Did Albert Einstein's right of publicity go to the grave with him?
That's what a Halloween what a costume manufacturer alleged in a declaratory relief action recently filed in New York federal court. The suit was brought to challenge Hebrew University of Jerusalem's claim that using Einstein's name, image and likeness for a
"Heroes in Disguise" costume kit , without their consent violated Einstein's postmortem right of publicity.
Forum Novelties claims that Einstein's right of publicity, which Hebrew University allegedly obtained under Einstein's will, was not descendable since Einstein did not exploit it during his lifetime. Einstein who once said, "Why is it that nobody understands me, and everybody likes me?," would likely consider Forum's argument nonsensical, as he clearly knew his identity had commercial value beyond his field of professional activity.
Like copyrights and trademarks, the right of publicity can be assigned or licensed, or in the case of Einstein, a former New Jersey resident, bequeathed by will. Eighteen states recognize a right of publicity that continues after death - some have statutes that cover both the living and the dead, and others, like New Jersey, recognize a common law right of publicity.
Some states have a controversial requirement that the deceased personality must have exploited their right of publicity during their lives. Professor J. Thomas McCarthy, in his well-regarded treatise, The Rights of Publicity and Privacy (2d Ed), states that the "overwhelming majority rule under either statute or common law is that the right of publicity . . . is not conditioned on lifetime exploitation."
First Amendment Defense
Separate and distinct from the failure to exploit during his lifetime defense, Forum also lays a foundation for a First Amendment defense. In its complaint it refers to the Heroes in Disguise kits as "intended to be worn by children acting in historically based school plays and in every day play." Free speech concerns often factor into right of publicity cases. In this instance, Forum is hoping that the court will see its Einstein disguise kit not just as a commercial product, but as an expressive or communicative work, like a biographic book or film conveying some historical fact. Whether a mixed use disguise kit used in connection with Halloween "trick or treating" and school plays, takes the use out of the realm of commercial speech, remains to be seen.
While filed in the Southern District of New York, the case ultimately turns on New Jersey law. New Jersey was the place where Einstein last lived, as such, that state's law governs the postmortem right of publicity issue. Had Einstein last lived in New York, he would have had no descendible right of publicity, as New York does not recognize postmortem publicity rights.
New Jersey has a well developed body of right of publicity law. In fact, New Jersey was one of the first states to recognize a right of publicity. In Edison v. Edison Polyform Mfg., 67 A. 392 (N.J. Ch. 1907), the court granted Edison an injunction, restraining the use of his name and likeness in the corporate name and in advertisements for a company that sold pain killers. In Edison, the court reasoned that "[i]f a man's name be his own property ... it is difficult to understand why the peculiar cast of one's features is not also one's property, and why its pecuniary value, if it has one, does not belong to its owner, rather than to the person seeking to make an unauthorized use of it." Another famous New Jersey lawsuit, which involved a photograph of an Elvis look-alike entertainer, held that New Jersey recognized a postmortem right of publicity. Presley's Estate v. Russen, 513 F. Supp. 1339 (D. N.J. 1981) (Presley imitator's live concert "experience" neither social commentary nor parody). In dicta, Russen touched on the lifetime exploitation issue, but according to McCarthy, did not resolve it.
Trademark Claim
In addition to the right of publicity, Albert Einstein, like Marilyn Monroe, Babe Ruth and Al Capone, is a federally registered trademark. Right of publicity and trademark claims often overlap. Hebrew University owns several Albert Einstein federal trademarks (Reg No. 3591305) for among other things, clocks, bumper stickers, socks, imitation luggage, cookie jars, flower pots, toy butterfly nets and sweatshirts -- but curiously, not sweaters, for which he is closely associated.
In order to prevail on a federal trademark claim, Hebrew University must show that Forum's use of the words "Albert Einstein" is likely to create confusion as to the origin or source of the costumes. In its complaint, Forum attempts to deflect federal trademark or Lanham Act claims for public confusion, by emphasizing the ample use of disclaimers, such as its house mark and its "Heroes in History" trademark on the packaging.
Where the commercialization of celebrity rights seems to be forever expanding, the Forum case is a rare, somewhat risky, preemptive attempt to expand the bounds of permissible use of a celebrity's name and likeness. Exploitative or informational? A First Amendment protected costume or an advertisement in disguise? Whatever the court decides, Einstein is clearly a bankable cultural icon worth fighting over.
Forum Novelties, Inc. v. Greenlight, LLC and Hebrew Univ. of Jerusalem (10 Civ. 9414, SDNY), filed 12/17/10
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