Dead Celebrities – ”Post mortem” Right of Publicity in the USA

(IPRinfo 2/2009)

Petteri Korhonen
LL.M., Trained on the Bench
University of Helsinki (Vaasa department)

Merchandising of dead celebrities generates huge incomes. These rights do not benefit only the heirs and estates but also public interests.

The annual special report by Forbes Magazine, Top-Earning Dead Celebrities, demonstrates that deceased celebrities earn enormous sums of money: top 13 earned total US $ 194 million during 2008. Elvis Presley’s estate’s incomes during 2008 were US $ 52 million. Albert Einstein’s incomes were US $ 18 million – mainly from merchandising ventures!

It is not only the copyrights or trademark rights which generate these incomes but more and more post mortem right of publicity. These rights do not benefit only the heirs and estates but also the public interests through charity organizations, like John Wayne Cancer Foundation and Hebrew University of Jerusalem, which controls publicity rights of Albert Einstein.

Right of Publicity is an Established IPR in US
Restatement (Third) of Unfair Competition (Restatement) specifies (§ 46) the right of publicity in the following way: ”One who appropriates the commercial value of a person’s identity by using without consent of the person’s name, likeness or other indicia of identity for purposes of trade is subject to liability for the relief appropriate under the rules stated in §§ 48 and 49.

There are differences between the states on how the subject-matter is defined. In the state of New York courts have refused to accept common law right of publicity beyond statutory rights: statutory rights are exclusive. Californian courts, on the contrary, have been expanding the scope of the statutory subject-matter like in the case White v. Samsung Electronics America (971 F.2d 1395): critical voices have been heard against this kind of ”exclusive right to evoke one’s identity”.

Unlike trademark law, the infringement of right of publicity does not require that the commercial use of ”identity” would create a likelihood of confusion on the market place. Exclusive rights cover only commercial uses or the uses ”for purposes of trade”.
According to the Restatement’s § 47 [t]he name, likeness, and other indicia of a person’s identity are used ’for the purposes of trade’ under the rule stated in § 46 if they are used in advertising the user’s goods or services, or are placed on merchandise marketed by the user, or are used in connection with the services rendered by the user. However, use for ’purposes of trade’ does not ordinarily include the use of a person’s identity in news reporting, commentary, entertainment, works of fiction or nonfiction or in advertising that is incidental to such uses.

This list of justified exceptions is important because many statutes do not mention them nor limitations to the right of publicity. For example, the use of a celebrity’s name and picture on the cover of a biography is justified as well as in artistic works.

In the case law, the standard of evaluation is nowadays based on the question of artistic relevance; does the use have an artistic relevance or is it just a marketing gimmick without artistic significance.

Relation to Copyright and Privacy
Right of publicity is not preempted from the copyright protection, so it can create restrictions to the exploitation of copyrighted expression, if this use is within exclusive publicity rights. Therefore, it is not enough to license the rights of the photographer for the merchandising purposes: a license is also required from the person represented in the picture.

In the USA, rights of privacy expire at the time of person’s death. The rights of publicity have grown out of the rights of privacy, but they are considered as separate independent property rights since the 1953 case Haelan Laboratories v. Topps Chewing Gum (202 F.2d 866) and the seminal article of professor Melville B. Nimmer (The Right of Publicity, 19 Law & Contemp. Probs. 203 (1954)).

Right of Publicity of a Deceased is His Heirs’ or other Assignees’ Property
The property view is one of the main policy arguments for post mortem right of publicity: these exclusive economic rights are part of the assets of deceased as well as other IPRs.

While the image of cultural icons ”survive”, the rights related to the personality of the celebrity die at the same time as the person. Therefore, post mortem publicity rights cannot create a shortcut to protect these dignitary interests.

These views cannot always be kept separate from the economic interests as The Martin Luther King Jr. Center for Social Change v. American Heritage Products demonstrates: the court reasoned that the heirs of Dr. King had the right to ”prevent the exploitation of his likeness in a manner they consider unflattering and unfitting”.

Instead of these dignitary interests the court should have mainly emphasized the justified economic interests of the estate and the possibility of unjust enrichment of others, if there were not post mortem rights. But as well as in copyright law, also post mortem right of publicity can protect dignitary interests but only if the infringing use is within the exclusive post mortem economic rights: dignitary interests as such are not alone the subject matter of these post mortem rights.

An appropriate analogy to other IPRs justifies post mortem right of publicity: the unlicensed use of dead celebrities’ goodwill would constitute unjust enrichment and a risk of false endorsement. US Supreme Court reasoned in the case Zacchini v. Scripps-Howard Broadcasting (433 U.S. 562) that right of publicity provides an economic incentive for the person to make the investment required to produce a performance of interest to the public.

Opposite views can be reasoned as well because it is not the celebrity alone who makes investments to his/her image, but also studios, producers and the general public. The incentive rationale may not either be the most relevant justification ground for right of publicity or post mortem publicity rights.

Post mortem rights, limited in duration and in their scope, will also discourage false claims of endorsement. Public interests can be paid due attention while evaluating the duration and scope of post mortem rights.

Choice of Law Regarding Post Mortem Rights and Jurisdiction
The existence of post mortem rights is decided according to the law of the person’s last domicile. This question was crucial while considering the rights of the estate of Marilyn Monroe (See Shaw Family Archives v. CMG Worldwide and Marilyn Monroe LLC, 589 F.Supp.2d 331 and Milton Greene Archives v. CMG Worldwide and Marilyn Monroe LLC, 568 F.Supp.2d 1152).

Although the courts in the state of Indiana can have a jurisdiction related to the infringements of right of publicity when the merchandise is transported through the state, Indiana’s law cannot create post mortem right of publicity, if the law of the person’s last domicile does not accept them.

Because Marilyn Monroe’s last domicile was in the state of NY, she could not have post mortem right of publicity based on the law of Indiana or California.

The outcome was the same in the case Cairns v. Franklin Mint (24 F. Supp.2d 1013): Federal Court in California ruled that the estate of Princess Diana did not have any post mortem publicity rights because the law of Great Britain does not recognize post mortem rights. Personal property is generally controlled by the law of a decedent’s domicile at the time of his or her death.

Exclusive Control over Image and Exceptions to Rights
Merchandising of dead celebrities generates huge incomes for many estates. Their names and images still have an enormous potential to promote the sales of various products and services. New technologies will even expand the possibilities for commercial exploitation: through digital technology the celebrities can be resurrected in advertisements and in or on various merchandises. Post mortem right of publicity protects the economic interests of the estates and enables them to control commercial uses of dead celebrities.

While evaluating the value of licensing properties, one cannot overcome the questions related to the scope of exclusive rights and their duration. A risk of a sudden expiration of licensing properties due to the licensor’s death would affect their value, which would not be necessarily protected by another overlapping IPR. If the law does not recognize post mortem publicity rights, this can have a huge impact on the value of the licensing properties during the celebrity’s lifetime. Imagine the late Oscar winner Heath Ledger: his estate’s incomes were US $20 million during 2008 based on motion picture and merchandising agreements.

Not every use of a deceased person’s name and likeness constitutes use as a trademark. Trademark law will thus not create necessary protection for the merchandising interests. Therefore, post mortem publicity rights can be justified as a part of effective protection for the deceased person’s property. At the same time these rights make it possible to avoid unreasonable use of celebrities’ goodwill for one’s own gain (unjust enrichment) and overexploitation (oversaturation).

These post mortem rights do restrict the exploitation of copyrighted work: also these rights must be cleared when the use is within exclusive post mortem rights. Merchandising and exploitation of celebrities’ goodwill within advertising are the core uses which require also prior approval of celebrities’ heirs and assignees.

Freedom of speech and other well-justified exceptions and limitations to post mortem rights of publicity guarantee that editorial and artistic uses of celebrities are possible before and also after their death. As exceptions can be even wider regarding post mortem right of publicity, these rights do not create long-lasting restrictions to justified uses, which are within the public domain and a privilege for everyone.

 

’post mortem’ Rights in California, NY, Indiana, Oklahoma, Georgia and Tennessee

Below you will find some examples of the US legislation and case law concerning the right of publicity in certain states. This part was not published in the printed issue of IPRinfo 2/2009.

California: California Civil Code 3344.1 (previously § 990) created statutory port mortem rights in California as of January 1, 1985. The code was amended and renumbered to Cal. Civ. Code § 3344.1 in 1999 (duration from 50 to 70 years) and further amended in 2007 (retroactivity).

According to Cal. Civ. Code 3344.1 ”[a]ny person who uses a deceased personality’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods, or services, without prior consent from the person or persons specified in subdivision (c), shall be liable for any damages sustained by the person or persons injured as a result thereof.”

These statutory port mortem rights do not depend on whether the celebrity had exploited publicity rights during his/her lifetime; this was a response to the Californian Supreme Court’s ruling in the case Lugosi v. Universal Pictures (25 Cal.3d 813). Since 1985 California’s Civil Code as well most of the statutes and common law of other states have refused to accept this kind of ”lifetime exploitation” requirement. Theoretically this argument originates from the trademark law.

At first the duration of port mortem rights was person’s lifetime plus 50 years after his/her death, but the duration of these rights was in 1999 extended to person’s lifetime plus 70 years.

The problem which arose in Marilyn Monroe -cases was the possibility to apply Cal. Civ. Code 3344.1 retroactively to the celebrities who died before port mortem rights were created in California by the statute in 1985. Californian court decided that Marilyn Monroe could not have port mortem rights because she died in 1962 and before the law in California acknowledged port mortem right of publicity. In other words testamentary disposition of the rights is possible only if these port mortem rights have been acknowledged at the time of making the will. State legislator responded to this interpretation immediately and clarified Cal. Civ. Code § 3344.1 through an amendment: the port mortem rights recognized in this section are expressly made retroactive, including those deceased personalities died before January 1, 1985. By these amendments Legislator expressly abrogated courts’ summary judgments in Marilyn Monroe -cases.

New York: Since the case Pirone v. MacMillan (894 F.2d 579) it has been established law in the state of New York, that there is not statutory port mortem rights and that statutory rights are exclusive: common law cannot expand statutory publicity rights. Marilyn Monroe -cases in 2007 created some pressure to change NY Civil Rights Law §§ 50-51 and to adopt port mortem right of publicity rights also in the state of New York. The bill was not successful and there has not been changes to the civil right law §§ 50-51. If the plaintiff dies after filing a lawsuit based on his/her right of publicity, the person’s estate can continue the law suit, but this survivability of claim does not create any port mortem rights.

Indiana and Oklahoma: Indiana statute (Indiana Code § 32-13-1-8) and Oklahoma statute (Title 21, Oklahoma Statutes § 1448) have both adopted the same port mortem 100-year duration. The relevant difference between these statutes is that the Oklahoma statute reaches back only 50 years from its date of enactment in 1986, effective January 1, but the Indiana statute seems to reach back 100 years from July 1, 1994. This is quite a long time for port mortem right of publicity and do not have any analogy with copyright law. The analogy with trademark law is also non-existent because the law does not require the use of the right or do not make possible to renew the rights based on the use and the distinctiveness of the marks.

Georgia: Georgia Supreme Court decided in the famous case The Martin Luther King Jr. Center for Social Change v. American Heritage Products (250 Ga. 135) that the law of Georgia recognizes the port mortem right of publicity. Supreme Court reasoned for its conclusion by the economic impact of the port mortem right to the value of right of publicity during the person’s lifetime as well as by the unjustified economic gain to the unlicensed third parties on the basis of the person’s death. Other courts like the 6th Court of Appeal have adopted different views: port mortem rights do not encourage efforts and do not create incentives to creative endeavors (Memphis Development Foundation v. Factors (616 F.2d 956 (6th Circuit, 1980). Of course Tennessee legislation was changed after above mentioned Elvis Presley -case. The exact duration of port mortem rights in Georgia is not yet clear.

Tennessee: According to The Personal Rights Protection Act of 1984 (§ 47-25-1104) the statutory right of publicity lasts person’s lifetime plus 10 years (§ 47-25-1104). The exclusive rights of the estate will be terminated by proof of the nonuse for a period of two years subsequent to the initial 10 year period. So the port mortem rights last like trademarks, if they are exploited continuously.