Tag Archives: New York Right of Publicity Bill

DMLA Joins Opposition to NY State Right of Publicity Bill

DMLA recently joined many stakeholders in an urgent last minute push to oppose an amendment to New York State’s right of privacy statute, converting it to a right of publicity (Assembly Bill A08155 and Senate 5857-A) that would have granted a broad and ambiguous descendible right of publicity to anyone for 40 years after death, regardless of whether the person was domiciled in New York.

The media was particularly concerned as it looked like this bill had potential to pass before the end of the legislative session last week and the language would have had a severe impact on many forms of expressive speech, including the display and sale of prints and the licensing of photographs, video and other forms of visual art. DMLA prepared a memorandum in opposition and together with many law professors, media associations and individual companies (such as Getty Images and Shutterstock) signed on to full page advertisement published in the Albany newspaper urging the legislature to reject the bill as an attack on the First Amendment DMLA, and member Getty Images joined the lobbying efforts of the New York New Publishers Association and hired their lobbyist to work on this slowing down this bill. Last Tuesday Nancy Wolff, joined by Terry Byford and Eric Rachlis of Getty Images, joined other stakeholders at the State House in Albany New York to ask the legislature to slow the bill down right and get it right so it won’t hurt photographers, image library, and the media companies, many of whom are in New York, who use their services.

In the end the legislature in both houses did not bring the bill to the floor to vote before the end of session last week but its sponsors made it clear that they want to work with stakeholders to create an acceptable descendible right of publicity bill to be voted on in the near future.

Our thanks to Getty Images for hiring a lobbyist to work on this legislation in New York which permitted DMLA to be represented by a lobbyist as well. If any other members would be able to contribute to this lobbying effort and share the costs, please contact Nancy Wolff for further information.

DMLA plans to continue to be involved in any legislation that deprives a photographers or film owner’s right to display their property and copyright interest in their still and motion images.

You can see the other papers submitted here and here.

Prof. Jennifer E. Rothman

June 8, 2017

Memorandum Opposing Assembly Bill A08155 

Dear Members of the New York State Assembly and Senate:

I am writing in response to Assembly Bill A08155, a right of publicity bill, which was introduced last week and seems poised to be rushed through the legislature before the session ends for the year. This letter offers my initial comments and provides reasons why rushing this bill through would be a big mistake. I would be happy to submit a more detailed analysis of the issues and to meet with any of you and to testify before the legislature with regard to any possible right of publicity of bill in the great state of New York.

New York’s Right of Privacy, currently contained in Sections 50 and 51 of the Civil Rights Laws, was passed in 1903 and has been in place and working for more than 100 years. It is unwise to upset this longstanding legislation and case law in such a significant way without giving the legislation the hearings and consideration that such a dramatic change deserves. New York, along with California, is a particularly important state on such issues, not only because of its size, but also because of the large number of organizations, companies, and individuals likely to be affected by the adoption of such a law. A change in New York’s law is not only likely to impact its own citizens, but also to have reverberations around the country. Commensurate with such stature, the state of New York owes itself, its citizens, and those of the rest of the country due care in considering, developing, debating and adopting such a new and wide-reaching right of publicity.

I am a Professor of Law and the Joseph Scott Fellow at Loyola Law School, Loyola Marymount University in Los Angeles, California. I have also been a faculty member at Washington University School of Law in St. Louis, Missouri. I am an elected member of the American Law Institute and an affiliated fellow at the Yale Information Society Project at Yale Law School.

I am nationally recognized for my work in the intellectual property field, and am the leading voice on issues involving the right of publicity. My blog and website, Rothman’s Roadmap to the Right of Publicity, www.rightofpublicityroadmap.com, is the go-to source for content creators, lawyers, and business people who need to sort through the complex issues involved in this area of law. I have published numerous articles on the topic, and have a forthcoming book on the topic, tentatively titled, The Right of Publicity: Privacy Reclaimed for a Public World, to be published in the Spring of 2018 by Harvard University Press.

The proposed bill that I reviewed is posted on my website, although I have recently been sent a proposed amendment offered by SAG-AFTRA that would undermine the speech-protective exemptions of the proposed bill entirely and set up a conflict with both the First Amendment and federal copyright law. Page 2 of

As time is apparently of the essence, I want to briefly highlight several of my concerns with the current draft and urge you to delay moving forward with any bill on the subject until you can fully consider all of the issues and draft a more carefully considered piece of legislation.

Some of these concerns are as follows:

The Bill Eliminates Current Privacy Laws in New York 

Assembly Bill A08155 turns what used to be a “right of privacy” into a “right of publicity” that is a freely transferable property right in a person’s “name, voice, signature, or likeness.” The bill appears to eliminate the right of privacy in New York and replace it with a right of publicity. This sea-change is troubling and calls into question the more than 100 years of case law all decided under the privacy statute. The status of privacy itself in New York would be jeopardized if the bill passes.

Such a change is likely to undermine privacy protection in the state, while at the same time creating great uncertainty (and lots of litigation) about what sorts of uses of people’s identities are allowed, and what are not allowed.

The Bill Dangerously Expands Liability 

The bill greatly expands liability for uses of people’s identities. The proposal would expand liability from being limited solely to uses of a person’s “name, portrait, picture or voice” to cover uses of a person’s “likeness,” including uses of any “characteristic” that is “recognizable” of the person, including “gestures” and “mannerisms.”

This would be a big change in New York law, which has largely avoided the expansive readings of “persona,” and liability for the mere evocation of a person. The proposed legislation might allow White v. Samsung-like holdings in New York. In White, the Ninth Circuit Court of Appeals allowed liability merely for conjuring up in the minds of viewers Vanna White’s identity by showing a robot on the Wheel of Fortune set wearing a blonde wig and turning letters. This holding has been roundly criticized and has opened the door to actors preventing copyright holders from recasting roles, and making derivative works of their original shows. These are concerns that should be of particular interest to a state that is home to Broadway.

The proposed bill also expands liability beyond uses solely for purposes of “advertising” or “trade,” to include uses that are “not-for-profit,” putting a much greater swath of creative works and speech at risk.

The Bill Provides Post-Mortem Rights without Sufficient Limits or Justifications 

New York has survived for more than 100 years without a post-mortem right of publicity. Performers, actors, models, and citizens of the state have thrived in its absence. Yet, this bill would provide a right that would last for 40 years after death.

It is true that approximately 25 states currently offer post-mortem rights in some form (some only to deceased soldiers), and that California, another home of a large number of celebrities with commercially valuable personalities that might generate post-death income, provides a 70 year post-death period of protection. Page 3 of

But just because some heirs and potential heirs, and SAG-AFTRA want such a right does not mean New York should offer one up. What justifies such a right? One need not reward the dead for their lifetime of achievements for which they were already compensated. The possibility of such post-mortem rights does not incentivize the living in any significant (or positive) way. Nor can the dead be offended by uses of their identities after they are gone.

It may be appropriate to provide a limited time post-death bar on commercialization that heirs could use narrowly to prevent crass uses of their loved ones. But why should heirs receive a 40-year windfall? As the battles over recently deceased musician Prince’s estate demonstrate, the winners of the rights over the deceased’s right of publicity may have little connection to the deceased, or at least none that merits their getting a monopoly in using his identity and reaping hundreds of millions of dollars that could instead be spread more equitably in this instance across Prince’s fans and the public.

I note that Minnesota does not currently have a post-mortem right of publicity and when Prince’s estate lawyers and others tried to push through a rushed bill to the Minnesota legislature, that legislature had the good sense to put the brakes on, slow things down and give themselves more time to consider the issues involved. If they determine that something needs to be done, they will be able to draft something that is more carefully thought-through and publicly debated.

Perhaps the most troubling aspect of the proposed post-mortem provision is that it applies to anyone whose identity is used in New York state―most post-mortem rights are limited to those who died domiciled in a particular state. (California’s right is so limited.) Recently, Washington state and Hawaii have both added post-mortem provisions that apply to those who were not domiciled in the state at the time of death. Such a change in the massive market of New York state will open the floodgates to the heirs of the dead to sue in New York, including those who died in states and even countries, like England, that do not offer such rights to their deceased.

The provision also does not address the effect on previously-produced works that include deceased individuals, raising a host of unanswered concerns.

The provision also potentially leaves heirs with a massive estate tax bill that could force them to commercialize the deceased, even if that is not what the grieving surviving family members wish to do, nor what the dead person would have wanted.

•The Bill Jeopardizes the Very People it Seeks to Protect 

The new transferability of a person’s right to her “name, voice, signature and likeness,” is highly problematic. New York’s current law likely does not allow transfers of a person’s identity to a third-party. As I have written in The Inalienable Right of Publicity, 101 Georgetown Law Journal 185 (2012), allowing such transferability does not help identity-holders, but instead risks their losing control over their own names, likenesses, and voices to creditors, ex-spouses, record producers, managers and even Facebook.Page 4 of

• The Proposed Exemptions are Insufficient, Muddled and the Proposed SAG-AFTRA Amendment Unacceptably Restricts Free Speech, and Newsworthy Uses in the Public Interest that Have Long Been Protected under New York Law 

Although the enumerated exemptions soften the blow of the otherwise broad reach of the proposed new right, at least in the context of news and expressive works, the bill does not define what it means by a “transformative creation.” Perhaps the bill seeks to import California’s First-Amendment based, transformativeness test. But this is a confused test that has generated conflicting interpretations and decisions across the country and much criticism. It should not be imported into New York law, and certainly not without a definition.

The proposed SAG-AFTRA amendment would undermine all of the speech-protective exemptions by making them inapplicable if the use infringes “upon traditionally licensed commercial uses” or replaces “professional performance or modeling services rendered in the entertainment or sports industries” or replicates “the same activity by which the individual achieved their fame or derives their income.” This appears to apply to almost all uses in which a professional performer could have been hired or paid, which could include virtually all uses in expressive works.

This proposed amendment would likely run afoul of the First Amendment and copyright law. It would unduly chill speech and generate massive litigation and uncertainty about the scope of the law. It also would likely lead to the federal courts deciding the scope of New York’s right of publicity law, rather than state courts.

In sum, a lot more thought and work needs to go into any proposed right of publicity in New York. I respectfully request that you do not rush A08155 through at the end of your legislative session and give it the robust, public, open debate that it deserves. It has taken more than one hundred years to develop the right of privacy in New York; it should not be unraveled in a single week. I am happy to be of service to you in the process and to address any questions you have about these comments.

Sincerely,

Jennifer E. Rothman                                                                                                                              Professor of Law and Joseph Scott Fellow                                                                                              Loyola Law School, Loyola Marymount University

DMLA MEMORANDUM IN OPPOSITION

 

June 6, 2017

DMLA MEMORANDUM IN OPPOSITION, 

Assembly Bill No. A08155 

The Digital Media Licensing Association (“DMLA”), strongly opposes A.08155, amending New York State’s civil rights law Section 50/51, which for 110 years has protected the first amendment rights of creators and the press to use visual imagery except for the limited purposes of advertising and trade. This amendment grants a broad and ambiguous descendible right of publicity to anyone for 40 years after death, regardless of whether the person was domiciled in New York.

About DMLA 

DMLA is a trade association representing the interests of entities who license still and motion images to the media, among many other users. Its members represent the interests of thousands of photographers/videographers and the copyrights in millions of images by aggregating images on line and making them searchable and available for licensing. New York is home to many of DMLA’s members, including leading visual image providers such as Getty Images and Shutterstock, and all members, regardless of location or size, serve a crucial role in supplying publishers, media companies and advertisers located within New York with imagery that reflects our world, art and culture.

Harm to Image Licensing Industry, Media and Public 

This proposed amendment will cause real economic and social harm to the image licensing industry (a multi-billion dollar industry worldwide) and the industries it serves and result in meritless litigation.

  •  . Amendment unconstitutionally deprives photographers and film owners the right to display and exploit their property and copyright interests in their still and motion images. Bill does not unambiguously protect the ability to display and offer images for licensing using standard industry licensing terms that requires user to determine if permission is needed. 

Example: Corbis Corporation, an image library was sued two times under the California right of publicity law, for merely displaying images for potential licensing and sale in accordance with industry standard online licensing agreements.. See Jones v. Corbis Corp.https://www.courtlistener.com/opinion/2176763/jones-v-corbis-corp/ and Alberghetti v Corbis Corp https://www.courtlistener.com/opinion/2542614/alberghetti-v-corbis-corp/.

  •  Amendment does not ambiguously permit photographers and their representatives to distribute and sell prints in violation of federal copyright law. Current NY law has been interpreted by NY Courts to permit the sale of prints as expressive works with full first amendment protection without consent of the subject. 

Example Lawsuit filed in California against print on demand company for providing sports images to consumers alleging violation of CA ROP law. Maloney v. T3Media, Inc., 94 COWAN, DEBAETS, ABRAHAMS & SHEPPARD LLP PAGE 2

F.Supp.3d 1128 (2015). The 9th Circuit ultimately found CA ROP law was preempted by federal copyright act where the photograph is the product itself , http://caselaw.findlaw.com/us-9th-circuit/1855434.html). Note NY does not have an anti-SLAPP statute to prevent such frivolous suits.

In contrast New York privacy law has been interpreted to permit the sale of prints. (Foster v Svenson) http://www.courts.state.ny.us/reporter/3dseries/2015/2015_03068.htm

  •  Amendment limits the types of exempt uses to the same outdated 20th Century uses listed in the 1980s California right of publicity statute. The exempt uses exclude all the innovative apps, podcasts and interactive virtual reality platforms which use visual images to educate and inform the public and there is no broad language that protects yet unknown expressive uses.

Concern: New York, as the center of the media industry, has always erred in favor of protecting the First Amendment rights of those who own, license and publish images. To substantially expand the breadth of New York’s statutory right of publicity without clear exemptions for all expressive uses will have a crippling and chilling effect on expressive speech.

For the above stated reasons, the members of DMLA strongly oppose 08155 in its current form.

Respectfully,

Nancy E Wolff

Counsel to DMLA, Digital Media Licensing Association

DMLA Legal Update: Copyright Office News & New York State Right of Publicity Bill

2015 has already been a busy year for the U.S. Copyright Office. They have been publishing policy reports, issuing Notices of Inquiry (“NOI”), conducting various studies, and participating in congressional hearings about copyright law reform.

The Copyright Office recently released a 234-page report entitled “Orphan Works and Mass Digitization,” followed by an NOI seeking comments about a potential extended collective licensing pilot program to facilitate the digitization of collections of books, photographs, and other materials for nonprofit education and research purposes. The Office is also in the process of conducting a study about the extent to which the Copyright Act’s bundle of exclusive rights satisfies the requirement under the WIPO treaties that member countries recognize copyright holders’ “making available” and “communication to the public” rights.

In addition to these activities there is currently a discussion draft of proposed legislation pertaining to the Copyright Office circulating in the House of Representatives, and the Office has issued an NOI specifically concerning the legal challenges facing visual artists and the licensing industry.

Proposed Legislation for Copyright Office Reform

Earlier this month House representatives Judy Chu and Tom Marino released a discussion draft of the Copyright Office for the Digital Economy Act (“CODE” Act). This Act comes after more than a year of Congressional hearings on the status of U.S. copyright law. It would establish the Copyright Office as an independent agency with its director appointed by the President. It would further bring the Copyright Office into the 21st Century vis-à-vis reforms to the registration process and the deposit requirement. The purpose of these reforms would be to facilitate a streamlined registration process, as well as establish a meaningful public record of copyrights. You can read the final version of the discussion draft here, and a section-by-section overview of the bill’s key points here.

DMLA supports this bill and looks forward to the continued discussions about the proposals.

Copyright Office Visual Works Notice of Inquiry

In April the Copyright Office issued an NOI calling for comments about the challenges to monetizing and licensing, registering, and enforcing copyrights in visual works such as photographs, illustrations and graphic artworks. This NOI is a critical opportunity for DMLA and our members to voice the concerns of content creators and the licensing industry over the current state of copyright law in the U.S. DMLA is drafting a response that will focus on the legal and practical barriers faced by copyright holders and licensors and reiterate support for the proposed Copyright Small Claims Court, address issues with notice and take-downs and the difficulty in the registration system.

The response to this NOI is due July 23, 2015. DMLA is working in collaboration with other visual artists associations in preparing a response to this NOI. Individual members are encouraged to provide a response as well. For more information visit the Copyright Office webpage dedicated to this NOI.

New York Right of Publicity Bill

Early this month legislation that would amend New York’s right of publicity statute to retroactively extend rights to deceased personalities was introduced as companion bills in the State Assembly and Senate. Similar legislation was introduced several years ago by the Strasberg Estate, which owns Marilyn Monroe’s publicity rights. That bill was defeated with the help of a coalition of rights holders associations who principally voiced concern over the lack of an expressive works exemption. The language of the bill was vague and would encourage litigation and interfere with image licensing. The DMLA, MPAA, New York State Broadcasters Association, New York News Publishers Association, and several others coordinated a letter writing campaign to voice the concerns of rights holders in the film, publishing, broadcasting, and licensing industries. We are happy to report that the bills were not put to vote before the end of the legislative session on Friday, June 26th. This does not necessarily mean the fight is over, however, and it is likely that similar legislation will come up during future legislative sessions. We will keep an eye on any new efforts to introduce a retroactive right of publicity bill.