INTRODUCTION I. EXPANSION OF THE RIGHT OF PUBLICITY A. Privacy Origins B. The Modern View: Fame as Property C. Problem Cases: Referential Uses and Merchandise 1. Merchandising 2. Evocation II. THE USUAL EXPLANATIONS A. Moral Rights B. Allocative Efficiency C. Incentive Models and Copyright III. TRADEMARK LAW: A BETTER ANALOGY A. Explaining Right of Publicity Cases Using the Trademark Framework 1. Likelihood of confusion 2. Dilution 3. Cybersquatting 4. Merchandising B. Do We Need a Separate Right of Publicity at All? 1. Non-trademark theories 2. Imperfect fit of trademark protection IV. IMPLICATIONS OF THE TRADEMARK APPROACH A. Substantive Implications for Right of Publicity Doctrine B. The Right of Publicity and the First Amendment CONCLUSION INTRODUCTION
The right of publicity gives people the right to control the use of their names and likenesses for commercial purposes. For years, courts have struggled to make sense of two dimensions of this right--what it means to use a name or likeness "commercially," and what aspects of a person' s "likeness" are protected against appropriation. In the absence of any clear theoretical foundation for the right of publicity, the meanings of these terms have steadily swelled, to the point at which virtually any reference to an individual that brings financial benefit to someone else qualifies as a violation of the right of publicity. (1) At the same time, the courts have developed no meaningful counterweight to this ever-expanding right. Instead, they have created a few ad hoc exceptions in cases where the sweeping logic of the right of publicity seems to lead to results they consider unfair.
Two types of publicity claims have raised particular problems for the courts. The first involves "merchandising" claims, in which individuals claim violation of their publicity right not by the use of a name in advertising, but by the sale of products that bear their names or likenesses. Courts have generally resolved these claims by making a distinction between "news" or "speech," on the one hand, and "merchandise," on the other. But as art and information become increasingly commodified, this distinction--if it ever made sense--has become ever harder to sustain. (2) The second type of problematic claim involves cases in which a use draws attention away from the celebrity or arguably sullies the celebrity's reputation in some way that harms the overall value of her identity. Properly limited, such a cause of action might have some theoretical appeal, but courts have applied it in ways that exceed any plausible theoretical justification, particularly when First Amendment considerations enter the fray.
One root of the problems with these cases lies in the elusiveness of a theoretical justification for the right of publicity. When the government can clearly identify a reason to limit speech, courts have some basis on which to evaluate whether the speech limitation lives up to that purpose. But because the right of publicity rests upon a slew of sometimes sloppy rationalizations, courts have little way of determining whether a particular speech limitation is necessary or even appropriate in order to serve the law's normative goals. (3) Instead, they appear to assume that the sum of a set of inadequate justifications equals far more than its parts and allow right of publicity claims to run roughshod over the speech interests of the public.
If the absence of a rationale has created the problem, then the answer lies in identifying whether and when a right of publicity might serve a legitimate government interest. Yet a review of the cases and literature reveals that no one seems to be able to explain exactly why individuals should have this right. A right of privacy can't justify it, for the right of publicity has been applied in a wide range of situations that don't implicate privacy at all. Some commentators have proposed a natural or moral right of control over one's name or likeness, (4) but there seems to be no policy justification for giving such control, and the absence of such a right in most of the world and indeed throughout most of U.S. history should make us skeptical of claims based on some consensus moral belief. (5) The moral claim to own the use of one's name also seems inconsistent with the absence of natural or moral rights justifications for other forms of intellectual property (IP) in the United States. (6)
Of late, and particularly in the merchandising cases, courts and commentators have looked to copyright law in an attempt to justify and delimit the right of publicity. On the affirmative side, they contend that copyright law's incentive-based rationale supports the publicity right. Reasoning that the right of publicity gives individuals the incentive to develop valuable personas, courts conclude that depriving those individuals of the fruits of their labors will interfere with those economic incentives. On the defense side, some courts have even gone so far as to create a fair use doctrine, importing from copyright law judicially created limits on the enforcement of the right. This approach turns the right of publicity into a new form of IP right, one based explicitly on analogies to and justifications for real property.
Thinking about the right of publicity by analogy to IP law may indeed be helpful. But we think copyright is the wrong analogy for a number of reasons. First, in the United States, copyright law is utilitarian. We grant copyrights in order to encourage the creation of new works of authorship. There is no similar justification for the right of publicity. Society doesn't need to encourage more celebrities or more marketing of celebrity image. Nor is there any evidence that, even if such a result were desirable, a property-like right of publicity is well tailored to that goal. Second, copyright's fair use doctrine involves tradeoffs between the interests of original creators and those who would like to make transformative uses of their creative works. The right of publicity has no similar tradeoff. (7) Third, copyright's fair use doctrine is confusing to the point of incoherence and is hardly a model anyone would wish to emulate. Finally, the analogy to copyright can obscure important free speech interests at stake in right of publicity cases. For better or worse, copyright laws have gotten a free ride when it comes to the First Amendment. The copyright analogy may prompt courts to mistakenly extend that free ride in the right of publicity context.
Logically, the right of publicity has more in common with trademark law than with copyright. The right of publicity protects a celebrity's interest in her name and likeness, much as trademark law protects a business's name and other trademarks. Both areas of law give rights-holders some measure of control over the meaning of their identities by permitting them to control the use of associated symbols. (8) The Lanham Act has traditionally accomplished this end by preventing commercial uses of trademarks that are likely to confuse consumers regarding either the source of goods or the affiliation, endorsement, or sponsorship of those goods by the trademark owner. (9) The right of publicity aims to do the same thing for celebrities by preventing the use of a celebrity's name or likeness in advertising or promotion to falsely suggest that she has endorsed the advertised product. Both forms of legal protection promote not only the rights-holder's interests, but also those of the public. Trademark holders and celebrities can prevent the deceptive appropriation of the meaning associated with their goodwill and identity, while consumers can buy products with confidence in the truth of assertions about who makes, sponsors, endorses, and stands behind those goods. (10)
More recently, the Lanham Act has been expanded to prevent dilution of famous trademarks by commercial uses that draw attention away from the trademark owner or throw it into disrepute, even if the uses do not confuse the public. Dilution, too, has analogies in the right of publicity. Uses of a celebrity's name might in rare circumstances undermine the connection between the name and that celebrity or, more likely, might tarnish the reputation of the celebrity by using her name or likeness in a disreputable connection, even in the absence of confusion or assumptions of endorsement. In these narrow circumstances, a cause of action may be appropriate.
Finally, a few courts have expanded trademark law to include a general right to control the merchandising of goods bearing a trademark even in the absence of confusion or dilution, though this expansion rests on dubious legal grounds. This merchandising right too has analogues in the right of publicity. Indeed, the emergence of a property-like form of the right of publicity can best be understood as an adoption of the putative trademark merchandising right, with judicial decisions reflecting the same anti-free-riding instincts that informed the merchandising cases in the trademark context.
Reconceiving the right of publicity as a trademark-like right offers significant benefits in defining the right's scope and limitations. First, it provides a helpful way to think about the different sorts of claims made under the rubric of publicity. We have considerable experience with each of these types of claims in trademark law, and applying that knowledge to right of publicity cases can help us understand why we might (or might not) want to prohibit particular uses. Most importantly, looking at the right of publicity through the lens of trademark law offers logical ways to limit the right. Trademarks are not property rights in the traditional sense, though a few courts and commentators have suggested that trademark owners should have property-like rights over their marks. Trademark cases tend instead to be decided either based on likelihood of confusion or on dilution grounds, both of which bear a clear...