“Transformative” or Not?

Recent news reports tell of an impending legal battle between the artist of the painting at left and the Associated Press who owns the photograph upon which the painting was based. The legal battle will determine whether the ubiquitous painting of the 44th President is an original piece of artwork, or one that improperly misappropriated a photograph protected by copyright laws.

But what of President Obama’s rights in his own likeness? Can any artist commandeer the President’s likeness for his/her own commercial purposes without fear of legal repercussions? Could President Obama stop such commercial use of his likeness if he was so inclined? The answer depends on how “transformative” of President Obama’s likeness the work of art is.

The California Supreme Court case Comedy III Productions, Inc. v. Gary Saderup, Inc. (2001) 25 Cal.4th 387 speaks directly to this issue. In Comedy III Productions, the registered owner of all publicity rights in The Three Stooges filed a lawsuit for damages and injunctive relief against an artist who sold lithographs and t-shirts that reproduced a charcoal drawing by the same artist that depicted the deceased members of The Three Stooges. The depiction in question appeared as follows:

Without securing the owner’s consent, the artist sold lithographs and t-shirts bearing the above likeness of the Three Stooges. The lithographs and t-shirts did not constitute an advertisement, endorsement, or sponsorship of any other product. The image of the Three Stooges merely appeared on the lithographs and t-shirts being sold.

The Comedy III Productions Court resolved an inherent conflict between the right of publicity under California Civil Code Section 3344.1 and free speech rights under the First Amendment of the United States Constitution. To do so, the Court formulated “what is essentially a balancing test between the First Amendment and the right of publicity based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation.” Id. at 391.

According to the Comedy III Productions Court, “(1) state law may validly safeguard forms of intellectual property not covered under federal copyright and patent law as a means of protecting the fruits of a performing artist’s labor; and (2) the state’s interest in preventing the outright misappropriation of such intellectual property by others is not automatically trumped by the interest in free expression or dissemination of information; rather, as in the case of defamation, the state law interest and the interest in free expression must be balanced, according to the interests at stake.” Id. at 401.

The balancing test adopted by the Comedy III Productions Court hinged on “whether a work is ‘transformative.’” Id. at 404. “When a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interest protected by the right of publicity.” Id. at 405. To determine whether the work is “transformative” the Court stated: “We ask, in other words, whether a product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness. And when we use the word ‘expression,’ we mean expression of something other than the likeness of the celebrity.” Id. at 406. “Furthermore, in determining whether a work is sufficiently transformative, courts may find useful a subsidiary inquiry, particularly in close cases: does the marketability and economic value of the challenged work derive primarily from the fame of the celebrity depicted? If this question is answered in the negative, then there would generally be no actionable right of publicity. When the value of the work comes principally from some source other than the fame of the celebrity – from the creativity, skill, and reputation of the artist – it may be presumed that sufficient transformative elements are present to warrant First Amendment protection.” Id. at 407.

Cases subsequent to Comedy III Productions have reiterated this “transformative” test. In Winter v. DC Comics (2003) 30 Cal.4th 881, the California Supreme Court stated that “an artist depicting a celebrity must contribute something more than a merely trivial variation [but must create] something recognizably his own in order to qualify for legal protection.” Id. at 889 (in the context of comic book depictions of half-worm, half-human characters based on musicians Edgar and Johnny Winter). The comic book characters were “fanciful, creative characters, not pictures of the Winter brothers” and therefore, sufficiently transformative to qualify for First Amendment protection. Id. at 892. Likewise, in Kirby v. Sega of America, Inc. (2006) 144 Cal.App.4th 47 the Second District Court of Appeal recited the “transformative” standards set forth in Comedy III Productions and Winter, and found that a video game character based upon a celebrity was more than a mere likeness or literal depiction of the celebrity, and therefore, sufficiently transformative to qualify for First Amendment protection.

Under the facts of the Comedy III Productions case, the Court found that the artistic work in question was not sufficiently “transformative” to be protected under the First Amendment. In sum, the Court felt the artist’s drawing of The Three Stooges, although skillful, contributed nothing other than a trivial variation of the likenesses of The Three Stooges. As such, the artist was not permitted to continue selling the lithographs and t-shirts with his depiction of The Three Stooges, absent a license from the right of publicity holder.

The question remains whether the President Obama painting is sufficiently “transformative” so as to protect the artist from any potential liability. Does the painting primarily represent the President’s likeness, or the unique transformative expression of the President’s likeness by the artist? This question is difficult to answer, with strong arguments to be made on both sides. However, the marketability and economic value of the painting appear to derive primarily, if not solely, from the fame of the individual depicted. According to the Comedy III Productions Court, this tends to indicate that an actionable right of publicity exists in favor of President Obama. Thankfully for the artist, this legal theory was never tested, and instead the painting was readily embraced throughout the Obama campaign.