AI, Publicity Rights, and Alternate Monetization
AI, Publicity Rights, and Alternate Monetization
The fight between the actress of Her and OpenAI, explained and put in context
In case you were unaware, OpenAI has been caught in another controversy related to intellectual property. In this case, Scarlet Johansson (also known as “ScarJo” to her fans). OpenAI released its newest voice model to great acclaim. Yet many observers noted that the voice sounded like Johansson’s character Samantha in Her, the AI assistant in the 2013 movie, which is reportedly OpenAI CEO Sam Altman’s favorite movie of all time. It seems that OpenAI wanted to do something similar to what TomTom did many years ago when it licensed the Star Wars voices to provide humorous navigation directions. (I personally used the Darth Vader directions.)
In an interview with the Verge, Haynes Boone’s Purvi Patel Albers describes this as a slam dunk for Johansson. In the article, he is quoted as saying “The question we need to ask is why on Earth did OpenAI do this?…[Johansson] is a known advocate for protecting her rights, so she’s not going to shy away from going against them.” That said, the case is not so cut and dry. This week, we’re going to review some of the rules behind right of publicity to get readers up to speed. We’re also going to put this into context of the broader IP rights regarding AI; this is the opening salvo of non-copyright battles, and it will be more interesting than the question of fair use
.
Also, before you continue, I was interviewed by
about patent law and AI. Listen here:
Voice Misappropriation and GPT-4
Voice misappropriation is a relatively new area of the right of publicity. The right of publicity, which is a bit of a strange beast that is a mix of a tort and a property right, exists on a state-by-state basis. The controlling cases are Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) and Waits v. Frito-Lay, Inc., 978 F.2d 1093 (1992). Specifically, the worst is “the deliberate misappropriation of (1) a voice, that is (2) distinctive and (3) widely known” (Waits at 1100). Both cases involved companies that hired voice actors to imitate famous musicians endorsing products using their actual songs; the tort is when the voice is “deliberately imitated in order to sell a product” (Midler at 463). It is no accident that both holdings involved singers because voice misappropriation requires not only that the voice holders are famous but also that the voice is “a sufficient amount of [their] identity” (Midler at 462).
More generally, the right of publicity generally has some conflict with the First Amendment. For instance, in Comedy III Productions v. Saderup, 25 Cal.4th 387 (Cal. 2001), the court mentioned that the transformative nature of the work is important when “the value of the work does not primarily derive from the fame.” However, as in Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983), the more commercial the likeness, the more the right of publicity comes into play. Because the right of publicity is typically state-by-state, there can also be significant variation in rights due to legislation. For example, in Tennessee (the home of Elvis), publicity rights last post-mortem and are very strong. Currently, there is no federal publicity right, though there has been renewed interest in such a concept.
Johansson’s accounting of the facts depicts what at first glance is a textbook set of facts for a right of publicity. Johansson’s role in Her is one of her most famous, and in it she is specifically recognized for the use of her voice. Johansson claims that she was approached by Altman to voice a new GPT-4 voice, which she rejected. Months later, her friends and family observed that the “Sky” voice sounded like her. She also claims that there was a second attempt to connect with her agent to reconsider mere days before the model was released. So far, it is fair to take her at her word on the facts, at least, since so far OpenAI has only disputed the legal conclusions.
There are, however, some inconvenient facts for Johansson that she does not mention. First, the tort requires that a “deliberate imitation” is used; the right of publicity is not like trademark law with a strict likelihood of confusion test. The most difficult fact for Johansson is that the Sky voice was actually launched in September 2023. According to OpenAI’s statement, they had cast the voice actress and finalized months before even approaching Johansson; indeed, records reviewed by the Washington Post show that the voice actress was hired several months before OpenAI even approached Johansson. The voice actress herself claims that no one had compared her to Johansson before. But in both cases, the sound-alikes were hired to get around a rejection. The other main difference is that in Midler and Waits the voice actors were performing Midler and Waits songs and endorsing products. Here, the use of the voice is a generic voice assistant, and Johansson cannot lay claim to a technical functionality as her art, nor can she claim a mere concept. There are no references to Her in GPT-4, nor are they attempting to imply that Johansson has endorsed the product.
This is not dispositive; OpenAI could have hired the Sky voice actress to imitate Johansson just in case she said no, for example. But the point is that, while this is already embarrassing for OpenAI, actual liability would likely require Johansson to show not just that the voices were similar but that it was intended to imitate her.1 That is the kind of thing that would come out in discovery. But if there was any such intent, it would very likely be game over for OpenAI.
The damages would likely be in the single-digit millions. In Waits, the jury awarded only $375,000 in compensatory damages but $2 million in punitive damages. Here the damages would of course be higher given that it is no longer the 1990s—for context, Chris Pratt was reportedly paid $5 million to voice Mario in Super Mario Brothers—but this gives a sense of what we are talking about here. Nothing catastrophic for a company like OpenAI.
The Bigger Picture: IP Beyond Copyright in AI
The bigger picture is that this is the opening salvo in a broader, post-copyright conversation of intellectual property rights in an AI world.
Previously, we covered the idea of fair use and in the context of AI. Although the coverage in Nonobvious was intended to be fair and balanced, I have made no secret of the fact that my opinion is that a finding of copyright infringement would be bad law and worse policy. In fact, I wrote a (tongue-in-cheek) article on my personal blog when Sarah Silverman sued OpenAI to that effect. In it, I observed that while I thought Silverman’s copyright claims were bogus, that there will be some type of licensing arrangement. At the time, I wrote that “most likely, as in everything else relating to Hollywood, [licensing] will have to do with official branding and merch.” That is where I believe this is going.
Copyright and fair use is just one way that creatives monetize their work and fame. Likeness and publicity rights are another example. but there are many others. There are many others. Trademarks may be used to make clear that a company is not endorsing a product. Breach of contract may be used to prevent a company from scraping a website even if fair use would allow the use of the work itself. Newspapers and movie studios may have back catalogs that are not open to the public, or which are cleaner or better-labeled than the data available to the public. There are many types of intellectual property beyond copyright and fair use and they are all fair game. As we are seeing here, many of them are a better fit for AI than trying to shoehorn yet another piece of computing into copyright law. That is why newspaper companies are inking deals left and right; they have other sticks and interests.
Weekly Novelties
Several former USPTO directors called Kathi Vidal to change the proposed rules on terminal disclaimers, calling them “contrary to law” (Law360)
The new IDS requirement includes a trap for the unwary: mistakes in filing the IDS could result in thousands of dollars and further delays (Foley)
Chinese companies are rebranding with US subsidiaries and partners to get around restrictions around intellectual property (WSJ)
Boies Schiller Flexner added three new patent litigators to its DC office (World IP Review)
Micron got hit with $445 million in damages in a jury trial; Micron intends to appeal, in part arguing that one of the patents was ruled invalid by the PTAB (PC Gamer)
A new ruling held that constitutional standing is not required for Section 337 cases (Dentons)
WIPO adopted its first new treaty in over a decade regarding genetic resources and associated traditional knowledge, building on the GBD treaty and Nagoya protocol (PatentlyO)
USPTO issued a memorandum instantly aligning its guidance to comply with the new obviousness test in LKQ v. GM, which overturned the Rosen-Durling test (USPTO)
The fact that Her is reportedly Sam Altman’s favorite movie, and that he tweeted out the word “her” at the GPT-4o demo, does not strike me as material legally (though it would probably be persuasive to a jury). Voice assistants have commonly been compared to Her in the decade since the movie has come out to the point where Her is often compared to Minority Report in its influence on the tech industry; he was clearly referring to the functionality, not the voice.