Hebrew Univ. of Jerusalem v. Gen. Motors LLC, Case No. CV10-03790 AHM (JCx)

THE HEBREW UNIVERSITY OF JERUSALEM

v.GENERAL MOTORS LLC

Case No. CV10-03790 AHM (JCx)

UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA

Date October 15, 2012

CIVIL MINUTES - GENERAL

Present: The Honorable A. HOWARD MATZ, U.S. DISTRICT JUDGE

Stephen Montes

Deputy Clerk

Not Reported

Court Reporter / Recorder

__________

Tape No.

Attorneys NOT Present for Plaintiffs:

Attorneys NOT Present for Defendants:

Proceedings: IN CHAMBERS (No Proceedings Held)

I. Introduction

Defendant General Motors LLC ("GM") used an image of Albert Einstein in a November 2009 advertisement for its 2010 Terrain vehicle. The ad depicted Einstein's face digitally pasted onto a muscled physique, accompanied by the written message "Ideas are sexy too." The ad ran in only one issue of People magazine. Plaintiff Hebrew University of Jerusalem ("HUJ"), which claims to own Einstein's right of publicity as a beneficiary under Einstein's will and thus exclusive control of the exploitation of his name and likeness, brought suit against GM for this unauthorized use of Einstein's image.¹

On March 16, 2012, the Court issued an order permitting HUJ to proceed to trial to attempt to prove (1) that Albert Einstein would have transferred his postmortem right of publicity under New Jersey law had he been aware that such a right of publicity existed atthe time of his death and (2) that GM had violated that right. See Hebrew Univ. of Jerusalem v. Gen. Motors LLC, 2012 WL 907497, at *12-14 (C.D. Cal. March 16, 2012).² GM has asserted that even if HUJ could prove both Einstein's intent with respect to the right of publicity and GM's violation of that right, it should not be entitled to recover damages because too much time elapsed between Einstein's death in 1955 and the filing of this lawsuit in 2010.

Now before the Court is HUJ's motion³ requesting that the Court find that the duration of the postmortem right of publicity is indefinite under New Jersey common law or, in the alternative, that it lasts for 70 years after death, as is the case with copyrights under the federal Copyright Act. In essence, HUJ seeks a ruling from this California federal court as to what New Jersey's highest court would likely determine to be the postmortem duration of that state's common law right of publicity.⁴ For the reasons set forth below, the Court concludes that the New Jersey Supreme Court would likely find that the postmortem right of publicity endures for no more than 50 years after death. As to HUJ's cause of action under California's right of publicity statute (Civil Code §3344.1), the Court also rules that the rights encompassed in that statute do not apply to Plaintiff.

II. Facts and Procedural History

The facts of this case are set forth in the Court's summary judgment order, Hebrew University of Jerusalem v. General Motors LLC, 2012 WL 907497 (C.D. Cal. March 16, 2012), and therefore only a brief review of the background is presented here.

Nothing in Albert Einstein's will specifically mentioned any right of publicity, and during his lifetime he did not claim or receive any monetary compensation for the use of his persona. Applying New Jersey law (because Einstein was domiciled there at the time of his death in 1955), this Court concluded that New Jersey would recognize a common law postmortem right of publicity without the requirement of lifetime exploitation. Id. at *6, 10. The Court therefore found that Einstein had a right of publicity that survived his death, but that the remaining question—whether he would have intended to transfer that right to HUJ through a provision in his will—was a factual question. Id. at *13-14. For that reason, the Court held, HUJ was entitled to prove Einstein's intent at trial.

For the present motion, the Court assumes without deciding that HUJ succeeded in proving that Einstein would have intended to bequeath his right of publicity to HUJ. The dispositive question now before the Court is the duration of that right. For how many years may HUJ enforce Einstein's common law, postmortem right of publicity?

III. Legal Standard

Although HUJ has styled this motion as one for judgment as a matter of law pursuant to Federal Rule of Civil Procedure 50(a), the Ninth Circuit has made clear that Rule 50(a) only applies after a jury trial has begun. See McSherry v. City of Long Beach, 423 F.3d 1015, 1019-21 (9th Cir. 2005) ("We hold that the district court may not grant a motion filed under Rule 50 prior to the presentation of any evidence in a case."). The Court therefore treats this motion as a motion for summary adjudication pursuant to Rule 56. See id. at 1021 (treating improper Rule 50 motion as a motion for judgment on the pleadings); see also Fed. R. Civ. P. 12(d) (stating that when "matters outside the pleadings are presented to and not excluded by the court, the motion must be treated as one for summary judgment under Rule 56"); Fed. R. Civ. P. 56(a) (permitting summary judgment on "part of" a claim).

Federal Rule of Civil Procedure 56 provides for summary judgment when "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law. " The moving party bears the initial burden of demonstrating the absence of a "genuine issue of material fact for trial." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986). A fact is material if it could affect theoutcome of the suit under the governing substantive law. Id. at 248. The burden then shifts to the nonmoving party to establish, beyond the pleadings, that there is a genuine issue for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986).

For the limited purpose of this motion, there are no factual issues in dispute. The parties agree that Einstein died while domiciled in New Jersey and that 55 years passed between his death in 1955 and 2010, when HUJ filed this lawsuit. The parties disagree as to whether the duration of the right of publicity extends as long as 55 years or even longer. This is a question that may properly be decided as a matter of law.

IV. Analysis

J. Thomas McCarthy, the leading commentator on the right of publicity, has characterized the determination of the right's duration as "by nature almost arbitrary." 2 J. Thomas McCarthy, Rights of Publicity & Privacy § 9:16 (2d ed. 2012) (henceforth, "McCarthy"). An "almost arbitrary" ruling is unacceptable, however. The following analysis seeks to avoid one.

A. New Jersey Law Determines the Duration of the New Jersey Right of Publicity

The right of publicity is a property right under both New Jersey common law and California statutory law. McFarland v. Miller, 14 F.3d 912, 917 (3d Cir. 1994) ("In New Jersey, the right of publicity is a property right."); Estate of Presley v. Russen, 513 F. Supp. 1339, 1355 (D.N.J. 1981) (holding that the right of publicity is descendible); Cal. Civ. Code § 3344.1(b) ("The rights recognized under this section are property rights, freely transferable or descendible . . . .").

The duration of California's statutory postmortem right of publicity is 70 years. Cal. Civ. Code § 3344.1(g). But the right is limited to California domiciliaries. See Cal. Civ. Code § 946 ("If there is no law to the contrary, in the place where personal property is situated, it is deemed to follow the person of its owner, and is governed by the law of his domicile."); Cairns v. Franklin Mint Co., 292 F.3d 1139, 1147-49 (9th Cir. 2002) (concluding that § 946 applies in conjunction with § 3344.1 and that therefore the right ofpublicity provided by § 3344.1 does not apply to persons domiciled outside California, despite the statute's applicability to acts occurring in California); see also Milton H. Greene Archives, Inc. v. Marilyn Monroe LLC, 692 F.3d 983, 1000 (9th Cir. 2012) (confirming that the law of the state where the deceased owner of the right of publicity was domiciled controls whether the right may be posthumously enforced).

As previously noted, Einstein died while domiciled in New Jersey. HUJ's claim pursuant to Cal. Civ. Code § 3344.1 therefore fails. For the same reason, unless sound public policy and the weight of authority establish otherwise, it makes no sense to apply the California statute's 70 year postmortem durational limit—which is part and parcel of the substantive right—to a right arising solely out of the New Jersey common law, and there is no legal principle requiring this Court to do so.⁵

B. Status of Existing New Jersey Law Concerning the Duration of the Postmortem Right of Publicity

Only one court in New Jersey, a federal district court, has ever discussed the question of duration, and it did not decide the issue. See Estate of Presley, 513 F. Supp. at 1355 n.10. The primary question in Presley was whether New Jersey recognized a descendible, postmortem right of publicity. The court found that it does, holding that "Elvis Presley's right of publicity survived his death and became part of Presley's estate." Id. at 1354-55. With respect to the duration of the right of publicity, however, the Presley court merely stated that the state legislature should determine that question, although it also noted that the federal Copyright Act, which at that time provided for a copyright term of life plus 50 years, could provide guidance. Id. at 1355 n.10. No state court in New Jersey has ever addressed the issue.

Although the New Jersey Legislature has considered at least two bills that would create a statutory right of publicity, it has thus far not seen fit to enact such a right. See A.3536, 213th Legis. (N.J. 2008) (proposing the "Celebrity Image Protection Act," with a postmortem duration of 70 years); A.4476, 212th Legis. (N.J. 2007) (same). There is nothing stopping HUJ from petitioning the New Jersey Legislature to pass a statute, with retroactive applicability, that would create a definitive postmortem right of publicity with the extended duration that HUJ seeks here.

C. Aspects of the Right of Publicity that Should...