How Long Does a Post-Mortem Right of Publicity Last?–Hebrew University v. GM (Guest Blog Post)

by Guest Blogger Tyler Ochoa

The right of publicity is a state-law right to use one’s identity for a commercial purpose. Thus, if you want to use a celebrity’s name or image in an advertisement, you have to get his or her permission. Similarly, if you want to sell merchandise that features a celebrity, you probably have to get his or her permission. (I say “probably” because you may have a First Amendment right in some circumstances. But that’s a topic for another day.)

A long-running debate is whether and how long the right of publicity should continue after the death of the person involved. The heirs and estates of dead celebrities argue that celebrities should be able to leave their “assets” to their heirs, that consumers may think that the heirs endorsed the advertiser or the product, and that it would be unfair to allow the advertiser or the merchandiser to make money without sharing it with the celebrity’s family. Advertisers, merchandisers, and public domain advocates argue that celebrities shouldn’t be able to control how their images are used after death. Imagine, for example, how many businesses are named after or use the images of Benjamin Franklin, Abe Lincoln, and other American icons. It would be bizarre if the images of those public figures could be kept out of the public domain and controlled forever by their remote descendants.

In the 14 states that have a statutory post-mortem right of publicity, the decision is made by the legislature. Most legislatures have adopted a term of years after the death of the celebrity, ranging from 20 years (in Virginia) to 100 years (Indiana and Oklahoma). One state, Tennessee, allows the right to last indefinitely, as long as it is being exploited (see Elvis Presley). California originally adopted a term of 50 years after the celebrity’s death, a term borrowed from the 1976 Copyright Act; after the term of copyright was extended to life-plus-70 years in 1998, California extended its statutory post-mortem right of publicity as well. Two states with statutory rights of publicity (New York and Wisconsin) confine the right to “any living person,” meaning there is no post-mortem right of publicity in those two states.

In states that recognize the right of publicity as a matter of common law, the situation is far less clear. In the ten states that have addressed the issue, five have held that there is no post-mortem right of publicity at common law (although three of those states have since adopted post-mortem statutes). Five states have recognized a post-mortem right of publicity at common law, without specifying whether it has a maximum duration.

The issue was recently decided as a matter of New Jersey common law in Hebrew Univ. of Jerusalem v. General Motors, LLC, 2012 WL 4868003, 2012 U.S. Dist. LEXIS 148150 (C.D. Cal. Oct. 15, 2012). The case involved a magazine advertisement that featured the face of Albert Einstein “digitally pasted onto a muscled physique, accompanied by the written message ‘Ideas are sexy too.’” Hebrew University of Jerusalem, which owns all of Einstein’s “literary property and rights” under his will, sued GM for unauthorized use of Einstein’s likeness.

Following a series of previous cases, the district court (A. Howard Matz, District Judge) held that the issue of whether Einstein had a post-mortem right of publicity, and how long it lasts, should be determined by the law of the state of his domicile at the time of death. (For a recent application of this principle, see my commentary on the Marilyn Monroe case recently decided in the Ninth Circuit.) Einstein was a resident of Princeton, New Jersey, when he died on April 18, 1955, so the district court decided it should apply New Jersey law. But New Jersey does not have a right of publicity statute, so the issues had to be addressed and decided as a matter of New Jersey common law. (The New Jersey legislature has twice rejected a bill that would create a post-mortem right of publicity with a duration of 70 years after death.)

Whether New Jersey even recognizes a post-mortem right of publicity as a matter of common law is an open question. In Estate of Presley v. Russen, 513 F. Supp. 1339, 1355 (D.N.J. 1981), a federal district court predicted (under the Erie doctrine) that New Jersey would recognize such a right, but that decision has never been ratified by a New Jersey state court. (Ironically, the Russen court did not apply the law of the state of Presley’s domicile at the time of death, Tennessee, but instead applied the law of the state where the infringement allegedly occurred.) At the time, however, Presley had been dead for less than five years, so the court did not undertake to decide how long the right should last; although it suggested that one might look to the Copyright Act (which was then life of the author plus 50 years) for guidance. Id. at n.10.

In the Hebrew University case, the plaintiff argued for a perpetual right of publicity, or in the alternative, for a term based on the current Copyright Act (70 years after death), while the defendant argued for no post-mortem right, or in the alternative, a right limited to 50 years after the celebrity’s death. The court concluded that “[a] maximum 50-year postmortem duration here would be a reasonable middle ground that is long enough for a deceased celebrity’s heirs to take advantage of and reap the benefit of the personal aspects of the right.” In so holding, the court noted that the Restatement (Third) of Unfair Competition is skeptical about the value of a post-mortem right. See § 46, cmt. h (“As a general matter, however, the dignitary and proprietary interests that support the recognition of a right of publicity become substantially attenuated after death. Postmortem uses are also less likely to create a false suggestion of endorsement or sponsorship.”). In rejecting the life-plus-70 years term, the court noted that at the time that Einstein’s rights passed to the Hebrew University in 1982, both the Russen case and the then-existing Copyright Act suggested a life-plus-50 years term, so that the University could not have had a reasonable expectation that the right would last any longer.

The district court also relied on policy considerations in choosing a life-plus-50 years term. It stated that “[a]n open-ended right of publicity, or even a postmortem duration longer than 50 years, raises considerable First Amendment concerns and creates a potentially infinite curb on expression.” The court also noted that “the dizzying explosion in the tools of communication . . . [has] caused a swift and dramatic, but still developing, impact on ordinary life,” without expressly finding that it favored a shorter right. Finally, the court noted that 50 years is both the median and the mode (most-common) duration of the 14 states that have post-mortem right of publicity statutes. It concluded that “[a] maximum duration of 50 years appropriately reflects the balance between meaningful enforcement of the right of publicity after a famous individual’s death and the public’s interest in free expression.” Since the advertisement appeared 55 years after Einstein’s death, the court ruled in favor of General Motors.

One might ask why the District Judge took it upon himself to decide the issue. If New Jersey’s common law is unclear, why not certify the question to the New Jersey Supreme Court? A quick look at New Jersey’s certification procedure reveals the answer. Oddly, the applicable rule allows the New Jersey Supreme Court to answer questions posed to it only by the U.S. Court of Appeals for the Third Circuit. New Jersey appears to have completely overlooked the possibility that another federal court might be faced with deciding an unsettled issue of New Jersey law.

The decision will almost certainly be appealed to the Ninth Circuit, given that the Hebrew University makes millions of dollars licensing Einstein’s image for various purposes. (Einstein was #7 on Forbes’ 2011 of top-earning dead celebrities, raking in a cool $10 million.) Given New Jersey’s odd certification rule, however, the Ninth Circuit won’t be able to ask the New Jersey Supreme Court for guidance either. If the Ninth Circuit upholds the decision on appeal, it would effectively cast Einstein’s name and image into the public domain. As with Marilyn Monroe’s right of publicity, however, that statement is subject to four important caveats:

First, although Einstein’s likeness may be in the public domain as a matter of state law, anyone wishing to reproduce a specific photograph of Einstein will still have to negotiate with the owner of the federal copyright in that work.

Second, although Einstein’s name may be in the public domain as a matter of state law, use of his name for particular goods or services may infringe one of the many registered trademarks (by Hebrew University, its licensees, and others) that use Einstein’s name as a mark.

Third, it is possible that some states with a longer post-mortem duration will apply a choice-of-law rule that looks to the state of infringement, rather than the state of the person’s domicile at the time of death. (Washington State has such a statute, for example, although a federal district has held that it is unconstitutional. See Experience Hendrix, LLC v., Ltd., 766 F. Supp. 2d 1122 (W.D. Wash. 2011).)

Fourth, as the District Judge noted, “There is nothing stopping [the plaintiff] from petitioning the New Jersey Legislature to pass a statute, with retroactive applicability, that would create a definitive postmortem right of publicity with the extended duration that [it] seeks here.” Should the plaintiff succeed in doing so, Einstein’s name and likeness will be removed from the public domain and will once again become private property.