New York’s New Post-Mortem Right of Publicity Law Comes Into Effect, Part 1 (Guest Blog Post)
by guest blogger Tyler Ochoa
On May 29, 2021, New York’s new post-mortem right of publicity law came into effect. The law is codified at N.Y. Civil Rights Law § 50-f. It provides for a post-mortem right of publicity for a “deceased personality” or a “deceased performer” for a period of 40 years after the person’s death. Because New York did not have any post-mortem right of publicity before the enactment of this statute in November 2020, this is a very big deal. However, there is a catch buried in an uncodified section of the enacted bill that severely limits the application of the new statute: it only applies to celebrities who die on or after the effective date. In other words, performers and personalities who are already deceased remain in the public domain for purposes of New York law.
(In the interests of full disclosure: in 2017. 2018, and 2019, I signed statements prepared by the Motion Picture Association of America (MPAA) opposing previous version of this bill. I was not asked to sign such a statement in 2020; and to my knowledge, the MPAA did not oppose passage of the amended bill in 2020. I do not have any inside information, but I believe that the lack of retroactivity, excluding previously deceased celebrities from the protection of the statute, was an important part of the compromise that led the MPAA to accept the amended bill.)
This is the first of a two-part series on the new law. In this post, I’ll explain the development of existing law and previous controversies concerning post-mortem rights of publicity. In the second post, I’ll do a statutory analysis.
Background: New York’s Existing Statutory Right of Privacy
In 1890, Samuel Warren and Louis Brandeis published their famous article The Right to Privacy, 4 Harv. L. Rev. 193 (1890). In it, they argued for a “right to be let alone,” including the right of a person to prevent the publication of their photograph: “since the latest advances in photographic art have rendered it possible to take pictures surreptitiously, the doctrines of contract and of trust are inadequate to support the required protection, and the law of tort must be resorted to.” Id. at 211.
A decade later, the article became the focus of a litigated case. Abigail Roberson, age 17, was distressed to discover that a photograph of her was being used in an advertisement for the Franklin Mills Flour Company. She sued for a violation of her right to privacy. The case reached the New York Court of Appeals (the highest court in New York) in 1902, which held 4-3 that the common law did not recognize a right of privacy and she could not recover. Roberson v. Rochester Folding Box Co., 171 N.Y. 538, 64 N.E. 442 (1902).
50. A person, firm or corporation that uses for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person, or if a minor of his or her parent or guardian, is guilty of a misdemeanor.
51. Any person whose name, portrait, picture or voice is used within this state for advertising purposes or for the purposes of trade without the written consent first obtained as above provided may maintain an equitable action in the supreme court of this state against the person, firm or corporation so using his name, portrait, picture or voice, to prevent and restrain the use thereof; and may also sue and recover damages for any injuries sustained by reason of such use….
This was the first statutory recognition of any type of right of privacy in the United States. As amended (“voice” was added in 1995), this statute is still the foundation for the right of privacy in New York. Note, however, that section 50 is expressly limited to “any living person,” and that implicitly, section 51 is also so limited (“as above provided”).
Abigail Roberson didn’t get any money, but she did get the last laugh. In 1904, the man who had written the majority opinion, Chief Judge Alton B. Parker, became the Democrat nominee for President against the incumbent, Republican Theodore Roosevelt. During the campaign, he complained that he and his family were being harassed by photographers (today we call them “paparazzi”): “I reserve the right to put my hands in my pockets and assume comfortable attitudes without being everlastingly afraid that I shall be snapped by some fellow with a camera.” In response, Roberson wrote a letter published on the front page of the New York Times: “I take this opportunity to remind you that you have no such right as that which you assert. I have very high authority for my statement, being nothing less than a decision of the Court of Appeals of this State wherein you wrote the prevailing opinion…. I am forced to the conclusion that this incident well illustrates the truth of the old saying that it makes a lot of difference whose ox is gored.”
Background: The Common-Law Right of Publicity
In 1905, Georgia became the first state to adopt a common-law right of privacy. The facts of the case were quite similar to Roberson: a studio photograph of Paolo Pavesich was used without his permission in an advertisement for life insurance. The Georgia Supreme Court unanimously held that “the publication of one’s picture without his consent by another as an advertisement” is an invasion of “the right of privacy.” Pavesich v. New England Life Insurance Co., 122 Ga. 190, 220, 50 S.E. 68 (1905). (One suspects it is not a coincidence that male judges were more sympathetic to a man whose photo was used without permission than to a woman in the same position; but the Georgia judges were no doubt also aware of the controversy that the Roberson decision had caused.) A number of states followed suit; and within a few decades the right of privacy was firmly established. There were a few dissenting voices, however, that suggested celebrities could not complain about an invasion of their “privacy” when they had sought the public limelight. See O’Brien v. Pabst Sales Co., 124 F.2d 167 (5th Cir. 1941).
In the 1950s, two baseball card companies went to war. The market leader was Bowman Gum Company, which had signed contracts with a number of ball players permitting it to use their likenesses on baseball cards. Most of those contracts also provided for exclusivity: the player promised not to allow other companies to do the same. The upstart was Topps Chewing Gum, Inc., which paid more money to obtain releases from many of the same ball players to publish its baseball cards. After Bowman was purchased by Haelan Laboratories, it filed suit against Topps for tortious interference with contract.
But Haelan had at least two problems with its case. The first was that knowledge was an essential element of the tort of interference with contract, and Haelan could not always prove that Topps had knowledge of the exclusivity clauses. (In some instances, this was because the releases had had been obtained by a third party, Russell, which assigned the contracts to Topps.) The second was the New York statute, which gave the right to the players to decide whether to allow their photos to be published. Haelan could have sued the players for breach of contract, but it didn’t want them to alienate them. What Haelan wanted was an assignable property right, so that it could enforce the players’ contractual promises of exclusivity against a third party. But Topps argued convincingly that the statutory right of privacy was a personal right that could not be assigned and could only be enforced by the person depicted.
In the famous opinion of Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953), the Second Circuit responded by inventing a “right of publicity” that was assignable:
We think that, in addition to and independent of that right of privacy (which in New York derives from statute), a man has a right in the publicity value of his photograph, i.e., the right to grant the exclusive privilege of publishing his picture, and that such a grant may validly be made “in gross,” i.e., without an accompanying transfer of a business or of anything else….
This right might be called a “right of publicity.” For it is common knowledge that many prominent persons (especially actors and ball-players), far from having their feelings bruised through public exposure of their likenesses, would feel sorely deprived if they no longer received money for authorizing advertisements, popularizing their countenances, displayed in newspapers, magazines, busses, trains and subways. This right of publicity would usually yield them no money unless it could be made the subject of an exclusive grant which barred any other advertiser from using their pictures.
Following Haelan, the newly-minted “right of publicity” received the endorsement of two influential commentators. The first was Melville Nimmer, who later became a professor at UCLA School of Law and authored a leading treatise on U.S. copyright law. In The Right of Publicity, 19 L. & Contemp. Probs. 203 (1954), Nimmer praised the Second Circuit’s decision in Haelan and recommended its adoption nationwide. Six years later, William Prosser, Dean of the University of California at Berkeley School of Law and author of the treatise Prosser on Torts, authored an influential article entitled simply Privacy, 48 Cal. L. Rev. 383 (1960), in which he named four categories of invasions of privacy, including “appropriation, for the defendant’s advantage, of the plaintiff’s name or likeness.” Prosser’s four privacy torts were incorporated into the Restatement (Second) of Torts (1977), for which he was the Reporter. As a result, many other states adopted a common-law right, whether named privacy or publicity, that became an assignable intellectual property right.
Note that Haelan was in federal court because of diversity of citizenship between the parties. Accordingly, under the doctrine of Erie Railroad Co. v. Tompkins, 304 U.S. 64 (1938), the substantive law to be applied by the federal court was New York law, rather than general federal common law. Thirty years later, the New York Court of Appeals held that the Second Circuit’s Erie prediction was incorrect. In Stephano v. News Group Publications, Inc., 64 N.Y.2d 174 (1984), it held that “Since the ‘right of publicity’ is encompassed under the Civil Rights Law as an aspect of the right of privacy, which … is exclusively statutory in this State, the plaintiff cannot claim an independent common-law right of publicity.” Id. at 183 (emphasis added).
But the Stephano decision came thirty years too late. By the time it was decided, the right of publicity was already firmly embedded in the common law of many other states. In her book, The Right of Publicity: Privacy Reimagined for a Public World (Harv. Univ. Press 2018), Professor Jennifer Rothman argues that Haelan was a wrong turn that should be abolished, and that states should return to a right of privacy that is personal and is not assignable, so that celebrities (and not corporations) retain control over their own images.
Background: The Post-Mortem Right of Publicity
During the thirty years that the federal courts were confidently (but incorrectly) predicting that New York would recognize a common-law right of publicity, in many states there arose the question of whether the right of publicity should continue to exist post-mortem, so that a person’s heirs could enforce the right of publicity against others after the person’s death.
In the 1970s and 1980s, a number of district courts and the Second Circuit predicted that New York would recognize a post-mortem right of publicity that was descendible. See, e.g., Factors Etc., Inc. v. Pro Arts, Inc., 579 F.2d 215, 220-22 (2d Cir. 1978) (Elvis Presley); Price v. Hal Roach Studios, Inc., 400 F. Supp. 836, 844-45 (S.D.N.Y. 1975) (Laurel and Hardy). Georgia likewise held that its common-law right of publicity was descendible. Martin Luther King, Jr. Center for Social Change, Inc. v. American Heritage Prods., Inc., 250 Ga. 135, 296 S.E.2d 697 (1982).
In 1979, however, the California Supreme Court held that there was no post-mortem right of publicity for a deceased celebrity. (The lead case, ironically, involved actor Bela Lugosi, whose most famous role was the undead Count Dracula in the 1927 Broadway production and the 1931 film adaptation.) Lugosi v. Universal Pictures, 25 Cal. 3d 813, 160 Cal. Rptr. 323, 603 P.3d 425 (1979); Guglielmi v. Spelling-Goldberg Prods., 25 Cal. 3d 860, 160 Cal. Rptr. 352, 603 P.2d 454 (1979) (Rudolph Valentino). One year later, the Sixth Circuit predicted that Tennessee likewise would not recognize a post-mortem right of publicity. Memphis Development Foundation v. Factors Etc., Inc., 616 F.2d 956 (6th Cir. 1980) (Elvis Presley).
As a result, during the first half of the 1980s, plaintiffs with post-mortem right of publicity claims sought to apply get their cases heard in New York, while defendants sought to use the law of either California or Tennessee. See Factors Etc., Inc. v. Pro Arts, Inc., 652 F.2d 278, 280-81 (2d Cir. 1981) (applying Tennessee law), opinion on denial of reh’g, 701 F.2d 11 (2d Cir. 1983); Groucho Marx Prods. v. Day & Night Co., 689 F.2d 317 (2d Cir. 1982) (Marx Brothers).
But there was an abrupt reversal of the law in 1984. That year, the New York Court of Appeals held in Stephano that there was no common-law right of publicity in New York (post-mortem or otherwise), rendering invalid all of the cases that had held to the contrary. Also in that year, California enacted its statutory post-mortem right of publicity (Cal. Civ. Code § 990, later amended and renumbered as Cal. Civ. Code § 3344.1) and Tennessee also enacted a statutory post-mortem right of publicity (Tenn. Code § 47-25-1105). Suddenly, the strategic positions of the parties were reversed: plaintiffs with post-mortem right of publicity claims wanted to apply the law of either California or Tennessee, while defendants wanted to apply the law of New York.
This disparity between the twin poles of the entertainment industry, California and New York, played out in a remarkable long-running dispute over the post-mortem right of publicity of actress Marilyn Monroe. At the time of her death in 1962, Monroe owned both a house in California and an apartment in New York. She lived in California when she was making movies, but she lived in New York in between movies. Although she died in California, for tax reasons her will was submitted for probate in New York, and her estate relied on testimony supporting its position that she was “domiciled” in New York at the time of her death. Four decades later, however, in parallel litigation with photographers in California and New York, her estate took the position that she had been domiciled in California, and was therefore entitled to its statutory 70-year post-mortem right of publicity. Eventually, however, the Ninth Circuit held that her estate was judicially estopped from claiming she was domiciled in California, terminating her post-mortem right of publicity. (For the full story, see my previous blog post titled Marilyn Monroe’s Image is Cast Into the Public Domain — Sort Of).
Thus, for the past four decades, California has had a statutory post-mortem right of publicity (originally 50 years after death, now 70 years after death), while New York has no post-mortem right of publicity of any kind. During the long-running litigation involving Marilyn Monroe, her estate tried several times to get the New York Legislature to enact a post-mortem right of publicity statute. It failed each time, largely because of opposition from the MPAA. That is why the enactment of a post-mortem right of publicity statute in New York, after so many failed attempts, is such a big deal.
For more on the post-mortem right of publicity, see my previous blog post titled How Long Does a Post-Mortem Right of Publicity Last?–Hebrew University v. GM. (That ruling, limiting the duration of Albert Einstein’s post-mortem right of publicity to 50 years, was so controversial that it was later vacated upon settlement, by agreement between the parties. See Hebrew University of Jerusalem v. General Motors, Inc., 2015 WL 9653154 (C.D. Cal. Jan. 12, 2015).)