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July 10, 2024 Feature
Patchwork Protections: The Growing Need for a Federal Right of Publicity Law
Mark Roesler and Joey Roesler
One of the youngest members of the small family of intellectual property rights, the right of publicity was first conceptualized in the late 19th century and was formally acknowledged in American common law in the 1950s. Through California’s codification of a statutory right of publicity in 1972 and the U.S. Supreme Court’s recognition of the right in 1977, the right of publicity was established as a distinct and broadly recognized intellectual property right in the 1970s. As of this writing, the right of publicity is recognized, either by statute or by common law, in 37 states. Despite its presence in American legal consciousness for over a century, and in American statutory 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.”
The right of publicity can be defined as “the inherent right of every human being to control the commercial use of his or her identity.” 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 order to determine whether this right exists for an individual, the scope and extent of the right under a particular set of circumstances, and whether applicable tests might be used 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.” 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: “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.”
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.” 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. 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.” Twenty-four years later, the U.S. Supreme Court issued its first and only opinion regarding the right of publicity in Zacchini v. Scripps-Howard Broadcasting Co. In Zacchini, the Court found that the First and Fourteenth Amendments of the U.S. 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.
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.” 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. As referenced above, currently 37 states recognize the right of publicity, with 25 of these states recognizing the right via statute and 12 by common law. Of these 37 states, 25 (20 by statute and 5 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 deceased 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.
Which 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. 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. 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 the 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).
Regarding the second prong of a right of publicity claim—that the defendant has infringed the plaintiff’s publicity rights—courts generally apply one of two tests. 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.
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.
The Necessity of a Federal Right of Publicity
The idea of and advocacy for a federal right of publicity statute is by no means novel. Numerous law review articles have been written on the subject, 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. Indeed, across the many articles and comments advocating for a federal right of publicity statute, a common refrain appears: state-created right of publicity laws are 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. 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.
Suppose a business 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 it 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, 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.” 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. 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 theoretical 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. These risks could lead to a chilling effect, limiting the types of transactions that businesses are willing to engage in within this space.
Adding an additional wrinkle to this process is the fact that some federal courts will retroactively provide right of publicity protection to a plaintiff if the court concludes that a state would have recognized these rights despite the absence of state common law precedent or statutory law that directly provides for said rights. For example, in the famous case Rogers v. Grimaldi, 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.”
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.” 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 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 just 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 U.S. 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. 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. 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, 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. Among the numerous examples of deepfake videos of high-profile individuals going viral, as the Kansas City Chiefs advanced to the 2024 Superbowl, deepfake pornographic images of Taylor Swift were posted to X and were viewed tens of millions of times before they were taken down several hours later.
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 it cannot be assumed 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 mangle or tarnish that brand. Many can easily recall a celebrity whose value disappeared overnight following an offensive comment or outrageous behavior. Deepfakes, therefore, present obvious risks where 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. This fact, coupled with the rise of so-called “revenge porn,” is alarming. The ability for individuals to produce unfalsifiable, humiliating, and even pornographic media with malicious intent proves to be a mounting risk that could quickly escalate in 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.
The Federal Right of Publicity and College Sports
The term “NIL” (name, image, and likeness) gained prominence when the NCAA lifted long-standing prohibitions on the commercialization of college athletes’ publicity. Until that change, college athletes faced losing eligibility if they received cash or in-kind benefits in exchange for an endorsement or licensing campaign.
The right of publicity and NIL are closely related concepts, but there are some key differences between them: The right of publicity is a legal term, and NIL is more of an industry term. The right of publicity is a broader concept that traditionally encompasses the right to control the commercial use of an individual’s name, image, voice, signature, and likeness in any setting. NIL is not a separate legal concept from the right of publicity. Rather, it is a specific application of the name, image, and likeness rights found in traditional right of publicity statutes. NIL is typically only used in the context of college athletics, but the concept has occasionally been extended to amateur athletes and artists.
Because NIL is merely a derivative of the right of publicity, this market is also encumbered by the current landscape of publicity laws, with their state-by-state inconsistencies. This landscape resembles a confusing patchwork quilt—costly for athletes and businesses to navigate. A federal law, like a steady needle unifying the fabric, could stitch consistency across the country. This clear set of rules would further opportunities and level the playing field for athletes nationally, eliminating barriers imposed by varying state regulations. Indeed, by dispelling the current fog of legal uncertainty, a unified federal law could lead to a more stable environment for NIL activities, benefiting athletes, universities, and businesses alike.
The booming NIL economy may very well put new pressure on state governments, and the federal government, to implement clear and consistent legislation outlining the right of publicity. This pressure would likely come from universities in states without clear publicity laws. Colorado, for example, boasts world-class athletic programs that may be inhibited by the relative lack of commercial opportunities for would-be recruits. The Colorado courts and legislature have long avoided the promulgation of right of publicity legislation in part because there are few celebrities living in Colorado. A growing NIL economy may apply the necessary pressure to get these laws passed.
Conclusion
The right of publicity, though relatively young among intellectual property rights, has evolved significantly since its inception in the late 19th century. Despite its recognition in 37 states through either statute or common law, the right remains inconsistently applied across jurisdictions, creating legal uncertainties and increased transaction costs for businesses and individuals alike.
A federal right of publicity statute would harmonize these disparate laws, providing uniform protections, reducing litigation, and addressing emerging technological challenges like deepfakes. In the realm of college sports, such federal legislation could streamline NIL activities, benefiting athletes and universities nationwide. Ultimately, a federal right of publicity law would ensure consistent, equitable, and modernized protection for all individuals, regardless of their state of domicile, reflecting the evolving nature of identity and its commercial value in the digital age.
This article is an updated version of “What’s in a Name, Likeness, and Image? The Case for a Federal Right of Publicity Law,” 13 Landslide, no. 1, Sept./Oct. 2020, at 20.