Roundtable: The Right of Publicity in New York, St. John’s University

An Academic Discussion of Policy Choices in Designing a Publicity/Privacy Rights Regime: Rothman, Buccafusco, & Tushnet

The roundtable is on the proposed changes to NY's ROP, which are very extensive.

[I didn't take notes early on, sorry, but Prof. Rothman discussed issues like transferability, postmortem rights/justifications thereof; Prof. Buccafusco worked through the statutory text and showed that the exception to the exception to the exception structure raised lots of questions such as the treatment of biopics]

Bankruptcy: freely transferrable rights can be transferred involuntarily in bankruptcy. OJ Simpson: faced forced transfer of his IP, including his book, released under a cover that looked like it said “I Did It” instead of “If I Did It”

Reed v. Town of Gilbert: Supreme Court announced a stringent rule applying strict scrutiny for content-based distinctions and exceptions: there has to be a compelling government interest justifying the regulation and any exceptions also have to meet stringent tests—overbreadth will get the law struck down, but so will exceptions that indicate that the law isn’t targeting enough of the issue

Consider a biography of a literary figure that includes a number of quotes from her writings that qualify as fair use, or that are licensed by the copyright owner who isn’t the ROP holder—that seems to replicate her professional activities—there seems to be different treatment for writers, composers and artists than for other creators or public figures, and that could generate first amendment problems as well as uncertainties.

Other lessons from recent challenges to new problems largely generated by the digital age: revenge porn laws—where written broadly, risk invalidation as overbroad—Anthony Weiner and now apparently a number of other congresspeople are the usual examples: if you write a law that would prevent a woman from speaking out about the explicit photo that a congressman sent her, then your law is overbroad and will probably not survive First Amendment scrutiny.

By contrast, narrow laws directed at unwanted disclosures of ordinary people’s intimate photos shared in consensual contexts can and should survive.

Publicity rights are different from revenge porn, but the lesson about being clear about the goals, especially when you go beyond regulating advertising, is very important

Recent case from the 9^th Circuit: while the 9^th Circuit had previously approved very expansive rights of publicity, Hurt Locker case it reversed course—applying ROP to a movie at all required the ROP to survive strict scrutiny, which it could not do at least in the circumstance of the Hurt Locker

Inextricably intertwined w/the right of publicity: definition?  Completely new concept, not borrowed from other doctrines; there is a related concept for determining what is commercial speech, but in that case when the First Amendment protected content is inextricably intertwined with unprotected content, the First Amendment wins, and this provision seems to be designed to reverse that.

Agree with professor Buccafusco about the questions about biopics.  Documentary about athlete’s sports successes? 

Vagueness and uncertainty concerns—First Amendment doctrine says that if you can’t readily determine what’s covered, the law will be void for vagueness.  Here is where a more specific labor right, similar to the special privacy rights now granted to police officers in section 50, rather than an exception to the exception might be better tailored to deal with what seems to be the concern

Another example where a court might find an invalid content based exception under Reed is the exception for the use of an individual's right of publicity for fund- raising purposes by not-for-profit radio and TV stations

Also raises copyright preemption issues: even if 1A doesn’t preclude a use, the Copyright Act may do so if it interferes w/rights to reproduce works that the performers or athletes consented to making—Dryer case in the 8^th Circuit, Maloney in the 9^th Circuit, 7^th Circuit also—2d Circuit is unlikely to create a split by allowing a ROP claim to proceed against a work even if it is subject to the exception to the exception—focusing on the labor law components of a reanimation claim could be more likely to avoid preemption

Part 3: A Discussion With Legislative Actors About The Goals and Means of A8155-A/S5857-A: Sen. Savino, Bergin, Clenahan, & Maggs

Savino: Important to understand how we create legislation.  W/o lots of input you end up with bad law.  Fewer members of the legislature now are lawyers; we rely on counsels/staff to draft laws.  History of ROP in NY started w/a girl who saw her face on a bag of flour and sought redress. Beginning is an individual who felt aggrieved and sought redress from her gov’t— “lobbyist” began in NY where people waiting for legis. would sit in the lobby.  Views this as a labor issue—workers’ rights.  Time to update NY law.  Has heard from SAG-AFTRA and MPAA, but now hearing from IP lawyers. We don’t want trolls.

Bryan Clenahan: 99 year old law needs to be updated for the digital age. This is a fluid process w/ more drafts to come.

Robert Bergin: Represents the majority leader, lead sponsor of bill.  1902 marked first case, and also introduction of Brownie camera, opened up a new field.  Reanimation/computer generated images reach a point where changes are needed.  Fairness to deceased’s estates about benefiting from use v. other people w/no connection.

Amy Maggs: Central staff/drafter.  In the room where the inextricably intertwined language happened.  [But gets bonus points for Hamilton reference.]

Scavino: Suggestions for language changes to correct the deficiencies identified?

Jeremy Sheff: lots of parts of the draft use language with a history. But salient terms don’t have that pedigree, either not explicitly defined or not found in statute on the books w/100 years of history.  What is the impetus for including those terms in the draft?  Is there a way to either define those terms or create legislative history for interpreting those terms?

Maggs: We know inextricably intertwined is imperfect—that’s being negotiated among parties.  Partially meant to deal w/avatars and digital recreations like those in Rogue One.  [But I’d even add talk about why you have proposed protection for “gestures.”  Why is that important for those objectives?]

Bergin: What we were looking at is existing law, grafting onto it. Not trying to undo 100 years of experience.  We’re trying to add postmortem and dealing w/new tech. Trying to keep purposes of trade.

Maggs: took out the misdemeanor, b/c we were asked to get rid of that.

Scavino: Actual entities affected—what may appear to be confusing is language they’ve agreed on to protect their interest; it made sense to them.   [This isn’t a great justification for First Amendment purposes.]

Maggs: some of the language was agreed to by all parties.

RT: Rogue One wouldn’t be purposes of trade in current law.  If you leave purposes of trade where it is in the current law you are also clearly trying to cover Rogue One and thereby creating a serious interpretive issue.  This is why you might want to leave purposes of trade where it is and create a separate provision targeting avatars if that’s the specific concern.

SAG-AFTRA and MPAA may understand the language, but if other people don’t that’s still a problem. First Amendment cases are often brought by outsiders who aren’t covered, and to design a system in which insiders are protected and outsiders aren’t is pretty much a problem from the First Amendment perspective.

Rothman: leave in place what you have which is working well in most instances. Rather than complicating it with exceptions to exceptions, affirmative descriptions of narrow, precise right is a smart approach. Tech change: technical neutrality is important—need to think about whether current law actually addresses this. Reanimation is new, but recasting is not.  There’s a lawsuit about Back to the Future II, Crispin Glover sued because he was recast (they used existing footage and a prosthetic mask); old law provided an opportunity to protect his rights.  Unintended consequences: think of people who don’t have lobbyists who aren’t getting exemptions who might be affected. That’s why she is specifically concerned about transferability of rights—young actors (even minors) w/o bargaining power who will transfer their rights away.  Websites, journalists, ACLU—a more diverse base consulted. 

Maggs: several unions support the bill.

Rothman: may not understand unintended consequences.

Clenahan: how have states dealt w/intestate transfer?

Rothman: 25 states don’t have intestate rights; Illinois says creditors can’t get it; Nebraska said it’s not transferable; it’s an emerging issue not litigated very much.  More pressure likely to come.  (Bettie Page transferred her rights to CGM when she was very old, windfall for CGM and not much justification for it.)  There isn’t a great model in a statutory postmortem right, but if we really care about heirs it should be focused on inheritance by natural persons.  Could also do confusion about sponsorship requirement as some states do.

Q: Lock down the substance first, then the language.  What does “transformative” mean in the ROP context?  Borrowed from © where it’s been the most enormous controversial issue in ©.  Judicially made construct.  Would Vanna White case come out the same way under transformative standard?  What is NY’s interest in protecting noncitizens?  Only 5 states allow that, not even California.

Maggs: If it’s wrong to exploit someone’s persona it’s wrong. 

Q: what if it’s not wrong in the state where they lived their whole life and died?

Scavino: Congress might be better, but we know that’s not going to happen. States as incubators; maybe this will eventually percolate up.  As NY goes, so goes the nation. Maybe if NY says this, that will force a larger discussion.

Q: Live stage rights: Carole King, Frankie Valley/Jersey Boys. The exception seems like it covers a musical, but the exception to the exception seems to bring that back in. When clients ask whether ROP is required, what is the answer?  Create and write the musical, but the next step is reading—may be considered a solicitation under the statute.

Maggs: Exception to exception is more about avatars/create people after they’re dead.  [Then maybe it should be written that way?]  That’s part of the confusion.  That language has to do w/Zacchini and taking away someone’s job by taking whatever entity they’ve created and recreating it w/o them—recreating their persona.  [Chris Pine needs to worry about William Shatner, it seems to me!]

Q: Athletes and biopics: does the exception to the exception come in if there are reenactments of big sports scenes?

Maggs: They had someone play “Who’s on First/What’s on Second”—they’d gone too far [that’s a copyright case involving fair use—and I note that the transformative use exception is subject to the exception to the exception, so even a transformative use is unprotected if it is “inextricably intertwined” w/ performance]. Depending on how it’s done—if you put a clip from a sports event on stage v. you have someone pretending to be people, there’s a lot of variations. [Seems to suggest that one of those should be illegal?]  She’s not sure how that biopic would come out.  [Ulp.]

Q: Active debate about whether we care about the likeness being transformative or whether the work as a whole is transformative. The use has a lot of baggage.  Remedies portion: purposes of trade is in the remedies portion; is there a point of limiting the remedy more than the scope of the right?

Maggs: want to change as little as possible in the case law? 

Q: so you would have a right but you wouldn’t be able to get damages if it wasn’t for purposes of trade?

Maggs: yes. A lot of the language like transformativeness comes from other states’ legislation.

Q: if it’s wrong it’s wrong, then why would you deny this right to the estate of someone who died 10 years ago?

Maggs: Rights have vested, estates have paid taxes, etc.