Massachusetts May Soon Have a Post Mortem Right of Publicity, Albeit Only for Personalities

By Marie-Andrée Weiss

On June 16, 2014, the Massachusetts Senate passed a right to publicity bill, S.2022, An Act protecting the commercial value of artists, entertainers and other notable personalities (the “Act”). It must now pass the House.

Right of publicity can be described as a property right and as a privacy right. It is a property right because it allows an individual to protect unauthorized commercial use of his identity. It is a privacy right because it protects the personality of an individual. This right is not, however, protected by any federal law. Instead, most U.S. states have their own right of publicity laws, whether statutory laws or common laws.

The Act would only apply to personalities, which are defined by the Act as individuals “whose identity has commercial value.” Section 3A of Massachusetts General Laws already recognizes a right to publicity. It provides a civil cause of action if a third party has used the “name, portrait or picture…within the commonwealth for advertising purposes or for the purposes of trade” of “[a]ny person” without his or her written consent. The Act would strike 3A out and replace it with the Act. It seems therefore  that individuals who are not personalities would no longer have a right to publicity in Massachusetts.

While the current version of Section 3A concentrates on the privacy aspect of the right of publicity, by detailing the elements of a civil cause of action for unauthorized use of someone’s personality, the new version of Section 3A concentrates instead on the property aspect of the right of publicity. It is indeed an Act “protecting the commercial value” of personality. The Act also defines “right of publicity” as a “property interest.” The unauthorized commercial use of a personality’s identity, in advertising or for fundraising would be an “infringing use.”

Under Section 3A(d)(1) of the Act, the right of publicity would be “freely transferable,” for instance, by written contract, gift, or trust. An individual would be able to transfer only some parts of his “personality‘s identity” separately from other parts. That means it would be possible to license one’s name to one entity, while licensing one’s image to another entity. As such, licensing contracts would have to be drafted with great care.

The right of publicity could also be transmitted by testament or intestate succession. However, no right of publicity could escheat to any state or jurisdiction. Indeed, the Act would also provide a post-mortem right of publicity. Several States, such as California or Tennessee, already recognize such a right. The Act would extend the right of publicity by up to 70 years after the personality’s death, if the personality was domiciled in Massachusetts at the time of his or her death. In order to be protected post mortem, however, the aspect or aspects of the personality’s identity commercially exploited would have to have been transferred and such transfer would have to have been registered, either during the personality‘s lifetime or within 5 years of his or her death, Section 3A(d)(5).

The Act would provide for a cause of action for infringement of the right to publicity, and courts could award damages of $1,000 or, if greater than $1,000, the actual damages suffered as the result of the infringement, plus attorney’s fees. The plaintiff would have to prove “the gross revenue attributable to the infringement.” That requirement could lead to extensive discovery. This action would belong to either the personality or to the person or the persons collectively owning “more than 50 per cent of the commercially used aspect of a personality‘s right of publicity.” This may lead to situations where the right of publicity of a personality has been infringed, but as a third party owns more than 50% of the infringed right of publicity and chose not to file suit, the personality could be left with no recourse. Therefore, agreements transferring more than 50 per cent of a personality’s right to publicity should address this issue, for instance by adding a provision stating that the personality has to right to compel the owner of the right of publicity to bring suit, or that the personality would be compensated if the owner of the rights choses not to sue.

The Act provides some free speech protection. Section 3A(a) specifies that “commercial use” of identity does not include use of a personality’s  identity as part of a news report or commentary, or as part of an artistic or expressive work. Section 3A(c)(2) would provide a Safe Harbor for the owner of media which had published, broadcast or disseminated an infringing use, unless the owner had actual knowledge that this use was infringing.

As similar bills failed to be enacted in the past, it remains to be seen if the Act will pass the Massachusetts House.