To License or Not To License, That is the Question?

When you get in the car and drive, no question, you need a license. When you get married, no question, you need a license. When you paint an image of a celebrity and market reproductions of that image, you need a license; or do you? This question has been asked numerous times and may finally get yet another answer this summer when an arbitrator is expected to rule on just such a question.

Original paintings generally do not require a license and the courts have upheld that such originals works are artist´s creations protected under the First Amendment. Matters of reference material used to create an original painting can be more difficult to answer but assuming that the artist went to a public event, takes a picture of an action scene and then creates a painting from either the picture taken or directly while at the event, the artist can freely sell that original with seemingly little risk of legal retribution. Now assume the artist wants to create production copies of that original to sell. Here is where it gets more complicated. Artwork that does not reflect enough originality, such as in the reproductions, may well face legal risks for the artist without a proper license from the subject.

The right of publicity, which protects a person's legal power to control the use of their own image, such as a celebrity protecting their physical image, varies widely from state to state. About 55 years ago, Judge Jerome Frank first used the term "right of publicity" in the federal appeals case Haelan Laboratories Inc. v. Topps Chewing Gum, Inc. In that case, a sports figure licensed his image on a baseball card promotion only to see Topps Chewing Gum create its own unlicensed card of the same sports figure. In that case, the court ruled, on appeal, that a person has the right to control the economic benefit of their own image. Since that time, states have ruled differently on whether a license is required to protect an artist when they use the image of celebrities. There does not seem to be any uniform treatment across all states. The more the artist creates a unique piece of artwork as opposed to a realistic copy of a photograph, the more the artist can rely on the courts supporting First Amendment protection. The question then becomes, just how much artistic creativity is needed to move the image from infringing the "right of publicity" for the celebrity to the right of originality on behalf of the artist and thus, protected under the First Amendment.

Recent federal court rulings have and will continue to add some clarity to the muddied waters. The now famous Tiger Woods case some 5 years ago, where his marketing company challenged an artist that had depicted his likeness in a series of serigraphs, or hand embellished reproductions, is perhaps the backbone that supports artist´s rights under the First Amendment. This case provided further confirmation that if an artist provides enough artistic creativity in his image as opposed to just a realistic reproduction of a photograph, it would be supported by First Amendment protection and no fees would have to be paid to the celebrity. In effect, Tiger Woods lost his argument (and subsequent appeal). The case found that creativity overtook the right of publicity by the celebrity. Artists generally hailed this a victory and hoped that the matter was behind them.

As for states determining their own laws, what may add further confusion is a bill currently being hurried through the New York state legislature, sponsored by Sen. Marty Golden and Assemblywoman Helene Weinstein. This bill looks to give further support to the "right of publicity" argument and protect dead celebrities name, portrait and likeness. The bill attempts to define who a celebrity is as well as provide for two classes of photographs covered by the bill; those taken before the bills passage and those taken afterward.

Of more tantamount consequence today, simply because it will by most standards set the current precedent is a case brought by the University of Alabama in 2005 against an artist that painted University of Alabama football games without permission from the university and did not pay the university license fees. The case is in arbitration with an expected ruling this summer. It is widely anticipated that this ruling will set the standard in the ongoing artist versus celebrity licensing debate.

What has become clear as a result of the Tiger Woods and the ongoing University of Alabama case, as well as the New York legislatures interest in the topic, is that there is no tangible divide, or finite set of rules, in the licensing saga. The question of artistic creativity has a fine line when challenged by celebrity´s right of publicity. The safest and surest way for an artist "to sleep at night" is to secure a license from the personalities he is depicting. The University of Alabama case may no longer make that a choice. This is the very reason that companies such as Legendary Sports Prints, a leading publisher of sports art, choose to spend significant amounts of money in it effort to secure licenses.