A famous person’s right to make money from his or her own fame is called the right of publicity. It is a slippery kind of intellectual property that varies from state to state. When efforts were made to require licenses from people making products using names and images of famous dead celebrities on posters and t-shirts, court battles resulted and laws were enacted. Indiana passed one of the oldest and probably the broadest right of publicity statute in the world. A decision by the 9th Circuit Court of Appeals on Wednesday casts a shadow on one of its broadest provisions. Experience Hendrix L.L.C. v. Hendrixlicensing.Com LTD, Nos. 11-35858, 11-35872 (9th Cir Jan 29 2014).
The first sentence of Indiana’s law says it “applies to an act or event that occurs within Indiana, regardless of a personality’s domicile, residence, or citizenship.” IC 32-36-1-1. It means if you sell a t-shirt in Indiana with the face and name of a famous person who died in New York, you can be sued here for violating dead celebrity publicity rights unless you buy a license from whoever claims to own the rights.
What’s wrong with that? For starters, New York law does not recognize a right of publicity after death. If you sell the t-shirt there and the celebrity died there, you don’t need a right of publicity license. Only living celebrities have publicity rights in New York. But the Indiana law says in effect it won’t abide by the laws in the state where celebrities die. Or anywhere in the world for that matter.
The rock virtuoso Jimi Hendrix died in New York. The Experience Hendrix lawsuit is partly about a dispute in Washington State which has a publicity rights law as broad as Indiana’s. They amended it to apply to rights in dead celebrities “regardless” of where they lived or their citizenship and “regardless” of what the laws there say. Wash. Rev. Code § 63.60.010.
Experience Hendrix is a business which claims Jimi Hendrix publicity rights through his sole heir. Until Washington amended its law, they couldn’t enforce publicity rights in Washington State against Hendrixlicensing.com. When Hendrixlicensing was eventually sued, they argued Washington law couldn’t trump New York law. The trial court agreed and declared the “regardless” parts of the law unconstitutional.
The 9th Circuit reversed the trial court for the Hendrix litigation only, but then cast the shadow on Indiana’s law. It said “Washington’s approach…raises difficult questions regarding whether another state must recognize the broad personality rights that Washington provides.” It continues in a footnote to discuss Indiana’s publicity rights law because it is as broad and a New York court refused to apply it in a case involving claimed rights for Marilyn Monroe. The footnote is at the end of this post.
The 9th Circuit did not say the New York decision was wrong. They just would not apply it to the narrow facts of the long-running Hendrix litigation and sent it back to the trial court on this and other issues not discussed here.
Lawsuits over publicity rights are expensive. The stakes are usually high and most of the pockets are deep. If the day comes when the Indiana Supreme Court or the 7th Circuit Court of Appeals decides whether Indiana may disregard all publicity rights laws outside its borders, the stakes will indeed be high.
6 The Southern District of New York, addressing Indiana’s personality rights act, reached a contrary conclusion. Like the WPRA, Indiana’s personality rights act “applie[s] to all sales made into Indiana regardless of the domicile of the famous person. It also purport[s] to bestow a right of publicity on famous people (‘personalities’) both living and deceased, regardless of their domicile on the date of their death.” Shaw Family Archives, Ltd. v. CMG Worldwide, Inc., 589 F. Supp. 2d 331, 333 (S.D.N.Y. 2008). The Southern District of New York concluded that whether a famous person already dead had managed to leave behind for his/her heirs any descendible right of publicity is not a function of Indiana law (unless, of course, the famous person died a domiciliary of Indiana). Instead it is a function of where that famous person happened to be domiciled at the time of death. Id. We express no opinion about the appropriateness of this language under the facts presented in that case, but we decline to apply that absolute rule to the particular facts and claims at issue in the case before us. We conclude, instead, that Washington does have an interest in recognizing personality rights in all people, living and deceased, whose images may be traded upon within its borders.