Opposition — Pro Arts, Inc. v. Factors Etc., Inc.

— Supreme Coun, UP] |

FILED

JAN 31 (979

IN THE MICHAEL RCDAK, JR., CLERR

Supreme Court of The Anited States

Octoser TERM, 1978

No. /& -6942

Pro Arts, Inc. and Stop anp SHop Compantss, Ino.,

Petitioners,

v.

Factors Erc., Inc. and Boxcar ENTERpRisEs, INc.,

Respondents.

On PETITION FoR A WRIT OF CERTIORARI TO THE

Unitep States Court or APPEALS

FOR THE SEconpD CinculIrT

RESPONDENTS’ BRIEF IN OPPOSITION

MicHakE. C. SILBERBERG

645 Fifth Avenue

New York, New York 10022

(213) 935-9800

ARTHUR FIELDS AND

Epwarp A. Woops

9401 Wilshire Boulevard

Beverly Hills, California 90212

(213) 273-6333

Attorneys for Respondents

oie) hy

INDEX

TABLE OF AUTHORITIES...................

I i ce See ct he

QUESTIONS PRESENTED BY PETITION ....

STATEMENT OF THE CASE ................

REASONS WHY THE WRIT SHOULD BE

Ee Os oe rer ina cies ka de

1. NO REASON EXISTS FOR THE GRANT

OF CERTIORARI SINCE THE OPINION

AND RATIONALE OF THE ZACCHINI

CASE ARE FULLY DETERMINATIVE

OF THE ISSUES PRESENTED BY PETI-

po I ee eee ee ee ee Te

A. Petitioners’ Commercia! Souvenir Posters

Do Not Constitute a Legitimate Effort to

Disseminate News, Are Not Equivalent to

Posters Which Do Communicate Ideas or

Disseminate Newsworthy Information and

Therefore Are Not Entitled to the Same

First Amendment Protection ...........

B. Since Petitioners Have Presented No

Meaningful Distinctions Between Zacchini

and the Instant Case, Zacchini Controls

and the Petition Should Be Denied ......

C. The Paulsen and Current Audio Opinions

Relied Upon By Petitioners Are Consistent

with Zacchini and the Decisions Below ...

15

17

2. NO QUESTIONS RAISED BY PETITION-

ERS IN THE INSTANT CASE WERE

LEFT UNANSWERED IN ZACCHINI 20

3. THE INJUNCTION ENTERED AGAINST

PETITIONERS IS SUFFICIENTLY NAR-

ROW TO RESTRAIN PETITIONERS

WITHOUT ANY ABROGATION OF FIRST

AMENDMENT RIGHTS ................. 21

SE nc hh ctc ea eet saksaes ton an eres 22

ei SLi n pide ae ape eee aan aeeeS AA-1

iin,

TABLE OF AUTHORITIES

Cases Page

Baldwin v. Redwood City, 540 F.2d 1360 (9th Cir.

1976), cert. denied, 431 U.S. 913 (1977) ........ 12

Bates v. State Bar of Arizona, 433 U.S. 350 (1977) 7,14

Current Audio, Inc. v. RCA Corporation, 71 Misc.2d

831, 337 N.Y.S.2d 949 (Sup.Ct. 1972) . 10, 17,18

Factors Etc., Inc. and Boxcar Enterprises, Inc. v.

Creative Card Co., et al., 444 F.Supp. 279

OE ooo >. 54's Gums’ uae boas om oo

Glasson v. City of Louisville, 518 F.2d 899 (6th Cir.

1975), cert. denied, 423 U.S. 930 (1975) ..... 7,13

Groucho Marx Productions, Inc. v. Playboy Enter-

prises, Inc. (No. 77-1782, S.D.N.Y. 1977) ...... 18

Guglielmi _v. Spelling-Goldberg Prods., 140 Cal.

Rptr. 775 (Cal.Ct.App., 2nd App.Dist. 1977) ... 12

Haelan Laboratories, Inc. v. Topps Chewing Gum,

Inc., 202 F.2d 866 (2d Cir. 1953), cert. denied,

Sy MR A WO oo ic nw cancec cess sees 4,7

Hernandez v. Hanson, 430 F.Supp. 1154 (D.Neb.

AS CR aan et ee Ore ee ee ae 13

Hicks, et al. v. Casablanca, et al., 77 Civ. 5399

(LWP) (S.D.N.Y., filed September 19,1978) .... 11

Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495 (1952) 11

Man v. Warner Bros., Inc., 317 F.Supp. 50 (S8.D.N-Y.

ns ing ae eh hailed uth ao aS a a oc ks 11

Paulsen v. Personality Posters, Inc., 59 Misc.2d 444,

299 N.Y.S.2d 501 (Sup.Ct. 1968) ....... 4,5, 17,18

Rosemont Enterprises, Inc. v. Urban Systems, Inc.,

72 Mise.2d 788, 340 N.Y.S.2d 144 (1973) as

a iy a=

Page

Spinar v. United States, 440 F.2d 1241 (8th Cir.

ES, 25 Leh cates J weds. See Capa pRSeaN 13

Universal City Studios v. Ideal, 3 Media Law Re- ~

porter 1297 (S.D.N.Y. 1977) .............5045: 11

University of Notre Dame du Lac v. Twentieth

Century Fox Film Corp., 22 A.D. 2d 452, 256

Se IE I wei Vain 0b eee eye vgn ge 11

Winters v. New York, 333 U.S. 507 (1948) ........ 11

Zacchini v. Scripps-Howard Broadcasting Co., 433

U.S. 562, 97 S.Ct. 2849 (1977) . .4, 6, 10, 15, 16, 17, 19, 20

U.S. Constitutional Amendments:

Amendment I ............. 2, 4, 5, 6, 7, 8, 9, 10, 11, 12,

13, 14, 15, 18, 20, 21

Miscellaneous

91 Harvard Law Review 208-214 (1977)........ 15

Se eee ee

IN THE

Supreme Court of The United States

Octoser TgerM, 1978

No. 12-492

Pro Arts, Inc. and Stop anp SHop Compantrs, Ino.,

Petitioners,

v.

Factors Erc., Inc. and Boxcar Ewnrerprises, Ino.,

Respondents.

On PETITION For A Writ or CERTIORARI TO THE

Unirtep States Court or APPEALS

FOR THE SEconpD Circuit

RESPONDENTS’ BRIEF IN OPPOSITION

The respondents Factors Etc., Inc. and Boxcar Enter-

prises, Inc. respectfully request that this Court deny the

petition for writ of certiorari seeking review of the

Second Circuit’s opinion in this case. That opinion is

reported at 579 F.2d 215 and is reprinted in Appendix C

of the petition.

OPINIONS BELOW

The opinion of the United States District Court for the

Southern District of New York granting a preliminary

injunction is reported at 444 F.Supp. 288 and is reprinted

in Appendix A of the petition. That opinion recites that

the instant action was a companion action to Factors Etc.,

=

Inc. and Boxcar Enterprises, Inc. v. Creative Card Co.,

et al., which is reported at 444 F.Supp. 279, and the find-

ings and reasonings of the Creative Card opinion were

specifically incorporated in the District Court opinion

in the instant action. The Creative Card opinion is re-

printed in Appendix AA of this Brief in Opposition.*

QUESTIONS PRESENTED BY PETITION

1. Do petitioners have an absolute First Amendment

privilege to mass merchandise their unauthorized celeb-

rity souvenir poster bearing Elvis Presley’s photo-

graph which would otherwise constitute an appropriation

of his judicially recognized “right of publicity” merely

because the poster was distributed in the days immedi-

ately following Mr. Presley’s death and bears the legend

“In Memory .. . 1935-1977”?

2. Does an injunction restraining petitioners from

selling or distributing an unauthorized celebrity souvenir

poster of Elvis Presley or otherwise utilizing for com-

mercial profit Mr. Presley’s name, image or likeness

constitute an impermissibly overbroad restraint of their

First Amendment rights?

STATEMENT OF THE CASE

This petition is filed with respect to an Order of the

Court of Appeals of the Second Circuit which affirmed an

Order of the United States District Court for the

Southern District of New York, Charles H. Tenney, J.,

granting respondents’ motion for a preliminary injunc-

tion. That injunction restrains petitioners during the

pendency of this action from further sale or distribution

of their unauthorized commercial souvenir poster of

* Ref to the appendices in the petition and this Brief in

Gonedlion are prefaced with the a ix letter(s) followed

by the page number (e.g., Al, C3, ).

or

the renowned entertainer Elvis Presley and from other-

wise utilizing for commercial profit, the name, image or

likeness of Mr. Presley, who met a tragic and untimely

death on August 16, 1977.

This action is jointly brought by Boxcar Enterprises,

Ine. (“Boxcar”), a Tennessee corporation, to which Mr.

Presley during his lifetime transferred, and which he

thereafter utilized as the vehicle to commercially exploit,

his judicially recognized “right of publicity” and by

Factors Ete., Inc. (“Factors”). (C-2 and 0-3). Factors,

a Delaware corporation, is one of the world’s largest mass

merchandisers of novelty items, specializing in the com-

mercial exploitation of celebrities’ “rights of publicity”.

On August 18, 1977, two days after Elvis Presley’s death,

Factors acquired from Boxcar, by written license agree-

ment, the exclusive right to commercially exploit Mr.

Presley’s name and likeness “in connection with the manu-

facture, sale, advertising and distribution of all mer-

chandise, of whatever kind, size or nature”. This agree-

ment was confirmed and consented to by Mr. Presley’s

long-time personal manager, Colonel Tom Parker, and

Mr. Vernon Presley, Elvis’ father and the executor of his

estate, which will benefit substantially from the royalties

paid by Factors (C-3). Factors paid Boxcar $100,000 on

execution of the agreement against a guarantee of

$150,000.

Immediately upon Presley’s death, petitioner Pro Arts,

Inc. (“Pro Arts”) decided to illegally appropriate for

itself a share of the market for Elvis Presley memora-

bilia. (C-3). Three days after Presley’s death, Pro Arts

published and commenced marketing, without authority

from anyone related to the Presley interests, a pictorial

celebrity souvenir poster of Elvis Presley using a photo-

graph, the copyright of which it claims to have purchased

from a staff photographer of the Atlanta (Georgia)

Journal. On the poster were inserted the words “In

— ;

Memory .. . 1935-1977”. The poster was thereafter sold

by petitioner Stop and Shop Companies, Inc. through

one of its divisions. (C-3 and C-4).

The Decisions Below

In carefully reasoned opinions filed in the instant action

and a companion action brought against Creative Card

Co., the District Court held that respondents had satisfied

each of the tests entitling them to preliminary injunctive

relief. Relying upon the Second Circuit’s landmark de-

cision in Haelan Laboratories, Inc. v. Topps Chewing

Gum, Inc., 202 F.2d 866 (2d Cir. 1953), cert. denied, 346

U.S. 816 (1953), and the recent United States Supreme

Court opinion in Zacchini v. Scripps-Howard Broadcast-

ing Co., 433 U.S. 562, 97 S.Ct. 2849 (1977), the District

Court held that the death of Elvis Presley did not operate

to divest Boxcar of the rights it had acquired from Mr.

Presley during his lifetime, that Mr. Presley possessed a

valuable “right of publicity” which “inhered in and was

exercised by [him] in his lifetime... was assignable by

him and was so assigned, that it survived his death and

was capable of further assignment.” (AA-7).

The District Court premised its finding of irreparable

injury upon (a) the “evanescent” nature of the market

for Presley memorabilia, (b) the “rush to capitalize on

the Presley image in [the] post-mortem period” and (c)

the jeopardy to Factors’ licensing program by Factors’

“inability to grant exclusive rights” due to the presence

of [petitioners’] goods in the marketplace. (AA-13).

The District Court held that petitioners’ reliance for a

First Amendment newsworthy privilege upon Paulsen v.

Personality Posters, Inc., 59 Misc.2d 444, 299 N.Y.S.2d

501 (Sup.Ct. 1968), was “far off the mark” since Paulsen

was “decided in favor of the unlicensed poster manu-

facturer because Paulsen’s choice of the politicai arena

for satire made him ‘newsworthy’ in the dirst amendment

= a

sense.” (AA-11 and AA-12; emphasis added). In a foot-

note the court also remarked that Paulsen had since

been held “unique to its facts” by the very court which

decided it. (AA-12). The Court concluded that “there is

no constitutional protection for selling posters of Elvis

Presley as Elvis Presley”. (AA-12).

On appeal petitioners did “not challenge the trial

court’s finding of possible irreparable harm”, but only its

finding that respondents “had demonstrated probable

success on the merits.” (C-8)

The Court of Appeals affirmed the District Court

opinion, holding that petitioners had “demonstrated a

strong likelihood of success on the merits at trial” (C-15),

and that Boxcar’s exclusive right to commercially exploit

Presley’s name and likeness was exercised during

Presley’s life, survived his death and was validly trans-

ferred to Factors (C-14). The Court of Appeals also

summarily rejected petitioners’ assertion that pursuant

to Paulsen, petitioners were privileged under the First

Amendment to print and distribute their own Elvis

Presley poster as a means of expression concerning a

“newsworthy event” (C-14). The Court held that it could

not “accept [petitioners’] contention that the legend ‘In

Memory ...’ placed its poster in the same category as

one picturing a presidential candidate, albeit a mock

candidate.” (C-15).

REASONS WHY THE WRIT SHOULD BE DENIED

1. NO REASON EXISTS FOR THE GRANT OF

CERTIORARI SINCE THE OPINION AND RA-

TIONALE OF THE ZACCHINI CASE ARE FULLY

DETERMIN/ TIVE OF THE ISSUES PRESENTED

BY PETITIONERS.

The Supreme Court has already held that a state con-

stitutionally may prohibit the unauthorized appropriation

of an entertainer’s “right of publicity” even where the

sili

appropriation constitutes a legitimate effort to com-

municate newsworthy information and the unauthorized

appropriator is a recognized member of the communica-

tions media. Zacchini v. Scripps-Howard Broadcasting

Co., 433 U.S. 562, 97 S.Ct. 2849 (1977). In Zacchini the

Court held that even a television station does not enjoy

an absolute First Amendment privilege to utilize for its

newscasts newsworthy events if that use constitutes an

appropriation of an individual’s right of publicity.

It is respectfully submitted that the opinion and ra-

tionale of Zacchini are fully determinative of the issues

presented by petitioners, and that, in fact, the instant

action presents a much stronger case than Zacchini for

the prohibition of an unauthorized appropriation of an

entertainer’s “right of publicity” since (1) petitioners’

souvenir posters do not constitute a legitimate effort to

disseminate news and (2) even assuming arguendo that

a photograph of Elvis Presley and the years of his birth

and death were newsworthy information, petitioners

unquestionably have utilized that information solely for

the purpose of commercial exploitation in derogation of

respondents’ right of publicity.

A. Petitioners’ Commercial Souvenir Posters Do Not

Constitute a Legitimate Effort to Disseminate News,

Are Not Equivalent to Posters Which Do Oom-

municate Ideas or Disseminate Newsworthy Informa-

tion and Therefore Are Not Entitled to the Same

- First Amendment Protection.

Petitioners buttress their argument seeking a grant

of certiorari on the unspoken and unwarranted assump-

tion that mass merchandised celebrity souvenir posters

are legally indistinguishable from posters which com-

municate or disseminate newsworthy information or seek

to inform or encourage the dissemination of ideas. It is

respectfully submitted that petitioners’ mere invocation

of the word “poster” to describe their souvenir merchan-

a

dise is insufficient to attach to their celebrity souvenir

posters the protection traditionally afforded by the First

Amendment.

Petitioners’ assertion that their celebrity poster is con-

stitutionally privileged because it carries a “message of

public interest” is baseless (petition, p. 9). Petitioners

do not seek to inform the public. Petitioners are mass

merchandisers interested only in profiting from the sale

to the public of a “remembrance” of Elvis Presley.' The

poster petitioners wish to peddle is no different than the

Elvis Presley buttons, badges, tote bags and T-shirts

sold by other mass merchandisers. Petitioners’ celebrity

poster is intended as a memento in the same sense that

the personal scarves Presley flung to adoring fans at his

concerts were intended as mementos. Respondents re-

spectfully submit that even petitioners would not assert

a constitutional privilege for such items.

The rationale supporting First Amendment protection

of political posters and commercial advertising is wholly

inapposite to celebrity posters, memorabilia and souvenir

merchandise. Even petitioners do not suggest that their

personality posters communicate any ideas or views

about “important public questions and policies” or serve

“individual and societal interests in assuring informed

and reliable decision-making”. Glasson v. City of Louis-

ville, 518 F.2d 899 (6th Cir. 1975), cert. denied, 423 U.S.

930 (1975); Bates v. State Bar of Arizona, 433 U.S. 350

(1977). The medium of posters as a means of political

expression and dissent is not the medium of celebrity

souvenir posters. In fact, petitioners’ celebrity souvenir

posters are merely enlarged bubble gum cards, such as

those involved in Haelan Laboratories, Inc. v. Topps

Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953), cert.

1 Since petitioners’ souvenir merchandise is unauthorized, peti-

tioners need mpi 6 any royalties to respondent Boxcar. Thus,

petitioners are attempting to unfairly compete with re-

spondents by selling souvenir merchandise at a lower price.

=

denied, 346 U.S. 816 (1953), and about which there can

be no serious claim of First Amendment privilege.’

In their attempts to assert constitutional protection for

their souvenir merchandise, petitioners have boxed them-

selves into a corner from which they cannot be extricated.

If petitioners are asserting that their souvenir poster is

constitutionally protected under the First Amendment

because posters are a medium entitled to such protection

without further analysis, then it is irrelevant whether

petitioners affixed any message to the poster. However,

as demonstrated herein, the medium of posters as a means

of political expression is not the medium of celebrity sou-

venir posters. Thus, constitutional protection does not at-

tach automatically to a souvenir item labelled “a poster”.

On the other hand, if petitioners are “ontending that it is

their use of their souvenir poster which entitles them to

First Amendment protection, because it carries a message

of public interest, then it would follow that any other item

of souvenir merchandise which also carried that message

would be entitled to equal constitutional protection. Thus,

under petitioners’ theory, any ash tray, wastebasket, bed-

spread, button, badge or tote bag embossed with a picture

of Elvis Presley and the words “In Memory... 1935-

1977” would be entitled to First Amendment protection.

It is respectfully submitted that such a position is prepos-

terous.

It also would flow from petitioners’ contention that if

Presley were still alive and became married or a parent,

petitioners would be entitled to claim a First Amendment

privilege to manufacture, distribute and sell, without

Presley’s consent, a celebrity poster or other merchan-

dise portraying Presley and his wife and/or children

imprinted with the appropriate marriage and birth

2 Petitioners certainly cannot be suggesting that an unauthorized

manufacturer of bubble gum ten cards would be deserving

of First Amendment protection against a claim of infringement

on the ground that the cards provided players’ statistics.

nisl

dates.* Respondents respectfully submit that such argu-

ments are untenable.

Petitioners’ suggestion that their celebrity souvenir

poster is a legitimate effort to disseminate news is a

thinly transparent sham. Petitioners are seeking refuge

behind the protective skirts of the First Amendment in

order to engage in the crassest commercial rip-off. To

argue that the addition of the words “In memory .. .

1935-1977” affords petitioners First Amendment protec-

tion for their celebrity souvenir poster makes a mockery

of the First Amendment and ignores petitioners’ patent

and belated efforts to cloak their purely commercial

activities in the protective mantle of the First Amend-

ment.

Petitioners have sought to commercially capitalize on

Elvis Presley’s death by selling an unauthorized sou-

venir poster which they could not and did not do during

Presley’s life. Petitioners’ arguments in the District

Court and Court of Appeals evidenced their belief that

they could defend their production and sale of unau-

thorized celebrity souvenir posters on the theory that

Presley’s right of publicity was personal and died with

him. However, as both lower courts opined, Presley’s

right of publicity was assignable by him, was so assigned,

survived his death and was validly transferred to re-

spondent Factors. Having been rejected in their underly-

ing theory, in an effort to seek the aid of a higher court

petitioners now attempt to fashion a constitutional argu-

ment out of whole cloth, by suggesting that they were

engaged in a legitimate effort to disseminate news.

’Respondents doubt that petitioners wish to concede that the

accidental death or divorce of one of their major commercial

poster properties such as Farrah Fawcett-Majors would it

others to immediately market ——- posters, thereby de-

stroying their exclusive rights, as long as the appropriator affixed

a “magical” label to the ome

—_— =a

Petitioners must assume the grossest naivete of this

Court to ask it to believe that petitioners’ purpose in

manufacturing and selling their celebrity souvenir poster

was to convey “a message of public interest”. In reality,

petitioners’ purpose from the outset can be simply de-

scribed: to obtain something for nothing. The Court in

Zacchini addressed this precise question when it said

that:

“(The rationale of protecting the right of publicity is]

one of preventing unjust enrichment by the theft of

good will. No social purpose is served by having the

defendant get free some aspect of the plaintiff that

would have market value and for which he would nor-

mally pay.” 433 U.S. at 576 (See also AA-9, C-10 and

C-11). (emphasis added).

Petitioners’ obvious intent was to capitalize upon the

substantial demand for Elvis Presley memorabilia im-

mediately upon his death without having to pay anything

for such right. The rationale espoused by the Court in

Zacchim prohibits such acts and petitioners’ belated

effort to claim constitutional protection for their crass

conduct rings hollow.

It is well established that souvenir merchandise and

ordinary subjects of commerce such as petitioners’ celeb-

rity poster do not communicate ideas or opinions and are

not afforded constitutional protection. Although it is

clear that “entertainment, as well as news, enjoys First

Amendment protection” (Zacchini at 578), it is also true

that none of the cases cited by petitioners afford protec-

tion to, or even mention, celebrity posters or other souve-

nir merchandise. Rather, the cases cited by petitioners

deal with (a) press conferences, “the very symbol of a

free and open press” (see Current Audio, Inc. v. RCA

Corporation, 71 Mise.2d 831, 337 N.Y.S8.2d 949 (Sup.Ct.

ee ag,

—

1972) ; (b) magazines (see Winters v. New York, 333 U.S.

507 (1948), Universal City Studios v. Ideal, 3 Media Law

Reporter 1297 (S.D.N.Y. 1977) ; and (c) motion pictures,

see Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495 (1952),

Man v. Warner Bros., Inc., 317 F.Supp. 50 (S.D.N.Y.

1970), and University of Notre Dame du Lac v. Twenti-

eth Century Fox Film Corp., 22 A.D. 2d 452, 256 N.Y.S.

2d 301 (1965), in which the court specifically said:

“Tt is at once apparent, when we deal with the content

of a book or motion picture, that we deal with no ordi-

nary subject of commerce. Motion pictures, as well as

books, are ‘a significant medium for the communication

of ideas.’ (emphasis added).

Two recent cases involving an entertainer’s right of

publicity and defendants’ claimed First Amendment priv-

ileges, one from the District Court for the Southern Dis-

trict of New York and the other from the Court of

Appeals in the State of California, evidence further ju-

dicial recognition of the obvious distinction between (a)

celebrity posters and related items of souvenir merchan-

dise and (b) other media legitimately entitled to First

Amendment protection.

In Hicks, et al. v. Casablanca, et al., 77 Civ. 5399

(LWP), filed September 19, 1978, the District Court for

the Southern District of New York faced the question

with respect to Agatha Christie of “whether the right of

publicity attaches where the name or likeness is used in

connection with a book or movie”. The court there stated

that:

“... [MJore so than posters, bubble gum cards, or

some other such ‘merchandise’, books and movies are

vehicles through which ideas and opinions are dissem-

inated and, as such, have enjoyed certain constitutional

ae A cits

protections, mot generally accorded ‘merchandise’.”

(emphasis added; p.6)

In Guglielmi v. Spelling-Goldberg Prods., 140 Cal.Rptr.

775 (Cal.Ct.App., 2nd App.Dist. 1977), the Court, in con-

sidering the claim of Rudolph Valentino’s heir to the late

actor’s surviving right of publicity and protesting the

contents of a biography produced by defendants, stated

that:

“The public policy grounds for allowing biographies,

however unauthorized, are different from those re-

garding the issuance of posters or sweatshirts embla-

zoned with the likeness of the deceased celebrity.” (em-

phasis added)

Thus, both California and New York courts have ac-

knowledged a distinction between books and motion pic-

tures on the one hand and sweatshirts, bubble gum cards

and celebrity souvenir posters on the other hand, based

rron the obvious recognition that ideas and opinions are

disseminated through the former but not the latter, as a

result of which the latter are not entitled to constitutional

immunity from an otherwise valid misappropriation

claim.

Significantly none of the cases cited by petitioners for

the proposition that celebrity souvenir posters are a

medium of expression entitled to protection under the

First Amendment deal with mass merchandised celebrity

souvenir posters, except perhaps Paulsen, supra, which

has been limited by the very court which decided it to its

“nnique facts” and is readily distinguished below (see

pp. 17-19).

In Baldwin v. Redwood City, 540 F.2d 1360 (9th Cir.

1976), cert. denied, 431 U.S. 913 (1977), cited by peti-

tioners, the Court invalidated an ordinance restricting

— oo

the display of political campaign posters on public thor-

oughfares on the ground that the First Amendment pro-

tected the expression of political opinions.

In Glasson v. City of Louisville, 518 F.2d 899 (6th Cir.

1975), cert. denied, 423 U.S. 930 (1975), the Court affirmed

plaintiff’s constitutional rights to hold up a political

protest poster along a motorcade route scheduled to be

traveled by the President of the United States when the

message on the sign expressed plaintiff’s “views about

important public questions and policies.” 518 F.2d at 904

(emphasis added).

The only issue before the court in Spinar v. United

States, 440 F.2d 1241 (8th Cir. 1971), also relied upon by

petitioners, was whether certain posters were obscene

under the prevailing standards established by the United

States Supreme Court. Since the question of obscenity is

not before this Court, it is respectfully submitted that

Spinar has no application to the instant action.

Hernandez v. Hanson, 430 F.Supp. 1154 (D. Neb. 1977),

is also inapposite. That case dealt with the validity of a

local school board regulation requiring approval prior to

the dissemination on campus of certain literature. Al-

though the Court found nothing per se unreasonable under

the First Amendment about requiring prior approval

of written distributions, it articulated the policy reasons

supporting an open or less restricted distribution, em-

phasizing that “a public school is a market place of ideas

and early involvement in debate and comment and free

exchange is essential to the development of the demo-

cratic spirit necessary to the proper functioning of our

government”. 430 F.Supp. at 1158. The rationale favor-

ing unrestricted distribution of literature on school cam-

puses does not apply to the unrestricted sale of celebrity

souvenir posters in the instant case. Petitioners surely

cannot seriously assert that their celebrity souvenir pos-

ter of Elvis Presley is intended to or in fact will generate

=

“debate and comment and [a] free exchange [of ideas]

essential to the development of the democratic spirit

necessary to the proper functioning of our government.”

Petitioners also rely upon an excerpt from a footnote

in a dissenting opinion in Bates v. State Bar of Arizona,

433 U.S. 350 (1977), to support their contention that

celebrity posters are entitled to First Amendment pro-

tection. Bates, which struck down restraints on attorney

price advertising, discussed the basis underlying the pro-

tection afforded commercial speech in certain instances:

“Significant societal interests are served by such

speech [which] ... serves to inform the public of the

availability, nature, and prices of products and ser-

vices, and thus performs an indispensable role in the

allocation of resources in a free enterprise system.

[citations]. In short, such speech serves individual

and societal interests in assuring informed and reliable

decisionmaking.” 97 S.Ct. at 2699.

Bates is inapplicable to the instant case for at least

two reasons. First, petitioners’ celebrity souvenir post-

ers do not even rise to the level of commercial speech,

which itself is protectible only in certain instances. Sec-

ond, and more importantly, none of the reasons favoring

the protection of commercial speech, including serving

“individual and societal interests to assure informed and

reliable decisionmaking”, apply to the sale of an Elvis

Presley souvenir poster.

Petitioners’ citation to a footnote in the dissenting

opinion of Justice Powell (petition, p. 7) is somewhat

misleading to the extent it suggests that the Court or

Justice Powell stated that there is no distinction for

First Amendment purposes between newspapers and

celebrity souvenir posters. A review of the entire

footnote indicates that Justice Powell suggested that

there is-no distinction for purposes of attorney price

<

advertising between newspapers and other media which

might contain that information, (97 S.Ct. at 2718).

Thus, all of the cases cited by petitioners for the prop-

osition that “posters are media of expression entitled to

protection under the First Amendment” (petition, p. 6)

involve posters which communicate ideas, disseminate

newsworthy information, or serve important societal in-

terests in decisionmaking. In contrast, the District Court

below correctly recognized that the issue before it related

to rights respecting commercial exploitation of “souvenir

merchandise” (AA-2, AA-14 and AA-19). The Court of

Appeals concurred, repeatedly referring to rights to

market Presley “memorabilia”. (C-2, C-3, C-14, and

C-15).

B. Since Petitioners Have Presented No Meaningful

Distinctions Between Zacchini and the Instant Case,

Zacchini Controls and the Petition Should Be Denied.

Although even petitioners acknowledge that Zacchini

is the controlling case on the issue before the Court, they

suggest four grounds of distinction between the instant

action and Zacchini. However, it can readily be seen that

no meaningful distinctions exist. Therefore the rationale

of Zacchini mandates a denial of the petition.

Petitioners first argue that in Zacchini a performer’s

“entire act” was appropriated. However, an analysis of

the Court’s opinion indicates that the question of whether

an “entire act” is appropriated is not a workable test,

and that the critical issues are the nature of the use made

and the damage caused by the appropriation. See 91

Harvard L.Rev. 208-214 (1977). Petitioners’ crass com-

mercial exploitation of Presley’s right of publicity and

the damage caused thereby are clearly prohibited by

Zacchini.*

*It is submitted that Zacchini would not have been decided

differently if the television station had instead sold unauthor-

ized souvenir posters of Mr. Zacchini.

== 16

With respect to the second claimed distinction, that

the television station in Zacchini could have arranged its

“own cannonball act”, it is just as evident that petitioners

could have arranged for their own guitar player or singer

on a souvenir poster rather than Elvis Presley, with

respect to whom they have no rights.

Petitioners’ third contention, that this case differs

from Zacchini because in the latter the appropriation re-

lated to the very activity by which the entertainer ac-

quired his reputation, is also misplaced. The record is

clear that Elvis Presley earned a substantial amount of

money from licensing the use of his name and likeness

on souvenir merchandise during his lifetime (AA-4).

Zacchim does not hold that the appropriated activity

need be the entertainer’s primary activity. For example,

although the primary activity of a baseball player is

playing ball, part of his income may well come from

selling the right to use his name and likeness (see Hae-

lan, supra).

Finally, petitioners contend that Zacchini did not in-

volve a prior restraint whereas the instant case does.

The cases cited by petitioners for this proposition involve

the imposition of restraints prior to a hearing. In the

instant case, there was a full hearing and petitioners

were afforded an opportunity to present evidence and

conduct discovery prior to the issuance of any injunction.

More importantly, if petitioners are correct, the absence

of injunctive relief in the face of an unwarranted com-

mercial appropriation of an entertainer’s right of pub-

licity would totally emasculate the right of publicity.

Thus, since it is apparent that the four grounds of dis-

tinction asserted by petitioners are inapplicable, Zacchini

is controlling and the petition must be denied.

—_ oe

C. The Paulsen and Current Audio Opinions Relied

Upon By Petitioners Are Consistent with Zacchini

and the Decisions Below.

Despite the clear holding of Zacchini, petitioners none-

theless argue that their activities are privileged and that

their so-called “memorial poster” is protected as a “news-

worthy” exception to the “right of publicity” — an excep-

tion which they claim is established under New York law

by two state trial court decisions rendered long before

Zacchini, Paulsen v. Personality Posters, Inc., 59 Mise.

2d 444, 299 N.Y.S.2d 501 (Sup. Ct. 1968) and Current

Audio, Inc. v. RCA Corporation, 71 Mise.2d 831, 337

N.Y.S.2d 949 (Sup. Ct. 1972). They assert that Paulsen

considered the right of publicity and found that it did

not apply to the sale of posters, particularly posters “in

conjunction with the dissemination of news or public

interest presentations” (petition, pp. 6-7). They infer

that Current Audio affirmed the holding in the Paulsen

case exempting the use of the name or likeness of a

famous individual commemorating a newsworthy event

(petition, pp. 7-8).

Not only is the continuing vitality of Paulsen and Cur-

rent Audio doubtful in the wake of the Zacchini decision,

but we submit that petitioners’ activities are not privi-

leged as legitimate news and, further, that petitioners’

arguments do violence to the holdings of Paulsen and

Current Audio. Those cases afford them neither comfort

nor protection.

In Paulsen, a well known entertainer entered the 1968

Presidential race as the “STAG” party candidate. He

brought his “right of privacy” action solely under Sec-

tion 51 of the New York Civil Rights Law. He sought to

'These decisions of the lowest court of the State of New York

were also rendered on motions rather than upon trial.

— we

enjoin distribution of posters bearing his likeness with

the notation “For President.” The case was dismissed

by the court. Noting that his candidacy “satirical or

otherwise” had been the subject of comment by communi-

cation media, including a front page news article in the

Wall Street Journal, the court stated:

“Tt is apparently plaintiff’s position that since ‘he is

only kidding’ and his presidential activities are really

only a ‘publicity stunt’ they fall outside the scope of

constitutionally protected matters of public interest.

Such premise is wholly untenable. When a well-known

entertainer enters the presidential ring, tongue in cheek

or otherwise, it is clearly newsworthy and of public

interest. A poster which portrays plaintiff im that role,

and reflects the spirit in which he approaches said role,

is a form of public interest presentation to which pro-

tection must be extended.” 299 N.Y.S.2d at 507 (empha-

sis added).

Thus, Paulsen involved a Presidential election —a

uniquely newsworthy event given the broadest possible

First Amendment protection. Indeed, the significant

First Amendment questions and the issues of satire

raised by Paulsen have resulted in that case being limited

to its “unique facts” by the very court that decided it.

See Rosemont Enterprises, Inc. v. Urban Systems, Inc.,

72 Mise. 2d 788, 340 N.Y.S.2d 144 (1973). See also

Groucho Marx Productions, Inc. v. Playboy Enterprises,

Inc. (No. 77-1782, S.D.N.Y., filed December 30, 1977).

In Current Audio the court correctly concluded that

Elvis Presley’s appearance at a press conference was not

part of the exercise of his “right of publicity” (which was

accorded express recognition) and that, in effect, his

statements at the press conference were intended as

= a

news and were freely available for that purpose.* In

support of its holding, the court opined that: “A press

conference stands as the very symbol of a free and open

press...” Accordingly, it refused to enjoin defendant

from marketing a magazine which included a phonograph

recording of a portion of Presley’s press conference. No

suggestion can reasonably be made by petitioners that

celebrity souvenir posters stand as the very symbol of

a free and open press.

Most significantly, the so-called memorial poster is

simply not a genuine attempt to convey news. The addi-

tion of the words “In Memory . . . 1935-1977” to Mr.

Presley’s picture is a mere subterfuge — a disingenuous

and transparent effort to “appropriate the benefit of [Mr.

Presley’s] publicity for a private use... .” Zacchini,

supra, 97 §.Ct. at 2860, Stevens, J. dissenting.

Thus, it is submitted that the District Court below

properly held that “there is no constitutional protection

for selling posters of Elvis Presley as Elvis Presley”

(AA-12), that the Court of Appeals properly held that

petitioner Pro Arts’ insertion of the legend “In Memory”

did not place “its poster in the same category as one

picturing a presidential candidate, albeit a mock candi-

date” and therefore its poster “was not privileged as

celebrating a newsworthy event” (C-15) and that both

courts correctly rejected petitioners’ specious privilege

argument.

®In that case, decided several years prior to Zacchini, the court

refused to enjoin a magazine from publishing in 2+ iy

record form excerpts from a press conference held by Mr. Pres-

ley on the grounds that his appearance at the press conference

had made words “newsworthy” and a matter of “public

interest”, thereby investing others with the constitutional right

to disseminate his words. In contrast, respondents are not seek-

ing to enjoin the dissemination of news and the petitioners here

can make no legitimate claim that they are disseminating news.

News of Presley’s death and subsequent events were fully re-

ported by the media. Respondents seek only to preserve the

exclusivity of their rights which petitioners have crassly mis-

appropriated for commercial profit.

— eS

2. NO QUESTIONS RAISED BY PETITIONERS IN

THE INSTANT CASE WERE LEFT UNAN.

SWERED IN ZACCHINI.

Even under the analysis suggested by Justices Powell,

Brennan and Marshall in their dissent in Zacchini, the

same result reached by the majority in Zacchini would be

mandated in the instant case. In balancing an enter-

tainer’s right of publicity and the public’s First Amend-

ment rights, the dissent stated that an entertainer, hav-

ing made a matter public, could not “consistently with

the First Amendment, complain of routine news repori-

age.” (emphasis added). Whatever else petitioners

might argue, they would be hard pressed to suggest that

their mass merchandised sale of their celebrity souvenir

poster constitutes “routine news reportage”.

The dissent also stated that it would have held that

“When a film is used ... for a routine portion of a

regular news program, ...the First Amendment [would]

protect the station from a ‘right of publicity’ or ‘appro-

priation’ suit, absent a strong showing by the plaintiff

that the news broadcast was a subterfuge or cover for

private or commercial exploitation.” (emphasis added).

As previously discussed, petitioners’ merchandising of

celebrity souvenir posters is in no sense tantamount to “a

routine portion of a regular news program”. Moreover,

in the instant case petitioners’ intention to engage in

private commercial exploitation is unquestioned ; the only

subterfuge is the disingenuous argument advanced in the

petition that the poster carries a “newsworthy” message

of public interest.

ed

a

38. THE INJUNCTION ENTERED AGAINST PETI-

TIONERS IS SUFFICIENTLY NARROW TO RE-

STRAIN PETITIONERS WITHOUT ANY ABRO-

GATION OF FIRST AMENDMENT RIGHTS.

As has been demonstrated above, petitioners’ assertion

that their celebrity personality poster, which colistitutes

nothing more than souvenir merchandise, is entitled to

First Amendment protection is without support in law or

fact. Accordingly, petitioners’ contention that the in-

junction entered against them is impermissibly overbroad

is baseless.

Petitioners intentionally seek to confuse the issue when

they state that “the injunction here . . . mandates blanket

suppression of all future uses of the Elvis Presley name,

likeness, or image...” (petition, p. 19). In fact, peti-

tioners have merely been enjoined from manufacturing,

distributing, or selling posters identical or similar to the

offending commercial celebrity poster or utilizing for

commercial profit the name, image or likeness of Elvis

Presley. No prohibition against the use of Presley’s

name, likeness or image has been imposed upon, or sought

by respondents with respect to, any news or informa-

tional coverage, whether in magazines, newspapers, tele-

vision programs, books or other media relating to Elvis

Presley’s life or death.

The entry of the preliminary injunction in this action,

contrary to petitioners’ claim, has had absolutely no

chilling or dampening effect on members of the communi-

cations media with respect to the use of Presley’s name,

image or likeness. To the contrary, the fact of Presley’s

death, which is the only arguably “newsworthy” item

conveyed by petitioners’ poster, has been communicated

to the public ad nauseum by every organ of the communi-

cations media. The terms of the injunction restrain only

petitioners and only msofar as such use is for commercial

profit. Such an injunction is surely sufficiently limited to

= i

protect respondents’ rights without impinging upon any

First Amendment rights of petitioners or any other

person.

CONCLUSION

It is respectfully submitted that for all the foregoing

reasons, the petition for writ of certiorari should be

denied.

Respectfully submitted,

MicHakt C, SILBERBERG

645 Fifth Avenue

New York, New York 10022

(212) 935-9800

ARTHUR FIELDS AND

Epwarp A. Woops

9401 Wilshire Boulevard

Ninth Floor

Beverly Hills, California 90212

(213) 273-6333

Attorneys for Respondents

AA-1

APPENDIX AA

Opinion of the District Court

UNITED STATES DISTRICT COURT

Southern District of New York

No. 77 Civ. 4400 (CHT)

Oct. 12, 1977

—--—--

Factors Erc., Ino. anp Boxcar Enterprises, Ino.,

Plaintiff's,

vs.

Creative Carp Company, THE PostermMat Ino., Spec.

Carp & Girt Matt, Ino., anp THE Carp CENTER,

Defendants.

AA-2

APPENDIX AA,

Opinion of the District Court

Factors Erc., Inc. anp Boxcar ENTERPRISES, INC.,

Plaintiffs,

vs.

Creative Carp Company, THE PosterMar Inc., SPECIAL

Carp & Girt Matt, Inc., anp THE Carp CENTER,

Defendants.

No. 77 Civ. 4400 (CHT).

United States District Court,

S. D. New York.

Oct. 12, 1977.

OPINION

TENNEY, District Judge.

Plaintiffs have moved this Court for a preliminary in-

junction pursuant to Rule 65 of the Federal Rules of

Civil Procedure (“Rules”) to restrain defendant Creative

Card Company from the manufacture, distribution and

sale of any poster or other commercially exploitive souve-

nir merchandise bearing the likeness of the late enter-

tainer Elvis Presley. Plaintiffs claim possession of an

exclusive right to that activity, based on a “right of

publicity” assigned by Elvis Presley in life. Defendant

Creative Card Company, an Illinois corporation, disputes

the existence and assignment of this right, and has also

moved for dismissal under Rule 12(b) on the grounds

of lack of personal jurisdiction and/or improper venue

in the Southern District of New York. The Court has

determined that it has jurisdiction over defendant Cre-

ative Card Company and that venue is properly laid here.

—

te =

AA-3

Accordingly, the motion to dismiss under Rule 12(b) is

denied. In addition, by the tests for preliminary relief

articulated in this circuit, I conclude that plaintiffs have

made “a clear showing of . . . probable success on the

merits and possible irreparable injury.” Sonesta Inter-

national Hotels Corp. v. Wellington Associates, 483 F.2d

247, 250 (2d Cir. 1973) (emphasis in the original). There-

fore, plaintiffs’ motion under Rule 65 is granted. The

reasons for the Court’s conclusions are set forth below.

THE FACTS

On August 16, 1977, Elvis Presley, without doubt a

world famous celebrity-entertainer, died at the age of

forty-two. During life his professional career and the

commercial exploitation of his person were managed

exclusively by “Colonel” Tom Parker,’ as demonstrated

by the deposition of Col. Parker begun on September 30,

1977 and continued on October 1, 1977, and the docu-

ments appended thereto. On March 26, 1956, Presley and

Parker entered into a written management contract

which, although it does not specifically allude to souvenir

merchandise, authorizes Parker to act exclusively for

Presley “in any and all fields of public and private enter-

tainment . . . embracing any and all branches thereof

now known or hereafter coming into existence.” Plain-

tiffs’ Supplemental Memorandum, Exhibit C. However,

that items of merchandise were clearly contemplated by

the parties becomes apparent in later agreements includ-

ing, inter alia, one concluded a few months later among

Parker, Presley and a Mr. Saperstein of Special Projects,

Inc., a merchandising company. Id., Exhibit D. The

Special Projects organization was made “exclusive agent”

for a period of time to license other firms “in connection

1Col. Parker acknowledges that his title is of the Southern rather

than the military variety in his deposition, September 30, 1977,

page 4, line 27.

AA-4

with the sale, marketing and exploitation of consumer

items.” Id.

All manner of merchandise was thereafter covered by

numerous licensing agreements with sub-licensees. E. g.,

id., Exhibits E, F & G. Although these and the Special

Projects agreement, supra, refer to the late 1950’s, an

early period in the Presley career, a subsequent merchan-

dising agreement between Presley and Parker, the latter

doing business as “All Star Shows,” dated May 25, 1963,

id., Exhibit H, refers to the production of and distribu-

tion of profits from “Merchandising — Special Souvenir

Folios and Pictures.” Later signed agreements between

Parker and Presley specifically allude to “merchandising

agreement[s].” The last of these is dated January 22,

1976. Id., Exhibits I & J.

Plaintiff Boxcar Enterprises, Inc. (“Boxcar”) entered

into the Presley-Parker relationship as a corporation

formed in January 1974. The Court does not have before

it the certificate of incorporation, but Col. Parker has

testified that he owned 56% of the shares and that Presley

and one Tom Diskin, President of Boxcar, each owned

22%. Parker Depos. at 49, lines 21-26. There is, from

this point on, some confusion as to which entity — Boxcar

or Col. Parker doing business as All Star — handled mer-

chandising, but there are numerous exhibits of checks

issued from Boxcar to Elvis Presley bearing such nota-

tions as “For Royalty Earnings From Sales of Elvis

Presley Souvenir Material On Tour June 25th through

July 5th, 1976 as per contractual agreement.” Plaintiffs’

Supp. Mem. Exhibit L. (Further checks and royalty

statements from Boxcar to the Elvis Presley Estate have

also been submitted. Id. Exhibit L.) On August 18, 1977,

two days after the entertainer’s death, plaintiff Boxcar

entered into an agreement with plaintiff Factors Etc.,

Inc. (“Factors”) which purported to afford the latter an

exclusive license to use the Presley likeness in connection

AA-5

with all souvenir merchandise. Complaint, Exhibit A.

On August 24, 1977, Vernon Presley, father of the de-

ceased and executor of his estate, agreed to a royalty

arrangement with Boxcar as “Merchandising Represen-

tatives fer the Elvis Presley Estate.” Plaintiffs’ Supp.

Mem. Exhibit N. Vernon Presley also wrote te Col.

Parker on August 23, 1977 asking Col. Parker to “carry

on according to the same terms and conditions as stated

in the contractual agreement you had with Elvis dated

January 22, 1976.” Id., Exhibit M.

DEFENDANT'S POSITION

Defendant argues along several lines, the most ger-

mane of which are: (1) that plaintiff Boxcar never ac-

quired the exclusive right to merchandise the Presley

name and image; (2) that even if Boxcar did have such

a right in Presley’s lifetime, that right died with the

entertainer; (3) that this Court has no jurisdiction of

defendant and/or venue is improperly laid here. Al-

though the Court would normally dispose of the proce-

dural questions of jurisdiction and venue before moving

to the substantive issues, in this particular case the latter

must be considered first because the procedural issues

depend on a clear definition of the applicable substantive

rights.

THE MERITS

The Presley/Parker/Boxcar/Factors Relationship

It is hornbook law that where there is ambiguity in a

contract the intent of the parties may be ascertained by

reference to their subsequent course of conduct. Gordon

v. Vincent Youmans, Inc., 358 F.2d 261 (2d Cir. 1965) ;

Portsmouth Baseball Corp. v. Frick, 278 F.2d 395 (2d

Cir.), cert. denied, 364 U.S. 831, 81 S.Ct. 71, 5 L.Ed.2d 58

(1960) ; 1 Corbin, Contracts § 101 (1964). For more than

twenty years, Elvis Presley and Col. Parker had a work-

AA-6

ing relationship where the division of labor was appar-

ent: one performed, the other promoted. If some of the

documents memorializing this activity are less artful

than those which some professional counsel can draft,

they are no less valid. Defendant points to inconsisten-

cies in the statements of Col. Parker and others as to

who held the right to “merchandise” the Presley image

during his lifetime — Presley himself, Parker, or, eventu-

ally, Boxcar. In view of the Parker-Presley agreements,

the uncontested allegation that Presley himself was a

22% shareholder of Boxcar and the fact that Boxcar paid

royalties to Elvis Presley for souvenir merchandise sold,

it seems clear enough, at least for purposes of a prelim-

inary injunction, that Presley gave Parker leave to ex-

ploit his image through merchandise and that Boxcar

was, in recent years, the vehicle through which such

merchandising was carried on. Defendant’s allusions to

defective links in the chain of title in Boxcar, Defendant’s

Mem. in Oppos. 15-18, lose sight of the true facts: these

entities involved the same people. With the exception of

Diskin they had been doing business together for twenty

years.* None of the parties to the Presley-Parker busi-

ness relationship appears to have been dissatisfied. Ver-

non Presley stated on CBS television on October 3, 1977:

“Colonel Parker is an honest man. And I think that’s

where the big organization and the big togetherness

comes, you know. Once you find out you don’t have to

worry about a guy being your manager, what he can do for

you, he handles it. You do the show. Everything works

fine.” Plaintiffs’ Supp. Mem. at 4. The Court takes note

of the fact that these remarks were represented as having

been recorded prior to Presley’s death.

? Defendant has no standing to attack the administration of Box-

car's financial affairs or to raise inferences of self-dealing; that

is the province of the state of incorporation in a quo warranto

proceeding. American Co-op Serum Association v. Anchor Serum

Co., 153 F.2d 907 (7th Cir.), cert. denied, 329 U.S. 721, 67

S.Ct. 57, 91 L.Ed. 625 (1946).

a NT mT TT

AA-7

The Right of Publicity

By far the most interesting issue in this case is whether

Boxcar had anything to transfer to Factors when it en-

tered into the August 18, 1977 “exclusive licensing” con-

tract. After consulting the case law and certain commen-

taries in this field, e. g., Gordon, Right of Property in

Name, Likeness, Personality and History, 55 Nw.U.L.

Rev. 553 (1960) ; Nimmer, The Right of Publicity, 19 Law

& Contemp. Probl. 203 (1954); Note, The Right of Pub-

licity — Protection for Public Figures and Celebrities,

42 Brooklyn L.Rev. 527 (1976), I have concluded that it

did. It appears that a recognized property right, the

“right of publicity,” inhered in and was exercised by

Elvis Presley in his lifetime, that it was assignable by

him and was so assigned, that it survived his death and

was capable of further assignment.

The “right of publicity” is not a new concept, but, to

the detriment of legal clarity, it has often been discussed

only under the rubric “right of privacy.” It is said that

the right of privacy embraces “four distinct kinds of

invasion of four different interests of the plaintiff, which

are tied together by the common name, but otherwise

have almost nothing in common except that each repre-

sents an interference with the right of the plaintiff ‘to be

let alone.’”” W. Prosser, Torts 804 (4th ed. 1971) (empha-

sis added). It is this language which is at the root of the

conceptual difficulty in the “right of publicity” area. Dean

Prosser recognized that the fourth species of right of

privacy tort, i. e., the appropriation of plaintiff’s name or

likeness for defendant’s benefit, is distinct from “intru-

sion upon the plaintiff’s physical solitude or seclusion,”

“public disclosure of private facts,” or “false light in the

public eye,” id. at 807, 809, 812, in that “appropriation”

is the only one which “involves a use for the defendant’s

advantage.” Id. at 814. However, Prosser has failed to

discuss the fact that appropriation of plaintiff’s name

AA-8

and likeness for defendant’s financial advantage has dif-

ferent consequences in a case where the celebrity himself

has attempted to commercialize his own name and face.

It is evident that courts address intrusions on feelings,

reputation and privacy only when an individual has

elected not to engage in personal commercialization. By

contrast, when a “persona” is in effect a product, and

when that product has already been marketed to good

advantage, the appropriation by another of that valuable

property has more to do with unfair competition than it

does with the right to be left alone. See Ettore v. Philco

Television Broadcasting Corp., 229 F.2d 481, 490 (3d Cir.

1956) ; Uhlaender v. Henricksen, 316 F.Supp. 1277, 1282

(D.Minn. 1970).

This distinction was recognized recently in the United

States Supreme Court. Zacchini v. Scripps-Howard

Broadcasting Co., 433 U.S. 562, 97 S.Ct. 2849, 53 L.Ed.2d

965 (1977). A television station had broadcast plaintiff’s

15-second “human cannonball” act in its entirety and, in

response to plaintiff’s suit for invasion of his “right of

publicity,” claimed the first amendment privilege to re-

port newsworthy events. The constitutional argument

was persuasive to the Ohio Supreme Court, but the

United States Supreme Court reversed. In its discussion

the Zacchini Court stated:

“(T]he State’s interest in permitting a ‘right of publi-

city’ is in protecting the proprietary interest of the

individual in his act in part to encourage such enter-

tainment. As we later note, the State’s in/erest 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. . . . An entertainer

such as petitioner usually has no objection to the wide-

spread publication of his act so long as he gets the

commercial benefit of such publication.

* . e

AA-9

“<The rationale for [protecting the right of publicity]

is the straightforward one of preventing unjust enrich-

ment by the theft of good will. No social prrpose is

served by having the defendant get for free some as-

pect of the plaintiff that would have market value and

for which he would normally pay.’ Kalven, Privacy

in Tort Law — Were Warren and Brandeis Wrong’,

31 Law and Contemporary Problems, 326, 331 (1966).”

Id. at 573-576, 97 S.Ct. at 2856-57 (footnote omitted).®

This circuit was in the vanguard in recognizing the

right of publicity and its assignability. In Haelan Labo-

ratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866

(2d Cir.), cert. denied, 346 U.S. 816, 74 S.Ct. 26, 98 L.Ed.

343 (1953), plaintiff manufacturer held a baseball play-

er’s exclusive product endorsement contract and sued a

rival manufacturer for infringement. In finding for the

plaintiff, the court stated:

“We think that, in addition to and independent of that

right of privacy (which in New York derives from

statute), a man has a right to the publicity value of his

photograph, i. e., the right to grant the exclusive privi-

lege of publishing his picture, and that such a grant

may validly be made ‘in gross,’ i. e., without an accom-

panying transfer of a business or of anything else.

Whether it be labelled a ‘property’ right is immate-

’While the Court stated that the facts in Zacchini present

“what may be the strongest case for a ‘right of publicity’ —

involving not the appropriation of an entertainer’s reputation

to enhance the attractiveness of a commercial uct, but

the appropriation of the very activity by mw the enter-

tainer acquired his reputation in the first place,” id.,

instant action does not —— the Presley name or his fact

enhancing a product — Presley is the product. Furthermore, it

is not unreasonable to conclude that Elvis Presley’s act included

the totality of his a — performance, image and name. At

the very least the 1 ree neyo ase

performer having a high market value, as evidenced by the

competition which has given rise to this case.

AA-10

“This right might be called a ‘right of publicity.’ .. .”

Id. at 868.

More recent decisions have clearly labelled the “right

of publicity” a species of “property.” Cepeda v. Swift &

Co., 415 F.2d 1205 (8th Cir. 1969); Price v. Hal Roach

Studios, Inc., 400 F.Supp. 836 (S.D.N.Y.1975) ; Sharman

v. C. Schmidt @ Sons, Inc., 216 F.Supp. 401 (E.D.Pa.

1963) ; cf. Ettore v. Philco Television Broadcasting Corp.,

supra; O’Brien v. Pabst Sales Co., 124 F.2d 167 (5th Cir.

1941), cert. denied, 315 U.S. 823, 62 S.Ct. 917, 86 L.Ed.

1220 (1942) ; id. at 170-71 (Holmes, J., dissenting) ; Grant

v. Esquire, Inc., 367 F.Supp. 876 (S.D.N.Y.1973).

Price v. Hal Roach Studios, Inc., supra, a case decided

in this district, is particularly interesting because it is the

only reported decision known to this Court where the

right of publicity was deemed descendible. In that case

the widows of Stan Laurel and Oliver Hardy and another

party claiming the right to exploit the Laurel and Hardy

image through merchandise sued to restrain defendants

from infringing on that right. Plaintiffs set up the exclu-

sivity of a prior contract covering commercial merchan-

dise which had been entered into by Stan Laurel, Hardy’s

widow, and the plaintiff licensee. Although there was no

evidence to show that the comedians had ever exploited

their own personalities through merchandising efforts,

the Price court, relying on the distinction between a per-

sonal right of privacy which is extinguished at death and

a valuable, alienable property right in name and image,

i. e., the “right of publicity,” asked “what policy should

operate to cut off this [latter] right at death?” 400 F.

Supp. at 844. The Price court could find none, and on the

much stronger facts here presented, this Court adopts

that view. There is no reason why the valuable right of

publicity — clearly exercised by and financially benefit-

ing Elvis Presley in life — should not descend at death

like any other intangible property right.

AA-11

One of the cases upon which defendant relies is thus

easily distinguishable. In Guglielmi v. Spelling-Goldberg

Prods., 140 Cal.Rptr. 775 (Cal.Ct.App., 2d App.Dist.

1977), the heir of Rudolph Valentino laid exclusive claim

to the actor’s surviving right of publicity and protested

the contents of a Valentino biography produced by de-

fendants. Although the court determined that biographi-

cal material about Valentino was protectible under the

first amendment (a conclusion with which this Court

agrees) and that the right-of-publicity action was merely

a ploy for bringing an otherwise impermissible defama-

tion action, the court nevertheless addressed the right-of-

publicity claim:

“[ We hold that the right to exploit name and likeness

is personal to the artist; if not exploited by him during

his life, his name and likeness may be used by another

without liability....” Id. at 779 (emphasis added).

Although the facts of this case dictate a different out-

come, this Court’s legal conclusion is in complete harmony

with the holding in the Guglielmi case: Elvis Presley did

in life actively exploit protectible commercial rights

which defendant here seeks to invade.‘

The other cases cited by defendants are far off the

mark. Paulsen v. Personality Posters, Inc., 59 Misc.2d

‘Defendant relied as well on another California case in which the

heirs of Bela Lugosi asserted a right-of-publicity claim based on

the actor’s image as Dracula. Examination of the intermediate

appellate opinion in that case reveals that while plaintiff was

denied relief on the facts — emt 3 at trial} , the court

recognized a right of publicity, provided it was actively ex-

ploited by the celebrity in life. However, the California Su-

preme Court has now accepted the case for hearing, Lugosi v.

Universal Pictures, Cal.App. 139 Cal.Rptr. 35 (1977), and that

procedural step operates to render the intermediate appellate

opinion a nullity, having no force or effect as a judgment or

er as a statement of legal principle. Knouse v. Nimocks,

8 Cal.2d 482, 66 P.2d 438 (1937). Therefore, the intermediate

appellate opinion cannot be considered, either by defendant

which relies on it, or by this Court, which can distinguish it.

AA-12

444, 299 N.Y.S.2d 501 (Sup.Ct.1968), involved a comedian

who thrust himself into a political campaign as a bogus

presidential candidate and whose picture in that guise

was widely circulated as a poster. The case appears to

have been decided in favor of the unlicensed poster man-

ufacturer because Paulsen’s choice of the political arena

for satire made him “newsworthy” in the first amendment

sense.© There is no constitutional protection for selling

posters of Elvis Presley as Elvis Presley.

Finally, defendants cite Maritote v. Desilu Productions,

Inc., 230 F.Supp. 721 (N.D. Ill. 1964), aff’d, 345 F.2d 418

(7th Cir.), cert. denied, 382 U.S. 883, 86 S.Ct. 176, 15

L.Ed.2d 124 (1965), where the widow and son of Al

Capone sued the producers of a television series which

depicted Capone in dozens of episodes, purported to

quote him in conversation and so on. Both the trial court

and the appellate court in Maritote refused to consider

the claim of “unjust enrichment” advanced by plaintiffs, a

claim which may be construed as a poorly articulated

“right of publicity” assertion. In the opinion of this

Court, the decision against plaintiffs was quite correctly

taken in that any “right of privacy” died with Al Capone

and could not thereafter be invaded. Furthermore, there

could be no valid, surviving claim based on a right of

publicity as this Court construes it. Whatever else Al

Capone was doing in life, he was not trying to create an

image with widespread commercial appeal.

On the basis of the foregoing, the Court concludes that

the facts of the instant case demonstrate a strong like-

lihood that plaintiffs will prevail on the merits at trial.

’The Paulsen case was held — to its facts” only a few years

later by Rosemont Enterprises, Inc. v. Urban Systems, Inc., 72

Misc.2d 788, 340 N.Y.S.2d 144 (Sup.Ct.), modified, 42 A.D.2d

544, 345 N.Y.S.2d 17 (1st Dep’t 1973) (impermissible infringe-

ment on an exclusive license to exploit the name and spistaealliny

of Howard Hughes).

AA-13

Irreparable Harm

Having satisfied one of the Sonesta mandates, 1. e.,

that a preliminary injunction may not issue absent prob-

able success on the merits, the Court must address the

second aspect of that test: whether plaintiff is exposed

to possible irreparable injury. The market for Presley

memorabilia has been described by defense counsel in the

companion action to this one, Factors Etc., Inc. v. Pro

Arts, Inc., D.C., 444 F.Supp. 288 (CHT), as “evanescent,”

and while the Court will not ascribe to one defendant the

opinion of another, the word is probably apt. Further-

more, while defendant in this case has suggested that it

is easily capable of responding in damages, using as a

measure the number of allegedly infringing Elvis Presley

posters that it sells during the period of litigation on the

merits, this argument assumes that any consumer bent on

acquiring an Elvis Presley poster will, if plaintiffs’ sim-

ilar merchandise is not before him, purchase defendant’s

merchandise rather than abandon the whole project.

Suffice it to say that the vagaries of consumer buying are

such that proof of damages would be extremely difficult.

See Omega Importing Corp. v. Petri-Kine Camera Co.,

451 F.2d 1190 (2d Cir. 1971).

However, the Court need not determine possible irrep-

arable damage by speculating on the caprice of the con-

sumer market. Plaintiff Factors claims that its licensing

program for articles other than posters is jeopardized by

its inability to grant exclusive rights. In support of this

proposition, it submits the affidavit of Daniel H. Lidman,

one of the attorneys representing plaintiffs, whose de-

tailed assertions, apparently made on personal knowl-

edge, reveal that a prominent toy manufacturer with plans

to market an Elvis Presley jigsaw puzzle as a sublicensee

of Factors has already been beaten to the marketplace

by another “unlicensed” manufacturer. The Court con-

AA-14

cludes that there is a rush to capitalize on the Presley

image in this postmortem period,® and that if Factors

has exclusive property rights in the manufacture and

marketing of Presley souvenir merchandise, as it so

appears, then it must be protected at this time.

JURISDICTION

Having identified the right asserted here as “property”

and its infringement as a species of unfair competition,

it is to the law of that tort that the Court looks to deter-

mine the correctness of jurisdiction in this district. Jur-

isdiction is based on diversity of citizenship, 28 U.S.C.

§ 1332, and in a diversity action a federal court must de-

termine a question of personal jurisdiction according to

the laws of the state in which it is sitting. Arrowsmith v.

United Press Int'l, 320 F.2d 219 (2d Cir. 1963) (en banc).

In this case the applicable law is that of New York, spe-

cifically the provision of its “long-arm” statute which

gives New York courts jurisdiction over any nondomicil-

iary who commits “a tortious act within the state.”

N.Y.C.P.L.R. § 302(a)(2). As to the tort of unfair com-

petition “the wrong takes place . . . where the passing

off occurs.” Vanity Fair Mills, Inc. v. T. Eaton Co., 234

F.2d 633, 639 (2d Cir. 1956), cert. denied, 352 U.S. 871,

77 S.Ct. 96, 1 L.Ed.2d 76; see Car-Freshner Corp. v.

Broadway Mfg. Co., 337 F.Supp. 618 (S.D.N.Y.1971) ;

Carter-Wallace, Inc. v. Ever-Dry Corp., 290 F.Supp. 735

(S.D.N.Y.1968). Clearly the Court has jurisdiction over

the defendant on the basis of the sale of its infringing

merchandise in New York.

*The cover of People magazine for October 10, 1977 depicts all

manner of Elvis Presley souvenir merchandise under the head-

line “Remembering Elvis/Imitators, fans & rip-offs launch a

billion dollar industry.”

AA-15

VENUE

Venue in this district is less clear. In a diversity case

venue is covered by 28 U.S.C. § 1391(a), which reads:

“A civil action wherein jurisdiction is founded only

on diversity of citizenship may, except as otherwise

provided by law, be brought only in the judicial dis-

trict where all plaintiffs or all defendants reside, or in

which the claim arose.”

Defendant contends that this district is not “where the

claim arose,” as that phrase has been construed, despite

the fact that its allegedly infringing goods are sold here.

It is true, as defendant asserts and courts have recog-

nized, that in a “transitory” cause of action like the

instant one, where the tort arises at the point of pur-

chase, there is a danger that the “claim arose” language

in section 1391(a) might be construed to permit a plain-

tiff to sue in any district into which the defendant has

shipped infringing goods. In Honda Associates, Inc. v.

Nozawa Trading, Inc., 374 F.Supp. 886, 890 (S.D.N.Y.

1974), a trademark action, the court quite correctly would

not infer any such legislative intent. It therefore framed

the issue thusly: does “ ‘the claim’. . . mean the largest

part of the claim, a substantial part thereof, or any part

thereof”? Because the defendant in Honda had sent only

20 of the allegedly infringing mail order catalogues into

New York in five years and had sold a total of only $37

worth of allegedly infringing goods in New York in four

years, the Honda court concluded that defendant’s con-

tacts with this district, for venue purposes, were “minis-

cule” and that the claim did not “arise” here in the statu-

tory sense. Although it analogized its method to a

“weighing of contacts” analysis used in securities and

antitrust cases, the court in Honda refused to determine

whether “the largest part of the claim” or “a substantial

part thereof” was necessary to support venue, and spe-

cifically rejected a standard by which trademark infringe-

AA-16

ment cases could only be brought where the greatest

volume of infringing actively occurred. Id. at 892.

Other courts have found the Honda “more than min-

iscule contacts” test appropriate for determining venue

in situations similar to that at bar. In Tefal, S.A. v.

Products Int’l Co., 529 F.2d 495 (3d Cir. 1976), the court

found venue proper on the basis of five percent of de-

fendant’s infringing sales having been made in the dis-

trict (although no dollar volume of sales was adduced

in evidence) and because live sales demonstrations had

been conducted .n the district. In Transamerica Corp. v.

Transfer Planning, Inc., 419 F.Supp. 1261 (S.D.N.Y.

1976), venue was held improper where defendant had

never earned a cent from New York sales, had no sales

representative in New York and never sent an employee

or agent into the district for business purposes. Both

cases were decided by the yardstick of the Honda test.

The facts in this case clearly show “more than minis-

cule contact” with this district. By the affidavits of Mr.

Burton Wall, president of defendant Creative Cards, the

sales of that corporation for the year ending July 1977

exceeded seven million dollars, Wall Affidavit, sworn to

September 27, 1977, 24; approximately 10% of that

business (or $700,000 for that period) was in posters,

Wall Affidavit, sworn to October 4, 1977, 13; New York

accounted for 3% of poster sales (which, assuming na-

tionwide sales for defendant’s posters, makes New York,

if not the most substantial market, then certainly not a

miniscule one); and sales of Elvis Presley posters

“through distributors, jobbers and retailers” in New York

accounted for 0.8% of all poster sales for the eight

months ending August 31, 1977. Id.

The jumble of figures may be reduced to this: Creative

Card, through its C/C Sales Division, sold approximately

$7,000 worth of Elvis Presley posters in New York in the

first eight months of 1977. Defendant does not tell us

AA-17

whether any of its other markets for Elvis Presley post-

ers is more substantial than New York. Furthermore,

these figures do not convey whether there was an increase

in demand for Elvis Presley posters in New York after

the entertainer’s death, nor are they enlightening as to

projected sales in New York alone and as compared to

other districts.

Even were this Court to conclude that $7,000 of sales

to the New York public in the first eight months of 1977

is “miniscule” — and such a conclusion cannot be reached

in the absence of evidence demonstrating much greater

sales of that merchandise in other districts — there are

unrefuted allegations in the documents submitted by

plaintiffs which add contacts beyond mere sales and har-

monize the case more closely with Car-Freshner Corp. v.

Broadway Mfg. Co., supra. In that case venue was held

proper in this district where defendant had a sales rep-

resentative in New York and its allegedly infringing

products were sold in many retail outlets in the state.

Plaintiffs allege similar facts here. They have submitted

a sales order placed with David Oestreich, Inc., 225 Fifth

Avenue, New York, N.Y. 10010, covering the purchase

of six dozen of defendant’s Elvis Presley posters. In the

order form space marked “Factory Represented” is writ-

ten “C & C Sales” (sic). Rohner Affidavit, sworn to

October 4, 1977, Exhibit B. Defendant’s poster is ap-

purently being sold in New York through the Woolworth

chain. Adler Affidavit, sworn to October 4, 1977, 3. In

addition, plaintiffs initially joined several other retail

outlets in this action, all of whom were purportedly

selling defendant’s poster. Rohner Affidavit, sworn to

September 1, 1977, ff 4-7. (These named defendants have

apparently defaulted.) Finally, plaintiffs have submitted

the catalog from the New York Gift Show held August

14-19, 1977. Rohner Affidavit, sworn to October 4, 1977,

Exhibit C. The catalog identifies both Creative Card

Company and David Oéestreich, Inc. as _ exhibitors

AA-18

and, on the David Oestreich, Inc. descriptive page,

states that Oestreich is “represented by” one Bill Dustin,

who plaintiffs allege is connected with defendant Crea-

tive Card. Id. {4. Defendant acknowledges that Bill

Dustin is “an employee of C/C Division of Creative

Card.” Wall Affidavit, sworn to September 21, 1977, { 16.

The Court is satisfied that on the facts presented venue

is fairly laid in this district. Before leaving the subject,

however, it is necessary to address defendant’s general

argument against venue here. Creative Card states that

it does all of its sales through independent distributors,

jobbers or retailers in New York whose only contacts

with the Illinois corporation are by phone or mail; that it

is these independent entities who sell the allegedly in-

fringing goods in the New York market; that Creative

Card ships f. o. b. Chicago with the result that title to the

goods passes in Illinois. Wall Affidavit, sworn to October

4, 1977, {[ 2-9. A fortiori, the argument goes, defendant

has no “contacts” with this district in the venue sense

and therefore the instant suit “could and should” have

been brought in the Northern District of Illinois. De-

fendant’s Mem. 41. The evil in this contention is the

converse of that addressed in Honda, where the concern

was that a too-broad interpretation of “where the claim

arose” could expose a multi-state tortfeasor to suit in any

forum. Were the Court to accept the defendant’s argu-

ment that the structure of its business insulates it from

suit anywhere except in its resident forum, it would be

sanctioning a construction of section 1391(a) that gives

plaintiff no choice at all in a multi-state tort, and it would

be impermissibly cancelling the words “where the claim

arose” from that statute. This cannot be done.

CONCLUSION

Based on the foregoing analysis, defendant’s motion

to dismiss the instant claim for want of personal juris-

AA-19

diction and/or improper venue under Rule 12(b) is de-

nied, and plaintiffs’ request for preliminary relief pur-

suant to Rule 65 is granted. Defendant Creative Card

Company will be enjoined from manufacturing, distribu-

ting, selling or by any other means profiting from souve-

nir merchandise bearing the name or likeness of the late

Elvis Presley until the merits of the case are determined.

Order is being filed simultaneously herewith.

AA-20

CERTIFICATE OF SERVICE

I, Edward A. Woods, one of the attorneys for re-

spondents, hereby certify that on the 3lst day of January,

1979, I served a true and correct copy of the foregoing

Respondents’ Brief in Opposition upon George Berger

and Gregory W. Happ, attorneys for petitioners, by send-

ing copies by guaranteed Express Mail, postage prepaid,

addressed to George Berger, Esq., Phillips, Nizer, Ben-

jamin, Krim & Ballon, 40 West 57th Street, New York,

New York 10019 and Gregory W. Happ, Esq., 238 West

Liberty, Medina, Ohio 44256, their last known respective

addresses.

Edward A. Woods