"Invasion of privacy" might seem the right battle cry and the right legal theory for a celebrity trying to stop distribution, display or sale of a sexually explicit home video in which he or she plays the starring role. "Freedom of the press" might sound like a winning defense. Surprisingly, "copyright infringement" is the most likely weapon for the "exposed" celebrity to win injunctive relief without compromising the First Amendment.(1)

As seen recently, when a home video falls into the wrong hands, the media is all too ready to broadcast, display or sell the tape, with the Internet providing a ready vehicle for immediate transmission with very little cost. The potential audience and income return are enormous.

At the point when the media entity is poised to broadcast the tape what relief is available to the suddenly shy celebrity? What relief is available to the celebrity’s co-star? When a celebrity creates a home video tape, he is the copyright owner, whether he realizes it or not. By agreeing to create the tape, the "co-star" arguably becomes a coauthor, as the intent of the parties determines joint authorship. (2)  Both parties should be entitled to sue for copyright infringement of the work. (3)  This includes taking action against the Internet marketers, as broadcasting, displaying or selling over the Internet exposes one to the same liability for copyright infringement as taking these actions over the traditional mediums of radio or television. (4)

Under privacy laws, a court might not grant a preliminary injunction, especially if media attorneys assert their holy grail: The First Amendment and "prior restraint." (5)  Because celebrities are public figures who have a lowered expectation of privacy, the broadcaster is likely to prevail. (6)

Copyright law presumes irreparable harm where the plaintiff shows a reasonable likelihood of success on the merits or a prima facie case of infringement, making chances good that the copyright owner will receive a preliminary injunction. (7)  There is no public figure exception to copyright protection. (8)  Of course, one does not need to be a celebrity to claim copyright infringement.

An injunction against copyright infringement does not violate the First Amendment since copyright law recognizes an idea/expression dichotomy which "strike[s] a definitional balance between the First Amendment and the Copyright Act by permitting free communication of the facts while still protecting an author’s expression." (9)  The media may, of course, report on the factual contents of the tape, but they may not reproduce or display the tape itself without the copyright owner’s authorization because the tape contains original, protectable expression.

A home video, created after March of 1989, even with no copyright notice and without being registered with the U.S. Copyright Office, is entitled to copyright protection. Copyright law protects the work at the moment it is fixed in tangible form. (10)  However, registration is a prerequisite to filing a lawsuit. (11)  If the infringement occurred before registration, the copyright owner is not eligible for statutory damages or attorney’s fees. (12)

For a registered or unregistered work, copyright infringement occurs when a person exercises any of the copyright owner’s exclusive rights without the owner’s permission or without an exception such as fair use. (13)  In an infringement suit, the plaintiff must establish valid copyright ownership and show that original elements of the work were copied. (14)

Under U.S. law, a copyright owner has exclusive rights including the rights: to produce copies or phonerecords of the work; to prepare derivative works; to distribute the work; to perform the work publicly; and to display the work publicly. (15)  The copyright owner may authorize others to exercise any or all of these rights. Some exceptions to the exclusivity of these rights exist, such as fair use.

Fair use allows for the use of a copyrighted work for purposes such as criticism, comment, news reporting, teaching, scholarship or research. (16)  The unauthorized use of a copyrighted work is analyzed to determine whether it is a fair use with four factors: the purpose and character of the use; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for or value of the copyrighted work. (17)

If any of the copyright owner’s rights are exercised without authorization and the use does not qualify as "fair use," the copyright owner may be entitled to injunctive relief, monetary recovery, statutory damages, attorney’s fees and remedies such as the impoundment or destruction of infringing articles. (18)  Preliminary injunctive relief is easier to obtain under copyright law because there is a presumption of irreparable harm. (19)  Generally, the presumption of irreparable harm exists because "damages for future infringement are almost automatically regarded as inadequate." (20)

Back to our celebrity desperately trying to stop the distribution of the sexually explicit home video. If the celebrity moves for an injunction on the basis of copyright infringement, the defendant media entity will likely argue that its use of the tape is "fair use" because it is news reporting. The court must then strike a balance between the copyright owner’s rights and the First Amendment’s requirements.

First, a court would evaluate the character of the work, a sexually explicit home video. The celebrity likely did not plan to distribute the video tape ever. This is critical in copyright law because there is a right to be the first to publish one’s own work, and a right never to publish the work. (21)  The author is entitled to have creative and quality control over the work. If a work is published without the author’s consent, the author loses such control. The United States Supreme Court held that a use that clearly "infringes the copyright holder’s interests in confidentiality and creative control is difficult to characterize as ‘fair.’" (22)

Privacy interests are not determinative of the fair use issue, but it has been held that when "making a fair use analysis balancing the nature of the protected work with the fair use purpose sought to be served, privacy interests may be an appropriate consideration." (23)  Therefore, the private nature of a person’s sexual relations captured on videotape is considered in evaluating a fair use defense, even if the person is a celebrity because there is no public figure exception to copyright law. (24)

Second, the court will consider the character of the use. The defendant will likely say it broadcasted the tape as news reporting and that new reporting is protected by the First Amendment. As stated earlier, the factual content of the tape is not protected by copyright and may be reported in keeping with the First Amendment. However, the right to display the tape goes beyond factual news reporting and includes the owner’s expression. This expression is protected by copyright.

If the videotape itself may constitute news, the commercial nature of the use, even if for news reporting, must be considered. (25)  For example, consider the thirty second spots broadcast throughout the day to draw viewers to a network newscast. Use of a portion of the tape for this purpose cannot be characterized as news reporting— it is clearly advertising with a profit motive. The for-profit nature of a work’s use weighs against a finding of fair use because commercial exploitation of a copyrighted work is presumed to belong to the copyright owner. (26)  A court must consider whether the defendant will profit from the use of the work without compensating the owner of the work, (27) and if the tape is used for commercial purposes, or if the user profits from its use, this weighs against a finding of fair use. Of course, the most likely use would be for entertainment, and use for entertainment is not a "fair" one. (28)

Third, a court must consider the amount and extent of the work used. (29)  Again, this requires a balancing act. In some instances, use of small portions of the work would weigh in favor of a "fair" use, but in others, use of even small portions have been found to be unfair. Consider again the thirty second "hook" advertising, which may show very little of the tape, but it constitutes the major portion of the ad. In such circumstances, it is hard to consider the use de minimis or fair.

Fourth, the court will consider the effect on the market. This was called the "single most important element of fair use" by the Supreme Court. (30)  The defendant will likely argue that the publicity has increased the market for the work. However, the celebrity is likely to prevail with the argument that potential customers who have already seen the tape are not likely to want to pay to see it again, and that the interest level in the tape is reduced by the infringing display. (31)

That the author has no intention of publishing the work does not affect this consideration because the author is entitled to protect the potential market for the work. (32)  If use of the tape would dissuade potential purchasers because they had already seen it, the future market for the tape is essentially destroyed.

A fair use defense would likely fail. Fortunately for the celebrity, under copyright law, a reasonable probability of success on the merits, and not an overwhelming likelihood, is all that is needed to obtain injunctive relief. (33)  If the celebrity can establish a reasonable likelihood of success or a prima facie case of infringement, a presumption of irreparable harm is raised. (34)

Copyright law provides celebrities and non-celebrities the best defense against unauthorized distribution of a sexually explicit home video created in privacy. The idea/expression dichotomy contained in copyright law allows the media to report on the factual content of the tape, while protecting the owner against distribution, sale and substantial display of the tape. Although invasion of privacy may seem to be the most appropriate cause of action, copyright law provides a stronger means for preventing distribution and display using a preliminary injunction. (35)

(1) The celebrity may also have a cause of action for a violation of the right of publicity. See Zacchini v. Scripps-Howard Broad., 433 U.S. 562 (1977). For privacy cases, see Braun v. Flint, 726 F.2d 245 (5th Cir. 1984); Wood v. Hustler Magazine, Inc., 736 F.2d 1084 (5th Cir. 1984). Although an injunction pending a trial on the merits may be granted, there is no presumption of irreparable harm as established in copyright law. 2 Thomas J. McCarthy, Rights of Publicity and Privacy, § 11.6 [B] (1997).

(2) 17 U.S.C. § 101(1996).

(3) 17 U.S.C.A. § 501 (West 1996).

(4) See Playboy Enters. Inc. v. Frena, 29 U.S.P.Q.2d 1827, 1829 (M.D. Fla. 1993).

(5) A prior restraint is "a label used in constitutional law to describe administrative or judicial orders which forbid a communication when issued in advance of the time that the communication is to occur." Thomas J. McCarthy, Rights of Publicity and Privacy, § 11.6 [C] (1997).

(6) Time v. Hill, 385 U.S. 374 (1967).

(7) Cadence Design Sys., Inc. v. Avant! Corp., 44 U.S.P.Q.2d 1201, 1204 (9th Cir. 1997).

(8) Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560 (1985).

(9) Id. at 556.

(10) 17 U.S.C. § 302(a) (1996).

(11) 17 U.S.C. § 411 (1996).

(12) 17 U.S.C. § 412 (1996).

(13) 17 U.S.C. § 501.

(14) Feist Publications, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991).

(15) 17 U.S.C. § 106 (1996).

(16) 17 U.S.C. § 107 (1996).

(17) 17 U.S.C. §107.

(18) 17 U.S.C. §§ 501-505 (1996).

(19) Cadence, 44 U.S.P.Q.2d at 1204.

(20) 2 Thomas J. McCarthy, Rights of Publicity and Privacy, §11.6[A](1997).

(21) Harper, 471 U.S. at 564.

(22) Id.

(23) New Era Publications Int’l v. Henry Holt and Co., 8 U.S.P.Q. 1713, 1720 (S.D.N.Y. 1988).

(24) 471 U.S. at 560.

(25) Id. at 562.

(26) Id. citing Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 451 (1984).

(27) Id.

(28) Playboy, 29 U.S.P.Q.2d at 1832; Schumann v. Albuquerque Corp., 1489 U.S.P.Q.2d 1489, 1491(D.N.M. 1987).

(29) 471 U.S. at 564.

(30) Id. at 566.

(31) New Era, 8 U.S.P.Q.2d at 1735.

(32) Salinger v. Random House, 1 U.S.P.Q.2d 1673, 1678 (2d Cir. 1987).

(33) Triad Sys. Corp. v. Southeastern Express Co., 64 F.3d 1330, 1335 (9th Cir. 1995) cert. denied, 116 S.Ct. 1015 (1996).

(34) Id; Apple Computers Inc. v. Formula Intern. Inc., 725 F.2d 521, 525 (9th Cir. 1984).

(35) Shortly after this article was written, a U.S. District Court granted a preliminary injunction prohibiting distribution of a sexually explicit home vide tape over the Internet on the basis of copyright law, California right to publicity and right to privacy law. See Michaels v. Internet Entertainment Group, Inc., 46 U.S.P.Q.2d 1892 (C.D. Cal. 1998).