BILL ANALYSIS
SENATE JUDICIARY COMMITTEE
Adam B. Schiff, Chairman
1999-2000 Regular Session
SB209 S
SenatorBurton B
As Amended March 3, 1999
Hearing Date: March 16, 1999 2
Civil Code 0
DLM:cjt 9
SUBJECT
Commercial Appropriation of Image: Deceased Celebrities
DESCRIPTION
This bill would make the following changes to the law which
prohibits unauthorized commercial use of a famous deceased
person's image:
move Civil Code section 990 which deals with commercial
use of one's image after death to section 3344 which
deals with commercial use of one's
image during life;
replace the list of constitutionally based defenses
contained in current law, and instead allow any
constitutional use of celebrity images;
extend the protection period from 50 years to 70 years;
require that the Secretary of State post the list of
heirs eligible to assert claims under this section of the
code on the World Wide Web.
BACKGROUND
The use of a person's name or image without consent for
commercial purposes has long been recognized as an
actionable invasion of privacy at common law. For example,
one may not falsely claim a celebrity endorses a product,
and generally one may not market products which bear the
likeness of a celebrity without the person's permission.
The Legislature codified this right in 1971.
(AB 826 [Vasconcellos] Ch. 1595, Stats. of 1971.) In 1984
the Legislature extended the law by clarifying that the
right to exclusive benefit from likeness is a property
right, and is therefore descendable. This change allowed
heirs to bring enforcement actions against use of their
deceased loved one's name, voice, or likeness, in any
manner, on or in products, or for purposes of advertising
without prior consent. (SB 613 [Campbell) Ch. 1704, Stats.
of 1984.)
Recently, a court interpreted the section of law dealing
with deceased celebrities, Astaire v. Best Film & Video
(9th Cir. 1997) 116 F.3d 1297. In the Astaire case, Mrs.
Fred Astaire sued the producers of a series of video dance
lessons featuring movie clips of Fred Astaire dancing.
Mrs. Astaire claimed the use of the movie clips was a
commercial appropriation of his image. Mrs. Astaire won
the case at trial, where the court found the "how to" video
to be an unauthorized product covered under Civil Code
section 990. However, the Appellate Court reversed this
finding, holding that the statutory defense for
unauthorized use of likeness in "film" contained in Civil
Code 990 (n) protected Best Video from liability.
CHANGES TO EXISTING LAW
1. Existing law provides:
Any person who uses a deceased personality's name, voice,
signature, photograph, or likeness, in any manner, on or
in products, merchandise, or goods, or for purposes of
advertising or selling, or soliciting purchases of,
products, merchandise, goods, or services, without prior
consent.
However, as set forth in subdivision (n) of the statute,
the prohibition does not apply to the use of a deceased
personality's name, voice, signature, photograph, or
likeness, in any of the following instances:
(1) A play, book, magazine, newspaper, musical
composition, film, radio or
television program, other than an
advertisement or commercial announcement not
exempt under paragraph (4).
(2) Material that is of political or newsworthy
value.
(3) Single and original works of fine art.
(4) An advertisement or commercial announcement for
a use permitted by
paragraph (1), (2), or (3).
This bill would delete the exceptions above and insert:
"This section shall not apply to the use of a deceased
personality's name, voice, signature, photograph, or
likeness, to the extent the use is protected by the
constitutional guarantees of freedom of speech or freedom
of the press."
2. Existing law provides that no enforcement action may
be brought under this section after the expiration of 50
years from the death of the deceased celebrity.
This bill would raise the number of years to 70 (seventy)
years from the death of the deceased celebrity.
3. Existing law, Code of Civil Procedure 410.10, provides
that California courts have jurisdiction over any matter
which the state and federal constitutions allow. This
standard requires that one of the party's have sufficient
contacts with California.
This bill would state that pursuant to the jurisdiction
provided under Code of Civil Procedure 410.10, a
plaintiff has standing to bring an action pursuant to
this section if any of the acts giving rise to the action
occurred in this state, whether or not the decedent was a
domiciliary of this state at the time of death.
COMMENT
1. Stated need for legislation: to allow rightful
property owners control over image uses
"We are living in an era when images of prominent
artists, living and deceased, are used to sell and
promote an increasing variety of products in every
conceivable medium at a time when advancing technology
provides the means for virtually unlimited manipulation
of images and their instantaneous distribution," claims
the bill's co-sponsors the Screen Actors Guild. "When
image thieves step in, there's no limit to the extent of
the damage that can be done to the integrity of (an
artist's) career and vision. To the extent the misuse is
distributed widely, the damage done is irreparable, even
if owners of the rights win an exhaustive lawsuit. Not
only do authorized users suffer by this theft, but owners
of the rights lose important compensation, on which many
heirs-widows, children and others-depend on to live,"
they add.
The author asserts that there are too many loopholes in
existing law which allow persons to wrongfully profit
from a celebrity's hard work and deprive their heirs of a
rightful inheritance. The author points to the Astaire
decision as an example of the need for this bill saying,
"(T)he court limited the application of section 990,
remarkably finding that Best Video's use of
Mr. Astaire dancing in introductory film clips of a dance
instruction video was not a commercial appropriation of
his image. This kind of exploitation is exactly what 990
was designed to prevent, not protect. If Best had put
Mr. Astaire's image on a T-shirt, the court would have
prevented the marketing of the product. Because the
image of Mr. Astaire dancing was used in a product which
took the form of a video, the court reasoned that the
'film' exception under CC 990(n) protected the use. The
problem with this analysis is that the court has elevated
form over content," the author adds.
According to the author, the reading of section (n) by
the Astaire court creates "a situation where a collection
of iron-on appliques bearing the likeness of an athlete
or movie star would be exempt from the statute simply
because the form of the product appeared as a 'book' and
books are on the section (n) list of exemptions. Another
example: take a magazine comprised of nothing but
photographs of River Phoenix. The law would not allow
the photographs alone to be sold; however by merely
changing the form from a photograph into a series of
photos in a 'Magazine,' the vendor could skirt the law."
This is not mere conjecture, the author asserts, as the
Astaire decision has already been cited by at least one
court applying Civil Code section 990 as narrowing the
law. (Comedy III Productions, Inc. v. Gary Saderup, Inc.,
et al (1998) 68 Cal. App. 4th 744.)
2. Support: Consumers, crime victims and labor
The Consumer Federation of California writes in support
of the bill to say, "One of the strongest interests
consumers have is the use over their own name, voice,
signature, photograph and likeness. This bill would
benefit consumers by providing additional protection
against unauthorized commercial use after a personality's
death." Other support comes from victims of crime who
are concerned about the unauthorized use of victims of
crime as portrayed in true crime dramas, and the AFL-CIO
who support the rights of creative artists to enjoy the
fruits of their labor.
3. Civil Code section 990: Underlying policy
Civil Code section 990 provides for a descendable right
of publicity for those heirs and other interested persons
who file a Registration of Claim as
Successor-In-Interest with the California
Secretary of State. According to the Secretary of
State's office, an estimated 700 persons have registered
under this provision.
The legislative history of section 990 makes clear that
the law is "intended to address circumstances in which
(a) commercial gain is had through the exploitation of
the name, voice, signature, photograph, or likeness of a
celebrity or public figure in the marketing of goods or
services, or (b) a celebrity or public figure is
subjected to abuse or ridicule in the form of a marketed
product. Such goods or services typically involve the
use of a deceased celebrity's name or likeness, e.g. on
posters, T-shirts, porcelain plates, and other
collectibles: in toys, gadgets and other merchandise; in
look- alike services." Assembly Committee On Judiciary,
1983-84 Reg. Sess., Report on SB 613 (Campbell) As
Amended 6/12/84.
In the siminal case of Zacchini v. Scripps-Howard
Broadcasting (1977) 97 S. Ct. 2849, the Supreme Court
upheld against first amendment challenge a state right of
publicity claim brought by an entertainer. In so doing,
the court laid out the economic rationale for right of
publicity cases as follows:
"The State's interest in permitting a "right of
publicity" is in protecting the proprietary
interest of the individual in his act in part to
encourage such entertainment. The State's
interest is closely analogous to the goals of
patent and copyright law, focusing on the right
of the individual to reap the reward of his
endeavors and having little to do with protecting
feelings or reputation? "The rationale for
[protecting the right of publicity] is the
straight-forward one of preventing unjust
enrichment by the theft of good will. No social
purpose is served by having the defendant get
free some aspect of the plaintiff that would have
market value and for which he would normally pay.
Kalven, Privacy in Tort Law - Were Warren and
Brandeis Wrong?, 31 Law & Contemp. Prob. 326, 331
(1966).? The economic philosophy behind the
clause empowering Congress to grant patents and
copyrights is the conviction that encouragement
of individual effort by personal gain is the best
way to advance public welfare through the talents
of authors and inventors in 'Science and useful
Arts.' Sacrificial days devoted to such creative
activities deserve rewards commensurate with the
services rendered." Zacchini, supra. (See also
Lugosi v. Universal Studios (1979) 25 Cal. 3d
813; Guglielmi v. Spelling-Goldberg Productions
(1979) 23 Cal.3d 860.)
4. Opposition concerns:
a) Will SB 209 encourage litigation?
SB 209 would delete the list of defenses contained in
section (n) of Civil Code 990, and replace it with
"This section shall not apply to the use of a deceased
personality's name, voice, signature, photograph, or
likeness, to the extent the use is protected by the
constitutional guarantees of freedom of speech or
freedom of the press." Although this provision of SB
209 is a "work in progress," and the author continues
to work with opponents to address concerns, opposition
to the bill in its current form has been placed on the
record.
While there are many opponents to this proposal, the
basis of the opposition is uniform: the list of
defenses grants certainty and its abolition will
invite litigation, thereby chilling free speech.
Universal Studios sums up this opposition well when
they write, "California's post mortem right of
publicity statute is designed to allow the heirs of
deceased persons to control the use of their names and
likenesses in advertising and on consumer products.
It is not designed to stop the creative community from
portraying or referring to celebrities in expressive
works, such as the portrayal of deceased celebrities
in 'Forrest Gump.' However, if works such as films,
songs and books are not specifically exempted from
liability and instead writers, artists, and producers
are left to guess about whether a reference or
portrayal is protected by the first amendment,
creative expression will be stifled."
To this line of opposition, the author responds by
drawing attention to Civil Code 3344, the sister
appropriation of likeness statute for living
celebrities. The author states that, "the law which
prohibits unauthorized appropriation of living
celebrity likeness has no laundry list of exceptions
as is found in 990, and yet the studios and
publishers find the standard of behavior in that
section sufficiently clear. In section 990 as with
3344 the analysis of unauthorized use of an image on
porcelain plates, posters, pictures, plays and movies
would all be the same. All this change in law would
do is allow the heirs of celebrities to be accorded
the same rights as the celebrity enjoyed when alive."
The courts have recognized that certain exceptions
from the right of publicity cases must be made to
accommodate free speech. For instance a partial list
includes the following: "No cause of action may lie
for the publication of matters within the public
interest, which rests upon the public's right to know
and the freedom of the press to tell it?" Dora v.
Frontline Video, Inc., (1993) 15 Cal. App. 4th 536;
nor for advertisement by newspaper which reproduces
newsworthy event for purpose of promoting itself.
Montana v. San Jose Mercury News, Inc., (1995) 34 Cal.
App. 4th 790. Whether exhibited in theaters or on
television, a film is a medium which is protected by
the constitutional guarantees of free expression.
(Citations omitted.) This protection extends to
encompass fictional and biographical works."
Gulglielmi v. Spelling-Goldberg Productions supra. In
Bery v. City of New York (2d Cir. 1996) 97 F.3d 689,
the Court of Appeals opined that "Visual art is as
wide ranging in its depiction of ideas, concepts and
emotions as any book, treatise, pamphlet or other
writing, and is similarly entitled to full First
Amendment protection." In Time v. Hill (1967) 87 S.
Ct. 534, the court recognized that a playwright is
protected by the First Amendment in creation of a
work, and may take artistic license with the facts in
so doing. Id.
In the Astaire litigation, the author points out, many
of the opponents to SB 209 joined in an Amici Curiae
Brief filed in the appeal. In that brief, CBS, Fox,
NBC and Warner Bros. admitted that "(E)ven if the
Legislature had not drafted subsection (n), 990
still would have to be read to exempt all expressive
works from liability in order to accommodate First
Amendment concerns. Similarly, Cal. Civ. Code
3344-which protects the right of publicity of living
individuals-also must be read to immunize expressive
works from right of publicity claims, even though the
Legislature did not draft an exemption parallel to
990(n)." Brief for Amici Curiae (cite).
Finally, the author reminds the committee that section
990 has a "loser pays" provision which is rare in a
statutory tort claim of action. This provision
declares that "The prevailing party or parties in any
action under this section shall be entitled to
attorney's fees and costs." This provision is itself
a strong deterrent against frivolous suits being
filed, the author asserts.
b) Extension of protection for an additional 20 years
Columbia Pictures opposition to this provision is
representative of the opposition of the studios. They
write, "Extension of the right of publicity from 50 to
70 years further perpetuates the chilling effect of SB
209 by reaching back into history and removing from
public view or subjecting to private control another
20 years worth of historical figures." Adds MPAA,
"Proponents of SB 209 maintain that the recent
extension of the term of copyright protection by 20
years justifies a parallel extension of the right of
publicity. But likening publicity to copyright is
like comparing apples to oranges."
The Screen Actors Guild (SAG) believes that the
section of the bill which extends the term of
protection to 70 years after the death of the
celebrity is a necessary recognition of the "increased
longevity of the personalities and their heirs; the
trend toward rearing children later in life;
unprecedented growth in technology over the last 20
years including the advent of digital media, the
internet and other information infrastructures, which
have greatly enhanced the marketability of creative
works, and the growing international movement towards
the adoption of a longer term for intellectual
property."
The legislative history shows that the original
50-year term of protection in the current statute was
drafted to mirror the term of protection provided in
federal copyright law. The likeness appropriation law
corollary to copyright law was made at the behest of
the movie studios, among others. Through the federal
Copyright Term Extension Act (CTEA), the 50-year
standard has now been increased to cover a 70-year
term. This change in the law at the federal level was
strongly supported by the studios as well as SAG.
c) Would SB 209 encourage forum shopping?
SB 209 would state that "pursuant to the jurisdiction
provided under
Code of Civil Procedure 410.10, a plaintiff has
standing to bring an action pursuant to this section
if any of the acts giving rise to the action occurred
in this state, whether or not the decedent was a
domiciliary of this state at the time of death." CCP
410.10 provides "A court of this state may exercise
jurisdiction on any basis not inconsistent with the
Constitution of this state or of the United States."
The Motion Picture Association of America typifies
opposition to this provision of the bill saying,
"Basing the choice of law on the decedent's domicile
favors predictability and judicial efficiency. If
forum states apply their own laws it will be
impossible to predict what law will be applied, as
there will be no way of knowing where a suit may be
brought?The proposed revision will certainly lead to
wholesale forum shopping with the results of clogging
even further California's already overcrowded courts."
Time Warner adds their concern that, "SB 209 would
allow all heirs to sue in California under California
Law irrespective of whether the deceased celebrity had
any connection whatsoever with California."
The author asserts that this clarification of law is
necessary in light of a recent decision, Lord Simone
Cairnes v. Franklin Mint. "Heirs who are not residents
of California may be denied recovery based upon lack
of domicile regardless of the number and quality of
events which occur in our state--events which would
otherwise give rise to appropriation of likeness
claims. The governmental interest test embodied in
our current long-arm jurisdiction statute provides for
sufficient notice to potential plaintiffs while
protecting the interests of Californians," he states.
6. Other proposed changes: Bring appropriation of
likeness sections together and post registry upon the
World Wide Web
In addition to the changes detailed above, this bill
would make two other changes to the law. First, the bill
would move the contents of Civil Code section 990, which
contains the prohibition against commercial appropriation
of likeness of deceased personalities, to Civil Code
section 3344, which contains the prohibition against
commercial appropriation of likeness of living persons.
It is not the author's intention to change the nature of
the right protected under section 990 from a property
right to a personal right in moving this language to
Civil Code 3344.1, he states, "(H)owever, there must be
a recognition that the use of image protection contained
in 990 is a hybrid growing out of the right of privacy
contained in Civil Code 3344." The author asserts that
this move is, therefore, "common sense" bringing the two
appropriation of likeness sections of the code together.
This section of the bill has drawn no opposition.
Second, the bill would require the Secretary of State to
file the section 990 registry of heirs upon the World
Wide Web. The author believes that this will facilitate
legitimate use of deceased personality images, by
lessening the burden upon those seeking to obtain a use
license. The Secretary of State's office was in the
process of creating the Internet database prior to
introduction of this legislation, and agreed to expedite
the process voluntarily in response to SB 209. This
section of the bill has drawn no opposition.
Support: California State Labor Federation, AFL-CIO;
Consumer Federation of California; SEIU; Charlton
Heston; Jack Lemmon; Charles E. (Chuck) Yeager;
Muhammad Ali; Bob and Dolores Hope; Michael
Douglas; Lucy Arnez; Princess Yasmin Aga Khan;
James Taylor; Harry Belafonte; Phyllis Diller;
Fred Savage; Park Overall; Janet Leigh; Peter
Coyote; Esther Williams Bell; Edward Bell;
Michael Deluise; Efrem Zimbalist, Jr.; Stanley
Donen; Eva Marie Saint; Ann-Margret; Mellssa Joan
Hart; Susan Blakely; Steven Hill; K Callen;
Marsha Mason; Barbara Bosson; Kevin Kilner;
Jordan Baker-Kilner; Rob Morrow; Gloria Allred;
Edward Asner; Melissa Gilbert; Lisa Hartman
Black; Steve Allen; Jane Meadows; Angela
Lansbury; Bruce Boxleitner; Veronica Hamel; Tracy
Marrow, p/k/a Ice T; Barbara Bain; Ron Shelton;
Patrick Stewart; Alexandra Elizebeth Belcarra
Paul; Lainie Kazan; Bruce McGill; Helen Hunt;
Hank Azaria; Madeline Kahn; Hal Holbrook; Pamela
Reed; Pat Harrington; Jane Alexander; Patricia
Richardson; Rod Steiger; Sandra Bullock; Clint
Black; Stacy Keach; A Minor Consideration; Sally
Field; Patrick Macnee; Laura Dern; Tom Cruise;
Sara Karloff
Opposition: Motion Picture Association of America; Walt
Disney Co.; Universal Studios; Twentieth Century
Fox, Co.; Metro-Goldwyn-Mayer Studios, Inc.;
Columbia Pictures; ABC; NBC; HBO; Alliance of
Motion Picture and Television Producers; Spelling
Entertainment Group, Inc.; Time Warner; Roll
International Corp.; Association of American
Publishers, Inc.; California Newspaper Publishers
Association; Recording Industry of America;
California Broadcasters; American Civil Liberties
Union; American Film Marketing Association;
Independent Producers Association; David
Horowitz, The Media Coalition; WB Television
Network; Magazines Publishers of Amrica, Inc.
HISTORY
Source: Mrs. Fred Astaire and Screen Actors Guild
Related Pending Legislation: None Known
Prior Legislation: None Known