With the deaths of Prince and David Bowie earlier in the year, the process by which celebrity estates monetize the images and other intellectual property (IP) of the dearly departed has come into greater focus. How will they handle the onslaught of business from rights to their images and other non-musical IP?
Unlike recordings and music publishing, which are covered by national law, individual states determine rights of publicity. Specifically, copyrights are federal and can be inherited by heirs such as in the Marvin Gaye case.
Right of Publicity
Rights of publicity enjoy broad protection in nearly every jurisdiction, according to IP attorneys. A major challenge for clients and practitioners arises when the owner of the publicity rights has died, according to Clay M. Townsend, attorney, Business Trial Group, Morgan & Morgan, P.A., contingency-fee business litigation attorneys.
“The law of the domicile of a deceased rights owner may vary dramatically from one’s expectations,” Townsend says. “For example, Florida’s right of publicity statute prohibits the unauthorized use of the name and likeness of any natural person. And the right may be asserted by a surviving spouse or children.”
Furthermore, Townsend cites that the Eleventh Circuit holds the right of publicity is an intangible personal property right and, therefore, the law of the owner’s domicile applies. “If the law of the domicile of the owner at the time of their death has no right of publicity, or if such rights are not descendible, any claim based on such rights is likely to be dismissed.”
Careful Estate Planning Needed to Protect Publicity Rights
So, for example, although California recognizes a descendible right of publicity, Princess Diana was not entitled to this right because the law of her domicile (i.e., Great Britain) did not recognize this descendible right, according to Townsend. “Monetizing publicity rights of deceased celebrities requires careful advance estate planning with an eye to the law of different jurisdictions,” he says.
For example, the need for careful estate planning vis-à-vis rights of publicity can be seen clearly in the recent case of A.V.E.L.A., Inc. v. The Estate of Marilyn Monroe, LLC, in New York State. “The estate is subject to laws in the states where the person died and was resident, which vary from state to state,” says Roberta Jacobs-Meadway, member, board of directors and executive committee and co-chair, Intellectual Property Group, Eckert Seamans Cherin & Mellott, LLC, a full-service national law firm. “Right of publicity is governed by local state law.”
So only through proper planning and preparation will estates of deceased celebrities be able to properly handle business opportunities that might arise in connection with the celebrities’ rights to their likenesses and other IP, according to P. Betty Tufariello, Intellectulaw, The Law Offices of P.B. Tufariello, P.C. She says that planning should comprise:
- Determining whether the celebrity had a will or died intestate
- If there is a will, probating it in a court of appropriate jurisdiction. If there is no will securing letters testamentary. This will give the estates ability to take steps necessary to protect the IP
- Identifying all the celebrity’s IP—this step may necessitate searching IP databases or even hiring a private investigator
- Marshaling, taking inventory and cataloguing such IP
- Conducting due diligence in connection with, and deep analysis of such IP to determine and develop its history
- Once all IP is identified and marshaled and all due diligence completed, implementing processes that will perfect estates’ IP rights to maximize revenue and protect against infringement
As any student of art and commerce can attest, the modern concept of merchandising rights really took off after director George Lucas asked for a seemingly counterintuitive contract change in his production deal with 20th Century Fox on the first Star Wars film (1977). In exchange for taking a reduced directorial fee, he retained 100 percent of all merchandising rights to the first and all subsequent Star Wars sequels and prequels. By rebating $350,000 of his half-million dollars director’s pay, Lucas took full possession of a merchandising franchise that would gross $27 billion over the next 35 years.
Similarly, estates of dead celebrities can make big bank with their merchandising rights if they play their cards right. But there remain parallel concerns with celebrities and the parts they played or other fictional representations with which they remain inextricably intertwined, according to IP experts.
“One consideration, particularly if the celebrity enjoyed fame briefly or fame attributed to a particular role, is whether the deceased retained any rights to the persona or character with which she was associated,” Jacobs-Meadway says, “or whether merchandising rights were signed away at the beginning of the engagement resulting in public recognition. Merchandising rights separate from the character may have significantly less value.”
Music Sales Virtually ‘Valueless,’ today’s IP Market based on Merchandising
While actor estates can still receive at least a nominal income stream from television residuals from made-for-TV productions and televising of theatrical-release films, music artist estates depend on continued marketing of recordings. Unfortunately, free or virtually free online services have rendered music almost null and void from an economic standpoint in the views of IP experts. This makes merchandising and other imaginative commercial packaging of the artists’ likenesses more important than ever to the ongoing viability of their estates.
“Today’s market leader is merchandise sales,” says David L. Woronov corporate attorney, McCarter & English, who works with the Estate of Peter Tosh, the Jamaican reggae singer and songwriter and founding member of the Wailers. “YouTube and streaming render the sale of music virtually valueless. Old merchandise classics like T-shirts remain important, but creative twists are now crucial to maximize revenue and resurrect a brand or buttress its value.”
For example, Woronov cites that JAM Artists has created tie-ins that include pairing Michael Jackson’s music with Cirque de Soleil performances, high-end clothing with the Doors’ logo, a Broadway musical based on Janis Joplin and featuring her music and likeness, and a “Ramones Tour” of the Queens neighborhoods from which the Ramones originated.
“Marketing dead celebrities’ likenesses requires a blend of business acumen, market awareness, legal prowess and objectivity about the value of the asset,” Woronov says.
Advertising for Dollars
As many Super Bowl 50 viewers may recall, actor Willem Dafoe magically transformed into Marilyn Monroe, circa 1955, at the end of a Snickers candy bar commercial. What’s not generally known is that the Authentic Brands Group, owner of the rights to Marilyn Monroe’s brand, was compensated for this use of the blonde legend’s likeness in the TV spot. It also shows that if a dead celebrity’s right holders remain prudent, they can continue to monetize her likeness in advertising campaigns more than 50 years after interment.
And it does not necessarily require a special vehicle designed for maximum capitalistic gain to ensure payment for these placements. Other dead celebrity likenesses have proved lucrative to the natural person’s flesh-and-blood heirs, as in the case of Audrey Hepburn. In 2013, Hepburn’s children were said to have sold their mother’s image themselves to Galaxy Chocolate—Dove Chocolate in the US—for use in an advanced CGI re-creation commercial.
“It is important for celebrities to address their publicity rights when developing estate plans,” says Michael Semanie, partner, Killgore Pearlman, business advisers on advertising law matters. “Taking care to ensure that the language is broad enough to encompass new technologies such as digital likenesses—think Audrey Hepburn’s digital appearance in Galaxy’s Chocolate ad. This will ensure that this potentially valuable right benefits parties chosen by the deceased rather than leaving the matter open for debate.”
Of course, if estates and other rights holders to dead celebrity images desire assistance, professional management exists for facilitating the monetization process. One such firm, Beanstalk, a global brand extension agency, is currently the exclusive agent for the estates of Mahatma Gandhi, Yogi Berra, Humphrey Bogart and Isaac Hayes, according to the company.
“The focus of our business is procuring advertising opportunities for clients, and the careful stewardship of each client’s legacy is foremost in our minds,” says Martin Cribbs, vice president, brand management, Icon Representation service, Beanstalk. “We thoughtfully consider each opportunity and advise clients before they make final decisions.”
And dead celebrity image brokers—if you can call them that—offer a clearinghouse advantage for advertisers as well as catalyzing the process for rights holders. That’s because the vast majority of advertising campaigns are interstate by nature, according to Cribbs, and advertisers rarely seek permission for single-state use. In addition, unless blocked, content is accessible worldwide, so Beanstalk will negotiate for broader licensing rights from the outset.
“Doing so is slightly more expensive for advertisers up front,” Cribbs says, “but more cost effective than having to come back to expand the purview of rights.”