Celebrity Impersonation and the Right of Publicity

Last fall after a day of sightseeing, several rounds of drinks, and a walk down to Navy Pier; I found myself listening to the rather familiar sounds of The Beatles. As we walked closer, approaching the Landshark Beer Garden, not only did the music grow louder, but several realizations descended on our group simultaneously: a) The music was being performed live, b) The crowd seemed to be really into it (always a good sign with live music), and c) All of the band members were dressed up to resemble the original Beatles band a la “Sgt. Pepper’s Lonely Hearts Club Band.”[1] Beyond having “the look” of The Beatles, the band, American English,[2] very skillfully mimicked The Beatles’ sound (including their voices) as well as stage performance. Although we arrived in the middle of the performance, we stayed for the rest of the set to see several costume and scene changes, as well as more music from The Beatles’ catalog.[3] As such, by conjuring up the acclaimed music of one of the world’s most iconic bands, American English was able to transport the audience to a night of music with a band that had been separated for over 40 years.

Celebrity impersonation seems to be a booming industry.[4] From the sublime[5] to the ridiculous,[6] celebrity impersonation provides fans a taste of their perennially popular stars. However, what effect, if any does this have on the celebrities whose images are exploited for commercial gain? As McCarthy points out, the right of publicity is generally thought to be limited to “commercial” uses.[7] However, like other “soft IP” rights, there is an obvious and very real conflict that exists between creative, protected non-commercial expression and the commercial endeavors that arise out of them. On one hand, we have a person copying down to the most minute details the very attributes that made the original celebrity famous. On the other hand, proponents would argue that this type of tribute is protected creative speech. Similar to artists claiming fair use of previously copyrighted work, there exists a fine balance to be struck between promoting creative speech and protecting publicity rights from unrestricted exploitation. Ultimately it appears as if a compulsory licensing fee for celebrity impersonators looking to perform as their famous counterpart would help strike a balance between expression and exploitation.

While laws protecting right of publicity can be somewhat inconsistent,[8] they are all similar in that they only make liable commercially exploitive speech.[9] In speaking of the balance between free speech and rights of publicity, Judge Brotman noted in Estate of Prseley v. Russen[10] that

[T]he purpose of the portrayal in question must be examined to determine if it predominantly serves a social function valued by the protection of free speech. If the portrayal mainly serves the purpose of contributing information, which is not false or defamatory, to the public debate of political or social issues or of providing the free expression of creative talent which contributes to society’s cultural enrichment, then the portray generally will be immune from liability. If, however, the portrayal functions primarily as a means of commercial exploitation, then such immunity will not be granted.

Id. at 1356. In the case of celebrity impersonators, however, the line drawing gets hazy. Courts have noticed the delicate, inherent conflict between the impersonator and the celebrity:

[A right of publicity] claim therefore requires the court to answer the almost metaphysical question of when one person’s face, presented in a certain context, becomes, as a matter of law, the face of another.

This question is not merely theoretical. The use in an advertisement of a drawing, which has no other purpose than to represent its subject, must give rise to a cause of action under the Civil Rights Law, because it raises the obvious implication that its subject has endorsed or is otherwise involved with the product being advertised…

A living and breathing actor, however, has the right to exploit his or her own face for commercial gain. This right is itself protected by the Civil Rights Law. The privacy law does not prohibit one from actually representing oneself as another person. The look-alike situation falls somewhere in between and therefore presents a difficult question.

Allen v. National Video, Inc.[11] Ultimately, however, this is little agreement over whether or not an impersonator can serve as a “portrait or picture” (as the New York Statute words it) in lieu of using the actual celebrity.

Further, there is concern over whether or not a common law right of publicity is “worth” it given the culminating protections of trademark law[12] and copyright law.[13] The Lanham Act[14] protects false designation of a celebrity endorsement on a good. Further, copyright law protects the creative efforts of the famous celebrity. Some commentators believe copyright law completely preempts right of publicity claims.[15] As such, no celebrity impersonation can exist that purports celebrity endorsement where there is none or that reproduces a copyrighted work of the celebrity without proper licensing.

As there is obviously expressive value in celebrity impersonation,[16] the proper route to reconciling rights of publicity with expressive speech is one that allows free practice of celebrity impersonation in non-commercial settings (as not to upset the Lanham Act[17]) with compensation for the celebrity being impersonated. By incorporating a licensing fee based on percentage of revenue gained from the impersonation, freedom of expression is protected while ensuring the impersonator is not exploiting the celebrity persona for free. A fee based on percentage of total revenue would go even further to protecting this cause. In this light, a person participating in purely expressive, noncommercial speech would not have to pay anything while someone performing in a show, i.e. “The Big El Show,” would be liable to the celebrity for a percentage of total revenue. This approach recognizes the capital invested in the creation of the celebrity fame. Further, it creates an industry standard for entry into the market so as not to scare away “small pocket” performers who would not be able to afford a contract of adhesion written up by the celebrity. Further, this scaling approach allows for bigger pocket investors to create a production of higher quality that would ultimately earn the celebrity impersonated more money. At the same time, impersonators who can afford nothing more than a pair of Elton John-esque sunglasses would not be enjoined from performing on a street corner.

Further, to further protect small time impersonators from undue burden, the onus of collecting the licensing fee should be the responsibility of the celebrity. While the Elvis Presley’s estate would be inclined to pursue a claim against an effort like “The Big El Show,” they would most likely leave alone the fellow dressing up as “The King” at his college’s open mic night. This will create a system in which an impersonated celebrity would pursue licensing fees for performances that are worth the effort.

Also, this ends much of the conflict between Lanham Act claims and rights of publicity. As our textbook seems to note in the impersonation section, most judges were reluctant to grant injunction based on a right of publicity claim. Rather, the underlying justification for the injunctions was based on Lanham Act protections against misrepresentation of endorsement.

As there are many celebrity impersonators, the market for them seems to have a self-correcting intuition about it. That is, through natural economic selection, the strong Elvises (or is it Elvi) survive while the weak falter. It also creates an incentive for the impersonator to perform a judgment check as to whether or not doing the impersonation is worth his or her time and effort.

This proposal obviously gets hazy when dealing with multiple impersonators impersonating different people. It seems as if a slightly higher flat fee for cover bands impersonating the original act might be all that is necessary for those instances. But what about performances that encompass multiple unrelated celebrities?[18] This certainly raises a different problem. Especially if then the question becomes of which impersonation was more vital to the economic success of the expressive endeavor. There would need to be a cap as to the maximum percentage that could be collected from a multitude of celebrities. Ultimately, however, a licensing system based on revenues seems to provide a better balance between expression and economics than current solutions provide.

Ultimately, there must be equal respect for free expression and the economic value of a celebrity’s publicity rights. By having a compulsory licensing system that provides a percentage of revenues if the celebrity is willing to pursue them allows for both parties to benefit from celebrity impersonation. Further, the celebrity does not have to worry about false endorsement because of Lanham Act protection. Finally, if the celebrity has a musical or artistic repertoire they wish to keep safe, they have copyright protections as to the public performance of their work (assuming, they own the copyright). This system would allow for impersonators to provide entertainment to an obviously valuable market while “paying” homage to the celebrities they choose to impersonate.

1. See generally “The Sgt. Pepper’s Album,” The Internet Beatles Album, available at http://en.wikipedia.org/wiki/Sgt._Pepper%27s_Lonely_Hearts_Club_Band (last visited Sept. 8, 2012).
2. See generally American English band website, available at http://www.americanenglishbeatles.com (last visited Sept. 8, 2012).
3. The show apparently moved through The Beatles’ collection in chronological order. After seeing their Sgt. Pepper’s act, the band left for quick intermissions to later emerge as John, Paul, Ringo, and George a la Yellow Submarine and Abbey Road.
4. See generally Michael Koening, “Almost Lindsay Lohan: The World of Impersonators “ ABC News, 2011 available at http://abcnews.go.com/blogs/entertainment/2011/11/almost-famous-the-world-of-impersonators/ (last visited Sept. 9 2012).
5. See Jon Busdeker “’Obama,’ ‘Bush’ and Others Cash in on Looking Famous for Fun, Orlando Sentinel, 2012 available at http://articles.orlandosentinel.com/2012-09-08/news/os-celebrity-impersonators-convention-20120907_1_annual-sunburst-convention-obama-policies-barack-obama (last visited Sept. 9, 2012).
6. See e.g. Matt Stopera, The 30 Worst Celebrity Impersonators, BuzzFeed, 2009 available at http://www.buzzfeed.com/mjs538/the-30-worst-celebrity-impersonators.
7. 1 J. Thomas McCarthy, The Rights of Publicity and Privacy § 3.2 (2d ed. 2012) (positing that “what is required is proof that the defendant intended to obtain a commercial advantage.”) see also,
8. Stacey L. Dogan & Mark A. Lemley, What the Right of Publicity Can Learn from Trademark Law, 58 Stan. L. Rev. 1161, 1162 (2006)(“One root of the problem with these [inconsistent Right of Publicity] cases lies in the elusiveness of a theoretical justification for the right of publicity.”)
9. See McCarthy, supra note 7.
10. 513 F. Supp. 1339 (D.N.J. 1981)
11. 610 F. Supp. 612, 622-623 (S.D.N.Y. 1985).
12. 15 U.S.C. § 1127 (2010). Section 1127 states:

The term “trademark” includes any word, name, symbol, or device, or any combination thereof—(1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Id.
13. 17 U.S.C. § 101 et seq.
14. 15 U.S.C. §§ 1051–1127. The Act protects both marks registered with the United States Patent
and Trademark Office and unregistered marks in active use. See 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 2:7, at 2-12 (4th ed. 2005).
15. Jennifer E. Rothman, Copyright Preemption and the Right of Publicity, 36 U.C. Davis L. Rev. 199, 265 (2002):

Section 301, however, is not the sole basis for preemption. Despite being overlooked, the preemption principles arising out of the Supremacy Clause are as valid in the world of copyright as anywhere else. There are many advantages to adopting the conflict preemption approach. First, the Supreme Court has developed, through a series of cases, detailed principles for applying conflict preemption to intellectual property. Second, preemption using the Supremacy Clause is already in place and does not require legislative action either at the federal or state level. Finally, it has the flexibility to apply to any new situation which the right of publicity may be stretched to cover in the future.

Id.
16. See, e.g. Joplin Enterprises v. Allen, 795 F. Supp. 349 (W.D. Wash. 1992)(noting a right of publicity does not extend to “a protected form of expression.”).
17. 15 U.S.C. § 1051 et seq.
18. E.g. “Dead Presidents on Ice” or “The Meat We Eat: A night with Dahmer and Fish.”