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  • Brian R. Tinkham, Esq. and Robert J. Allan, Esq.

WHAT DOES THE PLAINTIFF NEED TO PROVE IN RIGHT OF PUBLICITY LITIGATION?

In November 2019, there was a bench trial regarding whether or not the Coca-Cola Company (“Coke”) violated California’s right of publicity law for using juice maker Hubert Hansen’s actual name and likeness on various beverage products such as Hansen’s Soda and Hubert’s Lemonade. The heirs of Hubert Hansen (“Heirs”) claimed Coke used Hubert Hansen’s name and likeness in violation of California’s right of publicity law.

Hubert Hansen founded a juice company, Hansen’s, using his name in 1935. Hansen’s eventually became Monster Beverage. In 2015, Coke took over ownership and control of Hansen’s juice products and sodas from Monster Beverage. The Heirs sued Coke in 2016 claiming Coke did not acquire the rights to use Hubert Hansen’s name and likeness although Coke did acquire various copyrights and trademarks associated with the Hansen brand.

The trial was trifurcated. The bench trial was heard first. The Hon. Timothy Taylor of the San Diego Superior Court (the “Court”) held that California right of publicity applies to the claims in this action. The Court found that “Plaintiffs established, through testimony and documentary evidence, how ownership of the Hubert Hansen right of publicity passed through inheritance and testamentary documents to Hubert' widow, children, and grandchildren.” The Court rejected Coke’s claim that Coke obtained Hubert Hansen’s publicity rights through their acquisition of Monster finding that “all of the documents used by defendants to support their claim of ownership of the Hubert Hansen right of publicity to be unambiguous: none of them transferred the right of publicity to defendants.” In 2020, a jury awarded damages in the amount of $9,596,460 and the Court additionally awarded attorneys’ fees and costs in the amount of $7,351,501. As of writing this article it is the largest verdict in a right of publicity case in American history.

This Hansen case was subject to California Civil Code Section 3344.1, which has its own unique and important distinctions. However, in general, the analysis of whether a right of publicity claim exists under California law is as follows:

1. Were the plaintiff’s publicity rights used?

Few right of publicity cases discuss the “use” issue or even attempt to define it. In general, an unauthorized use of a famous person’s name or image in an advertisement, magazine, newspaper, online ad, social media account, or other form of media will suffice provided the plaintiff is readily identifiable. The “use” issue is typically a question of fact for a jury unless the court decides that no reasonable juror could reach a different conclusion.

2. Is the plaintiff readily identifiable?

As an initial matter to establish the right to pursue a cause of action for a right of publicity claim, the plaintiff’s publicity rights must be readily identifiable (name, likeness, signature, or other indicia of the plaintiff). This includes a plaintiff’s name, nickname, professional name, or group designation. The right of publicity also protects against the depiction of a plaintiff’s appearance or image for unauthorized uses, including photographic likeness, recognizable drawings and imitations by look-a-likes. However, the right of publicity does not cover the mere imitation of a person’s voice, mannerisms, gestures, costumes, or any combination thereof unless used together these factors constitute an unauthorized appropriation of the name or likeness of the person.

The current legal standard in California is whether: “one who views the photograph [or likeness] with the naked eye [must] reasonably determine that the person depicted in the photograph [or likeness] is the same person who is complaining of its unauthorized use.” (Newcombe v. Adolf Coors Co., 157 F.3d 686, 693 (9th Cir. 1998).) It is not enough that a plaintiff suspects that the alleged use is his or her likeness or identity.

This will be a question of fact typically reserved for the jury unless the court finds that no reasonable juror could find that the plaintiff’s publicity rights were readily identifiable.

3. Did the plaintiff or someone acting on behalf of the plaintiff authorize the use?

A plaintiff must be able to prove that he or she did not authorize the use of his or her publicity rights. If the plaintiff, or someone acting on behalf of the plaintiff, consented to the use of the plaintiff’s publicity rights then it is a complete defense. (See, e.g., Cal. Civ. Code § 3344 (“Section 3344”).

Some state statutes, like California’s Section 3344, do not require written consent. However, in New York written consent is needed. (See N.Y. Civil Rights Law §§50-51.)

The common law tort for right of publicity in California does not require that a subject’s consent be in writing, allowing it to be oral, written, or evidenced by conduct. However, a person who consents to use of name of likeness for another’s benefit may limit how the person’s identity or likeness is used and can do so by written or oral contract. In fact, a person can limit the scope of use of his or her publicity rights as to duration, form, geography, forum, media, or other conditions related to the scope of the grant of use of the publicity right.

4. Who are the potential defendants?

Claims for misappropriation of a publicity right can be asserted against a defendant who misappropriated the publicity right and/or third parties in the following situations: (a) where the person with the publicity right did not grant permission of any kind, to anyone for the use in question, (b) whether the person with the publicity right did not grant permission to a third party, only to the defendant, or (c) where the plaintiff granted certain rights to use their publicity rights but the defendant exceeded the scope of permission granted.

For example, consent from a photographer is not equivalent to consent from the subject of the photograph and can expose the end user of the photograph to liability for violation of appropriation of privacy if the photographer did not obtain the consent of the photographer’s subject.

5. Was the publicity right used for the defendant’s advantage, commercially or

otherwise?

Most jurisdictions require that a plaintiff prove the defendant had made a commercial use of the plaintiff’s identity when claiming a violation of the common law right of publicity. However, under California common law, a right of publicity claim does not require a commercial use by the defendant. All that is needed is the defendant’s use of a plaintiff’s identity, the appropriation of plaintiff’s name and likeness to defendant’s advantage, commercially or otherwise, a lack of consent and resulting injury. (Solano v. Playgirl, Inc., 292 F.3d 1078, 1088 (9th Cir. 2002).)

State right of publicity statutes, such as California’s Section 3344, generally require the defendant to knowingly use the plaintiff’s identity, name, or likeness for commercial purposes. A commercial purpose is typically in connection with a business venture having a profit motive. The specific language regarding a “commercial use” varies by state. In California, the defendant’s commercial use must be “on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services. (Section 3344(a).) In New York, the commercial use must be “for advertisement purposes or for purchase of trade.” (N.Y. Civil Rights Law §§ 50 and 51.)

There must be a direct connection between the use of the plaintiff’s identity and the defendant’s commercial purpose. The use of the plaintiff’s publicity rights must be directly, and not incidentally associated with the product or service being commercially exploited.

6. Are there any defenses that apply?

· Consent. See above. Consent is an absolute defense.

· Statute of limitations.

In California, the statute of limitations to bring a right of publicity claim is two (2)

years. (Cal. Civ. Proc. § 339.)

There are limited exceptions to the two year statute of limitations in California

such as fraudulent concealment (requiring a fiduciary relationship between the

parties) and in cases where the plaintiff could not have reasonably discovered the

facts giving rise to the claim under the delayed discovery rule. (See e.g., Christoff v. Neslté USA, Inc. (2009) 47 Cal. 4th 468, 475.)

· First Amendment Issues:

· Was the use of the right of publicity for a literary use or for reporting the news?


Section 3344(d) provides that the use of a person’s publicity rights is not actionable when “in connection with any news, public affairs, or sports broadcast or account, or any political campaign.” (Cal. Civ. Code § 3344(d).) There are some exceptions but typically use of a person’s publicity rights in books, magazines, and other literary works, as well as in connection with news reporting, is protected from a right of publicity claim under the First Amendment.

· Was the use of the right of publicity a transformed in art and/or entertainment?


If so, it may also be subject to protection under the First Amendment. California has established what is known as the transformative use defense to determine if a person’s publicity rights contain sufficient protected elements to afford First Amendment protection. The transformative use defense is whether the celebrity likeness is one of the “raw materials” from which an original work is synthesized, or whether the depiction of the celebrity is the very sum and substance of the work in question. If the “product containing the celebrity’s likeness is so transformed that it has been primarily the defendant’s own expression” of what he is trying to create or portray, rather than the celebrity’s likeness, then the use is protected under the first amendment. (See, e.g., Kirby v. Sega of America, Inc. (2006) Cal. App. 4th 47, 58 citing Comedy III Productions, Inc. v. Gary Saderup, Inc. (2001) 25 Cal. 4th 387, 406-407.) The real issue is whether the artist depicting the celebrity or person contributed something more than just a mere trivial variation to create something that is a significant transformation to justify protection of the use under the First Amendment. (Comedy III Productions, Inc. v. Gary Saderup, Inc. (2001) 25 Cal. 4th 387, 405.)

· Was the use of the right of publicity in the public interest?

Section 3344 (d) provides: “[f]or purposes of this section, a use of a name, voice, signature, photograph, or likeness in connection with any news, public affairs, or sports broadcast or account, or any political campaign, shall not constitute a use for which consent is required.” Ibid. There is also no cause of action for right of publicity in the common law for the publication of matters in the public interest. Indeed, Courts have held that “no cause of action will lie for the publication of matters of public interest, which rests on the right of the public to know and the freedom of the press to tell it.” (See e.g., Downing v. Ambercrombie & Fitch 265 F.3d 994, 1001 (9th Cir. 2001).) However, this defense is not absolute. The exception to this rule is when an infringer uses a plaintiff’s right of publicity for the infringer’s purpose and not for advancing the public interest. (See e.g., Downing v. Ambercrombie & Fitch 265 F.3d 994, 1001 (9th Cir. 2001) holding the Ambercrombie & Fitch catalog did not explain that the Appellants were legends of the sport and used Appellant’s photographs merely as window-dressing to advance the catalog’s surf-theme.)

· Was the use nominative or de minimus?

This is the face in the crowd defense. Generally, If a person is depicted very briefly in a movie or television program without their permission, then it is not actionable. Section 3344(b) also limits a person’s right to sue for being a face in the crowd because the person in the photograph must be readily identifiable. (Section 3344(b).)

· What about copyright/fair use?

Fair use is a copyright defense and is not a defense to a right of publicity claim.

· Can a state right of publicity claim be preempted?

Rarely, but it can happen when there is a conflict with the Copyright Act. Generally, a violation of the right of publicity is deemed not to be preempted either because a person’s identity is viewed as not being “fixed” or not deemed a work of authorship under the Copyright Act.

7. Can the plaintiff prove damages?

A Section 3344 claim and a California common law claim provide for the following remedies:

· Injunctive Relief to prevent a defendant from continuing to violate a person’s

right of publicity;

· Compensatory Damages including:

· The fair market value for using a plaintiff’s publicity rights which occurs when a

person who is famous and has appreciable value in their name, image, or identity

is the fair market value for that person’s services. The fair market value is the

most common form of compensatory damages and could include a reasonable

royalty rate an artist may make with the song, the typical compensation a celebrity

would earn for endorsing a deal or would earn for a photo shoot and, if it can be

proven, the fair market value of the plaintiff’s identity.

· Actual damages which can be proven through the loss of an existing commercial

opportunity or if the infringement caused damages to a plaintiff’s career in other

ways making it hard for him or her to obtain future work;

· Disgorgement of Profits by the defendant for the infringing use; and

· Punitive Damages.

California common law also provides damages for loss of goodwill, professional standing and future publicity value as well as injury to peace, happiness, and feelings. Damages for emotional distress may also be awarded.

Section 3344 claims also allow for statutory damage of $750 per unauthorized use of a person’s enumerated publicity rights as an alternative to “actual damages.”

The damage analysis may be one of the most difficult and expensive parts of any right of publicity case due to the need for expert testimony. A careful analysis of all steps should be taken as right of publicity lawsuits can be expensive, and, if a Section 3344 claim is plead and the parties cannot resolve the matter, then the prevailing party will be entitled to attorneys’ fees. In some cases, the best course of action may be to reach a settlement early in the litigation rather than incurring the time, costs and risks of trying a publicity rights claim.

Because of the generality of this blog post, the information provided herein may not apply in all situations and should not be acted upon without specific legal advice based on the unique facts of each potential right of publicity claim. Please contact the authors of this blog post, Brian R. Tinkham (btinkham@rjallanlaw.com) and Robert J. Allan (allan@rjallanlaw.com) for more information.

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