Is a Retroactive Publicity Right Constitutional?

Although the constitutionality of the new California publicity statute was raised in the New York proceeding, Judge McMahon stated that her domiciliary decision mooted the motion on the constitutionality of the California publicity statute. The constitutional question was the second argument after the domiciliary issue.

Prominent New York lawyers in the New York action litigated the constitutionality of the California statute, and, certainly, California lawyers in the future will take note of these proceedings. Against the new law was Professor Marci Hamilton of the Benjamin N. Cardozo School of Law, working with Christopher Serbagi. Arguing for the new law was Loeb and Loeb, with Barry J. Slotnick as lead counsel. What were the arguments? And certainly the constitutional arguments may affect any new New York publicity bill as to retroactivity.

The argument that the new California publicity law cannot be merely a “clarification” is not the focus of this article. The important issue is whether a retroactive law would affect vested property rights that then might fail the Due Process Clause. A new retroactive descendible publicity right would disrupt decade-old arrangements.

The Pros

Considering that the California law is constitutional, Barry I. Slotnick of Loeb and Loeb states:

A law is not unconstitutional simply because it operates retroactively. See, League v. Texas, 184 U.S. 156, 161 (1902) (holding that the mere fact that a statute is retroactive in its operation does not make it repugnant to the U.S. Constitution); and Robertson v. Willis, 77 Cal.App.3d 358, 365 (Cal. Ct. App. 2d Dis. 1978) (“All retrospective legislation is not invalid merely because it operates as such”).

A retroactive law is only unconstitutional where it: 1) constitutes an ex post facto law; 2) impairs the obligation of a contract; or 3) deprives a person of a vested right or substantially impairs that right, thereby denying due process. Id.; see also, Landgraf v. USI Film Prods., 511 U.S. 244, 266 (1994); and In re Marriage of Hilke, 4 Ca.4th 215, 222 (Cal. 1992) (“Retroactive legislation may not be applied when it constitutes an ex post facto law or an impairment of an existing contract, or when to do so would impair a vested property right without due process of law”).

A substantial impairment of a vested right may constitute a 'taking' of property without due process of law. However, “[t]he requirements of procedural due process apply only to the deprivation of interests encompassed by the Fourteenth Amendment's protection of liberty and property.” Bd. of Regents v. Roth, 408 U.S. 564, 569 (1972). A vested right is one that is “fixed, settled, absolute and not contingent upon anything.” Quetel Corp. v. Columbia Communications Int'l Inc., 787 F.Supp. 1, 5 (D.D.C. 1992). The mere expectancy of future benefits, or a contingent interest in property founded on the anticipated continuance of existing laws, does not constitute a vested right. See, Resolution Trust Corp. v. Maplewood Investments, 31 F.3d 1276, 1288 n.24 (4th Cir. 1994).

First, “[l]egislation readjusting rights and burdens is not unlawful solely because it upsets otherwise settled expectations.” Carbon Fuel Co. v. USX Corp., 100 F.3d 1124, 1137 (4th Cir. 1996) (quoting Usery v. Turner Elkhorn Mining Co., 428 U.S. 1, 16 (1976)). This is true even though the legislation imposes a new duty or liability based on past acts. Id. Were the rule otherwise, government regulation would be impossible, and the economic status quo would be forever frozen.

Second, no vested right is created by the omission to legislate on a subject. See, Middleton v. Texas Power & Light Co., 249 U.S. 152, 162-163 (1919). Accordingly, Calif. Civ. Code '3344.1 does not offend principles of due process by affirming, for the first time in 1985, that anyone is prohibited from commercially exploiting, without authorization, a deceased personality's name, likeness or image. Under settled law, a vested right must be something more than a mere expectation founded on an anticipated continuance of existing law. See, Proprietors of Charles River Bridge v. Proprietors of Warren Bridge, 36 U.S. 420, 540 (1837).

The Cons

Professor Marci Hamilton of the Benjamin N. Cardozo School of Law considers the new California law unconstitutional. She states:

Two federal courts have held that as of 1985, the effective date of the California statute, no publicity rights could have survived [Marilyn Monroe's] death or be devised in her will. See, Milton H. Greene Archives Inc. v. CMG Worldwide Inc. (“Greene Archives I“), CV 05-02200 (C.D Calif. 2007); and Shaw Family Archives Ltd. v. CMG Worldwide Inc., 486 F.Supp.2d 309, 314 (S.D.N.Y. 2007).

Undeterred, the residuary beneficiaries of Monroe's estate have sought the creation of such postmortem publicity rights to obtain control of the market in her photographs. Dissatisfied with the court rulings in New York and California, they lobbied the respective state legislatures to enact retroactive legislation that would transform the prospective right in '3344.1 into a right that would reach back to Monroe's 1962 death.

In 2007, California enacted SB 771 as an “amendment” to '3344.1. Despite the law in existence when Marilyn Monroe died, SB 771 purported to create a new property right that “deems” a celebrity who died prior to Jan. 1, 1985 to have owned a descendible right of publicity at the time of her death and that this right of publicity vested pursuant to the residuary clause of a decedent's will. In other words, SB 771 crafted a new regime wherein rights not in existence in 1962 suddenly were, and rights designated solely for statutory heirs in 1985 suddenly could be granted to residuary beneficiaries as well. The California legislature characterized this brand new property right as merely a “clarification” of '3344.1. The New York Legislature has yet to act on the proposal.

Retroactivity

This scheme to create property rights out of whole cloth is unconstitutional. In order for a retroactive civil statute to pass constitutional muster, two elements must be present: 1) the legislative intent to make the law retroactive must be clear; and 2) the statute must not violate due process.

Section 3344.1, upon which SB 771 rests, suffers from two fatal constitutional flaws if applied retroactively. When it was enacted, there was no clear legislative intent for it to be applied retroactively, and it violates due process by creating a new property right. Under both the federal and California constitutions, no law may ever be applied retroactively without clear legislative intent. See, Landgraf v. USI Film Prods., 511 U.S. 244, 270 (1994); and Western Security Bank N.A. v. Superior Court, 933 P.2d 507, 513 (Cal. 1997). The same principle is true under New York law. See, Majewski v. Broadalbin-Perth Cent. Sch. Dist., 696 N.E.2d 978, 980 (N.Y. 1998).

No such clarity exists with respect to the retroactive application of '3344.1. If there is any clear intent, it leans toward prospective application only, as both courts to rule on the issue originally concluded. Greene Archives I; Shaw Family Archives Ltd. v. CMG Worldwide Inc., 486 F.Supp.2d 309, 314 (S.D.N.Y. 2007). At best, '3344.1 was ambiguous on retroactivity. See, Greene Archives II, CV 05-02200 (C.D.Calif. 2008); and Greene Archives III, CV 05-02200 (C.D.Calif. 2008). Yet, to the extent that the 1984 law was ambiguous, confusing or unclear regarding the existence of descendible property rights for devisees following Monroe's death, it could not satisfy the requirement that it contain a clear legislative intent that the law be applied retroactively. (The most recent California district court decisions stepped into this constitutional minefield by upholding SB 771 as a permissible “clarification” of '3344.1 on the theory that the latter was ambiguous.)

Even if a court were able to divine clarity out of '3344.1's ambiguity, the statute expressly states that the right it creates is a new property right, Calif. Civ. Code '3344.1(3)(b), which is a violation of due process. While California courts have upheld retroactive legislation that affects procedural matters, like the statutes of limitation (see, Liebig v. Superior Court, 257 Cal.Rptr. 574, 576 (Cal. Ct. App. 1989); and Lent v. Doe, 47 Cal.Rptr.2d 389, 393 (Cal. Ct. App. 1995)), they have struck statutes when the law affected substantive rights and failed the required balancing test. See, e.g., In re Marriage of Buol, 705 P.2d 354, 358-62 (Cal. 1985), superseded by statute, Stats. 1986, ch. 49, '1, p. 115, as recognized in In re Marriage of Heikes, 899 P.2d 1349, 1354 (Cal. 1995); In re Marriage of Siller, 231 Cal.Rptr. 757, 767 (Cal. Ct. App. 1986); and In re Cindy B., 237 Cal.Rptr, 677, 684 (Cal. Ct. App. 1987).

Were the New York Legislature to enact such a law, the New York courts have expressed similar principles. See, Alliance of Am. Insurers v. Chu, 77 N.Y.S.2d 573, 586 (N.Y. 1991); and Vaughn v. Manor Towers Owners Corp., 521 N.Y.S.2d 680 (App.Div. 1987). The federal Constitution also permits retroactive application of civil statutes only if intent is clear and there is no violation of due process. See, Landgraf v. USI Film Prods., 511 U.S. 244, 271 (1994); and Chase Securities Corp. v. Donaldson, 325 U.S. 304 (1945).

The California courts also have applied a balancing analysis that is fatal to '3344.1 and SB 771. See, City of Modesto v. Nat'l Med. Inc., 27 Cal.Rptr.3d 215 (Cal. Ct. App. 2005). If applied retroactively, they interfere with settled property relationships.

Conclusion

The public policy for publicity has many pros and cons. (See, Hartnick, “The Case for a New York Post-Mortem Publicity Law,” New York Law Journal, April 11, 2008 at p. 3.) One view is that the protection of persona is a matter of trademark law rather than the uncharted publicity law, which could conflict with copyright rights. To consider performers' rights as “creative” in a copyright sense could be odd, although performers are certainly “creative” in sound recordings. (The Trademark Trial and Appeal Board considered that Maria Callas, the famous opera singer, could be a trademark for jewelry because no one has any rights in her name. See, In re MC MC S.r.l., 88 U.S.P.Q.2d 1378 (2008). How sad!)

If New York legislators do consider a new publicity law, perhaps it should be prospective, be limited, like copyright termination rights, to family members, and for a duration of 10 to 20 years. There are, of course, other formulae for publicity protection. If the new law is retroactive, in my opinion, it is unconstitutional. Of course, courts will decide that question. If a New York publicity bill passes and is retroactive, it will face a constitutional challenge.

Marilyn Monroe is a modern Aphrodite. Aphrodite is in the public domain. The issue is should not Marilyn Monroe be in the public domain, and if not, who should benefit? In her lifetime, many people took advantage of her. Maybe her being in the public domain would let her rest in peace.

Was Marilyn Monroe domiciled in New York and not California when she died in 1962? If it was California, the company succeeding to her rights might have publicity rights after her death, if that state's statute extending publicity rights back from when the statute originally took effect was constitutional. The new California statute is retroactive as well as prospective. Monroe, of course, never heard of publicity rights, which were enacted in California in 1984.

If it was New York, there are no publicity rights, only privacy rights, which ended with her death. Although publicity bills have been introduced in New York (Amend Senate Bill No. 6005, June 18, 2008, 13534-05-8) none has passed ' so far. New York legislators must consider, if there is such a publicity law, whether retroactive rights are constitutional.

In September 2008, U.S. District Judge Colleen McMahon of the Southern District of New York held that Monroe was domiciled in New York, not California, at the time of her death. See, Shaw Family Archives Ltd. v. CMG Worldwide Inc., 05 Civ. 3939 (S.D.N.Y. 2008). The issue was important because California had “clarified” its publicity law by purporting to make it retroactive ' but of course that applied only to California domiciliaries. See, Calif. Civ. Code '3344.1. In 1984, California passed a statute guaranteeing movie stars like Monroe a post-mortem right of publicity. The statute, which has an effective date of Jan. 1, 1985, did not purport to be retroactive.

Although the constitutionality of the new California publicity statute was raised in the New York proceeding, Judge McMahon stated that her domiciliary decision mooted the motion on the constitutionality of the California publicity statute. The constitutional question was the second argument after the domiciliary issue.

Prominent New York lawyers in the New York action litigated the constitutionality of the California statute, and, certainly, California lawyers in the future will take note of these proceedings. Against the new law was Professor Marci Hamilton of the Benjamin N. Cardozo School of Law, working with Christopher Serbagi. Arguing for the new law was Loeb and Loeb, with Barry J. Slotnick as lead counsel. What were the arguments? And certainly the constitutional arguments may affect any new New York publicity bill as to retroactivity.

The argument that the new California publicity law cannot be merely a “clarification” is not the focus of this article. The important issue is whether a retroactive law would affect vested property rights that then might fail the Due Process Clause. A new retroactive descendible publicity right would disrupt decade-old arrangements.

The Pros

Considering that the California law is constitutional, Barry I. Slotnick of Loeb and Loeb states:

A law is not unconstitutional simply because it operates retroactively. See , League v. Texas , 184 U.S. 156, 161 (1902) (holding that the mere fact that a statute is retroactive in its operation does not make it repugnant to the U.S. Constitution); and Robertson v. Willis , 77 Cal.App.3d 358, 365 (Cal. Ct. App. 2d Dis. 1978) (“All retrospective legislation is not invalid merely because it operates as such”).

A retroactive law is only unconstitutional where it: 1) constitutes an ex post facto law; 2) impairs the obligation of a contract; or 3) deprives a person of a vested right or substantially impairs that right, thereby denying due process. Id .; see also , Landgraf v. USI Film Prods. , 511 U.S. 244, 266 (1994); and In re Marriage of Hilke , 4 Ca.4th 215, 222 (Cal. 1992) (“Retroactive legislation may not be applied when it constitutes an ex post facto law or an impairment of an existing contract, or when to do so would impair a vested property right without due process of law”).

A substantial impairment of a vested right may constitute a 'taking' of property without due process of law. However, “[t]he requirements of procedural due process apply only to the deprivation of interests encompassed by the Fourteenth Amendment's protection of liberty and property.” Bd. of Regents v. Roth , 408 U.S. 564, 569 (1972). A vested right is one that is “fixed, settled, absolute and not contingent upon anything.” Quetel Corp. v. Columbia Communications Int'l Inc. , 787 F.Supp. 1, 5 (D.D.C. 1992). The mere expectancy of future benefits, or a contingent interest in property founded on the anticipated continuance of existing laws, does not constitute a vested right. See , Resolution Trust Corp. v. Maplewood Investments , 31 F.3d 1276, 1288 n.24 (4th Cir. 1994).

First, “[l]egislation readjusting rights and burdens is not unlawful solely because it upsets otherwise settled expectations.” Carbon Fuel Co. v. USX Corp. , 100 F.3d 1124, 1137 (4th Cir. 1996) (quoting Usery v. Turner Elkhorn Mining Co. , 428 U.S. 1, 16 (1976)). This is true even though the legislation imposes a new duty or liability based on past acts. Id. Were the rule otherwise, government regulation would be impossible, and the economic status quo would be forever frozen.

Second, no vested right is created by the omission to legislate on a subject. See , Middleton v. Texas Power & Light Co. , 249 U.S. 152, 162-163 (1919). Accordingly, Calif. Civ. Code '3344.1 does not offend principles of due process by affirming, for the first time in 1985, that anyone is prohibited from commercially exploiting, without authorization, a deceased personality's name, likeness or image. Under settled law, a vested right must be something more than a mere expectation founded on an anticipated continuance of existing law. See , Proprietors of Charles River Bridge v. Proprietors of Warren Bridge , 36 U.S. 420, 540 (1837).

The Cons

Professor Marci Hamilton of the Benjamin N. Cardozo School of Law considers the new California law unconstitutional. She states:

Two federal courts have held that as of 1985, the effective date of the California statute, no publicity rights could have survived [Marilyn Monroe's] death or be devised in her will. See, Milton H. Greene Archives Inc. v. CMG Worldwide Inc . (“ Greene Archives I “), CV 05-02200 (C.D Calif. 2007); and Shaw Family Archives Ltd. v. CMG Worldwide Inc. , 486 F.Supp.2d 309, 314 (S.D.N.Y. 2007).

Undeterred, the residuary beneficiaries of Monroe's estate have sought the creation of such postmortem publicity rights to obtain control of the market in her photographs. Dissatisfied with the court rulings in New York and California, they lobbied the respective state legislatures to enact retroactive legislation that would transform the prospective right in '3344.1 into a right that would reach back to Monroe's 1962 death.

In 2007, California enacted SB 771 as an “amendment” to '3344.1. Despite the law in existence when Marilyn Monroe died, SB 771 purported to create a new property right that “deems” a celebrity who died prior to Jan. 1, 1985 to have owned a descendible right of publicity at the time of her death and that this right of publicity vested pursuant to the residuary clause of a decedent's will. In other words, SB 771 crafted a new regime wherein rights not in existence in 1962 suddenly were, and rights designated solely for statutory heirs in 1985 suddenly could be granted to residuary beneficiaries as well. The California legislature characterized this brand new property right as merely a “clarification” of '3344.1. The New York Legislature has yet to act on the proposal.

Retroactivity

This scheme to create property rights out of whole cloth is unconstitutional. In order for a retroactive civil statute to pass constitutional muster, two elements must be present: 1) the legislative intent to make the law retroactive must be clear; and 2) the statute must not violate due process.

Section 3344.1, upon which SB 771 rests, suffers from two fatal constitutional flaws if applied retroactively. When it was enacted, there was no clear legislative intent for it to be applied retroactively, and it violates due process by creating a new property right. Under both the federal and California constitutions, no law may ever be applied retroactively without clear legislative intent. See , Landgraf v. USI Film Prods. , 511 U.S. 244, 270 (1994); and Western Security Bank N.A. v. Superior Court , 933 P.2d 507, 513 (Cal. 1997). The same principle is true under New York law. See , Majewski v. Broadalbin-Perth Cent. Sch. Dist. , 696 N.E.2d 978, 980 (N.Y. 1998).

No such clarity exists with respect to the retroactive application of '3344.1. If there is any clear intent, it leans toward prospective application only, as both courts to rule on the issue originally concluded. Greene Archives I ; Shaw Family Archives Ltd. v. CMG Worldwide Inc. , 486 F.Supp.2d 309, 314 (S.D.N.Y. 2007). At best, '3344.1 was ambiguous on retroactivity. See, Greene Archives II, CV 05-02200 (C.D.Calif. 2008); and Greene Archives III, CV 05-02200 (C.D.Calif. 2008). Yet, to the extent that the 1984 law was ambiguous, confusing or unclear regarding the existence of descendible property rights for devisees following Monroe's death, it could not satisfy the requirement that it contain a clear legislative intent that the law be applied retroactively. (The most recent California district court decisions stepped into this constitutional minefield by upholding SB 771 as a permissible “clarification” of '3344.1 on the theory that the latter was ambiguous.)

Even if a court were able to divine clarity out of '3344.1's ambiguity, the statute expressly states that the right it creates is a new property right, Calif. Civ. Code '3344.1(3)(b), which is a violation of due process. While California courts have upheld retroactive legislation that affects procedural matters, like the statutes of limitation ( see , Liebig v. Superior Court , 257 Cal.Rptr. 574, 576 (Cal. Ct. App. 1989); and Lent v. Doe , 47 Cal.Rptr.2d 389, 393 (Cal. Ct. App. 1995)), they have struck statutes when the law affected substantive rights and failed the required balancing test. See, e.g., In re Marriage of Buol, 705 P.2d 354, 358-62 (Cal. 1985), superseded by statute, Stats. 1986, ch. 49, '1, p. 115, as recognized in In re Marriage of Heikes, 899 P.2d 1349, 1354 (Cal. 1995); In re Marriage of Siller, 231 Cal.Rptr. 757, 767 (Cal. Ct. App. 1986); and In re Cindy B., 237 Cal.Rptr, 677, 684 (Cal. Ct. App. 1987).

Were the New York Legislature to enact such a law, the New York courts have expressed similar principles. See , Alliance of Am. Insurers v. Chu , 77 N.Y.S.2d 573, 586 (N.Y. 1991); and Vaughn v. Manor Towers Owners Corp. , 521 N.Y.S.2d 680 (App.Div. 1987). The federal Constitution also permits retroactive application of civil statutes only if intent is clear and there is no violation of due process. See , Landgraf v. USI Film Prods. , 511 U.S. 244, 271 (1994); and Chase Securities Corp. v. Donaldson , 325 U.S. 304 (1945).

The California courts also have applied a balancing analysis that is fatal to '3344.1 and SB 771. See , City of Modesto v. Nat'l Med. Inc. , 27 Cal.Rptr.3d 215 (Cal. Ct. App. 2005). If applied retroactively, they interfere with settled property relationships.

Conclusion

The public policy for publicity has many pros and cons. (See, Hartnick, “The Case for a New York Post-Mortem Publicity Law,” New York Law Journal, April 11, 2008 at p. 3.) One view is that the protection of persona is a matter of trademark law rather than the uncharted publicity law, which could conflict with copyright rights. To consider performers' rights as “creative” in a copyright sense could be odd, although performers are certainly “creative” in sound recordings. (The Trademark Trial and Appeal Board considered that Maria Callas, the famous opera singer, could be a trademark for jewelry because no one has any rights in her name. See, In re MC MC S.r.l., 88 U.S.P.Q.2d 1378 (2008). How sad!)

If New York legislators do consider a new publicity law, perhaps it should be prospective, be limited, like copyright termination rights, to family members, and for a duration of 10 to 20 years. There are, of course, other formulae for publicity protection. If the new law is retroactive, in my opinion, it is unconstitutional. Of course, courts will decide that question. If a New York publicity bill passes and is retroactive, it will face a constitutional challenge.

Marilyn Monroe is a modern Aphrodite. Aphrodite is in the public domain. The issue is should not Marilyn Monroe be in the public domain, and if not, who should benefit? In her lifetime, many people took advantage of her. Maybe her being in the public domain would let her rest in peace.