Can’t Knock the Hustle: Jay-Z’s Fight to Protect His Right of Publicity

Can’t Knock the Hustle: Jay-Z’s Fight to Protect His Right of Publicity

Decades ago in 1996, a young, aspiring rapper from Brooklyn released his debut album to the public. His album would reach No. 23 on the Billboard 200 and sell a modest 43,000 copies in its first week.^[1] By 2006, it reached platinum status with 1.51 million copies sold and would be the first of many in his illustrious career.^[2] That debut album is Reasonable Doubt, and the rapper is none other than Shawn Carter, more famously known as Jay-Z.

Reasonable Doubt proved to be a commercial success, and critics proclaimed it was a landmark album in the rap and hip-hop genres.^[3] While several aspects of the album drove its success, many fans are drawn to its cover.^[4] The black-and-white photo of an elegantly-dressed Jay-Z, his face obscured by his hat and a massive cigar in hand, is considered iconic by many.^[5] Yet this photo, alongside numerous others from the same era, are at the heart of a legal dispute between Jay-Z and acclaimed hip-hop photographer, Jonathan Mannion.^[6]

Jay-Z and Mannion were unknown artists in 1996 when Jay-Z paid Mannion to take photos of him.^[7] Although photographs may be copyrighted works of the photographer, Jay-Z was careful to retain authority over his own persona within the photographs.^[8] Nevertheless, Mannion purportedly sold and licensed Jay-Z’s name and image without his permission and profited millions of dollars.^[9] Jay-Z accordingly sued Mannion and his LLC in California for violating his right of publicity.^[10] The pair are now headed to trial^[11] and the jury must decide which is more important: the right of an author to exploit his copyrighted work, or the right of an individual to preserve his own persona.

What is the Right of Publicity?

The right of publicity is the state law-created protection against the unauthorized commercial exploitation of a person’s identity.^[12] Such exploitations may involve the use of one’s name, likeness, voice, and other recognizable features in advertising and other business settings, and they often result in commercial injury for that individual.^[13] The right of publicity does not merely protect the characteristics by themselves, but also the public’s perception of those characteristics; thus, courts have prevented look-alike and sound-alike actors from visually or verbally impersonating famous individuals.^[14] The right attaches automatically^[15] and is theoretically available to anyone,^[16] although issues related to publicity rarely arise outside of the context of celebrities.^[17] Even so, it has historically extended beyond famous individuals to anyone whose characteristics were misappropriated for commercial advantages.^[18]

Often dubbed the youngest branch of intellectual property,^[19] the right of publicity historically developed as a branch of privacy alongside other privacy rights, such as the right to solitude, protection against defamation, and assurance of confidentiality.^[20] However, two theories have added a separately recognizable property right in the right of publicity, in addition to being a privacy right.^[21] One theory is utilitarian in nature: some individuals expend enormous effort to craft their personas. Allowing others to freely exploit them can disincentivize those individuals from further efforts or oversaturate the marketplace with their identities, resulting in social waste.^[22] The other theory is based on misappropriation and the belief that it is inappropriate to take away what rightfully belongs to another, especially if done so for commercial reasons.^[23]

Since it is a creation of state law, not every state recognizes the right of publicity.^[24] However, the majority of states do – as of 2020, thirty-five states have established the right through common law or statute, and thirteen of those states protect it through a combination of both.^[25] States that recognize the right of publicity are generally consistent in their treatment, but variations nonetheless exist.^[26] For example, twenty-two states treat the right of publicity as having a property right, making it freely transferable and descendible upon death.^[27] On the other hand, a minority of courts do not permit the right to be assignable in these ways.^[28] These jurisdictions adhere to the theory that the right of publicity is only a privacy right and is therefore personal and expires upon death.^[29]

Defenses Against the Right of Publicity

The right of publicity can act with wide latitude, especially in states with industries centered around celebrities’ endorsements.^[30] However, it is not absolute. Since the right is established by state law, conflicting federal law may limit the right via the Supremacy Clause of the Constitution.^[31] As a result, two vital defenses against the right of publicity are found in copyright preemption^[32] and the First Amendment.^[33]

Prior to the Copyright Act of 1976, copyright protection was offered through a dual system where state common law coexisted with federal statutory law.^[34] Congress replaced it with a single system of statutory protection,^[35] and codified federal copyright law’s preemption of other laws in 17 U.S.C. § 301.^[36] Beginning on January 1, 1978, “all legal or equitable rights that are equivalent to any of the exclusive rights as specified by section 106” of the Copyright Act are governed entirely by federal law, regardless of when they were created or published.^[37] A work only needs to be “fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103” to be protected exclusively by federal law.^[38]

Consequently, if a plaintiff exerts a right of publicity claim related to an exclusive right under the Copyright Act over a copyrightable work, then a defendant may argue that the claim is preempted.^[39] Moreover, the defendant does not have to own the copyright in order to exercise the defense; in fact, a plaintiff who owns the copyright may still have her right of publicity claim preempted.^[40] Copyright preemption focuses only on whether the claim exerted is “equivalent to any exclusive rights within the general scope of the copyright.”^[41]

When analyzing a copyright preemption defense, courts will apply a two-prong test that first determines whether a claim comes within the subject matter of sections 102 and 103, then asks if the right asserted is equivalent to an exclusive right of section 106.^[42] If each prong is answered affirmatively, then the claim is preempted.^[43] In order to overcome the first prong, plaintiffs will rightfully argue that a person’s identity is not copyrightable subject matter under sections 102 or 103.^[44] Courts accordingly focus on whether the claim seeks to protect a plaintiff’s persona within a copyrighted work or if it is a thinly disguised attempt to regulate the work itself,^[45] and many courts are sympathetic towards a plaintiff under circumstances that falsely imply her personal endorsement of a defendant’s work.^[46] As for the second prong, section 301 does explicitly limit the Copyright Act from affecting rights “that are not equivalent to any of the exclusive rights” under the Act.^[47] Some courts and scholars have interpreted this to mean that a state-created claim involving those exclusive rights may avoid preemption if other state-required elements are qualitatively present which remove the claim outside of the general scope of copyright.^[48] In addition to the two-prong test, some courts find a right of publicity claim may be barred by the Copyright Act through “implied preemption,” which occurs when a state-law claim hinders the goals of federal law.^[49] When such a conflict arises, these courts hold that the state law should yield to Congressional regulation^[50] unless the claim seeks to vindicate a “substantial state interest” outside of the scope of the federal law.^[51]

Alongside copyright preemption, the First Amendment’s protection of the freedom of speech may also trump the right of publicity. This protection is often justified by the preservation of public debate and an individual’s right to self-expression.^[52] Due to their popularity, famous individuals often take on both public and private meaning, particularly where a celebrity’s persona has transcended into the mainstream.^[53] Such individuals may obtain prominence to the point that the public debates their works and influence on culture while simultaneously creating works inspired by their personas.^[54] Many right of publicity issues arise where a member of the public utilizes a celebrity’s persona in creating a new or derived work, such as creating or modifying an image highly associated with a celebrity.^[55] In response to enforcement efforts by the celebrity, the creator of the offending work will often claim protected expression of speech under the First Amendment in defense.^[56] Therefore, in these cases, the right of publicity’s power to censor the public is in conflict with a defendant’s right to free speech.^[57]

The U.S. Supreme Court’s ruling in Zacchini v. Scripps-Howard Broadcasting Co.^[58] – the only right of publicity case decided by the Supreme Court ^[59] – made clear that the First Amendment does not permit unlimited appropriation of an individual’s persona. In Zacchini, a performer who acted as a human cannonball had his entire performance broadcasted without his permission. ^[60] The broadcasting company argued it was protected under the First Amendment,^[61] which the Ohio Supreme Court supported as the privilege to report on matters of public interest.^[62] The U.S. Supreme Court, however, found the broadcast was commercially exploitative and overruled the Ohio Supreme Court.^[63] It weighed the broadcast’s exploitation of Zacchini’s sole livelihood against its public value and sided with Zacchini.^[64] In the years following, various courts have devised different methods to determine when the right of publicity should overcome a First Amendment defense. ^[65] For example, the Tenth Circuit Court adopted a balancing test “weighing the magnitude of speech restriction against the state governmental interest in protecting the right of publicity,”^[66] while the Missouri Supreme Court refuses protection “if the predominant use of a persona is commercial.”^[67]

California’s Right of Publicity and the “Transformative Use” Test

It is obvious that a significant portion of California’s economy is generated by its renowned entertainment and tech industries.^[68] From Hollywood to Silicon Valley, California is bursting with celebrities, products, and advertising opportunities,^[69] and the importance of the right of publicity is such that it is embedded in both common law and statute.^[70] As a result, insight into California’s right of publicity and its defenses are central to understanding the conflict between Jay-Z and Mannion.

To establish a common law right-of-publicity claim in California, a plaintiff must prove: (1) the defendant used the plaintiff’s identity; (2) the appropriation was for the defendant’s advantage, commercially or otherwise; (3) the presence of lack of consent; and (4) an injury resulted from this appropriation.^[71] Section 3344 of the California Civil Code embodies these components while adding a fifth knowledge-based factor, stating that the defendant must “knowingly” use the plaintiff’s identity “for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services.”^[72] Like copyright law, this statute does provide its own exemptions. Section 3344(d) allows use of one’s identity without consent in connection with “any news, public affairs, or sports broadcast or account, or any political campaign.”^[73]

As mentioned earlier, a defendant may raise the copyright preemption and First Amendment defenses in California. While copyright preemption is dictated by federal law, the California Supreme Court conceived its own balancing test for the First Amendment defense.^[74] Inspired by copyright law, the California Supreme Court’s “transformative use” test applies the principles of fair use and asks whether a defendant’s work based on a celebrity adds “significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation.”^[75] Additionally, if an individual’s fame is the driving force behind a work’s value instead of simply acting as one of the “raw materials” in the work, then a fact finder may decide it is not transformative enough to warrant protection.^[76] In other words, the work must contain enough of the defendant’s own creative expressions so as to stand apart from the celebrity’s presence.

How the Right of Publicity and its Defenses Interact in Carter v. Mannion

On June 15, 2021, Jay-Z filed his initial complaint in the United States District Court of the Central District of California, followed shortly by an amended complaint.^[77] Jay-Z noted how he cultivated his popularity and fame through years of hard work, perseverance, money, and entrepreneurial effort, leading to many considerable offers to use his persona for a variety of business purposes.^[78] He asserted that he hired Mannion in 1996 to help realize his “vision of himself as a rap artist,” and he paid Mannion thousands of dollars to use the photographs but never authorized him to resell those images or use his characteristics.^[79] Despite this, Jay-Z argued that Mannion has since commercially exploited Jay-Z’s fame to resell those photographs and license them to be printed on slipmats.^[80] Furthermore, he claimed his name was placed on t-shirts without his permission.^[81] When Jay-Z called for Mannion to stop using his name and image, Mannion allegedly demanded millions more to do so.^[82]

Jay-Z responded by filing suit, alleging Mannion violated section 3344 of the California Civil Code by misappropriating his name, likeness, identity, and persona without his permission.^[83] He asserted Mannion did this “willfully, maliciously, and oppressively” with full knowledge and disregard of the adverse effects of his actions.^[84] He similarly alleged Mannion violated his common law right of publicity in a parallel manner.^[85] Jay-Z sought to recover: compensatory, consequential, punitive, and enhanced damages; lost profits and/or disgorgement of Mannion’s profits; and a preliminary and permanent injunction against Mannion to refrain him from using Jay-Z’s name, likeness, identity, or persona.^[86]

Instead of answering Jay-Z’s complaint, Mannion filed instead a motion to strike pursuant to California’s anti-SLAPP statute.^[87] This statute strikes a plaintiff’s cause of action that targets a defendant’s constitutional exercise of free speech concerning a public issue, unless the plaintiff can show she can prevail on the merits of her claims.^[88] Mannion simultaneously filed a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim to grant relief.^[89] He argued that Jay-Z’s right of publicity claims were preempted by both copyright law and the First Amendment,^[90] and it is therefore impossible for Jay-Z to prevail in trial under either statute as a matter of law.^[91] Thus, he contended that the pleadings should be dismissed with prejudice under the anti-SLAPP statute or Rule 12(b)(6) in the alternative.^[92]

After explaining that Jay-Z’s cause of action was subject to the anti-SLAPP statute, Mannion began his arguments by showcasing how the Copyright Act preempted Jay-Z’s claims under the two-prong test. With respect to the first prong – the “subject matter” prong – Mannion must show that his work was “worthy of copyright protection” and that Jay-Z’s claim was “directed at controlling the copyrighted work.”^[93] He described that each of his works qualified for copyright protection since photographs are works fixed in a tangible medium of expression within the subject matter of section 102, and the slipmats and t-shirts were valid copies of those photographs.^[94] He next argued that the focus of Jay-Z’s claims was on the reproduction, derivatization, and distribution of his copyrighted works – all exclusive rights of section 106^[95] – rather than his own persona contained within, because the pleadings sought to control solely items that both featured copyrightable photographs and did not suggest a personal endorsement of separate, collateral products.^[96] Mannion followed with a quick analysis of the second prong, stating that Jay-Z’s right of publicity claims as described in his pleadings directly corresponded to the exclusive rights under the Copyright Act.^[97] Thus, Mannion asserted Jay-Z’s right of publicity claims were preempted by attempting to control his exclusive rights over his copyrighted work.^[98]

Mannion similarly analyzed his works through the lens of California’s “transformative use” test.^[99] He asserted that none of his photographs centered around Jay-Z’s presence; rather, Jay-Z was only one of the “raw materials” featured within.^[100] Mannion argued that his skill and artistic vision altered the photos from mere imitation through the use of factors such as subject placement, composition, lighting, angles, editing, camera settings, and more.^[101] According to Mannion, these creative decisions produced “a translation of message, purpose, and meaning through the power of his personal expression” that was “sufficiently transformative to bring the resulting image[s] within the protection of the First Amendment.”^[102]

Furthermore, Mannion argued that Jay-Z himself confirmed the economic value of the photographs were drawn from Mannion, as his pleadings alleged Mannion was able to sell each copy for thousands of dollars when compared to hundreds of images available on Google.^[103] Mannion also alleged that he regularly sells other photographs that do not feature Jay-Z whatsoever for similar prices.^[104] These marketability points, Mannion claimed, indicated that viewers were drawn by the artistry in the photographs and not by any one celebrity depicted within.^[105] Mannion closed his First Amendment argument by similarly supporting the value and creative expression behind printing his photographs onto the slipmats and t-shirts.^[106]

Despite raising these arguments, the district court denied Mannion’s motions in showing reluctant to grant the requested defenses. In a response deemed appropriate for decision without oral argument,^[107] the court decided that it did not need to determine the source of the photographs’ value to conclude Jay-Z alleged sufficient facts in his pleadings to prevent the automatic entitlement of the transformative use defense as a matter of law.^[108] It further noted that, separate from the photographs, the allegations concerning Mannion’s sale of slipmats and t-shirts as merchandise was enough to undermine his claim that he is entitled to the defense at the time.^[109] With respect to copyright preemption, the court followed the Ninth Circuit’s holding in Maloney, which differentiated between copyrighted works distributed for personal use and instances where likeness is used non-consensually on merchandise or in advertising – claims involving the former are preempted, but claims involving the latter may proceed.^[110]. The judge did not determine whether the claims surrounding the photographs were preempted at this stage, but he noted that in any event, the claims involving the t-shirts and slipmats as merchandise were not preempted by the Copyright Act.^[111]

Overall, the court concluded that Carter v. Mannion presented unanswered questions of fact requiring decisions by the jury.^[112] Since the jury could decide that Jay-Z prevails over both defenses and he stated plausible claims for violations that were not preempted, the judge appropriately denied both motions^[113] and Mannion subsequently answered the amended complaint.^[114] The parties attempted to mediate their differences but unfortunately failed to settle, and their trial date is set for July 22, 2022.^[115]

Carter v. Mannion perfectly displays the importance of the right of publicity and how challenging it may be to find its boundaries. On the one hand, if Jay-Z’s allegations are found to be true, then it exemplifies how one entity may profit millions of dollars off of another’s efforts. On the other hand, art requires its own endeavors, and prominent individuals should not be able to easily prevent authors from exploiting their own works simply because they disagree with the author or the work. Where courts draw the line and determine who is in the right will inevitably vary on the circumstances. But in any case, like Carter v. Mannion, both parties must hustle if they want to win.