lawyer_1The Estate of legendary sports announcer , John Facenda, has scored another major victory in its court battle with NFL Films that centers on whether Facenda’s distinctive voice — known in football circles as the “Voice of God” — was improperly used in a promotional film for a John Madden video game. In its 60-page opinion in Facenda v. NFL Films Inc., a unanimous three-judge panel of the 3rd U.S. Circuit Court of Appeals ruled Tuesday that NFL Films violated Pennsylvania’s “right of publicity” statute.

Now the only issue left to be decided on that claim is how much Facenda’s estate should be awarded in damages. The panel rejected NFL Films’ argument that the “standard release” contract Facenda signed was a “complete defense,” noting that while the release gave the NFL the right to use Facenda’s voice in future film projects, it also explicitly prohibited any use that would “constitute an endorsement” of any product. “Facenda consented to participation in films documenting NFL games, not an advertisement for a football video game,” 3rd Circuit Judge Thomas L. Ambro wrote in an opinion joined by Judges Michael A. Chagares and Robert E. Cowen.

But the 3rd Circuit also partially overturned Facenda’s lower-court victory, finding that U.S. Magistrate Judge Jacob P. Hart erred when he ruled that NFL Films had also violated the federal Lanham Act.

On that claim, the panel concluded that a jury must decide the factual question of whether viewers of the Madden video game promotional film would likely be confused about whether Facenda was “endorsing” the product. Hart erred, the 3rd Circuit found, by deciding the likelihood-of-confusion issue in Facenda’s favor at the summary judgment stage and that he instead should have allowed a jury to weigh all of the competing evidence.

Significantly, however, the 3rd Circuit rejected several key arguments made by NFL Films, including its claim that the use of Facenda’s voice was protected by the First Amendment. The NFL’s lawyer, Bruce P. Keller of Debevoise & Plimpton in New York, argued that the 22-minute film, titled “The Making of Madden,” was a documentary and was therefore a work of artistic expression entitled to First Amendment protection. But Paul A. Lauricella of McLaughlin & Lauricella, who represented John Facenda Jr., argued that the film was nothing more than an “infomercial” for the video game “Madden NFL 06,” and was therefore purely commercial speech.

In the lower court, Hart sided with Lauricella and concluded that the film was not a documentary because it “lacks the journalistic independence typical of the maker of a documentary” and because NFL Films had a “direct financial interest” in the success of the video game. Ambro agreed with Hart, saying “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.” As a result, Ambro concluded that the NFL’s First Amendment defense failed. Although “commercial speech does receive some First Amendment protection,” Ambro said, the Lanham Act “customarily avoids violating the First Amendment, in part by enforcing a trademark only when consumers are likely to be misled or confused by the alleged infringer’s use,” he wrote. Ambro also rejected the NFL’s argument that Hart had applied the wrong legal standard for evaluating a false-endorsement claim under the Lanham Act and should have required that Facenda present evidence of “actual confusion” to prove that claim.

Keller argued in the appeal that Hart erred by failing to recognize a difference between “impliedly false endorsements” such as Facenda alleged and “expressly false endorsements.” In implied cases, Keller said, the plaintiff must have proof that consumers actually received the allegedly implied message. Ambro disagreed, finding that courts employ a multifactor test in which evidence of actual confusion is just one factor and that “no single factor is dispositive.” But Ambro found that Hart had erred in ruling that Facenda was entitled to summary judgment on the issue of liability for the Lanham Act claim. In doing so, Ambro said, Hart failed to note numerous factual disputes that must be resolved by a jury, including whether the NFL intended to profit unjustly from its use of Facenda’s voice, and whether any consumers actually received the message that Facenda endorsed “Madden NFL 06.”

Facenda’s most significant victory came on the Pennsylvania state law “right of publicity” claim as the 3rd Circuit upheld Hart’s decision that Facenda had proven a clear violation. Hart held that the NFL violated the state statute, known as §8316, because Facenda’s voice had “commercial value” and was used for a commercial purpose, and that Facenda had not consented. “We agree that the NFL has violated Section 8316 on its face for precisely the reasons provided by the district court, and we see no disputed issues of material fact on that question,” Ambro wrote.

In the appeal, the NFL argued that the §8316 claim should have been dismissed because it was pre-empted by federal copyright law. Keller argued that since the NFL has a valid copyright in the sound recordings of Facenda’s voice, it also had the right to excerpt sound clips of Facenda’s voice in making “derivative works.”

Ambro disagreed, saying that although the NFL’s copyright gave it exclusive rights to use Facenda’s voice clips in other projects, it did not give the NFL the right to violate a state statute that does not conflict with federal copyright law. “Pennsylvania’s right-of-publicity statute requires a showing of commercial value,” Ambro wrote, and therefore “provides an additional element beyond what a copyright-infringement claim requires.”

As a result, Ambro concluded that copyright law did not pre-empt Facenda’s §8316 claim. “We believe state-law protection of an individual’s voice will not upset copyright law’s balance as long as the state law is not construed too broadly,” Ambro wrote. Because §8316 focuses solely on the commercial-advertising context, Ambro found that the state law “is targeted at endorsements, not the full universe of creative works.” Facenda’s claim “lies at the heart of the statute’s focus,” Ambro said, and therefore “does not conflict with federal copyright law.” NFL spokesman Brian McCarthy issued a statement that said: “We are pleased the summary judgment was reversed on a key issue and we look forward to presenting our case at trial.” In an interview, Lauricella said he was pleased with the court’s decision and that the next step will be to proceed to discovery on the issue of damages and a jury trial. “It’s fourth and long for the NFL and the clock is running out,” Lauricella said.

The Legal Intelligencer
September 10, 2008
Shannon P. Duffy