Earlier this year the Seventh Circuit stated that “there is no judicial consensus on how to resolve conflicts between intellectual-property rights and free-speech rights.” Jordan v. Jewel Food Stores, Inc., 743 F.3d 509, 514 (7th Cir. 2014). That lack of consensus has deepened with an October 10, 2014 Memorandum and Order from the U.S. District Court for the District of Minnesota, which differs in important respects from a January 26, 2010 Memorandum and Order from that same court. John Frederick Dryer et al. v. National Football League, Civil No. 09-2182 (PAM/SRN), Docket Nos. 35 and 572. These differences will be noted and analyzed below.
The plaintiffs in the Dryer case are retired professional football players who appeared in highlight films produced by NFL Productions LLC, d/b/a NFL Films. They are suing for the misappropriation of their right of publicity. The highlight films in question contain the images of numerous other players as well, and the plaintiffs appear in the films in question a maximum of approximately 10% of the total time.
Issues Considered in Both the 2010 and 2014 Rulings
The 2010 ruling denied the NFL’s motion for judgment on the pleadings. The 2014 ruling granted the NFL’s motion for summary judgment. Several important issues were considered in both rulings, however, which the court characterized as issues of law. Those issues were 1) whether the films in question are commercial speech, 2) whether they are newsworthy or matters of public interest, and 3) whether the right of publicity claims are preempted by copyright law. These issues will be explored below.
In its 2010 decision, the court determined that whether speech was commercial was a question of law. Slip Op. at 9. Although commenting that “there are more holes in this ‘test’ than in a wheel of good Swiss cheese,” Id. at 5, the court used a three-pronged test for commercial speech from an Eighth Circuit opinion (Porous Media Corp. v. Pall Corp., 173 F.3d 1109, 1120 (8th Cir. 1999): 1) whether the communication is an advertisement, 2) whether it refers to a specific product or service, and 3) whether the speaker has an economic motivation. Id. at 9-10.
Stating that there was no serious dispute that the NFL has an economic motivation, the court summarily dealt with the third prong. Regarding the first prong, the court concluded that the films were advertisements because they are “wholly positive depictions of the NFL" Id. at 12. The court goes on to say that "although the NFL insists that the films are documentaries, the overwhelmingly positive tone ‘belies an argument that the program[s have] a documentary purpose.’” Id., brackets in original.
Regarding the second prong, the court concluded that there was reference to a specific product: “Plaintiffs’ identities are not the product, NFL football is the product.” Id. at 13.
In its 2014 decision, the court took a very different approach to this issue of law. Regarding the first prong of whether the films were an advertisement, the court did not mention what it had characterized before as the non-documentary nature of the films. Rather, the court stated that the films are “a history lesson of NFL football.” October 10, 2014 Slip Op. at 15. Going further, the court stated that “while the NFL certainly reaps monetary benefits from the sale and broadcast of these productions, the use of any individual player’s likeness is not for commercial advantage but because the game cannot be described visually any other way.” Id.
Regarding the second prong of whether the films referred to a product, the court did not mention what it had said in its earlier decision about NFL football being the product. Rather, the court stated, “The productions do not promote a product separate from the productions themselves. The productions exist in their own right—they are the stories of the NFL.” Id. at 16.
Regarding the third prong about economic motivation, the court agreed with its previous conclusion that such motivation was obvious, but the court held that that “cannot by itself suffice to establish that the productions are commercial speech.” Id. Rather, the court concluded, “This is not commercial speech; it is capitalism.” Id. at 17. Therefore, the court granted the NFL summary judgment on this issue.
In its 2010 ruling, the court approvingly quotes the Eighth Circuit regarding issues of public interest: “The Eighth Circuit has warned that
'[c]ommunications can constitute commercial speech notwithstanding the fact that they contain discussions of important public issues.’” Slip. Op. at 6. The court then refers to the well-known Eighth Circuit opinion that held that the First Amendment rights of those who operated fantasy baseball games trumped the rights of publicity of the players appearing in those games, C.B.C. Distrib. & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 505 F.3d 818 (8th Cir. 2007).
The court goes on to note, however, that the NFL Films case is distinct from C.B.C. in that in C.B.C. “the information at issue [like batting averages] was already in the public domain.” Slip Op. at 7. The highlight films at issue in the NFL Films case, on the other hand, “are most certainly not publicly available; the NFL protects those images very vigorously.” Id. at 8.
The court expressed a different view of newsworthiness in 2014. First, the court noted that “the productions do not convey information other than true information about ‘real-world football games.’” Slip Op. at 26. Further noting that it is undisputed that both professional baseball and football are followed by a large segment of the public (which, of course, was equally undisputed in 2010), the court holds that “because the productions are reporting on a matter of substantial public interest, California’s newsworthiness defense bars Dryer’s and White’s California publicity-rights claims.” Id. at 27.
In 2010 the court forcefully ruled that “the work at issue is not within the subject matter of copyright.” Slip Op. at 14. The court’s reasoning was that even though the films were copyrightable and copyrighted, “Plaintiffs have alleged that the ‘work’ at issue is not the videos themselves, but rather Plaintiffs’ own identities.” Id.
The court goes on to state how different the right of publicity is from copyright. The former protects the right of an individual to reap the rewards of his or her endeavors, whereas the latter protects the author’s exclusive right to reproduce, distribute, perform or display expressive works. Id. Therefore, preemption is not appropriate because “the right of publicity thus protects very different rights than does copyright.” Id.
Citing an unpublished decision from the Western District of Missouri (Ray v. ESPN, Inc., No. 13-1179, 2014 WL 2766187 (W.D. Mo. Apr. 8, 2014)), the court “revisit[s]” its 2010 ruling. Slip Op. at 33. The revisitation results in a 180-degree change: “Plaintiffs’ performances on the football field are ‘part of the copyrighted material, and [their] likeness[es] [can]not be detached from the copyrighted performances that were contained in the films.’” Slip Op. at 35, quoting from Ray, supra, at *5, brackets in original.
As noted at the beginning of this article, there is confusion regarding the right of publicity because so many courts disagree with one another. This recent decision goes further, because the court in question disagrees with itself on some very important issues. The best resolution of this confusion would be a decision from the United States Supreme Court, which has ruled on the right of publicity only once, in a 1977 case on some rather quaint facts involving a human cannonball. Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977).