In vacating an award of summary judgment (based on a Lanham Act claim) to the estate of a legendary football announcer (John Facenda), the U.S. Court of Appeals for the Third Circuit held that it was not appropriate to weight the likelihood of confusion factors, which are largely fact dependent, at the summary judgment stage. Facenda v. NFL Films, Inc., Case No. 07-3269 (3rd Cir., Sept. 9, 2008) (Ambro, J.).

Facenda, who died in 1984, narrated several films recounting historic National Football League (NFL) games. In 2005, the NFL used clips from Facenda’s voiceovers in a television promotion of a computer game called Madden NFL 06. Facenda’s estate sued, alleging the voiceovers constituted a false endorsement under the Lanham Act and was a violation of Pennsylvania right of publicity statute. The district court granted summary judgment on both counts. The NFL appealed.

The Third Circuit rejected the NLF “free speech” argument, finding that the promotional TV show was an infomercial, not artistic expression protected under the Second Circuit decision in Rogers v. Grimaldi.

The Third Circuit also rejected the NFL’s contention that a claim of false endorsement must be supported by evidence of actual confusion on the part of consumers as well as its argument that a release clause in Facenda’s contract insulated the NFL from any right of publicity claim. As for the latter, the Court found that under Facenda’s NFL contract, the use of his voice was limited to uses that do not “constitute an endorsement of any product or service.”

Nevertheless, applying the likelihood of confusion factors to false endorsement cases, the court concluded there remained outstanding issues of material fact that precluded summary judgment on Facenda’s Lanham Act claim and, moreover, that the factors to be adjudicated were essentially questions of fact best left to the ultimate fact finder, i.e., not appropriate for summary determination.

However, the Court did affirm a summary judgment on the Pennsylvania right of publicity claim inasmuch as there was no dispute that Facenda’s voice was used, that there was no consent for the use and that the use was for a commercial purpose. In doing so, the Third Circuit rejected the NFL’s pre-emption argument because the state statute that required a showing the work in question was a commercial work was not an element of any copyright cause of action.