Introduction

For more than sixty years, celebrities have used their right of publicity to prevent others from making unauthorized commercial uses of their personas, most commonly in the form of a celebrity’s portrait, photograph or signature. Despite its importance to celebrities seeking to tightly control the appropriation of their likeness, the right of publicity occupies a much less glamorous place in the mind of the public than other forms of intellectual property. Few law school intellectual property courses cover it in any detail. Many states do not recognize the right of publicity through common law or statute.[1] And the magnitudes of public awareness of patents, copyrights, trademarks, and even trade secrets are considerably greater than that of publicity rights. But in a sense, and not without irony, it is the right of publicity, this relatively marginalized form of intellectual property that is the most valuable to the famous.

Given this fringe status, the recent wrangling over the right of publicity in Massachusetts, a state not widely recognized for an abundance of celebrity residents, might appear curiously anomalous, even mysterious. But it is neither. The debate over the right of publicity in Massachusetts is necessary.  And timely. Like a small fraction of legal commentators and practitioners, we argue that the right of publicity is rapidly shedding its marginality. Celebrity and fame constitute the fundamental ether of spectacle-based society, domestically and increasingly abroad. As a result, the right of publicity is now an essential element of the intellectual property portfolios of even middling public figures.

The Growing Allure of Publicity Rights

Presently in the Commonwealth, infringement of the right of publicity affords the plaintiff recovery of damages for injury; treble the injury, at the court’s discretion, if the defendant’s knowingly infringed.[2] These remedies are relatively modest, though, compared to those in other jurisdictions that are likely models for the state’s contested reform proposals. In this regard, California’s law is of particular interest. Practitioners and scholars regularly point to the potential for large damage awards and the more nuanced brand management capacities that publicity rights can grant to explain the law’s growing importance and flux, often turning to California cases to support this perspective.[3] And California’s cases do tend to be dramatic, as arguably befits the quintessential entertainment law.

Most recently, for example, the actor Frank Sivero, who is widely known for his roles in films such as The Godfather: Part II and Goodfellas, filed suit against Fox Television for publicity right infringement, “claiming a mobster character on Fox’s ‘The Simpsons’ is based on his performances in those films.” See Frank Sivero v. Fox Television Studios Inc. et al.,  Superior Court of the State of California, County of Los Angeles complaint no. BC561200. Sivero seeks $50,000,000 in damages for the alleged misappropriation of his likeness.

As a second California case indicates, the right of publicity can also be a powerful political tool. In 2006, then Governor Arnold Schwarzenegger was able to use his right of publicity to force a doll manufacturer to edit a bobblehead parody figure that seemed to mock his conversion of Hollywood cache into political power. Ohio Disc. Merch., Inc. v. Westfield Ins. Co., 2006-Ohio-4999 (Ohio Ct. App. 2006). The case settled, but the bobblehead toy was edited in accord with Schwarzenegger’s wishes. See Oak Prods. Inc. v. Ohio Disc. Merch., Inc., No. 08-1563 (L.A. Super. Ct. Apr. 30. 2004).[4] And most notoriously, in 1994, the game show hostess Vanna White won an infringement suit against Samsung for an unauthorized evocation of her persona. The unauthorized use involved a print ad in which a 1950s-style robot wearing a blonde wig, gown and jewelry, and standing near a game board similar to that used in the game show Wheel of Fortune was positioned above a text caption reading “Longest-running game show. 2012 A.D.” See White v. Samsung Elects. Am., Inc., 989 F.2d 1512 (9th Cir. 1993). Ms. White won approximately $400,000 for the misappropriation of her identity, even though neither her image, nor her portrait, was used. See id.

Recent New York case law could also be turned to to support the view that the right of publicity is ascending because of the growing financial stakes and ability to tightly control celebrity persona. The striking outcome of a lawsuit centering on Marilyn Monroe’s persona effectively teaches a lesson that is complementary to that of the three California cases; it points out the high costs of losing one’s right of publicity upon death. The basic question of the litigation was whether Ms. Monroe’s estate inherited her right of publicity, “which was created and deemed posthumous by the states of California and Indiana decades after [Monroe’s] death, through a residual clause in her Last Will and Testament.” See Milton H. Greene Archives, Inc. v. Marilyn Monroe LLC, 692 F.3d 983 (9th Cir. 2012). Even if the legislation applied retroactively, the estate was “judicially estopped from asserting California’s posthumous right of publicity.”[5] Because Monroe’s executors claimed during decades of probate that she died as a domicile of New York in order to avoid paying California estate taxes, and because New York’s right of publicity terminates upon the death of the rights holder, Monroe LLC did not inherit the rights through Monroe’s will. As result, what would have undoubtedly been a lucrative revenue stream had New York’s applicable law been posthumous, or had California’s posthumous right applied, disappeared.

Legal outcomes of these financial and political magnitudes undoubtedly get the attention of wealthy celebrities.[6] However, to point exclusively, or even primarily, to politics and money misses the real motive force behind the de-marginalization of the right of publicity, and the wrangling over its proper contours in the Commonwealth. We believe that force to be technological in nature, rather than dollar-denominated or a function of electioneering. We argue that the political power and large claim and damage magnitudes are largely technologically determined.

A Technological Origin Story for Publicity Rights

Right of publicity’s standard origin story traces its birth back to privacy law via the publication of Samuel D. Warren and Louis D. Brandeis’s famous 1890 Harvard Law Review article, The Right of Privacy.[7] The article is rightly lauded as the conceptual source of what we now know as privacy, what the contemporaneous authors spoke of as “the right to be let alone”[8]. Despite the irrational notion that celebrities seek privacy in the way that the non-famous do, and that they use the right of publicity to achieve it, it is still common to find commentary stating that right of publicity “grew,” “descended” or otherwise “flowed” from privacy law.[9] But The Right of Privacy was largely a response to technological developments deployed by the press of the day, mainly photography.[10] Celebrities were desperate to respond to the power of a new technology that was capable of using their likenesses in a manner that had been virtually impossible without their presence before the development. In other words, privacy law and the right of publicity were reactions to the same force. For the first time, celebrities’ personae could be evocatively simulated through emergent media technology; as the great media guru Marshall McLuhan noted aphoristically, “the photograph extend[ed] and multipli[ed] the human image to the proportion of mass-produced merchandise.”[11] The same technological dynamic has always largely determined the right of publicity, and it continues to do so today.

The 19th century saw the rise of photography and its merger with newsprint that led to tabloid newspapers and other forms of graphically augmented print media. That century saw silent film introduced, as well. Celebrity personas were cultivated, refined and circulated by both these developments. Media theorists often refer to this era as the Graphic Revolution. The creation of radio in the early 20th c, and then the development of television transmission, television commercials, VHS tapes and satellite tv from roughly the 1920s through the 1970s; the invention of microprocessor-based computers and the birth of Apple and Microsoft in the 1970s; PCs and CDs in the 1980s and DVDs in the 1990s—all of these developments can be understood as further enabling the Graphic Revolution. The developments facilitated unprecedented propagation of celebrity persona and further fueled celebrity-augmented advertisement. The right of publicity arrived in the middle of this period primarily because these technologies largely converted celebrity personas into the very stuff of mass-produce-able merchandise.

With growing public access to the World Wide Web and the advent of social media technologies beginning in the 1990s, we entered a phase of celebrity development and management that largely approximated McLuhan’s “global village” concept: due to the interconnectedness and two-way communication capacities of networked communications, more people gained access to celebrities, and to the communicative forces that formed celebrities. Facebook, blogs, Instagram, networked videogames, iPhones, Twitter, Snapchat and related technologies let fans and critics easily communicate directly with celebrities. The distance between celebrities and those that consume celebrity personae has collapsed, and celebrity persona is now destabilized due to the democratization of access to it.

We think these waves of technological advances largely account for the emergence of the right of publicity, and for the growing importance of the right to celebrities. And the destabilization of celebrity will likely be exacerbated by further developments in the near future.

The Graphic revolution, and the social media-zation of society, will soon be admixed with a new phase of technological change: artificial immanence. Atop the image-centric, widely trafficked qualities of the previous two phases will be added the power to easily, cheaply and with great affect simulate celebrity persona. Strong forms of virtual reality and augmented reality; powerful artificial intelligences steering our experiences in video games featuring celebrities, and animating androids with human-like behavior; and, perhaps most strikingly, holographic technologies combined with haptic devices that create the sense of not only visually perceiving a celebrity in 3D, but also virtually touching them [12]. Imagine Catherine Zeta-Jones or Dennis Haysbert touching you on the shoulder as they peddled cellular service or insurance. And imagine the parody potential; maybe Zeta-Jones and Haysbert visually hybridized into a gryphonesque spokes-monster and giving lessons on an esoteric form of phone hacking.

Artificial immanence will likely decrease the cost of authorized and unauthorized commercial use of celebrity personae, further increasing their value while simultaneously rendering them more susceptible to appropriation. Accordingly, we see no reason to expect battles over publicity rights to soon subside. Just the opposite, in fact: we should anticipate a more or less continuous succession of hotly contested right of publicity issues. Six non-exclusive future scenarios seem likely to occur over the next ten to fifteen years:

  1. Increased litigation accompanied by greater damages claims;
  2. Increased attempts by aggregators of publicity rights to legislate posthumous rights;
  3. Intensification of movement towards a model federal right of publicity statute;
  4. Shifts to moral suasion as an alternative to right of publicity suits [13];
  5. Growth in boutique right of publicity firms that advise strictly on legislative developments and implications for persona curation; and
  6. Growth in insurance strategies for infringement of right of publicity comparable to strategies for trademark and patent infringement.

Even if only one of these possible futures is realized, practitioners should expect to see non-trivial increases in both the cost of monitoring uses of celebrity clients’ personas, and in reasonable royalty rates. As the forms of media technology continue to bloom, merge, compete and otherwise interact, destabilizing celebrity all along the way, the flux of publicity rights will likely continue not only in the Commonwealth, but in the remainder of the United States, as well as in foreign jurisdictions that have yet to embrace them in anything beyond rudimentary forms.

Michael G. Bennett and Libbie Richards

Michael Bennett, J.D., Ph.D., is an associate research professor in the School for the Future of Innovation in Society, the Risk Innovation Lab, and the Center for Science and the Imagination; and a lecturer in law at the Sandra Day O’Connor College of Law at Arizona State University. Dr. Bennett is also a member of the Illinois and Michigan bars. Author contact: mgbenne1@asu.edu.

Libbie Richards, J.D., is a 2015 graduate of Northeastern University School of Law.

 

REFERENCES

[1] J. THOMAS MCCARTHY, THE RIGHTS OF PUBLICITY AND PRIVACY § 3:1 (2d ed. 2014).

[2] Mass. Gen. Laws ch. 214, section 3A (1973).

[3] Ted F. Gerdes, The Unbearable Likeness of Being: RECENT COURT DECISIONS HIGHLIGHT THE TENSION BETWEEN ENTREPRENEURS’ FIRST AMENDMENT RIGHTS AND CELEBRITIES’ RIGHTS OF PUBLICITY, available at http://www.gerdeslaw.com/wp-content/themes/gerdes/inc/The-Unbearable-Likeness-of-Being.pdf.

[4] Associated Press, Gov. Settles Suit Against Bobblehead Manufacturer, Los Angeles Times (August 3, 2004), available at http://articles.latimes.com/print/2004/aug/03/local/mebobble3.

[5] In Milton H. Greene Archives, Inc. v. Marilyn Monroe LLC, 692 F.3d 983, 992-993 (9th Cir. 2012)

[6] ‘Right of Publicity’ For The Dead, Radio Boston (Aug. 13, 2012),   http://radioboston.wbur.org/2012/08/29/identity-after-death (discussing Bill Cosby’s approaching the Commonwealth regarding a posthumous right of publicity).

[7] 11. Samuel D. Warren and Louis D. Brandeis, The Right of Privacy, 4 Harv. L. Rev. 193 (1890).

[8] John G. Speed, The Right of Privacy, 163 N. AM. REV. 64, 68 (1896).

[9]  Eileen R. Reilly, Martin Luther King, Jr., Center for Social Change, Inc. v. American Heritage Products, 46 U. Pitt. L. Rev. 1161, 1164 (1984-1985).

[10] Michael Madow, Private Ownership of Public Image: Popular Culture and Publicity Rights, 81 CAL. L. REV. 125, 159-160 (1993).

[11] Marshall McLuhan, UNDERSTANDING MEDIA: The EXTENSIONS OF MAN 189 (1966).

[12] Julie Carmigniani et al., Augmented Reality Technologies, Systems and Applications.” Multimedia Tools and Applications 51.1, 341-377 (2011).

[13] For an example of this strategy in a jurisdiction that does not recognize a right of publicity, see Travel advert featuring Mandela Pulled, Cape Argus, June 18, 2014 Wednesday, E1 Edition.

 

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