IP News

Court Analyzes Protection for Broadcaster's Distinctive Voice

In Facenda, Jr. vs. N.F.L. Films, Inc., 07-3269 (3d Cir. Sept. 9, 2008), the N.F.L. appealed the district court's grant of summary judgment in favor of the estate of John Facenda (“the Estate”), that the N.F.L. violated the Lanham Act and Facenda's right of publicity by using small portions of his voice-over work in a television show about its football video game “Madden NFL 06.” The Third Circuit Court of Appeals affirmed the district court's grant of summary judgment with regard to the right of publicity claim, but vacated and remanded the Estate's false endorsement claim under the Lanham Act.

John Facenda was a legendary broadcaster who provided his voice to many productions of N.F.L. Films, Inc. Just prior to his death in 1984, he signed a standard release form stating that NFL Films enjoys “the unequivocal rights to use the audio and visual film sequences recorded of me ' provided, however, such use does not constitute an endorsement of any product or service.” After his death, N.F.L. Films used small portions of his voice-over work in a production titled “The Making of Madden NFL 06.” The program used earlier sound recordings of three sentences read by Facenda: 1) “Pro Football, the game for the ear and the eye,” 2) “This sport is more than spectacle, it is a game for all seasons,” and 3) “X's and O's on the blackboard are translated into aggression on the field.” These excerpts totaled just 13 seconds of the program.

The Estate alleged that use of Facenda's voice was an unauthorized use of Facenda's name or likeness in violation of Pennsylvania's “right of publicity statute” and that it was a false endorsement under the Lanham Act. As to the right of publicity claim, the NFL contended that its copyrights in the original NFL Films productions that Facenda narrated gave it the exclusive right to use portions of those productions' soundtracks as it saw fit, including in the television piece at issue. As to the false endorsement claim, the NFL argued that its use was speech protected by the First Amendment, and that, regardless, was not “likely to cause confusion.”

With respect to the false endorsement claim, the Third Circuit first determined that the NFL's use was not protected by the First Amendment. The court held that the television program was commercial speech since it was more akin to an infomercial (i.e., there was no negative commentary about the video game in the entire television program) than to a work of artistic expression.

Turning then to the Lanham Act claim, the court first held that the traditional factors used in a trademark analysis apply in a modified form in the false endorsement context. Specifically, the court held that the factors in a false endorsement case are: 1) the level of recognition that the plaintiff has among the segment of the society for whom the defendant's product is intended; 2) the relatedness of the fame or success of the plaintiff to the defendant's product; 3) the similarity of the likeness used by the defendant to the actual plaintiff; 4) evidence of actual confusion and the length of time the defendant employed the allegedly infringing work before any evidence of actual confusion arose; 5) marketing channels used; 6) likely degree of purchaser care; 7) defendant's intent [in] selecting the plaintiff; and 8) likelihood of expansion of the product lines. The court vacated and remanded for trial, holding that although the district court had essentially applied the correct factors, it had improperly engaged in credibility determinations.

Regarding the right of publicity claim, the court first noted that Pennsylvania law grants individuals the exclusive right to their name and likeness, which includes voices. The NFL argued that copyright law pre-empted the Estate's right-of-publicity claim, and that it was merely exercising its exclusive right to make a derivative work of the copyrighted sound clips. While the court agreed that the NFL had such a right over the sound works, it held that this fact was not dispositive of whether the right of publicity was expressly or impliedly pre-empted by federal copyright law. With regard to express pre-emption under 17 U.S.C. '301(a), the court held that the right of publicity is pre-empted if it protects: 1) an exclusive right in 2) a work within copyright's subject matter. The court determined that the Estate's claim was not pre-empted because: 1) the right sought to be protected had an “additional element” ' commercial value ' beyond that required for copyright protection, and 2) because Facenda's voice could not be “fixed” and
thus was not copyrightable subject matter.

The court further held that the Estate's right of publicity was not impliedly pre-empted by federal copyright law, reasoning that the state law right did not conflict with the NFL's right to exploit its copyrighted sound works. In so holding, the court adopted a two-part test for conflict pre-emption proposed by commentator David Nimmer. Under that test, when defendants use the work “for purposes of trade,” such as in an advertisement, plaintiffs' right of publicity claims are not pre-empted. On the other hand, when defendants' uses constitute “expressive works,” right-of-publicity claims are pre-empted. The court adopted Nimmer's proposal that courts should examine the purpose to which the plaintiff initially consented when signing over the copyright in a contract. The court then determined that the Estate's claim was not pre-empted, because Facenda's release contract had specifically carved out endorsements.

Reasonable Royalty Analysis

In Iovate Health Sciences, Inc. v. Bio-Engineered Supplements & Nutrition, Inc., (Civil Action No. 9:07-cv-46 E.D. Tex.), defendant Bio-Engineered (“BSN”) moved to strike portions of Iovate's damages expert's report regarding reasonable royalty, under the Daubert case, because he relied on two sets of hypothetical negotiation dates in determining a reasonable royalty for each of the two patents that were allegedly infringed. Iovate argued that this analysis was proper because BSN's infringement began in February 2003, but Iovate did not acquire rights in the patents at issue until September 2004 and March 2005, respectively. Further, Iovate argued that two different hypothetical negotiations for each patent were appropriate, one with the prior owner and one with Iovate, because Iovate had acquired the right to sue for past damages, but neither entity which had granted rights to Iovate was a competitor of BSN, whereas Iovate is a competitor.

Judge Ron Clark of the Eastern District of Texas agreed and denied BSN's motion to strike. He held that the correct measure of damages is highly fact specific, and that the fact that BSN and the prior patent owner were not competitors, while BSN and Iovate are, potentially changes the reasonable royalty rate. Infringement began at a later date with respect to Iovate than it did for the prior owner. Therefore, Iovate's expert could testify at trial that there should be two hypothetical negotiations at different dates and with different royalty rates with respect to each patent in suit.

Howard Shire, editor-in-chief of this newsletter, is one of the attorneys who represented Iovate Health Services, Inc. in this matter.

Matthew Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP.

Court Analyzes Protection for Broadcaster's Distinctive Voice

In Facenda, Jr. vs. N.F.L. Films, Inc., 07-3269 (3d Cir. Sept. 9, 2008), the N.F.L. appealed the district court's grant of summary judgment in favor of the estate of John Facenda (“the Estate”), that the N.F.L. violated the Lanham Act and Facenda's right of publicity by using small portions of his voice-over work in a television show about its football video game “Madden NFL 06.” The Third Circuit Court of Appeals affirmed the district court's grant of summary judgment with regard to the right of publicity claim, but vacated and remanded the Estate's false endorsement claim under the Lanham Act.

John Facenda was a legendary broadcaster who provided his voice to many productions of N.F.L. Films, Inc. Just prior to his death in 1984, he signed a standard release form stating that NFL Films enjoys “the unequivocal rights to use the audio and visual film sequences recorded of me ' provided, however, such use does not constitute an endorsement of any product or service.” After his death, N.F.L. Films used small portions of his voice-over work in a production titled “The Making of Madden NFL 06.” The program used earlier sound recordings of three sentences read by Facenda: 1) “Pro Football, the game for the ear and the eye,” 2) “This sport is more than spectacle, it is a game for all seasons,” and 3) “X's and O's on the blackboard are translated into aggression on the field.” These excerpts totaled just 13 seconds of the program.

The Estate alleged that use of Facenda's voice was an unauthorized use of Facenda's name or likeness in violation of Pennsylvania's “right of publicity statute” and that it was a false endorsement under the Lanham Act. As to the right of publicity claim, the NFL contended that its copyrights in the original NFL Films productions that Facenda narrated gave it the exclusive right to use portions of those productions' soundtracks as it saw fit, including in the television piece at issue. As to the false endorsement claim, the NFL argued that its use was speech protected by the First Amendment, and that, regardless, was not “likely to cause confusion.”

With respect to the false endorsement claim, the Third Circuit first determined that the NFL's use was not protected by the First Amendment. The court held that the television program was commercial speech since it was more akin to an infomercial (i.e., there was no negative commentary about the video game in the entire television program) than to a work of artistic expression.

Turning then to the Lanham Act claim, the court first held that the traditional factors used in a trademark analysis apply in a modified form in the false endorsement context. Specifically, the court held that the factors in a false endorsement case are: 1) the level of recognition that the plaintiff has among the segment of the society for whom the defendant's product is intended; 2) the relatedness of the fame or success of the plaintiff to the defendant's product; 3) the similarity of the likeness used by the defendant to the actual plaintiff; 4) evidence of actual confusion and the length of time the defendant employed the allegedly infringing work before any evidence of actual confusion arose; 5) marketing channels used; 6) likely degree of purchaser care; 7) defendant's intent [in] selecting the plaintiff; and 8) likelihood of expansion of the product lines. The court vacated and remanded for trial, holding that although the district court had essentially applied the correct factors, it had improperly engaged in credibility determinations.

Regarding the right of publicity claim, the court first noted that Pennsylvania law grants individuals the exclusive right to their name and likeness, which includes voices. The NFL argued that copyright law pre-empted the Estate's right-of-publicity claim, and that it was merely exercising its exclusive right to make a derivative work of the copyrighted sound clips. While the court agreed that the NFL had such a right over the sound works, it held that this fact was not dispositive of whether the right of publicity was expressly or impliedly pre-empted by federal copyright law. With regard to express pre-emption under 17 U.S.C. '301(a), the court held that the right of publicity is pre-empted if it protects: 1) an exclusive right in 2) a work within copyright's subject matter. The court determined that the Estate's claim was not pre-empted because: 1) the right sought to be protected had an “additional element” ' commercial value ' beyond that required for copyright protection, and 2) because Facenda's voice could not be “fixed” and
thus was not copyrightable subject matter.

The court further held that the Estate's right of publicity was not impliedly pre-empted by federal copyright law, reasoning that the state law right did not conflict with the NFL's right to exploit its copyrighted sound works. In so holding, the court adopted a two-part test for conflict pre-emption proposed by commentator David Nimmer. Under that test, when defendants use the work “for purposes of trade,” such as in an advertisement, plaintiffs' right of publicity claims are not pre-empted. On the other hand, when defendants' uses constitute “expressive works,” right-of-publicity claims are pre-empted. The court adopted Nimmer's proposal that courts should examine the purpose to which the plaintiff initially consented when signing over the copyright in a contract. The court then determined that the Estate's claim was not pre-empted, because Facenda's release contract had specifically carved out endorsements.

Reasonable Royalty Analysis

In Iovate Health Sciences, Inc. v. Bio-Engineered Supplements & Nutrition, Inc., (Civil Action No. 9:07-cv-46 E.D. Tex.), defendant Bio-Engineered (“BSN”) moved to strike portions of Iovate's damages expert's report regarding reasonable royalty, under the Daubert case, because he relied on two sets of hypothetical negotiation dates in determining a reasonable royalty for each of the two patents that were allegedly infringed. Iovate argued that this analysis was proper because BSN's infringement began in February 2003, but Iovate did not acquire rights in the patents at issue until September 2004 and March 2005, respectively. Further, Iovate argued that two different hypothetical negotiations for each patent were appropriate, one with the prior owner and one with Iovate, because Iovate had acquired the right to sue for past damages, but neither entity which had granted rights to Iovate was a competitor of BSN, whereas Iovate is a competitor.

Judge Ron Clark of the Eastern District of Texas agreed and denied BSN's motion to strike. He held that the correct measure of damages is highly fact specific, and that the fact that BSN and the prior patent owner were not competitors, while BSN and Iovate are, potentially changes the reasonable royalty rate. Infringement began at a later date with respect to Iovate than it did for the prior owner. Therefore, Iovate's expert could testify at trial that there should be two hypothetical negotiations at different dates and with different royalty rates with respect to each patent in suit.

Howard Shire, editor-in-chief of this newsletter, is one of the attorneys who represented Iovate Health Services, Inc. in this matter.

Matthew Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP.