John Dillinger v. The Godfather: The Death of the Dead Celebrity?
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Indiana officially became the Zombieland of the Right of Publicity in 1994. That was the year it enacted Chapter 36 of Section 32 of the Indiana Code, which, among other things, provides that a personality's right of publicity lasts for 100 years after that person's death. Moreover, it didn't matter if the dead celebrity's "home" State--such as New York--had rejected a post-mortem right of publicity. That's because Indiana's statute "applies to an act or event that occurs within Indiana, regardless of a personality's domicile, residence, or citizenship." (Ind. Code 32-36-1-1(a) (emphasis added).) Since commerce tends to be national, a product bearing a dead celebrity's name would find its way into Indiana.
Welcome to Hoosier Zombieland, where Thomas Edison, Henry Ford and millions of others could rise from the dead to sue you for violating their right of publicity. Indeed, potential plaintiffs include Frankenstein (Boris Karloff, died 1969), Dracula (Bela Lugosi, died 1956), and the Phantom of the Opera (Lon Chaney, Sr., died 1930).
Ironically, though, it took a courtroom battle between the Godfather and Indiana's own John Dillinger to slap some restraints onto the Indiana statute.
The role of Eliot Ness in Dillinger, LLC v. Electronic Arts Inc. (S.D. Ind.) was played by District Judge Jane Magnus-Stinson.The plaintiff owned two registered trademarks for JOHN DILLINGER and claimed to control Mr. Dillinger’s right of publicity. The plaintiff sued Electronic Arts, Inc. ("EA") for trademark infringement and for infringement of Dillinger’s right of publicity under the Indiana right-of-publicity statute. The claims were based on references to Dillinger in a series of videogames based upon The Godfather novel and motion pictures. Specifically, the references were in the names of two weapons in the game: the "Dillinger Level Three Tommy Gun" and the "Modern Dillinger" machine gun.
In the first decision—Dillinger I—District Judge Jane Magnus-Stinson granted EA judgment on the pleadings on the right-of-publicity claim. Dillinger, LLC v. Electronic Arts Inc., 2011 WL 2446296 (S.D.Ind. June 15, 2011). The following day, she granted EA’s motion for summary judgment on the trademark infringement claims. Dillinger, LLC v. Electronic Arts Inc., 2011 WL 2457678 (S.D.Ind. June 16, 2011) ("Dillinger II").
DILLINGER I: Dillinger died on July 22, 1934 in a shootout in front of the Biograph Theater in Chicago.The core issue in Dillinger I was thus whether Indiana’s right-of-publicity statute applied to persons who died before the statute’s enactment in 1994. In a carefully reasoned opinion, Judge Magnus-Stinson granted EA judgment on the pleadings, concluding that the statute did not apply retroactively. She relied, in part, on the reasoning in Shaw Family Archives, Ltd. v. CMG Worldwide, Inc., 486 F.Supp.2d 309 (S.D.N.Y. 2007), which rejected a similar retroactive claim by an entity claiming to have obtained, via will, Marilyn Monroe’s right of publicity. She also relied upon Indiana estate and probate law, which would be thrown into disarray if the long-closed estate of a dead celebrity suddenly had a new asset. Indeed, could the heirs of John Dillinger's victims seek wrongful death damages against the newly enriched estate 75 years later? And what about probate taxes?
The judge also relied on a second independent ground for dismissing the right of publicity claim, namely, her conclusion that the videogame was a "literary work," and thus fell within the "literary works" exception to the Indiana statute. In reaching that conclusion, the District Court opted for a broad definition of the term because, as the judge explained, a holding that the term "literary works" doesn’t "encompass videogames would set the right-of-publicity statute up for a constitutional challenge because videogames have as much protection under the First Amendment as does ‘highbrow literature.’"
DILLINGER II: That left the trademark infringement claims, which the District Court dismissed the following day on First Amendment grounds via summary judgment. As the Court explained, EA’s First Amendment defense to the trademark claims is controlled by the Second Circuit’s decision in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). That case established the "relatedness" test, which bars trademark claims over literary works unless the use of the plaintiff’s name is "wholly unrelated to the work or is simply a disguised commercial advertisement for the sale of goods or services." Id. (quoted in Dillinger II.) In a carefully reasoned opinion, the District Court explained that the trademark concerns were "outweighed by the danger of restricting artistic expression."
CONCLUSION: Back-to-back battles between Don Corleone and the late John Dillinger have given the rest of us a pair of victories for artistic freedom and the First Amendment . . . and a little less to fear from Zombieland.
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