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Third Circuit: False endorsement claims use modified likelihood of confusion analysis

September 29, 2008
Post by Blog Staff

In a recent decision, the Third Circuit vacated a district court's grant of summary judgment to the plaintiff in a § 43(a) false endorsement case, but affirmed the plaintiff's summary judgment win as to the state law right of publicity claims. The dispute revolved around the National Football League's use of John Facenda's voice in a production regarding the making of the video game Madden NFL 06. Many football fans remember Mr. Facenda's voice from NFL Films productions from the 1960s up to his death in 1984; he is sometimes referred to as "The Voice of God." The district court granted summary judgment to Mr. Facenda's estate on both claims.

The Third Circuit affirmed the summary judgment on the right of publicity claim, but vacated it on the false endorsement claim. On the right of publicity claim, the Third Circuit agreed with the district court that copyright law did not preempt state right of publicity law in this case. This was because Mr. Facenda's voice was used in a commercial context, rather than an "expressive" context. Interestingly, the court cited with approval discussion of the district court's opinion on this subject from a leading copyright treatise, Nimmer on Copyright.

On the issue of false endorsement, the Third Circuit agreed with the bulk of the district court's analysis, but vacated the summary judgment on the basis of issues of disputed fact. In so doing, the court adopted a modified version of the Ninth Circuit's test in false endorsement cases, as the appropriate factors were a matter of first impression for the Third Circuit. Interestingly, the court observed that "parties may not stipulate to forgoing a trial when genuine issues of material fact remain that prevent either side from succeeding on a motion for summary judgment." This is in contrast to a recent Federal Circuit decision, where the court decided an appeal where the parties did make such a stipulation before the district court.

John Facenda lent his voice to numerous NFL Films productions over a twenty-year span. So recognizable was his voice, it has been referred to as the "Voice of God," and the NFL has promoted films using Facenda's voice as featuring "the Legendary Voice of John Facenda." Shortly before Mr. Facenda's death in 1984, he executed a contract with NFL Films granting NFL Films the right to use the audio and film sequences "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."

In 2005, NFL Films produced a 22 minute film entitled "The Making of Madden NFL 06." This production was essentially an advertisement for the upcoming video game, featuring interviews with players, comparisons beween the video game and actual NFL team stadiums, and a countdown to the game's release. Also included was 13 seconds of Mr. Facenda's woice work from previous recordings, although they were altered to sound more like synthesized speech.

Based on this use, Mr. Facenda's estate sued NFL Films, alleging false endorsement under § 43(a) and a claim under Pennsylvania' Right of Publicity statute. The district court granted summary judgment for Mr. Facenda's estate, holding no genuine issue of fact existed regarding either claim, and the fact that NFL Films owned the copyright in the underlying voiceover works did not preclude the right of publicity claim. In analyzing the false endorsement claim, the district court applied the Ninth Circuit's factors in false endorsement cases, noting they were analogous to the Third Circuit's likelihood of confusion factors. Because the district court had bifurcated the case to liability and damages phases, the court certified the case for interlocutory appeal, and the Third Circuit accepted the appeal.

The Third Circuit affirmed on the right of publicity count but vacated summary judgment on the false endorsement count. Turning first to the false endorsement count, the court largely agreed with the district court's analysis. The court noted in the Third Circuit, likelihood of confusion is determined by application of the Lapp factors:

  1. The degree of similarity between the plaintiff's trade dress and the allegedly infringing trade dress;
  2. The strength of the plaintiff's trade dress;
  3. The price of the goods or other factors indicative of the care and attention expected of consumers when making a purchase;
  4. The length of time the defendant has used its trade dress without evidence of actual confusion arising;
  5. The intent of the defendant in adopting its trade dress;
  6. The evidence of actual confusion;
  7. Whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media;
  8. The extent to which the targets of the parties' sales efforts are the same;
  9. The relationship of the goods in the minds of consumers because of the similarity of function; and
  10. Other factors suggesting that the consuming public might expect the plaintiff to manufacture a product in the defendant's market, or that the plaintiff is likely to expand into that market.

These factors do not fit well in the context of a false endorsement claim. The district court, as noted above, adopted the Ninth Circuit's false endorsement factors from Downing v. Abercrombie & Fitch:

  1. The level of recognition that the plaintiff has
    among the segment of the society for whom the
    defendant's product is intended;
  2. The relatedness of the fame or success of the
    plaintiff to the defendant's product;
  3. The similarity of the likeness used by the defendant
    to the actual plaintiff;
  4. Evidence of actual confusion;
  5. Marketing channels used;
  6. Likely degree of purchaser care;
  7. Defendant's intent on selecting the plaintiff; and
  8. Likelihood of expansion of the product lines.

The Third Circuit modified the fourth factor to include "the lentgh of time the defendant employed the allegedly infringing work before any evidence of actual confusion arose," and adopted these modified factors for purposes of false endorsement cases.

Turning to the facts, the court held there were sufficient disputed facts to preclude summary judgment on the false endorsement claim. The court identified several disputed issues, including NFL Films' intent unjustly and whether consumers believed Mr. Facenda endorsed the game. Futher, the court was concerned about the "larger question" of the overall weighing of the factors, which the court, agreeing with the Downing court, considered a question of fact. As a result, the court vacated the summary judgment on the false endorsement claim. Interestingly, the court noted the "parties may not stipulate to forgoing a trial when genuine issues of material fact remain that prevent either side from succeeding on a motion for summary judgment." This is in contrast to a recent Federal Circuit decision, where the court decided an appeal where the parties did make such a stipulation before the district court.

The Third Circuit affirmed the district court's summary judgment on the right of publicity claim. Here, NFL Films argued the fact that it owned the copyright to the voice recordings meant copyright law preempted any state law recovery arising from its use of the recordings. The court disagreed. First, the court noted the right of publicity claim did not fall within copyright law's statutory preemption provision, because it did not provide protection equivalent to one of copyright's exclusive rights, nor does Mr. Facenda's voice fall under the scope of copyrightable subject matter.

Next, the court addressed whether conflict preemption precluded recovery. In this regard, the court noted the estate's right of publicity claim did not "clash with the exploitation" of the NFL's right in the underlying work. When the work is being used "for purposes of trade," such as an advertisement, right of publicity claims are typically not preempted. On the other hand, when the work is used in an "expressive work[]," right of publicity claims typically are preempted. Here, the film was "for purposes of trade," as it was intended to promote the Madden NFL 06 video game. Interestingly the court's analysis quoted from Nimmer on Copyright's description of the district court's decision on the subject:

Nimmer puts the fact situations in Fleet, Laws, and Toney on one side, and the fact situation of our case (which he uses as his main counterexample, based on the District Court’s opinion) on the other:

Fleet acted in a movie; for that reason, he could not complain when that very movie was later exploited, by being broadcast on television. Laws sang for a recording; for that reason, she could not complain when that very recording was later exploited, by being used as ackground for Jennifer Lopez. Ton


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