Right of Publicity

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Last week, Carl’s Jr. announced that in honor of Steven Spielberg’s new movie, Ready Player One, they would change the name of their Charbroiled Sliders to “SpielBurgers.” They tweeted: “@StevenSpielberg hasn’t signed off yet, but we’re pretty sure he’ll be down with it.”

In fact, Spielberg was not down with it. He posted a video on Twitter politely declining the honor: “It’s recently come to my attention that Carl’s Jr. wants to rename their Charbroiled Sliders ‘SpielBurgers.’ And they’re pretty good, but I’m passing. Cease and desist. You can’t do it. Sorry, guys.”

Carl’s Jr. took the rejection well, focusing on the positive: “OMG Spielberg likes our Charbroiled Sliders!” Although this was probably a successful campaign for the company, it could have easily turned out worse. As we’ve noted before, some celebrities respond to the unauthorized use of their names less politely. For example, when a clothing company played on Don Henley’s name and encouraged people to “Don a Henley,” the famous musician filed a lawsuit against them.

Some celebrities are willing to play along with these stunts. For example, Mark Hamill tweeted that he was “completely open to the idea of “HAMILLBURGERS” #NoShameNoGain.” But, if you guess wrong, gambling on whether a celebrity is going to be OK with your use of their name can be very costly.

For a more in-depth analysis of these issues, check out Part I, Part II, and Part III of a series on Right of Publicity claims on Drye Wit.

In 2014, Anheuser-Busch ran a contest on Facebook in which consumers were invited to submit photos of themselves “acting natural.” The contest rules stated that entrants could only submit their original works, and that the photos could not infringe anyone else’s copyrights, privacy rights, publicity rights, or other rights. Moreover, the rules stated that entrants granted Anheuser-Busch a broad license to use their photos in any media. After the contest ended, the company started using some of the photos on materials for its “Every Natty Has a Story” campaign, including coasters and posters that were distributed in bars.

So far, this story is fairly typical, and could represent any number of contests that are run in the US every year. What makes this story different, Kayla Kraft Photothough, is that the owner of one of the photos Anheuser-Busch used filed a lawsuit against the company for copyright infringement, invasion of privacy, and violation of her right of publicity. Kayla Kraft argues that she owns the copyrights to a photo of her drinking beer while wearing a fake mustache that Anheuser-Busch used in its campaign, and that the company used the photo without her consent. She is seeking unspecified damages.

It’s difficult to piece together what may have happened. According to press reports, Anheuser-Busch says that Kraft’s picture was submitted as a contest entry. The company hasn’t answered the complaint yet, though, and the complaint doesn’t specifically mention the contest, so we don’t have a lot of details. Obviously, the case is going to turn on facts that we don’t have, including who submitted the picture. But although it’s too early to draw clear lessons from the case, the suit still highlights some important issues related to the use of user-generated content (otherwise known as “UGC”).

Companies can – and should – put provisions in rules that (among other things) tell people what they can and can’t submit, specify what rights the company has to submissions, and release the company from any liability. Keep in mind, though, that not everyone will read the rules, and that submitters may not even have the authority to grant the necessary rights. There are some things companies can do to address these risk. For example, it might make sense to highlight key provisions outside of the rules. And although you may be able to rely on online releases for some things, there are instances – such as when you want to use content offline – in which an offline written release make more sense.

Almost every campaign that includes UGC involves a careful balancing of risks. Because a “perfect” solution may be cumbersome in many cases, most companies will accept some level of uncertainty. But lawsuits like this serve as good reminders of what can go wrong.

Earlier this year, Airbnb ran a contest in which one winner could “come stay in the former home of Julia Child.” The company LaPitchouneadvertised that entrants could imagine themselves “walking the halls of Julia Child’s former home,” and “channeling the culinary genius of Julia Child,” while “combing over the knick knacks in her kitchen exactly as she left them.” Although the contest may have been a hit with travelers and fans of the original celebrity chef, the chef’s estate was less enthused. This week, The Julia Child Foundation for Gastronomy and the Culinary Arts sued Airbnb and its publicity firm, arguing that contest violated Child’s right of publicity.

According to the complaint, Airbnb contacted the Foundation in April, and sought permission to use Child’s name and likeness in connection with the contest. Consistent with Child’s longstanding policy of refusing requests to associate her name or image with commercial products or brands, the Foundation expressly declined the request. Nevertheless, Airbnb moved forward with the promotion, and used Child’s name on its website, on social media, and in an e-mail campaign. As a result, Airbnb won a trip to the California court system, where it can walk the same halls that many celebrities have walked.

As we’ve noted before, the risks of using a celebrities name in ads without permission can be significant. And although there may be cases in which a company can argue that it doesn’t need permission – such as when the use is protected by the First Amendment – it can be hard for a company to argue that permission isn’t necessary, when it had previously asked for it. For a more detailed analysis of this case, please see this post from our friends at Drye Wit. And, while you’re there, be sure to read their three-part series on Right of Publicity claims.

For years, Michael Jordan dominated opponents on the basketball court. Now, he seems to be doing the same in legal courts. Last week, a jury ordered Chicago grocery chain Dominick’s (now owned by Safeway) to pay the former NBA star $8.9 million for the unapproved use of his name in an ad.

The case stems from the ad below, which ran in Sports Illustrated in 2009. When Jordan was inducted into the Basketball Hall of Fame, Dominick’s ran the ad congratulating Jordan on his accomplishment, calling him a “cut above.” In an apparent attempt at wit, the ad ran above a picture of a cut of steak, and a $2 coupon. Jordan didn’t get the joke. Instead, he sued the chain, arguing that the ad violated his right of publicity. (For a primer on right of publicity issues, click here.)Jordan Ad

A federal judge had previously determined that the ad violated Jordan’s rights under the Illinois Right of Publicity Act. At this stage of the trial, the jury was asked to determine how much money the grocery chain owed Jordan for the violation. During the trial, Dominick’s lawyers argued that Jordan should be paid $126,900. Jordan’s attorneys, however, argued that the star does not take less than $10 million for sponsorships, pointing to deals he has with companies like Nike and Gatorade. The jury sided with Jordan’s team, and came back with the $8.9 million number.

This case should serve as a reminder about the dangers of using a celebrity image without permission. We’ve blogged about this issue before. In fact, last year, we wrote about a similar right of publicity lawsuit that Jordan filed against Jewel Food Stores over another ad in that same issue of Sports Illustrated. That case goes to trial for damages in December. The Jewel legal team is likely revisiting its playbook after Jordan’s latest victory.

US 2; Germany 0

It’s only been a few hours since the US Women’s National Team beat Germany to secure a spot in the FIFA Women’s World Cup Finals, and we’ve already gotten questions from advertisers who want to capitalize on the victory. Is it OK to use soccer-related themes in our ads? Can we mention the World Cup? Is it OK to discuss or interact with players on our social media posts? The answers always depend on the context, but unless a company is an official sponsor, these strategies can often pose some risks.

Some companies pay a lot of money for the right to be associated with a team, sport, or event. If you advertise in a way that suggests a similar association — without having paid for that right — you could be accused of “ambush marketing.” The risks are particularly high if another company has paid for a sponsorship in a similar category. For example, during the 2010 Olympics, Subway ran a TV commercial in which Michael Phelps swam through the wall of a pool, across the country, and towards Vancouver, the site of that year’s games. Neither the US Olympic Committee nor McDonald’s (a top sponsor in the Quick Service Restaurant category) took kindly to the ad, and the Committee lashed out at Subway ambush marketing.

The analysis is similar when it comes to mentioning athletes. Again, some companies pay a lot of money for the right to use an athlete’s name or image in ads. If you do that without permission, the athlete can argue that you’ve violated her right of publicity and sue for damages. (Click here for other posts on this topic.) Even a passing reference or image on a social media post can be enough to trigger a complaint.

As an individual, you should feel free to post and tweet about the team and your favorite players as much as you want. No one is going to complain. (In fact, we might think less of you if you weren’t cheering the team on.) But remember that different rules apply to companies. Don’t get so swept away in the excitement that you forget where the lines are drawn.

Last year, Duluth Trading Company ran ads promoting its henley-style shirts that urged customers to “Don a Henley and take it easy.” (Readers of a different generation, take note: Don Henley is one of the singers in the Eagles, and Take it Easy was the band’s first single inHenley 1974.)

If you’ve read our previous posts on right of publicity issues, you may know that it’s usually not a good idea to use a celebrity’s name or image without their permission. In this case, Henley filed a lawsuit against Duluth, arguing that the retailer’s ads exploited his celebrity status, violated his publicity rights, and infringed his trademarks.

The parties agreed to settle the suit this week, and Duluth posted a public apology to Don Henley on its Facebook page. In the apology, the company noted that although it aims to keep its ads “fresh, interesting, and funny,” they had “pushed the advertising envelope too far.” “We have learned a valuable lesson and thank Mr. Henley for helping us appreciate the importance that he and other artists place in their publicity rights.”

Luckily, you don’t have to be sued by Don Henley to appreciate the importance of publicity rights. You can just read our blog. Or you can check out a recent series on right of publicity claims posted by our friends at Drye Wit.

Jennifer Love Hewitt doesn’t love The Marz Group or its vitamin sprays. In fact, last week, the actress sued the company for using her image in ads without authorization.

The Marz Group spent a few minutes in the spotlight on ABC’s Shark Tank, a reality show in which entrepreneurs try to convince investors to take an equity stake in their businesses. The company pitched a series of vitamin sprays that purportedly serve as weight-loss supplements, energy boosters, and sleep aids, among other things. The investors weren’t convinced, however, with one calling the products a “scam,” and another stating that the concept was “hard to swallow.”

Undeterred, the company has been selling their products online, often using images of celebrities in a manner that suggests the celebrities endorse the products. At least one of the celebrities, however, isn’t happy. In her suit, Hewitt argues that the company is using her name, photograph, and likeness without her consent, and that they have ignored her requests to stop. Hewitt is asking for an injunction and unspecified damages.

As we’ve noted several times this year, some companies pay a lot of money for the right to associate themselves with the celebrities. If you don’t pay a celebrity in the form of an endorsement fee, you may end up paying them more in the form of legal damages.

Last week, we posted that White House had objected when Samsung used President Obama’s image in a tweet. And before that, we posted that Michael Jordan had objected when Jewel-Osco used his name and a picture of his iconic shoes in ad. Now, the estate of Elvis Presley has filed a new lawsuit alleging that Beretta used the name and image of the legendary singer (and gun enthusiast) to promote its new Beretta 692 competition shotgun.

The Italian gun-maker featured Elvis imagery in various ads, including the one below, and hired Elvis Elvisimpersonators to appear at various events. (Catch a video here before it’s taken down.) According to the complaint, Beretta’s unauthorized use of the Elvis imagery “falsely indicated to the purchasing public that Beretta, its business, and its goods were somehow sponsored, endorsed, or approved by plaintiff . . . .” This caused injury to the estate “by depriving the plaintiff of its right to control the usage of its property and to derive monetary benefit from authorized usage of such property.” The estate seeks an injunction and monetary damages.

This case serves as a reminder that a celebrity’s right of publicity can extend beyond the grave. A number of states — including Tennessee — have statutes that explicitly recognize a post-mortem right of publicity. Even in states without these types of statues, the estates of celebrities may have certain common law rights. If you want to use a celebrity in your ad campaign — regardless of whether that celebrity is dead or live — make sure you check with your legal team first.

During a White House ceremony honoring the Boston Red Sox for the team’s recent World Series victory, David Ortiz took a picture of himself with President Obama. He later posted the picture on his Twitter feed. Samsung, who has an endorsement deal with Ortiz, re-tweeted the picture to its 5.26 million followers, and later noted that the picture was taken with a Samsung phone. Although the president may have been smiling broadly in the photo, his legal team certainly wasn’t smiling after Samsung’s tweet.

White House press secretary Jay Carney told reporters that the president’s legal team objects to the company’sOrtiz Selfie commercial use of the photograph. “As a rule, the White House objects to attempts to use the president’s likeness for commercial purposes. And we certainly object in this case.” (As we’ve posted before, this isn’t the first time the White House has objected to the use of the President’s image by a company.) Carney declined to say whether White House lawyers have officially asked the company to stop using the photo.

It may seem like re-tweeting a picture that features a celebrity, such as the President, is a fairly innocent activity. And it may be, if you’re tweeting as a consumer. But when a company does the same thing, the action could constitute a violation of the celebrity’s right of publicity. The risk can be even higher with elected politicians – especially with the President of the United States – because the false affiliation and endorsement claims are arguably stronger than for entertainers who are not in the business of endorsing causes and issues, as politicians do on a regular basis. As we noted last month, companies need to be careful about showing or mentioning celebrities in ads. This incident demonstrates that even using an image in your tweet could lead to complaints.

 

Clients often ask us whether they can mention celebrities in their ad campaigns. A recent Seventh Circuit decision in Michael Jordan’s $5 million lawsuit against Jewel-Osco shows just how risky that can be.

To commemorate Jordan’s 2009 induction into the Basketball Hall of Fame, Time, Inc., the publisher of Sports Illustrated, produced a special issue devoted exclusively to Michael Jordan’s career. Jewel Food Stores, Inc., a Chicago-based supermarket chain, ran a full-page ad in the commemorative issue featuring a pair of red, black and white gym shoes, reminiscent of Nike’s Air Jordan I, labeled with Jordan’s famous jersey number, “23.” The ad congratulated Jordan on his accomplishments as a fellow Chicagoan who was “just around the corner” for so many years. The language is significant because Jewel’s slogan is “Good things are just around the corner.” Jordan sued arguing, among other things, that Jewel had misappropriated his identity.MJ Ad

A key issue in the case is whether Jewel’s ad constitutes commercial speech, which is subject to less First Amendment protection. The district court dismissed Jordan’s case, finding that the ad wasn’t commercial because it wasn’t selling a specific product. The Seventh Circuit disagreed, holding that an ad doesn’t have to promote a specific product for it to be commercial. While courts generally define commercial speech as “speech that proposes a commercial transaction,” the Seventh Circuit makes clear that commercial speech is not limited to speech that directly or indirectly proposes to sell products. This category of speech can also include image advertising. Jewel’s ad is a good example. According to the court, the ad aimed to promote “goodwill for the Jewel-Osco brand by exploiting public affection for Jordan at an auspicious moment in his career.” The ad broadly promoted Jewel’s stores, in general, and the use of the company’s slogan in the congratulatory message “only makes sense if the aim is to promote shopping” at the stores.

Be careful about mentioning celebrities in ads, unless you have agreements with them. Remember that companies pay celebrities a lot of money for the right to associate themselves with the celebrities. If you don’t pay a celebrity in the form of an endorsement fee, you may end up paying them more in the form of legal damages.