Federal Appeals Court Rejects Former NFL Players’ Right Of Publicity Claims
April 12, 2016
by Jerry Glover
Twenty-three former NFL players sued the NFL claiming that films produced by the NFL violated their right of publicity and well as the federal trademark act, the Lanham Act. Of those 23 players, twenty settled with the NFL. Three players continued the fight. The trial court dismissed the lawsuit finding that the players’ right of publicity claims were pre-empted by the U.S. Copyright Act also noting that the First Amendment prohibited any such claim. As for the Lanham Act claim, the trial court found that the Act only applied to commercial speech and expressive works, like film, are not “commercial.” The U.S. Court of Appeals for the Eighth Circuit has affirmed. Dryer v. The National Football League, 2016 WL 761178 (8th Cir. February 26, 2016).
The NFL created hundreds of films describing significant games, seasons and players. They included compilations of game footage and interview with players, coaches and others. The three plaintiffs were interviewed for this film series. It sold these films to companies like Hulu and ESPN for sale to the public and for broadcast/webcast. The NFL also broadcast some of them on the NFL television network and website. Several of those films included footage of the plaintiffs’ game play.
The appeals court agreed that the Copyright Act pre-empted the player’s right of publicity claims. In order to determine whether such pre-emption is called for, the NFL had to prove two elements: (1) the works at issue were within the subject matter of copyright and (2) the state law right is equivalent to one or more of the exclusive rights granted by the Copyright Act to copyright owners. As to the first requirement, the court noted that the players’ initial performance in the game was an athletic event not protected by copyright, but the filming of that live performance is certainly subject to copyright protection as an audio/visual work. That first element was met.
In discussing the second element, the court first noted the two different public policies surrounding copyright law and right of publicity law. Copyright law encourages the creation of artistic works by providing the works’ owners with the exclusive right to control how those works are exploited—an economic incentive. Right of publicity law, however, provides economic incentives that encourage people to engage in activities which make their name, likeness and persona desirable to commercial interests for endorsement purposes. That same law protects consumers from misleading advertising by preventing the use of someone’s name, likeness or persona for commercial purposes without that person’s consent. But the appellate court added that a right of publicity lawsuit that challenges an expressive, non-commercial use of a copyrighted work (the NFL films) attempts to subordinate the copyright owner’s right to exploit the value of that work to the plaintiff’s interest in controlling the work’s dissemination.
To avoid the League’s First Amendment argument, the players argued that the NFL films were commercial speech, not expressive works. The appeals court disagreed. It noted that the Eighth Circuit uses a three-part test to determine whether speech is commercial: (1) whether the speech is an advertisement; (2) whether it refers to a specific product or service and (3) whether the producer has an economic motivation for the speech.
The court found the films were not commercial speech noting the following:
- the films did not propose a commercial transaction and, therefore, were not advertisements; the first element was not met.
- the films did not encourage viewers to buy those films. The films do refer to the NFL but not as a “product.” The court added that the NFL did not pay media outlets to show the films to potential customers; customers pay to view the films by purchasing copies or subscribing to outlets like ESPN so that the films existed as “products” in their own right. Therefore, no product or service is referred to by the films.
- the films have their own value as speech; therefore, any commercial motivation that the NFL might have did not convert the films into commercial speech.
Since the films were expressive works and not commercial products, the Copyright Act pre-empted the players’ right of publicity claims.
As to the Lanham Act claim, the players argued that the footage of their games incorporated into the films implied that the players were endorsing the NFL. Section 43(a) of the Lanham Act prohibits false statements that a person or company is associated with or endorses another’s goods/services and those statements are likely to cause consumer confusion. The players had to show that the statements were either literally false or implicitly conveyed a false impression or were likely to deceive consumers. They pointed to a consumer survey that found a significant number of participants who viewed the films concluded that the players endorsed the NFL. But the court noted that the films did not make any statements regarding the players’ current relationship with the NFL; the films merely depict the players’ actual performances in NFL games. The court added that the plaintiff players themselves could have noted that they were not endorsing the NFL when they consented to and participated in interviews that became part of the NFL film series.
Perhaps the three players now wish they had agreed to the NFL settlement.