By Jonathan Zavin, W. Allan Edmiston, David Grossman , Jonathan Neil Strauss , Tal Dickstein, and Meg Charendoff, of Loeb & Loeb LLP
District court grants summary judgment in favor of NFL and against former professional football players who claimed that NFL’s use of video footage of players in games violated their publicity rights, finding that First Amendment protected use of game footage and outweighed plaintiffs’ publicity rights.
Plaintiffs John Frederick Dryer, Elvin Lamont Bethea and Edward Alvin White are former professional football players who played for defendant National Football League. Plaintiffs, who opted out of the class settlement, alleged that the NFL Films’ use of video footage of them (from clips of NFL games) in NFL Film productions violated their publicity rights, caused consumer confusion and unjustly enriched the NFL.
NFL Films’ productions are compilations of clips of game footage into theme-based programs that describe a football game or series of games and the players. According to the court, the productions are more than just highlight reels; their artistry altered forever the way sports is presented on film. Most of the productions at issue describe a single football game or season in a 20- or 30-minute dramatic narrative featuring music, narration and clips of important plays from the game. At issue were 155 separate NFL Films productions. Although some productions also contain interviews with the players, plaintiffs did not challenge the use of those interviews and challenged only the use of video footage of them playing football.
Both parties moved for summary judgment. Plaintiffs sought partial summary judgment on several of the NFL’s affirmative defenses, and the NFL sought summary judgment on all of plaintiffs’ claims. The court denied plaintiffs’ motion and granted summary judgment to the NFL.
First, the court considered the NFL’s principal argument that the First Amendment protected its use of game footage and outweighed plaintiffs’ interests in their right of publicity. According to the court, there are two different approaches to the balancing test, and both approaches favor the NFL. Some courts examine whether the work being challenged is commercial or noncommercial speech, because content-based restrictions on noncommercial speech are appropriate in only the most extraordinary circumstances. To determine whether speech is commercial, the court must evaluate the content, form and context of the speech as revealed by the whole record. Courts in the Eighth Circuit use the three-part test set forth in Porous Media Corp. v. Pall Corp.: whether the speech is an advertisement, whether it refers to a specific product, and the speaker’s economic motivation for the speech.
Although plaintiffs recognized that the productions were not typical advertisements because they did not offer anything for sale or encourage viewers to buy anything, they argued that they were advertisements because they were positive depictions of the NFL that served to enhance the NFL’s brand. The court noted that brand enhancement alone was not enough to render a production an advertisement. In this case, the NFL productions were not exploiting the players’ images for the singular purpose of brand enhancement. Instead they told the story of a football game, team or player as a form of “history lesson of NFL football.” The only way to tell such stories was to show the footage from the games. Even though the NFL reaped monetary benefits from the sale and broadcast of these productions, the use of any individual player’s likeness was not for commercial advantage but because the game could not be visually described any other way. The court also found that plaintiffs had failed to demonstrate that the films promoted a product separate from the productions themselves. The court found that the NFL did have an economic motivation for the NFL Films productions, but because the first two elements of the Porous Media test were not met, the NFL’s economic motivation for producing the NFL Films productions by itself did not suffice to establish that the productions were commercial speech.
The court said that because the NFL Film productions were not commercial speech, the plaintiffs’ claims failed. However, the court considered other reasons the plaintiffs’ claims failed.
Next, the court considered the second balancing approach, which is to examine the challenged use of the plaintiffs’ likenesses and determine whether such use supersedes the asserted right of publicity. The court held that the balance between plaintiffs’ publicity rights and the constitutional protection due the use at issue tipped in favor of the NFL. The players were paid for their participation in the games, and there was no danger that consumers would falsely believe that they were engaged in any other activity.
The court then proceeded to hold that plaintiffs had not pointed to genuine issues of fact to establish their publicity rights claims. Plaintiffs’ publicity claims were barred by the newsworthiness defense under California, Texas, Minnesota and New York laws. In addition, the NFL established its consent defense because plaintiffs’ words and actions showed their consent and even encouragement of the NFL’s use of the game footage.
The court also held that the Copyright Act preempted plaintiffs’ publicity rights claims because the NFL had the right to exploit the copyrighted game footage in expressive works such as the NFL Films productions at issue.
Finally, the court held that plaintiffs’ Lanham Act claim for false endorsement failed as a matter of law because the NFL’s use of their images was not commercial speech, and the Lanham Act applies only to commercial speech. Moreover, the doctrine of laches barred those claims because the productions at issue were made many years prior to the lawsuit and plaintiffs failed to produce any evidence excusing their delay. Any ignorance by them of the law was not an excuse for the delay.
