Retouching Rights: What Do Martha Stewart, O.J. Simpson, Dustin Hoffman, Ann Richards and Oprah Winfrey Have in Common?

Joshua J. Kaufman © 2005

What do Martha Stewart, O.J. Simpson, Dustin Hoffman, Ann Richards and Oprah Winfrey have in common?  All have had photos of themselves doctored (not in necessarily a flattering way) and then found the doctored photo presented to the public where the alteration was not disclosed or authorized. What kind of artistic license is available in the use of a photograph or artwork?  How much manipulation of a photo, an artwork, a trademark or a celebrity’s likeness by a licensee is permitted for inclusion in a licensed product without prior clearance from the licensor?  In a well drafted license Agreement these questions could and should be covered.  However, in many instances, if not most, this is an issue that easily falls between the cracks of a contract and probably is not an issue which had been discussed by and between the parties prior to signing the contract.  It is very likely that the licensee representative who negotiated the contract had no clue that ultimately their art department would undertake modifications or distortions nor would anyone in the subsequent chain of creating the licensed goods, after the image was presented to them for incorporation in or on the product have any idea that an as part of the process that an earlier manipulation of the image had taken place.

There has been a great deal of both commentary and litigation in this area of law.  The most recent episode dealt with a Newsweek magazine cover in which the magazine altered a photograph of Martha Stewart.  It was unanimously condemned as a “major ethical breach” on the part of Newsweek but then Newsweek is involved in a different environment than a typical licensee or are they?  When a magazine presents a photo, people are led to believe that it in fact is an accurate representation of a news fact.  Do not people obtain a licensed product with an artwork, celebrity image or a trademark have that same expectation that what they see is in fact accurate and undoctored of the artwork, trademark or celebrity image?

Several issues need to be addressed when reviewing these questions.  One of the issues is based in copyright law.  A copyright owner enjoys several different and distinct rights in their original creations.  The most obvious is of course to prevent others from copying their work without permission.  They also have the right to prevent subsequent sales or distribution of an infringing copy of their work.  However, in the scenario before us, the right to use the work was granted in a valid licensing agreement.  The licensor gave the licensee the right to incorporate their protected image into the licensed goods.  Does that right allow for the modification of the work?  The right to modify a work is covered by a different subsection of the copyright law which outlines the exclusive rights of the copyright owner.  Specifically the copyright law speaks to the issue as follows:  “The owner of copyright under this Title has the exclusive right to do and to authorize any of the following:  … (2) to prepare Derivative Works based upon the copyrighted work.”  Derivative Work is also defined in the copyright act.  The definition is as follows:  “The derivative work is a work based upon one or more pre-existing works, such as … art reproduction … or any other form in which a work may be re-cast, transformed, or adapted.”  Therefore, only a copyright owner has the right to either, by themselves, or to grant permission to a third party the right to re-cast, transform or adapt their work of art.  Making any significant changes to a licensed artwork without permission of the licensor would be the unauthorized creation of a Derivative Work, a copyright infringement.  It is fairly standard in licensing contracts to provide some latitude to a licensee in regard to the modification of a work so that it will be compatible with the licensed product.  On one end of the spectrum it might be modifying some colors or elongating a piece slightly so that a square piece might fit better on a rectangular object or the cropping of a rectangular object into a circle so that it would fit on a plate or similar type of changes.  The other extreme would be significantly changing the underlying work by removing or adding elements to it, like putting Oprah’s head on Ann Margaret’s body (yes it’s true!) or something somewhat less dramatic.  All these variations can fall under the definition of a Derivative Work.  The extent that changes must be cleared by the licensor should be in the underlining License Agreement.  They might also get pick up under the approval process that is usually granted to the licensor.  However, if the licensee has gone ahead and created the product and has not shown it to the licensor or submits it for approval to the licensor at that late stage and the licensee does not approve the product in addition to a breach of contract there very well may be a copyright infringement suit at issue.  A licensor can of course attempt to raise, “custom of trade” wherein they would argue that notwithstanding what the contract says the custom in the industry would provide that these type of changes are made by “everyone” without permission.  Therefore, it is okay. The law is fairly clear that when there is not a written contract, custom of trade can be introduced in order to help establish the rights of the parties.  On the other hand, when there is a written contract, custom of trade evidence will not even be admitted for the judge or the jury to hear let alone be a determinative fact.  From a copyright point of view, the modification or altering of a licensed image without permission either in the licensing agreement or a specific in writing granting of permission can lead to a copyright infringement claim by the licensor, a termination of the License, and the granting of an injunction stopping the shipment of any of the goods and their ultimate destruction.  Further any retailer who sells (or sold) those goods would also have liability to the licensor.

One case of particular interest for those who use copyright material in the licensing field is the of Jeffrey Hunter versus Winterland Productions and the San Diego Yacht Club.  Hunter is a professional photographer who signed a licensing agreement with Winterland in San Diego wherein he allowed them to manufacture silk screen printed apparel using slides of photographs he had taken of the America’s Cup Yacht Race.  The license allowed defendants the use of the photos as guides, models and examples for illustrations to be used on screen-printed Tee-shirts and other sports wear.  Several years later Winterland and the San Diego Yacht Club created a new line of America cup Tee-shirts which displayed digitally altered versions of the images from Hunter’s photographs.  Hunter sued lost at trial but prevailed on appeal where the court found that the altered use of the photos exceeded the terms and scope of the license and was therefore an unauthorized use and infringed on his copyrights.  Winterland argued because they flipped the images, they pasteurized the colors, changed the backgrounds, etc. that these changes transformed the images on the Tee-shirts from the photographs into illustration and that made their actions appropriate.  The court did not agree that destroying the original images photographic quality in any way gave them the right to make these changes.

What if you have a license to use the name and likeness of a celebrity but in order to better fit the ad campaign or product the celebrities’ images are modified.  Such an action would of course be covered by the earlier copyright discussion as to the photographs but as to the celebrity image new and different set of issues arise.  Depending on the nature of the transformation there may or may not be liability.  In a case involving Dustin Hoffman where not long after he appeared in the movie Tootsie (where for those who do not remember the movie, he dressed as a woman), an article was published in Los Angeles magazine’s 1997 “Fabulous Hollywood Issue” and had as part of the article a section called Grand Illusions where they use computer technology to alter famous film stills to make it appear that the actors were wearing Spring 1997 fashions.   They had 16 different icons of Hollywood’s photos including the above well-known still of Dustin Hoffman from Tootsie.  However they changed Hoffman’s body (in the original he was decked out in a long sleeve red sequined dress) and replaced the head with the body of a male model with different same clothes. (now he was wearing spaghetti strapped cream colored silk evening dress and high-heeled sandals, no wonder he was upset).  Mr. Hoffman took Humbridge at this new portrayal of himself and the fact that the magazine did not have his permission to use his likeness in this manner.  Dustin Hoffman’s suit was unsuccessful as the court agreed with the magazine that their use was a parody and therefore protected by the First Amendment.  However, that ruling did not address the issue that the magazines use of the photo created the false implication that he approved of the use of his name and likeness and that he somehow was associated with the magazine.  The court found this to be a much closer question but since it was a news magazine and a non-commercial use the magazine prevailed.  However, in a purely commercial context the same result might not have been reached.

For example, Muhammad Ali successfully sued Playgirl magazine when back in 1978 they took his head and created a photo which depicted a nude black man seated in the corner of a boxing ring, which was unmistakably recognizable as Muhammad Ali.  The attorneys for Playgirl claimed that the critical question was whether it was a protected use to portray an individual who’s in the limelight and very much a public figure in a magazine of general distribution.  The court found that this was a commercial use “for purposes of trade” that there was no information of a newsworthy dimension to the use of Ali’s image – and Ali got his injunction.

Finally while we are on the topic of celebrity images, if one has the urge to use a look-a-like, because they can’t get permission of the celebrity whose image they would like to use to agree to a license or they want to go beyond the terms of the license that they have with the celebrity and as a result hire a look-a-like for the celebrity that in all likelihood will not get them where they want to go but rather have them on the losing end of a lawsuit.  There were a string of look-a-like cases several years ago in which the original celebrity prevailed.  The leading plaintiff in a number of those cases was none other than Woody Allen.

If you are a licensee and you have an overwhelming urge to modify a licensed image or likeness because you think you can improve it, enhance it or you need to make changes so that it better fits your product or that making certain adaptations will help your ad campaign unless you have those rights clearly spelled out in your agreement, resist the urge, go back get permission or stick with the unaltered artwork, or celebrity image.  Even if you think putting them in a buff body and removing twenty years from the celebrity’s picture would be appreciated, don’t count on it.

Joshua Kaufman is a partner in the law firm of Venable, 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 copyright, art and licensing law.  He is a frequent speaker and 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.