Right of publicity case against Shaquille O’Neal over a photo he tweeted and posted to Instagram moves forward

19569476993_1a7bba1a85_o

A federal court has held that a plaintiff has successfully pled a claim of “appropriation” (essentially, right of publicity claim) against former NBA star Shaquille O’Neal, for Shaq’s use of plaintiff’s photo on Twitter and Instagram. The case is useful inasmuch as it shows how courts will consider social media as providing a benefit to its user.

Shaq acquired a photo of plaintiff, who suffers from a condition that affects his hair, skin and teeth, then placed a photo of himself making a contorted face next to the photo, apparently to imitate the way plaintiff appeared. Given that Shaq has millions of followers, this garnered many, many likes and comments. (I of course won’t republish the image here, but if you really want to see it, just do a Google Image search using the parties’ last names.)

Plaintiff sued under several theories, including intentional infliction of emotional distress, appropriation, and unjust enrichment. Shaq moved to dismiss most of the claims. The court did throw out some of the claims (e.g., negligence — plaintiff has pled Shaq acted intentionally). On the appropriation claim, the court, applying Michigan law, held that Shaq had made use of the plaintiff’s name or likeness for his own purposes and benefit. The court rejected Shaq’s argument that plaintiff lacked any pecuniary interest in his identify, holding that the tort of appropriation under Michigan law “is not limited to commercial appropriation” and “applies also when the defendant makes use of the plaintiff’s name or likeness for his own purposes and benefit, even though the use is not a commercial one, and even though the benefit sought to be obtained is not a pecuniary one.”

The court went on to clarify that even if the tort of appropriation under Michigan law did require a plaintiff to demonstrate a significant commercial or pecuniary interest in his identity, plaintiff’s case still survived the motion to dismiss. “[A] plaintiff need not be a national celebrity to demonstrate significant commercial value.”

Binion v. O’Neal, No. NO. 15-60869, 2016 WL 111344 (S.D. Fla., Jan. 11, 2016).

Evan Brown is a Chicago attorney advising enterprises on important aspects of technology law, including software development, technology and content licensing, and general privacy issues.

California court okays lawsuit against mugshot posting website

The Court of Appeal of California has held that defendant website operator – who posted arrestees’ mugshots and names, and generated revenue from advertisements using arrestees’ names and by accepting money to take the photos down – was not entitled to have the lawsuit against it dismissed. Defendant’s profiting from the photos and their takedown was not in connection with an issue of public interest, and therefore did not entitle defendant to the relief afforded by an anti-SLAPP motion.

Plaintiff filed a class action lawsuit against defendant website operator, arguing that the website’s practice of accepting money to take down mugshots it posted violated California laws against misappropriation of likeness, and constituted unfair and unlawful business practices.

Defendant moved to dismiss, arguing plaintiff’s claims comprised a “strategic lawsuit against public participation” (or “SLAPP”). California has an anti-SLAPP statute that allows defendants to move to strike any cause of action “arising from any act of that person in furtherance of the person’s right of petition or free speech under the United States Constitution or the California Constitution in connection with a public issue …, unless the court determines that the plaintiff has established that there is a probability that the plaintiff will prevail on the claim.”

The court held that the posting of mugshots was in furtherance of defendant’s free speech rights and was in connection with a public issue. But the actual complained-of conduct – the generating of revenue through advertisements, and from fees generated for taking the photos down – was not protected activity under the anti-SLAPP statute.

Because the claims did not arise from the part of defendant’s conduct that would be considered “protected activity” under the anti-SLAPP statute, but instead arose from other, non-protected activity (making money off of people’s names and photos), the anti-SLAPP statute did not protect defendant. Unless the parties settle, the case will proceed.

Rogers v. Justmugshots.Com, Corp., 2015 WL 5838403, (Not Reported in Cal.Rptr.3d) (October 7, 2015)

Evan Brown is an attorney in Chicago helping clients manage issues involving technology and new media.

Court denies request of plaintiffs in right of publicity suit to exhume the body of Aunt Jemima

The great-grandsons of Anna S. Harringon, whose image formed the basis for Aunt Jemima, sued Quaker Oats Company and others for $2 billion claiming that defendants failed to pay royalties to Harrington’s estate after her death in 1955. One of the allegations in the case is that defendants played a role in Harrington’s death. Apparently, in an effort to support those allegations, plaintiffs sought an order from the US District Court for the Northern District of Illinois (where the matter is pending) allowing them to exhume the body of their great-grandmother for evidence of this malfeasance.

The court denied the request. Apart from it being just a bizarre ask, it turns out the “evidence” upon which the defendants’ role in Aunt Jemima’s death was based on a parody article from Uncyclopedia. In denying the motion, the court found the following:

The motion is primarily based on statements purportedly made by Quaker Oats executives about the death of the woman who had been identified as “Aunt Jemima.” But the source of the information is an uncyclopedia.wikia.com article, which is a parody website of Wikipedia. Uncyclopedia proudly bills itself as “an encyclopedia full of misinformation and utter lies.” See uncyclopedia.wikia.com/wiki/Uncyclopedia:About.

The court also threatened the pro se plaintiffs: “Plaintiffs must take greater care in their submissions to the Court, or else face sanctions and, if litigation abuse continues, outright dismissal of the case.”

Hunter et al. v. PepsiCo Inc. et al., No. 1:14-cv-06011 (N.D. Ill. October 21, 2014)

BTW: Some info about Anna Harrington’s grave.

Evan Brown is an attorney in Chicago advising clients on matters dealing with technology, the internet and new media.

The trademark and right of publicity woes of having a cryptocurrency named after you

Not too surprisingly, Kanye West’s lawyers have demanded the developers of the Coinye West cryptocurrency not use his name. The somewhat obnoxious letter shows that Kanye’s lawyers are asserting, among other things, trademark infringement and right of publicity misappropriation.

Russell Brandom at the Verge observes that “[o]nce the code is public, the original coders will be unable to prevent its use, forcing West’s legal team to prosecute every instance of Coinye individually.”

That observation raises a couple of interesting points. The first one is more of a clarification — once the code is in the wild, we should assume Kanye would only care to stop the use of his name, and would not seek (nor have any basis upon which) to stop anyone from using the code.

Stopping users of a cryptocurrency from using the name of that cryptocurrency could be a bit tough. Kanye’s lawyer threatens to “purse all legal remedies against any business that accepts the purported COINYE WEST currency.”

Infringement and misappropriation both depend on a use of the offending term in a commercial way. But users of the decentralized system, and the vendors who accept that currency, are not providers of any goods or services onto which Kanye’s identity will be attached. If one is merely using the currency as a tool, it’s hard to see how that’s any different from implicating the rights of the historical figures who appear on paper currency. So might it all be about the Benjamins? Maybe not at all.

Guy faces lawsuit for using another man’s Facebook pics to send sexually explicit communications to undercover cops

Defendant emailed three pictures, thinking he was communicating with two 14-year-old girls. But he was actually communicating with a police detective. And the pictures were not of defendant, but of plaintiff — a cop in a neighboring community. The pictures were not sexually explicit, but the accompanying communications were. Defendant had copied them from plaintiff’s Facebook page.

Plaintiff and his wife sued defendant under a number of tort theories. Defendant moved to dismiss plaintiffs’ claims for false light publicity and intentional infliction of emotional distress. The court denied the motion.

It found that the false light in which defendant placed plaintiff through his conduct would be highly offensive to a reasonable person, and that defendant had knowledge of or acted in reckless disregard as to the falsity of the identity of the person in the photo, and the false light into which the plaintiff would be placed.

As for the intentional infliction of emotional distress claim, the court found that: (1) defendant intended to inflict emotional distress or that he knew or should have known that emotional distress was the likely result of his conduct; (2) that the conduct was extreme and outrageous; (3) that the conduct was the cause of plaintiff’s distress; and (4) that the emotional distress sustained by the plaintiff was severe.

Defendant argued that his conduct was not extreme and outrageous. The court addressed that argument by noting that:

[Defendant] cannot do that with a straight face. The test is whether “the recitation of the facts to an average member of the community would arouse his resentment against the actor and lead him to exclaim, Outrageous!” . . . This is such a case.

Plaintiff’s wife’s intentional infliction of emotional distress claim survived as well. This was not, as defendant argued, an allegation of bystander emotional distress, such as that of a witness to an automobile accident. Defendant’s conduct implied that plaintiff was a sexual predator. This would naturally reflect on his spouse and cause her great personal embarrassment and natural concern for her own personal health quite apart from the distress she may have experienced from observing her husband’s own travail.

Dzamko v. Dossantos, 2013 WL 5969531 (Conn.Super. October 23, 2013)

Seventh Circuit tosses right of publicity case against Joan Rivers

Bogie v. Rosenberg, — F.3d —, 2013 WL 174113 (7th Cir. 2013)

The Seventh Circuit has held it was not an invasion of privacy, nor a misappropriation of plaintiff’s right of publicity, to include a video clip of a 16-second conversation between plaintiff and comedian Joan Rivers filmed backstage. These claims failed under Wisconsin law.

Someone filmed plaintiff having a conversation with Joan Rivers about the comments a heckler made in the just-concluded show. The producers of a documentary about Rivers included the clip in their work. The clip comprised 0.3 percent of the entire work.

Plaintiff sued, alleging claims under Wisconsin law for invasion of privacy and misappropriation of her right of publicity. The district court dismissed her claims for failure to state a claim. The Seventh Circuit affirmed.

The privacy claim failed because, as the court found, plaintiff enjoyed no reasonable expectation of privacy in the backstage context where the conversation took place. There were several people around, and the “din of chatter” could be heard in the background. The court also found that the inclusion of the video would not be offensive to a reasonable person. The court rejected plaintiff’s argument that her embarrassment over the contents of her communications contributed to a finding of offensiveness — quoting from a popular treatise, the court noted that the law “does not protect one from being associated with highly offensive material, but rather from a highly offensive intrusion on privacy.”

The court held there was no misappropriation of plaintiff’s right to publicity, finding the inclusion of the video subject to the “public interest” exception to the Wisconsin statute. The film’s objectives were broader than just showcasing Rivers — it was to portray generally America’s interest in comedy and show business. The court also found the clip to be subject to the “incidental use” exception — it was but a tiny portion of the overall work.

Six interesting technology law issues raised in the Facebook IPO

Patent trolls, open source, do not track, SOPA, PIPA and much, much more: Facebook’s IPO filing has a real zoo of issues.

The securities laws require that companies going public identify risk factors that could adversely affect the company’s stock. Facebook’s S-1 filing, which it sent to the SEC today, identified almost 40 such factors. A number of these risks are examples of technology law issues that almost any internet company would face, particularly companies whose product is the users.

(1) Advertising regulation. In providing detail about the nature of this risk, Facebook mentions “adverse legal developments relating to advertising, including legislative and regulatory developments” and “the impact of new technologies that could block or obscure the display of our ads and other commercial content.” Facebook is likely concerned about the various technological and legal restrictions on online behavioral advertising, whether in the form of mandatory opportunities for users to opt-out of data collection or or the more aggressive “do not track” idea. The value of the advertising is of course tied to its effectiveness, and any technological, regulatory or legislative measures to enhance user privacy is a risk to Facebook’s revenue.

(2) Data security. No one knows exactly how much information Facebook has about its users. Not only does it have all the content uploaded by its 845 million users, it has the information that could be gleaned from the staggering 100 billion friendships among those users. [More stats] A data breach puts Facebook at risk of a PR backlash, regulatory investigations from the FTC, and civil liability to its users for negligence and other causes of action. But Facebook would not be left without remedy, having in its arsenal civil actions under the Computer Fraud and Abuse Act and the Stored Communications Act (among other laws) against the perpetrators. It is also likely the federal government would step in to enforce the criminal provisions of these acts as well.

(3) Changing laws. The section of the S-1 discussing this risk factor provides a laundry list of the various issues that online businesses face. Among them: user privacy, rights of publicity, data protection, intellectual property, electronic contracts, competition, protection of minors, consumer protection, taxation, and online payment services. Facebook is understandably concerned that changes to any of these areas of the law, anywhere in the world, could make doing business more expensive or, even worse, make parts of the service unlawful. Though not mentioned by name here, SOPA, PIPA, and do-not-track legislation are clearly in Facebook’s mind when it notes that “there have been a number of recent legislative proposals in the United States . . . that would impose new obligations in areas such as privacy and liability for copyright infringement by third parties.”

(4) Intellectual property protection. The company begins its discussion of this risk with a few obvious observations, namely, how the company may be adversely affected if it is unable to secure trademark, copyright or patent registration for its various intellectual property assets. Later in the disclosure, though, Facebook says some really interesting things about open source:

As a result of our open source contributions and the use of open source in our products, we may license or be required to license innovations that turn out to be material to our business and may also be exposed to increased litigation risk. If the protection of our proprietary rights is inadequate to prevent unauthorized use or appropriation by third parties, the value of our brand and other intangible assets may be diminished and competitors may be able to more effectively mimic our service and methods of operations.

(5) Patent troll lawsuits. Facebook notes that internet and technology companies “frequently enter into litigation based on allegations of infringement, misappropriation, or other violations of intellectual property or other rights.” But it goes on to give special attention to those “non-practicing entities” (read: patent trolls) “that own patents and other intellectual property rights,” which “often attempt to aggressively assert their rights in order to extract value from technology companies.” Facebook believes that as its profile continues to rise, especially in the glory of its IPO, it will increasingly become the target of patent trolls. For now it does not seem worried: “[W]e do not believe that the final outcome of intellectual property claims that we currently face will have a material adverse effect on our business.” Instead, those endeavors are a suck on resources: “[D]efending patent and other intellectual property claims is costly and can impose a significant burden on management and employees….” And there is also the risk that these lawsuits might turn out badly, and Facebook would have to pay judgments, get licenses, or develop workarounds.

(6) Tort liability for user-generated content. Facebook acknowledges that it faces, and will face, claims relating to information that is published or made available on the site by its users, including claims concerning defamation, intellectual property rights, rights of publicity and privacy, and personal injury torts. Though it does not specifically mention the robust immunity from liability over third party content provided by 47 U.S.C. 230, Facebook indicates a certain confidence in the protections afforded by U.S. law from tort liability. It is the international scene that gives Facebook concern here: “This risk is enhanced in certain jurisdictions outside the United States where our protection from liability for third-party actions may be unclear and where we may be less protected under local laws than we are in the United States.”

You have to hand it to the teams of professionals who have put together Facebook’s IPO filing. I suppose the billions of dollars at stake can serve as a motivation for thoroughness. In any event, the well-articulated discussion of these risks in the S-1 is an interesting read, and can serve to guide the many lesser-valued companies out there.

Video game maker scores First Amendment win in right of publicity case

Hart v. Electronic Arts, Inc. — F.Supp.2d —, 2011 WL 4005350 (D.N.J. September 9, 2011)

Former Rutgers quarterback Ryan Hart sued Electronic Arts (“EA”), the maker of the very popular video game NCAA Football, alleging misappropriation of his right of publicity under New Jersey law.

EA moved to dismiss. Treating the filing as one for summary judgment, the court granted the motion. It held that EA’s right to free expression under the First Amendment outweighed Hart’s right of publicity.

The court recognized the tension between Hart’s right of publicity and EA’s free speech interest in seeking to incorporate Hart’s characteristics and other information about him into the game. The resolution of this tension is an unsettled area of the law — and the court no doubt recognized this. So in what appears to be an effort to reduce the likelihood that the appellate court will reverse, the judge applied two different tests, finding that EA’s First Amendment interests prevailed under both of them.

Hart’s claims

Hart claimed that the game misappropriated his right of publicity by, among other things, giving a virtual player of the game Hart’s physical attributes (including appearance, height and weight), the same jersey number, the same home state, and with wearing a helmet visor and left wrist band. Hart claimed the virtual player shared other features with him as well, such as speed and agility rating, and passing accuracy and arm strength.

Transformative test

The court first applied the “transformative test” to balance the right of publicity and First Amendment interests. This test borrows heavily from copyright law’s fair use analysis, and looks to the extra elements in the subsequent work. A court will look at:

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

In this case, the game included numerous creative elements apart from Hart’s image, such as virtual stadiums, athletes, coaches, fans, sound effects, music and commentary. Moreover, and perhaps more importantly, the court emphasized that EA created a mechanism in the game “by which the virual player may be altered, as well as the multiple permutations available for each virtual player image.”

The Rogers test

The Rogers test borrows from the trademark context to aid a court in determining whether First Amendment interests will trump a right of publicity claim. In applying this test, a court will make two queries: (a) whether the challenged work is wholly unrelated to the underlying work (or person asserting the claim), and (b) whether the use of the plaintiff’s name is a disguised commercial advertisement. In this case, the court found that one could not reasonably argue that Hart’s image was wholly unrelated to the game (it was college football, after all). But the use of Hart’s image was not a “disguised commercial advertisement.” Instead, the use of his image was part of an expressive act by EA that might draw upon public familiarity with Hart’s college football career but did not explicitly state that he endorsed or contributed to the creation of the game.

Amazon and other booksellers off the hook for sale of Obama drug use book

Section 230 of the Communications Decency Act shields Amazon, Barnes & Noble and Books-A-Million from some, but not all claims brought over promotion and sale of scandalous book about presidential candidate.

Parisi v. Sinclair, — F.Supp.2d —, 2011 WL 1206193 (D.D.C. March 31, 2011)

In 2008, Larry Sinclair made the ultra-scandalous claim that he had done drugs and engaged in sexual activity with then-presidential candidate Barack Obama. Daniel Parisi, owner of the infamous Whitehouse.com website, challenged Sinclair to take a polygraph test.

Not satisfied with the attention his outlandish claims had garnered, Sinclair self-published a book detailing his alleged misadventures. The book was available through print-on-demand provider Lightening Source.

Amazon, Barnes & Noble, and Books-A-Million (“BAM”) each offered Sinclair’s book for sale through their respective websites. (Barnes & Noble and BAM did not sell the book at their brick and mortar stores.) Each company’s website promoted the book using the following sentence:

You’ll read how the Obama campaign used internet porn king Dan Parisi and Ph.D. fraud Edward I. Gelb to conduct a rigged polygraph exam in an attempt to make the Sinclair story go away.

Parisi and his Whitehouse Network sued for, among other things, defamation and false light invasion of privacy. BAM moved to dismiss pursuant to Rule 12(b)(6) while Amazon and Barnes & Noble moved for summary judgment. The court granted the booksellers’ motions.

Section 230 applied because booksellers were not information content providers

The booksellers’ primary argument was that Section 230 of the Communications Decency Act shielded them from liability for plaintiffs’ claims concerning the promotional sentence. The court found in defendants’ favor on this point.

Section 230 provides in relevant part that “[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” The major issue in this case was whether the online booksellers had provided the information comprising the promotional sentence. The court found that the pleadings (as to BAM) and the evidence (as to Amazon and Barnes & Noble) did not credibly dispute that the booksellers did not create and develop the promotional sentence.

But not so fast, Section 230, on some of those other claims!

The court’s treatment of Section 230 in relation to plaintiffs’ false light claim and the claims relating to the actual sale of the book were even more intriguing.

Plaintiffs argued that their false light claim was essentially a right of publicity claim. And Section 230(e)(2) says that immunity does not apply to claims pertaining to intellectual property. There is some confusion as to whether this exception to immunity applies only to federal intellectual property claims or to both federal and state IP claims. On one hand, Perfect 10, Inc. v. CCBill says that only federal intellectual property claims are excepted from immunity (which would mean that state law IP claims would be barred by Section 230). On the other hand, cases like Atlantic Recording Corp. v. Project Playlist, Doe v. Friendfinder Network and Universal Communication System v. Lycos suggest that both state and federal IP claims should withstand a Section 230 challenge.

In this case, the court indicated that it would have sided with the cases that provide for both federal and state claims making it past Section 230: “I am not inclined to extend the scope of the CDA immunity as far as the Ninth Circuit. . . . ”

But ultimately the court did not need to take sides as to the scope of Section 230(e)(2), as it found the use of plaintiff Parisi’s name fit into the newsworthiness privilege. One cannot successfully assert a misappropriation claim when his name or likeness is used in a newsworthy publication unless the use has “no real relationship” to the subject matter of the publication.

The court also seemed to constrain Section 230 immunity as it related to the online booksellers’ liability for selling the actual book. (Remember, the discussion above, in which the court found immunity to apply, dealt with the promotional sentence.) The court rejected defendants’ arguments that the reasoning of Gentry v. eBay should protect them. In Gentry, eBay was afforded immunity from violation of a warranty statute. But it merely provided the forum for the sale of goods, unlike the online booksellers in this case, which were the distributors of the actual allegedly defamatory book.

Even though Section 230 did not serve to protect BAM, Barnes & Noble and Amazon from liability for defamation arising from sales of the book, the court dismissed the defamation claim because of the lack of a showing that the booksellers acted with actual malice. It was undisputed that the plaintiffs were limited-purpose public figures. Persons with that status must show that the defendant acted with actual malice. That standard was not met here.

Use of name and image in YouTube clip did not support right of publicity claim

Fuentes v. Mega Media Holdings, Inc. 2010 WL 2634512 (S.D. Fla. June 30, 2010)

Plaintiff is a famous Cuban author who has written extensively about Raul Castro and other members of the Castro regime. The producers of the Maria Elvira Live show used plaintiff’s name and image in the content of one of the show’s episodes.

In addition to broadcasting the episode on TV, the producers uploaded clips from the show to YouTube. Plaintiff had not consented to that appearance and sued for, among other things, violation of Florida’s right of publicity statute, Florida Statute 540.08.

The show moved to dismiss the right of publicity claim and the court granted the motion.

It held that use of plaintiff’s name and image in this way did not violate the statute because the use was not “for purposes of trade or for commercial or advertsing purposes.” Looking to analogous cases (which, of course, did not involve social media), the court held that for this statutory standard to be met, the use of the name or image has to be separate and apart from the broadcast itself.

In these other cases, the individuals featured in the content of an audiovisual work sued under the statute and lost.

In Lane v. MRA Holdings, the plaintiff sued the producers of Girls Gone Wild. She lost even though her picture appeared on the cover of the DVD. In Tyne v. Time Warner, some individuals who were incorporated into the movie A Perfect Storm lost on the same grounds — their name and image had not been used separate and apart from the work itself.

1 2