The right of publicity: a comparative perspective.

• Author: Leaffer, Marshall
• Position: Symposium: Interdisciplinary Conference on the Impact of Technological Change on the Creation, Dissemination, and Protection of Intellectual Property

1. INTRODUCTION

   What do Martha Stewart, the impresario of good living, Tiger Woods, a dominate sports figure of our time, and Paul Newman, the film actor and owner of a line of food products, have in common? The answer is that these celebrities enjoy powerful rights in their public persona. The identity rights of celebrities include their names, faces, voices, and practically any other distinguishing characteristic. This phenomenon is not new. In U.S. law, celebrities have enjoyed strong property rights in their persona under a number of legal bases such as federal trademark law, federal unfair competition law, dilution law, state trademark and unfair competition, not to mention perhaps the most powerful basis of all--state right of publicity law. This multifaceted protection has created a synergetic effect, resulting in an uninhibited and seemingly unlimited property right of celebrities in their persona. On the whole, the law in the United States has been particularly solicitous in the protection of celebrities.

   Who should reap the benefits of celebrity images and how rights should be allocated in their use is more than of passing curiosity. Certain recent tendencies in the law, both in the United States and abroad, that create ever more expansive protections for identity interests are a troubling development for many. (1) Celebrity images, such as those mentioned above, have entered into the common lexicon, permeating the public discourse imbued with an enduring and ever evolving symbolic meaning. Celebrities as public figures are an integral part of democratic dialog and the iconic significance of Elvis Presley, Marilyn Monroe, and Brigitte Bardot transcend their fame as entertainers. As professor Dreyfuss has stated: "They are amusing. They set moods and communicate status. They represent how their utilizers see themselves (or wish to have themselves seen) politically and culturally." (2) Thus, I believe, as do many others, that the law must balance the celebrity's interest in controlling their image with the public's interest in using those images as a means of communication.

   Unlike the United States, which has embraced a very far reaching right protecting personas, other countries in the common law world are only beginning to entertain such protection. For example, plaintiffs in the U.K. have, until recently, been unsuccessful in attempting to persuade the courts that unauthorized commercial exploitation of personality can come within the tort of passing off; that is, liability based on a misrepresentation leading to public confusion that damages plaintiff's business goodwill. (3) The British situation is of particular interest because it represents one instance of a developed country resisting the inexorable creation of new and expansive intellectual property rights, at least in this one domain.

   Is the lack of specific protection for celebrity personas an anachronism in today's world given the enormous economic stakes in merchandising famous identities? Celebrity markets transcend national boundaries, and it is perhaps no coincidence that both common law and civil law countries are reassessing the issue, resulting in initial steps toward some kind of international norm on the issue of "publicity rights." (4) But what should that norm be? Is a legal doctrine that accepts human identity as a commodity warranted or desirable?

   Countries, such as the U.K., whose laws are in flux, naturally look to the United States's laws whose experience with full-fledged publicity protection began over fifty years ago. (5) In the United States, the right of publicity is now found in most states either by statute or by common law interpretation, and it is based on a copyright like-moral rights model. (6) U.S. publicity law, with its ever expanding contours and, in my opinion, lack of sound theoretical justification, has been the object of much controversy and scholarly criticism. (7) The purpose of my article is to revisit the justifications for the right of publicity and to do so in comparative context with a particular emphasis on developments in the United Kingdom. If British lawmakers asked my advice (which they certainly will not), I would tell them that protection of celebrity personas is well administered by current law--particularly that of unfair competition. Sometimes doing nothing is the best approach to lawmaking in the domain of intellectual property.

   The following discussion traces the development of this ever expanding right and the incoherency that comes from applying quasi-copyright law protection to the personas of celebrities. In short, my position is this: U.S. law concerning the right of publicity is based on dubious and incoherent principles and has led to thorny practical problems of application. As suggested above, it is overly broad, and vaguely contoured. My overall conclusion is that identity interests are better tailored to an action for false endorsement based on trademark concepts of consumer confusion. Actions for false endorsement, based on section 43(a) of the Lanham Act, (8) have been a part of U.S. law for some time now and similar doctrines are beginning to develop in the U.K. as well. (9) Before I turn to the British situation, I will review the growth of the right of publicity (albeit with a jaundiced eye) as it stands in the United States.

2. UNITED STATES AND THE RIGHT OF PUBLICITY

   1. The New Right

      The "right of publicity" was first adopted in 1953, by Judge Frank, in Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc. (10) with brief explanation of it as an economic, not a personal right:

      We think that, in addition to and independent of that right of privacy ... a man has a right in the publicity value of his photograph ... [and] to grant the exclusive privilege of publishing his picture, and that such a grant may validly be made 'in gross'.... This right might be called a 'right of publicity.' (11)

      In Haelen, the right of publicity issue arose almost by accident because the case was brought as an intentional interference with contractual relations case. (12) The decision does not specify the theoretical basis for the new publicity right or why a right of publicity was necessary at all. (13) Judge Frank could have opted for a broadening of federal unfair competition law, an approach that could have achieved the same result. Instead, he fashioned what is easily characterized as a de facto property right in personality, and one that was not constrained by the limits of privacy rights claims. From the opinion, Judge Frank did not wish to establish a right having all the attributes of property but was only interested in establishing an assignable right. (14) Despite Judge Frank's functionalist approach to a practical problem, the right of publicity soon became a formalized property right, eventually acquiring all the attributes of property, including the transferability of the rights via legacy though will or intestacy. (15)

      Since Haelan, the right of publicity has taken hold in dramatic fashion, and is now recognized by statute or common law in a majority of states. (16) In its various forms, the right of publicity has materialized into a virtually unlimited, descendible, and assignable property right. The subject matter of the right and its transferability vary significantly among the states. (17) From time to time, attention has turned to some form of harmonization of the right under a federal statute but nothing seems imminent at this moment. (18)

   2. Ossification of Publicity Rights as Property

      Categorization of the right of publicity as a pure property right has won the day but has lead to unexpected, perhaps even perverse, consequences. As David Westfall and David Landau have shown, the property analogy has been pushed to the limit, leading to thorny and even intractable problems of application in proceedings involving divorce and bankruptcy. (19) Once publicity rights are characterized as property, the "property syllogism" inevitably kicks in and it is hard not to fall into its inexorable logic. The deductive formula goes like this: if the right is transferable, it must be assignable. And if assignable, it must be property, and since it is property it must have attribute X (which is shared by all property). Thus, it should be descendible like all property and must be subject to apportionment in divorce and disposition in bankruptcy proceedings.

      As mentioned above this ossification of publicity rights as property has stained traditional notions of property dispositions in settings such as bankruptcy and divorce proceedings. As for bankruptcy, absent a state exemption statute, publicity rights could be sold to the highest bidder to pay creditors. But what would creditors acquire? Could a trustee in bankruptcy force performance of services? Professors Jacoby and Zimmerman noted how the right of publicity, involuntarily transferred in a bankruptcy proceeding, could result in forced labor by requiring the celebrity to perform in advertisements and other commercial ventures. (20)

      Divorce proceedings have also highlighted the problems that arise when publicity rights become an issue in marriage dissolution. (21) One issue that has plagued the courts is how to treat earning capacity developed during marriage in the context of marital property. (22) Another related set of problems which has divided the courts is whether a claim to alimony limits the obligor's freedom to choose a...