H. Right of Publicity Clashes With Free Expression in ‘Tootsie’ Case

    The right of publicity prohibits the unauthorized use of a person’s name, voice, or likeness on or in products, or in advertising goods or services, and has been described as a form of intellectual property.  Right-of-publicity claims are frequently accompanied by Lanham Act claims, alleging that the defendant has made false or misleading statements implying endorsement or affiliation with a product or service.  In California, a statute grants a right similar to the right of publicity to the heirs of celebrities that protects the name, voice, and likeness of a deceased celebrity.  Several cases in 2001 analyzed the interaction of the First Amendment and the right of publicity.

     In the spring of 1997, in what was advertised as a “Fabulous Hollywood Issue,” Los Angeles magazine ran a fashion spread entitled “Grand Illusions.”  The piece included familiar still photos of such Hollywood icons as Cary Grant, Grace Kelly, and Marilyn Monroe, digitally altered to “re-dress” the stars in up-to-date fashions.  Included in the spread was an altered photo of actor Dustin Hoffman in his role as “Tootsie,” in which the character was clothed not in the familiar red sequined dress but in a “butter-colored” silk gown by designer Richard Tyler and a pair of Ralph Lauren high-heeled shoes. 

     The magazine maintained that the point of the article was to provide a whimsical, tongue-in-cheek look at new fashion trends by “modernizing” old movie wardrobes.  Mr. Hoffman was not amused.  He sued for violation of his publicity rights under California common law and California’s right-of-publicity statute; for unfair competition under the California unfair business practices statute; and for violation of Section 43 of the Lanham Act, which prohibits the use of a celebrity’s identity for an unauthorized commercial endorsement.  The magazine countered that the use of the photo was editorial, not commercial, and that as an integral component of an editorial piece it was entitled to full First Amendment protection.

     Commercial or Noncommercial Speech?  A key question at trial was whether the use of the photo was editorial or was rendered commercial speech by the fact that reference was made to a shopping guide in another part of the magazine, which contained information on where to purchase the fashions shown in the photo spread.  The unfair business practices claims rested on the assertion that the photo created a  false impression that Mr. Hoffman endorsed the products or their designers. 

     As a public figure suing a media defendant, the actor sought to prove actual malice.  Mr. Hoffman maintained that the magazine intended readers to believe that he was actually in the photo.  He claimed the magazine acted with reckless disregard for the truth in publishing the altered picture when its editors knew full well that he was not wearing the “butter-colored” gown.

     In January 1999 U.S. District Court Judge Dickran Tervizian ruled in Mr. Hoffman’s favor, finding that the magazine had “crossed over the line between editorial content and advertising.”  Hoffman v. Capital Cities/ABC, Inc., 33 F. Supp. 2d 867 (C.D. Cal. 1999).  Giving short shrift to First Amendment concerns, Judge Tervizian found the use of the photo to be “unbridled exploitive speech at the expense of Mr. Hoffman and his distinguished career.” 

     Maintaining that Mr. Hoffman (whom the judge termed “one of our country’s living legends”) and the other celebrities in the photo spread had been “violated by technology,” the court held the use of the photo to be knowingly false speech, not protected by the First Amendment.  Mr. Hoffman was awarded $3 million in compensatory and punitive damages, along with an award of attorney’s fees.

     The case was appealed to the U.S. Court of Appeals for the Ninth Circuit.  In a unanimous decision issued July 6, 2001, the appellate court reversed.  Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001).  The Ninth Circuit found that: “Viewed in context, the article as a whole is a combination of fashion photography, humor, and visual and verbal editorial comment on classic films and famous actors.  Any commercial aspects are ‘inextricably entwined’ with expressive elements, and so they cannot be separated out ‘from the fully protected whole.’”

     Actual malice standard.  The court did not find that the existence of a shopping guide elsewhere in the magazine rendered the article a “commercial exploitation.”  Ruling that the magazine article was noncommercial speech entitled to full First Amendment protection, the court applied a rigorous actual malice standard.  It found that Mr. Hoffman had failed to present any clear or convincing evidence that the magazine had acted with actual malice in publishing the photo.

     It was obvious from the text of the feature, and from the fact that several of the featured celebrities were deceased, that the images in the article were digitally altered and that Mr. Hoffman had not worn the clothes he was depicted as wearing in the photo, the court held.  The case raised only Lanham Act and right-of-publicity issues.  The question of whether the altered photograph infringed the copyright in the underlying photo, owned by Columbia Pictures, was not at issue.

     A number of magazine and newspaper publishers, broadcasters, and media organizations, including the Association of American Publishers, joined in an amicus brief urging the Ninth Circuit to overturn the lower court.  The appellate court ruling was particularly welcomed by publishers and broadcasters in light of the increasing number of misappropriation and right-of-publicity lawsuits being brought by celebrity plaintiffs in an effort to control editorial uses of their names, identities, and images.

     In another right-of-publicity case -- this one involving a clothing catalogue -- the Ninth Circuit reversed a lower court’s ruling on summary judgment that the First Amendment barred the plaintiffs’ publicity and Lanham Act claims.  Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001). 

     The plaintiffs were well-known surfers whose images were used in a clothing catalogue with a surfing theme.  The court held that the speech at issue -- the use of a photograph of the plaintiffs in the catalogue -- was commercial speech “not entitled to the full First Amendment protection” accorded noncommercial speech, and remanded the case to the lower court.  The appeals court did not analyze whether the use of the photograph in the catalogue would be sanctioned by the more limited First Amendment protection afforded commercial speech.

     The California Supreme Court held that the sale of T-shirts bearing an artist’s portrait of the Three Stooges violated the plaintiff’s right of publicity and was not protected by the First Amendment.  Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387 (Cal. 2001).  The court had to balance the publicity right protecting the economic value of a celebrity’s fame with the First Amendment right to comment on, parody, and make other expressive uses of a celebrity’s image.

     In this balancing process, the court focused on the extent to which the artist’s work was “transformative.”  The court found that the work at issue -- a literal depiction of the images of the Three Stooges -- was not transformative, noting that its marketability and economic value derived primarily from the fame of the celebrities depicted.

-- Judith Platt and Kurt Wimmer