Bi-Rite Enterprises, Inc. v. Bruce Miner Co., Inc.

• Decision Date: 22 March 1985
• Docket Number: BI-RITE,No. 84-1361,84-1361
• Citation: 757 F.2d 440
• Parties: , 11 Media L. Rep. 1891 ENTERPRISES, INC., et al., Plaintiffs, Appellees, v. BRUCE MINER COMPANY, INC., et al., Defendants, Appellants.
• Court: U.S. Court of Appeals — First Circuit

Page 440

757 F.2d 440

225 U.S.P.Q. 793, 11 Media L. Rep. 1891

BI-RITE ENTERPRISES, INC., et al., Plaintiffs, Appellees, v. BRUCE MINER COMPANY, INC., et al., Defendants, Appellants.

No. 84-1361.

United States Court of Appeals, First Circuit.

Argued Oct. 3, 1984.

Decided March 22, 1985.

Jerry Cohen, Boston, Mass., with whom M. Lawrence Oliverio, Quincy, Mass., Mark A. Fischer, and Cohen & Burg, Boston, Mass., were on brief, for defendants, appellants.

Jules D. Zalon, Orange, N.J., with whom David J. O'Driscoll, Orange, N.J., was on brief, for plaintiffs, appellees.

Before COFFIN and BOWNES, Circuit Judges, and WEIGEL, ^* Senior District Judge.

WEIGEL, Senior District Judge.

This is an appeal from a preliminary injunction prohibiting distribution of posters depicting certain popular music performers. ¹

Plaintiffs Bi-Rite Enterprises Inc. (Bi-Rite), an Illinois corporation, and Artemis, Inc. (Artemis), a Connecticut corporation, are manufacturers and distributors of novelty merchandise. Their wares include posters of British popular music performers from whom they hold exclusive licenses.

There are also fourteen individual plaintiffs, all residents of Great Britain. Each is a member of one or another of the popular musical groups known as Judas Priest, Duran Duran, and Iron Maiden. The groups license commercial exploitation of their names and likenesses through their United States merchandizing representative, the Great Southern Company, Inc., a Georgia corporation, which is not a party here.

The defendants, Bruce Miner and Bruce Miner Co., Inc., a Massachusetts corporation, are in the business of distributing posters of popular music performers. Neither the defendants nor the European manufacturers from whom they purchase posters hold licenses from the depicted performers. Defendants claim that the posters they distribute were made from publicity photographs legally purchased by the European manufacturers.

The preliminary injunction prohibits defendants from distributing posters depicting any of the performers from whom Bi-Rite or Artemis holds an exclusive license for posters. It also prohibits distribution of posters depicting the individual plaintiffs.

The sole question on appeal is whether, under Massachusetts law, rights relating to commercial exploitation of a person's name or likeness are governed by the law of the person's domicile or by that of the residence of the person's exclusive licensee or merchandizing representative. The law of Great Britain does not recognize a right to control commercial exploitation of personal names or likenesses. The law of the American jurisdictions here involved does recognize that right. The district court applied the law of the American jurisdictions.

We affirm.

I.

American jurisdictions have recently recognized the right of well known individuals to control commercial exploitation of their names and likenesses. Called "the right of publicity," Haelan Laboratories v. Topps Chewing Gum, 202 F.2d 866, 868 (2d Cir.1953), or the tort of "appropriation" of name or likeness, Prosser and Keeton on The Law of Torts (5th ed. 1984) at 851, this right has been recognized in some form by virtually all states. See id. at 850-51. As a commercial, rather than a personal right, it is fully assignable.

[T]he effect ... is to recognize or create an exclusive right in the individual plaintiff to a species of trade name, his own, and a kind of trade mark in his likeness.... Once protected by law, it is a right of value upon which the plaintiff can capitalize by selling licenses.

Prosser and Keeton on The Law of Torts (5th ed. 1984) at 854.

Great Britain does not recognize a right of publicity. See Tolley v. Fry, 1 K.B. 467 (1930). Consequently, the choice between United States and British law is determinative in this case.

II.

When a federal court exercises pendent jurisdiction over state law claims, as here, it must apply the substantive law of the state in which it sits. United Mine Workers v. Gibbs, 383 U.S. 715, 726, 86 S.Ct. 1130, 1139, 16 L.Ed.2d 218 (1966) (citing Erie Railroad v. Tompkins, 304 U.S. 64, 58 S.Ct. 817, 82 L.Ed. 1188 (1938)). This includes the forum state's choice of law rules. Klaxon v. Stentor Electric Mfg. Co., 313 U.S. 487, 61 S.Ct. 1020, 85 L.Ed. 1477 (1941), reaffirmed, Day & Zimmerman, Inc. v. Challoner, 423 U.S. 3, 96 S.Ct. 167, 46 L.Ed.2d 3 (1975). Thus, we must determine what law the Massachusetts courts would apply.

As in most American jurisdictions, Massachusetts' choice of law rules are in transition. The state has turned away from the rigid, single-factor analysis associated with the first Restatement of Conflict of Laws (1934) in favor of the more flexible, multiple-factor, "interest analysis" or "most significant relationship" analysis exemplified by the Restatement (Second) of Conflict of Laws (1971). Compare Cameron v. Gunstock Acres, Inc., 370 Mass. 378, 381-82, 348 N.E.2d 791, 793 (1976) (applying single-factor test) with Choate, Hall & Stewart v. SCA Servs., Inc., 378 Mass. 535, 541, 392 N.E.2d 1045, 1048-49 (1979) (announcing "more functional" approach). Under the older approach, courts determined which jurisdiction's law governed by categorizing an action (as a tort, contract, or property dispute, for example) and then looking to a single connecting factor (such as place of injury, place of agreement, or situs of property). ²

Massachusetts' first decisive step toward a modern approach to choice of law was its decision in Pevoski v. Pevoski, 371 Mass. 358, 358 N.E.2d 416 (1976), a tort action in which the Supreme Judicial Court rejected a single-factor, lex locus delicti test. The court stated, "[w]e agree with the conflicts approach suggested by" Babcock v. Jackson, 12 N.Y.2d 473, 240 N.Y.S. 743, 191 N.E.2d 279 (1963), a case which explicitly weighed the policy interests underlying laws of the various states whose citizens were involved. Pevoski, 371 Mass. at 361, 358 N.E.2d at 418. In Choate, Hall & Stewart, supra, the Supreme Judicial Court amplified its commitment to such an analysis, even though the outcome of the contract action before the court did not depend upon application of an interest analysis. The court noted:

[A]lmost all States have replaced place-of-making or other one-factor tests with a more functional approach. See Breslin v. Liberty Mut. Ins. Co., 134 N.J.Super. 357, 341 A.2d 342 (1975) ("interest" analysis); Restatement (Second) of Conflict of Laws Sec. 188 (1971) ("most significant relationship"); R. Leflar, American Conflicts Law Sec. 150 (3d ed. 1977). Similar ideas have been at work in our recent decisions transforming the rule about applying to a tort the law of the place of the happening.

Choate, Hall & Stewart, 378 Mass. at 541, 392 N.E.2d at 1049.

Most recently, in Bushkin Associates, Inc. v. Raytheon Co., 393 Mass. 622, 473 N.E.2d 662 (1985), responding to questions we certified, the Supreme Judicial Court reaffirmed its adherence to the "more functional approach" of Choate, Hall & Stewart. Declining to "tie Massachusetts conflicts law to any specific choice-of-law doctrine", Bushkin, at 668, the court made clear that the relevant factors for consideration are those set forth in the Restatement (Second) of Conflict of Laws Sec. 6(2), and in R.A. Leflar, American Conflicts Law (3d ed. 1977). We are, therefore, satisfied that they would reach the same result as we do. ³

III.

In light of Massachusetts' adoption of modern choice of law rules, we reject at the outset defendants' contention that a court need only consider the domicile of the person whose name or likeness is being exploited to determine the law governing this action. To focus solely on that domicile would disregard the development of Massachusetts law which now calls for the "more functional approach" set forth in Bushkin, supra. Under such an approach, domicile is significant only to the extent that it implicates interests that are cognizable under an "interest" or "most significant relationship" analysis. ⁴

The Second Restatement of Conflict of Laws, section 6(2) sets forth the perimeters for the kind of analysis the Massachusetts courts would employ: (2) When there is no [contrary statutory] directive, the factors relevant to the choice of applicable rule of law include:

(a) the needs of the interstate and international systems,

(b) the relevant policies of the forum,

(c) the relevant policies of other interested states and the relative interests of those states in the determination of the particular issue,

(d) the protection of justified expectations,

(e) the basic policies underlying the particular field of law,

(f) certainty, predictability and uniformity of result, and

(g) ease in the determination and application of the law to be applied.

Restatement (Second) Conflicts of Laws (1971), quoted in Bushkin, supra, at 669.

We begin our choice of law analysis with the first of the factors listed in section 6(2) of the Second Restatement--here, the needs of the international system. In the popular music industry, trade between Great Britain and the United States is pervasive and much prized. It is nurtured in part by the policy in both countries of affording the same commercial rights to foreigners as to nationals. Moreover, it might very well be unconstitutional for an American jurisdiction to extend lesser contractual rights to foreign performers in this country than to their American counterparts. Cf. Yick Wo v. Hopkins, 118 U.S. 356, 6 S.Ct. 1064, 30 L.Ed. 220 (1886).

Defendants urge that the law of Great Britain should be applied to the American merchandising activities of British performers. To do so would extend lesser commercial rights to British than to American performers. A British performer could not enter into an exclusive licensing agreement with an American merchandiser while an American performer could. Such a result cannot be squared with the needs of the international system in this area.

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