WORLD FAMOUS (By, Say, New Jersey Standards): Expanding The Right Of Publicity Nationally And Internationally

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Springsteen.

Sinatra.

Chuck Wepner (for at least one night in 1975 and then through the “Rocky” avatar).

At least some of the people that rest stops on the New Jersey Turnpike are named after.

These public figures are, or were, world-famous, and certainly had made a name for themselves outside of the Garden State, even if their growth as artists, authors, sports figures or icons was at some point nurtured in the fertile ground of the third state to enter the union.  But, if either Springsteen or Sinatra, for example, wished to protect their image on the world stage or before a national audience, neither could invoke, directly or effectively, federal or international law. 

That is because the right of publicity is not something protected by federal trademark or copyright law, or by compact or treaty.  As Professor McCarthy has been noted (by Ahmad and Swain) to have stated, “’The right of publicity is not a kind of trademark. It is not just a species of copyright. And it is not just another kind of privacy right. It is none of these things, although it bears some family resemblance to all three.’” The right of publicity is one of those strange legal rights that depends on the law of one state or one country even if the facts used to vindicate one’s rights to publicity (or, as it is known in some places outside the United States, celebrity) are national or international in scope.  The “right of publicity is a creature of state law, and its violation gives rise to a cause of action for the commercial tort of unfair competition.” ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 928 (6th Cir. 2003).  In an age where fame is often created, claimed and credited on a world wide web, one must ask whether it makes sense to define the legal rights associated with celebrity by such local standards.

One of the early US cases recognizing by name “the right of publicity” was in fact a New Jersey federal court case, Estate of Presley v. Russen, 513 F. Supp. 1339  (DNJ 1981).  That case defined the right thus:

…The right of publicity is a concept which has evolved from the common law of privacy and its tort “of the appropriation, for the defendant’s benefit or advantages, of the plaintiff’s name or likeness.” The term “right of publicity” has since come to signify the right of an individual, especially a public figure or a celebrity, to control the commercial value and exploitation of his name and picture or likeness and to prevent others from unfairly appropriating this value for their commercial benefit…

Although the courts in New Jersey have not [before 1981] used the term “right of publicity,” they have recognized and supported an individual’s right to prevent the unauthorized, commercial appropriation of his name or likeness.”

In fact, in so holding, the Russen court relied on a 1907 case involving Thomas Edison, Edison v. Edison Polyform Mfg. Co., 73 N.J.Eq. 136, 67 A. 392 (1907).  As Professor McCarthy has noted, the law thus recognizes “the inherent right of every human being to control the commercial use of his or her identity.”  So one might think that the right, well entrenched in New Jersey, is equally clear elsewhere, or everywhere, in the United States.

Think again.  Though recognized in many states, the extent to which each recognizes the right of publicity is not entirely clear.  For instance, in Arizona, a federal court has said it sees no reason why such a right would not be recognized, yet no state court has done so, and the state has a statute that protects the right of publicity of soldiers, without mention of civilians.  Likewise, in Illinois and in Massachusetts, the common law right has been eliminated, and the right is now protected by a statute with a list of exceptions.  States like North Carolina have rejected a right of publicity statute, and does not seem to recognize it at common law, according to the International Trademark Association’s 2019 survey.  Fourteen other states do not, according to the same 2019 survey, recognize the right of publicity: Alaska, Colorado, Delaware, Idaho, Iowa, Kansas, Maine, Maryland, Mississippi, Montana, North Dakota, Oregon, Vermont and Wyoming.  And these starker disparities do not begin to capture the nuance of how standards vary from jurisdiction to jurisdiction among the states that do recognize such claims.  As one commentator has noted, “While courts in some states, such as New York, have narrowly interpreted right of publicity claims, other states have defined the rights more broadly. Decisions vary on which state’s law will apply to a publicity claim, which in turn is decided based on the particular state’s conflict of law analysis. Any analysis of a particular claim or publication should consider the specific state law that will be applied.”  So it seems, at least as to a claim enforcing the right to publicity, the New York notion that “If I can make it there/I’ll make it anywhere” does not necessarily apply because there are some places that you cannot claim at all.

The variations are only more pronounced in the international arena.  For instance, though the right exists in Israel,  it has been noted that Israeli law in this area is unclear, both as to nature of any such right or its theoretical foundations.  Likewise, despite constitutional rights to privacy and personhood, “[i]n India, there are neither adequate case laws, nor statute governing celebrity rights per se. Thus, the legal system in India, at present, is quite deficient in dealing with the modern phenomena of endorsement advertising,” according to previously noted commentators. And, though an Indian right to publicity may exist for Indian citizens, “some jurisdictions like India, deny the right of publicity to non-citizens.” The same commentators noted that United Kingdom, spurred during the pre-Brexit period to comply with the European Convention on Human Rights and rulings of the court in Strasbourg, had seemed poised to gravitate toward greater recognition of publicity rights, but it is unclear where that will now go. But UK law must be confused because another commentator has starkly stated that “[t]he United Kingdom does not recognize the right of publicity,” and the International Trademark Association has also said that the right of publicity is not recognized in England and Wales “but there are a number of other legal rights  which could be used to achieve a similar effect.”  (Though not mentioned in the Survey, it appears that Italy too protects publicity by overlapping other rights, as noted in World Trademark Review. But what is clear is that certainly “There is no unanimous approach to the right of publicity in the countries of the EU,” as Kateryna Moskalenko notes)  It has also been noted that Canada’s approach to the right of publicity is “the closest system to the United States because the Canadian provinces differ in protection offered and scope” of that right just like the separate states in the US.  Further, the International Trademark Association’s 2019 survey notes that though “[t]he right of publicity is not recognized in Australia,” the right does exist, in one form or another, in Brazil, China, France, Germany, Guernsey, Hong Kong, Japan, Mexico, Russia, South Africa, Spain, and the UAE.  The survey, though helpful, only covers sixteen countries plus the fifty United States, leaving the status of the law on what it means to be world famous a little under-reported as to the other 179 countries in the world, where it may or may not exist, or may be under consideration as it had been in the Ukraine.

Given the amount of publicity these rights sometimes get, we thought perhaps international agreements may have dealt with the right to celebrity.  Noting that we had in the past provided some food for thought on the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), we looked first to that document to note that it does not address that right in any material way (TRIPS does not refer to publicity, celebrity or fame), though Amad and Swain try to imply otherwise.  As outlined in the same article, other treaties, like the Rome Convention and the WIPO Performance and Phonograms Treaty, offer various protection of performers’ rights, but do not protect the right of publicity itself.  This in fact excludes the right of publicity from important enforcement principles under international law:

Most importantly, the right of publicity is not mentioned in any international treaty by the WTO such as The Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPs”). Thus, nations are not required to offer protection to foreign citizens. The fundamental principle of the WTO is to encourage trade without discrimination, this is known as the national treatment principle. Under this principle, nations must provide the same level of protection offered to their citizens to foreign individuals (citizens from nations signatory of the WTO). Unlike other forms of Intellectual Property, the right of publicity remains excluded from this principle.

***

There is no unifying body of international law on the right of publicity. Unlike the intellectual property right of trademark, copyright and patent law, there is no international treaty or convention to address the right of publicity. Every jurisdiction treats the right of publicity differently. Thus, depending on the geographical location in which an individual resides, there are different levels of protection offered.”

[Eliana Torres, The Celebrity Behind the Brand International Protection of the Right of Publicity, 6 Pace. Intell. Prop. Sports & Ent. L.F. 116 (2016)].

This situation therefore suggests that a uniform right to enforce publicity rights should be recognized in a statute embodied in TRIPS, according to Torres.  But even if international recognition and uniformity is unlikely to be soon achieved, might not a US national standard be within reach?  (Some of asserted that even the fragmented US standard is preferable to not recognizing the right at all, as in the UK).  Certainly in an age where the Uniform Trade Secrets Act (or at least some version of it) has been adopted by 48 states and there is a federal act, the Defend Trade Secrets Act, as well, the notion of nationalizing this standard is not without precedent or purpose.  As my friend Bruce Keller has noted, “considering that the technological advancements that spawn new communicative endeavors also create a strong desire to organize such endeavors within a comprehensive legislative framework,” the lack of US national or international protection of the right of publicity in any uniform way “at first seems odd.”  As Keller also notes, “[o]n reflection, however,” gap filling by common law “is understandable” because “statutes have a way of lagging behind real life.”

In many ways though, it now seems time to get it in gear and make up that lag.  While noting in the past that the US can be “slow to Berne,” as it were, on such international matters, some movement makes sense, whether with a federal act or a proposed uniform act for state-by-state adoption.  Torres provides a good starting point on substance of such an act:

Protection of The Right of Publicity: Persona and Image Rights

  1. In respect of the use of an individuals’ likeness for commercial use without prior consent from the individual or the individual’s successor-in-interest, the individual shall have the possibility to prevent such use of his or her persona or image.

  2. Infringement shall occur when the individual’s image or persona is used for a commercial purpose without authorization and from such use the individual is ‘readily identifiable’ when one who views the image with the naked eye can reasonably determine that it is such natural person depicted in the image.

  3. Rights in Persona and Image shall last for the lifetime of the Registrant plus a period of fifty (50) years after the death of the Registrant.

  4. Rights in Persona and Image vest in the right-holder regardless of whether such rights were commercially exploited during that individual’s lifetime by either that individual or a licensee or assignee and shall be deemed exclusive to the individual, or licensee or assignee of such rights, for the full duration of such rights as protected under this statute.

  5. The individual rights provided for in this statute are considered property rights and are freely assignable and licensable.

  6. After the death of any individual, the rights under this statute shall belong to the successor-in-interest.

  7. [Any jurisdiction adopting these provisions] shall provide limitations and exceptions to exclusive rights to certain special cases that do not conflict with a normal exploitation of the Persona or Image and do not unreasonably prejudice the legitimate interests of the right-holder, such as fair use and newsworthiness.

Ideas worthy of consideration.

But, until then, we have our common law, which may always remain “more adaptable” since, as Keller explains, a “court presented with a novel set of facts can review prior case law, analyze new factual situations, and, reasoning from past precedent, apply existing legal principles to fashion a new rule governing the heretofore unanticipated set of facts facing the court.”  The  sets of facts around celebrity and publicity are, at this point though, no longer unanticipated, and setting a broadly applicable statutory standard makes sense.

As for being famous by New Jersey, or other states’ standards, for the time being, it will have to suffice.  Which is ok, because as the Boss said when inducted into the New Jersey Hall of Fame, we know how to stick up for ourselves, and being from New Jersey, as we pursue our fame:

is not our curse. It is our blessing. or this is what imbues us with our fighting spirit. That we may salute the world forever with the Jersey state bird, and that the fumes from our great northern industrial area to the ocean breezes of Cape May fill us with the raw hunger, the naked ambition and the desire not just to do our best, but to stick it in your face. Theory of relativity anybody? How about some electric light with your day? Or maybe a spin to the moon and back? And that is why our fellow Americans in the other 49 states know, when the announcer says “and now in this corner, from New Jersey….” they better keep their hands up and their heads down, because when that bell rings, we’re coming out swinging.

God Bless the Garden State.”

And when Einstein, Edison, Aldrin, Springsteen himself, or their heirs need a little help with the legal stuff connected to protecting their fame, they will hopefully remember to express some gratitude to those of us urging such protections.  As Bruce said in his Rock N Roll Hall of Fame induction speech, “Now the lawyers — gotta thank them.”

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