Rights of Publicity: A Practitioner's Enigma

Journal of Intellectual Property Law Volume 17 | Issue 2 Article 5 March 2010 Rights of Publicity: A Practitioner's Enigma Gil N. Peles Esq. Proskauer Rose LLP Follow this and additional works at: https://digitalcommons.law.uga.edu/jipl Part of the Advertising and Promotion Management Commons, Arts Management Commons, Environmental Law Commons, Fashion Business Commons, First Amendment Commons, Internet Law Commons, Marketing Law Commons, Privacy Law Commons, Sales and Merchandising Commons, Sports Management Commons, and the Tourism and Travel Commons Recommended Citation Gil N. Peles Esq., Rights of Publicity: A Practitioner's Enigma, 17 J. Intell. Prop. L. 351 (2010). Available at: https://digitalcommons.law.uga.edu/jipl/vol17/iss2/5 This Practice Point is brought to you for free and open access by Digital Commons @ Georgia Law. It has been accepted for inclusion in Journal of Intellectual Property Law by an authorized editor of Digital Commons @ Georgia Law. Please share how you have benefited from this access For more information, please contact . Peles: Rights of Publicity: A Practitioner's Enigma PRACTICE POINTS RIGHT OF PUBLICITY: A PRACTITIONER'S ENIGMA G/N. Peles, Esq.* TABLE OF CONTENTS I. INTRODUCTION ........................................... II. BACKGROUND ............................................ III. W HERE CAN EMMA SUE? ................................... IV. WHERE CAN EMMA GET THE MOST MONEY? V. CAN AcME ASSERT A FIRST AMENDMENT DEFENSE? VI. CONCLUSION .................. ............ ............................................. * Gil Peles is an attorney in Los Angeles, California and an associate at the law firm of Proskauer Rose LLP. Gil has represented various celebrities related to the misappropriation of their rights of publicity and has also published numerous right of publicity articles. 351 Published by Digital Commons @ Georgia Law, 2010 1 Journal of Intellectual Property Law, Vol. 17, Iss. 2 [2010], Art. 5 J. INTELL PROP. L[ [Vol. 17:351 I. INTRODUCTION Monday morning. You walk into the office and encounter three voice messages from a single client. The client, based in Los Angeles, took a trip to Australia where he filmed his five-year-old daughter, Emma, hopping around with a baby kangaroo. Your client posted the hopping-heavy video clip on YouTube, it went viral overnight, and Emma became an instant celebrity. One month later, Acme Toys (Acme), a Georgia-based toy company, sells thousands of wind-up hopping "Kangaroo Kid" dolls nationwide that bear a remarkable resemblance to Emma. Your client calls you, fuming about this unpermitted exploitation. What do you do? The short answer: File a lawsuit against the toy company for the misappropriation of Emma's likeness, or her right of publicity. However, where you should file the lawsuit constitutes the difficult part of the question. This Article will explore challenges facing practitioners in filing a right of publicity action. Issues relating to forum, damages, and defenses will be addressed. As Emma's dilemma will illustrate, the current condition of right of publicity jurisprudence necessitates a practitioner to carefully navigate through a nationwide patchwork of conflicting state laws. II. BACKGROUND The right of publicity is a state-law based intellectual property right of a person to control the commercial use of his or her identity.' It is not limited to celebrities, but is a right for every person to recover for the unpermitted taking of his or her persona.2 The right of publicity is currently recognized, to greatly varying degrees, in nearly every state.3 Due to the varying degrees in which each state recognizes the right of publicity, it remains largely misunderstood and inconsistently applied across jurisdictions.4 Depending on the state, remedies in a right of publicity case may include an injunction, restitution, pecuniary damages, non-pecuniary damages, punitive damages, and attorney's costs and fees and may or may not include protection of a post-mortem right.' These wide variations make it necessary for 1 1J. THOMAS MCCARTHY, THE RIGHTS OF PUBLICITY AND PRIVACY § 1:3 (2d ed. 2009). 2 id 3 SeeRightofPublicityStatutes, http://rightofpublidty.com/statutes (lastvisitedMar.20,2010) (chronicling nineteen states with statutory recognition of the right ofpublicity and twenty-eight more states with common-law recognition). ' See Alicia M. Hunt, Comment, Everyone Wants to Be a Star Extensive Pubhd't' Rights for Noncekbrifies Undu4 Restrict CommercialSpeech, 95 NW. U. L. REV. 1605, 1607-08 (2001) (explaining the varied and inconsistent applications of the right of publicity in different states). 5 Id https://digitalcommons.law.uga.edu/jipl/vol17/iss2/5 2 Peles: Rights of Publicity: A Practitioner's Enigma 2010] RIGHT OF PUBLICITY: A PRACIIONER'S ENIGMA 353 litigants, such as Emma, to carefully evaluate a variety of laws and jurisdictions prior to filing a right of publicity action. III. WHERE CAN EMMA SUE? A right ofpublicity dispute usually involves a number of jurisdictions including the location of the plaintiff, the location of the defendant, and the location(s) of the misappropriation. In our scenario, Emma, a California resident, will bring suit against a Georgia corporation that is selling its "Kangaroo Kid" product nationwide. Based on Acme's nationwide sales, Emma can theoretically choose among many jurisdictions. 6 For purposes of this Article, we will focus on the two most relevant jurisdictions, California and Georgia. California and Georgia offer different types of right of publicity laws. California has a long recognized common-law right of publicity as well as extensive statutes that also allow for a post-mortem right.7 California Civil Code section 3344 authorizes recovery of damages by any person whose "name, voice, signature, photograph, or likeness" has been knowingly used without the person's consent for commercial purposes.' For example, California's right of publicity statute has been successfully invoked against a company that produced statue likenesses of George Wendt and placed them in airport restaurants, 9 an Oldsmobile television commercial that compared its automobiles to Kareem 6 States apply varying rules to determine choice of law. Under the "Vested Rights Theory," utilized in roughly a third of states, tort cases are governed by the place of injury. 1 MCCARTHY, supra note 1, § 11:8. Under this theory, Emma could theoretically bring an action in any state in which Acme's product was sold. Other states, such as California, apply a three-step "governmental interest" analysis that attempts to "apply the law of the state whose interest would be more impaired if its law were not applied." Downing v. Abercrombie & Fitch, 265 F.3d 994, 1005 (9th Cit. 2001) (citations and quotation marks omitted) (allowing non-California residents to bring a California right of publicity action). 7 See Comedy III Prods., Inc. v. G (...truncated)