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Monday, September 29, 2008
The NFL Loses its Voice

Although fans of the NFL may not recognize his name, most fans can immediately recognize the distinctive voice of John Facenda. For many years, Facenda was the voice of the NFL, narrating weekly highlights for NFL films with his deep baritone voice. Along with a great soundtrack, Facenda’s narration transformed ordinary NFL action into an extraordinary television event (here’s one of his best). Facenda’s legendary voice was the subject of a recent lawsuit that raises a variety of interesting intellectual property issues.

Shortly before Facenda died in 1984, he signed a “standard release” contract stating that NFL films “enjoys the unequivocal rights to use the audio and visual sequences recorded of me, or any part of them…in perpetuity and by whatever media or manner NFL Films...sees fit, provided, however, such use does not constitute and endorsement of any product or service.” In 2005, NFL Films produced “The Making of Madden NFL 06,” a 22 minute program about the newest version of the popular video game. The program, which was shown on the NFL Network eight times in a 3-day span leading up to the release of the game, featured interviews with NFL players and used three brief sound recordings of Facenda used in earlier NFL Films highlights.

Facenda’s estate then sued NFL Films for false endorsement under the Lanham Act and for violation of Facenda’s right of publicity. The Eastern District of Pennsylvania granted summary judgment for Facenda’s estate on both issues. In a lengthy opinion published earlier this month, the Third Circuit vacated and remanded the Lanham Act portion of the decision but affirmed the judgment on the right of publicity claim.

Here are some of the highlights of the Third Circuit’s opinion(these are much more entertaining if you read them in a Facendian voice and play classical music in the background).

1. With respect to the false endorsement claim, the court adopted the Ninth Circuit’s test from Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001). Under the Downing test, likelihood of confusion regarding sponsorship or endorsement is a question of fact to be determined by weighing 8 different factors. Because there were genuine disputes over some of these factors, the Third Circuit held that summary judgment was not appropriate and remanded the case back to the district court.

2. NFL Films did not raise a First Amendment or incidental use defense to the right of publicity claim on appeal. Instead, NFL Films raised two preemption claims, both of which the court rejected.

3. First, NFL Films argued that federal copyright law expressly preempts the state right of publicity claim. The Third Circuit rejected this argument for two reasons. First, the court noted that under the express copyright preemption provision, a state law claim is not preempted if it contains an “additional element” beyond what a federal copyright infringement claim would require. Here, the “additional element” was the Pennsylvania right of publicity statute’s requirement of a showing of commercial value, defined as a “[v]aluable interest in a natural person’s name or likeness that is developed through the investment of time, effort, and money.” Second, the court held that voices are outside the subject matter of copyright and thus not subject to preemption.

4. Second, NFL Films argued that federal copyright law implied preempts the right of publicity claim. Despite the absence of an express preemption, the court explained that an implied preemption may exist because of the conflict between copyright law and the right of publicity. The Third Circuit thus asked: “When does the right of individuals to avoid commercial exploitation of their identities interfere with the rights of copyright owners to exploit their works?” To answer this question, the court looked at the use of Facenda’s voice and the scope of the copyright acquired by NFL Films in the original contract. With respect to the use issue, the court emphasized that the Madden video was not an expressive work. Rather, it was a “promotional piece akin to advertising.” With respect to the contact, the court stated that “Facenda consented to participation in films documenting NFL games, not an advertisement for a football video game.” The court thus held that implied preemption was inappropriate.

There is a lot to be said about this case, and I plan to write more about it later on, but I have one quick reaction to the decision. Although the plaintiff won on the right of publicity claim, the Third Circuit seems to continue the troubling trend of narrowing the rights protected by right of publicity statutes (Rich has blogged about the right of publicity issue extensively and persuasively), to the point where one could argue that the Third Circuit may only be willing to recognize a right of publicity in false-endorsement type cases. Granted, this issue came up in the preemption context in a false-endorsement type case with specific contract language prohibiting false endorsements, but here’s what the Third Circuit had to say about the Pennsylvania right of publicity statute and the rights it protects:

 “Precisely what Pennsylvania’s right of publicity is meant to protect is a citizen’s prerogative not to have his or her name, likeness, voice, or identity used in a commercial advertisement.”
 “Pennsylvania’s [statute] focuses solely on the commercial-advertising context. It is targeted at endorsements, not the full universe of creative works.”
 “In the endorsement context, an individual’s identity and credibility are put directly on point.”
 “Advertisements are special in the way they implicate an individual’s identity.”

Again, given the facts of the case and the legal issues before the court, it’s not surprising that the court emphasized the evils of false endorsements, but the language used by the court is at least consistent with (if not the next step in) the trend of equating the right of publicity claim with a false endorsement claim.


Pennsylvania's right of publicity states as follows: “Any natural person whose name or likeness has
commercial value and is used for any commercial or advertising
purpose” without consent may sue for an injunction and
damages. Id. § 8316(a). This is a simple exercise in statutory construction and interpretation: The use of the word "or" between "commercial" and "advertising" means that, in Pennsylvania, the right of publicity is not narrowly defined to only cover unauthorized use in advertising. So it's beyond me how this statute could possibly be construed to limit the right of publicity to false endorsement type cases.

Blogger Rick Karcher -- 9/29/2008 8:54 PM  


I agree that it should not be construed to limit the right of publicity to false endorsement type cases, but I think we've seen how it could be construed that way. In fact, you noted it in an earlier post. If you take the Eight Circuit's "public domain"/First Amendment argument to its extreme, courts could use the First Amendment to swallow up the entire right of publicity, except for false endorsement claims. Under the extreme version of the doctrine, courts would allow free use of all information in the public domain, so long as the use did not create or imply a false endorsement. Do I think that's the right doctrine? Absolutely not. Do I think the Eighth and Third Circuits are leaning in that direction? Absolutely.

Anonymous Gabe Feldman -- 9/29/2008 10:35 PM  

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Blogger commoncents -- 9/29/2008 11:33 PM  


You and I are on the same page with regard to this issue. What do you suppose would compel a court to just flat out refuse to even recognize the right of publicity tort cause of action? If courts are in essence deciding that false endorsement claims (Lanham Act or unfair competition) are the only avenue, then they are effectively saying that the time has now come to a point in which courts should no longer continue to recognize the 55 year history of the right of publicity beginning with Haelan Labs (even if it means contradicting a state statute). What's the justification for doing that? Apparently, the courts don't need to provide an explanation for it. It's ludicrous!

Blogger Rick Karcher -- 9/30/2008 7:06 AM  

Well, there is a delicate line-drawing exercise to be done in these cases. For example, I don;t think anyone would argue that right of publicity would prevent an author from writing (and selling) a book about George Bush, even though under a technical reading of Pennsylvania's right of publicity statute it would be prohibited. Same of an artist painting (and selling) a portrait of George Bush. I agree that right of publicity should not just be limited to false endorsement claims, but courts tend to focus on that because that's the easy case. The harder case is when the individual's identity is used as part of the product and the product is arguably artistic (e.g., selling George Bush greeting cards or t-shirts). That's what has led to somewhat tortured legal reasoning in a lot of these cases (transformative use, etc.).

Anonymous john -- 9/30/2008 11:41 AM  


I see your broader point, but a technical reading of Pennsylvania's right of publicity statute does not prohibit an author from writing and selling a book about George Bush. Rather, it expressly permits it. Rick posted part of the statute, but the statute goes on to define and narrow the meaning of "commercial or advertising purpose." Here's the relevant language:

"Commercial or advertising purpose."

(2) The term shall not include the public use or holding out of a natural person's name or likeness in a communications medium when:

(i) the natural person appears as a member of the public and the natural person is not named or otherwise identified;

(ii) it is associated with a news report or news presentation having public interest;

(iii) it is an expressive work;

(iv) it is an original work of fine art;

Anonymous Gabe Feldman -- 9/30/2008 3:54 PM  

Gabe -- That's sort of my point -- what's an "expressive work" or a "work of fine art"? Is a greeting card an expressive work? A poster? A lithograph? A t-shirt?

Anonymous john -- 9/30/2008 6:04 PM  


I was only responding to your comment that a technical reading of the statute would prohibit an author from using a celebrity's name in a book. The statute clearly permits such a use, as do all of the right of publicity statutes I have seen. I do agree with you that the issue becomes trickier as we move away from pure "expressive" uses (or uses that are clearly protected by the First Amendment) towards mixed expressive/commercial uses (such as greeting cards), but I just wanted to clarify the first part of your comment.

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