Can the Right of Publicity Be Squared with New York Times v. Sullivan and its Progeny?
This article was published in the Fall 2015 issue of the ABA Communications Lawyer. ©2015 by the American Bar Association. Reprinted With permission. All rights reserved. This information or any or portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
In Davis v. Electronic Arts, Inc., the Ninth Circuit recently found that former NFL football players have a “right of publicity” to control the use of their likenesses in a video game in which users create their own fantasy games involving real life players. 1 The court relied on a pair of earlier decisions—one by the Ninth Circuit, one by the Third Circuit—that reached the same conclusion as to a video game involving NCAA players. 2 All three decisions recognized that, under Supreme Court precedent, video games are expressive works—communicating ideas and even social messages—and are thus entitled to the same level of First Amendment protection as more traditional forms of expression, such as books, plays, and movies. 3 Yet all three decisions nonetheless concluded that, because the video games were insufficiently “transformative,” the First Amendment was trumped by the athletes’ interests in profiting from the use of their public personas. 4
These cases illustrate the struggles courts have faced in reconciling this relatively new tort with the First Amendment rights of the publishers of expressive works who incorporate into those works images or stories of real life people. 5 While courts have developed a variety of “tests” to strike the right balance, all have serious constitutional flaws. Surprisingly, few courts have examined the right of publicity under the well-established line of Supreme Court cases seeking to balance other publicity-based torts with the First Amendment. The power that courts have been willing to provide to celebrities to control the use of their personas under the right of publicity seems odd given how the Supreme Court has dealt with defamation, invasion of privacy, intentional infliction of emotional distress, and a series of other disfavored statutes that have sought to prohibit publicity of one kind or another.
The video games, again, were undeniably expressive works. There was nothing false about the portrayals of the athletes in these games. And the use of the athletes’ identities did not harm their reputations, cause them emotional distress, or damage them in any other way we traditionally think of as harm caused by publicity. To the contrary, the video games, if anything, enhanced the subjects’ notoriety and fame in a positive way.
It is true that the interests at stake in defamation, invasion of privacy, and intentional infliction of emotional distress are different than in the right of publicity. Instead of protecting the interest in being free from harm from publicity, the right of publicity protects the interest in exploiting the value of one’s own identity. But why would this supposed right to control the use of and profit derived from one’s identity deserve more weight on the constitutional scale than the right to be free from real harm caused by publicity?
Suppose that during a news conference about the video game at issue in Davis, the CEO of Electronic Arts accused one of the former NFL players that is a plaintiff in the case of murder. Even if the statement were false and even if the CEO were negligent in failing to determine the truth, the former player, as a public figure, would have no right to recover damages absent a showing that the defendant knew the statement was false or subjectively entertained serious doubts as to its truth. 6
Consider a humorous greeting card depicting a famous hotel heiress and poking fun at her celebrity. What if, instead, a celebrity gossip website revealed that the heir was the victim of a sexual assault, in violation of a statute specifically prohibiting the release of such information? The Supreme Court has made clear that the First Amendment prohibits imposing liability in the latter scenario—even if the victim were a purely private person and suffered great emotional distress as a result of the disclosure. 7 Yet the Ninth Circuit found that the First Amendment imposes no bar on Paris Hilton controlling Hallmark’s use of her image in a parody of her public persona in a greeting card. 8
Rather than applying murky, unpredictable balancing tests to determine whether a work is sufficiently “creative,” or “expressive,” or “transformative” to outweigh this right of publicity in any given case, courts should instead consider analyzing this cause of action under the well-established law governing liability for publicity. Under this rubric, recovery would be allowed only where, in addition to whatever elements the tort may require, the publicity is false in some provable way. The Supreme Court has held that in the case of “truthful information which . . . has [been] lawfully obtained, punishment may lawfully be imposed, if at all, only when narrowly tailored to a state interest of the highest order.” 9 Granting celebrities a monopoly on the use of their names and likenesses for profit would not appear to be such an interest. As a petition for certiorari has been filed in the Davis case, the Supreme Court now has the opportunity to correct the unconstitutional road down which the right of publicity has wandered.
The Right of Publicity’s Origin
It was not until 1953 that the Second Circuit coined the term “right of publicity.” 10 In a case involving professional baseball players, the court determined that a new cause of action was needed to address a perceived economic wrong that, in the court’s view, was beyond the reach of the right of privacy:
[A] man has a right in the publicity value of his photograph . . . . This right might be called a “right of publicity.” For it is common knowledge that many prominent persons (especially actors and ball-players), far from having their feelings bruised through public exposure of their likenesses, would feel sorely deprived if they no longer received money for authorizing advertisements, popularizing their countenances, displayed in newspapers, magazines, busses, trains and subways. 11
In the 70-plus years that have followed, many states have recognized a right of publicity—by statute, common law, or both. 12 The Restatement of Unfair Competition has done so, too. 13 And while the precise contours differ from jurisdiction to jurisdiction, the essence of any right of publicity claim is the use of another person’s identity (e.g., name, likeness) for profit and without consent. As one scholar in this area has recognized, the tort is often justified by principles of natural rights (the notion that we all have an inherent, property-like right to control the use of our identities) and unjust enrichment (the notion that it is unfair to permit one person to profit from another’s identity). 14
While many state courts have addressed the issue, the sole case in which the Supreme Court touched on the right of publicity, Zacchini v. Scripps-Howard Broadcasting Co., 15 does not provide much guidance for resolving the inherent tension between the tort and the First Amendment. That is because Zacchini “involved only a small slice of the right of publicity and its holding was based on an unusual and narrow set of facts.” 16 In Zacchini, the plaintiff sued over a news broadcast of his entire “human cannonball” act. 17 The case thus did not involve the mere “appropriation of an entertainer’s reputation,” but, rather, “the appropriation of the very activity by which the entertainer acquired his reputation in the first place.” 18 Stressing this crucial distinction, the Supreme Court explained that “the broadcast of [plaintiff’s] entire performance, unlike the unauthorized use of another’s name for purposes of trade or the incidental use of a name or picture by the press, goes to the heart of [plaintiff’s] ability to earn a living as an entertainer.” 19 Drawing a parallel to copyright and patent law, the Court found that the cause of action protected the economic incentive for the plaintiff to develop and perform his act and thus was not constitutionally problematic under the circumstances. 20
A Sea of Tests
Absent Supreme Court guidance for situations other than the unauthorized broadcast of a plaintiff’s entire act, courts have crafted a range of analytical approaches to determine when, in the context of expressive works, the right of publicity must yield to the First Amendment. Those approaches include the predominant use test, the Rogers test, the transformative use test, and free-form ad hoc balancing.
Under the predominant use test, the First Amendment trumps the right of publicity where the speech is predominantly “expressive,” but succumbs where the speech predominantly “exploits the commercial value” of the plaintiff’s identify. 21 Applying this test, the Missouri Supreme Court rejected a First Amendment challenge to a professional hockey player’s suit based on a character named after him in a comic book series—even though the hockey player and the character did not resemble each other apart from their shared names and tough-guy personas. 22 A federal district court reached the same result as to a claim by Elvis Presley’s estate against an Elvis impersonator who imitated the King of Rock and Roll to a T—in appearance, dress, and performance style. According to the court, “although [it] contain[ed] an informational and entertainment element, the [impersonator’s] show serve[d] primarily to commercially exploit the likeness of Elvis Presley without contributing anything of substantial value to society.” 23
Under the Rogers test, the First Amendment protects the use of a person’s name or likeness unless that use is “wholly unrelated” to the content of the speech at issue or is “simply a disguised commercial advertisement for the sale of goods or services.” 24 Applying this test, the Second Circuit rejected a claim by Ginger Rogers based on a movie, titled “Ginger and Fred,” about two fictional Italian cabaret performers who imitated Rogers and Fred Astaire and became known in Italy as “Ginger and Fred.” 25 Similarly, the Kentucky Supreme Court dismissed a claim based on the use of the plaintiff’s dead husband’s name, image, and voice in a song about him, concluding that the use of his likeness was “sufficiently related to the underlying work” and was not just a disguised advertisement. 26 But the Sixth Circuit refused to dismiss a right of publicity claim by Rosa Parks, based on an OutKast song called “Rosa Parks.” 27 While the song’s lyrics did not explicitly reference Parks, they included the hook, “Aha hush that fuss, Everybody move to the back of the bus”—which, according to the band and the district court, was the tie-in to Parks. 28 According to the Sixth Circuit, however, a jury would have to determine whether “Rosa Parks” was “wholly unrelated” to the content of the song. 29
Other courts—including the Third and Ninths Circuits in the football video game cases—have endorsed the transformative use test. The California Supreme Court adopted this test based on copyright law and explained that the inquiry boils down to “whether the celebrity is one of the ‘raw materials’ from which an original work is synthesized, or whether the depiction or imitation of the celebrity is the very sum and substance of the work in question.” 30 In other words, the key question is “whether a product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness.” 31
Courts have found all of the following insufficiently “transformative” to preclude right-of-publicity claims:
- football video games in which users control realistic avatars of actual pro or college players; 32
- t-shirts with realistic drawings of the Three Stooges; 33
- the video game Band Hero, in which users simulate performing in the band No Doubt by controlling realistic avatars of No Doubt members; 34 and
- a birthday card with an image of Paris Hilton’s head superimposed on a cartoon waitress’s body and uttering Hilton’s “that’s hot” catchphrase. 35
Yet courts using the same test have found all of the following sufficiently “transformative” to make right-of-publicity liability unacceptable under the First Amendment:
- a painting featuring realistic images of Tiger Woods at the center, with a collage of images of caddies and of other golf greats around the perimeter; 36
- a rap star’s use of the name and persona of a notorious, real-life cocaine dealer to create for himself a fictional celebrity identity of drug-kingpin-turned-rapper; 37
- a comic book series featuring half-human, half-worm villains based, in a number of ways, on a pair of real-life musicians; 38
- a video game in which a character shared certain facial features, clothing, hair color and style, and catchphrases with the former lead singer of the “retrofunk-dance musical group” Deee-Lite; 39 and
- a warfare video game, with “missions” involving a realistic avatar of former Panamanian dictator Manuel Noriega. 40
Finally, still other courts have not articulated any particular test, opting instead to engage in free-form, ad hoc balancing of the competing interests in the particular case. The Tenth Circuit did so in holding that baseball cards featuring caricatures of major league baseball players were not actionable. 41 The court found that, as parodies of celebrities, the baseball cards were an “especially valuable means of expression.” 42 On the other hand, the court concluded that, in the specific context of parody, society’s interest in protecting major leaguers’ publicity rights was “negligible.” 43 Similarly, the Eighth Circuit held that the First Amendment right to use major league baseball players’ names and statistics in fantasy sports products “superseded” the players’ publicity rights. 44 As for the First Amendment side of the scale, the court emphasized that “recitation and discussion of factual data concerning the athletic performance of players . . . command a substantial public interest, and, therefore, is a form of expression due substantial constitutional protection.” 45 And as for the right of publicity side, the court stressed that baseball players already “are rewarded handsomely. . . for their participation in games and can earn additional large sums from endorsements and sponsorship arrangements.” 46
New York Times v. Sullivan and its Progeny: Protecting Even Some False Speech to Encourage True Speech about Public People and Public Issues
While courts have developed a variety of tests to balance the First Amendment against the right of publicity, in doing so, they generally have not considered the already well-settled body of Supreme Court case law addressing the intersection between the First Amendment and state law remedies for damage caused by publicity, stemming from the landmark case of New York Times v. Sullivan. 47 The overarching theme of this line of cases is that non-false speech on matters of public concern—particularly speech concerning public people—is almost always protected by the First Amendment, absent a state interest of the highest order. Indeed, even some false speech is protected in order to encourage unfettered discussion about public issues.
For example, the Supreme Court has made clear that preventing reputational harm is not an interest that justifies a damage remedy for true speech—or even for some false speech. The Court has explained that “[t]he right of a man to the protection of his own reputation from unjustified invasion and wrongful hurt reflects no more than our basic concept of the essential dignity and worth of every human being—a concern at the root of any decent system of ordered liberty.” 48 But “[t]o ensure that true speech on matters of public concern is not deterred,” the Court has nonetheless mandated that plaintiffs who sue for defamation based on speech on matters of public concern must prove that the speech was false. 49 Speech on matters of public concern that cannot be proven true or false thus is not actionable as defamation. Nor is speech—such as rhetorical hyperbole, imaginative expression, parody, and sarcasm—that cannot reasonably be understood as stating “actual facts,” as only facts can be false. 50
To provide even further “breathing space” for speech about public officials and public figures in particular, the Supreme Court has required defamation plaintiffs in either category to prove actual malice—that the speech was published with knowledge of its falsity or with reckless disregard for whether it was false or not. 51 In doing so, the Court has emphasized that the state interest in protecting public people from reputational harm is less than its interest in protecting private people. 52 Public officials and public figures have voluntarily assumed an increased risk of defamation by choosing to inject themselves into the limelight. 53 In other words, we as a society—for better or worse—scrutinize and otherwise focus much of our attention on such people. That is simply part of the trade-off when entering the arenas of politics and celebrity. Moreover, despite the “strength of the legitimate state interest in compensating private individuals for wrongful injury to reputation,” private figure defamation plaintiffs must prove some level of fault to recover, too; there can be no strict liability, even as to false and defamatory publications. 54
Protecting privacy is also an insufficient state interest to justify imposing liability for non-false speech about matters of public concern. In fact, in Time Inc. v. Hill, the Supreme Court held that to recover for invasion of privacy based on speech about matters of public interest, any plaintiff— private or public—must prove knowledge of falsity or reckless disregard of the truth. 55 The Court emphasized that “[w]e create a grave risk of serious impairment of the indispensable service of a free press in a free society if we saddle the press with the impossible burden of verifying to a certainty the facts associated in news articles with a person’s name, picture or portrait, particularly as related to nondefamatory matter.” 56 An actual malice standard was necessary because “[e]ven negligence would be a most elusive standard, especially when the content of the speech itself affords no warning of prospective harm to another through falsity,” as it would “place on the press the intolerable burden of guessing how a jury might assess the reasonableness of steps taken by it to verify the accuracy of every reference to a name, picture or portrait.” 57
The prevention of emotional distress does not rise to the level of a state interest of the highest order either. In Hustler Magazine v. Falwell, Jerry Falwell sued Hustler claiming that a parody interview of him—which included his picture— suggested that Falwell had engaged in a drunken incestuous rendezvous with his mother in an outhouse. 58 The Supreme Court held that, to recover for intentional infliction of emotional distress (“IIED”), public figures and public officials must prove that the speech at issue “contains a false statement of fact which was made with ‘actual malice,’ i.e., with knowledge that the statement was false or with reckless disregard as to whether or not it was true.” 59 The Court stressed that “[a]t the heart of the First Amendment is the recognition of the fundamental importance of the free flow of ideas and opinions on matters of public interest and concern” and that importing the actual malice standard to the IIED context was necessary to ensure adequate “breathing space” for such speech. 60 Indeed, even in a case where the IIED claim was based on picketing near a soldier’s funeral with signs blaming the death on America’s tolerance of homosexuality, the Supreme Court held that the First Amendment precluded recovery because the speech related to matters of public concern. 61 As the Court put it: “Speech is powerful. It can stir people to action, move them to tears of both joy and sorrow, and—as it did here—inflict great pain. On the facts before us, we cannot react to that pain by punishing the speaker. As a Nation we have chosen a different course—to protect even hurtful speech on public issues to ensure that we do not stifle public debate.” 62
Consistent with its approach to defamation, invasion of privacy, and IIED in general, the Supreme Court has also struck down statute after statute that prohibited the publication of true speech regarding matters of public concern but failed to promote a state interest “of the highest order.” 63 For example, in Florida Star v. B. J. F., the Court deemed unconstitutional a Florida statute that prohibited publishing rape victims’ names, even though the plaintiff, B. J. F., “testified that she had suffered emotional distress from the publication of her name . . . ; that her mother had received several threatening phone calls from a man who stated that he would rape B. J. F. again; and that these events had forced B. J. F. to change her phone number and residence, to seek police protection, and to obtain mental health counseling.” 64 In Smith v. Daily Mail, the Court reached the same conclusion as to a West Virginia statute that prohibited publishing juvenile defendants’ names. 65 So too in Bartnicki v. Vopper, as to Pennsylvania and federal statutes that prohibited intentionally publishing the contents of illegally intercepted communications, including, as in the case before the Court, communications about matters of public concern. 66 In the words of the Bartnicki Court, statutes that “impose[] sanctions on the publication of truthful information of public concern” “implicate[] the core purposes of the First Amendment.” 67
Considering the Right of Publicity Under New York Times and its Progeny
One may reasonably question why, rather than analyzing the right of publicity under one of the four approaches discussed above—the predominant use, Rogers, transformative, and ad hoc balancing tests—courts should not simply apply the Supreme Court’s well-established, falsity-focused line of publicity cases. While cases involving false endorsement may pass First Amendment muster under such an analysis, most right of publicity plaintiffs do not claim that the speech at issue was false in any way. Instead, they simply seek to protect their interest in controlling the use of their own name or likeness. Is that interest entitled to more weight than one’s reputation, privacy, or right to be free from outrageous conduct that inflicts emotional harm?
We submit that it is not. Indeed, the traditional rationales offered for the right of publicity—protecting natural rights and preventing unjust enrichment—are equally applicable to a defamatory, privacy-invading, distress- inducing, above-the-fold article about a celebrity. Moreover, while the tort protects celebrities’ right to control the use of their own names, the Supreme Court has made clear that public persons are entitled to less protection from publicity, not more. 68 Thus, given this well-established First Amendment principle that public persons are subject to legitimate public comment, the very rationale upon which the right of publicity tort is based is constitutionally suspect. In any event, whatever worth one may attribute to the values furthered by the right of publicity, they do not outweigh the risks that enforcing such a right poses to free expression. What is more, in addition to permitting liability for non-false speech about public people, the four approaches that most courts employ when balancing First Amendment and publicity rights suffer other constitutional infirmities, as well:
- All four tests put the court—be it judge or jury—in the role of art critic. For all four require the court to assess the expressive significance of the use of the prospective plaintiff’s identity— by evaluating whether that use is more expressive than commercial, related to the expressive content of the speech as a whole, transformative, or of great enough expressive value to outweigh any countervailing interests. The Supreme Court has repeatedly cautioned that this is precisely the type of role that courts should avoid under the First Amendment. 69
- Given their subjective nature, all four approaches are unpredictable. This is a particularly dangerous flaw in the First Amendment context, where the concern regarding chilling effects is paramount. 70 Indeed, even had he known what test the court would apply, how could the comic book author have predicted with any degree of confidence whether naming a tough-guy character after a tough-guy hockey player would be deemed more commercially motivated than expressive? How could OutKast have predicted whether “Rosa Parks” would be found sufficiently related to a song that talks about moving to the back of the bus but doesn’t mention the civil rights hero by name? How could Electronic Arts have predicted that designing lifelike football games that enable users to be actual players would be held non-transformative, particularly where dissenting Third Circuit and Ninth Circuit judges had a different view? And how could the fantasy sports company have predicted whether the expressive value of talking about sports statistics would be ruled sufficiently weighty to trump the rights of major league players to profit from the use o
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