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Joshua L. Simmons is an intellectual property partner at Kirkland & Ellis LLP. He represents clients in appellate and trial courts around the country, particularly in complex cases and those of first impression.
Miranda D. Means is an intellectual property associate at Kirkland & Ellis LLP. Her practice focuses on litigation and counseling.
Over the past few years, a number of states have considered new or revised statutes that would protect the right of publicity. For example, last year the New York State legislature con- sidered Assembly Bill A08155, which would, at least nominally, transform New York’s right of publicity from a privacy right, codified in Civil Rights Law article 5, to a property right. By transitioning from an inalienable personal right to an alienable property right, New York would make the right of publicity transferable and descendible.
The response to the bill was swift and heated. A coalition of 38 individuals and organizations ran a full-page advertisement in the Albany Times-Union urging the legislature to reject the bill on First Amendment grounds.1 The coalition included such varied organizations as the Reporters Committee for Freedom of the Press, the Media Law Resource Center, the Motion Picture Association of America, the Electronic Frontier Foundation, and the Internet Coalition. A strong supporter of the bill, the Screen Actors Guild-American Federation of Television and Radio Artists (SAG-AFTRA), ran its own advertisements, demanding that New Yorkers “[p]revent exploitation of performers in the digital era.”2 When the dust settled and the bill came to a vote, the New York Assembly declined to pass it. Still, a Senate version of the bill (Senate Bill S5857A) currently is being considered by the New York Senate Judiciary Committee.3 If it moves out of committee, it may soon reignite the New York right of publicity debate.
The debate in New York reflects a broader trend across the country. The right of publicity is a growing battleground, on which rights holders on the one hand (typically public figures and actors) and content creators and service providers on the other (typically media companies and Internet companies) clash.4
This right of publicity battle takes place against the backdrop of a theoretically inconsistent and unpredictable legal landscape. In enacting right of publicity statutes, commentators have noted that many states struggled to adopt a strong, consistent theory of why the right exists and what it should be designed to protect.5 In some states, this failure has resulted in a kind of cognitive dissonance, such as when the right of publicity is called both a “privacy right” (neither descendible nor transferable) and a “property right” (both descendible and transferable), often interchangeably.6 Other states have avoided planting a flag in one theory or another by defining the right of publicity broadly, and then scaling it back based on various exceptions.7 As Eric Johnson notes in his recent essay, “Disentangling the Right of Publicity,” such statutes define the right by “saying what the right of publicity is not.”8
Given this situation, one would wonder whether legislation could be drafted that would avoid the pitfalls of current right of publicity statutes, and potentially bridge the gap between the parties at odds in the New York debate. But, given that the right of publicity is controversial, could consensus be reached? What elements would a uniform statute likely contain? What issues would it need to address? To understand how future legislation might be structured, it is important first to recognize how right of publicity statutes are structured today. To further this analysis, this article walks through both the theoretical underpinnings of the right of publicity and the elements that typically are included in right of publicity statutes.
The right of publicity was borne of the right to privacy, famously articulated by Justice Louis Brandeis and Samuel Warren in their article, “The Right to Privacy.”9 Brandeis and Warren were concerned with the right “to be let alone,” exemplified by the right to keep one’s thoughts to oneself.10
Building upon Brandeis and Warren’s approach, William Prosser proposed a series of four privacy torts eventually codified in the Restatement (Second) of Torts.11 These torts included the tort of misappropriation, which protects against “the [unauthorized] appropriation of name or likeness.”12 This tort remains part of the right of publicity law of many states today. Importantly, a right of publicity based in privacy theory generally has certain hallmarks. For instance, in some of the states that recognize the tort of misappropriation, harm is calculated with reference to the mental injury caused by the tortfeasor.13 Privacy-based rights of publicity are often neither descendible nor transferable because the right to privacy is a right to one’s own “inviolate personality,” and is therefore personal to each individual.14
Despite Prosser’s resistance to creating a separate, property-based right of publicity, property theory has come to play a central role in shaping the right. The Second Circuit distinguished the right of publicity as separate and distinct from the right to privacy in Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.15 In 1977, the Supreme Court clarified that the right of publicity was a form of intellectual property.16
Two different property-based justifications emerged in response to Haelan: (1) the incentive (or utilitarian) theory, and (2) the labor-desert (or Lockean) theory. The incentive theory of the right of publicity, based in utilitarianism, posits that the right ought to create “an economic incentive for [the plaintiff] to make the investment required to produce a performance of interest to the public.”17 This theory is sometimes premised on the notion that a person’s image is both a (1) nonexcludable and (2) nonrivalrous public good.18 Giving celebrities a right over their images, so the argument goes, ensures that celebrities will invest in themselves at optimal levels. The other major property theory underlying the right of publicity is the labor-desert theory. Built on John Locke’s theory of property, the labor-desert theory contends that people naturally deserve to enjoy the fruits of their labor.19
Depending on which of these views a state adopts, the resulting statutory law may contain certain provisions. A statute seeking to incentivize investment in a celebrity persona may afford protection only to commercially valuable identities.20 A statute seeking to reward a person’s hard work by protecting his or her ability to exploit his or her personality for commercial gain may also afford protection only to those with commercially valuable identities, as those without commercially valuable identities have, according to some theorists, nothing to exploit.21 Furthermore, under this view, the right of publicity may be transferable, as an individual, so the argument goes, should be able to exploit the right as he or she sees fit.22 This is where the theoretical rubber meets the practical road, in that whether the right of publicity is based in property or privacy should lead to one of two irreconcilable positions—a transferable property right or an inalienable privacy right. Of course, the law is not always so simple.
Readers familiar with right of publicity theory quickly will recognize that property and privacy are not its only theoretical underpinnings. Right of publicity law also relies heavily on the law of unfair competition (the “free-riding” theory) and trademark (the “consumer protection” theory). The free-riding theory, explicated by the Restatement (Third) of Unfair Competition, contends that the right of publicity ought to “prevent unjust enrichment of others seeking to appropriate” the commercial value of another’s fame.23 The free-riding theory has much in common with the incentive theory. For instance, the court in State ex rel. Elvis Presley International Memorial Foundation v. Crowell found that descendibility was justified by the unfair competition theory, the labor-desert theory, and the incentive theory.24
Consumer protection theory posits that the right of publicity ought to be designed to prevent consumer confusion about the source of a product or service.25 If a celebrity appears on a product, the public may think that the celebrity endorsed or was in some way involved with the production of the product. Thus, use of the image could mislead or confuse consumers. As with property theory and the free-riding theory, courts believe that descendibility makes sense based on consumer protection theory because it will “further the public’s interest in being free from deception with regard to sponsorship, approval, or certification of goods and services.”26 Furthermore, a statute based on consumer protection theory may require the infringing conduct to be commercial as, in the commercial context, the “potential for consumer deception” is particularly high.27
In Europe, personality theory, the idea that each individual has certain integral rights inherent in his or her identity and creations, is the dominant theory underlying the right of publicity. For instance, in France, commentators have noted that the purpose of the right of publicity is to protect “one’s honor and reputation.”28 Likewise, in Spain, the right of publicity appears to exist to ensure that certain constitutional protections, including “the right to honor, personal and family privacy, and one’s own image,” are upheld.29 There is a large amount of overlap between privacy theory and personality theory, as both protect certain dignitary rights. Therefore, a personality theory–based statute might contain similar provisions, including limitations on transfer and descendibility.
Most right of publicity statutes include the following major elements: (1) a definition of “personality” that limits the types of characteristics protected by the right; (2) a definition of “infringing use”; (3) a definition of who is protected by the right; (4) a list of exceptions and exemptions from liability; (5) rules regarding descendibility; and (6) available damages. We address each element in turn below.
The first, and perhaps most obvious, element of a right of publicity statute is a clear definition of “personality.” States can shape the right by either expanding “personality” to include elements such as “gesture,” “distinctive appearance,” “mannerisms,” or “impression,” or contracting it to include only elements like “name” and “signature.” How “personality” ought to be defined is a critical part of the New York debate, as the proposed bill expands the statutory definition to cover “gestures” and “mannerisms.” Opponents perceive this expansion as a threat to freedom of speech, as it would cover new kinds of uses.30 Supporters, by contrast, view this additional protection as necessary to preventing the exploitation of artists and actors.31
As table 1 illustrates, the definition of personality varies widely across the many states that have enacted right of publicity statutes. For ease of comparison, like elements appear in like colors. Notably, all of the states surveyed include “name” in their definition of “personality,” and most also include “likeness.” Other common, but not ubiquitous, elements include “signature,” “voice,” “portrait,”32 “picture,” and “photograph.” Less common elements include “title,” “distinctive appearance,” “substantially similar imitation,” and “gestures or mannerisms.”
Another way in which a state can either expand or limit the scope of the right of publicity is through the state’s definition of what constitutes an “infringing use.”33 Not all uses of an individual’s personality have been found by courts to constitute infringement of that person’s right of publicity. As is evident from table 2, the type of use that statutes most commonly prohibit is unauthorized use for “advertising purposes.” Under property theory and the free-riding theory, advocates argue that an advertiser who deprives the rights holder of the opportunity to license his or her personality denies the rights holder the fruits of his or her labor without contributing anything new of the advertiser’s own.34 Privacy theory, by contrast, focuses on invasions to one’s personal autonomy and dignity may occur even if the defendant does not commercially benefit from the violation.35 Other prohibitions, such as “endorsement purposes,” seem more closely related to trademark and consumer protection theory, though these prohibitions are less common. “Fundraising purposes,” also less common, seems also to stem from consumer protection theory.
Given these differences, some scholars have suggested dividing the right into a list of separate, enumerated rights, similar to the copyright and patent statutes. Such enumerated rights might include a “merchandizing right” or an “endorsement right.”36 No state statute, however, currently follows this model. On the one hand, a benefit of dividing the right into a list of enumerated rights is that when infringing use is more specifically defined, there is less need to enumerate a list of exemptions to the right of publicity. If, on the other hand, the drafter wishes to expand the right of publicity, it may want to define infringing use broadly and rely on exceptions to limit the right only where necessary.
While the issue of whether only those who have “commercially valuable” personalities should have rights of publicity is not always resolved by statute, it is an issue worth considering by statute drafters. As with all of the elements discussed herein, states diverge on how they approach this element (see tbl. 3). Many states extend protection beyond celebrities, but also include special privileges for those with “commercially valuable identities” over those without. For example, California’s Civil Code protects rights of publicity postmortem only where the individual in question developed a persona that had commercial value at the time of death or because of death.37 During life, however, anyone can get right of publicity protection.38 This is one way that statutes afford celebrities special protection, while extending some amount of protection to everyone.
Most states that recognize a right of publicity based in property law afford postmortem protection (see tbl. 4). This element continues to be a major point of contention in traditionally privacy-based states, like New York. A statute that makes the right of publicity descendible expands the right to estates. Some advocates assert that this expansion leads to needless litigation and lack of clarity regarding who owns what rights,39 while other advocates assert that descendibility properly rewards hard work and investment in the development of a famous personality.40
Even where states adopt a postmortem right, the right is often less expansive after death. For instance, some states require that a person (before death) or his or her estate register the right to enforce it.41 Additionally, some states limit the right to those with commercially valuable personalities.42 In California, for instance, the law affords only those with commercially valuable identities a postmortem right. Thus, while many view the postmortem right as a way to expand the right of publicity in favor of rights holders, a statute also can limit this right in various ways.
Many statutes define the right of publicity broadly, but use exceptions to narrow its scope. While there are certain exceptions that are common across states, the list of exceptions is wide-ranging with great variation. Table 5 illustrates some of the most common exempted uses. Due to First Amendment concerns, newsworthiness is a nearly ubiquitous exception to the right of publicity—even in states without statutory exemptions, these have created an exception for newsworthiness through case law, as noted below. Other common exceptions include expressive works, like singular works of art, plays, books, magazines, and musical compositions. Of the expressive works explicitly exempted by statute, books and musical compositions are commonly exempt.
Finally, the remedies available to one holding a right of publicity vary. Some states, such as California, allow plaintiffs to recover actual damages and the defendant’s “profits from the unauthorized use.”43 In other states, mental and emotional distress damages may be awarded.44 Some states, including California, Hawaii, Illinois, Indiana, and Nevada, provide statutory damages, typically ranging from $750 to $1,000.
As the right of publicity continues to draw significant attention across the United States, a close examination of current right of publicity statutes reveals the way in which different statutory elements can be expanded or limited to strengthen or weaken the right. Given the contentiousness of the right of publicity debate, the drafters of new or revised statutes have their work cut out for them as they attempt to construct a coherent statute.
1. See Via Pixabay, Media Opposes Right-of-Publicity Bill: “An Attack on the First Amendment,” Colum. Journalism Rev. (June 26, 2017), https://www.cjr.org/united_states_project/right-of-publicity-new-york.php.
2. See the full advertisement at https://www.sagaftra.org/files/ny_rights_of_publicity_1.jpg.
3. S. S5857A, 2017–2018 Leg., Reg. Sess. (N.Y. 2017).
4. In March 2018, for example, Louisiana sparked debate by reintroducing a right of publicity bill that would create a freely transferable, property-based right of publicity in that state.
5. Alice Haemmerli, Whose Who? The Case for a Kantian Right of Publicity, 49 Duke L.J. 383, 411 (1999) (“Given the state of the doctrine, it is clear that there is little consistent theoretical support for a right of publicity at the federal—or perhaps any—level.”).
6. See Rosa & Raymond Parks Inst. for Self Dev. v. Target Corp., 812 F.3d 824, 828 (11th Cir. 2016) (calling the Michigan right of publicity a privacy right, despite its transferability and descendibility, hallmarks of a property right).
7. More examples are discussed below, but see, for example, Fla. Stat. § 540.08, providing that “[n]o person shall publish, print, display, or otherwise publicly use for purposes of trade or for any commercial or advertising purpose the name, photograph, or other likeness of any natural person without . . . express written or oral consent.” The Florida statute also includes exceptions for, among other things, use in any “newspaper, magazine, book, news broadcast or telecast, or other news medium or publication as part of any bona fide news report or presentation having a current and legitimate public interest and where such name or likeness is not used for advertising purposes.”
8. Eric E. Johnson, Disentangling the Right of Publicity, 111 Nw. U. L. Rev. 891, 903, 908 (2017) (“Beyond the inefficiency, however, there is a larger and more important problem with the negative way in which right-of-publicity doctrine is structured: it leads to bad law.”).
9. Samuel D. Warren & Louis D. Brandeis, The Right to Privacy, 4 Harv. L. Rev. 193 (1890); see also ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 928 (6th Cir. 2003) (“The right of publicity is, somewhat paradoxically, an outgrowth of the right of privacy.”).
10. Warren & Brandeis, supra note 9, at 205.
11. Restatement (Second) of Torts §§ 652A–652I (Am. Law Inst. 1977); see also Neil M. Richards & Daniel J. Solove, Prosser’s Privacy Law: A Mixed Legacy, 98 Cal. L. Rev. 1887, 1906 (2010) (noting that Prosser did not divide the torts into a right of publicity separate from the tort of misappropriation, despite their different underlying purposes).
12. Richards & Solove, supra note 11, at 1893; see also Matthews v. Wozencraft, 15 F.3d 432, 440 (5th Cir. 1994) (considering the tort of invasion of privacy in Texas in the context of misappropriation); Reed v. Real Detective Pub. Co., 162 P.2d 133, 138 (Ariz. 1945) (finding that the plaintiff had a cause of action for invasion of privacy when the plaintiff’s photograph was released publicly without permission).
13. See, e.g., Reed, 162 P.2d at 138 (“[A]n act must be of such a nature as a reasonable man can see might and probably would cause mental distress and injury to anyone possessed of ordinary feelings and intelligence, situated in like circumstance as the complainant . . . .”).
14. See, e.g., N.Y. Civ. Rights Law § 51.
15. 202 F.2d 866, 868 (2d Cir. 1953) (finding that the right of publicity existed “in addition to and independent of [the] right of privacy”).
16. Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977).
17. Id. at 576; Vincent M. de Grandpré, Understanding the Market for Celebrity: An Economic Analysis of the Right of Publicity, 12 Fordham Intell. Prop. Media & Ent. L.J. 73, 76 (2001).
18. Grandpré, supra note 17, at 101.
19. See John Locke, Second Treatise of Government ch. 5 (1690).
20. Zacchini, 433 U.S. at 576. Note that Ohio has two separate systems: a right of publicity statute and a common law right of privacy. The right of publicity, however, has not been distinguished from the common law privacy tort of misappropriation. See Ohio Rev. Code Ann. §§ 2741.01–.09.
21. See, e.g., Ohio Rev. Code Ann. § 2741.01(A) (“ ‘Persona’ means an individual’s name, voice, signature, photograph, image, likeness, or distinctive appearance, if any of these aspects have commercial value.”); Zacchini, 433 U.S. at 573; ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 938 (6th Cir. 2003).
22. See Cal. Civ. Code § 3344.1 (“[T]he rights recognized under this section are property rights, freely transferable or descendible . . . .”).
23. Restatement (Third) of Unfair Competition § 46 (Am. Law Inst. 2008); see also Martin Luther King Jr. Ctr. for Soc. Change, Inc. v. Am. Heritage Prods., Inc., 250 Ga. 135, 141 (1982) (“The rationale for [the right] is the straight-forward one of preventing unjust enrichment by the theft of good will. No social purpose is served by having the defendant get free some aspect of the plaintiff that would have market value for which he would normally pay.”).
24. 733 S.W.2d 89, 98–99 (Tenn. Ct. App. 1987).
25. See id. at 99; see also ETW Corp., 332 F.3d at 955 (finding that one purpose of the right of publicity is to “protect consumers from deception and related marketplace harms”); Roberta Rosenthal Kwall, The Right of Publicity vs. the First Amendment: A Property and Liability Rule Analysis, 70 Ind. L.J. 47, 54 (1994) (finding that the right of publicity is meant to “foster creativity, safeguard the individual’s enjoyment of the fruits of her labors, prevent consumer deception, and prevent unjust enrichment” (footnotes omitted)).
26. Elvis Presley, 733 S.W.2d at 99.
27. See Kwall, supra note 25, at 52.
28. Elisabeth Logeais & Jean-Baptiste Schroeder, The French Right of Image: An Ambiguous Concept Protecting the Human Persona, 18 Loy. L.A. Ent. L.J. 511, 511 n.1 (1998).
29. Stephen R. Barnett, “The Right to One’s Own Image”: Publicity and Privacy Rights in the United States and Spain, 47 Am. J. Comp. L. 555, 565, 579–80 (1999).
30. See Daniel Nazer, New York Rushes to Enact Terrible Right of Publicity Law, Electronic Frontier Found. (June 12, 2017), https://www.eff.org/deeplinks/2017/06/new-york-rushes-enact-terrible-right-publicity-law.
31. See Why We Need Adequate Right of Publicity Laws, SAG-AFTRA, https://www.sagaftra.org/right-publicity-laws-statement (last visited Apr. 10, 2018).
32. Recently, in Lohan v. Take-Two Interactive Software, Inc., 2018 N.Y. Slip. Op. 02208 (N.Y. Mar. 29, 2018), the court concluded that a video game avatar is a “portrait” within the meaning of N.Y. Civ. Rights Law § 51.
33. In a recent case, de Havilland v. FX Networks, LLC, No. B285629 (Cal. Ct. App. Mar. 26, 2018), the court considered whether use of Olivia de Havilland in a television show constituted a “use” on “merchandise” as required by the statute.
34. See Grandpré, supra note 17, at 76.
35. See Warren & Brandeis, supra note 9, at 200–01 (“[T]he value of the production is found not in the right to take the profits arising from publication, but in the peace of mind or the relief afforded by the ability to prevent any publication at all . . . .”).
36. Johnson, supra note 8, at 903.
37. Cal. Civ. Code § 3344.1.
38. Id. § 3344(a).
39. See Pixabay, supra note 1.
40. See Marc A. Lieberstein, Why a Reasonable Right of Publicity Should Survive Death: A Rebuttal, 17 NYSBA Bright Ideas, no. 2, Fall 2008, at 9, http://www.kilpatricktownsend.com/~/media/Files/articles/NYSBA%20Bright%20Ideas.ashx.
41. See, e.g., Nev. Rev. Stat. § 597.800(5).
42. See, e.g., Tex. Prop. Code Ann. § 26.003.
43. Cal. Civ. Code § 3344(a).
44. See, e.g., Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1102–03 (9th Cir. 1992) (awarding damages for harm to feelings), abrogated on other grounds, Lexmark Int’l, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377 (2014).