LEGAL BRIEFS

The adult Internet world is replete with images of nude celebrities. Most of the available content consists of a celebrity’s visage morphed onto a nude body of someone else, closely resembling the star’s figure.LEGAL BRIEFS

The adult Internet world is replete with images of nude celebrities. Most of the available content consists of a celebrity’s visage morphed onto a nude body of someone else, closely resembling the star’s figure. The poses and sex acts in which the celebrity appears to be engaged are limited only by the Website designer’s imagination and budget. It is not uncommon to find realistic images of media stars engaged in explicit sexual behavior even though those celebrities have never appeared nude in the mainstream media. Websites containing such depictions have become both popular and profitable. However, this content has caused an uproar amongst celebrities and those representing their rights of publicity.

Once again, computer technology has outpaced the law, and therefore no specific set of legal principles applies to computer-morphed celebrity images. The United States Supreme Court is currently wrestling with a similar question, vis á vis computer morphed child pornography, which is created by placing the head of a child on the nude body of an adult. While Congress has passed legislation criminalizing computer-generated child pornography, morphed images of adult celebrities have, thus far, not been the subject of specific state or federal legislation. Accordingly, the emerging legal question is whether celebrity fakes constitute a “parody” protected by the First Amendment to the United States Constitution, or an illegal means of capitalizing on the celebrities’ right of publicity.

POTENTIAL CLAIMS

The creators or operators of celebrity fake sites are subject to various potential claims. The most likely causes of action are defamation, right of publicity violations, invasion of privacy claims, copyright infringement, and/or trademark infringement, dilution or disparagement. With the exception of copyright infringement, which is exclusively federal in nature, the remaining claims might be brought in either state or federal court.

A. Copyright
A copyright claim could be asserted if the celebrity fake site posts a photograph that is substantially similar to a copyrighted image, without permission of the copyright holder. Since one cannot obtain a copyright on one’s image or likeness, the celebrity would be an unlikely copyright claimant. The owner of the copyright, such as a photographer or content producer would generally bring such a claim, perhaps at the behest of the celebrity. However, the copyright holder can assign (i.e. transfer) this claim to any third party, who then has the right to bring the claim. If the bulk of a copyrighted image is used on a celebrity fake Website, such that it can be labeled an infringing “derivative work,” copyright law provides powerful remedies. Under the Digital Millennium Copyright Act, (“DMCA”), the copyright owner need simply serve a DMCA Notice on the Website’s host and billing company, demanding that the site be disabled or removed immediately. If the celebrity fake image is, indeed, found to be infringing on someone’s copyright, and it is not removed promptly upon receipt of the DMCA notification, both the Webmaster and the hosting/billing companies will be liable for copyright infringement. If the image was timely registered with the U.S. Copyright Office, statutory damages for copyright infringement range from $750 – $30,000 per infringing image, plus attorney’s fees. If the Website contains hundreds of images and galleries, the damages can easily approach the six-figure range.

B. Trademark Infringement, Dilution or Disparagement
A less likely claim that might be asserted is trademark infringement, dilution or disparagement under the Lanham Act.1 If the celebrity uses a specific trademark, logo or trade dress which appears in the computer-altered image on the celebrity fake Website, a claim may be asserted for a trademark violation. For example, if the celebrity is dressed (or partially dressed) in her trademarked line of clothing, or is holding a product he or she endorses, a trademark claim may be soon to follow. The trademark owner will inevitably argue that associating a protected trademark with adult entertainment dilutes or diminishes the mark’s value. The celebrity might also bring a claim under the Lanham Act for unfair competition or what is commonly known as “palming off.”

C. Defamation
State laws provide a remedy to those who are defamed by publication of untrue facts to third parties. Defamation laws do not only apply to the written word – video and graphic images can be the subject of a defamation action as well. For example, if a celebrity fake includes images of Britney Spears engaging in fellatio with Justin Timberlake, and Ms. Spears can prove that such depiction is false, an action for defamation might be asserted. Numerous defenses may come into play in such instances, as will be discussed below, such as the fact that the image was not presented as an accurate depiction of a real event but as a “fake.” An untrue message that the above occurred is defamation, and may constitute the more serious tort of defamation per se.

D. Privacy/Publicity Claims
State law also commonly provides for several types of invasion of privacy claims that could be raised by the celebrity; these include “false light” invasion of privacy, unauthorized publication of private facts and unauthorized capitalization on the celebrity’s right of publicity. Those claims center around the publication of facts, or depictions of events, that cast the celebrity in an unfavorable light, or attempt to profit on protected publicity rights. A celebrity, him or herself, is most likely to assert those kinds of claims.

All famous individuals have the right to profit from their own image, likeness and popularity. When someone unfairly tries to capitalize on a celebrity’s image for their own gain, a claim may be generated. The First Amendment imposes certain boundaries to these sorts of claims, however. For example, legitimate news organizations are entitled to accurately report on newsworthy events involving celebrities without violating these privacy/publicity rights, even if the celebrity’s image and likeness appears in the story. What constitutes legitimate news organizations and newsworthy events remain blurry issues.

E. Miscellaneous State Law Claims
Each state may supplement the above-referenced claims by providing additional causes of action for those injured by celebrity fake activities. Some states may provide redress through unfair trade practices legislation, false advertising laws, or through common law claims such as intentional infliction of emotional distress. The First Amendment also limits the reach of such common law claims.2

DEFENSES

While celebrity fake content may generate a number of potential claims, several defenses exist that may partially or completely absolve the publisher of liability. The likelihood of success of some of these defenses has not been established as of yet, given the lack of litigation surrounding these issues. One published decision, however, discusses the types of claims and defenses that the court will entertain in connection with celebrity fake sites: The case was brought by Perfect 10, Inc., a magazine and Website publisher against Cybernet Ventures, Inc., d/b/a Adult Check.3 Perfect 10 alleged that Adult Check profited from stolen images of celebrities appearing on Websites associated with the “Adult Check Family.”4 Perfect 10 sued Adult Check for copyright infringement, trademark infringement, trademark dilution, wrongful use of a registered mark, violation of the right of publicity, unfair competition, false advertising and racketeering. Adult Check raised numerous defenses to these claims, including the failure to allege “willfulness” as to the copyright infringement, failure to establish a “pattern of racketeering activity,” in response to the RICO claim, lack of standing to sue for copyright infringement, failure to identify specific injury resulting from the alleged racketeering activity, failure to plead a distinct RICO enterprise, failure to show a nexus between racketeering and the Adult Check enterprise, and federal preemption. The court rejected the majority of these defenses, and refused to dismiss any of the claims against Adult Check.5 While the court asked for additional facts to establish some of Perfect 10’s claims, all of the causes of action were allowed to proceed against Adult Check. If the Perfect 10 case is any indication of how other courts will rule, operators of celebrity fake websites may find themselves defending a host of potential claims; many with serious consequences. The following are some defenses that might be considered in response to such claims:

A. Parody/Fair Use Defense
The fact that a particular work constitutes a parody of a protected work is not a defense in itself, but is one factor to be considered in determining whether the defense of “Fair Use” can be established. Fair Use is a common affirmative defense to a claim alleging copyright or trademark infringement. The Fair Use defense is designed to allow someone other than the holder of the trademark or copyright to use the product, mark, or work in some way that does not legally infringe on the owner’s intellectual property. Although the general rule is that “parody” is only one factor to be considered in determining Fair Use, if a court concludes that a use is a parody, it appears to universally defeat a claim of intellectual property infringement or even a claimed violation of the right of publicity. Parodies receive full protection under the First Amendment even though they are designed to entertain, rather than to inform. It is also irrelevant, under the First Amendment analysis, whether or not the parody is for profit; even a commercial parody is entitled to full First Amendment protection.

One crucial factor, which the courts consider in evaluating whether a particular allegedly infringing use constitutes a parody, is whether there is a reasonable likelihood of confusion so that the allegedly infringing product provides an alternate means of satisfying the demand for the original product. The courts will assume that a legitimate parody does not, and is not intended to, satisfy the demand for the original product. A protected parody should point out the distinction between the original and the parody, and therefore eliminate confusion between the original product and the parody. Courts also recognized that parody, unlike satire, cannot stand on its own; identification with the object of the parody is essential. In other words, just because it is humor, doesn’t mean it is parody.

The courts used to consider how much of the original work was appropriated in determining whether a claim of parody was viable. Under the old test, a parody’s use of the original could not appropriate more than absolutely necessary to accomplish the parody’s purpose. However, in 1994, the Supreme Court reformulated that analysis and held that it is not how much of the original is taken which is determinative, but the intent in taking it and to what use the original is put that determines whether a parody is Fair Use.6 Under current law, a successful parody would defeat claims for copyright and trademark infringement if it portrays the original, but also sends a message that it is not the original, and simply serves to criticize the original, thereby lessening the potential for confusion.

The seminal case recognizing the right to publish a parody involving altered images of famous individuals is Hustler Magazine v. Falwell.7 In that case, Hustler Magazine successfully argued that its outrageous depiction of Jerry Falwell’s first sexual experience, with his mother in an outhouse, was entitled to First Amendment protection as a parody. The court determined that no reasonable person would ever take the depiction seriously, and that even state law tort claims such as intentional infliction of emotional distress were barred by the First Amendment’s protection of free speech.

More recently, several cases have recognized that parody is a defense to right of publicity and other intellectual property claims. In Cardtoons, L.C. v. Major League Baseball Players Association,8 a federal appeals court held that baseball cards featuring caricatures of major league baseball players did not infringe upon the players’ right of publicity since the cards were a legitimate parody, and therefore entitled to full First Amendment protection as social commentary on public figures engaged in a commercial enterprise. Another court decision giving credence to the parody defense is Mattel, Inc. v. Walking Mountain Productions,9 where the court held that an artist could appropriate entire Barbie Dolls, and alter them in order to comment or criticize the “Barbie ideal” and take photographs of the altered dolls without infringing on Mattel’s copyright, trademark or trade dress. Furthermore, simple photographs of the altered dolls did not satisfy the market demand for the original doll, thereby precluding any likelihood of confusion between the original and the parody.10 Another federal appeals court also recently held that a critic could use copyright-protected elements of an original work to create a new work that criticized or commented on the original without of being guilty of intellectual property infringement.11 Although untested, the defense of Parody/Fair Use may apply to a celebrity fake site portrayed in a sufficiently satirical manner.

B. Newsworthiness
Another defense to claims of infringement, required by the First Amendment, is the defense of newsworthiness. Courts have recognized that limited use of protected images or publicity rights is necessary in order to accurately report on newsworthy events by legitimate news organizations.12 While it may be difficult to determine what events in a celebrity’s sex life are newsworthy, and therefore covered by this defense, it is clear that depictions of fictitious events such as computer-generated images of celebrities that never existed in the real world, would not likely be protected by claims of newsworthiness. In order for this defense to be implicated, the celebrity content would need to be “real” images of arguably newsworthy events. Even then, the courts would inquire into the legitimacy of the Website as a news organization, and its real intent in publishing the images. The latter is a problem when the site specializes in erotica.

C. Truth
Truth is always a defense to libel and slander claims. In other words, defamation claims only apply to false statements of fact that negatively impact an individual’s reputation. If a Webmaster faced a defamation claim from a celebrity based on computer-altered images, “Truth” would be a difficult defense to establish since the images do not depict an accurate event. Put in other words, creating fake images which depict celebrities in poses or circumstances that never occurred may form the basis for a defamation claim, rendering the defense of truth impossible to establish. On the other hand, if the celebrity was actually captured in a public place posing nude, for example, and a Webmaster chose to post a photograph of such public pose, “Truth” may provide a defense to any defamation claim asserted in such circumstance. But the truth defense does not apply to other more applicable claims in such circumstance, such as violation of the right of publicity.

What Does This All Mean?

A publisher of celebrity fake images must tolerate a high level of risk to continue such an operation. The Webmaster may face publicity claims from the celebrities, or their representatives, along with intellectual property claims from photographers or trademark holders. If the Website clearly discloses that the photographs are not real, the likelihood of the celebrity prevailing on a defamation or false light claim is minimal. That is because the celebrity would need to prove that the Webmaster intended to make false statements of fact about the celebrity, or portray the celebrity in a way that is false while representing the depiction as true. A celebrity fake site is just that – fake. The publisher would have a difficult time convincing a judge or jury that the Website portrayed any real facts or circumstances relating to the celebrity’s sex life or real activities.

Depending on how similar the fake image looks to a copyrighted image, copyright liability may be imposed under a derivative work theory. If the fake image is readily distinguishable from the original image, and communicates an entirely different form of expression or idea from the original, establishing a copyright claim becomes more difficult. Even if the image is similar to the original, the defense of Fair Use will certainly be an issue. If the essence of the Website is satirical, critical or can otherwise legitimately be labeled a parody of the sex life of the celebrity, Fair Use may be established. On the other hand, a celebrity fake Website containing nothing but images of realistic looking sex acts by celebrities may be difficult to pigeon hole into the concept of a parody. Since there is no bright line distinction between what is satirical and what is an infringing work, competent counsel with experience in intellectual property and First Amendment issues should be consulted before establishing, or continuing to operate high risk content such as celebrity fake images. Courts will look at the overall intent and portrayal of the fake images to determine whether the Fair Use defense is applicable. While many courts may be hesitant to rule in favor of a sexually-explicit Website on any issue, the parody and Fair Use defenses are strongly ingrained in intellectual property jurisprudence. As celebrity content continues to grow in popularity, these issues will wind their way through the court system and ultimately be resolved for better or worse. Until then, legal guidance is essential to assist the Webmaster in sorting through these obviously complex intellectual property issues.

Lawrence G. Walters, Esquire is a partner with the law firm of Weston, Garrou & DeWitt, based in Los Angeles. Mr. Walters runs the firm’s Florida office, and represents clients involved in all aspects of adult media. Weston, Garrou & DeWitt handles First Amendment cases nationwide, and has been involved in significant Free Speech litigation before the United States Supreme Court. All statements made in the above article are matters of opinion only, and should not be considered legal advice. Please consult your own attorney on specific legal matters. You can reach Lawrence Walters at Larry@LawrenceWalters.com or www.FreeSpeechLaw.com .

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1 15 U.S.C. 22
2 See, Hustler Magazine v. Falwell, 485 U.S. 46 (1988).
3 Perfect 10, Inc., v. Cybernet Ventures, Inc., 167 F.Supp.2d 114 (C.D. Cal. 2001).
4 Id.
5 Id.
6 Campbell v. ACUFF-Rose Music, 510 U.S. 569 (1994).
7 45 U.S. 46 (1988)
8 95 F.3d 959 (10th Cir. 1996)
9 2001 WL 929923 (C.D. Cal. Aug. 13, 2001), aff’d., 4 Fed. Appx. 400 (9th Cir. 2001).
10 Id.
11 Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257 (11th Cir. 2001).
12 Zacchini v. Scripps – Howard Broadcasting Co., 433 U.S. 562, 97 S.Ct. 2849, 53 L.Ed.2d 965 (1977).

LEGAL BRIEFS

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