Intellectual Property
Aug. 21, 2003
Speaking Out
Writing the latest chapter in the struggle to resolve the tension between the statutory right of publicity and the constitutional right of free speech, the state Supreme Court has limited the circumstances under which its own 2-year-old "transformative" doctrine can be used to force creators of expressive works to face a jury trial in publicity-rights cases. Winter v. DC Comics , 30 Cal. 4th 881 (2003).
Douglas E. Mirell
Partner, Greenberg Glusker Fields Claman & Machtinger LLP
Email: dmirell@greenbergglusker.com
Doug's practice focuses on privacy, defamation, publicity rights, copyright, trademark and First Amendment litigation.
Writing the latest chapter in the struggle to resolve the tension between the statutory right of publicity and the constitutional right of free speech, the state Supreme Court has limited the circumstances under which its own 2-year-old "transformative" doctrine can be used to force creators of expressive works to face a jury trial in publicity-rights cases. Winter v. DC Comics, 30 Cal. 4th 881 (2003).
At issue in Winter was a five-volume comic book series set in the 1870s Old West. The third volume of the series ended with a reference to two new characters - the "Autumn brothers" - and with the teaser, "Next: The Autumns of Our Discontent."
With pale faces and long white hair, brothers "Johnny and Edgar Autumn" appeared on the cover of the fourth volume, where they were "depicted as villainous half-worm/half-human offspring born from the rape of their mother by a supernatural worm creature that had escaped from a hole in the ground."
Performing and recording artists Johnny and Edgar Winter sued DC Comics and others, alleging several causes of action, including misappropriation of their names and likenesses under Civil Code Section 3344.
That section provides, "Any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling ... without such person's prior consent ... shall be liable for any damages sustained by the person or persons injured as a result thereof."
The Winter brothers argued that "the defendants selected the names Johnny and Edgar Autumn to signal to readers the Winter brothers were being portrayed; that the brothers were drawn with long white hair and albino features similar to plaintiffs'; that the Johnny Autumn character was depicted as wearing a tall black top hat similar to the one Johnny Winter often wore; and that the title of volume 4, Autumns of Our Discontent, refers to the famous Shakespearian phrase, 'the winter of our discontent.'"
The trial court granted the defendants' motion for summary judgment on all causes of action. The Court of Appeal initially affirmed that judgment.
Although the state Supreme Court granted the Winters' petition for review, it held the case pending its decision in Comedy III Productions Inc. v. Gary Saderup Inc., 25 Cal.4th 387 (2001).
In Comedy III, the court considered whether an artist who sold unauthorized lithographs and T-shirts bearing a likeness of the comedy team known as The Three Stooges violated former Civil Code Section 990. The defendant artist had reproduced the lithographs and T-shirts from a charcoal drawing of The Three Stooges.
In concluding that the First Amendment did not protect these lithographs and T-shirts, the Comedy III court (according to Winter) "developed a test to determine whether a work merely appropriates a celebrity's economic value, and thus is not entitled to First Amendment protection, or has been transformed into a creative product that the First Amendment protects."
The Comedy III court held that, under this "transformative" test, a work that "adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation" is constitutionally protected.
Following the issuance of Comedy III, the Supreme Court remanded Winter for reconsideration. On remand, the Court of Appeal affirmed the summary adjudication of all causes of action other than the misappropriation-of-likeness claim, finding that "triable issues of fact exist whether or not the comic books are entitled to protection under the test adopted in Comedy III." The Supreme Court again granted review.
Before reaching the merits of the case, the Winter court reaffirmed the principles and rationale underlying its "transformative" test. Applying this standard to the comic books at issue, the court concluded that the works contained significant creative elements that transformed the characters into something more than mere celebrity likenesses.
The court found that application of this test to the comic books was not difficult: "We can readily ascertain that they are not just conventional depictions of plaintiffs but contain significant expressive content other than plaintiffs' mere likenesses."
Although the characters Johnny and Edgar Autumn deliberately call to mind Johnny and Edgar Winter, the comic books "do not depict plaintiffs literally. ... [T]hey are distorted for purposes of lampoon, parody, or caricature. And the Autumn brothers are but cartoon characters - half-human and half-worm - in a larger story, which is itself quite expressive."
In concluding that the comic books are transformative as a matter of law, the court rejected the plaintiffs' contention that the works were not protected because they technically were not parody.
The court reasoned that "[t]he distinction between parody and other forms of literary expression is irrelevant" to the transformative-use analysis.
"What matters is whether the work is transformative, not whether it is parody or satire or caricature or serious social commentary or any other specific form of expression," the court said.
The Winter court similarly rejected as "irrelevant" the plaintiffs' assertion that the defendants used the Autumn brothers characters in the comic books to generate interest in the series, increase sales and trade on the plaintiffs' likenesses and reputations.
In language reminiscent of Section 47 of the Restatement Third of Unfair Competition, the Supreme Court noted that "[t]he question is whether the work is transformative, not how it is marketed. ... If the challenged work is transformative, the way it is advertised cannot somehow make it nontransformative."
The state Supreme Court's opinion is particularly noteworthy for its emphasis on the early disposition of publicity-rights actions that threaten free speech.
After citing a number of decisions emphasizing the chilling effect that prolonged litigation can have on the exercise of First Amendment rights, Winter declared that courts "often" should be able to resolve cases such as this "simply by viewing the work in question and, if necessary, comparing it to an actual likeness of the person or persons portrayed. ... [A]n action presenting this issue is often properly resolved on summary judgment or, if the complaint includes the work in question, even demurrer."
According to the court, where the material facts are not in dispute, First Amendment principles command that courts resolve the issue of transformative use as a matter of law to avoid the chilling effect that protracted litigation has on First Amendment rights.
By directing courts to resolve right-of-publicity cases at the earliest possible stage of litigation and by providing guidance concerning the proper application of Comedy III's "transformative" test, Winter dramatically limits the circumstances under which this doctrine can be used to force those who create expressive works to face a jury trial in publicity-rights cases.
The unanimous Winter opinion reaffirms principles needed to protect the freedom to criticize and comment on prominent individuals who, by reason of their fame, shape events in areas of concern to society, thus encouraging the free flow of ideas and opinions on matters of public interest.
Douglas E. Mirell is a California First Amendment Coalition member and a partner at Loeb & Loeb in Los Angeles, where Joseph Geisman is an associate. They urged the state Supreme Court to grant review of Winter and wrote an amicus brief on behalf of a number of organizations. Members of the coalition write a monthly column on First Amendment issues.
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