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Tuesday, Oct. 31, 2000

The specter of actors trying to kill off their robot doubles may sound like the stuff of bad science fiction. But it is also the subject matter of a very serious legal case that was recently litigated in California — and that the Supreme Court, early this October, recently declined to hear.

It's a shame that the Court refused the case. Not only would it have been one of the more amusing of the term, but it also raises interesting and significant questions about both intellectual property law and the right of privacy.

The Basis of the Actors' Suit: The Right of Publicity

The case arose because actors George Wendt and John Ratzenberger — who played the characters Norm and Cliff on the television show "Cheers" — sued the corporate proprietor of a line of "Cheers" airport bars. The bar owner had installed in each bar a pair of animatronic robots — one overweight, the other dressed as a mailman — that recalled the Norm and Cliff characters.

Before creating and installing the robots, the bar owner properly licensed the copyrights to the characters from Paramount, the studio that owned them. However, the bar owner did not obtain the permission of the actors who played the characters — and the actors claimed that their permission was necessary, because they said that the robots not only resembled the characters Norm and Cliff, but also physically resembled the actors themselves.

Upset that the robots were created without their consent, the actors asserted their California-law "right of publicity" against the bar owner. The right is defined by California common law, and also by a California statute, which states that a plaintiff may seek damages for unauthorized use of his or her "name, voice, signature, photograph, or likeness, in any manner," for purposes of an advertisement or sale.

As the statute's language makes clear, non-commercial uses of a person's likeness — for example, in a news photograph — don't violate the statutory right of publicity. The idea is that the law-violator must be not only just using the plaintiff's image, but also using it for a particular purpose: to advertise or sell a product.

This aspect of the statute might suggest that the right infringed is a property right — the right to profit from the use of one's image or identity. But California state courts have also emphasized that the right of publicity is a privacy right: "[T]he protection of name and likeness from unwarranted intrusion or exploitation is the heart of the law of privacy."

In my view, whether privacy or property is really what's at issue in a given case depends largely on a plaintiff's identity. If the plaintiff is a private citizen who has never sought the limelight and who is embarrassed at having his photo put to commercial use, then privacy is what is most deeply at issue. In contrast, if the plaintiff is a celebrity who is used to selling her image, then property is what's fundamentally at issue: the right to control and profit from the sale of an image that's already been commercialized.

The strange thing about this case is that the "right of publicity" ran head on into copyright. Paramount exercised its copyright by licensing the robots. Yet the actors, as noted above, asserted their rights of publicity to stop the robots.

Who should win? In our federal system, federal law (here meaning Paramount's copyright) generally trumps conflicting state law (here being the actors' right of publicity). And so it would seem Paramount should be the victor. But surprisingly, the Ninth Circuit Court of Appeals, the California federal court that heard the case before the Supreme Court, declined it and ruled for the actors.

The court held that there was really no conflict between recognizing Paramount's federal copyright and the actors' rights of publicity. The court reasoned, in essence, that there would only be a true conflict if two different parties asserted equivalent rights. And it held, further, that copyright and the right of publicity are not equivalent, for the right of publicity has a privacy component— or, as the court put it, an element of "the invasion of personal rights" — and a copyright claim does not. Thus, the court held that both rights can co-exist, and the actors can go ahead and sue.

The problem with this analysis in my view is that (as I argued above) profit, not privacy, is what is primarily at issue for celebrity plaintiffs. So in a celebrity case like this one, using privacy to distinguish the right of publicity from copyright is specious. And Paramount's valid copyright license should mean the actors cannot sue.

Actors Versus Characters

Writing separately, in dissent, the brilliant Ninth Circuit judge Alex Kozinski also argued that federal copyright law should triumph here, and the actors should lose. But he provided a different analysis than the one I have given above, arguing that there is a conflict because "[t]he parties are fighting over the same bundle of intellectual property rights–the right to make dramatic representations of the characters Norm and Cliff."

Kozinski added confidently that "[t]o millions of viewers, Wendt and Ratzenberger are Norm and Cliff; it's impossible to exploit the latter without also evoking thoughts about the former." And he postulated, much more broadly, that "[w]hen portraying a character who was portrayed by an actor, it is impossible to recreate the character without evoking the image of the actor in the minds of viewers."

That may be true here. The fame of Wendt and Ratzenberger depends entirely on Norm and Cliff, and vice-versa. But isn't it a factual issue that differs from case to case? Consider characters played by a number of different actors. Does Bond evoke Pierce Brosnan, or only Sean Connery? Is it possible Julianne Moore will make us forget Jodie Foster as Clarice Starling in "Hannibal" — or conversely, might we always remember Foster and never Moore?

In any event, whether one accepts my rationale that there is little privacy in a celebrity case, or Judge Kozinski's' rationale that actors and characters are inextricably intertwined, federal copyright should win the day in cases like this one. It is possible that actors deserve some revenue from derivative uses of their work, whether their work is transformed into robotic doubles or simply serialized on cable. But if so, they will have to negotiate for this revenue as a matter of contract, not seek it out as a matter of law.

Julie Hilden, a FindLaw columnist, practiced First Amendment law at the D.C. law firm of Williams & Connolly from 1996-99. Currently a freelance writer, she published a memoir, The Bad Daughter, in 1998, and is working on a novel.

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