In this interview we discuss how the Internet generally, and social media more specifically, has changed the landscape with respect to rights of publicity, raising a number of interesting questions about what is, and what is not, commercial speech.
Without further ado, here is part 1 of my 2 part interview with Kristina Dinerman.
QUINN: Thank you very much, Kristina, for taking the time to chat with me today. I know you’re going to be speaking next week at a program on licensing intellectual property, and I know you will be speaking about the right of publicity, so I wanted to reach out to you to discuss that today. It is a topic we have covered occasionally on IPWatchdog.com, but not all that frequently. In reviewing your materials it struck me that with the Internet such a pervasive part of our lives and so many celebrities and companies using social media to promote themselves, that we are facing a lot of new realities with respect to the right of publicity. So in your daily practice life working at Yahoo, where do you see most of these problems come up? I know a broad question, intentionally so. Feel free to take us in whatever direction you like.
DINERMAN: Rights of publicity is a really interesting subject. The evolution of the Internet has changed the way companies and brands advertise so dramatically, especially in the past five to eight years, that it’s no longer the case where a company has to put a TV commercial together to advertise. Today there are many different forms of advertising that are content based and we see social media companies such as Twitter and Facebook, and they have new and different contextual ads where the content is really the ad itself. So rights of publicity comes up in all different kinds of cases. Mostly in the marketing and advertising area where we see companies trying to increase brand awareness by implying a connection with a celebrity or using a picture of a celebrity.
QUINN: Yeah. And I was looking at your PowerPoint presentation and one of the cases that seems to really drive that home is the Katherine Heigl case dealing with how there was a picture tweeted showing her carrying bags from a certain store. And it does sort of blur the line – is that really advertising or is it maybe fair use or maybe it’s not advertising at all? I guess the question to ask is whether it is advertising any time a retailer or commercial enterprise tweets something like that?
DINERMAN: You are correct that the line between what is considered commercial speech and noncommercial speech is continually getting blurred. There is an interesting recent case on this point from the Seventh Circuit. The case is the Michael Jordan v. Jewel Food Stores where the appellate court addressed whether a congratulatory ad toward Michael Jordan was commercial speech. Because of the way the ad was produced the Court found that it was commercial speech even though they agreed that it would have been different if defendants had been congratulating a nonprofit, for example, instead of a celebrity. The Court determined that Jewel Foods had capitalized on the fact that they were connecting themselves with Michael Jordan. The Katherine Heigl case is very similar. The paparazzi had taken a photo of her carrying bags from a Duane Reade convenience store. In that particular case the commentary with the photo said something to the effect of “Katherine Heigl can’t resist shopping at Duane Reade.” But it might have been a different situation if she had posted the photo herself showing something with a brand on it. If it then had been retweeted by the brand owner without any commentary, that would be a much closer case. It’s interesting to see how on one hand companies are using the Internet to promote and connect to these images of celebrities, but at the same time celebrities are also using the Internet to self promote. Where this intersection takes place is often where you see problems. That is where you have to be cautious about counseling clients so that they understand that you cannot have a situation where their brand implies an endorsement between the brand and a celebrity, unless you sought permission from that particular celebrity. The Katherine Heigl case is a perfect example of that. They did not have her permission and she just happened to be shopping at Duane Reade. By the way the Katherine Heigl case settled so we do not know what the outcome would have been.
QUINN: I’m just struck by this because if you change a couple facts or maybe even one fact things change substantially. I thinking about the Jordan case and the picture there really just shows sneakers with number 23 on it. I suppose I can see it to some extent but it just seems wrong that you can’t congratulate somebody without potentially violating the law. And maybe it would be totally different – I think it might be really interesting getting your thoughts here, because a lot of times after a team wins the Superbowl or the team wins the World Series you’ll see companies take out ads and say “you made us proud,” or “congratulations,” et cetera. And I don’t think I’ve ever seen any litigation about that sort of a thing.
DINERMAN: Yes, that is a very common thing to do. In this particular case the Court looked beyond the surface of the ad and looked at the intent of the ad. Because they determined that the intent of this particular ad was to imply an association between Jewel Foods and people who love Michael Jordan in Chicago, the Court found that in this case it was an advertisement and not simply a congratulatory message. However, it’s a fair point. I do think there may be more litigation over these kinds of tribute messages or companies are going to be afraid to do them at all.
And I want to go back to the point that they didn’t do anything but congratulate Jordan. They did do one other thing, they used his number, the number 23. As basketball fans in Chicago know the number 23 is synonymous with Michael Jordan. This reminds me of Motschenbacher v. R.J. Reynolds Tobacco, which is a 1974 case from the Ninth Circuit. Moshenbacher was a race car driver who was famous for using white pin-striping on his car, and the defendants R. J. Reynolds used the same white pin-striping on the car in their commercial. In that case, the Court found that that the white pinstriping was enough to connect Moshenbacher with the car in the commercial. So rights of publicity is really about identity. It is a fair point that the Jewell ad seemed like a simple congratulatory message. Courts are going to have to go past the surface of an ad and look at what the intent of the ad is. During our PLI presentation we look at a recent Old Navy commercial that used an actress who is a Kim Kardashian look-alike. We examine this case because whether someone’s identity is being used is generally a factual determination. On the surface its fine to use an actress that looks like Kim Kardashian. But if a company intends to capitalize on the brand of Kim Kardashian in creating a TV commercial that creates a problem.
QUINN: You see a lot of impersonators and the more you look like somebody the more likely you’re going to be able to make a career out of being an impersonator. Particularly I’m thinking about some folks over the years who have made careers out of impersonating Bill Clinton, or George Bush or now Barak Obama. Where does the line get drawn with respect to an impersonator who can do it and gets away with it and this commercial speech where it’s not allowed. Is it really about parody?
DINERMAN: Yes. It’s interesting because Elvis impersonators are a perfect example of someone who is copying another’s identity to make money. But I think that in most cases impersonation is seen as parody. I think where you would have issues would be if an impersonator is a sound-alike. Then it would cross over that line into rights of publicity.
QUINN: Yes. And also presumably you’d have some copyright problems there, too. Do those two really blur together in this whole area of case law?
DINERMAN: Generally not. If it is something that would be covered by the Copyright Act, such as the use of a sound recording, then the Copyright Act will preempt it. In fact, preemption by the Copyright Act is often asserted as a defense to a rights of publicity claim. There is no federal statute on rights of publicity. It’s governed by state law, state statute or common law. So it can vary by jurisdiction but generally if you have something such as the use of a sound recording, that’s going to be preempted by the Copyright Act so you’re going to be out of the rights of publicity and you’re going to be under the Copyright Act. But going back to the parody discussion there was an interesting case, the Vanna White case where parody was raised as a defense. In that particular case the Ninth Circuit found that because they had used Vanna White’s identity for a television commercial that parody would not be a defense. So when it’s commercial speech, parody is not a defense, at least not in the Ninth Circuit.
QUINN: These cases seem to basically come down to the reality that if you are using somebody else’s identifiable likeness for an advertisement or in commerce you had better have their permission in advance.
DINERMAN: Yes, the primary principle behind rights of publicity law is that people have a right to protect their identity from commercial exploitation, and especially when we are talking about celebrities who make a tremendous amount of their income, through endorsing products and doing commercials. In the past you never saw a lot of A-list actors and actresses do a lot of commercials in the United States, but recently both Mathew McConaughey and Jennifer Garner did commercials. So you’re seeing a lot more A-List celebrities doing commercials.
QUINN: Kevin Spacy has done some recently.
DINERMAN: Yes. So you’re seeing this evolution of celebrities who are moving into this space and using their image to generate as much income as possible. So if a company is associating their brand with a celebrity to increase brand awareness, even if on the surface it seems noncommercial, if the intent is to increase brand affinity it could be a problem. And definitely if a brand uses a celebrity image to sell a product that would be a problem. An example of this is a 2002 case, where Tom Cruise and Nicole Kidman sued Sephora for using a photo of them to promote its perfume line without permission.
QUINN: Now I’m also struck by the fact that it seems like many of these cases get filed and then they get settled at an early stage. Is that the norm?
DINERMAN: I think that is very common in litigation to have a motion to dismiss filed in the preliminary stages and then if the case is allowed to proceed there will be some settlement discussions. Most parties recognize that going to trial in some of these cases isn’t necessarily the best outcome for either party. So a lot of them settle before they reach trial. But we have seen the Michael Jordan v. Jewel Food Stores case that went to trial and then was appealed to the Seventh Circuit, and we have already discussed several from the Ninth Circuit. So we are seeing a fair number of cases that go beyond the preliminary stages.
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