The Need for a National Right of Publicity Statute
by Mark S. Lee, of Manatt, Phelps & Phillips LLP*

A fast food company pays a professional basketball player millions of dollars to appear in television commercials. A memorabilia company licenses rights to sell dolls in the name of a European princess. A motion picture studio announces that it will use the image of a deceased movie star on the face of an unknown actor who will appear in an upcoming motion picture. An artist paints a picture of a professional golfer and sells the painting in a "limited edition" of 10,000 copies.

These situations illustrate how personal fame has economic value that can be exploited by others. People, particularly well-known people, acquire valuable goodwill through their extraordinary accomplishments in the arts, sports, politics, or other activities of public interest. Their names, likenesses, voices, and other aspects of their identities symbolize that goodwill to consumers. These symbolic representations of a celebrity can have great commercial magnetism, and using them in creative works or associating them with products or services can make people want to experience the work, buy the product or enjoy the service.

Many courts and state legislatures have recognized this economic reality and established a "right of publicity" to protect individuals from unauthorized commercial exploitation by others. It is, in some ways, the most intuitive of intellectual property rights. While copyright law protects what an individual creates, and trademark law protects what a company symbolizes, the right of publicity protects who an individual is from unauthorized commercial exploitation by others. First articulated by a court in 1953, today about 36 states recognize some variant of the right of publicity, about 19 states extend the right beyond death, no state to consider the issue has rejected the right, and the right has been adopted by the American Law Institute.

"It is time for appropriate federal legislation to be enacted to give individuals and their families at least some federal protection from the commercial theft of their identities. The alternative is a continuing cacophony of inconsistent state rights that risk drowning in an international ocean of digital media and commerce."

Although there is general legal agreement that the right of publicity should exist, there is widespread confusion over what it is. It presently is a creature of state law, and the nature and extent of the right varies widely from state to state. Both the International Trademark Association and American Bar Association have characterized current state right of publicity laws as a "patchwork" of inconsistency, while a leading treatise characterizes it as a "crazy quilt" of differing protections. This gives rise to many problems:

Unpredictable Protections - Although the trend is to recognize a right of publicity, many states have no statute or case law affirming its existence. Individuals who reside in such states either have no right of publicity protection or face the uncertainty and expense of precedent-setting litigation to establish one. Conversely, interstate businesses that license publicity rights are placed at a competitive disadvantage to those who sell products solely within a state that has not clearly recognized such rights, because they must pay license fees that businesses in other states may try to avoid.

Unpredictable Scope of Protections - Significant differences in protection among states can make determining the legality of particular conduct difficult. What is legal in one state may be illegal in another. For example, New York, Tennessee, and New Jersey have precluded unauthorized impersonation of celebrity performances, while Nevada expressly exempts celebrity impersonators from liability. Kentucky's and Massachusetts right of publicity statutes expressly prohibit only use of name or likeness, while New York and California also protect look alike, sound alike, or more indirect evocations of identity in certain circumstances. There can even be significant differences within a single state as to the scope of protection for living or deceased individuals. California, for example, recognizes expansive common law rights for living individuals, but extends only specific statutory rights to the heirs of the deceased.

Inconsistent Terms of Protection - States currently have very different terms of protection. New York recognizes a right of publicity only for living individuals, while Virginia recognizes the right for 20 years after death; Florida recognizes the right for 40 years after death; Illinois, Texas and Nevada recognize the right for 50 years, Ohio for 60 years, and California for 70 years after death, and Tennessee recognizes the right indefinitely so long as the identity is being commercially exploited.

Unpredictable Applications - Each state has its own choice of law rules, which can create almost capricious anomalies. The heirs of a deceased New York resident would have no publicity rights within the state of New York, because that state follows a strict "domicile" rule to posthumous right of publicity claims and recognizes no posthumous right of publicity. However, driving across the river and filing suit in New Jersey, or in Texas, might resuscitate those rights, because those states recognize posthumous publicity rights and have adopted choice of law approaches that might permit their laws to apply to heirs of a deceased out-of-state domiciliary. Similarly, a foreign resident whose image was exploited in the United States might enjoy the benefits of U.S. right of publicity law in New England, which has adopted the Restatement's "multi-factor" approach to conflicts of laws that permits application of U.S. law, but might not be able to do so in California due to some authority adopting a strict domicile approach that required application of foreign law to U.S. conduct.

These conflict problems can be especially difficult when publicity rights are exercised in interstate commerce. An injured party can, generally, file one suit to recover the damages suffered throughout the United States under the "single publication" rule. However, choice of law approaches to interstate torts would require a court to either choose one state's law to apply to the nationwide conduct or, alternatively, to determine that the law of some or all 50 states applies. Despite the obvious difficulties with the latter approach, presently unresolved dormant commerce clause issues involving extraterritorial application of state law may require courts to consider it.

The inconsistent nature of state law creates uncertainty for both individuals and businesses. An individual's or estate's ability to preclude others from commercially exploiting identity rights often turns on the vagaries of a particular state's substantive law or choice of law rules. National or multi-state businesses face a legal mine field when determining whether and in what circumstances they need to license rights from individuals. These legal uncertainties encourage forum shopping and require otherwise unnecessary litigation to resolve them.

These problems are exacerbated by computer technology. The Internet makes it cheap and easy to advertise and sell products nationwide and internationally. State law does not easily prevent such interstate misconduct; substantive uncertainties aside, questions of personal jurisdiction and the unresolved "dormant commerce clause" issues involving application of a single state's laws to national conduct described above make enforcement of state law rights difficult.

It also is now technologically possible to digitally manipulate an individual's image to make it appear that he or she actually did things or rendered performances he or she did not actually do or perform. Technology will soon permit creation of photorealistic, digitally animated imitations of real people who can "appear" in advertisements, video games, or motion pictures without any involvement by the person imitated. No state right of publicity statute specifically addresses such uses: while many statutes include exceptions that, on their face, appear to absolutely exempt such uses from liability in most media.

All of these problems could be eliminated through passage of a federal law that provides a national "floor" of protection against the unauthorized use of one's likeness in advertising or on products or merchandise, as well as from the unauthorized technological alteration or creation of images or performances for commercial purposes. Such a law could create predictability and uniformity in right of publicity law, while continuing to acknowledge and recognize the important work of state courts and legislatures in creating and developing the right. Such federal rights are needed to give individuals some ability to protect themselves from the interstate assaults on their identities threatened by unauthorized commercial exploitation, high technology and otherwise.

This need has been recognized by prominent legal associations. Both the International Trademark Association and the American Bar Association have called for passage of a federal right of publicity statute. The Issues and Policy Committee of the INTA in 1998 recommended that its Board of Directors adopt a Resolution calling for federal right of publicity legislation. The INTA suggested that the ABA draft a model bill, and in 2001, the Intellectual Property Section of the ABA drafted proposed legislation and passed a resolution favoring its passage by Congress.

Some of the provisions in this model bill are controversial and open to debate. For example, the ABA statute would make the right of publicity a part of federal trademark law but would nevertheless preempt state law, contrary to every other provision in the Lanham Act.

Such preemption does violence to traditional notions of federalism, and would result in a loss of rights presently available under the laws of many states. The proposed statute would apply only prospectively, thereby depriving living individuals of its benefits for acts that occur before its effective date, and the estates of individuals who die before its passage of federal rights at all. The statute would limit protection to 50 years after the death of an individual, a period significantly less than what is currently provided in many states by copyright law or by trademark law generally, which provides potentially indefinite protection. The proposed statue contains a list of exceptions that might result in an unduly narrow interpretation of its protections, resulting in fewer protections than are available today. Finally, the proposed statute doses not attempt to address the challenge of technology.

Nonetheless, the fact that the INTA and ABA have acted demonstrates their recognition of the basic fact that federal right of publicity legislation is needed to protect individuals and provide certainty in interstate commerce. It is time for appropriate Federal legislation to be enacted to give individuals and their families at least some federal protection from the commercial theft of their identities. The alternative is a continuing cacophony of inconsistent state rights that risk drowning in an international ocean of digital media and commerce.

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*2002 Mark S. Lee. All rights reserved. The author is an intellectual property litigator with Manatt, Phelps & Phillips LLP. who represents clients in the entertainment and high technology industries. He has been involved in rights of publicity litigation involving Tiger Woods, Elvis Presley, Frank Sinatra, Diana, Princess of Wales, and others. He can be reached at mlee@manett.com

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