The Big Picture

Artists don’t always need permission to cash in on a celebrity’s likeness. But how far can they go?

Even our assistant, Juniper, was impressed when the call came from Elle one morning. Our client had been a Hollywood celebrity for so long that many had forgotten why she was even famous in the first place.

We had last represented Elle a few years earlier in a case involving her extensive collection of Botero and Giacometti sculptures. Now she wanted to consult us about a “devastating catastrophe” (her words) that threatened her career. We arranged for a lunch meeting that very day at a four-star restaurant we also represented.

When Elle swept in, all eyes in the restaurant turned to her. Even with her oversized sunglasses, a mink hat and large cape, she was instantly recognizable. Elle disregarded the proffered menu and requested a single balked potato with a side of steamed kale. Then she got right to the point. She wanted to stop an artist from selling lithographs that drew attention to her weight-which we knew from the tabloids, tended to fluctuate greatly.

When Charles asked her for a more detailed description of the prints, Elle started to weep softly, and handed over some transparencies. We quickly understood her point. One depicted her in a tent-size housedress standing outside a Dunkin’ Donuts shop with a large cruller sticking out of her mouth. And that was the most flattering print in the group.

“How can I prevent this creep from using my image without my permission?” Elle sobbed.

The good news was that, while the First Amendment protects creative work in the U.S., it does not give artists unfettered license to reproduce images of celebrities without their consent. In fact, about half the states have recognized the “right of publicity,” meaning the right to control commercial use of one’s name and likeness. In addition, Elle happened to live in Los Angeles, and California has statutes that specifically regulate the use of a living or dead celebrity’s image-especially in a commercial fashion.

While Elle was digesting this information, we dished out the bad news. The artist in question was from New York, where there is no statutory guarantee of the right of publicity-although there is a limited “right of privacy,” which is essentially the right to be left alone. Moreover, in 1993 a New York State court held that artists may depict celebrities in works of art and sell at least a limited number.

The case involved a sculpture who made a plaster cast of the head of model Cheryl Tiegs, and who won a lawsuit when the casting was destroyed while in Tieg’s possession. The court rejected Tieg’s argument that the artist had no right to create or sell the sculpture, so she could not be liable. The lesson for our client was that she might have a better case if she filed her suit in California instead of New York.

The waiter appeared with our lunch. By the time Thomas had put his napkin on his lap and taken a sip of wine, Elle had finished her entire meal. Charles noticed she was now eyeing his fish.

Returning to the subject, we asked Elle if the artist’s prints were sold in a commercial context, such as product endorsement or advertising. She didn’t know. We explained that if it were purely commercial use (or “speech,” in legal parlance), she would have a stronger claim. California’s statute specifically prohibits the unauthorized use of a person’s “name, voice, signature, photography, or likeness on or in products for the purposes advertising or selling.”

We also described the most significant California case in this area, Comedy III Productions, Inc v. Gary Saderup, Inc., in which the owner of the rights to the Three Stooges comedy act sued artist Gary Saderup for selling T-shirts and prints based on a charcoal drawing he did of the Stooges. Comedy III claimed that the sale violated the California statute that grants the right of publicity to the successors of deceased celebrities.

In 2001 the California Supreme Court agreed that Saderup’s works were not protected by the First Amendment, viewing them simply as merchandise that realistically depicted the celebrities. The courts ruled that “when artistic expression takes the form of a literal depiction or imitation of a celebrity for commercial gain, directly trespassing on the right of publicity without adding significant expression beyond the trespass, the state law interest in protecting the fruits of artistic labor outweighs the expressive interests of the imitative artist.”

Our client was clearly starved for more information. We told her about the 1983 case, Carson v. Here’s Johnny Portable Toilettes, Inc., in which the U.S. Court of Appeals for the Sixth Circuit held that a toilette-maker could not use the phrase “Here’s Johnny” in its advertisements because it was so closely associated with the celebrity Johnny Carson and therefore invaded his right of publicity. The court reasoned that Carson’s identity was exploited even though his name and picture were not used.

Thomas briefly excused himself to make a phone call. When he returned, his plate was empty, and a speck of creamed spinach was visible on Elle’s check. Charles smirked and shrugged his shoulders. Elle now seemed a bit more cheerful. “Doesn’t the fact that an artist is earning money off the prints automatically make it commercial, and therefore prohibited?” She asked.

We explained that this argument carried little weight, since making a profit does not necessarily diminish an artist’s protection under the First Amendment. Court rulings vary, but in the words of the Saderup court, “No one would claim that a published book, because it is one of many copies, receives less First Amendment protection than the original manuscript.”

Worse still, recent cases seem to limit an individual’s right of publicity when artistic expression is involved. In fact, the Saderup court observed that “when a work contains significant transformative elements, it is not only especially worthy of First Amendments protection, but it is also less likely to interfere with the economic interest protected by the right of publicity.” We suggested that the lithographs of our client might in fact be viewed as having transformative elements and would therefore be protected, especially because they are not simple substitutes for celebrity memorabilia.

Similarly, in 2003 the Sixth Circuit Court ruled in favor of a “sports artist” who created unauthorized, limited editions of a print featuring Tiger Woods. The exclusive licensing agent for woods sued the publisher of the prints, arguing in part that the work violated Woods’s right of publicity under Ohio law. The agent also claimed that the publisher infringed on the trademark “Tiger Woods” by placing the golfer’s name on marketing materials accompanying the painting. The court rejected this argument, saying that Woods himself could not be considered “a walking, talking trademark.”

And in a 2001 case, Hoffman v. Capital Cities/ABC, Inc., which involved a fashion magazine that published a computer-doctored photograph combining Dustin Hoffman’s head with a silk gown designed by Richard Tyler and shoes by Ralph Lauren (mimicking the actor’s movie role as a cross-dresser in the film Tootsie), Hoffman sued the magazine and its publisher, claiming, in part, a violation of his right of publicity. However, the Ninth Circuit Court of Appeals ruled that since the appropriation of Hoffman’s face was not for an actual advertisement but for an editorial feature, it was protected noncommercial speech and could be stopped only by proving actual malice on the part of the publication.

“At the very least, can’t I argue that the lithographs are a parody of me?” asked Elle. Clearly, she believed that this argument would make her case stronger.

In fact, just the opposite is true. Parody receives special protection under the law. For instance, in the Saderup case, the court said that “works of parody or other distortions of the celebrity figure are not, from the celebrity fan’s point of view, good substitutes for conventional depictions of the celebrity and therefore do not generally threaten markets for celebrity memorabilia that the right of publicity is designed to protect.”

According to a 1996 ruling in a federal court, a company that created baseball cards showing caricatures of major-league baseball players was entitled to First Amendment protection because the cards were permissible “social commentary on public figures.” The court further defended the cards on the grounds that “through their pervasive presence in the media, sports and entertainment celebrities come to symbolize certain ideas and values…celebrities, then, are an important element of the shared communicative resources of our cultural domain.”

Based on the case law in this area, our client might have a better chance of stopping reverential, exact depictions of herself than tasteless parodies-a somewhat incongruous result.

Dessert (for us) and coffee arrived. Elle remarked that the law in this area seemed especially complex. We agreed, adding that there is a smorgasbord of seemingly inconsistent and unpredictable laws relating to the right of publicity. The lack of clear legal standards is troubling not only for celebrities but also for artists themselves, who may hesitate to experiment with appropriation and other modern artistic techniques for fear of legal liability. “In any case brought in this area,” we explained, “the courts would balance your right of publicity against the artist’s right of free expression.”

We called for the check. Elle was fed up with her situation, and as we left the restaurant, she vowed to bring her case to the highest court in the land, if necessary. “Once the Supreme Court hears my argument,” she railed, “I know they’ll stop the artist from making any more of these distasteful portraits.”

As we waved goodbye to her, we couldn’t help but think, “Slim chance.”

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