January 2, 2007

California Court Says “Ooh La La” to Transformative Use

Holland & Knight Newsletter
Thomas W. Brooke

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.

Latest Insights