“Delebs” and Postmortem Right of Publicity

Vol. 8 No. 3

By

Erik W. Kahn is a partner in the New York office of Bryan Cave LLP, and leader of the firm’s global intellectual property practice. He has broad experience in complex technology deals and intellectual property protection, transactions, and litigation.

Pou-I “Bonnie” Lee is an associate in the same firm and office, where her practice focuses on intellectual property.

"Deleb” is a term used by the entertainment industry for a deceased celebrity whose estate continues to generate substantial revenues after the death of the celebrity.1 According to Forbes, one group of “delebs” tracked by the magazine generated $363.5 million between October 2013 and October 2014, with Michael Jackson’s music and publicity rights generating $140 million alone.2 Monetization of the rights of Elvis Presley, who died 38 years ago, generated $55 million in the same time period.3 New technology creating innovative ways for deceased celebrities’ images to be accessed by the public contributes to these revenue streams—for example, “delebs” can now perform “live” on stage through the use of hologram.4 In addition, putative “endorsements” of commercial products by deceased celebrities represent a significant portion of the revenues. Elizabeth Taylor’s merchandise, in particular her perfume,5 and Marilyn Monroe’s appearances in connection with advertising campaigns6 demonstrate the power of the names and images of certain celebrities, even after their deaths.

The “deleb” phenomenon raises right of publicity issues for the estate of a celebrity seeking to protect and commercially exploit the deceased’s name, voice, signature, photographs, or likeness (hereinafter personal identification). Likewise, companies unrelated to the deceased that wish to use the deceased’s personal identification for commercial purposes must consider the applicability of postmortem rights and available exceptions to the enforcement of those rights. Attorneys advising clients on postmortem right of publicity issues (hereinafter postmortem right) face these critical questions: (1) is a postmortem right recognized in the relevant state? (2) if the right is recognized, how long does the right survive after the death of the celebrity? and (3) does the First Amendment provide protection against the prosecution of a claim based on the manner and content of the use as protected speech? States that have addressed the postmortem right issue have not reached a consensus. In states that recognize a postmortem right, certain requirements may need to be satisfied before the right becomes enforceable, e.g., the descendant’s or licensee’s registration of a claim of the deceased’s publicity rights with the Secretaries of State. This article provides an overview of the state law variations with respect to postmortem right and a brief discussion of the related causes of action under the Lanham Act.

Overview of Postmortem Right by State

Twenty-three states currently recognize a postmortem right either by statute or common law.7 These states include, among others, California, Florida, and Nevada. The duration of the right after the death of a celebrity varies, ranging from 10 years from the date of death in Washington if there was no commercial value at death,8 to 100 years from the date of death in Indiana and Oklahoma.9 California provides for the right to survive 70 years after the death of a celebrity.10

While the enactment of statutes governing postmortem right tends to be recent (from the 1980s to the 2000s), some state legislation reaches back to individuals who died long before the enactment of such laws. California has the most far-reaching statute, applying to individuals who died on or after January 1, 1915.11 Other state authority, however, expressly provides that postmortem right laws apply only to those who die after the enactment of the applicable statute. For example, Illinois’s statute does not apply to those who died before January 1, 1999, the date when the statute was enacted.12 Indiana’s statute has been interpreted as inapplicable to those who died before 1994, the enactment date, even though the statute itself is silent on whether it applies to those who died before 1994.13

Some states that recognize a postmortem right require that the deceased be domiciled in the state at death, or at a minimum have resided there at death.14 Other states have broad-reaching statutes that have no such requirement. For example, Indiana, Washington, Nevada, and Hawaii have postmortem right statutes with express language allowing for their application to nondomiciliaries and nonresidents. Indiana only requires that there be “an act or event that occurs within Indiana, regardless of a personality’s domicile, residence, or citizenship.”15 Washington similarly provides that the statute applies “regardless of . . . the law of the domicile, residence, or citizenship of the individual or personality at the time of death.”16 At first glance, Indiana and Washington may provide relief to the deceased if his or her domiciliary or resident state does not recognize a postmortem right. However, courts have significantly restricted the reach of the Indiana and Washington statutes by either ignoring the broad statutory language or finding unconstitutional the statute’s attempt to reach a nondomiciliary or nonresident of that state. In the case of Indiana, a federal court determined, in a motion to transfer venue out of Indiana, that Indiana’s statute was inapplicable to those who were not domiciled there at death.17 A Washington federal court went one step further and found the broad reach of the Washington statute unconstitutional under the due process and full faith and credit clauses, because the “arbitrary and unfair” nature of the choice-of-law clause is similar to a random act that “blindly throw[s] darts at a map on the wall,” held to encourage forum shopping while producing inconsistent results across the states.18 The court further reasoned that having a domicile-at-death requirement allows for one consistent result under the law of the domiciliary state, because a person can only be domiciled at one place at a given time.19

Nevada and Hawaii appear to be the only states that have postmortem right statutes with express broad applicability to nondomiciliaries and nonresidents that have not been challenged in court. The Nevada statute states that its postmortem right law applies to “any commercial use within this state . . . regardless of the person’s domicile.”20 The Hawaii statute defines a “deceased individual” as “any individual, regardless of the individual’s place of domicile, residence, or citizenship at the time of death or otherwise, who has died.”21

In addition to issues of domicile and residence, state law differences also extend to other requirements with respect to the applicability of postmortem right. For example, California and Texas require that the deceased’s name and likeness have commercial value at the time of death or some time after death.22 Utah requires that the deceased had exploited his or her publicity right during his or her lifetime.23 These requirements are apparently designed to prevent claims by noncelebrity plaintiffs. Several states require the decedent or licensee to register a claim of the deceased’s publicity right with the states’ Secretaries of State. Nevada requires such registration within six months of actual or constructive notice of an unauthorized use in the state, or any claim of infringement against anyone in the future is waived.24 Texas likewise has a registration requirement, if the right is exercised during the first year of an individual’s death.25

States That Do Not Recognize Postmortem Right or Are Silent on the Issue

Two states, New York and Wisconsin, do not recognize a postmortem right.26 Other states are silent on the postmortem right issue, or have not expressly addressed it. For example, the Eleventh Circuit, without expressly deciding whether a postmortem right existed, ruled against a widow of a famous race car driver in a lawsuit that she brought for a third party’s alleged violation of her deceased husband’s privacy right under Alabama law.27 The court found for the defendant, a company that made plaques by mounting trading cards bearing licensed images of the race car driver, on the grounds that the defendant was merely reselling cards that it lawfully obtained from third-party licensees.28 Massachusetts has a right of publicity statute that applies to “any person,” but the statute does not define such person as either living or deceased.29

The First Amendment Defense

Even in states where a postmortem right is recognized, a defendant may escape liability under the First Amendment, which provides for a defense against right of publicity violations. The First Amendment may protect certain expressive works incorporating a celebrity’s personal identification, such as a play, book, or television program, and the incidental advertisement of such works, when “the defendant’s activity has consisted of the dissemination of such information as thoughts, ideas, newsworthy events, . . . [and] matters of public interest.”30

In states where there is a statute governing postmortem right, there is typically also a statutory exemption for expressive works. In states where a postmortem right is established by case law, courts have similarly created an exemption for expressive works based on the First Amendment. For example, in California, the statute provides a First Amendment defense for a play, book, magazine, or other protected speech using the name and likeness of a deceased individual, along with the associated advertisements for such works.31 In Kentucky, a court addressing a right of publicity claim held that the First Amendment insulated from liability a defendant who used a deceased’s name and likeness in a music video that was intended as a tribute to the deceased.32 Similarly, the Florida Supreme Court held that the First Amendment exempted the producers and distributors of the movie The Perfect Storm from liability for using the names and likenesses of the fishermen who were killed at sea, an event that was portrayed in the movie.33 In both cases in Kentucky and Florida, the courts held that the advertisements related to the protected works, i.e., the music video and the movie, were also exempt from liability.34 However, the First Amendment defense is unavailable when the use of the deceased’s personal identification is “solely for purposes of trade—e.g., merely to attract attention,”35 or is unrelated to the expressive work or creative content, such as when an individual’s picture is used without permission on the cover of a book, the content of which contains no discussion of the individual.36

In resolving the tension between postmortem right and the First Amendment, the California Supreme Court developed the “transformative test” to determine whether artistic works bearing the name and likeness of a celebrity are worthy of First Amendment protection, exempting transformative works from postmortem right liability.37 For example, in a case involving T-shirts and lithographs bearing a charcoal drawing of the Three Stooges, who were deceased at the time the T-shirts and lithographs were being sold, the California Supreme Court ruled that the drawing was not sufficiently transformative to insulate the artist and seller of the T-shirts and lithographs from postmortem right liability.38 The court stated that First Amendment trumps right of publicity if “a product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness,” and if “the marketability and economic value of the challenged work [are not] derive[d] primarily from the fame of the celebrity depicted.”39 The literal depiction of the Three Stooges in the charcoal drawing was held not to be sufficiently transformative, and the marketability and economic value of the T-shirts and lithographs were derived primarily from the fame of the Three Stooges.40 The transformative test has been adopted in other jurisdictions, such as Ohio and Pennsylvania.41

The Lanham Act: False Endorsement

While postmortem right is primarily a state law issue, the Lanham Act also provides relief under causes of action for false endorsement, the federal equivalent of the state right of publicity.42 The Lanham Act has been expressly held to recognize a postmortem right.43 Claims brought under the Lanham Act differ from those brought under state laws in that the Lanham Act requires an additional element—that the use of the personal identification “be likely to confuse as to the sponsorship or approval of a defendant’s goods.”44 The Lanham Act provides two prongs under which a false endorsement claim can be brought: (1) trademark infringement, and (2) false advertising.45 False endorsement claims, i.e., claims involving a false message that a person sponsors or approves certain products or services, can fall under either prong, although courts tend to characterize false endorsement cases as trademark infringement ones.46 Courts have held that “a celebrity persona or identity is a kind of ‘trademark’ which is infringed by an advertisement involving false endorsement.”47 Plaintiffs bringing a false endorsement claim under the trademark infringement prong must demonstrate a likelihood of consumer confusion, just as any plaintiff would in bringing a trademark infringement claim.48

False endorsement claims brought under the trademark infringement prong of the Lanham Act have been met with mixed results in federal courts. In a case brought in a Pennsylvania federal court by the estate of John Facenda, a broadcasting legend, the court denied summary judgment for defendant NFL Films, which used Facenda’s voice in a television production about an NFL video game.49 Finding that Facenda’s voice was distinctive and protectable as an unregistered trademark, and acknowledging that Facenda’s estate was seeking to “reserve the exclusive right to grant or deny permission to those who wish to use Facenda’s voice to promote unspecified products in the future,” the court found that a reasonable jury could conclude that there was likelihood of confusion, and remanded the case for trial.50

While the Facenda court held that Facenda’s voice was distinctive and protectable as a trademark, other courts were reluctant to recognize different images of an individual as source-indicating trademarks without sufficient evidence of secondary meaning. In a New York case brought by Babe Ruth’s daughters against a calendar publisher for using different Babe Ruth photographs without permission, the daughters argued that a variety of Babe Ruth photographs were valid, protectable trademarks.51 The court rejected the argument and granted summary judgment in favor of the calendar publisher, holding that the dissimilar photographs depicting Babe Ruth were not inherently distinctive to serve the source­‑ or origin-indicating function required to establish trademark rights; therefore, Babe Ruth’s daughters could not assert rights in every photograph of Babe Ruth.52 Similarly, the Elvis Presley estate argued in the District of New Jersey that any and all images of the late King of Rock and Roll were protectable trademarks.53 The court rejected the argument and found that only one image of Elvis Presley that had been consistently used to indicate origin had acquired secondary meaning and was therefore a protectable trademark.54 In another case brought by Princess Diana’s estate in California, the court found that various images of Princess Diana did not have secondary meaning to indicate that her estate was the source of the goods, and granted summary judgment in favor of the defendant, a seller of memorabilia bearing Princess Diana’s images.55 Further, the court held that “it is not clear that a deceased celebrity’s estate possesses the same scope of endorsement rights” as living celebrities, and the use of Princess Diana’s name and image on her unofficial memorabilia did not imply endorsement by the Princess.56

Because “almost all courts have put false endorsement cases within the [trademark] infringement prong of” the Lanham Act, rather than the false advertising prong,57 there is limited case law on false advertising issues in a case involving postmortem right.58 For false endorsement claims brought under the false advertising prong, the plaintiffs need not show that the public is misled if they can show that the advertisements are literally false; however, if the advertisements are only misleading but not literally false, the plaintiffs must show that the public is misled or confused by them.59

Conclusion

Attorneys representing holders of celebrity publicity rights or clients seeking to use the personal identification of deceased celebrities for commercial purposes should first consider which state law applies, depending on the domicile or residence of the deceased on the date the individual died. If the domiciliary or resident state does not recognize a postmortem right, one may argue that another state’s law applies. Nevada and Hawaii’s statutes providing for the applicability of their laws regardless of the domicile or residence of the deceased would be useful in a postmortem right case, provided that the plaintiff could otherwise establish jurisdiction, because the statutes’ broad reach has not been challenged in court. Alternatively, one could argue that a specific state’s law applies to the sale of the infringing goods or loss of sale of the licensed goods in that state.60 Once the applicable state law is determined, one should examine the duration of the postmortem right and other state-specific requirements, e.g. registration or lifetime exploitation, for bringing a claim for a postmortem right violation. However, even if the requirements are met and the deceased has a postmortem right in that state, the use of the name or likeness may be permissible under the First Amendment if the use is embodied in certain expressive works or other creative content that is related to the deceased, or is otherwise transformative. Federal law should also be considered, because federal and state claims relating to postmortem right and false endorsement are typically brought together.61

 

Endnotes

1. Lacey Rose & Dorothy Pomerantz, Top-Earning Dead Celebrities, Forbes (Oct. 27, 2009), http://www.forbes.com/2009/10/27/top-earning-dead-celebrities-list-dead-celebs-09-business-entertainment-intro.html.

2. Dorothy Pomerantz, Michael Jackson Tops Forbes’ List of Top-Earning Dead Celebrities with $140 Million Haul, Forbes (Oct. 15, 2014), http://www.forbes.com/sites/dorothypomerantz/2014/10/15/michael-jackson-tops-forbes-list-of-top-earning-dead-celebrities/.

3. Id.

4. Id.

5. Id.

6. Andrew Adam Newman, Marilyn Monroe’s Star Still Shines in Ad Campaigns, N.Y. Times, Aug. 5, 2013, http://www.nytimes.com/2013/08/06/business/media/marilyn-monroes-star-still-shines-in-ad-campaigns.html.

7. Some states, such as Arizona and Louisiana, have enacted statutes that recognize soldiers’ postmortem right. These statutes are beyond the scope of this article.

8. Wash. Rev. Code §§ 63.60.020, .040. If there was commercial value at the time of an individual’s death, the duration of the right extends to 75 years after death. Id.

9. Ind. Code § 32-36-1-8; Okla. Stat. tit. 12, § 1448(G).

10. Cal. Civ. Code § 3344.1(g).

11. Id. § 3344.1(h).

12. 765 Ill. Comp. Stat. 1075/1, /35(a).

13. Dillinger, LLC v. Elec. Arts Inc., 795 F. Supp. 2d 829, 832–33 (S.D. Ind. 2011).

14. See, e.g., Ohio Rev. Code Ann. § 2741.03(A).

15. Ind. Code § 32-36-1-1(a).

16. Wash. Rev. Code § 63.60.010.

17. CMG Worldwide, Inc. v. Upper Deck Co., No. 1:08-cv-761, 2008 WL 4690983, at *5 (S.D. Ind. Oct. 22, 2008).

18. Experience Hendrix, L.L.C. v. HendrixLicensing.com, Ltd., 766 F. Supp. 2d 1122, 1138–39 (W.D. Wash. 2011).

19. Id.

20. Nev. Rev. Stat. § 597.780.

21. Haw. Rev. Stat. § 482P-1.

22. Cal. Civ. Code § 3344.1(h); Tex. Prop. Code Ann. § 26.003(2).

23. Nature’s Way Prods., Inc. v. Nature-Pharma, Inc., 736 F. Supp. 245, 252 (D. Utah 1990).

24. Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., 688 F. Supp. 2d 1148, 1161–62 (D. Nev. 2010).

25. Mantle v. Upper Deck Co., 956 F. Supp. 719, 734 (N.D. Tex. 1997) (citing Tex. Prop. Code Ann. § 26.008(b)).

26. Shaw Family Archives, Ltd. v. CMG Worldwide, Inc., 589 F. Supp. 2d 331, 342 (S.D.N.Y. 2008); Hagen v. Dahmer, 38 U.S.P.Q.2d 1146, 1149 (E.D. Wis. 1995).

27. Allison v. Vintage Sports Plaques, 136 F.3d 1443, 1444, 1446–47 (11th Cir. 1998).

28. Id. at 1450.

29. Mass. Gen. Laws ch. 214, § 3A.

30. Estate of Presley v. Russen, 513 F. Supp. 1339, 1357 (D.N.J. 1981) (internal quotation marks omitted).

31. Cal. Civ. Code § 3344.1(a)(2).

32. Montgomery v. Montgomery, 60 S.W.3d 524, 529–30 (Ky. 2001).

33. Tyne v. Time Warner Entm’t Co., L.P., 901 So. 2d 802, 809–10 (Fla. 2005).

34. Tyne, 901 So. 2d at 808; Montgomery, 60 S.W.3d at 530.

35. Estate of Presley, 513 F. Supp. at 1358 (internal quotation marks omitted).

36. Christianson v. Henry Holt & Co., LLC, No. 06-cv-1156, 2007 WL 2680822, at *3–4 (C.D. Ill. June 29, 2007).

37. Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 807–08 (Cal. 2001).

38. Id. at 799–801, 808, 811.

39. Id. at 809–10.

40. Id. at 811.

41. See, e.g., Bosley v. WildWetT.com, 310 F. Supp. 2d 914, 928 (N.D. Ohio 2004); World Wrestling Fed’n Entm’t Inc. v. Big Dog Holdings, Inc., 280 F. Supp. 2d 413, 445–46 (W.D. Pa. 2003).

42. 15 U.S.C. § 1125(a).

43. Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1072 (9th Cir. 2015), cert. denied, 84 U.S.L.W. 3112 (U.S. Nov. 2, 2015) (No. 15-264).

44. Id.

45. Id. (citing 15 U.S.C. § 1125(a)(1)).

46. Id.; see also 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 28:15 (4th ed. 2011).

47. McCarthy, supra note 46, § 28:15.

48. Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1021 (3d Cir. 2008).

49. Id. at 1011.

50. Id. at 1014, 1019, 1025.

51. Pirone v. MacMillan Inc., 894 F.2d 579, 582–83 (2d Cir. 1990).

52. Id.

53. Estate of Presley v. Russen, 513 F. Supp. 1339, 1363–65, 1376–77 (D.N.J. 1981).

54. Id.

55. Cairns v. Franklin Mint Co., 107 F. Supp. 2d 1212, 1221 (C.D. Cal. 2000).

56. Id. at 1215–16.

57. McCarthy, supra note 46, § 28:15.

58. In the case brought by Princess Diana’s estate, false advertising claims were brought, but not for the use of Princess Diana’s images that allegedly sent the false message that she sponsored or approved the defendant’s memorabilia. Rather, the false advertising claims were based on the defendant’s statements that “100% of the . . . price [of Defendants’ dolls and plates] will be donated to Diana, Princess of Wales’ charities” and “all proceeds go to Diana, Princess of Wales’ Charities.” Princess Diana’s estate asserted that these statements were misleading, but the court found the statements to be truthful based on the fact that the defendant donated the cash collected for the products advertised with these statements. Cairns, 108 F. Supp. 2d at 1222–23 (alteration in original).

59. Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1021 (3d Cir. 2008).

60. Experience Hendrix L.L.C. v. Hendrixlicensing.com Ltd., 762 F.3d 829, 836 (9th Cir. 2014).

61. See, e.g., Facenda, 542 F.3d at 1014, 1025; Pirone v. MacMillan Inc., 894 F.2d 579, 582, 585 (2d Cir. 1990).

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