throbber
••
`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 1
`,
`FILED
`United States Court of Appe&li
`Tentb Circuit
`
`PUBLISH
`
`UNITED STATES COURT OF APPEALS
`
`TENTH CIRCUIT
`
`AUG 2 7 1996
`
`PATRICK FISHER
`Clerk
`
`CARDTOONS, L.C., an Oklahoma
`Limited Liability Company,
`
`Plaintiff - Appellee,
`
`v.
`
`No. 95-5006
`
`MAJOR LEAGUE BASEBALL
`PLAYERS ASSOCIATION, an
`unincorporated association,
`
`Defendant - Appellant.
`
`First Amendment Publishing, Inc.,
`Joseph Mauro, pro se,
`
`Amicus Curiae.
`
`APPEAL FROM THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF OKLAHOMA
`(D. Ct. No. 93-C-576-E)
`
`Russell S. Jones, Jr. (William E. Quirk with him on the briefs), Shughart,
`Thomson & Kilroy, Kansas City, Missouri, appearing for the Appellant.
`
`James W. Tilly (Keith A. Ward with him on the brief), Tilly & Ward, Tulsa,
`Oklahoma, appearing for the Appellee.
`
`Joseph Mauro, pro se, filed an amicus curiae brief for First Amendment
`Publishing, Inc.
`
`

`
`...
`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 2
`
`Before TACHA, LOGAN, and REAVLEY,* Circuit Judges.
`
`T ACHA, Circuit Judge.
`
`Cardtoons, L.C., ("Cardtoons") brought this action to obtain a declaratory
`
`judgment that its parody trading cards featuring active major league baseball
`
`players do not infringe on the publicity rights of members of the Major League
`
`Baseball Players Association ("MLBP A"). The district court held that the trading
`
`cards constitute expression protected by the First Amendment and therefore read a
`
`parody exception into Oklahoma's statutory right of publicity. MLBPA appeals,
`
`arguing that ( 1) the district court lacked jurisdiction to issue a declaratory
`
`judgment and (2) Cardtoons does not have a First Amendment right to market its
`
`trading cards. We exercise jurisdiction pursuant to 28 U.S.C. § 1291. Because
`
`Cardtoons' First Amendment right to free expression outweighs MLBPA's
`
`proprietary right of publicity, we affirm.
`
`·The Honorable Thomas M. Reavley, Senior Circuit Judge, United States Court of
`Appeals for the Fifth Circuit, sitting by designation.
`
`-2-
`
`

`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 3
`
`....
`
`~.
`
`I.
`
`Background
`
`Cardtoons formed in late 1992 to produce parody trading cards featuring
`
`caricatures of major league baseball players. Cardtoons contracted with a
`
`political cartoonist, a sports artist, and a sports author and journalist, who
`
`designed a set of 130 cards. The majority of the cards, 71, have caricatures of
`
`active major league baseball players on the front and humorous commentary about
`
`their careers on the back. The balance of the set is comprised of 20 "Big Bang
`
`Bucks" cards (cartoon drawings of currency with caricatures of the most highly
`
`paid players on the front, yearly salary statistics on the back), 10 "Spectra" cards
`
`(caricatures of active players on the front, nothing on the back), 10 retired player
`
`cards (caricatures of retired players on the front, humorous commentary about
`
`their careers on the back), 11 "Politics in Baseball" cards (cartoons featuring
`
`caricatures of political and sports figures on the front, humorous text on the
`
`back), 7 standing cards (caricatures of team logos on the front, humorous text on
`
`the back), and 1 checklist card. Except for the Spectra cards, the back of each
`
`card bears the Cardtoons logo and the following statement: "Cardtoons baseball is
`
`a parody and is NOT licensed by Major League Baseball Properties or Major
`
`League Baseball Players Association."
`
`A person reasonably familiar with baseball can readily identify the players
`
`lampooned on the parody trading cards. The cards use similar names,
`
`-3-
`
`

`
`' ...
`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 4
`
`recognizable caricatures, distinctive team colors, and commentary about
`
`individual players. For example, the card parodying San Francisco Giants'
`
`outfielder Barry Bonds calls him "Treasury Bonds," and features a recognizable
`
`caricature of Bonds, complete with earring, tipping a bat boy for a 24 carat gold
`
`"Fort Knoxville Slugger." The back of the card has a team logo (the "Gents"),
`
`and the following text:
`
`Redemption qualities and why Treasury Bonds is the league's most
`valuable player:
`
`1.
`2.
`3.
`
`4.
`5.
`6.
`7.
`8.
`
`Having Bonds· on your team is like having money in the bank.
`He plays so hard he gives 110 percent, compounded daily.
`He turned down the chance to play other sports because he has
`a high interest rate in baseball.
`He deposits the ball in the bleachers.
`He is into male bonding.
`He is a money player.
`He has a 24-karat Gold Glove.
`He always cashes in on the payoff pitch.
`
`NOTICE: Bonds is not tax-free in all states but is double exempt.
`
`At the end of the 1992 season, Barry Bonds was a two-time winner of the
`
`National League's Most Valuable Player award, a thre~-time winner of a Gold
`
`Glove award, and had just signed a six-year contract for $43.75 million, making
`
`him the highest-paid player in baseball. Richard Hoffer, The Importance of Being
`
`Barry: The Giants' Barry Bonds is the Best Player in the Game Today--Just Ask
`
`H.im, Sports Illustrated, May 24, 1993, at 13. No one the least bit familiar with
`
`-4-
`
`

`
`....
`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 5
`
`the game of baseball would mistake Cardtoons' "Treasury Bonds" for anyone
`
`other than the Giants' Barry Bonds. Other caricatures, such as "Ken Spiffy, Jr."
`
`of the "Mari-Nerds" (Ken Griffey, Jr., of the Seattle Mariners), are equally
`
`identifiable.
`
`The trading cards ridicule the players using a variety of themes. A number
`
`of the cards, including the "Treasury Bonds" card and all of the Big Bang Bucks
`
`cards, humorously criticize players for their substantial salaries. (The irony of
`
`MLBPA's counterclaim for profits from the cards is not lost on this panel.) Other
`
`trading cards mock the players' narcissism, as exemplified by the card featuring
`
`"Egotisticky Henderson" of the "Pathetics," parodying Ricky Henderson, then of
`
`the Oakland Athletics. The card features a caricature of Henderson raising his
`
`finger in a "number one" sign while patting himself on the back, with the
`
`following text:
`
`Egotisticky Henderson, accepting the "Me-Me Award" from himself
`at the annual "Egotisticky Henderson Fan Club" banquet, sponsored
`by Egotisticky Henderson:
`"I would just like to thank myself for all I have done. (Pause
`for cheers.) I am the greatest of all time. (Raise arms triumphantly.)
`I love myself. (Pause for more cheers.) I am honored to know me.
`(Pause for louder cheers.) I wish there were two of me so I could
`spend more time with myself. (Wipe tears from eyes.) I couldn't
`have done it without me. (Remove cap and hold it aloft.) It's friends
`like me that keep me going. (Wave to crowd and acknowledge
`standing ovation.)
`
`The remainder of the cards poke fun at things such as the players' names ("Chili
`
`- 5-
`
`

`
`. .,
`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 6
`
`Dog Davis" who "plays the game with relish," a parody of designated hitter Chili
`
`Davis), physical characteristics ("Cloud Johnson," a parody of six-foot-ten-inch
`
`pitcher Randy Johnson), and onfield behavior (a backflipping "Ozzie Myth," a
`
`parody of shortstop Ozzie Smith).
`
`The format of the parody trading cards is similar to that of traditional
`
`baseball cards. The cards, printed on cardboard stock measuring 2 Y2 by 3 Y2
`
`inches, have images of players on the front and player information on the back.
`
`Like traditional cards, the parody cards use a variety of special effects, including
`
`foil embossing, stamping, spectra etching, and U-V coating. Cardtoons also takes
`
`advantage of a number of trading card industry techniques to enhance the value of
`
`its cards, such as limiting production, serially numbering cases of the cards, and
`
`randomly inserting subsets and "chase cards" (special trading cards) into the sets.
`
`After designing its trading cards, Cardtoons contracted with a printer
`
`(Champs Marketing, Inc.) and distributor (TCM Associates) and implemented a
`
`marketing plan. As part of that plan, Cardtoons placed an advertisement in the
`
`May 14, 1993, issue of Sports Collectors Digest. That advertisement tipped off
`
`MLBP A, the defendant in this action, and prompted its attorney to write cease and
`
`desist letters to both Cardtoons and Champs.
`
`MLBP A is the exclusive collective bargaining agent for all active major
`
`league baseball players, and operates a group licensing program in which it acts
`
`- 6-
`
`

`
`...
`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 7
`
`as the assignee of the individual publicity rights of all active players. Since 1966,
`
`MLBP A has entered into group licensing arrangements for a variety of products,
`
`such as candy bars, cookies, cereals, and, most importantly, baseball trading
`
`cards, which generate over seventy percent of its licensing revenue. MLBP A
`
`receives royalties from these sales and distributes the money to individual
`
`players.
`
`After receiving the cease and desist letter from MLBP A, Champs advised
`
`Cardtoons that it would not print the parody cards until a court of competent
`
`jurisdiction had determined that the cards did not violate MLBP A' rights.
`
`Cardtoons then filed this suit seeking a declaratory judgment that its cards do not
`
`violate the publicity or other property rights of MLBP A or its members.
`
`Cardtoons also sought damages for tortious interference with its contractual
`
`relationship with Champs, as well as an injunction to prevent MLBP A from
`
`threatening legal action against Champs or other third parties with whom
`
`Cardtoons had contracted concerning the cards. MLBP A moved to dismiss for
`
`lack of subject matter jurisdiction, and counterclaimed for a declaratory judgment,
`
`injunction, and damages for violation of its members' rights of publicity under
`
`Oklahoma law.
`
`The district court referred the case to a magistrate, who issued his Report
`
`and Recommendation in favor of MLBP A. The magistrate stated that the parody
`
`-7-
`
`

`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 8
`
`cards infringed on MLBP A's right of publicity and that, under either a trademark
`
`balancing test or a copyright fair use test, Cardtoons did not have a First
`
`Amendment right to market its cards without a license from MLBP A. The district
`
`court initially adopted the magistrate's Report and Recommendation, Cardtoons.
`
`L.C. v. Major League Baseball Players Association, 838 F. Supp. 1501 (N.D.
`
`Okla. 1993), but subsequently vacated that decision and issued Cardtoons. L.C. v.
`
`Major League Baseball Players Association, 868 F. Supp. 1266 (N.D. Okla.
`
`1994 ). In its second opinion, the court wholly rejected application of a trademark
`
`balancing test to the right of publicity, and instead applied a copyright fair use
`
`analysis. Unlike the magistrate, however, the court held that a fair use analysis
`
`requires recognition of a parody exception to the Oklahoma publicity rights
`
`statute, and issued a declaratory judgment in favor of Cardtoons. This appeal
`
`followed.
`
`- 8-
`
`

`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 9
`
`••
`
`II.
`
`Jurisdiction
`
`MLBP A contends that the district court lacked jurisdiction over this case
`
`because there is no federal question, and because the suit does not involve a case
`
`or controversy. Whether this lawsuit involves a federal question, and whether a
`
`case or controversy exists, are separate inquiries. We turn to these questions
`
`below.
`
`A.
`
`Federal Question Jurisdiction
`
`MLBP A first contends that the district court lacked federal subject matter
`
`jurisdiction over this case. We review this threshold question de novo. United
`
`States ex rei. General Rock & Sand Corp. v. Chuska Dev. Corp., 55 F.3d 1491,
`
`1492 (lOth Cir. 1995). The Declaratory Judgment Act does not confer
`
`jurisdiction upon federal courts, Skelly Oil Co. v. Phillips Petroleum Co., 339
`
`U.S. 667, 671 (1950); Chandler v. O'Bryan, 445 F.2d 1045, 1054 (lOth Cir.
`
`1971), cert. denied, 405 U.S. 964 (1972), so the power to issue declaratory
`
`judgments must lie in some independent basis of jurisdiction. Here, in the
`
`absence of any pleading that invokes diversity jurisdiction, the relevant basis is
`
`federal question jurisdiction under 28 U.S.C. § 1331.
`
`District courts have original federal question jurisdiction over complaints
`
`that contain a claim that arises under federal law. 28 U.S.C. § 1331. In actions
`
`for declaratory judgment, however, the position of the parties is often reversed:
`
`-9-
`
`

`
`..
`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 10
`
`the plaintiff asserts a defense to an anticipated action by the declaratory judgment
`
`defendant. It is the character of the impending action, not the plaintiff's defense,
`
`that determines whether there is federal question jurisdiction. Public Serv.
`
`Comm'n v. Wycoff Co., 344 U.S. 237, 248 (1952). Thus, federal question
`
`jurisdiction exists in a declaratory judgment action if the potential suit by the
`
`declaratory judgment defendant would arise under federal law. Mobil Oil Corp.
`
`v. City of Lon~ Beach, 772 F.2d 534, 539-40 (9th Cir. 1985); ~Franchise Tax
`
`Bd. v. Construction Laborers Vacation Trust, 463 U.S. 1, 19 & n.l9 (1983).
`
`Accordingly, federal question jurisdiction in this case turns on whether
`
`there would be federal question jurisdiction over the well-pleaded complaint that
`
`MLBPA may bring against Cardtoons. The federal cause of action at issue here is
`
`a claim under section 43(a)(1) of the Lanham Act, which provides civil liability
`
`for any person who uses any "word, term, name, symbol, or device" in connection
`
`with goods or services that is likely to cause confusion "as to the affiliation,
`
`connection, or association of such person with another person, or as to the origin,
`
`sponsorship, or approval of his or her goods, services, or commercial activities by
`
`another person." 15 U.S.C. § 1125(a)(l). We evaluate the adequacy of the
`
`MLBP A's federal claim by the same standard that we would use to evaluate
`
`federal question jurisdiction if that claim were actually before us. See Janakes v.
`
`United States Postal Serv., 768 F.2d 1091, 1093-95 (9th Cir. 1985). Dismissal of
`
`- 10-
`
`

`
`•
`
`0
`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 11
`
`a complaint for lack of subject matter jurisdiction would only be justified if "that
`
`claim were 'so attenuated and unsubstantial as to be absolutely devoid of merit'
`
`or 'frivolous."' Baker v. Carr, 369 U.S. 186, 199 (1962) (citations omitted). This
`
`case clearly survives that test: MLBP A could have brought a nonfrivolous
`
`Lanham Act claim against Cardtoons alleging that Cardtoons' use of the names
`
`and likenesses of major league baseball players on its cards was likely to cause
`
`confusion as to the association of MLBPA with Cardtoons or as to MLBPA 's
`
`approval of the cards. Because MLBP A could have brought a federal Lanham
`
`Act claim as part of a well-pleaded complaint against Cardtoons, the district court
`
`had federal question jurisdiction over this declaratory judgment action.
`
`Cardtoons maintains, and the district court agreed, that the court also had
`
`jurisdiction over this action because it involves substantial First Amendment
`
`questions. This assertion is incorrect. It is well settled that we look to the nature
`
`of the anticipated claims of the declaratory judgment defendant, not the
`
`anticipated defenses by the declaratory judgment plaintiff, to determine the
`
`presence of a federal question. Wycoff, 344 U.S. at 248. "' [I]f, but for the
`
`availability of the declaratory judgment procedure, the federal claim would arise
`
`only as a defense to a state created action, jurisdiction is lacking."' Franchise
`
`Tax Bd., 463 U.S. at 16 (quoting lOA Charles A. Wright et al., Federal Practice
`
`and Procedure§ 2767, at 744-45 (2d ed. 1983)). In this case, the First
`
`- 11 -
`
`

`
`...
`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 12
`
`Amendment arises only as a potential defense to MLBP A's claimed right:
`
`MLBP A could neither bring an action based on the First Amendment nor assert a
`
`well-pleaded state claim that necessarily involved a First Amendment question.
`
`Thus, we cannot ground our jurisdiction on this basis because "the First
`
`Amendment as a defense does not constitute a basis for federal jurisdiction, for it
`
`is fundamental that anticipation of a defense cannot confer jurisdiction." Monks
`
`y. Hetherington, 573 F.2d 1164, 1166 (lOth Cir. 1978).
`
`B.
`
`The Controversy Requirement
`
`MLBP A further contends that this suit does not involve a case or
`
`controversy. We review this issue de novo. Federal Express Corp. v. Air Line
`
`Pilots Ass'n, 67 F.3d 961, 964 (D.C. Cir. 1995); ~New Mexico Eny't Dep't v.
`
`Foulston, 4 F.3d 887, 888-89 (lOth Cir. 1993), cert. denied, 114 S. Ct. 1372
`
`(1994). Federal courts may only decide cases or controversies, U.S. Const. art.
`
`III, § 2, a requirement that is no less strict in an action for a declaratory judgment
`
`than in any other type of suit, Altvater y. Freeman, 319 U.S. 359,363 (1943).
`
`Indeed, the requirement is reflected in the Declaratory Judgment Act, which limits
`
`application ofthe remedy to cases of"actual controversy." 28 U.S.C. § 220l(a).
`
`In order to satisfy this threshold requirement, there must be "a real and
`
`substantial controversy admitting of specific relief through a decree of a
`
`- 12-
`
`

`
`..
`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 13
`
`conclusive·character, as distinguished from an opinion advising what the law
`
`would be upon a hypothetical state of facts." Aetna Life Ins. Co. v. Haworth, 300
`
`U.S. 227, 241 (1937). In an intellectual property case, an actual controversy
`
`exists when (I) the declaratory plaintiff has produced or is prepared to produce
`
`the product in question and (2) the declaratory defendant's conduct has created a
`
`reasonable apprehension on the part of the declaratory plaintiff that it will face
`
`suit if it commences or continues the activity at issue. Spectronics Corp. v. H.B.
`
`Fuller Co., 940 F.2d 631, 634 (Fed. Cir.) (patent), cert. denied, 502 U.S. 1013
`
`(1991); Texas v. West Publishing Co., 882 F.2d 171, 175 (5th Cir. 1989)
`
`(copyright), cert. denied, 493 U.S. 1058 (1990); Indium Corp. y. Semi-Alloys.
`
`Inc., 781 F .2d 879, 883 (Fed. Cir. 1985) (trademark), cert. denied, 4 79 U.S. 820
`
`( 1986). The declaratory plaintiff bears the burden of establishing the existence of
`
`a controversy by a preponderance of the evidence. Texas v. West Publishing Co.,
`
`882 F.2d 171, 175 (5th Cir. 1989), cert. denied, 493 U.S. 1058 (1990).
`
`Cardtoons has carried its burden by establishing both elements of the case
`
`or controversy test. The first element is satisfied because Cardtoons had
`
`completed all work in preparation for production of the cards when it filed its
`
`declaratory judgment complaint. The second element is satisfied by MLBPA's
`
`cease and desist letter in which it threatened to pursue its "full legal remedies" if
`
`Cardtoons did not immediately stop production and sale of the cards. That letter,
`
`- 13-
`
`

`
`. "
`
`'·
`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 14
`
`along with MLBP A's history of suing other card companies in similar situations,
`
`.e....g._, Major League Baseball Players Ass'n v. Dad's Kid Corp., 806 F. Supp. 458
`
`(S.D.N.Y. 1992), created a reasonable apprehension on the part of Cardtoons of
`
`impending litigation.
`
`MLBP A argues that Cardtoons could not have reasonably feared a federal
`
`claim because MLBP A never explicitly threatened to bring a Lanham Act claim.
`
`As discussed above, whether MLBPA's potential suit could contain a federal
`
`claim is pivotal to our federal question jurisdiction. Whether MLBP A threatened
`
`to bring a federal claim, however, is immaterial to the controversy requirement,
`
`which is satisfied so long as MLBPA's conduct created a reasonable apprehension
`
`on the part of Cardtoons of the imminence of suit, with state or federal claims,
`
`upon publication. In any event, Cardtoons was reasonably apprehensive of a suit
`
`containing a federal claim given MLBPA's threat of pursuing its "full legal
`
`remedies" and its previous use of the Lanham Act in similar cases. Thus, the
`
`dispute between Cardtoons and MLBP A satisfies the case or controversy
`
`requirement.
`
`- 14-
`
`

`
`•<I
`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 15
`
`III. The Merits
`
`Cardtoons asks for a declaration that it can distribute its parody trading
`
`cards without the consent of MLBP A. There are three steps to our analysis of this
`
`issue. First, we determine whether the cards infringe upon MLBPA's property
`
`rights as established by either the Lanham Act or Oklahoma's right of publicity
`
`statute. If so, we then ascertain whether the cards are protected by the First
`
`Amendment. Finally, if both parties have cognizable rights at stake, we proceed
`
`to a final determination of the relative importance of those rights in the context of
`
`this case.
`
`A. MLBPA's Property Rights
`
`1.
`
`The Lanham Act
`
`We begin by determining whether the cards violate MLBPA's property
`
`rights under the Lanham Act. Section 43(a)(l) of the Lanham Act, 15 U.S.C. §
`
`1125(a)(l), creates a federal remedy for false representations or false designations
`
`of origin used in connection with the sale of a product. The statute provides civil
`
`liability for:
`
`(a)(l) Any person who, on or in connection with any goods or
`services, or any container for goods, uses in commerce any word,
`term, name, symbol, or device, or any combination thereof, or any
`false designation of origin, false or misleading description of fact, or
`false or misleading representation of fact, which--
`
`- 15-
`
`

`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 16
`
`~ ..
`
`(A) is likely to cause confusion, or to cause mistake, or to
`deceive as to the affiliation, connection, or association of such
`person with another person, or as to the origin, sponsorship, or
`approval of his or her goods, services, or commercial activities
`by another person, ....
`
`The hallmark of a Lanham Act suit is proof of the likelihood of confusion, which
`
`occurs "when consumers make an incorrect mental association between the
`
`involved commercial products or their producers." San Francisco Arts &
`
`Athletics. Inc. v. United States Olympic Comm., 483 U.S. 522, 564 (1987)
`
`(Brennan, J., dissenting), quoted with approval in Jordache Enters .. Inc. v. Hocc
`
`Wyld. Ltd., 828 F.2d 1482, 1484 (lOth Cir. 1987).
`
`Likelihood of confusion is a question of fact that we review for clear error.
`
`Jordache, 828 F.2d at 1484. The district court found that Cardtoons' parody cards
`
`created no likelihood of confusion. We agree that no one would mistake MLBP A
`
`and its members as anything other than the targets of the parody cards. Most of
`
`the cards have a Cardtoons logo and a statement that they are not licensed by
`
`MLBP A. In addition, as with all successful parodies, the effect of the cards is to
`
`amuse rather than confuse. "A parody relies upon a difference from the original
`
`mark, presumably a humorous difference, in order to produce its desired effect."
`
`I d. at 1486 (emphasis added). Cardtoons' success depends upon the humorous
`
`association of its parody cards with traditional, licensed baseball cards, not upon
`
`public confusion as to the source of the cards. The district court's decision that
`
`- 16-
`
`

`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 17
`
`the parody cards do not create a likelihood of confusion is not clearly erroneous,
`
`and thus the cards do not infringe upon MLBP A's property rights under the
`
`Lanham Act.
`
`2.
`
`The Right of Publicity
`
`The right of publicity is the right of a person to control the commercial use
`
`of his or her identity. 1 J. Thomas McCarthy, The Ri ~hts of Publicity and
`
`Privacy § 1.1 [A][ 1] (1996); see Restatement (Third) of Unfair Competition § 46
`
`( 1995). While the right was originally intertwined with the right of privacy,
`
`courts soon came to recognize a distinction between the personal right to be left
`
`alone and the business right to control use of one's identity in commerce.
`
`McCarthy, supra, §§ 1.1-1.6; Michael Madow, Private Ownership of Public
`
`Ima~e: Popular Culture and Publicity Ri~hts, 81 Cal. L. Rev. 127, 167-78 (1993).
`
`The latter was first acknowledged as a distinct privilege and termed the "right of
`
`publicity" in Haelan Laboratories. Inc. v. Topps Chewing Gum. Inc., 202 F.2d
`
`866 (2d Cir.), cert. denied, 346 U.S. 816 (1953). Haelan Laboratories,
`
`appropriately enough, involved two rival chewing gum manufacturers who were
`
`arguing over exclusive rights to use the image of a professional baseball player to
`
`promote their product. In resolving the dispute, the court concluded that "a man
`
`has a right in the publicity value of his photograph." ld. at 868. The court
`
`- 17-
`
`

`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 18
`
`•,
`
`explained:
`
`This right might be called a "right of publicity." For it is common
`knowledge that many prominent persons (especially actors and
`ballplayers), far from having their feelings bruised through public
`exposure of their likenesses, would feel sorely deprived if they no
`longer received money for authorizing advertisements, popularizing
`their countenances, displayed in newspapers, magazines, busses,
`trains and subways. This right of publicity would usually yield them
`no money unless it could be made the subject of an exclusive grant
`which barred any other advertiser from using their pictures.
`
`:uL. The development of this new intellectual property right was further cultivated
`
`by Melville Nimmer in his seminal article The Right of Publicity, 19 Law &
`
`Contemp. Probs. 203 ( 1954 ). Nimmer, who was counsel for Paramount Pictures
`
`at the time, Madow, supra, at 174 n.238, referred to "the needs of Broadway and
`
`Hollywood" in describing the foundations and parameters of the right, Nimmer,
`
`supra, at 203. The right of publicity is now recognized by common law or statute
`
`in twenty-five states. McCarthy, supra, § 6.1 [B].
`
`Like trademark and copyright, the right of publicity involves a cognizable
`
`property interest. Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562,
`
`573 (1977); Restatement {Third) of Unfair Competition§ 46 cmt. g. Most
`
`formulations of the right protect against the unauthorized use of certain features
`
`of a person's identity--such as name, likeness, or voice--for commercial purposes.
`
`See McCarthy, supra, §§ 4.9-4.15. Although publicity rights are related to laws
`
`preventing false endorsement, they offer substantially broader protection.
`
`- 18-
`
`

`
`..
`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 19
`
`Suppose, for example, that a company, Mitchell Fruit, wanted to use pop singer
`
`Madonna in an advertising campaign to sell bananas, but Madonna never ate its
`
`fruit and would not agree to endorse its products. If Mitchell Fruit posted a
`
`billboard featuring a picture of Madonna and the phrase, "Madonna may have ten
`
`platinum albums, but she's never had a Mitchell banana," Madonna would not
`
`have a claim for false endorsement. She would, however, have a publicity rights
`
`claim, because Mitchell Fruit misappropriated her name and likeness for
`
`commercial purposes. Publicity rights, then, are a form of property protection
`
`that allows people to profit from the full commercial value of their identities.
`
`Oklahoma first recognized the right of publicity as early as 1965, but
`
`expanded the right in a 1985 statute that is virtually identical to California's right
`
`of publicity statute, Cal. Civ. Code §§ 990 and 3344. The heart of the Oklahoma
`
`statute provides that:
`
`Any person who knowingly uses another's name, voice, signature,
`photograph, or likeness, in any manner, on or in products,
`merchandise, or goods, or for purposes of advertising or selling, or
`soliciting purchases of, products, merchandise, goods, or services,
`without such persons prior consent, ... shall be liable for any
`damages sustained by the person or persons injured as a result
`thereof, and any profits from the unauthorized use that are
`attributable to the use shall be taken into account in computing the
`actual damages.
`
`Okla. Stat. tit. 12, § 1449(A). Thus, a civil suit for infringement ofMLBPA's
`
`publicity right under § 1449(A) requires proof of three elements: (l) knowing use
`
`- 19-
`
`

`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 20
`
`of player names or likenesses (2) on products, merchandise, or goods (3) without
`
`MLBP A's prior consent. If MLBP A proves these three elements, then the burden
`
`shifts to Cardtoons to raise a valid defense.
`
`There is little question that Cardtoons knowingly uses the names and
`
`likenesses of major league baseball players. This is evident from an examination
`
`of the cards and the testimony of the president of Cardtoons, who conceded that
`
`the cards borrow the likenesses of active players. Indeed, the caricatures are only
`
`humorous because they, along with the parodied name, team, and commentary,
`
`are accurate ep.ough to allow identification of the players being parodied. The
`
`second and third elements of the statute are also satisfied. The cards are clearly a
`
`product, designed to be widely marketed and sold for profit. In addition, the
`
`parties have stipulated that MLBP A has not consented to Cardtoons' use of player
`
`likenesses. Cardtoons' parody cards, then, do infringe upon MLBPA's publicity
`
`right as defined in § 1449(A).
`
`The Oklahoma publicity statute contains two exceptions designed to
`
`accommodate the First Amendment. The first, a "news" exception, exempts use
`
`of a person's identity in connection with any news, public affairs, or sports
`
`broadcast or account, or any political campaign, from the dictates of the statute.
`
`Okla. stat. tit. 12, § 1449(D). The second exception, roughly analogous to the
`
`First Amendment concept of "incidental use," exempts use in a commercial
`
`-20-
`
`

`
`..
`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 21
`
`medium that is not directly connected with commercial sponsorship or paid
`
`advertising. Okla. stat. tit. 12, § 1449(F). The news and incidental use
`
`exceptions, however, provide no haven for Cardtoons. Cardtoons' commercial
`
`venture is not in connection with any news account. Moreover, the company's
`
`use of player likenesses is directly connected with a proposed commercial
`
`endeavor; indeed, the players were specifically selected for their wide market
`
`appeal. Thus, notwithstanding any First Amendment defense, Cardtoons' use of
`
`player likenesses on its cards violates the Oklahoma statute and infringes upon
`
`the property rights of MLBP A.
`
`B.
`
`Cardtoons' First Amendment Right
`
`Because the parody trading cards infringe upon MLBPA's property rights,
`
`we must consider whether Cardtoons has a countervailing First Amendment right
`
`to publish the cards. The First Amendment only protects speech from regulation
`
`by the government. Although this is a civil action between private parties, it
`
`involves application of a state statute that Cardtoons claims imposes restrictions
`
`on its right of free expression. Application of that statute thus satisfies the state
`
`action requirement of Cardtoons' First Amendment claim. ~New York Times
`
`Co. v. Sullivan, 376 U.S. 254, 265 (1964).
`
`Cardtoons' parody trading cards receive full protection under the First
`
`-21-
`
`

`
`..
`
`Appellate Case: 95-5006 Document: 01019281062 Date Filed: 08/27/1996 Page: 22
`
`Amendment. The cards provide social commentary on public figures, major
`
`league baseball players, who are involved in a significant commercial enterprise,
`
`major league baseball. While not core political speech (the cards do not, for

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket