Volume 19 Issue 2 Article 3 2012 The Right of Publicity in New York and California: A Critical Analysis Paul Czarnota Follow this and additional works at: https://digitalcommons.law.villanova.edu/mslj Part of the Entertainment, Arts, and Sports Law Commons, and the Intellectual Property Law Commons Recommended Citation Paul Czarnota, The Right of Publicity in New York and California: A Critical Analysis, 19 Jeffrey S. Moorad Sports L.J. 481 (2012). Available at: https://digitalcommons.law.villanova.edu/mslj/vol19/iss2/3 This Article is brought to you for free and open access by Villanova University Charles Widger School of Law Digital Repository. It has been accepted for inclusion in Jeffrey S. Moorad Sports Law Journal by an authorized editor of Villanova University Charles Widger School of Law Digital Repository. Czarnota: The Right of Publicity in New York and California: A Critical Ana +(,1 2 1/,1( Citation: 19 Vill. Sports & Ent. L.J. 481 2012 Content downloaded/printed from HeinOnline (http://heinonline.org) Thu Jan 24 11:21:14 2013 -- Your use of this HeinOnline PDF indicates your acceptance of HeinOnline's Terms and Conditions of the license agreement available at http://heinonline.org/HOL/License -- The search text of this PDF is generated from uncorrected OCR text. -- To obtain permission to use this article beyond the scope of your HeinOnline license, please use: https://www.copyright.com/ccc/basicSearch.do? &operation=go&searchType=0 &lastSearch=simple&all=on&titleOrStdNo=1074-9187 Published by Villanova University Charles Widger School of Law Digital Repository, 2012 1 Jeffrey S. Moorad Sports Law Journal, Vol. 19, Iss. 2 [2012], Art. 3 THE RIGHT OF PUBLICITY IN NEW YORK AND CALIFORNIA: A CRITICAL ANALYSIS PAUL CZARNOTA* I. INTRODUCTION The right of publicity is a proprietary right, which enables ce- lebrities to prevent or control unauthorized uses of their identity for advantage. It is recognized that there is a commercial value that attaches to celebrity status, which is often evoked through endorse- ment contracts for goods or services. Through endorsement, the goodwill associated with the celebrity attaches to the good or ser- vice, resulting in an elevated consumer appeal in that good or service. Celebrities earn a significant proportion of their income from the right to enter into endorsement contracts. However, corpora- tions commonly attempt to appropriate a celebrity's identity to ob- tain a commercial advantage over competitors through clever advertising strategies, without paying an endorsement fee to the ce- lebrity. Under the right of publicity, use of a celebrity's identity in advertising or trade without his or her consent constitutes the tort of unfair competition. California and New York, commonly viewed as the entertain- ment capitals of the United States, adopt strikingly different ap- proaches to the right of publicity. New York law prevents any unauthorized uses of a celebrity's name, portrait, picture or voice for advertising or trade purposes, and does not recognize a right of publicity at common law. However, as a result of several decisions by the Ninth Circuit Court of Appeals, California recognizes a right of publicity under statute and common law, the latter preventing unauthorized uses of any identifiable aspects of a celebrity's identity. * Barrister & Solicitor of the Supreme Court of Victoria, Australia, and the High Court of Australia; BCom/LLB (Hons), Monash University; Current LLM candidate, University of Melbourne. This article is a revised version of a minor thesis prepared for the Master of Laws subject, 'Entertainment Law.' The author would like to thank Professor David Caudill and Professor Megan Richardson for their feedback in respect of the minor thesis. The author would also like to thank his partner Amanda, mother Angela, father Tony, sister Gaby and brother-in-law Ben, for their personal support throughout the years. (481) https://digitalcommons.law.villanova.edu/mslj/vol19/iss2/3 2 HeinOnline -- 19 Vill. Sports & Ent. L.J. 481 2012 Czarnota: The Right of Publicity in New York and California: A Critical Ana 482 VILLANOVA SPORTS & ENT. LAW JOURNAL [Vol. 19: p. 481 This paper proposes that, to prevent free-riding on the celeb- rity's associated commercial value, and in recognition of the eco- nomic and social importance of the entertainment industries in those two states, the current state of New York law is inadequate. Consequently, efforts should be made, either legislatively or by revi- siting the common law position, to adopt the approach taken in California. II. THE RIGHT OF PUBLICTIY The right of publicity is a personal property right to "own, pro- tect, and profit from one's name, likeness, voice, or identity" or "to control the commercial use of his or her identity."' Unauthorized use of a person's identity is a tort, constituting an infringement of his or her right of publicity. 2 The right of publicity affords every person the right to assign or prevent the use of his or her identity for commercial purposes, such as endorsing a corporation's goods or services, or preventing unauthorized broadcasts of a person's act or performance.3 Protection of publicity rights is extended to all persons.4 In practice, however, only celebrities posses sufficient commercial value in their identity to justify litigation.5 In any event, appropria- 1. Aaron A Bartz, ... And Where it Stops, Nobody Knows: California'sExpansive Publicity Rights Threaten the Federal Copyright System, 27 Sw. U. L. REv. 299, 302 (1997) (defining right to publicity); seeJ. THOMAS MCCARTHY, THE RIGHTS OF PuBLIrY AND PRIVACY § 1:3 (2d ed. 2011) (explaining commercialization of individual). 2. See McCARTHY, supra note I (discussing cause of action for infringement of right of publicity); Lindsay C. Hanifan, ParisHilton Avoids Getting Slapped: The Appli- cation of California'sAnti-Slapp Statute to a Right of Publicity Claim in Hilton v. Hall- mark Cards, 18 VILL. SPORTS & ENT. L.J. 289, 295-300 (outlining history of right of publicity). 3. SeeJ. Thomas McCarthy, The Human Persona as CommercialProperty: The Right ofPublicity, 19 COLUM.-VLAJ.L. & ARTS 129, 130 (1995) (describing limitations and purpose of right); see Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 578-79 (1977) (determining First and Fourteenth Amendments do not automatically priv- ilege press to "human cannon ball" performance). However, as McCarthy noted, these cases tend to be rare. See McCarthy, supra at 133 (noting infrequency of such cases). 4. See McCarthy, supra note 3, at 134 (citing Eagle's Eye, Inc. v. Ambler Fash- ion Shop, Inc., 637 F. Supp. 856, 862 (E.D. Pa 1985)) (providing authority for proposition that "right of publicity" affords protection to natural persons and "does not protect 'persona' of corporation"). 5. See Sheldon W. Halpern, The Right of Publicity: Maturation of an Independent Right Protecting the Associative Value of Personality, 46 HASTINGs L.J. 853, 854, 856-57 (1995) (discussing commercial value of celebrity personality); Sara J. Crasson, The Limited Protections of Intellectual Property Law for the Variety Arts: Protecting Zacchini, Houdini, and Cirque Du Soleil, 19 VILL. SPORTS & ENT. L.J. 73, 105 (2012) ("[F]ew variety artists have approached Vanna White's level of celebrity or notoriety, so it is unlikely many would receive her level of protection" under right of publicity). Published by Villanova University Charles Widger School of Law Digital Repository, 2012 3 HeinOnline -- 19 Vill. Sports & Ent. L.J. 482 2012 Jeffrey S. Moorad Sports Law Journal, Vol. 19, Iss. 2 [2012], Art. 3 2012] THE RIGHT OF PUBLICTIY IN NEW YORK AND CALIFORNIA 483 tions of a non-celebrity's identity are unlikely, due to the lack of commercial value attaching to such a person's identity.6 For these reasons this paper will focus on the celebrity's right of publicity. A. Right of Publicity and Free Speech There are many ways in which a celebrity's identity may be di- rectly or indirectly used. For example, a restaurateur may name a restaurant after a famous actor, a t-shirt manufacturer may sell t- shirts which display photographs or likenesses of a celebrity, a news- paper may sell posters commemorating an athlete's sporting per- formance, a car manufacturer may employ a musician to sound like a famous singer in an advertisement, or an electronics company may employ a robot in an advertisement which resembles the char- acteristics of a celebrity.7 While the right of publicity protects against unauthorized uses of identity, the right does not protect against each and every poten- tial use. Some uses may be protected under the First Amendment right of free speech." Professor Caudill identified four categories under which a celebrity's identity may be used.9 The first category comprises advertising or trade purposes, which may include trading 6. See Bartz, supra note 1, at 300 (discussing increased interest in right of pub- licity due to prevalence of celebrities promoting products). An example given by Bartz involves an advertiser, or by extension, a manufacturer of goods or services, seeking to augment consumer value of its product by identifying an alignment with a celebrity through advertising. See id. (noting popularity of public figures in ad- vertising market). Cf Roberson v. Rochester Folding Box Co., 64 N.E. 442, 451 (N.Y. 1902) (holding individual does not have right to prohibit all distasteful pub- licity). In Roberson, the plaintiff was a non-celebrity who sought damages for the allegedly unauthorized "obtain [ing]," "printting]," and "circulat[ing]" of 25,000 lithographic prints of her person. Id. It should be noted, however, that in this case, the plaintiff was seeking protection pursuant to the Warren and Brandeis formulation of the common law right of privacy, due to the plaintiffs alleged hu- miliation "by the scoffs and jeers of persons," and was therefore not claiming dam- ages for violation of her publicity rights.