Supreme Court Will Not Review Application of “Single Publication Rule” Barring Chuck Yeager’s Publicity Rights, Lanham Act Claims

This posting was written by John W. Arden.

The U.S. Supreme Court has refused to review the Ninth Circuit’s application of the “single publication rule” to an allegedly unauthorized endorsement posted on a website in 2003, effectively barring on statute of limitations grounds Chuck Yeager’s claims brought under California right of privacy and publicity laws and the federal Lanham Act. The high court today denied the petition for certiorari in Yeager v. Bowlin, Docket No. 12-1047, filed February 22, 2013.

In 2008, well known pilot Yeager brought an action against Connie and Ed Bowlin, claiming that statements on their “Aviation Autographs” website violated California’s common law right of privacy and right of publicity statute and that the use of his name, likeness, and identity to market memorabilia violated the Lanham Act. The federal district court in Sacramento dismissed the claims, applying the single publication rule, holding that the claims accrued in 2003, and concluding that the claims were time-barred.

In an opinion addressing the California claims, the Ninth Circuit ruled that there was no evidence in the record that the Bowlins added or changed any statements about Yeager after October 2003 and thus the right of privacy and publicity claims were barred by the two-year statute of limitations.

In a separate unpublished memorandum decision, the Ninth Circuit held that Yeager’s Lanham Act false endorsement claim also was barred by the single-publication rule. The appeals court acknowledged that it had not resolved whether a statute of limitations defense applies to claims under the Lanham Act, which are of “equitable character.” However, the court declined to address the issue on the theory that Yeager waived this argument by failing to raise it in the district court in his opposition to a defense motion for summary judgment.

The single publication rule limits tort claims premised on mass communication to the original publication date. While created to apply to print publications, the single publication rule also governs publications on the Internet, according to the appeals court. “In print and on the internet, statements are generally considered ‘published’ when they are first made available to the public.”

Under the single publication rule, the statute of limitations is reset when a statement is republished. A statement in a printed publication is republished when it is reprinted in something that is not part of the same “single integrated publication.” One general rule is that a statement is republished when it is repeated or recirculated to a new audience. As previously held by the Ninth Circuit, website operators did not republish a statement by simply continuing to host the website.

Yeager argued that the website was republished—and the statute of limitations restarted—every time the website was added to or revised, even if the new content did not reference or depict Yeager. The Ninth Circuit disagreed. “We reject Yeager’s argument and hold that, under California law, a statement on a website is not republished unless the statement itself is substantively altered or added to, or the website is directed to a new audience.”

In his petition for review, Yeager asked: “Does California’s single-publication rule govern the accrual of a Lanham Act claim arising from a web-based merchant’s refusal to remove a celebrity’s unauthorized endorsement from a merchant’s website?”

First Amendment Did Not Bar Publicity Rights Claims Against Video Game Maker

This posting was written by Thomas A. Long, Editor of Wolters Kluwer IP Law Daily.

The First Amendment did not bar claims by retired National Football League players alleging that video game developer Electronic Arts Inc. (“EA”) violated their rights of publicity under California law by using their likenesses in the EA video game, Madden NFL, without their authorization, the federal district court in San Francisco has ruled. The court also denied EA’s motion to strike the complaint pursuant to California’s Anti-SLAPP (“Anti-Strategic Lawsuit Against Public Participation”) law.

Background

The Madden NFL game featured highly realistic simulations of actual NFL stadiums, uniforms, and current team rosters, including active players’ likenesses and biographical information, which were covered by various licenses that did not cover the retired players.

Recent versions of the game allowed players to select “historical” NFL teams, with rosters that did not include the retired players’ names, but featured game “avatars” that closely resembled the retired players, in terms of height, weight, skin tone, position, years in the league, and athletic ability. For purposes of its motions to dismiss and strike, EA accepted the retired players’ allegations that it used protectable elements of their likenesses in Madden NFL.

Three retired players—Michael Davis, Vince Ferragamo, and Billy Joe Dupree—filed a putative class action lawsuit on behalf of themselves and approximately 6,000 other former NFL players whose likenesses allegedly appeared in certain editions of Madden NFL. They asserted violations of California’s statutory right of publicity under Civil Code Sec. 3344 and violations of California’s common law right of publicity.

First Amendment

EA contended that the game, as an expressive work, was protected by the First Amendment to the extent that it contained significant transformative elements, such that the value of the game did not derive primarily from the fame of the players.

However, according to the court, the “transformative use” test focuses on the reproduction of the celebrities’ likenesses, rather than on the larger work. In the Madden NFL game, the retired players’ likenesses appeared in their conventional role as football players. EA failed to articulate any expressive significance inherent in this depiction.

The game’s literal projection of the retired players’ likenesses into avatar figures was insufficient to confer constitutional protection, in the court’s view. The fact that the likenesses could be controlled or manipulated by game players did not change the analysis; the avatars were still realistic depictions of the retired players.

The court also rejected EA’s argument that its use of the players’ likenesses in Madden NFL was protected because it concerned a matter of public interest. Although the reporting and discussion of factual information about professional sports implicated the public interest, the alleged use of the retired players’ likenesses went well beyond simply reporting or publishing statements of historical fact.

There was very little in the game that resembled traditional reporting. The game play of Madden NFL did not report, or even re-create, recent or historical games. Each game was within the players’ control; the only historical aspect of the game was the retired players’ likenesses, the court said.

EA’s use of the retired players’ likenesses was not exempt from liability under the California publicity rights statute’s provision of immunity for the use of a name or likeness in connection with “public affairs.” Game play did not report on or relate “real life” occurrences, other than a minimal amount of statistical information about each player. The game was entirely fictional, the court said. Accordingly, the court denied the motion to dismiss the claims.

Anti-SLAPP Law

California’s Anti-SLAPP law provides for dismissal of any claims for relief that are primarily based on defendants’ activities in furtherance of their right to free speech relating to an issue of public concern. Once a defendant makes a prima facie showing that free speech protections are implicated, the burden shifts to the plaintiff to demonstrate a “reasonable probability” of prevailing on the underlying claims by stating and substantiating a legally sufficient claim.

Although video games were expressive works entitled to First Amendment protection, EA had conceded for purposes of its motions that Madden NFL used the retired players’ likenesses without authorization. EA had not otherwise attacked the adequacy of the allegations against it. Therefore, the court said, the retired players had satisfied their burden of stating and substantiating a legally sufficient claim. The motion to strike was denied.

The March 29 decision in Davis v. Electronic Arts, Inc. will be reported in CCH Advertising Law Guide.

Quarterback’s Publicity Rights Claim Against Video Game Maker Rejected

This posting was written by William Zale, Editor of CCH Advertising Law Guide.

The First Amendment barred former Rutgers quarterback Ryan Hart’s New Jersey common law right of publicity claim based on misappropriation of his likeness in the Electronic Arts video game NCAA Football, the federal district court in Trenton has ruled.

Hart asserted the right of publicity in a class action complaint on behalf of other players. The court held that the First Amendment trumped the right of publicity because EA’s use of Hart’s likeness was “transformative” and also because the use was clearly related to the game and not simply an advertisement for an unrelated product.

Transformative Test

Borrowed from the copyright fair use doctrine, the transformative test balances the competing interests of the right of publicity and the First Amendment by protecting works that add significant elements of expression beyond the mere literal depiction or imitation of a celebrity for commercial gain.

Elements of EA’s own expression found in the game justified the conclusion that its use of Hart’s image was transformative, the court held. NCAA Football contained virtual stadiums, athletes, coaches, fans, sound effects, music, and commentary, all of which were created or compiled by the game's designers. Over 100 virtual teams and thousands of virtual players were included.

Focusing on Hart’s virtual image alone, the court acknowledged that a virtual player bore resemblance to Hart and was designed with Hart’s physical attributes, sports statistics, and biographical information in mind. However, the game permitted users to alter Hart’s virtual player, control the player’s throw distance and accuracy, change the team of which the player is a part by downloading varying team names and rosters, and incorporate players from historical teams into the gameplay.

EA created the mechanism by which the virtual player could be altered, as well as the multiple permutations available for each virtual player image, the court noted.

Rogers Test

Because EA’s use of Hart’s likeness was clearly related to the game and not simply an advertisement for an unrelated product, the court determined that the right of publicity claim also was barred under the test developed in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The Rogers test had been applied in cases when the appropriation of a celebrity likeness created a false and misleading impression that the celebrity was endorsing a product.

As explained in Seale v. Gramercy Pictures, 949 F.Supp. 331 (ED Pa. 1996), applying Rogers to a Pennsylvania right of publicity claim, if a name or likeness is used solely to attract attention to a work that is not related to the identified person, the user may be subject to liability for a use of the identity in advertising. On the other hand, the use of a person’s name and likeness to advertise a work concerning that individual does not infringe the right of publicity, according to the court.

The transformative test provided the best analysis, in the court’s view, but EA was entitled to protection under either the transformative test or the Rogers test, the court concluded.

The September 9 opinion in Hart v. Electronic Arts, Inc. will be reported at CCH Advertising Law Guide ¶64,395.

Further information regarding CCH Advertising Law Guide appears here.

Publisher's Use of Murder Victim’s Nude Photos Violated Right of Publicity

This posting was written by William Zale, Editor of CCH Advertising Law Guide.

In a Georgia common law right of publicity suit, the publisher of Hustler Magazine was liable for the unauthorized publication of nude photographs of murdered professional wrestler Nancy Benoit, and Benoit's estate could seek to recover punitive damages, the federal district court in Atlanta has ruled.

The appropriation of another’s name and likeness without consent and for the financial gain of the appropriator is a tort in Georgia. LFP Publishing Group did not dispute that it appropriated Ms. Benoit’s name and likeness without her consent.

Financial Gain

Contrary to LFP's contention, the photographs were published for financial gain, the court held. Hustler is sold for the images it contains, the court said. The cover of the March 2008 magazine read, “Wrestler Chris Benoit’s Murdered Wife Nude.” No reasonable juror could conclude that LFP did not publish the photographs and the article for financial gain, the court determined.

Damages

The estate produced sufficient evidence of damages as measured by the value of the use of the appropriated publicity. The evidence showed that LFP made significant profits off the March 2008 issue, the court found. Yet LFP did not pay the estate anything for the photographs.

Newsworthiness Exception

The Eleventh Circuit had already held inapplicable the newsworthiness exception to the right of publicity (Toffoloni v. LFP Publishing Group, LLC, CCH Advertising Law Guide ¶63,480). Contrary to LFP's contention, there was no reason to revisit this ruling, according to the court.

Punitive Damages

In Georgia, punitive damages may be awarded in tort cases where there is clear and convincing evidence that a defendant’s actions showed “willful misconduct, malice, fraud, wantonness, oppression, or that entire want of care which would raise the presumption of conscious indifference to consequences.” LFP argued that it acted innocently because it believed that the photographs were subject to the newsworthiness exception. However, what LFP believed at the time of publication was a question for the jury, the court concluded.

The November 23 opinion in Toffoloni v. LFP Publishing Group, LLC will be reported in CCH Advertising Law Guide.

Former Players Can Pursue Publicity Rights Claims Against NFL

This posting was written by William Zale, Editor of CCH Advertising Law Guide.

Former professional football players’ right of publicity claims against the National Football League could not be dismissed on the theory that NFL promotional videos did not constitute commercial speech and were entitled to First Amendment protection as expressive works, the federal district court in St. Paul has ruled.

The NFL allegedly violated the right of publicity statutes and common law of the 50 states by using the players’ names and images in promotional videos such as the “History” series, which included videos called the “Fabulous Fifties” and “Sensational 60s.”

Commercial Speech v. Expressive Works

While the films were not pure infomercials, their overwhelmingly positive tone belied the NFL’s contention that they were documentaries and supported the player’s contention that they were advertisements, according to the court.

Giving the players the benefit of all reasonable inferences at the stage of a motion to dismiss, they made out a plausible claim that the films referenced a specific product, NFL football, and that the constitutional protection to be afforded the films did not outweigh the players’ interests in their own identities.

Copyright Preemption

The Copyright Act did not preempt the right of publicity claims. The subject of a right of publicity—the name and likeness of a celebrity or other individual—was not a “work” within the subject matter of copyright law, the court reasoned.

Lanham Act False Endorsement

On Lanham Act false endorsement claims, a determination could not be made on the pleadings alone that the NFL’s use in promotional videos of former professional football players’ names and images was not “explicitly misleading” or likely to cause confusion, the court held.

The opinion in Dryer v. National Football League will be reported at CCH Advertising Law Guide ¶63,807.

NCAA Fails to Obtain Dismissal of Ex-College Basketball Player’s Antitrust Claims

This posting was written by Jeffrey May, Editor of CCH Trade Regulation Reporter.

Edward O’Bannon, a member of the University of California, Los Angeles men’s basketball team in the early 1990s, can proceed with antitrust claims against the National Collegiate Athletic Association (NCAA) and its “licensing arm” for excluding him and other college athletes from the licensing market, the federal district court in Oakland decided on February 8.

In the same decision, the court dismissed the similar but “truncated” antitrust claims of Craig Newsome, a member of Arizona State University football team from 1993 to 1994.

Use of Images

Under NCAA rules, student athletes are not compensated for the use of their images in NCAA licensed products. O’Bannon asserted that the actions of the NCAA and its licensing arm excluded him and other former student athletes from the collegiate licensing market. He claimed that, because the NCAA had rights to images of him from his collegiate career, the association, along with its co-conspirators, fix the price for the use of his image at “zero.”

O’Bannon pointed to a 2007 agreement between the NCAA and Thought Equity Motion, Inc. to offer “classic” college basketball games online that would allow the use of his image without compensation paid to him.

Conspiracy to Fix Prices, Boycott

O’Bannon sufficiently alleged a conspiracy to fix the price of former student athletes’ images at zero and to boycott former student athletes in the collegiate licensing market. The athlete pleaded sufficient facts to make out a prima facie case that the challenged conduct constituted a conspiracy to unreasonably restrain trade in the U.S. “collegiate licensing market,” under a rule of reason analysis.

A claim that the conduct restrained trade under a per se rule of illegality could not be pursued, however, because the allegations did not suggest the existence of a horizontal agreement to fix prices or to engage in a group boycott, according to the court.

The athlete alleged that NCAA rules enabled the association to enter into licensing agreements with companies that distribute products containing student athletes’ images. Student athletes allegedly did not consent to these agreements and did not receive compensation for the use of their images.

As a result, O’Bannon alleged, the NCAA’s actions excluded him and other former student athletes from the collegiate licensing market.

Newsome’s truncated complaint was dismissed, however, because it did not contain sufficient allegations to make out a prima facie case under a rule of reason analysis. Among other things, the football player did not plead a relevant market, the court explained.

Statute of Limitations

Although the complaint was filed more than a decade after O’Bannon played college basketball, the statute of limitations did not bar his antitrust claims, the court ruled. The 2007 agreement between the NCAA and a company to offer “classic” college basketball games online supported an inference that O’Bannon’s image was included in that agreement.

Text of the February 8, 2010, decision in Edward O’Bannon v. National Collegiate Athletic Assn., No. C09-1967 CW, appears at 2010-1 Trade Cases ¶76,899.

Right of Publicity Action

In a separate case before the same judge, former Arizona State and Nebraska quarterback Samuel Michael Keller brought a class action complaint, asserting that Electronic Arts and the NCAA violated his right of publicity by using his likeness without consent in video games.

The court rejected EA’s and NCAA’s motions to dismiss Keller’s California right of publicity, civil conspiracy, and unfair competition law claims.

The February 8, 2010 opinion in Keller v. Electronic Arts, Inc., No. C 09-1967 CW, is reported at CCH Advertising Law Guide ¶63,760.

Magazine Shielded from Suit for Placing Musicians’ Names Near Tobacco Ads

This posting was written by William Zale, Editor of CCH Advertising Law Guide.

Rolling Stone magazine’s feature article “Indie Rock Universe”—presented in a gatefold format enclosed in full-page cigarette advertising—was fully protected noncommercial speech, a California appellate court has ruled.

The musicians complained that their names were used without authorization to advertise Camel cigarettes through placement in close proximity to R.J. Reynold’s expressions of corporate sponsorship for independent music.

The musicians asserted statutory and common law right of publicity claims, as well statutory unfair competition claims, under California law.

The publishers’ motion to strike the complaint under the California anti-SLAPP statute was granted. The statute applies to “strategic lawsuits against public participation” presenting claims based on acts in furtherance of a person’s rights of free speech or petition. The musicians failed to demonstrate a probability of prevailing, according to the court.

Noncommercial Speech

In considering whether the article was commercial or noncommercial speech, the court relied on the analytical framework developed in the 2002 decision of Kasky v. Nike, Inc. (CCH Advetising Law Guide ¶60,496).

In that case, the California Supreme Court held that Nike’s allegedly false statements in a public relations campaign constituted commercial speech and could give rise to California false advertising and unfair competition claims brought by a private citizen on behalf of the public.

Unlike Nike, the “speakers” in the present case—the publishers of Rolling Stone—did not have a direct business interest in Camel cigarettes—the goods that were the subject of the speech at issue, the court found. The musicians failed to cite a case, and the court’s research disclosed none, in which a magazine’s editorial content had been held to be transformed into commercial speech merely because of its proximity to advertisements touching on the same subject matter.

Actual Malice

To prevail, the musicians were required to provide clear and convincing evidence that the publishers acted with actual malice.

At best, the court said, the evidence raised a triable issue of negligence in publishing the gatefold. It was undisputed that the magazine’s editorial staff played no part in designing the Camel ad and that R.J. Reynold‘s staff had no role in designing the feature article.

Freedom of the Press

In addition to the freedom of speech, the court agreed with the publishers that the freedom of the press also barred the musicians’ causes of action. The freedom of the press had been extended to the content and placement of advertisements. Of the magazine’s 215 pages, no less than 108 were devoted to full-page advertisements.

The gatefold layout might intensify the readers’ exposure to the ads because the pages ran contiguously and because the format required readers to lift the advertising pages to the left and to the right to access the feature, instead of just mindlessly turning them, the court noted.

However, the court saw no principled legal distinction between a page of editorial content that was preceded and followed by full-page ads, and the gatefold format, in which the ads appeared on the reverse side of the feature’s pages.

The January 28 opinion in Stewart v. Rolling Stone LLC, California Court of Appeal, First Appellate District, Division One, No. A122452, is reported at CCH Advertising Law Guide ¶63,736.

Nude Photos Not Newsworthy, Held Within Right of Publicity

This posting was written by William Zale, Editor of CCH Advertising Law Guide.

A magazine’s unauthorized publication of 20-year-old nude photographs of a recently-murdered woman, accompanied by a brief biography, did not qualify for the newsworthiness exception to the right of publicity under Georgia law, the U.S. Court of Appeals in Atlanta has ruled.

“Newsworthiness” Exception

A publisher may be precluded by the right of publicity from publishing one’s image for purely financial gain, as in an advertisement, but when the publication is newsworthy, the right of publicity gives way to the freedom of the press, the court observed.

The biographical piece fell within the newsworthiness exception to the right of publicity. However, the brief biography could not render the nude photographs newsworthy because the publication of the biography was merely incidental to the publication of the photographs, according to the court.

The photographs were in no conceivable way related to the “incident of public concern”—the victim’s death, the court found. The publisher could not make public images that the victim did not wish made public simply because she once wished to be a model and was later murdered.

Postmortem Rights

The magazine publisher could be held liable to the victim’s estate for publishing the images without compensating the estate, the court said. The Georgia Supreme Court had stated that a person who avoids exploitation during life is entitled to have his or her image protected against exploitation after death just as much, if not more, than a person who exploited the image during life.

The murder victim’s mother, as administrator of the estate, was entitled to control when and whether images of her daughter are made public in order to maximize the economic benefit to be derived from her daughter’s posthumous fame, the court concluded.

The decision is Toffoloni v. LFP Publishing Group, LLC, CCH Advertising Law Guide ¶63,480.