What's the score? Does the right of publicity protect professional sports leagues?

• Author: Edwards, Pamela

INTRODUCTION

For nearly forty-five years, courts have protected the marketable identity of professional athletes and other celebrities in a number of factual settings, under the rubric of "the right of publicity."(1) During that time, changes in technology have altered the concept of what constitutes a protectible, marketable identity. This Article discusses: (1) the breadth of this protection as applied to athletes, groups of athletes; and (2) whether it applies to

sports leagues.

In doing so, this Article examines: (1) what constitutes the right of publicity; (2) whether the right applies to sports leagues; and (3) whether sports leagues can use the right of publicity to, inter alia, restrict the dissemination of scores and statistics while games are in progress. To provide a paradigm for how sports leagues could use the right to protect its interests, this Article uses the National Basketball Association ("NBA" or "League") as a prototype. Recently, the NBA brought suit against a company that provides "real-time," that is, virtually contemporaneous, updates of sporting events.(2) The NBA brought several federal causes of action, including Lanham Act(3) claims, copyright infringement claims, as well as state common law causes of action.(4) Although the NBA brought a New York State common law "hot-news" misappropriation cause of action, it did not bring a right of publicity cause of action, probably because of New York state courts' position that there is no separate common law right of publicity outside of the New York Civil Rights sections 50 and 51.(5) Part I of this Article discusses how the NBA would have fared had it brought a right of publicity cause of action in other jurisdictions assuming that the League has a marketable identity.(6) Part II examines whether leagues have a protectible marketable identity independent of the marketable identities of their constituent athletes and, if such a protectible marketable interest does exist, whether game statistics and scores evoke this identity.(7) The Article concludes that, in those states that recognize the right of publicity, that right would protect a marketable identity of sports leagues independent of the marketable identity of individual athletes.(8)

1. BACKGROUND

   1. The Right of Publicity Defined

      The right of publicity protects athletes' and celebrities' marketable identities from commercial misappropriation by recognizing their right to control and profit from the use of their names and nicknames,(9) likenesses,(10) portraits,(11) performances (under certain circumstances),(12) biographical facts,(13) symbolic representations,(14) or anything else that evokes this marketable identity.(15) Thus, any trait that uniquely identifies celebrities or athletes implicates their marketable identities. "`[T]he reaction of the public to name and likeness, which may be fortuitous or which may be managed and planned, endows the name and likeness of the person involved with commercially exploitable opportunities.'"(16)

      One of the seminal right of publicity cases is Haelan Laboratories v. Topps Chewing Gum, Inc.(17) In Haelan, the Second Circuit coined the term "right of publicity" which, in contrast to the right of privacy (the right of natural persons to live their lives in peace), protects the right of "prominent persons (especially ... ball-players)" to receive compensation "for authorizing advertisements, popularizing their countenances, displayed in newspapers, magazines, busses, trains and subways."(18) Haelan involved a suit brought by one chewing gum manufacturer against a rival manufacturer; the plaintiff alleged that the defendant induced athletes to breach their contracts for the use of those athletes' pictures in the marketing of chewing gum.(19) The athletes signed contracts with both manufacturers, allowing them to use the athletes' pictures on baseball trading cards.(20) The court rejected the defendant's argument that there is no assignable right or "interest in the publication of [a prominent person's] picture other than his right of privacy."(21) In doing so, the court held that

      in addition to and independent of [the] right of privacy (which in New York derives from statute), a man has a right in the publicity value of his photograph.... This right of publicity would usually yield ... no money unless it could be made the subject of an exclusive grant which barred any other advertiser from using their pictures.(22) State courts have also adopted this line of reasoning. For example, in reaching its decision in Hirsch v. S.C. Johnson, the Supreme Court of Wisconsin distinguished the right of publicity from the right of privacy.(23) The court clarified the right of publicity as protecting the property right in the publicity value of a person's identity. As the U.S. Supreme Court stated in Zacchini v. Scripps-Howard Broadcasting Co.(24)

      "The rationale for [protecting the right of publicity] is the straightforward one of preventing unjust enrichment by the theft of good will. No social purpose is served by having the defendant get free some aspect of the plaintiff that would have market value and for which he would normally pay."(25) B. Historic Development of the Right of Publicity

      Although the right of publicity and the right of privacy protect different interests, courts and legal scholars have discussed the two in tandem.(26) In fact, some scholars have stated that the right of publicity has developed from the right of privacy.(27) For example, in an oft-cited law review article, William L. Prosser divided the right of privacy into four separate torts, one of which protects against the "[a]ppropriation, for the defendant's advantage, of the plaintiffs name or likeness."(28) There has been some disagreement concerning whether the right of publicity is purely a tort right or whether it protects a property right.(29) However, most courts appear to have adopted the position that the right of publicity, unlike the general invasion of privacy tort, "protects pecuniary and proprietary interests [rather than] emotional interests."(30)

   3. National Basketball Association v. Motorola, Incorporated.(31)

      In NBA v. Motorola, the NBA brought suit seeking relief from Motorola's SportsTrax service which, inter alia, provides subscribers with information on scores and statistics of games in progess via electronic pagers.(32)

      1. The NBA v. Motorola Facts

         In district court, the NBA argued that Motorola violated both the League's copyright in the games and in the game broadcasts by disseminating the scores of games in progress.(33) As discussed below,(34) Motorola received information concerning games in progress from licensed NBA broadcasts.(35) The district court, using the test set out in Feist Publications, Inc. v. Rural Telephone Service Co.,(36) stated that "`[t]o establish copyright infringement, "two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.'""(37) Using this test, the court found that the NBA failed to meet the first element of the test, ownership of a valid copyright, as to the games themselves, and failed to meet the second element of the test, a copying, as to the broadcasts of the games.(38) Following the line of cases that have addressed the issue of the copyrightability of sporting events, the district court held that NBA games are not protected under the Copyright Act.(39) The court stated that "NBA games do not constitute `original works of authorship' and thus do not fall within the subject matter of copyright protection under 17 U.S.C. [subsections] 102, 103."(40)

         As to the League's claim that Motorola violated the copyrights in the broadcasts of the games, the court held that Motorola did not copy any of the protected features of the broadcasts, stating:

         In the instant case, although direct evidence exists that defendants actually copied certain aspects of the broadcasts of the NBA games, this evidence also reveals that defendants copied, at most, the idea of an NBA game and facts from specific NBA games, both of which are beyond the realm of protectibility.(41) Next, the district court addressed the NBA's commercial misappropriation claim.(42) The League alleged that Motorola's dissemination of the scores of games in progress violated the NBA's property rights in the games and in the broadcasts of the games, rights that were recognized under New York State common law.(43) Motorola asserted the defense that section 301 of the Copyright Act preempted common-law misappropriation claims.(44) The court rejected this defense in part and accepted it in part, holding that the rights in the broadcasts were preempted because the broadcasts were copyrightable, but that the rights in the games themselves were not preempted because the games were not copyrightable, and thus not governed by the Copyright Act.(45) The Second Circuit reversed the district court's holding as to the preemption of New York State's common law misappropriation.(46)

         In addition to the federal copyright claims, the NBA brought other federal claims. The League alleged that Motorola violated section 43(a) of the Lanham Act; the NBA contended that Motorola's advertising contained false designations of origin and constituted false advertising.(47) The district court rejected these claims.(48) The League also alleged that by taking information from cable telecasts to transmit over the SportsTrax service, Motorola violated the Communications Act, prohibiting unauthorized transmissions of interstate and foreign communications.(49)

         The district court held that, because the NBA did not adduce any evidence that Motorola "intercepted" cable transmissions, and because Motorola did not play a legitimate role in cable transmissions, this claim failed.(50) Thus, the district court judge dismissed all of the NBA's claims except the New York state law misappropriation claim.(51) On appeal, Judge Winter...