USCA Third Circuit, September 9, 2008

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Legendary sports announcer John Facenda narrated many productions for NFL Films before his death in 1984. In 2005, NFL Films used several clips from these films containing Facenda’s voice, totaling 13 seconds, in a 22 minute program about a new NFL video game. The estate of Facenda sued NFL Films for false endorsement under the Lanham Act and violation of his right of publicity under Pennsylvania law. The NFL had argued, among other things, that its copyrights in the original NFL films that Facenda narrated gave it the exclusive right to use portions of those productions’ soundtracks as it saw fit.

The district court granted summary judgment to the plaintiff on both claims. The district court certified the issue for interlocutory appeal because the Third Circuit has not issued an opinion interpreting the Lanham Act in the context of a false endorsement claim, and because the district court perceived a conflict between Third Circuit caselaw (on the general interpretation of § 43(a)(1)(A) of the Lanham Act) and a single district court case from the Eastern District of Pennsylvania (which dealt with the specific issue of false endorsement). The district court also certified whether copyright law preempts the plaintiff’s state law right of publicity claim “because the caselaw (across all federal courts of appeals) does not reflect a ‘consistent line of reasoning.’”

The Third Circuit affirmed summary judgment for the plaintiff on its state right of publicity claim. Facenda had signed a “standard release” contract stating that NFL Films enjoys “the unequivocal rights to use the audio and visual film sequences recorded of me, or any part of them . . . in perpetuity and by whatever media or manner NFL Films . . . sees fit, provided, however, such use does not constitute an endorsement of any product or service.”

The court held that the use of Facenda’s voice was an endorsement which violated the standard release because the 22 minute program was commercial (rather than documentary, as the NFL argued). The court agreed with the plaintiff’s expert who described the program as similar to a late-night infomercial and noted that it promoted the upcoming sale of the video, was broadcast only eight times in a three-day span immediately before the release of the video game to retail stores, and the NFL had a direct financial interest in sales of the video game. The Third Circuit rejected the NFL’s argument that its copyrights in the original programs gave it the exclusive right to subsequently use the soundtracks from those programs, and held that claims based on subsequent “expressive” works using the original copyrighted work were preempted, but claims based on subsequent advertising or promotional works are not preempted.

The court vacated summary judgment for the plaintiff on the false endorsement claim brought under the federal trademark statute. The NFL conceded that Facenda’s voice was protectible as an unregistered trademark and that the NFL used Facenda’s voice in the program, so the only issue before the court was whether there was a likelihood of confusion among consumers about whether Facenda endorsed the product.

In its defense, the NFL had argued that the program was an artistic creation and was a documentary that was entitled to First Amendment protection. Although the district court did not address whether the program was commercial speech, the Third Circuit said that the NFL’s First Amendment defense necessitated such an inquiry.

The court held the program was commercial speech not protected by the First Amendment because it focused on only one product, contained only positive remarks about the product, contained a clock that counted down to the day the video would be for sale in stores, and because the NFL had a financial interest in the product.

The court next turned to the circuit’s 10 factors used to determine likelihood of confusion in trademark cases and described them as an uncomfortable fit with a false endorsement claim. The Third Circuit approved of the way the district court modified the 10 factors by adopting some of the factors the Ninth Circuit has used in false endorsement cases. The Third Circuit rejected the NFL’s argument that the plaintiff should be required to show actual confusion.

Ultimately, the appeals court held that the district court engaged in fact finding which should be left to a jury, vacated the district court’s decision, and ordered the parties to proceed to trial to resolve the false endorsement claim.