Serving the Hudson Valley

Is there a New York Right of Publicity? #documentary / #film / #movies

As legal counsel to an independent feature documentary, I encountered an interesting question: Can a New York domiciliary transfer ownership in his / her right of publicity to another by contract?
A right of publicity is a right of ownership and control in one’s name, image, and likeness. No surprise, certain names, images and likenesses are valuable commodities.

As the producer and I reviewed the film’s content for intellectual property licensing, release, and Fair Use considerations, he informed me he was aware of a contract in which a subject of the film, a deceased New York domiciled celebrity, granted 100% exclusive ownership in the rights to his name, image and likeness to a third party by written contract. Our celebrity then died 2 years later.

Our film was already “in the can” for the most part and included clips of our celebrity in various forms, including a painting, archival film footage, and photographs. We certainly wanted our celebrity and recutting was not an option, so we needed to know the degree of exposure; whether our third party would be able to prevent us from including our deceased celebrity – or worse yet – have a claim against us for infringement, breach, or otherwise if we were to proceed without permission.

In working through the question, I first needed to determine whether New York even recognized a right of publicity, let alone whether the contract was valid.

I shot out a few emails, made some calls, and even met for drinks with some film counsel colleagues. I posed the question in three parts: (i) does New York recognize a right of publicity, (ii) if so, can it be transferred by contract, and (iii) if yes, does the contract survive the personality’s death? No one had a solid answer. Plenty of bloviating and some good laughs but the general consensus was play it safe, negotiate a license.

That didn’t sit right with me. Bloviating is no legal answer (believe it or not) and, moreover, from what I had heard our third party wasn’t eager to license his precious personality rights. In fact, he had been warding off our celebrity’s family, friends and amateur biographers for several years, each time waving this iron-clad contract about and threatening litigation should he be defied.

The initial, and now obligatory Google searches, too, did little to clarify my colleagues and so, to the law library I went.

After sifting through the statutes there was nothing on the New York books codifying a right of publicity. No surprise, California had led the way early in in 1971 passing CAL. CIV. CODE §3344.1 (amended 2008) and many states have followed since. Oddly enough, Indiana’s Right of Publicity is one of the more robust, preserving the right for 100 years after the personality’s death. Letterman’s doing perhaps.

More importantly, many of these states treat the right as an asset or as property that may be transferred by contract, or last will and testament, thereby providing that the value in one’s name, image and likeness may be licensed while living and then pass to beneficiaries to license as they please. Some states in fact allow for descendible postmortem publicity rights, recapturing (or first establishing) a deceased personality’s publicity rights for those lucky enough to die in such states.

Yet I found no such treatment in New York. No robust New York statute to answer all my questions, and so I was forced to turn to the patch-work of common law.

Hours digging through cases. Shepardizing the genesis of mitosis. Citation after endless citation, …….. and then there was Norma Jeane.

In the case of Shaw Family Archives LTD et al v. CMG Worldwide, Inc. et al, 486 F. Supp. 2d 309 (2007)(“Shaw”) CMG Worldwide claimed to own Marilyn Monroe’s Right of Publicity and sought to prevent the Shaw Family Archives from using her image on commercial merchandize.

The U.S. District Court for the Southern District of New York ruled that because Marilyn Monroe was domiciled in New York State at the time of her death, she did not possess a right of publicity to her name, image and likeness upon her death. The Court ruled that as a New York State domiciliary Ms. Monroe enjoyed only a state right of privacy under the New York State Consolidated Laws, Article 5, Section 50 – Right of Privacy, which only applies to “living persons” and does not survive the death of the individual, whether by contract or otherwise.

Article 5, Section 50 – Right of Privacy provides: 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.

In Shaw, the U.S. District Court notes that “…To this day, New York law does not recognize any common law right of publicity and limits its statutory publicity rights to living persons. See e.g. Pirone v. MacMillan, Inc., 894 F.2d 579, 586 (2d Cir.1990) (citing Stephano v. News Group Pub., 64 N.Y.2d 174, 183, 485 N.Y.S.2d 220, 474 N.E.2d 580 (1984)).” The Court continues: “As a result, any publicity rights she [Marilyn Monroe] enjoyed during her lifetime were extinguished at her death by operation of law.”

The Court further states that Ms. Monroe was unable to pass any purported right of publicity by last will and testament because: “The legislative history of EPTL §3-3.1 makes clear that it was enacted to codify the rule that a will is deemed to pass all of the property the testator owns at the time of his death, rather than only the property owned at the time when the will was executed.”

So where does this leave us and our celebrity? Must we fear our third party’s contract? Apparently its all been special effects. A third party pulling leavers and blowing smoke from behind the curtain.

In Shaw, the Court informs us that New York does not recognize a common law right of publicity, nor has New York codified any such distinguishable right by statute. Our celebrity thus contracted to transfer a New York right of privacy. Because the New York State Right of Privacy applies to “living persons” only, and does not survive the individual, no proprietary rights in privacy, or publicity, exist at the time of one’s death – at least not in New York.

Taken a final step further, one cannot contract to transfer ownership in something they do not own. If that concept eludes you, call me, I have a bridge that might interest you.

Lastly, our Norma Jeane Court states: Nor does §2-602 of the Uniform Probate Code, which states that a will may pass “property acquired by the estate after the testator’s death,” have anything to do with the present case, because neither New York nor California is among the 18 states that have adopted the Uniform Probate Code in whole or even in part. This court has not found, nor has MMLLC cited, any provision in either the New York or the California probate laws that codifies §2-602.

Conclusion?

The show may go on.

Shaw makes clear that in New York State there is no common law or statutory right of publicity. Further, the New York Right of Privacy dies with the individual. And finally, because one cannot contract to transfer ownership in something they do not own, our third party’s contract was rendered null and void by operation of law upon our celebrity’s death.

Allan J. Ahearne, Jr.

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