Allison v. Vintage Sports Plaques

Citations: 136 F.3d 1443; 46 U.S.P.Q. 2d (BNA) 1138; 1998 U.S. App. LEXIS 5026; 1998 WL 119796Docket: 96-6809

Court: Court of Appeals for the Eleventh Circuit; March 18, 1998; Federal Appellate Court

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The Eleventh Circuit Court of Appeals addressed whether the "first-sale doctrine" applies to the common-law right of publicity in the case of Elisa Allison and Orel Hershisher against Vintage Sports Plaques and HMA Investments, Inc. The court affirmed the district court's grant of summary judgment to Vintage. 

Elisa Allison, the widow of race-car driver Clifford Allison, had a licensing agreement with Maxx Race Cards, which paid royalties to his estate for the use of his likeness. Orel Hershisher, a professional baseball player, had a similar agreement with the Major League Baseball Players Association (MLBPA), which allowed licensing of his name and image. Vintage purchased trading cards from licensed manufacturers, framed them, and marketed them as "Limited Edition" collectibles without altering the cards or having any licensing agreement with the appellants.

Allison filed suit alleging infringement of licensure rights, violation of the right of publicity, and conspiracy. After the case was removed to federal court, the district court granted Vintage's summary judgment motion, concluding that while the appellants presented a prima facie case of right of publicity violation, the first-sale doctrine served as a defense. The court characterized Vintage's actions as repackaging trading cards rather than exploiting the appellants' likenesses for profit, leading to the summary judgment in favor of Vintage.

Grants of summary judgment are reviewed de novo, applying the same legal standard as the district court, which is that summary judgment is appropriate when there is no genuine issue of material fact (Fed. R. Civ. P. 56(c)). In diversity cases, federal courts must apply state substantive law (Erie R.R. Co. v. Tompkins). The district court applied Alabama law, citing Birmingham Broadcasting Co. v. Bell, which recognized a cause of action for violation of the right of publicity as a form of privacy violation. The Bell case established that a public figure's name or image cannot be used for commercial purposes without consent, distinguishing it from newsworthy uses. Alabama law recognizes four distinct wrongs for invasion of privacy, including the commercial appropriation of a person's likeness. The Alabama Supreme Court has addressed this tort twice, notably in Schifano v. Greene County Greyhound Park, where it ruled that plaintiffs could not succeed in a commercial misappropriation claim without demonstrating unique value in their likenesses. Other cases, like Kyser-Smith v. Upscale Communications, allowed claims to proceed based on establishing genuine issues of value and benefit. Alabama's commercial appropriation right of privacy is analogous to, but not identical with, the right of publicity recognized in other states, with the latter being accepted in only sixteen states.

The right of publicity differs from the commercial-appropriation aspect of privacy rights primarily in focus: the former addresses commercial harm to an individual's identity, while the latter concerns psychological harm to human dignity. Alabama's commercial appropriation invasion of privacy tort is not explicitly labeled as the right of publicity but serves similar interests and addresses analogous harms. The elements of this tort closely align with those of the right of publicity, focusing on commercial interests rather than psychological ones. Alabama law recognizes a cause of action for invasion of privacy when a defendant uses a plaintiff's name or likeness for advertising or similar commercial purposes without consent, provided the plaintiff can show that their likeness has unique value that benefits the defendant commercially. A claim for common law misappropriation requires proof of the defendant's use of the plaintiff's identity, appropriation for the defendant's advantage, lack of consent, and resulting injury. Additionally, the district court determined that the first-sale doctrine prevents the plaintiffs from holding Vintage liable, as it establishes that consent to sell intellectual property eliminates any subsequent control over those copies by the original right-holder.

The intellectual property right monopoly is subordinate to the policies against trade restraints and alienation. The first-sale doctrine limits the scope of copyright, patent, and trademark rights. Under copyright law (17 U.S.C. § 109(a)), the owner of a lawfully made copy can sell or dispose of it without the copyright owner's permission. In patent law, the authorized sale of a patented product ends the patent owner's rights over it, allowing the buyer to use or resell the product freely (Intel Corp. v. ULSI Sys. Tech. Inc.). For trademarks, once a trademarked product is sold, the buyer can typically resell it under the original mark without liability (NEC Electronics v. CAL Circuit ABCO). 

Appellants contend that the first-sale doctrine should not apply to right of publicity claims, noting a lack of case law on this issue. They argue that the doctrine is assumed inapplicable, citing cases where likenesses were used without authorization or where usage exceeded licensing agreements. They further assert that the right of publicity protects "identity," distinct from the property protections of other intellectual property forms, claiming a celebrity's identity remains attached to the property after its first sale. 

However, two main issues arise with this argument: First, the distinction between rights protected by publicity and those under copyright is flawed, as copyright also protects expressions, not just physical items. Second, accepting this argument could severely impact various industries and grant undue monopolistic control to celebrities over their identities, disrupting the balance between celebrity interests and public rights (White v. Samsung Electronics Amer. Inc.).

A court decision not to apply the first-sale doctrine to right of publicity claims could criminalize the resale of sports trading cards and memorabilia, significantly impacting the $2 billion trading card industry. The existence of a robust secondary market for baseball cards suggests that players retain limited publicity rights concerning the resale of their images on licensed cards after the initial sale, which compensates them through royalties. This ruling would also extend to various merchandise featuring celebrity images, such as framed advertisements or promotional items. 

Conversely, applying the first-sale doctrine would not entirely strip celebrities of control over their images; they would still retain the right to license their likenesses initially. The Alabama Supreme Court is likely to endorse this doctrine, as it balances celebrity rights with public enjoyment of those identities. The case illustrates that appellants have earned substantial royalties from their licensed images, affirming that Vintage’s actions are lawful under the first-sale doctrine. Therefore, the district court's summary judgment in favor of Vintage was appropriate, as Vintage's resale of trading cards bearing the appellants' likenesses does not constitute a violation of the right of publicity. However, Vintage could infringe this right if it incorrectly marketed trading cards as official products associated with the players.

The court is tasked with determining whether Vintage's sale of plaques containing trading cards resembles reselling trading cards or using the plaintiffs' identities for profit, akin to selling branded merchandise. The district court ruled that Vintage's actions constituted lawful resale under the first-sale doctrine, leading to summary judgment in favor of Vintage on the right of publicity claim. Appellants argue that the distinction between reselling trading cards and commercial exploitation of their likenesses involves material facts that should be decided by a jury. They reference the case of Wendt v. Host Int'l, where the court of appeals reversed a summary judgment due to genuine material facts regarding the appropriation of likenesses.

In contrast, the current case acknowledges that the images used by Vintage are indeed those of the appellants, who have licensed the usage of their likenesses, differentiating it from Wendt, where no authorization existed. The court finds that the district court correctly concluded that Vintage merely engages in the resale of cards, not in the unauthorized exploitation of the plaintiffs' likenesses. The appellants’ cited cases do not apply, as they do not present similar circumstances involving licensed images. Overall, the court affirms that the summary judgment was appropriate, as Vintage is within its rights to resell the cards it lawfully obtains.

Purchasers are unlikely to buy Vintage's plaques for reasons other than displaying the mounted cards, despite the presence of clock plaques. It is concluded that consumers would not purchase these clocks solely for time-telling purposes. The court upheld the district court's summary judgment in favor of Vintage regarding the right of publicity claim, emphasizing that reselling lawfully obtained products does not constitute a violation of this right. The appellants' claims, based on Vintage marketing the plaques as "Limited Editions" and "Authentic Collectibles," do not alter the fundamental nature of the plaques. Although unauthorized use of a celebrity's name can violate the right of publicity, the law allows for the use of a celebrity’s name to identify an image if the image itself is lawfully used. The appellants' arguments hinge on the application of the first-sale doctrine and the nature of Vintage's products. The court determined that the first-sale doctrine applies, as Vintage’s displays essentially repackage the trading cards, thus permitting the use of the appellants' names without violating their common-law right of publicity. The judgment in favor of Vintage is affirmed.