Publicity Rights from High School to Post-Mortem

Publicity rights are growing in importance, but there are considerable potential challenges associated with their exploitation. James Nurton reports.

Tonya “Blaze” George—a fictional person—found fame as a soccer player while still a teen, going on to score a memorable goal to win the World Cup and playing for top teams in Spain and the United States.

After retiring, she founded (also fictional) Blaze Spirits & Whiskey in Tennessee (US) before passing away prematurely of a heart attack. Yesterday’s session, Right of Publicity: The Life and Times of a Professional Football (Soccer) Player, presented by INTA’s Right of Publicity Committee, focused on the opportunities and challenges posed by Blaze’s career, including merchandising initiatives and unauthorized exploitations of her fame. In analyzing this hypothetical case, the panel drew on real disputes involving well-known figures such as athlete Michael Jordan, musician Jimi Hendrix, and actress Marilyn Monroe, as well as highlighted actual legislation and regulations affecting athletes in the U.S.

Chris Chaudoir, senior counsel at Chevron Corporation (US), said Blaze’s “amazing speed and terrific agility” were evident in high school. But already her success was raising difficult issues. For example, in most U.S. states, those under-18 need parental consent for endorsement deals (though Florida allows minors to enter into agreements provided there is no compensation).

At college, Blaze benefited from the National Collegiate Athletic Association’s (NCAA) (US) new policy, announced on June 30, 2021, allowing athletes to benefit from their name, image, and likeness. “This means schools and conferences can impose whatever restrictions they want consistent with state law,” said Lindsay Allen, counsel at Perkin Coie LLP (US).

“Defining the value of a brand is complex and requires input from multiple stakeholders.”
Lindsay Allen, Perkin Coie LLP (US)

In a continuation of the fabricated story, Blaze was soon offered licensing deals, including by (made up) Bania Bratwurst, Shire Beer, and Cadwell Cellular. But, as Doug Bania, founding principal at Nevium Intellectual Property Consultants (US), said: “Are these opportunities a good fit for her? How much time is it going to take? Is it a national campaign?” Will Blaze always be known as the ‘Bania Bratwurst girl,’ and will she regret the association with alcohol?”

Blaze’s overhead kick to win the World Cup was the highlight of her career and was immortalized in a photo taken by (fictitious) freelance photographer Sam Shutterberg. But that image led to disputes when Mr. Shutterberg sought to sell NFTs of it for US $100,000 each.

Howard Shire, partner at Troutman Pepper (US), said this raised the question of whether Blaze could object: “Is an NFT an item of merchandise, akin to a T-shirt, or is it just the photographer making a copy which he has the right to do under the copyright law?”

Blaze’s subsequent move to Madrid, Spain created further problems as various companies evoked her image, squad number, and iconic kick. Any use—including of voice, persona, or indicia—that is done to gain commercial advantage and without consent could be actionable, said Jeff Cadwell, partner at Dorsey & Whitney LLP (US).

“If Blaze hasn’t licensed that, she would have a valid claim that it’s an infringing use. Cadwell Cellular might also have a beef. The club may also have a claim if there is use of the uniform,” he said.

However, at least in the U.S., there are defenses under the First Amendment for newsworthy use, satire, and parody. Case law also suggests that the use of names and data—for example, in fantasy leagues—is allowed.

“Athletes can exploit jersey numbers, but typically you need more than just the number alone for a right of publicity claim.”
Howard Shire, Troutman Pepper (US)

Upon retirement, Blaze moved to Tennessee and set up Blaze Spirits & Whiskey there. She also licensed her rights to a major video game company. But, as Mr. Cadwell said, she must pay attention to prior trademark rights and “be mindful of what she can and can’t license.” Notably, she had no rights to team uniforms, logos, or images where someone else owned the copyright.

Uniform numbers are also particularly difficult to protect, said Mr. Shire. “Athletes can exploit jersey numbers, but typically you need more than just the number alone for a right of publicity claim.”

For example, Michael Jordan won US $8.9 million in damages in a claim based on his famous number 23 when it was used in an unauthorized advertisement alongside his name and a picture of a basketball.

Blaze’s sudden heart attack meant her estate was left to her siblings, and that they could exploit her post-mortem rights.

Tennessee law is unusual, because the estate has 10 years in which to exploit the name, image, or likeness. After two consecutive years of non-use, it is deemed abandoned; otherwise, it will last indefinitely. Other states have set periods for exploitation of up to 100 years.

The divergence between states on this and other issues has prompted some calls for a federal right of publicity. As Ms. Allen said: “The NCAA is lobbying for a federal right.”

To provide a guide to this complex area, the Committee has published the Right of Publicity State of the Law Survey covering the U.S. and other jurisdictions. “It’s not complete and we really appreciate your input and any information you can add to it,” said Mr. Chaudoir.

Video courtesy of Adobe Stock / davstudio

Photo of the Day

On opening day of the Brand Marketplace today, registrants greeted each other—and the 70+ exhibitors with products and services of interest to them. Also, check out the various activities taking place there, including the “new” Solution Showcase. Presenters will take to the Solution Showcase stage today through Wednesday.

Monday, May 2, 2022

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