The U.S. Supreme Court has declined to review the Eighth Circuit's decision in C.B.C. Distribution and Marketing, Inc. v. Major League Baseball Advanced Media, L.P. 1– the "Fantasy Baseball" case. It is an unfortunate missed opportunity to clarify the "Right of Publicity". The convergence of advertising ("brand building") and information-entertainment ("content") has already confused courts and practitioners attempting to apply existing precedents that had separated the world into "commercial" and "non-commercial" speech. As brands, media companies, celebrity bloggers, and others push harder to engage consumers who push harder and harder to avoid obvious commercial messages, publicity rights claims will multiply. This makes First Amendment protection all the more crucial. By letting the Fantasy Baseball decision stand, the Supreme Court has only further confused the analysis – an analysis which contains three fundamental issues: 1) whether the use is for advertising or trade, i.e., "commercial"; 2) whether content includes the identity of a person, and 3) whether that use is nonetheless protected by the First Amendment, i.e., a "Fair Use."

1. COMMERCIAL USE

The Eighth Circuit held, without any analysis, that the use of player names, statistics, and other information was commercial because the use was "for purposes of profit".

The Eighth Circuit rejected the District Court's finding that the Fantasy baseball games were not obtaining a commercial advantage from using the players' names and information. 2The Court simply stated that the Fantasy baseball game generated revenue and therefore was commercial. Most content - - books, magazines, films, etc. - - is created and disseminated for profit. The fact that an author sells the content has repeatedly been held not sufficient to determine whether the use is a "commercial" use in violation of the right of publicity.

2. THE EVER EXPANDING SCOPE OF IDENTITY

The right of privacy began with the use of "a person's name, picture or portrait." 3It has evolved into the use of a person's persona or identity. Today it may even encompass a context suggesting the identity of a person by virtue of his or her association with another person's intellectual property.4 Developments in this area continue to be confused.

A comprehensive analysis of this issue is contained in the Magistrate Judge's decision in the Fantasy Baseball case. The Magistrate Judge held that use of names of baseball players to identify their statistics did not constitute a commercial appropriation of a symbol of their identity. 5The Eighth Circuit rejected this ground for summary judgment holding: "when a name alone is sufficient to establish identity, the defendant's use of that name satisfies plaintiff's burden to show that a name was used as a symbol of identity."6

3. BALANCING THE FIRST AMENDMENT AND PUBLICITY RIGHTS CLAIMS

The Supreme Court, in its one case that it characterized as a Right of Publicity case,7 gave short shrift to the First Amendment but at least acknowledged that publicity rights claims have to be balanced against it. However, the Court provided no guidance on the factors to consider or how the balance should be struck. Chaos ensued.8 The Circuit Courts have been inconsistent and in open disagreement over how to apply the First Amendment protections to publicity rights claims. Indeed, the Ninth Circuit has yet to achieve a consistent framework -- on the one hand, virtually ignoring First Amendment protection for creative expression,9 and on the other hand applying the "reckless disregard" for the truth standard of First Amendment protection against libel claims,10 despite the Supreme Court's explicit rejection of that defense to publicity rights claims.11

Thus, the Fantasy Baseball case offered an opportunity for the Supreme Court to set out a coherent framework for addressing the balance between publicity rights claims and the First Amendment. Unfortunately the Supreme Court let stand a decision that offers no standard, leaving us with the Zacchini standard: "I know it when I see it."12

The Eighth Circuit held that there was a commercial appropriation of the players' names in fantasy baseball, but it had little difficulty finding that this commercial appropriation was protected by the First Amendment interest in the creative expression that is fantasy baseball. The Eighth Circuit found this to be an easy decision because baseball statistics are content – in this case, information about "the national pastime" -- that is protected by First Amendment values. Ironically, the Court based its decision in part on the compelling First Amendment defense Major League Baseball deployed in an earlier litigation involving the publicity rights claims of retired baseball players.13 (Note to purveyors of content: beware the First Amendment and Fair Use -- the content you want to use today may be the content you want to keep for yourself tomorrow.).

So with the Supreme Court silent, we are no clearer about the scope of publicity rights and First Amendment limits on publicity rights claims. The Eighth Circuit asserted that a suit on these claims is State Action, and courts are therefore required to consider First Amendment limits on publicity rights claims. And yet we are no closer to a coherent analysis of how to do this. Is it the transformative use test of Copyright Fair Use, as the California Supreme Court has opined?14 Is it the Reasonable Relationship test which previously served so well in New York, but is now uncertain?15 Is it the Predominate Use test enunciated by the Missouri Supreme Court?16 Or will we never get beyond "I know it when I see it," which is all the Supreme Court has offered up so far?17

Footnotes

1.505 F.3d 818 (8th Cir. 2007), cert. denied, 2008 WL 512723 (Jun. 2, 2008).

2.C.B.C. Distrib. and Mktg., Inc. v. Major League Baseball Advanced Media L.P. 443 F.Supp.2d 1077 (E.D. Mo. 2006).

3.N.Y. Civ. Rts. Law §§50, 51.

4.Wendt v., Host Int'l, Inc., 125 F.3d 806 (9th Cir. 1997).

5.C.B.C. Distrib. and Mktg., Inc. v. Major League Baseball Advanced Media L.P., supra note 2.

6.Id.

7.Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 566 (1977).

8.The Sixth and Tenth Circuits have openly criticized the Ninth Circuit. See Landham v. Lewis Galoob Toys, Inc. 227 F.3d 619, 626 (6th Cir 2000) and Cartoons v. Major League Baseball Players Ass'n., 93 F.3d 959, 970 (10th Cir. 996). See also white v. Samsung Elec. Of Am., Inc., 999 F.2d 1512 19th Cir 1992) (Kozinski, J. dissenting).

9.Wendt v. Host Int'l, Inc., 125 F.3d 806 (9th Cir. 1997).

10.Hoffman v. Capital Cities/ABC, Inc., 255 F.2d 1180 (9th cir. 2001).

11.Zacchini v. Scripps – Howard Broadcasting Co., 433 U.S. 562 (1977); Hustler Magazine v. Falwell, 485 U.S. 46, 52 (1988).

12.See Jacobellis v. Ohio, 378 U.S. 184 (1964) (Stewart, J. concurring).

13.Gionfriddo v. Major League Baseball, 94 Cal. App. 4th 400, 411 (2001).

14.Winter v. DC Comics, 69 P.3d 475, 134 Cal. Reptr. 634 (2003).

15.In Messenger v. Gruner & Jahr, USA, Pub, 706 N.Y.S. 2d 52 (2000), the New York Court of Appeals breathed new life into Binns v. Vitograph, Co., 210 N.Y. 51 (1913) and Spahn v. Julian Messenger, Inc., 18 N.Y. 2d 324 (1967) (gross fictionalization defeats First Amendment); and Notre Dame v. Twentieth Century-Fox Film Corp. 15 N.Y. 2d 940 (1965) (use of name in fiction must only be "incidental"); See Nieves v. HBO, Inc., 30 A.D.3d 1143 (2006).

16.Doe v. CT Cablevision, 110 S.W. 3d 363, 374 (Mo. 2003).

17.Zacchini v. Scripps – Howard Broadcasting Co., supra note 7.

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Rick Kurnit

Rick Kurnit has thirty years experience in the advertising and marketing services and publishing industries, representing advertisers, advertising agencies, public relations, promotion, and publishing companies. He has been selected by Best Lawyers in America in both Advertising Law and in Media Law; by Chambers USA Guide as one of America's foremost lawyers in Media and Entertainment; and by Law and Politics magazine as one of New York's "Super Lawyers" in Intellectual Property.

Rick has handled many of the leading cases defining the application of intellectual property law to advertising and marketing communications, including representing the defendants in the Vanna White, Woody Allen and Jackie Onassis look-alike cases; Viking Press, Nelson DeMille, Terry McMillan, and other authors and publishers in libel cases based on works of fiction; Prodigy in the Stratton Oakmont case and other cases defining online liability; John Deere in defining use of trademarks in comparative advertising; the maker of a smaller copy of the necklace from Titanic in defining the scope of parallel marketing; and "Gone With The Wind" in defining parody and copyright infringement. Rick has also handled numerous Lanham Act and comparative advertising cases.

In addition to all aspects of advertising and marketing communications, Rick advises marketing companies and individuals on mergers, acquisitions, succession plans, employment agreements, partnership agreements, stock option and phantom equity plans. Rick also serves as special advertising counsel for many leading advertisers.

Rick teaches advertising and intellectual property law and lectures regularly for the American Association of Advertising Agencies, the Promotion Marketing Association, the Association of National Advertisers, The Copyright Association of America, and the American Law Institute/American Bar Association. He has been a featured speaker at Beijing University; Harvard, Columbia, University of Pennsylvania, NYU, Fordham, and Cardozo Law Schools; and conferences in Asia, Europe, and North America. He is a member of the Board of Directors of the Art Directors Club and the Entertainment, Media & Technology Dean's Advisory Board at NYU's Stern School of Business.

Rick's published works include: the Advertising Law chapter in Corporate Legal Departments (2008); The Legal Side of the Creative Process a chapter in Advertising and Marketing Law (2005); "Restricting Speech on the Internet," a panel discussion, 8 Fordham Intel. Prop. Media L. J. 395 (1998); "Liability Online," 1 Journal of Internet Law 15 (1998); "Pornography on the Internet," a panel discussion, 14 Cardozo Arts and Ent. L. J. 343 (1996); "Right of Publicity in the Year 2020," a symposium, 20 Columbia-VLA Journal of Law and Arts 1 (1995); "Libel Claims Based on Fiction," 51 Brooklyn L. Rev. 401 (1985); and "The Forgotten Half of the Fairness Doctrine," 10 Harv. Civ. Rts. - Civ. Lib. L. Rev. 130 (1975).

Before joining Frankfurt Kurnit Klein & Selz, Rick served as law clerk to Thomas P. Griesa, of the Federal District Court in New York City, and was associated for five years with the law firm of Paul, Weiss, Rifkind, Wharton & Garrison. He is a graduate of Columbia College (AB, magna cum laude, 1972) Phi Beta Kappa, and Harvard Law School (JD, cum laude, 1975).

Areas of Expertise:

  • Advertising, Marketing and Public Relations
  • Branded Entertainment
  • Celebrity Branding
  • Corporate and Finance
  • Employment and Executive Compensation
  • Intellectual Property
  • Litigation
  • Publishing
  • Technology, eCommerce, and Privacy

www.fkks.com

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