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Conversations with business leaders and changemakers on how they built their business and what keeps them going.
Pankaj (00:16)
Ladies and gentlemen, and welcome back to another episode of Letters of Intent. I am your co-host, Pankaj Raval.
And I'm the founder of Carbon Law Group, the Council for Dealmakers and Risk Takers. I'm joined today by my trusted colleague and co host, Sahil Chaudry. Sahil, how are you today?
Sahil (00:31)
I'm doing great. And Pankaj today we have a very interesting topic that comes straight from inquiries that we're getting through the firm. We're seeing
Pankaj (00:39)
Yes.
Sahil (00:40)
an increase in clients asking us about what they can do in terms of their image and their voice.
So we have actors and actresses, including voice actresses and actors, that are asking us questions like this contract says I'm assigning my voice to this product, or I'm licensing my image in perpetuity. And these are places where you really do need an attorney to come in.
and mark up that agreement and make sure you're not just giving away your image or your voice in perpetuity. And there are both statutory considerations here as well as contract, but there is no better person to talk about IP with than our founder, Pankaj. So Pankaj, I wanted to kind of kick things off and get right into it. What is the right of publicity and why is every
Attorney talking about it, especially in the entertainment world.
Pankaj (01:29)
Yeah,
so it's interesting a little context here, Sahil, because it's to understand like the history of this whole concept of right to publicity. Like what is it? What does it mean? How does it interact with other IP? So fundamentally the right to publicity kind of came about in the probably the fifties or so, based on celebrities' voices or images are being used by companies to sell products and it was without their consent. So this is where this whole issue arose.
Saying, hey, what is someone's right to their own image, likeness, name image-likeness, in the context of this and what's called now the right to publicity? Well, there's not much federal law on this right now. So it's important understand this is actually primarily driven by state law. And because California is California and home to Hollywood, this is definitely the epicenter of a lot of these conversations about right to publicity.
But it is relevant in every state. and now there's also federal law pending. It's been going through committee for the last three years, different versions of the No Fakes Act and things like that. But nothing has really been codified yet. So it's important for people to understand there's state law and federal law rights and also a lot of the rights are oftentimes documented in contract. So yeah, that's a long way of saying, you know right to publicity is complicated, is complex, but it's a fairly new area of law
that is becoming more and more relevant in the digital world.
Sahil (02:38)
So okay, I know in California, like you said, it's Hollywood. there's history for why we have the right of publicity. but number one, the right of publicity is actually a right you have by statute, not by contract. So it depends on which state you're in, is that right?
Pankaj (02:53)
Well, to the certain extent, I mean you can still contract for certain rights, right, around your publicity. But yeah, there are statutory guidelines that also protect your right as well, without a contract. So that's also what we're seeing. California has passed laws that do protect statutorily, which means, by statute as opposed to by contract, your rights to your name, name and likeness. However, as transactional lawyers, we always like to put it in writing as well
in a contract because why rely on the law? Because the law is written to be broad and you want to be specific with a lot of your contract terms of what happens and when. And also oftentimes the statutory rights are something you fall back on if you don't have clarity with the agreements you have.
Sahil (03:30)
So let's say my contract says I'm in California and my contract says that I'm selling my image or my voice. Can I do that or is state law gonna intervene and preempt the contract?
Pankaj (03:44)
So if you're selling your rights to your voice, right? It's a big question, are you licensing your voice? Are you assigning your rights to your voice? Like it kind of depends on what the nature of that deal is. but there could be state law that supersedes some of these agreements if they're not clearly stated.
Sahil (03:59)
Actually, I think it's kind of an interesting question. But basically like I recall we were working with an actor and a company was going to use that person's image to create AI derivatives of that person. And they were assigning their image to the company. So the question is then does that mean that company gets to use that person's image
in perpetuity? I'm wondering how that interacts with the right of publicity. Like do you have to kind of waive your right of publicity? Yeah, actually if we hit pause, I'm actually curious about this. We had a situation with a client. The client
never signed a release for their voice. And so the right of publicity protected that client. Because unless they actively contracted to monetize, sell or assign their rights in their voice, then that couldn't have been assumed. So it's different from let's say,
if someone takes a photo of you on the street, the photographer owns that photo. But the right of publicity says if you are the main character of that photo and that photographer is commercializing it, then that would violate the statute regulating the right of publicity.
Pankaj (05:04)
Right.
Sahil (05:05)
Whereas if you're in the background of that photo,
it's not a violation because you don't have a right to privacy in public. How do we distinguish
those rules? So I guess to kind of like back up pre-AI someone records you like you're an actor in a movie or you're a voice actress and your voice has been recorded,
who owns the voice or who owns the image? Let's just start there.
Pankaj (05:27)
Yeah, so this is where you really have to look at the contract and look at what the rights are of the party engaging, you as a voice actor, right? Do they have the rights to use it in perpetuity for anything and everything? And now there's law being passed that tries to limit that, saying even if you sign an agreement like that, only the party who got it can only
have that right for ten years, right? So they're trying to place limits on that because what we don't want is people to be taken advantage of and now they do one project for a thousand dollars and all of a sudden they lose the rights and they can't make any more money off their use of their voice because now it's been duplicated by AI and people are using it for whatever they want and they lost all right to earn revenue from their voice. Right. So that's what we want to avoid.
That's what the law is aiming to address. This is relevant for everyone, for anyone who's doing content creation, who's doing social media, any business owner who's hiring employees and putting them in their content, this is extremely important and relevant to keep in mind because you want to make sure that you are complying with the laws and you're not exposing yourself to liability in the future.
if you try to use the name and likeness of employees in content.
Sahil (06:29)
Okay, so for example, then if we had to break down the rule, Copyright protects what you made, the right of publicity protects who you are. And the issue is that AI copies who you are today more efficiently than ever before. And so
Pankaj (06:44)
Yes.
Sahil (06:45)
that's why we need some additional controls in contract.
Because your image can get monetized. If you give away the exclusive right, you can't monetize it with anybody else. But Pankaj, why doesn't copyright alone solve this problem? Why do we need the right of publicity involved?
Pankaj (07:00)
Yeah, because I think what you're saying, right? Copyright protects what you made. The right of publicity protects who you are, right? So like your distinct name likeness, because copyright fundamentally is the tangible expression of an idea. So that's copyright. So the right to publicity is like Scarlett Johansson's voice, she I think filed a suit against one of these AI companies, because they kind of copied her voice.
And it's not necessarily a copyright issue because it's not the tangible expression of an idea, but it it is akin to trademark in some ways because it is a source identifier. Unfortunately, you know, like there's been cases that are brought under trademark law that actually have failed. And they said no, there's actually subject to the right to publicity. So I think that's still up for debate. I think there's still cases that it probably could say that, oh no, there is some
trademark
relevance to your voice because we're talking about brand, right? We're talking about source identifier. So I think that area is still gray and still going to develop. But fundamentally, the right to publicity is its own area of law because it's like talking about, okay, how do people associate you, who you are, what you look like, your brand, your image, and how do you protect that going forward?
Sahil (07:59)
Yeah, I think you're right. I remember we were exploring that Matthew McConaughey has trademarked his voice.
Pankaj (08:06)
Yeah.
Sahil (08:06)
and he's doing that in a way to fight AI misuse. I'm looking this up right now that his legal team has secured eight trademark registrations from the US PTO, covering both sound marks and visual trademarks tied to his persona. The
Pankaj (08:20)
Right.
Sahil (08:20)
approved marks include
a sound mark of his famous line, All right, all right, all right, from Dazed and Confused. I love that movie. Yeah.
Pankaj (08:25)
yeah. I was thinking about that. Yes, yes.
Sahil (08:29)
and then a short video clips of him in signature poses and just standing on a porch, sitting in front of a Christmas tree, audio recordings of other phrases associated with his public image, like just keep living, right? Followed by a pause, and then what are we gonna do? I love that. So,
Pankaj (08:43)
Yeah, yeah, yeah.
Sahil (08:46)
actors and actresses are fighting back here and
they're recognizing the value of their voice, like you're saying, as a source identifier. and that's
Pankaj (08:54)
Right.
Sahil (08:54)
one way to monetize in the age of AI and to not get steamrolled by this technology. So okay, let's explore as attorneys here and for the attorneys listening, what's the case law that grounds this right of publicity in the age of AI question?
Pankaj (09:09)
So one of the cases is Midler versus Ford Motorco
and that is from 1988. So the case Midler versus Ford Motor Company was about Ford wanting to use Bette Midler's voice for a
certain sound or certain narration. And when Bette Midler said no, they hired a sound alike, someone who, sounded very similar to her. And Bette Midler sued and they said that, actually hiring someone who's deliberately imitating a distinctive voice, that's widely known, is actually actionable in California. After that came Waits versus Frito-Lay and under the same theory
as well as a false endorsement claim, Tom Waits had publicly came out and said, you cannot use my name or likeness in a commercial trying to sell products. So since then there's been, many others. More recently NFL players had sued EA Sports for including their name and likeness in video games.
Sahil (09:53)
So what they're saying is the right of publicity reached imitation.
Pankaj (09:57)
Right.
Sahil (09:57)
So that means it reaches AI clones.
Pankaj (09:58)
Right, right.
Okay. So Sahil, the point of all these cases that I'm talking about is that the issues with it have been supercharged by AI because the doctrine was flexible enough to talk about, how do we look at imitation before AI.
But there are still some barriers to imitating someone, how you have to see in a commercial somewhere else. But now with AI, AI can duplicate someone's voice, they can create a look-alike of you in a matter of seconds, and that can be used to sell anything. It's essentially talking about deepfakes, right? In the deep fake era, how do we counter this? And I think we do need, strong state and federal laws to protect people from being misrepresented because you can just think about it.
What are the risks of deepfakes, right? Throughout society, I'm sure people have seen on social media just recently I saw something the other day about an office episode where they were talking about something and it was just like a recreated episode of the office but talking about current events. It was just crazy and this is gonna get even more sophisticated. So we need something to address these right now.
Sahil (10:51)
Yeah, that's true. We're all at risk for somebody basically copying and pasting our image now and using it on the internet to do all kinds of things and make us say all kinds of things and do all kinds of things that we aren't giving permission for. So it's actually more important than ever. So Pankaj, do you think that we can rely on the right of publicity or do we need contract law here to step in and
draw the lines for us.
Pankaj (11:15)
I think we need contract law right now more than ever. There needs to be strong agreements that protect artists and actors, and anyone who is, using their voice, employees, to promote anything, to sell anything because like right now it's taken three years for Congress, the Senate to take any action and pass comprehensive federal legislation
on this issue. So, in the meantime, you need to be looking at contracts and your agreements to ensure you can enforce your rights there and hopefully, we'll see some action at the federal level.
Sahil (11:43)
So someone calls Carbon Law Group and says, my voice has been cloned. What do we do next?
Pankaj (11:47)
Yeah, so great question. We first understand, what is the nature of the use, where is the use? What state is this gonna be implicating? What state laws is gonna be implicating, how many state laws are gonna be implicating? Where has their voice been used? because that'll often indicate, where we can potentially bring claims, But generally it's based on like where the party is located. Then is there a contract?
Is there a contract governing the use of the voice? Was any kind of false endorsement made? Did they imply sponsorship or endorsement of a product or service using the voice? Was there any unfair competition or consumer protection statute involved here that may warrant a claim as well? Is there copyright? Copyright could be if there's actual copyrighted, images or something used.
And then there's also potentially, rights to contact platforms to take down this information. Maybe if it's copyright, then there's something DMCA. We can use the DMCA Act to try to take down the information or take down the content. So we just have to look at what our options are based on what has been used. And then in some states, some states already do have deep fake digital forgery or
criminal impersonation statute, so we have to kinda see if those could be implicated as well.
Sahil (12:48)
And just to touch on the right of publicity as, kind of the gating question here is did you give away your right of publicity? Like, for example, this case we're talking about voice, but it could also apply to someone's image. If that image gets cloned and then that clone is replicated, the right of publicity element there is
the name likeness image, the similarity between yourself and that image and people identifying that image as you. But then
Pankaj (13:17)
Mm-hmm.
Sahil (13:18)
if you did some acting and that was fixed and you captured some kind of fixed medium of expression, like you've recorded yourself on TikTok.
reciting lines or reciting words that you wrote, then there's copyright involved there. Because there's
Pankaj (13:32)
Yeah. Yeah.
Sahil (13:34)
creative work that you've now fixed. So there's an underlying copyright there in your voice, in your image, in your likeness. And then there's also this other thing, the right of publicity, which is people recognizing you as a human being and
Pankaj (13:48)
Yeah.
Sahil (13:48)
attributing, the words and actions to you.
And in California, for example, you can't even waive your right of publicity unless there are three elements: your voluntary and informed consent, specificity, and the deal can't be unconscionable. So California is particularly favorable to the artist,
which makes sense.
Pankaj (14:09)
Yeah, absolutely. And it's really important, because like, you have this disparity in power, between these like big studios
Sahil (14:13)
Yeah, exactly.
Pankaj (14:15)
and companies and these actors who are just trying to find their break. And, we want to make sure people are not taken advantage of and hopefully, these are some laws that'll protect them in some cases, yeah.
Sahil (14:23)
You brought up the No Fakes Act earlier and
Pankaj (14:25)
Yeah.
Sahil (14:26)
a lot of people have been talking about this, entertainment attorneys, corporate attorneys. We've all got our eye on this bill because this is going to significantly impact this question, the question of right of publicity and the use of AI. So
Pankaj (14:39)
Yeah.
Sahil (14:39)
what should we keep our eye out in terms of this law?
Pankaj (14:42)
Yeah, so the No Fakes Act essentially is gonna be creating greater penalties for use of deep fakes and these AI impersonations of people violating their publicity rights, limits the time period of how long a contract goes into place, like how long a license lasts, and the process for renewing licenses. It clarifies, what
rights are to clone and distribute voices, and name and likeness. So it's really trying to address this scourge of deepfakes that we're seeing online and address it in a way that will hopefully create more safety for the people because right now it's just rampant and there needs to be something to address all that's going on.
Sahil (15:17)
I think basically the federal government is recognizing what California and other states have recognized a long time ago,
which is you need a property right in your name, image, and likeness.
Pankaj (15:27)
Right.
Sahil (15:27)
and so this would give you a similar property right to what you have on a state level, but now you have a federal cause of action. If somebody, steals your voice, your image, and then deepfakes you,
on the internet now you have a state cause of action and then you'd also have a federal cause of action.
Pankaj (15:43)
Yeah, which is important because federal court is generally seen as more sophisticated, you get higher damages. We do, trademark litigation in federal court all the time and there's a higher bar with federal court and also more damages and it's a little bit more serious than oftentimes state court. State court is oftentimes, takes a long time. I think it's overwhelmed. You have to have
the really legitimate claims in federal court, otherwise they'll get thrown out or there's definitely consequences if you're not abiding by the federal rules. So things to keep in mind, yeah.
Sahil (16:10)
Yeah, and one element of this law that is going to be powerful is that the federal right of publicity. If the no fakes act gets passed, that right is not assignable during life. You will not be able to sell your identity outright. You will be able to license it, and that license is going to be capped at ten year intervals with an outer
Pankaj (16:29)
Yeah.
Sahil (16:29)
limit of seventy years after death. So
these are serious protections. And I think important, especially if you're doing an entertainment deal, you're doing a deal related to IP and if you're developing video games, or you're an actor on both sides. If you're a founder, entrepreneur, you're working on video games, film, TV, social media, or your talent, you need to be made aware of these rights because it is likely you're gonna get pressured into signing a deal.
Where someone wants the exclusive assigned right to your name, image, and likeness. And we want to push back as your attorneys, we want to say, look, you wanna monetize your rights and you wanna ensure that you have negotiated so that this is a license, preferably non-exclusive, and that you're being adequately compensated for your image. It's not something that you just need to give away.
Pankaj (17:17)
Absolutely. I think that's a great recap and a practical insight to that people can take as they kind of continue on their journey. If you're creating content, if you're working with people that are asking you to create content or use your name image likeness for you. Remember to make sure you're protected, make sure that you have protections there to enforce your rights if you feel that someone has
wrongfully used your name or likeness in any kind of commercial way, whether it be an employer or someone else. Just remember you do have rights and here at Carbon Law Group, we're here to help you protect them.
Sahil (17:44)
Thank you all for joining us for this week's episode of Letters of Intent. This is Carbon Law Group, the law firm for deal makers and risk takers.
Pankaj (17:53)
Thanks a lot. See you next time.