If California Really Cares About Student Athletes, It’ll Protect Their Rights To Their Own Identities

By Professor Jennifer Rothman

This op-ed originally appeared in the Friday, October 4, 2019 edition of  the San Francisco Chronicle.

Gov. Gavin Newsom just signed a bill ostensibly to level the playing field for student athletes. Within 24 hours, five other states had introduced similar bills. In the U.S. House of Representatives, a Student-Athlete Equity Act was introduced just a few weeks ago.

These legislative efforts seek to address the stark reality that the NCAA and college athletic programs reap billions of dollars from ticket and merchandise sales and licensing deals, while student athletes get nothing other than some limited scholarship money. Not only does this seem unfair, but the current system pressures the most talented young athletes to go professional early, often foregoing their educations in the process.

California’s law (and others proposed) bars NCAA universities (who fall within the provision) and are located within the state from penalizing student athletes who sign endorsement deals or with sports agents and attorneys. This is new. But it does not address the underlying exploitation of student athletes.

The law does nothing to require the NCAA or universities to share any profits with athletes — and most college athletes will not be sought after by Nike for a major endorsement deal. The California law also could allow the NCAA to continue to block endorsement opportunities that primarily stem from an association with the “team.”

Read the complete op-ed>>

The Right of Publicity: Privacy Reimagined for a Public World

Below is an excerpt from Professor Jennifer Rothman's new book The Right of Publicity: Privacy Reimagined for a Public World, published on Friday, May 18 in the Los Angeles and San Francisco Daily Journal.

The frequently uttered and simplistic dichotomy—that privacy is about protecting the shrinking violets of the world, while the right of publicity is about protecting those who seek the limelight—was never true, and does a disservice to both those who wish to avoid publicity and those who seek it out. Actors do not want videos of them changing in a hotel room distributed online, their children followed, or their images slapped onto billboards or used in television commercials without their permission. This is not necessarily because they want to be paid for such uses, but because such uses are upsetting and disturbing, can destroy their reputations and ability to author their own identities, and turn them into puppets with others pulling the strings.

Nor do those of us who wish to live less public lives want to hide in our homes. We take walks, post family photographs to Facebook and Instagram, blog and tweet about our experiences, create YouTube channels showing how to prepare various recipes or master a video game, and leave traces behind when buying books on Amazon. These acts do not mean that private figures wish to cede the right to control how our names, likenesses, voices, and other information about ourselves is used by others. We all live our lives in public. But by doing so we should not become public property.

The Right of Publicity―A Misunderstood, Misshapen, Bloated Monster

By Professor Jennifer Rothman

This post is excerpted from the Volokh Conspiracy, where Prof. Rothman is guest blogging this week.

The right of publicity is a law that few people outside of Hollywood know much about. Nevertheless, it is an increasingly important right in our digital age even when celebrities are not involved. The right of publicity provides a right to control uses of your identity, particularly your name, likeness and voice, and to stop others from using those without permission. The boundaries of these state right of publicity laws vary widely from state to state, with some limiting the claims to uses in advertising or on products, and others allowing almost any claim when the use is for the defendant's advantage. Some states limit claims only to those brought on behalf of the living, while others extend such rights after death.

In the book, I consider both the opportunities and risks that such right of publicity laws pose. I challenge the conventional, yet erroneous story of the right of publicity's development, and by doing so I provide direction on how to avoid the right's current dangerous path. The right of publicity in its current form jeopardizes the liberty of the very individuals that it is supposed to protect, while also interfering with free speech, and copyright law.

Today, I will share a short excerpt from the Introduction to the book that lays out some of the dangers and possibilities that the right poses, which I develop further in the book:

The right of publicity can be a valuable mechanism for addressing a variety of twenty-first century concerns about uses of people's images. But, despite the many benefits of having a right of publicity, its current incarnation comes with a host of dangers. The right of publicity limits what the public can say about public figures, even dead ones, and can bar the public from making sculptures, T-shirts, and posters honoring the recently deceased, such as Prince, Carrie Fisher, Robin Williams, and Muhammad Ali. It can block (and has blocked) the distribution and sale of busts of civil rights heroes, like Martin Luther King Jr. It has prevented video game makers from accurately depicting football players on historical team rosters, and television networks from using clips of their own broadcasts.

Read the complete post on the Volokh Conspiracy on Reason.

Seventh Circuit Certifies Question to Indiana Supreme Court in Fantasy Sports Case

By Professor Jennifer Rothman

This article originally appeared on Rothman's Roadmap to the Right of Publicity 

Today, the Seventh Circuit with lightening speed issued an opinion in the Daniels v. Fanduel case seeking guidance from the Supreme Court of Indiana. The case, which I have previously written about, involves a lawsuit by former college football players against online fantasy-sports companies FanDuel and DraftKings. An Indiana district court dismissed the case last September, concluding that the use was exempt under Indiana’s right of publicity statute because the uses were newsworthy and reported on a topic of public interest.

The Seventh Circuit heard oral arguments in the case on February 22nd, and Judge Frank Easterbrook repeatedly asked the attorneys why the interpretation of the Indiana statute was not something better addressed by the state court. It therefore is no surprise that today the court issued an opinion that he authored calling for the state’s supreme court to answer those questions.

The opinion focuses on the meaning of the exemptions to Indiana’s right of publicity statute, and particularly the question of whether the for-profit fantasy games fit within the purview of the statute’s exemptions for uses in “material that has . . .newsworthy value” or “in connection with the . . . reporting of an event . . .of general or public interest.” 

Whitney Houston Estate Settles with IRS over Right of Publicity Valuation

By Professor Jennifer Rothman

The Whitney Houston estate and the IRS have settled their dispute over the value of the Grammy award-winner’s estate. The more than $11 million dollar disagreement in the amount of taxes owed centered on the valuation of Houston’s intellectual property rights, and particularly the value of her postmortem right of publicity. The estate had claimed that Houston’s right of publicity was worth just under $200,000, while the IRS claimed that it was worth more than $11.7 million. A staggering difference.

The IRS and the estate ultimately settled with the estate agreeing to pay $2 million. The IRS had initially sought more than $11 million in taxes and penalties from the estate. The stipulation entered on December 26th did not specify what Houston’s right of publicity was ultimately valued at.

The stipulation and settlement yet again avoided a court determination of whether the right of publicity should be part of the estate in the first place. Like the Michael Jackson estate, the Houston estate did not contest the inclusion of the right of publicity in the estate’s property―something I think estates should more actively start doing.

Read the full blog post on Rothman's Roadmap to the Right of Publicity.

Company that Owns Muhammad Ali sues Fox over Tribute to Late Boxer

By Professor Jennifer E. Rothman

This post originally appeared on Rothman's Roadmap to the Right of Publicity.

The company that owns and manages former boxing great Muhammad Ali's right of publicity and trademarks has sued Fox Broadcasting in federal district court in Illinois. The complaint filed today claims that Fox's broadcast of a memorial to Muhammad Ali leading up to the broadcast of the 2017 Super Bowl violated Ali's right of publicity under Illinois law and the federal Lanham Act. The Lanham Act claim is that the broadcast falsely suggested that Muhammad Ali Enterprises (the plaintiff company) endorsed the short film.

The edited spot runs approximately 3 minutes in length and uses newsreel and sports footage of Ali, combined with footage of football greats, like Joe Montana and Tom Brady, to celebrate the spirit of legendary athletes and to honor the deceased Ali. Although some journalists have characterized the short as an advertisement, and one could see it as promoting the feel-good-spirit of the Super Bowl and Fox's upcoming broadcast, it is clearly styled as a tribute to Muhammad Ali who had died the year before. As such, I think there are strong arguments that it is not an advertisement and is not commercial speech. It therefore should receive full First Amendment protection.

Muhammad Ali Enterprises, now reportedly owned by Authentic Brands, was no doubt emboldened by Michael Jordan's victory against two supermarkets that used his name and jersey number in an issue of Sports Illustrated to celebrate his induction into the Basketball Hall of Fame. Jordan won more than $9 million in those cases. But those cases are quite different than this one. There was little dispute that the use of Jordan's name promoted the markets, and one of the one-page spreads included a coupon for a steak underneath the message about Jordan. It is not clear that this longer form celebration of Ali and athletics is so clearly directed at selling a product or show. (I also note, as I have written elsewhere, that greater latitude should have been given to the supermarkets to simply congratulate Jordan, though perhaps not to sell steaks with his name above them.)

Major Victory for Fantasy Sports against College Athletes

By Professor Jennifer E. Rothman

This post originally appeared on Rothman's Roadmap to the Right of Publicity.

Last week while a California trial court let the right of publicity run roughshod over the First Amendment in a case involving a docudrama, an Indiana district court in Daniels v. Fanduel rejected the right of publicity claims brought by former NCAA football players, Akeem Daniels, Cameron Stingily, and Nicolas Stoner against fantasy sports leagues run by FanDuel and DraftKings.

The former student-athletes complained about both websites using their names, statistics and likenesses to operate and promote the fantasy sports games. The players claimed the uses violated Indiana’s right of publicity law. The defendants asserted a number of defenses, including that the uses fell under Indiana’s statutory exemptions, were allowed by (and protected by) the First Amendment, and were barred by federal copyright law.

There was no challenge to the fact that the use of the players’ identities was for a commercial purpose as required by Indiana law. The websites are pay sites and the court noted that in 2015 the fantasy sports industry generated $3 billion in “customer entry fees.”

The Plot (and Feud) Thickens

By Professor Jennifer E. Rothman

This post originally appeared on Rothman's Roadmap to the Right of Publicity.

On Friday, a California superior court agreed with two-time Oscar winner Olivia de Havilland that her lawsuit against FX Networks could proceed. FX had sought to put a swift end to her lawsuit arising out of her portrayal in the network’s critically acclaimed miniseries, Feud. The series chronicled the longstanding conflict between Joan Crawford and Bette Davis. My prior post on the lawsuit discusses in more detail the miniseries and de Havilland's claims, but since that post de Havilland wisely amended her complaint to include false light and defamation claims.

FX had sought to have de Havilland’s Second Amended Complaint tossed using California’s anti-SLAPP law (Strategic Lawsuit Against Public Participation), which allows for the early dismissal of lawsuits that limit free speech. But when courts determine that there is a likelihood of success―at least if a plaintiff’s version of the facts is true―courts often let the cases proceed. This is what happened here.

No written order with legal conclusions has been released yet, but the court issued an order denying FX’s motion to strike de Havilland’s complaint. According to reports from the courtroom, California superior court judge Holly Kendig thought that de Havilland had met her burden of showing a likelihood of success on her defamation, false light, and right of publicity claims.

De Havilland’s defamation and false light claims merit some discovery, even though they will likely fail. Showing that FX and the creators of the show demonstrated actual malice toward de Havilland will be an uphill battle. Unless they knew that the portrayal was false or had reason to know that it was, her claims cannot stand. The defamation claim also is weak because her portrayal was not one that would negatively reflect on her. The false light claim may have more staying power because it has no such requirement. Still a false light claim must overcome the actual malice hurdle. Determining whether de Havilland was defamed or falsely portrayed, and whether this was done with actual malice will require fact-finding, and therefore the judge legitimately allowed those claims to proceed―even if FX will likely prevail on them.

Louisiana Right of Publicity Moves Forward

By Professor Jennifer Rothman

This blog post originally appeared on Rothman's Roadmap to the Right of Publicity.

The proposed “Allen Toussaint Legacy Act” has passed another hurdle in the Louisiana legislature. The bill passed the House last week and was sent to the Senate Judiciary Committee yesterday. The Act is named after the famed New Orleans musician, songwriter and producer, who died in 2015. The proposed law provides individuals with a “property right in the commercial use” of their names, voices, signatures, photographs, and likenesses.

The law problematically provides that this property right is “freely transferable, assignable, licensable, and heritable.” As I have warned elsewhere, such laws provide an avenue for individuals to lose control over their own identities forever if they assign their property right to third-parties like record labels or movie producers, or sports leagues. In addition, estate taxes on such fully transferable property may force heirs to commercialize the identities of the deceased even if that violates the wishes of the deceased and his heirs.

8th Circuit Appears Divided in Dryer v. NFL Oral Arguments

By Professor Jennifer Rothman

This commentary originally appeared on the website, Rothman's Roadmap to the Right of Publicity.

The oral arguments from last Thursday’s hearing before the 8th Circuit in Dryer highlight a host of flashpoints in right of publicity law. The arguments focused on whether the use of historical film clips constituted commercial speech.  The plaintiffs’ attorney claimed that the use by the NFL was clearly commercial speech and therefore not entitled to First Amendment protections, citing the 7th Circuit decision in Jordan v. Jewel Food Stores (2014). In Jordan, however, the parties had conceded that the commercial speech question decided whether there was any First Amendment protection in the context of a Lanham Act claim and the appellate court expressed rightful skepticism of that conclusion.  The oral arguments here highlight the confusion over how to categorize and distinguish commercial speech from for-profit commercial uses, like films, news, and sports broadcasts, as well as marketing for the same.  The plaintiff is correct that the broadcasts in Dryer undoubtedly drive good feelings and income to the NFL through game attendance, merchandise, and its entertainment and broadcast programming, and related advertising revenue. This, however, does not make the broadcasts commercial speech, nor does it remove First Amendment protection even if it is commercial speech.

The second right of publicity flashpoint addressed was copyright preemption and whether the players’ agreement to appear in the underlying sporting events prevented subsequent right of publicity claims arising out of a derivative work using those broadcasts. The defense attorney distinguished the uses at issue from using a player’s image on a coffee mug, because in such an instance the likeness of the player would be extracted from the underlying copyrighted work and repurposed.  Under copyright law this is a difference without meaning, although the argument may otherwise seem appealing and perhaps has more traction in a conflict preemption analysis then a section 301 analysis.

The final right of publicity conundrum addressed in oral arguments was the scope of the newsworthiness defense and what counts as newsworthy under the various state laws at issue.  One judge on the panel questioned whether an old football game counted as “newsworthy.”  Such a narrow interpretation of what is newsworthy would be catastrophic for documentarians, journalists, and other creators who often delve into past events.  The arguments also touched upon the question of whether the demonstration via survey evidence of some possible confusion was enough to overcome judgment as a matter of law on the false endorsement Lanham Act claim.  The full arguments can be heard here – Oral Arguments, Dryer v. NFL, Oct. 22, 2015 (8th Cir.)

Beyonce, Pharrell, Rihanna, Jay-Z, and Kanye West Sue Over Use of their Images and Names on Merchandise

By Professor Jennifer Rothman

This commentary originally appeared on the website, Rothman's Roadmap to the Right of Publicity.

These megastars sued Eleven LLC for using their names and images in a variety of merchandise, including t-shirts, hats, and cell phone covers. Some of the images evoked Hitler and some of the items used lyrics from the artists’ songs...Look for a settlement in this one.
Looks like promising claims as to false endorsement and right of publicity.  Somewhat less convincing is the defamation claim from adult-oriented models that association with the strip club would subject them to “hatred, shame, . . .ridicule, aversion, ostracism, degradation . . . and/or could induce an evil opinion of Plaintiffs in the minds of right-thinking persons, and/or could deprive each Plaintiff of confidence and friendly intercourse in society.”  Perhaps the complaint itself defames adult entertainers.

Greene was featured in convicted felon Jordan Belfort's memoir upon which the Martin Scorsese movie was based. The movie, however, did not use the plaintiff's name or likeness, but instead created an amalgamated character derived from several real individuals, including the plaintiff. The court therefore rejected Greene's claim because under New York’s privacy statute, N.Y. Civil Rights Law § 51, such claims are limited to uses of the actual name or likeness of an individual. Merely evoking the person’s identity is not sufficient to state a claim.  This treatment of the privacy-based right under New York law differs from the interpretation of right of publicity laws in some other states, notably under California's common law.

Prof. Rothman Submits Amicus Brief in Right of Publicity Case

Professor Jennifer Rothman submitted an amicus brief along with UCLA Professor Eugene Volokh supporting en banc review by the Ninth Circuit in Davis v. Electronic Arts, a case involving the right of publicity.

SUMMARY OF ARGUMENT

The panel decision in this case followed the majority opinion inIn re NCAA Student-Athlete Name & Likeness Licensing Litigation (“Keller v. Electronic Arts”), 724 F.3d 1268 (9th Cir. 2013)(commonly known as Keller), which defines thisCircuit’s law on the right of publicity and the First Amendment. No petition for rehearing en banc was filed in Keller, so this is the first clear opportunity for the entire Circuit to consider whether Kelleris correct.

Keller’s conclusion that references to real players in fantasy sports video games are not protected by the First Amendment is mistaken, and dangerously so. The Keller majority begins with the sentence, “Video games are entitled to the full protections of the First Amendment, … ‘[l]ike the protected books, plays, and movies that preceded them[.]’” 724 F.3d at 1270-71 (quotingBrown v. Entm’t Merchs. Ass’n, 131 S. Ct. 2729, 2733 (2011)). It therefore follows that, to the extent video games may infringe the right of publicity for depicting or referring to real people, so may books, plays, songs, and films.

Thus, under the logic of Keller, the makers of the recent filmSelma might be liable for a host of right of publicity violations unless they got permission from Coretta Scott King, Andrew Young, John Lewis, Harry Belafonte, and the heirs of Martin Luther King, Jr., J. Edgar Hoover, Lyndon Johnson, and others. The Academy Award-winning Forrest Gump might also have infringed historical figures’ right of publicity unless the filmmakers got permission from the Elvis Presley, John Lennon, and Abbie Hoffman estates. Simon & Garfunkel’s Mrs. Robinson, which asked “Where have you gone, Joe DiMaggio?,” might have infringed Joe DiMaggio’s right of publicity.

Prof. Rothman's 'Inalienable Right of Publicity' discussed on Credit Slips

Professor Jennifer Rothman's "The Inalienable Right of Publicity" was discussed on the Credit Slips blog. Below is an excerpt from the discussion:

A quick post to announce that intellectual property scholar Jennifer Rothman has just published an article that engages with the bankruptcy treatment of the "right of publicity." Painting with the broadest brush, the piece questions the alienability of an identity-holder's right of publicity more generally, and concludes creditors should not be entitled to "own (or control)" a debtor's right of publicity (p.236). For the bankruptcy and commercial lawyers reading this post, or courts confronting questions of creditor entitlement to a debtor's right of publicity, the article contains references to recent court decisions of potential relevance (pp. 199-200) in addition to important arguments on these questions. According to Rothman, there still is no published caselaw explicitly holding that creditors are entitled to the value of a bankruptcy filer's right of publicity.

Read the complete discussion.

Claim by Tolkien estate vs. fictional work including J.R.R. Tolkien as a character: The work of Sauron?

By Professor Jay Dougherty

Recently there have been reports that the Tolkien estate has fired off cease and desist correspondence to Steve Hillard, the Texas-residing author of a self-published book called Mirkwood. Mirkwood is apparently a fictional work, perhaps Tolkienesque, in which J.R.R. Tolkien is a character. It appears that the gist of the assertions (which are reportedly asking that the book be enjoined and destroyed) is that it is an unauthorized commercial exploitation of Tolkien's name and likeness; in other words, a violation of his rights of publicity. This claim seems extremely weak, and it's surprising that it would even be asserted.

First, the decisional law and many statutes have pretty clearly established that one doesn't have a property right in his or her life story. The same can be said as to fictional works including a "real" person as a character, at least if they are not held out as being true (and even the small line of cases drawing that line are questionable). Some plaintiffs have argued that a work that has nothing to do with the person whose persona is used becomes a "commercial exploitation" of that persona. But books, films, songs, works of art, etc. are not the same as T-shirts and coffee cups. They are works of expression--speech protected under the Constitution. (A football videogame is currently being challenged, in part on an assertion that it is just a product, not "speech." See my colleague Jennifer Rothman's recent post about oral argument in that case.) Courts in different jurisdictions have used various approaches to address tension between the relatively new right to control commercial uses of persona that are not false endorsements. Most of those approaches should favor almost any expressive use that is not an advertisement pure and simple, although one of them---the most antagonistic to freedom of expression---looks at the elusive "primary intent" of the expressive defendant. The "Mirkwood" book doesn't appear to be being held out as true, and appears to be highly expressive and "transformative" (one of the tests applied in this context). The Tolkien estate should lose on that basis.

But their claim is weak for at least two other reasons. First, many states' laws, especially covering a right of publicity after the death of the person portrayed, expressly exclude from liability speech works such as books or films. In fact, if the estate were to assert the application of Texas law to this dispute, that law has such an exclusion: "A person may use a deceased individual's name, voice, signature, or likeness in: (1) a play, book, film..." Texas Property Code Section 26.012. But the dispute may not even have to reach that clear defense. The majority rule as to whether the right of publicity survives death is to look to the law of the state of domicile at the time of death of the celebrity. Mr. Tolkien lived in England when he passed away in 1973 (long before the descendible right of publicity was officially recognized in most states). England does not recognize a right of publicity, let alone a descendible one that survives death. See, e.g., Cairns v. Franklin Mint, 292 F.3d 1139 (9th Cir., 2002) (Princess Diana domiciled in England at time of death--no right of publicity claim under California deceased celebrity statute) (note that decision also affirmed a $2 million+ award of attorneys' fees to the defendant). Hence, a Texas court, if this dispute were to get that far, should toss this claim out at an early stage on a similar basis, too.

We all love Tolkien and his imaginative books. I loved the books and the films, and can't wait for the new The Hobbit films, in production now. I happily pay for them, and will continue to do so. He was a genius, and his heirs deserve to benefit from that. But he is also iconic and forever intertwined with certain types of fantasy literature. That he is now a character is such a work should be celebrated--not threatened with Sauronian attacks and destruction!

Ninth Circuit Oral Arguments Today in Keller v. Electronic Arts: A Challenge to EA's Popular College Football Video Game

By Professor Jennifer Rothman

Today the Ninth Circuit will consider a First Amendment defense to Electronic Arts' (EA) use of former and current college players' identities in a popular video game. The case once again raises the issue of a conflict between the First Amendment and the right of publicity - a state law that protects the name, likeness and other indicia of identity of a person from being used without consent. Because this right limits what others can say, or put in a comic book, or a commercial or even a news broadcast, it raises a host of First Amendment issues. In particular, the district court held that EA had no First Amendment defense because the use of the players' identities was not transformative. The district court adopted a very narrow reading of transformativeness - one that appears to limit a First Amendment defense to circumstances in which a player's appearance and information is significantly altered, such as turning a player into a "half-human, half-worm," as one comic book did with the identities of two well-known musicians.

It is no surprise that such a narrow reading of transformativeness in the right of publicity context has caused uproar among major newspapers, television networks and movie studios. If courts do not consider the broader context of the use in a transformativeness analysis, then realistic portrayals and references to athletes, celebrities and anyone else may not receive First Amendment protection.

As a First Amendment matter, the transformativeness test seems ill-equipped to handle disputes between free speech and the right of publicity; the narrow gloss that the district court put on transformativeness sets a dangerous precedent that the Ninth Circuit will hopefully strike down. But whatever test the circuit ultimately adopts, it's not clear that EA has a great First Amendment defense. In contrast to the fantasy sports leagues, which are tied to the performance of actual players during a particular season, the EA video games do not need to be linked to particular players' identities. They may be more successful commercially if they are, but the functionality of the games does not depend on their realism.

This case on remand, however, may not ultimately turn on First Amendment protections. Although many of the briefs in the case focus on alternative First Amendment tests that could be used - other than transformativeness - to evaluate free speech limits on publicity rights, there are other significant conflicts in the case that have not yet been litigated. Related cases reveal that the college athletes signed their publicity rights over to the NCAA. Moreover, the NCAA owns the copyrights in the televised games. The NCAA therefore arguably had permission to license the use of the images and names of the college athletes. The legitimacy of the implicit and explicit assignments of publicity rights to the NCAA by college athletes will likely be the next chapter in this on-going and hotly contested dispute.