Licensing the Right of Publicity: A Primer
By: Jonathan L. Faber
Licensing refers to a transaction involving intellectual property. While trademarks, copyright, and patents are familiar, the Right of Publicity also is the centerpiece of many licensing transactions. The state-based Right of Publicity ensures control over most commercial uses of one’s persona. Like copyright, the right generally survives after death for a considerable time. Stephen Curry’s Brita advertisements and Vince Lombardi in Teleflora’s Mother’s Day campaign (Adweek’s “Ad of the Day,” April 25, 2016) are manifestations of a licensed use of a valuable Right of Publicity. Everyone in the licensing industry can benefit from a baseline Right of Publicity awareness.
About half of the U.S. recognizes the Right of Publicity by statute, and most states recognize it via common law (with or without a statute). Hawaii and Alabama are the latest to enact a statute, and a recent amendment I handled provides Indiana’s current Right of Publicity law. Last year, after the untimely passing of Prince, Minnesota’s legislature proposed the PRINCE Act (Personal Rights In Names Can Endure). The legislation was tabled, but even without a statute, do not conclude that there is no Right of Publicity pertaining to Prince. The Right of Publicity generally exists via common law, and the popular trend to look only at a decedent’s domicile state to determine Right of Publicity enforceability is flawed because the so-called domicile rule contradicts choice of law analysis pertaining to copyright and trademarks. It is advisable to consider all of the jurisdictions a product or advertisement may reach.
The value of an icon’s Right of Publicity is substantial—see Forbes’ annual Top-Earning Dead Celebrities list. While Robin Williams’ will imposed a 25-year moratorium on commercialization of his publicity rights, Prince had no will and the value of his estate is being assessed; hopefully, there will be more clarity than in Michael Jackson’s estate. A February 1, 2017 Bloomberg article reports that the IRS says Jackson’s Right of Publicity is worth $434 million, but the estate says “it was worth a mere $2,105.”
Using deceased celebrities can drive sales, differentiate product in the marketplace, and create award-winning advertising. And while it is almost impossible to add to a deceased icon’s resume, a CNBC campaign (Winning) licensed by Luminary Group on behalf of Vince Lombardi’s family even led to a posthumous Emmy nomination for Coach Lombardi. The licensing industry is full of surprises.
Infringing intellectual property does not have to be one of those surprises. To those assuming a deceased person is free for use on products and in advertising: the value of a lawsuit might exceed the licensing fee. Conduct research before using a personality in a commercial manner (including social media). Resources like California’s Successor in Interest database, RightOfPublicity.com, and the US Trademark Office’s trademark database are a few keystrokes away, or use an expert to analyze the Right of Publicity implications of a proposed use. This is common practice for licensing copyrights and trademarks; the Right of Publicity should be treated with similar diligence.
About the Writer – John L. Faber
Jonathan Faber is the CEO of Luminary Group, LLC, a licensing agency that specializes in representing brands and personalities like Babe Ruth, Vince Lombardi and Jesse Owens. Faber teaches the Right of Publicity at IU McKinney School of Law, and also is of counsel with McNeely Stephenson. Throughout his career, Faber has represented hundreds of rights owners, from Marilyn Monroe, Princess Diana and Chuck Berry, to I♥NY and the Hollywood sign. He publishes and speaks frequently and has served as an expert witness in cases involving Zooey Deschanel and Kohl’s, Motley Crue’s Nikki Sixx and Vans, Uma Thurman and Lancome, the 1985 Bears, Coach John Wooden and many others.