The recent dispute involving Lindsay Lohan and ETrade (see AP report on YouTube) provides an opportunity for critically examining the right of publicity. The right of publicity is one of the newest intellectual property rights available under U.S. law. It allows a celebrity, such as Ms. Lohan, to control the commercial use of her name and/or likeness. This right is a distinct right that exists in addition to unfair competition and trademark rights.
Existing unfair competition law allows a celebrity to object to use of her name and/or likeness in a commercial context if the use is likely to confuse members of the intended market such that they believed the celebrity was endorsing the product. (See, e.g., 15 U.S.C. sec. 1125(a)). Additionally, a celebrity may be able to assert trademark rights in her name. But a trademark infringement action would also require demonstrating a likelihood of confusion among consumers. The right of publicity provides an additional right which enables a celebrity to object to use of her name and/or likeness even if no confusion exists among consumers.
Although the right of publicity initially began as a type of right of privacy tort action it has subsequently become a stand-alone right. Early judicial decisions applying the right of publicity seem to view the right of publicity as essentially a pure property right possessed by a celebrity. (See Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (1953)). Today, most states recognize a right of publicity either at common law or via statute.
Some judicial decisions have expanded the right beyond the use of a name and/or likeness. In Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983), the owner of a portable toilet business used the phrase “Here’s Johnny Portable Toilets” to promote his business. The court held this violated Johnny Carson’s right of publicity because the phrase “Here’s Johnny” spoken by Ed McMahon when he introduced Mr. Carson on his nightly television show evoked an association with Johnny Carson. The fact that consumers would not think Johnny Carson owned or endorsed the portable toilet company was relevant to an unfair competition action but irrelevant to a right of publicity action. The majority decision in the case essentially adopted a functional test – if anything used in the advertisement triggers an association with a celebrity it is a violation of the right of publicity. In light of the Carson decision, the only question with regard to whether Ms. Lohan would prevail would be whether consumers associate the reference to Lindsay in the ETrade advertisement with Ms. Lohan. (I must confess that I did not make the association. However, some of my students did make the connection).
One defense that ETrade could raise would be parody since it is common practice – and a strongly protected free speech right – to make fun of people. Nevertheless, courts have distinguished between simply making fun of someone and making fun of someone in order to sell a product. In the Vanna White v. Samsung Electronics, 971 F.2d 1395 (9th Cir. 1992), case the court found an advertisement that made fun of Vanna White was not a parody because the advertisement was designed to sell Samsung VCRs. In contrast, if a skit appeared on the television show Saturday Night Live which made fun of Ms. White that would presumably not be a violation of the right of publicity. The main goal of the skit would be considered artistic expression aimed at making fun of Ms. White. Under this analysis ETrade would be unable to prevail with a parody defense since the clear goal of the advertisement was to promote and sell its services.
A fundamental question to ask is why does the right of publicity exist? The underlying basis or rationale for property rights generally in the U.S. is a utilitarian theory rather than a natural right or labor theory. For example, intellectual property rights typically exist to incentivize creativity and innovation which ultimately benefit society. I do not believe this rationale can justify the right of publicity because I seriously doubt that anyone will decide not to become famous or to become a celebrity if the right of publicity was abolished. Keep in mind that even without the right of publicity a celebrity can still object to use of her name and/or likeness, under an unfair competition theory, if it is likely to create confusion with regard to whether she endorses the product she is associated with.
Another potential rationale for the right of publicity is to allow a celebrity to exert total control over how her name and/or likeness is used in order to prevent diminution of the economic value of the celebrity’s persona which can result from uncontrolled over-exposure of the celebrity. This rationale can be analogized to the extension of trademark rights under a dilution theory. Typically, a trademark infringement action requires a likelihood of consumer confusion based on the infringer’s use of the same or similar trademark. This allows concurrent use of the same or similar trademark on different products. Dilution theory entitles a trademark owner to control use of a trademark without regard to whether any likelihood of confusion exists – it essentially extends property protection to the mark itself in order to prevent blurring (which is a type of over-exposure that would reduce the economic value of a mark) or tarnishment of the mark. Arguably, the only justification for dilution theory is to protect the economic investment of the trademark owner in the trademark.
Even under this rationale limits must exist on the right of publicity. The federal dilution statute (See 15 U.S.C. sec. 1125(c)) only applies to famous marks. Additionally, even if a mark is famous the statute codified a list of exceptions to dilution which include all forms of news reporting and commentary, comparative advertising, any non-commercial use of a mark, and “identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.” (See 15 U.S.C. sec. 1125(c)(3)).
I think a strong argument could be made that the right of publicity (and dilution rights for trademarks) should be significantly limited. Competing rationales such as promoting competition and allowing robust free speech strongly support such limitations. At a minimum, the limitations on dilution codified in the federal dilution statute should be adopted as limitations on the right of publicity. Some recent judicial decisions already indicate the possibility of a trend away from the expansive view of the right of publicity taken by the Carson and White cases. (See, e.g., ETW Corp. v. Jireh Publishing, Inc. 332 F.3d 915 (6th Cir. 2003) (this case was decided by the same circuit that decided the Carson case).