Right Of Publicity Is Not Copyright: Free Speech Pitfalls For Comic Book Artists, Publishers & Sellers
Online comic book store Heavy Ink gave a strong response to Olivia Munn's attorneys: "shove it." Olivia Munn is co-host of G4's Attack of the Show, an actress, and most recently the cover model for January's Maxim. Her attorneys are opposed to Heavy Ink's sale of the Celebrity Showdown Olivia Munn One Shot #1 comic from creator Brian Denham and Antarctic Press.
In their cease and desist (jpg), Ms. Mann's attorneys demanded that Heavy Ink, the seller, take down a webpage link for the comic book and demanded that they destroy all copies of the comic. Don't know if her attorneys have gone after the publisher. They addressed their demands to Heavy Ink's DMCA Agent, which may have confused the folks at Heavy Ink into thinking that this was a copyright issue. It is not. Ms. Mann asserts her exclusive rights to "use or exploit her image and/or name in any manner whatsoever." This invokes the right of publicity, not copyright.
Unlike copyright, which protects particular expressions of ideas (artistic works), the right of publicity protects a celebrity's right to control the fame that they build in their name and likeness (identity). A right of publicity claim exists for:
- use a person's identity,
- without the person's consent,
- with an intent to obtain a commercial advantage.
While Heavy Ink may have had a good argument that it did not intend to obtain a commercial advantage because it did not know who Ms. Munn was, that argument is slipping away with the increasing number of posts on its site that proclaim what a great marketing opportunity has been created by Heavy Ink's public response.
Regardless, that was not the reason for its strongly worded response. Heavy Ink refused because:
"it is clear that [Ms. Munn] is a public figure. As a public figure, the use of her likeness meets the tests for the parody copyright exception set forth in both Campbell v. Acuff -Rose Music, Inc. and the more recent Suntrust v. Houghton Mifflin."
While these two cases do address parody defenses to copyright infringement claims Campbell - 2 Live Crew's "cover" of Roy Orbison's Pretty Woman, and Suntrust - Alice Randall's The Wind Done Gone perspective shift on Margaret Mitchell's Gone With The Wind), they do not create parody defenses to right of publicity claims.
There is no absolute defense to a right of publicity claim based upon parody. Instead, parody is part of the general defense based upon First Amendment free-speech rights. And,even though the First Amendment is part of the U.S. Constitution, the First Amendment defense to right of publicity claims is analyzed in at least four different ways depending upon where the suit is brought.
the "transformative use" test, e.g., Winter v. DC Comics (over the Winter brothers' complaints about the Jonah Hex comic- the "relatedness" test, e.g., Parks v. La Face Records (for Outkast's song titled Rosa Parks)
- the "actual malice" test, e.g., Hoffman v. Capital Cities/ABC (when Hoffman's Tootsie character appeared in a Los Angeles Magazine fashion spread)
- the "predominant purpose" test, e.g., Doe v. TCI Cablevision (or Tony Twist v. Todd McFarlane disputing a character's name in Spawn)
It should also be noted that it is not clear that Celebrity Showdown would be considered a parody. As the Heavy Ink website describes the comic:
Olivia Munn conquers the world in this hilarious spoof! Hollywood's hottest geek girl, Olivia Munn, hosts G4's Attack of the Show, but while at comic con, she is attacked by a swarm of fans. Unable to escape, her gamma-irradiated cells explode and unleash the fury of The 50-Foot Womunn. It's the showdown of the century! Geeks vs Munn! Let's get ready to rumble!!
We'll have to wait for the comic's April release to see if it offers any commentary about Ms. Munn, or simply places her in a fantasy setting. In Dr. Seuss Enterprises v. Penguin Books USA, the Ninth Circuit held that The Cat NOT in the Hat was not a parody and infringed Seuss copyrights and trademarks because the Seuss-like stanzas about the O.J. Simpson case ("One knife?/Two knife?/Red knife/Dead wife") "have no critical bearing on the substance or style of The Cat in the Hat. [the author and publisher] merely use the Cat’s stove-pipe hat, the narrator (Dr. Juice), and the title (The Cat NOT in the Hat!) to get attention or maybe even to avoid the drudgery in working up something fresh."
Still, in most states the First Amendment would protect a comic-book creator in the right of publicity context based upon the First Amendment if the work itself is sufficiently transformative.
Not so in Missouri. A crafty, plaintiff's attorney would purchase the comic on-line and have it shipped to a St. Louis address to obtain jurisdiction and take advantage of the "predominant purpose" test that lets a jury weigh the commercial value of a celebrity's name against the artistic value. At the same time, a wise purveyor of comics would block its website's sales into Missouri.
Perhaps more interesting is why Ms. Munn's attorneys would be going after this particular comic when a plaintiff's attorney would find a treasure trove of other opportunities in publications from Sinful Comics (absolutely NSFW, may find offensive). In particular, you would think that instead of going after the more mainstream publication by Antarctic Press, Ms. Munn would be more concerned about her depiction and sale in this adult oriented comic (partial image below, full image definitely NSFW). That is unless Ms. Munn has a licensing agreement with Sinful Comics.
Regardless, this will be a very interesting situation to watch develop.
Geoff Gerber keeps waiting for his superpowers to materialize. In the meantime, he uses his lawyer-powers to litigate intellectual property
Michael A. Kahn concentrates his practice in copyright, trademark, First Amendment and media law (libel, privacy rights). He is
Abby Durlester is a reality television enthusiast who can prophesize which contestant will win the season of whatever varietal
Thanks for this analysis, Pete! Very interesting. I just added it to my Boing Boing post. (Do you happen to be related to the Salsichs of Boulder, CO? Old friends of mine from years ago.)
Mark,
Glad you found it helpful. I (Geoff) actually put up this post. Pete and I both blog here and we work closely together on these issues at our firm (The BrickHouse Law Group). Even though we have both spent time in the comic-book trenches, you'll probably see more comics-related posts from me than from Pete.
Geoff
Hey Mark -- I too am glad you liked Geoff's post. We've both litigated in the comic book trenches but Geoff is the real expert in these areas. Come back to the Anchor Plate anytime you like.
(And yes, I am related to the Salsichs of Boulder, CO - they are my cousins. I lived and practiced in Santa Fe and Denver back in the late '90's and spent a lot of time with them during those years, and we still stay in touch).
I consider the notion that this is likely to be harmful to her career ridiculous in the extreme.
I think that, if they're smart, they deliberately did this just to get attention for her, since NOW and as a direct result, a lot more people whose response to "Olivia Munn" would be "Who?" are notably more likely to actually know who she is in 3-4 months.
That's not the same thing as the right of publicity, but it sure as hell engenders the purpose behind it in the first place.
IP law is, on the whole, totally insane, and pays little to no intention of larger societal interests but is defined all too often by who has the biggest PoS attorneys. Current company not necessarily included in that description.
I am glad not to be necessarily included in a disrespected group of attorneys. I'm also pleased to be reminded how passionately people feel about IP law. We certainly encourage open, courteous dialogue here. IP law is complicated and often unsatisfying because it is difficult to balance the tension inherent in Article I, Section 8, Clause 8 of the U.S. Constitution that empowers congress to establish laws protecting intellectual property.
My partner and I spend much of our time dealing with this. We represent both content creators and content users, who are often creators in their own right. Without ways to protect IP, it would be much harder for artists to earn a living from their work. However, limitations on using IP can often stifle creativity. It is a difficult balance.
Right of publicity is a terribly complicated area of IP law and is inconsistent from state to state. The U.S. Supreme Court has been presented with opportunities to clarify the law several times and declined. One of the creators we represent was preparing a second petition to The Supreme Court for writ of certiorari in a Right of publicity case when his insurance companies settled the case over his objection, depriving him of the opportunity to see if the Court would vindicate his First Amendment position. Very frustrating. I look forward to case when they provide some guidance to creators.
With this particular incident, it is almost impossible to say whether the law would allow the particular comic at issue without seeing the comic. That is why all successful artists, publishers, distributors, and - yes - celebrities need good consulting relationships with counsel in this area because the pitfalls can have devestating effects. We often consult with creators during the creative process when they are pushing boundaries. Early advice can avoid a lot of wasted effort.
I stumbled upon this article while preparing my 1L Property outline. I appreciate that you've highlighted some of the various tests actually used to determine an infringement of RofP in various jurisdictions. "Actual Malice?" Yikes! I'd hate to represent a plaintiff in that jurisdiction.
It's rare that a blog manages to incorporate so many things that I love at once: Comic books, Olivia Munn, and IP. I'll definitely have to read more of your posts when I get some free time.
@Geoff Gerber: Doesn't Zacchini v. Scripps-Howard Broadcasting, Co. address, at least in one particular instance, the RofP and 1st Amendment rights? My casebook indicates that it is the only SCOTUS case on the subject.
Zacchini v. Scripps-Howard Broadcasting is an interesting case The only case in which the U.S. Supreme Court has directly addressed the right of publicity). Unfortunately, most of us who deal with RoP issues find it provides too little guidance. It is often viewed as more of a common-law copyright case than RoP. But, that is not really accurate either. It does stand for the proposition that the First Amendment does not prohibit a right of publicity claim when, even for a newsworthy reason, the defendant uses your entire performance.
Zacchini does not explain the circumstances under which the First Amendment does prohibit a RoP claim. That has been done, and done differently, in a number of cases as discussed in my post.
Geoff, heard you on the Podgecast (very enjoyable, good to hear someone speak knowledgeably about IP on a geek podcast; its pretty rare) and am checking out the blog as a result.
Haven't seen the Munn comic, obviously, but I'm under the impression that unless they've turned her into a half-worm it'd probably fail the transformative test. See Winter v. DC Comics (2003) 30 Cal.4th 881, 889 (“an artist depicting a celebrity must contribute something more than a merely trivial variation [but must create] something recognizably his own in order to qualify for legal protection" and quoting Comedy III, "'a literal depiction of a celebrity, even if accomplished with great skill, may still be subject to a right of publicity challenge.'").
Jokes aside, the friction between RoP, copyright, and the 1st amend is interesting as hell to me, and it was a nice surprise to hear about it on the podge.
Thanks for the compliment.
It is still very unclear how much transformation is required to satisfy the Transformative Use test. On one hand, you can't get away with near duplication of a photograph on a T-shirt as in Comedy III. On the other hand, it is OK to write graphic literature in which you change the name from Winter to Summer, make the musicians half-worm creatures, and set them in a fantastical Old West environment where they interact with other fantastical characters. That is a pretty wide space in between.
In the copyright context, parody is almost per se transformative. That type of "transformative" is not necessarily the same type of "transformative" that right of publicity courts will consider. In a right of publicity context, parody is not necessarily transformative, but it could be.