The right of publicity is an often misunderstood right.
In the last year several celebrities have filed newsworthy right of publicity claims including:
In September 2019, Arianna Grande sued Forever 21 for $10,000,000 claiming Forever 21’s use of look-a-like models mostly in Instagram posts violated her right to control her image specifically claiming Forever 21 intentionally used strikingly similar models who dressed and posed like Grande in her music video “7 Rings.” One of the photographs used a graphic “7” is virtually identical to the photograph in the “7 Rings” video. See: https://www.reuters.com/article/us-music-ariana-grande-forever-21/ariana-grande-sues-forever-21-for-10-million-over-look-alike-ad-campaign-idUSKCN1VO1JG
In October 2019, Kim Kardashian sued the developers of a “selfie beauty” app for taking a photo that she had posted of herself to her Instagram account in October 2017 and using it in a “world-wide marketing campaign” to promote their service. See: https://www.cosmopolitan.com/entertainment/celebs/a28323658/kim-kardashian-suing-ihandy-makeup-app-10-million-dollars
In January 2020, Linda Barbash sued the producers of the 2019 film Hustlers for $20,000,000 for violating her right of publicity as well as for other claims. Link: https://www.thewrap.com/hustlers-samantha-barbash-stripper-lawsuit-stx-jennifer-lopez/
WHAT IS THE RIGHT OF PUBLICITY?
The right of publicity is an intellectual property right that provides an individual with the right to control the commercial use and exploitation of his or her name (legal name, nickname, professional name, or group designation), appearance or image, likeness or photographic likeness, recognizable drawings and imitation look-a-likes. In some cases, depending on the state’s common law, the right of publicity may extend protection to a person’s voice, signature, biographical information, sound-alike voice, persona and identity.
In essence, the right of publicity is the right of each person to control and profit from their own identity. Publicity rights induce individuals to expend the time, effort, and resources needed to develop the talents that give the individual recognition and society the products created through those efforts, such as motion pictures, music, and sporting events. The rational for publicity rights is analogous to the rational for providing intellectual property protection to copyrights and patents. Once a person’s expenditure of time, effort, and resources has created a public recognition that person has earned the right to enjoy the benefits of that public identity.
In California, the right of publicity is not just for celebrities. It applies to everyone in California regardless of their celebrity status provided that person has expend time, effort, and resources needed to develop the talents that give the individual recognition. However, like every civil claim one of the essential elements of a right of publicity claim is damages and a non-celebrity may find it difficult to prove any damages for a breach of their right of publicity.
THE RIGHT OF PUBLICITY IS GOVERNED BY STATE LAW.
The right of publicity is not considered to be an intellectual property right similar to copyright or trademark because there are no federal statutes governing the right of publicity. The right of publicity exists under either common law or by statute and it varies from state to state. Currently there are thirty-five (35) states and the District of Columbia that recognize a right of publicity.
In a lawsuit, the court can generally accept the law of the forum state, the law where the plaintiff resides, or the law in the state where the infringement occurred. There is no consensus about which law the court must accept if the person is living. However, when the person is deceased, the court typically selects the law from the state where the deceased person was domiciled at death. The elements of a right of publicity claim and the scope of the protection of this right varies significantly from state to state both under each state’s statutory or common law.
CALIFORNIA RIGHT OF PUBLICITY.
California Common Law.
In California, the right of publicity for a living person exists under both common law and by statute. (SeeCal. Civ. Code §§ 3344(a)(“Section 3344”); Montana v. San Jose Mercury News, Inc. 34 Cal. App. 4th 790, 793 (6th App. Dist., 1995).) The common law right of publicity derives from the law of privacy, in particular the fourth type of invasion of privacy– appropriation, for the defendant’s advantage, of the plaintiff’ name and likeness. (Aroa Marketing, Inc. v. Hartford Ins. Co. of Midwest (2011) 198 Cal. App. 4th781, 787.)
The elements for a claim for a common law right of publicity claim under California law include:
(1) The defendant used the plaintiff’s identity;
(2) The appropriation of plaintiff’s name and likeness to defendant’s advantage, commercially or otherwise
(3) Lack of consent by the plaintiff; and
(4) Resulting injury. (Eastwood v. Superior Court (1983) 149 Cal. App. 3d 408, 417.)
In California, the common law right of publicity is very broad in scope including claims related to a person’s name, likeness, persona, voice, signature, biographical information, sound-alike voice and identity.
California Statutory Law – California Civil Code § 3344 (“Section 3344”).
The elements for a cause of action for a statutory right of publicity claim under Section 3344(a) include the same four elements stated above and:
(5) The defendant’s “knowing” use of the plaintiff’s publicity rights; and
(6) A direct connection between the alleged use and the commercial purpose. (Downing v. Abercrombie & Fitch, 265 F.3d 994, 1001 (9th Cir. 2001).)
One of the big distinctions between California common law and Section 3344 is that there has to be a commercial purpose, namely, to sell products or services, to be liable under Section 3344.
Section 3344(a) also includes an attorneys’ fees provision. Thus, it is very important for a plaintiff to determine, prior to commencing litigation, that he or she can prove both the “knowing” use of the plaintiff’s publicity rights and the commercial use of the plaintiff’s publicity rights in addition to the other essential elements of a common law right of publicity claim. If the plaintiff is uncertain whether he or she can establish each and every essential element of a statutory right of publicity claim then the plaintiff should only plead and pursue a common law claim thereby avoiding the risk of paying the defendant’s attorneys’ fees.
A Section 3344(a) claim is also more limited in the unauthorized uses of a person’s right of publicity that are actionable than a common law claim which covers a broad array of uses. Section 3344(a) only provides a claim for the infringement of a person’s “name, voice, signature, photograph, or likeness.” (Cal. Civ. Code 3344(a).)
California’s Publicity Right For Deceased Individuals.
California common law and Section 3344 claims only apply to living persons. Section 3344.1 of the California Civil Code (“Section 3344.1”) provides for the transfer of a deceased person’s claims for a breach of their right of publicity to their estates. However, there are several unique requirements for bringing a claim for breach of the right of publicity on behalf of a deceased individual including:
The deceased individual’s primary state of residence must have been California at the time of their death;
Section 3344.1(f) requires the owner of the deceased celebrity’s publicity rights to register the name of the deceased celebrity with the California Secretary of State pursuant to the instructions in Section 3344.1(f);
Section 3344.1(n) requires that the acts that give rise to the liability must occur and the damages must be incurred in California; and
Section 3344.1(a)(2) does not permit liability for the use of a deceased person’s rights in a “play, book, magazine, newspaper, musical composition, audiovisual work, radio, or television program, single, and original work of art, work of political or newsworthy value, or an advertisement or commercial announcement for any of those works, or dramatic literary or musical work subject to Section 3344.1(a)(3) [use of product, article of merchandise, good or service is not exempt under Section 3344.1(a)(2)]
The restrictions that apply to a Section 3344.1 claim do not apply to trademark infringement, particularly if a deceased celebrity has successfully obtained a federal trademark for the name of the celebrity.
WHO OWNS THE RIGHT OF PUBLICITY?
In California, an individual can assign his or her publicity rights to a third party, similar to a property right. For example, California allows deceased individuals to transfer their publicity rights “in whole, or in part, by contract or other means of any trust or other testamentary instrument.” (Section 3344.1(b).) The publicity rights may also be assigned to a licensing agent such as a loan out corporation. ( See ETW Corp. v. Jireh Publishing, Inc. 322 F.3d 915, 918 (6th Cir. 2003).) It basically can be assigned to anyone provided the owner of the right assigned it to someone or something during his or her lifetime. (Timed Out, LLC v. Youabian, Inc., 229 Cal. App. 4th 1001, 1008 (2nd App. Dist. 2014).)
Because of the generality of this blog post, the information provided herein may not apply in all situations and should not be acted upon without specific legal advice based on the unique facts of each potential right of publicity claim. Please contact the authors of this blog post, Brian R. Tinkham (btinkham@rjallanlaw.com) and Robert J. Allan (allan@rjallanlaw.com) for more information.