95 F.3d 959 (10th Cir. 1996), 95-5006, Cardtoons, L.C. v. Major League Baseball Players Ass'n

Docket Nº:95-5006.
Citation:95 F.3d 959
Party Name:CARDTOONS, L.C., an Oklahoma Limited Liability Company, Plaintiff-Appellee, v. MAJOR LEAGUE BASEBALL PLAYERS ASSOCIATION, an unincorporated association, Defendant-Appellant. First Amendment Publishing, Inc., Joseph Mauro, pro se, Amicus Curiae.
Case Date:August 27, 1996
Court:United States Courts of Appeals, Court of Appeals for the Tenth Circuit

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95 F.3d 959 (10th Cir. 1996)

CARDTOONS, L.C., an Oklahoma Limited Liability Company,




association, Defendant-Appellant.

First Amendment Publishing, Inc., Joseph Mauro, pro se, Amicus Curiae.

No. 95-5006.

United States Court of Appeals, Tenth Circuit

August 27, 1996

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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Russell S. Jones, Jr. (William E. Quirk, with him on the briefs), Shughart, Thomson & Kilroy, Kansas City, Missouri, for Appellant.

James W. Tilly (Keith A. Ward, with him on the brief), Tilly & Ward, Tulsa, Oklahoma, for Appellee.

Joseph Mauro, pro se, filed an amicus curiae brief for First Amendment Publishing, Inc.

Before TACHA, LOGAN, and REAVLEY, [*] Circuit Judges.

TACHA, Circuit Judge.

Cardtoons, L.C., ("Cardtoons") brought this action to obtain a declaratory judgment that its parody trading cards featuring active major league baseball players do not infringe on the publicity rights of members of the Major League Baseball Players Association ("MLBPA"). The district court held that the trading cards constitute expression protected by the First Amendment and therefore read a parody exception into Oklahoma's statutory right of publicity. MLBPA appeals, arguing that (1) the district court lacked jurisdiction to issue a declaratory judgment and (2) Cardtoons does not have a First Amendment right to market its trading cards. We exercise jurisdiction pursuant to 28 U.S.C. § 1291. Because Cardtoons' First Amendment right to free expression outweighs MLBPA's proprietary right of publicity, we affirm.

I. Background

Cardtoons formed in late 1992 to produce parody trading cards featuring caricatures of major league baseball players. Cardtoons contracted with a political cartoonist, a sports artist, and a sports author and journalist, who designed a set of 130 cards. The majority of the cards, 71, have caricatures of active major league baseball players on the front and humorous commentary about their careers on the back. The balance of the set is comprised of 20 "Big Bang Bucks" cards (cartoon drawings of currency with caricatures of the most highly paid players on the front, yearly salary statistics on the back), 10 "Spectra" cards (caricatures of active players on the front, nothing on the back), 10 retired player cards (caricatures of retired players on the front, humorous commentary about their careers on the back), 11 "Politics in Baseball" cards (cartoons featuring caricatures of political and sports figures on the front, humorous text on the back), 7 standing cards (caricatures of team logos on the front, humorous text on the back), and 1 checklist card. Except for the Spectra cards, the back of each card bears the Cardtoons logo and the following statement: "Cardtoons baseball is a parody and is NOT licensed by Major League Baseball Properties or Major League Baseball Players Association."

A person reasonably familiar with baseball can readily identify the players lampooned on the parody trading cards. The cards use similar names, recognizable caricatures, distinctive team colors, and commentary about individual players. For example, the card parodying San Francisco Giants' outfielder Barry Bonds calls him "Treasury Bonds," and features a recognizable caricature of Bonds, complete with earring, tipping a bat boy for a 24 carat gold "Fort Knoxville Slugger." The back of the card has a team logo (the "Gents"), and the following text:

Redemption qualities and why Treasury Bonds is the league's most valuable player:

1. Having Bonds on your team is like having money in the bank.

2. He plays so hard he gives 110 percent, compounded daily.

3. He turned down the chance to play other sports because he has a high interest rate in baseball.

4. He deposits the ball in the bleachers.

5. He is into male bonding.

6. He is a money player.

7. He has a 24-karat Gold Glove.

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8. He always cashes in on the payoff pitch.

NOTICE: Bonds is not tax-free in all states but is double exempt. At the end of the 1992 season, Barry Bonds was a two-time winner of the National League's Most Valuable Player award, a three-time winner of a Gold Glove award, and had just signed a six-year contract for $43.75 million, making him the highest-paid player in baseball. Richard Hoffer, The Importance of Being Barry: The Giants' Barry Bonds is the Best Player in the Game Today--Just Ask Him, Sports Illustrated, May 24, 1993, at 13. No one the least bit familiar with the game of baseball would mistake Cardtoons' "Treasury Bonds" for anyone other than the Giants' Barry Bonds. Other caricatures, such as "Ken Spiffy, Jr." of the "Mari-Nerds" (Ken Griffey, Jr., of the Seattle Mariners), are equally identifiable.

The trading cards ridicule the players using a variety of themes. A number of the cards, including the "Treasury Bonds" card and all of the Big Bang Bucks cards, humorously criticize players for their substantial salaries. (The irony of MLBPA's counterclaim for profits from the cards is not lost on this panel.) Other trading cards mock the players' narcissism, as exemplified by the card featuring "Egotisticky Henderson" of the "Pathetics," parodying Ricky Henderson, then of the Oakland Athletics. The card features a caricature of Henderson raising his finger in a "number one" sign while patting himself on the back, with the following text:

Egotisticky Henderson, accepting the "Me-Me Award" from himself at the annual "Egotisticky Henderson Fan Club" banquet, sponsored by Egotisticky Henderson:

"I would just like to thank myself for all I have done. (Pause for cheers.) I am the greatest of all time. (Raise arms triumphantly.) I love myself. (Pause for more cheers.) I am honored to know me. (Pause for louder cheers.) I wish there were two of me so I could spend more time with myself. (Wipe tears from eyes.) I couldn't have done it without me. (Remove cap and hold it aloft.) It's friends like me that keep me going. (Wave to crowd and acknowledge standing ovation.)

The remainder of the cards poke fun at things such as the players' names ("Chili Dog Davis" who "plays the game with relish," a parody of designated hitter Chili Davis), physical characteristics ("Cloud Johnson," a parody of six-foot-ten-inch pitcher Randy Johnson), and onfield behavior (a backflipping "Ozzie Myth," a parody of shortstop Ozzie Smith).

The format of the parody trading cards is similar to that of traditional baseball cards. The cards, printed on cardboard stock measuring 2 1/2 by 3 1/2 inches, have images of players on the front and player information on the back. Like traditional cards, the parody cards use a variety of special effects, including foil embossing, stamping, spectra etching, and U-V coating. Cardtoons also takes advantage of a number of trading card industry techniques to enhance the value of its cards, such as limiting production, serially numbering cases of the cards, and randomly inserting subsets and "chase cards" (special trading cards) into the sets.

After designing its trading cards, Cardtoons contracted with a printer (Champs Marketing, Inc.) and distributor (TCM Associates) and implemented a marketing plan. As part of that plan, Cardtoons placed an advertisement in the May 14, 1993, issue of Sports Collectors Digest. That advertisement tipped off MLBPA, the defendant in this action, and prompted its attorney to write cease and desist letters to both Cardtoons and Champs.

MLBPA is the exclusive collective bargaining agent for all active major league baseball players, and operates a group licensing program in which it acts as the assignee of the individual publicity rights of all active players. Since 1966, MLBPA has entered into group licensing arrangements for a variety of products, such as candy bars, cookies, cereals, and, most importantly, baseball trading cards, which generate over seventy percent of its licensing revenue. MLBPA receives royalties from these sales and distributes the money to individual players.

After receiving the cease and desist letter from MLBPA, Champs advised Cardtoons

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that it would not print the parody cards until a court of competent jurisdiction had determined that the cards did not violate MLBPA' rights. Cardtoons then filed this suit seeking a declaratory judgment that its cards do not violate the publicity or other property rights of MLBPA or its members. Cardtoons also sought damages for tortious interference with its contractual relationship with Champs, as well as an injunction to prevent MLBPA from threatening legal action against Champs or other third parties with whom Cardtoons had contracted concerning the cards. MLBPA moved to dismiss for lack of subject matter jurisdiction, and counterclaimed for a declaratory judgment, injunction, and damages for violation of its members' rights of publicity under Oklahoma law.

The district court referred the case to a magistrate, who issued his Report and Recommendation in favor of MLBPA. The magistrate stated that the parody cards infringed on MLBPA's right of publicity and that, under either a trademark balancing test or a copyright fair use test, Cardtoons did not have a First Amendment right to market its cards without a license from MLBPA. The district court initially adopted the magistrate's Report and Recommendation, Cardtoons, L.C. v. Major League Baseball Players Association, 838 F.Supp. 1501 (N.D.Okla.1993), but subsequently vacated that decision and issued Cardtoons, L.C. v. Major League Baseball Players Association, 868 F.Supp. 1266 (N.D.Okla.1994). In its second opinion, the court wholly rejected application of a trademark...

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