By Michael M. Ratoza
Bullivant Houser Bailey PC
888 S.W. Fifth Avenue, Ste. 300
Portland, OR 97204
© 2009 MMR
Forbes, October 2008
Elvis Presley
Charles M. Schulz
Heath Ledger
Albert Einstein
Aaron Spelling
Theodor Geisel (Dr. Seuss)
John Lennon
Andy Warhol
Marilyn Monroe
Steve McQueen
Paul Newman
James Dean
Marvin Gaye
$52 million
$33 million
$20 million
$18 million
$15 million
$12 million
$ 9 million
$ 9 million
$ 6.5 million
$ 6 million
$ 5 million
$ 5 million
$ 3.5 million
Woody Allen v. American Apparel, Inc., 08 cv 3179, S.D.Y.Y.
- SETTLED: $5 million
World B. Free v. Nike, Inc., et al., Camden County Superior Court
James “Jim” Brown v. Electronic Arts, Inc., 09 cv 1598, C.D.Cal.
- PENDING (EA Sports)
Samuel Michael Keller v. Electronic Arts, Inc., National Collegiate Athletics
Association, Collegiate Licensing Company, 09 cv 1967, N.D. Cal.
- PENDING (EA Sports), Class Action filing
Sam Keller (ASU and Nebraska quarterback)
Eugene Jarvis (Kent State Golden Flashes running back)
Jake Long (Michigan offensive lineman)
Roy Hibbert (Georgetown basketball center)
Travis Pinick (Yale guard/forward)
Josh Freeman (Kansas State quarterback)
Right of Publicity
“Fundamentally, the right of publicity ‘is the inherent right of every human
being to control the commercial use of his or her identity.’” Miller v. Glenn
Miller Productions, Inc., 454 F.3d 975, 988-89 (9th Cir. 2006) (emphasis
“We think that, in addition to and independent of that right of privacy
(which in New York derives from statute), a man has a right in the publicity
value of his photograph, i.e., the right to grant the exclusive privilege of
publishing his picture, and that such a grant may validly be made ‘in gross,’
i.e., without an accompanying transfer of a business or of anything else.
Whether it be labeled a ‘property’ right is immaterial; for here, as often
elsewhere, the tag ‘property’ simply symbolizes the fact that courts
enforce a claim which has pecuniary worth.” Haelen Laboratories, Inc. v.
Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953).
Right of Publicity
Based on principles of privacy, but independent of:
• Intrusion on a person’s physical solitude
• Public disclosure of embarrassing private facts
• False light
Not limited to fame or celebrity
Concerned with commercial exploitation of image and persona
Not the same as copyright infringement
• No fixation
• “Persona” not subject matter of copyright
• Ownership of copyrighted image is different from ownership of
right of persona
• Not limited to commercial use
Right of Publicity
Free speech concerns
First Amendment defense cannot support the filming and airing of a
performer’s entire act by local TV station, even though considerable
and legitimate public interest. Zacchini v. Scripps-Howard
Broadcasting Company, 433 U.S. 562, 97 S.Ct. 2849 (1977).
First Amendment defense of social comment and criticism defeats a
right of publicity claim when image used to illustrate written news
commentary in LA Magazine. Hoffman v. Capital Cities/ABC,
Incorporated, et al., 255 F.3d 1188 (9th Cir. 2001).
Right of Publicity
Restatement of the Law, Third. Unfair Competition.
46. Appropriation of the Commercial Value of a Person’s
Identity: The Right of Publicity.
One who appropriates the commercial value of a person’s
identity by using without consent the person’s name,
likeness, or other indicia of identity for purposes of trade is
subject to liability for the relief appropriate under the rules
stated in §§48 and 49.
Right of Publicity
A. ORS 163.700. Invasion of personal privacy. Relates to visual recording of a
person in a state of nudity in a place and circumstance where there is a
reasonable expectation of privacy.
B. Anderson v. Fisher Broadcasting Companies, Inc., 300 OR 452 (1986).
When actors, athletes or other performers object, not to a loss of anonymity, but
to unauthorized exploitation of their valuable public identities, the remedy
should reflect the wrongful appropriation of a ‘right to publicity’ that has
economic value to the plaintiff as well as to the defendant, rather than damages
for psychic distress at a loss of ‘privacy.’ * * * [Citing to Haelen Laboratories v.
Topps Chewing Gum.] When a person who neither has nor wants a marketable
public identity demands damages for unauthorized publicity, such a person may
claim injury to a noneconomic rather than an economic interest in his or her
privacy * * *. Id. at 466.
Right of Publicity
Because plaintiff’s claim is not for the economic value of his endorsement nor for
unjust enrichment for wrongful appropriation of a photograph belonging to
plaintiff, there is no liability for the factually accurate use of a person’s photographic
image unless the use of the image is wrongful for some reason other than the lack of
consent. “Without a showing that plaintiff’s picture was either obtained or broadcast
in a manner or for a purpose wrongful beyond the unconsented publication itself,
that claim fails.” Id. at 469. [Emphasis added.]
Hence, in Oregon, a claim under a “right of publicity” principle must be founded on
trademark law, copyright law or conversion.
Right of Publicity
Other States
Common law: “Fundamentally, the right of publicity ‘is the inherent
right of every human being to control the commercial use of his or her
identity.’ * * * California law recognizes both a statutory and common law
right of publicity.” Miller v. Glenn Miller Productions, Inc., 454 F.3d 975,
988-89 (9th Cir. 2006).
Statutory: Cal. Civil Code §3344-3344.1. Prohibition against the
unauthorized commercial use of name, voice, signature, photograph or
likeness. The rights of a deceased personality (the Astaire Celebrity Image
Protection Act) continues for 70 years after the death of the personality.
Freedom of speech: balancing of interests.
Right of Publicity
Other States
Common law: none.
Statutory: RCW §63.60.010 et seq. Every individual or personality has
a property right in the use of their name, voice, signature, photograph
or likeness. This law distinguishes between an Individual (a natural
person) and a Personality (any individual whose “publicity” has
commercial value). The rights of an Individual continue after death for 10
years. The rights of a Personality continue for 75 years after death.
Right of Publicity
Other States
New York:
Common law: Yes. Haelen Laboratories, Inc. v. Topps Chewing Gum,
Inc., 202 F.2d 866 (2d Cir. 1953).
Statutory: N.Y. Civil Rights Law §50, 51. Prohibits the unauthorized
use for advertising or trade purposes of the name, portrait or picture
of any living person. No post-mortem rights.
Freedom of speech: No right of publicity relating to a “matter of
public interest.”
False Endorsement
§43(a) Lanham Act, 15 U.S.C. §1125(a)
What is this? False association, affiliation or sponsorship of another’s
product or service.
Lanham Act §1125. False designations of origin, false descriptions,
and dilution [Section 43].
(a) (1) Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce any word,
term, name, symbol, or device, or any combination thereof, or any
false designation of origin, false or misleading description of fact, or
false or misleading representation of fact, which—
False Endorsement
§43(a) Lanham Act, 15 U.S.C. §1125(a)
(A) is likely to cause confusion, or to cause mistake, or to deceive as
to the affiliation, connection, or association of such person with
another person, or as to the origin, sponsorship, or approval of his or
her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of his or her or
another person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or
she is or is likely to be damaged by such act. [Emphasis added.]
False Endorsement
§43(a) Lanham Act, 15 U.S.C. §1125(a)
Trademark like
Likelihood of confusion -• Strong identity: Computer generated graphics of a “letter
turner.” White v. Samsung Electronics America, Inc., 971 F.2d
1395 (9th Cir, 1992).
• Limited market identity: Commercial use of photos of Hawaiian
surfer pioneers. Downing v. Abercrombie & Fitch, 265 F.3d 994
(9th Cir. 2001).
• Weak or no identity: No confusion when image taken of a “bit
part player.” Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619,
625 (6th Cir. 2000) (applying Ninth Circuit likelihood of
confusion analysis).
False Endorsement
§43(a) Lanham Act, 15 U.S.C. §1125(a)
Confusion not limited to photographs –
Nonhuman depiction - using look-alike robots of Cliff and Norm from
Cheers. Wendt v. Host Int’l, Inc., 125 F.3d 806, 812-13 (9th Cir. 1997).
• Celebrity Look Alike – celebrity double. Allen v. National Video, Inc.,
610 F. Supp. 612 (S.D.N.Y. 1985).
• Voice Misappropriation Sound Alike – voice double. Waits v. Frito-Lay,
Inc., 978 F.2d 1093 (9th Cir. 1992); Midler v. Ford Motor Co., 849 F.2d
460 (9th Cir. 1988).
False Endorsement
§43(a) Lanham Act, 15 U.S.C. §1125(a)
No confusion –
No false endorsement confusion when it is clear from the context
that the image is not voluntary. Kournikova v. General Media
Communications Inc., 2002 WL 31628027 (C.D. Cal. 2002).
No confusion when significant number of unauthorized photos in
use. Cairns v. Franklin Mint Company, 292 F.3d 1139 (9th Cir. 2002).
Nominative Fair Use. The New Kids on the Block v. News America
Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).
Copyright Law
(Title 17, U.S. Code)
§102(a) of Copyright Act permits copyrightable protection for photographs if fixed
in tangible medium.
Minimal creativity. Mannion v. Coors Brewing Co., 377 F. Supp. 2d 444 (S.D.N.Y.
2005) -
a. Creativity of rendition: selection of lens, shutter speed, focus, film, lighting,
depth of field, and other technical considerations. Subject not protectable
under copyright but photo is.
b. Creativity of timing: being in the right place at the right time. Subject not
protectable under copyright but photo is.
c. Creativity of subject: creating the subject with special pose, special scene or
other conduct by which subject is created. Subject is protectable under
Copyright Law
(Title 17, U.S. Code)
Work of Visual Art (§106A – Visual Artists Rights Act) –
Right of author to attribution and integrity to work of visual art
(painting, drawing, print, sculpture or photograph, existing in a single
copy or in a limited edition of 200 or fewer copies). Right can be waived
in writing only by the author.
Exemption of Liability to Website Operators
Digital Millennium Copyright Act (DMCA) Safe Harbor (17 U.S.C.
§512(c)) –
No duty to scour website looking for inappropriate content placed
by others
ISP must designate agent to receive notice, and file designation
with Copyright Office and post on-line
Notice take down:
• Signature
• Identification of copyrighted work
• Identification of complaining party
• Statement of good faith belief (due diligence analysis)
• Statement under penalty of perjury that claim is accurate
Exemption of Liability to Website Operators
Section 230 Communications Decency Act (47 U.S.C. §230) –
No liability for a provider of an “interactive computer service” that merely
publishes information provided by others. If the interactive computer
service is merely a passive repository and publisher of information, then it
may not be liable under the Act when the public posting is harmful or
No bar if ISP “invites” public to post information that violates the law. Fair
Housing Council of San Fernando Valley v. LLC, 521 F.3d
1157 (9th Cir. 2008).
§230 bars a claim for negligent undertaking for failure to remove the
offending material posted by others. NO BAR for a claim for breach of
contract under doctrine of promissory estoppel (promise to timely remove
offending material, reliance by victim, failure to timely remove). Barnes v.
Yahoo!, Inc., ___ F.3d ___, 2009 WL 1232367 (9th Cir., May 7, 2009).
General Rule: No per se rule prohibiting taking or use of children’s images.
See, Rose Festival Parade coverage.
Criminal law –
• 18 U.S.C. §110 – Sexual Exploitation and other Abuse of Children (a
• PROTECT Act (Prosecutorial Remedies and Other Tools to end the
Exploitation of Children Today) (117 Stat. 650). Prohibits, among many
things, display of virtual images (computer generated graphical designs,
drawings, sculptors, and pictures) of children (anyone under 18 years)
in sexually explicit images.
• ORS 163.665 – 693 – Visual Recording of Sexual Conduct of Children
(under the age of 18 years).
Non-criminal law –
Children’s Online Privacy Protection Act (COPPA) (16 U.S.C. §§6501-6508)
• Child under 13 years
• Pertains to operator of website that collects personal information from
a child
• Regulates personal information by web operator when site “directed to
• Web notice of what information is collected from children, how it is
used, and disclosure practices
• Verifiable parental consent
• Operator to provide additional information to parent upon request
Children’s Online Privacy Protection Act (COPPA) (16 U.S.C. §§65016508)
Regulates collection of personal information from child to participate
in a game or contest
FTC Rulemaking and enforcement
• The Children's Advertising Review Unit of the Council of Better
Business Bureaus (CARU)
• Entertainment Software Rating Board (ESRB)
FTC Enforcement Egs.:
• Jolly Time Popcorn: $10,000
• Lisa Frank: $30,000
• Mrs. Fields Cookies: $100,000
• Hershey Candy: $85,000
Clearance-Release Language
Three pieces of paper: consent from subject, consent-license from
copyright owner, waiver from photographer.
• Subject
• Parent/guardian
• Limitation of time, use, medium
• Define “new medium” –
• Narrow definition of new medium by Ninth Circuit. Cohen v.
Paramount Pictures Corp., 845 F.2d 851 (9th Cir. 1988).
• Joint ownership consent for assignment or exclusive license
• Community property jurisdiction – consent from spouse
• Work for hire – consent from independent contractor
• Consent NOT required from employee acting within scope of
Clearance-Release Language
Early termination of consent –
Copyright Act §§203, 304: termination at end of 35th year following
grant for post 1-1-1978 grants; termination at 57th year after copyright
secured, or else at 76th year, for pre-1978 grants.
Waiver (not consent)
Waiver of attribution and integrity right under Visual Artists Rights Act
(VARA - §106A)
Personal Jurisdiction
Or, Why Am I Being Sued In California For Operating A Website in Oregon
Long Arm Statutes
Calder v. Jones, 465 U.S. 783, 104 S.Ct. 1482 (1983) –
Effects test for “tort” sounding claims
* * * the brunt of the harm, in terms both of respondent’s emotional
distress and the injury to her professional reputation, was suffered in
California. In sum, California is the focal point both of the story and of
the harm suffered. Jurisdiction over petitioners is therefore proper in
California based on the “effects” of their Florida conduct in California.
Id. at 789.
The End