Relationship Between Publicity Right of Privacy Law and Other Intellectual Property Laws

• Jurisdiction: Maryland

V. RELATIONSHIP BETWEEN PUBLICITY RIGHT OF PRIVACY LAW AND OTHER INTELLECTUAL PROPERTY LAWS

A. Relationship with Trademark/Unfair Competition Law

Federal trademark law and common law grant rights to the owner of a trademark to use a trademark in connection with the sale of certain goods and services in commerce. Trademark infringement claims involve a likelihood of confusion as to the source of goods or services, or affiliation or association between the trademark's owner and another user of the same or a similar mark.⁸² Those concepts are also embodied in the unfair competition provisions of § 43(a) of the Lanham Act and in Maryland common law concerning unfair competition.⁸³

Passing off (or palming off) occurs when a manufacturer misrepresents his own goods or services as someone else's (e.g., company "A" sells its product under company "B's" name).⁸⁴ The law of passing off is intended to protect persons from misrepresentations made by another which are ascribed to one set of goods, the goodwill established by a person in his own goods.⁸⁵ "The gravamen of an unfair competition claim for palming off [passing off] is that the labors and expenditures of the plaintiffs have been misappropriated by the defendants, and are likely to cause confusion among the purchasing public as to the origin of the product."⁸⁶ Thus, likelihood of consumer confusion is an element of trademark infringement under the Lanham Act and an element of state-law unfair competition (passing/palming off). A claim for passing off may be preempted by federal copyright if the alleged facts do not pass the "extra element" test, and thus the claim is, in essence, a disguised trademark or copyright issue.⁸⁷

In Lawrence⁸⁸ (discussed above), the Maryland Court of Appeals recognized the relationship between trademark law and right of privacy, stating that "the effect of the appropriation [of another's name and/or likeness] is to recognize or create an exclusive right in the individual plaintiff to a species of trade name, his own, and a kind of trademark in his likeness."⁸⁹ ,⁹⁰ Unlike a federal trademark, however, which involves scrutiny by Examiners at the U.S. Patent & Trademark Office before the trademark may be registered and enforced, an individual may be able to protect the use of his name and/or likeness under Maryland's common law without any prior federal or state governmental approval or registration.

Similar to the "incidental use" exception under the common law publicity right of privacy, the nominal use of a person's name in connection with a commercial endeavor may be sufficient to defeat plaintiff's passing off or reverse passing off allegation. This may be considered a fair use if it does not result in a likelihood of confusion. For example, in Comins, the court held that defendant's listing of plaintiff's name in the credits of a movie did not give the false impression that plaintiff was the source of, endorsed, or sponsored the film.⁹¹

B. Relationship with Copyright Law

Copyright laws provide an economic incentive for authors to make the investment required to produce a work—be it literary, visual, or a phono recording—that may be of interest to the public. The same economic considerations underlay many state right of publicity laws.⁹²

Under copyright law, a person (or the person's employer) who creates a work embodying the likeness of another is the author and owner of the work. The author's/owner's copyrights in the work, which vest at the time the person creates the work,⁹³ include the exclusive right to make copies of the work; prepare derivatives of the work; distribute copies of the work (either by sale or other transfer of ownership, or by rental, lease, or lending); and display the work publicly.⁹⁴

Under the copyright fair use doctrine, it is permissible to use limited portions of another's work for purposes such as commentary, criticism, news reporting, teaching, research, and scholarly reports, without obtaining the owner's permission.⁹⁵ Whether a particular use of another's work qualifies as fair use depends on all the circumstances; however, certain factors must be considered by the courts in determining whether or...