What the Right of Publicity Can Learn from Trademark Law
Authors: Lemley Mark 
Published: July 2018

The right of publicity gives people the right to control the use of theirname and likeness for commercial purposes. For years, courts have struggledto make sense of two dimensions of this right - what it means to use a nameor likeness commercially, and what aspect of a person's likeness areprotected against appropriation. In the absence of any clear theoreticalfoundation for the right of publicity, the meanings of these terms havesteadily swelled, to the point at which virtually any use that bringsfinancial benefit to someone by referencing an individual qualifies as aviolation of the right of publicity. At the same time, the courts havedeveloped no meaningful counterweight to this ever-expanding right.Instead, they have created a few ad hoc exceptions in cases where thesweeping logic of the right of publicity seems to lead to results theyconsider unfair.Two types of publicity claims have raised particular problems for thecourts. The first involves merchandising claims, in which individuals claimviolation of their publicity right not by the use of a name in advertising,but by people who sell products that bear their name or likeness. Courtshave generally resolved these claims by making a distinction between newsor art, on the one hand, and merchandise, on the other - but as art andinformation become increasingly commodified, this distinction - if it evermade sense - has become ever harder to sustain. The second type ofproblematic claim involves cases in which a use draws attention away fromthe celebrity, or arguably sullies the celebrity's reputation in some waythat harms the overall value of her identity. Properly limited, such acause of action might have some theoretical appeal, but courts have appliedit in ways that exceed any plausible theoretical justification,particularly when First Amendment considerations enter the fray.Perhaps ironically, one root of the problems with these cases lies in thevery elusiveness of a theoretical justification for the right of publicity.When the government can clearly identify a purpose in limiting speech,courts have some basis on which to evaluate whether the speech limitationlives up to that purpose. But because the right of publicity rests upon aslough of sometimes sloppy rationalizations, courts have little way ofdetermining whether a particular speech limitation is necessary or evenappropriate in order to serve the law's normative goals. Instead, theyappear to assume that the sum of a set of inadequate justifications equalsfar more than its parts, and allow right of publicity claims to runroughshod over the speech interests of the public.If the absence of a rationale has created the problem, then the answer liesin identifying whether and when a right of publicity might serve alegitimate government interest. Yet a review of the cases and literaturereveals that no one seems to be able to explain exactly why individualsshould have this right. A right of privacy can't justify it, for the rightof publicity has been applied in a wide range of situations that don'timplicate privacy at all. Some commentators have proposed a natural ormoral right of control over one's name or likeness, but there seems nopolicy justification for giving such control, and the absence of such aright in most of the world and indeed throughout most of U.S. historyshould make us skeptical of claims based on some consensus moral belief.The moral claim to own uses of one's name also seems inconsistent with theabsence of natural or moral rights justifications for other forms ofintellectual property.Of late, and particularly in the merchandising and dilution-like cases,courts and commentators have turned to the incentive-based rationaleunderlying copyright law in search of both a justification for andlimitations on the right of publicity. Reasoning that the right ofpublicity gives individuals the incentive to develop valuable personas,courts reason that depriving them of the fruits of their labors willinterfere with those economic incentives. Some courts have even gone so faras to create a fair use doctrine, importing from copyright law judiciallycreated limits on the enforcement of the right. This approach turns theright of publicity into a new form of intellectual property, one basedexplicitly on analogies to and justifications for real property.We think copyright is the wrong analogy. In the United States, copyrightlaw is utilitarian. We grant copyrights in order to encourage the creationof new works of authorship. There is no similar justification for the rightof publicity. Society doesn't need to encourage more celebrities, or moremarketing of celebrity image. Nor is there any evidence that, even if sucha result was desirable, a property-like right of publicity is well tailoredto that goal. Copyright's fair use doctrine, moreover, involves tradeoffsbetween the interests of original creators and those who would like to maketransformative uses of their creative works; the right of publicity has nosimilar tradeoff. Further, copyright's fair use doctrine is confusing tothe point of incoherence; it is hardly a model anyone would wish toemulate. Finally, the analogy to copyright serves to obscure the importantfree speech interests at stake in right of publicity cases. For better orworse, copyright laws have gotten a free ride when it comes to the FirstAmendment; the copyright analogy may prompt courts to mistakenly extendthat free ride to the right of publicity.The Lanham Act is a far more appropriate analogy to the right of publicity.The Lanham Act in its traditional form protects trademark owners againstcommercial uses of a trademark by others that are likely to confuseconsumers, either as to the source of goods or as to the affiliation,endorsement, or sponsorship of those goods by the trademark owner. Theright of publicity is designed at least in part to do the same thing forcelebrities. It prevents companies from using the name or likeness of anindividual in advertising or promotion to falsely suggest that theindividual has endorsed the advertised product. More recently, the LanhamAct has been expanded to prevent dilution of famous trademarks bycommercial uses that draw attention away from the trademark owner, or throwit into disrepute, even if they do not confuse. Dilution, too, hasanalogies in the right of publicity. Uses of a celebrity's name or likenessmight in rare circumstances divert attention away from the celebrity or,more likely, might tarnish the reputation of the celebrity by using hername or likeness in a disreputable connection, even in the absence ofconfusion or assumptions of endorsement. Finally, a few courts haveexpanded trademark law to include a general right to control themerchandising of goods bearing a trademark, even in the absence ofconfusion or dilution. This merchandising right too has analogues in theright of publicity. Indeed, the mutation of the right of publicity into avirtually unlimited property right over any use of a name or likeness canbest be understood as the wholesale adoption of the putative trademarkmerchandising right.Reconceiving the right of publicity as an outgrowth of trademark law hasseveral significant benefits. First, it offers a helpful way to think aboutthe different sorts of claims made under the rubric of publicity. We haveconsiderable experience with each of these types of claims in trademarklaw, and applying that knowledge can help us understand why we might (ormight not) want to prohibit particular uses, and when the law should forbidthem. Most importantly, looking at the right of publicity through the lensof trademark law offers logical ways to limit the right of publicity.Trademarks are not property rights in the traditional sense, though a fewcommentators have argued that trademark owners should have property-likerights over their marks. The idea of a merchandising right, whilerecognized in a few cases and supported by trademark owners, is notcommonly used to decide trademark cases. It is also a problematic concept,one that hardly deserves emulation. Trademark cases tend instead to bedecided either based on likelihood of confusion or on dilution grounds.Both trademark infringement and dilution incorporate significant limitingprinciples designed to balance the interests of society against theinterests of policy owners, and to accommodate First Amendment concerns.These limits have not been incorporated into the right of publicity,however. The result is a mutant version of trademark policy, including theaffirmative rights but virtually none of the defenses or limits oftrademark law.A proper understanding of the right of publicity would draw more completelyon trademark principles, limiting the right to circumstances in which theuse of an individual's name or likeness is either likely to confuseconsumers or is likely to dilute the significance of a famous name.Revising the right of publicity to conform to the rules we have worked outin trademark cases will avoid some of the worst abuses of the right, limitthe conflict between the right of publicity and First Amendment principles,and put the right on a more solid conceptual grounding.In Part I, we describe the growth of the right of publicity from its narrowprivacy origins to a virtually unlimited, descendible, assignable propertyright. Part I discusses two particular excesses that this trend has broughtabout, and that are increasingly creating problems for the courts and thepublic: the expanding merchandising right, and the dilution-like cause ofaction. Part II discusses the existing efforts to explain the growth of theright of publicity. Those explanations have generally focused onincentive-based rationales akin to copyright law - rationales whose logicbreaks down in the right of publicity context. Part II goes on to explainwhy copyright proves inadequate to justify or to delimit the right ofpublicity, with particular reference to the merchandising and dilution-likecases. In Part III, we offer a new explanation for the right of publicity,one based in trademark principles. Part III shows how the right ofpublicity has adopted some but not all of the rules of trademark law, andhow a more complete importation of trademark principles into publicity lawwould solve many of the problems that plague the doctrine. Finally, in PartIV we consider some objections and compare our approach to alternativeapproaches for dealing with the problems of the publicity right.