Guest Post: Superheroes and the Right of Publicity

Although we don’t normally feature guest authors here, this week we’re making an exception for an exceptional guest: Brad Desnoyer is a law professor at the University of Missouri who has also written stories for DC Comics and worked as an assistant to Brad Meltzer.  He has written a two part guest post for us on superheroes and the right of publicity, which we’ll be featuring today and Friday.

Superheroes and the Right of Publicity

My Wolverine action figure’s claws really “popped” from his plastic forearms. My suction cup Spider-Man could stick to walls – as long as those walls were glass. And although some knock-offs were better than the originals, like most kids, my favorite action figures always were “officially licensed.”

These official action figures were, and still are, huge profit grabbers for licensors such as Marvel and DC. Posters, bedspreads, toothpastes – slap a picture of Superman on them and a product’s price skyrockets along with customer demand.

If real, “superhero celebrities” would possess a right to capitalize on their fame, their commercial value – just as real celebrities capitalize on their fame by endorsing products. And just as with real celebrities, superheroes would likely demand monetary compensation for the unpermitted use, or “appropriation,” of their image. They consequently could look to the courts for redress by filing a “right of publicity” claim.

Unlike invasion of privacy or copyright claims, a right of publicity is not meant to protect one’s “right to be left alone” or one’s ability to benefit from his or her creation, but rather it protects an individual’s ability “to control the commercial use of his or her identity.” 31 Causes of Action 2d 121. As stated by McCarthy in 1 Rights of Publicity and Privacy § 3:2, and as noted in a previous post, the elements of a right of privacy action are as follows:

1. Validity – Plaintiff owns an enforceable right in the identity or persona of a human being; and
2. Infringement
   (A) Defendant, without permission, has used some aspect of identity or persona in such a way that plaintiff is identifiable from defendant’s use; and
   (B) Defendant’s use is likely to cause damage to the commercial value of that persona.

The legal quandary comes when courts attempt to strike a balance between a celebrity’s (or superhero’s) exhaustible fame and an artist’s First Amendment right to create.

Interestingly, some of the most seminal cases struggling to achieve this balance between the seeming absolutes of property rights and freedom of expression deal with comic books.

The Transformative Use Test

The “transformative use” test, the most implemented test for right of publicity cases, comes from the state with the most celebrities: California.

In Comedy III Productions, Inc. v. Gary Saderup, Inc., Comedy III – the registered owner of the Three Stooges’ property rights – sued artist Gary Saderup, arguing Saderup infringed on the Three Stooges’ rights of publicity by producing and selling merchandise bearing Saderup’s charcoal drawings of the Three Stooges. 21 P.3d 797, 800 (Cal. 2001).

Working to formulate a general standard, the California Supreme Court reasoned that the government’s interest in protecting a celebrity’s property interest outweighed an artist’s First Amendment protection when that artist simply drew mere literal depictions of the celebrity. Id. at 808. “On the other hand,” the court observed, “when a work contains significant transformative elements,” as found in works of parody, the creative endeavor is entitled to complete First Amendment protection. Id. (emphasis added).

Therefore, the court held that the underlying inquiry needed for balancing right of publicity claims against First Amendment defenses is whether the work-at-issue is “transformative” – that is “whether a product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness.” Id. at 809.

Applying the transformative use test to Saderup’s drawings, the court found no “significant transformative or creative contribution.” Id. Rather, Saderup’s literal charcoal depictions of the Three Stooges appropriated the trio’s economic value while expressing little more than imitation. Id.

In 2003, California distinguished Comedy III, in Winter v. DC Comics, finding DC Comic’s creative works transformative. 69 P.3d 473, 478 (Cal. 2003). In Winter, musicians Edgar and Johnny Winter sued DC Comics after DC released a five-issue Jonah Hex miniseries featuring “Edgar and Johnny Autumn” – “villainous half-worm, half-human offspring born from the rape of their mother by a supernatural worm creature.” Id. at 476. These pale, white haired monstrosities bore a distorted likeness to the real-life musicians in both physicality and modes of dress. Id. Additionally, the Winter brothers probably were not too pleased that the end of the miniseries Jonah Hex and his cohorts shot down and killed their fictional counter-parts during an “underground gun battle.” Id.

In applying the transformative use test to DC’s Jonah Hex miniseries, the court stated, “An artist depicting a celebrity must contribute something more than a ‘merely trivial’ variation, but must create something recognizably ‘his own.’” Id. at 478 (citing Comedy III, Productions, Inc. 21 P.3d at 810). Therefore, the court held that “[a]lthough the fictional characters Johnny and Edgar Autumn [were] less-than-subtle evocations…” of the Winters, DC’s creation was expressive enough outside its resemblance to the Winters to be transformative. Id. at 479.

Finally, in what might be the most difficult balancing between the seeming absolutes of property rights and the First Amendment, in ETW Corp. v. Jireh Publ’g, Inc, the Sixth Circuit looked at whether reprinted serigraphs and lithographs titled “The Masters of Augusta” infringed on golfer Tiger Woods’ right of publicity. 332 F.3d 915, 918 (6th Cir. 2003). Looking to the transformative use test for guidance, the court held that prints featuring three literal depictions of Tiger Woods to be distinguishable from the “unadorned, nearly photographic reproduction” in Comedy III because the prints did “not capitalize solely on the literal depiction of Woods.” Id. (emphasis added). Rather, the court reasoned, the work consisted of a collage of images – including other golfers in the background – conveying a message of sporting and historical accomplishment. Id. at 936-38. Therefore, the prints possessed “a significant creative component” Id. at 938.

In the next post, we will look at Missouri’s “predominant purpose” test and the Missouri Supreme Court’s use of the test in finding that Todd McFarlane’s Spawn comic infringed on a St. Louis hockey player’s right of publicity.