Opinion
No. ED 78785
July 23, 2002 As Amended October 8, 2002
Appeal from the Circuit Court of the City of St. Louis, Hon. Robert H. Dierker.
The plaintiff, Anthony R. Twist, also known as Tony Twist, is a retired professional hockey player. He complains that the defendants misappropriated his name by using it for a comic book villain without his consent and identifying him as the source of the name for the character. He also complains that the defendants "cross-marketed" action figure toys derived from other comic book characters by packaging the comic books with the toys and holding a promotional " Spawn Night" at a minor league hockey game. Twist brought suit, seeking damages for the past use of his name and an injunction barring further use. From their first responsive pleading the McFarlane defendants claimed the protection of the First Amendment of the United States Constitution. The trial court, applying the First Amendment, dismissed the defamation count, but found the First Amendment not applicable to the misappropriation of name claim and submitted that claim to the jury. The jury returned a verdict for the plaintiff in the amount of $24,500,000. The trial court then granted the defendants' motion for judgment notwithstanding the verdict, finding that the plaintiff failed to present evidence that defendants possessed a specific intent to use Twist's name for their benefit or to his detriment. In the alternative, the trial court granted defendants' motion for a new trial because of numerous instructional and evidentiary errors. The request for injunctive relief was denied. We find the First Amendment defense applicable to the misappropriation claim. Accordingly, that claim is not submissible because it does not comply with the "of and concerning" requirement of the First Amendment. We affirm.
The remaining defendants, Todd McFarlane, Todd McFarlane Productions, Inc., TMP International, Inc. Todd McFarlane Entertainment, Inc. and Image Comics will be referred to throughout this opinion as the McFarlane defendants.
Facts
During his playing years, Tony Twist was regarded as one of the most violent "enforcers" in hockey and attained a national reputation for violence on the ice hockey rink. Like many professional athletes, he hoped to exploit his sports star status to become a broadcaster and a celebrity promoter of products. To this end, he received coaching, appeared on television and radio programs and for two years hosted "The Tony Twist Show" on a local television station. He also presented evidence that he had a good reputation off the ice for his work with children's charities.
The role of an "enforcer" in hockey is to protect goal scorers from physical assaults by opponents. Describing Twist, a Sports Illustrated article said: "It takes a special talent to stand on skates and beat someone senseless, and no one does it better than the St. Louis Blues left winger." The article goes on to quote Twist to say "I want to hurt them. I want to end the fight as soon as possible and I want the guy to remember it." Austin Murphy, Fighting For A Living: St. Louis Blues Enforcer Tony Twist, Whose Pugilistic Talents Appear To Run In The Family, Doesn't Pull Any Punches On The Job, Sports Illustrated, Mar. 16, 1998, at 42, available at 1998 WL 8979450.
Todd McFarlane is a comic book writer. In 1992, McFarlane, with others, formed Image Comics, Inc. to solicit, market, print and distribute comics. He also created his own comic book, Spawn, and formed Todd McFarlane Productions, Inc., to oversee the writers, artists and creative staff involved in its production.
Spawn is a dark and surreal fantasy revolving around a character named Al Simmons, a CIA assassin murdered by his corrupt partners at the CIA. Simmons' soul goes to Hell, makes a deal with the Devil and returns to earth as "Spawn," a creature with superhuman powers. Spawn struggles to break his pact with the devil, but is placed under the influence of a guardian demon who uses Spawn's weaknesses to get him to do the Devil's bidding.
Spawn became a successful comic book from its first issue. McFarlane parlayed this success into comic book spin-offs: an animated series, a feature-length movie, a line of toys based on Spawn characters, a line of clothes bearing the Spawn logo and various other items.
In November of 1993, McFarlane unveiled a fictional Mafioso character named "Tony Twist" who, as the monthly episodes develop, becomes an antagonist of the Spawn character. This fictional Tony Twist commits and orders murders, child abductions and a variety of other illegal and immoral deeds. Besides bearing the same name as the plaintiff, the only resemblance the plaintiff claims between the fictional Tony Twist and himself is metaphorical in that both are "enforcers," one in the world of professional hockey and the other in the fictional world of Spawn.
The Twist character appears 166 times in 31,000 panels, approximately one-half of one percent of the total panels.
In September and November of 1994, responding to fan letters in the back of the comic book, McFarlane identified the plaintiff as the source of the name for the fictional mafia character. The September letter, in relevant part, says:
The great thing about writing and drawing your own book is you get to have as much fun with it as you want. . . . Whenever I choose a name I try to have a little bit of play on it . . . I am a big hockey fan, and a lot of my characters have been named after current NHL hockey players. For example, Antonio Twistelli, a/k/a Tony Twist, is actually the name of a hockey player of the Quebec Nordiques.
In April 1996, Wizard, a trade magazine for the comic book industry, highlighted McFarlane's method of naming characters and published an article titled: " Spawning Ground: A Look At The Real Life People Spawn Characters Are Based Upon." In that article the author says:
Wizard settled with the plaintiff prior to verdict and is not a party to this appeal.
Having trouble coming up with character names? Use the Todd McFarlane Method.
McFarlane uses the names of his family and friends when it comes to the character identities inside his comic book Spawn.
"It's easier to come up with the names of people sitting next to you," the writer/artist explains. "And for the most part, if I don't put my friends and family in my books, I guarantee that nobody at Marvel is going to do it for me. I do it just because I can. I've got that freedom. It's one of the great things about controlling your own book."
Named for loved ones, friends, colleagues and employees at Todd McFarlane Productions, a few of the characters appearing in Spawn feature similarities to their real-life counterparts. Many others appropriate only the name, sometimes being introduced and dispatched in the same issue.
This is followed by brief biographies and drawings of the characters, along with photos of the real persons they are named after. The paragraph devoted to the Tony Twist character shows a picture of the fictional comic book character and a photo of a Tony Twist hockey trading card. It is captioned "ANTHONY `TONY TWIST' TWISTELLI," and states:
First Appearance: Spawn #6
Real-Life Persona: Tony Twist.
Relation: NHL St. Louis Blues right winger.
The Mafia don that has made life exceedingly rough for Al Simmons and his loved ones, in addition to putting out an ill-advised contract on the Violator, is named for former Quebec Nordiques hockey player Tony Twist, now a renowned enforcer (i.e. "Goon") for the St. Louis Blues of the National Hockey League."
On October 31, 1997, Twist filed suit against the McFarlane defendants and many others seeking damages and an injunction for, among other things, defamation and misappropriation of name. The McFarlane defendants filed their answer containing a number of denials and defenses, among them their fourth affirmative defense, which reads: "none of the contents, characters, story lines or descriptions contained in the Spawn comic books . . . is identifiable with plaintiff or purport to be " of and concerning" the plaintiff but are purely fictional fantasies and no reasonable person could confuse the Plaintiff with the fictional fantasies and characters portrayed therein." (emphasis ours)
Plaintiff's second amended petition listed the following defendants: TCI Cablevision of Missouri, Inc., Todd McFarlane, Todd McFarlane Productions, Inc., TMP International, Inc. (d/b/a/ McFarlane Toys, TMP Apparel, Todd Toys, TMP Entertainment, TMP Cards, TMP Toys, McFarlane Design Group, McFarlane Entertainment, TMP Ventures, and McFarlane Toys Collector's Club), Image Comics, Inc., Gareb Shamus Enterprises, Inc. (d/b/a/ Wizard Press, Inc.), Titan Books Comics, Inc., Grupo Editorial, Inc., Time Warner Entertainment Company, L.P., Home Box Office, Inc., Blockbuster Entertainment, Inc., Hollywood Entertainment Corp. (d/b/a/ Hollywood Video), Video Update, Inc., Diamond Comic Distributors, Inc., Legends, Comics Cards, Inc., and any and all unknown persons, corporations, limited liability companies, partnerships, or other entities of any other named defendant.
This fourth affirmative defense, carried forward into the McFarlane defendants' motion to dismiss resulted in the trial court's dismissal of the defamation claim because no "person of ordinary intelligence would understand Defendants' publication to convey factual assertions `of and concerning' Plaintiff." But the court, without reference to the "of and concerning" requirement of the First Amendment, denied the motion to dismiss the misappropriation action, finding only that "Plaintiff's petition explicitly pleads the elements of a wrongful appropriation claim."
The trial court dismissed Twist's claims against the following defendants because they were mere "passive distributors" of the comic books and related items: TCI Cablevision of Missouri, Inc., Titan Books Comics, Inc., Grupo Editorial, Inc., Home Box Office, Inc., Blockbuster Entertainment, Inc., Hollywood Entertainment Corp., Video Update, Inc., Legends, Comics Cards, Inc.,
McFarlane and related entities then filed their motions for summary judgment, arguing, among other things, that the First Amendment protected them from Twist's claim for misappropriation of name. Twist's response to the motion did not dispute that Spawn is a work of fiction and that he is a public figure. The trial court nevertheless denied the motions, finding that the First Amendment did not protect McFarlane from a misappropriation of name action. In its order denying the defendants' motion for summary judgment, the court declared the proof necessary to make the case and that the First Amendment was not a bar. That order reads:
If Plaintiff can demonstrate, as a matter of fact, both that Defendants knowingly utilized his name and likeness for the purpose of advancing their economic interests, and also that in fact Defendants derived economic benefit (in the form of increased sales of their products) from that use, or in fact caused Plaintiff direct pecuniary loss (by damaging his ability to market his name or image), then Defendants may be liable notwithstanding the First Amendment.
At trial there was no dispute that McFarlane used Twist's name. The evidence viewed in a light most favorable to the verdict establishes that the plaintiff did serve as an inspiration for the comic book character. McFarlane denies, however, that the comic book character "appropriates the identity" of or makes statements that a reasonable reader would conclude are "about" Twist, the hockey player. He also denies any benefit came to him from the use of Twist's name.
To prove that the association with the Tony Twist character diminished his value as an endorser of products, Twist emphasized the violent and sexual nature of the comic book character. Twist also offered testimony from Sean Phillips, a former executive of a sports nutrition company, that in 1999 he was going to offer Twist a $100,000 contract to endorse sports nutrition products, but changed his mind after he learned of Twist's association with the comic book.
To prove that the McFarlane defendants benefited, Twist called two experts who gave their opinion as to the fair market value of the Twist name. Brian Till opined that the fair market value of the use of Twist's name in the comics was equal to 15% of the combined gross revenues of all Spawn-related products in which the Twist character appears, plus 9% of the gross revenues of all other Spawn-related products. Rocky Arcenaux opined that the use of Twist's name was worth 20% of the combined gross revenues of all Spawn-related products, 15% for the use of the name plus an additional 5% because of the expected negative impact on Twist's future endorsements caused by his association with Spawn. Finally, Twist offered testimony from financial expert Jay Barrington that the gross revenues from Spawn-related sales for all defendants combined was $122,708,261.
The case went to the jury on the misappropriation of name count. The instruction submitting that count required the jury to find only that the defendants intentionally used or published Twist's name, without his consent, and that either the defendants benefited or Twist was damaged by that use. The verdict director read:
Your verdict must be for plaintiff and against defendant Todd McFarlane if you believe:
First, defendant Todd McFarlane intentionally used or published plaintiff's name, and
Second, defendant Todd McFarlane derived advantage from the use or publication of plaintiff's name, or plaintiff suffered harm as a result of defendant Todd McFarlane's use or publication of plaintiff's name, and
Third, plaintiff did not consent to the use of publication, and
Fourth, as a direct result thereof, plaintiff sustained damage.
The verdict directors were the same for every defendant; only the name of the defendant changed.
In arguing this instruction to the jury, Twist's counsel said:
Let me just say a couple of things. You've heard the law now, what the law says is intentional use of the name. Doesn't matter whether this looks like him or not. The Judge tells you what the law is, . . .
The law just says they need to use or publish his name, period, the end, without his consent.
The jury returned a verdict for Twist and jointly against all remaining defendants in the amount of $24,500,000, slightly under 20% of the defendants' combined gross revenues from the time Spawn was first published.
The defendants then moved for judgment notwithstanding the verdict or in the alternative for a new trial. In its order sustaining that motion the trial court found it had improperly submitted the misappropriation of name count to the jury. In particular, it found error in its failure to require the jury to find that the defendants possessed a "specific intent" to injure Twist or benefit themselves from the use of his name. Accordingly, the court granted the motion for judgment notwithstanding the verdict, ruling that Twist failed to make a submissible case on his claim for misappropriation of name because there was no "substantial evidence of a specific intent by defendants to use his name for their benefit or to [Twist's] detriment." The trial court further ruled in the alternative that if the judgment notwithstanding the verdict is reversed on appeal, the motion for new trial would be granted because of instructional errors and the erroneous admission of Twist's expert testimony. Finally, the request for injunctive relief was denied.
Twist raises three points on appeal. First, he argues that the trial court erred by changing the elements of the misappropriation of name claim after trial to include a requirement of specific intent to harm or benefit. Twist maintains that there is no such requirement for a misappropriation of name and, alternatively, if there is such a requirement, that he presented substantial evidence of the McFarlane defendants' intent to benefit from the use of his name. Second, he claims that the testimony submitted through his experts was admissible and that the verdict director and damage instruction properly submitted the elements of Twist's damages. Finally, Twist argues that, absent his consent, the further use of his name by the defendants should be enjoined.
Instruction No. 16, the damage instruction, submitted to the jury read as follows: "If you find in favor of plaintiff, then you must award plaintiff such sum as you believe will fairly and justly compensate plaintiff for any damages you believe he sustained and is reasonably certain to sustain in the future as a direct result of the defendants' use or publication of his name."
Standard of Review
When reviewing the grant of a motion for judgment notwithstanding the verdict we must determine if the plaintiff made a submissible case. Jungerman v. City of Raytown, 925 S.W.2d 202, 204 (Mo.banc 1996). We must affirm a trial court's ruling, though the reason given for it may be erroneous, if it is sustainable for any reason. Graue v. Missouri Property Ins. Placement Facility, 847 S.W.2d 779, 782 (Mo.banc 1993).
Generally, we view the evidence in a light most favorable to the plaintiff, giving him the benefit of all reasonable inferences and disregarding all unfavorable evidence and inferences. Id. However, cases raising First Amendment issues require an independent examination of the whole record to insure that the judgment does not constitute a forbidden intrusion upon the field of free expression. Bose Corp. v. Consumers Union of United States, Inc., 466 U.S. 485, 499-501 (1984). A properly preserved First Amendment defense "raising questions of constitutional fact compel[s] this court's de novo review." Id. In that pursuit, we strictly scrutinize state imposed content-based restrictions on speech to insure that they promote a compelling government interest and are narrowly tailored to further that interest. Sable Communications of Cal., Inc. v. FCC, 492 U.S. 115, 126 (1989).
Twist's Cause of Action
The law has protected a person's interest in his good name for more than a thousand years. L. Eldridge, The Law of Defamation § 53, at 293-294 (1978). A cause of action for defamation, whether by libel or slander, serves to insulate the individual from false and unwarranted statements harmful to that person's reputation. Restatement (Second) Torts §§ 580A, 580B (1977). Over the last century the law has expanded the protection a person's name and identity is entitled to receive against unauthorized commercial exploitation.
In 1946 Congress passed the Lanham Act, providing a federal cause of action and remedy for the unauthorized use of a person's identity that "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities. . . ." 15 U.S.C. § 1125(a)(1)(A) (2002).
Law review articles creating the foundation for the misappropriation of name and right of publicity torts date as far back as 1890. But the first case to formally distinguish these claims from those that protect the right of privacy was written in 1953. Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir.), cert. denied 346 U.S. 816 (1953). That case and its antecedents make clear that the torts of "misappropriation of name" and "right of publicity" protect persons against the unauthorized commercial use of their identity.
See Samuel D. Warren Louis D. Brandeis, The Right to Privacy, 4 Harv. L. Rev. 193, 196 (1890).
The elements of these torts are essentially the same. See Restatement (Second) Torts § 652C (describing the misappropriation tort); Restatement (Third) Unfair Competition § 46 (1995) (describing the right of publicity). Both require the use of the plaintiff's identity for some commercial purpose without the plaintiff's consent. They differ only in their justifications and the type of damages awarded. See McCarthy, The Rights of Publicity and Privacy § 5:61 (2d ed. 2000). In a misappropriation of name case the damages are based on the mental distress caused by an invasion of personal privacy. Id. In a right of publicity case, damages are measured by the fair market value the advertiser would have had to pay to use that person's identity in a commercial and any dilution of the commercial value of the identity caused by excessive or harmful uses. See Restatement (Third) Unfair Competition § 49 cmt. d.
Twist brings his case under the banner of "misappropriation of name," but we find his tort more properly labeled a "right of publicity" claim because he seeks to recover the damage to his endorsement value and a proportionate share of the revenue generated by the use of his identity. His theory throughout the trial was that he has exclusive control over the use of his name. Twist cites three Missouri cases for the proposition that taking a person's identity for a purely commercial purpose is prohibited by Missouri law.
In Munden v. Harris, 134 S.W. 1076 (Mo.App. 1911), a jeweler published an advertisement containing the picture of a five-year-old next to a caption that invites the reader to buy jewelry. Id. at 1077. The child's parents sued the advertiser for invasion of privacy for publishing his picture in an advertisement without his consent. Id. The Court of Appeals held that "one has an exclusive right to his picture, on the score of its being a property right of material profit." Id. at 1079. The court then allowed the plaintiff to go forward to show both damages to his reputation and feelings, as well as for any value that the defendant derived from the unauthorized use of the child's identity in advertising its goods. Id. at 1079, 1081.
Twist also cites Haith v. Model Cities Health Corp. of Kansas City, 704 S.W.2d 684 (Mo.App.W.D. 1986) and Nemani v. St. Louis University, 33 S.W.3d 184 (Mo.banc 2000). In both of these cases medical research facilities were accused of using the plaintiffs' names without consent on applications for federal grants. 704 S.W.2d at 687; 33 S.W.3d at 185. In Haith, the Western District concluded that proof of these allegations was sufficient to submit the case to a jury because the plaintiff's name was taken in pursuit of an economic benefit for the defendant without plaintiff's permission. 704 S.W.2d at 687-88. Nemani embraces the same general principles, but the Missouri Supreme Court resolved the case on the facts, concluding that the plaintiff consented to the use of his name. 33 S.W.3d at 186.
Contrary to Twist's argument, Munden, Haith, and Nemani do not stand for the proposition that a public figure possesses an exclusive right to control the use of their name. Munden involved only the use of the plaintiff's picture, not his name. Munden, 134 S.W. at 1077. Haith and Nemani involve the use of the plaintiffs' names, but both cases make clear that liability cannot rest on mere use of a person's name. In Haith, the court said: "It is the plaintiff's name as a symbol of . . . identity that is involved here, and not . . . as a mere name." 704 S.W.2d at 687. The Nemani court held similarly, saying: "Name appropriation occurs where a defendant makes use of the name to pirate the plaintiff's identity for some advantage." 33 S.W.3d at 185 (emphasis added) (internal quotation omitted). The plaintiff correctly identifies these cases as support for the bare proposition that a publisher cannot use a person's identity to advance a purely commercial purpose.
Munden, Haith and Nemani are distinguishable from the present case, however, because they involve neither a public figure nor a work of fiction. Twist cites no case that allows a public figure, celebrity or sports figure to recover on a "misappropriation of name" or "right of publicity" theory simply because a fiction writer names a character after them. Every court to address this issue has concluded that name-sameness alone does not give rise to a claim under either of these torts. The same reasoning underlies the law's refusal to allow a person to copyright his name. See 17 U.S.C. § 102; Downing v. Abercrombie Fitch, 265 F.3d 994, 1003-1004 (9th Cir. 2001).
See, e.g., Nebb v. Bell Syndicate, 41 F. Supp. 929 (D.C. N.Y. 1941) (Privacy claim under New York statute dismissed where the only similarity between the plaintiffs and the defendant's syndicated comic strip characters "Mr. and Mrs. Rudy Nebb" was the name); Costanza v. Seinfeld, 279 A.D.2d 255 (NY App. 2001) (court properly dismissed misappropriation case brought by Costanza against comedian Jerry Seinfeld based upon use of same last name); T. J. Hooker v. Columbia Pictures Indus., 551 F. Supp. 1060 (N.D.Ill. 1982) (no right of publicity or Lanham Act violation for coincidental use of the name of woodcarver T. J. Hooker as the name of a character and title of TV series "T. J. Hooker"); DeClemente v. Columbia Pictures Indus., Inc., 860 F. Supp. 30 (E.D.N.Y. 1994) (plaintiff karate teacher known locally as the "Karate Kid" could not prove violation of right of publicity claim for use of the name of "Karate Kid" for a character and a title of movie); Newton v. Thomason, 22 F.3d 1455 (9th Cir. 1994) (affirming summary judgment where singer Wood Newton alleged that his name was appropriated for a character in the television show "Evening Shade"); Allen v. Gordon, 446 N.Y.S.2d 48 (N.Y.App.Div. 1982) (Dr. Allen could not prove misappropriation based on name-sameness of fictional psychiatrist because name-sameness is insufficient to prove the book was "of and concerning" the plaintiff).
Twist's theory is, however, more subtle. He argues that the use of his name for a fictional "enforcer," coupled with the identification of him as the inspiration for the character, effectively appropriated his identity. Cases in other jurisdictions make clear that even subtle appropriations of aspects of a celebrity's identity may be actionable if taken for a purely commercial purpose. In "commercial speech" the message is "buy." McCarthy, The Rights of Publicity and Privacy § 8:17. The Supreme Court has defined commercial speech as "speech that proposes a commercial transaction." Board of Trustees of the State Univ. of N.Y. v. Fox, 492 U.S. 469, 482 (1989) (emphasis in original).
In Carson v. Here's Johnny Portable Toilets, Inc., the defendant used only the expression "Here's Johnny" to market its toilets. 698 F.2d 831, 837 (6th Cir. 1983). "Here's Johnny" was Carson's signature introduction at the beginning of his popular television show and was widely recognized as a reference to the plaintiff Johnny Carson. Id. at 832-33. Finding that Carson stated a claim upon which relief could be granted, the court held, "a celebrity's legal right of publicity is invaded whenever his identity is intentionally appropriated for a commercial purpose." Id. at 837. In Midler v. Ford Motor Co., Ford Motor Company used a "sound alike" to record a popular Bette Midler song for a commercial. 849 F.2d 460, 461 (9th Cir. 1988). The Ninth Circuit held that "when a distinctive voice of a professional singer is widely known and is deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs and have committed a tort. . . ." Id. at 463. These cases teach that using identity markers to falsely suggest a relationship between a person and product may constitute a violation of the plaintiff's right of publicity.
Munden, Haith, and Nemani correctly illustrate the mechanics of a private citizen's cause of action for misappropriation of name. Carson and Midler, on the other hand, illustrate the protection the law affords celebrities seeking to protect their property interest in their identity. In all of these cases aspects of the plaintiffs' identities were used in an effort to bring economic gain to the defendants without the consent or economic participation of the plaintiff.
Twist understandably seeks to bring his claim within this stream of cases. But the factual distinctions between Twist's case and these cases are glaring. In both the misappropriation of name and the right of publicity cases, the defendants used the plaintiffs' identities to aid a purely commercial transaction. Haith and Nemani were applications to win federal grants for their institutions. Munden, Carson and Midler were advertisements for jewelry, toilets and cars.
Here, the alleged use of Twist's identity appears in a comic book with significant re-publication of the stories in the television and video mediums. Twist does not contest that a plain reading of the comic book confirms it as a work of fiction. Because he seeks to restrict the ability of the McFarlane defendants to use his identity and name in a work of fiction, he implicates the First Amendment, requiring us to strictly scrutinize his efforts to control the product of the defendants' creative processes. We must, therefore, apply First Amendment principles to determine if Spawn, in any medium, is protected speech.
Application of the First Amendment to the Right of Publicity and Misappropriation of Name Torts
The First Amendment to the United States Constitution says: "Congress shall make no law . . . abridging the freedom of speech, or of the press. . . ." While originally applicable only to the federal government, the Equal Protection Clause of the Fourteenth Amendment protects freedom of speech and the press against abridgement by state action. Gitlow v. New York, 268 U.S. 652, 666 (1925). A state violates Fourteenth Amendment rights when it creates a rule of law authorizing a judgment against a person for exercising his First Amendment rights. New York Times v. Sullivan, 376 U.S. 254 (1964).
When a celebrity such as Twist invokes the courts to seek payment for certain speech he characterizes as "unauthorized" and to enjoin further speech, there is clearly "state action" triggering First Amendment scrutiny. Twist asks the state to compel payment for the alleged misappropriation of his identity and an injunction banning all speech using his identity in fiction, except on terms he alone dictates. This is a content-based restriction on speech.
Content-based restrictions limit speech based on the message conveyed. They offend the First Amendment on several grounds. First, content-based restrictions distort public debate by preventing messages from being expressed and heard, impeding the search for truth. See Abrams v. United States, 250 U.S. 616, 630 (1919) (Holmes, J., dissenting) (in the long run, the best test of truth is "the power of the thought to get itself accepted in the competition of the market"). Second, content-based restrictions obstruct meaningful participation in self-government. See First National Bank of Boston v. Bellotti, 435 U.S. 765, 791 (1978) (in a self-governing nation, the people, not the government, "are entrusted with the responsibility for judging and evaluating the relative merits of conflicting arguments"). Third, content-based restrictions frustrate individual self-fulfillment. See Whitney v. California, 274 U.S. 357, 375 (1927) (Brandeis, J., concurring) (in our constitutional system, the protection of free expression is designed to enhance personal growth, self-realization, and the development of individual autonomy). Content-based restrictions on speech are disfavored because they are in essence a manifestation of government's distrust of the individual's ability to decide for themselves the type of information or entertainment they wish to view or hear.
Content-based restrictions can, therefore, stand only if they pass strict scrutiny. Sable Communications of Cal., Inc. v. FCC, 492 U.S. 115, 126 (1989). In applying strict scrutiny to any state action that proposes to restrict the content of speech, we must determine if the state action protects a compelling government interest. If so, we then determine if the restriction is narrowly tailored to further that interest. Id.
The "compelling government interest" that Twist seeks to advance is the state's interest in protecting his property right in his persona and its endorsement value. Citing Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977), Twist argues that the First Amendment does not apply to a property-based tort such as the right of publicity. In Zacchini a local television station aired a performer's 15-second "human cannonball" act on the evening news without his consent. Id. at 564. The Supreme Court held that the First Amendment did not protect the television station from Zacchini's right of publicity claim because the television station aired Zacchini's " entire act." Id. at 578-79. The Zacchini court said:
the State's interest in permitting a "right of publicity" is in protecting the proprietary interest of the individual in his act in part to encourage such entertainment. As we later note, the State's interest is closely analogous to the goals of patent and copyright law, focusing on the right of the individual to reap the reward of his endeavors and having little to do with protecting feelings or reputation.
Id. at 574-75 (citations omitted).
Twist would have us conclude from this that the First Amendment never applies to a right of publicity claim. But the Supreme Court drew a clear distinction between what was appropriated from Zacchini and what is taken in the usual "right of publicity" or "misappropriation of name" case, saying:
the broadcast of petitioner's entire performance, unlike the unauthorized use of another's name for purposes of trade or the incidental use of a name or picture by the press, goes to the heart of petitioner's ability to earn a living as an entertainer.
Id. at 576 (emphasis added). The Zacchini Court was not concerned with the use of another's name or identity, but "the appropriation of the very activity by which the entertainer acquired his reputation in the first place." Id. The Tenth Circuit has more accurately, we think, described Zacchini as a "red herring," reading it not as a right of publicity case at all, but rather a "right of performance" case. Cardtoons, L.C. v. Major League Baseball Players Association, 95 F.3d 959, 973 (10th Cir. 1996). We believe, like the Tenth Circuit, that Zacchini was written with the express purpose of allowing a performer to derive a benefit from his own performance without interference from the First Amendment. Id.
Subsequent Supreme Court treatment of Zacchini confirms the very specific nature of its holding. See San Francisco Arts Athletics, Inc. v. United States Olympic Committee, 483 U.S. 522, 532-33 (1987) (reading Zacchini to provide protection only when the very expression being complained of is the product of the plaintiff's "own talents and energy, the end result of much time, effort, and expense"); Harper Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556-57 (1985) (interpreting Zacchini as a protection of copyright and citing it for the proposition that "copyright assures those who write and publish factual narratives . . . may at least enjoy the right to market the original expression contained therein as just compensation for their investment." (emphasis added)); Cohen v. Cowles Media Co., 501 U.S. 663, 669 (1991) (citing Zacchini for the proposition that "[t]he press, like others interested in publishing, may not publish copyrighted material without obeying the copyright laws.").
Zacchini does not carve out a wholesale exception to the First Amendment for right of publicity or misappropriation of name claims. It simply stands as an affirmative protection designed to vindicate the right of a performer to derive a benefit from his own performance. See McCarthy, The Rights of Publicity and Privacy § 8:27. Because we disagree with Twist's reading of Zacchini, we conclude that the First Amendment must be applied to his claim that Spawn, an undisputed work of fiction, violates his right of publicity.
The First Amendment and Works of Fiction
Twist insists that Spawn is a product and nothing more and, as such, is not entitled to First Amendment protection. Twist does not allege that his performance was taken, but that his name was misappropriated in pursuit of commercial gain. We must therefore determine if a public figure's property interest in his identity as represented by his name can survive a First Amendment defense raised by a publisher who names a character in a work of fiction after that public figure. To make such a determination we must balance the competing interests. Konigsberg v. State Bar of California, 366 U.S. 36, 49-51 (1961). When balancing a state's interest in protecting reputation and property against the First Amendment the scales are heavily weighted in favor of freedom of speech. This is because, as Justice Cardozo has said, the First Amendment represents "a different plane of social and moral values" without which "neither liberty nor justice would exist. . . ." Palko v. Connecticut, 302 U.S. 319, 326-27 (1937) (finding that freedom of thought and speech are "the matrix, the indispensable condition, of nearly every other form of freedom.").
Speech need not be "political" to be protected by the First Amendment. United Mine Workers v. Illinois State Bar Ass'n, 389 U.S. 217, 223 (1967). "The First Amendment was fashioned to assure unfettered interchange of ideas for the bringing about of political and social changes desired by the people." Connick v. Myers, 461 U.S. 138, 145 (1983) (emphasis added). In the words of Justice Thurgood Marshall:
The First Amendment serves not only the needs of the polity but also those of the human spirit — a spirit that demands self-expression. Such expression is an integral part of the development of ideas and a sense of human identity. To suppress expression is to reject the basic human desire for recognition and affront the individual's worth and dignity.
Procunier v. Martinez, 416 U.S. 396, 427 (1974).
In defense of this free, open and creative self-expression, the First Amendment protects speech in any medium that either informs or entertains. Winters v. New York, 333 U.S. 507, 510 (1948). This includes books, motion pictures, radio, television programs, live entertainment, poetry, painting, music, dramatic works, comics and commercials. See National Endowment for the Arts v. Finley 524 U.S. 569, 602 (1998); Hustler Magazine v. Falwell, 485 U.S. 46 (1988); Central Hudson Gas Elec. Corp. v. Public Serv. Comm'n of N. Y., 447 U.S. 557 (1980). Even pornography is protected if it has "serious literary, artistic, political, or scientific value." Miller v. California, 413 U.S. 15, 26 (1973).
People have been describing, defining and commenting on the world around them through two-dimensional art since the beginning of human civilization. Comic books are a recent extension of this form of self-expression. Often controversial, they have been described as "the mass-market, pulp-paper bad boys of publishing." John M. McGuire, Laughing Matters?, St. Louis Post-Dispatch at 1E, January 18, 1990. First appearing in 1911, by the end of the 1930's comic books were a popular form of entertainment. But with their popularity, came virulent criticism. Id. Described as violent, "injected with sex," and even an avenue of communistic ideas, by the late 1940's they were being banned all across America and even publicly burned. Time Magazine, Dec. 20, 1948; Bill Smith, Comic book code dying a slow death, St. Louis Post-Dispatch, July 16, 1993.
Kevin W. Saunders, Media Self-Regulation of Depictions of Violence: A Last Opportunity, 47 Okla. L. Rev. 445, 448 (1994).
In the 1955 Senate Subcommittee Report, Comic Books and Juvenile Delinquency, the crime and horror comic books of the era were described as "short courses in murder, mayhem, robbery, rape, cannibalism, carnage, necrophilia, sex, sadism, masochism, and virtually every other form of crime, degeneracy, bestiality, and horror." Comic Books and Juvenile Delinquency, Interim Report of the Committee on the Judiciary, 84th Congress, 1st Session, S. Rep. No. 62 at 9 (1955). Despite this, the Subcommittee rejected any resort to governmental censorship as "totally out of keeping with our basic American concepts of a free press operating in a free land for a free people." Id. at 23.
Comic books continue to be a legitimate and important part of the American artistic and literary landscape. Their combination of pictures and words often help young readers to learn. Their characters and imagery form a powerful subtext to American culture and imagination and for that reason serve as the basis for many Hollywood movies. Though often criticized as "low brow" or "literature for the illiterate," nothing prevents this art form from rising to the most sublime levels, as in Art Spiegelman's Maus, a stunning comic book version of the Holocaust, which won the Pulitzer Prize in 1992.
We therefore conclude that the comic book is an important expressive medium entitled to the full protections of the First Amendment.
Another, and even less likely, medium of expression that has also found First Amendment protection is the parody baseball card. In Cardtoons the Tenth Circuit held that they too are protected because they entertain and provide social commentary on the wealth of professional athletes, an issue of contemporary interest. 95 F.3d at 962 976.
We are informed by the Cardtoons court's balancing of the interests that protect both the right of publicity and the First Amendment. Identifying several justifications for protecting a celebrity's proprietary interest in their identity that court observed:
The right is thought to further economic goals such as stimulating athletic and artistic achievement, promoting the efficient allocation of resources, and protecting consumers. In addition, the right of publicity is said to protect various non-economic interests, such as safeguarding natural rights, securing the fruits of celebrity labors, preventing unjust enrichment, and averting emotional harm.
Id. at 973. The Cardtoons court did not find these interests compelling, however, when balanced against First Amendment principles. The court rejected the argument that the right of publicity provides athletes an incentive to perform because, unlike a performer such as Zacchini, the commercial value of a sports star's identity is a by-product of their performance, not their performance itself. Id. The court also rejected the unjust enrichment argument, concluding that it has little application when the use of the celebrity's identity is not in an advertisement. Id. at 975.
An interesting distinction between Cardtoons and the present case is that in the former the subject of parody was fully developed by the parties. Here, McFarlane does not claim in his testimony or argument that the Twist character in Spawn is a parody or any other kind of literary comment on Twist or violence in sports. Nor does Twist claim the character is a parody of himself. Still, the cases are similar in that they involve the use of sports stars' names, and the products invoke or "call up" the identities of those stars in the minds of those who purchase them. Insofar as readers might view the use of Twist's name for the Mafia "enforcer" as a comment on Twist, the cases are on a par.
McFarlane does, however, attribute a motive to Twist for avoiding the issue of parody, claiming that he does so to avoid the holdings in Falwell v. Hustler and N.Y. Times v. Sullivan, discussed infra.
The ability to use Twist's name for a Mafioso character in Spawn, like the ability to make parody baseball cards, is important in a society such as ours, where so much of social life and discourse revolves around celebrities. One commentator has described celebrities as "common points of reference for millions of individuals who may never interact with one another, but who share, by virtue of their participation in a mediated culture, a common experience and a collective memory." Another says that celebrities are "the chief agents of moral change in the United States." The California Supreme Court, expounding on this in their recent decision in Comedy III Productions, Inc. v. Gary Saderup, Inc., emphasized that the importance of being able to speak freely about and creatively use celebrities' identities:
John B. Thompson, Ideology and Modern Culture: Critical Social Theory in the Era of Mass. Communication 163 (1990).
Richard Schickel, Intimate Strangers: The Culture Of Celebrity 29 (1985).
Entertainment and sports celebrities are the leading players in our Public Drama. We tell tales, both tall and cautionary, about them. We monitor their comings and goings, their missteps and heartbreaks. We copy their mannerisms, their styles and their modes of conversation and consumption. Whether or not celebrities are `the chief agents of moral change in the United States' they certainly are widely used — far more than are institutionally anchored elites — to symbolize individual aspirations, group identities, and cultural values. Their images are thus important expressive and communicative resources: the peculiar, yet familiar idiom in which we conduct a fair portion of our cultural business and everyday conversation.
21 P.3d 797, 803 (Cal. 2001).
To extend the right of publicity to allow a celebrity to control the use of his or her identity in a work of fiction would grant them power to suppress ideas associated with that identity, placing off-limits a useful and expressive tool. This, in turn, would effectively revoke the poetic license of those engaged in the creative process. To proscribe their right to use certain names, words, thoughts and ideas would ultimately apply to the rest of us, impeding our ability to express ourselves.
See Madow, Private Ownership of Public Image: Popular Culture and Publicity Rights, 81 Cal. L. Rev. 125, 138 (1993).
In a line of cases, from New York Times v. Sullivan, 376 U.S. 254 (1964) to Hustler Magazine v. Falwell, 485 U.S. 46 (1988), the Supreme Court held that speech about "public officials" and "public figures" is so important that it is protected unless the plaintiff can prove by "clear and convincing evidence" that the defendant published the statements with "actual malice," knowledge that the statements are false or in reckless disregard of their truth. 376 U.S. at 279-280; 388 U.S. at 155. This protection has been found regardless of the name the public official or public figure gives to his or her cause of action.
In New York Times and Curtis Publishing Co. v. Butts, 388 U.S. 130 (1967), the plaintiffs alleged libel. In Time, Inc. v. Hill, 385 U.S. 374, 388 (1967) the plaintiff filed suit under the New York "privacy" or "misappropriation of name" statute. In Hustler the plaintiff sued for intentional infliction of emotional distress. In each case the Court unequivocally ruled that the plaintiff must prove by "clear and convincing evidence" that the defendant published statements "of and concerning" the plaintiff with knowledge that the statements are false or in reckless disregard of their truth. New York Times, 376 U.S. at 279-280; Curtis Publishing Co, 388 U.S. at 155; Time, 385 U.S. at 388; Hustler, 485 U.S. at 56.
Hustler is particularly instructive because, as in this case, it involved a cartoon. There, Hustler Magazine, which features glossy nude photos of women in compromising positions, featured a cartoon about Jerry Falwell, an evangelical minister and the leader of a political-religious group known as the Moral Majority. In his opinion for a unanimous Court, Chief Justice Rehnquist recited the facts in that case as follows:
The inside front cover of the November 1983 issue of Hustler Magazine featured a "parody" of an advertisement for Campari Liqueur that contained the name and picture of respondent and was entitled "Jerry Falwell talks about his first time." This parody was modeled after actual Campari ads that included interviews with various celebrities about their "first times." Although it was apparent by the end of each interview that this meant the first time they sampled Campari, the ads clearly played on the sexual double entendre of the general subject of "first times." Copying the form and layout of these Campari ads, Hustler's editors chose respondent as the featured celebrity and drafted an alleged "interview" with him in which he states that his "first time" was during a drunken incestuous rendezvous with his mother in an outhouse. The Hustler parody portrays respondent and his mother as drunk and immoral, and suggests that respondent is a hypocrite who preaches only when he is drunk.
Hustler, 485 U.S. at 48.
Falwell filed suit for invasion of privacy, defamation and intentional infliction of emotional distress. Id. at 47-48. The trial court directed a verdict on the invasion of privacy count on the ground that Falwell was a public figure, but submitted the other two claims to a jury. Id. at 48. Though the jury found in favor of the defendants on the defamation count, it awarded Falwell $100,000 in compensatory and $100,000 in punitive damages on the emotional distress claim. Id. at 49. The Fourth Circuit Court of Appeals affirmed. Id. The Supreme Court reversed.
Characterizing the Hustler cartoon as a mere "distant cousin" of the honored political cartoons of the past, the court found that it was nonetheless fully protected by the First Amendment because there is no "principled standard to separate the one from the other. . . ." Id. at 55. The Court held:
We conclude that public figures and public officials may not recover for the tort of intentional infliction of emotional distress by reason of publications such as the one here at issue without showing in addition that the publication contains a false statement of fact which was made with "actual malice," i.e., with knowledge that the statement was false or with reckless disregard as to whether or not it was true.
Id. at 56. Because the jury found the Hustler cartoon could not be understood as describing actual facts about Falwell, the Supreme Court reversed, holding the judgment entered against Hustler inconsistent with the First Amendment. Id.
Twist points out that Hustler was an emotional distress claim, not a "right of publicity" or "misappropriation of name" claim. But the difference in the torts does not affect the protection afforded by the Constitution. A person cannot be defamed by or suffer emotional distress from a publication unless his identity is appropriated. In every case where a public figure raises a defamation or emotional distress claim against a publisher he can also bring a "misappropriation of name" or "right of publicity" claim. If Falwell, Twist or other public figures were permitted to prevail on a "right of publicity" or "misappropriation of name" without satisfying the New York Times test, our First Amendment protections would be an illusion. Every public figure, under the guise of "misappropriation" or "right of publicity," could circumvent the First Amendment and prevent all speech about them that they do not like. This is clearly not the law.
It is true that in Hustler the Supreme Court said that Zacchini stands for the proposition that "the `actual malice' standard does not apply to the tort of appropriation of a right of publicity. . . ." Hustler, 485 U.S. at 52. But that statement must be read in context. The "right of publicity" the Zacchini court addressed was the appropriation of a performer's "entire act," not the use of his name or persona in a work of fiction. The New York Times test cannot be applied when what is appropriated is a person's "entire act" because it is logically impossible for an accurate rebroadcast of an entire performance to be false.
As a work of fiction, Spawn is fully protected by the First Amendment. It does not lose that protection because it is published for profit. Virginia State Board of Pharmacy v. Virginia Citizens Consumer Council, 425 U.S. 748, 762 (1976). Before Twist can recover on his right of publicity claim he must, therefore, satisfy the New York Times "actual malice" standard, knowledge that the statements are false or in reckless disregard of their truth. A prerequisite to satisfying the "actual malice" standard is the requirement that the publication be "of and concerning" the plaintiff. See, e.g., McCarthy, supra at 8-108; Hicks v. Casablanca Records, 464 F. Supp. 426, 432 (U.S. Dist. N.Y. 1978). It is not enough that the publication invokes the plaintiff's identity or is in some sense "about" the plaintiff. A reader must reasonably believe that the depiction is meant to portray, "in actual fact, the plaintiff acting as described." Bindrim v. Mitchell, 92 Cal.App.3d 61, 78, cert. denied, 444 U.S. 984 (1979) (emphasis added).
Whether or not a reasonable jury could conclude a publication is "of and concerning" a plaintiff is a threshold question. Cf. Flip Side Inc. v. Chicago Tribune Co., 564 N.E.2d 1244, 1254 (Ill.App. 1990) (whether reasonable juror would reasonably understand the publication would describe actual facts about the plaintiff is a question of law for the court); Zerpol Corp. v. DMP Corp., 561 F. Supp. 404, 412 (E.D. Penn. 1983) (trial court determined if reasonable person would conclude publication about plaintiff in motion for summary judgment). Here, the trial court applied that requirement when dismissing the plaintiff's defamation claim, finding no reasonable person could believe that the events portrayed in Spawn are "of and concerning" the plaintiff. But the court refused to apply the First Amendment, including that requirement, when addressing the misappropriation claim, finding only that "Plaintiff's petition explicitly pleads the elements of a wrongful appropriation claim."
The court again reached the "of and concerning" issue when the McFarlane defendants sought summary judgment on the misappropriation claim. But, when addressing the misappropriation claim, it found the degree of similarity between the plaintiff and defendant's comic book character to be a question of fact and, for that reason, denied the motion for summary judgment on that claim. Finding the First Amendment inapplicable, the court essentially adopted Twist's reading of Zacchini. It is this ruling that made necessary a trial on the "merits" on the misappropriation claim.
After trial, the court granted the judgment notwithstanding the verdict, continuing to ignore the "of and concerning" requirement and the applicability of the First Amendment. The court reasoned instead that the Missouri misappropriation tort requires a specific intent to benefit the defendant or to harm the plaintiff and because no such proof was offered the motion for judgment notwithstanding the verdict must be granted. While we reject the trial court's reasoning for granting the motion for JNOV, we will affirm it if it is sustainable for any reason.
We therefore treat the "of and concerning" requirement of the First Amendment. Accordingly, we must determine if a reasonable reading of Spawn can lead to the conclusion that the Twist comic book character is meant to portray, in actual fact, Twist the hockey player acting as described.
Even a cursory examination of the comic book reveals why Twist's entire argument focuses on avoiding application of the "of and concerning" requirement. No intelligent person could believe that the fictional Tony Twist's actions are those of the plaintiff. First, Spawn is a comic book about a man who has come back from the dead with superhuman powers. The character bearing the plaintiff's name has an entirely different history and bears no physical resemblance to the plaintiff. Even the plaintiff admits that no one could believe that the actions of the fictional Tony Twist are his actions.
We conclude that a reader could not reasonably believe that the Twist comic book character is meant to portray, in actual fact, Twist the hockey player, acting as described. The Spawn publications, therefore, are not "of and concerning" the plaintiff and were improperly used to support that portion of the disjunctive submission of the verdict directing instruction which required the jury to compensate Twist for harm he suffered as a result of the use of his name. For, if a reasonable reader cannot believe the publication to be "of and concerning" the plaintiff, that publication then cannot logically harm or dilute the commercial value of that plaintiff's identity. See Restatement (Third) Unfair Competition § 49 cmt. d.
Twist contends that the testimony of Sean Phillips, a former nutrition company executive, proves otherwise. Phillips testified, essentially, that but for the comic book, he would have awarded Twist a lucrative endorsement contract. We cannot agree that Phillips' stated reason for not contracting with the plaintiff transforms this work of fiction into a factual depiction that is "of and concerning" the plaintiff.
The alternative theory of recovery contained in the disjunctive submission, nevertheless, allowed recovery if McFarlane "derived advantage" from the use or publication of plaintiff's name. In order to submit this portion of the verdict director, the plaintiff needed to present evidence that the defendant not only used the celebrity's identity but did so in combination with a solicitation to buy. As we explain, infra, the record here is devoid of evidence of a solicitation to buy.
Accordingly, and consistent with the decisions reached in similar cases in other jurisdictions, we find that Spawn is not "of and concerning" the plaintiff. Twist cannot, therefore, maintain his claim for either misappropriation of his name or violation of his right of publicity on the theory that the Spawn publications diluted or harmed the commercial value of his identity .
See e.g., Food Lion, Inc. v. Capital Cities/ABC, Inc., 194 F.3d 505, 522-24 (4th Cir. 1999) ( First Amendment precludes award of publication damages for non-reputational tort claims unless plaintiff satisfies the proof standard of New York Times); Meeropol v. Nizer, 560 F.2d 1061, 1066 (2nd Cir. 1977) ("The same standards of constitutional protection apply to an invasion of privacy as to libel claims"); Matthews v. Wozencraft, 15 F.3d 432, 439 (5th Cir. 1994) ("Courts long ago recognized that a celebrity's right of publicity does not preclude others from incorporating a person's name, features or biography in a literary work, motion picture, news or entertainment story."); Ruffin-Steinback v. Depasse, 82 F. Supp.2d 723 (E.D.Mich. 2000) (appropriation of names and likenesses of singing group in TV "docu-drama" non-actionable); Seale v. Gramercy Pictures, 949 F. Supp. 331, 335 (E.D.Pa. 1996) later proceedings at 964 F. Supp. 918, 923 (E.D.Pa. 1997) aff'd 156 F.3d 1225 (3rd Cir. 1998) (dismissing right of publicity, privacy and false endorsement claims of former Black Panther leader Bobby Seale for use of his name and image in a movie, accompanying book, home video and sound track CD); Polydoros v. Twentieth Century Fox Film Corp., 67 Cal.Rptr.2d 305, 307-08 (Cal.App. 1997) (fictionalized motion picture which used the plaintiff's name and childhood identity was privileged under the First Amendment); Rosemont Enterprises, Inc. v. McGraw-Hill Book Co., 380 N.Y.S.2d 839, 844 (1975) ("it should go without saying that a person need not get the consent of a celebrity to write a fictional piece about that person, so long as it is made clear that the creative work is fictional.").
See Milkovich v. Lorain Journal Co., 497 U.S. 1, 20 (1990) ("the Bresler-Letter Carriers-Falwell line of cases provides protection for statements that cannot `reasonably [be] interpreted as stating actual facts' about an individual. This provides assurance that public debate will not suffer for lack of `imaginative expression' or the `rhetorical hyperbole' which has traditionally added much to the discourse of our Nation.").
The First Amendment Protects McFarlane's Truthful Identification of Twist as the Inspiration for a Fictional Character
Having held the use of Twist's identity in a work of fiction is protected by the First Amendment, we next treat Twist's theory that he can recover because McFarlane identified him as the inspiration for the fictional character. He is identified as that inspiration both in the back of the comic book and in McFarlane's interview in the Wizard publication. Twist alleges that this identification constitutes a commercial exploitation of his fame to sell more comic books.
Twist correctly concludes that if his name and identity are used in an advertisement to encourage a reader to buy the comic book, he is entitled to his share of profits from that sale. We must therefore determine if Twist's name as a symbol of his identity was used to persuade readers to buy a copy of the comic book. In that pursuit we must determine if the content of McFarlane's responses to the fan letters and his interview with Wizard invoke Tony Twist's identity and propose a commercial transaction.
In his September letter McFarlane says:
The great thing about writing and drawing your own book is you get to have as much fun with it as you want . . . Whenever I choose a name I try to have a little bit of play on it . . . I am a big hockey fan, and a lot of my characters have been named after current NHL hockey players. For example, Antonio Twistelli, a/k/a Tony Twist, is actually the name of a hockey player of the Quebec Nordiques.
In his interview with Wizard he is reported to have said:
It's easier to come up with the names of people sitting next to you. . . . And for the most part, if I don't put my friends and family in my books, I guarantee that nobody at Marvel is going to do it for me. I do it just because I can. I've got that freedom. It's one of the great things about controlling your own book.
As can be seen, neither in McFarlane's responses to the fan mail nor in his Wizard interview does he request that the readers purchase anything or propose any other commercial transaction. In order to characterize them as "advertising," we would have to adopt the view that all speech that contributes to sales is, in the end, merely commercial speech. But under such a standard even core political speech in newspapers would be commercial because the paper's reporting and commentary contribute to sales. No reasonable reading of the fan mail responses or the interview in Wizard could lead to a conclusion that McFarlane is proposing a commercial transaction by his references to Twist the hockey player. The fan mail responses and the Wizard interview do not, therefore, provide the necessary evidentiary support to submit that part of the disjunctive submission of the verdict director requiring a verdict for plaintiff if the defendants "derived advantage" from the use of Twist's name.
The fan mail section of the comic book is "news" to Spawn's readers. While some may not find that type of news to be very important in the scheme of things, it is not for them to judge, but for you and every individual reader. First Amendment principles require us to be extremely cautious of declaring any information unnewsworthy and outside the protections of the First Amendment. Harper Row Publishers, 471 U.S. at 561.
That caution has led courts to find the following "newsworthy" and protected from assertions of privacy and publicity rights: the latest fashions, tips on grooming, the latest romantic exploits of celebrities, places to find nude beaches, who is the favorite member of a rock group, what movies are being shown, who is in them, and more. See McCarthy, supra, § 8:52 (citing cases).
McFarlane's statements, both in the back of Spawn and in his interview with the writer from Wizard, were truthful statements about a matter of legitimate public interest; namely, how a comic book writer names his characters. It would be strange indeed were the law to allow McFarlane to name his characters after celebrities, and then prevent him from a non-commercial comment about how he names characters. See Smith v. Daily Mail Publishing Co., 443 U.S. 97, 103 (1979) (State officials may not constitutionally punish publication of protected information absent a need to further a state interest of the highest order.). McFarlane's public admission that Twist was the inspiration for his fictional mafia character Tony Twist is, therefore, protected by the First Amendment.
The First Amendment and Cross-Marketing Protected Works of Fiction with Other Purely Commercial Enterprises
Twist's final complaint is that McFarlane cross-marketed the comic book by packaging it with action figures and holding a " Spawn Night" at a minor league hockey game, arguing that this proves that McFarlane targeted hockey fans and thus used Twist's popularity to boost sales.
An exhaustive review of the trial record reveals no attempt to feature plaintiff in marketing Spawn. McFarlane did package and market two other Spawn action figures (Overt-Kill and Tremor) with a shortened version of a Spawn comic book. However, no toy resembling the Twist comic book character or the plaintiff was made. In both comics contained in the promotional packages, the Tony Twist character appeared on only one page inside each comic book. Neither the Twist character nor the name "Tony Twist" appeared on the package. There was no marketing or reference to Twist from which a reader could conclude that plaintiff endorsed the comic books, video, television show, or any other product. References to "Twist" were not accompanied by a solicitation to purchase, but primarily were found as an infrequent part of a fictional story. The marketing of the toys and Spawn night do not, therefore, provide the necessary evidentiary support for that portion of the disjunctive submission of the verdict director requiring a verdict for plaintiff if the defendants "derived advantage" from the use of Twist's name.
Twist fails to direct us to any evidence that his name or identity was used either in marketing the toys or during the promotional Spawn night. Even if the appearance of the fictional Twist character inside the comics would qualify as an "incidental use" of Twist's name, it is nonetheless protected by the First Amendment. See Ruffin-Steinback v. Depasse, 267 F.3d 457, 462 (6th Cir. 2001) (holding that "the use of plaintiffs' fictionalized likenesses in a work protected by the First Amendment and the advertising [sic] incidental to such uses did not give rise to a claim for relief under the plaintiffs' rights of publicity"); Guglielmi, 603 P.2d at 462, (Bird, C.J., concurring) ("Since the use of [Rudolph] Valentino's name and likeness in the film was not an actionable infringement of Valentino's right of publicity, the use of his identity in advertisements for the film is similarly not actionable."). Because Twist presented no evidence of marketing that involves his identity or his name he cannot prevail on this point.
Conclusion
Finding that the Tony Twist character in Spawn is not a depiction "of and concerning" Tony Twist the retired hockey player, and that McFarlane never used Twist's identity to propose a commercial transaction, we conclude that the First Amendment is a bar to Twist's right of publicity claim. Because all of the legally operative facts necessary to a decision on that question were present and uncontested when the motion for summary judgment was heard, we conclude that this case should never have been tried on the merits.
While a proud hallmark of our system of justice requires that we err on the side of trial on the merits, some trials that should never have taken place, while capable of serving a role in the orderly development of the law, can in fact do more damage to our system of values than others. This is especially true where First Amendment rights are at stake.
The Supreme Court has addressed this problem and concluded that for free speech rights to be real they must have "breathing space" to prevent any "chilling effect" caused by uncertain legal rules governing what speech is protected by the First Amendment. Caroll v. President and Commissioners of Princess Anne, 393 U.S. 174 (1968). This breathing space is considerable when it comes to discussion about "public officials," "public figures" and even private persons involved in "matters of public interest." The Supreme Court has said:
Fear of large verdicts in damage suits for innocent or merely negligent misstatement, even fear of the expense involved in their defense, must inevitably cause publishers to steer wider of the unlawful zone, and thus create the danger that the legitimate utterance will be penalized.
Time, Inc. v. Hill, 385 U.S. 374, 389 (1967) (internal citations and quotation omitted).
This $24.5 million verdict makes real the chilling effect the Supreme Court references in Time v. Hill. How are we then to understand such a large verdict if we determine the plaintiff failed to make a submissible case and that the defendant's work is constitutionally protected?
We understand the verdict to be a product of the jury following the verdict directing instruction as given. They were told they must compensate a public figure for the use of his name in a presumptively protected work of fiction. But they were never instructed to apply the "of and concerning" test, which would require them to determine if a reader could believe that the Spawn character was meant to depict the plaintiff actually carrying out the acts described in the comic book. An affirmative answer to this threshold question is essential. For, if a reasonable reader cannot conclude the publication to be "of and concerning" the plaintiff, we are unable to see how it can harm or dilute the commercial value of that plaintiff's identity. See Restatement (Third) Unfair Competition § 49 cmt. d.
Even if the Spawn publications were "of and concerning" Twist the hockey player, there can still be no recovery because there is no evidence present in the record that would support the conclusion that the use of his identity was made in conjunction with a proposal to enter a commercial transaction.
While rights of publicity and misappropriation of name torts are important protection for real and significant property rights, they cannot, in the order of things, prevail over principles of free expression that are at the center of our system of laws. Our ruling today should not, however, be read as an approval of the ethics of McFarlane's practice of naming characters, but leaves that to the readers and viewers of the Spawn story.
We hold today that the First Amendment protects the defendants' comic books, animated series and the truthful identification of the plaintiff as the inspiration for the name of the fictional character. Given this, there can be no legal ground to enjoin the McFarlane defendants from these lawful activities. The judgment notwithstanding the verdict is affirmed because this comic book and the derivative media utilized to communicate the Spawn story as conceived and created are protected by the First Amendment of the United States Constitution.
Paul J. Simon, J. Concurs
Mary K. Hoff, J., Concurs