BILL ANALYSIS
SENATE JUDICIARY COMMITTEE
Senator Ellen M. Corbett, Chair
2007-2008 Regular Session
SB 771 S
Senator Kuehl B
As Amended August 30, 2007
Hearing Date: September 6, 2007 7
Civil Code 7
GMO 1
PURSUANT TO SENATE RULE 29.10
SUBJECT
Deceased Personalities: Transfer of Publicity Rights
By Testamentary Instrument
DESCRIPTION
The bill would clarify that existing law protecting a
deceased personality's publicity rights applies to all
those whose date of death was within 70 years preceding
January 1, 1985, the effective date of the law that created
post-mortem publicity rights for deceased personalities.
The bill would further clarify that in the absence of an
express provision in a will or other testamentary
instrument that effectively transfers the publicity rights
of a deceased personality, disposition of the publicity
rights would be in accordance with the disposition of the
residue of the deceased personality's assets. Finally, the
bill would clarify that the publicity rights transferred
according to this statute are freely transferable or
descendible by contract, trust, or any other testamentary
instrument by any subsequent owner of the deceased
personality's publicity rights.
The bill states the intent of the Legislature to abrogate
two federal court decisions, The Milton H. Greene Archives,
Inc. v. CMG Worldwide, Inc. (U.S. District Court, Central
District of California) and Shaw Family Archives Ltd. v.
CMG Worldwide, Inc. (United States District Court, Southern
(more)
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District of New York), both of which found that the
California statute granting post-mortem publicity rights to
deceased personalities does not apply to personalities who
died prior to January 1, 1985.
BACKGROUND
In 1984, California enacted what is now Civil Code
3344.1, to address the ruling in Lugosi v. Universal
Pictures (1979) 25 Cal.3d 813. The decision was
interpreted by some as holding that a celebrity's right of
publicity expired at death and thus the publicity rights
that had not been used or exploited by the time of death of
the celebrity defaulted to the public domain. When
enacted, Civil Code 3344.1 recognized publicity rights as
property rights that may be transferred, specified
prohibited uses, and required the registration of those
rights with the Secretary of State. An action to enforce
rights protected by
3344.1 was required to be brought within 50 years of the
death of the celebrity.
SB 209 (Burton, Ch. 988, Stats. 1999) was enacted to
abrogate the Ninth Circuit's decision in Astaire v. Best
Film & Video (9th Cir. 1997) 116 F. 3d 1297, which held
that the unauthorized use of Fred Astaire's image in a "how
to" dance video was not prohibited by the statute. The
amendments to 3344.1 deleted certain exceptions in the
statute that had been relied on by the court in the Astaire
case and inserted language to distinguish between
permissible use of the celebrity's likeness in works of art
and entertainment (which the statute permitted) and use in
connection with products, goods, and merchandise (which is
prohibited without consent), and extended the period of
protection provided by the statute from 50 years to 70
years after the death of the celebrity.
In May 2007, two federal courts (one in New York and the
other in the Central District of California) interpreted
California's post-mortem publicity rights statute as
prohibiting publicity rights from passing under a deceased
celebrity's will if that celebrity died before January 1,
1985 (the effective date of the statute enacting 3344.1).
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Thus, the courts ruled, only statutorily listed heirs
(using intestate succession rules) could enforce publicity
rights: surviving spouse, children, grandchildren, and
parents.
SB 771 intends to clarify the Legislature's intent to make
the protections under
3344.1 of the Civil Code applicable to deceased
personalities who died between January 1, 1915 and January
1, 1985, the 70 year period of protection under the
statute.
CHANGES TO EXISTING LAW
Existing law imposes liability on any person who uses
without consent a deceased personality's name, voice,
signature, photograph, or likeness on or in products,
merchandise or goods, or for purposes of advertising or
selling, or soliciting purchases of, products, merchandise,
goods or services for 70 years after the death of the
personality. Consent may be provided by those persons to
whom the right has been transferred by contract, trust, or
other testamentary instrument, or, if no such transfer has
been made, by the surviving spouse or other specifically
listed heirs. Exceptions from the requirement of consent
are uses such as in material that is of political or
newsworthy value, or an advertisement or commercial
announcement of the allowed uses. (Civil Code
3344.1. All references are to this Code unless otherwise
indicated.)
This bill would provide that 3344.1 applies to a deceased
personality who died prior to January 1, 1985, the
effective date of the statute that created the post-mortem
publicity rights of a deceased personality.
This bill would provide that the post-mortem publicity
rights of the deceased personality vest in those persons
entitled to those rights under a testamentary instrument of
the deceased personality that was effective on the date of
his or her death.
This bill would provide that in the absence of an express
transfer in a testamentary instrument, the deceased
personality's rights to publicity would transfer in
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accordance with the testamentary provision disposing of the
residue of the personality's assets.
This bill would provide that publicity rights established
by this statute are freely transferable or descendible by
contract, trust, or any other testamentary instrument by
any subsequent owner of the deceased personality's rights.
This bill would not affect publicity rights that have been
exercised by statutory heirs named in subdivision (d) prior
to May 1, 2007 provided a challenge made in court by a
beneficiary under subdivision (b) was unsuccessful. In
this case, the bill would deem those rights vested in the
statutory heirs who had exercised those rights.
COMMENT
1. Stated need for the bill
The author states this bill is necessary to clarify the
Legislature's intent, when it enacted Civil Code 3344.1
(then 990 of the Civil Code) in 1984 to create
post-mortem publicity rights for celebrities, to extend
those rights back to 50 years from the date the statute
became effective and to enable the transfer of such
publicity rights to the deceased personality's designated
beneficiaries. This legislative intent, according to the
sponsor of the bill, was further evidenced by the
Legislature's amendments to the statute in 1999,
extending the protection of 3344.1 even further back,
to 70 years from the date the statute first became
effective.
Referring to the case of CMG Worldwide, Inc. v. Milton H.
Greene Archives, LLC , supra , which involved a dispute
over ownership of Marilyn Monroe's right of publicity,
the author believes the court erred in ruling that
Marilyn Monroe did not have those statutory rights when
she died (she died in 1962 and left a designated
beneficiary to receive the residue of her estate) and
that therefore only her heirs as identified in the
statute could exercise those rights. Since Marilyn
Monroe left no heirs that qualified as a statutory heir
under
3344.1, the court held that her rights died with her
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and nobody else has the right to control the use of her
name, image, or likeness.
"There is nothing in the statute?that indicates the
Legislature intended to treat people differently
depending on whether they died before or after 1985.
Moreover, California law has always strongly held that
the courts should do whatever possible to avoid
"intestacy" - that is a situation where the law defines
who a person's assets should pass to at death because the
decedent failed to do so by will or trust. Given that
celebrities like Marilyn Monroe died with very clear
testamentary documents about who should benefit from
their estates, it is even more important that the statute
be clarified so that the law does not alter what our
citizens clearly decided for themselves. Their intent
about who should inherit their identities should be
respected, and
[SB 771] would do just that," the author writes.
The court in CMG Worldwide Inc. did invite the
Legislature to cure this defect in the statute by
expressly making the statute applicable to deceased
personalities who died prior to January 1, 1985, and vest
the deceased personality's publicity rights in the
residuary beneficiaries or their successors-in-interest,
if the deceased personality left a will or other
testamentary instrument.
2. Clarifying 3344.1
SB 771 would indeed clarify 3344.1 in several ways:
a) It would provide that the 3344.1 rights of
publicity are property rights that are deemed to have
existed at the time of death of any deceased
personality who died prior to or after January 1,
1985.
b) It would provide that these rights are therefore
transferable or descendible by contract, trust, or
other testamentary instrument.
c) If the rights were not expressly transferred under
a provision of the deceased personality's will or
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other testamentary instrument, the rights are to be
disposed under the residue provision of the
testamentary instrument.
d) The rights established by this statute are freely
transferable and descendible by contract, trust, or
other testamentary instrument by any subsequent owner
of these rights.
By clearly stating the above, SB 771 effectively
abrogates the decisions of the two federal courts in the
cases involving Marilyn Monroe's publicity rights. First,
because Marilyn Monroe (MM) died in 1962, 23 years prior
to January 1, 1985, under SB 771 she is deemed to have
had those rights and could have transferred those rights
by contract or will. Her will devised some money to
several persons, and left the residue of her estate
(which included "all the rest, residue and remainder of
[her] estate, both real and personal, or whatsoever
nature and wheresoever situate, of which I shall die
seized or possessed or to which I shall be in any way
entitled?") to Lee Strasberg, her friend and acting
coach. Thus, secondly, under SB 771, her post-mortem
publicity rights are transferable through her will.
Third, because Marilyn Monroe's will did not expressly
refer to any transfer of post-mortem publicity rights to
a specific person, under SB 771 the rights are to be
disposed as part of her residuary estate, to which Lee
Strasberg is the beneficiary of 75%. And fourth, when
Lee Strasberg, as subsequent owner of those Marilyn
Monroe publicity rights, transferred them by will to his
wife, Anna Strasberg, the transfer was permissible under
3344.1, according to SB 771. Anna Strasberg
subsequently transferred her 75% interest (and so did the
owner of the 25% interest), to MM LLC, which then
licensed CMG to use the images and likenesses of Marilyn
Monroe.
In support of this bill, the Screen Actors Guild writes:
"Existing California law maintains that there is a cause
for recourse and damages with the unauthorized use of a
deceased personality's likeness. In recent years, it has
become increasingly important to protect these rights in
the face of increasing avenues of commercial
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exploitation, while still taking care not to hamper the
creative process. The passage of SB 771 will help to
protect these public figures while still allowing for
creative expression."
The proponents point out that other states have similar
protections for post-mortem publicity rights, and that
the statute proposed in New York, as currently drafted,
would apply regardless of whether the celebrity died
before or after the enactment date of the legislation.
To ensure that the federal court decisions are abrogated
by passage of this bill, SB 771 contains legislative
intent language to that effect. Additionally, SB 771
would preserve any 3344.1 rights conveyed or assigned
by a deceased personality in his or her lifetime in any
contract, regardless of whether the contract was entered
into before, or after, January 1, 1985.
3. Does SB 771 create a retroactive effect not intended
by the Legislature when it enacted 3344.1?
Testimony on SB 613 (Campbell, Chapter 1704, Statutes of
1984), the bill that first enacted protections for
deceased personalities' publicity rights, from the son of
W.C. Fields, Priscilla Presley, and Burt Lancaster
apparently convinced the committee and the Legislature
that increasing protections for those rights, and
ensuring their ability to pass those rights by
testamentary instrument, were called for.
SB 771 contains express language that "[t]he rights
recognized [under 3344.1] are expressly made
retroactive, including to those deceased personalities
who died before January 1, 1985." (Proposed 3344.1(p).)
In fact, SB 771 would not create a new "retroactive"
effect of 3344.1 to sweep publicity rights of those
personalities who died between January 1, 1915 to January
1, 1985 under its protection. The legislative history of
3344.1 shows that the original 50-year term of
protection (under then 990) was drafted to mirror the
term of protection provided in federal copyright law and
that then 990 was enacted as the "likeness
appropriation law" corollary to copyright law. In 1999,
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when SB 209 was enacted, the federal copyright law had
been extended by 20 years, hence the period of protection
under 990/ 3344.1 was also extended 20 years for a
total of 70 years.
The Senate Judiciary Committee analysis of SB 209 quoted
the opponents of extending the right of publicity from 50
years to 70 years: "They (opponents) write, 'Extension
of the right of publicity from 50 to 70 years further
perpetuates the chilling effect of SB 209 by reaching
back into history and removing from public view or
subjecting to private control another 20 years worth of
historical figures.'" The same analysis quoted the
proponents to say that extension of the term of
protection to 70 years after death of the celebrity is a
necessary recognition of the "increased longevity of the
personalities and their heirs; the trend toward rearing
children late in life; unprecedented growth in technology
over the last 20 years including the advent of digital
media, the internet and other information
infrastructures, which have greatly enhanced the
marketability of creative works, and the growing
international movement towards the adoption of a longer
term for intellectual property."
Thus, the Legislature, by first providing for a 50-year
term of protection in 1984 and then extending that
protection to 70 years in 1999, intended to "reach back
into history" and protect the publicity rights of
deceased personalities who died as far back as January 1,
1935 when the statute was first enacted, then to January
1, 1915 when SB 209 was enacted.
Under this analysis, there would be no protection for
publicity rights of deceased personalities who died prior
to January 1, 1915, since the right did not exist for
them before that date (unless a new statute were to be
passed to increase the term of protection to more than 70
years from 1985).
4. Bill would have no effect where rights have been
exercised by statutory heir and vested prior to May 1,
2007
This bill would make the provisions of proposed
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subdivision (b) of 3344.1 (specifying the manner by
which these property rights are passed by contract or
testamentary instrument) inapplicable where a statutory
heir under subdivision (d) has taken action prior to May
1, 2007 to exercise the property rights protected by
3344.1, and the action was challenged unsuccessfully in a
court action by a person who would be a beneficiary under
subdivision (b). By this provision, the bill protects
those cases that have been settled prior to the decisions
in the two federal cases ( The Milton H. Green Archives,
Inc. v. CMG Worldwide, Inc. , supra , and Shaw Family
Archives Ltd. v. CMG Worldwide Inc. , supra ). The
decisions were dated immediately after May 1, 2007.
Thus, where a court, prior to May 1, 2007, has decided
that the deceased personality's transferable or
descendible property rights have vested in a statutory
heir under subdivision (d), this bill would have no
effect on that court decision. Where the court action
may still be pending, however, the rights would not have
vested in a subdivision (d) statutory heir, and this bill
would apply.
5. Support arguments
Marilyn Monroe, LLC, the current holder of the publicity
rights of Marilyn Monroe, states that the bill is needed
to clarify that those publicity rights are transferable
regardless of whether a personality died before or after
January 1, 1985. "The Marilyn Monroe, LLC has carefully
guarded the publicity rights of Marilyn Monroe's image in
order to maintain her legacy as she intended?However, due
to recent court decisions, Ms. Monroe's publicity rights
could be released into the public domain only to result
in offensive and exploitive uses of her image? ."
John Wayne's son, president of Wayne Enterprises, writes
that the use of John Wayne's name and likeness enables
them to support the John Wayne Cancer Foundation and the
John Wayne Cancer Institute. In addition, he writes,
"[l]egislative protections regarding rights of publicity
assist us in assuring that the use of John Wayne's
personality is meaningful and appropriate."
Among other deceased personalities whose publicity rights
provide support to worthwhile causes and charitable
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institutions are Albert Einstein, Joan Crawford, Mae
West, Edith Head, Janis Joplin, Alfred Hitchcock, Glenn
Miller, Ozzie Nelson, Groucho Marx, and Bela Lugosi.
6. Opposition from photographers
The committee received several identical letters from
photographers who make their living taking photographs of
celebrities, politicians, and other personalities. Some
photographers are from out of state (New York, Minnesota,
New Orleans, New Mexico, Florida) and Canada and a couple
are from California. They object to the retroactive
effect of SB 771, claiming that this would cause
substantial damage to "any business that is based on
photographs or reproductions of famous people" and that
SB 771 is of "questionable constitutionality" and "is
inherently unreasonable." They further claim that if
enacted, SB 771 would "open the door to hundreds of
lawsuits against every photographer, gallery, or
publisher who has ever worked within today's law ?, would
be detrimental to the state's already beleaguered
treasury?[and] would cost millions to the taxpayers."
The committee staff's discussions with experts in
intellectual property and copyright law on the
"retroactive" effect of SB 771 are already reflected in
Comment 3.
Another opponent, also representing professional
photographers, suggested other changes to the statute
that this bill does not address.
Support: AFSCME; Batjac Productions, Inc.; Bela G. Lugosi;
California Labor Federation; Senator John Campbell
(retired, author of California Publicity Rights
Statute); Cecil B. DeMille Foundation; Corbis
Corpordation; Elvis Presley Enterprises, Inc.;
Experience Hendrix (Estate of Jimi Hendrix); The
John Steinbeck Family Foundation; Chad McQueen;
Marilyn Monroe, LLC; Motion Picture & Television
Fund; Taylor & Faust (Trustee of the Second
Residuary Trust of Alfred Hitchcock); Wayne
Enterprises, L.P. (John Wayne Family Partnership);
and 223 letters from members of the Screen Actors
Guild
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Opposition: OneWest Publishing; The Archives, LLC;
Pacific Licensing; several lawyers and law firms;
38 letters from members of the American Society
of Media Photographers; and 3 individuals
HISTORY
Source: Screen Actors Guild (sponsor)
Related Pending Legislation: None Known
Prior Legislation: SB 209 (Burton, Ch. 988, Stats. 1999)
(See Background)
SB 613 (Campbell, Ch. 1704, Stats. 1984)
(See Comment 3)
Prior Vote: Asm. Jud. (Ayes 10, Noes 0)
Asm. Floor (Ayes 77, Noes 0)
(Previous Senate votes not relevant. This was a
gut-and-amend.)
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