Lots of Pub on the "Right of Publicity"

An oft-overlooked discipline of intellectual property is the nebulously titled "right of publicity" that each individual enjoys (and likely doesn't realize/know).  Thanks to a number of high-profile cases in various stages of litigation, as well as the unexpected death of musician/recording artist Prince, the "right of publicity" has been the focus of much discussion. Simply stated: the right of publicity is the right of each individual to profit from the commercial exploitation of one's own name, image, or likeness (NIL) and to prevent others from profiting off of the unauthorized use of one's NIL.

Over the last several years, the two major cases getting most of the attention in connection to the "right of publicity" are/were the Sam Keller (former Arizona St. quarterback) and Ed O'Bannon (former UCLA basketball star) class actions.  Both Keller and O'Bannon sued the NCAA, EA Sports, and the Collegiate Licensing Company (CLC), but on slightly different (but related) grounds.  

Keller sued the three entities for violating NCAA athletes' right of publicity, and eventually secured settlement, first from EA Sports and the CLC for $40 million, and then from the NCAA for an additional $20 million.

O'Bannon sued the three entities for allegedly violating the Sherman Anti-Trust Act, in that the NCAA's rules on amateurism prohibited NCAA athletes from individually or collectively negotiating licenses with third-parties to exploit the athletes' NIL rights.  The district court judge ruled in-favor of the O'Bannon plaintiffs (that the NCAA/EAS/CLC) violated the anti-trust act, and further-ruled that athletes should be paid but that the NCAA could place a cap but not less than the cost of attendance.  The 9th Circuit affirmed the anti-trust violation, but reversed the payment scheme.  The O'Bannon plaintiffs have filed a petition for a writ of certiorari to the US Supreme Court - essentially a request of the SCOTUS to consider an appeal for one or more reasons.

At nearly the same-time that the O'Bannon plaintiffs were crafting and filing the writ of certiorari, recording artist/musician Prince (Rogers Nelson) suddenly and unexpectedly died (on April 21) at his home in Paisley Park, Chanhassen, Minnesota.  Like many states, Minnesota has a general right of publicity law that protects an individual from the misappropriation of one's NIL.  However, Minnesota does not have a specific provision that protects the right of publicity interest beyond the death of the individual.  In the grand majority of cases (and not just in Minnesota), the right of publicity effectively dies with the individual since the commercial viability  of anyone's NIL is non-exist post-mortem.  And then there is the exception:  the native celebrity.

Prince was an unusual person in many (many) ways.  Notably, and unlike so many that find stardom, Prince elected to maintain home-base in his native Minnesota.  While some states (such as California - think Michael Jackson - or Tennessee - think Elvis Presley) have post-mortem rights that benefits the estates, and allows the estates to thwart all unauthorized uses of the NIL of dead-celebrities, Minnesota is not so clearly aligned, and to date, no court has ruled that Minnesota's right of publicity laws survive one's death.  This uncertainty has lead to the Minnesota state legislature to propose a bill to allow dead-celebrities (and more accurately - the estates of dead-celebrities) to control the use(s) of the celebrity's NIL.

A more recent development concerns another group of NCAA athletes and the unauthorized use of their NIL by the fantasy sports sites DraftKings and FanDuel (Daniels et al. v. FanDuel Inc. et al. - Southern District of Indiana: 1:16-cv-01230).  In that federal case, former Norther Illinois football players Akeem Daniels and Cameron Stingily filed suit against the two sites alleging that the fantasy sports companies used the NIL of many NCAA athletes without authorization (and owe damages from the unauthorized use).  This case had been originally filed in Illinois, but was voluntarily dropped and re-filed in Indiana.

Why Indiana (and not Illinois)?  Well, one of the quirks of the right of publicity is that the uniformity from state-to-state is not as harmonized as one might think.  In fact, one state is considered to have the most-favorable right of publicity laws for celebrities:  Indiana.

In Indiana, the right of publicity continues for 100 years beyond the person's death.  Moreover, the Indiana statute provides for statutory damages (in lieu of proving actual damages) of $1000 per instance of misappropriation.  The statute applies to non-domiciled (non-resident) persons, and merely requires that the "use" of the NIL (and other enumerated categories) have occurred within Indiana.

A similar case by NFL players (spear-headed by Washington Redskins WR Pierre Garcon) was filed in October 2015 in federal court in Maryland.  The NFL players' union and the two sites settled that case in Jan. 2016.  The fact that the professional sports organizations include a players' union that is heavily involved in right of publicity questions with the players (generally as a collective) assists companies like FanDuel and DraftKings with one-stop-shopping negotiations and settlement of such claims, including future licensing for authorized use.  Conversely, the lack of such an organization on behalf of NCAA athletes creates challenges in creating such one-stop-shop actions.

The pub that the right of publicity has received of late shows no signs of slowing - even if these rights are generally not well-understood or even recognized by most.  Because these type of rights are most often exercised (or protected) by celebrities that have much to protect in terms of image and perception, the lay person probably does not think much about such rights.  However, as the estates of Elvis Presley and Michael Jackson have taught, the revenue that can be generated after the celebrity's death can be as much if not more than when the celebrity was alive.

Celebrity Inventors & Inventions

I came across a news article discussing the recently issued design patent for an improved beverage and food cooler to Mike Golic (former NFL football player and current co-host of ESPN radio's Mike and Mike show), son Jake, and three other co-inventors. This got me to thinking about celebrity inventors and inventions (a distinction that will become more clear shortly), as well as the difference between utility (for mechanical arrangement and/or function) and design (aesthetic / ornamental design) patents. If it is not obvious, a celebrity inventor is someone that is already a celebrity and later develops an invention that is exploited in some way.  Although Thomas Jefferson was initially philosophically opposed to patents (and the limited monopoly provided), through his ministerial role as chief patent examiner as Secretary of State in the early years of the US republic, Jefferson came to appreciate the economic benefits derived from a patent system.  And despite is prolific mechanical acumen, Jefferson did not attempt to patent the many inventions he developed after the US patent system was implemented in 1791 (and, of course, many of his inventions pre-dated the system), thus falling outside a reasonable definition of celebrity inventor.

Before his election as the 16th President of the United States (but as a member of Congress), Abraham Lincoln received a patent for buoying water vessel over shoals.  Given the time (and times) of Lincoln's invention and congressional experience, any celebrity that Lincoln enjoyed at that point was limited.

Likewise, although Thomas Edison is extremely famous, his fame is tied to his inventions and his patents, and thus not quite within the celebrity inventor umbrella.

Shortly after she launched her American-film acting debut, in an effort to contribute to the allied war-effort during World War II, actress Hedy Lamarr teamed with George Antheil to develop a frequency-hopping signal system to prevent naval opposition from jamming naval torpedo signals that would cause the torpedo to veer off course and miss its target.  Lamarr (under her married name Markey) and Antheil were awarded U.S. Patent No. 2,292,387 in 1942.  However, a skeptical U.S. Navy did not adopt the technology.  Instead, the technology sat unused until the 1960s, when it was finally adopted.  Although Lemarr skirts the edge, since her technology was not adopted until after the patent term expired, this too falls short.

The several (and best) examples of celebrity inventors generally come from the performing arts, where some necessity was the inspiration for an invention for integrated use in the performer's milieu.  As such, Harry Houdini is probably the first celebrity inventor, creating a diving suit awarded a patent in 1921, some thirty-years into his illusionist career.  Walt Disney held two patents for animation and motion picture techniques, with the animation patent forming part of the launching pad for Disney Studios.

Although Houdini and Disney had utility patents, design patents are well represented by George Lucas and his LucasFilm empire.  Being the pioneer in film-to-toy merchandising, Lucas (and with the artistic input of legendary artist Ralph McQuarry) holds at least 11 issued design patents for various conceptions of characters from the Star Wars universe, such as the uber-popular Boba Fett, Yoda, and the AT-AT imperial transport.

The world of music provides some of the more recognizable implementations of invention-by-inventor.  Eddie Van Halen created a removable try that attaches to the underside of a guitar for assisting the guitarist in accessing the guitar like a piano (now expired).  EVH also invented and owns the patents for a single-string de-tuning system (branded as the D-Tuna) and the design for a guitar headstock (with a scallop cut removed).  EVH also has purchased other patents (here and here).

Musical genius Prince held a design patent for a portable keyboard (expired in 2008).  Prince's chief musical rival in the 80s, Michael Jackson, invented a shoe-device that created the illusion of anti-gravity, most effectively used in his video for the hit-song "Smooth Criminal".

The previous examples stand in contrast to "celebrity inventions" that are really no more than celebrity-endorsed products invented by other non-celebrities.  The "George Foreman Grill" is one of the best examples of this, since the grill was actually invented by Michael Boehm.  With the success of the Foreman Grill, the copycats followed, with the Evander Holyfield Real Deal Grill, the Carl Lewis Health Grill, and the Hulk Hogan Blender.  However, these are good examples of the licensing, use, and (somewhat) successful utilization of the valuable name, image, and likeness (aka, NIL) of a well-known celebrity.

Whether the Golics can land a licensing deal or sell to a cooler manufacturer, and achieve the desired monetary success with the ornamental design of this new cooler remains to be seen.  Mike Golic's celebrity certainly will be a large selling point in getting the product recognized, often one of the hardest parts of achieving commercial success.

While you may not (yet) be famous, if you have an invention that you believe functions or appears differently from what is out there, contact York Law LLC to get more information on what you can do to start down the path of success.  (E: oly3@olenyork.com).

Intellectual Property & You (Taylor Swift)

Like or dislike her music, Taylor Swift is one of the few singer/songwriters presently achieving mega-sales, having now crossed-over from country-pop to super-pop-star status with the recent smash 1989.  In glossing over the very recent reports of Taylor Swift's rebuke of Apple's proposal not to pay (performing rights organizations on behalf of producers and writers) during its three-month free trial of a new streaming service, and Apple's subsequent reversal, I ran across this interesting tidbit:  in late Oct. 2014, Swift had applied for multiple (40) trademark applications based on song lyrics.^[1] Although this has been misreported as Swift having "trademarked" five lyrical phrases, when in fact these were "intent to use" (ITU) filings^[2] without any registering decisions made from the US Patent and Trademark Office, it certainly shows a keen attentiveness to the value of her intellectual property regardless of form or media at issue.  Seemingly ripping a page from the KISS (Gene Simmons/Paul Stanley) playbook, and then like a creative coach tweaking the play, Swift has taken some of the more popular (catch-phrase type) lyrics from the collection of songs found on 1989 and filed these ITU applications to further monetize the lyrics beyond the digital downloads and net-streaming revenue available for artists.  While I wouldn't expect a Taylor Swift casket, or for Swift's name to become the nickname of an Arena Football League franchise, Swift's aggressiveness with this type of branding and marketing may know few bounds.

Footnotes

1. The lyrical phrases "Part Like It's 1989" and "This Sick Beat" are taken from the hit song "Shake It Off"; Swift filed intent-to-use applications for both phrases, and each phrase was filed in 16 separate classes of goods and/or services (or 32 applications in total). Three other phrases, "Cause We Never Go Out Of Style" (3 classes of goods/services), "Could Show You Incredible Things" (3 classes of goods/services), and "Nice to Meet You. Where Have You Been?" (2 classes of goods/services), were each taken from the hit song "Blank Space", comprising the remaining applications of the 40 filed by Swift. 2. An "intent-to-use" (ITU) application is designated as a "1B" application and signifies that the applicant has a bona fide intent-to-use the mark in interstate commerce in the future and in association with the goods and/or services identified, but no present interstate commerce usage exists as of the filing. An ITU application for a mark, if approved, requires that the applicant eventually start using the mark in interstate commerce or forfeit the right to use the mark exclusively in those classes of goods and/or services.