In the first Third Circuit case to address false endorsement, the appellate court clarified an apparent district court split over whether a claim of false endorsement brought under Section 43(a)(1)(A) of the Lanham Act requires proof of actual confusion. The appellate court concluded that unlike a claim brought under Section 43(a)(1)(B), a false endorsement claim under Section 43(a)(1)(A) requires proof only of likely, not of actual, confusion.
John Facenda was a well-known Philadelphia broadcaster until his death in 1984. This case was brought by his son as the executor of his estate (the "Estate"). Facenda's voice is very recognizable and is known by many football fans as the "Voice of God." Based on this widespread recognition, the Estate claimed trademark rights in Facenda's voice.
This dispute arose out of defendant N.F.L. Films Inc.'s ("NFL Films") unauthorized use of small portions of Facenda's voice-over work from earlier NFL Films productions in a cable-television production about the football video game "Madden NFL 06," called The Making of Madden NFL 06. Among other claims, the Estate sued NFL Films based on a claim of false endorsement under Section 43(a)(1)(A).
The district court granted the Estate's motion for summary judgment on its false endorsement claim. On appeal, NFL Films challenged the legal standard applied by the district court, arguing that false endorsement claims under Section 43(a)(1)(A), like false advertising claims under Section 43(a)(1)(B), require a showing of actual confusion. NFL Films also argued that the First Amendment prohibits the application of the Lanham Act to its television production.
The Third Circuit vacated the district court's grant of summary judgment, though it agreed with much of the district court's analysis of the false endorsement claim, including the application of a modified version of the likelihood-of-confusion test, and for the first time adopted a test specifically for use in false endorsement cases under Section 43(a)(1)(A).
The Third Circuit first considered and rejected NFL Films' First Amendment defense because it found The Making of Madden NFL 06 to be commercial speech rather than artistic expression.
The Third Circuit then considered the district court's adoption of a multifactor test for false endorsement cases originally set forth by the Ninth Circuit. The appellate court agreed that the traditional likelihood-of-confusion factors made for an uncomfortable fit in false-endorsement cases, and it adopted a slight modification of the Ninth Circuit's test resulting in the following list of eight factors that must be considered when evaluating false endorsement claims in the Third Circuit:
- the level of recognition that the plaintiff has among the segment of society for whom the defendant's product is intended;
- the relatedness of the fame or success of the plaintiff to the defendant's products;
- the similarity of the likeness used by the defendant to the actual plaintiff;
- evidence of actual confusion and the length of time the defendant employed the allegedly infringing work before any evidence of actual confusion arose;
- marketing channels used;
- likely degree of purchaser care;
- defendant's intent in selecting the plaintiff; and
- likelihood of expansion of the product lines.
In adopting these factors, the appellate court also clarified its position with respect to whether a false endorsement claim under Section 43(a)(1)(A) requires evidence of actual confusion. NFL Films argued that subsections 43(a)(1)(A) and (a)(1)(B) have the same standard, which distinguishes impliedly false endorsements from expressly false endorsements (in the false advertising context, impliedly false claims must be shown to have actually misled consumers, while actual confusion is presumed as to literally false claims). NFL Films also argued that, at the very least, the district court should have required evidence that consumers actually received the implied message.
The appellate court rejected NFL Films' arguments, noting that the statutory text of the two subsections differs. Only subsection (a)(1)(A) includes the phrase "likely to cause confusion." While a plaintiff may bring a false endorsement claim under both subsections (a)(1)(A) and (a)(1)(B), a plaintiff need not do so. Nor does the fact that a false endorsement claim can be brought under either subsection mean that the standards under each are the same.
Ultimately, the appellate court remanded the case for trial because it found that weighing the likelihood-of-confusion factors is a question of fact, not law, and was therefore inappropriate for resolution on summary judgment.
Plaintiffs in the Third Circuit now have clear standards for a claim of false endorsement under Section 43(a)(1)(A). Actual confusion is but one of eight factors to be considered, but is not a requirement for a finding of infringement.