When basketball star Michael Jordan sued Jewel Food Stores for allegedly misappropriating his identity, he turned to the Lanham Act as well as Illinois’s right of publicity for an assist to assert the rights to his image.
Section 43(a), under the Lanham Act, forbids the false or misleading representation of a word, term, name, symbol or device in commerce of goods or services.
In turn, the grocer claimed Fair Use, a blanket immunity under the First Amendment, and won, but the decision was reversed by the Seventh Circuit U.S. Court of Appeals.
The doctrine of Fair Use promotes freedom of expression by permitting unlicensed use of copyright-protected works under certain circumstances while right of publicity in some states allow celebrities or their heirs to monetize in exchange for a tax on proceeds of right of publicity.
“Based on its content and context, the ad is properly classified as a form of image advertising aimed at promoting the Jewel-Osco brand,” wrote Circuit Judge Diane S. Sykes in a February 2014 opinion. “The ad is commercial speech and thus is subject to the laws Jordan invokes here. The substance of Jordan’s case remains untested, however; the district court’s First Amendment ruling halted further consideration of the merits. We remand for further proceedings.”
State protection for post mortem publicity rights isn’t automatic, as shown in Minnesota after Prince died in April 2016. Minnesota State Representative Joe Hoppe worked to rectify the situation, but the effort to pass the Personal Rights in Names Can Endure (PRINCE) Act stalled in May 2016 after Hoppe reportedly withdrew the PRINCE Act for further review.
But all is not lost for Prince’s heirs, who can potentially fall back on the Lanham Act for a federal cause of action called false endorsement.
“The issue of whether the Lanham Act false endorsement cause of action allows for the protection of post-mortem rights has not been the subject of many judicial opinions but at least some courts have allowed post-mortem claims by the successors in interest to, for example, Marilyn Monroe and Bruce Lee,” said Ted Davis, an attorney and partner with Kilpatrick Townsend law firm in Atlanta.
States that recognize a right of publicity cause of action include Alabama, Hawaii, Illinois, California and Pennsylvania, however, some states have limits. Georgia recognizes common-law right of publicity causes of action rather than statutory ones.
“Children can assert a right of publicity claim under Georgia law, but it hasn’t yet been decided whether that applies to somebody’s grandchildren or great-grandchildren or whether a deceased star’s parents can assert a post mortem cause of action for right of publicity under state law,” Davis told PacerMonitor.
California is one state whose right of publicity statute is quite extensive, given the significant number of entertainers who live there. First enacted in 1971, the statute was expanded in 2012. However, in the state of New York right of publicity legislation does not allow post-mortem claims yet. A 8155-A (Morelle) / S 5857-A (Savino) will be considered in January 2018 by the legislature.
“A tax on proceeds of right of publicity is imposed in states like California but only after assessing a value of the celebrity’s right of publicity,” said Ferdinand.
Factors that impact the value of a celebrity’s right of publicity include the royalty rate comparable celebrities have negotiated in the past.
“Much also depends on why the celebrity enjoys post-mortem notoriety,” said Davis. “The estate of Fred Astaire will likely be able to license his holographic image for various goods aimed at a different audience than the Michael Jackson estate.”
The King of Pop’s death has lead to an ongoing court battle with the IRS over the value of his right of publicity.
In Estate of Michael J. Jackson et al. v. Commissioner of Internal Revenue, Avram Salkin, who is representing the singer’s family, reportedly stated that right of publicity was worth only $3 million when Mr. Jackson died in 2009 and not the $161 million asserted by the IRS.
“The primary issue at stake in the litigation with the IRS is the extent to which a potential revenue stream from post-mortem use of Jackson’s persona properly should be included in the value of the estate,” Davis said.
According to media reports, Mr. Salkin noted that Jackson’s image was tainted by allegations of child molestation and the civil and criminal suits that followed.
“Michael Jackson’s estate is the Super Bowl of right-of-publicity lawsuits,” Ferdinand said. “If they had their druthers, Jackson’s estate would assess right of publicity at only $2,000 but they have the IRS to contend with over what that value actually is.”
After all the fanfare of publicity dies down after death, it’s the heirs of celebrities who have had the foresight to trademark that do well financially.
Sadly, many celebrities and their successors in interest never do this.