Artist’s Rights v. The Right of Publicity

By: Joshua Kaufman, Esq. ã 2002

What do the Three Stooges, Tiger Woods and Cheryl Tiegs have in common?

All have been involved in litigation in which they tried to limit the ability of artists to use their likeness. Yet, the results of these cases ended up expanding an artist’s right to depict celebrities without permission or the payment of royalties.

Artists who incorporate celebrities' images in their artworks, often are on the receiving end of cease and desist letters from attorneys representing celebrities or their estates.

The letters received state, in no uncertain terms, that the artists are violating the celebrities' rights. They are quite convincing and to the uninitiated, very frightening. They usually have the desired effect of scaring the artists receiving them to either remove the celebrity image, pull the artwork altogether or pay a royalty.

As one who represents both celebrities and artists, I have had the opportunity to explore the issue from both sides of the equation. While in many, if not most cases, the celebrities will be correct in their position but it is not always the case.

The right of publicity, in a simplified format, can be stated as the right of a person to control the commercial use of his or her name or likeness. However, a number of exceptions have developed over the last several years. Licensing rights which stemmed from the rights of publicity are based on a mix of laws. Unlike copyright and trademark laws which are federal and have a degree of uniformity, rights a publicity are based on state laws. Each State’s approach can be and often are unique. The overall effect is a patchwork quilt of laws and interpretations. Often, the results of the case against an artist will hinge not on the art or celebrity but rather where the lawsuit has been filed.

To evaluate a right of publicity claim, one would have to look at 34 separate state laws or common law cases to determine if there was an infringement in a particular jurisdiction. Every State's law differ greatly in scope of protection, who is eligible to claim the right, if it is a right is descendable to the heirs of the celebrity and to the duration of the right. Each State has general exceptions. For example, it is almost always permitted to use a celebrities' likeness in a news story, in regard to public affairs, a sports broadcast in a political context all without permission of the celebrity.

California has an exclusion for "single and original works of art". Does this is mean a single work of art that is also original or is the statute creating two classes of excluded works? One, an work embodied in a single manifestation and a separate category for "original" works of art. What would a non single yet original work be? An example might be found in American import laws. The U.S. A. does not impose a tariff on imported original works of art. Under U.S. Custom's regulations an original work of art can be a multiple. For example, sculptures can be part of an edition of up to ten and still be considered an original work of art. Therefore, it is clearly OK for an artist to paint or sculpt a one of kind of a celebrity without permission and perhaps a small limited edition is permitted as well. It is an interesting question and there are no cases on it, yet.

Back in 1993, a sculptor in New York was commissioned to cast an elephant for a wildlife preservation project. To prove that the process would not be harmful to the elephant, super model, Cheryl Tiegs, who was working with the environmental group on the project, agreed to be cast to test the process. A life size body cast of Cheryl Tiegs was made. It was brought over Ms. Tiegs’ apartment to show her. A workman dropped something on the cast destroying it. The sculptor sued for the loss of revenue he anticipated from the sale of the sculptures depicting Ms. Tiegs' torso. Tiegs filed a motion to dismiss the case saying that she would not have granted the sculptor permission to sell the sculpture. That, without her permission, the sculptor would have been unable to sell the sculptures embodying her likeness. Rendering the fact that the sculpture was destroyed irrelevant as it could never have been exploited. The Court held that, " Although a person’s right of publicity is protected under New York law, it is a very significant right, it must fall to a constitutionally protected right of freedom of speech. This includes nonverbal expression that covers works of art such a sculptures." The court went on to state that the statute did not apply to "plaintiff’s actual or intended acts" that "an artist may make a work of art that includes a recognizable likeness of a person without her or his written consent and sell least a limited number of copies thereof without violating his or her right of publicity in New York."

Moving to Ohio in the year 2000, we find Tiger Woods trying to stop an artist from selling prints depicting his playing at the Masters. Tiger brought a claim based on trademark law and his right of publicity. The Judge in this Federal court action first found that Tiger Woods had not established his likeness as a trademark. The law set out a number of criteria for the establishment of the trademark and Tiger Woods did not satisfy them. Simply being well-known and recognizable, does not in an of itself create a trademark in one’s likeness. The Court found that even though Tiger Woods had a legitimate trademark in his name, that did not translate into the use of his likeness as a trademark.

After dismissing the trademark claim, the Court turned its attention to Tiger Woods’ right of publicity claim. The Court cited Supreme Court cases which held to write a publicity right is limited under certain circumstances by the First Amendment. The artist argued that his prints are protected by the First Amendment because they are works of art and did not constitute commercial speech. Rather, the work expresses, "The majesty of a newsworthy moment" (Tiger Woods playing at the Masters). The claim made by Tiger Woods was that the prints were "merely sports merchandise" and therefore, not entitled to First Amendment protection. In regard to this argument, the court found that the images conveyed a message and differed from a poster which merely replicated an existing photograph . The Court went on to hold that paintings and drawings are protected by the First Amendment as are limited edition prints made by the artist in this circumstance (the edition size was 5000 prints). It also alluded to protection for photographs and sculptures. The artist prevailed and was allowed to continue selling his prints.

Switch to California and the spring of 2001. This time, we had a circumstance in which an artist created a charcoal drawing of the Three Stooges and sold them as lithographs and on T-shirts. The likenesses of the Three Stooges were extremely realistic. The owner of the rights in the Three Stooges likeness sued under California law, which prevents the unauthorized use of the deceased person's likeness "on or in products, merchandise, goods or for the purposes of advertising, selling or soliciting purchasers of products merchandise, goods or services". The artist argued, the statute did not apply since the lithographs and T-shirts, which embodied the image, did not constitute an endorsement or sponsorship of a product. The artist also made First Amendment claims, which while the Court found had merit, in this instance, the Court did not agree with the artist. The Court adopted a version of the copyright law’s fair use test and found that the image was not sufficiently transformative to enjoy the First Amendment protection based on a fair use analysis. What is important for artists about this case is that the court carved out an important exception to the right of publicity for art works. It held that if the celebrities' likeness is just "raw material" for an original art work and it is the artistic expression that is the dominant attribute of the art work, then the artist’s First Amendment rights will trump the celebrities' right of publicity. The Court used Andy Warhol’s portraits as an example of the type of art where the artist’s contribution was paramount and the artist’s rights would supersede the celebrity's right of publicity.

What these three cases show is a trend in which courts are finding First Amendment protection for artists when they are using the celebrities' images in certain art works. No artist should take these cases as an invitation for the carte blanche exploitation of a celebrity's likeness without permission. That would be foolhardy, but it also means that instant capitulation in the face of a cease and desist letter may also not be appropriate. These cases provide a need for a close analysis as to whether or not the celebrities' permissions are needed in regard to the exploitation of their images in art related projects. The review must be done on a case by case basis.

--------------------------------

Joshua Kaufman is a partner in the law firm of Venable, Baetjer, Howard and Civiletti, LLP. While he is based in Washington, DC, his practice is national in scope. He is one of the country’s foremost attorneys in the field of art and licensing law. He has published over 200 articles on various topics in the field. He is also an adjunct professor of law at American University Law School. A large number of his articles can be read and downloaded from his web site at www.jjkaufman.com.