The Eighth Circuit recently rejected three former NFL players’ appeal of a district court’s dismissal of their right of publicity claims, among other claims.  John Frederick Dryer, Elvin Lamont Bethea, and Edward Alvin White were part of a putative class action in which twenty-three former NFL players claimed, among other things, that the NFL violated their rights of publicity by using footage from games in which they had played.  The NFL did so, plaintiffs alleged, by using the footage in a series of films depicting significant games, seasons, and players in NFL history.  The other twenty players had previously settled with the NFL.  Dryer, Bethea, and White maintained that their right of publicity had been violated under various states’ laws.  The district court granted summary judgment in favor of the NFL, and the Eighth Circuit affirmed.

Most notable in the Eighth Circuit’s order is its determination that the players’ right of publicity claims were preempted by the Copyright Act.  To determine whether a state-law claim is preempted by the Copyright Act, a court must determine (i) whether the work at issue is within the subject matter of copyright and, if so, (ii) whether the state law created right is equivalent to any of the exclusive rights within the general scope of copyright law.

As to the first prong, the players argued that their performances in football games constituted part of their identities, rather than “fixed” works eligible for copyright protection. The court summarily rejected that argument – although a sporting performance itself is not copyrightable, a recording of such a performance is specifically included under the Copyright Act.  17 U.S.C. § 101.  The players did not argue that the NFL Films lacked permission to record their live performances, nor did they dispute that the NFL had an enforceable copyright in that footage.  Accordingly, the films were “within the subject matter of copyright.”

As to the second prong, the court recognized that, while a right-of-publicity suit challenging thecommercial use of a work could have purposes unrelated to the aims of copyright law, a suit challenging the expressive, non-commercial use of a work falls squarely in the domain of copyright law.  Here, the court found that the NFL Films were expressive and non-commercial by applying the three-factor test from Porous Media Corp. v. Pall Corp., 173 F.3d 1109, 1120 (8th Cir. 1999):

  • First, the films did not propose a commercial transaction.
  • Second, they did not refer to a specific product or service, as the films were products in their own right and only referenced the NFL as part of historical events, rather than a present-day product.
  • Third, the NFL’s economic motivations alone did not convert the films to commercial speech, as the films represented speech of independent value and public interest.

Because the players’ right of publicity claims challenged the NFL’s right to disseminate its expressive, non-commercial work – an exclusive right under copyright law – those claims were preempted by the Copyright Act. For defendants facing similar right of publicity claims, they might be able to rely on the defense of preemption if they can show that the same two prongs have been met.