Haelan Laboratories v. Topps Chewing Gum

• Decision Date: 16 February 1953
• Docket Number: No. 158,Docket 22564.,158
• Citation: 202 F.2d 866
• Parties: HAELAN LABORATORIES, Inc. v. TOPPS CHEWING GUM, Inc.
• Court: U.S. Court of Appeals — Second Circuit

202 F.2d 866 (1953)

HAELAN LABORATORIES, Inc. v. TOPPS CHEWING GUM, Inc.

No. 158, Docket 22564.

United States Court of Appeals Second Circuit.

Argued January 6, 1953.

Decided February 16, 1953.

On Petition for Rehearing and Motion to Stay Mandate March 20, 1953.

Jonas J. Shapiro, New York City (Janet Perlman, New York City, of counsel), for plaintiff.

Pennie, Edmonds, Morton, Barrows & Taylor, New York City (George E. Middleton, New York City, of counsel), for defendant.

Before SWAN, Chief Judge, and CLARK and FRANK, Circuit Judges.

FRANK, Circuit Judge.

After a trial without a jury, the trial judge dismissed the complaint on the merits.¹ The plaintiff maintains that defendant invaded plaintiff's exclusive right to use the photographs of leading baseball-players. Probably because the trial judge ruled against plaintiff's legal contentions, some of the facts were not too clearly found.

1. So far as we can now tell, there were instances of the following kind:

(a). The plaintiff, engaged in selling chewing-gum, made a contract with a ballplayer providing that plaintiff for a stated term should have the exclusive right to use the ball-player's photograph in connection with the sales of plaintiff's gum; the ball-player agreed not to grant any other gum manufacturer a similar right during such term; the contract gave plaintiff an option to extend the term for a designated period.

(b). Defendant, a rival chewing-gum manufacturer, knowing of plaintiff's contract, deliberately induced the ball-player to authorize defendant, by a contract with defendant, to use the player's photograph in connection with the sales of defendant's gum either during the original or extended term of plaintiff's contract, and defendant did so use the photograph.

Defendant argues that, even if such facts are proved, they show no actionable wrong, for this reason: The contract with plaintiff was no more than a release by the ballplayer to plaintiff of the liability which, absent the release, plaintiff would have incurred in using the ball-player's photograph, because such a use, without his consent, would be an invasion of his right of privacy under Section 50 and Section 51 of the New York Civil Rights Law; this statutory right of privacy is personal, not assignable; therefore, plaintiff's contract vested in plaintiff no "property" right or other legal interest which defendant's conduct invaded.

Both parties agree, and so do we, that, on the facts here, New York "law" governs. And we shall assume, for the moment, that, under the New York decisions, defendant correctly asserts that any such contract between plaintiff and a ballplayer, in so far as it merely authorized plaintiff to use the player's photograph, created nothing but a release of liability. On that basis, were there no more to the contract, plaintiff would have no actionable claim against defendant. But defendant's argument neglects the fact that, in the contract, the ball-player also promised not to give similar releases to others. If defendant, knowing of the contract, deliberately induced the ball-player to break that promise, defendant behaved tortiously.² See, e. g., Hornstein v. Podwitz, 254 N.Y. 443, 173 N.E. 674, 84 A.L.R. 1; 6 Corbin, Contracts (1951) Sec. 1470.

Some of defendant's contracts were obtained by it through its agent, Players Enterprise, Inc; others were obtained by Russell Publishing Co., acting independently, and were then assigned by Russell to defendant. Since Players acted as defendant's agent, defendant is liable for any breach of plaintiff's contracts thus induced by Players. However, as Russell did not act as defendant's agent when Russell, having knowledge of plaintiff's contract with a player, by subsequently contracting with that player, induced a breach of plaintiff's contract, defendant is not liable for any breach so induced; nor did there arise such a liability against defendant for such an induced breach when defendant became the assignee of one of those Russell contracts.

2. The foregoing covers the situations where defendant, by itself or through its agent, induced breaches. But in those instances where Russell induced the breach, we have a different problem; and that problem also confronts us in instances — alleged in one paragraph of the complaint and to which the trial judge in his opinion also (although not altogether clearly) refers — where defendant, "with knowledge of plaintiff's exclusive rights," used a photograph of a ball-player without his consent during the term of his contract with plaintiff.³

With regard to such situations, we must consider defendant's contention that none of plaintiff's contracts created more than a release of liability, because a man has no legal interest in the publication of his picture other than his right of privacy, i. e., a personal and non-assignable right not to have his feelings hurt by such a publication.

A majority of this court rejects this contention. We think that, in addition to and independent of that right of privacy (which in New York derives from statute), a man has a right in the publicity value of his photograph, i. e., the right to grant the exclusive privilege of publishing his picture, and that such a grant may validly be made "in gross," i. e., without an accompanying transfer of a business or of anything else. Whether it be labelled a "property" right is immaterial; for here, as often elsewhere, the tag "property" simply symbolizes the fact that courts enforce a claim which has pecuniary worth.

This right might be called a "right of publicity." For it is common knowledge that many prominent persons (especially actors and ball-players), far from having their feelings bruised through public exposure of their likenesses, would feel sorely deprived if they no longer received money for authorizing advertisements, popularizing their countenances, displayed in newspapers, magazines, busses, trains and subways. This right of publicity would usually yield them no money unless it could be made the subject of an exclusive grant which barred any other advertiser from using their pictures.

We think the New York decisions recognize such a right. See, e. g., Wood v. Lucy, Lady Duff Gordon, 222 N.Y. 88, 118 N.E. 214; Madison Square Garden Corp. v. Universal Pictures Co., 255 App.Div. 459, 465, 7 N.Y.S.2d 845; Cf. Liebig's Extract of Meat Co. v. Liebig Extract Co., 2 Cir., 180 F. 688.

We think Pekas Co., Inc. v. Leslie, 52 N.Y.L.J.1864, decided in 1915 by Justice Greenbaum sitting in the Supreme Court Term, is not controlling since — apart from a doubt as to whether an opinion of that court must be taken by us as an authoritative exposition of New York law — the opinion shows that the judge had his attention directed by plaintiff exclusively to Sections 50 and 51 of the New York statute, and, accordingly, held that the right of privacy was "purely personal and not assignable" because "rights for outraged feelings are no more assignable than would be a claim arising from a libelous utterance." We do not agree with Hanna Mfg. Co. v. Hillerich & Bradsby Co., 5 Cir., 78 F.2d 763, 101 A.L.R. 484; see adverse comments on that decision in 36 Col.Law Rev. (1936) 502, 49 Harv. Law Rev. (1936) 496, and 45 Yale L.J. (1936) 520.⁴

We said above that defendant was not liable for a breach of any of plaintiff's contracts induced by Russell, and did not become thus liable (for an induced breach) when there was assigned to defendant a contract between Russell and a ball-player, although Russell, in making that contract, knowingly induced a breach of a contract with plaintiff. But plaintiff, in its capacity as exclusive grantee of a player's "right of publicity," has a valid claim against defendant if defendant used that player's photograph during the term of plaintiff's grant and with knowledge of it. It is no defense to such a claim that defendant is the assignee of a subsequent contract between that player and Russell, purporting to make a grant to Russell or its assignees. For the prior grant to plaintiff renders that subsequent grant invalid during the period of the grant (including an exercised option) to plaintiff, but...