What Hologram Authors Should Know
About Intellectual Property Law
By Jana M. Moser,
Esq.
jmoser@gpfoxlaw.com
April 12, 2013
I. INTRODUCTION
The
growing popularity of holographic performances in the entertainment industry
promises to trigger a slew of legal disputes. This new frontier of
entertainment will generate often-conflicting legal positions from celebrities
and intellectual property rights holders, on the one hand, and the public, on
the other. The purpose of this article is to explore the various legal
implications that holographic performances have for the entertainment industry,
and to assist those interested in creating holographic performances (“hologram
authors”) to avoid legal disputes as holographic performances become a part of
mainstream culture.
II. THE ENTERTAINMENT INDUSTRY’S HOLOGRAPH: AN
ILLUSION
The
recent proliferation of current and planned holographic performances has been
the result of the phenomenal popularity of Tupac Shakur’s post-mortem
appearance at the Coachella Valley Music and Arts Annual Festival in 2012. Tupac’s
performance, though lauded as a hologram, was achieved not by bona fide
holographic technology, but rather by an illusion developed in the 1860s known
as Pepper’s Ghost.[1] The illusion is created by the reflection of
light off a reflective screen set at a 45-degree angle to the audience. The so-called “hologram” actually is an
object or image hidden from the audience and reflected off of the screen.
A
hologram, by contrast, is a photographic image that is three-dimensional and
appears to have depth. Holograms work by creating an image composed of two
superimposed, two-dimensional pictures of the same object seen by different
reference points. The use of slightly offset reference points is designed to
mimic the image interpreted by the human brain, which likewise receives a
distinct, slightly offset image from each eye that the brain combines into a
three-dimensional image.
Tupac’s
hologram was designed by a creative team at Digital Domain Media Group, James
Cameron’s visual effects company, which also was responsible for the
computer-generated representation of an aged Brad Pitt in The Curious Case of Benjamin Button. The Digital Domain Media Group
team carefully reviewed old footage of Tupac to recreate his characteristic
movements and likeness into a video that then was projected onto a screen on
stage. Thus, what appeared to be a three-dimensional hologram was, in fact, a
two-dimensional projection. The projection—or rather, multiple high-definition
projection streams—was delivered by AV Concepts, which utilized a Musion
Eyeliner screen[2]
and a 30 x 13 projection system, customized by the company to descend onto the
stage in mere seconds under the cover of darkness to assist in the audience’s
perception of Tupac as a hologram.[3]
III. INTELLECTUAL PROPERTY RIGHTS
A.
Celebrities’
Rights
Before
discussing the legal implications of holographic performances, it is important
to first understand celebrities’ various rights. First, notwithstanding the
various exceptions found in federal copyright law (most notably, the work for
hire doctrine), celebrities and other artists own the copyright to their work.[4] Copyright
protects original works of authorship, including literary, dramatic, musical,
and artistic works. From the moment an artist “fixes” a work (whether it be a
novel, movie, or song) in a “tangible medium of expression,” that work is
protected under federal copyright law. The artist then enjoys a number of
exclusive rights, including the right to reproduce the work, prepare derivative
works, distribute copies of the work to the public, perform the work publicly,
and display the work publicly. Notably, copyright protection lasts well beyond
the author’s death; for works published after 1978, the copyright term is
generally 70 years after the death of the author, while works published before
1978 enjoy a comparable term, albeit with a more complex calculation.[5]
Celebrities
also can own a trademark to their name. A trademark is a word, phrase, symbol
or design (or a combination of them) that identifies and distinguishes the
source of goods or services.[6] A
celebrity’s right to the trademark in his or her name may arise at common law
from actual use of the mark or through an application filed with the U.S.
Patent and Trademark Office (“PTO”).[7] Generally,
the Trademark Act prohibits registration of a mark that is “primarily merely a
surname” because personal names typically are descriptive and do not function
as a trademark.[8]
A surname may be registered as a trademark, however, if through extensive and
exclusive use, the public comes to recognize the surname as a source of
particular goods or services; in trademark law, this is known as acquiring
“secondary meaning.”[9] Many
well-known individuals and celebrities (or their estates) have registered their
names as trademarks with the PTO, including Britney Spears, Paris Hilton, Elvis
Presley, Muhammad Ali, Donald Trump, and Celine Dion, to name a few. Others
have gone further and established secondary meaning between their name and a product
or industry beyond their status as a celebrity. By way of example, Paul Newman established
a valid trademark in both his name as a celebrity, providing “entertainment
services comprising dramatic performances by an actor in movies and on
television,”[10]
and in the food industry through his store brand, Newman’s Own.[11] Through
trademark law, celebrities protect themselves and their name from “dilution,”
which occurs when a mark is used in a manner that will tarnish or cheapen the “brand”
associated with the celebrity’s name or likeness. The trademark can last
indefinitely, so long as the mark continues to be in use.
Most
states protect celebrities during their lifetime against the unauthorized
commercial use of the celebrity’s name, image, likeness, voice, and signature.[12] These
“rights of publicity” or “personality rights” allow celebrities to stop
unauthorized uses of the celebrity’s name, likeness, etc. and to seize
infringing goods. In recent years, the protection afforded to personality
rights has extended even after the celebrity’s death, though the states vary in
the degree of protection afforded, with some states providing only limited
protection and others continuing the protection for up to 100 years after
death.
It
is critical that hologram authors consider these rights and acquire appropriate
licenses because of the vast legal and financial ramifications likely to follow
if holographic performances are not licensed appropriately. For instance,
copyright law allows plaintiffs to obtain injunctions to prohibit future
copying and monetary damages to compensate for the infringing use and, in some
cases, punish the defendant for copyright infringement. Similarly, trademark
law provides that successful plaintiffs may be awarded injunctions against
further infringing or diluting use of the trademark, while monetary relief may
be available to recover the defendant’s profits, damages sustained by the
plaintiff, and the costs of the action.[13] Right
of publicity lawsuits engender similar risks; for example, Woody Allen was
reported to have settled a right of publicity lawsuit against American Apparel,
Inc. for $5 million (half of what the actor was seeking in damages) based
solely on the company’s use of two unlicensed, unauthorized billboards featuring
his image in New York and Los Angeles.[14]
B.
Copyright
Law
Holograms
present a unique conglomeration of copyrighted or copyrightable material, and
thus present several areas of note for the entertainment industry’s use of
holographic performances.
First,
in the case of holograms featuring deceased celebrities, it is likely that the majority
of celebrities relevant to today’s culture—and by extension, today’s target
audience—will date only as far back as the advent of “talkies” in cinema and,
therefore, will have passed away within the last 80 to 90 years (though
holograms featuring historic public figures including, for example, deceased
presidents or famous writers and musicians also are likely to appear). With
respect to licensing material or the right to create derivative works, hologram
authors must consider whether the material from which they draw remains under
the protection of copyright law or whether the material has become a part of
the public domain. Though the statutory provisions governing copyright duration
use different standards depending on whether federal statutory copyright
protection was secured after January 1, 1978, the date the current law took
effect, any published work created in the last 90 years almost certainly will remain
protected by federal copyright and therefore require a license for its use. If
the hologram author wishes to draw from works created in 1978 or after, the
copyright duration for published works is 70 years after the death of the
author.[15] If
the hologram author draws from works created before 1978—a time period that
would include performances by Marilyn Monroe, Elvis Presley, and the Beatles,
just to name a few—then the work generally will be protected by copyright for
95 years after the date of first publication.
On
the other hand, the United States is entering the final years of protection for
several famous characters; should hologram authors wish to create holographic
performances based on those characters, the question of licensing will become
one of trademark (which can last forever), not copyright. Perhaps the most
famous character scheduled to enter the public domain is Mickey Mouse, who
first made an appearance in a 1928 animated short film called Steamboat Willie. Scheduled to enter the
public domain four times since its creation, the Mickey Mouse character will
enter the public domain in 2023 absent another amendment and extension to the
U.S. copyright term.[16] Once
characters like Mickey Mouse enter the public domain, hologram authors freely
may view, edit, or transform the characters with no regard for the copyright
owner’s (for example, The Walt Disney Company) creative or monetary interests. Thus,
for example, rival companies may create a holographic Mickey Mouse production
freely; indeed, after 2023, even a virtually identical holographic reproduction
of Steamboat Willie would not be an
infringing work under the law. As discussed below, however, trademark rights
would remain a potential obstacle for this use.
The
second feature that hologram authors must consider is the layers of a hologram that
may be copyrighted as a new work or derivative work: the holographic image
itself, and the recording used in conjunction with the holographic image. Thus,
if a hologram author is considering creating a hologram based on a deceased
celebrity, the author will need to acquire rights from the owner of the
reproduced image as well as the owner of the reproduced voice. Such licensing
attempts may be complicated by the fact that both rights will not necessarily
be held by the same entity. Additionally, the holographic image may be an
entirely new work (that is, an original image or character created entirely
from new content), or it may be a derivative work (that is, based on, or derived
from, another copyrighted work). Similarly, the voice recording may be an
entirely new work (as will be the case if the hologram is not based on any
former copyrighted work), an exact reproduction of an old recording, or a
combination of the two. Thus, in the case of holographic performances by dead
celebrities, the simplest scenario (that is, a hologram drawing from a recorded
image owned by a single copyright owner and a recorded voice owned by a single
copyright owner) presents at least two sources of content that must be
considered for the purpose of licensing the artist: the image and the
recording.
Nevertheless,
unless the hologram is an exact
reproduction of an existing recorded performance, it is more likely that the
hologram will draw from multiple images and voice recordings. This might be the
case if an original holographic concert is created that draws from multiple recorded
concerts that took place throughout the deceased artist’s life. In this case, unless
each recorded performance is owned by a single copyright holder, the hologram
author will need to procure licenses to use the copyrighted material from each
separate rights holder. Additionally, the hologram author will need to acquire
the right to create a derivative work—that is, an expressive creation that
includes major copyright-protected elements of an original, previously created
first work—from each separate rights holder.[17] The
equation becomes increasingly complex if different
owners own the copyright to each performance and recorded song. Again, the
hologram creator will need to acquire the right to create the derivative work
from each copyright holder.
The
Tupac holographic concert illustrates this concept. The Tupac image was created
through computer graphics based both on physical characteristics and movements from
the performances recorded before the rapper’s death as well as fresh movements
and new dialogue.[18] The
rights to create Tupac’s hologram reportedly were fairly easy to acquire, as
the controller of Tupac’s estate—his mother, Afeni Shakur—authorized the
hologram in exchange for Dr. Dre’s contribution to the Tupac Amaru Shakur
Foundation.[19]
Other deceased celebrities promise to be
a greater challenge, however. For example, the Michael Jackson and Ray Charles
estates are controlled not by the musicians’ families, but rather by
professionals; for these estates, hologram authors will need to acquire rights
from the professional executors. Given the litigious relationship between the
executors and family members of various deceased celebrities, hologram authors also
will need to be wary of the potential for conflict and/or litigation even if
rights are acquired successfully from the executors of the estate.
Finally,
a hologram may be an entirely original work, created with entirely new content,
but nevertheless feature a deceased celebrity or public figure. In this case,
the restraints presented by copyright law are less clear. If the hologram truly
does not draw on past performances by the celebrity or public figure, then
copyright holders (including the estates of deceased celebrities) will have
little on which to base a claim for infringement or demand that the image be
licensed. On the other hand, states recognizing the right of publicity for
deceased celebrities and public figures potentially will provide the estate
with a viable claim for infringement. Likewise, to the extent that a celebrity
or public figure has become a trademark, the owners of the marks may have a
viable claim to the improper use of the name or brand if the name or brand is
used to market the hologram.
C.
Trademark
Law
While
copyright covers works of authorship, trademark, by contrast, covers the
distinctive nature of a celebrity’s name and talent. Thus, while a celebrity also
may control the creative content of a hologram based on his or her likeness
through copyright, a celebrity may also control the commercial nature of the
hologram through trademark.
The
first issue a hologram author must consider is whether the hologram will
infringe upon the celebrity’s trademark in his or her name as a celebrity and,
if applicable, whether the hologram will infringe upon additional uses or
markets to which the celebrity has attached his or her name. The use of a
trademark in connection with the sale of a good constitutes infringement if it
is likely to cause consumer confusion as to the source of those goods or as to
the sponsorship or approval of the goods.[20]
Whether
a hologram will infringe a celebrity’s trademark in his or her name largely will
depend on the use to which the hologram is being put. Given the immediate surge
in the popularity of holograms after Tupac’s Coachella performance, one can
imagine the plethora of marketing uses to which holograms might be put:
animated holograms in movie theaters may replace standard cardboard cutouts,
while stationary or animated holograms may replace mannequins in store windows.
Indeed, one can imagine holographic billboards replacing traditional
two-dimensional billboard advertising in high-impact locations such as Times
Square. When a hologram merely is replacing
older forms or manners of marketing, the infringement analysis should mimic
those cases that have been decided under traditional media.
Other
uses of trademark are not as cut and dried, however. For instance, as described
in greater detail above, the copyright in older characters like Mickey Mouse
are due to enter the public domain in the next decade or two. When that
happens, the creative design of the character becomes open to the public; the
trademark, however, will last as long as it continues to be used commercially. Thus,
while a hologram author would be able to create works based on the Mickey Mouse
character, the hologram author would not be able to use the hologram to sell
goods or services. Additionally, the hologram author would not be able to use
the Mickey Mouse character in a way that causes confusion regarding the
affiliation of the trademark owner to the image; thus, if consumers are likely
to believe mistakenly that a Mickey Mouse hologram production was sponsored by
Disney, then Disney may have grounds for a trademark infringement claim.
D. Right of Publicity
Finally,
the right of publicity protects the celebrity’s interest in the commercial
exploitation of his or her name or likeness, including his or her name, face,
signature, and voice or vocal style.
The
first consideration for hologram authors interested in creating a holographic
performance is whether their subject is protected by the right of publicity at
all. Unlike a trademark, which may be founded in purely creative works like
Mickey Mouse, the right of publicity has extended traditionally only to
persons. Non-human entities such as corporations or partnerships do not enjoy
the right of publicity; similarly, purely fictional, non-human characters—for
instance, animated characters—do not enjoy the right of publicity. Thus, while
hologram authors generally will have to secure a license to create a
holographic performance based on a human likeness, there is no such requirement
for holographic performances of non-human characters.
While
the right of publicity does not extend to non-human entities, this right
nevertheless has enjoyed some expansion in the last 30 years that warrant consideration.
For instance, courts have held that the right of publicity extends to group
personas like musical bands.[21] The
Ninth Circuit has extended the right of publicity even further, holding that a
celebrity’s right of publicity may be infringed by the unlicensed portrayal of
a character played by the actor, even
if the portrayal is not referencing the actor him or herself.[22] Thus,
if a hologram author wishes to create a holographic performance based, for
example, on a popular television series or film, the author will need to seek a
license from the copyright holder for the creative element of the work, the
trademark holder for advertising purposes, and possibly the actor(s) for the
use of their image in both the creative and advertising elements of the
hologram.
Finally,
in the case of deceased celebrities, hologram authors will need to consider whether
the celebrity enjoys post-mortem personality rights. The amount of protection
for a deceased celebrity’s right of publicity varies widely from state to
state, and the state where a celebrity is domiciled at death determines the
existence of his or her post-mortem rights. The question of the post-mortem
validity of the right of publicity recently was explored by Marilyn Monroe’s
estate in a dispute with the estate of photographer Sam Shaw, a long-time
photographer of the actress. The dispute
culminated in two court decisions that ruled against protecting her personality
rights because of Monroe’s domicile at the time of her death.[23] Though
Monroe lived in both California and New York, Monroe was legally domiciled in
New York at the time she died, a state that provides very little post-mortem
protection of personality rights. Thus, the court held that Monroe’s deceased
celebrity personality rights in California were unprotectable,[24]
even though California provides deceased celebrity rights protection for 70
years after the death of a celebrity.[25] In
light of these cases, then, hologram authors should have an easier time
acquiring the pertinent licenses for celebrities domiciled at death in New York
and similarly inclined states, while celebrities domiciled in California, for
instance, will present a greater barrier.
IV. CONCLUSION: LOOKING FORWARD
Since
Tupac’s Coachella appearance, the news has increasingly announced holographic
performances, concerts and alternative uses of holographic technology. Indeed,
in May 2012 the Port Authority announced the purchase of three holograms
programmed to answer questions most frequently asked by consumers at LaGuardia,
Newark, and John F. Kennedy airports; to get information from the holograms,
passengers simply have to speak to them.[26] Thus,
the foregoing legal considerations promise to be only the beginning as
holographic performances continue to become mainstream.
Beyond
the legal considerations explored in this article, several moral considerations
also are worth exploring. For instance, the question of whether a hologram
author can secure the rights
necessary to create a holographic performance of a deceased celebrity does not
answer the question of whether he or she should.
In Tupac’s case, the Tupac hologram was created with the permission of Tupac’s
mother and under the meticulous care of Dr. Dre. By contrast, other deceased
artists may not have a social network caring for the perfect replication of his
or her likeness and mannerisms. In other cases, it may be cost prohibitive to
create a holographic performance that perfectly mimics those elements; given
that Tupac’s holographic performance is estimated to have cost around $100,000,
studios may not be willing to replicate an artist’s mannerisms with perfect
accuracy.
Other
considerations relate to the artists themselves. Knowing that holographic performances
are a part of mainstream entertainment—and particularly in light of the appeal
of holographic performances by deceased entertainers—artists should address the
question of whether and to what extent their name and likeness may be utilized
as a holographic performance when negotiating contracts. Indeed, this question
is as much a backward thinking issue as it is forward: for those contracts that
already have been executed, an important question will be whether the rights granted
by the artist included the right to create a holographic representation at all.
These
issues demonstrate the important role that transactional and litigation
attorneys will play in assisting the creative and business development of
holographic performances in the future.
[1] Pepper’s Ghost was first used in 1863 in
a production of Charles Dickens’ The
Haunted Man, developed by Professor John Henry Pepper and Henry Dircks. See Author Unknown, Peppers Ghost History, Dimensional Studios, available at
http://www.eyeliner3d.com/peppers_ghost_history.html; see also Devin Faraci, Tupac’s
Coachella “Hologram” Achieved With Magic Trick From The 1860s, Badass
Digest, April 16, 2012.
[2] The
Musion Eyeliner is a high definition video projection system that allows moving
images to appear within a live stage setting. The system works as a modern
commercial variation of Pepper’s Ghost,
wherein a thin metalized film is placed across the front of the stage at an
angle of 45 degrees to the audience; below the screen is a bright image
supplied by an LED screen or powerful projector. When viewed from the
audience’s perspective, the reflected image appears to be onstage.
[3] See Author Unknown, Holographic Projections at the Coachella Music Festival, AV
Concepts, available at http://www.avconcepts.com/coachella-2012-4/.
[4]
Although the general rule is that the person who creates a work is the author
of that work, there is an exception to that principle: copyright law defines a
category of works called “works made for hire.” If a work is “made for hire,”
the employer (i.e., a firm, an organization, or an individual), and not the
employee, is considered the author. See
17 U.S.C. 101.
[5] See 17 U.S.C. § 302; see also Circular 15A, Duration of Copyright, U.S. Copyright
Office.
[6] See 15 U.S.C. § 1127.
[7] For
example, Beyoncé Knowles and Shawn Corey Carter (“Jay-Z”) famously filed an
application with the PTO to protect the name of their firstborn child, Blue
Ivy, from unauthorized use. See Janean
Chun, Blue Ivy Gets Trademarked By
Beyoncé And Jay-Z—What it Means for Businesses, The Huffington Post,
February 9, 2012.
[8] 15
U.S.C. § 1502(e)(4).
[9] See, generally, In re J.J. Yeley, 2007 WL 3095396 (T.T.A.B. Oct. 17, 2007)
(allowing a well-known race car driver to register his name as a trademark).
[10] See PTO Registration Number 3257796.
[11] See, e.g., PTO Registration Numbers
4061556, 4035125, and 3133173.
[12] See Thomas McCarthy, The Rights of Publicity and Privacy, §§
6:3, 6:8 (2d ed. 2008) (noting the different states that protect personality
rights). As of this writing, the states that afford protection to a right of
publicity are Alabama, California, Connecticut, Florida, Georgia, Hawaii,
Illinois, Indiana, Kentucky, Massachusetts, Michigan, Minnesota, Missouri,
Nebraska, Nevada, New Jersey, New York, Ohio, Oklahoma, Pennsylvania, Rhode
Island, Tennessee, Texas, Utah, Virginia, Washington, and Wisconsin.
[13] 15
U.S.C. § 1117(a).
[14] See Christopher Palmeri, American Apparel Settles with Woody Allen,
Bloomberg BusinessWeek, May 18, 2009.
[15] 17
U.S.C. § 302.
[16] Some
legal scholars argue that Steamboat
Willie is already in the public domain due to several ambiguities in the
title card of the Steamboat Willie
cartoon that, arguably, fail to comply with the copyright “formalities” in
effect at the time the cartoon was copyrighted. See Joseph Menn, Whose Mouse
Is It Anyway?, Los Angeles Times, August 22, 2008.
[17] 17
U.S.C. § 101.
[18] The
image, created by visual effects company Digital Domain Media Group, was
described by Ed Ulbrich as being “not found footage. This is not archival
footage. This is an illusion.” Author Unknown, Coachella’s “Astonishing” Tupac Shakur Hologram: How They Did It,
The Week, April 17, 2012.
[19]
Danielle and Andy Mayoras, What Does
Tupac’s Hologram Mean for Other Celebrity Estates?, Forbes, April 23, 2012.
[20] See Polaroid Corp. v. Polarad Elect. Corp.,
287 F.2d 492 (2d Cir. 1961), cert. denied,
368 U.S. 820 (1961).
[21] See, e.g., Bi-Rite Enterprises, Inc. v. Button Master, 555 F. Supp. 1188, 1191
(S.D.N.Y. 1983) (holding that a group that develops market value in its persona
is entitled to publicity rights in its name).
[22] See Wendt v. Host Intl. Inc., 125 F.3d 806,
811 (9th Cir. 1997) (stating that “[w]hile it is true that [the actors’] fame
arose in large part through their participation in Cheers, an actor or actress
does not lose the right to control the commercial exploitation of his or her
likeness by portraying a fictional character).
[23] Milton H. Greene Archives Inc. v. CMG
Worldwide Inc., 2008 U.S. Dist. LEXIS 22213 (C.D. Cal. 2008) (“Milton
Archives I”); Milton H. Greene Archives
Inc. v. CMG Worldwide Inc., 568 F.Supp.2d 1152 (C.D. Cal. 2008) (“Milton Archives
II”).
[24] Milton Archives II, 568 F.Supp.2d at
1199.
[25] Cal.
Civ. Code § 3344.1.
[26] See Matthew Rosenbaum, That Nice Lady at NYC Airports Is a Hologram,
ABC News, May 22, 2012.
posted by Unknown @ 8:57 AM
