May 15, 2016

By Oliver Herzfeld

Prince famously told Rolling Stone in 1996 “If you don’t own your masters, your master owns you.” That quote referred to copyright ownership of the master rights (a.k.a. recording rights) of the actual sound recordings of Prince’s musical works. But what about Prince’s other intellectual property rights? While the press has given a lot of attention to the question of who will inherit the copyright rights to his nearly 40 studio albums, as well as a vault of unreleased written and recorded music, much less attention has been given to Prince’s post-mortem publicity rights.

What Are Publicity Rights?

Publicity laws grant famous personalities the right to control the commercial exploitation of certain aspects of their identity, such as their name, likeness, voice, signature, image, distinctive appearance, gestures and mannerisms. For example, if a company wishes to use a photograph of Beyoncé for an advertisement, it must negotiate a copyright license from the photographer, but it may also have to secure a license from Beyoncé herself to commercially exploit her image and likeness pursuant to her publicity rights. Unlike patents, copyrights and trademarks, there is no uniform federal law for publicity rights. Instead, rights of publicity are based on state laws due to our federal system’s default to state sovereignty in the absence of a compelling reason to enact a preemptive federal law.

State Law Variations

Currently, 22 states have established the right of publicity through statute and 38 states have recognized the right under common law legal theories (i.e., several states recognize publicity rights under both explicit state law and common law). Some states, such as California, treat publicity rights as a transferable property right that survives a celebrity’s death. Other states, such as New York, treat publicity rights as personal rights that terminate when the celebrity dies. In general, a celebrity’s domicile at the time of death determines which state law applies. In the case of Prince, that state is Minnesota. “For many families of talent, post-mortem rights of publicity are an afterthought.” says Martin Cribbs, Vice President, Brand Management at Beanstalk.  “However, careful stewardship of those rights can add substantive value over the long-term, particularly when licensed to advertisers in a way that is respectful and strategic.”

Current Minnesota Law

Minnesota has not established the right of publicity through statute. However, it has recognized the common law tort of invasion of privacy for the misappropriation of name or likeness. Potential liability is not limited to uses in commercial advertising or commercial speech as the Minnesota Supreme Court explicitly stated that a claim exists if a defendant receives “any benefit.” And a federal court applying Minnesota law has held that Minnesota would recognize a common law right of publicity. To date, no court, state or federal, has considered whether famous personalities retain a post-mortem right of publicity under Minnesota law that can be inherited by their estates.

The PRINCE Act

Prompted by Prince’s death, a new bill was introduced in Minnesota’s Senate and House of Representatives last week named the “Personal Rights in Names Can Endure” (or PRINCE) Act. It states “An individual has a property right in the use of that individual’s name, voice, signature, photograph, and likeness in any medium in any manner. The[se] rights are freely assignable and licensable and do not expire upon the death of the individual so protected, whether or not the rights were commercially exploited by the individual during the individual’s lifetime.” The law provides post-mortem rights “for a minimum period of 50 years after the death of the individual [and a]fter the initial 50-year period, the executor, administrator, heir, devisee, or assignee shall maintain the right until the right is terminated by proof of nonuse. . .for a period of two years [of nonuse].” The law explicitly states that it is “retroactive, including to those deceased individuals who died before the [proposed August 1, 2016] effective date of this act.”

Trademark Law

If current Minnesota law is determined not to provide post-mortem publicity rights, and if there is a delay or failure of Minnesota’s legislature to enact the PRINCE Act, Prince’s estate could still have a viable claim to protect his name, likeness and persona because, separate and distinct from rights of publicity, celebrities hold a trademark-like interest in their name, likeness and persona that may be vindicated through a false endorsement claim. In particular, a famous personality may assert a claim for false endorsement under the U.S. Trademark Act where a party uses the celebrity’s image or persona without permission to suggest false endorsement or association. To state a claim for false endorsement, the plaintiff must allege that the defendant:

1. made a false or misleading representation of fact;
2. in commerce;
3. in connection with goods or services;
4. that is likely to cause consumer confusion as to the origin, sponsorship, or approval of the goods or services.

The key distinction between a right of publicity and a false endorsement claim is that the latter requires a showing of consumer confusion, a requirement that does not exist to assert a right of publicity violation.

Conclusion

Prince’s estate has several possible avenues to protect the post-mortem rights to his name, likeness and persona pursuant to existing Minnesota common law, the proposed new PRINCE Act legislation and false endorsement claims under the U.S. Trademark Act. It is a positive sign o’ the times that Prince who, during his lifetime, forcefully fought to obtain and retain control of his intellectual property rights, will likely not lose control of his most personal rights after his death.