Right of Publicity in a Famous Voice: Copyright and False Endorsment Claims from the Grave

In Facenda v. N.F.L. Films, Inc., 542 F.3d. 1007 (3d Cir. Sept. 9, 2008), the Third Circuit tackles a major league set of questions. First, if a copyright owner in a video recording uses portions of the copyrighted sound recording containing a famous voice in promoting a video game, does the long dead famous football announcer's estate have claims for false endorsement under the Lanham Act? The answer is yes.

Second, if a copyright owner has the exclusive right to prepare a derivative work, doesn't this preempt any state-law right of publicity statute?

The answer is sometimes yes, sometimes no.

The NFL produced a 22-minute "documercial" (if you really want to know the difference between a documercial and an infomercial, you will have to read the 26-page decision). The documercial promoted the Madden '06 video game and used modified sound recordings of the legendary football announcer John Facenda's voice. Though he is long dead, Facenda's voice is still remembered, see his page on Wikipedia. Thanks, Wikipedia for the Madden 'O7 image accompanying this text. Madden '08 here.

Was the documercial "commercial speech"? Was it a product endorsement as Facenda's estate urged or was it a documentary? The court found that the video was an advertisement. Facenda had given the NFL a release shortly before his death that permitted the NFL the right to use his voice and image as long as it was not used to promote a product. The NFL's use was found to be a false endorsement in violation of section 43(a)(1)(a) of the Lanham Act, 15 U.S.C. Section 1125(a)(1). The court's discussion of the First Amendment's limitations on the Lanham Act is an interesting one.

Section 301(a) of the Copyright Act preempts legal and equitable rights that are "equivalent to" the exclusive rights protected by the Copyright Act. The court considered the cases that treat a person's "persona" as something independent of copyright's subject matter.

Essentially, in an excellent overview of the case law treating the extent to which a person who participate in the creation of a copyrighted work has surrendered their persona for promotional purposes, the court held that where the copyrighted work is excerpted to promote that expressive copyrighted work, such uses are preempted by the Copyright Act. But where a person's image, or in this case - their voice - is taken from one copyrighted work to promote another product, under certain circumscribed circumstances, which the court found in the Facenda case, such uses may violate that person's right of publicity.

Nazi Looted Art, Fernand Leger and the Minneapolis Institute of Arts

Last week the Minneapolis Star Tribune reported that the Minneapolis Institute of Arts had restituted Fernand Leger's 1911 painting "Smoke Over Rooftops" to the heirs of Alfonse Kann. The article is here. According to the article, it took the heirs ten years of researching and working with the MIA to achieve restitution.
Why such a delay? Many archives are not accessible, much research remains to be done. And there is very little research into a central figure in Nazi art looting: Curt Valentin. Valentin was mentioned in passing in Lynn Nicholas's excellent and groundbreaking work The Rape of Europa (now a film available on DVD).
Curt Valentin left Berlin in 1937 to establish an art gallery in New York City. The gallery was named after Karl Buchholz, one of the four art dealers appointed by Hitler to liquidate art considered "degenerate" by the Nazi regime. I have included a jpeg image above of a letter dated November 14, 1936 from the Reich Chamber of Fine Arts to Curt Valentin stating the following:
Re: Your letter of 22 September 1936
The President of the Reich Chamber of Fine Arts instructed me to tell you that it would be of no objection to him if you make use of your connections with the German art circle and thereby establish supplementary export opportunities, if [this is done] outside Germany. Once you are in a foreign country, you are free to purchase works by German artists in Germany and make use of them in America. ###
The letter bears a stamp with an eagle clutching a wreathed Swastika and is found in the Jane Wade papers, Archives of American Art, microfilm reel #2322, frame 929.
The collections of the Philadelphia Museum of Art (see provenance of El Lissitzky's Proun 2 here, the Museum of Modern Art (a search of the website finds over 40 results for Valentin including a Beckmann here) and many others are full of works purchased from Curt Valentin. When art dealer Otto Kallir came to the United States from Vienna, Austria in 1939, he went to Curt Valentin's gallery on 57th Street in New York City to pick up artworks safely transported out of Nazi Austria. Boston's Museum of Fine Arts has a Beckmann portrait of Valentin here.
Curt Valentin was also the art dealer of choice for Alfred Barr, the founder of the Museum of Modern Art. As Alice Goldfarb Marquis, author of Alfred H. Barr Jr.: Missionary for the Modern, wrote to the New York Times here,
On June 30, 1939, the Fischer Gallery in Lucerne auctioned 150 items. Many dealers boycotted the sale of these stolen works. One of the bidders was Curt Valentin, a German refugee dealer, who owned the Buchholz Gallery in New York. He was there at the behest of Alfred Barr, director of the Museum of Modern Art in New York, who provided money donated to the museum.
Mr. Valentin bought five works: Andre Derain's "Valley of the Lot at Vers," stolen from the Cologne Museum; E. L. Kirchner's "Street Scene" and Wilhelm Lehmbruck's "Kneeling Woman," both taken from the Berlin National Gallery; Paul Klee's "Around the Fish," pilfered from the Dresden Gallery, and Henri Matisse's "Blue Window," seized from the Essen Museum.
So why don't all of the other museums return the stolen artworks that they purchased through Curt Valentin? Why don't the other museums frankly acknowledge Curt Valentin's status as a Nazi agent from 1936 through the end of the war?

On Saturday, September 16, 1944, the Federal Register published an Executive Order dated May 29, 1944 describing a seizure of enemy property by the Alien Property Custodian (a U.S. official empowered by the Trading With the Enemy Act). The seizure was of Karl Buchholz's property, destined for Curt Valentin's gallery on 32 East 57th Street. The list (it looks like over 200 artworks) includes the following artist: Ernst Barlach, Max Beckmann, Marc Chagall, Edgar Degas, Otto Dix, Werner Gilles, Erich Heckel, Carol Hofer, Heinrich Campandonc, Gerhard Marcks, Otto Mueller, E.V. Nay, Emil Nolde, Gaston Louis Roux, K. Schmidt-Rottluff, Renee Sindonis, Alex Jawlensky, Oskar Kokoschka, George Kolbe, Kaethe Kollwitz, Alfred Kubin, Wilhelm Lembruck, Fernand Leger, and August Macke.

If you wish to have a moment of tranquility in New York City, you can to to the MOMA's beautiful garden. You'll find August Rodin's Monument to Balzac (1898). It was presented in memory of Curt Valentin by his friends.

Copyright, Software Programmers and The Implied Unlimited License to Use and Modify

In Asset Marketing Systems, Inc. v. Gagnon, 542 F.3d 748 (9th Cir. Sept. 9, 2008), the Ninth Circuit found that a computer programmer granted AMS an "unlimited, nonexclusive license to retain, use, and modify" custom software that the programmer Gagnon dba "Mister Computer" had designed. AMS is a company located in San Diego engaged in, inter alia, "information technology consulting". When AMS employees booted up, they saw a copyrighted "Mister Computer" notice. During the course of dealing between the parties, the issue of AMS using the software after the ongoing consulting relationship was not expressly addressed. At a late point in the relationship, the parties exchanged proposed contracts and written statements reflecting their respective understandings (which differed). AMS eventually terminated the contract, hired most of Mister Computer's employees, and moved happily ahead. During the course of negotiations, Mister Computer variously made exorbitant demands for the continued use of his copyrighted software programs, asserted that the source code was a trade secret, and belatedly registered his copyrights. The legal action started when AMS sued in state court on employment claims, Gagnon removed and counterclaimed for copyright. I am not sure how, but the state claims to have gotten remanded (leaving only federal counterclaims), and then AMS appears to have dropped the now remanded claims in state court and then asserted its state law claims as "counter-counterclaims" to Mister Computer's federal counterclaims in the federal action. Whew!

The court's decison turns around the mysterious language of 17 U.S.C. Section 204(a). Section 204(a) requires that a transfer of copyright be in writing, signed by the owner. The case law has not required a writing for a transfer of a non-exclusive license. I discuss non-exclusive licenses as a litigation defense at Section 13:12 of Copyright Litigation Handbook (3d Ed. West 2008).

The 9th Circuit had previously considered implied licenses in the context of movie special effects and architectural drawings. To illustrate: someone is paid $56,000 for special effects film footage, delivers it, then claims the film company can't use it. Effects Assocs. Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990) (link courtesy http://www.coolcopyright.com/). This is the "Moviemakers do lunch, not contracts" case.

But in this very hot area of work-for-hire disputes - the implied license doctrine has now been applied to software, substantially reducing the leverage that outside consultants may wield over clients who have not protected themselves in acquiring custom software.

An implied license may be found where (1) licensee requests creation of a work; (2) the creator makes the work and delivers it to the licensee who requested it; (3) the licensor intends that the licensee-requestor copy and distribute his work.

The AMS court found that Mister Computer intended, through "objective manifestations" that AMS "use, retain and modify" the software programs as well. Mister Computer should have put a better warning on his material. Now large and sophisticated software users, too, can do lunch, not contracts.