Did you know that celebrities, professional athletes, actors, and other famous people have a valuable property right in their very persona? That property right is called the “right of publicity” and extends to gaming, particularly as streaming platforms like Twitch allow gamers to develop their own brand and following. There is no question that internet personalities like Ninja, Dr. Disrespect, Summit1G, Shroud, and others have their own brands – unique styles that have helped them gain millions of fans. That branding naturally translates into lucrative sponsorships and 6, 7, and even 8-figure exclusive streaming deals that are similar to those enjoyed by celebrities in movies, music, and sports.
However, you don’t have to have millions of followers to develop a brand that has value and should be protected. As a streamer, eSports professional, tournament organizer, or commentator, you may have developed a persona, a unique style, catchphrases, signature moves, and other aspects that may make you especially attractive to your audience. That unique brand is called your “right of publicity.” And protecting that right is protecting your brand – so it is not only critical to protect it from misappropriation (just as you would with a trademarked logo), it is also critical to ensure that you do not unwittingly sign a contract that transfers that valuable right without you receiving appropriate compensation.
The first step to protecting yourself is to educate yourself. Read on.
The International Trademark Association defines the “right of publicity” as:
An intellectual property right that protects against the misappropriation of a person’s name, likeness, or other indicia of personal identity – such as nickname, pseudonym, voice, signature, likeness, or photograph – for commercial benefit.– http://www.inta.org/topics/right-of-publicity/
Unlike patents, copyrights, and trademarks, the “right of publicity” is not found in any federal statute. Rather, it is a matter of state law and thus varies from state to state. What is more confusing is that some states (like California) have specific laws that expressly protect certain aspects of a person’s identity and set out a statutory process to enforce that right. Other states (like Michigan) do not have statutes that protect the “right of publicity” but recognize that right through the common law (meaning there are court cases that can be cited to support a claim). However, even where a state like California protects only certain aspects of a person’s identity under state law, a person can still raise common law claims to other aspects – in other words, California statutory scheme is not exclusive of the common law. For example, a celebrity’s distinctive voice is expressly protected under California law, but an imitation of that same voice is not. However, a celebrity may still file suit against an unauthorized imitator under the common law even in states where there is a statute. Confused? The main point is regardless of which state you are in, you have rights and remedies to protect your persona from misuse and misappropriation.
So what do you need to prove for a right of publicity claim? Generally, the plaintiff needs to show (1) the use of “identity”; (2) the appropriation of the plaintiff’s “identity” to the defendant’s advantage, whether commercial or otherwise; (3) lack of consent; and (4) resulting injury. The term “identity” is defined broadly and essentially protects any unique personal aspects, such as tone of voice, manner of dress, catchphrases, color schemes, and many other categories. Recently, I wrote about Detroit’s Eastern Market Brewing Co. dealing with a cease-and-desist from Barry Sanders after the brewery released Same Old Lager (a play on the phrase “same old Lions” that describes the teams consistently underwhelming performance and leadership turmoil). The problem was not the slogan or the riffing on the Lions – rather, it was the brewery’s can design featuring a pixilated football player wearing the Lions’ silver uniform with Sanders’ number 20. According to Sanders’ legal team, the brewery misappropriated his “identity” and thereby implied an endorsement or connection that did not exist. In response, the brewery changed the can design to replace the football player with the brewery’s own mascot and Same Old Lager is available once again.
What about parodies and fair use? The right of publicity is not absolute and cannot suppress the right to free speech protected by the First Amendment. Parody, commentary, news, and other so-called “fair uses” are protected from right of publicity claims. Because each situation is different, there is no bright line test, and judges are essentially called on to serve as art critics to determine what merits protection. As a guideline, the courts rely on the “transformative use test” to determine whether the derivative work sufficiently “transforms” the original to acquire its own independent economic value. For example, a t-shirt with a charcoal drawing of the Three Stooges failed the transformative test because the primary value of the t-shirt came from the identity of the Three Stooges. The defendant t-shirt maker misappropriated the economic value associated with their identity, and the fact that the image was a charcoal drawing (as opposed to a photograph) was an insufficient creative element to predominate the work. See Comedy III Productions Inc. v. Gary Saderup Inc., 25 Cal. 4th 387, 58 USPQ2d 1823 (Cal. 2001). In contrast, a comic book series featuring characters based on Johnny and Edgar Winter as half-human/half-worm villains was sufficiently transformative to defeat the musicians’ right of publicity claim. Despite the similarity in names and depiction with long white hair and pale complexion, the court noted that the primary economic value of the comic book was in the “fanciful, creative characters” and not the actual identity of the Winter brothers. See Winter v. DC Comics, 30 Cal. 4th 881, 66 USPQ2d 1954 (Cal. 2003) (66 PTCJ 210, 6/13/03).
As video games have become more sophisticated, they have also become targets of right of publicity claims. In a recent case, Arizona State’s quarterback prevailed against Electronic Arts when their NCAA football game omitted the quarterback’s name, but used his number, position, height, weight, and other characteristics. Other football game cases against Electronic Arts established amateur and retired athletes’ rights to their likeness, even where the publisher changed the jersey numbers and physical likeness. There are many unsettled questions with regard to the law of publicity, especially as new kinds of celebrities and mediums are examined, and the law is constantly evolving.
What does this mean for streamers, eSports professionals, and tournament organizers? Initially, that means you have a protected and valuable right in your identity. For example, there is little doubt that Ninja (probably the most famous Fortnite player and streamer) has a protected right in his image. That includes not only his name and likeness, but his distinctive hairdo, characteristics of his gameplay, and other aspects. Also, be careful what you sign. The right of publicity, like other intellectual property rights, is assignable and can easily be transferred as a part of a contract. For example, many professional eSports contracts require the player to transfer all rights of publicity to the team organization. As an up-and-coming player you may not necessarily care or gloss over that part, but what happens if you develop an independent celebrity? What if you come up with a move, look, style, catchphrase that goes viral? The team would own it, and even if you left, it is possible that the team could successfully enforce that right to your own creation against you. As one of the more bizarre examples, Twitch suspended Dragonforce guitarist Herman Li for playing his “own” music. While details are murky and Li is back on Twitch, the likely reason is that Li assigned his rights to a label, and the label holds the right to demand a proper license from a streamer for the music’s reproduction. Music streaming licenses are a whole different issue – read my FAQ on playing music on Twitch to learn more.
Now that you are educated, the second step to protecting yourself is is retaining the right counsel who knows gaming. Intellectual property rights and licenses are paramount in the digital age. It is more important than ever to consult with a knowledgeable attorney before signing that team contract or sponsorship deal. And, when marketing a new product, attorney review is likewise essential to avoid legal issues that derail your launch. Remember, sharing your marketing idea, new product, or other money-making scheme with your attorney is confidential and is protected by attorney-client privilege. At the same time, failing to consult an attorney at the start can cost you much more later on in responding to cease-and-desist letters and even dealing with a lawsuit. Finally, if you suspect your persona or brand is being misused by someone else, talk to an attorney who can advise you of your rights, and if there is a violation, send a takedown demand or a cease-and-desist letter.
On a final note, the same principles apply to Instagram influencers, podcasters, Twitter accounts, and essentially anyone else who has built an online brand through an online presence. Protect yourself and your labors by doing it right.
Disclaimer: This article is not intended to be and does not constitute legal advice. Do not take any action or refrain from taking any action based on this article, and always consult with a qualified professional about the circumstances of your particular case.
© 2020 Artaev at Law PLLC. All rights reserved.