Actors Sues for Use of Performance in DVD

By Jennifer E. Rothman
January 21, 2016

Brian McCabe, an actor, has sued Entertainment One and Swirl Films for selling DVDs of Community Service, a television show, that he had agreed to appear in and that he knew would be televised.  McCabe claims that although he agreed to the airing of his performance on television, he did not give permission for it to be used in a subsequent DVD, CD or online. McCabe points to a damning email by a Swirl producer suggesting that the company "CAN NOT release this show on DVD because [McCabe] is in it and has NOT given us permission."  McCabe claims common law copyright infringement, a violation of his right of publicity under New York's Civil Rights Law Section 51, and a Lanham Act false endorsement claim. The contract which is attached to the complaint has a handwritten note indicating that the $1,000 payment for his services did not include compensation for any future use of his performance on a "DVD, CD or online medium."  Such uses would require an "additional fee."  It seems likely that someone failed to read the handwritten note or to realize that not being able to distribute the performance in those media would be a major problem.  Surprisingly, there is no breach of contract claim.

McCabe's common law copyright claim seems unlikely to succeed given the nature of his contribution as an actor to the television show. See, e.g., Garcia v. Google (9th Cir. 2015). The common law copyright claim under New York law should also be preempted by federal copyright law. 

There is also a strong argument that the right of publicity claim should also be preempted by copyright law because the copryight owners are authorized to make and distribute the DVDs.  Courts, however, are split on whether the right of publicity is preempted by copyright law and even if they think it sometimes is preempted, they are split on whether uses that exceed what is permissible under a governing contract can be preempted.  For example, the Seventh Circuit held, in Toney v. L'Oreal (2005), that the use of a model's likeness beyond the time period allowed under her contract violated her right of publicity and was not preempted by copyright law.

Regardless of preemption here, the right of publicity claim has a number of other hurdles. McCabe initially agreed to perform and have his performance filmed and distributed by the defendants.  This may be analyzed as consent.  However, even if the initial capture and use of his likeness makes the use authorized generally, subsequent use on the DVD was not authorized.  This use in excess of the scope of the "written consent" could provide the basis of  a violation of Section 51.

Another possible hurdle under New York's statute is that the law only applies to uses for "advertising" or for "purposes of trade."  There remains some uncertainty in New York law over whether for "purposes of trade" encompasses motion pictures or television shows.  In this instance, where nothing appears to have been done to specifically exploit or trade off of McCabe's identity, a Section 51 claim is unlikely to fall under the trade-purposes requirement.

The false endorsement claim looks like a loser since he agreed to appear in the show and nothing about the dissemination of the DVD or elsewhere suggests any specific endorsement by any peformer, nor would consumers think it did.  

Complaint, McCabe v. Entertainment One, (Filed S.D.N.Y.)