By Jeff Birren
Hell hath few furies like a U.S. District Court Judge scorned in settlement, and the Court of Appeals typically concurs. So it was for John Frederick Dryer, Lamont Bethea and Edward Alvin White. The three losing appellants had been part of a class that in 2009 sued the NFL for various alleged violations of their rights of publicity and Lanham Act claims based on the use of their image and likeness in various NFL Films productions.
The films include game footage and face-to-face interviews conducted decades earlier in certain instances. The Court denied the NFL’s Motion to Dismiss, and the parties settled. The settlement created a “common good entity” funded by multi-millions of dollars fund to assist the class, including payments for housing, health and dental insurance, medical screening and evaluations, mental health and wellness programs, career transition programs, medical research, medical costs not paid for by insurance and other uses approved by the board. It also created a licensing agency to help retired players market their publicity rights. Yet that was not good enough for some, as it would not make them rich.
The District Court approved the class settlement, overruling objections from certain class members in November 2013. Six class-members objectors then appealed the order approving terms of the settlement, claiming that the multi-million funds and marketing assistance given to the class was not enough. The Eighth Circuit brushed aside the objections. For a summary of that decision and the prior litigation, see Sports Litigation Alert, Volume 12, Issue 10: “All That Flickers Is Not Gold,” May 29, 2015.
The Eighth Circuit was certainly aware that the District Court had granted summary judgment as to the three who had opted out. The same reasoning would have applied to the entire class, and thus the multi-million funds represented a windfall to the class and their lawyers. In that context anything was more than the class was legally entitled to receive so a claim for even more seems preposterous.
Three members of the class who had opted out of the settlement tried to pursue their individual claims: Messrs. Dryer, Bethea and White. They stated that they had individual rights that were not preempted by the Copyright Act, among their many claims. The District Court did not see it that way and granted the NFL’s motion for summary judgment in a forty-page opinion in October 2014 (See Sports Litigation Alert: “NFL Secures Victory In Publicity Rights Case,” October 31, 2014).
The three former players appealed their claims based on their individual rights of publicity, as well as Lanham Act claims based on the NFL’s use of their images in the films. As part of their appeal they discarded their claims related to the lengthy interviews that they had given to NFL Films. By the time their appeal reached the court, the decision approving the settlement was five months old.
The appeal was argued on October 22, 2015. Paul Clement for the NFL, former United States Solicitor General, represented the NFL. The Eighth Circuit issued its opinion on February 26, 2016. The court used a mere eight and a half pages to affirm the earlier 40-page opinion. The first issue was whether the Copyright Act preempted the state law right of publicity claims. The court used a two-part test: (a) the court must determine if the “the work at issue is within the subject matter of the Copyright Act” and, if so, (b) whether the state claw claim “is equivalent to any of the exclusive rights within the general scope of the copyright act” (Dryer, Bethea and White v. NFL, No. 1403438, (8th Cir. 2016) at 4). If the answer to both questions is yes, “copyright law will preempt that claim as a matter of law” (Id.).
The Copyright Act protects “original works of authorship fixed in any tangible medium of expression…from which they can be perceived, reproduced or otherwise communicated, either directly or with the aid of a machine or device” (Id., quoting 17 U.S.C. § 102(a)). The appellants argued that their performances during games were part of their identity rather than fixed works eligible for protection. Appellants relied on NBA v. Motorola, Inc. (105 F. 3d 841, 846 (2nd Cir. 1997)) for their assertion that the initial performance of a game is an “athletic event” outside of copyright protection. However, the court read the entire case and remarked that the same case also noted that in 1976 the Copyright Act was amended “specifically to insure that simultaneously-recorded transmissions of live performances and sporting events would meet the Acts requirement that the original work of authorship be ‘fixed in any tangible means of expression’”(Dryer v. NFL at 5, quoting Motorola at 846). The appellants had only challenged the use of their likeness in game footage, and as a result, the films at issue met the first prong of the test.
The appellants claimed that the second prong of the test was not met “because the films represent commercial speech that states have a legitimate interest in regulating” (Id. at 6). Both the District Court and the Eighth Circuit used a three-part test from the 1999 decision, Porous Media Corp., v. Pall Corporation, (173 F3d 1109, 1120 (8th Cir. 1999)) to determine whether the films were commercial speech and thus not protected by the Copyright Act.
The Circuit agreed with the District Court’s conclusion that the films were expressive, rather than commercial speech. First, the films are not advertisements because they do not propose a commercial transaction. After all, “at no point do the films encourage consumers to purchase any product or service” (Id. at 7).
Second, the films do not reference the NFL as a specific product. The films tell stories about the NFL and its past, and reference past historical events rather than portray the events as present-day product. The NFL does not pay media outlets to show the films, but to ”the contrary, consumers pay to view the films, either by purchasing copies or through subscriptions to broadcasters like ESPN, which licenses the films to show on its various television networks” (Id.).
Finally, the court also agreed with the District Court that the films “represent speech of independent value and public interest rather than advertisements for a specific product,” and therefore, “the NFL’s economic motivation alone cannot convert these productions into commercial speech” (Id.).
The court thus concluded that the Copyright Act applied to preempt the rights-of-publicity claims and did not reach the District Court’s alternative grounds for granting summary judgment.
The remaining issue on appeal was whether the District Court committed error in granting the NFL’s summary judgment motion on the false endorsement claim under the Lanham Act. 15 U.S.C. § 1125 prohibits false representations concerning the goods in question through the wrongful use of another’s mark, name, trade dress or another such device. Such use must be literally false or implicitly convey a false impression. Mere consumer confusion is not enough by itself to defeat summary judgment when the representations are not misleading or false.
It was the appellants’ contention that there was a genuine issue of fact as to whether the films falsely represented an endorsement by the appellants, and pointed to consumer surveys that showed a statistically significant number of survey participants had concluded that that the films demonstrated such an endorsement by the appellant players.
That missed the point. The appellants had failed to demonstrate that the films included false or misleading representations by the appellant players. They presented no evidence that the films conveyed a false impression, were misleading in context, or likely to deceive consumers. The appellants did not contend that the “objected-to footage” depicted anything other than their actual game-performances.
Moreover, nothing in the audio portion of the films would likely mislead consumers about the players’ relationship or feelings about the NFL. NFL Films had interviewed the appellants and those interviews were part of the films. Thus, they had been given the opportunity to share their opinions about the NFL, and on appeal, did not challenge the inclusion of those interviews in the films. Without actual evidence of false or misleading statements regarding a current endorsement of the NFL by the former players, their Lanham Act claim of false endorsement “fails as a matter of law” (Id. at 9). Once again the court did not need to reach the “alternative rationales for granting summary judgment to the NFL” (Id.). There, the court stopped.
That was it, a mere eight and a half pages to affirm a 40-page order, subject to the usually pointless opportunities to seek en banc review by the circuit or filing a writ of certiorari in the Supreme Court. Yet even if that were to happen, the Eighth Circuit would go back to reviewing all of the other bases for the grant of summary judgment, including the First Amendment defense, consent as the appellants voluntarily agreed to be interviewed and knew they would be in the films, and laches, as the interviews and game footage used in the films were many decades old, and the appellants sole excuse for delay was that until they were approached by counsel, they did not know they could sue, a theory that would render every statute of limitations utterly null and void. That was also true at the motion to dismiss stage. This suggests that the court knew that the claims were time-barred, but overruled the motion to dismiss in order to force a settlement to benefit the class. In turn, this led to the fury directed at the apparent ingrates who either objected to the settlement or opted out of it in order to pursue their individual claims. It appears that Fred Dryer will have to hunt for another source of lucre.
Birren is former general counsel for the Oakland Raiders and a frequent contributor to Sports Litigation Alert
