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Note:

Rights
Ownership

     rights of publicity

This page looks at 'Rights of Publicity' (aka 'Rights of Celebrity' or of 'Personality').

It covers -

• introduction
• Background to the notion of rights of personality and patterns in legislation
• Cases involving Bette Midler, Princess Di, Tom Waits and others
• Studies from North America and the EU
• value - how much as the rights worth?

     introduction

Personality Rights is an area of intellectual property that has gained most attention in the US for protection of pop culture idols such as Elvis Presley and that poses interesting challenges for internet publishing.

Works such as Huw Beverley-Smith's exemplary The Commercial Appropriation of Personality (Oxford: Oxford Uni Press 2002) and Julius Pinckaers' From Privacy Towards a New Intellectual Property Right in Persona (The Hague: Kluwer Law 1996) and note that it has attracted attention in other jurisdictions regarding both intellectual property and privacy protection. A 2003 paper by Olaf Weber on Human Dignity & the Commercial Appropriation of Personality: Towards a Cosmopolitan Consensus in Publicity Rights? and papers in Privacy, Property & Personality: Civil Law Perspectives on Commercial Appropriation (Cambridge: Cambridge Uni Press 2005) by Huw Beverley Smith, Ansgar Ohly & Agnes Lucas-Schloetter highlight questions of personality as a human right.

A range of US states have devised legislation aimed at preventing unauthorised commercial use of an individual's name or likeness, giving that person (or their estate) an exclusive right to license the use of the identity for commercial purposes. Celebrities, with some success, have sought to use such legislation or court rulings about 'passing off' to provide protection from media intrusions.

Australian courts appear to be tentatively considering such remedies, building on the NSW Supreme Court's 1960 assessment in Henderson v Radio Corp. - a 'passing off' case - that appropriation of reputation was

an injury in itself, no less, in our opinion, than the appropriation of ... goods or money.

     Background

Performing artists and sports figures traditionally have not had much copyright protection - and none at all if the performance was not electronically recorded or otherwise 'fixed'. Over the past fifty years there have been two responses.

At a national and international level performers - along with publishers such as record companies and broadcasters - have sought to strengthen 'neighbouring rights' (the droits voisins) under copyright law. A major example is the the Rome Convention of 1960 (not yet ratified by the US), highlighted earlier in this Guide.

Performers - and other celebrities - have concurrently sought to control commercial exploitation of their persona through existing trade practices law (eg restrictions on false claims that a performer has endorsed a particular product) or special 'rights of publicity' legislation such as Tennessee's 1984 Personal Rights Protection Act (aka the 'Elvis Law').

The first category can be traced to debate following the landmark 1893 Warren & Brandeis paper on privacy, with a 1905 ruling by the Georgia Supreme Court - in Pavesich v New England Life Insurance over unauthorised use by the insurer of Mr Pavesich's photo in its advertising - generally regarded as the initial judicial judgment.

A New York state law, for example, enacted soon after provided that

Any person whose name, portrait or picture is used within this state for advertising purposes or for the purposes of trade without the written consent first obtained [from the person] ... may maintain an equitable action ... and may also sue and recover damages for any injuries sustained by reason of such use

Special 'rights' legislation seeks to prevent unauthorised commercial use of an individual's name, likeness (including silhouette, voice or signature) or other recognisable aspect of that person's persona. The individual - and in some instances the individual's heirs - gain an exclusive right to license use of the persona for commercial purposes. In the US the notion dates from a judge's broad statement in Haelen Laboratories v Topps Chewing Gum, 1953 litigation involving baseball cards.

In the US around 16 states have enacted such legislation, most in the past decade after a series of court decisions in favour of celebrities such as Jacqueline Onassis, the Kennedy family, the heirs of Bela Lugosi and Martin Luther King, Dustin Hoffman, Bette Midler and 'The King'.

They include California, Washington, Tennessee, Rhode Island, Florida, Illinois, New York, Indiana, Virginia, Massachusetts, Texas (Chapter 26 of the Property Code), Kentucky, Nebraska, Oklahoma, Nevada, Utah and Wisconsin. The Texas, California, Oklahoma and Nevada legislation provides for registration of the publicity rights of deceased individuals, enabling registrants to put on notice who claims ownership of the rights and from whom consent must be obtained.

Some of the statutes protect the dead, others do not. In some states the restrictions on misappropriation of privacy rights and publicity rights relate only to advertising. Washington state law indicates that

Every individual or personality, as the case may be, has a property right in the use of his or her name, voice, signature, photograph, or likeness, and such right shall be freely transferable, assignable, and licensable, in whole or in part ... The property right does not expire upon the death of the individual or personality, as the case may be. The right exists whether or not it was commercially exploited by the individual or the personality during the individual's or the personality's lifetime.

Most litigation involves celebrities, as it is usually difficult for an ordinary person to demonstrate that use of his/her likeness has commercial value and thus requires compensation for commercial misappropriation of the persona. Celebrities are also more likely to have the wherewithal for hiring legal experts.

Proponents of the 'right' emphasise that it is consistent with shibboleths such as the US First Amendment, does not restrict legitimate media coverage or prevent parody. In practice, there is considerable variation across the US.

In 2007 US judge Colleen McMahon ruled - in Shaw Family Archives v CMG Worldwide - that Marilyn Monroe's right of publicity within New York did not survive her death in 1962, on the basis that "only property actually owned by a testator at the time of her death can be devised by will", no relevant jurisdiction "recognized descendible postmortem publicity rights at the time of Ms. Monroe's death" and accordingly "she could not transfer any such rights through her will" (ie "a post-mortem right cannot be created after death"). State legislation was promply introduced granting post-mortem publicity rights, including retroactive protection for anyone who died after 1938.

In the UK celebrities have increasingly sought to register their names as trademarks as a personality rights mechanism. Britney Spears for example has trademarked her name in relation to music recordings and a wide range of for non-music areas such as inflatable furniture.

In May 2004 the UK Trade Mark Registry issued a note indicating that

where a famous name is concerned ... the name may appear to the ... consumer as an indication that the goods are about the celebrity

and not that they are supplied or under the control of the celebrity. That note was reflected in refusal during 2005 of an application by sporting figure Sir Alex Ferguson to trademark his name for printed matter such as posters, photographs and stickers. The Registry indicated that due to his long-standing fame it was considered that people would not think that he had actually endorsed a photo, but understood that it merely depicted him.

     Cases

The New York Court of Appeals ruled in 1982, in Arrington v New York Times, that unauthorised publication of photograph of a non-celebrity did not violate privacy or publicity rights, commenting that publication is

the price every person must be prepared to pay for a society in which information and opinion flow freely.

That flow might be slower down south, where the Tennessee law provides protection in perpetuity and has been used successfully by the Presley estate in a range of cases against nightclubs, merchandisers and others.

The 1979 Lugosi v Universal Pictures decision by the California Supreme Court held that the Lugosi name and likeness could not pass to the actor’s heirs: the rights of publicity died with Lugosi. California subsequently enacted a Celebrities Rights Act in 1985, extending to 70 years after death.

That provided a basis for the father of murder victim Ron Goldman to to seek the publicity rights of celebrity O J Simpson, who failed to pay a US$33.5 million judgment in the Goldman family's 1997 wrongful death lawsuit. Fred Goldman commented that Simpson "personally has never paid a dime on the judgment to anyone. He has made it very clear over the years that he has no intention of doing so". Muhammad Ali sold 80% of rights to his personality for US$50 million to licensing firm CKX in 2006.

Tennessee grants publicity rights in perpetuity, subject to continuous commercial use of the persona. Indiana and Oklahoma provide protection for 100 years after the individual's death, Washington provides a 10 year post mortem right for individuals and 75 for those rights with a 'commercial value'. New York courts don't recognise the right at all beyond death. A landmark 1982 decision by the Georgia Supreme Court held that Martin Luther King Jr's right of publicity descended to his heirs.

In the preceding year a New Jersey court held that an Elvis impersonator violated the rights of Elvis Presley Enterprises. In 1985 Woody Allen sought damages over advertising featuring a lookalike. In 1988 the US Court of Appeals awarded Bette Midler US$400,000 damages after an advertising agency for Ford used a lookalike to perform "Do You Want To Dance" to "sound as much as possible like the Bette Midler record."

The 1992 Waits v Frito-Lay case involved action by singer Tom Waits for "voice misappropriation and false endorsement" regarding a radio commercial that imitated his "raspy singing voice."

More recently, in the 1998 Michaels v. Internet Entertainment Group case, pop personalities Pamela Anderson Lee and Bret Michaels sought to restrict dissemination on the web of video of their more intimate moments. In what is likely to be another landmark, a 2001 decision by California's Supreme Court in Comedy III Productions v Gary Saderup concerned cartoons. A 2002 decision (PDF) by the 9th Circuit court upheld a decision in favour of Franklin Mint, finding that Princess Di failed to protect exploitation of her likeness in the US during her lifetime under the 1985 Celebrities Rights Act.

In 2006 a Munich court ruled that the Frankfurter Allgemeine Sonntagszeitung should pay Boris Becker €1.2m for unauthorised use of his image in promoting the launch of its new edition in 2001.

Rights of publicity legislation has been used in the US in dealing with commercial sites and with non-commercial fan/tribute sites.

The newness of much of the legislation means that there is uncertainty about First Amendment defenses and application to domain names.

Free speech was for example used in a successful appeal against an award of US$3 million to Dustin Hoffman over a composite photo in LA Weekly Magazine. There is also uncertainty about application of the legislation outside the US.

Reclusive UK billionaire publishers the Barclay brothers, in unsuccessful 1996 action in France against the Observer and reporter John Sweeney claimed that a caricature illustrating an article breached their "absolute right to their own image".

     Studies

A global overview is provided by International Privacy, Publicity & Personality Laws (London: Butterworths 2001) edited by Michael Henry.

Beverley-Smith's Commercial Appropriation, noted above, provides lucid coverage of Australia, New Zealand and the United Kingdom. In Australia examinations of performers rights - centred on royalty schemes - by the Copyright Council and other bodies offer other perspectives. It is complemented by Rosina Zapparoni's 2004 paper 'Propertising Identity: Understanding the United States Right of Publicity and Its Implications - Some Lessons for Australia' in 28 Melbourne University Law Review (2004) 690-731.

For an overview of online issues and developments see Cristina Fernandez's brief 1998 paper The Right of Publicity on the Internet, Deborah Ezer's 2000 paper Celebrity Names As Web Site Addresses: Extending the Domain of Publicity Rights to the Internet, the 2002 Foreclosing on Fame: Exploring the Uncharted Boundaries of the Right of Publicity (PDF) by Melissa Jacoby & Diane Zimmerman and Igor Motsnyi's 2003 paper Protection of Celebrities Names and Trade Marks under the ICANN Uniform Domain Name Dispute Resolution Policy.

For introductions to the US regimes see Jennifer Carpenter's 2001 paper Internet Publication: The Case for an Expanded Right of Publicity for Non-Celebrities, the brief 1998 article The Developing Right of Publicity by Robert Labate & Jonathan Jennings (PDF), the 1996 article The Right Of Publicity: Going to the Dogs? by Russell Frackman & Tammy Bloomfield and Douglas Baird's thoughtful 2001 paper Does Bogart Still Get Scale? Rights of Publicity in the Digital Age (PDF). Penny Manship's paper Oh what a Tangled Web: The Entanglement of Fan Web Sites and the Right of Publicity considers the Californian scene.

There is an in-depth examination of US law in J Thomas McCarthy's The Rights of Publicity & Privacy (Eagan: West Group 2000).

For the UK the 2004 article The Cult of Celebrity & Trade Marks: the next instalment by Gillian Davies extends the treatment in Beverly-Smith.

Jane Gaines' Contested Culture: The Image, the Voice, and the Law (Chapel Hill: Uni of North Carolina Press 1991) offers an historical perspective. Image Ethics: The Moral Rights of Subjects in Photographs, Film & Television (New York: Oxford Uni Press 1988) edited by Larry Gross & John Stuart and New Dimensions in Privacy Law: International & Comparative Perspectives (Cambridge: Cambridge Uni Press 2006) edited by Andrew Kenyon & Megan Richardson consider intersections between privacy, free speech and intellectual property.

Playing Darts with a Rembrandt: Public & Private Rights in Cultural Treasures (Ann Arbor: Uni of Michigan Press 1999) by Joseph Sax is also of significance.

The Research Centre for Studies in Intellectual Property & Technology Law at the University of Edinburgh has established a 'Personality Database' as part of its Privacy, Property and Personality research stream. The Database features cases and legislative instruments from Australia, France, Germany, the UK and US regarding the protection of personality.

The Preslaw site itemises Elvis-related personality rights litigation. Academic studies specific to Presley include David Wall's Policing Elvis: Legal Action and the Shaping of Post-Mortem Celebrity Culture as Contested Space (PDF) and Steven Cordero's 1998 paper Cocaine-Cola, the Velvet Elvis, and Anti-Barbie: Defending the Trademark and Publicity Rights to Cultural Icons.

     value

There is no authoritative compendium of the value of publicity rights regarding defunct and living celebrities. One indication is provided here, complemented by discussion of corporate rights ownership here.




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