Doe a/k/a Twist v. TCI Cablevision

Brief Fact Summary.

Twist (P) was a former pro hockey player. He found that a comic book titled Spawn contained a villain called Twist, who was shown as possessing several of the same features that characterized his hockey career. He sued them, on the ground that the creators, publishers and marketers of the comic book were responsible to pay for the market value of using his name as a well-known public figure, and also to pay damages for the injury to the value others would be willing to pay to use his name in their product endorsements.

Synopsis of Rule of Law.

(1) In an action brought to defend the right of publicity, the plaintiff may win his cause provided he gives enough evidence to support his claim that the defendant’s use of the plaintiff’s name was intentionally making commercial capital out of the well-known identity connected with the name, and was without the plaintiff’s consent.
(2) In an action brought to defend the right of publicity, a defendant’s right to use a plaintiff’s name with the aim both of expressing certain views as well as using it for commercial advantage is not protected under the First Amendment, when the use is mainly for commercial gain

Facts.

Twist was a former pro hockey player in the National Hockey League. His use of violent strategies earned him the nickname of “premier enforcer”. He was popular with home fans as well, and endorsed many products, appeared on television and radio shows, including his own show, the “Tony Twist” show which ran for two years. He was also an active part of various children’s charities. His motive was to make his public image more visible in the community, as well as to make a way for himself to shift to sports commentary and product endorsement as a means of livelihood after his retirement from hockey. It was at this point that McFarlane, who was both a hockey fan and president of TMP, wrote a comic book named Spawn, featuring a character of the same name, who had been a CIA assassin and had finally made a deal with the devil in hell to return to earth. The next year he added a new character, called Anthony “Tony Twist” Twistelli. Twistelli was a villain and a criminal with a personality similar to that of Twist on the hockey field. McFarlane put on record that several of the characters in his comic were named after hockey players, including the Tony Twist character, who was intended to borrow his personality from the hockey player Twist. Twist (P) came to know about this representation in the comic and sued the creators, publishers and marketers of the comic for wrongful use of his name, among other things. He wanted damages for the fair market price his name would have earned. He also demanded damages for the depreciation in the endorsement value of his name. at trial, he adduced evidence that the defendants had gained commercially from the use of his name, and that McFarlane had intentionally directed merchandise based on the Spawn  series at hockey fans, who were Twist’s main followers. Some of the souvenir items in the range depicted “Tony Twist” as well. Twist also proved that using his name in connection with a villain in the Spawn series lost him some endorsements. A jury supported his claim and awarded $ 24,500,000 in damages to Twist. This verdict was accompanied by a grant of the defendants’ motion for judgment regardless of the verdict, and also provided for a new trial in case the motion was overruled by a superior court. The request for injunctive relief was rejected. The state supreme court granted review.

Issue.

(1)In an action suing for right of publicity, may a plaintiff win if he gives sufficient evidence to prove that his name was used to evoke his identity without his consent and for commercial gain, by the defendant?
(2) In such an action, can the defendant plead First Amendment protection for his use of a plaintiff’s name which expressively and commercially has a distinct meaning and advantage, when his intention is chiefly commercial gain?

Held.

(Limbaugh, J.)
(1)Yes. In an action suing for right of publicity, the plaintiff may succeed if he produces sufficient proof that his name was used to evoke his identity without his consent and for commercial gain, by the defendant. This may more correctly be called a right of publicity action, since the element of commercial gain being a driving force in the defendant’s actions in using the plaintiff’s name without his consent must also be proved. In a misappropriation of name action, however, the element of the defendant’s seeking some advantage by using the plaintiff’s name without his consent is to be established. In the present case, it was proved that the defendants’ use of the name Twist was in fact understood by the readers to refer to the hockey player, which is the first criterion established, namely, using his name without his consent. Secondly, the evidence also showed that the defendants had the intention of reaping commercial advantage by garnering public attention for the Spawn series and merchandise, using the hockey player’s pseudonym as a focal point. The very least that could be necessarily inferred from the evidence presented was that the defendants intended to convey a false impression that the player somehow endorsed or was associated with the comic book. This established the second criterion, that of seeking to enjoy commercial advantage as a direct motive of the defendant’s actions. In this case it is irrelevant whether the Further support comes from the observation that the Spawn products were directly marketed to hockey followers. Thus the evidence supports a valid right of publicity action.
(2) No. In such an action, the defendant’s use of a plaintiff’s name knowing full well that it has expressive and commercial symbolism is not free speech protected under the First Amendment. The right of publicity claim raised by the plaintiff needs to be assessed as to its constitutional value under the First Amendment. The court here needs to be vigilant in weighing the state’s interest in protecting an individual’s right to property as represented by his name’s commercial value and identity value, as against the defendant’s right to free speech. Some guiding principles are: a right of publicity is not automatically invalidated by the right to free speech, and secondly that a right of publicity suit is different from a defamation suit, making the proving of actual malice unnecessary in the former. The key issue is whether the defendant’s use of the plaintiff’s name and identity is an expression of his beliefs and ideas or not. If used as a means of self-expression, it is protected. If used for commercial motives, it is not. The distinguishing test can be one of several. The relatedness test allows the use of another’s name or identity if the cited work (for instance, a documentary or news report) is about the real person. It is not allowed if the use is intended only to draw attention to the work containing the name, which work is in no sense concerning the person whose identity is referred to by the use of the name. This use is solely an advertising use, and is not allowed. The transformative test looks for the presence of artistic and creative touches which have converted the original identity referred to into something new. This is a protected use. The weakness of these approaches is that they do not fully weight the fact that a person’s use may be used with both expressive and commercial motives. The relatedness test allows damages to be claimed only if the motive is solely commercial and the work is not about the person as such. The transformative test does not allow damages even if the creative license taken in transforming a person’s identity is only for commercial gain. Thus a test which balances expressive and commercial use is needed. The predominant use test is one such which can discriminate in cases of this sort where both expressive and commercial motives are claimed to be present. The expressive element here is evoking a tough-guy persona by the use of the name “Twist”. This is not transformative nor is it expressive in any other way. The expressive element here is therefore purely subservient to its commercial value. The use of the name is predominantly an advertising ploy. In this case, the plaintiff’s right of publicity overruled the right of free speech. The court was wrong to instruct the jury to decide in favor of Twist without determining the presence of a commercial motive for the defendant’s action. The verdict must therefore be set aside. The denial of injunctive relief was correct in that such an injunction would be too broad, denying the defendants the right to parody or otherwise express their ideas using the name and identity of Twist. The verdict was reversed and the case remanded.

Dissent.

N/A

Concurrence.

N/A

Discussion.

Right of publicity actions closely resemble misappropriation actions, the elements being the same. They are usually categorized as: those which deal with public event reporting; those with solely commercial motives; and those which have mixed motives, like the present case. The misappropriation action has more to do with protecting individual self-esteem and dignity. The right of publicity action, however, has to do with protecting against commercial loss due to an individual’s identity being encroached upon for pecuniary gain. This difference is reflected in the type of damages recoverable under the two types of torts. In misappropriation of name cases, damages are not only for the financial loss but also compensation for mental or emotional distress. In a right of publicity suit, the damages are in measure corresponding to the financial loss incurred by the plaintiff and /or the gain unlawfully gained by the defendant.