News
Entertainment & Sports
Aug. 5, 2002
Post-Mortem Publicity Cases Raise Choice-of-Law Issues
Focus Column - By Anthony T. Falzone - Post-mortem publicity rights are strange creatures compared to other species of intellectual property rights. Some jurisdictions recognize them; others do not. Even among those that do, there is disagreement. Some hold that post-mortem publicity rights arise under common law; others hold that they arise only by statute. Some provide express exemptions for certain creative works; others are less clear as to how far the right extends.
Focus Column
By Anthony T. Falzone
Post-mortem publicity rights are strange creatures compared to other species of intellectual property rights. Some jurisdictions recognize them; others do not. Even among those that do, there is disagreement. Some hold that post-mortem publicity rights arise under common law; others hold that they arise only by statute. Some provide express exemptions for certain creative works; others are less clear as to how far the right extends.
This patchwork of property rights stands in contrast to the relatively uniform body of law that controls copyright, patent and federal trademark rights. Often, an action concerning post-mortem publicity rights will involve products distributed across many jurisdictions and will itself be pending in yet another jurisdiction, far away from that in which the decedent died. Counsel in publicity rights litigation thus may face a question that they might not be used to answering in other intellectual property cases: Which law applies?
As it turns out, there are two different answers to this question, or, more precisely, two different questions. The first question is, Which body of law controls the issue of whether there is a post-mortem publicity right in the first place? Assuming that there is, the second question is, Which body of law controls the issue of whether that right was infringed? The answer to the first question is not necessarily the answer to the second.
• Is there a post-mortem publicity right to protect? The fact that some jurisdictions recognize post-mortem publicity rights and some do not gives rise to the first choice-of-law question: Which law controls the question of whether an enforceable right exists in the first place?
In Cairns v. Franklin Mint, 292 F.3d 1139 (9th Cir. 2002), the District Court and the 9th U.S. Circuit Court of Appeals grappled with that question as it arises under California's post-mortem publicity rights statute, Civil Code Section 3344.1.
Cairns involved the publicity right of the late Diana, Princess of Wales. For 20 years, the Franklin Mint sold jewelry, plates, sculptures and dolls depicting Princess Diana, without her objection. Following her untimely death, her estate granted the exclusive rights to her name and likeness to the Diana Princess of Wales Memorial Fund, a charitable trust organized under the law of Great Britain, her domicile at the time of her death.
Thereafter, the executor of her estate and trustee of the fund brought suit against Franklin Mint in California, alleging misappropriation of Princess Diana's likeness in violation of California's post-mortem publicity rights statute, Civil Code Section 990.
The Franklin Mint moved to dismiss the publicity rights claim on the ground that Great Britain does not recognize the right of publicity, reasoning, therefore, that the estate received no post-mortem publicity rights to transfer or enforce.
The District Court held that post-mortem publicity rights are a species of property right and thus governed by California Civil Code Section 946. That section, in turn, dictates that personal property is controlled by the law of a decedent's domicile, except where there is "law to the contrary, in the place where personal property is situated."
That raised an interesting question: Where is the intangible publicity right situated? The court, however, did not need to answer that question, because even assuming the property was situated in California, there was nothing in Section 990 that suggested that the domicile rule did not apply. Thus, the court held that the law of Great Britain applied, and there was no post-mortem publicity right to protect.
The California Legislature complicated matters by amending the statute in issue. It recodified the statute as Civil Code Section 3344.1 and added a subsection (n), which stated, "This section shall apply to the adjudication of liability and the imposition of any damages or other remedies in cases in which the liability, damages, and other remedies arise from acts occurring directly in this state."
The plaintiff moved to reinstate the publicity rights claim on the ground that subsection (n) was a choice-of-law provision that overrode the default rule contained in Section 946. The District Court disagreed, holding that subsection (n) "simply addresses the reach of the statute's coverage" and that the Legislature did not intend to displace Section 946 by disregarding the decedent's place of domicile, as evidenced by the Legislature's omission of an amendment that would have done so expressly. Cairns v. Franklin Mint Co., 120 F. Supp.2d 880 (C.D. Cal. 2000).
The 9th Circuit affirmed, based largely on the grounds set forth by the District Court. The answer to the first choice-of-law question is therefore clear: The law of the decedent's domicile on his or her death governs whether a post-mortem publicity right exists in the first place.
• How far does the post-mortem publicity right extend? Assuming a post-mortem publicity right exists, the next issue is how far that right extends. That poses the second choice-of-law question: Which law controls the infringement issue?
The 9th Circuit did not have occasion to address this question in Cairns, but the District Court did. It followed the 11th Circuit, which addressed the issue in Acme Circus Operating Co. Inc. v. Kuperstock, 711 F.2d 1538 (11th Cir. 1983).
In Acme, the court considered the issue of which law should apply to a publicity rights claim by the widow of a circus performer who died in California. The claim was brought against a Florida circus that was using the performer's name. Because the action was filed in the Central District of California but was transferred to Florida, the court was required to apply the same choice-of-law rules that the Central District (and 9th Circuit) would have had to apply.
A federal court applies the choice-of-law rule of the state in which it sits. See, for example, Klaxon Co. v. Stentor Electrical Mfg. Co., 313 U.S. 487 (1941). Thus, California's choice-of-law rules apply to publicity rights claims brought in California. It, therefore, might be assumed that Section 946 would control this choice-of-law question, as well. But it does not. According to the Acme court, the question of whether the post-mortem publicity right has been infringed is, in essence, a "tort question." Thus, it is controlled by the "governmental interest analysis" generally applicable to tort actions, not Section 946. Accord Cairns v. Franklin Mint Co., 24 F. Supp.2d 1013 (C.D. Cal. 1998).
The governmental-interest analysis has three steps. First, the court must determine whether the laws of the respective jurisdictions differ as to the matter in issue. See, for example, Abogados v. AT&T Corp., 223 F.3d 932 (9th Cir. 2000). Second, if the laws do differ, the court must determine whether a "true conflict" exists "in that each of the relevant jurisdictions has an interest in having its law applied." If there is no such conflict, then the law of the forum state will control the infringement question.
Third, assuming a "true conflict" exists, the court must compare the interests of the relevant jurisdictions and "apply the law of the state whose interest would be most impaired if its law were not applied." Abogados.
This third inquiry is obviously fact-intensive. California may have a strong interest in protecting the creative freedom of its domiciliaries, as evidenced by the explicit limitation it places on certain post-mortem publicity rights claims and its strong connection to the entertainment industry. See Section 3344.1(a)(2)-(3) (exempting any "audiovisual work" of "fictional or non-fictional entertainment" so long as use of the celebrity's persona does not amount to advertising or solicitation).
The Acme court suggested that this rationale might not apply if the accused infringer is not a California domiciliary. But that observation predates the amendment of Section 3344.1 to specify that it applies to any action that "arise from acts occurring directly in" California. Section 3344.1(n).
In fact, this amendment brings up another dilemma: The acts that infringe may "occur directly" in dozens of states, or even dozens of countries, if the allegedly infringing work is widely distributed. (Consider a popular movie, for instance.) Each may have different rules for the protection of post-mortem publicity rights and very good reasons for adopting them. But, presumably, the court can apply only one liability rule, which can have the effect of determining the availability of the work in other jurisdictions with their own, different rules.
Thus, the answer to the second choice-of-law question will not always be clear. Doctrinally, the question of which law controls the infringement issue will depend on whether a conflict of laws exists, and, if so, how the competing state interests weigh out. Practically, it raises thorny dilemmas, moral and legal, with global effects.
Anthony T. Falzone is a litigation associate in Bingham McCutchen's San Francisco office. His practice focuses on intellectual property, antitrust, false advertising and other trade regulation issues.
By Anthony T. Falzone
Post-mortem publicity rights are strange creatures compared to other species of intellectual property rights. Some jurisdictions recognize them; others do not. Even among those that do, there is disagreement. Some hold that post-mortem publicity rights arise under common law; others hold that they arise only by statute. Some provide express exemptions for certain creative works; others are less clear as to how far the right extends.
This patchwork of property rights stands in contrast to the relatively uniform body of law that controls copyright, patent and federal trademark rights. Often, an action concerning post-mortem publicity rights will involve products distributed across many jurisdictions and will itself be pending in yet another jurisdiction, far away from that in which the decedent died. Counsel in publicity rights litigation thus may face a question that they might not be used to answering in other intellectual property cases: Which law applies?
As it turns out, there are two different answers to this question, or, more precisely, two different questions. The first question is, Which body of law controls the issue of whether there is a post-mortem publicity right in the first place? Assuming that there is, the second question is, Which body of law controls the issue of whether that right was infringed? The answer to the first question is not necessarily the answer to the second.
• Is there a post-mortem publicity right to protect? The fact that some jurisdictions recognize post-mortem publicity rights and some do not gives rise to the first choice-of-law question: Which law controls the question of whether an enforceable right exists in the first place?
In Cairns v. Franklin Mint, 292 F.3d 1139 (9th Cir. 2002), the District Court and the 9th U.S. Circuit Court of Appeals grappled with that question as it arises under California's post-mortem publicity rights statute, Civil Code Section 3344.1.
Cairns involved the publicity right of the late Diana, Princess of Wales. For 20 years, the Franklin Mint sold jewelry, plates, sculptures and dolls depicting Princess Diana, without her objection. Following her untimely death, her estate granted the exclusive rights to her name and likeness to the Diana Princess of Wales Memorial Fund, a charitable trust organized under the law of Great Britain, her domicile at the time of her death.
Thereafter, the executor of her estate and trustee of the fund brought suit against Franklin Mint in California, alleging misappropriation of Princess Diana's likeness in violation of California's post-mortem publicity rights statute, Civil Code Section 990.
The Franklin Mint moved to dismiss the publicity rights claim on the ground that Great Britain does not recognize the right of publicity, reasoning, therefore, that the estate received no post-mortem publicity rights to transfer or enforce.
The District Court held that post-mortem publicity rights are a species of property right and thus governed by California Civil Code Section 946. That section, in turn, dictates that personal property is controlled by the law of a decedent's domicile, except where there is "law to the contrary, in the place where personal property is situated."
That raised an interesting question: Where is the intangible publicity right situated? The court, however, did not need to answer that question, because even assuming the property was situated in California, there was nothing in Section 990 that suggested that the domicile rule did not apply. Thus, the court held that the law of Great Britain applied, and there was no post-mortem publicity right to protect.
The California Legislature complicated matters by amending the statute in issue. It recodified the statute as Civil Code Section 3344.1 and added a subsection (n), which stated, "This section shall apply to the adjudication of liability and the imposition of any damages or other remedies in cases in which the liability, damages, and other remedies arise from acts occurring directly in this state."
The plaintiff moved to reinstate the publicity rights claim on the ground that subsection (n) was a choice-of-law provision that overrode the default rule contained in Section 946. The District Court disagreed, holding that subsection (n) "simply addresses the reach of the statute's coverage" and that the Legislature did not intend to displace Section 946 by disregarding the decedent's place of domicile, as evidenced by the Legislature's omission of an amendment that would have done so expressly. Cairns v. Franklin Mint Co., 120 F. Supp.2d 880 (C.D. Cal. 2000).
The 9th Circuit affirmed, based largely on the grounds set forth by the District Court. The answer to the first choice-of-law question is therefore clear: The law of the decedent's domicile on his or her death governs whether a post-mortem publicity right exists in the first place.
• How far does the post-mortem publicity right extend? Assuming a post-mortem publicity right exists, the next issue is how far that right extends. That poses the second choice-of-law question: Which law controls the infringement issue?
The 9th Circuit did not have occasion to address this question in Cairns, but the District Court did. It followed the 11th Circuit, which addressed the issue in Acme Circus Operating Co. Inc. v. Kuperstock, 711 F.2d 1538 (11th Cir. 1983).
In Acme, the court considered the issue of which law should apply to a publicity rights claim by the widow of a circus performer who died in California. The claim was brought against a Florida circus that was using the performer's name. Because the action was filed in the Central District of California but was transferred to Florida, the court was required to apply the same choice-of-law rules that the Central District (and 9th Circuit) would have had to apply.
A federal court applies the choice-of-law rule of the state in which it sits. See, for example, Klaxon Co. v. Stentor Electrical Mfg. Co., 313 U.S. 487 (1941). Thus, California's choice-of-law rules apply to publicity rights claims brought in California. It, therefore, might be assumed that Section 946 would control this choice-of-law question, as well. But it does not. According to the Acme court, the question of whether the post-mortem publicity right has been infringed is, in essence, a "tort question." Thus, it is controlled by the "governmental interest analysis" generally applicable to tort actions, not Section 946. Accord Cairns v. Franklin Mint Co., 24 F. Supp.2d 1013 (C.D. Cal. 1998).
The governmental-interest analysis has three steps. First, the court must determine whether the laws of the respective jurisdictions differ as to the matter in issue. See, for example, Abogados v. AT&T Corp., 223 F.3d 932 (9th Cir. 2000). Second, if the laws do differ, the court must determine whether a "true conflict" exists "in that each of the relevant jurisdictions has an interest in having its law applied." If there is no such conflict, then the law of the forum state will control the infringement question.
Third, assuming a "true conflict" exists, the court must compare the interests of the relevant jurisdictions and "apply the law of the state whose interest would be most impaired if its law were not applied." Abogados.
This third inquiry is obviously fact-intensive. California may have a strong interest in protecting the creative freedom of its domiciliaries, as evidenced by the explicit limitation it places on certain post-mortem publicity rights claims and its strong connection to the entertainment industry. See Section 3344.1(a)(2)-(3) (exempting any "audiovisual work" of "fictional or non-fictional entertainment" so long as use of the celebrity's persona does not amount to advertising or solicitation).
The Acme court suggested that this rationale might not apply if the accused infringer is not a California domiciliary. But that observation predates the amendment of Section 3344.1 to specify that it applies to any action that "arise from acts occurring directly in" California. Section 3344.1(n).
In fact, this amendment brings up another dilemma: The acts that infringe may "occur directly" in dozens of states, or even dozens of countries, if the allegedly infringing work is widely distributed. (Consider a popular movie, for instance.) Each may have different rules for the protection of post-mortem publicity rights and very good reasons for adopting them. But, presumably, the court can apply only one liability rule, which can have the effect of determining the availability of the work in other jurisdictions with their own, different rules.
Thus, the answer to the second choice-of-law question will not always be clear. Doctrinally, the question of which law controls the infringement issue will depend on whether a conflict of laws exists, and, if so, how the competing state interests weigh out. Practically, it raises thorny dilemmas, moral and legal, with global effects.
Anthony T. Falzone is a litigation associate in Bingham McCutchen's San Francisco office. His practice focuses on intellectual property, antitrust, false advertising and other trade regulation issues.
#336814
Columnist
Daily Journal Staff Writer
For reprint rights or to order a copy of your photo:
Email
Jeremy_Ellis@dailyjournal.com
for prices.
Direct dial: 213-229-5424
Send a letter to the editor:
Email: letters@dailyjournal.com