NONFICTIONAL CHARACTERS: HOW COPYRIGHT CAN RESTORE ORDER TO PUBLICITY RIGHTS

Joel Fung Wacks

INTRODUCTION

A reality television star has transformed herself from wealthy but obscure heiress into household name thanks to a combination of canny marketing, poor (but salacious) life choices, and a distinctive personal style and affect. Now, third parties seek to profit from her fame. Paparazzi follow her every move, reporting mundane details of her life that even her TV show leaves on the cutting room floor. Local apparel shops sell t-shirts with an unflattering illustration of the celebrity’s face above an equally unflattering witticism playing on a recent scandal. Sugar Cola’s new advertising campaign implies that she is a regular consumer of their product. This is a lie (she drinks no soda at all), and, worse, threatens an endorsement deal with Syrup Co., a rival soda brand. The celebrity plans to call her lawyer. Which, if any, of these unauthorized uses of the celebrity’s persona should the law give her the right to block? The answer depends on the underlying rationale for providing legal rights in a person’s identity.1 Scholars and courts have suggested several possible reasons to provide legal protection for one’s persona. One common account is an incentives rationale analogous to the justification for copyright protection: legal exclusivity in one’s persona is necessary to incentivize the pursuit of fame.2 An incentives rationale could justify blocking the sale of t-shirts bearing the celebrity’s likeness—the exclusive right to make and sell derivative works has long been thought necessary to incentivize creative works in the copyright context.3 It might even justify blocking false endorsement, if endorsement rights are especially crucial to incentivizing the pursuit of fame. However, the copyright analogy is an odd fit if our celebrity wishes to use her publicity rights against the paparazzi. As noted, their product (tabloid stories reporting information about the celebrity’s life not included in her show) does not overlap

1 Of course, it also depends on whether such rights should exist at all. Some commentators favor eliminating publicity rights altogether. See, e.g., Lee Goldman, Elvis Is Alive, but He Shouldn’t Be: The Right of Publicity Revisited, 1992 BYU L. Rev. 597, 598 (1992) (“This article . . . concludes that the right of publicity should be abolished.”). Part II addresses this argument, arguing that there is more reason to believe publicity rights create social good than their harshest critics have concluded, but acknowledging that their necessity is far from certain. 2 Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 576 (1977) (“Ohio’s decision to protect petitioner’s right of publicity. . . provides an economic incentive for him to make the investment required to produce a performance of interest to the public.”); Stacey L. Dogan & Mark A. Lemley, What the Right of Publicity Can Learn from Trademark Law, 58 Stan. L. Rev. 1161, 1186 (2006) (“A final justification offered for the right of publicity is that the grant of such control is needed to encourage investment in the development of a public persona.”); Michael Madow, Private Ownership of Public Image: Popular Culture and Publicity Rights, 81 Calif. L. Rev. 127, 206 (1993) (“It is frequently asserted that the purpose of the right of publicity, like that of copyright, is to provide an economic incentive for enterprise, creativity, and achievement.”). 3 See 17 U.S.C. § 103(a).

1 with officially authorized depictions of the celebrity’s life. Given that fact, it seems the right to block this press coverage is unnecessary to incentivize the celebrity’s pursuit of fame. Other commentators have argued that the right of publicity is best justified as a means to prevent false endorsements, analogous to similar doctrines under trademark law.4 On this account, the right of publicity exists to prevent consumers from being duped into buying products they incorrectly believe have been endorsed by their favorite celebrities. Such a rationale would obviously justify a claim against Sugar Cola. On the other hand, it provides no justification for a suit against the paparazzi or even the t-shirt sellers. Reasonable consumers are unlikely to mistake tabloid coverage or unflattering t- shirts for authorized products simply because they bear the celebrity’s image. And even if a consumer did make such a mistake, it would be unlikely to affect their purchasing decisions.5 Finally, the right to control the use of one’s image, name, or other indicia of identity was historically based on a privacy or autonomy rationale.6 Conceivably, the right to control the use of one’s own persona could be used to block intrusive reporting, unauthorized merchandise, and false endorsement alike. However, the privacy justification is an awkward fit for the facts described above. A celebrity who makes her living by willingly broadcasting her life to the public is ill-positioned to argue that further public use of her persona violates her interest in privacy.7 However, the irate reality TV star need not fear her alleged harm will go unredressed. Indeed, all three rationales described above have worked their way into the law to some extent, either via state right of publicity laws or the Lanham Act.8 In many

4 Dogan & Lemley, supra note 2, at 1164 (arguing that both the right of publicity and trademark law allow celebrities and trademark holders, respectively, to “prevent the deceptive appropriation of the meaning associated with their goodwill and identity” while also ensuring “consumers can buy products with confidence in the truth of assertions about who makes, sponsors, endorses, and stands behind those goods.”). 5 See Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1084–85 (9th Cir. 2015) (Christen, C.J., concurring in part and dissenting in part) (arguing that even if consumers mistakenly believed use of celebrity’s image on a t-shirt required permission from celebrity’s estate, such misunderstanding was unlikely to have motivated purchase of the t-shirt). 6 Melissa B. Jacoby & Diane Leenheer Zimmerman, Foreclosing on Fame: Exploring the Uncharted Boundaries of the Right of Publicity, 77 N.Y.U. L. Rev. 1322, 1328 (2002) (“The right of publicity had its origins in a body of tort law that was designed to protect personal privacy.”); J. Thomas McCarthy, The Rights of Publicity and Privacy § 1:2 (2d ed. 2018) (“The right of publicity grew historically out of the state law right of privacy.”). 7 See Jacoby & Zimmerman, supra note 6, at 1329 (“An undercurrent of embarrassment attended the tort when celebrities invoked it . . . because it was conceptually difficult to understand how further commercialization could harm the privacy of someone who already earned his bread by exploiting his fame voluntarily in just this fashion.”). 8 To be clear, these are not the only rationales that have been proposed to justify right of publicity laws. For example, many commentators identify a moral rights or unjust enrichment basis for the right. Dogan & Lemley, supra note 2, at 1181–84 (describing the moral rights and unjust enrichment rationales). Others justify the right by reference to personal autonomy. See generally Alice Haemmerli, Whose Who? The Case for a Kantian Right of Publicity, 49 Duke. L.J. 383 (1999); Mark McKenna, The Right of Publicity and Autonomous Self-Definition, 67 U. Pitt. L.

2 instances multiple rationales appear to underlie the same laws. For example, § 43(a) of the Lanham Act provides a cause of action for false endorsement available to celebrity plaintiffs as well as trademark holders.9 Yet a recent case saw the Ninth Circuit apply § 43(a) as a quasi-property right in a celebrity plaintiff’s likeness, thereby using a tool meant to address false endorsement to vindicate an incentives rationale for creating property rights in celebrity identities.10 Similarly, state right of publicity laws appear to draw on multiple rationales to justify their scope and protections. For instance, in most jurisdictions that recognize a right of publicity, the right is both assignable11 and descendible.12 Alienability is a feature of intellectual property regimes premised on an incentives rationale, akin to copyright.13 At the same time, very few (and perhaps no) courts limit the right of publicity to celebrities.14 Making the right of publicity available to non-famous people with no particular interest in becoming famous, and thus no need for an economic incentive to develop a particular persona or cultivate fame, makes the right look like a privacy right. Multiple overlapping rationales underlying the same legal regime come at a cost. Plaintiffs seeking to vindicate only a privacy interest can use tools designed to incentivize economic investment to obtain unnecessarily total control over the use of their identities. Celebrities can use doctrines originally meant to protect privacy to silence parody and criticism ordinarily protected by the First Amendment. Courts allowing plaintiffs to use the Lanham Act to protect a property interest in celebrity personas may create doctrines that bleed into other areas of trademark law, further propertizing what ought to be a consumer protection regime. In these and other situations, multiple, overlapping rationales for protecting rights in identity have the potential to lead to socially undesirable overprotection. This Paper argues that, while all three rationales have some role to play in the law’s protection of identity, cabining each rationale to a single doctrinal area would help properly limit the scope of the law’s protection. To do so, courts could take the oft-made analogy between the right of publicity and copyright to its logical conclusion, by

Rev. 225 (2005). The right has also been justified on economic grounds distinct from the copyright-like incentives story, as necessary “to prevent the premature exhaustion of the commercial value of the celebrity’s name or likeness.” William Landes & Richard A. Posner, Indefinitely Renewable Copyright, 70 U. Chi. L. Rev. 471, 485 (2003). This Paper focuses on the incentives, false endorsement, and privacy rationales because, as argued in Part II below, those rationales best explain the features of modern legal protection for publicity rights and track the explanations of courts and legislatures for those protections. 9 Downing v. Abercrombie & Fitch, 265 F.3d 994, 1007–09 (9th Cir. 2001) (holding that celebrity plaintiffs can bring suit under § 43(a)). 10 See A.V.E.L.A., 778 F.3d at 1067–73 (holding that defendants violated the Lanham Act by selling unauthorized t-shirts displaying an image of singer-songwriter Bob Marley). For more detailed analysis of A.V.E.L.A., arguing that the court inappropriately applied § 43(a) as a property right, see infra notes 147163 and accompanying text. 11 Restatement (Third) of Unfair Competition § 46 cmt. g (Am. Law Inst. 1995). 12 McCarthy, supra note 6, at § 9:17 (“The overwhelming majority rule under either statute or common law is that the right of publicity is descendible property.”). 13 See id. at § 9:6 (justifying a postmortem right of publicity by analogy to trademarks and copyright). 14 Restatement (Third) of Unfair Competition § 46 cmt. d (Am. Law Inst. 1995).

3 extending copyright doctrines developed in the context of protections for fictional characters to protect certain nonfictional celebrity personas. Copyright could thus be used to preserve whatever economic incentives are necessary to incentivize socially desirable pursuit of fame, rather than the right of publicity or the Lanham Act. The right of publicity could thus be confined to its historic role as a privacy right and the Lanham Act cabined to cases where the risk of confusion threatens to influence consumer’s purchasing decisions. Letting copyright do the work of creating property rights in identity would better limit the extension of those rights to contexts where they are necessary to incentivize the creation of socially desirable personas and afford courts greater flexibility to address the potential conflict between publicity rights and First Amendment values. This Paper proceeds in three parts. Part I surveys the current legal protections for personas, focusing on California and New York right of publicity law and § 43(a) of the Lanham Act. Besides providing an overview of the existing legal landscape, Part I analyzes the ways these regimes, or at least their current application, betray inconsistent underlying rationales, and how that inconsistency can lead to overprotection of publicity rights. Part II starts by addressing some common arguments that no property right should be available in human personas whatsoever, before arguing that as long as such rights do exist, copyright law would be an appropriate source for them. Part II.B demonstrates that current doctrine providing copyright protection for fictional characters could be extended to certain celebrity personas (nonfictional characters). Part III discusses the interaction of copyright in nonfictional personas with right of publicity laws and the Lanham Act. It argues that copyright protection for nonfictional identities will more appropriately limit the availability and scope of such property rights, and would allow courts to cabin the right of publicity and § 43(a) to their historical justifications of privacy and consumer confusion, respectively. It concludes by arguing that existing copyright doctrines, including the idea/expression dichotomy and fair use, provide more flexible protection for expression compared to the more focused, and thus more rigid, speech protections under right of publicity laws.

I. LEGAL PROTECTION FOR IDENTITY: THE CURRENT LANDSCAPE

This Part surveys existing legal protection for identity. Part I.A describes modern right of publicity laws in California and New York. This emphasis is justified for two reasons. First, the concentration of the entertainment industry in New York City and Los Angeles tends to suggest a disproportionate number of celebrities are domiciled in New York and California, making their right of publicity regimes particularly significant.15 Second, California and New York have publicity right doctrines at opposite ends of the property right/privacy right spectrum. Perhaps more than any other state, California has designed the right of publicity to function as a copyright-inspired intellectual property doctrine which creates a property right in one’s identity.16 In contrast New York law,

15 See Eugene Volokh, Freedom of Speech and the Right of Publicity, 40 Houston L. Rev. 903, 914 (2003) (noting that a California Supreme Court right of publicity case was likely to “be fairly influential . . . because so many prominent entertainers live in California”). 16 See Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 807 (Cal. 2001) (“[T]he right of publicity is essentially an economic right.”).

4 despite having given birth to the modern right of publicity,17 today recognizes the right only insofar as it fits under New York’s privacy statute.18 It therefore provides an example of a right of publicity regime relatively cabined by an underlying privacy rationale. Part I.B turns to false endorsement claims under § 43(a) of the Lanham Act, and in particular cases involving celebrity plaintiffs. The analysis focuses on a recent Ninth Circuit false endorsement case which appears to stray from the Lanham Act’s underlying justification—consumer confusion—instead applying false endorsement as a form of property right in a celebrity’s image.

A. The Right of Publicity: Property or Privacy?

It is generally agreed that the right of publicity’s origins can be traced to Samuel Warren and Louis Brandeis’s article The Right to Privacy.19 Warren and Brandeis called for the law to recognize a right to privacy, which they defined as a “right to be let alone,”20 resting not on “the principle of private property, but that of an inviolate personality.”21 Courts and legislatures alike took up Warren and Brandeis’s call, creating torts to effectuate the right to privacy.22 Professors Stacey L. Dogan and Mark Lemley have identified one such tort, appropriation of the plaintiff’s name or likeness for the defendant’s advantage, as “an early form of the publicity right.”23 However, the clear privacy rationale underlying this proto-publicity tort limited a plaintiff’s rights in her name or likeness in several key ways.24 Perhaps most significantly, an appropriation claim was generally not available to celebrities at all, on the theory that a person who had sought out fame could not be damaged by additional publicity.25 Furthermore, the right was neither assignable nor descendible, and damages were limited to recompense for the plaintiff’s suffering, not any financial gain obtained by the defendant.26 It was not until 1953 that the modern right of publicity emerged. The Second Circuit, ironically applying New York common law, first recognized that “in addition to and independent of that right of privacy . . . a man has a right in the publicity value of his

17 See notes 27–28 and accompanying text. 18 Stephano v. News Grp. Publ’ns, Inc., 474 N.E.2d 580, 584 (N.Y. 1984) (“Since the ‘right of publicity’ is encompassed under the Civil Rights Law as an aspect of the right of privacy, which, as noted, is exclusively statutory in this State, the plaintiff cannot claim an independent common- law right of publicity.”). 19 See Barton Beebe et al., Trademarks, Unfair Competition, and Business Torts 653 (2d ed. 2016); Dogan & Lemley, supra note 2, at 1167–71; McCarthy, supra note 6, at § 1:4. 20 Samuel D. Warren & Louise D. Brandeis, The Right to Privacy, 4 Harv. L. Rev. 193, 193 (1890). 21 Id. at 205. 22 Daniel J. Solove & Paul M. Schwartz, Information Privacy Law 25 (6th ed. 2018). 23 Dogan & Lemley, supra note 2, at 1169. Professor William Prosser first identified four distinct torts under the heading of privacy, including the appropriation tort Dogan and Lemley characterize as a precursor of the right to publicity. See William L. Prosser, Privacy, 48 Calif. L. Rev. 383, 389 (1960). 24 Dogan & Lemley, supra note 2, at 1171. 25 Id. 26 Id.

5 photograph.”27 The court dubbed this right “the right of publicity.”28 The following year, Professor Melville Nimmer expanded upon and refined the idea in a law review article entitled The Right of Publicity.29 Since its invention, the right of publicity has been adopted either by common law, statute, or both in over half the states.30 What follows are two illustrative case studies: California, which has whole-heartedly embraced a copyright-inspired, property-based right of publicity in both its common law and statutory scheme, and New York, which continues to apply the right of publicity as a privacy tort.

1. California: Publicity as property.

California recognizes both a statutory and a common law right of publicity.31 For the most part, the common law right has proven more significant than the statutory right.32 This may be in part because a common law right of publicity claim is easier to prove than its statutory equivalent. The common law right of publicity has four elements:

1) The defendant’s use of the plaintiff’s identity. 2) Appropriation of the plaintiff’s name or likeness to the defendant’s commercial or other advantage. 3) Lack of consent by the plaintiff. 4) Harm to the plaintiff.33

California’s statutory right of publicity has the additional element of knowledge or intent.34 California has a separate, postmortem right of publicity established by statute and discussed in greater detail below.35 California’s common law right of publicity may also be more significant insofar as it has a broader scope. The statutory right of publicity protects only against unauthorized use of a person’s “name, voice, signature, or likeness.”36 Courts have construed these terms relatively narrowly. Thus, § 3344 afforded no cause of action against Ford for hiring a Bette Midler-sound alike to sing the actress and singer’s hit song, “Do You Want to Dance?” in a car commercial.37 The Ninth Circuit reasoned that

27 Haelan Labs., Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866, 867-68 (2d Cir. 1953). 28 Id. 29 See generally Melville B. Nimmer, The Right of Publicity, 19 Law & Contemp. Probs. 203 (1954). 30 Dogan & Lemley, supra note 2, at 1174. 31 Miller v. Glenn Miller Prods., Inc., 454 F.3d 975, 988-89 (9th Cir. 2006); Saderup, 21 P.3d at 799. 32 McCarthy, supra note 6, at § 6:11. 33 Hilton v. Hallmark Cards, 599 F.3d 894, 909 (9th Cir. 2010); Eastwood v. Superior Court, 198 Cal. Rptr. 342, 347 (Cal. Ct. App. 1983). 34 Cal. Civ. Code § 3344(a). See also Eastwood, 198 Cal. Rptr. at 346 n.6 (holding “mistake and inadvertence” no defense to common law appropriation claim). 35 Cal. Civ. Code § 3344.1. 36 Cal. Civ. Code § 3344(a). 37 Midler v. Ford Motor Co., 849 F.2d 460, 461–63 (9th Cir. 1988).

6 Ford had not appropriated Midler’s voice, since a sound-alike singer was used, rather than a recording of Midler herself.38 Nor had they appropriated Midler’s likeness, which “refers to a visual image, not a vocal imitation.”39 Similarly, § 3344 was of no help to game show hostess Vanna White in her lawsuit against Samsung for an ad depicting a humanoid robot clearly meant to resemble White.40 The ad featured an image of a robot in a blond wig, gown, and jewelry resembling White’s typical attire, in front of a background that was “instantly recognizable as the Wheel of Fortune game show set,” all over the caption “Longest-running game show. 2012 A.D.”41 The Ninth Circuit concluded that Samsung’s robot was insufficiently White-like to qualify as a likeness within the meaning of § 3344 (contrasting the actual facts with a hypothetical “manikin molded to White’s precise features”).42 However, both appropriations gave rise to California common law right of publicity claims. Recognizing that the statute did not “preclude Midler from pursuing any cause of action she may have at common law,” the Ninth Circuit concluded such an action was available because the common law protected “the attributes of one’s identity.”43 Therefore, for purposes of the common law, it was irrelevant that Ford did not appropriate Midler’s “name, voice, signature, or likeness.” It was sufficient that Ford had “conveyed the impression that Midler was singing for them,” thereby appropriating “an attribute of Midler’s identity” and invading what the court characterized as her “proprietary interest” in her identity.44 Similarly, the Ninth Circuit found in White that a “female-shape[ ],” “long gown, blond wig, [ ] large jewelry,” and “Wheel of Fortune game show set,” were, in combination, an invocation and thus appropriation of White’s identity.45 Applying the same or similar standards, courts have held that ads using a plaintiff’s car,46 distinctive introduction,47 and nickname48 all appropriated attributes of identity sufficient to give rise to a right of publicity cause of action. California’s broad common law right of publicity, which seemingly reaches any attribute of identity sufficient to conjure up the plaintiff in a viewer’s mind, tends to

38 Id. at 463. 39 Id. 40 White v. Samsung Elecs. Am., Inc., 971 F.2d 1395, 1397 (1992). 41 Id. at 1396. 42 Id. at 1397. 43 Midler, 849 F.2d at 463 (citation omitted). 44 Id. 45 White, 971 F.2d at 1399. 46 Motsenbacher v. R.J. Reynolds Tobacco Co., 498 F.2d 821, 825-27 (9th Cir. 1974) (holding that plaintiff’s proprietary interest in his identity may have been invaded because “several uniquely distinguishing features” of the car used in an advertisement made it identifiable as his). 47 Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831, 836 (6th Cir. 1983) (holding Johnny Carson’s common law right of publicity was invaded by defendant’s use of the phrase “Here’s Johnny”). The Sixth Circuit in Carson applied Michigan common law, which has adopted the same “attribute of identity” standard as California, even going so far as to cite Motsenbacher. Id. at 835. 48 Hirsch v. S.C. Johnson & Son, Inc., 280 N.W.2d 129, 137-38 (Wis. 1979) (holding Elroy Hirsch’s common law right of publicity invaded by use of his nickname, “Crazylegs”). In deciding the case, the Wisconsin Supreme Court established a common law right of publicity. Id. at 138.

7 undercut the argument that the right of action can be justified solely by the need to incentivize pursuit of celebrity status. The ability to block de minimis uses of one’s public persona is likely unnecessary to incentivize the development of most such personas. This suspicion is supported by the fact that California, like virtually all jurisdictions, does not limit the right to celebrities.49 It is difficult to imagine what socially desirable behavior such a broad, and broadly available, right could incentivize.50 What would the average LinkedIn user, with no dreams of stardom, do differently knowing he could block LinkedIn from using his name in endorsement emails sent to his LinkedIn contacts?51 While such a cause of action might vindicate privacy rights based on theories of “inviolate personality,”52 or perhaps address the possibility of false endorsement, it is hard to see how it could incentivize socially useful behavior, as other intellectual property regimes such as copyright and patent seek to do. Indeed, a similar argument has been made by Judge Diarmuid O’Scannlain in Sarver v. Chartier, a California right of publicity lawsuit alleging that the film The Hurt Locker was based on plaintiff Sergeant Jeffrey Sarver’s experiences as an Explosive Ordinance Disposal technician in Iraq.53 O’Scannlain noted that because Sarver did not “invest time and money to build up economic value in a marketable performance or identity,” “[t]he state has no interest in giving Sarver an economic incentive to live his life as he otherwise would.”54 O’Scannlain’s analysis, while insightful, did not lead him to conclude the right of publicity should be less widely available. Instead, it was part of the court’s First Amendment analysis, and appears mostly intended to distinguish Zacchini v. Scripps-Howard Broadcasting Co., the Supreme Court’s sole precedent considering the interaction of the right of publicity with the First Amendment.55 The Ninth Circuit thus ruled against Sarver on his right of publicity claim on First Amendment grounds, not because he was ineligible to benefit from the right of publicity,56 despite the acknowledged uselessness of providing him with “an economic incentive to live his life as he otherwise would.” However, other aspects of California’s right of publicity regime make it clear the right is indeed a property right, offering plaintiffs the basic bundle of sticks normally thought necessary to incentivize the creation of public goods. As a preliminary matter,

49 Perkins v. LinkedIn Corp., 53 F. Supp. 3d 1190, 1211 (N.D. Cal. 2014) (recognizing common law right of publicity action for non-celebrity LinkedIn users); KNB Enterprises v. Matthews, 92 Cal. Rptr. 2d 713, 722 n.12 (Cal. Ct. App. 2000) (“Under California law, the statutory right of publicity exists for celebrity and non-celebrity alike”); McCarthy, supra note 6, at § 6:21 (“The requirement of some injury does not disqualify non-celebrities from asserting either a common law or statutory right of publicity.”). 50 Indeed, many commentators argue that it is hard to imagine what socially desirable behavior the right of publicity incentivizes at all. See Dogan & Lemley, supra note 2, at 1186-90; Madow, supra note 2, at 206–15. For a more detailed description of these arguments, and a response arguing that they overstate the problem to at least some extent, see Part II. 51 See Perkins, 53 F. Supp. 3d at 1195–01. 52 See Warren & Brandeis, supra note 20. 53 Sarver v. Chartier, 813 F.3d 891, 896 (9th Cir. 2016). 54 Id. at 905. 55 For more on Zacchini specifically, and the interaction of property-based right of publicity regimes with the First Amendment generally, see infra notes 67–91 and accompanying text. 56 Sarver, 813 F.3d at 906.

8 courts hearing right of publicity cases consistently describe the right in one’s identity as a property right akin to copyright.57 More significantly, the right is fully assignable.58 A separate California statute establishes a post-mortem right of publicity, meaning that the right is descendible as well.59 Tellingly, the California legislature has extended the duration of the postmortem right to ensure it tracks the term of federal copyright protection.60 Further belying the notion that the California right of publicity could be justified solely by a privacy rationale, §§ 3344 and 3344.1 provide as a remedy not only “actual damages sustained as a result of the violation,” but also “any profits from the unauthorized use attributable to the use.” While actual damages might be justified by a privacy rationale, a right to the profits produced by one’s identity seems most clearly justified by a property theory of the right. Moreover, like the duration of the postmortem right of publicity, the statutory remedies are modeled on federal copyright law.61 It should also be noted that while these rights are obviously ill-suited to a pure privacy justification, neither can they be explained by a false endorsement theory of publicity rights. Although, akin to the Lanham Act, § 3344 reaches only unauthorized uses in connection with advertising a commercial product,62 neither § 3344 nor the common law right of publicity requires evidence of false endorsement.63 Finally, California’s accommodations for free speech and expression in its right of publicity regime warrant discussion. Numerous commentators have argued that right of publicity laws inadequately account for the right’s potentially pernicious effect on First Amendment rights.64 External limits supplied by First Amendment doctrine remain

57 See, e.g., Midler, 849 F.2d at 463 (describing both California’s statutory and common law right of publicity as property rights); Saderup, 21 P.3d at 804 (“The right of publicity, like copyright, protects a form of intellectual property that society deems to have some social utility.”). 58 See Lugosi v. Universal Pictures, 603 P.2d 425, 431 (Cal. 1979) (acknowledging the common law right of publicity is assignable); Timed Out, LLC v. Youabian, Inc., 177 Cal. Rptr. 3d 773, 778-79 (holding the statutory right of publicity assignable). 59 Cal. Civ. Code § 3344.1. The post-mortem right appears to be essentially identical to the right of publicity established by § 3344, simply substituting the phrase “deceased personality” for “another.” Compare Cal. Civ. Code § 3344 with Cal. Civ. Code § 3344.1. Indeed, the provision was apparently passed to legislatively overrule Lugosi, which had recognized the right of publicity but held it not descendible. McCarthy, supra note 6, at § 6:39. 60 McCarthy, supra note 6, at § 6:39. 61 Id. at § 6:46 n.2. Yet another example of such borrowing from federal copyright law is found in provisions defining which survivors may terminate and regrant assignments and licenses. Id. at § 6:45. 62 Compare Cal. Civ. Code § 3344 (requiring use “on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting”) with Lanham Act § 43(a) (requiring “use in commerce” for liability). The common law right of publicity does not appear to have a similar commercial use requirement, though it does require some use to the defendant’s advantage. See Eastwood, 198 Cal. Rptr. at 347 (holding “appropriation of the plaintiff’s name . . . commercially or otherwise” sufficient to support common law cause of action). 63 Eastwood, 198 Cal. Rptr. at 347 (“California law has not imposed any requirement that the unauthorized use or publication of a person’s name or picture be suggestive of an endorsement or association with the injured person.”). 64 See, e.g., Goldman, supra note 1, at 616–21; Roberta Rosenthal Kwall, The Right of Publicity vs. The First Amendment: A Property and Liability Rule Analysis, 70 Ind. L.J. 47, 56-63 (1994);

9 uncertain at best.65 As noted above, the Supreme Court has considered the issue only once.66 In Zacchini v. Scripps-Howard Broadcasting Co., the Court held that right of publicity liability premised on a news station broadcasting a fifteen-second clip of the plaintiff’s “Human Cannonball” act did not run afoul of the First Amendment.67 The Court distinguished a previous “false light” privacy case in which it had required actual malice for recovery68 by leaning heavily on an analogy to the incentives-producing function of other intellectual property regimes, in particular copyright.69 The Court did not say when the First Amendment would impose limits on the right of publicity, other than to note that a “state-law right of publicity would not prevent . . . reporting newsworthy . . . facts.”70 Nevertheless, the right of publicity has developed internal doctrines that purport to limit conflict with the First Amendment. Courts considering California right of publicity claims apply two such doctrines to accommodate free speech concerns. The first holds that “[p]ublication of matters in the public interest” is generally insulated from right of publicity claims.71 “Matters in the public interest” include not only news reporting but also “reproduction of past events, travelogues and biographies” if they “legitimately inform and entertain the public.”72 Thus using footage of plaintiff surfers in a surf documentary entitled “The Legends of Malibu” could not give rise to a right of publicity cause of action, because the “time and place in California history” depicted was “American legend,” “celebrated in popular culture,” and had “caught the popular imagination.”73 The protections of the public interest test have been extended to posters reporting the newsworthy event of a San Francisco 49ers Super Bowl victory,74 and “[a]dvertising to promote a news medium,” so long as it “promotes only the protected publication.”75 Other forms of advertising, however, are unprotected. Therefore surfers of comparable stature to those in “The Legends of Malibu” case were able to bring a right of publicity action against Abercrombie & Fitch for using their images in a subscription

Fred M. Weiler, The Right of Publicity Gone Wrong: A Case for Privileged Appropriation of Identity, 13 Cardozo Arts & Ent. L.J. 223, 260-66 (1994). 65 See McCarthy, supra note 6, at § 6:21 (“[T]he First Amendment values of free speech are balanced on a case-by-case basis against the right of publicity values.”). 66 Sarver, 813 F.3d at 903 (“The Supreme Court has reviewed the constitutionality of a state’s right of publicity law only once.”). 67 Zacchini, 433 U.S. at 564–66. 68 “Actual malice,” meaning knowledge or reckless disregard of falsity, is the constitutionally- required standard for defamation claims brought by public officials, New York Times v. Sullivan, 376 U.S. 254, 279–80 (1964), and public figures, Curtis Publ’g Co. v. Butts, 388 U.S. 130, 164 (1967). 69 Zacchini, 433 U.S. at 537, 576–77 (“The Constitution does not prevent Ohio from” “provid[ing] economic incentive . . . to produce a performance of interest to the public.”). 70 Id. at 574. 71 Dora v. Frontline Video, Inc., 18 Cal. Rptr. 2d 790, 792 (Cal. Ct. App. 1993). 72 Id. 73 Id. at 791–92. 74 Montana v. San Jose Mercury News, Inc., 40 Cal. Rptr. 2d 639, 641 (Cal. Ct. App. 1995). 75 Cher v. Forum Intern., Ltd., 692 F.2d 634, 639 (9th Cir. 1990). See also Montana, 40 Cal. Rptr. 2d at 641 (“[A] newspaper has a constitutional right to promote itself by reproducing its originally protected articles or photographs.”).

10 catalogue.76 Indeed, the “public interest” test does not protect other forms of expression more generally. For instance, a birthday card with a cartoon lampooning celebrity heiress Paris Hilton could not benefit from the protection of the “public interest” defense because it did “not publish or report information.”77 The other widely-adopted doctrine accommodating free speech interests is the “transformative use” test.78 First formulated by the California Supreme Court,79 the “transformative use” test is “based loosely” on copyright’s fair use doctrine.80 It asks “whether a product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness,” “or whether the depiction or imitation of the celebrity is the very sum and substance of the work in question.”81 The court justified this formulation by explicit reference to an incentives-based rationale for the right of publicity, reasoning that “[w]hen artistic expression takes the form of a literal depiction or imitation of a celebrity for commercial gain . . . the state law interest in protecting the fruits of artistic labor outweighs the expressive interests of the imitative artist,” but that “when a work contains significant transformative elements . . . it is . . . less likely to interfere with the economic interest protected by the right of publicity.”82 Applying the test it had created, the California Supreme Court held that t-shirts featuring illustrations of the Three Stooges were not transformative enough for First Amendment concerns to outweigh “the economic interest protected by the right of publicity.”83 Because the t-shirts bore only “literal, conventional depictions of The Three Stooges,” their “marketability and economic value . . . derive[d] primarily from the fame of the celebrities depicted,” and therefore failed to qualify for the transformative use defense.84 In what appears to have been a closer case, the Ninth Circuit found that the

76 Downing v. Abercrombie & Fitch, 265 F.3d 994, 999–1000, 1002 (9th Cir. 2001). 77 Hilton v. Hallmark Cards, 599 F.3d 894, 912 (9th Cir. 2010). 78 McCarthy, supra note 6, at § 8:72 (“[A] number of courts [have] settled on what is called the ‘transformative’ balancing test.”). 79 Id. 80 Hilton, 599 F.3d at 909 (noting that the California Supreme Court modeled the “transformative use” test “loosely on the intersection of the First Amendment and copyright liability”); Saderup, 21 P.3d at 807-08 (rejecting a wholesale importation of copyright’s fair use test, but finding “the first fair use factor . . . particularly pertinent to the task of reconciling the rights of free expression and publicity”). See also Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578-79 (1994) (holding copyright’s first fair use factor “asks . . . whether and to what extent the new work is ‘transformative’”). For a comparison of the relative strengths and weaknesses of the transformative use test and copyright’s fair use doctrine, see Part III.C. 81 Saderup, 21 P.3d at 809. 82 Id. at 808. It is worth noting the tension between this logic and the ability to block even relatively minimal uses of identity. See supra notes 43–48 and accompanying text. Arguably a work that contains only minimal aspects of a person’s identity is also less likely to “interfere with the economic interest protected by the right of publicity” for the same reason a work that “contains significant transformative elements” is: both are less likely to serve as market substitutes for uses the plaintiff would otherwise monetize. 83 Id. at 409. 84 Id.

11 Hallmark card described above,85 which featured Paris Hilton’s head superimposed on a cartoon waitress using Hilton’s trademark86 catchphrase, insufficiently transformative to entitle Hallmark to the transformative use defense as a matter of law.87 The Ninth Circuit emphasized that the catchphrase bore “its familiar, idiomatic meaning,” and that the “basic setting” was “the same” as an episode of Hilton’s reality TV show: “Paris Hilton, born to privilege, working as a waitress.”88 On the other hand, the “unsubtle evocation[ ]” of country singer plaintiffs as “half-human and half-worm” comic book villains, was sufficiently transformative for the First Amendment to trump the right of publicity.89 The California Supreme Court emphasized that the comic book’s depiction of the plaintiffs as monsters would be an “unsatisfactory substitute for conventional depictions.”90 At least one commentator contends “the ‘transformative use’ test is strictly limited to visual artistic images which appear in a nonadvertising context.”91

2. New York: Publicity as privacy.

In contrast to California’s property-based regime, New York has never expanded the right of publicity beyond its privacy-based origins.92 In Stephano v. News Group Publications, Inc., the Court of Appeals of New York rejected the existence of any “common-law right of publicity,” holding that any action sounding in publicity rights must be brought under New York’s statutory right to privacy.93 New York’s privacy statute, originally passed in 1903,94 provides a cause of action to “[a]ny person whose name, portrait, picture or voice is used within this state for advertising purposes or for the purposes of trade without [ ] written consent first obtained.”95 The 1903 statute was the first legislation passed vindicating Warren and Brandeis’s right to privacy,96 and has been

85 See supra note 79 and accompanying text. 86 Literally—Hilton has registered the phrase “That’s hot” as a trademark with the Patent and Trademark Office. Hilton, 599 F.3d at 899. 87 Id. at 911. 88 Id. 89 Winter v. DC Comics, 69 P.3d 473, 479 (Cal. 2003). 90 Id. See also Kirby v. Sega of Am., Inc., 50 Cal. Rptr. 3d 607, 616 (Cal. Ct. App. 2006) (holding that “notwithstanding certain similarities” video game character was sufficiently transformative to preclude right of publicity claim brought by singer, emphasizing that the character was not a “literal depiction” of the plaintiff, and, unlike plaintiff, was a “space-age reporter in the 25th century”). 91 McCarthy, supra note 6, at § 8:27. It is worth noting the existence of two other doctrines that attempt to balance the right of publicity with the First Amendment. The “predominant use” test “asks whether the accused use predominantly exploits the commercial value of an individual’s identity,” id. at § 8:23, while the Rogers test is intended to accommodate First Amendment concerns in the context of falsity-based claims, id. Neither has been widely adopted in right of publicity cases. Id. 92 See supra notes 19–26 and accompanying text. 93 Stephano, 474 N.E.2d at 583–84. 94 Id. at 583. 95 N.Y. Civ. Rights Law § 51. 96 Beebe, supra note 18, at 653.

12 identified as the prototypical example of the early, privacy-based publicity right.97 New York right of publicity law therefore provides a modern example of publicity rights tethered to a privacy-based rationale, and a telling contrast to California’s property-based, copyright-inspired regime. Although New York’s privacy statute protects a similar list of attributes as California’s statutory right, courts’ relatively narrow construction of those attributes has led to meaningfully narrower protections than California’s common law right in practice. Courts have interpreted the statute to protect only the attributes listed, “not a character . . . or a role performed by a living person.”98 For example, a New York street entertainer known as the “Naked Cowboy,” and recognizable by his distinctive “white cowboy hat, white cowboy boots, white underpants, . . . acoustic guitar,” and Times Square location, could not bring a cause of action against Mars for an ad featuring an identically dressed M&M in Times Square.99 Contrasting Mars’s ad with the facts of White illustrates how much narrower New York’s protections are as compared to California’s (and other jurisdictions applying a similar “attributes of identity” standard). In both cases, the defendant advertiser appropriated the outfit and distinctive setting of a well-known public persona for a non-human, but humanoid, character (a robot in White, anthropomorphic candy in Burck).100 However, unlike California’s common law, which protects these “attributes of identity,” New York’s statutory right of publicity does not give rise to liability for “[m]erely evoking certain aspects of another’s character or role.”101 For the same reason, courts applying New York law have declined to allow right of publicity actions against video game makers who allegedly based characters on real people, when there was no use of the plaintiff’s actual name, photograph, or performance as an actor.102 Numerous cases have similarly rejected claims based on thinly fictionalized depictions of the plaintiffs, so long as a pseudonym was used.103

97 Dogan & Lemley, supra note 2, at 1169. 98 Burck v. Mars, Inc., 571 F. Supp. 2d 446, 448–49 (S.D.N.Y. 2008). 99 Id. at 449, 452. 100 Compare White, 971 F.2d at 1396 with Burck, 571 F. Supp. 2d at 449. Wheel of Fortune is surely a more distinctive setting than Times Square, given the relative numbers of people who regularly traverse each location, but it seems clear the Naked Cowboy has more distinctive attire than Vanna White. Any suspicion the cases are distinguishable on their facts should be at least partially alleviated by the Burck court’s citation of White’s conclusion there was no cause of action under California’s right of publicity statute to support its own holding. Id. at 453. 101 Burck, 571 F. Supp. 2d at 452. See also Allen v. Nat’l Video, Inc., 610 F. Supp. 612, 623 (S.D.N.Y. 1985) (“The privacy law does not prevent one from evoking certain aspects of another’s personality.”). 102 Gravano v. Take-Two Interactive Software, Inc., 37 N.Y.S.3d 20, 22 (N.Y. App. Div. 2016). In contrast, EA did not even contest that very similar facts would give rise to a cause of action under California’s right of publicity action. See In re NCAA Student-Athlete Name & Likeness Licensing Litigation, 724 F.3d 1268, 1271–73 (9th Cir. 2013) (noting that EA did not contest that complaint alleging use of college football players’ digital likenesses, but not names or jersey numbers, in NCAA Football game, stated a right-of-publicity claim under California law). 103 See, e.g., Greene v. Paramount Pictures Corp., 138 F. Supp. 3d 226, 233 (E.D.N.Y. 2015) (“New York courts have consistently dismissed [right of publicity] claims based on the use of a fictitious name, even if the depiction at issue evokes some characteristics of the person or the person is identifiable by reference to external sources.”); Wojtowicz v. Delacorte Press, 295

13 Though narrower in terms of subject matter, New York’s right of publicity law is as broadly available as California’s (and most other jurisdictions’),104 protecting celebrities and noncelebrities alike.105 As discussed above, the universal availability of the right is likely a better fit for New York’s privacy-based right of publicity than California’s copyright-inspired regime.106 The practical impact of New York and California’s divergent rationales is especially apparent when one considers the different “bundle of sticks” each state’s publicity rights afford. Of particular note is the fact that, unlike in California and most other jurisdictions that recognize the tort, publicity rights in New York are neither assignable nor descendible.107 This limitation, obviously inconsistent with a conception of publicity rights as property rights, has been linked directly to the underlying privacy-, as opposed to property-, based rationale underlying New York’s statutory right of publicity.108 The theoretical underpinnings of New York’s right of publicity regime are also apparent, to some extent, in the remedies it provides. New York’s privacy statute allows a prevailing plaintiff to “prevent and restrain the [unauthorized] use [of her name, portrait, picture or voice],” to “recover damages for any injuries sustained by reason of such use,” or to recover “exemplary damages” in cases of knowing use.109 Explicitly citing the tort’s underlying privacy justification, some courts have held that compensatory money damages should primarily be available for emotional distress.110 Though some judges and

N.Y.S.2d 205, 206 (N.Y. App. Div. 1977) (“Plaintiffs’ names, portraits or pictures not having been used in either the movie or the books, no cause of action based on [New York’s privacy statute] is stated and it matters not that it may be clear that the plaintiffs were actually being depicted therein or that the movie and books described the story as true.”). 104 McCarthy, supra note 6, at § 6:84. 105 Onassis v. Christian Dior-New York, Inc., 472 N.Y.S.2d 254, 260 (N.Y. App. Div. 1984) (“[A]ll persons, of whatever station in life, from the relatively unknown to the world famous, are to be secured against rapacious commercial exploitation.”). 106 See supra notes 48–51 and accompanying text. 107 Price v. Hal Roach Studios, Inc., 400 F. Supp. 836, 844 (S.D.N.Y. 1975) (“Since the theoretical basis for the classic right of privacy, and of the statutory right in New York, is to prevent injury to feelings, death is a logical conclusion to any such claim . . . [and] such a right of privacy is not assignable during life.”), abrogated in part by Stephano, 474 N.E.2d at 584; Brinkley v. Casablancas, 438 N.Y.S.2d 1004, 1010 (N.Y. App. Div. 1981) (“New York Courts have found the statutory right of privacy to be neither descendible nor assignable.”). Note that both cases predate Stephano, which rejected the possibility of a New York common law right of publicity in addition to the protections of the privacy statute. Price held such a right did exist, and that the common law right, contrary to the statutory right, was property-based and thus descendible. Price, 400 F. Supp. at 844. 108 Id.; Lombardo v. Doyle, Dane & Bernbach, Inc., 396 N.Y.S.2d 661, 661 (N.Y. App. Div. 1997) (noting that because “[t]he statutory right is deemed a ‘right of privacy’ and is based upon the classic right of privacy’s theoretical basis, which is to prevent hurt feelings” it “is not assignable during one’s lifetime and terminates at death”). 109 N.Y. Civ. Rights Law § 51. 110 Lerman v. Flynt Distrib. Co., Inc., 745 F.2d 123, 141 (2d Cir. 1984) (“[D]amages under the New York statute often are only nominal since they are designed primarily to compensate for injury to feelings.”); Lombardo, 396 N.Y.S.2d at 661 (noting that because “[t]he statutory right is

14 at least one commentator contend this limitation is no longer good law after Stephano,111 other judges have continued to cabin the available remedies by reference to the privacy rationale.112 As in California, courts applying New York law have attempted to accommodate the right of publicity to free speech concerns. Rather than creating doctrines comparable to the “public interest” and “transformative use” tests, New York courts have achieved deemed a ‘right of privacy’ . . . in most cases where damages have been awarded . . . they have been nominal”). But see Gautier v. Pro-Football, Inc., 106 N.Y.S.2d 553, 560 (N.Y. App. Div. 1951) (“[W]here a cause of action under the Civil Rights statute has been established, damages may include recovery for a so-called ‘property’ interest inherent and inextricably interwoven in the individual’s personality.”). Gautier cited Redmond v. Columbia Pictures Corp., 14 N.E.2d 636 (N.Y. 1938) for the proposition that recovery for a property interest was available under § 51. Redmond makes no reference to the property interest theory, simply affirming with scant discussion an Appellate Division judgment increasing a damages award from six cents to $1,500. See generally id. The Appellate Division judgment was without opinion, see Redmond v. Columbia Pictures Corp., 1 N.Y.S.2d 643 (N.Y. App. Div. 1937), but it is worth noting that the defendant in the original trial had argued no substantial damages should be awarded because “there was no injury to plaintiff’s feelings,” Redmond, 14 N.E.2d at 636. At least one later case cited Gautier for the proposition that damages for injury to a property interest are available under § 51, though it emphasized that “[t]he New York decisions hold that a person like plaintiff can recover substantial damages for mental distress and disturbance of peace of mind.” Manger v. Kree Inst. of Electrolysis, 233 F.2d 5, 9 n.5 (2d Cir. 1956). 111 McCarthy, supra note 6, at § 6:97. The cases McCarthy cites for the proposition, do not, however, appear to offer unambiguous support. Welch v. Mr. Christmas Inc., 440 N.E.2d 1317 (N.Y. 1982) likely comes closest. In that case, the New York court of appeals upheld a jury award of $1,000 in compensatory damages. Id. at 1319. The defendants had entered a contract with Welch establishing an option to pay Welch $1,000 to use his performance in their advertising for 1974. Id. They then used the performance in a subsequent year without paying him. Id. As pointed out in a lower court dissent, the $1,000 award was likely reached on the theory that it was “the equivalent of another option year possibility, exercised in fact if not by express provision.” Welch v. Mr. Christmas Inc., 447 N.Y.S.2d 252, 255 (N.Y. App. Div. 1982) (Kupferman, J., dissenting in part). Stephano does not appear to discuss damages at all, other than to note that they are available under the statute and sought by the plaintiff. Stephano, 474 N.E.2d. Beverly v. Choices Women’s Med. Ctr., Inc., 587 N.E.2d 275 (N.Y. 1991) does affirm a $50,000 compensatory damages award, id. at 753, but never specifies that said award was not for emotional distress, see generally id. See also generally Beverley v. Choices Women’s Med. Ctr., Inc., 565 N.Y.S.2d 833 (N.Y. App. Div. 1991) (upholding $50,000 compensatory damages award without noting what compensation was for). Marshall v. Marshall, No. 08 CV 1420(LB), 2012 WL 1079550 (E.D.N.Y. March 30, 2012), explicitly disputed “the notion, still cited by some courts in this Circuit, that damages under the New York statute often are only nominal since they are designed primarily to compensate for injury to feelings.” Id. at *27 n.49. However, Marshall cites an earlier edition of McCarthy as the sole support for this conclusion. See id. But see Marano v. Aaboe, No. 05 Civ. 9375(BSJ)(RLE), 2010 WL 6350785, at *6 (S.D.N.Y. 2010) (recommending award of compensatory damages determined according to plaintiff model’s normal licensing fee), adopted No. 05 Cv 9375(BSJ), 2011 WL 1157553 (S.D.N.Y. 2011). 112 Zoll v. Ruder Finn, Inc., No. 02 Civ. 3652(CSH), 01 Civ. 1339(CSH), 2004 WL 527056, at *3 (S.D.N.Y. 2004) (predicting that damages would “be limited to a nominal amount” because “[d]amages from claims based on New York Human Rights Law § 51 are designed primarily to compensate for injured feelings”) (quotations omitted).

15 similar results by strictly construing the statutory requirement of use “for advertising purposes or for the purposes of trade.”113 Thus “reports of newsworthy events or matters of public interest” have been found not to qualify as “advertising or trade,” in a self- conscious effort to accommodate “constitutional values in the area of free speech.”114 The exclusion is “broadly construed,” reaching “not only descriptions of actual events, but also articles concerning political happenings, social trends or any subject of public interest.”115 Indeed, New York’s newsworthiness doctrine has been found to protect everything from celebrity gossip116 to a video, published on WorldStarHipHop.com, of a fistfight between two Berkeley College students.117 The treatment of newsworthy media vis a vis the requirement of use in advertising or trade therefore parallels the protections California’s public interest test provides. The use in trade or advertising requirement also provides protection that overlaps to some extent with that of the transformative use test. In this case, however, the First Amendment protection provided by the statute appears to be stronger than the judge- made doctrine. Recall that the transformative use test protects use of a celebrity’s likeness if it is “so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness.”118 While this test serves to put some works of art outside the reach of the right of publicity if a court thinks them sufficiently transformative, New York courts have held works of art,119 fiction, satire, and comedy120 categorically outside the scope of “trade” or “advertising.” As in the newsworthiness cases, these exceptions have been applied with First Amendment values explicitly top-of-mind.121 Since there is no requirement the use be transformative, the First Amendment protection built into courts’ interpretation of the New York statute is necessarily more broadly available than that offered by California’s transformative use test. New York law creates two other exceptions to the privacy statute, both dubbed “incidental use.”122 The first protects “isolated or fleeting and incidental uses of a person’s name or image, even if unauthorized,” in an effort to avoid “impos[ing] an undue burden on publishers.”123 The second, related to the newsworthiness exception, protects “incidental” use in advertising for newspapers, magazines, and other “news

113 Hoepker v. Kruger, 200 F. Supp. 2d 340, 348 (S.D.N.Y. 2002) (“The advertising and trade limitation in New York’s privacy statutes was crafted with the First Amendment in mind.”). 114 Messenger ex rel. Messenger v. Gruner + Jahr Printing & Publ’g, 727 N.E.2d 549, 552 (N.Y. 2000). 115 Id. 116 Edme v. Internet Brands, Inc., 968 F. Supp. 2d 519, 529 (E.D.N.Y. 2013) (“[T]his article can be considered, for better or worse, a matter of public interest merely because its subject matter involved a celebrity.”). 117 Scott v. WorldStarHipHop, Inc., No. 10 Civ. 9538(PKC)(RLE), 2012 WL 1592229, at *4 (S.D.N.Y. 2012). 118 See supra note 81 and accompanying text. 119 Altbach v. Kulon, 754 N.Y.S.2d 709, 712 (N.Y. App. Div. 2003) (“In addition to the so-called ‘newsworthiness’ exception . . . there is a well-recognized exception for works of art.”). 120 Costanza v. Seinfeld, 693 N.Y.S.2d 897, 900 (N.Y. App. Div. 1999). 121 See, e.g., Altbach, 754 N.Y.S.2d at 712 (finding the defendant’s flyers “entitled to protection under the First Amendment and excerpted from New York’s privacy protections”). 122 McCarthy, supra note 6, at § 6:90. 123 D’Andrea v. Rafla-Demetrious, 972 F. Supp. 154, 157 (E.D.N.Y. 1997).

16 disseminators,”124 so long as it “illustrates the content” of the works promoted.125 Like the newsworthiness exception, this iteration of the incidental use exception is motivated by the “First Amendment interest” in facilitating the distribution of newsworthy works.126

B. False Endorsement under the Lanham Act

The Lanham Act is a federal law of trademarks and unfair competition,127 not an intellectual property regime.128 Unlike the Copyright Act and the Patent Act, the Lanham Act was promulgated pursuant to the Commerce Clause, not the Patent and Copyright Clause.129 Instead of providing trademark owners with property rights in their trademarks, the Lanham Act’s protections serve two functions. First, the Lanham Act reduces consumer search costs by ensuring product quality matches the expectations associated with particular marks.130 Strengthening the association between a trademark and the goods it identifies in turn gives the producers of those goods incentives to maintain quality, knowing that if they fail to do so their marks will lose consumers’ goodwill.131 Both purposes serve the ultimate goal of making markets more competitive.132 Although there is near-universal agreement among commentators on these economic, consumer- oriented justifications for trademark law,133 in recent years commentators have decried the partial transformation of the Lanham Act into an intellectual property regime.134

124 Stern v. Delphi Internet Servs. Corp., 626 N.Y.S.2d 694, 697 (N.Y. App. Div. 1995). 125 Groden v. Random House, Inc., 61 F.3d 1045, 1049 (2d Cir. 1995). 126 Stern, 626 N.Y.S.2d at 700. 127 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767–68 (1992). 128 See Stacey L. Dogan & Mark A. Lemley, The Merchandising Right: Fragile Theory or Fait Accompli?, 54 Emory L.J. 461, 467 (2005); Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687, 1694 (1999). 129 Beebe, supra note 19, at 15. 130 Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423, 1429–30 (7th Cir. 1985); Barton Beebe, The Semiotic Analysis of Trademark Law, 51 UCLA L. Rev. 621, 623 (2004); Mark P. McKenna, The Normative Foundations of Trademark Law, 82 Notre Dame L. Rev. 1839, 1844 (2007). 131 Euroquilt, 772 F.2d at 1430; Beebe, supra note 130, at 623; McKenna, supra note 130, at 1844. 132 Euroquilt, 772 F.2d at 1429–30. 133 McKenna, supra note 130, at 1844 (“It would be difficult to overstate the level of consensus among commentators that the goal of trademark law is—and always has been—to improve the quality of information in the marketplace and thereby reduce consumer search costs.”). 134 Id. at 1846–47. See also, e.g., Lemley, supra note 128, at 1687–88 (bemoaning fact that “[c]ommentators and even courts increasingly talk about trademarks as property rights”). Much of the criticism focuses on dilution, McKenna, supra note 130, at 1846, which provides a cause of action when similarity between the defendant’s mark and the plaintiff’s famous, distinctive mark creates an association that will impair the distinctiveness or harm the reputation of the plaintiff’s mark, regardless of the likelihood of consumer confusion, Louis Vitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 264–65 (4th Cir. 2007). However, dilution is not the only trademark doctrine that has been criticized for straying too far from trademark’s doctrinal underpinnings. McKenna, supra note 130, at 1846.

17 Certain attributes of identity may themselves be registered as trademarks, leading to overlapping protection from both trademark law and the right of publicity.135 Indeed, it is common for celebrities’ names136 and other distinctive attributes of identity137 to be registered as trademarks. However, like descriptive marks,138 a personal name can only serve as a trademark if it has acquired secondary meaning—that is to say, if it has come to indicate the origin of some good or service.139 Requiring secondary meaning should, hypothetically, cabin the protection trademark provides for attributes of identity to situations implicating consumer confusion, and thus the underlying purpose of the Lanham Act. However, the widespread registration of celebrity names as trademarks, and in particular celebrities whose names seem very unlikely to have acquired secondary meaning, such as certain celebrities’ young children,140 suggests trademark is being used to protect attributes of identity in contexts with little risk of consumer confusion. The potential for the Lanham Act to create property-like rights in certain personas is even more evident in the context of false endorsement cases. False endorsement claims are brought under § 43(a) of the Lanham Act, which creates a cause of action against:

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof . . . likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.141

Section 43(a) applies to registered and unregistered marks alike.142 Courts have therefore held that even plaintiffs who have not registered their names or other indicia of identity as a trademark with the PTO may bring false endorsement claims under § 43(a), on the theory that the defendant’s use of their identity gave rise to consumer confusion as to

135 Recall that Paris Hilton has registered the phrase “That’s hot” as a trademark with the Patent and Trademark Office, thus providing trademark protection on top of that afforded by California’s common law right of publicity. See supra note 86. 136 See, e.g. MICHAEL JORDAN, Registration No. 3539462; DONALD TRUMP, Registration No. 3243102; IVANKA TRUMP, Registration No. 5342101; KIM KARDASHIAN WEST, Registration No. 4978865; KANYE WEST, 5217031; JERRY SEINFELD, Registration No. 3526927. 137 See, e.g. THAT’S HOT, Registration No. 4649417. See also Mark S. Lee, Entertainment and Intellectual Property Law § 13:5 (2017) (“[T]he Patent and Trademark Office routinely grants trademark registrations to celebrity names or images.”). 138 A descriptive mark is one that describes some “characteristic or quality” of the relevant good or service. Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 (5th Cir. 1983). For example, “Fish-Fri” is a descriptive mark when used to identify “corn flour . . . used to fry fish and other seafood.” Id. at 788, 792. 139 Beebe, supra note 130, at 76. 140 See, e.g., U.S. Trademark Application Serial No. 86883293 (filed Jan. 22, 2016) (seeking mark BLUE IVY CARTER in connection with goods and services including, but not limited to, fragrances, cosmetics, key chains, baby carriages, mugs, basketballs, and online video games). 141 15 U.S.C. § 1125(a). 142 See 15 U.S.C. § 1125.

18 their sponsorship, approval, or connection with the defendant’s goods.143 In such cases, the celebrity plaintiff’s persona is treated as the “mark.”144 False endorsement suits brought by celebrities are common enough that the Ninth Circuit has created a modified version of the Sleekcraft factors, the test used to “determin[e] whether there exists a likelihood of confusion,” specially adapted “so as to be applicable to [ ] celebrity cases.”145 Perhaps unsurprisingly, celebrities who bring false endorsement claims under the Lanham Act often bring simultaneous right of publicity claims under applicable state law.146 The purposes of the Lanham Act and its emphasis on consumer confusion notwithstanding, a recent Ninth Circuit case saw a false endorsement claim used to enforce something more akin to a property right in celebrity personas. In Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., the heirs of reggae icon Bob Marley sued purveyors of t-shirts and other merchandise bearing Marley’s likeness.147 Applying the modified Sleekcraft factors, the Ninth Circuit upheld a jury finding that selling a t-shirt with Bob Marley’s image on it was likely to confuse consumers into believing that Marley (or, presumably, someone associated with Marley, the man himself having died in 1981)148

143 Downing, 265 F.3d at 1007. 144 Id. 145 Id. The Sleekcraft factors are:

1. strength of the plaintiff’s mark; 2. relatedness of the goods; 3. similarity of the marks; 4. evidence of actual confusion; 5. marketing channels used; 6. likely degree of purchaser care; 7. defendant’s intent in selecting the mark; and 8. likelihood of expansion of the product lines.

When applied in celebrity cases, they are stated as:

1. the level of recognition that the plaintiff has among the segment of the society for whom the defendant’s product is intended; 2. the relatedness of the fame or success of the plaintiff to the defendant’s product; 3. the similarity of the likeness used by the defendant to the actual plaintiff; 4. evidence of actual confusion; 5. marketing channels used; 6. likely degree of purchaser care; 7. defendant’s intent on selecting the plaintiff; and 8. likelihood of expansion of the product lines.

Id. at 1007–08. 146 See, e.g., id. at 1000; A.V.E.L.A., 778 F.3d at 1066; Pirone v. MacMillan, Inc., 894 F.2d 579, 581 (2d Cir. 1990); Roberts v. Bliss, 229 F. Supp. 3d 240, 243, 253–54 (S.D.N.Y. 2017). 147 A.V.E.L.A., 778 F.3d at 1066. 148 Hua Hsu, Manufacturing Bob Marley, NEW YORKER (July 24, 2017), http://www.newyorker.com/magazine/2017/07/24/manufacturing-bob-marley.

19 had authorized the defendant’s use of his likeness.149 The decision mechanically applied the Sleekcraft factors in a manner that ignored the underlying purposes of the Lanham Act, which should animate the consumer confusion inquiry. Consumer confusion is not a harm unto itself, but only problematic insofar as it impacts consumer’s purchasing decisions.150 If consumers are confused, but in a way irrelevant to their purchasing decisions, their confusion will have no impact on the competitiveness of the market.151 As Judge Morgan Christen pointed out in concurrence, it seems highly unlikely that consumers in the market for a Bob Marley t-shirt particularly care whether the Bob Marley t-shirt they buy is officially endorsed by his heirs or not.152 All they want is a shirt with Bob Marley on it. If anything, the court’s application of § 43(a) to this merchandising case undercuts the purposes of the Lanham Act. By reducing the number of purveyors of Bob Marley t-shirts, the court reduces competition in the Marley t-shirt market.153 The conceptual error underlying the decision is most evident in its treatment of the crucial fourth Sleekcraft factor, evidence of actual confusion. In holding that the fourth factor favored the plaintiffs, the court relied heavily on a survey in which thirty- seven percent of respondents, when shown one of the defendants’ Bob Marley t-shirts and asked “Who do you think gave their permission or approval for this particular T-shirt to be made or put out?” answered “Bob Marley/the person on the shirt or his heirs, estate, or agents.”154 Reliance on this evidence fails to vindicate the purposes of the Lanham Act for two reasons. First, the survey apparently made no effort to determine whether the consumers’ confusion would influence their purchasing decisions. Second and most significantly, there is ample evidence that the survey results reflect not an especially confusing use of a celebrity’s likeness, but a widely held misconception regarding the legal status of unauthorized merchandise.155 This conclusion is supported by empirical evidence, including a survey that found 91.2% of respondents believed that “No product can bear the name of an entertainer, cartoon character, or some other famous person unless permission is given for its use of the owner of the name or character.”156 It is also

149 A.V.E.L.A., 778 F.3d at 1069–72. 150 See Dogan & Lemley, supra note 128, at 488. 151 See id. 152 A.V.E.L.A., 778 F.3d at 1084 (Cristen, C.J., concurring) (“[R]ather than being deceived by the mark on the product being purchased, the facts suggest that consumers may have received exactly what they bargained for: a T-shirt with Bob Marley on the front.”). Despite his criticism of the majority’s treatment of the fourth Sleekcraft factor, Cristen concurred in the result because “several other [Sleekcraft] factors support the jury’s finding of consumer confusion.” Id. at 1085. This conclusion is slightly surprising, given Cristen’s insistence that “a finding of actual confusion under § 43(a) must be supported by some evidence that the confusion could have had an impact on consumers’ purchasing decisions,” and his suspicion that “consumers may have received exactly what they bargained for.” Id. at 1084–85. The contradiction is probably best explained by the case’s procedural posture, which required a high degree of deference to the jury’s verdict. See id. at 1085. 153 Dogan & Lemley, supra note 128, at 481. 154 A.V.E.L.A., 778 F.3d at 1069. 155 Id. at 1084 (Cristen, C.J., concurring). 156 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:12 (5th ed. 2018). See also Dogan & Lemley, supra note 124, at 485–86.

20 supported by the results of the survey relied on in A.V.E.L.A. itself. Respondents were asked why they believed Bob Marley or his heirs had authorized the use of his image on the t-shirt; many responded that the law required such permission.157 One particularly telling response: “I’m assuming there’s some sort of copyright.”158 The apparent circularity of the consumer confusion inquiry calls the result in A.V.E.L.A. into serious doubt. There is no reason that courts should respond to lay legal confusion by creating a heretofore nonexistent copyright-like property right in Bob Marley’s likeness via the Lanham Act,159 especially when there is no reason to believe the confusion affects purchasing decisions or undercuts competition. The court’s treatment of the confusion question undercuts its insistence that the decision in A.V.E.L.A. does not “create[ ] a federal right of publicity.”160 The Ninth Circuit relied on the “additional element” of consumer confusion to distinguish the right it created under the Lanham Act from state right of publicity claims.161 But if 91.2% of consumers believe authorization is necessary to use a celebrity’s image on merchandise, and thirty-seven percent is sufficient to satisfy the confusion element, than the Lanham Act will, in fact, function as a federal right of publicity in virtually every case involving unauthorized merchandise. Indeed, the most telling portions of the A.V.E.L.A. decision are not its lengthy discussion of consumer confusion, but two off-hand remarks describing the right § 43(a) creates in celebrity personas. An early section noting the applicability of § 43(a) to celebrity personas is titled “Hope Road has a property right under the Lanham Act to Marley’s persona.”162 Later, citing White, the court noted that “this court already treats a celebrity’s persona as identifiable intellectual property under the Lanham Act.”163 It was once thought that the Lanham Act did not create property rights, but the Ninth Circuit’s treatment of the consumer confusion issue could eviscerate that principle, at least as applied to celebrity personas.164 Earlier cases illustrate a better approach to the consumer confusion inquiry in the context of celebrity false endorsement cases. The Second Circuit case Pirone v. MacMillan was prompted by “the inclusion of three Babe Ruth photos” in The 1988 MacMillan Baseball Engagement Calendar.165 The Second Circuit rejected the plaintiff’s § 43(a) claim, recognizing that “the photographs . . . indicate the contents of the calendar, not its source.”166 In short, the Second Circuit recognized that consumers who bought the

157 A.V.E.L.A., 778 F.3d at 1070. 158 Id. at 1084 (Cristen, C.J., concurring). 159 See Dogan & Lemley, supra note 128, at 486 (“The idea that once-legal conduct becomes illegal simply because the public believes it is illegal seems like bootstrapping.”). 160 A.V.E.L.A., 778 F.3d at 1072. 161 Id. at 1072–73. 162 Id. at 1068. 163 Id. at 1073. 164 The Ninth Circuit noted that the defendants in A.V.E.L.A. had waived a number of possible defenses by failing to raise them sooner. Id. at 1067–68 n.1. It is of course possible that had these defenses been properly raised, the case would have come out differently. However, the waived defenses, which included an aesthetic functionality defense, a Copyright Act defense, and a First Amendment defense, would not have altered the court’s consumer confusion analysis. 165 Pirone, 894 F.2d at 581. 166 Id. at 584.

21 calendar because of the Babe Ruth photos “have received exactly what they bargained for: a [calendar] with [Babe Ruth] on the front.”167 Some courts have continued to (correctly) consider the distinction between content and sponsorship when deciding merchandising cases, thus better effectuating the underlying purpose of the Lanham Act.168 On the other hand, at least some other courts appear to be taking an approach more akin to the Ninth Circuit’s in celebrity merchandising cases. A recent Southern District of New York case involving virtually identical facts as A.V.E.L.A. (including the same defendants, now embroiled in litigation stemming from t-shirts bearing the likeness of martial arts legend Bruce Lee), declined to apply Pirone169 and denied a defense motion for summary judgment despite the fact that survey evidence showed even less actual confusion than similar surveys in A.V.E.L.A.170 As argued in greater detail in the following Part,171 the intuition that appears to be driving this application of the Lanham Act—that there should be some property right in particularly distinctive and well-known celebrity personas—is not necessarily incorrect. Moreover, the quasi-property right the Ninth Circuit appears to have established by way of the Lanham Act is in some ways superior to existing property-based right of publicity regimes.172 For instance, it appears to do a better job cabining the right to cases where it is actually needed to incentivize socially-desirable behavior thanks to the requirement that the plaintiff have attained a high “level of recognition . . . among the segment of the society for whom the defendant’s product is intended.”173 Similarly, the third Sleekcraft

167 Compare supra note 152 and accompanying text. 168 See, e.g., Lemon v. Harlem Globetrotters Intern., Inc., 437 F. Supp. 2d 1089, 1099 (D. Ariz. 2006) (“Defendants use Plaintiffs’ names and likenesses on the Apparel but not in advertisements . . . such use of a celebrity’s image on a product is vastly different from the advertising use of celebrities’ likenesses.”) (emphasis in original) (quotation marks omitted). Unlike the plaintiffs in A.V.E.L.A., the plaintiffs in Lemon did not produce survey evidence of actual confusion. Id. at 1097. 169 The court distinguished Pirone because unlike the calendar, which contained pictures of players other than Babe Ruth, the t-shirts at issue featured only Bruce Lee. It also noted that the actual source of the calendar was more prominently displayed than the source of the Bruce Lee t- shirt. Bruce Lee Enters. LLC v. A.V.E.L.A., Inc., No. 10 CV 2333(KMW), 2013 WL 822173, at *20 (March 6, 2013). Although Judge Kimba Wood acknowledged that the image of Bruce Lee was “the primary reason a consumer would decide to purchase the t-shirt,” she does not appear to have engaged with the question whether confusion as to sponsorship was likely to affect that purchasing decision. 170 Id. at *22. 171 See infra notes 182–228 and accompanying text. 172 Indeed, some commentators have argued the Lanham Act is the appropriate model for reforming the right of publicity. See generally Dogan & Lemley, supra note 6. In contrast to Dogan and Lemley, I believe certain aspects of a trademark-based publicity right are laudable because they resemble features of copyright law, rather than due to any trademark-specific qualities of protection under the Lanham Act. 173 The level of recognition the plaintiff has attained in the relevant segment of society is the first Sleekcraft factor (as modified for use in celebrity false endorsement cases). Downing, 265 F.3d at 1007. For more on why it is preferable to limit the right to the especially well known, see Part III.B.1.

22 factor, “the similarity of the likeness used by the defendant to the actual plaintiff,”174 may help stymie efforts to use the right to block mere competitors, as opposed to actual uses of the plaintiff’s identity.175 However, using the Lanham Act to create a quasi-property right in celebrity personas is likely to come at a price. For one thing, a consumer protection regime like the Lanham Act will lack doctrines designed to strike the appropriate balance between incentivizing the creation of public goods and making those goods appropriately available to the consuming public. In particular, the closest analog to copyright’s fair use doctrine, “nominative fair use,” focuses narrowly on product identification, sponsorship, and endorsement.176 While appropriate to the consumer protection context, this focus provides courts with less flexibility to strike the appropriate balance between the right holder’s interest in exclusivity and First Amendment values.177 Furthermore, using the Lanham Act to create a quasi-property right in human identity could establish precedent that would leak over into other areas of trademark. For instance, if the analysis in A.V.E.L.A. were to become well established in celebrity false endorsement cases, it might also be taken to stand for a more general property-like merchandising right.178 These considerations suggest the corresponding advantages, discussed in greater detail in the following part, of creating a property right in human personas via a legal regime specifically designed to act as an intellectual property doctrine: copyright itself.

II. COPYRIGHT IN NONFICTIONAL CHARACTERS

Courts179 and commentators180 alike have frequently analogized the right of publicity to copyright. Until now, however, it has generally been taken as a given that

174 See Downing, 265 F.3d at 1008. 175 See Part III.B.2. 176 See New Kids on the Block v. News Am. Pub’g, Inc., 971 F.2d 302, 308 (9th Cir. 1992). The Ninth Circuit created the nominative fair use defense in New Kids on the Block, noting three requirements for its invocation:

First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

Id. 177 As argued below, copyright’s fair use regime is a more flexible tool for striking that balance. See infra notes 389–393 and accompanying text. 178 For consideration and criticism of such a right, see generally Dogan & Lemley, supra note 128. 179 See, e.g., Zacchini, 433 U.S. at 573 (describing the state interest underlying the right of publicity as “closely analogous to the goals of . . . copyright law”); Saderup, 21 P.3d at 804 (“The right of publicity, like copyright, protects a form of intellectual property that society deems to have some social utility.”). 180 Madow, supra note 2, at 206 (collecting scholarship comparing right of publicity to copyright). See also, e.g., Kevin S. Marks, Note, An Assessment of the Copyright Model in Right of Publicity

23 copyright itself offers no protection to actual (as opposed to fictional) human personas.181 This Section argues that assumption is mistaken, and that the right of publicity/copyright analogy can be taken to its logical conclusion by extending copyright protection for fictional characters to the nonfictional identities of certain well-known persons.

A. Should Publicity Rights Exist At All?

Before discussing why copyright is an appropriate doctrine to create property rights in celebrity personas, and the advantages of that approach, it is worth considering whether such a property right is needed at all. Prominent commentators have mounted compelling attacks on the right of publicity generally,182 as well as the copyright analogy specifically.183 Professor Michael Madow attacks an incentives-based justification for the right of publicity by questioning its foundational premise: that legal protection against unauthorized use of attributes of identity incentivizes socially beneficial behavior.184 According to Madow, the right of publicity “protects only a collateral source of income for actors, athletes, and entertainers,” whose socially beneficial pursuit of fame is already more than adequately induced by other forms of compensation, in particular salaries in the millions of dollars.185 Madow also argues that publicity rights are not necessary to ensure that celebrities capture the value of their personas.186 In a world without publicity rights, he asserts, celebrities could still “capture a substantial chunk of the merchandising and promotional value attached to their personas” by receiving fees for the personal services involved in commercial endorsements (such as appearing in a commercial or actually using the product), contracting to prevent the sale of unauthorized merchandise at, say, concerts, or simply because consumers will desire “official” merchandise.187 Finally, Madow suggests that “uniquely powerful noneconomic motivations”—to wit, “the desire for fame itself,” “the satisfaction of realizing and exercising one’s talents,” and “the pleasure of winning people’s applause . . . love . . . awe . . . respect or gratitude”—may be sufficient to incentivize fame absent legal exclusivity in its economic fruits.188 Similar arguments have been put forth by other commentators.189

Cases, 70 Calif. L. Rev 786, 787 (1982) (“This Comment concludes that personal and societal interests in right of publicity cases are best advanced under a common law scheme that parallels copyright law.”). 181 See, e.g., Downing, 265 F.3d at 1004 (“A person’s name or likeness is not a work of authorship within the meaning of 17 U.S.C. § 102.”); KNB Enters. v. Matthews, 92 Cal. Rptr. 2d at 365 (“[A] human likeness is not copyrightable.”); Lee, supra note 137, at § 13:2 (“[C]opyright in a person appears unlikely, if not impossible.”); McCarthy, supra note 6, at § 5:41 (“[T]he human identity . . . is not protected by copyright.”). 182 See generally, e.g., Goldman, supra note 1. 183 See, e.g., Dogan & Lemley, supra note 2, at 1186–90; Madow, supra note 2, at 206–19. 184 Madow, supra note 2, at 208 (“[T]here are a number of reasons to believe that the incentive effect of the right of publicity is in fact very slight.”). 185 Id. at 209–10. 186 Id. at 211. 187 Id. 188 Id. at 214–15. 189 See, e.g., Dogan & Lemley, supra note 2, at 1187–88; Diane Leenheer Zimmerman, Fitting Publicity Rights into Intellectual Property and Free Speech Theory: Sam, You Made the Pants

24 Madow and others also suggest that even if the right of publicity does change behavior, it may do so in ways that are not, in fact, socially desirable. Madow argues that to the extent the right of publicity does work as an incentive, it may contribute to overinvestment in the pursuit of celebrity.190 He suggests legal exclusivity in publicity rights only exacerbates existing market failures caused by the high visibility of successful sports stars, entertainers, and the like relative to unsuccessful ones, information asymmetries (most people are more aware of the ritzy lifestyle celebrities lead than the long odds of achieving that level of success), and the fact that such fields are likely to attract those prone to “narcissism, vanity, fantasy, and self-deception.”191 As a result, Madow claims, we may have too many failed basketball stars and actresses, and too few “great engineers or computer programmers.”192 Additionally, drawing on the work of sociologist Harry Edwards, Madow speculates that the overinvestment effect may be especially significant vis a vis certain demographic groups, in particular young black men.193 Professors Dogan and Lemley put the argument in somewhat blunter terms, writing “it is not at all clear that society should want to encourage fame for fame’s sake.”194 These arguments are compelling. As acknowledged elsewhere, Madow and others are surely correct that there is good reason to limit the availability of property rights in attributes of identity.195 It may even be that no such property right is worth its attendant costs, particularly to freedom of speech and expression. Be that as it may, criticism of the incentives rationale is probably overstated, at least vis a vis the modern media landscape. In particular, Madow and other commentators who question the effectiveness of a property right in human identity as a behavior-altering incentive failed to anticipate several developments that have increased the relative value of (at least some) publicity rights. As a result of these developments, legal protection for the use of public personas protects more significant revenue streams for certain celebrities (or would-be celebrities) than critics of the incentives rationale acknowledge. It may still be that the benefits of the marginal incentives thus created do not outweigh the costs of legal exclusivity, but it should be acknowledged that those incentives are not wholly inconsequential. Moreover, in considering the best source, if any, of such legal exclusivity, it is worth considering what revenue streams property rights in identity are most important to protect. The most significant of the developments referenced above is the rise of a breed of celebrities whose most important product is not independent intellectual property (such as books, art, or music) or traditional performance (such as music, sports, or comedy) but their own personas. The most notorious example of this phenomenon is likely the

Too Long!, 10 DePaul J. Art & Ent. L. 283, 306 (2000) (“Not a shred of empirical data exists to show that anyone would change her behavior . . . if she knew in advance that, after achieving fame, she would be unable to capture licensing fees from putting her face on sweatshirts or coffee mugs.”). 190 Madow, supra note 2, at 216. 191 Id. at 216–17. 192 Id. at 216. Madow’s article was published in 1993, perhaps explaining his assumption that a career as a computer programmer was mutually exclusive with celebrity status. 193 Id. at 218–19. 194 Dogan & Lemley, supra note 2, at 1188. 195 See supra notes 48–52 and accompanying text.

25 Kardashians, the Los Angeles family who transformed themselves from (charitably) D- list celebrities to a multimillion dollar “megafranchise,” not by singing songs, playing sports, or writing books, but by broadcasting the content of their day-to-day lives to the consuming public, via nine reality television shows and various social media channels with a “combined . . . reach of 700-million plus followers.”196 Thanks largely to social media, the Kardashians are hardly alone in making a career (or at least trying to) by selling their lives and personas as both entertainment and brand. A significant number of people now make a living doing nothing other than documenting their own lives on social media platforms (in particular the photo-sharing mobile app Instagram).197 Those who amass large enough followings can make six-figure salaries.198 A large number of such “influencers” fall into the “lifestyle” genre,199 suggesting that their business model is really a small-scale version of the Kardashians’—they make a living by letting others consume their lives and personas. The income streams the right of publicity protects are unlikely to be merely collateral or negligible for public figures whose main product is, in fact, their persona. Take, as an example, Kim Kardashian. It is no doubt true that a significant portion of the $45.5 million she made in 2017200 could have been captured without property rights in her own persona. For instance, some amount of Kardashian’s income is presumably attributable to her share of the (alleged) $80 million contract the Kardashians signed with E! Entertainment to continue to appear in the television show that originally catapulted them to fame.201 The show itself, of course, is protected by an existing intellectual property doctrine: copyright. Similarly, Kardashian “can earn upwards of an estimated $300,000 per sponsored post on Instagram.”202 Kardashian’s exclusive ability to endorse products via her Instagram page should be adequately protected by § 43(a) of the Lanham Act and her exclusive control over her social media channels.203

196 Leslie Bruce, The Kardashian Decade: How a Sex Tape Led to a Billion-Dollar Brand, HOLLYWOOD REPORTER (Aug. 16, 2017, 6:00 AM), http://www.hollywoodreporter.com/features/kardashian-decade-how-a-sex-tape-led-a-billion- dollar-brand-1029592. 197 Rosie Fitzmaurice, This is exactly how much Instagram stars in the UK get paid per post, BUSINESS INSIDER (Sep. 24, 2017), http://www.businessinsider.com/how-much-do-instagram- stars-get-paid-per-post-2017-9. 198 Mary Hanbury, A 26-year old woman racked up $10,000 of debt after trying to become an Instagram star — and it reveals a huge issue with the platform, BUSINESS INSIDER (March 7, 2018), http://www.businessinsider.com/instagram-stars-reveal-dark-side-social-media-2018-3. Others, of course, are not so lucky. See generally id. 199 Fitzmaurice, supra note 197. 200 Natalie Robehmed, How Kim Kardashian Bounced Back to $45.5 Million – And a New Cosmetics Company, FORBES (June 13, 2017, 6:29 PM), http://www.forbes.com/sites/natalierobehmed/2017/06/13/how-kim-kardashian-west-bounced- back-to-45-5-million-and-a-new-cosmetics-company/#3436d5188f59. 201 Bruce, supra note 196. 202 Robehmed, supra note 200. 203 This assumes, of course, that no knock-off Kim Kardashian Instagram accounts could undercut her following. So long as Instagram requires each user to maintain a unique handle, this seems unlikely. Presumably, when it comes to social media posting, consumers prefer the real deal, and thus as long as Instagram’s business practices make it easy to identify the authentic

26 However, publicity rights are relevant to other lines of business Kardashian uses to leverage her persona. In particular, a significant percentage of Kardashian’s income is derived from a pair of mobile apps that use her identity not as a signifier of origin or endorsement, but, as in the case of t-shirts bearing Bob Marley or Bruce Lee’s likeness, as a key feature of the product itself.204 Kim Kardashian: Hollywood is a mobile game modeled on Kardashian’s celebrity lifestyle, allowing players to “[c]reate [their] own aspiring celebrity and rise to fame and fortune,” as well as “hang out with Kim herself.”205 Kimoji similarly leverages attributes of Kardashian’s identity as product rather than signaling mechanism, giving users access to “1000+ [Kardashian-themed] emoji, stickers, and GIFs.”206 This digital Kardashian merchandise accounts for no small proportion of the value Kardashian derives from her persona. In 2016, Kim Kardashian: Hollywood accounted for forty percent of Kardashian’s income.207 Kimoji was the basis for a business expansion last year. Kardashian has begun selling physical merchandise based on the emojis, including a “pool float in the design of [her] derriere.”208 Presumably, consumers in the market for pool floats in the shape of Kardashian’s rear “receive[ ] exactly what they bargain[ ] for” if the float accurately depicts its well-known model, regardless of whether they purchase an official, $98 version,209 or a cheaper knock-off (perhaps produced by A.V.E.L.A.). This final point is important, because once Kardashian creates and brings to market a product like Kim Kardashian: Hollywood or Kimoji that specific product will be protected by intellectual property doctrines independent of her publicity rights, in particular copyright. Similarly, if Bob Marley’s heirs sell a t-shirt with a particular illustration of Bob Marley on it they themselves created (or otherwise own the rights to) copyright will protect the use of that particular illustration, regardless of whether there are broader protections guaranteeing the exclusive right to sell t-shirts with any depiction of Bob Marley on them. What is at stake in asking whether Kardashian should have a property right in her persona, therefore, is not whether she can block second-comers from copying Kim Kardashian: Hollywood or Kimoji specifically, but whether she can block use of her identity in any sort of mobile app, guaranteeing herself a monopoly in the market for mobile apps (and other merchandise) featuring Kim Kardashian. It is certainly plausible that the broader right is unnecessary, and that existing protections for the

@kimkardashian she will maintain exclusivity in this market. Moreover, a traditional false endorsement claim (requiring evidence of genuine consumer confusion as to endorsement, rather than the more questionable inquiry made in A.V.E.L.A., see supra notes 143–73 and accompanying text) would be adequate to address a knock-off account that falsely implied Kardashian used or endorsed a particular product. Unauthorized but accurate claims that a celebrity uses a product in advertising for that product may present a more serious problem, but presumably Kardashian could self-help by carefully avoiding public use of products made by companies she believed she could otherwise extract endorsement fees from. 204 Robehmed, supra note 200. 205 Kim Kardashian: Hollywood, APP STORE PREVIEW, http://itunes.apple.com/us/app/kim- kardashian-hollywood/id860822992?mt=8. 206 KIMOJI, APP STORE PREVIEW, http://itunes.apple.com/us/app/kimoji/id1068019093?mt=8. 207 Robehmed, supra note 200. 208 Id. 209 Id.

27 independent intellectual property involved in creating celebrity merchandise is sufficient incentive on its own. There is, however, some reason to think that Kardashian’s ability to leverage merchandise as a source of revenue would be significantly impaired if she had to rely on copyright alone to guarantee legal exclusivity. Unlike other forms of independent intellectual property, such as a singer’s songs or a writer’s books, Kardashian has no particular expertise in the creation of these forms of intellectual property. The value she adds to these business lines is their content—her persona—rather than their creation, which she presumably hires out. If she had no legal exclusivity in the former, she might be at a particular disadvantage in a marketplace where she had to compete with more skilled app designers and programmers with equal access to the value she adds—the creation of her public persona. Perhaps that would be desirable, if it led to superior Kim Kardashian emojis and pool floats thanks to a more competitive market. But it might lead to no market for Kim Kardashian products at all (or at least a reduced one), if it removed her incentives to develop an especially famous public persona. A particularly apt analogy is to copyright’s protection for derivative works.210 In a world where the Copyright Act did not grant authors the exclusive right “to prepare derivative works based upon the copyrighted work,”211 the author could still receive copyright protection for the derivative work itself once they created it. So, for example, having written A Game of Thrones, author George R.R. Martin could still obtain copyright protection for its sequel, A Clash of Kings. However, he could not block other authors from writing their own sequels to A Game of Thrones. Again, such a world might be preferable—perhaps a more competitive market would lead to superior sequels.212 The Copyright Act’s protection for derivative works, however, is premised on the notion that exclusivity in that market is a significant marginal incentive for Martin to write A Game of Thrones in the first place. It seems at least plausible that a similar story can be told about publicity rights and merchandise. Of course, there are existing legal tools that give Kardashian the exclusive right to produce a mobile game like Kim Kardashian: Hollywood or a package of Kim-themed emojis like Kimoji: the right of publicity and (at least in the Ninth Circuit) false endorsement claims under the Lanham Act. However, as argued in the following sections, these are not the only, nor, perhaps, the ideal, legal tools for creating such a right. In any event, the main takeaway for purposes of addressing criticisms of the incentives-producing function of publicity rights is that it seems unlikely that revenue streams accounting for more than 40% of Kardashian’s income are wholly irrelevant to her incentives to create and maintain a persona consumers derive utility from following. Therefore protecting those revenue streams with some degree of legal exclusivity may

210 Especially because, as explained below, protection for derivative works would be a particularly significant element of copyright protection for nonfictional characters. See supra notes 297–299 and accompanying text. 211 17 U.S.C. § 106(2). Section 101 of the Copyright Act defines a derivative work as “a work based upon one or more preexisting works.” 212 Moreover, this author can certainly imagine advantages to a world where authors other than Martin were legally authorized to try their hand at completing the long-awaited final two installments of the A Song of Ice and Fire series.

28 well affect Kardashian’s behavior,213 or at least the behavior of other people with similar business models. Indeed, if anything, influencers who operate exclusively on social media are more likely to be affected by a property right in the identities they provide for the pleasure of their followers. Unlike Kardashian, a lifestyle Instagram star makes no money from the actual broadcast of her persona. Some other source of revenue is needed to incentivize the Instagram star to lead and share a life others enjoy following. One possible source of such revenue is endorsements. Even influencers with smaller followings than Kardashian can charge companies (more modest) fees to post content related to certain products and services.214 This revenue stream is likely safe regardless of what property rights influencers have in their personas, given the fact that the endorsement usually takes place on the influencers’ own social media channel, and that a false endorsement claim (a more traditional one, requiring evidence of meaningful consumer confusion) would provide adequate protection. However, a significant number of Instagram stars have attempted to leverage their digital fame into other lines of business as Kardashian has, selling physical products online or even in brick and mortar stores.215 One “influencer marketing firm” executive suggests that “if you want to make serious money” by being an Instagram star “you have to do something more diverse” than “just . . . making brand deals.”216 That sales of physical (or perhaps, like Kardashian, digital) products are a significant source of income for social media stars suggests an exclusive property right in personas is more important to incentivizing the pursuit of this new form of celebrity than Madow might have imagined in 1993. Publicity rights are also more significant in the context of these smaller-scale social media influencers because it seems more likely such a right is needed to achieve a socially optimal number of Instagram stars. It is far from clear how many Kardashian-like clans the market could bear, but the somewhat singular nature of their success might well suggest the answer is one. If that is the case, and if incentives that do not depend on publicity rights are sufficient to incentivize the Kardashian’s pursuit of fame, then legal tools that create marginal incentives for the Kardashian’s have little in the way of social utility. At best they might encourage someone to replace the Kardashians, with no net gain in the social utility consumers gain from following the lives of wealthy, attractive people who are incredibly famous for being incredibly famous. On the other hand, the large number of lesser social media influencers tends to suggest marginal incentives are more likely to be relevant to achieving socially optimal investment in the pursuit of Instagram stardom. Whether the current level of investment is already ideal, or could be improved either by providing publicity rights through a different legal doctrine (namely copyright, as suggested by this Paper) or doing away with such rights altogether, is of course an entirely separate question.217

213 It is certainly possible that Kardashian would be adequately incentivized by the $80 million television deal and the possibility of making $300,000 by posting a photograph to Instagram. 214 Fitzmaurice, supra note 197. 215 Elisabeth Mahy, Instagram stars: From influencers to entrepreuners, BBC NEWS (March 18, 2018), http://www.bbc.com/news/business-43389924. 216 Id. 217 For more discussion of this question, see infra notes 224227 and accompanying text.

29 Finally, there is reason to think that the viability of business models akin to Kardashian’s or the most successful influencers is becoming increasingly significant to the production of more traditional forms of intellectual property, such as music. The prevalence of digital piracy has made it more difficult for artists to make money selling their intellectual property itself.218 As a result, other sources of revenue, such as endorsements, performance fees, and, of particular significance in the context of publicity rights, merchandise, have become more significant.219 In short, as copyright becomes a less effective means of protecting traditional forms of intellectual property, which are easily shared online, revenue from more easily policed physical products is likely to play a more important role in incentivizing the creation of the intellectual property. As a result, the situation Madow described may reverse itself, with the revenue streams protected by publicity rights becoming a more significant incentive to produce intellectual property, while sales of the intellectual property itself become a “collateral” revenue stream.220 This is also a partial answer to the second major criticism of the incentives- rationale described above: that property rights in identity, even if they do incentivize the pursuit of fame, are not incentivizing particularly socially beneficial behavior. Some readers may have reached a similar conclusion during the discussion of the Kardashians (and perhaps other social media influencers) above. However, even aside from the possibility that rights best protected by exclusivity in identity are likely to become more important to the production of more traditional forms of intellectual property in the near future, there is market evidence to suggest that consumers derive significant social utility from the public personas alone. Keeping Up With the Kardashians is E! Entertainment’s highest-rated show, and the Kardashians together have over 700 million followers on social media.221 Even lesser-known Instagram influencers can have millions of followers.222 Admittedly, this market evidence is not a perfect proxy for the social value of celebrity. However, absent other, better means of measuring the utility created by such personas, the law should be reluctant to ignore the collective judgment of the consuming public. To put the argument in the words of Justice Oliver Wendell Holmes, “if they command the interest of the public, they have a commercial value,—it would be bold to

218 See Capitol Records, Inc. v. Thomas-Rasset, 692 F.3d 899, 908 (8th Cir. 2012) (“[C]opyright infringement through online file-sharing has become a serious problem in the recording industry . . . revenues across the industry decreased by fifty percent between 1999 and 2006, a decline that the record companies attributed to piracy.”). 219 An extreme example of the shift is provided by Chicago hip-hop artist Chancelor Bennett (better known as Chance the Rapper). By age 24, Bennett had amassed a reported $9 million fortune without selling a single CD or digital download. Kristen Bahler, How Chance the Rapper, a 24-Year-Old With No Record Label, Became the Youngest Person on Forune’s 40 Under 40 List, MONEY (Aug. 17, 2017), http://time.com/money/4901591/chance-the-rapper-youngest-40- under-40/. Rather than selling his intellectual property directly, Bennett monetizes his music through “merchandise and ticket sales.” Id. This strategy works better, of course, if Bennett has an exclusive right to sell Chance the Rapper merchandise. 220 See supra note 185 and accompanying text. 221 Bruce, supra note 196. 222 Brian Rashid, 15 Top Instagram Influencers You Should Follow, FORBES (June 10, 2017 9:00 AM), http://www.forbes.com/sites/brianrashid/2017/06/10/15-top-instagram-influencers-you- should-follow/#1b07c71e6001.

30 say that they have not an aesthetic and educational value,—and the taste of any public is not to be treated with contempt.”223 What of Madow’s related argument, that aside from the question of the social value of the pursuit of fame for fame’s sake, protecting publicity rights leads to greater investment in the pursuit of fame than is socially optimal?224 There is certainly evidence of greater-than-socially-optimal investment in the pursuit of the Instagram influencer lifestyle.225 Of course the same might be said of copyright itself. There are presumably more failed novelists and singer-songwriters than successful ones. This overinvestment in the arts is likely the result of the same information asymmetries Madow argues leads to overinvestment in fame—the high visibility of successful writers and musicians, low visibility of the large number of failures, and particular likelihood that these careers attract aspirants “especially likely both to overestimate their talents . . . and to underestimate the quality of their competition.”226 More importantly, it is far from clear that eliminating publicity rights is the solution to the problem Madow identifies. If anything, removing the protection of legal exclusivity from the use of celebrity identities might exacerbate the information asymmetries Madow argues lead to overinvestment in the pursuit of celebrity. Eliminating legal exclusivity in the use of celebrity identities could only lead to more such use, making celebrities like Kardashian more visible than they already are (especially relative to people who have pursued fame unsuccessfully). Furthermore, there is reason to believe consumers are profoundly misinformed regarding the legal requirements (or lack thereof) for the use of a celebrity’s identity.227 Therefore removing any right of legal exclusivity to use a celebrities’ attributes of identity may not remove the general public’s assumption that such uses are creating economic value for the celebrity themselves. The average person may well assume that the unauthorized uses of a celebrity’s identity that would proliferate absent publicity rights redound to the celebrity’s financial benefit. The result could be an even more misinformed calculus in deciding whether or not to pursue fame as a lifestyle influencer on Instagram. To be clear, the preceding paragraphs are far from a full-throated defense of the incentives-rationale for publicity rights, particularly as applied in existing law. As the examples drawn on suggest, it seems likely that a property right in persona is a significant incentive for the production of socially useful content in a relatively limited number of cases. It is certainly the case, as argued earlier, that such a right probably does absolutely no work to incentivize behavior of any kind on the part of the many ordinary, non-fame seeking people the right of publicity is nevertheless available to.228 Moreover, publicity rights are most relevant to a finite number of income streams—in particular celebrity- branded merchandise. While critics of the incentives rationale underestimate the significance of this source of income, it is surely true that other sources of revenue exist.

223 Bleistein, 188 U.S. at 252. 224 See supra notes 190193 and accompanying text. 225 See, e.g., Christian Gollayan, My quest for Instagram stardom left me in financial ruin, NEW YORK POST (March 3, 2018 10:29 AM), http://nypost.com/2018/03/03/my-quest-for-instagram- stardom-left-me-in-financial-ruin/. 226 Madow, supra note 2, at 217. 227 See supra notes 156158 and accompanying text. 228 See supra notes 49–56 and accompanying text.

31 It is therefore an open question whether a property right in human personas should be available at all. However, if such a right is going to be made available, the above analysis sheds light on what form it should take. If we are to have property-based publicity rights at all, they should be adequate to protect those sources of income not already protected by the Lanham Act, protections for independent intellectual property, or the simple fact that a celebrity alone controls their provision of certain personal services, such as performance. On the other hand, such a right should also be tailored, in terms of both its availability and scope of protection, to those situations where it can actually be expected to incentivize desirable behavior. The rest of this paper suggests that the doctrinal tools to create such a tailored right are more easily located in copyright than existing state right of publicity laws or the Lanham Act. The rest of this Part demonstrates that certain public personas are appropriately thought of as works of authorship that can and should qualify for protection under the Copyright Act. Part III compares the protections copyright can offer public personas to the current regime of publicity rights and argues that copyright better vindicates the incentive-producing function of a property right in attributes of identity.

B. Nonfictional Characters: Publicity Rights Under the Copyright Act

Prior assumptions that human personas are ineligible for copyright protection229 have failed to fully consider the relationship between certain celebrities, their public- facing identities, and the consuming public. Celebrities (or quasi-celebrities) such as Kardashian or successful lifestyle influencers make deliberate choices to project a specific persona to the public—choices comparable to the decisions creators of more traditionally copyrightable works make in authoring those works. These choices happen at two stages. First, there are decisions about what aspects of life and attributes of identity should be broadcast. An Instagram star decides which meal or vacation photos to post. Kardashian decides which pictures of her children to disseminate on social media or, via employees of E! Entertainment, which moments of her day-to-day life should be broadcast on cable television and which moments should be left on the cutting room floor. These decisions are (in some cases directly) analogous to those made by film editors in deciding what shots to put in the finished movie, authors in deciding what chapters stay in the final manuscript, or photographers in choosing how to frame a shot. A second type of authorial decision made in the creation of a public persona occurs in the course of living life. Kardashian decides where to travel, what brands to wear, even, if rumors are to be believed, who to marry, in order to create a persona salacious and enviable enough to help sustain her family’s multimillion dollar empire.230 Similarly, the Instagram lifestyle star does more than just decide which meals and vacation photos to post. He decides what meals to eat and where to travel as part of an effort to lead a life other Instagram users will want to follow.231 These decisions are comparable to those made by, say, a film stylist designing the costumes for a movie’s

229 See supra note 181 and accompanying text. 230 See Bruce, supra note 196. 231 See, e.g., Hanbury, supra note 198.

32 characters, a comic book artist creating a superhero’s distinctive look, or a novelist deciding what their characters will do and say next. In short, Kardashian and various other celebrities of varying levels of fame sell their lives as stories, which the public consumes in much the way it consumes television shows, films, and novels. At the center of these stories are the authors themselves, who not only write but also star as the central characters in the stories of their lives. This analogy is highly relevant to the copyrightability of personas, because courts have long held that the copyright protections available for television shows, films, and novels extend in some cases beyond the works themselves to the characters depicted therein.232

1. Extending copyright protection for fictional characters to nonfictional personas.

Not only are at least some public personas currently protected by the right of publicity appropriately thought of as works of authorship eligible for copyright, the basic framework for providing such protection already exists in copyright doctrine. As argued above, these personas are best thought of as a type of nonfictional character, authored by the celebrity themselves.233 Copyright protection has been available for some (though, crucially, not all) fictional characters, separate and apart from the works they appear in, since the early Twentieth Century.234 The Ninth Circuit’s most recent formulation of the doctrine governing the copyrightability of fictional characters offers a useful framework for considering how copyright protections could apply to nonfictional personas. As discussed in greater detail below, doctrine defining which fictional characters are copyrightable demonstrates not only that copyright could be extended to nonfictional identities, but might also place socially desirable limits on the availability of that protection. In DC Comics v. Towle, the Ninth Circuit formulated a three-part test to determine whether a given fictional character is eligible for copyright protection.235 The court concluded that to qualify for copyright protection, a “character must generally have physical as well as conceptual qualities.”236 Second, it must be “sufficiently delineated to be recognizable as the same character whenever it appears.”237 Finally, a “character must be especially distinctive and contain some unique elements of expression” as opposed to being “a stock character.”238 Comparing the Towle factors to the typical celebrity persona demonstrates the conceptual fit between copyright protections for characters and publicity rights. The first factor is the most obviously satisfied. As actual human beings, public personas have a

232 See, e.g., Olson v. Nat’l Broad. Co., 855 F.2d 1446, 1452 (9th Cir. 1988). 233 See supra notes 229231 and accompanying text. 234 See generally Hill v. Whalen & Martell, 220 F. 359 (S.D.N.Y. 1914). See also Walt Disney Prods. v. Air Pirates, 581 F.2d 751, 754 (9th Cir. 1978) (“[C]ases dating back to 1914 . . . have held comic strip characters protectable under the old Copyright Act.”). 235 DC Comics v. Towle, 802 F.3d 1012, 1021 (9th Cir. 2015). Towle decided whether the Batmobile was copyrightable. Id. at 1019. 236 Id. at 1021 (quotation marks omitted). 237 Id. (quotation marks omitted). 238 Id. (quotation marks and citations omitted).

33 physical appearance, which, like comic book, movie, and television characters, makes it more likely they are distinctively delineated and contain “unique elements of expression.”239 In most cases a public persona’s “physical qualities” will be fixed in a tangible medium of expression, in particular photographs posted to social media.240 Similarly, there can be little doubt that at least some (though certainly not all) nonfictional personas could qualify as “sufficiently delineated to be recognizable . . . whenever [they] appear[ ].” Kardashian, for instance, is surely recognizable to her fans wherever she appears, whether on her Instagram, in Keeping Up with the Kardashians or Kim Kardashian: Hollywood, in pool float or emoji form, or in the 450-page book Selfish.241 This is thanks to her distinct physical and conceptual qualities: the unique look,242 luxurious lifestyle, and excessive family drama. By way of comparison, the Ninth Circuit held the Batmobile sufficiently delineated thanks to its consistent “bat-like appearance,” “high-tech gadgets and weaponry,” and high level of interactivity.243 Presumably most celebrities would meet this standard—recognition is in the nature of celebrity. Even some public personas of significantly lesser stature than Kardashian could likely qualify. A successful social media influencer will have developed a sufficiently consistent and recognizable persona so as to be recognizable whenever they appear.244 To the extent that a public persona is not so recognizable, copyright draws a useful line denying protection where it is less likely to provide socially beneficial incentives.245 For similar reasons, better-known public personas would generally qualify as “especially distinctive.”246 The most novel conceptual move in applying the Towle framework to a nonfictional persona might be defining aspects of that persona as “unique elements of expression.” May attributes of identity be properly thought of as “elements of expression”? A moment’s reflection reveals that the answer is surely yes. What could be more expressive than the choices we make in presenting ourselves to the world, both in

239 See Air Pirates, 581 F.2d at 755. 240 For more on copyright’s fixation requirement as applied to nonfictional personas, see infra notes 288289. A persona that was fixed only in non-visual mediums, perhaps in the form of a blog, might have more difficulty qualifying for copyright protection. This is the case with purely literary fictional characters as well. See, e.g., Warner Bros. Pictures v. Columbia Broad. Sys., 216 F.2d 945, 950 (9th Cir. 1954) (holding characters from the novel The Maltese Falcon ineligible for copyright protection). 241 Stephanie Burt, Kim, Caitlyn, and the People We Want to See, NEW YORKER (July 27, 2015), http://www.newyorker.com/culture/cultural-comment/kim-caitlyn-and-the-people-we- want-to-see. Selfish is, essentially, a coffee table book of Kardashian’s selfies. Id. 242 See Bruce, supra note 196 (discussing the uniqueness of Kardashian’s “look” when Keeping Up with the Kardashians first aired). 243 Towle, 802 F.3d at 1021–22. 244 See Fitzmaurice, supra note 197 (discussing the importance of “authenticity and originality . . . defining [a niche] in a unique way” to success as an Instagram star). 245 For more on the usefulness of the “sufficiently delineated” and “especially distinctive” factors as cabining principles, see infra notes 282287 and accompanying text. 246 Compare Towle, 802 F.3d at 1022 (noting that the distinct qualities that make the Batmobile sufficiently delineated also make it especially distinctive).

34 terms of physical appearance and the aspects of life we choose to share with the public at large?247

2. Other Requirements for Copyright Protection

Of course, the Towle factors are not the end of the story. To extend copyright to nonfictional personas, a court would have to find that other, generally applicable requirements of the Copyright Act were satisfied as well. This section considers the two most significant possible objections based on other prerequisites for copyright eligibility. One possible objection to the copyrightability of nonfictional personas is copyright’s fixation requirement. To qualify for copyright protection, a work must be “fixed in any tangible medium of expression.”248 According to the Copyright Act’s definition, a work is “fixed” “when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.”249 Presumably, therefore, a performance art piece that was not recorded or otherwise embodied in a “tangible medium” could not benefit from copyright’s protection. For that reason, the fixation requirement might once have presented a serious obstacle to copyrighting nonfictional personas, which are authored by a sort of lived performance.250 However, the modern ubiquity of social media means that the fixation requirement will be met by virtually all public personas. In a time when almost all celebrities have some social media presence, and when, as discussed above, those most in need of property rights in their identity create extensive, publicly available records of their day-to-day lives, the resulting Instagram photos, Facebook posts, and tweets should easily satisfy the fixation requirement.251 While it is true that such written or pictorial content is also a work of authorship, eligible for copyright in its own right, the same is true of the Batmobile and other characters originally portrayed in separately copyrightable games,

247 See Burt, supra note 241 (describing “self-fashioning” as “the presentation of what and who you are, not as something fixed and secret, to cherish in private, but as an example, something you yourself created (with help) in order to make your way in the world”). By way of analogy, it is worth noting that First Amendment doctrine has recognized expressive value in personal appearance. See, e.g., Cohen v. California, 403 U.S. 15, 20 (1971). 248 17 U.S.C. § 102(a). 249 17 U.S.C. § 101. 250 Indeed, it seems likely the fixation problem is one significant reason courts initially looking to create property rights in celebrity personas turned to privacy law as opposed to copyright doctrine. 251 See, e.g., Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1157 (9th Cir. 2007) (assuming, without discussion, that photographs posted on a website qualified for copyright protection). Of course, in some cases celebrities might fix their personas in other, more traditional media forms. Kardashian, for instance, appears in a television show. Note, though, that her appearance on Keeping Up with the Kardashians should probably not be credited to the work of authorship that is her persona, because she is unlikely to be the author of the show for copyright purposes. See Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 60 (1884) (holding that the photographer is the author of a photograph for purposes of copyright). See also Garcia v. Google, Inc., 786 F.3d 733, 743–44 (9th Cir. 2015) (holding actress’s performance ineligible for copyright protection in part because “[s]he never fixed her acting performance in a tangible medium”).

35 movies, and television shows. It thus stands to reason that, like those fictional characters, a nonfictional persona satisfies the fixation requirement if it appears in a tangible medium of expression. Note, however, that the fixation requirement helps cabin the scope of copyright protection for nonfictional personas. It stands to reason that in applying the Towle factors, courts should credit a nonfictional persona with only those physical and conceptual qualities that have actually been fixed in a tangible medium of expression, via display on social media or in some other format. By way of comparison, if a stock character in a comic book has an expansive backstory in the writer’s mind, detailed enough to provide both delineation and distinctiveness, said backstory would matter not one wit if its details were never committed to paper. The same should hold true for nonfictional personas. The fact that the additional detail exists in the world, rather than the author’s head, should make no difference. The fixation requirement means only those attributes of identity that are fixed in a tangible medium of expression should qualify as part of the work of authorship being considered for copyright protection. As a result, a persona must be actively communicated to the public to qualify for copyright, helping to limit copyright’s protection to contexts where it is most likely to incentivize the creation of public goods.252 Another potential obstacle to copyright protections for nonfictional personas is the long-standing recognition that copyright protection cannot extend to facts.253 If copyright cannot protect the contents of a nonfiction book254 or the nonfictional contents of a news report,255 how can it extend to the identity of an actual person who exists in the real world? However, this objection misconceives the nature of the work of authorship to be copyrighted. The expressive work in this context is the persona itself, not the facts of the relevant person’s life. The fact that the persona exists in the real world should make no difference to its status as an expressive work. To draw a comparison, a statue is an object that exists in the real world. Facts about that statue, such as the fact that it is cast in bronze, depicts Swedish naturalist Carl von Linné, or is fifteen feet tall are not copyrightable and may therefore be disseminated freely, including in other copyrightable works such as news reports or books that discuss the statue in question. The statue itself, however, is nevertheless copyrightable, and therefore may not be copied by other sculptors or form the basis for derivative works in other mediums of expression. Similarly, the facts that Kim Kardashian has black hair, has worn a certain dress, or is five feet three inches tall256 are not copyrightable and may be reported freely. However, unauthorized use of Kardashian’s persona as a character in a video game, or an image of her in an unauthorized soda commercial, would violate her copyright in her own identity. Nor would it be correct to conceive of that identity as nothing more than a

252 See infra notes 288289 and accompanying notes. 253 International News Serv. v. Assoc. Press, 248 U.S. 215, 234 (1918) (holding facts ineligible for copyright protection). 254 Or even one merely purporting, dubiously, to be nonfiction. See Nash v. CBS, Inc., 899 F.2d 1537, 1538, 1542–43 (7th Cir. 1990). 255 International News Serv., 248 U.S. at 234. 256 Tiffany Bailey, The Kardashian and Jenner sisters – How do they measure up against each other?, KARDASHIAN DISH, http://kardashiandish.com/2017/08/14/the-kardashian-and-jenner- sisters-how-do-they-measure-up-against-each-other/ (last visited May 13, 2018).

36 collection of uncopyrightable facts about Kardashian’s life. The Towle analysis demonstrates that for purposes of copyright a persona, fictional or nonfictional, is properly thought of as a collection of characteristics—for instance personality quirks, physical appearance, or unusual talents.257 Those characteristics, the sum of how a person chooses to present herself to the world, are the attributes of identity that together form the quintessential embodiment of expression: one’s identity.

III. COPYRIGHT FOR NONFICTIONAL CHARACTERS IN PRACTICE

This Paper has argued that if property rights in attributes of identity can be justified by an incentives-rationale, the Copyright Act would be an appropriate source for those rights. However, it has yet to address whether copyright is a preferable avenue for creating such rights as compared to the status quo. By considering how copyright protection for nonfictional personas would function in practice, this Part aims to demonstrate that copyright, unquestionably an intellectual property doctrine, better balances the beneficial incentives of a property-based publicity right with the detrimental effects exclusivity has on the public. Furthermore, using copyright to vindicate the intuition that some property rights should exist in human identity would allow courts to cabin other doctrines protecting publicity rights according to their underlying rationales. The right of publicity could return to its roots as a privacy doctrine, and the Lanham Act could be strictly restricted to its stated purpose of preventing consumer confusion. Walling off each of the overlapping rationales for publicity rights in doctrines whose tools are uniquely suited to vindicate that right, would help better effectuate those rationales and avoid undesirable overprotection. This Part begins by discussing the interaction of copyright in nonfictional personas with the existing protections for identity described in Part I. Next, it compares the scope of copyright protection with the scope of those protections, focusing in particular on how widely available each right is and what unauthorized uses lead to liability under each doctrine. Finally, it considers the ability of existing copyright doctrines, in particular fair use, to accommodate free speech concerns when the First Amendment conflicts with the exclusive right to make use of a celebrity’s persona.

A. Copyright Preemption, the Right of Publicity, and the Lanham Act

The first, most important consideration is how much of the current publicity rights regime could coexist with copyright protections for attributes of identity. The Copyright Act contains an express preemption provision, stating that “all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright . . . and come within the subject matter of copyright . . . are governed exclusively by this title.”258 Courts have interpreted this language to establish a two-part test to determine

257 See Towle, 802 F.3d 1021–22 (describing the Batmobile’s “distinct physical and conceptual qualities” as well as its “consistent character traits and attributes”). 258 17 U.S.C. § 301(a). In some instances, state right of publicity claims may be preempted by the Copyright Act as a result of conflict rather than express preemption. McCarthy, supra note 6, at § 11:48. Conflict preemption is beyond the scope of this Paper, since, as explained infra, express

37 whether a state law is preempted by the Copyright Act. First, “the work at issue [must be] within the subject matter of copyright as defined in § 102 and § 103 of the Copyright Act.” Second, the right created by state law must be “equivalent to any of the exclusive rights within the general scope of copyright as specified in § 106.”259 Heretofore, most courts confronted with the issue have held that state right of publicity laws are not preempted by federal copyright.260 However, many such decisions rest on the first part of the preemption test. Because courts have assumed that the subjects of a right of publicity claim, human identity or persona, are per se uncopyrightable, they have concluded the right of publicity is not expressly preempted by the Copyright Act.261 Moreover, in some cases where courts have concluded that the subject matter of a right of publicity claim was within the subject matter of copyright (usually because the appropriated attribute of identity was wholly embodied within a clearly copyrightable work, such as an audio recording or a video), they have found the right of publicity claim preempted by copyright.262 Accepting this Paper’s argument that human identity or persona is in fact within the subject matter of copyright thus eliminates the chief objection to copyright preemption of right of publicity claims.263 Some commentators and a few courts have concluded that even in cases where the subject matter of the right of publicity claim is within the subject matter of copyright, the right of publicity claim is still not preempted because it is “not equivalent to any of the

preemption would likely eliminate property-based right of publicity laws if courts were to recognize copyright in human personas. 259 See, e.g., Ray v. ESPN, Inc., 783 F.3d 1140, 1142 (8th Cir. 2015) (quoting Nat’l Car Rental Sys., Inc. v. Comput. Assocs. Int’l, Inc., 991 F.2d 426, 428 (8th Cir. 1993)). See also, e.g., Jules Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d 1146, 1153 (9th Cir. 2010); Nat’l Basketball Ass’n v. Motorola, Inc., 105 F.3d 841, 848 (2d Cir. 1997); McCarthy, supra note 6, at § 11:47. 260 McCarthy, supra note 6, at § 11:50. See also Jennifer E. Rothman, Copyright Preemption and the Right of Publicity, 36 U.C. Davis L. Rev. 199, 225 (2002) (“[F]ew courts have found that copyright preempts the right of publicity.”). 261 See, e.g., Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1028 (3rd Cir. 2008) (“Copyright law does not expressly preempt the right of publicity because an individual’s identity or persona is outside the subject matter of copyright.”); Toney v. L’Oreal USA, Inc., 406 F.3d 905, 910 (7th Cir. 2005) (“A person’s likeness—her persona—is not authored and it is not fixed.”); Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619, 623 (6th Cir. 2000) (holding plaintiff’s right of publicity claim unpreempted because his “personal identity” is “an inchoate ‘idea’ which is not amenable to copyright protection); Brown v. Ames, 201 F.3d 654, 658 (5th Cir. 2000) (“A persona does not fall within the subject matter of copyright.”); Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992) (holding singer-songwriter’s misappropriation claim not preempted because the right claimed was “to control the use of his identity as embodied in his voice”). 262 See, e.g., Ray, 783 F.3d at 1142–44; Jules Jordan, 617 F.3d at 1153–55; Laws v. Sony Music Entm’t, Inc., 448 F.3d 1134, 1139–45 (9th Cir. 2006); Fleet v. CBS, Inc., 58 Cal. Rptr. 2d 645, 650–51 (Cal. Ct. App. 996). 263 Note that this is true even for those personas ineligible for copyright because, for instance, they fail to qualify for protection under the Towle factors. It is well understood that the subject matter of copyright preemption extends beyond that of copyright protection. See Motorola, 105 F.3d at 849 (“Section 301 preemption bars state law misappropriation claims with respect to uncopyrightable as well as copyrightable elements.”).

38 exclusive rights within the general scope of copyright.”264 In determining whether or not a right is equivalent to the rights available under copyright, courts apply the so-called “extra element test,” which asks whether “an extra element is required instead of or in addition to the acts of reproduction, performance, distribution or display, in order to constitute a state-created cause of action.”265 However, the mere existence of some additional element is insufficient to escape preemption. The additional elements must render the state law right qualitatively different from the rights guaranteed by copyright—the additional elements must be different in kind.266 Thus, for example, an additional scienter element has been found inadequate to render a state law right not equivalent to the exclusive rights of copyright.267 Those who argue that state right of publicity laws do not create rights equivalent to those guaranteed by copyright (apart from the question of subject matter) generally point to the requirement of “use for advertising purposes, or for the purposes of trade,”268 or “commercial exploitation.”269 Other courts have found these additional elements insufficient to render the state law right “qualitatively different” from copyright.270 At least when it comes to property-based right of publicity regimes, these courts appear to have the better side of the argument. Both sides of the debate turn to the underlying purposes of the right of publicity to determine whether or not additional elements render it qualitatively different from copyright.271 However, as argued above,272 and repeatedly recognized by the courts,273 property-based right of publicity regimes are motivated by (and sometimes explicitly modeled on) the same rationale as copyright—that providing a property right will induce the production of socially beneficial public goods.

264 See Rothman, supra note 259, at 228. See also, e.g., Shamsky v. Garan, Inc., 632 N.Y.S.2d 930, 157–58 (N.Y. Sup. Ct. 1995); Shelley Ross Saxer, Note, Baltimore Orioles, Inc. v. Major League Baseball Players Association: The Right of Publicity in Game Performances and Federal Copyright Preemption, 36 UCLA L. Rev. 861, 881 (1989). 265 Motorola, 105 F.3d at 851 (quotation marks omitted). 266 Laws, 448 F.3d at 1144 (“The extra element must transform the nature of the action.”); Comput. Assocs. Int’l Baltimore Orioles, Inc. v. Major League Baseball Players Ass’n, 805 F.2d 663, 677 n.26 (7th Cir. 1986); Harper & Row, Publishers, Inc. v. Nation Enters., 501 F. Supp. 848, 852 (S.D.N.Y. 980), rev’d on other grounds, 471 U.S. 539 (1985); Saxer, supra note 256, at 882. 267 Crow v. Wainwright, 720 F.2d 1224, 1226 (11th Cir. 1983). 268 Shamsky, 632 N.Y.S.2d at 935. 269 Saxer, supra note 256, at 881. 270 See, e.g., Laws, 448 F.3d at 1144 (“The mere presence of an additional element (‘commercial use’) . . . is not enough to qualitatively distinguish Laws’s right of publicity claim from a claim in copyright.”). 271 Compare Shamsky, 632 N.Y.S.2d at 158 (concluding that “actions pertaining to invasion of privacy” are different in kind from copyright) and Saxer, supra note 256, at 882 (“A comparison of underlying policies is useful for determining qualitative differences between elements of these two rights.”), with Baltimore Orioles, 805 F.2d at 678 (noting that “[t]he purpose of federal copyright protection is to benefit the public by encouraging works in which it is interested,” while “the interest underlying the recognition of the right of publicity also is the promotion of performances that appeal to the public.”). 272 See supra notes 57–61 and accompanying text. 273 See supra note 57 and accompanying text.

39 Furthermore, as the Ninth Circuit has recognized, an additional element such as commercial use does not change the fact that a right of publicity claim would sound equally appropriately in copyright274—copying for commercial use (or advertising, or purposes of trade) is still infringement. It therefore stands to reason that when it comes to a property-based right of publicity law, additional elements such as commercial use should not be sufficient to escape preemption. Similarly, the fact that some state right of publicity laws, including California’s statutory right of publicity, limit protection to a few specific attributes of identity,275 would not render said protections safe from preemption, so long as the relevant claims could be brought just as appropriately under the Copyright Act and the underlying rationale of the laws is the same. At the same time, the emphasis on the underlying purpose of a state law in determining whether or not it should be preempted suggests that privacy-based regimes like New York’s right of publicity law might survive preemption even if identity and persona were brought into the subject matter of copyright.276 Courts trying to determine whether a state right of publicity law was a property-based regime essentially equivalent to copyright, or privacy-based, and thus not preempted, could develop a set of factors akin to those courts use to determine whether state law “hot news” misappropriation claims are preempted. Courts have developed a demanding test to ensure that such “hot news” claims are sufficiently “narrow” to survive copyright preemption.277 Courts might look to the elements of privacy-based, proto-publicity misappropriation claims to formulate an analogous test for right of publicity laws. Such a test could require, for example, that a state right of publicity claim have the “extra elements” of a non-famous plaintiff, emotional distress, and lack of assignability or descendibility to prove it was privacy- rather than property-based.278 False endorsement claims, which are based on the Lanham Act, a federal law, could not, of course, be preempted by the Copyright Act. However, it is to be hoped that the availability of a property right in a person’s likeness under copyright law would help courts resist the temptation the Ninth Circuit yielded to in A.V.E.L.A. by creating a similar right under the Lanham Act. A court faced with a plaintiff attempting to vindicate a property interest in a celebrity’s persona through a false endorsement action could dismiss the Lanham Act claim by distinguishing between content and sponsorship, as the

274 Laws, 448 F.3d at 1144. 275 See supra notes 36–42 and accompanying text. 276 Indeed, note that both of the authorities cited above finding that the right of publicity is not equivalent to the exclusive rights of copyright specifically considered New York law. See Shamsky, 632 N.Y.S.2d at 152–53; Saxer, supra note 256, at 881 (“[T]his Note will use New York’s right of publicity to illustrate equivalency analysis.”). 277 Motorola, 105 F.3d at 852. In order to survive preemption, a “hot news” claim must require that “(i) the plaintiff generates or collects information at some cost or expense, (ii) the value of the information is highly time-sensitive, (iii) the defendant’s use of information constitutes free- riding on the plaintiff’s costly efforts to generate or collect it, (iv) the defendant’s use of the information is in direct competition with a product or service offered by the plaintiff, (v) the ability of other parties to free-ride on the efforts of the plaintiff would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened.” Id. (citations omitted). 278 See supra notes 24–25 and accompanying text.

40 Second Circuit did in Pirone,279 in order to hold that no meaningful consumer confusion could have been caused by an appropriation best addressed, if at all, by way of an intellectual property doctrine.

B. The Scope of Copyright in Nonfictional Personas

Perhaps the most significant advantage of a copyright-derived publicity right is that the scope of such a right would be more appropriate to its incentives-producing rationale. The scope of copyright protection for nonfictional personas must be considered across two metrics. The first is the availability of the right: Which personas are eligible for copyright protection at all? The second is the reach of the right: What will infringe the copyright in a nonfictional persona?

1. Availability.

As argued above, one of the most striking disadvantages of modern property- based right of publicity regimes is that they offer a property right in identity to persons whose behavior is not affected one wit by the incentives such a right creates.280 The result is, in effect, an unwarranted windfall, which occasionally provides persons who have no interest in the pursuit of fame, and thus have done nothing to produce the public good the right of publicity is intended to incentivize, with a cause of action.281 In contrast, the Towle factors and copyright’s fixation requirement would do a better job limiting protection for human identity to the contexts where such protection incentivizes the creation of socially beneficial goods. This in turn will help to limit the number of cases where potentially useful (or at least not actively harmful) unauthorized uses lead to liability with little or no corresponding social benefit. Just as the second and third Towle factors, which require that characters be, respectively, “sufficiently delineated” and “especially distinctive,” avoid copyright protections for every character depicted in a visual medium, no matter how insignificant or unoriginal,282 so too would they prevent every person who posts a selfie on Facebook from claiming copyright protection in their nonfictional persona. Towle emphasized in particular that the third factor, which requires “unique elements of expression” would deny copyright protections for “stock character[s].”283 As an example of such an unprotectable stock character, Towle cited an earlier Ninth Circuit case,284 Rice v. Fox Broadcasting Co., in which the court evaluated whether a magician who wore “standard magician garb” and “perform[ed] and reveal[ed] magic tricks . . . warrant[ed] copyright protection.”285 The Ninth Circuit concluded that these qualities were insufficiently

279 See supra notes 165168 and accompanying text. 280 See supra notes 49–56 and accompanying text. 281 See, e.g., Perkins, 53 F. Supp. 3d at 1211 (holding that non-celebrity LinkedIn users could bring right of publicity action). 282 Towle, 802 F.3d at 1021. 283 Id. 284 Id. 285 Rice v. Fox Broad. Co., 330 F.3d 1170, 1175 (9th Cir. 2003).

41 distinct to differentiate the plaintiff’s magician from any other.286 Notably, in assessing whether the magician character “displayed consistent, widely identifiable traits” the Ninth Circuit considered it significant that the magician had made only a single appearance, in a home video that sold only “17,000 copies.”287 Ego-bruising though it may be to admit, when it comes to the Towle factors, most of us are probably more stock character than Batmobile. This is particularly true when one takes into account copyright’s fixation requirement, which limits the physical and conceptual qualities a court may take into account when determining copyright eligibility to those “fixed in a tangible medium of expression.”288 Perhaps everyone, in the non- digital world, is sufficiently delineated for at least their friends and family to recognize them whenever they appear, and especially distinct once you get to know them well enough. The same could not be said of most people’s personas as fixed in tangible mediums of expression (for most people, digital mediums such as social media). Even in an age when over one billion human beings have a Facebook page,289 many will fail to post photographs or status updates that reveal them to be anything more than, say, a generic law student, wearing “standard [law student] garb,” and partaking in standard law student activities (perhaps complaining about the pendency of final examinations or prevalence of gunnerism) akin to a magician performing magic tricks. Even more importantly, only a fraction of social media users, bloggers, and others who fix some attribute of their identity in a tangible medium will have the sort of following the Ninth Circuit appeared to consider necessary for a character to be widely identifiable, and thus recognizable. As a result, copyright protection for nonfictional personas will not be nearly as widely available as property-based right of publicity claims. For instance, a case like Perkins v. LinkedIn Corp., a California common law right of publicity class action brought on behalf of all LinkedIn users whose names were used in “endorsement emails” promoting the professional social network,290 could never be brought as a copyright case. Very few LinkedIn users will have both produced a detailed and distinct enough record of their personas and gained a broad enough following for their personas to qualify as both “sufficiently delineated” and “especially distinctive.” While it seems likely that at least a few of the potential class members in Perkins would meet the Towle standard, it seems very unlikely enough plaintiffs could claim copyright protection in their personas to make a class action viable.291

286 Id. 287 Id. This analysis, which considers how widely recognized a character is, appears to have been incorporated into the second Towle factor, which cited Rice for the requirement that a character be “recognizable.” Towle, 802 F.3d at 1021. 288 See supra notes 248252 and accompanying text. 289 Company Info, FACEBOOK, http://newsroom.fb.com/company-info/ (last visited April 27, 2018). 290 Perkins, 53 F. Supp. 3d at 1199–1200, 1202. 291 Admittedly, LinkedIn’s “endorsement emails” are not an obviously socially beneficial unauthorized use of human personas. However, if in most cases there was little or no benefit to be gained from providing the plaintiffs in Perkins with a publicity right that would potentially block LinkedIn’s use, and LinkedIn derived at least some value from use of its users’ names, it is not clear why the law should want to provide a cause of action, at least based on an incentives-

42 Another case where the more limited availability of copyright protections in identity would lead to a better result is Sarver, the Ninth Circuit right of publicity case, discussed above, in which the plaintiff alleged that the film The Hurt Locker appropriated his identity.292 As Judge O’Scannlain pointed out in that case, it is unlikely Sergeant Sarver’s publicity rights created an incentive for him to live his life at all differently than he otherwise would have.293 While, as noted, the case was ultimately decided on First Amendment grounds,294 the Towle factors could have helped avoid making the cause of action available to Sarver at all if, as seems likely, he has not fixed a sufficiently distinct or recognizable persona in a tangible medium. This is not to say that copyright will get the availability question right in every case. The Towle factors are unlikely to serve as a perfect proxy for public personas whose creation is likely to be incentivized by a property right. As many readers are no doubt aware from their own experiences on social media, there are certainly at least some non- fame seeking social media users who nevertheless appear to be highly motivated to post an exhaustive account of their day-to-day lives. Some of these people will be idiosyncratic enough to avoid characterization as “stock” personas. Moreover, the Towle factors are a standard, one that leaves courts with plenty of room for error at the margins.295 While there will be easy cases (Kim Kardashian should clearly qualify for copyright protection) there is plenty of room for courts to mistake a mere over-sharer for genuine influencer, and vice versa, in hard cases. However, even if the Towle factors are at best a rough proxy to identify plaintiffs who have actively sought fame and who the general public is interested in following, they still provide a better limiting principle for availability than modern right of publicity regimes, which have no limiting principle at all.296

2. Reach.

Existing copyright doctrines will protect the uses of public personas most relevant to the incentives-producing function of a property-based publicity right, while helping to ensure that celebrities who are eligible for copyright protection will not abuse it to block creative works (including other celebrity personas) that bear insufficient resemblance to

rationale. A lawsuit brought under a privacy-based right of publicity law might be a different matter, if the emotional harm the plaintiffs experienced was sufficient to implicate the privacy or autonomy rationale. 292 See supra notes 53–56 and accompanying text. 293 See supra note 54 and accompanying text. 294 See supra notes 55–56 and accompanying text. 295 The size of the audience for a particular character, a factor the Ninth Circuit considered in Rice, see supra note 287 and accompanying text, suggests one easily determined and quantitative piece of evidence courts could look to in applying the Towle factors. 296 Interestingly, the quasi-property right established by the Ninth Circuit in A.V.E.L.A. is similarly limited in its availability, thanks to the second Sleekcraft factor, which requires courts to consider “[T]he level of recognition that the [celebrity] has among the segment of the society for whom the defendant’s product is intended.” A.V.E.L.A., 778 F.3d at 1069. That being said, establishing such a right under the Lanham Act is undesirable for other reasons. See supra notes 171177 and accompanying text.

43 the copyrighted identity. This section begins by noting that the exclusive right to produce derivative works based on a copyrighted work is well-tailored to protect merchandising rights, one of the most significant income streams protected by publicity rights. It then discusses the significance of two doctrines that limit the scope of copyright protection, scenes a faire and the more general requirement of proving substantial similarity to show infringement. It compares the application of those doctrines in the nonfictional persona context with the results of particularly egregious right of publicity cases to suggest that copyright provides more adequate tools to limit the reach of a property right in identity. While copyright doctrine is far from perfect in this respect, it provides courts with tools that should help allay concerns that a copyright in identity would reach too broadly, and strikes a better balance than many right of publicity regimes between the interests of the right holder and the public. As argued in Part II.A, to the extent a property-based publicity right is necessary to incentivize the creation of public personas, one of its most important functions is to protect the significant revenue sufficiently popular celebrities can derive from merchandise bearing their name, image, or other attributes of identity.297 The Copyright Act’s protection of derivative works would function as a merchandising right in the context of nonfictional personas.298 Indeed, the alleged infringement in Towle itself was, essentially, the sale of unauthorized Batmobile merchandise—“replicas of the Batmobile [which] infringed DC’s exclusive right to produce derivative works of this character.”299 Similarly, assuming a valid copyright not blocked by other defenses, mobile games featuring Kim Kardashian, emojis and pool floats modeled on her anatomy, t-shirts featuring Bob Marley and Bruce Lee, and other merchandise that featured copyrighted attributes of identity would all be derivative works of the persona they portrayed. Of course, in other cases, a copyright-derived publicity right would block more traditional copying, such as fictional or nonfictional personas copied wholesale from a celebrity’s public persona, or images or video of the celebrity published without permission. These cases are especially likely to raise concerns about such a right’s possible conflict with freedom of speech and expression. Therefore, the rest of this Paper considers the copyright doctrines that would address that conflict, including those that limit the scope of copyright protection generally (discussed in the rest of this section) and those developed more specifically to accommodate First Amendment values (discussed in Part III.C). One of the most important limitations on the scope of copyright protection as applied to nonfictional personas is the scenes a faire doctrine.300 Scenes a faire denies

297 See supra notes 204216 and accompanying text. 298 See 17 U.S.C. § 106(2) (granting copyright holders the exclusive right to create derivative works). 299 Towle, 802 F.3d at 1026. 300 Other important doctrines limiting copyright protections include merger, the necessity of proving defendants had access to the allegedly infringed work, and fair use. Merger doctrine, which is closely related to scenes a faire, denies protection from infringement to a copyrighted work “if the idea underlying the copyrighted work can be expressed in only one way, lest there be a monopoly on the underlying idea.” Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1082 (9th Cir. 2000). Access is relevant to showing copying. In most cases plaintiffs will lack direct evidence of copying, Craig Joyce, et al., Copyright Law 636 (9th ed. 2013), and will therefore

44 protection “from infringement if the expression embodied in the work necessarily flows from a commonplace idea.”301 This limitation will prevent a celebrity with a valid copyright in her public persona from using that copyright to block any character (fictional or nonfictional) who resembles her only in broad strokes. A celebrity who points to shared qualities that are essentially inevitable features of a particular career, business model, or other social role will be thwarted in her effort to eliminate legitimate competition via copyright by the doctrine of scenes a faire. For example, an Instagram star falling into the “lifestyle” category could not sue a second-comer to the lifestyle market for allegedly infringing qualities such as cooking and eating good food, meticulous interior decoration, or adventurous travel. These expressive elements flow inevitably from the commonplace idea of a lifestyle blogger or social media personality and thus cannot be protected by copyright. More generally, the requirement that a copyright plaintiff show substantial similarity between his work and the defendant’s will serve to cabin copyright in nonfictional personas, as it does in other works. A copyright plaintiff must show not only that she owns a valid copyright, but also that the defendant copied it302 (in other words, an identical but wholly independently and innocently formulated work will not give rise to an infringement claim). In order to show copying, copyright plaintiffs must demonstrate sufficient similarity between the original and allegedly infringing works. For instance, in the Ninth Circuit, plaintiffs may prove copying by showing both access and substantial similarity between their work and the defendant’s.303 Various other formulations of the inquiry exist, evidencing an unfortunate lack of uniformity in the doctrine.304 Fortunately, for purposes of this Paper these various tests are identical in relevant part: all courts

rely instead on evidence of access plus substantial similarity to show the defendant copied their work, see, e.g., Apple Comput., Inc. v. Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir. 1994). These doctrines are less significant in the nonfictional persona context, because most cases in which they would arise would involve personas that were uncopyrightable pursuant to the Towle factors. A persona that “can be expressed in only one way” is likely so generic that it is neither “especially distinctive” nor “sufficiently delineated.” Some defendants accused of infringing particularly obscure personas might argue they could not have copied those identities because they were unaware of them. However, given the fact that “the mere opportunity to see the work” is generally sufficient to demonstrate the access necessary to prove copying, Bouchat v. Baltimore Ravens, Inc., 241 F.3d 350, 354–55 (4th Cir. 2001), almost any celebrity well-known enough to satisfy the Towle factors will easily demonstrate sufficient access (substantial similarity is likely to be a more significant bar, and is discussed in greater detail below). Fair use is of particular significance in the nonfictional persona context, and is discussed in greater detail in the context of conflict with First Amendment rights. See infra notes 326393 and accompanying text. 301 Ets-Hokin, 225 F.3d at 1082. 302 Apple, 35 F.3d at 1442. 303 Id. 304 For instance, some courts and commentators frame the inquiry as “whether the defendant’s work evidences ‘copying’ of the plaintiff’s, and if so whether such copying amounts to an ‘improper appropriation’ of copyrighted matter.” Joyce, supra note 300, at 636. Numerous other variations on the exact wording exist in the case law. See Peters v. West, 692 F.3d 629, 633 (7th Cir. 2012).

45 require copyright plaintiffs to show “that the two works share enough unique features to give rise to a breach of duty not to copy another’s work.”305 Although the various approaches courts take in evaluating the degree of similarity is unfortunately equally indeterminate,306 previous evaluations of the degree of similarity between fictional characters provide some insight into how courts would apply the requirement in a case alleging infringement of a nonfictional persona. One particularly useful example is provided by a canonical similarity case in which Judge Learned Hand compared the characters from the plays Abie’s Irish Rose and The Cohens and The Kellys, both of which revolved around furtive, young Jewish-Irish Catholic couples and their feuding fathers.307 Despite the parallel plots, Hand determined that the characters were insufficiently similar to make out an infringement claim. Though the lovers were “loving and fertile” in both plays, that was an insufficient degree of similarity to give rise to an infringement claim. Similarly, although both “[t]he plaintiff’s Jew” and the defendant’s were “grotesque, extravagant [ ] quarrelsome,” and “fond of displays,” the two Jewish fathers were ultimately “quite unlike” one another. Hand noted that while “[t]he plaintiff’s Jew” was obsessed with his religion, “affectionate, warm, and patriarchal,” the defendant’s Jew was “tricky, ostentatious, and vulgar, only by misfortunate redeemed into honesty.”308 Hand’s analysis illustrates how the substantial similarity requirement could provide another tool for courts to curb abuse of copyrights in nonfictional personas. Substantial similarity would prevent plaintiffs from abstracting to a high enough level of generality that two personas appeared identical (as the plaintiff in the Abie’s Irish Rose case attempted to do with the two sets of lovers). Similarly, it would prevent plaintiffs from cherry-picking some set of overlapping qualities to make out an infringement claim when two personas (or a persona and a fictional character) differed significantly in other respects (as happened with the two Jewish fathers in the Abie’s Irish Rose case). Thus, for instance, Paris Hilton could not have denied consumers the utility they have derived from over a decade’s worth of following the Kardashians by claiming any wealthy, attractive, C-list celebrity with more drama than responsibilities in her life infringed Hilton’s public persona. Similarly, she could not have cherry-picked more specific, but non-representative, details to make out an infringement claim if Kardashian could respond by pointing out significant differences Hilton’s claim ignored. The latter scenario, in which the plaintiff cherry-picks similar qualities to make out a plausible infringement claim, suggests another scenario where the substantial similarity requirement could be a significant limitation on publicity rights: cases where a single, relatively minor attribute of identity has been appropriated. Courts have recognized that the relative insignificance of the quantity or quality of copying may

305 West, 692 F.3d at 633–34. See also id. at 633 (“Despite all of this confusing nomenclature . . . the outcomes do not appear to differ.”). 306 See Joyce, supra note 300, at 656–58 (contrasting two common, distinct approaches to evaluating whether substantial similarity exists, and noting “the messy reality of infringement decisionmaking”). 307 Nichols v. Universal Pictures Corp., 45 F.2d 119, 120–21 (2d Cir. 1930). 308 Id. at 122. The two Irish fathers were “even more unlike,” apparently sharing no qualities other than religion, nationality, and paternity. Id.

46 preclude an infringement action.309 De minimis use is sometimes framed as its own defense,310 and sometimes characterized as evidence the plaintiff has failed to demonstrate substantial similarity.311 In any event, copyright protection need not block relatively insignificant use of a single attribute of a protected identity, especially where the appropriation is unlikely to significantly impact market demand for the relevant persona, and therefore protection does little to effectuate copyright’s goal of producing socially beneficial incentives.312 This is especially significant because it means the substantial similarity requirement will not only cabin the scope of copyright’s protection for nonfictional personas, but might even strike a better balance between the interests of the public and the rights holder than property-based right of publicity laws.313 Courts applying the “attribute of identity” test314 in right of publicity claims have held that “[a]ll that is required is that the [appropriated attribute] clearly identify the wrong person.”315 While this sets some floor for the degree of similarity that will give rise to liability, it surely leaves less room for courts to deny recovery for de minimis but distinctive borrowing, or even cherry-picking of distinctive attributes that are combined with other, different qualities in an overall dissimilar whole. This conclusion is borne out in the actual application of the attributes of identity standard—courts have held that the use of the nickname “Crazylegs”316 and the catchphrase “Here’s Johnny”317 were alone sufficient to give rise to a right of publicity action. While the test is indeterminate enough to make it difficult to speculate about the results of those cases under the substantial similarity standard, there is at least a colorable argument that use of a not-wholly-unique nickname or catchphrase is not alone enough to give rise to a finding of substantial similarity. From the perspective of an incentives-based rationale, this is the better result. Not every identifiable use of an attribute of a public persona’s identity must be blocked to guarantee sufficient incentives to create that persona. Some such uses are simply too trifling to have any effect on a celebrity’s bottom line. They should be left to privacy-based causes of action, if they are to incur liability at all. None of this is to argue that copyright doctrine is perfect, particularly when it comes to the substantial similarity requirement, which is woefully indeterminate. As with the scope of availability, there is too much room in copyright doctrine for courts to reach

309 Newton v. Diamond, 388 F.3d 1189, 1192–93 (9th Cir. 2004). 310 See, e.g., id. 311 See, e.g., Situation Mgmt. Sys., Inc. v. ASP. Consulting LLC, 560 F.3d 53, 59 (1st Cir. 2009) (“[D]e minimis copying is best viewed not as a separate defense to copyright infringement but rather as a statement regarding the strength of the plaintiff’s proof of substantial similiarity.”). Amount of use is also relevant to the fair use defense. See infra note 328 and accompanying text. 312 See Joyce, supra note 300, at 652 (“The fundamental question is whether, having seen, heard, read, or otherwise experienced the defendant’s work, the relevant audience for the plaintiff’s work would be less interested in experiencing plaintiff’s work.”). 313 In contrast, false endorsement cases under the Lanham Act may strike a balance similar to copyright’s, thanks to the second Sleekcraft factor, “the similarity of the likeness used by the defendant to the actual plaintiff.” Downing, 265 F.3d at 1007. 314 See supra notes 43–48 and accompanying text. 315 Hirsch, 280 N.W.2d at 397. 316 Id. at 397–98. 317 Carson, 698 F.2d at 836.

47 the wrong outcome, finding liability where it is unnecessary to vindicate the incentives- rationale underlying a property interest in identity, or perhaps failing to find liability where it is desirable to vindicate that rationale. However, copyright, unlike the right of publicity, at least provides courts with tools that could be used to strike the proper balance between the right holder and the public’s interests. This is not a coincidence. As a pure intellectual property doctrine, copyright’s scope and the doctrines used to fine-tune it on a case-by-case basis are better matched to the problem of weighing exclusive use of a public good against public access to that good.

C. Publicity Rights and the First Amendment

Any proposal to create property rights in public personas must grapple with the implications for free speech. An exclusive right to use information of any kind is by necessity a restriction on the public’s ability to discuss that information.318 When the information in question is a public persona, the restriction lends itself all too naturally to abuse. Public figures may try to use publicity rights to suppress criticism, news reporting, and other constitutionally protected speech contrary to their interests.319 This section considers whether the two doctrines long thought to ameliorate tension between copyright and the First Amendment are adequate to address the heightened risks to free speech copyright in public personas poses. It argues that the most common criticisms of the sufficiency of those doctrines have proven overwrought in light of recent scholarship discussing their actual application in the lower courts. Finally, it compares copyright’s built-in free speech protections to those of the right of publicity and the Lanham Act. Although all three regimes have developed some version of a fair use test, the greater discretion copyright’s fair use framework gives courts means that it simultaneously provides protection to a broader variety of expressive uses of protected personas, while also providing less certain protection to uses that are clearly shielded by the more focused tests applicable in the right of publicity and false endorsement contexts. Both the United States Supreme Court320 and commentators321 have long argued that the idea/expression dichotomy and fair use doctrine adequately protect free

318 See Dogan & Lemley, supra note 2, at 1218 (“The speech-restrictive implications of a right to prevent someone else from talking about you should be obvious.”); Diane Leenheer Zimmerman, Information as Speech, Information as Goods: Some Thoughts on Marketplaces and the Bill of Rights, 33 Wm. & Mary L. Rev. 665, 665 (1992); Volokh, supra note 15, at 904. 319 See David S. Welkowitz and Tyler T. Ochoa, The Terminator as Erasor: How Arnold Schwarzenegger Used the Right of Publicity to Terminate Non-Defamatory Political Speech, Santa Clara L. Rev. 651, 652 (2005) (“[R]ight of publicity claims frequently are used as a ‘stealth’ alternative to defamation claims, in order to circumvent the constitutional limitations on defamation claims.”). In some instances the law itself appears to have been designed to suppress constitutionally protected speech. For example, California’s post-mortem right of publicity statute was amended to make it easier to claim the right on behalf of deceased members of the armed services, with the intent of preventing the use of their personas by anti-war protesters. McCarthy, supra note 6, at § 4:21. 320 Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560 (1985) (recognizing “the First Amendment protections already embodied in the Copyright Act’s distinction between copyrightable expression and uncopyrightable facts and ideas, and the latitude for scholarship and comment traditionally afforded by fair use.”).

48 expression from copyright. In light of these internal accommodations of free speech interests, courts have generally declined to apply the First Amendment as an external limitation on copyright.322 Therefore any analysis of the effect copyright in nonfictional personas would have on First Amendment values must begin by considering how the idea/expression dichotomy and fair use would apply in the context of nonfictional personas. The idea/expression dichotomy holds that copyright protects specific expressions of facts and ideas, but not the facts and ideas themselves.323 The classic story is that the idea/expression dichotomy protects free speech interests by ensuring that regardless of an author’s exclusive rights in their particular expression of an idea or information, others will be free to discuss ideas or information without fear of liability for infringement.324 As applied to copyrights in nonfictional personas, the idea/expression dichotomy would thwart efforts to use copyright as a tool to block news reporting. President Donald J. Trump, though likely eligible for copyright protection in his public persona, could not use that protection to prevent what he believes to be unflattering coverage of his presidency in the media.325 If the New York Times or CNN describes Trump’s latest inflammatory statements at a campaign rally, new allegations from Special Counsel Robert Mueller’s investigation, or leaks regarding Trump’s behavior at Oval Office meetings, those are all facts, and thus completely outside copyright’s reach. Fair use protects certain privileged uses of copyrighted expression. Originally a judge-made doctrine,326 today fair use doctrine is codified in § 107 of the Copyright Act, which directs courts to consider four factors in determining whether a given use of a work is fair use and thus “not an infringement of copyright.”327 The four fair use factors are:

321 See, e.g., David E. Shipley, Conflicts between Copyright and the First Amendment after Harper & Row, Publishers v. Nation Enterprises, 1986 BYU L. Rev. 983, 984 (1986) (“[T]he Copyright Act and the first amendment are effectively accommodated by the Supreme Court’s conception of copyright as the engine of free expression, its approach to the fair use doctrine, and its recognition of the idea/expression dichotomy.”). 322 Neil Weinstock Netanel, Locating Copyright within the First Amendment Skein, 54 Stan. L. Rev. 1, 3 (2001) (“[C]ourts have almost never imposed First Amendment limitations on copyright, and most have summarily rejected copyright infringement free speech defenses.”). 323 17 U.S.C. § 102(b) (“In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”). See also Baker v. Selden, 101 U.S. 99, 104–05 (1879). 324 See Melville B. Nimmer, Copyright and the First Amendment, 17 UCLA L. Rev. 1180, 1189– 93 (1970); Shipley, supra note 321, at 990 (“The idea/expression dichotomy protects free speech interests by allowing the unfettered use of ideas, facts and information while simultaneously affording protection to the author’s particular manner of expression.”). 325 A hypothetical copyright infringement suit would not be Trump’s first attempt to use the law to suppress critical news reporting. See generally, e.g., Trump v. Chicago Tribune Co., 616 F. Supp. 1434 (S.D.N.Y. 1985). 326 Joyce, supra note 300, at 810. 327 17 U.S.C. § 107.

49 1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and 4) the effect of the use upon the potential market for or value of the copyrighted work.328

Like the idea/expression dichotomy, the classic story about fair use treats the doctrine as a crucial internal limitation on copyright’s interference with freedom of expression.329 Scholars have argued that, as applied by the courts, fair use “is solicitous of free speech interests because it permits a defendant to reproduce some protected expression for a productive purpose, such as criticism or news reporting.”330 In the context of copyright protection for nonfictional personas, fair use would provide important protection for criticism and parody. Criticism is explicitly identified as an example of fair use in the introduction to § 107,331 and the Supreme Court’s forays into fair use doctrine have been especially solicitous of parody.332 Therefore fair use would operate to prevent a member of the Kardashian clan from blocking a think piece critical of, say, her appearance in a tone-deaf Pepsi commercial,333 just as it would prevent an author from using copyright to block an especially savage Michiko Kakutani review which quoted from his book in order to ridicule it. Similarly, Trump could not use copyright in his persona to block Saturday Night Live’s parody of that persona, anymore than a musician could prevent a parodist from critiquing his song by appropriating its tune and certain lyrics.334 Courts could use fair use to thwart such abusive use of copyright in nonfictional personas, just as they currently use fair use to prevent abuse of copyright protections for more traditional works of authorship. Indeed, it for this very reason that numerous commentators have advocated importing copyright’s fair use doctrine to accommodate the First Amendment in the right of publicity context,335 a proposal courts have at least partially implemented.336

328 17 U.S.C. § 107. 329 See Harper & Row, 471 U.S. at 560; Shipley, supra note 321, at 991–95. 330 Shipley, supra note 321, at 994. 331 17 U.S.C. § 107. Scholarship is as well, suggesting, fortunately, that this Paper’s proposal would not lead to liability for the author himself as a result of the repeated use of actual persons as examples. 332 See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 588–89 (1994). 333 See, e.g., Jessica Roy, Cringe-worthy Pepsi ad uses Kendall Jenner, protests and police to sell soda, LOS ANGELES TIMES (April 4, 2017 4:00 PM). 334 See Campbell, 510 U.S. at 589. 335 See, e.g., Douglas G. Baird, Note, Human Cannonballs and the First Amendment: Zacchini v. Scripps-Howard Broadcasting Co., 30 Stan. L. Rev. 1185, 1206–08 (advocating a “fair use” standard for rights of performance); Pamela Samuelson, Reviving Zacchini: Analyzing First Amendment Defenses in Right of Publicity and Copyright Cases, 57 Tul. L. Rev. 836, 837 (1983) (“An adaptation of the copyright ‘fair use’ defense in publicity cases would be a sound development in publicity law.”). But see Kwall, supra note 64, at 58 (“This Author believes that

50 In spite of conventional judicial (and to some extent scholarly) wisdom to the contrary, it would be disingenuous to describe the adequacy of copyright’s internal free speech safeguards as uncontroversial. Indeed, Professors Dogan and Lemley have argued that one danger of analogizing the right of publicity to copyright is that doing so “will . . . let First Amendment limits on the right of publicity fall by the wayside.”337 To support this claim, Dogan and Lemley gesture to a robust literature criticizing courts’ treatment of copyright’s interaction with the First Amendment.338 A number of prominent scholars have argued that courts inappropriately ignore the danger copyright poses to freedom of speech and expression, internal limitations notwithstanding.339 Naturally, a key element of this argument is that contrary to the Supreme Court’s blithe assertion otherwise, the idea/expression dichotomy and fair use doctrine are insufficient to safeguard First Amendment values. Criticism of the idea/expression dichotomy generally takes two tacks. First, as argued by Professor Neil Weinstock Netanel, “there are times in which speech will be grossly less convincing, moving, understandable, authentic, or believable if the speaker cannot copy existing expression.”340 The second criticism of the doctrine is its indeterminacy. Netanel, for instance, argues that “the idea/expression dichotomy is notoriously malleable and indeterminate”341 and that in many cases involving “copyright defendants [who] have reformulated existing expression in creating a new work” it will be difficult to determine whether the allegedly infringing work “copied the plaintiff’s copyright-protected ‘expression’ or merely incorporated unprotected ‘ideas’ or ‘facts.’”342 Professor Alfred C. Yen has suggested that the line between ideas and expression is so blurry as to make the Copyright Act unconstitutionally vague.343 Criticism of the fair use doctrine is in a similar vein. Commentators bemoan its “unprincipled, inconsistent application,” characterizing the doctrine’s protections as both

the automatic invocation of the copyright fair use framework in cases presenting a conflict between the First Amendment and the right of publicity is inappropriate.”). 336 See supra notes 78–82 and accompanying text. 337 Dogan & Lemley, supra note 2, at 1220. 338 See id. at 1219 n.272 (collecting sources). 339 See, e.g., Netanel, supra note 322, at 5. See also Mark A. Lemley & Eugene Volokh, Freedom of Speech and Injunctions in Intellectual Property Cases, 48 Duke L.J. 147, 182–97 (1998). 340 Netanel, supra note 322, at 14. Like many other commentators grappling with this issue, Netanel uses as an example Time Inc. v. Bernard Geis Assocs., 293 F. Supp. 130 (S.D.N.Y. 1968), which considered the extensive reproduction of frames taken from the famous Zapruder film of President John F. Kennedy’s assassination in a scholarly work on the assassination. Id. at 131–32. Netanel points out that “[a] verbal description would lack the authenticity, poignancy, and clarity of the film frames themselves.” Netanel, supra note 322, at 14. It is worth noting that the case ended with the District Court granting a defense motion for summary judgment on fair use grounds, Bernard Geis Assocs., 293 F. Supp. at 146, suggesting, as argued in greater detail below, that fair use is a viable backstop for gaps in the idea/expression dichotomy. 341 Netanel, supra note 322, at 19. 342 Id. at 16–17. 343 Alfred C. Yen, A First Amendment Perspective on the Idea/Expression Dichotomy and Copyright in a Work’s ‘Total Concept and Feel’, 38 Emory L.J. 393, 397 (1989).

51 wholly uncertain and unacceptably weak.344 This critique of fair use’s efficacy as free speech protection draws on a veritable genre of scholarship attacking the defense’s inconsistency and indeterminacy.345 The doctrine has been maligned as little more than “the right to hire a lawyer”346 and “billowing white goo.”347 These criticisms should give us pause before entrusting copyright to resolve the conflict between publicity rights and the First Amendment. It is not hard to imagine scenarios where the weaknesses identified above could turn a copyright in a public persona into a tool for suppressing news coverage or criticism. One can imagine, for instance, publication of a video displaying poor public behavior on the part of a celebrity. The celebrity might argue that the press had a right to describe the events depicted in the video, but not to publish the video itself, which embodies the celebrities’ expression of his persona. It would be unfortunate if this argument prevailed in court, for “[a] verbal description would lack the authenticity . . . and clarity of the film.”348 More generally, the charge that the idea/expression dichotomy and fair use are indeterminate and unpredictable leaves room in the doctrine for public persons to use copyright in their identities as a tool to suppress speech, with no guarantee that courts will apply copyright’s internal protections for expression in a way that prevents such abuse. This Section therefore concludes by addressing the arguments summarized above. First, it draws on more recent scholarship surveying application of fair use in the lower courts to argue that fair use is both a more robust defense in its own right than its critics have given it credit for, and that it is capable of serving as a backdrop for the holes in the idea/expression dichotomy identified by Netanel and other commentators. It then takes up the argument, made by other commentators,349 that fair use’s indeterminacy is, in fact, a strength, insofar as it provides courts with the flexibility to appropriately balance the interests of rights holders and subsequent authors in situations involving a variety of works and second uses. Specifically, greater flexibility is an advantage vis a vis comparable doctrines from right of publicity law and the Lanham Act, whose more narrow inquiries fail to account for certain situations where use of a well-known persona may implicate free speech values. However, there is a corresponding disadvantage, insofar as those doctrines provide more certain protections for speech and expression in cases where they do apply. Despite the compelling criticisms of copyright doctrine’s free speech protections summarized above, recent scholarship suggests that in practice the picture is not so bleak. In particular, Professor Barton Beebe’s empirical study of fair use cases, the first of its kind, concludes “that much of our conventional wisdom about fair use case law . . . is

344 Netanel, supra note 322, at 21. See also L. Ray Patterson, Free Speech, Copyright, and Fair Use, 40 Vand. L. Rev. 1, 40 (1987). 345 Pamela Samuelson, Unbundling Fair Uses, 77 Fordham L. Rev. 2537, 2540 n.12 (2009) (collecting sources). 346 Lawrence Lessig, Free Culture: How Big Media Uses Technology and the Law to Lock Down Culture and Control Creativity 187 (2004). 347 Jessica Litman, Billowing White Goo, 31 Colum. J.L. & Arts 587, 597 (2008). 348 See Netanel, supra note 322, at 14. 349 See, e.g., Samuelson, supra note 345, at 2540.

52 wrong.”350 Beebe’s survey of “all reported federal opinions that made substantial use of the section 107 four-factor test from the January 1, 1978 effective date of the Copyright Act through 2005”351 yields several results likely to surprise (though perhaps also please) the commentators most critical of the efficacy of fair use as free speech protection. First, and most significantly, several of Beebe’s findings suggest that courts are not nearly as unfriendly to defendants employing the fair use defense as previous commentators feared. This is, encouragingly, especially true of defendants who used the copyrighted work for criticism and news reporting, two uses especially significant to First Amendment values in general, and especially in the nonfictional persona context.352 Courts were especially likely to find fair use when copyright defendants used the plaintiff’s work for these purposes.353 Beebe also observes a pattern of lower courts shifting fair use case law to favor copyright defendants, by “repeatedly and systematically invert[ing] Supreme Court dicta to favor the defendants.”354 As Beebe notes, “[t]his may come as a pleasant surprise to fair use maximalists”355—and, presumably, commentators who suspect the defense has become too weak to adequately protect First Amendment values. There is also evidence courts’ fair use analysis is not nearly as unpredictable as the doctrine’s critics would have it. Some evidence for this can be found in Beebe’s findings. One key conclusion is related to how courts conduct the fair use analysis. Beebe concludes that, contrary to conventional wisdom, courts are not particularly likely to find that all four factors favor their final conclusion regarding fair use.356 From this, he concludes that for the most part courts are “call[ing] the factors as they see them” rather than reaching a conclusion about fair use first, then matching their analysis of each factor to that conclusion.357 A good-faith analysis pursuant to the statutory factors would presumably lead to more consistent and predictable outcomes than ad hoc gut decisions, though naturally the extent to which this is true depends on how much guidance the factors provide. A more significant finding is that, again contrary to conventional wisdom, fair use case law is “not [ ] marked by especially high reversal, dissent, or appeal rates.”358 If

350 Barton Beebe, An Empirical Study of U.S. Copyright Fair Use Opinions, 1978–2005, 156 U. Pa. L. Rev. 549, 554 (2008). 351 Id. 352 See supra notes 323326, 331336 and accompanying text. 353 Beebe, supra note 350, at 610 (noting that courts found fair use in 62.1% of cases involving use for a critical purpose and 77.8% of cases involving use for news reporting). It should be noted that Beebe also observed “exceptionally low fair use win rates in district court preliminary injunction and bench trial motions,” though not other procedural postures. Id. at 576–77. He speculates this may result from copyright defendants with other, stronger arguments finding it “relatively inexpensive” to also plead a weaker fair use defense, and finds some support for this explanation in the correlation between win rates and the proportion of the court’s opinion devoted to discussing the fair use defense. Id. at 579–80. 354 Id. at 556. 355 Id. 356 Id. at 590–91. 357 Id. at 591. 358 Perhaps this reveals not that fair use doctrine is sufficiently determinate that judges can generally reach the same conclusion in a particular case, but that it is so indeterminate that judges cannot find anything to criticize in each other’s conclusions. The latter seems a less plausible

53 multiple judges are able to reach the same conclusions in fair use cases, it seems unlikely that the analysis is completely indeterminate. Professor Pamela Samuelson has built on Beebe’s work with a qualitative analysis of the fair use case law. From this she concludes “that fair use case law is both more coherent and more predictable than many commentators have perceived.”359 Samuelson argues that fair use cases can be organized into categories corresponding to the underlying policy goals of the doctrine, such as “promoting freedom of speech and of expression,” and that outcomes within these categories are relatively predictable. Finally, Beebe’s findings on fair use help address concerns regarding the idea/expression dichotomy, by suggesting that fair use can serve as an effective backstop for gaps in the idea/expression dichotomy. First, it is worth reiterating that courts are particularly sympathetic to the fair use defense when used to defend allegedly infringing news reporting.360 Recall that news reporting is the use most likely to be protected by the idea/expression dichotomy.361 Courts apparent solicitousness to news reporting in the fair use context suggests they are willing to use fair use to protect what the idea/expression dichotomy cannot. This interpretation is also supported by Beebe’s conclusion that there is significant correlation between a court’s finding that a plaintiff’s work was factual in nature and a finding of fair use.362 Also relevant is evidence challenging the conventional wisdom that a defendant who has appropriated the entirety of a plaintiff’s work will find it almost impossible to prove fair use. Beebe observed that courts found fair use in nearly a third of cases where “defendant[s] took the entirety of the plaintiff’s work.”363 This finding is relevant to a subset of the second uses Netanel identifies as insufficiently protected by the idea/expression dichotomy, wherein a socially desirable second user must not only copy expression to be maximally “convincing, moving, understandable, authentic, or believable,” but also must copy existing expression in its entirety (or nearly so).364 Netanel implies that “verbatim copying of substantial portions of existing literary expression” is unlikely to qualify for the fair use defense,365 but Beebe’s findings suggest that courts are willing to countenance the necessity of substantial copying in at least some (though certainly not all) cases. Indeed, the defendants in several of the cases Netanel

explanation than the former, however. For one thing, fair use is a mixed question of law and fact that circuit courts review de novo. Monge v. Maya Magazines, Inc., 688 F.3d 1184, 1170 (9th Cir. 2012). Since circuit courts owe district courts no deference in reviewing fair use determinations, it is not clear why having no grounds on which to assess the correctness of a lower court decision would tend to lead to fewer rather than more reversals (it might at least all come out in the wash). Moreover, this explanation could not explain the rate of dissents. 359 Samuelson, supra note 345, at 2541. 360 Beebe, supra note 350, at 610. 361 See supra notes 323325 and accompanying text. 362 Beebe, supra note 350, at 611. 363 Id. at 616. 364 See Netanel, supra note 322, at 15. 365 Id.

54 cites as examples of the inadequacy of the idea/expression dichotomy to address such circumstances ultimately prevailed on a fair use defense.366 Finally, in considering fair use’s value as a shield for free speech, it is worth considering the trade-offs inherent in the discretion the doctrine leaves judges. While the fair use’s detractors see that discretion as leading to inconsistency and indeterminacy, other scholars have argued it provides courts with much-needed flexibility.367 Rather than reiterate other commentator’s arguments in this regard, this Section concludes by comparing the flexibility provided by copyright’s version of the fair use defense to its more narrowly focused analogues under state right of publicity laws and the Lanham Act. The comparison suggests an important trade-off. Copyright’s fair use doctrine provides protection to a wider variety of uses, because it is not narrowly cabined to specific categories of second works. However, analogous protections under the right of publicity, in particular its protections for news reporting, are far more certain once a given defendant’s work is found to fall into a protected category. As noted, this trade-off is most apparent in the contrast between fair use protection for news reporting that copies expression368 and the right of publicity doctrines that protect news reporting, the “publication of matters in the public interest” defense exemplified by California law,369 and the broader requirement of use in trade or advertising, exemplified by New York law.370 On the one hand, the “publication of matters in the public interest” defense is narrowly available relative to copyright’s fair use doctrine. The defense does not apply to any use that does not “report or publish information,”371 and therefore appears to be unavailable to a variety of second users who could rely on fair use arguments in a copyright case, such as artists, novelists, or parodists. Thus, for example, the Ninth Circuit held that a cartoon depicting a well- known celebrity on a birthday card could not invoke the defense.372 In contrast, under a fair use analysis the “purpose and nature” of the second use is just one of four factors. Moreover, even the first fair use factor requires a broader inquiry than just whether the second use reports or publishes information, so it may be it would cut in favor of an

366 See Hustler Magazine Inc. v. Moral Majority Inc., 796 F.2d 1148, 1156 (9th Cir. 1986); Belmore v. City Pages Inc., 880 F. Supp. 673, 680 (D. Minn. 1995). See also Bernard Geis Assocs., 293 F. Supp. at 146. 367 See, e.g., Samuelson, supra note 345, at 2540 (“A well-recognized strength of the fair use doctrine is the considerable flexibility it provides in balancing the interests of copyright owners in controlling exploitations of their works and the interests of subsequent authors in drawing from earlier works when expressing themselves.”); Shipley, supra note 321, at 991–92 (characterizing fair use as “an equitable rule of reason” which “enables courts to escape literal application of copyright restrictions” and allows “each case [to] be decided on its own merits”). 368 News reporting that merely uses facts or ideas of course does not need to rely on fair use for protection, it is adequately shielded by the idea/expression dichotomy. 369 See supra notes 71–77 and accompanying text. 370 See supra notes 113121 and accompanying text. See also Goldman, supra note 1, at 617 (contending that most courts try to reconcile the right of publicity with the First Amendment by applying “a broad commercial/non-commercial speech dichotomy”). 371 Hilton, 599 F.3d at 912. 372 See supra note 77 and accompanying text.

55 arguably parodic birthday card, even though that birthday card was sold for profit.373 In short, the fair use analysis a court would conduct in a copyright case involving a nonfictional persona is likely to reach a better result in Hilton than the Ninth Circuit did applying the publication of matters in the public interest defense. Because fair use is not limited to a specific category of works, a court could look to other important factors, such as the parodic depiction of Hilton and the fact that she was unlikely to grant a license for an unflattering depiction of herself, making the threat of market substitution more dubious. Even a broader version of the defense, such as New York’s requirement of use in trade or advertising, will miss at least some expressive content. As demonstrated by the Vanna White case,374 even clearly commercial advertising may bear a marked resemblance to the works most clearly protected by fair use. In that case, the depiction of White as a robot, to comedic effect, was essentially a parody of her Wheel of Fortune persona,375 a fact that a court applying copyright’s fair use doctrine could have accounted for, but which is irrelevant to the use in trade or advertising analysis.376 It is possible that a court applying copyright’s full fair use analysis would have reached the same result on the facts of White—commercial use would still be a point against Samsung—but at least that result would not be a foregone conclusion. Indeed, Beebe’s research makes it clear that the right of publicity defense fails to protect the whole range of uses excused from liability under a full fair use analysis. He found that “a finding that the defendant’s use was for a commercial purpose (which was made in 64.4% of the opinions) did not significantly influence the outcome of the fair use test in favor of an overall finding of no fair use.”377 These results suggest courts recognize the point made by numerous commentators that just because speech is commercial does not mean it is necessarily devoid of “First Amendment value.”378 On the other hand, the more narrow focus on news reporting has a corresponding advantage over fair use’s broader inquiry. Once it is clear that a given use falls within the scope of the right of publicity defense’s protection, the inquiry is over and that use is insulated from liability. In contrast, even news reporting might not be protected by fair use if other factors, for instance the amount of expression appropriated, weighed against a finding of fair use. This disadvantage is especially important when one recalls the hypothetical case, discussed above, in which a news report includes a lengthy video of a

373 As critics of the right of publicity have pointed out, in a market economy where art, news, and parody alike are sold for money, “[t]he line between protected and unprotected appropriation is difficult to draw with theoretical consistency.” Goldman, supra note 1, at 616–17. 374 See supra notes 40–42, 45 and accompanying text. 375 This point was made by then-Judge Alex Kozinski, in a lengthy dissent from the Ninth Circuit’s denial of a petition for a rehearing en banc, which stressed the free speech ramifications of the panel opinion. White v. Samsung Electronics Am., Inc., 989 F.2d 1512 (9th Cir. 1993) (Kozinski dissenting). 376 Indeed, although White applied California law, the court in Burck v. Mars had no trouble determining that there had been use in trade or advertising, Burck, 571 F. Supp. 2d at 452, on very similar facts, see supra notes 99–101 and accompanying text. 377 Beebe, supra note 350, at 602. 378 Id. at 1217; Goldman, supra note 1, at 616–17.

56 celebrity behaving badly in public.379 As a news report, such a use would be categorically exempt from liability under both California and New York right of publicity law. If, however, the celebrity attempted to use copyright in their persona to block publication of the unflattering video, fair use’s protection would be far less certain. Beebe’s findings suggest, but by no means guarantee, that a court would take into account the news reporting purpose to find fair use in spite of the large amount of expression copied.380 In short, while copyright’s fair use protections leave room for courts to reach a result that accommodates free expression in a wider variety of cases, it also leaves room for courts to get some of the most important publicity rights cases wrong, a danger not present in the right of publicity context. Moreover, even if courts mostly got such cases right, the uncertainty may well lead to undesirable chilling effects.381 The transformativeness defense employed by courts applying California right of publicity law has a similarly narrow focus. The doctrine is not, of course, a wholesale importation of copyright’s fair use doctrine. Indeed, it is not a wholesale importation of any of the four § 107 statutory factors. Instead, by focusing on transformativeness,382 courts have elevated a single inquiry relevant to just one of the § 107 factors383—a factor of a factor—so that it comprises the entire inquiry in the right of publicity context. This narrow focus is sure to lead to liability for some expressive uses that would qualify as fair use under copyright’s broader, more flexible doctrine, a conclusion again confirmed by Beebe’s research, which showed that even after Campbell v. Acuff-Rose Music, Inc.,384 over a third of federal court cases finding fair use either did not discuss transformativeness or explicitly found the defendant’s use not transformative.385 Presumably none of those uses could have benefited from the transformativeness defense in a right of publicity case. In the case of the transformativeness test, however, the trade-off described in the context of news reporting (protection for a greater variety of uses weighed against more certain protection for some particularly important uses) is not as clear. This is because, even if a finding of transformativeness does not have to compete with other factors in the right of publicity context as it does when a court applies fair use doctrine, it is far from clear what will and will not qualify as transformative.386 For instance, there is surely a colorable argument to be made that placing Paris Hilton’s face on a cartoon waitress, in service of a birthday-related witticism, is transformative. The Ninth Circuit nonetheless

379 See supra note 348 and accompanying text. 380 See supra notes 352353, 363366 and accompanying text (noting that news reporting often, but not always, leads to a finding of fair use, and that extensive verbatim copying is sometimes, but often not, excused). 381 See Netanel, supra note 322, at 19–20 (arguing that the idea/expression dichotomy’s “indeterminacy” leads to a chilling effect). 382 See supra notes 78–91 and accompanying text. 383 Beebe, supra note 350, at 603–04. 384 Campbell emphasized the importance of transformativeness to the first fair use factor. See Campbell, 510 U.S. at 578–79. 385 Beebe, supra note 350, at 605. 386 See Volokh, supra note 15, at 916–23 (articulating three distinct standards that might be derived from the case law, and arguing that even if courts clearly adopted any one of the three, the transformativeness test might still be unacceptably vague).

57 held this use insufficiently transformative to benefit from the defense.387 Thus the narrower focus of the transformativeness defense does not appear to be counterbalanced by more certain protection for a clearly defined class of works.388 The closest analogous doctrine under the Lanham Act displays a similarly narrow focus, which makes it particularly ineffective for protecting free speech in the context of the quasi-property right created by the Ninth Circuit’s false endorsement analysis in A.V.E.L.A.389 The nominative fair use doctrine assumes use of the mark (or persona) “for purposes of comparison, criticism, point of reference or [ ] other such purpose.”390 Its requirements therefore assume such a purpose, and are tailored to accommodating use of a mark “to describe the plaintiff’s product” rather than cases where the allegedly infringing use of a persona is the product. To make out the nominative fair use defense, a defendant must show that “the product or service in question must be one not readily identifiable without use of the trademark,” “ only so much of the mark or marks may be used as is reasonably necessary to identify the product or service,” and that they have “do[ne] nothing that would . . . suggest sponsorship or endorsement by the trademark holder.”391 The second requirement will be difficult to show in cases like A.V.E.L.A., since use of a celebrity persona on, say, a t-shirt, usually requires using more of their likeness than strictly necessary to identify them. It is the third factor, however, that will be all but impossible to fulfill. The same mistake of law that leads lay people to believe “some sort of copyright” is necessary to sell a t-shirt with Bob Marley’s image on it392 would also mean, at least by the Ninth Circuit’s logic, that any such use “suggest[ed] sponsorship or endorsement” and therefore that the nominative fair use defense was categorically unavailable.393 By relying on a distorted consumer confusion analysis to create a quasi-property right in public personas, the Ninth Circuit has precluded application of the most significant doctrine for accommodating free speech in the Lanham Act context. Fair use or the analogous right of publicity doctrines are better suited to reconcile a property right in publicity with free speech values. In short, copyright’s free speech protections are far from perfect. However, while the greater discretion the fair use analysis leaves courts makes its protection for First

387 See supra notes 85–88 and accompanying text. 388 This is also true because, according to Beebe, a finding of transformativeness “exerted nearly dispositive force” in fair use analysis in the copyright context, virtually always leading to a finding of fair use. Beebe, supra note 350, at 605–06. Therefore, in a world in which all courts, whether applying right of publicity’s transformativeness defense or copyright’s fair use doctrine, agreed on what uses were transformative, very few uses protected from liability by the former doctrine would go unprotected by the latter. 389 See supra notes 147163 and accompanying notes. 390 New Kids on the Block, 971 F.2d at 308. 391 Id. 392 See supra notes 154159 and accompanying text. 393 Other circuits that replace the third factor with the more forgiving requirement “that the defendant’s conduct or language reflect[ed] the true and accurate relationship between plaintiff and defendant’s products or services,” Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 222 (3rd Cir. 2005), might conceivably reach a different result, though they might also find that use of a plaintiff’s persona misrepresented the true and accurate relationship between the plaintiff and the defendant’s goods and services. In any event, the Ninth Circuit’s nominative fair use requirements are the most relevant, since the Ninth Circuit decided A.V.E.L.A.

58 Amendment values more uncertain in any given case, that same discretion may allow fair use to shield uses that would be held liable under existing right of publicity regimes.

CONCLUSION

There are many plausible reasons to protect use of the human identity. Exclusivity may be necessary to incentivize the creation of socially valuable public goods. It might prevent consumer confusion about the countenance or endorsement of goods and services. Or it may simply be that certain unauthorized uses of human identity create emotional harm the law should strive to prevent. Yet while all of these reasons to protect human identity may be plausible, they require different tools to vindicate the underlying interests. Intellectual property should be used to incentivize the production of social goods. The Lanham Act should be used to prevent consumer confusion. Privacy law should be used to preserve inviolate rights in personality. The current regime of publicity rights has created confusion and overprotection by failing to align the underlying rationales of protection for identity with the legal rights appropriate to effectuate each distinct rationale. Property-based right of publicity regimes marry property-inspired rights to privacy-inspired scope, leading to overprotection. The Ninth Circuit has attempted to vindicate property interests via consumer protection doctrine, threatening to distort Lanham Act case law. The missing piece is a purely incentives-based publicity rights doctrine. This Paper has suggested a clear candidate for creating such a regime exists in the form of copyright. Doctrine exists that would allow courts to complete the oft-made analogy between the right of publicity and copyright by extending copyright protection to nonfictional personas. Doing so could help bring order to the publicity rights landscape, by vindicating property interests in publicity rights via an actual intellectual property doctrine, preempting existing property-based right of publicity laws, leaving only their privacy-based analogs, and removing any need for courts to distort the Lanham Act to create a property right in identity.

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