† 1993 Joseph J. Beard

† Professor of Law, St. John's University School of Law. S.J.D., Harvard University Law School; L.L.M. (Taxation), Boston University School of Law; J.D., Suffolk University Law School; M.B.A., Babson College; B.S. (Electrical Engineering), Tufts University. I wish to acknowledge the splendid assistance of Susan G. Berlly and Regina Trainor, members of the Class of 1993 at St. John's University School of Law. I also want to thank Mrs. Gloria Servidio for her outstanding assistance as typist extraordinaire.

1. Richard Corliss, They Put the ILM in Film, TIME, Apr. 13, 1992, at 68-69.

2. WILLIAM SHAKESPEARE, HAMLET, PRINCE OF DENMARK, Act 5, Scene 2.

3. Joseph J. Beard, The Sale, Rental, and Reproduction of Motion Picture Videocassettes: Piracy or Privilege?, 15 NEW ENG. L. REV. 435, 455 (1980).

4. (Carolco 1991).

5. Corliss, supra note 1.

6. (Universal 1991).

7. (20th Century 1990).

8. (Universal 1982). This 1982 black and white film starring Steve Martin is a send-up of the film noire private eye classics of the 1940's. Clips of films starring Humphrey Bogart, Alan Ladd, Charles Laughton, and others were creatively spliced with scenes and dialog of Steve Martin and other live actors. Writing credits went to Carl Reiner, Steve Martin, and George Gipe. Gipe will be remembered as the author of "Nearer to the Dust," the pro-author/publisher monograph published by Williams & Wilkins at the time they were suing the U.S. Government for copying W & W's medical journals. The Williams & Wilkins Co. v. United States, 172 U.S.P.Q. 670 (Ct. Cl. 1972), rev'd, 487 F.2d 1345 (Ct. Cl. 1973), aff'd by an equally divided court, 420 U.S. 376 (1975).

9. (Orion Pictures 1983). This 1983 film, written and directed by Woody Allen and starring Allen and Mia Farrow, wove film clips of such long dead celebrities as Fanny Brice, Billy Rose, Tom Mix, and Charlie Chaplin into scenes in the film about Leonard Zelig (Allen), the human chameleon. The technical elements integrating Allen and the vintage film clips were undertaken by R. Greenberg Associates.

10. NATALIE COLE, Unforgettable, on UNFORGETTABLE (Elektra Entertainment. 1991).

11. The two ads are a result of the creative genius of Lintas: New York, the ad agency that has handled the Diet Coke account since its introduction in 1982, and the technical genius of R. Greenberg Associates. The first ad, "Night Club," relied on isolating images by rotoscoping film clips of Bogart in ALL THROUGH THE NIGHT, Armstrong in HIGH SOCIETY, and Cagney in PUBLIC ENEMY and THE ROARING TWENTIES. These images were then "computer stitched into the contemporary nightclub scene." Michael Quinn, Ghosts in the Commercial, TIME, Dec. 23, 1991, at 56.

12. Actually, there was a slight change to the Cagney image; he grew a bit taller so as not to be overshadowed by the live actress sitting next to him. Id.

13. CASABLANCA (Warner Brothers 1942).

14. (Nadia M. Thalmann & Daniel Thalmann 1987). For a description of the technology employed in creating Marilyn and Bogie see Nadia Magnenat-Thalmann & Daniel Thalmann, The Direction of Synthetic Actors in the Film Rendevouz à Montréal, IEEE COMPUTER GRAPHICS & APPLICATIONS, Dec. 1987, at 9.

15. Id. at 10.

16. See André LeBlanc et al., Sculpting with the "Ball and Mouse Metaphor", in 20 SIGGRAPH COURSE NOTES 30 (1991); Arghyro Paouri et al., Creating Realistic Three-Dimensional Human Shape Characters for Computer-Generated Films in COMPUTER ANIMATION '91 89 (Nadia M. Thalmann & Daniel Thalmann eds., 1991); Demetri Terzopoulos & Keith Waters, Physically-based Facial Modelling, Analysis, and Animation, 1 J. VISUALIZATION & COMPUTER ANIMATION 73 (1990), reprinted in 20 SIGGRAPH COURSE NOTES 67 (1991); Demetri Terzopoulos & Keith Waters, Techniques for Realistic Facial Modeling and Animation, in COMPUTER ANIMATION '91, supra, at 59. [hereinafter Techniques for Realistic Facial Modeling}.

17. See André LeBlanc et al., Rendering Hair Using Pixel Blending and Shadow Buffers, 2 J. VISUALIZATION & COMPUTER ANIMATION 92 (1991), reprinted in 20 SIGGRAPH COURSE NOTES 96 (1991); Monique Nahas et al., Registered 3D - Texture Imaging, in COMPUTER ANIMATION '90 81 (Nadia M. Thalmann & Daniel Thalmann eds., 1990).

18. See Prem Kalra et al., Simulation of Facial Muscle Actions Based on Rational Free Form Deformations, in 11 COMPUTER GRAPHICS FORUM C-59 (1992); Prem Kalra et al., SMILE: A Multilayered Facial Animation System, in MODELING IN COMPUTER GRAPHICS 189 (Tosiyasu L. Kunii ed., 1991) [hereinafter SMILE]; Nadia Magnenat-Thalmann & Daniel Thalmann, Complex Models for Animating Synthetic Actors, IEEE COMPUTER GRAPHICS & APPLICATIONS, Sept. 1991, at 32; Catherine Pelachaud et al., Communication and Coarticulation in Facial Animation, in 20 SIGGRAPH COURSE NOTES 236 (1991); Steven Pieper et al., Interactive Graphics for Plastic Surgery: A Task-Level Analysis and Implementation in PROC. 1992 SYMP. ON INTERACTIVE 3D GRAPHICS 127 (1992); see also, Keith Waters, A Muscle Model for Animating Three-Dimensional Facial Expression, COMPUTER GRAPHICS, July 17, 1987, at 17.

19. See Laurent Bezault et al., An Interactive Tool for the Design of Human Free-Walking Trajectories, in 17 SIGGRAPH COURSE NOTES 181 (1992); Ronan Boulic et al., A Global Human Walking Model with Real-Time Kinematic Personification, 6 VISUAL CMPUTER 344 (1990); Gary Monheit & Norman I. Badler, A Kinematic Model of the Human Spine and Torso, in IEEE COMPUTER GRAPHICS & APPLICATIONS, Mar. 1991, at 29; Cary B. Phillips & Norman I. Badler, Interactive Behaviors for Bipedal Articulated Figures, CoMPUTER GRAPHICS, July 1991, at 359; Olivier Renault et al., A Vision-based Approach to Behavioural Animation, 20 SIGGRAPH COURSE NOTES 287 (1991); David Zeltzer, Human Figure Modeling for Virtual Environment Applications, IEEE INT'L WORKSHOP ON ROBOT AND HUM. COMM., (1992); David Zeltzer & Michael B. Johnson, Motor Planning: An Architecture for Specifying and Controlling the Behavior of Virtual Actors, 2 J. VISUALIZATION AND COMPUTER ANIMATION, 74 (1991).

20. See JONATHAN ALLEN, ET AL., FROM TEXT TO SPEECH: THE MITALK SYSTEM (1987); J.N. HOLMES, SPEECH SYNTHESIS AND RECOGNITION (1987); R. LINGGARD, ELECTRONIC SYNTHESIS OF SPEECH (1985); NELSON MORGAN, TALKING CHIPS (1984); DOUGLAS O'SHAUGNESSY, SPEECH COMMUNICATION: HUMAN AND MACHINE, (1990); E.J. YANNAKOUDAKIS & P.J. HUTTON, SPEECH SYNTHESIS AND RECOGNITION SYSTEMS (1987); Yousif A. El-Iman & Karima Banat, Text-to-Speech Conversion on a Personal Computer, IEEE MICRO, Aug. 1990, at 62; Dennis H. Klatt & Laura C. Klatt, Analysis, Synthesis, and Perception of Voice Quality Variations Among Female and Male Talkers, 87 J. ACOUSTIC SOC'Y AM. 820 (1990); Michael H. O'Malley, Text-to-Speech Conversion Technology, COMPUTER, Aug. 1990, at 17; Carl.R. Strathmeyer, Voice in Computing: An Overview of Available Technologies, COMPUTER, Aug. 1990, at 10; Roberta Wiener, Computerized Speech: A Study of its Effect on Learning, 18 TECHNOLOGICAL HORIZONS EDUC. J. 100 (1991).

21. J.C.R. LICKLIDER, LIBRARIES OF THE FUTURE 17 (1965) (quoting an unspecified source).

22. When motion pictures appeared, so did law suits by play owners. See Stodart v. Mutual Film Corp., 249 F. 507 (S.D.N.Y. 1917), aff'd, 249 F. 513 (2d Cir. 1918); O'Neill v. General Film Co., 152 N.Y.S. 599 (N.Y. Sup. Ct. 1915), modified, 171 A.D. 854 (N.Y. App. Div. 1916).

23. When television began in earnest after World War II, old films, particularly Westerns, found new life, and actors sued for a piece of the pie. See Republic Pictures Corp. v. Rogers 213 F.2d 662 (9th Cir. 1954), cert. denied, 348 U.S. 858; Autry v. Republic Prods., 213 F.2d 667 (9th Cir. 1954), cert. denied, 348 U.S. 858.

24. The introduction of cable produced a clash with broadcast T.V. See Telepromptor Corp. v. Columbia Broadcasting Sys., 415 U.S. 394 (1974); Fortnightly Corp. v. United Artists Television, 392 U.S. 390 (1968).

25. When the public discovered that video cassette recorder/players could be used to tape off-air, the motion picture owners sued the VCR manufacturer. See Sony Corp. of Am. v. Universal City Studios, 464 U.S. 417 (1984).

26. When the pre-recorded motion picture videocassettes led to unlicensed mini-theaters, the motion picture industry reacted. See Columbia Pictures Indus. v. Aveco, Inc., 800 F.2d 59 (3d Cir. 1986); Columbia Pictures Indus. v. Redd Horne, Inc., 749 F.2d 154 (3d Cir. 1984). The owners of music copyrights were quick to react when pre-recorded videocassettes were released containing their songs on the soundtracks. See Cohen v. Paramount Pictures Corp., 845 F.2d 851 (9th Cir. 1988); Bourne v. Walt Disney, No. 91-0344 LLS, 1992 U.S. Dist. LEXIS 11731 (S.D.N.Y. Aug. 6, 1992) (Bourne II); No. 91-0344 LLS, 1992 U.S. Dist. LEXIS 9853 (S.D.N.Y. July 1, 1992) (Bourne I), rev'd, 976 F.2d 99 (2d Cir. 1992).

27. SHAKESPEARE, supra note 2.

28. Corliss, supra note 1.

29. If a living actor were synthesized without his permission using data extracted from films, photographs and sound recordings, the actor would have a right of privacy/publicity claim in virtually every jurisdiction. See RESTATEMENT (SECOND) OF TORTS § 652C (1977).

30. "Courts treat the [human] model's appearance as unprotected subject matter." Paul Goldstein, II COPYRIGHT PRINCIPLES, LAW & PRACTICE 66 (1989). Note that an individual's appearance and voice are not totally without legal protection, for the rights of privacy and publicity and allied rights give the individual a degree of control over these elements of the persona. See infra part IV B.

31. "A voice is not copyrightable. The sounds are not 'fixed.'" Midler v. Ford Motor Co., 849 F.2d 460, 462 (9th Cir. 1988), cert. denied, 112 S.Ct. 1513 (1992).

32. 188 U.S. 239, 249 (1903).

33. It is likely that impressionists may be employed in early re-animation films, but, at some point, computer synthesis should become a reality. Whether the late actor's voice is replicated by a human mimic or by a computer model of the actor's voice, reference to sound recordings or film soundtrack recorded during the lifetime of the actor seems unavoidable.

34. Even if the film is in the public domain, post-mortem right of publicity issues lurk. See discussion infra part IV.

35. 17 U.S.C. § 106(1) (1988).

36. Id. § 106(3).

37. Id. § 106(4).

38. Id. § 106(5).

39. Id. § 106(2).

40. Paouri et al., supra note 16, at 94.

41. For a discussion of photogrammetry, see id. See also ISAAC KERLOW & JUDSON ROSEBUSH, COMPUTER GRAPHICS FOR DESIGNERS & ARTISTS 152, 158, 162, 163 (1986).

42. See Paouri et al., supra note 16 at 90

43. See id. at 93; LeBlanc supra note 16.

44. 111 U.S. 53 (1884).

45. Id.

46. Gross v. Seligman, 212 F. 930, 931-32 (2d Cir. 1914).

47. Time, Inc. v. Bernard Geis Assocs., 293 F. Supp. 130 (S.D.N.Y. 1968) (but for a fair use defense, sketches copied from frames of the Zapruder film of President Kennedy's assassination would have been an infringement.)

48. Rogers v. Koons, 960 F.2d 301, 307 (2d Cir. 1992), cert. denied, 113 S.Ct. 365.

49. In Remco Indus., Inc. v. Goldberger Doll Mfg. Co., 141 U.S.P.Q. 898, 899 (E.D.N.Y. 1964), the court enjoined the defendant not only from copying the plaintiff's copyrighted dolls depicting the Beatles, but further enjoined copying the original, the actual features of the Beatles. Professor Nimmer criticized the injunction as it related to copying the original: "[Copying the original] might constitute an invasion of privacy or of a right of publicity of the Beatles themselves, but can hardly amount to an infringement of plaintiff's copyright." MELVILLE B. NIMMER & DAVID N. NIMMER, 2 NIMMER ON COPYRIGHT § 8.01[C] n. 34, at 8-18 (1992) (hereinafter "Nimmer"). Given Justice Holmes' now-hoary maxim that one is "free to copy the original," Nimmer's observation is clearly the correct exposition of the law.

50. Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53,60 (1884).

51. Gross v. Seligman, 212 F. 930 (2d Cir. 1914).

52. Id. at 931.

53. Time, Inc. v. Bernard Geis Assocs., 293 F. Supp. 130, 143 (S.D.N.Y. 1968).

54. FINAL REPORT OF THE NATIONAL COMMISSION ON NEW TECHNOLOGICAL USES OF COPYRIGHTED WORKS 12 (JULY 31, 1978).

55. Pub. L. No. 96-517, 94 Stat. 3015, 3028 (December 12, 1980).

56. 2 NIMMER, supra note 49, § 8.08, at 8-105 & n.4.

57. Bellsouth Advertising & Pub. Corp. v. Donnelley Inf. Publishing, 933 F.2d 952, 958 (11th Cir. 1991), opinion vacated, 977 F.2d 1435 (11th Cir. 1992); West Publishing Co. v. Mead Data Central, 799 F.2d 1219, 1227 (8th Cir. 1986), cert. denied, 479 U.S. 1070 (1987); Rand McNally & Co. v. Fleet Management Systems, 600 F. Supp. 933, 943 (N.D. Ill. 1984).

58. In the context of this discussion, I distinguish between the input of data as opposed to the input of the computer programs (software) that operate on data. Decisions dealing with software copying include Tandy Corp. v. Personal Micro Computers, 524 F. Supp. 171 (N.D. Cal. 1981); Bly v. Banbury Books 638 F. Supp. 983 (E.D. Pa. 1986).

59. 17 U.S.C. § 101 (1988) ("copies").

60. In Rand McNally, 600 F. Supp. at 943, mileage data taken from plaintiff's "Standard Highway Mileage Guide" were input by defendant into a computer data base, albeit in a rearranged format. The data input was "fixed" in that it was stored in digital form and sold in a computerized format. Although the data was rearranged, there was substantial similarity in gross between the input, the plaintiff's data, and the output, defendant's "Compu. Guide." Finally, the computer data in the "Compu. Guide" could be perceived with the aid of a machine.

In West Publishing, 799 F.2d 1219, 1227 (8th Cir. 1986), Mead Data Central (MDC) planned to include West's National Reporter system pagination in LEXIS, MDC's computer-assisted, on-line research service. This feature, called "star-pagination" would provide "jump-cites" to the West Reporter System. The data input would be permanently stored in LEXIS. The output data would be identical to the input data, i.e., the pagination. And the data would be output on a video screen and/or printer.

In Bellsouth, 933 F.2d 952, 958 (11th Cir. 1991), the court found that the work was "fixed" because it was stored on magnetic tape. And, although the arrangement of the defendant's sales lead sheets was different from the plaintiff's phone directory, the court held that the lead sheets had nonetheless appropriated the coordination of informational components derived from the plaintiff's work and that the appropriation was substantial, i.e., the output was substantially similar to the input. Finally, the infringing data stored in the computer could be read on a computer monitor screen and was ultimately output in hard copy.

61. 17 U.S.C. § 101 (1988) (emphasis added) ("fixed").

62. See supra note 60.

63. See supra note 60.

64. 17 U.S.C. § 101.

65. 2 NIMMER, supra note 49, § 8.02(B)(2) (emphasis added).

66. 245 F. Supp. 587, 590 (S.D.N.Y. 1965).

67. Id. at 590; see also H.R. REP. NO. 1476, 94th Cong., 2d Sess., at 62 (1976) ("the showing of images on a screen or tube would not be a violation of [reproduction rights}').

68. Mura, 245 F. Supp. at 589.

69. 602 F.2d 859 (9th Cir. 1979). Plaintiff Helen Walker was the author of "I Ching Cards" which are designed to aid in the instruction of an ancient Chinese method of fortune telling.

70. Id. at 864.

71. 628 F. Supp. 871 (C.D. Cal. 1986).

72. 977 F.2d 1510 (9th Cir. 1992). However, the Ninth Circuit ultimately concluded that the interim copying was a fair use. See infra notes 133-154 and accompanying text.

73. 615 F. Supp. 430, 434-35 (S.D.N.Y. 1985), aff'd, 784 F.2d 44 (2d. Cir. 1986), cert. denied, 476 U.S. 1159. Plaintiff, Thomas Walker, was the author of "Fort Apache," a non-fictional account of his experiences as a policeman.

74. Id. at 434.

75. Walker, 784 F.2d at 52 (emphasis added).

76. 711 F.2d 141 (9th Cir. 1983). In Sega, the court acknowledged that certain types of interim copying might be lawful. 977 F.2d at 1526.

77. Id. at 142.

78. The thoughts of Justice Kaplan, written at the time he was the Royal Professor of Law at Harvard, illuminate the interim copying issue, even though his words were not directed to that particular issue:

So inured have we become to the extension of the monopoly to a large range of so-called derivative works, that we no longer sense the oddity of accepting such an enlargement of copyright while yet intoning the abacadabra of 'idea' and 'expression' . . . . It is not a breach of the copyright of a poem to try to capture its essence in glass sculpture, as artists in that medium recently sought to do. This would be about as free of legal consequences as Hemingway's allegation that he copied his writing style from Cézanne's paintings. Getting to more plausible cases, while a motion picture may be a mere replica of a copyrighted play, and thereby infringe, plays commonly are much altered, and novels even more so, as they are transmuted into motion pictures. It is often thought necessary to make drastic changes of dialogue, action, and other elements in order to keep the picture faithful to the original. But if it is a matter of nice artistic judgment how much change is needed to attain 'sameness' in the new medium, we can anticipate difficulties in deciding what is infringement. It is surely wrong to assume that what Hollywood is content to call a dramatization or screen treatment of a novel or play would necessarily be an infringing copy if not licensed. The fundamental that 'use' is not the same thing as 'infringement,' that use short of infringement is to be encouraged, is relevant to these transformation cases.

BENJAMIN KAPLAN, AN UNHURRIED VIEW OF COPYRIGHT 56-57 (1967) (emphasis added). The italicized phrase was quoted with approval in Fortnightly Corp. v. United Artists Television, 392 U.S. 390, 393 n.8 (1968).

79. The issue of computer manipulation of photographs has been a topic of discussion. See, e.g., Brad Bonnin, Copyrights & Wrongs, PUBLISH, Apr. 1990, at 77.

80. A work is "reproduced" if its embodiment in tangible form can be perceived for a period of more than transitory duration. H.R. Rep. No. 1476, supra note 67, at 62. So, unless the destruction were to take place before the transitory period elapsed, the infringement would be a fait accompli.

81. 17 U.S.C. § 101 (1988).

82. It is also possible to do a face cast of a person with features similar to the late actor, grid the casting, optically scan the gridded casting, and input the scan data into the computer. Once the data from the face mask is input, the data points can then be adjusted to more exactly replicate the features of the late actor.

83. Paouri et al., supra note 16, at 94-95.

84. See Boulic et al., supra note 19.

85. See Jean-Paul Gourret et al., Simulation of Object and Human Skin Deformations in a Grasping Task, COMPUTER GRAPHICS, July 1989, at 21.

86. SMILE, supra note 18.

87. See Warner Bros. Pictures v. Columbia Broadcasting Sys., 216 F.2d 945 (9th Cir. 1954), cert. denied, 348 U.S. 971 (1955) ("Sam Spade").

88. See P. EKMAN & W. FRIESEN, FACIAL ACTION CODING SYSTEMS (1978).

89. See SMILE, supra note 18.

90. For example, M.I.T., University of Pennsylvania, University of Montreal, University of Toronto, University of Geneva, University of Paris, and the Swiss Federal Institute of Technology, to name but a few.

91. SMILE, supra note 18.

92. Performance rights and re-animation are discussed in Performance Rights, part II E.

93. See, e.g., Techniques for Realistic Facial Modeling, supra note 16.

94. One might liken the actor to an artist. As was said in Franklin Mint Corp. v. National Wildlife Art Exchange,

[There is a] tendency of some painters to return to certain basic themes time and time again. Winslow Homer's schoolboys, Monet's facade of Rouen Cathedral, and Bingham's flatboat characters were cited. Franklin Mint relied upon these examples of 'variations on a theme' as appropriate examples of the freedom which must be extended to artists to utilize basic subject matter more than once. National vigorously objects to the use of such a concept as being contrary to the theory of copyright. We do not find the phrase objectionable, however, because a 'variation' probably is not a copy and if a 'theme' is equated with an 'idea,' it may not be monopolized. We conceive of 'variation on a theme,' therefore, as another way of saying that an 'idea' may not be copyrighted and only its 'expression' may be protected.

575 F.2d 62, 66 (3d Cir. 1978), cert. denied, 439 U.S. 880:

95. See Midler v. Ford Motor Company, 849 F.2d 460, 462 (9th Cir. 1988), cert. denied, 112 S.Ct. 1513 (1992).

96. 17 U.S.C. § 114(b) (1988). "Mere imitation of a recorded performance would not constitute a copyright infringement even where one performer deliberately sets out to simulate another's performance as exactly as possible." H.R. Rep. No. 1476, supra note 67, at 106.

97. "[A] copyrighted work would be infringed by reproducing it in whole or in any substantial part, and by duplicating it exactly or by imitation or simulation." H.R. Rep. No. 1476, supra note 67, at 61.

98. 37 C.F.R. § 202.1(a) (1991).

99. See Universal City Studios v. Kamar Indus., 217 U.S.P.Q. 1162 (S.D. Tex. 1982); Dawn Assocs. v. Links, 203 U.S.P.Q. 831 (N.D. Ill. 1978); American Greetings Corp. v. Kleinfab Corp., 400 F. Supp. 228 (S.D.N.Y. 1975).

100. Signo Trading Int'l Ltd. v. Gordon, 535 F. Supp. 362, 365 (N.D. Cal. 1981); see also Warner Bros. v. American Broadcasting Co., 720 F.2d 231 (2d Cir. 1983); Alberto-Culver Co. v. Andrea Dumon, Inc., 466 F.2d 705 (7th Cir. 1972); Stratchborneo v. Arc Music Corp., 357 F.Supp. 1393 (S.D.N.Y. 1973). But, where the word or phrase is an imaginary invented word, protection may possibly be granted. See Life Music Inc. v. Wonderland Music Co., 241 F. Supp. 653 (S.D.N.Y. 1965) ("SUPERCALIFRAGILISTICEXPIALIDOJUS" versus "SUPERCALIFRAGILISTICEXPIALIDOCIOUS"). In Life Music, the court refused to issue a preliminary injunction because the word was known and used by members of the public for many years prior to the date when the plaintiff published their song. The court did state, "[o]f course, even if defendant copied only 'the word,' they conceivably might still be liable for infringement." Id. at 656. See also, Heim v. Universal Pictures Co., 154 F.2d 480, 487 n.8 (2d Cir. 1946) ("There may be wrongful copying, though small quantitatively; so if someone were to copy the words . . . 'Twas brillig and the slithy toves.'").

101. "Unless it is 'especially unique or qualitatively important, there is no basis for inferring copying' of a 'small common phrase.'" 3 NIMMER, supra note 49, § 13.03[a], at 13-53 n. 115, citing Stratchborneo, 357 F. Supp. 1393.

102. SMILE, supra note 18.

103. See, e.g., Gregory Albright, Digital Sound Sampling and The Copyright Act of 1976: Are Isolated Sounds Protected?, 38 COPYRIGHT L. SYMP. (ASCAP) 47 (1992); Aaron Keyt, Comment, An Improved Framework for Music Plagiarism Litigation, 76 CAL. L. REV. 421 (1988); Bruce McGiverin, Note, Digital Sound Sampling, Copyright and Publicity: Protecting Against the Electronic Appropriation of Sounds, 87 COLUM. L. REV. 1723 (1987); Thomas C. Moglovkin, Note, Original Digital: No More Free Samples, 64 S. CAL. L. REV. 135 (1990); Note, A New Spin On Music Sampling: A Case For Fair Pay, 105 HARV. L. REV. 726 (1992).

104. E.g., David Goldberg & Robert Bernstein, Music Copyrights and the New Technologies, N.Y.L.J., Jan. 15, 1988, at 1; Judith Greenberg Finell, A Musicologist Discusses Disguised Infringement, N.Y.L.J., May 29, 1992, at 5; Michael Miller, High-Tech Alteration of Sights and Sounds Divides the Arts World, WALL ST. J., Sept. 1, 1987, at 1; Stan Soocher, License to Sample, NAT'L L. J., Feb. 13, 1989, at 1; Robert Sugarman & Joseph Salvo, Sampling Litigation In the Limelight, N.Y.L.J., Mar. 16, 1992, at 1; Robert Sugarman & Joseph Salvo, Sampling Gives Law a New Mix; Whose Rights?, NAT'L L. J., Nov. 11, 1991, at 21; Kevin Zimmerman, Old Is New Again in World of Sampling, VARIETY, Aug. 1, 1990, at 69.

105. 780 F. Supp. 182 (S.D. N.Y. 1991).

106. See, e.g., Albright, supra note 103.

107. "Most would agree that Pavarotti's performance of even a single note embodies a sufficient modicum of creativity." Id. at 66.

108. (MGM 1939).

109. "[I]nfringement takes place whenever all or any substantial portion of the actual sounds that go to make up a copyrighted sound recording are reproduced in phonorecords by repressing, transcribing, recapturing off the air, or any other method . . . ." H.R. Rep. No. 1476, supra note 67, at 106 (emphasis added).

110. 17 U.S.C. § 101 (1988) (emphasis added) ("derivative work")

111. 1 NIMMER, supra note 49, § 3.01, at 3-3.

112. Id. (footnotes omitted).

113. See Fleischer Studios v. Ralph A. Freundich, Inc., 73 F.2d 276, 278 (2d Cir. 1934), cert. denied, 294 U.S. 717 (1935); King Features Syndicate v. Fleischer, 299 F. 533, 538 (2d Cir. 1924).

114. 17 U.S.C. § 106(3) (1988).

115. Id. § 101 ("perform"). For example, a re-animator might "perform" a motion picture by projecting a segment of it, frame-by-frame, onto a gridded screen to measure incremental upper and lower lip displacement of a Marilyn Monroe smile in order to create parameters for the MM software.

116. Id. § 101.

117. Id.

118. H.R. Rep. No. 1476, supra note 67, at 64.

119. 2 NIMMER, supra note 49, § 8.14[b], at 8-168.

120. See supra part II B (Reproduction Rights).

121. For example, in Gross v. Seligman, the court did not hold that the photographer could not use the same model that he had previously used, only that he could not use the identical pose. "Of course when the first picture has been produced and copyrighted every other artist is entirely free to form his own conception of the Grace of Youth . . . and to avail of the same young woman's services . . . ." 212 F. 930, 931 (2d Cir. 1914) (emphasis added).

122. 17 U.S.C. § 106(5).

123. Id. § 109(c).

124. Id. § 101 ("display").

125. See supra notes 73-79 and accompanying text.

126. See supra notes 72-79 and accompanying text.

127. 3 NIMMER, supra note 49, § 13.05[A], at 13-102.43. The four factors specifically addressed in 17 U.S.C. §107 are:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

128. 17 U.S.C. § 107(2).

129. Id. § 107(3).

130. Id. § 107(1).

131. Id. § 107(4).

132. See Joseph J. Beard, Cybera: The Age of Information, 19 COPYRIGHT L. SYMP. (ASCAP) 117, 135-136 (1971); Julius Marke, Copyright Revisited, 42 WILSON LIB. BULL. 35, 39 (1967). At the time the author wrote this article, he was technical assistant to the Director of Project INTREX (Information Transfer Experiments) at M.I.T. Project INTREX was one of the first experiments in the storage and retrieval of large scale databases.

133. Sony Corp.v. Universal City Studios, 464 U.S. 417, 451 (1984).

134. 977 F.2d 1510 (9th Cir. 1992).

135. Id. at 1522.

136. Id. (emphasis added).

137. Id. at 1531-1532.

138. Id. at 1523.

139. "The second statutory factor, the nature of the copyrighted work, reflects the fact that not all copyrighted works are entitled to the same level of protection . . . . Works of fiction receive greater protection than works that have strong factual elements, such as historical or biographical works. . . . Because of the hybrid nature of computer programs, there is no settled standard for identifying what is protected expression and what is unprotected idea in a case involving the alleged infringement of a copyright in computer software."

Id. at 1524.

140. 17 U.S.C. § 107(3).

141. Id. § 107(4)

142. For a discussion of the amount and substantiality of the portion appropriated see 3 NIMMER, supra note 49, § 13.05 [A][3], at 13-102.59.

143. It may well be that, because many photographs of an actor are available, the amount of data copied from any particular photograph, or film for that matter, would either be de minimis or at least an amount of such little magnitude and quality that Fair Use factor (3) would clearly favor the re-animator.

144. 668 F.2d 699 (2d Cir. 1982).

145. Id. at 701 n. 1 ("A 'blister' card is a cardboard display card on which is printed promotional copy and illustrations of the product. The card is treated to accept a plastic 'blister' in which the product itself is contained for sale at retail.").

146. Id. at 702. Most art directors make extensive use of what is called in the Agencies "swipe art." This consists usually of photos and illustrations ripped out of books and magazines and which are cut up (or not) to compose ideas. These dummy ads are used internally to discuss and develop concepts, and to illustrate the idea graphically. Naturally, when the time comes to actually make the shot, the talent, props and location are original.

147. Id. at 702.

148. Id. at 703.

149. 3 NIMMER, supra note 49, § 13.05[A], at 13-102.49 n. 25.3.

150. 977 F.2d at 1526.

151. Laughton, in fact, made several sound recordings including a reading, Mr. Pickwick's Christmas (Decca Records 1944).

152. 17 U.S.C. § 101 (1988) ("collective work"). But see In re Hart, 83 N.Y.S. 2d 635, 639 (N.Y. Surr. Ct. 1948), where the court suggested that a song writer had calvacade rights: "while the assignee of . . . a copyright has interests in the individual composition assigned which must be respected there still remains in the original composer a residual right to forbid or to control the combined use of his compositions." Id. (emphasis added). Nimmer, in characterizing Hart as a "rather startling decision," commented: "This decision, which appears to lack both judicial ancestry and offspring, may have been a somewhat distorted attempt to apply the recognized principle that a grant of small performing rights does not divest the grantor of grand (or dramatic) performing rights in a given musical work." 3 NIMMER, supra note 49, § 10.10 [D], 10-90.

153. 3 NIMMER, supra note 49,§ 13.05 [A], at 13-102.60 n. 34.

154. 977 F.2d at 1523.

155. A "productive" use is one in which "the copier himself is engaged in creating a work of authorship whereby he adds his own original contribution to that which is copied." 3 NIMMER, supra note 49,§ 13.05[A], at 13-102.45.

156. See Russell v. Price, 612 F.2d 1123, 1127-28 (9th Cir. 1979), cert. denied, 466 U.S. 952 (1980) ("[W]hatever place sympathy for the position of creators of derivative works might properly have under the 1909 Copyright Act, the defendants here can take advantage of none, having contributed nothing to the production of the film 'Pygmalion.'").

157. Sony Corp. v. Universal City Studios, 464 U.S. 417, 455 n. 40 (1984).

158. 17 U.S.C. § 102 (1988).

159. Feist Publications v. Rural Tel. Serv. Co., 111 S. Ct. 1282, 1287 (1991).

160. Id.

161. 982 F.2d 693 (2d Cir. 1992).

162. Id. at 706.

163. See supra notes 12-16 and accompanying text.

164. ANIMATION OF SYNTHETIC ACTORS AND 3D INTERACTION 28 (Nadia Magnenat-Thalmann & Daniel Thalmann eds., 1991).

165. Id. at 18.

166. See supra note 16 and accompanying text.

167. See supra note 17 and accompanying text.

168. Interview with Dr. Nadia Magnenat-Thalmann, Director, MIRALab Group, University of Geneva, and Dr. Daniel Thalmann, Director Computer Graphics Lab, Swiss Federal Institute of Technology, Lausanne, in Philadelphia, Pa. (March 13, 1993).

169. This Article uses the term 'level of abstraction' as defined in Computer Associates. v. Altai, Inc.:

As applied to computer programs, the abstractions test will comprise the first step in the examination for substantial similarity. Initially, in a manner that resembles reverse engineering on a theoretical plane, a court should dissect the allegedly copied program's structure and isolate each level of abstraction contained within it. This process begins with the code and ends with an articulation of the program's ultimate function. Along the way, it is necessary essentially to retrace and map each of the designer's steps--in the opposite order in which they were taken during the program's creation.

982 F.2d 693, 707 (2d Cir. 1992).

170. 797 F.2d 1222 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987).

171. Id. at 1236.

172. Id. at 1224.

173. Computer Assocs. Int'l v. Altai, Inc., 982 F.2d 693, 705 (2d Cir. 1992).

174. 797 F.2d at 1238 (emphasis in original).

175. 982 F.2d 693.

176. Id. at 707.

177. Id. at 710.

178. Id.

179. Id. (quoting Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1473 (9th Cir. 1991), cert. denied, 113 S. Ct. 198 (1992)). Changing practices in software engineering may significantly affect the similarity of outcomes from all circuits, and make the decisions more predictable. Specifically, "object-oriented" software engineering uses prepackaged data structures, bundled with the code needed to manipulate them ("objects"), and encourages the construction of programs from these building blocks. By representing abstract concepts with appropriate objects, programmers will be able to control how the abstractions test is applied to their code. However, as libraries of objects become more available, the amount of program material filtered may increase too. For an introduction to these concepts, see BRAD J. COX, OBJECT-ORIENTED PROGRAMMING (1987). For a look at future trends, see BRUCE SHRIVER & PETER WEGNER, RESEARCH DIRECTIONS IN OBJECT-ORIENTED PROGRAMMING (1987).

180. Gates Rubber Co. v. Bando American, 798 F.Supp. 1499, 1513 (D. Colo. 1992). The Second Circuit, in Computer Associates, acknowledged the narrow scope of protection its analysis provides: "If the test we have outlined results in narrowing the scope of protection, as we expect it will, that result flows from applying, in accordance with Congressional intent, long-standing principles of copyright law to computer programs." 982 F.2d at 712.

181. 562 F.2d 1157 (9th Cir. 1977).

182. Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1475 (9th Cir. 1991), cert. denied, 113 S. Ct. 198 (1992).

183. Id at 1476.

184. The court stated:

The Defendants urged this Court to undertake the "sifting" process before the substantial similarity test is performed. The Court rejects such an approach on the grounds that it has the real potential to eviscerate the application of the prevailing substantial similarity test as defined by Whelan and its progeny, and in return offers little in the way of establishing any more workable alternative.

Any sifting or dissecting of protectable from unprotectable elements before the two-step test is applied (or other considerations associated with this test) would be wholly inconsistent with case law authorities. (emphasis in original).

Gates Rubber, 798 F. Supp. 1499, 1516-17.

185. Where there is a substantial degree of similarity of expression between the two works in question and where the plaintiff's work is rich in expressive content, infringement is likely to be found under either the Second or Ninth Circuit analytical approach. Where the degree of similarity between the two works is low and the plaintiff's work contains "threadbare" expression, infringement is not likely to be found under either the Second or Ninth Circuit approach. However, where comparability is low but plaintiff's expressive content is high or where comparability is high but plaintiff's expression is slight, it is unclear whether the Ninth Circuit approach might produce a result different from that of the Second Circuit.

186. 799 F.Supp. 203 (D. Mass. 1992).

187. The court stated:

FIRST, in making the determination of "copyrightability," the decisionmaker must focus upon alternatives that counsel may suggest, or the court may conceive, along the scale from the most generalized conception to the most particularized, and choose some formulation, some conception of the "idea," "system," "process," "procedure," or "method" -- for the purpose of distinguishing between the idea, system, process, procedure, or method and its expression.

 

One may describe a number of conceptions of the 1-2-3 user interface. A non-exclusive list, commencing with the most abstract and moving toward the particular, includes:

(1) Lotus 1-2-3 is an electronic spreadsheet.

(2) It is a menu-driven electronic spreadsheet.

(3) Its user interface involves a system of menus, each menu consisting of less than a dozen commands, arranged hierarchically, forming a tree in which the main menu is the root/trunk of the tree and submenus branch off from higher menus, each submenu being linked to a higher menu by operation of a command.

(4) Its user interface involves a system of menus, each menu consisting of less than a dozen commands, arranged hierarchically, forming a tree in which the main menu is the root/trunk of the tree and submenus branch off from higher menus, each submenu being linked to a higher menu by operation of a command, so that all the specific spreadsheet operations available in Lotus 1-2-3 are accessible through the paths of the menu command hierarchy.

(5) Finally, one may conceive of the interface as that precise set of menu commands selected by Lotus, arranged hierarchically precisely as they appear in 1-2-3. Under this conception, the interface comprises the menu of commands "Worksheet," "Range," "Copy," "Move," "File," "Print," "Graph," "Data," "System," and "Quit," linked by operation of the command "Worksheet" to the menu of commands "Global," "Insert," "Delete," "Column," "Erase," "Titles," "Windows," "Status," and "Page," etc. (The completion of this proposed statement of the "idea," listing all of the more than 400 commands for which "etc." stands, would require several dozen more lines of text.)

 Borland argues that the appropriate conception of the "idea" of the 1-2-3 interface is the fifth option. If that were the case, of course, there would be no elements of expression in the menu commands and menu command hierarchy and therefore no copyrightable aspects in them.

. . . .

To select, at the opposite extreme, the very abstract statement of the idea of 1-2-3 as "an electronic spreadsheet" would be to draw an inappropriately abstract boundary between idea and expression. Thus, I concur in a fundamental principle of the Computer Associates opinion and reject the contrary proposition in Whelan.

 

Arguably, my Opinion in the Paperback decision, where no sharper focus was essential to the outcome, is consistent with accepting a conception of the idea that falls between the second and third formulations above. See Paperback, 740 F.Supp. at 67 (electronic spreadsheet having "menu structure"). In any event, I now explicitly recognize that for decision of the issues now before me the selection of functional operations that the spreadsheet performs must be considered part of the idea of the program. Copyrightability depends on expression distinct from the selection of the set of spreadsheet operations that can be performed.

 

I conclude that an appropriate conception of the "idea" or "system" of the 1-2-3 interface is the fourth of the five alternative conceptions stated above.

Id. at 216-17.

188. In the conversation with the Thalmanns, supra note 168, Dr. Nadia Magnenat-Thalmann remarked that two research associates from different national backgrounds had different perceptions about realistic hair rendering.

189. 17 U.S.C. § 107(1) (1988) ("the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes").

190. Id. § 107(3) ("the amount and substantiality of the portion used in relation to the copyrighted work as a whole").

191. Id. § 107(4) ("the effect of the use upon the potential market for or value of the copyrighted work").

192. Sony Corp. v. Universal City Studios, 464 U.S. 417, 451 (1914).

193. Sega v. Accolade, 977 F.2d 1510, 1522 (9th Cir. 1992).

194. See supra note 155.

195. See supra note 156.

196. 982 F.2d 693 (2d Cir. 1992).

197. Victoria Slind, More Trade Secret Wars., NAT'L L.J., Mar. 22, 1993, at 1, 34.

198. 982 F.2d at 717.

199. While, it is not yet clear as to how re-animation software might be exploited, it is possible that there may be a bifurcation of the product into a database unique to a particular re-animated actor, licensed by one entity, and animation software suitable for use with any animation database, licensed by another entity.

200. In the discussion of copyright protection, I have suggested that dimensional data that might be extracted from a viewing of a motion picture featuring the re-animated actor would be protected expression.

201. Samuel D. Warren & Louis D. Brandeis, The Right to Privacy, 4 HARV. L. REV. 193 (1890).

202. Only Minnesota appears not to recognize a cause of action for invasion of privacy. Stubbs v. North Memorial Medical Ctr., 448 N.W.2d 78 (Minn. Ct. App. 1990).

203. E.g., Maritote v. Desilu Productions, 345 F.2d 418 (7th Cir. 1965), cert. denied 382 U.S. 883 (Illinois); Reeves v. United Artists, 572 F. Supp. 1231 (N.D. Ohio 1983), aff'd, 765 F.2d 79 (1985).

204. E.g., Martin Luther King, Jr., Center for Social Change v. American Heritage Prods., 296 S.E.2d 697 (1982) (Georgia); Elvis Presley v. Russen, 513 F. Supp. 1339 (D.N.J. 1981).

205. CAL. CIV. CODE § 990 (West 1992). Earlier, in Lugosi v. Universal Pictures, 603 P.2d 425 (Cal. 1979), the California court buried the post-mortem right of publicity; however, with the enactment of § 990 by the California legislature, the post-mortem right of publicity, like Lugosi's legendary Dracula, rose from the grave.

206. FLA. STAT. ANN. § 540.08 (West 1988).

207. KY. REV. STAT. ANN. § 391.170 (Michie 1984).

208. NEB. REV. STAT. §§ 20-202, 20-208 (1983).

209. NEV. REV. STAT. § 598.980-988 (1989).

210. OKLA. STAT. ANN. tit. XII, § 1448 (West 1985).

211. Personal Rights Protection Act of 1984, TENN. CODE ANN. § 47-25-1101 to 1105 (1984). Tennessee was schizophrenic, deciding in favor of a descendible right of publicity in Commerce Union Bank v. Coors, 7 Media L. Rep. (BNA) 2204 (Tenn. Ct. App. 1981), aff'd on other grounds, No. 83-327-II (Tenn. Ct. App. June 20, 1987), and against it in Lancaster v. Factors, 9 Media L. Rep. (BNA) 1109 (Tenn. Ch. App. 1982), as did the Court of Appeals for the Sixth Circuit in Memphis Development Foundation v. Factors Etc., Inc., 616 F.2d 956 (6th Cir.), cert. denied, 449 U.S. 953 (1980). Finally, the Tennessee legislature stepped in and resolved matters in favor of a post-mortem right of publicity. Not to be outdone by the Tennessee legislature, a Tennessee Court of Appeals held, in Elvis Presley International Memorial Foundation v. Crowell, 733 S.W.2d 89 (Tenn. Ct. App. 1987), that, contrary to the opinion of the Sixth Circuit, the right of publicity is descendible under the common law of Tennessee. The Tennessee court rejected the philosophy of the Sixth Circuit in favor of the reasoning of Georgia in Martin Luther King, Jr. Based on the decision of the Tennessee court in Crowell, the Sixth Circuit, in Elvis Presley Enterprises v. Elvisly Yours, Inc. 817 F.2d 104 (6th Cir. 1987) reversed the position it had taken in Memphis Development. The Tennessee court did not address the duration issue of the post-mortem right of publicity. The Tennessee post-mortem right of publicity statute would appear to permit perpetual protection of the post-mortem right.

212. TEX. PROP. CODE ANN. § 26.001 - .012 (West 1987).

213. VA. CODE ANN. § 8.01 - .40 (Michie 1984).

214. In Arizona, a federal district court appeared to conclude that, if there were a descendible right of publicity at all in that state, the person would have to have exploited his right of publicity in his name and personality "by assigning the right to use them to another" during his lifetime. Sinkler v. Goldsmith, 623 F. Supp. 727, 734 (D. Ariz. 1985).

215. The Martin Luther King, Jr., Ctr. for Social Change v. American Heritage Prods., 296 S.E.2d 697 (Ga. 1982). The Georgia Supreme Court had no problem in finding that there was a common law right of publicity in that state and that it was descendible, a not surprising result given Georgia's early interest in protecting citizens with respect to privacy/publicity issues. See Pavesich v. New England Life Ins. Co., 50 S.E. 68 (Ga. 1905).

216. In Estate of Presley v. Russen, 513 F. Supp. 1339 (D.N.J. 1981), the federal district court concluded that New Jersey common law provided a descendible right of publicity. However, in Gleason v. Hustler, 7 MEDIA L. REP. (BNA) 2183 (D. N.J. 1981), the district court narrowed its interpretation of the New Jersey post-mortem right of publicity by conditioning it on "the decedent's own overt exploitation of his name or likeness, usually through an inter vivos transfer of his rights." Id. at 2185 (citations omitted). New Jersey courts had dealt early on with a person's rights in his name and features, in a case involving Thomas Edison. In Edison v. Edison Polyform Mfg. Co., 67 A. 392 (N.J. Eq. 1907), the court stated "If a man's name be his own property . . . it is difficult to understand why the peculiar cast of one's features is not also one's property, and why its pecuniary value, if it has one, does not belong to its owner rather than to the person seeking to make an unauthorized use of it." Id. at 394.

217. In Utah, the federal district court in Nature's Way Products v. Nature-Pharma, Inc., 736 F.Supp. 245 (D. Utah 1990), concluded that Utah would recognize a descendible common law right of publicity, where the right was exploited during the person's lifetime.

218. In Carson v. Here's Johnny Portable Toilets, 698 F.2d 831 (6th Cir. 1983), the Sixth Circuit found that Michigan had a common law right of publicity but in so doing quoted its own language in Memphis Development: "The famous have an exclusive legal right during life to control and profit from the commercial use of their name and personality." Id. at 835 (emphasis added) (quoting Memphis Dev. Found. v. Factors Etc., Inc., 616 F.2d 956, 957 (6th Cir.), cert. denied, 449 U.S. 953 (1980)). While the Carson court did not have a post-mortem issue before it, the cited language leaves a question as to the status of post-mortem rights in Michigan. However, it should be noted that, at least with respect to Tennessee, the Sixth Circuit has abandoned its Memphis Development position. See Elvis Presley Enters. v. Elvisly Yours, Inc., 817 F.2d 104 (6th Cir. 1987); see also 936 F.2d 889.

219. In Cepeda v. Swift & Co., 415 F.2d 1205 (8th Cir. 1969), the Eighth Circuit, citing Missouri case law, stated that "plaintiff has a valuable property right in his name, photograph and image and that he may sell these property rights." Id. at 1206 (emphasis added) (citations omitted). Thus, Missouri may recognize a descendible right of publicity.

220. In Rogers v. Grimaldi, the Second Circuit, engaging "in the uncertain task of predicting what the New York courts would predict the Oregon courts would rule as to the contours of a right of publicity under Oregon law," 875 F.2d 994, 1002 (2d Cir. 1989), appeared to decide that Oregon has a right of publicity. Id. at 1004-05 (recognizing Oregon would limit right of publicity to "wholly unrelated" or "disguised commercial advertisement" uses of celebrity's name in a movie title and therefore denying relief). However, the opinion does not suggest whether the right is descendible in Oregon; in fact, the court suggested that in the absence of Oregon precedent, New York might presume a similarity with New York law and, New York had already decided Stephano v. News Group Publications, 474 N.E.2d 580 (N.Y. 1984), a decision which appeared to foreclose a descendible right of publicity in New York. See infra note 223 and accompanying text.

221. In Hirsch v. S.C. Johnson & Son, Inc., 280 N.W.2d 129 (Wis. 1979), the Supreme Court of Wisconsin clearly established a common law right of publicity in Wisconsin that is a property right and not merely a personal right. Subsequent to Hirsch, Wisconsin enacted a Right of Privacy statute restricted to living persons similar to New York's Civil Rights Law §§ 50 and 51. While acknowledging that Elroy "Crazy Legs" Hirsch would have been protected under that statute in futuro, the court nonetheless found that the common law right of publicity already existed independently of the Right of Privacy Statute. Thus, Hirsch provides for a separate common law property right. Presumably Wisconsin would find the right to be descendible.

222. In Maritote v. Desilu Productions, 345 F.2d 418 (7th Cir.), cert. denied, 382 U.S. 883 (1965) (involving the T.V. dramatization of Al Capone's criminal activities), the Seventh Circuit concluded that there was no descendible right of publicity in Illinois.

223. New York appeared to be the leading state in the development of a common law fully-assignable (and presumably devisable) right of publicity separate from, and in addition to, the protection provided by New York Civil Rights Law sections 50 and 51. The decisions, beginning with the progenitor of the right of publicity, Haelan Laboratories v. Topps Chewing Gum, 202 F.2d 866 (2d Cir.1953), cert. denied, 346 U.S. 816, were mostly federal cases that, in the absence of New York authority, had to define New York's position on a common law right of publicity. See Groucho Marx Prods. v. Day and Night Co., 523 F. Supp. 485 (S.D.N.Y. 1981), rev'd on other grounds, 689 F.2d 317 (2d Cir. 1982) (the Second Circuit ruled that California law, not New York law, applied); Factors, Etc., Inc. v. Pro-Arts, Inc., 579 F.2d 215 (2d Cir. 1978), cert. denied, 440 U.S. 908 (1979); Hicks v. Casablanca Records; 464 F. Supp. 426 (S.D.N.Y. 1978); Price v. Hal Roach Studios, 400 F. Supp. 836 (S.D.N.Y. 1975) (deciding that the right of publicity was descendible).

In Lombardo v. Doyle, Dane & Bernbach, Inc., 396 N.Y.S.2d 661 (N.Y. App. Div. 1977), a New York court found a right in Guy Lombardo's persona, distinguishable from the New York Civil Rights Law. Thus, most lawyers and commentators initially concluded that New York recognized a descendible common law right of publicity separate and apart from the Civil Rights Law. But the New York Court of Appeals dropped a bombshell in Stephano v. News Group Publications, 474 N.E.2d 580 (N.Y. 1984) "Since the 'right of publicity' is encompassed under the Civil Rights Law as an aspect of the right of privacy, which, as noted, is exclusively statutory in this State, the plaintiff cannot claim an independent common-law right of publicity." Id. at 584. In a footnote, the court observed, "In view of the fact that the plaintiff is asserting his own right of publicity we need not consider whether the statute would also control assignment, transfer or descent of publicity rights . . . ." Id. at 584 n.2. (emphasis added)(citations omitted). Because the New York Civil Rights Law only prohibits the use of "the name, portrait or picture of any living person," it would appear that there is no descendible right of publicity in New York. N.Y. CIV. RIGHTS LAW § 50 (McKinney 1976) (emphasis added). In Pirone v. MacMillan the Second Circuit denied the heirs of Babe Ruth relief under sections 50 and 51 because "The right of privacy protection . . . is clearly limited to 'any living person.'" 894 F.2d 579, 585 (2d Cir. 1990). The court, in a footnote, commented that "The cryptic footnote 2 in the Stephano opinion . . . creates some grounds for uncertainty as to whether New York's statutory remedy preempts an heir's common law right of publicity claim, but we believe recognition of such a right will have to await either clarification from the Court of Appeals or action by the New York legislature, which has thus far declined to amend the statute to make a right of publicity descendible." Id. at 586 n.6. The New York legislature is currently considering Assembly Bill 681 and Senate Bill 285 which provide for a post-mortem right of publicity with a term of 50 years after death.

224. In Reeves v. United Artists, 572 F. Supp. 1231 (N.D. Ohio, 1983), aff'd, 765 F.2d 79 (6th Cir. 1985), the federal district court held that the right of publicity is not descendible in Ohio. The court reached its conclusion based on the Ohio Supreme Court's language in Zacchini v. Scripps-Howard Broadcasting Co., 351 N.E.2d 454 (Ohio 1976), rev'd on other grounds, 433 U.S. 562 (1977), which the court in Reeves interpreted as rejecting the notion of the right of publicity as a property right. Reeves, 572 F.Supp. at 1235.

225. In Sharman v. C. Schmidt & Sons, 216 F. Supp. 401 (E.D. Pa. 1963), the federal district court held that Pennsylvania recognized a right of publicity, but said that the right of publicity is "a fledgling branch of the tort of invasion of privacy," which may suggest that the right of publicity is a personal right rather than a property right and therefore not descendible. Id. at 407.

226. CAL.. CIV. CODE § 990 (West 1992).

227. NEV. REV. STAT. § 598.984(1) (1989).

228. OKLA. STAT. ANN. tit. XII § 1448 (West 1985).

229. TEX. PROP. CODE ANN. § 26.002 (West 1987).

230. FLA. STAT. ANN. § 540.08(c) (West 1988).

231. NEB. REV. STAT. § 20-208 (1983).

232. TENN. CODE ANN. § 47-25-1105(a) (1984).

233. VA. CODE ANN. § 8.01-40 (Michie 1984).

234. KY. REV. STAT. ANN. § 391-170 (Michie 1984).

235. 300 F.2d 256 (1st Cir. 1962).

236. Id. at 258.

237. 737 F. Supp. 826, 836-37 (S.D.N.Y. 1990) (noting that "the Civil Rights Law 'is to be strictly construed" (citing Lombardo v. Doyle, Dane & Bernbach, 396 N.Y.S.2d 661 (N.Y. App. Div. 1977)).

238. 849 F.2d 460 (9th Cir. 1988).

239. Id. at 463. However as discussed infra note 243 and accompanying text, Midler was more successful with a common law property theory.

240. 300 F.2d 256 (lst Cir. 1962).

241. Id. at 257 (quoting the complaint).

242. Id. at 259.

243. 849 F.2d 460 (9th Cir. 1988).

244. Id. at 463.

245. 978 F.2d 1093, 1102 (9th Cir. 1992), cert. denied, 113 S. Ct. 1047 (1993). In addition to his claim under California law, Waits was successful in his Lanham Act § 43(a) claim which was based on an unauthorized imitation of his distinctive voice in the advertisement.

246. 737 F.Supp. 826 (S.D.N.Y. 1990).

247. Id. at 838.

248. 435 F.2d 711 (9th Cir. 1970), cert. denied, 402 U.S. 906 (1971).

249. Id. at 712.

250. Id. at 716.

251. Id. at n.12.

252. 362 F. Supp. 343 (S.D.N.Y. 1973).

253. See Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964); Compco Corp. v. Day-Brite Lighting, 376 U.S. 234 (1964).

254. Booth, 362 F.Supp. at 349.

255. Voice-overs on commercials may also be instructive in attempting to establish criteria by which to measure distinctiveness, since the speaker is identified only by voice.

256. 472 N.Y.S.2d 254, 259 (N.Y. Sup. Ct. 1984), aff'd 488 N.Y.S.2d 943 (N.Y. App. Div. 1985).

257. 737 F. Supp. 826, 836 (S.D.N.Y. 1990); accord Allen v. National Video, 610 F. Supp. 612 (S.D.N.Y. 1985).

258. 447 F. Supp. 723, 726 (S.D.N.Y. 1978).

259. Onassis, 472 N.Y.S.2d at 259.

260. 103 N.E. 1108 (N.Y. 1913).

261. Id. at 1110.

262. 498 F.2d 821, 827 (9th Cir. 1974).

263. In White v. Samsung Electronics America, 971 F.2d 1395, (9th Cir. 1992), cert. denied 113 S. Ct. 2443 (1993), game-show hostess Vanna White claimed that a robot dressed in a wig, gown, and jewelry posed next to a Wheel of Fortune game show set was a use of her "likeness" in violation of California Civil Code section 3344. The Ninth Circuit disagreed, but held that White had a common law publicity right in her "identity." Id. at 1399. See also Carson v. Here's Johnny Portable Toilets, 698 F.2d 831, 835 (6th Cir. 1983) (Carson held to have publicity rights in the introduction "Here's Johnny").

264. CAL. CIV. CODE § 990(g) (West 1992).

265. NEV. REV. STAT. § 598.984(1) (1989).

266. TEX. PROP. CODE ANN. § 26.012(d) (West 1987).

267. OKLA. STAT. ANN. tit. XII § 1448(g) (West 1985).

268. TENN. CODE ANN. § 47-25-1104 (1984). For a discussion of the perpetual protection issue, see J. Graham Matherne, Desendibility of Publicity Rights in Tennessee, 53 TENN. L. REV. 753, 774-77 (1986).

269. NEB. REV. STAT. § 20-208 (1983).

270. Martin Luther King, Jr., Ctr. for Social Change v. American Heritage Prods., 296 S.E.2d 697 (Ga. 1982).

271. Estate of Presley v. Russen, 513 F. Supp. 1339 (D.N.J. 1981).

272. In a footnote the court stated "Since we are not directly faced with the issue of whether there should be a durational limit on the right of publicity after it is inherited, we will not decide this question. However, the court suggests that a length of time should be set by the New Jersey State legislature. The Federal Copyright Act, 17 U.S.C. § 302, 305 provides guidelines which may be informative in this situation." Id. at 1355 n. 10.

273. See Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). "We believe that New York courts would, as a matter of substantive interpretation, presume that the unsettled common law of another state would resemble New York's but that they would examine the law of the other jurisdiction and that of other states, as well as their own, in making an ultimate determination as to the likely future content of the other jurisdiction's law." Id. at 1003 (citations omitted).

274. NEV. REV. STAT. § 598.982 (1989). Nevada's Right of Publicity Statute provides that it applies to a "deceased person's name, voice, signature, photograph or likeness regardless of the person's domicile." Id. (emphasis added).

275. See Estate of Presley v. Russen, 513 F.Supp. 1339.

276. 135 N.Y.S.2d 361 (N.Y. Sup. Ct. 1954).

277. Id. at 364-65.

278. See J. Stephen Bingham, Comment, A Descendible Right of Publicity: Has the Time Finally Come for a National Standard?, 17 PEPP. L. REV. 933 (1990); Eugene Saloman, Jr., Note, The Right of Publicity Run Riot: The Case for a Federal Statute, 60 S. CAL. L. REV. 1179 (1987).

279. See Stephen F. Rohde, Dracula: Still Undead, CAL. LAW., Apr. 1985, at 51, 54.

280. CAL. CIV. CODE § 990(n) (West 1992) (emphasis added). If one adopts the policy that re-animation should be governed by post-mortem rights of publicity, then states with statutes similar to California must amend the exclusion of film from the post-mortem statute so as to exclude from the exclusion "re-animation" or, as Sam Goldwyn once so colorfully put it: "Include me out."

281. OKLA. STAT. ANN. tit. XII § 1448 (N) (West 1985).

282. TEX. PROP. CODE ANN. § 26.012(a)(1) (West 1987) (emphasis added).

283. NEV. REV. STAT. § 598.984 (2)(d) (1989) (emphasis added).

284. CAL. CIV. CODE § 990(a) (West 1992).

285. FLA. STAT. ANN. § 540.08 (West 1988).

286. KY. REV. STAT. ANN. § 391.170 (Michie 1984).

287. NEB. REV. STAT. § 20-202 (1983).

288. NEV. REV. STAT. § 598.982 (1989).

289. OKLA. STAT. ANN. tit. XII § 1448 (West 1985).

290. TENN. CODE ANN. § 47-25-1105 (1984).

291. TEX. PROP. CODE ANN. § 26.002 (West 1987).

292. Id. § 26.012.

293. VA. CODE ANN. § 8.01-40 (1984).

294. Carson v. Here's Johnny Portable Toilets, 698 F.2d 831 (6th Cir. 1983).

295. Commerce Union Bank v. Coors, 7 Media L. Rep. (BNA) 2204 (Tenn. Ch. App. 1981), aff'd on other grounds, No. 83-327-II (Tenn. Ct. App. June 20, 1987).

296. Lahr v. Adell Chemical Co., 300 F.2d 256 (1st Cir. 1962).

297. Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988).

298. Motschenbacher v. R. J. Reynolds Tobacco Co. 498 F.2d 821 (9th Cir. 1974).

299. Onassis v. Christian Dior-New York, 472 N.Y.S.2d 254 (N.Y. Sup. Ct. 1984) aff'd, 488 N.Y.S.2d 943 (N.Y. App. Div. 1985).

300. Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992), cert denied, 113 S. Ct. 1047 (1993)..

301. In United States v. Drebin, 557 F.2d 1316, 1332 (9th Cir. 1977), cert. denied, 436 U.S. 904 (1978), the court held that copies of motion pictures are goods or merchandise for purposes of 18 U.S.C. § 2314.

302. Beverley v. Choices Women's Med. Ctr., 532 N.Y.S.2d 400, 404 (N.Y. App. Div. 1988) ("The phrase 'for purposes of trade' is not susceptible to a ready definition.").

303. Brinkley v. Casablancas, 438 N.Y.S.2d 1004, 1008 (N.Y. App. Div. 1981); see Factors Etc., Inc. v. Pro Arts, Inc., 579 F.2d 215 (2d Cir. 1978), cert. denied, 440 U.S. 908 (1979). The court in Factors held that a poster featuring a picture of Elvis Presley bearing the legend "IN MEMORY" was "not privileged as celebrating a newsworthy event." Id. at 222; cf. Paulsen v. Personality Posters, 299 N.Y.S.2d 501 (N.Y. Sup. Ct. 1968) (poster of comedian Pat Paulsen, a mock presidential candidate, held newsworthy).

304. Hirsch v. S.C. Johnson & Son, Inc., 280 N.W.2d 129 (Wis. 1979).

305. Haelen Laboratories v. Topps Chewing Gum, 202 F.2d 866, 868 (2d Cir.), cert. denied, 346 U.S. 816 (1953).

306. Cepeda v. Swift and Co., 415 F.2d 1205, 1207 (8th Cir. 1969).

307. Martin Luther King, Jr., Ctr. for Social Change v. American Heritage Prods., 296 S.E.2d 697, 708 (Ga. 1982).

308. Frosch v. Grosset & Dunlap, Inc., 427 N.Y.S.2d 828, 829 (N.Y. App. Div. 1980); Rosemont Enters. v. Random House, 294 N.Y.S.2d 122, 128-29 (N.Y. Sup. Ct. 1968), aff'd, 301 N.Y.S.2d 948 (N.Y. App. Div. 1969).

309. Ann-Margret v. High Soc. Magazine, 498 F. Supp. 401, 406 (S.D.N.Y. 1980); Stephano v. News Group Publications, 474 N.E.2d 580, 584-86 (N.Y. 1984).

310. Ann-Margret, 498 F. Supp. 401. The court, while upholding the First Amendment protection of "High Society Celebrity Skin," was moved to observe that "it is questionable whether any 'readers' of this magazine ever read it." Id. at 405 n.8.

311. See Hicks v. Casablanca Records, 464 F. Supp. 426, 433 (S.D.N.Y. 1978); Donahue v. Warner Bros. Pictures Distrib. Corp., 272 P.2d 177 (Utah 1954).

312. See, e.g., Joplin Enters. v. Allen, No. C91-1035C (W.D. Wash. 1991).

313. See Ali v. Playgirl, Inc., 447 F. Supp. 723, 727 (S.D.N.Y. 1978); Grant v. Esquire, 367 F. Supp. 876, 880, 881 (S.D.N.Y. 1973); Eastwood v. Superior Court, 198 Cal. Rptr. 342 (Cal. Ct. App. 1983).

314. Midler v. Ford Motor Co., 849 F.2d 460, 462 (9th Cir. 1988), cert. denied, 112 S.Ct. 1513 (1992).

315. Id. (quoting Peter L. Felcher & Edward L. Rubin, Privacy, Publicity and the Portrayal of Real People by the Media, 88 YALE L.J. 1577, 1596 (1979)).

316. 367 F. Supp. 876.

317. Id. at 881.

318. 447 F. Supp. 723 (S.D.N.Y. 1978).

319. Id. at 727.

320. Id.

321. 149 Cal. App. 3d. 409 (1983).

322. Id. at 426.

323. Ann-Margret v. High Soc. Magazine, 498 F. Supp. 401, 406 (S.D.N.Y. 1980) ("[S]imple use in a magazine that is published and sold for profit does not constitute a use for advertising or trade sufficient to make out an actionable claim.")(citing Oma v. Hillman Periodicals, 118 N.Y.S.2d 720, 724 (N.Y. App. Div. 1953)); accord Stephano v. News Group Publications, 474 N.E.2d 580, 586 (N. Y. 1984).

324. "Neither slavery nor involuntary servitude, except as a punishment for crime whereof the party shall have been duly convicted, shall exist within the United States, or any place subject to their jurisdiction." U.S. Const. amend. XIII § 1.

325. (Universal 1955).

326. (Universal 1953).

327. (Warner Bros. 1946).

328. (Universal 1955).

329. Lumley v. Wagner, 1 De G. M. & G. 604, 619 (Ch. 1852) ("It is true, I have not the means of compelling [Johanna Wagner] to sing . . . .").

330. [B]ut she has no cause of complaint, if I compel her to abstain from the commission of an act which she has bound herself not to do . . . ." Id. Of more recent vintage are MCA Records v. Newton-John, 90 Cal. App. 3d 18 (1979), and King Records v. Brown, 252 N.Y.S.2d 988, 992 (N.Y. App. Div. 1964).

331. See Guyton v. Phillips, 606 F.2d 248, 250 (9th Cir. 1979), cert. denied, 445 U.S. 916 (1980) ("[T]he definition of a 'person' for purposes of protection of constitutional rights is limited only to a living human being.").

332. In her concurring opinion in Guglielmi v. Spelling-Goldberg Productions, 603 P.2d 454, 457 (Cal. 1979) (en banc), Chief Justice Bird said, "[F]ilm is a 'significant medium for the communication of ideas.' Whether exhibited in theaters or on television, a film is a medium which is protected by the constitutional guarantees of free expression . . . . A film is presumptively protected . . . and will forfeit that protection only if it falls within 'narrowly limited classes.'" Chief Justice Bird went on to state "Lugosi involved the use of Bela Lugosi's likeness in connection with the sale of such commercial products 'as plastic toys, pencil sharpeners, soap products, target games, candy dispensers and beverage stirring rods'. . . . These objects, unlike motion pictures, are not vehicles through which ideas and opinions are regularly disseminated." Id. at 463 (emphasis added) (footnote omitted) (citing Lugosi v. Universal Pictures, 603 P.2d 425 (Cal. 1979)).

333. 603 P.2d 425, 432-33 (Cal. 1979) (Mosk, J., concurring). While Judge Mosk's analysis focused on the rights an actor might have in his characterization, the distinction he drew between roles in which the actor's own identity disappears as he adopts the persona of the character (e.g., MacArthur, Patton, Moses) and those roles in which his identity either as himself or as his self-created character (Groucho, Red, Abbot & Costello) is useful in the analysis of whether a right of publicity should attach to a role in which the actor's identity is "masked" by the role and those in which he essentially plays himself.

334. 269 P. 544 (Cal. Dist. Ct. App. 1928).

335. 455 F. Supp. 252 (S.D.N.Y. 1978), aff'd, 603 F.2d 214 (2d Cir. 1979).

336. 513 F. Supp. 1339 (D.N.J. 1981).

337. Id. at 1379.

338. Id. at 1359.

339. 523 F. Supp. 485 (S.D.N.Y. 1981), rev'd on other grounds, 689 F.2d 317 (2d Cir. 1982) (applying New York rather than California law).

340. Id. at 491 (emphasis added).

341. Id. at 492 (emphasis added).

342. Price v. Worldvision Enters., 455 F. Supp. 252 (S.D.N.Y. 1978), aff'd, 603 F.2d 214 (2d Cir. 1979) .

343. Estate of Presley v. Russen, 513 F. Supp. 1339 (D.N.J. 1981).

344. Groucho Marx Prods., Inc. v. Day & Night Co.,689 F.2d 317 (2d Cir. 1982).

345. 89 N.E.2d 863 (N.Y. 1949).

346. Lugosi v. Universal Pictures, 603 P.2d 425, 446 (Cal. 1979) (Bird, J., dissenting) (citations omitted).

347. See CAL. CIV. CODE § 990(c) (West 1993); FLA. STAT. ANN. § 540.08(1)(c) (West 1988); KY. REV. STAT. ANN. § 391.170(1) (Michie 1984); NEB. REV. STAT. § 20-208 (1943); NEV. REV. STAT. § 598.984(2) (1991); OKLA. STAT. ANN. tit. 21 § 839.1 (1983); TENN. CODE ANN. § 47-25-1103 (1984); TEX. PROP. CODE ANN. § 26.002 (West 1987); VA. CODE ANN. § 8.01-40 (Michie 1977).

348. 17 U.S.C. § 106A (Supp. II 1991).

349. See CAL. CIV. CODE § 987 (West 1979); CONN. GEN. STAT. § 42-116s-116t (1988); LA. REV. STAT. ANN. §51:2151-2155 (West 1986); ME. REV. STAT. ANN. tit. 27, § 303 (1985); MASS. GEN. L. ch. 110, § 231-85S (1985); NEV. REV. STAT. § 598.970-76 (1989); N.J. REV. STAT. § 2A: 24A (1986); N.M. STAT. ANN. § 13-4B-1-4B-2 (Michie 1987); N.Y. ARTS & CULT. AFF. LAW § 14.03 (McKinney 1983); PA. STAT. ANN. tit. 73, § 2101-05 (1992); R.I. GEN. LAWS § 5-62-4-5-62-6 (1987).

350. CAL. LAB. CODE § 2855 (West 1989).

351. CAL. CIV. CODE § 990 (4)(g) (West 1988).

352. See supra notes 273-275 and accompanying text.

353. See, e.g., Factors v. Pro Arts, 652 F.2d 278 (2d Cir. 1981), cert. denied, 456 U.S. 927 (1982); see also Stanley Rothenberg et al., Choice of Law in Sound-Alike Cases, 14 ENT. L. REP. 3 (1993).

354. TENN. CODE ANN. § 47-25-1104(a) (1984).

355. See id. § 47-25-1104(b).

356. E.g., Five Platters, Inc. v. Purdie, 419 F. Supp. 372 (D. Md. 1976); In re Carson, 197 U.S.P.Q. 554 (Trademark Trial & App. Bd. 1977).

357. E.g., Carson v. Here's Johnny Portable Toilets, 698 F.2d 831 (6th Cir. 1983); Allen v. National Video, 610 F. Supp. 612 (S.D.N.Y. 1985); Estate of Presley v. Russen, 513 F. Supp. 1339 (D.N.J. 1981).

358. While state registration of a mark associated with an entertainer is possible, it is more likely the mark will be used interstate, at least if the entertainer is more than a local celebrity.

359. In Pirone v. MacMillan, 894 F.2d 579, 584 (2d Cir. 1990), the court stated, "The picture of [Babe] Ruth no more indicates origin than does the back cover's picture of Jackie Robinson. . . . [T]he photographs . . . indicate the contents of the calendar, not its source. The source of the publication is clearly indicated by the numerous, prominent references to MacMillan." Id.

360. Id. With respect to the right of publicity, Chief Justice Bird in her concurring opinion in Guglielmi v. Spelling-Goldberg Productions, 603 P.2d 454, 457 n. 6 (Cal. 1979), believed that the use of Valentino's name to advertise the made-for-television film "Legend of Valentino: A Romantic Fiction" did not constitute an infringement of Valentino's right of publicity. "While Valentino's name was allegedly used to advertise this particular film, this is not a case in which a celebrity's name is used to promote or endorse a collateral commercial product or is otherwise associated with a product or service in an advertisement." Id. (citations omitted). Chief Justice Bird went on to state that the use of Valentino's name and likeness in advertisements for the film was:

merely an adjunct to the exhibition of the film. It was not alleged that the advertisements promoted anything but the film. Having established that any interest in financial gain in producing the film did not affect the constitutional stature of respondents' undertaking, it is of no moment that the advertisement may have increased the profitability of the film. It would be illogical to allow respondents to exhibit the film but effectively preclude any advance discussion or promotion of their lawful enterprise. Since the use of Valentino's name and likeness in the film was not an actionable infringement of Valentino's right of publicity, the use of his identity in advertisements for the film is similarly not actionable.

Id. at 462. In Estate of Presley v. Russen, 513 F. Supp. 1339, 1363, n. 31 (D.N.J. 1981), the court noted that "an Elvis Presley performance, itself, cannot be a service mark. As it has been noted, ' . . . a service mark must not be the service itself, but rather a designation of its source.'" Id.

361. See Estate of Presley, 513 F.Supp. at 1339.

362. 894 F.2d 579 (2d Cir. 1990).

363. Id. at 583.

364. 513 F. Supp. 1339 (D.N.J. 1981)

365. Id. at 583. In Estate of Presley, the court stated:

The plaintiff asserts that the likeness and image of Elvis Presley serves as a service mark; however, the available evidence does not support such a broad position. Rather, the record only supports a conclusion that a picture or illustration of Elvis Presley dressed in one of his characteristic jumpsuits and holding a microphone in a singing pose is likely to be found to function as a service mark.

513 F. Supp. 1339, at 1363-64,. But cf. Prudhomme v. Procter & Gamble, 800 F. Supp. 390 (E.D. La. 1992) (denial of motion to dismiss claim of Plaintiff, a well-known chef, that his likeness had acquired a secondary meaning and therefore may be a protectable image under traditional trademark law).

366. Allen v. National Video, 610 F. Supp. 612, 625 (S.D.N.Y. 1985).

367. White v. Samsung Electronics America, 971 F.2d 1395, 1400 (9th Cir. 1992).

368. 498 F.2d 821 (9th Cir. 1974).

369. 698 F.2d 831 (6th Cir. 1983).

370. 472 N.Y.S.2d 254 (N.Y. Sup. Ct. 1984) aff'd, 488 N.Y.S.2d 943 (N.Y. App. Div. 1985).

371. 610 F. Supp. 612 (S.D.N.Y. 1985).

372. 737 F. Supp. 826 (S.D.N.Y. 1990).

373. 971 F.2d 1395 (9th Cir. 1992).

374. See, e.g., Tin Pan Apple, 737 F. Supp. 826; Allen, 610 F. Supp. 612; Onassis, 472 N.Y.S. 2d 254.

375. See Motschenbacher, 498 F.2d 821.

376. See Carson, 698 F. 2d 831.

377. See White, 971 F. 2d 1395.

378. White, 971 F. 2d 1395; Carson, 698 F.2d 831; Motschenbacher, 498 F.2d 821; Tin Pan Apple, 737 F. Supp. 826; Allen, 610 F. Supp. 612; Onassis, 472 N.Y.S. 2d 254.

379. 455 F. Supp. 252 (S.D.N.Y. 1978) (discussing Laurel & Hardy), aff'd, 603 F.2d 214 (2d Cir. 1979).

380. 513 F. Supp. 1339 (D.N.J. 1981) (discussing Elvis Presley).

381. 229 U.S.P.Q. 1015 (Cal. Super. 1986) (not officially published) (discussing "Beatlemania").

382. John Wright, Inc. v. Casper Corp., 419 F. Supp. 292, 324-25 (E.D. Pa. 1976), aff'd in part, rev'd in part sub nom. Donsco, Inc. v. Casper Corp., 587 F.2d 602 (3d Cir. 1978).

383. Estate of Presley , 513 F. Supp. at 1376.

384. 648 F.2d 602 (9th Cir. 1981).

385. Id. at 603 (quoting the district court).

386. Id.

387. Id. In Dallas Cowboy Cheerleaders v. Pussycat Cinema, 467 F. Supp. 366, 375 (S.D.N.Y.) aff'd, 604 F.2d 200 (2d Cir. 1979), the district court stated that "[i]t would appear obvious that Section 43(a) of the Lahnam Act applies to a motion picture. A misuse of trademarks or service marks, and deception or confusion of the kind prohibited by the statute, may occur in connection with the title of a movie, its advertising or in the content of the movie itself."

388. Smith, 648 F.2d at 608.

389. Id. at 607.

390. 214 F. 2d 649 (3d Cir. 1954).

391. Id. at 651.

392. "'Implied passing off' occurs when a firm uses a picture or sample of its competitor's product, impliedly misrepresenting that its product is the competitor's product." J. THOMAS MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION § 25.01, at 25-11 (1992).

393. Allen v. National Video, 610 F. Supp. 612, 630-31 (S.D.N.Y. 1985).

394. MCCARTHY , supra note 392, § 2.02, at 2-14.

395. 269 P. 544 (Cal. Dist. Ct. App. 1928).

396. Id. at 546.

397. RESTATEMENT (FIRST) OF TORTS § 711 (1938).

398. Id. § 741.

399. 513 F. Supp. 1339 (D.N.J. 1981).

400. Id. at 1375 (emphasis added).

401. Id.

402. This language which appears in most anti-dilution statutes is adopted from the Model State Trademark Act § 12.

403. CAL. BUS. & PROF. CODE § 14330 (West 1987).

404. N.Y. GEN. BUS. LAW § 368-D (1993).

405. TENN. CODE ANN. § 47-25-512 (1992). In addition 20 other states have adopted antidilution statutes based upon the Model State Trademark Act § 12. ALA. CODE § 8-12-17 (1992); ARK. CODE ANN § 4-71-113 (1991); CONN. GEN. STAT. ANN. § 35-11I(C) (1987); DEL. CODE ANN. TIT. 6, § 3313 (Supp. 1992); FLA. STAT. § 495.151 (1988); GA. CODE ANN.. § 10-1-451 (1993); ID. CODE § 48-512 (1977); ILL. ANN. STAT. CH. 140 PARA. 22 (Smith-Hurd 1986); IOWA CODE ANN. § 548.11 (1987); LA. REV. STAT. ANN. § 51:223.1 (West 198 4); ME. REV. STAT. ANN. TIT. 10, § 1530 (1980); MASS. GEN. LAWS ANN. CH. 110B, § 12 (West 1990); MO. ANN. § 417.061 (1990); MONT. CODE ANN. § 30-13-334 (1991); NEB. REV. STAT. § 87-122 (1987); N.H. REV. STAT. ANN. § 350-A:12 (1992); N.M. STAT. ANN. § 57-3-10 (Michie 1993); OR. REV. STAT. 647.107 (1987); PA. STAT. ANN. TIT. 54, § 1124 (1993); R. I. GEN. LAWS § 6-2-12 (1992); TEX. BUS. & COM. CODE ANN. § 16.29 (1992). The state of Washington provides injunctive relief to the owner of a famous mark if use by another causes dilution of the distinctive quality of the mark. WASH. REV. CODE ANN. § 19.77.160 (West 1993). Ohio appears to recognize an action for trademark dilution under its common law. See Ameritech, Inc. v. American Information Technologies Corp., 811 F.2d 960, 965 (6th Cir. 1987), Worthington Foods v. Kellogg Co., 732 F. Supp. 1417 (S.D. Ohio 1990).

406. Ameritech, Inc. v. American Info. Technologies, 811 F.2d 960, 965 (6th Cir. 1987).

407. 2 MCCARTHY, supra note 392, § 24.16, at 24-131.

408. Id. at 24-134.

409. Coca Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972) (the "Enjoy Cocaine" case).

410. American Express Co. v. Vibra Approved Lab. Corp., 10 U.S.P.Q. 2d 2006 (S.D.N.Y. 1989) (condom in fake AMEX card with phrase "Never Leave Home Without It"). But see L.L. Bean, Inc. v. Drake Publishers, 811 F.2d 26, (1st Cir. 1987), cert. denied 483 U.S. 1013.

411. Dallas Cowboy Cheerleaders v. Pussycat Cinema, Ltd., 467 F. Supp. 366 (S.D.N.Y.), aff'd, 604 F.2d 200 (2d Cir. 1979)); Pillsbury Co. v. Milky Way Productions, 215 U.S.P.Q. 124 (N.D. Ga. 1981) ("Poppin Fresh" and "Poppie Fresh"); Edgar Rice Burroughs, Inc. v. Manns Theaters, 195 U.S.P.Q. 159 (C. D. Cal. 1976) ("Tarzan" in X-rated film).

412. Steinway & Sons v. Demars & Friends, 210 U.S.P.Q. 954 (C.D. Cal. 1981) (STEINWAY Pianos v. STEIN-WAY clip-on beer can handles); General Electric Co. v. Alumpa Coal Co.; 205 U.S.P.Q. 1036 (D. Mass. 1979) (infringing product "Genital Electric" underwear).

413. See supra note 408 and accompanying text.

414. Reprinted in DONALD E. BIEDERMAN ET AL., LAW AND BUSINESS OF THE ENTERTAINMENT INDUSTRIES 244 (2d ed. Praeger 1992).

415. Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir. 1981) ("Godzilla" v. "Bagzilla"); New Kids on the Block v. News Am. Pub. 745 F. Supp. 1540 (C.D. Cal. 1990) aff'd 971 F.2d 302 (9th Cir. 1992) (telephone survey); Lucasfilm, Ltd. v. High Frontier, 622 F. Supp. 931 (D. Col. 1985) ("STAR WARS"). McCarthy has stated "In terms of traditional free speech policy, use of a mark in a purely communicative, non-trademark setting should be permitted . . . ." 3 MCCARTHY , supra note 392, § 31.37, at 31-207.

416. Lloyd Corp. v. Tanner, 407 U.S. 551, 567 (1972). See also Mutual of Omaha Ins. Co. v. Novak, 648 F. Supp. 905, 911 (D. Neb. 1986) ("There are numerous ways in which [defendant] may express his aversion to nuclear war without infringing upon a trademark in the process."), aff'd, 836 F.2d 397 (8th Cir. 1987), cert. denied, 488 U.S. 933 (1988).

417. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 206 (2d Cir. 1979); see also Pillsbury Co. v. Milky Way Productions, 215 U.S.P.Q. 124 (N.D. Ga. 1981); Gucci Shops v. R.H. Macy & Co., 446 F. Supp. 838 (S.D.N.Y. 1977); Edgar Rice Burroughs, Inc. v. Manns Theaters, 195 U.S.P.Q. 159 (C.D. Ca. 1976); Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972).

418. (Pussycat Cinema 1978). This film was the subject of the controversy in Dallas Cowboy Cheerleaders, 604 F.2d 200.

419. Music by Guaraldi, lyrics by Carol Rowe, copyright 1961. Guaraldi, a jazz musician, was perhaps more popularly known for his musical contribution to the "Charlie Brown" T.V. specials.

420. Martin Raeder, The Doctrine of Moral Right: A Study in the Law of Artists, Authors and Creators, 53 HARV. L. REV. 554, 575 (1940).

421. The Berne Convention Implementation Act (BCIA) states that adherence to Berne and passage of BCIA "do not expand or reduce any right of an author" with respect to attribution and integrity. BCIA § 3(b). Pub. L. No. 100-568, 102 Stat. 2853 (1988).

422. Berne Convention (Paris text), art. 6 bis (1).

423. The contributions of performers to the economic success of a production was recognized in Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 886 F.2d 1545 (9th Cir. 1989), cert. denied, 494 U.S. 1017 (1990). The Ninth Circuit, while disagreeing with the district court's ultimate apportionment of profits in the case, agreed that a portion of the profit of the infringing derivative work should be allocated to "the creative talent of the producer, and director, the talent of the performers, composers, choreographers, costume designers and others who participated in creating [the derivative work]" Id. at 1549 (emphasis added). France provides moral rights protection to actors in "videograms" under "Neighboring Rights." See infra note 468 and accompanying text.

424. 17 U.S.C. § 101(1) "Work of Visual Art" (1988). The definition is restricted to a single copy or no more than 200 copies signed (sculptures need not be "signed" but must bear, if not "signed", and "identifying mark") and consecutively numbered. Id.

425. Id. The definition is restricted to a single copy or no more than 200 copies signed and consecutively numbered.

426. Id. § 101 (A)(i) (1988).

427. Pub. L. No. 101-650, 104 Stat. 5128.

428. 17 U.S.C. § 106(A)(d) (Supp. II 1991). However, for works created before June 1, 1991, in which title to the work had not been transferred by the author as of June 1, 1991, the rights provided by § 106(A) shall last for as long as § 106 rights endure (e.g., life plus 50, 75 years, etc., as appropriate). See 2 NIMMER, supra note 49, § 8.21[B], 8-826 to 8-289.

429. To some degree, these state statutes have been pre-empted by the Visual Artists Rights Act of 1990. 17 U.S.C. §301 (f)(1),(2), (1988 & Supp.II 1993) (scope of pre-emption). It should be particularly noted that subsection (f)(2)(C) provides that the pre-emption does not annul or limit any rights or remedies under the common law or under statutes of any state with respect to "activities violating legal or equitable rights which extend beyond the life of the author." Id. (emphasis added). Consequently, the pre-emption provisions of section 301 will not present an obstacle to the application of state law to post-mortem exploitations of an actor through re-animation.

430. MASS. GEN. LAWS Ch. 110 § 231-85(S) (1993); see Vance Koven, Observations on the Massachusetts Art Preservation Act, 71 MASS. L. REV. 101 (1986).

431. N.M. STAT. ANN. § 13-4B-2 (Michie 1987).

432. See supra note 428 and accompanying text for the federal approach to post-mortem protection.

433. LA. REV. STAT. ANN. 51:2152(7) (West 1986).

434. NEV. REV. STAT. § 598.970(3) (1989).

435. N.J. STAT. § 2A:24A-3e (1993).

436. N.Y. ARTS & CULT. AFF. LAW § 14.03 (McKinney1983).

437. R.I. GEN. LAW § 5-62-2(e) (1987).

438. CAL. CIV. CODE § 987(g)(1)(West 1979).

439. CONN. GEN. STAT. § 42-116(s) -(t) (1988).

440. ME. REV. STAT. ANN. tit. 27, § 303 (West 1985).

441. PA. STAT. ANN. tit. 73, § 2102 (1986).

442. The reluctance of courts to rest a decision on moral rights when other grounds are available is illustrated by the language in Granz v. Harris, 198 F.2d 585 (2d Cir. 1952):

"Moral right" seems to indicate to some persons something not legal, something meta-legal. (b) The "moral right" doctrine, as applied in some countries, includes very extensive rights which courts in some American jurisdictions are not yet prepared to acknowledge; as a result, the phrase "moral right" seems to have frightened some of those courts to such an extent that they have unduly narrowed artists' rights. (c) Finally, it is not always an unmitigated boon to devise and employ such a common name. As we have said elsewhere: "A new name, a novel label expressive of a new generalization, can have immense consequences. Emerson said, 'Generalization is always a new influx of the divinity into the mind. Hence the thrill that attends it.' Confronted with disturbing variety, we often feel a tension from which a generalization, an abstraction, relieves us. It serves as a de-problemizer, aiding us to pass from an unstable, problematical, situation to a more stable one. It satisfies a craving, meets what Emerson called 'the insatiable demand of harmony in man,' a demand which translates itself into the so-called 'law' of 'the least effort.' But the solution of a problem through the invention of a new generalization is no final solution: The new generalization breeds new problems. Stressing a newly perceived likeness between many particular happenings which had theretofore seemed unlike, it may blind us to continuing unlikenesses. Hypnotized by a label which emphasizes identities, we may be led to ignore differences * * * For, with its stress on uniformity, an abstraction or generalization tends to become totalitarian in its attitude toward uniqueness."

 

Without rejecting the doctrine of "moral right," I think that, in the light of the foregoing, we should not rest decision on that doctrine where, as here, it is not necessary to do so.

Id. at 590-91 (citations omitted).

443. In Jaeger v. American International Pictures, 330 F. Supp. 274, 278, (S.D.N.Y. 1971), the court explicitly acknowledged the moral rights substitute approach of American courts:

Whether or not there is any square counterpart in American law of the "moral right" of artists assertedly recognized on the European Continent, there is enough in plaintiff's allegations to suggest that he may yet be able to prove a charge of unfair competition or otherwise tortious misbehavior in the distribution to the public of a film that bears his bane but at the same time severely garbles, distorts or mutilates his work, it is at least arguable that there is a claim under the Lanham Act. . . .Perhaps a similar species of wrong is defined and reachable under the law of New York and other jurisdictions where the film is being shown.

Id; (citations omitted) see also Gilliam v. American Broadcasting Co. 538 F.2d 14 (2d Cir. 1976); Edison v. VIVA International, Ltd., 421 N.Y.S.2d 203 (N.Y. App. Div. 1979); Society of Survivors of the Riga Ghetto, Inc., 535 N.Y.S.2d 670 (N.Y. Sup. Ct. 1988); Seroff v. Simon & Schuster, Inc., 162 N.Y.S.2d 770 (N.Y. Sup. Ct. 1957), aff'd, 210 N.Y.S.2d 479 (N.Y. App. Div. 1960). But cf. Classic Film Museum, Inc. v. Warner Bros., Inc., 453 F. Supp. 852 (D. Me. 1978), aff'd, 597 F.2d 13 (1st Cir. 1979).

444. 270 N.Y.S. 544 (N.Y. App. Div. 1934).

445. Id. at 547.

446. Carroll v. Paramount Pictures, 3 F.R.D. 95 (S.D.N.Y. 1942) (film); Clevenger v. Baker Voorhis & Co., 168 N.E.2d 643 (N.Y. 1960) (book). Ben-Oliel v. Press Pub. Co., 167 N.E. 432 (N.Y. 1929) (newspaper article). Less successful in a libel action was the plaintiff in Seroff v. Simon & Schuster, Inc., 162 N.Y.S.2d 770 (N.Y. Sup. Ct. 1957), aff'd, 210 N.Y.S.2d 479 (N.Y. App. Div. 1960) (translated book).

447. Girl Scouts of the United States of America v. Personality Posters Mfg. Co., 304 F.Supp. 1228 (S.D.N.Y. 1969); Hoxsey Cancer Clinic v. Folsom, 155 F.Supp. 376 (D. D. C. 1957); Kuhn v. Warner Bros. Pictures, 29 F.Supp. 800 (S.D.N.Y. 1939); Prucha v. Weiss, 197 A.2d 253 (Md. 1964), cert. denied, 377 U.S. 992. But see West Willow Realty Corp. v. Taylor, 198 N.Y.S.2d 196 (N.Y. Sup. Ct. 1960); Wolf v. Gold, 193 N.Y.S.2d 36 (N.Y. App. Div. 1959).

448. At present, ten states have libel of the dead statutes that make it a crime to defame a deceased person. COL. REV. STAT. ANN. § 18-13-105 (West 1990); GA. CODE ANN. § 16-11-40 (1991); IDAHO CODE § 18-4801 (1991); LA. REV. STAT. ANN. § 14:47 (West 1986); NEV. REV. STAT. § 200.510 (1989); WASH. REV. CODE ANN. § 9.58.010 (1988); KAN. STAT. ANN. § 21-4004 (1988); N.D. CENT. CODE § 12.1-15-01 (1985); OKLA. STAT. ANN. tit. 21, § 771 (West 1983); UTAH CODE ANN. § 76-9-501 (1986). It is a misdemeanor in six states. GA. CODE ANN. § 16-11-40 (1990), KAN. STAT. ANN. § 21-4004 (1988), NEV. REV. STAT. § 200.510 (1989), N.D. CENT. CODE § 12.1-15-01 (1985); UTAH CODE ANN. § 9.58.010 (1986) and WASH. REV. CODE ANN. § 9.58010 (West 1988). In threestates, one may be fined or imprisoned, or both. ID. CODE § 18-4802 (1991), LA. REV. STAT. ANN. § 14:47 (1986); OKLA. STAT. ANN. tit. 21, § 773 (1983). In Colorado, criminal libel is a class 6 felony. COLO. REV. STAT. ANN. § 18-13-105 (1990).

449. Presently Oklahoma, Texas, and Utah have civil statutes defining libel as to include that which tends to blacken the memory of one who is dead. OKLA. STAT. ANN. tit. 12, § 1441 (1980); TEX. CIV. PRAC. & REM. CODE ANN. § 73.001 (1986); UTAH CODE ANN. § 45-2-2 (1986). However, despite the plain language of these statutes, courts in Oklahoma and Texas have so far refused to recognize a right in favor of the relatives of the deceased actor. in Drake v. Park Newspapers of N.E. Oklahoma, Inc., 683 P.2d 1347 (Okla. 1984); Renfro Drug Co. v. Lawson, 160 S.W. 2d 246 (Commission of App. of Tex. 1942).

450. Restatement (Second) of Torts section 569 comment d (1977) states, in part, that "[T]he imputation of certain crimes is sufficient to support an action for slander without proof of special harm. To constitute slander actionable per se under the rule there stated, the crime imputed must be of a kind that involves moral turpitude or that is punishable in the first instance by confinement."

451. A number of jurisdictions make it a criminal offense to appear in an obscene film. IND. CODE ANN. § 35-49-3-2 (1983); N.C. GEN. STAT. § 14-190.5 (1985); OKLA. STAT. tit. 21 § 1040.8 (1983); S.C. CODE ANN. § 16-15-305 (1987); VA. CODE ANN. § 18.2-382 (1988).

452. Cf. Gardella v. Log Cabin Prod. Co., 89 F.2d 891, 896 (2d Cir. 1937). The court said:

If there was a deceptive imitation which amounted to an impersonation, an inferior performance would constitute an attack upon appellee's professional reputation. To have said of her, whether in writing or orally, that her abilities had suffered, or that she was an incompetent singer, or that she was no longer the able and talented entertainer the public knew her to have been, would constitute a clear injury to her reputation. To say it by self-revelation is the same thing and, if anything, is more effective.

Id.

453. Carroll v. Paramount Pictures, 3 F.R.D. 95 (S.D.N.Y. 1942). Legendary producer Earl Carroll brought an action for libel with respect to a motion picture "A Night at Earl Carroll's" which film contained the false legend that it had been produced by Carroll. The opinion in Carroll recited Carroll's complaint that the film "'was of poor quality and vastly inferior to the plays and motion pictures with which the plaintiff has been associated as producer in the past and reflects adversely on his name, standing and reputation.'" Id. at 96, see also Clevenger v. Baker Voorhis & Co., 168 N.E.2d 643 (N.Y. 1960) (claim of libel for false attribution of revision to author of original work where revision claimed to contain numerous errors).

454. Gilliam v. American Broadcasting Companies, 538 F.2d 14 (2d Cir. 1976); Follett v. New American Library, 497 F. Supp. 304 (S.D.N.Y. 1980). See Jaeger v. American International Pictures, 330 F. Supp. 274 (S.D.N.Y. 1971).

455. Jaeger, 330 F. Supp. 274; Granz v. Harris, 198 F.2d 585 (2d Cir. 1952); Prouty v. National Broadcasting Co., 26 F. Supp. 265 (D. Mass. 1939).

456. E.g., Allen v. Nat'l Video, Inc., 610 F.Supp. 612, 627 (S.D.N.Y. 1985); Estate of Presley v. Russen, 513 F.Supp. 1339, 1366 (D.N.J. 1981).

457. Manger v. Kree Inst. of Electrolysis, Inc., 233 F.2d 5 (2d Cir. 1956); Jaeger, 330 F.Supp. 274.

458. Society of Survivors of the Riga Ghetto, Inc. v. Huttenbach, 535 N.Y.S.2d 670 (N.Y. Sup. Ct. 1988); Edison v. VIVA International, Ltd., 421 N.Y.S.2d 203 (N.Y. App. Div. 1979).

Plaintiff Edison's moral right to protection has been subsumed in his contractual right to seek redress for the alleged mutilation of his article. Hence, even if the second cause is viewed as expressing a request for relief based on the plaintiff's 'moral right,' it must be dismissed for its failure to allege a breach of duty distinct and apart from a breach of contract.

Id. at 206; see also Gilliam, 538 F.2d 14.

459. Jaeger, 330 F. Supp. 274; Preminger v. Columbia Pictures Corp., 219 N.E.2d 431 (N.Y. 1966), aff'd, 269 N.Y.S.2d 913 (N.Y. App. Div. 1966); Seroff v. Simon & Schuster, 162 N.Y.S.2d 770 (N.Y. Sup. Ct. 1957), aff'd, 210 N.Y.S.2d 479 (N.Y. App. Div. 1960).

460. 219 N.E.2d 431 (N.Y. 1966).

461. 538 F.2d 14.

462. Id. at 23 (citing Preminger, 219 N.E.2d 431, as well as Statchborneo v. Arc. Music Corp., 357 F. Supp. 1393, 1405 (S.D.N.Y. 1973)); see also, Packard v. Fox Film Corp., 202 N.Y.S. 164 (N.Y. App. Div. 1923).

463. Gilliam, 538 F.2d at 23 (emphasis added).

464. Preminger v. Columbia Pictures Corp., 267 N.Y.S.2d 594, 603 (N.Y. Sup. Ct. 1966); aff'd, 269 N.Y.S.2d 913 (N.Y. App. Div. 1966), aff'd, 219 N.E.2d 431 (N.Y. 1966). An invitation similar to that in Preminger was extended to Gene Autry by a court that found no mutilation in minor T.V. editing. "As to the question of the appellee's emasculating the pictures, we have attempted to leave that question open, to be properly presented when and if the occasion arises . . . ." Autry v. Republic Prod., 213 F.2d 667, 670 (9th Cir.), cert. denied, 348 U.S. 858 (1954).

465. For a discussion of the decision in Huston, see Jane Ginsburg & Pierre Sirinelli, Authors and Exploitations in International Private Law: The French Supreme Court and the Huston Film Colorization Controversy, 15 COLUM.- VLA J.L. & ARTS 135 (1991).

466. Law on Authors' Rights and on The Rights of Performers, Producers of Phonograms and Videograms and Audiovisual Communications Enterprises, Title II, Neighboring Rights, Article 17.

467. U.S. const. Art. 1, § 8, cl. 8.

468. 603 P.2d 425, 447 (Cal. 1979).

469. 513 F. Supp. 1339, 1355 n. 10 (D.N.J. 1981).