December 19, 2023  

AI, Face Swapping, and Right of Publicity

By Marie-Andrée Weiss

Last April, several plaintiffs filed a putative class action against NeoCortext, Inc., the developer of the Reface face swapping application, alleging that the application infringed their right of publicity.

NeoCortext moved to dismiss the complaint, claiming that plaintiffs’ right of publicity was preempted by the Copyright Act and barred by the First Amendment. NeoCortext also moved to strike the complaint, claiming that the suit was a strategic lawsuit against public participation (SLAPP) aiming at “gagging a novel application that enables users to engage in creative activities that are protected by the First Amendment.”

On September 5, 2023, U.S. District Judge Wesley L. Hsu denied both motions.

The case is Kyland Young v. NeoCortex Case 2:23-cv-02496-WLH-PVC.

The Reface app

Neocortext developed Reface, a smartphone application using an artificial intelligence algorithm which allowed users to replace their faces in photographs and videos with the faces of celebrities (“face swap”), to place their faces into scenes and movies and to “mix [their] face[s] with a celebrity.”

Users were able to search for their favorite characters or individuals in the catalog of images, movie and show clips, which was compiled from several websites, such as mybestgif.com, https://tenor.com/, Google Video, and Bing Video. Among the individuals featured in the catalog was one of the plaintiffs, Kylan Young, finalist of the 23rd Big Brother show on CBS.

Users  could then upload a photograph featuring one or more human beings, and the app “swapped” the faces with the faces of individuals featured in the images or clip chosen by the user from Reface’s catalogue. NeoCortext offered a free version of the services, where the “face swap” image or video was watermarked with the Reface logo. The complaint referred to these watermarked images and clips as “Teaser Face Swaps.” A paying subscription to the app allowed the user to remove the watermark.

Does the app infringe plaintiff’s right of publicity?

The complaint alleged that the app allowed users to recreate Mr. Young’s scenes from Big Brother, but that NeoCortext never asked for his consent nor paid him any royalties and thus profited from Mr. Young’s likeness and that defendant used the likeness of plaintiffs in violation of California’s right of publicity “to pitch its product for profit.” Plaintiff argued that  Teaser Face Swaps were “essentially ads intended to entice users to buy PRO subscriptions, and the paid PRO version of the applications makes money by including Californians in its library of content.”

California Right of Publicity Law

California recognizes a right of publicity at common law and also by statute, California Civil Code § 3344, which prevents the use without prior consent of a person’s name, voice, signature, photograph or likeness, in products, merchandise or goods, to advertise, sell, or solicit the purchase of goods or services. 

To succeed, a plaintiff must allege  that (1) the defendant’s used the plaintiff’s identity; (2) appropriated the plaintiff’s name or likeness to defendant’s advantage, commercially or otherwise; (3) defendant did not consent;  and (4) injury resulted from this unauthorized use (see for instance Fleet v. CBS, Inc. at  1918).

The two Anti-SLAPP steps.

In its motion to strike the case, NeoCortext argued that the app allowed its users to create “humorous and sometimes absurd new works for personal use” and that “[t]his is exactly the type of creative activity that the First Amendment protects and that the right of publicity does not.”

There are two steps in an anti-SLAPP analysis, the second step being equivalent of the standard used by courts to evaluate a motion to dismiss.

First step:

The first step under California Anti- SLAPP law, Cal. Civ. Proc. Code § 425.16, was for NeoCortext to show that its use of Mr. Young’s image was made “in furtherance of [NeoCortext’s] right of petition or free speech… in connection with a public issue. Such speech can be conduct, including “all conduct in furtherance of the exercise of the right of free speech” (Lieberman v. KCOP Television, Inc., at  166).

Judge Hsu reasoned that the conduct at the basis of Mr. Young’s complaint was the inclusion of his image in the app, allowing users to create a new image.  As such, it was the users who exercised their freedom of speech, not NeoCortext. Because the app is a tool that users can use to exercise their free speech rights, NeoCortext’s use of plaintiff’s image in the app was conduct taken in furtherance of users’ exercise of free speech.

Such speech is connected with a public issue under the test used by California courts as it is: a (1) statement concerning a person or entity in the public eye (Mr. Young); (2)  a conduct that could directly affect a large number of people beyond the direct participants; (3) or a topic of widespread public interest (“the use of technology to alter images and videos of individuals in a way that makes them look realistic” is such topic).

NeoCortext had shown that its conduct is in furtherance of the right of free speech made in connection with a public issue, thus satisfying its burden on the first step of the anti-SLAPP analysis.

Second step:

Plaintiff therefore then carried the burden to show “a probability of prevailing on the claim”, the second step required by California Anti-SLAPP law, identical to the standard for the motion to dismiss, and it did so, leading Judge Tsu to deny both motions.

NeoCortext had argued, unsuccessfully as we will now see, that the Copyright Act and the First Amendment preempted the right of publicity claim.

Copyright Act does not preempt the right of publicity claim

NeoCortext had argued that, if a right of publicity claim is entirely based on the display, reproduction or modification of a work protected by copyright, the claim is preempted by the Copyright Act.

Section 301 of the Copyright Act preempts state laws equivalent to the exclusive copyright rights as detailed by Section 106 of the Copyright Act.

The Ninth Circuit uses a two-part test to determine if a state law claim is preempted by the Copyright Act :

NeoCortex had claimed that Plaintiff’s claim was within the subject matter of copyright, as the images and clips in Neocortext’s catalog were protected by copyright.

In Maloney, the Ninth Circuit Court of Appeals held :

“that a publicity-right claim is not preempted when it targets non-consensual use of one’s name or likeness on merchandise or in advertising. But when a likeness has been captured in a copyrighted artistic visual work and the work itself is being distributed for personal use, a publicity-right claim interferes with the exclusive rights of the copyright holder, and is preempted by section 301 of the Copyright Act.” (Maloney, at 1011, our emphasis).

NeoCortex’s argument relied further on Maloney which held that :

“…where a likeness has been captured in a copyrighted artistic visual work and the work itself is being distributed for personal use, a publicity-right claim is little more than a thinly disguised copyright claim because it seeks to hold a copyright holder liable for exercising his exclusive rights under the Copyright Act.” (Maloney, at 1016).

First part of the Ninth Circuit test: Plaintiffs’  right of publicity claim do not fall within the subject matter of copyright

Nothing that the Copyright Act protects ownership of photographs, but that it does not protect the exploitation of a person’s  likeness, “even if it is embodied in a photograph”, citing the Ninth Circuit decision in Downing v. Abercrombie & Fitch, Judge Hsu found that “[plaintiff]’s right of publicity claim does not fall within the subject matter of copyright”. Judge Hsu  distinguished the case from Maloney, where a photograph of the plaintiff, protected by copyright,  had been sold. In contrast, the use of Mr. Young’s likeness was outside of the original work protected by copyright as it was used to create a product containing the plaintiff’s image.  As plaintiff’s claim did not fall under the subject matter of copyright, it was not preempted by the Copyright Act.

Second part of the Ninth Circuit test: State law rights asserted are not equivalent to Section 106  rights

Judge Hsu also found that the second factor of the test failed, because Section 106 of the Copyright Act does not give  the owners of the photographs the right to use plaintiff’s name and likenesses to advertise the free version of the app and to induce users to buy the subscription. Plaintiff was “not seeking to “merely” restrict the reproduction or distribution of the original photographs/works, as the plaintiffs in Maloney ….”

The rights asserted by plaintiff were not equivalent to the rights conferred by the Copyright Act to the owners of the photographs from the app catalog. Under the two-part test used by the Ninth Circuit, the claim was not preempted by the Copyright Act.

The First Amendment does not preempt the right of publicity claim

NeoCortext had also argued that the First Amendment preempted the claim, as users used the app to create “their own unique, sometimes humorous and absurd expressions” which are protected by the First Amendment. NeoCortext further argued that the photos and clips thus created had “creative and aesthetic value” and that they were “new works … distinct from the originals”.

California courts apply the “transformative use” test to balance right of publicity and First Amendment, detailed by the California Supreme Court in Comedy III Productions v. Gary Saderup, Inc. (at 142):

“In sum, when an artist is faced with a right of publicity challenge to his or her work, he or she may raise as affirmative defense that the work is protected by the First Amendment inasmuch as it contains significant transformative elements or that the value of the work does not derive primarily from the celebrity’s fame.” (Our emphasis).

NeoCortext had to show that its use was transformative as a matter of law. Judge Hsu found it had not done so, noting that plaintiff’s face “is the only thing that change in the end product” and that the body is sometimes unchanged, citing  Hilton v. Hallmark Cards, where the Ninth Circuit  found that a greeting card featuring the likeness of Paris Hilton, arguably more transformative than the swap images created the app, was not transformative enough to entitle the defendant to a First Amendment affirmative defense as a matter of law.

What is next?

On September 8, NeoCortex filed an appeal to the U.S. Court of Appeals for the Ninth Circuit.

There have already been several complaints alleging that an AI-powered product or service is infringing the copyright of authors whose works have been used to train the data models, but Young v. NeoCortext is one of the first cases were a product or service triggered by AI is allegedly infringing a right to publicity.

As such it is worthy of following further. To be continued…

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