The right of free speech under the First Amendment affords protection for those who use a person’s name, likeness, or identity for expressive purposes, such as in news, biographical works, or even works of fiction or entertainment. On the other hand, tort law, and in some places, statutes, protect a person from those who would use his or her name, likeness or identity for commercial purposes without consent. Commonly referred to as the tort of misappropriation of identity—or in cases where a celebrity’s identify is used, infringement of the right-of-publicity—courts have struggled with where to draw the line between a protected First Amendment use and an improper commercial use.
Over a decade ago, the Missouri Supreme Court sought to accommodate these competing principles, adopting a rule which it called the “Predominant Use Test,” seemingly allowing a right-of-publicity claim if a work that is purely expressive is published “primarily for financial gain.” Doe v. TCI Cablevision, 110 S.W.3d 363, 374 (Mo. 2003) (commonly referred to as the Tony Twist case). Given the Supreme Court’s broad ruling, and the fact that most expressive works are created in hopes of reaping financial gain, one wonders why Missouri has not become a hotbed for litigation by celebrities who claim their name, likeness, or persona has been used in a movie, television show, or other expressive work of entertainment without their consent. One reason might be that the opinion has been widely discredited and likely limited to its unique facts.
The Tony Twist Case
In Doe, comic book creator Todd McFarlane used the name of a professional hockey player, Tony Twist, for an evil character in McFarlane’s “Spawn” comic book. Twist sued McFarlane, claiming libel and infringement of his right of publicity. The trial court dismissed the libel claim because no reasonable reader would assume the comic book was conveying actual facts about the hockey player. But the trial court allowed the right-of-publicity claim to proceed to verdict, despite McFarlane’s claim that the comic was pure expression and thus protected under the First Amendment. After a $24 million jury verdict for the hockey player, the trial court entered judgment overturning the verdict and dismissed the claim, holding that the hockey player had failed to prove the elements of a right-of-publicity claim.
On appeal, the Missouri Court of Appeals for the Eastern District affirmed the dismissal of the right-of-publicity claim, on First Amendment grounds, stating:
To extend the right of publicity to allow a celebrity to control the use of his or her identity in a work of fiction would grant them power to suppress ideas associated with that identity, placing off-limits a useful and expressive tool. This, in turn, would effectively revoke the poetic license of those engaged in the creative process. To proscribe their right to use certain names, words, thoughts and ideas would ultimately apply to the rest of us, impeding our ability to express ourselves. (Doe v. TCI Cablevision, No. ED 78785, 2002 WL 1610972 at *12 (Mo. App. E.D. July 23, 2002), rev’d, 110 S.W. 3d 363 (Mo. 2003)).
Twist then took his case to the Missouri Supreme Court, which reinstated the claim. Although recognizing that claims for infringement of the right of publicity must be balanced against First Amendment interests in free expression, the Court rejected McFarlane’s First Amendment defense, based on evidence the Court said demonstrated that the hockey player’s name was used principally for monetary reasons and to cross-market McFarlane's comic book and hockey-related products. The Court said, “[o]n the record here, the use and identity of Twist’s name has become predominantly a ploy to sell comic books and related products rather than an artistic or literary expression, and under these circumstances, free speech must give way to the right of publicity” (Doe, 110 S.W.3d at 374). The Court adopted a test that has become known as the “Predominant Use Test” and remanded the case for retrial so that a jury could determine whether McFarlane used Twist's name “intend[ing] to obtain a commercial advantage” thereby; something the jury had not been asked to do in the original trial.
The Predominate Use Text
As stated by the Missouri Supreme Court, the Predominant Use Test is as follows:
If a product is being sold that predominantly exploits the commercial value of an individual’s identity, that product should be held to violate the right of publicity and not be protected by the First Amendment, even if there is some “expressive” content in it that might qualify as “speech” in other circumstances. If, on the other hand, the predominant purpose of the product is to make an expressive comment on or about a celebrity, the expressive values could be given greater weight. (Doe, 110 S.W.3d at 374)
In applying this test to the comic book, the Supreme Court obviously considered the comic book a “product,” even though a comic book has no utility independent of expression, just like movies, television shows, books, plays, and artwork. And, of course, virtually all expressive works of entertainment are created with the goal of making money, often as its primary purpose. Jerry Seinfeld and Larry David created “Seinfeld” and portrayed a fictional George Steinbrenner hoping to entertain their audience and derive profits; John Lennon and Elvis Presley were depicted in the movie Forrest Gump, and its producers certainly made the movie hoping to reap financial rewards. Artist Gottfried Helnwein, in creating his famous Boulevard of Broken Dreams variation of the Edward Hopper painting Nighthawks, featuring Marilyn Monroe, Humphrey Bogart, James Dean, and Elvis Presley in place of Hopper's anonymous characters sitting in a diner, certainly intended to make money selling it. The same is likely true when Stephen Colbert was depicted in a Spiderman comic. Similar instances abound. Couldn’t the Predominant Use Test be used by any of these famous persons (or their heirs given that many courts have found publicity claims to be survivable) as grounds to sue in Missouri? Why haven’t celebrities flocked to Missouri to bring such suits?
The Right of Publicity
The tort of infringement of the right of publicity (or misappropriation of identity) bars “appropriat[ion of] the commercial value of a person’s identity by using without consent the person’s name, likeness, or other indicia of identity for purposes of trade.” Restatement (Third) of Unfair Competition §46. As defined in Doe, the elements of a right-of-publicity action are, “(1) That defendant used plaintiff’s name as a symbol of his identity (2) without consent (3) and with the intent to obtain a commercial advantage” (110 S.W.3d at 369).
Clearly, use of a person’s identity in an advertisement without consent is a usage for commercial purposes and generally actionable at law. On the other hand, most courts have held that use of a person's identity in works that are purely expressive is either not subject to a right-of-publicity claim at all or is protected under the First Amendment. See, e.g., Matthews v. Wozencraft, 15 F.3d 432, 439 (5th Cir. 1994) (“Courts long ago recognized that a celebrity’s right of publicity does not preclude others from incorporating a person’s name, features or biography in a literary work, motion picture, news or entertainment story.”); Winter v. DC Comics, 69 P.3d 473 (Cal. 2003) (the use of look-alike comic figures “Johnny and Edgar Autumn” in a comic book did not infringe on the rights of rock artists Johnny and Edgar Winter); Polydoros v. Twentieth Century Fox Film Corp., 79 Cal. Rptr. 2d 207 (Cal. Ct. App. 1997) (use of the plaintiff’s name and persona in the movie “The Sandlot” not actionable).
A grey area in which courts have struggled to find an appropriate test, however, lies when the use of someone’s identity either is in a product that has use beyond expression or is really just a disguised inducement for a consumer to buy a product. Courts have applied differing tests for determining whether First Amendment protection should exist in such cases.
In a case holding a seller liable for selling t-shirts bearing images of The Three Stooges, the California Supreme Court applied what it called the “Transformative Use Test” (Comedy III Prod., Inc. v. Gary Sverdrup, Inc., 106 Cal.Rptr.2d 126 (2001)). Under that test, a court employs “a balancing test between the First Amendment and the right of publicity based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation.” If “a product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness,” it is deemed protected. The problem with this test, of course, lies in the uncertainties surrounding whether expression is transformative or transformative enough.
Other courts have applied what could be characterized as the “Merchandise Test.” Under this test, the appropriation of likeness in merchandise, like a poster or a t-shirt, is actionable even though its only purpose or predominant purpose is expression, as was found in Brockum v. Blalock, 725 F.Supp. 438, 444-46 (E.D. Pa. 1990), where the court held that the sale of t-shirts bearing the plaintiff’s likeness was not protected. Here, the problem is in defining what constitutes “merchandise.” Is a book “merchandise?" What about a movie? Moreover, merchandise can at times be primarily expressive. For example, should a claim lie if Black Lives Matter advocates sell t-shirts or hats bearing Michael Brown’s image in support of the cause?
The Restatement (Third) of Unfair Competition §47, cmt. c, suggests a “Relatedness Test.” If the use of the name or likeness is not a commercial advertisement, then the focus should be on whether the use is “related” to the person depicted, and if so, such use is protected. On the other hand, “[i]f the name or likeness is used solely to attract attention to a work that is not related to the identified person, the user may be subject to liability for use of the other’s identity in advertising….”
Each of these tests was rejected by the Doe court, in favor of the Predominant Use Test, because the court claimed that those tests “operate to preclude a cause of action whenever the use of the name is in any way expressive, regardless of exploitation” (110 S.W.3d at 374).
Rejection of the Predominant Use Test
The Doe decision seems at odds with most other court rulings. See, e.g., Matthews, 15 F.3d at 439; Winter, 69 P.3d 473; Polydoros, 79 Cal. Rptr. 2d 207. And, it has been questioned by legal scholars. See, e.g., J. Thomas McCarthy, The Rights Of Publicity And Privacy 2d § 8.82 (2014) (“In the author’s opinion, the decision . . . is wrong. … The right of publicity should have no place in the analysis when the accused work is this kind of expressive, artistic use of a person’s name.”). Courts elsewhere have rejected the test. See, e.g., Hart v. Elec. Arts, Inc., 717 F.3d 141, 154 (3rd Cir. 2013) (“The Predominant Use Test is antithetical to our First Amendment precedent, and we likewise reject the Test.”) (citation omitted).
Moreover, it seems likely that courts in Missouri will apply the ruling narrowly. Indeed, although the Eighth Circuit Federal Court of Appeals in St. Louis followed Doe’s holding with respect to Missouri common law elements of a publicity claim, it rejected its First Amendment analysis. In C.B.C. Distr. & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F. 3d 818, 823 (8th Cir. 2007), the court held the use of major league baseball player names in a fantasy baseball program constituted an infringement of the players' right of publicity as recognized in Missouri, but that any right of publicity was outweighed by the First Amendment right to use the players' names in order to disseminate factual information about the playerss professional performance.
Even the Missouri Supreme Court seemed to recognize that the Predominant Use Test should only apply to “products” that exploit a person’s identity. Doe, 110 S.W.3d at 374. Thus, arguably, the Court misapplied its own test to the thing at issue, a comic book with no use independent of expression, i.e. pure expression. Though not commonly viewed as great literature, comic books “are as much entitled to the protection of free speech as the best of literature.” Winters v. New York, 333 U.S. 507, 510 (1948). Moreover, though considered “products” in the retail sense, comic books are not “products” in the sense that they have any use beyond expression. You can’t wear them; you can’t drink from them.
Even assuming the Predominant Use Test should apply to a comic book, or other purely expressive work, however, the language of the opinion strongly suggests that the test should apply only to situations in which the celebrity’s identity in the work is used for more than just expression, but principally (predominantly) for the purpose of using the expressive work to cross-market products or services offered for sale or as a disguised advertisement for them. In this regard, the Doe Court expressly noted that evidence showed the comic book creator distributed products featuring the Twist character and that the use of the name was “predominantly a ploy to sell comic books and related products….” (Doe, 110 S.W.3d at 374 (emphasis added)).
Another court, without acknowledging the Predominant Use Test, came somewhat close to saying—or at least doing—the same thing. In Facenda v. N.F.L. Films, Inc., 542 F.3d 1007 (3rd Cir. 2008), a court rejected a First Amendment defense and held that an NFL-produced documentary entitled “The Making of Madden NFL 06,” which used sound clips of a recognizable football commentator, was not protected by the First Amendment because it was in reality an infomercial to promote the video game in which the NFL had financial rights and, as such, commercial speech. Id. at 1017, 1025. Although the First Amendment was raised as a defense to the commentator’s Lanham Act (trademark) claims, and not state law right of publicity claims, the court noted in a footnote that “analogous” First Amendment principles would apply “in the right-of-publicity context.” (Id. at 1032 n. 11). Interestingly, a later decision of the same court, rejected the Predominant Use Test, holding that Facenda was resolved because the documentary was really an advertisement and thus commercial speech, and not artistic expression. (Hart v. Elec. Arts, Inc., 717 F.3d at 154). While that may be true, there is no escaping the fact that in Facenda, whether characterized as a documentary or infomercial, the expression involved artistic components, and the court balanced the artistic with the commercial to determine that the purpose was principally commercial.
Potential Application of Doe's Predominant Use Test
The Predominant Use Test, though criticized by some courts and commentators, may have some validity in limited situations, but it is never justified if applied to a work of pure expression. When the name, likeness, or identity of a celebrity is used in an expressive work that has no utility independent of expression–e.g., a movie, a television show, a fictional novel, or even a comic book–the case for First Amendment protection is the strongest. In such a case, there should be no inclination to apply the Predominant Use Test. Because of First Amendment considerations, virtually every court has held that a celebrity cannot use a right of publicity claim to prevent or seek compensation for the use of the celebrity’s name or identity in biographies, movies or even fictional accounts. (Of course, defamation or false light invasion of privacy might apply if the depiction is false and reasonably inferred as factual.).
On the opposite end of the spectrum are cases of classic advertisement where a celebrity’s name or image is used without consent to promote the sale of merchandise or services. In such instances, there is little need to apply any test. First Amendment considerations have much less impact on such commercial expression. If the common law elements of a right of publicity claim are met, and no common law defense is applicable, that usually should be enough.
But when a celebrity’s persona is used in something that is not pure expression, in other words, has utility independent of expression, such as on a t-shirt, hat or coffee mug, Doe’s Predominant Use Test could be combined with the Merchandise Test discussed above and given vitality. Similarly, where expression has as its primary purpose advertising or cross-marketing a product—or, in other words, “is simply a disguised commercial advertisement for the sale of goods or services” (Matthews, 15 F.3d at 440) as in Facenda, then the Predominant Use Test could be used to determine whether First Amendment protection should apply. In such cases, the focus should be on the intent of the user in using the celebrity’s name or likeness, and whether the use of identity is mainly to express an idea about the celebrity (e.g. sale of hats saying “Dump Trump”) or some other issue about which the celebrity’s identity is relevant. But if the use is a thinly-veiled attempt to make money by using someone’s identity to sell or advertise merchandise, perhaps the test is appropriate. Perhaps this is all the Missouri Supreme Court intended when it said, “the use and identity of Twist’s name [in the comic book was] predominantly a ploy to sell comic books and related products rather than an artistic or literary expression.” (Doe, 110 S.W.3d at 374).