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California post-mortem right of publicity, Lanham Act and the first amendment

Jun 25th, 2017 | By | Category: Right of Publicity

California Right of Publicity Essentials – “Post Mortem” rights to name, image and likeness under ROP and Federal Lahnam Act.

Cal Civ Code 3344.1 attorney

Introduction

Does California have a post-mortem right of publicity?  The short answer is YES!!!  This blog will talk about it and how it works.  There’s an old saying in the law which says “you cannot defame the dead.”  However, in California, you can infringe on a deceased persons right of publicity.  This blog talks about using a persons name, image or likeness for commercial purposes after they have died.  What rights exist?  Do you have a case?  Will a first amendment defense prevent you from succeeding?

Right of publicity survives death

Fundamentally, the right of publicity “is the inherent right of every human being to control the commercial use of his or her identity.” See McCarthy, supra, § 28:3. California law recognizes both a statutory and common law right of publicity. The statutory right of publicity is codified in Cal. Civil Code § 3344, which provides in relevant part:

“Any person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner, for purposes of advertising or selling, without such person’s prior consent shall be liable for any damages sustained by the person or persons injured as a result thereof.”

California’s common-law right of publicity protects an individual’s name and likeness from appropriation for either commercial or non-commercial purposes. See Wendt v. Host Int’l, Inc., 125 F.3d 806, 811 (9th Cir.1997).

The right to publicity extends 70 years beyond an individual’s death. See McCarthy, supra, § 28:27; Cal. Civ.Code § 3344.1.  See Miller v. Glenn Miller Prods., Inc., 454 F.3d 975, 988–89 (9th Cir. 2006).

Keep in mind, the person who died must have been domiciled in California at the time of their death for California rights of publicity to exist.

Civil Code Section 3344.1 discusses post mortem rights

The California civil code section 3344.1 discusses post-mortem rights to identity:

(a)(1) Any person who uses a deceased personality’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods, or services, without prior consent from the person or persons specified in subdivision (c), shall be liable for any damages sustained by the person or persons injured as a result thereof.

In addition, in any action brought under this section, the person who violated the section shall be liable to the injured party or parties in an amount equal to the greater of seven hundred fifty dollars ($750) or the actual damages suffered by the injured party or parties, as a result of the unauthorized use, and any profits from the unauthorized use that are attributable to the use and are not taken into account in computing the actual damages.

In establishing these profits, the injured party or parties shall be required to present proof only of the gross revenue attributable to the use, and the person who violated the section is required to prove his or her deductible expenses.

Punitive damages may also be awarded to the injured party or parties.

The prevailing party or parties in any action under this section shall also be entitled to attorney’s fees and costs.

(2) For purposes of this subdivision, 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 these works, shall not be considered a product, article of merchandise, good, or service if it is fictional or nonfictional entertainment, or a dramatic, literary, or musical work.

Watch Attorney Steve explain California misappropriation law in this video

publicity attorney cali

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Who does the right of publicity transfer to?

Ownership of Postmortem Rights. Postmortem statutory rights to grant consents and licenses are either owned by:
1.  A person to whom the right was transferred during life by the identified person;
or
2.  A person to whom the right passed upon death by the terms of a trust;
or
3.  A person to whom the rights passed upon death by the terms of a will or other form of “testamentary documents”;
or
4.  If all of the rights have not passed by any of the above routes, then they pass upon death to a class of survivors as defined in the statute, § 990(d); and
5.  If the rights have not been passed by any of the above routes, and there are no surviving persons as defined in the statute, then § 990(e) specifies that the postmortem statutory rights “shall terminate.”
In the event any statutory rights are not completely transferred during life or by trust or will at death, § 3344.1(d) defines those persons to whom all or some of the rights pass at death. Once those rights pass to such a group of persons, a majority of those persons then have the right to grant a transfer or licenses to users. Income from the transfer or license then passes to all of the members of the defined group

See Postmortem rights, 5 McCarthy on Trademarks and Unfair Competition (4th ed.).

Registration with the California Secretary of State

According to McCarthy on Trademarks:

“The 1985 statute creates a state registration scheme under which any person claiming to be a “successor-in-interest” to or a “licensee” of postmortem rights may register a claim with the California Secretary of State.”  Here is a link to the California Secretary of State form which can be filed by a successor in interest to the publicity rights.  “The claim includes the name and date of death of the deceased personality, the name and address of the claimant, and a description of the basis and scope of the rights claimed.”
The obvious purpose of this registration scheme is to put on notice those who wish to obtain licenses to commercially utilize the persona and identity of a deceased person. The registration system does not envisage any state examination of the filed “claims” as to substantive merit or validity.   However, all claims must be “verified” and those who file knowingly false and spurious claims should be liable for some form of penalty for making a false oath or verification.”
If you are looking for a law firm to help you with licensing rights call us at the number below.  We can help rights holders commercialize and license identity rights.

Exceptions and defenses to Right of Publicity law

1.  Consent

2.  First amendment (uses having political or newsworthy value)

3.  Copyright pre-emption

4.  The use of name, image, likeness or voice, was used for a book, play, newspaper, musical composition, audiovisual work, radio or television show (as you can see news and entertainment uses may be subject to greater protections to use the identity of another).  

5.  Uses for original works of art

6.  License

What is an “audio-visual work”?

According to the U.S. Copyright Office:

“An audiovisual work is a work that consists of a series of related images that are intended to be shown by the use of a machine or device, together with accompanying sounds, if any.”

More about the first amendment defense (which is something every Plaintiff has to look out for before filing a lawsuit as the filing of the lawsuit could trigger an “anti-SLAPP motion”)

BAJI 7.24.1 and 7.24.2 are model jury instructions that address the First Amendment defense to a right-of-publicity claim. First, the text and mere existence of these jury instructions indicate how fact-intensive this defense is. Second, BAJI 7.24.1 makes clear that the defendant bears the burden of proof on this defense.  See Kierin KIRBY (p/k/a “”Lady Miss Kier”), an individual, Plaintiff, v. SEGA OF AMERICA, INC., a California corporation formerly known as Sega of America Dreamcast, Inc.; PD*3 Tully Co., an English company; and Does 1-20, inclusive, Defendants, (Cal.Superior Los Angeles).

BAJI 7.24.1 Right of Publicity—First Amendment Defense

Before filing a post mortem right of publicity claim, the first amendment free speech defense should be considered and analyzed.  You don’t want to file a case if it is likely you would lost on summary judgment motion or ultimately lose at trial.  Here is some general information on the first amendment defense and likely jury instructions that could be at issue.

From BAJI 7.24.1:

Plaintiff seeks to recover damages for violating a right of publicity. Defendant has asserted as a defense that the use of the [work] [material] in question is protected by the First Amendment to the United States Constitution. The First Amendment guarantees, among other rights, freedom of speech and expression. However, this right is not absolute. In the context of a right of publicity claim, the First Amendment protects [work] [material] that either contains significant transformative elements, or its value does not derive primarily from the celebrity’s fame. The defendant has the burden of proving all the facts necessary to establish this defense.

Analysis:  This means that if the work at issue:
(a) consists of a transformative use (see definition below)
or
(b) the use of the deceased persons name, image or likeness does NOT derive it value primarily from the Defendant’s fame
then the first amendment might protect the use.

Transformative defined

[A work] [Material] is “transformative” when it does not merely supersede the object or objects of the original creation, but instead adds something new, with a further purpose or different purpose or character, altering the first with new expression, meaning or message.
Another way of stating the inquiry as to whether the defendant’s [work] [material] is significantly transformative is whether the celebrity [likeness] is one of the raw materials from which an original work is synthesized, or whether the depiction or imitation [or ] is the very sum and substance of the [work] [material] in question.
In other words, is the containing a celebrity’s [likeness] so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s [likeness]? As used here, “expression” means something other than the [likeness] of the celebrity.
In determining whether the use is transformative, you are not to be concerned with the quality of the defendant’s contribution.  The inquiry is in a sense more quantitative than qualitative, asking whether the literal and imitative or the creative elements predominate

BAJI 7.24.2 First Amendment Defense—A Helpful Test
In determining whether a work is sufficiently transformative to qualify for protection under the First Amendment, you may find useful a subsidiary test; does the marketability and economic value of the challenged work derive primarily from the fame of the celebrity depicted? If this question is answered in the negative, then generally the work would be protected by this defense. When the value of the work comes principally from some source other than the fame of the celebrity—from the creativity, skill and reputation of the artist—it may be inferred that sufficient transformative elements are present to warrant First Amendment protection. If the question is answered in the affirmative, however, it does not necessarily follow that the work is without First Amendment protection—it may still be a transformative work.
The Supreme Court has stated that this question may be useful, particularly in close cases. Consequently, the committee has separated out this subsidiary question. Consistent with the court’s suggestion, it should probably only be given in close cases.  See Comedy III Productions, Inc. v. Gary Saderup, Inc. (2001) 25 Cal.4th 387, 407 106 Cal.Rptr.2d 126, 142, 21 P.3d 797.  Cal. Jury Instr.–Civ. 7.24.2.

Who decides whether the first amendment defense applies?

This concept has been presented as a jury issue. If the underlying facts are not in dispute, the court may be able to make this determination as a matter of law.  In Winter v. DC Comics (2003) 30 Cal.4th 881, 134 Cal.Rptr.2d 634, 69 P.3d 473, the court concluded that it could as a matter of law determine that the particular alleged misappropriation was constitutionally protected. The subject comic books did not depict plaintiff musicians literally and did not greatly threaten plaintiff’s right of publicity. Defendants sold, and buyers purchased, comic books depicting fanciful creative characters, not pictures of plaintiffs.  See Cal. Jury Instr.–Civ. 7.24.1, Cal. Jury Instr.–Civ. 7.24.1

4 Key things we look for in postmortem ROP cases

The best cases for asserting either common law or statutory right of publicity claims in California and involve commercial use of a famous persons name, image, likeness, photo or other identifiable characteristic.

1.  We would prefer claims that DO NOT involve a media defendant (although not specifically required);

2.  Claims where the Decedent was domiciled in California at their death;

3.  Ideally there would be commercial sales using the name, image or likeness of the decedent (ex. promotional products, advertising, endorsement purposes);

4.  Lack of strong defenses (including public affairs, sports broadcasting or political news);

5.  Monetary damages (loss of money, endorsement fees, royalties, lost licensing fees, profits of the defendant, etc.)

NOTE:  Cases may also be filed under the Federal Lanham Act for false endorsement (often known as the federal equivalent to a state right of publicity statute).  The Lanham act has been held to apply to postmortem claims.  See Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1072 (9th Cir. 2015), cert. denied, 84 U.S.L.W. 3112 (U.S. Nov. 2, 2015) (No. 15-264).

According to the American Bar Association article (see link below in “resources” section):

“Claims brought under the Lanham Act differ from those brought under state laws in that the Lanham Act requires an additional element—that the use of the personal identification “be likely to confuse as to the sponsorship or approval of a defendant’s goods.” The Lanham Act provides two prongs under which a false endorsement claim can be brought:

(1) trademark infringement,

and

(2) false advertising.

False endorsement claims, i.e., claims involving a false message that a person sponsors or approves certain products or services, can fall under either prong, although courts tend to characterize false endorsement cases as trademark infringement one.

Courts have held that “a celebrity persona or identity is a kind of ‘trademark’ which is infringed by an advertisement involving false endorsement. Plaintiffs bringing a false endorsement claim under the trademark infringement prong must demonstrate a likelihood of consumer confusion, just as any plaintiff would in bringing a trademark infringement claim.”

Resources

  1. Great article by American Bar Association with post mortem chart

Contact a Cal Right of Publicity Law Firm

We are experienced in handling high profile right of publicity cases in California.  We can help with registration of publicity claims, licensing rights, arbitration and mediation for both Plaintiff’s and Defendants dealing with Cal Right of Publicity law.   We MAY be able to take the case on a full or partial contingency fee depending upon the facts of the case.  Call us at (877) 276-5084 for a free initial consultation.

 

 

 

 

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