Strikeout: baseball player's claim against cards fails

Brooks v. Topps Company, Inc., 2007 WL 4547585 (S.D.N.Y.)

Brooks sued over the publicity rights of her late father, baseball player James "Cool Papa" Bell. Bell was involved in the Negro Leagues from 1922 to 1950; "his friend Satchel Paige is said to have remarked that Bell was so fast he could switch off the light and be in bed before the room was dark." After being inducted into the Baseball Hall of Fame in 1974, Bell granted the National Baseball Hall of Fame permission to use his name and likeness on various products. He also made other deals to sell autographed cards. Brooks, the executor of his estate, also granted licenses to use his name and images on baseball cards, clothing, prints, throw blankets, and Wheaties.

In 2001 and 2004, without authorization, Topps released seven baseball cards showing Bell; one of the 2004 cards also had images of Bell's signature. The 2001 cards stated: "Cool Papa, who once stole more than 175 bases in a 200- game season, earned his nickname after falling asleep right before a game." This description came from Players of Cooperstown: Baseball's Hall of Fame, written by baseball experts, but Brooks asserted that this description was both false and derogatory.

Topps promotional materials for the 2004 cards stated, in mouseprint, that "[a]lthough these players have agreed to provide these cards for Topps, we cannot guarantee that all autographs ... will be received in time for inclusion in this product" and, in text, that the cards "feature an authentic autograph from 1 of 186 Hall of Fame members," though Bell's name and signature did not appear on the promotional materials.

In early 2005, Brooks first heard that Topps might have sold a Bell card (something Topps didn't disclose to her in 2004 when discussing possible licensing agreements, which she ultimately rejected). She found out about the 2004 cards and asked for Topps to stop selling Bell materials and for compensation for past use. She then found out about the 2001 cards. She rejected a $35,000 settlement agreement and sued for violation of the Missouri common law right of publicity, the Lanham Act, and New York unfair competition law.

The parties agreed that Missouri law governed the right of publicity claim, because Bell was a Missouri resident at the time of his death. But the statute of limitations is provided by New York law, which has a shorter limitations period – one year. Under the single publication rule, the limitations period runs from the date of publication, and further dissemination of the same item doesn't create a new cause of action or extend the period. As she sued in 2006, her right of publicity claims were time-barred; the court refused to apply the discovery rule even though the cards were distributed in sealed packages that didn't identify their particular contents.

The court also rejected the argument that Topps' concealment of the existence of certain cards estopped Topps from asserting a limitations defense. Such an estoppel must be established by clear and convincing proof of intentional misrepresentation. The statute of limitations had already run on the 2001 cards when Topps first interacted with Brooks. As for the 2004 cards, there was no evidence of affirmative misrepresentations, only failure to disclose – the first time a Topps representative told Brooks that he was providing her a list of all Bell cards was in 2006, after the statute of limitations had run.

Brooks also argued that Bell's name and likeness were unregistered marks, and that the promotional material for the 2004 card was likely to confuse consumers into believing that she or Bell endorsed the card. She further argued that the false endorsement and the nickname story were false and damaging to Bell's image.

To succeed on a false endorsement claim, Brooks needed to show ownership of a distinctive mark plus a likelihood of confusion. She failed, however, to show sufficient evidence that she owned a distinctive mark, because she did not show evidence of secondary meaning. Scattered instances of commercial licensing of Bell's name and one license of the image at issue here were insufficient to meet her burden on summary judgment. Thus, the court didn't need to reach the issue of the likelihood of confusion. (Comment: the court implicitly required Brooks to show a mark in specific images of Bell, or Bell's name, rather than a mark that would be coextensive with Bell's persona – see also the Rock & Roll Hall of Fame and ETW v. Jireh cases, in which difficult questions about likely confusion based on mere portrayal of a cultural artifact/celebrity were avoided by requiring very specific definitions of the marks at issue.)

The false advertising claim also failed. The story of Bell's nickname was not commercial speech – it wasn't made for the purpose of influencing consumers to buy the goods.

The statement that players had agreed to provide signatures was actually false with respect to Bell; consumer deception could be presumed. However, the court ruled that, as a matter of law, the statement was not material in context. Brooks didn't provide sufficient evidence that the statement would encourage consumers to buy Topps cards. (This is a problem with false endorsement claims generally: there's rarely evidence that endorsement matters to consumers, but plaintiffs usually deal with this by suing under 43(a)(1)(A), as to which courts have – perhaps mistakenly – neglected to impose a materiality requirement.) Here, the statement didn't include Bell's name, and in fact it was a disclaimer – Topps didn't guarantee that all the autographs would be included. Plus it was in "miniscule" font.

The autograph statement – that Bell's autograph would be on the card – wasn't literally false. There was no extrinsic evidence of consumer confusion, so the court also granted summary judgment as to this statement.

New York common law unfair competition provided no further coverage than the Lanham Act, and thus this claim also failed.

Final comment: One way to look at plaintiff's difficulties here is as further evidence of the disproportionate difficulties African-Americans have had in getting the benefits of IP protection.