07/13/2011 08:28:00 AM EST
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.
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.
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.
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.
you have any questions about this ruling or any other right of
publicity issues, please contact Chris Chase at (212) 826-5568 or email@example.com, Rick Kurnit at (212) 826-5531or firstname.lastname@example.org, or any other member of the Frankfurt Kurnit Advertising Group.
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