A proposal for further regulation on Publicity Rights in Latin American Countries

Posted December 3, 2021

José Roberto Herrera Díaz jose@herreradiaz.com

INTA Leader of the Subcommitee on Minimum Standards on Right of Publicity.

Latin American countries are characterized by a very general and sometimes weak protection of Publicity Rights. The unauthorized and commercial use of the image is usually shielded in Latin countries by unfair competition, civil, data protection, administrative or criminal law actions. Civil codes or copyright acts are the most used provisions that establish some norms related to publicity rights in the mentioned region. Despite the efforts of Latin lawmakers to protect said rights, the creation of clear rules in civil codes or specific Right of Publicity Rights laws is desirable. Some of those proposed rules are:

– What does this right cover? Does it refer exclusively to the personal image usually taken in photographs or videos, or could it extend to any aspect that can identify a person?

Many Latin American Copyright Acts or Civil Codes establish that “the publication of portrait is free when it is related to scientific, educational or cultural purposes in general or with facts or events of public interest or that have been developed in public[1]“. Said rules require that the publication of the portrait for commercial purposes must have the authorization of the owner of the portrait, however, it refers exclusively to the “portrait”, without including other aspects that can identify a person such as their voice, their appearance, their sayings or postures. There are some countries such as Argentina, Brazil, Bolivia and Peru that extends this right to the voice[2]. However, a broader protection that is not limited to the portrait or the voice, and includes every aspect through which the identity of a person can be recognized is highly recommendable. Said protection would be more updated in the face of new technologies that have allowed new means of image use, such as holograms that are being used to perform concerts by deceased artists, and where the artist’s heirs can receive income from the exploitation of said image, in countries where the transmission of said intangible right is recognized[3]. Furthermore, it is recommendable that the Right of publicity is only applicable to natural persons. Despite the fact that the Right of publicity does not protect privacy intrusion events as such, a personal interest is also protected. It is not desirable to extend this right to fictional characters and despite the advancement of technology that allows the creation of new fictional characters with greater ease. Since there are other forms of protection already existing for fictional characters such as trademarks or in some events by copyright or unfair competition, the Right of Publicity should be reserved exclusively to humans. Likewise, it would be important to clarify that the Right of Publicity does not need a registration to be protected. Despite the existence of registration systems that constitute right of publicity rights such as the one administered in Guernsey[4], it is not recommended that said right be capable of protection with registration. It should be protected by its mere existence.

– Rules on assignment and duration should also be included.

The majority of Latin American laws provide certain rules on license and assignments of intellectual property rights, however, in the case of publicity rights there is also a big absence on regulation of this subject. Certain laws from different states from the United States such as Florida allows at least the possibility of assignment for living persons and the assignment by heirs when the postmortem right is allowed. Some other examples even admit the partial or total assignment of the Right as it is permitted in the Alabama Right of Publicity Act or the possibility of licensing in whole or in part as it is fixed on the State Washington Law. The duration of the Right of Publicity is another aspect that should be included in any future regulation in order to prevent legal uncertainty or different interpretation on how many years those this right lasts. On this point, there is a current bill in Ecuador that proposes a perpetual duration of this right. This is one of the few examples in Latin America that pretends a broader regulation on the Right of Publicity Right, however, a perpetual right would not be a fair balance with the freedom of speech and a duration between 40 to 100 years after death such as the ones included in California, Nevada, Oklahoma, Texas and Arkansas is desired.

– Can this right may be transmitted to heirs?

The majority of Latin American Laws do not have rules on the transmissibility of publicity rights to heirs, certain succession norms could eventually apply. However, this is another point where a specific regulation is preferred. In comparative Anglo-Saxon jurisprudence and specifically in the case of the State of New York, there were cases in which the heirs of the deceased owner of the image could not prevent the commercial use and without authorization of the same, due to the non-existence of the so called “post-mortem rights”. For this reason, the State of New York recently approved the post-mortem right[5], following the steps of advanced legislation on the matter such as the one provided in the state of California that provides a Postmortem Right of 70 years after the death of a deceased personality. In the case of the State of New York said right lasts for 40 years after the date of death of a person. Despite the duration of the post mortem right is fewer in the new law of New York in comparison to the Californian Law, it is highly recommendable that in any Latin American initiative on this subject, a post-mortem right of publicity right should be another aspect that should be included.

Due to the weak regulation on the subject in Latin American countries, there are not many specific exceptions. Article 36 of the previously mentioned Copyright Law in Colombia establishes the exception on the use of portrait against “scientific, educational or cultural purposes in general or with facts or events of public interest or that have been developed in public”. Likewise, there is a bill to reform the Colombian civil code that establishes in its article 59: “journalistic, scientific, artistic or cultural purposes, which have no commercial, lucrative or advertising purpose.” Comparing both texts, it is important to highlight that the reform proposal does not include didactic purposes. This purpose is important as there would be no reason to request the respective authorization on that event in comparison to the exempted ones.

The aforementioned reform proposal leaves out certain situations that can be additionally considered as exceptions, such as the use of the image for parody or satire purposes or the following interesting provision of the State of Hawaii that perfectly balances the Right of Publicity with the Artist freedom of Speech by limiting the published copies in not more than five copies. Hawaii Revises Statue on Right of Publicity 482p7-2017[6]:

“(b) This chapter shall not apply to the use or authorization for use of an individual’s or personality’s name, voice, signature, or likeness, in, or to display, any of the following:

(1) Single and original works of fine art, including but not limited to photographic, graphic, and sculptural works of art that are not published in more than five copies;”.

– Enforcement and damages

There are some enforcement rules that may be used as a guide for possible future regulation on this subject in Latin America. The Right of Publicity statutes of California, New York, Illinois and Indian establish provisions on the plaintiff’s burden of proof for the demonstration of the causal link between the use of the image for commercial purposes. These statutes do not require that the person affected by the unauthorized use of their image evidence that they have already commercially exploited their image, this is an important provision that allows not only celebrities to enforce their right of publicity right but also any person that can be harmed by a right of publicity infringement. Despite said rules are included implicitly in the majority of Latin American Laws, there is a big absence on rules related to statutory damages or at least a specific criterion to determine the economic compensation that an infringer must pay to the Right of publicity owner. The most used criteria to determine the economic compensation is by applying intellectual property rights rules on enforcement, such as identifying the value of the license that the infringer would pay in case of obtaining an authorization or the income that the infringer has obtained by illegally selling the image of the right owner. However, the need of statutory rules on the amount of compensation that may be claimed before courts should be also an important solution to protect this right in a fair way.

Due to the repeated and constant infringements on the right of publicity in our current times, it is highly important that Latin American Lawmakers give the importance to this right that it deserves. Despite the advances on some Latin American countries on data protection rules that may be applicable to prevent the infringement on the Right of Publicity, the damages that the data owner can obtain are really low as the majority of sanctions are related with fines that should be paid directly to the State. Therefore, the creation of independent procedures to claim fair compensation on the right of publicity infringement is an urgent recommendation that should be implemented in Latin Countries.

[2] Article 53 of the Argentinian Civil Code, Article 16 of Bolivian Civil Code, Article 15 of the Peruvian Civil Code.

[3] https://www.natlawreview.com/article/new-york-passes-law-recognizing-post-mortem-right-publicity-and-creating-private

[4] http://ipo.guernseyregistry.com/index.aspx?articleid=3865

[5] https://www.natlawreview.com/article/new-york-passes-law-recognizing-post-mortem-right-publicity-and-creating-private

[6] https://law.justia.com/codes/hawaii/2017/title-26/chapter-482p/section-482p-7/