The case was brought by CBC Distribution and Marketing Inc. (CBC) against the Major League Advanced Media, L.P. (MLAM) because CBC had continued to use professional baseball players’ names after being asked by MLAM to stop use. CBC filed suit in Missouri seeking a declaratory judgment that its use of these names was legal.

The relationship between the parties began in 1995, when the Major League Baseball Players Association (MLBPA) contractually granted CBC the right to use the players’ names and information. The agreement gave CBC the right to use such data in connection with its fantasy sports league products. The contractual relationship between the parties terminated in 2005 and around that time MLBPA licensed the players’ publicity rights to MLAM. CBC then filed suit as a preemptive measure against MLAM. MLBPA intervened in the suit.

The district court granted summary judgment to CBC and found that CBC’s fantasy baseball products did not violate Missouri’s publicity law because it did not use the names of the baseball players as symbols of their identities and with the intent to obtain a commercial advantage. C.B.C. Distrib. and Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 443 F. Supp. 2d 1077 (E.D.Mo.2006). Further, the lower court stated that even if the players’ publicity rights had been violated, the first amendment preempted these rights. The 8 th Circuit affirmed the district court’s holding but did not follow the opinion of the district court. Instead, the appellate court found that CBC’s actions had violated the players’ publicity rights under Missouri law but that the First Amendment trumped the players’ rights and, therefore, CBC’s actions were not prohibited.

Diverging from the opinion of the district court, the 8 th Circuit held that the baseball players’ publicity rights were, in fact, violated. There are three elements in an action involving a violation of publicity rights in Missouri: (1) the use of a celebrity’s name as a symbol of his identity; (2) without consent; and (3) with the intent to obtain a commercial advantage. In this instance, the court found that CBC had met the first two elements, as the company had used the baseball players’ names as symbols of their identity without first receiving consent from MLBPA.

With respect to the third element, the court explained that while the use of the players’ names was not as an endorsement of a specific product, it was for a profit and was therefore a violation of the third element of Missouri’s publicity statute. In analyzing this issue, the court referenced section 47 of the Restatement (Third) of Unfair Competition, which provides that a name is used for a “commercial advantage” when it is used in connection with services rendered and that the plaintiff need not show that prospective purchasers believed the celebrity was endorsing the product. Further, the court cited a Missouri case, Doe v. TCI Cablevision, which maintained that the commercial element may be met if the defendant’s purpose is to use the name or identity to obtain a commercial benefit. 110 S.W.3d 363, 369 (Mo. 2003). Thus, the 8 th Circuit found all three elements of the Missouri publicity statute had been violated.

Nevertheless, the court agreed with CBC and found that the First Amendment trumped the Missouri publicity statute. Specifically, the court cited Zacchini v. Scripps-Howard Broad Co., where the U.S. Supreme Court explained that state right publicity claims must be balanced against First Amendment considerations. 433 U.S. 562, 566 (1977). In analyzing the First Amendment issues, the court noted the following:

• The information used by CBC was all “readily available in the public domain and that it would be a strange law that a person would not have a First Amendment right to use information that is available to everyone.”
• CBC’s use of the names and likenesses of the players was a speech entitled to First Amendment protection.
• Because baseball is a “national pastime” followed by millions of people, the use of factual information concerning the players is a “form of expression due to substantial constitutional protection.” 2007 WL 2990366 (C.A.8 2007).

Further, the court made an interesting argument that the rights of the baseball players’ may not be the type of right that the states intended to protect when the publicity laws were enacted. The court explained that the state intended to promote the right of an individual to retrieve compensation for his or her endeavors. In that respect, the court noted that baseball players were already rewarded “handsomely” for their participation in the games. Thus, the court appears to distinguish a professional athlete’s rights from those of a scientist or literary figure who may be paid less for his work.

Finally, the 8 th Circuit had an interesting response to MLBPA’s argument that CBC had violated the “no-attack” clause in the contract with MLBPA. The court agreed that CBC had breached this clause but it found that MLBPA had also breached its contractual promise that it was the “sole and exclusive holder of all right, title and interest in and to the [players’ publicity] Rights.” 2007 WL 2990366 (C.A.8 2007). Because the court found a breach of this promise, CBC was relieved of its contractual obligation not to attack MLBPA’s rights.

This case marks an interesting turn in publicity law, as it indicates that a factual data about a celebrity or professional athlete would not be covered by a state publicity statute even if it was used for commercial purposes.

For more information, please contact

Anthony V. Lupo
lupo.anthony@arentfox.com
202.857.6353

Sarah L. Bruno
bruno.sarah@arentfox.com
202.775.5760