

Martinson Coffee's Advertising Campaign Risks Elvis Presley Estate Lawsuit

I recently came across a billboard on the side of a telephone booth (yes, those still exist) in New York City, and stopped dead in my tracks to snap a photograph of it.

The primary reason that the advertisement caught my attention was that about three years ago, I had considered approving a similar advertising campaign.  We considered utilizing a stock photograph of a cheesy Elvis Presley impersonator along with the tagline: "Not All Imitation Is Flattery."

Now, there is an ongoing debate in legal circles about whether such commercial use of a famous persona should be protected as free speech and constitute a form of parody or fair use, or whether such use could conceivably be an infringement of the late Elvis Presley's right of publicity and trade dress and trademark rights.

Absent such a finding of free speech or fair use, the unauthorized commercial use of a famous person's likeness can constitute an infringement of their right to publicity.  This right can be protected under state law, even long after their death, unless that right has lapsed, or the person's identity is in the public domain.

Last year, we reported on the legal developments involving Albert Einstein's likeness and how use of it embroiled General Motors in protracted litigation.

There has been much written in the academic literature about the fuzzy boundaries between unlawful imitation and flattery. For example, Touro Law Review published an article in 2012 about this subject.

Aware of how aggressive Elvis Presley Enterprises (EPE) has been in the past in protecting Presley's image and likeness, we had contacted EPE to discuss whether we could obtain a license. This standard "clearance" procedure is a prudent measure, regardless of whether a fair use/parody defense exists.

I was informed by EPE's representative that the Estate would not offer a license for Elvis' likeness to be used in this manner. (It is possible that the unflattering impersonator we were considering using may have played a role).

Regardless of the legal merits of EPE's position, out of respect for "the King's" intellectual property rights and to avoid the risk of litigation, we never approved or ran the advertisement.

Now, it would appear that Martinson Coffee had a similar idea, and decided to run the advertisement.

According to a press release issued by Martinson in October 2013, it is using a media blitz campaign, including with roving trucks emblazoned with the billboards. "The Martinson® Coffee trucks will appear in over two dozen locations during the campaign. The social media launch will run in conjunction with a city-wide advertising campaign. The ads, featured on New York commuter rail stations, subway stations and the like, will focus on proving why Martinson is the Real Joe."

I contacted Martinson Coffee's public relations department by e-mail, to ask if they had sought or received a license from EPE. This is what they said:

"We currently buy our images from a stock image company.  They provide all the licenses for all the images they own.

We don’t do anything on our end.  They vet those issues out prior."

In other words, the advertising agency utilized "stock photography" and assumed that the stock photography company had acquired and provided all relevant licenses.

But this assumption is usually factually and legally incorrect.

For example, iStockPhoto, Getty Images, ShutterStock and other "stock image" galleries offer a variety of "Elvis Impersonator" photographs.

However, the licenses offered for such stock photographs is typically "for editorial use only."  Their Terms of Use specifically state that "Files for Editorial Use Only cannot be used for any commercial purposes. These files may contain identifiable brands, locations or people without the proper legal releases needed for commercial use.  They may be used in blogs, magazine and newspaper editorial applications, or other non-commercial uses." Shutterstock explains the distinction on its website.

Therefore, assuming for argument's sake that Martinson acquired its Elvis impersonator image from such a third party stock image company, its commercial use would clearly fall outside the scope of the editorial use only license.

Consequently, Martinson could not avail itself of the license defense, and could not drag the third party stock image company into the case to indemnify (defend) it.

Further, whatever "releases" the stock image company acquired for use of the image would only involve the model depicted in the photograph -- not the Elvis Presley Estate, who has the legal right and obligation to protect the King's likeness.

Commentators have noted that EPE is strategic about its litigation targets. It is yet to be seen if Martinson Coffee incurs its wrath, as there is no word yet on whether a lawsuit has been filed. 

Stay tuned.

Stock Image on ObamaCare Site Invites Scorn, Ridicule on Amateur Model

Aspiring models, be warned.

Now that the initial launch of the federal "ObamaCare" website has been declared an unmitigated logistical disaster, an odd intellectual property issue has been mentioned by bloggers and political pundits:  the rights of the models depicted in the stock photography used on the site.

When HealthCare.gov launched live on October 1, tens of millions of Americans visited the site to view an ethnically ambiguous, attractive 20-something woman smiling back, promising affordable health care.  "ObamaCare Girl" is precisely the target demographic that the administration is hoping sign up for health care.

Fox News called the smiling woman depicted in the stock photograph "mysterious," writing that "she smiles back at countless frustrated Americans as they tried to log onto the ObamaCare website."  The Washington Times dubbed her "Glitch Girl," and created a pseudo-mystery around her identity.

Since its launch, the website has crashed repeatedly, leading Congressional leaders to demand an accounting for the $300M dollars that have been spent on the website so far, given that few applicants have been satisfactorily able to sign up through the portal.

The unknown model whose face was used on the site may not be pleased with the newfound notoriety, but may have no legal recourse.

"Stock" photography is offered commercially by a wide variety of sources, such as Getty Images, Corbis, iStockPhoto.com and ShutterStock.com.  For an appropriate license fee, any user can easily download and use stock images for a variety of applications, including blogs and websites.

When objects depicted in the stock images are inanimate, the only release that is secured by the distributor is a license or assignment from the photographer.  Photographers are paid a scaled fee based on, among other things, the number of times that their images are downloaded and used.

However, when models are used in the images, the photographer typically secures a standard "release," which grants the licensees (including the distributors and end users) the right to pretty much plaster the image all over their websites and blogs.

The models essentially agree to release any claims that they might otherwise have for invasion of privacy, or appropriation of likeness under states' laws, in exchange for a nominal sum received from the photographer. In most cases, amateur models are paid very little to nothing per image, and give up all rights to control how their likenesses are used.

In the case of the anonymous woman whose face ended up appearing on a website viewed by millions of annoyed Americans, that notoriety might have been more than she bargained for.

The New York Daily News has noted that the image of ObamaCare Girl has now been removed, only to be replaced by stale graphics.

Is Albert Einstein Now in the Public Domain?

The GM Ad

Albert Einstein was no stranger to the concept of Intellectual Property.  In fact, he was a patent clerk in Switzerland as a young man.

Einstein later emigrated to the United States and took up residence in Princeton, New Jersey and held a professorship at the prestigious Institute for Advanced Study.  Einstein contributed so significantly to modern science that his name and likeness are still synonymous with genius.

Albert Einstein died in 1955, naming the Hebrew University of Jerusalem as one of the beneficiaries of his will.  As part of that will, he bequeathed all of his Intellectual Property, including any rights to his likeness or persona.

Over five decades after his death, many successful commercial products still bear his name and likeness.  So much so, in fact, that Forbes lists Einstein as one of the top 15-earning "dead celebrities," raking in up to $10M per year.

For example, new parents are familiar with the BABY EINSTEIN and LITTLE EINSTEIN products and videos.  These products were licensed by the Hebrew University, helping to make EINSTEIN a very valuable trademark.

However, now that 5 decades have past since Albert Einstein's death, Courts have ruled that at least some of Hebrew University's valuable rights may be at an end.

Carmaker General Motors had used an altered image of Einstein in a 2009 ad for the GMC Terrain, a sport utility vehicle.  The ad, which ran only once in People magazine, showed Einstein's face pasted onto a muscular body with an "e=mc " tattoo.  It carried the slogan "Ideas are sexy too." (See above)

Hebrew University sued GM in 2010, arguing the carmaker had no right to commercially utilize Einstein's image, and demanding damages.

But the Court ruled that descendants' right to control an image after death must be balanced with the public's right of expression.

The Court also ruled that any right Hebrew University had to sue expired in 2005 - 50 years after Einstein's death, because that was the limit on copyright law in 1982, when Hebrew University acquired Einstein's right of publicity.