The TMCA

The 2010s were a heyday for bridal fashion. TLC’s “Say Yes to the Dress” reality series captivated viewers watching brides navigate family opinions and emotions while shopping for “the dress” at Kleinfeld’s Bridal in New York City. Instagram became a new medium for the engaged to search for bridal fashion and plan the big day. The @misshayleypaige Instagram account used by bridal fashion designer Hayley Paige Gutman was particularly successful, amassing over 1.1 million followers by the end of 2020. Gutman was employed by JLM Couture, Inc., which manufactures and markets bridal fashion collections, including under a number of brands under the name “Hayley Paige” or variations thereof. The Instagram account features posts relating to both Hayley Paige designs and Gutman’s personal life. But, Gutman’s employment agreement with JLM contained provisions regarding the use of the names “Hayley,” “Paige,” “Hayley Paige,” and even “Hayley Paige Gutman.” Starting in 2019 into 2020, JLM began to take issue with Gutman’s use of the Instagram account, as well as her creation and use of a misshayleypage TikTok account. JLM accused Gutman of seizing control over the Instagram account and using “misshayleypage” handles to promote third party goods like olive oil, beer, and nutritional supplements without JLM’s approval. Things came to a head in late 2020, when JLM’s CEO confronted Gutman during a meeting at Kleinfeld’s, of all places. In December 2020, JLM sued Gutman in the Southern District of New York, alleging claims of trademark dilution, false designation of origin, unfair competition, and breach of Gutman’s employment agreement, among others. As The TMCA previously reported, JLM won a temporary restraining order that prohibited Gutman from using social media accounts bearing the misshayleypage name. Following the TRO ruling, Gutman resigned from JLM and took to Instagram on a new account tearfully describing the legal dispute and explaining that she was avoiding use her own name. In the years since then, the SDNY granted JLM a preliminary injunction, and the dispute bounced back and forth between the SDNY and Second Circuit Court of Appeals. In October 2023, JLM filed for chapter 11 bankruptcy with just $151,000 cash on hand, citing damage to its brand caused by litigation with Gutman as a primary driver of its financial decline. Gutman filed a motion seeking to convert JLM’s case to a liquidation under chapter 7 of the U.S. Bankruptcy Code, arguing the harm caused by the litigation to JLM’s relationships with vendors is so severe that JLM cannot successfully reorganize. On May 17, 2024, JLM filed a motion seeking bankruptcy court approval of a settlement with Gutman. The parties’ settlement agreement provides that JLM will dismiss its suit against Gutman and transfer a number of “Hayley Paige”-related intellectual property rights to Gutman in exchange for a payment that is not publicly disclosed. The transferred IP rights will include trademarks, rights of publicity, social media accounts, and copyrights embodied in Gutman’s copyrightable works owned by JLM, among other things. The bankruptcy court orally approved the settlement during a hearing on May 23, observing that the settlement payment will facilitate JLM’s reorganization. The court entered an order approving the settlement on May 24. Gutman has already recommenced posting on @misshayleypaige. The JLM-Gutman dispute showcases the power of a social media following. JLM’s CEO testified at the settlement hearing that JLM’s finances were negatively impacted by Gutman’s resignation and harsh criticism of the company on social media. JLM’s financial condition deteriorated notwithstanding its victories against Gutman and control of @misshayleypaige social media accounts, to the point that selling the disputed IP rights to Gutman is necessary for the company to have a chance at surviving. The case surely is and will continue to be a beacon for other brand owners seeking to establish and control social media presence.

Trust and estate attorneys regularly advise their clients to enter into prenuptial agreements to protect the valuable assets each spouse brings to the marriage as well as how to distribute community property in the event of a divorce. Brand collaborations with celebrities, influencers or other brands are much like marriages, but brand collaborations are even more unlikely to last. Why not plan for the split, whether it be a conscious uncoupling or a Page 6 kind of divorce, with a prenup? . . . . Click here to see the rest of Fara’s article on IPWatchdog.

Image from Evan El-Amin / Shutterstock.com During the 2016 presidential primaries, then presidential candidates Donald Trump and Senator Marco Rubio exchanged insults, with Trump calling Rubio “Little Marco” and Rubio commenting on the size of Trumps hands. Recently, this exchange was the basis for a Federal Circuit decision reversing a refusal to register the trademark TRUMP TOO SMALL as an unconstitutional restriction of speech under the First Amendment. In 2018, Steve Elster applied to register the mark for use on T-shirts and related apparel. As the Federal Circuit recounts, “According to Elster’s registration request, the phrase he sought to trademark invokes a memorable exchange between President Trump and Senator Marco Rubio . . . and ‘aims to ‘convey[] that some features of President Trump and his policies are diminutive.’” The Examining Attorney at the United States Patent and Trademark Office denied Mr. Elster’s application under Sections 2(a) and 2(c) of the Lanham Act. On appeal to the Trademark Trial and Appeal Board (“TTAB”), the TTAB affirmed the refusal of the application, relying solely on Section 2(c) of the Lanham Act. Section 2(c) of the Lanham Act prohibits registration of a trademark that: “Consists of or comprises a name, portrait or signature identifying a particular living individual except by his written consent.” 15 U.S.C. § 1052(c). Section 2(c) does not prohibit all uses of an individual’s name in a trademark. Rather, it applies only when: (1) the public would reasonably assume that the goods associated with the mark are connected with the particular individual due to the individual’s fame or recognition; or (2) the individual is publicly connected with the business in which the mark is, or will be, used. There was no dispute that President Trump is sufficiently famous to fall within the protection of Section 2(c) “not only because of his political office but also because of his prior celebrity.” Elster argued that refusing to register the TRUMP TOO SMALL trademark violated his right to free speech under the First Amendment. The TTAB noted that as an administrative tribunal, it does not have the authority to strike down any statute as unconstitutional, but noted that a constitutional challenge may involve “many threshold questions . . . to which the [agency] can apply its expertise”, and went on to find that the refusal to register TRUMP TOO SMALL was not unconstitutional. The TTAB first opined that Section 2(c), like all of Section 2 of the Lanham Act, merely sets forth criteria for obtaining a federal trademark registration. It does not control the use of the trademark. Indeed, one can use a trademark in commerce without obtaining a registration and Elster could do so here even if the registration is denied. Second, the TTAB found that Section 2(c) does not restrict any particular type of speech, but applies in “an objective, straightforward way to any proposed mark that consists of or comprises the name of a particular living individual, regardless of the viewpoint conveyed by the proposed mark.” Accordingly, the TTAB affirmed the Examiner’s refusal to register TRUMP TOO SMALL. On appeal, the Federal Circuit reversed the TTAB, finding that Section 2(c) is unconstitutional as applied to the TRUMP TOO SMALL trademark, while deferring any decision on whether it is unconstitutional in all cases. The Court noted that trademarks can be protected speech and that denying registration, while not prohibiting use of the trademark, “chills speech” by stripping the mark of the many advantages associated with federal registration. Accordingly, there must be a substantial government interest to justify restricting speech by denying a registration. The purpose of the Section 2(c) is to protect state law rights of privacy and publicity that individuals have in their names, appearance, and likeness. The Court quickly found that a right of privacy cannot shield a public official from comment or criticism. The Court also questioned whether a political figure maintains a right of publicity at all. At the very least, the political figure’s right of publicity would not permit a prohibition on the distribution of posters, buttons, apparel, or other materials that express support for or disagreement with the political figure. In short, “[a]s a result of the President’s status as a public official and because Elster’s mark communicates his disagreement with and criticism of the then-President’s approach to governance, the government has no interest in disadvantaging Elster’s speech.” As we reported previously, the Supreme Court has found that portions of Section 2(a) of the Lanham Act, which prohibit the registration of “immoral, deceptive, or scandalous” trademarks and trademarks “which may disparage . . . any persons, living or dead” are unconstitutional. While this opinion expands the Supreme Court’s reasoning to Section 2(c), whether its reasoning applies to trademarks that do not involve political figures or that do not criticize famous individuals remains to be seen. The Federal Circuit noted that it was only asked to analyze Section 2(c) as applied to Elster’s mark. But it did go on to note that Section 2(c) may be “impermissibly overbroad” because it does not leave the USPTO discretion to permit registration for marks that advance First Amendment interests.

A new post-mortem right of publicity bill that was signed into law by Governor Cuomo on November 30, 2020, will soon take effect on May 29, 2021. The new law recognizes post-mortem rights of publicity in New York for the first time. Broadly speaking, no right of publicity exists at the federal level and so those rights must be gained through state statutes and/or common law. Under the present regime, New York protects living people against the unauthorized use of their personality (i.e., their name, portrait, picture and voice) through its right of privacy statute, Sections 50 and 51 of New York’s Civil Rights Law - Article 5. This is actually the longest standing right of publicity law for the living in the U.S., having been originally passed in 1903. But the rights conferred in New York have, until now, disappeared at death, similar to many other U.S. states. Under the new law these rights will finally be granted in New York through the passing of a new provision in Section 50 of New York’s Civil Rights Law - Section 50-F. This new section adds two types of rights – a more traditional post-mortem right of publicity granted to deceased personalities, and a second, more unusual provision related to digital replicas (such as holograms) applicable to deceased performers. Who qualifies for post-mortem rights?  Two types of deceased individuals (not corporations) – a “deceased personality” and a “deceased performer”- qualify for post-mortem protection under the new law. A “deceased personality” is a natural person who is domiciled in New York at the time of their death and whose name, voice, signature, photograph, or likeness has commercial value either at the time of their death or because of their death. So a deceased personality need not have commercialized their personality or identity prior to their death in order to qualify for protection if the way in which they die makes them famous. A “deceased performer” is also a natural person who dies domiciled in New York but who, at the time of death was regularly engaged in acting, singing, dancing or playing a musical instrument. Athletes would not fall under the definition of “deceased performer,” and it’s unclear whether retired or amateur performers would qualify. For both categories, only those who pass away after the new statute takes effect in May 2021 are protected. What rights do they get? Under the new law, a deceased personality can protect their name, voice, signature, photograph or likeness against the use of these on or in products, merchandise or goods (or for purposes of advertising or selling, or soliciting purchases of these or services), without prior consent. This right is akin to protection against false endorsement, and is viewed as narrower than that given to the living, who are protected against uses of their persona for “for advertising purposes or for the purposes of trade” more broadly. Based on this, advertising or trade uses other than those specifically listed, such as uses in creative works, are likely allowed. Deceased performers are protected against the unauthorized use of their digital replica in a scripted audiovisual work as a fictional character (such as a movie), or in live musical performances (such as a concert), without consent, if the public is likely to be misled into thinking it was an authorized use. But a conspicuous disclaimer in the credits of a scripted audiovisual work and making clear that the use of the digital replica was unauthorized will avoid liability. How long do the new post-mortem rights last? The length of protection is 40 years after death. This is less than states such as California, which provides protection for 70 years, but more than other states such as Tennessee, which has an initial 10 year term. Free speech considerations A major obstacle to passing rights of publicity laws are First Amendment concerns. The new law robustly addresses free speech concerns by permitting a number of fair uses such as parodies, satires, criticism or commentary, news, and historical works. It also permits uses in literary and other artistic works, and works that are newsworthy, educational or in the public interest. It also excludes uses in sports programs among other uses. Some exceptions to these exceptions apply. What else? Transferability, Descendibility and Registration The new law also makes explicit that the post-mortem publicity rights granted are freely transferable and descendible. It also provides a mechanism for owners of a deceased person’s rights to register their claim with the New York Secretary of State in order to be able to bring a claim. Looking ahead This new law is viewed favorably by celebrities, unions such as SAG-AFTRA and others who have advocated for years for New York to come into line with other states, and to prescribe by statute rights not otherwise recognized under New York common law. As the law goes into effect, it may result in a narrower expansion of rights than anticipated, given its various limitations as written. So it remains to be seen how meaningful the law is in practice and whether other legal avenues commonly relied upon to protect celebrities after death, such as trademark protection under the Lanham Act, confer stronger and broader rights overall.

Just in time for the holidays, the U.S. Court of Appeals for the Seventh Circuit resolved a lawsuit rooted in the spirit of the season—family drama.  Fabick, Inc. v. JFTCO, Inc. recounts a dispute that pit brother against brother and offers insight into the doctrine of reverse trademark confusion.  The trademark at issue?  The family’s good name, of course. A Family’s Name, a Trademark, and a Lawsuit This story begins with the patriarch, John Fabick, founder of multiple businesses throughout the Midwest.  In 1982, the John Fabick Tractor Company bought two Caterpillar equipment dealerships serving Wisconsin and the Upper Peninsula of Michigan.  John’s son Joseph Fabick, Sr. then moved to Wisconsin and founded FABCO, a business selling Caterpillar equipment, attachments, and parts.  FABCO launched a subsidiary, Fabick, Inc. in the early 1990s.  Fabick, Inc.’s business focused on spray-on sealants for use in the beds of pickup trucks and similar vehicles.  In 1994, Fabick, Inc. obtained a trademark registration for “FABICK” for “polyurethane-based and polyurea-based sealers and protectants to be applied as a coating to hard or flexible surfaces.” One of Joseph Sr.’s sons, Jeré, worked for FABCO, while another, Jay, worked for Fabick, Inc.  Tensions between the brothers made this unworkable, and by the early 2000s, Jeré had taken over FABCO, while Jay assumed sole ownership of Fabick, Inc.  The two companies coexisted peacefully for a time. In 2015, the John Fabick Tractor Company formed a new subsidiary, JFTCO, which purchased FABCO and took over its operations.  JFTCO began operating as a Caterpillar dealer and launched an extensive effort to rebrand under the trade name “Fabick CAT.”  Fabick, Inc. accused JFTCO of trademark infringement, alleging the rebranding resulted in confusion, evidenced by consumers calling Fabick, Inc. looking for JFTCO and Fabick, Inc. receiving checks intended for JFTCO.  At trial, the jury found JFTCO liable for federal trademark infringement. Both parties appealed.  JFTCO challenged the sufficiency of the evidence to support Fabick, Inc.’s infringement claim as well as the court’s jury instructions.  Fabick, Inc. found the trial court’s remedies inadequate, and it appealed the court’s refusal to award lost profits or grant a broad injunction barring JFTCO from using the “Fabick” name in any context. The Seventh Circuit’s Explanation of Reverse Trademark Confusion The Seventh Circuit explained that Fabick, Inc. had proven a less common, but still actionable, theory of trademark infringement under the Lanham Act—reverse trademark confusion.  In a typical infringement case, a smaller junior user attempts to profit from a larger senior user’s goodwill by imitating its mark.  In a reverse confusion case, a larger junior user saturates the market with a mark confusingly similar to that of a smaller senior user.  The junior user may not be trying to profit from the senior user’s goodwill, but the senior user is harmed anyway, as the public assumes the senior user’s products are really the junior user’s or that the two have somehow become connected.  The senior user loses the value of its corporate and product identities, loses control of its goodwill and reputation, and is limited in its ability to move into new markets. The Seventh Circuit found sufficient evidence to support the jury’s verdict that Fabick, Inc. had proven JFTCO liable for reverse trademark infringement.  It also approved the district court’s modification of a standard jury instruction permitting the jury to find infringement if: “[D]efendant JFTCO used the FABICK mark in a manner that is likely to cause confusion as to the source or origin of plaintiff’s product or that [Fabick, Inc.] has somehow become connected to JFTCO.”  (The language the district court added to the Seventh Circuit Pattern Jury Instruction 13.1.2 is bolded.)  This additional language was appropriate in a reverse confusion case because it was accompanied by other instructions that required the jury to find the confusion about a connection between Fabick, Inc. and JFTCO related to the parties products or services, not just “vague ‘general confusion’ in the ether,” which would not support infringement. For its part, Fabick, Inc. challenged the district court’s refusal to award it lost profits or enjoin JFTCO from using the mark “Fabick” in any business context.  The Seventh Circuit relied on other cases finding “meager justification” for profit awards in reverse confusion cases and affirmed.  As it explained, the junior user in a reverse confusion case is not trying to take away the senior user’s customers through confusion, meaning the junior user’s profits are not a proper basis for damages.  The Seventh Circuit also affirmed the district court’s limited injunction requiring JFTCO to use certain disclaimers and notifications for five years to inform consumers that JFTCO and Fabick, Inc. are not related.  A limited injunction was within the district court’s discretion because the case rested on a reverse confusion theory involving a small number of Fabick, Inc.’s customers, the parties were formerly related entities that did not compete, and they were disputing the use of a shared family name. Tips for Avoiding This Issue Although this case has some interesting points for families operating unrelated businesses under the same name, a broader audience will appreciate its lessons on reverse trademark confusion.  In particular, larger businesses evaluating new marks should consider the risks of liability for reverse confusion when they weigh potential marks in use by smaller senior users.  Those smaller users may have rights, whether against unrelated entities or junior users they know all too well.  Early attention to this issue can avoid fights in court and at the holiday dinner table.

Last week, we blogged about Fiji Water being sued for posting a meme of the Fiji Water Girl and using cardboard cutouts of her image in advertising. Well, Fiji Water is splashing back – They filed a cross-complaint alleging breach of contract, promissory estoppel and false promise.  The facts alleged in the cross-complaint fill in some of the missing details and contradict the allegations from the complaint filed by Ms. Kelly Steinbach, aka the Fiji Water Girl.  In fact, the complaint reads much like a soap opera plot line.  Contrary to Steinbach’s complaint, Fiji Water alleges that it entered into a contract with Steinbach in which she granted Fiji Water the right to use her name, likeness and performance in connection with her acting as a Fiji Water Brand Ambassador.  The cross-complaint includes a screenshot of a post from Ms. Steinbach’s Instagram account with her standing next to one of the allegedly unauthorized cardboard cutouts and an Instagram story featuring another of the cutouts.  Of course, the post has since been deleted from Steinbach’s account and the story is no longer available.  What’s more, the not so “fake” consulting agreement that Fiji Water alleges Ms. Steinbach signed includes a restriction that Steinbach not authorize the use of her name or likeness in connection with advertising any other food or beverage products for one year. However, additional screen shots in the cross-complaint show Steinbach doing just that for a dog food brand and for another bottled water promoting the soap opera The Bold and the Beautiful.  On information and belief, Fiji Water alleges that Steinbach took the only copy of the signed consulting agreement from its offices and destroyed it! The cross-complaint is full of other dramatic allegations and is worth a read. We’ll be following this real live soap opera and will keep you updated.

Last week, we blogged about Gigi Hadid getting sued for reposing a photo of herself on Instagram and the post received a lot of interest. So we thought we’d also let you know about Fiji Water Company, LLC getting sued for posting a meme on its social media feeds featuring the “Fiji Water Girl.”  You remember the Fiji Water Girl, don’t you? She was that woman wearing a blue dress holding a tray of Fiji Water bottles in the background of what seemed like every red carpet photo from this year’s Gold Globe Awards on January 6.  Kelly Steinbach, or Kelleth Cuthbert as she is professionally known, went viral that night as photos from the red carpet and then memes started popping up all over social media.  According to the complaint filed by Ms. Steinbach’s attorneys in California Superior Court on January 31, she was hired by a staffing agency to model on the red carpet.  The complaint further alleges that the day following the Golden Globes, Fiji Water sought to capitalize on Steinbach’s popularity by creating a “worldwide cardboard cutout marketing campaign.”  The life-size cutouts of Steinbach appeared in stores in LA and other places around the world. Fiji Water also posted a few memes on their Instagram and Twitter account, but those posts have since been taken down. Fiji Water’s affiliate also filed two trademark applications for FIJI WATER GIRL on January 7. Steinbach alleges that all of this was done without her permission, despite Fiji’s efforts to have her sign an agreement in the days following the Globes. The complaint contains some strange details, including an allegation that “during Steinbach’s [January 9] visit to Fiji Water’s Los Angeles office, Fiji Water pressured Steinbach into video recording a fake signing of a fake document to simulate Steinbach signing on as a Fiji Water Ambassador for use in the event an agreement was reached between Steinbach and Fiji Water in the near future.”  Steinbach’s attorneys go on to note that “the fake document Steinbach fake signed in the potential future promotional video was not an agreement” and “the fake document was not signed by Fiji Water and was later destroyed by Steinbach.”  The complaint contains a claim for misappropriation of likeness and right of publicity under California Civil Code Section 3344 and common law. Steinbach’s damages claim asks for Fiji’s profits, unspecified punitive damages and compensatory damages. So how much is Steinbach thinking she’ll get?  Well, the complaint puts the value of the brand exposure at about $12 million for just January 6 and 7.  We’ll be watching this case and will keep you updated, but cases like this tend to settle for undisclosed amounts, leaving us with little to no case law on memes. Luckily, memes, when used on social media by brands like Fiji Water, aren’t all that innovative in the eyes of the law.  The ability to control the use of one’s name, likeness, voice, and other personal attributes is known as the right of publicity.  If you want to use someone’s image or likeness in advertising (and brand social media accounts are likely advertising), you will probably need to get their permission. Right of publicity is governed by state law, and California, New York and Tennessee (hi Elvis) have some of the most developed bodies of law in this area.  So before your brand starts posting the latest meme featuring the image or likeness of someone other than your brand ambassadors, you should think carefully (and creatively) about how to join the conversation without using a name, likeness, voice, or other personal attributes that might cost your brand unspecified damages in a lawsuit.

As the U.S. cannabis market continues to grow at an extraordinary pace, a number of celebrities and companies have extended their names or brands to cannabis products via partnerships with licensed growers and dispensaries.  On the celebrity side, these partnerships include Willie’s Reserve (Willie Nelson), Bob Marley (Marley Natural), Whoopi Goldberg (Whoopi & Maya) and Snoop Dogg (Leafs by Snoop). But recent modifications to draft regulations in California threaten to restrict the ability of celebrities or companies to lend their names or brands to cannabis products sold in those states where adult or medicinal cannabis use is legal via intellectual property licensing arrangements to licensed sellers.  The proposed new rules, from the three state licensing authorities that regulate medicinal and recreational cannabis in California—the Bureau of Cannabis Control (“BCC”), the California Department of Public Health (“CDPH”) and the California Department of Food and Agriculture (“CDFA”)—came out in October as an update to the draft regulations that had been previously published in July. Among the updates contained in these proposed new rules is one that stands out for its potentially restrictive impact on brand and other types of IP licensing in the cannabis space.  While the regulations already require all commercial cannabis activity (other than authorized retail activity) to be conducted between licensed operators, the BCC’s updates to the draft regulations go further to provide that cannabis license holders cannot conduct commercial cannabis activities on behalf of, at the request of, or pursuant to a contract with any person that is not licensed under the Act.  The listed prohibited commercial cannabis activities are now defined to include the manufacturing or packaging of cannabis goods according to the specifications of a non-licensee, as well as packaging and labeling cannabis goods under a non-licensee’s brand. These updates are most likely intended to seek to curb the ability of unlicensed cannabis businesses to conduct regular business through licensed businesses by selling white-labeled products to such licensed businesses or otherwise.  However, the proposed changes could potentially have far-reaching implications for any authorized cannabis operators and IP licensors engaging with these companies who have an existing license deal or are considering entering into an operating relationship.  With the requirements for obtaining a cannabis license so arduous, a licensing deal seemed to be an easy option for non-licensees to get their brand into the cannabis industry.  But with the new restrictions, non-licensees may not have a direct licensing option to get their brand onto cannabis goods.  While authorized cannabis operators and non-licensees may be able to turn to more complex contractual structures in order to continue to do business together, parties will need to tread carefully. The deadline for public comment on the BCC’s changes was on November 5th. It remains to be seen whether the BCC’s proposed changes will ultimately be incorporated into the proposed rules and, eventually, continue through the formal rule making process until they are adopted as non-emergency regulations.

Even if your brand is sitting on the sidelines like the U.S. Men’s Team in the World Cup over the next month, there is no time like the present to consider the risks involved in ambush marketing because Wimbledon, the X Games, the U.S. Open, the World Series and even the 2019 Women’s World Cup (fingers crossed for the US. Team!) are just around the corner.  As we’ve blogged about before (a few times), large sporting events are great opportunities for brands to produce creative campaigns or promotions, but advertisers need to be aware of the trademark, copyright and right of publicity risks that routinely come up for these types of events year after year.  If you are interested in reading more about these risks, checkout my article on the Little Black Book (LBBonline), a place to celebrate global creativity in advertising, across all parts of the business and from all corners of the world - - Don’t Get Caught Offside With Your World Cup Marketing Promotions.

When you play the video game Grand Theft Auto 5 (“GTA 5”), the last thing you want to see is a reflection of yourself.  GTA 5 is an action-adventure game that rewards the player for stealing cars and speeding away from cops. Part of the fun is that law abiding citizens can revel in digital mayhem and interact with gang members, drug dealers, and other poor decision makers without real world consequences. But when actress Lindsay Lohan saw certain GTA 5 images, she concluded that some of those poor decision makers looked a little too much like her. Ms. Lohan is a talented and accomplished performer who has been featured in TV, films, and music, as well as such litigations as Lindsay Lohan v. Armando Christian Perez (also known as Pitbull), et al. and a frivolous case filed by a Montana prison inmate serial complainant against Ms. Lohan, the Kardashian sisters, and Lamar Odom. Seeing a character resembling herself, strutting around the virtual, gritty streets of GTA 5 did not inspire Ms. Lohan to embark on a journey of soul searching and redemption, but instead sparked her inner Mean Girl to file a complaint in New York state court. That litigation came to an end on March 29, 2018, when the highest court of New York, the Court of Appeals, affirmed the dismissal of Ms. Lohan’s amended complaint in the case of Lohan v. Take-Two Interactive Software, Inc. The defendant, Take Two Interactive Software, Inc., develops, sells, markets, and distributes video games, including GTA 5. Ms. Lohan maintained that Take Two used her likeness without permission in three instances. In one scene, the player meets a female character named Lacey Jonas, who is trying to escape from paparazzi by hiding in an alley. The character describes herself as “an actress slash singer” and “really famous.” The second and third instances are static images used as transition screens between scenes in the game and also on the packaging, game discs, and promotional materials. One image features a young blonde woman wearing a red bikini at the beach, and the other features a young blonde woman wearing jean shorts, a white t-shirt, sunglasses and a fedora, who appears to be getting arrested by a female police officer. Ms. Lohan claims that Take Two misappropriated both her appearance and her voice to create the Jonas character, and that the two static images contain her “[i]mages, portrait[,] and persona.” To prevail on her right of privacy claim under New York law and survive dismissal of her amended complaint, Ms. Lohan needed to prove that her name, portrait, picture or voice was used for advertising or trade purposes without consent within the State of New York. The Court first concluded that an “avatar” such as a character or image in a video game, may constitute a “portrait.” Next, the Court considered whether Ms. Lohan was capable of being identified from the avatars alone based on the “quantity and quality of the identifiable characteristics” in the avatars. The Court concluded that both the Jonas character and the two images were not recognizable as Ms. Lohan. The Court explained that the Jonas character was simply “a generic artistic depiction of a ‘twenty-something’ woman without any particular identifying physical characteristics,” and the static images were “indistinct, satirical representations of the style, look, and persona of a modern, beach-going young woman.” In light of the Court’s ruling as to the portrait element, it did not address the other elements. This comes as a disappointment to some in the film and gaming industries who hoped that the Court would hold that New York’s right of publicity statute does not prohibit the use of real people in video games, as it does for other fictional works. Given how little the accused images resemble Ms. Lohan, this might not have been the right case to address that issue. We may have to wait until Take Two releases GTA 6 for a resolution.

It is hard to imagine that any one person could initiate separate lawsuits resulting in decisions of substantial importance to the entire U.S. entertainment industry.  And when that person is iconic actress Olivia de Havilland – best known for her roles in “Gone With the Wind,” “The Heiress” and dozens of other films from Hollywood’s golden age – and the time between those two decisions spans more than seventy years, the scenario seems even more farfetched.  But Ms. de Havilland is indeed the plaintiff whose 1944 lawsuit against Warner Brothers resulted in the decision that effectively broke the control movie studios then exercised over their talent, and she is also the plaintiff whose 2017 lawsuit against the FX Networks cable channel has now resulted in a decision that confirms the wide-ranging ability of filmmakers to depict real people like de Havilland in entertainment properties like the miniseries “Feud.” Television producer Ryan Murphy created “Feud:  Bette and Joan” as the first installment in a series of television docudramas dedicated to chronicling famous real-life feuds.  Airing in 2017, this first installment, starring Susan Sarandon and Jessica Lange, portrayed the bitter rivalry between film stars Bette Davis and Joan Crawford, and how that rivalry was the product of the way Hollywood studios, dominated by men, treated women – especially older actresses. De Havilland was a longtime friend of Davis and a fellow actress with her at Warner Brothers in the 1930s and 1940s.  In “Feud,” de Havilland, portrayed by the actress Catherine Zeta Jones, appears in a fictitious interview conducted at the 1978 Academy Awards ceremony, in which she comments on the rivalry between Davis and Crawford, and the problems women in Hollywood encountered during their era.  (Kathy Bates, portraying the late actress Joan Blondell, also appears in a similar, fictitious interview.)  In addition, “Feud” shows Davis and de Havilland together in the past, including at the 1964 Academy Awards ceremony and during the making of the film “Hush … Hush, Sweet Charlotte,” in which de Havilland replaced Crawford as Davis’ co-star.  Over eight episodes of “Feud,” the de Havilland character appears in only seventeen minutes of screen time – 4.2% of the series as a whole. Notwithstanding the brevity of her portrayal, de Havilland, now age 101 and a longtime resident of Paris, France, sued FX and related defendants for violations of her rights of publicity and privacy, as well as false light, arguing that no one has the right to portray her in a film or otherwise without her permission, such that the mere inclusion of her in a fictionalized docudrama like “Feud” violated her rights.  She also argued that she was presented in “Feud” as a person who spread malicious gossip, and who used the word “bitch” to describe her sister, the equally iconic actress Joan Fontaine.  (While the relationship between de Havilland and Fontaine could itself be the subject of a whole other installment of “Feud,” Murphy has announced that the next airing will be entitled “Feud:  Charles and Diana”). FX and the other defendants immediately moved to strike de Havilland’s complaint under California’s anti-SLAPP statute, relying heavily on the First Amendment and the argument that filmmakers and the authors of creative works have the right to depict actual persons in docudramas like “Feud,” but their motion was denied.  The trial court held that the realistic portrayal of de Havilland was insufficiently transformative, such that no First Amendment defense to de Havilland’s right of publicity claim was available under California law.  The trial court also held that a reasonable jury could conclude that de Havilland’s portrayal in “Feud” cast her in a false light with respect to her use of vulgar terms like “bitch” to describe Fontaine, and the repeating of gossip (specifically, about the drinking habits of Frank Sinatra). Working under an expedited appeal schedule due to de Havilland’s advanced age, three California court of appeal judges rejected the trial court’s findings, holding that the First Amendment protects FX’s portrayal of de Havilland in a docudrama without her permission.  The court held that the right of publicity cannot be used to control a celebrity’s image by censoring disagreeable portrayals consistent with First Amendment and free speech considerations.  The court also held that de Havilland’s portrayal in “Feud” was transformative, particularly her appearance in the interview “framing device” that articulates the series’ broader concerns about the treatment of aging women, especially in Hollywood.  Finally, the court rejected de Havilland’s false light claim, finding that, with one possible exception, she was portrayed more favorably than any other person appearing in “Feud.” The court also held that de Havilland’s claims of damage resulting from her alleged portrayal as a gossip who used inappropriate language were not cognizable, in light of prior interviews de Havilland had given over many decades recounting lighthearted stories about the peccadillos of others, including her co-stars, and her documented use of the words “dragon lady” to describe her sister. So what’s next?  Under California’s anti-SLAPP law, the defendants can recover attorneys’ fees and costs from de Havilland, but she has vowed to appeal further.  In addition, her lawyers have characterized the appellate court’s ruling as an “industry decision” written by a judge who used to work for NBC and the firm representing FX.  So it seems that there will be yet another episode of “Feud: de Havilland v. FX” coming soon to this blog.  Stay tuned!