The Eighth Circuit may have just ended the game for three retired NFL players who sued NFL Films for using game footage of the players in films. The players had participated in a class action lawsuit alleging violation of their rights of publicity in the District of Minnesota, but opted out of the settlement over their objections to its fairness. Separately, on Monday, the Supreme Court declined to review the Eight Circuit’s approval of the class action settlement, which was opposed by another group of players.

John Frederick Dryer, Elvin Lamont Bethea and Edward Alvin White played in the NFL during the 1960s, 1970s and 1980s. All three appear in films produced by NFL Films, which consist of compilations of game footage and interviews with players, coaches and other individuals involved in the game. The players opted out of the settlement of the class action lawsuit which followed, and filed their own state-based rights of publicity suit. The players also claimed the films falsely represent that they endorse or are affiliated with the NFL, in violation of the Lanham Act.

Last week, the Eighth Circuit held that the Copyright Act pre-empted the players’ right of publicity claims as a matter of law. The case is notable for its analysis of the films and its conclusion that they were not commercial speech.

The Copyright Act pre-empts “all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright.” 17 U.S.C. §301(a). In the Eighth Circuit, the test for determining pre-emption asks (1) whether the work at issue is within the subject matter of copyright as defined in §§102 and 103 of the Copyright Act, and (2) whether the state law created right is equivalent to any of the exclusive rights within the general scope of copyright as specified in § 106. If plaintiff’s state-law the claims meet both of those criteria, the claims are preempted.

The Dryer plaintiffs argued that their performances in football games during their NFL careers constitute part of their identities, and therefore their claims did not concern “fixed” works eligible for copyright protection, and thus did not meet the first criteria. The Court rejected this claim out of hand, because simultaneously-recorded transmissions of live performances and sporting events were original works of authorship fixed in a tangible medium of expression.

Regarding the second element, the Court noted that due to the state’s interest in protecting consumers, a right of-publicity suit challenging the use of a copyrighted work in a commercial advertisement could have purposes unrelated to the aims of copyright law and thus pre-emption would not apply. However, when a right-of-publicity suit challenges the expressive, noncommercial use of a copyrighted work, that suit seeks to subordinate the copyright holder’s right to exploit the value of that work to the plaintiff’s interest in controlling the work’s dissemination, and is pre-empted.

The court then considered whether the films were expressive, or commercial speech. The test applied evaluates (i) whether the communication is an advertisement, (ii) whether it refers to a specific product or service, and (iii) whether the speaker has an economic motivation for the speech. The Court rejected the players’ argument that the films promote “NFL-branded football,” characterizing them instead as expressive stories of past contests featuring NFL teams and players, which referenced the league as part of those historical events. The Court found that the films were not advertisements because they did not propose a commercial transaction, nor did they refer to the NFL as a specific product. In fact, the Court concluded that the films were a separate product themselves. Further, the Court noted that “[b]ecause the films represent speech of independent value and public interest rather than advertisements for a specific product, the NFL’s economic motivations alone cannot convert these productions into commercial speech.” Because the films were expressive and not commercial speech, the Copyright Act preempted appellants’ “attempt to control dissemination of the films and thereby exercise a right equivalent to the ‘exclusive rights’ granted by copyright.”

The court also rejected the players’ false endorsement claims under the Lanham Act., holding that although the films as a whole may portray the NFL in a positive light, nothing in the films implies that the appellants share that perspective.

Where does this case fit into the larger debate over the scope of publicity rights? Courts have been all over the map in their application of rights of publicity. To make matters worse, these rights vary from state to state, both with respect to the scope of what rights are covered, to what people are within the law’s ambit, to whether the laws apply to out-of-state personas. The treatment of the interplay between copyright, trademark, the First Amendment and publicity rights has also been inconsistent.

The Supreme Court just denied a petition for writ of certiorari filed by three other former player class members who challenged the fairness of the $42 million settlement in the original class action lawsuit. However, that Court is considering a petition for writ of certiorari in the case of Davis v Electronic Arts, Inc., involving a right of publicity challenge to the realistic depiction of players in the popular Madden NFL franchise video games. In that case, the Ninth Circuit rejected Electronic Arts’ claim that the video games were expressive speech protected by the First Amendment. The question presented “[w]hether the First Amendment protects a speaker against a state-law right-of-publicity claim that challenges the realistic portrayal of a person in an expressive work.”

For now, the takeaway is to pay attention to the details of what works are at issue and how they are used, and to follow the case law on these issues.