Intellectual Property - 2008 Winter Bulletin

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California's Amended Right of Publicity Statute (California Civil Code 3344.1)

Ethical Limits on Investigations in IP Litigation

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California's Amended Right of Publicity Statute (California Civil Code 3344.1)

By Songmee Connolly

After unanimous approval by the California Assembly and the California Senate, Governor Arnold Schwarzenegger signed S.B. 771 into law on October 10, 2007, amending California Civil Code section 3344.1. The amended statute clarifies the scope of the statutory post-mortem right of publicity and expressly abrogates the summary judgment orders in Milton H. Greene Archives, Inc. v. CMG Worldwide, Inc., Case No. CV 05-2200 MMM (MCx) (C.D. Cal. May 14, 2007) and Shaw Family Archives, Ltd. V. CMG Worldwide, Inc., Case No. 05 Civ. 3939 (CM) (S.D.N.Y. May 2, 2007). The law became effective January 1, 2008.

Brief Background on California's Right of Publicity

California recognizes both a common law and statutory right of publicity. The statutory right of publicity first originated with Civil Code section 3344, enacted in 1971, allowing recovery by any living person whose name, photograph, or likeness has been used for commercial purposes without his or her consent. The common law right of publicity, recognized eight years later in Lugosi v. Universal Pictures, 25 Cal. 3d 813 (1979), protects against the unauthorized use of one's name, likeness, or personality. However, because the common law right of publicity derives from the law of privacy, the right is not freely transferable or descendible, and thus expires by operation of law upon death.

In 1984, the California legislature enacted a statute creating a post-mortem right of publicity for "deceased personalities," meaning individuals whose names, voices, signatures, photographs, or likenesses have commercial value at the time of their death. This legislation was codified as Civil Code section 990 and became effective January 1, 1985. Under the California statute, this right of publicity is a property right that may be transferred by contract, trust, or other testamentary document. In the absence of such a transfer, the right is descendible to certain statutory heirs and their successors after the personality's death.

In 1999, the California legislature renumbered section 990 as section 3344.1 and amended the statute to extend the duration of the post-mortem right of publicity from fifty to seventy years after death, rephrase certain statutory exemptions for the media, and include a provision applying the statute to acts occurring directly in the state of California. These 1999 amendments were known as the "Astaire Celebrity Image Protection Act" because the bill was initiated by Fred Astaire's widow, following the adverse ruling in Astaire v. Best Film & Video Corp., 116 F. 3d 1297 (9th Cir. 1997), opinion amended, 136 F.3d 1208 (9th Cir. 1998).

The Marilyn Monroe Cases

Since its enactment, several cases have discussed the applicability of section 3344.1. However, S.B. 771's clarifying amendments to section 3344.1 were introduced as a direct response to two 2007 district court decisions concerning the publicity rights of Marilyn Monroe: Milton H. Greene Archives, Inc. v. CMG Worldwide, Inc., Case No. CV 05-2200 MMM (MCx) (C.D. Cal. May 14, 2007) and Shaw Family Archives, Ltd. V. CMG Worldwide, Inc., Case No. 05 Civ. 3939 (CM) (S.D.N.Y. May 2, 2007).

In these cases, the courts interpreted section 3344.1 as prohibiting publicity rights from passing by will if the personality died prior to January 1, 1985. At issue was Marilyn Monroe's residuary estate, which she left to her former acting coach, Lee Strasberg. Because Marilyn Monroe died on August 5, 1962, before a transferable right of publicity existed in California, her rights of publicity did not form part of her residuary estate and therefore could not have been passed on in her will. The Shaw Family Archives court further noted that even if the publicity right had formed part of the Monroe residuary estate, a transfer by will would not have been effective because section 3344.1(b) requires the transfer take place "before" death; a transfer by will, however, occurs upon death. Moreover, having no eligible statutory heirs (i.e., no surviving spouse, children, grandchildren, or parents), Marilyn Monroe's right of publicity effectively would have fallen into the public domain.

S.B. 771

In response to the holdings in the Marilyn Monroe cases, and at the behest of the Marilyn Monroe estate, the Screen Actors Guild lobbied heavily for the proposal and passage of S.B. 771. The bill was authored, introduced, and fast-tracked through the California legislature by Senator Sheila Kuehl (D-Santa Monica). S.B. 771 expressly abrogates the summary judgment orders in the Marilyn Monroe cases and clarifies the scope of California's post-mortem statutory right of publicity in several ways. First, the bill expressly grants retroactive rights of publicity to deceased personalities with a date of death on or after January 1, 1915. Second, the amended statute allows the disposition of publicity rights with the residue of a deceased personality's estate in the absence of an express provision in a testamentary instrument.

Third, the amended statute clarifies that the right of publicity is freely transferable or descendible by contract, trust, or any other testamentary instrument by any subsequent owner of the right. However, the bill does not affect any decision before May 1, 2007 in which a court held that a deceased personality's transferable or descendible publicity right vested in a statutory heir.

Potential Challenges

The amendments to section 3344.1 affect many more deceased celebrities than just Marilyn Monroe. By retroactively granting publicity rights to alreadydeceased celebrities, the amended statute could generate litigation among the devisees and statutory heirs of deceased personalities, as wills are reexamined and probate matters reopened. It is unclear how courts will handle any potential conflicts that may arise between the amended statute and California's probate code. We might expect to see lawsuits challenging the amended statute in the coming year.

Ethical Limits on Investigations in IP Litigation

By jedediah wakefield

Intellectual property cases often require extensive...