Right of Publicity

January 23, 2014

NCAA Heard in Federal Court Again on Antitrust and Right-of-Publicity Issues

Oakland, California – District Judge Claudia Wilkin (pictured) issued a new order regarding in re NCAA Student-Athlete Name & Likeness Licensing Litigation, a putative class action involving the Indianapolis-based National Collegiate Athletic Association (“NCAA”). The NCAA’s motion to dismiss on, inter alia, copyright and First-Amendment grounds was denied.

In this action, Plaintiffs, a group of twenty-five current and former college athletes who played for NCAA men’s football or basketball teams between 1953 and the present, pursued a putative class action against Defendant NCAA. They initially brought claims against Collegiate Licensing Company (“CLC”) and Electronic Arts Inc. (“EA”) as well, but agreed to settle those claims before this order was issued.

At the time of this order, four of the Plaintiffs (the “Right-of-Publicity Plaintiffs”) alleged that the NCAA misappropriated their names, images and likenesses in violation of their statutory and common law rights of publicity. In contrast, the other twenty-one Plaintiffs (the “Antitrust Plaintiffs”) alleged that the NCAA violated federal antitrust law by conspiring with EA and CLC to restrain competition in the market for the commercial use of their names, images and likenesses. This order addressed only the latter set of claims, which arise under the Sherman Antitrust Act, 15 U.S.C. § 1 et seq.

To be eligible to compete, the NCAA required student athletes to release in perpetuity all rights to the commercial use of their images. The Antitrust Plaintiffs contend that the “purposefully misleading” release forms then allowed the NCAA to sell or license the athletes’ identities to others.

In addition to the release that the athletes had signed, a price-fixing conspiracy/group boycott prevented the athletes from being able to pursue compensation for the licensing of their identities even after they stopped competing. This allegedly interfered with their ability to market “group licensing rights” for their identities in game broadcasts, rebroadcasts and video games. Because many of these Plaintiffs also went on to play professionally, such rights could be of considerable value.

Intellectual property attorneys for the NCAA argued that assertions of a right of publicity of student athletes in the context of game broadcasts were barred by the First Amendment as well as California statute. The court was not persuaded by either argument. On the First Amendment argument, the court held that, while the original broadcast might enjoy protection, “subsequent unauthorized reproductions” did not.

Likewise, the California statute cited by the intellectual property lawyers for the NCAA was not persuasive to the court. That statute provided that the athletes had no right of publicity in the “use of [his or her] name, voice, signature, photograph, or likeness in connection with any news, public affairs, or sports broadcast or account.” However, the court held that such right-of-publicity restrictions did not apply to licensing in other states that lacked similar statutes.

The court also rejected the NCAA’s copyright-preemption argument on two grounds. First, this was not properly considered under the law of copyright. The athletes were not asserting intellectual property rights under copyright law but rather sought to license their personas. As a persona cannot be copyrighted, copyright preemption did not apply. Moreover, the Plaintiffs’ claims were not of simple theft of intellectual property. They also asserted a broader antitrust right – to prevent injury to competition. Citing United States v. Microsoft Corp., 253 F.3d 34, 63 (D.C. Cir. 2001), the court stated, “[I]ntellectual property rights do not confer a privilege to violate the antitrust laws” and denied the NCAA’s motion to dismiss.

Practice Tip: The NCAA has been heard before on claims under the Sherman Act. NCAA v. Board of Regents, 468 U.S. 85 (1984). In that decision, the Court acknowledged that the NCAA must be given some leeway to adopt anticompetitive rules violating the Sherman Act, concluding that intercollegiate athletics is “an industry in which horizontal restraints on competition are essential if the product is to be available at all.”

June 14, 2013

Leon Isaac Kennedy Sues GoDaddy, Spirit Media, Arthur Phoenix and Five Doe Defendants for Purchase of Leonisaackennedy.com

By Overhauser Law Offices, LLC

Indianapolis, Ind. – A trademark lawyer for American actor, minister, producer and writer Leon Isaac Kennedy of Burbank, Calif. sued alleging Lanham Act violations, unfair competition and violations of various Indiana state statutes as a result of defendants’ purchase of the domain name Leonisaackennedy.com. The defendants are GoDaddy.com, LLC of Scottsdale, Ariz., Spirit Media of Phoenix, Ariz., Arthur Phoenix of Phoenix, Ariz. and John Does 1-5.

In a complaint for damages and injunctive relief, Kennedy alleges that the defendants have violated his intellectual property rights by purchasing a domain name consisting of Kennedy’s first, middle and last name. Spirit Media is the registrant and owner of the domain name. Phoenix is also listed as a registrant. GoDaddy is the current registrar.

Kennedy claims that no content has ever been placed on the domain website and that the defendants have offered the domain name for sale for $5,000 at a domain auction. He asserts that this “use of the Domain violates the “Anti Cybersquatting Piracy [sic] Act.”

Kennedy asserts ownership of all interests in his name, image, likeness and voice (“Kennedy right of publicity”) as well as other intellectual property rights such as trademarks, copyrights and rights of association as associated with the Kennedy right of publicity. He alleges that the purchase constitutes unauthorized and illegal commercial use and registration of a domain name and violates his personal and/or property rights. He further claims that this commercial use has siphoned the goodwill from his various property interests and asserts that he has been irreparably harmed as a result.

The complaint lists seven claims:

· Count I: Violation of Section 1125 (a) of the Lanham Act

· Count II: Violation of Section 1125 (d) of the Lanham Act

· Count III: Unfair Competition

· Count IV: Violation of Indiana Right of Publicity

· Count V: Conversion (I.C. § 35-43-4-3)

· Count VI: Deception I.C. § 35-43-5-3(a)(6)

· Count VII: Indiana Crime Victims’ Act I.C. § 35-24-3-1

Kennedy asks for the immediate transfer of the domain name to him; an injunction enjoining the defendants from future use of Kennedy’s intellectual property; an order directing the immediate surrender of any materials featuring Kennedy’s intellectual property; damages, including treble damages; costs and attorneys’ fees.

This complaint, initially filed in an Indiana state court, was removed by GoDaddy to federal court.

Practice Tip #1: The Anticybersquatting Consumer Protection Act was enacted to create a cause of action for registering, trafficking in or using a domain name confusingly similar to, or dilutive of, a trademark or personal name. Despite alleging malicious behavior on the part of all defendants, including GoDaddy, it will be tricky to pursue this count against GoDaddy, a domain-name registrar. Under § 1125(d)(2)(D)(ii), the “domain name registrar or registry or other domain name authority shall not be liable for injunctive or monetary relief under this paragraph except in the case of bad faith or reckless disregard, which includes a willful failure to comply with any such court order.”

Practice Tip #2: I.C. §§ 35-43-4-3 and 35-43-5-3(a)(6) are criminal statutes, claimed in the complaint in conjunction with an attempt to parlay the accusation into an award for damages, costs and attorneys’ fees. The Indiana Court of Appeals has discussed “theft” and “conversion” as they pertain to takings of intellectual property in several recent cases (see, for example, here and here) and has made it clear that criminal statutes often apply differently to an unlawful taking of intellectual property.

Practice Tip #3: This complaint was submitted by Theodore Minch, who is, coincidentally, also the attorney for LeeWay Media, about which we blogged yesterday. As with LeeWay, none of the parties seems to have much connection to Indiana. It will be interesting as the case develops to analyze the rationale behind the decision to file in an Indiana court.
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March 9, 2012

Bill to Expand Indiana’s Right to Publicity Law Won’t Pass This Year

By Overhauser Law Offices, LLC

Indianapolis, IN – Today is the last day of the Indiana General Assembly’s legislative session, called Sine Die, and it looks like the session will end without passing of proposed changes to the Indiana Right to Publicity law. The bill would have clarified that a person who died before 1994 does have the publicity rights provided by the law. This bill is co-authored by Representatives <a href="http://www.in.gov/h57/" font ShelbyvilleSean Eberhart of Shelbyville and Ralph Foley of Martinsville. As we blogged, the bill was passed by the Indiana House, but did not make it through the Senate committee.

As we have previously blogged about Indiana Right to Publicity law is considered one of the strongest in the world.

Practice Tip: The authors of this bill are free to propose it again next year. This year’s legislative session was a “short session” and the law makers were focused on several high-publicity issues. It looks like the right to publicity bill had some initial momentum, but the lawmakers ran out of time to get it passed.

February 20, 2012

More on the Pending Bill to Expand Indiana’s Right to Publicity Law

By Overhauser Law Offices, LLC

Indianapolis, IN – In an update to our earlier blogs, the Hollywood Report has published a long article about Indiana’s Right of Publicity Law, I.C. 32-36-1-8, and the pending bill to amend that law. The article states that dead celebrities “enjoy phenomenal legal rights in the state.” Several Indiana intellectual property attorneys who represent the estates of deceased celebrities are quoted.

The article focuses on the recent decision of the John Dillinger case involving the Right to Publicity law, which Indiana Intellectual Property Law and News blogged about here.

As we have previously blogged about, Indiana’s Right to Publicity law is considered one of the strongest in the world.

Practice Tip: In order to pass this session, the bill must pass the Senate no later than March 14, 2012 since the General Assembly is in a short session this year. As we blogged, the bill has already passed the Indiana House. At this point, the bill is in a senate committee, but no hearings are scheduled for next week.
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February 8, 2012

Update: Right of Publicity Bill Passes Indiana House, Now Before Indiana Senate

By Overhauser Law Offices, LLC

Indianapolis, IN – In an update to our blog last week, a bill in the Indiana General Assembly that would make changes to Indiana’s Right of Publicity Law, I.C. 32-36-1-8, passed the Indiana House, 85-7, on January 30. The bill is now before the Senate Committee on Public Policy. No hearing is scheduled at this time.

As we have previously blogged about, Indiana’s Right to Publicity law is considered one of the strongest in the world.

Practice Tip: Now that the bill has passed the Indiana House, it must pass the senate and be signed by Governor Daniels to become law. It looks like it is moving quickly enough that it could be enacted by the March 14 short session deadline.
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January 24, 2012

Indiana House Bill Looks Right of Publicity

By Overhauser Law Offices, LLC

Indianapolis, IN – A bill pending in the Indiana General Assembly would make changes to Indiana’s Right of Publicity Law, I.C. 32-36-1-8. The bill would clarify that a person who died before 1994 does have the publicity rights provided by the law.

This bill is co-authored by Representatives Sean Eberhart of Shelbyville and Ralph Foley of Martinsville. It has been referred to the House Judiciary Committee. The Indianapolis Star quoted Representative Foley as explaining the need for the law as confusion in federal courts regarding whether the publicity rights attach to persons who died before 1994.

As we have previously blogged about, Indiana’s Right to Publicity law is considered one of the strongest in the world. This bill, if passed, appears to strengthen that law even further. The Indiana Law Blog has compiled some recent blogs regarding the Right to Publicity law.

Practice Tip: The Indiana General Assembly has a “short session” this year, meaning March 14 will be the last day of the session. If this bill is to become a law this session, it must move quickly through the House and Senate committees in the next several weeks in order to get to Governor Daniel’s desk by March 14.
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September 26, 2011

James Buchanan and J. B. Custom, Inc. Sues Henry Repeating Arms Company for Trade Dress and Right of Publicity Right Infringement for Firearms Ads in Allen County Superior Court, Case Removed to Federal Court

By Overhauser Law Offices, LLC

Fort Wayne, IN – Trademark lawyers for James Buchanan and J.B. Custom, Inc. of Huntertown, Indiana filed a trademark infringement suit in Allen County, Indiana Superior Court alleging Henry Repeating Arms Company of Bayonne, New Jersey infringed trademark registration no. 3645700 for the mark MARE’S LEG, registered with the US Trademark Office. On September 20, 2011, the case was removed to the Northern District of Indiana upon motion of trademark attorneys for Henry Repeating Arms Company.

According to the complaint, J.B. Custom owns trade dress rights to unique shapes, designs, and appearances of certain pistols designs, including the “Mare’s Leg” lever-action pistol. J.B. Custom advertises the Mare’s Leg pistol design using unique likenesses of Mr. James Buchanan in cowboy attire, including on its website www.maresleg.com. The complaint alleges that Henry’s 2011 catalog included advertisement for a product called “Henry’s Mare’s Leg.” The product advertisement also appeared on Henry’s website. The complaint alleges the Henry’s Mare’s Leg is virtually identical and confusingly similar to J.B. Custom’s product. The complaint also states that Henry has used Mr. Buchanan’s likeness in advertising the Henry’s Mare’s Leg. Trademark attorneys have made claims of misuse of publicity right relating to the unauthorized use of Mr. Buchanan’s likeness, trade dress infringement, false designation of origin, passing off, false advertising and unfair competition.

Practice Tip: In addition to trademark and trade dress claims, which are covered by the federal Lanham Act, the plaintiffs have made a claim under Indiana’s Right of Publicity law because the defendant has alleged used Mr. Buchanan’s likeness in advertisements without Mr. Buchanan’s permission. Indiana Intellectual Property Law News blogged about Indiana’s unique right to publicity law here. The right of publicity protects the right to control the commercial use of a person’s identity.
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July 28, 2011

Indiana’s Unique Right to Publicity Law Examined

By Overhauser Law Offices, LLC

Indianapolis, IN – Indiana, like eighteen other states, has a right to publicity law that can be described as the right to control the commercial use of one’s identity. The right to publicity, sometimes called personality rights, are state law rights, unlike most intellectual property rights, which are federal rights. According to Wikipedia, Indiana’s right to publicity is considered to be the most far reaching right to publicity law in the world. Indiana’s current right of publicity law, I.C. 32-36-1 et seq., was enacted in 1994. Indiana’s law grants a proprietary interest to a personality’s name, voice, signature, photograph, image, likeness, distinctive appearance, gesture or mannerisms where the personality has commercial value. The law requires permission before another uses one’s personality for commercial purposes and provides for damages if the personality is used without consent. Rightofpublicity.com has an interesting blog entry on the history of the right to publicity.

Indiana Intellectual Property Law News blogged last month about the recent decision of the Southern District Court of Indiana in the Dillinger case. The Indiana Court of Appeals has also examined a case involving the right of publicity and coincidentally also concerning the John Dillinger personality. In that case, Phillips v. Scalf, 778 N.E.2d 480 (Ind. Ct. App. 2002), Scalf alleged he owned the Dillinger right to publicity and that Phillips was operating a restaurant in Steuben County that utilized the Dillinger personality without permission. This decision, however, involved the question of venue and did not substantively examine the right to publicity statute. Indeed, it appears that neither the Indiana Supreme Court nor the Indiana Court of Appeals have issued substantive decisions on the Indiana Right to Publicity.

June 15, 2011

Indiana Federal Court Rules EA Can Use “Dillinger” in Its Video Games

By Overhauser Law Offices, LLC

Indianapolis, IN – Intellectual property lawyers for Electronic Arts, Inc., (“EA”) of Redwood City, CA, emerged victorious when Judge Jane E. Magnus-Stinson of the Southern District of Indiana ruled that Indiana’s right of publicity statute and federal trademark law do not prevent EA from using the word “Dillinger” and other identifying characteristics of infamous depression-era bank-robber John Dillinger in its video games.

The plaintiff Dillinger, LLC, sued EA for allegedly including unauthorized references to John Dillinger in its series of video games based upon The Godfather novel and film series. In its complaint, among other things, Dillinger, LLC, claimed that it registered two U.S. trademarks for “John Dillinger” and that, under Indiana law, it had the right to control Mr. Dillinger’s “personality” rights for commercial purposes – that is, his “name, voice, signature, photograph, image, likeness, distinctive appearance, gestures, [and] mannerisms.” Dillinger, LLC, alleged to have acquired those publicity rights by assignment from the heirs of Mr. Dillinger.

Concluding that Indiana’s right of publicity law, which took effect in 1994, is not retroactive and does not apply to personalities who died before its enactment, the court found that the plaintiff failed to state a right of publicity claim. Moreover, Judge Magnus-Stinson opined that “literary works” exception in the Indiana statute should be read broadly in light of the First Amendment and cover video games.

In a separate order ruling on cross-motions for summary judgment, the court accepted EA’s First Amendment defense to its use of the John Dillinger name, finding such use has at least some relevance to the plot of the game and was not “explicitly misleading” with regard to the question of endorsement by Dillinger, LLC.

Practice Tip: The right of publicity is grounded in state law, and Indiana has an expansive right of publicity statute. Indiana law provides recognition of the right for 100 years after death and protects not only name, image and likeness, but also signature, photograph, gestures, distinctive appearances, and mannerisms.

The matter was assigned Case No. 1:09-cv-01236-JMS-DKL.
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February 4, 2011

Dion Designs sues Allwin Powersports, et.al. for Copyright, Trademark Infringement and Misappropriation of Trade Secrets

By Overhauser Law Offices, LLC

Indianapolis, IN – Copyright lawyers for Dion Designs of Quebec, Canada have filed an infringement suit against Allwin Powersports, Corporation, Inc., Arthur Liao, MHR Helmet Co., Ltd., Foshan Shunde Fengxing Helmets, Ltd., and Jiangmen Pengcheng Helmets, Ltd. Plaintiff Dion claims he is a famous designer of helmets, who signed an agreement in 2005 with the Defendants to receive $0.50 for each helmet sold using Dion’s deigns. Defendants paid Dion for some helmets, but terminated the agreement around 2010. However, Dion claims that Defendants used some of Dion’s latest designs to make several new helmets. While some of these designs have been marketed by the Defendants in Europe, Dion fears that they will be offered in the US at the Dealer Expo 2011 on February 18 – 20, 2011 in Indianapolis. Dion claims that he filed copyright applications and design patent applications on his designs, although none of those applications has resulted in a registration or issued patent.

The complaint asserts a veritable “kitchen sink” of claims, such as a Lanham Act claim based on a misrepresentation that Defendants have “authority to import and sell such products, without disclosing the absence of a valid license or agreement with the designer.” Claims are also alleged for copyright infringement, trade secret misappropriation, breach of contract, conversion, unfair competition, and for declaratory relief. Dion’s complaint is also accompanied by a Motion for Preliminary Injunction seeking to bar the “displaying or promoting” of the allegedly infringing helmets at the Dealer Expo on February 18-20, 2011, or on the Internet.

Practice Note: The Plaintiffs’ complaint appears to have several inconsistencies. The Lanham Act claim based on a “failure to disclose” is highly unusual; normally, a Lanham Act claim is predicated on an overt misrepresentation as to source. Although Dion states that the Defendants’ claim that the helmets were “designed in Europe” is false, even if this is the case, it is hard to see how the Plaintiff is harmed, especially since the complaint states that “Dion’s plans to make commercial use of those designs have been placed on hold.” The copyright infringement claim is suspect because, as discussed elsewhere on this site, the Plaintiffs did not obtain a copyright registration before filing a suit. Also, to support the trade secret misappropriation claim, the plaintiff claims that his designs “derive substantial commercial value from not being generally known.” However, even if the Plaintiffs’ designs were once “not generally known,” they certainly are now since the Plaintiff: (a) attached them to his complaint, (b) filed them with the US Copyright Office, and because (c) the designs are alleged to been sold in Europe for some time. Dion’s claim for “conversion” also appears to be preempted by the Copyright Act. Finally, it seems that Dion will have difficulty establishing the “irreparable harm” factor necessary to obtain preliminary injunctive relief, since his predominant complaint is that he has not received his $0.50 per royalty license fee.