Written By: Andrew Sensi
This is the second of three posts examining the right of publicity and the lawsuits initiated by former student-athletes against the NCAA and Electronic Arts. The first post focused on defining the right of publicity and tracking its history. In that post, I argued that the level of protection afforded by the right of publicity can be analogized to a pendulum which swung initially from no protection in the early half of the 20th century, to the peak of its protection in the latter half of the century, and since approximately 1993i, has begun a swift swing back towards a lack of meaningful protection.
One of the primary reasons for this shift is a change in attitudes about the justifications for and criticisms of the right of publicity. In this post, I will discuss the array of justifications and criticisms, and argue that the criticisms have gone too far.
John Locke, Natural Rights, Unjust Enrichment, and Incentives to Create
"It would seem to be a first principle of Anglo-American jurisprudence, an axiom of the most fundamental nature, that every person is entitled to the fruit of his labors."ii This Lockean labor theory is often combined with a natural rights argument that a person's identity is their own property, to control as they see fit. Combined, they form perhaps the strongest and most cited justification for the right of publicity. Proponents of this theory would agree that, "[I]n most instances a person achieves publicity values of substantial pecuniary worth only after he has expended considerable time, effort, skill, and even money."iii
Related to these justifications is the goal of preventing unjust enrichment. The Supreme Court put it best when it stated:
The rationale for protecting the right of publicity is the straightforward one of preventing unjust enrichment by the theft of good will. No social purpose is served by having the defendant get free some aspect of the plaintiff that would have market value and for which he would normally pay.iv
In combination, these theories seek to justify the right of publicity on the grounds that a person's identity can become valuable through that person's labor and allowing others to take this value without providing compensation is unjust.
Similarly, proponents of the right of publicity argue that it provides an incentive for people to work to transform their identities into marketable commodities. Proponents of this incentive argument believe that people "should be given an economic incentive to undertake socially enriching activities which require entering the public scene."v The incentive justification has been recognized and supported by several courts, including the Supreme Court.vi
Critics of the right of publicity have rejected these justifications and argue that (1) a person's fame is not the result of their labor, and even if it were, the value in the celebrity's identity is largely a result of factors beyond their control,vii (2) the right of publicity provides little or no incentive to achieve success,viii and (3) celebrities already make enough money in their respective fields.ix
Celebrities Are Not Responsible For the Commercial Value of Their Personas
There are several ways to rebut the first criticism that a celebrity is not responsible for the commercial value of their personas (besides the fact that multiple courts disagreex). First, the argument that fame or popularity of a persona is conferred by others overlooks the fact that the same is true in other areas of intellectual property. The popularity or fame of a song, movie, trademark or copyrighted character is at least partially conferred by consumers and does not come entirely from the labor of the artist or the trademark owner.xi
Second, the argument fails to recognize that the value of a commodity, in this case fame, is not required to be directly proportional to the amount of labor employed in its creation. In our consumer driven economy, the value of a commodity is set by the demand of the market, not the degree of labor expended in producing the commodity. Furthermore, even if a celebrity is not directly responsible for the value associated with their fame, certainly they are more deserving of capitalizing on that value than a stranger would be.xii
Consider Superman as an example. Is the value of the Superman character wholly a result of the labor expended by the creators of the comic? The film studio which produced the films? Christopher Reeve? Consumers? Most likely, it is an amalgamation of each, a result of both the effort expended by those who developed and portrayed Superman and the consumers who buy the comics and watch the movies. DC Comicsxiii is not prevented from capitalizing on Superman's popularity simply because it is not entirely responsible for his popularity. There is no reason why flesh and blood athletes and celebrities should be treated any differently.
Lastly, another way to characterize the "fruits of labor" argument is that labor can be understood not only as positive actions but also in terms of sacrifices made. In this model, the celebrity creates audience appeal not only through substantive achievements, but also through sacrificing his privacy. In this way a person could be incentivized to sacrifice their privacy in exchange for commercial gain.
The Right of Publicity Does Not Incentivize, and Celebrities Make Too Much Money Anyway
The belief that athletes and celebrities should be denied the protection of the right of publicity because they make too much money has been gaining favor and is perhaps the single biggest threat to right of publicity plaintiffs.xv This belief is also closely tied to the argument that the right of publicity provides no additional incentives to athletes and celebrities. In sum, critics of the right of publicity argue that because athletes and entertainers are already well compensated for their on-field and on-screen performances, the extra income generated by licensing one's identity does not provide a necessary incentive to enter and achieve in the realm of sports and entertainment, and therefore only acts to distribute wealth upwards.xvi
Once again, there are several responses to these criticisms. First, judges have no place making moral or legal judgments as to when a person has made enough money. In our capitalist society the sole judge of income and worth is the free market. It is entirely improper for judges to factor in their own opinions as to how much money a person is entitled to reap from his or her accomplishments.xvii
Second, judges and critics have misconstrued the incentive created by the right of publicity. The incentive is not limited to promoting entrance and achievement in the realm of sports and entertainment. Rather, it is primarily to promote the creation of a marketable persona either through positive actions or through a sacrifice of one's privacy. For example, the right of publicity might incentivize Chad Johnson to legally change his last name to Ochocinco, perform elaborate end-zone dances, and interact with fans on twitter because it allows him to distinguish himself from his peers and in turn create a marketable identity.
Finally, the critics once again have failed to recognize the implications of their arguments on other areas of intellectual property. "People are motivated to work hard and excel for many reasons. Some musicians would probably create music regardless of the copyright laws. The degree to which copyright law incentivizes the artist cannot be proven, and neither can the degree of incentive provided by the right of publicity."xviii Joe Shuster and Jerry Siegel are not required to prove that the Copyright Act incentivized their creation of Superman in order to assert a case of copyright infringement. Likewise, athletes and entertainers should not be held to a higher standard when asserting a right of publicity.
False Advertising, Consumer Protection, and Economic Efficiency
While the justifications examined above are clearly the most significant, there are also some secondary justifications that bear mentioning. Prevention of consumer deception and false advertising has been used to support the right of publicity.xix However, any support that is provided by these justifications is not necessary for the right to exist.xx While trademark and unfair competition law share some similarities with the right of publicity, the harms to be prevented and the elements of infringement are distinct.
Some have gone so far as to turn this justification on its head and argue that trademark law provides sufficient protection such that the right of publicity is superfluous.xxi First and foremost, the right of publicity protects interests beyond consumer deception and therefore should not be cast aside in favor of trademark law. The two rights are only analogous and can exist side by side as parallel legal rights which are not inconsistent. Additionally, case law reveals the inability of trademark law to protect the identities of celebrities.xxii Particularly where the First Amendment is concerned, the Rogers test has created significant difficulties for plaintiffs.xxiii
Because, the prevention of consumer confusion is only a secondary justification and because the right of publicity serves a role beyond the prevention of consumer confusion, it should not be re-codified under federal trademark law.xxiv
Economic efficiency is another secondary justification marshaled in support of the right of publicity.xxv Essentially, granting a property right in a person's identity will result in the best and most efficient use of that identity. Similarly, without the property right, third parties will overuse the identity and diminish its value. This is an application of the tragedy of commons argument often exemplified by cattle overgrazing a pasture. Critics of this justification do not believe that the tragedy of commons will result because celebrity identities are neither rivalrous nor exhaustible.xxvi
However, this criticism misconstrues the problem. Although there are many different celebrity images in the marketplace to choose from, the pasture in this case does not include every celebrity. Rather the pasture is one single celebrity's identity. If every advertiser (cow) is allowed to freely exploit (graze) the celebrity's identity, then it soon would be overused.xxvii This economic justification, while of marginal persuasiveness to some, is a valid reason for recognizing the right of publicity to those who subscribe to a "Chicago School" economic analysis of the law.
The justifications for the right of publicity can be as complex as they are varied. Certainly reasonable minds can and do disagree about these justifications. As in other areas of the law, each justification will not apply in every case. Not every plaintiff will be incentivized by the right of publicity, and not every plaintiff will use her identity efficiently, but this should not necessarily result in a rejection of her claim. Despite the apparent complexity, perhaps the simplest argument in favor of the right of publicity is its most compelling - it simply feels as if there should be a right to prevent others from exploiting one's identity.
In the next posting, I will analyze the likelihood of success for the class action lawsuits filed by former student athletes against the NCAA and Electronic Arts.
i This was the year in which one of the chief critics of the right of publicity, Professor Michael Madow, published his article Private Ownership of Public Image: Popular Culture and Publicity Rights, 81 Cal. L. Rev. 127 (1993). The article's publication also came on the heels of White v Samsung, and Judge Kozinski's spirited dissent. White v. Samsung Electronics Am., Inc., 989 F.2d 1512 (9th Cir. 1993).
ii Nimmer, The Right of Publicity, 19 Law & Contemp. Probs. 203, 215-216 (1954).
iv Zacchini v Scripps-Howard Broadcasting Co., 433 U.S. 562, 576 (1977).
v 1 J. Thomas McCarthy, The Rights of Publicity and Privacy § 1:3, 2:6 (2d ed., rev. vol. 2010).
vi Zacchini, 433 U.S. 562, 576.
vii See e.g. Madow, supra, at 188; McKenna, The Right of Publicity and Autonomous Self Definition, 67 U. Pitt. L. Rev. 225, 253-54 (2005).
viii Madow, supra, at 208-10
ix Id. at 136-37.
x See, e.g., Zacchini, 433 U.S. 562, 575 (1977) (petitioners human cannonball act is the product his "talents and energy, the end result of much time, effort and expense"); Hirsch v. S.C. Johnson & Son, Inc., 280 N.W.2d 129, 134-35 (1979) ("Hirsch over a period of years assiduously cultivated a reputation not only for skill as an athlete, but as an exemplary person whose identity was associated with sportsmanship and high qualities of character, and… much time and effort was devoted to that purpose"); Comedy III Productions, Inc. v. Gary Saderup, Inc., 21 P.3d 797, 805 (2001)(Through their creative labor, the three stooges developed commercially valuable personas).
xi McCarthy, supra, at § 2:5, n.11.
xii That there is economic value associated with fame is undeniable. The question of who should benefit from that value does not amount to choosing between the 'public domain' in general and a perhaps undeserving celebrity fortuitously pocketing public largesse… we are not asked to choose between the rights of the public at large and a fortuitously placed individual; the choice is between the individual to whom that associative value attaches and a stranger to the process who would make money out of it." Sheldon W. Halpern, The Right of Publicity: Maturation of an Independent Right Protecting the Associative Value of Personality, 46 Hastings L.J. 853, 871-72 (1995).
xiii DC Comics purchased Superman from creators Joe Shuster and Jerry Siegel in 1938 for $65 each. However, ownership of the copyright continues to be the subject of a legal dispute. See Andy Khouri, Behold the Check DC Comics Wrote in 1938 for the Exclusive Rights to Superman; and Eriq Gardner, Warner Bros. Wins Round In Battle With Superman Lawyer.
xiv Id. at § 2:6 ("one way to look at it is that the person who sacrifices some personal privacy by venturing onto the stage of public opinion should have the opportunity to gain from the commercial value of that person's now marketable identity"); James M. Treece, Commercial Exploitation of Names, Likenesses, and Personal Histories, 51 Tex. L. Rev. 637, 646 (1973)("The celebrity creates audience appeal not only through the substantive achievements that bring him fame, but at the expense of the privacy that he must surrender in becoming a public personality").
xv In fact, further evidence that the pendulum began its swing back towards a lack of protection after White v Samsung is demonstrated by the 1995 version of the Restatement (Third) of Unfair Competition. Comment C to § 46 states, "The commercial value of a person's identity often results from success in endeavors such as entertainment or sports that offer their own substantial rewards."
xvi See e.g. Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959, 974 (10th Cir. 1996); C.B.C. Distribution & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818, 824 (8th Cir. 2007); ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 933 (6th Cir. 2003). Professor Michael Madow asks, "[w]hy should the law give entertainers and athletes a legal right that funnels still more money their way?" Madow, supra at 136-37.
xvii McCarthy, supra, at § 2:6.
xix "[T]he right of publicity indirectly affords protection against false suggestions of endorsement or sponsorship." Restatement (Third) of Unfair Competition § 46 cmt. c (1995).
xx See McCarthy, supra note 3, 2:8.
xxi See e.g., Dannean J. Hetzel, Professional Athletes and Sports Teams: The Nexus of Their Identity Protection, 11 Sports Law. J. 141, 170 (2004).
xxii See e.g., ETW, 332 F.3d 915, 922 (a person's image or likeness cannot function as a trademark); Lemon v Harlem Globetrotters Int'l, 437 F.Supp.2d 1089, 1099-1100 (D. Az. 2006)(use of plaintiffs name and number on apparel but not advertisements is not a clear communication of endorsement); and Kaburakis, et al., NCAA Student-Athletes' Rights of Publicity, EA Sports, and the Video Game Industry: the Keller Forecast, 27-Sum. Ent. & Sports Law 1, 33 (2009)(although there has been some success under section 43(a) in past cases, the claim remains idle).
xxiii The Rogers test comes from Rogers v Grimaldi, 875 F.2d 994 (2d Cir. 1989), and provides First Amendment protection where the use of the mark has artistic relevance to the underlying work and does not explicitly mislead as to source. See e.g., Brown v EA Sports, Case No. 2:09-cv-01598-FMC-RZ (EA's use of retired football player's likeness was not completely irrelevant to the games content and without more is insufficient to make the use explicitly misleading); Parks v. LaFace Records, 329 F.3d 437, 461 (6th Cir. 2003)(fact issue as to whether song entitled 'Rosa Parks' is wholly unrelated to the content of the song).
xxiv "Those who argue that the Lanham Act claims alone should be sufficient are essentially telling the carpenter to use the side of a wrench to pound in a nail, while walking off with the carpenter's hammer. The right of publicity is clearly the right tool for this job." Unprecedented, Overreaching Exemptions Undermine Several Current Right of Publicity Bills, The Right of Publicity Blog (Apr. 16, 2010).
xxv McCarthy, supra note 3, 2:7.
xxvi A resource is rivalrous if consumption by one consumer prevents simultaneous consumption by other. A resource is exhaustible if present consumption rates lessen future availability.
xxvii Matthews v Wozencraft, 15 F.3d 432, 438 at n.2. (5th Cir. 1994).