Facenda v. N.F.L. Films, Inc. - 542 F.3d 1007 (3d Cir. 2008)

Rule:

To prove a violation of § 43(a)(1)(A) of the Lanham Act, 15 U.S.C.S. § 1125(a)(1)(A), in a false endorsement case, a plaintiff must show that: 1) its mark is legally protectable; 2) it owns the mark; and 3) the defendant's use of the mark to identify its goods or services is likely to create confusion concerning the plaintiff's sponsorship or approval of those goods or services. On the other, Pennsylvania's right-of-publicity statute requires a showing of commercial value, defined as a valuable interest in a natural person's name or likeness that is developed through the investment of time, effort and money. 42 Pa. Cons. Stat. § 8316(e). The requirement under the statute of commercial value, § 8316(a), provides an additional element beyond what a copyright-infringement claim requires. Invasion of privacy may sometimes occur by acts of reproduction, distribution, performance, or display, but inasmuch as the essence of the tort does not lie in such acts, preemption should not apply. The same may be said of the right of publicity.

Facts:

The deceased John Facenda, a Philadelphia broadcasting legend, provided his voice to many productions of appellant NFL Films Inc. before his death in 1984. More than two decades after, appellant used small portions of the deceased’s voice-over work in a cable-television production about the football video game entitled Madden NFL 06. The decedent’s estate sued appellants claiming that the program's use of the decedent’s voice falsely suggested that the deceased endorsed the video game, violating the federal Lanham Act, which deals with trademarks and related theories of intellectual property. The appellee estate also claimed that the program was an unauthorized use of the deceased’s name or likeness in violation of Pennsylvania's right of publicity statute. In its defense, appellant argued, among other things, that its copyrights in the original NFL Films productions that the deceased narrated gave it the exclusive right to use portions of those productions' soundtracks as it saw fit, including in the television piece at issue. The district court granted summary judgment for the appellee estate. Defendants appealed.

Issue:

Did the district court correctly grant the estate’s false endorsement and right of publicity claim?

Answer:

No.

Conclusion:

The court vacated the district court's grant of summary judgment to the appellee estate on the false endorsement claim and remanded the claim for trial. The court, however, affirmed the district court's grant of summary judgment on the right-of-publicity claim. The appellate court held that the false endorsement claim was not precluded by the First Amendment because the program was commercial speech. Thus, proof of actual consumer confusion was not required. However, a summary judgment was inappropriate because there were fact issues as to whether use of the deceased broadcaster's voice was likely to cause confusion by suggesting that the estate sponsored or approved of the video game. The court also ruled that the district court improperly made credibility judgments and weighed competing evidence in evaluating the relevant factors. The court then held that summary judgment for the estate on the right-of-publicity claim under § 8316 was proper. As the claim was not expressly preempted by 17 U.S.C.S. § 301 of the Copyright Code, also, the § 8316 claim required an additional element beyond a copyright infringement claim, and the decedent’s voice was not copyrightable. Lastly, the court ruled that conflict preemption did not apply as § 8316 protected the broadcaster's voice in a way that did not conflict with federal copyright law.