A magistrate judge from the Eastern District of Pennsylvania has found that an alleged documentary about a popular video game, which was produced by the NFL and its subsidiaries, constituted an unauthorized use of name or likeness under 42 Pa. C.S.A. § 8316, and Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) of the famed NFL narrator John Facenda.
The son of Facenda, whose voice became synonymous with NFL Films’ productions until his death in 1984, showed that the film about the sports computer-simulation game Madden NFL 06 was sufficiently commercial in nature. This triggered a clause in a release that Facenda had signed before his death that prohibited the defendants — NFL Films, Inc., The National Football League, and N.F.L. Properties, LLC — from using his voice to promote products or services
In its opinion, the court quoted numerous NFL officials from their depositions, who had characterized Facenda as being well-known among football fans.
“Thus, although John Facenda is not a ‘legend’ in the same category as, say, Hercules, or John Henry, Plaintiff has shown that he was, and remains, a very popular figure among football fans; that he was strongly associated with NFL Films; and that his voice/delivery is the major basis of his appeal,” wrote the court.
The court went on to note that Facenda entered a written agreement with NFL Films, which provided in relevant part:
“I hereby grant to NFL Films, Inc., the unequivocal rights to use the audio and visual film sequences recorded of me, or any part of them, on a worldwide basis, in perpetuity and by whatever media or manner NFL Films, Inc., sees fit, provided, however, such use does not constitute an endorsement of any product or service.”
Facenda’s voice was only used for 13 seconds of film, providing the following three lines: (a) “Pro Football, the game for the ear and the eye”; (b) “This sport is more than a spectacle, it is a game for all seasons”; and (c) “Xs and Os on the blackboard are translated into imagination on the field.”
The court would later establish in the opinion that even though Facenda’s actual air time was miniscule, he had “a high level of recognition among the segment of society to which Madden NFL 06 was marketed.” On this point, it citied Downing v. Abercrombie & Fitch (“The Downing case involved the use by a clothing company of an old photograph of surfers who had attained an iconic status, similar to Mr. Facenda’s status as “the voice of God” in sports narration”).
The court went on to describe the rest of the film as including “endorsements by NFL football players, and interviews with creators of the Madden game.” It also made note of the date of the film’s release on the NFL Network, writing that it was within days of the release of the video game. The court found support for this conclusion in various email exchanges between NFL officials.
The court next considered whether the plaintiff’s had failed to show “evidence of consumer confusion,” a key NFL contention. The plaintiff could not make this showing, but the court was non-plussed about it.
“Here, the most important failing in Facenda’s case is the lack of evidence of actual confusion. All the usable evidence Facenda has produced comes from the NFL parties themselves. Therefore, there is no real evidence as to how NFL’s use of Facenda’s voice actually played out in the public.
“This flaw, however, is not fatal to Facenda’s Lanham Act cause of action. Where evidence of actual confusion exists, courts have weighed it heavily, precisely because it is so hard to obtain. However, and for the same reason, courts have not always punished plaintiffs when no such evidence was produced.
“Because it would have been difficult, cost-preclusive, and risky for Facenda to have obtained evidence of actual confusion, I cannot weigh the lack of this evidence too heavily against him. Instead, I conclude that this weakness in Facenda’s evidence is outweighed by the evidence regarding Facenda’s high level of recognition among NFL’s target audience, the relatedness of Facenda’s fame to Madden NFL 06, the identity of the likeness used by NFL, NFL’s apparent intent in selecting Facenda, and the fact that The Making of Madden was shown only on the station where Facenda was likely to be the most recognizable. I conclude, therefore, that Facenda is entitled to recovery under the Lanham Act.”
John Facenda, Jr., executor of the estate of John Facenda and John Facenda, Jr., in his own right v. N.F.L. Films, et al.; E.D. Pa.; CIVIL ACTION NO. 06-3128, 2007 U.S. Dist. LEXIS 33139; 5/3/07
Attorneys of Record: (for plaintiffs) Paul A. Lauricella, Lead Attorney, Philadelphia, Pa; Tracy P. Hunt, Lead Attorney, Timby Hunt LLC Newtown, Pa. (for defendants)
Bruce P. Keller, Lead Attorney, Debevoise & Plimpton, New York, NY; Robert N. Spinelli, Lead Attorney, Kelley Jasons Mcguire & Spinelli, LLP, Philadelphia, Pa.
