Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.

Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.

202 F.2d 866 (2d Cir. 1953); US Court of Appeals for the Second Circuit

                                Date of decision: 16^th February, 1953

Brief Facts:

• The Plaintiff was engaged in selling Chewing Gums. Plaintiff made a contract with several baseball players which provided the Plaintiff exclusive right to use the player’s photograph in connection with the Chewing Gums.
• The players further agreed not to grant any other gum manufacturer a similar right during the term of contract with the Plaintiff.
• Defendant, a competitor, induced the players (through its agent) to authorize Defendant by a contract to use the players’ photograph with the sales of Defendant’s Chewing Gums during the existence of the contract with the Plaintiff.
• Some other players were also induced by Russel Publishing Co. to enter into separate contracts with it and thereafter rights under these contracts were subsequently assigned to Defendant.
• Plaintiff filed a suit against the Defendant seeking injunction against unfair competition, trademark infringement and infringing upon and interfering with its exclusive contracts with professional baseball players.[1]

Defendant’s Contentions[2]:

• The contract of the Plaintiff with the player was nothing more than a permission by the ball player to use his photograph. Bereft of such permission, if the Plaintiff would have used the said photograph, Plaintiff would have violated player’s right to privacy under Section 50 and 51 of the New York Civil Rights Law.
• The said right of privacy of the player is not assignable and hence no right of property could have vested in the Plaintiff by virtue of Contract.

The Learned District Judge (heard the case without a jury) held against the Plaintiff and accepted the contentions of the Defendant. The Plaintiff filed the present appeal along with Motion for temporary injunction against the Defendant.

Appellate Court’s Observations:

On Tort of Deliberate Inducement of Breach of Contract

• Under the New York decisions, Defendant is right in asserting that any such contract between the Plaintiff and the player is merely authorizing the Plaintiff to use the player’s photograph and nothing else.
• However, Defendant’s argument neglects the fact that, in the contract, the ball-player also promised not to give similar releases to others. If Defendant, knowing of the contract, deliberately induced the ball-player to break that promise, defendant behaved tortuously.
• Some of Defendant’s contracts were obtained by it through its agent, Players Enterprise, Inc. Since the said entity acted as Defendant’s agent, Defendant is liable for any breach of Plaintiff’s contracts induced by Players Enterprise, Inc.
• The other cases are where another entity, Russel (supra) induced the breach with knowledge of Plaintiff’s exclusive rights. Considering that Russel was a separate entity, Defendant was not liable for a breach of any of Plaintiff’s contracts induced by Russell.

On Violation of Right of Publicity

• Defendant contends that none of Plaintiff’s contracts created more than a release of liability, because a man has no legal interest in the publication of his picture other than his right of privacy,  i.e., a personal and non-assignable right not to have his feelings hurt by such a publication.
• The above contention is rejected. In addition to and independent of Right of Privacy (which in New York is derived from statute), a man has a right in the publicity value of his photograph, and that such a grant may validly be made without an accompanying transfer of a business or of anything else. Whether it be labeled a ‘property’ right is immaterial; as the tag ‘property’ simply symbolizes the fact that Courts enforce a claim which has pecuniary worth.
• This right might be called a ‘Right of Publicity’. It is common knowledge that many prominent persons (especially actors and ball-players), 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 etc. 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.
• Plaintiff, in its capacity as exclusive grantee of a player’s ‘Right of Publicity’ has a valid claim against Defendant if Defendant used that player’s photograph during the term of Plaintiff’s grant and with knowledge of it. It is no defense to such a claim that Defendant is the assignee of a subsequent contract between that player and Russell, purporting to make a grant to Russell or its assignees. For the prior grant to Plaintiff renders that subsequent grant invalid during the period of the grant to Plaintiff, but not thereafter.

On Motion for temporary injunction

• The trial court may immediately entertain a motion by either party.
• Due to the seasonal character of the business, the taking of evidence and making of decision on the motion should be made expeditiously/
• The trial judge in his discretion may issue a series of temporary injunctions, e., to enjoin the use by one party of a particular player’s picture as and when the exclusive right of the other party to the use of such picture is established by the evidence.

The matter was remanded back to trial Court to determine certain issues of facts and determination of liability.

[1] Subsequently the Claim of Unfair Competition and Trade Mark infringement were abandoned by the Plaintiff.

[2] The decision of the Appellate Court does not record Plaintiff’s Contentions.