Right of Publicity and First Amendment

June 22, 2001


Michael I. Rudell

Court Borrows from Copyright Law in Reconciling Right of Publicity with the First Amendment

(Originally published in the Entertainment Law column in the New York Law Journal, June 22, 2001.)

The California Supreme Court has issued an opinion attempting to reconcile the conflict between a statute granting the right of publicity to specified successors in interest of deceased celebrities and the First Amendment.1 It holds that defendant’s charcoal drawing of The Three Stooges as reproduced on lithographs and T-shirts violates that statute and is not entitled to protection of the First Amendment.

Comedy III is the registered owner of all rights to the former comedy act known as The Three Stooges. Gary Saderup is an artist who, for 25 years, has made charcoal drawings of celebrities which are used to create multiple reproductions in the form of lithographic prints and silkscreened images on T-shirts. He not only creates the original drawings but also is actively involved in the lithographic and silkscreening processes.

Without securing the consent of Comedy III, Saderup sold lithographs and T-shirts bearing a likeness of The Three Stooges reproduced from a charcoal drawing had he made. It is profits from the sale of the unlicensed lithographs and T-shirts were approximately $75,000. As part of the stipulated facts in the lawsuit, it was agreed that Comedy III’s reasonable attorney fees were $150,000.

In 1984, the California legislature enacted a statute (now section 990 of its Civil Code) that prohibits the unauthorized use of a deceased personality’s name, voice, signature, photograph, or likeness in advertising, or in products, and provides that the rights recognized thereunder are property rights that are transferable by contract or by trust or will.

Any person who claims to be a transferee or survivor mentioned in the statute must register the claim with the Secretary of State of California before recovering damages. The right to require consent under the statute terminates if there is neither a transferee nor a survivor, or 70 years after the death of the personality. Among the exemptions contained in the statute are uses in connection with any news, public affairs or sports broadcast or account, or any political campaign.

The California Court of Appeals affirmed a lower court judgment of $225,000 against Saderup, who appealed.

After describing the constitutional issue raised by this case as a difficult one, the Court indicates the two commonly acknowledged purposes of the First Amendment are to preserve an uninhibited marketplace of ideas and to foster a fundamental respect for individual development and self-realization. The right of publicity has a potential for frustrating the fulfillment of both of these purposes. Because celebrities take on public meaning, the appropriation of their likenesses may have important uses in uninhibited debate on public issues. Celebrities also take on personal meanings to many individuals in society and the creative appropriation of celebrity images can be an important avenue of individual expression. The very importance of celebrities in society means that the right of publicity has the potential of censoring significant expression by suppressing alternative versions of celebrity images that are iconoclastic or irreverent. The right of publicity derived from public prominence does not confer a shield to ward off caricature, parody and satire. Rather prominence invites creative comment.

The Court also notes that Saderup’s creations do not lose their constitutional protection because they are for the purposes of entertaining rather than informing. The line between informing and entertaining is too elusive for the protection of a basic right. Also, entertainment as a mode of self-expression is entitled to constitutional protection irrespective of its contribution to the marketplace of ideas.

Nor does the fact that the expression takes the form of nonverbal, visual representation remove it from the ambit of First Amendment protection. Visual art is as wide-ranging in its depiction of ideas, concepts and emotions as any book, treatise, pamphlet or other writing, and is entitled to full First Amendment protection.

The U.S. Supreme Court has made it clear that a work of art is protected by the First Amendment even if it conveys no discernable message.2 And the fact that Saderup’s art appears in large part on a less conventional avenue of communication – T-shirts – does not result in reduced First Amendment protection; for First Amendment doctrine does not disfavor nontraditional media of expression.

Having recognized the high degree of First Amendment protection for noncommercial speech about celebrities, the Court indicates that it need not conclude that all expression that interfaces with the right of publicity receives such protection. The right of publicity, like copyright, protects a form of intellectual property that society deems to have some social utility.

The Court states that “In sum, society may recognize, as the Legislature has done here, that a celebrity’s heirs and assigns have a legitimate protectible interest in exploiting the value to be obtained from merchandising the celebrity’s image, whether that image be conceived as a kind of natural property right or as an incentive for encouraging creative work…there is no question that the Legislature has a rational basis for permitting celebrities and their heirs to control the commercial exploitation of the celebrity’s likeness.”

The Court next reviews the well-known Zacchini case, the only U.S. Supreme Court decision which directly addresses the right of publicity.3 There Zacchini, the performer of a human cannonball act, sued a television station that had videotaped and broadcast his entire performance without his consent. The court held that the First Amendment did not protect the television station against a right of publicity claim under Ohio common law. Although Zacchini was not an ordinary right of publicity case, in that the defendant television station had appropriated the plaintiff’s entire act, nevertheless two principles enunciated in that action apply here: (1) state law may validly safeguard forms of intellectual property not covered under federal copyright and patent law as a means of protecting the fruits of a performing artist’s labor and (2) the interest of the state in preventing the outright misappropriation of such intellectual property by others is not automatically trumped by the interest in free expression or dissemination of information; rather, as in the case of defamation, the state law interest and the interest in free expression must be balanced, according to the relative importance of the interests at stake.

After citing other cases that propose explicit or implicit balancing tests, the Court notes that any test that attempts to distinguish between forms of artistic expression protected by the First Amendment and those that must give way to the right of publicity must incorporate the principle that the right of publicity cannot, consistent with the First Amendment, be a right to control the celebrity’s image by censoring disagreeable portrayals. What the holder of that right possesses is not a right of censorship, but a right to prevent others from misappropriating the economic value generated by the celebrity’s fame through merchandising of the name, voice, signature, photograph or likeness of the celebrity.

Noting that some commentators have proposed importing the fair use defense from copyright law into the related area of the right of publicity, the Court indicates that a wholesale importation of this doctrine would not be advisable. However, the first fair use factor – “the purpose and character of the use” does, according to the Court, seem particularly pertinent to the task of reconciling the rights of free expression and publicity. The central inquiry in this factor is to see whether the new work supersedes the objects of the original creation or, instead, adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.”

The inquiry into whether a work is “transformative” appears to the Court to be necessarily at the heart of any judicial attempt to reconcile the right of publicity with the First Amendment. 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 that trespass, the state law interest in protecting the fruits of artistic labor outweighs the expressive interests of the imitative artist. On the other hand, when a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but also is less likely to interfere with the economic interest protected by the right of publicity.

Another way of stating the inquiry is whether the celebrity likeness is one of the raw materials from which an original work is synthesized, or whether the depiction or imitation of the celebrity is the very sum and substance of the work in question. The Court asks, in other words, whether the product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness. In this context, “expression” means expression of something other than the likeness of the celebrity.

The Court emphasizes that when the work is transformative, courts are not to be concerned with the quality of the artistic contribution – vulgar forms of expression fully qualify for First Amendment protection.

As a subsidiary inquiry, particularly in close cases, the Court may consider whether the marketability and economic value of the challenged, work derives primarily from the fame of the celebrity depicted. If not, there would generally be no actionable right of publicity. When the value of the work comes principally from some source other than the fame of the celebrity – from the creativity, skill and reputation of the artist – it may be presumed that sufficient transformative elements are present to warrant First Amendment protection.

In sum, when an artist is faced with a right of publicity challenge to his or her work, he or she may raise as an affirmative defense that the work is protected by the First Amendment inasmuch as it contains significant transformative elements or that the value of the work does not derive primarily from the celebrity’s fame.

Applying these concepts to the present case, the inquiry is whether Saderup’s work is sufficiently transformative. He argues that all portraiture involves creative decisions, that, therefore, no portrait portrays a mere literal likeness, and that, accordingly, all portraiture including reproductions is protected by the First Amendment. In rejecting this contention, the Court finds that under the test formulated above, when an artist’s skill and talent is manifestly subordinate to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit his or her fame, the new artist’s right of free expression is outweighed by the right of publicity. An artist depicting a celebrity must contribute something more than a “merely trivial” variation; rather, he or she must create something recognizably his own to qualify for legal protection.

The Court discerns no significant transformative or create contribution in Saderup’s work. “His undeniable skill is manifestly subordinated to the overall goal of creating literal, conventional depictions of The Three Stooges so as to exploit their fame. Indeed, were we to decide that Saderup’s depictions were protected by the First Amendment, we cannot perceive how the right of publicity would remain a viable right other than in cases of falsified celebrity endorsements.” Also, the Court finds that the marketability and economic value of Saderup’s work derives primarily from the fame of celebrities depicted.

The Court indicates that under section 990, if Saderup wishes to continue to depict The Three Stooges as he has done, he may do so only with the consent of the right-of-publicity holder.

Emanating from the highest court in a state which is awash with celebrities, this decision is an important one. Establishing a somewhat subjective test for reconciling important and conflicting rights, it will be cited and intensively analyzed in years to come.


1 Comedy III Productions, Inc. v. Saderup, Inc. et al., Supreme Court of California, No. S076061 (Cal. 2001).

2 Hurley v. Irish-American Gay, Lesbian and Bisexual Group of Boston, Inc., 515 U.S. 557, (1995).

3 Zacchini v. Scripps – Howard Broadcasting Co., 433 U.S. 562 (1977).