The right of publicity prohibits the unauthorized use of another’s name or likeness. Trademark law protects marks and brands from the unauthorized use of others. Both rights are a form of intellectual property (“IP”) rights that prevent unfair competition. However, they protect very different things. The right of publicity protects a person’s attributes and all forms of identity, like their name, voice, and signature. On the other hand, trademark law protects brand names and logos used on goods and services. Some cases involving the right of publicity are filed in federal court.[i] However, “no federal statute or case law recognizes the right of publicity, although federal unfair competition law recognizes a related statutory right to protection against false endorsement, association, or affiliation.” Most states do, however, recognize the right of publicity.[ii] This lack of uniformity is confusing, resulting in unclear and contradictory decisions among courts.
Frequently, the rights of publicity overlap with trademark law since someone’s name and likeness can be developed into a trademark. The Lanham Act afforded federal rights that protect trademarks. Sections 32 and 43(a) of the Lanham Act extend protection against trademark infringement of a person’s name, likeness, or other indicia of identity if such indicia qualify as a mark.[iii] Contrary, to the right of publicity, in trademark law, you must show a risk of confusion between the mark holder and another entity.[iv] However, when claiming publicity rights, you must demonstrate that the misappropriation is for commercial benefit. In other words, the right of publicity protects the commercial value of human identity, while the trademark protects the use of a mark as a source identifier.
Not drawing a clear line between trademark and publicity rights creates confusion among mark-holders that purchased personal brands; this creates a problem because the mark holder and the identity holder are two different entities. It would be unfair to the mark-holder if they are limited in how they can market the brand because of publicity rights. In the 1980s, Joe Traeger created the first wood pellet grill. In 2006, he sold the business, all of its “intellectual property,” and all of its assets to a Florida company that took the name of Traeger Grills (“TG”).[v]Subsequently, Mr. Traeger started to feature in advertising for Dansons, a company that competes with TG.[vi] The Traeger brand was prominently shown in those advertisements, which implied that Dansons had drawn on Joe Traeger’s experience to create its newest grill.[vii] In Florida, TG filed a lawsuit against Joe Traeger and other Traeger family members, while in Arizona, TG filed a lawsuit against the Dansons.[viii] In both instances, it moved for a preliminary injunction.[ix] The Florida court sided with Mr. Traegar, and the Arizona court sided with TG.
Courts have struggled to answer whether publicity rights are unambiguously transferred when someone sells their mark, including their IP rights.[x] This question becomes even harder to answer, given the growing trend of using a person’s identity as a source identifier. For example, a designer that sells his brand named after him may transfer the right to use the registered mark to another.[xi] However, that does not mean they transferred the right to use his name, likeness, and identity. In this case, the trademark law will protect the mark holder, and the right of publicity will protect the identity holder. Therefore, companies and individuals must be careful when transferring their IP rights by paying close attention to the contractual language. Buyers of a mark are limited in how they can use the seller’s name and identity in promoting the company, but what happens when a person’s name and likeness are associated with the brand?
When a mark holder properly holds the rights to use a person’s name, likeness, or other indicia of identity in connection with a particular business, product, or service pursuant to lawfully acquired trademark rights, publicity-holders should not be able to assert right of publicity claims for those very same uses. Under such circumstances, right of publicity claims should usually be preempted in the absence of clear contractual language limiting the uses at issue, or substantial evidence of confusion as to the sponsorship and ongoing involvement of the publicity-holder/identity-holder in ways that would likely violate trademark law’s own limits.[xii]
The right of publicity is a developing area of law that impacts brand owners. Given the confusion and the conflicting opinions among jurisdictions, it would be helpful to adopt a more uniform approach. But for now, mark-holders and identity-holders should pay close attention to the contractual language when selling or buying a brand or a mark.
[i] Rights of Publicity Intellectual Property, upcounsel https://www.upcounsel.com/right-of-publicity-intellectual-property (last visited Sept. 11, 2022).
[ii] Right of Publicity, International Trademark Association https://www.inta.org/topics/right-of-publicity/ (last visited Sept. 11, 2022).
[iii] 15 U.S.C § 1114, 1125(a).
[iv] Id.
[v] Traeger Pellet Grills LLC v. Traeger, 2019 19-cv-1714-AEP WL 4305502, at *2 (M.D. Fla. 2019).
[vi] Id.
[vii] Id.
[viii] Id.
[ix] Id.
[x] See Traeger Pellet Grills, LLC v. Dansons US, LLC, 421 F. Supp. 3d 876, 881 (D. Ariz. 2019); see also Traeger Pellet Grills LLC, 2019 WL 4305502, at *2.
[xi] See 5 JA Apparel Corp. v. Abboud 68 F.3d 390 (2d Cir. 2009).
[xii] Jennider E. Rothman, Navigating the Identity Thicket: Trademark’s Lost Theory of Personality, the Right of Publicity, and Preemption, 135 Harv. L. Rev. 1271 (2022).
