By Robert J. Romano, Esq.
As one can surmise from watching any commercial on television, from reading any magazine on a newsstand’s shelf, or from just walking around New York City, professional athletes are consistently being used by sports marketers to endorse a variety of commercial goods and services. For example, New York Yankee shortstop Derek Jeter can be seen on TV riding around First Avenue in the hopes that those interested in purchasing a car will buy a Ford; Cole Haan Shoes has decided that Russian tennis star Maria Sharapova will position them to sell more shoes, handbags, and leather belts; and every athletic apparel company, whether it is Nike, Puma or Adidas, has a plethora of athletes helping them sell everything from headbands, to jerseys, to sneakers.
With the top 50 advertisers spending approximately $5.68 billion on sports marketing in 2011,[1] athletes are continually being asked to use their “on-field” accomplishments to promote commercial products “off-the-field”. In return, the athlete secures a lucrative contract that allows him or her to earn a substantial amount of money above and beyond what they make off their playing contracts and tournament winnings.
However, to protect the value of their identities and to thwart the exploitation of their name or likeness, athletes must rely on a legal theory that has evolved over the last century known as the “right of publicity”. The difficulty, however, is balancing this theory with the fundamental right of “freedom of expression” as guaranteed under the First Amendment.
This comment will provide a summary of the “right of publicity” and how it has protected athletes against the misappropriation of their identities for commercial purposes. I will first provide a brief history of how the theory has developed over the last century and then analyze how the First Amendment can be used as a defense against a “right of publicity” claim.
History & Background
The “right of publicity” grew out of the state law doctrine known as the “right of privacy” and has been identified as one of the four distinct invasion of privacy torts.[2] This legal theory recognizes that an individual has an “interest in controlling the commercial use of his or her identity and thus allows athletes to profit financially from the use of their name or likeness in products and services.”[3]
For years, however, even though the “right of publicity” theory was presumed to be viable, such a claim had never been tested in court by an athlete in an effort to protect his or her appropriated identity. This all changed when the court, in the matter of Haelan Laboratories, Inc., v. Topps Chewing Gum, Inc.,[4] recognized an assignable right to the “publicity value of one’s name and picture.”[5] The court in this matter did not allow Topps to sell baseball cards with player likenesses because those images had previously been licensed for a fee to a competitor. By not allowing Topps to use a baseball player’s likeness for commercial purposes without first obtaining the player’s consent or compensating him for such right, the court found that:
“[I]t is common knowledge that many prominent persons, 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, buses, 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.”[6]
The U.S. Supreme Court solidified an athlete to protect his or her identity by filing a “right of publicity” claim in the matter of Zacchini v. Scripps-Howard Broadcasting.[7] In this case, the court found that the plaintiff had a right of publicity in his “human cannonball” show and that his right was violated by a news report broadcasting the entire fifteen-second event.[8] The court came to describe the “right of publicity” as “analogous to the goals of patent and copyright law, focusing on the right of the individual to reap the rewards of his endeavors and having little to do with protecting feelings or reputation.”[9]
However, even though the courts have come to recognize the legal theory of the “right of publicity”, such a right is not absolute. The First Amendment of the U.S. Constitution allows for an individual to be free in expressing him or herself. [10] Because the First Amendment is a fundamental right guaranteed to every American citizen, it is a valid defense to a “right of publicity” claim. Therefore, a balance has to occur between exploiting the athlete for commercial purposes and protecting the rights provided to every citizen under the First Amendment.
The First amendment as a Defense to a “Right of Publicity” Claim
The First Amendment has been used to protect all forms of expression. The Restatement of Unfair Competition states that the “right of publicity as recognized by statute and common law is fundamentally constrained by the public and constitutional interest in freedom of expression.”[11] Therefore, courts have to balance an athlete’s “right of publicity” against another individual’s freedom of expression as guaranteed under the First Amendment. Because neither doctrine is absolute, courts must weigh the competing interests of publicity and free speech and then determine which is stronger in a particular circumstance. The problem, however, is that the U.S. Supreme Court has not provided a standard in which to accomplish such. Therefore, lower courts have incorporated concepts from other areas of law with similar underlying policies. The following are theories and concepts that can be used in a First Amendment defense to a “right of publicity” claim.[12]
a) News & Fact Dissemination
The disseminations of news and historical facts are the most widely accepted First Amendment defense to a publicity rights infringement claims.[13] This is because courts agree that the public has the right to receive news and information and such right surpasses the right of an athlete in protecting their “right of publicity.”
The court in Gionfriddo v. Major League Baseball[14]found that Major League Baseball, on its website, has the right to exhibit box scores, games summaries, and other information because these features are factual and similar to traditional news reports.
Therefore, if a party can demonstrate to a court that its primary purpose in using an appropriated identity is to provide factual information to the public, such may qualify for First Amendment protection.
b) Commercial Speech
In addition to the above, the court in Gionfriddo v. Major League Baseball[15] concluded that certain advertisements may violate an athletes’ right of publicity when “the plaintiff’s identity is used, without consent, to promote an unrelated product.”[16] The court acknowledged that the more unrelated the product is to the appropriated identity, the less constitutional protection the expression will receive. Or, in other words, purely non-commercial speech receives the highest form of protection, while entirely commercial speech receives some protection, but much less than its counterpart.
This being the case, if a party can show that a particular expression is more commercial in nature and should receive limited First Amendment protection; he or she can potentially defeat or weaken the opposing side’s freedom of expression defense argument.
c) Parody
Courts have concluded that what is termed as “entertaining” speech has equivalent constitutional protection as informing speech and therefore “parody” has been held to have full First Amendment protection.
In the matter of Cardtoons v. Major League Baseball Players Association,[17] where a company produced baseball cards featuring caricatures of real players, the court held that the defendant had “clearly appropriated the identity of the professional baseball players but had provided humorous and insightful commentary through its transformation of the athletes.”[18] The court stated, “Parody rarely acts as a substitute for an original work and thus does not economically affect the market for non-parodist works.”[19] In addition, the court found that if athletes gained control over parody works “they would use that power to suppress criticism, and thus permanently remove a valuable source of information about their identity from the marketplace.”[20]
Therefore, if a party can demonstrate to a court that the primary purpose in using an appropriated identity is for that of parody, such appropriation may qualify for First Amendment protection.
d) Copyright Preemption
The Copyright Act may, in certain cases, preempt a “right of publicity” claim. The court in KNB Enterprises v. Matthews,[21] found that preemption might occur when a party brings a claim that could have been brought under federal copyright laws. The court analyzed the matter using the following criteria:
The subject matter of the claim is work fixed in a tangible medium of expression and comes within subject matter of scope of copyright protection as described under the Copyright Act, and
The right asserted under state law is equivalent to the exclusive rights contained in Section 106 of the Copyright Act.[22]
For example, baseball players attempting to acquire the rights to their performance in a televised broadcast of a game were prohibited from pursuing publicity rights claims because the telecasts were fixed in a tangible form and thus the domain of copyright law.[23]
Conclusion
As technology continues to advance and innovation brings with it new methods of appropriating celebrity identities, the U.S. Supreme Court will have to develop a test that will balance the rights of both the athletes and those who wish to utilize their likeness for commercial purposes. The O’Bannon v. the NCAA[24] matter, currently pending in federal court in California, may provide for such an opportunity.
[1] http://www.sportsbusinessdaily.com/Journal/Issues/2012/06/04/Research-and-Ratings/Ad-spending.aspx
[2] William Prosser, Privacy, 48 Cal. L. Rev. 383, 389 (1960).
[3] Samual Warren and Louis Brandeis, The Right of Publicity, 4 Harv. L. Rev. 193 (1890).
[4] Haelan Laboratories, Inc., v. Topps Chewing Gum, Inc. 202 F.2d 866 (2d Cir. 1953).
[5] Id. at 868.
[6] Id. at 869.
[7] Zacchini v. Scripps-Howard Broadcasting, 433 U.S 562 (1977).
[8] Id. at 563-564.
[9] Id at 573.
[10] U.S. Const. art. I. Congress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the Government for a redress of grievances.
[11] Restatement (Third) of Unfair Competition Section 47, Comment c.
[12] This is not a complete list of First Amendment defenses to a “right of publicity” claim. For purposes of this paper, I have concentrated on the most viable.
[13] Peter A.Carfagna, Publicity Rights and The Professional Athlete, at 87 (Thompson Reuters 2009).
[14] Gionfriddo v. Major League Baseball, 114 Cal. Rptr. 2d 307 (2001).
[15] Id. at 309.
[16] Id. at 310.
[17] Cardtoons v. Major League Baseball Players Association, 95 F.3d 959 (10th Cir. 1996).
[18] Id. at 962.
[19] Id. at 970.
[20] Id. at 975.
[21] KNB Enterprises v. Matthews, 78 Cal. App. 4th 362 (2000).
[22] Id. at 364.
[23] Baltimore Orioles, Inc. v. Major League Baseball Players Ass’n, 805 F.2d 663 (7th Cir. 1986).
[24] O’Bannon v. the NCAA, No. C 09-1967 CW.
