Allison v. Vintage Sports Plaques

• Decision Date: 18 March 1998
• Docket Number: No. 96-6809,96-6809
• Citation: 136 F.3d 1443
• Parties: 1998 Copr.L.Dec. P 27,755, 46 U.S.P.Q.2d 1138, 11 Fla. L. Weekly Fed. C 1141 Elisa ALLISON, individually and as the executrix of the Estate of Clifford Allison; Orel Hershisher, Plaintiffs-Appellants, v. VINTAGE SPORTS PLAQUES, Defendant, HMA Investments, Inc., Defendant-Appellee.
• Court: U.S. Court of Appeals — Eleventh Circuit

Page 1443

136 F.3d 1443

1998 Copr.L.Dec. P 27,755, 46 U.S.P.Q.2d 1138,

11 Fla. L. Weekly Fed. C 1141

Elisa ALLISON, individually and as the executrix of the Estate of Clifford Allison; Orel Hershisher Plaintiffs-Appellants, v. VINTAGE SPORTS PLAQUES, Defendant HMA Investments, Inc., Defendant-Appellee.

No. 96-6809.

United States Court of Appeals Eleventh Circuit.

March 18, 1998.

Barry A. Ragsdale, Garve Ivey, Jr., King, Ivey & Junkin, Birmingham, AL, for Plaintiffs-Appellants.

E. Randall Smith, Jeffrey W. Tayon, Conley, Rose & Tayon, Houston, TX, Warren B. Lightfoot, Lightfoot, Franklin & White, Birmingham, AL, for Defendant-Appellee.

Appeal from the United States District Court for the Northern District of Alabama.

Before TJOFLAT and HULL, Circuit Judges, and KRAVITCH, Senior Circuit Judge.

KRAVITCH, Senior Circuit Judge:

The issue presented in this case is whether the "first-sale doctrine," a well-established limitation on intellectual property rights, applies to the common-law right of publicity. We hold that it does. Accordingly, we affirm the district court, which granted summary judgment to the defendant.

I.

Elisa Allison ("Allison") is the widow of Clifford Allison, a well-known race-car driver who had a licensing agreement with Maxx Race Cards ("MAXX") whereby Maxx would manufacture and market trading cards bearing his likeness in exchange for a royalty of 18% of sales receipts, which is now paid to his estate. Orel Hershisher ("Hershisher") is a well-known professional baseball player who has a licensing agreement with the Major League Baseball Players Association ("MLBPA") that 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. MLBPA has licensed Hershisher's name and image to various trading card companies, which have manufactured and marketed cards bearing his image.

Vintage Sports Plaques ("Vintage") purchases trading cards from licensed card manufacturers and distributors and, without altering the cards in any way, frames them by mounting individual cards between a transparent acrylic sheet and a wood board. Vintage then labels each plaque with an identification plate bearing the name of the player or team represented. In addition to the mounted trading card, 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 licensing agreement that grants it the right to use the appellants' names or likenesses for commercial purposes and has never paid a royalty or commission to the appellants for its use of their names or images. Appellants presumably have received, however, pursuant to their respective licensing agreements, royalties from the card manufacturers and distributors for the initial sale of the cards to Vintage.

Allison filed suit against Vintage in Alabama state court alleging infringement of licensure rights, violation of the right of publicity, and conspiracy, ¹ and Vintage removed the action to the United States District Court for the Northern District of Alabama on the basis of diversity of citizenship. Allison then filed an amended complaint seeking to join Hershisher as a plaintiff and to certify a plaintiff class. The amended complaint alleged violation of the right of publicity and conspiracy and included a prayer for injunctive and declaratory relief. Vintage moved for summary judgment, and the district court, concluding that "it would be provident to consider [the motion] to determine if a legally cognizable claim is stated in the amended complaint ... [b]efore considering the issue of class certification," ² granted the motion. The district court first decided that although appellants established a prima facie case of violation of the right of publicity, the first-sale doctrine operates as a defense in such actions. The district court then concluded that because "[t]his is more appropriately classified as a case of an entrepreneur repackaging or displaying the trading cards in a more attractive way to consumers," ³ rather than a case of an opportunist "using Plaintiffs' names and likenesses to sell frames and clocks," ⁴ Vintage was entitled to summary judgment on the right of publicity claim. ⁵

II.

We review grants of summary judgment de novo, applying the same legal standard as the district court. See Gordan v. Cochran, 116 F.3d 1438, 1439 (11th Cir.1997). Summary judgment is appropriate if, after examining the entire record, the court concludes that there is no genuine issue of material fact. See Fed.R.Civ.P. 56(c).

A.

As a preliminary matter, we note that as a court sitting in diversity we are bound to apply state substantive law. See Erie R.R. Co. v. Tompkins, 304 U.S. 64, 58 S.Ct. 817, 82 L.Ed. 1188 (1938). In reaching its conclusions, the district court purported to apply Alabama law, and we do the same. ⁶ The district court cited only one Alabama case, Birmingham Broadcasting Co. v. Bell, 259 Ala. 656, 68 So.2d 314 (1953), for the proposition that Alabama has recognized a cause of action for violation of the right of publicity. In Bell, the court held that the only cause of action available to a well-known radio announcer against a broadcaster who had used the announcer's name without his permission was for "violation of his privacy." Id. at 319. Noting that the earlier case of Smith v. Doss, 251 Ala. 250, 37 So.2d 118 (1948), impliedly had recognized a cause of action for violation of the right of privacy, the court held that the "privacy of a public personage may not be lawfully invaded by the use of his name or picture for commercial purposes without his consent, not incidental to an occurrence of legitimate news value." Bell, 68 So.2d at 319. Although it does not appear that Alabama courts ever have recognized a right denominated as "publicity," we conclude that the Alabama right of privacy contains an analogous right.

Alabama, like most states, has recognized that

[T]he invasion of privacy 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 a commercial use.

Phillips v. Smalley Maintenance Services, Inc., 435 So.2d 705, 708 (Ala.1983); cf. Smith, 37 So.2d at 120 (defining the common-law right of privacy as "the right of a person to be free from unwarranted publicity or the unwarranted appropriation or exploitation of one's personality, the publicizing of one's private affairs with which the public has no legitimate concern, or the wrongful intrusion into one's private activities in such manner as to outrage or cause mental suffering, shame or humiliation to a person of ordinary sensibilities"). Alabama has recognized the commercial appropriation invasion of privacy tort, although the cause of action has been addressed directly by Alabama's highest court only twice. See Schifano v. Greene County Greyhound Park, Inc., 624 So.2d 178 (Ala.1993); Bell, supra. In Schifano, the Alabama Supreme Court held that the plaintiffs, who were depicted in a group photograph that appeared without their consent in an advertisement created by the defendant, could not prevail on a claim of commercial misappropriation of their likenesses. Quoting the Restatement (Second) of Torts § 652C, the court noted that "[i]t is only when the publicity is given for the purpose of appropriating to the defendant's benefit the commercial or other values associated with the name or the likeness that the right of privacy is invaded." Schifano, 624 So.2d at 181. Because there was "no unique quality or value in the [plaintiffs'] likenesses that would result in commercial profit to the [defendant] simply from using a photograph that included them," id., the court concluded that the plaintiffs could not prevail. See also Kyser-Smith v. Upscale Communications, Inc., 873 F.Supp. 1519, 1525-27 (M.D.Ala.1995) (denying summary judgment to defendant on commercial appropriation claim under Alabama law because plaintiff established genuine issue of the value of her likeness and of the defendant's commercial benefit from the exploitation of that likeness); cf. J.C. v. WALA-TV, Inc., 675 So.2d 360 (Ala.1996) (recognizing "legitimate news interests exception" to commercial appropriation tort liability); Doe v. Roe, 638 So.2d 826 (Ala.1994) (same).

The commercial appropriation right of privacy is similar, but not identical, to the right of publicity recognized in a number of jurisdictions. Whereas judicial acceptance of the four distinct torts that comprise the general right of privacy is "universal," J. Thomas McCarthy, The Rights of Publicity and Privacy § 1.5[E] (1997), the right of publicity has been recognized in only sixteen states, id. at § 6.1[B]. One commentator has summarized the difference between the right of publicity and the commercial-appropriation prong of the right of privacy this way: 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.

J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 28:6 (1997); see Haelan Lab., Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866, 868 (2d Cir.1953) ("[M]any prominent persons (especially actors and ball-players), far from having their feelings bruised through public exposure of their likenesses, would feel sorely deprived...