Long-delayed Facenda post

Facenda v. N.F.L. Films, Inc., --- F.3d ----, 2008 WL 4138462 (3rd Cir.)

This case saddens me (disclosure: I used to work at Debevoise, NFL’s counsel, though not within the time period covered by this case), but I really should blog about it, even most of a year later. John Facenda was a Philadelphia broadcasting legend. His voice was “distinctive,” “recognizable,” “legendary,” and even known as “the Voice of God.” Before his death in 1984, he provided the voiceover for many NFL Films productions that showed highlights of football games, some of which were branded as featuring “the Legendary Voice of John Facenda.”

NFL Films used portions of Facenda’s voiceover work in a cable TV show, “The Making of Madden NFL 06,” which was about the video game Madden NFL 06. “Making of” was 22 minutes long, shown on the NFL Network 8 times in the 3 days before the video game’s release. It was entirely positive about the game and included sequences comparing the video game to the actual NFL environment, extolling its realism. It used recordings of three sentences read by Facenda: “Pro Football, the game for the ear and the eye”; “This sport is more than spectacle, it is a game for all seasons”; and “X’s and O’s on the blackboard are translated into aggression on the field.” This makes up 13 seconds of the film, and the excerpts were chosen to underscore the authenticity of the video game to the NFL experience. Facenda’s voice was digitally filtered to sound more like a part of a computer game.

Facenda’s estate sued for false endorsement and violation of his right of publicity. The court of appeals remanded for trial on the Lanham Act false endorsement claim and affirmed the grant of summary judgment in the estate’s favor on the right of publicity claim.

Facenda signed a contract granting NFL Films “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.” (I’d think that “does not” was declaratory, not limiting—that is, the use wouldn’t give NFL Films the right to claim that Facenda endorsed the product incorporating the recordings. Otherwise the rights NFL Films got would seem to be hostage to varying consumer perceptions—which was exactly what happened here, and yet not something I’d think they’d have wanted to agree to. It just goes to show: all contracts are written badly.)

Various emails suggest that the TV program was a promotion, referring to it as the “Madden Promo” or “the Advertisements” in actors’ release forms. But many NFL Films executives also testified that the program was a documentary.

The Third Circuit treats false endorsement as a violation of §43(a)(1)(A). A plaintiff must therefore show ownership of a legally protected mark, use of which by the defendant causes confusion as to sponsorship or approval.

The NFL argued that the program was a work of artistic expression subject to heightened First Amendment protection, in which the altered version of Facenda’s voice had an artistic role in making the point that Madden NFL was connected to the NFL’s history. The program, it claimed, was more than a commercial proposal because of its informational value as a documentary on how the video game was made and how popular it was. And even if it had promotional aspects, they were inextricably intertwined with artistic and informational elements, making the program as a whole fully protected.

The court agreed with Facenda’s estate that the program was commercial speech. The court thought it was like an infomercial: it focuses on one product, all positively, with a clock at the end displaying the number of days until the video game went on sale. It was broadcast eight times in three days right before the release, like an ad for a film. It focuses on a single video game, and the NFL had a commercial motive to run it. Without deciding whether to apply Rogers v. Grimaldi outside the context of titles, the court found that this wasn’t a close case: this was an ad.

Once we’re in commercial speech territory, the Lanham Act doesn’t pose much of a First Amendment problem, because it’s only violated when consumers are likely to be misled or confused.

The standard confusion factors had to be tailored to false endorsement claims. Usually, the test involves comparing the marks of two goods, but that’s an “uncomfortable fit” for false endorsement, which asks whether one party used the other’s mark to falsely imply endorsement. “Rather than protecting its mark with respect to a particular product, the Estate seeks to reserve the exclusive right to grant or deny permission to those who wish to use Facenda’s voice to promote unspecified products in the future.” (Put that way, sounds like a pretty big extension of trademark law, doesn’t it? Not confusion over anything in particular, but confusion—or permission—in the air. Kind of like right of publicity law, except with extra pretense that we care about confusion.)

So the district court modified the Third Circuit factors to ask about (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 in selecting the plaintiff; and (8) likelihood of expansion of the product lines. The court of appeals agreed with this approach, adding in consideration of the length of time the defendant employed the allegedly infringing work before any evidence of actual confusion arose. This reformulation applies only to false endorsement claims.

The Estate lacked survey evidence (or even anecdotal evidence) of likely confusion, but that’s only one factor among eight, not required, the way it would be if we were proceeding under regular §43(a)(1)(B) precedent. Survey evidence is “expensive and difficult to obtain,” so we don’t always want to penalize plaintiffs for its absence. (But we do want to penalize false advertising plaintiffs?) Plus, actual confusion would be especially hard to show here because the program aired only eight times on NFL Network, to which many households lack access. (So doesn’t that make confusion less likely? On the other hand, aren’t the consumers who do subscribe and watch particularly likely to know who Facenda was, so shouldn’t they have evinced confusion if they were confused? See below.)

The NFL argued that it would be better to distinguish between expressly and impliedly false endorsements, and require evidence that consumers received an endorsement message for impliedly false endorsements. But that’s a §43(a)(1)(B) approach, and this is §43(a)(1)(A). Here’s a quick quiz: identify the statutory language that justifies an explicit/implicit distinction for false advertising and not for trademark infringement/false endorsement. The court says that the difference is in the statutory language “likely to cause confusion,” which is only part of §43(a)(1)(A). I call logic error. Oh, and the case law also differs. (As my work in progress and the parallel work of Mark McKenna and Mark Lemley shows, this is because trademark law used to be limited, such that things like materiality were inherently part of a trademark case; trademark law cast off its moorings and started finding confusion everywhere, but false advertising law didn’t.) Plaintiffs can bring false endorsement claims under either head, but they don’t have to. And now they never will.

As applied to the case at bar, the court first had to deal with the standard release that Facenda signed allowing the NFL to use its recordings as it sees fit, provided “such use does not constitute an endorsement of any product or service.” “The Making of Madden NFL 06” is commercial—it’s an endorsement—so the district court found that it wasn’t within the release.

But wait: Doesn’t the use of Facenda’s voice have to be an endorsement before it falls outside the scope of the release? Yes, the court says. But, if the estate makes out its false endorsement claim, then the use of his voice is an endorsement.

I have to admit, I read the statement in the release as a declarative statement, showing that there’s no such thing as a well-drafted contract; in any event, I sincerely doubt either party wanted to make the application of the contract turn on whether a court ultimately found likelihood of confusion as to endorsement. (Watch carefully, too, about what the likelihood of confusion here is supposed to be. The Voice of God is dead; so who’s endorsing? If consumers were likely to believe that Facenda gave permission for his voice to appear in the program, is that within or without the scope of the release?)

After all that, genuine issues of material fact remain. For example, the NFL’s intent: executives testified that they thought they had the right to use the sound clips, because they thought they were making a documentary. The district court apparently disbelieved this testimony, based on internal emails speaking of the show as “promot[ing]” the videogame, but it still wrongly made a credibility judgment. It’s also disputed whether any consumers received an endorsement message, since there was no evidence of this, though an expert witness whose business is providing live celebrities for ads testified that viewers would “probably” believe that there was “an affiliation” between Facenda and the game.

The court also disagreed with other aspects of the district court’s analysis. The district court found that the marketing channels factor favored the Estate, because the NFL Network is the channel most likely to attract viewers who’d recognize Facenda’s voice. But the marketing channels factor doesn’t ask about audience recognition, which is a question of strength. It asks whether the defendant used marketing channels in which the plaintiff’s endorsements are likely to appear. Likewise, the expansion of product lines factor doesn’t focus on future opportunities for the defendant to use the plaintiff’s image, as the district court suggested. Instead, it asks whether the plaintiff plans to endorse a product that competes with a defendant’s product, or if the defendant plans to launch a new product that competes with a product the plaintiff already endorses. (Given the description of the Estate’s endorsement claims above—that it seeks the abstract right to endorse—how can this factor ever favor a defendant?)

Likely confusion is a question of fact, and so the presence of genuine disputes on some factors suggested that the case needed to go to trial.

Now, on to the formal right of publicity under Pennsylvania state law. If Facenda’s name or likeness has commercial value and is used for any commercial or advertising purpose without permission, then his right has been violated. A deceased person has rights for thirty years after death. Given the conclusions above, the NFL violated his right of publicity because the program was commercial.

The NFL’s key argument was copyright preemption. The sound clips come from copyrighted productions of NFL films, and Facenda’s voice was fixed read copyrighted NFL scripts, making the clips derivative works of the scripts. The NFL was sampling itself, and has a copyright in the result. The Estate’s claim seeks to block the NFL from exercising its exclusive rights to reproduce, etc. works in which it owns the copyright.

Now we’re into the express preemption/conflict preemption morass. For the Copyright Act’s express preemption provision to apply, a state right must be equivalent to an exclusive right under copyright. But some courts apply an “extra element” test: if a state right is only violated by something beyond what a copyright infringement claim would require, there’s no equivalence. The Pennsylvania right of publicity statute requires a showing of commercial value, which is an extra element. (This is just further confirmation of the incoherence of the extra element test. Intent isn’t an extra element; after that the caselaw descends into anarchy. Suppose that Pennsylvania granted somebody rights in works in which the word “damn” is used—a subset of all works, like the subset of works containing identities with commercial value. Extra element? Such a test might work in a world in which not every work was copyrighted—we could ask “does the claim depend on the existence of a copyrighted work, or could it exist even if the thing in which the allegedly infringing use is embodied was not a copyrighted work?” But we can’t do that now.)

There’s a second question: was Facenda’s voice within the subject matter of copyright? (Asking this question is even weirder, but it really just serves to highlight that what is at issue here is conflict preemption, not express preemption.) The Ninth Circuit has held that a voice isn’t copyrightable. Facenda’s distinctive voice can be fixed in a tangible medium, but it can’t be divorced from his identity. (Ah, metaphysics. Believe in it? Hell, I’ve seen it!)

So now we move to the real issue: conflict preemption. The right of publicity clashes with exploitation of a copyright. Facenda collaborated with the NFL to create the sound recordings at issue. Copyright owners have an interest in being safe from suits from performers who agreed to appear in their works. But copyrights aren’t absolute. There could be conflict preemption if state laws tried to take works out of the public domain or interfered with the production of sound-alike sound recordings, which federal law specifically allows. But that doesn’t mean that the right of publicity always gives way to copyright, especially when there’s a contract involved.

Nimmer proposes a distinction between use for the purpose of trade and expressive works, with conflict preemption applying only to the latter. (Makes you wonder why ads are protected by copyright at all. Take that, Justice Holmes!) State law has a role in regulating trade practices, but not in regulating expressive works. Using this division, the NFL loses.

Nimmer also has things to say about contracts: “courts should examine the purpose of the use to which the plaintiff initially consented when signing over the copyright in a contract.” Where the parties collaborated to create a copyrighted advertising product, conflict preemption is likely to be appropriate. But if they didn’t collaborate specifically to create advertising content, then conflict preemption is probably inappropriate. If defendants go beyond the scope of their licenses but still stay within the same basic use, then contract remedies may be appropriate, but conflict preemption prevents a publicity claim. Under this reasoning, the NFL also loses: instead of using an existing work, the NFL took sports commentary and “transmuted it into part of a pitch for a computer game.”

The NFL argued that Facenda’s remedy should be contractual, but the court of appeals held that he also retained his tort remedy. “While performing artists should have the burden of reserving publicity rights when contracting away any rights under copyright law they might have, we hold that Facenda successfully bore that burden here and preserved his state-law right-to-publicity claim.”

The court of appeals cautioned that the right of publicity should be cabined to avoid granting performers rights beyond commercial ads, in order to preserve standard arrangements in the recording and movie industries. But “[i]n the endorsement context, an individual’s identity and credibility are put directly on point,” making ads “special” in the way they implicate individual identity. (Do you think that sampling also implicates a musician’s identity? The court footnoted that “listeners are probably less likely to assume that the sampled musician vouches for or approves of a new creative work that samples her work than consumers are likely to assume that an individual’s presence in an advertisement reflects an active choice to endorse a product.” It’s a good thing that courts are such good predictors of consumer belief; note also how the supposedly non-confusion-based right of publicity turns out to have a confusion-based justification. I’m not actually opposed to that last bit—it’s the only credible basis for a right of publicity—but talking about the specialness of identity rings a little hollow when in the end the only credible claim of harm depends on confusion.)

Comment: the core reason this case is so frustrating is that, in all the multifactor tests, the court loses sight of the basic problem: if the allegation is that use equals likely confusion—which the court specifically acknowledges with its reference to “confusion in the air”—we’re no longer paying attention to “confusion over what?”

And really, confusion over what? That it’s Facenda’s voice? That Facenda (who’s dead) endorsed the game? That Facenda permitted the use? It’s the last that we end up inferring under current doctrine. But the standard source confusion factors, no matter how modified, are extremely ill-suited to determining whether consumers think there was permission, even if permission were the same thing as endorsement. Think of consumer sophistication: the only way consumer sophistication might factor into the confusion inquiry is sophistication about the law governing use of celebrity identity; sophistication about football, or videogames, or anything else, is useless to consumers in making this determination, if they even bother to think about it at all.