©2013. Published in Landslide, Vol. 6, No. 1, September/October 2013, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
Kim Kardashian and her sisters lay claim to a chain of retail stores, clothing and cosmetics lines, and multiple reality television programs, making Keeping Up with the Kardashians as easy as a click of the remote.1 From a live, two-part wedding telecast, to Court TV updates chronicling the end of the 72-day union, to daily “bump watch” photos chronicling Kim’s subsequent pregnancy, the American public has truly been spared no detail.2
Similarly, on a noncelebrity level, with one’s phone and tablet constantly besieged by tweets and real-time Facebook updates from friends, former high school classmates, and sundry: What are the expectations of privacy in our oversharing society? In other words, the personal may be political, but is it still personal?
It was precisely these stretched social norms of privacy and public expression that the United States District Court for the Central District of California tackled in the context of a recent right of publicity case involving the estate of Albert Einstein.
In the United States, the right of publicity, which prevents the unauthorized commercial use of an individual’s name, likeness, or other recognizable aspects of one’s persona, is derived largely from state common or statutory law.3 Some states4 recognize a distinct “right of publicity,” while others provide protection under unfair competition law (as unlawful “passing off”) or via a “right of privacy” (as an unauthorized appropriation of one’s name or likeness).5 Likeness is not an exact science: Wheel of Fortune tile-turner Vanna White successfully sued Samsung for posing a metal robot in a glitzy gown and platinum wig next to a letter board, in a controversial Ninth Circuit opinion that embraced a broad standard of what constitutes likeness under the common law right of publicity.6
Hebrew University, Einstein, and “The Sexiest Man Alive”
When the public pictures Nobel Laureate Dr. Albert Einstein, renowned theoretical physicist, political activist, and humanitarian, they likely conjure up a shock of white hair; soft, avuncular features; a wooly, caterpillar mustache; or perhaps a decidedly European three-piece suit. In November 2009,7 however, consumers got another take on Einstein, courtesy of a centerfold advertisement in People Magazine, by way of General Motors (GM). This Einstein bore the chiseled physique and baggy jeans of a hip-hop icon, form-fitting white briefs protruding high over the waistband, and a muscular forearm tattooed with “e=mc2.” GM, marketing its 2010 crossover vehicle, juxtaposed its reenvisioned Einstein with the tagline “Ideas are sexy too.”
Hebrew University of Jerusalem (HUJ),8 heir to Einstein’s intellectual property rights—including, asserted HUJ, any purported publicity rights9—was not amused by GM’s sexualized, Einstein shill.10 HUJ brought suit against GM for this unauthorized use of Einstein’s image in the United States District Court for the Central District of California, alleging violation of HUJ’s right of publicity of a deceased personality under California Civil Code section 3344.1, and violation of HUJ’s common law right of publicity, as well as unfair competition under Lanham Act § 43(a)11 and the California Business and Professions Code.12
GM’s Motion for Summary Judgment
On May 13, 2011, after extensive discovery, GM moved for summary judgment, asking the United States District Court for the Central District of California to answer the following: (1) whether there is a postmortem right of publicity in New Jersey; (2) whether establishing any such right is dependent on the decedent’s lifetime exploitation of his or her right of publicity; (3) whether there was evidence of record that Einstein himself had exploited his right of publicity; and (4) assuming that Einstein had a postmortem right of publicity, whether HUJ had inherited this right by virtue of Einstein’s will.13
California Right of Publicity, Civil Code Section 3344.1, and Common Law Right of Publicity
Albert Einstein, who had lived in many of the storied capitals of Europe and held academic court at Princeton University, had never lived in the state of California, whose courts would determine the fate of his publicity rights.14 Accordingly, both HUJ and GM asserted that because Einstein was domiciled in New Jersey when he died, then New Jersey law, and not California law, controlled on the issue of whether Einstein and/or HUJ had a postmortem right of publicity in the Einstein likeness, and for how long such a right lasted.15
While no New Jersey statute provides for a postmortem right of publicity, and no New Jersey state court had recognized such a right, HUJ asserted that courts applying New Jersey law had consistently upheld postmortem right of publicity claims without requiring a showing that the deceased celebrity had exploited his or her publicity rights during his or her lifetime.16 Accordingly, asserted HUJ, even if the court found that Einstein himself had not sought out fame in his personhood, apart from his scholarship, this should not affect HUJ’s rights in his likeness after his death.17
GM acknowledged that New Jersey state courts would recognize a postmortem right of publicity, but argued that this right applied only if the deceased had commercially exploited that right during his or her lifetime. Einstein had not himself (said GM) adequately exploited his right of publicity, and thus no postmortem right could be extant.18 The court sided with HUJ, finding that the New Jersey Supreme Court would not impose a requirement of lifetime exploitation, and denied summary judgment.19 The court reserved the question of the duration of Einstein’s right of publicity.
HUJ’s Motion for Summary Judgment
Duration of Postmortem Right
Later in the case, HUJ filed for judgment as a matter of law under Federal Rule of Civil Procedure 50(a), which the court treated as a summary judgment motion. HUJ argued that the duration of the postmortem right of publicity is indefinite under New Jersey common law, or in the alternative that the duration should be 70 years postmortem, consistent with the current federal copyright term.20 GM argued that Einstein’s right of publicity had expired.
Given that New Jersey courts had not decided the duration of that state’s postmortem right of publicity, the California court was, in essence, required to “predict how the [New Jersey Supreme Court] would decide the issue.”21 The court began its analysis in its own backyard, noting that the duration of California’s statutory postmortem right of publicity is 70 years.22 However, this 70-year term is limited to California domiciliaries.23
The court then turned to Presley’s Estate v. Russen,24 the only case in New Jersey to ever discuss the question of duration of New Jersey’s right of publicity. While the Presley court declined to rule on the duration of New Jersey’s right of publicity, it did suggest that the New Jersey legislature25 could look to the federal Copyright Act, which at that time provided for a copyright term of life plus 50 years.26
California’s more expansive rights notwithstanding, the court argued for a more limited right of publicity, noting that “[t]he right of publicity originally developed within the array of privacy rights that are considered personal, are based on dignitary interests and [were] not descendible.”27 While the court acknowledged that now “the right of publicity is widely understood, including in New Jersey, to be akin to intellectual property,”28 it maintained that, inherently, the right of publicity remains rooted in its protection of “an individual’s interest in personal dignity and autonomy.”29 “Surely, however, the personal interest that is at stake becomes attenuated after the personality dies.”30
The court leaned on the Restatement (Third) of Unfair Competition for the proposition that “[a] maximum 50-year postmortem duration here would be a reasonable middle ground that is long enough for a deceased celebrity’s heirs to take advantage of and reap the benefit of the personal aspects of the right.”31
As to HUJ’s assertion that the court should adopt a 70-year right of publicity, akin to the copyright term, the court found that, if the Copyright Act were applicable at all,32 it would be the 1976 version of the Act in effect at the time of Einstein’s death—which provided only a 50-year postmortem term—because HUJ acquired Einstein’s right of publicity in 1982, before the 1998 Copyright Extension Act.33 The court reasoned that “HUJ’s reasonable expectation at that time . . . would have been that any rights it acquired would not last more than 50 years after.”34
The court further noted that none of the five other states that recognize a common law postmortem right of publicity had ever addressed the issue of the right’s duration, or even raised it as a question needing to be answered.35
Moreover, the court noted, “[t]he majority of states with statutory rights of publicity limit the right’s postmortem duration to 50 years or less.”36 It is, however, a sharply narrow majority, with seven states with statutory rights of publicity that permit the right to endure for up to 50 years,37 and six states, including the court’s home state of California, whose statutes provide a postmortem term of 50 years or more.38
Critique of Publicity Rights
Finally, the court argued that significant public policy concerns precluded the application of the “extremely lengthy, 70-year postmortem duration of copyright to the right of publicity.”39
First Amendment Considerations
First, the court asserted that the right of publicity had the potential to chill First Amendment rights.40 As such, the court cautioned that “[a]n open-ended right of publicity, or even a postmortem duration longer than 50 years, raises considerable First Amendment concerns and creates a potentially infinite curb on expression.”41
Social Media’s Effects on Notions of Privacy Rights
Next, the court noted that “the dizzying explosion in the tools of communication . . . including smart phones, personal computers, social networks, email, Twitter, [and] blogs” that has occurred in the 57 years since Albert Einstein was laid to rest has “caused a swift and dramatic, but still developing, impact on ordinary life,” impacting the “social norms regarding privacy and public expression.”42 As a result, the law of privacy was in flux, seemingly imperiled by the “social media devotees, especially young people, [who] are said to have little compunction about revealing intimate information about themselves,” and it was thus unclear if the law should “afford celebrities greater rights in controlling publicity about themselves, to protect against what appears to be a growing tendency of people to not just exalt but even to exploit the fame and celebrity of others.”43
Accordingly, the court stated that it would be “imprudent to issue any ruling that strengthens (or at least lengthens) one right—that of the right of publicity—to the potentially significant detriment of . . . other rights,” e.g., First Amendment rights.44
Ultimately, the court found that Einstein’s persona was such an ingrained cultural touchstone that, nearly 60 years after his death, others should be able to incorporate Einstein’s persona in their own creative expressions, even if these expressions were of the tacky or tasteless variety.45
Accordingly, while GM’s hip-hop Einstein may not have been in good taste, the court held that HUJ was clearly not in good time, as 2005—50 years from Einstein’s 1955 death at Princeton University Hospital, and four years before GM’s People Magazine advertisement—was the last year in which HUJ could enforce its postmortem right of publicity in Einstein’s likeness.46
The court concluded that it is unlikely that any consumer viewing the “obviously humorous ad,” while tucking into People Magazine’s November 2009 “Sexiest Man Alive” issue, could have reasonably inferred that Einstein and/or HUJ was endorsing GM’s 2010 Terrain, some 55 years after Einstein’s death.47
Time will tell if the Hebrew University of Jerusalem decision is a mere anomaly. Has the privacy norms pendulum simply swung too far to maintain rights of publicity in our “TMI” “TMZ” culture? Or will the case of a California court interpreting an Israeli university’s publicity rights under New Jersey law be relegated to a curio in our legal annals—as odd as reducing our most famous theoretical physicist to an illustrated man in his skivvies.
1. Judith Newman & Leslie Bruce, How the Kardashians Made $65 Million Last Year, Hollywood Rep., Feb. 16, 2011.
2. The Kardashians have so clawed themselves onto the popular culture landscape that one forgets the source of their fame (or infamy) was a leaked sex tape, eventually licensed and distributed by Kim for a $5 million payout. Tracy Clark-Flory, The Legal Secrets of Sex Tapes, Salon (May 28, 2010), www.salon.com/2010/05/28/celebrity_sex_tapes.
3. Ray D. Madoff, Immortality and the Law: The Rising Power of the American Dead 130–36 (2010); Talk of the Nation: “Rights of Publicity” Extended beyond the Grave, NPR (Sept. 4, 2012), www.npr.org/2012/09/04/160551338/rights-of-publicity-extended-beyond-the-grave.
4. A full listing of all of the right of publicity statutes in the United States can be found on Jonathan Faber’s Right of Publicity website at http://rightofpublicity.com/statutes (last visited July 6, 2013).
5. Notably, Kim Kardashian brought and successfully settled a lawsuit against Old Navy claiming the clothing retailer had violated her publicity rights by using a look-alike in a 2011 ad. Kardashian v. Gap Inc., No. 2:2011cv06568 (C.D. Cal. 2011); Christie D’Zurilla, Kim Kardashian, Old Navy Settle over Commercial Starring Lookalike, L.A. Times, Aug. 29, 2012.
6. White v. Samsung Elecs. Am., Inc., 971 F.2d 1395 (9th Cir. 1992), petition for reh’g en banc denied, 989 F.2d 1512 (9th Cir. 1993) (holding that misappropriation of the “celebrity identity” of popular celebrities did not require obvious means such as name, true likeness, or voice).
7. People Mag., Nov. 30, 2009 (“Sexiest Man Alive” edition).
8. HUJ, Israel’s second-largest university, was opened in 1925. Albert Einstein served on HUJ’s first board of directors alongside Sigmund Freud; theologian Martin Buber; and Israel’s first president, Chaim Weizmann. See The Hebrew University of Jerusalem, Am. Friends Hebrew U., www.afhu.org/why-support-hu (last visited July 6, 2013).
9. Article 13 of Einstein’s will states:
I give and bequeath all of my manuscripts, copyrights, publication rights, royalties and royalty agreements, and all other literary property and rights, of any and every kind or nature whatsoever, to my Trustees hereinafter named, IN TRUST, to hold the same for a term measured by the lives of my secretary Helena Dukas, and my step-daughter, Margot Einstein. . . . Upon the death of the said Helena Dukas and the said Margot Einstein, this trust shall terminate, and thereupon all funds or property, if any, still held in this trust, including all accrued, accumulated and undistributed income and all literary rights and property, shall pass and be distributed to Hebrew University.
Hebrew Univ. of Jerusalem v. Gen. Motors LLC, 878 F. Supp. 2d 1021, 1024 (C.D. Cal. 2012).
10. Although HUJ had itself licensed Einstein’s image on a wide variety of goods and services—including Daimler-Chrysler, Saab, and Kraft Foods—amounting $18 million annually. The Hebrew University of Jerusalem’s Complaint, Hebrew Univ. of Jerusalem, 878 F. Supp. 2d 1021.
11. 15 U.S.C. § 1125(a).
12. HUJ asserted that by creating and distributing throughout the United States its “Terrain” advertisement featuring Albert Einstein, GM intentionally and willfully created the false impression that Einstein and/or HUJ was associated in some manner with GM and GM’s “Terrain” vehicle, and that HUJ had agreed to such use of Einstein’s image and likeness, in violation of Lanham Act § 43(a). Hebrew Univ. of Jerusalem, 878 F. Supp. 2d at 1023. Applying the Ninth Circuit’s eight-factor Sleekcraft test, Judge Howard Matz agreed with GM that the People Magazine advertisement was unlikely to confuse consumers as to HUJ’s sponsorship or approval of the product. Id. at 1036–37 (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979)).
13. Hebrew Univ. of Jerusalem, 878 F. Supp. 2d at 1023.
14. Walter Isaacson, Einstein: His Life and Universe (2007).
15. Hebrew Univ. of Jerusalem, 878 F. Supp. 2d at 1027 (citing Cal. Civ. Code § 946: “If there is no law to the contrary, in the place where personal property is situated, it is deemed to follow the person of its owner, and is governed by the law of his domicile.”); see also Cairns v. Franklin Mint Co., 292 F.3d 1139, 1145 (9th Cir. 2002) (interpreting Civil Code section 946 to require application of the law of an individual’s domicile at death in right of publicity case, even though California’s right of publicity statute purportedly applies to “acts occurring directly in [California]”).
16. Hebrew Univ. of Jerusalem, 878 F. Supp. 2d at 1029–30.
17. Id. (citing McFarland v. Miller, 14 F.3d 912, 913 n.1 (3d Cir. 1994); Prima v. Darden Rests., Inc., 78 F. Supp. 2d 337 (D.N.J. 2000); Palmer v. Schonhorn Enters., Inc., 232 A.2d 458 (N.J. Super. Ct. Ch. Div. 1967)).
18. Hebrew Univ. of Jerusalem, 878 F. Supp. 2d at 1027–29. GM cited two arguably opposing New Jersey district court opinions decided the same year. Presley’s Estate v. Russen, 513 F. Supp. 1339, 1354–55 (D.N.J. 1981), stated: “We . . . determine that during his life Elvis Presley owned a property right in his name and likeness . . . . [and] hold that Elvis Presley’s right of publicity survived his death and became part of Presley’s estate.” Conversely, in Gleason v. Hustler Magazine, Inc., 7 Med. L. Rep. 2183, 2185 (D.N.J. July 6, 1981), the court held that decisions recognizing a postmortem right “reflect reliance on a critical element: the decedent’s own overt exploitation of his name or likeness, usually through an inter vivos transfer of his rights.”
19. Hebrew Univ. of Jerusalem, 878 F. Supp. 2d at 1031.
20. The current 70-year postmortem term was enacted by the 1998 Copyright Term Extension Act, which increased the length of copyright protection from its former duration of life plus 50 years. Sonny Bono Copyright Term Extension Act, Pub. L. No. 105-298, 112 Stat. 2827 (1998) (codified as amended at 17 U.S.C. §§ 108, 203, 301–04).
21. Hebrew Univ. of Jerusalem v. Gen. Motors LLC, 903 F. Supp. 2d 932, 933 n.4 (C.D. Cal. 2012) (citing In re Kekauoha-Alisa, 674 F.3d 1083, 1087–88 (9th Cir. 2012)).
22. Id. at 934–35 (citing Cal. Civ. Code § 3344.1(g)).
23. Cal. Civ. Code § 946 (“If there is no law to the contrary, in the place where personal property is situated, it is deemed to follow the person of its owner, and is governed by the law of his domicile.”); Cairns v. Franklin Mint Co., 292 F.3d 1139, 1147–49 (9th Cir. 2002); see also Milton H. Greene Archives, Inc. v. Marilyn Monroe LLC, 692 F.3d 983, 1000 (9th Cir. 2012) (confirming that the law of the state where the deceased owner of the right of publicity was domiciled controls whether the right may be posthumously enforced).
24. Presley’s Estate v. Russen, 513 F. Supp. 1339, 1355 (D.N.J. 1981) (“Elvis Presley’s right of publicity survived his death and became part of Presley’s estate.”).
25. As the Hebrew University of Jerusalem court noted in its final decision, “[a]lthough the New Jersey Legislature has considered at least two bills that would create a statutory right of publicity, it has thus far not seen fit to enact such a right.” 903 F. Supp. 2d at 936 (citing Assemb. 3536, 213th Legis. (N.J. 2008); Assemb. 4476, 212th Legis. (N.J. 2007)). The court pointedly noted that there was “nothing stopping HUJ from petitioning the New Jersey Legislature to pass a statute, with retroactive applicability, that would create a definitive postmortem right of publicity with the extended duration that HUJ [sought].” Id.
26. 17 U.S.C. §§ 302–04 (1976); Presley, 513 F. Supp. at 1355 n.10.
27. Hebrew Univ. of Jerusalem, 903 F. Supp. 2d at 936 (citing Hart v. Elec. Arts, Inc., 808 F. Supp. 2d 757, 772 (D.N.J. 2011); 2 J. Thomas McCarthy, Rights of Publicity and Privacy § 9:6 (2d ed. 2012); William L. Prosser, Privacy, 48 Cal. L. Rev. 383 (1960)).
28. Hebrew Univ. of Jerusalem, 903 F. Supp. 2d at 936 (citing Hart, 808 F. Supp. 2d at 772; McCarthy, supra note 27, § 9:6 (noting that the right of publicity, like trademark and copyright, recognizes “legally enforceable rights in the commercial value of intangible property”)).
29. Hebrew Univ. of Jerusalem, 903 F. Supp. 2d at 937 (citing Restatement (Third) of Unfair Competition § 46 cmt. c).
31. Id. (citing Restatement (Third) of Unfair Competition § 46 cmt. h).
32. The court seemed skeptical of the application of copyright law to the right of publicity, noting that “protection of copyright is designed to encourage the future creation of works of art,” whereas “[t]he commercial value of a person’s identity often results from success in endeavors such as entertainment or sports that offer their own substantial rewards. Any additional incentive attributable to the right of publicity may have only marginal significance.” Id. at 939 (internal quotation marks omitted). Thus, “it is questionable whether those interests should be protected for as long a period after the death of the person to whom they belong as are his copyrighted works.” Id.
33. Id. at 938.
35. Id. at 939 (citing cases from Connecticut, Georgia, Michigan, South Carolina, and Utah). The court was quick to note, however, that “[i]n none of those cases, however, was the interval between the death of the person whose right of publicity was at stake and the date of the alleged infringement of that right 50 years or longer.” Id.
37. Id. at 939–40 (citing Fla. Stat. § 540.08 (40 years); 765 Ill. Comp. Stat. 1075/30 (50 years); Ky. Rev. Stat. Ann. § 391.170 (50 years); Nev. Rev. Stat. § 597.790 (50 years); 42 Pa. Cons. Stat. § 8316 (30 years); Tex. Prop. Code Ann. § 26.012 (50 years); Va. Code Ann. § 8.01-40 (20 years)).
38. Id. at 940 (citing Cal. Civ. Code § 3344.1 (70 years); Ind. Code § 32-36-1-8 (100 years); Ohio Rev. Code Ann. § 2741.02 (60 years); Okla. Stat. tit. 12, § 1448 (100 years); Tenn. Code Ann. §§ 47-25-1102 to -1104 (indefinite as long as the persona has commercial value); Wash. Rev. Code §§ 63.60.010–.040 (75 years when the persona has commercial value)). Given its entertainment industry, it is not surprising that California is the sole state whose right of publicity statute was enacted prior to the 1998 Copyright Revision Act. Id.
39. Id. at 939.
40. Id. at 940 (citing Hart v. Elec. Arts, Inc., 808 F. Supp. 2d 757, 774 (D.N.J. 2011) (noting that “it is clear that the right of publicity may encroach upon First Amendment rights” and discussing the various balancing tests used by courts to weigh those rights); Restatement (Third) of Unfair Competition § 47 cmt. c (“The right of publicity as recognized by statute and common law is fundamentally constrained by the public and constitutional interest in freedom of expression.”)).
42. Id. at 941.
44. Id. at 942.
45. Id. at 941–42 (noting that GM’s commercial speech is clearly protected by the First Amendment).
46. Id. at 942.
47. Id. at 937.