• Premack Rogers

GENERAL PATTON’S FINAL BATTLE: PUBLICITY RIGHTS OF DEPARTED CELEBRITIES IN VIDEO GAMES

By Dan Rogers, Senior Partner at Premack Rogers P.C.


Video game developers can’t do anything without getting sued these days—even when the opposing party is dead.


In the latest video game right of publicity lawsuit, CMG Worldwide Inc. has filed a complaint against California based Maximum Games LLC, on behalf of General George Patton’s estate. [1] Maximum’s History, Legends of War: Patton is a turn-based game featuring the legendary World War II commander of the American Third and Seventh Armies. Interestingly, Patton has been dead for sixty-nine years, one year shy of California’s seventy-year statutory limit for right of publicity lawsuits. [2]

So how is it that someone can sue nearly seven decades after death?


Reconnoitering the Legal Battlefield

The right of publicity is the prerogative of an individual—or a post-mortem rights-holder—to control and profit from the commercial value of personal identity. It originates from the rights of privacy afforded under the United States Constitution, but surprisingly, there is no federal right per se. [3]  [4] Rather, forty states recognize either a statutory or common law right of publicity, and fourteen extend its reach beyond a person’s death. [5] As a result, California’s right of publicity laws are different from New York, etc., which means that a lawsuit’s outcome is highly dependent on the state law used. [6]

Viewing this legal landscape from a hilltop vantage, the right of publicity allows a person to control the use of their name, likeness, and other distinguishing features, whether in products or services or the advertisements that promote them. [7] And video games are no exception. Over the years, movie stars, rock singers and bands, television personalities, professional and amateur athletes, gangsters, and even the former Panamanian dictator Manuel Noriega have sued video game companies, claiming a right of publicity. [8]


Most would agree that incorporating a well-known actor’s image into a video game without express permission is risky, if not downright reckless, but a right of publicity claim can be brought for something less obvious. For example, using “Here’s Johnny”, a catch-phrase associated with the former late night television host Johnny Carson, for a portapotty business has resulted in a right of publicity suit. [9] Employing a sound-alike singer to impersonate Bette Midler in a television commercial has proved equally perilous. [10] And including the images and attributes of college and professional athletes in a series of video games was a fatal mistake. [11]


Battlefield Damages

Losing a right of publicity lawsuit can be expensive. California, as an example, allows for statutory and punitive damages, attorney fees, and a simultaneous award for a common law right of publicity infringement. [12] Damages in some jurisdictions may also consider peace, happiness, feelings, professional standing, and future publicity value. [13] As a result, a court award can be substantial:

  • Former television game show personality Vanna White was awarded $403,000 after Samsung depicted her as a robot in their VCR television advertisements. [14] 

  • Singer Bette Midler received $400,000 after a sound-alike performed one of her hits in a Ford commercial. [15]

  • Singer-songwriter Tom Waits was awarded $2,500,000 after Frito Lay imitated his distinctive voice for a Doritos commercial. [16] 

Flanking with the Lanham Act

If navigating the laws of fifty states isn’t complex enough, consider that a claim for false endorsement and misappropriation under Section 43(a) of the Lanham Act provides similar relief. [19] Under the Lanham Act, a person’s public image is considered in much the same light as a trademark, protecting notoriety and fame as one might protect McDonald’s Golden Arches or the Coca Cola logo. [20]


Assessing the Combatants

In the conflict between CMG and Maximum, CMG is the heavyweight, representing numerous celebrities and estates, including the late James Dean, Marilyn Monroe; Marlon Brando, Chuck Berry, Amelia Earhart, and, of course, General George Patton. CMG provides marketing and legal representation, and they have a long history of enforcing their clients’ legal rights. [21]

In opposition is five-year old Maximum Games, a privately held video game publisher located in San Francisco and founded by game veterans Christina Seelye and Len Ciciretto. Maximum’s games include a number of reasonably successful PC, console, and handheld titles.


Patton's Initial Salvo

On November 19, 2014, CMG filed suit against Maximum, alleging false endorsement under the Lanham Act, 15 U.S.C. § 1125(a); California’s right of publicity statute, Cal. Civ. Code § 3344.1; and California’s common law right of publicity, Cal. Bus. & Prof. Code § 17200.

In its complaint, CMG alleged that Maximum’s conduct had damaged the licensing value to CMG of General Patton; interfered with their ability to license him for use in other video games; and damaged their ability to enforce his right of publicity against third parties. [22]

Let’s examine each issue in turn.


1. The Lanham Front

CMG argues that Patton’s name and image in Maximum’s video games and related advertisements deceives consumers and causes them to believe that General Patton is affiliated with and approves of these products, constituting false endorsement and unfair competition under the Lanham Act, 15 U.S.C. § 1125(a). [23]

There is no argument that the Lanham Act is a proper legal vehicle for asserting a claim of false endorsement, but less clear is whether CMG has a supportable claim, given that video games are expressive works and entitled to a greater degree of First Amendment protection. [24] The following illustration is helpful.


The Gridiron Battle

In 2009, legendary Cleveland Browns football player Jim Brown sued Electronic Arts and Sony, claiming they had violated the Lanham Act by including his image and stats in EA’s Madden Football series. [25] EA had licensed current NFL players through the NFL Players Association, but as an NLF retiree, Brown was not included.

Brown argued that EA’s use of his image had caused confusion as to whether he had endorsed EA’S games. But in 2013, the Ninth Circuit Court of Appeals ruled that EA was not in violation of the Lanham Act. Rather, Brown’s inclusion in EA’s games was artistically relevant. [26]


Artistic Relevance Greater than Zero

How artistically relevant must a person’s likeness or name be to avoid a Lanham Act violation? According to the Ninth Circuit Court of Appeals in Brown, to violate the Lanham Act there must be no artistic relevance to the underlying work whatsoever, or in the event there is, the use must be explicitly misleading. [27]


Maximum's Nearly Identical Argument

CMG echoes Brown’s argument with regard to the Lanham Act, alleging that Maximum’s use of General Patton is causing consumer confusion as to any involvement and endorsement. But is Maximum’s use explicitly misleading? And how artistically relevant is General George Patton to a World War II game? Many would conclude that Patton is to World War II and tank warfare what Napoleon was to the battle at Waterloo.


Patton's Name on the Box

The most significant difference between Maximum’s use of Patton and EA’s use of Brown is that Patton’s name appears prominently on Maximum’s packaging. But this isn’t altogether different from using a celebrity’s name in the title of a film or book. And one needs only to look at a lawsuit brought by singer-actress Ginger Rogers to see how the court may view such use.


Dancing with the Stars

In Rogers v. Grimaldi, film and dance star Ginger Rogers sued a filmmaker after a movie entitled “Ginger and Fred” was released. The 1986 film chronicled two fictional cabaret performers who imitated the famous dance duo Ginger Rogers and Fred Astaire, and Rogers argued that the use of her name in the movie title violated Section 43(a) of the Lanham by creating a false impression that she was involved in its production.

The court disagreed, explaining that the expressive elements of book and movie titles are afforded more protection under the Lanham Act. [28] Naming the film “Ginger and Fred” was not misleading because it was artistically relevant and did not indicate that Rogers had endorsed or helped produce it. [29]


Dancing with Tanks

Maximum titled their game History, Legends of War: Patton, but how reasonable is it to believe that someone who has been dead for nearly seventy years has somehow endorsed it? Bill O’Reilly recently published a historical and detailed account of Patton’s life in a book titled Killing Patton, which CMG offered in its complaint as evidence of damages. And in 1970, a biographical film titled “Patton” won seven Academy Awards. How are these entertainment works any less confusing as to General Patton’s endorsement and involvement?


3. The Unfair Competition Front

California Business & Professions Code § 17200 broadly defines unfair competition as "any unlawful, unfair or fraudulent business act or practice and unfair, deceptive, untrue or misleading advertising. [30] It also bars dissemination of any statement regarding the sale of property "which is untrue or misleading, and which is known, or which by the exercise of reasonable care should be known, to be untrue or misleading.” [31]

CMG alleges that Maximum is in violation of California’s unfair competition laws by exploiting General Patton’s name, image, and likeness without CMG’s consent. But to prevail, CMG must show that members of the public are likely to be deceived, and the court will consider CMG’s Lanham Act claim in its evaluation. [32] [33] In other words, if CMG wins on the Lanham Act front, then they are likely to win on the § 17200 front as well. But lose the Lanham Act argument—which is a possibility—and CMG could very well lose their California unfair competition argument, too.


3. The Statutory Rights of Publicity Front

Finally, CMG alleges that Maximum is in violation of the California statutory right of publicity under California Civil Code § 3344. To prevail, CMG must show that there was a knowing use of Patton’s identity, that the use was for advertising, product, or merchandising purposes; and that there is a direct connection between the use and the commercial purpose. [34]

Considering these factors, CMG appears to hold a clear battlefield advantage. Maximum used Patton’s name on their packaging, in advertising, and inside the game. His likeness is employed in the navigational elements. Maximum did so for a commercial purpose and without CMG’s consent. They profited from this use, while General Patton’s estate did not. Unless Maximum can counter with a solid defense, they could very well lose on the statutory front.


Counter-Offensive via the First Amendment

How is it that filmmakers and writers can use the name or likeness of famous people in their movies and books without permission and without violating the law? The answer is that the First Amendment provides immunity for entertainment works, provided that there is a sufficient level of artistic relevance, and provided the use was not simply to exploit the underlying publicity value of an individual. [35] The following illustrations are helpful to understand this principle:

In Joplin Enterprises v. Allen, a California District Court held that a two-act biographical stage play about the deceased blues and rock vocalist Janis Joplin was not actionable under California Civil Code § 990 (the predecessor to § 3344.1) because plays, books, and musical compositions are exempt from liability under California’s right of publicity law with regard to the deceased. [36] [37]

Similarly, in Parks v. LaFace Records, civil rights activist Rosa Parks objected to the use of her name in a rap song. Holding against Parks, the United States District Court determined that because her name was not wholly unrelated to the defendant’s song, and because the song itself was an expressive work, a common law right of publicity did not exist. [38] The Parks court further explained that a right of publicity does not mean that a prominent person has the right to financially exploit every public use of their name or picture. [39]

And in Romantics v. Activision, the 80s rock band sued Activision’s for a right of publicity involving Guitar Hero Encore, in which players could play along with the song What I like About You. Players were also presented a message “as made famous by the Romantics”. Yet despite this use, the court held that the First Amendment protected Activision’s use. [40]


CMG's Response

It’s likely that CMG has considered the above cases. And they could argue that the Romanics and Parks lawsuits are inapplicable because they apply Michigan’s right of publicity law, rather than California’s pro-celebrity statute. Joplin, they could argue, concerns a stage play not a video game.

More likely is that CMG will rely on the recent California decision in Keller v. Electronic Arts, which appears highly favorable to those bringing a right of publicity suit. Keller, in fact, demonstrates that a right of publicity can trump a First Amendment right when applied to video games.


Understanding Keller v. EA

In May 2009, the former quarterback for Arizona State University and the University of Nebraska, Sam Keller, filed a lawsuit against Electronic Arts, the National Collegiate Athletics Association (NCAA), and the Collegiate Licensing Company (CLC), claiming that the use of his likeness, stats, jersey number, and position in Electronic Arts’ NCAA Football violated, among other things, his right of publicity. Keller asserted that EA profited from his persona and from virtually every Division I football and basketball player that it used in their NCAA games.

In its defense, EA argued that their use of Keller’s image and stats was protected under the First Amendment because (1) football is a matter of public interest and public affairs; and (2) their use was transformative. [41]


EA's Public Interest and Public Affairs Defenses

EA argued that their inclusion of statistics and player information in NCAA Football entitled them to immunity because the dissemination of sports information was a matter of public interest. [42] The Keller court recognized that the recitation and discussion of facts regarding athletes was of public interest, but nevertheless concluded that NCAA Football was not a publication of facts about college football, nor was it a reference source. It was simply a game. [43]

Regarding its public affairs argument, EA contended there should be no liability because their use of Keller’s information was similar to using a person’s name, voice, signature, photograph, or likeness in connection with news and sports broadcasts. But the court, rather pointedly, again ruled against EA, concluding that NCAA Football wasn’t reporting on collegiate football by using Keller’s image as an avatar in their game. [44]


EA's Transformative Defense

EA’s also argued that their use of Keller was transformative, meaning that their use of Sam Keller and other in-game athletes was more than simply duplicating their likenesses. Because video game players are able to manipulate Keller’s in-game attributes, EA believed this amounted to transformation under the law. But the court disagreed, citing other cases to clarify its decision. [45]

In Winter v. DC Comics, for example, the iconic rock and roll musician brothers Johnny and Edgar Winter sued DC Comics, alleging that DC Comics had misappropriated their names and personas after two characters appeared in a five-volume comic book series titled Jonah Hex. The characters in question were giant worm-like singing cowboys named the “Autumn Brothers”, who, like the Winter brothers, were albinos and drawn with similar long white hair and comparable clothing. [46]

Here, the court concluded that the fictional characters Johnny and Edgar Autumn were more than evocations of Johnny and Edgar Winter; that the Winter Brothers were merely part of the raw materials from which the comic books were synthesized. DC Comic’s use in this case was transformative. [47]

Comparatively, EA represented Sam Keller as a starting college football quarterback in their NCAA Football games, which was identical to where the public had found him during his college career. [48]


Maximum Defenses

Just as Sam Keller appeared in EA’s games “as is”, so too does General Patton appear in Maximum’s games as the famed World War II general that he was. But Maximum is not without other defenses.

First, the use of Patton’s 2D image in Maximum’s game is not similar to the use of Keller’s 3D likeness in EA’s NCAA Football. General Patton isn’t an avatar that can be manipulated or directed on screen. Rather, he’s is a two-dimensional figure displayed in a cartoonish, non-animated style within the game’s menu system. The Patton gameplay is viewed top down and isometrically, and players manipulate soldiers and military equipment not the General himself. [49]

Second, unlike Keller, Patton communicates newsworthy information that is still a matter of public interest.

In Comedy v. Gary Saderup, Inc., artist Gary Saderup produced and sold a charcoal drawing of the Three Stooges in lithograph prints and T-shirts. [50] The registered owner of the Three Stooges intellectual property rights, Comedy III, sued Saderup under California’s right of publicity § 990. Although the court found that Saderup’s use was not transformative, it was mindful that to preserve an uninhibited marketplace of ideas, there must be robust and wide-open debate on public issues. [51]

Specifically, the Saderup court cautioned that,

“Because celebrities take on public meaning, the appropriation of their likenesses may have important uses in uninhibited debate on public issues, particularly debates about culture and values. And because celebrities take on personal meanings to many individuals in the society, the creative appropriation of celebrity images can be an important avenue of individual expression” [52]

Whether proffered in a film, book, or video game, General George Patton is a central figure in World War II, and in light of Comedy III, his inclusion in an expressive work on this topic may not only appropriate but also arguably necessary.

Third, Sam Keller is alive and George Patton is dead.


Dead Right

California’s statutory law provides a safe-harbor for audiovisual works in which the subject is deceased. Sections 3344.1(a)(1) and 3344.1(a)(2) of California Civil Code specify that “a play, book, magazine, newspaper, musical composition, audiovisual work … shall not be considered a product, article of merchandise, good, or service if it is fictional or nonfictional entertainment, or a dramatic, literary, or musical work.” [53] In other words, California’s right of publicity statue doesn’t apply to certain expressive works, which could reasonably include video games.

In other legal contexts, the question as to whether video games are in the same category as films and books is established law. In Brown v. Entertainment Merchant’s Association, the Supreme Court stated, “Like the protected books, plays, and movies that preceded them, video games communicate ideas—and even social messages….” [54] In other words, from the Supreme Court’s perspective, video games are protected works that communicate ideas and even social messages.

And whether video games are audiovisual works contemplated under § 3344.1 is answered sufficiently in Astaire v. Best Film & Video Corp, where, in 1998, the Ninth Circuit determined that videotapes were subject to § 990 (the predecessor to the § 3344.1 post-mortem right of publicity) despite not being mentioned specifically in the statute. [55] And given that video games and the term audiovisual works are used interchangeably under copyright law, it would be surprising if a court held otherwise with regard to § 3344.1. [56]


4. Battle Wounds

CMG has a legitimate right to protect and manage its clients’ property, including enforcing the right of publicity. In fact, celebrities, politicians, athletes, artists, musicians, and you and I have the right to profit from our recognition. [57]  On the other hand, video game developers and publishers have an opposing right to exercise their First Amendment rights, including the lawful use of famed individuals in their games.

CMG should consider that General Patton isn’t being used in Maximum’s game out of context. For example, Patton isn’t pitching cavalry-styled bloomers, three-star helmets, or Seventh Army belt buckles. Rather, he provides a historically realistic context to Maximum’s game, which isn’t too different from a film documentary. Furthermore, General Patton’s right of publicity in California expires in less than a year, and one would hope that this suit isn’t a last chance to cash-in on the General’s fame. [58]

At the same time, Maximum (and all game developers and publishers for that matter) should recognize that you can’t reach into the world history bag and pull from it whatever looks interesting. Individuals—even those who have died—possess property rights in their fame and recognition. And in California, that right of publicity extends seventy years after death.

If video game publishers and developers can learn anything from this conflict, it’s that the laws encompassing the use of in-game assets—including art, music, animation, video, photography programming code, characters, and architecture, just to name a few—is one of the most complex and troublesome areas of video game law. Failing to thoroughly vet all in-game assets prior to publication is a fool’s errand, including the use of historically noteworthy individuals, regardless of whether they are alive or dead.


[End]


Dan Rogers is licensed to practice law in the state of California, including the Eastern Federal District Court. He has advised and negotiated with interactive game publishers, developers, and technology companies around the world on matters of video game licensing, intellectual property, software development, and contractual law.


Disclaimer

This article is provided for informational purposes only and not for the purpose of providing legal advice. You should contact your attorney to obtain advice with respect to any particular issue or problem.


Citations

[1] CMG Worldwide Inc. v. Maximum Family Games, LLC et al, Case No. 3:14-cv-05124, N.D. Cal. (San Francisco), filed November 19, 2014.

[2] George Patton died in an automobile accident on December 21, 1945. As provided in California Civil Code § 3344 (g) “An action shall not be brought under this section by reason of any use of a deceased personality's name, voice, signature, photograph, or likeness occurring after the expiration of 70 years after the death of the deceased personality”.

[3] The right of publicity and its predecessor right to personal privacy, harken the United States Constitution’s protections against various forms of intrusion, including the Fifth Amendment (protecting against self-incrimination and creating protective zones of privacy from the government); the Fourth Amendment (guaranteeing the right of people to be secure in their persons, houses, papers, and effects against unreasonable search and seizure); and the Third Amendment (limiting the quartering of soldiers in private homes to times of war and only in the interest of national security). For further reading see Law and Business of the Entertainment Industries, Fifth Edition, Donald E. Biederman, pg. 210. Also see http://www.examiner.com/article/the-short-history-of-the-right-to-privacy for an excellent history of the Right of Privacy in the United States. See also Griswold v. Connecticut, 381 U.S. 479.

[4] While there is no federal right of publicity statute, § 43(a) of the Lanham Act is often used on conjunction with a right of publicity claim to seek redress.

[5] Quantifying the number of states supporting a right of publicity requires the examination of statutory and common law involving tort claims that do not necessarily name a right of publicity—thus there is some level of disagreement as to the specific number of supporting states. According to rightofpublicity.com, thirty-seven states recognize the right of publicity, either through statue or common law. Also see Jonathan D. Reichman, Kenyon & Kenyon LLP, Getting Through the Deal In 21 Jurisdictions Worldwide 2014. See also Summary of Rights of Publicity Issues, Kelli L. Sager, Davis Wright Tremaine LLP, 2012.

[6] See McCarthy on Publicity and Privacy, § 1:4.

[7] California’s right of publicity law, as an example, protects a person’s name, voice, signature, photograph, or likeness. California Civil Code § 3344 (a). In contrast, Indiana law also protects a person’s gestures and mannerisms. Indiana Code Title 32, Section 36-1.

[8] Numerous right of publicity lawsuits have involved video game companies, including the following:2015 (Decided). Davis v. Elec. Arts, Inc., 2015 U.S. App. LEXIS 154 (9th Cir. Cal. Jan. 6, 2015) – Retired NFL players Michael E. Davis, Vince Ferragamo, and Billy Joe Dupree sue EA for unauthorized use of their likenesses in Madden Football.2014. Lindsey Lohan v. Take Two Interactive and Rockstar Games. Actress Lindsay Lohan filed a complaint claiming that GTA V included a character, Lacey Jones, infringed her right of publicity. See http://www.businessinsider.com/lindsay-lohans-grand-theft-auto-lawsuit-evidence-2014-10.2014. Noriega v. Activision. Deposed Panamanian dictator Manuel Noriega sued Activision for use of his likeness in Call of Duty: Black Ops II. See http://www.washingtonpost.com/news/volokh-conspiracy/wp/2014/07/17/can-manuel-noriega-really-win-his-right-of-publicity-lawsuit-against-activision.2014 (Decided). O'Bannon v. NCAA, 7 F. Supp. 3d 955, 2014 U.S. Dist. LEXIS 110036, 2014-2 Trade Cas. (CCH) P78,865, 2014 WL 3899815 (N.D. Cal. 2014) – In a class-action suit naming Electronic Arts as a defendant, current and former FBS football or Division I men's basketball team members sue for right of publicity in EA’s games.2013 (Decided). Hart v. Elec. Arts, Inc., 717 F.3d 141, 2013 U.S. App. LEXIS 10171, 41 Media L. Rep. 1985, 107 U.S.P.Q.2D (BNA) 1001, 2013 WL 2161317 (3d Cir. N.J. 2013) – Collegiate football player sued EA for the use of his likeness in EA’s NCAA Football series. The court held that EA’s games were not sufficiently transformative to provide them a First Amendment defense. 2013 (Decided). Keller v. Elec. Arts Inc. (In re NCAA Student-Athlete Name & Likeness Licensing Litig.), 724 F.3d 1268, 2013 U.S. App. LEXIS 15649, 107 U.S.P.Q.2D (BNA) 1629, 2013 WL 3928293 (9th Cir. Cal. 2013) – Similar to the plaintiff in Hart v. Electronic Arts, Sam Keller sued EA for the use of his likeness in EA’s college football game series. The California 9th Circuit ruled against EA, citing that under the transformative use test, use of the player's likeness did not qualify for First Amendment protection because EA “literally recreated the player in the very setting in which he achieved renown.”2013 (Decided). Brown v. Elec. Arts, Inc., 724 F.3d 1235, 2013 U.S. App. LEXIS 15647, 107 U.S.P.Q.2D (BNA) 1688, 41 Media L. Rep. 2276, 2013 WL 3927736 (9th Cir. Cal. 2013) – former NFL Hall of Fame player sued EA for use of his likeness and stats in Madden Football.2012. Michael Washington v. Take Two – A professional model and singer filed a complaint against Take Two alleging that they had misappropriated his likeness and identity for the character CJ in GTA: San Andreas. See http://www.bit-tech.net/news/gaming/2012/11/05/rockstar-fights-off-cyrpus-hill-singer-laws/1. 2011 (Decided). No Doubt v. Activision Publishing, Inc., 192 Cal. App. 4th 1018, 122 Cal. Rptr. 3d 397, 2011 Cal. App. LEXIS 174, 98 U.S.P.Q.2D (BNA) 1728 (Cal. App. 2d Dist. 2011) – Widely recognized band sued Activision for right of publicity claims, alleging that that Activision exceeded the scope of the licensed use of their computer-generated images in Band Hero, allowing players to direct the No Doubt avatars to perform songs other than the licensed No Doubt songs.2008 (Decided). Romantics v. Activision Publ'g, Inc., 574 F. Supp. 2d 758, 2008 U.S. Dist. LEXIS 63281, 88 U.S.P.Q.2D (BNA) 1243, 36 Media L. Rep. 2345 ( E.D. Mich. 2008) – 80s rock band the Romantics sued Activision claiming that their right of publicity was infringed when Guitar Hero game lawfully included a song by the Romantics in which players could play along.2006 (Decided). Kirby v. Sega of America, Inc., 144 Cal. App. 4th 47, 50 Cal. Rptr. 3d 607, 2006 Cal. App. LEXIS 1672, 35 Media L. Rep. 1075, 81 U.S.P.Q.2D (BNA) 1172, 2006 Cal. Daily Op. Service 9978, 2006 Daily Journal DAR 14190 (Cal. App. 2d Dist. 2006) - Keirin Kirby, known as Lady Miss Kier and for her hit song “Groove is in the Heart” sued Sega for its Japanese video game Space Channel 5, alleging that a character in Sega’s game was in violation of Kirby’s right of publicity.1997 (Decided). Ahn v. Midway Mfg. Co., 965 F. Supp. 1134, 1997 U.S. Dist. LEXIS 7773, 43 U.S.P.Q.2D (BNA) 1773, Copy. L. Rep. (CCH) P27,680 (N.D. Ill. 1997) – Black belt Tae Kwon Do athletes sue Midway claiming that their motion-captured images in Mortal Kombat exceeded the scope of the licenses granted EA, in violation of their right of publicity.


[9] Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 1983 U.S. App. LEXIS 30866, 218 U.S.P.Q. (BNA) 1, 9 Media L. Rep. 1153 (6th Cir. Mich. 1983).

[10] Midler v. Ford Motor Co., 849 F.2d 460, 1988 U.S. App. LEXIS 8424, 7 U.S.P.Q.2D (BNA) 1398, Copy. L. Rep. (CCH) P26,313, 15 Media L. Rep. 1620 (9th Cir. Cal. 1988)

[11] Hart v. Elec. Arts, Inc., 717 F.3d 141, 2013 U.S. App. LEXIS 10171, 41 Media L. Rep. 1985, 107 U.S.P.Q.2D (BNA) 1001, 2013 WL 2161317 (3d Cir. N.J. 2013) and Keller v. Elec. Arts Inc., 724 F.3d 1268, 2013 U.S. App. LEXIS 15649, 107 U.S.P.Q.2D (BNA) 1629, 2013 WL 3928293 (9th Cir. Cal. 2013). See also http://www.cbssports.com/collegefootball/writer/dennis-dodd/23859858/ea-sports-settles-likeness-suits-thousands-of-current-former-players-eligible-for-money.

[12] Punitive damages are court awarded fees not based on actual damages and granted where oppression, fraud, or malice are found. Damages under Cal. Civ. Code § 3444(a) provides that “In any action brought under this section, the person who violated the section shall be liable to the injured party or parties in an amount equal to the greater of seven hundred fifty dollars ($750) or the actual damages suffered by him or her as a result of the unauthorized use, and any profits from the unauthorized use that are attributable to the use and are not taken into account in computing the actual damages. In establishing such profits, the injured party or parties are required to prove his or her deductible expenses. Punitive damages may also be awarded to the injured party or parties. The prevailing party in any action under this section shall also be entitled to attorney's fees and costs.”

[13] Waits v. Frito-Lay, 978 F.2d 1093, 1102-03 (9th Cir. 1992).

[14] White v. Samsung Electronics Am., 971 F.2d 1395, 1992 U.S. App. LEXIS 17205, 23 U.S.P.Q.2D (BNA) 1583, 20 Media L. Rep. 1457, 92 Cal. Daily Op. Service 6578, 92 Daily Journal DAR 10519 (9th Cir. Cal. 1992). Vanna White brought her original action under California’s right of privacy statute (Cal. Civ Code § 3344), California’s common law right of publicity, and the Lanham Act, 15 U.S.C. § 1125(a). Her statutory claim was dismissed, but the suit proceeded on the common law and Lanham Act claims. 971 F.2d 1395 (9th Cir. 1992). Also note that this case was brought under the Lanham Act not California’s Right of Publicity laws.

[15] Midler v. Ford Motor Co., 849 F.2d 460, 1988 U.S. App. LEXIS 8424, Copy. L. Rep. (CCH) P26, 313, 15 Media L. Rep. 1620, 7 U.S.P.Q.2D (BNA) 1398 (9th Cir. Cal. 1988). Ford Motor Company’s advertising agency, Young & Rubicam, used a sound-alike singer to record Midler’s ''Do You Want to Dance,'' for background music to a series of Lincoln Mercury commercials. See http://www.nytimes.com/1989/10/31/business/y-r-ordered-to-pay-midler.html.

[16] Waits v. Frito-Lay, supra, 978 F.2d 1093.

[17] See http://lawblog.usfca.edu/internetjustice/2011/post-mortem-rights-of-publicity/. As of 2014, fourteen states holding post-mortem right of publicity statues including California, Florida, Kentucky, Nebraska, Nevada, Oklahoma, Tennessee, Texas, and Virginia and Massachusetts (The Massachusetts Senate bill passed a post-mortem right of publicity in 2014. See http://radioboston.wbur.org/2014/06/13/dead-right-publicity.) Furthermore, Illinois, New York, Ohio, and Pennsylvania all preclude the post-mortem right of publicity as a matter of law. New York and Wisconsin statues do not provide a post-mortem right of publicity.

[18] In 1987, the Tennessee Appellate Court held that Elvis Presley’s right of publicity was descendible. State Ex. Rel. Elvis Presley Intl. Memorial Foundation v. Crowell, 733 S.W.2d 89 (1987). See also http://rightofpublicity.com/brief-history-of-rop and https://www.graphicartistsguild.org/tools_resources/beware-the-right-of-publicity.

[19] “Why a Federal Right of Publicity Statute Is Necessary,” Kevin L. Vick and Jean-Paul Jassy, Communications Lawyer, Volume 28, Number 2, August 2011.

[20] Section 43(a) of the Lanham Act provides for civil remedies for anyone damaged by the use of any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact. 15 U.S. Code § 1125. See also http://digitalcommons.wcl.american.edu/cgi/viewcontent.cgi?article=1002&context=ipbrief.

[21] CMG’s right of publicity lawsuits have included American Football coach Vince Lombari (Nike, Inc. v. Lombardi, 732 F. Supp. 2d 1146), famed musician Duke Ellington (Ellington v. Harbrew Imports Ltd., 812 F. Supp. 2d 186), Bette Davis (Estate of Davis v. Erickson Beamon, Ltd., 2013 U.S. Dist. LEXIS 171477), actor Lee Strasberg (Dluhos v. Strasberg, 2005 U.S. Dist. LEXIS 34383), Marilyn Monroe (Milton H. Greene Archives, Inc. v. CMG Worldwide, Inc., 2008 U.S. Dist. LEXIS 71690), and others.

[22] See CMG v. Maximum Complaint, filed in the United States District Court Northern District of California.

[23] CMG’s complaint states that “Maximum’s use of General Patton’s name, image and likeness in connection with advertising and selling the Infringing Video game was and is intended to deceive consumers and to cause consumer confusion and mistake as to the affiliation, connection, or association of General Patton and/or his assignees with the Infringing Video game, and as to the origin, sponsorship, or approval of the Infringing Video game by General Patton and/or his assignees.”

[24] Brown v. Entm't Merchs. Ass'n, 131 S. Ct. 2729, 180 L. Ed. 2d 708, 2011 U.S. LEXIS 4802, 79 U.S.L.W. 4658, 22 Fla. L. Weekly Fed. S 1259 (U.S. 2011). In Brown, the Supreme Court held that the protected books, plays, and movies that preceded video games, video games ideas and even social messages through the employment of characters, dialogue, plot, and music. Because of these similarities, video games are entitled to the same First Amendment protection as these other expressive mediums.

[25] Brown v. Elec. Arts, Inc., 724 F.3d 1235, 2013 U.S. App. LEXIS 15647, 107 U.S.P.Q.2D (BNA) 1688, 41 Media L. Rep. 2276, 2013 WL 3927736 (9th Cir. Cal. 2013).

[26] Id. at 1240.

[27] Id. at 1688.

[28] Rogers v. Grimaldi, 875 F.2d 994, 998, 1989 U.S. App. LEXIS 6443, 9, 10 U.S.P.Q.2D (BNA) 1825, 16 Media L. Rep. 1648 (2d Cir. N.Y. 1989).

[29] Ibid.

[30] Cairns v. Franklin Mint Co., 24 F. Supp. 2d 1013, 1037, 1998 U.S. Dist. LEXIS 17359, 57, 49 U.S.P.Q.2D (BNA) 1396, 1998-1 Trade Cas. (CCH) P72,387 (C.D. Cal. 1998).

[31] Cairns v. Franklin Mint Co., supra, 24 F. Supp. 2d 1013, 1037.

[32] Ibid.

[33] “Unfair competition claims made pursuant to Cal. Bus. & Prof. Code § 17200 are substantially congruent to claims made under the Lanham Act.” Sega Enters. v. MAPHIA, 948 F. Supp. 923, 1996 U.S. Dist. LEXIS 20385, 41 U.S.P.Q.2D (BNA) 1705, Copy. L. Rep. (CCH) P27, 605 (N.D. Cal. 1996), citing Cleary v. News Corp., 30 F.3d 1255, 1262-63 (9th Cir. 1994).

[34] The elements of California’s right of publicity statute have been summarized for readability. California Civil Code § 3344.1 provides that: (a) Any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person's prior consent, or, in the case of a minor, the prior consent of his parent or legal guardian, shall be liable for any damages sustained by the person or persons injured as a result thereof. In addition, in any action brought under this section, the person who violated the section shall be liable to the injured party or parties in an amount equal to the greater of seven hundred fifty dollars ($750) or the actual damages suffered by him or her as a result of the unauthorized use, and any profits from the unauthorized use that are attributable to the use and are not taken into account in computing the actual damages. In establishing such profits, the injured party or parties are required to present proof only of the gross revenue attributable to such use, and the person who violated this section is required to prove his or her deductible expenses. Punitive damages may also be awarded to the injured party or parties. The prevailing party in any action under this section shall also be entitled to attorney's fees and costs.

See also http://www.dmlp.org/legal-guide/california-right-publicity-law, citing Newcombe v. Adolf Coors Co., 157 F.3d 686, 692 (9th Cir. 1998).

[35] The elements of law have been simplified for understandability. For a detailed discussion, see J. Thomas McCarthy, 2 Rights of Publicity and Privacy § 8:72 (2d ed. 2000).

[36] The California legislature enacted Civil Code § 990 in 1984, in which it created post-mortem right of publicity for deceased personalities. In 1999, the legislature renumbered § 990 as § 3344.1 and extended the duration of the post-mortem right of publicity from fifty to seventy years. See http://www.lexology.com/library/detail.aspx?g=4b6425b0-e86f-4445-96a5-19be1ea37265.

[37] Joplin Enterprises v. Allen, 795 F. Supp. 349 (W.D. Wash. 1992). Prior to 1984, neither California’s common or statutory law provided for a descendible right of publicity. See http://www.chapmanlawreview.com/archives/1403.

[38] Parks v. Laface Records, 76 F. Supp. 2d 775, 779, 1999 U.S. Dist. LEXIS 18097, 8-9, 53 U.S.P.Q.2D (BNA) 1559 (E.D. Mich. 1999).

[39] Parks v. Laface Records, supra, 76 F. Supp. 2d 775, 779, citing Paulsen v. Personality Posters, Inc., 59 Misc. 2d 444, 450, 299 N.Y.S.2d 501, 508 (1968).

[40] Romantics v. Activision Publ'g, Inc., 574 F. Supp. 2d 758, 771, 2008 U.S. Dist. LEXIS 63281, 30-31, 88 U.S.P.Q.2D (BNA) 1243, 36 Media L. Rep. 2345 (E.D. Mich. 2008).

[41] EA raised four specific defenses derived from the First Amendment, only three of which are discussed in this article. Specifically, EA argued the "transformative use" test, the Rogers test, the "public interest" test, and the "public affairs" exemption. The court did not accept EA’s Rogers test argument as applicable to the facts in the case. Keller v. Elec. Arts Inc. at p. 1282,and the author elected not to include this in the discussion.

[42] Keller v. Elec. Arts Inc. supra, 724 F.3d 1268, 1276, at p. 1283.

[43] Ibid.

[44] Id. at 1283 and 1283.

[45] The court cited three cases, Comedy III Productions, Inc. v. Gary Saderup, Inc., Winter v. DC Comics, and Kirby v. Sega of America. Comedy II and Saderup are discussed here. For an over view of Kirby, see http://dlr-law.com/3/post/2013/08/countdown-the-5-most-influential-video-game-lawsuits-of-2012-4-of-5-keller-v-electronic-arts.html. In Comedy III, the court held that Saderup’s charcoal drawing was not sufficiently transformative.  In Winter and Kirby, the court found the uses transformative.

[46] Winter v. DC Comics, 30 Cal. 4th 881, 69 P.3d 473, 134 Cal. Rptr. 2d 634, 2003 Cal. LEXIS 3492, 118 A.L.R.5th 727, 31 Media L. Rep. 1774, 66 U.S.P.Q.2D (BNA) 1954, 2003 Cal. Daily Op. Service 4586, 2003 Daily Journal DAR 5834 (Cal. 2003).

[47] Comedy III Productions, Inc. v. Gary Saderup, Inc., 21 P.3d 797, 25 Cal. 4th 387, 106 Cal. Rptr. 2d 126, 2001 Cal. LEXIS 2609, 29 Media L. Rep. 1897, 58 U.S.P.Q.2D (BNA) 1823, 2001 Cal. Daily Op. Service 3380, 2001 Daily Journal DAR 4163 (Cal. 2001).

[48] Keller v. Elec. Arts Inc., supra, 724 F.3d 1268, 1276.

[49] This conclusion was based on reviewing the first thirty minutes of game play only. General Patton’s persona and image may be treated differently elsewhere in the game.

[50] Comedy III Productions, Inc. v. Gary Saderup, Inc., supra, 25 Cal. 4th 387, 397.

[51] Id. at 397.

[52] Ibid.

[53] For clarity, the post-mortem right of publicity safe harbor does not apply if a use is “so directly connection with a product, article of merchandise, good, or service as to constitute an act of advertising, selling, or soliciting purchases of that product, article of merchandise, good, or service by the deceased personality without prior consent from the rights holder.” Cal. Civil Code § 3344.1(a)(1), § 3344.1(a)(3).

[54] Italic added for emphasis. Brown v. Entm't Merchs. Ass'n, supra, 131 S. Ct. 2729, 180.

[55] Astaire v. Best Film & Video Corp., 136 F.3d 1208, 1998 U.S. App. LEXIS 12790 (9th Cir. Cal. 1998).

[56] As an example, when registering a video game with the United States Copyright Office, the on line registration dialogue is as follows: “Select Motion Picture/Audiovisual if you are registering a feature film, documentary film, animated film, television show, video, videogame, or other audiovisual work.” http://www.copyright.gov/eco/help-type.html.

[57] See, The Presidential Right of Publicity, Sean T. Masson, Boston College Intellectual Property & Technology Forum, 2010, which discusses politicians’ right to bring right of publicity actions for pure commercial uses of their image and persona.

[58] Based on an article by Alix Kirsta, published by the Telegraph 2014, the annual revenue generated by dead celebrities in the United States is estimated to be $2.25 billion, not including television and online commercial ads.

© 2020 Premack Rogers P.C.

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