Fantasy Baseball First Amendment Rights

Certain state laws have created an intellectual property right known as the 'right of publicity,' protecting the rights of individuals to control the commercial use of their identities. The right of publicity differs from the 'right of privacy,' which is more generally understood to be a right of individuals to protect against the dissemination of private facts about themselves that can cause injury to personal feelings, such as embarrassment, indignity, and mental trauma. Although the right of publicity bears some relationship to trademark, copyright, misappropriation, defamation, and false advertising law, it is a distinct intellectual property right. McCarthy on The Rights of Publicity and Privacy ”1:1-1:8 (2007).

The first case to apply the right of publicity involved chewing gum trading cards featuring the images of professional baseball players. Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953). Recently, the right of publicity of baseball players again featured prominently in a federal appellate decision. C.A.C. Distribution and Marketing, Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818 (8th Cir. 2007). The Eighth Circuit concluded that the First Amendment rights to run a fantasy baseball league by using the names, performance, and biographical data of professional baseball players superseded the players' rights of publicity.

C.B.C. Distribution and Marketing, Inc., which sells fantasy sports products, conducted a fantasy baseball league where participants formed their fantasy teams by 'drafting' players from major league baseball teams. The success of each participant's team depended on the actual performance of the professional baseball players during the course of the major league season. The participants paid fees to CBC to play and to trade players during the season.

From 1995 through 2004, CBC licensed the players' names and other information from The Major League Baseball Players Association. The 2002 license covered the 'names, nicknames, likenesses, signatures, pictures, playing records, and/or biographical data of each player.' It also contained clauses barring CBC from: 1) challenging the title or any rights of the Players Association to the licensed rights or the validity of the license (the 'no-challenge provision') and 2) using the licensed rights after the expiration or termination of the license (the 'no-use' provision').

When the 2002 license expired in 2005, the Players Association licensed to Major League Baseball Advanced Media (the interactive media and Internet company of major league baseball) the exclusive right to use the players' names and performance data in all interactive media. Advanced Media began offering fantasy baseball games on the official Web site of major league baseball. Advanced Media offered CBC a license to promote Advanced Media's fantasy games on CBC's Web site but would not license CBC to continue to offer its own fantasy baseball products. CBC brought suit against Advanced Media for the right to use, without license, the names and other information about the players necessary to continue marketing its fantasy baseball products. The district court held that CBC was not infringing any rights of publicity under Missouri state law and that, even if infringement occurred, those rights were superseded by the First Amendment to the U.S. Constitution. The district court also rejected Advanced Media's breach of contract claims, concluding that the no-contest and no-use provisions were unenforceable because of the strong federal policy favoring the full and free use of ideas in the public domain over contractual provisions.

The Eighth Circuit's Decision

On appeal, the Eighth Circuit agreed that CBC had the right to use the players' names and other information, but for different reasons than those of the district court. In Missouri, infringement of a right of publicity requires proof that: 1) the defendant used the plaintiff's name as a symbol of his identity, 2) the use was without consent, and 3) defendant intended to obtain a commercial advantage from the use. Doe v. TCI Cablevision, 110 S.W.3d 363, 369 (Mo. 2003).

The appeals court determined that all three elements were present for the cause of action of infringement of the Missouri right of publicity. The players' names in CBC's fantasy game referred to actual professional baseball players and the names alone were symbols of identity. The parties agreed that the use of the names and other information after the license expired was without consent. Although CBC did not imply that the players were endorsing CBC's fantasy game, its use of the names and other information in connection with its services for purposes of profit was nevertheless use for commercial advantage.

However, when the court balanced the state law right of publicity against first amendment considerations, it found that CBC had a First Amendment right to use information readily available to everyone else. All of the information in CBC's fantasy games was in the public domain and its use of the information, although for entertainment, was nevertheless speech covered by the First Amendment. The 'enduring fascination' of the public with baseball records and statistics demonstrates the public value of information about the game and its players. Gionfriddo v. Major League Baseball, 114 Cal.Rptr.2d 307 (Cal.App. 2001).

The court also found that state interests in providing rights of publicity were barely, if at all, implicated in this case because the major league baseball players were already handsomely rewarded for playing and could earn much more from endorsements and sponsorships. Also, the public was unlikely to be misled because the games include all players and not just some particular star the public might falsely assume was endorsing CBC's products. The nonmonetary interests in protecting natural rights, rewarding celebrity labors, and avoiding emotional harm were not relevant because the players received other rewards. Any emotional harm would likely result from the players' actual performances, where media coverage of poor performance would cause the same harm.

In considering the breach of contract claim, the court rejected application of the 'licensee estoppel' line of cases following Lear, Inc. v. Adkins, 395 U.S. 653 (1969). In Lear, the Supreme Court concluded that a patent licensee could not be prevented from contesting the validity of its license by a contract provision, because contract law must give way to the strong federal policy favoring the full and free use of ideas in the public domain contained in federal patent law. The Eighth Circuit declined to consider whether Lear was applicable to a publicity license because it interpreted the facts to prove that the Players Association had breached a material obligation of the 2002 license ' a warranty that it was the exclusive owner of the state law publicity rights at issue. Because the Players Association had committed a material breach of the license, CBC was not bound by its no-challenge and no-use obligations.

One judge dissented, concluding that the Lear doctrine would not apply to a situation where the underlying right is not federal, and that CBC bargained away its First Amendment rights by agreeing in the license that the Players Association was the exclusive holder of the rights at issue, so that the license warranty was not breached.

State Law Varies

Not all states recognize a common law right of publicity and not all states have enacted right of publicity statutes. Some states require that the right of publicity be exercised during the lifetime of the individual in order to permit suits for infringement for violation of the publicity right after death, and some states do not recognize any postmortem publicity rights. California has an extensive statutory scheme involving postmortem rights of publicity, including a registration procedure. Whether an individual possessed a right of publicity that may be commercialized after his or her death may depend upon the law of the person's domicile at death.

Since 1984, New York State courts do not recognize a common law right of publicity and require that all right of publicity actions fit within the 1903 New York statute governing the right of privacy (N.Y. Civ. Rights Law ”50-51). Stephano v. News Group Publications, Inc., 474 N.E.2d 580 (1984). It is ironic that the Second Circuit's decision in Haelen, first recognizing the right of publicity, was based on what the court then determined to be New York common law.

The New York privacy statute contains a criminal misdemeanor section ('50), and both that section and the civil right of action section ('51) are narrowly construed. Messenger ex rel. Messenger v. Gruner + Jahr Printing and Publ., 727 N.E.2d 549 (2000). New York does not recognize a postmortem or inheritable right of publicity. Pirone v. MacMillan, Inc., 894 F.2d 579 (2d Cir. 1990); Shaw Family Archives, Ltd. v. CMG Worldwide, Inc., 434 F. Supp. 2d 203 (S.D.N.Y. 2006).

Section 50 of the New York law states that 'A person, firm or corporation that uses for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person, or if a minor of his or her parent or guardian, is guilty of a misdemeanor.' Section 51 provides a right to maintain an action for injunction and damages by '[a]ny person whose name, portrait, picture or voice is used within this state for advertising purposes or for the purposes of trade without ' written consent. ” As the CBC used the names of the players for the purposes of trade and the license provided for application of New York law, it appears that the players would have had publicity rights under New York law as well as Missouri law.

Judith L. Grubner is an intellectual property partner in the Chicago office of Michael Best & Friedrich LLP. E-mail: [email protected].

Certain state laws have created an intellectual property right known as the 'right of publicity,' protecting the rights of individuals to control the commercial use of their identities. The right of publicity differs from the 'right of privacy,' which is more generally understood to be a right of individuals to protect against the dissemination of private facts about themselves that can cause injury to personal feelings, such as embarrassment, indignity, and mental trauma. Although the right of publicity bears some relationship to trademark, copyright, misappropriation, defamation, and false advertising law, it is a distinct intellectual property right. McCarthy on The Rights of Publicity and Privacy ”1:1-1:8 (2007).

The first case to apply the right of publicity involved chewing gum trading cards featuring the images of professional baseball players. Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc. , 202 F.2d 866 (2d Cir. 1953). Recently, the right of publicity of baseball players again featured prominently in a federal appellate decision. C.A.C. Distribution and Marketing, Inc. v. Major League Baseball Advanced Media, L.P. , 505 F.3d 818 (8th Cir. 2007). The Eighth Circuit concluded that the First Amendment rights to run a fantasy baseball league by using the names, performance, and biographical data of professional baseball players superseded the players' rights of publicity.

C.B.C. Distribution and Marketing, Inc., which sells fantasy sports products, conducted a fantasy baseball league where participants formed their fantasy teams by 'drafting' players from major league baseball teams. The success of each participant's team depended on the actual performance of the professional baseball players during the course of the major league season. The participants paid fees to CBC to play and to trade players during the season.

From 1995 through 2004, CBC licensed the players' names and other information from The Major League Baseball Players Association. The 2002 license covered the 'names, nicknames, likenesses, signatures, pictures, playing records, and/or biographical data of each player.' It also contained clauses barring CBC from: 1) challenging the title or any rights of the Players Association to the licensed rights or the validity of the license (the 'no-challenge provision') and 2) using the licensed rights after the expiration or termination of the license (the 'no-use' provision').

When the 2002 license expired in 2005, the Players Association licensed to Major League Baseball Advanced Media (the interactive media and Internet company of major league baseball) the exclusive right to use the players' names and performance data in all interactive media. Advanced Media began offering fantasy baseball games on the official Web site of major league baseball. Advanced Media offered CBC a license to promote Advanced Media's fantasy games on CBC's Web site but would not license CBC to continue to offer its own fantasy baseball products. CBC brought suit against Advanced Media for the right to use, without license, the names and other information about the players necessary to continue marketing its fantasy baseball products. The district court held that CBC was not infringing any rights of publicity under Missouri state law and that, even if infringement occurred, those rights were superseded by the First Amendment to the U.S. Constitution. The district court also rejected Advanced Media's breach of contract claims, concluding that the no-contest and no-use provisions were unenforceable because of the strong federal policy favoring the full and free use of ideas in the public domain over contractual provisions.

The Eighth Circuit's Decision

On appeal, the Eighth Circuit agreed that CBC had the right to use the players' names and other information, but for different reasons than those of the district court. In Missouri, infringement of a right of publicity requires proof that: 1) the defendant used the plaintiff's name as a symbol of his identity, 2) the use was without consent, and 3) defendant intended to obtain a commercial advantage from the use. Doe v. TCI Cablevision , 110 S.W.3d 363, 369 (Mo. 2003).

The appeals court determined that all three elements were present for the cause of action of infringement of the Missouri right of publicity. The players' names in CBC's fantasy game referred to actual professional baseball players and the names alone were symbols of identity. The parties agreed that the use of the names and other information after the license expired was without consent. Although CBC did not imply that the players were endorsing CBC's fantasy game, its use of the names and other information in connection with its services for purposes of profit was nevertheless use for commercial advantage.

However, when the court balanced the state law right of publicity against first amendment considerations, it found that CBC had a First Amendment right to use information readily available to everyone else. All of the information in CBC's fantasy games was in the public domain and its use of the information, although for entertainment, was nevertheless speech covered by the First Amendment. The 'enduring fascination' of the public with baseball records and statistics demonstrates the public value of information about the game and its players. Gionfriddo v. Major League Baseball , 114 Cal.Rptr.2d 307 (Cal.App. 2001).

The court also found that state interests in providing rights of publicity were barely, if at all, implicated in this case because the major league baseball players were already handsomely rewarded for playing and could earn much more from endorsements and sponsorships. Also, the public was unlikely to be misled because the games include all players and not just some particular star the public might falsely assume was endorsing CBC's products. The nonmonetary interests in protecting natural rights, rewarding celebrity labors, and avoiding emotional harm were not relevant because the players received other rewards. Any emotional harm would likely result from the players' actual performances, where media coverage of poor performance would cause the same harm.

In considering the breach of contract claim, the court rejected application of the 'licensee estoppel' line of cases following Lear, Inc. v. Adkins , 395 U.S. 653 (1969). In Lear, the Supreme Court concluded that a patent licensee could not be prevented from contesting the validity of its license by a contract provision, because contract law must give way to the strong federal policy favoring the full and free use of ideas in the public domain contained in federal patent law. The Eighth Circuit declined to consider whether Lear was applicable to a publicity license because it interpreted the facts to prove that the Players Association had breached a material obligation of the 2002 license ' a warranty that it was the exclusive owner of the state law publicity rights at issue. Because the Players Association had committed a material breach of the license, CBC was not bound by its no-challenge and no-use obligations.

One judge dissented, concluding that the Lear doctrine would not apply to a situation where the underlying right is not federal, and that CBC bargained away its First Amendment rights by agreeing in the license that the Players Association was the exclusive holder of the rights at issue, so that the license warranty was not breached.

State Law Varies

Not all states recognize a common law right of publicity and not all states have enacted right of publicity statutes. Some states require that the right of publicity be exercised during the lifetime of the individual in order to permit suits for infringement for violation of the publicity right after death, and some states do not recognize any postmortem publicity rights. California has an extensive statutory scheme involving postmortem rights of publicity, including a registration procedure. Whether an individual possessed a right of publicity that may be commercialized after his or her death may depend upon the law of the person's domicile at death.

Since 1984, New York State courts do not recognize a common law right of publicity and require that all right of publicity actions fit within the 1903 New York statute governing the right of privacy (N.Y. Civ. Rights Law ”50-51). Stephano v. News Group Publications, Inc., 474 N.E.2d 580 (1984). It is ironic that the Second Circuit's decision in Haelen, first recognizing the right of publicity, was based on what the court then determined to be New York common law.

The New York privacy statute contains a criminal misdemeanor section ('50), and both that section and the civil right of action section ('51) are narrowly construed. Messenger ex rel. Messenger v. Gruner + Jahr Printing and Publ., 727 N.E.2d 549 (2000). New York does not recognize a postmortem or inheritable right of publicity. Pirone v. MacMillan, Inc., 894 F.2d 579 (2d Cir. 1990); Shaw Family Archives, Ltd. v. CMG Worldwide, Inc., 434 F. Supp. 2d 203 (S.D.N.Y. 2006).

Section 50 of the New York law states that 'A person, firm or corporation that uses for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person, or if a minor of his or her parent or guardian, is guilty of a misdemeanor.' Section 51 provides a right to maintain an action for injunction and damages by '[a]ny person whose name, portrait, picture or voice is used within this state for advertising purposes or for the purposes of trade without ' written consent. ” As the CBC used the names of the players for the purposes of trade and the license provided for application of New York law, it appears that the players would have had publicity rights under New York law as well as Missouri law.

Judith L. Grubner is an intellectual property partner in the Chicago office of Michael Best & Friedrich LLP. E-mail: [email protected].