Burberry v. Bogart and the Patchwork of Right of Publicity Laws

I learned from IPLaw360 that iconic and excellent British luxury brand Burberry filed a declaratory judgment lawsuit yesterday against the entity asserting rights of publicity in the persona of acting legend Humphrey Bogart. Burberry Ltd. v. Bogart LLC, 12-cv-3491 (S.D.N.Y.). Burberry’s Facebook pages have a timeline of its history including images of notable moments when its products graced famous people. Until a few hours ago, an entry for 1942 displayed the trench-coated Bogart in the last scene of the all-time classic Casablanca.

Bogart, LLC apparently did not think it was the beginning of a beautiful friendship. The complaint recites that Burberry received cease and desist as well as payment demands, and the dec action was filed on federal trademark, right of publicity, and various common law grounds apparently referred to in Bogart’s communications. Around 9 this morning, noir images of Robert Mitchum and Tyrone Power were the placeholders for the 1940′s and Bogie was gone.

Burberry’s major argument seems to be its First Amendment right to talk about history. It asks the court to declare that it can talk about the fact of Bogart wearing Burberry no matter what state right of publicity law applies, and cites both New York Civil Rights Law §51 and California Civil Code §3344.1. Burberry’s home base in the US is on Madison Avenue in Manhattan, and Bogart LLC is based in California.

If the court rejects Burberry’s First Amendment argument, however, it will be thrown into the patchwork of inconsistent state RoP laws that could determine the outcome. Burberry is not selling a line of trench coats called Bogart or running ads for their classic juxtaposed with an image of him. If Bogart has a trademark infringement claim based on the timeline, it may be at the outer edges of that protection while a right of publicity claim may fit the facts better. But what law should apply?

The RoP patchwork is well illustrated by New York and California law. In New York, Bogart is completely dead. In California his persona is very much alive. The New York statute is the grandparent of all the others. It still only allows fame to be exploited as a commodity during a famous person’s life. California, starting with the Fred Astaire Amendment, has long protected and recently expanded the scope of its post mortem RoP protection. Indiana’s may be the most extreme of the many other states that allow post mortem actions.

Lacking a national publicity statute, the Burberry v. Bogart lawyers may have to devote their skills to persuading the court why a Facebook timeline equally accessible in every state is actually more of a New York thing or more of a California thing. The idea that publicity rights pertaining to social media start or end at state boundaries makes no sense. The only nationwide way to address the subject is on the defense. We share one First Amendment, and we need one way to assert publicity rights anywhere in America.

About Craig Pinkus

Craig Pinkus is a partner in the Intellectual Property Group. He also is a member of the Litigation and the Sports, Entertainment and Media Groups. He assists clients with a broad range of disputes and transactions involving all areas of intellectual property, entertainment, and other complex business arrangements. He has conducted trials and arbitrations throughout the United States and has argued appeals before the Seventh, Sixth and Federal Circuit Courts of Appeal, the Indiana appellate courts, and United States Supreme Court.
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