[MUSIC] As we explore publicity rights I cannot think of a better expert than Professor Craig Nard, my good friend for many years. Craig runs the law technology in the Arts Institute at Case Western Reserve University law school. He runs the fusion program. He's eminent in his field. We are going to discuss publicity rights as they relate to representing the professional athlete. How it manifests itself both in product endorsement and license agreements. And I can't think of a better person to bring to you in this connection. Craig and I won't always agree. But I think you'll find it interesting We come to some levels of agreement, especially as it relates to First Amendment, freedom of expression which is at the heart of the defences against an infringement claim that a celebrity athlete often times wants his agent and attorney to bring. So please enjoy this clip and let us know what you think. Thank you very much. Welcome back. Today we have Professor Craig Nard from Case Western Reserve University Law School joining us. We're going to talk today about product endorsement agreements and publicity rights. Craig welcome, thanks for being here with us today. >> It's a pleasure to be here. Thanks for having me Peter. >> Absolutely. So Craig, let's start. Begin at the beginning. Trading cards. You and I are old enough to remember buying the bubble gum cards. Why should anybody be paid to put their name, image, likeness and statistics and associate it with a baseball card? You shouldn't be able to exclusively license those rights to Topps or Fleer, should you? >> You know, this is a great question. This, this notion, this right of publicity. That it's come to be know as. In the history of intellectual property, it's a relatively modern, new concept. And I think we can think of it as sort of a couple of ways. One is that it is who I am, right? The right of publicity, as defined, allows an individual to control the commercial use of his name, image, likeness. And there seems to be one could say intuitively at least that there should be an ownership of property right in that and therefore. If it's who I am it's my identity why shouldn't I be able to use it in a commercial way and why shouldn't I be able to prevent others from utilizing it and exploiting it. >> Does it have any, any sort of foundation and the right of privacy, the right to be let alone, left alone. >> Certainly started out in the right of privacy, then split off about 50 or 60 years ago, and sort of became its own animal, its own being. sort of, it went from the right of being let alone to now, the right to control the exploitation of my name and likeness. And now a majority of states have statutes on the book that recognizes right of publicity. >> And is there, That's the Haelan Labs case, as the famous trading cards case of course back in 1953, but as, as it's gone forward has the federal law interpost itself as well through trade, trademark, copyright, or Lanham Act, you know to false endorsement kind of claims. >> Certainly. So though was no direct congressional federal legislation specifically on right of publicity. The Lanham Act, the trademark statute certainly has statutes that allow one to prevent others from using your name, image, and likeness to suggest you are endorsing, or you're falsely affiliated with a particular good or product. So the trademark law has a lot to say about it, but I think the right of publicity. As the states have defined it is actually broader than, than the trademark law, the federal law. >> But professor, I ask only somewhat hypothetically don't athletes make enough money? Why, why should they have to monetize trading cards back in the day? >> You know, judges have used this rationale in the past to suggest well, athletes, entertainers make enough money already. Why do they need more? I don't know if that's the most convincing argument to make. Either you recognize the property right for what it is, or, or you don't. To suggest that an athlete makes enough money already, seems to undercut this property interest. Has some courts have to find it. Is it just name image likeness, Craig, or can it be more than that, can it be an attribute? Can it be a nickname? What does the law tell us as these publicity rights have grown? >> So, certainly image and likeness, it's also one's voice. I think that the closer you, sort of trend to that person's identity as understood. By the consumer then you bump up against that right of publicity. So if a consumer could look at this exploitation if you will, this advertisement say oh, this reminds me of so and so. That distinctive feature of that athlete or entertainer then you're sort of bumping up against that right of publicity. Could Johnny Manziel own this? >> Yeah. >> Show me the money. >> Well may, maybe. Right, that would be a tough case to make. But the more an athlete or an entertainer becomes affiliated or associated with a particular feature, whether it's identity, image, likeness, voice, or this. Then you are trending into that right of publicity. There is this danger of going too far though, for sure. >> Could Peyton, Peyton Manning own the world Omaha, which is his famous, call when he gets to the line. Omaha, Omaha. >> I'm sure it was. [CROSSTALK]. >> And he has an Omaha Steaks deal, I believe. >> [LAUGH] this, again, if this is what he's known for. That the, theoretically he, he could. But I don't know if we'll ever, I hope we don't get that far in the courts to, to adjudicate that one. >> Abdul-Jabbar owns Skyhook. >> Right, Elvin Hayes, The Fadeaway. You could go back and forth and, and list a number of examples of, of athletes. That's the danger. When you recognize this, this, a new right, a property right, in one's publicity, in one's image, likeness, we always have to face the question. Well, where is that line? How do you draw that line? And then we have to justify where we draw it. >> Okay. As, as we move forward now. Since 1953, through and including the present, we have some landmark cases. That have sort of marked out the contours of these rights of publicity and plan America confusion consumer confusion. Let's go to a couple of those cases, which we talk about in our classes that we teach together and offer together. How about a poster? A lithograph poster. >> Yeah. >> Now, there's gotta be a first amendment right to be able to create a lithograph poster of a famous athlete like Tiger Woods. >> Clearly there is. This is the famous Tiger Woods case. The case where the artist Mr.Rush depicted Tiger Woods in his famous initial Masters victory in a lithograph. And Tiger Woods sued. Mr. Rush and the publisher. But did so, unsuccessfully. And for reasons you suggest Peter, that is to say. The artist had a full blown first amendment, free expression right in that painting. And it's largely because the court thought there was significant artistic value in that painting. The core though that what the artists did Mr. Rush, is to transform the work. It wasn't a literal depiction of Tiger Woods. Rather he had Tiger in various poses, but he also had other famous golfers in the background. He had the Augusta Leadership Board, the clubhouse. There were a number of features in that painting where the court thought led to a transformative depiction of Tiger Woods. And that, coupled with the fact that it had significant artistic relevance according to the court, and that sports figures over time, particularly famous ones like Tiger Woods, become part of our societal or collective expression. You know, they're that society has an interest in this depiction and therefore artists like Mr. Rush who'd be able to express those interests accordingly. >> Now what, what about that signature swing finish. At the time, it had been sold, that same signature swing finish that Mr.Rush copied into his lithograph. Nike had bought it, had procured the rights to it. How does that tie into a trademark, whether it be registered or not, those kinds of rights? Ought to be given some credence, as well, don't you think? >>I think so. And one could argue that that swing had enjoyed some type of trademark distinctive protection. So a trademark and a trademark statute gets to protecting the consumer, right. We want to protect the consumer from a likelihood of confusion. And so, if a consumer were to look at a particular product or good. And be confused in terms of affiliation or endorsement. The Lanham Act, the trademark statute, would allow the owner of that here, the swing of Tiger Woods, to prevent that exploitation and affiliation. And so that's what trademark law is largely about. And what trademark law gets at, in terms of its affiliation and false endorsement claims, is very similar to the right of publicity. Right. The two have, have much in common. That argument, however didn't have a lot of resonance with the court. But one could certainly suggest that it was distinctive enough, where Tiger Woods had an ownership interest in it. >> How important, in these types of cases, for our audience. Is consumer survey evidence of confusion or affiliation. In other words, in this case, there was a 62% consumer survey saying, gee. I thought Tiger would have been, was in fact, affiliated with this product. Because it was his signature swing. >> It's absolutely crucial. Survey evidence and trademark litigation is really one of the most crucial pieces of evidence there is. So think about it. If we're really concerned about preventing consumer confusion, or likelihood of consumer confusion. You have to ask the consumer, are you confused? Are you likely to be confused? And so typically in trademark litigation, you would have PhD Statisticians putting together these sophisticated questionnaires of consumers, are you likely to be confused and a series of questions. And if you have 62% response rate that they're likely to be confused. That is very strong evidence indeed and in fact as you know, the descent in the Tiger Woods case brought this up. And says, how you can rule on this in a particular way in favor of Mr. Rush, the artist, when 62% of the consumers, think that Tiger Woods is some how affiliated or endorsing this painting. >> And perhaps in, in most cases a judge would let a jury decide that because they are. They are the common persons. They should decide whether they are in fact were confused themselves by affiliation or the endorsement. >> Typically the jury does reflect the people who are surveyed. Here though, interestingly the judge decided what we call summary judgement in the law, decided I'm going to decide this. I have enough evidence before me. There are no other really material, factual issues to be decided. I'm not going to let this get to the jury. And on that ground it was quite remarkable, it seems to me. >> And the dissent quite the opposite. It said, on summary judgement I think Tiger Woods should win. >> [LAUGH] That's right. That's [CROSSTALK]. >> So, that's rare that you see two ships passing in the night like that. Let's fast forward to a very recent seventh circuit decision. So that was the sixth circuit federal court of appeals. The seventh circuit out of Chicago we have a now a Michael Jordan case. And in affiliation with the Jewel Tees store. And we're going to have a popup to show everybody, see if they get confused by it. But that came out quite the other way. It went to a commercial, non commercial speech analysis of his shoes and a congratulatory ad. And you know, right around the corner is just like Michael Jordan was right around the corner when he won those championships for the Bulls. Why does that come out the other way Professor Nard? >> Yeah, this is interesting. We have to remember what we're trying to do in these types of cases. We have on the one hand the right of publicity, the property right, and we're weighing that against society's interest in free expression. And this is what the courts are trying to balance all the time and there's not a lot of certainty in this field. But in this particular case Peter, what we have is a supermarket jewel using the shoes of Michael Jordan, the number 23 in what is a more conspicuous commercial transaction. So if we can compare that use of Michael Jordan's likeness his image, to the case where Mr. Rush depicting Tiger Woods. What we could if we were to distinguish the two is that in the Tiger Woods case, the artist, Mr. Rush, engaged in a transformative, artistic enterprise representing a sports figure that is sort of part of our national conscience. On the jewel cast with Michael Jordan, it just seemed to be more of a blatant economic commercial exploitation. And this is what the court and the seven circuits said in the Michael Jordan case is that this is a thinly veiled use of Mr. Jordan's image and likeness really to drive a commercial transaction. And it is that conspicuous economic transaction what was least in the opinion of a majority in the sixth circuit Tiger Woods case that was absent. >> Yeah. But, but Craig, there was no, I'm being somewhat rhetorical here, there was no name, image, likeness of number 23 just his shoes. >> If you're Michael Jordan, that's enough. >> [LAUGH] Okay. So as we this, is there any way in a misappropriation case, let's just call that a misappropriation, a commercial speech. You pick the product jewel t, because of the endorsement implied of Michael Jordan, you go around the corner to shop because you assume his shoes has something to do with shopping there. Can you get to an intentional misappropriation. That could result even in a punitive damages award. >> I would think that's very challenging. To, to actually reach into the mind of the alleged infringer here and say you intentionally used an image and likeness to drive a commercial transaction is very difficult to prove. >> The Twistelli case, though that we talked about ahead of time, the Missouri courts. Did say that was the case. A rare bird. >> Indeed. And so far it is limited to Missouri. This is state law. We'll see if other jurisdictions pick up on this. But that's absolutely right. That this, and they adopted this predominant use test. We know that in the Michael Jordan case. I'm sorry. In the Tiger Woods case, it was sort of the predominant use. I'm sorry. The transformative. >> Transformative. >> Use was at play. Here this predominant use. Does the product or good predominantly use the image or likeness of the athlete of the entertainer? I don't know what that means? Right, it's sort of the third test we have now in balancing rights of publicity and the First Amendment. But this decision was already. If I'm an athlete, I'm encouraged. >> Mm, 'kay. >> Because it's a very pro-right of publicity case. >> Two other cases we want to talk about cartoons and comedy three. Cartoons you know we're, we're right back to baseball cards but parody. >> [INAUDIBLE] >> A parody, transformative parody, of Barry Bonds You know, made to look like something other than Barry Bonds, but everybody would know it was Barry Bonds. And then, Comedy Three, you've got The Three Stooges and it's a virtual, it's a virtual likeness. There's no transformative. >> Uh-huh. >> Sort of artistic intent. How do those two cases come out Comedy Three and Cartoons? >> Well you, you mentioned a key distinction here. In Cartoons it was, it was a product use. It was a parody. And in the history of copyright law and intellectual property and indeed literature, at least in this country, parody has a very, very sort of sacrosanct status that this is something we want to encourage because think about it. Parody allows us to view things in a critical way perhaps we wouldn't otherwise see and as society, we want to encourage. Sort of product depictions of individuals of situations. And so copyright law and intellectual property built into these mechanisms including the right of publicity encourage this type of view. And so in cartoons, because it was a caricature, because it was a parody it enjoyed the full extent of First Amendment protection. Deep transformative use. >> Like an Andy Warhol Campbell's soup can. >> Precisely. Precisely. In the Comedy and Three Stooges case, this was more a literal depiction. It didn't have that transformative character associated with it. Again, there's a line there at some point, right? So to be a parody, you have depict enough of the original to sort of conjure it up so you make your point. Well, as long as you're not a literal, as long as you don't engage in a literal depiction of your subject. You trend more towards the parity. But the more literal you are, it looks more like it's not transformative. It's more superseding, we could say. And therefore, more likely an infringement. How about that, Dustin Hoffman in the famous Tootsie case. You know. >> Yeah. >> Where it was a, really a digital reconstruction of, of Tootsie, the famous role he played way back when. And that was found to be parody. Was that sufficiently transformative [CROSSTALK] to do a digital retouching? >> Right. This is a very difficult case. You know, we. We see these cases in copyright law, particularly with digital technology, where certainly the software and everything involved is innovative. But with the push of a button, is that enough to be transformative just to make it digital? And I think that's a very challenging question. It's the matter of, okay, here's the line and how do you justify where that transformative use is. >> We talk a lot about Ed O'Bannon's case. We talked about it before going on air here and what do you think now what they did there was to make him slightly different when he was a UCLA player of the year back in 95 is creating a video game itself, Craig sufficient creativity. >> Yeah, I don't know if I would characterize that as transformative. Right? That seems to be taking the image and likeness. Of these athletes and just putting them in digital video format. There's no doubt why these videos, or at least in part, are very popular. Right. Those who play them think that they're into the game just like the O'bannons were in their day. I think it's questionable whether that is sufficiently transformative. And, of course, this case is tied up with deep antitrust implications and the whole unionization movement that I know you talk about in collegiate sports as well. Right. And Craig, in that regard though they, they change him but just a little bit, right? >> Right. >> They don't say it's [CROSSTALK]. >> That's right. >> But there's a software program you can [NOISE] plug right in and he becomes Ed. So is that transformative. >> Right. So it's not quite Three Stooges in comedy three. But it's not quire cartoons and parody and tran. So it's somewhere in between. And where exactly that is it's a very difficult call. >> Do you see as we look into the future of this the CBC case, some of the other cases first amendment controlling more and more over right of publicity and, and should it? Just you know, as you teach these courses in these areas. >> Yeah. >> What are you telling your students? >> Yeah, well, the first amendment is a powerful beast. It is, it is something that is Historically very significant to this country, and I tell my students that whenever in doubt, the First Amendment will win out. The Michael Jordan case the Seventh Circuit case that held that a Jordan engaged in commercial speech. I think those are largely in the minority. I just think that case, you had such a transparent economic transaction at place that sort of. Image advertising that place. That Judge Sykes rightly said, this seems to me to be commercial speech. And therefore, entitled to limited protection. Beyond that, when we talk about transformative uses, parodies, these types of things. The first amendment plays a very strong role. >> So, ending where we began, if I'm picking a product because Tiger Woods is implicitly or quietly or actually in it. Is that ultimately one of the tests? Or I'm going to Jewel Tees, because I saw that the shoes that Michael Jordan were associated with. Is that ultimately the confusion versus the First Amendment, sort of go, no go that you teach in your classes? >> Yeah. It, it is, would the consumer think, at least in the trademark context, there is an affiliation or endorsement? Would they be confused to about 62% of the people in the Tiger Woods case thought so, right? That's certainly a big part of it in the trademark context. When you, when the First Amendment intervenes, the question is, okay, there may be some confusion. But the First Amendment really says that's okay. You're entitled to protection. And particularly if it isn't in the case with Tiger Woods where the court held this painting, this lithograph has significant artistic relevance and is transformative. All of a sudden, that 62% becomes not as relevant as the, certainly to the sent box, though. >> Let's finish with a case that a good friend of mine, Ron Katz, has been pursuing for a long time for maybe the greatest football player of all time. Jim Brown, in connection with the greatest teams of all time, and other video game case like O'Bannon. And in that one again they, they changed it but only a little bit. They gave him a slightly different number with the legends video game. And then there was Jim, but not Jim, as it were. And Ron would make the case that again, the product is being purchased because of the association, because of the affiliation of Jim Brown and those great Browns teams with. With the product, the video game product. Now, we know that has, at the federal level no consumer confusion couldn't make that case. But, how does it then devolve back to the state court system so that right of publicity survived in the California State Court system? >> Right, so right of publicity, as we know, it is a state law, not federal law. And I think it highlights the fact that even though there may not be a likelihood of confusion at the Federal level in the context of trademark law the right of publicity may kick in I think we could view the right of publicity as actually broader, more encompassing than trademark law. You could use an athlete or an entertainer's image and likeness in a way that does not suggest endorsement but nonetheless. Use it in a way that commercially exploits that image and likeness and I think this is what this case represents. >> And in fact you could call it theft of a category. >> Right. >> He could have, should've, would've sold those rights or not himself. >> That's right for a video game. >> Okay well we want to thank you so much for illuminating this otherwise, the dark area, even those cognoscenti who pursue it, like you and I do, on a regular basis. There are no clear answers to these very murky questions, but I think you've made them as clear as they can be for our audience, and I want to thank you for that, Craig. >> Thank you, I enjoyed it. >> Okay. Thank you. [MUSIC]
