Copyright Law & Sports: Football Players Can't Stop NFL From Distributing Films Of Performances

EIGHTH CIRCUIT - COPYRIGHT LAW - RIGHT OF PUBLICITY - PREEMPTION - LIVE PERFORMANCES - UNFAIR COMPETITION - LANHAM ACT

Do former NFL football players have the right to stop the NFL from distributing films that include their past performances?  The Eighth Circuit says "no."

In Dryer v. National Football League, ---F.3d --- (8th Cir. February 26, 2016) the Eighth Circuit Court of Appeals considered whether former players could use state law claims of rights of publicity and Lanham Act claims of false endorsement to stop the distribution of filmed materials in which the NFL had a copyright.

With respect to the rights of publicity claims, the 8th Circuit concluded that the state law right of publicity claims were preempted by the Copyright Act.   In my book Copyright Litigation Handbook (Thomson Reuters West 2015-2016) I devote a chapter to the concept of preemption because it is an important concept to understand.  "Preemption" exists where Congress has regulated to the point of displacing contrary state law.   "Complete preemption" is a rare subset of preemption, where Congress has regulated a subject matter so completely as to forbid state regulation even where Congress has chosen not to regulate.   Copyright law is an area of law in which the complete preemption doctrine may apply to knock down inconsistent or additional state regulations that may burden authorial rights under the Copyright Act.

To determine whether a state law claim is preempted by the Copyright Act, the court asks two questions.  First: is it a work within the subject matter of copyright?  Second, whether the state law created right is equivalent to any of the exclusive rights granted by the Copyright Act?

In Dryer, the Eighth Circuit concluded that the films in question fell within the subject matter of copyright.   Additionally, the court concluded that the works in question were expressive works and not commercial speech.   Because the former football players were trying to control dissemination of the films, they were exercising powers equivalent to those granted to copyright owners under the Copyright Act and thus were preempted.

The court distinguished commercial speech such as advertising and pointed out that if the players images were being used for advertising purposes or to promote unrelated products (like the voice recording in Facenda v. NFL Films), a state law grant of rights of publicity might not be preempted.

The Eighth Circuit also tossed out the former NFL players' claims of false endorsement under Section 43(a) of the Lanham Act, 15 U.S.C. Section 1125 since the plaintiffs could not show any false or misleading statements regarding the players' current endorsement (or lack thereof) of the NFL.

To find the Dryer decision and a related decision discussing the class action settlement that Dryer opted out of, click here.

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 Copyright law, fine art and navigating the courts. All practice, no theory.Copyright Litigation Handbook (Thomson Reuters Westlaw 2015-2016) by Raymond J. Dowd
 

Right of Publicity in a Famous Voice: Copyright and False Endorsment Claims from the Grave

In Facenda v. N.F.L. Films, Inc., 542 F.3d. 1007 (3d Cir. Sept. 9, 2008), the Third Circuit tackles a major league set of questions. First, if a copyright owner in a video recording uses portions of the copyrighted sound recording containing a famous voice in promoting a video game, does the long dead famous football announcer's estate have claims for false endorsement under the Lanham Act? The answer is yes.

Second, if a copyright owner has the exclusive right to prepare a derivative work, doesn't this preempt any state-law right of publicity statute?

The answer is sometimes yes, sometimes no.

The NFL produced a 22-minute "documercial" (if you really want to know the difference between a documercial and an infomercial, you will have to read the 26-page decision). The documercial promoted the Madden '06 video game and used modified sound recordings of the legendary football announcer John Facenda's voice. Though he is long dead, Facenda's voice is still remembered, see his page on Wikipedia. Thanks, Wikipedia for the Madden 'O7 image accompanying this text. Madden '08 here.

Was the documercial "commercial speech"? Was it a product endorsement as Facenda's estate urged or was it a documentary? The court found that the video was an advertisement. Facenda had given the NFL a release shortly before his death that permitted the NFL the right to use his voice and image as long as it was not used to promote a product. The NFL's use was found to be a false endorsement in violation of section 43(a)(1)(a) of the Lanham Act, 15 U.S.C. Section 1125(a)(1). The court's discussion of the First Amendment's limitations on the Lanham Act is an interesting one.

Section 301(a) of the Copyright Act preempts legal and equitable rights that are "equivalent to" the exclusive rights protected by the Copyright Act. The court considered the cases that treat a person's "persona" as something independent of copyright's subject matter.

Essentially, in an excellent overview of the case law treating the extent to which a person who participate in the creation of a copyrighted work has surrendered their persona for promotional purposes, the court held that where the copyrighted work is excerpted to promote that expressive copyrighted work, such uses are preempted by the Copyright Act. But where a person's image, or in this case - their voice - is taken from one copyrighted work to promote another product, under certain circumscribed circumstances, which the court found in the Facenda case, such uses may violate that person's right of publicity.