                                     PUBLISH

                   UNITED STATES COURT OF APPEALS
Filed 8/27/96
                               TENTH CIRCUIT



 CARDTOONS, L.C., an Oklahoma
 Limited Liability Company,

             Plaintiff - Appellee,

       v.                                               No. 95-5006

 MAJOR LEAGUE BASEBALL
 PLAYERS ASSOCIATION, an
 unincorporated association,

           Defendant - Appellant.
 _______________

 First Amendment Publishing, Inc.,
 Joseph Mauro, pro se,

             Amicus Curiae.


        APPEAL FROM THE UNITED STATES DISTRICT COURT
          FOR THE NORTHERN DISTRICT OF OKLAHOMA
                     (D. Ct. No. 93-C-576-E)


Russell S. Jones, Jr. (William E. Quirk with him on the briefs), Shughart,
Thomson & Kilroy, Kansas City, Missouri, appearing for the Appellant.

James W. Tilly (Keith A. Ward with him on the brief), Tilly & Ward, Tulsa,
Oklahoma, appearing for the Appellee.

Joseph Mauro, pro se, filed an amicus curiae brief for First Amendment
Publishing, Inc.
Before TACHA, LOGAN, and REAVLEY, * Circuit Judges.


TACHA, Circuit Judge.


       Cardtoons, L.C., (“Cardtoons”) brought this action to obtain a declaratory

judgment that its parody trading cards featuring active major league baseball

players do not infringe on the publicity rights of members of the Major League

Baseball Players Association (“MLBPA”). The district court held that the trading

cards constitute expression protected by the First Amendment and therefore read a

parody exception into Oklahoma’s statutory right of publicity. MLBPA appeals,

arguing that (1) the district court lacked jurisdiction to issue a declaratory

judgment and (2) Cardtoons does not have a First Amendment right to market its

trading cards. We exercise jurisdiction pursuant to 28 U.S.C. § 1291. Because

Cardtoons’ First Amendment right to free expression outweighs MLBPA’s

proprietary right of publicity, we affirm.




       The Honorable Thomas M. Reavley, Senior Circuit Judge, United States Court of
       *

Appeals for the Fifth Circuit, sitting by designation.

                                           -2-
I.    Background

      Cardtoons formed in late 1992 to produce parody trading cards featuring

caricatures of major league baseball players. Cardtoons contracted with a

political cartoonist, a sports artist, and a sports author and journalist, who

designed a set of 130 cards. The majority of the cards, 71, have caricatures of

active major league baseball players on the front and humorous commentary about

their careers on the back. The balance of the set is comprised of 20 “Big Bang

Bucks” cards (cartoon drawings of currency with caricatures of the most highly

paid players on the front, yearly salary statistics on the back), 10 “Spectra” cards

(caricatures of active players on the front, nothing on the back), 10 retired player

cards (caricatures of retired players on the front, humorous commentary about

their careers on the back), 11 “Politics in Baseball” cards (cartoons featuring

caricatures of political and sports figures on the front, humorous text on the

back), 7 standing cards (caricatures of team logos on the front, humorous text on

the back), and 1 checklist card. Except for the Spectra cards, the back of each

card bears the Cardtoons logo and the following statement: “Cardtoons baseball is

a parody and is NOT licensed by Major League Baseball Properties or Major

League Baseball Players Association.”

      A person reasonably familiar with baseball can readily identify the players

lampooned on the parody trading cards. The cards use similar names,


                                         -3-
recognizable caricatures, distinctive team colors, and commentary about

individual players. For example, the card parodying San Francisco Giants’

outfielder Barry Bonds calls him “Treasury Bonds,” and features a recognizable

caricature of Bonds, complete with earring, tipping a bat boy for a 24 carat gold

“Fort Knoxville Slugger.” The back of the card has a team logo (the “Gents”),

and the following text:

      Redemption qualities and why Treasury Bonds is the league’s most
      valuable player:

      1.     Having Bonds on your team is like having money in the bank.
      2.     He plays so hard he gives 110 percent, compounded daily.
      3.     He turned down the chance to play other sports because he has
             a high interest rate in baseball.
      4.     He deposits the ball in the bleachers.
      5.     He is into male bonding.
      6.     He is a money player.
      7.     He has a 24-karat Gold Glove.
      8.     He always cashes in on the payoff pitch.

      NOTICE: Bonds is not tax-free in all states but is double exempt.

At the end of the 1992 season, Barry Bonds was a two-time winner of the

National League’s Most Valuable Player award, a three-time winner of a Gold

Glove award, and had just signed a six-year contract for $43.75 million, making

him the highest-paid player in baseball. Richard Hoffer, The Importance of Being

Barry: The Giants’ Barry Bonds is the Best Player in the Game Today--Just Ask

Him, Sports Illustrated, May 24, 1993, at 13. No one the least bit familiar with

the game of baseball would mistake Cardtoons’ “Treasury Bonds” for anyone

                                        -4-
other than the Giants’ Barry Bonds. Other caricatures, such as “Ken Spiffy, Jr.”

of the “Mari-Nerds” (Ken Griffey, Jr., of the Seattle Mariners), are equally

identifiable.

      The trading cards ridicule the players using a variety of themes. A number

of the cards, including the “Treasury Bonds” card and all of the Big Bang Bucks

cards, humorously criticize players for their substantial salaries. (The irony of

MLBPA’s counterclaim for profits from the cards is not lost on this panel.) Other

trading cards mock the players’ narcissism, as exemplified by the card featuring

“Egotisticky Henderson” of the “Pathetics,” parodying Ricky Henderson, then of

the Oakland Athletics. The card features a caricature of Henderson raising his

finger in a “number one” sign while patting himself on the back, with the

following text:

      Egotisticky Henderson, accepting the “Me-Me Award” from himself
      at the annual “Egotisticky Henderson Fan Club” banquet, sponsored
      by Egotisticky Henderson:
             “I would just like to thank myself for all I have done. (Pause
      for cheers.) I am the greatest of all time. (Raise arms triumphantly.)
      I love myself. (Pause for more cheers.) I am honored to know me.
      (Pause for louder cheers.) I wish there were two of me so I could
      spend more time with myself. (Wipe tears from eyes.) I couldn’t
      have done it without me. (Remove cap and hold it aloft.) It’s friends
      like me that keep me going. (Wave to crowd and acknowledge
      standing ovation.)

The remainder of the cards poke fun at things such as the players’ names (“Chili

Dog Davis” who “plays the game with relish,” a parody of designated hitter Chili


                                         -5-
Davis), physical characteristics (“Cloud Johnson,” a parody of six-foot-ten-inch

pitcher Randy Johnson), and onfield behavior (a backflipping “Ozzie Myth,” a

parody of shortstop Ozzie Smith).

      The format of the parody trading cards is similar to that of traditional

baseball cards. The cards, printed on cardboard stock measuring 2½ by 3½

inches, have images of players on the front and player information on the back.

Like traditional cards, the parody cards use a variety of special effects, including

foil embossing, stamping, spectra etching, and U-V coating. Cardtoons also takes

advantage of a number of trading card industry techniques to enhance the value of

its cards, such as limiting production, serially numbering cases of the cards, and

randomly inserting subsets and “chase cards” (special trading cards) into the sets.

      After designing its trading cards, Cardtoons contracted with a printer

(Champs Marketing, Inc.) and distributor (TCM Associates) and implemented a

marketing plan. As part of that plan, Cardtoons placed an advertisement in the

May 14, 1993, issue of Sports Collectors Digest. That advertisement tipped off

MLBPA, the defendant in this action, and prompted its attorney to write cease and

desist letters to both Cardtoons and Champs.

      MLBPA is the exclusive collective bargaining agent for all active major

league baseball players, and operates a group licensing program in which it acts

as the assignee of the individual publicity rights of all active players. Since 1966,


                                         -6-
MLBPA has entered into group licensing arrangements for a variety of products,

such as candy bars, cookies, cereals, and, most importantly, baseball trading

cards, which generate over seventy percent of its licensing revenue. MLBPA

receives royalties from these sales and distributes the money to individual players.

      After receiving the cease and desist letter from MLBPA, Champs advised

Cardtoons that it would not print the parody cards until a court of competent

jurisdiction had determined that the cards did not violate MLBPA’ rights.

Cardtoons then filed this suit seeking a declaratory judgment that its cards do not

violate the publicity or other property rights of MLBPA or its members.

Cardtoons also sought damages for tortious interference with its contractual

relationship with Champs, as well as an injunction to prevent MLBPA from

threatening legal action against Champs or other third parties with whom

Cardtoons had contracted concerning the cards. MLBPA moved to dismiss for

lack of subject matter jurisdiction, and counterclaimed for a declaratory judgment,

injunction, and damages for violation of its members’ rights of publicity under

Oklahoma law.

      The district court referred the case to a magistrate, who issued his Report

and Recommendation in favor of MLBPA. The magistrate stated that the parody

cards infringed on MLBPA’s right of publicity and that, under either a trademark

balancing test or a copyright fair use test, Cardtoons did not have a First


                                         -7-
Amendment right to market its cards without a license from MLBPA. The district

court initially adopted the magistrate’s Report and Recommendation, Cardtoons,

L.C. v. Major League Baseball Players Association, 838 F. Supp. 1501 (N.D.

Okla. 1993), but subsequently vacated that decision and issued Cardtoons, L.C. v.

Major League Baseball Players Association, 868 F. Supp. 1266 (N.D. Okla.

1994). In its second opinion, the court wholly rejected application of a trademark

balancing test to the right of publicity, and instead applied a copyright fair use

analysis. Unlike the magistrate, however, the court held that a fair use analysis

requires recognition of a parody exception to the Oklahoma publicity rights

statute, and issued a declaratory judgment in favor of Cardtoons. This appeal

followed.




                                         -8-
II.   Jurisdiction

      MLBPA contends that the district court lacked jurisdiction over this case

because there is no federal question, and because the suit does not involve a case

or controversy. Whether this lawsuit involves a federal question, and whether a

case or controversy exists, are separate inquiries. We turn to these questions

below.

A.    Federal Question Jurisdiction

      MLBPA first contends that the district court lacked federal subject matter

jurisdiction over this case. We review this threshold question de novo. United

States ex rel. General Rock & Sand Corp. v. Chuska Dev. Corp., 55 F.3d 1491,

1492 (10th Cir. 1995). The Declaratory Judgment Act does not confer

jurisdiction upon federal courts, Skelly Oil Co. v. Phillips Petroleum Co., 339

U.S. 667, 671 (1950); Chandler v. O’Bryan, 445 F.2d 1045, 1054 (10th Cir.

1971), cert. denied, 405 U.S. 964 (1972), so the power to issue declaratory

judgments must lie in some independent basis of jurisdiction. Here, in the

absence of any pleading that invokes diversity jurisdiction, the relevant basis is

federal question jurisdiction under 28 U.S.C. § 1331.

      District courts have original federal question jurisdiction over complaints

that contain a claim that arises under federal law. 28 U.S.C. § 1331. In actions

for declaratory judgment, however, the position of the parties is often reversed:


                                        -9-
the plaintiff asserts a defense to an anticipated action by the declaratory judgment

defendant. It is the character of the impending action, not the plaintiff’s defense,

that determines whether there is federal question jurisdiction. Public Serv.

Comm’n v. Wycoff Co., 344 U.S. 237, 248 (1952). Thus, federal question

jurisdiction exists in a declaratory judgment action if the potential suit by the

declaratory judgment defendant would arise under federal law. Mobil Oil Corp.

v. City of Long Beach, 772 F.2d 534, 539-40 (9th Cir. 1985); see Franchise Tax

Bd. v. Construction Laborers Vacation Trust, 463 U.S. 1, 19 & n.19 (1983).

      Accordingly, federal question jurisdiction in this case turns on whether

there would be federal question jurisdiction over the well-pleaded complaint that

MLBPA may bring against Cardtoons. The federal cause of action at issue here is

a claim under section 43(a)(1) of the Lanham Act, which provides civil liability

for any person who uses any “word, term, name, symbol, or device” in connection

with goods or services that is likely to cause confusion “as to the affiliation,

connection, or association of such person with another person, or as to the origin,

sponsorship, or approval of his or her goods, services, or commercial activities by

another person.” 15 U.S.C. § 1125(a)(1). We evaluate the adequacy of the

MLBPA’s federal claim by the same standard that we would use to evaluate

federal question jurisdiction if that claim were actually before us. See Janakes v.

United States Postal Serv., 768 F.2d 1091, 1093-95 (9th Cir. 1985). Dismissal of


                                         - 10 -
a complaint for lack of subject matter jurisdiction would only be justified if “that

claim were ‘so attenuated and unsubstantial as to be absolutely devoid of merit’

or ‘frivolous.’” Baker v. Carr, 369 U.S. 186, 199 (1962) (citations omitted). This

case clearly survives that test: MLBPA could have brought a nonfrivolous

Lanham Act claim against Cardtoons alleging that Cardtoons’ use of the names

and likenesses of major league baseball players on its cards was likely to cause

confusion as to the association of MLBPA with Cardtoons or as to MLBPA’s

approval of the cards. Because MLBPA could have brought a federal Lanham

Act claim as part of a well-pleaded complaint against Cardtoons, the district court

had federal question jurisdiction over this declaratory judgment action.

      Cardtoons maintains, and the district court agreed, that the court also had

jurisdiction over this action because it involves substantial First Amendment

questions. This assertion is incorrect. It is well settled that we look to the nature

of the anticipated claims of the declaratory judgment defendant, not the

anticipated defenses by the declaratory judgment plaintiff, to determine the

presence of a federal question. Wycoff, 344 U.S. at 248. “‘[I]f, but for the

availability of the declaratory judgment procedure, the federal claim would arise

only as a defense to a state created action, jurisdiction is lacking.’” Franchise

Tax Bd., 463 U.S. at 16 (quoting 10A Charles A. Wright et al., Federal Practice

and Procedure § 2767, at 744-45 (2d ed. 1983)). In this case, the First


                                         - 11 -
Amendment arises only as a potential defense to MLBPA’s claimed right:

MLBPA could neither bring an action based on the First Amendment nor assert a

well-pleaded state claim that necessarily involved a First Amendment question.

Thus, we cannot ground our jurisdiction on this basis because “the First

Amendment as a defense does not constitute a basis for federal jurisdiction, for it

is fundamental that anticipation of a defense cannot confer jurisdiction.” Monks

v. Hetherington, 573 F.2d 1164, 1166 (10th Cir. 1978).



B.    The Controversy Requirement

      MLBPA further contends that this suit does not involve a case or

controversy. We review this issue de novo. Federal Express Corp. v. Air Line

Pilots Ass’n, 67 F.3d 961, 964 (D.C. Cir. 1995); see New Mexico Env’t Dep’t v.

Foulston, 4 F.3d 887, 888-89 (10th Cir. 1993), cert. denied, 114 S. Ct. 1372

(1994). Federal courts may only decide cases or controversies, U.S. Const. art.

III, § 2, a requirement that is no less strict in an action for a declaratory judgment

than in any other type of suit, Altvater v. Freeman, 319 U.S. 359, 363 (1943).

Indeed, the requirement is reflected in the Declaratory Judgment Act, which limits

application of the remedy to cases of “actual controversy.” 28 U.S.C. § 2201(a).

      In order to satisfy this threshold requirement, there must be “a real and

substantial controversy admitting of specific relief through a decree of a


                                         - 12 -
conclusive character, as distinguished from an opinion advising what the law

would be upon a hypothetical state of facts.” Aetna Life Ins. Co. v. Haworth, 300

U.S. 227, 241 (1937). In an intellectual property case, an actual controversy

exists when (1) the declaratory plaintiff has produced or is prepared to produce

the product in question and (2) the declaratory defendant’s conduct has created a

reasonable apprehension on the part of the declaratory plaintiff that it will face

suit if it commences or continues the activity at issue. Spectronics Corp. v. H.B.

Fuller Co., 940 F.2d 631, 634 (Fed. Cir.) (patent), cert. denied, 502 U.S. 1013

(1991); Texas v. West Publishing Co., 882 F.2d 171, 175 (5th Cir. 1989)

(copyright), cert. denied, 493 U.S. 1058 (1990); Indium Corp. v. Semi-Alloys,

Inc., 781 F.2d 879, 883 (Fed. Cir. 1985) (trademark), cert. denied, 479 U.S. 820

(1986). The declaratory plaintiff bears the burden of establishing the existence of

a controversy by a preponderance of the evidence. Texas v. West Publishing Co.,

882 F.2d 171, 175 (5th Cir. 1989), cert. denied, 493 U.S. 1058 (1990).

      Cardtoons has carried its burden by establishing both elements of the case

or controversy test. The first element is satisfied because Cardtoons had

completed all work in preparation for production of the cards when it filed its

declaratory judgment complaint. The second element is satisfied by MLBPA’s

cease and desist letter in which it threatened to pursue its “full legal remedies” if

Cardtoons did not immediately stop production and sale of the cards. That letter,


                                         - 13 -
along with MLBPA’s history of suing other card companies in similar situations,

e.g., Major League Baseball Players Ass’n v. Dad’s Kid Corp., 806 F. Supp. 458

(S.D.N.Y. 1992), created a reasonable apprehension on the part of Cardtoons of

impending litigation.

      MLBPA argues that Cardtoons could not have reasonably feared a federal

claim because MLBPA never explicitly threatened to bring a Lanham Act claim.

As discussed above, whether MLBPA’s potential suit could contain a federal

claim is pivotal to our federal question jurisdiction. Whether MLBPA threatened

to bring a federal claim, however, is immaterial to the controversy requirement,

which is satisfied so long as MLBPA’s conduct created a reasonable apprehension

on the part of Cardtoons of the imminence of suit, with state or federal claims,

upon publication. In any event, Cardtoons was reasonably apprehensive of a suit

containing a federal claim given MLBPA’s threat of pursuing its “full legal

remedies” and its previous use of the Lanham Act in similar cases. Thus, the

dispute between Cardtoons and MLBPA satisfies the case or controversy

requirement.




                                        - 14 -
III.   The Merits

       Cardtoons asks for a declaration that it can distribute its parody trading

cards without the consent of MLBPA. There are three steps to our analysis of this

issue. First, we determine whether the cards infringe upon MLBPA’s property

rights as established by either the Lanham Act or Oklahoma’s right of publicity

statute. If so, we then ascertain whether the cards are protected by the First

Amendment. Finally, if both parties have cognizable rights at stake, we proceed

to a final determination of the relative importance of those rights in the context of

this case.



A.     MLBPA’s Property Rights

1.     The Lanham Act

        We begin by determining whether the cards violate MLBPA’s property

rights under the Lanham Act. Section 43(a)(1) of the Lanham Act, 15 U.S.C. §

1125(a)(1), creates a federal remedy for false representations or false designations

of origin used in connection with the sale of a product. The statute provides civil

liability for:

       (a)(1) Any person who, on or in connection with any goods or
       services, or any container for goods, uses in commerce any word,
       term, name, symbol, or device, or any combination thereof, or any
       false designation of origin, false or misleading description of fact, or
       false or misleading representation of fact, which--


                                         - 15 -
             (A) is likely to cause confusion, or to cause mistake, or to
             deceive as to the affiliation, connection, or association of such
             person with another person, or as to the origin, sponsorship, or
             approval of his or her goods, services, or commercial activities
             by another person, . . . .

The hallmark of a Lanham Act suit is proof of the likelihood of confusion, which

occurs “when consumers make an incorrect mental association between the

involved commercial products or their producers.” San Francisco Arts &

Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522, 564 (1987)

(Brennan, J., dissenting), quoted with approval in Jordache Enters., Inc. v. Hogg

Wyld, Ltd., 828 F.2d 1482, 1484 (10th Cir. 1987).

      Likelihood of confusion is a question of fact that we review for clear error.

Jordache, 828 F.2d at 1484. The district court found that Cardtoons’ parody cards

created no likelihood of confusion. We agree that no one would mistake MLBPA

and its members as anything other than the targets of the parody cards. Most of

the cards have a Cardtoons logo and a statement that they are not licensed by

MLBPA. In addition, as with all successful parodies, the effect of the cards is to

amuse rather than confuse. “A parody relies upon a difference from the original

mark, presumably a humorous difference, in order to produce its desired effect.”

Id. at 1486 (emphasis added). Cardtoons’ success depends upon the humorous

association of its parody cards with traditional, licensed baseball cards, not upon

public confusion as to the source of the cards. The district court’s decision that


                                        - 16 -
the parody cards do not create a likelihood of confusion is not clearly erroneous,

and thus the cards do not infringe upon MLBPA’s property rights under the

Lanham Act.



2.    The Right of Publicity

      The right of publicity is the right of a person to control the commercial use

of his or her identity. 1 J. Thomas McCarthy, The Rights of Publicity and Privacy

§ 1.1[A][1] (1996); see Restatement (Third) of Unfair Competition § 46 (1995).

While the right was originally intertwined with the right of privacy, courts soon

came to recognize a distinction between the personal right to be left alone and the

business right to control use of one’s identity in commerce. McCarthy, supra, §§

1.1-1.6; Michael Madow, Private Ownership of Public Image: Popular Culture

and Publicity Rights, 81 Cal. L. Rev. 127, 167-78 (1993). The latter was first

acknowledged as a distinct privilege and termed the “right of publicity” in Haelan

Laboratories, Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir.), cert.

denied, 346 U.S. 816 (1953). Haelan Laboratories, appropriately enough,

involved two rival chewing gum manufacturers who were arguing over exclusive

rights to use the image of a professional baseball player to promote their product.

In resolving the dispute, the court concluded that “a man has a right in the

publicity value of his photograph.” Id. at 868. The court explained:


                                        - 17 -
      This right might be called a “right of publicity.” For it is common
      knowledge that many prominent persons (especially actors and
      ballplayers), far from having their feelings bruised through public
      exposure of their likenesses, would feel sorely deprived if they no
      longer received money for authorizing advertisements, popularizing
      their countenances, displayed in newspapers, magazines, busses,
      trains and subways. This right of publicity would usually yield them
      no money unless it could be made the subject of an exclusive grant
      which barred any other advertiser from using their pictures.

Id. The development of this new intellectual property right was further cultivated

by Melville Nimmer in his seminal article The Right of Publicity, 19 Law &

Contemp. Probs. 203 (1954). Nimmer, who was counsel for Paramount Pictures

at the time, Madow, supra, at 174 n.238, referred to “the needs of Broadway and

Hollywood” in describing the foundations and parameters of the right, Nimmer,

supra, at 203. The right of publicity is now recognized by common law or statute

in twenty-five states. McCarthy, supra, § 6.1[B].

      Like trademark and copyright, the right of publicity involves a cognizable

property interest. Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562,

573 (1977); Restatement (Third) of Unfair Competition § 46 cmt. g. Most

formulations of the right protect against the unauthorized use of certain features

of a person’s identity--such as name, likeness, or voice--for commercial purposes.

See McCarthy, supra, §§ 4.9-4.15. Although publicity rights are related to laws

preventing false endorsement, they offer substantially broader protection.

Suppose, for example, that a company, Mitchell Fruit, wanted to use pop singer


                                        - 18 -
Madonna in an advertising campaign to sell bananas, but Madonna never ate its

fruit and would not agree to endorse its products. If Mitchell Fruit posted a

billboard featuring a picture of Madonna and the phrase, “Madonna may have ten

platinum albums, but she’s never had a Mitchell banana,” Madonna would not

have a claim for false endorsement. She would, however, have a publicity rights

claim, because Mitchell Fruit misappropriated her name and likeness for

commercial purposes. Publicity rights, then, are a form of property protection

that allows people to profit from the full commercial value of their identities.

      Oklahoma first recognized the right of publicity as early as 1965, but

expanded the right in a 1985 statute that is virtually identical to California’s right

of publicity statute, Cal. Civ. Code §§ 990 and 3344. The heart of the Oklahoma

statute provides that:

      Any person who knowingly uses another’s name, voice, signature,
      photograph, or likeness, in any manner, on or in products,
      merchandise, or goods, or for purposes of advertising or selling, or
      soliciting purchases of, products, merchandise, goods, or services,
      without such persons prior consent, . . . shall be liable for any
      damages sustained by the person or persons injured as a result
      thereof, and any profits from the unauthorized use that are
      attributable to the use shall be taken into account in computing the
      actual damages.

Okla. Stat. tit. 12, § 1449(A). Thus, a civil suit for infringement of MLBPA’s

publicity right under § 1449(A) requires proof of three elements: (1) knowing use

of player names or likenesses (2) on products, merchandise, or goods (3) without


                                         - 19 -
MLBPA’s prior consent. If MLBPA proves these three elements, then the burden

shifts to Cardtoons to raise a valid defense.

      There is little question that Cardtoons knowingly uses the names and

likenesses of major league baseball players. This is evident from an examination

of the cards and the testimony of the president of Cardtoons, who conceded that

the cards borrow the likenesses of active players. Indeed, the caricatures are only

humorous because they, along with the parodied name, team, and commentary, are

accurate enough to allow identification of the players being parodied. The second

and third elements of the statute are also satisfied. The cards are clearly a

product, designed to be widely marketed and sold for profit. In addition, the

parties have stipulated that MLBPA has not consented to Cardtoons’ use of player

likenesses. Cardtoons’ parody cards, then, do infringe upon MLBPA’s publicity

right as defined in § 1449(A).

      The Oklahoma publicity statute contains two exceptions designed to

accommodate the First Amendment. The first, a “news” exception, exempts use

of a person’s identity in connection with any news, public affairs, or sports

broadcast or account, or any political campaign, from the dictates of the statute.

Okla. stat. tit. 12, § 1449(D). The second exception, roughly analogous to the

First Amendment concept of “incidental use,” exempts use in a commercial

medium that is not directly connected with commercial sponsorship or paid


                                         - 20 -
advertising. Okla. stat. tit. 12, § 1449(F). The news and incidental use

exceptions, however, provide no haven for Cardtoons. Cardtoons’ commercial

venture is not in connection with any news account. Moreover, the company’s

use of player likenesses is directly connected with a proposed commercial

endeavor; indeed, the players were specifically selected for their wide market

appeal. Thus, notwithstanding any First Amendment defense, Cardtoons’ use of

player likenesses on its cards violates the Oklahoma statute and infringes upon the

property rights of MLBPA.



B.    Cardtoons’ First Amendment Right

      Because the parody trading cards infringe upon MLBPA’s property rights,

we must consider whether Cardtoons has a countervailing First Amendment right

to publish the cards. The First Amendment only protects speech from regulation

by the government. Although this is a civil action between private parties, it

involves application of a state statute that Cardtoons claims imposes restrictions

on its right of free expression. Application of that statute thus satisfies the state

action requirement of Cardtoons’ First Amendment claim. See New York Times

Co. v. Sullivan, 376 U.S. 254, 265 (1964).

      Cardtoons’ parody trading cards receive full protection under the First

Amendment. The cards provide social commentary on public figures, major


                                         - 21 -
league baseball players, who are involved in a significant commercial enterprise,

major league baseball. While not core political speech (the cards do not, for

example, adopt a position on the Ken Griffey, Jr., for President campaign), this

type of commentary on an important social institution constitutes protected

expression.

      The cards are no less protected because they provide humorous rather than

serious commentary. Speech that entertains, like speech that informs, is protected

by the First Amendment because “[t]he line between the informing and the

entertaining is too elusive for the protection of that basic right.” Winters v. New

York, 333 U.S. 507, 510 (1948); see Zacchini, 433 U.S. at 562, 578. Moreover,

Cardtoons makes use of artistic and literary devices with distinguished traditions.

Parody, for example, is a humorous form of social commentary that dates to

Greek antiquity, and has since made regular appearances in English literature.

See L.L Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 28 (1st Cir.), appeal

dismissed and cert. denied, 483 U.S. 1013 (1987). In addition, cartoons and

caricatures, such as those in the trading cards, have played a prominent role in

public and political debate throughout our nation’s history. See Hustler Magazine

v. Falwell, 485 U.S. 46, 53-55 (1988). Thus, the trading cards’ commentary on

these public figures and the major commercial enterprise in which they work

receives no less protection because the cards are amusing.


                                        - 22 -
      MLBPA contends that Cardtoons’ speech receives less protection because it

fails to use a traditional medium of expression. The protections afforded by the

First Amendment, however, have never been limited to newspapers and books.

The Supreme Court has relied on the First Amendment to strike down ordinances

that ban the distribution of pamphlets, Lovell v. Griffin, 303 U.S. 444, 451-52

(1938), the circulation of handbills, Jamison v. Texas, 318 U.S. 413, 416 (1943),

and the display of yard signs, City of Ladue v. Gilleo, 114 S. Ct. 2038, 2044-47

(1994). Moreover, many untraditional forms of expression are also protected by

the First Amendment. See, e.g., Texas v. Johnson, 491 U.S. 397 (1989) (flag

burning); Schad v. Mount Ephraim, 452 U.S. 61 (1981) (nude dancing); Cohen v.

California, 403 U.S. 15 (1971) (wearing a jacket bearing the words “Fuck the

Draft”). Thus, even if the trading cards are not a traditional medium of

expression, they nonetheless contain protected speech.

      Moreover, even if less common mediums of expression were to receive less

First Amendment protection (perhaps out of concern for whether they contain any

expression at all), trading cards do not fall into that category. Baseball cards

have been an important means of informing the public about baseball players for

over a century. “Trading, collecting and learning about players are the most

common reasons for children to purchase baseball cards. . . . They are, in other

words, an education in baseball.” Fleer Corp. v. Topps Chewing Gum, Inc., 501


                                         - 23 -
F. Supp. 485, 495-96 (E.D. Pa. 1980), rev’d on other grounds, 658 F.2d 139 (3d

Cir. 1981), cert. denied, 455 U.S. 1019 (1982). In addition, non-sports trading

cards have also been an important medium for disseminating information. Some

recent examples feature topics such as saints, Norman Rockwell paintings,

presidential candidates, the rise and fall of the Soviet Union, local police officers,

and Rodney King. All of these trading cards, regardless of their topic, convey

information about their subject and therefore constitute an important means of

expression that deserves First Amendment protection.

       MLBPA also maintains that the parody trading cards are commercial

merchandise rather than protected speech. However, we see no principled

distinction between speech and merchandise that informs our First Amendment

analysis. The fact that expressive materials are sold neither renders the speech

unprotected, Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer

Council, Inc., 425 U.S. 748, 761 (1976), nor alters the level of protection under

the First Amendment, Lakewood v. Plain Dealer Publishing Co., 486 U.S. 750,

756 n.5 (1988). Cardtoons need not give away its trading cards in order to bring

them within the ambit of the First Amendment. See Lakewood, 486 U.S. at 756

n.5.

       MLBPA further argues that the parody cards are commercial speech and

should therefore receive less protection under the First Amendment. The


                                         - 24 -
Supreme Court has defined commercial speech as “expression related solely to the

economic interests of the speaker and its audience.” Central Hudson Gas & Elec.

Corp. v. Public Serv. Comm’n, 447 U.S. 557, 561 (1980). Speech that does no

more than propose a commercial transaction, for example, is commercial speech.

See Virginia State Bd. of Pharmacy, 425 U.S. at 762. Thus, commercial speech is

best understood as speech that merely advertises a product or service for business

purposes, see 44 Liquormart, Inc. v. Rhode Island, 116 S. Ct. 1495, 1504 (1996)

(plurality opinion) (outlining a brief history of commercial speech that is,

essentially, a history of advertising). As such, commercial speech may receive

something less than the strict review afforded other types of speech. Id. at 1507.

      Cardtoons’ trading cards, however, are not commercial speech--they do not

merely advertise another unrelated product. Although the cards are sold in the

marketplace, they are not transformed into commercial speech merely because

they are sold for profit. Virginia State Bd. of Pharmacy, 425 U.S. at 761.

Contrary to MLBPA’s argument, therefore, the cards are unlike the parody in the

only other circuit court decision addressing the constitutional tensions inherent in

a celebrity parody, White v. Samsung Electronics America, Inc., 971 F.2d 1395

(9th Cir.), cert. denied, 508 U.S 951 (1992). In that case, defendant Samsung

published an advertisement featuring a costumed robot that parodied Vanna

White, the letter-turner on television’s Wheel of Fortune, and White sued for


                                        - 25 -
violation of her right of publicity. The court noted that in cases of

noncommercial parodies, “the first amendment hurdle will bar most right of

publicity actions against those activities.” Id. at 1401 n.3. However, without

engaging in a methodical commercial speech analysis of Samsung’s First

Amendment defense, the court ruled that White’s claim was sufficient to

withstand Samsung’s motion for summary judgment. We disagree with the result

in that case for reasons discussed in the two dissents that it engendered. Id. at

1407-08 (Alarcón, J., concurring in part and dissenting in part); White v.

Samsung Elecs. Am., Inc., 989 F.2d 1512, 1512-23 (9th Cir. 1993) (denial of

rehearing en banc) (Kozinski, J., dissenting). Moreover, our case is distinguished

by the fact that the speech involved is not commercial, but rather speech subject

to full First Amendment protection. White, therefore, is inapposite, and we must

directly confront the central problem in this case: whether Cardtoons’ First

Amendment right trumps MLBPA’s property right.



C.    Balancing Free Speech Rights with Property Rights

      In resolving the tension between the First Amendment and publicity rights

in this case, we find little guidance in cases involving parodies of other forms of

intellectual property. Trademark and copyright, for example, have built-in

mechanisms that serve to avoid First Amendment concerns of this kind. As


                                         - 26 -
discussed above, proof of trademark infringement under the Lanham Act requires

proof of a likelihood of confusion, but, in the case of a good trademark parody,

there is little likelihood of confusion, since the humor lies in the difference

between the original and the parody. The Copyright Act of 1976 contains a

similar mechanism, the fair use exception, which permits the use of copyrighted

materials for purposes such as criticism and comment. 17 U.S.C. § 107; see

Campbell v. Acuff-Rose Music, Inc., 114 S. Ct. 1164 (1994) (applying the fair

use exception to parody). Oklahoma’s right of publicity statute, however, does

not provide a similar accommodation for parody, and we must therefore confront

the First Amendment issue directly.

      MLBPA urges us to adopt the framework established in Lloyd Corp. v.

Tanner, 407 U.S. 551 (1972), in order to reconcile the free speech and property

rights at stake in this case. The issue in Lloyd was whether a private shopping

center could prevent the distribution of handbills on its premises. The Court

focused on the availability of “adequate alternative avenues of communication”:

      It would be an unwarranted infringement of property rights to require
      [the shopping center] to yield to the exercise of First Amendment
      rights under circumstances where adequate alternative avenues of
      communication exist. Such an accommodation would diminish
      property rights without significantly enhancing the asserted right of
      free speech.

Id. at 567. The Court held that the First Amendment did not require the shopping

center to allow distribution of the handbills because the public sidewalks and

                                         - 27 -
streets surrounding the center provided an adequate alternative avenue of

communication. Id. at 567-68. This type of analysis, usually applied to time,

place, and manner restrictions, has also been applied in several cases where

intellectual property rights have conflicted with the right to free expression. E.g.,

Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 402-03 (8th Cir. 1987)

(holding that “Mutant of Omaha,” a parody of Mutual of Omaha’s logo,

constitutes trademark infringement), cert. denied, 488 U.S. 933 (1988); Dallas

Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 206 (2d Cir.

1979) (holding that the use of Dallas Cowboy Cheerleader uniforms in the film

Debbie Does Dallas constitutes trademark infringement).

      MLBPA argues that application of the Lloyd analysis requires protection of

its proprietary right of publicity. First, MLBPA maintains that there are many

ways that Cardtoons could parody the institution of baseball that would not

require use of player names and likenesses. Cardtoons could, for example, use

generic images of baseball players to poke fun at the game. Second, MLBPA

contends that Cardtoons could use recognizable players in a format other than

trading cards, such as a newspaper or magazine, without infringing on its right of

publicity. MLBPA argues that these alternative means of communication are

adequate and, therefore, that we may uphold its property rights without seriously

infringing upon Cardtoons’ right to free expression.


                                        - 28 -
      We find, however, that in the context of intellectual property, Lloyd’s “no

adequate alternative avenues” test does not sufficiently accommodate the public’s

interest in free expression. See Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir.

1989); Mutual of Omaha Ins. Co., 836 F.2d at 405-06 (Heaney, J., dissenting).

Intellectual property, unlike real estate, includes the words, images, and sounds

that we use to communicate, and “we cannot indulge in the facile assumption that

one can forbid particular words without also running a substantial risk of

suppressing ideas in the process,” Cohen, 403 U.S. at 26; see San Francisco Arts

& Athletics, 483 U.S. at 569-570 (Brennan, J., dissenting). Restrictions on the

words or images that may be used by a speaker, therefore, are quite different than

restrictions on the time, place, or manner of speech. Rogers, 875 F.2d at 999; see

Robert Denicola, Trademarks as Speech: Constitutional Implications of the

Emerging Rationales for the Protection of Trade Symbols, 1982 Wisc. L. Rev.

158, 206.

      In this case, Cardtoons’ expression requires use of player identities

because, in addition to parodying the institution of baseball, the cards also

lampoon individual players. Further, Cardtoons’ use of the trading card format is

an essential component of the parody because baseball cards have traditionally

been used to celebrate baseball players and their accomplishments. Cardtoons

expresses ideas through the use of major league baseball player identities, and


                                        - 29 -
MLBPA’s attempts to enjoin the parody thus goes to the content of the speech,

not merely to its time, place, or manner. For that reason, the Lloyd test is

inapplicable in this case.

      This case instead requires us to directly balance the magnitude of the

speech restriction against the asserted governmental interest in protecting the

intellectual property right. We thus begin our analysis by examining the

importance of Cardtoons’ right to free expression and the consequences of

limiting that right. We then weigh those consequences against the effect of

infringing on MLBPA’s right of publicity.



1.    The Effect of Infringing Upon Cardtoons’ Right to Free Speech

      Cardtoons’ interest in publishing its parody trading cards implicates some

of the core concerns of the First Amendment. “Parodies and caricatures,” noted

Aldous Huxley, “are the most penetrating of criticisms.” Point Counter Point, ch.

13 (1928); see Hustler Magazine, 485 U.S. at 53-55. A parodist can, with deft

and wit, readily expose the foolish and absurd in society. Parody is also a

valuable form of self-expression that allows artists to shed light on earlier works

and, at the same time, create new ones. Thus, parody, both as social criticism and

a means of self-expression, is a vital commodity in the marketplace of ideas.

      Parodies of celebrities are an especially valuable means of expression


                                        - 30 -
because of the role celebrities play in modern society. As one commentator

explained, celebrities are “common points of reference for millions of individuals

who may never interact with one another, but who share, by virtue of their

participation in a mediated culture, a common experience and a collective

memory.” John B. Thompson, Ideology and Modern Culture: Critical Social

Theory in the Era of Mass Communication 163 (1990). Through their pervasive

presence in the media, sports and entertainment celebrities come to symbolize

certain ideas and values. Commentator Michael Madow gives the following

example:

      In December 1990, . . . shortly before the outbreak of the Gulf War, a
      story circulated in Washington that President Bush had boasted to a
      congressional delegation that Saddam Hussein was “going to get his
      ass kicked.” When reporters pressed Bush to confirm the statement,
      he did not answer directly. Instead, he hitched up his pants in the
      manner of John Wayne. Everyone got the point.

Madow, supra, at 128 (footnotes omitted). Celebrities, then, are an important

element of the shared communicative resources of our cultural domain.

      Because celebrities are an important part of our public vocabulary, a parody

of a celebrity does not merely lampoon the celebrity, but exposes the weakness of

the idea or value that the celebrity symbolizes in society. Cardtoons’ trading

cards, for example, comment on the state of major league baseball by turning

images of our sports heroes into modern-day personifications of avarice. In order

to effectively criticize society, parodists need access to images that mean

                                        - 31 -
something to people, and thus celebrity parodies are a valuable communicative

resource. Restricting the use of celebrity identities restricts the communication of

ideas.

         Without First Amendment protection, Cardtoons’ trading cards and their

irreverent commentary on the national pastime cannot be freely distributed to the

public. Instead, as required by Oklahoma law, the production and distribution of

the cards would be subject to MLBPA’s consent. The problem with this scheme,

as the Supreme Court noted in the context of copyright parody, is that “the

unlikelihood that creators of imaginative works will license critical reviews or

lampoons of their own productions removes such uses from the very notion of a

potential licensing market.” Campbell, 114 S. Ct. at 1178. The potential for

suppression is even greater in the context of publicity rights because the product

involved is the celebrity’s own persona. Indeed, the director of licensing for

MLBPA testified that MLBPA would never license a parody which poked fun at

the players. Thus, elevating the right of publicity above the right to free

expression would likely prevent distribution of the parody trading cards. This

would not only allow MLBPA to censor criticism of its members, but would also

have a chilling effect upon future celebrity parodies. Such a result is clearly

undesirable, for “[t]he last thing we need, the last thing the First Amendment will

tolerate, is a law that lets public figures keep people from mocking them.” White,


                                        - 32 -
989 F.2d at 1519 (Kozinski, J., dissenting).



2.    The Effect of Infringing Upon MLBPA’s Right of Publicity

      We now turn to an evaluation of society’s interest in protecting MLBPA’s

publicity right. The justifications offered for the right of publicity fall into two

categories, economic and noneconomic. The right is thought to further economic

goals such as stimulating athletic and artistic achievement, promoting the efficient

allocation of resources, and protecting consumers. In addition, the right of

publicity is said to protect various noneconomic interests, such as safeguarding

natural rights, securing the fruits of celebrity labors, preventing unjust

enrichment, and averting emotional harm. We examine the applicability of each

of these justifications to the facts of this case.

      The principal economic argument made in support of the right of publicity

is that it provides an incentive for creativity and achievement. See, e.g.,

Zacchini, 433 U.S. at 576-77; Carson v. Here’s Johnny Portable Toilets, Inc., 698

F.2d 831, 837 (6th Cir. 1983). Under this view, publicity rights induce people to

expend the time, effort, and resources to develop the talents prerequisite to public

recognition. While those talents provide immediate benefit to those with

commercially valuable identities, the products of their enterprise--such as movies,

songs, and sporting events--ultimately benefit society as a whole. Thus, it is


                                          - 33 -
argued, society has an interest in a right of publicity that is closely analogous to

its interest in other intellectual property protections such as copyright and patent

law. Zacchini, 433 U.S. at 576.

      This incentives argument is certainly a compelling justification for other

forms of intellectual property. Copyright law, for example, protects the primary,

if not only, source of a writer’s income, and thus provides a significant incentive

for creativity and achievement. The incentive effect of publicity rights, however,

has been overstated. Most sports and entertainment celebrities with commercially

valuable identities engage in activities that themselves generate a significant

amount of income; the commercial value of their identities is merely a by-product

of their performance values. See Restatement (Third) of Unfair Competition § 46

cmt. c. Although no one pays to watch Cormac McCarthy write a novel, many

people pay a lot of money to watch Demi Moore “act” and Michael Jordan play

basketball. Thus, the analogy to the incentive effect of other intellectual property

protections is strained because “[a]bolition of the right of publicity would leave

entirely unimpaired a celebrity’s ability to earn a living from the activities that

have generated his commercially marketable fame.” Madow, supra, at 209.

      This distinction between the value of a person’s identity and the value of

his performance explains why Zacchini v. Scripps-Howard Broadcasting Corp.,

433 U.S. 562 (1977), the Supreme Court’s sole case involving a right of publicity


                                         - 34 -
claim, is a red herring. Hugo Zacchini, a performer in a human cannonball act,

brought an action against a television station to recover damages he suffered

when the station videotaped and broadcast his entire performance. The Supreme

Court held that the First Amendment did not give the station the right to broadcast

Zacchini’s entire act in contravention of his state protected right of publicity. Id.

at 574-75. Zacchini, however, complained of the appropriation of the economic

value of his performance, not the economic value of his identity. The Court’s

incentive rationale is obviously more compelling in a right of performance case

than in a more typical right of publicity case involving the appropriation of a

celebrity’s identity. See Restatement (Third) of Unfair Competition § 46

reporters’ note cmt. c.

      Moreover, the additional inducement for achievement produced by publicity

rights are often inconsequential because most celebrities with valuable

commercial identities are already handsomely compensated. Actor Jim Carrey,

for example, received twenty million dollars for starring in the movie The Cable

Guy, see Bernard Weinraub, How a Sure Summer Hit Missed, N.Y. Times, June

27, 1996, at C11, and major league baseball players’ salaries currently average

over one million dollars per year, see Bill Brashler, Boooooooooooooooo! Let’s

Hear It for Pampered, Preening, Overpaid Whiners: The Jocks, Chi. Trib., July 28,

1996, (Magazine), at 12. Such figures suggest that “even without the right of


                                         - 35 -
publicity the rate of return to stardom in the entertainment and sports fields is

probably high enough to bring forth a more than ‘adequate’ supply of creative

effort and achievement.” Madow, supra, at 210. In addition, even in the absence

of publicity rights, celebrities would still be able to reap financial reward from

authorized appearances and endorsements. The extra income generated by

licensing one’s identity does not provide a necessary inducement to enter and

achieve in the realm of sports and entertainment. Thus, while publicity rights

may provide some incentive for creativity and achievement, the magnitude and

importance of that incentive has been exaggerated.

      The argument that publicity rights provide valuable incentives is even less

compelling in the context of celebrity parodies. Since celebrities will seldom give

permission for their identities to be parodied, granting them control over the

parodic use of their identities would not directly provide them with any additional

income. It would, instead, only allow them to shield themselves from ridicule and

criticism. The only economic incentive gained by having control over the use of

one’s identity in parody is control over the potential effect the parody would have

on the market for nonparodic use of one’s identity. MLBPA claims, for example,

that publication of the parody cards will decrease demand for traditional baseball

cards because Cardtoons and other makers of parody trading cards would compete

with manufacturers of licensed cards in the same limited trading card market.


                                         - 36 -
Parody, however, rarely acts as a market substitute for the original, Campbell, 114

S. Ct. at 1177-78, and there is no evidence in this record that convinces us

otherwise. Even if there is some substitutive effect, and card collectors with

limited resources decide to buy parody cards instead of traditional, licensed cards,

the small amount of additional income generated by suppressing parody cards will

have little, if any, effect on the incentive to become a major league baseball

player.

      The incentives argument would be even more tenuous, indeed perverse, if

good-humored celebrities were to license use of their identities for parody. The

right of publicity would then provide an incentive to engage in the socially

undesirable behavior that might give rise to a reason to parody. Although part of

any parody’s market appeal depends upon the prominence of the celebrity, the

critical element of the parody’s value hinges on the accuracy of the caricature or

criticism. Society does not have a significant interest in allowing a celebrity to

protect the type of reputation that gives rise to parody.

      We recognize that publicity rights do provide some incentive to achieve in

the fields of sports and entertainment. However, the inducements generated by

publicity rights are not nearly as important as those created by copyright and

patent law, and the small incentive effect of publicity rights is reduced or

eliminated in the context of celebrity parodies. In sum, it is unlikely that little


                                         - 37 -
leaguers will stop dreaming of the big leagues or major leaguers will start

“dogging it” to first base if MLBPA is denied the right to control the use of its

members’ identities in parody.

      The second economic justification for the right of publicity is that it

promotes the efficient allocation of resources, a version of the familiar tragedy of

the commons argument used to prove the superiority of private property over

common property. See, e.g., Matthews v. Wozencraft, 15 F.3d 432, 437-38 (5th

Cir. 1994). Without the artificial scarcity created by publicity rights, identities

would be commercially exploited until the marginal value of each use is zero. Id.

“Creating artificial scarcity preserves the value to [the celebrity], to advertisers

who contract for the use of his likeness, and in the end, to consumers, who

receive information from the knowledge that he is being paid to endorse the

product.” Id. at 438. Giving people control of the commercial use of their

identities, according to this analysis, maximizes the economic and informational

value of those identities.

      This efficiency argument is most persuasive in the context of advertising,

where repeated use of a celebrity’s likeness to sell products may eventually

diminish its commercial value. The argument is not as persuasive, however, when

applied to nonadvertising uses. It is not clear, for example, that the frequent

appearance of a celebrity’s likeness on t-shirts and coffee mugs will reduce its


                                         - 38 -
value; indeed, the value of the likeness may increase precisely because

“everybody’s got one.” Madow, supra, at 222. Further, celebrities with control

over the parodic use of their identities would not use the power to “ration the use

of their names in order to maximize their value over time,” Matthews, 15 F.3d at

438 n.2. They would instead use that power to suppress criticism, and thus

permanently remove a valuable source of information about their identity from the

marketplace.

       The final economic argument offered for rights of publicity is that they

protect against consumer deception. See, e.g., Restatement (Third) of Unfair

Competition § 46 cmt. c; McCarthy, supra, § 2.4; Peter L. Felcher & Edward L.

Rubin, Privacy, Publicity, and the Portrayal of Real People by the Media, 88 Yale

L.J. 1577, 1600 (1979). The Lanham Act, however, already provides nationwide

protection against false or misleading representations in connection with the sale

of products. Moreover, as discussed above, the use of celebrity names or

likenesses in parodies in general, and in Cardtoons’ trading cards in particular,

are not likely to confuse or deceive consumers. Thus, this final economic

justification has little merit.

       There are also several noneconomic reasons advanced for the right of

publicity. First, some believe that publicity rights stem from some notion of

natural rights. McCarthy, for example, argues that a natural rights rationale,


                                        - 39 -
resting more upon “visceral impulses of ‘fairness’” than upon reasoned argument,

“seems quite sufficient to provide a firm support for the existence of a Right of

Publicity.” McCarthy, supra, § 2.1[A]. McCarthy, however, offers little reason

for this assertion, and blind appeals to first principles carry no weight in our

balancing analysis.

      The second noneconomic justification is that publicity rights allow

celebrities to enjoy the fruits of their labors. See, e.g., Zacchini, 433 U.S. at 573;

Uhlaender v. Henricksen, 316 F. Supp. 1277, 1282 (D. Minn. 1970). According

to this argument, “[a] celebrity must be considered to have invested his years of

practice and competition in a public personality which eventually may reach

marketable status.” Uhlaender, 316 F. Supp. at 1282. People deserve the right to

control and profit from the commercial value of their identities because, quite

simply, they’ve earned it. Thus, in this view, the right of publicity is similar to

the right of a commercial enterprise to profit from the goodwill it has built up in

its name. Ali v. Playgirl, Inc., 447 F. Supp. 723, 728-29 (S.D.N.Y. 1978).

       Celebrities, however, are often not fully responsible for their fame.

Indeed, in the entertainment industry, a celebrity’s fame may largely be the

creation of the media or the audience. See Madow, supra at 184-96 (discussing

the role of factors beyond a celebrity’s control in developing a commercially

marketable persona). As one actor put it, “Only that audience out there makes a


                                         - 40 -
star. It’s up to them. You can’t do anything about it . . . . Stars would all be

Louis B. Mayer’s cousins if you could make ‘em up.” Jack Nicholson, quoted in

Jib Fowles, Starstruck: Celebrity Performers and the American Public 84 (1992).

Professional athletes may be more responsible for their celebrity status, however,

because athletic success is fairly straightforwardly the result of an athlete’s

natural talent and dedication. Thus, baseball players may deserve to profit from

the commercial value of their identities more than movie stars. Once again,

however, the force of this justification is diminished in the case of parody,

because there is little right to enjoy the fruits of socially undesirable behavior.

      The third, related justification for publicity rights is the prevention of

unjust enrichment. See, e.g., Zacchini, 433 U.S. at 576; Ali, 447 F. Supp. at 728-

29. In this view, whether the commercial value of an identity is the result of a

celebrity’s hard work, media creation, or just pure dumb luck, no social purpose is

served by allowing others to freely appropriate it. Cardtoons, however, is not

merely hitching its wagon to a star. As in all celebrity parodies, Cardtoons added

a significant creative component of its own to the celebrity identity and created an

entirely new product. Indeed, allowing MLBPA to control or profit from the

parody trading cards would actually sanction the theft of Cardtoons’ creative

enterprise.

      A final justification offered for the right of publicity is that it prevents


                                         - 41 -
emotional injuries. For example, commercial misappropriation may greatly

distress a celebrity who finds all commercial exploitation to be offensive. Lugosi

v. Universal Pictures, 603 P.2d 425, 439 n.11 (Cal. 1979) (Bird, C.J., dissenting).

Even celebrities who crave public attention might find particular uses of their

identities to be distressing. See, e.g., O’Brien v. Pabst Sales Co.,124 F.2d 167,

170 (5th Cir 1942) (professional football player, active in an organization devoted

to discouraging alcohol use among young people, sued to stop the use of his

image in a Pabst Blue Ribbon beer advertising calendar). The right of publicity

allows celebrities to avoid the emotional distress caused by unwanted commercial

use of their identities. Publicity rights, however, are meant to protect against the

loss of financial gain, not mental anguish. Zacchini, 433 U.S. at 573; Lugosi, 603

P.2d at 438-39 (Bird, C.J., dissenting). Laws preventing unfair competition, such

as the Lanham Act, and laws prohibiting the intentional infliction of emotional

distress adequately cover that ground. Moreover, fame is a double-edged sword--

the law cannot allow those who enjoy the public limelight to so easily avoid the

ridicule and criticism that sometimes accompany public prominence.

      Thus, the noneconomic justifications for the right of publicity are no more

compelling than the economic arguments. Those justifications further break down

in the context of parody, where the right to profit from one’s persona is reduced

to the power to suppress criticism. In sum, the effect of limiting MLBPA’s right


                                        - 42 -
of publicity in this case is negligible.



IV.   Conclusion

      One of the primary goals of intellectual property law is to maximize

creative expression. The law attempts to achieve this goal by striking a proper

balance between the right of a creator to the fruits of his labor and the right of

future creators to free expression. Underprotection of intellectual property

reduces the incentive to create; overprotection creates a monopoly over the raw

material of creative expression. The application of the Oklahoma publicity rights

statute to Cardtoons’ trading cards presents a classic case of overprotection.

Little is to be gained, and much lost, by protecting MLBPA’s right to control the

use of its members’ identities in parody trading cards. The justifications for the

right of publicity are not nearly as compelling as those offered for other forms of

intellectual property, and are particularly unpersuasive in the case of celebrity

parodies. The cards, on the other hand, are an important form of entertainment

and social commentary that deserve First Amendment protection. Accordingly,

we AFFIRM.

      We GRANT the motion by First Amendment Publishing, Inc. for leave to

file an amicus curiae brief, DENY the motion by appellee to strike, and GRANT

the motion by appellee to file a supplemental appendix and brief in support.


                                           - 43 -
