Doe by pengxuebo


									                                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-
                                                     [8] 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            [9] ‘‘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).
                                                     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
                                                  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-
   [15] 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-       [16] 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-             [17] 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
     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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