Download `Not On My Watch`—De Niro and Pacino Settle Right of Publicity and

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