Category Archives: intellectual property

Today we have the second half of Brad Desnoyer’s guest post on superheroes and the right of publicity.  If you missed it, check out the first post here.  Thanks again to Brad for this great series!

Missouri’s Predominant Purpose Test

Comic book creator Todd McFarlane introduced the popular comic series Spawn in 1992.¹ In 1993, McFarlane introduced the fictional, mafia boss into the Spawn mythos known as “Antonio Twistelli,” a/k/a “Antonio Twist,” a/k/a “Tony Twist.” Id. McFarlane acknowledged in the comic’s September 1994 issue that he named “Tony Twist” after Quebec Nordiques hockey player Tony Twist. Id.

In 1997, hockey player Tony Twist, now playing for the St. Louis Blues, learned of the infamous comic book character after numerous young hockey fans approached Twist’s mother with Spawn trading cards featuring the fictional mob villain. Id. at 367. Twist subsequently filed suit against McFarlane and various companies associated with the Spawn comic book. Id.  A St. Louis based-jury returned a $24,500,000 verdict in favor of Twist. Id. 368-69.

On appeal, the Missouri Supreme Court declared that Twist’s “right-of-publicity tort,” should balance against McFarlane’s freedom of expression under a new, Missouri standard. Looking at standards implemented across the country, such as the transformative use test, the Missouri Supreme Court stated the current tests afforded a defendant too much protection when her speech is only somewhat “expressive.” Id. at 372-74. Therefore, the court created its own standard – the predominant purpose test:

If a product is being sold that predominantly exploits the commercial value of an individual’s identity, that product should be held to violate the right of publicity and not be protected by the First Amendment, even if there is some “expressive” content in it that might qualify as “speech” in other circumstances. If, on the other hand, the predominant purpose of the product is to make an expressive comment on or about a celebrity, the expressive values could be given greater weight.

Id. at 374. The Court then held that “the use and identity of Twist’s name has become predominantly a ploy to sell comic books and related products rather than an artistic or literary expression, and under these circumstances, free speech must give way to the right of publicity.” Id.

Ironically, after barraging the transformative use test for failing to effectively balance speech and property rights, Missouri’s Supreme Court conducted little balancing itself, simply finding commercial value based on Twist’s ability to make a prima facie case. By the court’s logic, almost any fictional character referencing a famous individual is likely to be a commercial exploitation lacking credible expression.²

In creating the predominant purpose test, the Court forgot that commercial and expressive value will inextricably blend together. Most artists intend to express themselves while also supporting themselves financially.³ It is virtually impossible to view the two principles independently because both are the intention of a professional. Moreover, neither predominates; the two “cannot be separated out ‘from the fully protected whole.’” See Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180, 1185 (citing Gaudiya Vaishnava Soc’y v. City & County of San Francisco, 952 F.2d 1059, 1064 (9th Cir.1990)  And as courts have stated repeatedly, the First Amendment protects artistic works regardless of the creator’s desire to profit.⁴

Further the predominant purpose test protects shrewd defendants appearing to convey expressive speech, but who are in reality masking their attempt to gain commercial value. This placement on intent renders the predominant purpose test overly simplistic.

Take for example the possibility of McFarlane littering his internal documents with self-serving statements pushing his creation of “Tony Twist” as predominantly, or entirely, based in expressive speech. Therefore, under this test, artists foreseeing the possibility of litigation with a wronged celebrity could simply wrap themselves in the First Amendment from the onset of their “creative” endeavor, guaranteeing themselves victory in Missouri. Similarly, an artist could truly be predominantly motivated by expressive comment, but in reality be promoting commercial exploitation. They too would be shielded from losing in a right of publicity suit. By looking at an artist’s intent, or supposed intent, the court misses its own underlying question – was the work predominantly commercial or expressive?⁵

For these reasons, Missouri’s Predominant Purpose Test is lacking at best. It promotes the chilling of free speech while allowing shrewd creators to bypass the test’s underlying purpose with its overly narrow focus on intent.

Superheroes Should Sue in Missouri

So what about Spider-Man and my suction cup action figure mentioned in the first post? Chances are Spidey would have a pretty good right of publicity claim against Hasbro under either test. Even under the looser transformative use test the figure is little more than a miniaturized depiction of Spider-Man. Although the toy company could argue that adding suction cups to Spider-Man’s figure shows a significant creative component, that the company transformed Spider-Man’s likeness into its own expression, such a literal depiction of Spider-Man is little more than mere imitation.

Now, as we all know too well, toy companies can only produce so many versions of a superhero’s likeness before their toys become unquestionably gimmicky and strangely ridiculous. A prime example: all of those “specialized” Teenage Mutant Ninja Turtle and Batman action figures that dorky kids like me never wanted; they just weren’t “real” enough. “Piranha Blade Batman,” and TMNT’s “Bandito-Bashin’ Mike” are two classic examples of toy companies simply giving up.

But in addition to worthless accessories, these gimmicky action figures come with the greatest chance of being legally transformative. Disregarding a toy company’s use of a superhero’s name – these gimmicky figures are not mere imitations of a superhero’s likeness. In fact, a company could, and likely would, argue that these figures are meant to comment on a superhero – to convey a message of action or danger or “piranha-ness.” Further, arguing that an action figure conveys a significant artistic message would be even easier with a figure like “Crimson Mist Batman,” which depicts the Dark Knight as a feral (not sparkly) vampire. The key: the further an action figure – or indeed any product – deviates from being simply a replica of a superhero, the slimmer a chance a hero has in wining his or right of publicity action. That is, of course, if the court utilizes the transformative use test.

If the superhero sued in Missouri, however, he or she would likely win millions of dollars based on the plaintiff-deferential predominant purpose test. Of course, it would also help if the superhero was a St. Louis celebrity.

1. Doe v. TCI Cablevision, 110 S.W.3d 363, 366 (Mo banc 2006).

2. See Brief for Todd McFarlane, et al. as Amici Curiae Supporting Petitioners, Doe v. McFarlane, 110 S.W.3d 363 (Mo. 2003) (No. 03-615)

3. Id.

4. Time, Inc. v. Hill, 385 U.S. 374, 396-97 (1967); see Comedy III, 21 P.3d at 802 (stating “[an expressive activity] does not lose its constitutional protection because it is undertaken for profit

5. Doe, 207 S.W.3d at 57 (stating the test’s purpose is to determine if a product, not the creator’s intent, is predominantly expressive or commercial).

Although we don’t normally feature guest authors here, this week we’re making an exception for an exceptional guest: Brad Desnoyer is a law professor at the University of Missouri who has also written stories for DC Comics and worked as an assistant to Brad Meltzer.  He has written a two part guest post for us on superheroes and the right of publicity, which we’ll be featuring today and Friday.

Superheroes and the Right of Publicity

My Wolverine action figure’s claws really “popped” from his plastic forearms. My suction cup Spider-Man could stick to walls – as long as those walls were glass. And although some knock-offs were better than the originals, like most kids, my favorite action figures always were “officially licensed.”

These official action figures were, and still are, huge profit grabbers for licensors such as Marvel and DC. Posters, bedspreads, toothpastes – slap a picture of Superman on them and a product’s price skyrockets along with customer demand.

If real, “superhero celebrities” would possess a right to capitalize on their fame, their commercial value – just as real celebrities capitalize on their fame by endorsing products. And just as with real celebrities, superheroes would likely demand monetary compensation for the unpermitted use, or “appropriation,” of their image. They consequently could look to the courts for redress by filing a “right of publicity” claim.

Unlike invasion of privacy or copyright claims, a right of publicity is not meant to protect one’s “right to be left alone” or one’s ability to benefit from his or her creation, but rather it protects an individual’s ability “to control the commercial use of his or her identity.” 31 Causes of Action 2d 121. As stated by McCarthy in 1 Rights of Publicity and Privacy § 3:2, and as noted in a previous post, the elements of a right of privacy action are as follows:

1. Validity – Plaintiff owns an enforceable right in the identity or persona of a human being; and
2. Infringement
   (A) Defendant, without permission, has used some aspect of identity or persona in such a way that plaintiff is identifiable from defendant’s use; and
   (B) Defendant’s use is likely to cause damage to the commercial value of that persona.

The legal quandary comes when courts attempt to strike a balance between a celebrity’s (or superhero’s) exhaustible fame and an artist’s First Amendment right to create.

Interestingly, some of the most seminal cases struggling to achieve this balance between the seeming absolutes of property rights and freedom of expression deal with comic books.

The Transformative Use Test

The “transformative use” test, the most implemented test for right of publicity cases, comes from the state with the most celebrities: California.

In Comedy III Productions, Inc. v. Gary Saderup, Inc., Comedy III – the registered owner of the Three Stooges’ property rights – sued artist Gary Saderup, arguing Saderup infringed on the Three Stooges’ rights of publicity by producing and selling merchandise bearing Saderup’s charcoal drawings of the Three Stooges. 21 P.3d 797, 800 (Cal. 2001).

Working to formulate a general standard, the California Supreme Court reasoned that the government’s interest in protecting a celebrity’s property interest outweighed an artist’s First Amendment protection when that artist simply drew mere literal depictions of the celebrity. Id. at 808. “On the other hand,” the court observed, “when a work contains significant transformative elements,” as found in works of parody, the creative endeavor is entitled to complete First Amendment protection. Id. (emphasis added).

Therefore, the court held that the underlying inquiry needed for balancing right of publicity claims against First Amendment defenses is whether the work-at-issue is “transformative” – that is “whether a product containing a celebrity’s likeness is so transformed that it has become primarily the defendant’s own expression rather than the celebrity’s likeness.” Id. at 809.

Applying the transformative use test to Saderup’s drawings, the court found no “significant transformative or creative contribution.” Id. Rather, Saderup’s literal charcoal depictions of the Three Stooges appropriated the trio’s economic value while expressing little more than imitation. Id.

In 2003, California distinguished Comedy III, in Winter v. DC Comics, finding DC Comic’s creative works transformative. 69 P.3d 473, 478 (Cal. 2003). In Winter, musicians Edgar and Johnny Winter sued DC Comics after DC released a five-issue Jonah Hex miniseries featuring “Edgar and Johnny Autumn” – “villainous half-worm, half-human offspring born from the rape of their mother by a supernatural worm creature.” Id. at 476. These pale, white haired monstrosities bore a distorted likeness to the real-life musicians in both physicality and modes of dress. Id. Additionally, the Winter brothers probably were not too pleased that the end of the miniseries Jonah Hex and his cohorts shot down and killed their fictional counter-parts during an “underground gun battle.” Id.

In applying the transformative use test to DC’s Jonah Hex miniseries, the court stated, “An artist depicting a celebrity must contribute something more than a ‘merely trivial’ variation, but must create something recognizably ‘his own.’” Id. at 478 (citing Comedy III, Productions, Inc. 21 P.3d at 810). Therefore, the court held that “[a]lthough the fictional characters Johnny and Edgar Autumn [were] less-than-subtle evocations…” of the Winters, DC’s creation was expressive enough outside its resemblance to the Winters to be transformative. Id. at 479.

Finally, in what might be the most difficult balancing between the seeming absolutes of property rights and the First Amendment, in ETW Corp. v. Jireh Publ’g, Inc, the Sixth Circuit looked at whether reprinted serigraphs and lithographs titled “The Masters of Augusta” infringed on golfer Tiger Woods’ right of publicity. 332 F.3d 915, 918 (6th Cir. 2003). Looking to the transformative use test for guidance, the court held that prints featuring three literal depictions of Tiger Woods to be distinguishable from the “unadorned, nearly photographic reproduction” in Comedy III because the prints did “not capitalize solely on the literal depiction of Woods.” Id. (emphasis added). Rather, the court reasoned, the work consisted of a collage of images – including other golfers in the background – conveying a message of sporting and historical accomplishment. Id. at 936-38. Therefore, the prints possessed “a significant creative component” Id. at 938.

In the next post, we will look at Missouri’s “predominant purpose” test and the Missouri Supreme Court’s use of the test in finding that Todd McFarlane’s Spawn comic infringed on a St. Louis hockey player’s right of publicity.