INTERNATIONAL TRADEMARK ASSOCIATION Right of Publicity Around the World

INTERNATIONAL TRADEMARK ASSOCIATION

Right of Publicity Around the World


Speakers

• Mike Rodenbaugh, Yahoo! Inc.

• Avril Martindale, Freshfields Bruckhaus Deringer

• Paula Guibault, The Coca-Cola Company

• William Gallagher, Golden Gate University School of Law


Introduction

• Right of publicity is a property right, infringement is a tort.

• Less consistently defined and applied internationally than is trademark or copyright law.

• In US, substantive law differs among the states.

• However, some basic principles tend to apply everywhere.


Basic Principles• Definition – inherent right of every individual to control

the commercial use of his or her identity.

• Test for infringement – unpermitted use which will likely damage the commercial value of this right, and which is not immunized by protections for free speech and press.

• Transfer rules – assignments and licenses

• Postmortem rights are not uniform

• Statutory exemptions are not uniform

• Freedom of Speech is often in conflict


Differences with Trademark Law• Persona identifies one

human being

• Infringement where persona is identified

• Goodwill and quality control protections not needed for valid assignment

• TM is a word or symbol that indicates commercial source

• Infringement where identical use or likelihood of confusion

• In US, must assign with goodwill and quality control protections


Freedom of Speech• Publishers often accused of infringing

rights of publicity and privacy

• Inconsistent case results, but the more prominent and commercial the use, the more likely to be found infringement

• Conversely, the more transformative and creative the use, the less likely to infringe


Differences in Approach – U.S. vs. Rest of World

• Outside of US, less focus on freedom of speech and creativity of use

• More focus on:– balancing right of privacy against public

interest– balancing individual’s permitted exploitation

against fair use by third parties


Publishers – Liable• Argentina: Maradona, injunction against publication of book: “Diego

Maradona: The 1000 most famous phrases in his career.”

• China: Dong Yun, although photo used for a news report, court held that report had “content and effect of an advertisement,” and so used for commercial purpose.

• Germany: Princess Caroline, European Court of Human Rights holds that Princess’ right of privacy invaded by publication of photos of her in daily life, in public.

• Spain: Cortina, photos of celebrities on holiday could not be published without their consent.

• UK: Campbell, House of Lords finds Daily Mirror liable for publishing details and photos re supermodel’s treatment for narcotics addiction.


Advertisers -- Liable

• Austria: Schussel, Prime Minister forces McDonald’s to stop implied endorsement in TV commercial

• Netherlands: Kalou, court enjoins insurance company from using video of football player, and look-alike actor, in TV commercial

• UK: Irvine, infringement via doctored photo in marketing materials, showing race car driver apparently using defendant’s radio device


Conflict with Free Speech• Schwarzenegger “Bobblehead” doll case:

– Oak Productions, Inc. v. Ohio Discount Merch., Inc. (L.A. Superior Court/C.D. CA 2004)

• Squarely raised novel issues re scope of Right of Publicity vs. First Amendment defense—Is the doll “transformative”?

• Case settled, but issue remains: was Right of Publicity a tool for censorship?


•


Merchandise, Int’l cases• China: Baizhi, movie star awarded $250k for

unauthorized use of her image on cosmetics packaging.

• France: Le Galon, court enjoined publication of video game featuring plaintiff’s unauthorized image.

• Germany: Kahn, court enjoins EA from using image of goalkeeper in video game.


C.B.C. v. MLB Advanced Media and MLB Players Association

• 443 F.Supp.2d 1077 (E.D. Mo., 2006)

• Does the Right of Publicity preclude the unauthorized use of baseball players’ names and stats in fantasy sports leagues?

• Does the 1st Amendment to U.S. Constitution trump any such right?


C.B.C. v. MLBAM and MLBPA

• Elements of Right of Publicity claim under Missouri Law

– 1) Use of name as symbol of identity– 2) Without consent– 3) With intent to obtain commercial advantage


C.B.C. v. MLBAM and MLBPA• From 1995-2004, C.B.C. licensed baseball

players’ names, nicknames, numbers, likenesses, signatures, pictures, playing records, biographical data from MLBPA

• When license was not renewed, C.B.C. sought declaratory relief that use of names and stats in operating its sports fantasy league business did not violate, inter alia, the players’ Right of Publicity


CDM (CBC) Site: Commercial Exploitation or Factual Dissemination?


Names and Stats or Players’ Identity?

Who is this?


Does this create an association between CDM and MLB players?


C.B.C. v. MLBAM and MLBPA• Court:

1) No “Commercial Advantage” because no use of pictures/likeness—only names and stats

2) No use of names as “Symbol of Identity”

3) Ruling consistent with policy of ROP statute

4) First Amendment trumps ROP for use by fantasy sports leagues


C.B.C. v. MLBAM and MLBPA

• Important ruling properly limiting Right of Publicity?

• Use of Name/Stats, without more, does not violate Right of Publicity

• Future impact unclear, case is on appeal


Athletes, int’l• Argentina: Chilavert, OK to use name of famous

goalkeeper in a promotional game, along with names of 400 other players in the league.

• France: Real Madrid, OK to use names and pictures of footballers to promote gambling websites, since court agreed they were used only to provide information about the games open to betting, and not to promote the bookmakers’ commercial activities.

• France: Domenici, OK to use unauthorized picture of famous rugby player on cover of rugby instruction manual. But see, Benguigi, NOT OK to use singer’s unauthorized image on cover of biography, enjoining further editions of book.


• France: Cantona, footballer successful with claim against sports magazine that devoted an issue entirely to the plaintiff.

• Italy and Spain: Panini, unauthorized use of footballers’ photos for a card set, breached rights of players and their licensee.

• Mexico: Club America, footballers force website to cease offering their images for sale.

• Mexico: Pepsi, ambush marketing at World Cup, via use of images of national team coach and players, held an infringement of Coca Cola’s sponsorship rights, Pepsi commercial enjoined.

• Spain: Martin, video of bullfighter’s death outside the ring held to violate the rights of privacy of the bullfighter and the plaintiff.

Documents

INTERNATIONAL TRADEMARK ASSOCIATION Right of Publicity Around the World