Right of Publicity in a Famous Voice: Copyright and False Endorsment Claims from the Grave

In Facenda v. N.F.L. Films, Inc., 542 F.3d. 1007 (3d Cir. Sept. 9, 2008), the Third Circuit tackles a major league set of questions. First, if a copyright owner in a video recording uses portions of the copyrighted sound recording containing a famous voice in promoting a video game, does the long dead famous football announcer's estate have claims for false endorsement under the Lanham Act? The answer is yes.

Second, if a copyright owner has the exclusive right to prepare a derivative work, doesn't this preempt any state-law right of publicity statute?

The answer is sometimes yes, sometimes no.

The NFL produced a 22-minute "documercial" (if you really want to know the difference between a documercial and an infomercial, you will have to read the 26-page decision). The documercial promoted the Madden '06 video game and used modified sound recordings of the legendary football announcer John Facenda's voice. Though he is long dead, Facenda's voice is still remembered, see his page on Wikipedia. Thanks, Wikipedia for the Madden 'O7 image accompanying this text. Madden '08 here.

Was the documercial "commercial speech"? Was it a product endorsement as Facenda's estate urged or was it a documentary? The court found that the video was an advertisement. Facenda had given the NFL a release shortly before his death that permitted the NFL the right to use his voice and image as long as it was not used to promote a product. The NFL's use was found to be a false endorsement in violation of section 43(a)(1)(a) of the Lanham Act, 15 U.S.C. Section 1125(a)(1). The court's discussion of the First Amendment's limitations on the Lanham Act is an interesting one.

Section 301(a) of the Copyright Act preempts legal and equitable rights that are "equivalent to" the exclusive rights protected by the Copyright Act. The court considered the cases that treat a person's "persona" as something independent of copyright's subject matter.

Essentially, in an excellent overview of the case law treating the extent to which a person who participate in the creation of a copyrighted work has surrendered their persona for promotional purposes, the court held that where the copyrighted work is excerpted to promote that expressive copyrighted work, such uses are preempted by the Copyright Act. But where a person's image, or in this case - their voice - is taken from one copyrighted work to promote another product, under certain circumscribed circumstances, which the court found in the Facenda case, such uses may violate that person's right of publicity.