[*PG863]CONSTITUTIONAL RESTRAINTS ON
STATE RIGHT OF PUBLICITY LAWS

Abstract:  Over the past fifty years, a new intellectual property right called the right of publicity has evolved under state common law. This Note explores a recurring concern hinted at by several lower courts and dissenting opinions: that current publicity laws offend parts of the Constitution beyond the First Amendment and the Copyright Clause. The existing hodgepodge of state statutory and common law that makes up the right of publicity appears to be a minefield of constitutional hazards. Courts must consider a variety of First Amendment, Copyright Clause, Commerce Clause, Due Process Clause, and Full Faith and Credit Clause issues when resolving publicity rights cases. This Note argues that Congress could simplify this area of the law considerably for plaintiffs, defendants, and courts by creating a preemptive federal right of publicity. Alternatively, the right could remain state-based and still avoid these issues through other approaches.

Introduction

Over the past fifty years, a new intellectual property right called the right of publicity has evolved under state common law.1 This modern legal doctrine, where recognized, grants property rights to everyone, allowing each person to control the commercial use of his or her identity.2 The right of publicity has been especially valuable to celebrities because their identities carry substantial economic value.3

The states have not universally recognized the right of publicity,4 and it is not without its critics.5 A recurring criticism is that it endan[*PG864]gers First Amendment rights including freedom of speech.6 A related objection is that it privatizes too many ideas, facts, and types of information that ought to remain in the public domain.7 Others assert that federal rights granted under the Copyright Clause will preempt a plaintiff’s publicity rights in many cases.8 The right of publicity remains in a period of rapid development as courts and commentators continue to refine its contours and rough edges.9 Other evolving aspects of the law, such as constitutional jurisprudence, will also affect its future development.10

This Note explores a recurring concern hinted at by several lower courts and dissenting opinions, one that has thus far escaped detailed analysis: that current publicity laws offend parts of the Constitution beyond the First Amendment and the Copyright Clause.11 The existing hodgepodge of state statutory and common law that makes up the right of publicity appears to be a minefield of constitutional hazards.12 Courts must consider a variety of First Amendment, Copyright Clause, Commerce Clause, Due Process Clause, and Full Faith and Credit Clause issues when resolving publicity rights cases.13 Congress could simplify this area of the law considerably for plaintiffs, defendants, and courts by creating a preemptive federal right of publicity.14 Alternatively, the right could remain state-based and still avoid these issues through other approaches.15

[*PG865]Section I of this Note describes the evolution of the right of publicity, the uses of another’s identity that may infringe upon it and the uses it permits, and the common justifications for, and criticisms of, the right.16 Section II reviews selected case law involving constitutional issues raised by the right of publicity and related torts.17 Section III then examines constitutional limits on the right of publicity imposed by the Commerce, Due Process, and Full Faith and Credit clauses and discusses ways to avoid the apparent conflicts.18

I.  The Right of Publicity

Professor McCarthy, author of the comprehensive treatise on the rights of publicity and privacy, defines the right of publicity as “the inherent right of every human being to control the commercial use of his or her identity.”19 It is an intellectual property right derived under state law, the infringement of which creates a cause of action for the tort of unfair competition.20 Every human being has a right of publicity; it is generally not limited to celebrities.21

In most states that recognize it, the right of publicity is a descendible and assignable property right.22 Thus, it also protects against unauthorized post-mortem use of a deceased’s identity.23 Most states that recognize a post-mortem right of publicity limit its duration to no longer than 100 years after death.24 Tennessee’s publicity law, however, provides protection for as long as the right holder continually exploits the commercial value of the identity.25

[*PG866]A.  History

Several law review articles and key judicial opinions considerably influenced the creation of the right of publicity.26 It traces its origin to several of the same sources as the right to privacy.27 In 1890, Samuel D. Warren and Louis D. Brandeis published a seminal article in the Harvard Law Review titled The Right to Privacy.28 The authors argued that unauthorized public disclosure of truthful but embarrassing facts about one’s private life causes an affront to one’s human dignity.29 Relying on principles of natural law, they argued that anyone so harmed should have a remedy at law.30 In 1905, state courts began adopting aspects of Brandeis and Warren’s theory, holding that common law should protect such privacy rights.31 Where courts rejected the theory, some state legislatures enacted right to privacy statutes to protect the right, such as took place in New York.32

Courts and commentators struggled, however, with the idea and semantics of applying the right to privacy toward celebrities—individuals who actively sought the limelight.33 Celebrities presented a stark contrast to the typical right to privacy plaintiff who sought to be “left alone.”34 Judge Jerome Frank resolved this incongruity by coining the term “right of publicity” in a 1953 United States Court of Appeals for the Second Circuit case, Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.35 The parties were two baseball card manufacturers and the case turned on whether a baseball player could assign exclusive rights to produce a card with his photograph to one of the companies.36 The court ruled that this right of publicity was indeed as[*PG867]signable and, unlike the right to privacy, was not a solely personal interest.37

On the heels of this decision, Professor Melville B. Nimmer wrote an influential article that began to flesh out this nascent right.38 In his article, Nimmer explained that the right to privacy provided insufficient protection for the commercial value of one’s identity because it focused on prevention of feelings of indignity and embarrassment that are often not present in cases involving celebrities.39 He also advanced arguments for why this new right should be an assignable property right, distinguished it from unfair competition law, argued that everyone has a right of publicity, and offered a policy justification for the right.40

In 1960, Professor William Prosser wrote another prominent article in which he analyzed privacy law and divided it into four distinct torts: intrusion, disclosure, false light and appropriation.41 Prosser’s article was so influential that the 1977 Restatement (Second) of Torts adopted his four categories as an accurate restatement of the law.42 There is universal judicial acceptance of Prosser’s categorization and some state legislatures have gone so far as to codify his framework in their statutory law.43

The intrusion tort focuses on physical invasion into the plaintiff’s private affairs.44 The disclosure tort is similar to the privacy interest described by Warren and Brandeis, focusing on the public disclosure of embarrassing private facts.45 The false light tort is similar to defamation, focusing on the harm that results from presenting the plaintiff to the public in such a way that the public is likely to have an objectionable misperception of the plaintiff.46

[*PG868]Prosser’s fourth tort of invasion of privacy by appropriation closely resembles the right of publicity.47 It focuses on unauthorized use of the plaintiff’s identity for commercial purposes with resultant harm to his or her dignity and peace of mind.48 Prosser’s appropriation privacy tort differs, however, from the right of publicity in two important ways.49 First, the privacy right is a personal interest whereas the publicity right is an assignable property right.50 Second, courts measure the harm from appropriation by the degree of affront to the plaintiff’s dignity and peace of mind, whereas they measure the harm from infringement of the publicity right by the economic value of the unauthorized use.51

B.  Recognition

Over the past twenty-five years, the right of publicity has met with increasing, though not universal, recognition by courts, the bar, members of the legal academy, and state legislatures.52 As of March 2002, twenty-eight states had provided their citizens with a remedy for infringement of the right of publicity.53 Eleven states provide only common law protection;54 ten states provide only statutory protection;55 and seven states provide both.56 Courts in New York, Nebraska, and Puerto Rico have held that a common law right of publicity does not exist in those territories.57

Even though the right of publicity is currently limited to state law, federal courts have nevertheless contributed to its evolution through [*PG869]the exercise of both their diversity jurisdiction and their supplemental jurisdiction with federal claims (such as those for Lanham Act section 43(a) violations involving false representation or service mark infringement).58 Federal courts seem comfortable deciding issues of first impression involving state publicity rights, although state courts have subsequently criticized or overruled some of these decisions.59

In 1977, the United States Supreme Court decided Zacchini v. Scripps-Howard Broadcasting Co., the only case it has heard thus far involving the right of publicity.60 A news program televised a videotape of a daredevil’s entire fifteen-second performance at a local fair, where he was shot from a cannon.61 The Ohio Supreme Court had held that the First Amendment protected the telecast.62 The United States Supreme Court reversed, holding that the broadcast violated the plaintiff’s right of publicity because it contained his entire performance without his consent.63 The Court was concerned that such a use could threaten the plaintiff’s ability to earn a living as an entertainer, and reasoned that this concern outweighed the strong First Amendment protection afforded newscasts.64 Commentators agree [*PG870]that the Court’s ruling was so specific to the facts of the case that it provides minimal guidance for the more common right of publicity case, typically involving use of a likeness in advertising or on merchandise.65 But Zacchini does denote the Court’s recognition of the validity of at least a limited state publicity right.66

In 1995, the Restatement (Third) of Unfair Competition incorporated the right of publicity in sections 46 through 49.67 It uses the phrase “for purposes of trade” to describe the types of uses that trigger infringement.68 This phrase presumably covers use in advertising, on products, or in association with services.69

The American Bar Association has formulated a model statute that, if enacted, would create a federal right of publicity.70 A federal right could address some of the problems inherent in a right of publicity derived from state law.71 Such problems include idiosyncrasies in the protection offered by different states under common or statutory law, questions of which state’s law controls a controversy and the potential for plaintiffs to engage in forum shopping to maximize their rights.72 The statute could also resolve some of the concerns this Note explores regarding the constitutionality of state publicity laws under the Commerce, Full Faith and Credit, and Due Process Clauses.73

C.  Infringing and Non-infringing Uses

Infringement of the right of publicity occurs when one makes commercial use of another’s identity without permission.74 To estab[*PG871]lish a prima facie case of infringement, the plaintiff must satisfy several elements that can vary from state to state.75 These elements typically include a showing that the complained-of use is commercial, that it is unauthorized, that it identifies the plaintiff, and that it is likely to harm the economic value of the plaintiff’s identity.76

The clearest cases of infringement occur when the defendant uses plaintiff’s identity in an advertisement for its goods or services without permission.77 Use of plaintiff’s identity on merchandise or in connection with a service may also satisfy the commercial use element.78 Because infringement requires that the plaintiff be identifiable from defendant’s unauthorized use, courts have often found infringement where the defendant used elements of a plaintiff’s persona other than actual name or likeness.79 Uses that approximate a plaintiff’s distinctive voice, performing style, catch phrase, name, nickname, appearance, fictional characterization, or objects or settings closely associated with the plaintiff have all been sufficient for a finding of infringement.80

In contrast, one can freely make unauthorized non-commercial uses of another’s identity because such uses do not implicate the right of publicity, which is limited to controlling “commercial uses”.81 Permitted non-commercial uses typically include use of a person’s identity in news reports, entertainment, commentary, or literary works (both fiction and non-fiction).82 Some limited categories of use, although commercial, do not infringe on the right of publicity because of their incidental nature.83 For example, an advertisement for a music magazine that features covers of back issues where the musicians that appeared on the covers are identifiable would not typically infringe on those musicians’ publicity rights.84 Courts may also permit [*PG872]uses that are fleeting or insignificant, such as where a full-length film shows one’s face for a few seconds.85

D.  Tension with the First Amendment

The First Amendment to the Constitution provides in pertinent part that “Congress shall make no law . . . abridging the freedom of speech . . . .”86 The right of publicity’s restriction on the unauthorized commercial use of one’s identity prohibits certain forms of expression; it therefore potentially conflicts with the freedom of speech the First Amendment seeks to protect.87

Courts apply a balancing test to determine whether the First Amendment preempts the right of publicity where the unauthorized use is commercial, such as in an advertisement or on actual merchandise.88 The degree of protection the First Amendment provides in any given circumstance will depend on the content of the challenged speech and the countervailing interest asserted.89 The First Amendment may preempt the right of publicity in uses that enjoy the higher levels of First Amendment protection, such as those a court classifies as informing or entertaining.90 Entertainers, for example, should typically be able to mimic or parody the distinctive identities of other performers, because First Amendment considerations predominate in such instances of pure entertainment.91

Such preemption may not take place, however, in uses that a court classifies as commercial speech because the Constitution gives more attenuated protection to such speech.92 In such cases, the commercial speech doctrine might not immunize a use that infringes on the right of publicity.93 Courts have typically refused to protect a vendor’s unauthorized use of a plaintiff’s identity on T-shirts, coffee mugs, lunch [*PG873]boxes, dartboards, playing cards, and the like.94 Courts are reluctant to extend free speech protection to such objects because speakers usually do not choose them as media to convey their socially sig-nificant speech.95 Such objects serve other intrinsic functions, whereas traditional communicative media such as newspapers, magazines, books, and movies do not.96

Other commentators argue that the buyer of such objects is a speaker and the seller’s effort to facilitate the buyer’s speech should therefore warrant protection.97 Courts would likely credit this argument to protect political speech, which is entitled to the highest level of constitutional protection, because one who enters into the political arena essentially waives much of her rights of publicity and privacy.98 The defendant in such a case, however, is a step removed from the individual whose speech is entitled to protection; the plaintiff’s interest is not usually to stifle speech but to be paid for the use of her identity; and any such speech is symbolic and therefore entitled to less protection than pure speech.99 All of these factors may make a court less willing to preempt the plaintiff’s right of publicity in cases not involving political messages.100

Property rights arising from the right of publicity also typically outweigh the claim to free speech in cases where the defendant uses the plaintiff’s identity as the vehicle to attract attention to its news or entertainment message.101 As the First Amendment also gives individuals the right not to speak, a plaintiff may assert his or her right of publicity to prevent others from using the plaintiff’s property as a vehicle for conveying their views if alternative methods of communication exist.102

[*PG874]E.  Remedies

Plaintiffs can generally obtain injunctive relief enjoining defendants from any further unauthorized use of their identities.103 To recover monetary damages, however, a plaintiff must establish and quantify the economic damage from the use.104 If, for example, the defendant used the plaintiff’s image without permission in an advertisement, one measure of damages would be what the defendant would likely have had to pay to entice the plaintiff (or someone whose identity had similar commercial value) to appear in the advertisement.105 Another possible measure of damages is the resultant loss of economic value of the plaintiff’s identity.106 This could occur, for example, if the complained-of use resulted in a reduced demand for plaintiff’s services.107 In cases of willful infringement, such as where the defendant knew the plaintiff abhorred celebrity endorsements but used the plaintiff’s identity in its advertising anyway, juries have awarded, and courts have upheld, substantial punitive damages.108

F.  Policy Justifications

Commentators have advanced several public policy reasons to recognize a right of publicity.109 These include justifications based on natural rights and fairness, incentives, economic efficiency, and pre-venting deception.110

First, some consider the right of publicity to be a self-evident property right in one’s own identity.111 To them, the statement “my [*PG875]identity is mine—it is my property, to control as I see fit” is intuitive.112 The right of publicity prevents others from unjustly free riding and benefiting economically from the value one has built up in one’s own identity.113

There is also an incentive justification for the right of publicity.114 This rationale asserts that giving individuals the exclusive right to capitalize on the economic value they build up in their identity encourages them to invest in developing their skills and talents.115 Such investment results in socially desirable behavior, leading to a richer society.116

Some commentators also offer an economic efficiency theory to justify the right of publicity.117 They argue that making an individual the sole arbiter of how and when commercially to use his or her identity helps maximize its economic value.118 If anyone who wants to use the identity can do so at will, such use may dilute any cachet associated with the identity, resulting in a loss of economic value.119 Granting property rights results in efficient allocation of scarce resources and helps ensure that the resource goes to the highest and best use.120 Commentators contend the personal property right thus avoids the tragedy of the commons problem of public ownership.121

A final justification is that assigning property rights in one’s identity can help prevent deceptive commercial uses.122 This argument provides only modest justification, however, because one can infringe [*PG876]the right of publicity without any use of deception.123 The Lanham Act also already protects against deceptive commercial uses.124

G.  Comparison with Copyright and Trademark Law

The right of publicity differs in important ways from other intellectual property rights such as copyright and trademark.125 For example, a primary distinction between the right of publicity and copyright is that the latter covers “original works of authorship fixed in any tangible medium of expression.”126 The right of publicity protects one’s identity in any form, not just a fixed manifestation of it, such as in a copyrightable photograph.127 Personal identity is also outside the statutory subject matter of copyright.128

The right of publicity also differs from rights granted under trademark law.129 Trademark law, embodied in the Lanham Act, promotes designation of source as a method of preventing consumer confusion and encouraging quality control.130 To prove trademark infringement a plaintiff must demonstrate likelihood of confusion.131 Although certain uses of an individual’s identity may confuse consumers as to whether the individual is endorsing a product, an advertiser can infringe an individual’s right of publicity even when it is obvious that the individual is not endorsing the product.132

The right of publicity is similar in several ways to laws protecting against the dilution of trademarks.133 Both are creatures of state law meant to protect intellectual property rights.134 Like intellectual [*PG877]property laws in general, both are subject to limits imposed by the First Amendment.135 Both also serve to protect goodwill and commercial value built up in the property against commercial uses that may lessen the property’s future value.136 The state law in both cases represents a patchwork resulting from differing policy decisions of the states, with some states refusing to recognize one or both of the doctrines and often-considerable discrepancies between the laws of any two states.137

The two doctrines also differ in significant ways. First, trademark dilution has already made the leap from state law to federal law with the enactment of the Federal Trademark Dilution Act of 1995 (FTDA), which did not explicitly preempt the state laws.138 Second, the FTDA and state dilution statutes require a mark to be famous to be entitled to dilution protection, whereas in many states even non-celebrities have publicity rights.139 Hence, large, national or international companies use the FTDA to protect against dilutive uses that are often local in scope.140 In contrast, individuals typically seek protection for infringement of their publicity rights against large, national or international companies.141 The typical dilution case pits a plaintiff operating on a broader scale against a defendant operating on a narrower scale; the typical publicity rights case has the opposite profile.142 Third, the primary justification for trademark law is pre[*PG878]venting consumer confusion whereas the right of publicity focuses on protecting an individual’s property rights.143 Fourth, compensatory damages are generally available to publicity rights plaintiffs whereas monetary damages are available under the FTDA only upon a finding of willfulness.144 Despite these differences, and because of the similarities, this Note examines trademark dilution case law to supplement the somewhat meager case law in the latter area, because some dilution cases address issues identical to those raised by the right of publicity.145

H.  Criticism

The most common criticism of an expansive right of publicity is that it is an unjustifiable restriction on free speech under the First Amendment.146 Critics assert that celebrities serve as valuable cultural touchstones that anyone should be free to use in formulating expressive speech.147 There must therefore be a substantial policy reason, they argue, to remove celebrity personas from the public domain.148 Critics find the policy reasons offered for the right of publicity not compelling enough to justify the limitations on freedom of speech imposed by the right.149

A second common criticism of the right of publicity is that it can interfere with federal rights granted under the Copyright Act.150 Critics argue that federal copyrights should preempt publicity rights arising under state law in cases where the two conflict.151 Any other result, critics also assert, would permit states to interfere with the federal copyright system (over which the Constitution grants Congress exclusive authority) thereby violating the dormant Copyright Clause.152

[*PG879]II.  The Constitution and the Right of Publicity

Under the Supremacy Clause of the United States Constitution, a federal law preempts any state law that conflicts with it, rendering the state law void.153 In addition to statutes passed by Congress, federal law includes the provisions of the Constitution itself.154 This Section examines case law, involving the right of publicity and related commercial torts, to identify constitutional limits that may apply to the right of publicity under state law.155

A.  First Amendment Claims

In 1996, the United States Court of Appeals for the Tenth Circuit case of Cardtoons, L.C. v. Major League Baseball Players Ass’n illustrated some of the First Amendment concerns raised by the right of publicity and called into question the justifications for the right.156 The court’s analysis is also applicable to other constitutional issues, which are the principal focus of this Note.157 In that case, the Tenth Circuit held that Cardtoons’ First Amendment right to parody baseball players outweighed those players’ rights under Oklahoma law.158 Cardtoons sought declaratory judgment that its baseball cards portraying caricatures of major league baseball players and poking fun at their various excesses did not infringe on the players’ publicity rights, which the players had assigned to the Major League Baseball Players Association (MLBPA).159 The court noted that neither of the First Amendment accommodations in Oklahoma’s statute, one for news, the other for uses not directly connected with commercial sponsorship or advertising, applied to Cardtoons’ use.160 It stressed, however, that Cardtoons’ speech in this case was entitled to full protection under the First Amendment because it provided “commentary on an important social [*PG880]institution.”161 Because the court also held that Cardtoons had infringed on the players’ statutory publicity rights, it proceeded to “balance the magnitude of the speech restriction against the asserted governmental interest in protecting the intellectual property right” to determine which prevailed.162

The Tenth Circuit examined each of the common justifications for the right of publicity and found them not to be strong enough, independently or as a group, to justify the speech restriction in this case.163 In examining the incentive justification, the court reasoned that “the additional inducement for achievement produced by publicity rights are [sic] often inconsequential because most celebrities with valuable commercial identities are already handsomely compensated.”164 The court reasoned that the efficient allocation of resources justification is not persuasive in non-advertising uses involving parody because celebrities would likely use their control over use of their identities to suppress criticism.165 The court reasoned that the prevention of consumer deception justification was without merit because the Lanham Act provides for such protection and Cardtoons’ cards were not likely to deceive consumers anyway.166 The court summarily rejected the natural rights justification, remarking, “blind appeals to first principles carry no weight in our balancing analysis.”167 The court then considered the just deserts justification, noted that celebrities “are often not fully responsible for their fame,” pointed out that the players in this case were being parodied for socially undesirable behavior and concluded, “there is little right to enjoy [such] fruits.”168 The court considered the related justification of preventing unjust enrichment (free riding), but decided such a concern was inapplicable because Cardtoons “added a significant creative component of its own to the celebrity identity and created an entirely new product.”169 Finally, the court examined the prevention of emotional injury [*PG881]justification and reasoned that both the Lanham Act and intentional infliction of emotional distress laws adequately protected against such mental anguish.170 The court concluded that “the effect of limiting MLBPA’s right of publicity in this case is negligible” and that “the justifications for the right of publicity are not nearly as compelling as those offered for other forms of intellectual property, and are particularly unpersuasive in the case of celebrity parodies.”171 Accordingly, the court affirmed the district court’s finding that Cardtoons’ First Amendment right to free expression outweighed MLBPA’s right of publicity.172

B.  Suggestions of Other Constitutional Claims

The United State Supreme Court has construed several provisions of the Constitution, including the Commerce,173 Copyright,174 and Due Process175 Clauses as imposing specific limits on each state’s ability to regulate activities that take place outside its borders.176 These restraints maintain the federal nature of the United States government, in which each state retains sovereignty over matters that it has not specifically delegated to the federal government through its ratifi-cation of the Constitution.177

[*PG882]The United States Supreme Court has also ruled that vague laws offend the Due Process Clause.178 A law is vague, and therefore void, if people “of common intelligence must necessarily guess at its meaning and differ as to its application.”179 A law that does not clearly define the acts it prohibits “impermissibly delegates basic policy matters to . . . judges . . . and juries for resolution on an ad hoc and subjective basis, with the attendant dangers of arbitrary and discriminatory application” and “may trap the innocent by not providing fair warning.”180

The remainder of this Section examines case law that further illuminates these concerns in the context of the right of publicity and other state law commercial torts.181

1.  Dormant Commerce Clause

The United States Court of Appeals for the Ninth Circuit, dubbed the “Hollywood Circuit”182 because its jurisdiction includes California, has had several occasions to construe California publicity rights law and examine its conformance with constitutional principles.183 Some of these cases suggest that the right of publicity may be subject to constraints under the dormant Commerce Clause as well as other constitutional provisions.184 In 1992, in White v. Samsung Electronics America, Inc., a court panel held that California’s common law right of publicity gives a cause of action against a defendant’s commercial use of any set of a plaintiff’s characteristics sufficient to evoke the plaintiff’s [*PG883]identity.185 Vanna White, who had achieved fame for her role as the letter-turner for the game show Wheel of Fortune, complained about a print advertisement Samsung was using to promote its electronics products.186 The advertisement, one of a series that made improbable but humorous predictions of the cultural landscape circa 2010, featured a robot wearing a blond wig, jewelry, a formal dress, and pointing to letters on a set reminiscent of Wheel of Fortune.187 The advertising copy suggested that, although many things would likely change in the future, Samsung’s products would keep running.188 The United States District Court for the Central District of California granted summary judgment in Samsung’s favor on White’s common law and statutory right of publicity claims, finding that the advertisement did not include White’s “likeness,” a required element of California’s right of publicity statute.189 On appeal, the Ninth Circuit panel af-firmed the district court’s finding on the statutory claim, but reversed and remanded for trial on the issue of whether White had a claim under California common law.190 The court devised that California’s common law right of publicity is not limited to protecting against use of any enumerated set of a plaintiff’s characteristics, but instead protects any use of one’s identity that causes the audience to think of him or her.191

Samsung petitioned for an en banc rehearing.192 Although both the panel and full court declined to rehear the case, Judge Alex Kozinski, joined by Judges O’Scannlain and Kleinfeld, issued a vigorous dissent in which he attacked the panel’s holding on several grounds.193 Much of the dissent focused on the need to balance publicity rights against free speech rights granted by the First Amendment and argued that the panel had not properly done so here.194 The dissent, however, also suggested that such a broad right of publicity of[*PG884]fends more of the Constitution than just the First Amendment.195 Invoking the dormant Copyright Clause, Kozinski noted that the Supreme Court has held that “state intellectual property laws can stand only so long as they don’t ‘prejudice the interests of other States.’”196 Kozinski asserted that an out-of-state advertiser would be subject to the publicity law of a plaintiff’s domicile state even if the advertiser took care not to display the complained-of advertisement there because “[a] right of publicity created by one state applies to conduct everywhere.”197 Kozinski continued:

The broader and more ill-defined one state’s right of publicity, the more it interferes with the legitimate interests of other states. A limited right that applies to unauthorized use of name and likeness probably does not run afoul of the Copyright Clause, but the majority’s protection of “identity” is quite another story.198

He also complained that the panel failed to analyze whether the restriction it was divining from the common law was “unconstitutionally vague,” suggesting it may not have sufficiently defined “identity” so as to satisfy the requirements of due process.199

Judge Kozinski found himself dissenting again seven years later when a majority of his colleagues on the Ninth Circuit refused to revisit the panel decision in Wendt v. Host International, Inc. in 1999.200 [*PG885]The case involved “[r]obots again,” this time animatronic figures sitting at defendant’s Cheers-themed airport bars.201 Host had obtained a license for this use from Paramount, which owned the copyright to the Cheers television series.202 To make the bars more inviting, Host decided to create figures that evoked show characters Norm (an overweight and underemployed accountant) and Cliff (a know-it-all postal worker) by making one fat and dressing the other as a mail carrier.203 Although the figures’ faces did not look like the actors who played Norm and Cliff, the actors objected, claiming that Host had infringed their rights of publicity.204 The district court granted summary for the defendants, finding that the robots did not resemble the plaintiffs.205 Relying on White, a Ninth Circuit panel reversed, holding that the case presented a jury question as to whether the robots were sufficiently “like” the plaintiffs as to violate their publicity rights.206

Judge Kozinski’s dissent, joined this time by Judges Kleinfeld and Tashima, reiterated many of the concerns he expressed in White, although he seemed even more disturbed by this case because Host had acquired a license to use the Cheers copyrights.207 Kozinski argued that these rights, granted by the federal Copyright Act, should preempt whatever publicity rights the plaintiffs have under the facts of this case.208 He also pointed out that the court’s decision put it in conflict with the Seventh Circuit, which had held that the Copyright Act preempts the right of publicity when the latter would prevent ordinary use of the copyrighted work.209 Kozinski then elaborated on his dormant Copyright Clause concern from White, asserting that permitting California’s expansive publicity right to set the national standard for permissible use of a licensed derivative work creates a “constitutional conundrum.”210 He also took the panel to task for applying Califor[*PG886]nia’s publicity laws to Host’s out-of-state activities.211 Thus, Kozinski suggested a potential Commerce Clause violation might exist when a state applies its anomalous laws extraterritorially.212

2.  Due Process Clause

The United States Supreme Court’s recent Due Process jurisprudence suggests yet another potential constitutional limit on the scope of the right of publicity.213 In 1996, the Court addressed Due Process and Commerce Clause concerns that can arise in cases involving state-based right of publicity laws in BMW of North America, Inc. v. Gore, although the case involved a different commercial tort.214 The plaintiff, Dr. Gore, bought a BMW sedan that an Alabama dealer sold him as new.215 Nine months later, he brought it to a detailing shop where one Mr. Slick, the proprietor, told him that someone had previously repainted the car.216 The defendant admitted to repainting the car before delivery because acid rain had damaged its finish in transit, but denied that it had a duty to disclose this because it did not consider the fact material and had a nationwide policy of nondisclosure for minor repairs.217 Dr. Gore claimed that BMW had a duty to disclose it under Alabama’s fraud statute because it reduced the value of his car by about ten percent and was therefore material.218 A jury agreed with Dr. Gore, awarding him not only his $4,000 estimated loss of value but also $4,000,000 in punitive damages.219 BMW sought to have the punitive damages set aside as excessive, arguing that its nondisclosure policy complied with all state laws that set forth disclosure obligations for the automotive industry, which only about half of the states had in place.220 The strictest of these laws compelled disclosure only when the cost of repair exceeded three percent of the vehicle’s sticker price; BMW’s cost to repaint Dr. Gore’s car did not exceed this [*PG887]limit.221 The jury appeared to have calculated the punitive damages award using the number of vehicles nationwide that BMW had repaired without disclosure and sold as new as a multiplier; BMW argued the calculation should have excluded all cars sold in states where its conduct was lawful.222 The trial judge denied BMW’s motion and BMW appealed to the Alabama Supreme Court.223 The court affirmed the trial court’s finding that the award was not excessive, but ruled that the jury had improperly included sales in other jurisdictions in its calculation.224 It issued a remittitur reducing the punitive damages award to $2,000,000 based on its analysis of comparative cases where juries awarded punitive damages for misrepresentation of a vehicle’s condition.225

The United States Supreme Court granted certiorari and declared the $2,000,000 punitive damages award unconstitutionally excessive, in violation of the Due Process Clause of the Fourteenth Amendment.226 In reaching its decision, the Court seemed especially concerned that Alabama imposed the penalty to deter BMW’s lawful conduct outside of Alabama.227 It noted that automobile disclosure laws were “a patchwork of rules representing the diverse policy judgments of lawmakers in 50 States” and that, whereas Congress has authority to enact a nationwide disclosure policy, “it is clear that no single State could do so, or even impose its own policy choice on neighboring States.”228 The Court stressed that both the Commerce Clause and the need to respect the interests and policy choices of other states limit a state’s power to impose undue burdens on interstate commerce.229 To remain within these limits, the Court opined, a state must be able to justify the sanctions it imposes by its interest in protecting its own consumers and economy.230 Hence, it held that Alabama could not punish BMW for conduct that was lawful where it occurred and that [*PG888]did not affect Alabama or its citizens.231 The Court also held that Alabama could not impose sanctions on BMW to deter conduct that is lawful in other jurisdictions, noting that “[t]o punish a person because he has done what the law plainly allows him to do is a due process violation of the most basic sort.”232 The element of surprise involved in this case also troubled the Court, which felt that BMW had reasonably relied on state disclosure statutes in implementing a policy that coincided with the strictest extant statute.233 The Court stressed that “[e]lementary notions of fairness enshrined in our constitutional jurisprudence dictate that a person receive fair notice . . . of the conduct that will subject him to punishment” and that the Due Process Clause affords basic protection against judgments without notice in cases involving civil penalties.234 The Court’s opinion makes it clear that a state violates the Due Process Clause when it holds a party liable where that party had no way to know its activities were unlawful.235 This can result particularly when a court seeks to enforce an anomalous common law whose breadth it had not previously articulated.236

3.  Nationwide Injunctions Based on State Law

Courts have been reluctant to issue nationwide injunctions based on violations of one state’s law when the complained-of acts are legal in many other states.237 Although courts typically opine that their jurisdiction over the parties gives them the power to issue such injunctions, they typically defer to notions of comity when limiting the geographic scope of their injunctions.238 This begs the question of whether issuing nationwide injunctions in such cases may violate the Due Process, Full Faith and Credit,239 or Commerce Clauses.240 En[*PG889]joining lawful acts in State A based on a ruling that they infringe on rights granted by State B would seem to discredit the laws of State A.241 Depending on the acts enjoined, State B’s issuance of such injunctions may also impermissibly regulate interstate commerce.242

In 2001, the United States Court of Appeals for the Sixth Circuit, in Herman Miller, Inc. v. Palazzetti Imports & Exports, Inc., faced these issues in deciding the scope of an injunction enjoining acts that infringed on the plaintiff’s right of publicity under Michigan common law.243 The case involved two competing furniture companies selling a “potato chip” lounge chair and ottoman originally designed by Charles and Ray Eames exclusively for Herman Miller, Inc.244 Herman Miller had obtained the Eames’s publicity rights from their estate in 1990.245 Palazzetti, a New York corporation with its principal office in New York City, marketed reproductions of popular classic furniture styles and began marketing a reproduction of the Eames-designed lounge chair and ottoman in 1989, identifying it as such in advertisements.246 Herman Miller filed suit in the United States District Court for the Eastern District of Michigan, alleging inter alia that Palazzetti’s conduct violated its publicity rights in the Eames name.247 The district court held that Michigan law applied to the claim and devised that its common law recognizes a post-mortem right of publicity even though Michigan courts had yet to determine the more basic issue of whether a right of publicity exists at all under its laws.248 After a trial, the jury returned a verdict against Palazzetti on the right of publicity claim.249 The court then issued a permanent, nationwide injunction enjoining [*PG890]Palazzetti from using the names and likenesses of Charles or Ray Eames in conjunction with its furniture.250

Palazzetti appealed the court’s recognition of a post-mortem right of publicity under Michigan law as well as its granting of a nationwide injunction.251 The Sixth Circuit affirmed the district court’s decision on the descendible right of publicity, reasoning that Michigan’s clear recognition of a right to privacy sufficiently supported such a find-ing.252 The court, however, held that the district court abused its discretion by granting a nationwide injunction because it effectively forced the right of publicity on states that do not acknowledge it.253 Reasoning that it would be unfair to enforce Michigan law in states such as New York–-Palazzetti’s primary place of business–-that had explicitly rejected a post-mortem right of publicity, the court excluded such states from the scope of the injunction.254

In 1985, the United States District Court for the Northern District of Illinois in Hyatt Corp. v. Hyatt Legal Services expressed significant concern over the constitutionality of issuing a nationwide injunction dictated by the United States Court of Appeals for the Seventh Circuit in its remand instructions.255 The Seventh Circuit had held that the defendant’s use of the name “Hyatt” probably violated the Illinois anti-dilution statute and granted an injunction enjoining defendant’s use of the name “Hyatt Legal Services.”256 Although the district court claimed it had the power to issue a nationwide injunction, it decided that there was “a conflict between an interpretation of the anti-dilution law which allows for a nationwide injunction and the commerce clause of the United States Constitution.”257 The court noted that the Supreme Court’s Commerce Clause jurisprudence prohibits states from (a) directly regulating interstate commerce and (b) inci[*PG891]dentally regulating interstate commerce more than is necessary to further the state’s legitimate interests.258 Because “[a]dvertising is an inevitable and often vital aspect of interstate commerce,” the court reasoned that an injunction prohibiting advertisements disseminated outside of Illinois and intended for consumers of other states appeared to interfere directly with interstate commerce, thereby running afoul of the Commerce Clause.259 Even if it considered the effects of the regulation on interstate commerce to be incidental rather than direct, the court reasoned that the Commerce Clause would still forbid a nationwide injunction because the incidental effects of such an injunction outweighed the local interests it sought to protect.260 Particularly troublesome to the court was the prospect of an Illinois statute affecting an Ohio legal office’s intrastate marketing of its services to clients in Ohio, a state that had no anti-dilution statute.261 That “[t]he rights accorded plaintiff by Illinois are not of a nature commonly recognized elsewhere” and that the “policy decisions respecting scope of protection have differed” in various states also contributed to the court’s conclusion.262 The court opined that imposing anomalous Illinois law on “those states that have chosen not to pass such a law, in some cases possibly an explicit choice, or upon those who have interpreted their statute differently, seems anathema to our federal system.”263 Nevertheless, the court was compelled to enter the nationwide injunction because that is what the Seventh Cir-cuit had warranted on remand.264 Citing “the strong possibility of a constitutional infirmity,” however, it temporarily stayed the injunction as to advertisements not expected to appear in Illinois to give the defendant time to mount an appeal.265

More recently, in 1995 the United States District Court for the Southern District of New York held in Deere & Co. v. MTD Products, Inc. that MTD’s television advertisements diluted Deere’s trademark [*PG892]of a leaping male deer under New York’s anti-dilution statute.266 Although claiming it too had the power to issue a nationwide injunction, the court decided that interests of comity strongly favored a limited injunction in this case.267 That approximately half of the states had no anti-dilution law, and that even those states that did may not have prohibited MTD’s complained-of use, persuaded the court to limit the injunction to the confines of New York State.268

III.  Analysis

An analysis of the preceding case law suggests that certain aspects of state-based right of publicity laws may offend provisions of the Constitution beyond the First Amendment and the Copyright Clause.269 In particular, publicity rights may violate the Commerce, Full Faith and Credit, and Due Process Clauses.270

A.  State Right of Publicity Laws Violate the Commerce Clause

As suggested by several of the cases described in Section II, a state’s publicity laws violate the dormant Commerce Clause when they prevent an out-of-state actor from conducting commercial activities that are lawful in the state where they occur.271 Upholding broad publicity laws risks allowing a state to set a national advertising standard because nationwide advertisers have to conform their advertising to the strictest laws or else incur the expense of producing multiple advertisements for use in different states.272 Restricting advertising in this manner is an impermissible restraint on interstate commerce.273

[*PG893]As noted earlier, the United States Supreme Court’s Commerce Clause jurisprudence prohibits a state from (a) directly regulating interstate commerce and (b) incidentally regulating interstate commerce more than is necessary to further the state’s legitimate interests.274 As the United States District Court for the Northern District of Illinois reasoned in Hyatt Corp. v. Hyatt Legal Services, a state law that restricts advertising outside of that state directly regulates interstate commerce because of the vital role advertising plays in the nation’s economy.275 Even if a court deems this effect incidental rather than direct, such regulation seems excessive in light of the local interests publicity laws further.276 To survive Commerce Clause scrutiny, the Court has traditionally required state laws effecting interstate commerce to serve a legitimate local purpose, such as protecting safety or health, which cannot be served as well by less burdensome means.277

Protecting the commercial value of a resident celebrity’s identity is probably not a sufficiently compelling state interest to offset the substantial regulatory effect a state’s publicity laws can have on interstate commerce.278 The reasons the United States Court of Appeals for the Tenth Circuit gave in Cardtoons, L.C. v. Major League Baseball Players Association for holding that the interests served by the right of publicity were too weak to justify restrictions on First Amendment rights also [*PG894]largely support this conclusion.279 Moreover, the argument that a state’s common law right of publicity serves a legitimate local purpose seems particularly vulnerable when the state’s legislature did not even feel compelled to act to protect the interest.280 Such an argument becomes weaker still when a federal court broadens a state’s common law, because no state lawmaking body has felt compelled to regard the right as broadly.281 This is especially so in states like California, where federal courts have expanded the scope of the right under common law beyond what is granted by statute.282

The Supreme Court, by upholding a state publicity law in Zacchini v. Scripps-Howard Broadcasting Co., demonstrated that state publicity rights are not per se unconstitutional.283 Zacchini, however, did not involve the regulation of interstate commerce in any fashion because the infringing use was a broadcast on a local news program.284 Moreover, the Court sought to protect Zacchini’s ability to earn a living, because the newscast appropriated his entire daredevil act.285 As noted earlier, Zacchini is not a typical right of publicity case.286 Plaintiffs in most publicity rights cases have primary occupations through which they built up economic value in their identities; the defendants’ appropriation is not of their primary act but of this secondary economic value created by their fame.287 The interest protected by publicity laws [*PG895]is not nearly as compelling in these more common cases because the defendants are not threatening the plaintiffs’ ability to earn a living.288 Thus, the Court’s decision in Zacchini does not mean that state right of publicity laws are constitutional in the more typical cases involving unauthorized use of a celebrity’s identity in interstate commerce.289

B.  Vague Right of Publicity Laws Violate the Due Process Clause

California’s common law right of publicity, as articulated by the panels of the United States Court of Appeals for the Ninth Circuit in White v. Samsung Electronics America, Inc. and Wendt v. Host International, Inc., violates Due Process.290 The law’s prohibition against unauthorized use of another’s “identity” is too vague to give parties fair notice of the specific uses that may subject them to liability.291

State courts typically limit the right of publicity to the use of a celebrity’s name, voice, face, or signature.292 An advertiser can generally avoid using any of these specific characteristics.293 In White, however, the Ninth Circuit expanded the right such that a court may deem anything that happens to remind someone of a celebrity to be a use of that celebrity’s identity.294 As Judge Kozinski noted in White:

any time anybody in the United States—even somebody who lives in a state with a very narrow right of publicity—creates an ad, he takes the risk that it might remind some segment of the public of somebody, perhaps somebody with only a local reputation, somebody the advertiser has never heard of. . . . So you made a commercial in Florida and one of the [*PG896]characters reminds Reno residents of their favorite local TV anchor (a California domiciliary)? Pay up.295

Under California law, the celebrity would be able to hold the advertiser liable for infringing his or her publicity right, even though any resemblance was purely coincidental, because the common law does not require intentional appropriation.296 Because such a scenario would expose an advertiser to liability without notice, California’s common law right of publicity violates the Due Process Clause on these facts.297 It “fails to provide people of ordinary intelligence a reasonable opportunity to understand what conduct it prohibits,” and is therefore unconstitutionally vague.298

C.  Courts must tailor remedies to right of publicity claims

Once a court finds a defendant liable for infringing a plaintiff’s publicity rights, it must fashion an appropriate remedy.299 Two common remedies are injunctions enjoining the defendant from continuing to infringe the plaintiff’s rights, and damages to reflect the economic harm done to the plaintiff.300 A court must tailor each of these remedies with care to avoid constitutional problems.301

[*PG897]The principal concern with fashioning an injunction is the geographical extent to which the injunction applies.302 As noted earlier, the notion of issuing an injunction to enjoin out-of-state conduct that was lawful where it occurred troubled the courts in Herman Miller, Inc. v. Palazzetti Imports & Exports, Inc., Deere & Co. v. MTD Products, Inc., and Hyatt.303 In Deere, The United States District Court for the Southern District of New York invoked considerations of comity in seeking to limit the injunction to only those states where the complained-of action was unlawful.304 Although the Restatement (Third) of Unfair Competition notes that issuing “an injunction under state law prohibiting otherwise lawful conduct in another state raises serious concerns,” it does not identify those serious concerns with particularity.305 Instead, it notes, “an injunction protecting the right of publicity should ordinarily be limited to conduct in jurisdictions that provide protection comparable to the forum state,” thereby avoiding such concerns.306 It also suggests placing the burden on the defendant to request mod-ification of a multi-state injunction, requiring the defendant to show that the conduct is lawful in one or more of the target states.307

The serious concerns the Restatement alludes to no doubt include the “strong possibility of a constitutional infirmity” resulting from a state issuing a geographically unlimited injunction.308 To comply with the Commerce and Full Faith and Credit Clauses, courts must limit injunctions in right of publicity cases to just those states where the complained-of use is unlawful.309 Doing otherwise offends the Com[*PG898]merce clause because the forum state would effectively be regulating commerce in other states.310 Broad injunctions also offend the Full Faith and Credit Clause by effectively extending the forum state’s right of publicity to states that do not recognize it (or that have a narrower right).311 The forum state would be placing its policy judgment regarding the right of publicity above those of other states that have chosen not to prohibit the complained-of use; in so doing, it would not be giving the requisite full credit to the public acts of those other states.312 To avoid these infirmities, the burden should be on the court, and not the defendant, to limit the injunction ab initio to only those states where the conduct is unlawful.313

Courts must also exercise care in fashioning compensatory damage awards in right of publicity cases by excluding from the calculation the monetary value of damage caused by lawful out-of-state conduct.314 The Supreme Court held in BMW of North America, Inc. v. Gore that a forum state must disregard out-of-state lawful conduct when calculating damages.315 The Court also held that it is inappropriate for a state to use its judicial power to award damages in part to deter a defendant from engaging in lawful out-of-state conduct.316 To conform to these requirements, a court must consider precisely where the plaintiff’s injury occurred.317 Suppose, for example, a court found that a plaintiff’s publicity value dropped by $500,000 because of the defendant’s conduct.318 One might argue that the injury occurred [*PG899]entirely in the forum state, as would be the case for defamation.319 Alternatively, one might argue, perhaps more realistically, that some part of the injury occurred in each state where the plaintiff’s publicity had an economic value and where the defendant’s conduct diminished that value.320 If $200,000 of the injury occurred in states where the defendant’s conduct was lawful, the court must exclude this amount from the damages to comply with BMW.321

D.  A Preemptive Federal Right of Publicity Statute or Narrower State Laws Are Alternative Ways of Addressing These Issues

Several commentators have called for a federal right of publicity to resolve many of the issues raised by the patchwork of state publicity laws.322 A federal right of publicity statute that preempts state publicity laws, both common and statutory, would solve the Commerce Clause and Full Faith and Credit problems identified in this Note.323 As discussed earlier, the Commerce Clause of the Constitution expressly authorizes Congress to regulate interstate commerce while severely restricting states from doing so.324 Congress has used this power to enact federal trademark laws, which regulate interstate commerce in part via advertising, and could rely on this same authority to enact a federal right of publicity statute.325 Once such preempting legislation is in place, creating a nationwide standard under federal law, the dormant Commerce Clause and Full Faith and Credit issues raised by state-based publicity rights would evaporate.326 Such a federal statute should also include provisions to ensure an appropriate balance between publicity rights and those arising under the First Amendment and the Copyright Act.327

[*PG900]If such a federal right of publicity statute required a plaintiff to prove intent and avoided vague terms such as “identity,” it would also address the Due Process concerns identified herein.328 Such a statute would give defendants fair warning by making it clear precisely what uses would subject them to liability.329 It could also authorize courts to issue nationwide injunctions and calculate damages without regard to the extent of publicity rights granted under the laws of the various states.330

As an alternative to federalization, the country’s state and federal legislative and judicial branches may instead resolve the constitutional issues raised by state-based right of publicity laws in other ways.331 For example, state publicity laws may grow more similar over time, yielding a clearer set of rules like those found in most other torts recognized under state law.332 Alternatively, courts could tailor their enforcement of state publicity laws to avoid constitutional problems.333

The state-based approach may be favored in the interest of preserving state sovereignty in a federal system.334 The federal approach, however, has the advantage of creating a true national standard in an area that significantly affects interstate commerce.335 Such a standard could create a higher degree of certainty for both plaintiffs and would-be defendants than is the case under the state-based system, and likely would be easier for courts to administer.336

[*PG901]Conclusion

Courts must tread carefully when handling right of publicity cases. To avoid constitutional infirmities, they must consider a variety of First Amendment, Copyright Clause, Commerce Clause, Due Process Clause, and Full Faith and Credit Clause issues in reaching decisions and fashioning remedies. Congress could eliminate these hurdles by enacting a preemptive federal right of publicity statute, thereby simplifying this idiosyncratic area of the law. Alternatively, courts must construe and enforce state publicity laws narrowly to avoid constitutional issues.

Jeremy T. Marr

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