De Niro and Pacino Settle Right of Publicity and False Advertising Claims Against Watch Maker and Film D
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158 COMMENTS: [2010] Ent. L.R. which then assigned certain rights and obligations to Overture. ‘Not On My Watch’—De The acting agreements for each explicitly prohibited any use of his name, voice or likeness in any commercial tie-in without Niro and Pacino Settle prior written consent. Both actors claimed that it was common knowledge in the entertainment industry that their consent was Right of Publicity and highly unlikely to be given and that Pacino has never, in fact, commercially endorsed any product or service in the United States. False Advertising Claims According to the complaint, Overture nonetheless entered into an agreement with Tutima for a commercial tie-in, which Against Watch Maker and would include the use of De Niro and Pacino’s names, voices and likenesses to promote the watch brand. The actors alleged Film Distributor that Overture and Tutima intentionally failed to seek their written consent in order to conceal such use, knowing that such consent would not be given. Of course, the complaint indicated that both BARRY M. BENJAMIN actors would have refused to grant consent had they been asked. KILPATRICK STOCKTON LLP* One of the print advertisements at issue, pictured below, features the actual poster used to promote the movie, which included each actor’s face and name directly above a Tutima ANDREW I. GERBER watch. The Tutima brand, watch name and watch image are KILPATRICK STOCKTON LLP featured prominently. [Keywords to Follow] Introduction Actors Robert De Niro and Al Pacino recently settled a right of publicity and false advertising suit against watchmaker Tutima USA Inc. and movie distributor Overture Films, LLC. The suit, filed on March 4, 2009 in United States District Court in the Southern District of New York, accused Tutima and Overture of using the actors’ names and likenesses without their permission in ‘‘tie-in’’ advertisements for Tutima watches. The offending images were promotional stills from the movie Righteous Kill,acrimedrama about two veteran New York City detectives tracking a vigilante serial killer, in which both actors appeared. The case highlights the legal complexities of funding, producing and marketing a big- budget movie in today’s difficult economic marketplace, while the settlement leaves unanswered questions around what constitutes a celebrity endorsement or false advertising. A ‘‘watched’’ pot boils De Niro and Pacino’s complaint against Tutima and Overture included false advertising and breach of contract claims, together with claims under New York State’s right of publicity and right De Niro and Pacino were also featured in online promotions of privacy laws. According to their complaint, both De Niro for the watchmaker, both on the movie website and the Tutima and Pacino executed acting agreements with Millennium Films, website. These promotions, alleged the complaint, implied an affiliation and endorsement of the watch brand by the actors when * Barry M. Benjamin is a partner in the New York office of none existed. According to the complaint, De Niro and Pacino, Kilpatrick Stockton and chairs the firm’s advertising, promotions, and media group. Andrew I. Gerber is an associate in the firm’s New York upon learning of the advertising tie-in campaign, issued cease office. and desist letters to the defendants. The defendants thereafter [2010] Ent. L.R., ISSUE 4 2010 THOMSON REUTERS (LEGAL) LIMITED AND CONTRIBUTORS COMMENTS: [2010] Ent. L.R. 159 failed to remove the offending advertisements, which prompted Settlement and aftermath—unanswered the lawsuit. questions Thepartiessettled all claimsand dismissed thelawsuitin December The right of publicity 2009. The terms of the settlement were not disclosed. Because The right of publicity, in essence, gives celebrities the right to the case settled, the substantial factual dispute over whether control the commercial exploitation of their fame or identity, permission was in fact granted, and if so to what extent, will and is inherently a tort claim that can be viewed either as an not be publicly resolved. In addition, several interesting right of invasion of privacy or as a misappropriation. Unlike copyright, publicity issues raised will not receive judicial scrutiny. which under US law is based on federal law under the Constitution, The Tutima advertisement incorporating the images of De publicity rights are state based, with many states providing their Niro and Pacino was a reproduction of the poster advertising the own statutory or case law based right. Unfortunately, not all state movie Righteous Kill. It may be reasonable to think that a movie publicity right laws have exactly the same elements, although producer that secures the rights to make and produce a movie, certain basic elements remain constant—a right of publicity claim the rights to the actors appearing in the film, the right to create a exists for the use of a person’s identity, without the person’s movie poster using the actors’ images and the right to negotiate consent, with an intent to obtain a commercial advantage. product placement and other ‘‘tie-in’’ deals around the movie’s California and New York are two states that, not surprisingly production, would also have the right to include the movie poster given the entertainment industry’s presence, provide celebrities in an advertisement for a tie-in partner. Apparently, however, that with an explicit statutory right of publicity. Notably, the right is is not so reasonable a conclusion. not limited to a person’s name or likeness—it covers practically What also remains unclear is to what extent consumers who anything that evokes a celebrity’s identity, including look-alikes, view what is clearly a movie poster advertising the movie, included sound-alikes, nicknames and even a phrase associated with a within an advertisement for a tie-in partner’s product, would celebrity. think that the actors appearing in the movie poster also endorse the pictured products. Presumably the potential for exactly that implied endorsement was the prime motivation for Tutima to Response—the plot thickens include the movie poster in the advertisements. However, given the ubiquity of product placement and sponsorship deals, it is not In response to the De Niro/Pacino complaint, Tutima filed cross- so clear that simply because an actor appears in an ad for a movie claims against Overture and a third party complaint against the that is used to advertise a sponsor’s or tie-in partner’s product, assignor, Millennium Films. Tutima alleged that Millennium had consumers would think that a connection with or endorsement by agreed to a two- to three-second product placement in the film the actor (as opposed to the movie) exists. in exchange for $1,000,000 in co-branded tie-in advertising to These questions remain unanswered, and in any event be placed by Tutima, promoting both the movie and the watch would have required fact specific, rather than legal, inquiries. brand. Tutima also alleged that Millennium had agreed to secure The lesson for attorneys on both talent and studio sides is the necessary written permission from De Niro and Pacino for the very clear: permission for publicity and advertising should be use of their names and likenesses in this advertising. clear and explicit, and should reference the proposed advertising Tutima claimed that, ultimately, Millennium and Overture in as much detail as possible. And, of course, such approvals notified them that permission from the actors had been secured. should always be procured via signed written documents. Oral Relying on these representations, Tutima then proceeded with the or even casual written approvals cannot be a safe substitute for agreed upon advertising campaign and began conducting print, explicit written consent. The intense pressure present in any film online and store-front marketing. Circumstances soon changed, production—whether imposed by time, money or otherwise—might however, when according to Tutima, about two months later, explain these oversights, but certainly cannot excuse them. When Overture suddenly ordered Tutima to cease all promotions relating dealing with these issues, the old maxim ‘‘It’s better to ask to the movie. Overture later told Tutima that even though De forgiveness than permission’’ is exactly the wrong road to take. Niro and Pacino wanted the promotions to stop, the actors’ prior approval had in fact been obtained. Thereafter, Tutima ceased all promotions relating to the movie. [2010] Ent. L.R., ISSUE 4 2010 THOMSON REUTERS (LEGAL) LIMITED AND CONTRIBUTORS.