Wednesday, September 17, 2008

NFL’s Use of Announcer’s Voice Violated Right of Publicity

This posting was written by William Zale, Editor of CCH Advertising Law Guide.

The National Football League's use of an announcer’s voice in a film about the making of a computer game (“The Making of Madden NFL 06”) violated the Pennsylvania right of publicity statute, but a trial was needed to decide the announcer’s false endorsement claim under the Lanham Act, according to the U.S. Court of Appeals in Philadelphia.

Preemption by Copyright Act

Pennsylvania’s right-of-publicity statute prohibits unauthorized use of a name or likeness. The court held that the Copyright Act did not expressly preempt the right of publicity because (1) the right of publicity claim required an element of proof not needed for copyright infringement—a showing that the announcer's voice had “commercial value” and (2) a voice is not copyrightable.

The right of publicity claim was not impliedly preempted, as being in conflict with federal law, because a release signed by the announcer, authorizing the NFL to use the his voice, preserved his right of publicity by excluding endorsements.

Apart from the copyright preemption issue, the court said there was no dispute that the NFL violated the Pennsylvania law, as held by the district court (CCH Advertising Law Guide ¶62,549 and ¶62,559) based on findings that the announcer's voice had commercial value, that the film was a commercial advertising vehicle, and that the use of the announcer's recordings was outside the terms of his consent in signing a contractual release.

False Endorsement

On the Lanham Act claim of false endorsement, a trial was needed to resolve issues of fact as to whether consumers were likely to have been confused by the NFL's use of the announcer's voice in the film, the appellate court determined. A grant of summary judgment in favor the announcer on this claim (CCH Advertising Law Guide ¶62,549) was vacated and remanded for trial.

The court rejected the NFL’s First Amendment defense to the false endorsement claim. The infomercial-like film shown on NFL’s cable channel was commercial speech rather than artistic expression, the court found, contrary to the NFL's argument that the film’s promotional aspects were inextricably intertwined with artistic and informational elements.

While commercial speech receives some First Amendment protection, the protection would not apply if consumers were likely to be misled or confused by the challenged conduct, in violation of the Lanham Act, according to the court.

Contractual Release

The NFL’s defense based on the announcer’s contractual release failed as well. The release authorized the NFL to use the announcer's voice provided that the use did not constitute an endorsement of any product or service. If the use at issue was a false endorsement prohibited by the Lanham Act, it would fall outside the scope of the release, the court said.

The September 9 opinion in Facenda v. N.F.L. Films, Inc. will be reported at CCH Advertising Law Guide ¶63,094.

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