25 May 2018

Balancing Free Speech and IP Rights

Under what circumstances can an individual exercise his or her rights of publicity?

How can rights of publicity be determined?

These are questions to be considered when somebody feels their identity has been appropriated for commercial use without authorization, said panelists in Session CSA 50 Intersection of Rights of Publicity and Trademarks with the First Amendment: Free Speech Rights in Advertising, Social Media, and Creative Content, on Saturday, May 19.

Different U.S. District Courts have approached this analysis in diverse ways, and there are a range of avenues that a person can take if they find themselves in this situation.

“It’s not an uncommon scenario where the author or publisher of an expressive work wants to use a name that has publicity rights associated with it,” said Ben Sheffner, Senior Vice President and Associate General Counsel at the Motion Picture Association of America (USA).

One avenue is an “artistic relevance test”, he explained. Under this test, the use of somebody’s name in a title of a creative work is permitted, unless the name has no relevance to the content or if it is misleading.

This test was used when Mattel, manufacturer of the BARBIE doll, sued MCA Records over Aqua’s song “Barbie Girl,” which features the lyrics “I’m a Barbie Girl, in a Barbie World.”

“The song arguably comments on Barbie and the stereotype of a Barbie Girl, and the character in the song comments on living in a Barbie World,” explains Mr. Sheffner.

Ultimately, the record company was protected by the First Amendment right to free speech and, as decided by the U.S. District Court for the Central District of California and upheld by the U.S. Court of Appeals for the Ninth Circuit, the title “Barbie Girl” was relevant to the song itself.

One gray area when it comes to rights of publicity is the status of video games. “There’s been a bit of tension in the case law as to whether video games are expressive works or if they should be treated as merchandise,” says David Grace, Partner at Loeb & Loeb LLP (USA).

Another test that can be used to determine rights of publicity is the so-called “predominant use test,” where the assessment is based on whether the use of a name in a creative work is predominantly for commercial purposes, in which case the rights of publicity of the named person may be infringed.

The video game “Grand Theft Auto” featured a strip club called “The Pig Pen” based on a real Los Angeles strip club called “The Play Pen”.

While the owner of “The Play Pen” sued, the Ninth Circuit found that the strip club featured was relevant as it showed the underbelly of East Los Angeles, where the video game was set.

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