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Licensing Law

Right of Publicity & Using Celebrities Without Permission

Contact the editor at karina@plainlanguagemedia.com

Consider, for a moment, the following situations:

  • EA Sports uses likenesses of well-known college athletes as characters for its video games
  • Samsung uses images and bios of legendary Olympians for its “Genome Project” app
  • Pitbull mentions Lindsay Lohan in a song lyric
  • Abercrombie and Fitch uses a famous surfer’s photo in its sales catalog

In the U.S., can a company use other’s intellectual property in these ways without being under a licensing agreement? The answer: “Yes, sometimes.” While it might seem an anathema for any sensible licensing professional to use a celebrity’s name or likeness in their company’s products or advertising without securing a licensing agreement, there are certain situations where doing so may be unavoidable.

Note that many retailers will require manufacturers or resellers to submit authentication letters or some other proof that their goods are officially licensed in addition to an indemnification that the retailer will not be held liable for any related issues. So even if you’re legally in the clear, you might still not be able to stock the shelves at Amazon or Walmart.

What the Law Says: Right of Publicity versus Free Speech

The principal legal issue raised by unauthorized use of a celebrity for commercial purposes involves not federal but state law, specifically, the so-called “right of publicity.” In 38 states, individuals have not just privacy but property rights in the use of their name, likeness, voice and other personal traits for commercial purposes. (See LAWSCAPE to look up the laws of your state). Unlicensed use may violate the right of publicity and subject your company to lawsuits and damages.

But companies have rights, too, including the right to free speech under the First Amendment. In some situations, a company’s First Amendment rights outweigh a celebrity’s right of publicity. Result: They don’t need a license to use the celebrity. Unfortunately, these situations are extraordinarily specific. The important thing is to make sure you understand where the lines are drawn.

How to Protect Yourself

Although the rules vary state-by-state, there are five (technically, six) situations where a company can use a celebrity without a license:

Situation 0: The Use is Allowed

The rarest of situations—where you won’t be able to obtain a licensing agreement but your use will nevertheless remain legally unchallenged. In this case, the celebrity has effectively donated their name and likeness to the public.

Note that the estate (after the celebrity has passed), may nevertheless elect to try to enforce these rights. (“Try” is the operative word.) In one of the only examples TLL is aware of:

Supreme Court Justice Ruth Bader Ginsburg has no official licensing program but has decided not to enforce her right of publicity—that is, she is happy to allow merchandise bearing her likeness or name to be sold without any restrictions.

Situation 1: The Use Is Noncommercial

Unlicensed use of a celebrity is much easier to justify when you can show you didn’t do it to make money. Caveat: Noncommercial use won’t work if you’re using a celebrity as a way to enhance or advertise your product; you need to show that the use serves some kind of public interest, e.g., news reporting, or artistic expression. It’s up to courts to make this judgment on a case-by-case basis. Examples:

OKAY

Samsung’s use of Olympic athletes’ images and bios for “Genome Project” app enabling users to compare their Facebook profiles to the athletes that wasn’t designed to promote any Samsung products [Spitz v. Samsung Elecs. Am., Inc. (2013)].

NOT OKAY

Cell phone company’s press release comparing its emergency preparedness program to famous test pilot Chuck Yeager’s breaking the sound barrier was commercial because announcing the plan promoted an enhancement of its wireless service [Yeager v. Cingular Wireless, LLC (2009)].

Situation 2: Commercial Use Is “Incidental”

Commercial use of a celebrity may still be protected by the First Amendment if you can show that it was incidental and provided the company only marginal commercial advantage. What exactly is and isn’t “incidental use”? Although this is something courts have to decide on a case-by-case basis, consider a pair of recent cases that illustrates the factors a court may consider:

COMPANY WINS

What Happened: The rapper Pitbull includes the following lyric in his hit song “Give Me Everything Tonight”: “So, I’m tiptoein’, to keep flowin’/I got it locked up like Lindsay Lohan.” Ms. Lohan claims that she didn’t authorize the use of her name and sues Pitbull, the record label and its parent company for violating the NY state version of her right of publicity.

Ruling: The U.S. District Court dismisses the case without a trial [Lohan v. Perez (2013)].

Explanation: Use of Lohan’s name didn’t violate her right of publicity because it was incidental and fleeting, the court explained:

  • The song mentions the name just once in 104 lines;
  • The name doesn’t appear in the title or refrain; and
  • The use of the name “is entirely incidental” to the song’s theme.
COMPANY LOSES

What Happened: EA Sports introduces a new feature to the 2010 version of its popular “Madden NFL” video game: the option to play “classic” NFL teams from different eras using former players as characters. A group of former players used in the game sues EA for violating their right of publicity. EA claims it doesn’t need a license because the use was “incidental” and asks the court to throw out the case.

Ruling: The U.S. Court of Appeals for the 9th Circuit says the use wasn’t incidental [Davis v. Electronic Arts Inc. (2015)].

Explanation: The case was essentially a repeat of 2013 cases finding EA’s unlicensed use of college athletes for video games a right of publicity violation. The only difference is that this time EA’s argued incidental use. But the court didn’t buy it. Unlike Pitbull’s isolated mention of Lohan, EA’s use of the players’ likeness for its game provided the company significant commercial advantages:

  • Realism is at the heart of the game’s popularity;
  • Use of players’ likenesses is essential to creating that realism; and
  • The use of the retired players for “classic” matchups was a prominent part of EA’s advertising.

Situation 3: Use Is Related to News or Public Events

Unlicensed use of a celebrity is also allowed in connection with a commercial venture if the primary purpose is to report on matters of public interest and promote the public’s right to know rather than just to make money. As ever, courts have to make this judgment on a case-by-case basis. Examples:

OKAY

Local newspaper’s sale of poster reproductions of front page featuring QB Joe Montana paintings after 1990 Super Bowl because posters report “newsworthy events” [Montana v. San Jose Mercury News, Inc. (1995)].

NOT OKAY

Store’s use of illustration of famous surfer in its catalog is merely “window-dressing to advance the catalog’s surf theme and did not contribute significantly to a matter of public interest” [Downing v. Abercrombie & Fitch (2001)].

Situation 4: Use Is Transformative

The use of a person’s identity without a license is allowed where the likeness is so transformed that it becomes an original expression rather than just a reproduction of the celebrity’s likeness. Although better suited for works of art, “transformative use” can also work in commercial settings.

OKAY

Use of distortion, context, etc., transforms Andy Warhol silkscreens of Marilyn Monroe from mere reproductions into original form of social commentary.

NOT OKAY

Silkscreen prints of charcoal 3 Stooges drawings for tee-shirts and other retail items are straight commercial reproductions, not original works [Comedy III Productions v. Saderup (2001)].

Situation 5: Use Is for Parody

A close cousin of the “transformative use” defense is to show that the primary purpose of the celebrity’s use was for parody, lampoon, or caricature—rather than commerce. Politically-themed bobble heads and other knick-knacks typically fall under this exception. Also consider this example:

First Amendment protects comic book publisher’s right to caricature musicians Johnny and Edgar Winter as “villainous half-worm, half-human” characters where drawings aren’t just “conventional depictions” but original expressions designed to lampoon [Winter v. DC Comics (2002)].

Conclusion

Using a celebrity’s name, likeness, voice, etc., without a licensing agreement or other form of consent probably won’t violate the person’s right of publicity if:

a. You confine the use to one or more of the 18 states where individuals don’t have a right of publicity—AK, AR, DE, ID, IA, LA, ME, MD, MS, NH, NC, ND, OR, SC, SD, VT, WV or WY; or

b. If your use is in a right of publicity state but you can show that it’s protected free speech by proving:

1. The use was noncommercial; or

2. The use was commercial but:

i. The commercial benefits were incidental or fleeting;
ii. The use was primarily to report news or partake in public events;
iii. The use was transformative; or
iv. The use was primarily for purposes of parody or caricature.

You should, of course, consult with counsel first. Even if you’re confident that you have the legal right to do something, that doesn’t mean someone else will agree—consider if you have the time and money to invest in defending against claims of infringement or even a formal lawsuit.

And last but not least, remember that right of publicity isn’t the only legal risk. Unlicensed use of a celebrity can also result in liability under other laws, including copyright, trademark, and false advertising.

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