BY:Michael I. Rudell
(Originally published in the Entertainment Law column in the New York Law Journal, May 22, 1998.)
Any decision which sheds light on issues relating to the right of publicity is of interest to an entertainment lawyer. A recent decision is of particular interest because it addresses the issue of whether the “first-sale doctrine,” a limitation on intellectual property rights, applies to the common law right of publicity. 1
The plaintiffs in the case are Elisa Allison, the widow of Clifford Allison (“Allison”) a well-known race car driver, and Orel Hershisher, a prominent professional baseball player. Clifford Allison was party to an agreement with Maxx Racecards (“Maxx”) under which Maxx had the right to manufacture and market trading cards bearing his likeness in exchange for a royalty of 18% of sales receipts, now being paid to his estate. Hershisher is party to an agreement with Major League Baseball Players Association (“MLBPA”) which grants MLBPA the right to use and license his name and image for commercial purposes in exchange for a pro rata share of all revenues derived therefrom.
Vintage Sports Plaques (“Vintage”) purchases trading cards from manufacturers and distributors and, without altering the cards in any way, mounts them under a transparent acrylic sheet on plaques labeled with an identification plate bearing the name of the player represented. In addition, some of the plaques feature a clock with a sports motif. Vintage markets each plaque as a “Limited Edition” and an “Authentic Collectible.”
Vintage is not a party to any agreement under which it has obtained the right to use Allison’s or Hershisher’s name or likeness for commercial purposes, nor has it paid a royalty or commission to them for any such use. The Court assumes that plaintiffs have received, under their respective licensing arrangements, royalties from the card manufacturers and distributors for the initial sale of the card to Vintage.
Plaintiffs, in an amended complaint, allege violation of Allison’s and Hershisher’s right of publicity. The district court granted Vintage’s motion for summary judgment, concluding that, although plaintiffs established a prima facie case of the violation of the right of publicity, the first-sale doctrine operates as a defense in such actions. In so doing it noted that the case is more appropriately classified as one of an entrepreneur repackaging or displaying the trading cards in a more attractive way to consumers than a case of an opportunist using plaintiffs’ names and likenesses to sell frames and clocks.
At the outset, the Court of Appeals notes that it is bound to apply the applicable state substantive law which, in the instant case, is that of Alabama. Although it does not appear that Alabama courts ever have recognized a right denominated as “publicity,” the Court concludes that the Alabama right of privacy contains an analogous right. It states that “Alabama, like most states, has recognized that the tort consists of four distinct wrongs: (1) the intrusion upon the plaintiff’s physical solitude or seclusion; (2) publicity which violates the ordinary decencies; (3) putting the plaintiff in a false, but not necessarily defamatory, position in the public eye; and (4) the appropriation of some element of the plaintiff’s personality for commercial use.”2
The commercial appropriation right of privacy is similar, but not identical, to the right of publicity recognized in a number of jurisdictions. (As noted below, in New York, the right of publicity is subsumed in Sections 50 and 51 of the Civil Rights Law.) J. Thomas McCarthy has summarized the difference between the right of publicity and the commercial appropriation prong of the right of privacy as follows: “The appropriation type of invasion of privacy, like all privacy rights, centers on damage to human dignity. Damages are usually measured by ‘mental distress’ – some bruising of the human psyche. On the other hand, the right of publicity relates to commercial damage to the business value of human identity. Put simplistically, while infringement of the right of publicity looks to an injury to the pocketbook, an invasion of appropriation privacy looks to an injury to the psyche.” 3
The Court interprets Alabama’s commercial appropriation privacy right to represent the same interests and address the same harms as does the right of publicity as customarily defined. In fact, elements of Alabama’s commercial appropriation invasion of privacy tort, which bases liability on commercial rather than psychological interests, does not differ significantly from those of the tort of the violation of right of publicity. As a technical matter, then, the Court construes plaintiffs’ claim as one sounding in commercial appropriation rather than in publicity, although it views this distinction as largely semantic.
The Court reads Alabama law as permitting a cause of action for invasion of privacy when the defendant appropriates without consent the plaintiff’s name or likeness to advertise the defendant’s business or product or for some other similar commercial purpose. The plaintiff must demonstrate that there is a unique quality or value in his likeness that if appropriated would result in commercial profit to the defendant.
The Court next turns to an analysis of whether the first-sale doctrine precludes it from holding Vintage liable. The decision describes this doctrine as providing that once the holder of an intellectual property right consents to the sale of particular copies of his work, he may not thereafter exercise the distribution right with respect to such copies. The policy favoring a limited intellectual property right monopoly gives way to the policy opposing restraints of trade and restraints of alienation of lawfully obtained tangible personal property.
The Court notes that there is virtually no case law in any state addressing the application of the first-sale doctrine to the right of publicity. In a footnote, it is indicated that some states that statutorily have recognized a right of publicity have codified the first-sale doctrine.
Plaintiffs argue that the right of publicity differs from other forms of intellectual property because it protects “identity” rather than a “particular photograph or product.” They further argue that the first-sale doctrine should not apply because a celebrity’s identity continues to travel with the tangible personal property in which it is embodied after the first sale.
In response, the Court indicates that the distinction plaintiffs draw between what is protected by the right of publicity and what is protected by other forms of intellectual property rights, such as copyright, is not sound. For example, it notes that copyright law does not exist merely to protect the tangible items, such as books and paintings, in which the underlying expressive material is embodied; rather, it protects as well the author’s or artist’s particular expression that is included in the tangible item. The copyright law thus would be violated not only by directly photocopying a protected work, but also by publishing language or images that are substantially similar to that contained in the copyrighted work.
Second and more important, if plaintiffs’ argument were accepted, it would have profoundly negative effects on numerous industries and grant a monopoly to celebrities over their identities that would upset the delicate balance between the interests of the celebrity and that of the public. “Indeed, a decision by this Court not to apply the first-sale doctrine to right of publicity actions would render tortious the resale of sports trading cards and memorabilia and thus would have a profound effect on the market for trading cards, which now supports a multi-billion dollars industry.” Such a holding presumably would prevent, for example, framing a magazine advertisement that bears the image of a celebrity and reselling it as a collector’s item or reselling an empty cereal box that bears a celebrity endorsement.
On the other hand, a holding that the first-sale doctrine does limit the right of publicity does not eliminate completely a celebrity’s control over the use of his or her name or image. The right of publicity protects against unauthorized use of an image and a celebrity would continue to enjoy the right to license the use of that image and thus enjoy the power to determine when or whether that image would be distributed.
Because application of the first-sale doctrine to limit the right of publicity would maintain the appropriate balance between the rights of celebrities in their identities and the rights of the public to enjoy those identities, the Court concludes that the Alabama Supreme Court would apply the first-sale doctrine in this case and that the district court properly applied it as well.
Having reached this conclusion, the Court then examines whether the district court correctly granted summary judgment in favor of Vintage. It states the issue as whether the district court properly resolved as a matter of law that Vintage’s plaques merely are the cards themselves repackaged, rather than products separate and distinct from the trading cards they incorporate. If they are the latter, as plaintiffs contend, then arguably Vintage is selling a product by commercially exploiting the likeness of plaintiffs intending to engender profits to their enterprise, a practice against which the right of publicity clearly seems to protect.
In upholding the determination of the district court, the Court notes that it is unlikely that anyone would purchase one of Vintage’s plaques for any reason other than to obtain a display of the mounted cards themselves. The Court recognizes that the plaques that include a clock pose a closer case, but concludes that it is unlikely that anyone would purchase one of the clock plaques simply to obtain a means of telling time believing the clock to be, for example, a “Hershisher clock” or an “Allison” clock. Because reselling a product that lawfully was obtained does not give rise to a cause of action for violation of the right of publicity, the Court holds that the district court correctly entered summary judgment in favor of Vintage on the right of publicity claim.
It should be noted that New York courts do not recognize an independent common law right of publicity. A 1984 Court of Appeals decision4 held that the right of publicity is encompassed under Sections 50 and 51 of the Civil Rights Law as an aspect of the right of privacy, which is exclusively statutory.
Nevertheless, the Allison case is of interest to New York attorneys because products and services in which the names and likenesses of celebrities are used often will be marketed in many states, some of which recognize the common law right of publicity. Also, if the first-sale doctrine does place a limitation on the common law right of publicity, it presumably would be construed to place such a limitation on a statutory counterpart as well.
1. Allison et al. v. Vintage Sports Plaques et al., U.S. Court of Appeals, 11th Circuit, No. 96-6809, (March 18, 1998).
2. Phillips v. Smalley Maintenance Services, Inc., 435 So.2d 705, 708 (Alabama, 1983).
3. McCarthy on Trademarks and Unfair Competition, Section 28:6 (1997).
4. Stephano v. News Groups Publications, Inc., 64 N.Y.2d 174 (1984).