Fashion companies often use celebrities – including their own well-known designers – to endorse and promote their brand. Some even incorporate a celebrity's name or likeness on their goods. Such instances give rise to concerns about the right of publicity, a legal doctrine that “prevents the unauthorized commercial use of an individual's name, likeness, or other recognizable aspects of one's persona. It gives an individual the exclusive right to license the use of their identity for commercial promotion.” (LII).
In the United States, the right of publicity is largely protected by state common or statutory law, and only about half the states have distinctly recognized a right of publicity. It is worth noting, however, that both New York and California have laws in place to protect an individual’s right to publicity. Further, there is also protection provided by federal law.
i. State Law in New York
New York has codified its right of publicity “as part of its ‘Right of Privacy’ statute, at Article 5 of the N.Y. Civil Rights Law … thereby providing protection for a person's: name, portrait, picture, and voice.” (DMLP). Note: New York does not recognize a posthumous right of publicity. (Mirone v. MacMillan, 894 F.2d 579, 585 (2d Cir. 1990)).
To violate New York’s Right of Privacy statute, the use of a person's identity must be:
- Within New York state;
- For advertising or trade purposes (in other words, a use “designed to solicit sales of products or services is forbidden;”) and
- Without written consent.
Exceptions to the right of publicity include protections for:
- Professional photographers against suits by their subjects;
- The use of an author's name, in connection with the work of that author;
- Owners of copyrights in sound recordings; and
- Using a person's identity in connection with products, if the person manufactured or sold those products under their identity. (DMLP).
Also, there is a significant newsworthiness exception, which exempts the use of “a person's identity in connection with a ‘newsworthy’ article, such as a newspaper article.” (DMLP).
ii. State Law in California
The Right of Publicity in California “protects against unauthorized uses of a person’s name or likeness for commercial and certain other exploitative purposes. California has two systems of Right of Publicity law: a statute, and a common law right.” (DMLP).
California's state statute protects a person's:
- Actual voice, not imitations (see Midler v. Ford, 849 F.2d 460, 463 (9th Cir. 1988));
- Photograph (as long as he/she is “readily identifiable”); and
- Likeness. (Cal. Civ. Code § 3344).
In determining violations, courts have interpreted the statute to impose a three-step test:
1. Was there a “knowing” use of the plaintiff’s protected identity?
2. Was the use for advertising purposes?
3. Was there a direct connection between the use and the commercial purpose? (DMLP).
iii. Common Law in California
Courts have held that the common law right is actually quite broader, as it serves to protect an individual’s “identity.” (See Abdul-Jabbar v. General Motors, 85 F.3d 407, 413-14 (9th Cir. 1996)).
Courts have interpreted “identity” broadly, “covering more uses than does the statutory right of publicity. For example, imitating someone’s voice is not a violation of the statute, but it may violate the common law right. See Waits v. Frito-Lay, 978 F.2d 1093, 1098-1100 (9th Cir. 1992). A picture of a distinctly-decorated race car can be a common-law violation, even if the driver himself is not visible. Motschenbacher v. R.J. Reynolds Tobacco, 498 F.2d 821, 827 (9th Cir. 1974). A robot can constitute a common-law violation, even if not sufficiently detailed to violate the statute. White v. Samsung, 971 F.2d 1395, 1397-99 (9th Cir. 1992).” (DMLP).
Courts generally describe California’s common-law right as a four-step test, in which a plaintiff must allege:
1. The defendant’s use of plaintiff’s “identity”;
2. The appropriation of plaintiff’s name or likeness to defendant’s advantage, commercially or otherwise;
3. Lack of consent; and
4. Resulting injury. See White v. Samsung, 971 F.2d 1395, 1397 (9th Cir. 1992). (DMLP).
iv. Federal Law
If a person can establish that “an aspect of his or her identity as a trademark, protection may be provided by Federal law.” (LII). Moreover, federal law – by way of the Lanham Acts – can also provide protection where a person's identity is used to falsely advertise a product or designate its origin.
Right of Publicity in Practice
When using a celebrity's name, image, likeness or voice on goods or in advertising for the goods, companies should: Be aware of the celebrity's right of publicity, which allows a person to control the commercial exploitation of his identity. While the infringement of publicity rights and resulting consumer confusion may be asserted in a cause of action under Section 43(a) of the Lanham Act, rights of publicity are protected primarily under state law. Therefore, relevant state law should be consulted to determine whether a particular state recognizes the right of publicity and the framework for protecting these rights.
A person may generally freely assign or sell the right to use his identity in whole or in part (for example, just his name). Unlike trademark assignments, there is no restriction on assignments of publicity rights separate from an accompanying business or goodwill. A person may also generally license the right to use his identity, in whole or in part, to another person or entity. The license can be exclusive or non-exclusive and may authorize sublicenses.
Both assignments and licenses may impose various restrictions, including contractual restrictions on the:
1. Specific elements of identity assigned or licensed for use (for example, the celebrity's voice);
2. Nature and extent of the assignment or licensed use (for example, on t-shirts sold online);
3. Geographic territory of assignment or licensed use; and
4. Duration of the assignment or licensed use. (Fashion Law: Overview, Practical Law Practice Note 2-616-4923).
Failure to Obtain a License for Publicity Rights
If a fashion brand or other company fails to obtain an assignment or license of publicity rights, the celebrity, whose name, image or likeness has been used may seek the following remedies:
- Injunctive relief;
- Monetary damages;
- An award of the infringer's profits; and/or
- Punitive damages for willful violations.