Dead Celebrities and Digital Doppelgangers: New York Expands Its Right of Publicity Statute and Tackles Sexually Explicit Deepfakes | Davis Wright Tremaine LLP

In the Empire State, the right of publicity remains alive and well—including (soon) for celebrities who are, well, no longer alive.

New York has expanded its nearly 120-year old statutory regime to provide a post-mortem right of publicity for celebrities who were domiciled in New York when they died. Until now, New York Civil Rights Law Sections 50 and 51 had only extended a right of publicity to living New Yorkers whose name, portrait, or picture is used for commercial purposes without consent.

Here, we highlight the most important provisions of these new additions to the New York Civil Rights Law, including various exceptions and carve-outs, potential procedural obstacles, and a handful of gray areas ripe for debate and, in all likelihood, future litigation.

Background and Scope

With Governor Cuomo’s signature on November 30, 2020, New York has joined at least 20 other states that allow publicity rights to survive after death. The new provision, Section 50-f, takes effect on May 29, 2021, and, critically, only affords this right to a celebrity who dies on or after that date. Moreover, this post-mortem right of publicity expires 40 years after the person’s death.

Passed unanimously in the State Senate and nearly unanimously in the State Assembly, this development follows years of revisions by lawmakers and lobbying by interested parties. SAG-AFTRA has led the efforts to expand Sections 50 and 51 to include rights for deceased celebrities, while various First Amendment advocates and representatives from media companies objected to a significant expansion and vocally opposed prior versions of Section 50-f.

With so many cooks in the kitchen and groups from both coasts closely following along, New York state legislators have made a genuine effort to grapple with several complicated issues that carry significant implications for the entertainment, business, and technology industries. Notably, while Sections 50 and 51 left it to courts to carve out various limitations to the right of publicity by balancing countervailing First Amendment concerns, Section 50-f has now codified many of those limitations in connection with post-mortem publicity rights, including exceptions for educational and newsworthy uses, as well as for comment, criticism, parody, and satire.

Section 50-f is also decidedly narrower than earlier versions considered by the legislature, and the new statute does not alter existing right of publicity law in New York for living people. Section 50-f provides for compensatory damages, statutory damages, lost profits, and punitive damages.

Section 50-f provides publicity rights to two categories of deceased celebrities:

  • a. “Deceased personalities,” on behalf of whom damages may be sought for the unauthorized use of their likeness for commercial purposes; and
  • b. “Deceased performers,” more narrowly defined as actors, singers, dancers, and musicians, on behalf of whom damages may be sought for the nonconsensual use of a digital replica so realistic that the public would believe it was a performance by the deceased (i.e., resurrecting the performer to appear as a hologram or the like), but only when the public would be deceived into thinking that the digital replica was authorized by the deceased performer.

On the same day Governor Cuomo enacted publicity rights for dead celebrities, he also signed into law Section 52-c of the Civil Rights Law, which addresses deepfake pornography videos by creating a private right of action for the “unlawful dissemination or publication of a sexually explicit depiction of an individual.” This prohibition narrowly applies only to digitally-manipulated videos depicting sexual activity in which the individual did not in fact participate.

Deceased Personalities: Right to Sue Over Unauthorized Commercial Use of Likeness

Section 50-f(2)(a) provides a cause of action to a “deceased personality” for the use of the personality’s name, voice, signature, photograph, or likeness “in any manner” for commercial purposes without consent. A “deceased personality” is defined in Section 50-f(1)(b) as any deceased person “whose name, voice, signature, photograph, or likeness has commercial value at the time of his or her death, or because of his or her death.” These rights may be fully transferred by contract, license, gift, a will, or any other instrument.

The bill codifies a number of important exceptions to the right of publicity for deceased personalities. Under Section 50-f(2)(d)(i) and (iii), it is not a violation of publicity rights if a deceased personality’s name, voice, signature, photograph, or likeness is used in a play, book, magazine, newspaper or other literary work, art work or other visual work. Likewise, any uses that are part of a work of political or public interest, or a work that has educational or newsworthy value, including comment, criticism, parody or satire, are also protected.

Additionally, any uses that are part of an audio or audiovisual work, radio, or television program are exempted so long as the work is fictional or nonfictional entertainment. The statute further carves out any use in connection with any news, public affairs, or sports program. Also protected by the statute are uses in advertisements and commercials for each of these protected editorial uses—known as the “incidental use” exception.

Over the course of several decades, courts have developed and applied similar exceptions to the right of publicity for living persons afforded by Sections 50 and 51; now, with respect to deceased personalities, these judicially crafted limitations have been codified in Section 50-f(2)(d)(i) and (iii).

Deceased Performers: Right to Sue Over Unauthorized Digital Replicas

Section 50-f(2)(b) provides a cause of action where a “digital replica” of a “deceased performer” is used in a “scripted audiovisual work as a fictional character” or for the “live performance of a musical work.”

  • A “deceased performer” is defined in Section 50-f(1)(a) as any deceased person “who, for gain or livelihood, was regularly engaged in acting, singing, dancing, or playing a musical instrument.”
  • A “digital replica” is defined in Section 50-f(1)(c) as an “original, computer-generated, electronic performance” in which the deceased performer did not actually participate, but is “so realistic that a reasonable observer would believe it is a performance by the individual being portrayed and no other individual.”

This cause of action would likely arise from the unauthorized use of a hologram of a deceased performer to generate a new performance at a concert or play, as part of a movie or television show, or in an online venue.

This novel addition to the New York Civil Rights Law comes with a number of very strong exceptions—including, most notably, that placing a “conspicuous disclaimer” in the credits of a work that uses an unauthorized digital replica avoids liability under Section 50-f(2)(b). The use of a digital replica is actionable only if no conspicuous disclaimer is given, and if a reasonable observer would believe both that the performance is that of the deceased performer and no other person and that the digital replica was authorized.

The statute also does not apply to remastering or re-coloring a performance by a deceased performer. Additionally, like the cause of action for “deceased personalities,” the right to sue over an unauthorized digital replica of a “deceased performer” does not apply where the replica is used as part of a work that constitutes parody, satire, commentary, or criticism, a work of political or newsworthy value, or a work that falls into the category of a docudrama or historical or biographical work, or any news, public affairs, or sports program. (Section 52-f(2)(d)(ii)&(iii).)

Notably, the live performance of a musical work is specifically carved out of this exception; in practice, that may leave a play or musical subject to liability if it features an unauthorized holographic performance by a deceased performer—even if the performance itself or the production generally would be considered parody, satire, or to have political or newsworthy value. That question, along with several others relating to both causes of action, are left unanswered in the statutory text.

Cause of Action for Pornographic Deepfake Videos

Finally, Section 52-c takes direct aim at pornographic deepfake videos where, through increasingly accessible methods of digitization, a nefarious actor can realistically impose an individual’s face on pornographic content such that the person appears to be engaging in sexual conduct that never happened. Under Section 52-c, a depicted individual is entitled to an array of damages for the dissemination of a pornographic deepfake video, including injunctive relief, compensatory and punitive damages, and attorney’s fees.

Unlike the cause of action relating to digital replicas, using a disclaimer to avoid liability for a pornographic deepfake won’t work. Instead, an individual must give permission to be depicted in a deepfake video, with consent “written in plain language.” The statute exempts law enforcement officers who disclose these videos as part of their official duties, including at trial or another legal proceeding.

Importantly, the law also permits the disclosure of a pornographic deepfake video so long as it is “a matter of legitimate public concern, a work of political or newsworthy value” or if it is a “commentary, criticism or disclosure that is otherwise protected by” the New York Constitution or the First Amendment. The fact that the depicted person is a public figure does not, in and of itself, permit disclosure of the video on the basis of newsworthiness.

Below, we identify several unanswered questions that may result in confusion, if not litigation, after Section 50-f takes effect.

Application of Commercial Sponsorship/Advertisement Exception to Branded and Other Internet Content

Section 50-f(2)(d)(iv) provides that “it shall not be a violation of this section if the use is of a name, voice, signature, photograph, or likeness in a commercial medium solely because the material containing the use is commercially sponsored or contains paid advertising or product placement, or includes within it a use in connection with a product, article of merchandise, good, or service.”

Although the phrase “commercial medium” is left undefined, it appears to codify existing precedent under Sections 50 and 51 holding that merely because a newspaper, book, or other editorial product is sold for profit (i.e., is a “commercial medium”), that fact alone does not convert a protected editorial use into a prohibited commercial use. This exception applies to the cause of action afforded to deceased personalities, and it tracks closely to language in a parallel exception to California’s right of publicity statute. Based on the language of this exception, there is some ambiguity as to whether Section 50-f(2)(d)(iv) also applies to the cause of action for use of deceased performers in digital replicas.

What may well result in litigation is the statutorily prescribed instruction for how courts should resolve disputes over Section 50-f(2)(d)(iv):

[I]t shall be a question of fact whether or not the use of the deceased personality’s name, voice, signature, photograph, or likeness was so directly connected with the commercial sponsorship or with the paid advertising or product placement as to constitute a use for which consent is required.

While this standard may in theory make it more difficult to evaluate Section 50-f(2)(d)(iv) on a motion to dismiss, courts should be able to make that determination at the pleading stage if no reasonable fact finder could find commercial use, just as courts often do when evaluating whether a statement is not capable of a defamatory meaning.

Regardless of the phase in litigation, courts are likely to be faced with difficult questions about how Section 50-f(2)(d)(iv) applies in the Internet age. For instance, if a deceased celebrity is mentioned or pictured in a newspaper article—which is clearly permissible under the statute’s newsworthiness exception—but just below the article is an advertisement for an alcoholic product, is the reference to the deceased celebrity nonetheless being used “for the purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods, or services” within the prohibition of Section 50-f(2)(a)?

In a physical newspaper, where there are clear lines between news articles and advertisements, this use would almost surely satisfy the newsworthiness exception and not be deemed a commercial use. But one can see how this gets complicated when thinking about the internet.

Take a pop-up advertisement displayed on the screen, imposed over or within the text of a newspaper article. How about branded content—an increasingly popular occurrence on the internet where an advertiser will pay to sponsor editorial content? Or a social media posting by a celebrity influencer that is not so clearly sponsored by a particular company? Courts may be forced to confront these issues not long after Section 50-f takes effect.

Registration and the “Single Publication” Rule

The statute creates a registration system whereby persons claiming to represent the rights of a deceased personality are first required to register with the New York Secretary of State before filing a lawsuit. The registration system raises important issues about the potential timing of future lawsuits.

As a general matter, New York courts apply the “single publication rule” to right of publicity claims, where the distribution of the offending publication gives rise to a single cause of action. In other words, when an unauthorized use is published—say, a television show premieres or a movie or book is released—the plaintiff has only a single cause of action to remedy that unauthorized use, and the statute of limitations begins to run from the first publication.1

How this principle might apply to a deceased personality, whose representative need only secure a registration as a prerequisite for filing suit (so long as the performer died less than 40 years ago), may well be the subject of future litigation. For example, if the estate of a deceased personality completes the registration form, can the rights holder sue over a television episode that debuted years earlier but has enjoyed a popular resurgence on television through reruns?

We know that the legislation was updated to exclude personalities who died before the bill was enacted, so as a general matter courts may be hostile to a look-back of this sort. On the other hand, what if the episode in question was released on a streaming service like Netflix or Hulu one day prior to registration, but the episode remains accessible after the performer’s registration is complete? Courts will likely have to confront similar issues when applying the statute in the streaming age.

How to Determine “Commercial Value” at Time of Death?

Section 50-f(1)(b) limits the definition of a “deceased personality” to any person whose “name, voice, signature, photograph, or likeness has commercial value at the time of his or her death, or because of his or her death, whether or not during the lifetime of that natural person the person used his or her name, voice, signature, photograph, or likeness on or in products, merchandise, or goods, or for purposes of advertising or selling, or solicitation of purchase of, products, merchandise, goods, or services.”

In cases involving prominent celebrities, this is a pro forma requirement. However, the statute does not define “commercial value,” which appears to be an inherently subjective inquiry. For instance, in the age of social media influencers, one’s likeness may gain “commercial value” at any moment, and the currency of that “value” may be in the form of likes and clicks, not dollars and cents. We anticipate judges struggling with this requirement in the first close cases that make their way before a court.

Distributor Immunity

Section 50-f(9) provides an important shield from liability for “owners or employees of any medium used for advertising,” including “newspapers, magazines, radio and television networks and stations, cable television systems, billboards, and transit advertisements.” The owners and employees of these types of entities are only liable under Section 50-f for commercial uses of a deceased personality’s likeness if they have “actual knowledge by prior notification of the unauthorized use.” Entities like the New York State Broadcasters Association advocated for this added protection.

In the nonstop world of broadcast radio and television, where stations often do not have the time to edit or review every piece of content or advertising that is supplied by a third party, potential Section 50-f violations loom as a substantial risk. This actual notice requirement provides distributors of advertising with a significant safeguard from liability but may raise issues as to the nature and specificity of the required notice.

Final Thought

While New York has taken meaningful steps to grapple with some of the most cutting-edge and undefined issues of our day, many questions remain unanswered. The new cause of action for deceased personalities will surely bring to the fore important issues about internet advertising.

Technology has changed the way that companies present advertisements to consumers, and the application of this new law to pop-up advertisements, sponsored content, and influencers seems ripe for future litigation. Likewise, the legislature’s foray into the dark world of pornographic deepfake videos is an important development but does not squarely address the pernicious act of “revenge porn;” the unauthorized release of unaltered sexually explicit images or video of a victim still escapes civil liability under this new regime.

With these amendments to the Civil Rights Law and its recent adoption of an anti-SLAPP law, New York has taken important steps to address issues of considerable import to the media and entertainment industries—which will undoubtedly spark creativity, and lawsuits, in the Empire State.

FOOTNOTES

1 See, e.g., Costanza v. Seinfeld, 279 A.D.2d 255, 255-56 (1st Dep’t 2001) (rejecting argument by the plaintiff, who claimed the “George Costanza” character on the television program Seinfeld violated his right of publicity, that the one-year “Statute of Limitations ran anew with the airing of each episode featuring the George Costanza character”).

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