If you can make it in New York, you can make it anywhere. But if you want to pass along your right of publicity to your heirs, go ahead and make it anywhere else.
Such was the state of New York law until November 30, 2020, when, in a highly significant development for New York-based recording artists, actors, and other celebrities, Gov. Andrew Cuomo signed into law Senate Bill S5959D, providing a post-mortem right of publicity (ROP) for 40 years after death. This change is welcome news to an industry where the performer is the brand and many of those performers call the Big Apple home. From hologram awards show performances to million-dollar Super Bowl and Grammy spots to consumer product lines, commercial uses of the personas of beloved fallen stars abound, and with every technological leap the protection surrounding their post-mortem rights becomes more important.
New York’s Right of Privacy statute, NY CVR §§ 50 & 51, has been on the books for decades and has been consistently interpreted by New York courts as the single source of law for all invasion of privacy or publicity rights. The law protects against the unauthorized use of an individual’s name, image or likeness and provides strong remedies against such unlawful use.
The catch? Prior to the new law, if a person died while living in the state of New York, all rights of privacy and publicity ended. In other words, after a celebrity who lived in New York died, her persona entered the public domain, allowing anyone to use it for commercial gain, and her estate would have had no claim for a violation of that celebrity’s right of publicity. This famously occurred with the persona of Marilyn Monroe in a long-spanning legal battle. Ms. Monroe’s estate ultimately prevailed in protecting her commercial image through a claim of “false endorsement” under the federal trademark law but the powerful remedies that typically come with a state law right of publicity violation remained frustratingly out of grasp.
The new law (codified as Section 50(f) of the existing New York Right of Privacy statute), squarely addresses this issue by establishing a post-mortem ROP for celebrities living in New York. It allows an individual to sue a person who uses a deceased personality’s name, digital replica, voice, signature, photograph or likeness for commercial gain without consent, subject to certain exceptions. The new section defines the right granted as a “freely descendible or transferable” property right, which gives living heirs, the estates, or other transferees of a “deceased performer” (i.e., those who made a living “acting, singing, dancing, or playing a musical instrument”) or a “deceased personality” (i.e., those individuals “whose name, voice, signature, photograph, or likeness has commercial value” either before or after his or her death) the right to bring action against any person who uses that celebrity’s persona without consent.
The prevalent use of digital image technologies combined with the exploitation of celebrity brands reflects why it is vital for New York to have at long last recognized post-mortem publicity rights. Advances in relevant technologies have caused deceased celebrities to remain present in the public’s mind long after death, technologies that will continue to be refined and perfected. It is only a matter of time, for example, before holographic concert tours become commonplace and future generations of concertgoers will pack Madison Square Garden to watch “live” performances of today’s stars. With the enactment of the post-mortem right of publicity law, these types of commercial uses of former New Yorkers who die after May 29, 2021 (the law is not retroactive) can now exclusively benefit the authorized heirs and rights holders.
Notably, there are First Amendment-flavored exceptions included in the statute, such as the use of a persona for education, satire, or parody. The statute also prohibits the use of a “deceased performer’s digital replica in a scripted audiovisual work as a fictional character or for the live performance of a musical work” without consent, but only if the use “is likely to deceive the public into thinking it was authorized by” the performer’s living heirs, estate, or other transferee.
Importantly, the rights holder must also first register “deceased personality” rights with the secretary of state before it can bring a cause of action. It is advisable for celebrity New Yorkers to revisit their estate planning in light of this favorable legal development; any financial remuneration benefits may also result in tax consequences for their heirs.
The Big Apple’s new law is certain to have significant consequences both inside and outside the courtroom. In addition to the commercial benefits discussed above, New York celebrities who have chosen to re-establish residency in California (or other favorable ROP states) now have significant post-mortem protection to pass on to their heirs right at home, so long as the necessary steps are taken. And those heirs, at some inevitable point in the future, can enforce their rights armed with the powerful tool of a statutory ROP violation that brings with it profit disgorgement and punitive monetary damages.
Tamar Duvdevani is New York Chair, Intellectual Property and Technology Group, DLA Piper; Gina Durham is Chair, US Trademark, Copyright and Media Practice, DLA Piper; Kerry O’Neill is Associate, Fashion, Retail and Design Group, DLA Piper; Eden Marley is a Law Clerk, Intellectual Property and Media Group, DLA Piper