The "Governator" Bobblehead
An Exploration of the Right of Publicity in California — an interview with William T. Gallagher of Golden Gate University School of Law

Alica Del Valle - University of California, Davis, School of Law
Vol. 5
May 2005

Until March of 2005, William Gallagher was a partner in the litigation group at Townsend and Townsend and Crew LLP in its San Francisco office, where he specialized in intellectual property litigation and represented some of the world's leading technology companies in both state and federal courts and before administrative agencies such as the Trademark Trial and Appeal Board and the International Trade Commission.

It was at Townsend and Townsend that Mr. Gallagher served as lead defense counsel for the Arnold Schwarzenegger bobblehead doll manufacturer, Ohio Discount Merchandise, in a case of first impression involving California's statutory and common law rights of publicity. In this litigation, Mr. Gallagher defended the company's right to sell bobblehead dolls containing an unauthorized image of the former Hollywood action hero and the current Governor of California, Arnold Schwarzenegger. Mr. Gallagher defended the company against the plaintiff's claim that the bobblehead violated Schwarzenegger's rights of publicity. The lawsuit ultimately settled after defendants removed the case to federal court.

Mr. Gallagher will be a visiting associate professor of law at the Golden Gate University School of Law in 2005-2006, where he currently teaches courses on intellectual property litigation and intellectual property law and policy. He is also a Lecturer at Santa Clara University, where he teaches in the undergraduate Business, Technology, and Society program, and at Santa Clara University School of Law, where he teaches intellectual property law and legal ethics. Mr. Gallagher received his J.D. from UCLA School of law; his Ph.D. from the University of California, Berkeley (Jurisprudence and Social Policy Program); his M.A. from the University of Chicago; and his B.A. from the University of California, Berkeley.

Mr. Gallagher has published numerous articles and has spoken at a number of professional conferences on intellectual property issues. He is also the author of a number of articles on intellectual property law and professional ethics, which have appeared in the Pepperdine Law Review, Law and Social Inquiry, and the Santa Clara Law Review. He is co-founder of the collaborative research network on intellectual property law and policy for the Law and Society Association. His edited book, International Essays in Law and Society: Intellectual Property, is forthcoming from Dartmouth/Ashgate Press in 2005.

Q. Last year, there was worldwide media attention directed to litigation initiated by the company that licenses the image of Governor Arnold Schwarzenegger against a small Ohio company that sold a series of "bobblehead" dolls of politicians-including one depicting Schwarzenegger dressed in a suit and brandishing an assault weapon with a bandolier of bullets. The Governor claimed this unauthorized doll violated his "right of publicity" under California law. As the lead defense counsel in that case, can you discuss what were the main legal issues raised in the case and why they were important?

A. This was actually a very significant case-one of first impression. It was the first time a politician in office sued under the right of publicity laws to stop the sale of a product that incorporated that politician's image or likeness. Other politicians have threatened such litigation over the years, but have been reluctant to actually file a lawsuit while they were in office. The case raised an important issue about the proper scope and limits of the right of publicity versus the First Amendment right of free speech, particularly since it dealt with the somewhat rarified example of a Hollywood star turned governor. The case also raised the specter that a politician was using the right of publicity law to censor an image that he disliked, which is troubling in a democratic society.

Q. You say that the "Governator" bobblehead case illustrated the conflict that exists between the right of publicity and the First Amendment. How is that conflict unique in California jurisprudence?

A. The conflict is not really unique to California law since any state that recognizes this rather unusual type of "intellectual property" will limit the right when First Amendment free speech principles are unduly encroached upon. But how the California Supreme Court has stated its test for determining when free speech rights trump any right of publicity is unique. The Supreme Court has stated twice in the past four years that California's right of publicity, both under state statute and common law, does not extend to uses of a person's image or likeness that are "transformative." What exactly will be considered "transformative" under these two cases, however, is not entirely clear. In one of these cases, the Supreme Court found that an artist's sale of T-shirts containing a primarily representational image of the long-dead Three Stooges was not sufficiently transformative for a First Amendment defense to apply.[1] In the second case, the same Court held that a rather fantastic depiction in comic books of two blues musicians-who were drawn as half-man, half-worm, albinos who ate pig brains-was transformative and therefore did not violate the California right of publicity of these musicians.[2] The trick now, of course, is to determine when a case will fall into the transformative category. In the Schwarzenegger bobblehead case, we felt very strongly that the caricature, parody, or satire that the doll evoked made it clearly transformative.

Q. In essence, the right of publicity is the right of a person, celebrity or not, to preclude another from commercially benefiting from using her image or likeness without consent. How should the courts reconcile the property-like right to control the use of one's personal image or likeness and the public's right to free speech?

A. That's a complicated question, but a very good one. I personally think that the law in this area has tended to over-protect what was initially a very limited intellectual property right. Over the past few decades, the law has expanded the scope of the right of publicity. For instance, in the 9th Circuit, Vanna White successfully sued a manufacturer whose advertisement had an image of a robot with a blond wig pointing to a board of letters.[3] The robot merely reminded viewers that Vanna White was being alluded to even though she was not depicted in the ad herself. The implication of this case is that the right of publicity in California may extend far beyond the use of one's picture or name and include instances where one merely refers to or brings to mind someone else, usually a celebrity. Coming back to the Schwarzenegger bobblehead doll case, I think one way to balance the right of publicity and the right of free speech is to carve out a clear and strong safe haven for uses of a celebrity image that are clearly works of parody or satire. Maybe the California Supreme Court's "transformative" test implicitly does this, as I was prepared to argue in court.

Q. Despite its controversial nature, how would you respond to the contention that the right of publicity, especially in California, is becoming an intellectual property right equivalent to trademarks, copyrights, and patents?

A. Yes, absolutely. It is an unusual type of intellectual property, but it is equivalent to these other intellectual property rights in the sense that it "propertizes" an intangible-for instance, one's likeness or image. And, the comparison is also equivalent in that courts have extended the scope of all of these intellectual property rights over the past several decades.

Q. Do California federal courts also apply the "transformative test" in determining whether a defendant's expression should be afforded First Amendment protection against a right of publicity claim?

A. Not necessarily. In fact, the 9th Circuit decided a right of publicity case just months after the Comedy III Productions case, holding in Hoffman v. Capital Cities/ABC, Inc.[4] that the unauthorized use of an altered photo of actor Dustin Hoffman in a magazine article did not violate his right of publicity. The Hoffman court cited the Comedy III case, but did not analyze that case or apply the transformative test so it is not clear at all that the federal courts will choose to apply the test set forth by the California Supreme Court. They may decide they do not need to defer to the California Supreme Court's determination of when the First Amendment trumps the California right of publicity by characterizing this as not primarily a state law issue. I think the federal courts could-and should-apply the transformative test, but I can't predict they will do so in the future.

Q. What are the significant differences between California's "transformative test" and the tests used by the federal courts to determine when a First Amendment-based defense to a right of publicity claim will apply?

A. One potentially big distinction is that some federal courts appear to apply a test that asks whether the use of a celebrity's likeness or image is "commercial" or not, and suggest there is lesser First Amendment protection for such uses. The "transformative" test does not analyze the issue that way. It expressly rejects distinguishing between commercial or noncommercial uses and focuses on whether the relevant use is transformative. So, potentially, depending on how one reads the case law, some federal court decisions could limit free speech protection in right of publicity cases to noncommercial uses or to uses that are in what Professor Tom McCarthy calls "traditional" media of expression-which would not cover T-shirts, dolls, or the like. I disagree with that reading of the law. And, more importantly, some federal courts do too, such as the recent 6th Circuit decision upholding the right of an artist to use the image of golfer Tiger Woods on a commemorative plate that was sold to honor past and current golf champions.[5]

Q. Despite the conflict that exists between the state and federal courts as to what standard to apply to right of publicity claims, do you think that the outcome would be different if a case similar to the bobblehead case was brought in a jurisdiction outside California?

A. Sure, the courts on these types of cases are all over the place. This is not a fully-settled area of intellectual property law at all. A good lawyer will have to be savvy about the different ways that rights of publicity operate in different jurisdictions. But that's part of the fun of being an intellectual property lawyer, right?

Q. Considering the inconsistencies that exist from one jurisdiction to the next in deciding whether First Amendment protection should be afforded to a defendant's expression in right of publicity claims, do you believe that it would be feasible and beneficial to create a national standard for treating these cases?

A. I'm not convinced that would make sense. Even if there were a federal right of publicity law that applied to all fifty states, you'd still have different circuits interpreting it differently, just as with any other body of federal law. I don't know if a federal standard would help make the scope of the right of publicity any clearer.

Q. Mr. Gallagher, thank you for your time.

A. That's it? Is that all? You've made this interview too easy. By the way, do you have the right to use my picture in this article or to post a picture of the Schwarzenegger bobblehead doll? I won't sue, but I can't vouch for Governor Schwarzenegger.

[1] Comedy III Prod. v. Gary Sadeup, 25 Cal. 4th 397 (Cal. 2002).

[2] Winter v. DC Comics, 30 Cal. 4th 881 (Cal. 2003).

[3] White v. Samsung Elec. Amer. Inc., 989 F.2d 1512 (9th Cir. 1993).

[4] Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001).

[5] ETW Corp. v. Jireh Pub. Inc., 332 F.3d 915 (6th Cir. 2003).

5 U.C. Davis Bus. L.J. 21 (2005)
Copr. © Alica Del Valle, 2005. All Rights Reserved.