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Darlene Love v. Google Are Publicity Rights Needed in Addition to Master & Synchronization Licenses?

By David Jacob
Marc Jacobson, P.C.

A recent lawsuit filed on behalf of Darlene Love against Google and its ad agency, 72 & Sunny, may have far-reaching implications on long-standing music licensing practices. When ad agencies or brands want to use a song in a commercial, U.S. copyright law requires them to obtain a master use license (from the label) and a synchronization license (from the publisher). These licenses allow the reproduction of the master recording and musical composition. However, in Love's lawsuit, there is no copyright infringement claim. She does not allege that Google or its ad agency failed to obtain these licenses (it should be noted that 72 & Sunny claims that it was not involved in the production or licensing of the advertisement that is the basis of the lawsuit). Instead, she claims a violation of her right of publicity under California law. Therefore the issue arises as to whether ad agencies and brands need additional consent from artists, even if they already have master use and licenses from the applicable label and publisher.

Love's lawsuit alleges that the defendants infringed on her right of publicity under California common law. The California courts have developed the following four-step test (White v. Samsung, 971 F.2d 1395, 1397 (9th Cir. 1992)), in which Love must allege:

1. The defendant used plaintiff's "identity";
2. Defendant appropriated plaintiff's name or likeness to defendant's advantage, commercially or otherwise;
3. Lack of consent; and
4. Resulting injury.

For the sake of discussion, let's assume the use of the licensed song satisfies step 1 & 2, and that Love was injured by not having an approval right or not being paid a fee for her right of publicity. If that is the case, then the issue may come down to whether the master use license was sufficient to grant this permission. This may be a question of fact that is dependent on the terms of Love's original recording agreement.

The recording at the center of the dispute is "It's a Marshmallow World" recorded by Love in 1963 for the album, A Christmas Gift for You From Phil Spector. Most major recording agreements will include some clause clarifying that the label has the right to use the artist's name and likeness in connection with the promotion and sale of the works created under such agreement. Therefore, the question may come down to whether Love's original recording agreement included a broad enough provision to cover the use of the artist's voice for commercial purposes in connection with the work. If so, then its reasonable to assume that the record label can provide the necessary consent, and the artist's permission is not needed to further exploit the work. If the recording agreement is silent on the matter, Love may have a stronger argument.

Another wrinkle in this dispute is Love's statement that she "and virtually every successful recording artist records with labels which are signatories to the AFTRA collective bargaining agreement..." Perhaps Love's main complaint may be that the AFTRA Phono Code did not require the label to get artist approval right before it can license the work for a commercial. Most modern publishing agreements and recording agreements will require the artist's written approval for certain commercial uses. If an artist approves such a use with its label or publisher, or if the recording agreement explicitly grants the label the artist's right of publicity in connection with sales or licenses of the Work, it would be very difficult for that artist to claim there was an infringement on his or her right of publicity. Similarly, the decision may rest on whether the AFTRA Phono Code includes any provisions regarding the use of any artist's name or likeness in connection with the promotion or sale of a work.

Another complicated issue briefly mentioned in an article by Eriq Gardner in The Hollywood Reporter (http://www.hollywoodreporter.com/thr-esq/darlene-love-sues-google-using-857220) is whether federal law should preempt the state law claim. In most circumstances, federal copyright law will preempt a right of publicity claim if the allegedly infringing use is based on the use of a sound recording. The use of a sound recording alone, without appropriating any other aspect of that individual's identity, should be a claim based in copyright law. However, in Gardner's article, Love's attorney argue: "This is a pre-1972 recording and under 17 USC ยง 301(c), there is no preemption of state law until 2067." This argument may limit the scope of the issue only to the use of pre-1972 recordings. If the claim were based on the use of a properly licensed recording from 1972 or after, the claim would certainly fail and be preempted by federal copyright laws.

Regardless of how this lawsuit shakes out, labels would be wise to ensure that their contracts include the right to use the artist's name, voice and likeness in connection with all sales or licenses of the work. Similarly, ad agencies and brands should ensure that these rights are included in their master use licenses, along with an indemnification provision against any third party claims, including but not limited to copyright infringement and right of publicity claims.

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