Navigating the Identity Thicket: Trademark's Lost Theory of Personality, the Right of Publicity, and Preemption

Abstract

Both trademark and unfair competition laws and state right of publicity laws protect against unauthorized uses of a person’s identity. Increasingly, however, these rights are working at odds with one another, and can point in different directions with regard to who controls a person’s name, likeness, and broader indicia of identity. This creates what I call an "identity thicket" of overlapping and conflicting rights over a person’s identity. Current jurisprudence provides little to no guidance on the most basic questions surrounding this thicket, such as what right to use a person’s identity, if any, flows from the transfer of marks that incorporate indicia of a person’s identity, and whether such transfers can empower a successor company to bar a person from using their own identity and, if so, when.

Part of the challenge for mediating these disputes is that both the right of publicity and trademark laws are commonly thought of as solely concerned with market-based interests. But this is not the case. As I have documented elsewhere, the right of publicity has long been directed at protecting both the economic and noneconomic interests of identity-holders. And, as I demonstrate here, it turns out that the same is true for trademark and unfair competition laws, which have long protected a person’s autonomy and dignity interests as well as their market-based ones.

After documenting and developing this overlooked aspect of trademark law, I suggest a number of broader insights of this more robust account of trademark law both for addressing the identity thicket and for trademark law more generally. First, I suggest that recognizing a personality-based facet of trademark law suggests a basis to limit the alienation of personal marks in some contexts. Second, this understanding shores up trademark’s negatives spaces, especially when truthful information is at issue. Third, recognizing trademark’s personality-based interests provides a partial explanation (and limiting principle) for some of its expansionist impulses.

Finally, and importantly, I contend that recognizing this broader vision of trademark law provides significant guidance as to how to navigate the identity thicket. I employ trademark preemption analysis to mediate disputes between trademark and right of publicity laws. Trademark preemption provides an avenue out of the thicket, but only if trademark law’s robust theory of personality is recognized. A failure to do so risks leaving us with one of two bad options: a right of publicity that acts as a “mutant” trademark law, swallowing up and obstructing legitimate rights to use trademarks, or alternatively with a shallow husk of trademark law (rooted solely in commercial interests) that swallows up publicity claims at the expense of personal autonomy and dignity. Trademark law already provides us with the tools to avoid both of these unsavory paths–if only we reclaim its lost personality.

Keywords: trademark law, unfair competition, right of publicity, preemption, identity thicket, identity, privacy, false endorsement, trademark preemption, conflict preemption, intellectual property, alienability, personality

JEL Classification: K11, K13, K22, K39, M31, M37, M54, O34, P14, Z22, J24, J4, J62