“Newsworthiness” and “Incidental Use”: How the Second Circuit Changed the Law

In most circumstances, a business cannot use your image to advertise a product without your permission and without paying you. If you're the President of the United States, you can ask that such a billboard be taken down. If your name is Woody Allen, you can sue and win $5 million dollars. The federal judiciary of the Second Judicial Circuit in the United States has carefully thought about this problem in the past and decided in favor of people who were exploited by businesses in this way. But then they thought about it some more, and they decided that, on the other hand, if you're a critic of the Warren Commission, it's okay for a business to steal your image, use it as a poster for their own profit to advertise a derisive anti-conspiracy book, and not have to pay a dime for the damage they've done to your ability to sell your own book. The federal courts accomplish such feats of magic, and officially sanction such thievery on behalf of the government they serve, through the use of fancy words, which, after all, are their stock-in-trade. So, our task is to understand how judges used these words when their goal was to muddle and confuse a set of ideas that had been carefully developed over a period of eight decades because their literal application would have led them inexorably toward a result they found unpalatable.

The key to understanding New York law on this point is the distinction that it draws from the statutory language between the terms "advertising purposes" and "purposes of trade." Since news publications (e.g., newspapers, magazines, etc.) are sold for profit, if a person's photo is used for illustrative purposes within a news or public interest medium it is denominated a use for "purposes of trade." However, New York grants this kind of use a common law "newsworthiness" (a/k/a "public interest") exception so long as it has a real relationship to the article. Murray v. New York Mag. Co., 27 N.Y.2d 406, 409 (1971); Pagan v. New York Herald Trib., 26 N.Y.2d 941 (1970), aff'g, 32 A.D.2d 341, 343, 301 N.Y.S.2d 120 (1st Dept. 1969).

That same photo may be republished in an advertisement for the original medium under the doctrine of "incidental use", because it is "incidental" to the original protected use. New York grants this common law exemption solely to publishers as a limited accommodation of their need to convey samples of the aesthetic content or quality of their products.

If there is no photograph accompanying the article, but one is used instead to separately advertise the sale of the publication, this is use for "advertising purposes." Prior to Groden, the "newsworthiness" and "incidental use" doctrines did not apply to commercial ad photos that did not originate in the underlying publication. Beverley v. Choices Women,s Medical Ctr., Inc., 78 N.Y.2d 745 (1991).

"Incidental use" is a doctrine that finds no textual basis in the statute, and is more in the nature of a judicial accommodation of the editorial use of a publication's actual contents in other media to aid its dissemination.

The "newsworthiness" and "incidental use" doctrinal exceptions to the New York Civil Rights Law were carefully crafted to save the statute from overbreadth only as applied to the news, public affairs, and entertainment dissemination media. They were not invented for the benefit of garment manufacturers looking for "free" advertising, but solely as limited accommodations to enable the media to advertise their publications where they would otherwise have no practical means of publicizing them.

Consider the problem: You or I might look at a magazine or billboard photo of a professional model (not Barack Obama) that has been paid to display the Weatherproof coat. We might then visit a store to try it on, or else order it, either by mail or online. But in the days before the World Wide Web, if we wanted to know who was on the cover of TIME or Newsweek or Gentlemen's Quarterly, were these publications not permitted to advertise we would have to travel to our local newsstand or candy store to find out. Judges in New York State recognized that, reading the statute by its strict literal terms, the media would be unable to advertise their wares unless they were allowed to display some of their graphical content in another, separate medium to generate sales.

Thus was born, in 1919, New York State's doctrine of "incidental use" as an exception to the proscriptions of the New York Civil Rights Law. The seminal case was Humiston v. Universal Film Manufacturing Co., 189 App. Div. 467, 178 N.Y.S. 752 (1919). Newsreel footage of a lawyer helping police to solve a murder was shown in theaters, and posters containing her photograph for the purpose of advertising the newsreel were displayed outside. She sued under the New York Civil Rights Law. The court declared both the film and the advertising posters exempt from the statute.

There is, however, a vitally important point about the Humiston case that the corporate media defense bar dislikes bringing to a court's attention, frequently resulting in judicial misconstruction of what Humiston actually decided and meant: Those lawyers routinely cite the appellate opinion in Humiston, which did not recite the full procedural history found in the decision of the lower court, i.e., the New York State Supreme Court, Special Term, New York County. There, the procedural history of the case makes clear that the defendants in Humiston disclaimed a First Amendment defense. Humiston v. Universal Film Mfg. Co., 101 Misc. 3, 6, 167 N.Y.S. 98 (Sup. Ct., Special Term, N.Y. Co. 1917), rev'd, 189 App. Div. 467, 178 N.Y.S. 752 (1st Dept. 1919). Since the defendants did not raise the First Amendment in the lower court, the appellate court did not face the issue whether it applied to the case.

What that means is that Humiston, the wellspring from which the doctrine of incidental use flowed, was not grounded in a free speech rationale, an immutable fact of historical record that significantly undermines the notion advanced by the Second Circuit Court of Appeals in Groden v. Random House, Inc., et al., that the exception was driven by a First Amendment interest in protecting the ability of the media to publicize its own communications. It wasn't. This is a serious misconception that has been foisted upon, and in turn by, the courts through the passing years in the apparent expectation that repetition will breed familiarity, which in turn will gain acceptance of a false proposition. Nonetheless, it is a legal fiction. On the contrary, beginning with Humiston, the historical development of the "incidental use" doctrine was pegged to the practical necessity of publishers, broadcasters, and filmmakers to advertise samples of their aesthetic content. As interpreted by New York state courts prior to the federal court decisions in Groden, the "incidental use" exception applied only to "republication" of material contained within the protected (under the "newsworthiness" exception to "purposes of trade") editorial content of the product being advertised. Such use was analogized to a "window display" of the contents of the underlying publication.

Therefore (and here is the crucial point), the two doctrines of "newsworthiness / matter of public interest" and "incidental use" are conceptually separate and distinct, but not co-extensive. The application of the former doctrine is the prerequisite to application of the latter. The incidental use exception derives from the material's original source; it does not stand on its own footing.

For example, Holiday Magazine had published an article featuring a photograph of actress Shirley Booth vacationing in Jamaica. Booth had consented to the article, but Curtis Publishing Company made further use of the photo to advertise its magazine in The New Yorker and Advertising Age. Booth sued. The court found that the advertisement used nothing more than a properly acquired, previously published photo, therefore, the use was "incidental" to the original publication and non-actionable. As the court explained in Booth v Curtis Pub. Co., 15 A.D.2d 343, 223 N.Y.S.2d 737 (First Dept. 1962), aff'd, 11 N.Y.2d 907, 228 N.Y.S.2d 468, 182 N.E.2d 812 (1962), the doctrine recognizes "the purpose served in a publisher presenting to its potential customers illustrative samples of the quality and content of its publication." Id., 15 A.D.2d at 351, 223 N.Y.S.2d at 745 (emphasis supplied).

In a subsequent case involving football star Joe Namath, Booth was called "the extreme limit of 'incidental use'", Namath v. Sports Illustrated, a Division of Time Incorporated, et al., 80 Misc. 2d 531, 533, 363 N.Y.S.2d 276, 278 (Supreme Court of New York, Special Term, New York County, 1975), aff'd, 48 A.D.2d 487, 371 N.Y.S.2d 10 (First Dept. 1975), aff'd, 39 N.Y.2d 897, 352 N.E.2d 584,386 N.Y.S.2d 397 (1976).

Indeed, in all these cases, and several more, the safeguard of predictability was clear: Use deemed "incidental" by these courts was carefully confined to the reproduction in advertising of an image, portrait or likeness that was actually contained within the publication being sold, and then only where that image bore such a real relationship to editorial content that the incidental use became, in effect, a representative display of the work itself.

Robert Groden's photograph was not contained within the book Case Closed, neither was the quote attributed to him by the Random House advertising campaign reproduced anywhere in that book. Until Groden, no case squarely held the unconsented use of one's photograph in a commercial advertisement privileged under New York's Civil Rights Law §§ 50, 51 where that same photograph had not previously appeared in the protected editorial content of the advertised medium. The dubious "innovation" of the Groden case lay in deeming the unauthorized advertising use of Mr. Groden's identity "incidental" to a matter of alleged "public interest," i.e., a book about the Kennedy assassination. The holding implicit in Groden appears to be that, under the New York Civil Rights Law and the common law doctrine of "incidental use", a publisher of material that is newsworthy, or concerns a matter of public interest, may use the likeness of person who is one of its subjects in an advertisement to "indicate the nature of the contents" of the publication being sold, irrespective of whether that likeness appears in the publication itself. (This leaves the question whether that person must be a subject of the book or article, or could merely be employed as a symbolic representation of the subject. The thrust of my understanding of Groden is that the vagary of "indicating the nature of the contents" does leave that wide-open uncertainty, however, we need not address that problem here.)

In practical reality, this holding merely restates the premises and prerequisites of the "newsworthiness" doctrine, and it leaves nothing of the doctrine of "incidental use." The latter is a nullity except in name only, since its sine qua non is the republication of "newsworthiness-privileged" likenesses previously used in the underlying publication. According to this holding, the quality of "newsworthiness" in the subject matter and the likeness alone suffices to privilege a publisher to use it in commercial advertising for his product.

Common sense yields that, if there were a First Amendment privilege to breach the statutory proscription in advertising for products related to news dissemination or the public interest, the doctrine of incidental use would be superfluous. Although there is, still, no such First Amendment privilege under the statute, whose constitutionality still stands, nevertheless, that redundancy appears to be Groden's practical result. If "incidental use" is not closely delineated and qualified, as New York courts have previously done, the definition of "advertising purposes" under the statute becomes uncertain and even whimsical. Besides common sense, the U.S. Court of Appeals for the Second Circuit previously held that the First Amendment does not protect the commercialization of personality through treatment distinct from the dissemination of news or information. Titan Sports, Inc. v. Comics World Corp., 870 F.2d 85, 87 (2d Cir. 1989). Compare in the copyright context the rejection of fair use defenses to direct commercial exploitation in Iowa State Univ. Rsch. Fd., Inc. v. ABC, Inc., 621 F.2d 57, 61 (2d Cir. 1980); Meeropol v. Nizer, 560 F.2d 1061, 1069 (2d Cir. 1977), cert. denied, 434 U.S. 1013, 98 S.Ct. 727, 54 L.Ed.2d 756 (1978).

Having considered the true purpose and origins of the "incidental use" doctrine, we are left with a troubling question: In the absence of a holding that the "Guilty of Misleading" ads were exempt from regulation under the First Amendment, why would a ruling in Groden's favor have been incompatible with the traditional purpose and interpretation of the "incidental use" rule, and what made the literal application to his case of prior formulations of that rule unacceptable, unreasonable, unfair, or absurd?

Regrettably, Judge Newman and his Second Circuit colleagues failed to supply us with a rhetorically or dialectically convincing answer, as we will further learn by examining their use (and egregious misuse) of legal precedents as purported justification for their alteration of the doctrine.

Next: The "Legal Method" of Judge Jon O. Newman and the Second Circuit (Only the First of Several Iterations)