©2020. Published in Landslide, Vol. 13, No. 1, September/October 2020, 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.
That the individual shall have full protection in person and in property is a principle as old as the common law; but it has been found necessary from time to time to define anew the exact nature and extent of such protection.
—Samuel D. Warren & Louis D. Brandeis
“The Right to Privacy”
One of the youngest members of the small family of intellectual property rights, the right of publicity was first conceptualized in the century before last1 and was first formally acknowledged in American common law in the 1950s.2 Through California’s codification of a statutory right of publicity in 19723 and the United States Supreme Court’s recognition of the right in 1977,4 the right of publicity was established as a distinct and broadly recognized intellectual property right in the 1970s.5 As of this writing, the right of publicity is recognized, either by statute or by common law, in 35 states.6 Despite its presence in American legal consciousness for over a century, and in American law for over four decades, the intricacies of the right of publicity are often confused with those of its cousins, trademark and copyright, even among intellectual property and entertainment law practitioners. However, the right of publicity “is not a form of trademark, copyright, false advertising, or right of privacy”; instead, the right of publicity “declares its mandate, because no other area of the law addresses the needs and issues it encompasses.”7
What needs and issues the right of publicity addresses, as well as the right’s economic and moral value, can be made obvious by restating the definition of the right of publicity in its most concise form: the right of publicity “is the inherent right of every human being to control the commercial use of his or her identity.”8 Although this central premise seems intuitive on its face, its implementation has caused confusion and controversy as businesses, individuals, and attorneys are forced to navigate a complex patchwork of state statutes and court cases in any given transaction or controversy in order to determine whether this right exists for an individual, the scope and extent of the right under a particular set of circumstances, and what tests a court will use to analyze its application and any defenses thereto.
This article posits that it is time to harmonize the law in this area by means of a federal right of publicity statute and that such a statute would alleviate many unnecessary burdens and transaction costs that businesses currently face (both inside the entertainment sphere and beyond), prevent expensive and time-consuming litigation that arises from inconsistencies across state laws, and resolve emerging issues presented by new technologies that are not adequately addressed in our current body of federal law.
Brief History of the Right of Publicity
The seed that would eventually grow into the right of publicity was first planted in an article by Samuel Warren and future Supreme Court Justice Louis Brandeis entitled “The Right to Privacy.” This article expressed concern for the possibility of a person’s photograph being used without the person’s consent in an age of “[i]nstantaneous photographs and newspaper enterprise.”9 It was in this article that the idea that an individual’s likeness should be considered to be the individual’s own property was first expressed.10
The idea of a right to privacy gained steam in the early 1900s both through notable court cases and through New York’s 1903 passage of a statute that prohibited the use of a living person’s name, portrait, or picture without prior consent “for advertising purposes.”11 It was not until 1953, however, that the Second Circuit Court of Appeals became the first to use the phrase “right of publicity” and to distinguish between privacy and publicity rights.12 The Haelan Laboratories court acknowledged that infringement of this right causes economic harms that are entirely distinct from the type of harm caused when individuals have “their feelings bruised through public exposure of their likenesses.”13 Twenty-four years later, the United States Supreme Court issued its first and only opinion regarding the right of publicity in Zacchini v. Scripps-Howard Broadcasting Co.14 In Zacchini, the Court found that the First and Fourteenth Amendments of the United States Constitution did not prevent the petitioner, a performer whose entire live “human cannonball” act was recorded by a reporter and later broadcast on television without his consent, from bringing a claim against the reporter based on Ohio’s right of publicity.15
The Zacchini holding came at a critical moment in the period between 1972 and 2000, referred to by prominent scholars as “the era of state codification of the right of publicity.”16 During this time, “starting with California in 1972 . . . a number of key states . . . such as Illinois, Indiana, Nevada, Ohio, Texas, and Washington” had enacted statutes recognizing the right of publicity.17 As referenced above, currently 35 states recognize the right of publicity, with 24 of these states recognizing the right via statute, 22 by common law, and 13 by some combination of the two. Of these 35 states, 22 (18 by statute and 7 by common law) recognize the right of publicity as freely transferable, and descendible, meaning that these states recognize a person’s right of publicity after the person is deceased. However, to which persons the right will extend varies by jurisdiction.
Key Components of the Right of Publicity
While many key aspects of a right of publicity action vary by jurisdiction, as a general matter, in order to establish a cause of action for a right of publicity violation, a plaintiff must show: (1) the validity of the plaintiff’s right of publicity, and (2) that this right has been infringed upon by the defendant.18
What protections are included in the right of publicity also varies based on the jurisdiction, but typically the right protects a personality’s name, image, voice, signature, and likeness.19 Whether a valid right exists is a fact-specific inquiry. For both living and deceased personalities, the first step is to determine whether the personality is (or was at the time of death) domiciled in a jurisdiction that provides right of publicity protection. Next, one must determine whether the relevant jurisdiction places any restrictions on which individuals qualify for right of publicity protection; for instance, some state statutes specify that the right extends only to public figures, while others provide a right of publicity only for individuals who have served in the armed services.20 Finally, in the case of a deceased personality, because most jurisdictions recognizing a postmortem right of publicity extend the right only for a fixed period following the death of the personality, one must consider the date of death in order to determine whether the right is still protected in the relevant jurisdiction. For instance, Indiana, which is often viewed as one of the most personality-friendly jurisdictions, protects a personality’s right of publicity for 100 years after the date of such personality’s death, whereas statutes in other key jurisdictions such as California, Nevada, and Florida establish shorter terms in which the right is recognized following a personality’s death (75, 50, and 40 years, respectively).21
In regard to the second prong—that the defendant has infringed the plaintiff’s publicity rights—courts generally apply one of two tests.22 Under the first of these tests, typically applied in jurisdictions where the right arises from the common law, the plaintiff must prove the following elements:
- the defendant used the plaintiff’s identity or persona;
- such appropriation was for the defendant’s advantage, commercial or otherwise;
- the plaintiff did not consent to the use of the plaintiff’s identity; and
- the appropriation is likely to cause injury to the plaintiff.23
The more modern approach, however, is to follow the definition and elements in the Third Restatement of Unfair Competition, which eliminates the requirement that the defendant obtain commercial advantage and consists of the following two elements:
- the defendant, without permission, has used some aspect of the plaintiff’s identity or persona in such a way that the plaintiff is identifiable from the defendant’s use; and
- the defendant’s use is likely to cause damage to the commercial value of that persona.24
The Necessity of a Federal Right of Publicity
The idea of a federal right of publicity statute is by no means a novel one: numerous law review articles have been written on the subject,25 and, as early as 1998, the American Bar Association had drafted a proposed federal right of publicity bill at the request of the International Trademark Association, characterizing the current state right of publicity laws as a “patchwork” of inconsistency.26 Indeed, across the many articles and comments advocating for a federal right of publicity statute, a common refrain appears: state-created right of publicity law is inconsistent from state to state, and this inconsistency creates a host of problems, ranging from a “race to the bottom” among the states to create the most expansive law, to forum shopping by plaintiffs when selecting a venue for a lawsuit among such states. We posit that from the perspective of both businesses and practitioners in the industry, the fundamental issue created by these inconsistencies in state law is uncertainty, which leads to increased transaction costs.
Imagine for a moment that you are a business that would like to produce merchandise depicting the image of a deceased celebrity. Based on the above outline of right of publicity law, the first action you likely would take would be to determine where the celebrity was domiciled at the time of death, for if the celebrity was domiciled in a jurisdiction that does not recognize a right of publicity, the celebrity is unlikely to have a protectable right. Of course, a quick Google search will in most cases reveal where the celebrity was physically located at the time of death; however, as most readers of this article will know, determining domicile is more complicated than determining physical location: “domicile is generally a compound of physical presence plus an intention to make a certain definite place one’s permanent abode, though, to be sure, domicile often hangs on the slender thread of intent alone.”27 Courts often apply a wide array of factors, ranging from residence to location of one’s voting registration, in order to determine domicile, with no single factor controlling.28 Even assuming that the business is able to obtain perfect information, it will often be unable to say with certainty where a person was domiciled at the time of death unless there is a prior reported court case in which domicile has already been determined.
If the business is unable to determine where the celebrity was domiciled, it will be unable to determine the scope of that celebrity’s right of publicity, the duration of that right, or even whether the right exists at all. This puts the business in the unfortunate position of having to choose between seeking a costly license that may not be necessary or running the risk that it may face a lawsuit that could lead to hefty damages or even an injunction of its project.
Adding an additional wrinkle to this process is the fact that some federal courts have held after an infringement occurred that a state would have recognized a plaintiff’s right of publicity, even where there is no state statute or precedent directly addressing the issue. For example, in the famous case Rogers v. Grimaldi,29 the Second Circuit held that the state of Oregon would have recognized a right of publicity in the plaintiff despite the fact that Oregon has no statute regarding right of publicity and that the Oregon Supreme Court had only suggested in dicta that such a right would be recognized. This leaves businesses in the unfortunate position of having to speculate how a federal court might rule on how a state supreme court might decide on a right of publicity issue when determining whether it is necessary to seek a license. This issue also negatively impacts (potential) right holders: “Individuals who reside in [states without case law or statutes affirming the right of publicity] either have no right of publicity protection or must face the uncertainty and expense of precedent-setting litigation to establish one.”30
The issue is even further complicated by the fact that a small minority of state statutes specify that they apply to acts occurring within the state’s borders, regardless of the domicile of the personality in question. For instance, Indiana’s right of publicity statute specifies: “This chapter applies to an act or event that occurs within Indiana, regardless of a personality’s domicile, residence, or citizenship.”31 As our economy becomes increasingly interconnected and programs, particularly in the entertainment sphere, are distributed nationally, the practical effect of this limitation likely will be that most large companies will comply with Indiana’s statute when utilizing another’s personality rights. This is particularly noteworthy when one considers that Indiana provides right of publicity protection for 100 years following the death of a personality, the longest term of any statute in the state.
The economic cost to businesses created by uncertainty is by no means the sole justification for a federal right of publicity, however. Perhaps as compelling a justification is the need to provide uniform and equal protections to personalities regardless of in which state they have chosen to be domiciled. The United States Supreme Court, as well as a number of scholars, have suggested that one of the primary rationales behind a right of publicity is an economic one.32 In Zacchini, the Supreme Court explained that the right of publicity can be justified not only by “a desire to compensate the performer for the time and effort invested in his act” but also from the same considerations underlying American copyright and patent law: the desire to provide “an economic incentive for him to make the investment required to produce” a commercially valuable persona.33 It seems unfair and counterintuitive to suggest that a personality in Idaho has less of an interest in such compensation than one whom fate has chosen to place in California, or that personalities in Delaware do not require the same incentives to invest in developing a commercially valuable persona as do those in Indiana.
Indeed, from the perspective of a personality, the necessity for a federal right of publicity law is perhaps more pressing than ever. As technology progresses, it has become possible to co-opt the persona of another more easily than ever, and in ways that are much more insidious and commercially threatening than what was previously imaginable. For example, in recent years we have seen “deepfake” videos emerge into the mainstream. “[D]eepfakes use a form of artificial intelligence called deep learning to make images of fake events” and are often indistinguishable from an actual video or image of the personality in question.34 In recent years, there have been numerous examples of deepfake videos of high-profile individuals going viral.35 The value of a celebrity’s image, voice, and persona is at least partially derived from the fact that the celebrity is the only one who can perfectly replicate it: a video of a famous football player endorsing a brand of shoes is worthless if we are able to remove the implicit assumption that the football player actually was filmed giving that endorsement. Further, the value of a celebrity’s persona relies on their ability to control their brand and is at risk of serious impairment if others are able to manipulate the celebrity’s image in order to tarnish that brand. We are certain every reader of this article can easily recall a celebrity whose value disappeared overnight following an offensive comment or outrageous behavior. There is an obvious risk then if such comments or behavior can be manufactured by third parties without the celebrity’s involvement.
However, the risk of deepfakes, as well as the potential of the right of publicity to curb this risk, is not limited to the celebrity sphere. Studies into deepfake content have found that the majority of the deepfakes online are pornographic.36 This fact, coupled with the rise of so-called “revenge porn” in recent years, is alarming. The ability to produce false humiliating or even pornographic content, indistinguishable from real content, of ordinary people and distribute it online represents what could be a mounting risk in the coming years. The right of publicity could be an unexpected vehicle by which to combat this issue. While there likely would be First Amendment challenges to such an application of the right of publicity in this context, at least one previous case has allowed a plaintiff to bring a right of publicity claim regarding the unauthorized publication of pornographic material depicting the plaintiff over the defendant’s First Amendment defense.37
1. See Samuel D. Warren & Louis D. Brandeis, The Right to Privacy, 4 Harv. L. Rev. 193 (1890); see also, e.g., 1 J. Thomas McCarthy & Roger E. Schechter, The Rights of Publicity and Privacy § 1:4 (2d ed. 2019); Audrey Wessel & Mark Roesler, Damages and Right of Publicity Infringements, in The Comprehensive Guide to Economic Damages 423 (Nancy J. Fannon & Jonathan M. Dunitz eds., 5th ed. 2018).
2. See Haelan Labs., Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953); see also 1 McCarthy & Schechter, supra note 1, § 1:26.
3. See Cal. Civ. Code §§ 3344–3344.1. See generally Steven Andreacola, History: California Civil Code § 3344.1, 12 J. Contemp. Legal Issues 592 (2001).
4. Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 564–65 (1977).
5. See 1 McCarthy & Schechter, supra note 1, § 1:4.
6. As of 2020, the following states recognizing the right of publicity: Alabama (Ala. Code § 6-5-770), Arizona (Ariz. Rev. Stat. Ann. § 12-761 (applies only to soldiers)), Arkansas (Ark. Code Ann. § 4-75-1101), California (Cal. Civ. Code § 3344), Colorado (Donchez v. Coors Brewing Co., 392 F.3d 1211 (10th Cir. 2004)), Connecticut (In re Jackson, No. 19-480 (2d Cir. Aug. 19, 2020)), Florida (Fla. Stat. § 540.08), Georgia (Bullard v. MRA Holding, LLC, 740 S.E.2d 622 (Ga. 2013)), Hawaii (Haw. Rev. Stat. § 482P-1), Illinois (765 Ill. Comp. Stat. 1075/1), Indiana (Ind. Code § 32-36-1-1), Kentucky (Ky. Rev. Stat. Ann. § 391.170), Massachusetts (Mass. Gen. Laws ch. 214, § 3A), Michigan (Hauf v. Life Extension Found., 547 F. Supp. 2d 771 (W.D. Mich. 2008)), Minnesota (Ventura v. Titan Sports, Inc., 65 F.3d 725 (8th Cir. 1995)), Missouri (Doe v. TCI Cablevision, 110 S.W.3d 363 (Mo. 2003)), Nebraska (Neb. Rev. Stat. § 20-201), Nevada (Nev. Rev. Stat. § 597.770), New Hampshire (Doe v. Friendfinder Network, Inc., 540 F. Supp. 2d 288 (D.N.H. 2008)), New Jersey (Estate of Presley v. Russen, 513 F. Supp. 1339 (D.N.J. 1981)), New Mexico (Moore v. Sun Publ’g Corp., 881 P.2d 735 (N.M. Ct. App. 1994)), New York (N.Y. Civ. Rights Law §§ 50–51 (applies only to living individuals)), Ohio (Ohio Rev. Code Ann. § 2741.01), Oklahoma (Okla. Stat. tit. 21, § 839.1), Pennsylvania (42 Pa. Cons. Stat. § 8316), Rhode Island (9 R.I. Gen. Laws § 9-1-28.1), South Carolina (Gignilliat v. Gignilliat, Savitz & Bettis, L.L.P., 684 S.E.2d 756 (S.C. 2009)), South Dakota (S.D. Codified Laws § 21-64-2), Tennessee (Tenn. Code Ann. § 47-25-1101), Texas (Tex. Prop. Code Ann. § 26.001), Utah (Utah Code Ann. § 45-3-1), Virginia (Va. Code Ann. § 8.01-40), Washington (Wash. Rev. Code § 63.60.010), West Virginia (Crump v. Beckley Newspapers, Inc., 320 S.E.2d 70 (W. Va. 1983)), and Wisconsin (Hirsch v. S.C. Johnson & Son, Inc., 280 N.W.2d 129 (Wis. 1979)).
7. Jonathan L. Faber, Recent Right of Publicity Revelations: Perspective from the Trenches, 3 Savannah L. Rev. 37, 38–39 (2016).
8. 1 McCarthy & Schechter, supra note 1, § 1:3.
9. Warren & Brandeis, supra note 1, at 195.
10. See Wessel & Roesler, supra note 1, at 1.
11. See, e.g., Pavesich v. New England Life Ins. Co., 50 S.E. 68 (Ga. 1905); Roberson v. Rochester Folding Box Co., 64 N.E. 442 (N.Y. 1902); see also N.Y. Civ. Rights Law §§ 50–51. For a less abbreviated history by one of this article’s coauthors of the right to privacy and the right of publicity, and of these cases’ place in that history, see Wessel & Roesler, supra note 1.
12. Haelan Labs., Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953).
13. Id. at 868.
14. 433 U.S. 562 (1977).
15. Id. at 578–79.
16. See, e.g., 1 McCarthy & Schechter, supra note 1, § 1:4.
18. 1 McCarthy & Schechter, supra note 1, § 3:2; Thomas Phillip Boggess V, Causes of Action for an Infringement of the Right of Publicity, 31 Causes of Action 121, § 5 (2020) (citing Prima v. Darden Rests., Inc., 78 F. Supp. 2d 337 (D.N.J. 2000)); see also Restatement (Third) of Unfair Competition § 46 (Am. Law Inst. 1995).
19. See, e.g., Cal. Civ. Code § 3344; Ind. Code § 32-36-1-1; Wessel & Roesler, supra note 1, at 1.
20. See, e.g., Ky. Rev. Stat. Ann. § 391.170 (extending right of publicity protection only to public figures); Ariz. Rev. Stat. Ann. § 12-761 (extending right of publicity protection only to members of the armed services).
21. Ind. Code § 32-36-1-1; Cal. Civ. Code § 3344; Nev. Rev. Stat. § 597.770; Fla. Stat. § 540.08.
22. Boggess, supra note 18, §§ 5–13.
23. Id. (citing Eastwood v. Superior Court, 198 Cal. Rptr. 342 (Ct. App. 1983)).
24. Id. (citing Restatement (Third) of Unfair Competition § 46; 1 McCarthy & Schechter, supra note 1, § 3:2).
25. See, e.g., Jonathan L. Faber & Wesley A. Zirkle, Spreading Its Wings and Coming of Age: With Indiana’s Law as a Model, the State-Based Right of Publicity Is Ready to Move to the Federal Level, 45 Res Gestae 31 (2001); Brittany Lee-Richardson, Multiple Identities: Why the Right of Publicity Should Be a Federal Law, 20 UCLA Ent. L. Rev. 189 (2013); Kevin L. Vick & Jean-Paul Jassy, Why a Federal Right of Publicity Statute Is Necessary, 28 Comm. Law. 14 (2011).
26. See Mark S. Lee, Entertainment and Intellectual Property Law § 3:58 (2019) (citing U.S. Federal Right of Publicity, Int’l Trademark Ass’n (Mar. 3, 1998), https://www.inta.org/wp-content/uploads/public-files/advocacy/board-resolutions/U.S.-Federal-Right-of-Publicity-03.03.1998.pdf; Resolution 201-1: Proposed Federal Right of Publicity Act, 2001 A.B.A. Sec. Intell. Prop. L. Rep. 2).
27. Weible v. United States, 244 F.2d 158, 163 (9th Cir. 1957).
28. See, e.g., Lew v. Moss, 797 F.2d 747, 751–52 (9th Cir. 1986) (citing Charles Alan Wright et al., Federal Practice and Procedure § 3611 (1984)); Hill-Jackson v. FAF, Inc., 808 F. Supp. 2d 1083 (S.D. Ind. 2011); Christopher H. Hall, Establishment of a Person’s Domicile, 39 Am. Jur. Proof of Facts 587, § 9 (2020).
29. 875 F.2d 994 (2d Cir. 1989).
30. See Lee, supra note 26, § 3:54.
31. Ind. Code § 32-36-1-1(a) (emphasis added).
32. See Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 564–65 (1977); see also, e.g., Mark P. McKenna, The Right of Publicity and Autonomous Self-Definition, 67 U. Pitt. L. Rev. 225, 228–31 (2005).
33. Zacchini, 433 U.S. at 576.
34. Ian Sample, What Are Deepfakes—and How Can You Spot Them?, Guardian (Jan. 13, 2020), https://www.theguardian.com/technology/2020/jan/13/what-are-deepfakes-and-how-can-you-spot-them.
35. See, e.g., BuzzFeedVideo, You Won’t Believe What Obama Says in This Video!, YouTube (Apr. 17, 2018), https://www.youtube.com/watch?v=cQ54GDm1eL0&feature=emb_logo.
36. Rachel Metz, The Number of Deepfake Videos Online Is Spiking. Most Are Porn, CNN Bus. (Oct. 7, 2019), https://www.cnn.com/2019/10/07/tech/deepfake-videos-increase/index.html.
37. Bosley v. WildWetT.com, 310 F. Supp. 2d 914 (N.D. Ohio 2004).