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IS YOUR BAND NAME SCANDALOUS?

INCORPORATING BROADER FRENCH MORAL RIGHTS INTO THE VISUAL ARTISTS RIGHTS ACT TO PROTECT A NARROW CLASS OF MUSICIANS
Dustin J Klein* I. INTRODUCTION Imagine four twenty-four year old males from a Chicago suburb who formed a band six years ago.1 They all are best friends and have been so since high school. The band plays shows, mostly in bars, all throughout the Midwest. Since its formation, the band has continually grown in popularity. The band mostly plays infectious pop punk songs a la The Ramones, and a local label that only presses vinyl records in a series of 500 has released each of the bands albums. Early on, the band members debated what name to choose and finally arrived at Phuk et al. They came up with this name after a visit to Los Angeles, where they saw the word Phuket on a Metro Rail advertisement for tourism to the Thai province of the same name in October of 2006. They thought the name, phonetically, was entertaining and subsequently adopted that name. They currently, however, go by Pea, a more socially acceptable abbreviation suited for radio and television play. Though they make this concession for broadcast media, the same concession is not made for print media. In print media, the unabbreviated name is always displayed. Initially, regional radio stations played Phuk et al.s music, largely due to requests from friends and close followers. Now, other members of the public are requesting that radio stations play the bands songs. Phuk et al., is rising to the top of the local music scene and is catching the

* 1

Dustin J Klein, 2011, Creative Commons Attribution-NonCommercial-NoDerivs 3.0 United States License.

This hypothetical situation is loosely based on Stewart v. Rolling Stone LLC, 105 Cal. Rptr. 3d 98, 104 (Cal. Ct. App. 2010), where indie musicians sought to recover damages from Rolling Stone for using their names in an editorial surrounded by Camel cigarette advertisements. One of the named bands was the Canadian hardcore band, Fucked Up, and the other was the indie band, Xiu Xiu. Id. The artists attempted to file a class action.

attention of local and regional advertisers, as well as political groups. Among these political groups is Protecting our Childrens Future (PCF), a conservative Christian group, which openly condemns social issues such as gay rights. PCF, without permission, stated that Phuk et al. and many other Chicago musicians support PCF. This message was printed in The A.V. Club, a nationally-distributed entertainment newspaper. PCFs stated goal of the advertisement was to draw a new demographic to the group. At the top of the advertisement, PCF labeled it as an editorial, and plainly stated that the artists supported the organization. The problem is that PCF never asked Phuk et al. for permission to use its name. The band is essentially apolitical, except to one major social issueequality for all, including gay individuals. This view is a well-known fact amongst the groups fan base and regional gay rights activists. One of the members even publicly spoke out against PCF at a gay-rights rally. The band members are now concerned that their fans will think the band supports PCF after seeing the editorial. Phuk et al. wants to enjoin PCF from continuing to run the advertisement, but unfortunately, the band has no enforceable trademark right. Although the band once sought trademark registration, the U.S. Patent and Trademark Office decided that the name was too scandalous and barred it from registration. Currently, certain artists names, similar to Phuk et al., cannot be trademarked because they are deemed indecent, scandalous, or disparaging, and the right of publicity does not apply because they are not individuals.2 As a result, in order to address injustices like the one described in the hypothetical posed above, this Note provides a framework to grant a narrowly defined class of musicianslike Phuk et al. personal and reputational rights. It explores these types of rights and ultimately

See infra Part II.B.1 (explaining that the right of publicity, protecting from appropriation and false endorsement, only applies to individuals as a personal right); note 54 and accompanying text (explaining the statutory limits to obtaining trademark registration).

proposes that by blending parts of the Lanham Act and French reputational rights with copyright law, artists like Phuk et al. can receive necessary protection.3 To begin, Part II addresses the legal background of the sources of law that protect personal rights and rights of publicity.4 Part III analyzes the strengths, weaknesses, and limits of each of those sources.5 Finally, Part IV proposes an amendment to the Visual Artists Rights Act to afford a limited class of musical groups more authority over various contexts in which their names may appear.6 II. BACKGROUND Currently, two major areas of lawcopyright and unfair competitionexist to protect bands that are similarly situated to Phuck et al. Briefly, copyright law protects the expression of ideas in fixed forms, with narrow limitations.7 Unfair competition law protects from the misappropriation of goodwill and provides entities with a way to distinguish their goods or

See infra section IV.A (proposing an amendment to the Copyright Act to include such a narrow definition of works of musical art for purposes of the proposed amendment to the Visual Artists Rights Act); section IV.B (proposing an amendment to the Visual Artists Rights Act to include works of musical art).
4

See infra Part II (providing a background to copyright law, including the rights of authors and the fair use defense, and unfair competition law, including the right of publicity and trademarks).
5

See infra Part III (analyzing the current legal framework bands similarly situated to Phuk et al. can avail themselves of to protect their names and likenesses).
6

See infra Part IV (proposing amendments to the Copyright Act of 1976 to include a definition of work of musical art and known reputation, as well as amendments to the Visual Artists Rights Act to include works of musical art).
7

See infra Part II.A (discussing federal copyright law). Some examples of the limitations of copyright protection are words and simple phrases, standard calendars, ideas, systems, processes, and blank forms. 17 U.S.C. 106(b) (2006) (prohibiting copyright protection on ideas, processes, and systems); Material Not Subject to Copyright, 37 C.F.R. 202.1 (2010). Standard calendars are included, along with tape measures and rulers, are [w]orks consisting entirely of information that is common property containing no original authorship. Id. 202.1(d). Unlike with trademark law, there is no subject matter limitation, as long as the work is original and fits within one of the eight enumerated categories. See 1 NIMMER ON COPYRIGHT 1.08[A] (2010) ([T]he term writings must be given a content sufficient to encompass the artistic and technological developments of contemporary society. Consequently, writings are not confined to any narrow gauge definition of the term . . . .). Compare 15 U.S.C. 1052 (2006) (No trademark . . . shall be refused registration on the principal register on account of its nature unless it(a) Consists of or comprises immoral . . . matter . . . .), with 17 U.S.C. 102 (Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression . . . ).

services from those of another and protects the goodwill the entity has built.8 Before analyzing the limited protection afforded to bands like Phuck et al. under current American law and assessing how such bands could be more aptly protected under a copyright system with broader reputational rights, Part II.A provides a brief discussion of current American copyright law.9 Next, Part II.B describes unfair competition law with a focus on false endorsement, commercial appropriation, and the Lanham Act.10 A. Copyright Law The Constitution explicitly grants Congress the authority to create legislative copyright protection.11 With the passage of the 1976 Copyright Act (Copyright Act), Congress exerted its constitutional authority to legislate regarding copyrights, and thereby preempted equivalent state copyright law.12 Copyright law requires a minute amount of creativity in the expression in

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See infra Part II.B (describing trademark and unfair competition law).

See infra Part II.A (discussing American copyright law, its personal rights scheme, the fair use doctrine, and the personal rights granted by the French Intellectual Property Code).
10

See infra Part II.B (discussing, succinctly, unfair competition law, including the commercial appropriation and false endorsement for individuals, federal trademark law, and the fair use defenses to trademark infringement).
11

See U.S. CONST. art. I, 8, cl. 8 (The Congress shall have the Power . . . To promote the Progress of . . . useful Arts, by securing for limited Times to Authors . . . the exclusive Right to their respective Writings.). Trademark and unfair competition law was left to the states and the common law until the Lanham Act, codified as Chapter 22 of Title 15 of the U.S. Code, was passed in 1946. DORIS E. LONG, UNFAIR COMPETITION AND THE LANHAM ACT 7 (1993). This largely remains true, and states can legislate or judicially create unfair competition law. Id. at 93. The Lanham Act does not contain a specific statutory provision for preemption of state trademark claims . . . trademark rights do not qualify as a form of constitutionally derived rights . . . no state trademark claim seeking relief for infringement should be preempted. Id.; see also Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 232 (1964) (stating that states can protect businesses through unfair competition and trademark law as long as the law does not grant the equivalent of patent protection). For purposes of this Note, the author cites to the sections of the U.S. Code rather than to the Lanham Act.
12

17 U.S.C. 101 et seq. The duration of the exclusive right to an authors copyright protection seventy years after the author dies, if the work was created after January 1, 1978. Id. 302(a). Federal copyright law preempts all state statutory and common law as of January 1, 1978. Id. 301(a). [A] state right will be preempted if it attaches to a tangibly fixed work of authorship within the subject matter of copyright and is equivalent to the [statutory] rights. 3 GOLDSTEIN ON COPYRIGHT 17.2.1 (3d ed. 2005). This only affects works that are entitled to copyright protection; other forms of expression that are not subject to copyright law can be protected through state law. 17 U.S.C. 301(b).

order for a work of authorship to receive protection.13 Among the categories of material that cannot be copyrighted are names, titles, and slogans, because they are merely words or short phrases.14 The United States, unlike France (which recognizes more extensive noneconomic interests of copyright authors), mostly recognizes the economic interests in its copyright law; however, there has been some legislation, notably the Visual Artists Rights Act (VARA), and case law providing personal (or moral) rights to limited classes of works. 15 Because moral rights under VARA are subject to the fair use doctrine, it is necessary to more specifically describe the Copyright Act as well as the protection that is afforded under the fair use doctrine .16 1. Copyrights Grant Monopoly Protection to the Expression of Ideas

13

Feist Publn, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 36263 (1991) (holding there must be a modicum of creativity for an expression of an idea to be copyrightable). In Feist, the Court held that the organization of white pages in a phonebook in alphabetical order based on surname could not be copyrighted because there is no other way to organize the white pages. Id.
14

Material Not Subject to Copyright, 37 C.F.R. 202.1 (2010). Some works are not subject to copyright and application for registration of such works cannot be entertained. Among these materials are [w]ords and short phrases, such as names, titles, and slogans. Id. 202.1(a).
15

See 17 U.S.C. 106 (granting exclusive rights to works of authorship); id. 106A (granting moral rights to a limited class of works of visual art); Gilliam v. Am. Broad. Corp., 538 F.2d 14, 2425 (2d Cir. 1976) (using the Lanham Act as a way to protect Monty Pythons reputation by prohibiting American Broadcasting Corp. from using Monty Python in association with a garbled . . . distorted version of the plaintiffs work). The rights granted by the Copyright Act protect pecuniary interests; they protect the work of authorship from unauthorized duplication, derivation, distribution, performance, or display; the author holds the exclusive right to each of these interests. 17 U.S.C. 106A. France recognizes broader moral rights than the United States; France recognizes the rights of integrity, attribution, divulgation, and retraction. CODE PROPRIT INTELLECTUELLE [C. PI.] art. L121-1, L121-2, L121-4 (Fr.). The right of divulgation grants the author the authority to decide if, when, and how to disclose the work to the public. Andre Lucas, Pascal Kamina, & Robert Plaisant, International Copyright Law and Practice, FRA 7, INTL COPYRIGHT LAW & PRACTICE, MB, LEXIS (2010). The right of retraction allows the author to renounce a work and withdraw it from sale or display. BLACKS LAW DICTIONARY 1431 (9th ed. 2009). The United States recognizes the rights of attribution and integrity for a limited class of works of visual art, as defined by the Copyright Act. 17 U.S.C. 101, 106A (granting moral rights to a limited class of works of visual art, including a single copy of a painting, drawing, photograph, or sculpture, or in a limited series of less than 200 copies, individually numbered and signed by the artist); see also CAL. CIV. CODE 987 (West 2007) (granting moral rights to works of visual art); N.Y. ARTS & CULT. AFF. LAW 14.03 (McKinney Supp. 2008) (granting similar moral rights as 17 U.S.C. 106A(a), but expanding the definition of work of visual art to include a series of 300). These rights are premised on the theory that an artist in the process of creation injects his spirit into the work and that the artists personality, as well as the integrity of the work, should therefore be protected and preserved. Bd. of Managers of Soho Intl Arts Condo. v. City of New York, No. 01 Civ.1226 DAB, 2003 WL 21403333, *7, n.9 (S.D.N.Y. June 17, 2003) (quoting Carter v. Helmsley Spear, Inc., 71 F.3d 77, 81 (2d Cir. 1990)).
16

See infra Part II.A.1 (describing, succinctly, American copyright law).

Copyright law protects the original expression of ideas once that expression is in a fixed, tangible form.17 The Copyright Act enumerates the forms in which an expression must take, but the courts construe the forms liberally.18 Additionally, the Copyright Act grants monopoly protection to the author to make copies, create derivative works, distribute copies, and perform or display the work publicly.19 However, under the first sale doctrine, the author loses the exclusive right to distribute the copyrighted work after the first sale of the fixed form; nevertheless, he or she retains the other exclusive rights, unless expressly granted.20 These rights, as well as the moral rights granted by VARA, are subject to the fair use doctrine of copyrights, which is utilized as an affirmative defense to copyright infringement.21 Fair use in copyright allows for the use of copyrighted material in a manner that would

17

17 U.S.C. 102(a). The fixed form must enable the expression to be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Id.
18

Id. 102(a)(1)(8). The Act lists eight categories the work must fall within to be copyrightable: [w]orks of authorship include the following categories: (1) literary works; (2) musical works . . . ; (3) dramatic works . . . ; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works. Id.; see also id. 101 (2006) (The terms including and such as are illustrative and not limitative.) (emphasis added).
19

17 U.S.C. 106. The Copyright Act defines a derivative work as a work based upon one or more preexisting works. Id. 101. To constitute an infringement of this right, the derivative work must be based on a copyrighted work. Id. 106.
20

17 U.S.C. 109(a) ([T]he owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.). The copyright owner is allowed to transfer any, or all, of the exclusive rights granted by Section 106 of the Copyright Act. (1) The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession. (2) Any of the exclusive rights comprised in a copyright . . . may be transferred as provided by clause (1) and owned separately. The owner of any particular exclusive right is entitled . . . to all of the protection and remedies accorded by the copyright owner by this title. Id. 201(d).
21

17 U.S.C. 107. Certain uses of a copyrighted work that would otherwise be infringements are not infringements; for example, non-infringing use includes research, criticism, and education. Id.

otherwise constitute infringement in order to foster creativity.22 The Copyright Act provides the four factors for determining whether fair use is an available defense: the purpose and character of the use . . . ; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to . . . the whole; and the effect . . . upon . . . the market for or value of the copyrighted work.23 Though no single factor is determinative, the Supreme Court held the infringing uses effect on the potential market weighs heaviest in the balance in Harper & Row Publishers, Inc. v. Nation Enterprises.24 In Harper & Row, the defendants publication of stolen excerpts regarding the pardoning of Nixon from Gerald Fords forthcoming memoirs before Harper & Rows exclusive licensee published effectively negated the market for the licensees upcoming publication.25 The Court in Harper & Row assumed the material was copyrightable in

22

Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 54546 (1985); see Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994) (From the infancy of copyright protection, some opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyrights very purpose, [t]o promote the Progress of Science and useful Arts. . . . Every book in literature, science and art, borrows . . . and use[s] much which was well known and used before.) (second alteration added) (citations omitted) (internal quotation marks omitted); see also Iowa State Univ. Found., Inc. v. Am. Broad. Corp., 621 F.2d 57, 60 (2d Cir. 1980) (The doctrine of fair use . . . permits courts to avoid rigid application of the copyright statute when . . . it would stifle the very creativity which that law is designed to foster.).
23

17 U.S.C. 107. As listed in 107, the four factors the courts use to determine whether an infringing use is fair [T]he purpose and character of the use, including whether such use is of a commercial nature . . . ; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the . . . market for or value of the copyrighted work.

are:

Id.
24

471 U.S. at 56667. This . . . factor is undoubtedly the most important element of fair use. Id. at 566. In Harper & Row Publishers, Time, the weekly news magazine, had a contract with Harper & Row, where Time would pay $25,000, for the right to publish President Gerald Fords account of Nixons pardon prior to publication of his memoirs. Id. at 54243. The contract stated that Time pay $12,500, in advance of publication and the remaining $12,500, at the time of publication. Id. Among the terms to the contract was a promise of exclusivity, including a renegotiation clause for the second payment should the material appear in print prior to [Times] release of the excerpts. Id. at 543. The defendant, Nation Enterprises, printed stolen excerpts regarding the Nixon pardon from the forthcoming memoirs before Time released its excerpts. Id. Time refused to pay the rest of the contract. Id. The Supreme Court held that the Nations publication of the excerpts constituted an infringement of Harper & Row Publishers copyright and, upon balancing the factors, found fair use inapplicable. Id. at 56166.
25

Id. at 56768; see also S. REP. NO. 94-473, at 65 (1975) (With certain special exceptions (use in parodies . . . might be examples) use that supplants any part of the normal market for a copyrighted work would

order to reach the issue of fair use.26 The Court further solidified the right to fair use in Campbell v. Acuff-Rose Music, Inc., when it held fair use applies to parodies of copyrighted works.27 In Campbell, the Court stated the threshold issue for parodies to constitute fair use is whether the parodic character may reasonably be perceived.28 Although the Court has solidified the right to fair use thereby permitting the use of copyrighted material in a manner that would otherwise constitute infringement in order to foster creativity, in 1989, Congress enacted VARA, which grants the personal rights of attribution and integrity to the artists of a limited class of worksvisual arts.29 However, there are significant differences between the protection afforded to artists by VARA and those extended under the French Intellectual Property Code. Discussing these differences is important for later analyzing how artists are better protected under the French Property Code.30 2. American Moral Rights: The Visual Artists Rights Act However, before the enactment of VARA, some courts used the Lanham Act to protect moral rights by analogy.31 The Second Circuit Court of Appeals expressly used the Lanham Act to

ordinarily be considered an infringement.).


26

Harper & Row Publishers, Inc., 471 U.S. at 55657; see id. at 579 (Brennan, J., dissenting) (The Court finds no need to resolve the threshold copyrightability issue.).
27

510 U.S. at 58081. Absent fair use, a parody would be copyright infringement because the nub of the definition[] . . . is the use of some elements of a prior authors composition to create a new one that, at least in part, comments on that authors works. Id. at 57475, 580.
28

Id. at 582. The Court went on to say that [w]hether . . . parody is in good taste or bad does not and should not matter to fair use. Id.
29

See infra Part II.A.2 (discussing the narrow moral rights of American copyright law under VARA); infra Part II.A.3 (describing the broad moral rights granted by the French Intellectual Property Code). Though fair use applies to works of visual art, the rights granted by VARA, notably the right of integrity, could allow the author of such a work to prohibit parodies that would damage his or her reputation as an artist. See infra note 41 and accompanying text (defining the rights granted by VARA and explaining that the right of integrity allows an author to prohibit use of a work of visual art that would prejudice the authors reputation or honor).
30

See infra Part III.A (analyzing moral rights extended under the French Intellectual Property Code).

provide relief when the defendant edited a Monty Python comedy show to be aired on American television in Gilliam v. American Broadcasting Corp.32 The Second Circuit granted the preliminary injunction sought by Monty Python because the editing garbled and distorted the comedy troupes works to the point of much of the jokes and punch-lines being lost.33 The injunction prevented the defendant from airing the edited versions of Monty Pythons Flying Circus.34 Congress enacted VARA as part of the United States ratification of the Berne Convention Treaty in 1989.35 VARA grants the personal rights of attribution and integrity to the artists of a limited class of worksvisual artsas defined within the Copyright Act.36 These limits

31

See Gilliam v. Am. Broad. Co., 538 F.2d 14, 2425 (2d Cir. 1976) ([A]n allegation that a defendant has presented to the public a garbled . . . distorted version of plaintiffs work seeks to redress the very rights sought to be protected by the Lanham Act . . . and should be recognized as stating a cause of action under that statute.); see also Benson v. Paul Winley Record Sales Corp., 452 F. Supp. 516, 518 (S.D.N.Y. 1978) (using the Lanham Act to enjoin the defendants from using the plaintiffs name on an album that was sexually explicit and of lower quality than the plaintiff recorded). In Benson, the court stated that consumers may purchase the album expecting a certain sophistication, but instead find a sexually explicit, low quality recording, which would damage Bensons reputation as a quality musician. Id. Even if VARA had been enacted at the time of Gilliam, it would not have applied to the plaintiffs movie, as VARA only applies to paintings, drawings, sculptures, or photographs, in limited series of one or less than 200, individually numbered and signed by the artist. See 17 U.S.C. 106A (granting the moral rights of integrity and attribution to works of visual art); id. 101 (defining works of visual art as a limited class and excluding from the definition other works that would fall within the broader definitions of pictorial, photographic, or sculptural works).
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Gilliam, 538 F.2d at 2425.

Id. But see Halicki v. United Artists Commcns, Inc, 812 F.2d 1213, 1214 (9th Cir. 1987) (refusing to extend the Lanham Act where there was no actual competition, but merely where the defendant misprinted the rating of the plaintiffs film as rated-R rather than PG); Gilliam, 538 F.2d at 27 (Gurfein, J., concurring) (So far as the Lanham Act is concerned, it is not a substitute for droit moral which authors in Europe enjoy. . . . [T]he Lanham Act does not deal with artistic integrity. It only goes to misdescription of origin and the like.); Choe v. Fordham Univ. Sch. of Law, 920 F. Supp. 44, 49 (S.D.N.Y. 1995) (refusing to extend Gilliam to an edited version of a comment for a law review where the editions did not so substantially alter the comment that the plaintiff could no longer be called the author); Geri J. Yonover, The Precarious Balance: Moral Rights, Parody, and Fair Use, 14 CARDOZO ARTS & ENT. L.J. 79, 98 (1996) (positing that reliance on the Lanham Act as a way of granting moral rights to authors is strained).
34 35

Gilliam, 538 F.2d at 17.

GRAHAM DUTFIELD & UMA SUTHERSANEN, GLOBAL INTELLECTUAL PROPERTY LAW 72 (2008); see also Aurele Danoff, The Moral Rights Act of 2007: Finding the Melody in the Music, 1 BUS. ENTREPRENEURSHIP & L. 181, 18586 (2007) (Principally, the United States [was] motivated to join the Berne Convention because each Berne signatory enjoyed the copyright protections of all other signatory nations.).

illustrate the congressional recognition that single prints and limited edition series convey the artists personality better, which the Act seeks to protect.37 [VARA] recognizes the special value inherent in the original or limited edition copy of a work of art. The original or few copies with which the artist was most in contact embody the artists personality far more closely than subsequent mass produced images.38 While the term for copyright protection is generally the life of the author plus seventy years, the rights under VARA are only available during the life of the artist and can be waived (but not transferred) by expressly stating waiver in a written agreement.39

36

17 U.S.C. 106A(a). The rights of attribution and integrity are only afforded to works of visual art, defined as a painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author . . . . Id. 101. Also included within this definition are photographs produced for exhibition purposes only, subject to the same limitations as paintings, drawings, prints, and sculptures. Id. The right of attribution gives an artist the right to claim authorship of his or her work and prevent his or her name from being associated with works he or she did not create. Id. 106A(a)(1)(A)(B). The right of integrity grants the artist the right to prevent the use of his or her name as the author of the visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation. Id. 106A(a)(2). The author of a visual art also has the right to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation . . . and to prevent any destruction of a work of recognized stature. Id. 106A(a)(3)(A)(B). These rights are analogous to those protected by Article 6bis of the Berne Convention, which are commonly known as moral rights. H.R. REP. NO. 101-514, at 5, reprinted in 1990 U.S.C.C.A.N. 6915, 6915. Some states have statutes granting personal, reputation rights in artists of fine arts. See CAL. CIV. CODE 987 (West 2007) (the legislature declared that the physical alteration or destruction of fine art . . . is detrimental to the artists reputation, and artists therefore have an interest in protecting their works of fine art against any alteration or destruction); N.Y. ARTS & CULT. AFF. LAW 14.03 (McKinney Supp. 2008) (held to be preempted by 17 U.S.C. 106A in Bd. Managers of Soho Intl Arts Condo. v. City of New York, No. 01 Civ.1226 DAB, 2003 WL 21403333, at *13 (S.D.N.Y. June 17, 2003)).
37

H.R. REP. NO. 101-514, at 12 (1990), reprinted in 1990 U.S.C.C.A.N. 6915, 6922. Limited editions, as opposed to reproductions, are comprised of multiple originals of the same work and are thus deserving of special protection. Id.
38

The Visual Artists Rights Act of 1989; Hearings on H.R. 2690 Before the Subcomm. On Courts, Intellectual Prop., and the Admin. of Justice of the H. Comm. on the Judiciary, 101st Cong. at 4 (1990) (statement of Professor Jane C. Ginsburg).
39

17 U.S.C. 106A(d)(1), (e). In the event of a joint work, the artists share the rights as co-owners, and the rights under VARA terminate upon the death of the last surviving artist. Id. 106A(d)(3). The rights terminate at the end of the calendar year of the authors death. Id. 106A(d)(4). Subsection (e) grants the artist to waive, but not transfer, the rights conferred by VARA, with a written agreement. Id. 106A(e)(1). The written instrument must specifically identify the work, and uses of that work, to which the waiver applies. Id. If there are two or more artists involved, the waiver of one constitutes the waiver of all. Id. See id. 101 (using the word author as the term for the original creator of the copyrighted work); CODE PROPRIT INTELLECTUELLE [C. PI.] art. L-121-1 (Fr.) (using the term author for the person who created the copyrighted work).

10

Additionally, under VARA, the right of attribution allows the artist to be credited for work he or she created, as well as deny credit for work not created by him or her.40 The right of integrity allows the artist to prevent intentional distortion, mutilation, or modification that would cause prejudice to the honor or reputation of the artist.41 Honor and reputation have no definitions within the Copyright Act and were borrowed from the European moral rights laws.42 On the other hand, the French intellectual property code grants significant moral rights to authors of all works, not just those deemed to be artists of works of visual art.43 3. The French Intellectual Property Code: Moral Rights to All Copyrighted Authors As France is a civil law country, the French intellectual property code defines what is covered by the code and each of the rights protected in great detail.44 France recognizes similar economic rights as the United States.45 The French Code grants moral rights to the authors of all

40

17 U.S.C. 106A(a). The right of attribution allows the artist to disclaim authorship if the work has been mutilated, distorted, or modified in a manner that would be prejudicial to the reputation of the artist. Id.
41

Id. The mutilation, distortion, or modification must be intentional for there to be a violation of the right of integrity under this Act. Id. 106A(a)(3)(A). The modification . . . which is a result of the passage of time or the inherent nature of the materials is not a distortion, mutilation, or other modification described in subsection (a)(3)(A). Id. 106A(c)(1). The modification, distortion, or mutilation also must be prejudicial to [the artists] honor or reputation. Id. 106A(a)(2), (a)(3)(A).
42

WILLIAM M. LANDES & RICHARD A. POSNER, THE ECONOMIC STRUCTURE OF INTELLECTUAL PROPERTY LAW 275 (2003). The terms honor and reputation were borrowed without attempt at definition from European moral rights. Id. Even though the terms honor and reputation have no definition, the intended meanings are reasonably clear. Reputation is a matter of what other people think of one . . . Honor is a related concept but includes self-esteem. Id.
43

Compare 17 U.S.C. 106A (granting the moral rights of integrity and attribution only to those authors of works of visual art, as defined within the Copyright Act), with C. PI. art. L121-1 (granting moral rights to all authors of copyrighted works). See supra note 36 and accompanying text (defining works of visual art, per the Copyright Act).
44

C. PI. art. L111-1. The code grants moral and economic rights to author[s] of a work of the mind, which include literary materials, lectures, dramatic works, choreographic works, musical compositions, audiovisual works, paintings, photographs, software, blueprints, and maps, among others. Id. art. L112-2.
45

C. PI. art. L122-1L122-11. These include the rights to reproduce, prepare derivative works, publicly perform and display, and distribute. Id. The Code calls the right to performance and the right to reproduction collectively the right of exploitation and it belongs to the author originally. Id. art. L122-1. In the French intellectual property

11

works of authorship.46 Further, French intellectual property law grants broader moral rights than VARA.47 In France, for example, the rights of divulgation and retraction are included with the rights of integrity and attribution.48 However, under the French Intellectual Property Code, if an author assigns his exploitation rights to another, he or she can reconsider or entirely withdraw that assignment upon prior indemnification for any prejudice the retraction may cause the assignee.49 Although protection is extended to varying artists under traditional copyright law, courts have also used unfair competition law to extend protection to the creative works of individuals.50 B. Unfair Competition Law in the United States Whereas traditional copyright law exists to encourage creativity, the purpose of unfair
code, these rights are called the patrimonial rights. Id. art L122-1L122-12. Cf. 17 U.S.C. 106 (2006) (granting the rights to authors of reproduction, distribution, preparing derivative works, and public performances and displays).
46

C. PI. art. L121-1. An author shall enjoy the right to respect for his name, his authorship and his work. This right shall attach to his person. It shall be perpetual, inalienable and imprescriptible. It may be transmitted mortis causa to the heirs of the author. Exercise may be conferred on another person under the provisions of a will. Id. The term imprescriptible, as used with rights, means the rights cannot be lost to prescription. BLACKS LAW DICTIONARY, supra note 15, at 1437.
47

Compare 17 U.S.C. 106A (granting the rights of attribution and integrity to authors of a limited class of visual arts), with C. PI. art. L121-1L121-4 (granting the rights of attribution, integrity, divulgation, and retraction to authors of all copyrightable works).
48

C. PI. art. L121-1, L121-2, L121-4. The right of divulgation is the right of the author to decide when and how his work is to be disclosed to the public, including the right not to disclose it. Lucas, Kamina, & Plaisant, supra note 15, at 7. The right of retraction allows an artist to recover his or her economic rights after they have been assigned to another, but only if the artist indemnified the assignee. C. PI. art. L121-4. The rights of integrity and attribution are similar to those in VARA. C. PI. art. L121-1.; see also supra note 36 and accompanying text (providing the definitions of the rights of attribution and integrity found within VARA). In the French intellectual property code, the two rights are combined in one sentence: An author shall enjoy the right to respect for his name, his authorship and his work. C. PI. art. L121-1.
49

C. PI. art. L121-4. If the author decides to have his work published after having exercised his right to reconsider . . . he shall be required to offer his rights of exploitation in the first instance to the assignee he originally chose and under the conditions originally determined. Id.
50

See supra note 32 and accompanying text (providing examples of cases where courts have extended the Lanham Act to protect the reputations of the authors of creative works); infra Part II.B (discussing unfair competition law in the United States).

12

competition law in the United States is to prevent consumer confusion and deception.51 To further that purpose, the Lanham Act prohibits marks that falsely imply sponsorship or origin, the registration of marks that are likely to cause confusion with other registered marks, and prohibits the registration of marks that deceive consumers as to source or product.52 A trademark is any mark, word, symbol, or combination that is used to identify the source of a product or service.53 Furthermore, some devices that could otherwise serve as valid trademarks are barred from registration; for example, federal law prohibits trademark registration of a mark that is immoral, indecent, or disparaging to an individual, institution, or nation.54 As a result, the following section examines: (1) false endorsement of an individual; (2) federal trademark law and the registration of band names as trademarks; and (3) the two fair use doctrines related to trademark.55

51

See U.S. CONST. art. I, 8, cl. 8 (The Congress shall have the Power . . . To promote the Progress of . . . useful Arts . . . .); 15 U.S.C. 1052 (2006) (prohibiting the registration with the Patent and Trademark Office of any mark that is likely to cause confusion with an already registered mark); id. 1114 (defining trademark infringement as the use in commerce [of] any . . . colorable imitation of a registered mark . . . in connection with which use is likely to cause confusion, or to cause mistake, or to deceive . . . ); Iowa State Univ. Found., Inc. v. Am. Broad. Corp., 621 F.2d 57, 60 (2d Cir. 1980) (stating the purpose of copyright law is to promote creativity).
52 53

15 U.S.C. 1114.

Id. 1127. [T]rademark includes any word, name, symbol, or device, or any combination thereof . . . to identify and distinguish . . . goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. Id. Sounds, scents, and colors can be granted trademark protection if they have gained secondary meaning, if the consuming public associates them with the provider of the good or service. 1 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION 7:104 (4th ed. 2010). The National Broadcast Corporations chimes sequence of the notes g, e, and c, in the key of c, are trademarked. NBC CHIMES, Registration No. 0916,522. See Qualitex Co. v. Jacobsen Products Co., 514 U.S. 159, 174 (1995) (holding that the color of a dry-cleaning pad could have trademark protection if it has secondary meaning; consumers in the relevant market associated the green-gold color of the plaintiffs pads with the plaintiff); In re Clarke, 17 U.S.P.Q.2d 1238, 123940 (T.T.A.B. 1990) (granting trademark protection to the fragrance of yarn).
54

15 U.S.C. 1052(a) (No trademark by which the goods of the applicant may be distinguished . . . shall be refused registration . . . on account of its nature unless it(a) Consists of or comprises immoral . . . or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions . . . .).
55

See infra section II.B.1 (describing the common law sources of protection for the right of publicity in unfair competition); II.B.2 (explaining trademark protection and registering band names as trademarks); section II.B.3

13

1. False Endorsement and Commercial Appropriation The Lanham Act prohibits the use of a mark that falsely suggests endorsement of an individual, which serves as federal codification of the right of publicity when such use is for commercial gain.56 Notably, the Lanham Act does not preempt state law, and state laws of unfair competition may offer more protection for personal rights.57 As the right to publicity is an action in tort, there is no federal law regarding the right, though the Supreme Court has recognized the state-created right.58 Individuals possess the right to not have their names or likenesses placed in a context that reasonably appears to promote or endorse a product.59 The Lanham Act provides a party with a cause of action if the use of his or her name is likely to lead others to believe he or she endorsed the infringing product.60 Largely, the doctrine of false endorsement derives from unfair

(illustrating the two fair use doctrines of trademark).


56

15 U.S.C. 1052(c). No trademark by which the goods of the applicant may be distinguished . . . shall be refused registration on the principal register . . . unless it(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent. Id.
57

LONG, supra note 11, at 73; see also Tin Pan Apple, Inc. v. Miller Brewing Co., 737 F. Supp. 826, 836 (S.D.N.Y. 1990) (interpreting New York unfair competition law; the plaintiffs stated a claim for unfair competition when the defendants hired look-alikes for a Miller Lite television commercial). Fat Boys, the plaintiffs in Tin Pan Apple, filed suit against Miller Brewing Company (Miller) because Miller used one of their songs in a commercial for beer; the plaintiffs described their musical message in their pleadings. Id. at 828. The message they tried to convey to youth was to stay in school, to avoid all use of drugs or alcohol . . . . Id. But see Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 232 (1964) (holding that state unfair competition laws cannot be so broad as to grant monopoly protection and that federal patent law preempts such unfair competition laws).
58

See Zacchini v. Scripps-Howard Broad. Corp., 433 U.S. 562, 56970, 579 (1977) (holding that petitioner had the exclusive control over the publicity given to his performance as the human cannonball and that the First Amendment did not give the media the right to exploit the performances without giving the petitioner compensation). [T]he states interest in permitting a right of publicity, is . . . closely analogous to the goals of patent and copyright law, focusing on the right of the individual to reap the reward of his endeavors . . . . Id. at 573.
59

62A AM. JUR. 2D Privacy 82 (2005); see also id. at 69 (2005) ([T]he defendant must have appropriated to his or her own use or benefit the . . . commercial standing [or] public interest . . . of the plaintiffs name or likeness.). But see id. at 70 (2005) (stating that some states limit the appropriation cause of action to only appropriation for commercial or advertising purposes).
60

15 U.S.C. 1125(a)(1)(A). Any person who . . . uses in commerce any . . . name . . . which is likely to cause

14

competition.61 The key difference between false endorsement and the right of publicity is that there is no falsity requirement with an appropriation claim.62 For example, celebrities have succeeded in lawsuits by alleging that the defendant appropriated their names or likenesses, thereby giving a false impression that a given celebrity endorsed defendants productthis is a false endorsement.63 Celebrities can often establish common law unfair competition protection for their names and likenesses.64 This occurs because he or she has established secondary meaning in their names and images.65 Interestingly, the

confusion, or to cause mistake, or to deceive as to the affiliation, connection . . . of such person with another person, or . . . sponsorship . . . of his or her goods . . . by another person. Id. A false endorsement claim based on the unauthorized use of a celebritys identity is a type of false association claim, for it alleges the misuse of a trademark, i.e., a . . . device such as a . . . vocal imitation . . . which is likely to confuse consumers as to the plaintiffs sponsorship or approval of the product. Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1110 (9th Cir. 1992).
61

See RESTATEMENT (THIRD) OF UNFAIR COMPETITION 46 cmt. a (2010) (This Topic addresses the common law . . . rules that protect the commercial value of a persons identity . . . .); id. 47 (2010) (The use of name, likeness, and other indicia of a persons identity are used for purposes of trade . . . if they are used in advertising the users goods or services . . . .); see also Stewart v. Rolling Stone, LLC, 105 Cal. Rptr. 3d 98, 120 (Cal. Ct. App. 2010) (Plaintiffs [Unfair Competition Law] claim . . . fails because they have not demonstrated they suffered injury in fact and [have] lost money or property as a result of the unfair competition. The only injury alleged by plaintiffs is one based on damage to reputation occurring as a result of the misappropriation of their identities.).
62

JULIUS C.S. PINCKAERS, FROM PRIVACY TOWARD A NEW INTELLECTUAL PROPERTY RIGHT IN PERSONA 109 (1996); see also Parks v. LaFace Records, 329 F.3d 437, 446 (6th Cir. 2003) ([T]o prevail on a false advertising claim under 43(a) [of the Lanham Act], a celebrity must show that use of his or her name is likely to cause confusion among consumers as to the affiliation, connection, or association between the celebrity and the defendants goods . . . or as to the celebritys participation in . . . sponsorship . . . of the defendants goods . . . .).
63

See Solano v. Playgirl, Inc., 292 F.3d 1078, 1088 (9th Cir. 2002) (holding that the plaintiffs embarrassment from being on the cover of defendants magazine, shirtless, with the word exposed in the headline, was sufficient to create a genuine dispute of material fact over whether readers would perceive the article to indicate Solano appeared nude within the magazine); Eastwood v. Natl Enquirer, Inc., 123 F.3d 1249, 1256 (9th Cir. 1997) (finding that the defendant used the phrase Exclusive Interview to attract readers, knowing that no interview had actually occurred). But see Cher v. Forum Intl, Ltd., 692 F.2d 634, 638 (9th Cir. 1982) (finding that the Star had a right to inform its readers that the issue contained an article about Cher, that the article was based on an interview with Cher herself, and that the article had not previously appeared elsewhere when it ran, on the cover, Exclusive Series with Cher: My life, my husbands, and my many, many men after the headline; the cover did not give a false representation that Cher gave the Star an interview).
64

Dale M. Cendali & Brendan T. Kehoe, Technology and Entertainment Convergence 2009: Hot Business and Legal Issues in Technotainment, 978 P.L.I./PAT. 93, 108 (Sept. 2009).
65

Id. Secondary meaning is a special sense that a trademark . . . for . . . goods . . . has acquired, even though the trademark . . . was originally merely descriptive and, therefore, not protectable. BLACKS LAW DICTIONARY, supra note 15, at 1471. Secondary meaning is established when the source of the good or service can show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product

15

strength of a celebritys common law trademark is based on how well the celebrity is known among the relevant market that the infringing advertiser targets.66 Although generally a personal right, in California the right of publicity is treated as a property interest as to deceased individuals in their personalities, and these interests are transferable and descendible.67 False endorsement, however, is not always a successful claim because, in some circumstances, a court will find the speech to be noncommercial and grant it the full protection of the First Amendment.68 Whereas false endorsement occurs when ones name or likeness is used in a manner that falsely implies sponsorship for a good or service, commercial appropriation of the right of publicity occurs when one party uses the name or likeness of another for commercial gain without authorizationfalsity is not an element.69 Appropriation was not a recognized cause of

rather than the product itself. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982 (citing Kellogg Co. v. Natl Biscuit Co., 305 U.S. 111, 118 (1938)).
66

White v. Samsung Elecs. Am., Inc., 971 F.2d 1395, 140001 (9th Cir. 1992) (adapting the likelihood of confusion factors for celebrities). [T]he eight factors as applicable to the celebrity case to the celebrity case are: [T]he level of recognition that the plaintiff has among the segment of the society for whom the defendants product is intended; the relatedness of the fame or success of the plaintiff to the defendants product; the similarity of the likeness used by the defendant to the actual plaintiff; evidence of actual confusion; marketing channels used; likely degree of purchaser care; defendants intent on selecting the plaintiff; and likelihood of expansion of the product lines. Downing v. Abercrombie & Fitch, 265 F.3d 994, 100708 (9th Cir. 2001) (internal numbering removed). The Ninth Circuit in White v. Samsung Electronics America, Inc. dismissed Whites statutory appropriation of name or likeness claim, but upheld the common law claim of misappropriation of her identity. 971 F.2d at 1399.
67

See CAL. CIV. CODE 3344.1(b) (2010) (The rights recognized under this section are property rights, freely transferable, descendible, in whole or in part, by contract or by means of any trust or any other testamentary instrument . . . .); Comedy III Prod., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 805 (Cal. 2001) (interpreting section 3344.1 and holding that the statute confers a property interest in deceased persons personalities).
68

See Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180, 1186 (9th Cir. 2001) (We have concluded that LAM is entitled to the full First Amendment protection accorded noncommercial speech.). The plaintiff alleged violations of Californias unfair competition law and the Lanham Act, which the trial court found for him on each; the appellate court found that the First Amendment applied, as the speech was noncommercial, and reversed on all claims. Id. at 1189. The defendants used a photograph of Hoffman from his title role in Tootsie, in which he wore a dress, and replaced the original dress with a designer dress. Id. at 1183. The Ninth Circuit Court of Appeals found this was noncommercial speech because it did more than propose a commercial transaction. Id. at 1184 (quoting Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60, 66 (1983), for the definition of commercial speech).

16

action until 1953, when the Second Circuit heard Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.70 Interestingly, the use does not have to be for commercial gain for it to constitute appropriation.71 However, some states that recognize the cause of action only provide limited recovery for appropriation for commercial gain.72 In addition, not all commercial uses constitute actionable appropriation,73 but the cause of action is often linked to commercial value, and celebrities have been more successful at stating claims of commercial appropriation because their public value is higher.74 Stated otherwise, because celebrities are figures of public interest, their

69

See BLACKS LAW DICTIONARY, supra note 15, at 11819 (An invasion of privacy whereby one person takes the name or likeness of another for commercial gain.); supra note 62 and accompanying text (explaining that the key difference between a false endorsement claim and an appropriation claim is that the former requires proof of falsity).
70

202 F.2d 866, 868 (2d Cir. 1953) ([P]rominent persons (especially actors and ball-players) . . . would feel sorely deprived if they no longer received money for authorizing advertisements . . . [t]his right of publicity would usually yield them no money unless it could be made the subject of an exclusive grant which barred any other advertiser from using their pictures.). Haelan Laboratories involved a rival chewing gum manufacturer that allegedly induced a baseball player to breach the contract with the plaintiff that gave the plaintiff the exclusive right to the players picture. Id. at 867.
71

62A AM. JUR. 2D Privacy 70 (The common form of . . . appropriation . . . is for the purpose of advertising . . . or some similar commercial purpose . . . however, the rule . . . applies . . . when the defendant makes use of the plaintiffs name or likeness for his or her own purposes . . . even though the use is not a commercial one.). The appropriation must be for the benefit of another, even if not commercial. Id.
72 73

RESTATEMENT (SECOND) OF TORTS 652C cmt. bc (1977).

I. J. Schifres, Annotation, Invasion of Privacy by Use of Plaintiffs Name or Likeness in Advertising, 23 A.L.R.3d 865, 874 (1969 & May 2010 Supp.). [A] plaintiff, in order to recover, must establish that he was the person referred to in the allegedly objectionable advertisement. A mere incidental reference to him, not amounting to a meaningful commercial use, is not sufficient. Id. at 874. Where the unauthorized use of a partys name or likeness is published due to the newsworthiness of, or public interest in, the plaintiff, the use is not commercial for trade purposes. Id. at 882. See, e.g., Lane v. Random House, Inc., 985 F. Supp. 141, 144, 14648 (D.D.C. 1995) (finding that the publisher could use newsworthiness as a privilege for publication of an advertisement for the plaintiffs book on conspiracy theories surrounding the assassination of President John F. Kennedy; the plaintiffs theories and his book were newsworthy); Faloona v. Hustler Magazine, Inc., 607 F. Supp. 1341, 1354, 135961 (N.D. Tex. 1985), affd, 799 F.2d 1000, 100607 (5th Cir. 1986) (holding a plaintiff cannot state a cause of action for appropriation against the defendant based on nude photographs of the minor plaintiff in a sex magazine when the plaintiff was not otherwise identified).
74

LANDES & POSNER, supra note 42, at 64; See HUW BEVERLEY-SMITH, THE COMMERCIAL APPROPRIATION OF PERSONALITY 181 (2002) ([I]t has been stated that the appropriation of the identity of a relatively unknown person may result in economic injury or may itself create economic value in what was previously valueless.) (internal quotation marks omitted). Furthermore, a minority of jurisdictions only gives the right of publicity to celebrities. PINCKAERS, supra note 62, at 45. [C]ourts have concluded [from comment c. of the Restatement (Second) of Torts, section 652C] that there can be no invasion of privacy by appropriation, unless the plaintiff proves the value of his

17

publicity value is higher.75 Some courts have extended the right of publicity to musical groups in granting a preliminary injunction against the defendants for manufacturing bootleg t-shirts and buttons featuring musical groups images and names without permission of the licensee.76 The New York courts have outlined a three-part test for an individual claiming a violation of the right of publicity: that his name or likeness has publicity value; that he has exploited that value; and that the defendant has appropriated this right of publicity, without consent, for advertising purposes or for the purposes of trade.77 Traditionally, courts recognize only two defenses to the

identity, which the defendant has appropriated. Id. at 46. Comment c. to section 652C of the Restatement (Second) of Torts provides that for liability under the appropriation privacy tort, the defendant must have appropriated to his own use or benefit the reputation, prestige, social or commercial standing, public interest or other values of the plaintiffs name or likeness. RESTATEMENT (SECOND) TORTS 652C, cmt. c (1977). The majority of jurisdictions that recognize the right of publicity, however, grant the right to all persons; [a]lthough the publicity value of the identity of a non-celebrity is in most cases worth less than the value of the identity of a celebrity, it cannot be concluded that the non-celebritys identity has no value. PINCKAERS, supra, at 48. The commercial value for the defendant is inferred from the appropriation and is the essential element to appropriation. Id.; see also Samuel D. Warren & Louis D. Brandeis, The Right to Privacy, 4 HARV. L. REV. 193, 215 (1890) ([T]o whatever degree and in whatever connection a mans life has ceased to be private, before the publication under consideration has been made, to that extent the protection is to be withdrawn.).
75

Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180, 118687 (9th Cir. 2001) (holding that if the alleged appropriation is for a noncommercial use, the celebrity plaintiff, as a public figure, must prove actual malice by clear and convincing evidence); see also Carson v. Heres Johnny Portable Toilets, Inc., 227 F.3d 831, 837 (6th Cir. 1983) ([A] celebritys legal right of publicity is invaded whenever his identity is intentionally appropriated for commercial purposes.); Melville Nimmer, The Right of Publicity, 19 LAW & CONTEMP. PROBS. 203, 205 (1954). (It is generally the person who has achieved the somewhat ephemeral status of celebrity who must cope with the unauthorized use by others of his name and portrait, since the fact of his fame makes such use commercially attractive to others.). Nimmer states that [s]ome courts find this waiver to be absolute so that even aspects of the celebritys private life which he has never made public no longer command the protection of the law of privacy. Id. at 204 (citing Peay v. Curtis Publg Co., 78 F. Supp. 305, 309 (D.D.C. 1948)).
76

Winterland Concessions Co. v. Sileo, 528 F. Supp. 1201, 1203, 1214 (N.D. Ill. 1981). There, Winterland Concessions Company (Winterland) had exclusive licenses from bands such as the Rolling Stones and the Grateful Dead to manufacture t-shirts with the bands names and images. Id. at 1203. The defendants manufactured similar t-shirts, without authorization from the licensors or licensee. Id. The complaint alleged that defendants [m]isappropriat[ed] [the] [r]ight of [p]ublicity of the musicians, and the plaintiffs requested a preliminary injunction against the manufacturing of bootlegged t-shirts. Id. The district court granted the injunction, extending the right of publicity to musical groups and their licensees. Id. at 1214; see also Bi-Rite Enters. v. Button Master, 555 F. Supp. 1188, 1194 ([T]he . . . right of publicity[] . . . prevents unjust enrichment by providing a remedy against exploitation of the goodwill and reputation that a person develops in his name . . . .). In Bi-Rite Enterprises, the plaintiffs, a group of musicians, including Pat Benatar and Neil Young, and their merchandising licensee, sued the defendant for appropriating their respective right of publicity for advertising purposes. Id. at 119899.

18

appropriation of ones name or likeness: (1) the plaintiffs consent and (2) the newsworthiness of the plaintiffs name or likeness.78 Like unfair competition law, trademark law was also originally within the scope of the federal common law and the states respective common law. 79 A discussion of the protection afforded by trademark law is presented below.80 2. Trademark Protection The term trademark is often used synonymously with the four types of marks trademark law encompasses: (1) trademarks for goods;81 (2) service marks;82 (3) collective marks;83 and (4) certification marks.84 The trademark cannot be used commonly as a noun to receive trademark protection; rather, common use of a mark as a noun makes the mark a generic term that consumers recognize as the product, not the source.85 A term is generic if it is either a common
77

Bi-Rite Enters., 555 F. Supp. at 119899. This three-part test is consistent with the manner in which [California, Illinois, Georgia, and New York] courts have construed the right [of publicity]. Id. at 1199.
78

ROY L. MOORE & MICHAEL D. MURRAY, MEDIA LAW AND ETHICS, 536 (3d ed. 2008) (Consent, if knowingly offered in good faith, is usually an airtight defense . . . .).
79

LONG, supra note 11, at 67. In part, the Lanham Act was passed due to the Supreme Courts decision in Erie v. Tompkins, which eradicated the federal common law in actions in federal court based on diversity jurisdiction. Id. See Erie R.R. Co. v. Tompkins, 304 U.S. 64, 78 (1938) (holding there is no general federal common law). This encouraged Congress to pass a federal law protecting trademarks of businesses uniformly throughout the country. LONG, supra, at 7. Even with the Lanham Act, states have authority over unfair competition and trademarks; federal law does not preempt state law here. Id. at 93, 330.
80 81

See infra Part II.B.2 (discussing trademark protection).

Federal law defines a trademark as includ[ing] any word, name, symbol, or device, or any combination thereof used . . . to identify and distinguish . . . goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. 15 U.S.C. 1127 (2006).
82

Federal law defines a service mark as any word, name, symbol, or device, or any combination . . . used . . . to identify and distinguish the services of one person . . . from the services of others to indicate the source of the services . . . . Id.
83

Federal law defines a collective mark as a trademark or service mark used by the members of a cooperative, an association, or other collective group or organization . . . and includes marks indicating membership in a union, an association, or other organization. Id.
84

Federal law defines certification marks as any word, name, symbol, or device, or any combination used by a person other than its owner . . . to certify regional or other origin, material, mode of manufacture, quality, . . . or other characteristics of such persons goods or services . . . . Id.

19

descriptor for the type of good or service it is attached to or has become merely a description of the type of good or service it is attached.86 Trademark law protects the goodwill and reputation

of an entity from unfair competition.87 Its main purpose is to prevent uses of anothers mark that will lead to confusion, deception, or a false implication of sponsorship.88 Because trademark law seeks to protect marks that distinguish sources of goods and protect consumers from confusion, the law protects the goodwill the source has established with those consumers.89 Trademarks protect against infringing uses that actually cause or are likely to cause confusion among consumers.90 The remedies available for trademark infringement are monetary damages,

85

See King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577, 581 (2d Cir. 1963) (holding the term Thermos had become a generic term for vacuum bottles to the majority of consumers and, thus, could no longer be a trademarkit had entered the public domain).
86

LONG, supra note 11, at 44 (1993). Generic terms can never be subject to protection under the [Lanham] Act regardless of the amount of time they have been used. Id.; see also King-Seeley Thermos Co., 321 F.2d at 581 (2d Cir. 1963) (holding that Thermos is a generic term and no longer is entitled to trademark protection).
87

Thane Intl, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901 (9th Cir. 2002). According to the Ninth Circuit Court of Appeals, there are two underlying purposes of trademark law: ensuring that owners of trademarks can benefit from the goodwill associated with their marks[,] and . . . that consumers can distinguish among competing producers. Thane Intl, Inc., 305 F.3d at 901. If . . . consumer satisfaction and preference is labeled good will, [sic] then the trademark is the symbol by which the world can identify that good will [sic]. 1 MCCARTHY, supra note 53, at 3:2. Goodwill exists in the minds of the buying public . . . [it] is a business value that reflects the basic human propensity to continue to do business with a seller who has offered goods and services that the customer likes . . . . 1 id. at 2:17.
88

15 U.S.C. 1052. This section of the Lanham Act prohibits registration of marks if they so resemble[] a mark registered in the Patent and Trademark Office . . . as to be likely . . . to cause confusion, or to cause mistake, or to deceive. Id. 1052(d). Section 1052 also prohibits the registration of a mark that [c]onsists of . . . immoral or scandalous matter; or matter which may . . . falsely suggest a connection with persons . . . [or] institutions . . . . Id. 1052(a). Furthermore, a finding of immorality, scandalousness, or false connections with persons or institutions is an absolute bar to registration; not even secondary meaning can save the mark. See id. 1052(f) (Except as excluded by subsection[] (a) . . . of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicants goods in commerce.).
89

LANDES & POSNER, supra note 42, at 167 (2003). The name and mark of a brand is analogous to that of designating individuals by names rather than by descriptions. Id. A trademark conveys information . . . allow[ing] the consumer to say to himself, I need not investigate the attributes of the brand I am about to purchase because the trademark is a shorthand way of telling me that the attributes are the same as that of the brand I enjoyed earlier. Id. at 167. The relevant market is a factor in whether an allegedly infringing use is likely to cause confusion. Starbucks Corp. v. Wolfes Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009) (citing Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 49698 (2d Cir. 1961) for the factors used in determining likelihood of confusion).

20

including lost profits under some circumstances, and injunctions.91 The protection extends to using celebrity look-a-likes or sound-a-likes in advertisements, as well.92 Under the Lanham Act, infringing users are liable to the trademark owner for injunctive relief, compensatory damages, and, in some exceptional cases, attorney fees.93

90

15 U.S.C. 1114(1). In pertinent part, 1114(1) provides that: Any person who shall, without the consent of the registrant(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such . . . to . . . advertisements intended to be used in commerce . . . or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for remedies . . . provided [by sections 1116 and 1117] . . . . Id. 1114.
91

Section 1116 provides injunctive relief: The several courts vested with jurisdiction of civil actions arising under this chapter shall have power to grant injunctions, according to the principles of equity and upon such terms the court may deem reasonable to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under subsection (a) . . . of section 1125 of this title. 15 U.S.C. 1116. Section 1117 provides compensatory damages, including lost profits, actual damages, costs, and attorney fees: When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office . . . the plaintiff shall be entitled . . . to recover (1) defendants profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action . . . . The court in exceptional cases may award reasonable attorney fees to the prevailing party. Id. 1117.
92

See Tin Pan Apple, Inc. v. Miller Brewing Co., 737 F. Supp. 826, 836 (S.D.N.Y. 1990) ([T]here is also authority for the proposition that a defendants deliberate seeking out and use of as close a look-alike as possible to the plaintiff falls within the ban of the statute [N.Y. CIV. RIGHTS 5051], even if the plaintiffs name is not used.); see also Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1098, 1106 (9th Cir 1992) (holding that the plaintiff, singer Tom Waits, stated a cause of action for false endorsement under the Lanham Act, 15 U.S.C. 1125(a), and voice misappropriation under California law, against the defendants when they used a sound-alike for a television commercial).
93

15 U.S.C. 1116, 1117. Section 1116 provides injunctive relief to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation of subsection (a) . . . of section 1125. Id. 1116. Section 1117 provides monetary damages, including lost profits, actual damages, costs, and attorney fees: When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office . . . the plaintiff shall be entitled . . . to recover (1) defendants profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action . . . . The court in exceptional cases may award reasonable attorney fees to the prevailing party. Id. 1117; see also id. 1125(a) (Any person who . . . uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.).

21

Musical groups can obtain trademark protection for their group names if, of course, the names fall within the subject matter of trademark protection.94 Trademarks can be federally registered by any entity as long as the mark distinguishes the service of one from those of another and if the mark is not deceptive, immoral, disparaging, or generic.95 Thus, some musical artists, like the hypothetical Phuk et al., are prohibited from registering their names as a trademark with the Patent and Trademark Office. In some situations, bands form partnerships or corporations subsequent to signing an exclusive deal with a record label in order to register their marks as trademarks.96 Registering the bands name as a trademark serves two main purposes: first, it protects the name as a trademark, and second, it enables the remaining band members to continue to use the name if a member leaves.97 If the ex-member utilizes the bands name after leaving, his use may be an infringement subject to one of the fair use affirmative defenses.98 Therefore, a closer

94

Gregory M. Krakau & John A. Mizhir, Jr., Trademark Rights of Musical Groups, L.A. LAWYER, May 2007, at 1415. Bands should form a business entity, such as a partnership or limited liability corporation, which will own the name of the band, and should register the name with the United States Patent and Trademark Office. Id.
95

15 U.S.C. 1052. A mark will not be registered if the examining attorney finds it to consist of immoral, scandalous, or disparaging matter, or is deceptive, or is confusingly similar to a mark already registered. Id. Members of the public may challenge the registration of a mark for immorality, scandalousness, or disparagement, if they have a real interest in the outcome and a reasonable belief that the mark will cause them harm. See Ritchie v. Simpson, 170 F.3d 1092, 109496, 1097 (Fed. Cir. 1994) (holding that a member of the public had standing to oppose the registration of O.J. Simpson, O.J., and The Juice for a variety of goods because the opposer reasonably believed that the registration of O.J. Simpsons name, as an accused spouse-murderer, would disparage his values, especially those values relating to his family.). But see McDermott v. San Francisco Womens Motorcycle Contingent, 81 U.S.P.Q.2d 1212, 121314 (T.T.A.B. 2006) (holding that the opposer did not have standing to prevent registration of Dykes on Bikes because he failed to show a reasonable belief that he or others like him would be disparaged).
96 97 98

Krakau & Mizhir supra note 94, at 12. Id.

See id. at 11 (Disputes arise when the fired musician proceeds to announce . . . years later . . . that he or she has formed a new band and intends to use the original bands name. In these cases, the courts have universally held that the new bands use of the identical name . . . is trademark infringement.). But see id. ([A] former member has every right to reference his or her former affiliation.). The latter circumstance, where a member is merely referencing his former affiliation, fits within the nominative fair use doctrine of trademark. See New Kids on the

22

examination of fair use as a defense to trademark infringement is required.99 3. Fair Use as a Defense to Trademark Infringement Trademark infringement occurs when the use of a similar mark is likely to cause confusion between the plaintiffs mark and the infringing mark.100 Importantly, the fair use doctrine of trademark is not the same as it is in copyright.101 The fair use doctrine of trademark, while an affirmative defense to infringement, is available under more limited circumstances than that of copyright.102 Fair use applies in cases where the infringing user utilizes the trademark as a reference to the trademark owner, which is why a former band members utilization of the bands name could be a fair use.103

Block v. News Am. Publn, Inc., 971 F.2d 302, 30708 (9th Cir. 1992) (defining nominative fair use as use that merely refers to the trademark owner and that does not imply sponsorship or endorsement).
99 100

See infra Part II.3 (describing fair use as a defense to trademark infringement).

15 U.S.C. 1125(a)(1)(A); see also Starbucks Corp. v. Wolfes Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009) (using the eight-factor balancing test to determine likelihood of confusion from Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 49698 (2d Cir. 1961)). The eight factors are: (1) [S]trength of the trademark; (2) similarity of the marks; (3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may bridge the gap by developing a product for sale in the market of the alleged infringers product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) respective quality of the products; and (8) sophistication of the consumers in the relevant market. Starbucks, 588 F.3d at 115 (citing Polaroid Corp., 287 F.2d at 49698).
101

LONG, supra note 11, at 272. Although fair use is often equated with the fair use doctrine under the copyright laws . . . the two are not related. Nevertheless, some courts in Lanham Act cases have used copyright analogies to grant a type of fair use to certain parodies. Id. at 272, n.146. Fair use for trademark purposes is more of a good faith defense than it is in copyright law. 15 U.S.C. 1115(b)(4). The use of anothers registered mark is not infringement if the use . . . of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party. Id.
102 103

LONG, supra note 11, at 272.

New Kids on the Block, 971 F.2d at 30708 (9th Cir. 1992). The New Kids on the Block sued News America Publishing, Inc., after the defendant placed a survey in two of its publications, USA Today and The Star, with a phone number for fans to call, for 50 cents for the USA Today survey and 95 cents for that in The Star, to vote on which member was the favorite. Id. at 304. The defendant used pictures of the New Kids on the Block with each survey. Id. The plaintiffs, [f]earing that the two newspapers were undermining their hegemony over their fans, filed an action claiming that the defendants infringed on their trademark and misappropriated their image. Id. at 305. Cases like this are best understood as involving a non-trademark use of a marka use to which the infringement laws simply do not apply . . . Such nominative use of a mark . . . lies outside the

23

There are two types of fair use in trademark: (1) nominative fair use, or the use of a mark to describe the marks owner; and (2) comparative fair use, or the use of a mark to describe the goods or services of the marks owner.104 Nominative fair use grants the media an affirmative defense to alleged infringement, as long as the media is merely describing and not implying endorsement or sponsorship of the marks owner.105 Nominative fair use also protects use of the trademark within advertising and parodies of the trademark.106 Parody of a trademark, such as when one uses a similar mark in a manner that could not rationally cause any confusion as to the source, but is merely used as satire, also constitutes fair use.107 Conversely, comparative fair use occurs when one producer is comparing his or her good to that of another.108 The Lanham Act

strictures of trademark law: Because it does not implicate the sourceidentification function that is the purpose of trademark, it does not constitute unfair competition; such use is fair because it does not imply sponsorship . . . by the trademark holder. Id. at 30708 (emphasis removed); Krakau & Mizhir supra note 94, at 12.
104

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 118 (2004); New Kids on the Block, 971 F.2d at 308. Nominative fair use occurs when the use is to describe the owner of the mark and there is no other way to do so. KP Permanent Make-Up, 543 U.S. at 118. The use cannot imply endorsement or sponsorship by the owner of the mark. Id. [A] commercial user is entitled to a nominative fair use defense provided he meets . . . three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. Id.
105

New Kids on the Block, 971 F.2d at 308 (holding that newspapers use of the name New Kids on the Block in describing the New Kids on the Block for a phone survey was a nominative fair use of the name); see also WCVBTV v. Boston Athletic Assn, 926 F.2d 42, 46 (1st Cir. 1991) (the words Boston Marathon . . . do more than call attention to Channel 5s program; they also describe the event that Channel 5 will broadcast . . . the use of words for descriptive purposes is . . . a fair use.).
106

New Kids on the Block, 971 F.2d at 307 ([C]ompetitors may use a rivals trademark in advertising and other channels of communication if the use is not false or misleading.).
107

Girl Scouts v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 123031 (S.D.N.Y. 1969) ([R]ational analysis of the situation does not indicate a likelihood that the public will believe that the Girl Scouts are the authors of the poster that showed a smiling girl dressed in the well-known green uniform of the Junior Girl Scouts, with her hands clasped above her protruding, clearly pregnant abdomen.).
108

KP Permanent Make-Up, Inc., 543 U.S. at 118.

24

defines comparative fair use as an affirmative defense.109 Due to fair use as a defense in copyright and nominative and comparative fair uses as defenses in unfair competition, the two broader areas of law Phuk et al. could use to protect how and where its name is used, copyright and unfair competition, remain inadequate for bands similarly situated to Phuk et al. Bands are barred from registering their names as copyrights.110 As such, the Copyright Act provides no protection; the French Intellectual Property Code, however, protects the moral rights of authors of all copyrightable works.111 The Lanham Act provides limited protection, as Phuk et al. is not registerable as a trademark.112 However, PCF may be able to assert the fair use defense of unfair competition for its use of Phuk et al. in the editorial.113 Furthermore, the use of the right of publicity to prevent unfair competition does not apply for Phuk et al.s utilization, as it is a personal right.114 III. ANALYSIS Using a moral rights framework more akin with that of France would better protect artists and authors, but would likely be untenable in the United States because American intellectual property law generally focuses on economic, rather than personal, interests; the American

109

See 15 U.S.C. 1115(b)(4) (2006) (stating there is an affirmative defense when the use of the name . . . is a use, otherwise than as a mark, . . . of a term or device which is descriptive of and used fairly and in good faith only to describe the goods of such party.).
110

See supra note 54 and accompanying text (asserting there is only one substantial subject matter restriction on copyright registration, which is that underlying ideas and facts cannot by copyrighted); supra note 14 (explaining that words and short phrases are barred from registration).
111

See supra Part II.A.3 (describing what moral rights are granted by the French Intellectual Property Code and to whom they apply).
112 113

See supra Part II.B.2 (discussing the Lanham Act and defining its limitations).

See supra Part II.B.3 (explaining the fair use defenses of unfair competition); infra Part III.B.2 (illustrating how PCF could assert nominative fair use as a defense for its use of Phuk et al.).
114

See supra Part II.B.1 (defining the right of publicity and explaining that it is a personal right); infra Part III.C (comparing the Lanham Act to the right of publicity).

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framework of trademarks and copyright protection generally is sufficient to provide remedies for harm to artists and authors reputations.115 Though the American framework is generally sufficient, it fails to protect those similarly situated to Phuk et al. because their names are neither registerable as trademarks or as copyrights.116 As a result, this Part examines the limits of the current framework.117 This Part analyzes the limits of American trademark and copyright protection, and assesses how the French approach would better protect artists and authors, especially those similarly situated to Phuck et al. First, Part III.A compares the narrow moral rights granted in the United States to the broad moral rights granted in France.118 Next, Part III.B discusses the differences between federal copyright and trademark law, namely the statutory limitations and fair use defenses of each.119 Finally, Part III.C compares federal unfair competition law to the common law right of publicity.120 A. Moral Rights: Visual Artists Rights Act and the French Intellectual Property Code

115

See supra Part II (describing the American intellectual property framework and the interests it protects); supra note 15 (explaining that American copyright law protects pecuniary interests). Despite the fact that the current system is generally sufficient, occasionally a situation arises where that system cannot work. See generally Stewart v. Rolling Stone, LLC, 105 Cal. Rptr. 3d 98, 104 (Cal. Ct. App. 2010) (providing an example of a situation where trademark registration is not possible because the artists name is indecent and where copyright protection is insufficient because it does not protect the artists name at all).
116

See supra Part II.A (explaining that, in spite of the fact that Phuk et al. may be creative, it is unregisterable as a copyright because it is merely a short phrase, and falls within 37 C.F.R. section 202.1(a)); Part II.B.2 (explaining that, because the Patent and Trademark Office determined Phuk et al. is immoral or scandalous, it is barred from trademark registration).
117

See infra Part III (analyzing three areas of law of which artists similarly situated Phuk et al. may avail themselves of to prevent the unauthorized use of their names or likenesses).
118

See infra Part III.A (comparing the moral rights granted by VARA to those granted by the French Intellectual Property Code).
119

See infra Part III.B (contrasting the Copyright Acts broad application and fair use defense to the Lanham Acts comparatively narrow application and fair use defenses).
120

See infra Part III.C (distinguishing federal unfair competition law from the common law right of publicity).

26

Within VARA, the American Copyright Act grants limited moral rights due to the fact that VARA only applies to works of visual art, as defined within the Copyright Act, that are either single copies or hand-numbered and signed copies of a series of 200 prints or less.121 The rights granted by VARA last for a much shorter length of time than regular copyright protections.122 VARA grants the rights of attribution and integrity to works of visual art; these rights protect the honor and reputation of the author.123 Before the enactment of VARA, some courts used the Lanham Act to protect the reputations of authors.124 Arguably, the courts that used the Lanham Act to protect such authors reputations under circumstances where VARA would not apply.125 Because of this, courts and commentators argue these courts extended the Lanham Act to the breaking point in doing so.126

121

See supra note 36 and accompanying text (providing the definitions of a work of visual art, the right of attribution, and the right of integrity).
122

Compare 17 U.S.C. 106A(d) (With respect to works of visual art created on or after the effective date set forth in section 610(a) of the Visual Artists Rights Act of 1990, the rights conferred by subsection (a) shall endure for a term consisting of the life of the author. (2) With respect to works of visual art created before the effective date . . . but title to which has not, as of such effective date, been transferred from the author, the rights conferred by subsection (a) shall be coextensive with, and shall expire at the same time as, the rights conferred by section 106 . . . (4) All terms of the rights conferred by subsection (a) run to the calendar year in which they would otherwise expire.), with id. 302(a) (In generalCopyright in a work created on or after January 1, 1978, subsists from its creation and . . . endures for a term consisting of the life of the author and 70 years after the authors death).
123

17 U.S.C. 106A(a). The author of a work of visual art has the right (A) to claim authorship of that work and (B) to prevent the use of his or her name as the author of any work of visual art which he or she did not create; [and] (2) shall have the right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation . . . . Id. 106A(a)(1)(2). See supra note 36 and accompanying text (defining the rights of attribution and integrity).
124

See Gilliam v. Am. Broad. Co., 538 F.2d 14, 2425 (2d Cir. 1976) ([A]n allegation that a defendant has presented a garbled . . . distorted version of plaintiffs work seeks to redress the very rights sought to be protected by the Lanham Act . . . and should be recognized as stating a cause of action under that statute.); Benson v. Paul Winley Record Sales Corp., 452 F. Supp. 516, 518 (S.D.N.Y. 1978) ([D]efendants misrepresentations can cause irreparable injury to Bensons professional reputation. Erotic Moods, while of quality, is much less sophisticated in style than that which has engendered Bensons fame.).
125

See 17 U.S.C. 101, 106A(a) (granting the moral rights of attribution and integrity to the author of a work of visual art as defined by 101); supra note 36 (providing the definition of a work of visual art).

27

Unlike American copyright law, the French Intellectual Property Code grants broad moral rights to authors of all copyrightable works.127 The French grant four moral rights to authors of all copyrightable works: the right of attribution, the right of integrity, the right of divulgation, and the right of retraction.128 Importantly, the rights of attribution and integrity in France attach to the person and protect the authors name, whereas the same cannot be said in the United States.129 Thus, under French law, the author of a work has protection over where his or her name is published.130 The rights granted by the French Intellectual Property Code pass through generations, compared the moral rights granted by VARA, which only last for the lifetime of the author.131 Phuk et al. could potentially convince a court to apply the Lanham Act to its situation, protecting its moral rights with the federal trademark law.132
126

See Choe v. Fordham Univ. Sch. of Law, 920 F. Supp. 44, 49 (S.D.N.Y. 1995) (stating the plaintiffs reliance on Gilliam was misplaced and that [t]here is no federal claim for violation of plaintiffs alleged moral rights[] when the alterations were not as severe as those in Gilliam and when the copyrighted work is not a work of visual art); Danoff, supra note 31, at 188 ([M]ost courts believe the connection between the Lanham Act and its ability to protect moral rights is tenuous.); Yonover, supra note 34, at 98 (stating the use of the Lanham Act to protect moral rights of authors before VARAs enactment was strained and the relationship between the Lanham Act and moral rights is tenuous).
127 128

CODE PROPRIT INTELLECTUELLE [C. PI] art. L121-1L121-4 (Fr.).

Id. art. L111-1, L121-1, L121-2, L121-4. Moral and economic rights are granted to author[s] of a work of the mind, which include literary materials, lectures, dramatic works, choreographic works, musical compositions, audiovisual works, paintings, photographs, software, blueprints, and maps. Id. art L112-1. The rights of attribution and integrity are included in article L121-1, which states: An author shall enjoy the right to respect for his name, his authorship and his work. This right shall attach to his person. It shall be perpetual, inalienable and imprescriptible. It may be transmitted mortis causa to the heirs of the author. Exercise may be conferred on another person under the provisions of a will. Id. art. L121-1 (emphasis added). The right of retraction allows an author to rescind publication of the work. Id. art L-121-4. The right of divulgation allows the author to choose if, when, and how a work will be disclosed to the public. Id. art. 121-2.
129 130 131

C. PI. art. L121-1. Id.

Compare 17 U.S.C. 106A(d)(1) (2006) (With respect to works of visual art created on or after the effective date set forth in section 610(a) of the Visual Artists Rights Act of 1990, the rights by subsection (a) [of 106A] shall endure for a term consisting of the life of the author.) with DUTFEILD & SUTHERSANEN, supra note 31, at 241 ([M]oral rights . . . are perpetual in . . . France . . . .).

28

B. Copyrights v. Trademark Though both are federal statutes, copyright and trademark law are immensely different.133 For one thing, the federal Copyright Act preempts equivalent state laws, whereas the Lanham Act does not.134 This section compares the two Acts: Part III.B.1 compares the statutory limitations to under copyright and trademark law; and Part III.B.2 analyzes the differences between the fair use doctrines under copyright law and trademark law.135 1. Statutory Limitations to Copyright and Trademark Copyright law grants monopolistic protection to the expression of ideas in fixed forms, subject to some limitations, notably the requirement of a modicum of creativity.136 As opposed to the strict subject matter limitations within trademark law, copyright law has minimal subject matter limitations.137 There is only one substantial statutory limitation of what material is copyrightablethat underlying ideas, facts, and processes are not copyrightableregardless

132

See supra note 32 and accompanying text (providing examples of cases where courts have extended the Lanham Act to protect authors of copyrighted material with reputational rights).
133

Compare 17 U.S.C. 301 (On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the rights within the general scope of copyright . . . .whether created before or after that date and whether published or unpublished, are governed exclusively by this title.), with Sears, Roebuck, & Co. v. Stiffel Co., 376 U.S. 225, 232 (1964) ([A] State . . . may protect businesses in the use of their trademarks or distinctive dress in the packaging of goods so as to prevent others . . . from misleading purchasers as to the source of the goods.).
134 135

17 U.S.C. 301.

See Part III.B.1, infra, for a comparison of the statutory and regulatory limitations of each the Copyright Act and the Lanham Act. See Part III.B.2, infra, for a comparison of the fair use doctrines of the Copyright Act and the Lanham Act.
136

17 U.S.C 102. In order for an expression to obtain copyright protection, there must be a modicum of creativity; that is, there must be at least some creativity involved within the expression. Feist Publn , Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 36263 (1991).
137

Compare 15 U.S.C. 1052(a) (2006) (No trademark by which the goods of the applicant may be distinguished . . . shall be refused registration . . . on account of its nature unless it(a) Consists of or comprises . . . immoral matter . . . .) (emphasis supplied), with 17 U.S.C. 102 (stating that original works of authorship are copyrightable as long as they fall within one of the eight categories, with no subject matter limitations).

29

of whether the material fits within one of the eight categories.138 Furthermore, simple phrases, names, and slogans are not copyrightable.139 Other than these few relatively minor limitations, there are no subject matter restrictions on copyrightability.140 One strict limitation of trademark is the subject matter, as defined within the Lanham Act.141 The Lanham Act falls short in protecting the identities of some musicians, such as Phuk et al., because it prohibits marks that are immoral, scandalous, deceptive, or that are likely to cause confusion among consumers.142 Importantly, the distinguishing quality of a mark is based on the strength of the mark; merely descriptive marks (i.e., names) can be registered only upon acquiring secondary meaning.143 However, a finding that a mark is immoral, scandalous, or

138

See supra note 18 (listing the categories of copyrightable works of authorship). The only subject matter limitation as to what works can be copyrighted is that [i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. 17 U.S.C. 102(b).
139

Material Not Subject to Copyright, 37 C.F.R. 202.1 (2010). Compare 15 U.S.C. 1127 (2006) ([T]rademark includes any word, name, symbol, or device, or any combination thereof . . . to identify and distinguish . . . goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.), with 37 C.F.R. 202.1(a) ([W]orks not subject to copyright and application for registration of such works cannot be entertained includes words and short phrases, such as names, titles, and slogans.).
140

The First Amendment prohibits Congress from creating subject matter restrictions in copyright law. See U.S. CONST. amend. I (Congress shall make no law . . . abridging the freedom of speech, or of the press . . . .).
141 142

15 U.S.C. 1052.

Id. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it(a) Consists of or comprises immoral, deceptive, or scandalous matter . . . . Id. 1052(a).
143

See LANDES & POSNER, supra note 42, at 188 (The fanciful markthe made-up name that resembles no other word, such as Exxon or Kodakis the most distinctive . . . . Much like a fanciful mark in their . . . legal treatment are arbitrary and suggestive marks . . . .); see also LONG, supra note 11, at 44 (Generic terms can never be subject to protection under the [Lanham] Act regardless of the amount of time they have been used.). Once a mark becomes generic, that is, once it enters the common lexicon for the product and not to identify the source, the mark enters the public domain. King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577, 581 (2d Cir. 1963). Generic words cannot be trademarked at all . . . . [I]f a trademark becomes a generic name, trademark protection immediately ceases. A generic name or term is by definition the name not of a brand but of an entire product . . . . LANDES & POSNER, supra, at 190.

30

disparaging is an absolute bar to registrationsecondary meaning is irrelevant.144 Trademark infringement occurs when use of anothers mark falsely implies endorsement or sponsorship or the use is likely to cause confusion with a registered mark.145 Both the Copyright Act and Lanham Act provide for fair use as affirmative defenses to infringement, though for different purposes.146 2. Fair Use Defenses of Copyright and Trademark Law The purpose of the fair use section of the Copyright Act is to promote and foster creativity.147 The fair use defense protects creators of parodies because, by definition, a parody must include enough copyrighted material that the parody can be understood as such.148 The threshold question for fair use is whether the original work is copyrightable.149 The fair use defense only applies if the infringement is of work that is copyrightable; thus, PCF is unable to use the copyright fair use as a defense for its exploitation of Phuk et al.s name in its editorial.150 However, assuming the alleged infringement was of a copyrightable work, the courts balance

144

15 U.S.C. 1052(f) (Except as excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicants goods in commerce.).
145 146

Id. 1052(d).

See supra note 22 and accompanying text (providing the purpose of fair use within the Copyright Act); supra note 103 and accompanying text (providing the same for the Lanham Act); infra Part III.B.2 (comparing the fair use defenses of copyright and trademark law).
147 148

17 U.S.C. 107 (2006); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994).

Campbell, 510 U.S. at 582 (The threshold question when fair use is raised in defense of parody is whether a parodic character may reasonably be perceived.).
149

Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 580 (1985) (Brennan, J., dissenting) (stating that the threshold question for fair use cases is whether the material is copyrightable).
150

17 U.S.C. 107 (Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching . . . , or research, is not an infringement of copyright.) (emphasis added); see 37 C.F.R. 202.1 (2010) (The following are . . . works not subject to copyright and applications for registration of such works cannot be entertained: (a) Words and short phrases such as names, titles, and slogans . . . .).

31

four factors.151 The factors are: the purpose and character of the use . . . ; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for . . . the copyrighted work.152 The balancing of factors does not occur when determining whether fair use applies in trademark law, largely due to the different purposes of the statutes.153 Whereas the purpose of fair use in copyright is to encourage creativity, the purpose of fair use in trademark is to allow competitors to describe products, rather than to identify a source.154 Moreover, as opposed to copyright, where only one type of fair use exists, two types of fair use serve as affirmative defenses in trademark.155 Nominative fair use applies when the alleged infringement is a reference to the trademark owner; this type of fair use includes parodies of the mark.156 The other type, comparative fair use, applies when the alleged infringer is comparing

151 152 153

17 U.S.C. 107. Id. (internal numbering omitted).

See 15 U.S.C. 1115(b)(4) (2006) ([T]he use of the . . . device charged to be an infringement is a use, otherwise than as a mark, . . . which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin . . . .). The purpose of allowing the fair use of anothers mark, in good faith, is to allow consumers to have comparative information. Id.; KP Permanent Make-Up, Inc. v. Lasting Impressions I, Inc., 543 U.S. 111, 123 (2004). But see U.S. CONST. art. I, 8, cl. 8 (The Congress shall have the Power . . . To promote the Progress of . . . useful Arts . . . .); Iowa State Univ. Found., Inc. v. Am. Broad. Corp., 621 F.2d 57, 60 (2d Cir. 1980) (The doctrine of fair use . . . permits courts to avoid rigid application of the copyright statute when . . . it would stifle the very creativity which that law is designed to foster.).
154

See supra note 146 and accompanying text (explaining the difference in purposes between the Copyright Act and the Lanham Act).
155

The first is comparative fair use, which is defined in title 15, subsection 1115(b)(4) of the U.S. Code, as the use of a name . . . otherwise than as a mark . . . of a term or device which is descriptive of and used fairly and in good faith only to describe the goods of such party . . . . 15 U.S.C. 1115(b)(4). The other is nominative fair use, which occurs when the use is to describe the mark owner and there is no other way to do so. New Kids on the Block v. News America Publn, Inc., 971 F.2d 302, 30708 (9th Cir. 1992).
156

See New Kids on the Block, 971 F.2d at 30708. (Such nominative use of a mark . . . lies outside the strictures of trademark law . . . .) In New Kids on the Block, the defendant published the plaintiffs mark with a toll-free phone number to be called for fans to vote for their favorite members of the New Kids on the Block; the court said that this publication was necessary as a reference to the band. Id.; see LONG, supra note 11, at 272 n.146 ([S]ome courts in Lanham Act cases have used copyright analogies to grant a type of fair use to certain parodies.). One

32

its product to the mark owners product.157 The fair use defenses are sufficient to protect comparative advertising and freedom of the press; however, they make it difficult for plaintiffs to succeed in certain unfair competition claims because of newsworthiness and the low likelihood that consumers will perceive the use to constitute endorsement.158 Nominative fair use enables the print media to publish a mark as a reference to the mark owner without infringing the trademark.159 Conceivably, if PCF could validly argue its advertisement is a true editorial, it may be able to take advantage of the nominative fair use of trademarks for the exploitation of Phuk et al.s name; for this argument to succeed, PCF would also need to establish that Phuk et al. is newsworthy.160 As Phuk et al. is neither registerable as a trademark nor a copyright, it is relegated to attempting to convince a court to apply the right of publicity to protect from the type of exploitation committed by PCF.161

rationale behind this type of fair use is freedom of speech and of the press. See Stewart v. Rolling Stone, LLC, 105 Cal. Rptr. 3d 98, 114, 118, 120 (Cal. Ct. App. 2010) (holding that the editorial was noncommercial speech as a matter of law and was entitled to full First Amendment protection and that mere negligence of publishing the plaintiffs names in such a close proximity to Camel advertisements was insufficient to override editorial discretionthe plaintiffs would have had to prove actual malice in order to succeed).
157

KP Permanent Make-Up, Inc. v. Lasting Impressions I, Inc., 543 U.S. 111, 118 (2004). Comparative fair use is defined within the Lanham Act. 15 U.S.C. 1115(b)(4) (stating that there is an affirmative defense to infringement when the use of the name . . . is a use, otherwise than as a mark, . . . of a term or device which is descriptive of and used fairly and in good faith only to describe the goods of such party . . . .).
158

See New Kids on the Block, 971 F.2d at 308 (holding that nominative fair use barred the plaintiffs from succeeding in a trademark infringement action when the defendant published their mark as a reference to the plaintiffs).
159

New Kids on the Block, 971 F.2d at 30708. For an infringing use to reap the benefit of nominative fair use, the following three elements must be met: First, the product or service in question must not be one readily identifiable without the use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. Id. at 308.
160

See supra note 105 and accompanying text (defining nominative fair use and where it applies); supra note 73 and accompanying text (defining newsworthiness and explaining why it could provide PCF with a defense for the exploitation of Phuk et al.).
161

See infra Part III.C (explaining why the right of publicity, too, is inadequate to protect Phuk et al.).

33

C. Unfair Competition and the Right of Publicity The right of publicity is also inadequate for Phuk et al. to use to protect itself from PCFs exploitation.162 The right is a personal one, and few courts have extended it to musical groups.163 Though Phuk et al. may be able to use false endorsement, it would be unable to use commercial appropriation because commercial appropriation falls within the right of publicity, which is a personal right and has rarely been extended to bands.164 Some argue that it is wise for musical groups to form a legal entity, such as a partnership, and register their names as trademarks with the Patent and Trademark Office.165 However, not all groups are able to do so.166 Phuk et al. tried and failed because the Patent and Trademark Office found the mark to be scandalous; this is an absolute bar to registration and secondary meaning is irrelevant.167 For those that cannot register their name with the Patent and Trademark Office for reasons other than an immoral or scandalous mark, in order to have trademark protection, they must acquire secondary meaning within the relevant market.168 Because trademark law derives

162

See supra Part II.B.1 (describing common law unfair competition, false endorsement, and commercial appropriation).
163

See supra note 76 and accompanying text for examples of courts that have extended the right of publicity to musical groups.
164 165

See supra Part II.B.1 (defining false endorsement and commercial appropriation).

See Krakau & Mizhir, supra note 94, at 1415 (Step 4. Form a business entity and create a written agreement . . . Step 5. Register the mark . . . The band should register its name as a mark with the U.S. Patent and Trademark Office.).
166

For example, the Patent and Trademark Offices examining attorney denied our hypothetical band, Phuk et al., registration of its name as a trademark because she found the term to be scandalous. 15 U.S.C. 1052(a) (2006).
167

See supra note 54 and accompanying text (providing the statutory prohibition of federal registration of trademarks that are scandalous or immoral); supra note 88 and accompanying text (explaining that the finding that a mark is scandalous or immoral is barred from registration completely, that secondary meaning is irrelevant).
168

See supra note 65 and accompanying text (defining secondary meaning and how it is acquired); see also White v. Samsung Elecs. Am., Inc., 971 F.2d 1395, 140001 (9th Cir. 1992) (stating the relevant market is the segment of the public that knows the celebrity and to whom the advertising is targeted).

34

from the common law of unfair competition, similar principles apply.169 For example, the strength of a bands mark (its name and logo, if any) is measured by how well they are known within the relevant market, similar to that with celebrities.170 Furthermore, with musicians, trademark and unfair competition law protects against the use of sound-a-likes.171 One concern with the right of publicity is that, as a personal right, the individual cannot assign his or her publicity value to another.172 Another problem is that for infringement of personal rights to be actionable, there must be a showing of actual injury.173 However, some courts have recognized a right of publicity cause of action when the use of the plaintiffs images and likenesses causes reputational injury or is injurious to a belief the plaintiffs seek to convey,

169

See LANDES & POSNER, supra note 42, at 20506 ([Trademark law mainly is [common law], despite the Lanham Act, which codifies and supplements rather than displaces the common law of unfair competition, of which the common law of trademark is a part . . . .).
170

See Downing v. Ambercrombie & Fitch, 265 F.3d 994, 100708 (9th Cir. 2001) ([S]trength of plaintiffs mark . . . restate[d] . . . as applicable to the celebrity case, which can be stated as the level of recognition that the plaintiff has among the segment of the society for whom the defendants product is intended . . . .).
171

See Waits v. Frito-Lay, Inc., 978 F.2d 1093, 109798 (9th Cir. 1991) (finding that the defendant infringed the singer, Tom Waits, unfair competition rights when it used the music to one of Waits songs and hired a sound-a-like to sing over the music for a commercial); Tin Pan Apple, Inc. v. Miller Brewing Co., 737 F. Supp. 826, 837 (S.D.N.Y. 1990) (finding the defendant violated the plaintiffs unfair competition rights by using look-and sound-alikes for a beer commercial).
172

Nimmer, supra note 75, at 209 ([S]ince the right of privacy is non-assignable, any agreement purporting to grant the right to use the grantors name and portrait . . . is construed as constituting merely a release as to the purchaser and as not granting the purchaser any right which he can enforce as against a third party.). But see Comedy III Prod., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 805 (Cal. 2001) (holding that, at least as far as deceased individuals are concerned, their right to publicity is a property right). In Comedy III Productions, Inc., the California Supreme Court interpreted section 990 of the California Civil Code, recodified as section 3344.1, which protects a deceased personalitys name, voice, signature, photograph, or likeness from commercial exploitation without consent. Id. at 802 n.7, 805. See CAL. CIV. CODE 3344.1(b) (2010) (The rights recognized under this section are property rights, freely transferable, descendible, in whole or in part, by contract or by means of any trust or any other testamentary instrument . . . .). In addition, both statutes, sections 3344 and 3344.1, provide for damages of the larger of $750 or the actual damages suffered . . . as a result of the unauthorized use . . . . Id. 3344(a); id. 3344.1(a). Both statutes also include express exemptions for news, public affairs, or sports broadcast. Id. 3344(f); id. 3344.1(j).
173

Nimmer, supra note 75, at 216. In arguing that the right of publicity should be treated as a property right rather than a personal one, Nimmer states that the damages should be computed in terms of the value of the publicity appropriated . . . rather than, as in privacy, in terms of the injury sustained by the plaintiff. Id.

35

further confusing the application of the claim.174 The doctrine of commercial appropriation is not uniform throughout the United States.175 Due to this lack of uniformity, the applicability of the cause of action is ambiguous.176 In California, for example, both the common law right of privacy and statutory commercial appropriation are available to the plaintiff.177 The plaintiff in such cases must allege actual injury.178 An appropriation plaintiff need not prove that the infringing use is likely to lead others to believe the plaintiff endorsed a product or service; however, with false endorsement, proving falsity is a key element of the cause of action.179 The Lanham Act provides federal protection against the use of a name or likeness that falsely

174

See Tin Pan Apple, Inc. v. Miller Brewing Co., 737 F. Supp. 1093, 109798 (S.D.N.Y. 1990) (finding the defendants liable for violating the plaintiffs, who had strong anti-drug and anti-alcohol beliefs and sought to convey those beliefs through their music, rights of publicity when it used look- and sound-a-likes in a beer commercial).
175 176

PINCKAERS, supra note 62, at 4648.

Id. The cause of action is only applicable for those individuals that can prove the value of their identity in a minority of jurisdictions. Id. at 45. In the majority of jurisdictions that recognize the right of publicity, commercial appropriation protects all individuals; however, the publicity value of the identity of a non-celebrity is in most cases worth less than the value of the identity of a celebrity . . . . Id. at 48; see also LANDES & POSNER, supra note 42, at 64 ([T]he right of publicitythe right of a person (a right valuable mainly to celebrities) to control the use of his or her name or picture for advertising and other commercial purposes.); BEVERLEY-SMITH, supra note 74, at 174 (Liability arises where the defendant appropriates the commercial value of a persons identity by using, without consent, the persons name, likeness or other indicia of identity for the purposes of trade.) (quoting the RESTATEMENT (THIRD) OF UNFAIR COMPETITION 46 (1995)).
177

Stewart v. Rolling Stone, LLC, 105 Cal. Rptr. 3d 98, 104 (Cal. Ct. App. 2010). In order to obtain relief under the common law cause of action for commercial misappropriation, a plaintiff must prove: (1) the defendants use of the plaintiffs identity; (2) the appropriation of plaintiffs name or likeness to defendants advantage, commercial or otherwise; (3) lack of consent; and (4) resulting injury. Id. at 111. Under California Civil Code section 3344, the statutory remedy for commercial misappropriation, a plaintiff must show that he or she has suffered injury in fact and has lost money or property as a result of the unfair competition. Id. (internal quotation marks removed). This section provides that [a]ny person who knowingly uses anothers name, voice, signature, photograph, or likeness, in any manner . . . for purposes of advertising . . . without such persons consent . . . shall be liable for any damages sustained by the plaintiff. CAL. CIV. CODE 3344(a). The statute expressly exempts the use of a name, voice, signature, photograph, or likeness in connection with any news, public affairs, or sports broadcast . . . . Id. 3344(d); see also Comedy III Prod., Inc., 21 P.3d at 800 (stating that section 3344.1 applies the same way as section 3344, but grants a property interest rather than a personal interest).
178 179

Stewart, 105 Cal. Rptr. 3d at 111.

PINCKAERS, supra note 62, at 109; see also Parks v. LaFace Records, 329 F.3d 437, 446 (6th Cir. 2003) (holding that a false advertising celebrity plaintiff must show that use of his or her name is likely to cause confusion . . . as to the affiliation, connection, or association between the celebrity and the defendants goods . . . .) (internal quotation marks removed).

36

implies sponsorship or endorsement of a product.180 The Lanham Act provides that an infringer shall be liable if the use of a name or likeness misrepresents such sponsorship.181 For a party to succeed on a Lanham Act claim, the burden is on the plaintiff to prove the allegedly infringing use created a false inference that the individual endorsed or sponsored the product or service.182 With false endorsement, plaintiffs must allege actual damages and a likelihood of confusion as to sponsorship or endorsement; harm to reputation is insufficient.183 With respect to celebrities, because they have waived their right to publicity to some extent, false endorsement provides more relief than the Lanham Act provides.184 Unfair competition law creates a cause of action for false representations of endorsement or sponsorship; however, this is often limited by the value of the personality that is being used.185 False endorsement is further limited because it

180

15 U.S.C. 1125 (2006). The relevant language of this section states: Any person who . . . uses in commerce any . . . false or misleading description of fact, or false or misleading representation of fact, which . . . (A) is likely to cause confusion . . . or to deceive as to the affiliation, connection, or association of such a person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act. Id. 1125(a)(1)(A) (emphasis added).
181 182

15 U.S.C. 1125(a)(1)(A).

Compare Eastwood v. Natl Enquirer, Inc., 123 F.3d 1249, 1256 (9th Cir. 1997) (finding that the defendant used the phrase Exclusive Interview to attract readers, knowing that no interview had actually occurred), with Cher v. Forum Intl, Ltd., 692 F.2d 634, 638 (9th Cir. 1982) (finding that the Star had a right to place on the cover Exclusive Series with Cher: My life, my husbands, and my many, many men after the headline, to inform its readers that the issue contained an article about Cher, that the article was based on an interview with Cher herself, and that the article had not previously appeared elsewhere when it ran; the cover did not give a false representation that Cher gave the Star an interview).
183

See Stewart, 105 Cal. Rptr. 3d at 120 (Plaintiffs [unfair competition] claim . . . fails because they have not demonstrated they suffered injury in fact and [have] lost money or property as a result of the unfair competition.); see also Parks, 329 F.3d at 446 ([T]o prevail on a false advertising claim under 43(a) [of the Lanham Act], a celebrity must show that use of his or her name is likely to cause confusion among consumers as to the affiliation, connection, or association between the celebrity and the defendants goods . . . or as to the celebritys participation in . . . sponsorship . . . of the defendants goods . . . .).
184

See Warren & Brandeis, supra note 74, at 215 (The general object . . . is to protect the privacy of private life, and to whatever degree and in whatever connection a mans life has ceased to be private . . . to that extent the protection is to be withdrawn.).

37

requires a showing of likelihood of confusion among consumers as to the endorsement.186 For bands such as Phuk et al., American law provides limited protection against the type of exploitative conduct of PCF.187 The Copyright Act prohibits bands from copyrighting their names and does not provide moral rights to any authors but those of works of visual art.188 The French Intellectual Property Code grants moral rights to authors of all copyrightable material; however, a similar system is unlikely to take hold in the United States because of the interests American copyright law protects.189 Some courts have extended the Lanham Act to protect the reputations of authors of copyrighted works in a manner similar to that of the French law, but the decisions have been seen as anomalies; furthermore, the Lanham Act bars registration of scandalous marks.190 The right of publicity protects individuals from the type of exploitation
185

See Downey v. Ambercrombie & Fitch, 265 F.3d 994, 1007 (9th Cir. 2001) ([T]he term mark applies to the celebritys persona, the strength of the mark refers to the level of recognition that the celebrity has among the segment of the public to whom the advertisement is directed, and the term goods concerns the reasons for or source of the celebritys fame.); White v. Samsung Elec. Am., Inc., 971 F.2d 1395, 140001 (9th Cir. 1992) (In cases concerning confusion over celebrity endorsement, the plaintiffs goods concern the reason for or source of the plaintiffs fame.); see also 15 U.S.C. 1125(a)(1)(A) (Any person who . . . uses in commerce . . . any word, term, name, symbol, or device, or . . . any . . . false or misleading representation of fact, which(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation . . . of such person with another person, or as to the origin, sponsorship, or approval of his or her goods . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.); CAL. CIV. CODE 3344(a) (2010) (Any person who knowingly uses anothers name, voice, signature, photograph, or likeness, in any manner, 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 persons consent . . . shall be liable for any damages sustained by the person . . . .); id. 3344.1(a) (Any person who uses personalitys name, voice, signature, photograph, or likeness, in any manner . . . for purposes of advertising or selling . . . products, merchandise, goods, or services, without prior consent from the person or persons specified in subdivision (c), shall be liable for any damages sustained by the person or persons injured as a result thereof.).
186

White v. Samsung Elecs. Am., Inc., 971 F.2d 1395, 13991401 (9th Cir. 1992). The strength of a celebritys mark is defined by how well he or she is known in the relevant market. Id. at 1399.
187

See supra Part I for the hypothetical situation where PCF published Phuk et al.s name in an editorial, asserting the band supports PCFs homophobic message.
188 189

See supra Part III.B.1 (presenting the regulatory and statutory limitations of the Copyright Act).

See supra Part III.A (comparing the moral rights granted by VARA to those granted by the French Intellectual Property Code).
190

See supra Part III.A (providing examples of cases in which the courts have extended the Lanham Act into the realm of copyright law); Part III.B (offering that the statutory limitations and restrictions of the Lanham Act bar

38

suffered by Phuk et al., but the right is a personal one and has rarely been extended to bands.191 IV. CONTRIBUTION Phuk et al. is barred from registering its name as either a copyright or trademark. The right of publicity does not apply to the band. As a result, this Part proposes an amendment to VARA, introducing aspects of the Lanham Act to give a narrow class of musicians moral rights similar to those for authors of works of visual art. To do this, this Part proposes a definition of work of musical art. Lastly, this Part amends VARA to include the definition of work of musical art and strengthens section by granting the rights for the same period of time as the other exclusive copyright rights. The amendment brings VARA closer to the French Intellectual Property Code in that it grants moral rights to a narrow class of musicians and authors of visual art. Amending VARA to grant the right of integrity to musical groups or artists that are on record labels with forty or fewer signed artists or that only do single-album contracts will protect those situated similarly to Phuk et al. and where their names are used.192 This falls in line with the purpose of limiting VARA to single prints or hand-numbered and signed series of 200.193 The amendments introduce elements of the purpose of trademark law, notably the protection of the reputation, or goodwill, a given group has built over time.194 Furthermore, the amendments will

Phuk et al. from registering its name because of a finding the name is scandalous).
191

See supra Part III.C (asserting that the right of publicity fails to provide those similarly situated to Phuk et al. protection from commercial appropriation, but that the false endorsement section of the Lanham Act may provide that protection).
192

See generally Stewart v. Rolling Stone, LLC., 105 Cal. Rptr. 3d 98, 105 (Cal. Ct. App. 2010) (plaintiffs alleging that the use of their names in such close proximity and entwinement with Camel cigarette advertisements would lead readers to believe the plaintiffs endorsed Camel cigarettes).
193

See supra note 37 and accompanying text (explaining the purpose of limiting the class of works of authorship to which VARA applies). The original or few copies with which the artist was most in contact embody the artists personality far more closely than subsequent mass produced images. H. REP. NO. 101-514, at 12 (1990), reprinted in 1990 U.S.C.C.A.N. 6915, 6922.
194

See supra note 51 and accompanying text (describing the purpose of federal trademark law).

39

bring the United States more in line with European intellectual property law, which will only strengthen the protection American copyright holders are afforded in European countries.195 To achieve the goal of protecting the reputations of a limited class of musiciansespecially those that cannot obtain trademark registration for their namesCongress should amend VARA to include such a limited class.196 Such an amendment will include elements of federal trademark and unfair competition law, as well as federally codifying specific aspects of the right of publicity.197 In addition to this amendment, there necessarily will be an addition to the definitional section of the Copyright Act to include the limited class of musicians.198 The first change to 17 U.S.C. 106A will be to include authors of works of musical art within 106A(a). However, before that can be done, the definition of a work of musical art must be added within 17 U.S.C. 101, the definitional section. The definition of work of musical art will be defined similarly to work of visual art, in that it will only include a limited class of artists. A. Proposed changes to 17 U.S.C. 101. Definitions. Except as otherwise provided in this title, as used in this title the following terms and their variant forms mean the following: An anonymous work is a work on the copies or phonorecords of which no natural person is identified as author. .... A known reputation is the reputation of an author that is well-known in the

195

See supra note 31 and accompanying text (explaining the United States motivation in passing the original VARA).
196 197 198

See supra note 36 (providing the original, rights-conferring language of VARA). See supra note 87 (describing the purpose of trademark law as protecting reputation and goodwill).

See supra note 58 and accompanying text (explaining that there is neither a federal statute codifying the right of publicity nor uniformity between the states in how the cause of action is applied).

40

relevant market for that authors works. This includes known ideologies, or political beliefs, of the author or authors. .... Phonorecords are material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term phonorecords includes the material object in which the sounds are first fixed. .... A work of musical art is a phonorecording, no matter the medium as long as it is fixed in physical medium, that exists in a single copy, in limited editions of 500 copies or fewer, or is released by the artist, band, or group, or by a record label that only signs contracts with recording artists for one phonorecording at a time or that does not sign contracts to release the phonorecording at all, whether or not hand signed and numbered by the author. A work of musical art does not include Albums in purely digital media, including, but not limited to .aac, .mp3, or .wma files.199 .... Commentary This definition of a work of musical art will preserve the legislative intent in passing the original VARA and the definition of a work of visual art.200 This definition sufficiently limits the class of works and artists that will be protected by the amendment to VARA. Furthermore, the definition of work of musical art only includes phonorecords in a physical medium in

199 200

The proposed amendments are italicized and are the contribution of the author.

See supra note 37 and accompanying text (explaining the purpose of limiting the class of works of visual art as preserving the artists personality); supra note 36 (providing the definition of a work of visual art as defined by 17 U.S.C. 101).

41

series of less than 500, and not digital files, which limits the class of artists to which the amendment applies. This limitation alleviates the concern that such reputational rights will trump other rights granted by the Copyright Actnotably fair use, especially regarding parodies.201 By adding known reputation to the definition section of the Copyright Act, the amendment seeks to protect the reputation an author has established. This reputation has to be one that is well-known throughout the relevant market. The relevant market element of the definition derives from the Polaroid factors of trademark law.202 The relevant market includes those whom the defendants use targets, as well as those who know of the authors reputation. Once the definitions of known reputation and work of musical art are added to the definition section, VARA can be amended to include work of musical art, bringing American copyright law nearer to that of European countries, notably France.203 B. Proposed Amendments to VARA, 17 U.S.C. 106A. The proposed amendments to VARA to include works of musical art incorporate French moral rights only so far as extending the moral rights to a slightly broader class of authors than previously extended. The rights of divulgation and retraction remain unincorporatedthe amendments only incorporate a broader application of French moral rights by including another class of authors.204

201

See supra note 29 (positing that an author of a work subject to VARA could prohibit parodies that prejudice the authors or the works reputation or honor).
202 203

See supra note 66 and accompanying text (providing the Polaroid factors as applied to celebrities).

See supra note 46 and accompanying text (describing the perpetual nature of French copyright protections, notably regarding the moral rights that the American VARA seeks to protect).
204

See supra note 15 and accompanying text (defining the rights of divulgation and retraction); note 36 and accompanying text (defining the rights of attribution and integrity); note 37 and accompanying text (explaining why

42

Rights of certain authors to attribution and integrity. (a) Rights of attribution and integrity.Subject to section 107 and independent of the exclusive rights provided in section 106, the author of a work of visual art or of a work of musical art (1) shall have the right (A) to claim authorship of that work, and (B) to prevent the use of his or her name as the author of any work of visual art or any work of musical art which he or she did not create; (2) shall have the right to prevent the use of his or her name as the author of the work of visual art or work of musical art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation; and .... (4) shall have the right to prevent the use of his or her name in a manner that would be prejudicial to his or her honor or known reputation (b) Scope and exercise of rights.Only the author of a work of visual art or of a work of musical art has the rights conferred by subsection (a) in that work, whether or not the author is the copyright owner. The authors of a joint work of visual art or of a work of musical art are coowners of the rights conferred by subsection (a) in that work. .... (d) Duration of rights. (1) With respect to works of visual art or works of musical art created on or after the effective date set forth in section 610(a) of the Visual Artists Rights Act of 1990, the rights conferred by subsection (a) shall endure for a term consisting of the life of the author be coextensive with, and shall expire at the same time as, the rights conferred by section 106. (2) With respect to works of visual art created before the effective date set forth in section 610(a) of the Visual Artists Rights Act of 1990, but title to which has not, as of such effective date, been transferred from the author, the rights conferred by subsection (a) shall be coextensive with, and shall expire at the same time as, the rights conferred by section 106.
moral rights apply to only a narrow class of authors).

43

(3) (2) In the case of a joint work prepared by two or more authors, the rights conferred by subsection (a) shall endure for a term consisting of the life of the last surviving author and 70 years after such authors death. (4) (3) All terms of the rights conferred by subsection (a) run to the end of the calendar year in which they would otherwise expire.205 Commentary The proposed changes to VARA are rather extreme and should be implemented over time. The proposed duration of the rights conferred by 106A is the same duration as the exclusive rights granted by 106.206 This treats the rights created by 106Athe moral rightsthe same as the other exclusive rights granted by copyright law. The addition of works of musical art and known reputation will serve to protect those artists similarly situated to Phuk et al., who cannot obtain copyright protection or trademark registration on their name.207 By inserting a provision for known reputation, the amendment aims to prevent situations like that of PCFs use of Phuk et al.s name to further its homophobic agenda.208 The rights created by the amendments to 106A remain subject to 107, the statutory fair use defense.209 The proposed amendments protect musicians reputations similarly to VARAs original protection of artists reputations. The amendments strengthen VARA by protecting more than merely a limited class of authors of visual art. The new act encourages musicians to release limited edition albums; it does not discourage the release of traditional albums. There are cons

205 206

17 U.S.C. 106A (2006). The proposed amendments are italicized and are the contribution of the author.

See supra note 12 and accompanying text (providing the duration of the exclusive rights granted by 17 U.S.C. 106).
207 208

See supra note 54 and accompanying text (providing the statutory limits on trademark registration).

See supra Part I (providing a hypothetical situation where the band, Phuk et al.s name was used by an antihomosexual activist group, PCF, in an editorial to try to bring in new members).
209

See supra note 23 (providing the language of 17 U.S.C. 107).

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to the amendments, though, notably because the American copyright system is based on economic rights.210 One of these is the potential effect on parodies, which can qualify for the fair use defense within the Copyright Act.211 However, the rights granted by VARA remain subject to the fair use defense of the Copyright Act and, thus, parodies will still be permitted so long as the parodic character is readily recognized. V. CONCLUSION All Phuk et al. ever wanted to do was play music and have a good time doing so. The members are largely apolitical, with very few issues they care about. The one they, individually and as a band, agree on most is that every person should have the same rights. This includes gay rights, though only one member being publicly vocal on the matter (the other three merely prefer to stay out of the political arena). The bands viewpoint is known throughout its fan-base and gay rights activists often hand out literature outside concerts. Again, the band is not very large, nationally, but is extremely popular in the Midwest. Knowing of the bands popularity (and apparently ignoring the bands politics), PCF placed a full-page editorial in The A.V. Club, the national entertainment newspaper, stating Phuk et al. supports the organization. The band is concerned that fans will think the editorial is factual, and thus want to stop further publication. However, Phuk et al. failed to obtain trademark registration, and they fear nothing can be done to prevent such exploitations. The amendments to the Copyright Act better protect musicians such as Phuk et al. and their reputations. The amendments provide aspects of trademark and the right of publicity in order for

210

See supra note 15 and accompanying text (positing that the American copyright system is based on economic rights to encourage creativity).
211

See supra note 29 (illustrating how a the author of a work subject to VARA could prohibit others from creating parodies of his or her work because the parodies may prejudice the reputation or honor of the author).

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such bands to protect themselves. Phuk et al. and others situated similarly, cannot obtain trademark registration due to the statutory prohibition of registering indecent marks. The current copyright framework in the United States prohibits copyrighting the names of bands, as such names are merely words or simple phrases. The way to protect these bands is to amend the Copyright Act to grant the rights of attribution and integrity to such a limited class of authors of musical art. The proposed amendments to the definitions within the Copyright Act and to VARA will protect such musicians. The common-law causes of action for false endorsement or commercial appropriation are sufficient in protecting individuals from such use of their name or likeness. However, the rights protected by these torts are personal rights, not property rights. They cannot be used to protect the commercial value of business entities or animals names or images. Few courts have extended the causes of action to musical groups and their merchandise licensees. Bands, such as Phuk et al., which cannot obtain trademark registration or copyright protection to protect against the unauthorized use of their names or likenesses, can attempt to convince a court to recognize these causes of action to protect against misappropriations. However, it is rare for groups to be protected by these causes of action. Phuk et al. is largely left unprotected from PCFs use of its name in the editorial cartoon, absent an amendment to VARA that protects works of musical art, their authors, and their authors known reputations.

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