542 F.3d 1007 (3rd Cir. 2008), 07-3269, Facenda v. N.F.L. Films, Inc.

Docket Nº:07-3269.
Citation:542 F.3d 1007
Party Name:John FACENDA, Jr., Executor of The Estate of John Facenda v. N.F.L. FILMS, INC.; The National Football League; N.F.L. Properties, LLC, Appellants.
Case Date:September 09, 2008
Court:United States Courts of Appeals, Court of Appeals for the Third Circuit

Page 1007

542 F.3d 1007 (3rd Cir. 2008)

John FACENDA, Jr., Executor of The Estate of John Facenda


N.F.L. FILMS, INC.; The National Football League; N.F.L. Properties, LLC, Appellants.

No. 07-3269.

United States Court of Appeals, Third Circuit.

September 9, 2008

Argued June 6, 2008.

Page 1008

[Copyrighted Material Omitted]

Page 1009

[Copyrighted Material Omitted]

Page 1010

Bruce P. Keller, Esquire (Argued), S. Zev Parnass, Esquire, Debevoise & Plimpton, New York, NY, Robert N. Spinelli, Esquire, Catherine N. Jasons, Esquire, Kelley Jasons McGowan Spinelli & Hanna, Philadelphia, PA, for Appellants.

Tracy P. Hunt, Esquire, Newtown, PA, Paul L. Lauricella, Esquire (Argued), The Beasley Firm, Philadelphia, PA, for Appellee.

Before: AMBRO, CHAGARES and COWEN, Circuit Judges.


AMBRO, Circuit Judge.

Table of Contents
I. Facts. .1011
II. Procedural History. .1012
III. Jurisdiction. .1013
IV. Standard of Review. .1013
V. False Endorsement Under the Lanham Act. .1014
A. The Legal Standard for Likelihood of Confusion in False Endorsement Claim Brought Under § 43(a) of the Lanham Act. .1015
1. First Amendment Limits on the Lanham Act. .1015
2. Tailoring the Lapp Factors to False Endorsement Claims. .1018
3. Distinguishing Between Subsections of Section 43(a)(1). .1020
B. Application to the Estate's Claim. .1022
1. The Standard Release Contract. .1022
2. Genuine Issues of Material Fact Remain. .1023
VI. Unauthorized Use of Name or Likeness Under Pennsylvania Law. .1025
A. The NFL's Copyright in the Sound Clips. .1026
B. Express Preemption. .1026
1. Equivalent to an Exclusive Right?. .1027
2. Copyrightable Subject Matter?. .1027
C. Conflict Preemption. .1028
VII. Conclusion. .1032

Page 1011 John Facenda, a Philadelphia broadcasting legend, provided his voice to many productions of NFL Films, Inc. before his death in 1984. These well-known productions recounted tales of the National Football League with filmed highlights, background music, and Facenda's commanding narration. More than two decades after Facenda's death, NFL Films used small portions of his voice-over work in a cable-television production about the football video game “Madden NFL 06." That production, entitled “The Making of Madden NFL 06," sparked this controversy. Facenda's Estate (“the Estate" ) sued NFL Films, the National Football League, and NFL Properties (which we refer to collectively, where appropriate, as “the NFL" ) in the United States District Court for the Eastern District of Pennsylvania. The Estate claims that the program's use of Facenda's voice falsely suggested that Facenda endorsed the video game, violating the federal Lanham Act, which deals with trademarks and related theories of intellectual property. The Estate also claims that the program was an unauthorized use of Facenda's name or likeness in violation of Pennsylvania's “right of publicity" statute. In its defense the NFL argued, among other things, that its copyrights in the original NFL Films productions that Facenda narrated gave it the exclusive right to use portions of those productions' soundtracks as it saw fit, including in the television piece at issue. We must resolve this clash between parties claiming different types of intellectual property. Although we agree with much of the Court's trademark analysis, for the reasons that follow we vacate the Court's grant of summary judgment for the Estate and remand for trial on the Lanham Act claim. We affirm, however, the District Court's grant of summary judgment to the Estate on the Pennsylvania right-of-publicity claim. I. Facts Facenda won national acclaim for his NFL Films work. His Estate credits that fame to the special qualities of his voice. In various depositions, several representatives for NFL Films described Facenda's deep baritone voice as “distinctive," “recognizable," “legendary," and as known by Page 1012 many football fans as “the Voice of God." As recently as 1999, NFL Films released works branded as featuring “the Legendary Voice of John Facenda." For decades, Facenda worked on a session-by-session basis under an oral agreement, receiving a per-program fee. But shortly before he died from cancer in 1984, Facenda signed a “standard release" contract stating that NFL Films enjoys “the unequivocal rights 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." In 2005, NFL Films produced “The Making of Madden NFL 06" about the soon-to-be released annual update of the video game that simulates NFL games. This production is 22 minutes long and was shown on the NFL Network eight times in a three-day span leading up to the release of the video game to retail stores. It featured interviews with NFL players, the game's producers, and others. It also included several sequences comparing the video game's virtual environment with the actual NFL environment, extolling the realism of everything from the stadiums to the game play. The end of the program featured a countdown to the video game's release. The District Court 1 found that not a single critical observation was made in this video regarding Madden NFL 06; all the commentary was positive. Other media, outside of the NFL Network, also covered the release of the game and addressed similar topics (albeit with the inclusion of the occasional criticism or recitation of the game's perceived faults). The program used sound recordings, taken from earlier NFL Films' productions, of three sentences read by Facenda: (1) “Pro Football, the game for the ear and the eye," (2) “This sport is more than spectacle, it is a game for all seasons," and (3) “X's and O's on the blackboard are translated into aggression on the field." These excerpts from his NFL Films work total 13 seconds of the program. In its opening brief to our Court, the NFL admits that these excerpts were chosen “to underscore the degree to which the video game authentically recreates the NFL experience." The producers of the program used the excerpts in a slightly altered form. The sound waves in the original recording of Facenda's voice were digitally filtered to sound more like the synthesized speech one might hear from a computer. (NFL Films President Steve Sabol described the results of this aesthetic choice by the show's producers as “awful." ) The NFL has an agreement with EA Sports, the makers of Madden NFL 06, which provides the NFL with royalty revenue in return for the use of the NFL's intellectual property. Various e-mail messages in the record suggest that NFL Films sought to create the television program as a promotion for Madden NFL 06, describing it as the “Madden Promo" or as “the Advertisements" in actors' release forms. But in their depositions, many NFL Films executives testified that the program was a documentary and denied that it was a commercial or that it was motivated by promotional considerations. II. Procedural History Facenda's Estate initially sued the NFL for false endorsement under § 43(a) of the Page 1013 Lanham Act, 15 U.S.C. § 1125(a), and for unauthorized use of name or likeness (known as the “right of publicity" ) under 42 Pa. Cons.Stat. Ann. § 8316.2 The District Court split the case into a liability phase and a damages phase. After discovery in the liability phase, the parties cross-moved for summary judgment and agreed at a hearing that the District Court could resolve the liability issues on the evidence already before it. The District Court granted the Estate's motion for summary judgment on both the false-endorsement claim and the right-of-publicity claim. Facenda v. NFL Films, Inc., 488 F.Supp.2d 491, 514 (E.D.Pa.2007). III. Jurisdiction The District Court had jurisdiction under 15 U.S.C. § 1121 because of the Estate's Lanham Act claims. It exercised supplemental jurisdiction over the state-law claims under 28 U.S.C. § 1367. Because our Court has not yet issued an opinion interpreting the Lanham Act in the context of a false-endorsement claim, and because the District Court perceived a conflict between our caselaw (on the general interpretation of § 43(a)(1)(A) of the Lanham Act) and a single district-court case from the Eastern District of Pennsylvania (which dealt with the specific issue of false endorsement), the District Court certified the issue for interlocutory appeal. Facenda v. NFL Films, Inc., No. 06-3128, 2007 WL 1575409, at *2-3 (E.D.Pa. May 24, 2007). It also certified whether copyright law preempts the Estate's state-law right-of-publicity claim because the caselaw (across all federal courts of appeals) does not reflect a “consistent line of reasoning." Id. at *3. We granted the petition for interlocutory appeal and have jurisdiction under 28 U.S.C. § 1292(b). IV. Standard of Review We review the District Court's legal conclusions de novo, reading all facts in the light most favorable to the party that did not move for summary judgment-the Estate. Lucent Info. Mgmt., Inc. v. Lucent Techs., Inc., 186 F.3d 311, 315 (3d Cir.1999). The Estate argues that we review the District Court's “factual findings" under a “clearly erroneous" standard. But, to support this proposition, the Estate cites a case reviewing a preliminary injunction. Sandoz Pharms. Corp. v....

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