Joseph I Rosenbaum December 10 2009 Rights of publicity: wake up and smell the coffee Reed Smith LLP | Tech, Data, Telecoms & Media - USA Joseph I Rosenbaum Tech, Data, Telecoms & Media In 2002 Russell Christoff was told by a stranger that he looked just like an image that the stranger had seen on a jar of coffee. A month later, when Christoff saw the jar of Taster's Choice instant coffee on a supermarket shelf – with his recognizable image on the label – he bought a jar and called his agent.Christoff, a former model, had posed for a photo shoot for Nestlé (owner of the Taster's Choice brand) in 1986 and was paid $250, with the understanding that if the company used his likeness in marketing, he would receive $2,000 in compensation. In 2003 Christoff filed suit alleging that Nestlé had violated his right of publicity. Section 3344 of the California Civil Code(1) bars the unauthorized use of a person's image for commercial purposes. The statute allows for damages, punitive damages, the award of attorneys' fees and (unlike many other state statutes protecting rights of publicity) profits attributable to the unauthorized use.Christoff discovered that Nestlé had begun using his image in 1986. It appeared that from 1997 to 2003 Nestlé had also used his image on eight different varieties of Taster's Choice brand labels in 18 different countries, including Israel, Japan, Kuwait, Mexico, South Korea and the United States. At the trial a jury concluded that Christoff should have been paid $330,000 for the use of his likeness and was entitled to damages of more than $15 million. The California right of publicity statute, as it relates to proof of a defendant's profits, states that the plaintiff must "present proof only of the gross revenue attributable to such use", (emphasis supplied) while the defendant must prove "deductible expenses".In this case, although the jury determined that only 5% of the sales of Taster's Choice over the period of 1997 to 2006 were attributable to the use of the image, a profitable product and extended use made the jury award under the facts of this particular case quite substantial. Nestlé appealed.Based on Nestlé's appeal, the appellate court reversed the jury's verdict based on the fact that Christoff had not brought his lawsuit before the statute of limitations had expired. However, on August 17 2009 the California Supreme Court ordered(2) the case back to the trial court to answer the following question: what is the correct way to calculate the statute of limitations (start date/end date) in lawsuits involving rights of publicity and product labelling?Since Christoff brought his lawsuit six years after Nestlé USA, Inc began using his image (but less than one year after he discovered it), the original trial court had instructed the jury to use a two-year statute of limitations, but to use the point at which Christoff knew, should have known or could reasonably have suspected that his image was being used on the label as the starting point for calculating when the statute of limitations would bar his lawsuit. The trial court determined that unlike offensive or defamatory remarks which would not be considered 'published' repeatedly simply because they were repeated in 100,000 copies of the same book, the single publication rule(3) does not apply to cases involving the use of someone's likeness or image.The California Court of Appeals held that the original trial court jury instruction was incorrect. In fact, it stated, the single publication rule applied and the statute of limitations would be extended only if the jury found that Nestlé had somehow hindered Christoff's discovery of the use or that each use on each label constituted a new re-publication for purposes of the law. The California Supreme Court disagreed,(4) holding that while it is true that Section 3425.3 applies by its terms to any action:"for libel or slander or invasion of privacy or any other tort founded upon any single publication or exhibition or utterance, such as any one issue of a newspaper or book or magazine or any one presentation to an audience or any one broadcast over radio or television or any one exhibition of a motion picture."The court, however, went on to state that:"It is not clear whether the production of a product label over a period of years is a 'single integrated publication' that triggers the running of the statute of limitations when the first such label is distributed to the public."The court also noted that "Christoff's image also was used without his consent in various forms of advertising, including transit ads, coupons in newspapers, magazine advertisements, and Internet advertisements", and whether these could be shown to be part of a single integrated publication was an issue of fact that was not properly discovered during the original trial.While the California Supreme Court did agree with the appeals court that the 'delayed discovery' instruction was not applicable where these labels were in open and conspicuous use in public, noting that courts have uniformly:"rejected the application of the discovery rule to libels published in books, magazines, and newspapers, pointing out that application of the discovery rule would undermine the protection provided by the single-publication rule."(5)The same logic applies to a product label such as the one in the current case that is "not published in an inherently secretive manner",(6) but is distributed widely to the public.This important decision demonstrates the significance of obtaining proper clearance for advertising. Six years after it began, the case is returning to the trial court to determine whether Nestlé's label and advertising campaign constituted an integrated single publication – effectively barring Christoff's claims because he filed it too late – or whether any or all of the ongoing labelling using his likeness constituted re-publication, and would allow his claim to have been filed and consequently proceed.For further information on this topic please contact Joseph I Rosenbaum at Reed Smith LLP by telephone (+1 212 521 5400), fax (+1 212 521 5450) or email ([email protected]).Endnotes(1) www.leginfo.ca.gov/cgi-bin/displaycode?section=civ&group=03001-04000&file=3344-3346.(2) http://appellatecases.courtinfo.ca.gov/search/case/mainCaseScreen.cfm?dist=0&doc_id=1886920&doc_no=S155242.(3) The Uniform Single Publication Act, as codified in Section 3425.3 of the Civil Code (http://codes.lp.findlaw.com/cacode/CIV/5/d4/1/4/s3425.1).(4) www.legalbytes.com/stats/pepper/orderedlist/downloads/download.php?file=http%3A//www.legalbytes.com/uploads/file/018%2520Christoff%2520v%2520Nestle%2520S155242.pdf.(5) Shively, supra, 31 Cal 4th at p 1250.(6) Hebrew Academy of San Francisco v Goldman, supra, 42 Cal 4th 883, 894 (www.archivists.org/news/CA-SupremeCourt-decision.pdf).