Cardtoons v. Major League Baseball Players Ass'n

• Decision Date: 23 November 1993
• Docket Number: No. 93-C-576-E.,93-C-576-E.
• Citation: 838 F. Supp. 1501
• Parties: CARDTOONS, L.C., Plaintiff, v. MAJOR LEAGUE BASEBALL PLAYERS ASSOCIATION, Defendant.
• Court: U.S. District Court — Northern District of Oklahoma

838 F. Supp. 1501

CARDTOONS, L.C., Plaintiff, v. MAJOR LEAGUE BASEBALL PLAYERS ASSOCIATION, Defendant.

No. 93-C-576-E.

United States District Court, N.D. Oklahoma.

November 23, 1993.

COPYRIGHT MATERIAL OMITTED

Tilly & Ward, James W. Tilly, Keith A. Ward, Tulsa, OK, and Eric C. Cohen, Suzanne Hines, Welsh & Katz, Ltd., Chicago, IL, for Cardtoons, L.C.

Shughart, Thomson, & Kilroy, Dennis D. Palmer, Michael P. Allen, Kansas City, MO, and James E. Weger, Gregory K. Frizzell, Jones, Givens, Gotcher & Bogan, Tulsa, OK, for Major League Baseball Players Ass'n.

ORDER

ELLISON, Chief Judge.

The Court has for consideration the Report and Recommendation of the Magistrate filed November 3, 1993. After careful consideration of the record and the issues, including the briefs and memoranda filed herein by the parties, the Court has concluded that the Report and Recommendation of the Magistrate should be and hereby are adopted by the Court.

IT IS THEREFORE ORDERED:

1. That the trial of this matter be consolidated with hearings held, in accord with Rule 65(e), Federal Rules of Civil Procedure. The Court finds the facts are straightforward and any further hearing is unwarranted 2. That declaratory judgment be entered in favor of the Major League Baseball Players Association, to the effect that Cardtoons' seventy-one (71) players, twenty (20) Big Bank Buck and ten (10) Spectra cards, part of its "Baseball Parody Cards" set which depict the likenesses and parody names of active Major League Baseball players violates 12 O.S. § 1449(A) and the players' "rights of publicity", as embodied within that statute;¹

3. That declaratory judgment be denied to Cardtoons, to the effect that it does not have a First Amendment right of free expression to market and sell its "Baseball Parody Cards" without license from the Major League Baseball Players Association;

4. That injunctive relief be denied to the Major League Baseball Players' Association, there being no showing of "irreparable harm"; and, the MLBPA having an otherwise adequate remedy at law;

5. That damages be denied to both parties, the evidence showing that no sales of the "Baseball Parody Cards" have been made.

ORDERED.

REPORT AND RECOMMENDATION OF UNITED STATES MAGISTRATE JUDGE

WOLFE, United States Magistrate Judge.

This report and recommendation addresses the following motions:

1. Plaintiff's Motion For Temporary Restraining Order and Preliminary Injunction (docket # 2);

2. Defendant's Motion To Dismiss (docket # 6);

3. Plaintiff's Motion For Summary Judgment (docket # 11); and

4. Motion For Declaratory Judgment (docket # 17).¹

An evidentiary hearing was held on September 14 and 15, 1993. As a result of that hearing, the issues raised by the parties' various motions are subject to consolidation per Rule 65(a)(2), Federal Rules of Civil Procedure, discussed below.

I. INTRODUCTION

Plaintiff filed its Motion for Summary Judgment (docket # 11) on August 6, 1993. On August 13, 1993 Defendant MLBPA filed its Motion for Declaratory Judgment (docket # 17), which is, in effect, a cross-motion for summary judgment. Both parties had earlier moved the court to grant injunctive relief (Plaintiff's Complaint (filed June 22, 1993); and Defendant's Answer and Counterclaim (filed August 4, 1993)).

An evidentiary hearing was set for September 14, 1993 and the parties filed their respective Motions in anticipation of that hearing and the evidence to be adduced as a result. The parties acknowledged that the central issue would be addressed by means of an evidentiary hearing on their respective cross-motions for judgment (Plaintiff raising the issue by means of its Motion for Summary Judgment, while Defendant raised the issue by means of its Motion for Declaratory Judgment.) The Intermediate Scheduling and Discovery Order, filed July 22, 1993 (docket # 3), sets forth the posture of the parties prior to the hearing as follows:

1. Plaintiff no longer seeks a Temporary Restraining Order or Preliminary Injunction. Plaintiff indicates that such a hearing would be futile, given the fact that its printer has already stopped production in response to a letter already sent by the Association. The "harm" sought to be protected against, in effect, having already occurred, Plaintiff does not seek to proceed with a Temporary Restraining Order or Temporary Injunction.

2. Plaintiff now seeks an evidentiary hearing on the ultimate question — that of the declaratory judgment.² Plaintiff's counsel requests a limited discovery period, followed by a prompt hearing, the court to decide, based on the presentation of evidence and stipulations of the parties, whether Plaintiff is entitled to declaratory relief, as sought.

3. Responsively, the Association wishes to raise a challenge to the court's jurisdiction. Additionally, the Association seeks to file its own motion for injunctive relief, seeking to halt the production of the allegedly offensive "parody" cards. (Order at p. 1).

As a result, each party contemplated introduction of evidence to bear on the ultimate question — whether Cardtoons would be permitted to publish its "parody" cards, or, whether publication would be halted in the face of a court decision that "Cardtoons, L.C. (Cardtoons) is liable to MLBPA for infringement of its rights of publicity under Okla. Stat.Tit. 21 § 839.2 (1993), Okla.Stat.Tit. 12 § 1449(a), and Oklahoma common law." (MLBPA's Motion for Declaratory Judgment, filed August 13, 1993). The parties specifically tried the issue of "declaratory relief", "the remaining issues to be tried, dependent, in-part, on the outcome of the declaratory judgment question." (Intermediate Scheduling and Discovery Order, n. 2 at p. 1).

In sum, if the court finds that declaratory judgment should be granted to either party, this case is at an effective end. Cardtoons seeks a declaration that its cards do not infringe the MLBPA "rights of publicity", citing First Amendment protection, while the MLBPA seeks a declaration to the opposite effect — i.e., that the cards do infringe; hence, are not subject to publication absent license.

Given the foregoing analysis, the undersigned recommends that the evidentiary hearing be, in fact, and as a matter of law, consolidated with the trial of the matter, as set forth in Rule 65(a)(2), Federal Rules of Civil Procedure. That Rule provides, inpart, as follows:

Before or after the commencement of the hearing of an application for preliminary injunction, the court may order the trial of the action on the merits to be advanced and consolidated with the hearing of the application.

Here, the parties were prepared to go forward on the central issue, above, and, in fact, presented evidence in the form of testimony of their respective principles and experts. The only issue "reserved" by Cardtoons is that of "damages".

The parties were advised that the hearing would address the core issue in the case vis-a-vis MLBPA's "right of publicity" versus Cardtoons' "right of publication". Accordingly, both parties had notice of the trial of the issues, and, in fact, fully participated in presentation of evidence, testimony and argument on the central question.

After conducting the evidentiary hearing, the undersigned finds that presentation of further evidence or witnesses would not materially assist the court or, in fact, provide any further information about the parties or the issue than is presently now before the court for decision.

Accordingly, while Plaintiff's pending Motion for Summary Judgment (docket # 11) and its Motion for Temporary Restraining Order and Preliminary Injunction (docket # 2), together with Defendant's Motion for Declaratory Judgment (docket # 17) raise the issues in this action, they are subsumed in the consolidation of the hearing with trial on the merits per Rule 65(a)(2), infra. This report and recommendation addresses the issues in the following order:

First, the report and recommendation advances the issues and addresses consolidation of the hearing with trial on the merits per Rule 65(a)(2), Federal Rules of Civil Procedure.

Second, the report and recommendation recites the facts of the case, together with the findings of fact of the court, as stipulated to by the parties and as found by the court.

Third, the report and recommendation deals with the jurisdictional issue raised by Defendant MLBPA in its Motion to Dismiss.

Fourth, the report and recommendation considers and makes recommendation on the merits of the action as presented by both parties.

Fifth, the report and recommendation addresses injunctive relief sought by MLBPA.

The facts of the case are initially set forth below.

II. PROCEDURAL HISTORY/FACTS

The dispute began when Plaintiff Cardtoons L.C., ("Cardtoons") a Tulsa-based company, designed "parody" trading cards of active major league baseball players. Cardtoons did not obtain either a license or consent from Defendant Major League Baseball Players Association ("MLBPA"). (See, Joint Stipulation of Fact, at p. 3, ¶ (10), appended hereto as "Exhibit A"). As a result, prior to full publication of the cards, the MLBPA sent Cardtoons and its printer a cease-and-desist letter. Cardtoons countered by filing its Complaint for Declaratory Judgment and Application for Temporary Restraining Order and Preliminary Injunction.³

The MLBPA is an unincorporated association that serves as the exclusive collective bargaining agent for all major league baseball players.⁴ Since 1966, MLBPA has had a "group licensing program" where the Association acts as the assignee of individual publicity rights for all active major league baseball players.⁵

In late 1992, J Fromm formed Cardtoons to produce trading cards featuring parodies of active major league baseball players. He subsequently contracted with several persons, including a well-known editorial cartoonist, a sports artist and a free-lance writer to draw and write text for the cards. Fromm called the company Cardtoons, L.C. ("Cardtoon...