In a highly anticipated right-of-publicity case, the California Court of Appeals ruled that the First Amendment provides a complete defense for misappropriation of a celebrity’s likeness and visual image where the defendant’s use is transformative. To suffice as transformative, a work merely must add "new expression," but the work need not convey any "meaning or message." Kirby v. Sega of America, Inc., Case No. B183820 (Cal. Ct. App., Oct. 25, 2006) (Boland, J.).
Appellant Kierin Kirby, who also goes by the moniker "Lady Kier," is best known for her role as the lead singer of the early 1990’s "retro-funk-dance" musical group Deee-Lite. The band’s single Groove Is In The Heart and its music video received extensive play on the radio and MTV. Kirby claimed that as Lady Kier she developed a "unique public identity," resulting from her "signature costumes and lyrical expressions."
Sega is the distributor of a video game entitled "Space Channel 5" or SC5. The main character in the game is a female reporter in the 25th century named Ulala. The Ulala character appeared to look and dress similar to Lady Kier, and allegedly even used the same "ooh la la" catch phrase. In July 2000, Kirby was contacted about the use of Groove Is In The Heart in connection with the launch of SC5 in England. Kirby declined the request.
In April 2003, Kirby filed suit against Sega, alleging common law infringement of the right of publicity, misappropriation of likeness, violation of the Lanham Act, unfair competition, interference with prospective business advantage and unjust enrichment. Sega moved for summary judgment, asserting that the "First Amendment provided a complete defense" to Kirby’s claims. The trial court applied the "transformative test," which evaluates whether the "celebrity likeness is one the ‘raw materials’ from which an original work is synthesized, or whether the depiction or imitation of the celebrity is the very sum and substance of the work in question." Thus, although material issues of fact existed as to whether Kirby’s likeness or identity was appropriated, the trial court granted Sega’s motion, finding "all claims constitutionally foreclosed." Kirby appealed.
On appeal, Sega again argued that the First Amendment and the California Constitution afforded a complete defense to misappropriation. The Court agreed and upheld the trial court’s application of the First Amendment defense to Kirby’s claims, reasoning that Ulala contained "sufficient [new] expressive content to constitute a ‘transformative work’ under the test articulated by the [California] Supreme Court." In short, Ulala was not a mere imitation of Kirby. Notwithstanding the added expression, Kirby argued that the game should not be afforded protection because it lacked any "element of caricature, lampoon, or parody." In rejecting Kirby’s argument, the Court found that the pivotal issue is whether the public figure’s likeness is transformed through new expression, not the "form of the literary expression." Because the Court found the video game to be protected speech, Kirby’s state common law and statutory claims and her Lanham Act claim also failed.
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