Copyright Act Preempts Players' Publicity Rights for NFL Films

The Eight Circuit began by reviewing '301(a) of the Copyright Act, which provides that federal copyright law preempts “all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright '.” The court considered: 1) whether the NFL films were within the subject matter of copyright; and 2) whether the state created right of publicity was equivalent to any of the exclusive rights protected by the Copyright Act.

With respect to the first test, the court concluded that the players' filmed performances during their NFL careers were “original works of authorship fixed in [a] tangible medium of expression” (the definition of a work within the subject matter of copyright), rather than a part of the players' identities protected by the right of publicity. Although agreeing that the initial game performance was an athletic event that is outside copyrightable subject matter, the Eighth Circuit observed that fixed recordings of such live performances were copyrightable subject matter. Other courts have recognized that “simultaneously-recorded transmissions of live performances and sporting events” are original works of authorship fixed in a tangible medium of expression.

As for the second test, the Eighth Circuit focused on whether the films were expressive, non-commercial uses of a copyrighted work or commercial advertisements. The court applied the factors from Porous Media Corp. v. Pall Corp., 173 F.3d 1109 (8th Cir. 1999): 1) is the communication an advertisement; 2) does the communication refer to a specific product or service; and 3) does the speaker have an economic motivation for the speech. Although the players argued that the films were advertisements for “NFL-branded football,” a specific product the films promoted for the NFL's benefit, and that they were used to keep the interest of fans during the off season when no games were played, the court found that the films did not propose a commercial transaction, did not at any point encourage consumers to purchase a product or service, and did not refer to the NFL as a specific product. Rather, they relate stories of past contests featuring NFL teams and players, refer to the league as part of historical events, and exist as products in their own right that consumers pay to purchase or subscribe to view. The Eighth Circuit concluded that the films represent expressive speech with public interest rather than advertisements for a specific product. Simply because the production, distribution and exhibition of the films is “a large-scale business conducted for private profit” does not remove them from the Copyright Act's coverage of expressive speech and preemption of the equivalent right of publicity attempt to control dissemination of the films.

No Consumer Deception

Regarding the Lanham Act claim of false endorsement, the Eighth Circuit noted that the players had to provide evidence that: 1) the challenged statements were “literally false as a factual matter”; or 2) the statements were “literally true or ambiguous but ' implicitly convey a false impression, are misleading in context, or [are] likely to deceive consumers.” Where the statement is not objectively misleading or false, evidence that some consumers misunderstood the statement is not enough to prevent entry of summary judgment. The players contended that there was a genuine issue of material fact whether the films falsely represented that they currently endorsed or associated themselves with the NFL, because a statistically significant number of survey participants believed that the players endorsed the NFL. However, the Eighth Circuit noted that the players did not introduce evidence of any misleading or false statements in the films or were likely to convey a false impression, or mislead or deceive consumers.

The footage only depicts the players' actual performances in past NFL games, contains nothing in the audio commentary that could mislead viewers about the players' relationship with or feelings toward the NFL, and nowhere implies that the players share the positive perspective toward the NFL depicted in the films. In addition, the players had an opportunity to share their views in the interviews in which they participated. That some surveyed consumers misunderstood the extent to which the players continued to associate with or endorse the NFL was insufficient to deny summary judgment.

Because the Eighth Circuit concluded that the players' rights of publicity were preempted by the Copyright Act, it did not reach the other grounds relied on by the district court, namely that the First Amendment protected the films as expressive, non-commercial speech, which were covered by “safe harbors” in the state right of publicity laws for newsworthiness or public interest in the subject matter. Even for works judged to be commercial speech, these provisions could provide additional grounds for protecting documentary films against right of publicity claims.

Judith Grubner is a Partner in the IP Group of Arnstein & Lehr and a member of this publication's Board of Editors. She can be reached at [email protected].