THE RIGHT OF PUBLICITY – Johnson Review

Vol. 9 No. 1 (February 2019) pp. 6-12 

THE RIGHT OF PUBLICITY: PRIVACY REIMAGINED FOR A PUBLIC WORLD by Jennifer E. Rothman.
Harvard University Press, 2018. 256 pp., Hardcover, $39.95. 

Reviewed by Eric E. Johnson 
University of Oklahoma College of Law 
eric.e.johnson@ou.edu 

The right of publicity is the unruly adolescent of the intellectual property world. Or is it the tort world? (Um, why is it any of your business?! You wouldn’t even understand!!) The right of publicity is moody and unpredictable, headstrong and heedless. Between you and me—and I hate to say this—it’s still figuring out how to move its newly lengthened limbs without breaking things. (Not too long ago it knocked over a stack of comic books¹ and almost destroyed a whole collection of DVDs.²) Like other teenagers, the right of publicity talks too loudly, thinks everything it says is interesting, and—as you’ll know if you’ve read recent cases—spends far too much of its time on video games.³ (Remember when it was obsessed with baseball cards?⁴ It felt like those days would go on forever … ). What will the right of publicity do to become a productive member of society? Will it economically incentivize creative activity? Will it protect individual autonomy? Whatever you do, don’t ask the right of publicity. It will just scowl at you. The right of publicity is still figuring out what it wants to do for a job. If it even wants a job. 

Most of all, the right of publicity won’t take advice. But it should. It really should. All we can do is keep talking and hope that something gets through. 

Well, the right of publicity couldn’t ask for a much better guardian than Jennifer E. Rothman, whose new book is THE RIGHT OF PUBLICITY. Rothman, a professor at Loyola Law School in Los Angeles, has genuine love and affection for the right of publicity, but she’s clearheaded about the need for discipline. She’s also knowledgeable. Rothman has taught herself everything there is to know about the right of publicity’s upbringing, including every embarrassing story from the right of publicity’s childhood. If you want to hear those stories, put the right of publicity in the spare room with the latest Grand Theft Auto,⁵ close the door, and open Rothman’s book. She’ll tell you how it all started and where it all went wrong.

The right of publicity lost its way, Rothman tells us, when it started to wander from its roots in the right of privacy. Actually, check that. The right of privacy, back in the beginning, was the right of publicity. “[A]t the origin of the right to privacy,” Rothman explains, “privacy was primarily about the right to control ‘publicity’—when and how one’s image and name could be used by others in public” (p. 11). This is a key contention for Rothman, and she backs it up with a thorough and entertaining history. 

Rothman begins deep in the culture and technology of the late 1800s, showing us how the common-law right of privacy was a legal response to photographers and print shops gaining the technical means to do as they would like with other people’s faces. Rothman then follows the law through the first half of the 1900s: In these decades, the right of privacy/publicity succeeded in allowing celebrities and noncelebrities alike to keep control over their names and likenesses. They could get damages for emotional distress, economic harms, and reputational injuries. Persons’ agency over themselves was upheld with an increasingly cogent and well-accepted common law right. The right of privacy was in a good place. It was working. 

But in this era were the first stirrings of trouble. Some rogue courts and loose dicta suggested—against the weight of authority, Rothman tells us—that the right to privacy wouldn’t protect celebrities (p. 44). Why? The right to privacy was, these bad influences said, about compensating the hurt feelings of private people who wanted to stay private, while celebrities, by their very nature, had shown they didn’t want to stay private. This line of thinking raised the specter that celebrities needed something different from the law prevailing at the time. Even though, Rothman insists, they didn’t. 

But the right of publicity didn’t start to go off the rails until mid-century, when the Second Circuit handed down the granddaddy of all right-of-publicity cases, Haelan Laboratories v. Topps Chewing Gum.⁶ The dispute involved one baseball card company suing another over alleged exclusive rights to various players, and the Second Circuit opinion that resulted from the case became the stuff of legend. In the years since, Haelan Labs has become widely known to be the instant of the birth of the right of publicity and the moment of the coining of the term “right of publicity.” Widely known, yes—but wildly wrong. Rothman demonstrates that the case originated neither of these things (p. 45). In fact, according to the litigants, the litigation was not about the right of privacy, the right of publicity, or anything of that ilk. Instead, it was about tortious interference with contract (p. 51). So how did it end up as the most influential right-of-publicity case of all time? 

To chart that metamorphosis, Rothman does meticulous research. She dives into archives, bringing us, for instance, pictures of packaging used as litigation exhibits and the trial testimony of New York Giants catcher—and face for both Topps and Bowman—Wes Westrum (pp. 52 & 54). We get the snide characterization by the Topps attorney of ballplayers being “child-like” in their propensity to sign away rights without legal representation or even bothering to read what’s on the page (p. 54). In fact, the blizzard of haphazardly signed papers isn’t just color, it’s a plot point. Rothman surmises that the seed for a right-of-publicity solution to the case was sown when the district court judge faced the prospect of having to read hundreds of contracts to untangle competing claims of priority (pp. 57-58). The juiciest part, however, is where Rothman gets a hold of the internal memoranda among the judges on the Second Circuit panel (pp. 60-61). Here we get startling new insight into why the panel gravitated toward a right-of-publicity basis for upholding claims of exclusive rights. 

Judge Charles Edward Clark, Rothman suggests, was encouraged to look at things from a right-of-publicity angle because of a book review he had recently read in the Yale Law Journal. The review, written by Herman Finkelstein, an attorney for music-publisher rights society ASCAP, concerned Samuel Spring’s Risks and Rights in Publishing, Television, Radio, Motion Pictures, Advertising, and the Theater. Judge Clark was apparently convinced on the basis of just the review’s criticism of the book—since Clark admitted in his memo to Judge Jerome Frank that he hadn’t read the book itself—that New York’s privacy statute would not permit a claim for unauthorized use of celebrity images, only for unauthorized uses of images of people who wanted to stay out of the public eye. 

Of course, more than a half century later, Rothman has done the reading Judge Clark didn’t have time for. She tells us Spring’s book got it right, and Finkelstein’s book review got it wrong: New York cases had already held that the state’s privacy statute protected celebrities against unauthorized exploitation of their images (p. 61). Thus, Haelan Labs didn’t need to forge a new path. 

Let us pause here to consider a collateral lesson that comes out of Rothman’s research: A hasty book review can do enormous damage to the law. Gulp! (I now feel obligated to encourage future judges to avoid relying on my review of Rothman’s work and instead to go ahead and read her book. And I hereby disclaim all damage done to the spacetime continuum by judges who don’t). 

The marvelous way in which Rothman finds connections makes the reader think she must have a large corkboard in her basement—like the ones you see on TV—pinned with pictures and scraps of paper linked by strings of yarn. As one example: Rothman even figures out why Judge Clark must have seen Finkelstein’s book review—because it followed Clark’s own book review of a procedure casebook in the same issue of the Yale Law Journal! 

Problematic though Haelan Labs was, Rothman contends that the case did not, itself, represent the transmogrification from the well-functioning right of privacy/publicity we had before into the troublesome doctrine we have today. Instead, it was a host of others who “took this ball from Haelan and ran with it” (p. 64). Thus Rothman proceeds to the second part of her story, where the right of publicity bloats and grows out of control.

One group Rothman pins blame on is law students, for writing impulsive, poorly researched comments in law reviews that she finds to have had surprising influence (pp. 47-50, 68). What cannot be surprising, of course, is that so many students wrote law-review notes about the right of publicity. It turns out the law students of yesteryear flocked to sports- and entertainment-related cases for note topics just as they do today. (Not that us IP scholars can be too judgy. One thing I found looking over the photographs in the book is that Rothman and I have collected the exact same Wes Westrum baseball cards. Um, you know, for science). 

Another influencer and target of Rothman’s criticism is Melville Nimmer, best known as the original Nimmer of Nimmer on Copyright. Before his treatise-writing days. Melville Nimmer gained early prominence with his extremely influential 1954 article, “The Right of Publicity.”⁷ Rothman questions Nimmer’s motivations for writing that piece, which she says took positions that benefitted his then-employer Paramount Pictures and oversold the idea of a revolutionary change in the common law in a way that would help him land a law professor job (pp. 68-71). It’s a critique that is wince-inducing, but productive. Legal scholars, as a profession, should probably be talking much more about how real-world, beyond-the-fourth-wall influences end up shaping scholarship and, ultimately, affecting the path of the law. 

Rothman’s treatment of that other most famous right-of-publicity case, Zacchini v. Scripps-Howard Broadcasting⁸ (pp. 139-143), is another engrossing part of the book. This is the case in which circus performer Hugo Zacchini sued a local television station for airing footage of his human cannonball act performed at a county fair. To scrutinize this case, Rothman does more first-rate historical digging. She not only reads the clerks’ memos, she even inspects the underlining on Justice Lewis F. Powell Jr.’s copies. For those scholars, like me, who’ve puzzled for years over why the Court granted certiorari in the case, Rothman gives us new insight: The underlining of the phrases “fun-to-work-on” and “a lot of fun” provides, when you think about it, a depressingly plausible explanation. 

All of Rothman’s toiling in the archives and connecting of disparate threads helps deliver her convincing story of how the right of publicity shifted away from its original, beneficial right-of-privacy paradigm and toward its noxious, current form as a transferrable, intellectual-property-type right. Morphed as it has been, the right of publicity is no longer principally concerned with protecting people’s dignity and their ability to control how they are presented to the world. Instead, as Rothman’s book tells it, the right of publicity has become a tool to undermine those interests, allowing corporate actors—such as managers, record labels, social media platforms, and others—to grab people’s names and likenesses and use them for corporate interests, dignity be damned. 

The Haelan Labs case, the student law-review notes, Melville’s article, and the Zacchini case all played a role, in addition to other influences that Rothman catalogs. But what were the underlying motivations behind the big change? What motivated the characters in this drama? In part, it was a power grab by corporate interests that stood to benefit from being able to separate people from the legal rights to their own names and images. That’s unfortunate, of course, although it is hardly an unusual storyline. Much more troubling is the extent to which, according to Rothman’s account, the law was unwittingly redirected by the self-indulgence and intellectual laziness of judges and commentators who reached out for something glittery to work on—but then didn’t do the research or hard thinking needed to do a good job with it. That heartbreaking realization—made possible by Rothman’s indefatigable historical work—is one of the book’s signature contributions. 

The highest achievement of Rothman’s work, however, is that it gives us a thoroughly documented, unified picture of the right of publicity, allowing us to see great cohesiveness in it. Early on in her book Rothman confesses, “The right of publicity … rather than a single, uniform right, is in reality many different laws. This variability makes these laws difficult to navigate and even to talk about in a coherent fashion” (p. 3). Too true. I recently made my own attempt to provide coherence to the right of publicity.⁹ I’ll break the fourth wall to tell you that writing that article frequently made me want to pull out my hair. Right-of-publicity cases show a chronic disregard for procedural and doctrinal structure, and they are filled with inconsistently used terms and bits of glossy nonsense that patch over omitted analytical steps. Trying to unsnarl them can be maddening. Thus, my experience intensifies my admiration for what Rothman has been able to pull off in her book, putting the history, the rhetoric, the holdings, and the personalities into a single, coherent narrative that tells a convincing story of how the right of publicity went wrong, where it’s at now, and how we should start fixing it. 

If there is one weak point in the substance of Rothman’s book, in my view, it is the chapter on copyright preemption. Like the rest of the book, this part is clearly written and extremely well-researched. And I agree with Rothman’s sense that copyright-preemption doctrine is troubled in the right-of-publicity context. But her suggestions for righting the various problems in this area strike me as unconvincing. Unexpectedly, Rothman does not leverage her privacy-centered view of the right of publicity as a means for solving its copyright preemption woes.¹⁰ On the basis of the preceding chapters, however, she has convinced me that doing so is fully plausible. I would be very glad to see Rothman marrying her privacy-centered view with copyright-preemption analysis in a future work. 

Another place for constructive criticism is the book’s cover. I realize it’s probably eccentric to bring jacket design into an academic book review, but I think there’s an interesting point to be made here. Designed by Jill Breitbarth, the cover seems thematically disconnected from the book’s substance. It features the book’s title and the author’s name arranged in blue semi-transparent bands across a black-and-white photo of a city’s pedestrian mall on a sunny day, shot from above—perhaps from an unseen building or by a drone. Silhouetted people mill about with their shadows on the bright surface. Two of the people in the plaza are windowboxed within one of the blue bands. We get the idea they are being spied upon. The graphic elements in combination with the book’s subtitle, Privacy Reimagined for a Public World, delivers the message that this book is about how we are all surreptitiously watched as we go about our daily lives: tracked by Fitbits, surveilled by the Five Eyes, and all that. Yet Rothman’s book isn’t about any of that. 

What would have been a fitting jacket design? I’ve come up with a few good ones, myself. But I’ll spare you. You didn’t pick up this review to hear a law professor pitch graphic design ideas. I’ll just tell you that the ideas I have all involve recognizable faces—which, after all, is what the right of publicity is all about. 

I don’t know how the book’s cover was made, but in an experiment I found that when I searched stock-photography website iStock using only the words “public” and “plaza,” the first page of results included photos of the same city scene from the same photographer. (It’s the Zeil in Frankfurt, credited to a photographer named Meinzahn.) When you get to the particular photo used on the cover, you find a little gem that, as it turns out, is very much connected to Rothman’s book and the legal problems she is tackling. Along with the offer to license the photo is this selling point: “Every file licensed comes with a $10,000 legal guarantee – that’s our promise that when you use our content within the terms of our license agreement, it won’t infringe on any copyright, moral right, trademark or other intellectual property right or violate any right of privacy or publicity. You can also purchase an Extended Legal Guarantee to increase that coverage to $250,000.” 

And so it is that an out-of-control right of publicity, with the unpredictable capacity to sidestep the First Amendment, seems to have tied the hands of one who might venture to put a more fitting cover on the book that decries it. 

So don’t judge this book by its cover. (Unless you are willing to engage with the cover in a well-researched meta-analysis that reveals its deeper meanings.) But do read it. 

THE RIGHT OF PUBLICITY: PRIVACY REIMAGINED FOR A PUBLIC WORLD is an unquestionably important book. Masterfully researched and deftly crafted, it is probably the best single source for gaining a deep understanding of the doctrine’s history, context, and politics. I also am not aware of a more effective introduction to the principal cases and current controversies. The ultimate importance of the book comes more than anything from its careful, nuanced, and well-ordered thinking about an area of law that has stayed defiantly abstruse. The cogency of Rothman’s argument will win many converts, but the clarity of her analysis will help even those who disagree with her. It deserves a place among the must-reads of American right of publicity law.

Suggested Citation: 9 The IP Law Book Review 6 (2019).

© 2019 Eric E. Johnson 

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1. See Doe v. TCI Cablevision, 110 S.W.3d 363 (Mo. 2003) (upholding a right-of-publicity claim by a hockey player nicknamed “Tony Twist” against the creator of a villainous character nicknamed “Tony Twist” in the Spawn comic-book series).
2. See Dryer v. National Football League, 814 F. 3d 938 (8th Cir. 2016) (denying right-of-publicity claim by former NFL players against the NFL for selling documentary films using old game footage in which the players appear).
3. See, e.g., Hart v. Electronic Arts, Inc., 717 F.3d 141 (3d Cir. 2013); In re NCAA Student-Athlete Name & Likeness Licensing Litigation, 724 F.3d 1268 (9th Cir. 2013); No Doubt v. Activision Publishing, Inc., 122 Cal. Rptr. 3d 397 (Cal. Ct. App. 2011).
4. See Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953); Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95 F.3d 959 (10th Cir. 1996).
5. See Lohan v. Take-Two Interactive Software, Inc., 31 N.Y.3d 111 (2018) (right-of-publicity claim by actress Lindsay Lohan for alleged portrayal in video game Grand Theft Auto V).
6. 202 F.2d 866.
7. Melville B. Nimmer, The Right of Publicity, 19 Law & Contemp. Probs. 203 (1954).
8. Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977).
9. Eric E. Johnson, Disentangling the Right of Publicity, 111 Nw. U. L. Rev. 891 (2017).
10. Rothman does mention in the epilogue, in passing, that reuniting the right of publicity conceptually with the right of privacy will help to limit clashes between the right of publicity and copyright, but she does not develop this idea.