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DOE v. TCI CABLEVISION Mo. 363 Cite as 110 S.W.3d 363 (Mo.banc 2003) 1. Torts O8.5(6) John DOE, a/k/a Tony Action by former professional hockey Twist, Appellant, player to recover the amount of the fair v. market value that comic book creators, TCI CABLEVISION, et publishers, and marketers should have al., Respondents. paid to use his name in connection with their products and for damage done to the No. SC 84856. commercial or endorsement value of his Supreme Court of Missouri, name amounted to an action for ‘‘right-of- En Banc. publicity tort,’’ and not ‘‘misappropriation- of-name tort.’’ July 29, 2003. See publication Words and Phrases for other judicial constructions and Former professional hockey player definitions. brought action against creators, publish- ers, and marketers of comic book that 2. Torts O8.5(6) contained a villainous character with hock- The interest protected by the misap- ey player’s name, seeking an injunction propriation-of-name tort is the interest of and damages for misappropriation of the individual in the exclusive use of his name. The Circuit Court, City of St. Louis, own identity, insofar as it is represented Robert H. Dierker, J., entered judgment by his name or likeness, and in so far as notwithstanding the verdict (JNOV) in fa- the use may be of benefit to him or others. vor of defendants, overturning a $24.5 mil- Restatement (Second) of Torts § 652C. lion verdict, and denied injunctive relief, but it granted motion for new trial in 3. Torts O8.5(6) event JNOV was reversed on appeal. Misappropriation-of-name tort pro- Hockey player appealed. On transfer from tects against intrusion upon an individual’s the Court of Appeals, the Supreme Court, private self-esteem and dignity, while the Stephen N. Limbaugh, Jr., J., granted right-of-publicity tort protects against transfer from the Court of Appeals and commercial loss caused by appropriation of held that: (1) player’s action was actually an individual’s identity for commercial ex- one for right-of-publicity tort; (2) player ploitation. presented sufficient evidence that defen- dants used his name as a symbol of his 4. Damages O49, 49.10 identity, as required to make submissible In a misappropriation-of-name action, case for right-of-publicity tort; (3) evidence a plaintiff may recover damages not only that defendants used player’s name to at- for pecuniary loss, but also for mental or tract consumer attention to their products emotional distress and suffering. Restate- was sufficient to show that they used name ment (Third) of Unfair Competition § 49. intending to obtain a commercial advan- tage, as required to make submissible 5. Damages O114 case; (4) use of player’s name was not In a right-of-publicity action, the mea- protected speech; and (5) requested in- sure of damages properly focuses on the junction was overbroad. pecuniary loss to the plaintiff or the unjust Affirmed in part, reversed in part, and pecuniary gain to the defendant. Restate- remanded. ment (Third) of Unfair Competition § 49. 364 Mo. 110 SOUTH WESTERN REPORTER, 3d SERIES 6. Torts O8.5(6) lieved that player was somehow affiliated To establish a ‘‘misappropriation-of- with comic book character. name tort,’’ the plaintiff must prove that 11. Torts O8.5(6) the defendant used the plaintiff’s name To establish that a defendant used a without consent to obtain some advantage. plaintiff’s name as a symbol of his identity, 7. Torts O8.5(6) for purposes of establishing right-of-pub- In a right-of-publicity action, a plain- licity tort, the name used by the defendant tiff must prove that the defendant used the must be understood by the audience as plaintiff’s name to obtain a commercial referring to the plaintiff. Restatement advantage. Restatement (Third) of Unfair (Third) of Unfair Competition § 46. Competition § 46. 12. Torts O8.5(6), 27 8. Torts O8.5(6) In resolving issue of whether a defen- The elements of a ‘‘right-of-publicity dant used a plaintiff’s name as a symbol of tort’’ include: (1) that defendant used his identity, for purposes of a right-of- plaintiff’s name as a symbol of his identity; publicity action, the fact-finder may con- (2) without consent; (3) and with the intent sider evidence including the nature and to obtain a commercial advantage. Re- extent of the identifying characteristics statement (Third) of Unfair Competition used by the defendant, the defendant’s § 46. intent, the fame of the plaintiff, evidence of actual identification made by third per- 9. Appeal and Error O927(2) sons, and surveys or other evidence indi- Generally, in determining whether a cating the perceptions of the audience. plaintiff made a submissible case, the evi- Restatement (Third) of Unfair Competition dence is considered in the light most favor- § 46. able to the plaintiff, giving him all reason- able beneficial inferences; it is only where 13. Torts O8.5(6) there is a complete absence of probative In meeting the commercial advantage fact to support the jury’s conclusion that element of misappropriation-of-name tort, the Supreme Court will decide that a sub- it is irrelevant whether defendant intended missible case was not made. to injure the plaintiff or actually succeeded in obtaining a commercial advantage from 10. Torts O8.5(6) using plaintiff’s name. Former professional hockey player presented sufficient evidence to prove that 14. Torts O8.5(6) comic book creators, publishers, and mar- Evidence that comic book creators, keters used his name as a symbol of his publishers, and marketers used former identity, as required to make submissible professional hockey player’s name for a case for right-of-publicity tort, even villainous comic book character to attract though comic book character with player’s consumer attention to the comic books and name did not physically resemble player related products was sufficient to show and its story line did not attempt to track that they used the name intending to ob- his life, where both character and hockey tain a commercial advantage, as required player shared same unusual name and per- to make submissible case for right-of-pub- sona of a tough-guy enforcer, and at some licity tort, even if they did not intend to point both player and his mother were injure player’s marketability and derived approached by young hockey fans who be- no pecuniary benefit from use of his name. DOE v. TCI CABLEVISION Mo. 365 Cite as 110 S.W.3d 363 (Mo.banc 2003) 15. Constitutional Law O90.1(1) a commentary on his hockey fighting Torts O8.5(6) style, or a factual report on his lawsuit. Use of former professional hockey U.S.C.A. Const.Amend. 1. player’s name as the name of a villainous comic book character with Mafia connec- tions as a metaphorical reference, through literary device, to tough-guy enforcers had John E. Bardgett, Sr., Robert D. Blitz, very little literary or artistic value com- Thomas Avery, Clayton, James P. Hollo- pared to its commercial value, and thus ran, St. Louis, for Appellant. was not protected speech under the First Michael A. Kahn, Peter W. Saisich, III, Amendment; use and identity of the name Geoffrey G. Gerber, Edwin D. Akers, Jr., was predominantly a ploy to sell comic Melanie R. King, St. Louis, for Respon- books and related products rather than dents. artistic or literary expression. U.S.C.A. Const.Amend. 1. STEPHEN N. LIMBAUGH, JR., 16. Appeal and Error O1064.1(2.1) Judge. Torts O28 Appellant Anthony Twist, also known as By requiring that jury find only that Tony Twist, is a former professional hock- defendants ‘‘derived advantage from the ey player in the National Hockey League. use or publication of plaintiff’s name,’’ as After learning of the existence of a comic opposed to a finding that they used plain- book, titled Spawn, that contained a villai- tiff’s name with the intent to derive or for nous character sharing his name, Twist the purpose of deriving an advantage, the brought misappropriation of name and def- jury was allowed to render a verdict that amation claims against respondents, the could have been based on the mere inci- creators, publishers and marketers of dental result of the use rather than the Spawn and related promotional products. intentional result, and thus, such instruc- Respondents defended on First Amend- tion warranted reversal of verdict in favor ment grounds. The circuit court dis- of plaintiff in action for tort of right of missed the defamation count, but allowed publicity; jury may well have determined the misappropriation of name count to go that defendants obtained a commercial ad- to trial, which resulted in a jury verdict in vantage even though they did not intend to favor of Twist in the amount of do so. $24,500,000. The circuit court, however, granted respondents’ motion for judgment 17. Constitutional Law O90.1(1) notwithstanding the verdict and, in the Injunction O189 alternative, ordered a new trial in the Requested permanent injunction, pro- event that its judgment notwithstanding hibiting comic book creators, publishers, the verdict was overturned on appeal. A and marketers from using former profes- request for injunctive relief was also de- sional hockey player’s name, commercial nied. After appeal to the Court of Ap- image, persona, autograph or likeness peals, Eastern District, this Court granted ‘‘for any purpose’’ without his consent, transfer. Mo. Const. art. V, sec. 10. was overbroad, considering that it would prohibit a variety of expressive activities I. undoubtedly protected by the First Tony Twist began his NHL career in Amendment, such as, a parody of player, 1988 playing for the St. Louis Blues, later 366 Mo. 110 SOUTH WESTERN REPORTER, 3d SERIES to be transferred to the Quebec Nor- ly by Image Comics, Inc., which was diques, only to return to St. Louis where formed by McFarlane and others. he finished his career in 1999, due to inju- Spawn is ‘‘a dark and surreal fantasy’’ ries suffered in a motorcycle accident. centered on a character named Al Sim- During his hockey career, Twist became mons, a CIA assassin who was killed by the League’s preeminent ‘‘enforcer,’’ a the Mafia and descended to hell upon player whose chief responsibility was to death. Simmons, having made a deal with protect goal scorers from physical assaults the devil, was transformed into the crea- by opponents. In that role, Twist was ture Spawn and returned to earth to com- notorious for his violent tactics on the ice. mit various violent and sexual acts on the Describing Twist, a Sports Illustrated devil’s behalf. In 1993, a fictional charac- writer said: ‘‘It takes a special talent to ter named ‘‘Anthony ‘Tony Twist’ Twistel- stand on skates and beat someone sense- li’’ was added to the Spawn storyline. The less, and no one does it better than the St. fictional ‘‘Tony Twist’’ is a Mafia don Louis Blues left winger.’’ Austin Murphy, whose list of evil deeds includes multiple Fighting For A Living: St. Louis Blues murders, abduction of children and sex Enforcer Tony Twist, Whose Pugilistic with prostitutes. The fictional and real Talents Appear To Run In The Family, Tony Twist bear no physical resemblance Doesn’t Pull Any Punches On The Job, to each other and, aside from the common SPORTS ILLUSTRATED, Mar. 16, 1998, at 42. nickname, are similar only in that each can The article goes on to quote Twist as be characterized as having an ‘‘enforcer’’ saying, ‘‘I want to hurt them. I want to or tough-guy persona. end the fight as soon as possible and I Each issue of the Spawn comic book want the guy to remember it.’’ Id. contains a section entitled ‘‘Spawning Ground’’ in which fan letters are published Despite his well-deserved reputation as and McFarlane responds to fan questions. a tough-guy ‘‘enforcer,’’ or perhaps be- In the September 1994 issue, McFarlane cause of that reputation, Twist was im- admitted that some of the Spawn charac- mensely popular with the hometown fans. ters were named after professional hockey He endorsed products, appeared on radio players, including the ‘‘Tony Twist’’ char- and television, hosted the ‘‘Tony Twist’’ acter: ‘‘Antonio Twistelli, a/k/a Tony television talk show for two years, and Twist, is actually the name of a hockey became actively involved with several chil- player of the Quebec Nordiques.’’ And, dren’s charities. It is undisputed that again, in the November 1994 issue, McFar- Twist engaged in these activities to foster lane stated that the name of the fictional a positive image of himself in the commu- character was based on Twist, a real hock- nity and to prepare for a career after ey player, and further promised the read- hockey as a sports commentator and prod- ers that they ‘‘will continue to see current uct endorser. and past hockey players’ names in my Respondent Todd McFarlane, an books.’’ avowed hockey fan and president of Todd In April 1996, Wizard, a trade magazine McFarlane Productions, Inc. (TMP), creat- for the comic book industry, interviewed ed Spawn in 1992. TMP employs the McFarlane. In the published article, writers, artists and creative staff responsi- ‘‘Spawning Ground: A Look at the Real ble for production of the comic book. Life People Spawn Characters Are Based Spawn is marketed and distributed month- Upon,’’ McFarlane is quoted as saying that DOE v. TCI CABLEVISION Mo. 367 Cite as 110 S.W.3d 363 (Mo.banc 2003) he uses the names of real-life people to ecution of the misappropriation of name create the identities of the characters. claim, but the motions were overruled. Brief biographies and drawings of the At trial, McFarlane denied that the com- Spawn characters follow the McFarlane ic book character was ‘‘about’’ the real-life interview. The paragraph devoted to the Tony Twist despite the fact that the names ‘‘Tony Twist’’ character contained a draw- were the same. McFarlane also denied ing of the character accompanied by the that he or the other defendants had at- following description: tained any benefit by using Twist’s name. First Appearance: Spawn # 6 Twist, however, presented evidence that Real–Life Persona: Tony Twist. McFarlane and the other defendants had Relation: NHL St. Louis Blues right indeed benefited by using his name. For winger. example, Twist introduced evidence sug- The Mafia don that has made life ex- gesting that in marketing Spawn products, ceedingly rough for Al Simmons and his McFarlane directly targeted hockey fans— loved ones, in addition to putting out an Twist’s primary fan base—by producing ill-advised contract on the Violator, is and licensing Spawn logo hockey pucks, named for former Quebec Nordiques hockey jerseys and toy zambonis. On hockey player Tony Twist, now a re- cross-examination, McFarlane admitted nowned enforcer (i.e.‘‘Goon’’) for the St. that on one occasion defendants sponsored Louis Blues of the National Hockey ‘‘Spawn Night’’ at a minor league hockey League. game, where McFarlane personally ap- Below the character description was a pho- peared and distributed Spawn products, to of a Tony Twist hockey trading card, in including products containing the ‘‘Tony which Twist was pictured in his St. Louis Twist’’ character. Another ‘‘Spawn Night’’ Blues hockey jersey. was planned to take place at a subsequent In 1997, Twist became aware of the NHL game, but the event never occurred. existence of Spawn and of the comic book’s On the issue of damages, Twist, through use of his name for that of the villainous purported expert testimony, offered a for- character. On one occasion, several young mula for determining the fair market value hockey fans approached Twist’s mother that McFarlane and the other defendants with Spawn trading cards depicting the should have paid Twist to use his name. Mafia character ‘‘Tony Twist.’’ Subse- In addition, Twist introduced evidence that quently, at an autograph session Twist was his association with the Spawn character asked to sign a copy of the Wizard article resulted in a diminution in the commercial in which McFarlane was interviewed and value of his name as an endorser of prod- Twist’s hockey trading card was pictured. ucts. To that end, Sean Philips, a former In October 1997, Twist filed suit executive of a sports nutrition company, against McFarlane and various companies testified that his company withdrew a associated with the Spawn comic book $100,000 offer to Twist to serve as the (collectively ‘‘respondents’’), seeking an in- company’s product endorser after Philips junction and damages for, inter alia, mis- learned that Twist’s name was associated appropriation of name and defamation, with the evil Mafia don in the Spawn the latter claim being later dismissed. comic book. McFarlane and the other defendants filed As noted, at the conclusion of the trial, motions for summary judgment asserting the jury returned a verdict in favor of First Amendment protection from a pros- Twist and against the defendants jointly in 368 Mo. 110 SOUTH WESTERN REPORTER, 3d SERIES the amount of $24,500,000. On motions for contrast to the [misappropriation of name a judgment notwithstanding the verdict or tort], the right of publicity is not intended in the alternative a new trial, the circuit to protect the person’s feelingsTTTT’’) court overturned the verdict finding that Twist had failed to make a submissible [4, 5] Because the two torts differ in case on the misappropriation of name the type of protection that each seeks to count. The court further held that in the provide, there are corresponding differ- event the judgment notwithstanding the ences between the types of damages that verdict was reversed on appeal, the motion may be recovered. In a misappropriation for new trial was granted for evidentiary of name action, a plaintiff may recover and instructional errors. Finally, the cir- damages not only for pecuniary loss, but cuit court denied Twist’s request for in- also for mental or emotional distress and junctive relief. suffering. See Haith v. Model Cities Health Corp. of Kansas City, 704 S.W.2d II. 684, 688 (Mo.App.1986); RESTATEMENT [1–3] The tort of misappropriation of (THIRD) OF UNFAIR COMPETITION sec. 49 cmt. name is one of four recognized torts falling b (1995); MCCARTHY, TRADEMARKS sec. 28.6 under the general heading of invasion of (explaining that in misappropriation of privacy. Sullivan v. Pulitzer Broadcast- name actions, damages are ‘‘measured by ing Co., 709 S.W.2d 475, 477 (Mo. banc ‘mental distress’—some bruising of the hu- 1986). The interest protected by the mis- man psyche.’’) By contrast, in a right of appropriation of name tort ‘‘is the interest publicity action, ‘‘the measure of damages of the individual in the exclusive use of his properly focuses on the pecuniary loss to own identity, in so far as it is represented the plaintiff or the unjust pecuniary gain by his name or likeness, and in so far as to the defendant.’’ RESTATEMENT (THIRD) the use may be of benefit to him or oth- OF UNFAIR COMPETITION sec. 49 cmt. b; see ers.’’ RESTATEMENT (SECOND) OF TORTS sec. also Bear Foot, 965 S.W.2d at 389; Haith, 652C cmt. a (1977). Recently, develop- 704 S.W.2d at 688. ment of the misappropriation of name tort In this case, Twist seeks to recover the has given rise to a separate yet similar tort amount of the fair market value that re- termed the ‘‘right of publicity,’’ which is spondents should have paid to use his said to ‘‘protect a person from losing the name in connection with Spawn products benefit of their [sic] work in creating a and for damage done to the commercial publicly recognizable persona.’’ Bear value—in effect the endorsement value—of Foot, Inc. v. Chandler, 965 S.W.2d 386, 389 his name. Therefore, Twist’s case, though (Mo.App.1998). Though facially similar, brought as a misappropriation of name the protections afforded by each tort are action, is more precisely labeled a right of slightly different: ‘‘the [misappropriation publicity action—a point that both parties of name tort] protects against intrusion appear to concede in their briefs. upon an individual’s private self-esteem and dignity, while the right of publicity [6, 7] Despite the differences in the protects against commercial loss caused by types of damages that may be recovered, appropriation of an individual’s [identity] the elements of the two torts are essential- for commercial exploitation.’’ 4 J. THOMAS ly the same. To establish the misappro- MCCARTHY, MCCARTHY ON TRADEMARKS AND priation tort, the plaintiff must prove that UNFAIR COMPETITION sec. 28.6 (4th ed.2003); the defendant used the plaintiff’s name see also Bear Foot, 965 S.W.2d at 389 (‘‘In without consent to obtain some advantage. DOE v. TCI CABLEVISION Mo. 369 Cite as 110 S.W.3d 363 (Mo.banc 2003) Nemani v. St. Louis Univ., 33 S.W.3d 184, that defendant intended to obtain a com- 185 (Mo. banc 2000); Haith, 704 S.W.2d at mercial advantage, and it is not enough to 687. In a right of publicity action, the show that defendant incidentally obtained plaintiff must prove the same elements as a commercial advantage by using plaintiff’s in a misappropriation suit, with the minor name or that defendant had some other exception that the plaintiff must prove that purpose in using plaintiff’s name other the defendant used the name to obtain a than to obtain a commercial advantage. commercial advantage. RESTATEMENT Wendt v. Host Int’l, Inc., 125 F.3d 806, 811 (THIRD) OF UNFAIR COMPETITION sec. 46; see (9th Cir.1997); Benavidez v. Anheuser also RESTATEMENT (SECOND) OF TORTS sec. Busch, Inc., 873 F.2d 102, 104 (5th Cir. 652C cmt. b (explaining that, in contrast, 1989); Henley v. Dillard Dept. Stores, 46 the misappropriation of name tort applies F.Supp.2d 587, 596 (N.D.Tex.1999); see when plaintiff’s name is used for commer- generally RESTATEMENT (SECOND) OF TORTS cial or non-commercial advantage). Given sec. 652C cmt. d (explaining that a misap- the similarity of elements of the two ac- propriation of name or likeness claim tions, Missouri cases analyzing the tort of stands only if the name or likeness was misappropriation of name are pertinent to used ‘‘for the purpose of appropriating to our recognition of a right of publicity the defendant’s benefit the commercial or claim. other values associated with the name of In Nemani, the plaintiff, a research pro- likeness’’). fessor, brought suit against St. Louis Uni-  To summarize, in view of Nemani versity after the university used plaintiff’s and the earlier precedent of Bear Foot, name in support of a federal grant applica- and consistent with the RESTATEMENT tion. This Court, reviewing the claim as a (THIRD) OF UNFAIR COMPETITION, the ele- misappropriation of name tort, held that a ments of a right of publicity action include: defendant is liable under the tort when it (1) That defendant used plaintiff’s name as uses a plaintiff’s name without consent to a symbol of his identity (2) without consent obtain an advantage. 33 S.W.3d at 185. (3) and with the intent to obtain a commer- However, this Court was careful to point cial advantage. out that ‘‘[n]ot all uses of another’s name are tortious’’: In this case, the circuit court’s entry of It is the plaintiff’s name as a symbol of JNOV was based on a finding that Twist [his] identity that is involved here, and failed to make a submissible case on the not [his name] as a mere name. Name commercial advantage element. In addi- appropriation occurs where a defendant tion, and though the court implicitly held makes use of the name to pirate the otherwise, respondents claim that the plaintiff’s identity for some advantage. grant of JNOV also was justified because Twist failed to prove that his name was Id. (Citations omitted.) (Emphasis added.) used as ‘‘symbol of his identity.’’ See also Haith, 704 S.W.2d 684; Munden v. Harris, 153 Mo.App. 652, 134 S.W. 1076  ‘‘Generally, in determining whether (1911). a plaintiff made a submissible case, the In addition, though Nemani did not ex- evidence is considered in the light most pressly so hold, an element of intent is favorable to the plaintiff, giving him all implicit in the requirement that the identi- reasonable beneficial inferences.’’ Emery ty be used to obtain an advantage. In a v. Wal–Mart Stores, Inc., 976 S.W.2d 439, right of publicity case, plaintiff must prove 443 (Mo. banc 1998). It is ‘‘only where 370 Mo. 110 SOUTH WESTERN REPORTER, 3d SERIES there is a complete absence of probative name and identity. This Court agrees. fact to support the jury’s conclusion’’ that Indeed, respondent McFarlane appears to this Court will decide that a submissible have conceded the point by informing his case was not made. Giddens v. Kansas readers in separate issues of Spawn and in City Southern Ry. Co., 29 S.W.3d 813, 818 the Wizard article that the hockey player (Mo. banc 2000). Tony Twist was the basis for the comic book character’s name. A. Arguably, without these concessions, [10–12] Respondents’ initial contention some Spawn readers may not have made that Twist did not prove that his name was the connection between Twist and his fic- used as a ‘‘symbol of his identity’’ is spuri- tional counterpart. However, other evi- ous. To establish that a defendant used a dence at trial clearly demonstrated that, at plaintiff’s name as a symbol of his identity, some point, Spawn’s readers did in fact ‘‘the name used by the defendant must be make the connection, for both Twist and understood by the audience as referring to his mother were approached by young the plaintiff.’’ RESTATEMENT (THIRD) OF UN- hockey fans under the belief that appellant FAIR COMPETITION sec. 46 cmt. d; see also J. was somehow affiliated with the Spawn THOMAS MCCARTHY, THE RIGHTS OF PUBLICITY character. On this record, respondents AND PRIVACY sec. 4.48 (2d ed.2000) (quoting cannot seriously maintain that a good Geisler v. Petrocelli, 616 F.2d 636, 639 (2d many purchasers of Spawn did not readily Cir.1980)) (stating that the defendant’s use understand that respondents’ use of the of the name must be ‘‘ ‘something more name referred to appellant. Accordingly, than [an] amusing coincidence’ ’’). In re- this Court holds that Twist presented suf- solving this issue, the fact-finder may con- ficient evidence to prove that his name was sider evidence including ‘‘the nature and used as a symbol of his identity. extent of the identifying characteristics used by the defendant, the defendant’s B. intent, the fame of the plaintiff, evidence of As noted, the grant of JNOV was based actual identification made by third per- on the commercial advantage element of sons, and surveys or other evidence indi- the cause of action. Specifically, the court cating the perceptions of the audience.’’ held that the record was devoid of credible RESTATEMENT (THIRD) OF UNFAIR COMPETI- evidence that respondents intended (1) ‘‘to TION sec. 46 cmt. d. injure Twist’s marketability,’’ (2) ‘‘to capi- talize on the market recognition of the Here, all parties agree that the ‘‘Tony name,’’ or (3) ‘‘derived any pecuniary bene- Twist’’ character is not ‘‘about’’ him, in fit whatsoever from the use of that name.’’ that the character does not physically re- semble Twist nor does the Spawn story [13, 14] At the outset, two of the prem- line attempt to track Twist’s real life. In- ises for the circuit court’s rationale are stead, Twist maintains that the sharing of incorrect: Twist was under no obligation the same (and most unusual) name and the to prove that respondents intended to in- common persona of a tough-guy ‘‘enforcer’’ jure Twist’s marketability or that respon- create an unmistakable correlation be- dents actually derived a pecuniary benefit tween Twist the hockey player and Twist from the use of his name. As explained, the Mafia don that, when coupled with the commercial advantage element of the Twist’s fame as a NHL star, conclusively right of publicity focuses on the defen- establishes that respondents used his dant’s intent or purpose to obtain a com- DOE v. TCI CABLEVISION Mo. 371 Cite as 110 S.W.3d 363 (Mo.banc 2003) mercial benefit from use of the plaintiff’s that defendants violated plaintiff Johnny identity. But in meeting the commercial Carson’s right of publicity when it used advantage element, it is irrelevant whether the phrase, ‘‘Here’s Johnny,’’ in its adver- defendant intended to injure the plaintiff, tisement); Henley, 46 F.Supp.2d at 592–93 MCCARTHY, RIGHTS OF PUBLICITY sec. 3.28, or (holding in right of publicity case that de- actually succeeded in obtaining a commer- fendant’s use of the words, ‘‘Don’s Hen- cial advantage from using plaintiff’s name, ley,’’ in advertisement was intended to see Brown v. Ames, 201 F.3d 654, 661–62 elicit an association with plaintiff Don (5th Cir.2000); Henley, 46 F.Supp.2d at Henley). 597; MCCARTHY, RIGHTS OF PUBLICITY sec. But this is not all. At trial, Twist intro- 3.2. That said, it still was incumbent upon duced evidence that respondents marketed Twist to prove that respondents used his their products directly to hockey fans. name intending to obtain a commercial For example, respondents produced and advantage. distributed Spawn hockey jerseys and Twist contends, and this Court again pucks and sponsored a ‘‘Spawn Night’’ at a agrees, that the evidence admitted at trial minor league hockey game where other was sufficient to establish respondents’ in- Spawn products were distributed, includ- tent to gain a commercial advantage by ing products featuring the character ‘‘Tony using Twist’s name to attract consumer Twist.’’ Additionally, Twist points to attention to Spawn comic books and relat- McFarlane’s statement in the November ed products. As the Ninth Circuit noted 1994 issue of Spawn, in which he promised in Abdul–Jabbar v. General Motors Corp., readers that ‘‘they will continue to see 85 F.3d 407, 416 (9th Cir.1996), ‘‘The first current and past hockey players’ names in step toward selling a product or service is [his] books.’’ This statement, Twist cor- to attract the consumers’ attention.’’ (Ci- rectly contends, amounts to an inducement tation omitted.) See also id. at 415 (hold- to Spawn readers, especially those who are ing that to the extent that defendant’s use also hockey fans, to continue to purchase of plaintiff’s name attracted consumers’ at- the comic book in order to see the name tention to its product, defendant gained a Tony Twist and other hockey players. commercial advantage); Henley, 46 This is evidence from which the jury could F.Supp.2d at 597 (holding that the com- infer that respondents used his name to mercial advantage or benefit element is obtain a commercial advantage. shown if by using plaintiff’s name or like- ness in the product defendant sought ‘‘to In support of the court’s ruling that the catch the eye of the consumer and make evidence presented was insufficient to the [product] more interesting’’); RESTATE- show that Twist’s name was used to obtain MENT (THIRD) OF UNFAIR COMPETITION sec. a commercial advantage, respondents cite 47 cmt. c. At a minimum, respondents’ Nemani, Haith,and Munden to demon- statements and actions reveal their intent strate the kind of commercial advantage to create the impression that Twist was that must be shown and to highlight that somehow associated with the Spawn comic Twist’s evidence was dissimilar. In Nem- book, and this alone is sufficient to estab- ani and Haith, the defendants used the lish the commercial advantage element in plaintiffs’ names in grant applications for a right of publicity action. See Abdul– money; in Munden, the defendant used a Jabbar, 85 F.3d at 414–16; Carson v. picture of the plaintiff in an advertisement. Here’s Johnny Portable Toilets, Inc., 698 Though it is true that respondents’ intent F.2d 831, 835–36 (6th Cir.1983) (holding to obtain a commercial advantage is not as 372 Mo. 110 SOUTH WESTERN REPORTER, 3d SERIES obvious as that found in Nemani,Haith, ations is to be drawn between media re- and Munden, the fact remains that to the ports that are protected and those that are extent that the evidence suggests that re- not, we are quite sure that the First and spondents used Twist’s name to attract Fourteenth Amendments do not immunize attention to their product, they did so to the media when they broadcast a perform- obtain a commercial advantage. There- er’s entire act without his consent.’’ Zac- fore, this Court holds that Twist presented chini, 433 U.S. at 574–75, 97 S.Ct. 2849. sufficient evidence to establish that re- Because the Zacchini Court limited its spondents used his name for a commercial holding to the particular facts of the advantage. case—the appropriation of plaintiff’s ‘‘en- tire act’’—it does not control the case at III. hand. Nonetheless, there are larger les-  Having determined that Twist sons that are certainly applicable. made a submissible case at trial, we next First, the Court acknowledged, as had address whether the right of publicity many lower courts previously, that the claim is nevertheless prohibited by the right of publicity is not always trumped by First Amendment. Courts throughout the the right of free speech. Explaining the country have struggled with this issue. competing right of publicity interests, the Mark S. Lee, Agents of Chaos: Judicial Court observed that ‘‘[t]he rationale for Confusion in Defining the Right of Public- protecting the right of publicity is the ity–Free Speech Interface, 23 LOY. L.A. straightforward one of preventing unjust ENT. L.REV. 471, 488–98 (2003). Of course, enrichment by the theft of goodwill. No not all speech is protected under the First social purpose is served by having the Amendment, and in cases like this, courts defendant get free some aspect of the often will weigh the state’s interest in pro- plaintiff that would have market value and tecting a plaintiff’s property right to the for which he would normally pay.’’ Id. at commercial value of his or her name and 576, 97 S.Ct. 2849. identity against the defendant’s right to Second, the Court distinguished claims free speech. for right of publicity or name appropriate- Zacchini v. Scripps-Howard Broadcast- ness from claims for defamation like those ing Co., 433 U.S. 562, 97 S.Ct. 2849, 53 adjudicated in New York Times v. Sulli- L.Ed.2d 965 (1977), is the first and only van, 376 U.S. 254, 84 S.Ct. 710, 11 L.Ed.2d right of publicity case decided by the Su- 686 (1964), and Hustler Magazine v. Fal- preme Court. The case involved the unau- well, 485 U.S. 46, 108 S.Ct. 876, 99 L.Ed.2d thorized broadcast of a videotape of the 41 (1988), and claims for ‘‘publicity that plaintiff’s 15–second ‘‘human cannonball’’ places plaintiff in a ‘false light’ ’’ like that act during a nightly news program. The adjudicated in Time, Inc. v. Hill, 385 U.S. plaintiff brought suit under the state-rec- 374, 87 S.Ct. 534, 17 L.Ed.2d 456 (1967). ognized tort of right of publicity, alleging Because property interests are involved in that the unauthorized broadcast amounted the former categories but not the latter, to an ‘‘unlawful appropriation’’ of his ‘‘pro- Zacchini, 433 U.S. at 573, 97 S.Ct. 2849, fessional property,’’ and the defendant the Court refused to apply the New York broadcasting company defended on First Times v. Sullivan ‘‘actual malice’’ standard Amendment grounds. In balancing the that speech is privileged unless it was respective parties’ interests, the Court ‘‘knowingly false or was published with held, ‘‘Wherever the line in particular situ- reckless disregard for the truth.’’ Id. at DOE v. TCI CABLEVISION Mo. 373 Cite as 110 S.W.3d 363 (Mo.banc 2003) 571, 97 S.Ct. 2849, et seq. As the Court fiction TTT use as part of an article publish- later made clear in Hustler, Zacchini ed in a fan magazine or in a feature story stands for the proposition that ‘‘the ‘actual broadcast on an entertainment program malice’ standard does not apply to the tort TTT dissemination of an unauthorized print of appropriation of a right of publici- or broadcast biography, [and use] of anoth- tyTTTT’’ 485 U.S. at 52, 108 S.Ct. 876. er’s identity in a novel, play, or motion Right to publicity cases, both before and pictureTTTT’’ RESTATEMENT (THIRD) OF UN- FAIR COMPETITION sec. 47 cmt. c at 549. after Zacchini, focus instead on the The proviso to that list, however, is that ‘‘if threshold legal question of whether the use the name or likeness is used solely to of a person’s name and identity is ‘‘expres- attract attention to a work that is not sive,’’ in which case it is fully protected, or related to the identified person, the user ‘‘commercial,’’ in which case it is generally may be subject to liability for a use of the not protected. For instance, the use of a other’s identity in advertisingTTTT’’ Id. person’s identity in news, entertainment, (Emphasis added.) and creative works for the purpose of com- municating information or expressive ideas California courts use a different ap- about that person is protected ‘‘expressive’’ proach, called the ‘‘transformative test,’’ speech. See, e.g., Hoffman v. Capital Cit- that was most recently invoked in Winter ies/ABC, Inc., 255 F.3d 1180, 1185 (9th v. D.C. Comics, 30 Cal.4th 881, 134 Cal. Cir.2001); Cardtoons v. Major League Rptr.2d 634, 69 P.3d 473 (2003), a case Baseball Players Ass’n, 95 F.3d 959, 969– with a remarkably similar fact situation. 70 (10th Cir.1996); Rogers v. Grimaldi, In that case, Johnny and Edgar Winters, well-known musicians with albino complex- MGM/UA, 875 F.2d 994, 1003–05 (2nd Cir. ions and long white hair, brought a right of 1989). On the other hand, the use of a publicity action against defendant D.C. person’s identity for purely commercial Comics for its publication of a comic book purposes, like advertising goods or ser- featuring the characters ‘‘Johnny and Ed- vices or the use of a person’s name or gar Autumn,’’ half-worm, half-human crea- likeness on merchandise, is rarely protect- tures with pale faces and long white hair. ed. See, e.g., Downing v. Abercrombie & On appeal, the California Supreme Court Fitch, 265 F.3d 994, 1002 (9th Cir.2001); considered whether the action was barred White v. Samsung Elec. Am., Inc., 971 by the First Amendment and employed F.2d 1395, 1397–99 (9th Cir.1992); Midler ‘‘ ‘what is essentially a balancing test be- v. Ford Motor Co., 849 F.2d 460, 462–64 tween the First Amendment and the right (9th Cir.1988). of publicity based on whether the work in Several approaches have been offered to question adds significant creative elements distinguish between expressive speech and so as to be transformed into something commercial speech. The RESTATEMENT, for more than a mere celebrity likeness or example, employs a ‘‘relatedness’’ test that imitation.’ ’’ Id. at 475 (citing Comedy III protects the use of another person’s name Productions, Inc. v. Gary Saderup, Inc., or identity in a work that is ‘‘related to’’ 25 Cal.4th 387, 106 Cal.Rptr.2d 126, 21 that person. The catalogue of ‘‘related’’ P.3d 797, 799 (2001)). Concluding that the uses includes ‘‘the use of a person’s name comic book characters ‘‘Johnny and Edgar or likeness in news reporting, whether in Autumn’’ ‘‘are not just conventional de- newspapers, magazines, or broadcast news pictions of plaintiffs but contain significant TTT use in entertainment and other crea- expressive content other than plaintiffs’ tive works, including both fiction and non- mere likenesses,’’ id. at 479, the Court held 374 Mo. 110 SOUTH WESTERN REPORTER, 3d SERIES that the characters were sufficiently trans- circumstances of the case at hand. As formed so as to entitle the comic book to discussed, Twist made a submissible case full First Amendment protection. that respondents’ use of his name and The weakness of the RESTATEMENT’S ‘‘re- identity was for a commercial advantage. latedness’’ test and California’s ‘‘transfor- Nonetheless, there is still an expressive mative’’ test is that they give too little component in the use of his name and consideration to the fact that many uses of identity as a metaphorical reference to a person’s name and identity have both tough-guy ‘‘enforcers.’’ And yet, respon- expressive and commercial components. dents agree (perhaps to avoid a defamation These tests operate to preclude a cause of claim) that the use was not a parody or action whenever the use of the name and other expressive comment or a fictional- identity is in any way expressive, regard- ized account of the real Twist. As such, less of its commercial exploitation. Under the metaphorical reference to Twist, the relatedness test, use of a person’s though a literary device, has very little name and identity is actionable only when literary value compared to its commercial the use is solely commercial and is other- value. On the record here, the use and wise unrelated to that person. Under the identity of Twist’s name has become pre- transformative test, the transformation or dominantly a ploy to sell comic books and fictionalized characterization of a person’s related products rather than an artistic or celebrity status is not actionable even if its literary expression, and under these cir- sole purpose is the commercial use of that cumstances, free speech must give way to person’s name and identity. Though these the right of publicity. tests purport to balance the prospective interests involved, there is no balancing at all—once the use is determined to be ex- IV. pressive, it is protected. At least one com-  The circuit court held that in the mentator, however, has advocated the use event that its grant of JNOV was deter- of a more balanced balancing test—a sort mined to be in error on appeal, as previ- of predominant use test—that better ad- ously held, respondents’ alternative motion dresses the cases where speech is both for a new trial was granted on several expressive and commercial: grounds. One such dispositive ground is If a product is being sold that predomi- instructional error in the verdict director nantly exploits the commercial value of given for the misappropriation of name an individual’s identity, that product count. The verdict director for this claim, should be held to violate the right of which was the same for each defendant, publicity and not be protected by the read: First Amendment, even if there is some Your verdict must be for plaintiff and ‘‘expressive’’ content in it that might against defendant Todd McFarlane if qualify as ‘‘speech’’ in other circum- you believe: stances. If, on the other hand, the pre- dominant purpose of the product is to First, defendant Todd McFarlane in- make an expressive comment on or tentionally used or published plaintiff’s about a celebrity, the expressive values name, and could be given greater weight. Second, defendant Todd McFarlane Lee, supra, at 500. derived advantage from the use or publi- The relative merit of these several tests cation of plaintiff’s name, or plaintiff suf- can be seen when applied to the unusual fered harm as a result of defendant DOE v. TCI CABLEVISION Mo. 375 Cite as 110 S.W.3d 363 (Mo.banc 2003) Todd McFarlane’s use of publication of tal. In fact, respondent McFarlane so tes- plaintiff’s name, and tified in his defense, adding that the real Third, plaintiff did not consent to the reasons he used Twist’s name were use of publication, and one, it’s a pretty cool name, and, two, it’s Fourth, as a direct result thereof, easy to remember, it’s an easy thing— plaintiff sustained damage. cause I create a lot of characters, you In deciding whether the given verdict need sort of easy ways to remember director was erroneous, it is helpful to namesTTTT And again, TTT [with] Twist, again list the elements of the tort of right you always sort of have a Twist ending. of publicity: (1) The defendant used plain- You just sort of come up with stuff that tiff’s name as a symbol of his identity (2) sort of, you know, semi-clever, if you without consent (3) and with the intent to will. obtain a commercial advantage. Notably, Because the verdict director allowed the the verdict director omitted any require- jury to render a verdict for plaintiff with- ment that the jury find that defendant out a finding that respondents intended to used plaintiff’s identity rather than merely obtain a commercial advantage, and be- his name. This omission, however, did not cause the jury may well have determined prejudice respondents, as the evidence at that respondents obtained a commercial trial so clearly established that appellant advantage even though they did not intend Tony Twist was the basis for the Spawn to do so, the verdict must be set aside. character’s name. However, a second and ultimately fatal flaw lies in the verdict director’s failure to V. properly instruct the jury on the commer-  In addition to the misappropria- cial advantage element of the tort. By tion of name claim, Twist sought equitable requiring that the jury find only that re- relief from the circuit court in the form of spondents ‘‘derived advantage from the a permanent injunction prohibiting respon- use or publication of plaintiff’s name,’’ as dents from using his ‘‘name, commercial opposed to a finding that respondents used image, persona, autograph and/or likeness plaintiff’s name ‘‘with the intent to derive’’ for any purpose without his consent.’’ or ‘‘for the purpose of deriving’’ an advan- (Emphasis added.) The court denied equi- tage, the jury was allowed to render a table relief concluding, inter alia, that the verdict that could have been based on the injunction sought was overbroad because it mere incidental result of the use rather could ‘‘interfere with legitimate and proper than the intentional result. Here, this action by the defendants in the future.’’ seemingly fine distinction could well have This Court holds that the circuit court was borne different results. Although the evi- correct in doing so, because, as respon- dence supported a finding that respon- dents state in their brief, the requested dents used Twist’s name and identity ‘‘with injunction attempted to prohibit respon- the intent to obtain a commercial advan- dents ‘‘from engaging in a variety of ex- tage,’’ alternatively, the jury could have pressive activities unrelated to the subject found that respondents had no intent to matter of this lawsuit and undoubtedly obtain a commercial advantage—that there protected by the First Amendment—e.g., a was a different purpose for using the parody of plaintiff, a commentary on his name—and to the extent that some advan- fighting style, a factual report on this law- tage was obtained, it was merely inciden- suit.’’ 376 Mo. 110 SOUTH WESTERN REPORTER, 3d SERIES VI. Declaratory Judgment O392.1 For the foregoing reasons, the circuit Dismissal without prejudice of taxpay- court’s judgment notwithstanding the ver- er’s declaratory judgment action against dict is reversed, the judgment granting a Department of Revenue as sanction for new trial is affirmed, the judgment deny- failing to cooperate in discovery was not ing injunctive relief is affirmed, and the final appealable judgment, and thus Court case is remanded. of Appeals lacked jurisdiction to consider appeal. All concur. , Lee Allen Martin, West Plains, pro se. Keith D. Halcomb, Assistant Attorney General, Jefferson City, for respondents. Before JOSEPH M. ELLIS, Chief Judge, RONALD R. HOLLIGER, Judge Lee Allen MARTIN, Appellant Pro Se, and JAMES M. SMART, JR., Judge. v. JOSEPH M. ELLIS, Chief Judge. DEPARTMENT OF REVENUE, Appellant Lee Allen Martin, acting pro et al., Respondents. se, appeals from the Circuit Court of Cole County’s dismissal of his petition for de- No. WD 61674. claratory judgment in which he alleged that Respondents the Missouri Depart- Missouri Court of Appeals, ment of Revenue, the Director of Revenue, Western District. and the Custodian of Records for the De- May 20, 2003. partment of Revenue had violated various provisions of the Missouri Sunshine Act, Motion for Rehearing and/or Transfer to § 610.010 et seq.1 For the following rea- Supreme Court Denied July 29, 2003. sons, we dismiss the appeal. On May 17, 2001, Appellant filed his pro se petition for declaratory judgment. Sub- Taxpayer brought declaratory judg- sequently, Respondents sought to take Ap- ment action alleging that Department of pellant’s deposition and sent him a notice Revenue violated Sunshine Act. As discov- of deposition for May 21, 2002. Appellant ery sanction, the Circuit Court, Cole Coun- filed a motion to suppress the notice of ty, Thomas J. Brown III, J., dismissed deposition. Upon hearing that motion, the without prejudice. Taxpayer appealed. The trial court denied it and ordered Appellant Court of Appeals, Joseph M. Ellis, C.J., to appear at the appointed time and place held that dismissal without prejudice was for the purpose of having his deposition not final appealable judgment, and thus it taken. lacked appellate jurisdiction. On May 21, 2002, Appellant, attorneys Appeal dismissed. for Respondents, and a court reporter, 1. All statutory references are to RSMo 2000 unless otherwise noted.
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