By Marie-Andrée Weiss
On 4 January 2019, the U.S. Supreme Court granted certiorari to rule on whether Section 1052(a) of the Trademark Act, which prohibits the registration of immoral and scandalous marks, is facially invalid under the First Amendment. The case is Iancu v. Brunetti, Docket No. 18-302.
In 2011, Erik Brunetti filed an application to register FUCT as a federal trademark, in connection with a clothing line. The U.S.P.T.O. examining attorney refused to register it, considering it to be the past tense of the verb “to fuck,” a vulgar term. The Trademark Trial and Appeal Board (TTAB) affirmed in 2014. Brunetti appealed. While the case was pending, the U.S. Supreme Court issued its Matal v. Tam decision, which found that that the disparagement clause of the Lanham Act violated the First Amendment, because it discriminates based on content.
On December 15, 2017, the U.S. Court of Appeals for the Federal Circuit reversed the TTAB’s holding, and held that Section 2(a) is an unconstitutional restriction on free speech. The court denied the request for a rehearing in April 2018 and in September 2018, Andrei Iancu, the Director of the U.S.P.T.O., filed a petition for a writ of certiorari, which was granted by the Supreme Court.
The Lanham Act prohibits registering immoral and scandalous marks
Section 2(a) of the Lanham Act prohibits registration of immoral and scandalous marks, a prohibition which was first codified by Section 5(a) of the Trademark Act of 1905. The U.S.P.T.O. considers that a mark is immoral or scandalous if a substantial composite of the general public would find it shocking to the sense of truth, decency or propriety, in the context of contemporary attitudes and the relevant marketplace (see for instance In re Mavety Media Group Ltd. at 1371).
The government argued unsuccessfully on appeal that Section 2(a) does not implicate the First Amendment because it is either a government subsidy program or a limited public forum and that, alternatively, if it is speech, it is merely commercial speech. Such speech was defined by the Supreme Court in Va. State Bd. Of Pharmacy, as speech which does “no more than propose a commercial transaction.” It warrants the use of the Central Hudson, four-part test, not the strict scrutiny test.
In Tam, the Supreme Court had used a “heightened scrutiny test.” The Federal Circuit applied the strict scrutiny test, and found that the government had failed to prove that Section 2(a) advances the interests it asserts and is narrowly tailored to achieve that objective.
Trademark as speech
The Federal Circuit found Section 2(a) regulates speech based on its expressive content, and as such, does not merely regulate commercial speech. Indeed, the Supreme Court had noted in Tam that trademarks “often have an expressive content.” The Federal Circuit Court gave several examples of trademark applications using “FUCK” to further a worthy cause, such as FUCK HEROIN, FUCK CANCER or FUCK RACISM.
Brunetti is using the FUCT mark in connection with clothing featuring, as described by the TTAB, “strong and often explicit, sexual imagery that objectifies woman and offers degrading examples of extreme misogyny.” The Federal Circuit Court judges wrote in conclusion that they found “the use of such marks in commerce discomforting, and are not eager to see a proliferation of such marks in the marketplace.” Yet, it is speech which must be protected by the First Amendment.
The Lanham Act does not define what is a scandalous or immoral mark
The Federal Circuit found that there is no “reasonable definition” of what is “scandalous” and “immoral” and thus Section 2(a) is not construed narrowly enough to be found constitutional. Obscenity is not protected by the First Amendment, and the Supreme Court has provided a definition of it in Roth v. United States, “material which deals with sex in a manner appealing to the prurient interest.” In a concurring opinion to Brunetti, Judge Dyk explained that rather than finding Section 2(a) unconstitutional, he would have limited the scope of the clause to obscene marks.
In his Respondent brief, Brunetti added another question for the Supreme Court, whether Section (2)(a) is unconstitutionally vague under both the First and the Fifth Amendment.
The Supreme Court is likely to offer a definition of what is an immoral or scandalous mark
The Director of the USPTO argued in its petition to the Supreme Court that Section 2(a) merely prohibits the registration of scandalous marks, such as those using vulgar terms and graphic sexual image. However, what is “vulgar,” or what is “graphic” is not easily agreed upon, especially in a country as big as the U.S., which is home to many different opinions and beliefs. For example, there are no “Do Not Cuss” signs in New York restaurants, but there are still some in the South.
Whether or not the Supreme Court finds Section 2(a) unconstitutional, the court is likely to provide a definition of what is “scandalous” or immoral. ”
By Marie-Andrée Weiss
Disney Enterprises has owned since March 2003 the HAKUNA MATATA trademark, registered in class 25 for t-shirts. Disney filed the application in August 1994, shortly after the U.S. release of its widely successful “The Lion King” animated movie, which has been adapted as a musical comedy. A live-action reimagining version of the animated movie, using CGI technology, will be released this year.
In the movie and the musical comedy, and, most certainly, in the upcoming film, a character is singing the “Hakuna Matata” song, urging the young Lion King not to worry. Indeed, “Hakuna Matata” means “no problems” or “no worries” in Swahili. An article written by Cathy Mputhia in November 2018 noted that “Hakuna Matata” is “widely used in East Africa.”
Disney now faces backlash over this trademark registration. An online petition published by Shelton Mpala is asking Disney to cancel the HAKUNA MATATA trademark arguing that its decision to register it was “predicated purely on greed and is an insult not only the spirit of the Swahili people but also, Africa as a whole.” The petition has gathered more than 180,000 signatures.
Can Hakuna Matata be registered as a trademark?
The online petition claims that “Disney can’t be allowed to trademark something that it didn’t invent.” If this would be true, thousands and thousands of trademarks would be cancelled.
Indeed, it is not necessary to create a term to able to register it as a trademark; unlike a work protected by copyright, a trademark can be protected even though it is not an original work. What matters is that it is distinctive enough, since the function of a trademark is to identify the source of a product or service. Trademarks which are arbitrary, fanciful, or suggestive can be protected without having to show secondary meaning. Generic trademarks cannot be protected.
Few people in the U.S. knew the “Hakuna Matata” expression before the release of The Lion King in 1994. Indeed, Google Ngram Viewer shows that the word was first used in the English language corpus in the Nineties. However, as noted by The Guardian, “[t]he phrase was popularised in 1982 by the Kenyan band Them Mushrooms, whose platinum-selling single Jambo Bwana (Hello, Mister) featured the phrase hakuna matata.”
When the expression was trademarked in 1994, the U.S. public associated it with the movie, which was a blockbuster, complete with derivative products, some using the “Hakuna Matata” phrase. As such, this combination of words was an efficient trademark, because the general public believed that the phrase had been invented by Disney and thus perceived the trademark as being arbitrary or fanciful.
Disney’s trademark application stated correctly, however, that the two words have a meaning in another language and were not invented. As such, HAKUNA MATATA is a suggestive trademark, a term which “requires imagination, thought and perception to reach a conclusion as to the nature of the goods,” as explained by the Second Circuit in Abercrombie & Fitch Co. v. Hinting World.
Nevertheless, the public in East Africa perceives this trademark as a mere common phrase, and generic terms cannot be registered as trademarks. Therefore, “Hakuna Matata” cannot be registered as a trademark in East Africa but can be in the U.S. or in other Western countries because the public there does not perceive it as a common expression. Research on WIPO’s Global Brand Database reveals that the term is registered as trademark almost only in Western countries, with a few exceptions such as Egypt, Thailand, and Korea.
Under trademark law, a term can only be registered if it is not commonly used in the country or geographical areas where it is registered. This practice, while legal, can be perceived by the country from which the term originated, however, as cultural appropriation.
Trademark and cultural appropriation
Even if it is legal to register “Hakuna Matata,” it may not be advisable. Cultural appropriation is now a well-known concept, but it had just started to be recognized when Disney registered the trademark in 1994, as shown by this Ngram Viewer.
Shelton Mpala told CNN that that he had started the petition “to draw attention to the appropriation of African culture and the importance of protecting our heritage, identity and culture from being exploited for financial gain by third parties.”
This issue is addressed by WIPO, which established in 2000 the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC). The Committee’s mandate is to work towards reaching an agreement on one or more intellectual property international legal instruments which would protect traditional knowledge and traditional cultural expressions.
One of the IGC’s background briefs noted that “[t]he current international system for protecting intellectual property was fashioned during the age of enlightenment and industrialization and developed subsequently in line with the perceived needs of technologically advanced societies.”
Could a bar to register traditional knowledge and traditional cultural expressions be in the future?
Can this practice be regulated, and how? Cathy Mputhia suggested in her article that “relevant governments or communities [could] apply for expungement of already granted trademarks,” but noted that “there are certain thresholds that ought to be met for expungement of marks that contain heritage.”
These “expungement thresholds” will probably not be legal, but societal. If such expungement occurs for HAKUNA MATATA, it will be a business decision made by Disney designed to protect the company’s public image by acknowledging that the trademark hurts too many Africans. In this regard, Shelton Mpala chose a possible viable path towards his desired result.
One can imagine that a party could petition the TTAB to cancel the HAKUNA MATATA trademark registration under Section 2(a) of the Lanham Act which prohibits registration of immoral, scandalous, and disparaging marks. However, seems unlikely, as the U.S. Supreme Court held in 2017 in Matal v. Tam that Section 2(a)’s prohibition to register disparaging marks violates the First Amendment. The Court may soon rule similarly about scandalous and immoral marks, as it has accepted to review the In Re: Brunetti case, after the Federal Circuit held that the First Amendment also protects registration of such marks.
Section 2(b) of the Trademark Act bars the registration of a mark which consists of or comprises the flag or other insignia of the US, or any state, or municipality or foreign nation. Could the law be amended one day to add symbols of traditional knowledge and traditional cultural expressions? This would require a WIPO treaty protecting them, and the very hypothetical U.S. accession to the treaty.
By Pratyush Nath Upreti
A much-awaited mega-regional trade agreement, the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), which involves eleven countries in the Asia-Pacific region, including Australia, Brunei, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, and Vietnam, entered into force on December 30th of last year. The CPTPP consists of a total of thirty chapters, along with several annexes to the chapters and four annexure to the agreement.
The United States, under the leadership of Obama, was one of the architects of the Trans-Pacific Partnership Agreement (TPP). However, the current US President Donald Trump signed an executive order withdrawing the USA from the TPP. Post the US withdrawal, some considered the TPP dead and buried, but it received a new life during the Asia-Pacific Economic Cooperation (APEC) summit, which renamed TPP as the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP). The new version suspended twenty-two items from the original text, in particular, the IP chapter which had received heavy criticism for transplanting the US style of IP protection. For example, the patent term adjustment for unreasonable granting, authority delays, and curtailment was suspended. It was argued that, despite the professed purpose of the harmonization of patent-granting procedures among the member countries, the main intention of the provision was to extend pharmaceutical monopolies. According to the Report, on average the patent term extensions would give 3.6 further years and may amount to 20% of the pharmaceutical sales in the USA. There are other noticeable differences between TPP and CPTPP. In the last few years, there was an outcry on public forums regarding investors, through dispute settlement, restricting the sovereign right to regulate issues related to public interest or creating the risk of a ‘regulatory chill’. Taking this seriously, CPTPP has reaffirmed and endorsed government’s inherent right to regulate in matters related to the public interest.
After more than a year since its new abbreviation, CPTPP came into force last month. Clearly, the CPTPP is a massive trade block representing 495 million people and 13.5 percent of global gross domestic product. It is hard to predict whether it will be a success, but it shows huge potential and perhaps offers an alternative for countries in the light of the strains in the multilateral rules-based trading system.
 Comprehensive and Progressive Agreement for Trans-Pacific Partnership text (Released on 21 February 2018) < https://www.mfat.govt.nz/en/trade/free-trade-agreements/free-trade-agreements-in-force/cptpp/comprehensive-and-progressive-agreement-for-trans-pacific-partnership-text#chapters> accessed 15 January 2019.
 Presidential Memorandum Regarding Withdrawal of the United States from the Trans-Pacific Partnership Negotiations and Agreement (White House, January 23 2017) <https://www.whitehouse.gov/presidential-actions/presidential-memorandum-regarding-withdrawal-united-states-trans-pacific-partnership-negotiations-agreement/> accessed 14 January 2019.
The Asia-Pacific Economic Cooperation (APEC) 2017 <https://www.apec.org/Meeting-Papers/Leaders-Declarations> accessed 14 January 2019.
 For more discussion, see Pratyush Nath Upreti, ‘From TPP to CPTPP: Why intellectual property matters’ (2018) 13(2) Journal of Intellectual Property Law & Practice 100-101
 See CPTPP vs TPP (New Zealand Foreign Affairs & Trade) < https://www.mfat.govt.nz/en/trade/free-trade-agreements/free-trade-agreements-in-force/cptpp/understanding-cptpp/tpp-and-cptpp-the-differences-explained/> accessed 13 January 2019.
 Charles Clift, ‘The value of patent term extensions to the pharmaceutical industry in the USA’ (2008) 5(3) Journal of Generic Medicines 201-208.
 CPTPP vs TPP n (3).
 See Philip Morris Brands Sarl, Philip Morris Products S.A and Abal Hermanos S.A v. Oriental Republic of Uruguay, ICSID Case No: ARB/07. Also see Philip Morris Asia Limited v. The Commonwealth of Australia, UNCITRAL, PCA Case No. 2012-12
 ‘Benefits of the CPTPP for Yukon’ < https://international.gc.ca/trade-commerce/trade-agreements-accords-commerciaux/agr-acc/cptpp-ptpgp/regions/YT.aspx?lang=eng> accessed 13 January 2019.
By Marie-Andrée Weiss
The characters created by Disney, Marvel, and LucasFilms are valuable intellectual property and are protected both by copyright and by trademark. However, a recently decided case in the Southern District of New York (SDNY), Disney Inc. v. Sarelli, 322 F.Supp.3d 413 (2018), demonstrates that preventing the unauthorized use of such characters may not be as easy as expected.
In this case, Plaintiffs are Disney Enterprises, Marvel Characters and LucasFilm, all of which own copyrights and trademarks in many of the most famous characters in the world, such as Mickey Mouse, Hulk, and Chewbacca. These characters were first featured in movies like Frozen, The Avengers or Star Wars, and are now licensed or featured in derivative products such as comic books, video games, or theme parks. Their exploitation is highly lucrative.
When visiting Plaintiffs’ theme parks, one has a chance to meet the characters “in person.” This experience is also offered by Characters for Hire, a New York company offering, as the name implies, character hiring services. The company’s principal owner is Nick Sarelli (Defendant). Characters for Hire offers a service wherein actors dressed in costumes entertain guests during birthday parties or corporate events. For example, actors have allegedly dressed as Mickey, Elsa and Anna from Frozen, Captain America and Hulk from The Avengers, and Luke Skywalker and Darth Vader from Star Wars.
The contracts Defendants provided to their clients contained disclaimer language, stating, for example, that Defendants do not use trademarked and licensed characters. The contracts also warned clients that the costumes may differ from those seen in movies “for copyright reasons,” adding that “[a]ny resemblance to nationally known copyright character is strictly coincidental.”
These disclaimers did not appease Plaintiffs, who sent several cease and desist letters to Defendants before filing a federal copyright and trademark infringement suit and a New York trademark dilution suit.
While Judge Daniels from the SDNY granted Defendants’ motion for summary judgment and dismissed Plaintiffs’ claim for trademark infringement on August 9, 2018, he denied the motion to dismiss the copyright infringement claim and the trademark dilution claim.
The descriptive fair use defense failed
Plaintiffs claimed that the use of their trademarked characters to advertise and promote Defendants’ business, along with their portrayal by costumed actors, was likely to confuse consumers as to the origin of the services.
Defendants argued that their use of Plaintiffs’ characters was descriptive and nominative fair use, and that there was no likelyhood of confusion.
Descriptive fair use is an affirmative defense to a trademark infringement suit, as Section 33(b)(4) of the Trademark Act allows “use… of a term or device which is descriptive of and used fairly and in good faith [but] only to describe the goods or services of such party, or their geographic origin.” In other words, a defendant can use plaintiffs’ trademarks in a descriptive sense, or to describe an aspect of his own good or service.
For such a defense to succeed in the Second Circuit, a defendant must prove that the use was made (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith (Kelly-Brown v. Winfrey at 308). This defense failed in the present case, as Defendants had not made a descriptive use of Plaintiffs’ marks. Instead, Judge Daniels found that their ads “were specifically designed to evoke [Plaintiff’s marks] in consumers’ minds…”
The nominative fair use defense also failed
Defendants also claimed that they used Plaintiffs’ marks to describe their own products. Such nominative fair use is a defense to a trademark infringement suit if such use “does not imply a false affiliation or endorsement by the plaintiff of the defendant” (Tiffany v. eBay at 102-103). But this nominative fair use defense also failed, as Defendants used Plaintiffs’ marks to identify their own service, which is hiring out characters for parties, rather than Plaintiffs’ trademarked characters.
Defendants’ use of characters was not trademark infringement
Judge Daniels used the eight-factor Polaroid test used by the Second Circuit in trademark infringement cases to determine whether Defendants’ use of Plaintiffs’ marks were likely to confuse consumers.
While Plaintiffs’ marks are undoubtedly strong (first factor), the similarity of the marks (second factor), weighed only slightly in Plaintiffs’ favor because Defendants used different names for their characters than Plaintiffs’ trademarked character names, e.g., “Big Green Guy,” “Indian Princess,” and “The Dark Lord” instead of Hulk, Pocahontas and Darth Vader.
The third and fourth Polaroid factors, the proximity of the goods and services, and the possibility that the senior user will enter the market of the junior user, were found to weigh in Defendants’ favor. There was no evidence that Plaintiff has plans to expand into the private entertainment service industry.
The fifth Polaroid factor, evidence of actual confusion, also weighed in Defendants’ favor, as there was no evidence that Defendants’ customers used the names of Plaintiffs’ trademarked characters when referring to Defendants’ services in online reviews or otherwise. Plaintiffs could not provide a survey proving customers’ confusion either.
Judge Daniels found the sixth factor, Defendants’ intent and evidence of bad faith, to also be in Defendants’ favor, since Defendants had put customers on notice that their services were not sponsored by or affiliated with Plaintiffs by using altered versions of Plaintiffs’ characters’ names and by removing Plaintiffs’ characters’ names in their online reviews.
The seventh Polaroid factor, the quality of Defendants’ products, was also in Defendants’ favor, as Defendants’ services, being of a lesser quality than Plaintiffs’, makes it likely that consumers will not be confused as to the source of the services.
The eighth Polaroid factor, consumer sophistication, also was in favor of Defendants, as Plaintiffs did not prove the sophistication level of Defendants’ relevant consumers.
Balancing these eight factors, the SDNY found no likelihood of consumer confusion and denied Plaintiffs’ motion for summary judgment on their trademark infringement claim.
Plaintiffs chose to claim trademark dilution under New York trademark dilution law, Section 360-1 of New York Business Law, and not under the Federal Trademark Dilution Act. This choice may have been made because the New York law does not require a mark to be famous to be protected, and a plaintiff only needs to prove the mark’s distinctiveness or secondary meaning.
Judge Daniels found that there was a genuine issue of fact as to whether Defendants’ use of Plaintiffs’ marks is likely to dilute Plaintiffs’ marks by tarnishment. A court will have to determine if Defendants provide services of poor quality.
Plaintiffs argued that Defendants had “copied and used the images, likenesses, personas, and names of Plaintiffs’ characters…to promote and advertise its services online.” Defendants argued in response that the characters in which Plaintiffs own copyrights are based on prior works that are part of the public domain.
Both parties will have more chances to pursue their arguments as Judge Daniels denied the motion for summary judgment on copyright infringement. He found that Plaintiffs had presented as evidence screenshots from Defendants’ website and videos allegedly published by Defendants which had not been properly authenticated. More specifically, they had not been authenticated by someone “with personal knowledge of reliability of the archive service from which the screenshots were retrieved,” citing Specht v. Google, a 2014 Seventh Circuit case.
It is likely that the parties will settle out of court.
By Marie-Andrée Weiss
Last June, the New York legislature failed, once again, to amend the state’s right of publicity law. A similar bill, Assembly Bill A08155, had the same fate last year. New York Assembly Bill 8155-B had passed the assembly on June 18, 2018, but the Senate did not bring the bill to a vote before the legislature adjourned. This is fortunate, as the bill had several flaws.
The current New York right of publicity law
New York statutory right of privacy, Civil Rights Laws §§ 50 and 51, is a narrowly drafted law. The New York Court of Appeals recently described the legislative intent at passing this law as “slender” (Lohan v. Take-Two Interactive Software, Inc.). Indeed, the law does not provide an extensive right of publicity, but merely makes it a misdemeanor to use a living person’s likeness, that is, her name, portrait or picture, “for advertising or trade purposes” without prior written consent. New York does not recognize any other privacy rights, not even at common law.
Identity as personal property
The bill clearly differentiated the “right of privacy” from the “right of publicity.” During a person’s lifetime, a person would have had a right to privacy and a right to publicity. Both rights would have prevented the unauthorized use of likenesses and names, but only the right of publicity would have provided the right to sell one’s persona.
The “right of privacy” was defined as a “personal right, which protects against the unauthorized use of a living individual’s name, portrait or picture, voice, or signature for advertising purposes or purposes of trade without written consent.” This is essentially the right that is currently protected in New York. The bill would have also protected a person’s signature, which is not currently protected. Moreover, under the bill, this right of privacy would have expired upon death, just as it does now.
The bill would have also created a “right of publicity,” defined as “an independent property right, derived from and independent of the right of privacy, which protects the unauthorized use of a living or deceased individual’s name, portrait or picture, voice, or signature for advertising purposes or purposes of trade without written consent.”
The bill would have made an individual’s persona his or her personal property, “freely transferable or descendible, in whole or in part by contract or by means of any trust or testamentary instrument.” The bill would, therefore, have made it possible to transfer one’s persona, by selling it or licensing it, for a limited or unlimited time, and these contracts would have been able to survive death.
The dangers of making identity a transferable personal property
SAG-AFTRA, a performers’ union, supported the bill. Its New York President urged its New York members to let their representatives know that they were in favor of passing the bill. However, the bill, as written, could have placed actors in danger of losing the right to use and profit financially from their personality.
The Fantine character, created by Victor Hugo in Les Misérables, sold her hair so she could send money to her daughter Cosette. One can imagine an actress, who once played Fantine in a Les Mis production, but who has since fallen on hard times, selling her entire persona in order to make ends meet. Hair can grow again, but under the bill, a persona could have been sold off for a long time, even forever. One could even imagine a persona becoming a commodity under the new law, with producers buying personas straight out of a ‘central-casting’ database. Representative Morelle noted during the debate that “[i]f someone looks like another person, that’s not covered under this. You could go find someone who looks like Robert De Niro, or you could find someone that looks like another actor.”
The bill would have thankfully forbidden parents or guardians from assigning the right of publicity of a minor and would have rendered such assignments unenforceable. Under this bill. Fantine could have sold her own persona, but not Cosette’s.
A descendible right of publicity
Unlike other states, such as California, New York does not have a post-mortem right of publicity. The bill would have provided such a right for forty years after a person’s death, whether she was famous or not. At the expiration of the forty-year period, the image of an individual would have been freely usable.
This right would have been descendible, either by testament or by intestate succession. Either way, the right would have been enforced by a person or persons possessing at least a fifty-one percent interest of the individual’s right of publicity.
Persons claiming to be successors in the right of publicity of a deceased individual, or licensees of such rights, would have had to register their claim with the New York Secretary of State and pay a $100 fee. Thereafter, their claim would have been posted on a public web site specifically designed for that purpose. Parties interested in licensing or buying a particular right of publicity could have used this registry to find out who owns a particular right. Failure of a licensee or successor to register a persona would have been a defense for unauthorized use of the deceased’s persona. The sponsor of the bill, Representative Joseph Morelle, specified during the debate that the law would apply to anyone seeking damages in New York, provided that the interest had been registered in the New York registry.
The Electronic Frontier Foundation argued in a memorandum sent to the New York legislature that the law would pressure heirs to benefit commercially from the image of their deceased relatives, noting that in “a large estate, an inheritable and transferable right of publicity may add to the tax burden and thus lead heirs with no choice but to pursue advertising deals or some other commercial venture.” Indeed, deceased artists such as Glenn Gould or Franck Zappa are back on the road performing as holograms.
Fake News, Deepfakes and the right to publicity
The bill addressed the issue of “digital replica,” which it defined as a “computer-generated or electronic reproduction” of the likeness or voice of a person, whether alive or dead. Representative Morelle explained that the bill aimed at codifying the recent Lohan v. Take-Two Interactive Software decision, where the court found that New York right of privacy law, which protects unauthorized use of a “portrait,” encompasses the “graphical representation of a person in a video game or like media.”
Use of such digital replicas would have been forbidden, without prior authorization, in expressive works such as a live performance, a dramatic work, or a musical performance “in a manner that is intended to create, and that does create, the clear impression that the individual represented by the digital replica is performing, the activity for which he or she is known.” Athletes’ digital replicas could not have been used in audiovisual works either, if doing so created “the clear impression that the athlete represented by the digital replica is engaging in an athletic activity for which he or she is known.” This was probably aimed at protecting athletes against the unauthorized use of their likenesses in video games.
The dystopian movie The Congress featured actress Robyn Wright selling the right to her digital image to a studio, under an agreement which forbade her to ever act again. Even more sinister is the prospect of selling one’s digital image for making pornographic movies. Indeed, Artificial Intelligence (AI) technology allows creation of “deepfakes” video where a person is depicted as performing sexual acts. Such technology can be used to seek revenge (so-called revenge porn) or simply to create porn movies featuring celebrities. The bill specifically addressed the issue of unauthorized use of digital replicas in a pornographic work and would have forbidden the use of digital replicas in a manner intended to create, or which did create “the impression that the individual represented by the digital replica is performing [in such pornographic work]”.
Representative Morelle also mentioned during the debate that digital replicas can be used to create fake news, for instance, by making political figures look and sound as if they are saying something they did not actually say, which brings us to the First Amendment issues this bill raised.
First Amendment Issues
New York courts found that the use of a person’s likeness with respect to “newsworthy events or matters of public interest” is non-commercial and therefore not actionable under New York’s right of publicity law (Stephano v. News Group Publs.).
Use of digital replicas would have been authorized for parody, satire, commentary or criticism purposes, or “in a work of political, public interest, or newsworthy value,” or if the use was de minimis or incidental.
The bill would have explicitly provided a First Amendment defense to the use of a persona without prior consent, including use in a book, play or movie. This is in line with the recent California case, Olivia de Havilland v. Fox Networks, which had pitted the centenarian actress against the producer of Feud: Bette and Joan, an eight-part television show about the Joan Crawford/Bette Davis rivalry. Catherine Zeta-Jones portrayed Olivia de Havilland, and was shown in the movie giving an interview wherein she referred to her sister Joan Fontaine as a ‘bitch’, among a few more unsavory comments. Olivia de Havilland sued for infringement of her California right to publicity but lost because the use of her name and likeness in the movie was protected by the First Amendment. The case shows how public figures cannot always rely on their right of publicity to censor speech about themselves which they deem unsavory.
It has been reported that Olivia de Havilland plans to ask the Supreme Court to review the case, and the New York legislature is likely to introduce a new version of its right of publicity bill in the coming months. Right of publicity is developing, warts, holograms, and all.
As readers know, NAFTA has been turned into the United States – Mexico – Canada Agreement (USMCA). Along with changes to minimize barriers in the automobile and dairy sectors, intellectual property rights, data protection, and dispute settlement have undergone considerable alterations. These changes are addressed here.
IP Protection Extended
As for intellectual property rights, the negotiations have resulted in enhanced protections, an outcome mainly desired by the US (and with considerable similarities with the 2015 TPP text).
In regard to copyrights, Art.20.H.7 of the USMCA stipulates that, following the author’s death, his or her intellectual property rights shall be protected for 70 years onwards (thereby extending protection from the 50-year standard, by which Canada currently abides). In cases where no person’s life is used as a basis for the copyright term, the minimum is now set to 75 years from the date of the first authorized publication. In NAFTA, the minimum was 50 years.
Biologics are a field which NAFTA did not specifically regulate. Under the USMCA Art.20.F.14, however, patent protection for new pharmaceutical products that are (or contain) biologics will last 10 years from the date of first marketing approval of that product in the Party concerned. Note that biologics protection in Canada is currently only 8 years. It is also important to highlight that the USMCA provides for a patent-term restoration system, enacted after request, in cases where the applicant’s patent issuance has been ‘unreasonably’ delayed (Art.20.F.9).
Of utmost importance are the advanced enforcement provisions of IP rights protection. Under NAFTA, the competent authorities could act only after the filing of an application by the right holder (Art.1718). The USMCA provides for the ex officio authority of border officials to initiate border measures against suspected counterfeit trademark goods or pirated copyright goods which are imported, destined for export, in transit, or entering/exiting a free trade zone or a bonded warehouse; this is intended to combat the phenomenon of weak counterfeiting (Art.20.J.6). Further, the USMCA provides for the establishment of a new IP Committee, with the task of holding consultations on several cooperation issues (Art.20.B.3).
Digital Trade Chapter
When the original NAFTA came into force in 1994, digital trade was not considered in the agreement. USMCA, however, dedicates a whole chapter to it (Chapter 19). Two key points in Chapter 19 should be emphasized. First, the rules on data localization restrict policies that require companies to store personal information within the local jurisdiction, which seems to conflict with what is provided for in the relevant EU regulations. The cross-border transfer, storage and processing of data is facilitated under the USMCA through, inter alia, the prohibition of custom duties on the transfer of digital products and the requirement that Parties do not (unnecessarily) restrict the cross-border transfer of personal information. Second, Art.20.J.11 introduces a safe-harbor provision for Internet Service Providers by requiring that parties limit the Providers’ liability for monetary relief in instances of infringements where they merely maintain, transmit, or store unauthorized information, but do not control, initiate or direct the infringement.
Limitation of Investor-State Dispute Settlement
Reformation of the dispute settlement mechanism is another field of practical and legal interest. Chapter 11 of NAFTA provided for investor-state dispute settlement (ISDS) for protected investments. The foreign investor had recourse to an arbitral tribunal to challenge host State measures. Canada has now entirely withdrawn from the ISDS system. Thus, investor-state disputes are only permitted between the US and Mexico, and only under certain conditions. First, they are only available for alleged violations of the standards of national treatment and ‘most-favored nation’, as well as direct expropriation disputes. Furthermore, ISDS is only available after local remedies have been exhausted or after a time lapse of 30 months. As far as minimum standards of treatment (fair and equitable treatment) and indirect expropriation are concerned, the investors can only pursue a claim before domestic courts.
Notably, specific categories of US investors are permitted to initiate proceedings relating to oil, gas, transportation, infrastructure, and power generation concession contracts concluded between them and the Mexican government (USMCA Annex 14-E). Yet, the state-to-state dispute settlement mechanism of NAFTA’s Chapter 19 has not undergone modification and remains in place.
The parties have chosen to maintain many of the original NAFTA principles, such as that bilateral and trilateral elements can coexist. The USMCA agreement, therefore, represents a compromise, bringing changes in some areas while leaving others untouched.
By Marie-Andrée Weiss
Actress Olivia de Havilland, DBE, is petitioning the Supreme Court of the United States for writ of certiorari for the following question:
“Are reckless or knowing false statements about a living public figure, published in docudrama format, entitled to absolute First Amendment protection from claims based on the victim’s statutory and common law causes of action for defamation and right of publicity, so as to justify dismissal at the pleading stage?”
It all started with the television ‘docudrama’ series Feud: Bette and Joan, about the Bette Davis and Joan Crawford rivalry. In the docudrama, Catherine Zeta-Jones portrayed Olivia de Havilland calling her sister Joan Fontaine a ‘bitch’, implying that Frank Sinatra is an alcoholic, and generally enjoying good juicy gossip, even at the expense of her close friend Bette Davis.
This did not sit well with Miss de Havilland, who prides herself on having achieved success “without sacrificing her strong moral and personal commitment to truth… and plain old fashioned good manners.” She found her portrayal in Feud to be false and damaging to her reputation, and filed a right of publicity and false light invasion of privacy suit against the producers of the show in June 2017.
Defendants filed a motion to strike the complaint under the California Strategic Lawsuits Against Public Participation (anti-SLAPP) statute, which provides defendants the right to dismiss cases which chill expression because Plaintiff engages in a costly and time-consuming litigation.
The Los Angeles Superior Court denied the motion, finding that Feud was not “transformative” under the Comedy III Productions ‘transformative use’ test and thus not protected by the First Amendment. In Comedy III, the California Supreme Court had found that an unauthorized use of likeness is protected by the First Amendment if it is transformative.
Defendants appealed. The California Court of Appeal reversed on March 26, 2018, finding that the way Plaintiff had been portrayed in Feud was not “highly offensive to a reasonable person” and that the First Amendment protected the portrayal of Plaintiff without her permission. Plaintiff then petitioned the California Supreme Court to review the case. The court declined to do so on July 11, 2018, and Miss de Havilland is now petitioning the Supreme Court for a writ of certiorari.
Is docudrama a knowing or recklessly false publication?
The scope of the question Petitioner is asking the Supreme Court is rather narrow and focuses of the issues of so-called docudramas, which mixes real life elements and dramatization. She argues that the court should review the case as it is “the right vehicle for [the court] to… clarify whether the First Amendment creates a special immunity for knowingly false statements published in a docudrama at a time when this genre is at an all-time high point” (emphasis my own).
Petitioner also argues, somewhat more broadly, that knowing or recklessly false statements in any form are not protected by the First Amendment and that “false factual statements possess no intrinsic First Amendment value,” citing United States v. Alvarez.
False statements are not generally protected by the First Amendment. A docudrama is a fiction and fiction is, by essence, false. But concluding that fiction, because it is false, is not protected by the First Amendment would be a sophism.
The California right of publicity statute has an exception for matters of public interest if the use of the likeness of an individual has been made “in connection with any news, public affairs, or sports broadcast or account, or any political campaign.” Miss de Havilland argues that this public interest exception does not protect knowing or reckless publication, and that if a fiction about a real person is knowing and recklessly false, the person thus portrayed should have the right to sue for defamation and unauthorized use of her likeness without being prevented to do so by the First Amendment.
It would be surprising if the Supreme Court accepts review of the case because the issue at stake – whether creators have the right to portray real persons in works of fiction without their permission – is well settled. The decision of the Los Angeles Superior Court appears to be only a fluke, and was reversed by the California Court of Appeal, which held that a person portrayed in a book, play, film or television show does not have the right to control “the creator’s portrayal of actual people.”
This dismissal of Miss de Havilland’s claims was consistent with California case law. The Ninth Circuit held in the 2006 Sarver v. Chartier case that the right of publicity suit filed by an Army Sergeant allegedly portrayed in the Hurt Locker movie had been properly barred by the California anti-SLAPP statute. The film was based on an article published in Playboy magazine about Plaintiff’s experience while he worked as an explosive technician in Iraq.
However, it can be argued that the Sarver case actually supports Miss de Havilland’s argument. In Sarver, the Ninth Circuit did not use the Comedy III transformative test to reach the conclusion that the movie did not violate Plaintiff’s right of publicity because it is transformative enough. Instead, it extensively quoted the only Supreme Court right of publicity decision, Zacchini v. Scripps-Howard Broadcasting, where the Supreme Court concluded that the Ohio right of publicity statute could prevent broadcasting the entire performance of a “human cannonball” without violating the First Amendment, because petitioner had made significant economic investments in energy, talent and expense to prepare for his act.
The Ninth Circuit noted in Sarver that it interprets Zacchini as upholding a right of publicity “where the defendant appropriates the economic value that the plaintiff has built in an identity or performance” without considering whether defendant’s use is transformative or not. This interpretation may lead a case such as this one to be decided in favor of the plaintiff, especially if one considers that the practice of securing a ‘life rights agreement’ before portraying a particular person in a movie or television show is prevalent in the business and is thus another way to profit from the economic value of one’s identity.