Right of Publicity in the US a Franken-Mess

The “right of publicity” in this country is a Frankenstein pastiche of state rules with unique and perverse interpretations abounding. The fact that other major intellectual property rights possess a federal scheme (trade secret as a contractual right notwithstanding), while rights to one’s own persona is a state’s issue is perplexing with a side of vexing. Two cases illustrate the problem that will only take on bigger proportions as “UGC” (hipster speak for the amateur vids on YouTube) becomes the norm and personalities are sampled, manipulated, and reduxed.

For fans of retro revisited disco post retro, you might remember an early nineties sensation turned fade away Deee-Lite. Their signature hit was “Groove is the Heart” if that jogs your memory. The lead singer of the band, Kierin Kirby, aka "Lady Miss Kier," now has become famous again for entirely unintended reasons.

Kirby took issue with a pair of games released by SEGA featuring a retro revisited disco post retro female protagonist named "Ulala." Kirby strongly believed that Ulala swindled Lady Miss Kier out of her persona. In particular, Kirby asserted that the character’s name, “Ulala” was a misappropriation of Lady Miss Kier’s signature "ooh la la," phrase.

In April 2003 Kirby filed suit against SEGA in LA, asserting several causes of action, the core cause being misappropriation of likeness under Cal. Civil Code section 3344. The trial court viewed the situation through a first amendment lens and granted summary judgment for SEGA, stating "[n]othwithstanding certain similarities, Ulala is more than a mere likeness or literal depiction of Kirby. Ulala contains sufficient expressive content to constitute a 'transformative work' under the test articulated by the Supreme Court in Winter v. DC Comics (2003) 30 Cal.4th 881 and Comedy III Productions, Inc. v. Gary Saderup, Inc. (2001) 25 Cal.4th 387.”

The Court relied on the "transformative" doctrine, determining that the Ulala character was sufficiently different from lady Kirby to avoid running afoul of CA's right of publicity law. Interestingly, the court essentially rejected a blanket application of a copyright principle, derivative authorship, in the personality rights arena. Hence, although one could loosely argue that Ulala was “derived” from Kier’s stage persona, SEGA did not cross that line and prevailed here.

As the case did not hinge on the use of a photo, a voice recording, or any other typical item at issue in a publicity rights case, the court had to test the boundaries of the right when applied in more abstract waters. And astoundingly, the appellate court seemed to digest the gist of the Deee-Lite magic in its hit video, stating "[t]he song's music video, which received extensive airplay on MTV, features band members clad in 'funky retro outfits, vivid graphics, groovy dance moves, a futuristic setting and an overall party feel.'" Kierin Kirby v. SEGA of America, Inc. (2nd Dist., Div. 8, Sep. 25, 2006) No. B183820 (unpublished). Unfortunately for Kirby, she lost on appeal as well.

Kirby essentially argued that Ulala was derived from her style, her look, and her vibe. And truly, Ulala is a digital “Franken-doll”, a mashing of polygons, texture maps, motion capture and sound effects to create an on screen marionette. In other words, the character was an interpretation of lady Kirby 's stage persona, not an outright copy or photo real reproduction. Query if the Ulala character was shown to be derived from the character sketches and production notes of a rival game company, the outcome would have been different.

Nonetheless, the court made clear that in its vision of our video game future, celebs should expect to see themselves cast in video games in some interpretational fashion. And why not? This has been done in the literary universe for years. Countless characters have been fashioned on or inspired by countless celebrities from every arena of fame, politicians, sports heros, pop divas.

This case in my mind clearly lays bare the flawed reasoning of the McFarlane-Tony Twist Case. For those who are not connoisseurs of alleged celebrity misappropriation, that case involved the popular Spawn Series and hockey player Tony Twist. McFarlane, a comic book author penciled a character bearing the hockey player's name, not a derivative of the name. However, other than the name, the character was entirely the product of McFarlane’s mind (a New York mobster actually.) No look, no vibe, no style was appropriated from Twist. However, the Missouri trial jury determined that McFarlane had violated the player's right of publicity by merely appropriating the name. Fortunately for McFarlane, the court invoked the little known seldom used “JNOV,” or judgment notwithstanding the verdict to rule in favor of the McFarlane.

On appeal in 2003, the Supreme Court of Missouri reversed and remanded, unanimously holding that Twist had a valid right of publicity claim in light of the finding that McFarlane used Twist's name primarily to sell comic books/merchandise. Now on its second appeal, the Missouri Court of Appeals has affirmed the jury’s verdict. Hence, the Missouri court took a far more narrow view than its California counterpart, honing in on the fact that a “hard” publicity item such as a name was present and ignoring the highly transformative nature of its use.

The interesting point to note is that under the California standard, McFarlane’s appropriation of Twist’s name, which was grafted on a wholly unrelated character, context and universe would likely be transformative. This is especially so given the fact SEGA ostensibly "patterned" its Ulala character on Lady Miss Kier. With video and video game technology increasingly accessible, the stakes for these suits becomes higher and the courts must be cognizant of the adverse impact multimillion dollar awards will have on innovation.

Nonetheless, I do believe that California Civil Code section 3344, which states that "The prevailing party in any action under this section shall be entitled to attorney's fees and costs," is unduly harsh. Indeed, Kirby as the losing party in her suit is now required to pay SEGA attorneys fees in the amount of $763,000. Certainly this will make anyone with a shaky right of publicity suit reconsider legal action.