The right of publicity and the First Amendment in the modern age of commercial speech.

• Author: Redish, Martin H.
• Position: II. The Right of Publicity and the First Amendment Collide B. "Expressive" Speech Subjected to Balancing Tests through Conclusion, with footnotes, p. 1472-1500

2. "Expressive" Speech Subjected to Balancing Tests

   Moving down the hierarchy of protection, we confront "expressive" speech, which is subject to various balancing tests to determine its First Amendment worth relative to publicity rights. The evolution of courts' sloppy and often inconsistent tests for weighing the right of publicity and First Amendment rights can be traced back to the United States Supreme Court decision in Zacchini v. Scripps-Howard Broadcasting Co. (133) In a unique set of facts, petitioner, Hugo Zacchini, sought damages from a television station which broadcasted his human cannonball act, a fifteen second performance in which he was shot from a cannon into a net roughly two-hundred feet away. (134) The Ohio Supreme Court held that the First Amendment privileged the broadcast as a matter of public interest. (135) The United States Supreme Court, however, rejected this view:

   Wherever the line in particular situations is to be drawn between media reports that are protected and those that are not, we are quite sure that the First and Fourteenth Amendments do not immunize the media when they broadcast a performer's entire act without his consent.... The broadcast of a film of petitioner's entire act poses a substantial threat to the economic value of that performance. (136) In other words, the Court recognized that the television station, without compensating Zacchini, reproduced the entire narrative giving value to his performance--beginning, middle, and end--thereby removing it from the scope of First Amendment protection. But the Supreme Court did not clearly articulate the limitation of the public interest exception in this case, nor did the Court clearly explicate a test for measuring future conflicts between publicity rights and the First Amendment. Instead, the Court decided Zacchini narrowly on the "entire act" conception and suggested that relevant interests should be weighed, providing more confusion than clarity for lower courts. (137) After Zacchini, several analytical frameworks have taken shape across federal and state courts to perform the balancing inquiry Zacchini seemingly demanded, including (1) the Transformative Use Test, (2) the Predominant Use Test, and (3) the Rogers Test.

   1. Transformative Use Test

      The Transformative Use Test, formulated by the California Supreme Court, weighs publicity rights and First Amendment interests by asking whether the use "adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation." (138) Only a transformative use can outweigh the interests of a person asserting his publicity rights, the court noted. (139) "[W]hen a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interests protected by the right of publicity." (140) In devising the defense, the court emulated copyright law. (141) According to the court, copyright law was an apt body from which to draw because "both the First Amendment and copyright law have a common goal of encouragement of free expression and creativity, the former by protecting such expression from government interference, the latter by protecting the creative fruits of intellectual and artistic labor." (142)

      Courts subsequently applying the California Supreme Court's Transformative Use Test have relied on at least five factors in determining whether a use is sufficiently transformative to obtain First Amendment protection. (143) They have looked to whether: (1) the celebrity likeness "is the very sum and substance of the work," (2) the work is the artist's creative expression, (3) the imitative elements predominate in the work, (4) the economic value is derived primarily from the celebrity's fame, and (5) the overall goal is to exploit a celebrity's fame. (144) On this basis, they have rejected as not sufficiently transformative t-shirts bearing a likeness of The Three Stooges, (145) video game avatars closely based on real singers, (146) college football players, (147) and a birthday card that mimicked a celebrity. (148) Yet, they have deemed as transformative comic book caricatures of celebrities (149) and video game avatars only apparently loosely based on real people. (150)

      The exact relationship between this Transformative Use Test and a more general First Amendment defense is confusing, to say the least, because courts still reference the profit motivation inherent in the speech when they determine its worth. For example, when the Ninth Circuit in Hoffman v. Capital Cities/ABC, Inc. afforded full First Amendment protection, it conducted a traditional speech analysis and found that the speech at issue was "entitled to the full First Amendment protection awarded [to] noncommercial speech." (151) Although Hoffman addressed the Transformative Use Test in a footnote, it suggested that the test was inapplicable because the speaker in Hoffman was a magazine, not an artist. (152)

      When the Los Angeles Superior Court afforded full First Amendment protection to the Call of Duty video game's use of an avatar resembling Manuel Noriega, it downplayed the video game company's economic interest on its way to finding the speech protected over the publicity right at issue. (153) In this way, the transformative use analytical framework operates as yet another means for elbowing out speech that is primarily commercially motivated in the traditional sense. The test offers a means for elevating only that profit motivated speech that has been creatively altered to the court's liking. (154)

   2. Predominant Use Test

      The Predominant Use Test is less opaque about its intent to exclude protection for commercial speech. First articulated by the Missouri Supreme Court, the Predominant Use Test balances the rights at issue by distinguishing uses that predominantly exploit the commercial value of a celebrity's fame from uses that make expressive comments. (155) The court drew the language of the test from intellectual property litigator Mark Lee's law review article, in which he defended such an approach as "do[ing] justice to both the expressive and property interests" by protecting the "intellectual property that is being exploited by others" and permitting creative expression that makes meaningful comments. (156) The Missouri Supreme Court, sitting en banc, applied this test to find that the makers of a comic book used a hockey player's name predominantly in "a ploy to sell comic books and related products rather than an artistic or literary expression." (157) Under these circumstances, according to the court, "free speech must give way to the right of publicity." (158) The Missouri test constitutes an extremely problematic application of the public interest exception because its singular focus is profit motivation. If the predominant purpose of the speech is something other than conveying a judicially accepted expression, it receives no First Amendment protection.

      Perhaps that is why courts have rejected opportunities to employ the Predominant Use Test, even levying sharp criticism in its direction. (159) The Third Circuit described the test as "subjective at best, arbitrary at worst, and in either case calls upon judges to act as both impartial jurists and discerning art critics." (160) The Eastern District of Missouri managed to sidestep the test entirely in a subsequent case applying Missouri law. (161)

   3. The Rogers Test

      In contrast to the Predominant Use Test, the Rogers Test looks to the relationship between the celebrity image and the use of the celebrity's identity as a whole. (162) Also called the Relatedness Test or the Restatement Test, (163) the test's namesake case involved danceractress Ginger Rogers's suit against the producers and distributors of a film called Ginger and Fred for infringing her right of publicity and for violating the Lanham Act. (164) In Rogers v. Grimaldi, the Second Circuit dismissed Rogers's right of publicity claim because the title of the film was "clearly related to the content of the movie and [was] not a disguised advertisement for the sale of goods and services or a collateral commercial product." (165) The Sixth Circuit, in applying the Rogers Test in a subsequent decision, linked the thrust of its relatedness inquiry to the Restatement (Third) of Unfair Competition. (166) Like the Rogers Test, the Restatement frowns upon exploitative uses of celebrity identity. Under the Restatement, "use of a person's identity in news reporting, commentary, entertainment, works of fiction or nonfiction, or in advertising that is incidental to such uses" does not amount to a prohibited use, (167) but using a celebrity's identity "solely to attract attention" to something unrelated to that person can subject the user to liability. (168)

      Recent evaluations of the Rogers Test, including the Third and Ninth Circuits' evaluations, have opted not to apply it in the context of publicity rights claims because of its perceived misplaced goal: protecting the consumer from confusion, rather than protecting the celebrity. (169) Although these recent cases are trending more towards the Transformative Use Test, the lack of clarity regarding the nature in which constitutional First Amendment rights are balanced against celebrities' pecuniary interests in publicity rights remains troubling.

3. Commercial Speech as a First Amendment Defense?

   Up to this point, we have dicussed the most common First Amendment defenses for escaping liability when speakers are accused of infringing on publicity rights. (170) Yet, one defense is clearly absent from the discussion. Whether resulting from defendants' uneasiness in confronting statutory and common law animosity toward commercial speech, or resulting from their sheer ignorance of the modern version of the commercial speech doctrine, defendants are not looking to commercial speech arguments to...