The Flip Side of Privacy: the Right of Publicity, the First Amendment, and Constitutional Line Drawing - a Presumptive Approach

• Publication year: 2022

39 Creighton L. Rev. 939. THE FLIP SIDE OF PRIVACY: THE RIGHT OF PUBLICITY, THE FIRST AMENDMENT, AND CONSTITUTIONAL LINE DRAWING - A PRESUMPTIVE APPROACH

Creighton Law Review

Vol. 39

RUSSELL S. JONES, JR.(fn*)

I. INTRODUCTION

Slightly more than fifty years ago, courts and commentators noted the fact that famous persons had begun regularly to leverage their fame in one area, for example sports or entertainment, into other lucrative area, such as promoting or even placing their likenesses on commercial products. Perhaps ironically deriving its theoretical underpinnings from the right of privacy, the "right of publicity" has become a well-recognized, albeit still somewhat controversial, part of American jurisprudence. Courts apply and interpret the right of publicity in cases involving the use of celebrities' names, likenesses, and, occasionally, other identifying characteristics on, in connection with, or to endorse or promote a myriad of products and services.

Some version of the right of publicity is now recognized in the majority of the states: by statute in ten states and by common law in at least eighteen others (of which eight also have statutes).(fn1) The right of publicity is also recognized in the Restatement of Torts and Unfair Competition.(fn2)

As celebrities increasingly seek to profit from their celebrity status, efforts to enforce their rights of publicity have grown as well. From 2000 to the present, there have been over 100 reported case decisions involving right of publicity claims. There also have been a number of law journal articles written during this same time period analyzing the right of publicity.(fn3)

Many of these cases, and much of the commentary in the field, have involved a clash between a celebrity's right of publicity and another person's asserted right to free speech or expression protected by the First Amendment. Courts and commentators have struggled to articulate clear and generally applicable guidelines as to how to resolve this conflict. There have been at least four tests suggested and applied, none of which has proved so satisfactory that it has received general acceptance. This Article will, first, briefly survey the development and underpinnings of the right of publicity; second, review the leading cases in which courts have attempted to resolve perceived conflicts between the right of publicity and free speech; and third, suggest a two-part analysis for use in such cases.

The author believes that many courts have made the task too complicated and thereby created "rules" that offer neither certainty nor clear guidance to courts, lawyers, and litigants. A better approach, in the author's view, is to examine, first, the nature of the thing being sold or distributed and, if necessary, the purpose for using the celebrity's identity on or in connection with the thing. If free speech is asserted as a defense, the type of medium used would determine whether there is a presumption that the right of publicity or free speech will prevail. The presumption could be overcome with strong evidence, thus allowing the courts to recognize non-traditional forms of expression while safeguarding property rights. Courts and lawyers are well used to handling presumptions, and the suggested approach allows all interested persons to more accurately and consistently decide when a person's free speech rights do and do not overcome a celebrity's right to control the commercial use of his persona.

II. THE RIGHT OF PUBLICITY

A. DEFINITION OF THE RIGHT

The right of publicity is generally defined as the right of a person - usually but not necessarily a famous person or celebrity - to control the commercial use of his name, likeness or other personal identifying characteristics, or persona.(fn4) It protects persons from the unauthorized use or commercial appropriation of their identities.(fn5) It is generally recognized as a property right, being enforceable by injunction, transferable, and, in many states, descendible.(fn6) The right has become particularly important to celebrities and personalities such as professional athletes who often authorize others to reproduce their names and images in connection with promotions and products such as trading cards, posters, video and board games, figurines, and other products.(fn7)

B. HISTORICAL ROOTS AND EVOLUTION

The right of publicity has its roots in the right of privacy, first articulated by Samuel Warren and Louis Brandeis in their influential late 19th century Harvard Law review article.(fn8) In 1953, the Second Circuit Court of Appeals first identified what is now called the "right of publicity."(fn9) In Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.,(fn10) the issue was whether professional baseball players had granted something of value through an exclusive license to use the players' names and likenesses on trading cards. The court held that the players indeed owned, and had effectively transferred, something of value, that being the right to control the commercial use of his name or photograph:

We think that . . . a man has a right in the publicity value of his photograph, i.e., the right to grant the exclusive privilege of publishing his picture, and that such a grant may validly be made "in gross," i.e., without an accompanying transfer of a business or of anything else . . . This right might be called a "right of publicity." For it is common knowledge that many prominent persons (especially actors and ball-players), far from having their feelings bruised through public exposure of their likenesses, would feel sorely deprived if they no longer received money for authorizing advertisements, popularizing their countenances, displayed in newspapers, magazines, busses, trains and subways.(fn11)

Professor Melville Nimmer expounded on the right of publicity in a 1954 article,(fn12) and Dean Prosser identified "appropriation, for the defendant's advantage, of the plaintiff's name or likeness" as one of his four "privacy" torts.(fn13)

As generally stated, the elements of a claim to enforce the right of publicity address both the validity of the right asserted and an infringement of that right. Thus, a plaintiff must prove the following: (i) he or she owns an enforceable right in a human being's identity or persona (either the plaintiff or one who has assigned that right to plaintiff), (ii) defendant, without permission, used commercially, i.e., for purposes of trade or advertising, "some aspect of that identity or persona in such a way that plaintiff is identifiable from the defendant's use," and (iii) "defendant's use is likely to cause damage to the commercial value of that persona."(fn14)

C. ILLUSTRATIVE EXAMPLES AND APPLICATIONS

The right of publicity has been used to protect a celebrity's name or likeness on or in connection with any number of products or services. The courts have had no problem holding that using a celebrity's name or likeness to endorse or promote a product without the celeb-rity's consent is a commercial use that violates the right of publicity.(fn15) It is equally accepted that using a celebrity's name, likeness, or personal indicia on a commercial product without consent will violate the celebrity's right of publicity.(fn16)

A series of cases recognized this even in the context of personal indicia other than a name or likeness - a sound-alike voice,(fn17) former name,(fn18) a look-alike,(fn19) a race car identified with its driver,(fn20) a lookalike robot,(fn21) and even a slogan.(fn22) It is fair to say that today, despite some occasional criticism,(fn23) the right of publicity has a well-recognized place among the spectrum of intellectual property rights.

III. PROBLEM: WHEN FIRST AMENDMENT FREE SPEECH PRINCIPLES CONFLICT WITH THE RIGHT OF PUBLICITY

A. EARLY CASES

1. Grant v. Esquire, Inc.

In Grant v. Esquire, Inc.,(fn24) a magazine contained an article on current men's fashion. The article included illustrative photographs of a model, but with actor Cary Grant's face superimposed, making it appear that the photographs were of Grant. Grant sued for violation of his publicity rights under New York's privacy statute.(fn25) The court analogized Grant's statutory claim to the developing common law right of publicity and noted that the right protected a "second - almost the obverse" interest protected by the right of privacy.(fn26)

The magazine admitted that it had used Grant's likeness without permission, but argued that it had not used the likeness "for the purposes of trade," and, if it had, the First Amendment privileged it to do so.(fn27) The court found a jury question as to whether the use of Grant's photograph was "for purposes of trade - e.g., merely to attract attention" or whether it was used in the course of "legitimate comment on a public figure or subject of public interest with which plaintiff has voluntarily associated himself."(fn28)

The court rejected, however, Esquire's argument that the First Amendment barred Grant from obtaining relief. The court found no danger that a jury verdict for Grant would chill First Amendment rights or create self-censorship. Instead, the court found the guiding principle to be "[i]f the publisher feels impelled to trade upon the name and reputation of a celebrity, it must pay the going rate for such benefit." The court compared the publisher to a "painter who feels he...