by

Joseph D. Schleimer
Schleimer & Freundlich, LLP
Beverly Hills, California

Part I of this article was published in Entertainment Law & Finance in October, 2000.

Combined Parts I and II were published by West Publishing in
Viera & Breimer, Entertainment, Publishing and the Arts Handbook (2001-2002 Edition)

(Part I of II)

     The use of computer-generated performances by "virtual actors" is already a functional production technique. As this technology develops and the cost comes down, entirely new motion pictures may be produced "starring" computer-generated "reanimations" of well-known actors such as Humphrey Bogart, Marilyn Monroe or Gary Cooper.

        Will filmmakers need permission from the "virtual" performers’ estates?

        Unfortunately, under current law, the available legal protection for the "virtual rights" of actors is highly uncertain. Where deceased actors are concerned, in an entertainment context, it is far from clear there is any legal protection at all. Indeed, because of various legal loopholes, even living actors should be concerned that virtual renditions of themselves will appear in films or television programs without their consent.

                There are three major obstacles to enforcing the "virtual rights" of actors:

· Under the law of many states, the legal protection of name, likeness and voice (known as the "right of publicity") ends at death.

· Many states limit the right of publicity to commercial advertising, and do not regard the use of name, voice or likeness in entertainment as an infringement.

· A recent spate of cases has held that the Copyright Act preempts laws protecting the right of publicity. This "preemption problem" could have the effect of casting virtual rights into the public domain--or vesting those rights in the various owners of the copyrights to films in which actors, living or dead, have previously appeared.

        Lack of Protection for Deceased Actors

       As a result of lobbying by the motion picture/television industry, California's post-mortem right of publicity statute (Calif. Civil Code §990, re-codified as Civil Code §3344.1), only applies to unauthorized uses directly connected to the advertising or promotion of a product. Thus, "virtual rights" are not protected in an entertainment context. See, Civil Code §3344.1(a)(2).

        In Estate of Elvis Presley v. Russen, 513 F.Supp. 1339 (D.N.J. 1981), Elvis Presley's estate obtained an injunction under the federal Lanham Act to halt an Elvis Presley imitator from doing business as the "Big El Show." However, the U.S. District Court limited the scope of its decision by holding that the unauthorized stage show could proceed so long as it was advertised as an imitation of Elvis Presley, to eliminate "consumer confusion" as to sponsorship of the show. Thus, under the holding in Russen, one could use a computer-generated rendition of Elvis Presley in a motion picture--arguably without the permission of his estate--so long as the film was advertised, promoted and publicized as a simulation of Elvis.

        Tennessee's Personal Rights Protection Act of 1984, Tenn. Code §47-25-1101, et. seq., which established a descendible right of publicity, is broadly worded and on its face appears to provide protection against the unauthorized use of a virtual reproduction of an actor in entertainment programs. Unfortunately, the statute has already been construed as only applying to advertising, not to entertainment content. See, Apple Corps. Ltd. v. A.D.P.R., Inc., 843 F.Supp. 342, 347 n.2 (M.D.Tenn. 1993).

        Indiana’s right-of-publicity statute provides excellent post mortem protection against name and likeness infringement, lasting for 100 years after death. However, like the California law, the Indiana law is limited to commercial advertising--and specifically exempts film and television programs. See Indiana Code § 32-13-1-1(c)(1)(A).

        Several other states have right-of-publicity statutes, but their post mortem protection varies, and in all cases they expressly (or impliedly) limit protection to advertising and equivalent "commercial" uses. For example, the Texas statute (known as the "Buddy Holly Law") expressly exempts the use of any deceased person’s name, likeness or voice in "a play, book, film, radio program or television program." Tex. Prop. Code §26.012(a)(1). See, also, Fla. Stat. §540.08(1) (restriction limited to uses "for purposes of trade or for any commercial or advertising purpose...."); Utah Code §45-3-3 (prohibition only applies to false endorsement of a product or service); Va. Code §8.01-40(A)(prohibition applies to unauthorized use "for advertising or for the purposes of trade..."); Wash. Rev. Code §63.60.050 (statute applies to unauthorized use "on or in goods, merchandise or products...or for purposes of advertising products, merchandise, goods, or services....")

        Most intellectual property lawyers believe that virtual rights will ultimately find protection under trademark law. With state-of the-art technology, "synthespian" characters have already become so realistic that a substantial portion of the public is likely to be deceived into believing that computer-generated virtual performances have been created, sponsored, authorized or endorsed by the actors’ estates or constitute real performances by living actors. From these facts, a classic trademark infringement case could be built under the Lanham Act, 15 U.S.C. §1125.

        This legal theory was dealt a setback in Pirone v. MacMillan, 894 F.2d 579, 583 (2d Cir. 1990), where the court rejected a trademark claim based on the unauthorized use of Babe Ruth’s picture. The court agreed that a deceased celebrity’s image could be subject to trademark protection, but only for a particular, fixed image. By definition, "virtual actors" are moving pictures, not fixed images. Thus, the holding in Pirone undermines any trademark claim based on the creation of a virtual motion picture reanimation of a real person.

        The "Preemption Problem"

       Actors and their estates seeking to protect virtual rights are also going to have to contend with a "preemption problem" raised by Comedy III Productions, Inc. v. New Line Cinema, 200 F.3d 593 (9^th Cir. 2000). In that case, producers used an old clip of The Three Stooges in the feature film "The Long Kiss Goodnight," without permission. Because the copyright to the film clip had expired, the heirs sued for violation of trademark and misappropriation of personality under the Lanham Act and California state law. The Ninth Circuit didn’t just reject the claim, it delivered a sweeping blow to the protection of virtual rights in general by broadly declaring that all state law claims based on the use of film footage in the public domain are per se preempted by the Copyright Act. The court even applied a quasi-preemption analysis to void the heirs’ claims under the Federal Lanham Act.

        The adverse implication of the Comedy III case for the protection of virtual rights is serious, because in most cases the computer-generation of "synthespian" performances will begin with the use of pre-existing film footage to derive an algorythmic "model" of the actor’s image, voice, and movements. If the "source footage" is taken from the public domain, under Comedy III the actor’s heirs will have no legal recourse.

        By extension, the Comedy III holding could also be applied to source footage that is still copyrighted, if the copyright owner authorizes use of the footage to create a virtual performance, because the Copyright Act specifically provides that the owner of a copyright has the right to make "derivative" works. 17 U.S.C. §106(2).

        Comedy III, and an earlier preemption case involving an actor, Fleet v. CBS, Inc. (1996) 50 Cal.App.4th 1911, 58 Cal.Rptr.2d 645, announced the supremacy of copyright law over the right of publicity, thus doctrinally undermining any actor claims based on the use of film footage as "source" material for virtual performances. The Fleet case is especially troubling, because it invoked Copyright Act preemption to expressly derogate the rights of living actors.

        Because actors rarely own the copyright to their films, that doctrine would legally vest the copyright owners of the various films an actor has appeared in (during a whole career) with the right to derive virtual performances, using those films as the "source" footage.

        The First Amendment Problem

       Another obstacle to the enforcement of "virtual rights" is the First Amendment. Although courts have balanced trademark, copyright and right-of-publicity claims against First Amendment defenses for years, the constitutional issue poses an especially daunting problem where synthespian performances are used in public affairs, biographical, or docudrama formats.

        Courts have long upheld the First Amendment right to make "unauthorized" films about real people, especially public figures. The First Amendment offers a particularly strong shield for the creation of allegedly "true" biographies. Would First Amendment protection allow a film producer to make a "true" biography of Harrison Ford, which "starred" a photorealistic, computer-generated clone of Mr. Ford? What if it was a docudrama about Mr. Ford’s life, with fictionalized scenes and imagined dialog?

        Would it make any difference if virtual reanimation was used to make a film biography about a political figure, such as Richard Nixon? Under First Amendment doctrine, this would concern a "matter of public interest," and any attempt by the Nixon estate to block such a film based on a post mortem right of publicity would have little or no chance of success. Actors, like politicians, are considered public figures, and the courts have held that even pure entertainment may concern a "matter of public interest."

        Films that use virtual actors as "characters" in purely fictional works would pose an even more problematic First Amendment issue. Consider a synthespian Humphrey Bogart starring as Humphrey Bogart in a fictitious film that includes well-written dialog about religion, philosophy, politics, and criminal justice. If the Bogart estate sued for infringement of the right of publicity, the political, religious, and public interest content would strengthen the First Amendment defense--even though the gist of the film was the blatant exploitation of the screen persona of a famous star without the permission of his estate.

        How will the courts react when, inevitably, the adult film industry begins using virtual celebrities in sex films? Will courts enforce a right of publicity or trademark right if the adult films "star" virtual renditions of, for example, John F. Kennedy with Marilyn Monroe? What about an adult film "starring" virtual recreations of Clark Gable and Carol Lombard? The porno industry can be relied on to push the edge of the First Amendment "envelope," so it is probably just a matter of time before such cases are heard and decided.

        The adult film cases may well establish precedents in favor of protecting virtual rights, because the courts have at times been willing to re-shape constitutional doctrine and enforce trademark rights where a First Amendment defense is asserted by adult filmmakers.

See, also, PART II: "Aggressive Lawyering to Protect the "Virtual Rights" of Living and Deceased Actors,"  by Joseph D. Schleimer, Esq.

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