New Kids on the Block v. News America Publishing, Inc.
745 F.Supp. 1540, 16 U.S.P.Q. 2d (BNA) 1283, 18 Media L. Rep. (BNA) 1089 (1990)
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Rule of Law:
The First Amendment protects the use of a celebrity's trademark in news gathering and dissemination, even if conducted for profit, unless the use is wholly unrelated to the news activity or explicitly and falsely suggests sponsorship or endorsement by the celebrity.
Facts:
- The music group New Kids on the Block has used its name as a trademark since 1986 and operates its own official 900 number telephone hotlines.
- Star Magazine published articles about the New Kids and included a 900 number for readers to call, at 95 cents per minute, to vote for the 'sexiest' band member.
- After a reader voted in the Star Magazine poll, the service solicited the caller to participate in a separate 900 number trivia game.
- USA Today ran a story about the New Kids and announced a related survey.
- The USA Today survey asked readers 'Who's the Best on the Block?' and provided a 900 number to call, at 50 cents per minute, to vote for their favorite band member.
- USA Today subsequently published the results of its poll as a news story in its 'Life Section'.
Procedural Posture:
- New Kids on the Block (plaintiffs) filed a lawsuit in the U.S. District Court against Gannett Satellite Information (USA Today) and News America Publishing (Star Magazine) (defendants).
- The complaint alleged multiple causes of action, including federal and state trademark infringement, unfair competition, and commercial misappropriation.
- Both the plaintiffs and the defendants filed cross-motions for summary judgment, each asking the court to rule in their favor as a matter of law without a full trial.
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Issue:
Does the First Amendment provide immunity from trademark infringement and misappropriation claims to news organizations that use a celebrity's name and likeness to conduct for-profit telephone polls related to news gathering?
Opinions:
Majority - Rea, District Judge
Yes, the First Amendment provides immunity in this context. The court held that the use of a celebrity's trademark in connection with news gathering is constitutionally protected and subject to a balancing test that favors free expression. For the trademark infringement claims, the court adopted the test from Rogers v. Grimaldi, holding that such use is only unlawful if it has no artistic or journalistic relevance to the underlying work, or if it explicitly misleads as to the source or content. Here, the polls were related to news gathering, and the plaintiffs failed to show an explicit misrepresentation of sponsorship, as claims of merely 'implicit endorsement' are insufficient to overcome First Amendment protections. For the misappropriation claim, the court found the use was 'informative or cultural' rather than 'pure commercial exploitation,' as it was tied to the constitutionally protected activity of news gathering. The fact that the defendants profited from the 900 numbers was deemed irrelevant, just as it is that newspapers are sold for profit.
Analysis:
This case extends the application of the Rogers v. Grimaldi test, originally applied to artistic works, to news gathering activities involving trademarks. The decision establishes a strong First Amendment defense for media companies against trademark and right of publicity claims, even when their news-related activities are profitable. It sets a high bar for plaintiffs, requiring them to prove that the media's use of their identity was either wholly unrelated to a news purpose or contained an explicit false claim of endorsement, rather than just a potential for implied association. This precedent significantly protects the media's ability to report on and engage with public figures without undue risk of intellectual property litigation.
