Comedy III Productions v. Gary Saderup, Inc.

• Citation: 106 Cal.Rptr.2d 126,21 P.3d 797,25 Cal.4th 387
• Decision Date: 30 April 2001
• Docket Number: No. S076061.,S076061.
• Court: California Supreme Court
• Parties: COMEDY III PRODUCTIONS, INC., Plaintiff and Respondent, v. GARY SADERUP, INC., et al., Defendants and Appellants.

106 Cal.Rptr.2d 126

25 Cal.4th 387

21 P.3d 797

COMEDY III PRODUCTIONS, INC., Plaintiff and Respondent, v. GARY SADERUP, INC., et al., Defendants and Appellants.

No. S076061.

Supreme Court of California.

April 30, 2001.

Cooper, Kardaras & Scharf, Brand Cooper, Pasadena, Victor E. Aguilera, Sherman Oaks, James C. Potepan, Edward C. Wilde and Stuart L. Brody, Sacramento, for Defendants and Appellants.

Benjamin, Lugosi & Benjamin, Bela G. Lugosi, Robert N. Benjamin and Caroline H. Mankey, Glendale, for Plaintiff and Respondent.

Manatt, Phelps & Phillips and Mark S. Lee, Los Angeles, for The Autry Survivor's Trust, ETW Corporation, The Diana, Princess of Wales Memorial Fund and Elvis Presley Enterprises, Inc., as Amici Curiae on behalf of Plaintiff and Respondent.

Geffner & Bush, Leo Geffner and Jospeh A. Kohanski, Burbank, for Screen Actors Guild, Inc., as Amicus Curiae on behalf of Plaintiff and Respondent.

David S. Welkowitz as Amicus Curiae on behalf of Plaintiff and Respondent.

Margaret A. Boulware; Ross J. Charap, New York, NY; Morton D. Goldberg; Joseph N. Welch, Sacramento; Knobbe, Martens, Olson & Bear, Joseph F. Jennings, Newport Beach, Joseph S. Cianfrani and Joseph R. Re for American Intellectual Property Law Association as Amicus Curiae on behalf of Plaintiff and Respondent.

Christensen, Miller, Fink, Jacobs, Glaser, Weil & Shapiro, Kevin J. Leichter, Los Angeles, Caroline H. Mankey, Glendale; Law Offices of Robert A. Finkelstein and Robert A. Finkelstein for Wayne Enterprises, Inc., Sheffield Enterprises, Inc., Global Icons LLC and Groucho Marx Productions, Inc., as Amici Curiae on behalf of Plaintiff and Respondent.

MOSK, J.

A California statute grants the right of publicity to specified successors in interest of deceased celebrities, prohibiting any other person from using a celebrity's name, voice, signature, photograph, or likeness for commercial purposes without the consent of such successors. (Former Civ.Code, § 990.)¹ The United States Constitution prohibits the states from abridging, among other fundamental rights, freedom of speech. (U.S. Const., 1st and 14th Amends.) In the case at bar we resolve a conflict between these two provisions. The Court of Appeal concluded that the lithographs and silkscreened T-shirts in question here received no First Amendment protection simply because they were reproductions rather than original works of art. As will appear, this was error: reproductions are equally entitled to First Amendment protection. We formulate instead what is essentially a balancing test between the First Amendment and the right of publicity based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation. Applying this test to the present case, we conclude that there are no such creative elements here and that the right of publicity prevails. On this basis, we will affirm the judgment of the Court of Appeal.

I. The Statute

In this state the right of publicity is both a statutory and a common law right. The statutory right originated in Civil Code section 3344 (hereafter section 3344), enacted in 1971, authorizing recovery of damages by any living person whose name, photograph, or likeness has been used for commercial purposes without his or her consent. Eight years later, in Lugosi v. Universal Pictures (1979) 25 Cal.3d 813, 160 Cal.Rptr. 323, 603 P.2d 425 (Lugosi), we also recognized a common law right of publicity, which the statute was said to complement (id. at p. 818 and fn. 6, 160 Cal.Rptr. 323, 603 P.2d 425). But because the common law right was derived from the law of privacy,² we held in Lugosi that the cause of action did not survive the death of the person whose identity was exploited and was not descendible to his or her heirs or assignees. (25 Cal.3d at pp. 819-821, 160 Cal.Rptr. 323, 603 P.2d 425.)

In 1984 the Legislature enacted an additional measure on the subject, creating a second statutory right of publicity that was descendible to the theirs and assignees of deceased persons. (Stats.1984, ch. 1704, § 1, p. 6169.) The statute was evidently modeled on section 3344: many of the key provisions of the two statutory schemes were identical. The 1984 measure is the statute in issue in the case at bar. At the time of trial and while the appeal was pending before the Court of Appeal, the statute was numbered section 990 of the Civil Code.

Section 990 declares broadly that "Any person who uses a deceased personality'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 prior consent from the person or persons specified in subdivision (c), shall be liable for any damages sustained by the person or persons injured as a result thereof." (Id., subd. (a).) The amount recoverable includes "any profits from the unauthorized use," as well as punitive damages, attorney fees, and costs. (Ibid.)

The statute defines "deceased personality" as a person "whose name, voice, signature, photograph, or likeness has commercial value at the time of his or her death," whether or not the person actually used any of those features for commercial purposes while alive. (§ 990, subd. (h).)

The statute further declares that "The rights recognized under this section are property rights" that are transferable before or after the personality dies, by contract or by trust or will. (§ 990, subd. (b).) Consent to use the deceased personality's name, voice, photograph, etc., must be obtained from such a transferee or, if there is none, from certain described survivors of the personality. (Id., subds. (c), (d).) Any person claiming to be such a transferee or survivor must register the claim with the Secretary of State before recovering damages. (Id., subd. (f).)

The right to require consent under the statute terminates if there is neither transferee nor survivor (§ 990, subd. (e)), or 50 years after the personality dies (id., subd. (g)).³

The statute provides a number of exemptions from the requirement of consent to use. Thus a use "in connection with any news, public affairs, or sports broadcast or account, or any political campaign" does not require; consent. (§ 990, subd. (j).) Use in a "commercial medium" does not require consent solely because the material is commercially sponsored or contains paid advertising; "Rather it shall be a question of fact whether or not the use ... was so directly connected with" the sponsorship or advertising that it requires consent. (Id., subd. (k).) Finally, subdivision (n) provides that "[a] play, book, magazine, newspaper, musical composition, film, radio or television program" (id., subd. (n)(1)), work of "political or newsworthy value" (id., subd. (n)(2)), "[s]ingle and original works of fine art" (id., subd. (n)(3)), or "[a]n advertisement or commercial announcement' for the above works (id., subd. (n)(4)) are all exempt from the provisions of the statute.

II. Facts

Plaintiff Comedy III Productions, Inc. (hereafter Comedy III), brought this action against defendants Gary Saderup and Gary Saderup, Inc. (hereafter collectively Saderup), seeking damages and injunctive relief for violation of section 990 and related business torts.⁴ The parties waived the right to jury trial and the right to put on evidence, and submitted the case for decision on the following stipulated facts:

Comedy III is the registered owner of all rights to the former comedy act known as The Three Stooges, who are deceased personalities within the meaning of the statute.

Saderup is an artist with over 25 years' experience in making charcoal drawings of celebrities. These drawings are used to create lithographic and silkscreen masters, which in turn are used to produce multiple reproductions in the form, respectively, of lithographic prints and silkscreened images on T-shirts. Saderup creates the original drawings and is actively involved in the ensuing lithographic and silkscreening processes.

Without securing Comedy III's consent, Saderup sold lithographs and T-shirts bearing a likeness of The Three Stooges reproduced from a charcoal drawing he had made. These lithographs and T-shirts did not constitute an advertisement, endorsement, or sponsorship of any product.

Saderup's profits from the sale of unlicensed lithographs and T-shirts bearing a likeness of The Three Stooges was $75,000 and Comedy III's reasonable attorney fees were $150,000.

On these stipulated facts the court found for Comedy III and entered judgment against Saderup awarding damages of $75,000 and attorney fees of $150,000 plus costs. The court also issued a permanent injunction restraining Saderup from violating the statute by use of any likeness of The Three Stooges in lithographs, T-shirts, "or any other medium by which [Saderup's] art work may be sold or marketed." The injunction further prohibited Saderup from "Creating, producing, reproducing, copying, distributing, selling or exhibiting any lithographs, prints, posters, t-shirts, buttons, or other goods, products or merchandise of any kind, bearing the photograph, image, face, symbols, trademarks, likeness, name, voice or signature of The Three Stooges or any of the individual members of The Three Stooges." The sole exception to this broad prohibition was Saderup's original charcoal drawing from which the reproductions at issue were made.

Saderup appealed. The Court of Appeal modified the judgment by striking the injunction. The court reasoned that Comedy III had not proved a likelihood of continued violation of the statute, and that the wording of the injunction was overbroad because it exceeded the terms of the statute and because it "could extend to matters and conduct protected by the First Amendment...."

The Court of Appeal affirmed the judgment as thus modified, however,...