A Critical Examination of the California Supreme Court's Decision in Comedy III Productions, Inc. v. Saderup
by Stephen R. Barnett
(previously published in the Los Angeles Daily Journal)
The California Supreme Court's decision in Comedy III Productions Inc. v. Gary Saderup Inc., 2001 DJDAR 4162, the Three Stooges case, aptly has been called a great victory for celebrities, especially dead ones. The court's opinion extends the "right of publicity" so far, however, that the victory could boomerang, poking the eye of this rambunctious tort. Comedy III owns the rights to the deceased Stooges. The company brought suit on their statutory right of publicity for "deceased personalities" (former Civil Code Section 990, now Civil Code Section 3344.1) against Gary Saderup, an artist specializing in charcoal drawings of celebrities. Saderup drew the Stooges and sold lithographs and T-shirts bearing reproductions of his drawing.
The Superior Court and the Court of Appeal both ruled for Comedy III. In the
state Supreme Court, Saderup contended that his conduct did not violate the
statute and, in any event, was protected by the First Amendment. In a unanimous opinion by Justice Stanley Mosk, the court quickly rejected Saderup's statutory argument. It then formulated a "balancing test" between the First Amendment and the right of publicity, based on whether the defendant's work "adds significant creative elements" to the celebrity's likeness. Applying this test to Saderup's work, the court could discern no such elements. Therefore, it affirmed the judgment against him.
Since, as Mosk put it, "surprisingly few courts" have tried to reconcile the right of publicity and the First Amendment, the California court's full-dress effort will get plenty of attention. Unfortunately, while ambitious and creative, the court's approach is largely misconceived. The best part is the court's discussion of how "[c]elebrities take on public meaning," so that "appropriation of their likenesses may have important uses in uninhibited debate on public issues, particularly debates about culture and values." Hence, the right of publicity may not be used to "control the celebrity's image by censoring disagreeable portrayals," the court said. The opinion thus offers broad immunity for caricature, parody and satire, declaring an open season on celebrity images.
The opinion's most conspicuous problems involve turning judges into art
critics. To shape a First Amendment defense, the court borrowed from the "fair use" doctrine of copyright law, focusing almost entirely on one element: whether the defendant's work is "transformative." This test favors "works of parody or other distortions of the celebrity image," as against "conventional, more or less fungible, images" that the celebrity may still "monopolize," the court said.
Where the defendant's work, like Saderup's, is a straight-out picture - a "literal depiction of the celebrity" - the "transformative" test leads the court to various vague formulations, such as whether the work is "primarily the defendant's own expression rather than the celebrity's likeness," or "whether the literal and imitative or the creative elements predominate," or whether the celebrity depiction is "the very sum and substance" of the work. Applying these formulas to Saderup's work, the court judged that "[h]is undeniable skill is manifestly subordinated to the overall goal of creating literal, conventional depictions of the Three Stooges so as to exploit their fame."
The court was not holding, however, that "all reproductions of celebrity photographs are unprotected." It offered its blessing to Andy Warhol's silk-screen prints of Marilyn Monroe, Elizabeth Taylor and Elvis Presley. The court did not cite Oliver Wendell Holmes' famous warning that "[i]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations" - with the result of denying legal protection to "pictures which appealed to a public less educated than the judge." Bleistein v. Donaldson Lithographic Co., 188 U.S. 239 (1903). (Admitting that its distinction "will sometimes be subtle," the court did cite, of all things, the Supreme Court's test for obscenity. Miller v. California, 413 U.S. 15, 24 (1973).)
In fact, the problem doesn't lie so much with the court's "transformative" test as with the work to which it was applied, a simple picture of the celebrities. In the opinion's deepest flaw, the court quietly rubbed out what has been an essential part of the right of publicity: use for a "commercial purpose." See Restatement 3d of Unfair Competition, Sections 46, 47 ("purposes of trade"); J.T. McCarthy, "Rights of Publicity and Privacy" (2d ed.), Section 3.1 ("commercial use").
The court did this first by dealing with the statute. Former Civil Code Section 990 makes liable anyone who, without consent, uses a dead celebrity's name or likeness "on or in products, merchandise or goods." Does a lithograph constitute a use of the reproduced image "on a product"? The court said yes, with some fancy verbal footwork: "Saderup's lithographic prints of The Three Stooges are themselves tangible personal property, consisting of paper and ink, made as products to be sold and displayed on walls like similar graphic art."
But if all graphic art is the relevant "product," then any reproduced likeness of the celebrity is prima facie infringing, and must scrounge for a statutory or First Amendment defense. The court indeed embraced the trial court's statement that "the product consists of the likeness." On this foundation, the court went on to assume that use of the likeness does not have to be "commercial." The present case "does not concern commercial speech," the court declared. Having it both ways, though, the opinion still speaks at times of the "commercial exploitation of the celebrity's likeness," from which it slides to Saderup's having sold his reproductions for "commercial gain."
The result is to replace the "commercial purpose" requirement with "commercial" in the sense of profit-making, a description that fits the news and entertainment media and that has not previously been enough for violation of the right of publicity. All uses of the celebrity's likeness thus are brought within the prima facie tort. And with mere depictions of the celebrity now prima facie actionable, the court was forced to its problematic line-drawing between the Warhols and the Saderups. When the defendant's work is an advertisement or a use on a product, one can ask how "transformative" is that use without necessarily having to judge the worth of pictorial illustrations. Not so when it's just a picture.
In addition, copyright law combines the "transformative" test with the "commerciality" of the use. The commerciality element forms a crucial part of the inquiry even with regard to advertising uses, let alone a nonadvertising use like Saderup's. By rubbing out the "commercial" requirement, Comedy III makes right-of-publicity defendants worse off than copyright ones. Justice Mosk's opinion never appraises the policy justifications for the right of publicity, deferring to the Legislature. One would have thought a balancing test required a look at both sides of the balance. One also might think the court's broad reading of the statute could have used some appraisal of the policies involved.
For one thing, the court never mentions the years when the Stooges died (Moe
and Larry in 1975, Curly in 1952), or the fact that other courts have allowed greater scope for permissible use after the celebrity's death. Why should celebrities' estates be able to monopolize pictures, busts and other depictions of the celebrity for 70 years after he or she has departed this mercenary realm? The policy justifications for the right of publicity often have been thought to depend on the "commercial" nature of the use. That's what may make the defendant's enrichment "unjust," and it may also be the "extra element" that saves the right of publicity from pre-emption under Section 301 of the Copyright Act.
The Comedy III court did not mention pre-emption (nor did the parties raise the issue), and it's true that one's likeness may not be copyrightable subject matter.
But the court lets the deceased Stooges collect damages for Saderup's having made a copyrighted depiction of their uncopyrighted likeness, without any "commercial" element beyond the fact that the lithographs were sold. The celebrity industry may be sorry, in the end, that the court has pushed its cause so far.
Stephen R. Barnett is the Elizabeth J. Boalt Professor of Law at UC
Berkeley's Boalt Hall School of Law.
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