BARBARA MONTGOMERY, AS PERSONAL REPRESENTATIVE OF THE ESTATE OF HERDECEASEDHUSBAND,HAROLD EDWARD MONTGOMERY V. JOHN MICHAEL MONTGOMERY, ATLANTIC RECORDS CORPORATION, AND MAUREEN RYAN
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RENDERED: NOVEMBER 21,200l
TO BE PUBLISHED
BARBARA MONTGOMERY, AS PERSONAL
REPRESENTATIVEOFTHEESTATEOF
HERDECEASEDHUSBAND,HAROLD
EDWARD MONTGOMERY
V.
APPELLANT
ON REVIEW FROM COURT OF APPEALS
1998-CA-2879-MR
GARRARD CIRCUIT COURT NO. 97-Cl-160
JOHN MICHAEL MONTGOMERY,
ATLANTIC RECORDS CORPORATION,
AND MAUREEN RYAN
APPELLEES
OPINION OF THE COURT BY JUSTICE JOHNSTONE
AFFIRMING
Barbara Montgomery, as personal representative of the estate of Harold Edward
Montgomery, brought suit against John Michael Montgomery, Harold’s son. In the suit,
Barbara claimed that John Michael had violated Harold’s common-law and statutory
right of publicity by using Harold’s voice and likeness in a music video. The trial court
granted summary judgment in John Michael’s favor. The Court of Appeals affirmed.
We conclude that the right of publicity does not apply in this case and, therefore, affirm.
FACTS
Harold E. Montgomery was a musician in and around Garrard County in Central
Kentucky. He wrote several songs that were recorded in small recording studios.
Harold performed alone and with other musicians over a period of years at festivals in
his local area. While he rarely appeared outside the Commonwealth of Kentucky, he
did twice venture to Nashville, Tennessee, where he recorded a song entitled, “Let Me
Be Young Again,” and appeared on a local television show.
John Michael Montgomery, Harold’s son by Harold’s first wife, is a nationallyknown country music star. With Harold’s encouragement, John Michael took an early
interest in country music. The two formed an extraordinary bond.
Harold married Barbara Rogers in 1988. About the same time, John Michael
began to rise to the apex of country music, both in song writing and performance.
While his fame and success eclipsed his father’s, apparently his efforts at achieving it
did not. By all accounts, Harold passionately pursued his music career, but never made
it to the top. It was through his son that Harold realized his dreams of stardom.
Harold was diagnosed with cancer in 1993 and died in 1994. Barbara was the
sole beneficiary of his estate under his will and was named as executrix thereof. She
settled the estate informally and expeditiously.
In February 1997, John Michael released his fourth album, which contains the
song entitled, “I Miss You a Little.” The song is a tribute to Harold. Additionally, a
music video of the song was released shortly afterwards. The video lies at the center of
the controversy in this case. As found by the trial court, the music video is four minutes
and twenty-seven seconds (4:27) long and Harold Montgomery’s “likeness” appears in
approximately thirty (30) seconds of the video as follows: (1) Harold is heard singing,
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“Let Me Be Young Again”; (2) Harold’s gravestone appears; (3) a forty-five rpm record
of “Let Me Be Young Again” bearing Harold’s name appears; (4) a picture of Harold and
John Michael performing together appears; (5) an article headed “John Michael is living
out his father’s dream” appears; (6) a picture of Harold performing appears; (7) Harold’s
gravestone appears a second time; (8) a second picture of John Michael and Harold
performing together appears; and (9) the closing dedication states, “This song is written
in memory of my father, Harold E. Montgomery.” John Michael did not get permission
from his father’s estate to reproduce Harold’s images or vocalizations contained in the
music video.
The music video first aired nationally on or about March 3, 1997. Thereafter,
Barbara, as executrix of Harold Montgomery’s estate, filed suit claiming among other
allegations that the use of Harold’s likeness in the video violated his estate’s commonlaw and statutory right of publicity.
The trial court granted summary judgment in the defendants’ favor on October 5,
1998. In so doing, the trial court found in pertinent part that the common-law right of
publicity is not inheritable and that Harold was not a “public figure” within the meaning
of KRS 391.170. Specifically, the trial court concluded that a “public figure” was a
person who had attained “national celebrity status” within his lifetime.
The Court of Appeals affirmed the trial court’s finding that the common-law right
of publicity is not inheritable. But instead of examining whether there is a common-law
right of publicity that is distinct from the common-law right of privacy established by this
Court in McCall v. Courier-Journal & Louisville Times,’ the Court of Appeals assumed
‘KY., 623 S.W.2d 882(1981), cert. denied, 456 U.S. 975, 102 S . Ct. 2239, 7 2 L.
Ed. 2d 849 (1982).
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that the right of publicity was subsumed in the appropriation prong of the right of
privacy, which provides: “The right of privacy is invaded by . . . appropriation of the
other’s name or likeness. . . .‘I2 The Court of Appeals held that the common-law right of
privacy is not inheritable.
The Court of Appeals rejected the trial court’s definition of a “public figure” as too
narrow. Still, the Court of Appeals affirmed the trial court’s ruling. It formulated its own
definition and held that Harold’s name and likeness did not have “significant commercial
value.”
On appeal to this Court, Barbara has abandoned her common-law claims. Her
arguments focus solely on allegations of error in interpreting KRS 391.170 by the courts
below. Thus, Barbara’s common-law claims are not at issue in this case. Therefore,
we do not address or decide in this opinion: (1) whether there exists in the
Commonwealth a common-law right of publicity that is distinct from the common-law
right of privacy; (2) whether the common-law right of publicity (if it exists) is inheritable;
or (3) whether any or all of the rights embraced by the right of privacy are inheritable.
STATUTORY RIGHT OF PUBLICITY
The only issue before us concerns the proper construction of KRS 391.170,
which creates a posthumous right of publicity and provides:
(1) The General Assembly recognizes that a person has property
rights in his name and likeness which are entitled to protection from
commercial exploitation. The General Assembly further recognizes that
although the traditional right of privacy terminates upon death of the
person asserting it, the right of publicity, which is a right of protection from
appropriation of some element of an individual’s personality for
commercial exploitation, does not terminate upon death.
21d. at 887.
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(2) The name or likeness of a person who is a public figure shall
not be used for commercial profit for a period of fifty (50) years from the
date of his death without the written consent of the executor or
administrator of his estate.
The trial court’s ruling turned on its interpretation of the term “public figure,” as:
“one who has vigorously sought the attention of a national audience and has achieved
such a level of success that he is considered a national celebrity.” The Court of
Appeals disagreed with the trial court on this issue and implied that the trial court’s
definition was too narrow. Rather, the Court of Appeals concluded that a “public figure”
was a person whose name and likeness had a “significant commercial value” and
affirmed the trial court on grounds that Harold’s name and likeness did not reach this
threshold. We need not determine the correct definition of “public figure,” because, as
a matter of law, neither Harold’s voice nor image was appropriated for “commercial
profit” within the meaning of statute in the music video of John Michael’s song “I Miss
You a Little.”
While the right of publicity at issue in this case is statutory, we believe that many
of the principles of the common-law right of publicity can be used in reaching the proper
construction of KRS 391 .I 70.3
3See Restatement (Third) of Unfair Competition § 46 comment a.
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COMMON LAW RIGHT OF PUBLICITY
The common-law right of publicity evolved from the appropriation prong of the
right of privacy.4 But “it is a distinct cause of action intended to vindicate different
interests.“5 As originally postulated, the right of privacy protects one’s right “to be let
alone.‘16 Whereas the right of publicity protects the right to control the commercial value
of one’s identity.’ The appropriation prong of the invasion of privacy originally sought
to compensate for the emotional distress accompanied by the unauthorized use of
one’s likeness and identity.’ But as the tort has evolved, it is clearly the commercial
interests in one’s identity that the appropriation prong of tort serves to protect the most.’
Further, as is stated in KRS 391.170, the interest protected is considered a property
right.” Thus, as the torts have evolved, the main differences between the appropriation
prong of the right of privacy and the right of publicity concern questions of transferability
and
survivability.” Because the interests protected are nearly identical, our discussion
below--which concerns the reach of the protection of one’s commercial interests
4 Id. at comment b.
5Steven M. Fleischer, The Riaht of Publicity: Preventing an Identity Crisis, 27 N.
Ky. L. Rev. 985, 988 (2000) (emphasis added).
%amuel D. Warren & Louis D. Brandeis, The Right to Privacy, 4 Harv. L. Rev.
193, 195 (Dec. 15, 1890).
7Melville B. Nimmer, The Riaht of Publicitv, 19 Law & Contemp. Probs. 203-04
(1954).
%ee. gg., s,
Fo ter-
134 Ky. 424, 120 S.W. 364,365 (1909).
‘Restatement (Second) of Torts 652C comment a.
“Restatement (Third) of Unfair Competition § 47 comment b.
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provided by both the common-law rights of publicity and privacy--refers only to the right
of publicity.
WHETHER BARBARA’S CLAIM IS ACTIONABLE
Both the common-law right of publicity and the statutory right created by KRS
391.170 can be read broadly to protect a wide variety of uses of a person’s (or public
figure’s) identity. But the right of publicity is fundamentally constrained by federal and
state constitutional protection of the freedom of expression.12
Thus, the “use of a
person’s identity primarily for the purpose of communicating information or expressing
ideas is not generally actionable as a violation of the person’s right of publicity.“‘3 In
order to determine whether a person’s right of publicity has been appropriated, “the
context and nature of the use is of preeminent concern.“‘4
In this case, Harold’s name, image, and voice were used in a music video.
“Music, as a form of expression and communication, is protected under the First
Amendment.“15
Likewise, “[elntertainment . . . is protected; motion pictures, programs
broadcast by radio and television, and live entertainment, such as musical and dramatic
works, fall within the First Amendment guarantee.“” Therefore, we have little difficultly
in concluding that the music video in question is protected free expression under the
12See. e.g., Hicks v. Casablanca Records, 464 F. Supp. 426, 430 (S.D.N.Y.
1978).
13Restatement
(Third) of Unfair Competition 3 47 comment b.
14Gu qliemia v. o l d b e r g P r o d u c t i o n s , 6 0 3 P.2d 4 5 4 , 4 5 7 ( C a . 1 9 7 9 )
Spellin -G
(Bird, C.J., concurring).
15Ward v. Rock Against Racism, 491 U.S. 781,790, 109 S. Ct. 2746,2753, 105
L. Ed. 2d 661, 674 (1989).
“g,
L. Ed. 2d 671, 678 (1977).
452 U.S. 61,65, 101 S. Ct. 2176, 2180,68
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U.S. and Kentucky Constitutions. Thus, under the general rule, Barbara’s right of
publicity claim is not actionable. Like all rules, an exception exists, but it does not apply
in this instance.
The use of a person’s name or likeness or other interest protected by the right of
publicity may be actionable when used within a work that enjoys First Amendment
protection, if the use is not sufficiently related to the underlying work,” or, if the
otherwise constitutionally-protected work is “simply disguised commercial advertisement
for the sale of goods or services.“” In this case, the use of Harold’s likeness is
intimately related to the underlying work (the song and music video are both a tribute to
him) and the music video itself is not a disguised commercial advertisement for the sale
of compact discs of either the single, “I Miss You A Little,” or the album upon which it
appears. This remains true even though music videos can be and are viewed as
promotional films for the sale of music.lg
Most creative works are produced for sale and profit. This, of course, includes
the songs that underlie music videos. While music videos are not produced primarily
for the sale of the video but, rather, the underlying song, this does not strip them of their
First Amendment protection. Music videos are in essence mini-movies that often
require the same level of artistic and creative input from the performers, actors, and
directors as is required in the making of motion pictures.*’ Moreover, music videos are
17Titan Sports. Inc. v. Comics World Corp., 870 F.2d 85, 87-88 (2nd Cir. 1988).
18Frosch v. Grossett & Dunlap, 427 N.Y.S.2d 828, 829 (N.Y. 1980).
‘gBrittanica.com at http://www.brittanica.com/seo/m/music-video (May 31, 2001).
*‘See Deborah Rouse, The Artistic Realm of Music Video, American Visions,
June, 2000, available at htte://www.findarticles.com/cf_0/ml546/3~15/62724398/
print.jhtml.
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aired on television not as advertisements but as the main attraction, the airing of which,
consequently, is supported by commercial advertisements. Simply put, the commercial
nature of music videos does not deprive them of constitutional protection.
The fact that a person’s likeness is used in a constitutionally-protected work to
create or enhance profits does not make the use actionable.21
Nor does the use of that
person’s name or likeness in an advertisement or promotion for the underlying work
infringe upon a person’s right of publicity.22
To put it another way, John Michael--
without either the consent or approval of Harold’s estate--could have produced a film
biography of his fatheP3 and promoted the film using Harold’s name and likeness24
without violating Harold’s estate’s right of publicity (assuming it exists under the statute).
He can do the same in a music video. Accord, Parks v. LaFace Records.25
In Parks, the music group Outkast included a song entitled “Rosa Parks” on one
of its albums, without Ms. Parks’ permission.26
In 1955, Parks made a famous and
heroic stance against racial inequality by refusing to give up her seat to a white person
and move to the back of a bus. This single act of defiance sparked a bus boycott that
21See. e.gL, Stephano v. News Group Publications. Inc., 474 N.E.2d 580, 585
(N.Y. 1984).
22a, a, Guqliemi, 603 P.2d at 462 (“It would be illogical to allow respondents
to exhibit the film but effectively preclude any advance discussion or promotion of their
lawful enterprise.“)
23&, m, Seale v. Gramercv Pictures, 949 F. Supp. 331, 338 (E.D. Pa. 1996)
(Use of Bobby Seale’s name and likeness in the film “Panther” did not violate Seale’s
right of publicity.).
24See. e.a., Guqliemi, 603 P.2d at 462.
25Parks v. LaFace Records, 76 F. Supp. 2d 775 (E.D. Mich. 1999).
261d. at 778.
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ended segregation on public transportation in Montgomery, Alabama, which in turn was
an important precursor to the Civil Rights Movement of the 1960s. Parks brought suit
alleging inter alia that the use of her name violated her common-law right of publicity.27
After concluding that both the song and the song’s title were entitled First
Amendment protection, the district court stated, “The right of publicity is . . . inapplicable
under the First Amendment if the content of an expressive work bears any relationship
to the use of a celebrity’s name.“*’ Upon review of the song, the district court found that
there was an obvious metaphoric and symbolic relationship between the lyrics of the
song, which contained numerous references to going to the back of the bus, and its
title, “Rosa Parks.“*’ The district court then found, as a matter of law, that Parks’ right
of publicity claim was not applicable.30
The district court further concluded the fact that
Outkast profited from the sale of the song and album and heavily promoted the single,
“Rosa Parks,” did not affect this result.31
Like the song title “Rosa Parks” and its lyrics, there exists a genuine connection
between the use of Harold’s name likeness in the music video “I Miss You a Little” and
the song of the same name. Thus, we hold as a matter of law that Barbara
Montgomery’s right of publicity claim, which was brought under KRS 391 .I70 on behalf
of Harold Montgomery’s estate, is inapplicable in this case.
271d. at 779.
*‘1d. at 780, citing Rogers v. Grimaldi, 875 F.2d 994, 1004 (2nd Cir. 1989).
2gid.
.30m
311d. at 781.
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For the reasons set forth above, we affirm the Court of Appeals.
Lambert, C.J.; Cooper, Graves, and Wintersheimer, JJ., concur. Keller, J.,
dissents by separate opinion, with Stumbo, J., joining that dissenting opinion.
COUNSEL FOR APPELLANT:
William M. Thompson
108 North Main Street
P. 0. Box 851
Somerset, KY 42502
David A. Tapp
117 W. Mt. Vernon Street
Somerset, KY 42501
COUNSEL FOR APPELLEES:
Brent L. Caldwell
Jon A. Woodall
McBrayer, McGinnis, Leslie & Kirkland, PLLC
163 West Short Street, Suite 300
Lexington, KY 40507
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RENDERED: NOVEMBER 21,200l
TO BE PUBLISHED
1999~SC-1111
-DG
BARBARA MONTGOMERY, AS PERSONAL
REPRESENTATIVE OF THE ESTATE OF
HER DECEASED HUSBAND, HAROLD
EDWARD MONTGOMERY
APPELLANT
ON REVIEW FROM COURT OF APPEALS
1998-CA-2879-MR
GARRARD CIRCUIT COURT NO. 97-Cl-160
V.
JOHN MICHAEL MONTGOMERY,
ATLANTIC RECORDS CORPORATION,
AND MAUREEN RYAN
APPELLEES
DISSENTING OPINION BY JUSTICE KELLER
I respectfully dissent from the majority opinion because I believe the trial court’s
summary judgment in favor of Appellees was premature. In my opinion, the question
of whether Harold Montgomery’s name and likeness possessed commercial value at
the time of his death is inherently intertwined with both the determination of whether he
was a public figure - upon which the trial court and Court of Appeals found summary
judgment proper - and the question of whether Appellees’ use of Harold Montgomery’s
name and likeness in a music video production constituted actionable “use for
commercial profit” as defined in KRS 391.170(2) - the dispositive issue for today’s
majority.
However, because the trial court erroneously narrowed the issue before it by
defining a “public figure” as a “national celebrity” and limited pre-trial discovery to
investigation of the acclaim and exposure that Harold Montgomery enjoyed during his
musical career, discovery regarding Harold Montgomery’s possible commercial value
remains incomplete. Although I question whether, even after full discovery, Appellant
could produce evidence creating triable issues of fact, courts do not make summary
judgment decisions by “eyeballing” the merits of the case, but by examining the
evidence to determine whether genuine issues of material fact exist. Since Appellant
has not yet had an opportunity to fully attempt to demonstrate the extent of any
commercial value in Harold Montgomery’s name and likeness, I believe summary
judgment was improper, and I would remand the case to the trial court for it to
reevaluate summary judgment after Appellant completes discovery.
PUBLIC FIGURES AND PRETRIAL DISCOVERY
The lower courts found the dispositive issue in this case to be whether Harold
Montgomery was a public figure whose rights of publicity survived his death. The trial
court granted summary judgment because Appellant could not prove that Harold
Montgomery “vigorously sought the attention of a national audience and has achieved
such a level of success that he is considered a national celebrity.” The Court of
Appeals questioned the trial court’s definition, but affirmed its conclusion because it
found that Appellant had not demonstrated that Harold Montgomery’s name and
likeness possessed “significant commercial value.” While I believe the Court of
Appeals correctly framed the inquiry,’ I question its conclusion because Appellants did
‘a Landham v. Lewis Galoob Toys. inc., 227 F.23d 619, 624 (6* Cir. 2000)
(“Landham correctly argues that he need not be a national celebrity to prevail. But in
order to assert the right of publicity, a plaintiff must demonstrate that there is value in
associating an item of commerce with his identity.“); Id. (“To succeed then, Landham
must show that a merchant would gain significant commercial value by associating an
item of commerce with him.“).
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not have the opportunity to develop all possible evidence as to Harold Mongomery’s
commercial
value.
As one court has held, “[t[he defendant’s act of misappropriating the plaintiffs
identity, however, may be sufficient evidence of commercial value.“’ This evidentiary
inference, of course, is most applicable when the appropriation involves commercial
merchandising3 or advertising,4 but the principle has application in this case as well and
demonstrates the difficulty of separating the “public figure” or “commercial value”
inquiry from the determination of whether the appropriation was done “for commercial
profit.” In this case, Appellant sought evidence through its discovery requests which
may have demonstrated that Appellees appropriated Harold Montgomery’s name and
image because the Appellees recognized the commercial value in the appropriation, but
Appellants found themselves limited by the scope of the discovery and the nature of the
inquiry in the trial court.
Appellant initially submitted interrogatories to Appellee John Michael
Montgomery seeking information relating to production research and profits associated
with the “I Miss You A Little” video, but Appellee declined to answer many of these
questions on the grounds that they would not lead to discoverable information and later
obtained a protective order preventing discovery on these topics. During the
Appellant’s deposition of Appellee John Michael Montgomery, counsel for the
31d. (addressing right of publicity claim involving merchandising of action figure
based on character Appellant portrayed in “Predator,” a 1987 action film).
4See McFarland v. Miller, 14 F.3d 912, 922 (3”’ Cir. 1994) (addressing right of
publicity claim by former child actor - “Spanky” from the “Our Gang” films - against
restaurant owner who named his restaurant after the actor and decorated it with “Our
Gang” pictures).
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Appellees, in accordance with the trial courts discovery limitations, objected to
Appellant’s questions concerning the song and music video, instructed his client not to
answer the questions, and commented:
Whoa. Objection. We’re getting off track, Bill, let’s get
back on track. That doesn’t have a damn thing to do with
whether he’s a public figure or not. . . . I’m objecting to any
questions concerning the video, because it’s not relevant for
our purposes right now. So let’s just move on.
In my opinion, the trial court’s restrictions on Appellant’s access to discovery
materials relating to the marketing and production of music videos possibly prevented
the Appellant from obtaining relevant evidence concerning Harold Montgomery’s
commercial value. While I agree with the Court of Appeals that Appellant has yet to
demonstrate that Harold Montogmery’s name and likeness possess any significant
commercial value, “CR 56 was never intended to be a substitute for a court trial in
cases where a party has not had an opportunity to present all the facts which might help
lead the court to a just determination . . . .‘I5 Now that the Court of Appeals has clarified
the definition of “public figure,” I believe that Appellant should be permitted the
opportunity of full discovery to see whether they can produce evidence sufficient to
create a genuine issue of material fact as to whether Harold Montgomery’s name and
likeness possessed significant commercial value. Accordingly, I would reverse the
grant of summary judgment and remand this case to the trial court for that purpose.
’ ;, KY., 353 S.W.2d 212, 214 (1962). a
h
&Q Steelvest. Inc. v. Scansteel Service Center, KY., 807 S.W.2d 476,480 (1991)
(“Even though a trial court may believe the party opposing the motion may not succeed
at trial, it should not render a summary judgment if there is any issue of material fact
The trial judge must examine the evidence . . . .” (citation omitted)).
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FREEDOM OF EXPRESSION
The majority concludes that Appellees’ use of Harold Montgomery’s name and
likeness in the “I Miss You A Little” music video constitutes “protected free expression
under the U.S. and Kentucky Constitutions,“’ and thus finds no actionable claim under
KRS 391.170’s statutory right of publicity. We appear to be the first court to address a
right-of-publicity action involving visual and audio depictions in a music video, and I
have questions about the appropriateness of our decision to do so. Appellees have
never - in the trial court, before the Court of Appeals, or even before this Court made any claim that Appellant’s claim was not actionable because it infringed upon
their rights under the First Amendment to the United States Constitution.7
I find this a
stark contrast with the persuasive authority upon which the majority relies in which all of
the defendants raised freedom of expression as an affirmative defense to the plaintiffs’
right-of-publicity claims in the trial court8 I believe this Court mistakes its role when it
6Majority Opinion at - S.W.3d -, - (2OOJ (Slip Op. at 7-8).
7Nor has the Attorney General been notified of a constitutional challenge of the
breadth of KRS 391.170. See KRS 418.075. But see Priestlev v. Priestley, KY., 949
S.W.2d 594, 596 (1997).
*Hicks v. C
Q, 464 F.Supp 426 (S.D.N.Y. 1978) (an opinion by a
federal trial court); Titan Sports. Inc v. Comics World Corp., 870 F.2d 85, 87 (2”d Cir.
1988) (“The district court found Comics World’s product to be ‘a bona fide newsstand
publication’ and concluded that this circumstance rendered its use of the photographs
protected by the first amendment.“); Frosch v. Grossett & Dunlap, 427 N.Y.S.2d 828,
829 (N.Y. 1980) (“Special term held that the book here involved is what it purportes [sic]
to be, a biography, and as such did not give rise to a cause of action in favor of the
estate for violation of a right of publicity.“); Stephano v. News Group Publications. Inc.,
474 N.E.2d 580, 581 (N.Y. 1984) (“The trial court granted summary judgment to the
defendant concluding that the article reported a newsworthy event of fashion news, and
was not published for trade or advertising purposes.“); j,
949
F.Supp. 331 (E.D.Pa. 1996) (another opinion by a federal trial court); Parks v. LaFace
Records, 76 F.Supp.2d 775 (E.D.Mich. 1999) (yet another opinion by a federal trial
court); Roaers v. Grimaldi, 875 F.2d 994, 997 (2nd Cir. 1989) (“The District Court
(continued...)
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sua sponte raises, addresses, and decides a constitutional issue which the parties have
had no opportunity to argue. Although I agree with the majority that a substantial issue
exists in this case as to whether Appellant’s claim is actionable given the protections of
the First Amendment, and I recognize that this is a question of law, I believe the trial
court should make this determination on remand. At the very least, this Court should
direct the parties to brief and/or reargue this issue. For reasons outlined below, I also
disagree with the test under which the majority balances the interests involved.
First, I take issue with the majority’s treatment of music videos as a medium
inherently implicating core First Amendment expressive rights. In my opinion, the
majority’s analytical framework ignores the fact that the nature of modern television
advertising makes it difficult to separate commercial speech from other forms of
expression.s
Second, I believe the majority fundamentally mischaracterizes the nature of
music videos when it states - without citation -that “music videos are aired on
television not as advertisements but as the main attraction, the airing of which,
consequently, is supported by commercial advertisements.“” Even the limited
evidentiary record in this case refutes the conclusion that music videos exist as art for
“(. ..continued)
granted summary judgment to the defendants. Judge Sweet found that defendants’
use of Rogers’ first name in the title and screenplay of the film was an exercise of
artistic expression rather than commercial speech.“).
9See Alex Kozinksi & Stuart Banner, “Who’s Afraid of Commercial Speech?” 76
Va. L. Rev. 627, 638641 (1990) (discussing commercial speech in the context of
persuasive television advertisements and music videos and concluding that “the
distinction between commercial and noncommercial speech is extraordinarily difficult to
make in any satisfactory way.“).
“Majority Opinion at - S.W.3dP, - (200_) (Slip. Op. at 8-9)
-6-
art’s sake. Appellee John Michael Montgomery’s affidavit includes a statement, “The
primary object of a music video is to promote the artist,” and the entire context of the
music video business is premised on promotion and advertisement:
[Rlecord labels produce music videos to promote the sale
of albums. . . . A music video stands to an album the same
way that a movie “trailer” or “teaser” stands in relation to a
movie; it represents an attempt to entice a customer to
purchase the right to hear or see the larger work. Indeed,
music videos are “doubly” commercial speech. MTV, VHI ,
the Nashville Network, and other music-video cable
channels select and show the videos that they believe will
generate the highest advertising revenue. The video
channels’ unwillingness to broadcast controversial materials
- materials likely to spook boycott-wary advertisers provide additional evidence of the essentially commercial
nature of the undertaking.”
Even the primary authority relied upon by the majority, Parks,”
recognizes that music videos are one of many tools used to promote and advertise
“Ronald J. Krotoszynski, Jr., “Into the Woods: Broadcasters, Bureaucrats, and
Children’s Television Programming,” 45 Duke L.J. 1193, 1219 n. 128 (1996). See also
Kozinksi & Banner, supra note 9 at 641 (“These three-minute films sometimes tell
stories, sometimes depict the musicians performing their songs, sometimes are little
more than mind-numbing collections of smoke and special effects. Music videos serve
one overriding purpose: to promote record sales.“); Robert G. Martin, “Music Video
Copyright Protection: Implications for the Music Industry,” 32 UCLA L.Rev. 396, 397
(1984) (“Virtually every popular music artist releasing a record now releases one or
more music videos for promotional purposes and the effectiveness of music videos as
advertising tools for the $3.8 billion record and tape sales industry is beyond
question.“); John A. Rogosta, “Proceedings of the Canada-United States Law Institute
Conference: NAFTA Revisited: The Cultural Industries Exemption from NAFTA - Its
Parameters,” 23 Can.-U.S. L.J. 165, 173 (1997) (“[Mlusic video channels get music
videos for free . . . because it is viewed as a commercial.“).
‘*Supra note 8.
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bands and albums.13
Other courts have made similar observations in matters involving
the music industry.14
Of course, a profit-motive, standing alone, will strip an expressive work of its
constitutional protection. However, “the state’s interest in preventing the outright
misappropriation of. . . intellectual property by others is not automatically trumped by
the interest in free expression or dissemination of information; rather, . . . the state law
interest and the interest of free expression must be balanced, according to the relative
importance of the interests at stake.“‘5 In my opinion, the litmus test the majority
appropriates from Parks - “The right of publicity is . . . inapplicable under the First
Amendment if the content of an expressive work bears any relationship to the use of a
131d. at 778 (grouping the “Rosa Parks” music video with other customary music
business advertising and promotion devices).
14$& Morrill v. The Smashina Pumpkins, 157 F.Supp.2d 1120, 1123 (C.D.Cal.
2001) (a copyright infringement action involving the Smashing Pumpkins’ use of footage
from “a music video created to promote Defendant [and former Smashing Pumpkin]
Corgan and his [former] band, The Marked.” (emphasis added)); Tsiolis v. Interscope
Records. Inc., 946 F.Supp. 1344, 1349 (N.D.III. 1996) (a trademark infringement action
against Andre Young’s (a.k.a. “Dr. Dre”) post-Death Row Records record label,
Aftermath Entertainment, in which the court listed a music video among “promotional
materials” which also included a magazine print advertisement, a bumper sticker, a tshirt, and a poster); New 693
Inc.,
F.Supp 1517 (S.D.N.Y. 1988) (a copyright acibn involving dueling Nightmare on-ElmStreet-themed rap videos in which the court noted that: “Testimony established that the
songs promoted by the two videos are in direct competition in the rap music market.
Certainly, with two competing videos in the music marketplace, each video will get less
promotional time on MW. The decrease in air time of the Fat Boys video will
undoubtably result in lower album sales for the Fat Boys.“); Polev v. Sony Music
n
Etertainment., 619 N.Y.S.2d 923, 924 (N.Y.Sup.Ct. 1994) (breach of contract suit
by minor band against record company in which the court observed that the defendant
advanced funds to the group for “the promotion of the album and the group through
music videos.“).
15Comedv Ill Productions. Inc. v. Saderup, 21 P.3d 797, 806 (Cal. 2001).
-8-
celebrity’s name”16 - puts the cart before the horse by presupposing the nature of the
work itself without regard to questions raised by its content. Under the logic of the
majority opinion, any use in a music video of even another recording artists - for
example, Appellee John Michael Montgomery’s - name or likeness would fall within
the protections of the First Amendment if the music video’s content had any,
presumably even a tangential or symbolic, relationship to the appropriated recording
artist’s identity. In my opinion, the governmental interest in protecting persons from
such appropriations demands greater protection than an amorphous “any relationship”
test can accommodate. Accordingly, I believe the majority commits a mistake by
applying it in this case to a work which falls within the gray areas between commercial
speech and other forms of expression.
Recently, in H,”the Supreme Court of
Come
California addressed the tension between California’s statutory right of publicity and
First Amendment free expression principles in the context of an action brought against
a defendant who created and sold lithographs and T-shirts bearing a likeness of The
Three Stooges. Turning to copyright law for guidance, the court focused its inquiry
upon how the larger work utilized the images it appropriated and found that the
appropriate inquiry in such cases is whether the manner in which another person’s
intellectual property is used “transforms” it into an independently expressive work:
mhe first fair use factor - “the purpose and character of
the use” - does seem particularly pertinent to the task of
reconciling the rights of free expression and publicity. As the
16P rks v.
a supra note 8 at 780 (applying the litmus test to the
use of a public figure’s name in a ‘musical composition); wv. supra note
8 at 1004 (applying the test to a cinematic release).
“m note 15.
-9-
Supreme Court has stated, the central purpose of the inquiry
. . . “is to see, in Justice Story’s words, whether the new
work merely ‘supersedes the objects’ of the original creation
[citations], or instead adds something new, with a further
purpose or different character, altering the first with new
expression, meaning, or message; it asks, in other words,
wither and to what extent the new work is ‘transformative.’ . . . ”
This inquiry into whether a work is “transformative”
appears to us to be necessarily at the heart of any judicial
attempt to square the right of publicity with the First
Amendment. As the above quotation suggests, both the
First Amendment and copyright law have a common goal of
encouragement of free expression and creativity, the former
by protecting such expression from government interference,
the latter by protecting the creative fruits of intellectual and
artistic labor. The right of publicity, at least theoretically,
shares this goal with copyright law. When artistic expression
takes the form of a literal depiction or imitation of a celebrity
for commercial gain, directly trespassing on the right of
expression without adding significant expression beyond that
trespass, the state law interest in protecting the fruits of
artistic labor outweighs the expressive interests of the
imitative artist.
On the other hand, when a work contains significant
transformative elements, it is not only especially worthy of
First Amendment protection, but it is also less likely to
interfere with the economic interest protected by the right of
publicity. . . . Accordingly, First Amendment protection of
such works outweighs whatever interest the state might have
in enforcing the right of publicity. The right-of-publicity
holder continues to enforce the right to monopolize the
production of conventional, more or less fungible, images of
the celebrity.
’ ‘We emphasize that the transformative elements or
creative contributions that require First Amendment
protection . . . can take many forms, from factual reporting to
fictionalized portrayal, from heavy-handed lampooning to
subtle social criticism.
Another way of stating the inquiry is whether the celebrity
likeness is one of the “raw materials” from which an original
work is synthesized, or whether the depiction or imitation of
the celebrity is the very sum and substance of the work in
question. We ask, in other words, whether a product
containing a celebrity’s likeness is so transformed that it has
become primarily the defendant’s own expression rather
-lO-
than the celebrity’s likeness. And, when we use the word
“expression,” we mean expression of something other than
the likeness of the celebrity.‘8
In my opinion the Comedv Ill Production. Inc. test reconciles the competing
interests more appropriately than the one utilized by the majority. And, because the
commercial value of an appropriated name or likeness can be relevant to the inquiry of
whether a work is “fransformative,“‘g
I believe we should remand this case to the trial
court for it to engage in this balancing with all the appropriate evidence before it.
Stumbo, J., joins this dissent.
‘*L at 808-809.
19See Id. at 810:
Furthermore, in determining whether a work is sufficiently
transformative, courts may find useful a subsidiary inquiry,
particularly in close cases: does the marketability and
economic value of the challenged work derive primarily from
the fame of the celebrity depicted? If this question is
answered in the negative, then there would generally be no
actionable right of publicity. When the value of the work
comes primarily from some source other than the fame of
the celebrity - from the creativity, skill, and reputation of the
artist - it may be presumed that sufficiently transformative
elements are present to warrant First Amendment
protection.
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