In a previous article, I discussed the right of publicity in New York. I wrote that content creators are not obligated to receive consent from the persons at the subject of their creative works, if the works are newsworthy, of public interest, or if the references to, or inclusion of, the persons at the subject of their creative works is de minimis. I will now discuss the current right of publicity law in California and how it affects content creators.
No one has the Right to Own History
In the influential decision handed down in De Havilland v. FX Networks, LLC, 21 Cal.App.5th 845 (Cal. Ct. App. 2018), the Ninth Circuit Court of Appeals in California makes it even more clear that the First Amendment is a mighty shield, protecting content creators who wish to chronicle the exploits of famous people. Further, even conduct by non-famous people is afforded First Amendment protection is such conduct has historical or newsworthy significance. The opinion reads in part:
Books, films, plays, and television shows often portray real people. Some are famous and some are just ordinary folks. Whether a person portrayed in one of these expressive works is a world-renowned film star — “a living legend” — or a person no one knows, she or he does not own history. (emphasis added)
The words, “she or he does not own history,” are groundbreaking and should not be overlooked. The Ninth Circuit, the highest federal court in America’s most populous state, and home to Hollywood, arguably the entertainment center of the world, states definitively that no one has the exclusive write to recount history in expressive works. The words should embolden content creators as it equips them with controlling authority to dramatize, discuss, criticize, and reference the lives of celebrities without the fear of incurring legal liability.
The controversy at issue in De Havilland was that legendary film actress, Olivia de Havilland, objected to the way she was portrayed in the television docuseries, Feud, by Academy Award-winning actress Catherine-Zeta Jones. De Havilland believed her permission was needed for the portrayal, which was not sought, based on the advice she received from Hollywood insiders. The Court disabused Ms. De Havilland when it wrote, “Feud’s creators did not purchase or otherwise procure de Havilland’s ‘rights’ to her name or likeness does not change this analysis. [T]he First Amendment simply does not require such acquisition agreements.”
California vs. New York
Importantly for this discussion, the De Havilland court clarified an issue that is at odds with New York’s Second Circuit right of publicity jurisprudence through its discussion of Comedy III Prods., Inc. v Gary Saderup, Inc., 25 Cal 4th 387, 106 Cal Rptr 2d 126, 21 P3d 797 (2001). In New York, the substantial fictionalization of a person’s life robs the content creator of First Amendment protections, since New York courts conclude that a substantially fictionalized work is either no longer newsworthy or fails to serve the public interest.
But in California, fictionalization is deemed “transformative.” Transformative is a term taken from copyright law. Transformative works may escape copyright infringement claims under the “fair use” doctrine.
In Comedy III Prods., Inc., the court applied copyright’s transformative test to right of publicity cases (a test highly deferential to the First Amendment), which has since become the standard test in evaluating right of publicity claims as they relate to expressive works. This issue in Comedy III Prods., Inc. was that the defendant-artist created a lithograph of “The Three Stooges” and used it to make silk-screened T-shirts. The plaintiff, a company that owned the rights to the former comedy act, objected to the sale of the T-shirts. The resolution to the case involved the creation of the Comedy III-transformative test, which has several inquiries:
(1) Whether and to what extent the new work is “transformative;” (2) 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; and (3) Does the marketability and economic value of the challenged work derive primarily from the fame of the celebrity depicted? If this question is answered in the negative, then there would generally be no actionable right of publicity.
Thus, in California, a person who is accused of infringing one’s right of publicity may be able to use the First Amendment freedom of expression/transformative defense. However, pursuant to Comedy III, he must show that the work which contains the appropriated image, likeness, name or signature is an expressive work, is newsworthy, or has public interest, and it is transformative. But in New York, the transformative inquiry is not necessary. In fact, what’s deemed “transformative” in California, would probably be found “substantial fictionalization” in New York. Therefore, content creators must navigate a precariously fine line in complying with the right of publicity laws in the various jurisdictions in which their creative works will be distributed.
Don’t Take Too Much
Moreover, even though content creators may escape initial liability in California by showing their work is transformative or, the creators may nevertheless incur liability if they took too much of the subject’s persona or his act (the thing he does that makes him newsworthy or of public interest), irrespective of how newsworthy the expressive work may be.
In the seminal case of Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 563–64 (1977), the nation’s highest court delimited the line where the federal government’s First Amendment protection ends and state’s right of publicity law begins. In Zacchini, Hugo Zacchini was the plaintiff who believed his right of publicity had been violated by a local TV station that filmed the entirety of his 15-second “human cannonball” act. Zacchini brought an action against the television station for violation of his right of publicity under Ohio law. The U.S. Supreme Court considered but rejected the station’s First Amendment defense, in balancing Ohio’s interest, in enforcing the law.
According to the Court, the state was protecting “the proprietary interest of the individual in his act” and “prevent[ing] unjust enrichment by the theft of goodwill,” in order to provide “an economic incentive for [the individual] to make the investment required to produce a performance of interest to the public.” The Court found particularly problematic the fact that the station broadcast the entire act because it posed a substantial threat to “the economic value of that performance,” and protection provided an “economic incentive” for him to develop such a performance of public interest. In the battle of a performer’s right to make a living versus the media’s First Amendment right to inform the public of such performance, the Court held that the First Amendment did not prevent Ohio from protecting Zacchini’s right of publicity. The doctrine established in Zacchini, that by including the totality of a performer’s commercialized routine or performance in an otherwise protected expressive work will incur liability, is reflected in later cases.
In sum, a content creator in
California must balance a person’s right of publicity accorded to him by the
state in which he resides against the content creator’s First Amendment right
to express his opinions about said person. Further, the content creator must
ensure that his creative work is transformative and that he doesn’t take too
much of the person’s personality of whatever is that makes the person
newsworthy or of public interest.
 First, the likeness is more likely to be transformative if it is just one of the “raw materials” from which the original work is made rather than if the depiction is the entire substance of the work. Second, the work will be protected if it is “primarily the defendant’s own expression” so that a purchaser would be motivated to buy it as the work of that artist, and is more than just the celebrity’s likeness. Third, the court must ask whether either the “literal and imitative or the creative elements predominate.” Fourth, in close cases, courts should inquire as to whether the “marketability and economic value of the challenged work” comes more from the celebrity’s fame or from the artist’s rendering. Fifth, the work is not transformative when the artist’s “skill and talent is manifestly subordinated to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit his or her fame.” Keller v. Electronic Arts, Inc., 724 F.3d 1268, 1274, 107 U.S.P.Q.2d 1629 (9th Cir. 2013), quoting Comedy III, 21 P.3d 809–10.