Using Still Photographs from Film for Advertising Purposes Claim
In Fleet v. CBS, Inc., supra, 50 Cal. App. 4th 1911, Division Four of the district found the section 3344 right of publicity claims of several motion picture actors were preempted by the federal Copyright Act.
The actors in Fleet were disgruntled over not having been paid for working on a film.
When the defendant, CBS, Inc., which owned the exclusive distribution rights to the film, sought to distribute it on videotape, the actors sued. Among other things, the complaint alleged CBS had violated section 3344 by using for advertising and promotional purposes still photographs of the plaintiffs taken from the film.
In Fleet, Division Four held the actors' section 3344 claims against CBS were preempted by the Copyright Act.
Division Four's analysis focused on the fact that the actors could have protected their dramatic performances in the film by retaining a copyright.
Division Four distinguished other cases in which the right of publicity claim was held not to be preempted by the Copyright Act on the basis that in those cases, "the right sought to be protected was not copyrightable--Clint Eastwood's likeness captured in a photograph; Kareem Abdul-Jabbar's former name; Bette Midler's distinctive vocal style; Vanna White's distinctive visual image, etc.
The plaintiffs in those cases asserted no copyright claims because they had none to assert. Here, by contrast, appellants seek to prevent CBS from using performances captured on film.
These performances were copyrightable and appellants could have claimed a copyright in them ... ." ( Fleet v. CBS, Inc., supra, 50 Cal. App. 4th at pp. 1921-1922.)
Division Four acknowledged the actors had never disputed CBS's contention that as employees of the production company, the actors had voluntarily relinquished any copyright in their performances in the film, which constituted a work made for hire under the Copyright Act. ( Fleet v. CBS, Inc., supra, 50 Cal. App. 4th at pp. 1916-1917.)
The work made for hire doctrine gives the employer the exclusive copyright to the work unless the parties have expressly agreed otherwise in a signed, written agreement. (17 U.S.C. 101, 201.)
Division Four nevertheless decided the case on the basis of the actors' theoretical right to copyright their performances in the film. the court stated: "We have not been called on to decide, and do not decide, whether the actors in the film were employees or whether the works made for hire doctrine otherwise applies. Accordingly, this aspect of the decision has no relevance to the present case." ( Fleet v. CBS, Inc., supra, 50 Cal. App. 4th at p. 1923.)
See Eastwood v. Superior Court, supra, 149 Cal. App. 3d 409 (valid 3344 claim stated where the National Enquirer had allegedly used Clint Eastwood's name and photograph on its newspaper cover, without his consent, together with a deliberately fictional account, to promote its publication); Abdul-Jabbar v. General Motors Corp., supra, 85 F.3d 407 (valid 3344 and tort claims stated where the defendants had allegedly used the name "Lew Alcindor" in a television commercial without the plaintiff's consent); Midler v. Ford Motor Co. (9th Cir. 1988) 849 F.2d 460, 462 (claim stated under tort law but not 3344 where the defendant had allegedly used a celebrity voice impersonator to record one of the celebrity's signature tunes in a commercial); and White v. Samsung Electronics America, Inc. (9th Cir. 1992) 971 F.2d 1395 (claim stated under tort law but not 3344 where the defendant had allegedly used a robot to imitate the physical appearance of Vanna White, a well-known television personality).
The Ninth Circuit's rulings in Midler, White, and another similar case, Waits v. Frito-Lay, Inc. (9th Cir. 1992) 978 F.2d 1093 (reaffirming the Midler ruling that a voice is not coyrightable and, hence, a tort claim for celebrity voice misappropriation is not preempted by the Copyright Act), have been criticized by Nimmer. Nimmer points out that the Copyright Act allows "soundalike" recordings (17 U.S.C. 114(b)) and fair use parodies. Nimmer questions whether state law may "forbid that which Congress intended to validate[.]" (1 Nimmer on Copyright, supra, 1.01 [B][b], p. 1-62.)
Whether or not the actors in Fleet could have claimed a copyright in their performances, Fleet stands for the solid proposition that performers in a copyrighted film may not use their statutory right of publicity to prevent the exclusive copyright holder from distributing the film.
As between the exclusive copyright holder and any actor, performer, model, or person who appears in the copyrighted work, the latter may not preclude the former from exercising the rights afforded under the exclusive copyright by claiming a violation of the right of publicity.
In an action against the exclusive copyright holder, "the state law right to publicity action is preempted where the conduct alleged to violate the right consists only of copying the work in which the plaintiff claims a copyright. [Citations.]" ( Michaels v. Internet Entertainment Group, Inc. (C.D.Cal. 1998) 5 F. Supp.2d 823, 837.)
In Michaels, a celebrity couple--musician Bret Michaels and actress Pamela Anderson Lee--obtained a preliminary injunction halting the allegedly unauthorized Internet distribution of a copyrighted videotape of the couple having sex. the court in Michaels held that the plaintiffs' section 3344 claim was not preempted by the Copyright Act.
In a New York decision, Russell v. Marboro Books (1959) 18 Misc.2d 166 [183 N.Y.Supp.2d 8]. Mary Jane Russell, a famous professional model, signed an unrestricted release allowing a well-known photographer, Richard Avedon, to use a photograph of the model taken for a bookstore's advertising campaign. the photograph was published for its intended purpose without incident.
Thereafter, however, the bookstore asked Avedon for the negative, falsely claiming that more bookstore posters were needed.
The bookstore sold the negative to a bedsheet manufacturer, which altered the photograph to give the false appearance that Russell "had posed for a bedsheet advertisement portraying a willing call girl waiting to be used by a stranger whetting his sexual appetite." (18 Misc.2d at p. 171 [183 N.Y.Supp.2d at p. 17].)
The New York court held that Russell was entitled to sue for violation of her statutory right of publicity. the court found that although plaintiff had given an unrestricted release permitting the use of her photograph without her inspection and approval, she did not, as a matter of law, agree to "the dissemination of all types of altered pictures or of libelous material." ( Id. at p. 182 [183 N.Y.Supp.2d at p. 28].)