Doe v. McFarlane

• Court: Missouri Court of Appeals
• Writing for the Court: Glenn A. Norton
• Citation: Doe v. McFarlane, 207 S.W.3d 52 (Mo. App. 2006)
• Decision Date: 20 June 2006
• Docket Number: No. ED 85283.,ED 85283.
• Parties: John DOE a/k/a Tony Twist, Respondent, v. Todd McFARLANE and Todd McFarlane Productions, Inc., Appellants.

Page 52

207 S.W.3d 52

John DOE a/k/a Tony Twist, Respondent, v. Todd McFARLANE and Todd McFarlane Productions, Inc., Appellants.

No. ED 85283.

Missouri Court of Appeals, Eastern District, Division Five.

June 20, 2006.

Motion for Rehearing and/or Transfer to Supreme Court Denied July 26, 2006.

Application for Transfer Denied December 19, 2006.

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Thomas C. Walsh, James F.Bennett, Michael A. Kahn, Geoffrey Gerber, St. Louis, for appellants.

James P. Holloran, Saint Louis, Robert D. Blitz, John E. Bardgett, R. Thomas Avery, Thomas W. Rynard, Clayton, for respondent.

OPINION

GLENN A. NORTON, Chief Judge.

A jury rendered a verdict against Todd McFarlane and Todd McFarlane Productions, Inc. ("TMP") on Tony Twist's right of publicity claim involving the use of his name in a comic book. McFarlane and TMP appeal. We affirm.

I. BACKGROUND

McFarlane is the creator of the very successful Spawn comic book series, which his production company, TMP, issues. Twist is a former professional hockey player who played for the Quebec Nordiques and the St. Louis Blues. One of the characters in the Spawn comic book is named "Tony Twist," a mafia boss who first appeared unnamed in a 1992 issue and then as "Antonio Twist." Shortly thereafter, he was referred to as "Tony Twist" and then "Antonio Twistelli," and these names were meant to be interchangeable. In response to fan letters and in an interview for a magazine article, McFarlane said that he named the character after Twist the hockey player.

This appeal arises from the second trial of Twist's claims against McFarlane and TMP for using his name without his consent. In the first trial, the jury found McFarlane, TMP and other defendants associated with Spawn products liable for misappropriating Twist's name and awarded Twist $24.5 million. But the trial court entered a judgment notwithstanding that verdict because Twist had not made a submissible case. On appeal, the Supreme Court set forth the elements of Twist's cause of action, which was properly called a right of publicity claim, and determined that Twist had made a submissible case. Doe v. TCI Cablevision, 110 S.W.3d 363, 369-72 (Mo. banc 2003). The Court then addressed the defendants' claim that use of Twist's name in the comic book was expressive speech entitled to protection under the First Amendment. The Court adopted a predominant use test to determine whether speech like this, which is both expressive and commercial, is protected. Id. at 374. The Court concluded that, on the record in that case, the use of Twist's name was predominantly a ploy to sell comic books and related products rather than an artistic or literary expression. Id. Under those circumstances, the speech was afforded no protection. Id. at 374, 376. Nevertheless, the case was remanded for a new trial based on an instructional error. See id. at 375-76.

After the second trial, the jury rendered a verdict in Twist's favor and against McFarlane and TMP¹ and awarded Twist $15 million in damages. McFarlane and TMP moved for a judgment notwithstanding the verdict, arguing, among other things, that use of the name "Tony Twist" was not actionable because its predominant purpose was artistic, not commercial and therefore was protected speech under the test set forth in Doe. They also sought, in the alternative, a new trial. The trial court denied those motions, and McFarlane and TMP appeal. On appeal, they challenge the trial court's finding that the evidence demonstrated that the predominant purpose for using Twist's name was commercial and not artistic and therefore not protected speech under the First Amendment; they argue that the trial court erred in admitting expert testimony regarding Twist's lost endorsement deals and his entitlement to royalties from Spawn products because of the defendants' use of his name; they challenge the admission of a magazine article regarding the naming of Spawn characters and admission of the HBO animated Spawn series; and they contend that the damages instruction was erroneous.

II. DISCUSSION

A. First Amendment Protection

On appeal of cases involving the First Amendment, we are obliged to determine for ourselves whether the speech at issue is protected by independently reviewing the entire record. See Bose Corporation v. Consumers Union of United States, Inc., 466 U.S. 485, 510-11, 104 S.Ct. 1949, 80 L.Ed.2d 502 (1984). Where the trial court has reviewed the evidence on a motion for judgment notwithstanding the verdict and made an express finding about constitutional facts—here, in denying the motion for judgment notwithstanding the verdict, the court expressly found that the evidence showed the predominant purpose for using Twist's name was commercial and not artistic—then our independent review must include due deference to the trial court's opportunity to observe the demeanor of the witnesses. See Warner v. Kansas City Star Company, 726 S.W.2d 384, 390 (Mo.App. W.D.1987); see also Bose, 466 U.S. at 499-500, 104 S.Ct. 1949.

In the first appeal of this case, the Supreme Court adopted a predominant use test for determining whether the use of a person's name and identity is protected speech under the First Amendment. Doe, 110 S.W.3d at 374. The Court rejected other tests that grant First Amendment protection to the use of another's name if it is expressive in any way, regardless of commercial exploitation, and instead found a "more balanced balancing test":

At least one commentator, however, has advocated the use of a more balanced balancing test—a sort of predominant use test—that better addresses the cases where speech is both expressive and commercial:

If a product is being sold that predominantly exploits the commercial value of an individual's identity, that product should be held to violate the right of publicity and not be protected by the First Amendment, even if there is some "expressive" content in it that might qualify as "speech" in other circumstances. If, on the other hand, the predominant purpose of the product is to make an expressive comment on or about a celebrity, the expressive values could be given greater weight.

Id. (quoting Mark S. Lee, Agents of Chaos: Judicial Confusion in Defining the Right of Publicity-Free Speech Interface, 23 LOY. L.A. ENT. L.REV. 471, 500 (2003)). In applying this test, the Court first noted that although Twist had made a submissible case that the defendants used his name and identity for a commercial advantage, there was an expressive component to the name in that it was a metaphorical reference to tough-guy enforcers. Doe, 110 S.W.3d at 374. Yet, the defendants agreed that use of Twist's name was not a parody of Twist or other expressive comment. Id. Thus, the Court concluded that "the metaphorical reference to Twist, though a literary device, has very little literary value compared to its commercial value. On the record here, the use and identity of Twist's name has become predominantly a ploy to sell comic books and related products rather than an artistic or literary expression." Id.

McFarlane and TMP contend that the Supreme Court's test is a balancing of values, which requires courts to "`value' the artistic worth of the use of someone's name against the commercial value of that use." They argue that there was ample evidence that the name "Tony Twist" had artistic value, which far outweighed the sparse evidence that the name had any commercial value. They rely heavily on literary expert opinions to demonstrate artistic value. To demonstrate a lack of commercial value, they argue that Twist was an obscure hockey player in Canada with no endorsement deals during the "critical" years—namely, the year the "Tony Twist" character first appeared in the comic book and the year McFarlane referred to Twist the hockey player in response to fan letters. Thus, they claim they are entitled to First Amendment protection under the predominant use test.²

McFarlane and TMP misunderstand the test. The thrust of the predominant use test is to distinguish between commercial exploitation and genuine expressive comment. See Lee, supra, at 500 (restating the test as "whether the publicity right is being exploited or the individual is being commented on."). It is simply unnecessary to determine the name's particular commercial value in a monetary sense by reference to the plaintiff's fame at a particular time—the way McFarlane and TMP suggest—or to determine the name's artistic worth by way of a third-party's opinion as to the name's literary elements—the way McFarlane and TMP suggest—in order to decide whether the defendants' purpose in using the name was exploitive or expressive. This is evident from the Supreme Court's application of the test to the record of the first trial in this case.

The Court began its analysis with a reference to the same evidence that it had found was sufficient to make a submissible case on the element of commercial advantage: "[a]s discussed, Twist made a submissible case that respondents' use of his name and identity was for a commercial advantage." Doe, 110 S.W.3d at 374. In reaching that conclusion, the Court had cited to evidence that the defendants' "statements and actions reveal their intent to create the impression that Twist was somehow associated with the Spawn comic book," that they marketed Spawn products to hockey fans and that McFarlane induced readers to purchase the comic book in order to see Twist's and other hockey players' names. Id. at 371. Nowhere in the Court's analysis is there any discussion of what Twist's name was commercially worth—in a monetary sense—at any given time. Thus, whether the defendants' predominant purpose was to exploit the commercial value of the plaintiff's name cannot depend on how much monetary value the name had or the Supreme Court would have discussed that.

The evidence at the second trial was virtually the same regarding...