We've all seen the late-night infomercials featuring former celebrities extolling the virtues of miracle products. But imagine if a product's manufacturer, instead of using a live performer, took clips from a popular film and used the voice of a famous actor as a voiceover, thereby seeming to suggest that the actor endorses the manufacturer's product. This is essentially what the National Football League (NFL) did with the voice of John Facenda, a legendary sports commentator, while promoting the popular "Madden NFL 06" video game. The U.S. Court of Appeals for the Third Circuit threw a penalty flag on the NFL's play.
Facenda was a sports commentator who narrated numerous NFL films for more than 20 years before his death in 1984. His voice was so distinctive that it was referred to as the "Voice of God," and the NFL promoted films using his voice as "the Legendary Voice of John Facenda."
Facenda narrated these films on a one-off basis, receiving a per-performance fee. Shortly before his death, Facenda executed a standard release agreement, which granted the NFL "the unequivocal right 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." (Emphasis added.) By entering this release, Facenda essentially assigned to the NFL all intellectual property rights he may have had in the films—with the express limitation that the NFL not use his voice in advertisements or to promote a product/service.
Foul Play?
In 2005, NFL Films produced a 22-minute television program titled "The Making of 'Madden NFL 2006.'" The program was about the popular video game, "Madden NFL," the 2006 version of which was about to be released. The only time it aired was several times during the week before the game's release. The program featured interviews with NFL players and the game's producers, comparisons between the game's virtual environment and actual NFL stadiums, and commentary on the realism of the game's graphics. It also featured audio and video clips from previous NFL Films productions, including 13 seconds of Facenda's voice.
Facenda's estate subsequently sued NFL Films and others, alleging that the use of Facenda's voice in the program falsely implied that Facenda, or his estate, endorsed the video game. The suit was brought in federal court in Pennsylvania and alleged both state and federal causes of action. The state claims were brought under Pennsylvania's right of publicity statute, and the federal claims were brought under section 43(a) of the Lanham Act, which is essentially the federal version of an unfair competition statute. The court granted summary judgment to Facenda's estate on both claims, and the NFL appealed, arguing that its copyright interest in the original films gave it the right to use the voiceovers and that the use was protected by the First Amendment.
The false endorsement claim under the Lanham Act was a matter of first impression in the Third Circuit. In a precedential ruling, the Court of Appeals enumerated the factors to be considered in determining the merit of a false endorsement action under section 43(a). The court also determined that the state right of publicity claim was not preempted by the Copyright Act.
In a 60-page opinion, the court first analyzed the NFL's First Amendment defense. The NFL argued that the program was a documentary, an artistic expression (versus commercial speech), and that the use of Facenda's voice was an artistic choice. The court rejected this argument, finding that the program constituted commercial speech. "Like an infomercial, the program focuses on one product, explaining both how it works and the source of its innovations, all in a positive tone," the court stated. "While it does not advertise the game's price, the program did feature a clock at its ending that displayed the number of days until the video game's release for sale." While commercial speech does receive limited protection, the court noted that no constitutional protection is afforded where consumers are likely to be misled or confused by an act of infringement.
Misdirection Call
The court next turned to a Lanham Act analysis. To prove a violation of section 43(a) in the false endorsement context, a plaintiff must show that: (1) it has a legally protectable mark; (2) it owns the mark; and (3) the defendant's use of the mark to identify its goods or services is likely to create consumer confusion concerning the plaintiff's sponsorship or approval of defendant's goods or services. In the instant case, the NFL did not deny that Facenda's voice qualified for protection as an unregistered mark, nor did it deny that Facenda's estate owned the mark. Accordingly, the only issue was whether the NFL's use of Facenda's voice was likely to mislead or confuse consumers into believing that Facenda or his estate endorsed the video game.
The Third Circuit recognized that the traditional test in the Third Circuit for trademark infringement under section 43(a)(1)(A) was "an uncomfortable fit" in a false endorsement case. For a better fit, the district court had looked to the Ninth Circuit Court of Appeals' modification of the traditional factors for use in the false endorsement context. With a slight modification to one of the factors, the Third Circuit agreed with the district court's adoption of those factors. Ultimately, however, the Third Circuit reversed the summary judgment on the Lanham Act claim, concluding there were preclusive issues of fact. Of importance, the court found that the weighing of the likelihood of confusion factors constituted a question of fact to be left to the finder of fact.
The Third Circuit next turned to the estate's state right of publicity claim, summarily agreeing with the district court's grant of summary judgment. The court held that the state claim was not expressly preempted by the Copyright Act because Pennsylvania's right of publicity statute requires an additional element beyond those necessary for a copyright infringement claim—specifically that Facenda's voice has commercial value. The court next analyzed whether the claim was impliedly preempted. In holding that it was not, the Third Circuit found that "courts should examine the purpose of the use to which plaintiff initially consented when signing over the copyright in a contract." Facenda participated in creating films documenting historic moments in NFL games; he did not participate in an advertisement for a football video game. The court determined that the language in the release evidenced Facenda's intent to restrict use of his likeness in advertisements and promotions.
So, what does this decision and all of this legalese mean to you? First and foremost, it shows the importance of negotiating and understanding the commercial use terms in a release agreement before using a celebrity's likeness in a promotional program. If thought is given beforehand, you may avoid having a "flag" thrown after the fact—and the pitfalls associated with having a "trier of fact" determine the lawfulness of your play.
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