Michael Atkins - Seattle Trademark Lawyer

Mel Simburg and I presented today at the King County Bar Association IP Law Section’s monthly meeting. As discussed, it was on recent developments in rights of publicity.

Our slides are accessible here.

Great turnout, and interesting discussion. Here are some of the highlights:

Parties who oppose expanding rights of publicity argue that amending statutes to expand such rights impoverishes the public domain and hurts third parties (like photographers and publishers) who relied on the public status of such rights.
Creative parties defending against expanded rights accorded to the heirs of deceased personalities also argue that the new right constitutes a valuable windfall that wasn’t probated (and thus improperly wasn’t subject to estate tax).
There’s a tension between copyright and state statutes granting a right of publicity, which could lead to arguments about copyright preemption.
It’s an open question how far a plaintiff can stretch trademark law to get rights akin to those that are not available under a statutory right of publicity (i.e., if a plaintiff can’t assert publicity rights on behalf of a celebrity who died before the statute that granted the right of publicity was enacted, can it obtain similar rights under the Lanham Act?).
Indiana’s expansive statute — the country’s broadest — may be in the process of being narrowed in court. This summer, the Southern District of Indiana found that the heirs of persons who died before the right of publicity statute was enacted can’t avail themselves of rights under the statute. See Dillinger, LLC v. Electronic Arts, Inc., __ F.Supp.2d __, 2011 WL 2446296 (S.D. Ind. June 15, 2011). Courts also don’t automatically enforce contractual choice of law provisions agreeing to resolve disputes in Indiana according to Indiana law. See CMG Worldwide, Inc. v. Uupper Deck Co., Inc., 2008 WL 4690983 (S.D. Ind. Oct. 22, 2008).
One correction: I stated that Judge Zilly’s order declaring parts of Washington’s publicity rights statute unconstitutional wasn’t available on Westlaw, which I found curious because it’s an important decision. Well, it used to not be available, but I just found it on Westlaw, so it apparently is now.