State ex rel. Elvis Presley Intern. Memorial Foundation v. Crowell

• Citation: 2 U.S.P.Q.2d 1663,14 MediaL.Rep. 1043,733 S.W.2d 89
• Decision Date: 03 April 1987
• Docket Number: No. 86-99-II,86-99-II
• Parties: , 14 Media L. Rep. 1043 The STATE of Tennessee ex rel. The ELVIS PRESLEY INTERNATIONAL MEMORIAL FOUNDATION, and The Elvis Presley International Memorial Foundation, Plaintiffs and Counter-Defendants/Appellants, v. Gentry CROWELL, Secretary of State, Defendant, The Elvis Presley Memorial Foundation, Inc., Defendant/Appellee, and Elvis Presley Enterprises, Inc., Intervening Defendant and Counterclaimant/Appellee.
• Court: Court of Appeals of Tennessee

Page 89

733 S.W.2d 89

2 U.S.P.Q.2d 1663, 14 Media L. Rep. 1043

The STATE of Tennessee ex rel. The ELVIS PRESLEY INTERNATIONAL MEMORIAL FOUNDATION, and The Elvis Presley International Memorial Foundation, Plaintiffs and Counter-Defendants/Appellants, v. Gentry CROWELL, Secretary of State, Defendant The Elvis Presley Memorial Foundation, Inc., Defendant/Appellee and Elvis Presley Enterprises, Inc., Intervening Defendant and Counterclaimant/Appellee.

No. 86-99-II

Court of Appeals of Tennessee Middle Section, at Nashville.

April 3, 1987.

Peter M. Brown, Streibich & Brown, Memphis, for plaintiffs and counter-defendants/appellants.

C. Barry Ward, William R. Bradley, Jr., Glankler, Brown, Gilliland, Chase, Robinson & Raines, Memphis, for defendant/appellee.

OPINION

KOCH, Judge.

This appeal involves a dispute between two not-for-profit corporations concerning their respective rights to use Elvis Presley's name as part of their corporate names. The case began when one corporation filed an unfair competition action in the Chancery Court for Davidson County to dissolve the other corporation and to prevent it from using Elvis Presley's name. Elvis Presley's estate intervened on behalf of the defendant corporation. It asserted that it had given the defendant corporation permission to use Elvis Presley's name and that it had not given similar permission to the plaintiff corporation.

The trial court determined that Elvis Presley's right to control his name and image descended to his estate at his death and that the Presley estate had the right to control the commercial exploitation of Elvis Presley's name and image. Thus, the trial court granted the defendant corporation's motion for summary judgment and dismissed the complaint.

The plaintiff corporation has appealed. Its primary assertion is that there is no descendible right of publicity in Tennessee and that Elvis Presley's name and image entered into the public domain when he died. It also asserts that the trial court should not have granted a summary judgment because there are disputed factual issues and that the trial court should not have permitted the corporation representing Elvis Presley's estate to intervene. We concur with the trial court's determination that Elvis Presley's right of publicity is descendible under Tennessee law. However, for the reasons stated herein, we vacate the summary judgment and remand the case for further proceedings.

I.

Elvis Presley's career is without parallel in the entertainment industry. From his first hit record in 1954 until his death in 1977, he scaled the heights of fame and success that only a few have attained. His twenty-three year career as a recording star, concert entertainer and motion picture idol brought him international recognition and a devoted following in all parts of the nation and the world.

Elvis Presley was aware of this recognition and sought to capitalize on it during his lifetime. He and his business advisors entered into agreements granting exclusive commercial licenses throughout the world to use his name and likeness in connection with the marketing and sale of numerous consumer items. As early as 1956, Elvis Presley's name and likeness could be found on bubble gum cards, clothing, jewelry and numerous other items. The sale of Elvis Presley memorabilia has been described as the greatest barrage of merchandise ever aimed at the teenage set. ¹ It earned millions of dollars for Elvis Presley, his licensees and business associates.

Elvis Presley's death on August 16, 1977 did not decrease his popularity. If anything it preserved it. Now Elvis Presley is an entertainment legend, somewhat larger than life, whose memory is carefully preserved by his fans, the media and his estate.

The demand for Elvis Presley merchandise was likewise not diminished by his death. The older memorabilia are now collector's items. New consumer items have been authorized and are now being sold. Elvis Presley Enterprises, Inc., a corporation formed by the Presley estate, has licensed seventy-six products bearing his name and likeness and still controls numerous trademark registrations and copyrights. Graceland, Elvis Presley's home in Memphis, is now a museum that attracts approximately 500,000 paying visitors a year. Elvis Presley Enterprises, Inc. also sells the right to use portions of Elvis Presley's filmed or televised performances. These marketing activities presently bring in approximately fifty million dollars each year and provide the Presley estate with approximately $4.6 million in annual revenue. The commercial exploitation of Elvis Presley's name and likeness continues to be a profitable enterprise. It is against this backdrop that this dispute between these two corporations arose.

A group of Elvis Presley fans approached Shelby County officials sometime in 1979 concerning the formation of a group to support a new trauma center that was part of the Memphis and Shelby County hospital system. This group, calling themselves the Elvis Presley International Memorial Foundation, sought a charter as a Tennessee not-for-profit corporation in October, 1980. The Secretary of State denied their application on November 12, 1980 stating that "[t]he name Elvis Presley cannot be used in the charter."

Lawyers representing the group of fans and the Presley estate met to discuss the group's use of Elvis Presley's name following the Secretary of State's rejection of the charter application. In December, 1980, the Presley estate and its trademark counsel formally declined to give the group the unrestricted right to use Elvis Presley's name and likeness. However, the Presley estate offered the group a royalty-free license to use Elvis Presley's name and likeness if the group agreed to abide by eight conditions limiting the group's activities. The group declined the offer of a royalty-free license.

The Presley estate incorporated Elvis Presley Enterprises, Inc. on February 24, 1981. Two days later on February 26, 1981, the Secretary of State, reversing its original decision, granted the fan group's renewed application and issued a corporate charter to the Elvis Presley International Memorial Foundation (International Foundation). The International Foundation raises funds by charging membership fees and dues and by sponsoring an annual banquet in Memphis. It uses its funds to support the trauma center of the new City of Memphis Hospital which was named after Elvis Presley and to provide an annual award of merit.

The Presley estate and Elvis Presley Enterprises, Inc. incorporated the Elvis Presley Memorial Foundation, Inc. (Foundation) as a Tennessee not-for-profit corporation on May 14, 1985. The Foundation is soliciting funds from the public to construct a fountain in the shopping center across the street from Elvis Presley's home.

The International Foundation's previously amicable relationship with the Presley estate and Elvis Presley Enterprises, Inc. deteriorated after the formation of the Foundation. On July 17, 1985, the International Foundation filed this action seeking to dissolve the Foundation and to enjoin it using a deceptively similar name.

II.

The Intervention of Elvis Presley Enterprises, Inc.

The International Foundation questions the trial court's decision permitting Elvis Presley Enterprises, Inc. to intervene as a defendant in this action. It argues that Elvis Presley Enterprises, Inc. should not have been permitted to intervene as of right because it failed to demonstrate that the existing parties were not adequately representing its interests. The trial court has the discretion to permit a party showing good cause to intervene. Cummins v. Woody, 177 Tenn. 636, 640, 152 S.W.2d 246, 247 (1941) and Express Companies v. Mann, 3 Tenn.Civ.App. (Higgins) 6, 10 (1912). The trial court did not abuse its discretion in this case. Elvis Presley Enterprises, Inc.'s exclusive right to control the commercial exploitation of Elvis Presley's name and likeness is at the heart of this case. It traces this right to the Presley estate and to the residuary trust created in Elvis Presley's will. There is no indication in this record that the Elvis Presley International Memorial Foundation formally objected to Elvis Presley Enterprises, Inc.'s intervention. Thus, Elvis Presley Enterprises, Inc. should be permitted to protect its interests that were put at risk when this action was filed.

III. Elvis Presley's Right of Publicity

We are dealing in this case with an individual's right to capitalize upon the commercial exploitation of his name and likeness and to prevent others from doing so without his consent. This right, now commonly referred to as the right of publicity, is still evolving and is only now beginning to step out of the shadow of its more well known cousin, the right of privacy.

The confusion between the right of privacy and the right of publicity has caused one court to characterize the state of the law as a "haystack in a hurricane." Ettore v. Philco Television Broadcasting Corp., 229 F.2d 481, 485 (3d Cir.1956). This confusion will not retard our recognition of the right of publicity because Tennessee's common law tradition, far from being static, continues to grow and to accommodate the emerging needs of modern society. Powell v. Hartford Accident & Indemnity Co., 217 Tenn. 503, 509-10, 398 S.W.2d 727, 730-31 (1966); Box v. Lanier, 112 Tenn. 393, 407, 79 S.W. 1042, 1045 (1904); and Jacob v. State, 22 Tenn. (3 Hum.) 493, 515 (1842). See also O'Brien v. Pabst Sales Co., 124 F.2d 167, 170 (5th Cir.1941) (Holmes, J., dissenting), cert. denied, 315 U.S. 823, 62 S.Ct. 917, 86 L.Ed. 1220 (1942) and Warren & Brandeis, The Right to Privacy, 4 Harv.L.Rev. 193, 195 (1890).

A.

The right of privacy owes its origin to Samuel Warren's and Louis Brandeis' now famous 1890 law review article. Warren & Brandeis, The Right to Privacy, 4 Harv.L.Rev. 193 (1890). The authors were concerned with the media's intrusion into...