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INTA 2022: How to manage publicity rights challenges

From L to R: Doug Bania at Nevium, Jeff Cadwell at Dorsey and Lindsay Allen at Perkins Coie

Counsel from Perkins Coie, Nevium, Dorsey & Whitney and Troutman Pepper delved into NFTs and jurisdictional variances

The right of publicity is becoming a bigger deal in the intellectual property world, according to speakers at this year’s INTA Annual Meeting in Washington DC.

Counsel from Perkins Coie, Nevium, Dorsey & Whitney and Troutman Pepper pointed out to delegates yesterday, May 1, that the National Collegiate Athletic Association (NCAA) adopted an interim policy in June 2021 allowing athletes to benefit from their names, images and likenesses.

On top of that, they said in a session called ‘Rights of Publicity: The Life and Times of a Professional Football (Soccer) Player’, publicity rights were likely to clash with non-fungible tokens (NFTs) at an increased rate as the new form of intangible asset became more popular.

Counsel also had to contend with diverging publicity laws across the world, particularly between the US states and EU member states, speakers noted.

“There’s still this patchwork of state law in the US,” said Lindsay Allen, counsel at Perkins Coie in Washington DC.

“The NCAA, despite allowing college athletes to benefit from their image rights, has taken a hands-off approach and left it up to schools, conferences and the various states governing rules in those jurisdictions.”

NFT and publicity

Howard Shire, partner at Troutman Pepper in New York, told delegates that there were a few key issues they should watch out for when it came to NFTs and publicity rights.

Shire asked whether an NFT (which he described as a digital and non-physical representation of artwork, photographs and video clips) of an individual could be considered analogous to an item of merchandise.

If it were, the sale of such an NFT would probably violate the individual’s right of publicity, notwithstanding that the person minting the NFT owned the underlying copyright.

He pointed out that a copyright owner couldn’t sell the image of the person as an item of merchandise – he or she couldn’t put the image on a t-shirt or sell large posters of it, for example.

But the law, Shire noted, was less clear on whether the copyright owner could mint and sell an NFT of the celebrity’s representation.

“There hasn’t been a case yet confronting this question,” he said. “Do you need permission of the person to sell the NFT? Is minting an NFT akin to producing merchandise such as a t-shirt or just a photographer making a copy of a copyrighted work?”

Rights vary

Speakers pointed out that even when it came to already-established publicity rights rules, the situation was complicated.

Allen at Perkins Coie noted that some EU member states treated publicity rights differently to the US. Germany, Spain and France, for example, all recognise image rights for citizens and foreigners.

Germany and France also allow post-mortem rights of publicity. The former nation recognises them for 70 years after death.

Even between US states, publicity rights varied, the panel noted. Jeff Cadwell, partner at Dorsey & Whitney in Minneapolis, pointed out, however, that certain rules were broadly applicable across the US.

If a third party used the name, image or likeness of a celebrity to gain commercial advantage without the consent of the celebrity, and that use resulted in injury, that action would broadly be deemed as an infringement of publicity rights in the US, he said.

There were also broadly recognised defences, he added, including that the image was newsworthy or that it was used to convey satire or parody.

“There’s only one case from the Supreme Court that discusses the rights of publicity, which is Zacchini v Scripps-Howard Broadcasting,” he said. “In that case, the court ruled that newsworthiness didn’t necessarily trump the right to publicity.”

The INTA Annual Meeting is being held this week at the Walter E Washington Convention Center in Washington DC.

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