Deceptive Exploitation: Deepfakes, the Rights of Publicity

and Privacy, and Trademark Law

By Michael D. Murray1
In the last decade, and particularly since the maturation of the current generative
artificial intelligence (GAI) technologies of generative adversarial networks and diffusion-based
transformer models in the 2020’s,2 visual and audio GAI tools have come to represent a
powerful weapon when taken up in the hands of those who would use these tools to unfairly
exploit a person's name, image, likeness, and other aspects of their persona and personality.3

4 5 6 7

This article addresses the application of right of publicity, right of privacy, and
trademark law to the problem of deepfakes. It will explore the routine and not so routine ways
that personality and persona attributes are exploited in traditional privacy contexts and
publicity contexts, and it will examine the use of First Amendment defenses in legal actions

1
Michael D. Murray is the Spears Gilbert Associate Professor of Law and the principal investigator of the Artificial
Intelligence and the Law Project at the University of Kentucky, J. David Rosenberg College of Law. He is the author
of RIGHT OF PUBLICITY IN A NUTSHELL (2d ed. 2022) and A SHORT AND HAPPY GUIDE TO COPYRIGHT (2d ed. 2022), and the
coauthor of ART LAW IN A NUTSHELL (6th ed. 2021) and ART LAW: CASES AND MATERIALS (3d ed. 2023). Professor Murray
thanks Dean Paul Salamanca, Associate Dean for Research Joshua Douglas, and the Rosenberg College of Law
faculty research fund for their on-going support of his research. Research supporting this article was undertaken
pursuant to a 2024-2025 OVPR CURATE Grant of the University of Kentucky.
2
Zarif Bin Akhtar, Unveiling the evolution of generative AI (GAI): a comprehensive and investigative analysis toward
LLM models (2021–2024) and beyond, 11 J. ELEC. SYS. & INF. TECH. 22 (2024), https://doi.org/10.1186/s43067-024-
00145-1.
3
USPTO, Name, Image, and Likeness Protection in the Age of AI (Aug. 5, 2024),
https://www.uspto.gov/sites/default/files/documents/080524-USPTO-Ai-NIL.pdf; John B. Quinn, Shon Morgan, et
al., The Right of Publicity in the AI Age, QUINN EMANUEL (Oct. 02, 2023), https://www.quinnemanuel.com/the-
firm/publications/the-right-of-publicity-in-the-ai-age/.
4
Michael D. Murray, Deepfake of Taylor Swift drinking Coke and smoking (Feb. 6, 2024) (image created with the
assistance of Stable Diffusion).
5
Michael D. Murray, Deepfake of two Will Smiths and one Oprah promoting a sporting goods store (Apr. 22, 2024)
(image created with the assistance of DALL-E 3).
6
Michael D. Murray, Deepfake of Steph Curry in a ZzzQuil ad (Aug. 22, 2024) (image created with the assistance of
Flux Pro).
7
Michael D. Murray, Deepfake of Kamala Harris eating a hamburger (Sep. 6, 2024) (image created with the
assistance of Flux Pro).
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traditionally associated with the exploitation of celebrities, sports figures, and other persons
under state law theories of name-image-likeness exploitation and federal trademark law
theories of false endorsement and false designation of origin.8
My thesis is that while deepfake images of celebrities and private and public figures are
becoming increasing common, if not ubiquitous, there are well-developed areas of law that are
adaptable to address the legal issues of name-image-likeness exploitation raised by deepfakes.
The exploitation of a person's name, image, likeness, and other aspects of their persona and
personality is safeguarded under a triad of legal frameworks, each rooted in distinct legal
theories but entwined with a common objective of protecting personality rights. Right of
publicity law, grounded in a property rights theory, provides individuals with control over the
commercial use of their identity.9 Publicity law treats a person's name and likeness and
attributes such as voice as assets that can be owned, controlled, and exploited by the person.10
Right of privacy law, which predates right of publicity law in the context of unconsented
exploitation of a person’s name, image, and attributes,11 arises from tort law and personal
injury principles.12 In this context, privacy law focuses primarily on the protection of individuals
from unwanted exposure, exploitation, and harmful intrusions into their private lives in a
manner that causes emotional harm and reputational damage.13 Trademark false endorsement
and false designation of origin law is rooted in the theory of avoiding consumer confusion and
promoting fair competition in commerce.14 Trademark law seeks to prevent the misleading use
of a person’s likeness or identity in a manner that falsely implies endorsement or affiliation in
commercial contexts, thereby protecting both the consumer from deception and the person
whose name, image, or persona is exploited from unfair competitive practices.15 Together,
these legal frameworks provide a shield against the unauthorized exploitation of a person’s
personality and identity.
Part I below provides an introduction and background to the three theories of
protection of personality and persona rights in right of publicity, right of privacy, and trademark
law. Part II focuses on the publicity-property law implications of deepfakes when used in
commercial speech and other contexts. Part III focuses on the tort and personal injury theories

8
This article will not discuss criminal law implications of deepfakes. For information on this topic, see Michael D.
Murray, Deepfake Crime and Punishment, __________ ( ).
9
See, e.g., Huston v. Hearst Commc'ns, Inc., 53 F.4th 1097, 1100 (7th Cir. 2022); Melendez v. Sirius XM Radio, Inc.,
50 F.4th 294, 299 (2d Cir. 2022).
10
See, e.g., Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 569 (1977).
11
See infra Part I.
12
See Zacchini, 433 U.S. at 572-73; Cantrell v. Forest City Pub. Co., 419 U.S. 245, 248–49 (1974); Joe Dickerson &
Assocs., L.L.C. v. Dittmar, 34 P.3d 995, 1000 (Colo. 2001) (citing Restatement (Third) of Unfair Competition § 46,
cmts. a & b (1995)).
13
See sources cited in note [ 12 ] supra [previous note].
14
Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 122 (2014); Souza v. Exotic Island Enterprises,
Inc., 68 F.4th 99, 109–11 (2d Cir. 2023).
15
See, e.g., Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1067 (9th Cir. 2015); Lexmark, 572 U.S.
at 109-11; Souza, 68 F.4th at 109-11.

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 DECEPTIVE EXPLOITATION: DEEPFAKES, THE RIGHTS OF PUBLICITY AND PRIVACY, AND TRADEMARK LAW 3

of privacy law in deepfake exploitation scenarios that impinge on seclusion, private affairs, and
personal privacy. Part IV examines the trademark theories of false endorsement and false
designation of origin in the context of deepfakes used in commercial contexts that present a
risk of consumer confusion. Part V focuses on the role of the First Amendment in constraining
the right of publicity, the right of privacy, and false endorsement and false designation of origin
claims. Part VI is the conclusion.
I. Introduction and background
Deepfake is a twenty first century term for images, video, and audio recreations of the
image and likeness, and sometimes the voice or performance attributes, of celebrities,
politicians, and other persons.20 The term is a combination of the words “deep learning” and
“fakes.”21 The following deepfake images and many others in this article were created by the
author with the assistance of publicly available visual generative AI tools.

16 17 18 19

16
Michael D. Murray, Deepfake of Taylor Swift drinking beer (Feb. 2024) (image created with the assistance of
Stable Diffusion).
17
Michael D. Murray, Deepfake of Janelle Monae portrayed in the style of Andy Warhol (Feb. 2023) (image created
with the assistance of Stable Diffusion).
18
Michael D. Murray, Deepfake Image that was not supposed to be Bogie and Bacall, but you be the judge (Apr.
2024) (image created with the assistance of Stable Diffusion). The prompt was “a photograph of an old Hollywood
couple that resemble Bogie and Bacall. I think it looks more like former NBC news correspondent Brian Williams
and Bacall, but not that far off from Humphrey Bogart.
19
Michael D. Murray, Deepfake Image of Donald Trump and Kim Kardashian in the Oval Office (Sep. 20, 2024)
(image created with the assistance of Flux Pro).
20
Sara H. Jodka, Manipulating reality: the intersection of deepfakes and the law, REUTERS (Feb. 1, 2024 12:01 PM),
https://www.reuters.com/legal/legalindustry/manipulating-reality-intersection-deepfakes-law-2024-02-01/.
21
New York Inst. of Tech., Deepfakes: How do they work and what are the risks?, THE CYBER CORNER (Oct. 26, 2023),
https://blogs.nyit.edu/the_cyber_corner/deepfakes_how_do_they_work_and_what_are_the_risks.

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Contemporary generative artificial intelligence (AI) tools for image creation (e.g., DALL-E
3,22 Midjourney,23 Stable Diffusion,24 and Flux Pro25), AI generated video (E.g., Open AI’s Sora,26
VideoGen,27; RunwayML28), and AI generated audio, voice, and musical performance (e.g.,
Suno,29 RVC WebUI,30 Udio,31 Altered,32 ElevenLabs33), have increased the speed and ease with
which people can “fake” the appearance, voice, performances, and actions of real people.
Whether one views these generative AI tools as a massive step toward the democratization of
self-expression and creation34 or a ridiculously fast and easy way to exploit celebrities, unfairly
compete in commerce, or inflict a myriad of personal injuries,35 the technology is present and
only going to improve from where it is today.
Deepfakes fall into the category of expressive works that have been created or altered
with the assistance of visual generative artificial intelligence systems.36 This description of the
category is accurate, as all deepfakes are products of generative AI technology, but when the
label “deepfake” is applied to a work in this category the label carries significantly negative and
pejorative associations: the “deepfake” label is associated with fraud, identity theft, infliction of
emotional and personal harm, and a variety of other forms of negative conduct that could
support civil claims or criminal charges.37 But the category of works created with the assistance

22
OpenAI, DALL-E 3, https://openai.com/dall-e-3 (last accessed Apr. 8, 2024).
23
The latest model of Midjourney visual generative AI system is version 6.1 as of Jul. 30, 2024. See Midjourney
Model Versions, https://docs.midjourney.com/docs/model-versions (last accessed Aug. 22, 2024). See also Barry
Collins, Midjourney 6 Arrives at Last (Dec. 22, 2023), https://www.techfinitive.com/features/midjourney-6-pricing-
features-release-date/.
24
The latest model of Stable Diffusion is version 3, which was announced on Feb. 22, 2024. Stability.ai, Stable
Diffusion 3 (Feb. 22, 2024), https://stability.ai/news/stable-diffusion-3. See Stability.ai, Announcing the Open
Release of Stable Diffusion 3 Medium, Our Most Sophisticated Image Generation Model to Date (Jun. 12, 2024),
https://stability.ai/news/stable-diffusion-3-medium.
25
Flux Pro is available as of August 22, 2024, at www.fluxpro.art (last accessed Aug. 22, 2024).
26
OpenAI, Creating Video from Text, https://openai.com/sora (last accessed Aug. 22, 2024).
27
VideoGen, Create Videos in seconds, https://videogen.io/ (last accessed Aug. 22, 2024).
28
Runway, Advancing creativity with artificial intelligence, https://runwayml.com/ (last accessed Aug. 22, 2024).
29
Suno, Make a Song about Anything, https://suno.com/ (last accessed Aug. 22, 2024).
30
RVC-Project, Retrieval-based-Voice-Conversion-WebUI, https://github.com/RVC-Project/Retrieval-based-Voice-
Conversion-WebUI (last accessed Aug. 22, 2024).
31
Udio beta, Make Your Music, Udio.com (last accessed Aug. 22, 2024).
32
Altered, Local Voice Cloning, https://www.altered.ai/voice-cloning/ (last accessed Aug. 22, 2024).
33
ElevenLabs, Create a replica of your voice that sounds just like you, https://elevenlabs.io/voice-cloning (last
accessed Aug. 22, 2024).
34
Datacenters.com, Democratized Generative AI: Empowering Creativity, DATACENTERS.COM ARTIFICIAL INTELLIGENCE
(Dec. 14 2023), https://www.datacenters.com/news/democratized-generative-ai-empowering-creativity#.
35
Jodka, supra note [ 20 ]; Michael Atleson, Chatbots, deepfakes, and voice clones: AI deception for sale, FED. TRADE
COM. (Mar. 20, 2023), https://www.ftc.gov/business-guidance/blog/2023/03/chatbots-deepfakes-voice-clones-ai-
deception-sale.
36
Bart van der Sloot, Yvette Wagensveld, Deepfakes: regulatory challenges for the synthetic society, 46 COMP. L. &
SEC. REV. 105716 at 1 (Sep. 2022), https://www.sciencedirect.com/science/article/pii/S0267364922000632.
37
See generally Eric Kocsis, Deepfakes, Shallowfakes, and the Need for A Private Right of Action, 126 DICK. L. REV.
621, 632-37 (2022); Matteo Wong, We Haven’t Seen the Worst of Fake News, ATLANTIC (Dec. 20, 2022),
https://www.theatlantic.com/technology/archive/2022/12/deepfake-synthetic-media-technology-rise-

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of visual generative AI is much larger, and includes works created to report and illustrate news
accounts, educational materials, research, artistic expression, criticism, commentary, and
parodies, and many other forms of valuable and desirable expression. Therefore, the evaluation
of deepfakes under right of publicity, right of privacy, or trademark false endorsement and false
designation of origin laws requires a careful analysis of both the content, message, and
audience of the AI-assisted expression (e.g., is it directed to consumers in a commercial context,
or to voters, or to consumers of news media, or the arts, or entertainment) within the elements
of the substantive law and the requirements of the First Amendment.
In the deepfake expressive media context there are enormous overlaps and few
distinctions between state and federal publicity, privacy, and trademark claims.38 Privacy,
publicity, and false endorsement actions share a common origin story. America is one of the
first if not the first nation to identify personality rights (specifically, privacy rights) as a legally
protectable feature of our persons, an event marked by the publication of an 1890 law review
article written by future U.S. Supreme Court Justice Louis Brandeis and his one-time law partner
and former Harvard Law School classmate, Samuel D. Warren.39 Brandeis and Warren opined
that there ought to be a right of privacy to protect the sensibilities and intimacy of the private
lives of private people from intrusion by others, particularly the press. New York State brought
that recognition to law with the enactment of the first statutory right of privacy law in 1903.40
Soon after, Georgia recognized a common law right of privacy.41 And soon after that, New
Jersey recognized a false endorsement theory involving the unauthorized use of a name and
likeness to promote a product.42

disinformation/672519/; Quentin J. Ullrich, Is This Video Real? The Principal Mischief of Deepfakes and How the
Lanham Act Can Address It, 55 COLUM. J.L. & SOC. PROBS. 1, 4-8 (2021).
38
See generally MICHAEL D. MURRAY, RIGHT OF PUBLICITY IN A NUTSHELL, chs. 2, 3, 5, 8 (2d ed. 2022).
39
Samuel D. Warren and Louis D. Brandeis, The Right to Privacy, 4 HARV. L. REV. 193 (1890) (hereinafter “Brandeis
and Warren”).
40
N.Y. Civ. Rights Law §§ 50, 51 (McKinney 1903), L.1903, c. 132.
41
Pavesich v. New England Life Ins. Co., 50 S.E. 68 (Ga. 1905).
42
Edison v. Edison Polyform Mfg. Co., 67 A. 392, 394–95 (N.J. Ch. 1907). See also Thomson v. Winchester, 36 Mass.
214, 216 (1837) (proto-trademark claim of Samuel Thomson—who sold a medicine under the name “Thomsonian
Medicines”—against another Massachusetts druggist who sold an allegedly inferior product under the same name.
The court held that the druggist could be liable for fraud if he passed the medicine off as that of Thomson’s); Taylor
v. Carpenter, 3 Story 458 (D. Mass. 1844) (granting an injunction to prohibit a seller of spools from infringing on
the plaintiff ’s eponymously named trademark of “Taylor's Persian Thread”).

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Deepfakes occupy a place where the Venn diagrams of privacy, publicity, and false
endorsement overlap—the unauthorized use of a person’s name-image-likeness in a manner
that causes injury.

The Supreme Court’s June 2024 trademark opinion, Vidal v. Elster,43 highlights the
overlapping concepts of trademark, privacy, and publicity law when it comes to use of a
person’s name and persona and the reputation and goodwill that may come to be associated
with a person’s name, which have
historically been grounded in the notion that a person has ownership over his
own name, and that he may not be excluded from using that name by another's
trademark. As the Court has explained, “[a] man's name is his own property, and
he has the same right to its use and enjoyment as he has to that of any other
species of property. . . . Trademark protection ensures that consumers know the
source of a product and can thus evaluate it based upon the manufacturer's
reputation and goodwill. See Restatement § 9, Comment b; see also Powell v.

43
Vidal v. Elster, 602 U. S. ____, 2024 WL 2964139 (U.S. Jun. 13, 2024). Vidal upheld the Lanham Act “names
clause” precluding the unauthorized use of a person’s name as a mark when the clause came under a First
Amendment challenge.

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Birmingham Vinegar Brewery Co., 13 Rep. Pat. Cas. 235, 250 (Ct. App. 1896)
(Lindley, L. J.) (“His mark, as used by him, has given a reputation to his goods. His
trade depends greatly on such reputation. His mark sells his goods”). . . .
Moreover, the [Lanham Act] names clause respects the established connection
between a trademark and its protection of the markholder's reputation. We
have long recognized that a trademark protects the markholder's reputation. . . .
Accordingly, when a person uses another's mark, “the owner is robbed of the
fruits of the reputation that he had successfully labored to earn.” A person's
trademark is “his authentic seal,” and “[i]f another uses it, he borrows the
owner's reputation, whose quality no longer lies within his own control.” “This is
an injury, even though the borrower does not tarnish it, or divert any sales by its
use; for a reputation, like a face, is the symbol of its possessor and creator, and
another can use it only as a mask.”44
While privacy, publicity, and trademark rights originated from a common desire to
protect an individual’s identity and features of their persona and reputation, they have
diverged in their focus and application.45 The right to privacy has primarily been concerned with
protecting individuals from unwanted intrusions into their personal lives, whereas right of
publicity and false endorsement laws are focused on preventing the unauthorized commercial
use of an individual’s identity.46
There are minor gaps in geographic coverage of right of publicity or right of privacy
protections. Of the fifty states and the District of Columbia, only Alaska, North Dakota, and
Wyoming have never recognized by statute or in common law a person’s right to be free from
the unauthorized and unconsented exploitation of their name, image, likeness, or persona
under a theory of privacy or publicity law.47
The right of privacy, first enacted into statutory law in New York, was intended to
remedy the harms of embarrassment and humiliation from being unwillingly exposed to public
attention,48 but New York’s 1903 law was phrased to address unconsented commercial
appropriation: a “person whose name, portrait, picture or voice is used within this state for
advertising purposes or for the purposes of trade without the written consent first obtained”
shall have the right to sue for damages.49 The Restatement (Second) of Torts § 652(C) frames
this theory as: “One who appropriates to his own use or benefit the name or likeness of

44
Id. at *9, *10 (most inner citations omitted).
45
See generally MURRAY, RIGHT OF PUBLICITY IN A NUTSHELL, supra note [ 38 ], ch. 3.
46
Legal Info. Inst., Publicity, Cornell Law School LLI (Feb. 2024), https://www.law.cornell.edu/wex/publicity;
Restatement (Second) of Torts § 652 (Am. L. Inst. 1977).
47
See MURRAY, RIGHT OF PUBLICITY IN A NUTSHELL, supra note [ 38 ], at Appendix, for the breakdown, state by state, of
states recognizing either a publicity law theory by statute or common law, or a privacy law theory by statute or
common law, and the three states—Alaska, North Dakota, and Wyoming—that do not embrace either theory.
48
The motivating case was Roberson v. Rochester Folding Box Co. and Franklin Mills Flour Co., 64 N.E.442 (N.Y.
1902), that reversed a woman’s claim for harmful unconsented exposure of her face in a commercial
advertisement. Roberson is discussed infra [ on the next page ].
49
N.Y. Civ. Rights L. § 50, 51.

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another is subject to liability to the other for invasion of his privacy.”50 Deepfakes that seek to
exploit a person’s image, especially a private, non-celebrity’s image, for pecuniary or
commercial gain tread this pathway of privacy law.
Deepfakes might exploit the image and attributes of completely private persons in
addition to public figures and celebrities, which means the deepfake scenario matches the
famous “origin story” privacy case of Roberson v. Rochester Folding Box Co. and Franklin Mills
Flour Co.51 In this case, Abigail Roberson alleged that the unauthorized use of her photograph in
flour advertisements caused her significant mental anguish and humiliation. (One must
remember the decency and propriety standards of the early twentieth century when assessing
her reaction to unexpected and unauthorized exposure in commercial advertising). The New
York Court of Appeals ultimately overturned the lower courts' rulings, which had favored
Roberson's claim regarding the non-consensual use of her image in commercial advertising.52
The Court of Appeals declined to recognize or infer a common law cause of action for the
misappropriation of an individual's name, image, or likeness. The extensive media coverage of
Roberson's ordeal, highlighting her emotional suffering, spurred the New York State legislature
to enact sections 50 and 51 of the N.Y. Civil Rights Law in 1903.
Pavesich v. New England Life Ins. Co.,53 tells the story of Paolo Pavesich who sought relief
for the humiliation and distress he endured because of the unauthorized use of his photograph
in a life insurance advertisement. Contrary to being depicted as the impoverished and ailing
individual who neglected to secure life insurance ("The man who didn’t"), Pavesich was
represented as the astute and prosperous "Man who did" purchase insurance, thereby reaping
the benefits of his prudent decision. Despite this favorable portrayal, Pavesich claimed he
suffered significant emotional distress from the embarrassment of being featured in a
commercial advertisement without his consent in a manner that parallels the experience of
Abigail Roberson.
Pavesich alleged a claim to remedy the harms of embarrassment and humiliation from
being unwillingly exposed to public attention,54 but the Georgia Supreme Court framed the
analysis as a violation of a fundamental right arising from a person’s persona or “personhood.”
The Georgia Supreme Court invoked natural law and substantive due process theories when it
declared that the
right to withdraw from the public gaze . . . [is] embraced within the right of
personal liberty . . . derived from natural law, recognized by the principles of
municipal law, and guarantied to persons in this state both by the Constitutions

50
Restatement (Second) of Torts § 652(C).
51
Roberson v. Rochester Folding Box Co. and Franklin Mills Flour Co., 64 N.E.442 (N.Y. 1902).
52
Id.
53
Pavesich v. New England Life Ins. Co., 50 S.E. 68 (Ga. 1905).
54
Pavesich, 50 S.E. 68, involved claims for embarrassment and public humiliation.

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of the United States and of the state of Georgia . . . that no person shall be
deprived of liberty except by due process of law.55
The Restatement (Second) of Torts frames the natural law and substantive due process
theories as “Intrusion Upon Seclusion,” wherein: “One who intentionally intrudes, physically or
otherwise, upon the solitude or seclusion of another or his private affairs or concerns, is subject
to liability to the other for invasion of his privacy, if the intrusion would be highly offensive to a
reasonable person.”56 Many deepfakes directly implicate these protections because they are
not about seeking commercial or pecuniary gain from the exploitation of a person’s name,
image, or persona, but instead are driven by personal animosity, revenge, simple pranking and
amusement, or a private or political interest in disinformation.
An additional theory of recovery—false endorsement or false designation or origin—
was recognized early in twentieth century in a case involving the inventor, Thomas Edison. 57 A
medicine manufacturer stole Mr. Edison’s name and likeness and forged a certification from the
inventor to promote the sale of Edison’s Polyform, a neuralgic remedy.58 The false endorsement
or false designation of origin theories later were enacted as part of the Lanham Act, 15 U.S.C. §
1125(a), and they became trademark law claims with the standard trademark requirements of
use in commerce and proof of a likelihood of consumer confusion concerning the
endorsement.59 More generally, the Restatement (Third) of Unfair Competition, Section 46,
frames this theory in a manner that overlaps right of publicity law:
One who appropriates the commercial value of a person’s identity by using
without consent the person’s name, likeness, or other indicia of identity for
purposes of trade is subject to liability for the relief appropriate under the rules
stated in § § 48 and 49 [on injunctions and monetary relief].60
In the middle of the twentieth century in the United States, the nature of the claims
addressed by privacy law shifted in two directions from their initial focus on personal injury and
tort claims seeking remedies for physical and mental injuries from infliction of emotional
distress, embarrassment, humiliation, and anguish. One shift recognized that celebrities and
sports figures did not suffer personal injuries for embarrassment and humiliation from their
name and image being used in a public manner; after all, these persons performed their careers

55
Id. at 70, 71.
56
Restatement (Second) of Torts § 652(B).
57
Edison, 67 A. at 394–95. See image at: Anesthesiology Reflections from the Wood Library-Museum, Edison’s
Polyform, https://www.woodlibrarymuseum.org/wp-
content/uploads/reflections/1172398_Edison_s_Polyform_Bause_GS.pdf (last accessed Jun. 20, 2024).
58
Id.
59
E.g., Souza v. Exotic Island Enterprises, Inc., 68 F.4th 99, 116–17 (2d Cir. 2023).
60
Restatement (Third) of Unfair Competition § 46 (Am. L. Inst. 1995). This provision is entitled, “Appropriation of
the Commercial Value of a Person’s Identity: The Right of Publicity,” noting the overlap in the nature of the false
endorsement and right of publicity claims.

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and a good portion of their lives in the public eye.61 But the courts recognized that the images
and personae being exploited were valuable, so the focus of this line of recovery—which
replaced the term right of “privacy” with right of “publicity”—followed a property law theory to
recover pecuniary injuries from a commercial appropriation of a valuable name, image, or
likeness.62 The other shift took privacy law into new areas in cases such as Griswold v.
Connecticut,63 Roe v. Wade,64 and Lawrence v. Texas,65 where privacy became an umbrella term
for protection of civil rights and personal freedoms. But even after the split occurred, the
original conception of privacy as a protection of private matters, seclusion, and dignity
continued into the twenty-first century.66
Parts II, III, and IV below break down the deepfake issue into property-based claims
under the right of publicity, tort and personal injury claims under the right of privacy, and
trademark consumer confusion claims under the theories of false endorsement and false
designation of origin. Part V discusses the role of the First Amendment in constraining each of
these claims in light of the inherent expressive nature of deepfakes.

II. Property claims under the right of publicity regarding the use of deepfakes in
commercial speech and other contexts
A. The modalities of right of publicity law

Deepfakes that exploit a person’s name, likeness, persona, or aspects of their

personality for personal gain and advantage, especially in commercial speech for advertising or
brand-promotion purposes, are easier to evaluate than the tort and personal injury claims
discussed in Part III below simply because the nature of the exploitation is obvious and the

61
See, e.g., O’Brien v. Pabst Sales Co., 124 F.2d 167 (5th Cir. 1941), in which a college all-star quarterback could not
prevail on a privacy action for publication of his image and name among other football all-stars in a beer company
calendar that contained beer advertising. The court found that the information and depiction in the calendar was
truthful and not defamatory, and O’Brien regularly consented to widespread publicity, and so the court found that
O’Brien had suffered no privacy harm from this particular publicity even though O’Brien did not approve of alcohol
consumption.
62
See, e.g., Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953) (recognizing a right of
publicity claim as a property action for the wrongful appropriation of a name, image, or likeness of an athlete, as
opposed to a personal injury action in tort).
63
Griswold v. Connecticut, 381 U.S. 479 (1965).
64
Roe v. Wade, 410 U.S. 113 (1973).
65
Lawrence v. Texas, 539 U.S. 558 (2003).
66
See, e.g., Time, Inc. v. Hill, 385 U.S. 374 (1967) (false light claim of a private, non-public figure); Galella v. Onassis,
353 F. Supp. 196 (S.D.N.Y. 1972), aff’d and modified, 487 F.2d 986 (2d Cir. 1973) (invasion of privacy claims
regarding paparazzi’s stalking of former president’s widow and children); Nussenzweig v. diCorcia, 11 Misc. 3d
1051(A) (N.Y. Cty. 2006), aff’d, 38 A.D.3d 339 (1st Dep’t), certified question answered, order aff’d, 9 N.Y.3d 184
(2007) (privacy claims from unconsented exposure in art exhibition and advertising against plaintiff’s religious
objections); Foster v. Svenson, 7 N.Y.S.3d 96 (N.Y. App. Div. 1st Dep’t 2015) (privacy claims from unconsented use
of telephoto photography to capture images of persons and pets in high rise apartments).

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scenarios are familiar having given rise to litigation and adjudication many times over the last
115 years. Deepfakes cause concern because they can operate in multiple modalities of images,
text, audio recordings of voice and singing performances, and audio-visual presentations
involving all of these modalities. But right of publicity law is equipped to address deepfakes in
each of these modalities as demonstrated by the following examples:

• Ali v. Playgirl, Inc., 447 F. Supp. 723 (S.D.N.Y. 1978): the boxer’s silhouette and moniker
as “The Greatest.”
• Carson v. Here’s Johnny Portable Toilets, 698 F.2d 831 (6th Cir. 1983): the “Here’s
Johnny” intro for the late-night comedian.
• Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988): the distinctive sound of Midler’s
singing voice.
• Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989): the first name, Ginger, of the famous
dancing star of films with Fred Astaire.
• Abdul-Jabbar v. General Motors Corp., 85 F.3d 407 (9th Cir. 1996): the basketball
player’s appearance as a college NCAA star playing under his birth name, Lew Alcindor.
• Newcombe v. Adolf Coors Co., 157 F.3d 686 (9th Cir. 1998): the Dodger pitcher’s jersey
number and distinctive high leg kick windup.
• Henley v. Dillard Dep’t Stores, 46 F. Supp. 2d 587 (N.D. Tex. 1999): the name of the
singer, “Henley,” when used to advertise a certain style of shirt, also called “Henley.” 67
• Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001): the in-drag
appearance of the movie star in the title role of “Tootsie.”
• Doe v. TCI Cablevision, 110 S.W.3d 363 (Mo. 2003): hockey player’s name and
reputation used as a nickname for an “enforcer” character in a graphic novel.
• Facenda v. N.F.L. Films, Inc., 542 F.3d 1007 (3d Cir. 2008): the distinctive sound of the
football announcer’s voice.
• Dillinger, LLC v. Electronic Arts Inc., 795 F. Supp. 2d 829 (S.D. Ind. 2011): The FBI Public
Enemy No. 1‘s name and reputation for using a Thompson submachine gun.

There is no substantive gap in the coverage of right of publicity law and the manner in
which a person’s persona and personality may be exploited by deepfakes. Some states—no
doubt employing a “belt and suspenders” sensibility—have written special legislation to make
explicit what courts have long enforced as implicit protections of publicity law. Tennessee
enacted the “ELVIS” Act (Ensuring Likeness Voice and Image Security Act)68 to make explicit the

67
See also Martha Neil, Clothier settles with Eagles singer over 'Don a Henley and Take It Easy' ad, ABA Journal
(Apr. 17, 2015 11:50 A.M.), https://www.abajournal.com/news/article/clothier_settles_with_eagles_singer
_over_don_a_henley_and_take_it_easy_ad#google_vignette.
68
Act of March 21, 2023, amending Tenn. Code Ann. Title 39, Chapter 14, Part 1, and Title 47 (enacted Mar. 7,
2024; effective July 1, 2024).

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protection of a performing artist’s singing voice and vocal recordings.69 Likewise, Illinois
amended its “Michael Jordan” era right of publicity statute to make explicit that deepfakes of
performing artists’ vocal recordings and other types of generative AI “digital replicas” fall within
the coverage of the statute.70 New York amended its venerable 1903 Civil Rights Law §§ 50, 51
in 2020 and 2022 to add provisions granting post-mortem publicity rights and adding specific
references to “digital replicas” and “sound recordings,”71 and in 2024, to add provisions
regarding creation and dissemination of “unconsented intimate images,”72 which specifically
attempts to address the revenge porn and harassment-type uses of deepfaked images.

B. Commercial speech and the right of publicity

Within the realm of right of publicity litigation, there is a special topic that brings all of
the values and public policy supporting the right together in clear focus: use of a name, image,
likeness, or aspects of the claimant’s personality in commercial speech. Commercial speech is
defined as “expression related solely to the economic interests of the speaker and its
audience,”73 and “speech that does no more than propose a commercial transaction.”74 These
terms encompass all “advertising,” defined as speech that merely advertises a product or
service for business purposes.75 Commercial speech is protected speech,76 but it enjoys a lower
level of protection under the First Amendment than non-commercial speech.77 This status has a
direct bearing on the assertion of a fair use defense in right of publicity and right of privacy
claims because a deepfake that uses a name, image, likeness, or persona in commercial speech
is most likely doomed to fail.78

As described earlier, deepfakes are remarkably easy to pull off with today’s transformer-
latent diffusion model generative AI systems. The designers and developers of these systems
occasionally put a ban or guardrail on the system’s acting on prompts that call for the

69
Id. The act specifically seeks to head off the scenario of a deepfake song recording emulating or imitating the
distinctive singing voice of a celebrity, such as Ghostwriter977’s deepfake imitating the voices of Drake and The
Weeknd in a new song, Heart on My Sleeve. See Keiran Southern, ‘Elvis Act’ aims to protect musicians from AI voice
clones, THE TIMES (Mar. 24 2024, 3.08pm BST), https://www.thetimes.com/world/article/elvis-act-aims-to-protect-
musicians-from-ai-voice-clones-zv80776pz; Thom Waite, The ELVIS Act takes steps to protect musicians’ voices
from AI deepfakes, DAZED (Mar. 2024), https://www.dazeddigital.com/music/article/62271/1/the-elvis-act-takes-
steps-protect-musicians-voices-ai-deepfakes-tennessee-law.
70
Ill. Public Act 103-0836, amending 765 Ill. Comp. Stats. 1075/5, 1075/20, 1075/30 (enacted Aug. 9, 2024;
effective Jan. 1, 2025).
71
N.Y. Civil Rights Law § 50-F (McKinney 2022).
72
N.Y. Civil Rights Law § 52-B (McKinney 2024).
73
Central Hudson Gas & Elec. Corp. v. Public Serv. Comm'n, 447 U.S. 557, 561 (1980).
74
See Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer Council, Inc., 425 U.S. 748, 762 (1976).
75
See 44 Liquormart, Inc. v. Rhode Island, 517 U.S. 484, 495-96 (1996).
76
Bigelow v. Virginia, 421 U.S. 809, 825-26 (1975); Virginia Bd. of Pharmacy, 425 U.S. at 762.
77
Sorrell v. IMS Health Inc., 564 U.S. 552, 579 (2011); 44 Liquormart, 517 U.S. at 502.
78
E.g., Jordan v. Jewel Food Stores, Inc., 743 F.3d 509, 518–20 (7th Cir. 2014).

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generation of an image of a celebrity or politician, but in my experience these bans are

inconsistently enforced. One of the newer systems is Flux Pro, and it occasionally stopped me
from generating images of then Democratic presidential candidate Kamala Harris, but then
later, often on the same day, allowed me to produce images of the candidate, including the
following images, one of which brought in Steph Curry wearing his Golden State Warriors
jersey79:

The systems are far less finicky about displaying trademarked logos and trade dress of
famous brands in their generations such as the Coca Cola logo above and the famous logos and
trade dress in the following examples:

80 NFL logo and team trade dress 81 Kentucky Fried Chicken logo 82Jack Daniel’s and Marlboro trade
dress

79
Michael D. Murray, Three deepfakes of Kamala Harris (Aug. 22, 2024) (images created with the assistance of Flux
Pro).
80
Image source: Michael D. Murray, Double Taylor Swift deepfakes drinking beer and wearing branded NFL attire
(Apr. 20, 2024) (image created with the assistance of Stable Diffusion).
81
Image source: Michael D. Murray, Deepfake of Dwayne Johnson and John Cena eating Kentucky Fried Chicken
(Aug. 23, 2024) (image created with the assistance of Flux Pro).
82
Image source: Michael D. Murray, Deepfake of man drinking from a Jack Daniel’s bottle and holding a pack of
Marlboro cigarettes (Apr. 21, 2024) (image created with the assistance of Flux Pro). Not all of the wording on the
Jack Daniel’s bottle was captured, but it is obviously shaped and entitled with the right trade dress.

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Deepfakes may cause you to ask, did a youthful Steph Curry get his start at McDonald’s? 83

Apparently, Taylor Swift worked at McDonald’s, too. 84 As with Steph Curry, Swift is depicted
as a teenager here, perhaps because Flux Pro believed that teenaged versions of these
celebrities are more likely to be found working at McDonald’s. Note, too, the way that Flux
Pro made Taylor Swift’s hair look like it was inside the kitchen area at McDonald’s for several
hours; nice attention to detail—and I didn’t ask it to do that:

LeBron James apparently favored Pizza Hut, or so my images created using Flux Pro might
cause you to believe:

85

As discussed in Part I above, a failed claim of wrongful appropriation of a person’s image

and likeness in commercial advertising86 was the impetus for New York State’s passage of the

83
Michael D. Murray, A four pack of Steph Curry deepfakes wearing McDonald’s branded attire (Aug. 29, 2024)
(image created with the assistance of Flux Pro). Not all of them are great Steph Curry fakes, but the logos are great.
84
Michael D. Murray, A four pack of Taylor Swift deepfakes wearing McDonald’s branded attire (Aug. 29, 2024)
(image created with the assistance of Flux Pro).
85
Michael D. Murray, A four pack of LeBron James deepfakes wearing Pizza Hut branded attire or eating Pizza hut
pizza (Aug. 29, 2024) (image created with the assistance of Flux Pro).
86
Roberson v. Rochester Folding Box Co. and Franklin Mills Flour Co., 64 N.E.442 (N.Y. 1902).

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nation’s first right of privacy law in 1903.87 Similarly, the first establishment of a common law
right of privacy claim against unconsented appropriation of an image and likeness also occurred
in the context of commercial advertising, in Pavesich v. New England Life Ins. Co.,88 in Georgia in
1905.
The use of a famous person’s name, identity, image, or persona in the context of
commercial speech (i.e., advertising of a product or service) is the paradigmatic scenario for a
right of publicity claim. In the commercial speech context, all of the elements of the claim are
aligned:

• The advertiser exploited the plaintiff’s image or persona due to its inherent value in
attracting consumers to the advertiser’s product or service.
• The advertiser profited either through increased sales or by saving costs associated with
sponsorship or endorsement fees.
• The plaintiff incurred financial losses, either by not receiving compensation for the
sponsorship or a share of sales, or by suffering harm from the unauthorized association
with the advertiser’s products or services.
• Various public policy considerations underpinning right of publicity law converge in
support of recovery in this commercial speech context, including consumer confusion
from false endorsement implications, unjust enrichment of the advertiser at the
plaintiff’s expense, and the denial of rightful compensation for the plaintiff’s efforts.
The commercial speech context also lessens the pressures against recovery brought
about by the First Amendment freedoms of press and expression because commercial speech is
the lowest form of protected speech in the First Amendment cosmos.89 Under First Amendment
jurisprudence, commercial speech is all about business, and while business information is
important,90 it rarely edifies or educates the audience or enriches the listeners.91 Therefore,
many of the most memorable (and successful) right of publicity claims have occurred in the
commercial speech context:

87
N.Y. Civ. Rights Law §§ 50, 51 (McKinney 1903), L.1903, c. 132.
88
Pavesich v. New England Life Ins. Co., 50 S.E. 68 (Ga. 1905).
89
See Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm'n of New York, 447 U.S. 557, 562–63 (1980); Ohralik v.
Ohio State Bar Assn., 436 U.S. 447, 455–57 (1978); Bates v. State Bar of Arizona, 433 U.S. 350, 380–82 (1977).
90
The Supreme Court has recognized that commercial speech including advertising has an “informational function”
and is not “valueless in the marketplace of ideas.” Central Hudson, 447 U.S. at 563; Bigelow v. Virginia, 421 U.S.
809, 826 (1975).
91
E.g., Florida Bar v. Went For It, Inc., 515 U.S. 618, 623 (1995) (“We have always been careful to distinguish
commercial speech from speech at the First Amendment's core”).

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In Midler v. Ford Motor Co.,93 Bette Midler’s singing

voice was mimicked by one of her back-up singers in an
advertisement for Ford automobiles. The court
accepted that a claim could be made for the valuable
sound of the star’s singing voice separate from the
other intellectual property rights associated with the
92 song that had been licensed by Ford.
In Newcombe v. Coors,96 a case featuring the use of a
celebrity athlete’s persona and a facsimile of his
likeness, but not his actual name or identity, Don
Newcombe prevailed against Coors, the maker of
Killian’s Red, because Coor’s had conjured up
Newcombe’s persona by showing a pitcher with
Newcombe’s distinctive high kick windup wearing a
jersey number (39) similar to Newcombe’s own number
94 95
(36) when he pitched for the Dodgers.

97
Henley v. Dillards99 -- The popular but innocuous
Henley shirt has led to a number of lawsuits. Eagles
rock group front man, Don Henley, polices the use of
his name carefully. When Dillard Dep’t Stores ran the
ad at left, featuring the word play, “This is Don. This is
Don’s Henley,” the singer sued and prevailed on a right
98 of publicity claim that this ad exploited his identity and
persona.100

92
Image source: Bette Midler Doesn’t Need “Divine Intervention” To Sound Great With L-Acoustics (Jan. 7, 2015),
https://www.live-production.tv/news/shows/bette-midler-doesn%E2%80%99t-need-%E2%80%9Cdivine-
intervention%E2%80%9D-sound-great-l-acoustics.html.
93
Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988).
94
Image source: John Racanelli, Don Newcombe and His Likeness: You Be the Judge, FAN GRAPHS (Mar. 15, 2019),
https://community.fangraphs.com/don-newcombe-and-his-likeness-you-be-the-judge/.
95
Image Source: Ashley Brandt, Remember that time Don Newcombe took on Coors over that Killian’s Red
advertisement and advanced the cause of sports celebrities and the use of their likenesses?, LIBATION LAW (Feb. 20,
2019), https://libationlawblog.com/2019/02/20/remember-that-time-don-newcombe-took-on-coors-over-that-
killians-red-advertisement-and-advanced-the-cause-of-sports-celebrities-and-the-use-of-their-likenesses/.
96
Newcombe v. Adolf Coors Co., 157 F.3d 686 (9th Cir. 1998).
97
Image source: Eric Goldman, Rebecca Tushnet, Featuring People in Ads (2014 Edition) (2014),
https://digitalcommons.law.scu.edu/facpubs/871/.
98
Image source: Gabriela Tully Claymore, Wisconsin Clothing Company Makes Court-Ordered Apology To Don
Henley, Promises To ‘Take It Easy’ On The Shirt Puns, STEREOGUM NEWS (Apr. 17, 2015, 9:51 AM),
https://www.stereogum.com/1795118/wisconsin-clothing-company-makes-court-ordered-apology-to-don-henley-
promises-to-take-it-easy-on-the-shirt-puns/news/.
99
Henley v. Dillard Dep’t Stores, 46 F. Supp. 2d 587 (N.D. Tex. 1999).
100
Id.

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This play on the words “Don” and “Henley” apparently

is irresistible, as Duluth Trading Co. fell prey to
temptation and ran an ad stating “Don a Henley and
Take it Easy” forcing Mr. Henley to sue them; the case
settled.101

102 In Abdul-Jabbar v. General Motors Corp.,103 Kareem

Abdul-Jabbar sued General Motors for displaying
footage of the star playing NCAA basketball under his
birth name of Lew Alcindor in an ad for Oldsmobile Cars
that ran during the NCAA tournament. Although the
footage was relevant to the tournament, it was not
related to or relevant to the automaker’s cars, and
Abdul-Jabbar prevailed on his publicity claim.

In Waits v. Frito Lay,105 singer Tom Waits prevailed

against Frito Lay when the latter hired a singer to mimic
the famously raspy sound of Waits’ singing voice in a
Doritos commercial. Like Midler, the court construed
the facts as supporting the claim that the chip maker
had conjured enough of Wait’s persona and identity
104 through his voice alone to unfair exploit his publicity
value.

101
Martha Neil, Clothier settles with Eagles singer over 'Don a Henley and Take It Easy' ad, ABA Journal (Apr. 17,
2015 11:50 A.M.), https://www.abajournal.com/news/article/clothier_settles_with_eagles_singer
_over_don_a_henley_and_take_it_easy_ad#google_vignette
102
Image source: Andy Wittry, Kareem Abdul-Jabbar: College stats, best moments, quotes, NCAA.com (Feb. 4,
2022), https://www.ncaa.com/news/basketball-men/article/2020-05-04/kareem-abdul-jabbar-college-stats-best-
moments-quotes.
103
Abdul-Jabbar v. General Motors Corp., 85 F.3d 407 (9th Cir. 1996).
104
Image source: r/tomwaits, https://www.reddit.com/r/tomwaits/comments/1c0kul4/on_april_10th
_1990_tom_waits_took_doritos_chips/.
105
Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992).

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The Carson v. Here’s Johnny Portable Toilets107 case

reveals another instance where a celebrity’s identity
and persona were conjured up, not by using his name
or likeness, but by using a tagline, “Here’s Johnny!” that
the comedian, Johnny Carson, was famously associated
with because his sidekick, Ed McMahon, announced his
106 entrance on his nightly late show with this tagline.
Using the conjured identity and persona in trade dress
and promotional materials to benefit the portable toilet
company violated Mr. Carson’s right of publicity.

In Lohan v. E*Trade,109 actress Lindsay Lohan asserted

a claim that E*Trade had exploited her valuable
persona by making a reference to a “Milkaholic
Lindsay” (portrayed in the commercial by a toddler
who, like Ms. Lohan, had red hair) in a Super Bowl
commercial for the trading platform. Lohan apparently
108 believed her drinking problems—albeit with alcohol,
not milk—were established enough to call to mind the
actress, but the case settled before the issues could be
explored as to whether Ms. Lohan had achieved the
“One name superstar status” of performers like Elvis,
Beyoncé, Cher, Bono, and Madonna.110

Deepfakes that bring a person’s name, identity, persona, or a recognizable likeness into
commercial advertising for the promotion of a money-making endeavor should follow the same
pathway as the cases discussed above. But while examples such as those the author created at
the start of this section111 are intended to be fairly blatant in their commerciality, many
deepfakes will be “one off” works displaying or conjuring up a person, but not necessarily in a
manner that suggests advertising of a product or service or commerciality of any kind.

106
Image source: Ankit Rastogi, Carson v. Here’s Johnny Portable Toilets, Inc., INDIAN CASE LAW (Jul. 8, 2020),
https://indiancaselaws.wordpress.com/2020/07/08/carson-v-heres-johnny-portable-toilets-inc/.
107
Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983).
108
Image source: Michael D. Murray, Thumbnail-size excerpt of a screen capture from the E*Trade “Milkaholic
Lindsay” commercial, at issue in the case, Lohan v. E*Trade Sec. LLC, No. MOTION M-5262X, 2010 WL 4608641
(N.Y. App. Div. Nov. 16, 2010).
109
Lohan v. E*Trade Sec. LLC, No. MOTION M-5262X, 2010 WL 4608641 (N.Y. App. Div. Nov. 16, 2010).
110
Jennifer Peltz, Lindsay Lohan ends lawsuit over E-Trade baby ad, USA TODAY (Sep. 21, 2010, 8:48 AM),
http://usatoday30.usatoday.com/life/people/2010-09-21-lohan-settles-etrade-suit_N.htm.
111
See images accompanying notes [ 79-87 ], supra.

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One question to consider is, is every deepfake an advertisement for “itself” and its
creator? The answer is no. When a deepfake stands alone and is not using a person’s name,
identity, likeness, or personal for the promotion of a commercial money-making endeavor, the
law will not simply convert the deepfake into commercial speech as an advertisement for itself
and its creator.112 The fact that speech is sold for profit also does not convert regular First
Amendment expression into less protected commercial speech.113
Nor is it the case that every use of a person’s name, likeness, identity, or persona that
triggers the elements of a right of publicity or right of privacy claim also constitutes commercial
speech.114 Right of privacy and right of publicity laws are careful to separate uses in trade and
commerce that constitute advertising from those that are not advertising and commercial
speech. For example, New York Civil Rights Law § 50 states:
Right of privacy. A person, firm or corporation that uses for advertising purposes,
or for the purposes of trade, the name, portrait or picture of any living person
without having first obtained the written consent of such person, or if a minor of
his or her parent or guardian, is guilty of a misdemeanor.
Fla. Stat. Section 540.08 reads in pertinent part:
No person shall publish, print, display, or otherwise publicly use for purposes of
trade or for any commercial or advertising purpose the name, portrait,
photograph, or other likeness of any natural person without the express written
or oral consent to such use ....115
Therefore, as suggested by the sources cited above,116 there is or will be a distinction between
truly commercial “uses in commerce” that do not involve the use of a deepfake as a commercial
speech advertisement of other goods or services, compared to actual commercial speech
applications of deepfakes in advertising and promotion, and compared to non-commercial,
non-advertising, non-promotional uses of deepfakes for other expressive purposes. Deepfakes
that do not fulfill the definition of commercial speech advertising or promotion are not
disfavored, lowest-level protected speech and will have a greater chance of balancing out the
publicity or privacy rights at issue.117

112
See, e.g., Almeida v. Amazon.com, Inc., 456 F.3d 1316, 1324 (11th Cir. 2006); Mackey v. PeopleConnect, Inc.,
No. 22 C 342, 2023 WL 2561621, at *10-12 (N.D. Ill. Mar. 17, 2023). See generally Jennifer E. Rothman, Commercial
Speech, Commercial Use, and the Intellectual Property Quagmire, 101 VA. L. REV. 1929, 1959–65 (2015)
(distinguishing commercial use from commercial speech).
113
See, e.g., Bd. of Trustees of State Univ. of New York v. Fox, 492 U.S. 469, 482 (1989); Virginia State Bd. of
Pharmacy v. Virginia Citizens Consumer Council, Inc., 425 U.S. 748, 761 (1976) (collecting cases).
114
See, e.g., In re Jackson, 972 F.3d 25, 38 (2d Cir. 2020) (citing Restatement (Second) of Torts § 652C (Am. L. Inst.
1977)).
115
Fla. Stat. § 540.08. See also Almeida, 456 F.3d at 1324.
116
See sources cited in notes [ 115, 116 ], supra.
117
See Section V, infra.

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III. Tort claims of defamation, fraud, sexual harassment, intentional infliction of

emotional distress, and other personal injury claims
Beyond the property-based claims discussed above in Section II, deepfakes have begun
to be involved in cases raising claims of defamation,118 fraud,119 sexual harassment,120 and
other personal injury claims, particularly claims involve harmful AI driven decisions in health
care and insurance.121 There is no categorical classification that sorts the use of deepfakes into
civil tort law vs. criminal law offenses. Instead, the nature of the wrongs perpetrated by persons
using deepfakes determine whether the proper action to confront, remedy, or vindicate the
wrong falls in civil law tort claims (e.g., privacy claims of invasion of privacy, public disclosure of
private facts; reputational claims of defamation or false light; appropriation claims; and
infliction of emotional distress claims) or criminal law offenses (domestic abuse, harassment by
intimidation and sexual harassment, hate crimes, cyberbullying, and stalking or
cyberstalking).122
Although incidents involving deepfakes make headlines, there are very few reported
cases on Westlaw where deepfakes are even mentioned. One case that received some

118
Walters v. OpenAI L.L.C., No. 23-A-04860-2 (Ga. Super. Ct. Gwinnett County Jun. 5, 2023). See Eugene Volokh,
First (?) Libel-by-AI (ChatGPT) Lawsuit Filed, The Volokh Conspiracy (Jun. 6, 2023),
https://reason.com/volokh/2023/06/06/first-ai-libel-lawsuit-filed/. See also Byron Kaye, Australian mayor readies
world's first defamation lawsuit over ChatGPT, Reuters (Apr. 5, 2023 2:52 p.m.),
https://www.reuters.com/technology/australian-mayor-readies-worlds-first-defamation-lawsuit-over-chatgpt-
content-2023-04-05/ (Australia).
119
This section discusses the civil law concept of fraud as a tort. The criminal law concept of fraud as a crime or
regulatory violation is discussed in Murray, Deepfake Crime and Punishment, supra note [ 8 ]. The concepts
sometimes overlap, as in the example of deepfake technology used to generate music posted on Spotify which was
followed by the creation of thousands of fraudulent bot accounts that downloaded the music generating royalties
for the deepfaker. In addition to exposure for committing civil fraud against Spotify, the accused perpetrator was
charged with the crimes of wire fraud conspiracy, wire fraud, and money laundering. See Michael Kan, Musician
Arrested for Using AI Music and Bots to Swindle Royalties From Spotify, PCMAG (Sep. 6, 2024),
https://www.pcmag.com/news/musician-arrested-for-using-ai-music-and-bots-to-swindle-royalties-from.
120
See e.g., Vishwam Sankaran, ChatGPT cooks up fake sexual harassment scandal and names real law professor as
accused, INDEPENDENT (Apr. 6, 2023 7:15 a.m.), https://www.independent.co.uk/tech/chatgpt-sexual-harassment-
law-professor-b2315160.html
121
ArentFox Schiff, Health Insurers Sued Over Use of Artificial Intelligence to Deny Medical Claims, JDSUPRA (Dec.
22, 2023), https://www.jdsupra.com/legalnews/health-insurers-sued-over-use-of-2609382/; Corey Friedman, The
near future? AI, insurance claims and injury victims, ROMANO LAW GROUP (Aug. 29, 2023),
https://romanolawgroup.com/industry-insights/artificial-intelligence-and-insurance-claims/; James Swartz, Can I
Sue A Robot? Artificial Intelligence And Personal Injury Claims, SWARTZ & SWARTZ (Jun. 4, 2023),
https://swartzlaw.com/can-i-sue-a-robot-artificial-intelligence-and-personal-injury-claims/. The newness of these
claims prevents the author from commenting on whether the allegations relate to false and faked generative
information analogous to deepfakes, or merely a harmful outcome from a malfunctioning or misapplied algorithm.
122
See Molly Mullen, A New Reality: Deepfake Technology and the World Around Us, 48 MITCHELL HAMLINE L. REV.
210, 233 (2022); Nicholas Schmidt, Privacy Law and Resolving ‘Deepfakes' Online, IAPP (Jan. 30, 2019),
https://iapp.org/news/a/privacy-law-and-resolving-deepfakes-online/.

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notoriety is that of Rafaella Marie Spone. In July 2020, Spone anonymously sent accusatory
messages to the parents and coaches of three cheerleaders on her own daughter’s competitive
cheerleading squad; this led to Spone’s conviction for “cyber harassment of a minor” in Bucks
County, Pennsylvania.123 In the case, Spone was accused of creating deepfaked photos and
videos from the girls’ social media accounts and doctored them to make one of the girls appear
nude in a public place, and other girls were made to appear as if they had been drinking alcohol
and vaping. At least one of the deepfaked videos was sent to the coaches of the Doylestown-
based cheerleading squad in an attempt to get one of the girls kicked off the team. Spone also
was alleged to have phoned one of the girls, telling her, "You should kill yourself." Spone denied
the allegations but was convicted. Spone’s story was sensationalized and largely fictionalized in
a series on the Tubi network called “Deadly Cheer Mom.”124 (See screen capture below125).
Partly in response to the
sensational negative coverage of
her case, Spone later filed a § 1983
civil action alleging the use of
fabricated evidence by the Bucks
County prosecutor and a police
officer of the local township and
separately alleging state claims for
defamation and false light against
the prosecutor and officer and
other defendants, including one of
her principle accusers from the
harassment prosecution,
cheerleader Madeline Hime; all of Spone’s claims were dismissed.126 The alleged “deepfake”
angle of the story certainly added to the sensational nature of the story of the case, but the
actual laws involved were routine criminal harassment laws. Although speech and expression
were involved—the texts, phone messages, and alleged deepfaked photos and videos were,
after all, expression—the case did not raise First Amendment concerns because the First
Amendment does not shield criminal acts that happen to be carried out through expression, a
principle that states when speech is integral to criminal conduct it is not shielded by the First
Amendment.127

123
Pat Ralph, Bucks County mom found guilty of harassing daughter's cheerleader teammates, PHILLY VOICE (Mar.
26, 2022), https://www.phillyvoice.com/mom-raffaela-spone-guilty-harassment-cheerleaders-bucks-county-
pennsylvania/.
124
Deadly Cheer Mom trailer, YouTube (Mar. 25, 2022), https://youtu.be/1Jkp2stGXUQ.
125
Screen capture (at 0.39/1.20) from Deadly Cheer Mom trailer, YouTube (Mar. 25, 2022),
https://youtu.be/1Jkp2stGXUQ.
126
See Spone v. Reiss, No. CV 23-0147, 2024 WL 1120375, at *3-4 (E.D. Pa. Mar. 14, 2024).
127
See, e.g., United States v. Hansen, 599 U.S. 762, 783 (2023); United States v. Alvarez, 567 U.S. 709, 717 (2012).

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Project Veritas v. Schmidt128 raises bona fide First Amendment challenges to an Oregon
law that prohibits, inter alia, secret recordings of conversations. Deepfakes made a cameo
appearance in the case as the dissenting Judge Christen, arguing in favor of the constitutionality
of the statute, asserted that “anyone can access and learn how to use AI-powered generative
adversarial networks to create convincing audio or video ‘deepfakes’ that make people appear
to say or do things they never actually did. . . . The importance of the right [in the Oregon
statute] to have notice before one's oral communications are recorded cannot be overstated
because technology now allows recordings to be selectively edited, manipulated, and shared
across the internet in a matter of seconds.”129 The majority opinion anticipated and rebutted
the dissent’s position, stating that
victims of [deepfake] fabrications can vindicate their rights through tort
actions. . . . Moreover, deepfakes are not a problem unique to unannounced
recordings. Such “deepfakes” can be created just as easily with announced
recordings. As the dissent states, all one needs is “audio and video of the person
to be modeled” to create a “deepfake.”130

However, the Ninth Circuit panel’s decision has been vacated because the court granted a
rehearing en banc in the case,131 so whatever impact the aggravating factor of deepfake
technology plays in the evaluation of the constitutionality of the Oregon statute will have to
wait for the rehearing en banc.
In Soderberg v. Carrión,132 a case adjudicating a First Amendment facial challenge to
Maryland’s statutory ban on live recordings in courtrooms,133 the court raised and quickly
disposed of concerns over deepfakes potentially infecting trial recordings as an argument in
support of the ban. The court’s discussion of the issue was limited to a single footnote, stating
in relevant part
The State's concern about “deepfakes” and other manipulations of trial
recordings amounts only to “mere speculation about serious harm.” McManus,
944 F.3d at 522 (quoting Bartnicki, 532 U.S. at 531, 121 S.Ct. 1753). The State
fails to show that deepfakes are a tangible concern, as it does not offer even a
single example of trial recordings being manipulated in this manner in Maryland
or in any other jurisdiction. (Pls.’ Repl. 23.) See Ross v. Early, 746 F.3d 546, 556
(4th Cir. 2014) (requiring the state to “make some evidentiary showing that the
recited harms are real, not merely conjectural, and that the [law] alleviates these

128
Project Veritas v. Schmidt, 72 F.4th 1043 (9th Cir. 2023), reh'g en banc granted, opinion vacated, 95 F.4th 1152
(9th Cir. 2024).
129
Id. at 1075 (Christen, J, dissenting) (footnote omitted).
130
Id. at 1062 n. 15 (citing Animal Legal Def. Fund v. Wasden, 878 F.3d 1184, 1205 (9th Cir. 2018)).
131
Project Veritas v. Schmidt, 95 F.4th 1152 (9th Cir. 2024).
132
Soderberg v. Carrion, 645 F. Supp. 3d 460 (D. Md. 2022).
133
Md. Code § 1-201.

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harms in a direct and material way” (citations and alterations omitted)). In any
case, this issue may be more narrowly addressed by a law prohibiting misleading
alterations of trial recordings. Cf. Bartnicki, 532 U.S. at 529, 121 S.Ct. 1753 (“The
normal method of deterring unlawful conduct is to impose an appropriate
punishment on the person who engages in it.”).134

The legal theory of how deepfake defamation is established is clear enough: if a

deepfake falsely represents a private person in a way that harms their reputation, it could lead
to a defamation claim on a simple negligence theory; if a public official or public figure or
limited purpose public figure is defamed by a deepfake, particularly in cases involving news
reporting and public affairs commentary, the plaintiff will have to meet the actual malice
standard of intentional falsity or recklessness as to the truth.135
The Supreme Court has not resolved the question whether the actual malice standard
applies to a suit by a public official or public figure against a non-media defendant,136 and the
states and lower courts of appeals are split on the issue and whether the actual malice standard
applies to suits involving matters of purely private vs. public concerns.137 This may become an
important issue for future litigation as visual generative AI technology has put the ability to
make highly realistic and highly defamatory deepfakes into private hands that often will be
pursuing matters of purely private concerns of revenge or retaliation, or simply humor and
pranking.

134
Id. at 484 n. 18.
135
See Masson v. New Yorker Mag., Inc., 501 U.S. 496, 511–17 (1991); Milkovich v. Lorain J. Co., 497 U.S. 1, 8
(1990); Gertz v. Robert Welch, Inc., 418 U.S. 323, 334, 342 (1974).
136
Philadelphia Newspapers, Inc. v. Hepps, 475 U.S. 767, 779 n.4 (1986); Milkovich, 497 U.S. at 20 n.6 (leaving open
the question reserved in Hepps). See also Dun & Bradstreet v. Greenmoss Builders, 472 U.S. 749, 757–61 (1985)
(discussing impact of whether the defamatory matter relates to an issue of public concern); Gertz, 418 U.S. at 341–
48 (same); Flamm v. Am. Ass'n of Univ. Women, 201 F.3d 144, 148 (2d Cir. 2000) (same).
137
Compare Swengler v. ITT Corp. Electro-Optical Prod. Div., 993 F.2d 1063, 1071 & n.5 (4th Cir. 1993) (actual
malice is not a substantive element of defamation per se when claim involves nonmedia defendant), and Denny v.
Mertz, 106 Wis. 2d 636, 318 N.W.2d 141, cert. denied, 459 U.S. 883 (1982) (Gertz inapplicable to private figure
suits against nonmedia defendants), and Stuempges v. Parke, Davis & Co., 297 N.W.2d 252 (Minn. 1980) (same),
and Rowe v. Metz, 195 Colo. 424, 579 P.2d 83 (1978) (same); and Harley-Davidson Motorsports, Inc. v. Markley,
279 Or. 361, 568 P.2d 1359 (1977) (same), with Spacecon Specialty Contractors, LLC v. Bensinger, 713 F.3d 1028,
1035 & n.3 (10th Cir. 2013) (“[T]he balance should be struck in favor of a private plaintiff if his or her reputation
has been injured by a non-media defendant in a purely private context.”); Durando v. Nutley Sun, 209 N.J. 235, 37
A.3d 449, 457, 458 (2012)(“the actual-malice standard protects both media and non-media defendants who make
statements involving matters of public concern, regardless of whether the targets of the statements are public
figures or private persons"), and Lee v. TMZ Prods. Inc, 710 F. App'x 551, 560 (3d Cir. 2017) (same), and Britton v.
Koep, 470 N.W.2d 518, 521 (Minn. 1991) (“Minnesota affords to nonmedia defendants the same first amendment
protection for criticisms of public officials that it grants to the mass media.”), Tavoulareas v. Piro, 817 F.2d 762, 798
(D.C. Cir. 1987) (a nonmedia defendant is protected by the Sullivan standard of actual malice when sued by a
public figure), and Antwerp Diamond Exchange, Inc. v. Better Business Bureau, 130 Ariz. 523, 637 P.2d 733 (1981)
(same--Arizona), and Jacron Sales Co. v. Sindorf, 276 Md. 580, 350 A.2d 688 (1976) (same--Maryland).

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IV. Trademark false endorsement and false designation of origin claims involving
deepfakes
Federal law contains two claims that parallel and often overlap state law right of
publicity claims: false endorsement or false designation of origin claims. The source of both of
these claims is federal trademark law, section 43(a) of the Lanham Act, codified at 15 U.S.C.
§ 1125(a). The section provides:
(a) Civil action
(1) Any person who, on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or device,
or any combination thereof, or any false designation of origin, false or misleading
description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to
the affiliation, connection, or association of such person with another person, or
as to the origin, sponsorship, or approval of his or her goods, services, or
commercial activities by another person, . . .138
The creators of deepfakes often go much farther than making an “implication” of
endorsement and association with a product or service; they put celebrities front and center in
fake advertisements and testimonials, such as the following139:

140 141

138
15 U.S.C. § 1125(a).
139
Image sources: MrBeast and Tom Hanks: Dominic Yeatman, MrBeast calls AI deepfakes a 'serious problem' after
scam ad of Youtube star emerges - a day after Tom Hanks slammed fake advert using his image, DAILY MAIL (Oct. 3,
2023 14:16 EDT), https://www.dailymail.co.uk/news/article-12589267/mrbeast-youtube-deepfake-iphone-video-
ai.html; Taylor Swift: Megan Cerullo, Fake AI-generated ads use Taylor Swift's likeness to dupe fans, CBS NEWS (Jan.
9, 2024), https://finance.yahoo.com/news/ai-generated-ads-le-creuset-235923195.html; Gayle King: Jake
Peterson, These Latest Celebrity Deepfakes Show How Advanced Scams Have Become, LIFEHACKER (Oct. 3, 2023),
https://lifehacker.com/these-latest-celebrity-deepfakes-show-how-advanced-scam-1850895311.
140
Image source: Screenshot from Elon Musk deepfake ad, in Stuart A. Thompson, How ‘Deepfake Elon Musk’
Became the Internet’s Biggest Scammer, N.Y. Times (Aug. 14, 2024),
https://www.nytimes.com/interactive/2024/08/14/technology/elon-musk-ai-deepfake-scam.html.
141
Image source: Screenshot from Jeff Bezos deepfake ad, in Thompson, supra note [ 143 ] [previous note].

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A fake testimonial, like those of Elon Musk and Jeff Bezos above, is the quintessential
false endorsement scenario involving a deepfake. The New York Times reports that Elon Musk
deepfaked endorsements have become endemic on social media in 2024 and particularly are
used to target seniors and crypto-enthusiasts with get rich schemes.142 Other celebrities,
including MrBeast, Tom Hanks, Taylor Swift, and Gayle King, have fallen prey to deepfake false
testimonials endorsing iphones, dental plans, cookware, and other products or services:

None of these examples involving Elon Musk, Jeff Bezos, MrBeast, Tom Hanks, Taylor
Swift, and Gayle King have resulted in litigation, but they do illuminate the issues involved in
deepfaked advertising that states or implies endorsement if not actual participation in a
commercial venture. The social media posts with deepfaked celebrity images of Elon Musk, Jeff
Bezos, MrBeast, Tom Hanks, Taylor Swift, and Gayle King were promoting a separate service or
product; they were soliciting the viewer to look into the referenced service or product in hopes
of inducing a commercial transaction.143 Thus, to the extent that these promotions would be
characterized as speech and not simple fraud or speech integral to criminal conduct,144 the
expression would be evaluated as commercial speech and devalued in the First Amendment
analysis. As in the examples of commercial speech under the right of publicity discussed in
Section II above, the expression evident in the ads is dominated by the commercial exploitation
of the celebrity likenesses as opposed to other First Amendment expressive purposes. Each of
the situations discussed here could have been the subject of a right of publicity claim in the
jurisdictions that have recognized publicity rights, but because of the obvious commercial
context they fit very well in this section on federal false endorsement and false designation of
origin.
A. False Endorsement
The prohibition outlined in section 43(a) regarding false representations of sponsorship
or endorsement encompasses the implied endorsement of a celebrity for a product or service

142
Thompson, supra note [ 143 ].
143
Arguably, the MrBeast promotional post was itself a fake ad—it does not appear to be a genuine promotion of
the sales of iPhones.
144
See Beauharnais v. Illinois, 343 U.S. 250 (1952); R.A.V. v. City of St. Paul, 505 U.S. 377, 383 (1992).

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when their name, image, or likeness is utilized. This mirrors a typical right of publicity claim,
which involves the unauthorized use of a name, image, or likeness for commercial gain. The
federal claim necessitates that the use occurs "in commerce," thereby excluding certain uses in
the arts, news media, education, or other non-commercial activities from its scope.
Additionally, the federal claim mandates a "likelihood of confusion," which evaluates whether a
reasonably prudent consumer in the marketplace is likely to be misled regarding the implied
endorsement or sponsorship by the celebrity. The "likelihood of confusion" analysis involves
several factors, which vary in number and specific description across different federal circuits,
but generally include considerations such as those outlined by the Ninth Circuit145:
1. The level of recognition that the celebrity has among the segment of the society
to whom the defendant’s product is marketed;
2. The relatedness of the fame or success of the celebrity to the defendant’s
product;
3. The similarity of the likeness used by the defendant to the actual appearance of
the celebrity;
4. Evidence of actual confusion;
5. Marketing channels used;
6. Likely degree of purchaser care;
7. Defendant’s intent on selecting the celebrity; and
8. Likelihood of expansion of the product lines.
While the "use in commerce" and "likelihood of confusion" elements of a Lanham Act,
section 43(a) claim introduce additional analytical steps, the results of federal false
endorsement claims closely align with those of state law right of publicity claims. A defendant
who merely evokes the persona of a celebrity, thereby creating the potential for a false express
or implied representation that the individual has endorsed or approved the use of a product,
can be held liable. It is not requisite to employ the celebrity’s name or actual likeness in the
advertisement.146
B. False Designation of Origin
False designation of origin claims under section 43(a) of the Lanham Act aim to prevent
false or misleading representations regarding the source or origin of goods, thereby

145
Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1069 (9th Cir.), cert. denied, 577 U.S. 957 (2015);
Downing v. Abercrombie & Fitch, 265 F.3d 994, 1007–08 (9th Cir. 2001).
146
E.g., Carson v. Here’s Johnny Portable Toilets, 698 F.2d 831 (6th Cir. 1983) (used catch phrase “Here’s Johnny,”
and reference to his role as a “comedian); White v. Samsung Elecs. Am., Inc., 971 F.2d 1395, 1400 (9th Cir. 1992), as
amended (Aug. 19, 1992) (used robotic facsimile of White’s appearance on the gameshow, Wheel of Fortune).

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safeguarding the distinctive value and quality associated with the marks and branding of
product producers. Similar to false endorsement, false designation of origin is fundamentally a
consumer protection claim. When it comes to a deepfake’s exploitation of a celebrities'
personality rights, this claim can be somewhat challenging to differentiate from the false
endorsement claim also found in section 43(a). However, the false designation of origin claim is
related to the modern conception that some celebrities do not just “endorse” other brands, the
celebrities themselves “are” or “have” a brand of their own. In false designation of origin
setting, it is crucial that the celebrity is actively engaged in marketing and selling their own
image (their own "brand") through goods, services, and product lines. Consequently, the
unauthorized use of the celebrity’s name, image, or likeness in a deepfake or otherwise could
lead to consumer confusion if it implies that the second user's goods originate from the product
lines and "brands" owned by and associated with the celebrity.
There are three primary types of false designation of origin actions: passing off, reverse
passing off, and misbranding or mislabeling goods.
1. Passing Off
Passing off refers to a junior user making it appear that his goods are the goods of a
more senior producer.147 Typically, this is done because the senior user’s goods are more
valuable and desirable, so the junior user reaps a benefit by selling more of his own goods to
consumers who are confused into thinking that they actually are buying goods from the senior
producer. With a celebrity brand, one might use references or images that could cause
consumers to confuse, for example, a junior user’s table top grill with a genuine “George
Forman” grill, or confuse their own lemonade and ice tea beverage with a licensed “Arnold
Palmer” beverage.
2. Reverse Passing Off
Reverse passing off occurs when a junior user sells the genuine goods of a senior user
under the junior user’s own name and mark.148 Although this practice may seem
counterintuitive because the junior user will incur costs to acquire the senior user’s goods for
resale under a different brand, the long term strategy is to create a false “halo effect” which
will enhance the reputation of the junior user’s brand by associating it with high-quality and
desirable products. Over time, this practice elevates the perceived quality and value of all goods
bearing the junior user’s mark. While this tactic benefits the junior user, it does so at the
expense of deceiving consumers. In this scenario, consumers are not receiving inferior goods;
rather, they are misled into believing they are purchasing one product when they are actually

147
See 15 U.S.C. § 1125(a); Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 12 (1st Cir. 2008); Custom
Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 647 (11th Cir. 2007).
148
See, e.g., Dastar, 539 U.S. at 27 (Dastar alleged to be improperly reverse passing off film created by Twentieth
Century Fox as its own product); Kehoe Component Sales, 796 F.3d at 580, 586–87 (appellant manufacturer accused
of copying a former collaborator’s products and marketing the cloned products as its own).

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buying another. This confusion can persist, leading consumers to seek out the junior brand in
the future, mistakenly believing it represents quality and desirability, when in reality, the junior
brand-owner has artificially created this impression through the reverse passing off of another’s
goods as its own.149
3. Misbranding or Mislabeling
Misbranding or mislabeling is not about a misrepresentation of the quality of products
in the marketplace, it reflects a fraud or confusion cause by a designation on the label.150

151 152 153

A deepfake, such as the three examples I created above, is as likely to create a false
branding or false labeling scenario as any other method of image generation. The branding or
labeling might not directly confuse the goods of a senior user with those of a junior user
(although in my zeal to try to get generative AI tools to recreate recognizable trademarks and
trade dress of famous products, my three examples above would run that risk), but the labeling
or trade dress could be creating confusion as to the ingredients, or methods of production, or
the true geographic origin of the product, resulting in consumers not receiving what they
intended when they selected the item.154 Popular attributes of foods and other products, such
as "organic," “carbon friendly,” “farm to table,” "green," or "fat free” often become so widely

149
See 15 U.S.C. §§ 1125(a); Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 27 (2003); Kehoe
Component Sales Inc. v. Best Lighting Products, Inc., 796 F.3d 576, 586–87 (6th Cir. 2015), reh’g denied (Sept. 14,
2015).
150
See 15 U.S.C. §§ 1125(a), 1127 (various definitions regarding labeling, tagging of products in commerce); POM
Wonderful LLC v. Coca-Cola Co., 573 U.S. 102 (2014); Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S.
118 (2014).
151
Michael D. Murray, Deepfake of Gerbers Old No 7 Sour Mash Baby Formula (Sep. 10, 2024) (image created with
the assistance of Flux Pro).
152
Michael D. Murray, Deepfake of Hellmann’s Pork Lard (Sep. 10, 2024) (image created with the assistance of Flux
Pro).
153
Michael D. Murray, Deepfake of Starbucks slow roasted burnt ends (Sep. 10, 2024) (image created with the
assistance of Midjourney).
154
See 15 U.S.C. §§ 1125(a), 1127.

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desired that regulatory bodies, like the United States Food and Drug Administration, must
intervene to define and regulate their use. This ensures that only products meeting specific
criteria can use these labels, preventing misuse by those seeking to exploit their popularity.
Similarly, geographic indications serve as crucial identifiers of authentic products, such as
Champagne from the Champagne region of France, to be differentiated from other sparkling
wines produced elsewhere. The label "California Champagne" is a misnomer, and any falsified
geographic indication would inevitably cause consumer confusion.
V. First Amendment limitations on claims involving deepfakes under privacy, publicity,
and trademark theories
State and federal courts have long navigated the complex interplay between publicity,
privacy, and trademark claims and the First Amendment, acknowledging that right of publicity,
right of privacy, and trademark false endorsement and false designation of origin claims can
potentially encroach upon protected First Amendment activities.155 The convergence of subject
matter in federal, state, and common law claims concerning personality and persona rights has
necessitated the examination of numerous First Amendment-based defenses across these legal
frameworks.156
A. The First Amendment and the right of publicity
State and federal court right of privacy and right of publicity cases have produced
multiple related fair use tests—the Rogers “Relatedness” test,157 the Cardtoons “Balancing”

155
See Daniels v. FanDuel, Inc., 109 N.E.3d 390, 395-96 (Ind. 2018) (“The privilege of enlightening the public is by
no means limited to dissemination of news in the sense of current events but extends far beyond to include all
types of factual, educational and historical data, or even entertainment and amusement, concerning interesting
phases of human activity in general.”); Gionfriddo v. Major League Baseball, 94 Cal. App. 4th 400, 410 (2001) (First
Amendment will protect recitations of atheletes' accomplishments); Haynes v. Alfred A. Knopf, Inc., 8 F.3d 1222,
1232 (7th Cir. 1993) (“[T]he First Amendment greatly circumscribes the right even of a private figure to obtain
damages for the publication of newsworthy facts about him ....”); Downing v. Abercrombie & Fitch, 265 F.3d 994,
1001 (9th Cir. 2001) (outlining and applying a First Amendment defense to the California right of publicity statute
creating a tort claim for commercial misappropriation of name and likeness); Cardtoons, L.C. v. MLB Players Ass'n,
95 F.3d 959, 968 (10th Cir. 1996) (describing and applying two exceptions to the Oklahoma right of publicity
statute designed to accommodate the First Amendment); Rogers v. Grimaldi, 875 F.2d 994, 1004 (2d Cir. 1989)
(“[C]ourts delineating the right of publicity ... have recognized the need to limit the right to accommodate First
Amendment concerns.”). See also Restatement (Third) of Unfair Competition Law § 47 cmt. c (Am. L. Inst. 1995)
(“[t]he right of publicity as recognized by statute and common law is fundamentally constrained by the public and
constitutional interest in freedom of expression”).
156
See, e.g., In re Tam, 808 F.3d 1321, 1373 (Fed. Cir. 2015) (Dyk, J., conc.), as corrected (Feb. 11, 2016), aff'd sub
nom. Matal v. Tam, 582 U.S. 218 (2017); Moore v. Weinstein Co., 545 F. App'x 405, 409, 412 (6th Cir. 2013) (citing
Rogers and Restatement (Third) of Unfair Competition § 47 cmt. c); Univ. of Alabama Bd. of Trustees v. New Life
Art, Inc., 683 F.3d 1266, 1277 (11th Cir. 2012); Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 810-12 (9th
Cir. 2003); Lohan v. Perez, 924 F. Supp. 2d 447, 454 (E.D.N.Y. 2013); Geary v. Goldstein, No. 91 CIV. 6222 (KMW),
1996 WL 447776, at *3–4 (S.D.N.Y. Aug. 8, 1996).
157
Rogers, 875 F.2d at 998–99.

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test,158 the CBC and Doe “Predominant Purpose” test,159 and the Simeonov “Artistic Expression”
test.160 Each of these texts balance the value or strength of the expression using a person’s
name, image, likeness, or aspects of their persona against the injury or nature or level of
exploitation of the name, image, likeness, or persona by evaluating:
[T]he purpose behind the use of the celebrity name/image/likeness and its
context and connection to the activity (i.e., high value expression or high
commercial activity) to see if the use looks expressive and communicative or
exploitative. Works that have high expressive value and are not commercial
speech and not overtly commercialized will be considered fair even when they
feature the name, image, or likeness of a celebrity. Works that are highly
commercialized in nature or in context and seek to exploit the celebrity’s
persona for gain in a fairly obvious manner will be considered unfair.161

The alternative First Amendment fair use test, which does not specifically balance the
expressive value of using a name, image, likeness, or persona against the degree of commercial
exploitation, is the "transformative" test derived from copyright fair use law.162 This test was
first adopted by the California Supreme Court in Comedy III Productions v. Gary Saderup, Inc.,163
for cases involving visual depictions of valuable images or likenesses, such as those of
celebrities and sports figures. The test assesses whether the creator of the work adds First
Amendment expressive value to the depiction beyond the inherent value of the image or
likeness itself, either through artistic or expressive additions or due to the creator's status (e.g.,
if the creator of the image is a renowned artist like Andy Warhol).164 The court must determine
whether the plaintiff's likeness serves as one of the "raw materials" from which the defendant's
work is synthesized, or if the depiction or imitation of the plaintiff constitutes the entirety of
the work in question.165 The California Supreme Court offers a simplified version of this inquiry,
asking whether consumers value the work (e.g., purchase it) because of the creator or because
of the depicted image or likeness.166

158
Cardtoons, 95 F.3d at 968. The Supreme Court’s opinion in Zacchini v. Scripps-Howard Broadcasting Co., 433
U.S. 562, 574-75 (1977), is considered to be in line with the balancing approach that was later refined and applied
in Cardtoons. See, e.g., Doe v. TCI Cablevision, 110 S.W.3d 363, 373 (Mo. 2003).
159
C.B.C. Distribution & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818, 820 (8th Cir.
2007); Doe v. TCI Cablevision, 110 S.W.3d 363, 374 (Mo. 2003).
160
Simeonov v. Tiegs, 602 N.Y.S.2d 1014, 1018 (Civ. Ct. N.Y. Cty. 1993).
161
See MURRAY, RIGHT OF PUBLICITY IN A NUTSHELL, supra note [ 38 ] at 166-67.
162
Within copyright law, the transformative fair use test has recently been clarified in Andy Warhol Found. for the
Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (2023). See Michael D. Murray, Copyright Transformative Fair Use after
Andy Warhol Foundation v. Goldsmith, 24 WAKE FOREST J. BUS. & INTELL. PROP. L. 21 (2023).
163
Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387, 408–09, 21 P.3d 797, 811 (2001).
164
Id. at 804–08.
165
Id. at 809.
166
See id. at 810.

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Applying the copyright concept of "transformation" to scenarios involving the depiction

or generation of works incorporating a plaintiff’s personal attributes of name, identity, and
persona requires considerable intellectual effort.167 The transformative test is most
appropriately applied in cases involving deepfakes that use a celebrity’s visual attributes (such
as portrait, image, or appearance) in visual media.168 However, its application should be more
limited in privacy law personal injury claims that seek damages for embarrassment, invasions of
privacy, reputational harm, and emotional distress resulting from the use of deepfakes.169
1. Commentary and criticism, including parodies

170 171 172

One of the most notable capabilities of visual generative AI is its proficiency in creating
critical commentary and parodies through the use of deepfake technology. This involves
manipulating the voices and appearances of celebrities and public figures to make them appear
to say or do absurd things on video. Selecting examples to illustrate this was challenging due to
the vast number of available instances. Many of these examples, including the three highlighted
earlier in this section, actually precede the recent surge in generative AI advancements during

167
E.g., Hamilton v. Speight, 827 F. App'x 238, 239–40 (3d Cir. 2020) (wrestling with the question of whether a
video game character encompassed the “sum and substance” of a former athlete and entertainer's persona);
Pellegrino v. Epic Games, Inc., 451 F. Supp. 3d 373, 381 (E.D. Pa. 2020) (wrestling with whether a person’s
“identity” was represented or transformed in video game context); Kirby v. Sega of Am., Inc., 144 Cal. App. 4th 47,
59, 50 Cal. Rptr. 3d 607, 616 (2006) (wrestling with whether a performer's identity and persona were unfairly
represented in a non-literal depiction of the performer).
168
See, e.g., all cases so far cited in this section, notes 164-68.
169
E.g., Est. of Fuller v. Maxfield & Oberton Holdings, LLC, 906 F. Supp. 2d 997, 1006 (N.D. Cal. 2012) (in a claim for
unauthorized use of inventor’s name and identity, the court held “use of a name is not an act of expression in the
way that the creation or alteration of an image is, and a name cannot be transformed while remaining
recognizable in the way that an image can. . . . [The] Court cannot see, how th[e transformative] test could be
applied to an individual's name when his image is not also involved.”).
170
Image source: screen capture of EZRyderX47, “Deepfaked Back to the Future,” YouTube (Feb. 14, 2020)
(featuring the faked performances of Robert Downey Jr. and Tom Holland),
https://www.youtube.com/watch?v=8OJnkJqkyio; see also Joe Foley, 23 of the best deepfake examples that
terrified and amused the internet, Creative Bloq (Apr. 18, 2024),
https://www.creativebloq.com/features/deepfake-examples.
171
Image source: screen capture of WatchMojo, Hilary Clinton deepfake of Kate McKinnon’s Impression of Clinton,
YouTube (May 17, 2021), https://www.youtube.com/watch?v=PINeQV0LH6k.
172
Image source: screen capture of Jordan Peele’s deepfaked Barak Obama public service announcement on
deepfakes, YouTube (Apr. 18, 2018), https://www.youtube.com/watch?v=PINeQV0LH6k.

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2023-2024, as deepfake technology has been adept at swapping faces, voices, and bodies for
several years.
In the realm of right of publicity and privacy law, commentary and criticism, including
parody, constitute a crucial category of fair use. These rights must be balanced against the First
Amendment protections of free speech and expression. Commentary and criticism often
necessitate the use of an individual's identity to discuss, evaluate, or critique their actions,
performances, or public persona, thereby enriching public discourse. Beyond purely commercial
speech or highly commercial exploitations that are incidentally humorous, critical speech,
ridicule, or commentary about a person, public figure, or celebrity—such as in a deepfake, book
review, satirical cartoon, parody video, biographical piece, or blog or podcast analyzing a
celebrity's behavior—are frequently protected as fair use.173 This is because they offer
informative or transformative content rather than merely exploiting the individual's fame.
Parody serves as a vital mechanism for critical expression within right of publicity and
privacy law.174 A parody fair use defense permits creators to imitate or mock an individual's
likeness or behavior to convey a critical and satirical message.175 Parody inherently involves
some degree of imitation, which is essential to achieve the intended humorous or critical
effect.176 Courts have acknowledged that parody is a form of social commentary and critique
that contributes to cultural and political dialogue.177 For instance, a comedic portrayal in a
deepfake that imitates a public figure to highlight or criticize their policies or public statements
is protected under fair use because it transforms the original likeness for the purposes of
commentary and entertainment, rather than for commercial gain.178 This protection ensures
that creative and critical voices can engage in societal debates without undue restriction from
privacy or publicity claims.179

173
See ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 930 (6th Cir. 2003); Cardtoons, L.C. v. Major League Baseball
Players Assoc., 95 F.3d 959, 969 (10th Cir.1996); Restatement (Third) of Unfair Competition § 46, cmt. C (Am. L.
Inst. 2009). See also Hustler Magazine v. Falwell, 485 U.S. 46 (1988) (parody of public figure who brought libel,
privacy, and infliction of emotional distress claims).
174
E.g, Cardtoons, 95 F.3d at 972, 974.
175
In other words, some attempted parodies fail because they are too commercially exploitative. See White v.
Samsung Elecs. Am., Inc., 971 F.2d 1395, 1401–02 (9th Cir. 1992), as amended (Aug. 19, 1992) (alleged parody of
Wheel of Fortune co-host Vanna White in Samsung advertisement—i.e., commercial speech—failed); Elvis Presley
Enterprises, Inc. v. Capece, 141 F.3d 188, 200 (5th Cir. 1998) (direct parody of society that did not even attempt to
parody the celebrity—Elvis Presley—failed).
176
E.g., Hart v. Elec. Arts, Inc., 717 F.3d 141, 150, 159 (3d Cir. 2013); Cardtoons, 95 F.3d at 972, 974.
177
E.g., Winter v. DC Comics, 69 P.3d 473, 475, 479 (Cal. 2003).
178
E.g., World Wrestling Fed'n Ent. Inc. v. Big Dog Holdings, Inc., 280 F. Supp. 2d 413, 426-27, 431, 445 (W.D. Pa.
2003).
179
Snyder v. Phelps, 562 U.S. 443, 452 (2011).

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The two tests on comment, criticism, and parody that most often have been applied by
courts in right of publicity, privacy, and trademark cases are the balancing test and the
transformative test180:
2. Cardtoons’ Balancing Test
Balancing tests are prevalent in legal analysis due to their straightforward conception
that certain factors—which can be broadly defined as facts, qualities, characteristics, criteria, or
circumstances—must be weighed or compared to guide a legal decision. Balancing tests allow
for the identification and adjustment of these factors as cases evolve. However, these tests are
notoriously unreliable for predicting outcomes, as the factors and criteria, regardless of how
meticulously defined, lead to case-by-case determinations. Judges can often manipulate the
balancing to favor a desired outcome, necessitating that lawyers and scholars meticulously
compile case records to discern patterns in successful and unsuccessful narratives.
The case of Cardtoons LC v. Major League Baseball Players Association181 is a
foundational example of a case applying a balancing test in a right of publicity fair use analysis
that involved an attempted parody. Cardtoons produced comic baseball cards that parodied
and satirized the egos and behaviors of prominent baseball stars, focusing on their lifestyles
and inflated salaries rather than traditional baseball playing statistics.182 For instance, Barry
Bonds was humorously dubbed "Treasury Bonds," with puns on his salary and worth. The team
names and logos were also altered to match the commentary, such as the San Francisco Giants
becoming the "Gents" with a top hat logo, while retaining the team’s original color scheme.
These cards served as a humorous and somewhat insightful jab at the players. Cardtoons
included a disclaimer stating, “Cardtoons baseball is a parody and is NOT licensed by Major
League Baseball Properties or Major League Baseball Players Association.” While disclaimers do
not guarantee immunity from legal challenges or confusion, in this case, it helped the courts
recognize the cards as bona fide parody and criticism.
The balancing test began by weighing the value of protecting the publicity rights against
the context of their use by the defendant. The publicity rights in question were highly valuable,
targeting professional baseball players who are among the most marketable celebrities.
Although the use was commercial, it was not overtly so, as the cards themselves were the only
items being promoted. On the other side of the scale, the court considered the public policies
served by the use, namely freedom of speech and the right to criticize public figures. It was
acknowledged that celebrities are unlikely to authorize uses that criticize them, as it is against
their interests. If the court had ruled against the parody, it would have stifled critical

180
The Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), “relatedness” test has been applied most often in
trademark actions, and it will be discussed in section C infra.
181
Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95 F.3d 959 (10th Cir. 1996).
182
Id. at 963–65.

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commentary on athletes and public figures, a significant loss for First Amendment
jurisprudence. Thus, the scales tipped in favor of allowing the parody as fair use.
Cardtoons illustrates how balancing should favor deepfakes with strong First
Amendment critical speech involving celebrities that present only moderate commercial
exploitation of their personas. However, as the context shifts from classic commentary and
criticism to more general depictions, as in deepfakes that place the celebrity in incongruous or
ironical situations, the likelihood of proving fair use diminishes. If the commercial exploitation is
substantial, such as prominently using a celebrity's name or likeness with minimal critical
commentary, the balance would likely tip against fair use.
3. Comedy III’s Transformative Test
The transformative fair use test in right of publicity, privacy, and trademark claims seeks
to apply First Amendment protections on the use of another person's image or likeness,
particularly when a new depiction of the person may hold significant expressive value. This test
requires an analysis of whether the new work transforms the content and appearance of the
celebrity or their persona in such a way that it transcends mere exploitation and becomes a
new form of expression.183 Unlike physical, expressive works in copyright law, where the
concept of “transformation” is more straightforward to express—the creation of new content,
meaning, and expression with a different function and purpose from the original184—the
concept of transforming a person's identity or persona lacks a clear metaphor or descriptor.
While we are familiar with adaptations of paintings, songs, films, and books, transformations of
celebrity names, images, and likenesses are less common. The law almost certainly does not
demand the kind of transformations seen in the public personas of celebrities like Lady Gaga,
Madonna, or David Bowie.185
In place of adaptation, alteration, or recontextualization concepts from copyright law,
the Comedy III case provided criteria for deepfakes for determining when a celebrity persona is
transformed in a generated expressive work:
• Primary Inquiry: Is the work merely a depiction of the celebrity, regardless of artistic
skill, or does the creator of the new work (i.e., the end-user of a visual AI system) add
new creative expression that holds value beyond the celebrity's image?
• Subsidiary Inquiry: Would an average consumer purchase the work for its artistic merit
or because of the celebrity's image? 186

183
See generally Comedy III Pros., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 810–11 (Cal. 2001).
184
Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508, 541–42 (2023).
185
See generally Robert Zipser, What's in A Name?, L.A. LAW., March 2014, at 16-20.
186
Comedy III, 21 P.3d at 809, 810.

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Comedy III established that "supplementation" and "augmentation" are necessary for a
deepfake to transform a celebrity image.187 The end-user of the AI system must contribute new
creative expression beyond simply rendering a depiction of the celebrity. The subsidiary inquiry
poses a challenge for deepfake artists: if consumers are more likely to buy the work because it
depicts a specific celebrity rather than for its artistic value or the artist's reputation, the work
fails the transformative test and is not a fair use of the celebrity image.
This test has advantages for renowned artists who can more easily claim that their
works are purchased and collected for the artists’ name and association with the work. But in
Comedy III, the California Supreme Court ruled that Gary Saderup's skillful charcoal rendering of
the Three Stooges was not transformative, despite its artistic merit,188 because it would be
purchased by fans of the Three Stooges rather than for Saderup's artistry.189
Not all cases share Saderup's fate. In Winter v. D.C. Comics,190 Johnny and Edgar Winter,
known for their distinctive white hair due to albinism, sued over their depiction as albino
worms named "the Autumn brothers" in the Jonah Hex comic. The court found the work
transformative and a fair use due to its parody purpose and significant alteration and
recontextualization of the Winter brothers' appearance.191
Transformation does not require parody or mockery to be successful. In Hamilton v.
Speight,192 Lenwood Hamilton, a former professional football player and wrestler, sued Epic
Games and Microsoft for allegedly using his likeness to create the character Augustus "Cole
Train" Cole in Gears of War. The court held that Hamilton's likeness was merely one of the "raw
materials" used to create the character, deeming the use transformative and protected under
the First Amendment.193
In specific deepfake uses that involve comment and criticism or parody, the deepfake
expression will at least be able to draw from a significant number of precedents for comparison
and analysis. The Cardtoons balancing test and Comedy III transformative have each been

187
Id. at 809–11 (finding that the skillful artistic rendering of Saderup’s depiction of the Three Stooges in fact does
not meet the court’s standards of transformation of the appearance of the celebrities).
188
Comedy III, 21 P.3d at 810–11.
189
Id. at 811. Note that Saderup had a small-scale business tied up in charcoal, black-and-white renditions of
celebrities. His output included original works and art prints. He was not a purveyor of memorabilia or kitsch
merchandise of the t-shirts, towels, aprons, and coffee mug varieties. Yet, his skillfully rendered art or burgeoning
reputation were not enough to get him over the transformative test, as interpreted by the California Supreme
Court.
190
Winter v. DC Comics, 69 P.3d 473 (Cal. 2003).
191
Winter, 69 P.3d at 480.
192
Hamilton v. Speight, 413 F. Supp. 3d 423, 428–34 (E.D. Pa. 2019), aff’d, 827 F. App’x 238, 239–40 (3d Cir. 2020),
cert. denied, 141 S. Ct. 2796 (2021).
193
Hamilton, 827 F. App’x at 239–40 (the Third Circuit’s opinion that affirmed the District Court’s opinion is
denoted as “not precedential” according to the court’s internal operating procedures).

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around for more than two decades and have been applied in cases presenting a large variety of
factual scenarios.

B. The First Amendment and the right of privacy

Privacy claims involving personal injuries, reputational damage, and monetary losses
caused by deepfakes should have a strong likelihood of success against First Amendment
challenges even though deepfakes utilize speech and expression to cause harm. Civil and
criminal actions such as defamation, fraud, and "speech integral to criminal conduct" are three
of the categories of nonspeech able to be regulated by laws under a rational basis standard.194
Consequently, defamation, fraud, or crimes like harassment, domestic abuse, or extortion
executed through deepfaked expression are likely actionable without First Amendment
interference. However, for other embarrassing or irritating harms caused via deepfakes that do
not rise to the level of these crimes and torts, the use of deepfake technology and the
falsification of information are likely to be evaluated under a higher level of First Amendment
scrutiny.195 Deepfakes are a form of expression, and aside from the aforementioned nonspeech
categories, all other deepfake expressions are presumptively protected by the First
Amendment, as there is no general exception for false expression.196
In the context of privacy rights and news or public affairs reporting involving intrusion
into seclusion or private matters, the U.S. Supreme Court in Zacchini, referencing the
Restatement (Second) of Torts,197 stated that “the gravamen of the issue . . . is not whether the
degree of intrusion is reasonable, but whether First Amendment principles require that the
right of privacy give way to the public right to be informed of matters of public interest and
concern.”198 In the Zacchini case, the balance favored the claimant due to the unique
circumstances where a news outlet aired Mr. Zacchini’s entire county fair act, exploiting his
years of training as a human cannonball. 199 In Cox Broadcasting v. Cohn, involving the
publication of a deceased minor rape victim's name, the Supreme Court asserted that “the
rights guaranteed by the First Amendment do not require total abrogation of the right to
privacy. The goals sought by each may be achieved with a minimum of intrusion upon the
other.”200 Achieving the goals of both requires minimal intrusion, meaning the intrusion and

194
See Beauharnais v. Illinois, 343 U.S. 250 (1952); R.A.V. v. City of St. Paul, 505 U.S. 377, 383 (1992). The other
categories of nonspeech are fighting words, incitements, true threats, and obscenity. United States v. Alvarez, 567
U.S. 709, 717 (2012); Chaplinsky v. New Hampshire, 315 U.S. 568, 572 (1942).
195
See generally Reed v. Town of Gilbert, Ariz., 576 U.S. 155, 163–72 (2015).
196
Alvarez, 567 U.S. at 718.
197
See Restatement (Second) of Torts § 652 (Am. L. Inst. 1977).
198
Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 567–68 (1977).
199
See id.
200
Cox Broad. Corp. v. Cohn, 420 U.S. 469, 475 (1975). The court ultimately exonerated the media defendant
because the victim’s name was a matter of public record. Id.

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exploitation of private matters must be relevant and timely to news and public interest, 201 a
challenging standard for deepfake perpetrators to meet.
Privacy invasions through artistic expression present a different scenario where First
Amendment protections often outweigh private individuals' desires for privacy. Artistic
expression is a factor in the analysis, similar to the Miller obscenity standard. In Wood v. Hustler
Magazine, 202 the plaintiff's stolen nude photographs were published, causing false light privacy
harm. The medium of the actus reus (photography) did not determine whether the theft and
unconsented publication met the privacy claim elements (they did) or whether the medium
invoked First Amendment protection (it didn’t).203 Conversely, Foster v. Svenson204 provides a
counterexample: an artist's long-lens photographs of individuals in high-rise apartments, visible
from his own apartment, were deemed sufficient artistic expression to defeat privacy claims
under New York’s statute.205 This statute covers traditional privacy claims and publicity claims
arising from the use of individuals' images in commercial activities, such as fine art photography
exhibitions and related advertising.206 Foster compared this to Nussenzweig v. DiCorcia,207
where a photographic portrait used in an art exhibition and sale did not constitute a use "for
the purpose of commerce and trade,"208 a determination with which Foster concurred.209
Claims for infliction of emotional distress by generative AI material are complex, but the
First Amendment can serve as a defense in state tort suits, including those for intentional
infliction of emotional distress.210 Expressions involving political speech, news or public affairs
reporting, commentary, or forms of critique like parody are protected under the First
Amendment in privacy law contexts.211 But not all distressing expressions of words or images
are fully protected by the First Amendment; the expression must communicate something of

201
E.g., Toffoloni v. LFP Publ'g Grp., LLC, 572 F.3d 1201, 1208–09 (11th Cir. 2009) (publication of twenty-year old
nude photographs of murder victim not protected from right of privacy claim on the basis of newsworthiness).
202
Wood v. Hustler Mag., Inc., 736 F.2d 1084 (5th Cir. 1984).
203
Id. at 1091–92. Another case emphasizing that the message is more important than the medium in a privacy
claim is Adams v. County of Sacramento, in which the message of a photograph and accompanying text was crucial
to the plaintiff’s false light invasion of privacy, intentional interference with prospective economic advantage, and
intentional infliction of emotional distress claims, and not the fact that photography was involved. Adams v.
County of Sacramento, No. 23-15970, ___ F.4th ___, 2024 WL 4113546, at *3 (9th Cir. Sept. 9, 2024).
204
128 A.D.3d 150, 7 N.Y.S.3d 96 (3d Dep’t 2015).
205
Foster, 128 S.D.2d at 158-60 (collecting cases and affirming the dismissal of the privacy action on the grounds
that defendant’s artistic activity did not meet the “for advertising and trade purposes” requirement of N.Y. Civil
Rights L. 50, 51).
206
Id.
207
11 Misc. 3d 1051(A), 2006 WL 304832 (Sup. Ct. N.Y. County 2006), aff’d, 38 A.D.3d 339, 832 N.Y.S.2d 510 (1st
Dep’t 2007), certified question answered, order aff'd, 9 N.Y.3d 184, 878 N.E.2d 589 (2007).
208
Id., 11 Misc. 3d 1051(A), 2006 WL 304832, at *7; 38 A.D.3d 339, 347 (Toms’, J. conc.).
209
Foster, 128 A.D.2d at 157, 158.
210
See, e.g., Snyder v. Phelps, 562 U.S. 443, 451 (2011); Hustler Magazine, Inc. v. Falwell, 485 U.S. 46, 50–51
(1988).
211
E.g., Hustler Magazine, 485 U.S. at 50–51.

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public importance, not merely a private concern.212 This categorization may exclude many
instances of malicious deepfakes or private acts of vengeance, such as harassment or "AI-
assisted revenge porn," but this theory remains to be tested in litigation.

C. Trademark false endorsement and false designation of origin cases and the
First Amendment213
Uses of a faked name, image, or likeness in a commercial setting, including commercial
speech, will often be litigated under a trademark law false endorsement or false designation of
origin theory.214 The use of a faked celebrity endorsement might be combined with faked
trademark or trade dress designations, as in these deepfake examples created by the author:

215 216 217

In the context of trademark law, the additional required element of the claim against
the use of a deepfake will be proof of the risk of consumer confusion over the faked
endorsement or sponsorship.218 Right of publicity, as in the case of New York’s Civil Rights Law

212
Snyder, 532 U.S. at 452.
213
For a deeper dive into this sub-topic of trademark law and the First Amendment, see Michael D. Murray,
Deepfakes and Dog Toys: First Amendment Defenses under the Rogers Test after Jack Daniel’s v. VIP Products, 58
IND. L. REV. ___ (forthcoming, 2025), https://papers.ssrn.com/abstract=4811359. Several of the examples discussed
in that work are discussed in this section.
214
15 U.S.C. §§ 1125(a)(1)(A), 1125(a)(1)(B). See Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118,
122, 133 (2014); Waits v. Frito–Lay, Inc., 978 F.2d 1093, 1108 (C.A.9 1992).
215
Michael D. Murray, Deepfake of Dwayne Johnson and John Cena eating KFC (Aug. 20, 2024) (image created with
the assistance of Flux Pro).
216
Michael D. Murray, Deepfake of Kamala Harris drinking Coca Cola (Aug. 20, 2024) (image created with the
assistance of Flux Pro).
217
Michael D. Murray, Deepfake of Labron James eating Pizza Hut pizza (Aug. 20, 2024) (image created with the
assistance of Flux Pro).
218
Souza v. Exotic Island Enterprises, Inc., 68 F.4th 99, 110 (2d Cir. 2023); Edmondson v. Velvet Lifestyles, LLC, 43
F.4th 1153, 1160 (11th Cir. 2022); Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1067 (9th Cir.
2015).

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§§ 50, 51, requires a use “for the purpose of commerce and trade,” i.e., a commercial purpose,
which also is required in trademark law, but New York’s law does not include the consumer
confusion element.
Within trademark law, the Rogers “relatedness” test is used to monitor the boundary
between protected expression and unprotected false or misleading commercial speech which
may fairly be regulated under the First Amendment.219 The Rogers test is endorsed in the
legislative history of the Lanham Act's latest amendment, the Trademark Modernization Act of
2020, which states that the Rogers test appropriately recognizes the primacy of constitutional
protections for free expression.220 The Judiciary Committee report went on to state, “In
enacting this legislation, the Committee intends and expects that courts will continue to apply
the Rogers standard to cabin the reach of the Lanham Act in cases involving expressive
works.”221 Rogers has been cited—but not always followed—by all eleven circuits and the
federal circuit.222 It has been officially adopted and applied by the Third Circuit,223 Fourth
Circuit,224 Fifth Circuit,225 Sixth Circuit,226 Ninth Circuit,227 and Eleventh Circuit.228
The first prong of the Rogers test is very similar to the test in Section 47 of the right of
publicity provisions of the Restatement of Unfair Competition.229 Section 47 of the Restatement
provides that the First Amendment protects uses of a person’s identity in an expressive work
unless the “name or likeness is used solely to attract attention to a work that is not related to
the identified person.”230 In the Rogers case, the court interpreted the first and second prongs
of its fair use test to mean that, in right of publicity claims, the use of a celebrity's name in the
title of an expressive artistic work will not be barred unless the title was “wholly unrelated” to

219
See Rogers v. Grimaldi, 875 F.2d 994, 998–99, 1004 (2d Cir. 1989).
220
H.R. Rep. No. 116-645, at 20 (2020). See MGFB Properties, Inc. v. Viacom Inc, 54 F.4th 670, 679 (11th Cir. 2022).
221
Id.
222
This count is based on the Westlaw citing references for Rogers. Several of these cites are for a choice of law
holding in Rogers, 875 F.2d at 1002: “In cases based on diversity of citizenship or on pendent jurisdiction, the
federal district court must apply the forum state's choice-of-law rules.” E.g., Spain v. Haseotes, 116 F.3d 464 (1st
Cir. 1997) (Table).
223
Seale v. Gramercy Pictures, 949 F. Supp. 331 (E.D. Pa. 1996), aff'd without opinion, 156 F.3d 1225 (3d Cir. 1998).
But see Hart v. Elec. Arts, Inc., 717 F.3d 141, 158 (3d Cir. 2013) (declining to apply Rogers in favor of the
transformative test); Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1018 (3d Cir. 2008) (declining to apply Rogers
because expression in case was deemed to be commercial speech).
224
Radiance Found., Inc. v. N.A.A.C.P., 786 F.3d 316, 322, 329 (4th Cir. 2015).
225
Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 664-65 (5th Cir. 2000).
226
Parks v. LaFace Recs., 329 F.3d 437, 450 (6th Cir. 2003); Moore v. Weinstein Co., LLC, 545 F. App'x 405, 412 (6th
Cir. 2013). See also ETW Corp. v. Jireh Publ'g, Inc., 332 F.3d 915, 936–37 (6th Cir.2003) (applying both Rogers and
the transformative test).
227
Mattel, Inc. v. MCA Recs., Inc., 296 F.3d 894, 902 (9th Cir. 2002).
228
See Univ. of Ala. Bd. of Trs. v. New Life Art, Inc., 683 F.3d 1266, 1278 (11th Cir. 2012); MGFB Properties, Inc. v.
Viacom Inc, 54 F.4th 670, 678 (11th Cir. 2022).
229
See Restatement (Third) Of Unfair Competition § 47 cmt. c (Am. Law Inst. 1995).
230
Id.

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the content and meaning of the work or was “simply a disguised commercial advertisement for
the sale of goods or services” including the expressive work itself.231
1. Source-identifying and non-source-identifying uses
The 2023 U.S. Supreme Court case Jack Daniel’s v. VIP Prod.232 redefined the defenses of
parody and comment and criticism in the context of trademark claims (including false
endorsement and false designation of origin claims) in a manner that runs parallel to the
parody claims raised in state law publicity and privacy discussed above but no longer overlaps
these standards. This parallel path hinges on a determination whether the user (i.e., the creator
of a deepfake) used the name, image, marks, or identifying features of the plaintiff in a source-
identifying manner or a non-source-identifying manner.
In Jack Daniel’s, the Supreme Court took a categorical approach stating: “parody (and
criticism and commentary, humorous or otherwise) is exempt from liability only if not used to
designate source.”233 Thus, with regard to First Amendment limitations on trademark false
endorsement or false designation of origin claims, the Supreme Court held that the Rogers test
and the First Amendment principles underlying the test do not apply when the exploitation of
the identifying features of another person’s or entity’s marks are used as a designation of
source for the infringer's own goods.234 The Court reiterated that a disqualified “source-
identifying” use might well arise in the midst of First Amendment expression, because many of
those uses will involve the expression of some idea such as humor or ironic commentary—and
still Rogers will not exculpate the use as a preliminary determination at the motion to dismiss
stage prior to the likelihood of consumer confusion analysis.235 Given the overlap in the
scenarios that lead to federal trademark and state and common law right of publicity and right
of privacy claims,236 it is conceivable that the thrust of this holding in Jack Daniel’s may be
extended to chip away at the right of publicity’s and right of privacy’s own parody defense.237
The Jack Daniel’s court cited and discussed several federal appellate and trial court
cases to explain the concept of trademark claims with “source-identifying” uses compared to
“non-source-identifying” uses in cases where the names, identifying features, marks, or trade
dress of another person or entity were used in expressive contexts but not to promote the user
or its business:

• Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 901 (9th Cir. 2002): Jack Daniel’s
found Aqua’s hit song “Barbie Girl” made no source identifying use of Barbie’s

231
Rogers, 875 F.2d at 1004-05.
232
Jack Daniel's Properties, Inc. v. VIP Prod. LLC, 599 U.S. 140, 162 (2023).
233
Id.
234
Id. at 153-54, 158-59.
235
Id. at 158-59.
236
MURRAY, RIGHT OF PUBLICITY IN A NUTSHELL, supra note [ 38 ], ch. 8.
237
See generally Murray, Deepfakes and Dog Toys, supra note [ 228 ]; Jack Daniel’s, 599 U.S. at 153.

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name even though the song name was printed on the cover of the release (i.e., a
trade dress use) and the song’s lyrics explicitly referenced Mattel’s trademarked
“Barbie” doll franchise. This non-source-identifying use allowed the Rogers test
to be applied, leading to the conclusion that Aqua’s use of “Barbie” was
artistically relevant to their musical expression and not explicitly misleading
regarding the source or content of the work. The song was recognized as a
genuine parody because both the song’s title and lyrics were intended to satirize
the iconic status of Barbie, which Mattel had meticulously cultivated and
protected.

• Janis Joplin’s song “Mercedes Benz” was never the subject of a litigation, but in
Jack Daniel’s, the Supreme Court noted that its iconic line, “Oh Lord, won’t you
buy me a Mercedes Benz,” exemplifies a non-source-identifying use. The song
did not parody or criticize the car maker; rather, it simply did not use the
“Mercedes Benz” name in a manner that attempted to name the source of
Joplin’s song in reference to the car maker, nor was the song title and lyric used
to promote Joplin’s music or other works. The Court further opined that no
reasonable person would infer a partnership or sponsorship between the
German automobile manufacturer and Joplin based solely on the song’s title and
lyrics.

• University of Ala. Bd. of Trustees v. New Life Art, Inc. (11th Cir. 2012)238 – Daniel
Moore’s paintings, which celebrate iconic moments in Alabama football history,
were protected under the Rogers test because Moore didn’t use the Crimson
Tide’s uniforms, logos, or trademarks in a source-identifying manner, i.e., to
suggest that the origin and source of the works was the University of Alabama or
that Alabama officially endorsed his works. Instead, the court noted that the
game elements—sights, uniforms, logos—were integral to conveying the
historical narrative and artistic expression he aimed to convey in his work. The
case did not rely on a parody theory because, unlike a parody, Moore’s tribute
was purely respectful and intended to honor and celebrate the team.

• Louis Vuitton Malletier S. A. v. Warner Bros. Entertainment Inc. (S.D.N.Y. 2012)239

– In Warner Brothers’ The Hangover: Part II movie, a character carrying a knock-
off Diophy Louis Vuitton bag describes the luggage he is carrying as "Louis
Vuitton" mispronounced as "Lewis.” The real Louis Vuitton Malletier was
offended both by the ignorant pronunciation and the flagrant display on film of
one of its counterfeit competitor’s goods. But the court found this use was

238
University of Ala. Bd. of Trustees v. New Life Art, Inc., 683 F.3d 1266, 1279 (11th Cir. 2012).
239
Louis Vuitton Malletier S. A. v. Warner Bros. Entertainment Inc., 868 F. Supp. 2d 172, 180 (S.D.N.Y. 2012).

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protected under the Rogers test, as in the context of the film it was not meant to
identify a source of the goods carried and referred to, and the references were
artistically relevant to the movie’s expression without being explicitly misleading
about the work's source or content. Louis Vuitton claimed that this portrayal
falsely promoted the counterfeit bag by presenting it as an authentic Louis
Vuitton product. However, the court dismissed this argument. While the brand’s
name, mispronounced in an ignorant and comedic way, arguably mocked high-
end brands and the people obsessed with them, the court did not interpret the
use as a parody when applying the Rogers test to shield the filmmakers from the
infringement claim.

• United We Stand Am., Inc. v. United We Stand, Am. New York, Inc. (2d Cir.
1997)240 – The defendant, a New York-based group that broke away from the
national organization supporting then presidential candidate Ross Perot,
received no protection under the Rogers test. This was because they used the
phrase of the national organization, "United We Stand America," in a way that
suggested and identified the source of their own services, which placed it
outside the scope of artistic or expressive use and in the category of an
exploitative use of the good will and endorsement power of the national
organization.

• Harley-Davidson, Inc. v. Grottanelli (2d Cir. 1999)241 – A business dedicated to

furthering the Hog lifestyle of Harley-Davidson motorcycles found that its tribute
242 was unacceptable to the famous motorcycle

manufacturer. The Hog Farm motorcycle shop’s

modification of Harley-Davidson’s iconic bar-and-
shield logo for its own business branding was deemed
a trademark use intended to identify the shop's
services. As such, it was not protected under the
Rogers test. The Second Circuit explained that while
parodists are often given significant freedom when
their expressive works critique a trademark or trademarked product,243 this
protection does not extend to a business using a so-called parody of a

240
United We Stand Am., Inc. v. United We Stand, Am. New York, Inc., 128 F.3d 86, 93 (2d Cir. 1997).
241
Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806, 812–13 (2d Cir. 1999).
242
Image source: Facebook Post, The Hog Farm, Custom Motorcycle Shop, Since 1969, FACEBOOK (Nov. 10, 2014),
https://www.facebook.com/TheHogFarmCustomMotorcycleShop1969/photos/a.263884140426662/42393144442
1930/.
243
Harley-Davidson, 164 F.3d at 812 (citing Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 886
F.2d 490, 493–95 (2d Cir.1989)).

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competitor’s trademark to market its own competing products and services.244

Unlike University of Alabama v. New Life Art,245 discussed earlier in this section,
Grottanelli’s unauthorized use came in the context of a purely commercial
activity—motorcycle sales and servicing—rather than in an expressive and
artistic activity like New Life Art’s (Daniel Moore’s) paintings that celebrated the
history of Alabama’s football program.

• Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC (S.D.N.Y. 2002)246 – Tommy
Hilfiger Licensing v. Nature Labs gave us a win-loss scenario. The Nature Labs
“Timmy Holedigger” doggy spray scent was declared to have incorporated the
Tommy Hilfiger name and a modified two-tone trade dress in a source-
identifying way, thus precluding the application of Rogers’ protection, but the
defendant prevailed anyway. Even though the court declined to apply the Rogers
test, the court ultimately determined that "Timmy Holedigger" was a humorous
parody of the well-known cologne brand. Because Tommy Hilfiger failed to
provide sufficient evidence of consumer confusion, the court granted summary
judgment in favor of Nature Labs.

• Louis Vuitton Malletier S.A. v. Haute Diggity Dog247 – Haute Diggity Dog, LLC used
a modified version of Louis Vuitton's trademarks and trade dress, branding its
product as "Chewy Vuiton" to label and identify its commercially sold items.
Despite this use on trade dress and on the products themselves that seems
entirely suggestive of the source of the products or endorsement of the
products, and thus an apparent “source-identifying use,” the Fourth Circuit Court
of Appeals ignored the trademark use and focused on the parody in creating a
dog toy that humorously mimicked a luxury brand. The Supreme Court in Jack
Daniel’s approved of this case, and characterized the case as one of parody,
appropriately resolved at the likelihood of confusion stage. The Fourth Circuit,
and impliedly the U.S. Supreme Court, concluded that the playful treatment of
Louis Vuitton’s trademarks and trade dress was unlikely to cause consumer
confusion about the source of the product.248

• Jack Daniel's Properties v. VIP Prods. (2023)249 – I intentionally juxtapose the Jack
Daniel’s case itself with Haute Diggity Dog because the two seem irreconcilable.
VIP Products took the trade dress of Jack Daniel’s, a serious adult beverage

244
Id. (citing Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d Cir.1994)).
245
University of Ala. Bd. of Trustees v. New Life Art, Inc., 683 F.3d 1266, 1279 (11th Cir. 2012).
246
Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 412-14 (S.D.N.Y. 2002).
247
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 266 (4th Cir. 2007).
248
Id.; Jack Daniel’s, 599 U.S. at 161.
249
Jack Daniel's Properties, Inc. v. VIP Prod. LLC, 599 U.S. 140 (2023).

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brand, and humorously repurposed these marks as the trade dress for its own
dog toys. Haute Diggity Dog did exactly the same thing with its dog products. But
the Supreme Court determined that VIP’s use of the Jack Daniel’s trade dress
was a “source-identifying” trademark use intended to market VIP’s own
products. Yes, it is to be noted that the Supreme Court also found that the lower
courts had incorrectly applied the Rogers test at the motion to dismiss stage,
given the source-identifying nature of VIP’s use.250 Haute Diggity Dog avoided
that label and received exoneration as a cute and humorous parody of a serious
adult brand. Yet the Supreme Court rejected VIP’s parody defense and
effectively directed the lower court to rule against VIP on remand.251

The Supreme Court drew its conclusions from the above and other cases 252 and found
that the expressive nature of the products at issue in these cases and what they might have had
to say about the brands whose marks they were adapting for their own marks did not tip the
scales in favor of the defendants at least as an initial inquiry before the evaluation of the
elements of trademark or trade dress infringement or dilution.253
2. Parody in the context of trademark claims
When drawing lessons for deepfakes that arise in trademark contexts, it must be noted
that the Jack Daniel’s case did not preclude the consideration of the substantive effect of an
attempted parody in evaluating the Rogers test in a trademark or trade dress infringement or a
trademark dilution case, but limited the consideration to the context of the infringement
analysis itself wherein the parodic nature of a work that spoofs or ridicules the plaintiff’s marks
or products could mitigate or eliminate any likelihood of confusion over the two uses. The
application of the Rogers test at the infringement stage is similar to how Rogers and other First
Amendment balancing tests are used in right of publicity and right of privacy cases when a
parody defense is asserted254—the parody is weighed for its relevant and valuable comment
and criticism of the person that might overcome the publicity or privacy right of the person
unless the use is overly exploitative or commercialized (i.e., the use becomes less about the

250
Id. at 155-56, 161-62.
251
Id. at 155-56.
252
The Supreme Court also cited: Matal v. Tam, 582 U.S. 218, 245, 252 (2017); Friedman v. Rogers, 440 U.S. 1, 15
(1979); Yankee Publishing Inc. v. News Am. Publishing Inc., 809 F. Supp. 267, 276 (S.D.N.Y. 1992).
253
Jack Daniel’s, 599 U.S. at 155-56.
254
See, e.g., In re Tam, 808 F.3d 1321, 1373 (Fed. Cir. 2015) (Dyk, J., conc.), as corrected (Feb. 11, 2016), aff'd sub
nom. Matal v. Tam, 582 U.S. 218 (2017); Moore v. Weinstein Co., 545 F. App'x 405, 409, 412 (6th Cir. 2013) (citing
Rogers and Restatement (Third) of Unfair Competition § 47 cmt. c); Univ. of Alabama Bd. of Trustees v. New Life
Art, Inc., 683 F.3d 1266, 1277 (11th Cir. 2012); Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 810-12 (9th
Cir. 2003).

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commentary or criticism and much more about attracting attention for commercial
purposes).255
The Second Circuit in the Vans v. MSCHF case (discussed below) summarized Jack
Daniel’s holding on evaluating a parody defense under the Rogers test only at the infringement
stage as:
Far from disregarding the parodic nature of the Bad Spaniel's toy, however, the
Supreme Court noted that “a trademark's expressive message—particularly a
parodic one ... — may properly figure in assessing the likelihood of confusion.”
Id. at 161, 143 S.Ct. 1578; see also id. at 159, 143 S.Ct. 1578 (noting that “the
likelihood-of-confusion inquiry does enough work to account for the interest in
free expression”). This is because, where a message of “ridicule or pointed
humor” is clear, “a parody is not often likely to create confusion” for “consumers
are not so likely to think that the maker of a mocked product is itself doing the
mocking.” Id. at 161, 153, 143 S.Ct. 1578; see id. at 161, 143 S.Ct. 1578
(“[A]lthough VIP's effort to ridicule Jack Daniel's does not justify use of the
Rogers test, it may make a difference in the standard trademark analysis.”).256
Prior to Jack Daniel’s, cases in the Ninth Circuit had inserted the Rogers analysis as a threshold
test of First Amendment expressive uses of marks and trade dress in which a defendant might
avoid the full infringement or dilution analysis altogether and be dismissed or granted summary
judgment before the plaintiff’s infringement or dilution claims were fully adjudicated.257 This
outcome, of course, would be favored by defendants who want to avoid the cost of litigating
the fact-intensive trademark infringement factors which, in many cases, preclude summary
judgment in the case.258 But because the courts applied Rogers at the motion to dismiss stage,
this practice resulted in these cases being abrograted as officially noted by the Punchbowl, Inc.
v. AJ Press259 case.

255
See, e.g., Moore, 545 F. App'x at 409 (citing Restatement (Third) of Unfair Competition § 47 cmt.c); New Life Art,
Inc., 683 F.3d at 1277; Mattel, 353 F.3d at 810-12; ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 937–38 (6th Cir.
2003); Cardtoons, L.C. v. Major League Baseball Players Assoc., 95 F.3d 959, 969, 972-74 (10th Cir. 1996); Hoffman
v. Capital Cities/ABC, Inc., 255 F.3d 1180, 1183-85 (9th Cir. 2001).
256
Vans, Inc. v. MSCHF Prod. Studio, Inc., 88 F.4th 125, 137-38 (2d Cir. 2023) (inner citations presented as in
original).
257
E.g., Dr. Seuss Enterprises, L.P. v. ComicMix LLC, 983 F.3d 443, 461-62 (9th Cir. 2020) (citing Twentieth Century
Fox Television v. Empire Distribution, Inc., 875 F.3d 1192, 1198 (9th Cir. 2017); E.S.S. Entm't 2000, Inc. v. Rock Star
Videos, Inc., 547 F.3d 1095, 1099-1100 (9th Cir. 2008); Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1245 (9th Cir.
2013)); Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1015 (3d Cir. 2008). Cf. Parks v. LaFace Recs., 329 F.3d 437, 444
(6th Cir. 2003) (engaging in First Amendment analysis and application of Rogers in the context of cross-motions for
summary judgment).
258
E.g., Dorpan, S.L. v. Hotel Melia, Inc., 728 F.3d 55, 66 (1st Cir. 2013); Au-Tomotive Gold, Inc. v. Volkswagen of
Am., Inc., 457 F.3d 1062, 1075 (9th Cir. 2006); AHP Subsidiary Holding Co. v. Stuart Hale Co., 1 F.3d 611, 616 (7th
Cir. 1993); Country Floors, Inc. v. P'ship Composed of Gepner & Ford, 930 F.2d 1056, 1063 (3d Cir. 1991).
259
Punchbowl, Inc. v. AJ Press, LLC, 90 F.4th 1022 (9th Cir. 2024) (Punchbowl II) (referencing Mattel, 296 F.3d at
902; Gordon, 909 F.3d at 264; ComicMix LLC, 983 F.3d at 462; E.S.S. Ent. 2000, 547 F.3d at 1099-1100; Walking
Mountain Prods., 353 F.3d at 807; Twentieth Century Fox, Inc., 875 F.3d at 1197).

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Cases that have been adjudicated after Jack Daniel’s give us an indication of how the
Supreme Court’s interpretation of the Roger’s test and the adjudication of parody and
comment and criticism defenses at the infringement and likelihood of confusion stage will play
out in the lower courts:

• In re Elster, 26 F.4th 1328 (Fed. Cir. 2022), rev’d, Vidal v. Elster, No. 22-704, 2024 WL
2964139 (U.S. June 13, 2024), involved the “Trump Too Small” trademark, which
incorporated the last name “Trump” without consent. The Federal Circuit had
overturned the Trademark Board’s denial of registration on First Amendment grounds,
recognizing that the mark included both parody and political commentary. Unlike a
typical Rogers analysis, this decision was rooted in the Tam260 and Iancu261 precedents,
which explored the First Amendment’s impact on trademark registration rules.
However, the Supreme Court later reversed the Federal Circuit, not on grounds of
parody, but because the Lanham Act’s prohibition on registering a trademark with the
name of a living individual without consent does not require heightened First
Amendment scrutiny. Even though the rule was content-based and the mark had a
political message, the Court treated the trademark regulation as a standard, traditional
application of trademark law rather than as a restriction on political speech.

• In JTH Tax LLC v. AMC Networks Inc. (S.D.N.Y. Sept. 25, 2023),262 JTH, which operates
under the “Liberty Tax Service” mark, filed a lawsuit claiming trademark and trade dress
infringement against AMC Networks and Sony Television. The dispute centered on the
fictional tax service “Sweet Liberty Tax Services” featured in the TV series Better Call
Saul. The court applied the Jack Daniel’s precedent, as well as the Rogers test, finding
that AMC and Sony did not use “Sweet Liberty Tax Services” as a source-identifying
mark for their show or any related products. Instead, the fictional company served as an
artistic element, advancing the plot in a single episode. While Rogers applied because
the mark wasn’t used in a source-identifying manner, the court still analyzed the Second
Circuit’s Polaroid factors and concluded there was no significant risk of consumer
confusion.263 The case highlights that Rogers applies when a senior mark is not used in a
source-identifying, trademark-like way.

• In Hermès Int’l v. Rothschild (S.D.N.Y. June 23, 2023),264 the jury found Mason Rothschild
guilty of trade dress infringement under the Lanham Act for his “MetaBirkins” NFTs,
which mimicked Hermès’ iconic Birkin bags. After the trial, the court denied Rothschild’s
post-trial motions and upheld the jury instructions. These instructions required the jury
to first determine whether Hermès proved infringement before considering whether the
First Amendment shielded Rothschild’s conduct. Following the Jack Daniel’s decision,

260
Matal v. Tam, 582 U.S. 218 (2017).
261
Iancu v. Brunetti, 139 S. Ct. 2294 (2019).
262
JTH Tax LLC v. AMC Networks Inc., No. 22 CIV. 6526 (PGG), 2023 WL 6215299, at *4–5 (S.D.N.Y. Sep. 25, 2023)
263
Id. at *8-15.
264
Hermes Int'l v. Rothschild, No. 22-CV-384 (JSR), 2023 WL 4145518, at *1 (S.D.N.Y. June 23, 2023).

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the court ruled that Rothschild’s use of Hermès’ trademark was source-identifying,
meaning it served as a designation of origin for his own NFTs and website.265 Thus,
Rogers did not apply as a preliminary defense, though Rothschild’s parodic intent could
still be considered in the infringement analysis.

• In Vans, Inc. v. MSCHF Product Studio (2d Cir. 2023),266 the court addressed MSCHF’s
“Wavy Baby” shoes, which heavily incorporated Vans’ trademarks and trade dress,
including the “Old Skool” and “Off the Wall” marks, across the shoes, tags, labeling, and
packaging. Although MSCHF argued that the shoes were a parody and a form of artistic
expression, the Second Circuit, following the Jack Daniel’s ruling, found that the marks
were used in a source-identifying way, meaning they functioned as trademarks for
MSCHF’s own goods.267 While the court acknowledged that parodies are inherently
expressive, it ruled that Rogers does not apply when a trademark is used primarily to
identify the source of a product. Parodic expression could be considered as a mitigating
factor in the infringement analysis, but it did not serve as a threshold defense to
preclude the claim. 268

3. False endorsement cases and scenarios involving actual deepfakes

The deepfakes community has brought us several social media commercial
advertisements featuring deepfakes of Mr. Beast, Tom Hanks, Taylor Swift, and Gayle King,
which can be compared with the deepfake generated new song, “Heart on My Sleeve,” that
mimics the singing voices of Drake and The Weeknd.

265
Hermes, 2023 WL 4145518 at *1 (citing Jack Daniel’s, 143 S.Ct. at 1583).
266
Vans, Inc. v. MSCHF Prod. Studio, Inc., 88 F.4th 125, 136–37 (2d Cir. 2023).
267
Id. at 137 (quoting Jack Daniel’s 599 U.S. at 153).
268
Id. at 137-38.

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269

None of these examples have resulted in litigation, but they do illuminate the issues
involved in deepfaked advertising (commercial speech) compared to a pure speech example of
an AI generated musical recording (not commercial speech). The social media posts with
deepfaked celebrity images of MrBeast, Tom Hanks, Taylor Swift, and Gayle King were
promoting a separate service or product; they were soliciting the viewer to look into the
referenced service or product in hopes of inducing a commercial transaction.270 Thus, these
promotions should be evaluated as commercial speech and be devalued in terms of the
expression evident in the ads beyond the exploitation of the celebrity likenesses.
In contrast, “Heart on my Sleeve” is a song. It is not promoting a separate service or
product. Yes, the release of the song most likely will meet the commercial purpose or usage in
trade requirements of most right of privacy and right of publicity statutes because the song was
released on Spotify by its anonymous creator, Ghostwriter977, where each download qualifies
the poster for renumeration.271 And as noted by the Midler and Waits cases above, the
mimicking of a celebrity’s voice is actionable under of right of publicity and right of privacy laws.
Therefore, while the technology of creation is different, the depiction or rendering of a
person’s name, identity, likeness, or aspects of their persona in the context of commercial
speech is likely to result in successful claims for violation of the rights of privacy or publicity. But
a non-commercial speech application, such as the “Heart on my Sleeve” song, will be evaluated
in a more neutral manner because the speech and expression inherent in the use will not be

269
Image sources: MrBeast and Tom Hanks: Dominic Yeatman, MrBeast calls AI deepfakes a 'serious problem' after
scam ad of Youtube star emerges - a day after Tom Hanks slammed fake advert using his image, DAILY MAIL (Oct. 3,
2023 14:16 EDT), https://www.dailymail.co.uk/news/article-12589267/mrbeast-youtube-deepfake-iphone-video-
ai.html; Taylor Swift: Megan Cerullo, Fake AI-generated ads use Taylor Swift's likeness to dupe fans, CBS NEWS (Jan.
9, 2024), https://finance.yahoo.com/news/ai-generated-ads-le-creuset-235923195.html; Gayle King: Jake
Peterson, These Latest Celebrity Deepfakes Show How Advanced Scams Have Become, LIFEHACKER (Oct. 3, 2023),
https://lifehacker.com/these-latest-celebrity-deepfakes-show-how-advanced-scam-1850895311; Drake and The
Weeknd: SaycheeseDGTL, The A.i Drake + The Weeknd song “heart on my sleeve” was at over 250k streams before
it was removed from Spotify, X (Apr. 18, 2023 10:36 P.M.),
https://twitter.com/SaycheeseDGTL/status/1648515966660403201.
270
Arguably, the MrBeast promotional post was itself a fake ad—it does not appear to be a genuine promotion of
the sales of iPhones.
271
Colin Stutz, The Fake Drake AI Song Earned Millions of Streams – But Will Anyone Get Paid?, BILLBOARD (Apr. 19,
2023), https://www.billboard.com/pro/fake-drake-ai-song-earned-millions-streams-get-paid/.

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discounted by the commercial speech label. The use still might meet the definition of a
commercial exploitation in that Ghostwriter977 posted it on revenue-generating streaming
services, and therefore it may still be evaluated as unfair exploitation of Drake and The
Weeknd’s publicity or privacy rights.

VI. Conclusion
Deepfakes and other AI-generated manipulations of individuals’ likenesses in audio,
video, and imagery are increasingly pervasive, but there are well-developed areas of law that
are adaptable to address the legal issues raised by deepfakes. The intersection of publicity,
privacy, and trademark law is one such area to focus on. This triad of legal theories provides
critical protection against unauthorized exploitation of one’s persona. Publicity law, grounded in
property rights, offers individuals control over the commercial use of their identity. Privacy law,
rooted in tort law, safeguards individuals from unwanted exposure and emotional harm.
Trademark law, focusing on false endorsement and consumer confusion, aims to prevent
misleading uses of one’s likeness.
Right of publicity law is poised to provide robust protections against deepfake
exploitation of people’s names, images, likenesses, and aspects of their persona, particularly
when the use occurs in commercial contexts. The key modalities of right of publicity law apply
to deepfakes through well-established precedents. Publicity claims focus on the commercial
exploitation of a person’s identity for monetary gain, and case law demonstrates that deepfakes,
which often use multiple modalities (e.g., images, voice, video), should fall within this legal
framework. Courts have consistently recognized individuals' rights to control how their
identities and even specific aspects of their fame and persona are used, as exemplified by the
protections offered for the recognizable singing voices of Bette Midler and Tom Waits, the
general profile and appearance of Muhammad Ali and Bob Newcombe, and the television intro
line for the entrance of Johnny Carson on his own late night show.
In this analysis, it is important to separate deepfake uses in commercial speech from
other, non-commercial, non-promotional, and non-merchandising uses, such as uses for artistic
expression or commentary in parodies. Deepfakes used in commercial speech—such as
advertisements or promotions—trigger right of publicity protections directly when they exploit
a person’s name, likeness, or persona for economic gain. Courts have generally ruled against the
unauthorized commercial use of a person’s identity, especially in advertising contexts, where
public figures like Don Henley and Kareem Abdul-Jabbar have prevailed in protecting their
publicity rights. Commercial speech enjoys less First Amendment protection, making it easier for
individuals to succeed in publicity claims when deepfakes are used in advertisements or product
endorsements. On the other hand, deepfakes used for commentary, criticism, or parody should
be expected to enjoy strong First Amendment protections. Parody, in particular, is a well-
established defense in right of publicity and privacy claims, allowing creators to mimic or mock

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public figures, celebrities, businesses, and institutions, in ways that contribute to social or
political discourse. Courts often weigh the expressive value of the deepfake against its
commercial exploitation to determine whether the use constitutes fair use or infringement, and
the weight of First Amendment commentary and criticism weighs heavily in favor or the
commentator.
Deepfakes can also create liability under federal trademark law, particularly through
false endorsement and false designation of origin claims. When deepfakes use a person’s
likeness in a way that falsely implies endorsement or affiliation, trademark law should step in to
protect both the consumer from confusion and the individual from unauthorized commercial
exploitation. Cases involving false testimonials of public figures, such as Elon Musk and Tom
Hanks, illustrate how deepfakes can mislead consumers and unfairly appropriate a person’s
goodwill in commercial settings. The First Amendment limits these claims when the deepfake
involves expressive content, such as art or parody, but courts following Jack Daniel’s are careful
to assess whether the deepfake is used in a source-identifying manner. If the deepfake is
employed to designate the source of goods or services—even if it also has components of an
artistic or critical nature—the First Amendment may not offer protection and claims of
infringement are more likely to succeed. Parody has long been an available First Amendment
defense in trademark law, but its success rate varied. A direct and obvious act ridiculing a known
brand used to have a good chance of success, but the Supreme Court’s decision in Jack Daniel's
clarified that the parody defense applies only when the content (i.e., the deepfake itself) is not
used as a source identifier. If the parody involving a deepfake functions in part or in whole as a
commercial label or trade dress for a product, courts will evaluate the likelihood of consumer
confusion over endorsement or affiliation, and the deepfake may still result in trademark
liability.
Perhaps the grayest area of this discussion is the role that the First Amendment will play
in situations where deepfakes cause personal injuries and privacy violations. Deepfakes can give
rise to tort claims, including defamation, fraud, sexual harassment, and intentional infliction of
emotional distress, particularly when used to harm reputations or invade privacy. Although
there are few reported deepfake cases in tort law, examples like the Rafaella Marie Spone case,
where a deepfake was used to harass cheerleaders, highlight the potential for both civil and
criminal liabilities. No new laws were needed to prosecute Spone for the crime of harassment of
a minor. The tort claims of intentional infliction of emotional distress and variations on the
mens rea of such claims (i.e., negligent infliction) are available to remedy outrageous behavior
as when deepfakes are designed to cause personal harm or exploit private individuals. Speech
integral to criminal conduct may be regulated on a rational basis level, but the First Amendment
does not allow unlimited protection in cases where a deepfake invades personal privacy or
causes reputational damage because false statements are not freely regulable. Even defamation
is complicated depending on the speaker (the press, or a private person) and the target of the
alleged defamation (a public official? a public figure? a limited purpose public figure? or a

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private person?). In privacy contexts, courts focus on whether the deepfake serves a public
interest or whether it unjustifiably intrudes into a person’s private life.
Therefore, while deepfake images of celebrities and private and public figures are
becoming increasing common, if not ubiquitous, there are well-developed areas of law that are
adaptable to address the legal issues of name-image-likeness exploitation raised by deepfakes.

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