Showing posts with label free speech. Show all posts
Showing posts with label free speech. Show all posts

Monday, February 17, 2014

Martinson Coffee's Advertising Campaign Risks Elvis Presley Estate Lawsuit

I recently came across a billboard on the side of a telephone booth (yes, those still exist) in New York City, and stopped dead in my tracks to snap a photograph of it.

The primary reason that the advertisement caught my attention was that about three years ago, I had considered approving a similar advertising campaign.  We considered utilizing a stock photograph of a cheesy Elvis Presley impersonator along with the tagline: "Not All Imitation Is Flattery."

Now, there is an ongoing debate in legal circles about whether such commercial use of a famous persona should be protected as free speech and constitute a form of parody or fair use, or whether such use could conceivably be an infringement of the late Elvis Presley's right of publicity and trade dress and trademark rights.

Absent such a finding of free speech or fair use, the unauthorized commercial use of a famous person's likeness can constitute an infringement of their right to publicity.  This right can be protected under state law, even long after their death, unless that right has lapsed, or the person's identity is in the public domain.

Last year, we reported on the legal developments involving Albert Einstein's likeness and how use of it embroiled General Motors in protracted litigation.

There has been much written in the academic literature about the fuzzy boundaries between unlawful imitation and flattery. For example, Touro Law Review published an article in 2012 about this subject.

Aware of how aggressive Elvis Presley Enterprises (EPE) has been in the past in protecting Presley's image and likeness, we had contacted EPE to discuss whether we could obtain a license. This standard "clearance" procedure is a prudent measure, regardless of whether a fair use/parody defense exists.

I was informed by EPE's representative that the Estate would not offer a license for Elvis' likeness to be used in this manner. (It is possible that the unflattering impersonator we were considering using may have played a role).

Regardless of the legal merits of EPE's position, out of respect for "the King's" intellectual property rights and to avoid the risk of litigation, we never approved or ran the advertisement.

Now, it would appear that Martinson Coffee had a similar idea, and decided to run the advertisement.

According to a press release issued by Martinson in October 2013, it is using a media blitz campaign, including with roving trucks emblazoned with the billboards. "The Martinson® Coffee trucks will appear in over two dozen locations during the campaign. The social media launch will run in conjunction with a city-wide advertising campaign. The ads, featured on New York commuter rail stations, subway stations and the like, will focus on proving why Martinson is the Real Joe."

I contacted Martinson Coffee's public relations department by e-mail, to ask if they had sought or received a license from EPE. This is what they said:

"We currently buy our images from a stock image company.  They provide all the licenses for all the images they own.

We don’t do anything on our end.  They vet those issues out prior."

In other words, the advertising agency utilized "stock photography" and assumed that the stock photography company had acquired and provided all relevant licenses.

But this assumption is usually factually and legally incorrect.

For example, iStockPhoto, Getty Images, ShutterStock and other "stock image" galleries offer a variety of "Elvis Impersonator" photographs.

However, the licenses offered for such stock photographs is typically "for editorial use only."  Their Terms of Use specifically state that "Files for Editorial Use Only cannot be used for any commercial purposes. These files may contain identifiable brands, locations or people without the proper legal releases needed for commercial use.  They may be used in blogs, magazine and newspaper editorial applications, or other non-commercial uses." Shutterstock explains the distinction on its website.

Therefore, assuming for argument's sake that Martinson acquired its Elvis impersonator image from such a third party stock image company, its commercial use would clearly fall outside the scope of the editorial use only license.

Consequently, Martinson could not avail itself of the license defense, and could not drag the third party stock image company into the case to indemnify (defend) it.

Further, whatever "releases" the stock image company acquired for use of the image would only involve the model depicted in the photograph -- not the Elvis Presley Estate, who has the legal right and obligation to protect the King's likeness.

Commentators have noted that EPE is strategic about its litigation targets. It is yet to be seen if Martinson Coffee incurs its wrath, as there is no word yet on whether a lawsuit has been filed. 

Stay tuned.

Thursday, February 13, 2014

Federal Appeals Court Prohibits "Pro-Life" License Plates

Most states offer specialty automobile license plates that reflect a variety of special interests and political viewpoints. The state typically charges a nominal sum for a specialty plate, and may contribute a percentage of the proceeds to a non-profit organization dedicated to that particular cause.

For example, Virginia offers a license plate that says:  "Friends of Tibet." According to the Department of Motor Vehicles, as a revenue-sharing plate, after the sale of the first 1,000 qualifying plates, $15 of the $25 fee is transferred to the Conservancy for Tibetan Art and Culture to support its programs in Virginia.  Virginia also offers a "Friends of Coal" plate, with funds going to the Virginia Department of Mines, Minerals and Energy to support its programs.

Other states offer plates with a wide variety of viewpoints and diverse causes represented. Florida offers a John Lennon "IMAGINE" logo license plate, supporting efforts to reduce hunger. Others range from anti-terrorism and anti-drug messages to those supporting the National Rifle Association, pro-environmental conservation efforts and many others.

However, the American Civil Liberties Union filed a federal lawsuit against the State of North Carolina, which had approved a license plate in 2011 depicting children on it, along with the phrase "CHOOSE LIFE." Each plate would cost $25, with $15 of that going to the Carolina Pregnancy Care Fellowship, an association of nonprofit pregnancy counseling centers.

The North Carolina legislature considered, but rejected, license plates that would have said "TRUST WOMEN" and "RESPECT CHOICE."

The ACLU's argument was that, by choosing a "pro-life" viewpoint without offering equal time to an "opposing" viewpoint, the government ran afoul of the First Amendment.

And yesterday, the United States Court of Appeals for the Fourth Circuit agreed with the ACLU. North Carolina has been banned from manufacturing the plates.

Sunday, February 9, 2014

Is "Dumb Starbucks" Free Speech or Just a Dumb Ploy Inviting a Lawsuit?

A new coffee shop has opened in Los Feliz, Los Angeles, titling itself "Dumb Starbucks."  The mock coffee shop utilizes a virtually identical logo to Starbucks' logo on all its products and signage, but places the word "Dumb" before everything.

According to news reports, the owners are claiming that their coffee shop is some kind of "pop art" installation intended to mock the massive Starbucks corporation.  They apparently claim that they are shielded from liability for trademark infringement or dilution by the First Amendment, and that their lawyers are fully in control of the situation.

Notably, the news reports also claim that their coffee is not for sale, but is handed out free of charge, which would tend be garner some sympathy for the argument that the whole excursion is a non-commercial artistic endeavor. However, the "FAQ" disclosed by the owners seems to suggest that the coffee is very much for sale.  It states, in relevant part:

"Although we are a fully functioning coffee shop, for legal reasons Dumb Starbucks needs to be categorized as a work of parody art. So, in the eyes of the law, our "coffee shop" is actually an art gallery and the "coffee" you're buying is actually the art. But that's for our lawyers to worry about. All you need to do is enjoy our delicious coffee!"

But what does that matter?  Under the federal Lanham Act, there is a requirement that the unauthorized use be "in commerce" to be considered an infringement. The Federal Trademark Dilution Act does not expressly contain such a commercial use requirement, but it would certainly be relevant to a court's consideration if the whole stunt has no commercial element.

Rather, here, it would appear the entire endeavor is a publicity stunt essentially inviting the Starbucks' chain to file a lawsuit. Even if Starbucks won, it might lose in the court of public opinion, for looking like it has no sense of humor. So the owners may be taking an expensive gamble.

That being said, Starbucks Corporation is inevitably going to be forced to sue this particular coffee shop, and the odds are that it will likely prevail in shutting it down in very short order. Perhaps that is the reason that news reports that there is a several hour wait to enter the shop.

Sunday, November 24, 2013

Toy Company Sues Beastie Boys, Claiming Parody Protects Its Viral Ad

Screenshot from GoldieBlox's website
A progressively-themed company that makes and sells toys that will supposedly help young girls overcome gender stereotypes has become embroiled in a high-profile copyright litigation with the Beastie Boys.  Toy company GoldieBlox says on its website: 

"In a world where men largely outnumber women in science, technology, engineering and math...and girls lose interest in these subjects as early as age 8, GoldieBlox is determined to change the equation.  Construction toys develop an early interest in these subjects, but for over a hundred years, they've been considered "boys' toys".  By designing a construction toy from the female perspective, we aim to disrupt the pink aisle and inspire the future generation of female engineers."

In its recent viral video commercial touting the ingenuity of young girls who build an elaborate contraption that can change the television channel, GoldieBlox intentionally utilized the music and parodied the lyrics from the Beastie Boys' song Girls.

The Beastie Boys were apparently not pleased with GoldieBlox's unauthorized use and sent a cease and desist letter, alleging copyright infringement and demanding that GoldieBlox end its campaign.

Rather than complying with the demands, GoldieBlox countered by filing a Declaratory Judgment Complaint against the Beastie Boys in Los Angeles federal district court, asserting that its usage was parody and fully protected by the First Amendment.

Given the Beastie Boys' recent unhappy experience with copyright litigation, one suspects that GoldieBlox's executives were well aware that this dispute would erupt, and intentionally developed a strategy inducing litigation to fuel its viral campaign to garner "free" publicity.  Whether the gambit works or not is yet to be seen.

Legally, the controlling analysis here is the Supreme Court's decision in 1994 in Campbell v. Acuff-Rose Music, Inc., interpreting the "fair use" defense to musical parodies used in a commercial context.

In that case, the members of the rap music group 2 Live Crew had created a parody of Roy Orbison's iconic "Pretty Woman," called "Big Hairy Woman."  Roy Orbison's estate sued the rap group, alleging that the group's use was not fair or protected free speech, but was an unprotected commercial use.

After years of litigation, the Supreme Court ultimately held that 2 Live Crew's commercial parody may very well be a fair use within the meaning of § 107 of the U.S. Copyright Act, which states:

"In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work."

On appeal, the Supreme Court found the aforementioned four factors must each be applied to every situation on a case by case basis, and that the fact that the parody was used in a commercial context alone was not dispositive.

When looking at the purpose and character of 2 Live Crew's use, the Supreme Court found that the more transformative the new work, the less will be the significance of the other three factors.  The court found that, in any event, a work's commercial nature is only one element of the first factor enquiry into its purpose and character.

Justice Souter, writing for the majority of the Court, then moved onto the second § 107 factor, "the nature of the copyrighted work", finding it has little merit in resolving this and other parody cases, since the artistic value of parodies is often found in their ability to invariably copy popular works of the past.

The Court found the third factor integral to the analysis, finding that the Ninth Sixth Circuit Court of Appeals had erred in holding that, as a matter of law, 2 Live Crew copied "excessively" from the Orbison original.

Justice Souter reasoned that the "amount and substantiality" of the portion used by 2 Live Crew was reasonable in relation to the band's purpose in creating a parody of "Pretty Woman".

The majority reasoned "even if 2 Live Crew's copying of the original's first line of lyrics and characteristic opening bass riff may be said to go to the original's 'heart,' that heart is what most readily conjures up the song for parody, and it is the heart at which parody takes aim." 

The Supreme Court then looked to the new work as a whole, finding that 2 Live Crew thereafter departed markedly from the Orbison lyrics, producing otherwise distinctive music.

Looking at the final factor, the Supreme Court found that the Court of Appeals erred in finding a presumption or inference of market harm.

Parodies in general, the Court said, will rarely substitute for the original work, since the two works serve different market functions.

While Acuff-Rose found evidence of a potential "derivative" rap market in the very fact that 2 Live Crew recorded a rap parody of "Oh, Pretty Woman" and another rap group sought a license to record a rap derivative, the Supreme Court found no evidence that a potential rap market was harmed in any way by 2 Live Crew's parodic rap version.

In fact, the Supreme Court found that it was unlikely that any artist would find parody a lucrative derivative market, noting that artists "ask for criticism, but only want praise."

Applying this same analysis in the newly-filed Beastie Boys case, the courts will need to evaluate each of these same factors to determine if Goldiblox's usage was appropriate or improper.

In the meantime, the GoldieBlox commercial has gone viral, and received nearly 8 million views.