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Navigating the Identity Thicket
by JENNIFER E. ROTHMAN Nicholas F. Gallicchio Professor of Law
In “Navigating the Identity Thicket: Trademark’s Lost Theory of Personality, the Right of Publicity, and Preemption,” published in the Harvard Law Review, Rothman explores the problems created by overlapping and conflicting rights in a person’s identity – what she calls an “identity thicket” — and proposes an analytical framework for addressing the issue.
“Current jurisprudence provides little to no guidance on the most basic questions surrounding this thicket,” writes Rothman. “It is unclear what right to use a person’s identity, if any, flows from the transfer of marks that incorporate indicia of that person’s identity. Nor is it clear whether such transfers can empower a successor company to bar a person from using their own identity, and if so, when.”
The Identity Thicket
Rothman explains that “[b]oth trademark and unfair competition laws and state right of publicity laws protect against unauthorized uses of a person’s identity.” Increasingly, though, 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 entanglement of conflicting rights rooted in a person’s identity is what Rothman terms the “identity thicket.”
“The increasing discord between right of publicity and trademark claimants and among identity-holders, publicity-holders, and markholders is a result of a variety of factors,” writes Rothman, “including the exponential rise in right of publicity claims, combined with an expansion in the right’s scope since the 1980s . . . and an everincreasing awareness of the availability of such claims.” Rothman also notes that trademark law itself has expanded to allow liability for “confusion as to sponsorship and affiliation (rather than solely on the basis of source confusion), a highly relevant expansion when it comes to protecting rights rooted in a person’s identity.” Other broader societal changes have also played a role, such as the increase in the “value and importance of rights over one’s identity . . . with the rise of social media influencers and the ability to harness even an ordinary person’s identity to market to their circle of online friends. There is also an increasing awareness that individuals can register their own names and images as marks for their personal services, including endorsement services.”
Rothman considers several cases that illustrate how muddled the situation has become, such as one brought against a famous fashion designer who sold his eponymous fashion line and then wanted to continue to work in the field, another brought against a
young designer whose former employer claims to own her name and associated social media accounts, and one brought against the CocaCola company by the heirs of a long-dead juice maker for using his name on a product line that the company purchased, claiming the use violated postmortem publicity rights.
Rothman suggests that the best way through “this thicket of rights is to begin with the objectives of trademark and unfair competition law.” “Because the most commonly asserted of these laws are federal, as codified in the Lanham Act,” Rothman employs preemption analysis to guide an approach to mediate the conflict with state publicity laws. “Under such an approach, the Lanham Act should preempt right of publicity claims that “stand[] as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress.” Making such a determination, requires engaging with the purposes and objectives served by federal trademark and unfair competition law.
Personality Theory of Trademark Law
Although “today’s dominant account of trademark law is market based and focuses on the interests of both markholders and consumers,” Rothman demonstrates that these laws “also seek to protect the personality of individuals, often (but not always) the founders of businesses. This lost facet and objective of trademark and unfair competition law — far from being consigned to the dustbin of history — is still alive, and is particularly vital to illuminate (and shore up) as individuals increasingly seek trademark protection for their own names and likenesses in the context of their own personal services. This inquiry is also essential given the increasing clash between state right of publicity laws directed at protecting a person’s identity and federal trademark law.”
Rothman observes that scholars have largely overlooked this personality-based aspect of trademark law, and in the article she turns to reclaiming this lost strand of the law. Rothman demonstrates that “personality-based interests have long been a part of trademark law, and that they remain relevant today . . . particularly in the pockets of trademark and unfair competition laws that are most likely to intersect with the right of publicity.” She traces trademark law’s longstanding protection of individual autonomy and dignity to antiquity when artisans marked their goods with their own names and insignias. Rothman also notes that the “personality-based aspects of trademark law derived in part from an understanding of self-ownership that flowered in the late nineteenth and early twentieth centuries.” This understanding of the self and the interest in protecting identity also led to the adoption of the right of privacy at the end of the nineteenth century – which developed into today’s right of publicity and reflects a convergence of unfair competition and privacy laws in the pocket of cases sitting at the heart of the identity thicket.
Rothman highlights that “from the early days of AngloAmerican trademark and unfair competition law, a number of unique rules for personal marks existed.” Rothman defines personal marks as those composed in whole or in part of a natural person’s portrait, name, or other indicia. The unique rules for personal marks “were rooted in two distinct personality-based interests — the protection
of a person’s autonomy and right to control uses of one’s own identity, and the protection of a person’s dignity, in particular one’s reputation in the community.” Using “another’s identity in trade encompassed the same market-based harms of uses of anyone’s mark (no matter the kind) to pass off one’s goods as those of another,” but Rothman notes that “in the context of personal marks, these additional personalitybased justifications for trademark law played a more robust role.”
Rothman illuminates this personality-based aspect of trademark law through four doctrinal principles that treat marks differently when they are rooted in a person’s identity, and do so in ways that further interests in a person’s autonomy and dignity, sometimes at the expense of trademark’s market-based objectives. Even though the reasons behind these doctrines have become obscured through the mists of time, the doctrines persist in current law, and Rothman contends deserve shoring up, rather than dismantling. These doctrines include:
(1) the “natural right” to use one’s own name in trade;
(2) the prohibition on using another’s identity as a mark or to suggest endorsement of products or services without their permission;
(3) limits on the transferability of one’s own name or other selfidentifying marks; and
(4) the inability to abandon a personal mark.
Rothman demonstrates through caselaw spanning centuries how entrenched a personality theory of trademarks is in our current jurisprudence. She argues that such a theory not only remains relevant but is of “increasing importance as we see a rise in the use of personal marks and selfmarks, and their conflict with other rights held by identity-holders, including the right of publicity.”
What Trademark’s Personality Means for Trademark Law
Rothman’s analysis lends a host of insights not only for navigating the identity thicket, but also for trademark jurisprudence more broadly. Recognizing a “personality-based understanding of trademark law provides renewed support for limits on the transferability not only of publicity rights but also of some personal marks when they are inseparable from the underlying person.” It “also shores up trademark’s negative spaces,” by providing “yet another example of a well-developed carve-out from trademark enforcement” motivated by furthering “the provision of truthful information” and supporting competition, even sometimes in the face of consumer confusion.
Rothman’s development of a “theory of trademark law that includes consideration of personality rights” also provides an explanation for trademark’s current expansionist impulse that some have suggested stems from improper borrowing from state right of publicity laws.
Rothman suggests that this “aspect of trademark law appears to be (at least in part) internally (rather than externally) based.” She contends that understanding this origin allows for a sound basis to limit such expansions “to instances in which the claims are rooted in (and asserted by) a natural person” and in which personality-based interests may justify greater protection.
Trademark Preemption and What Trademark’s Personality Means for the Identity Thicket
Using the “more robust understanding of trademark law’s objectives, including its personality-based aspects,” that she has developed, Rothman then employs a “trademark preemption” analysis to determine when state publicity laws should yield to federal trademark and unfair competition law. She suggests that the “preemption analysis routinely employed in other areas of IP law could direct the resolution of these conflicts” between the right of publicity and the federal Lanham Act. Rothman contends that an understanding of trademark law that incorporates its “personality-based interests as well as market-based ones, provides a robust and normatively appealing approach to mediating” the conflicts between markholders and identity-holders.
Rothman writes that “the trademark regime should take precedence over conflicting state-based publicity rights,” but should do so in a way that gives “due respect to both the market-based and personality-based injuries that flow from the unauthorized use of a person’s identity.” As part of this inquiry, Rothman considers the interests furthered by state right of publicity laws and concludes that “when the right of publicity complements trademark law,” it should not be preempted, but “when state publicity rights significantly interfere with the rights of markholders,” such laws should be preempted. Rothman suggests that right of publicity claims that are really trademark claims “in disguise, asserted by a party who lacks (or sold or lost) the relevant trademarks,” should be preempted, as should instances in which state right of publicity claims are based solely on a markholder’s exercise of otherwise lawful uses of its marks. Publicity laws should also be preempted when they disrupt the objectives of trademark law — including its protections for “personality, consumers, and fair competition, and the latitude it provides for free speech.”
Rothman emphasizes that trademark law itself limits the ways that markholders can restrict identity-holders from using their own names and likenesses. This means that if a trademark holder is also a publicity-holder, it still cannot unfairly limit what an identityholder can do with their own identity. It also means that the right of publicity and trademark law may work in harmony rather than opposition when a right of publicity claim seeks to protect the personality interests of an identity-holder.
“Much as trademark law cannot be employed as a ‘mutant copyright law,’” Rothman writes, “the right of publicity cannot function as a mutant form of trademark law that restricts what trademark law permits. Trademark preemption provides an avenue out of this thicket, but only if trademark law’s respect for personality is recognized. In the absence of this understanding, trademark preemption would unacceptably threaten individual autonomy and dignity. People should not have to change their names or abandon their own identity and vocation simply because they have transferred their company and trademarks. And trademark law properly understood — taking into account its personality-based aspects — does not ask them to do so — in fact it specifically protects against such outcomes.”
