From Dracula to Drag Race: An Update on Right of Publicity

This article originally appeared in Law360. Reprinted with permission. Any opinions in this article are not those of Winston & Strawn or its clients; the opinions in this article are the authors’ opinions only.

What do Kendall and Kylie Jenner, 1980s one-hit wonder Toni Basil, and the late jazz musician Thelonious Monk have in common? Each of them is currently involved in “right of publicity” lawsuits filed in California, highlighting the disparate ways that celebrities and others use the courts to protect against the commercial exploitation of their identities. With so many artists and entertainers congregating in Hollywood and throughout the Golden State, it is unsurprising that California’s right of publicity statutes provide relatively broad protections and the possibility of recovering substantial damages. However, practitioners should pay close attention to the statutory requirements and keep in mind that the right of publicity laws of other states can come into play in critical ways as part of the choice-of-law analysis.

Like many other states, California has long recognized the publicity rights of living persons (codified as Section 3344 of the California Civil Code), but post-mortem rights (set forth in Section 3344.1) are a more recent development. In a landmark 1979 case involving “Dracula” actor Bela Lugosi, the California Supreme Court held that a deceased individual’s rights of publicity terminated upon death and could not be passed down to heirs. Six years later, the Celebrity Rights Act was passed by the California Legislature, enabling a celebrity’s personality rights to survive 50 years after his or her death (extended to 70 years in 1999). While all persons in California have the right to recover damages for the unauthorized, commercial use of their “name, voice, signature, photograph, or likeness,” only deceased celebrities can transfer their publicity rights to their heirs upon their death.

In just the past few months, several lawsuits have been filed by celebrities (or their estates) alleging violations of California’s right of publicity statutes.

On August 29, the estate of famed jazz pianist and composer Thelonious Monk sued North Coast Brewing Company in the Northern District of California, alleging that the craft brewery’s “Brother Thelonious Belgian Style Abbey Ale” prominently features the name, image, and likeness of Monk (who passed away in 1982) without the consent of his estate. In addition to right of publicity violations, Monk’s estate sued for federal trademark infringement and unjust enrichment.

And on August 31, recording artist and choreographer Toni Basil—singer of the 1980s hit “Mickey”—sued Disney, the creators of “South Park” and “RuPaul’s Drag Race,” and others in California state court over their alleged use of her voice and persona in advertisements and television shows. Basil also filed a separate lawsuit relating to the same song in federal court against another defendant, alleging right of publicity violations and false endorsement under the Lanham Act, among other claims.

While right of publicity claims are often joined with trademark violations, a recent case has highlighted its intersection with copyright law. In July 2017, a photographer sued Kendall and Kylie Jenner and their companies for misappropriating his photographs of Tupac Shakur in T-shirt designs for the sisters’ fashion line. In addition to copyright infringement and violations of the Digital Millennium Copyright Act, the complaint includes a statutory right of publicity claim, alleging that the T-shirts at issue reproduced the photographer’s name and signature from the original photographs without his consent.

While plaintiffs may (and often do) also sue for right of publicity violations under California common law, statutory causes of action provide certain quantifiable benefits. Specifically, only a statutory cause of action provides for automatic damages of $750 per violation, the disgorgement of profits from the unauthorized use, mandatory attorney’s fees to the prevailing party, and a discretionary award of punitive damages. For that reason, it is important for both plaintiffs and defendants to understand certain specific requirements of the statutory causes of action.

For example, both Section 3344 and Section 3344.1 require that the plaintiff’s identity be used either on the defendant’s products, merchandise, or goods, or used for purposes of commercial sponsorship or paid advertising. Therefore, uses in news coverage, literary works, and other forms of entertainment are generally exempted from liability.

Furthermore, the holder of a deceased celebrity’s right of publicity cannot recover any damages for uses that occur before their ownership claim is registered with California’s secretary of state.

And, importantly, California’s post-mortem statute is generally inapplicable unless the celebrity was “domiciled” in California at the time of his or her death.[viii] The question of domicile is significant, as some jurisdictions (including New York) do not recognize a post-mortem right of publicity. In 2012, the Ninth Circuit held that the executors of Marilyn Monroe’s estate could not assert California’s posthumous right of publicity because Monroe was domiciled in New York at the time of her death. Similarly, Princess Diana’s estate could not assert a post-mortem right of publicity against an alleged infringer because the Princess of Wales was domiciled in Great Britain when she died—a jurisdiction that does not recognize rights of publicity at all. Moreover, even state statutes that do allow for descendible publicity rights vary in terms of the duration of the post-mortem right (from 20 years in Virginia to 100 years in Indiana and Oklahoma) and in terms of whether the rights protect those who died prior to the enactment of the relevant statute.

Therefore, practitioners seeking to assert post-mortem rights of publicity under Section 3344.1 and similar statutes should look into the celebrity’s date and place of death as well as the location of their “permanent home” at that time—which may or may not have been the same as their residence. While mere California dreamin’ is not enough, it may be sufficient to show that at the time of death, the celebrity intended to move back to a permanent home in California.

As recent cases demonstrate, claims under California’s right of publicity statutes are an attractive option for plaintiffs as they allow for the recovery of damages that are generally unavailable under common law. If the statutory requirements and formalities are met, these claims can be an important tool in conjunction with trademark and copyright claims, or in their own right.