Smart Business spoke with Polak about the right of publicity and how companies can avoid infringement.
How does the right of publicity relate to corporations?
The right of publicity is the right of any person to control and benefit from the commercial use of his or her identity. This includes not only the look of the celebrity but the image, voice, likeness or symbol associated with the person. If people want to use a famous person to bolster their product, they have to pay for that right.
Companies often want their product associated with a celebrity and never think of the image they are conveying for the celebrity. Often they tarnish the celebrity’s values and essence. There is a misconception that heirs, in attempting to capitalize on the celebrity of their parents, are out profiteering. The truth is, heirs are less interested in the money but rather the control over the way the person is being portrayed.
Companies that are selling merchandise or want to use the image of a celebrity to help sell another product must be aware of these rights to avoid an infringement lawsuit.
How do intellectual property attorneys protect publicity rights of people both living and dead?
We protect the assets by vigorously researching infringements that may exist for any client.
A variety of methods are used to find infringements. We have an Internet research team that scours the Internet looking for misuse of a celebrity or their image. Other teams search through trade publications and various locations to find misuse. Often, the heirs are the best leads because they are the closest to the celebrity, and they want that person to be remembered or viewed in the proper image.
Intellectual property attorneys protect celebrity image and branding. Branding is the consistent use of an image over time to create an association between the celebrity and the product.
How is it determined if the image of the celebrity is used illegally?
A company can be charged with infringement if more than a minute number of people associate the product with the celebrity. If you use the image, likeness or picture of the celebrity without permission, it constitutes infringement.
It is important to note that intent is not a factor used to determine liability. Therefore, a company may be innocent in intending to infringe on a person’s rights but will still be held responsible.
Companies found in violation may have to pay all monies from the sale of the merchandise, and fees such as corrective damages (the amount of money it takes to correct the bad publicity). A celebrity also can demand turnover of all products or merchandise used in the sale.
The recent case making headlines between Jessica Alba and Playboy magazine is an example of the right of celebrity. Playboy legally purchased the rights to a picture of Alba from a studio and put that picture on their cover. While Playboy did clear the copy rights of the photo, it did not clear the publicity rights. Alba’s picture led the public to conclude that she had posed nude for the publication. She did not pose for Playboy. Alba claimed the magazine tarnished the image she worked to convey and infringed on her rights. Hugh Hefner recently apologized to Alba for using her image against her will. Companies need to be aware of the right of celebrity in order to cover all legal aspects of a campaign or product.
How can a company or business use a celebrity or their image properly?
Celebrities, both living and dead, are represented by agents. It is necessary to do the research to determine who owns or manages the rights of that celebrity. Companies should contact an intellectual property attorney to help clear the rights. They need to determine if there is an intended use for commercial purpose. If there is, they need to identify and contact the person who can grant authority to use the celebrity.
Once the proper people have been located then a deal needs to take place. There will likely be an upfront fee to use a celebrity or their image and then an agreement on a royalty payment on the percentage of the profit gained.
JONATHAN POLAK is chair of the Intellectual Property Practice Group and a member of the Sommer Barnard PC’s Business Group. His practice is concentrated in the areas of complex commercial litigation and intellectual property litigation. Reach him at (317) 713-3500 or firstname.lastname@example.org.