Published in Citations, the magazine of the Ventura County Bar Association.
By DOUGLAS BORDNER
What do Marilyn Monroe, Michael Jackson and Jackie Robinson have in common? Names worth millions.
Over the past several years, there has been much news coverage of the income generated by the estates of deceased celebrities, including deceased entertainers and sports figures. Forbes magazine reported on October 23, 2013 that Michael Jackson’s estate earned an estimated $160 million dollars between June 2012 and June 2013. Elizabeth Taylor’s estate earned an estimated $210 million in 2011 and $25 million dollars in 2012. Elvis Presley’s estate earned an estimated $55 million dollars in 2013, and Bob Marley’s estate earned an estimated $18 million dollars in 2013. This has not always been the case. Only recently, with changes in the law, have families of deceased celebrities been able to both profit from their names and likenesses, and adequately protect their names and likenesses.
In 1971, the State of California enacted Civil Code section 3344, which allowed a living individual to recover damages for the unauthorized use of his or her name, photograph or likeness for commercial purposes. However, this law did not extent to deceased individuals. As the common law right was derived by the laws on privacy, it was not transferable upon death and the rights of publicity expired when the individual died. With the invention of television and film, companies began to use the name and likeness of deceased individuals to market products using clips of entertainers in television commercials. The most famous one being a clip of Fred Astaire from “Singing in the Rain” in a commercial for vacuum cleaners.
Families of several deceased celebrities attempted to prevent their famous deceased relatives’ names, likenesses and voices from being used without their permission and without compensation, but California courts ruled that deceased celebrities had no rights; the rights died with them. As a result, several families of deceased entertainers, including the family of the late Fred Astaire, lobbied the California Legislature to change the law. In 1984, California passed California Civil Code section 3344.1, commonly referred to as the “Astaire Celebrity Image Protection Act.” Under the law, a right of publicity was created for deceased celebrities for 70 years from the date of death. Subdivision (a)(1) subjects “any person who uses a deceased personality’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods, or services, without prior consent from” specified persons, to any damages sustained and to liability for “the greater of seven hundred fifty dollars ($750) or the actual damages suffered by the injured party or parties, as a result of the unauthorized use, and any profits from the unauthorized use that are attributable to the use and are not taken into account in computing the actual damages…”.
Further, section 3344.1, subdivision (b) provides that a deceased celebrity’s name, image and likeness are freely transferable by contract, will, trust or other testamentary instrument.
Before 2007, courts held that section 3344.1 only applied to celebrities who died after 1985. (Milton H. Green Ar-chives, Inc. v. CMG Worldwide, Inc. (C.D. Cal. 2008) 568 F.Supp.2d 1152.)
In part in response to Milton H. Green Archives, the Legislature changed the law to apply to deceased celebrities who died either before 1985 or after 1985. This allowed the estates of deceased celebrities such as Marilyn Monroe, Spencer Tracy and others to protect and profit from their names and likenesses, and to prevent unauthorized use of the names and likenesses for commercial purposes. Allowing families of deceased celebrities to market their loved ones’ names and likenesses in some cases has resulted in earning millions of dollars, sometimes even more than the celebrity earned while alive.
For a family to enforce their rights under this law, to the owner of the name and likeness of a deceased celebrity must file with the California Secretary of State’s Office a form titled Registration of Claim of Successor-In-Interest, setting forth the ownership percentage owned in the name and likeness. If this form is not filed, a family cannot recover damages for the unauthorized use of the name and likeness of a deceased celebrity.
What does this mean for attorneys in California? For estate planning attorneys, if you represent celebrities or the families of deceased celebrities, you should familiarize yourself with this area of law. Estate planning documents that you prepare for a client should address the name, likeness and image of a celebrity as a transferable property right, just as any other property owned by an individual. In addition, any attorney representing a family of a deceased celebrity should also make sure that the Claim of Successor-In-Interest form is filed with the Secretary of State.
Not all states have similar laws to protect the name and likeness of a deceased celebrity. If the deceased celebrity did not reside in California at the time of death, California law may not protect the rights of the deceased celebrity.
With new technology and the ability to make deceased celebrities appear in commercials, films, and at concerts, the protection of deceased celebrities’ rights in their names and likenesses will continue to be a growing area in the transactional sector, as well as in litigation.
Douglas Bordner is a partner at Myers, Widders, Gibson, Jones & Feingold, LLP in Ventura. He represents developers, architectural firms, engineering firms and real estate investors. He also handles business acquisitions, mergers, and international software licensing and distribution agreements. Call 805-644-7188 or email firstname.lastname@example.org.