Michael Jordan Defeats Supermarket's First Amendment Defense in Dispute Over Congratulatory Ad

In September 2009, Michael Jordan was inducted into the Naismith Memorial Basketball Hall of Fame, at which time Sports Illustrated produced a special commemorative issue of Sports Illustrated Presents devoted exclusively to his legendary career.  Jewel Food Stores--the operator of 175 supermarkets in and around Chicago--was offered and accepted free advertising space in the special issue in exchange for agreeing to stock the magazine.

Jewel's full-page ad appeared on the inside back cover of the issue and included a photo of a pair of basketball shoes bearing Jordan's number 23, with text appearing above congratulating Jordan on his accomplishments and incorporating Jewel's slogan, followed by Jewel's logo in large type (the Seventh Circuit's opinion includes a picture of the ad).

Jordan sued Jewel for, among other claims, violations of the Illinois Right of Publicity Act and the Lanham Act, all based on the allegation that Jewel had misappropriated his identity for its commercial benefit.  He sought $5 million in damages plus punitive and treble damages.

Both parties moved for summary judgment:  Jewel claimed that the ad was noncommercial speech protected by the First Amendment; Jordan claimed the ad was a commercial use of his identity.  The district court concluded that Jewel's ad was fully protected noncommercial speech and therefore entered judgment for Jewel on all of Jordan's claims.

Although it characterized the district court's decision as "thoughtful," the Seventh Circuit nonetheless held that the court had erred in concluding that Jewel's ad constituted fully protected noncommercial speech and therefore reversed on that basis.

Before reaching the substance of the appeal, the Seventh Circuit discussed one issue of law that the parties' agreement allowed the court to avoid resolving.  The parties apparently agreed with the proposition that the First Amendment precluded application of the laws upon which Jordan's claims were based to any noncommercial speech as defined in the constitutional sense, thereby providing a complete constitutional defense.  But the law on that issue is "considerably more complex," the Seventh Circuit commented, and it was "far from clear that Jordan's trademark and right-of-publicity claims fail without further ado" even if Jewel's ad constituted noncommercial speech.  Nonetheless, because the parties had agreed otherwise, that issue was left for another day.

Moving on to the central issue, the Seventh Circuit discussed the varying definitions or descriptions of "commercial speech," including "speech that proposes a commercial transaction."  But "commercial speech" is not limited to speech that falls within that narrow definition; rather, speech can still be characterized as "commercial" if it contains both commercial and noncommercial elements.  In such instances, the court identified three non-exclusive considerations:  whether "(1) the speech is an advertisement; (2) the speech refers to a specific product; and (3) the speaker has an economic motivation for the speech."

Applying these considerations to Jewel's ad, the Seventh Circuit rejected Jewel's argument that the ad wasn't commercial speech because it didn't propose any commercial transaction.  Rather, the text of the ad must be considered in its context as well as the context of modern commercial advertising:

We know from common experience that commercial advertising occupies diverse media, draws on a limitless array of imaginative techniques, and is often supported by sophisticated marketing research.  It is highly creative, sometimes abstract, and frequently relies on subtle cues. . . .  An advertisement is no less "commercial" because it promotes brand awareness or loyalty rather than explicitly proposing a transaction in a specific product or service. . . .  Very often the commercial message is general and implicit rather than specific and explicit.

Such was true with Jewel's ad, the Seventh Circuit concluded, because it sought both to congratulate Jordan and promote Jewel's supermarkets.  The latter purpose was demonstrated by the prominent use of Jewel's logo in the center of the ad in type larger than any other on the page, and the explicit incorporation of Jewel's slogan ("just around the corner") into the text of the congratulatory message:

In short, the ad's commercial nature is readily apparent.  It may be generic and implicit, but it is nonetheless clear.  The ad is a form of image advertising aimed at promoting goodwill for the [Jewel] brand by exploiting public affection for Jordan at an auspicious moment in his career.

Finally, the Seventh Circuit clarified the "inextricably intertwined" doctrine:

Properly understood, . . . the . . . doctrine applies only when it is legally or practically impossible for the speaker to separate out the commercial and noncommercial elements of his speech.  In that situation the package as a whole gets the benefit of the higher standard of scrutiny applicable to noncommercial speech.  But simply combining commercial and noncommercial elements in a single presentation does not transform the whole into noncommercial speech.

So clarified, the doctrine did not apply to Jewel's ad and Jewel's constitutional defense to Jordan's claims was defeated.

The case cite is Jordan v. Jewel Food Stores, Inc., Appeal No. 12-1992 (7th Cir. Feb. 19, 2014).

California Court Concludes that First Amendment Provides Complete Defense to Publicity Rights Claim of Former Criminal Against Rapper

Plaintiff Ricky D. Ross is a former criminal who spent time in prison in connection with charges relating to cocaine trafficking.  He apparently gained some celebrity status as a result of "the enormous scale of his cocaine-dealing operations" and also received widespread coverage in the 1990s for a peripheral role in the Iran-Contra scandal.

Defendant William Leonard Roberts II is a former correctional officer turned apparently famous rapper who goes by the name "Rick Ross."  Although Roberts apparently referenced Ross's life story early in his career, Roberts denied that his performing name was based on plaintiff.  Roberts released his first commercial single in about 2005 and his lyrics often include references to running large-scale cocaine operations.

After a federal district court in California dismissed his federal claims and declined to exercise supplemental jurisdiction over his state law claims, Ross sued Roberts and other defendants in California state court alleging various state law claims all based on the allegation that Roberts had misappropriated Ross's name and identity to further Roberts's music career.

On defendants' motion for summary judgment, the trial court accepted defendants' statute of limitations argument, dismissing all of Ross's claims.  The appellate court affirmed that decision but on a different ground.

Specifically, although the issue was not argued in the trial court, the appellate court concluded that the First Amendment provided a complete defense to all of Ross's claims.

The court applied the "transformative test" adopted by the California Supreme Court to resolve conflicts between rights of publicity and rights of free speech and expression under the First Amendment.  As its name implies, the transformative test focuses on determining whether a work is transformative and specifically

looks at whether the celebrity likeness is one of the raw materials from which an original work is synthesized, or whether the depiction or imitation of the celebrity is the very sum and substance of the work in question.  We ask, in other words, whether a product containing a celebrity's likeness is so transformed that it has become primarily the defendant's own expression rather than the celebrity's likeness.

If the case presents a close question, the court also may make a subsidiary inquiry that asks "whether the marketability and economic value of the challenged work derive primarily from the fame of the celebrity."

The appellate court did not, however, find the facts of this case to present a close question, characterizing Roberts's First Amendment defense as "quite obvious."

We recognize that Roberts's work--his music and persona as a rap musician--relies to some extent on plaintiff's name and persona.  Roberts chose to use the name "Rick Ross."  He raps about trafficking in cocaine and brags about his wealth.  These were "raw materials" from which Roberts's music career was synthesized.  But these are not the "very sum and substance" of Roberts's work. . . .

    Roberts created a celebrity identity, using the name Rick Ross, of a cocaine kingpin turned rapper.  He was not simply an imposter seeking to profit solely off the name and reputation of Rick Ross.  Rather, he made music out of fictional tales of dealing drugs and other exploits--some of which related to plaintiff.  Using the name and certain details of an infamous criminal's life as basic elements, he created original artistic works.

The "subsidiary inquiry" of the transformative test only cemented the validity of the First Amendment defense for the appellate court, which concluded that it "defie[d] credibility to suggest that Roberts gained success primarily from appropriation of plaintiff's name and identity, instead of from the music and professional persona that he (and the other defendants) created."

The appellate court thus affirmed the trial court's grant of summary judgment in favor of the defendants.

The case cite is Ross v. Roberts, Appeal No. B242531 (Cal. Ct. App. Dec. 23, 2013).

What a Difference a Cause of Action (Maybe) Makes

On the same day, the same panel of judges of the Ninth Circuit issued two opinions addressing claims made by former football players (one NFL, one college) with respect to Electronic Arts' ("EA") football video games series Madden NFL and NCAA Football.  The causes of action in the two cases bore different monikers but the factual allegations were similar and yet one player won while the other lost.  In the end, the difference in the result may be explained--in part--by the unsurprising conclusion that the cause of action matters.

I will address the two cases in the order I happened to read them.

Brown v. Elec. Arts, Inc., Appeal No. 09-56675 (9th Cir. July 31, 2013):

Plaintiff Jim Brown played for the Cleveland Browns from 1957 to 1965, was inducted into the NFL Hall of Fame, and apparently is "widely regarded as one of the best professional football players of all time."  In short, there was no dispute that he was "a public figure whose persona can be deployed for economic benefit."

EA produces the Madden NFL video games series in which users control avatars representing professional football players (much more details about the games in the court's opinion).  All versions of Madden NFL include the current year's NFL teams and rosters and some versions include historical and all-time teams.  With respect to the latter versions of the games, no player names are used although they apparently are recognizable based on various information and attributes.  EA licenses the use of the names and likenesses of current NFL players but those licenses apparently do not cover former players like Brown.

Brown sued EA claiming its use of his likeness in Madden NFL violated Section 43(a) of the Lanham Act and asserting claims under California law for invasion of privacy and unfair and unlawful business practices.

EA filed a motion to dismiss, which the district court granted with respect to Brown's Lanham Act applying the so-called Rogers test.  With the dismissal of Brown's federal claim, the district court declined to exercise supplemental jurisdiction over his state-law claims.  Brown appealed.

The Ninth Circuit first rejected Brown's arguments that additional tests other than the Rogers test applied to his Lanham Act claim, concluding that the "only relevant legal framework for balancing the public's right to be free from consumer confusion about Brown's affiliation with Madden NFL and EA's First Amendment rights in the context of Brown's [Lanham Act] claim is the Rogers test."

The Rogers test comes from a Second Circuit case--Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)--brought by Ginger Rogers challenging the use of her name in the title of a movie, Ginger and Fred, as a violation of Section 43(a) of the Lanham Act. 

Because enforcing Section 43(a) in the context of a film might constrain expression in violation of the First Amendment, the Second Circuit employed a two-pronged test intended to address the competing interests.  Under the Rogers test, the Lanham Act does not apply to expressive works "unless the [use of the trademark or other identifying material] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [trademark or other identifying material] explicitly misleads as to the source or the content of the work."

Meeting the first prong of the Rogers test--that the trademark or identifying material have artistic relevance to the work at issue--is not an arduous burden.  As the Ninth Circuit said in another case involving a video game (Grand Theft Auto: San Andreas), "'the level of [artistic] relevance . . . merely must be above zero[.]'"  The Ninth Circuit had little difficulty concluding that EA's use of Brown's likeness in Madden NFL met this standard "[g]iven the acknowledged centrality of realism to EA's expressive goal, and the importance of including Brown's likeness to realistically recreate one of the teams in the game[.]"

Somewhat more interestingly, Brown argued that the "merely above zero" standard for artistic relevance makes the Rogers test "an inflexible and mechanical rule that more or less automatically protects expressive works regardless of the deception involved."  Although the Ninth Circuit agreed to some extent, at least implicitly, that the Rogers test tended to favor protection of expressive works, given the context, that made sense:  "The Rogers test is applicable when First Amendment rights are at their height--when expressive works are involved--so it is no surprise that the test puts such emphasis on even the slightest artistic relevance."

The Ninth Circuit then moved on to the second prong of the Rogers test under which the creator of an expressive work can face Lanham Act liability even having satisfied the first prong "if the creator uses the mark or material to 'explicitly mislead[] [consumers] as to the source or the content of the work.'"  The court emphasized that the creator must explicitly mislead consumers and unsurprisingly given that emphasis, it found that Brown had failed to allege facts to support such a showing.

Of note with respect to this second prong of the Rogers test, the Ninth Circuit rejected the relevance of Brown's consumer survey that demonstrated that a majority of the public believes that identifying marks can't be included in products without permission:

It is well established that the use of a mark alone is not enough to satisfy this prong of the Rogers test. . . .  Adding survey evidence changes nothing.  The test requires that the use be explicitly misleading to consumers.  To be relevant, evidence must relate to the nature of the behavior of the identifying material's user, not the impact of the use. . . .  "The risk of misunderstanding, not engendered by any explicit indication on the face of the [work], is so outweighed by the interest in artistic expression as to preclude application of the [Lanham] Act."

Thus, the Ninth Circuit concluded that Brown's Lanham Act claim could not survive the Rogers test and therefore affirmed the district court's dismissal of that claim.

Notably, the Ninth Circuit made a point of emphasizing that the appeal related only to Brown's Lanham Act claim and that "[w]ere the [California] state causes of action before us, our analysis may be different and a different outcome may obtain," citing to the second decision of the Ninth Circuit discussed below.

Continue Reading...

Seventh Circuit Affirms Dismissal of Invasion of Privacy and Misappropriation Claims Against Joan Rivers

Ann Bogie attended a stand-up comedy show featuring Joan Rivers at a casino in Wisconsin.  During the performance, Rivers told a joke about Helen Keller and was heckled by an offended audience member who had a deaf son.  The exchange was filmed and included in a documentary entitled Joan Rivers: A Piece of Work that was sold nationwide.

After the performance, Bogie gained entry to a backstage area where Rivers had exited that was closed to the general public.  Bogie asked Rivers to sign a copy of Rivers' book and the two engaged in a brief conversation in which "Bogie expressed frustration with the heckler and sympathy for Rivers."  (The Seventh Circuit quotes the full conversation in its opinion.)  The brief conversation was filmed, presumptively without Bogie's permission, and included in the documentary.  The film showed that there were at least three other individuals in close proximity to Bogie and Rivers during this conversation, which lasted 16 seconds, representing 0.3 percent of the 82-minute film.

Bogie sued Rivers and others for invasion of privacy and misappropriation of her image under Wisconsin law (which, it turns out, is modeled in part on New York law).  The district court dismissed Bogie's claims with prejudice on the defendants' motion to dismiss for failure to state a claim after viewing the film and Bogie appealed.

 After agreeing with the district court that Bogie's invasion of privacy claim could be decided as a matter of law based on viewing the scene in the film, the Seventh Circuit likewise agreed that both of her claims were subject to dismissal with prejudice.

As to Bogie's invasion of privacy claim, the Seventh Circuit concluded that Bogie could not prove that her conversation with Rivers occurred in a place (the backstage area) that a reasonable person would consider private:

[Bogie] voluntarily approached a celebrity just after a public performance.  Any reasonable person would expect to encounter some kind of a security presence, and indeed here that presence was visible.  Furthermore, the camera crew must have also been visible to Bogie as they were filming both Rivers and, of course, Bogie.  Courts have found that even performers themselves cannot count on a reasonable expectation of privacy in their own backstage areas.

The Seventh Circuit also concluded that Bogie could not prove that the alleged intrusion into her privacy would be highly offensive to a reasonable person, an objective test.  "The fact that Bogie was embarrassed to be filmed saying something she regrets having said and now deems offensive does not convert the filming itself into a highly offensive intrusion."

The Seventh Circuit also affirmed the dismissal with prejudice of Bogie's misappropriation claim, concluding that the documentary was subject to the newsworthiness exception to such claims and that the 16-second clip of Bogie was merely incidental.

The case cite is Bogie v. Rosenberg, Appeal No. 12-1923 (7th Cir. Jan. 17, 2013).

Ninth Circuit Resolves Dispute Over Ownership of Marilyn Monroe's Right of Publicity By Applying Judicial Estoppel

In a long-running dispute over ownership of Marilyn Monroe's right of publicity, the Ninth Circuit ultimately resolved the dispute through application of judicial estoppel, concluding that New York law applied to the question, that New York law did not provide for a posthumous right of publicity, and therefore Marilyn Monroe LLC did not inherit that right and could not enforce it against others.

The case began in 2005 when Marilyn Monroe LLC and its licensee ("Monroe LLC") sued Milton Greene Archives, Inc. and Tom Kelley Studios, Inc. ("Milton Greene") in Indiana, claiming ownership of Marilyn Monroe's right of publicity and alleging that Milton Greene was violating that right by using Monroe's image and likeness for commercial purposes without authorization.

Milton Greene then sued Monroe LLC and others in California seeking, in part, a declaration that Monroe LLC did not own Marilyn Monroe's right of publicity.

The cases were later consolidated in the Central District of California.

In May 2007, the Central District of California granted summary judgment in favor of Milton Greene, holding that Monroe LLC did not own Marilyn Monroe's right of publicity because at the time of her death in 1962, under either New York or California law, no right of publicity could have passed through her will.  Thus, because Monroe LLC had not inherited Marilyn Monroe's right of publicity, the district court concluded that it had no standing to assert those rights against Milton Greene.

In June 2007, in direct response to the Central District of California's decision, a California state senator introduced a bill, which was enacted in September 2007, that amended California law

to provide that the California statutory right of publicity is deemed to have existed at the time of death of any deceased personality who died before January 1, 1985; is a property right, freely transferable and descendible; and, in the absence of an express testamentary transfer, could pass through the residual clause in the will of the deceased personality.

Monroe LLC then sought reconsideration of the grant of summary judgment to Milton Greene based on this change in California law.

The Central District of California granted the motion for reconsideration but again granted summary judgment in favor of Milton Greene.  The issue came down to whether California or New York law applied, which in turn would be decided based on where Monroe was domiciled at the time of her death.  If she was domiciled in California, that state's law would apply and the amendment to the law permitted Monroe's right of publicity to pass to Monroe LLC through the residual clause of her will.  But if she was domiciled in New York, that state's law would apply and because "the New York legislature had rejected Monroe LLC's efforts to amend its laws to enact a similar descendible, posthumous right of publicity," Marilyn Monroe's right of publicity would have been extinguished at her death.  Ultimately, the district court concluded that judicial estoppel precluded Monroe LLC from arguing that Marilyn Monroe was domiciled in California when she died, that therefore New York law applied, and summary judgment in favor of Milton Greene was appropriate.

Although it took the long route, the Ninth Circuit ultimately agreed with the Central District of California, stating that "[t]his is a textbook case for applying judicial estoppel":

Monroe's representatives took one position on Monroe's domicile at death for forty years, and then changed their position when it was to their great financial advantage; an advantage they secured years after Monroe's death by convincing the California legislature to create rights that did not exist when Monroe died.  Marilyn Monroe is often quoted as saying, "If you're going to be two-faced, at least make one of them pretty."  There is nothing pretty in Monroe LLC's about-face on the issue of domicile.  Monroe LLC is judicially estopped from taking the litigation position that Monroe died domiciled in California.  Our conclusion in this regard is guided by the need to preserve the dignity of judicial proceedings that have taken place over the last forty years and to discourage litigants from "playing fast and loose with the courts."

(footnote omitted).  The Ninth Circuit's opinion details at some length Monroe LLC's "about-face" on the issue of Marilyn Monroe's domicile at the time of her death.

Thus, the Ninth Circuit concluded that Marilyn Monroe died domiciled in New York, New York law applied to the question whether Monroe LLC had the right to enforce her posthumous right of publicity, and because no such right exists under New York law, Monroe LLC could not enforce the right against Milton Greene or "others similarly situated."

The case cite is Milton H. Greene Archives, Inc. v. Marilyn Monroe LLC, Case Nos. 08-56471, 08-56472 (9th Cir. Aug. 30, 2012).

Ninth Circuit Clarifies Application of Single-Publication Rule to Websites

Charles Yeager filed suit in 2008 alleging, in part, that statements made on the website of Aviation Autographs--which sells aviation-related memorabilia including items related to or signed by Yeager, violated his common law right to privacy and California's statutory right to publicity.

As described by the Ninth Circuit, at his deposition in the action, "Yeager did not recall answers to approximately two hundred questions, including questions on topics central to this action."  But about three months later, in connection with his opposition to the defendants' motion for summary judgment, Yeager filed a declaration that allegedly contained "many facts that Yeager could not remember at his deposition."

The district court held that Yeager's declaration was a "sham," disregarded it with respect to facts that he could not remember at his deposition, and granted summary judgment to defendants on all of Yeager's claims.

The Ninth Circuit's published opinion addressed two issues:  the district court's conclusion that Yeager's declaration was a sham; and the district court's application of the single-publication rule to conclude that Yeager's common law right to privacy and statutory right to publicity claims were time barred.

As to the sham affidavit rule, the Ninth Circuit concluded, apparently for the first time, that an abuse of discretion standard applies to review of a district court's application of the rule.

The Ninth Circuit also rejected Yeager's contention that his declaration could not be a "sham" because it did not declare facts that contradicted facts testified to at his deposition.  Although "newly-remembered facts, or new facts, accompanied by a reasonable explanation, should not ordinarily lead to the striking of a declaration as a sham," here, the Ninth Circuit found it "implausible that Yeager could refresh his recollection so thoroughly by reviewing several documents in light of the extreme number of questions to which Yeager answered he could not recall" in his deposition and the number of exhibits used in the deposition to try to refresh his memory.

The Ninth Circuit then addressed the single-publication rule, which limits tort claims based on mass communications to a single cause of action that accrues upon the first publication of the communication.  Under that rule, the statute of limitations is reset when a statement is republished.

Here, there was no evidence that the defendants added any information about Yeager or changed the challenged statements about him on the website after October 2003, and thus, the district court applied the single-publication rule to conclude that Yeager's right to privacy and right to publicity claims, which were filed in 2008 and subject to a two-year statute of limitations, were time barred.

The Ninth Circuit affirmed, rejecting Yeager's argument that the website was republished for purposes of the single-publication rule, and the statute of limitations restarted, each time defendants made additions to or revised the content of the website, even if the additions or revisions did not pertain to Yeager.

Instead, the Ninth Circuit held that, at least under California law, "a statement on a website is not republished unless the statement itself is substantively altered or added to, or the website is directed to a new audience."  The court concluded that this holding was consistent with other cases and, from a policy perspective, "prevents freezing websites in anticipation of litigation."

The Ninth Circuit also issued an unpublished decision that rejected Yeager's other challenges to the grant of summary judgment to the defendants and the award of attorneys' fees to them.

The case cite is Yeager v. Bowlin, Case Nos. 10-15297, 10-16503 (9th Cir. Sept. 10, 2012).

Jury Awards $28.1 Million to Retired NFL Players

On November 10, 2008, a jury awarded a $28.1 million verdict ($7.1 million in damages and $21 million in punitive damages) against the National Football League Players Association and Players Inc. in a class action suit brought by retired NFL players.

In the suit, retired football players (including the named-plaintiffs Bernard Paul Parrish, Herbert Anthony Adderley and Walter Roberts, III) alleged various claims against the NFLPA in connection with "Group Licensing Agreements" or "Group Licensing Authorizations" ("GLAs").  Pursuant to these GLAs, the NFLPA obtained the (allegedly) non-exclusive right to market retired players' names, numbers, likenesses, voices, facsimile signatures, photographs, and biographical information with respect to licensed products such as trading cards, video games, and personal appearances and events.  The money generated by such licensing was to be "divided between the player and an escrow account for all eligible NFLPA members who have signed a group licensing authorization form."

But the plaintiffs alleged that the NFLPA failed to comply with this revenue-sharing obligation and thereby violated the GLAs as well as fiduciary obligations owed to the retired football players.  You can read a copy of the (heavily-redacted) Third Amended Complaint, without exhibits, here.

The jury found for the retired football players on both claims but only awarded damages ($7.1 million) on the breach of fiduciary claim plus the $21 million in punitive damages.

The case cite is Adderley, et al. v. National Football League Players Association, et al., No. C 07-00943 WHA (N.D. Cal.).

False Endorsement and "the Voice of God"

John Facenda won national acclaim for his work on various NFL Films becoming known to some football fans as "the Voice of God" because of the special qualities of his voice.  For decades, Mr. Facenda did worked on these films under an oral agreement, receiving a per-program fee.  But not long before he died of cancer in 1984, Mr. Facenda signed a standard release contract that stated that NFL Films enjoys "the unequivocal rights to use the audio and visual film sequences recorded of me, or any part of them . . . in perpetuity and by whatever media or manner NFL Films . . . sees fit, provided, however, such use does not constitute an endorsement of any product or service."

In 2005, NFL Films produced "The Making of Madden NFL 06," a 22-minute long production that was shown on the NFL Network eight times in a three-day span leading up to the release of the video game.  The program included three sentences read by Mr. Facenda that were taken from earlier NFL Films' productions (although they were apparently digitally altered to make them sound more like the synthesized speech from a computer) that totaled 13 seconds of the program.

Mr. Facenda's estate sued the NFL for false endorsement under Section 43(a) of the Lanham Act and for unauthorized use of name or likeness under Pennsylvania state law.  Specifically, as to the former claim, the Estate alleged that the use of the sound recordings of Mr. Facenda's voice falsely implied that the Estate had agreed to endorse the video game.  The case was split into liability and damages phases and, upon cross-motions for summary judgment on liability, the District Court granted summary judgment to the Estate on both claims.

 In a 60-page opinion, the Third Circuit reversed the grant of summary judgment on the Lanham Act false endorsement claim and remanded for trial but affirmed the grant of summary judgment to the Estate on the state law right of publicity claim.

As to the Lanham Act claim, the Third Circuit first rejected the NFL's First Amendment defense, concluding that the production was commercial speech and therefore declining to reach the issue of whether the Court would adopt the Rogers balancing test that weighs the public interest in avoiding consumer confusion against the public interest in free expression (in other words, it addresses the collision of the Lanham Act with the First Amendment).

Turning to the substance of the Lanham Act claim, the only prong at issue was the "likely to cause confusion" prong as the NFL did not contest that Mr. Facenda's voice could be protected as an unregistered mark and that the Estate owned the "mark." 

The Third Circuit, however, was exploring new territory as it had yet to announce the legal standard applying to false endorsement claims under Section 43(a).  The District Court had used the traditional 10-factor test from Section 43(a)(1)(A) cases as modified for false endorsement cases used by the Ninth Circuit.  With some modifications, the Third Circuit agreed with the District Court's use of these modified factors in false endorsement cases.  The Third Circuit also rejected the NFL's contention that claims under Section 43(a)(1)(A) required proof of actual confusion distinguishing between claims brought under that section versus those brought under Section 43(a)(1)(B) for false advertising.  Ultimately, the Third Circuit concluded that there were issues of fact (such as whether the NFL intended to profit unjustly from the use of Mr. Facenda's voice in the program) that precluded summary judgment.

As to the state law right of publicity claim, the Third Circuit readily agreed with the District Court's grant of summary judgment to the Estate.  The Court then turned to what appears to have been the NFL's primary argument, namely, that copyright law preempts the Estate's right of publicity claim.

The Third Circuit found no express preemption under Section 301(a) of the Copyright Act, in part because Pennsylvania's right of publicity statute required an additional element beyond what is required for a copyright infringement claim, specifically, that Mr. Facenda's voice have "commercial value."

The Court then went on to discuss--at some length--whether the right of publicity claim was impliedly preempted by copyright law because it clashed with the NFL's right to exploit its copyright.  As with the NFL's First Amendment argument, the commercial nature of the program was its downfall.  Relying on the premise that rights of publicity claims involving use of the work "for the purposes of trade" such as in an advertisement should not be preempted (as compared to claims involving expressive works), the Third Circuit concluded that the nature of the NFL program (which it characterized as a promotional piece) suggested that implied preemption was inappropriate.

The Third Circuit next turned to the release Mr. Facenda signed concluding that it did not support a finding of preemption.  The question in cases involving a contract and advertising was whether the plaintiff collaborated in the creation of a copyrighted advertising product.  If the plaintiff did, allowing the plaintiff to assert a right of publicity claim for use of its likeness in advertising would conflict with the copyright holder's rights.  But such was not the case here, the Third Circuit concluded.  To the contrary, Mr. Facenda participated in creating films documenting NFL games (presumably expressive works), not an advertisement for a football video game and the release he signed specifically preserved his right of publicity with respect to endorsements.  Thus, no implied preemption and summary judgment on this claim was affirmed.

 

Fantasy Baseball, Publicity Rights and the First Amendment

[Editor's Note:  Following is a guest post by Katherine Hendricks, a partner at Hendricks & Lewis.]

With the Supreme Court's denial of the petition for a writ of certiorari in June 2008, the Eighth Circuit's opinion in perhaps the most-watched right of publicity case in 2007 in C.B.C. Distribution & Marketing, Inc. v. Major League Baseball Advanced Media, L.P., will stand.

Fantasy sports operator, C.B.C. Distribution and Marketing, Inc. ("C.B.C."), brought a declaratory judgment action against the Internet arm of Major League Baseball, Major League Baseball Advanced Media, L.P. ("Advanced Media") to establish C.B.C.'s right to use--without license--major league baseball players' names and performance statistics in fantasy baseball.

In fantasy baseball, participants form fantasy teams by "drafting" players from major league teams before the season begins each spring.  Participants compete against other fantasy baseball "owners" who have put together their own teams.  Participants' success and that of their fantasy teams depend on the performance of the individual players on their actual teams during the major league season.  Participants pay fees to play and additional fees to trade players during the season.  (According to the Fantasy Sports Trade Association, the fantasy sports business is a $1.5 billion industry with 19.4 million players in the United States and Canada.  Bob Van Voris and Jeff St. Onge, Fantasy Sports Win Right to Player Names, Statistics (Update 5), bloomberg.com, October 16, 2007.)

From July 1995 through December 2004, C.B.C. had a license from the Major League Baseball Players Association ("MLBPA") to use the names, nicknames, likenesses, signatures, pictures, playing records and biographical data of each player as well as the logo, name and symbol of the MLBPA.  The license expired and was not successfully renegotiated with Advanced Media, the entity that had acquired all of the players' rights.  Fearful that Advanced Media would sue C.B.C. for continuing to operate its fantasy sports games without a license, C.B.C. sought declaratory relief in the Eastern District of Missouri.

The district court granted summary judgment to C.B.C., holding that it was not infringing any state-law rights of publicity but that even if publicity rights were implicated, the First Amendment trumped those rights.  The district court also addressed the question whether the players' rights of publicity claims would be preempted by copyright law, finding that the players' records were mere facts which did not involve the sine qua non of copyright: originality.  Because the players' names and playing records were not copyrightable, copyright preemption did not apply.

The Eighth Circuit concluded that the identities of major league players were being used for commercial advantage without their consent and thus, that they made out a cause of action for violation of their rights of publicity.  Nonetheless, these rights were outweighed by the First Amendment.  Because the court held that C.B.C.'s First Amendment rights in offering fantasy baseball products superseded players' rights of publicity, it did not reach the copyright preemption issue.

Weighing rights of publicity against First Amendment considerations is nothing new.  See, e.g., Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977).  Usually, courts conduct a fact-specific balancing test that compares the competing interest of the person's right of publicity with the public's right to be informed.  The outcome typically depends upon where the use falls on the continuum ranging form "news" (e.g., current events and political commentary) and "public interest" (e.g., fiction or satire), to "commercial speech" (like advertising).  See, e.g., Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959 (10th Cir. 1996) (a set of collectible trading cards with parody cartoons of major league baseball players accompanied by humorous text); Elvis Presley Enterprises, Inc. v. Capece, 950 F. Supp. 783 (S.D. Tex. 1996) (use of the trade name "The Velvet Elvis" by a nightclub, and its selling of frozen drinks called "Love Me Blenders" and a food item named "Your Football Hound Dog"); New Kids On The Block v. News America Pub. Inc., 745 F. Supp. 1540 (C.D. Cal. 1990), aff'd, 971 F.2d 302 (9th Cir. 1992) (the use by a newspaper and magazine of the "New Kids On The Block" trademark in connection with a "900-number" phone service to conduct polls regarding readers' favorite and "sexiest" members of the musical group).

The Eighth Circuit concluded that C.B.C.'s fantasy sports use falls within the "public interest" portion of that continuum.  Because baseball is "the national pastime" and the public has an "enduring fascination" with baseball's records and statistics, that data is due "substantial constitutional protection."  But perhaps more importantly, the information in question is "readily available in the public domain, and it would be strange law that a person would not have a first amendment right to use information that is available to everyone."

Although the court agreed the players' "identities are being used for commercial advantage," it concluded that the interests fulfilled by a right of publicity (namely, the right of an individual to reap the rewards of his or her endeavors and to earn a living) are "barely" implicated because major league baseball players are already "handsomely" rewarded and also have the opportunity to earn additional large sums from endorsements and sponsorships.

While one might initially and reasonably conclude that publicity rights are outweighed by the First Amendment, the rationale that rights of publicity are "barely" implicated if the holders of those rights already make lots of money is of little use as a general principle within the context of adjudicating publicity rights because those rights are generally most important to celebrities with real star power who more often than not find themselves "handsomely rewarded" for their endeavors.  It might have been preferable to conclude that the public's constitutional free speech interest in using publicly-available facts outweighs any player's individual monetary interest.

Publication of SSN on Court Website Does Not Violate Right of Privacy

In 2003, Cynthia Lambert had the misfortune of getting a speeding citation.  To her further misfortune, she later learned that the traffic citation--which included personal identifying information such as her driver's license number and Social Security number--had been published on the County Clerk of Courts' public website.  Lambert learned this fact after she was contacted by two stores who reported suspicious purchases made in her name by a person who used a driver's license that displayed her name, home address, birth date, driver's license number and Social Security number.  The stores suggested that the identity thief may have obtained Lambert's personal information from the County Clerk's website.  Indeed, when Lambert examined the citation on the website, she discovered that it, like the fake ID used by the identity thief, contained a driver's license number that was wrong by one digit.  Lambert--not unreasonably--asked that the information be removed from the website but the County Clerk's office refused, stating that removing the records "would require vast amounts of manpower."

So, Lambert filed suit, claiming, in part, that the publication of the citation violated her constitutional right to privacy under the Fourteenth Amendment.  Notably, by the time she filed suit, the police had apprehended a group of individuals who had used the personal information from the County Clerk's website to commit identity theft, including a woman who admitted that she had stolen Lambert's identity from the website.

Unfortunately for Lambert though, the District Court concluded that she had failed to state a claim because her claimed privacy interest was not "of a constitutional dimension."  While obviously sympathetic to Lambert's situation, the Sixth Circuit agreed with the District Court, concluding that she had not shown an infringement of a right that is "fundamental or implicit in the concept of ordered liberty," as required by Sixth Circuit precedent.

But the news wasn't all bad.  According to the Sixth Circuit (which characterized the decision to provide unfettered internet access to Social Security numbers "unwise"), the County Clerk "removed the citations in question" from the website and changed the local rules to protect sensitive personal information.

You can read the full opinion here.