A Concise History of the Right of Publicity
In 2022, “name, image, likeness” (“NIL”) is synonymous with the established legal doctrine known as the Right of Publicity. The Right of Publicity concerns itself with the right to control the commercial use of one’s identity. Yet, as soon as a definition is on the table, questions arise. For whom? What does control mean? Are there limitations? Can it be used by a personality to achieve censorship? What is a commercial use? Are there exceptions to commercial use? What does identity encompass? How does Right of Publicity relate to deep fakes and NFTs? What is the taxable value of the right in an estate context? These inquiries have answers. Ultimately, the Right of Publicity provides necessary protection not adequately addressed in other areas of the law.
Right of Publicity legislation of one kind or another is often pending in state legislatures throughout the United States. Sometimes draft legislation seeks to enact a statute that codifies that state’s common law position on the Right of Publicity, or to enact or confirm rights that other states have enacted long ago. Other times, draft legislation seeks to amend or clarify an existing statute. In both instances, such legislation is often concerned with bringing a state’s law up to standards with other states. Those opposing Right of Publicity legislation efforts throughout the U.S. often predict that passage of a given bill will lead to waves of litigation and the death of the First Amendment. Such hyperbole is easily disproven by the many jurisdictions with meaningful Right of Publicity legislation in place, where the First Amendment is alive and well and there is anything that can be considered a tidal wave of resulting litigation.
Creative works, free speech, and the Right of Publicity can and do co-exist. The First Amendment and the Right of Publicity can and do co-exist. The right can be accurately valued, such as in the Prince estate which recently was widely reported in January 2022 to have been resolved. Parallel rights holders, and copyright and the Right of Publicity can and do co-exist. Are there occasional controversies or issues? Of course. What area of law is impervious to overreach? As with many things in the law and life, a little effort towards understanding goes a long way.
A 30,000 foot view of the Right of Publicity
The elements typically comprising the Right of Publicity are referred to as “name, image and likeness.” Recent collegiate athlete legislation referred to as “NIL” (name, image likeness) designed to provide collete athletes the ability to be paid for certain comemrcial uses of their persona inadvertently reflects the “name image likeness” trifecta while risking a confusing overlap, given that this area always has a well-established name (“Right of Publicity”). There are variations in Right of Publicity statutes from state to state. According to Indiana’s statute, the Right of Publicity refers to the property interest inherent in an individual’s “name, voice, signature, photograph, image, likeness, distinctive appearance, gestures or mannerisms.” Clearly, Indiana, as but one jurisdiction, takes a more expansive view of what comprises the Right of Publicity than some other states. The author of this article (and administrator of www.RightofPublicity.com) was responsible for passage of Indiana’s current Right of Publicity statute in 2012 which was signed into law by then-Governor Mitch Daniels, and has contributed to legislative efforts throughout the United States. Indiana’s articulation of the protectable elements of persona is intuitive and aligns with the driving question that should be asked in Right of Publicity analysis: is the person in question unequivocally identifiable? If so, it should not matter if identifiability occurs by name, image, likeness, or by jersey number, or by a nickname, or by the context of how the persona is referenced.
The majority view is that the Right of Publicity extends to every individual, not just those who are famous. But as a practical matter, Right of Publicity disputes usually involve celebrities, since it is they who possess the names and images that help hype advertisements and sell products.
The Right of Publicity sits at the intellectual property family table
The Right of Publicity is often confused with its more recognized cousins in the intellectual property family, copyright and trademark. However, the historical origins of copyright, trademark and the Right of Publicity demonstrate distinct policy, rationales for the interests that each is designed to protect.
The Right of Publicity has little to do with copyright. Copyright applies to the bundle of rights one acquires in “original works of authorship fixed in any tangible medium of expression,” according to 17 U.S.C. Section 102 (a), so the exclusive rights held by a copyright owner apply to the work itself. This can get complicated, as Right of Publicity and copyright considerations can simultaneously be implicated in a single usage. An advertisement featuring a celebrity’s picture may require authorization from the photographer for the copyright use, and from the celebrity for the Right of Publicity use. Because these are wholly distinct claims with independent parties charged with standing to assert them, federal copyright laws generally will not preempt a state-based, Right of Publicity claim.
There are, however, some noteworthy similarities between the Right of Publicity and trademark law. Theoretically, the Right of Publicity is of the same genus as unfair competition and, more precisely, the doctrine of misappropriation–two hallmarks of trademark law, as reflected in the Lanham Act. Like a trademark, the Right of Publicity can function as a quality assurance to a consumer, especially if a celebrity, or his or her estate, maintains self-imposed quality standards and exercises discretion in licensing publicity rights. Also, proprietors of both trademark and publicity rights seek to prevent others from reaping unjust rewards by appropriation of the mark or celebrity’s fame.
Given these occasional parallels, overlap is inevitable. In Motown Record Corp. v. Hormel & Co., for example, trademark laws were used to protect the “persona” of the legendary music group, the Supremes. 657 F. Supp. 1236 C.D. Gal. 1987. But as a general proposition, the Right of Publicity stands apart from both trademark and copyright law, as a distinct body of law, with its own underlying principles and history of precedent.
Notable cases addressing the Right of Publicity
The Supreme Court of the United States has reviewed the Right of Publicity only once, in the seminal case of Zacchini v. Scripps-Howard Broadcasting. Zacchini involved a famous “human cannonball” who objected to his entire 15-second performance being televised on the local news. The value of his act depended on the public’s desire to witness the event, so televising the event detracted from the demand of people willing to pay to see his act.
The Court recognized Zacchini’s Right of Publicity and rejected the Broadcasting Company’s First and Fourteenth Amendment defenses. In so doing, the Court noted that the decision was not merely to ensure compensation for the performer; rather, it was to provide “an economic incentive for him to make the investment required to produce a performance of interest to the public.” 433 U.S. 562, 576 (1977). Thus, in language reminiscent of the policies supporting copyright and patent laws, Justice White solidified the foundation of the Right of Publicity.
The most famous Right of Publicity cases are the so-called “impersonator” cases. Midler v. Ford Motor Co. 849 F.2d 460 (9th Cir. 1989) and Waits v. Frito-Lay, Inc. 978 F.2d 1093 (9th Cir. 1992) involved similar fact patterns in that both Bette Midler and Tom Waits declined to lend their distinctive voices to advertising jingles for two prominent manufacturers. Undeterred, the advertisers in each case simply found sound-alike performers who could duplicate the vocal timbre and styling of Bette Midler and Tom Waits. Both Midler and Waits prevailed on Right of Publicity claims which yielded $400,000 for Midler and $2,500,000 for Waits several years later.
In another famous impersonator case, White v. Samsung Electronics America, Inc., Samsung utilized a robot that looked and acted like Vanna White of “Wheel of Fortune” fame. 971 F.2d 1395 (9th Cir. 1992). This usage was an infringement because Samsung had deliberately pawned the image and popularity of White and because White was readily identifiable from the context of the use. She was awarded $403,000.
Numerous other noteworthy Right of Publicity cases have come down over the years. Carson v. Here’s Johnny Portable Toilets (698 F.2d 831, 6th Cir. 1983) and Motschenbacher v. R.J. Reynolds Tobacco Co. (498 F.2d 921, 9th Cir. 1974) are significant in that neither case involved the name or image of the famous individual implicated in the case. The former of these cases involved the well-known “Here’s Johnny” introduction of Johnny Carson on the “Tonight Show” in an advertisement. The latter involved an advertising use of a distinctive race car that was identifiable as belonging to a specific driver. In each case, the companies were infringing because of the unequivocal association that the public could make between the phrase and the car, and the famous individuals associated therewith.
In January of 1999, Dustin Hoffman asserted his Right of Publicity against a magazine publisher, but the use did not involve an advertisement, per se. In Hoffman v. Capital Cities/ABC, Inc., Los Angeles Magazine created a feature photo spread by using a variety of celebrity images from famous movie still shots without authorization from the celebrities. 33 F.Supp. 2d 867 (C.D. Cal. 1999). The magazine digitally manipulated the images so it appeared that the celebrities were wearing modern designer clothing. For example, Dustin Hoffman’s character in “Tootsie” was dressed in a Richard Tyler gown and Ralph Lauren heels· Though there was no overt suggestion that Hoffman endorsed the article or the designers in which he was depicted, Hoffman was awarded $3,270,000 for the violation of his publicity rights. This amount consisted of $1.5 million in compensatory damages, $1.5 million in punitive damages, and $270,000 in attorney fees. The case was overturned on First Amendment grounds on appeal.
As the verdicts in these cases reveal, infringing a celebrity’s Right of Publicity can be a costly error. For this reason, the use of a celebrity’s name, image or likeness in any commercial endeavor should be carefully scrutinized to ensure compliance with the applicable publicity, laws (as well as possible trademark considerations since certain aspects of a celebrity’s persona also can qualify for trademark protection).
Licensed to sell
Despite the financial wealth and adulation that often (but not always) accompany fame, celebrity status carries a hefty price tag. Benedict (Baruch) Spinoza, writing more than 300 years ago, identified this trade-off: “Fame has also this great drawback, that if we pursue it we must direct our lives in such a way as to please the fancy of men, avoiding what they dislike and seeking what is pleasing to them.” (1632.1677; from Tractatus de Intelledus Emendatione).
Recognition of this dilemma underscores the policies supporting the Right of Publicity. Celebrities typically invest considerable energy in nurturing their public image, and few can argue that it would be anything but unfair for a business to siphon the celebrity’s success into their advertising or products to increase sales, without compensating the celebrity for the heightened profits, profile or recognition of the product or company.
The idea of nurturing and marketing one’s public image is nothing new, as some of the greatest achievers in history have increased the value of their namesakes through controversy, theatrics and sensationalism. Niccolo Paganini, perhaps the greatest violinist to ever live, understood how to market an image. At his sold-out concerts throughout Europe in the 19th century, his mysterious stage persona and unparalleled virtuosity led many to conclude that he (or perhaps his attorney) had negotiated a deal with the devil. Paganini fueled the controversy by wearing black costumes, which, in addition to his gaunt countenance and long hair, created the spectral appearance of a wraith floating across the stage.
Paganini’s compositions – witness the 24 Caprices – require a technical finesse to which performers painstakingly aspire. As if to mock the difficulty of his compositions, during the finale of his concerts, Paganini intentionally increased the tension on his strings to cause them to break one by one during his performance, and he would seamlessly finish the work on a single string. The German genius Louis Spohr, after attending a Paganini performance in 1830, said that “in his compositions and performance there is a strange mixture of the highest genius, childishness and tastelessness, so that one feels alternately attracted and repelled.” Arnold Whittall, Romantic Music 45 (1987). The same could be said of many of today’s beloved personalities.
If the manipulation of one’s image in order to increase revenue streams is nothing new, the advent of publicity laws in the 20th century at least ensure that the profits derived from these valuable personas are more equitably channeled. Indeed, publicity laws have led to results that the achievers and celebrities of previous ages, could merely wish for, as The Wall Street Journal recently explored in a special Millennium edition: “Thanks to their ability to sell tickets and raise television ratings, top stars now command contrasts and fees that make them more wealthy than the royal patrons who supported entertainers of yore.” Peter Gumber, “Fame and Fortune,” The Wall Treet Journal, Jan. 11, 1999 at R34).
The policies supporting Right of Publicity laws are not simply about ensuring that a celebrity or celebrity estate gets paid. It is also about the right to control how a celebrity is commercialized, or if he or she will be used at all. As Vince Lombardi Jr. has said: “Nothing anyone can do is going to enhance my father’s reputation, but they certainly can detract from it.” (Mark Hyman, Dead Men Don’t Screw Up Ad Campaigns, Business Week, March 10, 1997). Thus, the ability to control commercialization in the first place is as much a policy objective of the Right of Publicity as is providing revenue streams for the rightful recipient.
A right comes to life
As of this writing, half the states in the U.S. recognize the Right of Publicity in some capacity via statute (Alabama, Arizona, Arkansas, California, Florida, Hawaii, Illinois, Indiana, Kentucky, Louisiana, Massachusetts, Nebraska, Nevada, New York, Ohio, Oklahoma, Pennsylvania, Rhode Island, South Dakota, Tennessee, Texas, Utah, Virginia, Washington and Wisconsin). According to the ABA’s Right of Publicity: Analysis, Valuation and the Law, thirty-eight states have some form of common law precedent on the books as well; however, note that the majority view appears to be that the right exists in every state that has not explicitly rejected such interests. The American Law Institute’s Third Restatement of Unfair Competition (1995) §46 also recognizes the Right of Publicity as a distinct and viable legal theory. However, the parameters of the right vary from state to state, depending on the provisions of any given stature.
New York was the first state to enact a publicity law with the New York Civil Right Law in 1903. This statute prohibits the use of the name, portrait, or picture of any living person without prior consent for “advertising purposes” or “for the purposes of trade.” In the early part of the 20th century, with little precedent for publicity rights, New York viewed publicity rights through the filter of personal rights. New York’s limiting viewpoint was addressed by Judge Jerome Frank in Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc. 202 F.2d 866 (2nd Cir. 1953). In his decision, Judge Frank distinguished the “right of publicity” from the “right of privacy” by focusing on the economic interests involved, rather than the personal interests characteristic of the right of privacy. Haelan is also cited as the first articulation of these interests as the “Right of Publicity.”
Finally, in 2020, New York passed a post-mortem Right of Publicity statute. The statute as well as commentary from the legislative process can be found throughout this site (RightOfPublicity.com That the right is of a proprietary nature appears to be an accepted principle as states enacting Right of Publicity legislation in recent years consistently provide for postmortem rights. The New York Right of Publicity statute unfortunately provides less protection than many other states, though it does include important provisions concerning digital manipulation, deep fakes, and the like. Even with the new law, New York’s statute still creates an intriguing proposition: should attorneys and advisors counsel notable people to ensure he or she is not connected with New York at the time of their death?
The number of years that postmortem publicity rights are recognized varies dramatically from state to state. For example, Tennessee guarantees the right for a minimum of 10 years after death, but following a trademark model, the right can continue in perpetuity contingent on use. Virginia gives 20 years. Florida provides 40 years, while Kentucky, Nevada, Louisiana, and Texas ensure 50 years, California provides 70 years, and Washington spans 75 years. Indiana provides recognition for the Right of Publicity for 100 years after the death of the personality, and endeavors to reach backward for the full extent of those 100 years. Oklahoma, while providing a similar 100 year term of recognition as Indiana, limits the reach-back provision to 50 years.
In 1972, through section 3344 of the California Civil Code, California extended Right of Publicity protection to living personalities. In 1995, California enacted Section 990, the postmortem publicity law, which extended the right for a term of 50 years. Senate Bill 209 was introduced in early 1999 by Senate President Pro Tempore John Burton with the help of Robyn Astaire, the widow of Fred Astaire. The bill was also sponsored by the Screen Actors Guild, as well as top Hollywood names like Arnold Schwarzenegger, Tom Cruise, Anjelica Huston and Michael Douglas, as well as by the creator of this site via coordinated support from the clients he worked with at the time. The bill was signed into law in 1999, and Section 990 was renumbered as 3344.1 to more closely coincide with publicity rights for living persons.
One issue of particular importance to Senate Bill 209’s supporters involved issues spawning from the rapid advancement of digital manipulation technology, by which existing footage of celebrities is modified to produce new, spectacular results. Advertisers can now create the impression that John Wayne actually drank Coors beer, that Fred Astaire developed his dancing technique with a Dirt Devil, that Lucille Ball shopped at Service Merchandise, and that Ed Sullivan spoke glowingly of the M-Class Mercedes. The amendment to California’s law endeavored to forbid the alteration or manipulation of a deceased’s name, voice, signature, photograph or likeness in a false manner that is portrayed as factual, unless the personality’s heirs consent. Even more recently, New York’s passage in 2020 of a Right of Publicity statute, while unfortunately still diluted compared to most other legislative right of publicity activity, included meaningful provisions protecting against digital manipulation.
If one objects to the idea that some of the preceding licensed uses are inappropriate in some way, just know that the person who owns the respective rights is the one with the responsibility of determining if a use is appropriate and should be authorized, or not. As it should be.
The way forward
The variations between state Right of Publicity laws occasionally generate scholarly debate over whether a federal Right of Publicity statute would be beneficial. Because of the aforementioned parallels with trademark law, some have proposed that the proper place for a federal Right of Publicity statute is in the Lanham Act. But as the policies and function of Right of Publicity and trademark laws vary, this notion is problematic, if not untenable. See “Symposium: Rights of Publicity: An In-Depth Analysis of the New Legislative Proposals to Congress,” 16 Cardozo Arts 6 Ent. L.. 209, 1998.
The Patent, Trademark & Copyright Section of the American Bar Association has occasionally explored federalization of the Right of Publicity. To date, these efforts have broken down under the strain of competing interests. Even without a Federal Right of Publicity statute, the state-based regime is not as unmanageable as some scholars argue. There is a discernable consistency in Right of Publicity statutes and case law, even from jurisdiction to jurisdiction. It takes some getting used to, perhaps, but if the critique is “complexity,” one wonders what might be said about antitrust, tax, securities, along with many other areas of the law.
Adapted from Indiana: A Celebrity Friendly Jurisdiction, by Jonathan Faber, published in Res Gestae, March 2000, Vol. 43, No. 9, and last updated July 7, 2022.