An Executive Voices Blog by Jonathan Faber, Managing Partner & General Counsel of Luminary Group LLC

Recently, my agency received an urgent inquiry from a prominent entity seeking to license an iconic deceased personality. They were in the final hours to launch and needed a license finalized that day. They assumed it would be easy since they only needed “quick approval” for his “name, image, and likeness.” A process that can take weeks needed to go from start to finish in an afternoon.

Why the urgency? A suitable photograph of the personality was in hand from an image provider. The potential licensee assumed they had all the rights needed to use the image commercially from the image provider, until the image provider informed them at the eleventh hour that they were only clearing the copyright of the photo—the Right of Publicity owned by the estate of the person depicted was not part of the permission conveyed by the image provider.

The Right of Publicity assures its owner control over commercial use of a person’s identifiable characteristics. In the United States, this extends well after the death of the person in question.

But lately, the Right of Publicity is being swept up in the trend of calling everything NIL (name, image, and likeness). While all NIL is Right of Publicity, not all Right of Publicity is NIL. NIL should refer solely to amateur athlete compensation following revisions to prior NCAA policies prohibiting compensation to student-athletes.

It does not help that legislation focused on NIL has been drafted without much recognition of existing Right of Publicity legislation. Similarly, the federal NO FAKES bill aimed at Artificial Intelligence and digital avatars of actual persons overlaps with the Right of Publicity but never mentions this established legal doctrine by name.

All of which brings us back to that frantic licensing inquiry.

Generally speaking, photographic content can be secured a lot more readily than the Right of Publicity license. And while licensing an entertainment character often involves one-stop shopping for all the rights necessary, celebrities (or their estates) usually do not own the copyright to images taken of them. In fact, even some personalities find this out the hard way after being sued by the photographer of a picture of the personality that they posted on their own Instagram account.

So, even if we could have gotten client review and approval of the proposed use, there was still the matter of the license terms. The expectation in this drop-everything inquiry was that the fee to license the Right of Publicity would be commensurate with the image provider’s fee. We had to explain that the cost of securing imagery has no bearing on the cost of a license to include a legendary personality with established licensing value in their campaign.

There are times when declining a below-value offer is the most valuable way forward. And, of course, if the use proceeds without permission, the cost in an infringement context could multiply. As a frequent expert witness in litigation involving Right of Publicity valuations, I can confirm that unauthorized uses are expensive. Case in point: Samsung was recently sued by Dua Lipa for $15,000,000 over the use of her image on Samsung product packaging.

Something else to keep in mind when partnering with celebrities for these types of licensing agreements is that actors, athletes, influencers, or musicians can be one social media post away from sending a licensing partner into a crisis. However, I have consistently observed that the best Right of Publicity licensing programs are the ones that embrace the goodwill and credibility that a notable personality or that person’s heirs bring to the equation. That is true whether it is correctly called the Right of Publicity or rather carelessly referred to as “Name, Image, and Likeness” whether any amateur athletes are involved or not.

If it is the right fit and a team chooses to move forward, an ounce of prevention goes a long way. Understanding that the Right of Publicity is an integral component for the budget of a proposed licensed product or advertising campaign is fundamental.

Initial outreach for licensing the Right of Publicity should be done as early as possible. Contacting the licensing agent of a notable estate or the representative of a living celebrity prevents complications and, the more central the person is to the undertaking, the more it should be treated as a first priority to get on the same page with the rightsowner of the Right of Publicity.

Jonathan Faber is Managing Partner and General Counsel of Luminary Group LLC, the exclusive representative of Babe Ruth, Jesse Owens, Vince Lombardi, John Wooden, Major Taylor, and others. Faber is often an expert witness in Right of Publicity valuations, including in relation to the Prince estate as well as litigation involving Drake, the Ramones, Zooey Deschanel, and others.