University of Pennsylvania Carey Law School Penn Law: Legal Scholarship Repository Faculty Scholarship at Penn Law 11-2012 The Inalienable Right of Publicity Jennifer Rothman Follow this and additional works at: https://scholarship.law.upenn.edu/faculty_scholarship Part of the Commercial Law Commons, Constitutional Law Commons, Contracts Commons, Intellectual Property Law Commons, Jurisprudence Commons, Labor and Employment Law Commons, Law and Politics Commons, Law and Society Commons, Privacy Law Commons, Property Law and Real Estate Commons, and the Torts Commons The Inalienable Right of Publicity JENNIFER E. ROTHMAN* TABLE OF CONTENTS INTRODUCTION .......................................... 186 I. CONTESTED AREAS OF ALIENABILITY ....................... 190 A. VOLUNTARY ASSIGNMENTS ........................... 191 B. BANKRUPTCY AND CREDITORS ......................... 199 C. MARITAL PROPERTY ................................ 201 D. POSTMORTEM RIGHTS AND DESCENDIBILITY ................ 203 II. THE RED HERRING OF THE PROPERTY VERSUS PRIVACY DEBATE .... 204 III. RECONSIDERING THE ALIENABILITY OF PUBLICITY RIGHTS ......... 208 A. FUNDAMENTAL RIGHTS ............................. 209 B. COMMODIFICATION AND FORCED COMMERCIALIZATION ........ 217 C. SOCIAL WELFARE AND ECONOMIC EFFICIENCY .............. 220 IV. OTHER SALIENT CONSIDERATIONS FOR LIMITING ALIENABILITY ..... 224 A. SEPARABILITY ................................... 225 B. JUSTIFIABILITY: FURTHERING THE GOALS OF THE UNDERLYING ENTITLEMENT .................................... 228 C. RECIPROCITY: EQUITABLY DISTRIBUTING THE BENEFITS AND BURDENS OF ALIENABILITY ........................... 232 * Professor of Law and Joseph Scott Fellow, Loyola Law School (Los Angeles), Loyola Marymount University. © 2012, Jennifer E. Rothman. I thank Barton Beebe, Sarah Boyd, Julie Cohen, David Dolinko, Lee Fennell, Laura Heymann, David Horton, Melissa Jacoby, Roberta Kwall, Douglas NeJaime, Eduardo Pen˜alver, Seana Shiffrin, Stewart Sterk, Rebecca Tushnet, Eugene Volokh, Michael Waterstone, Diane Zimmerman, and participants at the UCLA faculty colloquium for their thoughtful comments. For their suggestions at early stages of this project, I thank participants at the Association of Law, Property, and Society Conference at Georgetown; the Privacy Law Scholars Conference at George Washington; the IP Scholars Conference at U.C. Berkeley; and the Loyola Law School faculty workshop. Finally, I thank the editing staff of The Georgetown Law Journal, Lisa Schultz (my outstanding librarian), Michael Boardman, Stefanie DeSeve, Kanika Shah, and Armineh Yousfian for their research assistance. 185 ElectronicElectronic copycopy availableavailable at:at: https://ssrn.com/abstract=2174646http://ssrn.com/abstract=2174646 186THE GEORGETOWN LAW JOURNAL [Vol. 101:185 V. IMPLICATIONS OF LIMITING THE ALIENABILITY OF THE RIGHT OF PUBLICITY ......................................... 233 A. REVISITING THE ALIENABILITY OF INTER VIVOS PUBLICITY RIGHTS . 234 B. REVISITING POSTMORTEM PUBLICITY RIGHTS AND DESCENDIBILITY .................................. 237 CONCLUSION ............................................ 240 INTRODUCTION This Article challenges the conventional wisdom that the right of publicity is universally and uncontroversially alienable. Although there are different defi- nitions of alienability, I use the term in a broad sense to indicate that an entitlement is transferable in gross without any restrictions on its sale, donation, or ownership.1 Courts and scholars have routinely described the right of public- ity as such a freely transferable property right. The leading treatise author in the field, J. Thomas McCarthy, has observed that the “rule of free assignability in gross of the right of publicity has never been seriously questioned.”2 The Supreme Court of Georgia has gone even further, concluding that the right of publicity “could hardly be called a ‘right’” if it were not freely assignable.3 Thus, the right of publicity is most often described as sitting at one end of the alienability spectrum—that of free or complete alienability.4 Despite such broad claims of unfettered alienability, courts have limited the transferability of publicity rights in a variety of instances. No one has developed a robust account of why such limits should exist or what their contours should be. This Article remedies this significant omission. In the process of doing so, 1. See Terrance McConnell, The Nature and Basis of Inalienable Rights,3LAW &PHIL. 25, 27 (1984) (defining something as inalienable when it “is not transferable to the ownership of another”); Susan Rose-Ackerman, Inalienability and the Theory of Property Rights,85COLUM.L.REV. 931, 931 (1985) (“Inalienability can be defined as any restriction on the transferability, ownership, or use of an entitlement.”); see also Margaret Jane Radin, Market-Inalienability, 100 HARV.L.REV. 1849, 1849–55 (1987) (noting that there are a number of different possible meanings for “inalienability”). I include for purposes of this discussion both voluntary and involuntary transfers, although some have suggested that only prohibitions on voluntary transfers should be included in the definition of inalienability. See, e.g., Radin, supra, at 1853. 2. 2 J. THOMAS MCCARTHY,THE RIGHTS OF PUBLICITY AND PRIVACY § 10:13 (2d ed. 2011); see also RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 46 cmt. g (1995) (stating that “[t]he interest in the commercial value of a person’s identity...isfreely assignable to others”). 3. Martin Luther King, Jr., Ctr. for Soc. Change, Inc. v. Am. Heritage Prods., Inc., 296 S.E.2d 697, 704 (Ga. 1982). 4. Alienability is not a simple on–off switch. Instead, it can best be thought of as a spectrum, ranging from free or complete alienability (where there are no restrictions on transfers or ownership) to partial or limited alienability (where a variety of restrictions limit alienability, such as prohibitions on sales but not on donations or gifts) to complete inalienability (where no transfers are possible). See Lee Anne Fennell, Adjusting Alienability, 122 HARV.L.REV. 1403 passim (2009) (suggesting a broad spectrum of alienability); Rose-Ackerman, supra note 1, at 935–37 & passim (providing a taxonomy of different types of restrictions on transferability, ownership, and use). ElectronicElectronic copycopy availableavailable at:at: https://ssrn.com/abstract=2174646http://ssrn.com/abstract=2174646 2012]INALIENABLE RIGHT OF PUBLICITY 187 the Article presents a shift in right of publicity law from thinking about “publicity-holders” to thinking about “identity-holders.” For those less familiar with the right of publicity, it has sometimes been described as a property right in one’s personality.5 More precisely, it is a state law cause of action (either at common law or by statute) that provides damages and injunctive relief if a person or business uses another person’s name, like- ness, voice, or other indicia of identity without permission, usually for a commercial purpose (though sometimes for any purpose or advantage).6 Pub- licity rights have been justified on a variety of grounds including autonomy, dignity, natural rights, labor-reward, and unjust enrichment.7 Each of these primary justifications for the right of publicity is rooted in the rights and interests of the underlying person upon whom the right initially vests. If publicity rights are alienable, then the publicity-holder (the person who owns the right of publicity) need not be the same person as the person upon whom the publicity rights are based (the individual with whom publicity rights first vest and whose identity is the one that must be used to show a violation of those publicity rights). Accordingly, it is necessary to make a distinction between the publicity-holder and what I call the identity-holder. The identity- holder is the person whose name, likeness, or other indicia of identity is used and, when used without permission, forms the basis of a right of publicity violation. The publicity-holder, by contrast, is the person who owns the property interest in (commercial) uses of that identity.8 So, for example, the talented musician and composer Prince is an identity-holder, but if he assigns his right of publicity to his music label, let’s say Warner Brothers Records, then Warner Brothers would be the publicity-holder.9 The distinction between identity- holders and publicity-holders is a crucial one, but one that I have not seen made elsewhere. Without making such a distinction, it is impossible to describe (let alone justify) an alienable right of publicity. Alienability unquestionably serves publicity-holders, but it is less clear that it is in the best interests of identity-holders. Many scholars and courts have assumed (often implicitly) that publicity-holders’ and identity-holders’ interests are aligned, but this is not always the case.10 A number of recent and high- 5. It was in part from this proposition—that there is a property right in one’s personality—that Samuel Warren and Louis Brandeis divined the right to privacy. See Samuel D. Warren & Louis D. Brandeis, The Right to Privacy,4HARV.L.REV. 193, 205, 207, 211 (1890). 6. More than half of the states have recognized a right of publicity either at common law or by statute. See 1MCCARTHY, supra note 2, §§ 6:1, 6:3; see also Jennifer E. Rothman, Copyright Preemp- tion and the Right of Publicity, 36 U.C. DAVIS L. REV. 199, 202 n.9 (2002). 7. See discussion infra section IV.B. 8. As I will discuss, publicity rights are not universally limited to commercial