Dec 22, 2006 — (Originally published in the Entertainment Law column of the New York Law Journal, December 22, 2006.)
So began one of the more memorable opinions in the annals of publicity rights: a dissent written in 1999 when the Ninth Circuit held for a second time that California publicity rights law squelched robotic imitations of human celebrities. Twelve weeks ago, a state appellate decision applying California law resolved yet another dispute over an electronic figure with a distinct resemblance to a human plaintiff. Unlike the two robot cases, the First Amendment figured prominently in this decision after California State law had evolved in the application of constitutional principles to publicity rights claims. And this time the human lost.
The opinion in Kirby v. Sega of America, Inc.1 written by Judge Paul Boland of the California Court of Appeal, affirmed a lower court’s grant of summary judgment to defendants in a celebrity’s suit against distributors of a video game. In Kirby, the plaintiff complained that a character in the game misappropriated her likeness and identity and sued for common law infringement of the right of publicity, statutory misappropriation of likeness, violation of the Lanham Act, unfair competition, and other state claims. All claims were dismissed on First Amendment grounds. Like the two robot cases that preceded it, the decision offers an opportunity to consider how unauthorized electronic imitations of human celebrities should fare in the balance of the First Amendment and publicity rights. The “tension” (as Kirby calls it) between these protections comes to the fore when computer graphic designers insert close imitations of well-known celebrities into films, still pictures or, in this instance, a video game narrative.
Before reviewing the facts of Kirby, we briefly will revert to the robot decisions.
The Robot Dissents
Judge Ales Kozinski’s lament about robots appeared in his dissent from an order rejecting the defendants’ request for a rehearing en banc in Wendt v. Host International.2 That case was brought by actors who portrayed two characters in the television series Cheers: Cliff (the “dweebish mailman and something of a know-it-all windbag”) and Norm (“a fat, endearing oft-unemployed accountant”). They asserted their rights of publicity against the creator of a chain of Cheers airport bars populated with animatronic figures reminiscent of Norm and Cliff: one fat and the other dressed as a mailman, although their names had been changed to “Hank” and “Bob” and the figures bore “totally different” facial features from those of the television actors. Also, the owner of the bars was licensed to use the characters by Paramount, the owner of copyright in the television series. The trial court granted summary judgment to the defendants, but the Ninth Circuit reversed. In the conflict between Paramount’s right under copyright to present the Cheers characters in airport bars and the actors’ rights to control the exploitation of robotic figures who reminded the public of the actors, the actors won.
First Amendment concerns in Wendt were not the focus of the controlling decision. Judge Kozinski’s dissent argued that the “portrayal of the Cheers characters is core protected speech: Using Norm and Cliff dummies in a Cheers-themed bar is a dramatic presentation. It’s like a play…a literary work…worthy of the highest First Amendment protection from intrusive state laws like California’s right-of-publicity statute.” Distinguishing this use from “speech that does no more than propose a commercial transaction,” he characterized the robots as a “new derivation of a copyrighted work, not unlike a TV series based on a movie or a Broadway play based on a novel.” The novelty of this use, he said, “ought to prick up our ears to First Amendment concerns” instead of again allowing creativity to be snuffed out by the right of publicity.
That “again” referred to the earlier robot-centric result in White v. Samsung Electronics in which Judge Kozinski’s voice of dissent also was heard when an en banc hearing was denied.3 In that case, the television personality Vanna White successfully sued the makers of an electronics ad that evoked her identity through a parodic robot wearing a wig, dress and jewelry like White’s in a setting that suggested a futuristic “Wheel of Fortune.” Judge Kozinski’s dissent argued that the panel, which raised White’s rights of publicity above Samsung’s right to use these elements creatively, wrongly gave White an exclusive right “to anything that reminds the viewer of her.”
Acknowledging that Samsung “did it to make money,” and that “it may seem unfair that much of the fruit of a creator’s labor may be used by others without compensation,” Judge Kozinski argued that “not allowing any means of reminding people of someone” – especially in the context of a parody – amounted to a “speech restriction unparalleled in First Amendment law.” He asked, “Is the Samsung parody any different from a parody on Saturday Night Live or in Spy Magazine? Both are equally profit-motivated. Both use a celebrity’s identity to sell things….Both mock their subjects. Both try to make people laugh. Both add something, perhaps something worthwhile and memorable, perhaps not, to our culture.” And both were deserving of First Amendment protection.
These cases both involved the use of elements of a celebrity’s identity without authorization in the context of a work that arguably deserved First Amendment protection that outweighed any publicity rights of the plaintiff. And both these Ninth Circuit results antedated opinions of the California Supreme Court in Comedy III Productions, Inc. v. Gary Saderup, Inc.4 (publicity rights of plaintiff trump unauthorized use of a “literal depiction” of the Three Stooges on a t-shirt) and Winter v. D. C. Comics5(First Amendment rights of defendant trumps publicity rights of musician plaintiffs who appear as villainous half-worm, half-human offspring in a comic book). In these cases, the California Supreme Court developed a test of “transformativeness” to determine “whether a work merely appropriates a celebrity’s economic value, and thus is not entitled to First Amendment protection, or has been transformed into a creative product that the First Amendment protects” (Winter at 477). In other words, the test asks whether the celebrity likeness is a “raw material” from which a new work is synthesized, or “the very sum and substance of the work in question” in which case, First Amendment protection does not attach. The pivotal question is whether “literal and imitative” elements predominate or “creative elements” predominate. Though neither of these state Supreme Court cases involve virtual celebrities, the transformative test informs the result in Kirby, which does.
The Kirby Decision
The plaintiff in Kirby, professionally known as “Lady Kier” (among other names) was a dancer, artist, choreographer, fashion designer and lead singer in a retro-funk-dance musical group known as “Deee-Lite,” which was popular in the early 1990s and disbanded in the mid 1990s. The band’s music video for the song “Groove is in the Heart” featured band members in “funky retro outfits, vivid graphics, groovy dance moves, a futuristic setting and an overall party feel.” The plaintiff asserted that she developed a “distinctive look” as “Lady Kier,” incorporating platform shoes, knee-socks, brightly colored form-fitting clothes and unitards, short pleated or cheerleader-type skirts, bare midriffs, cropped tops with words or a numeral written on the chest, space or other helmets, a blue backpack, and red/pink hair worn in a ‘page-boy flip’ held back by a headband, pigtails, and other styles.” She also used the phrase “ooh la la” as a “signature expression” in three of her songs and to introduce that music video.
The defendants’ video game featured a computer-generated image of a young, fictional, and extremely thin reporter named “Ulala” who works for a news channel called Space Channel 5 and is primarily seen in a mostly orange outfit. This ensemble includes a midriff-exposing top that bears the numeral “5,” a mini-skirt, elbow-length gloves, and stiletto-heeled, knee-high platform boots. Her hair is hot pink, worn in short pigtails placed high on the back of her head, and she wears a blue headset, jet pack and gun holster. Her design is partially inspired by Japanese “anime” cartoons.
In the game, Ulala is sent to Earth to investigate an invasion by aliens who cause earthlings to dance uncontrollably by shooting them with ray guns. By causing Ulala to match the dance moves of other characters, the player moves to higher levels of more difficult play until reaching a “surprise ending” to Ulala’s story. Several promotional products are associated with the game: a promotional video, a strategy guide, a lunch box and a “Hot Wheels” car with Ulala’s picture.
There was evidence that “Lady Kier” was not unknown to the defendants. A firm retained by a subsidiary of Sega asked the plaintiff if she was interested in promoting the game. She declined.
The Court observed that certain of Ulala’s characteristics and computer-generated features resembled the plaintiff, such as her thinness, the shape of her eyes and face, red lips, hair color, and brightly-colored, form-fitting clothing, including short skirts and platform shoes in a retro style. In addition, the character’s name was a variant of “ooh la la,” the phrase often used by the plaintiff and associated with her. (Further, both of the plaintiff and the character used the phrases “groove,” “meow,” “dee-lish” and “I won’t give up.”) But there were differences between them as well. For example, rather than an orange miniskirt, the plaintiff “is found more frequently in form-fitting body suits” and rather than wearing pigtails, the plaintiff’s hair is more frequently shaped into a page-boy flip, held back with a head band. And when she does wear pigtails, the plaintiff’s are longer than Ulala’s and accompanied by “tendrils of hair draping over her forehead.” The plaintiff also conceded that her appearance and visual style were “continually moving.” In the Court’s view, this “lack of stasis” was inconsistent with a claim of misappropriation.
Taking differences into account, the Court agreed with the trial court that material factual issues existed as to whether, by creating Ulala, the defendants misappropriated the plaintiff’s likeness and identity – the legal question which lay at the core of her state claims – or falsely implied a celebrity product endorsement in violation of the Lanham Act. There was no need to resolve those issues, however, because the Court also affirmed the trial court’s grant to the defendants of summary judgment because the First Amendment, as well as the California Constitution, provided a complete defense to the entire action.
The Court observed that First Amendment protections extend to all forms of expression, including written and spoken words, music, films, paintings and entertainment. The protection applies whether or not a work is sold for profit and regardless of whether it constitutes “commercial speech,” which also receives “significant First Amendment protection, unless it is false and misleading” (citing Comedy III). Video games are no exception; in a ringing endorsement of their cultural status, the Court described them as “expressive works entitled to as much First Amendment protection as the most profound literature.”
Applying the transformative test from Comedy III and Winter, the Court agreed with the trial court that “Ulala is more than a mere likeness or literal depiction” of the plaintiff. Although the character and the plaintiff “share similarities,” they also “differ quite a bit” in terms of Ulala’s “extremely tall” and “slender” physique; her graphic roots in Japanese “anime” style; and differences in typical hairstyle, primary costume and dance moves. The space age setting of the game also was unlike “any public depiction of the plaintiff.” The fact that the game was bereft of “caricature, lampoon or parody,” made no difference, according to the decision. The sole issue, set forth in Winter, is whether or not the work is transformative and thereby constitutionally protected – not its category of literary expression.
Far from a “mere imitation” of the plaintiff, the Court found Ulala to be a “fanciful, creative character” existing in the context of a unique and expressive video game and entitled to First Amendment protection.
As of the date of this writing, no petition for appeal to the California Supreme Court has been filed in the Kirby case. If this decision, as well as Comedy III and Winter, had come before White and Wendt in the Ninth Circuit, perhaps Judge Kozinski’s dissents never would have been written. Clearly, the common law of California has placed increased emphasis on First Amendment principles in its recent consideration of right of publicity cases in which celebrity “indicia” were used without license, just as Judge Kozinski urged. This is important, not only for California counsel, but also for entertainment counsel throughout the country whose clients exhibit or distribute works implicating the rights of celebrities who would bring an action based on California law.
Whether or not a particular use will be deemed sufficiently “transformative” to invoke constitutional defenses will not lend itself to a bright line test. Rather, it appears that the issue of whether “significant creativity” transforms an unauthorized use into something beyond “mere celebrity likenesses” will be answered case by case — like the fair use test in copyright — with a gray zone occupying most of the range of risk and certainty compressed at the far ends of the scale.
1 144 Cal. App. 4th 47 (Cal. App. 4th 2006).
2 197 F. 3d 1284, 1285 (9th Cir. 1999), (Kozinski, J. dissenting from denial of rehearing en banc).
3 989 F.2d 1512 (9th Cir. 1993) (Kozinski, J. dissenting from denial of rehearing en banc).
4 21 P.3d 797 (Cal. Sup. Ct. 2001).
5 69 P.3d 473 (Cal. Sup. Ct. 2003).