C.B.C. Distrib. Marketing v. Major League Baseball

• Decision Date: 16 October 2007
• Docket Number: No. 06-3358.,No. 06-3357.,06-3357.,06-3358.
• Citation: 505 F.3d 818
• Parties: C.B.C. DISTRIBUTION AND MARKETING, INC., Plaintiff-Appellee, v. MAJOR LEAGUE BASEBALL ADVANCED MEDIA, L.P., Defendant-Appellant, The Major League Baseball Players Association, Intervenor-Appellant. National Football League Players Association, National Football League Players, Inc.; NBA Properties, Inc.; NHL Enterprises, L.P.: NFL Ventures, L.P.; National Association for Stock Car Auto Racing, Inc.; PGA Tour, Inc.; WNBA Enterprises, LLC; International Licensing Industry Merchandisers' Association, Inc., Amici on behalf of Appellants.
• Court: U.S. Court of Appeals — Eighth Circuit

505 F.3d 818

C.B.C. DISTRIBUTION AND MARKETING, INC., Plaintiff-Appellee, v. MAJOR LEAGUE BASEBALL ADVANCED MEDIA, L.P., Defendant-Appellant, The Major League Baseball Players Association, Intervenor-Appellant.

National Football League Players Association, National Football League Players, Inc.; NBA Properties, Inc.; NHL Enterprises, L.P.: NFL Ventures, L.P.; National Association for Stock Car Auto Racing, Inc.; PGA Tour, Inc.; WNBA Enterprises, LLC; International Licensing Industry Merchandisers' Association, Inc., Amici on behalf of Appellants.

No. 06-3357.

No. 06-3358.

United States Court of Appeals, Eighth Circuit.

Submitted: June 14, 2007.

Filed: October 16, 2007.

Rehearing and Rehearing En Banc Denied November 26, 2007.

Virginia A. Seitz, argued, Washington, D.C. (Steven A. Fehr, Travis A. Salmon, Donald R. Aubrey, Russell S. Jones, Jr., Kansas City, MO, on the brief), for appellant.

Rudolph A. Telscher, Jr., argued, St. Louis, MO (Kara R. Yancey, Molly Edwards, St. Louis, MO, on the brief), for appellee.

Before LOKEN, Chief Judge, ARNOLD and COLLOTON, Circuit Judges.

ARNOLD, Circuit Judge.

C.B.C. Distribution and Marketing, Inc., brought this action for a declaratory judgment against Major League Baseball Advanced Media, L.P., to establish its right to use, without license, the names of and information about major league baseball players in connection with its fantasy baseball products. Advanced Media counter-claimed, maintaining that CBC's fantasy baseball products violated rights of publicity belonging to major league baseball players and that the players, through their association, had licensed those rights to Advanced Media, the interactive media and Internet company of major league baseball. The Major League Baseball Players Association intervened in the suit, joining in Advanced Media's claims and further asserting a breach of contract claim against CBC. The district court granted summary judgment to CBC, see C.B.C. Distrib. and Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 443 F.Supp.2d 1077 (E.D.Mo.2006), and Advanced Media and the Players Association appealed. We affirm.

I.

CBC sells fantasy sports products via its Internet website, e-mail, mail, and the telephone. Its fantasy baseball products incorporate the names along with performance and biographical data of actual major league baseball players. Before the commencement of the major league baseball season each spring, participants form their fantasy baseball teams by "drafting" players from various major league baseball teams. Participants compete against other fantasy baseball "owners" who have also drafted their own teams. A participant's success, and his or her team's success, depends on the actual performance of the fantasy team's players on their respective actual teams during the course of the major league baseball season. Participants in CBC's fantasy baseball games pay fees to play and additional fees to trade players during the course of the season.

From 1995 through the end of 2004, CBC licensed its use of the names of and information about major league players from the Players Association pursuant to license agreements that it entered into with the association in 1995 and 2002. The 2002 agreement, which superseded in its entirety the 1995 agreement, licensed to CBC "the names, nicknames, likenesses, signatures, pictures, playing records, and/or biographical data of each player" (the "Rights") to be used in association with CBC's fantasy baseball products.

In 2005, after the 2002 agreement expired, the Players Association licensed to Advanced Media, with some exceptions, the exclusive right to use baseball players' names and performance information "for exploitation via all interactive media." Advanced Media began providing fantasy baseball games on its website, MLB.com, the official website of major league baseball. It offered CBC, in exchange for a commission, a license to promote the MLB.com fantasy baseball games on CBC's website but did not offer CBC a license to continue to offer its own fantasy baseball products. This conduct by Advanced Media prompted CBC to file the present suit, alleging that it had "a reasonable apprehension that it will be sued by Advanced Media if it continues to operate its fantasy baseball games."

The district court granted summary judgment to CBC. It held that CBC was not infringing any state-law rights of publicity that belonged to major league baseball players. C.B.C., 443 F.Supp.2d at 1106-07. The court reasoned that CBCs fantasy baseball products did not use the names of major league baseball players as symbols of their identities and with an intent to obtain a commercial advantage, as required to establish an infringement of a publicity right under Missouri law (which all parties concede applies here). Id. at 1085-89. The district court further held that even if CBC were infringing the players' rights of publicity, the first amendment preempted those rights. Id. at 1091-1100. The court rejected, however, CBC's argument that federal copyright law preempted the rights of publicity claim. Id. at 1100-03. Finally, the district court held that CBC was not in violation of the no-use and no-contest provisions of its 2002 agreement with the Players Association because "the strong federal policy favoring the full and free use of ideas in the public domain as manifested in the laws of intellectual property prevails over [those] contractual provisions" (internal quotations omitted). Id. at 1106-07.

Because this appeal is from the district court's grant of summary judgment, our review is de novo, and we apply "the same standards as the district court and view[] the evidence in the light most favorable to the nonmoving party." Travelers Prop. Cas. Co. of Am. v. General Cas. Ins. Co., 465 F.3d 900, 903 (8th Cir.2006). Summary judgment is appropriate only if "there is no genuine issue as to any material fact and . . . the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). We also review de novo the district court's interpretation of state law, including its interpretation of Missouri law regarding the right of publicity. See Hammer v. City of Osage Beach, 318 F.3d 832, 841 (8th Cir.2003). When state law is ambiguous, we must "predict how the highest court of that state would resolve the issue." Clark v. Kellogg Co., 205 F.3d 1079, 1082 (8th Cir.2000).

II.

A.

An action based on the right of publicity is a state-law claim. See Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 566, 97 S.Ct. 2849, 53 L.Ed.2d 965 (1977). In Missouri, "the elements of a right of publicity action include: (1) That defendant used plaintiff's name as a symbol of his identity (2) without consent (3) and with the intent to obtain a commercial advantage." Doe v. TCI Cablevision, 110 S.W.3d 363, 369 (Mo.2003), cert. denied, 540 U.S. 1106, 124 S.Ct. 1058, 157 L.Ed.2d 892 (2004). The parties all agree that CBC's continued use of the players' names and playing information after the expiration of the 2002 agreement was without consent. The district court concluded, however, that the evidence was insufficient to make out the other two elements of the claim, and we address each of these in turn.

With respect to the symbol-of-identity element, the Missouri Supreme Court has observed that "`the name used by the defendant must be understood by the audience as referring to the plaintiff.'" The state court had further held that "[i]n resolving this issue, the fact-finder may consider evidence including `the nature and extent of the identifying characteristics used by the defendant, the defendant's intent, the fame of the plaintiff, evidence of actual identification made by third persons, and surveys or other evidence indicating the perceptions of the audience.'" Doe, 110 S.W.3d at 370 (quoting Restatement (Third) of Unfair Competition § 46 cmt. d).

Here, we entertain no doubt that the players' names that CBC used are understood by it and its fantasy baseball subscribers as referring to actual major league baseball players. CBC itself admits that: In responding to the appellants' argument that "this element is met by the mere confirmation that the name used, in fact, refers to the famous person asserting the violation," CBC stated in its brief that "if this is all the element requires, CBC agrees that it is met." We think that by reasoning that "identity," rather than "mere use of a name," "is a critical element of the right of publicity," the district court did not understand that when a name alone is sufficient to establish identity, the defendant's use of that name satisfies the plaintiff's burden to show that a name was used as a symbol of identity.

It is true that with respect to the "commercial advantage" element of a cause of action for violating publicity rights, CBC's use does not fit neatly into the more traditional categories of commercial advantage, namely, using individuals' names for advertising and merchandising purposes in a way that states or intimates that the individuals are endorsing a product. Cf. Restatement (Third) of Unfair Competition § 47 cmt. a, b. But the Restatement, which the Missouri Supreme Court has recognized as authority in this kind of case, see Doe, 110 S.W.3d at 368, also says that a name is used for commercial advantage when it is used "in connection with services rendered by the user" and that the plaintiff need not show that "prospective purchasers are likely to believe" that he or she endorsed the product or service. Restatement (Third) of Unfair Competition § 47 & cmt. a. We note, moreover, that in Missouri, "the commercial advantage element of the right of publicity focuses on the defendant's intent or purpose to obtain a commercial benefit from use of the plaintiff's identity." Doe, 110 S.W.3d at 370-71. Because we think that it is clear that CBC uses...