By Scott Hervey
This isn’t the first time a songwriter has used a celebrity’s name in a song, but it may be the first time a celebrity sued over such use. Musical writer and performer Armando Perez, well known by his rap name Pitbull, wrote and recorded the song “Give me Everything.” Approximately one third of the way through the song, Lohan’s name is used as follows: “So, I’m tiptoen’, to keep floin’ / I got it locked up like Lindsay Lohan”. Lohan, who did not grant consent to the use of her name in the song, sued Pitbull and his record label, Sony Music Entertainment, for violating Sections 50 and 51 of the New York Civil Rights Law, for unjust enrichment and for intentional infliction of emotional distress. The court dismissed Lohan’s complaint on the grounds that it fails to state a claim. While most are chalking this up as another legal loss for the challenged Lindsay Lohan, this case is an interesting commentary on the reach of New York’s right of publicity statutes.
Although New York does not recognize a common-law right of privacy, the State sought to provide a limited statutory right of privacy when it enacted Sections 50 and 51 of the New York Civil rights Law. Section 50 makes it a misdemeanor for any person to “use… for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without first having obtained the written consent of such person.” Section 50 provides:
Any person whose name, portrait, picture or voice is used within this state for advertising purposes or for the purposes of trade without the written consent first obtained as provided [in Section 50] may maintain an equitable action in the supreme court of this state against the person, firm or corporation so using his name, portrait, picture or voice, to prevent and restrain the use thereof; and may also sue and recover damages for any injuries sustained by reason of such use and if the defendant shall have knowingly used such person’s name, portrait, picture or voice in such manner as is forbidden or declared to be unlawful by section fifty of this article, the jury, in its discretion, may award exemplary damages.
The prohibitions set forth in these sections are to be strictly limited to non-consensual commercial appropriation of the name, portrait or picture of a living person” and prohibit such use “for advertising purposes or for the purposes of trade only, and nothing more. In order to prevail on a statutory right of privacy claim, a plaintiff must prove (1) the use of plaintiff’s name, portrait, picture or voice (2) for advertising purposes or for the purposes of trade (3) without consent and (4) within the state of New York.
In ruling on the defendant’s motion to dismiss, the court considered whether the plaintiff’s name was used in the song “for advertising or trade purposes” within the meaning of the statute. Even though the song was created and distributed for the purposes of making a profit does not mean that the plaintiff’s name was used for “advertising” or “purposes of trade”, the court said. The defendant’s argued that the plaintiff’s name was not used to promote a product or service or to seek solicitation or patronage, and because Lohan’s name was not used in the song’s title or refrain, her name is not being used to promote the song itself.
Even if the plaintiff had sufficiently alleged that her name was used in the song for the purpose of advertising or trade, the court held that the isolated use of Lohan’s name is fatal to her claim. A claim under Sections 50 and 51 of the New York Civil Rights Law does not apply to incidental uses of a person’s name or image. Whether a use is incidental is determined by the role that person’s name or likeness plays in the main purpose or subject of the work at issue. The court found because Lohan’s name was used in the song only once, that it was not used in the title or the refrain and is directly related to the theme of the song, the use of her name was incidental and not actionable under the New York Civil Rights Law.
In their motion to dismiss, the defendants also asserted that the First Amendment presents a complete defense to Lohan’s claim in that the statute does not apply to works of art. The court noted that prior case law interpreting the New York Civil Rights Law have concluded that “pure First Amendment speech in the form of artistic expression…deserves full protection, even against a statutorily-protected privacy interest. In New York it is well established that music is pure First Amended speech. Because pure First Amendment speech that makes use of an individual’s name or likeness without consent is absolutely protected from claims under the New York Civil Rights Law, the court found that the defendant’s use of Lohan’s name in the song is protected First Amendment speech and as such, Lohan’s claim fails.
The First Amendment defense to a right of publicity claim is different in California. Here, First Amendment speech is not automatically entitled to an absolute protection against publicity claims. Rather, the First Amendment defense it is subject to a balancing test. The defendant must show that the work has transformed to become primarily his or her own artistic expression rather than just a reproduction of the celebrities likeness. This “transformative use” test was articulated by the California Supreme Court in 2001 in Comedy III Productions, Inc. v Gary Saderup. In analyzing a First Amendment defense the inquiry is whether the celebrities likeness is one of the “raw elements” from which the original work is synthesized, or whether the depiction or imitation of the celebrity is the very sum and substance of the work in question. Where the value of the work does not derive primarily from the celebrity’s fame, the transformative test is satisfied and the defendant will prevail on its First Amendment defense.