By Scott Hervey
John Facenda is a football legend. His deep, baritone voice is “distinctive,” some say “legendary.” Without question, for most football fans, John Facenda was the voice of NFL Films.
For decades Facenda worked for NFL Films as an off camera commentator. He worked on a session by session basis under an oral agreement, receiving a per performance fee. Shortly before he died in 1984, Facenda signed a “standard release” contract with NFL Films which stated that NFL Films enjoys “the unequivocal right to use the audio and visual film sequences recorded of me, or any part of them… in perpetuity and by whatever media or manner NFL Films…sees fit, provided, however, such use does not constitute an endorsement of any product or service.” (Emphasis added.)
In 2005, NFL Films produced a 22 minute long television program entitled “The Making of Madden NFL 2006.” The program was about the soon to be released version of the highly popular video game, Madden NFL. The program featured interviews with NFL players and game producers; it contained several sequences comparing the games virtual environment with the actual NFL playing environment, and commented on the realism of the graphic quality of the video game. The program also featured audio and video clips from pervious NFL Films productions, including three sentences, lasting a total of 13 seconds, that were read by Facenda. The producers of the program modified Facenda’s audio clips to make his voice sound more like a computer.
Facenda’s estate sued NFL Films and others claiming that the use of Facenda’s voice in the program falsely implied that Facenda or his estate had agreed to endorse the video game.
This false endorsement, they argue, violates § 43(a) of the Lanham Act which reads as follows:
(1) Any person who, or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which –
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person…
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
To prove a violation of Section 43(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 to those goods or services.
The district court granted the estate’s motion for summary judgment on liability. NFL Films appealed to the Third Circuit. NFL Films did not deny that courts broadly interpret the terms “name, symbol, or device” in section 43(a) to include other indicia of identity, such as a persons voice. Nor did NFL Films deny that Facenda’s voice is distinctive and generally protectable as an unregistered trademark. On appeal, the issue before the Court was whether NFL Film’s use of Facenda’s voice was “likely to cause confusion” among consumers by suggesting that Facenda’s estate has an affiliation, connection, or association with the video game, or otherwise implies the estate’s sponsorship or approval of the video game.
In a false endorsement case, the standard 8 factor test used to determine likelihood of confusion is modified. The elements are as follows: (1) the level of recognition that the plaintiff has among the segment of the society for who the defendants 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; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendants intent in selecting the plaintiff; and (8) likelihood of expansion of the product lines.
In defense of the estate’s claims, NFL Films raised, among others, two issues; first, that the program was protected First Amendment speech; and second, that the release signed by Facenda permitted such use of the audio clips in the program. Under its First Amendment defense, NFL Films argued that the program was an artistic expression and that the use of the sound clips in question was an artistic choice of the programs producers. NFL Films argued that the strong association between Facenda’s voice and the NFL conveyed the message that Madden NFL 2006 provided an accurate rendering of NFL games. The court disagreed with NFL Films and found that the program was commercial speech. Coming to that conclusion, although it was not a traditional 30 or 60 second television commercial, the court found the program to be more like a late night half hour “infomercial.” The court also noted that, like an infomercial, the program focused on the product and its benefits and did not include any critical commentary. Although commercial speech does received some First Amendment protection, the court noted that there is no Constitutional protection involved where consumers are likely to be misled or confused by an act of trademark infringement.
Having found the First Amendment inapplicable, the court addressed the effectiveness of the general release signed by Facenda. This release gave NFL Films complete and absolute discretion to use Facenda’s voice as recorded in any manner it sees fit “provided, however that such use does not constitute an endorsement of any product or service.” This type of exclusion language is common to most appearance releases or talent agreements used in the entertainment industry today. NFL Films argued that the standard release signed by Facenda is a complete defense to the estate’s claims. Given the exclusionary language in the release, the question is whether the use of Facenda’s voice in program constituted an endorsement. The court concluded that the applicability of the release depends entirely upon whether or not Facenda’s estate is able to prove the elements of its false endorsement claim. If Facenda’s estate succeeds in proving its false endorsement claim, such a finding will demonstrate that the use of Facenda’s voice was an endorsement, falling out of the contract’s waiver clause. If however, the estate fails to establish its false endorsement claim the contract’s waiver would apply to the claim.
Although finding that the standard release is not a complete defense in this case, the court sent Facenda’s false endorsement claim back to the District Court. The Third Circuit noted that genuine issues of material facts remain. Most notably, still unresolved was whether any consumers actually believed that the use of Facenda’s audio clips in the program was an endorsement of the video game.
The moral of this story: NFL Films should have gone back to Facenda’s estate and negotiated a release. NFL Films may have had to pay Facenda’s estate some money, but that amount would pale in comparison to what it may have to pay in the event the District Court finds NFL Films liable.