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

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