opinion

A Prohibited Use of Your Content

Gregory A. Piccionelli

Most content producers and persons who license content for commercial use understand that photographs and videos are subject to protection under the copyright laws of the U.S. and most other countries. Because of this, there is a general understanding that such content usually cannot be used without appropriate permission.

I have noted, however, that far fewer content providers and persons commercially exploiting photographs and videos are aware that persons depicted in photographs and videos may have the right to prevent the use of the content for the purposes of advertising or promoting the sale of products or services.

The use of content that includes the name, likeness, voice or other characteristics of a person to market or promote a product or a service must, therefore, be carefully evaluated prior to each such use to be sure that all required authorizations and rights to do so have been obtained.

This right, known as the “right of publicity,” provides to individuals the exclusive right to license the use of certain personal attributes, such as their likeness and their name for commercial promotion of products or services. In some cases, the right of publicity also extends to the use of a person’s voice, and, sometimes, even to other recognizable aspects of their persona. Essentially, the right of publicity provides individuals with the ability to prevent unauthorized commercial use of their identity and to collect damages resulting from such unauthorized use.

The use of content that includes the name, likeness, voice or other characteristics of a person to market or promote a product or a service must, therefore, be carefully evaluated prior to each such use to be sure that all required authorizations and rights to do so have been obtained. This is because any such use might violate or “misappropriate” the person’s right of publicity. To disregard this very important right can expose a company to substantial liability and expensive litigation. Therefore, a basic understanding of the right of publicity is mandatory for any business that uses content that in any way includes any recognizable attributes of a person to market or promote a product or a service.

To start, it is very important to note that while the right of publicity often involves content works such as photographs and videos, which are protected under copyright law, it has little to do with copyright. Copyright applies to the bundle of rights a person acquires in “original works of authorship fixed in any tangible medium of expression.”

This means that the exclusive rights held by a copyright owner apply only to the content work itself (e.g., the photograph or video) and not to name, likeness, voice or other attribute of the person depicted in the work. This also means that both the right of publicity and copyright considerations can simultaneously be implicated in a single usage. Therefore an advertisement featuring a person’s picture may require authorization from the photographer for the copyright use of the picture (for its reproduction, publication, etc.), and a separate authorization from the person who is depicted in the picture.

The following are some examples of situations that may (and often will) require a person’s express prior written authorization to use their name, likeness, voice, etc., to avoid liability for misappropriation of their right of publicity:

  • Use of a photograph of a model to advertise an online dating site;
  • Use of a person’s name or “sample” photographs or videos depicting a person to promote the sale of a membership site subscription;
  • Use of a person’s name or likeness in banner advertising;
  • Use of a person’s name or a photograph of a person to market or promote the sale of DVDs, magazines, toys or novelties;
  • Use of a live video stream of a person to market or promote a live chat service;
  • Use of a recording of a person’s voice in an audio pop-up to advertise an online service, such as an online dating service;
  • Use of a person’s name to generate search engine traffic directed to the sale of a product or service;
  • Use of a photograph of a model on a billboard to promote a business, such as a gentlemen’s club; and
  • Use of a person’s likeness to create an avatar to market or promote a product or service, such as a computer game or an online virtual world.

In the U.S., about half the states have specifically recognized the right of publicity (California, Florida, Indiana, Illinois, Kentucky, Massachusetts, New York, Nebraska, Nevada, Ohio, Oklahoma, Pennsylvania, Rhode Island, Tennessee, Texas, Utah, Virginia, Washington and Wisconsin). Many legal treatises have expressed the view, however, that the right of publicity exists by common law in every state in the U.S. that has not specifically provided the right through legislation.

Some states that do not have a specific right of publicity law provide analogous protection from commercial abuse of an individual’s identity through the state’s protection of the individual’s rights of privacy. Some other states provide some measure of similar protection through their unfair competition or false advertising laws. In these states, the unauthorized use of a person’s name or likeness in association with the promotion of products or services is often viewed as a commercial misrepresentation, an unlawful attempt to imply a false endorsement of a product or service, or a wrongful “passing off” of a product or service as one endorsed or produced by the person whose name or likeness is used.

What is specifically covered under each state’s right of publicity law varies from state to state. For example, in California the right of publicity covers both living persons and persons deceased for less than 70 years. New York, in contrast, does not extend the right of publicity to deceased persons.

Although the right of publicity has been traditionally been applied to the use of a person’s name or likeness, over the years the courts have steadily expanded the scope of the right, particularly in California. Today, depending on the state, the right of publicity may apply to the use of virtually anything that evokes a person’s identity or a recognizable attribute. In one famous case, Wheel of Fortune television game show celebrity Vanna White successfully brought a right of publicity action against Samsung Electronics America Inc., and was awarded $403,000 in damages resulting from the company’s use of a mop-headed letter-turning robot in one of its commercials. The court held that the Samsung’s use misappropriated White’s right of publicity, in part, because White was readily identifiable from the context of the use and the company had deliberately pawned the image and popularity of White.

In California, a right of publicity action may be brought by a plaintiff under common law or under California Civil Code Section 3344, which provides in part:

“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.”

The California statute, which is generally similar to those enacted by other states, allows a party whose rights of publicity have been misappropriated to collect actual damages and the wrongdoer’s profits associated with the wrongful use of the party’s name or likeness. In addition, California’s law also provides for a minimum damage award of $750 regardless of amount of actual damages actually sustained. Unlike the rights of publicity laws enacted by many other states, however, California’s law authorizes a party to seek punitive damages for the misappropriation of their name or likeness.

This is important because there is no statutory limitation regarding the size of a punitive damage award. And since the function of a punitive damages award is to punish the wrongdoer and deter similar conduct, it is possible that a single punitive damages award for misappropriation could financially crush a small entertainment business.

Claims of misappropriation of a person’s name or likeness are also frequently brought in association with claims of infringement of other intellectual property rights. For example, right of publicity claims are common in copyright infringement actions where the allegedly infringing works include depictions of persons and the works are used to promote a product or service, such as a website, a web cam business, a dating site, etc. It is also common to see a claim of misappropriation of a person’s right of publicity in an anti-cybersquatting lawsuit where the disputed domain name comprises or includes an individual’s name.

The easiest and simplest way to minimize potential liability for misappropriating a person’s right of publicity is to get the necessary written authorizations from persons depicted in content to use their name, likeness, voice, etc., for the commercial uses for which they will be used. This can be done at the time the content is created by an appropriately drafted agreement. The authorization can also be acquired after the content is created by a separate agreement provided that the appropriate written authorization is obtained prior to the commercial use. Either way, the rights to commercially use a person’s name, likeness, voice, etc., should always be acquired in writing prior to any such commercial use.

In light of the foregoing, it should be clear that every business that uses content that includes a person’s name, likeness, voice or other characteristics to advertise or promote a product or service should take appropriate measures to be sure that all the required authorizations required to do so have been properly and timely obtained.

All such businesses should therefore, timely acquire, via appropriate written agreements, all such authorizations and associated rights so that neither they nor their agents or affiliates misappropriate any person’s right of publicity. To do otherwise is to court substantial legal liability of a kind that can be easily avoided.

This article is not intended to be, nor should it be considered to be, legal advice.

Gregory A. Piccionelli is an intellectual property attorney specializing in adult entertainment matters. He can be reached at Piccionelli & Sarno at (818) 201-3955 or greg@piccionellisarno.com.

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