Saturday, February 28, 2009

The Right of Publicity, Again.

I happened to attend an IP law seminar yesterday, where the Copyright update speaker mentioned that this case:


No. 07-3269

of The Estate of John Facenda

was in his opinion one of the ten most important copyright cases of the year. I agree, and although the case was related to a new use for voice recordings, it is squarely on point with the ongoing silliness related to the Right of Publicity that so many photographers and other visual artists do not understand (or do not care to understand.)

Facenda, the legendary "Voice of God" NFL announcer, had recorded many promos for the NFL, which undisputedly owned the copyrights in the promos, both mechanical and performance. (In other words, they owned the words as written, and they owned the recordings as made, under the Copyright Act.) The NFL, however, used the recordings in a video game - which Facenda had never agreed to in any release or license. Facenda's estate sued for royalties, partially on the basis of Pennsylvania's Right of Publicity Act. (42 Pa. Cons. Stat. Ann. § 8316, see also 765 ILCS 1075.) The NFL claimed pre-emption - that because the PA law would infringe on their use of the copyrighted performances, it was pre-empted by the Copyright Act. (The Copyright Act, which is a Constitutionally-mandated Federal law, always trumps state law unless there is an exception.)

The Federal District Court agreed, but the Third Circuit, in a precedential appeal, reversed. They explicitly held that because the Right of Publicity protects a different right, and a different asset, there was no pre-emption. They based this on two factors:

1) If a state right has additional requirements which the Copyright Act does not require to grant protection, there is no pre-emption. PA's law requires commercial value of the likeness to be proven before the right attaches. There was no dispute about the value of Facenda's voice, which was significant. Therefore the pre-emption test failed on that grounds.

2) More importantly for photographers and other visual artists, the Appeals Court found that likeness is not copyrightable, and therefore the right of publicity is not within the scope of copyright. In other words, while I can create innumerable photographs of a face, all of which are potentially copyrighted, I can not copyright a face, no matter how exhaustively I document it. That means that if a state grants me some kind of protection in the appearance of my face, that protection does not conflict with the Copyright Act because the two rights are completely disjoint.

The appeal did not touch on First Amendment grounds, and the court did duly note that under Campbell v. Acuff-Rose Music, (510 U.S. 569, 571–72, 579–80 (1994)) where there is a First Amendment issue, the Copyright act's Fair Use doctrine usually controls, and there is a presumption against the right of publicity. However, there is lots of wiggle room there: IL's law, for instance, specifically exempts works of the fine arts but defines such works very narrowly. Excessive commercial exploitation of likeness, even in an artistic context, is very possibly not pre-empted and IL's law would quite likely withstand Federal judicial review.

This opinion only binds the Third Circuit courts, but it was exhaustively researched and very well-written and I would not hesitate to cite it as persuasive authority before the other Districts. The Right of Publicity is getting stronger every day: bottom line, get a good release, get it vetted by a lawyer who knows what they are doing, and get it signed.


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