West himself is quite familiar with this type of claim. In January 2014, he sued over cryptocurrency known as “Coinye West,” alleging defendants were making a false association. In October 2015, he joined other stars including Beyonce, Jay Z, Rihanna and Pharrell Williams in a lawsuit against the French fashion house ElevenParis over names and images on T-shirts, tank tops, sweatshirts, hats, backpacks and cellphone cases. In that lawsuit, he objected to products bearing the slogan, “Kanye Is My Homie.” Both cases settled before any big opinion or judgment.
Those suing West for allegedly violating the Lanham Act would have to prove that consumers were indeed confused, which would probably mean the hiring of a pollster to conduct a survey.
West would have several potential defenses. For example, if he or his reps had discussions with, say, Taylor Swift, before he used her name in “Famous” there could be an argument that he was essentially licensed. That might be a stretch, but the law also allows for various fair uses of someone else’s identifiers, as famously articulated in a 1992 appellate decision concerning the (then) boy band New Kids on the Block, who unsuccessfully sued a newspaper publisher for asking its readers which member was the sexiest. The law also provides room for parody. West could argue that there’s no likelihood of confusion because viewers of the “Famous” video would hardly take seriously a video of Bill Cosby, Donald Trump and the suing celebrity in bed together.
West would probably have to contend with other claims in the lawsuit as well; he could face everything from an invasion-of-privacy cause of action to libel. If a lawsuit comes, he’d almost surely face the allegation of violating the star’s right of publicity. Whereas the Lanham Act is a federal claim, these claims arise under state law. These days, most states have statutes guarding against intrusion of one’s privacy and prohibiting unauthorized commercial use of one’s image or likeness, although they vary across the country. Some states, like New York, only protect misuse of one’s identity in advertising (a music video probably doesn’t count), while other states are more generous to celebrities. Take California, where West’s wife, Kim Kardashian, once sued Gap Inc. for $20 million for hiring a similar-looking brunette reality star to pitch Old Navy. Or West’s home state of Illinois, as best demonstrated by the $8.9 million trial victory that Michael Jordan secured last year after a supermarket chain congratulated him in the pages of Sports Illustrated upon his induction into the Basketball Hall of Fame.
Then again, most state publicity-right statutes have an exception for using a person’s identity in a work of art. That leads to the fundamental question a lawsuit over “Famous” would explore: Is the video exploitation, or is it constitutionally protected speech?
This has been an extremely hot area of late, almost to the extent that one wonders if the creators of “Famous” had familiarized themselves with past legal controversies and specifically created the video to provoke a courtroom showdown on this topic. Interpretation of what’s permissible has been shaped by disputes involving Wheel of Fortune hostess Vanna White depicted as a robot in a blond wig in a TV commercial; the images of the Three Stooges in artistic lithograph T-shirts; and Gwen Stefani’s avatar singing about sleeping with prostitutes in the video game Band Hero.
The conclusion of some appellate circuits in the country — although not all, yet — is to direct judges to test whether a defendant is synthesizing the celebrity likeness into a work that adds some sort of transformative artistic meaning, or “whether the depiction or imitation of a celebrity is the very sum and substance of the work in question.”
It’s not settled, though, that a judge would be looking at “Famous” through this exact prism. That might very well depend on what the Supreme Court does in the coming months. At present, the NCAA is involved in a legal battle with amateur athletes who are insisting upon compensation for use of their likenesses in video games and on television. The collegiate league is inviting the high court to tackle the issue of whether the First Amendment provides cover for a realistic portrayal of a person in an expressive work. The NCAA suggests that courts shouldn’t be analyzing whether there’s transformative meaning in celebrity depictions, but rather whether use of someone’s likeness is purposely misleading. In other words, it wants these claims to be treated like ones made under the Lanham Act.
Some, like the Screen Actors Guild, have warned of the consequences of this approach. In another case involving athlete likenesses in video games, the actors union submitted an amicus brief that warns of those who might disguise their works under the veil of artistic expression. A SAG attorney wrote that “individuals with editing software could easily transpose images of celebrities with those of unclothed models and make them available on the Internet.”
The fact that all these celebrities were depicted as nude may surely be the X factor in a lawsuit over “Famous,” and could even tip the scales. Instead of 50 judges saying yes, it’s legally permissible, and 50 judges saying no, we might be looking at a few more in the nay column precisely because of some prudish tendencies.
Still, there are reasons why celebrities might be scared away from suing. Because prior restraints of speech are frowned upon, judges would probably not issue a preliminary injunction, meaning that regardless of litigation, the video they would be aiming to suppress could be online for years as the dispute plays out in court. In the meantime, there would be the risk of publicity, both on the front end as the filing of the lawsuit could incite curiosity-seekers to view it — assuming they are among the few interested people who hadn’t seen it already — as well as the back end, as any lawsuit would trigger what probably would be a brutal discovery process. Those suing may have to hand over endorsement deals and submit to depositions to show the true value of their fame. Someone like Ray J — who has run into his own legal trouble before — might see their imprimatur attacked in court as essentially worthless. After Kardashian, for instance, sued Gap, the retailer demanded financial records about her clothing deals and information about her “reputation as a singer and dancer.”
Plus, who knows what skeletons could come out of the closet? For example, even though Hulk Hogan got a $140 million judgment against Gawker after the news site published an excerpt of his sex tape, he also had to endure the embarrassment and ruined contracts that occurred after racist comments on that sex tape were made public.
Anyone suing West over “Famous” should prepare for an intensely high-profile battle over the boundary between art and commerce that will draw some discussion of what it’s like to be a universally recognizable face who is ashamed to be publicly, if fictionally, naked. A lawsuit aiming to send a message to stop exploitation would invite scrutiny from all ends and provide no shortage of news stories and analysis — which may be what West wants in the first place — and could test the limits of what any legal adversary would be willing to provide and endure.
Let’s call it the price of being famous.
