California Court Says “Ooh La La” to Transformative Use
January 2, 2007
Thomas W. Brooke- Washington
A decision in a recent legal clash between the former lead singer of the 90’s
funk band Deee-Lite, Kierin Kirby – known professionally as “Lady Miss Kier” –
and video game maker Sega of America, has preserved the rights of those
Californians wishing to use the images of celebrities in graphic
representations.
In the litigation, Kirby v. Sega of America, a California Court of
Appeal has permitted Sega to continue to use a character in one of its games
that shares certain traits with Lady Miss Kier. The court reaffirmed earlier
decisions holding that video games are creative works subject to First Amendment
protection.
Sega created the video game at issue, “Space Channel 5” or “SC5,” in 1999.
The main character is a female reporter called “Ulala,” who, like Lady Miss
Kier, had pink hair, wore tight fitting clothing and often said “Ooh la la.”
Sega even went so far as to approach Kierin Kirby – unsuccessfully – about using
her Lady Miss Kier persona to promote the game. After the SC5 game had been
distributed in Japan and later the U.S. and Europe, Kirby brought an action in
California for infringement of her right of publicity, misappropriation of her
likeness, violation of the federal Lanham Act, unfair competition, interference
with prospective business advantage and unjust enrichment.
The California Court of Appeal, in reviewing the case, relied on the
standards set in two of earlier decisions of the state supreme court. In one,
the guitarists Johnny and Edgar Winter had brought a similar action to stop a
comic book maker from using their images. The comic book publisher in the
Winter case was found to have added “sluglike characteristics” when it created
slugs with facial features based upon the Winter brothers. By contrast, in the
second California precedent, an artist who created t-shirts bearing the
likenesses of the Three Stooges was found to be an infringer when, the court
found, he added nothing by simply rendering images of the Stooges on t-shirts.
Applying these decisions to the dispute between Sega and Kirby, the
California Court of Appeal declined to adopt a “predominant use” test and
focused on the “transformative” nature of the artist’s use of the celebrity’s
image. Sega was found to have done more than simply use the Lady Miss Kier
image because it added its own creative characteristics. Thus, the court found,
the Ulala character in the Sega game was a transformation and therefore
protected under the First Amendment. Based upon the court’s decision, future
inquiries into disputes involving the use of a celebrity’s image in California
will center on whether or not a public figure’s image was transformed through
new expression.
This approach contrasts with the Missouri state courts when recently faced
with a dispute between a retired hockey player and a comic book artist.
Missouri looked at the “predominant purpose” of an artist’s use of the image or
name of a public figure, and the courts there found that the predominant purpose
of using the hockey player’s name was to sell comic books. The expressive or
artistic nature of the comic book art was not considered as important to the
artist.
According to press reports in the California case, counsel for Kirby has
pushed to have this decision, originally issued in September 2006, published for
precedential effect. Counsel hopes to highlight the split in law between the
Missouri case using a “predominant purpose” test and the California cases that
use a “transformational” test. Whether this difference will catch the attention
of the U.S. Supreme Court remains to be seen.
For more information, e-mail Thomas Willcox Brooke at
thomas.brooke@hklaw.com or call
toll free, 1-888-688-8500.
Related Practices