Changes on the Horizon for Name, Image, and Likeness Rights: A Conversation with Andrew Avsec

Andrew Avsec, Crowell & Moring LLP (USA)

Name, image, and likeness (NIL) rights are a hot topic in the United States at the moment, following the Supreme Court’s judgment in the National Collegiate Athletic Association (NCAA) v. Alston case in 2021 and the growing sophistication of digital replicas and deepfakes.

There are currently three bills pending before Congress that address NIL rights, and there have been several hearings in the past year. INTA is monitoring developments closely and advocating for brand owners’ interests where appropriate.

Andrew Avsec is a partner at Crowell & Moring LLP, specializing in trademark, copyright, and right of publicity law, and is managing partner of the firm’s Chicago office. He is also Vice Chair of INTA’s Right of Publicity Committee.

In August this year, Mr. Avsec represented INTA in a roundtable hosted by the United States Patent and Trademark Office (USPTO) on the subject of NIL. Representatives of organizations that included the Motion Picture Association, the Digital Media Association, MLB Players, Inc., the Authors Guild, and the Computer and Communications Industry Association also took part in the roundtable.

Through the work of the Right of Publicity Committee, INTA has been looking into these issues for a number of years. INTA’s Board of Directors adopted a resolution on the Right of Publicity Minimum Standards in 2019, building on the Board Resolution of March 1998 on the need for a U.S. Federal Right of Publicity as an amendment to the Lanham Act.

The 2019 Resolution sets out seven minimum standards that governments and relevant international institutions should adopt in providing protection for a right of publicity. These standards cover eligibility, scope, what constitutes use, commercial value, post-mortem rights, registration, and fair use exceptions.

The Resolution states that the adoption of minimum standards will “improve the efficiency and effectiveness of efforts to clear, license, and use publicity rights in support of brands around the world. The process will equally benefit rights holders, by enhancing opportunities to license for those who wish to do so and, for those who do not, by minimizing inadvertent infringement resulting from unavailability of information and lack of transparency.”

In this interview, Mr. Avsec discusses the latest legislative developments, the impact of digital replicas and deepfakes, and what the future may hold for NIL rights.

How do you encounter NIL rights in your work and why are they important?
I have a mix of clients in a range of industries and offer a full range of services spanning trademark counseling, prosecution, disputes before the TTAB and courts, and advice on branding initiatives. I also advise clients on issues relating to the protection and licensing of rights relating to a person’s name, image, likeness, voice, or other personal characteristics—what are broadly called NIL rights.

NIL rights are based in the right of publicity in the U.S., which is state law, not federal law. This topic has become more popular since the Supreme Court decision in NCAA v. Alstom. That concerned collegiate athletes’ ability to profit from the right of publicity, but the term NIL is used to refer to anyone who has such rights.

NIL rights can be very valuable, and not just to sportspeople, artists, and models, but also and increasingly to influencers who have a social media platform. However, the ability to protect, maintain, and monetize NIL rights varies greatly depending on state law.

For example, there are significant differences between states concerning: how long the rights last, whether they continue post-mortem, and whether they can be assigned to a commercial entity. The laws are also in flux: New York recently adopted a post-mortem right of publicity, for example.

This hodgepodge of laws also raises issues about jurisdiction. For example, where you reside on death may determine whether or not you have post-mortem rights.

One of the challenges this poses, if you’re representing an organization that wants to take a license to NIL rights, is that it can be hard to determine what rights are owned and by whom. INTA has long advocated national uniformity partly because of this compliance headache.

Another issue is the interplay between NIL rights and other IP rights, such as trademarks. You could, for example, establish trademark rights in a name or symbol (such as Prince’s symbol) through use, and those could then be maintained indefinitely, even after the right of publicity has expired.

What proposals are there for legislation at the federal level and what impact would they have?
There’s definitely more momentum now than in the past. That’s largely because of the digital replica issue and the challenges that arise from generative artificial intelligence (AI). That’s led to more of a conversation about national uniformity. It’s a really interesting time for this issue.

There are currently three proposals being discussed in Congress. The Nurture Originals, Foster Art, and Keep Entertainment Safe (NO FAKES) and No Artificial Intelligence Fake Replicas and Unauthorized Duplications (AI FRAUD) bills would create a new type of right at a federal level concerning digital replication, so that would be a type of national NIL right.

The Preventing Abuse of Digital Replicas Act (PADRA) is a new proposed bill to amend the Lanham Act and is more about protecting digital replicas like we protect trademarks—if they qualify for protection—rather than a new right as such. One advantage of amending the Lanham Act in this way is that many issues are already answered by the large body of case law—for example, questions about liability.

Do these bills have any chance of being enacted?
There is a lot of momentum to stop what people view as problematic use of celebrity images to promote products, i.e., what are sometimes called deepfakes. Creating false or misleading photos, video, or audio is so much easier to do than it used to be, and there is a feeling that the existing law does not go far enough to regulate it.

Given this momentum, I expect something will eventually pass. There is a broad acceptance that the toolkit is currently limited, and the hodgepodge of protections means we need some uniformity on certain points. For example, some of the bills include language addressing disclosure, so people can identify what are deepfakes and what is real, and consumers appreciate that.

From the commercial point of view, it’s also important to make it clear if there are certain uses that are not permissible—for example, where the use of images would lead to significant harm.

However, there is also a valid debate about protecting freedom of expression to enable criticism, comment, and parody. Each bill takes a different approach to balancing these interests.

The big unknown at this stage is: can there be some momentum to develop broader rights of publicity at the federal level or is it going to be focused just on deepfakes? As the technology becomes more sophisticated, it is important to regulate to ensure that AI is used in a responsible way.

Are cases concerning NIL rights becoming more common? And if so, why?
If you look at the statistics behind NIL cases, the biggest spike came after the NCAA case when people began to monetize their rights. That has leveled off a bit in the last couple of years. However, there are probably a lot more enforcement actions taking place behind the scenes through takedowns on online platforms that don’t require public filings.

Most of the platforms have some mechanism for removing content that violates their terms and conditions, and that can include protecting rights of publicity. If a clearer law is passed, their responsibilities should become clearer. Such a law could also provide incentives such as limited immunity in certain circumstances. That has been effective with the Digital Millenium Copyright Act (DMCA), which created safe harbors for online intermediaries.

It’s important for rights’ owners to have a tool to secure prompt action because social media posts can create a lot of impressions straight after they’re posted. You want to be able to stop them before they go viral; otherwise, significant harm has already been done. The remedies that courts can provide in these circumstances are limited.

How is INTA involved in these discussions?
Conversation between all stakeholders is an important part of the process. It’s important to see members of Congress putting out solutions, and the timing of the bills being made public is also important.

In August, the USPTO asked INTA to weigh in on this issue, and I was pleased to take part in that conversation. INTA passed a Board Resolution on Right of Publicity Minimum Standards back on March 27, 2019, but it is still a relatively new issue for INTA and more work is now being done in light of the legislative proceedings. In particular, we are looking at whether we need to be more specific around digital replicas.

INTA’s view is that some level of uniformity is necessary as it helps organizations with compliance and ensures that rights are protected and not misappropriated.

Is an international solution also needed, and to what extent is that likely to be possible?
There’s work being done internationally in a number of markets. INTA’s Right of Publicity Committee has evaluated laws around the world and continues to examine this issue. The 2019 Right of Publicity State of the Law Survey covers right of publicity statutes in 16 countries and Guernsey and is available to members on the INTA website.

In general, IP rights are probably an area where there is often more uniformity than in other areas of law. Rights of publicity have in the past been tied to personal rights, but with the rise of global celebrities and sponsorship deals, video-sharing technology, and, of course, AI, they are being pushed more to the fore.

How do you think things will develop in the next five years or so?
There’s no doubt this issue will continue to evolve in new directions. We are seeing an explosion in NIL rights, especially from student athletes.  And, of course, deepfakes continue to become more sophisticated and convincing.

Members of Congress are also weighing what digital replica rights might mean for their constituents and each other. Not only have politicians increasingly become the subject of deepfake scams, but they regularly hear about real-world harms from digital replicas in their states and districts — from fake pornographic material spreading across teenagers’ social media accounts to professional artists highlighting the risk that deepfakes pose to their livelihoods. NIL issues have become very tangible and very personal to federal and state policymakers. So, we will likely see some legislation passed in this timeframe, but it may not be the full federal harmonization of Right of Publicity rights like we saw with the Defend Trade Secrets Act in 2016. There is a lot of momentum, but it is more focused and each of the bills takes a different approach.

We will likely see some legislation passed in this timeframe, but I doubt we will see full federal harmonization like we saw with the Defend Trade Secrets Act in 2016. There is a lot of momentum, but it is more focused, and each of the bills takes a different approach.

One thing for sure, we will see continued growth in the individual value of NIL rights. That comes from a push for authenticity in advertising and the extent to which people connect with influencers and athletes. That is a much deeper connection than with traditional advertising. The value of those relationships between celebrities and fans will continue to grow, and we will see more innovation in how those rights are packaged.

There has also been a big shift in the nature of celebrity in recent years. People used to become celebrities as a result of their craft, but anyone can now develop a large following in their particular sector. Brands want to be able to reach that audience using the celebrities’ platforms.

It shows how the business of NIL has changed. It used to be the case that brands would create content and engage with celebrities. Now it is often the other way round: influencers are driving the content and brands want to be associated with that.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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