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Citation: Kirby v. Sega of America, Inc., 144 Cal.App.4th 47, 50 Cal.Rptr.3d 607, 81 U.S.P.Q.2d (BNA) 1172 (2006).

Factual Background

Keirin Kirby is a singer, choreographer and designer best known as a member of the early 1990s band Deee-Lite. Its single, “Groove is in the Heart¸” and its music video were very popular on radio and MTV. Using the name “Lady Kier,” Kirby claims that she has created a distinctive persona and public identity resulting from “her signature costumes and lyrical expression.” Lady Kier’s likeness was a blend of 1960s retro funk and space-age futurism. Lady Kier had pink hair, wore brightly colored mini-skirts or unitards and stiletto-heeled, knee-high platform boots and used the catch phrase “ooh la la.”

Sega is the distributor of a Japanese videogame called “Space Channel 5” or SC5. The principal character in the game is a female reporter called “Ulala.” Ulala’s character appeared to look and dress very similarly to Lady Kier. Ulala also used the catch phrase “ooh la la.” The original Japanese version of SC5 was released in 1999 and the American version was released in June of 2000. In July 2000, PD*3 Tully Co., a firm hired by Sega to launch a version in Europe, contacted Kirby regarding the use of Groove is in the Heart to promote the game. Kirby declined their request. Over the next three years, several other versions of the game were released for use on various game platforms.

Trial Court Decision

Kirby filed suit in 2003, alleging that Sega’s use of the Ulala character in SC5 constituted: (1) common law infringement of her right of publicity; (2) misappropriation of her likeness under California Civil Code § 3344; (3) violation of the Lanham Act; (4) unfair competition; (5) interference with prospective business advantage; and (6) unjust enrichment.

Sega moved for summary judgment arguing (1) that Ulala did not, as a matter of law, misappropriate Kirby’s likeness; and (2) that even assuming that Ulala did appropriate Lady Kier’s likeness, that appropriation was protected speech.

Although enough similarities existed between the two characters so that a question of fact remained whether Ulala infringed upon Lady Kier, the trial court granted Sega’s motion on First Amendment grounds.

Appellate Court Decision

= First Amendment Defense

Notwithstanding unresolved issues of fact, the appellate court affirmed the trial court’s ruling because the First Amendment and California Constitution, Article 1, provided a complete defense to the misappropriation claims. The court found that videogames, although commercial speech, are creative, expressive works entitled to protection unless they are false or misleading.

The court recognized that the free exchange of ideas can conflict with a celebrity’s right to protect its identity. To balance these conflicting interests, the court relied upon the transformative standard set out by the California Supreme Court in Comedy III Productions, Inc. v. Gary Saderup, Inc.,[1]: and Winter v. DC Comics,[2] Works where the celebrity’s image is an element of the likeness, but that also contain distinct expressive elements, are not misappropriation. In Comedy III, an artist rendered line drawings of images of the Three Stooges on t-shirts, while Winter involved a series of comics with characters formed by combining the facial features of rock singers Edgar and Johnny Winter with the body of slugs. The line drawing in Comedy III was held not protected by the First Amendment, as it was a very literal rendition of the Three Stooges. However, the defendant in Winter was protected as he added distinctive slug characteristics, thereby transforming the likeness of the Winters brothers.

Based on this precedent, the appellate court upheld the defendant’s First Amendment defense. Though Kirby and Ulala shared many similar traits, sufficient differences — dress and dance moves in particular — existed to find that even if Sega's videogame creators had used Lady Kier as inspiration, they had also added their own unique and highly protected creative expression.

The court further held that in order for something to be sufficiently transformative it only requires some new expression. Commentary, parody or satire is not also required.

Attorney’s Fees

Kirby also appealed the grant of attorney’s fees to Sega. Under California Civil Code § 3344(a), California’s statute governing misappropriation of a celebrity’s likeness, the prevailing party in action under that section “shall” be awarded attorney’s fees and costs. The trial court awarded $608,000 in fees and costs to Sega. Kirby argued that although Section 3344(a) used “shall,” it should be interpreted permissively. The appellate court rejected this argument and found that the legislature intended a mandatory grant of attorney’s fees. The court then remanded the case to the trial court to determine the appropriate additional amount of fees to which Sega was entitled for its appeal.

  1. 25 Cal. 4th 387, 406-409 (2001).
  2. 30 Cal. 4th 881, 890-892 (2003).