Apple has been sued by Jerome Lawson, lead singer of the classic R&B a cappella group The Persuasions in California Superior Court for its use of a Jamie xx song in a 2015 iPhone 6 commercial (the “Commercial”).
In his complaint filed January 24, 2017 (“Complaint”), Lawson asserts that Apple violated his right to publicity under California state law and breached the Screen Actor Guild (“SAG”) and American Federation of Television and Radio Artists (“AFTRA”) collective bargaining agreements (“SAG-AFTRA Agreement”) for its use of the 2015 Jamie xx song “I Know There’s Gonna Be (Good Times)” (the “Song”), which samples The Persuasions’ 1971 song “Good Times” (the “Sample”). Lawson alleges that Apple’s use of the Sample in the Song violates language in the SAG-AFTRA Agreement stating “no part of . . . any phonograph record, tape or other audio recording . . . made under the jurisdiction of AFTRA . . . shall be used in commercials without separately bargaining with the singers and reaching an agreement regarding such use prior to utilization of such . . . soundtrack.” Complaint at 3-4; see also Section 28 of the SAG Commercials Contract. Lawson asserts that he never consented to Apple’s use of his voice in the Commercial, and that such use required a separate negotiated consent, independent of any license Jamie xx may have given Apple with respect to the Song. Complaint at 4.
An individual has a protectable right to publicity under California law. Under Cal. Civ. Code § 3344, an individual has a right to publicity with respect to the individual’s name, voice, signature, photograph, and likeness. The statute specifically prohibits “knowing” use “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[.]” Cal. Civ. Code § 3344(a). In order to demonstrate a violation, an individual must demonstrate that:
- there a “knowing” use of the plaintiff’s protected identity;
- the use for advertising purposes; and
- there is a direct connection between the use and the commercial purpose.
See, e.g., Newcombe v. Adolf Coors Co., 157 F.3d 686, 692 (9th Cir. 1998).
Similarly, California common law imparts a four-part test for violation of right to publicity requiring the plaintiff to demonstrate:
- the defendant used the plaintiff’s “identity”;
- the defendant appropriated the plaintiff’s name or likeness to the defendant’s advantage, commercially or otherwise;
- the defendant did so without the plaintiff’s consent; and
- the plaintiff suffered an injury.
See White v. Samsung, 971 F.2d 1395, 1397 (9th Cir. 1992). Here, Lawson’s right to publicity claim arises under California common-law. See Complaint at 4.
Lawson’s claims may, however, be preempted by federal copyright law. A right of publicity fails if it is too similar to a copyright claim. See Laws v. Sony Music, 294 F.2d 1160 (C.D. Cal. 2003). In Laws, the court found that Sony’s use of a licensed recording fell under copyright law where Sony had licensed the plaintiff’s song for use as a sample in another recording.
In contrast, Lawson has not asserted any claims against Jamie xx or his record label, Young Turks, in the Complaint. Lawson does not allege that Jamie xx infringed the Sample’s copyright by using it in the Song. Instead, Lawson’s claims are directed towards Apple, the advertising agency it used to make the commercial, and any individual or firm responsible for using the Song in the Commercial without clearing use of the Sample with Lawson (DOE Defendants).
Conclusion
This case presents an interesting question as to whether state-law right to publicity claims are preempted by federal copyright law. Generally, if the allegedly-infringing use of a person’s identity primarily involves use of copyrighted work, the state-law claim may be preempted. Presumably, Jamie xx or his record label obtained proper consents to use the Sample in the Song. Likewise, Apple likely obtained a license to use the Song in its commercial. As such, the key question is whether an individual has a right to publicity in the creative work of someone else, due to the inclusion of an individual’s likeness in another’s copyrighted work.
Minnesota Application
Minnesota does not presently have a statutory “right to publicity.” Instead, Minnesota recognizes a common law right to publicity. See Lake v. Wal-Mart Stores, Inc., 582 N.W.2d 231 (Minn. 1998) (holding that an individual has a right to privacy, including the tort of appropriation for the unauthorized use of another’s name or likeness for the defendant’s benefit); see also Ventura v. Titan Sports, Inc., 65 F.3d 725 (8th Cir. 1995) (recognizing the right to publicity under Minnesota law).
In the wake of Prince’s death, Minnesota lawmakers have considered legislature that would expand protections related to one’s right to publicity. Under the Personal Rights in Names Can Endure Act (“PRINCE Act”), an individual’s claim for commercial appropriation could be transferable and descendible, in whole or in part, by contract, will, trust, or by intestacy, for a period of 50 years after the individual’s death. The PRINCE Act is currently under review by the Judiciary Committee. Although it is not currently law, it is likely that the PRINCE Act, will be approved and become law in the near future, at which time an individual’s right to publicity will be significantly expanded under Minnesota law.
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About the Author:
Trepanier MacGillis Battina P.A. is a Minnesota copyright law firm located in Minneapolis, Minnesota. Their intellectual property attorneys can be reached at 612.455.0500.