Memphis Development Foundation v. Factors Etc., Inc., 79-1270

• Decision Date: 28 April 1980
• Docket Number: No. 79-1270,79-1270
• Citation: 616 F.2d 956
• Parties: , 5 Media L. Rep. 2521 MEMPHIS DEVELOPMENT FOUNDATION, Plaintiff-Appellant, v. FACTORS ETC., INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Sixth Circuit

Page 956

616 F.2d 956

205 U.S.P.Q. 784, 5 Media L. Rep. 2521

MEMPHIS DEVELOPMENT FOUNDATION, Plaintiff-Appellant, v. FACTORS ETC., INC., Defendant-Appellee.

No. 79-1270.

United States Court of Appeals Sixth Circuit.

Argued Dec. 31, 1979.

Decided March 6, 1980.

Rehearing and Rehearing En Banc Denied April 28, 1980.

David J. Cocke, Ronald S. Borod, Rosenfield, Borod, Bogatin & Kremer, Memphis, Tenn., for plaintiff-appellant.

Kenneth R. Masterson, John J. Thomason, W. Frank Crawford, Thomason, Crawford & Hendrix, Memphis, Tenn., Daniel H. Lidman, Beverly Hills, Cal., for defendant-appellee.

Before WEICK and MERRITT, Circuit Judges, and CECIL, Senior Circuit Judge.

MERRITT, Circuit Judge.

This appeal raises the interesting question: Who is the heir of fame? The famous have an exclusive legal right during life to control and profit from the commercial use of their name and personality. We are called upon in this diversity case to determine whether, under Tennessee law, the exclusive right to publicity survives a celebrity's death. We hold that the right is not inheritable. After death the opportunity for gain shifts to the public domain, where it is equally open to all.

I.

Elvis Presley died in Memphis on August 16, 1977. To honor him, the Memphis Development Foundation, a Tennessee non-profit corporation, laid plans to erect a large bronze statue of Presley in downtown Memphis. The Foundation solicited public contributions to pay for the sculpture. Donors of $25 or more received an eight-inch pewter replica of the proposed statue from the Foundation.

The District Court held that the heirs and assigns of Presley retained his exclusive right of publicity after his death. It held that the exclusive right to exploit Elvis Presley's name and likeness currently belongs to Factors Etc., Inc., the assignee of Elvis Presley's "right of publicity." The District Court thus enjoined further distribution of the replicas by the Foundation.

Prior to his death, Presley had conveyed the exclusive right to exploit the commercial value of his name and likeness to Boxcar Enterprises in exchange for royalties. Colonel Tom Parker, Presley's manager, was the majority shareholder of Boxcar. Parker owned 56% of the shares; Presley and Tom Dishkin, President of Boxcar, each owned 22%. Two days after Presley's death, Boxcar sold a license to use its rights to Factors for $150,000. Presley's father agreed to the sale on behalf of Elvis' estate.

The Foundation instituted this action seeking a declaratory judgment that Factors' license does not preclude distribution by the Foundation of the pewter replicas and that the Foundation has the right to erect the Presley statue.

Factors in turn by counterclaim seeks damages and an injunction against further distribution of the replicas by the Foundation. Factors claims that the Foundation is selling the statuettes for $25 apiece, and thus appropriating Factors' exclusive right to reap commercial value from the name and likeness of Elvis Presley.

The District Court issued an injunction against the Foundation. The injunction allows the Foundation to build the Presley memorial but prohibits it from manufacturing, selling or distributing any statuette bearing the image or likeness of Elvis Presley, or utilizing commercially in any manner or form the name, image, photograph or likeness of Elvis Presley.

II.

At common law, there is a right of action for the appropriation or unauthorized commercial use of the name or likeness of another. An individual is entitled to control the commercial use of these personal attributes during life. ¹ But the common law has not heretofore widely recognized this right to control commercial publicity as a property right which may be inherited. See W. Prosser, Handbook of The Law of Torts § 117, at 804, 815 (4th ed. 1971).

Recently, a few cases have characterized the right of publicity as property which may be passed on to heirs or assigns. ² In addition, a recent law journal article advocates recognition of such a right after death where a person has exploited his fame during life by assigning it to an agent or otherwise entering into a contract for its use. The theory is that the law should recognize that "the possibility of providing for one's heirs may have a motivational effect during one's life." Assignment during life is the touchstone because "if no contract has been created, the identification of . . . harm is . . . difficult" and evidently "such concerns were not a substantial motivation." The article thus distinguishes between "the unrealized potential ability of a person to profit from his attributes," an interest insufficient to establish an inheritable right, and the conscious exploitation of the right during life, the continuation of which after death fulfills "the social policy of encouraging individual creativity." Felcher & Rubin, Privacy, Publicity, and the Portrayal of Real People by the Media, 88 Yale L.J. 1577, 1618-19 (1979).

Tennessee courts have not addressed this issue directly or indirectly, and we have no way to assess their predisposition. Since the case is one of first impression, we are left to review the question in the light of practical and policy considerations, the treatment of other similar rights in our legal system, the relative weight of the conflicting interests of the parties, and certain moral presuppositions concerning death, privacy, inheritability and economic opportunity. These considerations lead us to conclude that the right of publicity should not be given the status of a devisable right, even where as here a person exploits the right by contract during life.

III.

Recognition of a post-mortem right of publicity would vindicate two possible interests: the encouragement of effort and creativity, and the hopes and expectations of the decedent and those with whom he contracts that they are creating a valuable capital asset. Although fame and stardom may be ends in themselves, they are normally by-products of one's activities and personal attributes, as well as luck and promotion. The basic motivations are the desire to achieve success or excellence in a chosen field, the desire to contribute to the happiness or improvement of one's fellows and the desire to receive the psychic and financial rewards of achievement. As John Rawls has written, such needs come from the deep psychological fact that the individuals want the respect and good will of other persons and "enjoy the exercise of their realized capacities (their innate or trained abilities), and this enjoyment increases the more the capacity is realized, or the greater its complexity." (Footnote omitted.) According to Rawls:

(Such) activities are more enjoyable because they satisfy the desire for variety and novelty of experience, and leave room for feats of ingenuity and invention. They also evoke the pleasures of anticipation and surprise, and often the overall form of the activity, its structural development, is fascinating and beautiful. A Theory of Justice 426-27 (1971).

Fame is an incident of the strong motivations that Rawls describes. The desire to exploit fame for the commercial advantage of one's heirs is by contrast a weak principle of motivation. It seems apparent that making the right of...