Raising walls against overlapping rights: preemption and the right of publicity.

• Author: Tushnet, Rebecca
• Position: Negotiating IP's Boundaries in an Evolving World

INTRODUCTION

The right of publicity overlaps with trademark in its protections against false endorsement, with copyright in its (supposed) justifications in incentivizing performances, and with traditional privacy and defamation torts in protecting personal dignity and control over one's own presentation of the self. Yet the right of publicity has been used to extend plaintiffs' control over works and uses that don't violate any of the rights with which it shares a justification. This quicksilver nature is what makes the right of publicity so dangerous.

The law of overlaps in the form of preemption cases might offer some assistance in suggesting a purposive approach. Where the state-law right of publicity has a similar purpose to that of copyright, it can conflict with that right and be preempted by federal law. Where the right of publicity's purpose is different, however, the relevant purpose or purposes furthered should guide our analysis of the appropriate limits on the right. The fact that plaintiffs have renamed their claims should not enable them to extend their rights beyond the underlying justifications for those rights.

By comparing how preemption and First Amendment law have used purposive approaches to limit the right of publicity, we can see something about how boundary work in intellectual property law (IP) is done--badly, usually, with justifications that aren't consistent or that assume that other regimes work differently than they actually do. One improvement would be to embrace categorical approaches, rather than unpredictable case-by-case balancing; both preemption and First Amendment doctrines can lend themselves to this approach. Another improvement would be to think of the First Amendment as an intellectual property regime of its own, one with general preemptive power. As Justice Brandeis said, the general rule is that ideas are "free as the air to common use," subject to changes worked by positive law, but the First Amendment can prevent positive law from putting ideas or facts off-limits. (1)

1. THE EXPANSION OF THE RIGHT OF PUBLICITY

   The stunning expansion of the right of publicity has been extensively covered elsewhere. (2) I will offer only two appalling recent examples: in 2015, a district court allowed a right of publicity claim against a racing video game to proceed. (3) The theory of the case was that the game offered a visual representation of an actual racing track, including an image of a banner displaying the trademark of Virag, an Italian flooring company. (4) Virag is also the last name of Mirco Virag, one of Virag's owners, and the court accepted the allegation that the Virag trademark was a "personification" of Mirco Virag. (5) As a result, although the First Amendment precluded a claim against the video game based on allegations of trademark infringement, (6) a right of publicity claim survived based on the game's alleged use of Mirco Virag's identity-based on the same banner that triggered the First Amendment-barred confusion claim. (7) Even in such cases of flat-out conflict between trademark's and the right of publicity's respective First Amendment limits, courts have been unwilling to limit the right of publicity. (8)

   Similarly, a California trial court recently found that a plaintiff had shown a probability of success on the merits of his claims that Facebook's practice of putting advertisements on webpages, including Facebook pages set up to criticize the plaintiff, made a commercial use of the plaintiff's name and likeness and thus violated his statutory right of publicity and constituted common-law misappropriation under California law. (9) Truth and lack of negativity in the portrayal aren't defenses to a right of publicity claim, so the right is far more expansive than plaintiff-friendly defamation rules the Supreme Court invalidated long ago. Channeling the plaintiff's claim into the proper cause of action--preventing him from evading the well-justified limits on defamation law (10)--is the obvious solution to the problem; instead, the court approved an interpretation of the right of publicity that 011 its face allows President Donald Trump to control every mention of his name in ad-supported or for-profit media, which is to say almost all media outlets. (11)

   One reason for this expansion is that, without a coherent justification for the right of publicity, there are no obvious stopping points for its scope. If the justification is merely about allowing a person control over unconsented uses of her image, then any uses or even reminders of her identity would violate the right, subject at most to the external constraint of others' First Amendment rights to engage in speech about the world. (12) Following this logic, courts have generally only limited the right based either on statutory exclusions, which need no theories behind them, (13) or based on an often cramped view of the First Amendment. (14)

   There are comprehensive theories of the right of publicity that attempt to give it an existence of its own, with boundaries defined by the nature of the interest to be protected. Mark McKenna, for example, has offered a personhood-based account of the right of publicity. (15) However, courts have generally not tried to provide any coherent theory behind the right. Some cases offer a grab bag of possible interests that the right can serve, from personhood to incentive for performance to anti-false-association. (16) Other cases announce that the right of publicity is a property right, apparently a black box into which one can inquire no further. (17) I myself am skeptical that an internal justification can be found that successfully distinguishes the right of publicity from a trademark-type right against false endorsement, but the lack of judicial attention to the right's justifications contributes to the lack of judicial attention to the right's boundaries.

2. COPYRIGHT PREEMPTION AS BOUNDARY ENFORCER

   Recent cases have highlighted the potential for using preemption theories to create a sort of definition of the right of publicity by subtraction: where Congress has tried to achieve a particular aim, such as encouraging the production of creative works, in a particular way, then states should not be allowed to upset that balance by encouraging production in a different way. Although better First Amendment treatment for the right of publicity still remains an important need where a speaker is creating a new depiction of a real person, preemption can define the boundaries of publicity rights where the challenged use is based on an existing copyrighted work in which the person voluntarily appeared.

   1. How Copyright Preemption Ought to Work in Right of Publicity Cases

      The helpful role of preemption can be illustrated by Dryer v. National Football League, (18) which involved former football players' right of publicity claims based on the use of truthful, nondefamatory clips of them playing games in films that were compilations of game footage and interviews. (19) Offered a choice of First Amendment and preemption arguments with which to dismiss the players' claims, the Court of Appeals for the Eighth Circuit chose preemption. The challenged films depicted "significant games, seasons, and players in the NFL's [National Football League's] history" via compilations of game footage and interviews with players, coaches, and other individuals involved in the game. (20)

      The right of publicity here conflicted with the copyright owner's right to exploit its copyright, a not uncommon problem with expansive right of publicity claims. (21) In Dryer, the players sought to prevent NFL Films from commercially exploiting films to which it owned the copyright. (22) Copyright preemption under section 301 of the Copyright Act--express preemption-exists when (1) the plaintiffs claim is based on a right equivalent to copyright, and (2) there is no "extra element" to distinguish the plaintiff's claim from copyright. (23) Both parts of this test can be extremely fuzzy--it's clear that intent isn't an extra element, for example, because an intent requirement simply shrinks the set of instances of copying that can be actionable, but when and whether common-law misappropriation claims are preempted has remained the subject of judicial dithering across multiple circuits. (24)

      In order to avoid copyright preemption, the former players in Dryer argued that their performances in the filmed games were part of their identities, and thus that they weren't making claims based on the copyrighted works. (25) The Court of Appeals rejected this argument, because modern copyright subject matter specifically encompasses fixed recordings of live sports performances. (26) NFL Films had permission to record those live performances, and had valid copyrights to its footage. (27) Thus, the right of publicity claims were based on a work within the subject matter of copyright. (28)

      Dryer is exactly right--but it is worth noting that some courts have rejected the very same argument when the plaintiffs' claims were based on still photographs rather than on moving images. (29) In the conflicting cases, courts accept the argument that the right of publicity protects a person's face or appearance in general, as some sort of Platonic ideal, and not the particular moment captured by a photo. (30) My suspicion is that law's general trouble dealing with images leads to some disrespect for photography, meaning that courts fail to grant photography equal dignity with other types of copyrightable works when compared with the depicted person's rights. The same trouble with images likely contributes to courts' difficulty making the rather evanescent distinction between a claim based on the use of a person's persona that just happens to be captured in a photo, and a claim based on the use of the photo of the person. The courts that hold that photo-based right of publicity claims fall within the subject matter of copyright...