Academic journal article Notre Dame Law Review

Raising Walls against Overlapping Rights: Preemption and the Right of Publicity

Academic journal article Notre Dame Law Review

Raising Walls against Overlapping Rights: Preemption and the Right of Publicity

Article excerpt


The right of publicity overlaps with trademark in its protections against false endorsement, with copyright in its (supposed) justifications in incentivizing performances, and with traditional privacy and defamation torts in protecting personal dignity and control over one's own presentation of the self. Yet the right of publicity has been used to extend plaintiffs' control over works and uses that don't violate any of the rights with which it shares a justification. This quicksilver nature is what makes the right of publicity so dangerous.

The law of overlaps in the form of preemption cases might offer some assistance in suggesting a purposive approach. Where the state-law right of publicity has a similar purpose to that of copyright, it can conflict with that right and be preempted by federal law. Where the right of publicity's purpose is different, however, the relevant purpose or purposes furthered should guide our analysis of the appropriate limits on the right. The fact that plaintiffs have renamed their claims should not enable them to extend their rights beyond the underlying justifications for those rights.

By comparing how preemption and First Amendment law have used purposive approaches to limit the right of publicity, we can see something about how boundary work in intellectual property law (IP) is done--badly, usually, with justifications that aren't consistent or that assume that other regimes work differently than they actually do. One improvement would be to embrace categorical approaches, rather than unpredictable case-by-case balancing; both preemption and First Amendment doctrines can lend themselves to this approach. Another improvement would be to think of the First Amendment as an intellectual property regime of its own, one with general preemptive power. As Justice Brandeis said, the general rule is that ideas are "free as the air to common use," subject to changes worked by positive law, but the First Amendment can prevent positive law from putting ideas or facts off-limits. (1)


The stunning expansion of the right of publicity has been extensively covered elsewhere. (2) I will offer only two appalling recent examples: in 2015, a district court allowed a right of publicity claim against a racing video game to proceed. (3) The theory of the case was that the game offered a visual representation of an actual racing track, including an image of a banner displaying the trademark of Virag, an Italian flooring company. (4) Virag is also the last name of Mirco Virag, one of Virag's owners, and the court accepted the allegation that the Virag trademark was a "personification" of Mirco Virag. (5) As a result, although the First Amendment precluded a claim against the video game based on allegations of trademark infringement, (6) a right of publicity claim survived based on the game's alleged use of Mirco Virag's identity-based on the same banner that triggered the First Amendment-barred confusion claim. (7) Even in such cases of flat-out conflict between trademark's and the right of publicity's respective First Amendment limits, courts have been unwilling to limit the right of publicity. (8)

Similarly, a California trial court recently found that a plaintiff had shown a probability of success on the merits of his claims that Facebook's practice of putting advertisements on webpages, including Facebook pages set up to criticize the plaintiff, made a commercial use of the plaintiff's name and likeness and thus violated his statutory right of publicity and constituted common-law misappropriation under California law. (9) Truth and lack of negativity in the portrayal aren't defenses to a right of publicity claim, so the right is far more expansive than plaintiff-friendly defamation rules the Supreme Court invalidated long ago. Channeling the plaintiff's claim into the proper cause of action--preventing him from evading the well-justified limits on defamation law (10)--is the obvious solution to the problem; instead, the court approved an interpretation of the right of publicity that 011 its face allows President Donald Trump to control every mention of his name in ad-supported or for-profit media, which is to say almost all media outlets. …

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