“Mo Money Mo Problems:” How the Post-Mortem Right of Publicity Affects Craft Brewers
I once went to a taproom with an array of eighty self-serve beer taps. It was initially difficult to pick a beer from the eighty options. But soon, one caught my eye: North Coast Brewing Company’s “Brother Thelonious Belgian Style Abbey Ale.” The beer cleverly invoked the name of legendary jazz pianist Thelonious Monk and prominently featured him on the label with a snifter of ale. Being a fan of Thelonious Monk, picking a beer became an easy choice.
A Nielsen Holdings study affirms my taproom experience, finding sixty-six percent of American craft beer buyers believe a beer’s label—instead of reputation or price—is “extremely” important for grabbing their attention. In a crowded market with limited shelf space, a standout label is a great way to distinguish the beer and promote sales. And what better way is there to bring in customers than putting a famous person on the label? The practice is astonishingly common; for example, a quick web search presents dozens of The Notorious B.I.G. inspired beers (e.g. Notorious H.O.P, Notorious P.O.G., Notorious B.I.G., Hoppy Smalls, Big Poppa).
But a brewer using the name and likeness of a deceased celebrity presents right of publicity issues that outweigh the commercial benefits. The right of publicity is the “right of a person whose identity has commercial value . . . to control the commercial use of that identity.” See Waits v. Frito-Lay, Inc., 498 F.2d 1093, 1098 (9th Cir.1992). Celebrities have a property interest in their identities because their identities are “valuable in the promotion of products” and “unauthorized commercial exploitation” of their identities threatens their rights. White v. Samsung Electronics America, Inc., 971 F.2d 1395, 1398 (9th Cir. 1992). California has a common law version and a statutory version of the doctrine. The common law version does not survive death, but the statutory version applies post-mortem.
It is imperative that craft brewers understand the post-mortem right of publicity and tread lightly with deceased celebrity-based beer brands. When brewers ignore the right of publicity, they expose themselves to legal and financial costs associated with the misappropriation of a celebrity’s name and likeness. For example, North Coast Brewing Company recently had to settle for an undisclosed amount with Thelonious Monk, Jr. because it misappropriated the name and likeness of Thelonious Monk, Sr. on “Brother Thelonious” merchandise. Furthermore, if a brewer manages to defend their brand as a parody, other brewers are free to riff on the brand’s name and label. Guest Lecture with Mike Kanach, Intellectual Property Partner, Gordon, Rees, Scully & Mansukhani (June 27, 2020). As a result, other brewers can capture the initial market advantage of the celebrity-based beer. While there are technically ways to avoid harm when using a celebrity’s name and likeness, the best practice is to not have a dead celebrity-based beer because the financial risks are significant.
The Right of Publicity: California Civil Code § 3334.1 and The First Amendment
California Civil Code § 3334.1 provides that users of a deceased personality’s name or likeness for commercial purposes without prior consent are liable to the holder of the decedent’s right of publicity for damages resulting from that unconsented use. See Cal. Civ. Code § 3334.1. However, there are defenses under the First Amendment to the right of publicity. See Comedy III Productions, Inc. v. Gary Saderup, Inc. 25 Cal. 4th 387, 405–07 (2001).
- The Statutory Right of Publicity
California Civil Code § 3334.1 makes users of a “deceased personality[’s]” name or likeness on products, or in advertising or sales, liable for $750 or any damages the use causes—including lost profits—if they use the name or likeness without consent of the decedent’s estate. Cal. Civ. Code § 3334.1(a), (c). The injured party measures lost profits with the gross revenue attributable to the use of the personality. Cal. Civ. Code § 3334.1(a). The statute defines “deceased personality” as a 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.” Cal. Civ. Code § 3334.1(h). The use of the decedent’s name or likeness must be “directly connected” to a commercial purpose. Cal. Civ. Code § 3334.1(k).
When a brewer uses a deceased personality on its beer’s label or brand name without consent from the decedent’s estate, it risks financial and legal costs from the misappropriation of the celebrity’s identity. For example, a brewer uses The Notorious B.I.G.’s name or likeness on it’s beer label or as the beer’s name without asking for permission from The Notorious B.I.G.’s estate which then sues the brewer under § 3334.1. These uses qualify as an unconsented use of Biggie’s personality that is directly connected to a commercial use because the name or likeness is on the product itself and promotes sale of the beer. The brewer would have to halt production and sales of the beer and may have to dump any remaining beer at the end of the lawsuit. Furthermore, a brewer using The Notorious B.I.G. on a beer’s label or brand name would cause his estate damages. The damages include gross revenue attributable to the use of The Notorious B.I.G.’s name or likeness and any noneconomic damages. The prevailing party receives attorney’s fees and costs, so if the brewer loses the case, it must pay these costs in addition to its own attorney’s fees. As a result, it is easy to see how a brewer could financially suffer through its unconsented use of a dead celebrity’s identity because lost profits, noneconomic damages, dumping the beer, attorney’s fees and costs add up to substantial sums of money. Most brewers in this scenario can only survive by settling the case, but even settlements can set brewers back considerably.
The Ninth Circuit has held that § 3334.1 only applies to people domiciled in California at the time of death. See Cairns v. Franklin Mint Co., 292 F.3d 1139, 1147, 1149 (9th Cir. 2002). In Cairns, an American mint produced coins with Princess Diana on them, and the Princess’s estate sued the mint under § 3334.1. Id. at 1144. The Court explained British law on the right of publicity applied instead of § 3334.1 because the right of publicity is a personal property right and California law makes personal property rights dependent on the law of the plaintiff’s domicile unless another law provides otherwise. Id. at 1149. Thus, Princess Diana’s estate could not recover damages because Great Britain—her domicile—did not recognize the post-mortem right. Id. at 1149. However, one court recently reframed the law, suggesting there is a claim under § 3334.1 if the decedent’s domicile at the time of death recognizes the post-mortem right of publicity. See Bravado Int’l Grp. Merchandising Servs. v. Gear Launch, Inc., 2018 WL 6017035, 9 (C.D. Cal. 2018).
Under Cairns, using a dead celebrity’s image is outside the scope of § 3334.1 if the celebrity’s domicile was not California when they died. Cairns, 292 F.3d at 1149. However, a celebrity’s estate may have a claim under the Bravadointerpretation of § 3334.1 if the celebrity’s domicile at the time of death offers a post-mortem right of publicity. See Bravado Int’l Grp. Merchandising Servs., 2018 WL 6017035 at 9. Continuing our Notorious B.I.G. example, New York law on the right of publicity would govern under Cairns, while § 3334.1 may apply under the more recent Bravado holding. Given the Bravado holding, a shift in the law is possible, so brewers must be careful when using a dead celebrity’s identity without consent even if they died domiciled outside of California. Otherwise, brewers expose themselves to liability and might divest themselves of their profits.
- The First Amendment Defense
Brewers may avoid financial ruin under a First Amendment defense after using a dead celebrity’s personality for a beer brand or label without consent. Because the statute does not exempt beer brands or labels, celebrity-based beers may only receive protection as a parody. To qualify as a parody, the beer brand or label must contain “significant transformative elements” beyond celebrity likeness or its “value . . . [must] not derive primarily from the celebrity’s fame.” See Comedy III Productions, Inc., 25 Cal. 4th at 407 (2001).
“Transformative elements” hinge on whether the work “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” Comedy III Productions, Inc., 25 Cal. 4th at 404. In Comedy III, an artist sketched The Three Stooges and sold merchandise bearing their image, causing the owner of their rights of publicity to sue for misappropriation of their identities. Id. at 407. The Court held that the work was not transformative because it literally resembled the Stooges rather than transforming their images into something more than celebrity likeness. Id. at 409. The Court explained that the focus is on whether the defendant transforms the celebrity’s likeness such that it becomes the defendant’s own creative expression. Id. at 406. Thus, the artist could not claim his work was transformative because he simply “[created] a conventional portrait of a celebrity so as to commercially exploit” the celebrity’s fame. Id. at 408. Conversely, in ETW Corp. v. Jireh Publishing, Inc., the Sixth Circuit held that a painting commemorating Tiger Woods’s victory at the Augusta Masters Tournament was transformative because the work did not simply depict Woods but combined other images “to describe, in artistic form, a historic event in sports history and convey a message about the significance of Woods’s achievement.” See ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915, 938 (6th Cir. 2003).
However, a court is unlikely to consider most celebrity-based beer brands and labels to be transformative because their names and artwork are not clearly making a commentary or critique. For example, one Biggie-inspired beer—simply called “Notorious B.I.G.”—provides no commentary and instead copies the rapper’s name. Another example is a beer called “Label Us Notorious”—a lyric from The Notorious B.I.G.—featuring a silhouette image of The Notorious B.I.G. behind a microphone. It is unclear if this beer qualifies as a parody because its artwork does not “transform” Biggie’s image beyond his likeness. Rather, it appears the brewery is simply pulling from the original source to benefit off of the celebrity’s likeness. Furthermore, the commentary provided is not readily apparent other than the brewer touting its notoriety. As a result, the beer brand likely commercially exploits The Notorious B.I.G.’s identity. However, if a brewer made a brand or label that is a distinct expression depicting more than The Notorious B.I.G.’s likeness and conveying a significant message, the brewer may prevail. In short, if a brewer is going to parody a celebrity without permission, they not only should expect a lawsuit, but also, they should be good at parodying in a transformative manner.
If a brewer successfully defends their beer as a parody, the brewer will avoid financial loss associated with the lawsuit because the losing party must cover the brewer’s costs. However, the brewer risks other losses because it is unclear if the brewer has intellectual property protections in the brand and label since the beer brand is a riff on existing intellectual property. (Guest Lecture with Mike Kanach.) In theory, a brewer should receive protection since it made a sufficiently expressive and new mark, but protections remain uncertain which allows others to copy the parody. (Guest Lecture with Mike Kanach.)
III. How Craft Brewers Can Avoid Issues with the Right of Publicity
Craft brewers can avoid liability from the right of publicity if they sufficiently parody the celebrity. However, parody does not avoid the issue but invites it. Instead of leaning on parody, brewers often blatantly appropriate the name and likeness of celebrities in “one-off runs” and sell small batches of beer from their taprooms over a short period of time. Typically, the beer is gone and the sale is over before the brewer receives a cease and desist letter. Serving small amounts of beer exclusively in the taproom allows brewers to market it as a limited-edition offer. Additionally, serving beers from the taproom often involves no artwork invoking the likeness of the celebrity, and if it does it can simply be a parody or rework. Furthermore, the profits generated in these one-offs are miniscule in comparison to continuous sales, which reduces the incentive of filing a lawsuit because the gross revenue does not outweigh the costs of a lawsuit. In that sense, it really is “Mo Money Mo Problems.”
Even so, one-off runs are not advisable because stealing other’s intellectual property is financially and legally risky and ethically questionable. Brewers should not make this behavior a regular practice because continuous appropriation of other’s property makes right of publicity holders and courts less likely to be forgiving in future litigation. Rather, if a brewer seeks to use the name and likeness of a dead celebrity, it would be prudent for the brewer to reach out to the holder of the celebrity’s right of publicity and enter into a licensing agreement to avoid future lawsuits. Still, an agreement does not guarantee zero right of publicity issues; for example, North Coast had an agreement with Thelonious Monk, Jr. before their lawsuit regarding “Brother Thelonious Abbey Ale.” Instead, the best way to avoid issues is to simply not appropriate the name and likeness of a dead celebrity at all. By not using a deceased personality, brewers entirely avoid any potential issues associated with the post-mortem right of publicity.
Right of publicity challenges outweigh the commercial benefits of using a deceased personality in beer brands and labels. If brewers ignore the post-mortem right of publicity, they risk financial harm because the statutory right of publicity prevents future sales and redeems lost profits, noneconomic damages, attorney’s fees, and costs. There are ways to avoid this fallout through parody, but just because a brewer can defend a brand in a lawsuit does not mean it should because parody allows other brewers to riff on the brand, diluting the commercial advantage of the initial parodist. Furthermore, brewers may limit production and sell the celebrity-based beers only in their taproom as a one-off run to disincentivize a lawsuit because a one-off small batch sale limits the profits that the estate could recover. However, this behavior still exposes craft brewers to legal challenges from often well-financed owners of a post-mortem right of publicity. Brewers can avoid issues from the unconsented use of a deceased personality by contacting the holder of the right of publicity and making a written licensing agreement to use the name and likeness of the celebrity on the beer and associated merchandise. But this can sometimes devolve into legal battles that can also harm brewers and divest them of profits. Thus, the best way to avoid issues is by simply not having a dead celebrity-based beer brand at all.