The guys kick in the new year by first discussing Cinnabon's portrayal of Carrie Fisher as Princess Leia soon after her death, as well as other gaffes involving Prince and David Bowie. They also talk about right of publicity claims companies could be held liable for based on using someone's name or likeness for commercial gain.
NASIR: Hello and welcome to Legally Sound Smart Business.
I’m Nasir Pasha.
MATT: And I’m Matt Staub. We’re two attorneys here with Pasha Law, practicing in California, Illinois, New York, and Texas.
NASIR: Yeah, welcome to the podcast where we cover business in the news with our legal twist.
Today, we are discussing some of the do’s and don’ts of celebrity endorsements and what to be aware of when using their likeness and recent gaps in the year 2016 f these instances.
MATT: Yes. I mean, I guess, when people listen to this, it will be 2017 – unless they’ve hacked into both of our computers and pulled the audio files for whatever reason.
NASIR: Or they could be listening in 2018, too.
MATT: That’s true – if podcasts are still around.
NASIR: Only for two years.
MATT: Let’s take a long trip back to 2016 here which will be a couple of days at this point. I think, especially this past week in particular, it’s been going around how 2016 was the year of falling stars – all these high-profile celebrities have passed away in 2016. You know, recently, we have Carrie Fisher. I guess the timing of this too is pretty interesting. I can’t remember if you’re a Star Wars person or not.
NASIR: Yeah, with the new Star Wars Force Awakens?
MATT: Rogue One, yeah.
NASIR: Rogue One, yeah. I’m a huge Star Wars fan.
MATT: As you can tell.
NASIR: No, actually, I did hear it was good. Go ahead, sorry.
With all these big-time, big-named celebrities passing away, we had Carrie Fisher. The reason I mention that is that happened, she was Princess Leia in, well, I want to say the original Star Wars movies but it depends how you defined that, I suppose.
NASIR: The original episodes – 4, 5, and 6.
NASIR: And she was also in Force Awakens.
MATT: I guess you kind of allude to this but it hasn’t become an uncommon thing for a brand or a company to pay a little tribute to these fallen celebrities. Obviously, tweeting out a message or posting something on Facebook, referencing these different individuals has become pretty common.
What Cinnabon did – and it was very quick, you had to be very quick on the trigger to see this because I think they deleted it soon thereafter but we’ll link the photos so you can see – they put a photo up, it’s kind of a… how would you describe it? It’s almost like a painting.
NASIR: One of those almost sand pieces. In this case, cinnamon art pieces.
MATT: Cinnamon art pieces, yeah, drawn with cinnamon. Basically, kind of an outline of Carrie Fisher except – anyone that’s seen Star Wars – the hair buns on the side of her head, it was a Cinnabon. It looks kind of weird. When you first told me about this, it wasn’t what I was envisioning. You know, they have this and it says, “RIP Carrie Fisher. You’ll always have the best buns in the galaxy.” That was the tweet.
NASIR: It’s so tasteless. I’ve always tried to figure out if other people had opinions about this. I know maybe some people, their humor is different. It’s not that it’s not meant to be funny. Obviously, it’s meant to be a tribute and I’m sure the intention comes into play. But it seems really weird, right?
MATT: I think intent is the keyword that’s going to kind of run throughout this. What was the intent behind this? I think it does seem like they were trying to pay some sort of tribute but the approach was not executed that well. I mean, the whole thing wasn’t executed that well, but the approach was just not great. You know, I think it got more flack than positive feedback. There was some people that said, “You know, she had a pretty good sense of humor. I think this is something she would like.” Again, I don’t think it was supposed to be a joke, really. But, circling back to what I was just saying about intent, what was the intent behind this? Because, if the intent was some sort of commercial gain or other profiting off of Carrie Fisher’s likeness – all these keywords we’re saying out here – it’s something that they can be legally responsible for.
NASIR: Well, we can give some other examples, but I just think it’s weird. If you have some kind of tribute where somehow your product is involved, it kind of lessens the impact or the motivation behind it. A good example – it was this year, too – David Bowie passed away, right?
NASIR: Was that this year?
MATT: And Prince.
NASIR: Crazy, right? By the way, I did look to see. I was like, because it’s top of mind that these celebrities are dying that maybe 2015 could have been just as bad? But, if you look at the list of 2015, yeah, a lot of celebrities died but, as far as the notability, I didn’t even know half the list. I barely knew half the list on that. But, anyway, that’s digression.
For David Bowie, Crocs – you know, the shoes – they have their own issues as far as the viability of that brand. No offense to anyone that wears them! I think, during his death, as a tribute, they had a picture of a Croc – a shoe, kind of big – and then it had that iconic David Bowie lightning bolt logo across it. It’s like, “Okay, if you just had the lightning bolt and that’s it, I get it.” But putting your shoe right behind it, I don’t think he was some kind of sponsor of Crocs.
NASIR: And that’s kind of what the implication is – that somehow they have some kind of connection to David Bowie.
MATT: Yeah. You know, we both kind of criticized Cinnabon here but the two other examples we’re going to give right here were way worse. I mean, the Crocs thing makes no sense to me – unless I’m just missing something. And then, I mentioned Prince, too. They had a thing just saying “Rest in Peace” and the “I” was Cheerio and it was sponsored by Cheerios. Am I missing something there, too? I don’t really get it.
NASIR: Granted, it’s a little more subtle. Like, if we’re going on the tasteless scale, it’s less tasteless than the Crocs example. But, again, it’s like you’re already presenting it from, I assume, your social media account so we know it’s coming from Cheerio. But, if you just had an image of Prince or his logo just saying “Rest in Peace,” it just seems much more… I don’t know. I think that’s an example that maybe you can make an argument because it’s just so subtle, right?
MATT: We’ll have to link all of these but the Cheerios one just struck me as weird. It is subtle but why don’t you just say “Rest in Peace” and move on from it? Why insert your own Cheerio? I think I get what they were trying to do but it just comes off weird. Like I said, the Cinnabon makes more sense, really, when you look at all three of these.
NASIR: Here’s the bottom line. When celebrities die, there are people that are going to take advantage of it. Frankly, just to be honest, when Prince passed away, there was an issue regarding intellectual property of his and we covered Prince. Part of our cover logo or cover image was an image of Prince. But that’s it. I’m not saying we’re tasteless because I would never say that. But, in the same sense, it’s a common thing. Now, where’s the line to where you’re using someone’s likeness or publicity to commercial gain and even make an implication that somehow there’s an affiliation. Here, we’re actually talking about some relevant news. But, if we put our law firm logo, Pasha Law, and Prince right next to each other and it’s like, “Hey! Rest in Peace! Come to our law firm and give us legal services,” it’s a little weird, right?
MATT: And – correct me if I’m wrong – I thought the seminal case on this whole kind of thing was with Vanna White. It was a long time ago, with Samsung, I believe. I just remember learning about that in law school.
NASIR: I’m not aware of it but you get to the legal point of view. There’s intellectual property and intellectual property usually people talk about copyright, patents, or trademarks. But, when it comes to the use of someone’s image or likeness, this is a little bit more convoluted because it’s a New York kind of thing in the sense that a lot of people compare publicity rights to trademark rights but they’re not the same. Trademarks has to be like a collection of words or some kind of description of either a combination of words or a symbol. For example, Prince has his symbol of his logo. But, when you’re actually using someone’s image and someone’s name, that’s a little bit different. It doesn’t really fall into the trademark area. And so, that’s why now you have cases and common law. Every state is different. There’s actually no federal law that talks about using someone’s image or publicity. It’s based upon state by state.
MATT: Yeah, unless it could fall under copyright. What we’re talking about here is not that.
NASIR: Or trademark.
NASIR: But, usually, it’s hard to kind of fall into that role. In the Prince situation where you used his logo which is definitely trademarked and somehow affiliate it or associate it with your product upon his death and it had created some kind of likelihood of confusion, then it would be a trademark infringement. But, if you have Prince as a person in his image – which your image can’t be trademarked in that fashion, unless it’s part of your logo somehow.
MATT: Yeah, like you said, we’re mostly dealing here with Reddit publicity rights and I think I mentioned the Vanna White case but there’s the one with Kim Kardashian a few years back where we sued – well, sued the GAP company and Old Navy – but a model who looked a lot like Kim Kardashian, I think it was pretty clear that they were trying to kind of copy that. This was in the height of her…
NASIR: I think she’s known for being a lookalike already – this particular actress.
MATT: Yeah, this was kind of in the height of her popularity and she filed a lawsuit. There’s common law and right of publicity. There is a statutory right in California and violations of the Lanham Act as well. We’ll dive into these in a little bit. Like you said, this lawsuit was in California. It’s a state law of analysis but, generally speaking, California has got to protect its celebrities pretty heavily – or at least try to.
NASIR: For example, some states, when it comes to bringing up a violation of this common law right of publicity, some states require you to be a celebrity. It doesn’t really matter if they’re using your image. Some say that you have to have some kind of commercial value to it in the sense that, if someone just takes a photo of you and uses it and you’ve never put yourself in the commercial sphere to sell your image to be associated with another commercial product, then you may not have a right.
It’s very state by state specific. But this case with Kardashian was interesting because, apparently, according to her, she wasn’t too keen on bringing in the lawsuit, but because she had a contract, she had this whole line apparently with Sears – I don’t know if she still does – and a whole line of clothing or such apparel and because she had this contract with Sears and this other Old Navy ad, basically – you can look it up on Google and we can link it, too. It was basically someone that looked like Kardashian. When I watched the video, I didn’t really see it but, apparently, it was obvious to some that this was kind of a play on Kardashian. But, Sears, I think what she explained was that Sears kind of pressured her – or maybe it was by contract – to actually enforce these intellectual property rights because then, if you allow Old Navy to do that, then it diminishes the value that the Kardashian brand gives you Sears with having their own apparel line.
MATT: Do you remember the ads? I don’t know if you…
NASIR: I watched it yesterday. The actual ad?
NASIR: Yeah, I’ll have to bring it up.
First of all, it’s a bad ad because it’s just weird, I think. It just has this weird music in the background. Did you watch it?
MATT: No, I haven’t watched it recently. I do remember from before when we brought it up. These all kind of fall into the same thing of I guess maybe you and I are just different in that we don’t make the connection between an individual like a celebrity and this company is trying to use their likeness and we’re going to go out and buy their product as a result. But I guess obviously enough people do that she does bring the lawsuit because, I mean, basically, you kind of hit it or discussed already but it boiled down to this – she basically said that she is a valuable commercial asset – or her name, likeness, identity, persona are a valuable commercial asset. Old Navy was trying to replicate that or symbolize her that, as a result, they’re profiting off of it and she should be compensated for their doing of that.
NASIR: Again, this is all based upon the statutory and common law right that California has plenty of law and because of the celebrities that reside on that state. But, other states, their law in this area is underdeveloped. And so, it begs the question as to, if you are a local merchant and kind of doing your own thing in some other state that you involve some other celebrity and use their likeness, the viability of a lawsuit that may occur in California or some other state that you’re not located in and what law applies, this all becomes – you know, from a lawyer’s perspective – an interesting issue.
MATT: Yeah. I think our general advice is just to don’t do this. You and I just don’t really see the point of this sort of advertising. I mean, you know, if you are going to go that route, it boils down to some things. I mentioned intent earlier – whether you were knowingly or intentionally using this celebrity or someone’s likeness.
NASIR: The commercial-bility of the commercial nature of the use is usually a heavy factor in pretty much every state. And so, like you said, the lack of consent and the actual intention, because maybe you used an image or you don’t intend it to have any kind of sponsorship but, if you’re using it as a tribute versus “Hey! I’m going to put my product next to it,” and make the implication that “Prince likes Crocs” or I should say “David Bowie likes Crocs so you should like Crocs, too!” which is how sponsorships work, then that has a much more commercial nature to it versus, you know, I was trying to think, “What should they have done?” If Cinnabon would have posted, “Oh, here’s everyone dressed up as Princess Leia today at the office in tribute and here’s a picture of them,” you know? Or just a picture of Princess Leia, assuming that they have the copyright image and they have ownership over that, that seems much more of a tribute and less of a commercial nature versus, you know, “Here’s my product and logo next to the person.”
MATT: That’d be one way to approach it.
Just real quick, we mentioned there’s some states do have statutes and there’s a common law clause as well. In California, there’s both. The common law right is a little bit broader. It deals more with identity than name or likeness. Also, it’s an appropriation of the plaintiff’s name or likeness to the…
NASIR: Defendant’s advantage.
MATT: Advantage – commercially or otherwise.
NASIR: It’s pretty broad.
MATT: Yeah, there has to be some injury as well.
NASIR: And I think that’s the key. The injury part is the tough one. That’s why when Kim Kardashian brings her lawsuit, she had to talk about how she’s developed, she’s this famous star and she’s developed a brand with Sears. She’s been on QVC and so her brand and her image has some value to it. And so, when someone uses her image or when she alleges that, then it diminishes her value and that’s a damage. Whereas, someone like you and me – well, maybe you more than me – the damage is not as tangible and it becomes a much more difficult thing to prove.
MATT: Yeah, and I think it’s a fair point for her and any celebrity to make, especially what we were saying before. That was kind of the height of her popularity. I disagree with most things that she does but this one I have to agree with.
One quick thing, an interesting thing about the Carrie Fisher with Cinnabon – and I guess with David Bowie and Prince, too – California actually has said that there’s a common law right and also a statute. It also has a statute for…
NASIR: For death, right?
MATT: For deceased – yeah, for celebrities or individuals that have passed away, too, basically. The right can get handed down and it makes sense, right? The right can get handed down.
NASIR: I guess. It is a little weird. They literally are making it an intellectual property that you can transfer and it only lasts for so many years but it’s the same thing, like, copyright, for example, used to be limited to the death of the author plus 50 or 75 years, and then they increased that then they changed how that works. It’s kind of a similar idea. And so, the state statute is for the right lasts for 70 years after death and is transferrable – just like any other intellectual property. You can assign it, you can license it, you can do whatever you want with it.
MATT: Yeah. There are some registration things. There is in California as well, possibly, depending on the situation.
NASIR: Does it say who it goes to? I assume it goes to the heirs, is that right?
MATT: There is a breakdown in the actual statute itself of who it would go to. It’s similar to the intestate.
NASIR: Okay. Unless there’s an actual will. Intestate just means that there’s no will.
MATT: Yeah, you can hand it down in a trust or a will as well – something like that. It’s pretty interesting but the reason I think it’s fair is because, just because somebody passes away, you don’t want businesses or other people profiting off of the deceased. You can even make the argument that it’s worse because it’s the deceased person. They don’t have any control over it.
NASIR: That’s right.
Before we go, I don’t want to leave everyone with the message that, if someone passes away, then you should be scared about tweeting about them because this aspect of the use of someone’s likeness is also part and parcel to First Amendment rights, too. The same kind of trademark and copyright exceptions apply – like fair use. If we as a podcast are talking as a news story about Carrie Fisher, us putting Carrie Fisher on our image or prints or whoever is not a violation of their publicity or their likeness – at least that’s what I’m going to argue in court when they sue us. When you tweet about it or put it on your Facebook post as a business, you know, putting tribute, you know, it’s not like an automatic violation.
MATT: Yeah, exactly. It’s not like you’re prohibited from posting anything about them but it’s more so I think the way I kind of look at it is are you trying to make some sort of connection between that individual’s name and likeness, et cetera and your company or brand? If you’re trying to connect the two when there’s no connection, when there’s been no previous sort of business connection, then you might have a problem.
For example, if and when Michael Jordan eventually passes away, Nike – assuming other things don’t happen – you know, Nike is going to post something about it – because he kind of made Nike and blah blah blah and it should be fine.
NASIR: Yeah, and vice versa, too. Nike pretty much made Michael Jordan a great player.
MATT: Yeah, definitely.
NASIR: According to the commercials, right? The pumps?
MATT: Uh, was it? Yeah, I think that is right.
NASIR: That was Nike, right?
MATT: The point I’m trying to say, like the Crocs with David Bowie and Cinnabon and all these things, as far as I know, there was no previous relationship between those individuals and those companies/brands. So, that’s where you can kind of get into trouble. There’s ways of going about paying a tribute. Look at the motive behind it; if none of the motive is trying to raise the awareness of your brand or profit or do any sort of commercial gain, then you should be, generally speaking, pretty safe.
NASIR: Yeah, it’s a good guideline. It’s not perfect but, like we’ve discussed many times before, if people can sue you for whatever, there is a viable theory just because of how broad that California statute can be with the use of image.
MATT: Yeah, and like we were saying, there’s a lot of celebrities in California so it makes sense.
NASIR: All right. This year, we’re only a few days away for the year ending and hopefully we’re not going to have to update this podcast with any more recent deaths.
MATT: Yeah, we have a few days. It should be okay. I think we’re pretty safe but who knows?
NASIR: Okay. Guarantee from Matt Staub. We’re safe.
MATT: No guarantee but fingers crossed.
NASIR: Very good. All right, thanks for joining us, everyone.
MATT: Keep it sound and keep it smart.