Freedom of speech or a violation of the right of publicity?
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Freedom of speech or a violation of the right of publicity?

In advance of today’s session on trademarks and publicity rights, Karen Bolipata looks at the evolution of the law on the use of brands and celebrities in expressive works.

In 2010, Hallmark Cards used Paris Hilton’s image and catch phrase “That’s Hot” in a greeting card. Hilton sued. One of the issues raised was whether Hallmark was simply exercising free speech or whether it violated Hilton’s right of publicity. It’s a conundrum courts grapple with time and time again, perhaps in increasing degrees with the growth of ever-evolving media: to what extent can brands and celebrities be featured in expressive works without permission?

That question, and just how much the First Amendment will protect, is what today’s panelists will address at The Intersection of Trademark and Publicity Rights with US First Amendment Free Speech Rights. The panelists—Catherine Bridge of The Walt Disney Company, David W. Grace of Loeb & Loeb—and moderator Monique Cheng Joe of NBC-Universal Media will explore how commercial rights are tested when marks, brands and identities are used in creative works including movies, television programs, books and songs. “Right now the issue is being the most vigorously litigated in the context of the video game industry,” Grace says. “There have been a number of cases coming down with inconsistent results.”

Video games and the First Amendment

In 2011, the US Supreme Court ruled in Brown v. Entertainment Merchants Ass’n that video games are protected by the First Amendment. There, the Court said: “Like the protected books, plays, and movies that preceded them, video games communicate ideas—even social messages—through many familiar literary devices (such as characters, dialogue, plot, and music) and through features distinctive to the medium (such as the player’s interaction with the virtual world). That suffices to confer First Amendment protection.” But Grace says the Supreme Court has yet to issue a test on how to balance the competing interests between trademark rights and the rights of publicity. On this point, the panel will look at cases such as Kirby v. Sega of America, Brown v. Electronic Arts, No Doubt v. Activision and Keller v. Electronic Arts to assess the different ways courts have ruled.

Using audiovisual presentation to highlight examples, panelists will also look at the works’ titles. When video games were first released, titles such as PAC-MAN, ASTEROIDS and FROGGER were considered trademarks. But games have evolved significantly since 1981 and could fall into several categories, from single, creative works to those that are serialized. Courts now must consider the interactive nature of the works and their ever-changing characters and sequences. Further, is the title primarily commercial or an important part of the expressive work?

Artistic relevance

The leading case on the matter is Rogers v. Grimaldi, a 1989 dispute involving a Federico Fellini movie named “Ginger and Fred,” over which Ginger Rogers sued to protect her name. The Second Circuit ruled a celebrity’s name can be used “unless the title has no artistic relevance to the underlying whatsoever, or, if it has some artistic relevance, the title explicitly misleads as to the source of the content of the work” or was “simply a disguised commercial advertisement for the sale of goods or services.” This test was used in Parks v. LaFace Records, in which the Sixth Circuit tackled the relevance of the use of Rosa Parks’ name in a song. In it, the hip-hop duo OutKast used “move to the back of the bus” in the lyrics. Other cases of note are: Mattel v. MCA Records, Rebelution v. Perez, and American Dairy Queen v. New Line Productions.

The content of the works—the use of real products, the coincidental use of product and company names and the use of real people and identities—will also be discussed. Wham-O v. Paramount Pictures, for instance, dealt with the use of a brand name in the content of a movie. Typically, this does not require authorization from the trademark owner. Other questions that will be considered are: whether the use of a brand in a movie scene could be considered as free-riding on the fame of the mark, whether the use of the product is trivial, and whether there’s a likelihood of confusion when the name of a fictional brand in a movie coincides with a real-life brand.

Grace says balancing freedom of speech with the right of publicity is especially pertinent to those in the entertainment industry and those hoping to get into the industry. “We hope the attendees are a little bit entertained and they come away with an understanding of the various types of approaches the courts have been taking to balance the competing interests,” Grace says.

CT22 The Intersection of Trademark and Publicity Rights with U.S. First Amendment Speech Rights takes place in room 207 AB at 11:45 am today

Paris Hilton, Ginger Rogers and Rosa Parks weren’t the only ones who sued over unauthorized use of their names.

1983 Johnny Carson sought action against Here’s Johnny Portable Toilets for the use of the phrase popularized by “The Tonight Show.”1998 Dairy Queen sought a preliminary injunction against the film “Dairy Queens.”1999 Dustin Hoffman sued Los Angeles Magazine and its publisher for featuring digitally manipulated images of his character in “Tootsie” in a photo spread.2002 Lucasfilm, producer of “Star Wars,” sought action against the pornographic film “Star Ballz”; Mattel sued MCA over the Aqua song “Barbie Girl”.2010 Lindsay Lohan sued financial company E-Trade for using a “milkaholic” baby named Lindsay in a TV commercial.

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