If the Shoe Fits: Analyzing Lohan and Sgt. Sarver Right of Publicity

The buzz continues about Lindsay Lohan’s suit against E*TRADE over its use of the name “Lindsay” to identify a “milkaholic” character in the latest in its ongoing series of talking-babies commercials.

The consensus seems to be that the case will be won or lost at the threshold, where Ms. Lohan has to demonstrate that the ad’s use of the name “Lindsay” is likely to invoke her identity. Her claim that Lindsay is a commonly-recognized single-name celebrity-identifier along the lines of Cher, Madonna, and Oprah appears unsupported by evidence that she has billed herself by first name only; nor is Lindsay as unusual or distinctive a name as those others.

Nevertheless, opinions as to whether the commercial actually invokes Ms Lohan appear to break down along generational lines, and to define a spectrum running from “of course they were referring to Lindsay Lohan” to “that would never have occurred to me.”

Naturally, had the ad used the name Lindsay without the “milkaholic” reference, no one—including Ms Lohan—would have been likely to draw a connection, and this seems to give the lie to the “recognizable single-name” argument. Moreover, the one thing in the commercial that Ms Lohan claims decisively points to her is also the very thing she finds offensive, which invites the response “If the shoe fits, wear it.”

Ms. Lohan’s complaint, brought in New York state court, recites three claims. The first is for violation of Section 50 of New York’s Civil Rights Code, which allows a civil action for unauthorized use of an individual’s name or personality “for advertising purposes, and for purposes of trade and commercial benefits.” Section 50 is as close as New York law gets to a right of publicity statute, though it is in truth mostly a right-of-privacy law, and treats the publicity right as a personal right corollary to the right of privacy, not as a separately alienable property right. This fact has made enforcement of publicity rights difficult in New York (so far—though an ambitious revision of New York state law in this area is currently before the state’s legislators).
The Section 50 claim is accompanied by two common law claims, one for violation of privacy, the other for violation of a common-law right of publicity. This last is, for my money, the only one with a chance of surviving early dismissal (assuming Ms Lohan can persuade the court that the ad does, indeed, invoke her identity).

Ms. Lohan has not argued common law trademark infringement; but even if she showed that her name is a protectable trademark for her services, that would still leave open the question whether the commercial’s use of only the given name “Lindsay” is sufficient to infringe the alleged trademark.

Ms. Lohan also has not argued false endorsement—usually a companion claim to a right of publicity action, and one that has succeeded in New York where pure publicity-right claims have failed. See, for example, Burck v. Mars, Inc., 2008 WL 2485524 (S.D.N.Y. 2008). It would seem a stretch to argue that E*TRADE benefits both by ridiculing Ms Lohan and by implying that she endorses its services. Yet Vanna White made a similar claim against Samsung’s use of a Vanna-like robot in a commercial for its electronics equipment, and survived summary judgment. White v. Samsung, 989 F.2d 1512 (9th Cir. 1993). It’s unlikely that consumers would believe that Samsung was suggesting that Vanna White’s job was so silly that she could be replaced by a machine, while also implying that she endorsed their products. But the Ninth Circuit’s refusal to dismiss advances a policy that commercial speakers may no more benefit commercially from making fun of a celebrity than from implying an association with one.

It is important in this regard to bear in mind the all-important distinction between a publicity-right violation and a false endorsement: the latter depends upon consumer confusion, whereas the former is a misappropriation of a property right, sounding in trespass or conversion rather than fraud, with no reliance on consumers’ interpretation.

The right of publicity—whether in state statute or in common law—is expressly a commercial right, designed to safeguard the right of an individual (whether a celebrity or not) to control the commercial exploitation of her name, likeness, and persona. The First Amendment doesn’t provide a reliable defense against a publicity-right claim, because the uses of which right of publicity claimants complain is almost invariably commercial speech. Where a court has found that the allegedly infringing use was not commercial speech, the right of publicity claim has tended to be dismissed. In Winter v. DC Comics, 30 Cal.4th 881; 134 Cal.Rptr.2d 634; 69 P.3d 473 (Cal. Sup. Ct., June 2003), the California Supreme Court unsurprisingly found a comic book to be a work of expressive speech, and the publicity-right action to be barred by the First Amendment. But even this analysis has its variants: in the Missouri case of Doe v. McFarlane, 207 S.W.3d 52 (Mo. App. E.D. 2006), use of the claimant’s nom-de-hockey, Tony Twist, for a comic book character was found to violate the hockey player’s right of publicity because the comic book’s author, Todd MacFarlane, was deliberately working references to as many hockey players as he could into the comics to improve their marketability to hockey fans, and was selling them at hockey games. In the mind of the Missouri court, that amounted to a commercial exploitation that outweighed the comic book’s free speech protection.

Of course, the commercial in Samsung, like the commercial in the Lohan case, was commercial speech, which is usually decisive in the realm of rights of publicity. Thus E*TRADE is unlikely to be able to interpose a credible First Amendment defense. This is not to say that a parody defense may never succeed in a commercial advertising context. But so far, successful parody defenses in advertising have been joking references to, or uses of, trademarks or copyrighted works, not celebrities’ images or personality rights. See, for example, Leibovitz v. Paramount Pictures Corp., 948 F. Supp. 1214 (S.D.N.Y. 1996), where Leslie Nielsen in a spoof of Annie Leibovitz’s photo of Demi Moore naked and pregnant was found protected notwithstanding the fact that it was an ad for Nielsen’s newest movie; and Eveready Battery Co. v. Adolph Coors Co., 765 F. Supp. 440 (N.D. Ill. 1991), which survived claims for trademark and copyright infringement arising from a beer commercial’s spoof of the Eveready Bunny. (These two cases established the unofficial “Leslie Nielsen” rule of advertising law, which says that, if you want to have a parody defense in an advertising context, hire Mr. Nielsen or some other actor who is already associated in the public mind with parody.)

It’s also important to point out that White v. Samsung dates from before the California Supreme Court’s holding in Comedy III v. Saderup, 25 Cal. 4th 387 (Cal. 2001), which despite being a state court opinion has provided the most important test yet to arise from right of publicity jurisprudence. Artist Gary Saderup was found to have violated the publicity rights of The Three Stooges because his poster prints and shirts depicting the comedy trio were commercial merchandise rather than expressive art, and were purchased not because of the artistic value of Saderup’s virtually photographic renditions but because of the commercial value of the Stooges’ untransformed images. The next year, the same court applied the same test in Winter v. DC to find that the Jonah Hex comic books were expressive art, not commercial exploitation, and enjoyed First Amendment protection against the publicity-right claims of rock musicians Johnny and Edgar Winter against transformative modifications of their images in the portrayal of the comic’s villainous “Autumn Brothers.”

The Comedy III test has been cited in New York Section 50 cases; see, for example, Hoepker v. Kruger, 200 F. Supp.2d 340 (S.D.N.Y. 2002), finding that commercial sale of replicas of defendant’s art work featuring a found public domain photograph of plaintiff did not offend plaintiff’s publicity rights because the products were bought for the artistic value of defendant’s work, not for any commercial value that might have subsisted in plaintiff’s image. So it’s not unlikely that the Comedy III test, though persuasive authority only, would be used in the Lohan case as well, should it get that far.

A New York court applying Comedy III would easily find that the E*TRADE ad was commercial speech, but would still have to analyze whether the use of Lohan’s image was, in the context of the ad, incidental creative expression or commercial exploitation designed solely to sell product.
Interestingly, about the same time that the Lohan lawsuit was filed—and, not coincidentally, shortly before the Academy Awards broadcast—Army Sergeant Jeffrey S. Sarver brought suit in the District of New Jersey, alleging that the lead character of the film The Hurt Locker, which subsequently won the Best Picture Oscar, was a depiction of him, for which he was owed compensation.

In the Sarver case, even construing the facts to the greatest possible benefit of the plaintiff, there still seems to be no theory of law under which the plaintiff is entitled to recovery. If publicly known facts about a real person are used in creating a fictional one, the real person has no proprietary interest in those facts, let alone in the fiction that results. Contrary to popular belief, the law does not preclude people from making a film, or writing a book, about (or based on) a real person without obtaining permission. Film companies commonly do obtain permission, mainly when they want to use the person’s real name, and present a fictionalized version as a true story (or based on a true story) without risk of a lawsuit. But when a real person and real, known facts are only the inspiration for a work of fiction, the underlying real person does not have a cause of action.

Sgt. Sarver has also alleged defamation, based on the film’s “coming home” sequence, which Sgt. Sarver reads as a statement that he did not love his son. There is, in fact, no such implication in the film, which says only that the character, Sgt. James, loved war and danger so much that it was a kind of addiction, and his wife and son could not provide the kind of life he needed.

Of course, in order for Sgt. Sarver to have a prima facie case for defamation the character first has to be recognizable in the film as a representation of him; second, the actions and characteristics of the character have to be set forth in such a way that the viewer would likely take them as truthful assertions; third, the assertions have to be false; and fourth, they have to be likely to harm his reputation. The makers of The Hurt Locker have stated that the character of Sgt. James is an amalgam of several soldiers screenwriter Mark Boal interviewed for his research. But even if Sgt. Sarver were the one and only basis for the James character, it still seems unlikely that he could meet the burden of showing defamation. As for a publicity rights violation, a motion picture, like a comic book and unlike a television commercial, is protected expressive speech, and it has been well established that even where a motion picture purports to portray a named real person, there is no liability for a publicity-rights violation, nor for a claim of ownership in the film derived from the facts of the individual’s life. See, for example, Tyne v. Time Warner Entertainment Company Lp Llc., 336 F.3d 1286 (Fla. 2005), holding that survivors of ship captain depicted in the film The Perfect Storm had no claim arising from the film’s use of the captain’s name and image, nor from the fictionalization of aspects of his character.

Studios sometimes settle these suits for nuisance value, but not often. The case law in this area is pretty solid, and not because the movie industry is big and powerful, but because they are in the business of making First Amendment-protected expressive works, and the courts don’t want to chill that by being willing to entertain many of these suits. The rare ones that have been successful have been copyright suits where a plaintiff has been able to show persuasively that the studio had looked at plaintiff’s screenplay and was aware of it, then went on to make its own substantially similar film. Even in those cases, the studios usually win because the differences outweigh the similarities; but there have been a few cases where a studio really did infringe, and has been held liable for it.

In Sgt. Sarver’s case, we have no copyright claim, and no cognizable right of publicity. We have a defamation claim, and we have a “you need my permission to do that” claim. The “you need my permission” claim has no support in the law. The defamation claim is likely to fail because (a) Sgt Sarver is not likely to be able to show that he is recognizable as the subject of the film, (b) the film is held out as fiction, and (c) the portrayal of the character of Sgt. James—even if based on or inspired by Sarver’s experiences—is not intended to be a truthful portrayal of Sarver.
Indeed it seems as if Sarver is making two contradictory arguments of the “shoe fits” variety. On the one hand, he’s looking at the film’s Sgt. James and saying, “Hey, that’s me, so you owe me money for not getting my permission”; and on the other hand, he’s looking at the sequence showing James with his family and saying, “Hey, that’s not me at all, so you owe me money for defaming me.” Either it is or it isn’t intended to be a portrayal of the real Sarver; he can’t have it both ways.

The Lohan and Sarver cases both represent provocative claims that have not heretofore been sustained in publicity jurisprudence, and both bear close watching.