894 F.2d 579 (2d Cir. 1990)
Babe Ruth was one of the greatest baseball players of all time, known for his pitching and hitting prowess.1 While he lived, manufacturers paid him for the use of his picture or name in promoting the sale of products.2 After Ruth's death, his daughters Dorothy Ruth Pirone and Julia Ruth Stevens registered the words "Babe Ruth" as a trademark for paper articles, namely playing cards, writing paper and envelopes.3 Appellant Babe Ruth League, Inc., an amateur baseball league, was licensed to use the trademark to promote the league and to sell products bearing the Babe Ruth name, which it has done since 1955.4 Appellant Curtis Management Group, Inc., was authorized to license the mark to third parties in exchange for royalties.5
In 1987, appellee MacMillan, Inc. published The 1988 MacMillan Baseball Engagement Calendar.6 The back cover, the title page, and the copyright page all prominently refer to the MacMillan Publishing Company.7 The words "Babe Ruth" do not appear on the cover.8 Each left-hand page bears a photograph of a baseball player, ballfield, or other item of potential interest to fans.9 Each right-hand page consists of a calendar for a given week supplemented by baseball trivia linked to a particular date.10
This appeal concerns the inclusion of three Babe Ruth photos in the calendar.11 A picture of Ruth helping a small boy with his batting grip appears on its cover.12 The week of October 31-November 6 shows Ruth saluting General John Pershing.13 A baseball autographed by Ruth illustrates the week of December 5.14 Although they claimed no particular ownership interest in these specific photographs, Pirone and the other appellants objected to the use of Ruth's likeness.15
They filed suit alleging federal and common law trademark infringement and unfair competition, infringement of the common law right of publicity, and violation of the New York Civil Rights Law.16 The plaintiffs sought a permanent injunction, an accounting, damages, and attorneys' fees.17 The district court granted MacMillan's motion for summary judgment on the trademark infringement and unfair competition claims pursuant to Federal Rule of Civil Procedure 56.18 It also granted the motion to dismiss the remaining counts for failure to state a claim on which relief may be granted under Rule 12(b)(6).19 The case then came before the United States Court of Appeals for the Second Circuit on appeal.20
Whether photographs of Babe Ruth constitute a colorable imitation of the registered trademark consisting of the words "Babe Ruth"?21
A plaintiff asserting trademark infringement must show that the asserted symbols are valid, legally protectible trademarks owned by the plaintiff.22 The defendant's use must constitute a colorable imitation likely to cause confusion as to origin.23 A photograph of a person is not inherently distinctive in the trademark sense of indicating origin unless a particular photograph is consistently used on specific goods as a single and continuing commercial impression.24 Different photographs of the same individual may be markedly dissimilar and therefore cannot be equated to a word mark as a matter of law.25
No. The appellants registered only the words "Babe Ruth" as a trademark for paper articles such as playing cards, writing paper, and envelopes.26 The established facts show that they claimed no ownership interest in the three specific photographs at issue.27 Those photographs are distinct images rather than any single fixed pictorial representation consistently employed to indicate origin.28 Because Ruth was one of the most photographed figures of his era, the photographs lack the origin-indicating quality required to qualify as a colorable imitation of the word mark.29
The photographs of Babe Ruth do not constitute a colorable imitation of the registered trademark consisting of the words "Babe Ruth".30
Whether the publisher's use of Babe Ruth's name and photographs in a baseball engagement calendar was a trademark use indicating source or origin?31
A trademark use requires that the name or image indicate the source or origin of the goods rather than merely describe their contents.32 Personal names used as marks are descriptive and protected only when they have acquired secondary meaning identifying a particular business.33 Use in the primary descriptive sense to identify a historical figure does not constitute trademark infringement.34
No. MacMillan prominently displayed its own name on the back cover, title page, and copyright page of the 1988 MacMillan Baseball Engagement Calendar.35 The words "Babe Ruth" do not appear on the cover at all.36 The calendar's left-hand pages feature photographs of baseball players and memorabilia solely to illustrate its subject matter of baseball history and trivia.37 The name and images of Babe Ruth therefore function in their primary descriptive sense to evoke a famous historical player rather than to indicate sponsorship or origin by the appellants.38
The publisher's use of Babe Ruth's name and photographs in a baseball engagement calendar was not a trademark use indicating source or origin.39
Whether consumers are likely to be confused as to the source or sponsorship of the calendar due to the inclusion of Babe Ruth photographs?40
Likelihood of confusion exists only when an appreciable number of ordinarily prudent purchasers would be misled or confused as to the source of the goods.41 A consumer would need to believe that the mark's owner sponsored or approved the use.42 Summary judgment is appropriate where the products or marks are so dissimilar that no genuine issue of fact is presented.43
No. The calendar contains photographs of many players including Lou Gehrig, Mickey Mantle, and Jackie Robinson.44 The three Ruth images appear among them as subject matter rather than as source identifiers.45 MacMillan is repeatedly identified as the publisher.46 No consumer would reasonably believe that the Ruth estate sponsored the calendar when the photographs merely depict great ballplayers to indicate the calendar's contents.47 The dissimilar nature of the uses precludes any likelihood of confusion as a matter of law.48
Consumers are not likely to be confused as to the source or sponsorship of the calendar due to the inclusion of Babe Ruth photographs.49
Whether a common law right of publicity barring the unauthorized commercial use of a person's image or likeness survives the death of Babe Ruth under New York law?50
No. Babe Ruth died before the calendar's publication.54 The appellants are his daughters and licensees asserting rights after his death.55 New York courts have held that the statutory provisions of the Civil Rights Law are exclusive.56 This extinguishes any common-law right of publicity upon death and leaves no descendible interest that the appellants may enforce.57
A common law right of publicity barring the unauthorized commercial use of a person's image or likeness does not survive the death of Babe Ruth under New York law.58
Whether the New York Civil Rights Law provides a remedy for the unauthorized use of a deceased person's portrait or picture for advertising or trade purposes?59
No. Babe Ruth had died long before the 1988 calendar was published.63 The appellants are his daughters and related entities seeking relief for the use of his likeness.64 The Civil Rights Law protects only living persons.65 The right of privacy is personal and extinguished upon death.66 The statute supplies no cause of action for the unauthorized use of Ruth's portrait or picture.67
The New York Civil Rights Law does not provide a remedy for the unauthorized use of a deceased person's portrait or picture for advertising or trade purposes.68