Bela George LUGOSI and Hope Linninger Lugosi, Plaintiffs, Respondents and Appellants, v. UNIVERSAL PICTURES, a Division of Universal City Studios, Inc., a corporation, Defendant, Appellant and Respondent.
In September 1930 Bela Lugosi and Universal Pictures Company, Inc. (Universal)1 concluded on agreement for the production on the film ‘Dracula’ in which Lugosi contracted to and did play the title role. Paragraph 4 of the agreement contained a grant of rights set forth in footnote.2
Respondents Hope Linninger Lugosi and Bela George Lugosi, widow and surviving son, respectively, of Bela Lugosi, filed a complaint against Universal on February 3, 1966 alleging that they were the heirs of Bela Lugosi (Lugosi) who died in 1956, and that Universal had, commencing in 1960, appropriated and continued to appropriate property which they had inherited from Lugosi and which was not embraced in Paragraph 4 of the agreement with Universal. Respondents assert that from 1960 until the present time, Universal entered into many licensing agreements which authorized the licensees to use the Count Dracula character. The licensing agreements executed by Universal list the particular movie and the date of the movie in which Lugosi appeared.
The issue as framed by the trial judge is: ‘[Respondents] seek to recover the profits made by [Universal] in its licensing of the use of the Count Dracula character to commercial firms and to enjoin [Universal] from making any additional grants, without [their] consent * * *. The action, therefore, raises the question of whether Bela Lugosi had granted to [Universal] in his contracts with [Universal] merchandising rights in his movie portrayal of Count Dracula, the nature of such rights, and whether any such rights, if retained by Bela Lugosi, descended to the [respondents] * * *.’
The trial court found in pertinent part that ‘the essence of the thing licensed’ by Universal to each of its licensees was the ‘uniquely individual likeness and appearance of Bela Lugosi in the role of Count Dracula.’ The finding was based upon uncontradicted evidence that it was Lugosi's likeness that was used in the merchandising of Count Dracula notwithstanding the fact that other actors (Christopher Lee, Lon Chaney and John Carradine) appeared in the Dracula role in other Universal films.
The trial court concluded that: Lugosi during his lifetime had a protectable property or proprietary right in his facial characteristics and the individual manner of his likeness and appearance as Count Dracula; that said property or proprietary right was of such character and substance that it did not terminate with Lugosi's death but descended to his heirs; and that respondents acquired all right, title and interest in and to said property under the will of Lugosi.
Respondents recovered a judgment for damages and an injunction. Universal appeals.3
Bram Stoker's 1897 novel ‘Dracula’ has always been in the public domain in the United States.4 Universal's film ‘Dracula,’ however, was copyrighted after the studio had purchased the motion picture rights from Florence Stoker, Stoker's heir, and from Hamilton Deane and John Balderston, the authors of the 1927 stage play ‘Dracula.’ (Lugosi had played Count Dracula in the 1927 Deane-Balderston Broadway play.) The trial court found, notwithstanding Universal's copyright in the film, that the character of Count Dracula as described in Stoker's novel is in the public domain in the United States.
Before discussing the applicable law, it should be noted:
There is no allegation in the complaint, no evidence in the record, and no finding of the court that Lugosi in his lifetime alone or with others used his name and/or likeness as Dracula or otherwise in connection with any business, product or service so as to impress a secondary meaning on such business, product or service.
However, Lugosi could have created during his lifetime through the commercial exploitation of his name, face and/or likeness in connection with the operation of any kind of business or the sale of any kind of product or service a general acceptance and good will for such business, product or service among the public, the effect of which would have been to impress such business, product or service with a secondary meaning, protectable under the law of unfair competition. (Johnston v. 20th Century-Fox Film Corp. (1947), 82 Cal.App.2d 796, 810, 187 P.2d 474.) The tie-up of one's name, face and/or likeness with a business, product or service creates a tangible and saleable product in much the same way as property may be created by one who organizes under his name a business to build and/or sell houses according to a fixed plan or who writes a book, paints a picture or creates an invention.5
The trial court found, and the parties have extensively briefed and argued, that the interest in question is one of ‘property’ as that term is defined in Civil Code section 654. We agree, however, with Dean Prosser who considers a dispute over this question ‘pointless.’ (Prosser, Privacy, 48 Cal.L.R. 383, 406 (1960).) ‘Once protected by the law, [the right of a person to the use of his name and likeness] . . . is a right of value upon which plaintiff can capitalize by selling licenses.’ (Emphasis added; Prosser, Law of Torts (4th ed. 1971), p. 807.)
In brief, Lugosi in his lifetime had a right to create in his name and/or likeness ‘. . . a right of value,’ which could have been transmuted into things of value or Lugosi could, if he elected not to exercise such right, protect it from invasion by others by a suit for injunction and/or damages. However, insofar as the record shows, Lugosi had no occasion in his lifetime to sue or restrain anyone because of a purported invasion of his right to commercially exploit his name and likeness.
Such ‘. . . a right of value’ to create a business, product or service of value is embraced in the law of privacy and is protectable during one's lifetime but it does not survive the death of Lugosi.
‘The law of privacy comprises four distinct kinds of invasion of four different interests of the plaintiff, which are tied together by the common name, but otherwise have almost nothing in common except that each represents an interference with the right of the plaintiff, in the phrase coined by Judge Cooley, ‘to be let alone.’ Without any attempt to exact definition, these four torts may be described as follows: as follows:
1. Intrusion upon the plaintiff's seclusion or solitude or into his private affairs.
2. Public disclosure of embarrassing private facts about the plaintiff.
3. Publicity which places the plaintiff in a false light in the public eye.
4. Appropriation, for the defendant's advantage, of the plaintiff's name or likeness.' (Emphasis added.) (Prosser, Privacy, supra, 48 Cal.L.R. 383, 389.)6
Assuming arguendo that Lugosi, in his lifetime, based upon publicity he received and/or because of the nature of his talent in exploiting his name and likeness in association with the Dracula character, had established a business under the name of Lugosi Horror Pictures and sold licenses to have ‘Lugosi as Dracula'7 imprinted on shirts, and in so doing built a large public acceptance and/or good will for such business, product or service, there is little doubt that Lugosi would have created during his lifetime a business or a property wholly apart from the rights he had granted to Universal to exploit his name and likeness in the characterization of the lead role of Count Dracula in the picture ‘Dracula.’
However, even on the above assumption, whether Lugosi's heirs would have succeeded to such property depends entirely on how it was managed before Lugosi died. Lugosi may have sold the property and spent the consideration before he died, or sold it for installment payments and/or royalties due after his death, in which latter event such payments and/or royalties would, of course, be a part of his estate.
‘There has . . . been a good deal of consistency in the rules that have been applied to the four disparate torts under the common name. As to any of the four, it is agreed that the plaintiff's right is a personal one, which does not extend to members of his family, inless, as is obviously possible, their own privacy is invaded along with his. The right is not assignable, and while the cause of action may or may not survive after his death, according to the survival rules of the particular state, there is no common law right of action for a publication concerning one who is already dead.’ (Emphasis added.) (Prosser, Law of Torts, supra, pp. 813–814.)
A number of decisions support the underscored conclusion.
In Maritote v. Desilu Productions, Inc., 345 F.2d 418 (7th Cir. 1965), cert, denied, 382 U.S. 883, 86 S.Ct. 176, 15 L.Ed.2d 124, the administratrix of the estate of Al Capone brought an action for unjust enrichment arising out of the defendants' alleged appropriation of the name, likeness and personality of Al Capone. The widow and son of Al Capone brought an action for invasion of their privacy, based on the same appropriation. The plaintiffs argued that the property rights of Al Capone, his name, likeness and personality, did not fall into the public domain upon his death, but passed to his heirs. Defendants argued that the action for unjust enrichment was in essence an action for the invasion of the right of privacy of Al Capone, which could not survive his death. The court agreed with the defendants, holding that the relief sought by the plaintiffs was essentially that of a claimed invasion of a right of privacy, and judgment was entered for the defendants. In support of its position, the court relied upon Dean Prosser's cited article ‘Privacy’ in 48 California Law Review 383.
In Schumann v. Loew's Incorporated, Sup., 135 N.Y.S.2d 361 (1954), some of the great-grandchildren of composer Robert Schumann brought suit against the defendant for misappropriation of a property right once belonging to the famous composer in the latter's name. Plaintiffs attempted to analogize the property right in a man's name to the right found in real property through citation of cases. In denying recovery to plaintiffs, the court stated:
‘None of them [cases cited by the plaintiffs] supports plaintiff's contention that a motion picture depicting the life of one who died almost one hundred years earlier is an infringement upon the deceased's property right in his name which descended to his heirs or next of kin.’ (Schumann v. Loew's Incorporated, supra, at p. 369.)
In James v. Screen Gems, Inc. (1959), 174 Cal.App.2d 650, 344 P.2d 799, the widow of Jesse James, Jr., brought suit against a film producer of a television show portraying the life of her husband. Both the first and second causes of action alleged that there had been ‘exploitation of plaintiff's deceased husband's personality and name for commercial purposes.’ (174 Cal.App.2d at p. 651, 344 P.2d at p. 800.) The court treated both causes of action as personal to the deceased so that even if there was an invasion of the right of privacy it was not a right that survived death.
When the right invaded was more strictly the privilege ‘to be let alone,’ the courts in this state have refused to extend to the heirs of the (potential) plaintiff the right to recover for the invasion of that right:
‘It is well settled that the right of privacy is purely a personal one; it cannot be asserted by anyone other than the person whose privacy has been invaded, that is, plaintiff must plead and prove that his privacy has been invaded. (Coverstone v. Davies (1952) 38 Cal.2d 315, 322–324, 239 P.2d 876; Werner v. Times-Mirror Co. (1961) 193 Cal.App.2d 11, 116, 14 Cal.Rptr. 208; James v. Screen Gems, Inc. (1959) 174 Cal.App.2d 650, 653, 344 P.2d 799; Kelly v. Johnson Publishing Co. (1958) 160 Cal.App.2d 718, 722, 325 P.2d 659; Metter v. Los Angeles Examiner (1939) 35 Cal.App.2d 304, 310, 95 P.2d 491; 4 Witkin, Summary of Cal. Law (8th ed.) Torts, § 342, p. 2605.) Further, the right does not survive but dies with the person.’ (Hendrickson v. California Newspapers, Inc. (1975) 48 Cal.App.3d 59, 62, 121 Cal.Rptr. 429, 431, hearing denied.)
There is good reason for the rule. The very decision to exploit name and likeness is a personal one. It is not at all unlikely that Lugosi and others in his position did not during their respective lifetimes exercise their undoubted right to capitalize upon their personalities, and transfer the value thereof into some commercial venture, for reasons of taste or judgment or because the enterprise to be organized might be too demanding or simply because they did not want to be bothered.
It seems to us rather novel to urge that because one's immediate ancestor did not exploit the flood of publicity and/or other evidence of public acceptance he received in his lifetime for commercial purposes, the opportunity to have done so is property which descends to his heirs. Yet respondents' claim boils down to this: now that Bela Lugosi is dead, they are the only ones who should have the opportunity to exploit their ancestor's personality.
If the opportunities of a person to exploit a name or likeness in one's lifetime is inheritable property, may it be assumed that if the first heirs thereof, like their immediate ancestor, do not exploit similar opportunities ties the right to do so is automatically transferred to succeeding heirs?
The law is that upon Lugosi's death anyone, related or unrelated to Lugosi, with the imagination, the enterprise, the energy and the cash could have in their own name or in a fictitious name, or a trade name coupled with that of Lugosi, have impressed a name so selected with a secondary meaning and realized a profit or loss by so doing depending upon the value of the idea, its acceptance by the public and the management of the enterprise undertaken.
After Lugosi's death, his name was in the public domain. Anyone, including respondents, or either of them, or Universal, could use it for a legitimate commercial purpose.
We are not prepared to say, however, that respondents or any person other than Universal could have attempted to build a business with a secondary meaning, which business exploited then ame Lugosi, and coupled Lugosi's name with that of Dracula. That question is not before us.
The learned trial judge, in holding that the name and likeness are ‘property’ which can pass to the heirs, relied on a line of cases which purport to recognize such a ‘property right’ as opposed to the right of privacy founded in tort (e. g., Haelan Laboratories v. Topps Chewing Gum (2d Cir. 1953) 202 F.2d 866; Uhlaender v. Henricksen (D.Minn.1970) 316 F.Supp. 1277; Cepeda v. Swift and Company (8th Cir. 1969) 415 F.2d 1205).
The question which these cases pose is this: if the right to exploit name and likeness can be assigned because it is a ‘property’ right (Haelan), is there any reason why the same right cannot pass to the heirs?
Assignment of the right to exploit name and likeness by the ‘owner’ thereof is synonymous with its exercise. In all of the above cases the owner of the right did assign it in his lifetime and, too, Lugosi did precisely this in his lifetime when he assigned his name and likeness to Universal for exploitation in connection with the picture Count Dracula. (Footnote 2.) Assertion by the heirs of the right to exploit their predecessor's name and likeness to commercial situations he left unexploited simply is not the exercise of that right by the person entitled to it.8 Thus, whether or not the right sounds in tort or property, and we think with Dean Prosser that a debate over this issue is pointless, what is at stake is the question whether this right is or ought to be personal.
The so-called right of publicity means in essence that the reaction of the public to name and likeness, which may be fortuitous or which may be managed or planned, endows the name and likeness of the person involved with commercially exploitable opportunities. The protection of name and likeness from unwarranted intrusion or exploitation is the heart of the law of privacy.
If rights to the exploitation of artistic or intellectual property never exercised during the lifetime of their creators were to survive their death, neither society's interest in the free dissemination of ideas nor the artist's rights to the fruits of his own labor would be served. Authority, as noted, supports the strong policy considerations which underlie the conclusion that the right is personal.
We hold that the right to exploit name and likeness is personal to the artist and must be exercised, if at all, by him during his lifetime.
The pertinent facts are undisputed and support a judgment in favor of Universal. The judgment appealed from is reversed and the trial court is directed to enter a judgment in favor of Universal for its costs. The cross-appeal is dismissed as moot. Costs of appeal to Universal.
1. Appellant Universal Pictures, a Division of Universal City Studios, Inc., is the survivor of Universal Pictures Company, Inc. Appellant and its predecessor corporation are referred to herein collectively as ‘Universal.’
2. ‘The producer shall have the right to photograph and/or otherwise produce, reproduce, transmit, exhibit, distribute, and exploit in connection with the said photoplay any and all of the artist's acts, poses, plays and appearances of any and all kinds hereunder, and shall further have the right to record, reproduce, transmit, exhibit, distribute, and exploit in connection with said photoplay the artist's voice, and all instrumental, musical, and other sound effects produced by the artist in connection with such acts, poses, plays and appearances. The producer shall likewise have the right to use and give publicity to the artist's name and likeness, photographic or otherwise, and to recordations and reproductions of the artist's voice and all instrumental, musical, and other sound effects produced by the artist hereunder, in connection with the advertising and exploitation of said photoplay.’ (Emphasis added.)
3. The trial court also held that respondents' claim arising from the sales of merchandising rights under licensing agreements entered into by Universal prior to February 3, 1964 were barred by the statute of limitations. Respondents cross-appeal from the judgment to the extent it omitted an award on claims arising prior to 1964.
4. Stoker failed to comply with the United States deposit requirements in effect in 1897. In England and other countries adhering to the Berne Convention the novel passed into the public domain in April 1962.
5. In Johnston, supra, the court says at page 810, 187 P.2d at page 483: ‘An idea given embodiment in tangible form is the subject of common law property right.’Thus, the idea to sell commercial tie-ups if it had been crystallized into a business by Lugosi during his lifetime would have resulted in property as that term is defined in Civil Code section 654. (See discussion in Johnston, supra, p. 808, 187 P.2d 474.)
6. Item 4 of Dean Prosser's classification of invasions of privacy has been complemented legislatively by Civil Code section 3344, adopted in 1971.
7. For the purpose of the illustration, we assume respondents' position that Universal would have had no conflicting rights. As stated infra we do not decide this question.
8. We have analyzed Price v. Hal Roach Studios, Inc., 400 F.Supp. 836, which relies in part on the trial court's opinion. We are not persuaded by Roach that because rights such as at bench were allegedly assignable they are by virture of that fact ‘property’ that survive the death of the person who owns and controls them. In Roach, by the assignment of rights such as these, the assignor necessarily elected not to sue the assignee and chose instead to exercise the rights, and benefits, flowing from name and likeness by and through the assignment itself. In such an instance the assignment is in all respects a personal assertion of the right of publicity. This is not the case when an heir is invested by operation of law with the opportunity to exercise a personal right which was never exercised by the person who owned and controlled those rights.
ROTH, Presiding Justice.
COMPTON and BEACH, JJ., concur.