Now that the technology is available and unveiled, this performance will likely not be the only one of its kind.  Dr. Dre and Snoop are reportedly considering taking the Tupac hologram out on tour.  There is also speculation about what other stars we will see in posthumous holographic performances.  According to AV Concepts President Nick Smith “You can take [celebrities’] likenesses and voice and . . . take people that haven’t done concerts before or perform music they haven’t sung and digitally recreate it.”  Raju Mudhar of The Toronto Star speculates that reanimating dead celebrities could be a real trend as it would likely result in a real “windfall for the estates of the deceased performers.”  Such possibilities raises questions about the protections against misuse of performers’ images for holographic performances.

Of course, any public performance of music, by living musicians or by holograms, requires permission of the copyright owner for the composition.  Typically, the American Society of Composers, Authors, and Publishers license out songs performed in concert.  For the Tupac performance, it is likely that the performance of “Hail Mary” and “2 of Amerikaz Most Wanted” was permitted by the copyright owner.

The holographic performance also implicates the Right of Publicity.  The Right of Publicity is the “inherent right of every human being to control the commercial use of his or her identity.” (McCarthy, The Rights of Publicity and Privacy 2d § 1:3.)  A state common law right, the Right of Publicity provides people with the right to control the commercial use of her name, image, likeness, or any other unquestionable aspects of her identity.  The right protects against the loss of the ability to control one’s persona, even if there is not necessarily any commercial harm.  (31 COA2d 121.) Most states recognize that the right is descendible though it varies as to the length of time one’s estate maintains the Right to Publicity, ranging from 20 to 100 years. (31 COA2d 121.)   In order to use the image of Tupac, Dr. Dre had to get consent from the executors of Tupac’s estate which is controlled by Afeni Shakur, who gave permission for the performance.

With the potential rise of holographic performances, stars should take care to protect themselves from appearing as holograms in ways not in their own interest.  The Right to Publicity, like many rights, is one which can be transferred.  (Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866, 868 (2d Cir. 1953); McCarthy, The Rights of Publicity and Privacy 2d § 10:8). The Miami Entertainment Law Group warns that signing away this right “could potentially cut off your right to share in a very lucrative stream of income AND your ability to determine how you will be remembered.”

It is unclear whether Tupac would have wanted to be remembered for this holographic performance.  However, at least his mother, who carefully controls the use of Tupac’s image, was pleased with the performance.

Background

As we wrote previously, Viacom, a major content provider, sued YouTube in 2007, alleging that clips hosted on the site violated its copyrights. YouTube argued that the site was protected by the safe harbor provisions of the DMCA (§512(c)), and Judge Louis Stanton in the Southern District of New York agreed, granting summary judgment. Of course, with over a billion dollars on the table and important precedent on the line, the story was not going to end there.

Knowledge of Infringing Material

The main question on appeal was how much could YouTube know about the existence of infringing content and still be protected by the safe harbor provision? Clearly, having actual knowledge of specific infringing material would disqualify the site. The statute is clear on this point: “does not have actual knowledge that the material . . . is infringing,” §512(c)(1)(A)(i). However, the statute contains a second, related provision: “in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent,” §512(c)(1)(A)(ii). The controversy revolved around this second, “red flag” test. A couple of surveys suggested to the court that YouTube was generally aware that there were a significant number of infringing videos. However, because the statute requires removing the infringing material, the court, affirming the district court on this point, held that only knowledge indicating specific instances of infringement will disqualify a service provider. Otherwise, it would be impossible for a service provider to comply (i.e., to take down the content).

Viacom argued that if the “red flag” test requires knowledge of specific infringing activity, it is superfluous, since the actual knowledge test requires the same. However, the Second Circuit distinguished the two based not on specific versus general knowledge but rather on subjective versus objective standards. That is, the “red flag” test is really asking whether a service provider was aware of facts that would lead a reasonable person to find specific infringement (i.e., an objective standard).

Without an obligation to followup on a general awareness of infringement, sites effectively put the burden of policing content on copyright holders. With courts being consistently unwilling to shift some of this burden to the sites, it seems likely that content providers will continue to lobby Congress for SOPA-like legislation. 

Plaintiffs KOTP I/II claim that since July 2009, they have delivered amounts ranging from $65,000 to $125,000 to the filmmakers. According to the complaint, in August 2009 two of the defendants Joshua Newman and Alfred Zaccagnino formed the entity Keeper NY to divert funds from the enterprise supposedly making the film, undermining any and all legitimate business efforts on the plaintiff’s behalf. Plaintiffs assert that at no time did they authorize the transfer of their investment monies to Keeper NY.

Plaintiffs also allege a number of misrepresentations by the defendants.  In August 2009 plaintiffs received a letter in which the defendants claimed the investment threshold of $1.5 million had been met, contractually requiring additional payments from the plaintiffs. According to the plaintiffs, investment monies were deposited into various bank accounts controlled and misused by the defendants for purposes unrelated to Keeper of the Pinstripes. The complaint additionally claims defendants “made extensive undocumented debits and withdrawals from the corporate accounts for personal gain and have engaged in a pattern of self-dealing to the detriment of the plaintiffs.” Claiming breach of contract, fraud, conversion, and breach of fiduciary duty, KOTP seek an accounting, compensatory damages and special damages.

Notably, as reported by The Hollywood Reporter, defendant Joshua Newman has added fuel to the fire by suggesting that the lawsuit was brought as a result of KOTP’s financial troubles. Specifically, Newman highlighted an article from May 2011 in which James Pappas, president of the KOTP investment group, was indicted for fraud. According to Manhattan District Attorney Cyrus R. Vance, Jr., James Pappas’ construction company colluded with Lehr Construction Corporation, “cheat[ing] clients out of millions of dollars, and their honest competitors out of valuable construction jobs.” Newman stated that he lost a great deal of money after production for Keeper of the Pinstripes fell apart due to MLB licensing issues and that he can “feel his pain.” 

Paramount bought the copyright to Puzo’s novel in 1969 and their agreement granted the studio the “sole and exclusive right: to make and cause to be made literary and dramatic and other versions and adaptations of every kind and character.”  According to the complaint, the Puzo estate has infringed Paramount’s copyright and trademarks in “The Godfather” by allowing publication of a third sequel to the novel without Paramount’s authorization or knowledge.

After Puzo’s death in 1999, the Puzo estate wanted to publish sequels and in 2002, Paramount and the estate entered an agreement.  The parties acknowledged that Paramount did not object to Puzo granting Random House the right to publish one, and only one, sequel to “The Godfather.”  The agreement also maintained that “[Paramount] is the sole and exclusive owner of all motion picture, television and allied rights in and to the novel [i.e., “The Godfather”] and the sequel novel.”  Pursuant to this agreement, Random House published “The Godfather Returns” in 2004.

All was well between the parties until 2006 when the Puzo estate allowed the publication of a second sequel novel, “The Godfather’s Revenge,” allegedly without Paramount’s knowledge or permission.  An outraged Paramount claimed this unauthorized novel “tarnished” the legacy of “The Godfather” and “misled consumers” into believing that the studio had authorized “The Godfather’s Revenge.”  Paramount appears to be concerned that the third novel sequel, “The Family Corleone,” will further tarnish the Godfather mark or at least will continue to confuse consumers as to its source.  So Paramount is bringing their concerns to court.

Paramount arguably has reason to be upset. Apparently, the estate has used the “Godfather” marks owned by Paramount, including the name “The Godfather” and the image of a hand controlling the puppet strings, in connection with the marketing and promotion of the new novel.  Paramount claims this not only infringes upon their trademarks because the marks are being used without consent, but also that the use constitutes a false designation of origin under § 1125(a) of the Lanham Act.  Considering that a simple Google image search of “the Godfather” returns over 74 million results almost entirely consisting of the Godfather logo, Paramount seems to have a strong case for likelihood of confusion.  The well known mark appearing in connection with a literary sequel entitled “The Family Corleone” seems extremely likely to indicate to the average consumer that the novel is an authorized addition to the Godfather empire.

Paramount’s cause of action for copyright infringement claims the estate has violated its exclusive right to create derivative works under § 106 of the 1976 Copyright Act.   Paramount claims that in purchasing the copyright from Mario Puzo in 1969, it reserved all rights in “The Godfather” except the publication rights in the original novel, and that the 2002 agreement did not grant the estate any right to publish additional sequels or other derivative works based on “The Godfather.” 

Thank you to staffer Kimberly Lehmann for the link!

Special Thanks to David Quiles, Fordham Law’s Journal Coordinator, for the links!