“As far back as I can remember, I always wanted to be a gangster” declares stool pigeon Henry Hill in the opening scene of Martin Scorsese’s mob classic Goodfellas. Complementing the iconic performances of Robert De Niro, Ray Liotta and Joe Pesci are those by a gang of colorful character actors who lend texture and authenticity to the film. Among the unforgettable scenes was one featuring henchman Frankie Carbone hanging from a meat hook; as Henry explains “[w]hen they found Carbone in the meat truck, he was frozen so stiff it took them two days to thaw him out for the autopsy.”

Actor Frank Sivero (who played Carbone) agreed, and sued the maker of TV’s The Simpsons for stealing the persona Sivero created as the inspiration for Louie, a henchman for the Springfield mob famous for saying “You got it, boss.” Sivero v. Twentieth Century Fox Film Corp. is the latest in a growing number of cases in which plaintiffs contend that their “right of publicity” has been infringed. The right of publicity (recognized in Texas and most other states and by the U.S. Supreme Court) purports to protect against the uncompensated commercial exploitation of one’s likeness or identity by another. Since the persona of a celebrity is likely more valuable than that of someone less in the public eye, the leading cases on right of publicity have been decided in California and the “transformative use” test developed in those cases is now routinely applied in other jurisdictions.

Sivero alleged in 1989 that two writers for The Simpsons lived in an apartment unit next to his and were aware that Sivero was developing the Frankie Carbone character for Goodfellas. An episode of The Simpsons that first aired in October 1991 included as a minor character a mafia henchman known as Louie, who Sivero alleged resembled his character in Goodfellas: Louie is an Italian-American gangster with a distinctive “afro” hairstyle similar to Sivero’s. Louie became popular and later appeared in 15 additional episodes, along with a movie and video game. Sivero contended that Louie was a “Simpsonized” version of Frankie Carbone and wanted his cut of the profits. Fox brought a motion to dismiss the case under California’s anti-SLAPP statute which was granted, and Sivero appealed.

The appellate court began by quickly finding that the complaint arose from Fox’s exercise of its right of free speech, citing to previous California appellate cases finding that a television show or video game is an expressive work constituting protected activity under the anti-SLAPP statute. Turning to the second anti-SLAPP element, the court held that Sivero failed to show the probability that he would prevail on his claims, finding that “even if Louie resembles Sivero, the Louie character contains significant transformative content other than Sivero’s likeness.” The “transformative use” defense to a right of publicity claim analyzes “whether the challenged work merely appropriates a celebrity’s likeness and economic value, and therefore is not entitled to First Amendment protection, or adds significant creative elements so as to transform the work into the defendant’s own expression.” The Sivero court warned of the need to be especially cautious when dealing with claims by celebrities, because “the very importance of celebrities in society means that the right of publicity has the potential of censoring significant expression by suppressing alternative versions of celebrity images that are iconoclastic, irreverent, or otherwise attempt to redefine the celebrity’s meaning.”

Ironically, the court found Sivero’s contention that he had been “Simpsonized” to be fatal to his argument …

In finding that the Louie character was transformative, the court emphasized that “Louie is not a literal likeness of Sivero,” but is instead “a cartoon character with yellow skin, a large overbite, no chin, and no eyebrows. Louie has a distinctive high-pitched voice which, as the trial court pointed out, has ‘no points of resemblance to [Sivero].’” Ironically, the court found Sivero’s contention that he had been “Simpsonized” to be fatal to his argument: “To be ‘Simpsonized’ is to be transformed by the creative and artistic expressions distinctive to The Simpsons …. Indeed, Sivero’s observation highlights the very point that the ‘creative elements predominate in the work.’” The court concluded that “[b]ecause of the cartoon distortions as well as the comedic portrayal of such mafia characters, Louie is not a satisfactory substitute for a conventional depiction of Sivero. And as a result, Louie does not greatly threaten Sivero’s right of publicity.” The court further found that the financial success of The Simpsons franchise owed little to Sivero’s own fame.

While it appears that courts are leery to extend the breadth of the right of publicity absent an avatar that is almost identical to the original, appearances can be deceiving. The truth is that the transformative use test is inherently subjective, and has a history of yielding inconsistent results in different courts under a patchwork of different state laws. Or, in the vernacular of Frankie and Louie, you can never be sure when you might get rubbed out.