Frankfurt Kurnit Klein & Selz: The 100 Years After Death Right of Publicity Statute Does Not Apply To Personalities Who Died Before Its Enactment

An Indiana federal court has ruled that the Indiana right of publicity statute, which has the longest post-mortem period of continuing the right of publicity, does not apply to personalities who died before 1994, the year the statute was enacted

In Dillinger, LLC vs. Electronic Arts, Inc., 2011 U.S. Dist. LEXIS 63666 (S.D. Ind. June 15, 2011) [enhanced version available to lexis.com subscribers], plaintiff, which claimed to have acquired publicity rights from gangster John Dillinger's heirs, brought an action based on the broad Indiana right of publicity statute, Ind. Code § 32-36-1-8(a), against defendant videogame maker for the use of "Dillinger Level Three Tommy Gun" and "Modern Dillinger" as the names of weapons in defendant's series of The Godfather video games.  The statute prohibits the use of a personality's right of publicity for a commercial purpose during the personality's lifetime and for 100 years after the personality's death absent written consent.  Defendant moved for a judgment on the pleadings.

Predicting how the Indiana Supreme Court would answer the question of whether plaintiff can enforce Dillinger's publicity rights, the Indiana federal court followed the decision in Shaw Family Archives, Ltd. v. CMG Worldwide, Inc., 486 F.Supp.2d 309 (S.D.N.Y. 2007) [enhanced version].  There a New York federal court held that Marilyn Monroe did not have a post-mortem right of publicity under the law of any relevant state, including Indiana, because her death preceded the enactment of any of the possibly applicable right of publicity statutes.  Because plaintiff sought to enforce publicity rights of Dillinger, who died before the statute's enactment in 1994, plaintiff failed to state a claim under the statute.

The court also held that the "literary works" exception found in the statute (exempting "literary works, theatrical works, musical compositions, film, radio, or television programs") covers videogames.  Even if plaintiff possessed the post-mortem right of publicity under the statute, the court found that the Indiana Supreme Court would hold that "literary works" would encompass videogames and thus the videogames at issue could not form the basis for a right of publicity claim.  (Shortly after this decision, the United States Supreme Court issued its opinion in Brown v. Electronic Merchants Assoc. [enhanced version / unenhanced version available from lexisONE Free Case Law] wherein the Court found that video games qualify for First Amendment protection.)  Therefore, defendant won on this ground as well.

Plaintiff also brought trademark infringement claims, based on a claim that it has registered two trademarks for "John Dillinger."  Although the court rejected plaintiff's right of publicity claims, it found that plaintiff had stated a claim for trademark infringement.  However, the court noted that plaintiff would have to establish a likelihood of confusion and defeat defendant's affirmative defenses, which included a fair use defense. The trademark claims will therefore have to be litigated.

If you have any questions about this ruling or any other right of publicity issues, please contact Chris Chase at (212) 826-5568 or cchase@fkks.com, Rick Kurnit at (212) 826-5531or rkurnit@fkks.com, or any other member of the Frankfurt Kurnit Advertising Group. 

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