26. Other Forms of IP
(1) Misappropriation, (2) Right of Publicity, (3) Design Protection
MML 1162-77, 1199-1230; California Civil Code § 3344
(1) Misappropriation
 International News Service v Associated Press (Supreme Court 1918) P.1162

Facts: P (Associated Press) sued D (INS, a competing distributor of news to newspapers throughout the US) for pirating P's news. D allegedly bribed employees of newspapers to supply P's news to itself before publication, and selling them to D's own clients on the West
Coast  DC granted preliminary injunction  CA sustained injunction

Held: Affirmed. One who has gathered news or general information for the purpose of publication has an interest that is entitled to protection from interference.

1. Property in News? Does it survive first instance of publication?
 News is not copyrightable because the writer did not create the news element + facts/ historical facts are not protected + not registered upon publication (previously required for copyright protection) + D paraphrased

2. Whether D's behaviour constitutes unfair competition in trade ?
 Court looked to unfair competition in business for gathering and production of news  look at rights of the parties as between themselves.
 The news are the materials which both parties are attempting to make profit at the same time and in the same field  must be regarded as quasiproperty between the 2 parties, regardless of the right of either or of the public
  News has an exchange value to one who can misappropriate it.
o Labour, skill and money spent to gathered  sold

Court want incentive to invest something of value to the public 
party who undertook such investment should be recognised by the law.
 Here, acquiring and transmitting the news required elaborate organization and a great expense of money, skill, and effort.
 As D sold P's goods as its own  D is guilty of unfair competition by misappropriation  sustained preliminary injunction

Concurrence. (Holmes, J.): Misattribution theory rather than misappropriation
 Within the limits recognized by the majority, D should be prohibited from publishing news obtained from P for hours after publication by P, unless D gives express credit to P  it is a misrepresentation of attribution (look as if INS did this, but it was done by AP)
o Dissent (Brandeis, J):
 Court should decline to determine limitations that should be set upon any property right in news or of the circumstances under which news gathered by a private agency should be considered affected with a public interest (there is no traditional IP right in published news)
 The fact that a product of the mind has cost its producer money and labor, and has a value for which others are willing to pay, is not sufficient to ensure to it this legal attribute of property. Though news has a value, it doesn't mean it is a property

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Freedom is the baseline, has to be some really good reason to justify changing that baseline  this rule extends protection beyond Patent and Copyright law (which balances rights)  difficult to justify
 Creation/ recognition by courts of a new private right may work serious injury to the general public, unless the boundaries of the right are definitely established and wisely guarded  may need to prescribe limitations and rules for its enjoyment + provide admin machinery for enforcing the rules
INS v AP is a Common law concept, only a cause of action under State Law/Court in a narrow form
(not cause of action under Federal Law)
Federal Preemption of State Law P.1173

Express
 Federal Two-Part Preemption Test:
 © Law Title 17 s.301 Preemption with Respect to Other Laws
 "whether state common law misappropriation doctrine survives the preemption of all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by s 106 in works of authorship that are fixed in a tangible medium of expression and come within the

(1) Subject of claim must be a work fixed in a tangible medium of expression and come within the subject matter or scope of copyright protection as described in s 102 and 103; and

(2) the right asserted under state law must be equivalent to the exclusive right contained in s 106

Conflict:
 "stands as an obstacle to the accomplishments of the full purposes and objectives of
Congress." Hines v. Davidowitz, 312 U.S. 52, 67 (1941)
o Field

(2) Right of Publicity P.1199
 A person's identity attached to the good can be very valuable
 This right affords individuals a property-type interest in the use of their names, likeness, photograph,
portrait, voice, and other personal characteristics in connection with the marketing of products and services
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Jurisdiction approach varies across States

16 States recognise common law rights of publicity, another 15 codified the right of publicity

Some States, like California, recognise both statutory and common law sources of protection

NY's statutory privacy and publicity protection are in a single statute

Broadest states: California and Indiana, Minnesota

Narrow state: New York (a lot of Media, hates this)

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Rationale for protecting right of publicity

Stems from right of privacy (but usually celebrities)

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iii. iv.

Economic value attached to identity: celebrities (with valuable identity) are exploiting their images to make money, need control over so identity not diluted
Moral rights: people have a say to what they associate themselves with (but: cultural icon which people may want to associate themselves with, e.g. Barbie  should we allow this?
Tension with First Amendments)

Scope of right
Tension with 1st amendment
Copyright Preemption
Character Protection

(i) Scope
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Common Law in Cali: "identity"
California Civil Code

1. Name, voice, signature, photograph, or likeliness

2. Living persons s.3344.1(a)

3. Deceased person 3344.1(b)
§ 3344.1 Unauthorized Commercial Use of Name, Voice, Signature,
Photograph or Likeness

(a) 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, or soliciting purchases of,
products, merchandise, goods or services, without such person's prior consent, or, in the case of a minor, the prior consent of his parent or legal guardian, shall be liable for any damages sustained by the person or persons injured as a result thereof. In addition, in any action brought under this section, the person who violated the section shall be liable to the injured party or parties in an amount equal to the greater of seven hundred fifty dollars ($750) or the actual damages suffered by him or her as a result of the unauthorized use, and any profits from the unauthorized use that are attributable to the use and are not taken into account in computing the actual damages. In establishing such profits, the injured party or parties are required to present proof only of the gross revenue attributable to such use, and the person who violated this section is required to prove his or her deductible expenses. Punitive damages may also be awarded to the injured party or parties. The prevailing party in any action under this section shall also be entitled to attorney's fees and costs.
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(b) As used in this section, "photograph" means any photograph or photographic reproduction, still or moving, or any videotape or live television transmission, of any person, such that the person is readily identifiable…

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(c) [Presumption] Where a photograph or likeness of an employee of the person using the photograph or likeness appearing in the advertisement or other publication prepared by or in behalf of the user is only incidental,
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there shall arise a rebuttable presumption affecting the burden of producing evidence that the failure to obtain the consent of the employee was not a knowing use of the employee's photograph or likeness.

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(d) [Exceptions] For purposes of this section, a use of a name, voice,
signature, photograph, or likeness in connection with any news, public affairs, or sports broadcast or account, or any political campaign, shall not constitute a use for which consent is required under subdivision (a).

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(e) The use of a name, voice, signature, photograph, or likeness in a commercial medium shall not constitute a use for which consent is required under subdivision (a) solely because the material containing such use is commercially sponsored or contains paid advertising. Rather it shall be a question of fact whether or not the use of the person's name,
voice, signature, photograph, or likeness was so directly connected with the commercial sponsorship or with the paid advertising as to constitute a use for which consent is required under subdivision (a).

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(f) Nothing in this section shall apply to the owners or employees of any medium used for advertising, including, but not limited to, newspapers,
magazines, radio and television networks and stations, cable television systems, billboards, and transit ads, by whom any advertisement or solicitation in violation of this section is published or disseminated, unless it is established that such owners or employees had knowledge of the unauthorized use of the person's name, voice, signature, photograph, or likeness as prohibited by this section.

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(g) The remedies provided for in this section are cumulative and shall be in addition to any others provided for by law.

Midler v Ford Motor Co (9th Cir. 1988)
o Facts: D ad agency couldn't get P to re-create her 1970 hit song for its TV
commercial for D, so it hired a former P's backup singer to impersonate her voice. Neither P's name/ picture was used in the commercial. P sued for right of publicity in her voice.  DC granted summary judgement for D
 Cir. Reversed

Held for P: In CA, intentional imitation of a celebrity's distinctive and widely known voice for commercial purpose constitutes tortious misappropriation.
 When a celebrity's distinctive and widely known voice (which comprise of P's identity) is intentionally imitated in order to sell a product, D have appropriated what is not theirs  D have committed a tort in California
 California recognizes an injury from the appropriation of the attributes of one's identity, including the voice, which is one of the most palpable ways identity is manifested

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A voice is distinctive and personal as a face  a singer manifests herself in her song  to impersonate her voice is to pirate her identity
 Not every imitation of a voice to advertise merchandise is actionable , only when a distinctive voice of a professional singer is widely known and is deliberately imitated to sell a product, the seller have appropriated what is not theirs and have committed a tort in California
 P has made a showing, sufficient to defeat summary judgment, that D
appropriated her identity for its own profit in order to sell its product.
 The value of this attribute is what the market would have paid for P to sing the commercial in person.
 Unclear in this case, publicity seems to be protecting (not the privacy), but unjust enrichment, reduce public confusion, protect her incentive to commodify her own image, her voice is her property
Should P be able to bring a claim when D have right under copyright to do so (D licensed to record another version of the song?)
 Irrelevant here as P is suing of the imitation of her voice.
 Failed to satisfy the Copyright 301 preemption Test as voice is not copyrightable: mere imitation of a recorded performance would not constitute a copyright infringement even where one performer sets out to simulate another's performance as exactly as possible
Effect on s 114(b), which expressly authorises cover recordings that "imitate or simulate those in the copyrighted sound recording"?
Note: Cali Civil Code 3344 was of no aid to P, as neither her name, voice nor likeness was used. "likeness" refers to visual image and not a vocal imitation  P need to pursue under common law

E.g. Model couldn't sue for photograph as she did not own the photograph  sue under violation of publicity  not preempted as P is suing under the "likeness of the photograph" (not protected under copyright), different from right of reproduction of photograph Toney v. L'Oreal USA, Inc., 406 F.3d 905 (7th Cir. 2005)
E.g. Using a look-a-like of a celebrity in commercial  NY Court: public would think the advert is a photo of the actual celebrity  Allen v National Video, Inc., 610 F.Supp. 612 (S.D.N.Y.1985)
White v Samsung Electronics America Inc. (9th Cir. 1993)
o Facts: Samsung (D) ran an advert that clearly indicated that P of the TV
game show had been the basis for the images  P argued the advert had appropriated her right of publicity  but P's likeness was not used in the advert  DC dismissed  P appealed

Majority held for P: A person's right of publicity may be usurped even if the offending use did not incorporate that person's likeness  Anything that provokes P's identity  clever adverts would be able to work around the law

Dissent. (Kozinski, J.)
1) By refusing to recognize a parody exception to the right of publicity, the majority directly contradicts the federal Copyright Act's fair use provisions.

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It is impossible to parody a movie or TV show without at the same time evoking the identities of the actors, who should not have a veto over fair use parodies of the shows in which they appear.
2) The majority's holding also conflicts with the federal copyright system, under which the dormant Copyright Clause requires that state IP laws can stand only if they don't prejudice the interest of other states.
 However, the right of publicity is not limited geographically, so that one state's right of publicity can restrict conduct everywhere, thereby interfering with other states' legitimate interests.
3) Finally, the majority opinion conflicts with the First Amendment.
 Not allowing any means of reminding people of someone is a speech restriction unparalleled in First Amendment law.
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Reducing too much intellectual property to private property is harmful. Creativity is impossible without a rich public domain.
The majority opinion is a classic case of overprotection and erects a property right or remarkable and dangerous breadth: "Under the majority's opinion, it's now a tort for advertisers to remind the public of a celebrity.
Not to use a celebrity's name, voice, signature or likeness; not to imply the celebrity endorses a product; but simply to evoke the celebrity's image in the mind of the public
This Orwellian notion withdraws far more from the public domain than prudence and common sense allow.
 It conflicts with the Copyright Act and the Copyright Clause.
 It raises serious First Amendment problems.
Here, D didn't use P's name, likeness, voice or signature — no one seeing the ad would have thought it was supposed to be P  under CA's right of publicity precedent, DC was correct in ruling P's rights were not violated
Reminding the public of someone's copyrighted property does not, as the majority indicates, "eviscerate" the copyright holder's rights.
 "All creators draw in part on the work of those who came before, referring to it, building on it, poking fun at it; we call this creativity, not piracy."
 Instead of preventing the "evisceration" of P's existing rights, the majority is instead creating a new and much broader property right.
 Now, a celebrity has the additional, exclusive right to anything that reminds the viewer of her or him.
 Here, the majority gave P an exclusive right in what she does for a living 
not appropriate balance of the public interest and rights of copyright holder,
because it doesn't contain essential limitations of IP law, doesn't leave anything in the public domain, robs public of parodies of celebrities and undermines the essence of the copyright system.
IP law assures authors the right to their original expression, but encourages others to build freely on the ideas that underlie it
 this result is neither unfair nor unfortunate: It is the means by which IP law advances the progress of art and science.
 we give authors certain exclusive rights, but in exchange we get a richer public domain.

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