Cardtoons v. Major League Baseball Players Ass'n, 93-C-576-E.

• Decision Date: 25 October 1994
• Docket Number: No. 93-C-576-E.,93-C-576-E.
• Citation: 868 F. Supp. 1266
• Parties: CARDTOONS, L.C., Plaintiff, v. MAJOR LEAGUE BASEBALL PLAYERS ASSOCIATION, Defendant.
• Court: U.S. District Court — Northern District of Oklahoma

868 F. Supp. 1266

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

No. 93-C-576-E.

United States District Court, N.D. Oklahoma, Tulsa.

October 25, 1994.

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

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

Joseph Mauro, First Amendment Publishing, Inc., Northport, NY, amicus curiae for First Amendment Publishing, Inc.

ORDER

ELLISON, Chief Judge.

The Court has for consideration the Report and Recommendation of the Magistrate (Docket # 38) to which the parties have objected. Also before the Court: Plaintiff's Motion for Summary Judgment (Docket # 17), Defendant's Motion for Declaratory Judgment (Docket # 11), Plaintiff's Motion for Temporary Restraining Order (Docket # 2), Plaintiff's Motion for Preliminary Injunction (Docket # 2), and Plaintiff's Motion to Expedite Request for Declaratory Relief (Docket # 2). The Magistrate's Report and Recommendation (hereinafter "Report," cited as "R. and R.") was prepared after extensive briefing by the parties and an evidentiary hearing before the Magistrate, and it was adopted by the Court. In the Report, the Magistrate found that Plaintiff violated Defendant's rights under Okla.Stat. tit. 12, § 1449(A), Oklahoma's right of publicity statute. The Court has set aside its adoption of the Report and Recommendation and its Order of Judgment (Docket # 48) so that thorough consideration can be given to the parties' objections to the Report and Recommendation, as well as recent authority from the Supreme Court.

Defendant claims that its product, a set of baseball cards labelled "Cardtoons," is parody. Common targets of parody are widely-known individuals and institutions. It has been acknowledged that parody must, to some extent, copy its subject matter.

Parody's humor, or in any event its comment, necessarily springs from recognizable allusion to its object through distorted imitation. Its art lies in the tension between a known original and its parodic twin. When parody takes aim at a particular original work, the parody must be able to "conjure up" at least enough of that original to make the object of its critical wit recognizable.

Campbell v. Acuff-Rose Music, Inc., ___ U.S. ___, ___, 114 S.Ct. 1164, 1176, 127 L.Ed.2d 500 (1994). "A parody frequently needs to be more than a fleeting evocation of an original in order to make its humorous point."

Elsmere Music, Inc. v. National Broadcasting Co., 623 F.2d 252, 253 (2d Cir.1980) (citing Columbia Pictures Corp. v. National Broadcasting Co., 137 F.Supp. 348, 354 (S.D.Cal.1955)). To be an effective parody of baseball cards, it is necessary that Cardtoons trading cards imitate the general configuration of baseball cards.

If Cardtoons' cards were not published in (3½" × 2½") card form, they would not evoke the parodically-necessary theme of traditional baseball cards in Cardtoons' audience. Likewise, if Cardtoons was to forego placing any image of an actual baseball player on its cards, the cards' status as baseball card parodies would be obscured. It is the evocation of the image of particular baseball players that is the basis of MLBPA's position, because Oklahoma's right of publicity extends to "images" of people. Without the inclusion of an image, however, it is essentially impossible to create effective parody, because parody relies, in substantial part, on visual identification with the parody's target.

The nature of Plaintiff's product is significant: are Cardtoons trading cards parody? Webster's Third New International Dictionary defines parody as "a writing in which the language and style of an author or work is closely imitated for comic effect or in ridicule often with certain peculiarities greatly heightened or exaggerated." See also R. and R. at 23 n. 27 (838 F.Supp. 1501, 1514 n. 27) (N.D.Okl.1993); Acuff-Rose., ___ U.S. at ___, 114 S.Ct. at 1172. In this de novo review, it is evident that Cardtoons' cards are parody: the general style of baseball cards has been imitated, but the images of the players found on the front side of the cards, and the biographical material on the back, have been exaggerated. While Plaintiff's assurance that the cards are non-commercial does not withstand scrutiny, neither does Defendant's portrayal of the cards as purely commercial. Cardtoons are both commercial and parody, and must be considered as both.

The Report acknowledges that "the Constitution `accords a lesser protection to commercial speech than to other constitutional guarantees of expression.'" R. and R. at 32 (838 F.Supp. at 1520) (citing Central Hudson Gas & Elec. Co. v. Public Serv. Comm'n., 447 U.S. 557, 100 S.Ct. 2343, 65 L.Ed.2d 341 (1980)). "Lesser protection" is not the equivalent of "no protection." That Plaintiff's speech is a product does not rescind its First Amendment protection. Central Hudson, 447 U.S. at 563-564, 100 S.Ct. at 2350; Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer Council, Inc., 425 U.S. 748, 765, 96 S.Ct. 1817, 1827, 48 L.Ed.2d 346 (1976). "Indeed, the singular reason for using the players' likenesses and/or names is to entice the consumer to purchase the product. Without such likenesses and names, the profit potential dwindles." R. and R. at 33 (838 F.Supp. at 1521). Without the likenesses and names, the parody potential of Cardtoons also dwindles.

Creating a successful commercial parody of a well-known person is not as simple as creating a successful commercial counterfeit of a well-known product. A counterfeiter adds nothing to the original. A parodist takes a person, exaggerates and distorts facets of the person until hilarity ensues, and markets the result. The result is not the equivalent of the original: the parodist has studied the original and modified it until it is something that could never be mistaken for its progenitor. It is reasonable that a parodist would seek compensation for his efforts, for though the parodist takes substantial inspiration from his subject, he creates something that did not exist before.

Oklahoma's right of publicity statute reads:

Any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods, or services, without such person's prior consent ... shall be liable for any damages sustained by the person or persons injured as a result thereof, and any profits from the unauthorized use that are attributable to the use shall be taken into account in computing the actual damages.

Okla.Stat. tit. 12, § 1449(A) (1985).¹

The Oklahoma statute protects a person's right of publicity. The right of publicity has been summarized as "the right to prevent others from using one's name or picture for commercial purposes without consent." Douglass v. Hustler Magazine, Inc., 769 F.2d 1128, 1138 (7th Cir.1985), cert. denied, 475 U.S. 1094, 106 S.Ct. 1489, 89 L.Ed.2d 892 (1986). The purpose of the Oklahoma statute is to protect individuals, celebrities or otherwise, from having distinguishing characteristics of their persona exploited, to the commercial benefit of another. The statute advises that a person's name, voice, signature, photograph, or likeness is protected. In the present case, the only characteristic that must be considered is "likeness."

The Magistrate applied a three-part test in the Report to determine if Cardtoons had violated the Oklahoma statute.

To prove that § 1449(A) has been violated, MLBPA must show that Cardtoons has: (1) "knowingly" used MLBPA's "name" or "likeness"; (2) on "products, merchandise or goods"; (3) without MLBPA's prior consent. If MLBPA proves those elements, the "burden" shifts to Cardtoons to raise a valid defense.

R. and R. at 15 (838 F.Supp. at 1511). The test applied in the Report accurately incorporates the elements of the offense. The Court agrees with the Magistrate's conclusion that MLBPA has proven the three elements, and that Cardtoons' conduct was contrary to the statute. The Court further concurs with the Report and Recommendation in that the defenses provided within the statute are not applicable to Plaintiff. Thus, the issue in this case is precisely that as identified by the Magistrate: "Is there a First Amendment `parody' defense for a commercial product under a balancing approach? Or, put simply, can one sell a parody?" R. and R. at 22 (838 F.Supp. at 1515).

The Court will not firmly employ any one test in weighing MLBPA's right of publicity, for the simple reason that one has not yet been devised. When guidelines for judicial application of a law to a set of specific facts do not exist, a rational response is to reach out to a like area of law and adopt a test that has survived years of application. The Magistrate Judge decided the question of a parody defense to the right of publicity by applying tests developed in copyright and trademark caselaw, because the right of publicity is similar to copyright and trademark law in that these areas are within the realm of intellectual property.

The Magistrate applied two tests: a "use analysis" and a "balancing analysis." These tests can assist the trier of fact in isolating the numerous issues that must be considered in determining the extent of the right of publicity. The strict application of either of these tests to a right of publicity case, however, can result in various factors receiving improper consideration. The Court declines to determine the extent of the right of publicity by relying exclusively on tests developed in other areas of the law, but will review the tests to ascertain...