My colleague, Professor Adam Steinman, has written widely and thoughtfully on federal civil procedure. Like certain other law professors, however, Adam is a (frustrated?) musical artist. Adam recently found a potentially lucrative outlet for his creativity: he entered Intuit‘s clever TurboTax Tax Rap contest, and a shot at a $25,000 payday, with the following video:
Intuit, however, rejected the video — not on artistic grounds, but because (in the course of making a Who’s the Boss? reference) Adam mentioned actor Tony Danza. Undeterred, Adam simply revised his lyrics and left Tony out of it:
Was Intuit (or YouTube) right to worry that Adam might have infringed on Tony Danza’s rights? As software companies, whose livelihood depends on deriving revenue from intellectual property, you might expect them to be sensitive to possible infringements. What’s the problem if Adam mentions Tony Danza?
- Copyright? Personal names are too short to be copyrightable and are expressly excluded from protection by 37 C.F.R. § 202.1(a), so Tony Danza is going to have to look elsewhere for protection.
- Trademark? It’s a common misunderstanding of trademark law to suppose that owning a mark gives you the right to censor other people and forbid them from using the mark at all. But it has never been a violation of trademark to use a mark to refer to the mark holder’s own product. You can refer to The New York Times as “the New York Times” without violating its trademark — if it were otherwise, comparative advertising would be impossible, and trademark law would run into serious First Amendment problems. So if you’re using the words “Tony Danza” to refer to Tony Danza rather than to someone else (and you’re not saying that Tony has sponsored or endorsed your product), there’s no basis for a claim of trademark infringement.
- What’s left? The right of publicity, which is protected both under state statutes and as a matter of common law, is probably Tony’s last, best hope. California Civil Code § 3344(a) forbids using someone else’s “name, voice, signature, photograph, or likeness” in advertisements without their consent. So just saying the words “Tony Danza” might require you to get Tony Danza’s permission if you’re using those words in an advertisement for TurboTax. (Context, however, is critical — as section 3344(e) of the statute makes clear, just because somebody somewhere along the way is making money, it doesn’t mean that the use of the celebrity’s identity is necessarily commercial.) Even if the statute doesn’t apply, Tony Danza might be able to reach beyond to the common-law right of publicity, which gives a celebrity a tort claim against anyone who “appropriates their name or likeness.” The common-law right of publicity used to describe a fairly narrow doctrine, and was typically found to apply only where the reference to a celebrity implied an endorsement or sponsorship by that celebrity. Those limits, however, were thrown out the window in 1992 by the Ninth Circuit’s famous Vanna White decision, which interpreted the right of publicity to apply even to a situation in which the celebrity’s name, voice, signature, photograph, or likeness were not used at all. (The White case drew a famous dissent from Judge Kozinski, who complained that “Under the majority’s opinion, it’s now a tort for advertisers to remind the public of a celebrity.”). If White is read literally, then perhaps Intuit is right; hearing the words “Tony Danza” might indeed call to mind Tony Danza, the celebrity, and perhaps that’s enough for liability. I’m inclined to think that Judge Kozinski got it right, and there’s room enough for Tony Danza to make a comfortable living off his natural talents without forbidding Adam to utter Tony’s name in a rap about tax preparation software, but such is the world in which the White decision seems to have left us.
Update: If you want to vote for Adam’s video in the TurboTax contest, begin here: http://www.youtube.com/contest/TheTaxRap, and go to entry #145. Voting begins March 31 and runs through April 8.